EXHIBIT 10.1.2
PATENT AND TRADEMARK SECURITY AGREEMENT
This PATENT AND TRADEMARK SECURITY AGREEMENT ("Agreement") dated as of
November 17, 1995, is entered into between TSW INTERNATIONAL, INC., a Georgia
corporation ("Grantor"), which has a mailing address at 0000 Xxxxx Xxxxx
Xxxxxxx, Xxxxxxx, Xxxxxxx 00000, and GREYROCK BUSINESS CREDIT, a Division of
Greyrock Capital Group, Inc. ("GBC"), which has a mailing address at 000 Xxxxx
Xxxxxxxxxxx Xxxx., Xxxxx 000, Xx Xxxxxxx, Xxxxxxxxxx 00000.
RECITALS
A. Grantor and GBC are, contemporaneously herewith, entering into that
certain Loan and Security Agreement ("Loan Agreement") and other instruments,
documents and agreements contemplated thereby or related thereto (collectively,
together with the Loan Agreement, the "Loan Documents"); and
B. Grantor is the owner of certain intellectual property, identified
below, in which Grantor is granting a security interest to GBC.
NOW THEREFORE, in consideration of the mutual promises, covenants,
conditions, representations, and warranties hereinafter set forth and for other
good and valuable consideration, the parties hereto mutually agree as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 DEFINITIONS. The following terms, as used in this Agreement,
have the following meanings:
"CODE" means the California Uniform Commercial Code, as amended
and supplemented from time to time, and any successor statute.
"COLLATERAL" means all of the following, whether now owned or
hereafter acquired:
(i) Each of the trademarks and rights and interest which are
capable of being protected as trademarks (including trademarks, service
marks, designs, logos, indicia, tradenames, corporate names, company names,
business names, fictitious business names, trade styles, and other source
or business identifiers, and applications pertaining thereto), which are
presently, or in the future may be, owned, created, acquired, or used
(whether pursuant to a license or otherwise) by Grantor, in whole or in
part, and all trademark rights with respect thereto throughout the world,
including all proceeds thereof (including license royalties and proceeds of
infringement suits), and rights to renew and extend such trademarks and
trademark rights;
1.
(ii) Each of the patents and patent applications which are
presently, or in the future may be, owned, issued, acquired, or used
(whether pursuant to a license or otherwise) by Grantor, in whole or in
part, and all patent rights with respect thereto throughout the world,
including all proceeds thereof (including license royalties and proceeds of
infringement suits), foreign filing rights, and rights to extend such
patents and patent rights;
(iii) All of Grantor's right to the trademarks and trademark
registrations listed on EXHIBIT A attached hereto, as the same may be
updated hereafter from time to time;
(iv) All of Grantor's right, title, and interest, in and to
the patents and patent applications listed on EXHIBIT B attached hereto, as
the same may be updated hereafter from time to time;
(v) All of Grantor's right, title and interest to register
trademark claims under any state or federal trademark law or regulation of
any foreign country and to apply for, renew, and extend the trademark
registrations and trademark rights, the right (without obligation) to xxx
or bring opposition or cancellation proceedings in the name of Grantor or
in the name of GBC for past, present, and future infringements of the
trademarks, registrations, or trademark rights and all rights (but not
obligations) corresponding thereto in the United States and any foreign
country;
(vi) All of Grantor's right, title, and interest in all
patentable inventions, and to file applications for patent under federal
patent law or regulation of any foreign country, and to request
reexamination and/or reissue of the patents, the right (without obligation)
to xxx or bring interference proceedings in the name of Grantor or in the
name of GBC for past, present, and future infringements of the patents, and
all rights (but not obligations) corresponding thereto in the United States
and any foreign country;
(vii) the entire goodwill of or associated with the
businesses now or hereafter conducted by Grantor connected with or
symbolized by any of the aforementioned properties and assets;
(viii) All general intangibles relating to the foregoing and
all other intangible intellectual or other similar property of the Grantor
of any kind or nature, associated with or arising out of any of the
aforementioned properties and assets and not otherwise described above; and
(ix) All products and proceeds of any and all of the
foregoing (including, without limitation, license royalties and proceeds of
infringement suits) and, to the extent not otherwise included, all payments
under insurance, or any
2.
indemnity, warranty, or guaranty payable by reason of loss or damage to or
otherwise with respect to the Collateral.
"OBLIGATIONS" means all obligations, liabilities, and
indebtedness of Grantor to GBC, whether direct, indirect, liquidated, or
contingent, and whether arising under this Agreement, the Loan Agreement,
any other of the Loan Documents, or otherwise, including all costs and
expenses described in Section 9.7 hereof.
1.2 CONSTRUCTION. Unless the context of this Agreement clearly
requires otherwise, references to the plural include the singular, references to
the singular include the plural, and the term "including" is not limiting. The
words "hereof," "herein," "hereby," "hereunder," and other similar terms refer
to this Agreement as a whole and not to any particular provision of this
Agreement. Any initially capitalized terms used but not defined herein shall
have the meaning set forth in the Loan Agreement. Any reference herein to any
of the Loan Documents includes any and all alterations, amendments, extensions,
modifications, renewals, or supplements thereto or thereof, as applicable.
Headings have been set forth herein for convenience only.
2. GRANT OF SECURITY INTEREST.
To secure the complete and timely payment and performance of all
Obligations, and without limiting any other security interest Grantor has
granted to GBC, Grantor hereby hypothecates to GBC and grants, assigns, and
conveys to GBC a security interest in Grantor's entire right, title, and
interest in and to the Collateral.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
Grantor hereby represents, warrants, and covenants that:
3.1 TRADEMARKS; PATENTS. A true and complete schedule setting forth
all federal and state trademark registrations owned or controlled by Grantor or
licensed to Grantor, together with a summary description and full information in
respect of the filing or issuance thereof and expiration dates is set forth on
EXHIBIT A; and a true and complete schedule setting forth all patent and patent
applications owned or controlled by Grantor or licensed to Grantor, together
with a summary description and full information in respect of the filing or
issuance thereof and expiration dates is set forth on EXHIBIT B.
3.2 VALIDITY; ENFORCEABILITY. Each of the patents and trademarks is
valid and enforceable, and Grantor is not presently aware of any past, present,
or prospective claim by any third party that any of the patents or trademarks
are invalid or unenforceable, or that the use of any patents or trademarks
violates the rights of any third person, or of any basis for any such claims.
3.
3.3. TITLE. Grantor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the patents, patent
applications, trademarks, and trademark registrations, free and clear of any
liens, charges, and encumbrances, including pledges, assignments, licenses, shop
rights, and covenants by Grantor not to xxx third persons.
3.4 NOTICE. Grantor has used and will continue to use proper
statutory notice in connection with its use of each of the patents and
trademarks.
3.5 QUALITY. Grantor has used and will continue to use consistent
standards of high quality (which may be consistent with Grantor's past
practices) in the manufacture, sale, and delivery of products and services sold
or delivered under or in connection with the trademarks, including, to the
extent applicable, in the operation and maintenance of its merchandising
operations, and will continue to maintain the validity of the trademarks.
3.6 PERFECTION OF SECURITY INTEREST. Except for the filing of a
financing statement with the applicable filing office in the State of Georgia
and filings with the United States Patent and Trademark Office necessary to
perfect the security interests created hereunder, no authorization, approval, or
other action by, and no notice to or filing with, any governmental authority or
regulatory body is required either for the grant by Grantor of the security
interest hereunder or for the execution, delivery, or performance of this
Agreement by Grantor or for the perfection of or the exercise by GBC of its
rights hereunder to the Collateral in the United States.
4. AFTER-ACQUIRED PATENT OR TRADEMARK RIGHTS
If Grantor shall obtain rights to any new trademarks, any new
patentable inventions or become entitled to the benefit of any patent
application or patent for any reissue, division, or continuation, of any patent,
the provisions of this Agreement shall automatically apply thereto. Grantor
shall give prompt notice in writing to GBC with respect to any such new
trademarks or patents, or renewal or extension of any trademark registration.
Grantor shall bear any expenses incurred in connection with future patent
applications or trademark registrations. Without limiting Grantor's obligation
under this Section 4, Grantor authorizes GBC to modify this Agreement by
amending EXHIBITS A OR B to include any such new patent or trademark rights.
Notwithstanding the foregoing, no failure to so modify this Agreement or amend
EXHIBITS A OR B shall in any way affect, invalidate or detract from GBC's
continuing security interest in all Collateral, whether or not listed on EXHIBIT
A OR B.
5. LITIGATION AND PROCEEDINGS.
Grantor shall commence and diligently prosecute in its own name, as
the real party in interest, for its own benefit, and its own expense, such
suits, administrative proceedings, or other action for infringement or other
damages as are in its reasonable
4.
business judgment necessary to protect the Collateral. Grantor shall provide to
GBC any information with respect thereto requested by GBC. GBC shall provide at
Grantor's expense all necessary cooperation in connection with any such suits,
proceedings, or action, including, without limitation, joining as a necessary
party. Following Grantor's becoming aware thereof, Grantor shall notify GBC of
the institution of, or any adverse determination in, any proceeding in the
United States Patent and Trademark Office, or any United States, state, or
foreign court regarding Grantor's claim of ownership in any of the patents or
trademarks, its right to apply for the same, or its right to keep and maintain
such patent or trademark rights.
6. POWER OF ATTORNEY.
Grantor hereby appoints GBC as Grantor's true and lawful attorney,
with full power of substitution, to do any or all of the following, in the name,
place and stead of Grantor: (a) file this Agreement (or an abstract hereof) or
any other document describing GBC's interest in the Collateral with the United
States Patent and Trademark Office; (b) execute any modification of this
Agreement pursuant to Section 4 of this Agreement; (c) take any action and
execute any instrument which GBC may deem necessary or advisable to accomplish
the purposes of this Agreement; and (d) following an Event of Default (as
defined in the Loan Agreement), (i) endorse Grantor's name on all applications,
documents, paper and instruments necessary for GBC to use or maintain the
Collateral; (ii) ask, demand, collect, xxx for, recover, impound, receive, and
give acquittance and receipts for money due or to become due under or in respect
of any of the Collateral; (iii) file any claims or take any action or institute
any proceedings that GBC may deem necessary or desirable for the collection of
any of the Collateral or otherwise enforce GBC's rights with respect to any of
the Collateral, and (iv) assign, pledge, convey, or otherwise transfer title in
or dispose of the Collateral to any person.
7. RIGHT TO INSPECT.
Grantor grants to GBC and its employees and agents the right to visit
Grantor's plants and facilities which manufacture, inspect, or store products
sold under any of the patents or trademarks, and to inspect the products and
quality control records relating thereto at reasonable times during regular
business hours. Any such inspection shall be conducted by GBC, or its agents,
without material hindrance or interruption of Grantor's business.
8. SPECIFIC REMEDIES.
Upon the occurrence of any Event of Default (as defined in the Loan
Agreement), GBC shall have, in addition to, other rights given by law or in this
Agreement, the Loan Agreement, or in any other Loan Document, all of the rights
and remedies with respect to the Collateral of a secured party under the Code,
including the following:
5.
8.1 NOTIFICATION. GBC may notify licensees to make royalty payments
on license agreements directly to GBC;
8.2 SALE. GBC may sell or assign the Collateral and associated
goodwill at public or private sale for such amounts, and at such time or times
as GBC deems advisable. Any requirement of reasonable notice of any disposition
of the Collateral shall be satisfied if such notice is sent to Grantor ten (10)
days prior to such disposition. Grantor shall be credited with the net proceeds
of such sale only when they are actually received by GBC, and Grantor shall
continue to be liable for any deficiency remaining after the Collateral is sold
or collected. If the sale is to be a public sale, GBC shall also give notice of
the time and place by publishing a notice one time at least ten (10) days before
the date of the sale in a newspaper of general circulation in the county in
which the sale is to be held. To the maximum extent permitted by applicable
law, GBC may be the purchaser of any or all of the Collateral and associated
goodwill at any public sale and shall be entitled, for the purpose of bidding
and making settlement or payment of the purchase price for all or any portion of
the Collateral sold at any public sale, to use and apply all or any part of the
Obligations as a credit on account of the purchase price of any collateral
payable by GBC at such sale.
9. GENERAL PROVISIONS.
9.1 EFFECTIVENESS. This Agreement shall be binding and deemed
effective when executed by Grantor and GBC.
9.2 NO WAIVER. No course of dealing between Grantor and GBC, nor any
failure to exercise nor any delay in exercising, on the part of GBC, any right,
power, or privilege under this Agreement or under the Loan Agreement or any
other agreement, shall operate as a waiver. No single or partial exercise of
any right, power, or privilege under this Agreement or under the Loan Agreement
or any other agreement by GBC shall preclude any other or further exercise of
such right, power, or privilege or the exercise of any other right, power, or
privilege by GBC.
9.3 RIGHTS ARE CUMULATIVE. All of GBC's rights and remedies with
respect to the Collateral whether established by this Agreement, the Loan
Agreement, or any other documents or agreements, or by law shall be cumulative
and may be exercised concurrently or in any order.
9.4 SUCCESSORS. The benefits and burdens of this Agreement shall
inure to the benefit of and be binding upon the respective successors and
permitted assigns of the parties; provided that Grantor may not transfer any of
the Collateral or any rights hereunder, without the prior written consent of
GBC, except as specifically permitted hereby.
6.
9.5 SEVERABILITY. The provisions of this Agreement are severable.
If any provision of this Agreement is held invalid or unenforceable in whole or
in part in any jurisdiction, then such invalidity or unenforceability shall
affect only such provision, or part thereof, in each jurisdiction, and shall not
in any manner affect such provision or part thereof in any other jurisdiction,
or any other provision of this Agreement in any jurisdiction.
9.6 ENTIRE AGREEMENT. This Agreement is subject to modification only
by a writing signed by the parties, except as provided in Section 4 of this
Agreement. To the extent that any provision of this Agreement conflicts with
any provision of the Loan Agreement, the provision giving GBC greater rights or
remedies shall govern, it being understood that the purpose of this Agreement is
to add to, and not detract from, the rights granted to GBC under the Loan
Agreement. This Agreement, the Loan Agreement, and the documents relating
thereto comprise the entire agreement of the parties with respect to the matters
addressed in this Agreement.
9.7 FEES AND EXPENSES. Grantor shall pay to GBC on demand all costs
and expenses that the GBC pays or incurs in connection with the negotiation,
preparation, consummation, administration, enforcement, and termination of this
Agreement, including: (a) reasonable attorneys' and paralegals' fees and
disbursements of counsel to GBC; (b) costs and expenses (including reasonable
attorneys' and paralegals' fees and disbursements) for any amendment,
supplement, waiver, consent, or subsequent closing in connection with this
Agreement and the transactions contemplated hereby; (c) costs and expenses of
lien and title searches; (d) taxes, fees, and other charges for filing this
Agreement at the United States Patent and Trademark Office, or for filing
financing statements, and continuations, and other actions to perfect, protect,
and continue the security interest created hereunder; (e) sums paid or incurred
to pay any amount or take any action required of Grantor under this Agreement
that Grantor fails to pay or take; (f) costs and expenses of preserving and
protecting the Collateral; and (g) costs and expenses (including reasonable
attorneys' and paralegals' fees and disbursements) paid or incurred to enforce
the security interest created hereunder, sell or otherwise realize upon the
Collateral, and otherwise enforce the provisions of this Agreement, or to defend
any claims made or threatened against the GBC arising out of the transactions
contemplated hereby (including preparations for the consultations concerning any
such matters). The foregoing shall not be construed to limit any other
provisions of this Agreement or the Loan Documents regarding costs and expenses
to be paid by Grantor. The parties agree that reasonable attorneys' and
paralegals' fees and costs incurred in enforcing any judgment are recoverable as
a separate item in addition to fees and costs incurred in obtaining the judgment
and that the recovery of such attorneys' and paralegals' fees and costs is
intended to survive any judgment, and is not to be deemed merged into any
judgment.
9.8 INDEMNITY. Grantor shall protect, defend, indemnify, and hold
harmless GBC and GBC's assigns from all liabilities, losses, and costs
(including without limitation reasonable attorneys' fees) incurred or imposed on
GBC relating to the matters in this Agreement.
7.
9.9 GOVERNING LAW. The validity and interpretation of this Agreement
and the rights and obligations of the parties shall be governed by the laws of
the State of California, excluding its conflict of law rules to the extent such
rules would apply the law of another jurisdiction, and the United States.
9.10 WAIVER OF RIGHT TO JURY TRIAL. GBC AND GRANTOR EACH HEREBY WAIVE
THE RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED UPON, ARISING OUT
OF, OR IN ANY WAY RELATING TO: (i) THIS AGREEMENT; OR (ii) ANY OTHER PRESENT OR
FUTURE INSTRUMENT OR AGREEMENT BETWEEN GBC AND GRANTOR; OR (iii) ANY CONDUCT,
ACTS OR OMISSIONS OF GBC OR GRANTOR OR ANY OF THEIR DIRECTORS, OFFICERS,
EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER PERSONS AFFILIATED WITH GBC OR
GRANTOR; IN EACH OF THE FOREGOING CASES, WHETHER SOUNDING IN CONTRACT OR TORT OR
OTHERWISE.
9.11 FURTHER ASSURANCES. At GBC's request, Grantor shall execute and
deliver to GBC any further instruments or documentation, and perform any acts,
that may be reasonably necessary or appropriate to implement this Agreement, the
Loan Agreement or any other agreement, and the documents relating thereto,
including without limitation any instrument or documentation reasonably
necessary or appropriate to create, maintain, perfect, or effectuate GBC's
security interests in the Collateral.
9.12 RELEASE. At such time as Grantor shall completely satisfy all of
the Obligations and the Loan Agreement shall be terminated, GBC shall execute
and deliver to Grantor all assignments and other instruments as may be
reasonably necessary or proper to terminate GBC's security interest in the
Collateral, subject to any disposition of the Collateral which may have been
made by GBC pursuant to this Agreement. For the purpose of this Agreement, the
Obligations shall be deemed to continue if GBC enters into any bankruptcy or
similar proceeding at a time when any amount paid to GBC could be ordered to be
repaid as a preference or pursuant to a similar theory, and shall continue until
it is finally determined that no such repayment can be ordered.
IN WITNESS WHEREOF, the parties have executed this Agreement on the
date first written above.
TSW INTERNATIONAL, INC.
By /s/ Xxxx Xxxxxxx
------------------------------
Title Sr. V. P. & CFO
------------------------------
8.
GREYROCK BUSINESS CREDIT, a Division
of Greyrock Capital Group Inc.
By /s/ [illegible]
------------------------------
Title Managing Director
------------------------------
9.
STATE OF CALIFORNIA )
) ss.
COUNTY OF LOS ANGELES )
On November ___, 1995, before me, ________________________________,
_______________________, Notary Public, personally appeared
__________________________________, personally known to me (or proved to me on
the basis of satisfactory evidence) to be the person(s) whose name(s) is/are
subscribed to the within instrument and acknowledged to me that he/she/they
executed the same in his/her/their authorized capacity(ies), and that by
his/her/their signature(s) on the instrument the person(s), or the entity upon
behalf of which the person(s) acted, executed the instrument.
Witness my hand and official seal.
_____________________________
(Seal)
[STATE OF GEORGIA NOTARIZATION:]
10.
EXHIBIT "A"
REGISTERED TRADEMARKS
Trademark Registration Date Registration No.
--------- ----------------- ----------------
Curator September 3, 1991 1,655,435
PENDING TRADEMARKS
Trademark Filing Date Serial No.
--------- ----------- ----------
Asset Care May 30, 1995 74-682,257
11.
EXHIBIT "B"
PATENTS
Patent Description/Title Issue Date Patent No. Name of Inventor
------------------------ ---------- ---------- ----------------
(None.)
PATENT APPLICATIONS
Description Filing Date Serial No. Name of Inventor
----------- ----------- ---------- ----------------
(None.)
12.
