1
EXHIBIT 10.1(c)
COPYRIGHT SECURITY AGREEMENT
This COPYRIGHT SECURITY AGREEMENT ("Agreement"), dated as of
May 5, 1998, is entered into between INTERNATIONAL REMOTE IMAGING SYSTEMS,
INC., a Delaware corporation ("Debtor") and FOOTHILL CAPITAL CORPORATION, a
California corporation ("Foothill"), in light of the following:
A. Debtor, Perceptive Scientific Instruments, Inc., a
Delaware corporation, StatSpin, Inc., a Massachusetts corporation and Foothill
are, contemporaneously herewith, entering into that certain Loan and Security
Agreement ("Loan Agreement") and other instruments, documents and agreements
contemplated thereby or related thereto (collectively, together with the Loan
Agreement, the "Loan Documents"); and
B. Debtor is the owner of certain intellectual property,
identified below, in which Debtor is granting a security interest to Foothill.
NOW THEREFORE, in consideration of the mutual promises,
covenants, conditions, representations, and warranties hereinafter set forth
and for other good an valuable consideration, the parties hereto mutually agree
as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 DEFINITIONS. The following terms, as used in
this Agreement, have the following meanings:
"Code" means the California Uniform
Commercial Code, as amended and supplemented from time to time, and any
successor statute.
"Collateral" means:
(i) Each of the copyrights and rights
and interests capable of being protected as copyrights, which are
presently, or in the future may be, owned, authored, acquired, or used
(whether pursuant to a license or otherwise) by Debtor, in whole or in
part, and all copyright rights with respect thereto throughout the
world, including all proceeds thereof (including license royalties and
proceeds of infringement suits), and all tangible property embodying
the copyrights (including books, records, films, computer tapes or
disks, photographs, specification sheets, source codes, object codes,
and other physical manifestations of the foregoing);
(ii) All of Debtor's right, title, and
interest, in and to the copyrights and copyright registrations listed
on Schedule A, attached hereto, as the same may be updated hereafter
from time to time;
1
2
(iii) All of Debtor's right to register
copyright claims under any federal copyright law or regulation of any
foreign country and to apply for registrations on original works,
compilations, derivative works, collective works, and works for hire,
the right (without obligation) to xxx in the name of Debtor or in the
name of Foothill for past, present, and future infringements of the
copyrights, and all rights (but not obligations) corresponding thereto
in the United States and any foreign country;
(iv) All general intangibles relating to the foregoing; and
(v) All proceeds of any and all of the
foregoing (including, without limitation, license royalties and
proceeds of infringement suits) and, to the extent not otherwise
included, all payments under insurance, or any indemnity, warranty, or
guaranty payable by reason of loss or damage to or otherwise with
respect to the Collateral.
"Obligations" means all obligations,
liabilities, and indebtedness of Debtor to Foothill, whether direct, indirect,
liquidated, or contingent, and whether arising under this Agreement, the Loan
Agreement, any other of the Loan Documents, or otherwise, including all costs
and expenses described in Section 10.8 hereof.
1.2 CONSTRUCTION. Unless the context of this
Agreement clearly requires otherwise, references to the plural include the
singular, references to the singular include the plural, and the term
"including" is not limiting. The words "hereof," "herein," "hereby,"
"hereunder," and other similar terms refer to this Agreement as a whole and not
to any particular provision of this Agreement. Any initially capitalized terms
used but not defined herein shall have the meaning set forth in the Loan
Agreement. Any reference herein to any of the Loan Documents includes any and
all alterations, amendments, extensions, modifications, renewals, or
supplements thereto or thereof, as applicable. Neither this Agreement nor any
uncertainty or ambiguity herein shall be construed or resolved against Foothill
or Debtor, whether under any rule of construction or otherwise. On the
contrary, this Agreement has been reviewed by Debtor, Foothill, and their
respective counsel, and shall be construed and interpreted according to the
ordinary meaning of the words used so as to fairly accomplish the purposes and
intentions of Foothill and Debtor.
2. GRANT OF SECURITY INTEREST.
Debtor hereby grants to Foothill a first-priority
security interest in all of Debtor's right, title, and interest in and to the
Collateral to secure the Obligations.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
Debtor hereby represents, warrants, and covenants
that:
2
3
3.1 COPYRIGHTS. A true and complete schedule
setting forth all federal copyright registrations owned or controlled by Debtor
or licensed to Debtor, together with a summary description and full information
in respect of the filing or issuance thereof and expiration dates is set forth
on Schedule A;
3.2 VALIDITY; ENFORCEABILITY. Each copyright is
valid and enforceable, and Debtor is not presently aware of any past, present,
or prospective claim by any third party that any copyright is invalid or
unenforceable, or that the use of any copyright violates the rights of any
third person, or of any basis for any such claims;
3.3 TITLE. Debtor is the sole and exclusive
owner of the entire and unencumbered right, title, and interest in and to each
copyright and copyright registration, free and clear of any liens, charges, and
encumbrances, including pledges, assignments, licenses, and covenants by Debtor
not to xxx third persons;
3.4 NOTICE. Debtor has used and will continue to
use proper statutory notice in connection with its use of each copyright;
3.5 PERFECTION OF SECURITY INTEREST. Except for
the filing of a financing statement with the Secretary of State of California
and filings with the United States Copyright Office necessary to perfect the
security interests created hereunder, no authorization, approval, or other
action by, and no notice to or filing with, any governmental authority or
regulatory body is required either for the grant by Debtor of the security
interest hereunder or for the execution, delivery, or performance of this
Agreement by Debtor or for the perfection of or the exercise by Foothill of its
rights hereunder to the Collateral in the United States.
4. AFTER-ACQUIRED COPYRIGHTS.
If Debtor shall obtain rights to any new copyright,
the provisions of this Agreement shall automatically apply thereto. Debtor
shall give prompt notice in writing to Foothill with respect to any such new
copyright, or renewal or extension of any copyright registration. Debtor shall
bear any expenses incurred in connection with future copyright registrations.
5. LITIGATION AND PROCEEDINGS.
Debtor shall commence and diligently prosecute in its
own name, as the real party in interest, for its own benefit, and its own
expense, such suits, administrative proceedings, or other action for
infringement or other damages as are in its reasonable business judgment
necessary to protect the Collateral. Debtor shall provide to Foothill any
information with respect thereto requested by Foothill. Foothill shall provide
at Debtor's expense all necessary cooperation in connection with any such
suits, proceedings, or action, including, without limitation, joining as a
necessary party. Following Debtor's becoming aware thereof, Debtor shall
notify Foothill of the institution of, or any adverse determination in, any
3
4
proceeding in the United States Copyright Office, or any United States, state,
or foreign court regarding Debtor's claim of ownership in any copyright, its
right to apply for the same, or its right to keep and maintain such copyright
rights.
6. POWER OF ATTORNEY.
Debtor grants Foothill power of attorney, having the
full authority, and in the place of Debtor and in the name of Debtor, from time
to time following an Event of Default in Foothill's discretion, to take any
action and to execute any instrument which Foothill may deem necessary or
advisable to accomplish the purposes of this Agreement, including, without
limitation, as may be subject to the provisions of this Agreement: to endorse
Debtor's name on all applications, documents, papers, and instruments necessary
for Foothill to use or maintain the Collateral; to ask, demand, collect, xxx
for, recover, impound, receive, and give acquittance and receipts for money due
or to become due under or in respect of any of the Collateral; to file any
claims or take any action or institute any proceedings that Foothill may deem
necessary or desirable for the collection of any of the Collateral or otherwise
to enforce Foothill's rights with respect to any of the Collateral and to
assign, pledge, convey, or otherwise transfer title in or dispose of the
Collateral to any person.
7. EVENTS OF DEFAULT.
Any of the following events shall be an Event of
Default:
7.1 LOAN AGREEMENT. An Event of Default shall
occur as defined in the Loan Agreement;
7.2 MISREPRESENTATION. Any representation or
warranty made herein by Debtor or in any document furnished to Foothill by
Debtor under this Agreement is incorrect in any material respect when made or
when reaffirmed; and
7.3 BREACH. Debtor fails to observe or perform
any covenant, condition, or agreement to be observed or performed pursuant to
the terms hereof which materially and adversely affects Foothill.
8. SPECIFIC REMEDIES.
Upon the occurrence of any Event of Default, Foothill
shall have, in addition to, other rights given by law or in this Agreement, the
Loan Agreement, or in any other Loan Document, all of the rights and remedies
with respect to the Collateral of a secured party under the Code, including the
following:
8.1 NOTIFICATION. Foothill may notify licensees
to make royalty payments on license agreements directly to Foothill;
4
5
8.2 SALE. Foothill may sell or assign the
Collateral and associated goodwill at public or private sale for such amounts,
and at such time or times as Foothill deems advisable. Any requirement of
reasonable notice of any disposition of the Collateral shall be satisfied if
such notice is sent to Debtor five days prior to such disposition. Debtor
shall be credited with the net proceeds of such sale only when they are
actually received by Foothill, and Debtor shall continue to be liable for any
deficiency remaining after the Collateral is sold or collected. If the sale is
to be a public sale, Foothill shall also give notice of the time and place by
publishing a notice one time at least five days before the date of the sale in
a newspaper of general circulation in the county in which the sale is to be
held. To the maximum extent permitted by applicable law, Foothill may be the
purchaser of any or all of the Collateral and associated goodwill at any public
sale and shall be entitled, for the purpose of bidding and making settlement or
payment of the purchase price for all or any portion of the Collateral sold at
any public sale, to use and apply all or any part of the Obligations as a
credit on account of the purchase price of any collateral payable by Foothill
at such sale.
9. CHOICE OF LAW AND VENUE; JURY TRIAL WAIVER.
THE VALIDITY OF THIS AGREEMENT, ITS CONSTRUCTION,
INTERPRETATION, AND ENFORCEMENT, AND THE RIGHTS OF THE PARTIES HERETO WITH
RESPECT TO ALL MATTERS ARISING HEREUNDER OR RELATED HERETO SHALL BE DETERMINED
UNDER, GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF
CALIFORNIA, WITHOUT GIVING EFFECT TO ITS CONFLICT OF LAWS PRINCIPLES. THE
PARTIES AGREE THAT ALL ACTIONS OR PROCEEDINGS ARISING IN CONNECTION WITH THIS
AGREEMENT SHALL BE TRIED AND LITIGATED ONLY IN THE STATE AND FEDERAL COURTS
LOCATED IN THE COUNTY OF LOS ANGELES, STATE OF CALIFORNIA OR, AT THE SOLE
OPTION OF FOOTHILL, IN ANY OTHER COURT IN WHICH FOOTHILL SHALL INITIATE LEGAL
OR EQUITABLE PROCEEDINGS AND WHICH HAS SUBJECT MATTER JURISDICTION OVER THE
MATTER IN CONTROVERSY. EACH OF DEBTOR AND FOOTHILL WAIVES, TO THE EXTENT
PERMITTED UNDER APPLICABLE LAW, ANY RIGHT EACH MAY HAVE TO ASSERT THE DOCTRINE
OF FORUM NON CONVENIENS OR TO OBJECT TO VENUE TO THE EXTENT ANY PROCEEDING IS
BROUGHT IN ACCORDANCE WITH THIS SECTION 9. DEBTOR AND FOOTHILL 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. DEBTOR AND FOOTHILL
REPRESENT THAT EACH HAS REVIEWED THIS WAIVER AND EACH KNOWINGLY AND VOLUNTARILY
WAIVES ITS JURY TRIAL RIGHTS FOLLOWING CONSULTATION WITH LEGAL COUNSEL. IN THE
EVENT OF LITIGATION, A COPY OF THIS AGREEMENT MAY BE FILED AS A WRITTEN CONSENT
TO A TRIAL BY THE COURT.
5
6
10. GENERAL PROVISIONS.
10.1 EFFECTIVENESS. This Agreement shall be
binding and deemed effective when executed by Debtor and Foothill.
10.2 SUCCESSORS AND ASSIGNS. This Agreement shall
bind and inure to the benefit of the respective successors and assigns of each
of the parties; provided, however, that Debtor may not assign this Agreement or
any rights or duties hereunder without Foothill's prior written consent and any
prohibited assignment shall be absolutely void. Foothill may assign this
Agreement and its rights and duties hereunder and no consent or approval by
Debtor is required in connection with any such assignment.
10.3 SECTION HEADINGS. Headings and numbers have
been set forth herein for convenience only. Unless the contrary is compelled
by the context, everything contained in each section applies equally to this
entire Agreement.
10.4 INTERPRETATION. Neither this Agreement nor
any uncertainty or ambiguity herein shall be construed or resolved against
Foothill or Debtor, whether under any rule of construction or otherwise. On
the contrary, this Agreement has been reviewed by all parties and shall be
construed and interpreted according to the ordinary meaning of the words used
so as to fairly accomplish the purposes and intentions of all parties hereto.
10.5 SEVERABILITY OF PROVISIONS. Each provision
of this Agreement shall be severable from every other provision of this
Agreement for the purpose of determining the legal enforceability of any
specific provision.
10.6 AMENDMENTS IN WRITING. This Agreement can
only be amended by a writing signed by both Foothill and Debtor.
10.7 COUNTERPARTS; TELEFACSIMILE EXECUTION. This
Agreement may be executed in any number of counterparts and by different
parties on separate counterparts, each of which, when executed and delivered,
shall be deemed to be an original, and all of which, when taken together, shall
constitute but one and the same Agreement. Delivery of an executed counterpart
of this Agreement by telefacsimile shall be equally as effective as delivery of
a manually executed counterpart of this Agreement. Any party delivering an
executed counterpart of this Agreement by telefacsimile also shall deliver a
manually executed counterpart of this Agreement but the failure to deliver a
manually executed counterpart shall not affect the validity, enforceability,
and binding effect of this Agreement.
10.8 FEES AND EXPENSES. Debtor shall pay to
Foothill on demand all costs and expenses that the Foothill pays or incurs in
connection with the negotiation, preparation, consummation, administration,
enforcement, and termination of this Agreement, including: (a) reasonable
attorneys' and paralegals' fees and disbursements of counsel to
6
7
Foothill; (b) costs and expenses (including reasonable attorneys' and
paralegals' fees and disbursements) for any amendment, supplement, waiver,
consent, or subsequent closing in connection with this Agreement and the
transactions contemplated hereby; (c) costs and expenses of lien and title
searches; (d) taxes, fees, and other charges for filing this Agreement at the
United States Copyright Office, or for filing financing statements, and
continuations, and other actions to perfect, protect, and continue the security
interest created hereunder; (e) sums paid or incurred to pay any amount or take
any action required of Debtor under this Agreement that Debtor fails to pay or
take; (f) costs and expenses of preserving and protecting the Collateral; and
(g) costs and expenses (including reasonable attorneys' and paralegals' fees
and disbursements) paid or incurred to enforce the security interest created
hereunder, sell or otherwise realize upon the Collateral, and otherwise enforce
the provisions of this Agreement, or to defend any claims made or threatened
against the Foothill arising out of the transactions contemplated hereby
(including preparations for the consultations concerning any such matters).
The foregoing shall not be construed to limit any other provisions of this
Agreement or the Loan Documents regarding costs and expenses to be paid by
Debtor. The parties agree that reasonable attorneys' and paralegals' fees and
costs incurred in enforcing any judgment are recoverable as a separate item in
addition to fees and costs incurred in obtaining the judgment and that the
recovery of such attorneys' and paralegals' fees and costs is intended to
survive any judgment, and is not to be deemed merged into any judgment.
10.9 NOTICES. Except as otherwise provided
herein, all notices, demands, and requests that either party is required or
elects to give to the other shall be in writing and shall be governed by the
provisions of Section 12 of the Loan Agreement.
10.10 TERMINATION BY FOOTHILL. After termination
of the Loan Agreement and when Foothill has received payment and performance,
in full, of all Obligations, Foothill shall execute and deliver to Debtor a
termination of all of the security interests granted by Debtor hereunder.
10.11 INTEGRATION. This Agreement, together with
the other Loan Documents, reflect the entire understanding of the parties with
respect to the transactions
7
8
contemplated hereby and shall not be contradicted or qualified by any other
agreement, oral or written, before the date hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement
on the date first written above.
FOOTHILL CAPITAL CORPORATION,
a California corporation
By: /s/ XXXXX XXXXX
---------------------------------------
Title: AVP
INTERNATIONAL REMOTE IMAGING SYSTEMS, INC.,
a Delaware corporation
By: /s/ XXXXXX X. XxXXXXXX
---------------------------------------
Title: Vice-President, Finance and
Administration and Chief
Financial Officer
8
