PATENT, TRADEMARK AND
LICENSE SECURITY AGREEMENT
THIS PATENT, TRADEMARK AND LICENSE SECURITY AGREEMENT
("Agreement") is made by VARI-LITE, INC., a Delaware corporation having its
principal office and place of business at 000 Xxxxx Xxx, Xxxxxx, Xxxxx 00000
("Grantor"), in favor of FIRSTAR BANK, NATIONAL ASSOCIATION, a national
banking association whose address is 000 Xxxxxx Xxxxxx, Xxxxxxxxxx, Xxxx 00000
("Grantee"):
W I T N E S S E T H:
WHEREAS, Grantor and Grantee are parties to a certain
Financing Agreement of even date herewith (as the same may hereafter be
amended, supplemented, amended and restated, renewed or otherwise modified
from time to time, the "Financing Agreement"), which Financing Agreement
provides (i) for the Grantee to, from time to time, extend credit to or for
the account of Grantor and (ii) for the grant by Grantor to Grantee of a
security interest in certain of Grantor's assets, including, without
limitation, its patents, patent applications, service marks, service xxxx
applications, service names, trademarks, trademark applications, service
names, trademarks, trademark applications, trade names, goodwill and licenses;
NOW, THEREFORE, in consideration of the premises set forth
herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Grantor agrees as follows:
1. INCORPORATION OF FINANCING AGREEMENT. The Financing
Agreement and the terms and provisions thereof are hereby incorporated herein
in their entirety by this reference thereto.
2. SECURITY INTEREST IN PATENTS. To secure the complete
and timely satisfaction of all of the "Obligations" (as defined in the
Financing Agreement), Grantor hereby grants and conveys to Grantee a lien and
security interest in all of the Grantor's right, title and interest in and to
all of its now owned or existing and filed and hereafter acquired or arising
and filed:
(A) patents and patent applications, including, without
limitation, the inventions and improvements described and claimed therein, and
those patents listed on SCHEDULE A, attached hereto and made a part hereof,
and (a) the reissues, divisions, continuations, renewals, extensions and
continuations-in-part thereof, (b) all income, royalties, damages and payments
now and hereafter due and/or payable under and with respect thereto,
including, without limitation, damages and payments for past or future
infringements thereof, (c) the right to xxx for past, present and future
infringements thereof, and (d) all rights corresponding thereto throughout the
world (all of the foregoing patents and applications, together with the items
described in clauses (a)-(d), are sometimes hereinafter individually and/or
collectively referred to as the "Patents"); and
(B) license agreements with any other party, whether Grantor is
a licensor or licensee under any such license agreement, including, without
limitation, the licenses listed on SCHEDULE C attached hereto and made a part
hereof, and the right to prepare for sale, sell and advertise for sale, all
"Inventory" (as defined in the Financing Agreement) now or hereafter owned by
Grantor and now or hereafter covered by such licenses (all of the foregoing is
hereinafter referred to collectively as the "Licenses").
3. SECURITY INTEREST IN TRADEMARK AND GOODWILL. To secure
the complete and timely satisfaction of all of the "Obligations" (as defined
in the Financing Agreement), Grantor hereby grants and conveys to Grantee a
lien and security interest in all of the Grantor's right, title and interest
in and to all of its now owned or existing and filed and hereafter acquired or
arising and filed:
(A) trademarks, trademark registrations, trade names and
trademark applications, service marks, service xxxx registrations, service
names and service xxxx applications, including, without limitation, the
trademarks, trademark registrations, trade names and trademark applications,
service marks, service xxxx registrations, service names and service xxxx
applications listed on SCHEDULE B, attached hereto and made a part thereof,
and (a) renewals thereof, (b) all income, royalties, damages and payments now
and hereafter due and/or payable with respect thereto, including, without
limitation, damages and payment for past or future infringements thereof, (c)
the right to xxx for past, present and future infringements thereof, and (d)
all rights corresponding thereto throughout the world (all of the foregoing
trademarks, service marks, trademark and service xxxx registrations, trade
names, service names and applications, together with the items described in
clauses (a)-(d), are sometimes hereinafter individually and/or collectively
referred to as the "Trademarks"); and
(B) the goodwill of Grantor's business, including, but not
by way of limitation, such goodwill connected with and symbolized by the
Trademarks.
4. RESTRICTIONS ON FUTURE ASSIGNMENTS. Grantor agrees
that until the Obligations shall have been satisfied in full and the Financing
Agreement shall have been terminated, Grantor will not, without Grantee's
prior written consent, enter into any agreement relating to the Patents,
Trademarks or Licenses (for example, a license agreement) and Grantor further
agrees that it will not take any action, or permit any action to be taken by
others subject to its control, including licensees, or fail to take any action
which would affect the validity or enforcement of the rights transferred to
Grantee under this Agreement.
5. NEW PATENTS, TRADEMARKS, AND LICENSES. Grantor
represents and warrants that the Patents, Trademarks and Licenses listed on
SCHEDULES A, B AND C, respectively, constitute all of the patents, service
marks, trademarks, applications and licenses now owned by Grantor. If, before
the Obligations shall have been satisfied in full, Grantor shall (i) obtain
rights to any new patentable inventions, trademarks, trademark registrations,
trade names, service marks, service xxxx registrations, service names, or
licenses, or (ii) become entitled to the
benefit of any patent, service xxxx or trademark application, service xxxx,
service xxxx registration, trademark, trademark registration, or license
renewal, or patent for any reissue, division, continuation, renewal,
extension, or continuation-in-part of any Patent or any improvement on any
Patent, the provisions of this Agreement shall automatically apply thereto and
Grantor shall give to Grantee prompt written notice thereof. Grantor hereby
authorizes Grantee as attorney in fact to modify this Agreement by amending
SCHEDULES A, B AND/OR C, as applicable, to include any future patents, patent
applications, service marks, service xxxx registrations, service xxxx
applications, service names, trademarks, trademark registrations, trademark
applications, trade names and licenses which are Patents, Trademarks or
Licenses, as applicable, under PARAGRAPHS 2 AND 3 above or under this
PARAGRAPH 5, and to file or refile this Agreement with the United States
Patent and Trademark Office.
6. REPRESENTATIONS AND WARRANTIES. Grantor represents and
warrants to and agrees with Grantee that:
(i) The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
(ii) Each of the Patents and Trademarks is valid and enforceable;
(iii) Grantor is the owner of the Patents and Trademarks and has
the power and authority to make, and will continue to have authority to
perform, this Agreement according to its terms;
(iv) This Agreement does not violate and is not in contravention
of any other agreement to which Grantor is a party or any judgment or decree
by which Grantor is bound and does not require any consent under any other
agreement to which Grantor is a party or by which Grantor is bound. Upon the
occurrence of and during the continuance of an Event of Default, Grantor
hereby authorizes the Commissioner of Patents and Trademarks to issue any and
all Patents on said inventions and any and all certificates of registration on
all Trademarks to Grantee as assignee of Grantor's entire interest;
(v) There has been no prior sale, pledge, encumbrance,
assignment or other transfer or disposition of any of the Patents, Trademarks
or Licenses or any part thereof and the same are free from all liens, charges
and encumbrances of any kind, including but not limited to licenses, shop
rights and covenants not to xxx third persons, other than Permitted Liens (as
defined in the Financing Agreement); and
(vi) The Licenses are valid and binding agreements enforceable
according to their terms. Each of the Licenses is in full force and effect and
has not been amended or abrogated and there is no default under any of the
Licenses.
7. TERMS. The term of the security interests granted
herein shall extend until the earlier of (i) the expiration of each of the
respective Patents, Trademarks and Licenses assigned hereunder, or (ii) the
Obligations have been paid in full and the Financing Agreement has been
terminated.
8. CONTINGENT ASSIGNMENT. The Grantor has executed in
blank and delivered to the Grantee an assignment of federally registered
trademarks in substantially the form of EXHIBIT 1 hereto (the "Assignment of
Trademarks") and an assignment of federally registered patents in
substantially the form of Exhibit 2 hereto (the "Assignment of Patents"). The
Grantor hereby authorizes the Grantee to complete as assignee and record with
the United States Patent and Trademark Office the Assignment of Trademarks and
the Assignment of Patents upon the occurrence and during the continuance of an
Event of Default and the proper exercise of the Grantee's remedies under this
Agreement.
9. DUTIES OF GRANTOR. Grantor shall have the duty to (i)
prosecute diligently any patent application of the Patents made by it and any
trademark or service xxxx application of the Trademarks made by it pending as
of the date hereof or thereafter until the Obligations shall have been paid in
full, (ii) make application on unpatented but patentable inventions and on
trademarks and service marks, as appropriate to the extent the making of such
application is consistent with past practices of Grantor and unless the
officers of Grantor reasonably determine in their best business judgment that
the application is not in the best interests of the Grantor, and (iii)
preserve and maintain all of its rights in patent applications and patents of
the Patents and in trademark applications, trademarks, trademark
registrations, service xxxx applications, service marks, and service xxxx
registrations of the Trademarks. Any expenses incurred in connection with such
applications shall be borne by Grantor. Grantor shall not abandon any right to
file a Patent application or Trademark application, or any pending Patent
application, Trademark application, Patent, or Trademark without the consent
of Grantee.
10. FINANCING STATEMENTS; DOCUMENTS. At the request of
Grantee, Grantor will join with Grantee in executing one or more financing
statements pursuant to the Ohio version of the Uniform Commercial Code in form
satisfactory to Grantee and will pay the costs of filing and/or recording this
Agreement and all financing, continuation and termination statements in all
public offices where filing or recording is deemed necessary or desirable by
Grantee. Grantor will execute and deliver to Grantee from time to time such
supplemental assignments or other instruments, including, but not by way of
limitation, additional assignments to be filed with the United States Patent
and Trademark Office, as Grantee may require for the purpose of confirming
Grantee's interest in the Patents, Trademarks and Licenses.
11. GRANTEE'S RIGHT TO XXX. Upon the occurrence of an
Event of Default (as defined in the Financing Agreement), Grantee shall have
the same rights, if any, as Grantor has, but shall in no way be obligated, to
bring suit in its own name to enforce the Licenses and the Patents and
Trademarks, and any licenses thereunder, and, if Grantee shall commence any
such suit, Grantor shall, at the request of Grantee, do any and all lawful
acts and execute any and all proper documents required by Grantee in aid of
such enforcement and Grantor shall promptly, upon demand and as a part of the
Obligations, reimburse and indemnify Grantee for all costs and expenses
incurred by Grantee in the exercise of its rights under this PARAGRAPH 11.
12. WAIVERS. No course of dealing between Grantor and
Grantee nor any failure to exercise nor any delay in exercising, on the part
of Grantee, any right, power or privilege hereunder or under the Financing
Agreement shall operate as a waiver thereof; nor shall
any single or partial exercise of any right, power or privilege hereunder or
thereunder preclude any other or further exercise thereof or the exercise of
any other right, power or privilege.
13. SEVERABILITY. The provisions of this Agreement are
severable, and if any clause or provision shall be held invalid and
unenforceable in whole or in part in any jurisdiction, then such invalidity or
unenforceability shall affect only such clause or provision, or part thereof,
in such jurisdiction, and shall not in any manner affect such clause or
provision in any other jurisdiction, or any other clause or provision of this
Agreement in any jurisdiction.
14. MODIFICATION. This Agreement cannot be altered,
amended or modified in any way, except as specifically provided in PARAGRAPH 5
hereof or by a writing signed by the parties hereto.
15. CUMULATIVE REMEDIES; EFFECT ON FINANCING AGREEMENT.
All of Grantee's rights and remedies with respect to the Patents, Trademarks
and Licenses, whether established hereby or by the Financing Agreement or any
other Loan Document, or by any other agreements or by law shall be cumulative
and may be exercised singularly or concurrently. Grantor acknowledges and
agrees that this Agreement is not intended to limit or restrict in any way the
rights and remedies of Grantee under Financing Agreement but rather is
intended to facilitate the exercise of such rights and remedies.
16. BINDING EFFECT; BENEFITS. This Agreement shall be
binding upon the Grantor and its respective successors and assigns, and shall
inure to the benefit of Grantee, its successors and assigns.
17. GOVERNING LAW. This Agreement has been delivered and
accepted in Cleveland, Ohio, and shall be governed by and construed in
accordance with the local laws of the State of Ohio.
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.]
IN WITNESS WHEREOF, VARI-LITE, INC., by its duly authorized officer,
has executed this Agreement as of the 29th day of December, 2000.
Signed and acknowledged VARI-LITE, INC.
in the presence of:
------------------------------
---------------------- Name: Xxxxxx X. Trojan III
Name: Title: Vice President-Finance and CFO
-----------------
----------------------
Name:
-----------------
STATE OF OHIO )
) ss:
COUNTY OF CUYAHOGA )
The foregoing Patent, Trademark and License Security
Agreement was executed and acknowledged before me this 29th day of December,
2000, by Xxxxxx X. Trojan III, the Vice President-Finance and CFO of
VARI-LITE, INC., a Delaware corporation, on behalf of the corporation.
------------------------------
Notary Public
Accepted at Cleveland, Ohio,
as of December 29, 2000.
FIRSTAR BANK, NATIONAL ASSOCIATION
By:
-------------------------------
Xxxx X. Xxxxxxx, Vice President
SCHEDULE A
(Patents)
SCHEDULE B
(Trademarks)
SCHEDULE C
(License Agreements)
EXHIBIT 1
ASSIGNMENT OF TRADEMARKS AND SERVICE MARKS (U.S.)
WHEREAS, Vari-Lite, Inc., a corporation organized and existing
under the laws of the State of Delaware, having a place of business at 000 Xxxxx
Xxx, Xxxxxx, Xxxxx 00000 (the "Assignor"), has adopted and used and is using the
trademarks (the "Trademarks") identified on the ANNEX hereto, and is the owner
of the registrations of and pending registration applications for such
Trademarks in the United States Patent and Trademark Office identified on such
ANNEX; and
WHEREAS, _________________________, a ___________ organized
and existing under the laws of the State of ___________, having a place of
business at _________________________________ (the "Assignee"), is desirous of
acquiring the Trademarks and the registrations thereof and registration
applications therefor;
NOW, THEREFORE, for good and valuable consideration, receipt
of which is hereby acknowledged, the Assignor does hereby assign, sell and
transfer unto the Assignee all right, title and interest in and to the
Trademarks, together with (a) the registrations of and registration applications
for the Trademarks, (b) the goodwill of the business symbolized by and
associated with the Trademarks and the registrations thereof, and (c) the right
to xxx and recover for, and the right to profits or damages due or accrued
arising out of or in connection with, any and all past, present or future
infringements or dilution of or damage or injury to the Trademarks or the
registrations thereof or such associated goodwill.
This Assignment of Trademarks and Service Marks (U.S.) is
intended to and shall take effect as a sealed instrument at such time as the
Assignee shall complete this instrument by inserting its name in the second
paragraph above and signing its acceptance of this Assignment of Trademarks and
Service Marks (U.S.) below.
IN WITNESS WHEREOF, the Assignor, by its duly authorized
officer, has executed this assignment, as an instrument under seal, on this 29th
day of December, 2000.
VARI-LITE, INC.
-----------------------------------
Name: Xxxxxx X. Trojan III
Title: Vice President-Finance and CFO
The foregoing assignment of the Trademarks and the
registration thereof and registration applications therefor by the Assignor to
the Assignee is hereby accepted as of the _____ day of __________,_____.
[Assignee]
----------------------------------------
By:
-------------------------------------
Title:
----------------------------------
STATE OF OHIO )
) ss:
COUNTY OF CUYAHOGA )
On this the 29th day of December, 2000, before me appeared
Xxxxxx X. trojan III, the person who signed this instrument, who acknowledged
that he is the Vice President-Finance and CFO of Vari-Lite, Inc. and that being
duly authorized (s)he signed such instrument as a free act on behalf of
Vari-Lite, Inc.
----------------------------------------
Notary Public
[Seal]
My commission expires:
------------------
ANNEX
Trademark Registrations--
or United States Patent and Trademark Office
Service Xxxx Registration No. Registration Date
------------ ---------------- -----------------
[List chronologically in ascending numerical order]
Trademark Registrations--
or United States Patent and Trademark Office
Service Xxxx Serial No. Filing Date
------------ ---------- -----------
[List chronologically in ascending numerical order]
EXHIBIT 2
ASSIGNMENT OF PATENTS (U.S.)
WHEREAS, VARI-LITE, INC., a corporation organized and existing
under the laws of the State of Delaware, having a place of business at 000 Xxxxx
Xxx, Xxxxxx, Xxxxx 00000 (the "Assignor"), has adopted and used and is using the
patents (the "Patents") identified on the ANNEX hereto, and is the owner of the
registrations of and pending registration applications for such Patents in the
United States Patent and Trademark Office identified on such ANNEX; and
WHEREAS, _________________________, a ___________ organized
and existing under the laws of the State of ___________, having a place of
business at _________________________________ (the "Assignee"), is desirous of
acquiring the Patents and the registrations thereof and registration
applications therefor;
NOW, THEREFORE, for good and valuable consideration, receipt
of which is hereby acknowledged, the Assignor does hereby assign, sell and
transfer unto the Assignee all right, title and interest in and to the Patents,
together with (a) the registrations of and registration applications for the
Patents, (b) the goodwill of the business symbolized by and associated with the
Patents and the registrations thereof, and (c) the right to xxx and recover for,
and the right to profits or damages due or accrued arising out of or in
connection with, any and all past, present or future infringements or dilution
of or damage or injury to the Patents or the registrations thereof or such
associated goodwill.
This Assignment of Patents (U.S.) is intended to and shall
take effect as a sealed instrument at such time as the Assignee shall complete
this instrument by inserting its name in the second paragraph above and signing
its acceptance of this Assignment of Patents (U.S.) below.
IN WITNESS WHEREOF, the Assignor, by its duly authorized
officer, has executed this assignment, as an instrument under seal, on this 29th
day of December, 2000.
VARI-LITE, INC.
--------------------------
Name: Xxxxxx X. Trojan III
Title: Vice President-Finance and CFO
The foregoing assignment of the Patents and the registration
thereof and registration applications therefor by the Assignor to the Assignee
is hereby accepted as of the _____ day of __________, 200__.
[Assignee]
------------------------------
By:
---------------------------
Title:
------------------------
STATE OF OHIO )
) ss:
COUNTY OF CUYAHOGA )
On this the 29th day of December, 2000, before me appeared
Xxxxxx X. Trojan III the person who signed this instrument, who acknowledged
that he is the Vice President-Finance and CFO of Vari-Lite, Inc. and that being
duly authorized he signed such instrument as a free act on behalf of Vari-Lite,
Inc.
-------------------------------------------
Notary Public
[Seal]
My commission expires:
---------------------
ANNEX
Registrations--
United States Patent and Trademark Office
Patents Registration No. Registration Date
------- ---------------- -----------------
[List chronologically in ascending numerical order]
Registrations--
United States Patent and Trademark Office
Patents Serial No. Filing Date
------- ---------- -----------
[List chronologically in ascending numerical order]
