INTELLECTUAL PROPERTY SECURITY AGREEMENT
EXHIBIT
10.2
This
Intellectual Property Security Agreement is entered into as of July 21, 2008, by
and between PARTNERS FOR GROWTH II, L.P. ("PFG") and St. Xxxxxxx Software, Inc.,
a Delaware corporation (individually and collectively, "Grantor"), with
reference to the following facts:
A. PFG and
Grantor, as Borrower, are parties to that certain Loan and Security Agreement
of even
date with this Agreement (as amended from time to time, the "Loan Agreement").
(Capitalized terms used herein have the meaning assigned in the Loan
Agreement.)
B. Pursuant
to the Loan Agreement, Grantor has granted to PFG a security interest in all of
the
Collateral. The Collateral includes without limitation all Intellectual Property
(including without limitation the Intellectual Property described
herein).
Grantor
agrees as follows:
To secure
performance of all of its "Obligations" as defined in the Loan Agreement,
Grantor grants to PFG a security interest in all of Grantor's right, title and
interest in Grantor's Intellectual Property, including without limitation (i)
the trademarks and servicemarks listed or required to be listed from time to
time on Schedule
A hereto, whether registered or not, and all applications to register and
registrations of the same and like protections, and the entire goodwill of the
business of Borrower connected with and symbolized by such trademarks, and (ii)
the patents and patent applications listed or required to be listed from time to
time on Schedule
B hereto and all like protections including, without limitation, all
improvements, divisions, continuations, renewals, reissues, extensions and
continuations-in-part of the same, (iii) all copyrights, maskworks, software,
computer programs and other works of authorship listed or required to be listed
from time to time on Schedule C hereto,
and all extensions and renewals thereof, (iv) all domain names and domain name rights
used in connection with its business and that of its Subsidiaries, all legal and equitable
rights in domain names and ownership thereof, domain registry, domain servers, web hosting
and related contracts, services and facilities (collectively, "Domain Rights") listed or
required to be listed from time to time on Schedule D hereto,
and all extensions and renewals thereof, and (iv) all rights to recover for past
or future infringement of any of the foregoing, and (v) all right, title and
interest in and to any and all present and future license agreements with
respect to any of the foregoing, and (vi) all present and future accounts,
accounts receivable and other rights to payment arising from, in connection with
or relating to any of the foregoing.
1. Grantor represents and
warrants that (i) listed on Schedule A hereto are
all trademark registrations
and pending registrations owned or controlled by Grantor, (ii) listed on Schedule B are all
patents and patent applications owned or controlled by Grantor, (iii) listed on
Schedule C are
all copyrights,
software, computer programs, mask works, and other works of authorship owned or
controlled by Grantor which are registered with the United States Copyright
Office, and (iv) listed on Schedule D are all
Domain Rights in which Grantor has any legal, contractual or equitable
right.
2. Grantor
shall not, hereafter, register any maskworks, software, computer programs or
other
works of authorship subject to United States copyright protection with the
United States Copyright Office without first complying with the following: (i)
providing Secured Party with at least 10 business days prior written notice
thereof, (ii) providing Secured Party with a copy of the application for any
such registration and (iii) executing and filing such other instruments, and
taking such further actions as Secured Party may reasonably request from time to
time to perfect or continue the perfection of Secured Party's interest in the
Collateral, including without limitation the filing with the United States
Copyright Office, simultaneously with the filing by Grantor of the application
for any such registration, of a copy of this Agreement or a Supplement hereto in
form reasonably acceptable to Secured Party identifying the maskworks, software,
computer programs or other works of authorship being registered and confirming
the grant of a security interest therein in favor of Secured Party.
3. This
Agreement is being executed and delivered pursuant to the Loan Agreement;
nothing
herein limits any of the terms or provisions of the Loan Agreement, and PFG's
rights hereunder and under the Loan Agreement are cumulative. This Agreement,
the Loan Agreement and the other Loan Documents set forth in full all of the
representations and agreements of the parties with respect to the subject matter
hereof and supersede all prior discussions, oral representations, oral
agreements and oral understandings between the parties. This Agreement may not
be modified or amended, nor may any rights hereunder be waived, except in a
writing signed by the parties hereto. In the event of any litigation between the
parties based upon, arising out of, or in any way relating to this Agreement,
the prevailing party shall be entitled to recover all of its reasonable costs
and expenses (including without limitation reasonable attorneys' fees) from the
non-prevailing party. This Agreement and all acts, transactions, disputes and
controversies arising hereunder or relating hereto, and all rights and
obligations of PFG and Grantor shall be governed by, and construed in accordance
with the internal laws (and not the conflict of laws rules) of the State of
California.
4. Grantor agrees that
simultaneously with the execution of this Agreement, and thereafter upon any
amendment of Schedule
A, Schedule B, Schedule C or Schedule D, the
appropriate entities constituting Grantor shall execute notices in the forms
appended hereto (each, a "Notice"), as
appropriate, with respect to all of the pledged Intellectual Property, now owned
or hereafter acquired, and shall deliver each Notice to PFG for the purpose of
recordation at the U.S. Patent and Trademark Office or the U.S. Copyright
Office, or otherwise, as appropriate. Whether or not Grantor executes such a
Notice reflecting new Intellectual Property, Grantor hereby irrevocably appoints
PFG as its lawful attorney-in-fact without any further authorization to file
such ,notices, liens or other instruments as may be customary from time to
time for
PFG to perfect security interests in Grantor's Intellectual Property. With
respect to the power of attorney granted in the attached DOMAIN RIGHTS
COLLATERAL AGREEMENT AND NOTICE, so long as no default has occurred and is
continuing under the Loan Documents, PFG shall not take any action referenced
therein in the name of Grantor.
| Address of Grantor: | St. Xxxxxxx Software, Inc. |
|
00000
Xxxxxx xx Xxxxxxx
Xxx
Xxxxx, XX 00000
|
By: /s/ Xxxxxxx X.
Xxxxx
Name:
Xxxxxxx X. Xxxxx
Title:
Chief Executive Officer and Secretary
|
|
Address
of PFG:
Partners
for Growth II, L.P.
000
Xxxxxxx Xxxxxx
Xxx
Xxxxxxxxx, Xxxxxxxxxx 00000
|
PARTNERS FOR GROWTH II, L.P. |
| By: /s/ Xxxxxx X.
Xxxx
Name:
Xxxxxx X. Xxxx
Title: Manager,
Partners for Growth II, LLC
Its: General
Partner
|
SCHEDULE
A
St.
Xxxxxxx Software, Inc.
Trademark
Schedule
Trademarks
|
Serial
Number - Registration Number
|
Xxxx
|
|
78298124
|
EPRISM
|
|
75823687
|
IPRISM
|
|
78/613,844
|
ST.
XXXXXXX
|
|
77/084,182
|
LIVEPRISM
|
SCHEDULE
B
St.
Xxxxxxx Software, Inc.
Patent
Schedule
|
Patents
|
|
Patent/Application Number
|
Title
|
|
|
|
|
|
|
|
|
|
|
|
|
SCHEDULE
C
St.
Xxxxxxx Software, Inc.
COPYRIGHTS
SCHEDULE
D
St.
Xxxxxxx Software, Inc.
DOMAIN RIGHTS
| Domain Name |
Service Provider Contact
Details and Account Number if any)
|
Owner and Registrar or
Administrative
Contact of
Record
|
Expiry Date of Domain
|
| XXXXXXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/1/11 |
| XXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
12/31/10 |
| XXXXXX-XXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/25/09 |
| XXXXXXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/25/09 |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
1/25/09 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/25/08 | |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/11/08 | |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
1/1/09 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/14/08 | |
| XXXXXXXXX.XX.XX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX.XX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX |
NETWORK
SOLUTIONS
|
11/14/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
12/13/08 | |
| XXXXXXXXXXXXXXXXX.XXXX |
NETWORK
SOLUTIONS
|
12/25/08 |
TRADEMARK COLLATERAL
AGREEMENT AND NOTICE
This
Trademark Collateral Agreement and Notice dated as of July 21, 2008, is between
St. Xxxxxxx Software, Inc., a Delaware corporation with its principal place of
business at 00000 Xxxxxx xx Xxxxxxx, Xxx Xxxxx, XX 00000 ("Assignor") and
Partners for Growth II, L.P., 000 Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000 ("Assignee") pursuant
to a Loan and Security Agreement dated July 21, 2008, by and among Assignor and
Assignee and pursuant to certain other loan documents referenced therein
(collectively, the "Loan
Documents").
WHEREAS,
Assignor is the owner of certain trademarks, including all federal applications
and/or registrations therefor, together with the goodwill of the business
connected with the use of and symbolized thereby, as listed on Exhibit 1 hereto (the
"Marks");
and
WHEREAS,
Assignee has agreed to extend certain credit to Assignor on condition that the
Assignor pledge and grant to Assignee as collateral for the Obligations (as
defined in the Loan Documents) a security interest and lien in and to the Marks
and all proceeds thereof and all other related claims and rights as more fully
described in a certain Intellectual Property Security Agreement (the "Security
Agreement") in favor of the Assignee dated July 21, 2008, by and among Assignor
and Assignee;
NOW
THEREFORE, for good and valuable consideration, as security for the due and
timely payment and performance of the Obligations, Assignor hereby pledges and
grants to Assignee a security interest and lien in and to the Marks and all
proceeds thereof and gives notice of such security interest and the existence of
such Security Agreement providing therefor.
Executed
as of the date first above written.
| Assignor: | Assignee: |
| St. Xxxxxxx Software, Inc. | PARTNERS FOR GROWTH II, L.P. |
| By /s/ Xxxxxxx X. Xxxxx | By /s/ Xxxxxx X. Xxxx |
|
Chief Executive
Officer
|
|
| Name: Xxxxxx X. Xxxx | |
| By /s/ Xxxxxxx X. Xxxxx | |
|
Secretary
|
Title:
Manager, Partners for Growth II, LLC
Its
General Partner
|
EXHIBIT
1
St.
Xxxxxxx Software, Inc.
Trademark
Schedule
|
Serial
Number - Registration Number
|
Xxxx
|
|
78298124
|
EPRISM
|
|
75823687
|
IPRISM
|
|
78/613,844
|
ST.
XXXXXXX
|
|
77/084,182
|
LIVEPRISM
|
PATENT COLLATERAL AGREEMENT
AND NOTICE
This
Patent Collateral Agreement and Notice dated as of July 21, 2008, is between
St.
Xxxxxxx
Software, Inc., a Delaware corporation with its principal place of
business at 00000 Xxxxxx xx Xxxxxxx, Xxx Xxxxx, XX 00000 ("Assignor") and
Partners for Growth II, L.P., 000 Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000 ("Assignee") pursuant
to a Loan and Security Agreement dated July 21, 2008, by and among Assignor and
Assignee and pursuant to certain other loan documents referenced therein
(collectively, the "Loan
Documents").
WHEREAS,
Assignor is the owner of certain United States patents and/or patent
applications as listed on Exhibit 1 hereto (the
"Patents"); and
WHEREAS,
Assignee has agreed to extend certain credit to Assignor on condition that the
Assignor pledge and grant to Assignee as collateral for the Obligations (as
defined in the Loan Documents) a security interest and lien in and to the
Patents and all proceeds thereof and all other related claims and rights as more
fully described in a certain Intellectual Property Security Agreement (the
"Security Agreement") in favor of the Assignee dated July 21, 2008, by and among
Assignor and Assignee;
NOW
THEREFORE, for good and valuable consideration, as security for the due and
timely payment and performance of the Obligations, Assignor hereby pledges and
grants to Assignee a security interest and lien in and to the Patents and all
proceeds thereof and gives notice of such security
interest and the existence of such Security Agreement providing
therefor.
Executed
as of the date first above written.
| Assignor: | Assignee: |
| St. Xxxxxxx Software, Inc. | PARTNERS FOR GROWTH II, L.P. |
| By /s/ Xxxxxxx X. Xxxxx | By /s/ Xxxxxx X. Xxxx |
|
Chief Executive
Officer
|
|
| Name: Xxxxxx X. Xxxx | |
| By /s/ Xxxxxxx X. Xxxxx | |
|
Secretary
|
Title:
Manager, Partners for Growth II, LLC
Its
General Partner
|
EXHIBIT
1
St.
Xxxxxxx Software, Inc.
Patent
Schedule
Patents
|
Patent/Application
Number
|
Title
|
COPYRIGHT COLLATERAL
AGREEMENT AND NOTICE
This
Copyright Collateral Agreement and Notice dated as of July 21, 2008, is between
St. Xxxxxxx
Software, Inc., a Delaware corporation with its principal place of
business at 00000 Xxxxxx xx Xxxxxxx, Xxx Xxxxx, XX 00000 ("Assignor") and
Partners for Growth II, L.P., 000 Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000 ("Assignee") pursuant
to a Loan and Security Agreement dated July 21, 2008, by and among Assignor and
Assignee and pursuant to certain other loan documents referenced therein
(collectively, the "Loan
Documents").
WHEREAS,
Assignor is the owner of certain copyrightable works which are the subject of
United States copyright registrations and/or copyright applications as listed on
Exhibit 1
hereto (the "Copyrights");
and
WHEREAS,
Assignee has agreed to extend certain credit to Assignor on condition that the
Assignor pledge and grant to Assignee as collateral for the Obligations (as
defined in the Loan Documents) a security interest and lien in and to the
Copyrights and all proceeds thereof and all other related claims and rights as
more fully described in a certain Intellectual Property Security Agreement (the
"Security Agreement") in favor of the Assignee :Led July 21, 2008, by and among
Assignor and Assignee;
NOW
THEREFORE, for good and valuable consideration, as security for the due and
timely payment and performance of the Obligations, Assignor hereby pledges and
grants to Assignee a security interest and lien in and to the Copyrights and all
proceeds thereof and gives notice of such security interest and the existence of
such Security Agreement providing therefor.
Executed
as of the date first above written.
| Assignor: | Assignee: |
| St. Xxxxxxx Software, Inc. | PARTNERS FOR GROWTH II, L.P. |
| By /s/ Xxxxxxx X. Xxxxx | By /s/ Xxxxxx X. Xxxx |
|
Chief Executive
Officer
|
|
| Name: Xxxxxx X. Xxxx | |
| By /s/ Xxxxxxx X. Xxxxx | |
|
Secretary
|
Title:
Manager, Partners for Growth II, LLC
Its
General Partner
|
EXHIBIT
1
St.
Xxxxxxx Software, Inc.
COPYRIGHT
SCHEDULE
None
registered
DOMAIN RIGHTS
COLLATERAL AGREEMENT AND NOTICE
This
Domain Rights Collateral Agreement and Notice dated as of July 21, 2008, is
between St. Xxxxxxx
Software, Inc., a Delaware corporation with its principal place of
business at 00000 Xxxxxx xx Xxxxxxx, Xxx Xxxxx, XX 00000 ("Assignor") and
Partners for Growth II, L.P., 000 Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, XX 00000 ("Assignee") pursuant
to a Loan and Security Agreement dated July 21, 2008, by and among Assignor and
Assignee and pursuant to certain other loan documents referenced therein
(collectively, the "Loan
Documents").
WHEREAS,
Assignor is the owner of certain Domain Rights as defined in the Loan
Documents
which are, as of the date hereof, as listed on Exhibit 1 hereto (the
"Domain
Rights"); and
WHEREAS,
Assignee has agreed to extend certain credit to Assignor on condition that the
Assignor pledge and grant to Assignee as collateral for the Obligations (as
defined in the Loan Documents) a security interest and lien in and to the Domain
Rights and all proceeds thereof and all other related claims and rights as more
fully described in a certain Intellectual Property Security Agreement (the
"Security Agreement") in favor of the Assignee dated July 21, 2008, by and among
Assignor and Assignee;
NOW
THEREFORE, for good and valuable consideration, as security for the due and
timely payment and performance of the Obligations: (1) Assignor hereby pledges
and grants to Assignee a security interest and lien in and to the Domain Rights
and all proceeds thereof and gives notice of such security interest and the
existence of such Security Agreement providing therefor; and (2) Assignor hereby
irrevocably appoints PFG as its lawful attorney-in-fact without any further
authorization to take any action and file any notice on behalf of Assignor that
Assignor itself could file in respect of its Domain Rights, including without
limitation, to transfer Domain Rights, change administrative contacts in respect
of Domain Rights, maintain Domain Rights, and provide instructions to domain
hosting services and any domain name registrars.
Executed
as of the date first above written.
| Assignor: | Assignee: |
| St. Xxxxxxx Software, Inc. | PARTNERS FOR GROWTH II, L.P. |
| By /s/ Xxxxxxx X. Xxxxx | By /s/ Xxxxxx X. Xxxx |
|
Chief Executive
Officer
|
|
| Name: Xxxxxx X. Xxxx | |
| By /s/ Xxxxxxx X. Xxxxx | |
|
Secretary
|
Title:
Manager, Partners for Growth II, LLC
Its
General Partner
|
SCHEDULE D
St. Xxxxxxx
Software, Inc.
DOMAIN
RIGHTS
| Domain Name |
Service Provider Contact
Details and Account Number if any)
|
Owner and Registrar or
Administrative
Contact of
Record
|
Expiry Date of Domain
|
| XXXXXXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/1/11 |
| XXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
12/31/10 |
| XXXXXX-XXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/25/09 |
| XXXXXXXXX.XXX |
______
|
NETWORK
SOLUTIONS
|
1/25/09 |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
1/25/09 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/25/08 | |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/11/08 | |
| XXXXXX.XXX |
NETWORK
SOLUTIONS
|
1/1/09 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/14/08 | |
| XXXXXXXXX.XX.XX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XXX.XX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXX.XX |
NETWORK
SOLUTIONS
|
11/14/08 | |
| XXXXXXXXX.XX.XXX |
NETWORK
SOLUTIONS
|
11/15/08 | |
| XXXXXXXXXXXXX.XXX |
NETWORK
SOLUTIONS
|
12/13/08 | |
| XXXXXXXXXXXXXXXXX.XXXX |
NETWORK
SOLUTIONS
|
12/25/08 |
