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HomeMy WebLinkAbout2008-06-10; City Council; 19463; Trademark and Copyright License memorandumCITY OF CARLSBAD - AGENDA BILL AB# 19,463 MTG. 06/10/08 DEPT. City Atty. Memorandum of Trademark and Copyright License DEPT. HEAD CITY ATTY. <^r CITY MGR. (//> — RECOMMENDED ACTION: Adopt Resolution No. 2008-157 memorializing the existing non-exclusive, non- transferable, revocable, royalty-free right and license to continue using the Marks (defined below) in connection with The Crossings at Carlsbad golf course and all related goods and services. ITEM EXPLANATION: In June 1989, the citizens of Carlsbad approved Proposition G which allowed the City to spend more than $1 million of tax revenue on the construction of a public golf course and other recreational facilities. Thereafter, staff proceeded diligently to make the Council's vision of a municipal golf course a reality. In April 2000, by approving the Joint Exercise of Powers Agreement the City Council on behalf of the City of Carlsbad and the Water Board on behalf of the Carlsbad Municipal Water District formed the Carlsbad Public Financing Authority (CPFA). This Authority took the necessary actions to finance, construct and operate the Carlsbad Municipal Golf Course. In May 2006, a City Selection Committee, endorsed by the City Council, was established for the purpose of soliciting and reviewing suggested names for the Carlsbad Municipal Golf Course. The Selection Committee convened and began the process of inviting the public to submit naming suggestions for the Golf Course. In June 2006, a general public notice was sent to the community and a general public announcement was made at the City Council meeting on Tuesday, June 6, 2006 requesting suggested names for the Carlsbad City Golf Course. On October 17, 2006, the City Council selected The Crossings at Carlsbad as the name of the Carlsbad Municipal Golf Course. The City Council, orally and by its actions, granted a non- exclusive, non-transferable, revocable, royalty-free license to use its trademarks "The Crossings at Carlsbad" and "TCAC", and its copyrighted design logo that includes stylized waves above the words "The Crossings at Carlsbad" (all of which are collectively referred to herein as the "Marks"), for the uses set forth on Exhibit A to the Memorandum of Trademark and Copyright License (attached hereto as Exhibit 2) to CPFA in connection with The Crossings at Carlsbad golf course and all related goods and services. The Memorandum of Trademark and Copyright License memorializes that oral license into a written document. DEPARTMENT CONTACT: Paul Edmonson (760) 434-2891, pedmo@ci.carlsbad.ca.us FOR CITY CLERKS USE ONLY. COUNCIL ACTION: APPROVED DENIED CONTINUED WITHDRAWN AMENDED of Dn nn CONTINUED TO DATE SPECIFIC CONTINUED TO DATE UNKNOWN RETURNED TO STAFF OTHER -SEE MINUTES Dnn n Page 2 FISCAL IMPACT: There is no fiscal impact by this action. ENVIRONMENTAL IMPACT: Pursuant to Public Resources Code section 21065 and CEQA Guidelines section 15738, this action does not constitute a "project" within the meaning of CEQA and therefore, does not require an environmental review. EXHIBITS: 1. Resolution No. 2008-157 memorializing the existing non-exclusive, non- transferable, revocable, royalty-free right and license to continue using the Marks in connection with The Crossings at Carlsbad golf course and all related goods and services. 2. Memorandum of Trademark and Copyright License 1 2 16 17 18 Exhibit 1 RESOLUTION NO. 2008-157 A RESOLUTION OF THE CITY COUNCIL OF THE CITY OF CARLSBAD, CALIFORNIA, MEMORIALIZING TRADEMARK AND COPYRIGHT RELATED TO THE CROSSINGS AT CARLSBAD GOLF COURSE WHEREAS, on October 17, 2006, the City Council selected The Crossings at Carlsbad as the name of the Carlsbad Municipal Golf Course. The City Council, orally and o0 by its actions, granted a non-exclusive, non-transferable, revocable, royalty-free license to 9 use its trademarks "The Crossings at Carlsbad" and "TCAC", and its copyrighted design 10 logo that includes stylized waves above the words "The Crossings at Carlsbad" (all of 11 which are collectively referred to herein as the "Marks"), for the uses set forth on Exhibit A 12 to the Memorandum of Trademark and Copyright License (attached thereto as Exhibit 2) to CPFA in connection with The Crossings at Carlsbad golf course and all related goods and services. NOW, THEREFORE, BE IT RESOLVED by the City Council of the City of Carlsbad, California, as follows: 1. That the above recitations are true and correct. 19 20 II 21 II 22 23 " 24 " 25 26 27 28 2. That the Mayor is hereby authorized to sign the Memorandum of Trademark and Copyright License on behalf of the City of Carlsbad. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PASSED, APPROVED AND ADOPTED at a Regular Meeting of the City Council of the City of Carlsbad on the 10th day of June, 2008, by the following vote to wit: AYES: Council Members Lewis, Kulchin, Hall and Nygaard. NOES: None. ABSENT: Packard. LORRAINE M. WOOD, City Cl (SEAL) MEMORANDUM OF TRADEMARK AND COPYRIGHT LICENSE THIS MEMORANDUM OF TRADEMARK AND COPYRIGHT LICENSE (the "License") is dated effective as ofCTo n «- it) , 2008, by and between The City of Carlsbad, a California municipal corporation ("Licensor"), and the Carlsbad Public Financing Authority, a pubic entity and joint powers authority ("Licensee"), with reference to the following facts: A. Licensor is the owner of the trademarks set forth on Exhibit A hereto for the uses described on Exhibit A, and of the copyrighted design logo represented by the Mark set forth on Exhibit A that includes stylized waves above the words "The Crossings at Carlsbad" (all of which are collectively referred to herein as the "Marks"); B. Licensee until now has used Licensor's Marks pursuant to an oral license; and C. Licensor and Licensee desire to further document the existing non-exclusive, non- transferable, revocable, royalty-free right and license for Licensee to continue using the Marks in connection with The Crossings at Carlsbad golf course and all related goods and services. NOW, THEREFORE, in consideration of the mutual promises set forth in this License, and other valuable consideration, the receipt and adequacy of which are hereby acknowledged, the parties hereby agree as follows: 1. Licensee's Assignment to Licensor. To the extent Licensee possesses any common law or other rights of any type in or to the Marks, Licensee hereby assigns all of such rights to Licensor together with all good will associated with the use of the Marks. 2. Grant of License. Licensor hereby reaffirms the license previously granted to Licensee on October 17, 2006, of a non-exclusive, non-transferable, revocable, royalty-free license to use the Marks in connection with the financing and operation of The Crossings at Carlsbad golf course and all related goods and services (the "License"), and Licensee hereby affirms its acceptance of the License, subject to the terms and conditions set forth in this License. All goodwill associated with Licensee's use of the Marks shall continue to inure to the benefit of Licensor. 3. Ownership of Marks. Licensee acknowledges the ownership of the Marks of Licensor and agrees that it will do nothing inconsistent with such ownership, and that all uses of the Marks by Licensee shall continue to inure to the benefit of and be on behalf of Licensor. Licensee agrees that nothing in this License shall give Licensee any right, title or interest in the Marks other than the right to use the Marks in accordance with this License, and Licensee agrees that it will not contest the title of Licensor to the Marks or contest the validity of this License. 4. Quality Standards and Control. Licensee agrees that the nature and quality of: (i) all services rendered by Licensee in connection with the Marks; (ii) all goods sold by Licensee under the Marks; and (iii) all related advertising, promotional and other related uses of the Marks by Licensee, shall continue to conform to standards set by, and be under the control of, Licensor. Licensee agrees that it will not harm, misuse or bring into disrepute the Marks. All 115010/000000/917118.03 uses of the Marks by Licensee are subject to review and approval by Licensor. Any violation of this provision shall be a default under this License entitling Licensor to terminate this License pursuant to Section 8. Licensee agrees to cooperate with Licensor in facilitating Licensor's control of such nature and quality, to permit reasonable inspections of Licensee's operations, products, services, printed materials, and all other items bearing a Mark, and to supply Licensor with specimens of all uses of the Marks upon request. Licensee shall comply with all applicable laws and regulations, and obtain all appropriate government approvals, pertaining to the sale, distribution and advertising of products and services associated with the Marks. 5. Form of Use. Licensee agrees to use the Marks only in the form and manner and with appropriate legends as prescribed from time to time by Licensor, and not to use any other trademark or service mark in combination with the Marks without the prior written approval of Licensor. Licensee shall not adopt or use any trademark or service mark that is, or is likely to be, confusingly similar to the Marks. 6. Infringement Proceedings. Licensee agrees to promptly notify Licensor of any unauthorized use of the Marks by others as such comes to Licensee's attention. Licensor shall have the sole right and discretion to bring any infringement or unfair competition proceedings involving the Marks. 7. Term. The term of this License shall commence on the date of this License and continue in force and effect until the earlier of: (i) Licensee ceases to exist; (ii) Licensee transfers back to Licensor all rights it possesses that are related to The Crossings at Carlsbad golf course; or (iii) this License is terminated in accordance with Section 8. 8. Termination. Licensor shall have the right to terminate this License prior to the expiration of its term upon giving thirty (30) days' prior written notice to Licensee in the event of: (i) Licensee's breach of any of the provisions of this License; (ii) Licensee's breach of any other written obligations owed to Licensor; (iii) Licensee's insolvency, upon the appointment of any receiver or trustee to take possession of the properties of Licensee, or upon the winding-up, sale, consolidation, merger or any sequestration by governmental authority of Licensee; or (iv) for any reason in Licensor's sole discretion. 9. Effect of Termination. Upon any termination of this License, Licensee agrees to immediately discontinue all use of the Marks and any term or terms confusingly similar thereto, to cooperate with Licensor or its appointed agent to apply to the appropriate authorities to cancel any recording of this License in any government records, to destroy or return to Licensor all printed materials bearing the Marks, and to ensure that all rights in the Marks and the goodwill connected therewith shall remain the property of Licensor. 10. No Warranties. It is understood and agreed that Licensor does not, by virtue of this License or otherwise, warrant or agree to the validity of any aspect of the Marks, or that their use will not be affected by any other parties. 11. Warranty; Limited Liability; Indemnification. LICENSOR MAKES NO WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED REGARDING THE MARKS. NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, CONSEQUENTIAL OR 115010/000000/917118.03 INCIDENTAL DAMAGES WHATSOEVER ARISING OUT OF OR RELATING TO THIS LICENSE. Licensee shall defend, indemnify and hold Licensor harmless from and against any and all claims, lawsuits, damages, losses, liabilities, judgments, fees and costs, including, without limitation, reasonable attorneys' fees and costs, claimed or sustained by third parties, whether for personal injury or otherwise, arising out of or relating to the marketing, distribution, sale or use of the products, services, information, and materials bearing the Marks or arising out of or relating to the unauthorized use of the Marks. Licensee shall give Licensor prompt written notice of any such claim or lawsuit. Licensor shall have the exclusive right to compromise, settle or control the defense of such claim or lawsuit. However, Licensee may have control over the defense of the lawsuit if Licensor shall have given prior approval for such control, and approval of Licensee's legal counsel, but in no event shall Licensee settle or compromise any claims or lawsuits without the prior consent of Licensor. 12. Governing Law. This License shall be governed by, and construed in accordance with, the laws of the State of California. Any controversy concerning the terms of this License shall be determined in the courts located in San Diego County, California, and Licensee consents to personal jurisdiction and venue therein. 13. Attorneys' Fees. In the event either party shall commence any action or proceeding against the other party for a breach or claimed breach of this License, or to seek a judicial declaration of rights under this License, the prevailing party in such action shall be entitled to recover reasonable attorneys' fees and costs, including such fees and costs incurred in enforcing any judgment awarded to the prevailing party. 14. Equitable Remedies. Licensee understands and agrees that Licensor will suffer irreparable harm if Licensee fails to comply with any of Licensee's obligations under this License, and monetary damages will be inadequate to compensate Licensor for such breach. Accordingly, Licensee agrees that Licensor shall, in addition to any other remedies available at law or in equity, be entitled to injunctive relief to enforce the terms of this License, without the necessity of posting a bond or undertaking. 15. Successors and Assigns. This License shall be binding on, and shall inure to the benefit of, the parties to it and their respective heirs, legal representatives, successors and assigns. 16. Waiver. The waiver of any portion of this License shall not constitute a waiver of any other or future obligations or rights. 17. Notices. All notices required or permitted hereunder shall be given in writing addressed to the respective parties as set forth below their signatures and shall be deemed to have been duly given: when delivered, if personally delivered or delivered by a nationally recognized private courier; three (3) business days after deposit in any United States Post Office, first class mail with postage prepaid, if mailed; and when receipt is acknowledged or confirmed, if telecopied or e-mailed. Either party may change its address for purposes hereof by written notice to the other in accordance with the provisions of this Section. 115010/000000/917118.03 1 18. Severability. If it shall subsequently be determined by a court of competent jurisdiction that any portion of this License is void, voidable or unenforceable, it shall not necessarily affect the validity of the remaining provisions of this License. Any such determination and its effect on this License shall be considered in light of the materiality of such change, the ability of the parties to comply with the remaining provisions of the License, and a determination of whether or not the absence of the void, voidable or unenforceable provisions would have had a material effect on the expectations of the parties at the time they entered into this License. 19. Headings. The headings to the Sections of this License are included merely for convenience of reference and shall not affect the meaning of the language included therein. 20. Counterparts. This License may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. 21. Relationship of Parties. The parties hereto are independent contractors and not partners, agents, or joint venturers. Neither party shall have the power or authority to bind the other party in any transaction with third parties. 22. Assignment. Licensee may not assign, transfer, sublicense or encumber any of its rights under this License without the prior written consent of Licensor, except that Licensee may sublicense its rights hereunder to Kemper Sports Management, Inc., an Illinois corporation ("Kemper"), pursuant to that certain Golf Course Management License between Licensee and Kemper dated May 10, 2006. 23. Entire Agreement; Amendment. This License contains the entire agreement and understanding of the parties and supersedes all prior and contemporaneous agreements, whether oral or written, with respect to the subject matter of this License. [SIGNATURE PAGE FOLLOWS NEXT] 115010/000000/917118.03 IN WITNESS WHEREOF, the parties hereto have caused this License to be executed as of the date first above written. Licensor: Name Printed: Claude A. Lev! s Title: Mayor Address: 1200 Carlsbad Village Drive Carlsbad, California 92008 Attn: Ccry Arrogt/o e-/ Licensee: Carlsbad public e/u Name Printed:Claude A. Lewis Title: Chairman of the Board Address: 1200 Carlsbad Village Drive Carlsbad, California 92008 Attn: C-^t 115010/000000/917118.03 EXHIBIT A Mark Goods or Services THE CROSSINGS AT CARLSBAD Golf caps; Golf cleats; Golf shirts; Golf shoes; Golf spikes; Golf trousers; Belts; Caps; Jerseys; Ties; Tops; Sweat bands; Sweat pants; Sweat shirts; Sweat suits; Athletic shoes; Vests; Socks; Jackets; Rain jackets; Waterproof jackets and pants; Wind resistant jackets; Visors; Skirts and dresses; Pants; Dress shirts; Knit shirts; Polo shirts; Shirts; Sports shirts THE CROSSINGS AT CARLSBAD Entertainment in the nature of golf tournaments; Fitting of golf clubs to individual users; Golf caddie services; Golf club services; Golf courses; Golf driving range services; Golf instruction; Providing a website through which golfers reserve tee times at golf courses; Providing golf facilities; Rental of golf equipment THE CROSSINGS AT CARLSBAD Divot repair tools; Fitted covers for non-motorized golf carts; Fitted head covers for golf clubs; Golf accessory pouches; Golf bag covers; Golf bag pegs; Golf bag tags; Golf bags; Golf ball markers; Golf ball retrievers; Golf ball sleeves; Golf balls; Golf club bags; Golf club covers; Golf club grips; Golf club heads; Golf club inserts; Golf club shafts; Golf club swing aids, namely golf club balancing scales and scale parts thereof, to analyze, fit and/or make golf clubs; Golf clubs; Golf flags; Golf gloves; Golf irons; Golf putter covers; Golf putters; Golf tee markers; Golf tees; Golf towel clips for attachment to golf bags; Golf training equipment, namely, a golf training cage; Grip tapes for golf clubs; Hand grips for golf clubs; Head covers for golf clubs; Non-motorized golf carts; Putting practice mats TCAC Golf caps; Golf cleats; Golf shirts; Golf shoes; Golf spikes; Golf trousers; Belts; Caps; Jerseys; Ties; Tops; Sweat bands; Sweat pants; Sweat shirts; Sweat suits; Athletic shoes; Vests; Socks; Jackets; Rain jackets; Waterproof jackets and pants; Wind resistant jackets; Visors; Skirts and dresses; Pants; Dress shirts; Knit shirts; Polo shirts; Shirts; Sport shirts EXHIBIT A - 1 115010/000000/917118.03 Mark Goods or Services TCAC Covers for golf clubs; Divot repair tools; Fitted covers for non-motorized golf carts; Fitted head covers for golf clubs; Golf accessory pouches; Golf bag covers; Golf bag pegs; Golf bag tags; Golf bags; Golf ball markers; Golf ball retrievers; Golf ball sleeves; Golf balls; Golf club bags; Golf club covers; Golf club grips; Golf club heads; Golf club inserts; Golf club shafts; Golf club swing aids, namely golf club balancing scales and scale parts thereof, to analyze, fit and/or make golf clubs; Golf clubs; Golf flags; Golf gloves; Golf irons; Golf putter covers; Golf putters; Golf tee markers; Golf tees; Golf towel clips for attachment to golf bags; Golf training equipment, namely, a golf training cage; Grip tapes for golf clubs; Hand grips for golf clubs; Head covers for golf clubs; Non-motorized golf carts; Putting practice mats TCAC Entertainment in the nature of golf tournaments; Fitting of golf clubs to individual users; Golf caddie services; Golf club services; Golf courses; Golf driving range services; Golf instruction; Providing a website through which golfers locate information about golf courses and golf tournaments; Providing a website through which golfers reserve tee times at golf courses; Providing golf facilities; Providing news and information on the sport of golf; Rental of golf equipment AT CARLSBAD Golf caps; Golf cleats; Golf shirts; Golf shoes; Golf spikes; Golf trousers; Belts; Caps; Jerseys; Ties; Tops; Sweat bands; Sweat pants; Sweat shirts; Sweat suits; Athletic shoes; Vests; Socks; Jackets; Rain jackets; Waterproof jackets and pants; Wind resistant jackets; Visors; Skirts and dresses; Pants; Dress shirts; Knit shirts; Polo shirts; Sport shirts; Shirts EXHIBIT A - 2 115010/000000/917118.03 Mark Goods or Services AT CARLSBAD Divot repair tools; Fitted covers for non-motorized golf carts; Fitted head covers for golf clubs; Golf accessory pouches; Golf bag covers; Golf bag pegs; Golf bag tags; Golf bags; Golf ball markers; Golf ball retrievers; Golf ball sleeves; Golf balls; Golf club bags; Golf club covers; Golf club grips; Golf club heads; Golf club inserts; Golf club shafts; Golf club swing aids, namely golf club balancing scales and scale parts thereof, to analyze, fit and/or make golf clubs; Golf clubs; Golf flags; Golf gloves; Golf irons; Golf putter covers; Golf putters; Golf tee markers; Golf tees; Golf towel clips for attachment to golf bags; Golf training equipment, namely, a golf training cage; Grip tapes for golf clubs; Hand grips for golf clubs; Head covers for golf clubs; Non-motorized golf carts; Putting practice mats AT CARLSBAD Qs Entertainment in the nature of golf tournaments; Fitting of golf clubs to individual users; Golf caddie services; Golf club services; Golf courses; Golf driving range services; Golf instruction; Providing a website through which golfers locate information about golf courses and golf tournaments; Providing a website through which golfers reserve tee times at golf courses; Providing golf facilities; Rental of golf equipment EXHIBIT A - 3 115010/000000/917118.03 ?r