NON-EXCLUSIVE LICENSE TO USE SERVICE MARK (Brevard County Public Schools)

Transcription

1 NON-EXCLUSIVE LICENSE TO USE SERVICE MARK (Brevard County Public Schools) THIS NON-EXCLUSIVE LICENSE TO USE SERVICE MARK (this Agreement ) is made by and between THE VIERA COMPANY, a Florida corporation ( Licensor ), and THE SCHOOL BOARD OF BREVARD COUNTY, FLORIDA, a political subdivision of the State of Florida ( Licensee ). The effective date of this Agreement shall be as of December 2, 2004 (the Effective Date ). W I T N E S S E T H: WHEREAS, Licensor engages in the business of planning and developing the mixeduse master planned community of Viera in Brevard County, Florida (the Community ), in which it uses the service marks VIERA registered with the United States Patent and Trademark Office as Registration Nos and 1,994,448 and the logo(s) attached hereto as EXHIBIT A and incorporated herein by this reference (collectively, the Marks ); and WHEREAS, Licensor desires to grant Licensee a non-exclusive license to use the Marks in connection with Licensee s operation, marketing, and promotion of public schools that are located within the Community, including, without limitation, use of the Marks in connection with school names, signage, logos, stationary, marketing materials and advertisements, websites, social media pages and other online platforms, and memorabilia (including, without limitation, shirts, sweatshirts, shorts, hats, and athletic team uniforms)(the Authorized Use ); and WHEREAS, Licensor and Licensee desire to execute this Agreement to supplement that certain Non-Exclusive License to Use Service Marks between Licensor and Viera High School dated January 2006, a copy of which is attached hereto as EXHIBIT B attached hereto and incorporated herein by this reference (the Prior Agreement ). NOW, THEREFORE, in consideration of the payment of Ten and No/100 Dollars ($10.00), the mutual covenants contained herein and other good and valuable consideration, the benefit of which inures to both parties, the parties agree as follows: 1. Recitals. The recitals set forth above are true and correct and are incorporated herein by this reference. 2. Grant of License. Licensor hereby grants to Licensee, effective as of the Effective Date, a non-exclusive license for Licensee and its employees to use the Marks in connection with the Authorized Use (the License ), provided that Licensee s use of the Marks is in accordance with the terms of this Agreement unless otherwise approved by Licensor in writing in its sole and absolute discretion. Any such use of the Marks by Licensee shall only be permitted if used in connection with the Authorized Use, in good taste, in a non-obscene manner consistent with the family-oriented image of the Community, and in a manner that does not impair the validity of, or the goodwill imputed by, the Marks. 1

2 3. Assignability of License. This Agreement and the License granted herein shall not be assigned or transferred by Licensee without the prior written consent of Licensor, which consent may be granted or withheld by Licensor in Licensor s sole discretion. Any assignment, sublicense or transfer without Licensor s written consent shall be null and void. Licensor may assign this Agreement, but only provided that such assignment is made subject to the terms, including all licenses, of this Agreement. 4. Term of Agreement. The term of this Agreement shall be for one (1) year from the Effective Date; provided, however, that the term of this Agreement shall automatically renew for successive one (1) year periods thereafter unless canceled by Licensor, effective as of the date of expiration of the then expiring term, by giving Licensee written notice of such cancellation at least ninety (90) days prior to such expiration. 5. Termination of Agreement. Notwithstanding anything contained herein to the contrary, this Agreement may be terminated and the License rights herein shall terminate and be of no further force or effect in the event that: a. Licensor determines that Licensee has used the Marks in any manner other than as provided in this Agreement or Licensee is otherwise in default under the terms of this Agreement, and Licensee fails to remedy the default to the satisfaction of Licensor in its sole discretion within twenty (20) days after receiving prior written notice of such default from Licensor; b. Either party terminates this Agreement upon written notice to the other if, in the party s reasonable judgment, termination is necessary to comply with any order, decree or request of a governmental authority or agency thereof, or with any court order; or c. This Agreement is mutually terminated by Licensor and Licensee in writing. Upon termination of this Agreement for any reason, Licensee shall have thirty (30) days from the effective date of termination to cease use of the Marks. Termination of this Agreement shall not release Licensee from any liability for its actions which occurred during the term of this Agreement. 6. Effect of Agreement. Licensee admits the validity of the Marks and agrees that any and all rights that might be acquired by the use of the Marks by Licensee, if any, shall inure to the sole benefit of Licensor. If Licensee shall adopt, use or register a trademark or service mark, it shall be sufficiently different from the Marks to avoid public confusion or resemblance to the Marks. The terms of this paragraph shall survive termination of this Agreement. 7. Notices. Any notice, request, demand, instruction or other communication to be given to any party with respect to this Agreement (a Notice ) may be given either by the party or its legal counsel and shall be deemed to have been properly sent and given when delivered by hand or when sent by certified mail, return receipt requested, by reputable courier service, or by . If delivered by hand, a Notice shall be deemed to have been sent, given and received when actually received by the addressee. If sent by certified mail, a Notice shall be deemed to have 2

3 been sent and given when properly deposited with the United States Postal Service with the proper address and postage paid therewith, and shall be deemed to have been received on the third (3rd) business day following the date of such deposit, whether or not actually received by addressee. If sent by courier service, a Notice shall be deemed to have been sent and given when delivered to said courier service with the proper address and delivery charges either prepaid or charged to a proper account, and shall be deemed to have been received when actually received by the addressee. If sent by , a Notice shall be deemed to have been sent, given and received on the date delivered by , with a copy sent by overnight delivery, as evidenced by written receipt therefore or confirmation of delivery whether or not actually received or opened by the person to whom addressed. Any party may change the address to which notices are to be sent to such party by sending a Notice to each other party specifying such change of address. The addresses to which Notices shall be sent are: To Licensor: To Licensee: The Viera Company 7380 Murrell Road, Suite 201 Viera, Florida Attn: Legal Department Address: vieralegal@duda.com Brevard Public Schools 2700 Judge Fran Jamieson Way Melbourne, Florida Attn: Superintendent Address: blackburn.desmond@brevardschool.org and Aguirre.tammy@brevardschools.org If any party hereto is represented by legal counsel, such legal counsel is authorized to deliver any Notice directly to the other party on behalf of his or her client, and the same shall be deemed proper notice hereunder if delivered in the manner specified above. If any party designates more than one recipient for Notices, and, pursuant this Agreement, a Notice is received or deemed to have been received by different recipients at different times, then the Notice shall be deemed to have been given on the earliest date that any required recipient received such Notice. 8. No Partnership. Joint Venture or Agency. Nothing herein shall be construed to constitute the parties as partners, joint venturers or as agents of the other. 9. Miscellaneous. This Agreement shall be construed and the legal relations between the parties shall be governed by the laws of the State of Florida. Venue shall lie in Brevard County, Florida. 10. Equitable Remedies. Licensee acknowledges that in the event of any breach or threatened breach of this Agreement by Licensee, including the unauthorized use of the Marks by Licensee after termination hereof, any remedies at law in favor of Licensor may be inadequate to prevent further harm to Licensor. Therefore, Licensee hereby agrees that, in addition to any and all other rights which Licensor may have, Licensor shall have the right to an injunction, or other appropriate equitable remedy, to prevent such breach by Licensee. 3

4 11. Attorneys Fees and Costs. In connection with any litigation arising in connection with this Agreement, including appellate, administrative, bankruptcy, arbitration and mediation proceedings, the substantially prevailing party shall be entitled to recover all reasonable attorneys and paralegals fees and costs and expenses from the party substantially not prevailing therein. 12. Individuals Benefited. The terms of this Agreement shall be binding upon and enforceable by Licensor, Licensee and their respective successors and assigns. 13. Waiver. No waiver of any breach or failure to perform the terms, covenants and conditions of this Agreement shall be binding upon the parties unless the same shall be in writing. Any such waiver shall be for one time only and shall not be for any future breach or failure to perform under the terms of this Agreement. 14. Entire Agreement and Subsequent Modification. This Agreement contains the entire agreement regarding the grant of the non-exclusive license and the use thereof, and supersedes and cancels all previous negotiations, agreements, commitments and writings with respect to the subject matter hereof. Any subsequent modifications or amendments to this Agreement shall become effective only upon the execution by both parties of an instrument in writing signed by duly authorized officers or representatives of the parties hereto. 15. Counterparts. The parties to this Agreement may execute this Agreement in whole or counterparts, and execution of counterparts shall have the same force and effect as if the parties had signed the same instrument. Signatures transmitted electronically or by facsimile shall have the same effect as original signatures. (SIGNATURES ARE ON THE FOLLOWING PAGE.) 4

5 IN WITNESS WHEREOF, the parties have duly executed this Agreement dates set forth below, but retroactive as of the Effective Date. WITNESSES: Print Name Print Name LICENSOR: THE VIERA COMPANY, a Florida corporation By: Name: Stephen L. Johnson Title: President Date: WITNESSES: Print Name Print Name LICENSEE: THE SCHOOL BOARD OF BREVARD COUNTY, FLORIDA, a political subdivision of the State of Florida a Florida corporation By: Name: Title: Date: 5

6 EXHIBIT A AUTHORIZED LOGO 6

7 EXHIBIT B COPY OF THE PRIOR AGREEMENT X:\LEGAL_VC\FORMS\License Agreements\License to Use Marks\(Brevard Public Schools) Non-Exclusive License to Use Service Mark.docx 7

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