1
Exhibit 10.3
ASSIGNMENT FOR SECURITY OF
PATENTS, TRADEMARKS AND COPYRIGHTS
This ASSIGNMENT FOR SECURITY OF PATENTS, TRADEMARKS AND COPYRIGHTS
(this "ASSIGNMENT") is made as of the 29th day of April, 1998 by and between:
SPINCYCLE, INC. a Delaware corporation, ( "ASSIGNOR"); and
▇▇▇▇▇▇ FINANCIAL, INC., a Delaware corporation, as Agent for the
benefit of the Lenders defined below (in such capacity, "AGENT").
W I T N E S S E T H
WHEREAS, pursuant to a certain Loan and Security Agreement of even date
herewith among Assignor, Agent and certain financial institutions from time to
time party thereto (collectively, "LENDERS") (as the same may hereafter be
amended, supplemented or otherwise modified from time to time, the "LOAN
AGREEMENT"), Lenders have agreed to make certain loans and extend certain other
financial accommodations to Assignor; and
WHEREAS, the Loan Agreement grants to Agent for the benefit of Lenders
a continuing security interest in certain assets of Assignor, including, without
limitation, all of Assignor's patents, patent rights and applications therefor,
trademarks and applications therefor, copyrights and applications and
registrations therefor, license rights and goodwill;
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor agrees as follows:
SECTION 1. INCORPORATION OF LOAN AGREEMENT DEFINITIONS. The Loan
Agreement and the provisions thereof are hereby incorporated herein in their
entirety by this reference thereto. Capitalized terms used but not defined
herein shall have the respective meanings given thereto in the Loan Agreement.
SECTION 2. ASSIGNMENT FOR SECURITY.
(a) To secure the complete and timely payment and satisfaction
of the Obligations, Assignor hereby grants to Agent for the benefit of Lenders a
continuing security interest in its entire right, title and interest in and to
all of its now owned or existing and hereafter acquired or arising:
2
(i) patents, patent applications and patent licenses,
including, without limitation, the inventions and improvements described and
claimed therein, all patentable inventions and those patents, patent
applications and patent licenses listed on Schedule A attached hereto and made a
part hereof and the reissues, divisions, continuations, renewals, extensions and
continuations-in-part of any of the foregoing, and all income, royalties,
damages and payments now or hereafter due and/or payable under or with respect
to any of the foregoing with respect to any of the foregoing, including, without
limitation, damages and payments for past, present and future infringements of
any of the foregoing and the right to ▇▇▇ for past, present and future
infringements of any of the foregoing (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the "PATENTS");
(ii) copyrights, rights and interests in copyrights, works
protectable by copyrights, copyright registrations copyright applications and
copyright licenses, including, without limitation, the copyright registrations,
applications and licenses listed on Schedule B attached hereto and made a part
hereof and all renewals of any of the foregoing, all income, royalties, damages
and payments now and hereafter due and/or payable under or with respect to any
of the foregoing, including, without limitation, damages and payments for past,
present and future infringements of any of the foregoing and the right to ▇▇▇
for past, present and future infringements of any of the foregoing (all of the
foregoing are sometimes hereinafter individually and/or collectively referred to
as the "COPYRIGHTS");
(iii) trademarks, trade names, corporate names, company names,
business names, fictitious business names, trade styles, service marks, logos,
other business identifiers, prints and labels on which any of the foregoing have
appeared or appear, all registrations and recordings thereof, all applications
and licenses in connection therewith, including, without limitation, the
trademarks, applications and licenses listed on Schedule C attached hereto and
made a part hereof and renewals thereof, and all income, royalties, damages and
payments now or hereafter due and/or payable under or with respect to any of the
foregoing or with respect to any of the foregoing, including, without
limitation, damages and payments for past, present and future infringements of
any of the foregoing and the right to ▇▇▇ for past, present and future
infringements of any of the foregoing (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the "TRADEMARKS");
and
(iv) all rights corresponding to any of the foregoing
throughout the world and the goodwill of Assignor's business connected with the
use of and symbolized by the Trademarks.
(b) In addition to, and not by way of limitation of, all other
rights granted to Agent for the ratable benefit of Lenders under the Loan
Agreement, this Assignment and all other Loan Documents, as collateral security
for the complete payment when due of all Obligations under the Loan Agreement
and the other Loan Documents, each Assignor hereby sells, assigns, grants,
conveys, transfers and sets over to Agent, for use and benefit of Lenders, upon
the occurrence of an
- 2 -
3
Event of Default, any and all rights of Assignor under any license and any
license agreement with any other party, whether Assignor is a licensor or
licensee under such license agreement and the right to prepare for sale, sell
and advertise for sale, all Collateral now or hereafter owned by Assignor and
now or hereafter covered by such license and agrees that it will not take any
unreasonable action, or permit any unreasonable action to be taken by others
subject to its control, including licensees, or fail to take any reasonable
action, which could affect the validity or enforcement of the rights transferred
to Agent under this Assignment which rights are material to the conduct of
Assignor's business. Assignor hereby covenants that it will promptly notify
Agent if any Patent, Copyright or Trademark shall at any time hereafter become
subject to such license agreement and that it will promptly provide Agent with
full identification thereof and with such further documentation as Agent may
reasonably request to accomplish or assure the accomplishment of the purpose of
this subsection.
(c) If any provision of this Assignment or the application thereof
to the Assignor or circumstance is held invalid or unenforceable, the remainder
of this Assignment and the application of such provision will not be affected
thereby and the provisions of this Assignment shall be severable in any such
instance. If the execution and effect of this Assignment shall constitute a
breach or default under the terms of any agreement for any reason including,
without limitation, the failure to procure the prior consent of any third party,
then this Assignment shall be deemed to be of no force or effect with respect to
any such agreement.
SECTION 3. LICENSES. Assignor hereby agrees that the use by Agent, on
behalf of Lenders, of all Patents, Copyrights and Trademarks as described above
shall be worldwide, to the extent possessed by Assignor, and is granted free of
charge, without requirement that any monetary payment whatsoever (including,
without limitation, any royalty, license fee or other related charges) be made
to Assignor or any other Person by Agent or any Lender (except that if Agent
shall receive proceeds from the disposition of any such property, such proceeds
shall be applied to the Obligations). Notwithstanding the foregoing, in the
event that Agent uses any Patents, Copyrights and/or Trademarks which are
licensed from a third party, Agent shall be subject to all obligations
(including, without limitation, royalty, license fee or other related charges)
set forth in the license agreements related thereto. The term of the assignments
and grant of security interest granted herein shall extend until the earlier of:
(x) expiration of each of the respective Patents, Copyrights and Trademarks
assigned hereunder, or (y) the Obligations have been finally paid in full in
cash and the Loan Agreement and the Commitments terminated.
SECTION 4. REPORTS OF APPLICATIONS. The Patents, Copyrights and
Trademarks constitute all of the federally registered patents, copyrights and
trademarks, and applications therefor now owned by Assignor. Assignor shall
provide Agent on a quarterly basis with a list of all new federally registered
patents, copyrights and trademarks and federal applications for letters patent,
copyright registrations and trademark registrations and licences, if any, which
new patents, copyrights, trademarks, licenses and applications shall be subject
to the terms and conditions of the Loan Agreement and this Assignment.
- 3 -
4
SECTION 5. EFFECT ON LOAN AGREEMENT; CUMULATIVE REMEDIES. Assignor
acknowledges and agrees that this Assignment is not intended to limit or
restrict in any way the rights and remedies of Agent under the Loan Agreement
but rather is intended to supplement and facilitate the exercise of such rights
and remedies. All of the rights and remedies of Agent with respect to the
Patents, Copyrights and Trademarks, whether established hereby, by the Loan
Agreement, by any other agreements, or by law, shall be cumulative and may be
exercised singularly or concurrently. Notwithstanding any provision herein
contained to the contrary, Agent shall not have the right to use and enforce the
Patents, Copyrights and Trademarks unless and until the occurrence of an Event
of Default, and until the occurrence of an Event of Default Assignor shall have
all of such rights.
SECTION 6. BINDING EFFECT; BENEFITS. This Assignment shall be binding
upon Assignor and its successors and assigns, and shall inure to the benefit of
Agent for the benefit of Lenders and its successors and assigns whether by
voluntary conveyance, operation of law, assignment, transfer, foreclosure, deed
in lieu of foreclosure or otherwise.
SECTION 7. APPLICABLE LAW; SEVERABILITY. THIS ASSIGNMENT SHALL BE
GOVERNED BY AND SHALL BE CONSTRUED AND ENFORCED IN ACCORDANCE WITH ALL OF THE
PROVISIONS OF THE UNIFORM COMMERCIAL CODE AS ADOPTED IN ILLINOIS AND BY THE
OTHER INTERNAL LAWS OF THE STATE OF ILLINOIS, WITHOUT REGARD TO CONFLICTS OF LAW
PRINCIPLES, EXCEPT FOR THE PERFECTION AND ENDORSEMENT OF SECURITY INTERESTS AND
LIENS IN OTHER JURISDICTIONS, WHICH SHALL BE GOVERNED BY THE LAWS OF THOSE
JURISDICTIONS OR, AS APPLICABLE, BY THE LAWS OF THE UNITED STATES OF AMERICA.
WHENEVER POSSIBLE, EACH PROVISION OF THIS ASSIGNMENT SHALL BE INTERPRETED IN
SUCH A MANNER AS TO BE EFFECTIVE AND VALID UNDER APPLICABLE LAW, BUT IF ANY
PROVISION OF THIS ASSIGNMENT SHALL BE PROHIBITED BY OR INVALID UNDER APPLICABLE
LAW, SUCH PROVISION SHALL BE INEFFECTIVE ONLY TO THE EXTENT OF SUCH PROHIBITION
OR INVALIDITY, WITHOUT INVALIDATING THE REMAINDER OF SUCH PROVISIONS OR THE
REMAINING PROVISIONS OF THIS ASSIGNMENT.
SECTION 8. CONSENT TO JURISDICTION. ASSIGNOR HEREBY CONSENTS TO THE
JURISDICTION OF ANY STATE OR FEDERAL COURT LOCATED WITHIN THE COUNTY OF ▇▇▇▇,
STATE OF ILLINOIS AND IRREVOCABLY AGREES THAT, SUBJECT TO LENDER'S ELECTION, ALL
ACTIONS OR PROCEEDINGS ARISING OUT OF OR RELATING TO THIS AGREEMENT OR THE LOAN
AGREEMENT SHALL BE LITIGATED IN SUCH COURTS. ASSIGNOR EXPRESSLY SUBMITS AND
CONSENTS TO THE JURISDICTION OF THE AFORESAID COURTS AND WAIVES ANY DEFENSE OF
FORUM NON CONVENIENS. ASSIGNOR HEREBY WAIVES PERSONAL SERVICE OF ANY AND ALL
PROCESS AND AGREES THAT ALL SUCH SERVICE OF PROCESS MAY BE MADE UPON ASSIGNOR BY
CERTIFIED OR REGISTERED MAIL, RETURN RECEIPT REQUESTED, ADDRESSED TO ASSIGNOR
- 4 -
5
AT THE ADDRESS SET FORTH IN THIS AGREEMENT AND SERVICE SO MADE
SHALL BE COMPLETED WITHIN TEN (10) DAYS AFTER THE SAME HAS BEEN
POSTED.
SECTION 9. JURY TRIAL WAIVER. ASSIGNOR AND AGENT HEREBY WAIVE THEIR
RESPECTIVE RIGHTS TO A JURY TRIAL OF ANY CLAIM OR CAUSE OF ACTION BASED UPON OR
ARISING OUT OF THIS AGREEMENT AND THE LOAN AGREEMENT. ASSIGNOR AND AGENT
ACKNOWLEDGE THAT THIS WAIVER IS A MATERIAL INDUCEMENT TO ENTER INTO A BUSINESS
RELATIONSHIP, THAT EACH HAS RELIED ON THIS WAIVER IN ENTERING INTO A BUSINESS
RELATIONSHIP, THAT EACH HAS RELIED ON THIS WAIVER IN ENTERING INTO THIS
AGREEMENT AND THE LOAN AGREEMENT AND THAT EACH WILL CONTINUE TO RELY ON THIS
WAIVER IN THEIR RELATED FUTURE DEALINGS. ASSIGNOR AND AGENT HEREBY WARRANT AND
REPRESENT THAT EACH HAS HAD THE OPPORTUNITY OF REVIEWING THIS JURY WAIVER WITH
LEGAL COUNSEL, AND THAT EACH KNOWINGLY AND VOLUNTARILY WAIVES ITS JURY TRIAL
RIGHTS.
[Signature Page to Follow]
- 5 -
6
IN WITNESS WHEREOF, the parties hereto have duly executed this
Assignment as of the date first above written.
SPINCYCLE, INC.
By: /s/
---------------------------------
Its:
--------------------------------
Address:
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇/▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ FINANCIAL, INC., as Agent
By: /s/
---------------------------------
Its:
---------------------------------
Address:
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
- ▇ -
▇
▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇ )
) SS
COUNTY OF NEW YORK )
I, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, a Notary Public in and for said County, in the State
aforesaid, DO HEREBY CERTIFY that ▇▇▇▇▇▇▇ ▇▇▇▇▇, personally known to me to be
the Chief Financial Officer of SpinCycle, Inc., a Delaware corporation, the
person who executed the foregoing instrument, who being by me duly sworn, did
depose and say he is the Chief Financial Officer of such corporation described
in and which executed the foregoing instrument; that said instrument is signed
on behalf of such corporation by order its Board of Directors; and that he
acknowledged said instrument to be the free act and deed of such corporation.
GIVEN under my hand and notarial seal this 29th day of April, 1998.
/s/
-------------------------------------------
Notary Public
My commission expires:
-------------------------------------------
- ▇ -
▇
▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇ )
) SS
COUNTY OF NEW YORK )
I, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, a Notary Public in and for said County, in the State
aforesaid, DO HEREBY CERTIFY that ▇.▇. ▇▇▇▇, ▇▇., personally known to me to be
the Senior Vice President of ▇▇▇▇▇▇ Financial, Inc., the person who executed the
foregoing instrument, who being by me duly sworn, did depose and say he is the
Senior Vice President of such corporation described in and which executed the
foregoing instrument; that said instrument is signed on behalf of such
corporation by order of its Board of Directors; and that he acknowledged said
instrument to be the free act and deed of such corporation.
GIVEN under my hand and notarial seal this 29th day of April, 1998.
/s/
-------------------------------------------
Notary Public
My commission expires:
-------------------------------------------
- 8 -
9
SCHEDULE A
PATENTS
None
PATENT APPLICATIONS
None
PATENT LICENSES
None
10
SCHEDULE B
COPYRIGHT REGISTRATIONS
None
COPYRIGHT APPLICATIONS
None
COPYRIGHT LICENSES
None
- 10 -
11
SCHEDULE C
TRADEMARK REGISTRATIONS
▇▇▇▇ Registration No. Date
---- ---------------- ----
Servicemark for SpinCycle Reg. No. 2,051,510 April 8, 1997
(United States Patent and
Trademark Office)
Trademark for SpinCycle, Inc. Reg. No. 2,056,312 April 22, 1997
(and design) (United States
Patent and Trademark Office)
Trademark for SPINCYCLE Reg. No. 515676 January 29, 1996
(block letters) (Copyright
Directorate of Department of
Education (Mexico))
TRADEMARK APPLICATIONS
▇▇▇▇ Trademark Application No. Date Applied
---- ------------------------- ------------
Trademark for SpinCycle No. 799733 December 14, 1995
(Commissioner of Patents and
Registrar of Copyrights
(Canada))
Trademark for SpinCycle, Inc. No. 810071 April 16, 1996
(and design (Commissioner of
Patents and Registrar of
Copyrights (Canada))
Trademark for SpinCycle, Inc. No. 260993 April 26, 1996
(and design) (Copyright
Directorate of Department of
Education (Mexico))
TRADEMARK LICENSES
None
- 11 -