Exhibit 10.46
Security Agreement
($4,500,000 Principal Amount of
Secured Convertible Promissory Notes)
This Security Agreement (the "Security Agreement") is made as of
September 1, 2002, by and between SCHIMATIC Cash Transactions ▇▇▇▇▇▇▇.▇▇▇, Inc.,
a Florida corporation, IC One, Inc., a Delaware corporation, Smart Chip
Technologies, L.L.C., a Utah limited liability company (collectively,
"Grantor"), and the several Secured Parties identified on the counterpart
signature pages hereto, as summarized thereon (each a "Secured Party" and
together, "Secured Parties").
THE PARTIES HERETO AGREE AS FOLLOWS:
For and in consideration of the mutual premises and covenants set forth
herein, the receipt and adequacy of which are hereby acknowledged, it is hereby
agreed as follows.
1. Grant of Security Interest. As collateral security for the prompt
and complete payment and performance of the outstanding principal balance and
all accrued and unpaid interest on those certain Secured Convertible Promissory
Notes (the "Notes") in the aggregate principal balance of not to exceed
$4,500,000 issued in a series ("Series") to Secured Parties, including any
extensions, modification, or renewals thereof, Grantor hereby grants a security
interest and mortgage to Secured Parties, as security, in and to Grantor's
entire right, title and interest in, to and under the following (all of which
shall collectively be called the "Collateral"):
(a) any and all copyright rights, copyright applications,
copyright registrations and like protections in each work or authorship
and derivative work thereof, whether published or unpublished and
whether or not the same also constitutes a trade secret, now or
hereafter existing, created, acquired or held, including without
limitation those set forth on Exhibit A attached hereto (collectively,
the "Copyrights");
(b) any and all trade secrets and any and all intellectual
property rights in computer software and computer software products now
or hereafter existing, created, acquired or held;
(c) any and all design rights that may be available to Grantor
now or hereafter existing, created, acquired or held;
(d) all patents, patent applications and like protections
including without limitation improvements, divisions, continuations,
renewals, reissues, extensions and continuations-in-part of the same,
including without limitation the patents and patent applications set
forth on Exhibit B attached hereto (collectively, the "Patents");
(e) any trademark and servicemark rights, whether registered
or not, applications to register and registrations of the same and like
protections, and the entire goodwill of the business of Grantor
connected with and symbolized by such trademarks, including without
limitation those set forth on Exhibit C attached hereto (collectively,
the "Trademarks");
(f) any and all internet domain names owned or reserved by the
Company or its affiliates;
(g) any and all claims for damages by way of past, present and
future infringement of any of the rights included above, with the
right, but not the obligation, to ▇▇▇ for and collect such damages for
said use or infringement of the intellectual property rights identified
above;
(h) all licenses or other rights to use any of the Copyrights,
Patents or Trademarks and all license fees and royalties arising from
such use to the extent permitted by such license or rights;
(i) all amendments, renewals and extensions of any of the
Copyrights, Trademarks or Patents; and
(j) all proceeds and products of the foregoing, including
without limitation all payments under insurance or any indemnity or
warranty payable in respect of any of the foregoing.
2. Authorization and Request. Grantor authorizes and requests that the
Register of Copyrights and the Commissioner of Patents and Trademarks record
this Security Agreement.
3. Covenants and Warranties. Grantor represents, warrants, covenants
and agrees as follows:
(a) Grantor is now the sole owner of the Collateral, except
for licenses granted by Grantor to its customers in the ordinary course
of business.
(b) Performance of this Security Agreement does not conflict
with or result in a breach of any agreement to which Grantor is a party
or by which Grantor is bound, except to the extent that certain
intellectual property agreements prohibit the assignment of the rights
thereunder to a third party without the licenser's or other party's
consent and this Security Agreement constitutes an assignment.
(c) During the term of this Security Agreement, Grantor will
not transfer or otherwise encumber any interest in the Collateral,
except for nonexclusive licenses granted by Grantor in the ordinary
course of business or as set forth in this Security Agreement.
(d) To its knowledge, each of the Patents is valid and
enforceable, and no part of the Collateral has been judged invalid or
unenforceable, in whole or in part, and no claim has been made that any
part of the Collateral violates the rights of any third party.
(e) Grantor shall promptly advise Secured Parties of any
material change in the composition of the Collateral, including but not
limited to any subsequent ownership right of the Grantor in or to any
Copyright, Trademark, or Patent not specified in this Security
Agreement.
(f) Grantor shall (i) protect, defend and maintain the
validity and enforceability of the Copyrights, Trademarks and Patents;
(ii) use its best efforts to detect infringements of the Copyrights,
Trademarks, and Patents and promptly advise Secured Parties in writing
to material infringements detected; and (iii) not allow any Copyrights,
Trademarks, or Patents to be abandoned, forfeited or dedicated to the
public without the written consent of Secured Parties, which shall not
be unreasonably withheld, unless Grantor determines that reasonable
business practices suggest that abandonment is appropriate.
(g) Grantor shall register or cause to be registered (to the
extent not already registered) with the United States Patent and
Trademark Office or the United States Copyright Office, as applicable,
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those intellectual property rights listed on Exhibits A, B and C hereto
within 30 days of the date of this Security Agreement. Grantor shall
register or cause to be registered with the United States Patent and
Trademark Office or the United States Copyright Office, as applicable,
those additional intellectual property rights developed or acquired by
Grantor from time to time in connection with any product prior to the
sale or licensing of such product to any third party (including without
limitation revisions or additions to the intellectual property rights
listed on such Exhibits A, B and C). Grantor shall, from time to time,
execute and file such other instruments and take such further actions
as Secured Parties may reasonably request from time to time to perfect
or continue the perfection of Secured Parties interest in the
Collateral.
(h) This Security Agreement creates, and in the case of after
acquired Collateral, this Security Agreement will create at the time
Grantor first has rights in such after acquired Collateral, in favor of
Secured Parties, a valid and perfected first priority security interest
in the Collateral in the United States securing the payment and
performance of the obligations evidenced by the Note upon making the
filings referred to in clause (i) below.
(i) To its knowledge, except for and upon the filing with the
United States Patent and Trademark office with respect to the Patents
and Trademarks and the Register of Copyrights with respect to the
Copyrights necessary to perfect the security interests created
hereunder, and except as has been already made or obtained, no
authorization, approval or other action by, and no notice to or filing
with, any U.S. governmental authority or U.S. regulatory body is
required either (i) for the grant by Grantor of the security interest
granted hereby or for the execution, delivery or performance of this
Security Agreement by Grantor in the United States; or (ii) for the
perfection in the United States or the exercise by Secured Parties of
its rights and remedies hereunder.
(j) All information heretofore, herein or hereafter supplied
to Secured Parties by or on behalf of Grantor with respect to the
Collateral is accurate and complete in all material respects.
(k) Grantor shall not enter into any agreement that would
materially impair or conflict with Grantor's obligations hereunder
without Secured Parties prior written consent, which consent shall not
be unreasonably withheld. Grantor shall not permit the inclusion in any
material contract to which it becomes a party of any provisions that
could or might in any way prevent the creation of a security interest
in Grantor's rights and interests in any property included within the
definition of the Collateral acquired under such contracts, except that
certain contracts may contain anti-assignment provisions that could in
effect prohibit the creation of a security interest in such contracts
if Grantor is required, in its commercially reasonable judgment, to
accept such provisions.
(l) Upon any executive officer of Grantor obtaining actual
knowledge thereof, Grantor will promptly notify Secured Parties in
writing of any event that materially adversely affects the value of any
Collateral, the ability of Grantor to dispose of any Collateral, or the
rights and remedies of Secured Parties in relation thereto, including
the levy of any legal process against any of the Collateral.
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4. Secured Parties Rights. Secured Parties shall have the right, but
not the obligation, to take, at Grantor's sole expense, any actions that Grantor
is required under this Security Agreement to take, but which Grantor fails to
take, after 15 days' notice to Grantor. Grantor shall reimburse and indemnify
Secured Parties for all reasonable costs and reasonable expenses incurred in the
reasonable exercise of its rights under this section 4.
5. Inspection Rights. Grantor hereby grants to Secured Parties and its
employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable written notice to Grantor, any of Grantor's plants
and facilities that manufacture, install or store products (or that have done so
during the prior six-month period) that are sold utilizing any of the
Collateral, and to inspect the products and quality control records relating
thereto.
6. Further Assurances; Attorney-in-Fact.
(a) On a continuing basis, Grantor will make, execute,
acknowledge, deliver, file and record, in the proper filing and
recording places in the United States, all such instruments, including
appropriate financing and continuation statements and collateral
agreements and filings with the United States Patent and Trademark
Office and the Register of Copyrights, and take all such action as may
reasonably be deemed necessary or advisable, or as requested by Secured
Parties, to perfect Secured Parties security interest in all
Copyrights, Patents and Trademarks and otherwise to carry out the
intent and purposes of this Security Agreement, or for assuring and
confirming to Secured Parties the grant or perfection of a security
interest in all Collateral.
(b) Grantor hereby irrevocably appoints Secured Parties as
Grantor's attorney-in-fact, with full authority in the place and stead
of Grantor and in the name of Grantor, from time to time in Secured
Parties discretion, to take any action and to execute any instrument
that Secured Parties may deem necessary or advisable to accomplish the
purposes of this Security Agreement, including (i) to modify, in its
sole discretion, this Security Agreement without first obtaining
Grantor's approval of or signature to such modification by amending
Exhibit A, Exhibit B and Exhibit C thereof, as appropriate, to include
reference to any right, title or interest in any Copyrights, Patents or
Trademarks acquired by Grantor after the execution hereof or to delete
any reference to any right, title or interest in any Copyrights,
Patents or Trademarks in which Grantor no longer has or claims any
right, title or interest, (ii) to file, in its sole discretion, one or
more financing or continuation statements and amendments thereto,
relative to any of the Collateral without the signature of Grantor
where permitted by law, and (iii) after the occurrence of an Event of
Default, to transfer the Collateral into the name of Secured Parties or
a third party to the extent permitted under the California Uniform
Commercial Code.
7. Events of Default. The occurrence of any of the following shall
constitute an Event of Default under the Security Agreement.
(a) an Event of Default occurs under the Investment Documents;
or
(b) Grantor breaches any warranty or agreement made by Grantor
in this Security Agreement and, as to any breach that is capable of
cure, Grantor fails to cure such breach within 10 days of the
occurrence of such breach.
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8. Remedies. Upon the occurrence and continuance of an Event of
Default, Secured Parties shall have the right to exercise all the remedies of a
secured party under the Utah Uniform Commercial Code, including without
limitation the right to require Grantor to assemble the Collateral and any
tangible property in which Secured Parties have a security interest and to make
it available to Secured Parties at a place designated by Secured Parties.
Secured Parties shall have nonexclusive, royalty free license to use the
Copyrights, Patents and Trademarks to the extent reasonably necessary to permit
Secured Parties to exercise its rights and remedies upon the occurrence of an
Event of Default. Grantor will pay any expenses (including reasonable attorneys'
fees) incurred by Secured Parties in connection with the exercise of any of
Secured Parties rights hereunder, including without limitation any expense
incurred in disposing of the Collateral. All of Secured Parties rights and
remedies with respect to the Collateral shall be cumulative.
9. Limitation on Suits. No individual Secured Party shall have any
right to institute any proceedings, judicial or otherwise, with respect to this
Security Agreement, or for the appointment of a receiver or trustee, or for any
remedy hereunder, unless such holder has previously given written notice to the
Company of a continuing event of default as provided above; it being understood
and intended that no one or more Secured Parties shall have any right in any
manner whatever by virtue of or by availing of any provisions of this Security
Agreement to effect, disturb or prejudice the right of any other Secured
Parties, or to obtain or to seek to obtain priority or preference over any other
Secured Parties, or to enforce any right under this Security Agreement, except
in the manner herein provided and for the equal and ratable benefit of all
Secured Parties.
10. Acts of Secured Parties. Any request, demand, authorization,
direction, notice, consent, waiver or other action provided by this Security
Agreement to be given or taken by the Secured Parties may be embodied in and
evidenced by one or more instruments of substantially similar tenor signed by
such Secured Parties in person, or by their agent or attorney-in-fact duly
appointed in writing; and, except as otherwise expressly provided herein, such
action shall become effective when such instrument or instruments are delivered
to the Company in the manner provided for giving notices herein. Such instrument
or instruments, and the action embodied therein or evidenced thereby, are herein
sometimes referred to as the "act" of the Secured Parties signing such
instrument or instruments. Proof of execution of any such instrument or of a
writing appointing any such agent shall be sufficient for any purpose of this
Security Agreement if the fact and date of execution by any person of any such
instrument or writing are verified by the affidavit of a witness of such
execution. The request, demand, authorization, direction, notice, consent,
waiver or other action by a Secured Party shall bind such Secured Party's
successors and assigns.
11. Notices to Secured Parties; Waiver. Where this Security Agreement
provides for notice to Secured Parties of any event, such notice shall be
sufficiently given if in writing and mailed, registered, postage prepaid, to
each Secured Parties affected by such event, at his or her address as it appears
in the records Note register maintained by the Company, not later than the
latest date and not earlier than the earliest date, prescribed for the giving of
such notice. The Company shall provide a copy of the Note register upon the
written request of any holder of Notes in this Series. In any case, where notice
to holders is given by mail, neither the failure to mail such notice nor any
defect in any notice so mailed to any particular holder shall affect the
sufficiency of such notice with respect to holders of other Notes issued in this
Series. Where the Security Agreement provides for notice to the Company, such
notice shall be sufficiently given if in writing and mailed, registered and
postage prepaid, to the Company at its address set forth above (or at such other
address as shall be provided to the Secured Parties in the manner for giving
notices set forth herein), not later than the latest date and not earlier than
the earliest date, prescribed for the giving of such notice. Where this Security
Agreement provides for notice in any manner, such notice may be waived in
writing by the person entitled to receive such notice, whether before or after
the event, any such waiver shall be equivalent of such notice.
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12. Indemnity. Grantor agrees to defend, indemnify and hold harmless
Secured Parties and its officers, employees and agent against:
(a) all obligations, demands, claims and liabilities claimed
or asserted by any other party in connection with the transactions
contemplated by this Security Agreement, and
(b) all losses or expenses in any way suffered, incurred or
paid by Secured Parties as a result of or in any way arising out of,
following or consequential to transactions between Secured Parties and
Grantor, whether under this Security Agreement or otherwise (including
without limitation reasonable attorneys' fees and reasonable expenses),
except for losses arising from or out of Secured Parties gross
negligence or willful misconduct.
13. Course of Dealing. No course of dealing, failure to exercise, or
delay in exercising any right, power or privilege hereunder shall operate as a
waiver thereof.
14. Attorneys' Fees. If any action relating to this Security Agreement
is brought by either party hereto against the other party, the prevailing party
shall be entitled to recover reasonable attorneys' fees, costs and
disbursements.
15. Amendments. This Security Agreement may be amended only by a
written instrument signed by both parties hereto.
16. Counterparts. This Security Agreement may be executed in two or
more counterparts, each of which shall be deemed an original, but all of which
together shall constitute the same instrument.
17. Utah Law and Jurisdiction. This Security Agreement shall be
governed by the laws of the state of Utah, without regard for choice of law
provisions. Grantor and Secured Parties consent to the exclusive jurisdiction of
any state or federal court located in Salt Lake County, Utah.
IN WITNESS WHEREOF, this Security Agreement has been duly executed as
of the date first above written.
GRANTOR:
SCHIMATIC Cash Transactions ▇▇▇▇▇▇▇.▇▇▇, INC.
By _________________________________________
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, C.E.O. and Treasurer
SMART CHIP TECHNOLOGIES, LLC
By _________________________________________
_________________________________, Manager
IC ONE, INC.
By __________________________________________
_______________________________, President
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Security Agreement
Counterpart Signature Page
The undersigned Secured Party hereby executes this counterpart
signature page and joins in that certain SECURITY AGREEMENT entered into and
effective as of the 1 day of September, 2002, between and among SCHIMATIC Cash
Transactions ▇▇▇▇▇▇▇.▇▇▇, Inc., a Florida corporation, IC One, Inc., a Delaware
corporation, Smart Chip Technologies, L.L.C., a Utah limited liability company,
and the several Secured Parties as identified on the counterpart signature page
thereto, and acknowledge that this counterpart signature page may be affixed
with other counterpart signature pages of substantially like tenor executed by
the other Secured Parties, parties to such Security Agreement, to constitute an
original and which taken together shall be but a single instrument.
_______________________
(Signature)
▇▇▇▇▇ ▇. ▇▇▇▇▇
(Printed name)
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EXHIBIT A
Copyrights
All Corporate, Technical, and Marketing Documents in MS Word, WordPerfect, MS
PowerPoint, MS Excel, Adobe Acrobat, Visio, MicroGrafix and HTML related to any
Software or business practices including but not limited to:
1. All front-end, back-end, and supporting software related to the Kids
Card program for cardholder loyalty and charity.
2. All e-llegiance software designed for smart chips or other portable
devices and associated card acceptance devices
3. All LoyaltyCentral software for loyalty transaction processing
4. All ▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇ portal software for program managers,
cardholders and other entities to manage loyalty programs.
5. All business practices, history, or future projections of SCTN or any
affiliated organizations.
EXHIBIT B
Patents
The Patents shall include all of Grantor's right, title and interest in and to
the intellectual property, proprietary information, data, processes, inventions,
trade secrets, know-how, formulas, designs, drawings, software, information,
performance data, algorithms, models and system architectures used or useful in
or related to a method and system for allocating and redeeming incentive credits
between a portable device and a base device, including any of the foregoing as
is or has been embodied in, or is or has been used or is useable in connection
with, the development, acquisition, planning, design, manufacture, delivery or
operation of any system, program or method for the systematic processing of
loyalty or that has been embodied in, or is or has been used or is useable in
connection with, the performance of any contract or agreement relating thereto,
including any and all physical, electronic or other embodiments thereof,
specifically excluding and subject to rights to any subject matter claimed in or
covered by United States Patent No. 5,806,045, dated September 8, 1998, and
entitled "Method and System for Allocating and Redeeming Incentive Credits
between a Portable Device and a Base Device," including all continuation and
divisional applications having claims connected thereto, including all patents
issuing therefrom in the United States and in other countries, including all
reissues and reexaminations thereof, which patents and applications therefore
have not lapsed or become abandoned or have not been held invalid by court or
tribunal with no further right of appeal available or taken, and all future
enhancements, research, modifications and developments that find a basis in or
connected with any of the foregoing.
US Patent No. 5,806,045 issued in September 1998
Australian Patent No. 703349 issued in October 1999
Mexican Patent No. 96/03161 issued in November 2000
Patent Pending in Canada - Application Number 2182596
Patent Pending in Japan - Application Number 7-520773
On-Card Database file structure patent pending in US - Application Number
60/302,792
EXHIBIT C
Trademarks and Service Marks
E-LLEGIANCETM
LOYALTYCENTRALTM
LOYALTYCENTRAL.COMTM
SMARTBANKTM
SMART BANKTM
SMART BUCKSTM
IC KIDS CARDTM
IC ONETM
IC ONE TRAVELTM
EDUCENTSTM
CARDONETM
IC BUCKSTM
IC SMARTTM
IC SMART BANKTM
IC SMART MALLTM
IC SMARTCOMMTM
IGWTTM