EXHIBIT 4.5
TRADEMARK SECURITY AGREEMENT
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THIS TRADEMARK SECURITY AGREEMENT ("Agreement") is made as of June 18,
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1999, by and between The Majestic Star Casino, LLC, an Indiana limited liability
company ("Grantor"), and IBJ Whitehall Bank & Trust Company, as trustee under
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the Indenture described below (the "Trustee") for the "Holders" (as such term is
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defined in the Indenture defined below).
W I T N E S S E T H:
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WHEREAS, Grantor and the Trustee have entered into that certain
Indenture dated as of even date herewith (as the same may hereafter be modified,
amended, restated or supplemented from time to time, the "Indenture"), pursuant
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to which Grantor and the Trustee have agreed to certain terms for the benefit of
Grantor and the Holders; and
WHEREAS, Grantor and the Trustee have entered into that certain
Security Agreement of even date herewith (as the same may hereafter be modified,
amended, restated or supplemented from time to time, the "Security Agreement"),
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pursuant to which Grantor has granted a security interest in certain of its
assets to the Trustee for the benefit of the Trustee and the Holders; and
WHEREAS, the Holders have required Grantor to execute and deliver this
Agreement (i) in order to secure the prompt and complete payment, observance and
performance of the Secured Obligations and (ii) as a condition precedent to the
Purchase Agreement dated June 15, 1999, by and among Grantor, Capital and the
Initial Purchaser.
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Grantor agrees as follows:
1. Defined Terms.
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(a) Unless otherwise defined herein, each capitalized term used
herein that is defined in the Indenture is used with the meaning ascribed to
such term in the Indenture. Unless otherwise defined herein or in the Indenture,
each capitalized term used herein that is defined in the Security Agreement is
used with the meaning ascribed to such term in the Security Agreement.
(b) The words "hereof," "herein" and "hereunder" and words of like
import when used in this Agreement shall refer to this Agreement as a whole and
not to any particular provision of this Agreement, and section references are to
this Agreement unless otherwise specified.
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(c) All terms defined in this Agreement in the singular shall have
comparable meanings when used in the plural, and vice versa, unless otherwise
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specified.
2. Incorporation of Premises. The premises set forth above are
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incorporated into this Agreement by this reference thereto and are made a part
hereof.
3. Incorporation of the Indenture. The Indenture and the terms and
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provisions thereof are hereby incorporated herein in their entirety by this
reference thereto. In the event of any conflict or inconsistency between the
provisions of this Agreement and those of the Indenture, including, without
limitation, any conflicts or inconsistencies in any definitions herein or
therein, the provisions and definitions of the Indenture shall govern.
4. Security Interest in Trademarks. To secure the complete and
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timely payment, performance and satisfaction of all of the Secured Obligations,
Grantor hereby grants to the Trustee, for the equal and ratable benefit of the
Holders, a lien and security interest, subject only to (i) the security interest
which may be granted after the date hereof to the Lender as security for the
Credit Facility, and (ii) Permitted Liens, with power of sale to the extent
permitted by applicable law, in all of Grantor's right, title and interest in
and to the types and items of property described below, and all proceeds (as
defined in the UCC) thereof whether now owned or existing and hereafter acquired
or arising:
(i) trademarks, registered trademarks, trademark applications,
service marks, registered service marks and service xxxx applications,
including, without limitation, the trademarks, registered trademarks,
trademark applications, service marks, registered service marks and service
xxxx applications listed on Schedule A attached hereto and made a part
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hereof, and (a) all renewals thereof, (b) 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, (c) the right to xxx for past, present
and future infringements and dilutions thereof, (d) the goodwill of
Grantor's business symbolized by the foregoing and connected therewith, and
(e) all of Grantor's rights corresponding thereto throughout the world (all
of the foregoing trademarks, registered trademarks and trademark
applications, and service marks, registered service marks and service xxxx
applications, together with the items described in clauses (a)-(e) in this
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paragraph 4(i), are sometimes hereinafter individually and/or collectively
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referred to as the "Trademarks"); and
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(ii) rights under and interests in any trademark license agreements
or service xxxx license agreements with any other party, whether Grantor is
a licensee or licensor under any such license agreement, including, without
limitation, those trademark license agreements and service xxxx license
agreements listed on Schedule B attached hereto and made a part hereof,
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together with any goodwill connected with and symbolized by any such
trademark license agreements or service xxxx license agreements (all of the
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foregoing are hereinafter referred to collectively as the "Licenses").
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Notwithstanding the foregoing provisions of this Section 4, the Licenses
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shall not include any license agreement in effect as of the date hereof
which by its terms prohibits the grant of the security contemplated by this
Agreement; provided, however, that upon the termination of such
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prohibitions for any reason whatsoever, the provisions of this Section 4
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shall be deemed to apply thereto automatically, and such license agreement
shall constitute a License subject to the lien and security interest
granted herein.
5. Future Agreements. As long as no Event of Default has occurred
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and is continuing, nothing set forth herein or in any other Security Document is
intended or shall be construed to prevent the Grantor from entering into license
agreements pertaining to the Trademarks; provided that Grantor will not, without
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the Trustee's prior written consent, enter into any agreement, including,
without limitation, any license agreement, which is inconsistent with this
Agreement, and 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, including,
without limitation, licensees, or fail to take any action, which would in any
respect affect the validity or enforcement of the rights transferred to the
Trustee under this Agreement or the rights associated with the Trademarks or
Licenses.
6. New Trademarks and Licenses. Grantor represents and warrants
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that as of the date hereof, (a) the Trademarks listed on Schedule A include all
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of the trademarks, registered trademarks, trademark applications, service marks,
registered service marks and service xxxx applications now owned or held by
Grantor, (b) the Licenses listed on Schedule B include all of the trademark
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license agreements and service xxxx license agreements under which Grantor is
the licensee or licensor and (c) no liens, claims or security interests in such
Trademarks and Licenses have been granted by Grantor to any Person (other than
the Trustee) which remain valid and effective. If, prior to the termination of
this Agreement, Grantor shall (i) obtain rights to any new or additional
trademarks, registered trademarks, trademark applications, service marks,
registered service marks or service xxxx applications, (ii) become entitled to
the benefit of any new or additional trademarks, registered trademarks,
trademark applications, trademark licenses, trademark license renewals, service
marks, registered service marks, service xxxx applications, service xxxx
licenses or service xxxx license renewals whether as licensee or licensor, or
(iii) enter into any new trademark license agreement or service xxxx license
agreement, the provisions of paragraph 4 above shall automatically apply
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thereto, and the same shall be subject to the security interest granted herein.
Grantor shall give to the Trustee written notice of events described in clauses
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(i), (ii) and (iii) of the preceding sentence promptly after the occurrence
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thereof, but in any event not less frequently than on a quarterly basis.
Promptly after the occurrence of each such event Grantor shall (and Trustee is
hereby authorized to, at Grantor's expense, but is not required to) modify this
Agreement unilaterally (i) by amending Schedule A to include new and additional
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trademarks, registered trademarks, trademark applications, service marks,
registered service marks and service xxxx applications and by amending Schedule
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B to include additional trademark license agreements and service xxxx license
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agreements, which are Trademarks or Licenses under paragraph 4 above or under
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this paragraph 6, and (ii) by filing, in
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addition to and not in substitution for this Agreement, a duplicate original of
this Agreement identifying on Schedule A or B thereto, as the case may be, such
new or additional trademarks, registered trademarks, trademark applications,
service marks, registered service marks and service xxxx applications, and
trademark license agreements and service xxxx license agreements. The party
making a filing pursuant to the preceding sentence shall promptly provide a copy
of it to the other party.
7. Royalties. Grantor hereby agrees that the use by the Trustee of
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the Trademarks and Licenses as authorized hereunder in connection with the
Trustee's exercise of its rights and remedies under paragraph 15 or pursuant to
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the Security Agreement or any other Security Document shall be coextensive with
Grantor's rights thereunder and with respect thereto and without any liability
for royalties or other related charges from the Trustee or the Holders to
Grantor.
8. Right to Inspect; Further Assignments and Security Interests.
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The Trustee may at all reasonable times (and at any time when an Event of
Default exists) have access to, examine, audit, make copies (at Grantor's
expense) and extracts from and inspect Grantor's premises and examine Grantor's
books, records and operations relating to the Trademarks and Licenses; provided,
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that in conducting such inspections and examinations, the Trustee shall use
reasonable efforts not to disturb unnecessarily the conduct of Grantor's
ordinary business operations. Grantor agrees (i) not to sell or assign its
respective interests in, or grant any license under, the Trademarks or the
Licenses without the prior and express written consent of the Trustee, (ii) to
maintain the quality of such products as of the date hereof, and (iii) not to
change the quality of such products in any material respect without the
Trustee's prior and express written consent.
9. Nature and Continuation of the Trustee's Security Interest;
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Termination of the Trustee's Security Interest. This Agreement is made for
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collateral security purposes only. This Agreement shall create a continuing
security interest in the Trademarks and Licenses and shall terminate only when
the Secured Obligations (other than contingent indemnity obligations) have been
paid in full in cash and the Indenture and the Security Agreement have been
terminated. When this Agreement has terminated, the Trustee shall promptly
execute and deliver to Grantor, at Grantor's expense, all termination statements
and other instruments as may be necessary or proper to terminate the Trustee's
security interest in the Trademarks and the Licenses, subject to any disposition
thereof which may have been made by the Trustee pursuant to this Agreement or
the Security Agreement.
10. Duties of Grantor. Grantor shall have the duty, to the extent
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desirable in the normal conduct of Grantor's business, to: (a) prosecute
diligently any trademark application or service xxxx application that is part of
the Trademarks pending as of the date hereof or hereafter until the termination
of this Agreement, and (b) make application for trademarks or service marks.
Grantor further agrees to use its best efforts to maintain in full force and
effect the Trademarks and the Licenses that are or shall be necessary in the
operation of Grantor's business.
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Any expenses incurred in connection with the foregoing shall be borne by
Grantor. Neither the Trustee nor any of the Holders shall have any duty with
respect to the Trademarks and Licenses. Without limiting the generality of the
foregoing, neither the Trustee nor any of the Holders shall be under any
obligation to take any steps necessary to preserve rights in the Trademarks or
Licenses against any other parties, but the Trustee may do so at its option from
and after the occurrence of an Event of Default, and all expenses incurred in
connection therewith shall be for the sole account of Grantor and shall be added
to the Secured Obligations secured hereby.
11. The Trustee's Right to Xxx. From and after the occurrence of an
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Event of Default, the Trustee shall have the right, but shall not be obligated,
to bring suit in its own name to enforce the Trademarks and the Licenses and, if
the Trustee shall commence any such suit, Grantor shall, at the request of the
Trustee, do any and all lawful acts and execute any and all proper documents
required by the Trustee in aid of such enforcement. Grantor shall, upon demand,
promptly reimburse the Trustee for all costs and expenses incurred by the
Trustee in the exercise of its rights under this paragraph 11 (including,
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without limitation, reasonable fees and expenses of attorneys and paralegals for
the Trustee).
12. Waivers. The Trustee's failure, at any time or times hereafter,
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to require strict performance by Grantor of any provision of this Agreement
shall not waive, affect or diminish any right of the Trustee thereafter to
demand strict compliance and performance therewith nor shall any course of
dealing between Grantor and the Trustee have such effect. No single or partial
exercise of any right hereunder shall preclude any other or further exercise
thereof or the exercise of any other right.
13. Severability Whenever possible, each provision of this Agreement
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shall be interpreted in such manner as to be effective and valid under
applicable law, but 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 hereof, 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.
14. Amendments, Etc. Except as otherwise provided by the Indenture,
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the consent of the Holders of at least a majority in principal amount of the
Notes then outstanding (including consents obtained in connection with a tender
offer or exchange offer for Notes) shall be required to amend, modify,
supplement, or waive any provision of this Agreement. Any such waiver or
consent shall be effective only in the specific instance and for the specific
purpose for which given.
15. Cumulative Remedies; Power of Attorney. Grantor hereby
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irrevocably designates, constitutes and appoints the Trustee (and all Persons
designated by the Trustee in its sole and absolute discretion) as Grantor's true
and lawful attorney-in-fact, and authorizes the Trustee and any of the Trustee's
designees, in Grantor's or the Trustee's name, to take any action
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and execute any instrument which the Trustee may deem necessary or advisable to
accomplish the purposes of this Agreement, including, without limitation, from
and after the occurrence of an Event of Default and the giving by the Trustee of
notice to Grantor of the Trustee's intention to enforce its rights and claims
against Grantor, to (i) endorse Grantor's name on all applications, documents,
papers and instruments necessary or desirable for the Trustee in the use of the
Trademarks or the Licenses, (ii) assign, pledge, convey or otherwise transfer
title in or dispose of the Trademarks or the Licenses to anyone on commercially
reasonable terms, (iii) grant or issue any exclusive or nonexclusive license
under the Trademarks or, to the extent permitted, under the Licenses, to anyone
on commercially reasonable terms, and (iv) take any other actions with respect
to the Trademarks or the Licenses as the Trustee deems in its own or the
Holders' best interest. 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 all of the Secured
Obligations shall have been paid in full in cash and the Security Agreement and
the Indenture shall have been terminated. Grantor acknowledges and agrees that
this Agreement is not intended to limit or restrict in any way the rights and
remedies of the Trustee or the other Holders under the Security Agreement or the
Indenture, but rather is intended to facilitate the exercise of such rights and
remedies.
The Trustee 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 UCC. Upon the
occurrence of an Event of Default and the election by the Trustee to exercise
any of its remedies under the UCC with respect to the Trademarks and Licenses,
Grantor agrees, at the demand of the Trustee, to assign, convey and otherwise
transfer title in and to the Trademarks and the Licenses and the goodwill
associated therewith to the Trustee or any transferee of the Trustee and to
execute and deliver to the Trustee or any such transferee all such agreements,
documents and instruments as may be necessary, in the Trustee's sole discretion,
to effect such assignment, conveyance and transfer. All of the Trustee's rights
and remedies with respect to the Trademarks and the Licenses, whether
established hereby, by the Security Agreement, 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, but subject in all
respects to the Intercreditor Agreement, it is hereby expressly agreed that upon
the occurrence of an Event of Default, the Trustee may exercise any of the
rights and remedies provided in this Agreement, the Indenture and any of the
other Security Documents. Grantor agrees that any notification of intended
disposition of any of the Trademarks and Licenses required by law shall be
deemed reasonably and properly given if given at least five (5) Business Days
before such disposition; provided, however, that the Trustee may give any
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shorter notice that is commercially reasonable under the circumstances.
16. Intercreditor Arrangement. The parties hereto acknowledge and
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agree, for the benefit of the lenders under the Credit Facility, that, during
any period that obligations or commitments are outstanding under the Credit
Facility, the exercise of the rights and remedies of the Trustee hereunder are
or will be subject to the terms of the Intercreditor Agreement. In the
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event of any inconsistency between the terms hereof and the Intercreditor
Agreement, the Intercreditor Agreement shall control.
17. Successors and Assigns. This Agreement shall be binding upon
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Grantor and its successors and assigns, and shall inure to the benefit of each
of the Holders and its nominees, successors and assigns. Grantor's successors
and assigns shall include, without limitation, a receiver, trustee or debtor-in-
possession of or for Grantor; provided, however, that Grantor shall not
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voluntarily assign or transfer its rights or obligations hereunder without the
Trustee's prior written consent.
18. Governing Law. This Agreement shall be construed and enforced
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and the rights and duties of the parties shall be governed by in all respects in
accordance with the internal laws (as opposed to conflict of laws provisions) of
the State of Indiana.
19. Notices. All notices or other communications hereunder shall be
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given in the manner prescribed in the Indenture for the giving of notices.
20. Section Titles. The section titles herein are for convenience of
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reference only, and shall not affect in any way the interpretation of any of the
provisions hereof.
21. Execution in Counterparts. This Agreement may be executed in any
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number of counterparts and by different parties hereto in separate counterparts,
each of which when so executed shall be deemed to be an original and all of
which taken together shall constitute one and the same agreement.
22. Merger. This Agreement represents the final agreement of the
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Grantor and the Trustee with respect to the matters contained herein and may not
be contradicted by evidence of prior or contemporaneous agreements, or
subsequent oral agreements, between the Grantor and the Trustee or any Holder.
23. Gaming Laws.
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(a) The Trustee acknowledges, understands and agrees that the Gaming
Laws may impose certain licensing or transaction approval requirements prior to
the exercise of the rights and remedies granted to it under the Agreement with
respect to the Trademarks subject to the Gaming Laws.
(b) If any consent under the Gaming Laws is required in connection
with the taking of any of the actions which may be taken by the Trustee in the
exercise of its rights hereunder, then Grantor agrees to use its best efforts to
secure such consent and to cooperate with the Trustee in obtaining any such
consent. Upon the occurrence and during the continuation of any Event of
Default, Grantor shall promptly execute and/or cause the execution of all
applications, certificates, instruments, and other documents and papers that the
Trustee may be
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required to file in order to obtain any necessary approvals under the Gaming
Laws, and if Grantor fails or refuses to execute such documents, the Trustee or
the clerk of the court with jurisdiction may execute such documents on behalf of
Grantor.
(c) Notwithstanding any other provision of this Agreement to the
contrary, nothing in this Agreement shall (i) effect any transfer of any
ownership interest (within the meaning of 68 Indiana Administrative Code 5) in
Grantor, or (ii) effect any transfer, sale, purchase, lease or hypothecation of,
or any borrowing or loaning of money against, or any establishment of any voting
trust agreement or other similar agreement with respect to (all within the
meaning of Indiana Code 4-33-4-21), any certificate of suitability or any
owner's license heretofore or hereafter issued to any person, including Grantor,
under any of the Gaming Laws, including Indiana Code 4-33.
24. Trust Indenture Act. If any provision of this Agreement
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conflicts with any provision of the Trust Indenture Act, the provisions of the
Trust Indenture Act shall control.
25. Appointment of Collateral Agent. The Trustee may, solely at its
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discretion, appoint a collateral agent to enforce the rights and remedies
available to the Trustee under this Agreement.
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IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the day and year first above written.
THE MAJESTIC STAR CASINO, LLC
By: Xxxxxx Development, Inc., its manager
By: ______________________________________
Name: ____________________________________
Title: ___________________________________
Accepted and agreed to as of the day and year
first above written.
IBJ WHITEHALL BANK & TRUST COMPANY,
as Trustee
By: ______________________________________
Name: ____________________________________
Title: ___________________________________
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STATE OF __________________ )
) SS
COUNTY OF _________________ )
The foregoing Trademark Security Agreement was acknowledged before me
this _____ day of June, 1999, by ___________________, the _____________________
of Xxxxxx Development, Inc., the manager of The Majestic Star Casino, LLC, an
Indiana limited liability company, on behalf of such limited liability company.
_____________________________________
Notary Public
_____________________________________
My commission expires: ______________
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STATE OF ___________________ )
) SS
COUNTY OF __________________ )
The foregoing Trademark Security Agreement was acknowledged before me
this _____ day of June, 1999, by ____________________, the ____________________
of IBJ Whitehall Bank & Trust Company, on behalf of such bank.
_____________________________________
Notary Public
_____________________________________
My commission expires: ______________
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Schedule A
to
Trademark Security Agreement
Dated as of June 18, 1999
Trademarks
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None
Service Marks
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Servicemark Date of Registration Registration No.
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MAJESTIC STAR May 12, 1998 2,157,290
Trademark and Service Xxxx Applications
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None, except:
Servicemark Application Date Serial No.
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THE MAJESTIC STAR
CASINO M
(and design) 2/1/96 75/052416
Schedule B
to
Trademark Security Agreement
Dated as of June 18, 1999
License Agreements
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None
