EXHIBIT 10.6
EXECUTION COPY
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (herein the "Agreement") made as
of this 29th day of September, 2004, by TIMEPAYMENT CORP. LLC, a Delaware
limited liability company ("TimePayment"), and LEASECOMM CORPORATION, a
Massachusetts corporation ("Leasecomm"), each with its principal place of
business at 10M Commerce Way, Woburn, Massachusetts 01801 (Leasecomm and
TimePayment are collectively referred to herein as the "Borrower"), and THE CIT
GROUP/COMMERCIAL SERVICES, INC., as agent for the Lenders (as defined below), at
its principal office at 1211 Avenue of the Americas, New York, New York 10036
(herein "Agent").
W I T N E S S E T H:
WHEREAS, the Borrower, Agent and the lenders party thereto ("Lenders") are
parties to a certain Revolving Credit Agreement of even date herewith, as the
same may be amended from time to time (herein the "Credit Agreement"), which
Credit Agreement provides (i) for the Lenders to make certain loans, advances
and extensions of credit, all to or for the account of the Borrower and (ii) for
the grant by the Borrower to Agent for the benefit of the Lenders of a security
interest in certain of the Borrower's assets, including, without limitation, its
patents, patentable inventions, patent applications and/or registrations,
trademarks, servicemarks, trademark and servicemark applications and/or
registrations, copyrights and copyright applications and/or registrations,
tradenames, trade secrets, goodwill and licenses, all as more fully set forth
therein;
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, the Borrower agrees as follows:
1. Definitions. Capitalized terms used herein and defined in the Credit
Agreement shall have the meanings set forth therein unless otherwise
specifically defined herein.
2. Grant of Security Interest. To secure the payment of the Obligations, the
Borrower hereby grants to Agent, on behalf of the Lenders, a security
interest, effective immediately, in all of the Borrower's right, title and
interest in and to all of the following described property, whether now
owned or hereafter acquired (collectively herein the "Intellectual
Property Collateral"):
(i) Patents and patent applications and/or registrations together with
the inventions and improvements described and claimed therein and
any inventions, whether now existing or invented or existing in the
future, including, without limitation, the patents, applications,
registrations and inventions, if any, listed on Schedule A, attached
hereto and made a part hereof, and any and all continuations,
divisionals, continuations in part, substitutes, reissues, renewals,
re-examinations and extensions thereof, the corresponding foreign
patent applications and foreign patents arising out of the patents,
patent applications, registrations and inventions (the "Patents")
and all income, royalties, damages and payments now and
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hereafter due and/or payable in connection with the Patents
including, without limitation, damages and payments for past or
future infringements thereof (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the
"Patent Collateral");
(ii) Trademarks and servicemarks and trade dress, whether registered or
unregistered, and trademark registrations and/or applications,
whether now owned or existing in the future, including, without
limitation, the trademarks, servicemarks and trade dress and
trademark, service mark and trade dress applications and
registrations, if any, listed on Schedule B attached hereto and made
a part hereof, and any and all reissues, renewals and extensions
thereof, and any foreign applications and registrations arising out
of the trademarks, servicemarks and trade dress, and all goodwill
associated therewith ("Trademarks"), and all income, royalties,
damages and payments now and hereafter due and/or payable in
connection with the Trademarks including, without limitation,
damages and payments for past or future infringements thereof (all
of the foregoing are sometimes hereinafter individually and/or
collectively referred to as the "Trademark Collateral");
(iii) Copyrights, whether registered or unregistered, and copyright
registrations and/or applications whether now owned or existing in
the future, including, without limitation, the copyrights and
copyright applications and/or registrations, if any, listed on
Schedule C attached hereto and made a part hereof, and any and all
derivative works, renewals and extensions thereof ("Copyrights" and
together with the Patents and Trademarks, the "Intellectual
Property"), and all income, royalties, damages and payments now and
hereafter due and/or payable in connection with the Copyrights
including, without limitation, damages and payments for past or
future infringements thereof (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the
"Copyright Collateral");
(iv) Any license agreement in which the Borrower is now or in the future
becomes licensed to use any patents, trademarks, copyrights or other
intellectual property owned by a third party including, without
limitation, the licenses, if any, listed on Schedule D attached
hereto and made a part hereof, excluding any license agreement that
by its terms prohibits transfer by the Borrower as contemplated
herein (all of the foregoing are sometimes referred to herein
individually and/or collectively as the "License Collateral");
(v) The goodwill of the Borrower's business connected with and
symbolized by the Intellectual Property Collateral; and
(vi) All cash and non-cash proceeds of the foregoing.
3. Agent's Rights. Upon the occurrence of any Event of Default hereunder,
Agent shall have all the rights and remedies of a secured party under the
Uniform Commercial Code and any other applicable state or federal laws.
Agent will give the Borrower reasonable notice of the time and place of
any public sale of the Intellectual Property Collateral or
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the time after which any private sale of the Intellectual Property
Collateral or any other intended disposition thereof is to be made. Unless
otherwise provided by law, the requirement of reasonable notice shall be
met if such notice is mailed, postage prepaid to the address of the
Borrower set forth above at least ten (10) days before the date of such
sale or disposition. In addition to the foregoing and all other rights and
remedies of Agent upon the occurrence and during the continuance of any
Event of Default hereunder, Agent shall thereupon have the immediate right
to transfer or license to itself or to license or sell, assign and
transfer to any other person all right, title and interest in and to all
or any part of the Intellectual Property Collateral. A formal irrevocable
power of attorney (in the form annexed hereto) is being executed and
delivered by the Borrower to Agent concurrently with this Agreement to
enable such rights to be carried out. The Borrower agrees that, upon the
occurrence and during the continuance of an Event of Default, in the event
Agent exercises its rights hereunder and/or pursuant to said power of
attorney in accordance with its terms, after written notification of such
exercise from Agent to the Borrower, the Borrower shall never thereafter,
without the prior written authorization of the owner or owners of such
Intellectual Property Collateral, use any of such Intellectual Property
Collateral. The condition of the foregoing provision is such that unless
and until there occurs an Event of Default under this Agreement, the
Borrower shall continue to own and use the Intellectual Property
Collateral in the normal course of its business and to enjoy the benefits,
royalties and profits therefrom provided, however, that from and after the
occurrence of an Event of Default such right will, upon the exercise by
Agent of the rights provided by this Agreement, be revoked and the right
of the Borrower to enjoy the uses, benefits, royalties and profits of said
Intellectual Property Collateral will wholly cease, whereupon Agent or its
transferee(s) shall be entitled to all of the Borrower's right, title and
interest in and to the Intellectual Property Collateral thereby so
assigned. This Agreement will not operate to place upon Agent any duty or
responsibility to maintain the Intellectual Property Collateral. Prior to
the occurrence of an Event of Default, the Borrower will make any and all
filings, whether state, federal, foreign or otherwise, and pay any and all
filing fees, whether state, federal, foreign or otherwise, required to
maintain the Borrower's rights in the Intellectual Property Collateral
material to the conduct of the Borrower's business or reasonably requested
by the Agent to maintain Borrower's rights in such Intellectual Property
Collateral.
4. Fees. The Borrower will pay all filing fees with respect to the security
interest created hereby which Agent may deem reasonably necessary or
advisable in order to perfect and maintain the perfection of its security
interest in the Intellectual Property Collateral.
5. Representations and Warranties. The Borrower represents and warrants:
(i) that except for the security interest granted hereby, Permitted
Encumbrances and any licenses granted by the Borrower in the
ordinary course of business, which licenses do not singularly in or
the aggregate adversely effect the security interest granted hereby
in any material respect, the Borrower lawfully possesses and owns
the Intellectual Property Collateral and that the Intellectual
Property Collateral will be kept free from all liens, security
interests, claims and encumbrances whatsoever;
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(ii) that the Borrower has not made or given any prior assignment,
transfer or security interest in the Intellectual Property
Collateral or any of the proceeds thereof;
(iii) that the Intellectual Property Collateral is and will continue to
be, in all respects, in full force and effect;
(iv) and that there are no known infringements of the Intellectual
Property Collateral.
6. Application of Proceeds. Upon the occurrence of an Event of Default, the
proceeds of any sale, transfer or disposition of the Intellectual Property
Collateral shall be applied first to all costs and expenses, including,
but not limited to, reasonable attorneys' fees and expenses and court
costs, incurred by Agent in connection with such sale and the exercise of
Agent's rights and remedies hereunder and under the Credit Agreement;
next, such proceeds shall be applied to the payment, in whole or in part,
of the Obligations due Agent in such order as Agent may elect; and the
balance, if any, shall be paid to the Borrower or as a court of competent
jurisdiction may direct.
7. Defense of Claims. The Borrower will defend at its own cost and expense
all actions, claims or proceedings affecting the Intellectual Property
Collateral material to the conduct of the Borrower's business or the
interest of Agent and Lenders therein. The Borrower agrees to reimburse
Agent and Lenders for all costs and out-of-pocket expenses incurred by
Agent and Lenders in defending any such action, claim or proceeding prior
to the Borrower's assumption of such defense.
8. Applications, Renewals or Extensions. The Borrower shall promptly apply
for and obtain all federal renewals or extensions of the Intellectual
Property Collateral material to the conduct of the Borrower's business to
the full extent permitted by law. If, before all Obligations have been
satisfied in full, the Borrower applies for or obtains any Intellectual
Property, the Borrower shall give Agent prompt written notice of such
Intellectual Property, and the provisions of this Assignment shall apply
thereto. The Borrower authorizes Agent to modify this Assignment by
amending Schedules A, B, C or D to include any new Intellectual Property
Collateral material to the conduct of the Borrower's business. The
Borrower shall not abandon any of the Intellectual Property Collateral
material to the conduct of the Borrower's business or the prosecution of
any application for any such Intellectual Property without the prior
written consent of Agent, which consent will not be unreasonably withheld
or delayed.
9. Proceedings. The Borrower shall promptly notify Agent of the institution
of, and any adverse determination in, any proceeding in the United States
Patent and Trademark Office, United States Copyright Office, or any other
foreign or domestic governmental agency, court or body, regarding the
Borrower's claim of ownership in any of the Intellectual Property
Collateral. In the event of any material infringement of any of the
Intellectual Property Collateral material to the conduct of the Borrower's
business by a third party, the Borrower shall promptly notify Agent of
such infringement and sue for and recover all damages for such
infringement. If the Borrower shall fail to take such action within thirty
(30) days after such notice is given to Agent, Agent may, but shall not be
required to, take such action in the name of the Borrower, and the
Borrower hereby
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appoints Agent the true and lawful attorney of the Borrower, for it and in
its name, place and stead, on behalf of the Borrower, to commence judicial
proceedings in any court or before any other tribunal to enjoin and
recover damages for such infringement, any such damages due to the
Borrower, net of costs and reasonable attorneys' fees, to be applied to
the Obligations.
10. Rights Cumulative. This Agreement shall be in addition to the Credit
Agreement and the other Loan Documents and shall not be deemed to affect,
modify or limit the Credit Agreement or other Loan Documents or any rights
that Agent has under the Credit Agreement or other Loan Documents. The
Borrower agrees to execute and deliver to Agent and Lenders (at the
Borrower's expense) any further documentation or papers necessary to carry
out the intent or purpose of this Agreement including, but not limited to,
financing statements under the Uniform Commercial Code.
11. Construction and Invalidity. Any provisions hereof contrary to, prohibited
by or invalid under any laws or regulations shall be inapplicable and
deemed omitted herefrom, but shall not invalidate the remaining provisions
hereof.
(i) CHOICE OF LAW. THE BORROWER AGREES THAT THE VALIDITY, INTERPRETATION
AND ENFORCEMENT OF THIS AGREEMENT AND ALL RIGHTS HEREUNDER SHALL BE
GOVERNED BY THE LAWS OF STATE OF NEW YORK. THIS AGREEMENT TOGETHER
WITH THE CREDIT AGREEMENT AND OTHER LOAN DOCUMENTS CONSTITUTE THE
ENTIRE AGREEMENT OF THE BORROWER AND AGENT WITH RESPECT TO THE
INTELLECTUAL PROPERTY COLLATERAL, CAN ONLY BE CHANGED OR MODIFIED IN
WRITING AND SHALL BIND AND BENEFIT THE BORROWER, AGENT, LENDERS AND
THEIR RESPECTIVE SUCCESSORS AND ASSIGNS. THE BORROWER, AGENT AND
LENDERS EACH HEREBY EXPRESSLY WAIVES ANY RIGHT OF TRIAL BY JURY ON
ANY CLAIM, DEMAND, ACTION OR CAUSE OF ACTION ARISING HEREUNDER.
12. Events of Default. Any of the following constitutes an Event of Default
under this Agreement:
(i) The Borrower fails to perform or observe any agreement, covenant or
condition required under this Agreement within ten (10) days after
written notice in accordance with the Credit Agreement to Borrower;
(ii) Any warranty or representation made by Borrower, in this Agreement
shall be misleading in any material respect on the date made; or
(iii) The occurrence of any Event of Default under the Credit Agreement
which is not waived in writing by Agent or cured within the
applicable grace period, if any.
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13. Notices. The Borrower covenants and agrees that, with respect to the
Intellectual Property Collateral, it will give Agent written notice in the
manner provided in the Credit Agreement of:
(i) any claim by a third party that the Borrower has infringed on the
rights of a third party;
(ii) any suspected infringement by a third party on the rights of the
Borrower; or
(iii) any Intellectual Property Collateral created, arising or acquired by
the Borrower after the date hereof.
14. Further Assurances. The Borrower will take any such action as Agent may
reasonably require to further confirm, perfect or protect Agent's security
interest granted under this Agreement in the Intellectual Property
Collateral. In furtherance thereof, the Borrower hereby grants to Agent a
power of attorney coupled with an interest which shall be irrevocable
during the term of this Agreement to execute any documentation or take any
action in the Borrower's behalf required to effectuate the terms,
provisions and conditions of this Agreement.
15. Termination. This Agreement shall terminate upon termination of the Credit
Agreement and full, final payment of all Obligations of the Borrower
thereunder. Upon the Borrower's request, Agent shall within a reasonable
time after any such termination execute and deliver to the Borrower (at
the Borrower's expense) such documents and instruments as are reasonably
necessary to evidence such termination and release of the security
interest granted herein on any applicable public record.
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IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as of
the 29th day of September, 2004.
LEASECOMM CORPORATION,
AS BORROWER
By: /s/ Richard F. Latour
--------------------------------------
Richard F. Latour, Executive President
TIMEPAYMENT CORP. LLC,
AS BORROWER
By: /s/ Richard F. Latour
--------------------------------------
Richard F. Latour, President
THE CIT GROUP/COMMERCIAL SERVICES, INC.,
AS AGENT
By: /s/ Daniel B. Ciotti
---------------------------------------
Daniel B. Ciotti, Vice President
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IRREVOCABLE POWER OF ATTORNEY
LEASECOMM CORPORATION AND TIMEPAYMENT CORP. LLC, each with offices at 10M
Commerce Way, Woburn, Massachusetts 01801 (collectively referred herein to as
the "Borrower"), hereby grants to THE CIT GROUP/COMMERCIAL SERVICES, INC., with
its principal office at 1211 Avenue of the Americas, New York, New York 10016
(hereinafter referred to as "Agent"), for the benefit of the Lenders (as defined
in the Credit Agreement dated as of the date hereof by and among the Borrower,
Agent and the lender parties thereto) the exclusive Irrevocable Power of
Attorney to assign and transfer to Agent for the benefit of the Lenders or to
any designee of Agent all right, title and interest in and to the Intellectual
Property Collateral listed on the Schedules attached to the Intellectual
Property Security Agreement (the "Agreement"), dated as of the date hereof,
between the Borrower and Agent including, without limitation, all patents,
patentable inventions, patent applications and/or registrations, trademarks,
service marks, trademark and service mark applications and/or registrations,
copyrights and copyright applications and/or registrations and licenses together
with the goodwill of the business connected with or symbolized by such
Intellectual Property Collateral and the Borrower's entire inventory of labels
and decals bearing any marks not affixed to its products, and the right to
operate and control, sell, assign, and transfer the business under those marks
under the following terms and conditions:
1. The Power of Attorney granted hereunder shall be effective as of the
date hereof and shall last for as long as any now existing or hereafter arising
indebtedness, liabilities or obligations of the Borrower to Agent are
outstanding under the Credit Agreement, dated on or about the date hereof,
between the Borrower and Agent and upon payment of such indebtedness,
liabilities or obligations of the Borrower to Agent, the Power of Attorney
granted herein shall terminate without any further acts by any Person.
2. The Power of Attorney granted herein shall be irrevocable throughout
the duration of its life as specified in Paragraph 1 hereinabove;
3. The Power of Attorney granted herein shall only be exercisable by
Agent during the continuance of an Event of Default under the Agreement between
Agent and the Borrower and as long as such Event of Default is not then the
subject of a waiver; and
4. Agent shall give the Borrower ten (10) days prior written notice of
the exercise of this power, and the waiver by Agent of any particular Event of
Default as set forth in Paragraph 3 hereinabove shall have no force or effect
unless in writing and signed by an authorized officer of Agent. Even then such
waiver shall not constitute or be considered a waiver of any other Event of
Default then existing or thereafter arising whether similar or not.
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IN WITNESS WHEREOF, the Borrower has caused this Power of Attorney to be
executed as of this 29th day of September, 2004.
LEASECOMM CORPORATION
By: /s/ Richard F. Latour
-------------------------------------------
Richard F. Latour, Executive Vice President
TIMEPAYMENT CORP. LLC
By: /s/ Richard F. Latour
-------------------------------------------
Richard F. Latour, President
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COMMONWEALTH OF MASSACHUSETTS
SUFFOLK, SS
On this 29th day of September, 2004, before me, the undersigned notary
public, personally appeared the above named Richard F. Latour, Executive
President of LEASECOMM CORPORATION, proved to me through satisfactory evidence
of identification, which was a state issued driver's license, to be the person
whose name is signed on the preceding or attached document, and acknowledged to
me that (he) (she) signed it voluntarily for its stated purpose.
/s/ Brenda Moffitt
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Notary Public
My commission expires: 10/28/09
COMMONWEALTH OF MASSACHUSETTS
SUFFOLK, SS
On this 29th day of September, 2004, before me, the undersigned notary
public, personally appeared the above named Richard F. Latour, President of
TIMEPAYMENT CORP. LLC, proved to me through satisfactory evidence of
identification, which was a state issued driver's license, to be the person
whose name is signed on the preceding or attached document, and acknowledged to
me that (he) (she) signed it voluntarily for its stated purpose.
/s/ Brenda Moffitt
-------------------------------
Notary Public
My commission expires: 10/28/09