EXHIBIT 10.25
PATENT AND TRADEMARK SECURITY AGREEMENT
THIS PATENT AND TRADEMARK SECURITY AGREEMENT (this "Agreement"), dated
as of March 16, 2000, is made between Amerigon Incorporated, a California
corporation ("Borrower"), and Big Star Investments LLC ("Lender").
Borrower and Lender are parties to a Security Agreement dated as of
March __, 2000 (as amended, modified, renewed or extended from time to time, the
"Security Agreement"), which Security Agreement provides, among other things,
for the grant by Borrower to Lender of a security interest in, certain of
Borrower's property and assets, including, without limitation, its patents and
patent applications, its trademarks, service marks and trade names, and its
applications for registration of such trademarks, service marks and trade names.
Pursuant to the Security Agreement, Borrower has agreed to execute and deliver
this Agreement to Lender for filing with the United States Patent and Trademark
Office (the "PTO") (and any other relevant recording systems in any domestic or
foreign jurisdiction), and as further evidence of and to effectuate such
assignment of and grant of a security interest in such patents and patent
applications, trademarks, service marks and trade names, and applications for
registration of such trademarks, service marks and trade names, and the other
general intangibles described herein. Accordingly, Borrower and Lender hereby
agree as follows:
SECTION 1. DEFINITIONS; INTERPRETATION.
(a) All capitalized terms used in this Agreement and not otherwise
defined herein shall have the meanings assigned to them in the Security
Agreement.
(b) In this Agreement, (i) the meaning of defined terms shall be
equally applicable to both the singular and plural forms of the terms defined;
and (ii) the captions and headings are for convenience of reference only and
shall not affect the construction of this Agreement.
SECTION 2. ASSIGNMENT AND GRANT OF SECURITY INTEREST.
(a) As security for the payment and performance of the Secured
Obligations (as defined in the Security Agreement), Borrower hereby assigns,
transfers and conveys and grants a security interest in and mortgage to Lender,
for security purposes, all of Borrower's right, title and interest in, to and
under the following property, whether now existing or owned or hereafter
acquired, developed or arising (collectively, the "Intellectual Property
Collateral"):
(i) all patents and patent applications, domestic or foreign,
all licenses relating to any of the foregoing and all income and royalties with
respect to any licenses (including, without limitation, such patents and patent
applications as described in SCHEDULE A hereto), all rights to xxx for past,
present or future infringement thereof, all rights arising therefrom and
pertaining thereto and all reissues, reexaminations, divisions, continuations,
renewals, extensions and continuations-in-part thereof;
(ii) all state (including common law), federal and foreign
trademarks, service marks and trade names, and applications for registration of
such trademarks, service marks and trade names, all licenses relating to any of
the foregoing and all income and royalties with respect to any licenses
(including, without limitation, such marks, names and applications as described
in SCHEDULE B hereto), whether registered or unregistered and wherever
registered, all rights to xxx for past, present or future infringement or
unconsented use thereof, all rights arising therefrom and pertaining thereto and
all reissues, extensions and renewals thereof;
(iii) the entire goodwill of or associated with the businesses
now or hereafter conducted by Borrower connected with and symbolized by any of
the aforementioned properties and assets;
(iv) all general intangibles (as defined in the UCC) and all
intangible intellectual or other similar property of the Borrower of any kind or
nature, associated with or arising out of any of the aforementioned properties
and assets and not otherwise described above; and
(v) all products and proceeds of any and all of the foregoing.
(b) This Agreement shall create a continuing security interest in the
Intellectual Property Collateral which shall remain in effect until terminated
in accordance with Section 17 hereof.
SECTION 3. FURTHER ASSURANCES; APPOINTMENT OF LENDER AS ATTORNEY-IN-
FACT. Borrower at its expense shall execute and deliver, or cause to be
executed and delivered, to Lender any and all documents and instruments, in form
and substance satisfactory to Lender, and take any and all action, which Lender
may reasonably request from time to time, to perfect and continue perfected,
maintain the priority of or provide notice of Lender's security interest in the
Intellectual Property Collateral and to accomplish the purposes of this
Agreement. Lender shall have the right to, in the name of the Borrower, or in
the name of Lender or otherwise, without notice to or assent by the Borrower,
and the Borrower hereby irrevocably constitutes and appoints Lender (and any of
Lender's officers or employees or agents designated by Lender) as the Borrower's
true and lawful attorney-in-fact with full power and authority, (i) to sign the
name of the Borrower on all or any of such documents or instruments and perform
all other acts that Lender deems necessary or advisable in order to perfect or
continue perfected, maintain the priority or enforceability of or provide notice
of Lender's security interest in, the Intellectual Property Collateral, and (ii)
to execute any and all other documents and instruments, and to perform any and
all acts and things for and on behalf of the Borrower, which Lender may deem
necessary or advisable to maintain, preserve and protect the Intellectual
Property Collateral and to accomplish the purposes of this Agreement, including
(A) to defend, settle, adjust or (after the occurrence and during the
continuance of any Event of Default) institute any action, suit or proceeding
with respect to the Intellectual Property Collateral, and, after the occurrence
and during the continuance of any Event of Default, (B) to assert or retain any
rights under any license agreement for any of the Intellectual Property
Collateral, including without limitation any rights of the Borrower arising
under Section 365(n) of the Bankruptcy Code, and (C) after the occurrence and
during the continuance of any Event of Default, to execute any and all
applications, documents, papers and instruments for Lender to use
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the Intellectual Property Collateral, to grant or issue any exclusive or non-
exclusive license or sub-license with respect to any Intellectual Property
Collateral, and to assign, convey or otherwise transfer title in or dispose of
the Intellectual Property Collateral; PROVIDED, HOWEVER, that in no event shall
Lender have the unilateral power, prior to the occurrence and continuation of an
Event of Default, to assign any of the Intellectual Property Collateral to any
Person, including themselves, without the Borrower's written consent. The
foregoing shall in no way limit Lender's rights and remedies upon or after the
occurrence and during the continuance of an Event of Default. The power of
attorney set forth in this Section 3, being coupled with an interest, is
irrevocable, so long as this Agreement shall not have terminated in accordance
with Section 17.
SECTION 4. FUTURE RIGHTS. Except as otherwise expressly agreed to in
writing by Lender, if and when the Borrower shall obtain rights to any new
patentable inventions or any new trademarks, or become entitled to the benefit
of any of the foregoing, or obtain rights or benefits with respect to any
reissue, division, continuation, renewal, extension or continuation-in-part of
any patents or trademarks or, or any improvement of any patent, the provisions
of Section 2 shall automatically apply thereto and the Borrower shall give to
Lender prompt notice thereof. Borrower shall do all things deemed necessary or
advisable by Lender to ensure the validity, perfection, priority and
enforceability of the security interests of Lender in such future acquired
Intellectual Property Collateral. Borrower hereby authorizes Lender to modify,
amend, or supplement the Schedules hereto and to reexecute this Agreement from
time to time on Borrower's behalf and as its attorney-in-fact to include any
such future Intellectual Property Collateral and to cause such reexecuted
Agreement or such modified, amended or supplemented Schedules to be filed with
PTO.
SECTION 5. LENDER'S DUTIES. Notwithstanding any provision contained
in this Agreement, Lender shall have no duty to exercise any of the rights,
privileges or powers afforded to it and shall not be responsible to the Borrower
or any other Person for any failure to do so or delay in doing so. Except for
the accounting for moneys actually received by Lender hereunder or in connection
herewith, Lender shall have no duty or liability to exercise or preserve any
rights, privileges or powers pertaining to the Intellectual Property Collateral.
SECTION 6. REPRESENTATIONS AND WARRANTIES. Borrower represents and
warrants to Lender that:
(a) A true and correct list of all of the existing Intellectual
Property Collateral consisting of United States patents and patent applications
and/or registrations owned by the Borrower, in whole or in part, is set forth in
SCHEDULE A.
(b) A true and correct list of all of the existing Intellectual
Property Collateral consisting of United States trademarks, trademark
registrations and/or applications owned by the Borrower, in whole or in part, is
set forth in SCHEDULE B.
(c) All material patents, trademarks, service marks and trade names
of Borrower are subsisting and have not been adjudged invalid or unenforceable
in whole or in part.
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(d) All maintenance fees at the large entity rate required to be paid
on account of any patents or trademarks of Borrower have been timely paid for
maintaining such patents and trademarks in force, and, to the best of Borrower's
knowledge, each of the patents and trademarks constituting part of the
Intellectual Property Collateral is valid and enforceable in all material
respects.
(e) To the best of Borrower's knowledge after due inquiry, no
material infringement or unauthorized use presently is being made of any
Intellectual Property Collateral by any Person.
(f) Borrower is the sole and exclusive owner of the Intellectual
Property Collateral and the past, present and contemplated future use of such
Intellectual Property Collateral by Borrower has not, does not and will not
infringe or violate any right, privilege or license agreement of or with any
other Person, in any material respect.
SECTION 7. COVENANTS.
(a) Borrower will appear in and defend any action, suit or proceeding
which may affect to a material extent its title to, or Lender's rights or
interest in, the Intellectual Property Collateral.
(b) Borrower will not allow or suffer any material Intellectual
Property Collateral to become abandoned, nor any registration thereof to be
terminated, forfeited, expired or dedicated to the public.
(c) Borrower will diligently prosecute all applications for patents
and trademarks, and file and prosecute any and all continuations, continuations-
in-part, applications for reissue, applications for certificate of correction
and like matters as shall be reasonable and appropriate in accordance with
prudent business practice, and promptly pay any and all maintenance, license,
registration and other fees, taxes and expenses incurred in connection with any
Intellectual Property Collateral.
SECTION 8. LENDER'S RIGHTS AND REMEDIES.
(a) Lender shall have all rights and remedies available to it under
the Security Agreement, the other Loan Documents and applicable law with respect
to the security interests in any of the Intellectual Property Collateral or any
other collateral. Borrower agrees that such rights and remedies include, but are
not limited to, the right of Lender as a secured party to sell or otherwise
dispose of its collateral after default pursuant to the UCC. Borrower agrees
that Lender shall at all times have such royalty free licenses, to the extent
permitted by law and Borrower's existing contracts, for any Intellectual
Property Collateral that shall be reasonably necessary to permit the exercise of
any of Lender's rights or remedies upon or after the occurrence and during the
continuance of an Event of Default and shall additionally, effective upon or
after the occurrence and during the continuance of an Event of Default, have the
right to license and/or sublicense any Intellectual Property Collateral, whether
general, special or otherwise, and whether on an exclusive or a nonexclusive
basis, any of the Intellectual Property Collateral, throughout the world for
such term or terms, on such conditions, and in such manner, as Lender in its
discretion shall determine. In addition to and without limiting any of the
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foregoing, upon the occurrence and during the continuance of an Event of
Default, Lender shall have the right but shall in no way be obligated to bring
suit, or to take such other action as Lender deems necessary or advisable, in
the name of the Borrower or Lender, to enforce or protect any of the
Intellectual Property Collateral, in which event the Borrower shall, at the
request of Lender, do any and all lawful acts and execute any and all documents
required by Lender in aid of such enforcement. To the extent that Lender shall
elect not to bring suit to enforce such Intellectual Property Collateral,
Borrower agrees to use all reasonable measures and its diligent efforts, whether
by action, suit, proceeding or otherwise, to prevent the infringement,
misappropriation or violations thereof in any material respect by others and for
that purpose agrees diligently to maintain any action, suit or proceeding
against any Person necessary to prevent such infringement, misappropriation or
violation.
(b) The cash proceeds actually received from the sale or other
disposition or collection of Intellectual Property Collateral, and any other
amounts received in respect of the Intellectual Property Collateral the
application of which is not otherwise provided for herein, shall be applied as
provided in the Security Agreement.
SECTION 9. NOTICES. All notices or other communications hereunder
shall be in writing (including by facsimile transmission) shall be mailed, sent
or delivered in accordance with the Security Agreement at or to their respective
addresses or facsimile numbers set forth below their names on the signature
pages hereof, or at or to such other address or facsimile number as shall be
designated by any party in a written notice to the other parties hereto. All
such notices and other communications shall be effective as provided in the
Security Agreement.
SECTION 10. NO WAIVER; CUMULATIVE REMEDIES. No failure on the part
of Lender to exercise, and no delay in exercising, any right, remedy, power or
privilege hereunder shall operate as a waiver thereof, nor shall any single or
partial exercise of any such right, remedy, power or privilege preclude any
other or further exercise thereof or the exercise of any other right, remedy,
power or privilege. The rights and remedies under this Agreement are cumulative
and not exclusive of any rights, remedies, powers and privileges that may
otherwise be available to Lender.
SECTION 11. COSTS AND EXPENSES; INDEMNITY.
(a) Borrower agrees to pay on demand all costs and expenses of
Lender, including without limitation all reasonable attorneys' fees, in
connection with the enforcement or attempted enforcement of, and preservation of
any rights or interests under, this Agreement, and the assignment, sale or other
disposal of any of the Intellectual Property Collateral.
(b) Borrower hereby agrees to indemnify Lender and any of its
affiliates, and their respective directors, officers, employees, agents, counsel
and other advisors (each an "Indemnified Person") against, and hold each of them
harmless from, any and all liabilities, obligations, losses, claims, damages,
penalties, actions, judgments, suits, costs, expenses or disbursements of any
kind or nature whatsoever, including, without limitation, reasonable attorneys'
fees and attorneys' fees incurred pursuant to Xxxxxxx 00 Xxxxxx Xxxxxx Code,
which may be imposed on, incurred by, or asserted against any Indemnified
Person, in any way relating
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to or arising out of this Agreement, including in connection with any
infringement or alleged infringement with respect to any Intellectual Property
Collateral, or any action taken or omitted to be taken by it hereunder (the
"Indemnified Liabilities"); PROVIDED that Borrower shall not be liable to any
Indemnified Person for any portion of such Indemnified Liabilities to the extent
they are found by a final decision of a court of competent jurisdiction to have
resulted from such Indemnified Person's gross negligence or willful misconduct.
If and to the extent that the foregoing indemnification is for any reason held
unenforceable, Borrower agrees to make the maximum contribution to the payment
and satisfaction of each of the Indemnified Liabilities which is permissible
under applicable law.
(c) Any amounts payable to Lender under this Section 11 or otherwise
under this Agreement if not paid upon demand shall bear interest from the date
of such demand until paid in full, at the rate of interest set forth in the
Note.
SECTION 12. BINDING EFFECT. This Agreement shall be binding upon,
inure to the benefit of and be enforceable by Borrower, Lender and their
respective successors and assigns.
SECTION 13. GOVERNING LAW. This Agreement shall be governed by, and
construed in accordance with, the law of the State of California, except to the
extent that the validity or perfection of the assignment and security interests
hereunder in respect of any Intellectual Property Collateral are governed by
federal law and except to the extent that Lender shall have greater rights or
remedies under federal law, in which case such choice of California law shall
not be deemed to deprive Lender of such rights and remedies as may be available
under federal law.
SECTION 14. AMENDMENT. No amendment to this Agreement, or any waiver
of any provision hereof, shall be effective unless it is in writing and signed
by Lender and (in the case of any amendment) the Borrower.
SECTION 15. SEVERABILITY. Whenever possible, each provision of this
Agreement shall be interpreted in such manner as to be effective and valid under
all applicable laws and regulations. If, however, any provision of this
Agreement shall be prohibited by or invalid under any such law or regulation in
any jurisdiction, it shall, as to such jurisdiction, be deemed modified to
conform to the minimum requirements of such law or regulation, or, if for any
reason it is not deemed so modified, it shall be ineffective and invalid only to
the extent of such prohibition or invalidity without affecting the remaining
provisions of this Agreement, or the validity or effectiveness of such provision
in any other jurisdiction.
SECTION 16. COUNTERPARTS. This Agreement may be executed in any
number of counterparts and by different parties hereto in separate counterparts,
each of which when so executed shall be deemed to be an original and all of
which taken together shall constitute one and the same agreement.
SECTION 17. TERMINATION. Upon payment and performance in full of all
Secured Obligations, this Agreement shall terminate and Lender shall promptly
execute and deliver to Borrower such documents and instruments reasonably
requested by Borrower as shall
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be necessary to evidence termination of all security interests given by Borrower
to Lender hereunder, including cancellation of this Agreement by written notice
from Lender to the PTO; PROVIDED, HOWEVER, that (i)the obligations of Borrower
under Section 11 hereof shall survive such termination and (ii) in the event a
voluntary proceeding in bankruptcy is filed by Borrower or an involuntary
proceeding in bankruptcy is filed against Borrower, this Agreement and Lender's
interest in the Intellectual Property Collateral created hereby shall survive
such proceeding.
SECTION 18. SECURITY AGREEMENT. Borrower acknowledges that the
rights and remedies of Lender with respect to the security interests in the
Intellectual Property Collateral granted hereby are more fully set forth in the
Security Agreement and the other Loan Documents and all such rights and remedies
are cumulative.
SECTION 19. NO INCONSISTENT REQUIREMENTS. Borrower acknowledges that
this Agreement and the Security Agreement may contain covenants and other terms
and provisions variously stated regarding the same or similar matters, and the
Borrower agrees that all such covenants, terms and provisions are cumulative and
all shall be performed and satisfied in accordance with their respective terms.
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IN WITNESS WHEREOF, the parties hereto have duly executed this Patent
and Trademark Security Agreement, as of the date first above written.
BORROWER:
AMERIGON INCORPORATED, a California
corporation
By ____________________________
Name:_____________________
Title:____________________
Address:
_______________________________________
_______________________________________
Attn: _________________________________
Fax: __________________________________
LENDER:
BIG STAR INVESTMENTS LLC
By ____________________________
Name:_____________________
Title:____________________
Address:
_______________________________________
_______________________________________
Attn:__________________________________
Fax: __________________________________
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