INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit
10.4
This
Intellectual Property Security Agreement (this “IP Agreement”) is made as of the
31st day of March, 2008 by and between GLOBALOPTIONS GROUP, INC., a
Delaware corporation, with offices at 00 Xxxxxxxxxxx Xxxxx, 00xx Xxxxx, Xxx
Xxxx, Xxx Xxxx 00000 (“Grantor”), and SILICON VALLEY BANK, a
California corporation, with its principal place of business at 0000 Xxxxxx
Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 and with a loan production office located
at 0000 Xxxxxx Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxxxxxxx 00000
(“Lender”).
A. Lender
has agreed to make advances of money and to extend certain financial
accommodations to GLOBALOPTIONS, INC., a Delaware corporation
(“Global”), and THE BODE
TECHNOLOGY GROUP, INC., a Delaware corporation (“Bode”) (Global and Bode
are jointly and severally, individually and collectively, referred to herein as
“Borrower”), pursuant to a certain Fourth Amended and Restated Loan and Security
Agreement dated of even date herewith, by and among Global, Bode, and Lender,
and as may be further amended from time to time (as amended, the “Loan
Agreement”). In addition to being secured by the terms of the Loan
Agreement, the Loan is guaranteed by Grantor pursuant to a certain Unconditional
Guaranty dated as of even date herewith (as amended, the “Guaranty”), which is
secured pursuant to the terms of a certain Security Agreement dated of even date
herewith, between Grantor and Lender (as amended, the “Security
Agreement”). Lender is willing to enter into certain financial
accommodations with Borrower and Grantor, but only upon the condition, among
others, that Grantor shall grant to Lender a security interest in certain
Copyrights, Trademarks, Patents, and Mask Works, and other assets, to secure the
obligations of Grantor under the Guaranty and the Security
Agreement. Defined terms used but not defined herein shall have the
same meanings as in the Loan Agreement.
B. Pursuant
to the terms of the Security Agreement, Grantor has granted to Lender a security
interest in all of Grantor’s right title and interest, whether presently
existing or hereafter acquired in, to and under all of the Collateral (as
defined therein).
NOW, THEREFORE, for good and
valuable consideration, receipt of which is hereby acknowledged and intending to
be legally bound, as collateral security for the prompt and complete payment
when due of Borrower’s and Grantor’s Indebtedness (as defined below), Grantor
hereby represents, warrants, covenants and agrees as follows:
1. Grant of Security
Interest. As collateral security for the prompt and complete payment and
performance of all of Borrower’s and Grantor’s present or future indebtedness,
obligations and liabilities to Lender (hereinafter, the “Indebtedness”),
including, without limitation, under the Loan Agreement, the Guaranty and the
Security Agreement, Grantor hereby grants a security interest in all of
Grantor’s right, title and interest in, to and under its registered and
unregistered intellectual property collateral (all of which shall collectively
be called the “Intellectual Property Collateral”), including, without
limitation, the following:
(a) Any
and all copyright rights, copyright applications, copyright registrations and
like protections in each work or authorship and derivative work thereof, whether
published or unpublished, registered or unregistered, and whether or not the
same also constitutes a trade secret, now or hereafter existing, created,
acquired or held, including without limitation those set forth on EXHIBIT
A attached hereto (collectively, the “Copyrights”);
(b) Any
and all trade secret rights, including any rights to unpatented inventions,
know-how, operating manuals, license rights and agreements, and
confidential information, and any and all intellectual property rights in
computer software and computer software products now or hereafter existing,
created, acquired or held;
(c) Any
and all design rights which may be available to Grantor now or hereafter
existing, created, acquired or held;
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(d) 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”);
(e) Any
trademark and service xxxx rights, slogans, trade dress, and tradenames, trade
styles, whether registered or not, applications to register and
registrations of the same and like protections, and the entire goodwill of the
business of Grantor connected with and symbolized by such trademarks, including
without limitation those set forth on EXHIBIT
C attached hereto (collectively, the “Trademarks”);
(f) All
mask works or similar rights available for the protection of semiconductor
chips, now owned or hereafter acquired, including, without limitation those set
forth on EXHIBIT
D attached hereto (collectively, the “Mask
Works”);
(g) 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;
(h) All
licenses or other rights to use any of the Copyrights, Patents, Trademarks, or
Mask Works and all license fees and royalties arising from such use to the
extent permitted by such license or rights, including, without limitation those
set forth on EXHIBIT
E attached hereto (collectively, the “Licenses”); and
(i) All
amendments, extensions, renewals and extensions of any of the Copyrights,
Trademarks, Patents, or Mask Works; and
(j) 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. Grantor authorizes and requests that the Register of
Copyrights and the Commissioner of Patents and Trademarks record this IP
Agreement, and any amendments thereto, or copies thereof.
3. Covenants and
Warranties. Grantor represents, warrants, covenants and agrees
as follows:
(a) Grantor
is now the sole owner of the Intellectual Property Collateral, except for
non-exclusive licenses granted by Grantor to its customers in the ordinary
course of business.
(b) Performance
of this IP Agreement does not conflict with or result in a breach of any
material agreement to which Grantor is bound.
(c) During
the term of this IP Agreement, Grantor will not transfer or otherwise encumber
any interest in the Intellectual Property Collateral, except for non-exclusive
licenses granted by Grantor in the ordinary course of business or as set forth
in this IP Agreement;
(d) To
its knowledge, each of the Patents is valid and enforceable, and no part of the
Intellectual Property Collateral has been judged invalid or unenforceable, in
whole or in part, and no claim has been made that any part of the Intellectual
Property Collateral violates the rights of any third party;
(e) Grantor
shall promptly advise Lender of any material adverse change in the composition
of the Collateral, including but not limited to any subsequent ownership right
of the Grantor in or to any Trademark, Patent, Copyright, or Mask Work specified
in this IP Agreement;
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(f) Grantor
shall (i) protect, defend and maintain the validity and enforceability of the
Trademarks, Patents, Copyrights, and Mask Works, (ii) use its best efforts to
detect infringements of the Trademarks, Patents, Copyrights, and Mask Works and
promptly advise Lender in writing of material infringements detected and (iii)
not allow any Trademarks, Patents, Copyrights, or Mask Works to be abandoned,
forfeited or dedicated to the public without the written consent of Lender,
which shall not be unreasonably withheld, unless Grantor determines that
reasonable business practices suggest that abandonment is
appropriate.
(g) Grantor
shall take such further actions as Lender may reasonably request from time to
time to perfect or continue the perfection of Lender’s interest in the
Intellectual Property Collateral;
(h) This
IP Agreement creates, and in the case of after acquired Intellectual Property
Collateral this IP Agreement will create, at the time Grantor first has rights
in such after acquired Intellectual Property Collateral, in favor of Lender a
valid and perfected first priority security interest and collateral assignment
in the Intellectual Property Collateral in the United States securing the
payment and performance of the obligations evidenced by the Loan
Agreement;
(i) To
its knowledge, except for, and upon, the filing of UCC financing statements, or
other notice filings or notations in appropriate filing offices, if necessary to
perfect the security interests created hereunder, 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 (a) for the grant by
Grantor of the security interest granted hereby, or for the execution, delivery
or performance of this IP Agreement by Grantor in the U.S. or (b) for the
perfection in the United States or the exercise by Lender of its rights and
remedies thereunder;
(j) All
information heretofore, herein or hereafter supplied to Lender by or on behalf
of Grantor with respect to the Intellectual Property Collateral is accurate and
complete in all material respects.
(k) Grantor
shall not enter into any agreement that would materially impair or conflict with
Grantor’s obligations hereunder without Lender’s prior written consent, which
consent shall not be unreasonably withheld. Grantor 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 Grantor’s rights and interest in any property included within the
definition of the Intellectual Property Collateral acquired under such
contracts.
(l) Upon
any executive officer of Grantor obtaining actual knowledge thereof, Grantor
will promptly notify Lender in writing of any event that materially adversely
affects the value of any material Intellectual Property Collateral, the ability
of Grantor to dispose of any material Intellectual Property Collateral or the
rights and remedies of Lender in relation thereto, including the levy of any
legal process against any of the Intellectual Property Collateral.
4. Lender’s
Rights. Lender shall have the right, but not the obligation,
to take, at Grantor’s sole expense, any actions that Grantor is required under
this IP Agreement to take but which Grantor fails to take, after fifteen (15)
days’ notice to Grantor. Grantor shall reimburse and indemnify Lender
for all reasonable costs and reasonable expenses incurred in the reasonable
exercise of its rights under this section 4.
5. Inspection
Rights. Grantor hereby grants to Lender and its employees,
representatives and agents the right to visit, during reasonable hours upon
prior reasonable written notice to Grantor, any of Grantor’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
Intellectual Property Collateral, and to inspect the products and quality
control records relating thereto upon reasonable written notice to Grantor and
as often as may be reasonably requested, but not more than once in every six (6)
months; provided, however, nothing herein shall entitle Lender access to
Grantor’s trade secrets and other proprietary information.
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6. Further Assurances; Attorney
in Fact.
(a) On
a continuing basis, Grantor will, upon request by Lender, 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 Lender, to perfect Lender’s security interest in all Copyrights,
Patents, Trademarks, and Mask Works and otherwise to carry out the intent and
purposes of this IP Agreement, or for assuring and confirming to Lender the
grant or perfection of a security interest in all Intellectual Property
Collateral.
(b) In
addition to section 6(a) above, Grantor shall not register any Copyrights or
Mask Works in the United States Copyright Office unless it: (i) has given at
least fifteen (15) days’ prior written notice to Lender of its intent to
register such Copyrights or Mask Works and has provided Lender with a copy of
the application it intends to file with the United States Copyright Office
(excluding exhibits thereto); (ii) executes a security agreement or such other
documents as Lender may reasonably request in order to maintain the perfection
and priority of Lender’s security interest in the Copyrights proposed to be
registered with the United States Copyright Office; and (iii) records such
security documents with the United States Copyright Office contemporaneously
with filing the Copyright application(s) with the United States Copyright
Office. Grantor shall promptly provide to Lender a copy of the
Copyright application(s) filed with the United States Copyright Office, together
with evidence of the recording of the security documents necessary for Lender to
maintain the perfection and priority of its security interest in such Copyrights
or Mask Works. Grantor shall provide written notice to Lender of any
application filed by Grantor in the United States Patent Trademark Office for a
patent or to register a trademark or service xxxx within thirty (30) days of any
such filing.
(c) Grantor
hereby irrevocably appoints Lender as Grantor’s attorney-in-fact, with full
authority in the place and stead of Grantor and in the name of Grantor, Lender
or otherwise, from time to time in Lender’s discretion, upon Grantor’s failure
or inability to do so, to take any action and to execute any instrument which
Lender may deem necessary or advisable to accomplish the purposes of this IP
Agreement, including:
(i) To
modify, in its sole discretion, this IP Agreement without first obtaining
Grantor’s approval of or signature to such modification by amending Exhibit A,
Exhibit B, Exhibit C, and Exhibit D hereof, as appropriate, to include reference
to any right, title or interest in any Copyrights, Patents, Trademarks or Mask
Works acquired by Grantor after the execution hereof or to delete any reference
to any right, title or interest in any Copyrights, Patents, Trademarks, or Mask
Works in which Grantor 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, or other notice filings or notations in appropriate
filing offices, relative to any of the Intellectual Property Collateral,
without notice to Grantor, with all appropriate jurisdictions, as
Lender deems appropriate, in order to further perfect or protect Lender’s
interest in the Intellectual Property Collateral.
7. Events of
Default. The occurrence of any of the following shall
constitute an Event of Default under this IP Agreement:
(a) An
Event of Default occurs under the Loan Agreement, Guaranty, or Security
Agreement; or any document from Grantor or Borrower to Lender; or
(b) Grantor
breaches any warranty or agreement made by Grantor in this IP
Agreement.
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8. Remedies. Upon
the occurrence and continuance of an Event of Default, Lender shall have the
right to exercise all the remedies of a secured party under the Massachusetts
Uniform Commercial Code, including without limitation the right to require
Grantor to assemble the Intellectual Property Collateral and any tangible
property in which Lender has a security interest and to make it available to
Lender at a place designated by Lender. Lender shall have a
nonexclusive, royalty free license to use the Copyrights, Patents, Trademarks,
and Mask Works to the extent reasonably necessary to permit Lender to exercise
its rights and remedies upon the occurrence of an Event of
Default. Grantor will pay any expenses (including reasonable
attorney’s fees) incurred by Lender in connection with the exercise of any of
Lender’s rights hereunder, including without limitation any expense incurred in
disposing of the Intellectual Property Collateral. All of Lender’s
rights and remedies with respect to the Intellectual Property Collateral shall
be cumulative.
9. Indemnity. Grantor
agrees to defend, indemnify and hold harmless Lender 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 IP Agreement, and (b) all losses or expenses
in any way suffered, incurred, or paid by Lender as a result of or in any way
arising out of, following or consequential to transactions between Lender and
Grantor, whether under this IP Agreement or otherwise (including without
limitation, reasonable attorneys fees and reasonable expenses), except for
losses arising from or out of Lender’s gross negligence or willful
misconduct.
10. Termination. At
such time as Grantor shall completely satisfy all of the obligations secured
hereunder, Lender shall execute and deliver to Grantor all releases,
terminations, and other instruments as may be necessary or proper to release the
security interest hereunder.
11. 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.
12. Amendments. This
IP Agreement may be amended only by a written instrument signed by both parties
hereto.
13. Counterparts. This
IP 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.
14. Law and
Jurisdiction. This IP Agreement shall be governed by and
construed in accordance with the laws of the Commonwealth of
Massachusetts. GRANTOR ACCEPTS FOR ITSELF AND IN CONNECTION WITH ITS
PROPERTIES, UNCONDITIONALLY, THE NON-EXCLUSIVE JURISDICTION OF ANY STATE OR
FEDERAL COURT OF COMPETENT JURISDICTION IN THE COMMONWEALTH OF MASSACHUSETTS IN
ANY ACTION, SUIT, OR PROCEEDING OF ANY KIND, AGAINST IT WHICH ARISES OUT OF OR
BY REASON OF THIS AGREEMENT; PROVIDED, HOWEVER, THAT IF FOR ANY REASON LENDER
CANNOT AVAIL ITSELF OF THE COURTS OF THE COMMONWEALTH OF MASSACHUSETTS, GRANTOR
ACCEPTS JURISDICTION OF THE COURTS AND VENUE IN SANTA XXXXX COUNTY,
CALIFORNIA. NOTWITHSTANDING THE FOREGOING, THE LENDER
SHALL HAVE THE RIGHT TO BRING ANY ACTION OR PROCEEDING AGAINST THE GRANTOR OR
ITS PROPERTY IN THE COURTS OF ANY OTHER JURISDICTION WHICH THE LENDER DEEMS
NECESSARY OR APPROPRIATE IN ORDER TO REALIZE ON THE COLLATERAL OR TO OTHERWISE
ENFORCE THE LENDER’S RIGHTS AGAINST THE GRANTOR OR ITS PROPERTY.
GRANTOR
AND LENDER EACH HEREBY WAIVE THEIR RESPECTIVE RIGHTS TO A JURY TRIAL OF ANY
CLAIM OR CAUSE OF ACTION BASED UPON OR ARISING OUT OF ANY OF THE LOAN DOCUMENTS
OR ANY OF THE TRANSACTIONS CONTEMPLATED THEREIN, INCLUDING CONTRACT CLAIMS, TORT
CLAIMS, BREACH OF DUTY CLAIMS, AND ALL OTHER COMMON LAW OR STATUTORY
CLAIMS. EACH PARTY RECOGNIZES AND AGREES THAT THE FOREGOING WAIVER
CONSTITUTES A MATERIAL INDUCEMENT FOR IT TO ENTER INTO THIS
AGREEMENT. EACH PARTY REPRESENTS AND WARRANTS THAT IT HAS REVIEWED
THIS WAIVER WITH ITS LEGAL COUNSEL AND THAT IT KNOWINGLY AND VOLUNTARILY WAIVES
ITS JURY TRIAL RIGHTS FOLLOWING CONSULTATION WITH LEGAL COUNSEL.
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15. Confidentiality. In
handling any confidential information, Lender shall exercise the same degree of
care that it exercises for its own proprietary information, but disclosure of
information may be made: (i) to Lender’s subsidiaries or affiliates in
connection with their present or prospective business relations with Grantor;
(ii) to prospective transferees or purchasers of any interest in the Loans;
(iii) as required by law, regulation, subpoena, or other order, (iv) as required
in connection with Lender’s examination or audit; and (v) as Lender considers
appropriate in exercising remedies under this Agreement. Confidential
information does not include information that either: (a) is in the public
domain or in Lender’s possession when disclosed to Lender, or becomes part of
the public domain after disclosure to Lender; or (b) is disclosed to Lender by a
third party, if Lender reasonably does not know that the third party is
prohibited from disclosing the information.
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EXECUTED as a sealed
instrument under the laws of the Commonwealth of Massachusetts on the day and
year first written above.
Address
of Grantor:
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GRANTOR:
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00
Xxxxxxxxxxx Xxxxx
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Xxx Xxxx, XX 00000 |
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By:
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/s/ Xxxxxx X. Xxxxxxxx | ||
Name:
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Xxxxxx X. Xxxxxxxx | ||
Title:
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Chairman and CEO |
SILICON
VALLEY BANK
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By:
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/s/ Xxxxx Xxxxxxxx | ||
Name:
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Xxxxx Xxxxxxxx | ||
Title:
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Vice-President |
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