EXHIBIT 10.37
ASSIGNMENT OF INTELLECTUAL PROPERTY
THIS ASSIGNMENT OF INTELLECTUAL PROPERTY ("Assignment") is made as of
May 3, 2002, by and among INTERWORLD CORPORATION, a Delaware corporation
("InterWorld"), J Net Enterprises, Inc., a Nevada corporation ("J Net"),
and IW Holdings, Inc., a Delaware corporation and wholly-owned subsidiary
of J Net ("Holdings").
WHEREAS, on June 30, 2001, InterWorld and J Net entered into a credit
facility whereby J Net agreed to loan up to $20,000,000 to InterWorld (the
"Credit Facility");
WHEREAS, on June 30, 2001, to secure indebtedness under the Credit
Facility, J Net and InterWorld entered into a security agreement granting J
Net a security interest in certain collateral of InterWorld, including, but
not limited to, all of its Intellectual Property (as defined below) (the
"Security Agreement");
WHEREAS, on February 8, 2002, to further secure indebtedness under the
Credit Facility, J Net and InterWorld entered into a security agreement
granting J Net a security interest in certain trademarks and service marks
of InterWorld (the "IP Security Agreement," and together with the Security
Agreement, the "Security Agreements");
WHEREAS, J Net, among other things, previously notified InterWorld of
its default under the Credit Facility and InterWorld acknowledged such
default pursuant to the Acknowledgement of Default and Assignment of
Payments Agreement, dated February 15, 2002, by and between InterWorld and
J Net;
WHEREAS, as of the date hereof, InterWorld currently owes J Net
approximately $17 million under the Credit Facility;
WHEREAS, InterWorld and J Net both acknowledge that the Intellectual
Property does not have a value in excess of InterWorld's current
indebtedness under the Credit Facility; and
WHEREAS, InterWorld is the owner of certain Intellectual Property (as
defined below) which it desires to assign to J Net through J Net's wholly-
owned subsidiary, Holdings, in accordance with the provisions of SS 9 620 of
the Uniform Commercial Code of the State of New York (the "NY UCC")
relating to strict foreclosure.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:
1. The Intellectual Property. J Net and InterWorld agree that, for
purposes of this Assignment, Intellectual Property of InterWorld
shall mean all (A) patents and pending patent applications
together with any and all continuations, divisions, reissues,
extensions and renewals thereof, (B) trade secrets, know-how,
inventions, formulae and processes, whether trade secrets or not,
(C) trade names, trademarks, service names, service marks,
logos, assumed names, internet domain names, brand names and all
registrations and applications therefor together with the goodwill
of the business symbolized thereby, including but not limited to
those identified on Schedule A attached hereto, (D) any
copyrights, registrations and applications therefor, (E)
assignable technology rights and licenses, and (F) assignable
computer software and any similar type of proprietary intellectual
property rights, in each case which is owned or licensed by
either InterWorld, or any of InterWorld's affiliates, and used or
held for use primarily in the business.
2. Conveyance. InterWorld and J Net each hereby assigns, transfers
and conveys to Holdings all of their right, title and interest in
and to the Intellectual Property of InterWorld, the goodwill of
the business symbolized thereby, and the right to recover damages
and profits for past infringement thereof.
3. Waiver. Except as provided in SS 9-602 of the NY UCC, InterWorld
hereby expressly waives any and all rights, including, but not
limited to, those rights relating to InterWorld's right to redeem
the Intellectual Property pursuant to SS 9-624 of the NY UCC,
provided under Article 9 of the NY UCC.
4. The Credit Facility. InterWorld and J Net hereby agree that this
Assignment by InterWorld of the Intellectual Property to Holdings
will be in full accord, satisfaction and discharge of all
liabilities owed by InterWorld to J Net under the Credit Facility;
and InterWorld and J Net hereby further agree that the execution
of this Assignment shall terminate such Credit Facility and the
related Security Agreements.
5. Master Alliance Agreement. Pursuant to Section 17.7 of the
Master Alliance Agreement, dated February 15, 2002, by and between
InterWorld and Titan Technologies, LP, d/b/a Titan Ventures, LP
(the "Master Alliance Agreement"), InterWorld hereby transfers and
assigns to Holdings, and Holdings hereby expressly assumes, as
fully and effectually as if it had been an original party to the
Master Alliance Agreement, all of the obligations, rights, title
and interests of InterWorld under the Master Alliance Agreement,
including the due and punctual performance of all the obligations
to be performed by InterWorld under the Master Alliance Agreement.
Neither J Net nor Holdings is assuming, nor shall they be deemed
to have assumed, any liability of InterWorld or its affiliates of
any kind or nature whatsoever, except as expressly provided in
this Assignment or in the Master Alliance Agreement.
6. Governing Law. This Assignment shall be governed by and construed
in accordance with the laws of the United States of America and of
the State of New York.
IN WITNESS WHEREOF, InterWorld has caused this Assignment to be
executed, all as of the day and year first above written.
INTERWORLD CORPORATION
By: /s/ Xxxxxx X. Xxxxx
________________________
Name: Xxxxxx X. Xxxxx
Title: Executive Vice President and
Chief Financial Officer
STATE OF TEXAS :
COUNTY OF COLLIN:
On this 3rd day of May 2002, before me, a Notary Public in and for
the State and County aforesaid, personally appeared XXXXXX X. XXXXX,
known by me to be the person above named and an officer of InterWorld
Corporation, duly authorized to execute this Assignment of Intellectual
Property on behalf of InterWorld Corporation, who signed and executed the
foregoing instrument on behalf of InterWorld Corporation.
/s/ Xxxxxxxxx X. Xxxxxxxxxxx
_____________________________
Notary Public
My Commission Expires: 6-27-05
Acknowledged and Accepted:
J NET ENTERPRISES, INC.
By: /s/ Xxxx X. Xxxxx
_____________________________________
Name: Xxxx X. Xxxxx
Title: President and Chief Operating Officer
IW HOLDINGS, INC.
By: /s/ Xxxx X. Xxxxx
_____________________________________
Name: Xxxx X. Xxxxx
Title: President
SCHEDULE A
TRADEMARK AND TRADENAME REGISTRATIONS
INTERWORLD Class 9 Reg. 1/12/99 2,217,559
Classes 35,36,42 Reg. 5/20/97 2,062,548
ENTERPRISE BROKER Class 9 Reg. 11/7/00 2,403,016
Applications
ARMADA Class 9 Filed 4/7/00 76/020,984
RETAIL ESSENTIALS Class 42 Filed 2/3/00 75/908,295
WEB ARENA Class 9 Filed 3/4/98 75/444,389
Class 35 Filed 3/4/98 75/444,388
Class 36 Filed 3/4/98 75/444,387
Class 42 Filed 3/4/98 75/444,386
MISSION READY Class 9 Filed 4/7/00 76/020,983
COMMERCE INTELLIGENCE Class 9 Filed 3/31/00 76/015,006
