SECURITY AGREEMENT -- TRADEMARKS, PATENTS AND COPYRIGHTS
EXHIBIT
10.10
Execution
Copy
SECURITY
AGREEMENT -- TRADEMARKS,
PATENTS
AND COPYRIGHTS
THIS
SECURITY AGREEMENT -- TRADEMARKS, PATENTS AND COPYRIGHTS (this "IP
Security Agreement")
is
made as of May 25, 2006, between Xxxxxx, Inc., a Delaware corporation (the
“Company”),
and
the Secured Party (as defined below). As used herein, "Secured
Party"
means
U.S. Bank National Association, in its capacity as Collateral Agent for the
benefit of the Purchasers (as that term is defined in the Securities Purchase
Agreement defined below), together with its successors and assigns in such
capacity.
WHEREAS,
the Company has adopted and is using the trademarks, trade names and designs
listed in Schedule
A
annexed
to this IP Security Agreement and made a part hereof; and
WHEREAS,
the Company has informed the Secured Party that it owns the patents, patent
applications and copyrights listed in Schedule
A
hereto;
and
WHEREAS,
pursuant to a Securities Purchase Agreement dated as of May 24, 2006 (as the
same may be amended, restated, modified, supplemented and/or replaced from
time
to time, the "Securities
Purchase Agreement")
by and
among the Company, the Secured Party and the Purchasers identified therein,
the
Purchasers have agreed to purchase from the Company certain of its Senior
Secured Convertible Notes (individually, a “Note”
and
collectively, the “Notes”)
in the
aggregate amount and on the terms and conditions set forth in the Securities
Purchase Agreement substantially in the form attached hereto as Exhibit
1
and
dated as of the date hereof; and
WHEREAS,
as a condition to the Purchasers' purchase from the Company of any of the
aforementioned Notes, the Purchasers require the execution and delivery of
this
IP Security Agreement by the Company.
Accordingly,
the Company and the Secured Party, intending to be legally bound hereby, agree
that, as security for the full and timely payment of the obligations under
the
Notes and the performance of the obligations of the Company under the Notes
and
this IP Security Agreement (collectively, the “Obligations”),
the
Company hereby mortgages and pledges to the Secured Party and assigns and grants
to the Secured Party a lien and security interest in, all its right, title
and
interest in and to all of the following:
(A)
(i)
each
of the trademarks, trade names and designs described in Schedule
A
to this
IP Security Agreement, and any other trademarks, trade names and designs that
the Company may adopt and use, in the United States or foreign countries, in
connection with its business after the date of this IP Security Agreement
(collectively, the “Trademarks”),
together with the good will of the business symbolized thereby; (ii) all
registrations and pending trademark applications owned presently or obtained
or
filed hereafter, both in the United States and in foreign countries; (iii)
all
records of the Company relating to the distribution of products bearing the
Trademarks; and (iv) any and all proceeds of the foregoing, including, without
limitation, any royalties, claims for infringement and proceeds of sale or
other
disposition (collectively, the “Trademarks
Collateral”);
and
(B) (i)
each
of the patents and patent applications, including the inventions disclosed
or
claimed therein, described in Schedule
A
to this
IP Security Agreement, and any other patents and patent applications and similar
legal protection, both domestic and foreign, including all continuations,
extensions, renewals, substitutes, divisions or reissues thereof, that the
Company may acquire after the date of this IP Security Agreement (collectively,
the “Patents”);
and
(ii) any and all proceeds of the Patents, including, without limitation, any
royalties, fees, claims for past, present and future infringement and proceeds
of sale or other disposition (the “Proceeds”
and,
together with the Patents, the “Patents
Collateral”);
and
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(C) (i)
all
United States original works or authorship fixed in any tangible medium of
expression, all right, title and interest therein and thereto, and all United
States registrations and recordings thereof, including without limitation,
applications, registrations, and recordings in the United States Copyright
Office or in any similar office or agency in the United States, or any State
thereof, all whether now owned or hereafter acquired by the Company, including,
but not limited to, those described on Schedule
A
annexed
hereto and made a part hereof; and (ii) all extensions and renewals thereof
(collectively, the “Copyrights
Collateral”);
and
(D)
certain
other intellectual property, which shall include, without limitation, all
designs, concepts, discoveries, ideas, improvements, inventions, formulae,
processes, techniques, works of authorship, mask works, data (whether or not
patentable or registrable under copyright or similar statutes), object code,
algorithms, blueprints, layouts, integrated circuit die or wafers, marks,
microcode, programs, procedures, schematics, sketches, source code,
specifications, strategies, subroutines, research, test results, hardware,
software (as such term is defined in the Uniform Commercial Code as enacted
in
the State of Delaware (the “UCC”)),
license rights, trade secrets and any material constituting a trade secret,
methods, know-how, specifications, and customer lists, proprietary technology
and any information relating thereto, regardless of any contrary interpretation
of such term as now or hereafter used in the UCC; or which relates to or arises
out of the use, function, development, improvement or any additions or
modifications to the Patents Collateral, the Trademarks Collateral or the
Copyrights Collateral (collectively, the “General
Intangibles Collateral”)
and
pertains to the Company’s business enterprise.
NOW,
THEREFORE, the parties hereto, intending to be legally bound hereby, agree
as
follows:
1. As
security for the full and prompt payment and performance of all Obligations,
the
Company does hereby pledge to the Secured Party and assign and grant to the
Secured Party a security interest in, all of the right, title and interest
of
the Company in and to all of the following, now owned or hereafter arising
or
acquired: (i) the Trademarks Collateral; (ii) the Patents Collateral; (iii)
the
Copyrights Collateral; (iv) any claims by the Company against third parties
for
infringement of the Trademarks, Patents or Copyrights; (v) the General
Intangibles Collateral; and (vi) any and all products and proceeds of the
foregoing (collectively, the “Intellectual
Property Collateral”).
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2. The
Company represents and warrants that it is the owner of its Intellectual
Property Collateral and has the right and power to make the pledge and grant
the
security interest granted in this IP Security Agreement; and that the
Intellectual Property Collateral is free of all liens and encumbrances. Further,
the Company represents and warrants that the Intellectual Property Collateral
constitutes all of the intellectual property owned by the Company. The Company
shall retain the full legal and equitable title to the Intellectual Property
Collateral and, provided there exists no Event of Default (as defined in the
Notes) under the Notes (or any of them) or hereunder, the Company shall have
the
right to use and register the Intellectual Property Collateral in the ordinary
course of its business. The Company agrees that it will not sell, transfer,
assign or xxxxx x xxxx or security interest in any of the Intellectual Property
Collateral except as permitted hereunder. At such time as all Obligations in
respect of the Notes have been indefeasibly paid and performed in full
(including the conversion in full of the Notes), this IP Security Agreement
shall terminate and be of no further force and effect and the Secured Party
shall thereupon terminate its security interest in the Intellectual Property
Collateral. Until such time, however, this IP Security Agreement shall be
binding upon and inure to the benefit of the parties, their successors and
assigns.
3. (a)
The
Company will take all reasonable steps required to maintain and defend full
effect, title and right in and to keep in force (i) the Trademarks and
registrations of the Trademarks in the United States Patent and Trademark
Office, or any similar office, including, without limitation, filing of
affidavits of use and incontestability and renewal applications, prosecution
of
trademark applications, and taking part in opposition, interference and
cancellation proceedings; (ii) the Patents in the United States Patent and
Trademark Office and foreign patent offices, or any similar office, including
without limitation, prosecution of patent applications, payment of maintenance
fees and annuities; and (iii) the Copyrights in the United States Copyright
Office or any similar office.
(b) The
Company will perform all acts and execute any documents,
including
without limitation, assignments suitable for filing with the United States
Patent and Trademark Office or the United States Copyright Office, and Uniform
Commercial Code financing statements, reasonably requested of it by the Secured
Party at any time to evidence, perfect and maintain the rights in the
Intellectual Property Collateral granted to the Secured Party under this IP
Security Agreement. The Company will promptly notify the Secured Party at the
time the Company adopts for use in its business any trademarks, patents or
registered copyrights not described on Schedule
A
to this
IP Security Agreement and files any applications to register a trademark or
copyright, or files any patent applications. To the extent permitted by law,
the
Company hereby authorizes the Secured Party to execute and file such assignments
and financing statements (and/or similar documents) with respect to the
Intellectual Property Collateral, or copies thereof or of this IP Security
Agreement, signed only by the Secured Party.
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4. Concurrently
with the execution and delivery of this IP Security Agreement, the Company
is
executing and delivering to the Secured Party two originals of a Special Power
of Attorney, each in the form of Exhibit
2
to this
IP Security Agreement, for the Secured Party’s use in executing on behalf of the
Company an Assignment for Security in the form of Exhibit
3
to this
IP Security Agreement, which Assignment for Security shall be suitable for
recording in the United States Patent and Trademark Office and in the United
States Copyright Office, to provide Secured Party with access to the Patents
or
Trademarks (or any applications or registrations thereof), all in accordance
with paragraph 3(b) of this IP Security Agreement. The Company hereby releases
the Secured Party from any claims, causes of action and demands at any time
arising out of or with respect to any actions taken or omitted to be taken
by
the Secured Party under the powers of attorney granted therein other than gross
negligence or willful misconduct of the Secured Party.
5. If
an
Event of Default (as defined in the Notes) has occurred, then, in addition
to
all other rights and remedies of the Secured Party, whether under law, the
Notes
or otherwise, the Secured Party may, without notice to, or consent by, the
Company, (a) grant itself a license to use the Patents, Trademarks and
Copyrights, or any of them, without payment of any kind, until all inventories
of finished goods produced for the Company are sold or consumed; (b) assign,
sell or otherwise dispose of or use the Intellectual Property Collateral, or
any
of it, either with or without special or other conditions or stipulations,
with
power to buy the Intellectual Property Collateral or any part of it, and with
power also to execute assurances, and to do all other acts and things for
completing the assignment, sale or disposition which the Secured Party shall,
in
its sole discretion, deem appropriate or proper; and (c) in order to implement
any such assignment, sale or other disposal of any of the Intellectual Property
Collateral, pursuant to the authority granted in the Power of Attorney described
in paragraph 4 of this IP Security Agreement (such authority becoming effective
on the occurrence of an Event of Default), execute and deliver on behalf of
the
Company, one or more instruments of assignment of the Patents, Trademarks or
Copyrights (or any application or registration thereof), in a form suitable
for
filing, recording or registration in the United States Patent and Trademark
Office or the United States Copyright Office.
6. No
failure or delay on the part of Secured Party in exercising any right, remedy,
power or privilege under this IP Security Agreement shall operate as a waiver
thereof or of any other right, remedy, power or privilege of Secured Party
under
this IP Security Agreement or the Notes, nor shall any single or partial
exercise of any such right, remedy, power or privilege preclude any other or
further exercise thereof or the exercise of any other right, remedy, power
or
privilege. The rights, remedies, powers and privileges of the Secured Party
under this IP Security Agreement are cumulative and not exclusive of any rights
or remedies which it may otherwise have.
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7. The
provisions of this IP Security Agreement are intended to be severable. If any
provision of this IP Security Agreement shall for any reason be held invalid
or
unenforceable in whole or in part in any jurisdiction, such provision shall,
as
to such jurisdiction, be ineffective to the extent of such invalidity or
unenforceability without in any manner affecting the validity or enforceability
of such provision in any other jurisdiction or any other provision of this
IP
Security Agreement in any jurisdiction.
8. All
notices, statements, requests and demands given to or made upon either party
in
accordance with the provisions of this IP Security Agreement shall be deemed
to
have been given or made when given or made in accordance with any of the
Notes.
9. All
rights of the Secured Party hereunder shall inure to the benefit of its
successors and assigns. This IP Security Agreement shall bind all persons who
become bound as a debtor to this IP Security Agreement. The Company shall not
assign any of its interest under this IP Security Agreement without the prior
written consent of the Secured Party. Any purported assignment inconsistent
with
this provision shall, at the option of the Secured Party, be null and
void.
10. The
parties hereto consent to the exclusive jurisdiction and venue of the federal
and state courts located in the Borough of Manhattan, State of New York in
any
action on, relating to or mentioning this IP Security Agreement.
11. This
IP
Security Agreement shall be deemed to be a contract under the laws of the State
of New York and the execution and delivery of this IP Security Agreement and
the
terms and provisions of this IP Security Agreement shall be governed by and
construed in accordance with the laws of that State (without regard to its
conflict of laws rules) and, to the extent applicable or governing, the laws
of
the United States of America; provided, however, that to the extent the UCC
provides for the application of the law of another State for purposes of
perfection and the effect of perfection of the security interest granted to
the
Secured Party hereunder, then the IP Agreement shall be governed by that State's
law.
12. This
IP
Security Agreement may be executed in one or more counterparts, each of which
shall be deemed an original, but all of which shall together constitute one
agreement.
13. This
IP
Security Agreement or any provision hereof may be changed, waived or terminated
only by a statement in writing signed by the party against which such change,
waiver or termination is sought to be enforced.
14. The
Company and the Secured Party request that the Commissioner of Patents and
Trademarks, and the Register of Copyrights record this IP Security Agreement
with respect to the applicable Intellectual Property Collateral.
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IN
WITNESS WHEREOF, the parties have executed and delivered this Security
Agreement
as of the day and year first above written.
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The
Company:
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XXXXXX,
INC.
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By:/s/Xxxxx
X. Xxxxxxx
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Name:
Xxxxx X. Xxxxxxx
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Title:
CFO
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Secured
Party:
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U.S.
Bank National Association
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By:
/s/Xxxxxx X. Xxxxxxxxx
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Name:
Xxxxxx X. Xxxxxxxxx
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Title:
Vice President
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[Signature
Page to Security Agreement - Trademarks, Patents and Copyrights]
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Patents
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US
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A. 6,970,102
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Traffic
violation detection, recording and evidence processing system
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B. 6,950,789
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Traffic
violation detection at an intersection employing a virtual violation
line
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C. 6,760,061
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Traffic
sensor
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D. 6,754,663
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Video-file
based citation generation system for traffic light violations
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E. 6,647,361
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Non-violation
event filtering for a traffic light violation detection system
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F. 6,573,929
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Traffic
light violation prediction and recording system
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G. 6,560,360
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Feed
forward feed back multiple neural network with context driven recognition
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H. 6,281,808
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Traffic
light collision avoidance system
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I. 6,188,329
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Integrated
traffic light violation citation generation and court date scheduling
system
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J. 5,701,398
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Adaptive
classifier having multiple subnetworks
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K. 5,479,574
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Method
and apparatus for adaptive classification
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L. 5,054,093
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Parallel,
multi-unit, adaptive, nonlinear pattern class separator and
identifier
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M. 4,958,375
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Parallel,
multi-unit, adaptive pattern classification system using inter-unit
correlations and an intra-unit class separator methodology
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N. 4,897,811
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N-dimensional
coulomb neural network which provides for cumulative learning of
internal
representations
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Australian
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A. 761,072
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Traffic
light violation prediction and recording system
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B. 775,840
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Traffic
light collision avoidance system
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Japanese
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A. 2,976,053
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Parallel,
multi-unit, adaptive, nonlinear pattern class separator and
identifier
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Security
Agreement - Trademarks,
Patents
and Copyrights
Schedule
A
Patent
Applications
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EPO
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A.
99 962 818.3
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Traffic
light violation prediction and recording system
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B.
99 959 067.2
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Traffic
light collision avoidance system
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Trademarks
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US
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A. 2655921
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Citation
Composer
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B. 2138538
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CrossingGuard
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C. 2679829
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Xxxxxx
Traffic Systems
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D. 2290068
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Xxxxxx
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X. 2118342
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Xxxxxx
System
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F. 2568931
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Xxxxxx
logo (human head design)
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G. 2118342
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Traffic
Vision
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H. 2439643
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E-Fraud
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I. 2324092
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Prism
Merchant
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J. 2324091
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Prism
Debit
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K. 2324090
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Prism
Credit
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L. 2327365
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CampaignOne
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M. 2160597
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Merchant
Alert
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N. 2050701
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Prism
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“XXXXXX
SYSTEM” is also a registered trademark in Canada (327,283), France (1,317,788),
Germany (1,091,726) and Japan (2,054,809)
Trademark
Applications
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US
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A. 78/865051
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NTS
VIDEO VASCAR
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Copyrights
Collateral
None.
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Security
Agreement - Trademarks,
Patents
and Copyrights
Schedule
A
Security
Agreement - Trademarks,
Patents
and Copyrights
Exhibit
1
Form
of Note Purchase Agreement
See
attached.
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Security
Agreement - Trademarks,
Patents
and Copyrights
Exhibit
2
Form
of Special Power of Attorney
See
attached.
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Security
Agreement - Trademarks,
Patents
and Copyrights
Exhibit
3
Form
of Assignment for Security
See
attached.
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