SUBORDINATED COPYRIGHT, PATENT, TRADEMARK
AND LICENSE MORTGAGE
THIS SUBORDINATED COPYRIGHT, PATENT, TRADEMARK AND LICENSE MORTGAGE
(this "Mortgage") made as of this 8th day of October, 2003, by PEERLESS
CORPORATION, an Ohio corporation, having an office at 2121 Brooks Avenue,
Neenah, Wisconsin 54956 ("Mortgagor") in favor of The Bank of New York, a New
York banking corporation, as Trustee (the "Trustee") for the noteholders (the
"Noteholders") under the Indenture (as defined below). The Trustee's address is
101 Barclay Street, 8th Floor West, New York, New York 10286.
W I T N E S S E T H:
WHEREAS, (a) that certain Indenture (as amended, supplemented or
otherwise modified from time to time, the "Indenture") dated as of the date
hereof by and among Neenah Foundry Company, a Wisconsin corporation ("Neenah
Foundry"), the Subsidiary Guarantors party thereto and the Trustee and (b) the
Collateral Documents (collectively with the Indenture, the "Indenture
Documents"), have been entered into to provide, among other things, (i) for the
issuance by Neenah Foundry of 11% senior secured notes due September 30, 2010 in
the aggregate principal amount of $133,130,000 and (ii) for the grant by
Mortgagor to the Trustee, on behalf of the Noteholders, of a security interest
in substantially all of Mortgagor's assets, including, without limitation, the
copyrights, copyright agreements, copyright applications, patents, patent
applications, trademarks, trademark applications, trade names, service marks,
service mark applications, goodwill and certain licenses of Mortgagor;
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt, sufficiency and adequacy
of which are hereby acknowledged, Mortgagor agrees as follows:
1. Incorporation of Indenture Documents.
(a) The Indenture Documents and the terms and provisions thereof
are hereby incorporated herein in their entirety by this reference. All terms
capitalized but not otherwise defined herein shall have the same meanings herein
as in the Indenture.
(b) Notwithstanding anything set forth in this Agreement to the
contrary, the liens securing this Mortgage are subordinate in the manner and to
the extent set forth in that certain Lien Subordination Agreement (the
"Subordination Agreement") dated as of the date hereof among Trustee, Neenah
Foundry and the other "Companies" (as defined therein) party thereto and Fleet
Capital Corporation ("Agent"), to the liens securing the indebtedness (including
interest) owed by the Companies pursuant to or in connection with that certain
Loan and Security Agreement dated as of the date hereof among Neenah Foundry,
certain of the other Companies, Agent and the lenders from time to time party
thereto, as such Loan and Security Agreement may be amended, supplemented or
otherwise modified from time to time and to indebtedness refinancing the
indebtedness under such Loan and Security Agreement; and the Trustee (on behalf
of itself and each Noteholder), by
its acceptance hereof, irrevocably agrees to be bound by the provisions of the
Subordination Agreement and each agreement made therein by the Trustee on its
behalf.
2. Mortgage of Copyrights, Patents, Trademarks and Licenses. To
secure the complete and timely payment and satisfaction of all of the
Obligations, Mortgagor hereby grants to Mortgagee for its own benefit and the
benefit of Noteholders, and hereby reaffirms its prior grant pursuant to the
Indenture Documents of, a continuing security interest in all of its now
existing and hereafter created or acquired:
(i) copyrights, rights and interests in copyrights, works protectable
by copyrights, copyright registrations and copyright applications,
including, without limitation, the copyright registrations and applications
listed on Exhibit A attached hereto and hereby made a part hereof, and all
renewals, extensions and continuations of any of the foregoing, all income,
royalties, damages and payments now and hereafter due and/or payable under
or with respect to any of the foregoing, including, without limitation,
damages and payments for past, present or future infringements of any of
the foregoing and the right to sue for past, present and future
infringements of any of the foregoing (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the
"Copyrights");
(ii) patents and patent applications, including, without limitation,
the inventions and improvements described and claimed therein, all
patentable inventions and those patents and patent applications listed on
Exhibit B attached hereto and made a part hereof, and all reissues,
divisions, continuations, renewals, extensions and continuations-in-part of
any of the foregoing, and all income, royalties, damages and payments now
and hereafter due and/or payable under or with respect to any of the
foregoing, including, without limitation, damages and payments for past,
present or future infringements of any of the foregoing and the right to
sue for past, present and future infringements of any of the foregoing (all
of the foregoing are sometimes hereinafter individually and/or collectively
referred to as the "Patents");
(iii) trademarks, trademark registrations, trademark applications,
trade names, corporate names, company names, business names, fictitious
business names, trade styles, service marks, other business identifiers,
prints and labels on which any of the foregoing have appeared or appear,
all registrations and recordings thereof, and all applications in
connection therewith (other than "intent to use" applications until a
verified statement of use is filed with respect to such applications),
including, without limitation, the trademarks, trade names, service marks,
registrations and applications listed on Exhibit C attached hereto and
hereby made a part hereof, and all renewals, extensions and continuations
of any of the foregoing, and all income, royalties, damages and payments
now and hereafter due and/or payable under or with respect to any of the
foregoing, including, without limitation, damages and payments for past,
present or future infringements of any of the foregoing and
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the right to sue for past, present and future infringements of any of the
foregoing (all of the foregoing are sometimes hereinafter individually
and/or collectively referred to as the "Trademarks"; provided, however, the
term "Trademarks" shall not include any trademarks, trade names, business
names or service marks incorporating the word "Peerless");
(iv) all license agreements between Mortgagor and any other party with
respect to any of the Copyrights or any of the Patents or any of the
Trademarks or any other copyright, patent, trademark, service mark or any
registration or application for registration or any other trade name or
tradestyle, whether Mortgagor is a licensor or licensee under any such
license agreement, including, without limitation, the licenses listed on
Exhibit D attached hereto and hereby made a part hereof, other than license
agreements which, according to their terms, may not be assigned without the
prior consent of the other Person party thereto (unless such consent has
been obtained) (all of the foregoing license agreements and Mortgagor's
rights thereunder are referred to collectively as the "Licenses"); and
(v) all rights corresponding to any of the foregoing throughout the
world and the goodwill of Mortgagor's business connected with and
symbolized by the Trademarks.
Upon the occurrence and during the continuance of an Event of Default,
Mortgagee, on behalf of the Noteholders, shall have the power, to the extent
permitted by law, to exercise the rights and remedies of a secured party
provided under the Indenture, including without limitation the right to sell the
Copyrights, Patents, Trademarks and Licenses.
3. Warranties, Representations and Covenants. For purposes of this
Agreement, (a) the Copyrights listed on Exhibit A hereto, any other registered
Copyrights and any other Copyrights material to Mortgagor's business are
collectively referred to as the "Material Copyrights", (b) the Patents listed on
Exhibit B hereto, any other registered Patents and any other Patents material to
Mortgagor's business are collectively referred to as the "Material Patents", (c)
the Trademarks listed on Exhibit C hereto, any other registered Trademarks and
any other Trademarks material to Mortgagor's business are collectively referred
to as the "Material Trademarks") and (d) any Licenses added to Exhibit D hereto
pursuant to Section 5 below and any other Licenses material to Mortgagor's
business are collectively referred to as the "Material Licenses". Mortgagor
warrants and represents to Mortgagee that:
(i) No Material Copyright, Material Patent, or Material Trademark has
been adjudged invalid or unenforceable or, has been cancelled, in whole or
in part;
(ii) Each Material Copyright, Material Patent and Material Trademark
is valid and enforceable;
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(iii) Mortgagor is the sole and exclusive owner of the entire
unencumbered right, title and interest in and to each Material Copyright,
Material Patent and Material Trademark, free and clear of any liens,
charges and encumbrances, including, without limitation, licenses,
shoprights and covenants by Mortgagor not to sue third parties;
(iv) Mortgagor has no notice of any suits or actions commenced or
threatened in writing with respect to any of the Material Copyrights,
Material Patents or Material Trademarks;
(v) Mortgagor has the unqualified right to execute and deliver this
Mortgage and perform its terms;
(vi) Mortgagor has no Material Licenses;
(vii) Mortgagor has no notice of any infringement or unauthorized use
presently being made of any of the Material Copyrights, Material Patents or
Material Trademarks which would reasonably be expected to materially
adversely affect the fair market value of the Material Copyrights, Material
Patents or Material Trademarks or the benefits to Mortgagee of this
Mortgage, including, without limitation, the priority or perfection of the
security interest granted herein or the remedies of Mortgagee hereunder;
and
(viii) Mortgagor has no notice of any suits or actions commenced or
threatened in writing with respect to any Material Copyright, Material
Patent or Material Trademark.
4. Restrictions on Future Agreements. Mortgagor agrees that until
the Obligations (other than unasserted indemnity obligations) shall have been
satisfied in full and the Indenture Documents shall have been terminated (the
"Indenture Termination"), Mortgagor shall not, without the prior written consent
of Mortgagee, sell or assign its interest in, or grant any license under, any
Material Copyright, Material Patent, Material Trademark or Material License, or
enter into any other agreement with respect to any Material Copyright, Material
Patent, Material Trademark or Material License which is inconsistent with the
obligations under this Mortgage, except to the extent permitted under the terms
of the Indenture. Mortgagor further agrees that it shall 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 adversely affect the validity
or enforcement of the rights transferred to Mortgagee under this Mortgage.
5. New Copyrights, Patents, Trademarks, and Licenses. Mortgagor
represents and warrants that the Copyrights, Patents, Trademarks and Licenses
listed on Exhibits A, B, and C, respectively, constitute all of the United
States registered Copyrights, Patents and registered Trademarks now owned by
Mortgagor and not abandoned. If, before the Indenture Termination, Mortgagor
shall (i) become aware of any existing Copyrights, Patents, Trademarks or
Licenses of which Mortgagor has not previously informed mortgagee; (ii) obtain
rights to any new Copyrights, patentable inventions, Patents,
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Trademarks or Licenses, or (iii) become entitled to the benefit of any
Copyrights, Patents, Trademarks or Licenses or any improvement on any Patent,
the provisions of Section 2 above shall automatically apply thereto. Mortgagor
hereby authorizes Mortgagee to modify this Mortgage by amending Exhibits A, B, C
and D, as applicable, to include any such registered Copyrights, Patents,
registered Trademarks and Material Licenses.
6. Royalties; Term. The term of the security interests/mortgages
granted herein shall extend until the earlier of (i) the expiration of each of
the respective Copyrights, Patents, Trademarks and Licenses encumbered
hereunder, and (ii) the Indenture Termination. Upon the occurrence of an Event
of Default, Mortgagor agrees that the use by Mortgagee of all Copyrights,
Patents, Trademarks and Licenses shall be worldwide and without any liability
for royalties or other related charges from Mortgagee to Mortgagor.
7. Release of Mortgage. This Mortgage is made for collateral
purposes only. Upon the Indenture Termination, Mortgagee shall take such actions
as may be necessary or proper to terminate and release its security interest in
the Copyrights, Patents, Trademarks, and Licenses created hereby and pursuant to
the Indenture Documents, subject to any disposition thereof which may have been
made by Mortgagee pursuant hereto or pursuant to the Indenture.
8. Expenses. All reasonable expenses incurred in connection with the
performance of any of the agreements set forth herein shall be borne by
Mortgagor. All reasonable fees, costs and expenses, of whatever kind or nature,
including reasonable attorneys' fees and legal expenses, incurred by Mortgagee
in connection with the filing or recording of any documents (including all taxes
in connection therewith) in public offices, the payment or discharge of any
taxes, maintenance fees, encumbrances or otherwise in protecting, maintaining or
preserving the Copyrights, Patents, Trademarks and Licenses, or in defending or
prosecuting any actions or proceedings arising out of or related to the
Copyrights, Patents, Trademarks and Licenses, shall be borne by and paid by
Mortgagor on written demand by Mortgagee and until so paid shall be added to the
principal amount of the Obligations and shall bear interest at the then
applicable rate as set forth in the Indenture.
9. Duties of Mortgagor. Mortgagor shall have the duty, in each case
as commercially reasonable (i) to file and prosecute diligently any copyright,
patent, trademark or service mark applications material to Mortgagor's business
and pending as of the date hereof or thereafter until the Indenture Termination,
(ii) to make application on uncopyrighted but copyrightable works, on unpatented
but patentable inventions and on trademarks and service marks, as appropriate,
material to Mortgagor's business, (iii) to preserve and maintain all rights in
the Material Copyrights, Material Patents, Material Trademarks and Material
Licenses and (iv) to ensure that the Material Copyrights, Material Patents,
Material Trademarks and Material Licenses are and remain enforceable subject to
any statutory expirations. Any expenses incurred in connection with Mortgagor's
obligations under this Section 9 shall be borne by Mortgagor. Mortgagor shall
not abandon any right to file an application with respect to a copyright,
patent, trademark or service mark that is material to Mortgagor's business, or
abandon any material Copyright, material Patent, material Trademark or material
License, without the written consent of Mortgagee. If Mortgagor fails to comply
with any of the foregoing duties, Mortgagee may perform said
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duties in Mortgagor's name, to the extent permitted by law. Mortgagor agrees (i)
to maintain the quality of any and all products in connection with which the
Material Trademarks are used, consistent with the quality of said products as of
the date hereof, except to the extent that the failure to perform any of the
following would not reasonably be expected to have a Material Adverse Effect,
and (ii) to provide Mortgagee, upon Mortgagee's request from time to time, with
a certificate of an officer of Mortgagor certifying Mortgagor's compliance with
the foregoing. Upon the occurrence and during the continuation of an Event of
Default, Mortgagor agrees that Mortgagee, or a conservator appointed by
Mortgagee, shall have the right to establish such additional product quality
controls as Mortgagee, or said conservator, in its sole judgment exercised in a
commercially reasonable manner, may deem necessary to assure maintenance of the
quality of products sold by Mortgagor under the Trademarks. Mortgagor shall
promptly, upon demand, reimburse and indemnify Mortgagee for all reasonable
costs and expenses of Mortgagee, including reasonable attorney's fees and
expenses so incurred by Mortgagee, in the exercise of its rights under this
Section 9.
10. Mortgagee's Right to Sue. After the occurrence of an Event of
Default, Mortgagee shall have the right, but shall in no way be obligated, to
bring suit in its own name to enforce the Copyrights, Patents, Trademarks and
Licenses, and, if Mortgagee shall commence any such suit, Mortgagor shall, at
the request of Mortgagee, do any and all lawful acts and execute any and all
proper documents required by Mortgagee in aid of such enforcement and Mortgagor
shall promptly, upon demand, reimburse and indemnify Mortgagee for all
reasonable costs and expenses incurred by Mortgagee, including reasonable
attorneys' fees and expenses so incurred by Mortgagee, in the exercise of its
rights under this Section 10 other than costs and expenses incurred by Mortgagee
as a result of its gross negligence or willful misconduct.
11. Waivers. No course of dealing among Mortgagor, Mortgagee and the
Noteholders, nor any failure to exercise, nor any delay in exercising, on the
part of Mortgagee or Noteholders, any right, power or privilege hereunder or
under the Indenture 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.
12. Severability. The provisions of this Mortgage 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 Mortgage in any
jurisdiction.
13. Modification. This Mortgage cannot be altered, amended or
modified in any way, except as specifically provided in Section 5 hereof or by a
writing signed by the parties hereto.
14. Cumulative Remedies; Power of Attorney; Effect on Indenture. All
of Mortgagee's rights and remedies with respect to the Copyrights, Patents,
Trademarks and Licenses, whether established hereby or by the Indenture, or by
any other agreements or by
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law shall be cumulative and may be exercised singularly or concurrently. Subject
to the Subordination Agreement, upon the occurrence and during the continuation
of an Event of Default, Mortgagor hereby authorizes Mortgagee to make,
constitute and appoint any officer or agent of Mortgagee as Mortgagee may
select, in its sole discretion, as Mortgagor's true and lawful attorney-in-fact,
with power to (i) endorse Mortgagor's name on all applications, documents,
papers and instruments necessary or desirable for Mortgagee in the use of any or
all of the Copyrights, Patents, Trademarks and Licenses, or (ii) take any other
actions with respect to any or all of the Copyrights, Patents, Trademarks and
Licenses as Mortgagee deems to be in its best interest, or (iii) grant or issue
any exclusive or non-exclusive license under any or all of the Copyrights,
Patents, Trademarks or Licenses to any Person, or (iv) assign, pledge, convey or
otherwise transfer title in or dispose of any or all of the Copyrights, Patents,
Trademarks or Licenses to any Person, or (v) take any other actions with respect
to any or all of the Copyrights, Patents, Trademarks and Licenses as Mortgagee
deems to be in its best interests. Mortgagor hereby ratifies all that such
attorney-in-fact shall lawfully do or cause to be done by virtue hereof. This
power of attorney, being coupled with an interest, shall be irrevocable until
the Indenture Termination. Mortgagor acknowledges and agrees that this Mortgage
is not intended to limit or restrict in any way the rights and remedies of
Mortgagee or Noteholders or their respective successors transferees and assigns
under the Indenture but rather is intended to facilitate the exercise of such
rights and remedies. Mortgagee and such other parties shall have, in addition to
all other rights and remedies given it or them by the terms of this Mortgage and
the Indenture, all rights and remedies allowed by law and the rights and
remedies of a secured party under the Uniform Commercial Code (or such other
applicable law) as enacted in any jurisdiction in which the Copyrights, Patents,
Trademarks or Licenses may be located.
15. Binding Effect; Benefits. This Mortgage shall be binding upon
Mortgagor and its respective successors and permitted assigns, and shall inure
to the benefit of Mortgagee and Noteholders, their successors, nominees and
assigns.
16. GOVERNING LAW. THIS MORTGAGE SHALL BE GOVERNED BY AND CONSTRUED
IN ACCORDANCE WITH THE INTERNAL LAWS OF THE STATE OF NEW YORK.
17. CONSENT TO FORUM AND WAIVERS. TO INDUCE TRUSTEE AND NOTEHOLDERS
TO ENTER INTO THE INDENTURE AND THIS AGREEMENT, MORTGAGOR IRREVOCABLY AGREES
THAT, SUBJECT TO MORTGAGEE'S SOLE AND ABSOLUTE ELECTION, ALL SUITS, ACTIONS OR
OTHER PROCEEDINGS IN ANY WAY, MANNER OR RESPECT ARISING OUT OF OR FROM OR
RELATED TO THIS AGREEMENT OR ANY DOCUMENTS EXECUTED IN CONNECTION HEREWITH,
SHALL BE SUBJECT TO LITIGATION IN THE COURTS OF THE STATE OF NEW YORK, OR, AT
MORTGAGEE'S OPTION, THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT
OF NEW YORK. MORTGAGOR HEREBY CONSENTS AND SUBMITS TO THE JURISDICTION OF ANY
LOCAL, STATE OR FEDERAL COURT LOCATED WITHIN NEW YORK COUNTY, NEW YORK.
MORTGAGOR HEREBY WAIVES ANY RIGHT IT MAY HAVE TO TRANSFER OR CHANGE THE VENUE OF
ANY SUIT, ACTION OR OTHER PROCEEDING BROUGHT
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AGAINST MORTGAGOR BY MORTGAGEE IN ACCORDANCE WITH THIS SECTION. MORTGAGOR AND
MORTGAGEE HEREBY WAIVE, TO THE EXTENT PERMITTED BY LAW, TRIAL BY JURY. MORTGAGOR
FURTHER WAIVES ANY BOND OR SURETY OR SECURITY UPON SUCH BOND WHICH MIGHT, BUT
FOR THIS WAIVER, BE REQUIRED OF MORTGAGEE.
18. Headings. Paragraph headings used herein are for convenience only
and shall not modify the provisions which they precede.
19. Further Assurances. Mortgagor agrees to execute and deliver such
further agreements, instruments and documents, and to perform such further acts,
as Mortgagee shall request from time to time in order to carry out the purpose
of this Mortgage and agreements set forth herein.
20. Survival of Representations. All representations and warranties
of Mortgagor contained in this Mortgage shall survive the execution and delivery
of this Mortgage.
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IN WITNESS WHEREOF, Mortgagor has duly executed this Mortgage in favor
of Mortgagee as of the date first written above.
PEERLESS CORPORATION
By /s/ Gary LaChey
---------------------------------------
Its VP-Finance, Treasurer, Secty. & CFO
--------------------------------------
AGREED AND ACCEPTED THIS 8th day of October, 2003.
Bank of New York,
as Trustee
By /s/ Patricia Gallagher
-------------------------------------
Its Vice President
------------------------------------
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EXHIBIT A
Copyrights
TITLE REG. NO. REG. DATE OWNER
- ------------------------------------------------------ ------------ --------- --------------------
Roadrunner pony trailers for the construction industry TX-2-330-002 07/11/88 Peerless Corporation
Roadrunner pony trailers: two and three axle models TX-2-330-003 07/11/88 Peerless Corporation
EXHIBIT B
Patents
TITLE REG. NO. REGISTRANT DATE OF REGISTRATION
- ----------------------------------------- ------------ ---------- --------------------
Trailer Frame Structure 4576398 Peerless Corporation 3/18/86
Waste Receptacle Dumping Apparatus 4673327 Peerless Corporation 10/9/85
Log Trailer Load Extension Axle Assembly 5163698 Peerless Corporation 11/17/92
EXHIBIT C
Trademarks
TITLE REG. NO. REG. DATE OWNER
- ----------------------- ------------ ---------- --------------------
PAGE AND PAGE 1368852 11/05/1985 Peerless Corporation
ROADRUNNER 1771327 05/18/1993 Peerless Corporation
Exceptions to ownership:
Neenah sold its Peerless division to R.H. Little & Company in August 2002. While
the "Peerless" name was sold in this transaction, not all marks containing the
"Peerless" name were transferred. Neenah makes no representations or warranties
concerning the "Peerless" marks.
EXHIBIT D
Licenses
None.