SETTLEMENT AGREEMENT
THIS SETTLEMENT AGREEMENT is made and effective upon signature of both
parties herein by and between the Boykin Spaniel Society (hereinafter “BSS”), an South
Carolina
corporation
and
THE
BOYKIN
SPANIEL
CLUB
AND
BREEDERS
ASSOCIATION OF AMERICA, INC. (“BSCBAA”) a South Carolina corporation.
WHEREAS, BSS alleges that it has applied for federal registration of and claims
other proprietary rights in THE BOYKIN SPANIEL SOCIETY (federal trademark
application serial no. 76/596,937 and 76/596,932); BOYKIN SPANIEL FOUNDATION
(federal trademark application serial no. 76/596,932) and BOYKIN SPANIEL
REGISTRY (federal trademark application serial no. 76/596,774) (collectively the
Marks);
WHEREAS, BSS is the owner of U.S. Copyright Registration TXu6-097-682;
WHEREAS, a dispute between the parties exists concerning trademark and
service mark infringement concerning the following two marks:
(from www.boykinspaniel.org website)
(from www.boykinspanielclub.org newsletter)
copyright infringement concerning the 1993 breed standards of the BSS, ownership and
acknowledgement of the ownership and creation of all BSS breed standards and related
claims as relating to Civil Action No.: 3:04-2497-22 pending the District of South
Carolina (“pending action”);
WHEREAS, the parties wish to resolve the pending action in an amicable fashion
and to their mutual satisfaction;
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WHEREAS neither party admits to any liability; and,
NOW THEREFORE, the parties agree as follows:
1.
Agreements and Representations:
1.1.
BSCBAA disputes the validity of the copyright of BSS in the 1993 Breed
Standard and BSS’s rights in the Marks and does not by entering into this agreement
waive any defenses it may have to any assertion of copyright or trademark or services
marks that BSS now or hereafter claims.
Notwithstanding the foregoing, BSCBAA
agrees not to copy, display (including posting on websites and distribution through
paper copies) the 1993 Breed Standard, or prepare derivative works, or otherwise
infringe that which is protected by the copyright in the 1993 Breed Standard. The parties
acknowledge the existence of the Fair Use doctrine and agree that BSCBAA may create
Breed Standards for the Boykin Spaniel and use such standards so long as such
creation does not infringe the rights of the BSS.
1.2.
BSCBAA will not hold itself out as the owner, creator, or otherwise as the
originator of any breed standard created by BSS, including the 1976, 1986 and the 1993
Breed Standard, it being acknowledged and understood that BSS acknowledges that
the 1976 and 1986 Breed Standards are in the public domain and BSS claims no
copyright in those standards. BSCBAA does not and will not in the future represent that
it controls, maintains, edits, or otherwise has any ownership or other affiliation with the
1993 Breed Standard. BSCBAA has not, does not and will not in the future hold itself
out as affiliated with, associated with, or otherwise related to the BSS and BSS has not,
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does not and will not in the future hold itself out as affiliated with, associated with, or
otherwise related to BSCBAA.
1.3.
When using its name in marketing, advertising, publications, websites, or
other such uses, BSCBAA agrees to display its entire name. BSCBAA also agrees to
use its best efforts to display its full name in print and font of the same type and of equal
size where possible, and in any event, will not display any portion of its name as the
dominant mark and will not display any portion of its name in size less than 60% of the
remainder of its name. The parties further agree to cooperate in avoiding any confusion
that may arise as to the relationship of the organizations by clarifying to any person or
organization that inquires of the distinction between the organizations.
1.4.
BSCBAA agrees not to use any mark, name, phrase, slogan or other
source indicator that is confusingly similar to or likely to cause confusion in the public
with the Marks of the BSS and the BSS agrees not to use any mark, name, phrase,
slogan or other source indicator that is confusingly similar to or likely to cause confusion
in the public with the name or marks of Boykin Spaniel Club and Breeders Association
of America.
2.
The parties agree that BCSBAA may continue to use the domain name
boykinspanielclub.org.
3.
No Admission Of Liability. Nothing in this Agreement, or in its execution,
shall be construed as any admission of liability on the part of either party;
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4.
Dismissal. The parties agree to take the necessary steps to dismiss any
and all claims and actions, regardless of the forum or jurisdiction in which they have
been asserted, with prejudice and terminate the pending actions with prejudice.
5.
Jurisdiction and Enforcement. The parties agree that the United States
District Court for the District of South Carolina, Columbia Division shall retain jurisdiction
of this matter solely for purposes of enforcement of this Settlement Agreement.
6.
Mutual Releases.
6.1.
As to BSS. BSS shall be deemed to have executed a release in favor of
BSCBAA precluding any litigation by or between the parties to this Agreement for
conduct that occurred prior to the date hereof arising out of or relating to the disputed
issues as described herein and/or in the pending actions.
BSS hereby remises,
releases, acquits, satisfies, and forever discharges BSCBAA hereto, of and from any
and all manner of action and actions, cause and causes of action, suits, debts, dues,
sums of money, accounts, reckonings, bonds, bills, specialties, covenants, contracts,
controversies, agreements, promises, variances, trespasses, damages, judgments,
executions, claims and demands whatsoever, in law or in equity, which BSS ever had,
now has, or which any personal representative, successor, heir or assign of BSS,
hereafter can, shall, or may have, against BSCBAA for, upon, or by reason of any
matter, cause, or thing whatsoever, from the beginning of the world to the day of these
presents, except as specifically set forth in this Agreement including remedies provided
to the contrary. BSS also releases any and all members of BSCBAA from any claims of
copyright infringement for any display of the 1993 Standards prior to the execution of
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this Agreement; provided, BSCBAA advises its members in its Newsletter and/or by
other actual notice that they should not display the 1993 Standard without the prior
written approval of BSS.
6.2.
As to BSCBAA. BSCBAA shall be deemed to have executed a release in
favor of BSS precluding any litigation by or between the parties to this Agreement for
conduct that occurred prior to the date hereof arising out of or relating to the disputed
issues as descried herein and/or in the pending actions. BSCBAA hereby remises,
releases, acquits, satisfies, and forever discharges BSS hereto, of and from any and all
manner of action and actions, cause and causes of action, suits, debts, dues, sums of
money,
accounts,
reckonings,
bonds,
bills,
specialties,
covenants,
contracts,
controversies, agreements, promises, variances, trespasses, damages, judgments,
executions, claims and demands whatsoever, in law or in equity, which BSCBAA ever
had, now has, or which any personal representative, successor, heir or assign of
BSCBAA, hereafter can, shall, or may have, against BSS for, upon, or by reason of any
matter, cause, or thing whatsoever, from the beginning of the world to the day of these
presents, except as specifically set forth in this Agreement including remedies provided
to the contrary.
7.
Attorney's Fees. All parties to this Agreement shall bear their own costs
and attorney's fees incurred in the pending actions and their settlement. In the event
that a party institutes any action to enforce this Agreement, the prevailing party shall be
entitled to recover its reasonable attorney’s fees and costs from the non-prevailing
party.
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8.
Integration / No Oral Modification. This Agreement contains the entire
understanding between the parties. No modification, renewal, extension or waiver of
this Agreement or any of its provisions shall be binding unless in writing and signed by
both parties or authorized agents of both parties.
9.
Governing Law. This Agreement is made and entered into in the State of
South Carolina, and shall be interpreted and construed, and the legal relations created
herein shall be determined, in accordance with the laws of the State of South Carolina,
without reference to conflicts of laws provisions.
10.
Severability. All parties hereto expressly agree that it is not the intention
of the parties to violate any public policy, statutory or common law, and if any sentence,
paragraph, clause, or combination of the same, is in violation of any state or federal law,
such sentences, paragraphs, clauses, or combinations of the same, shall be inoperative
for the remainder of this Agreement, and the Agreement shall remain binding upon the
parties hereto, and it is the intention of all parties to make this Agreement binding to the
extent that it may lawfully be done under the existing state and federal laws.
11.
Representation.
The parties acknowledge that they have been
represented by counsel and have had a full opportunity to review and to have their
respective counsels review this agreement prior to its execution.
12.
Future Cooperation. All parties hereto agree to cooperate with each other
in furtherance of the purposes, terms and provisions of this Agreement, and to enter into
all such further agreements, execute documents, perform lawful acts, furnish truthful
testimony and the like, in furtherance of these goals.
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13.
Counterparts. This Agreement may be executed in counterparts and each
such counterpart shall be deemed to be a duplicate original, as if signed by all parties in
each others presence.
All parties shall be deemed to have ratified the Agreement
when counterparts have been executed by all.
14.
Headings. Section headings contained in this Agreement are inserted for
the convenience of reference only, shall not be deemed to be a part of this Agreement
for any purpose, and shall not, in any way, define or affect the meaning, construction, or
scope of any of the provisions hereof.
15.
Successors. This Agreement shall inure for the benefit of any successor
entities, and the obligations of the parties herein shall survive any sale of business,
merger or other change in the parties' corporate identities. The terms and conditions
shall also be binding upon officers, directors, and shareholders of each of the parties
hereto, and any corporations with which they are affiliates, directly or indirectly, for
similar business purposes to those contemplated in this Agreement.
IN WITNESS WHEREOF, the parties execute this agreement as follows:
BSS
BSCBAA
____________________________________ __________________________________
By: ________________________________
By: _____________________________
Date: ______________________________
Date: ___________________________
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