LICENSE AGREEMENT
BETWEEN PLM INTERNATIONAL, INC.
AND MAC TRAILER LEASING, L.L.C.
This License Agreement (the "Agreement") is made effective as of this
30th day of September, 2000 ("Effective Date"), between PLM International, Inc.,
a Delaware corporation, having its place of business at One Market, Steuart
Street Tower, Suite 800, San Francisco, California 94105 ("Licensor"), and MAC
Trailer Leasing, L.L.C., a Delaware limited liability company, having its place
of business at 1 Maynard Drive, Park Ridge, New Jersey 07656 ("Licensee").
RECITALS:
WHEREAS, Licensor is the owner of certain trademarks and service marks
and registrations, including the service marks PLM TRAILER LEASING, PLM PLM
TRAILER LEASING and design, PLM PLM TRAILER LEASING REFRIGERATED SOLUTIONS FOR
THE FOODSERVICE INDUSTRY and design, REFRIGERATED SOLUTIONS FOR THE FOODSERVICE
INDUSTRY, and PLM RENTAL, relating to the truck trailer equipment rental and
leasing services ("Service Marks");
WHEREAS, Licensor owns federal service mark registrations for PLM
TRAILER LEASING, Registration No. 2,248,568, PLM PLM TRAILER LEASING and design,
Registration No. 2,248,567, PLM PLM TRAILER LEASING REFRIGERATED SOLUTIONS FOR
THE FOODSERVICE INDUSTRY and design, Registration No. 2,247,007, REFRIGERATED
SOLUTIONS FOR THE FOODSERVICE INDUSTRY, Registration No. 2,142,572, and PLM
RENTAL, Registration No. 1,651,728;
WHEREAS, pursuant to an Asset Purchase Agreement dated May 24, 2000
(the "Purchase Agreement") between Marubeni America Corporation, a New York
corporation ("MAC"), Licensor, and the other sellers party thereto, Licensor is
selling all of its interest in certain Acquired Assets and Assumed Liabilities
of the Business to MAC (as such terms are defined in the Purchase Agreement);
WHEREAS, as permitted by the Purchase Agreement, MAC and Licensor,
among others, have agreed that MAC may assign its rights thereunder to Licensee;
WHEREAS, Licensee wishes to use the Service Marks in connection with
trailer equipment rental and leasing services (the "Trailer Leasing Services")
for a transitional period of five years from the Effective Date; and
WHEREAS, Licensor is willing to permit such transitional use of the
Service Marks by Licensee in accordance with the terms and conditions of this
Agreement;
NOW, THEREFORE, pursuant to the purchase of Acquired Assets and Assumed
Liabilities of the Business, the parties hereto agree as follows:
1. Licensor hereby grants Licensee an irrevocable, royalty-free,
exclusive license to use the Service Marks solely in connection with Trailer
Leasing Services (the "License") for a period of five years from the Effective
Date, subject to the terms and conditions set forth in this Agreement.
2. The License granted applies solely to the Service Marks as set
forth on the attached exhibits for use solely with Trailer Leasing Services and
for no other purpose; Licensee shall have no right to use the name "PLM" or the
"PLM" logo apart from the words "Rental" or "Trailer Leasing." Licensee may use
the Service Marks whether alone or in conjunction with other marks of Licensee
or third parties.
3. Licensor has not received notice of any claim that the use of the
Service Marks does or may infringe the rights of any third party.
4. Licensee acknowledges Licensor's ownership of the Service Marks and
the validity of any registrations therefor. Except as otherwise provided in this
Agreement, Licensee shall not apply to register or register the Service Marks.
Licensee agrees to assist Licensor as necessary in maintaining its rights in the
Service Marks, including assisting Licensor upon request in contesting any
third-party infringement.
5. Licensor acknowledges that Licensee shall have the sole and
exclusive right throughout the world to use the Service Marks. Licensor shall
not, and shall not authorize any other third party to, use the Service Marks in
any manner whatsoever. Licensor shall not anywhere in the world challenge the
Licensee's use of the Service Marks, provided that such use is consistent with
the requirements of this Agreement. Licensor will not take or, at Licensee's
expense, omit to take, or authorize the taking or omission of, any action that
could dilute or adversely affect any of the Service Marks or Licensee's license
thereof. Licensor shall not adopt or use, or license others to use, in
connection with any goods or services any other trademark or service mark that
is a variation of or phonetically similar to any Service Mark or suggestive of
Trailer Leasing Services.
6. Notwithstanding anything to the contrary in this Agreement,
Licensor may continue to use the name "PLM" and the "PLM" logo during the term
of this Agreement and thereafter, whether alone or in conjunction with other
marks or words, other than in connection with Trailer Leasing Services or in a
manner that is suggestive of Trailer Leasing Services.
7. Licensor shall take all necessary steps, including in any
proceeding before the United States Patent and Trademark Office, to maintain, to
the extent permitted by law, any registration of each Service Mark, including
the filing of applications for renewal, affidavits of use, affidavits of
incontestability and opposition, interference and cancellation proceedings, and
the payment of fees and taxes. Licensee shall pay all costs and expenses that
Licensor reasonably incurs pursuant to this paragraph 7.
8. Licensor shall not knowingly permit any registration relating to
any Service Mark to become abandoned or dedicated to the public or placed in the
public domain or to become invalid or unenforceable, and shall notify Licensee
immediately if it knows, or has reason to know, that any such actions may occur
or of any final or otherwise material adverse determination or development
(including the institution of, or any such determination or development in, any
proceeding in the United States Patent and Trademark Office or any court)
regarding the ownership or validity of any Service Mark, its right to register
the same, or to keep, maintain, and enforce the same. If Licensor is required to
take any affirmative actions to comply with this paragraph, Licensee shall pay
all costs and expenses that Licensor reasonably incurs.
9. Licensor shall not take or omit to take, or authorize the taking or
omission of, any action with respect to the Service Marks that would in any way
diminish the goodwill associated with the Service Marks.
10. Licensor shall comply with all the terms and conditions of the
Non-Competition Agreement dated as of the Effective Date between, inter alia,
Licensor and Licensee and shall require any assignee or successor to any of the
Collateral (as defined in paragraph 19) to comply therewith.
11. Upon receiving notice from Licensee of activities by a third party
that may be infringing or otherwise impairing the strength of the Service Marks,
Licensor agrees to act promptly and diligently to enforce and otherwise defend
its and Licensee's rights in the Service Marks. Licensee shall pay all costs and
expenses that Licensor reasonably incurs pursuant to this paragraph 11.
12. Licensor may assign, sell or otherwise divest all or a portion of
its interest in the Services Marks, the goodwill associated therewith and the
business in connection with which the Licensor's PLM word mark and PLM logo
("PLM Marks") are used, provided that (i) Licensor assigns, sells or otherwise
divests all or a portion of its interest in the Services Marks and the goodwill
associated therewith only in connection with the PLM Marks; (ii) the party
acquiring such interest agrees in writing to be bound by the terms and
conditions of this Agreement, including assuming all rights, obligations and
liabilities associated herewith, and acquiring the Collateral subject to the
lien of Licensee's security interest hereunder, (iii) Licensee continues to have
a perfected security interest in the Collateral, and (iv) on or before the date
of such assignment, sale or other divestiture, the acquiring party shall have
filed and recorded such instruments and documents with the appropriate
governmental authorities and executed and delivered to Licensee such other
instruments and documents and taken such other action as necessary or as
Licensee shall reasonably request in order to maintain the perfection and
priority of the Collateral. Except as set forth in the preceding sentence,
Licensor will not sell, assign (by operation of law or otherwise) or otherwise
dispose of any of the Service Marks, any associated goodwill or any other
Collateral, or create or suffer to exist any lien or other charge or encumbrance
upon or with respect to any of the Service Marks, any associated goodwill or any
other Collateral, except for the license and security interest created by this
Agreement.
13. Licensee may assign this Agreement and the security interests
granted hereunder to an affiliated company that is either a direct or indirect
subsidiary, that is at least 80% directly or indirectly owned by Marubeni
Corporation. If, after an assignment permitted under this paragraph, the
assignee ceases to be at least 80% directly or indirectly owned by Marubeni
Corporation, the assignee shall assign this Agreement and the security interests
granted herein to Marubeni Corporation or a direct or indirect subsidiary, that
is at least 80% directly or indirectly owned by Marubeni Corporation, within
thirty days after the date on which the assignee ceases to be at least 80%
directly or indirectly owned by Marubeni Corporation. If the assignee fails to
comply with the foregoing sentence, this Agreement shall terminate. Licensee may
assign this Agreement and the security interests granted hereunder to a third
party subject to Licensor's consent, which consent Licensor shall not
unreasonably withhold, except that Licensee may not assign this Agreement to a
competitor of Licensor or to a third party whose affiliation with Licensor is
reasonably believed by Licensor to damage materially Licensor's reputation.
14. Licensor shall cause a copy of this Agreement to be filed with the
Securities Exchange Commission as a material contract as party of the exhibits
to Licensor's next periodic report after the Effective Date under the Securities
and Exchange Act of 1934.
15. During the term hereof, Licensor agrees that, in the event that
Licensor or an assignee of Licensor, as applicable, ceases to conduct business
in the ordinary course, Licensor shall assign to Licensee the Service Marks and
any goodwill associated with the Service Marks. In the event of an assignment
under this paragraph 15: (i) this Agreement shall terminate and (ii) no later
than five years after the Effective Date, Licensee shall operate its Trailer
Leasing Services under a name that does not include or resemble the word "PLM"
or any word confusingly similar thereto, promptly destroy all stationery,
business cards, forms and other business materials containing the word mark
"PLM," and file an express abandonment with the United States Patent and
Trademark Office.
16. Upon the expiration or termination of the License, Licensee shall
operate its Trailer Leasing Services under a name that does not include or
resemble the word "PLM" or any word confusingly similar thereto, and Licensee
shall promptly destroy all stationery, business cards, forms and other business
materials containing the word mark "PLM".
17. Upon the expiration or termination of the License, Licensor agrees
that it shall not license the use of the Service Marks or any mark confusingly
similar thereto to any person or entity, nor shall it use, or allow any person
or entity to use, the Service Marks or any mark confusingly similar thereto.
18. A material part of the consideration for Licensor's licensing the
Service Marks to Licensee is the confidence Licensor has in Licensee's excellent
record of past business conduct and favorable reputation for integrity and high
quality of services. Licensee agrees that the services rendered under the
Service Marks will continue to be of the same high quality as previously
provided by Licensor, and that Licensee will not engage in any activity which
would impugn Licensor's reputation or that of the Service Marks.
19. As security for the prompt and complete performance of all of the
obligations of the Licensor, now existing or hereafter incurred, arising out of,
relating to or connected with this Agreement, Licensor hereby pledges and grants
to Licensee a continuing security interest in all of Licensor's right, title,
and interest in and to the following, whether now or hereafter existing or
acquired (the "Collateral"): (i) each Service Mark and all registrations and
recordings thereof; (ii) all extensions or renewals of any of the items
described in clause (i); (iii) all of the goodwill of the business of Licensor
connected with the use of, and represented and symbolized by the items described
in clause (i); and (iv) all proceeds of, and rights associated with, the
foregoing, including any claim by Licensor against third parties for past,
present, or future infringement or dilution of any Service Mark or for any
injury to the goodwill associated with the use of any such Service Mark.
a) Licensor covenants and agrees that:
(i) contemporaneously with the execution and delivery of this
Agreement, it will execute and deliver to Licensee the Trademark Security
Agreement in the form attached hereto as Exhibit A (the "Trademark Security
Agreement") and a UCC-1 financing statement describing the Collateral for filing
with the office of the California Secretary of State and, from time to time at
Licensee's expense, it will promptly execute and deliver all further instruments
and documents, and take all further action, that Licensee may reasonably request
as necessary or desirable in order to perfect, preserve, and protect any
security interest granted or purported to be granted hereby or to enable
Licensee to exercise and enforce its rights and remedies hereunder with respect
to any Collateral;
(ii) it will give Licensee at least thirty (30) days' prior
written notice of any change in its name, identity or corporate structure or the
location of its chief place of business and simultaneously with such change, at
Licensee's expense, will take all action necessary or reasonably requested by
the Licensee in order to perfect, preserve, and protect the security interest
granted or purported to be granted herein.
b) Licensor will be deemed in default under this Agreement upon the
occurrence of the following (each an "Event of Default"): (i) a material breach
by Licensor of this Agreement where such breach materially, adversely affects
Licensee's rights under the License or if such breach is of such a nature that
it cannot reasonably be cured; or (ii) any other material breach by Licensor of
this Agreement, where such breach remains uncured for a period of twenty days
after Licensor receives written notice thereof. Upon an Event of Default,
Licensee may exercise all rights and remedies of a secured party on default
under the Uniform Commercial Code, including, without limitation, foreclose or
otherwise enforce Licensee's security interest in the Collateral in any manner
permitted by law, and any and all other rights and remedies available to
Licensee under applicable law.
20. Licensor hereby irrevocably appoints Licensee as Licensor's
attorney-in-fact, with full authority in the place and stead of Licensor and in
the name of Licensor or otherwise, from time to time in Licensee's discretion,
to take any action and to execute any instrument that Licensee may deem
necessary or advisable to accomplish the purposes of this Agreement, including,
without limitation, to maintain the Service Marks and the registration, validity
and enforceability thereof and to maintain the perfection and priority of the
security interest granted hereunder; provided that Licensee agrees not to
exercise its rights under this paragraph unless there is an Event of Default.
Licensee agrees that it shall provide Licensor with written notice reasonably
promptly after it exercises its rights hereunder. Licensor acknowledges,
consents and agrees that the power of attorney granted hereunder is irrevocable
and coupled with an interest.
21. This Agreement does not constitute and shall not be construed as
constituting a partnership, joint venture or agency relationship between the
parties. Neither party shall have the right to obligate or bind the other party
in any manner whatsoever, and nothing herein contained shall give or is intended
to give any rights of any kind to any third persons.
22. In the event any paragraph or provision of this Agreement is held
to be void or unenforceable, the remaining provisions of this Agreement shall
nevertheless be binding upon the parties with the same force and effect as
though the void and unenforceable parts had been severed or deleted.
23. The waiver of any term or provision of this Agreement shall not be
construed as a waiver of any other term or provision. No failure to exercise and
no delay in exercising, on the part of Licensee, any right, remedy, power, or
privilege hereunder shall operate as a waiver thereof; nor shall any single or
partial exercise of any right, remedy, power or privilege hereunder preclude any
other or further exercise thereof, or the exercise of any other right, remedy,
power or privilege.
24. This Agreement shall be binding upon and shall inure to the
benefit of the parties and their present and past agents, servants, officers,
directors, partners, predecessors, employees, franchisees, trustees,
representatives, shareholders, successors and assigns; provided, however, that
Licensee shall not have the right to sublicense or assign this Agreement, by
operation of law or otherwise, except as otherwise set forth in paragraph 13.
25. This Agreement shall be governed by and construed under the laws
of the United States and the local laws of the State of California, as applied
to agreements entered into and to be performed entirely within California and by
California residents, without regard to choice of laws provisions.
26. Any dispute arising out of this Agreement, or its performance or
breach, shall be resolved by binding arbitration at San Francisco, California,
under the Commercial Arbitration Rules (the "AAA Rules") of the American
Arbitration Association (the "AAA"). This arbitration provision is expressly
made pursuant to and shall be governed by the Federal Arbitration Act, 9 U.S.C.
sections 1-14. The Parties agree that pursuant to section 9 of the Federal
Arbitration Act, a judgment of a United States District Court of competent
jurisdiction shall be entered upon the award made pursuant to the arbitration. A
single arbitrator, who shall have the authority to allocate the costs of any
arbitration initiated under this paragraph, shall be selected according to the
AAA Rules within ten (10) days of the submission to the AAA of the response to
the statement of claim or the date on which any such response is due, whichever
is earlier. The arbitrator shall be required to furnish to the parties to the
arbitration a preliminary statement of the arbitrator's decision that includes
the legal rationale for the arbitrator's conclusion and the calculations
pertinent to any damage award being made by the arbitrator. The arbitrator shall
then furnish each of the parties to the arbitration the opportunity to comment
upon and/or contest the arbitrator's preliminary statement of decision either,
in the discretion of the arbitrator, through briefs or at a hearing. The
arbitrator shall render a final decision following any such briefing or hearing.
The arbitrator shall conduct the arbitration in accordance with the Federal
Rules of Evidence. The arbitrator shall decide the amount and extent of
pre-hearing discovery which is appropriate. The arbitrator shall have the power
to enter any award of monetary and/or injunctive relief (including the power to
issue permanent injunctive relief and also the power to reconsider any prior
request for immediate injunctive relief by any party and any order as to
immediate injunctive relief previously granted or denied by a court in response
to a request therefor by any party), including the power to render an award as
provided in Rule 43 of the AAA Rules; provided, however, that the arbitrator
shall not have the power to award consequential, indirect, punitive or exemplary
damages under any circumstances (whether styled as loss of profit, loss of
expected economic advantage, punitive, exemplary or treble damages, or any
penalty or punitive type of damages) regardless of whether such damages may be
available under any applicable law, the parties are hereby waiving their rights,
if any, to recover any such damages, whether in arbitration or litigation. The
arbitrator shall have the power to award the prevailing party its costs and
reasonable attorneys' fees; provided, however, that the arbitrator shall not
award attorneys' fees to a prevailing party if the prevailing party received a
settlement offer unless the arbitrator's award to the prevailing party is
greater than such settlement offer without taking into account attorneys' fees
in the case of the settlement offer or the arbitrator's award. Any arbitration
shall be held in San Francisco, California, for any claim brought by the
parties. In addition to the above courts, the arbitration award may be enforced
in any court having jurisdiction over the parties and the subject matter of the
arbitration.
27. This Agreement contains the complete and entire understanding and
agreement between the parties and supersedes any previous communications,
representations, or agreements, verbal or written, related to the subject matter
of this Agreement. This Agreement may only be amended by a writing signed by the
party to be charged or its successor(s) in interest.
28. All notices, requests, demands and other communications provided
for by this Agreement shall be in writing and shall be deemed given on the date
delivered if delivered personally (including by courier), on the date
transmitted if sent by confirmed telecopy or mailed by registered or certified
mail (return receipt requested) to the parties at the following addresses (or at
such other address as may be specified by like notice):
If to Licensor:
PLM International, Inc.
One Market
Steuart Street Tower, Suite 800
San Francisco, California 94105
Attention: General Counsel
Telephone: (415) 974-1399
Telecopier: (415) 882-0860
If to Licensee:
MAC Trailer Leasing, L.L.C.
1 Maynard Drive
Park Ridge, NJ 07656
Attention: Daniel P. DeBlasio
Telephone: (201) 949-2008
Telecopier: (201) 391-0356
With a copy to:
Marubeni America Corporation
450 Lexington Avenue
New York, New York 10017
Attention: David Appel - Counsel
Telephone: (212) 250-0132
Telecopier: (212) 450-0706
29. This Agreement may be executed in one or more counterparts, all of
which shall be considered one and the same agreement and shall become effective
when two or more counterparts have been signed by each of the parties hereto and
delivered to the other party.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written.
LICENSOR LICENSEE
PLM INTERNATIONAL, INC. MAC TRAILER LEASING, L.L.C.
Signature \s\ Susan Santo Signature /s/ Toru Nishimi
Printed Name: Susan Santo Printed Name: Toru Nishimi
Title: V.P. Title: Chairman
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