Exhibit 10.13
TRADEMARKS AND LICENSES
SECURITY AGREEMENT
(Trademarks)
This Trademarks and Licenses Security Agreement ("Agreement") is made as
of the 30th day of September, 2003, by Phoenix Color Corp. ("Company"), a
Delaware corporation, with its chief executive office located at 000 Xxxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxxxx, Xxxxxxxx 00000, and delivered to Wachovia Bank,
National Association, in its capacity as Agent for Lenders (and if applicable,
their affiliates that are holders of Obligations) ("Agent"), having a mailing
address of 0000 Xxxxxxxx Xxxxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000.
BACKGROUND
A. This Agreement is being executed contemporaneously with that certain
Amended and Restated Loan and Security Agreement of even date herewith by and
among Company, the other Borrowers, Agent and such other financial institutions
a party thereto as a Lender (as may hereafter be supplemented, restated,
amended, superseded, replaced, or restated from time to time, the "Loan
Agreement"), under which Company is granting Agent, a lien on and security
interest in all of the assets of Company associated with or relating to products
leased or sold or services provided under Company's trademarks (and the goodwill
associated therewith), and under which Agent is entitled to foreclose or
otherwise deal with such assets, goodwill, trademarks, trademark applications,
service marks, service xxxx applications, trade names, under the terms and
conditions set forth therein. Capitalized terms not defined herein shall have
the meanings given to such terms in the Loan Agreement.
B. Company has filed applications with, and/or is the owner of
registrations issued by, the United States Patent and Trademark Office or the
United States Copyright Office, as the case may be, of the trademarks, service
marks, (collectively, "Trademarks") listed on Schedule A attached hereto and
made part hereof (all such Trademarks hereinafter referred to as the "Assets").
C. Pursuant to the Loan Agreement, Agent is acquiring a lien on, and
security interest in, the Assets and the registration thereof, together with all
the goodwill of Company associated therewith and represented thereby, as
security for all Obligations, and desires to have its security interest in such
Assets confirmed by a document identifying same and in such form that it may be
recorded in the United States Patent and Trademark Office.
NOW THEREFORE, with the foregoing Background hereinafter deemed
incorporated by reference and made a part hereof, and in consideration of the
premises and mutual promises herein contained, the parties hereto, intending to
be legally bound hereby, covenant and agree as follows:
1. In consideration of and pursuant to the terms of the Loan Agreement and
all other instruments, agreements and documents entered into in connection
therewith (collectively, the "Loan Documents"), and for other good, valuable and
sufficient consideration, the receipt of which is hereby acknowledged, and to
secure the Obligations, Company grants a lien and security interest to Agent in
all of its present and future right, title and interest in and to the Assets,
together with all
the goodwill of Company associated with and represented by the Assets, and the
registration thereof and the right (but not the obligation) to xxx for past,
present and future infringements, and the proceeds thereof, including, without
limitation, license royalties and proceeds of infringement suits.
2. Except as otherwise provided in the Loan Agreement, Company hereby
covenants and agrees to maintain the federal registration in effect on the date
hereof or subsequently issued for the Assets in full force and effect until all
Obligations are indefeasibly paid and satisfied in full and the Loan Agreement
is terminated.
3. Company represents, warrants and covenants that:
(a) The Assets are subsisting and have not been adjudged invalid or
unenforceable;
(b) Each of the Assets is free and clear of any liens, claims,
charges and encumbrances, including, without limitation, pledges, assignments,
licenses and covenants by Company not to xxx third persons;
(c) Company has the unqualified right, power and authority to enter
into this Agreement and perform its terms; and
(d) Each of the Assets listed on Schedule A constitute all of the
registered Assets, and all applications for any of the foregoing, now owned by
Company. If, before all Obligations shall have been indefeasibly paid and
satisfied in full and the Loan Agreement shall have been terminated, Company
shall (i) obtain rights to any new registered trademarks, trademark
registrations or trade names, or (ii) become entitled to the benefit of any
registered trademark application, trademark, trademark registration, the
provisions of this Agreement shall automatically apply thereto and such
trademark application, trademark, trademark registration, or any improvement on
any patent shall be deemed part of the Assets. Company shall give Agent prompt
written notice thereof along with an amended Schedule A to the extent required
by the Loan Agreement.
4. Company further covenants that until all Obligations have been
indefeasibly paid and satisfied in full and the Loan Agreement is terminated, it
will not enter into any agreement, including without limitation, license
agreements or options, which is inconsistent with Company's obligations under
this Agreement, except for agency, co-marketing and co-branding agreements.
5. So long as an Event of Default or Default has not occurred under the
Loan Agreement, Company shall continue to have the exclusive right to use the
Assets and Agent shall have no right to use the Assets or issue any exclusive or
non-exclusive license with respect thereto, or assign, pledge or otherwise
transfer title in the Assets to anyone else.
6. Company agrees not to sell, license, grant any option, assign or
further encumber its rights and interest in the Assets except as permitted by
the Loan Agreement.
7. If and while an Event of Default exists under the Loan Agreement,
Company hereby covenants and agrees that Agent, as the holder of a security
interest under the Uniform Commercial Code, as now or hereafter in effect in the
Commonwealth of Pennsylvania, may take such action permitted under the Loan
Documents or permitted by law, in its exclusive discretion, to foreclose
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upon the Assets covered hereby.
8. This Agreement shall be subject to the terms, provisions, and
conditions set forth in the Loan Agreement and may not be modified without the
written consent of the parties hereto.
9. All rights and remedies herein granted to Agent shall be in addition to
any rights and remedies granted under the Loan Documents. In the event of an
inconsistency between this Agreement and the Loan Agreement, the language of the
Loan Agreement shall control.
10. Upon Company's performance of all of the obligations under the Loan
Documents and full and unconditional satisfaction of all Obligations, or as
otherwise provided in the Loan Agreement, Agent shall execute and deliver to
Company all documents reasonably necessary to terminate Agent's security
interest in the Assets.
11. Any and all reasonable fees, costs and expenses, of whatever kind or
nature, in defending or prosecuting any third party actions or proceedings
arising out of or related to the Assets, or defending, protecting or enforcing
Agent's rights hereunder, in each case in accordance with the terms of this
Agreement, shall be borne and paid by Company on demand by Agent and until so
paid shall be added to the principal amount of Obligations and shall bear
interest at the otherwise applicable rate of interest prescribed in the Loan
Agreement. Notwithstanding the foregoing, Company's liability for Agent's
attorneys' fees prior to the Closing Date shall be limited as set forth in the
Loan Agreement.
12. Subject to the terms of the Loan Agreement, Company shall have the
duty to prosecute diligently any trademark application with respect to the
Assets pending as of the date of this Agreement or thereafter, until all
Obligations shall have been indefeasibly paid and satisfied in full and the Loan
Agreement is terminated, to preserve and maintain all rights in the Assets, and
upon request of Agent, Company shall, if in the best interest of the business of
Company, make federal application on registrable but unregistered trademarks
belonging to Company. Any expenses incurred in connection with such applications
shall be borne by Company. Company shall not abandon any Trademark except as
permitted by the Loan Agreement.
13. Company shall have the right to bring suit in its own name to enforce
the Assets, in which event Agent may, if Company reasonably deems it necessary,
be joined as a nominal party to such suit if Agent shall have been satisfied, in
its sole discretion, that Agent is not thereby incurring any risk of liability
because of such joinder. Company shall promptly, upon demand, reimburse and
indemnify Agent for all damages, reasonable costs and expenses, including
reasonable attorneys' fees, incurred by Agent in the fulfillment of the
provisions of this paragraph.
14. During the existence of an Event of Default under the Loan Agreement,
Agent may, without any obligation to do so, complete any obligation of Company
hereunder, in Company's name or in Agent's name, but at Company's expense, and
Company hereby agrees to reimburse Agent in full for all costs and expenses,
including reasonable attorneys' fees, incurred by Agent in protecting, defending
and maintaining the Assets.
15. No course of dealing among Borrowers and Agent nor any failure to
exercise, nor any delay in exercising, on the part of Agent, any right, power or
privilege hereunder, shall operate as a waiver thereof, and all of Agent's
rights and remedies with respect to the Assets, whether
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established hereby or by the Loan Documents, or by any other future agreements
between Borrowers and Agent or by law, shall be cumulative and may be exercised
singularly or concurrently.
16. The provisions of this Agreement are severable and the invalidity or
unenforceability of any provision herein shall not affect the remaining
provisions which shall continue unimpaired and in full force and effect.
17. This Agreement shall inure to the benefit of and be binding upon the
respective successors and permitted assigns of the parties.
18. This Agreement shall be governed by and construed in conformity with
the laws of the Commonwealth of Pennsylvania without regard to its otherwise
applicable principles of conflicts of laws.
19. Company and Agent each waive any and all rights it may have to a jury
trial in connection with any litigation, proceeding or counterclaim arising with
respect to rights and obligations of the parties hereto or under the Loan
Documents.
[REMAINDER OF PAGE LEFT INTENTIONALLY BLANK]
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Dated the date and year first written above.
PHOENIX COLOR CORP.
By: /s/Xxxxxx Xxxxxxxxx
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Name: Xxxxxx Xxxxxxxxx
Title: Chief Financial Officer
Approved and Accepted:
WACHOVIA BANK, NATIONAL
ASSOCIATION
By: /s/Xxxxxxxx X. Xxxxx
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Name: Xxxxxxxx X. Xxxxx
Title: Vice President
[SIGNATURE PAGE TO A&R TRADEMARK AGREEMENT]
S-1
SCHEDULE A
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Trademark Registration/ Registration/
Application Application Serial No. Status
Number Date
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Phoenix Colornet and Design 2138992 2/24/1998 Registered.
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Interactive Illusion Pending.
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Lithofoil Published.
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Vibramotion Pending.
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Yes is the Answer
What is the Question? And Design 2316059 2/02/2000 Registered.
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Yes is the Answer
What is the Question? And Design 2309062 1/18/2000 Registered.
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CORPORATE ACKNOWLEDGMENT
UNITED STATES OF AMERICA :
COMMONWEALTH OF PENNSYLAVANIA : SS
COUNTY OF PHILADELPHIA :
On this 30th of September, 2003, before me personally appeared Xxxxxx
Xxxxxxxxx to me known and being duly sworn, deposes and says that s/he is the
CFO of Phoenix Color Corp., the Company described in the foregoing Agreement;
that s/he signed the Agreement as such officer pursuant to the authority vested
in him/her by law; that the within Agreement is the voluntary act of such
corporation; and s/he desires the same to be recorded as such.
/s/ Xxxxxxx Xxxxxx
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Notary Public
My Commission Expires:
[seal] Jan. 8, 0000
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XXXXXXXXXXXXXX
XXXXXX XXXXXX XX XXXXXXX :
COMMONWEALTH OF PENNSYLVANIA : SS
COUNTY OF PHILADELPHIA :
On this 30th day of September, 2003, before me personally appeared
Xxxxxxxx Xxxxx to me known and being duly sworn, deposes and says that she is
Vice President of Wachovia Bank, National Association, the Agent described in
the foregoing Agreement; that she signed the Agreement as such officer pursuant
to the authority vested in her by law; that the within Agreement is the
voluntary act of such entity; and she desires the same to be recorded as such.
/s/ Xxxxxxx Xxxxxxx
---------------------------------
Notary Public
My Commission Expires:
Jan. 8, 2004 [Seal]
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