Exhibit 10.4
Non-Patent Assets Xxxx of Sale, Assignment and Assumption Agreement
This Non-Patent Assets Xxxx of Sale, Assignment and Assumption
Agreement (this "Agreement") is entered into as of _________________, 2004 (the
"Effective Date"), by and between ParkerVision, Inc. a corporation organized in
the state of Florida ("Seller"), and Thomson Broadcast & Media Solutions, Inc.,
a corporation organized in Delaware ("Lead Purchaser").
RECITALS
WHEREAS, Seller and Lead Purchaser are parties to that certain Asset
Purchase Agreement, dated February 25, 2004 (the "Purchase Agreement");
WHEREAS, pursuant to the Purchase Agreement, Seller has agreed to
irrevocably transfer and assign to Lead Purchaser all of its right, title and
interest, on a worldwide basis, in, to and under the Non-Patent Assets; and
WHEREAS, pursuant to the Purchase Agreement, Lead Purchaser has agreed
to assume the Assumed Liabilities.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:
AGREEMENT
1. CAPITALIZED TERMS. Capitalized terms used but not defined herein shall have
the meanings for such terms that are set forth in the Purchase Agreement.
2. ASSIGNMENT
2.1 Non-Patent Assets. Seller hereby irrevocably sells, transfers,
conveys, assigns and delivers all of its right, title and interest of every kind
and character throughout the world in, to and under the Non-Patent Assets to the
full extent of its ownership or interest therein, including, without limitation,
all rights and causes of action for infringement or misappropriation (past,
present or future) of any Non-Patent Assets, all rights to apply for or register
any of the foregoing, and any and all other rights and interests arising out of,
in connection with or in relation to the Non-Patent Assets. At Closing, Seller
shall execute and deliver to Lead Purchaser a confirmatory assignment agreement
covering, if and to the extent included in the Non-Patent Assets: (i) each
registered Trademark and all applications for registration of Trademarks for
filing with the United States Patent and Trademark Office, in the form attached
hereto as Exhibit A; (ii) each registered Copyright and all applications for
registration of Copyrights for filing with the United States Copyright Office,
in the form attached hereto as Exhibit B; and (iii) each Internet domain name
for filing and submission as necessary to transfer such domain names, in the
form attached hereto as Exhibit C or in such other form as necessary to transfer
such domain names (collectively the "Confirmatory Assignments").
2.2 Further Actions. Upon Lead Purchaser's request, Seller will
promptly take such other actions as may be reasonably necessary to vest, secure,
perfect, protect or enforce the rights and interests of Lead Purchaser in, to
and under the Non-Patent Assets, and Lead Purchaser shall pay for Assignor's
actual and reasonable expenses and costs. Such actions shall include, without
limitation, the prompt execution and delivery of documents in recordable form
1
(including the prompt execution and delivery of additional Confirmatory
Assignments) and the provision of documents and information useful or necessary
for Lead Purchaser or its affiliates, designees or agents to file, prosecute or
maintain any registration or application for any Non-Patent Asset, or pursue or
defend any administrative, court, or other legal proceeding involving any of the
Non-Patent Assets.
2.3 Appointment. In the event that Lead Purchaser is unable, after
reasonable notice to Seller (and passage of at least five business days from the
date such notice is delivered), for any reason whatsoever, to secure Seller's
signature to any document that is reasonably necessary to vest, secure, perfect,
protect or enforce the rights and interests of Lead Purchaser in and to the
Non-Patent Assets, Seller hereby irrevocably designates and appoints Lead
Purchaser and its duly authorized officers and agents as Seller's agents and
attorneys-in-fact, to act for and on its behalf and instead of Seller, to
execute and file any such documents and to do all other lawfully permitted acts
to further the purposes of this Section 2 with the same legal force and effect
as if executed by Seller.
3. ASSUMPTION. Lead Purchaser hereby assumes the Assumed Liabilities.
4. MISCELLANEOUS. Sections 12.1 through 12.16 of the Purchase Agreement are
hereby incorporated herein by this reference; provided that (i) references to
"Agreement," "hereto," "hereunder," and similar references in such sections
shall pertain to this Agreement; (ii) the Purchase Agreement (for the avoidance
of doubt) shall be considered a Transaction Agreement; and (iii) references to
"Purchasers" shall be deemed to be Lead Purchaser.
[REST OF PAGE INTENTIONALLY LEFT BLANK]
2
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as of the Effective Date.
SELLER LEAD PURCHASER
By: By:
------------------------ ---------------------------
Name (Print): Name (Print):
-------------- -----------------
Title: Title:
--------------------- ------------------------
3
EXHIBIT A
CONFIRMATORY TRADEMARK ASSIGNMENT AGREEMENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
ASSIGNMENT
WHEREAS, ParkerVision, Inc., a Florida corporation, with offices at 0000
Xxxxxxxxxx Xxx, Xxxxxxxxxxxx, Xxxxxxx 00000 ("ASSIGNOR") owns certain trademarks
and/or service marks, and applications and/or registrations for such marks, as
set forth in Attachment 1 attached hereto and incorporated herein by this
reference ("MARKS"); and
WHEREAS, Thomson Broadcast & Media Solutions, Inc., a Delaware corporation, with
offices at 0000 X. Xxxxxxx Xxxx Xxxxxxxxx, Xxxxxxxxx, XX 00000 ("ASSIGNEE"),
desires to acquire all of the right, title and interest of ASSIGNOR in, to and
under the MARKS, together with the goodwill of the business symbolized by the
MARKS;
WHEREAS, ASSIGNEE is a successor to a portion of the business of ASSIGNOR to
which the MARKS pertain;
WHEREAS, ASSIGNOR and ASSIGNEE have entered into a certain Asset Purchase
Agreement, dated February 25, 2004 assigning, among other things, all right,
title and interest in and to the MARKS and in and to the registrations and/or
applications for same from ASSIGNOR to ASSIGNEE;
NOW, THEREFORE, for good and valuable consideration paid by ASSIGNEE to
ASSIGNOR, the receipt and sufficiency of which hereby is acknowledged, ASSIGNOR
hereby sells, transfers, conveys, assigns and delivers to ASSIGNEE its entire
right, title and interest in, to and under the MARKS, and to the applications
and/or registrations for the MARKS (and the right to apply for the foregoing),
together with the goodwill of the business symbolized by the MARKS and the
portion of the business of the ASSIGNOR to which the MARKS pertain, including
the right to xxx and recover for any past infringement thereof.
IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be duly executed by
an authorized officer on this ____ day of ___________, 2004.
By:
------------------------------
Name:
----------------------------
Title:
---------------------------
4
ATTACHMENT 1
MARKS
5
EXHIBIT B
CONFIRMATORY COPYRIGHT ASSIGNMENT AGREEMENT
IN THE UNITED STATES COPYRIGHT OFFICE
ASSIGNMENT
WHEREAS, ParkerVision, Inc., a Florida corporation, with offices at 0000
Xxxxxxxxxx Xxx, Xxxxxxxxxxxx, Xxxxxxx 00000 ("ASSIGNOR") owns certain works of
authorship and/or copyrights, and registrations for such works of authorship and
copyrights, as set forth in Attachment 1 attached hereto and incorporated herein
by this reference ("COPYRIGHTS"); and
WHEREAS, Thomson Broadcast & Media Solutions, Inc., a Delaware corporation, with
offices at 0000 X. Xxxxxxx Xxxx Xxxxxxxxx, Xxxxxxxxx, XX 00000 ("ASSIGNEE"),
desires to acquire all of the right, title and interest of ASSIGNOR in, to and
under the COPYRIGHTS;
WHEREAS, ASSIGNOR and ASSIGNEE have entered into a certain Asset Purchase
Agreement, dated February 25, 2004 assigning, among other things, all right,
title and interest in and to the COPYRIGHTS and in and to the registrations for
same from ASSIGNOR to ASSIGNEE;
NOW, THEREFORE, for good and valuable consideration paid by ASSIGNEE to
ASSIGNOR, the receipt and sufficiency of which hereby is acknowledged, ASSIGNOR
hereby sells, transfers, conveys, assigns and delivers to ASSIGNEE its entire
right, title and interest in, to and under the COPYRIGHTS, including all
registrations for the COPYRIGHTS (and the right to apply for any of the
foregoing); all rights to causes of action and remedies related thereto
(including, without limitation, the right to xxx for past, present or future
infringement, misappropriation or violation of rights related to the foregoing);
and any and all other rights and interests arising out of, in connection with or
in relation to the COPYRIGHTS.
IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be duly executed by
an authorized officer on this ____ day of ___________, 2004.
By:
---------------------------------
Name:
-------------------------------
Title:
------------------------------
STATE OF _______________ )
) ss.
COUNTY OF _____________ )
On _______________________, 200_, before me, the undersigned notary public in
and for said County and State, personally appeared ________________________,
____ personally known to me [or]
____ proved to me on the basis of satisfactory evidence
6
to be the person(s) whose name(s) __________________ subscribed to the within
instrument and acknowledged to me that __________________ executed the same in
____________________ authorized capacity(ies) and that, by _______________
signature(s) on the instrument, the person(s) or the entity(ies) upon behalf of
which the person(s) acted executed the instrument.
WITNESS my hand and official seal.
________________________________
My commission expires on
__________________________
7
ATTACHMENT 1
COPYRIGHTS
8
EXHIBIT C
CONFIRMATORY DOMAIN NAME ASSIGNMENT AGREEMENT
ASSIGNMENT
WHEREAS, ParkerVision, Inc., a Florida corporation, with offices at 0000
Xxxxxxxxxx Xxx, Xxxxxxxxxxxx, Xxxxxxx 00000 ("ASSIGNOR") owns certain rights
with respect to the Internet domain names set forth in Attachment 1 attached
hereto and incorporated herein by this reference ("DOMAIN NAMES"); and
WHEREAS, Thomson Broadcast & Media Solutions, Inc., a Delaware corporation, with
offices at 0000 X. Xxxxxxx Xxxx Xxxxxxxxx, Xxxxxxxxx, XX 00000 ("ASSIGNEE"),
desires to acquire all of the right, title and interest of ASSIGNOR in, to and
under the DOMAIN NAMES;
WHEREAS, ASSIGNOR and ASSIGNEE have entered into a certain Asset Purchase
Agreement, dated February 25, 2004 assigning, among other things, all right,
title and interest in and to the DOMAIN NAMES and in and to the registrations
for same from ASSIGNOR to ASSIGNEE;
NOW, THEREFORE, for good and valuable consideration paid by ASSIGNEE to
ASSIGNOR, the receipt and sufficiency of which hereby is acknowledged, ASSIGNOR
hereby sells, transfers, conveys, assigns and delivers to ASSIGNEE its entire
right, title and interest in, to and under the DOMAIN NAMES, including all
registrations for the DOMAIN NAMES (and the right to apply for any of the
foregoing); all goodwill associated therewith, all contract rights related to
the DOMAIN NAMES, all rights to causes of action and remedies related to the
foregoing (including, without limitation, the right to xxx for past, present or
future infringement, misappropriation or violation of rights related to the
foregoing); and any and all other rights and interests arising out of, in
connection with or in relation to the DOMAIN NAMES.
IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be duly executed by
an authorized officer on this ____ day of ___________, 2004.
By:
-------------------------------------
Name:
-----------------------------------
Title:
----------------------------------
9
ATTACHMENT 1
DOMAIN NAMES
10
