EXHIBIT (10)(i)
TRADEMARK LICENSE AGREEMENT
This TRADEMARK LICENSE AGREEMENT ("Agreement") is made this ___ day of
November, 1997 by and between Experian Information Solutions, Inc., an Ohio
corporation ("Licensor"), and First American Real Estate Solutions, LLC, a
California limited liability company ("Licensee").
RECITALS
WHEREAS, Licensor and The First American Financial Corporation ("FAFCO"),
First American Real Estate Information Services, Inc. ("FAREISI") and various
subsidiaries and affiliates of FAREISI (FAREISI and its subsidiaries and
affiliates are collectively referred to as the "FAFCO Members") are parties to
a Contribution and Joint Venture Agreement dated as of November ___, 1997 (the
"JV Agreement") whereby Licensor and the FAFCO Members will jointly contribute
assets to, and jointly own, Licensee; and
WHEREAS, Licensor has been engaged in developing and marketing a broad
range of information products and services, and is the owner of the "Experian"
name and the "Experian" trademark and service mark and logo associated therewith
(such Experian mark and logo and the use of the Experian mark as a prefix in a
secondary mark with another component used by Experian or its related and
affiliated entities shall hereinafter be collectively referred to as the
"Trademark") that identifies its various businesses, products and services
including those of the RES Business (as defined in the JV Agreement) and
symbolizes the goodwill and reputation of the business connected therewith
throughout the world; and
WHEREAS, Licensee recognizes the worldwide marketing value of Licensor's
goodwill and reputation as symbolized by the Trademark and is desirous of using
the Trademark in the RES Business that is being contributed to Licensee pursuant
to the JV Agreement and benefiting from its goodwill and reputation in
connection with Licensee's business; and
WHEREAS, Licensee acknowledges that the reputation and goodwill as
symbolized by the Experian name and Trademark are of great value to Licensor and
that Licensor will suffer great and irreparable damage if Licensee engages in
any activity or course of conduct which threatens to diminish or negatively
impact Licensor's goodwill or reputation; and
WHEREAS, the execution and delivery of this Agreement is a condition to the
Closing of the transactions contemplated by the JV Agreement; and
WHEREAS, Licensor has imposed certain terms and conditions as to the use of
the Trademark which Licensee has accepted in order to protect Licensor's rights;
and
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WHEREAS, the Parties wish to provide formal evidence of their agreement.
NOW, THEREFORE, for valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, it is mutually agreed as follows:
1. Definitions. Terms defined in the JV Agreement and not otherwise
defined herein are used herein as such terms are defined in the JV Agreement.
"Products and/or Services" shall mean the products and services sold or
provided by Licensee in the conduct of the RES Business following the Closing
that are (i) the products and services sold or provided by Licensor through its
RES Business prior to the Closing, (ii) the products and services of Licensor
substantially developed by Licensor through its RES Business as of the Closing,
and (iii) with Licensor's prior written approval, products or services that are
substantially similar to the products and services sold or provided and/or
substantially developed for sale by Licensor prior to the Closing.
2. Grant of License. Subject to the terms and conditions hereinafter set
forth, Licensor hereby grants to Licensee the right to use the Trademark in
association with selling the Products and/or Services. Licensee shall during
the term of this Agreement, identify itself by stating its organized or trade
name on all the Products and/or Services and related promotions, advertising and
public announcements.
3. Royalty. So long as Licensee shall have the right to use the
Trademark as provided for herein (whether or not Licensee actually uses the
Trademark), Licensee shall pay to Licensor .2% of Licensee's gross revenues, as
computed under US GAAP. Such royalty payments shall be made each calendar
quarter, within thirty (30) days of the conclusion of the previous quarter.
4. Term. This Agreement shall continue in full force and effect so long
as Licensor or an affiliate of Licensor maintains an ownership interest in
Licensee, unless sooner terminated as provided below.
5. Limitations. Notwithstanding anything in this Agreement, expressed or
implied, to the contrary:
(a) Except as provided in Section 2, Licensee may not use the
Trademark as part of any corporate, business or trading name.
(b) Licensee may not use the Trademark other than in connection
with the Products and/or Services and as allowed under Section
2 hereof. With respect to any other products or services,
Licensee shall use its own name and marks.
(c) Licensee may not change, modify or alter the Trademark in any
manner in connection with Licensee's use of the Trademark as
provided for herein.
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(d) Licensee may not assign its rights or obligations under this
Agreement to any other person or entity without the express
prior written approval of Licensor, which Licensor may
withhold in its sole and absolute discretion.
(e) Any and all use of the Trademark by Licensee shall inure to
the benefit of Licensor and Licensee acknowledges that
Licensor owns all right, title and interest to the Trademark
and, except as set forth in this Agreement, reserves all
rights thereto, specifically including, without limitation,
all rights to license or authorize use of the Trademark.
(f) Following the Closing, Licensee shall be permitted to utilize
in the conduct of the RES Business all inventories, existing
as of the Closing, of marketing materials related to the RES
Business, including brochures, product and service
descriptions, catalogs and similar material, manuals,
instruction materials, packaging and other printed material
with or without modifying the same, provided that Licensee
uses reasonable efforts to advise the users and/or recipients
that the new source of such Products and/or Services is
Licensee and not Licensor.
6. Quality Control. In order to assure the quality and nature of the
Products and/or Services bearing the Trademark and protect the reputation of
Licensor:
(a) Licensor acknowledges that the quality standards,
specifications, and related policies, procedures and processes
for products and/or services bearing the Trademark as of the
Closing (the "Standards") are deemed acceptable to Licensor
and, for so long as Licensee continues to use the Trademark,
Licensee agrees to continue to maintain the quality of the
Products and/or Services bearing the Trademark consistent with
Licensor's Standards in effect prior to the Closing.
(b) For so long as Licensee continues to use the Trademark, and
upon request of Licensor, but not more than once each calendar
quarter during the term of this Agreement, Licensee shall make
available for Licensor's review copies of all material
complaints, claims, suggestions and regulatory or judicial
inquiries, requests, recommendations, actions or orders
("Comments") as to the Products and/or Services bearing the
Trademark as embodied in any medium of tangible expression
from third parties received by Licensee, and all
correspondence from or to such third party concerning any
Comments received during the preceding quarter.
(c) For so long as Licensee continues to use the Trademark,
Licensor shall have the right to enter Licensee's premises,
upon reasonable prior notice during regular business hours,
and have the right to inspect and examine the Products and/or
Services bearing the Trademark and to review all records of
Licensee
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relating to the quality of the Products and/or Services
bearing the Trademark. Licensor shall be able to exercise such
right, as a minimum, every four months and in any case where
an event may arise that, in its reasonable good faith
judgment, requires such on-site review. Licensor shall conduct
such activities in a manner not to interfere with Licensee's
business operations.
(d) In the event that any Products and/or Services bearing the
Trademark are found by Licensor or its designee not to meet
the Standards, Licensor shall so notify Licensee in writing.
Licensor shall specify to Licensee in reasonable detail the
respects in which the Standards are not being met and, unless
Licensee, within sixty (60) days of its receipt of such
notice, takes corrective measures which reasonably rectify the
deficiency, Licensee's right to use the Trademark shall
immediately terminate upon notice to that effect from Licensor
and this Agreement shall thereupon terminate.
7. Intellectual Property Control. (i) For so long as Licensee continues
to use the Trademark, Licensee undertakes to use reasonable efforts to cooperate
with Licensor, at Licensor's expense, in protecting the Trademark. In
furtherance of such purposes Licensee shall:
(a) Use the Trademark only in accordance with the terms of this
Agreement;
(b) Affix appropriate trademark and service mark notations (e.g.,
"TM" or "(R)") and wording and otherwise make proper use of
the Trademark by using it as a proprietary trademark and/or
service mark, and indicating that the Trademark is owned by
Licensor and used by Licensee with Licensor's permission on
all promotional and advertising materials and Products and/or
Services;
(c) Not use any name, mark, device, symbol, insignia, designation,
labeling or packaging in connection with the Trademark, other
than such of the foregoing as Licensee may from time to time
use in the ordinary course of Licensee's conduct of the RES
Business, without the prior written approval of Licensor, and
not apply to register the Trademark in any manner anywhere in
the world, with or without a secondary component;
(d) Comply with all applicable laws and regulations with respect
to the production, distribution and sale of the Products
and/or Services; and
(e) Execute such documents and take such reasonable actions as may
be required by Licensor in connection with the protection of
the Trademark and the registrations thereof, including,
without limitation, cooperate with Licensor in executing and
filing Registered User Agreements as necessary or desirable,
and in applying to register and renew registrations of the
Trademark in such classes and countries as Licensor may wish
to do so in its sole discretion.
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(ii) For so long as Licensee continues to use the Trademark, each of Licensee
and Licensor shall promptly provide the other written notice in the event either
party becomes aware of any actual or threatened use of the Trademark by any
third party. In such event, Licensor shall have the first right at its own
expense, to take such action, including the initiation of legal proceedings, to
prevent and terminate such use. If within ninety (90) days, Licensor elects not
to pursue any action, Licensee shall then have the right, at its own expense, to
take such action, including the initiation of legal proceedings, to prevent and
terminate such use. The party conducting such action shall control its conduct
and the other party shall cooperate in any such proceeding, such cooperation to
include, without limitation, the joining of the other party as a party to the
action when either party is required to do so by law in order to bring the
action. Any recovery in any such action or proceeding shall first be paid to
reimburse the parties for their respective out-of-pocket expenses associated
with such action or proceeding (such amounts to be paid on a pro rata basis in
the event any recovery is less than the total of the parties' out-of-pocket
expenses) and any remaining recovery shall be paid to Licensor.
(iii) Licensor shall, at its own expense, file all applications, affidavits and
other documents necessary to maintain the effective registration of the
Trademark in the United States Patent and Trademark Office and in each other
country in which the Trademark is registered on the date of the Closing, but
Licensor and/or Licensee shall not apply to register any marks that include the
Trademark in connection with the RES Business.
8. Termination. Notwithstanding anything to the contrary, this Agreement
shall automatically terminate without notice immediately upon Licensor or any
affiliate of Licensor no longer having an ownership interest in Licensee, or
upon notice by Licensor to Licensee upon the occurrence of any of the following
events:
(a) Breach by Licensee of the Royalty payment provision contained in
Section 3 of this Agreement, which breach is not cured within ten (10)
days after Licensee's receipt of written notice setting forth the
particular breach.
(b) Breach by Licensee of any other term or condition of this Agreement,
which breach is not cured within sixty (60) days after Licensee's
receipt of written notice setting forth the particular breach. It is
expressly understood that breach of the Standards shall be governed by
the provisions of Section 6(d).
(c) Any assignment of Licensee's assets or business for the benefit of
creditors, or appointment of a trustee or receiver, or like official
to administer or conduct the business of Licensee or adjudication in
any legal proceeding that Licensee is either insolvent or otherwise
unable to meet its financial obligations as they become due or is a
voluntary or involuntary bankrupt.
(d) Licensee or all or substantially all of its operations or assets are
sold or assigned, or are confiscated, nationalized or expropriated or
in any other manner controlled, either
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directly or indirectly, by any government, national, state or
municipal, or any agency thereof.
(e) Licensee engages in any course of conduct or activities which generate
materially negative publicity asserting that Licensee's business
practices do not conform to applicable law or standard industry
practices and the Trademark or Experian name, mark and/or logo is
referenced in a negative manner in two or more print or television or
radio media over the course of any week or is the subject of
significant use on the Internet over the course of any week and which
negative publicity is not responded to by Licensee in a reasonable
period after Licensee receives notice of such from Licensor with
Licensee's press releases and written responses directly to the media
outlets creating such publicity, and if appropriate, to the customer,
consumer or government agency that is the subject of such publicity
and/or with published advertisements of Licensee. Such press releases,
responses and/or advertisements of Licensee shall (i) announce that
corrective action is being undertaken, if in Licensee's reasonable
judgment that is necessary or desirable to maintain legal and industry
standards, and (ii) clarify, among other things, that Licensee is a
separate legal entity that has acquired the RES Business which was
formerly Licensor's and which RES Business is no longer operated by
Licensor.
9. Rights Upon Termination. The parties expressly agree that upon
termination or expiration of this Agreement, Licensee's right to make any use
whatsoever of the Trademark shall immediately and permanently cease. Licensee
shall thereafter immediately and permanently discontinue any and all further use
of the Trademark and take any further steps, at Licensor's expense, reasonably
required to effectuate and confirm the exclusive rights of Licensor in and to
the Trademark throughout the world. To that end, Licensee shall immediately
execute any and all appropriate documents and shall also assist Licensor in
terminating any agreements and registrations by which any other party has used
the Trademarks. Specifically, without limitation of the foregoing, Licensee
shall cooperate fully and assist Licensor, at Licensor's expense, in protecting
the Trademark and the registrations thereof throughout the world.
10. Failure to Enforce Agreement. Any failure by Licensor to enforce at
any time or for any period of time any term or condition of this Agreement shall
not be deemed a waiver of such term or condition or of any other term or
condition or of any subsequent breach of any term or condition.
11. Notice. All notices and communications required or permitted to be
given under this Agreement will be deemed to have been duly given at the time of
receipt if delivered by hand or communicated by electronic transmission or, if
mailed, three (3) days after deposit in the U. S. mail as registered or
certified, postage prepaid and addressed to the other party at their respective
addresses set forth below, unless a different person or address shall have been
designated by notice:
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To Licensee: First American Real Estate Solutions LLC
150 Second Avenue, Suite 1600
St. Petersburg, Florida 33701
Telefax: (813) 895-3619
Attention: President
To Licensor: Experian Information Solutions, Inc.
505 City Parkway West, 10th Floor
Orange, California 92868
Telefax: (714) 938-2513
Attention: General Counsel
12. Successors. This Agreement shall be binding on the successors to the
parties hereto subject to the provisions of Paragraph 5(c).
13. Entire Agreement. This Agreement, which may not be amended or
modified, except in writing executed by both parties, is the entire Agreement
between the parties with respect to its subject matter hereof and supersedes all
prior agreements, covenants, arrangements, communications, representations or
warranties between the parties with respect to the subject matter hereof,
whether written or oral.
14. Survival of Obligations. Other provisions hereof notwithstanding, any
obligation of a party incurred under this Agreement prior to the termination or
expiration hereof will survive such termination or expiration.
15. Headings. The headings and titles to the paragraphs of this Agreement
are inserted for convenience only and will not be deemed a part hereof or affect
the construction or interpretation of any provision hereof.
16. Controlling Law. This Agreement shall be construed, interpreted and
enforced according to the laws of the State of California.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
above written.
Licensor:
Experian Information Solutions, Inc.
By: /s/ D. V. Skilling
--------------------------------
Name: D. Van. Skilling
--------------------------------
Title:
--------------------------------
Licensee:
First American Real Estate Solutions LLC
By: /s/ Parker S. Kennedy
---------------------------------
Name: Parker S. Kennedy
---------------------------------
Title:
---------------------------------
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