EXHIBIT 10.3.3
PATENTS, TRADEMARKS, COPYRIGHTS
AND LICENSES SECURITY AGREEMENT
This Patents, Trademarks, Copyrights, and Licenses Security Agreement
(the "Agreement") is made as of the 6th day of December 2002, by Odimo
Incorporated, a Delaware corporation, with its chief executive office located at
0000 X.X. 0xx Xxxxxx, Xxxxxxx, XX 00000, Odimo Acquisition Corp., a Delaware
corporation, with its chief executive office located at 0000 X.X. 0xx Xxxxxx,
Xxxxxxx, XX 00000 (collectively, "Buyer"), and delivered to Xxxxxxx.xxx, Inc.
("Seller"), a Delaware corporation, having a mailing address of 0000 Xxxxx
Xxxxxx Xxxx xx Xxxxxxx, Xx 00000.
BACKGROUND
A. This Agreement is being executed contemporaneously with a certain
Asset Purchase Agreement, Subordinated Secured Promissory Note (the "Note") and
Security Agreement, all of even date herewith, by and between Buyer and Seller
(as may hereafter be supplemented, restated, amended, superseded, replaced, or
restated from time to time, collectively the "Loan Agreement"), under which
Buyer is granting Seller, a lien on and security interest in certain of the
assets of Buyer associated with or relating to products leased or sold or
services provided under Buyer's patents, trademarks (and the goodwill associated
therewith) and copyrights, and under which Seller is entitled to foreclose or
otherwise deal with such assets, patents, patent rights, patent applications,
goodwill, trademarks, trademark applications, service marks, service xxxx
applications, trade names, copyrights, and copyright applications 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. Buyer has adopted, used and is using (or has filed applications
and/or registrations of) the patents, patent rights, and patent applications
(collectively, the "Patents"); trademarks, service marks, trade names and
service trade names (collectively, "Trademarks"); copyrights, and copyright
applications and licenses (collectively, the "Copyrights"); and goodwill
associated therewith ("Goodwill") listed on SCHEDULE A attached hereto and made
part hereof (all such Patents, Trademarks, Copyrights or Goodwill hereinafter
referred to as the "Assets").
C. Pursuant to the Loan Agreement, Seller is acquiring a lien on, and
security interest in, the Assets and the registration thereof, together with all
the goodwill of Buyer associated therewith and represented thereby, as security
for the Note 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 and United States Copyright Office,
respectively.
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 Note, Buyer grants a
lien and security interest to Seller in all of its present and future right,
title and interest in and to the Assets, together with all the goodwill of Buyer
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, Buyer hereby
covenants and agrees to maintain the Assets in full force and effect until the
Note is indefeasibly paid and satisfied in full and the Loan Agreement is
terminated.
3. Buyer represents, warrants and covenants that:
(a) The Assets are subsisting and have not been adjudged
invalid or unenforceable;
(b) Each of the Assets is valid and enforceable;
(c) Buyer is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Assets, and each of
the Assets is free and clear of any liens, claims, charges and encumbrances,
including, without limitation, pledges, assignments, licenses and covenants by
Buyer not to xxx third persons;
(d) Buyer has the unqualified right, power and authority to
enter into this Agreement and perform its terms;
(e) Buyer has complied with, and will continue for the
duration of this Agreement to comply with, the requirements set forth in 15
U.S.C.ss.ss.1051-1127, 17 U.S.C.ss.101, ET SEQ., 35 U.S.C.ss.101 ET SEQ. and any
other applicable statutes, rules and regulations in connection with its use of
the Assets; and
(f) 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 Buyer. If, before the Note shall have been indefeasibly paid and satisfied in
full and the Loan Agreement shall have been terminated, Buyer shall (i) obtain
rights to any new registered patentable inventions, trademarks, trademark
registrations, trade names, or copyrights or licenses, or (ii) become entitled
to the benefit of any registered patent or trademark application, trademark,
trademark registration, copyright or copyright registration or application or
license renewal, or patent for any reissue, division, continuation, renewal,
extension, or continuation-in-part of any Patent or any improvement on any
Patent, the provisions of this Agreement shall automatically apply thereto and
such patent or trademark application, trademark, trademark registration,
copyright or copyright registration or application or license renewal, or patent
for any reissue, division, continuation, renewal, extension, or
continuation-in-part of any Patent or any improvement on any Patent shall be
deemed part of the Assets. Buyer shall give Seller prompt written notice thereof
along with an amended SCHEDULE A to the extent required by the Loan Agreement.
2
4. Buyer further covenants that until the Note has 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 Buyer's obligations under this Agreement,
except for agency, co-marketing and co-branding agreements.
5. So long as an Event of Default has not occurred under the Loan
Agreement, Buyer shall continue to have the exclusive right to use the Assets
and Seller 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. Buyer 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,
Buyer hereby covenants and agrees that Seller, 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 upon
the Assets covered hereby. During such time as an Event of Default exists under
the Loan Agreement, Buyer hereby authorizes and empowers Seller, its successors
and assigns, and any officer or Seller of Seller as Seller may select, in its
exclusive discretion, as Buyer's true and lawful attorney-in-fact, with the
power to endorse Buyer's name on all applications, assignments, documents,
papers and instruments necessary for Seller, to use the Assets or to grant or
issue any exclusive or non-exclusive license under the Assets to anyone else, or
necessary for Seller to assign, pledge, convey or otherwise transfer title in or
dispose of the Assets to anyone else including, without limitation, the power to
execute an assignment in the form attached hereto as EXHIBIT 1. Buyer hereby
ratifies all that such attorney shall lawfully do or cause to be done by virtue
hereof and in accordance with the terms hereof, except for the gross negligence
or willful misconduct of such attorney. This power of attorney shall be
irrevocable for the life of this Agreement, the Loan Documents, and until the
Note is indefeasibly paid and satisfied in full and the Loan Agreement is
terminated.
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 Seller 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 Buyer's performance of all of the obligations under the Loan
Documents and full and unconditional satisfaction of the Note, or as otherwise
provided in the Loan Agreement, Seller shall execute and deliver to Buyer all
documents reasonably necessary to terminate Seller's security interest in the
Assets.
11. Any and all reasonable fees, costs and expenses, of whatever kind
or nature, including the reasonable attorneys' fees and legal expenses incurred
by Seller in connection with the preparation of this Agreement and all other
documents relating hereto and the consummation of this
3
transaction, the filing or recording of any documents (including all taxes in
connection therewith) in public offices, the payment or discharge of any taxes,
reasonable counsel fees, maintenance fees, encumbrances or costs otherwise
incurred in protecting, maintaining, preserving the Assets, or in defending or
prosecuting any actions or proceedings arising out of or related to the Assets,
or defending, protecting or enforcing Seller's rights hereunder, in each case in
accordance with the terms of this Agreement, shall be borne and paid by Buyer on
demand by Seller and until so paid shall be added to the principal amount of the
Note and shall bear interest at the otherwise applicable rate of interest
prescribed in the Loan Agreement. Notwithstanding the foregoing, Buyer's
liability for Seller'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, Buyer shall have the
duty to prosecute diligently any trademark, patent and copyright application
with respect to the Assets pending as of the date of this Agreement or
thereafter, until the Note 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 Seller, Buyer shall, if in the best interest
of the business of Buyer, make federal application on registrable but
unregistered patents, trademarks, copyrights or licenses belonging to Buyer. Any
expenses incurred in connection with such applications shall be borne by Buyer.
13. Buyer shall have the right to bring suit in its own name to enforce
the Assets, in which event Seller may, if Buyer reasonably deems it necessary,
be joined as a nominal party to such suit if Seller shall have been satisfied,
in its sole discretion, that Seller is not thereby incurring any risk of
liability because of such joinder. Buyer shall promptly, upon demand, reimburse
and indemnify Seller for all damages, reasonable costs and expenses, including
reasonable attorneys' fees, incurred by Seller in the fulfillment of the
provisions of this paragraph.
14. During the existence of an Event of Default under the Loan
Agreement, Seller may, without any obligation to do so, complete any obligation
of Buyer hereunder, in Buyer's name or in Seller's name, but at Buyer's expense,
and Buyer hereby agrees to reimburse Seller in full for all costs and expenses,
including reasonable attorneys' fees, incurred by Seller in protecting,
defending and maintaining the Assets.
15. No course of dealing among Buyer and Seller nor any failure to
exercise, nor any delay in exercising, on the part of Seller, any right, power
or privilege hereunder, shall operate as a waiver thereof, and all of Seller's
rights and remedies with respect to the Assets, whether established hereby or by
the Loan Documents, or by any other future agreements between Buyer and Seller
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.
4
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. BUYER AND SELLER 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.
IN WITNESS WHEREOF, the parties hereto have executed this Patents,
Trademarks, Licenses and Copyrights Security Agreement the day and year first
above written.
ODIMO INCORPORATED
By: /s/ Xxxx Xxxxxx
-------------------------------------
Name: Xxxx Xxxxxx
Title: President
ODIMO ACQUISITION CORP.
By: /s/ Xxxx Xxxxxx
-------------------------------------
Name: Xxxx Xxxxxx
Title: President
Approved and Accepted:
XXXXXXX.XXX, INC.
By: /s/ Xxxxxxx Xxxxx
------------------------------
Name: Xxxxxxx Xxxxx
Title: President
5
