EXHIBIT 10.1
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INTELLECTUAL PROPERTY SECURITY AGREEMENT
This Intellectual Property Security Agreement (this "IP Agreement") is made
as of the 12th day of November, 1998 by and between SeaChange
International, Inc. ("Grantor"), and Silicon Valley Bank, a California banking
corporation ("Lender").
RECITALS
A. Lender has agreed to make advances of money and to extend certain
financial accommodations to Grantor (the "Loans"), pursuant to a Loan and
Security Agreement of even date herewith (the "Loan" or the "Loan Agreement")
and Grantor desired to borrow such funds from Lender. The Loan is or will be
secured in part pursuant to the terms of the Loan and Security Agreement.
Lender is willing to make such Loans to Grantor, but only upon the condition,
among others, that Grantor shall grant to Lender a security interest in certain
Copyrights, Trademarks, Patents, and Mask Works to secure the obligations of
Grantor under the Loan Agreement. Defined terms used but not defined herein
shall have the same meanings as in the Loan and Security Agreement.
B. Pursuant to the terms of the Loan and Security Agreement, Grantor has
granted to Lender a security interest in all of Grantor's right title and
interest, whether presently existing or hereafter acquired in, to and under all
of the Collateral (as defined herein).
NOW, THEREFORE, for good and valuable consideration, receipt of which is
hereby acknowledged and intending to be legally bound, as collateral security
for the prompt and complete payment when due of Grantor's Indebtedness under the
Loan Agreement, Grantor hereby represents, warrants, covenants and agrees as
follows:
1. Grant of Security Interest. As collateral security for the prompt and
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complete payment and performance of all of Grantor's present or future
Indebtedness, obligations and liabilities to Lender, Grantor hereby grants a
security interest in all of Grantor's right, title and interest in, to and under
its Intellectual Property Collateral (all of which shall collectively be called
the "Intellectual Property Collateral"), including, without limitation, the
following:
(a) Any and all copyright rights, copyright applications, copyright
registrations and like protections in each work or authorship and
derivative work thereof, whether published or unpublished and whether or
not the same also constitutes a trade secret, now or hereafter existing,
created, acquired or held, including without limitation those set forth on
Exhibit A attached hereto (collectively, the "Copyrights");
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(b) Any and all trade secrets, and any and all intellectual property
rights in computer software and computer software products now or hereafter
existing, created, acquired or held;
(c) Any and all design rights which may be available to Grantor now or
hereafter existing, created, acquired or held;
(d) All patents, patent applications and like protections including,
without limitation, improvements, divisions, continuations, renewals,
reissues, extensions and continuations-in-part of the same, including
without limitation the patents and patent applications set forth on
Exhibit B attached hereto (collectively, the "Patents");
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(e) Any trademark and servicemark rights, whether registered or not,
applications to register and registrations of the same and like
protections, and the entire goodwill of the business of Grantor connected
with and symbolized by such trademarks, including without limitation those
set forth on Exhibit C attached hereto (collectively, the "Trademarks");
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(f) All mask works or similar rights available for the protection of
semiconductor chips, now owned or hereafter acquired, including, without
limitation those set forth on Exhibit D attached hereto (collectively, the
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"Mask Works");
(g) Any and all claims for damages by way of past, present and future
infringements of any of the rights included above, with the right, but not
the obligation, to xxx for and collect such damages for said use or
infringement of the intellectual property rights identified above;
(h) All licenses or other rights to use any of the Copyrights,
Patents, Trademarks, or Mask Works and all license fees and royalties
arising from such use to the extent permitted by such license or rights;
and
(i) All amendments, extensions, renewals and extensions of any of the
Copyrights, Trademarks, Patents, or Mask Works; and
(j) All proceeds and products of the foregoing, including without
limitation all payments under insurance or any indemnity or warranty
payable in respect of any of the foregoing.
2. Authorization and Request. Grantor authorizes and requests that the
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Register of Copyrights and the Commissioner of Patents and Trademarks record
this IP Agreement.
3. Covenants and Warranties. Grantor represents, warrants, covenants and
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agrees as follows:
(a) Performance of this IP Agreement does not conflict with or result
in a breach of any IP Agreement to which Grantor is bound, except to the
extent that certain intellectual property agreements prohibit the
assignment of the rights thereunder to a third party without the licensor's
or other party's consent and this IP Agreement constitutes a security
interest.
(b) During the term of this IP Agreement, Grantor will not transfer or
otherwise encumber any interest in the Intellectual Property Collateral,
except for licenses granted by Grantor in the ordinary course of business
or as set forth in this IP Agreement;
(c) To its knowledge, each of the Patents is valid and enforceable,
and no part of the Intellectual Property Collateral has been judged invalid
or unenforceable, in whole or in part, and no claim has been made that any
part of the Intellectual Property Collateral violates the rights of any
third party;
(d) This IP Agreement creates, and in the case of after acquired
Intellectual Property Collateral, this IP Agreement will create at the time
Grantor first has rights in such after acquired Intellectual Property
Collateral, in favor of Lender a valid and perfected first priority
security interest in the Intellectual Property Collateral in the United
States securing the payment and performance of the obligations evidenced by
the Loan and Security Agreement upon making the filings referred to in
clause (i) below;
(e) All information heretofore, herein or hereafter supplied to
Lender by or on behalf of Grantor with respect to the Intellectual Property
Collateral is accurate and complete in all material respects when made, and
in light of the circumstances in which it was furnished.
(f) Grantor shall not enter into any agreement that would materially
impair or conflict with Grantor's obligations hereunder without Lender's
prior written consent, which consent shall not be unreasonably withheld.
Grantor shall not permit the inclusion in any material contract to which it
becomes a party of any provisions that could or might in any way prevent
the creation of a security interest in Grantor's rights and interest in any
property included within the definition of the Intellectual Property
Collateral acquired under such contracts, except that certain contracts may
contain anti-assignment provisions that could in effect prohibit the
creation of a security interest in such contracts.
(g) Upon any executive officer of Grantor obtaining actual knowledge
thereof, Grantor will promptly notify Lender in writing of any event that
has or may have a Material Adversely Effect on the value of any material
Intellectual Property Collateral, the ability of Grantor to dispose of any
material Intellectual Property Collateral or the rights and remedies of
Lender in relation thereto, including the levy of any legal process against
any of the Intellectual Property Collateral.
4. Lender's Rights. Lender shall have the right, but not the obligation,
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to take, at Grantor's sole expense, any actions that Grantor is required under
this IP Agreement to take but which Grantor fails to take, after fifteen (15)
days' notice to Grantor. Grantor shall reimburse and indemnify Lender for all
reasonable costs and reasonable expenses incurred in the reasonable exercise of
its rights under this section 4.
5. Further Assurances; Attorney in Fact.
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(a) On a continuing basis, Grantor will, subject to any prior
licenses, encumbrances and restrictions and prospective licenses, make,
execute, acknowledge and deliver, and file and record in the proper filing
and recording places in the United States, all such instruments, including
appropriate financing and continuation statements and collateral agreements
and filings with the United States Patent and Trademarks Office and the
Register of Copyrights, and take all such action as may reasonably be
deemed necessary or advisable, or as requested by Lender, to perfect
Lender's security interest in all Copyrights, Patents, Trademarks, and Mask
Works and otherwise to carry out the intent and purposes of this IP
Agreement, or for assuring and confirming to Lender the grant or perfection
of a security interest in all Intellectual Property Collateral.
(b) Grantor hereby irrevocably appoints Lender as Grantor's
attorney-in-fact, to be execised only upon the occurrence and continuance
of an Event of Default, with full authority in the place and stead of
Grantor and in the name of Grantor, Lender or otherwise, from time to time
in Lender's discretion, upon Grantor's failure or inability to do so, to
take any action and to execute any instrument which Lender may deem
necessary or advisable to accomplish the purposes of this IP Agreement,
including:
(i) To modify, in its sole discretion, this IP Agreement without
first obtaining Grantor's approval of or signature to such
modification by amending Exhibit A, Exhibit B, Exhibit C, and Exhibit
D hereof, as appropriate, to include reference to any right, title or
interest in any Copyrights, Patents, Trademarks or Mask Works acquired
by Grantor after the execution hereof or to delete any reference to
any right, title or interest in any Copyrights, Patents, Trademarks,
or Mask Works in which Grantor no longer has or claims any right,
title or interest; and
(ii) To file, in its sole discretion, one or more financing or
continuation statements and amendments thereto, relative to any of the
Intellectual Property Collateral without the signature of Grantor
where permitted by law.
6. Events of Default. The occurrence of any of the following shall
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constitute an Event of Default under this IP Agreement:
(a) An Event of Default occurs under the Loan and Security Agreement;
or any document from Grantor to Lender; or
(b) Grantor breaches any warranty or agreement made by Grantor in
this IP Agreement.
7. Remedies. Upon the occurrence and continuance of an Event of Default,
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Lender shall have the right to exercise all the remedies of a secured party
under the Massachusetts Uniform Commercial Code, including without limitation
the right to require Grantor to assemble the Intellectual Property Collateral
and to make it available to Lender at a place designated by
Lender. Lender shall have a nonexclusive, royalty free license to use the
Copyrights, Patents, Trademarks, and Mask Works to the extent reasonably
necessary to permit Lender to exercise its rights and remedies upon the
occurrence of an Event of Default. Grantor will pay any expenses (including
reasonable attorney's fees) incurred by Lender in connection with the exercise
of any of Lender's rights hereunder, including without limitation any expense
incurred in disposing of the Intellectual Property Collateral. All of Lender's
rights and remedies with respect to the Intellectual Property Collateral shall
be cumulative.
8. Indemnity. Grantor agrees to defend, indemnify and hold harmless
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Lender and its officers, employees, and agents against: (a) all obligations,
demands, claims, and liabilities claimed or asserted by any other party in
connection with the transactions contemplated by this IP Agreement, and (b) all
losses or expenses in any way suffered, incurred, or paid by Lender as a result
of or in any way arising out of, following or consequential to transactions
between Lender and Grantor, whether under this IP Agreement or otherwise
(including without limitation, reasonable attorneys fees and reasonable
expenses), except for losses arising from or out of Lender's gross negligence or
willful misconduct.
9. Reassignment. At such time as Grantor shall completely satisfy all of
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the obligations secured hereunder, Lender shall execute and deliver to Grantor
all deeds, assignments, and other instruments as may be necessary or proper to
reinvest in Grantor full title to the property assigned hereunder, subject to
any disposition thereof which may have been made by Lender pursuant hereto.
10. Course of Dealing. No course of dealing, nor any failure to exercise,
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nor any delay in exercising any right, power or privilege hereunder shall
operate as a waiver thereof.
11. Attorneys' Fees. If any action relating to this IP Agreement is
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brought by either party hereto against the other party, the prevailing party
shall be entitled to recover reasonable attorneys fees, costs and disbursements.
12. Amendments. This IP Agreement may be amended only by a written
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instrument signed by both parties hereto.
13. Counterparts. This IP Agreement may be executed in two or more
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counterparts, each of which shall be deemed an original but all of which
together shall constitute the same instrument.
14. Law and Jurisdiction. This IP Agreement shall be governed by and
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construed in accordance with the laws of the Commonwealth of Massachusetts.
GRANTOR ACCEPTS FOR ITSELF AND IN CONNECTION WITH ITS PROPERTIES,
UNCONDITIONALLY, THE NON-EXCLUSIVE JURISDICTION OF ANY STATE OR FEDERAL COURT OF
COMPETENT JURISDICTION IN THE COMMONWEALTH OF MASSACHUSETTS IN ANY ACTION, SUIT,
OR PROCEEDING OF ANY KIND, AGAINST IT WHICH ARISES OUT OF OR BY REASON OF THIS
AGREEMENT; PROVIDED, HOWEVER, THAT IF FOR ANY REASON LENDER CANNOT AVAIL ITSELF
OF THE COURTS OF THE
COMMONWEALTH OF MASSACHUSETTS, GRANTOR ACCEPTS JURISDICTION OF THE COURTS AND
VENUE IN SANTA XXXXX COUNTY, CALIFORNIA.
GRANTOR AND LENDER EACH 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. EACH PARTY RECOGNIZES AND AGREES THAT THE FOREGOING WAIVER
CONSTITUTES A MATERIAL INDUCEMENT FOR IT TO ENTER INTO THIS AGREEMENT. EACH
PARTY REPRESENTS AND WARRANTS THAT IT HAS REVIEWED THIS WAIVER WITH ITS LEGAL
COUNSEL AND THAT IT KNOWINGLY AND VOLUNTARILY WAIVES ITS JURY TRIAL RIGHTS
FOLLOWING CONSULTATION WITH LEGAL COUNSEL.
15. Confidentiality. In handling any confidential information, Lender
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shall exercise the same degree of care that it exercises with respect to its own
proprietary information of the same types to maintain the confidentiality of any
non-public information thereby received or received pursuant to this IP
Agreement except that the disclosure of this information may be made (i) to the
affiliates of the Lender, (ii) to prospective transferee or purchasers of an
interest in the obligations secured hereby, provided that they have entered
into comparable confidentiality agreement in favor of Grantor and have deliver a
copy to Grantor, (iii) as required by law, regulation, rule or order, subpoena
judicial order or similar order and (iv) as may be required in connection with
the examination, audit or similar investigation of Lender.
IN WITNESS WHEREOF, the parties hereto have executed this IP Agreement on
the day and year first above written.
Address of Grantor: GRANTOR:
000 Xxxxx Xxxxxx SEACHANGE INTERNATIONAL, INC.
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Xxxxxxx, XX 00000
_______________________________________ By: /s/ Xxxxxxx X. Xxxxxxx
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Name: Xxxxxxx X. Xxxxxxx
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Title: Chief Financial Officer
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