INTELLECTUAL PROPERTY SECURITY AGREEMENT
This
INTELLECTUAL PROPERTY SECURITY AGREEMENT (as from time to time amended,
restated, supplemented or otherwise modified, the “Agreement”), dated as
of November 30, 2007, is made by NewMarket Technology, Inc.
(“NewMarket”), IP Global Voice, Inc. (“IP Global”), Netsco, Inc.
(“Netsco”), NewMarket China, Inc. (“NewMarket China”), NewMarket
Broadband, Inc. (“NewMarket Broadband”) and NewMarket Intellectual
Property, Inc. (“NewMarket IP” and together with NewMarket, IP Global,
Netsco, NewMarket China, NewMarket Broadband and NewMarket IP, the
“Grantors” and each, a “Grantor”) in favor of LV Administrative
Services, Inc., a Delaware corporation, as administrative and collateral agent
for the Lenders (as defined in the Security Agreement referred to below) (the
“Agent”).
WHEREAS,
pursuant to that certain Security Agreement dated as of the date hereof (as
amended, restated, supplemented and/or otherwise modified from time to time,
the
“Security Agreement”) by and among Grantors, the Lenders party thereto
from time to time and the Agent, the Lenders have agreed to provide financial
accommodations to Grantors; and
WHEREAS,
Creditor Parties are willing to enter into the Security Agreement only upon
the
condition, among others, that Grantors shall have executed and delivered to
Agent this Agreement.
NOW,
THEREFORE, in consideration of the premises and mutual covenants herein
contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, each Grantor hereby agrees as
follows:
Section
1. DEFINED
TERMS; RULES OF CONSTRUCTION.
|
(a)
|
Capitalized
terms used in this Agreement but not otherwise defined herein have
the
meanings given to them in the Security
Agreement.
|
|
(b)
|
When
used herein the following terms shall have the following
meanings:
|
“Copyrights”
means all copyrights arising or protected under the laws of the United States,
any other country or any political subdivision thereof, whether registered,
or
unregistered and whether published or unpublished, all registrations and
recordings therefor, and all applications in connection therewith, including
but
not limited to all registrations, recordings and applications in the United
States Copyright Office, any State, or any similar office or agency of the
United States, any State, any other country or political subdivision, or any
other registry.
“Copyright
Licenses” means all agreements pursuant to which any Grantor is licensor or
licensee, granting any right under any Copyright, including but not limited
to,
rights to manufacture, reproduce, display, distribute, perform, modify or
otherwise exploit, and sell materials embodying or derived from, any Copyrighted
work.
“Intellectual
Property” means any and all of the following, throughout the
world: Patents, Trademarks, Copyrights, mask works, designs, trade
secrets, information, databases, rights of publicity, software, and any other
proprietary rights and processes; any licenses to use any of the foregoing
owned
by a third party including Patent Licenses, Trademark Licenses and Copyright
Licenses; and registrations, applications and recordings pertaining to any
of
the foregoing on any registry;
“PTO”
means the United States Patent and Trademark Office and any successor office
or
agency.
“Patents”
means all patents issued by the PTO, any similar office or agency of the United
States, any State, or any other country or political subdivision or other
registry, all recordings thereof, and all applications therefor.
“Patent
Licenses” means all agreements pursuant to which any Grantor is licensor or
licensee, granting any right to manufacture, have made, import, use, or sell
any
invention covered in whole or in part by a Patent.
“Trademarks”
means all trademarks, trade names, corporate names, business names, fictitious
business names, Internet Domain Names, trade styles, services marks, logos
and
other source or business identifiers, arising or protected under the laws of
the
United States, any State any other country or political subdivision thereof,
whether registered or unregistered, and all goodwill connected with the use
of
and symbolized thereby, all registrations and recordings thereof, and all
applications therefor, in the PTO, in any similar office or agency of the United
States, any State, any other country or political subdivision, any Internet
Domain Name registrar, or any other registry.
“Trademark
Licenses” mean all agreements pursuant to which any Grantor is licensor or
licensee, granting any right to use a Trademark.
|
(c)
|
All
Schedules, Addenda, Annexes and Exhibits hereto or expressly identified
to
this Agreement are incorporated herein by reference and taken together
with this Agreement constitute but a single agreement. The
words “herein”, “hereof” and “hereunder” or other words of similar import
refer to this Agreement as a whole, including the Exhibits, Addenda,
Annexes and Schedules thereto, as the same may be from time to time
amended, modified, restated or supplemented, and not to any particular
section, subsection or clause contained in this
Agreement. Wherever from the context it appears appropriate,
each term stated in either the singular or plural shall include the
singular and the plural, and pronouns stated in the masculine, feminine
or
neuter gender shall include the masculine, the feminine and the
neuter. The term “or” is not exclusive. The term
“including” (or any form thereof) shall not be limiting or
exclusive. All references to statutes and related regulations
shall include any amendments of same and any successor statutes and
regulations. All references in this Agreement or in the
Schedules, Addenda, Annexes and Exhibits to this Agreement to sections,
schedules, disclosure schedules, exhibits, and attachments shall
refer to
the corresponding sections, schedules, disclosure schedules, exhibits,
and
attachments of or to this Agreement. All references to any
instruments or agreements, including references to any of this Agreement,
the Security Agreement or the Ancillary Agreements shall include
any and
all modifications or amendments thereto and any and all extensions
or
renewals thereof.
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|
(d)
|
The
parties acknowledge that each party and its counsel have reviewed
this
Agreement and that the normal rule of construction to the effect
that any
ambiguities are to be resolved against the drafting party shall not
be
employed in the interpretation of this Agreement or any amendments,
schedules or exhibits thereto.
|
|
(e)
|
In
the event of an irreconcilable conflict between the terms of this
Agreement and the terms of the Security Agreement, the Agent shall
have
the right to determine which Agreement shall govern with respect
to each
such conflict.
|
2
Section
2. GRANT
OF SECURITY INTEREST IN INTELLECTUAL PROPERTY COLLATERAL. To
secure the prompt payment to the Creditor Parties of the Obligations of the
Grantors now or hereafter existing from time to time, each Grantor hereby
pledges and grants to the Agent, for the ratable benefit of the Creditor
Parties, a continuing security interest in and Lien upon all of such Grantor’s
right, title and interest in, to and under the following, whether presently
existing or hereafter created or acquired (collectively, the
“Collateral”):
|
(a)
|
Trademarks
and Trademark Licenses to which it is a party including those referred
to
on Schedule I hereto;
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|
(b)
|
Patents
and Patent Licenses to which it is a party, including those referred
to on
Schedule II hereto;
|
|
(c)
|
Copyrights
and Copyright Licenses to which it is a party, including those referred
to
on Schedule III hereto;
|
|
(d)
|
Intellectual
Property not covered by the foregoing, including those referred to
on
Schedule IV hereto;
|
|
(e)
|
Renewals,
reissues, continuations, divisions, or extensions of any of the
foregoing;
|
|
(f)
|
Rights
to xxx third parties for past, present or future infringement, dilution,
misappropriation, or other violation of rights in any Intellectual
Property, including injury to the goodwill associated with any Trademark,
and all causes of action for the
same:
|
|
(g)
|
All
products and Proceeds of all or any of the foregoing, tort claims
and all
claims and other rights to payment including (i) insurance claims
against
third parties for loss of, damage to, or destruction of, the foregoing
Collateral and (ii) payments due or to become due under licenses
of any or
all of the foregoing and Proceeds payable under, or unearned premiums
with
respect to policies of insurance in whatever form; provided,
however, that the Collateral shall not constitute a grant of a
security interest in (a) any property to the extent that such grant
of a
security interest is prohibited by any rule of law, statute or regulation,
requires a consent not obtained of any government, governmental body
or
official or is prohibited by, or constitutes a breach or default
under or
results in the termination of or requires any consent not obtained
under,
any contract, license, agreement, instrument or other document evidencing
or giving rise to such property, except to the extent that such rule
of
law, statute or regulation or the term in such contract, license,
agreement, instrument or other document or shareholder or similar
agreement providing for such prohibition, breach, default or termination
or requiring such consent is ineffective under applicable law; and
(b) any
trademark or service xxxx applications filed in the PTO on the basis
of
any Grantor’s intent to use such trademark or service xxxx, unless and
until a statement of use or amendment to allege use is filed in the
PTO,
in which event, such trademark or service xxxx shall automatically
be
included in the Collateral.
|
3
Section
3. REPRESENTATIONS
AND WARRANTIES.
Each
Grantor represents and warrants to Agent, in addition to the representations
and
warranties in Security Agreement and Ancillary Agreements, that:
|
(a)
|
Such
Grantor does not own, in whole or in part, any Patent, Trademark,
Copyright, or other Intellectual Property which is the subject of
a
registration or application in the United States Patent and Trademark
Office, United States Copyright Office, any similar office or agency
of
the United States, any State, any other country or political subdivision,
any Internet Domain Name registrar, or any other registry, except
as set
forth in Schedule I, Schedule II,Schedule III, and
Schedule IV, respectively,
hereto.
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|
(b)
|
such
Grantor is the sole owner of the Intellectual Property listed on
Schedules I to IV hereto (as such schedules may be amended or
supplemented from time to time) identified as owned by such Grantor,
and
all registrations and applications for such Intellectual Property
are
standing in the name of such
Grantor.
|
|
(c)
|
no
Intellectual Property has been licensed or sublicensed by any Grantor
to
any Affiliate or third party, except under the licenses disclosed
in
Schedules I to IV hereto.
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(d)
|
all
Intellectual Property owned by such Grantor, including the items
set forth
on Schedules I to IV, and, to such Grantor’s knowledge, all
Intellectual Property licensed to such Grantor, is subsisting in
good
standing, valid, and enforceable and such Grantor performed all acts
and
has paid all renewal, maintenance, and other fees and taxes required
to
maintain, each registration and application for Intellectual Property
owned by such Grantor in full force and
effect.
|
|
(e)
|
such
Grantor has been using statutory notice of registration in connection
with
its use of registered Trademarks, proper marking practices in connection
with the use of Patents, and appropriate notice of copyright in connection
with the publication of Copyrighted material
;
|
|
(f)
|
such
Grantor has taken all actions necessary to insure that all licensees
of Trademarks owned by such Grantor use consistent standards of
quality as directed by Grantor in connection with their licensed
products
and services;
|
|
(g)
|
this
Agreement is effective to create a valid security interest in favor
of
Agent, for the benefit of the Creditor Parties, in all of Grantor’s
Intellectual Property. Upon the (i) filing of this Intellectual
Property Security Agreement in the PTO (with respect to the United
States
Patents set forth on Schedule I hereto and the United States
Trademarks set forth on Schedule II hereto), and in the United
States Copyright Office (with respect to the United States Copyrights
set
forth on Schedule III hereto), and (ii) the filing of all
appropriate UCC-1 financing statements, such security interest will
be
enforceable as such as against any and all creditors of, and purchasers
from, Grantor. Upon the making of such filings set forth above,
all action necessary or desirable to protect and perfect Agent’s Lien on
each Grantor’s United States and State Patents, Trademarks, and
Copyrights, shall have been taken.
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4
Section
4. COVENANTS. Each
Grantor covenants and agrees with Agent, from and after the date of this
Agreement, and in addition to the covenants in Security Agreement and Ancillary
Agreements, that:
|
(a)
|
Such
Grantor shall notify Agent immediately if it knows or has reason
to know
that any application or registration relating to any Intellectual
Property
owned by such Grantor may become abandoned, dedicated to the public,
placed in the public domain or otherwise invalidated or unenforceable,
or
of any adverse determination or development in any proceeding (including
the institution of any proceeding) in the PTO, the United States
Copyright
Office, or any similar agency of the United States, any State, or
other
country or political subdivision thereof, any Internet Domain registry
or
other registry, or any court, regarding Grantor’s ownership of
or right to use register, keep and/or maintain any Intellectual
Property;
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(b)
|
Such
Grantor shall take all actions necessary, or requested by Agent,
to
maintain and pursue each application for registration in respect
of the
Intellectual Property owned by Grantor from time to time, by including
filing applications for renewal, affidavits of use, affidavits of
noncontestability and the commencement and prosecution of opposition
and
interference and cancellation
proceedings;
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(c)
|
In
the event that any Intellectual Property owned by or exclusively
licensed
to such Grantor is infringed, diluted, misappropriated, or otherwise
violated by a third party, such Grantor shall notify Agent promptly
after
such Grantor learns thereof and shall promptly take all reasonable
actions
to stop the same and enforce its rights in such Intellectual Property
and
to recover all damages therefor, including, but not limited to, the
initiation of a suit for injunctive relief and damages and shall
take such
other actions as are reasonable, or as Agent shall deem appropriate
under
the circumstances to protect such Grantor’s rights in such Intellectual
Property:.
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(d)
|
Such
Grantor shall use statutory notice of registration in connection
with its
use of registered Trademarks, proper marking practices in connection
with
the use of Patents, appropriate notice of copyright in connection
with the
publication of Copyrighted materials, and other legends or markings
applicable to other Intellectual
Property;
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(e)
|
Such
Grantor shall maintain the level of the quality of products sold
and
services rendered under any Trademarks owned by such Grantor at a
level at
least consistent with the quality of such products and services as
of the
date hereof, and such Grantor shall adequately control the quality
of
goods and services offered by any licensees of its Trademarks;
and
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(f)
|
Such
Grantor shall take all steps necessary to protect the secrecy of
all trade
secrets material to its business.
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5
Section
5. SECURITY
AGREEMENT. The security interests granted pursuant to this
Agreement are granted in conjunction with the security interests granted by
each
Grantor to Agent, for the ratable benefit of the Creditor Parties, pursuant
to
the Security Agreement. Each Grantor hereby acknowledges and affirms
that the rights and remedies of Agent with respect to the Collateral made and
granted herein are more fully set forth in the Security Agreement, the terms
and
provisions of which are incorporated by reference herein as if fully set forth
herein. Any rights and remedies set forth herein are without
prejudice to, and in addition to, those set forth in the Security
Agreement.
Section
6. REINSTATEMENT. This
Agreement shall remain in full force and effect and continue to be effective
should any petition be filed by or against any Grantor for liquidation or
reorganization, should any Grantor become insolvent or make an assignment for
the benefit of any creditor or creditors or should a receiver or trustee be
appointed for all or any significant part of such Grantor’s assets, and shall
continue to be effective or be reinstated, as the case may be, if at any time
payment and performance of the Obligations, or any part thereof, is, pursuant
to
applicable law, rescinded or reduced in amount, or must otherwise be restored
or
returned by any obligee of the Obligations, whether as a “voidable preference,”
“fraudulent conveyance,” or otherwise, all as though such payment or performance
had not been made. In the event that any payment, or any part
thereof, is rescinded, reduced, restored or returned, the Obligations shall
be
reinstated and deemed reduced only by such amount paid and not so rescinded,
reduced, restored or returned.
Section
7. INDEMNIFICATION.
Each Grantor assumes all responsibility and liability arising from the use
of
the Intellectual Property and Grantors, jointly and severally, hereby indemnify
and hold Agent and each other Creditor Party harmless from and against any
claim, suit, loss, damage or expense (including reasonable attorneys’ fees)
arising out of any Grantor’s operations of its business from the use of the
Intellectual Property. In any suit, proceeding or action brought by
Agent under any Patent License, Trademark License, or Copyright License for
any
sum owing thereunder, or to enforce any provisions of such License, Grantors
will, jointly and severally, indemnify and keep Agent and each other Creditor
Party harmless from and against all expense, loss or damage suffered by reason
of any defense, set off, counterclaim, recoupment or reduction or liability
whatsoever of the obligee thereunder, arising out of a breach of any Grantor
of
any obligation thereunder or arising out of any other agreement, indebtedness
or
liability at any time owing to or in favor of such obligee or its successors
from any Grantor, and all such obligations of Grantors shall be and remain
enforceable against and only against Grantors and shall not be enforceable
against Agent or any other Creditor Party.
Section
8. NOTICES. Whenever
it is provided herein that any notice, demand, request, consent, approval,
declaration or other communication shall or may be given to or served upon
any
of the parties by any other party, or whenever any of the parties desires to
give and serve upon any other party any communication with respect to this
Agreement, each such notice, demand, request, consent, approval, declaration
or
other communication shall be in writing and shall be given in the manner, and
deemed received, as provided for in the Security Agreement.
Section
9. TERMINATION
OF THIS AGREEMENT. Subject to Section 6 hereof, this Agreement
shall terminate upon payment in full in cash of all Obligations and irrevocable
termination of the Security Agreement and the Ancillary Agreements.
Section
10. THIS
AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED AND ENFORCED IN ACCORDANCE WITH
THE
LAWS OF THE STATE OF NEW YORK APPLICABLE TO CONTRACTS MADE AND PERFORMED IN
SUCH
STATE, WITHOUT REGARD TO PRINCIPLES OF CONFLICTS OF LAW.
[Signature
Page to Follow]
6
IN
WITNESS WHEREOF, each Grantor has executed this Intellectual Property Security
Agreement as of the date first written above.
| NEWMARKET TECHNOLOGY, INC. | |||
|
|
By:
|
/s/ Xxxxxx X. Xxxxxx | |
| Name Xxxxxx X. Xxxxxx | |||
| Title CEO | |||
| IP GLOBAL VOICE, INC. | |||
|
|
By:
|
/s/ Xxxxx Xxxxxx | |
| Name Xxxxx Xxxxxx | |||
| Title President | |||
| NETSCO, INC. | |||
|
|
By:
|
/s/ Xxxxxx X. Xxxxxx | |
| Name Xxxxxx X. Xxxxxx | |||
| Title President | |||
| NEWMARKET CHINA, INC. | |||
|
|
By:
|
/s/ Xxxxxx X. Xxxxx | |
| Name Xxxxxx X. Xxxxx | |||
| Title CFO | |||
| NEWMARKET BROADBAND, INC | |||
|
|
By:
|
/s/ Xxxxxx X. Xxxxxx | |
| Name Xxxxxx X. Xxxxxx | |||
| Title President | |||
| NEWMARKET INTELLECTUAL PROPERTY, INC. | |||
|
|
By:
|
/s/ Xxxxxx X. Xxxxxx | |
| Name Xxxxxx X. Xxxxxx | |||
| Title President | |||
ACCEPTED
and ACKNOWLEDGED by:
| LV ADMINISTRATIVE SERVICES, INC., as Agent | |||
|
|
By:
|
/s/ Xxxxx Xxxxxxxxx | |
| Name Xxxxx Xxxxxxxxx | |||
| Title Authorized Signatory | |||
7
SCHEDULE
I
TO
I. TRADEMARK
REGISTRATIONS
|
GRANTOR
|
XXXX
|
COUNTRY
|
REG.
NO.
|
REG.
DATE
|
|
NewMarket
Technology, Inc.
|
IPVOICE
& Design
|
USA
|
2,531,096
|
January
22, 2002
|
|
NewMarket
Technology, Inc.
|
AUDITRITE
|
USA
|
2,519,001
|
December
18, 2001
|
|
NewMarket
Technology, Inc.
|
TRUECONNECT
|
USA
|
2,574,849
|
June
4, 2002
|
|
NewMarket
Technology, Inc.
|
TRUEPARTNER
|
USA
|
2,474,791
|
August
7, 2001
|
|
NewMarket
Technology, Inc.
|
IPJACK
|
USA
|
2,580,563
|
June
18, 2002
|
|
NewMarket
Technology, Inc.
|
COMMUNICATIONS
OUT OF THE BOX
|
USA
|
2,687,704
|
February
18, 2003
|
|
NewMarket
Technology, Inc.
|
COMMUNICATIONS
OUT OF THE BOX Stylized
|
USA
|
2,611,104
|
August
27, 0000
|
|
XxxXxxxxx
Xxxxxxxxxx, Xxx.
|
XXXX0
|
XXX
|
2,523,666
|
December
25, 0000
|
|
XxxXxxxxx
Xxxxxxxxxx, Xxx.
|
XXXX00
|
XXX
|
2,583,913
|
June
18, 0000
|
|
XxxXxxxxx
Xxxxxxxxxx, Xxx.
|
0X0
|
XXX
|
2,465,637
|
July
3, 2001
|
II. TRADEMARK
APPLICATIONS
None
III. TRADEMARK
LICENSES
None
IV. INTERNET
DOMAIN NAMES
|
GRANTOR
|
NAME
|
REGISTRAR
|
||
|
IP
Global Voice, Inc.
|
xxxxxxxx.xxx
|
Network
Solutions, LLC
|
||
|
IP
Global Voice, Inc.
|
xxxxxx.xxx
|
Xxxxxxx.xxx
|
||
|
IP
Global Voice, Inc.
|
xxxxxx.xxx
|
Xxxxxxx.xxx
|
||
|
IP
Global Voice, Inc.
|
xxxxxx.xxx
|
Xxxxxxx.xxx
|
||
|
IP
Global Voice, Inc.
|
xx-xx.xxx
|
Xxxxxxx.xxx
|
||
|
IP
Global Voice, Inc.
|
xx-xx.xxx
|
Xxxxxxx.xxx
|
||
|
IP
Global Voice, Inc.
|
xxxxxxxxxxxxx.xxx
|
Xxxxxxx.xxx
|
SCHEDULE
II
TO
I. PATENTS
None
II. PATENT
APPLICATIONS
None
III. PATENT
LICENSES
None
SCHEDULE
III
TO
IV. COPYRIGHT
REGISTRATIONS
None
V. COPYRIGHT
APPLICATIONS
None
III. COPYRIGHT
LICENSES
None
SCHEDULE
IV
TO
OTHER
INTELLECTUAL PROPERTY REGISTRATIONS AND APPLICATIONS.
None
