INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.6
THIS
INTELLECTUAL PROPERTY SECURITY AGREEMENT (this “Agreement”), dated as of
November 27, 2019, by Exactus, Inc., a Nevada corporation (the
“Grantor”), in favor of
3i, LP, as a secured lender and Agent, and the other Secured
Parties signatory to the Security Agreement (collectively, the
“Secured
Party”).
WHEREAS:
A. Reference
is made to that certain Security Agreement (the “Security Agreement”),
entered into by and among the Grantor, the other
“Guarantors” party thereto, and the Secured Party,
which secures certain now existing and future arising obligations
owing to the Secured Party (as defined in the Security Agreement)
under the Transaction Documents (as defined in the Purchase
Agreement (as defined below)), as provided in the Security
Agreement;
B. Pursuant
to the Security Agreement and that certain Securities Purchase
Agreement (the “Purchase Agreement”),
entered into between the Grantor and Secured Party, the Grantor is
required to execute and deliver to the Secured Party this
Agreement;
C. Pursuant
to the terms of the Security Agreement, the Grantor has granted to
the Secured Party (as defined in the Security Agreement), a
security interest in substantially all the assets of the Grantor,
including all right, title and interest of the Grantor in, the IP
Collateral (as defined below);
D. Capitalized
terms used and not otherwise defined herein that are defined in the
Security Agreement or the Purchase Agreement shall have the
meanings given such terms in the Security Agreement or the Purchase
Agreement.
NOW, THEREFORE, in consideration of the
mutual agreements set forth herein and for good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the Grantor hereby grants to the Secured Party, for
the benefit of the Secured Party (as defined in the Security
Agreement), to secure the Obligations (as defined in the Security
Agreement), a continuing security interest in all of the
Grantor’s right, title and interest in, to and under the
following, whether presently existing or hereafter created or
acquired:
1. Each
United States and foreign trademark and trademark application,
including, without limitation, each United States federally
registered trademark and trademark application referred to in
Schedule 1 annexed
hereto, together with any reissues, continuations or extensions
thereof and all goodwill associated therewith;
2. Each
trademark license, including, without limitation, each trademark
license listed on Schedule
1 annexed hereto, together with all goodwill associated
therewith;
3. All
products and proceeds of the foregoing items 1 through 2,
including, without limitation, any claim by the Grantor against
third parties for past, present or future infringement,
misappropriation, dilution, violation or other impairment of any
trademark, including, without limitation, any trademark referred to
in Schedule 1
annexed hereto, any trademark issued pursuant to a trademark
application referred to in Schedule 1 and any trademark
licensed under any trademark license listed on Schedule 1 annexed hereto
(items 1 through 3 being herein collectively referred to as the
“Trademark
Collateral”);
4. Each
United States and foreign patent and patent application, including,
without limitation, each United States federally registered patent
and patent application referred to in Schedule 2 annexed hereto,
together with any reissues, continuations or extensions thereof and
all goodwill associated therewith;
5. Each
patent license, including, without limitation, each patent license
listed on Schedule
2 annexed hereto, together with all goodwill associated
therewith;
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6. All
products and proceeds of the foregoing items 4 through 5,
including, without limitation, any claim by the Grantor against
third parties for past, present or future infringement,
misappropriation, dilution, violation or other impairment of any
patent, including, without limitation, any patent referred to in
Schedule 2 annexed
hereto, any trademark issued pursuant to a patent application
referred to in Schedule
2 and any patent licensed under any patent license listed on
Schedule 2 annexed
hereto (items 4 through 6 being herein collectively referred to as
the “Patent
Collateral”);
7. If
applicable, each United States and foreign copyright and copyright
application, including, without limitation, each United States
federally registered copyright and copyright application referred
to in Schedule 3
annexed hereto, together with any reissues, continuations or
extensions thereof and all goodwill associated
therewith;
8. If
applicable, each copyright license, including, without limitation,
each copyright license listed on Schedule 3 annexed hereto,
together with all goodwill associated therewith;
9. All
products and proceeds of the foregoing items 7 through 8,
including, without limitation, any claim by the Grantor against
third parties for past, present or future infringement,
misappropriation, dilution, violation or other impairment of any
copyright, including, without limitation, any copyright referred to
in Schedule 3
annexed hereto, any copyright issued pursuant to a copyright
application referred to in Schedule 3 and any copyright
licensed under any copyright license listed on Schedule 3 annexed hereto
(items 7 through 9 being herein collectively referred to as the
“Copyright
Collateral”; items 1 through 9 being herein (i.e., the
Trademark Collateral, the Patent Collateral, and the Copyright
Collateral) collectively referred to as the “IP Collateral”).
This
security interest is granted in conjunction with the security
interests granted to the Secured Party, pursuant to the Security
Agreement and the other Transaction Documents (as defined in the
Purchase Agreement). The Grantor hereby acknowledges and affirms
that the rights and remedies of the Secured Party with respect to
the security interest in the IP Collateral made and granted hereby
are more fully set forth in the Transaction Documents (as defined
in the Purchase Agreement), the terms and provisions of which are
incorporated by reference herein as if fully set forth herein.
Capitalized terms used but not defined herein have the respective
meanings ascribed thereto in the Transaction Documents (as defined
in the Purchase Agreement).
Grantor
shall give Secured Party prior written notice of no less than five
(5) Business Days before filing any additional application for
registration of any trademark and prompt notice in writing of any
additional trademark registrations, patent registration, or
copyright registrations granted therefor after the date hereof.
Without limiting Grantor’s obligations under this paragraph,
Grantor hereby authorizes Secured Party unilaterally to modify this
Agreement by amending Schedules 1, 2, or 3 to include any future
United States registered trademarks, patents, copyrights or
applications therefor of Grantor. Notwithstanding the foregoing, no
failure to so modify this Agreement or amend Schedules 1, 2, or 3
shall in any way affect, invalidate or detract from Secured
Party’s continuing security interest in all Collateral,
whether or not listed on Schedule 1, 2, or 3.
Grantor
hereby agrees that, anything herein to the contrary
notwithstanding, such Grantor shall assume full and complete
responsibility for the prosecution, defense, enforcement or any
other necessary or desirable actions in connection with their
trademarks subject to the security interest hereunder.
This
Agreement may be executed in any number of counterparts and by
different parties in separate counterparts, each of which when so
executed shall be deemed to be an original and all of which taken
together shall constitute one and the same agreement. Signature
pages may be detached from multiple separate counterparts and
attached to a single counterpart.
This
Agreement is a Transaction Document (as defined in the Purchase
Agreement).
This
Agreement shall be construed and enforced in accordance with, and
all questions concerning the construction, validity, interpretation
and performance of this Agreement and all disputes arising
hereunder shall be governed by, the laws of the State of New York,
without giving effect to any choice of law or conflict of law
provision or rule (whether of the State of New York or any other
jurisdictions) that would cause the application of the laws of any
jurisdictions other than the State of New York. The parties hereto
(a) agree that any legal action or proceeding with respect to this
Agreement or any other agreement, document, or other instrument
executed in connection herewith or therewith, shall be brought in
any state or federal court located within the City of New York, New
York, (b) irrevocably waive any objections which either may now or
hereafter have to the venue of any suit, action or proceeding
arising out of or relating to this Agreement, or any other
agreement, document, or other instrument executed in connection
herewith, brought in the aforementioned courts and (c) further
irrevocably waive any claim that any such suit, action, or
proceeding brought in any such court has been brought in an
inconvenient forum.
Each of
the Grantor and the Secured Party hereby acknowledges and affirms
that Section 18 and Section 19 of the Security Agreement are
incorporated by reference herein as if fully set forth herein. It
is the intention of the parties that such Sections and the terms
and provisions of the previous paragraph are to the extent feasible
meant to be read together for the purpose of achieving the utmost
consistency.
[Remainder of Page Intentionally Left Blank; Signature Page
Follows]
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The
Grantor has caused this Intellectual Property Security Agreement to
be duly executed by its duly authorized officer thereunto as of the
date first set forth above.
EXACTUS, INC., a Nevada
corporation
By:
/s/ Xxxxxxxx
Xxxx
Name: Xxxxxxxx Xxxx
Title: President
& CEO
Acknowledged:
3I, LP
as
Secured Party and Agent
By:
/s/ Xxxxx
Xxxxxx
Name:
Xxxxx Xxxxxx
Title:
Authorized Signer
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SCHEDULE 1
to
Trademark Collateral
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SCHEDULE 2
to
Patent Collateral
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SCHEDULE 3
to
Copyright Collateral
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