EXHIBIT 4.3
INTELLECTUAL PROPERTY SECURITY AGREEMENT
INTELLECTUAL PROPERTY SECURITY AGREEMENT (this "Agreement") is made as of
this 9th day of November, 2005, by and among:
XXXXX SUPERMARKETS, INC., a corporation organized under the laws of
the State of Indiana having a place of business at 0000 Xxxxxxxxxx Xxxx.,
Xxxxxxxxxxxx, Xxxxxxx 00000-0000, and TRADEMARK HOLDINGS, INC., a
corporation organized under the laws of the State of Delaware having a
place of business at 0000 Xxxxxxxxxx Xxxx., Xxxxxxxxxxxx, Xxxxxxx
00000-0000 (individually, each an "Grantor" and collectively, the
"Grantors"); and
BANK OF AMERICA, N.A., a national banking association, as collateral
agent (in such capacity, the "Collateral Agent") for the Secured Parties
(as defined the Credit Agreement defined below).
In consideration of the mutual covenants contained herein and benefits
to be derived herefrom, the parties hereto agree as follows:
WITNESSETH:
Reference is hereby made to a certain Credit Agreement dated as of even
date herewith (as the same may be amended, modified, supplemented or restated
hereafter, the "Credit Agreement") by, among others, (i) Xxxxx Supermarkets, LLC
(the "Lead Borrower"), (ii) the other Borrowers named therein (together with the
Lead Borrower, the "Borrowers"), (iii) the Lenders named therein, (iv) Bank of
America, N.A., as Administrative Agent and Collateral Agent for the Lenders and
as Swingline Lender, and (v) Bank of America, N.A, as Issuing Bank.
Reference is further made to a certain Security Agreement of even date
herewith in favor of the Collateral Agent and the Secured Parties (as such may
be amended, modified, supplemented or restated hereafter, the "Security
Agreement"), pursuant to which Security Agreement each Grantor, among others,
has granted to the Collateral Agent, for the benefit of the Secured Parties, a
security interest in the Collateral (as defined in the Security Agreement).
The Lenders have agreed to make Loans to the Borrowers, and the Issuing
Bank has agreed to issue Letters of Credit for the account of the Borrowers,
pursuant to, and upon the terms and subject to the conditions specified in, the
Credit Agreement, including a covenant requiring the execution and delivery by
the Grantors of this Agreement to secure the Borrowers' prompt payment and
performance of the Obligations.
Accordingly, the Grantors and the Collateral Agent, on behalf of itself and
each other Secured Party (and each of their respective successors and assigns)
hereby agree as follows:
SECTION 1
Definitions
1.1 Generally. Unless the context otherwise requires, all capitalized terms
used but not defined herein shall have the meanings set forth in the Credit
Agreement or the Security Agreement, as applicable, and all references to the
UCC shall mean the Uniform Commercial Code as in effect from time to time in the
State of New York; provided, however, that if a term is defined in Article 9 of
the UCC differently than in another Article thereof, the term shall have the
meaning set forth in Article 9, and provided further that if by reason of
mandatory provisions of law, perfection, or the effect of perfection or
non-perfection, of the security interest in any IP Collateral or the
availability of any remedy hereunder is governed by the Uniform Commercial Code
as in effect in a jurisdiction other than New York, "UCC" means the Uniform
Commercial Code as in effect in such other jurisdiction for purposes of the
provisions hereof relating to such perfection or effect of perfection or
non-perfection or availability of such remedy, as the case may be.
1.2 Definition of Certain Terms Used Herein. As used herein, the following
terms shall have the following meanings:
(a) "Copyrights" shall mean all copyrights or derivative work thereof
of each Grantor, whether registered or unregistered and whether published
or unpublished, including, without limitation, the copyrights listed on
Exhibit A annexed hereto and made a part hereof, together with all
registrations and recordings thereof and all applications in connection
therewith.
(b) "Copyright Licenses" shall mean all agreements, whether written or
oral, providing for the grant by or to any Grantor of any right to use any
Copyright, including, without limitation, the agreements listed on Exhibit
A annexed hereto and made a part hereof.
(c) "Copyright Office" shall mean the United States Copyright Office
or any other federal governmental agency which may hereafter perform its
functions.
(d) "Credit Agreement" shall have the meaning assigned to such term in
the preliminary statement of this Agreement.
(e) "Intellectual Property" shall have the meaning assigned to such
term in Section 3 hereof.
(f) "IP Collateral" shall have the meaning assigned to such term in
Section 2 hereof.
(g) "Licenses" shall mean, collectively, the Copyright Licenses, the
Patent Licenses and the Trademark Licenses.
(h) "Necessary Intellectual Property" shall mean any and all
Intellectual Property that is necessary, in the reasonable business
judgment of the Loan Parties, for the conduct of the business of the Loan
Parties from time to time.
(i) "Obligations" shall have the meaning assigned to such term in the
Security Agreement.
(j) "Patents" shall mean all letters patent and applications for
letters patent of each Grantor, and the inventions and improvements therein
disclosed, and any and all divisions, reissues and continuations of said
letters patent including, without limitation the patents listed on Exhibit
B annexed hereto and made a part hereof.
(k) "Patent Licenses" shall mean all agreements, whether written or
oral, providing for the grant by or to any Grantor of any right to
manufacture, use or sell any invention covered by a Patent, including,
without limitation, the agreements listed on Exhibit B annexed hereto and
made a part hereof.
(l) "PTO" shall mean the United States Patent and Trademark Office or
any other federal governmental agency which may hereafter perform its
functions.
(m) "Security Agreement" shall have the meaning assigned to such term
in the preliminary statement of this Agreement.
(n) "Trademarks" shall mean all trademarks, trade names, corporate
names, company names, business names, fictitious business names, trade
dress, trade styles, service marks, designs, logos and other source or
business identifiers of each Grantor, whether registered or unregistered,
including, without limitation, the trademarks listed on Exhibit C annexed
hereto and made a part hereof, together with all registrations and
recordings thereof, all applications in connection therewith, and any
goodwill of the business connected with, and symbolized by, any of the
foregoing.
(o) "Trademark Licenses" shall mean all agreements, whether written or
oral, providing for the grant by or to any Grantor of any right to use any
Trademark, including, without limitation, the agreements listed on Exhibit
C annexed hereto and made a part hereof.
1.3 Rules of Interpretation. The rules of interpretation specified in
Section 1.02 of the Credit Agreement shall be applicable to this Agreement.
SECTION 2
Security Interest
In furtherance and as confirmation of the Security Interest granted by the
Grantors to the Collateral Agent (for the benefit of the Secured Parties) under
the Security Agreement, and as further security for the payment or performance,
as the case may be, in full of the Obligations, each Grantor hereby ratifies
such Security Interest and grants to the Collateral Agent (for the benefit of
the Secured Parties) a continuing security interest, with a power of sale (which
power of sale shall be exercisable only following the occurrence of an Event of
Default), in all of the present and future right, title and interest of the
Grantors in and to the following property, and each item thereof, whether now
owned or existing or hereafter acquired or arising, together with
all products, proceeds, substitutions, and accessions of or to any of the
following property (collectively, the "IP Collateral"):
(a) All Copyrights and Copyright Licenses.
(b) All Patents and Patent Licenses.
(c) All Trademarks and Trademark Licenses.
(d) All renewals of any of the foregoing.
(e) All General Intangibles connected with the use of, or related to,
any and all Intellectual Property (including, without limitation, all
goodwill of the Grantors and their business, products and services
appurtenant to, associated with, or symbolized by, any and all Intellectual
Property and the use thereof).
(f) All income, royalties, damages and payments now and hereafter due
and/or payable under and with respect to any of the foregoing, including,
without limitation, payments under all Licenses entered into in connection
therewith and damages and payments for past or future infringements or
dilutions thereof.
(g) The right to xxx for past, present and future infringements and
dilutions of any of the foregoing.
(h) All of the Grantors' rights corresponding to any of the foregoing
throughout the world.
SECTION 3
Protection of Intellectual Property By Grantors
Except as set forth below in this Section 3, the Grantors shall undertake
the following with respect to each of the items respectively described in
Sections 2(a), (b), (c), (d) and (e) (collectively, the "Intellectual
Property"):
3.1 Pay all renewal fees and other fees and costs associated with
maintaining the Necessary Intellectual Property and with the processing of the
Intellectual Property and take all other reasonable and necessary steps to
maintain each registration of the Intellectual Property.
3.2 Take all actions reasonably necessary to prevent any of the Necessary
Intellectual Property from becoming forfeited, abandoned, dedicated to the
public, invalidated or impaired in any way.
3.3 At the Grantors' sole cost, expense, and risk, diligently pursue the
processing of each application for registration which is the subject of the
security interest created herein and not abandon or delay any such efforts.
3.4 At the Grantors' sole cost and expense, take any and all action which
the Grantors reasonably deem appropriate under the circumstances to protect the
Necessary Intellectual Property from infringement, misappropriation or dilution,
including, without limitation, the prosecution and defense of infringement
actions.
Notwithstanding the foregoing, so long as no Event of Default has occurred
and is continuing, and no Material Adverse Effect would result therefrom, no
Grantor shall have an obligation to use or to maintain any Intellectual Property
(i) that relates solely to any product that has been discontinued, abandoned or
terminated, and (ii) that has been replaced with Intellectual Property
substantially similar to the Intellectual Property that may be abandoned or
otherwise become invalid, so long as the failure to use or maintain such
Intellectual Property does not materially adversely affect the validity of such
replacement Intellectual Property and so long as such replacement Intellectual
Property is subject to the lien created by this Agreement.
SECTION 4
Grantors' Representations and Warranties
Each Grantors hereby represents and warrants that:
4.1 Exhibit A is a true, correct and complete list of all Copyrights and
Copyright Licenses owned by the Grantors as of the date hereof.
4.2 Exhibit B is a true, correct and complete list of all Patents and
Patent Licenses owned by the Grantors as of the date hereof.
4.3 Exhibit C is a true, correct and complete list of all Trademarks and
Trademark Licenses owned by the Grantors as of the date hereof.
4.4 Except as set forth in Exhibits A, B and C, none of the Intellectual
Property is the subject of any licensing or franchise agreement pursuant to
which any Grantor is the licensor or franchisor.
4.5 All IP Collateral is, and shall remain, free and clear of all Liens,
encumbrances, or security interests in favor of any Person, other than Permitted
Encumbrances, Liens in favor of the Collateral Agent and Liens permitted by
Section 6.02 of the Credit Agreement.
4.6 Each Grantor owns, or is licensed to use, all Intellectual Property
necessary for the conduct of its business as currently conducted. No material
claim has been asserted and is pending by any Person challenging or questioning
the use by any Grantor of any of the Intellectual Property owned by any Grantor
or the validity of any of the Intellectual Property owned by any Grantor, nor
does any Grantor know of any valid basis for any such claim, except as otherwise
set forth in the Credit Agreement. To the knowledge of the Grantors, the use by
the Grantors of the Intellectual Property does not infringe the rights of any
Person in any material respect. No holding, decision or judgment has been
rendered by any Governmental Authority which would limit, cancel or question the
validity of, or any Grantor's rights in, any Intellectual Property in any
respect that could reasonably be expected to have a Material Adverse Effect on
the business or the property of any Grantor.
4.7 The Grantors shall give the Collateral Agent written notice (with
reasonable detail) within ten (10) Business Days following the occurrence of any
of the following:
(a) The Grantors' obtaining rights to, and filing applications for
registration of, any new Intellectual Property, or otherwise acquiring
ownership of any newly registered Intellectual Property (other than the
Grantors' right to sell products containing the trademarks of others in the
ordinary course of the Grantors' business).
(b) The Grantors' becoming entitled to the benefit of any registered
Intellectual Property whether as licensee or licensor (other than the
Grantors' right to sell products containing the trademarks of others in the
ordinary course of the Grantors' business).
(c) The Grantors' entering into any new Licenses.
(d) The Grantors' knowing or having reason to know, that any
application or registration relating to any material Intellectual Property
may become forfeited, abandoned or dedicated to the public, or of any
adverse determination (including, without limitation, the institution of,
or any such determination in, any proceeding in the PTO, the Copyright
Office or any court or tribunal) regarding the Grantors' ownership of, or
the validity of, any material Intellectual Property or the Grantors' right
to register the same or to own and maintain the same.
SECTION 5
Agreement Applies to Future Intellectual Property
5.1 The provisions of this Agreement shall automatically apply to any such
additional property or rights described in subsections (a), (b) and (c) of
Section 4.7, above, all of which shall be deemed to be and treated as
"Intellectual Property" within the meaning of this Agreement.
5.2 Upon the reasonable request of the Collateral Agent, the Grantors shall
execute and deliver, and have recorded, any and all agreements, instruments,
documents and papers as the Collateral Agent may reasonably request to evidence
the Collateral Agent's security interest in any Copyright, Patent or Trademark
and the goodwill and General Intangibles of the Grantors relating thereto or
represented thereby (including, without limitation, filings with the PTO, The
Copyright Office or any similar office), and the Grantors hereby constitute the
Collateral Agent as their attorney-in-fact to execute and file all such writings
for the foregoing purposes, all acts of such attorney being hereby ratified and
confirmed; provided, however, the Collateral Agent's taking of such action shall
not be a condition to the creation or perfection of the security interest
created hereby.
SECTION 6
Grantors' Rights To Enforce Intellectual Property
Prior to the Collateral Agent's giving of notice to the Grantors (i)
following the occurrence of an Event of Default or (ii) pursuant to Section 6.1
below, the Grantors shall have the exclusive right to xxx for past, present and
future infringement of the Intellectual Property including the right to seek
injunctions and/or money damages, in an effort by the Grantors to protect the
Intellectual Property against encroachment by third parties, provided, however:
6.1 The Grantors shall provide the Collateral Agent with prior written
notice of the Grantors' intention to so xxx for enforcement of any Intellectual
Property. If, in the reasonable opinion of the Collateral Agent, the Grantors
have failed to take appropriate action within sixty (60) days after such notice
is given to Collateral Agent, upon notice to the Grantors, the Collateral Agent
may (but shall not be required to) itself take such action in the name of the
Grantors, with any damages recovered in such action, net of costs and attorneys'
fees reasonably incurred, to be applied as provided in Section 6.2 of the
Security Agreement.
6.2 Any money damages awarded or received by the Grantors on account of
such suit (or the threat of such suit) shall constitute IP Collateral.
6.3 Following the occurrence of any Event of Default, the Collateral Agent,
by notice to the Grantors may terminate or limit the Grantors' rights under this
Section 6.
SECTION 7
Collateral Agent's Actions To Protect Intellectual Property
In the event of:
(a) the Grantors' failure, within fifteen (15) days of written notice
from the Collateral Agent, to cure any failure by the Grantors to observe
or perform any of the Grantors' covenants or obligations hereunder; and/or
(b) the occurrence and continuance of any other Event of Default,
the Collateral Agent, acting in its own name or in that of the Grantors, may
(but shall not be required to) act in the Grantors' place and stead and/or in
the Collateral Agent's own right in connection therewith.
SECTION 8
Rights Upon Default
Upon the occurrence of any Event of Default, the Collateral Agent may
exercise all rights and remedies of a secured party upon default under the
Uniform Commercial Code as adopted in the State of New York, with respect to the
Intellectual Property, in addition to which the Collateral Agent may sell,
license, assign, transfer, or otherwise dispose of the Intellectual Property.
Any person may conclusively rely upon an affidavit of an officer of the
Collateral Agent that an Event of Default has occurred and that the Collateral
Agent is authorized to exercise such rights and remedies.
SECTION 9
Collateral Agent As Attorney In Fact
9.1 The Grantors hereby irrevocably constitute and designate the Collateral
Agent as and for the Grantors' attorney in fact, effective following the
occurrence and during the continuance of an Event of Default:
(a) To supplement and amend from time to time Exhibits A, B and C of
this Agreement to include any new or additional Intellectual Property of
the Grantors.
(b) To exercise any of the rights and powers referenced herein.
(c) To execute all such instruments, documents, and papers as the
Collateral Agent reasonably determines to be appropriate in connection with
the exercise of such rights and remedies and to cause the sale, license,
assignment, transfer, or other disposition of the Intellectual Property.
9.2 The within grant of a power of attorney, being coupled with an
interest, shall be irrevocable until this Agreement is terminated by a duly
authorized officer of the Collateral Agent.
9.3 The Collateral Agent shall not be obligated to do any of the acts or to
exercise any of the powers authorized by Sections 6.1 or 9.1, but if the
Collateral Agent elects to do any such act or to exercise any of such powers, it
shall not be accountable for more than it actually receives as a result of such
exercise of power, and shall not be responsible to any Grantor for any act or
omission to act except for any act or omission to act as to which there is a
final determination made in a judicial proceeding (in which proceeding the
Collateral Agent has had an opportunity to be heard) which determination
includes a specific finding that the subject act or omission to act had been
grossly negligent or willful misconduct.
SECTION 10
Collateral Agent's Rights
Any use by the Collateral Agent of the Intellectual Property, as authorized
hereunder in connection with the exercise of the Collateral Agent's rights and
remedies under this Agreement and under the Credit Agreement, shall be
coextensive with the Grantors' rights thereunder and with respect thereto and
without any liability for royalties or other related charges.
SECTION 11
Intent
This Agreement is being executed and delivered by the Grantors for the
purpose of registering and confirming the grant of the security interest of the
Collateral Agent in the IP
Collateral with the PTO and the Copyright Office. It is intended that the
security interest granted pursuant to this Agreement is granted as a supplement
to, and not in limitation of, the Security Interest granted to the Collateral
Agent, for the ratable benefit of the Secured Parties, under the Security
Agreement. All provisions of the Security Agreement shall apply to the IP
Collateral. The Collateral Agent shall have the same rights, remedies, powers,
privileges and discretions with respect to the security interests created in the
IP Collateral as in all other Collateral. In the event of a conflict between
this Agreement and the Security Agreement, the terms of this Agreement shall
control with respect to the IP Collateral and the Security Agreement with
respect to all other Collateral.
SECTION 12
Governing Law
THIS AGREEMENT SHALL BE GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH, THE LAW
OF THE STATE ON NEW YORK.
[SIGNATURE PAGES FOLLOW]
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
under seal as of the day and year first above written.
GRANTORS: XXXXX SUPERMARKETS, INC.
By: /S/ Xxxx X. Xxxxx
-------------------------------------
Xxxx X. Xxxxx, Senior Vice President,
Chief Financial Officer and Treasurer
Attest: /S/ X. Xxxxxxxx Butt
---------------------------------
X. Xxxxxxxx Butt, Secretary
TRADEMARK HOLDINGS, INC.
By: /S/ X. Xxxxxxxx Butt
-------------------------------------
X. Xxxxxxxx Butt, Assistant Treasurer
COLLATERAL AGENT: BANK OF AMERICA, N.A.
By: /S/ Xxxxx Xxxxxxxxxxx
-------------------------------------
Xxxxx Xxxxxxxxxxx
Director
EXHIBIT A
List of Copyrights and Copyright Licenses
COPYRIGHT REGISTRATIONS AND APPLICATIONS
None.
COPYRIGHT LICENSES
None.
EXHIBIT B
List of Patents and Patent Licenses
PATENTS AND PATENT APPLICATIONS
SERIAL APPLICATION
APPLICANT DESCRIPTION NUMBER NUMBER PUBLICATION DATE
--------- ------------------------------------------------------- ------ ----------- ----------------
Trademark Holdings, Inc. A store for selling merchandise to customers with a 068073 20050189413 September 1,
central, substantially open, area having a ceiling of a 2005
given height, and providing a place for merchandise.
PATENT LICENSES
None.
EXHIBIT C
List of Trademarks and Trademark Licenses
TRADEMARK REGISTRATIONS AND APPLICATIONS
REGISTRATION /
APPLICATION REGISTRATION /
OWNER TRADEMARK OR SERVICEMARK NUMBER FILING DATE
----- ----------------------------------------------------- -------------- ------------------
Xxxxx Supermarkets, Inc. Fielding's 2,978,778 July 26, 2005
Xxx X'Xxxxx Food Markets "Where Quality is the True 1,223,759 January 11, 1983
Value of Economy"
Trios Di Tuscanos 2,916,729 January 4, 2005
Yorktown 650,214 August 13, 1957
Trademark Holdings, Inc. Arthur's Fresh Market 2,902,361 November 9, 2004
Bean Bros. 2,789,486 December 2, 2003
[Design Only] 78/486,427 September 20, 2004
C.A.F.E., Inc. 78/483,822 September 15, 2004
Capitol Vending 2,790,586 December 9, 2003
Coffee Etc 2,575,953 June 4, 2002
Copper Moon 2,891,961 October 5, 2004
Creating Amazing Food Experiences 2,849,693 June 1, 2004
Deli Lean 2,009,189 October 15, 0000
Xxx X. Xxxxx 76/512,504 May 8, 2003
Enflora 1,697,116 June 23, 1992
Experts in Fresh 2,958,650 May 31, 2005
[Design only] 2,804,277 January 13, 2004
Fielding the Mouse 2,616,391 September 10, 2002
Flavor on a Budget 78/342,776 December 18, 2003
Floral Fashions 1,160,410 July 7, 1981
Food Expressions Market & Cafe 78/679,896 July 27, 2005
Xxxxx Fresh I. D. E. A Card 1,909,040 August 1, 1995
Fros T Blast 78/224,487 March 12, 2003
Gonna Make You Smile 1,875,706 January 24, 1995
[Design Only] 1,104,543 October 17, 1978
Hoosier Stick 1,253,875 October 11, 1983
If We're Not in Your 1,432,563 March 10, 1987
14
REGISTRATION /
APPLICATION REGISTRATION /
OWNER TRADEMARK OR SERVICEMARK NUMBER FILING DATE
----- ----------------------------------------------------- -------------- ------------------
Neighborhood Yet, We're On your Way Home
Trademark Holdings, Inc. If you need it Fast, Don't Drive Past . . . Village 78/539,950 December 30, 2004
Pantry
LoBill 1,638,724 Xxxxx 00, 0000
Xxxxx 1,087,155 Xxxxx 00, 0000
Xxxxx 869,064 May 6, 1969
Xxxxx 1,123,490 July 31, 1979
Xxxxx 874,895 August 12, 1969
Xxxxx 2,050,427 April 8, 1997
Xxxxx Kids' Club 2,554,821 April 2, 2002
Xxxxx Signature 76/512,505 May 8, 2003
XxXxxxxx 2,655,836 December 3, 2002
XxXxxxxx 2,542,770 February 26, 2002
Morganics 2,537,747 Xxxxxxxx 00, 0000
Xxx-X-Xxx 1,604,882 July 3, 0000
XxXxxxx 2,838,733 May 4, 2004
O'Malia's 2,813,211 February 10, 2004
O'Maila's CouponPlus 1,841,534 June 21, 1994
O'Malia's Indy's Premier Food Markets 2,834,571 April 20, 2004
Select a Sub 2,009,816 October 22, 1996
smilemaker 1,256,377 November 1, 1983
smilemaker 1,251,873 September 20, 1983
Steak Master 2,732,867 July 1, 2003
Xxxxxxxx'x 1,524,718 February 14, 1989
A [Design] 2,970,490 July 19, 2005
Thank$ a Lottery 1,628,597 December 18, 1990
The C.A.F.E. Group 2,872,983 August 10, 2004
The C.A.F.E. Group Creating Amazing Food Experiences 2,891,923 October 5, 2004
The Decision is Crystal Clear 2,455,317 May 29, 2001
Toscana Bistro 2,839,318 May 4, 2004
Village Pantry 1,162,326 July 21, 1981
Village Pantry 1,034,956 Xxxxx 0, 0000
Xxxxxxx Pantry 1,317,347 January 29, 1985
Village Pantry 855,710 August 27, 1968
VP [Design] 78/702,400 August 29, 2005
VP [Design] 2,839,973 May 11, 2004
15
REGISTRATION /
APPLICATION REGISTRATION /
OWNER TRADEMARK OR SERVICEMARK NUMBER FILING DATE
----- ----------------------------------------------------- -------------- ------------------
We Value You 1,025,923 November 25, 0000
Xxxxxxxx 1,042,414 June 29, 1976
Yorktown 757,851 October 1, 1963
Yorktown 2,045,590 March 19, 1997
Yorktown Family Value 76/512,503 March 2, 2004
TRADEMARK LICENSES
None.
16
