EXHIBIT 10.3
INTELLECTUAL PROPERTY SECURITY AGREEMENT
Dated April 24, 1998
From
THE GRANTORS NAMED HEREIN
as Grantors,
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to
BANQUE NATIONALE DE PARIS,
as Agent
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TABLE OF CONTENTS
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SECTION PAGE
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1. Grant of Security.................................................. 1
2. Security for Obligations........................................... 3
3. Grantors Remain Liable............................................. 3
4. Representations and Warranties..................................... 3
5. Further Assurances................................................. 5
6. Transfers and Other Liens.......................................... 8
7. The Agent Appointed Attorney-in-Fact............................... 8
8. The Agent May Perform.............................................. 8
9. The Agent's Duties................................................. 9
10. Remedies........................................................... 9
11. Indemnity and Expenses............................................. 10
12. Security Interest Absolute......................................... 11
13. Amendments; Waivers; Etc........................................... 12
14. Addresses for Notices.............................................. 12
15. Continuing Security Interest; Assignments Under the
Credit Agreement................................................... 12
16. Release and Termination............................................ 13
17. Governing Law; Submission to Jurisdiction; Waiver of Jury Trial;
Etc................................................................ 13
SCHEDULES
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Schedule I - Patents and Patent Applications
Schedule II - Trademark Registrations and Applications
Schedule III - Copyright Registrations and Applications
Schedule IV - Licenses
Schedule V - Third Party Claims/Pending Litigation/Unauthorized Uses
EXHIBITS
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Exhibit A - Form of Intellectual Property Agreement Supplement
INTELLECTUAL PROPERTY SECURITY AGREEMENT dated April 24, 1998, made by
IRON AGE CORPORATION, a Delaware corporation (the "Borrower"), IRON AGE HOLDINGS
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CORPORATION, a Delaware corporation, and the Persons listed on the signature
pages hereof under the caption "The Collateral Grantors" (such Persons, together
with the Borrower and the Additional Intellectual Property Collateral Grantors
(as defined in Section 13(c)), the "Grantors", and each individually, a
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"Grantor"), to BANQUE NATIONALE DE PARIS ("BNP"), as agent (together with any
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successor agent appointed pursuant to Article VIII of the Credit Agreement, the
"Agent") for the lenders (the "Lenders") and the swing line bank (the "Swing
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Line Bank") party to the Credit Agreement (as hereinafter defined), and the
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issuer of Letters of Credit (the "Issuing Bank") under the Credit Agreement and
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as custodian for the Hedge Banks (as defined in the Credit Agreement).
PRELIMINARY STATEMENTS:
(1) The Borrower has entered into a Credit Agreement dated as of
April 24, 1998 (as amended, supplemented or otherwise modified, the "Credit
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Agreement"; the terms defined therein and not otherwise defined herein being
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used herein as therein defined) with the Lenders, the Issuing Bank, Swing Line
Bank and the Agent.
(2) It is a condition precedent to the making of Advances by the
Lender Parties under the Credit Agreement and the issuance of Letters of Credit
by the Issuing Bank under the Credit Agreement that each Grantor shall have
granted the assignment and security interest and made the pledge contemplated by
this Agreement.
NOW, THEREFORE, in consideration of the premises and in order to
induce the Lender Parties to make Advances under the Credit Agreement, the
Issuing Bank to issue Letters of Credit under the Credit Agreement and the Hedge
Banks to enter into arrangements permitted by Section 5.02(b)(ii)(A) of the
Credit Agreement, each Grantor hereby agrees with the Agent for the ratable
benefit of the Secured Parties as follows:
SECTION 1. Grant of Security. Each Grantor hereby pledges and
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assigns to the Agent for the benefit of the Secured Parties, and hereby grants
to the Agent for the benefit of the Secured Parties a security interest in, all
of such Grantor's right, title and interest in and to the following, whether now
owned or hereafter acquired (collectively, the "Intellectual Property
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Collateral"):
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(a) all patents, patent applications and patentable inventions,
including, without limitation, each patent and patent application
identified in Schedule I attached hereto and made a part hereof, and
including without limitation (i) all inventions and improvements described
and claimed therein, (ii) the right to ▇▇▇ or otherwise recover for any
misappropriations thereof, (iii) all income, royalties, damages and other
payments now and hereafter due and/or payable with respect thereto
(including,
without limitation, payments under all licenses entered into in connection
therewith, and damages and payments for past and future infringements
thereof), and (iv) all rights corresponding thereto throughout the world
and all reissues, divisions, continuations, continuations-in-part,
substitutes, renewals, and extensions thereof, all improvements thereon and
all other rights of any kind whatsoever of such Grantor accruing thereunder
or pertaining thereto (the "Patents");
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(b) all trademarks, service marks, trade names, trade dress or other
indicia of trade origin, trademark and service ▇▇▇▇ registrations, and
applications for trademark or service ▇▇▇▇ registrations and any renewals
thereof, including, without limitation, each registration and application
identified in Schedule II attached hereto and made a part hereof, and
including without limitation (i) the right to ▇▇▇ or otherwise recover for
any and all past, present and future infringements and misappropriations
thereof, (ii) all income, royalties, damages and other payments now and
hereafter due and/or payable with respect thereto (including, without
limitation, payments under all licenses entered into in connection
therewith, and damages and payments for past or future infringements
thereof), and (iii) all rights corresponding thereto throughout the world
and all other rights of any kind whatsoever of such Grantor accruing
thereunder or pertaining thereto, together in each case with the goodwill
of the business connected with the use of, and symbolized by, each such
trademark, service ▇▇▇▇, trade name, trade dress or other indicia of trade
origin (the "Trademarks");
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(c) all copyrights, whether statutory or common law, and whether or
not the underlying works of authorship have been published, and all works
of authorship and other intellectual property rights therein, all
copyrights of works based on, incorporated in, derived from or relating to
works covered by such copyrights, all right, title and interest to make and
exploit all derivative works based on or adopted from works covered by such
copyrights, and all copyright registrations and copyright applications, and
any renewals or extensions thereof, including, without limitation, each
copyright registration and copyright application, if any, identified in
Schedule III attached hereto and made a part hereof, and including, without
limitation, (i) the right to print, publish and distribute any of the
foregoing, (ii) the right to ▇▇▇ or otherwise recover for any and all past,
present and future infringements and misappropriations thereof, (iii) all
income, royalties, damages and other payments now and hereafter due and/or
payable with respect thereto (including, without limitation, payments under
all licenses entered into in connection therewith, and damages and payments
for past or future infringements thereof), and (iv) all rights
corresponding thereto throughout the world and all other rights of any kind
whatsoever of such Grantor accruing thereunder or pertaining thereto (the
"Copyrights"); and
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(d) all license agreements with any other person in connection with
any of the Patents, Trademarks or Copyrights, or such other person's
patents, trade names, trademarks or copyrights, whether such Grantor is a
licensor or licensee under any such license agreement, including, without
limitation, the license agreements listed on
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Schedule IV attached hereto and made a part hereof, subject, in each case,
to the terms of such license agreements, including, without limitation,
terms requiring consent to a grant of a security interest, and any right to
prepare for sale, sell and advertise for sale, all Inventory (as defined in
the Security Agreement) now or hereafter owned by such Grantor and now or
hereafter covered by such licenses (the "Licenses").
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SECTION 2. Security for Obligations. The pledge, assignment and
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security interest granted under this Agreement by each Grantor secure the
payment of all Obligations of such Grantor now or hereafter existing under the
Loan Documents, whether for principal, interest, premiums, fees, expenses, or
otherwise (all such Obligations being the "Secured Obligations"). Without
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limiting the generality of the foregoing, this Agreement secures the payment of
all amounts that constitute part of the Secured Obligations and would be owed by
such Grantor to the Secured Parties under the Loan Documents but for the fact
that they are unenforceable or not allowable due to the existence of a
bankruptcy, reorganization or similar proceeding involving such Grantor.
SECTION 3. Grantors Remain Liable. Anything herein to the contrary
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notwithstanding, (a) each Grantor shall remain liable under the contracts and
agreements included in the Intellectual Property Collateral to the extent set
forth therein to perform all of its duties and obligations thereunder to the
same extent as if this Agreement had not been executed, (b) the exercise by the
Agent of any of the rights hereunder shall not release any Grantor from any of
its duties or obligations under the contracts and agreements included in the
Intellectual Property Collateral, and (c) no Secured Party shall have any
obligation or liability under the contracts and agreements included in the
Intellectual Property Collateral by reason of this Agreement, nor shall any
Secured Party be obligated to perform any of the obligations or duties of any
Grantor thereunder or to take any action to collect or enforce any claim for
payment assigned hereunder.
SECTION 4. Representations and Warranties. Each Grantor represents
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and warrants as to itself and its Intellectual Property Collateral as follows:
(a) Such Grantor is the legal and beneficial owner of the entire
right, title and interest in and to the Intellectual Property Collateral of
such Grantor in which it is granting a security interest free and clear of
any Lien, except for the security interest created by this Agreement,
Permitted Liens and other Liens permitted pursuant to Section 5.02(a) of
the Credit Agreement. No effective financing statement or other instrument
similar in effect covering all or any part of such Intellectual Property
Collateral is on file in any recording office (including, without
limitation, the United States Patent and Trademark Office), except such as
may have been filed in favor of the Agent relating to this Agreement or the
other Collateral Documents, and as set forth in Schedule VI of the Security
Agreement and except for (1) the Security Agreement in favor of Wolverine
World Wide, Inc. which is recorded in the United States Patent and
Trademark Office ("PTO") at Reel 773, Frames 434-444, (2) the
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Intellectual Property Security Agreement dated February 26, 1997 in favor
of the Agent which is recorded in the PTO at Reel 1565, Frames 638-674, and
(3) the Intellectual Property Security Agreement Supplement dated March 14,
1997 from IAK Acquisition Corp. in favor of the Agent which is recorded in
the PTO at Reel 1583, Frames 132-173.
(b) Set forth in Schedule I opposite the name of such Grantor is a
complete and accurate list of all patents and all patent applications owned
by such Grantor. Set forth in Schedule II opposite the name of such Grantor
is a complete and accurate list of all trademark and service ▇▇▇▇
registrations and all trademark and service ▇▇▇▇ applications owned by such
Grantor. Set forth in Schedule III opposite the name of such Grantor is a
complete and accurate list of all copyright registrations and copyright
applications owned by such Grantor. Set forth in Schedule IV opposite the
name of such Grantor is a complete and accurate list of all Licenses owned
by such Grantor in which such Grantor is (i) a licensor with respect to any
of the Patents, Trademarks or Copyrights, or (ii) a licensee of any other
person's patents, trade names, trademarks or copyrights. Such Grantor has
made all necessary filings and recordations to protect and maintain its
interest in the patents, patent applications, trademark and service ▇▇▇▇
registrations, trademark and service ▇▇▇▇ applications, copyright
registrations, copyright applications and Licenses set forth in Schedules
I, II, III and IV.
(c) Each patent, patent application, trademark or service ▇▇▇▇
registration, trademark or service ▇▇▇▇ application, copyright registration
and copyright application of such Grantor set forth in Schedules I, II and
III is subsisting and has not been adjudged invalid, unregistrable or
unenforceable, in whole or in part, and is valid, registrable and
enforceable, except as otherwise disclosed to the Agent. Each License of
such Grantor identified in Schedule IV is validly subsisting and has not
been adjudged invalid or unenforceable, in whole or in part, and is valid
and enforceable. Such Grantor is not aware of any uses of any item of
Intellectual Property Collateral which could be expected to lead to such
item becoming invalid or unenforceable, including unauthorized uses by
third parties and uses which were not supported by the goodwill of the
business connected with such Intellectual Property Collateral.
(d) Such Grantor has not made a previous assignment, transfer or
agreement constituting a present or future assignment, transfer or
encumbrance of any of the Intellectual Property Collateral which has not
been reassigned or retransferred to such Grantor. Such Grantor has not
granted any license (other than those listed on Schedule IV hereto),
release, covenant not to ▇▇▇, or non-assertion assurance to any person with
respect to any part of the Intellectual Property Collateral.
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(e) Such Grantor has used proper statutory notice in connection with
its use of each patent, each registered trademark and service ▇▇▇▇ and each
copyright contained in Schedules I, II and III.
(f) This Agreement and the pledge of the Intellectual Property
Collateral pursuant hereto, together with the filings described below,
create a valid and perfected first priority security interest in the
Intellectual Property Collateral subject to Permitted Liens and other Liens
permitted pursuant to Section 5.02(a) of the Credit Agreement, securing the
payment of the Secured Obligations, and all filings and other actions
necessary or desirable to perfect and protect such security interest have
been or will promptly be duly made or taken.
(g) No consent of any other Person and no authorization, approval or
other action by, and no notice to or filing with, any governmental
authority or regulatory body or any other third party is required for (i)
the grant by such Grantor of the assignment and security interest granted
hereby, the pledge by such Grantor of the Intellectual Property Collateral
pursuant hereto or the execution, delivery or performance of this Agreement
by such Grantor, (ii) the perfection or maintenance of the pledge,
assignment and security interest created hereby (including the first
priority nature of such pledge, assignment or security interest) or (iii)
the exercise by the Agent of its rights provided for in this Agreement or
the remedies in respect of the Intellectual Property Collateral pursuant to
this Agreement, in each case other than the filing of financing and
continuation statements under the Uniform Commercial Code in the
jurisdictions listed on Schedule VI to the Security Agreement and the
filing and recordal of this Agreement with the United States Patent and
Trademark Office and the United States Copyright Office, which shall be
duly filed promptly following the execution of this Agreement.
(h) Except for the Licenses set forth in Schedule IV and except as
set forth in Schedule V, to such Grantor's knowledge after due diligence
that such Grantor has deemed necessary and appropriate under the
circumstances there are no claims relating to any item of Intellectual
Property Collateral.
(i) Except as set forth in Schedule V, no claim has been made and is
continuing or, to such Grantor's knowledge after due diligence that such
Grantor has deemed necessary and appropriate under the circumstances,
threatened that any item of Intellectual Property Collateral is invalid or
unenforceable or that the use by such Grantor of any Intellectual Property
Collateral does or may violate the rights of any Person. Except as set
forth in Schedule V, there is currently no infringement or unauthorized use
of any item of Intellectual Property Collateral.
(j) Such Grantor has taken all necessary steps to use consistent
standards of quality in the manufacture, distribution and sale of all
products sold and the provision of all services provided under or in
connection with any of the Trademarks and has
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taken all reasonably necessary steps to ensure that all licensed users of
any of the Trademarks use such consistent standards of quality.
SECTION 5. Further Assurances. (a) Each Grantor agrees that from
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time to time, at its own expense, it shall promptly execute and deliver all
further instruments and documents, and take all further action, that may be
necessary or desirable, or that the Agent may reasonably request, in order to
perfect and protect any pledge, assignment or security interest granted or
purported to be granted hereby (including, without limitation, the first
priority nature thereof) or to enable the Agent to exercise and enforce its
rights and remedies hereunder with respect to any part of the Intellectual
Property Collateral of such Grantor. Without limiting the generality of the
foregoing, each Grantor shall promptly after an Event of Default execute and
file such financing or continuation statements, or amendments thereto, and such
other instruments or notices, as may be necessary or desirable or as the Agent
may request, in order to perfect and preserve the pledge, assignment and
security interest granted or purported to be granted hereby.
(b) Each Grantor hereby authorizes the Agent to file one or more
financing or continuation statements, and amendments thereto, relating to all or
any part of the Intellectual Property Collateral without the signature of such
Grantor where permitted by law. A photocopy or other reproduction of this
Agreement or any financing statement covering the Intellectual Property
Collateral or any part thereof shall be sufficient as a financing statement
where permitted by law.
(c) Each Grantor shall furnish to the Agent, upon the Agent's request
at any time after the occurrence and during the continuance of an Event of
Default statements and schedules further identifying and describing the
Intellectual Property Collateral of such Grantor and such other reports in
connection with the Intellectual Property Collateral of such Grantor as the
Agent may reasonably request, all in reasonable detail.
(d) Each Grantor agrees that, should it obtain an ownership interest
in any patent, patent application, patentable invention, trademark, service
▇▇▇▇, trade name, trade dress, other indicia of trade origin, trademark or
service ▇▇▇▇ registration, trademark or service ▇▇▇▇ application, copyright,
work of authorship, copyright registration, copyright application or license,
which is not now a part of the Intellectual Property Collateral, (i) the
provisions of Section 1 shall automatically apply thereto, (ii) any such patent,
patent application, patentable invention, trademark, service ▇▇▇▇, trade name,
trade dress, indicia of trade origin, trademark or service ▇▇▇▇ registration or
trademark or service ▇▇▇▇ application (together with the goodwill of the
business connected with the use of same and symbolized by same), copyright, work
of authorship, copyright registration, copyright application or license shall
automatically become part of the Intellectual Property Collateral, and (iii)
with respect to any ownership interest in any patent, patent application,
trademark or service ▇▇▇▇ registration, trademark or service ▇▇▇▇ application,
copyright registration, copyright application or license that such Grantor
should obtain, it shall give prompt written
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notice thereof to the Agent in accordance with Section 14 hereof. Each Grantor
authorizes the Agent to modify this Agreement by amending Schedules I, II, III,
IV and V (and will cooperate with the Agent in effecting any such amendment) to
include any patent, patent application, trademark or service ▇▇▇▇ registration,
trademark or service ▇▇▇▇ application, copyright registration, copyright
application or license which becomes part of the Intellectual Property
Collateral under this Section.
(e) With respect to each patent, patent application, trademark or
service ▇▇▇▇ registration, trademark or service ▇▇▇▇ application, copyright
registration, copyright application and License, such Grantor agrees to take all
necessary steps, including, without limitation, in the United States Patent and
Trademark Office, the United States Copyright Office or in any court, to (i)
maintain each such patent, trademark or service ▇▇▇▇ registration, copyright
registration and License of such Grantor, and (ii) pursue each such patent
application, trademark or service ▇▇▇▇ application, and copyright application
now or hereafter included in the Intellectual Property Collateral of such
Grantor, including, without limitation, the filing of responses to office
actions issued by the United States Patent and Trademark Office and the United
States Copyright Office, the filing of applications for renewal or extension,
the filing of affidavits under Sections 8 and 15 of the United States Trademark
Act, the filing of divisional, continuation, continuation-in-part and substitute
applications, the filing of applications for re-issue, renewal or extensions,
the payment of maintenance fees, and the participation in interference,
reexamination, opposition, cancellation, infringement and misappropriation
proceedings. Each Grantor agrees to take corresponding steps with respect to
each new or acquired patent, patent application, trademark or service ▇▇▇▇
registration, trademark or service ▇▇▇▇ application, copyright registration,
copyright application or License to which it is now or later becomes entitled.
Any expenses incurred in connection with such activities shall be borne by such
Grantor. No Grantor shall, without the written consent of the Agent, discontinue
use of or otherwise abandon any patent or patentable invention, trademark or
service ▇▇▇▇, or copyright identified in Schedules I, II and III, or abandon any
right to file an application for letters patent, trademark or service ▇▇▇▇, or
copyright, or abandon any pending application for a letters patent, trademark or
service ▇▇▇▇, or copyright identified in Schedules I, II and III, unless such
Grantor shall have previously determined that such use or the pursuit or
maintenance of such patent, registration or application is no longer desirable
in the conduct of such Grantor's business and that the loss thereof will not
have a Material Adverse Effect and, in which case, such Grantor will give prompt
notice of any such abandonment to the Agent pursuant to the terms of Section 14
hereof.
(f) Each Grantor agrees to notify the Agent promptly and in writing
if it learns (i) that any item of the Intellectual Property Collateral may be
determined to have become abandoned or dedicated or (ii) of any adverse
determination or the institution of any proceeding (including, without
limitation, the institution of any proceeding in the United States Patent and
Trademark Office or any court) regarding any item of the Intellectual Property
Collateral.
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(g) In the event that any Grantor becomes aware that any item of the
Intellectual Property Collateral is infringed or misappropriated by a third
party, such Grantor shall promptly notify the Agent and shall take such actions
as such Grantor or the Agent deems reasonable and appropriate under the
circumstances to protect such Intellectual Property Collateral, including,
without limitation, suing for infringement or misappropriation and for an
injunction against such infringement or misappropriation. Any expense incurred
in connection with such activities shall be borne by such Grantor.
(h) Each Grantor shall continue to use proper statutory notice in
connection with its use of each of its patents, registered trademarks and
service marks, and copyrights contained in Schedules I, II and III.
(i) Each Grantor shall take all steps which it or the Agent deems
reasonable and appropriate under the circumstances to preserve and protect each
item of its Intellectual Property Collateral, including, without limitation,
maintaining the quality of any and all products or services used or provided in
connection with any of the Trademarks, consistent with the quality of the
products and services as of the date hereof, and taking all steps necessary to
ensure that all licensed users of any of the Trademarks use such consistent
standards of quality.
SECTION 6. Transfers and Other Liens. Each Grantor agrees not (i) to
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sell, assign (by operation of law or otherwise) or otherwise dispose of, or
grant any option with respect to, any item of the Intellectual Property
Collateral, except for sales of Inventory in the ordinary course of business and
sales permitted pursuant to Section 5.02(e) of the Credit Agreement, or (ii) to
create or suffer to exist any Lien upon or with respect to any of the
Intellectual Property Collateral, except for the pledge, assignment and security
interest created by this Agreement, Permitted Liens, and other Liens to the
extent permitted pursuant to Section 5.02(a) of the Credit Agreement.
SECTION 7. The Agent Appointed Attorney-in-Fact. Each Grantor hereby
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irrevocably appoints the Agent such Grantor's attorney-in-fact, with full
authority in the place and stead of such Grantor and in the name of such Grantor
or otherwise, upon the occurrence and continuance of an Event of Default, to
take any action and to execute any instrument that the Agent may deem necessary
or advisable to accomplish the purposes of this Agreement, including, without
limitation:
(a) to ask for, demand, collect, ▇▇▇ for, recover, compromise,
receive and give acquittance and receipts for moneys due and to become due
under or in respect of any of the Intellectual Property Collateral,
(b) to receive, indorse and collect any drafts, instruments, chattel
paper and other documents in connection with subsection (a) above and give
full discharge for the same; and
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(c) to file any claims, or take any action or to institute any
proceedings that the Agent may deem necessary or desirable for the
collection of any payments relating to any of the Intellectual Property
Collateral or to enforce the rights of the Agent with respect to any item
of the Intellectual Property Collateral.
SECTION 8. The Agent May Perform. If any Grantor fails to perform any
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agreement contained herein, the Agent may upon notice to such Grantor perform,
or cause performance of, such agreement, and the expenses of the Agent incurred
in connection therewith shall be payable by such Grantor under Section 11(b).
SECTION 9. The Agent's Duties. The powers conferred on the Agent
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hereunder are solely to protect its interest in the Intellectual Property
Collateral and shall not impose any duty upon it to exercise any such powers.
Except for the exercise of reasonable care in the safe custody and preservation
of the certificates of registration for any of the Trademarks and Copyrights,
the letters patent for any of the Patents and any License in its possession and
the accounting for moneys actually received by it hereunder, the Agent shall
have no duty as to any Intellectual Property Collateral, whether or not any
Secured Party has or is deemed to have knowledge of such matters, or as to the
taking of any necessary steps to preserve rights against any parties or any
other rights pertaining to any Intellectual Property Collateral. The Agent
shall be deemed to have exercised reasonable care in the custody and
preservation of the certificates of registration for any of the Trademarks and
Copyrights, the letters patent for any of the Patents and any License in its
possession if such certificates of registration, letters patent and licenses are
accorded treatment substantially equal to that which BNP accords its own
property of like tenor.
SECTION 10. Remedies. If any Event of Default shall have occurred
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and be continuing:
(a) The Agent may exercise in respect of the Intellectual Property
Collateral, in addition to other rights and remedies provided for herein or
otherwise available to it under applicable law, all the rights and remedies
of a secured party upon default under the Uniform Commercial Code in effect
in the State of New York at such time (the "Code") (whether or not the Code
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applies to the affected Intellectual Property Collateral), and also may (i)
require each Grantor to, and each Grantor hereby agrees that it shall at
its own expense and upon request of the Agent forthwith, assemble all or
part of the documents and things embodying all or any part of the
Intellectual Property Collateral as directed by the Agent and make them
available to the Agent at a place to be designated by the Agent that is
reasonably convenient to both parties and (ii) without notice, except as
specified below, sell the Intellectual Property Collateral or any part
thereof in one or more parcels at public or private sale, at any exchange
or broker's board or at any of the Agent's offices or elsewhere, for cash,
on credit or for future delivery, and upon such other terms as the Agent
may deem commercially reasonable. In the event of any sale, assignment, or
other disposition of any of the Intellectual Property Collateral of any
Grantor, the goodwill of the business connected
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with and symbolized by any Trademarks subject to such disposition shall be
included, and such Grantor shall supply to the Agent or its designee such
Grantor's know-how and expertise, and documents and things embodying the
same, relating to the manufacture, distribution, advertising and sale of
products or the provision of services relating to any Intellectual Property
Collateral subject to such disposition, and such Grantor's customer lists
and other records and documents relating to such Intellectual Property
Collateral and to the manufacture, distribution, advertising and sale of
such products and services. Each Grantor agrees that, to the extent notice
of sale shall be required by law, at least ten days' notice to such Grantor
of the time and place of any public sale or the time after which any
private sale is to be made shall constitute reasonable notification. The
Agent shall not be obligated to make any sale of Intellectual Property
Collateral regardless of notice of sale having been given. The Agent may
adjourn any public or private sale from time to time by announcement at the
time and place fixed therefor, and such sale may, without further notice,
be made at the time and place to which it was so adjourned.
(b) Any cash held by the Agent as Collateral and all cash proceeds
received by the Agent in respect of any sale of, collection from, or other
realization upon, all or any part of the Intellectual Property Collateral
may, in the discretion of the Agent, be held by the Agent as collateral
for, and/or then or at any time thereafter applied (after payment of any
amounts payable to the Agent pursuant to Section 11) in whole or in part by
the Agent for the ratable benefit of the Secured Parties against all or any
part of the Secured Obligations in such order as the Agent shall elect.
Any surplus of such cash or cash proceeds held by the Agent and remaining
after payment in full of all of the Secured Obligations shall be paid over
to the Grantors or to whomsoever may be lawfully entitled to receive such
surplus.
(c) The Agent may exercise any and all rights and remedies of the
Grantors under or in respect of the Intellectual Property Collateral,
including, without limitation, any and all rights of the Grantors to demand
or otherwise require payment of any amount under, or performance of any
provision of, any of the Intellectual Property Collateral.
(d) All payments received by any Grantor under or in respect of the
Intellectual Property Collateral shall be received in trust for the benefit
of the Agent, shall be segregated from other funds of such Grantor and
shall be forthwith paid over to the Agent in the same form as so received
(with any necessary indorsement or assignment).
SECTION 11. Indemnity and Expenses. (a) Each of the Grantors
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jointly and severally agrees to indemnify the Agent, each Secured Party and each
of their respective officers, directors, employees, agents and advisors (each an
"Indemnified Party") from, and hold each of them harmless against, any and all
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claims, damages, losses, liabilities and expenses (including, without
limitation, reasonable fees and reasonable expenses of counsel)
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arising out of or in connection with or resulting from this Agreement
(including, without limitation, enforcement of this Agreement), except to the
extent that such claims, damages, losses, liabilities and expenses are found in
a final, nonappealable judgment by a court of competent jurisdiction to have
resulted from such Indemnified Party's gross negligence or willful misconduct.
(b) Each Grantor jointly and severally agrees to pay to the Agent,
upon demand, the amount of any and all expenses (including, without limitation,
the reasonable fees and expenses of its counsel and of any experts and agents)
that the Agent may incur in connection with (i) the administration of this
Agreement, (ii) the custody, preservation, use or operation of, or the sale of,
collection from or other realization upon, any of the Intellectual Property
Collateral, (iii) the exercise or enforcement of any of the rights of any
Secured Party hereunder or (iv) the failure by such Grantor to perform or
observe any of the provisions hereof.
SECTION 12. Security Interest Absolute. The obligations of each
--------------------------
Grantor under this Agreement are independent of the Secured Obligations, and a
separate action or actions may be brought and prosecuted against such Grantor to
enforce this Agreement irrespective of whether any action is brought against the
other Grantors or whether the other Grantors are joined in any such action or
actions. All rights of the Agent and the pledge, assignment and security
interest hereunder, and all obligations of each Grantor hereunder, shall be
absolute and unconditional, irrespective of:
(i) any lack of validity or enforceability of any Loan Document, any
Hedge Agreement or any other agreement or instrument relating thereto;
(ii) any change in the time, manner or place of payment of, or in any
other term of, all or any of the Secured Obligations, or any other
amendment or waiver of or any consent to any departure from any Loan
Document or any Hedge Agreement, including, without limitation, any
increase in the Secured Obligations resulting from the extension of
additional credit to any Grantor or any of its Subsidiaries or otherwise;
(iii) any taking, exchange, release or nonperfection of any
Intellectual Property Collateral, or any taking, release or amendment or
waiver of or consent to departure from any guaranty, for all or any of the
Secured Obligations;
(iv) any manner of application of Intellectual Property Collateral,
or proceeds thereof, to all or any of the Secured Obligations, or any
manner of sale or other disposition of any Intellectual Property Collateral
for all or any of the Secured Obligations or any other assets of any
Grantor or any of its Subsidiaries;
(v) any change, restructuring or termination of the corporate
structure or existence of any Grantor or any of its Subsidiaries; or
-11-
(vi) any other circumstance that might otherwise constitute a defense
available to, or a discharge of, such Grantor or a third party grantor of a
security interest.
SECTION 13. Amendments; Waivers; Etc. (a) No amendment or waiver of
------------------------
any provision of this Agreement, and no consent to any departure by any Grantor
herefrom, shall in any event be effective unless the same shall be in writing
and signed by the Agent, and then such waiver or consent shall be effective only
in the specific instance and for the specific purpose for which given.
(b) No failure on the part of any Secured Party to exercise, and no
delay in exercising, any right, power or privilege hereunder shall operate as a
waiver thereof or consent thereto; nor shall any single or partial exercise of
any such right, power or privilege preclude any other or further exercise
thereof or the exercise of any other right, power or privilege.
(c) Upon the execution and delivery by any Person of a security
agreement supplement in substantially the form of Exhibit A hereto (each an
"Intellectual Property Security Agreement Supplement"), (i) such Person shall be
----------------------------------------------------
referred to as an "Additional Intellectual Property Collateral Grantor" and
---------------------------------------------------
shall be and become a Grantor, and each reference in this agreement to "Grantor"
shall also mean and be a reference to such Additional Collateral Grantor and
(ii) the supplements attached to each Security Agreement Supplement shall be
incorporated into and become a part of and supplement Schedules I through V
hereto, as appropriate, and the Agent may attach such supplements to such
Schedules, and each reference to such Schedules shall mean and be a reference to
such Schedules, as supplemented pursuant hereto.
SECTION 14. Addresses for Notices. All notices and other
---------------------
communications provided for hereunder shall be in writing (including telecopier,
telegraphic or telex communication) and mailed, telecopied, telegraphed,
telexed, cabled or delivered, if to any Grantor, addressed to it at the address
set forth below the name of such Grantor on the signature pages hereof, and if
to the Agent, any Lender, the Issuing Bank, the Swing Line Bank or any Hedge
Bank, addressed to it at its address set forth in Section 9.02 of the Credit
Agreement, or, as to any party, at such other address as shall be designated by
such party in a written notice to each other party complying as to delivery with
the terms of this Section 14. All such notices and other communications shall,
when mailed, telecopied, telegraphed or telexed, be effective when deposited in
the mails, delivered to the telegraph company, transmitted by telecopier or
confirmed by telex answerback, respectively, addressed as aforesaid.
SECTION 15. Continuing Security Interest; Assignments Under the
---------------------------------------------------
Credit Agreement. This Agreement shall create a continuing security interest in
----------------
the Intellectual Property Collateral and shall (a) remain in full force and
effect until the latest of (i) the payment in full in cash of the Secured
Obligations and all other amounts payable under this
-12-
Agreement, (ii) the Termination Date and (iii) the termination or expiration of
all Secured Hedge Agreements, (b) be binding upon each Grantor, its successors
and assigns and (c) inure, together with the rights and remedies of the Agent
hereunder, to the benefit of and be enforceable by the Secured Parties and their
respective successors, transferees and assigns. Without limiting the generality
of the foregoing clause (c), subject to Section 9.07 of the Credit Agreement,
any Lender Party may assign or otherwise transfer all or any portion of its
rights and obligations under the Credit Agreement (including, without
limitation, all or any portion of its Commitment or Commitments, the Advances
owing to it and any Note or Notes held by it) to any other Person, and such
other Person shall thereupon become vested with all the benefits in respect
thereof granted to such Lender Party herein or otherwise, in each case as
provided in Section 9.07 of the Credit Agreement.
SECTION 16. Release and Termination. (a) Upon any sale, lease,
-----------------------
transfer or other disposition of any item of Intellectual Property Collateral in
accordance with the terms of the Loan Documents (other than sales of Inventory
and Equipment in the ordinary course of business), the Agent shall, at the
appropriate Grantor's expense, execute and deliver to such Grantor such
documents as such Grantor shall reasonably request to evidence the release of
such item of Intellectual Property Collateral from the assignment and security
interest granted hereby; provided, however, that (i) at the time of such request
-------- -------
and such release, no Default shall have occurred and be continuing, (ii) such
Grantor shall have delivered to the Agent, at least ten Business Days prior to
the date of the proposed release, a request for release describing the item of
Intellectual Property Collateral and the terms of the sale, lease, transfer or
other disposition in reasonable detail (including, without limitation, the price
thereof and any expenses in connection therewith), together with a form of
release for execution by the Agent and a certification by such Grantor to the
effect that the transaction is in compliance with the Loan Documents and as to
such other matters as the Agent may reasonably request and (iii) the proceeds of
any such sale, lease, transfer or other disposition required to be applied in
accordance with Section 2.06(b) of the Credit Agreement shall be paid to, or in
accordance with the instructions of, the Agent at the closing thereof.
(b) Upon the later of (i) the cash payment in full of the Secured
Obligations, (ii) the Termination Date and (iii) the termination or expiration
of all Secured Hedge Agreements, the pledge, assignment and security interest
granted hereby shall terminate and all rights to the Intellectual Property
Collateral shall revert to the appropriate Grantor. Upon any such termination
and reversion, the Agent shall, at the appropriate Grantor's expense, return to
such Grantor such of the Intellectual Property Collateral of such Grantor in its
possession as shall not have been sold or otherwise applied pursuant to the
terms of the Loan Documents and execute and deliver to such Grantor such
documents as such Grantor shall reasonably request to evidence such termination
and reversion.
SECTION 17. Governing Law; Submission to Jurisdiction; Waiver of Jury
---------------------------------------------------------
Trial; Etc. (a) This Agreement shall be governed by and construed in
----------
accordance with the
-13-
laws of the State of New York. Unless otherwise defined herein or in the Credit
Agreement, terms used in Articles 8 and 9 of the Code are used herein as therein
defined.
(b) Each Grantor hereby irrevocably and unconditionally submits, for
itself and its property, to the nonexclusive jurisdiction of any New York State
court or federal court of the United States of America sitting in New York City,
and any appellate court from any thereof, in any action or proceeding arising
out of or relating to this Agreement or any other Loan Document or Secured Hedge
Agreement to which it is or is to be a party, or for recognition and enforcement
of any judgment, and such Grantor hereby irrevocably and unconditionally agrees
that all claims in respect of any such action or proceeding may be heard and
determined in any such New York State or, to the extent permitted by law, in
such federal court. Each Grantor irrevocably and unconditionally waives, to the
fullest extent it may legally and effectively do so, any objection or defense
that it may now or hereafter have to the laying of venue of any suit, action or
proceeding arising out of or relating to this Agreement or any of the other Loan
Documents to which it is or is to be a party in any New York State or federal
court. Each Grantor hereby irrevocably waives, to the fullest extent permitted
by law, the defense of an inconvenient forum to the maintenance of such action
or proceeding in any such court. Each Grantor agrees that a final judgment in
any such action or proceeding shall be conclusive and may be enforced in other
jurisdictions by suit on the judgment or in any other manner provided by law.
Nothing herein shall affect the right that any party may otherwise have to
commence or participate in any action, suit or proceeding relating to this
Agreement, any of the other Loan Documents or any Secured Hedge Agreement to
which it is or is to be a party, or otherwise to proceed against any Grantor, in
any other jurisdiction.
(c) Each Grantor irrevocably consents to the service of any and all
process in any such action, suit or proceeding by the mailing of copies of such
process to such Grantor at the address set forth below its name on the signature
page hereof, or by any other method permitted by law. Each Grantor agrees that
a final judgment in any such action or proceeding shall be conclusive and may be
enforced in other jurisdictions by suit on the judgment or in any other manner
provided by law.
(d) To the extent that any Grantor has or hereafter may acquire
immunity from jurisdiction of any court or from any legal process (whether
through service or notice, attachment prior to judgment, attachment in aid of
execution, execution or otherwise) with respect to itself or its property, such
Grantor hereby irrevocably waives such immunity in respect of its Obligations
under this Agreement, any other Loan Document and any Hedge Agreement to which
it is or is to be a party.
-14-
(e) TO THE EXTENT PERMITTED BY LAW, EACH GRANTOR IRREVOCABLY WAIVES
ALL RIGHT TO TRIAL BY JURY IN ANY ACTION, PROCEEDING OR COUNTERCLAIM (WHETHER
BASED ON CONTRACT, TORT OR OTHERWISE) ARISING OUT OF OR RELATING TO THIS
AGREEMENT, ANY OTHER LOAN DOCUMENT OR ANY HEDGE AGREEMENT, THE TRANSACTIONS
CONTEMPLATED HEREBY OR THEREBY OR THE ACTIONS OF ANY SECURED PARTY IN THE
NEGOTIATION, ADMINISTRATION, PERFORMANCE OR ENFORCEMENT THEREOF.
IN WITNESS WHEREOF, each Grantor has caused this Agreement to be duly
executed and delivered by its officer thereunto duly authorized as of the date
first above written.
IRON AGE CORPORATION
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Title: Executive Vice President
Address: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
IRON AGE HOLDINGS CORPORATION
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Title: Vice President - Fiance
Address: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
IRON AGE INVESTMENT COMPANY
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
---------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Title: President
Address: ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
-15-
FALCON SHOE MFG. CO.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Title: Vice President
Address: ▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
-16-
Agreed and consented to as of
the date first above written:
BANQUE NATIONALE DE PARIS,
as Agent
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: AVP
-▇▇-
▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇ )
) ss.:
COUNTY OF New York )
On the 24th day of April, 1998, before me personally came ▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇▇▇ to me known, who, being by me duly sworn, did depose and say he
resides at ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and that he is the Exec.
Vice President of IRON AGE CORPORATION, the corporation described in and which
executed the above instrument; that he has been authorized to execute said
instrument on behalf of said corporation; and that he signed said instrument on
behalf of said corporation pursuant to said authority.
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------
Notary Public
[Notarial Seal]
STATE OF New York )
) ss.:
COUNTY OF New York )
On the 24th day of April, 1998, before me personally came ▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇▇▇ to me known, who, being by me duly sworn, did depose and say he
resides at ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and that he is the Vice
Pres - Finance of IRON AGE HOLDINGS CORPORATION, the corporation described in
and which executed the above instrument; that he has been authorized to execute
said instrument on behalf of said corporation; and that he signed said
instrument on behalf of said corporation pursuant to said authority.
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------
Notary Public
[Notarial Seal]
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
On the 24th day of April, 1998, before me personally came ▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇▇▇ to me known, who, being by me duly sworn, did depose and say he
resides at ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and that he is the
President of IRON AGE INVESTMENT COMPANY, the corporation described in and which
executed the above instrument; that he has been authorized to execute said
instrument on behalf of said corporation; and that he signed said instrument on
behalf of said corporation pursuant to said authority.
/s/ ▇▇▇▇ ▇▇▇▇▇▇
------------------------
Notary Public
[Notarial Seal]
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
On the 24th day of April, 1998, before me personally came ▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇▇▇ to me known, who, being by me duly sworn, did depose and say he
resides at ▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and that he is the Vice
President of FALCON SHOE MFG. CO., the corporation described in and which
executed the above instrument; that he has been authorized to execute said
instrument on behalf of said corporation; and that he signed said instrument on
behalf of said corporation pursuant to said authority.
/s/ ▇▇▇▇ ▇▇▇▇▇▇
------------------------
Notary Public
[Notarial Seal]
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
On the 24th day of April, 1998, before me personally came ▇▇▇▇ ▇.
▇▇▇▇▇▇ to me known, who, being by me duly sworn, did depose and say he resides
at ▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and that he is the Assistant Vice
President of BANQUE NATIONALE DE PARIS, the banking corporation described in and
which executed the above instrument; that he has been authorized to execute said
instrument on behalf of said corporation; and that he signed said instrument on
behalf of said corporation pursuant to said authority.
/s/ ▇▇▇▇ ▇▇▇▇▇▇
------------------------
Notary Public
[Notarial Seal]
SCHEDULE I
to
Intellectual Property Security Agreement
Patents and Patent Applications
-------------------------------
I. Iron Age Corporation
A. U.S. Patent
Title ▇▇▇. No. Issue Date
----- -------- ----------
Outsole for a Shoe D302,765 8/15/89
II. Iron Age Holdings Corporation
None.
III. Iron Age Investment Company
None.
IV. Falcon Shoe Mfg. Co.
A. U.S. Patent Application
Title Ser. No. File Date
----- -------- ---------
Methods and Apparatuses for 08/543,002 10/13/95
Insulating an Article of
Footwear Having a Protective
Toe Cap
SCHEDULE II
to
Intellectual Property Security Agreement
Trademark Registrations and Applications
----------------------------------------
I. Iron Age Corporation
A. U.S. Trademark Registrations
▇▇▇▇ Reg. No. Reg. Date
---- -------- ---------
IRON AGE MAXIMUM 1,671,179 1/7/92
and Design
IRON AGE 1,677,695 3/3/92
SPORTWORK II
GRABBER 928,349 2/1/71
FREEDOM TOE 1,276,282 5/1/84
BF and Design 1,077,024 11/8/77
METAPRO 949,859 1/2/73
SAF-GARD 1,082,707 1/17/88
IRON AGE and Design 1,212,263 10/12/82
IRON AGE 634,888 9/25/56
MIGHTY TOUGH 1,919,851 9/19/95
MIGHTY TOUGH 1,919,852 9/19/95
and Design
IRON AGE PLUS 2,112,932 11/11/97
ROUGH CREEK 2,082,503 7/22/97
OIL RESISTANT GUARANTEED 780,371 11/17/64
SHU-LIFE SOLE
▇▇▇▇▇ ATVS BUILT TO 1,919,898 9/19/95
GO ANYWHERE (Stylized)
▇▇▇▇▇ ATVS BUILT TO 1,967,884 4/16/96
GO ANYWHERE
▇▇▇▇▇ ATVS U.S.A. 1,901,251 6/20/95
2000 SERIES (Stylized)
▇▇▇▇▇ ATVS U.S.A. 1,905,063 7/11/95
2000 SERIES
ATVS BY ▇▇▇▇▇ 1,477,784 2/23/88
TUF-SHOT 1,344,676 6/25/85
TWO-SHOT 1,201,228 7/13/82
▇▇▇▇▇ MASTERCRAFT 1,133,194 4/15/80
CUSHIONED COMFORT and Design
▇▇▇▇▇ SHOES 785,262 2/16/65
▇▇▇▇▇ FREE-WAY 671,243 12/16/58
CUSHIONED SHOES and Design
B. U.S. Service ▇▇▇▇ Registrations
▇▇▇▇ Reg. No. Reg. Date
---- -------- ---------
IRON AGE 1,966,512 4/9/96
IRON AGE PLUS 2,120,443 12/9/97
C. U.S. Trademark Applications
▇▇▇▇ Ser. No. File Date
---- -------- ---------
RUFFHIDES 74/491,094 2/15/94
SLIP KNOTS 75/443,441 2/24/98
SPORTWORK 75/319,368 7/3/97
ARMOR 75X-TRA LITE 75/342,582 8/18/97
SAFE-GARD 75/357,666 9/16/97
HIGH-WIDE PROFILE II 75/418,663 1/9/98
THE SOLES OF WORKING AMERICA 75/462,254 4/6/98
THE SOLE OF WORKING AMERICA (to be filed)
▇▇▇▇▇ (to be filed)
D. Foreign Trademark Registrations
▇▇▇▇ Country Reg. No. Reg. Date
---- ------- -------- ---------
IRON AGE Benelux 488,506 12/7/90
IRON AGE Canada 223,537 10/7/77
IRON AGE Germany 1,022,860 11/27/80
IRON AGE Denmark 2318-1981 9/4/81
IRON AGE France 1,621,306 11/27/80
IRON AGE United Kingdom 1,144,205 11/19/80
IRON AGE Mexico 419,038 3/8/92
IRON AGE Norway 110,047 12/3/81
IRON AGE Taiwan 434,908 3/16/89
IRON AGE China 642,723 5/21/93
IRON AGE Sweden 176,255 4/16/81
IRON AGE Hong Kong 04875 12/30/93
IRON AGE United Kingdom 1,512,133 9/9/92
IRON AGE Japan ▇▇▇▇▇▇▇ 8/8/97
IRON AGE Korea 386476 12/15/97
E. Foreign Service ▇▇▇▇ Registrations
▇▇▇▇ Country Reg. No. Reg. Date
---- ------- -------- ---------
IRON AGE Korea 41362 2/19/98
F. Foreign Trademark Applications
▇▇▇▇ Country Ser. No. File Date
---- ------- -------- ---------
SPORTWORK Mexico 318,773 1/7/98
ARMOR 75X-TRA Canada 322,891 1/20/98
LITE & Design
▇▇▇▇▇ Canada 865,487 12/31/97
SPORTWORK Canada 865,488 12/31/97
SPORTWORK II Canada 865,489 12/31/97
& Design
IRON AGE Philippines 102856 9/20/95
SAFE-GARD Canada 869,158 2/11/98
SAFE-GARD Mexico 325,962 3/16/98
G. Foreign Service ▇▇▇▇ Applications
▇▇▇▇ Country Ser. No. File Date
---- ------- -------- ---------
IRON AGE Philippines 102857 9/20/95
II. Iron Age Holdings Corporation
None.
III. Iron Age Investment Company
A. U.S. Registrations
▇▇▇▇ Reg. No. Reg. Date
---- -------- ---------
None.
B. U.S. Applications
▇▇▇▇ Ser. No. File Date
---- -------- ---------
None.
C. Foreign Service ▇▇▇▇ Registration
▇▇▇▇ Country Reg. No. Reg. Date
---- ------- ---------- ---------
IRON AGE Mexico 509,304 10/31/95
IRON AGE Canada TMA473,865 3/26/97
D. Foreign Service ▇▇▇▇ Application
▇▇▇▇ Country Ser. No. File Date
---- ------- -------- ---------
None.
IV. Falcon Shoe Manufacturing Co.
A. U.S. Trademark Registrations
▇▇▇▇ Reg. No. Reg. Date
---- --------- ---------
CHIEF QUODDY'S 656,488 12/31/57
MAINE MADE and Design
▇▇▇▇▇▇ 895,088 7/21/70
▇▇▇▇▇▇ TYROLEANS 740,975 11/20/62
▇▇▇▇▇▇ WAFFLE- 973,456 11/20/73
STOMPERS
GREAT FOOTWEAR FOR 1,119,327 5/29/79
THE GREAT OUTDOORS
RUGGARDS (Stylized) 419,794 3/5/46
THE WAY OF NATURE......... 1,110,565 1/2/79
THRU THE HANDS OF MAN
TRU-TRAK 1,437,386 4/21/87
TRUKKERS 993,107 9/10/74
▇▇▇▇▇▇ DOUBLE 1,855,821 9/27/94
COVERAGE TOES and Design
DURAFLEX 843,731 2/6/68
WIDE TRAK 2,030,521 1/14/97
ARMOR-TECH 2,051,944 4/15/97
B. U.S. Trademark Application
▇▇▇▇ Ser. No. File Date
---- -------- ---------
None.
C. State Registration
▇▇▇▇ State Reg. No. Reg. Date
---- ----- -------- ---------
▇▇▇▇▇▇ Vermont 4,553 3/29/73
D. Foreign Registrations
▇▇▇▇ Country Reg. No. Reg. Date
---- ------- -------- ---------
▇▇▇▇▇▇ Austria 142,074 5/21/92
▇▇▇▇▇▇ Canada 225,957 2/10/78
TYROLEANS
DUNHAM'S Italy 259,229 12/29/92
DUNHAM'S Japan 1,620,432 9/29/83
DUNHAM'S Switzerland 383,406 7/19/91
▇▇▇▇▇▇ Germany 2,027,548 1/5/93
▇▇▇▇▇▇ Spain 1/683/507 4/3/95
▇▇▇▇▇▇ Canada 460,625 8/2/96
DUNHAM'S France 1,613,236 9/3/90
DUNHAM'S Switzerland 383,406 ▇/▇▇/▇▇
▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ 815,685 6/6/81
MOCCASINS &
Design
E. Foreign Applications
▇▇▇▇ Country Ser. No. File Date
---- ------- -------- ---------
ARMOR-TECH Canada 801,437 1/10/96
SCHEDULE III
to
Intellectual Property Security Agreement
Copyright Registrations and Applications
----------------------------------------
I. Iron Age Corporation
None.
II. Iron Age Holdings Corporation
None.
III. Iron Age Investment Company
None.
IV. Falcon Shoe Mfg. Co.
None.
SCHEDULE IV
to
Intellectual Property Security Agreement
Licenses
--------
I. Iron Age Corporation
A. Trademark License Agreement, dated August 15, 1994, between ▇.▇. ▇▇▇▇
& Associates, Inc. and Iron Age Corporation
II. Iron Age Holdings Corporation
None.
III. Iron Age Investment Company
A. Service ▇▇▇▇ License Agreement, dated January 29, 1995, between Iron
Age Investment Company and Iron Age Canada Ltd.
B. Service ▇▇▇▇ License Agreement, dated January 29, 1995, between Iron
Age Investment Company and Iron Age de Mexico de C.V.
C. Services Agreement, dated January 29, 1995, between Iron Age
Investment Company and Iron Age Corporation
IV. Falcon Shoe Mfg. Co.
A. Trademark License Agreement, dated July 25, 1994, between ▇.▇. ▇▇▇▇ &
Associates, Inc. and Falcon Shoe Mfg. Co.
B. Manufacturing Certification Agreement, dated July 25, 1994, between
▇.▇. ▇▇▇▇ & Associates, Inc. and Falcon Shoe Mfg. Co.
SCHEDULE V
to
Intellectual Property Security Agreement
Third Party Claims/Pending Litigation/Unauthorized Uses
-------------------------------------------------------
None.
EXHIBIT A
to
Intellectual Property Security Agreement
____________, 19___
Banque Nationale de Paris,
as Agent
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: Structured Finance Group
Intellectual Property Security Agreement
dated April 24, 1998
between Iron Age Corporation
and Banque Nationale de Paris, as Agent
---------------------------------------
Ladies and Gentlemen:
Reference is made to the above-captioned Intellectual Property
Security Agreement (as amended, supplemented or otherwise modified, the
"Intellectual Property Security Agreement"). Unless otherwise defined herein,
-----------------------------------------
terms defined in the Intellectual Property Agreement are used herein as therein
defined.
The undersigned affirms that it has received ____________ in
consideration for the execution and delivery of this Intellectual Property
Security Agreement Supplement.
The undersigned hereby agrees, as of the date first above written, to
become a Grantor under the Intellectual Property Security Agreement as if it
were an original party thereto and agrees that each reference in the
Intellectual Property Security Agreement to a "Grantor" shall also mean and be a
reference to the undersigned.
The undersigned hereby assigns and pledges to the Agent for its
benefit, the benefit of the Issuing Bank and the ratable benefit of the Lenders
and hereby grants to the Agent for its benefit, the benefit of the Issuing Bank
and the ratable benefit of the Lenders as collateral for the Secured Obligations
a pledge and assignment of, and a security interest in, all of the right, title
and interest of the undersigned in and to its Intellectual Property Collateral,
whether now owned or hereafter acquired.
The undersigned has attached hereto supplements to Schedules I through
V to the Intellectual Property Security Agreement, and the undersigned hereby
certifies that such supplements have been prepared by the undersigned in
substantially the form of the Schedules to the Intellectual Property Security
Agreement and are accurate and complete as of the date first above written.
The undersigned hereby makes each representation and warranty set
forth in Section 4 of the Intellectual Property Security Agreement as to itself
and as to its Intellectual Property Collateral to the same extent as each other
Grantor and hereby agrees to be bound as a Grantor by all of the terms and
provisions of the Intellectual Property Security Agreement to the same extent as
all other Grantors.
This letter shall be governed by and construed in accordance with the
laws of the State of New York.
Very truly yours,
[NAME OF ADDITIONAL GRANTOR]
By_________________________________
Name:
Title:
Address: