1
EXHIBIT 99.3
NATIONSCREDIT COMMERCIAL FUNDING
--------------------------------------------------------------------------------
PATENT, TRADEMARK AND LICENSE MORTGAGE
This Patent, Trademark and License Mortgage (this "MORTGAGE"),
made as of this 20th day of February, 1998, by XXXXX CORPORATION, a Delaware
corporation, with its chief executive office and principal place of business at
0000 Xxxxxxxxx Xxxxxxx Xxxx, Xxxxxxxx, Xxxxxxx 00000 ("MORTGAGOR") in favor of
NATIONSCREDIT COMMERCIAL CORPORATION, THROUGH ITS NATIONSCREDIT COMMERCIAL
FUNDING DIVISION, with an office at 1177 Avenue of the Xxxxxxxx, 00xx Xxxxx, Xxx
Xxxx, Xxx Xxxx 00000 ("MORTGAGEE");
W I T N E S S E T H:
WHEREAS, Mortgagee and Mortgagor are parties to a certain Loan
and Security Agreement of even date herewith (as amended from time to time, the
"LOAN AGREEMENT"), which Loan Agreement provides, among other things, (i) for
Mortgagee to, from time to time, extend credit to or for the account of
Mortgagor and (ii) for the grant by Mortgagor to Mortgagee of a security
interest in substantially all of Mortgagor's assets, including, without
limitation, the patents, patent applications, trademarks, trademark
applications, tradenames, service marks, service xxxx 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. CAPITALIZED TERMS. All terms capitalized but not otherwise
defined herein shall have the same meanings herein as in the Loan Agreement.
2. MORTGAGE OF PATENTS, TRADEMARKS AND LICENSES. To secure the
complete and timely satisfaction of all of the Obligations, Mortgagor hereby
grants, bargains, assigns, mortgages, creates a security interest in, pledges,
transfers and conveys to Mortgagee, as and by way of a mortgage and security
interest having priority over all other security interests, all of Mortgagor's
right, title and interest in and to all of its now existing and hereafter
created or acquired:
(a) patents and patent applications, including, without
limitation, the inventions and improvements described and claimed
therein, and those patents listed on Exhibit A attached hereto and
hereby made a part hereof, and (i) the reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof,
(ii) all income, damages and payments now and hereafter due or payable
under or with respect thereto, including, without limitation, damages
and payments for past or future infringements thereof, (iii) the right
to xxx for past, present and future infringements thereof, and (iv) all
rights corresponding thereto throughout the world (all of the foregoing
patents and applications, together with the items described in clauses
(i)-(iv)
2
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
of this subsection 2(a), are sometimes hereinafter referred to
individually as a "PATENT" and, collectively, as the "PATENTS");
(b) trademarks, trademark registrations, trademark
applications, tradenames and tradestyles, service marks, service xxxx
registrations and service xxxx registration applications, including,
without limitation, the trademarks, tradenames, service marks,
registrations and applications for registration listed on Exhibit B
attached hereto and hereby made a part hereof, and (i) renewals or
extensions thereof, (ii) all income, damages and payments now and
hereafter due or payable with respect thereto, including, without
limitation, damages and payments for past or future infringements
thereof, (iii) the right to xxx for past, present and future
infringements thereof, and (iv) all rights corresponding thereto
throughout the world (all of the foregoing trademarks, tradenames and
tradestyles, service marks and applications and registrations thereof,
together with the items described in clauses (i)-(iv) of this
subsection 2(b), are sometimes hereinafter referred to individually as
a "TRADEMARK", and, collectively, as the "TRADEMARKS" PROVIDED,
however, that the terms Trademark or Trademarks shall not include any
marks that Mortgagor presently intends to use and for which Mortgagor
has filed an intent-to-use application with the United States Patent
and Trademark Office, subject to Paragraph 5 below;
(c) all license agreements with respect to any of the Patents
or the Trademarks or any other patent, trademark, service xxxx or any
registration or application for registration or any other tradename or
tradestyle between Mortgagor and any other party, whether Mortgagor is
a licensor or licensee under any such license agreement, including,
without limitation, the licenses listed on Exhibit C attached hereto
and hereby made a part hereof, and excluding all license agreements
which, according to their terms, may not be assigned without the prior
written consent of the licensors thereto (all of the foregoing license
agreements and Mortgagor's rights thereunder are referred to
collectively as the "LICENSES"); and
(d) the goodwill of Mortgagor's business connected with and
symbolized by the Trademarks.
Upon the occurrence of an Event of Default, Mortgagee shall
have the power, to the extent permitted by law, to sell the Patents, Trademarks
and Licenses.
3. WARRANTIES, REPRESENTATIONS AND COVENANTS. Mortgagor
warrants and represents to Mortgagee that:
(a) None of the Patents, Trademarks and Licenses have been
adjudged invalid or unenforceable or have been canceled, in whole or in
part, or are not presently subsisting;
(b) Each of the Patents, Trademarks and Licenses is valid and
enforceable;
-2-
3
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
(c) Mortgagor is the sole and exclusive owner of the entire
and unencumbered right, title and interest in and to each of the
Patents, Trademarks and Licenses, free and clear of any liens, charges
and encumbrances, including, without limitation, licenses, shop rights
and covenants by Mortgagor not to xxx third persons;
(d) Mortgagor has adopted, used and is currently using, or has
a current bona fide intention to use, all of the Trademarks;
(e) Mortgagor has no notice of any suits or actions commenced
or threatened with reference to any of the Patents, Trademarks or
Licenses; and
(f) Mortgagor has the right to execute and deliver this
Mortgage and perform its terms.
4. RESTRICTIONS ON FUTURE AGREEMENTS. Mortgagor agrees that
until the Obligations shall have been satisfied in full and the Loan Agreement
shall have been terminated, Mortgagor shall not sell or assign its interest in,
or grant any license under, the Patents, Trademarks or Licenses, or enter into
any other agreement with respect to the Patents, Trademarks or Licenses which is
inconsistent with the obligations under this Mortgage, without the prior written
consent of Mortgagee, and 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 affect the validity
or enforcement of the rights transferred to Mortgagee under this Mortgage.
5. NEW PATENTS, TRADEMARKS, AND LICENSES. Mortgagor
represents and warrants that the Patents, Trademarks and Licenses listed on
Exhibits A, B and C, respectively, constitute all of the Patents and Trademarks
now owned by, and Licenses granted by or to, Mortgagor. If, before the
Obligations shall have been satisfied in full or before the Loan Agreement has
been terminated, Mortgagor shall (i) obtain rights to any new patentable
inventions, Patents, Trademarks or Licenses, or (ii) become entitled to the
benefit of any Patents, Trademarks, or Licenses or any improvement on any
Patent, the provisions of this Mortgage shall automatically apply thereto and
Mortgagor shall give to Mortgagee prompt written notice thereof. Mortgagor
hereby authorizes Mortgagee to modify this Mortgage by amending Exhibits A, B
and C, as applicable, to include any such Patents, Trademarks and Licenses.
6. ROYALTIES; TERM. The term of the mortgages granted herein
shall extend until the earlier of (i) the expiration of each of the respective
Patents, Trademarks and Licenses assigned hereunder, and (ii) the date upon
which all of the Obligations have been paid in full and the Loan Agreement has
been terminated. Upon the occurrence of an Event of Default, Mortgagor agrees
that the use by Mortgagee of all Patents, Trademarks and Licenses shall be
worldwide and without any liability for royalties or other related charges from
Mortgagee to Mortgagor.
-3-
4
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
7. GRANT OF LICENSE TO MORTGAGOR. Unless and until an Event
of Default shall have occurred, Mortgagee hereby grants to Mortgagor the
exclusive, nontransferable right and license to use the Trademarks in the
ordinary course of its business, to exercise Mortgagee's rights under the
Licenses, and to make, have made, use and sell the inventions disclosed and
claimed in the Patents for Mortgagor's own benefit and account. Mortgagor agrees
not to sell or assign its interest in, or grant any sublicense under, the
license granted to Mortgagor in this Section 7, without the prior written
consent of Mortgagee. Upon the occurrence of an Event of Default, Mortgagor's
license with respect to the Patents, Trademarks and Licenses set forth in this
Section 7 shall terminate forthwith.
8. MORTGAGEE'S RIGHT TO INSPECT. Mortgagee shall have the
right, at any time and from time to time during normal business hours and prior
to payment in full of the Obligations and termination of the Loan Agreement, to
inspect Mortgagor's premises and to examine Mortgagor's books, records and
operations, including, without limitation, Mortgagor's quality control
processes. Mortgagor agrees (i) to maintain the quality of any and all products
in connection with which the Trademarks are used, consistent with the quality of
said products as of the date hereof 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 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, may deem necessary to assure maintenance of the quality of
products sold by Mortgagor under the Trademarks.
9. RELEASE OF MORTGAGE. This Mortgage is made for collateral
purposes only. Upon payment in full of the Obligations and termination of the
Loan Agreement, Mortgagee shall execute and deliver to Mortgagor all deeds,
assignments and other instruments, and shall take such other actions, as may be
necessary or proper to re-vest in Mortgagor full title to the Patents,
Trademarks and Licenses, subject to any disposition thereof which may have been
made by Mortgagee pursuant hereto or pursuant to the Loan Agreement.
10. EXPENSES. All expenses incurred in connection with the
performance of any of the agreements set forth herein shall be borne by
Mortgagor. All fees, costs and expenses, of whatever kind or nature, including
attorneys' and paralegals' 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,
counsel fees, maintenance fees, encumbrances or otherwise in protecting,
maintaining or preserving the Patents, Trademarks and Licenses, or in defending
or prosecuting any actions or proceedings arising out of or related to the
Patents, Trademarks and Licenses, shall be borne by and paid by Mortgagor on
demand by Mortgagee and until so paid shall be added to the principal amount of
the Obligations and shall bear interest at the highest rate applicable to the
Loans from time to time.
-4-
5
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
11. DUTIES OF MORTGAGOR. To the extent deemed necessary in the
exercise of Mortgagor's reasonable business judgment, Mortgagor shall have the
duty (i) to prosecute diligently any patent, trademark or service xxxx
applications pending as of the date hereof or thereafter until the Obligations
shall have been paid in full, (ii) to make application on unpatented but
patentable inventions and on Trademarks and service marks, as appropriate, (iii)
to preserve and maintain all rights in the Patents, Trademarks and Licenses, and
(iv) to ensure that the Patents, Trademarks and Licenses are and remain
enforceable. Any expenses incurred in connection with Mortgagor's obligations
under this Section 11 shall be borne by Mortgagor. To the extent deemed
necessary in the exercise of Mortgagor's reasonable business judgment, Mortgagor
shall not abandon any right to file a Patent, Trademark or service xxxx
application, or abandon any pending patent application, or any other Patent,
Trademark or License without the written consent of Mortgagee.
12. MORTGAGEE'S RIGHT TO XXX. 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 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 costs and expenses
incurred by Mortgagee in the exercise of its rights under this Section 12.
13. WAIVERS. No course of dealing between Mortgagor and
Mortgagee, nor any failure to exercise, nor any delay in exercising, on the part
of Mortgagee, any right, power or privilege hereunder or under the Loan
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.
14. 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.
15. 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.
16. CUMULATIVE REMEDIES; POWER OF ATTORNEY; EFFECT ON LOAN
AGREEMENT. All of Mortgagee's rights and remedies with respect to the Patents,
Trademarks and Licenses, whether established hereby or by the Loan Agreement, or
by any other
-5-
6
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
agreements or by law shall be cumulative and may be exercised singularly or
concurrently. Upon the occurrence 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 the Patents, Trademarks and Licenses, (ii) take any
other actions with respect to the Patents, Trademarks and Licenses as Mortgagee
deems to be in its best interest, (iii) grant or issue any exclusive or
non-exclusive license under the Patents, Trademarks or Licenses to anyone, or
(iv) assign, pledge, convey or otherwise transfer title in or dispose of the
Patents, Trademarks or Licenses to anyone. Mortgagor hereby ratifies all that
such attorney shall lawfully do or cause to be done by virtue hereof. This power
of attorney is coupled with an interest and shall be irrevocable until the
Obligations shall have been paid in full and the Loan Agreement has been
terminated. Mortgagor acknowledges and agrees that this Mortgage is not intended
to limit or restrict in any way the rights and remedies of Mortgagee under the
Loan Agreement but rather is intended to facilitate the exercise of such rights
and remedies. Mortgagee shall have, in addition to all other rights and remedies
given it by the terms of this Mortgage and the Loan Agreement, 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 Patents, Trademarks or Licenses may be located.
17. BINDING EFFECT; BENEFITS. This Mortgage shall be binding
upon Mortgagor and its successors and permitted assigns, and shall inure to the
benefit of Mortgagee, its successors, nominees and assigns.
18. GOVERNING LAW. THIS MORTGAGE SHALL BE GOVERNED BY AND
CONSTRUED IN ACCORDANCE WITH THE INTERNAL LAWS OF THE STATE OF NEW YORK.
19. CONSENT TO FORUM AND WAIVERS. MORTGAGOR HEREBY CONSENTS
AND AGREES THAT THE STATE AND FEDERAL COURTS IN NEW YORK SHALL HAVE NONEXCLUSIVE
JURISDICTION TO HEAR AND DETERMINE ANY CLAIMS OR DISPUTES WITH RESPECT TO THIS
MORTGAGE AND WAIVES ANY OBJECTION WHICH IT MAY HAVE BASED ON IMPROPER VENUE OR
FORUM NON CONVENIENS TO THE CONDUCT OF ANY PROCEEDING IN ANY SUCH COURT AND
CONSENTS THAT ALL SERVICE OF PROCESS UPON MORTGAGOR BE MADE BY REGISTERED MAIL
OR MESSENGER DIRECTED TO MORTGAGOR AT THE ADDRESS SET FORTH AT THE BEGINNING OF
THIS MORTGAGE AND THAT SERVICE SO MADE SHALL BE DEEMED TO BE COMPLETED UPON
ACTUAL RECEIPT THEREOF. MORTGAGOR HEREBY AGREES THAT ANY CLAIM OR DISPUTE
BROUGHT BY MORTGAGOR AGAINST MORTGAGEE OR ANY MATTER ARISING OUT OF THIS
MORTGAGE SHALL BE BROUGHT
-6-
7
NATIONSCREDIT COMMERCIAL FUNDING PATENT, TRADEMARK AND LICENSE MORTGAGE
--------------------------------------------------------------------------------
EXCLUSIVELY IN THE STATE AND FEDERAL COURTS IN NEW YORK. MORTGAGOR HEREBY
WAIVES, TO THE EXTENT PERMITTED BY LAW, TRIAL BY JURY. NOTHING CONTAINED HEREIN
SHALL AFFECT THE RIGHT OF MORTGAGEE TO SERVE LEGAL PROCESS IN ANY OTHER MANNER
PERMITTED BY LAW OR AFFECT THE RIGHT OF MORTGAGEE TO BRING ANY ACTION OR
PROCEEDING AGAINST MORTGAGOR OR ITS PROPERTY IN THE COURTS OF ANY OTHER
JURISDICTION.
20. HEADINGS. Paragraph headings used herein are for
convenience only and shall not modify the provisions which they precede.
21. FURTHER ASSURANCES. Mortgagor agrees to execute and
deliver such further agreements, instruments and documents, and to perform such
further acts, as Mortgagee shall reasonably request from time to time in order
to carry out the purpose of this Mortgage and agreements set forth herein.
22. SURVIVAL OF REPRESENTATIONS. All representations and
warranties of Mortgagor contained in this Mortgage shall survive the execution
and delivery of this Mortgage and shall be remade on the date of each borrowing
under the Loan Agreement.
IN WITNESS WHEREOF, Mortgagor has duly executed this Mortgage
in favor of Mortgagee as of the date first written above.
XXXXX CORPORATION
By /s/ Xxxxxx X. Xxxxx
-------------------
Its Chairman
-------------------
AGREED AND ACCEPTED THIS
20th day of February, 1998.
NATIONSCREDIT COMMERCIAL CORPORATION,
THROUGH ITS NATIONSCREDIT COMMERCIAL
FUNDING DIVISION
By /s/
-----------------------------------
Its
-----------------------------------
-7-
8
STATE OF___________________)
) SS
COUNTY OF__________________)
The foregoing Patent, Trademark and License Mortgage was
executed and acknowledged before me this ____ day of February, 1998, by
_______________________, personally known to me to be the _______________ of
XXXXX CORPORATION, a Delaware corporation, on behalf of such corporation.
----------------------------------------------
Notary Public
My Commission expires:
----------------------------------------------
9
STATE OF___________________)
) SS
COUNTY OF__________________)
The foregoing Patent, Trademark and License Mortgage was
executed and acknowledged before me this ____ day of February, 1998, by
_______________________, personally known to me to be the ____________________
of NATIONSCREDIT COMMERCIAL CORPORATION, THROUGH ITS NATIONSCREDIT COMMERCIAL
FUNDING DIVISION, on behalf of such corporation.
----------------------------------------------
Notary Public
My Commission expires:
----------------------------------------------
AFTER FILING RETURN THIS INSTRUMENT TO:
Goldberg, Kohn, Bell, Black, Xxxxxxxxxx & Mortiz, Ltd.
00 Xxxx Xxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx, Xxxxxxxx 00000
Attention: Xxxxx Xxxx Bieber, Attorney
10
EXHIBIT A
PATENTS
=======================================================================================================
PATENT FEDERAL REGISTRATION REGISTRATION DATE
NUMBER
-------------------------------------------------------------------------------------------------------
-------------------------------------------------------------------------------------------------------
=======================================================================================================
11
EXHIBIT B
TRADEMARKS
==========================================================================================================
TRADEMARK FEDERAL REGISTRATION REGISTRATION DATE
NUMBER
----------------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------------
==========================================================================================================
12
EXHIBIT C
LICENSES
