IP PURCHASE AND SALE AGREEMENT
Exhibit 10.1
This IP Purchase and Sale Agreement (this “Agreement”), is entered into on June 30,
2010, by and among Popular, Inc., a Puerto Rico corporation (“Popular”), and any
Affiliate(s) and/or Subsidiary(ies) of Popular identified on the signature pages hereto (each of
Popular and each such Affiliate/Subsidiary, a “Seller”, and collectively,
“Sellers”), and EVERTEC, Inc. a Puerto Rico corporation (“Buyer”).
WHEREAS, simultaneously with the execution of this Agreement, Popular, AP Carib Holdings,
Ltd., an exempted company organized under the laws of the Cayman Islands with limited liability,
Carib Acquisition, Inc., a corporation organized under the laws of the Commonwealth of Puerto Rico,
and Buyer are parties to that certain Agreement and Plan of Merger, dated as of the date hereof
(the “Merger Agreement”);
WHEREAS, Sellers and Buyer now desire to enter into this Agreement for the purpose of selling,
conveying, assigning, transferring and delivering to Buyer the Transferred IP (defined below);
NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged each Seller and Buyer hereby agree as follows:
1. Definitions. Unless otherwise defined herein, all capitalized terms used herein
shall have the same meanings as set forth in the Merger Agreement. The following capitalized terms
used in this Agreement shall have the meanings set forth below.
a) “Affiliate” means, with respect to any Person, any other Person directly or
indirectly Controlling, Controlled by, or under common Control with, such Person as of the date on
which, or at any time during the period for which, the determination of affiliation is being made.
b) “Control,” and the correlative terms “Controlling” and
“Controlled,” means the possession, direct or indirect, of the power to direct or cause the
direction of the management policies of a Person, whether through the ownership of voting
securities, by contract or otherwise.
c) “Effective Time” has the meaning ascribed to such term in the Merger Agreement.
d) “Government Entity” means any federal, national, supranational, state, provincial,
Commonwealth of Puerto Rico, local or foreign or similar government, governmental subdivision,
regulatory or administrative body or other governmental or quasi-governmental agency, tribunal,
commission, court, judicial or arbitral body or other entity with competent jurisdiction, including
any Government Antitrust Entity.
e) “Licensed IP” means the know-how and trade secrets (i) owned by each Seller as of
the Closing Date and (ii) not subject to the assignment obligations herein, that are reasonably
necessary for the use of the Transferred IP as used by Buyer prior to the Closing.
f) “Party” means any Seller or Buyer (and “Parties” means, collectively, all
Sellers and Buyer).
g) “Person” means an individual, a corporation, a partnership, an association, a
limited liability company, a joint venture, a Government Entity, a trust or other entity or
organization.
h) “PR Code” means the Puerto Rico Internal Revenue Code of 1994, as amended, and the
regulations promulgated there under.
i) “Transferred Domain Names” means those Internet domain names set forth on
Schedule A.
j) “Transferred IP” means, collectively, the Transferred Domain Names, the Transferred
Software, the Transferred Trademarks and the Transferred Trade Secrets.
k) “Transferred Software” means the computer software and applications (together with
all source and object code forms thereof, user interfaces and documentation related thereto and all
intellectual property rights (other than rights in trademarks, service marks, logos, corporate
names, Internet domain names and other similar indicators of origin) therein owned by Sellers as of
the Closing and set forth on Schedule B, and on Schedule B-1, to the extent agreed
upon by Popular and Buyer between the date hereof and the Closing, but excluding any data therein
or stored thereby.
l) “Transferred Trade Secrets” means know how or trade secrets owned by any of the
Sellers as of the Closing that were conceived or created during the course of the development or
implementation of the Transferred Software.
m) “Transfer Taxes” means all federal, state, Commonwealth of Puerto Rico, local or
foreign or other excise, sales, use, value added, transfer (including real property transfer or
gains), stamp, documentary, filing, recordation and other similar taxes and fees that may be
imposed or assessed as a result of the Agreement, together with any interest, additions or
penalties with respect thereto.
n) “Transferred Trademarks” means the trademarks and the service marks listed on
Schedule C attached hereto and all formative marks used by any of the Sellers as of the
Closing that include or incorporate the marks listed on Schedule C , including all the
registrations and applications therefor, all renewals and extensions thereof, all common law rights
therein, and all goodwill associated therewith and symbolized thereby.
2. Rules of Interpretation.
a) Schedules referenced in this Agreement are deemed to be incorporated herein by reference.
b) Wherever the word “include,” “includes” or “including” is used in this Agreement, it
shall be deemed to be followed by the words “without limitation.”
c) The words “hereof,” “herein” and “hereunder” and words of similar import, when used
in this Agreement, shall refer to this Agreement as a whole and not to any particular
provision of this Agreement.
d) The terms defined in the singular have a comparable meaning when used in the plural, and
vice versa.
e) The terms “dollars” and “$” mean U.S. Dollars.
f) References herein to the Preamble or the Recitals or a specific Section or Schedule shall
refer, respectively, to the Preamble or the Recitals or to Sections or Schedules of this Agreement.
3. Closing. Subject to the terms and conditions of this Agreement, the closing of the
transactions contemplated by this Agreement shall take place at the offices of Seller and be
effective immediately following the Effective Time (the “Closing”).
4. Purchase & Sale.
a) As of the Closing, each Seller, individually and collectively, hereby irrevocably assigns,
transfers, sells, conveys and delivers, or causes to assign, transfer, sell, convey and deliver, to
Buyer, and Buyer hereby accepts the assignment, transfer, purchase, conveyance, and delivery of,
all of such Sellers’ right, title and interest in and to the Transferred IP worldwide, including
all rights to xxx and recover at law or in equity for any past, present and future infringement,
misappropriation, dilution, violation or other impairment of the Transferred IP throughout the
world in the name of Buyer or its designee.
b) Each Seller (as applicable) shall use commercially reasonable efforts to identify and
delete or destroy all copies of source or object codes and related documentation included in the
Transferred IP and in its possession and Control within thirty (30) days of the Closing (“Phase
Out”). If additional time is required to complete the Phase Out, Buyer shall agree to a
reasonable extension. Upon Buyer’s request, Popular will have a duly authorized representative who
shall certify in writing that each Seller has completed the Phase Out. Notwithstanding anything
contained herein to the contrary, no Seller shall have any obligation to delete or destroy any
object code or documentation that could adversely impact its information technology systems or
continuity of business or services.
5. License to the Licensed IP.
a) Subject to the terms and conditions set forth herein, each Seller hereby grants to Buyer a
perpetual, fully paid-up, irrevocable, royalty-free, non-transferable, non-exclusive license to the
Licensed IP, for use in its business solely in connection with the Transferred IP, to the extent
and in the manner such Licensed IP had been used by Buyer in connection with its use of the
Transferred IP prior to the Closing (“License”). Buyer
may assign the License or sublicense any rights granted under the License, in whole or in
part, to an Affiliate (“Permitted Assignee”), provided that such Permitted Assignee shall
be and agrees to be subject to and bound by all the terms and conditions of the License and this
Agreement. All sublicenses shall automatically terminate upon the termination of the License.
b) All rights in the Licensed IP not expressly granted to Buyer hereunder are reserved to each
Seller as applicable.
6. Limited License to the Transferred Trademarks for Phase Out.
a) On the terms and conditions set forth herein, Buyer hereby grants to each Seller a fully
paid-up, royalty-free, non-exclusive license (i) for a period of up to ninety (90) days after the
Closing, to use and deplete any existing inventory of brochures, stationery, labels, business
cards, forms, promotion and advertising materials, signage or any other materials (collectively,
“Materials”) that are in possession of Purchaser as of the Closing and bear the Transferred
Trademarks or Transferred Domains; and (ii) for a period of up to fifteen (15) days after the
Closing to continue to use the Transferred Trademarks on any Internet website of Purchaser solely
in a manner consistent with how such Transferred Trademarks were used on such Internet website as
of the Closing (“Authorized Use”). Any and all Authorized Use hereunder shall be subject
to Buyer’s reasonable direction and control (“Quality Standards”). Sellers, individually
and collectively, agree to comply with the Quality Standards and correct, its use to conform to the
Quality Standards as may be reasonably requested by Buyer.
b) Except as authorized under any other agreement between any Seller and Buyer, if after
ninety (90) days, there still exists any Materials bearing the Transferred Trademarks or
Transferred Domains, the Seller shall destroy the same and shall provide Buyer with an officer’s
certificate attesting that such destructions has taken place.
c) All rights in the Transferred Trademarks and Transferred Domains not expressly granted to
Sellers hereunder are reserved to the Buyer.
7. IP Purchase Price. On the terms set forth herein, in consideration for the sale,
assignment and transfer of the Transferred IP, and the transactions contemplated by this Agreement,
Buyer shall purchase the Transferred IP for an aggregate purchase price of $45,000,000 in cash (the
“IP Purchase Price”). On the date of the Closing, Buyer shall deliver to Popular the IP
Purchase Price by wire transfer of immediately available funds to such bank account of Popular as
Popular shall designate in writing to Buyer at least three days prior to the Closing.
8. Covenant of Popular. Popular shall take such actions necessary to further the
intents and purposes of this Agreement, including causing Popular Auto, Inc., Popular Insurance,
Inc., Popular Mortgage, Inc. and Banco Popular de Puerto Rico to grant the rights granted hereunder
and fully perform the obligations set forth herein in accordance with this Agreement’s terms and
conditions as if all such entities were direct parties hereto.
9. Due Authorization. Each Seller hereby authorizes and requests the Commissioner of
Patents of the United States, the Commissioner of Trademarks of the United States, the Register of
Copyrights of the United States and any other official of any applicable
government entity worldwide, to record all registrations and applications for registration
included in the Transferred IP in the name of Buyer, and issue any and all registrations from any
and all applications for registration included in the Transferred IP to and in the name of Buyer.
10. Disclaimer of Representations and Warranties. BUYER HEREBY ACKNOWLEDGES THAT
SELLERS MAKE NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, OTHER THAN
THOSE EXPRESSLY CONTAINED IN THIS AGREEMENT AND/OR THE MERGER AGREEMENT. WITHOUT LIMITING THE
FOREGOING, SELLERS EXPRESSLY DISCLAIM ALL EXPRESS AND IMPLIED WARRANTIES UNDER THIS AGREEMENT,
INCLUDING WARRANTIES OF FREEDOM FROM ERRORS, MERCHANTABILITY, FITNESS FOR USE OR A PARTICULAR
PURPOSE, SUITABILITY, TITLE, AND NON-INFRINGEMENT. THE TRANSFERRED IP AND THE LICENSED IP IS
PROVIDED TO BUYER UNDER THIS AGREEMENT ON AN “AS IS” BASIS. NOTHING CONTAINED HEREIN SHALL LIMIT
THE REPRESENTATIONS AND WARRANTIES IN THE MERGER AGREEMENT.
11. Transfer Taxes. All Transfer Taxes that may be imposed or assessed as a result of
the Agreement shall be borne 100% by the Sellers. The Sellers and the Buyer shall cooperate to
minimize any Transfer Taxes.
12. Amendment; Waiver. Any provision of this Agreement may be amended or waived if,
and only if, such amendment or waiver is in writing and signed, in the case of an amendment, by
each Seller and Buyer, or in the case of a waiver, by the Party against whom the waiver is to be
effective. No failure or delay by any Party in exercising any right, power or privilege hereunder
shall operate as a waiver thereof nor shall any single or partial exercise thereof preclude any
other or further exercise thereof or the exercise of any other right, power or privilege.
13. Further Assurances. Sellers and Buyer agree to execute such further documentation
and perform such further actions, including any actions or documents required by the applicable
Governmental Entity or other authority to document or record the assignment herein or as may be
necessary to protect, secure and vest good, valid and marketable title to the Transferred IP in
Buyer and to effect the assignment of the Transferred IP. Sellers shall also provide to Buyer any
customary instruments of transfer, assumptions, filings or documents, in form and substance
reasonably satisfactory to Buyer, as may be required to give effect to this Agreement.
14. Governing Law; Submission to Jurisdiction; Selection of Forum; Waiver of Trial by
Jury. Except for the mechanics of the Merger that shall be governed and construed in
accordance with the Commonwealth Law, this Agreement shall be governed and construed in accordance
with the laws of Delaware, in each case without regard to any conflict of law rules of the
Commonwealth or Delaware, as the case may be, that would apply the laws of a different
jurisdiction. Each Party agrees that it shall bring any action or Legal Proceeding in respect of
any claim arising out of or related to this Agreement or the Transactions or involving any Related
Released Party or any Related Released Party of a Related Released Party, exclusively in any
federal court located in the State of Delaware or any Delaware state court (the “Chosen Courts”),
and solely in connection with claims arising under this Agreement or the
Transactions or involving any Related Released Party or any Related Released Party of a
Related Released Party (i) irrevocably submits to the exclusive jurisdiction of the Chosen Courts,
(ii) waives any objection to laying venue in any such action or Legal Proceeding in the Chosen
Courts, (iii) waives any objection that the Chosen Courts are an inconvenient forum or do not have
jurisdiction over any Party or Related Released Party or any Related Released Party of a Related
Released Party and (iv) agrees that service of process upon such Party in any such action or Legal
Proceeding shall be effective if notice is given in accordance with Section 9.2 of the Merger
Agreement. EACH PARTY ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY THAT MAY ARISE UNDER THIS
AGREEMENT IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT ISSUES, AND THEREFORE EACH SUCH PARTY
HEREBY IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY RIGHT SUCH PARTY MAY HAVE TO A TRIAL BY JURY IN
RESPECT OF ANY LITIGATION PERMITTED UNDER THIS SECTION 14. EACH PARTY CERTIFIES AND ACKNOWLEDGES
THAT (A) NO REPRESENTATIVE, AGENT OR ATTORNEY OF ANY OTHER PARTY HAS REPRESENTED, EXPRESSLY OR
OTHERWISE, THAT SUCH OTHER PARTY WOULD NOT, IN THE EVENT OF LITIGATION, SEEK TO ENFORCE THE
FOREGOING WAIVER, (B) EACH PARTY UNDERSTANDS AND HAS CONSIDERED THE IMPLICATIONS OF THIS WAIVER,
(C) EACH PARTY MAKES THIS WAIVER VOLUNTARILY AND (D) EACH PARTY HAS BEEN INDUCED TO ENTER INTO THIS
AGREEMENT BY, AMONG OTHER THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION 14.
15. Interpretation. This Agreement is intended to implement the provisions of the
Merger Agreement, is expressly subject to the terms and conditions thereof, and shall not be
construed to enhance, extend or limit the representations and warranties, rights, obligations or
remedies of any party thereunder. In case of any conflict between the terms and conditions of this
Agreement and the terms and conditions of the Merger Agreement, the terms and conditions of the
Merger Agreement shall govern.
16. Counterparts. This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original, and all of which shall constitute one and the same Agreement.
17. Headings. The heading references herein are for convenience purposes only, and
shall not be deemed to limit or affect any of the provisions hereof.
18. Severability. The provisions of this Agreement shall be deemed severable and the
invalidity or unenforceability of any provision shall not affect the validity or enforceability of
the other provisions hereof. If any provision of this Agreement, or the application thereof to any
Person or any circumstance, is invalid or unenforceable, (i) a suitable and equitable provision
shall be substituted therefor in order to carry out, so far as may be valid and enforceable, the
intent and purpose of such invalid or unenforceable provision and (ii) the remainder of this
Agreement and the application of such provision to other Persons or circumstances shall not be
affected by such invalidity or unenforceability, nor shall such invalidity or unenforceability
affect the validity or enforceability of such provision, or the application thereof, in any other
jurisdiction; provided, however, if any one or more of the provisions contained in
this Agreement shall for any reason be held to be excessively broad as to
duration, geographical scope, activity or subject, it shall be reformed by limiting and
reducing it to the minimum extent necessary, so as to be enforceable to the extent compatible with
the applicable Law.
19. No Assignment or Benefit to Third Parties. This Agreement shall be binding upon
and inure to the benefit of the Parties and their respective successors, legal representatives and
permitted assigns. No Party may assign any of its rights or delegate any of its obligations under
this Agreement without the prior written consent of each other Party, except as provided in Section
19, and any purported assignment or delegation in violation hereof shall be null and void;
provided, however, that (i) Buyer shall be permitted, without the consent of Popular, to assign any
of its rights and obligations under this Agreement to any of its Subsidiaries or Affiliates or to
any financing source for security purposes, provided that, notwithstanding any such assignment,
Buyer shall remain responsible for all of its obligations pursuant to this Agreement. Nothing in
this Agreement, express or implied, is intended to confer upon any Person other than Buyer and
their respective successors, legal representatives and permitted assigns any rights or remedies
under or by reason of this Agreement.
20. Any obligation of any Party to any other Party under this Agreement, or any of the
Ancillary Agreements, which obligation is performed, satisfied or fulfilled completely by an
Affiliate of such Party, shall be deemed to have been performed, satisfied or fulfilled by such
Party.
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IN WITNESS WHEREOF, each Party has caused this Agreement to be executed by its duly authorized
representative.
| POPULAR, INC. |
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| By: | /s/ Xxxxx X. Xxxxxxxx | |||
| Name: | Xxxxx X. Xxxxxxxx | |||
| Title: | Senior Executive Vice President | |||
| EVERTEC, INC. |
||||
| By: | /s/ Xxxxx X. Xxxxxxxx | |||
| Name: | ||||
| Title: | ||||
