AMENDED AND RESTATED COLLATERAL ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS
EXHIBIT
10.37
AMENDED
AND RESTATED COLLATERAL ASSIGNMENT
OF
INTELLECTUAL PROPERTY RIGHTS
THIS
AMENDED AND RESTATED COLLATERAL ASSIGNMENT OF INTELLECTUAL PROPERTY
RIGHTS
(the
“Assignment”)
is
made as of May 13, 2005 by and between by and among (A)
MobilePro
Corp.,
a
Delaware corporation (“MobilePro”);
(B) each
Person executing this Assignment as a “MobilePro Subsidiary;”(collectively
with Mobilepro, “Assignor”)
and
(C) Cornell
Capital Partners, L.P.,
a
Delaware limited partnership (“Cornell”
or
“Assignee”).
The
Assignee and Assignor collectively may be referred to as the “parties”
or each
as a “party.”
W
I T N E
S S E T H
WHEREAS,
upon
the terms and conditions set forth herein, Assignor desires to assign to
Assignee all of Assignor’s rights in all of the United States and foreign
Letters Patent, patent applications, trademarks, licences, and other
intellectual property of the Borrower (the “Intellectual
Property”)
and
each of its direct and indirect Subsidiaries.
NOW,
THEREFORE,
for
good and valuable consideration, the receipt and sufficiency of which are
hereby
acknowledged, the parties hereto, intending to be legally bound, agree as
follows:
1.
Assignment.
Assignor does hereby collateraly assign to Assignee
all
right, title, and interest in all of the Intellectual Property assets set
forth
in Appendix
A to
this
Assignment (the “Intellectual
Property”).
In
consideration of the mutual promises and undertakings herein, the Assignor
does
hereby as on the date of completion unconditionally, absolutely and irrevocably
transfer and assign unto the
Assigneeon
an “as
is where is basis” all that the property, right, title, interest, estate, and
benefit of the Assignor into, over, or upon the Intellectual Property as
more
specifically set out in Appendix A to this Assignment together with goodwill
of
the business in the goods in respect of which the Intellectual Property is
registered, applied for and has been used, to have and to hold the Intellectual
Property unto the Assignee
absolutely
forever from the date hereof until and unless duly released by Assignee.
Unless
otherwise defined herein, all capitalized terms, when used in this Assignment
shall have the same meaning as is defined in that certain 7.75% Secured
Convertible Debenture of even date herewith (as amended, modified or
supplemented from time to time, the “Debenture”).
2.
Authorization.
Assignor further authorizes the Commissioner of Patents and Trademarks, and
the
Registrar of Copyrights, of the United States, and any official of any foreign
country whose duty it is to issue patents or other evidence or forms of
intellectual property protection on any applications as aforesaid (a) to
record
this Assignment as a continuing first priority lien and security interest
on all
trademarks, copyrights, and patents and other Intellectual Property assigned
to
Assignee hereunder as collateral, and (b) upon receipt of written notice
from
Assignee
that a
Default or an Event of Default under any of the Debenture has occurred, to
record title thereto as the property of the Assignee,
its
successors, legal representatives, and assigns in accordance with the terms
of
this Assignment, and to issue the same to the Assignee,
its
successors, legal representatives, and assigns, in accordance with the terms
of
this instrument.
3.
Further
Assurances.
Assignor further covenants and agrees on behalf of each Assignor, each of
its
successors, legal representatives, and assigns that it will communicate to
Assignee,
its
successors, legal representatives and assigns, any facts known to it with
respect the Intellectual Property transferred pursuant hereto, cooperate
in any
legal proceeding regarding the Intellectual Property transferred pursuant
hereto, sign all papers, execute all divisional, continuing, and reissue
applications, make all rightful oaths and generally provide
reasonable assistance and deliver all additional instruments or documents
to
carry out the intent and perfect the rights granted in this instrument, and
that
Assignor shall use its best efforts to cause its employees, officers, or
other
individuals, as applicable, to carry out such acts. Assignor hereby binds
itself
and its subsidiaries to warrant and defend the title to all the Intellectual
Property transferred pursuant hereto unto Assignee and Assignee’s successors and
assigns, against every person whomsoever lawfully claiming or to claim the
same
or any part thereof.
4.
Other
Undertakings.
(a)
Assignor hereby declares and confirms that on and from the date hereof it
has no
right, title, interest or benefit whatsoever, into, over or upon the
Intellectual Property hereby assigned by Assignor to the Assignee.
(b)
Assignor further declares and confirms that it shall not at any time hereafter
claim or purport to claim directly or indirectly in any manner whatsoever
any
right, title, interest into, over or upon said Intellectual Property and
Assignor hereby declares and confirms that on and from the date hereof the
Assignee shall be the sole and absolute registered proprietor of the trademarks
together with all the goodwill of the business in the goods in respect of
said
Intellectual Property has been registered and used.
(c)
The
parties hereby undertake to do and perform, sign, swear and execute all such
further and other acts, deeds, documents, matters or things as may be required
by the Assignee or considered necessary, desirable or proper to give effect
to
the transfer and assignment of the Intellectual Property rights.
(d)
Assignor waives and quitclaims to Assignee any and all claims, of any nature
whatsoever, which Assignor now or may hereafter have with respect to the
Intellectual Property rights transferred pursuant hereto or for infringement
of
any Intellectual Property transferred pursuant hereto.
(e)
Assignor agrees to provide notice to Assignee of the creation, possession,
or
acquisition of any new Intellectual Property after the effective date of
this
Assignment and shall assist Assignee in taking all necessary steps to effect
such subsequent collateral assignment as provided in this
agreement.
5.
Waiver.
The
failure, with or without intent, of any party to insist upon the performance
(in
strict conformity with the literal requirements) by the other party of any
term
or stipulation of this Assignment, shall not be treated or deemed to constitute
a modification of any terms or stipulations of this Assignment. Nor shall
such
failure or election be deemed to constitute a waiver of the right of such
Party
at any time whatsoever thereafter to insist upon performance by the other
party
strictly in accordance with any terms or provisions hereof.
All
terms, conditions and obligations under this Assignment shall remain in full
force and effect at all times during the subsistence of this Assignment except
where otherwise amended or modified by them by mutual written agreement.
-2-
6.
Binding
Effect.
This
Assignment shall be binding on and inure to the benefit of the parties hereto
and their respective successors and assigns and legal representatives. This
Assignment is not intended, and shall not be construed, deemed or interpreted,
to confer on any person not a party hereto any rights or remedies
hereunder.
7.
Representations
and Warranties.
Assignor hereby represents and warrants that it has the necessary power and
authority to enter into this Assignment. Assignor represents and warrants
that
to the knowledge of Assignor, Assignor is the proper owner of the entire
right,
title, and interest in and to the Intellectual Property and that it holds
all
rights necessary to assign the Intellectual Property to Assignee, free and
clear
of any liens, security interests, or encumbrances. Furthermore, Assignor
represents and warrants that to the best of its knowledge there are no claims,
or to the knowledge of Assignor, threats of claims, that any Intellectual
Property is invalid or unenforceable or that the use of any of the Intellectual
Property rights infringes or will infringe the intellectual property rights
of
any third party. Assignor represents and warrants that to the best of its
knowledge the consummation of the transactions contemplated by this Assignment
will not result in the loss or impairment of any Intellectual Property right.
8.
Effective
Date.
This
Assignment shall be effective immediately upon execution and delivery by
both
parties hereto.
9.
Counterparts.
This
Assignment may be executed in two or more counterparts, each of which shall
be
deemed an original but all of which together shall constitute one and the
same
instrument.
10.
Governing
Law.
This
Assignment shall be deemed to be made under and shall be construed in accordance
with the laws of the State of New Jersey without giving effect to the principals
of conflict of laws thereof. Each of the parties consents to the jurisdiction
of
the U.S. District Court sitting in the District of the State of New
Jersey
or the state courts of the State of New Jersey sitting in Xxxxxx County,
New
Jersey in connection with any dispute arising under this Debenture and hereby
waives, to the maximum extent permitted by law, any objection, including
any
objection based on forum non conveniens
to the
bringing of any such proceeding in such jurisdictions.
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IN
WITNESS WHEREOF,
the
parties hereto have executed this Amended and Restated Collateral Assignment
of
Intellectual Property Rights as of the date first set forth above.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
NEOREACH,
INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
NEOREACH
WIRELESS, INC.
By__________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
CLOSECALL
AMERICA, INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
AFFINITY
TELECOM,
INC.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
US
ONE ACQUISITION CORP.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
DAVEL
ACQUISITION CORP.
By:_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
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DAVEL
COMMUNICATIONS, INC.
By:_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
DAVEL
FINANCING COMPANY, LLC
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PHONETEL
TECHNOLOGIES, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
CHEROKEE
COMMUNICATIONS, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
DAVEL
COMMUNICATIONS GROUP, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
ADTEC
COMMUNICATIONS, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
CENTRAL
PAYPHONE SERVICES, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
COMMUNICATIONS
CENTRAL INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
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COMMUNICATIONS
CENTRAL OF GEORGIA, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
DAVEL
MEDIA, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
DAVEL
MEXICO, LTD.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
DAVELTEL,
INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
INTERSTATE
COMMUNICATIONS, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
INVISION
TELECOM, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PEOPLES
ACQUISITION CORPORATION
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PEOPLES
COLLECTORS, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PEOPLES
TELEPHONE COMPANY, INC.
a
New York corporation
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
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PEOPLES
TELEPHONE COMPANY, INC.
a
New Hampshire corporation
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PTC
CELLULAR, INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
PTC
SECURITY SYSTEMS, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
SILVERADO
COMMUNICATIONS CORP.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
TELALEASING
ENTERPRISES, INC.
By:_____________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
T.R.C.A.,
INC.,
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
TELINK,
INC.
By:______________________________________
Xxxxxxxx
X. Xxxxx, Executive Vice President
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DFW
INTERNET SERVICES, INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
THE
RIVER INTERNET ACCESS CO.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
WORLD
TRADE NETWORK, INC.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
XXXXX.XXX,
INC.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
INTERNET
EXPRESS, INC.
By________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
SHREVENET,
INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
CLOVER
COMPUTER CORPORATION
By__________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
XXXXXX.XXX
SERVICES, INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
SENSE
NETWORKING, INC.
By_________________________________
Xxx
X.
Xxxxxx, Chief Executive Officer
-8-
CORNELL
CAPITAL PARTNERS, L.P.
By__________________________________
Name________________________________
Title_________________________________
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APPENDIX
A
TRADEMARKS
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Name
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Status
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Descriptions
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Serial/Reg.
#
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Filing/Reg.
Date
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COPYRIGHTS
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Name
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Status
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Description
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LICENSES
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Name
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Status
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Description
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PATENTS
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Name
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Status
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Descriptions
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Serial/Reg.
#
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Filing/Reg.
Date
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URLS/DOMAIN
NAMES
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Name
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Status
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Description
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CONTRACTS
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Name
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Status
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Description
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OTHER
ITEMS
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Name
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Status
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Description
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