Exhibit 10.6
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (the
"Agreement") is made as of July 8, 1998, by and between RADIO UNICA CORP., a
Delaware corporation (the "Grantor" or the "Borrower") and CANADIAN IMPERIAL
BANK OF COMMERCE, as agent for the Lenders (in such capacity, the "Agent") under
the Credit Agreement dated as of July 8, 1998 (as further amended, restated,
supplemented or otherwise modified from time to time, the "Credit Agreement")
among RADIO UNICA HOLDINGS CORP., a Delaware corporation (the "Parent"), the
Borrower, the several banks and other financial institutions from time to time
parties thereto (the "Lenders") and the Agent.
W I T N E S S E T H:
WHEREAS, pursuant to the Credit Agreement, the Lenders have
severally agreed to make Loans to the Grantor upon the terms and subject to the
conditions set forth therein, to be evidenced by the Notes issued by the Grantor
thereunder; and
WHEREAS, it is a condition precedent to the obligation of the
Lenders to make their respective Loans to the Grantor under the Credit Agreement
that the Grantor shall have executed and delivered this Agreement to the Agent
for the ratable benefit of the Lenders;
NOW, THEREFORE, in consideration of the premises and to induce
the Agent and the Lenders to enter into the Credit Agreement and the Lenders to
make their respective Loans to the Grantor under the Credit Agreement, the
Grantor hereby agrees with the Agent, for the ratable benefit of the Lenders, as
follows:
1. Defined Terms.
(a) Unless otherwise defined herein, each capitalized term
used herein that is defined in the Credit Agreement shall have the meaning
specified for such term in the Credit Agreement. Unless otherwise defined herein
or in the Credit Agreement, all terms defined in Article 9 of the Uniform
Commercial Code in effect as of the date hereof in the State of New York are
used herein as defined therein as of the date hereof.
(b) The words "hereof", "herein" and "hereunder" and words of
like import when used in this Agreement shall refer to this Agreement as a whole
and not to any particular provision of this Agreement, and section references
are to this Agreement unless otherwise specified.
(c) All terms defined in this Agreement in the singular shall
have comparable meanings when used in the plural, and vice versa, unless
otherwise specified.
2. Security Interest in Trademarks. To secure the complete and
timely payment, performance and satisfaction of all the Obligations, the Grantor
hereby grants to the Agent, for the benefit of the Agent and the Lenders, a
security interest in, as and by way of a first mortgage and security interest
having priority over all other security interests, with power of sale to the
extent permitted by applicable law, all the Grantor's now owned or existing and
hereafter acquired or arising:
(i) trademarks, registered trademarks, trademark applications,
service marks, registered service marks and service ▇▇▇▇ applications,
including, without limitation, the trademarks, registered trademarks,
trademark applications, service marks, registered service marks and
service ▇▇▇▇ applications (in each case, if any) listed on Schedule A
attached hereto and made a part hereof, and (a) all renewals thereof,
(b) all income, royalties, damages and payments now and hereafter due
and/or payable under and with respect thereto, including, without
limitation, payments under all licenses entered into in connection
therewith and damages and payments for past or future infringements or
dilutions thereof, (c) the right to ▇▇▇ for past, present and future
infringements and dilutions thereof, (d) the goodwill of the Grantor's
business symbolized by the foregoing and connected therewith, and (e)
all the Grantor's rights corresponding thereto throughout the world
(all the foregoing trademarks, registered trademarks and trademark
applications, and service marks, registered service marks and service
▇▇▇▇ applications, together with the items described in clauses (a)-(e)
in this paragraph 2(i), are sometimes hereinafter individually and/or
collectively referred to as the "Trademarks"); and
(ii) rights under or interest in any trademark license
agreements or service ▇▇▇▇ license agreements with any other party,
whether the Grantor is a licensee or licensor under any such license
agreement, including, without limitation, those trademark license
agreements and service ▇▇▇▇ license agreements listed on Schedule B
attached hereto and made a part hereof, in each case to the extent
assignable without violation thereof, together with any goodwill
connected with and symbolized by any such trademark license agreements
or service ▇▇▇▇ license agreements, and the right (if and to the extent
the Grantor has such right) to prepare for sale and sell any and all
Inventory now or hereafter owned by the Grantor and now or hereafter
covered by such licenses (all the foregoing are hereinafter referred to
collectively as the "Licenses").
3. Restrictions on Future Agreements. The Grantor will not,
without the Agent's prior written consent, enter into any agreement, including,
without limitation, any license agreement, which is inconsistent with this
Agreement, and the Grantor further agrees that, without the Agent's prior
written consent which will not be unreasonably withheld, it will not take any
action, and will use its best efforts not to permit any action to be taken by
others, including, without limitation, licensees, or fail to take any action,
which would in any respect adversely affect the validity or enforcement of the
rights transferred to the Agent under this Agreement or the rights associated
with any material Trademarks or Licenses, and in particular, the Grantor will
not permit to lapse or become abandoned any Trademark or License, except in
-2-
the event such License terminates by its terms or is not, consistent with
ordinary business practices, renewed by Grantor.
4. New Trademarks and Licenses. The Grantor represents and
warrants that (a) the Trademarks listed on Schedule A include all the registered
trademarks, common law trademarks, trademark applications, registered service
marks and service ▇▇▇▇ applications now owned or held by the Grantor, (b) the
Licenses listed on Schedule B include all the trademark license agreements and
service ▇▇▇▇ license agreements under which the Grantor is the licensee or
licensor and which are material individually or in the aggregate to the
operation of the business of the Grantor and (c) other than the rights of any
party to the Licenses with respect to the Trademarks, no Liens in such
Trademarks and Licenses have been granted by the Grantor to any Person other
than the Agent. If, prior to the termination of this Agreement, the Grantor
shall (i) obtain rights to any new trademarks, registered trademarks, trademark
applications, service marks, registered service marks or service ▇▇▇▇
applications, (ii) become entitled to the benefit of any trademarks, registered
trademarks, trademark applications, trademark licenses, trademark license
renewals, service marks, registered service marks, service ▇▇▇▇ applications,
service ▇▇▇▇ licenses or service ▇▇▇▇ license renewals whether as licensee or
licensor, or (iii) enter into any new trademark license agreement or service
▇▇▇▇ license agreement, the provisions of paragraph 3 above shall automatically
apply thereto. The Grantor shall give to the Agent written notice of events
described in clauses (i), (ii) and (iii) of the preceding sentence within 30
days of the occurrence of any such event. The Grantor hereby authorizes the
Agent to modify this Agreement unilaterally (i) by amending Schedule A to
include any future trademarks, registered trademarks, trademark applications,
service marks, registered service marks and service ▇▇▇▇ applications owned or
held by Grantor or to prepare this Agreement for filing with the Patent and
Trademark Office and by amending Schedule B to include any trademark license
agreements and service ▇▇▇▇ license agreements to which Grantor becomes a party,
which are Trademarks or Licenses under paragraph 2 above or are described in
this paragraph 4, and (ii) by filing with the U.S. Patent and Trademark Office,
in addition to and not in substitution for this Agreement, a duplicate original
of this Agreement containing on Schedule A or B thereto, as the case may be,
such future trademarks, registered trademarks, trademark applications, service
marks, registered service marks and service ▇▇▇▇ applications, and trademark
license agreements and service ▇▇▇▇ license agreements.
5. Royalties. The Grantor hereby agrees that the use by the
Agent of the Trademarks and Licenses as authorized hereunder in connection with
the Agent's exercise of its rights and remedies under paragraph 13 or pursuant
to the Security Agreements shall be coextensive with the Grantor's rights
thereunder and with respect thereto and without any liability for royalties or
other related charges from the Agent and the Lenders to the Grantor.
6. Further Assignments and Security Interests. The Grantor
agrees not to sell or assign its respective interests in, or grant any license
under, the Trademarks or the Licenses without the prior and express written
consent of the Agent, except licenses granted in the ordinary course of
business.
-3-
7. Nature and Continuation of the Agent's Security Interest;
Termination of the Agent's Security Interest; Release of Collateral. This
Agreement is made for collateral security purposes only. This Agreement shall
create a continuing security interest in the Trademarks and Licenses and shall
terminate only when the Obligations have been paid in full in cash and the
Credit Agreement and the Security Agreements have been terminated. Upon such
termination and at the written request of the Grantor or its successors or
assigns, and at the cost and expense of the Grantor or its successors or
assigns, the Agent shall execute in a timely manner such instruments, documents
or agreements as are necessary or desirable to terminate the Agent's security
interest in the Trademarks and the Licenses, subject to any disposition thereof
which may have been made by the Agent pursuant to this Agreement or the Security
Agreement of even date herewith signed by the Grantor.
8. Duties of the Grantor. The Grantor shall have the duty (i)
to prosecute diligently any material trademark application or service ▇▇▇▇
application that is part of the Trademarks pending as of the date hereof or
hereafter until the termination of this Agreement and (ii) to make any
application for and diligently prosecute the registration of any trademark or
service ▇▇▇▇ that the Grantor has not obtained as of the date hereof which the
Agent, after consultation with the Grantor, reasonably determines may have
significant value and to be registrable. The Grantor further agrees (i) not to
abandon any Trademark or License without the prior written consent of the Agent
if such abandonment would have a Material Adverse Effect, and (ii) to use its
reasonable best efforts to obtain and maintain in full force and effect the
Trademarks and the Licenses that are or shall be necessary or economically
desirable in the operation of the Grantor's business. Any expenses incurred in
connection with the foregoing shall be borne by the Grantor. Neither the Agent
nor any of the Lenders shall have any duty with respect to the Trademarks and
Licenses. Without limiting the generality of the foregoing, neither the Agent
nor any of the Lenders shall be under any obligation to take any steps necessary
to preserve rights in the Trademarks or Licenses against any other parties, but
the Agent may do so at its option from and after the occurrence of an Event of
Default, and all expenses incurred in connection therewith shall be for the sole
account of the Grantor and shall be added to the Obligations secured hereby.
9. The Agent's Right to ▇▇▇. Upon the occurrence and during
the continuance of an Event of Default, the Agent shall have the right, but
shall not be obligated, to bring suit in its own name to enforce the Trademarks
and the Licenses and, if the Agent shall commence any such suit, the Grantor
shall, at the request of the Agent, do any and all lawful acts and execute any
and all proper documents required by the Agent in aid of such enforcement. The
Grantor shall, upon demand, promptly reimburse the Agent for all actual costs
and expenses incurred by the Agent in the exercise of its rights under this
paragraph 9 (including, without limitation, reasonable fees and expenses of
counsel for the Agent).
10. Waivers. The Agent's failure, at any time or times
hereafter, to require strict performance by the Grantor of any provision of this
Agreement shall not waive, affect or diminish any right of the Agent thereafter
to demand strict compliance and performance therewith nor shall any course of
dealing between the Grantor and the Agent have such effect.
-4-
No single or partial exercise of any right hereunder shall preclude any other or
further exercise thereof or the exercise of any other right. None of the
undertakings, agreements, warranties, covenants and representations of the
Grantor contained in this Agreement shall be deemed to have been suspended or
waived by the Agent unless such suspension or waiver is in writing signed by an
officer of the Agent and directed to the Grantor specifying such suspension or
waiver.
11. Severability. If any provision of this Agreement is held
to be prohibited or unenforceable in any jurisdiction the substantive laws of
which are held to be applicable hereto, such prohibition or unenforceability
shall not affect the validity or enforceability of the remaining provisions
hereof and shall not invalidate or render unenforceable such provision in any
other jurisdiction.
12. Modification. This Agreement cannot be altered, amended or
modified in any way, except as specifically provided in paragraph 4 hereof or by
a writing signed by the parties hereto.
13. Cumulative Remedies; Power of Attorney. The Grantor
agrees, upon the request of the Agent and promptly following such request, to
take any action and execute any instrument which the Agent may deem necessary or
advisable to accomplish the purposes of this Agreement. The Grantor hereby
irrevocably designates, constitutes and appoints the Agent (and all Persons
designated by the Agent in its sole and absolute discretion) as the Grantor's
true and lawful attorney-in-fact, and authorizes the Agent and any of the
Agent's designees, in the Grantor's or the Agent's name, from and after the
occurrence and during the continuance of an Event of Default, to take any action
and execute any instrument which the Agent may deem necessary or advisable to
accomplish the purposes of this Agreement, including, without limitation, (i) to
endorse the Grantor's name on all applications, documents, papers and
instruments necessary or desirable for the Agent in the use, prosecution or
protection of the Trademarks or the Licenses, (ii) to assign, pledge, convey or
otherwise transfer title in or dispose of the Trademarks or the Licenses to
anyone on commercially reasonable terms, (iii) to grant or issue any exclusive
or nonexclusive license under the Trademarks or under the Licenses, to anyone on
commercially reasonable terms, and (iv) to take any other actions with respect
to the Trademarks or, to the extent permitted, the Licenses as the Agent deems
in its own or the Lenders' best interest. The Grantor hereby ratifies all that
such attorney shall lawfully do or, to the extent permitted, cause to be done by
virtue hereof. This power of attorney is coupled with an interest and shall be
irrevocable until all the Obligations shall have been paid in full in cash and
the Credit Agreement shall have been terminated. The Grantor acknowledges and
agrees that this Agreement is not intended to limit or restrict in any way the
rights and remedies of the Agent or the other Lenders under the Agreement, but
rather is intended to facilitate the exercise of such rights and remedies.
The Agent shall have, in addition to all other rights and
remedies given it by the terms of this Agreement, all rights and remedies
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the
-5-
Trademarks or the Licenses may be located or deemed located. If an Event of
Default has occurred and is continuing and the Agent has elected to exercise any
of its remedies under Section 9-504 or Section 9-505 of the Uniform Commercial
Code with respect to the Trademarks and Licenses, the Grantor agrees to assign,
convey and otherwise transfer title in and to the Trademarks and the Licenses to
the Agent or any transferee of the Agent and to execute and deliver to the Agent
or any such transferee all such agreements, documents and instruments as may be
necessary, in the Agent's sole discretion, to effect such assignment, conveyance
and transfer. All the Agent's rights and remedies with respect to the Trademarks
and the Licenses, whether established hereby, by the Security Agreements, by any
other agreements or by law, shall be cumulative and may be exercised separately
or concurrently. Notwithstanding anything set forth herein to the contrary, it
is hereby expressly agreed that if an Event of Default has occurred and is
continuing, the Agent may exercise any of the rights and remedies provided in
this Agreement, the Security Agreements and any of the other Loan Documents. The
Grantor agrees that any notification of intended disposition of any of the
Trademarks and Licenses required by law shall be deemed reasonably and properly
given if given at least ten (10) days before such disposition; provided,
however, that the Agent may give any shorter notice that is commercially
reasonable under the circumstances.
14. Successors and Assigns. This Agreement shall be binding
upon the Grantor and its successors and assigns, and shall inure to the benefit
of each of the Lenders and its nominees, successors and assigns. The Grantor's
successors and assigns shall include, without limitation, a receiver, trustee or
debtor-in-possession of or for the Grantor; provided, however, that the Grantor
shall not voluntarily assign or transfer its rights or obligations hereunder
without the Agent's prior written consent.
15. Governing Law. This Agreement shall be governed by, and be
construed and interpreted in accordance with, the law (without regards to
conflict of law provisions (other than Section 5-1401 of the General Obligations
Law)) of the State of New York, except for perfection and enforcement of
security interests and liens in other jurisdictions to the extent the law of
another jurisdiction, is pursuant to the laws of such jurisdiction, mandatorily
applicable.
16. Notices. All notices or other communications hereunder
shall be given in the manner and to the addresses set forth in Section 10.2 of
the Credit Agreement.
17. Authority of Agent. The Grantor acknowledges that the
rights and responsibilities of the Agent under this Agreement with respect to
any action taken by the Agent or the exercise or non-exercise by the Agent of
any option, right, request, judgment or other right or remedy provided for
herein or resulting or arising out of this Agreement shall, as between the Agent
and the Lenders, be governed by the Credit Agreement and by such other
agreements with respect thereto as may exist from time to time among them, but,
as between the Agent and the Grantor, the Agent shall be conclusively presumed
to be acting as agent for the Lenders with full and valid authority so to act or
refrain from acting, and the Grantor shall not be under any obligation, or
entitlement, to make any inquiry respecting such authority.
-6-
18. Termination; Release. Upon the repayment of all the
Obligations in full and the termination of the Commitments, this Agreement shall
terminate, and the Agent, at the request and expense of the Grantor, will
promptly execute and deliver to the Grantor the proper instruments acknowledging
the termination of this Agreement, and will duly assign, transfer and deliver to
Grantor (without recourse and without any representation or warranty of any
kind) such of the Collateral as may be in the possession of the Agent and has
not theretofore been disposed of or otherwise applied or released.
19. Reinstatement. This Agreement shall continue to be
effective or be reinstated, as the case may be, if at any time any amount
received by the Lenders in respect of the Obligations is rescinded or must
otherwise be restored or returned by such Lender upon the insolvency,
bankruptcy, dissolution, liquidation or reorganization of the Grantor or upon
the appointment of any intervenor or conservator of, or trustee or similar
official for, the Grantor or any substantial part of its assets, or upon the
entry of an order by a bankruptcy court avoiding payment of such amount, or
otherwise, all as though such payments had not been made.
20. Section Titles. The section titles herein are for
convenience of reference only, and shall not affect in any way the
interpretation of any of the provisions hereof.
21. Execution in 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.
22. Submission to Jurisdiction and Service of Process. The
Grantor agrees that the terms of Section 10.12 of the Credit Agreement with
respect to submission to jurisdiction and service of process shall apply equally
to this Agreement.
23. Waiver of Bond. The Grantor waives the posting of any bond
otherwise required of the Agent in connection with any judicial process or
proceeding to realize on any of the Trademarks or Licenses or any other security
for the Obligations, to enforce any judgment or other court order entered in
favor of the Agent, or to enforce by specific performance, temporary restraining
order, or preliminary or permanent injunction, this Agreement or any other
agreement or document between the Agent and the Grantor.
24. WAIVER OF JURY TRIAL. EACH OF THE GRANTOR AND THE AGENT
WAIVES ANY RIGHT TO TRIAL BY JURY IN ANY DISPUTE, WHETHER SOUNDING IN CONTRACT,
TORT, OR OTHERWISE, BETWEEN THE AGENT AND THE GRANTOR ARISING OUT OF OR RELATED
TO THE TRANSACTIONS CONTEMPLATED BY THIS AGREEMENT OR ANY OTHER INSTRUMENT,
DOCUMENT, OR AGREEMENT EXECUTED OR DELIVERED IN CONNECTION HEREWITH. EITHER THE
GRANTOR OR THE AGENT MAY FILE AN ORIGINAL COUNTERPART OR A COPY OF THIS
AGREEMENT WITH ANY COURT AS
-7-
WRITTEN EVIDENCE OF THE CONSENT OF THE PARTIES HERETO TO THE WAIVER OF THEIR
RIGHT TO TRIAL BY JURY.
25. Conflicts with Security Agreement. In the event of any
irreconcilable conflicts between the terms of this Agreement and of the Security
Agreement of even date herewith signed by the Grantor, the terms of this
Agreement shall be controlling.
-8-
IN WITNESS WHEREOF, the parties hereto have duly
executed this Agreement as of the day and year first above written.
RADIO UNICA CORP.
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------------------------
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: C.F.O.
CANADIAN IMPERIAL BANK OF COMMERCE,
as Agent
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇
--------------------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇
Title: Managing Director
Schedule A
to
Intellectual Property Security Agreement
Dated as of July 8, 1998
Trademarks, etc., and Applications
Radio Unica Series 95-193,060 filed on November 1, 1996
Schedule B
to
Intellectual Property Security Agreement
Dated as of July 8, ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇
▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇ )
) SS
COUNTY OF NEW YORK )
On the 8th day of July, 1998, before me personally came ▇▇▇▇▇▇
▇. ▇▇▇▇▇▇ , to me known, who being by me duly sworn, did depose and say that
he/she resides at ______________________; that he/she is the Chief Financial
Officer of Radio Unica Corp., the corporation described in and which accepted
and agreed to the foregoing instrument; and that he/she signed his/her name
thereto by authority of the board of directors of said general partner.
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
------------------------
Notary Public
[SEAL]
STATE OF NEW YORK )
) SS
COUNTY OF NEW YORK )
On the 8 th day of July, 1998, before me personally came
▇▇▇▇▇▇▇ ▇▇▇▇▇ , to me known, who being by me duly sworn, did depose and say that
he/she resides at ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇., ▇▇ ▇▇ ▇▇▇▇▇ ; that he/she is a Managing
Director of Canadian Imperial Bank of Commerce, the corporation described in and
which accepted and agreed to the foregoing instrument; and that he/she signed
his/her name thereto by authority of the board of directors of said corporation.
/s/ H. ▇▇▇▇▇ ▇▇▇▇▇▇
---------------------------
Notary Public
[SEAL]