INTELLECTUAL PROPERTY ASSIGNMENT
EXHIBIT
10.6
THIS INTELLECTUAL PROPERTY ASSIGNMENT
(“Assignment”) is made and entered into as of July 19, 2010 (the “Effective
Date”), by and between GlobalOptions Group, Inc., a Delaware corporation,
GlobalOptions, Inc, a Delaware corporation (together, the “Assignor”) and
GlobalOptions Services, Inc., a Delaware corporation (“Assignee”).
WHEREAS, Assignor and Assignee
have entered into that certain Asset Purchase Agreement, dated as of June 11,
2010 (the “APA”), pursuant to which Assignor has agreed, inter alia, to assign to
Assignee certain Intellectual Property (as defined below); and
WHEREAS, Assignee wishes to
acquire, and Assignor wishes to assign to Assignee, all of Assignor’s right,
title and interest in and to the Intellectual Property.
NOW, THEREFORE, in
consideration of the premises and the mutual representations, warranties,
covenants and agreements set forth in this Assignment and in the APA, the
parties agree as follows:
1. Subject
to the terms and conditions of the APA and this Assignment, Assignor hereby
sells, transfers, assigns, conveys and delivers to Assignee, its successors and
assigns all right, title and interest in and to all of the intellectual property
set forth on Schedule A attached hereto (collectively, the “Intellectual
Property”) throughout the world and all Letters Patent, trademarks, and
copyrights, if any, that are or may be granted thereon or embodied therein, and
any and all applications, registrations, renewals and extensions of any of the
Intellectual Property, together with the goodwill associated with and/or
symbolized by the Intellectual Property and all common law rights in and to the
Intellectual Property and the right to obtain future registrations thereof, and
all rights, claims and privileges pertaining to the Intellectual Property,
including, without limitation, all proceeds thereof and all causes of action,
claims and demands and other rights for, or arising from the Intellectual
Property, including, without limitation, the right to prosecute and maintain
registrations and applications for the Intellectual Property and the right to
xxx and recover damages for past, present and future infringement of the
Intellectual Property in the United States and in any country or countries
foreign to the United States.
2. Assignor
also assigns to Assignee, its successors and assigns all of Assignor’s rights
and obligations under License Agreement by and between GlobalOptions, Inc. and
Xxxx Group Holdings, LLC, Exhibit G to the Asset Purchase Agreement, dated May
13, 2010, by and among GlobalOptions Group, Inc., GlobalOptions, Inc. and Xxxx
Group Holdings, LLC, an approved form of which is attached as Schedule B,
pertaining to the Intellectual Property (the “License Agreement”), and should
the License Agreement be approved and finalized, Assignee hereby accepts such
assignment and Assignor’s obligations thereunder.
3. Assignor
agrees to and shall, without further consideration, execute and deliver, at the
request of Assignee from time to time, all papers, instruments and assignments,
and perform any other reasonable acts Assignee may require from time to time to
effect fully this Assignment and vest in Assignee all of Assignor’s right, title
and interest in and to the Intellectual Property, including, without limitation,
all documents necessary to record in the name of Assignee the assignment of the
Intellectual Property with the United States Patent and Trademark Office and the
United States Copyright Office (as applicable) and, with respect to any foreign
rights included in or that may be applicable to the Intellectual Property, with
any other applicable foreign or international office or registrar.
4. This
Assignment shall be binding upon and inure to the benefit of the parties hereto
and their respective successors and permitted assigns.
5. This
Assignment may be executed in counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same
instrument.
6. To
the extent any provision herein is inconsistent with the APA, the provisions of
this Assignment shall control.
[Signature page
follows]
IN WITNESS WHEREOF, Assignor
and Assignee have caused this Assignment to be signed and executed by the
undersigned officers thereunto duly authorized this 19th day of
July, 2010.
|
GLOBALOPTIONS
SERVICES, INC.
|
||||
|
By:
|
/s/ Xxxxxx X. Xxxxxxxx,
Ph.D.
|
By:
|
/s/ Xxxxx Xxxxxx
|
|
|
Name:
|
Xxxxxx
X. Xxxxxxxx, Ph.D.
|
Name:
|
Xxxxx
Xxxxxx
|
|
|
Title:
|
Chief
Executive Officer
|
Title:
|
President
and Chief Executive Officer
|
|
|
GLOBALOPTIONS,
INC.
|
||||
|
By:
|
/s/ Xxxxxx X. Xxxxxxxx,
Ph.D.
|
|||
|
Name:
|
Xxxxxx
X. Xxxxxxxx, Ph.D.
|
|||
|
Title:
|
Chief
Executive Officer
|
|||
State of
District
of
Columbia
City of
Washington
This
15th day of July,
2010, _Harvey Schiller_ personally came before me, Xxxx Xxxx Xxxxx
, a Notary Public for said County and State, who being by me duly sworn,
says that he is _CEO_ of GlobalOptions Group, Inc., a Delaware corporation, and
that said writing was signed and sealed by him on behalf of said corporation by
its authority duly given. The said _Harvey Schiller, CEO_
acknowledged the said writing to be the free act and deed of the
corporation.
WITNESS
my hand and notarial seal.
/s/ Xxxx Xxxx
Xxxxx
Notary
Public
My
Commission Expires:
10/14/2014
[SEAL]
State of
District
of
Columbia
City of
Washington
This
15th day of July,
2010, _Harvey Schiller_ personally came before me, Xxxx Xxxx Xxxxx
, a Notary Public for said County and State, who being by me duly sworn,
says that he is _CEO_ of GlobalOptions Group, Inc., a Delaware corporation, and
that said writing was signed and sealed by him on behalf of said corporation by
its authority duly given. The said _Harvey Schiller, CEO_
acknowledged the said writing to be the free act and deed of the
corporation.
WITNESS
my hand and notarial seal.
/s/ Xxxx Xxxx
Xxxxx
Notary
Public
My
Commission Expires:
10/14/2014
[SEAL]
SCHEDULE
A
All right
title and interest in all trademarks, copyrights, trade secrets
and patents to the GlobalTrak Software and Code GlobalTrak and
related ColdFusion code Standard '7.0, 8.0 subject to GlobalTrak license granted
to Xxxx Group, Inc., a form of which is attached hereto to Schedule
B.
All right
title and interest in all trademarks, copyrights, trade secrets and patents to
the Secure Source Forensics IT software.
Domain
Names
XXXXXXXXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXX.XXX
XXXXXX.XXX
XXXXXXX.XXX
XXXXXX.XXX
XXXXXXXXX.XXX
XXXXXXX.XXX
XXXXXX.XXX
XXXXXXXXXXXXXXXXXXXXX.XXX
XXXXXXXX.XXX
XXXXX.XXX
XXXXXXXXXX.XXX
XXXXXXXXXX.XXX
XXXXXXXXXX.XXX
XXXXXXXXX.XXX
XXXXXXXXX.XXX
XXXXXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXXXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXXX.XXX
XXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXXXXXXXX.XXX
XXXXXXXXXXXXXXXXXXX.XXX
XXXXXXXXXXXXX.XXX
XXXXXX.XXX
XXXXXXXXXXXX.XXX
Trademarks
and Tradenames
Executive
Forum
GlobalTrak
REGISTRATION:
|
TRADEMARK
|
REGISTRATION
NO.
|
INTERNATIONAL
CLASS
|
COUNTRY
|
|||
|
GLOBALTRAK
|
|
3483323
|
|
000
|
|
Xxxxxx
Xxxxxx
|
SCHEDULE
B
License
Agreement by and between GlobalOptions, Inc. and Xxxx Group Holdings,
LLC
