SETTLEMENT AGREEMENT. The Board of Trustees of the University of Illinois, with offices at 352 Henry Administration

Transcription

1 SETTLEMENT AGREEMENT This SETTLEMENT AGREEMENT is made and entered into by and between The Board of Trustees of the University of Illinois, with offices at 352 Henry Administration Building, 506 South Wright Street, Urbana, Illinois (the "University"), and Honor the Chief Society, Inc., with an address at P.O. Box 7144, Champaign, Illinois (the "Society"). WHEREAS, on July 20, 2009, the Society filed an application in the United States Patent and Trademark Office ("USPTO") to register the trademark CHIEF ILLINIWEK in connection with the following services: Dance events; Dance reservation services, namely, arranging for admission to dance events; Entertainment and education services in the nature of live dance and musical performances; Entertainment and educational services, namely, the presentation of seminars, lectures, workshops and panel discussions, and ongoing television and radio talk shows all in the field of public interest concerning Native American culture; Entertainment in the nature of dance performances; Entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances; Organization of dancing events; Organizing community festivals featuring a variety of activities, namely, art exhibitions, heritage markets, ethnic dances, and the like; Organizing community festivals featuring a variety of activities, namely, sporting events, art exhibitions, flea markets, ethnic dances and the like; Organizing community sporting and cultural events, Serial No. 77/784,714 (the "Application"), which Application was published in the Official Gazette of the USPTO on October 26, 2010; WHEREAS, the University has filed an Opposition, No , in the United States Patent and Trademark Office opposing registration of the Application; WHEREAS, the University and the Society desire to settle any disputes between them relating to the Application and other matters relating to Chief Illiniwek marks and symbol;

2 NOW, THEREFORE, in consideration of the foregoing and of the mutual covenants and agreements contained herein, the parties agree as follows: 1. Covenants. a. Promptly after the execution of this Agreement, the Society shall expressly abandon the Application, with written consent of the University of Illinois, and will refrain from filing any other trademark applications consisting of the terms CHIEF ILLINIWEK, or any other trademarks of the University or terms confusingly similar thereto. b. The University will not object to use of the term Chief in the name, Honor the Chief Society. c. The University will not object to, but does not in any way approve, sponsor or endorse, the Society organizing, conducting or promoting events to honor or pay tribute to the history of Chief Illiniwek, or advocate for the reinstatement of Chief Illiniwek as the official symbol of the University of Illinois, and such events can include a performance in the nature of a choreographed tribute to the dance, as was performed by University authorized portrayers of Chief Illiniwek between 1926 and 2007; provided that such events comply with the terms and conditions of this Agreement, as well as meeting any other generally applicable laws or formal written policies or guidelines of the University. d. The Society shall refrain from use of the name Chief Illiniwek, the Chief logo (as depicted in Exhibit A, attached hereto and incorporated herein) or any other trademarks of the University or terms confusingly similar thereto; provided, however, that the University will not object to non-prominent, textual or nominative references to the history of Chief Illiniwek, or advocacy for the reinstatement of Chief Illiniwek as the official symbol of the University of Illinois, which do not constitute a trademark or service mark use of Chief Illiniwek by the Society. i. Without limiting the generality of the foregoing, the Society will refrain from referring to individuals as Chief Illiniwek or that they are the next or successive portrayers of Chief Illiniwek (e.g., John Doe was named the Next Chief Illiniwek,

3 the event will feature a performance by John Doe as Chief Illiniwek XXXVIII or Chief Illiniwek XXXVIII, John Doe, will address the media ). ii. An example of acceptable textual uses of CHIEF ILLINIWEK can be found in the marked copy of the current home page of the Honor the Chief Society, Inc. s website attached as Exhibit B, attached hereto and incorporated herein. e. The Society shall prominently include the following disclaimer of affiliation with the University of Illinois on its website in at least the About Us page, or its equivalent, and in the footer of the website, and on any advertising or promotional materials distributed by or on behalf of the Society: The Honor the Chief Society is not sponsored, licensed, approved or endorsed by the University of Illinois. f. The Society shall refrain from selling, offering to sell, advertising or promoting any goods bearing without authorization any trademarks of the University, but the University will not object to the sale, offering for sale, advertising or promoting by the Society of goods bearing: i. the name Honor the Chief ; ii. the image of a Native American as a logo, provided that such logo is not confusingly similar to any logos of Chief Illiniwek used by University of Illinois, including, without limitation, the Chief Logo attached hereto as Exhibit A. The Honor the Chief logo attached hereto as Exhibit C and incorporated herein, is not confusingly similar to logos of Chief Illiniwek used by the University of Illinois; or iii. images of former portrayers of Chief Illiniwek, provided however, Society shall be responsible for securing all rights required for the use of such images, including, but not limited to, any rights of publicity and copyright. g. The Society s website shall not include a hyperlink to the University s website or any web page maintained by the University or by any University of Illinois related organization ( URO ) without the express written consent of the University, which consent is in the University s sole discretion; provided that the Society s website may include a hyperlink to websites or web pages of any registered student organization paying tribute to the

4 history of Chief Illiniwek or advocating for the reinstatement of Chief Illiniwek as the official symbol of the University of Illinois, such as Students for Chief Illiniwek. h. The Society shall refrain from making any references that suggest or imply in any way that the University, or the University of Illinois Alumni Association, the University of Illinois Foundation or any other URO sponsors, endorses, approves of, is affiliated with or has licensed the Society or its events, including, by way of example and not limitation, statements that the Society is the official group associated with Chief Illiniwek; provided that the foregoing will not restrict the right of any registered student organization, including but not limited to Students for Chief Illiniwek, from sponsoring, endorsing or approving of the Society and its activities, or from maintaining an affiliation with the Society. i. While the University continues to recognize that First Amendment rights may exist in events and performances related to Chief Illiniwek, the University will defend its intellectual property rights and its policies where applicable. 2. Miscellaneous. a. Binding Effect. Upon execution hereof by both parties, this Agreement shall be binding upon and inure to the benefit of the respective legal representatives, heirs, executors, administrators, successors and assigns of the parties hereto. b. No Waiver. No waiver by either party to this Agreement of any breach of any of the covenants, agreements or undertakings contained herein shall be construed as a waiver of any succeeding breach of the same or of any other covenant, agreement or undertaking or effect the right or either party to require the strict performance thereof on a subsequent occasion. No waiver, consent, or similar action with respect to any covenant, agreement or undertaking contained herein shall be effective unless embodied in a writing specifically stating that it is such a waiver, consent, extension, indulgence or similar action and signed by the part to be bound thereby. c. Effect of Agreement.

5 i. This Agreement is to operate as a resolution of the pending dispute only as between the parties hereto, and it is understood that the parties expressly reserve the right to prosecute suits and claims against any and all other entities or persons that may use like or confusingly similar marks to either of the parties' trademarks. ii. By entering into this Agreement neither party admits any wrongdoing nor concedes any of the issues raised in the Opposition. d. Entire Agreement. This Agreement constitutes the entire agreement between the parties with respect to the subject matter contained herein and supersedes all previous negotiations or proposals, and may only be modified by an amendment executed in writing by both parties hereto. e. Severability. The provisions of this Agreement shall be deemed severable, and any invalidity or unenforceability of any one or more of its provisions shall not affect the validity or enforceability of the other provisions hereof. f. Incorporation of Recitals. The matters recited above are hereby incorporated into this Agreement, with the same effect and as though fully set forth herein. g. Governing Law, Jurisdiction and Venue. This Agreement shall be deemed to have been made in, and shall be construed pursuant to the laws of, the State of Illinois. The parties agree that any action or proceeding arising out of or related to this Agreement shall be brought exclusively in the appropriate courts located in Illinois, and the parties hereby consent to such venue and to the jurisdiction of such courts over such proceeding and themselves. h. Counterparts. This Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, and all of which shall be deemed as being the same instrument. IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date first above written by their duly authorized representatives.

6 THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS By: Name: Walter K. Knorr Title: Comptroller Date: HONOR THE CHIEF SOCIETY, INC. By: Name: Title: Date:

7 EXHIBIT A The Chief Logo

8 EXHIBIT B Honor the Chief Society Marked Webpage

9 EXHIBIT C The Honor the Chief Logo