EXHIBIT 10.4
PATENT AND TRADEMARK SECURITY AGREEMENT
This PATENT AND TRADEMARK SECURITY AGREEMENT ("Agreement"), dated as of May 21,
1997, is entered into between L.A. GEAR CALIFORNIA, INC., a California
corporation ("Grantor"), which has a mailing address at 0000 Xxxxx Xxxx Xxxx.,
Xxxxx Xxxxxx, Xxxxxxxxxx 00000, and CONGRESS FINANCIAL CORPORATION (WESTERN)
("Congress"), which has a mailing address at 000 X. Xxxx Xxxxxx, Xxxxx 0000,
Xxxxxxxx, Xxxxxxxxxx 00000.
RECITALS
A. Grantor and Congress are, contemporaneously herewith, entering into
that certain Loan and Security Agreement ("Loan Agreement") and other
instruments, documents and agreements contemplated thereby or related thereto
(collectively, together with the Loan Agreement, the "Loan Documents"); and
B. Grantor is the owner of certain intellectual property, identified
below, in which Grantor is granting a security interest to Congress.
NOW THEREFORE, in consideration of the mutual promises, covenants,
conditions, representations, and warranties hereinafter set forth and for other
good and valuable consideration, the parties hereto mutually agree as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 DEFINITIONS. The following terms, as used in this Agreement, have
the following meanings:
"CODE" means the California Uniform Commercial Code, as amended and
supplemented from time to time, and any successor statute.
"COLLATERAL" means all of the following, whether now owned or
hereafter acquired:
(i) Each of the trademarks and rights and interest which are
capable of being protected as trademarks (including trademarks, service
marks, designs, logos, indicia, tradenames, corporate names, company names,
business names, fictitious business names, trade styles, and other source or
business identifiers, and applications pertaining thereto), which are
presently, or in the future may be, owned, created, acquired, or used
(whether pursuant to a license or otherwise) by Grantor, in whole or in part,
and all trademark rights with respect thereto throughout the world, including
all proceeds thereof (including license royalties and proceeds of
infringement suits), and rights to renew and extend such trademarks and
trademark rights;
(ii) Each of the patents and patent applications which are
presently, or in the future may be, owned, issued, acquired, or used (whether
pursuant to a license or otherwise) by Grantor, in whole or in part, and all
patent rights with respect thereto throughout the world, including all
proceeds thereof (including license royalties and proceeds of infringement
suits), foreign filing rights, and rights to extend such patents and patent
rights;
(iii) All of Grantor's right to the trademarks and trademark
registrations listed on EXHIBIT A attached hereto, as the same may be updated
hereafter from time to time;
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(iv) All of Grantor's right, title, and interest, in and to the
patents and patent applications listed on EXHIBIT B attached hereto, as the
same may be updated hereafter from time to time;
(v) All of Grantor's right, title and interest to register
trademark claims under any state or federal trademark law or regulation of
any foreign country and to apply for, renew, and extend the trademark
registrations and trademark rights, the right (without obligation) to xxx or
bring opposition or cancellation proceedings in the name of Grantor or in the
name of Congress for past, present, and future infringements of the
trademarks, registrations, or trademark rights and all rights (but not
obligations) corresponding thereto in the United States and any foreign
country;
(vi) All of Grantor's right, title, and interest in all
patentable inventions, and to file applications for patent under federal
patent law or regulation of any foreign country, and to request reexamination
and/or reissue of the patents, the right (without obligation) to xxx or bring
interference proceedings in the name of Grantor or in the name of Congress
for past, present, and future infringements of the patents, and all rights
(but not obligations) corresponding thereto in the United States and any
foreign country;
(vii) 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;
(viii) All general intangibles relating to the foregoing and all
other intangible intellectual or other similar property of the Grantor of any
kind or nature, associated with or arising out of any of the aforementioned
properties and assets and not otherwise described above; and
(ix) All products and proceeds of any and all of the foregoing
(including, without limitation, license royalties and proceeds of
infringement suits) and, to the extent not otherwise included, all payments
under insurance, or any indemnity, warranty, or guaranty payable by reason of
loss or damage to or otherwise with respect to the Collateral.
"OBLIGATIONS" means all obligations, liabilities, and indebtedness
of Grantor to Congress, whether direct, indirect, liquidated, or contingent,
and whether arising under this Agreement, the Loan Agreement, any other of
the Loan Documents, or otherwise, including all costs and expenses described
in Section 9.8 hereof.
1.2 CONSTRUCTION. Unless the context of this Agreement clearly requires
otherwise, references to the plural include the singular, references to the
singular include the plural, and the term "including" is not limiting. The
words "hereof," "herein," "hereby," "hereunder," and other similar terms
refer to this Agreement as a whole and not to any particular provision of
this Agreement. Any initially capitalized terms used but not defined herein
shall have the meaning set forth in the Loan Agreement. Any reference herein
to any of the Loan Documents includes any and all alterations, amendments,
extensions, modifications, renewals, or supplements thereto or thereof, as
applicable. Neither this Agreement nor any uncertainty or ambiguity herein
shall be construed or resolved against Congress or Grantor, whether under any
rule of construction or otherwise. On the contrary, this Agreement has been
reviewed by Grantor, Congress, and their respective counsel, and shall be
construed and interpreted according to the ordinary meaning of the words used
so as to fairly accomplish the purposes and intentions of Congress and
Grantor. Headings have been set forth herein for convenience only, and shall
not be used in the construction of this Agreement.
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2. GRANT OF SECURITY INTEREST.
To secure the complete and timely payment and performance of all
Obligations, and without limiting any other security interest Grantor has
granted to Congress, Grantor hereby grants, assigns, and conveys to Congress a
security interest in Grantor's entire right, title, and interest in and to the
Collateral.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
Grantor hereby represents, warrants, and covenants that:
3.1 TRADEMARKS; PATENTS. A true and complete schedule setting forth all
federal and state trademark registrations owned or controlled by Grantor or
licensed to Grantor, together with a summary description and full information in
respect of the filing or issuance thereof and expiration dates is set forth on
EXHIBIT A; and a true and complete schedule setting forth all patent and patent
applications owned or controlled by Grantor or licensed to Grantor, together
with a summary description and full information in respect of the filing or
issuance thereof and expiration dates is set forth on EXHIBIT B.
3.2 VALIDITY; ENFORCEABILITY. Each of the patents and trademarks is valid
and enforceable, and Grantor is not presently aware of any past, present, or
prospective claim by any third party that any of the patents or trademarks are
invalid or unenforceable, or that the use of any patents or trademarks violates
the rights of any third person, or of any basis for any such claims.
3.3 TITLE. Grantor is the sole and exclusive owner of the entire and
unencumbered right, title, and interest in and to each of the patents, patent
applications, trademarks, and trademark registrations, free and clear of any
liens, charges, and encumbrances, including pledges, assignments, licenses, shop
rights, and covenants by Grantor not to xxx third persons.
3.4 NOTICE. Grantor has used and will continue to use proper statutory
notice in connection with its use of each of the patents and trademarks.
3.5 QUALITY. Grantor has used and will continue to use consistent
standards of high quality (which may be consistent with Grantor's past
practices) in the manufacture, sale, and delivery of products and services sold
or delivered under or in connection with the trademarks, including, to the
extent applicable, in the operation and maintenance of its merchandising
operations, and will continue to maintain the validity of the trademarks.
3.6 PERFECTION OF SECURITY INTEREST. Except for the filing of a financing
statement with the Secretary of State of California and filings with the United
States Patent and Trademark Office necessary to perfect the security interests
created hereunder, no authorization, approval, or other action by, and no notice
to or filing with, any governmental authority or regulatory body is required
either for the grant by Grantor of the security interest hereunder or for the
execution, delivery, or performance of this Agreement by Grantor or for the
perfection of or the exercise by Congress of its rights hereunder to the
Collateral in the United States.
4. AFTER-ACQUIRED PATENT OR TRADEMARK RIGHTS.
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 Congress with respect to any such new trademarks or
patents, or renewal or extension of any trademark registration. Grantor shall
bear any expenses incurred in connection with future patent applications or
trademark registrations. Without limiting
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Grantor's obligation under this Section 4, Grantor authorizes Congress to modify
this Agreement by amending EXHIBITS A or B to include any such new patent or
trademark rights. Notwithstanding the foregoing, no failure to so modify this
Agreement or amend EXHIBITS A or B shall in any way affect, invalidate or
detract from Congress's continuing security interest in all Collateral, whether
or not listed on EXHIBIT A or B.
5. LITIGATION AND PROCEEDINGS.
Grantor shall commence and diligently prosecute in its own name, as the
real party in interest, for its own benefit, and its own expense, such suits,
administrative proceedings, or other action for infringement or other damages as
are in its reasonable business judgment necessary to protect the Collateral.
Grantor shall provide to Congress any information with respect thereto requested
by Congress. Congress shall provide at Grantor's expense all necessary
cooperation in connection with any such suits, proceedings, or action,
including, without limitation, joining as a necessary party. Following Grantor's
becoming aware thereof, Grantor shall notify Congress of the institution of, or
any adverse determination in, any proceeding in the United States Patent and
Trademark Office, or any United States, state, or foreign court regarding
Grantor's claim of ownership in any of the patents or trademarks, its right to
apply for the same, or its right to keep and maintain such patent or trademark
rights.
6. POWER OF ATTORNEY.
Grantor hereby appoints Congress as Grantor's true and lawful attorney,
with full power of substitution, to do any or all of the following, in the name,
place and stead of Grantor: (a) file this Agreement (or an abstract hereof) or
any other document describing Congress's interest in the Collateral with the
United States Patent and Trademark Office; (b) execute any modification of this
Agreement pursuant to Section 4 of this Agreement; (c) take any action and
execute any instrument which Congress may deem necessary or advisable to
accomplish the purposes of this Agreement; and (d) following an Event of Default
(as defined in the Loan Agreement), (i) endorse Grantor's name on all
applications, documents, papers and instruments necessary for Congress to use or
maintain the Collateral; (ii) ask, demand, collect, xxx for, recover, impound,
receive, and give acquittance and receipts for money due or to become due under
or in respect of any of the Collateral; (iii) file any claims or take any action
or institute any proceedings that Congress may deem necessary or desirable for
the collection of any of the Collateral or otherwise enforce Congress's rights
with respect to any of the Collateral, and (iv) assign, pledge, convey, or
otherwise transfer title in or dispose of the Collateral to any person.
7. RIGHT TO INSPECT.
Grantor grants to Congress and its employees and agents the right to visit
Grantor's plants and facilities which manufacture, inspect, or store products
sold under any of the patents or trademarks, and to inspect the products and
quality control records relating thereto at reasonable times during regular
business hours.
8. SPECIFIC REMEDIES.
Upon the occurrence of any Event of Default (as defined in the Loan
Agreement), Congress shall have, in addition to, other rights given by law or in
this Agreement, the Loan Agreement, or in any other Loan Document, all of the
rights and remedies with respect to the Collateral of a secured party under the
Code, including the following:
8.1 NOTIFICATION. Congress may notify licensees to make royalty payments
on license agreements directly to Congress;
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8.2 SALE. Congress may sell or assign the Collateral and associated
goodwill at public or private sale for such amounts, and at such time or
times as Congress deems advisable. Any requirement of reasonable notice of
any disposition of the Collateral shall be satisfied if such notice is sent
to Grantor five (5) days prior to such disposition. Grantor shall be credited
with the net proceeds of such sale only when they are actually received by
Congress, and Grantor shall continue to be liable for any deficiency
remaining after the Collateral is sold or collected. If the sale is to be a
public sale, Congress shall also give notice of the time and place by
publishing a notice one time at least five (5) days before the date of the
sale in a newspaper of general circulation in the county in which the sale is
to be held. To the maximum extent permitted by applicable law, Congress may
be the purchaser of any or all of the Collateral and associated goodwill at
any public sale and shall be entitled, for the purpose of bidding and making
settlement or payment of the purchase price for all or any portion of the
Collateral sold at any public sale, to use and apply all or any part of the
Obligations as a credit on account of the purchase price of any collateral
payable by Congress at such sale.
9. GENERAL PROVISIONS.
9.1 EFFECTIVENESS. This Agreement shall be binding and deemed effective
when executed by Grantor and Congress.
9.2 NOTICES. Except to the extent otherwise provided herein, all
notices, demands, and requests that either party is required or elects to
give to the other shall be in writing and shall be governed by the notice
provisions of the Loan Agreement.
9.3 NO WAIVER. No course of dealing between Grantor and Congress, nor
any failure to exercise nor any delay in exercising, on the part of Congress,
any right, power, or privilege under this Agreement or under the Loan
Agreement or any other agreement, shall operate as a waiver. No single or
partial exercise of any right, power, or privilege under this Agreement or
under the Loan Agreement or any other agreement by Congress shall preclude
any other or further exercise of such right, power, or privilege or the
exercise of any other right, power, or privilege by Congress.
9.4 RIGHTS ARE CUMULATIVE. All of Congress's rights and remedies with
respect to the Collateral whether established by this Agreement, the Loan
Agreement, or any other documents or agreements, or by law shall be
cumulative and may be exercised concurrently or in any order.
9.5 SUCCESSORS. The benefits and burdens of this Agreement shall inure
to the benefit of and be binding upon the respective successors and permitted
assigns of the parties; provided that Grantor may not transfer any of the
Collateral or any rights hereunder, without the prior written consent of
Congress, except as specifically permitted hereby.
9.6 SEVERABILITY. The provisions of this Agreement are severable. If
any provision of this Agreement is held invalid or unenforceable in whole or
in part in any jurisdiction, then such invalidity or unenforceability shall
affect only such provision, or part thereof, in such jurisdiction, and shall
not in any manner affect such provision or part thereof in any other
jurisdiction, or any other provision of this Agreement in any jurisdiction.
9.7 ENTIRE AGREEMENT. This Agreement is subject to modification only by
a writing signed by the parties, except as provided in Section 4 of this
Agreement. To the extent that any provision of this Agreement conflicts with
any provision of the Loan Agreement, the provision giving Congress 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 Congress
under the Loan Agreement. This Agreement, the Loan Agreement, and the
documents relating thereto comprise the entire agreement of the parties with
respect to the matters addressed in this Agreement.
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9.8 FEES AND EXPENSES. Grantor shall pay to Congress on demand all
costs and expenses that Congress pays or incurs in connection with the
negotiation, preparation, consummation, administration, enforcement, and
termination of this Agreement, including: (a) reasonable attorneys' and
paralegals' fees and disbursements of counsel to Congress; (b) costs and
expenses (including reasonable attorneys' and paralegals' fees and
disbursements) for any amendment, supplement, waiver, consent, or subsequent
closing in connection with this Agreement and the transactions contemplated
hereby; (c) costs and expenses of lien and title searches; (d) taxes, fees,
and other charges for filing this Agreement at the United States Patent and
Trademark Office, or for filing financing statements, and continuations, and
other actions to perfect, protect, and continue the security interest created
hereunder; (e) sums paid or incurred to pay any amount or take any action
required of Grantor under this Agreement that Grantor fails to pay or take;
(f) costs and expenses of preserving and protecting the Collateral; and (g)
costs and expenses (including reasonable attorneys' and paralegals' fees and
disbursements) paid or incurred to enforce the security interest created
hereunder, sell or otherwise realize upon the Collateral, and otherwise
enforce the provisions of this Agreement, or to defend any claims made or
threatened against the Congress arising out of the transactions contemplated
hereby (including preparations for the consultations concerning any such
matters). The foregoing shall not be construed to limit any other provisions
of this Agreement or the Loan Documents regarding costs and expenses to be
paid by Grantor. The parties agree that reasonable attorneys' and paralegals'
fees and costs incurred in enforcing any judgment are recoverable as a
separate item in addition to fees and costs incurred in obtaining the
judgment and that the recovery of such attorneys' and paralegals' fees and
costs is intended to survive any judgment, and is not to be deemed merged
into any judgment.
9.9 INDEMNITY. Grantor shall protect, defend, indemnify, and hold
harmless Congress and Congress's assigns from all liabilities, losses, and
costs (including without limitation reasonable attorneys' fees) incurred or
imposed on Congress relating to the matters in this Agreement.
9.10 FURTHER ASSURANCES. At Congress's request, Grantor shall execute
and deliver to Congress any further instruments or documentation, and perform
any acts, that may be reasonably necessary or appropriate to implement this
Agreement, the Loan Agreement or any other agreement, and the documents
relating thereto, including without limitation any instrument or
documentation reasonably necessary or appropriate to create, maintain,
perfect, or effectuate Congress's security interests in the Collateral.
9.11 RELEASE. At such time as Grantor shall completely satisfy all of
the Obligations and the Loan Agreement shall be terminated, Congress shall
execute and deliver to Grantor all assignments and other instruments as may
be reasonably necessary or proper to terminate Congress's security interest
in the Collateral, subject to any disposition of the Collateral which may
have been made by Congress pursuant to this Agreement. For the purpose of
this Agreement, the Obligations shall be deemed to continue if Grantor enters
into any bankruptcy or similar proceeding at a time when any amount paid to
Congress could be ordered to be repaid as a preference or pursuant to a
similar theory, and shall continue until it is finally determined that no
such repayment can be ordered.
9.12 GOVERNING LAW. The validity and interpretation of this Agreement
and the rights and obligations of the parties shall be governed by the laws
of the State of California, excluding its conflict of law rules to the extent
such rules would apply the law of another jurisdiction, and the United
States. The parties agree that all actions or proceedings arising in
connection with this Agreement shall be tried and litigated only in the state
and federal courts located in the County of Los Angeles, State of California
or, at the sole option of CONGRESS, in any other court in which CONGRESS
shall initiate legal or equitable proceedings and which has subject matter
jurisdiction over the matter in controversy. each of Grantor and CONGRESS
waives, to the extent permitted
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under applicable law, any right they may have to assert the doctrine of forum
non conveniens or to object to venue to the extent any proceeding is brought
in accordance with this Section.
9.13 WAIVER OF RIGHT TO JURY TRIAL. CONGRESS AND GRANTOR EACH HEREBY
WAIVE THE RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED UPON,
ARISING OUT OF, OR IN ANY WAY RELATING TO: (I) THIS AGREEMENT; OR (II) ANY
OTHER PRESENT OR FUTURE INSTRUMENT OR AGREEMENT BETWEEN CONGRESS AND GRANTOR;
OR (III) ANY CONDUCT, ACTS OR OMISSIONS OF CONGRESS OR GRANTOR OR ANY OF
THEIR DIRECTORS, OFFICERS, EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER PERSONS
AFFILIATED WITH CONGRESS OR GRANTOR; IN EACH OF THE FOREGOING CASES, WHETHER
SOUNDING IN CONTRACT OR TORT OR OTHERWISE.
IN WITNESS WHEREOF, the parties have executed this Agreement on the date
first written above.
CONGRESS FINANCIAL CORPORATION L.A. GEAR CALIFORNIA, INC.
(WESTERN)
By /s/ Xxxxxx X. XxXxxx By /s/ Xxxxxx X. Xxxxxxxxx
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Title Senior Vice President Title Senior Vice President and CEO
--------------------------------- -----------------------------
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STATE OF CALIFORNIA )
) ss.
COUNTY OF LOS ANGELES )
On May 21, 1997, before me, Xxxxxxx Xxxxxxx, Notary Public, personally
appeared XXXXXX X. XXXXXX, personally known to me (or proved to me on the basis
of satisfactory evidence) to be the person(s) whose name(s) is/are subscribed to
the within instrument and acknowledged to me that he/she/they executed the same
in his/her/their authorized capacity(ies), and that by his/her/their
signature(s) on the instrument the person(s), or the entity upon behalf of which
the person(s) acted, executed the instrument.
Witness my hand and official seal.
/s/ Xxxxxxx Xxxxxxx
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[SEAL]
(Seal)
STATE OF CALIFORNIA )
) ss.
COUNTY OF LOS ANGELES )
On May 21, 1997, before me, Xxxxxxx Xxxxxxx, Notary Public, personally
appeared XXXXXX X. XXXXXXXXX, personally known to me (or proved to me on the
basis of satisfactory evidence) to be the person(s) whose name(s) is/are
subscribed to the within instrument and acknowledged to me that he/she/they
executed the same in his/her/their authorized capacity(ies), and that by
his/her/their signature(s) on the instrument the person(s), or the entity upon
behalf of which the person(s) acted, executed the instrument.
Witness my hand and official seal.
/s/ Xxxxxxx Xxxxxxx
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[SEAL]
(Seal)
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