EXHIBIT 10.41
INTELLECTUAL PROPERTY
SECURITY AGREEMENT
This Intellectual Property Security Agreement (this "Agreement") is
made as of December 14, 2001 by and between VERSO TECHNOLOGIES, INC.
("Borrower"), and SILICON VALLEY BANK, a California banking corporation
("Secured Party").
RECITALS
A. Secured Party has agreed to lend to Borrower certain funds (the
"Loans"), pursuant to a Loan and Security Agreement dated December 14, 2001 (the
"Loan Agreement") and Borrower desires to borrow such funds from Secured Party.
B. In order to induce Secured Party to make the Loans, Borrower has
agreed to grant a security interest in certain intangible property to Secured
Party for purposes of securing the obligations of Borrower to Secured Party.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:
1. Grant of Security Interest. As collateral security for the prompt
and complete payment and performance of all of Borrower's present or future
indebtedness, obligations and liabilities to Secured Party, Borrower hereby
grants, assigns, transfers, and conveys a security interest to Secured Party, as
security, but not as an ownership interest, in and to Borrower's entire right,
title and interest in, to and under the following (all of which shall
collectively be called the "Collateral"):
(a) All of present and future United States registered
copyrights and copyright registrations, including, without limitation,
the registered copyrights, maskworks, software, computer programs and
other works of authorship subject to United States copyright protection
listed in Exhibit A-1 to this Agreement (and including all of the
exclusive rights afforded a copyright registrant in the United States
under 17 U.S.C. ss.106 and any exclusive rights which may in the future
arise by act of Congress or otherwise) and all present and future
applications for copyright registrations (including applications for
copyright registrations of derivative works and compilations)
(collectively, the "Registered Copyrights"), and any and all royalties,
payments, and other amounts payable to Borrower in connection with the
Registered Copyrights, together with all renewals and extensions of the
Registered Copyrights, the right to recover for all past, present, and
future infringements of the Registered Copyrights, and all computer
programs, computer databases, computer program flow diagrams, source
codes, object codes and all tangible property embodying or
incorporating the Registered Copyrights, and all other rights of every
kind whatsoever accruing thereunder or pertaining thereto.
(b) All present and future copyrights, maskworks, software,
computer programs and other works of authorship subject to (or capable
of becoming subject to) United States copyright protection which are
not registered in the United States Copyright Office (the "Unregistered
Copyrights"), whether now owned or hereafter acquired, including
without limitation the Unregistered Copyrights listed in Exhibit A-2 to
this Agreement, and any and all royalties, payments, and other amounts
payable to Borrower in connection with the Unregistered Copyrights,
together with all renewals and extensions of the Unregistered
Copyrights, the right to recover for all past, present, and future
infringements of the Unregistered Copyrights, and all computer
programs, computer databases, computer program flow diagrams, source
codes, object codes and all tangible property embodying or
incorporating the Unregistered Copyrights, and all other rights of
every kind whatsoever accruing thereunder or pertaining thereto. The
Registered Copyrights and the Unregistered Copyrights collectively are
referred to herein as the "Copyrights."
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(c) All right, title and interest in and to any and all
present and future license agreements with respect to the Copyrights,
including without limitation the license agreements listed in Exhibit
A-3 to this Agreement (the "Licenses").
(d) All present and future accounts, accounts receivable and
other rights to payment arising from, in connection with or relating to
the Copyrights.
(e) Any and all trade secrets, and any and all intellectual
property rights in computer software and computer software products now
or hereafter existing, created, acquired or held;
(f) Any and all design rights which may be available to
Borrower now or hereafter existing, created, acquired or held;
(g) All patents, patent applications and like protections
including, without limitation, improvements, divisions, continuations,
renewals, reissues, extensions and continuations-in-part of the same,
including without limitation the patents and patent applications set
forth on Exhibit B attached hereto (collectively, the "Patents");
(h) Any trademark and servicemark rights, whether registered
or not, applications to register and registrations of the same and like
protections, and the entire goodwill of the business of Borrower
connected with and symbolized by such trademarks, including without
limitation those set forth on Exhibit C attached hereto (collectively,
the "Trademarks"); provided, however, that Secured Party shall not
acquire any interest in any intent to use a federal trademark
application for a trademark, servicemark, or other xxxx filed on
Borrower's behalf prior to the filing under applicable law of a
verified statement of use (or equivalent) for such xxxx that is the
subject of such application;
(i) Any and all claims for damages by way of past, present and
future infringements of any of the rights included above, with the
right, but not the obligation, to xxx for and collect such damages for
said use or infringement of the intellectual property rights identified
above;
(j) All licenses or other rights to use any of the Copyrights,
Patents or Trademarks, and all license fees and royalties arising from
such use to the extent permitted by such license or rights;
(k) All amendments, extensions, renewals and extensions of any
of the Copyrights, Trademarks or Patents; and
(l) All proceeds and products of the foregoing, including
without limitation all payments under insurance or any indemnity or
warranty payable in respect of any of the foregoing.
2. Authorization and Request. Borrower authorizes and requests that the
Register of Copyrights and the Commissioner of Patents and Trademarks record
this Agreement.
3. Covenants and Warranties. Borrower represents, warrants, covenants
and agrees as follows:
(a) Borrower is now the sole owner of the Collateral, except
for non-exclusive licenses granted by Borrower to its customers in the
ordinary course of business.
(b) Listed on Exhibits A-1 and A-2 are all copyrights owned by
Borrower,
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in which Borrower has an interest, or which are used in Borrower's
business.
(c) Each employee, agent and/or independent contractor who has
participated in the creation of the property constituting the
Collateral has either executed an assignment of his or her rights of
authorship to Borrower or is an employee of Borrower acting within the
scope of his or her employment and was such an employee at the time of
said creation.
(d) Subject to Section 9(5) of the Schedule to the Loan
Agreement, all of Borrower's present and future maskworks, software,
computer programs and other works of authorship subject to (or capable
of becoming subject to) United States copyright protection, the sale,
licensing or other disposition of which results in royalties
receivable, license fees receivable, accounts receivable or other sums
owing to Borrower (collectively, "Receivables"), have been and shall be
registered with the United States Copyright Office prior to the date
Borrower requests or accepts any loan from Secured Party with respect
to such Receivables and prior to the date Borrower includes any such
Receivables in any accounts receivable aging, borrowing base report or
certificate or other similar report provided to Secured Party, and
Borrower shall provide to Secured Party copies of all such
registrations promptly upon the receipt of the same.
(e) Borrower shall undertake all reasonable measures to cause
its employees, agents and independent contractors to assign to Borrower
all rights of authorship to any copyrighted material in which Borrower
has or may subsequently acquire any right or interest.
(f) Performance of this Agreement does not conflict with or
result in a breach of any agreement to which Borrower is bound, except
to the extent that certain intellectual property agreements prohibit
the assignment of the rights thereunder to a third party without the
licensor's or other party's consent and this Agreement constitutes an
assignment.
(g) During the term of this Agreement, Borrower will not
transfer or otherwise encumber any interest in the Collateral, except
for Permitted Liens (as such term is defined in the Loan Agreement) and
non-exclusive licenses granted by Borrower in the ordinary course of
business or as set forth in this Agreement;
(h) Each of the Patents, Trademarks, and Copyrights is valid
and enforceable, and no part of the Collateral has been judged invalid
or unenforceable, in whole or in part, and* no claim has been made that
any part of the Collateral violates the rights of any third party;
*, EXCEPT AS SET FORTH IN SECTION (8) OF THE SCHEDULE TO THE LOAN AGREEMENT,
(i) Borrower shall promptly advise Secured Party of any
material adverse change in the composition of the Collateral, including
but not limited to any subsequent ownership right of the Borrower in or
to any Trademark, Patent or Copyright not specified in this Agreement;
(j) Borrower shall* (i) protect, defend and maintain the
validity and enforceability of the Trademarks, Patents and Copyrights,
(ii) to detect infringements of the Trademarks, Patents and Copyrights
and promptly advise Secured Party in writing of material infringements
detected and (iii) not allow any Trademarks, Patents, or Copyrights to
be abandoned, forfeited or dedicated to the public without the written
consent of Secured Party, which shall not be unreasonably withheld
unless Borrower determines that reasonable business practices suggest
that abandonment is appropriate.
*USE ITS COMMERCIALLY REASONABLE BEST EFFORTS TO:
(k) Subject to Section 9(5) of the Schedule to the Loan
Agreement, Borrower
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shall promptly register the most recent version of any of Borrower's
Copyrights, if not so already registered, and shall, from time to time,
execute and file such other instruments, and take such further actions
as Secured Party may reasonably request from time to time to perfect or
continue the perfection of Secured Party's interest in the Collateral;
(l) This Agreement creates, and in the case of after acquired
Collateral, this Agreement will create at the time Borrower first has
rights in such after acquired Collateral, in favor of Secured Party a
valid and perfected first priority security interest in the Collateral
in the United States securing the payment and performance of the
obligations evidenced by the Loan Agreement upon making the filings
referred to in clause (m) below;
(m) To* knowledge, except for, and upon, the filing with
the United States Patent and Trademark office with respect to the
Patents and Trademarks and the Register of Copyrights with respect to
the Copyrights necessary to perfect the security interests created
hereunder and except as has been already made or obtained, no
authorization, approval or other action by, and no notice to or filing
with, any U.S. governmental authority or U.S. regulatory body is
required either (i) for the grant by Borrower of the security interest
granted hereby or for the execution, delivery or performance of this
Agreement by Borrower in the U.S. or (ii) for the perfection in the
United States or the exercise by Secured Party of its rights and
remedies thereunder;
*BORROWER'S
(n) All information heretofore, herein or hereafter supplied
to Secured Party by or on behalf of Borrower with respect to the
Collateral is accurate and complete in all material respects.
(o) Borrower shall not enter into any agreement that would
materially impair or conflict with Borrower's obligations hereunder
without Secured Party's prior written consent, which consent shall not
be unreasonably withheld. Borrower shall not permit the inclusion in
any material contract to which it becomes a party of any provisions
that could or might in any way prevent the creation of a security
interest in Borrower's rights and interest in any property included
within the definition of the Collateral acquired under such contracts,
except that certain contracts may contain anti-assignment provisions
that could in effect prohibit the creation of a security interest in
such contracts.
(p) Upon any executive officer of Borrower obtaining actual
knowledge thereof, Borrower will promptly notify Secured Party in
writing of any event that materially adversely affects the value of any
material Collateral, the ability of Borrower to dispose of any material
Collateral or the rights and remedies of Secured Party in relation
thereto, including the levy of any legal process against any of the
Collateral.
4. Secured Party's Rights. Secured Party shall have the right, but not
the obligation, to take, at Borrower's sole expense, any actions that Borrower
is required under this Agreement to take but which Borrower fails to take, after
fifteen (15) days' notice to Borrower. Borrower shall reimburse and indemnify
Secured Party for all reasonable costs and reasonable expenses incurred in the
reasonable exercise of its rights under this section 4.
5. Inspection Rights. Borrower hereby grants to Secured Party and its
employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable written notice to Borrower, and any of Borrower's
plants and facilities that manufacture, install or store products (or that have
done so during the prior six-month period) that are sold utilizing any of the
Collateral, and to inspect the products and quality control records relating
thereto upon reasonable written notice to Borrower and as often as may be
reasonably requested, but not more than one (1) in every six (6) months;
provided, however, nothing herein shall entitle Secured
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Party access to Borrower's trade secrets and other proprietary information.
6. Further Assurances; Attorney in Fact.
(a) Borrower will, subject to any prior licenses, encumbrances
and restrictions and prospective licenses, make, execute, acknowledge
and deliver, and file and record in the proper filing and recording
places in the United States, all such instruments, including,
appropriate financing and continuation statements and collateral
agreements and filings with the United States Patent and Trademarks
Office and the Register of Copyrights, and take all such action as may
reasonably be deemed necessary or advisable, or as requested by Secured
Party, to perfect Secured Party's security interest in all Copyrights,
Patents and Trademarks and otherwise to carry out the intent and
purposes of this Agreement, or for assuring and confirming to Secured
Party the grant or perfection of a security interest in all Collateral.
(b) Upon an Event of Default, Borrower hereby irrevocably
appoints Secured Party as Borrower's attorney-in-fact, with full
authority in the place and stead of Borrower and in the name of
Borrower, Secured Party or otherwise, from time to time in Secured
Party's discretion, upon Borrower's failure or inability to do so, to
take any action and to execute any instrument which Secured Party may
deem necessary or advisable to accomplish the purposes of this
Agreement, including:
(i) To modify, in its sole discretion, this Agreement
without first obtaining Borrower's approval of or signature to
such modification by amending Exhibit X-0, Xxxxxxx X-0,
Exhibit A-3, Exhibit B and Exhibit C, thereof, as appropriate,
to include reference to any right, title or interest in any
Copyrights, Patents or Trademarks acquired by Borrower after
the execution hereof or to delete any reference to any right,
title or interest in any Copyrights, Patents or Trademarks in
which Borrower no longer has or claims any right, title or
interest; and
(ii) To file, in its sole discretion, one or more
financing or continuation statements and amendments thereto,
relative to any of the Collateral without the signature of
Borrower where permitted by law.
7. Events of Default. The occurrence of any of the following shall
constitute an Event of Default under this Agreement:
(a) An Event of Default occurs under the Loan Agreement; or
(b) Borrower breaches any warranty made by
Borrower in this Agreement*; or
(c) Borrower breaches any agreement made by borrower in
this agreement that is not cured within 5 business days (as defined in the loan
agreement) after the date due.
8. Remedies. Upon the occurrence and continuance of an Event of
Default*, Secured Party shall have the right to exercise all the remedies of a
secured party under the California Uniform Commercial Code, including without
limitation the right to require Borrower to assemble the Collateral and any
tangible property in which Secured Party has a security interest and to make it
available to Secured Party at a place designated by Secured Party. Secured Party
shall have a nonexclusive, royalty free license to use the Copyrights, Patents
and Trademarks to the extent reasonably necessary to permit Secured Party to
exercise its rights and remedies upon the occurrence of an Event of Default.
**Borrower will pay any expenses (including reasonable attorney's fees) incurred
by Secured Party in connection with the exercise of any of Secured Party's
rights hereunder, including without limitation any expense incurred in
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disposing of the Collateral. All of Secured Party's rights and remedies with
respect to the Collateral shall be cumulative.
*UNDER THIS AGREEMENT (AS SET FORTH IN SECTION 7 ABOVE)
**EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN SECTION 14 BELOW,
9. Indemnity. Borrower agrees to defend, indemnify and hold harmless
Secured Party and its officers, employees, and agents against: (a) all
obligations, demands, claims, and liabilities claimed or asserted by any other
party in connection with the transactions contemplated by this Agreement, and
(b) all losses or expenses in any way suffered, incurred, or paid by Secured
Party as a result of or in any way arising out of, following or consequential to
transactions between Secured Party and Borrower, whether under this Agreement or
otherwise (including without limitation, reasonable attorneys fees and
reasonable expenses), except for losses arising from or out of Secured Party's
gross negligence or willful misconduct*.
*AND EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN SECTION 14 BELOW
10. Release. At such time as Borrower shall completely satisfy all of
the obligations secured hereunder, Secured Party shall execute and deliver to
Borrower all lien releases and other instruments as may be reasonably necessary
or proper to terminate Secured Party's security interest in the Collateral,
subject to any disposition of the Collateral which may have been made by Secured
Party pursuant to this Agreement. For the purpose of this Agreement, the
obligations secured hereunder shall be deemed to continue if Borrower enters
into any bankruptcy or similar proceeding at a time when any amount paid to
Secured Party 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.
11. No Waiver. No course of dealing between Borrower and Secured Party,
nor any failure to exercise nor any delay in exercising, on the part of Secured
Party, 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 Secured Party shall preclude any
other or further exercise of such right, power, or privilege or the exercise of
any other right, power, or privilege by Secured Party.
12. Rights Are Cumulative. All of Secured Party'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.
13. Course of Dealing. No course of dealing, nor any failure to
exercise, nor any delay in exercising any right, power or privilege hereunder
shall operate as a waiver thereof.
14. Attorneys' Fees. If any action relating to this Agreement is
brought by either party hereto against the other party, the prevailing party
shall be entitled to recover reasonable attorneys fees, costs and disbursements.
15. Amendments. *Agreement may be amended only by a written instrument
signed by both parties hereto. To the extent that any provision of this
Agreement conflicts with any provision of the Loan Agreement, the provision
giving Secured Party 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 Secured Party 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.
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*EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN SECTION 6(B)(I) HEREOF, THIS
16. 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 such 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.
17. California Law and Jurisdiction. This Agreement shall be governed
by the laws of the State of California, without regard for choice of law
provisions. Borrower and Secured Party consent to the nonexclusive jurisdiction
of any state or federal court located in Santa Xxxxx County, California.
18. Confidentiality. In handling any confidential information, Secured
Party shall exercise the same degree of care that it exercises with respect to
its own proprietary information of the same types to maintain the
confidentiality of any non-public information thereby received or received
pursuant to this Agreement except that the disclosure of this information may be
made (i) to the affiliates of the Secured Party, (ii) to prospective transferee
or purchasers of an interest in the obligations secured hereby, provided that
they have entered into a comparable confidentiality agreement in favor of
Borrower and have delivered a copy to Borrower, (iii) as required by law,
regulation, rule or order, subpoena judicial order or similar order and (iv) as
may be required in connection with the examination, audit or similar
investigation of Secured Party.
19. WAIVER OF RIGHT TO JURY TRIAL. SECURED PARTY AND BORROWER 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 SECURED PARTY AND BORROWER; OR
(III) ANY CONDUCT, ACTS OR OMISSIONS OF SECURED PARTY OR BORROWER OR ANY OF
THEIR DIRECTORS, OFFICERS, EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER PERSONS
AFFILIATED WITH SECURED PARTY OR BORROWER; IN EACH OF THE FOREGOING CASES,
WHETHER SOUNDING IN CONTRACT OR TORT OR OTHERWISE.
20. Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original but all of which
together shall constitute the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the day
and year first above written.
BORROWER:
Verso Technologies, Inc.
By: /s/ Xxxxxx X. Xxxxxxx
-------------------------------------
Title: CFO & VP
----------------------------------
Name (please print):
Xxxxxx X. Xxxxxxx
-----------------------------------------
ADDRESS OF BORROWER:
000 Xxxxxxxx Xxxxxxx, Xxxxx 000
Xxxxxxx, Xxxxxxx 00000
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SECURED PARTY:
SILICON VALLEY BANK
By: /s/ Xxxxx Xxxxxxxx
-------------------------------------
Title: Vice President
----------------------------------
Name (please print):
Xxxxx Xxxxxxxx
-----------------------------------------
ADDRESS OF SECURED PARTY:
0000 Xxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
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STATE OF GEORGIA )
---------------------------- ) ss.
COUNTY OF XXXX )
---------------------------
On December 14, 2001, before me, Xxxxx Xxxxxxx, 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.
/s/ Xxxxx Xxxxxxx
-------------------------------
(Seal)
STATE OF )
---------------------------- ) ss.
COUNTY OF )
---------------------------
On _____________________, 2001, 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)
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EXHIBIT "A-1"
REGISTERED COPYRIGHTS
(including copyrights that are the subject of an application for registration)
No registered copyrights.
EXHIBIT "A-2"
UNREGISTERED COPYRIGHTS
No unregistered copyrights.
EXHIBIT "A-3"
DESCRIPTION OF LICENSE AGREEMENTS
No license agreements are currently in place. however, we have agreed
to pursue a bilateral sales and OEM agreement with Telco Systems. A draft copy
of an OEM agreement is in review, but neither Verso or Telco Systems have agreed
to the final terms. In summary, while we have no signed agreement with Telco
Systems today, we expect to have one in the near future. Until that time, we are
working together under an informal sales, marketing and technology alliance.
EXHIBIT "B"
PATENTS
(including patents that are the subject of an application for registration)
--------------------------------------------------------------------------------
Patent Country Serial/Application Filing Date Status
Number
Encoding Method 4645,916 9-9-83
and related systems
and product
EXHIBIT "C"
TRADEMARKS
TRADEMARKS
(including trademarks that are the subject of an application for registration)
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Xxxx Country Serial/Application Filing Date Status
Number
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Eltrax Systems USA N/A N/A N/A
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Cercus USA Serial Number 3/24/2000 Pending
76009869
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Verso USA Serial Number 3/24/2000 Pending
76008617
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IMessaging USA Serial Number 2/10/2000 Pending
75915659
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JumpStart USA Serial Number 3/24/2000 Pending
76009857
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Softswitch Migration USA Serial Number 8/17/2001 Pending
Solutions 76301471
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Softswitch Migration USA Serial Number 8/17/2001 Pending
Platform 76301470
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Packet 7 USA 76227733 3/21/2001 Pending
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