EXHIBIT 10.12
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SECURITY AGREEMENT
(INTELLECTUAL PROPERTY)
THIS SECURITY AGREEMENT (the "Agreement"), is made as of this 15 day of
October, 2003, by and between LASERTEL INC., an Arizona corporation having its
principal office at 0000 Xxxxx Xxxx Xxxxxx Xxxxxxx, Xxxxxx, Xxxxxxx 00000
(hereinafter, together with any successors to and assigns of any or all of its
present or future interests in the Intellectual Property Collateral, as
hereinafter defined, other than the Lenders, as hereinafter defined, referred to
jointly, severally, individually, and collectively as the "Debtor"), and
CITIZENS BANK NEW HAMPSHIRE, a New Hampshire guaranty savings bank having an
office at 000 Xxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxxxxx 00000 (together with its
successors and assigns, the "Secured Party"), acting as agent under the terms of
that certain Credit Agreement dated as of even date herewith (as it may be
amended from time to time, the "Credit Agreement") by and among the Debtor,
Presstek, Inc., as Borrower, the Secured Party and the banks that are parties
thereto (the "Lenders") (the "Secured Party").
WHEREAS, the Debtor has requested that the Lenders enter into the
Credit Agreement with the Debtor, and to extend credit to the Debtor on the
terms and subject to the conditions set forth therein; and
WHEREAS, it is a condition precedent to the Lenders' agreement to enter
into the Credit Agreement and extend credit to the Debtor thereunder that the
Debtor execute and deliver this Agreement and grant the security interest herein
provided. Certain terms are used in this Agreement as specifically defined
herein. These definitions are set forth or referred to in Section 9 hereof. Any
and all terms not described herein shall have the meaning ascribed to them in
the Credit Agreement.
NOW, THEREFORE, in order to induce the Lenders to enter into the Credit
Agreement and extend credit to the Debtor thereunder, and in consideration
thereof, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto agree as
follows:
1. Granting Clause; Intellectual Property Collateral; Assignments.
1.1 Granting Clause. For good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the Debtor hereby sells,
assigns and transfers unto the Secured Party, and hereby grants to the Secured
Party, a first security interest (except as noted in the attached Schedules) in
the Intellectual Property Collateral, to secure the Secured Obligations and
Debtor's obligations under the Credit Agreement and the Security Agreement both
between the Debtor and the Secured Party pursuant to which the Secured
Obligations are incurred.
1.2 Intellectual Property Collateral. As used herein, the term
"Intellectual Property Collateral" shall mean all now owned or hereafter
acquired or arising:
(a) (i) patents and patent applications, including, without limitation,
those listed on Schedule 1.2(a) hereto and the inventions and improvements
described and claimed therein, and patentable inventions, (ii) the reissues,
divisions, continuations, continuations-in-part, renewals and extensions of any
of the foregoing, (iii) all income, royalties, damages or payments now or
hereafter due and/or payable under any of the foregoing or with respect to any
of the foregoing, including without limitation, damages or payments for past or
future infringements of any of the foregoing, (iv) the right to xxx for past,
present and future infringements of any of the foregoing, and (v) all rights
corresponding to any of the foregoing throughout the world (collectively, the
"Patents");
(b) (i) trademarks, service marks, trademark registrations, service
xxxx registrations, trade names, collective marks and certification marks, and
trademark and servicemark applications, and trade dress, including logos and/or
designs, in connection with any of the foregoing including, without limitation,
those listed on Schedule 1.2(b) hereto, (ii) all renewals of any of the
foregoing, (iii) all income, royalties, damages and payments now or hereafter
due and/or payable under any of the foregoing or with respect to any of the
foregoing, including without limitation, damages or payments for past or future
infringements of any of the foregoing, (iv) the right to xxx for past, present
and future infringements of any of the foregoing, (v) all rights corresponding
to any of the foregoing throughout the world, and (vi) the goodwill of the
Debtor's business connected with and symbolized by any of the foregoing
(collectively, the "Marks");
(c) (i) trade secrets, including, without limitation, patentable
inventions, any and all product formulae, manufacturing techniques, product
specifications, financial information, customer lists, computer data and
programs, and marketing and business plans, (ii) all income, royalties, damages
and payments now or hereafter due and/or payable under any of the foregoing or
with respect to any of the foregoing, including without limitation, damages or
payments for past or future infringements of any of the foregoing, (iii) the
right to xxx for past, present and future infringements of any of the foregoing,
and (iv) all rights corresponding to any of the foregoing throughout the world
(collectively, the "Trade Secrets").
(d) (i) copyrights, copyright registrations, and copyright
applications, including, without limitation, those listed on Schedule 1.2(d)
hereto and copyrights for computer programs and all tangible property embodying
the copyrights, (ii) the reissues, renewals and extensions of any of the
foregoing, (iii) all income, royalties, damages and payments now or hereafter
due and/or payable under any of the foregoing or with respect to any of the
foregoing, including without limitation, damages or payments for past or future
infringements of any of the foregoing, (iv) the right to xxx for past, present
and future infringements of any of the foregoing, and (v) all rights
corresponding to any of the foregoing throughout the world (collectively, the
"Copyrights");
(e) licenses and license agreements, whether as a licenser or licensee,
with any other Person, including, without limitation, the licenses of the Debtor
listed on Schedule 1.2(e) hereto, relating to the use of any Patents, Marks,
Trade Secrets or Copyrights, and all rights of the Debtor under any of the
foregoing, including the right to (i) prepare for sale, (ii) sell, and (iii)
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advertise for sale, all inventory now or hereafter owned by the Debtor and now
or hereafter covered by such license (collectively, the "Licenses");
together with all proceeds (cash and non-cash) and products of the foregoing.
1.3 Assignments. In order to duly perfect the Secured Party's interests
in the Intellectual Property Collateral and/or to notify interested third
parties of the Secured Party's interests therein, the Debtor shall
contemporaneously herewith duly execute and deliver to the Secured Party, and
the Secured Party may file, with the U.S. Patent and Trademark Office (the
"PTO") or the U.S. Copyright Office (the "Copyright Office"), as appropriate,
and any appropriate state and local filing offices, a written collateral
assignment of security interest (in each case, a "Collateral Assignment") in
Patents, Marks or Copyrights owned by such Debtor, each to be in substantially
the form of Exhibits A, B and C, respectively, hereto. At such time or times as
any Debtor shall acquire or obtain any new Intellectual Property Collateral or
rights thereto, the Debtor shall promptly notify the Secured Party by delivering
to the Secured Party an amendment to the appropriate Schedule and to the
appropriate exhibit hereto, and shall promptly duly execute and deliver to the
Secured Party, and the Secured Party may file or record, if necessary, an
appropriate Collateral Assignment with the appropriate filing or recording
office, provided, however, Debtor shall not be required to deliver a Collateral
Assignment in any application for an intent-to-use a trademark or service xxxx.
2. General Provisions.
Debtor hereby represents and warrants to and covenants with the Secured
Party as follows:
2.1 Title to Security; First Lien.
(a) The Intellectual Property Collateral listed on the Schedules (and
any amendments thereto) hereto constitute all material property rights of the
Debtor described in Sections 1.2(a) through (d) hereof to which the Debtor has
any right, title or interest or which are used in connection with the Debtor's
business and all of such Intellectual Property Collateral is, to the best of
Debtor's knowledge, valid and subsisting, unrevoked and uncancelled and none of
the foregoing has been adjudged unenforceable, in whole or in part and, all of
the Intellectual Property collateral is enforceable in accordance with its
terms. The Debtor is to the best of its knowledge the owner or is licensed to
use or practice under all trademarks, service marks, patents, trade secrets and
copyrights used in its business.
(b) To the best of Debtor's knowledge, the Debtor is the true and
lawful sole and exclusive owner of the Intellectual Property Collateral,
including any Intellectual Property Collateral acquired or arising after the
date hereof, and the Intellectual Property Collateral is subject to no Lien,
including covenants by the Debtor not to xxx third Persons, other than Permitted
Encumbrances and the provisions of Section 7 hereof and, except for the
foregoing, no financing statement, security agreement, assignment, license,
covenant not to xxx, shop rights or other Lien instrument covering all or any
part of the Intellectual Property Collateral is on file in
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any public office; and the Debtor will not execute or authorize to be filed in
any public office any of the foregoing except in favor of the Secured Party or
with respect to a Permitted Encumbrance.
(c) Upon (i) the giving of value to the Debtor by the Secured Party,
(ii) the filing of financing statements on form UCC-1 (or other comparable form)
in the appropriate filing offices, and (iv) upon the filing of any Assignments
in the appropriate filing offices, the Secured Party will obtain a valid,
enforceable first priority perfected Lien and security interest in the
Intellectual Property Collateral except to the extent of any Liens permitted
hereby.
2.2 New Intellectual Property Collateral. Any Intellectual Property
Collateral acquired or developed by any of the Debtor's officers, directors,
stockholders or employees in the course of the Debtor's business shall be owned
of record by the Debtor and shall be automatically subject to Section 1 hereof.
2.3 Chief Executive Office; Intellectual Property Collateral Locations.
The Debtor's chief executive office and the office where the Debtor keeps its
books and records relating to the Intellectual Property Collateral, is located
at the locations set forth on the Disclosure Schedule. The Debtor will not move
its chief executive office unless (i) it shall have given to the Secured Party
not less than thirty (30) days' prior written notice of its intention so to do,
clearly describing such new location and providing such other information in
connection therewith as the Secured Party may reasonably request and (ii) with
respect to such new location, it shall have taken all action satisfactory to the
Secured Party to maintain the security interest of the Secured Party in the
Intellectual Property Collateral to be granted hereby at all times fully
perfected and in full force and effect. The originals of all documents
evidencing the Intellectual Property Collateral and the only original records of
the Debtor relating thereto are and will continue to be kept at such locations
and/or at the offices of the Debtor.
2.4 General Duties of the Debtor. The Debtor shall (i) prosecute
diligently any patent, trademark, service xxxx or copyright application material
to its business pending as of the date hereof or thereafter until the Secured
Obligations shall have been paid in full, (ii) make application at the federal
level on unpatented but patentable inventions and on trademarks, service marks
and copyrights, as Debtor in its reasonable discretion deems appropriate, (iii)
preserve and maintain all rights in the Patents, Marks, Trade Secrets,
Copyrights and Licenses, and (iv) fulfill its obligations under any and all
Licenses, except with the prior written consent of the Secured Party. Any
expenses incurred in connection with the foregoing shall be borne by the Debtor,
including, without limitation, any and all maintenance fees. Except in its
commercial reasonable judgment, the Debtor shall not discontinue the payment of
any maintenance fees without the prior written consent of the Secured Party.
2.5 Filings and Consents. Debtor shall deliver to the Secured Party in
form and substance satisfactory to the Secured Party:
(i) such instruments as Secured Party may reasonably request, for
filing by Secured Party, at its discretion, in the appropriate offices, as
specified in Section 1.3; and
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(ii) evidence that all necessary consents, waivers and agreements have
been obtained from any other party to the Licenses to the granting of the Lien
in favor of the Secured Party in such Licenses.
2.6 Recording and Filing. At all times, and at its sole cost and
expense, the Debtor shall provide appropriate documents to Secured Party to
enable Secured Party to cause appropriate assignments, confirmatory assignments
and financing and continuation statements to be recorded and filed and to be
kept recorded and filed in such manner and in such places, as may be required by
law in order to establish, preserve, perfect and protect the first Lien (subject
to the Permitted Encumbrances, if any) of the Secured Party in the Intellectual
Property Collateral (including, without limitation, any interests acquired after
the execution hereof) and the rights of the Secured Party thereunder. The
Secured Party may record or file as such a financing statement or statements, a
carbon, photographic or other reproduction of this Agreement. The Debtor shall
pay all such recording, filing or other taxes, fees and other charges associated
with recording and filing.
2.7 Restrictions on Future Agreements. Debtor agrees that until the
Secured Obligations shall have been paid in full, the Debtor will not, without
the Secured Party's prior written consent, sell, assign, pledge, encumber or
otherwise transfer to any Person other than the Secured Party, any of the
Debtor's rights in its present or future Patents, Marks, Trade Secrets,
Copyrights or Licenses, or enter into any other agreement, including, without
limitation, a license agreement, which is inconsistent with the Debtor's
obligations under this Agreement, except (i) licenses by Debtor in the ordinary
course of business , (ii) so-called end-user, non-exclusive licenses granted to
the Debtor's customers in the ordinary course of its business, and (iii) Liens
in favor of the Secured Party pursuant hereto or in respect of the Permitted
Encumbrances or other Liens permitted hereby. Debtor further agrees that it will
not take any action, or permit any action to be taken by any affiliate of the
Debtor or any other Person subject to the Debtor's control, including, without
limitation, licensees, or fail to take any action, which would affect the
validity or enforcement of the rights transferred to the Secured Party under
this Agreement.
2.8 Infringements. To the best of Debtor's knowledge, none of the
Intellectual Property Collateral infringes the superior rights of any Person
and, except as set forth on the Disclosure Schedule, there is no pending or
threatened claim, action, suit or proceeding against the Debtor with respect to
any alleged infringement by the Debtor's business or operations of any
trademark, service xxxx, patent, trade secret or copyright. Debtor agrees,
promptly upon learning thereof, to notify the Secured Party in writing of the
name and address of, and to furnish such pertinent information that may be
available with respect to, any Person who may be infringing or otherwise
violating any of the Debtor's rights in and to any Intellectual Property
Collateral in a manner which is materially adverse to the Debtor, or with
respect to any Person claiming that the Debtor's use or practice of any
Intellectual Property Collateral violates any property right of that Person.
Debtor further agrees, unless otherwise directed by the Secured Party,
diligently to prosecute and/or enjoin permanently any Person infringing any such
rights in a manner which is or may become materially adverse to the Debtor.
Debtor further agrees that it will not settle or compromise any dispute, claim,
suit or legal proceeding with regard to the same without the prior written
consent of the Secured Party.
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2.9 Amendments; Etc. The Debtor shall not permit any documents,
instruments, chattel paper, guarantees and contracts constituting or evidencing
any Intellectual Property Collateral hereunder to be amended, modified or
changed in any way without the prior written consent of the Secured Party.
2.10 Direction to Third Parties; Etc. Upon the occurrence of an Event
of Default, the Debtor agrees (i) to cause payments, if any, on account of the
Licenses to be made directly to a cash collateral account established by the
Secured Party and (ii) that the Secured Party may, at its option, directly
notify the obligors with respect to any Licenses to make any payments with
respect thereto as provided in the preceding clause. Without notice to or assent
by the Debtor, the Secured Party may apply any or all amounts therein, or
thereafter deposited in, any cash collateral account in the manner provided in
Section 8.7 hereof. The costs and expenses (including attorneys' fees) of
collection, whether incurred by the Debtor or the Secured Party, shall be borne
by the Debtor.
2.11 Collection. Debtor shall endeavor to cause to be collected from
the obligor under any License, as and when due (including, without limitation,
amounts which are delinquent, such amounts to be collected in accordance with
generally accepted lawful collection procedures) amounts, if any, owing under or
on account of such License, and apply forthwith upon receipt thereof all such
amounts as are so collected to the outstanding balance under such License,
except that, prior to the occurrence of an Event of Default, the Debtor may
allow in the ordinary course of business adjustments to amounts, if any, owing
under its Licenses or an extension or renewal of the time or times of payment,
or settlement for less than the total unpaid balance, which the Debtor deems
appropriate in accordance with sound business judgment. The costs and expenses
(including, without limitation, attorneys' fees) of collection, whether incurred
by the Debtor or the Secured Party, shall be borne by the Debtor.
2.12 Payments. Debtor shall pay or cause to be paid promptly when due
all taxes and other governmental levies, to whomever and whenever laid or
assessed, whether on this Agreement, or on or in respect of any of the
Intellectual Property Collateral, which if unpaid might by law become a Lien
upon any of the foregoing; provided, however, that, except to the extent
otherwise provided in any other Loan Document, any such tax, levy or claim need
not be paid if the validity or amount thereof shall currently be contested in
good faith by appropriate proceedings and if the Debtor shall have set aside on
its books appropriate reserves with respect thereto; and provided, further, that
the Debtor will pay all such taxes, levies or other governmental charges
forthwith upon the commencement of proceedings to foreclose any Lien which may
have attached as security therefor.
2.13 Employees; Agents; Etc. Debtor has entered and will enter into
written agreements with each of its present and future employees, agents and
consultants which will enable it to comply with the covenants herein contained.
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2.14 Further Assurances. Upon the Secured Party's request from time to
time, the Debtor will make, execute, endorse, acknowledge, file and/or deliver,
and file and record in the proper filing and recording places, if applicable,
all such instruments, including without limitation transfer endorsements, powers
of attorney, certificates, reports and other assurances, and take all such
action as the Secured Party or counsel for the Secured Party may reasonably deem
necessary or advisable to carry out the intent and purposes of this Agreement,
or for assuring and confirming to the Secured Party the Intellectual Property
Collateral and the priority of the Secured Party's Lien therein provided for
hereunder.
3. Special Provisions Concerning Marks and Licenses.
3.1 Maintenance of Records. Debtor will keep and maintain or cause to
be kept or maintained at its own cost and expense satisfactory and complete
records of its Marks and Licenses, including, but not limited to, the originals
of all documentation with respect thereto, and the Debtor will make the same
available to the Secured Party for inspection, at the Debtor 's own cost and
expense, at any and all reasonable times upon reasonable prior notice. Debtor
shall, at its own cost and expense, deliver all tangible evidence of its Marks
and Licenses (including, without limitation, all Certificates of Registration
relating to Marks and all Licenses) and such books and records relating thereto
(including, in the case of Marks, file histories with regard to the prosecution
and registration of such Marks, to the extent within the possession or control
of the Debtor) to the Secured Party or to its representatives (copies of which
evidence and books and records may be retained by the Debtor) at any time upon
its demand. If the Secured Party so directs, each Debtor shall legend, in form
and manner reasonably satisfactory to the Secured Party, the Licenses, as well
as books, records and documents of the Debtor evidencing or pertaining to the
Licenses with an appropriate reference to the fact that the Licenses have been
assigned to the Secured Party and that the Secured Party has a security interest
therein. In furtherance of the foregoing, the Debtor hereby grants to the
Secured Party or the Secured Party's designee the right to visit upon reasonable
prior notice during normal business hours any or all of the Debtor's places of
business which manufacture, sell, inspect or store goods sold or services
rendered (or which have done so during the prior six month period) under any
Xxxx, and to inspect the services and goods and control records relating
thereto. Secured Party shall conduct such inspections in a manner that is not
unreasonably disruptive to Debtor's business and operations, and will obey any
safety or work rules of Debtor while on its premises.
3.2 Standards of Quality. Debtor has, and will continue to use for the
duration of this Agreement, consistent standards of quality in its manufacture
of goods sold under the Marks. The Debtor has heretofore controlled, and will
hereafter continue to control, the nature and quality of the goods and services
in respect of which any Xxxx is used by any Person.
3.3 Preservation of Marks. Debtor has used and agrees to use, and to
cause licensees to use, proper statutory notice in connection with the use of
the Marks. Except as the same may be discontinued in the ordinary course of
business, the Debtor further agrees to use its Marks in interstate commerce
during the time in which this Agreement is in effect sufficiently to preserve
such Marks as trademarks or service marks registered under the laws of the
United States.
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3.4 Maintenance of Applications and Registrations. Debtor shall, at its
own expense, diligently process all documents required by the Trademark Act of
1946, 15 U.S.C. xx.xx. 1051 et seq., as amended, to maintain its trademark and
service xxxx registrations which are material to its business and its pending
applications with respect thereto, including, but not limited to, statements and
affidavits of use and applications for renewals of registration, and shall pay
all fees and disbursements in connection therewith, and shall not abandon any
pending application or existing registration which is material to its business
prior to the exhaustion of all administrative and judicial remedies, without the
prior written consent of the Secured Party. Debtor agrees to notify the Secured
Party six (6) months prior to the dates on which any affidavits of use or
applications for renewal of registration are due that the affidavit or
application is being processed.
4. Special Provisions Concerning Patents.
4.1 Maintenance of Applications and Patents. Debtor shall not abandon
any right to file a patent application nor shall the Debtor abandon any pending
patent application, Patent, or any right with respect to the foregoing which in
each case is material to its business, prior to exhaustion of all administrative
and judicial remedies, without the prior written consent of the Secured Party.
At its own expense, the Debtor shall make timely payment of all post-issuance
fees required to maintain in force rights under each Patent.
4.2 Scope of Patents. To the best of Debtor's knowledge and belief,
except as noted in Schedule 1.2(a), each patent owned or licensed by the Debtor
is broad enough in scope to preclude substantial competition with the product or
good covered thereby.
5. Special Provisions Concerning Trade Secrets.
5.1 Maintenance. Each Trade Secret of the Debtor which is legally
protectable as a trade secret has been preserved as "secret" and suitable
security precautions have been taken with respect to each such Trade Secret,
including confidentiality and noncompetition agreements with its employees,
agents, officers and directors. Upon request, the Debtor shall give the Secured
Party copies of any such agreements.
6. Special Provisions Concerning Copyrights.
6.1 Maintenance of Applications and Copyrights. Debtor shall not
abandon any right to file a copyright application that the Debtor in its
reasonable discretion deems appropriate, nor shall Debtor abandon any pending
copyright application, Copyright, or any right with respect to the foregoing,
prior to exhaustion of all administrative and judicial remedies, without the
prior written consent of the Secured Party.
7. Grant-Back License.
7.1 License. Unless and until there shall exist an Event of Default and
the Secured Party has given notice to the Debtor of the Secured Party's
intention to exercise its rights under
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this Agreement, the Secured Party hereby grants to the Debtor, without
representation or warranty by the Secured Party, the exclusive, nontransferable
(except by sublicense in the ordinary course of Debtor's business) right and
license to use all Intellectual Property Collateral, and in particular: (i) to
use the Marks on and in connection with goods and services sold by the Debtor,
or its franchises, for the Debtor's own benefit and account and for none other,
(ii) under the Patents, to make, have made for it, use and sell the inventions
disclosed and claimed in the Patents for the Debtor's own benefit and account
and for none other, (iii) to collect any and all royalties under any sublicenses
granted by the Debtor, (iv) to prosecute any and all applications and maintain
any and all registrations for Copyrights, Marks and Patents, (v) to preserve and
protect the Copyrights, Patents and Marks against infringement by third parties
in the Debtor's reasonable commercial judgment, and (vi) to settle all disputes
with third parties with respect to use or non-use of the Copyrights, Patents and
Marks. The Debtor agrees not to sell or assign its interest in, or grant any
sublicense (except in the ordinary course of business) under the license granted
to the Debtor in this Section, without the prior written consent of the Secured
Party.
7.2 Royalties. Debtor hereby agrees that the use by the Secured Party
of any and all Intellectual Property Collateral shall, subject to applicable law
and to any then existing Licenses granted by the Debtor of any such Patent,
Xxxx, Trade Secret or Copyright, be without any liability for royalties or other
related charges from the Secured Party to Debtor.
8. Rights and Remedies of Secured Party.
8.1 Rights Exercisable Regardless of Event of Default. Whether or not
an Event of Default exists, the Secured Party shall have the following rights:
(a) The Secured Party is hereby specifically authorized to make, at the
Secured Party's sole option, any or all payments required to be made either
hereunder or otherwise in respect of the Intellectual Property Collateral by
Debtor, unless Debtor has intentionally abandoned such Intellectual Property
Collateral in its reasonable commercial judgment in the ordinary course of
business. Such payments may include, but are not limited to, payments for
maintenance fees, taxes, and other governmental levies, and insurance premiums.
The Secured Party shall have the right, but not the duty, to perform any
obligations of the Debtor relating to the Intellectual Property Collateral,
without waiving any other rights or releasing Debtor from any obligation
hereunder.
(b) The Secured Party shall have the right, but not the duty, to
intervene or otherwise participate in any legal or equitable proceeding which,
in the Secured Party's sole judgment, affects the Intellectual Property
Collateral or any of the rights created or secured by this Agreement, provided
that the Debtor has the right to settle or compromise any suit, claim or action
without the consent of Secured Party if, in the reasonable commercial judgment
of Debtor, such settlement or compromise is in the best interest of Debtor.
Such rights may be exercised by the Secured Party at any time, but only after
seven (7) days notice to the Debtor, and only to the extent permitted by law and
necessary to protect the Secured Party's rights hereunder and in the
Intellectual Property Collateral.
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8.2 Power of Attorney. After an Event of Default, in order to permit
the Secured Party to operate the Debtor's business without interruption and to
use the Marks and associated goodwill in conjunction therewith and other
Intellectual Property Collateral, and otherwise to effectuate the intent of the
parties hereto, the Debtor hereby appoints the Secured Party the true and lawful
attorney-in-fact for the Debtor with full power of substitution, in its name or
in the name of the Debtor or otherwise, for the sole benefit of the Secured
Party but at the sole expense of the Debtor, without notice to or demand upon
the Debtor, at any time whether or not an Event of Default has occurred, (i) to
notify any party, and to demand, collect, receive payment of, receipt for,
settle, compromise or adjust and give discharges and releases with respect to,
any Intellectual Property Collateral; (ii) to commence and prosecute any suits,
actions or proceedings at law or in equity in any court of competent
jurisdiction to collect any monies due to the Debtor and to enforce any rights
pursuant to any Intellectual Property Collateral or any other rights in respect
thereof including suits for infringement; (iii) to defend any suit, action, or
proceeding brought against the Debtor in respect of any Intellectual Property
Collateral; (iv) to settle, compromise or adjust any suit, action or proceeding
described in clauses (ii) or (iii) above and, in connection therewith, to give
such discharges, terminations or releases as the Secured Party may deem
appropriate; (v) to endorse the name of the Debtor on checks, notes, drafts,
acceptances, money orders, or other instruments or documents constituting
payments on account of any Intellectual Property Collateral; (vi) to sign and
file or record the foregoing described Assignments or any financing or other
statement in order to perfect or protect the Secured Party's security interest
in the Intellectual Property Collateral; (vii) to prosecute any applications,
renewals and other matters in connection with any of the Intellectual Property
Collateral and to sign the name of the Debtor on any and all agreements,
documents, statements, certificates or other writings necessary or advisable to
effect such purposes; (viii) generally to sell, assign, transfer, pledge, make
any agreement in respect of or otherwise deal with any Intellectual Property
Collateral, including any new Intellectual Property Collateral, as fully and
completely as though the Secured Party were the absolute owner thereof for all
purposes. The powers vested in the Secured Party are, and shall be deemed to be,
coupled with an interest and irrevocable. The powers conferred on the Secured
Party by this Agreement are solely to protect the Secured Party's interest and
shall not impose upon the Secured Party any duty to exercise any such power, and
if the Secured Party shall exercise any such power, the Secured Party shall be
accountable only for amounts that the Secured Party actually receives as a
result thereof and shall not be responsible to the Debtor except for any failure
to comply with the requirements of applicable law.
8.3 Effect of Exercise of Rights. Any sums paid, and any costs or
expenses, including reasonable attorneys' fees, incurred by the Secured Party,
pursuant to the Secured Party's exercise of rights specified or referred to
herein, shall: (a) as between the parties hereto and their
successors-in-interest, be deemed valid, so that in no event shall the necessity
or validity of any such payments, costs or expenses be disputed; and (b) with
respect to such sums, costs and expenses, be, until paid, part of the Secured
Debt and, until paid, shall accrue interest at the Default Rate.
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8.4 Remedies. Upon the occurrence of any Event of Default, the Secured
Party may at any time thereafter, at its option and, upon seven (7) days written
notice, exercise any or all of the following rights and remedies:
(a) terminate the license granted to the Debtor pursuant to Section 7
hereof;
(b) collect, receive, appropriate and realize upon the Intellectual
Property Collateral or any part thereof;
(c) exercise any or all of the rights and remedies granted to it under
this Agreement or any other Loan Document and take such other actions or
proceedings as the Secured Party deems necessary or advisable to collect or
enforce or to protect its interest in the Secured Debt or the Intellectual
Property Collateral;
(d) enter, with or without process of law and without breach of the
peace, any premises where the Intellectual Property Collateral or the books and
records of the Debtor related thereto are or may be located, and without charge
or liability to the Secured Party therefor seize and remove any tangible
personal property evidencing the Intellectual Property Collateral (and copies of
said Debtor's books and records in any way relating to the Intellectual Property
Collateral) from said premises and/or remain upon said premises and use the same
(together with said books and records) for the purpose of collecting, preparing
for sale and disposing of the Intellectual Property Collateral;
(e) exercise any one or more of the rights and remedies accruing to the
Secured Party under any applicable law, or as provided herein or in the Loan
Documents. The Debtor recognizes that in the event it fails to perform, observe
or discharge any of its obligations or liabilities under this Agreement, no
remedy at law will provide adequate relief to the Secured Party, and the Debtor
agrees that the Secured Party shall be entitled to temporary and permanent
injunctive relief in any such case without the necessity of proving actual
damages; and
(f) exercise any and all of the rights and remedies of a secured party
under the Uniform Commercial Code or comparable statute in the applicable
jurisdiction, including, without limitation, the right to exercise all of the
following rights and remedies in a commercially reasonable manner:
(i) declare the entire right, title and interest of the
Debtor in and to each of the Marks, together with all
trademark rights and rights of protection to the
same, vested, in which event such rights, title and
interest shall immediately vest, in the Secured
Party;
(ii) declare the entire right, title and interest of the
Debtor in and to each of the Patents and Copyrights
vested, in which event such right, title and interest
shall immediately vest in the Secured Party;
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(iii) to take and practice or use all or any portion of the
Intellectual Property Collateral;
(iv) to sell, license, or otherwise dispose of any or all
of the Intellectual Property Collateral, including
the goodwill of the Debtor's business symbolized by
the Marks and the right to carry on the business and
use the assets of the Debtor in connection with which
the Marks have been used;
(v) to apply the proceeds of the Intellectual Property
Collateral towards (but not necessarily in complete
satisfaction of) the Secured Obligations; and/or
(vi) to direct the Debtor to refrain from practicing or
using the Intellectual Property Collateral in any
manner whatsoever, directly or indirectly, and, if
requested by the Secured Party, change the Debtor's
corporate name to eliminate therefrom any use of any
Xxxx, as applicable, and execute such other and
further documents that the Secured Party may request
to further confirm this and to transfer ownership of
the Intellectual Property Collateral and any
associated goodwill to the Secured Party.
Any sale or other disposition of the Intellectual Property Collateral
may be at public or private sale upon such terms and in such manner as the
Secured Party deems advisable, having due regard to compliance with any statute
or regulation which might affect, limit, or apply to the Secured Party's
disposition of the Intellectual Property Collateral. The Secured Party shall
give the Debtor notice as required by applicable law of the date, time, and
place of any proposed public sale of, and of the date after which any private
sale or other disposition, of the Intellectual Property Collateral, or any
portion thereof, is to be made.
Such options may be exercised individually, sequentially or in concert,
all such remedies being cumulative, the exercise of one not being deemed a
waiver of any other or a cure of any Event of Default. An Event of Default shall
not be deemed to be in existence or to be continuing for any purpose of this
Agreement if the Secured Party pursuant to this Agreement shall have waived such
event in writing or stated in writing that the same has been cured to its
reasonable satisfaction, but no such waiver shall extend to or affect any
subsequent Event of Default or impair any rights of the Secured Party upon the
occurrence thereof.
8.5 Waivers and Enforcement of Rights. The failure of the Secured Party
to exercise any right or remedy or option provided for herein or otherwise shall
not be deemed to be a waiver of any of the covenants or obligations secured by
this Agreement or otherwise. No sale of all or any of the Intellectual Property
Collateral, no forbearance on the part of the Secured Party, no release or
partial release of any of the Intellectual Property Collateral, and no
extension, whether oral or in writing, of the time for the payment of the whole
or any part of the Secured Debt or any other indulgence given by the Secured
Party to the Debtor or any other Person, shall operate to
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release or in any manner affect the Lien of the Agreement or the original
liability of the Debtor. A waiver by the Secured Party on any one occasion shall
not be construed as a bar to or waiver of any right or remedy on any future
occasion. No waiver or consent shall be binding upon the Secured Party unless it
is in writing and signed by the Secured Party. Debtor waives any requirement of
diligence or promptness on the Secured Party's part in the enforcement of its
rights under the provisions of this Agreement or any Loan Document. To the
fullest extent the Debtor may do so, the Debtor agrees that it will not at any
time insist upon, plead, claim or take the benefit or advantage of any law now
or hereafter in force providing for any appraisement, valuation, stay, extension
or redemption, and the Debtor, to the extent permitted by law, hereby waives and
releases all rights of redemption, valuation, appraisement, stay of execution,
notice of election to mature or declare due the whole of the Secured Obligations
and marshalling in the event of foreclosure of the Liens hereby created. The
Secured Party shall not be required to marshal the Intellectual Property
Collateral, or any other Security in any particular order. The Debtor hereby
covenants and agrees that it will not enforce or otherwise exercise any rights
of reimbursement, subrogation, contribution or other similar rights against any
co-obligor or any other Person obligated on or with respect to any Secured
Obligations or granting any Security prior to the payment in full of the Secured
Obligations. If any law referred to in this Section and now in force, of which
the Debtor or its representatives, successors and assigns or other Person may
take advantage despite this Section, shall hereafter be repealed or cease to be
in force, such law shall not thereafter be deemed to preclude the application of
this Section. To the extent permitted by law and except as otherwise provided in
this Agreement and the other Loan Documents, the Debtor expressly waives and
relinquishes any and all rights and remedies which it may have or be able to
assert by reason of the laws of the State of New Hampshire pertaining to the
rights and remedies of sureties. With respect to any or all of the Secured
Obligations and Intellectual Property Collateral, the Debtor assents to any
extension or postponement of the time of payment or any other indulgence, to any
substitution, exchange or release the Intellectual Property Collateral, to the
addition or release of any Person primarily or secondarily liable, to the
acceptance of partial payments thereon and the settlement, compromising or
adjusting thereof, all at such time or times as the Secured Party may deem
advisable, and the Debtor agrees that the Secured Party may so act without
regard to any requests or demands by the Debtor and without thereby incurring
any liability to the Debtor or releasing the Debtor hereunder.
8.6 Duty to Intellectual Property Collateral. Anything herein contained
to the contrary notwithstanding, neither the Secured Party nor any nominee or
assignee shall have any obligation or liability by reason of or arising out of
this Agreement to make any inquiry as to the nature or sufficiency of, to
present or file any claim with respect to, or to take any action to collect or
enforce the payment of, any amounts to which it may be entitled at any time or
times by virtue of this Agreement, except to extent otherwise required by
applicable law. The Secured Party makes no representations or warranties with
respect to the Intellectual Property Collateral or any part thereof, and shall
not be chargeable with any obligations or liabilities of the Debtor or any other
Person with respect thereto.
8.7 Application of Proceeds. The proceeds of all collections and any
other moneys (including any cash contained in the Intellectual Property
Collateral), the application of which is not otherwise herein or in any other
Loan Document provided for, shall be applied as follows:
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First, to the payment of the costs and expenses of
collection, sale or other disposition of the Intellectual Property
Collateral, including the reasonable compensation of the Secured Party
and its counsel, and all other charges against the Intellectual
Property Collateral;
Second, any surplus then remaining to the payment of the
Secured Obligations secured by such Intellectual Property Collateral in
such order and manner as the Secured Party in its sole discretion may
determine; and
Third, any surplus then remaining shall be paid to the
Debtor, subject, however, to the rights of the holders of any then
existing Lien or as otherwise required by law.
9. Definitions.
9.1 Unless otherwise defined herein, terms used herein shall have the
meanings set forth in the Security Agreement or in the Credit Agreement. For
purposes of this Agreement, the following terms defined elsewhere in this
Agreement and as set forth below shall have the respective meanings therein and
herein defined:
Term Definition
"Agreement" Preamble
"Collateral Assignment" Section 1.3
"Copyright Office" Section 1.3
"Copyrights" Section 1.2 (d)
"Debtor" Preamable
"Intellectual Property Collateral" Section 1.2
"Licenses" Section 1.2 (e)
"Loan Document" Section 10.10
"Marks" Section 1.2 (b)
"Patents" Section 1.2 (a)
"PTO" Section 1.3
"Secured Party" Preamble
"Security Agreement" Preamble
"Trade Secrets" Section 1.2 (c)
9.2 "Secured Obligations" as used herein shall mean the Obligations of
the Debtor under the Credit Agreement.
10. General.
10.1 Fees and Expenses. Any and all fees, costs and expenses, of
whatever kind or nature, including the reasonable attorney's fees and legal
expenses incurred by the Secured Party
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in connection with the preparation of this Agreement and all other documents
relating hereto and the consummation of the transactions contemplated hereby,
the filing or recording of any documents (including all taxes in connection
therewith) in public offices, the payment or discharge of any taxes, counsel
fees, maintenance fees, encumbrances or otherwise protecting, maintaining or
preserving the Intellectual Property Collateral, or in defending or prosecuting
any actions or proceedings arising out of or related to the foregoing, shall be
borne and paid by the Debtor on demand by the Secured Party.
10.2 Defeasance. When all Secured Obligations have been indefeasibly
paid and performed in full and no further obligation on the part of the Secured
Party or the Debtor shall exist, this Agreement shall cease and terminate, and,
at the Debtor's written request, accompanied by such certificates, opinions and
proof as the Secured Party shall reasonably deem necessary, the Intellectual
Property Collateral furnished hereunder shall revert to the Debtor and the
estate, rights, title, and interest of the Secured Party therein shall cease,
and thereupon on the Debtor's written request and at its cost and expense, the
Secured Party shall execute proper instruments, acknowledging satisfaction of
and discharging this Agreement, and shall redeliver to the Debtor the
Intellectual Property Collateral furnished hereunder then in its possession;
subject, however, to the terms and provisions contained in Section 10.3 hereof.
10.3 Survival. All covenants, agreements, representations and
warranties made herein or in any other Loan Document and in certificates
delivered pursuant hereto or thereto shall be deemed to have been material and
relied upon by the Secured Party, notwithstanding any investigation made by the
Secured Party or on the Secured Party's behalf, and shall survive the execution
and delivery to the Secured Party hereof and thereof. Each such covenant,
agreement, representation and warranty is hereby confirmed by the Debtor to be
true and correct in all respects with the same force and effect on and as of the
date of delivery of any Intellectual Property Collateral to the Secured Party as
though made as of the date of such delivery.
10.4 Amendments. This Agreement may not be waived, changed or
discharged orally, but only by an agreement in writing and signed by the Secured
Party, and any oral waiver, change or discharge of any provision of this
Agreement shall be without authority and of no force and effect.
10.5 Successors and Assigns. The covenants, representations, warranties
and agreements herein set forth shall be binding upon the Debtor, its successors
and assigns and shall inure to the benefit of the Secured Party, its successors
and assigns. Any purchaser, assignee or transferee of any of the Secured
Obligations and the Secured Party's security interest hereunder shall forthwith
become vested with and entitled to exercise all the powers and rights given by
this Agreement and the other Loan Documents to the Secured Party, as if said
purchaser, assignee, transferee or pledges were originally named herein.
10.6 Entire Agreement: Separability; Governing Law. This Agreement, any
Schedules or Exhibits hereto and any riders or other attachments, and the other
Loan Documents constitute the entire agreement between the parties with respect
to the subject matter hereof. If at any time one or more provisions of this
Agreement or any Loan Document, any amendment or supplement
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thereto or any related writing is or becomes invalid, illegal or unenforceable
in whole or in part in any jurisdiction, the validity, legality and
enforceability of such provision in any other jurisdiction or of the remaining
provisions shall not in any way be affected or impaired thereby. This Agreement
shall be governed by the laws of the State of New Hampshire without regard to
its conflict of laws provisions.
10.7 Counterparts. This Agreement may be executed in as many
counterparts as may be deemed necessary and convenient, and by the different
parties hereto on separate counterparts, each of which when so executed shall be
deemed an original, but all such counterparts shall constitute one and the same
instrument.
10.8 Singular or Plural; Joint or Several. The term "Debtor," together
with any pronoun referring thereto, shall include the singular, plural,
masculine, feminine and neuter, as the context may require; and if more than one
Person constitutes the Debtor, the obligations of such Persons shall be joint
and several.
10.9 Headings. The headings to Sections appearing in this Agreement and
in any Loan Document have been inserted for the purpose of convenience and ready
reference. They do not purport to, and shall not be deemed to, define, limit or
extend the scope or intent of the Sections to which they appertain.
10.10 Loan Document. This Agreement shall constitute a "Loan Document"
as defined in the Credit Agreement. The terms and provisions of this Agreement
are intended to supplement the terms and provisions of the security portions of
the Security Agreement and are not intended to limit the force or effect of such
provisions.
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IN WITNESS WHEREOF, this instrument has been executed under seal as of
the day and year first above written.
DEBTOR
LASERTEL INC.
/s/ Xxxxx X. Xxxxxxx By: /s/ Xxxxx X. Xxxxx
-------------------------- ------------------------------
Witness Xxxxx X. Xxxxx, Vice President - Finance
STATE OF NEW HAMPSHIRE
COUNTY OF HILLSBOROUGH
The foregoing instrument was acknowledged before me this 15th day of
October, 2003, by Xxxxx X. Xxxxx, for, on behalf of, and as Vice President -
Finance of, Lasertel Inc. on behalf of the corporation.
/s/ Xxxxxx X. Xxxxxxxx
----------------------------------
Justice of the Peace/Notary Public
My Commission Expires: 1/6/04
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