Exhibit 6
PATENT AND TRADEMARK SECURITY AGREEMENT
THIS PATENT AND TRADEMARK SECURITY AGREEMENT (this "Agreement"),
dated as of January 29, 2003 is made between Commtouch Software Ltd. an Israeli
corporation ("Grantor"), and XDL Capital Corp., an Ontario corporation, as
collateral agent for the Lenders ("Secured Party").
Grantor and Secured Party hereby agree as follows:
SECTION 1 Definitions; Interpretation.
(a) Terms Defined in Security Agreement. All capitalized terms used
in this Agreement and not otherwise defined herein shall have the meanings
assigned to them in the Security Agreement.
(b) Certain Defined Terms. As used in this Agreement, the following
terms shall have the following meanings:
"Collateral" has the meaning set forth in Section 2.
"Convertible Loan Agreement" means the Convertible Loan Agreement
dated as of January 29, 2003 among Grantor, certain lenders party thereto (the
"Lenders"), and the Secured Party.
"PTO" means the United States Patent and Trademark Office.
"Security Agreement" means the Security Agreement dated as of
January 29, 2003 between Grantor and Secured Party.
(c) Terms Defined in UCC. Where applicable and except as otherwise
defined herein, terms used in this Agreement shall have the meanings assigned to
them in the UCC.
(d) Interpretation. The rules of interpretation applicable to the
Security Agreement shall also be applicable to this Agreement and are
incorporated herein by this reference.
SECTION 2 Security Interest.
(a) Grant of Security Interest. As security for the payment and
performance of the Obligations, including interest that accrues after the
commencement by or against Grantor of any bankruptcy or insolvency proceeding
naming such Person as the debtor in such proceeding, and subject to the rights
of the Chief Scientist of the State of Israel, Grantor hereby grants to Secured
Party a security interest in all of Grantor's right, title and interest in, to
and under the following property, in each case whether now or hereafter existing
or arising or in which Grantor now has or hereafter owns, acquires or develops
an interest and wherever located (collectively, the "Collateral"):
(i) all patents and patent applications, domestic or foreign, all
licenses relating to any of the foregoing and all income and royalties with
respect to any licenses (including such patents and patent applications as
described in Schedule A), all rights to xxx for past, present or future
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infringement thereof, all rights arising therefrom and pertaining thereto and
all reissues, divisions, continuations, renewals, extensions and
continuations-in-part thereof;
(ii) all state (including common law), federal and foreign
trademarks, service marks and trade names, and applications for registration of
such trademarks, service marks and trade names, all licenses relating to any of
the foregoing and all income and royalties with respect to any licenses
(including such marks, names and applications as described in Schedule B),
whether registered or unregistered and wherever registered, all rights to xxx
for past, present or future infringement or unconsented use thereof, all rights
arising therefrom and pertaining thereto and all reissues, extensions and
renewals thereof;
(iii) the entire goodwill of or associated with the businesses now
or hereafter conducted by Grantor connected with and symbolized by any of the
aforementioned properties and assets;
(iv) all commercial tort claims associated with or arising out of
any of the aforementioned properties and assets;
(v) all accounts, all intangible intellectual or other similar
property and other general intangibles associated with or arising out of any of
the aforementioned properties and assets and not otherwise described above,
including all license payments and payments under insurance (whether or not
Secured Party is the loss payee thereof) or any indemnity, warranty or guaranty
payable by reason of loss or damage to or otherwise with respect to the
foregoing Collateral; and
(vi) all products, proceeds and supporting obligations of or with
respect to any and all of the foregoing Collateral.
(b) Continuing Security Interest. Grantor agrees that this Agreement
shall create a continuing security interest in the Collateral which shall remain
in effect until terminated in accordance with Section 12.
SECTION 3 Supplement to Security Agreement. This Agreement has been
granted in conjunction with the security interests granted to Secured Party
under the Security Agreement. The rights and remedies of Secured Party with
respect to the security interests granted herein are without prejudice to, and
are in addition to those set forth in the Security Agreement, all terms and
provisions of which are incorporated herein by reference.
SECTION 4 Representations and Warranties. Grantor represents and
warrants to Secured Party that:
(a) Patents. A true and correct list of all of the existing
Collateral consisting of U.S. patents and patent applications and/or
registrations owned by Grantor, in whole or in part, is set forth in Schedule A.
(b) Trademarks. A true and correct list of all of the existing
Collateral consisting of U.S. trademarks, trademark registrations and/or
applications owned by Grantor, in whole or in part, is set forth in Schedule B.
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SECTION 5 Further Acts. On a continuing basis, Grantor shall make,
execute, acknowledge and deliver, and file and record in the proper filing and
recording places, all such instruments and documents, and take all such action
as may be necessary or advisable or may be requested by Secured Party to carry
out the intent and purposes of this Agreement, or for assuring, confirming or
protecting the grant or perfection of the security interest granted or purported
to be granted hereby, to ensure Grantor's compliance with this Agreement or to
enable Secured Party to exercise and enforce its rights and remedies hereunder
with respect to the Collateral, including any documents for filing with the PTO
(e.g. a Memorandum of Lien) and/or any applicable state office (e.g. a UCC-1).
Secured Party may record this Agreement, an abstract thereof, or any other
document describing Secured Party's interest in the Collateral with the PTO, at
the expense of Grantor.
SECTION 6 Authorization to Supplement. If Grantor shall obtain
rights to any new trademarks, any new patentable inventions or become entitled
to the benefit of any patent application or patent for any reissue, division, or
continuation, of any patent, the provisions of this Agreement shall
automatically apply thereto. Grantor shall give prompt notice in writing to
Secured Party with respect to any such new trademarks or patents, or renewal or
extension of any trademark registration. Without limiting Grantor's obligations
under this Section 6, Grantor authorizes Secured Party to modify this Agreement
by amending Schedules A or B to include any such new patent or trademark rights.
Notwithstanding the foregoing, no failure to so modify this Agreement or amend
Schedules A or B shall in any way affect, invalidate or detract from Secured
Party's continuing security interest in all Collateral, whether or not listed on
Schedule A or B.
SECTION 7 Binding Effect. This Agreement shall be binding upon,
inure to the benefit of and be enforceable by Grantor, Secured Party and their
respective successors and assigns and shall bind any Person who becomes bound as
a debtor to this Agreement. Grantor may not assign, transfer, hypothecate or
otherwise convey its rights, benefits, obligations or duties hereunder except as
specifically permitted by the Security Agreement.
SECTION 8 Notices. All notices or other communications hereunder
shall be in writing (including by facsimile transmission or by email) and
mailed, sent or delivered to the respective parties hereto at or to their
respective addresses, facsimile numbers or email addresses set forth below their
names on the signature pages hereof, or at or to such other address, facsimile
number or email address as shall be designated by any party in a written notice
to the other parties hereto. All such notices and other communications shall be
deemed to be delivered when a record (within the meaning of the UCC) has been
(i) delivered by hand; (ii) sent by mail upon the earlier of the date of receipt
or five business days after deposit in the mail, first class (or air mail as to
communications sent to or from the United States); (iii) sent by facsimile
transmission; or (iv) sent by email.
SECTION 9 Governing Law. This Agreement shall be governed by, and
construed in accordance with, the law of the State of California, except as
required by mandatory provisions of law and to the extent the validity or
perfection of the security interests hereunder, or the remedies hereunder, in
respect of any Collateral are governed by the law of a jurisdiction other than
California.
SECTION 10 Amendment; Conflict. This Agreement is subject to
modification only by a writing signed by the parties, except as provided herein.
To the extent that any provision of this Agreement conflicts with any provision
of the Security Agreement, the provision giving Secured Party greater rights or
remedies shall govern, it being understood that the purpose of this Agreement is
to add to, and not detract from, the rights granted to Secured Party under the
Security Agreement.
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SECTION 11 Counterparts. This Agreement may be executed in any
number of counterparts and by different parties hereto in separate counterparts,
each of which when so executed shall be deemed to be an original and all of
which taken together shall constitute but one and the same agreement.
SECTION 12 Termination. Upon payment and performance in full of all
Obligations, and / or conversion by all Lenders and/or (if a Lender declines to
convert or be repaid upon an event as described in section 4.4 of the Notes),
the expiry of 12 months from the date of the request to convert or be repaid, by
Company to the declining Lender, the security interests created by this
Agreement shall terminate and Secured Party shall promptly execute and deliver
to Grantor such documents and instruments reasonably requested by Grantor as
shall be necessary to evidence termination of all such security interests given
by Grantor to Secured Party hereunder, including cancellation of this Agreement
by written notice from Secured Party to the PTO.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement, as of the date first above written.
Grantor
COMMTOUCH SOFTWARE LTD.
By: __________________________________
Xxxxxx Xxxxxx, CEO
Address:
0X Xxxxxxxx Xx.
Xxxxxxx, Xxxxxx
Attn.: Xxxx Xxx, President & CTO
Fax: 000-0-0000000
Secured Party
XDL CAPITAL CORP., as Collateral Agent
By: __________________________________
Title:
Address:
______________________________________
______________________________________
______________________________________
Attn.: _______________________________
Fax: _________________________________
Email: _______________________________
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SCHEDULE A
to the Patent and Trademark Security Agreement
Issued U.S. Patents of Grantor
Patent No. Issue Date Inventor Title
---------- ---------- -------- -----
None
Pending U.S. Patent Applications of Grantor
Serial No. Filing Date Inventor Title
---------- ----------- -------- -----
12/26/02 Prevention of Bulk
Transmission of
Objects in a
Communication
Network
A-1.
SCHEDULE B
to the Patent and Trademark Security Agreement
U.S. Registered Trademarks of Grantor
Registration Registration Registered
No. Date Filing Date Owner Xxxx
------------ ------------ ----------- ---------- ----
1,801,449 10/26/93 3/27/92 COMMTOUCH COMMTOUCH
SOFTWARE LTD.
Pending U.S. Trademark Applications of Grantor
Application No. Filing Date Applicant Xxxx
-------------- ------------ ----------- ----------
NONE
B-2.
