INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit
10.4
This
INTELLECTUAL PROPERTY SECURITY AGREEMENT (as from time to time amended,
restated, supplemented or otherwise modified, the “Agreement”), dated as
of July 11, 2008, is made by TELENATIONAL COMMUNICATIONS, INC., a Delaware
corporation (“Grantor”), in favor of LV ADMINISTRATIVE SERVICES CORP., as
administrative and collateral agent for the Creditor Parties (as defined in the
Security Agreement referred to below) (the “Agent”).
WHEREAS,
pursuant to that certain Security Agreement dated as of March 31, 2008 by and
among Grantor, Rapid Link, Incorporated (“Rapid Link”), One
Ring Networks, Inc. (“One Ring” and
together with Grantor and Rapid Link, collectively, the “Borrowers”), the
Agent and the Lenders (as defined therein) (as amended, restated, supplemented
and/or otherwise modified from time to time, the “Security Agreement”),
the Lenders have agreed to provide financial accommodations to
Borrowers;
WHEREAS,
Creditor Parties are willing to provide financial accommodations to the
Borrowers in accordance with the Security Agreement only upon the condition,
among others, that Grantor shall have executed and delivered to Agent this
Agreement;
NOW,
THEREFORE, in consideration of the premises and mutual covenants herein
contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Grantor hereby agrees as
follows:
Section
1. DEFINED TERMS; RULES OF
CONSTRUCTION.
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(a)
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Capitalized
terms used in this Agreement but not otherwise defined herein have the
meanings given to them in the Security
Agreement.
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(b)
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When
used herein the following terms shall have the following
meanings:
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“Copyrights” means all
copyrights arising or protected under the laws of the United States, any other
country or any political subdivision thereof, whether registered, or
unregistered and whether published or unpublished, all registrations and
recordings therefor, and all applications in connection therewith, including but
not limited to all registrations, recordings and applications in the United
States Copyright Office, any State, or any similar office or agency of the
United States, any State, any other country or political subdivision, or any
other registry.
“Copyright Licenses”
means all agreements pursuant to which Grantor is licensor or licensee, granting
any right under any Copyright, including but not limited to, rights to
manufacture, reproduce, display, distribute, perform, modify or otherwise
exploit, and sell materials embodying or derived from, any Copyrighted
work.
“Intellectual
Property” means any and all of the following, throughout the
world: Patents, Trademarks, Copyrights, mask works, designs, trade
secrets, information, databases, rights of publicity, software, and any other
proprietary rights and processes; any licenses to use any of the foregoing owned
by a third party including Patent Licenses, Trademark Licenses and Copyright
Licenses; and registrations, applications and recordings pertaining to any of
the foregoing on any registry;
“Obligations” shall
have the meaning provided thereto in the Security Agreement.
“PTO” means the United
States Patent and Trademark Office and any successor office or
agency.
“Patents” means all
patents issued by the PTO, any similar office or agency of the United States,
any State, or any other country or political subdivision or other registry, all
recordings thereof, and all applications therefor.
“Patent Licenses”
means all agreements pursuant to which Grantor is licensor or licensee, granting
any right to manufacture, have made, import, use, or sell any invention covered
in whole or in part by a Patent.
“Trademarks” means all
trademarks, trade names, corporate names, business names, fictitious business
names, Internet Domain Names, trade styles, services marks, logos and other
source or business identifiers, arising or protected under the laws of the
United States, any State any other country or political subdivision thereof,
whether registered or unregistered, and all goodwill connected with the use of
and symbolized thereby, all registrations and recordings thereof, and all
applications therefor, in the PTO, in any similar office or agency of the United
States, any State, any other country or political subdivision, any Internet
Domain Name registrar, or any other registry.
“Trademark Licenses”
mean all agreements pursuant to which Grantor is licensor or licensee, granting
any right to use a Trademark.
“UCC” shall have the
meaning provided thereto in the Security Agreement.
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(c)
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All
Schedules, Addenda, Annexes and Exhibits hereto or expressly identified to
this Agreement are incorporated herein by reference and taken together
with this Agreement constitute but a single agreement. The
words “herein”, “hereof” and “hereunder” or other words of similar import
refer to this Agreement as a whole, including the Exhibits, Addenda,
Annexes and Schedules thereto, as the same may be from time to time
amended, modified, restated or supplemented, and not to any particular
section, subsection or clause contained in this
Agreement. Wherever from the context it appears appropriate,
each term stated in either the singular or plural shall include the
singular and the plural, and pronouns stated in the masculine, feminine or
neuter gender shall include the masculine, the feminine and the
neuter. The term “or” is not exclusive. The term
“including” (or any form thereof) shall not be limiting or
exclusive. All references to statutes and related regulations
shall include any amendments of same and any successor statutes and
regulations. All references in this Agreement or in the
Schedules, Addenda, Annexes and Exhibits to this Agreement to sections,
schedules, disclosure schedules, exhibits, and attachments shall refer to
the corresponding sections, schedules, disclosure schedules, exhibits, and
attachments of or to this Agreement. All references to any
instruments or agreements, including references to any of this Agreement
or the Ancillary Agreements shall include any and all modifications or
amendments thereto and any and all extensions or renewals
thereof.
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(d)
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The
parties acknowledge that each party and its counsel have reviewed this
Agreement and that the normal rule of construction to the effect that any
ambiguities are to be resolved against the drafting party shall not be
employed in the interpretation of this Agreement or any amendments,
schedules or exhibits thereto.
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(e)
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In
the event of an irreconcilable conflict between the terms of this
Agreement and the terms of the Security Agreement, the Agent shall have
the right to determine which Agreement shall govern with respect to each
such conflict.
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Section
2.
GRANT OF SECURITY
INTEREST IN INTELLECTUAL PROPERTY COLLATERAL. To secure the
prompt payment to the Creditor Parties of the Obligations of the Grantor now or
hereafter existing from time to time, Grantor hereby pledges and grants to the
Agent, for the ratable benefit of the Creditor Parties, a continuing security
interest in and Lien upon all of Grantor’s right, title and interest in, to and
under the following, whether presently existing or hereafter created or acquired
(collectively, the “Collateral”):
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(a)
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Trademarks
and Trademark Licenses to which it is a party including those referred to
on Schedule
I hereto;
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(b)
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Patents
and Patent Licenses to which it is a party, including those referred to on
Schedule
II hereto;
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(c)
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Copyrights
and Copyright Licenses to which it is a party, including those referred to
on Schedule
III hereto;
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(d)
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Intellectual
Property not covered by the foregoing, including those referred to on
Schedule
IV hereto;
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(e)
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Renewals,
reissues, continuations, divisions, or extensions of any of the
foregoing;
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(f)
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Rights
to xxx third parties for past, present or future infringement, dilution,
misappropriation, or other violation of rights in any Intellectual
Property, including injury to the goodwill associated with any Trademark,
and all causes of action for the
same:
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(g)
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All
products and Proceeds of all or any of the foregoing, tort claims and all
claims and other rights to payment including (i) insurance claims against
third parties for loss of, damage to, or destruction of, the foregoing
Collateral and (ii) payments due or to become due under licenses of any or
all of the foregoing and Proceeds payable under, or unearned premiums with
respect to policies of insurance in whatever form; provided, however, that
the Collateral shall not constitute a grant of a security interest in (a)
any property to the extent that such grant of a security interest is
prohibited by any rule of law, statute or regulation, requires a consent
not obtained of any government, governmental body or official or is
prohibited by, or constitutes a breach or default under or results in the
termination of or requires any consent not obtained under, any contract,
license, agreement, instrument or other document evidencing or giving rise
to such property, except to the extent that such rule of law, statute or
regulation or the term in such contract, license, agreement, instrument or
other document or shareholder or similar agreement providing for such
prohibition, breach, default or termination or requiring such consent is
ineffective under applicable law; and (b) any trademark or service xxxx
applications filed in the PTO on the basis of Grantor’s intent to use such
trademark or service xxxx, unless and until a statement of use or
amendment to allege use is filed in the PTO, in which event, such
trademark or service xxxx shall automatically be included in the
Collateral.
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Section
3. REPRESENTATIONS AND
WARRANTIES.
Grantor
represents and warrants to Agent, in addition to the covenants in the Security
Agreement and Ancillary Agreements, that:
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(a)
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Grantor
does not own, in whole or in part, any Patent, Trademark, Copyright, or
other Intellectual Property which is the subject of a registration or
application in the United States Patent and Trademark Office, United
States Copyright Office, any similar office or agency of the United
States, any State, any other country or political subdivision, any
Internet Domain Name registrar, or any other registry, except as set forth
in Schedule
I, Schedule II,
Schedule
III, and Schedule IV,
respectively, hereto.
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(b)
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Grantor
is the sole owner of the Intellectual Property listed on Schedules I to
IV hereto (as such schedules may be amended or supplemented from
time to time) identified as owned by Grantor, and all registrations and
applications for such Intellectual Property are standing in the name of
Grantor.
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(c)
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no
Intellectual Property has been licensed or sublicensed by Grantor to any
Affiliate or third party, except under the licenses disclosed in Schedules I to
IV hereto.
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(d)
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all
Intellectual Property owned by Grantor, including the items set forth on
Schedules I to
IV, and, to Grantor’s knowledge, all Intellectual Property licensed
to Grantor, is subsisting in good standing, valid, and enforceable and
Grantor performed all acts and has paid all renewal, maintenance, and
other fees and taxes required to maintain, each registration and
application for Intellectual Property owned by Grantor in full force and
effect.
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(e)
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Grantor
has been using statutory notice of registration in connection with its use
of registered Trademarks, proper marking practices in connection with the
use of Patents, and appropriate notice of copyright in connection with the
publication of Copyrighted material
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(f)
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Grantor
has taken all actions necessary to insure that all licensees
of Trademarks owned by Grantor use consistent standards of
quality as directed by Grantor in connection with their licensed products
and services;
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(g)
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this
Agreement is effective to create a valid security interest in favor of
Agent, for the benefit of the Creditor Parties, in all of Grantor’s
Intellectual Property. Upon the (i) filing of this Intellectual
Property Security Agreement in the PTO (with respect to the United States
Patents set forth on Schedule I
hereto and the United States Trademarks set forth on Schedule II
hereto), and in the United States Copyright Office (with respect to the
United States Copyrights set forth on Schedule III
hereto), and (ii) the filing of all appropriate UCC-1 financing
statements, such security interest will be enforceable as such as against
any and all creditors of, and purchasers from, Grantor. Upon
the making of such filings set forth above, all action necessary or
desirable to protect and perfect Agent’s Lien on Grantor’s United States
and State Patents, Trademarks, and Copyrights, shall have been
taken.
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Section
4.
COVENANTS. Grantor
covenants and agrees with Agent, from and after the date of this Agreement, and
in addition to the covenants the Security Agreement, that:
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(a)
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Grantor
shall notify Agent immediately if it knows or has reason to know that any
application or registration relating to any Intellectual Property owned by
Grantor may become abandoned, dedicated to the public, placed in the
public domain or otherwise invalidated or unenforceable, or of any adverse
determination or development in any proceeding (including the institution
of any proceeding) in the PTO, the United States Copyright Office, or any
similar agency of the United States, any State, or other country or
political subdivision thereof, any Internet Domain registry or other
registry, or any court, regarding Grantor’s ownership of or
right to use register, keep and/or maintain any Intellectual
Property:
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(b)
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Grantor
shall take all actions necessary, or requested by Agent, to maintain and
pursue each application, for registration in respect of the Intellectual
Property owned by Grantor from time to time, by including filing
applications for renewal, affidavits of use, affidavits of
noncontestability and the commencement and prosecution of opposition and
interference and cancellation
proceedings;
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(c)
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In
the event that any Intellectual Property owned by or exclusively licensed
to Grantor is infringed, diluted, misappropriated, or otherwise violated
by a third party, Grantor shall notify Agent promptly after Grantor learns
thereof and shall promptly take all reasonable actions to stop the same
and enforce its rights in such Intellectual Property and to recover all
damages therefor, including, but not limited to, the initiation of a suit
for injunctive relief and damages and shall take such other actions as are
reasonable, or as Agent shall deem appropriate under the circumstances to
protect Grantor’s rights in such Intellectual
Property;
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(d)
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Grantor
shall use statutory notice of registration in connection with its use of
registered Trademarks, proper marking practices in connection with the use
of Patents, appropriate notice of copyright in connection with the
publication of Copyrighted materials, and other legends or markings
applicable to other Intellectual
Property;
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(e)
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Grantor
shall maintain the level of the quality of products sold and services
rendered under any Trademarks owned by Grantor at a level at least
consistent with the quality of such products and services as of the date
hereof, and Grantor shall adequately control the quality of goods and
services offered by any licensees of its Trademarks;
and
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(f)
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Grantor
shall take all steps necessary to protect the secrecy of all trade secrets
material to its business.
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Section
5.
SECURITY
AGREEMENT. The security interests granted pursuant to this
Agreement are granted in conjunction with the security interests granted to
Agent, for the ratable benefit of the Creditor Parties, by Grantor pursuant to
the Security Agreement. Grantor hereby acknowledges and affirms that
the rights and remedies of Agent with respect to the Collateral made and granted
herein are more fully set forth in the Security Agreement, the terms and
provisions of which are incorporated by reference herein as if fully set forth
herein. Any rights and remedies set forth herein are without
prejudice to, and in addition to, those set forth in the Security
Agreement.
Section
6.
REINSTATEMENT. This
Agreement shall remain in full force and effect and continue to be effective
should any petition be filed by or against Grantor for liquidation or
reorganization, should Grantor become insolvent or make an assignment for the
benefit of any creditor or creditors or should a receiver or trustee be
appointed for all or any significant part of Grantor’s assets, and shall
continue to be effective or be reinstated, as the case may be, if at any time
payment and performance of the Obligations, or any part thereof, is, pursuant to
applicable law, rescinded or reduced in amount, or must otherwise be restored or
returned by any obligee of the Obligations, whether as a “voidable preference,”
“fraudulent conveyance,” or otherwise, all as though such payment or performance
had not been made. In the event that any payment, or any part
thereof, is rescinded, reduced, restored or returned, the Obligations shall be
reinstated and deemed reduced only by such amount paid and not so rescinded,
reduced, restored or returned.
Section
7.
INDEMNIFICATION.
Grantor assumes all responsibility and liability arising from the use of the
Intellectual Property and Grantor hereby indemnifies and holds Agent and each
other Creditor Party harmless from and against any claim, suit, loss, damage or
expense (including reasonable attorneys’ fees) arising out of Grantor’s
operations of its business from the use of the Intellectual
Property. In any suit, proceeding or action brought by Agent under
any Patent License, Trademark License, or Copyright License for any sum owing
thereunder, or to enforce any provisions of such License, Grantor will indemnify
and keep Agent and each other Creditor Party harmless from and against all
expense, loss or damage suffered by reason of any defense, set off,
counterclaim, recoupment or reduction or liability whatsoever of the obligee
thereunder, arising out of a breach of Grantor of any obligation thereunder or
arising out of any other agreement, indebtedness or liability at any time owing
to or in favor of such obligee or its successors from Grantor, and all such
obligations of Grantor shall be and remain enforceable against and only against
Grantor and shall not be enforceable against Agent or any other Creditor
Party.
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Section
8.
NOTICES. Whenever
it is provided herein that any notice, demand, request, consent, approval,
declaration or other communication shall or may be given to or served upon any
of the parties by any other party, or whenever any of the parties desires to
give and serve upon any other party any communication with respect to this
Agreement, each such notice, demand, request, consent, approval, declaration or
other communication shall be in writing and shall be given in the manner, and
deemed received, as provided for in the Security Agreement.
Section
9.
TERMINATION OF THIS
AGREEMENT. Subject to Section 6 hereof,
this Agreement shall terminate upon payment in full in cash of all Obligations
and irrevocable termination of the Security Agreement.
Section
10. THIS
AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED AND ENFORCED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF NEW YORK APPLICABLE TO CONTRACTS MADE AND PERFORMED IN SUCH
STATE, WITHOUT REGARD TO PRINCIPLES OF CONFLICTS OF LAW.
[Signature
Page to Follow]
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IN
WITNESS WHEREOF, Grantor has executed this Intellectual Property Security
Agreement as of the date first written above.
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TELENATIONAL
COMMUNICATIONS, INC.
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By:
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Name:
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Title:
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ACCEPTED
and ACKNOWLEDGED by:
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LV
ADMINISTRATIVE SERVICES CORP., as Agent
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By:
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Name:
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Title:
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SIGNATURE PAGE TO
INTELLECTUAL PROPERTY
SECURIOTY AGREEMENT
SCHEDULE
I
TO
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I.
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TRADEMARK
REGISTRATIONS
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XXXX
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COUNTRY
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REG.
NO.
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REG.
DATE
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T-Speed
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USA
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2475539
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8/7/2001
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II.
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TRADEMARK
APPLICATIONS
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None.
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III.
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TRADEMARK
LICENSES
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None.
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IV.
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INTERNET
DOMAIN NAMES
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None.
SCHEDULE
II
TO
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I.
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PATENTS
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None.
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II.
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PATENT
APPLICATIONS
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None.
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III.
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PATENT
LICENSES
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None.
SCHEDULE
III
TO
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I.
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COPYRIGHT
REGISTRATIONS
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None.
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II.
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COPYRIGHT
APPLICATIONS
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None.
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III.
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COPYRIGHT
LICENSES
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None.
SCHEDULE
IV
TO
OTHER
INTELLECTUAL PROPERTY REGISTRATIONS AND APPLICATIONS.
None.
