Exhibit 10.1 ASSIGNMENT OF INTELLECTUAL PROPERTY AND RELEASE OF SECURITY
THIS ASSIGNMENT OF INTELLECTUAL PROPERTY AND RELEASE OF SECURITY (Assignment and
Release) is made and entered into as of March 1, 2006 (the Effective Date) by
Smart Adds Inc. a Delaware Corporation (Seller), Tiger Telematics, Inc. a
Delaware Corporation (Parent) and each of Xxxxx Xxxxxx and Xxxxx Xxxxxxx (the
Buyers).
For good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, the parties agree as follows:
1. Definitions. In this Assignment and Release:
Intellectual Property shall mean all (A) U.S. and foreign patents, patent
rights, patent applications, patent disclosures and all related continuations,
continuations-in-part, divisionals, reissues, re-examinations, substitutions,
and extensions thereof including the patents and patent applications set forth
in Schedule I; (B) trademarks, service marks, trade dress, logos, tradenames,
service names and corporate names (whether registered or unregistered) and
registrations and applications for registration thereof; (C) copyrights,
Internet domain names and registrations and applications for registration
thereof; (D) mask works and registrations and applications for registration
thereof; (E) computer software programs and applications in both source and
object code forms and all related data and documentation; (F) sui generis
database rights and other data; (G) trade secrets, technology and confidential
business information, whether patentable or nonpatentable, and whether or not
reduced to practice, know-how, manufacturing and product processes and
techniques, research and development information, copyrightable works,
financial, marketing and business data, pricing and cost information, business
and marketing plans and customer and supplier lists and information; (H) other
proprietary rights relating to any of the foregoing (including, without
limitation, associated goodwill and remedies against infringements thereof and
rights of protection of an interest therein under the laws of all
jurisdictions); and (I) all copies and tangible embodiments thereof.
Lien means, with respect to any asset, any mortgage, liability, lien (including
any tax lien), obligation, pledge, charge, security interest or encumbrance of
any kind in respect of such asset.
Person means an individual, corporation, partnership, association, trust,
business enterprise or other entity or organization, including a government or
political subdivision or an agency or instrumentality thereof.
Promissory Note shall mean the promissory note from Gizmondo Europe Limited
(Gizmondo) dated December 21, 2005 in favor of the Buyers under which Gizmondo
agreed to pay the Buyers the principal sum of 12,700,000 pounds sterling
together with interest and certain fees as more fully described in the
Promissory Note.
Purchased Assets shall mean all business, assets, properties, goodwill and
rights of the Seller of every kind and description, including, without
limitation, all of Seller's Intellectual Property, wherever located, real,
personal or mixed, tangible or intangible, whether fixed, contingent or
otherwise, owned, held or used (or intended to be used) by the Seller.
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Security Documents shall mean each of (a) the Pledge Agreement dated December
21, 2005 between Parent and the Buyers and (b) the Security Agreement dated
December 21, 2005 between the Seller and the Buyers.
1. Assignment of Intellectual Property. In exchange for the actions
described in Section 4 below, the Seller hereby assigns, transfers and conveys
to the Buyers, and the Buyers jointly accept, all of the Seller's right, title
and interest throughout the world in and to all the Purchased Assets free and
clear of all Liens. Anything in this Assignment and Release to the contrary
notwithstanding, the Buyers shall not assume any obligations or liabilities of
the Seller or any affiliate thereof (or any predecessor owner of all or part of
the assets) relating to the Purchased Assets, or any liabilities attendant to
any of the foregoing, of any nature whatsoever, whether known, unknown,
liquidated or contingent and whether presently in existence or arising or
asserted hereafter.
2. Protection of Intellectual Property. Seller further assigns all rights,
and empowers the Buyers, their successors, assigns and nominees, with respect to
the Purchased Assets, to make applications for patent, trademark, copyright or
other intellectual property registration or protection anywhere in the world, to
claim and receive the benefit of any applicable rights of priority in connection
with such applications, to prosecute such applications to issue, and to have any
and all registrations issued in the name of the Buyers or their successors,
assigns or nominees.
3. Further Assurances. Seller and Parent each further agree that they will
use commercially reasonable efforts to: (i) cooperate with the Buyers in the
filing and prosecution of any and all patent, trademark, copyright or other
intellectual property registration applications with respect to the Purchased
Assets; (ii) execute, verify, acknowledge and deliver all such further papers,
including applications and instruments of transfer; and (iii) perform such other
acts as the Buyers lawfully may request, to facilitate the Buyers' right to
obtain, protect, maintain, defend or enforce any of the rights granted
hereunder. In the event that the Buyers are unable, after using reasonable
efforts, to secure Seller's or Parent's signature to any document when so
required to effectuate fully this Assignment and Release, Seller and Parent each
hereby irrevocably designate and appoint the Buyers and the Buyers' duly
authorized agents as Seller's and Parent's agents and attorneys in fact to act
for and on their behalf and instead of them, for the sole purpose of execution
and filing any such document and to do all other lawfully permitted acts to
further the filing, prosecution, registration, memorialization of assignment,
issuance and enforcement of rights under the Purchased Assets with the same
legal force and effect as if executed by the Seller or Parent, as applicable.
4. Assignment of Promissory Note and Release of Security. In exchange for
the assignment of the Purchased Assets to the Buyers, the Buyers hereby (i)
assign, transfer and convey to the Seller without recourse, and the Seller
accepts without recourse all of the Buyers' right, title and interest in and
under the Promissory Note, and (ii) release Gizmondo and Parent, and their
respective successors and predecessors and their respective affiliates,
officers, directors, agents, employees, shareholders and attorneys from any
claim, liability, obligation, causes of action, losses and damages that the
Buyers or either of them has had in the past, or now has, whether known or
unknown, whether asserted or unasserted, by reason of any matter, cause or thing
set forth in, relating to or arising out of, or in any way connected with or
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resulting from, the Promissory Note and the Buyers' investment in and
transactions with Gizmondo and/or Parent; provided such release shall not
release Gizmondo from its liability to Seller under the Promissory Note and
provided further this release shall not be effective if a Petition for Relief
under federal bankruptcy law or similar law is filed by or in respect of either
Parent or Seller and the effect of such proceeding is to cause the grant of a
security interest in the Purchased Assets to be treated as a void transfer,
provided the above waivers do not apply to the obligations of the seller under
the agreement.
The Buyers shall immediately deliver to Seller all notes, instruments and other
documents in their or their counsel's possession relating to the Promissory
Note, including original signed copies of the Promissory Note.
All right, title and interest of the Buyers in and to the Collateral (as defined
in each Security Document) shall be terminated and released without any other
action. The seller shall file UCC termination statements as may be necessary to
terminate their security interest in collateral.
5. Representations of Seller and Parent. Each of Seller and Parent
represents and warrants to the Buyers that:
5.1. Organization and Qualification. Each of Seller and Parent has been duly
organized and is validly existing and in good standing under the laws of the
jurisdiction of its incorporation and has the full power and authority to own,
lease and operate its properties and to carry on its business as it is now being
conducted. Each of Seller and Parent is duly qualified or licensed to do
business, and is in good standing (to the extent applicable), in each
jurisdiction where the character of the properties owned, leased or operated by
it or the nature of its business makes such qualification or licensing
necessary.
5.2 Corporate Authorization. Each of Seller and Parent has full power and
authority to execute and deliver this Assignment and Release, and to perform its
obligations hereunder, and to consummate the transactions contemplated hereby.
The execution, delivery and performance by each of Seller and Parent of this
Assignment and Release, and the consummation of the transactions contemplated
hereby, have been duly authorized by all necessary corporate and shareholder
action on the part of Seller and Parent and no other corporate or shareholder
proceedings on the part of Seller or Parent is necessary to authorize this
Assignment and Release or to consummate the transactions contemplated hereby.
This Assignment and Release has been duly executed and delivered by each of
Seller and Parent and constitutes valid and binding agreements of the Seller and
Parent, enforceable against the Seller and Parent in accordance with its terms.
5.3 Non-Contravention. The execution, delivery and performance by each of
Seller and Parent of this Assignment and Release does not and will not (i)
contravene or conflict with or constitute a violation of any provision of the
certificate of incorporation or by-laws of Seller or Parent; (ii) contravene or
conflict with or constitute a violation of any provision of any law, or any
judgment, injunction, order or decree binding upon or applicable to Seller,
Parent or the Purchased Assets, (iii) violate, conflict with, result in a breach
of any provision of, constitute a default (or an event which, with notice or
lapse of time or both, would constitute a default) under, result in the
termination or in a right of termination or cancellation of, accelerate the
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performance required by, result in the triggering of any payment or other
material obligations pursuant to, or result in the loss of any material benefit
relating to the Purchased Assets or (iv) result in the creation or imposition of
any Lien on any Purchased Asset.
5.4 Title to Purchased Assets. Upon consummation of the transactions
contemplated hereby, the Buyers will have jointly acquired good and marketable
title in and to each of the Purchased Assets, free and clear of all Liens.
5.5 Solvency. (a) Based on the financial condition of Seller and Parent
after giving effect to the consummation of the transactions contemplated hereby,
each of Seller's and Parent's fair saleable value of its assets exceeds the
amount that will be required to be paid on or in respect of its existing debts
and other liabilities (including known contingent liabilities) as they mature;
(b) each of Seller and Parent do not intend to incur debts beyond their ability
to pay such debts as they mature (taking into account the timing and amounts of
cash to be payable on or in respect of its debt); (c) neither Seller nor Parent
is subject to any Bankruptcy Event and (d) each of the Seller and the Parent are
receiving reasonably equivalent value and fair consideration for the assignment
of the Purchased Assets for the purposes of any applicable United States
bankruptcy or State fraudulent transfer or conveyance statute and any case law
relating thereto. For the purposes of this Section 5.5, Bankruptcy Event means
any of the following events: (a) Seller or Parent commences a case or other
proceeding under any bankruptcy, reorganization for the benefit of creditors,
arrangement, adjustment of debt, relief of debtors, dissolution, insolvency or
liquidation or similar law of any jurisdiction relating to Seller or Parent; (b)
there is commenced against Seller or Parent any such case or proceeding; (c)
Seller or Parent is adjudicated insolvent or bankrupt, or any order of relief or
other order approving any such case or proceeding is entered; (d) Seller or
Parent suffers any appointment of any custodian or the like for it or any
substantial part of its property; (e) Seller or Parent makes a general
assignment for the benefit of creditors; (f) Seller or Parent fails to pay, or
states that it is unable to pay or is unable to pay, its debts generally as they
become due; (g) Seller or Parent calls a meeting of its creditors with a view to
arranging a composition, adjustment or restructuring of its debts; or (h) Seller
or Parent, by any act or failure to act, indicates its consent to, approval of
or acquiescence in any of the foregoing or takes any corporate or other action
for the purpose of effecting any of the foregoing.
5.6 Intellectual Property.
(a) Schedule I contains a true and complete list of the patents, patent
applications, registered trademarks, trademark applications, trade names,
unregistered service marks, registered service marks, service xxxx applications,
Internet domain names, Internet domain name applications, copyright
registrations and applications and all other filings and formal actions made or
taken pursuant to all laws by Seller to protect its interests in Seller's
Intellectual Property, and includes details of all due dates for further
filings, maintenance, payments or other actions falling due in respect of the
Seller's Intellectual Property within twelve (12) months of the Effective Date.
All of Seller's patents, patent applications, registered trademarks, trademark
applications, registered service marks, service xxxx applications, and
registered copyrights remain in good standing with all fees and filings due as
of the Effective Date duly made.
(b) Seller has made all registrations that Seller is required to have made
in relation to the processing of data, and is in good standing with respect to
such registrations, with all fees due as of the Effective Date duly made.
(c) Seller's Intellectual Property, products, work, technology or process
as now used or offered or proposed for use does not infringe on any Intellectual
Property of any Person, anywhere in the world. Seller has not received notice of
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any claims (i) challenging the validity, effectiveness or ownership by Seller of
any of Seller's Intellectual Property, or (ii) to the effect that the use or any
other exercise of rights in any product, work, technology or process as now used
or offered or proposed for use by Seller or their agents or use by its customers
infringes or will infringe on any Intellectual Property of any Person. To the
knowledge of Seller, no such claims have been threatened by any Person, nor are
there any valid grounds for any bona fide claim of any such kind. To the
knowledge of Seller, there is no unauthorized use, infringement or
misappropriation of Seller's Intellectual Property by any third party, employee
or former employee.
(d) Schedule I contains a true and complete list of all software programs
now or at any time owned or in the possession of Seller (the Software Programs).
The Seller owns full and unencumbered right and good, valid and marketable title
to such Software Programs, free and clear of all Liens.
(e) The source code and system documentation relating to the Software
Programs have been maintained in strict confidence and (i) have been disclosed
by Seller or Parent only to those of their employees who have a "need to know"
the contents thereof in connection with the performance of their duties to the
Seller and who have executed nondisclosure agreements with the Seller; and (ii)
have been disclosed to only those third parties who have a "need to know" the
contents thereof and who have executed nondisclosure agreements with the Seller.
5.7. Finders' Fees. There is no investment banker, broker, finder or other
Person which has been retained by or is authorized to act on behalf of Seller or
Parent who might be entitled to any fee or commission from Seller or Parent or
any of their affiliates upon consummation of the transactions contemplated by
this Assignment and Release.
6. Bankruptcy Covenants of Parent. Parent covenants and agrees that during
the twelve (12) month period following the Effective Date it will not (i)
commence a case or other proceeding with respect to Seller (including any
proceeding with respect to Parent in which Seller is substantively consolidated)
under any bankruptcy, reorganization for the benefit of creditors, arrangement,
adjustment of debt, relief of debtors, dissolution, insolvency or liquidation or
similar law of any jurisdiction relating to Seller or Parent or (ii) by any act
or failure to act, indicate its consent to, approval of or acquiescence in any
of the foregoing or take any corporate or other action for the purpose of
effecting any of the foregoing.
7. Survival; Indemnification.
(a) The covenants, agreements, representations and warranties of the
parties hereto contained in this Assignment and Release shall survive the
execution and delivery of this Assignment and Release and the Effective Date.
(b) Seller and Parent hereby jointly and severally indemnify the Buyers
against, and agree to hold each of them harmless from, any and all damages,
claims, debts, actions, assessments, judgments, losses, liabilities, fines,
fees, penalties and expense (including, without limitation, reasonable expenses
of investigation and reasonable attorneys' fees and expenses in connection with
any action, suit or proceeding) incurred or suffered by any of them arising out
of any misrepresentation or breach of representation and warranty, covenant or
agreement made or to be performed by Seller or Parent pursuant to this
Assignment and Release.
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8. Miscellaneous. The waiver by either party of any breach of this
Assignment and Release or any right hereunder shall not constitute a waiver of
any subsequent breach of this Assignment and Release; nor shall any delay by
either party to exercise any right under this Assignment and Release operate as
a waiver of any such right. If any provision of this Assignment and Release
shall be adjudged by any court of competent jurisdiction to be unenforceable or
invalid, that provision shall be limited or eliminated to the minimum extent
necessary so that this Assignment and Release shall otherwise remain in full
force and effect and enforceable. Headings and captions are for convenience only
and are not to be used in the interpretation of this Assignment and Release.
This Assignment and Release may be executed and delivered in counterparts
(including by facsimile transmission), each of which will be deemed an original.
This Assignment and Release shall be binding on the parties' respective heirs,
successors and assigns. Neither this Assignment and Release nor any interest or
obligation in or under this Assignment and Release may be transferred (whether
by way of security or otherwise) by the Parent or the Seller without the prior
written consent of the Buyers. Any purported transfer that is not in compliance
with this Section will be void. This Assignment and Release will be construed in
accordance with, and this Assignment and Release and all matters arising out of
or in connection with this Assignment and Release (whether in contract, tort or
otherwise) will be governed by, the law of the State of New York.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the Seller, the Parent and each Buyer has caused this
Assignment and Release to be duly executed and delivered as of the date first
above written.
SELLER
SMART ADDS INC.
By:_________________________________________
Name:
Title:
Address for Notices:
-------------------
c/o Tiger Telematics Inc.
000 Xxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxxxx, Xxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxxxxx
PARENT
TIGER TELEMATICS, INC.
By:_________________________________________
Name:
Title:
Address for Notices:
-------------------
000 Xxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxxxx, Xxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxxxxx
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BUYERS
XXXXX XXXXXX
____________________________________________
Address for Notices:
-------------------
Onston Hall
Xxxxxx Xxxx
Xxxxxx
Xxxxxxxx XX0 0XX
Xxxxxx Xxxxxxx
XXXXX XXXXXXX
____________________________________________
Address for Notices:
-------------------
Lammasfield
Chelford Road
Xxxxxxxx Xxxx
Xxxxxxxx XX0 0XX
Xxxxxx Xxxxxxx
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SCHEDULE I
--------- -------------- --------- ------------ ------------- ----------------- ------------
Grantor Patent Country Patent No. Applic. No. Filing Date Issue Date
Application
--------- -------------- --------- ------------ ------------- ----------------- ------------
Smart System and United 11/202,859 August 11, 2005
Adds Method for States
Inc. Distributing
Multimedia
Content via
Mobile
Wireless
Platforms
--------- -------------- --------- ------------ ------------- ----------------- ------------
Smart Method for United 11/202,665 August 11, 2005
Adds Advertising States
Inc.
--------- -------------- --------- ------------ ------------- ----------------- ------------
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