TRADEMARK SECURITY AGREEMENT
EXHIBIT
10.12
This TRADEMARK SECURITY AGREEMENT (this
“Agreement”),
entered into as of the 29th day of October 2009, by and between among Grantors
listed on the signature pages hereof (collectively, jointly and severally,
“Grantors” and
each individually “Grantor”), and XXXXX
FARGO FOOTHILL, INC., a California corporation, as agent for the Lenders (as
defined in the hereinafter defined Loan Agreement) (“Agent”).
W I T N E S S E T
H:
WHEREAS,
pursuant to that certain Amended and Restated Loan and Security Agreement dated
as of October 29, 2009 (as amended, restated, supplemented or otherwise modified
from time to time, the “Loan Agreement”), by
and among Peninsula Gaming, LLC, a Delaware limited liability company, Xxxxxxx
Xx, LLC, a Delaware limited liability company, The Old Xxxxxxxxxx Xxxxx, L.L.C.,
a Louisiana limited liability company, Xxxxxxx Xx Worth, LLC, a Delaware limited
liability company and Belle of Orleans, L.L.C., a Louisiana limited liability
company, as borrowers (collectively, “Borrowers”), the
Lenders and Agent, the Lender Group has agreed to extend credit to Borrowers
from time to time pursuant to the terms and conditions thereof; and
WHEREAS,
it is a condition precedent to the extension of credit under the Loan Agreement
that Grantors shall have granted the security interest contemplated by this
Agreement;
NOW, THEREFORE, for and in
consideration of the foregoing and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
1. The
Loan Agreement and the terms and provisions thereof are hereby incorporated
herein in their entirety by this reference thereto. Capitalized terms
not otherwise defined herein shall have the meanings ascribed to those terms in
the Loan Agreement.
2. To
secure the complete and timely payment, performance and satisfaction of
(x) all covenants, agreements and liabilities of the Borrowers under the
Loan Documents and all now existing or hereafter arising Obligations (including,
without limitation, any interest, fees and other charges in respect of the Loan
Agreement and the other Loan Documents that would accrue but for the filing of
an Insolvency Proceeding with respect to any Borrower, regardless of whether
such claim is allowed in such Insolvency Proceeding), and (y) the
obligations of Grantors arising from this Agreement and any other Loan Document
to which Grantor are party (items (x) and (y) above are hereinafter referred to
as the “Secured
Obligations”), each Grantor hereby grants to Agent, for the benefit of
the Lender Group, a security interest in, as and by way of a first mortgage and
security interest having priority over all other security interests, with power
of sale to the extent permitted by applicable law, all of such Grantor's right,
title and
LEGAL_US_W #
63043116.2
1
interest in, to an under the following, whether presently existing
or hereafter created or acquired: (a) all trademarks, trade names,
corporate names, business names, trade styles, service marks, logos, other
source or business identifiers, prints and labels on which any of the foregoing
have appeared or appear, designs and general intangibles of like nature (whether
registered or unregistered), all registrations and recordings thereof, and all
applications in connection therewith in the United States, Canada or any other
country, including all registrations, recordings and applications in the United
States Patent and Trademark Office or in any similar office or agency of the
United States, Canada or any State, Province or Territory thereof, or any other
country or any political subdivision thereof, including, without limitation,
those listed on Schedule 1 attached
hereto and made a part hereof, and (i) all renewals thereof, (ii) all income,
royalties, damages and payments now and hereafter due and/or payable under and
with respect thereto, including, without limitation, payments under all licenses
entered into in connection therewith and damages and payments for past or future
infringements or dilutions thereof, (iii) the right to xxx for past, present and
future infringements and dilutions thereof, (iv) the goodwill of such Grantor's
business symbolized by the foregoing and connected therewith, and (v) all of
such Grantor's rights corresponding thereto throughout the world (all of the
foregoing trademarks, trade names, registered trademarks and trademark
applications, service marks, registered service marks and service xxxx
applications, together with the items described in clauses (i)-(v) in
this paragraph
2(a), are sometimes hereinafter individually and/or collectively referred
to as the "Trademarks"); and (b)
all proceeds of any and all of the foregoing, including, without limitation,
license royalties and proceeds of infringement suits
3. Each
Grantor agrees that it will not, without Agent’s prior written consent, enter
into any agreement, including, without limitation, any license agreement, which
is inconsistent with this Agreement, and each Grantor further agrees that it
will not take any action, and will use its best efforts not to permit any action
to be taken by others subject to its control, including, without limitation,
licensees, or fail to take any commercially reasonable action, which would in
any material respect affect the validity or enforcement of the rights
transferred to Agent under this Agreement or the rights associated with the
Trademarks.
4. Each
Grantor represents and warrants that, from and after the date hereof,
(a) the Trademarks listed on Schedule 1 are all of
the trademarks, trade names, corporate names (other than the legal name of
Grantors), business names, trade styles, service marks, logos, other source or
business identifiers, prints and labels on which any of the foregoing have
appeared or appear, designs and general intangibles of like nature (whether
registered or unregistered), all registrations and recordings thereof, and all
applications in connection therewith in which Grantors now have any right, title
or interest, and (b) the Trademarks have not been adjudged invalid or
unenforceable, and Grantors are the legal and beneficial owner of the Trademarks
free and clear of all liens, claims or security interests other than (i) the
lien of Agent, (ii) the lien in favor of the Secured Notes Trustee securing the
Secured Notes Documents, provided such lien of
the Secured Notes Trustee is subject to the Intercreditor Agreement at all
times, and (iii) the Liens described in clauses (b), (d) and (i) of the
definition of Permitted Liens. If, prior to
LEGAL_US_W #
63043116.2
2
the termination of this Agreement, any Grantor shall obtain rights
to any new trademarks, trade names, corporate names, business names, trade
styles, service marks, logos, other source or business identifiers, prints and
labels on which any of the foregoing have appeared or appear, designs or general
intangibles of like nature (whether registered or unregistered), any
registrations and recordings thereof, or any applications in connection
therewith, the provisions of paragraph 2 above shall automatically apply
thereto. Each Grantor shall give to Agent prompt written notice of
events described in the preceding sentence promptly after the occurrence
thereof. Each Grantor authorizes Agent to modify this Agreement by
amending Schedule
1 to include any future trademarks, trade names, corporate names,
business names, trade styles, service marks, logos, other source or business
identifiers, prints and labels on which any of the foregoing have appeared or
appear, designs and general intangibles of like nature (whether registered or
unregistered), all registrations and recordings thereof, and all applications in
connection therewith which are or may become Trademarks hereunder and to record
such modifications (or notice thereof) in the United States Patent and Trademark
Office or with other applicable recording office at the expense of
Grantors. Each Grantor agrees to execute any and all instruments
(including individual conditional assignments or security agreements) necessary
to confirm such amendment or to enable such recording.
5. Each
Grantor agrees, except to the extent such action would not result in a Material
Adverse Change, not to abandon any Trademark without the prior
written consent of Agent, and to take all action necessary to
maintain in force any registration of the Trademarks, in the United States
Patent and Trademark Office and in any other jurisdiction in which it is
registered, including (without limitation) any filing, to the extent permitted
and authorized by law, of any declarations under Sections 8 of the Trademark Act
of 0000 (Xxxxxx Xxx) and any renewals thereunder, with respect to the
Trademarks. Any expense with regard to the foregoing shall be borne
and paid by Grantors.
6. At
any time after the occurrence and during the continuance of an Event of Default,
Agent shall have the right, but shall not be obligated, to bring suit in its own
name to enforce the Trademarks and, if Agent shall commence any such suit, each
Grantor shall, at the request of Agent, do any and all lawful acts and execute
any and all proper documents required by Agent in aid of such
enforcement. Each Grantor shall, upon demand, promptly reimburse
Agent for all costs and expenses incurred by Agent in the exercise of its rights
under this paragraph
6 (including, without limitation, reasonable fees and expenses of
attorneys and paralegals for Agent).
7.
(a) Each
Grantor hereby irrevocably designates, constitutes and appoints Agent (and all
officers and agents of Agent designated by Agent in its sole and absolute
discretion) as such Grantor's true and lawful attorney-in-fact, and authorizes
Agent and any of Agent's designees, in such Grantor's or Agent’s name, to take
any action and execute any instrument necessary or advisable to accomplish the
purposes of this Agreement, including, without limitation, at any time after the
occurrence and during the continuance of an Event of Default, to (i) endorse
such Grantor's name on all applications, documents, papers and instruments
necessary or desirable for Agent in the use of the Trademarks, (ii) assign,
pledge, convey or otherwise transfer title in or dispose
LEGAL_US_W #
63043116.2
3
of theTrademarks to anyone, (iii) grant or issue any exclusive or
nonexclusive license under the Trademarks to anyone, and (iv) take any other
actions with respect to the Trademarks as Agent deems in its best
interest. Each Grantor hereby ratifies all that such attorney shall
lawfully do or cause to be done by virtue hereof. This power of
attorney is coupled with an interest and shall be irrevocable until this
Agreement is terminated. Each Grantor acknowledges and agrees that
this Agreement is not intended to limit or restrict in any way the rights and
remedies of Agent under the Loan Agreement or any other Loan Document, but
rather is intended to facilitate the exercise of such rights and remedies.
(b) Agent
shall have, in addition to all other rights and remedies given it by the terms
of this Agreement, all rights and remedies allowed by law and the rights and
remedies of a secured party under the Uniform Commercial Code as enacted in any
jurisdiction in which the Trademarks may be located or deemed
located. Upon the occurrence and during the continuance of an Event
of Default and the election by Agent to exercise any of its remedies under the
Uniform Commercial Code as in effect in the State of New York with respect to
the Trademarks, each Grantor agrees to assign, convey and otherwise transfer
title in and to the Trademarks to Agent or any transferee of Agent and to
execute and deliver to Agent or any such transferee all such agreements,
documents and instruments as may be necessary, in Agent’s Permitted Discretion,
to effect such assignment, conveyance and transfer. All of Agent’s
rights and remedies with respect to the Trademarks, whether established hereby,
by the Loan Agreement or by any other agreements or by law, shall be cumulative
and may be exercised separately or concurrently. Notwithstanding
anything set forth herein to the contrary, it is hereby expressly agreed that
Agent may exercise any of the rights and remedies provided in this Agreement,
the Loan Agreement or any of the other Loan Documents. Each Grantor
agrees that any notification of intended disposition of any of the Trademarks
required by law shall be deemed reasonably and properly given if given at least
10 days before such disposition; provided, however, that Agent
may give any shorter notice that is commercially reasonable under the
circumstances. Each Grantor hereby acknowledges and agrees that such
notice, when filed, shall constitute a reasonable “authenticated notification of
disposition” within the meaning of Section 9-611 of the Uniform Commercial Code
as in effect from time to time in any jurisdiction.
8. Upon
the satisfaction in full of the Secured Obligations and the termination of the
Loan Agreement, including the Commitments of the Lenders thereunder, Agent shall
execute and deliver to Grantors all instruments as may be necessary or proper to
remove and terminate the security interest, and to reassign to Grantors any and
all right, title and interest in the Trademarks and the goodwill of the business
symbolized by the Trademarks, subject to any disposition thereof which may have
been made by Agent pursuant hereto.
9. The
provisions of this Agreement are severable, and if any clause or provision shall
be held invalid and unenforceable in whole or in part in any jurisdiction, then
such invalidity or unenforceability shall affect only such clause or provision,
or part thereof, in such jurisdiction, and shall not in any manner affect such
clause or provision in any
other jurisdiction, or any other clause or provision of this Agreement in any
jurisdiction.
LEGAL_US_W #
63043116.2
4
10. This
Agreement is subject to modification only by a writing signed by the
parties.
11. The
benefits and burdens of this Agreement shall inure to the benefit of, and be
binding upon, the respective successors and permitted assigns of the
parties.
12. This
Agreement may be executed in one or more counterparts, all of which taken
together shall constitute one and the same instrument and any of the parties
hereto may execute this Agreement by signing any such counterpart. Delivery of
an executed counterpart of this Agreement by telefacsimile shall be equally as
effective as delivery of an original, executed counterpart of this
Agreement. Any party delivering an executed counterpart of this
Agreement by telefacsimile shall also deliver an original executed counterpart
of this Agreement, but the failure to deliver an original, executed counterpart
shall not affect the validity, enforceability, and binding effect of this
Agreement.
13. This
Agreement shall be construed according to the internal laws of the New York,
without regard to the conflict of laws principles thereof.
14. The
powers conferred on Agent hereunder are solely to protect its interest in the
Trademarks and shall not impose any duty upon Agent to exercise any such
powers. Except for the accounting for moneys actually received by
Agent pursuant hereto, Agent shall have no duty with respect to the Trademarks
or as to the taking of any necessary steps to preserve rights against prior
parties or any other rights pertaining to any of the Trademarks. Each reference
herein to any right granted to, benefit conferred upon or power exercisable,
exercised, or action taken by Agent shall be deemed to be a reference to, or be
deemed to have been so taken, as the case may be, by Agent in its capacity as
Agent pursuant to the Loan Agreement for the benefit of the Lender Group, all as
more fully set forth in the Loan Agreement.
[REMAINDER
OF PAGE INTENTIONALLY LEFT BLANK]
LEGAL_US_W #
63043116.2
5
IN
WITNESS WHEREOF, each Grantor has caused this Trademark Security Agreement to be
executed and delivered by its duly authorized officer as of the date first set
forth above.
| PENINSULA GAMING, LLC, a Delaware limited liability company | |||
|
|
By:
|
/s/ Xxxxxxx Xxxxxxx | |
| Name Xxxxxxx Xxxxxxx | |||
| Title CFO | |||
| XXXXXXX XX, LLC, a Delaware limited liability company | |||
|
|
By:
|
/s/ Xxxxxxx Xxxxxxx | |
| Name Xxxxxxx Xxxxx,, | |||
| Title CFO | |||
| THE OLD XXXXXXXXXX XXXXX, L.L.C., a Louisiana limited liability company | |||
|
|
By:
|
/s/ Xxxxxxx Xxxxxxx | |
| Name Xxxxxxx Xxxxxxx | |||
| Title CFO | |||
| XXXXXXX XX WORTH, LLC, a Delaware limited liability company | |||
|
|
By:
|
/s/ Xxxxxxx Xxxxxxx | |
| Name Xxxxxxx Xxxxxxx | |||
| Title CFO | |||
| BELLE OF ORLEANS, L.L.C., a Louisiana limited liability company | |||
|
|
By:
|
/s/ Xxxxxxx Xxxxxxx | |
| Name Xxxxxxx Xxxxxxx | |||
| Title CFO | |||
|
ACCEPTED
AND ACKNOWLEDGED BY:
XXXXX FARGO FOOTHILL, INC., as Agent
|
||||
|
/s/Xxxxxxx
XxXxxxxxx
|
|
|||
|
Name:
Xxxxxxx XxXxxxxxx
|
|
|||
|
Title:
Vice President
|
|
SCHEDULE 1
8
