Contract
Exhibit 10.4
THIS PATENT SECURITY AGREEMENT dated as of July 16, 2020 (this “Agreement”), between FUBOTV INC., a Delaware corporation, FACEBANK GROUP, INC., a Florida corporation (each a “Borrower” and collectively, the “Borrowers”), and ACCESS ROAD CAPITAL LLC, a Delaware limited liability company (the “Lender”). The Borrowers are sometimes referred to herein individually as a “Grantor” or collectively, as “Grantors.”
Reference is made to (a) the Collateral Agreement dated as of July 16, 2020 (as amended, restated, amended and restated, supplemented or otherwise modified from time to time, the “Collateral Agreement”), between the Borrowers and the Lender and (b) the Credit Agreement dated as of July 16, 2020 (as amended, restated, amended and restated, supplemented or otherwise modified from time to time, the “Credit Agreement”), between the Borrowers and the Lender. The Lender has agreed to extend credit to the Borrowers subject to the terms and conditions set forth in the Credit Agreement. The obligations of the Lender to extend such credit is conditioned upon, among other things, the execution and delivery of this Agreement. The Borrowers will derive substantial benefits from the extension of credit pursuant to the Credit Agreement and are willing to execute and deliver this Agreement in order to induce the Lender to extend such credit. Accordingly, the parties hereto agree as follows:
SECTION 1. Terms. Capitalized terms used in this Agreement and not otherwise defined herein have the meanings specified in the Credit Agreement or the Collateral Agreement, as applicable. The rules of construction specified in Section 1.2 of the Credit Agreement also apply to this Agreement.
SECTION 2. Grant of Security Interest. As security for the payment or performance, as the case may be, in full of the Obligations, the Grantors hereby collaterally assign and pledge to the Lender and its permitted successors and assigns, and hereby grant to the Lender and its permitted successors and assigns, a security interest in, all right, title and interest in or to any and all of the following assets and properties now owned or at any time hereafter acquired by either of them or in which the Grantors now have or at any time in the future may acquire any right, title or interest (collectively, the “Patent Collateral”):
(a) all letters patent of the United States of America or the equivalent thereof in any other country, all registrations and recordings thereof, and all applications for letters patent of the United States of America or the equivalent thereof in any other country, including registrations, recordings and pending applications in the United States Patent and Trademark Office (or any successor or any similar offices in any other country), including those listed on Schedule I; and
(b) all reissues, continuations, divisions, continuations-in-part, renewals or extensions thereof, and the inventions disclosed or claimed therein.
SECTION 3. Security Agreement. The security interests granted to the Lender herein are granted in furtherance, and not in limitation of, the security interests granted to the Lender pursuant to the Collateral Agreement. The Grantors hereby acknowledge and affirm that the rights and remedies of the Lender with respect to the Patent Collateral are more fully set forth in the Collateral Agreement, the terms and provisions of which are hereby incorporated herein by reference as if fully set forth herein. In the event of any conflict between the terms of this Agreement and the Collateral Agreement, the terms of the Collateral Agreement shall govern.
SECTION 4. Supplements to Schedule I. Each Grantor hereby authorizes the Lender from time to time to supplement Schedule I attached hereto to include additional Patent Collateral of such Grantor and to file such supplemented Schedule I with the United States Patent and Trademark Office without any further action required of either Grantor.
SECTION 5. Counterparts. This Agreement may be executed in counterparts (and by different parties hereto on different counterparts), each of which shall constitute an original but all of which when taken together shall constitute a single contract. Delivery of an executed signature page to this Agreement by facsimile or other electronic form (including .pdf file) shall be effective as delivery of a manually signed counterpart.
SECTION 6. Applicable Law. This Agreement, and all matters arising out of or relating to this Agreement, shall be solely governed by, and construed in accordance with, the laws of the State of New York as applied to agreements performed wholly within the State of New York.
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IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as of the day and year first above written.
| GRANTORS: | ||
| FUBOTV INC., a Delaware corporation | ||
| By: | /s/ Xxxxx Xxxxxxx | |
| Name: | ||
| Title: | ||
| FACEBANK GROUP, INC., a Florida corporation | ||
| By: | /s/ Xxxxxx Xxxxx | |
| Name: | ||
| Title: | ||
| LENDER: | ||
| ACCESS ROAD CAPITAL LLC, a Delaware limited liability company | ||
| By: | /s/ Idan Shani | |
| Name: | Idan Shani | |
| Title: | COO/CFO | |
Schedule I
U.S. Patents, U.S. Patent Applications, Non-U.S. Patents, and Non-U.S. Patent Applications
| Reference Number | Title | Filed Date | Serial # | Status | Country | Issue Date | Patent # | |||||||
| P440132.US.01 | P440132.US.01 SYSTEMS AND METHODS FOR ADAPTIVELY ENCODING VIDEO STREAM | 06/04/2018 | 15/997,388 | ISSUED | United States | 10/08/2019 | 10,440,367 | |||||||
| P440139.US.01 | P440139.US.01 SYSTEMS AND METHODS FOR GENERATING INDIVIDUALIZED PLAYLISTS | 09/21/2018 | 16/138,604 | PUBLISHED | United States | |||||||||
| P440135.US.01 | P440135.US.01 SYSTEMS AND METHODS FOR SECURELY GENERATING LIVE PREVIEWS | 07/20/2018 | 16/040,900 | ISSUED | United States | 09/17/2019 | 10,419,786 | |||||||
| P440142.US.01 | P440142.US.01 DISPLAY SCREEN OR PORTION THEREOF WITH ANIMATED GRAPHICAL USER INTERFACE | 09/24/2018 | 29/664,342 | ABANDONED | United States | |||||||||
| P440142.US.02 | P440142.US.02 SYSTEMS AND METHODS FOR DISPLAYING A LIVE VIDEO STREAM IN A GRAPHICAL USER INTERFACE | 09/24/2018 | 62/735,676 | EXPIRED | United States | |||||||||
| P440142.US.03 | P440142.US.03 DISPLAY SCREEN OR PORTION THEREOF WITH GRAPHICAL USER INTERFACE | 05/30/2019 | 29/693,030 | PENDING | United States | |||||||||
| P440142.WO.01 | P440142.WO.01 DISPLAY SCREEN OR PORTION THEREOF WITH ANIMATED GRAPHICAL USER INTERFACE | 03/22/2019 | XXXX00000 | XXXXXX | Xxxxxx Xxxxxxx, Xxxxxx, Xxxxxx | 10/25/2019 | DM/203087 | |||||||
| P440139.EP.01 | P440139.EP.01 SYSTEMS AND METHODS FOR GENERATING INDIVIDUALIZED PLAYLISTS | 09/20/2019 | 19198697.5 | PUBLISHED | Europe | |||||||||
| P440139.CA.01 | P440139.CA.01 SYSTEMS AND METHODS FOR GENERATING INDIVIDUALIZED PLAYLISTS | 09/17/2019 | 3055711 | PENDING | Canada |
| P440135.EP.01 | P440135.EP.01 SYSTEMS AND METHODS FOR SECURELY GENERATING LIVE PREVIEWS | 07/17/2019 | 19186819.9 | PUBLISHED | Europe | |||||||||
| P440135.CA.01 | P440135.CA.01 SYSTEMS AND METHODS FOR SECURELY GENERATING LIVE PREVIEWS | 07/12/2019 | 3049591 | PENDING | Canada | |||||||||
| P440132.CA.01 | P440132.CA.01 SYSTEMS AND METHODS FOR ADAPTIVELY ENCODING A VIDEO STREAM USING VIRTUAL ENCODERS, BASED ON CHANGES IN THE NUMBER OF VIEWERS AND DESIRED VIDEO QUALITY | 06/04/2019 | 3045125 | ALLOWED | Canada | |||||||||
| P440132.EP.01 | P440132.EP.01 SYSTEMS AND METHODS FOR VIDEO ENCODING | 06/04/2019 | 19178276.2 | PUBLISHED | Europe | |||||||||
| P440135.US.02 | P440135.US.02 SYSTEMS AND METHODS FOR SECURELY GENERATING LIVE PREVIEWS | 08/05/2019 | 16/531,428 | PUBLISHED | United States | |||||||||
| P440132.US.01C | P440132.US.01C SYSTEMS AND METHODS FOR ADAPTIVELY ENCODING VIDEO STREAM | 09/20/2019 | 16/577,481 | PUBLISHED | United States | |||||||||
| P440142.US.04 | P440142.US.04 SYSTEMS AND METHODS FOR DISPLAYING A LIVE VIDEO STREAM IN A GRAPHICAL USER INTERFACE | 09/24/2019 | 16/580,920 | PUBLISHED | United States | |||||||||
| P440142.WO.02 | P440142.WO.02 SYSTEMS AND METHODS FOR DISPLAYING A LIVE VIDEO STREAM IN A GRAPHICAL USER INTERFACE | 09/24/2019 | PCT/US2019/052707 | PUBLISHED | International |
