INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.4
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT, dated as of April 20, 2007 (as amended, supplemented or otherwise modified from time to time, the Intellectual Property Security Agreement), is made by each of the signatories hereto (collectively, the Grantors) in favor of Bear Stearns Corporate Lending Inc., as administrative agent (in such capacity, the Administrative Agent) for the Secured Parties (as defined in the Credit Agreement referred to below).
A. KAR Holdings, Inc., a Delaware corporation (the Borrower), and KAR Holdings II, LLC, a Delaware limited liability company (Holdings), have entered into the Credit Agreement, dated as of even date herewith (as amended, supplemented, or otherwise modified from time to time, the Credit Agreement), the financial institutions from time to time party thereto as lenders (the Lenders), Bear, Stearns & Co. Inc. and UBS Securities LLC, as joint lead arrangers, UBS Securities LLC, as syndication agent, Goldman Sachs Credit Partners L.P. and Deutsche Bank Securities Inc., as co-documentation agents, Bear, Stearns & Co. Inc., UBS Securities LLC and Goldman Sachs Credit Partners L.P., as joint bookrunners, the Administrative Agent and other parties from time to time signatory thereto.
B. It is a condition precedent to the obligation of the Lenders to make their respective extensions of credit to the Borrower under the Credit Agreement that the Grantors shall have executed and delivered that certain Guarantee and Collateral Agreement, dated as of even date herewith in favor of the Administrative Agent (as amended, supplemented, replaced or otherwise modified from time to time, the Guarantee and Collateral Agreement). Capitalized terms used and not defined herein have the meanings given such terms in the Credit Agreement or the Guarantee and Collateral Agreement, as applicable.
C. Under the terms of the Guarantee and Collateral Agreement, the Grantors have granted a security interest in certain Property, including without limitation certain Intellectual Property of the Grantors to the Administrative Agent, for the benefit of the Secured Parties, and have agreed as a condition thereof to execute this Intellectual Property Security Agreement for recording with the United States Patent and Trademark Office, the United States Copyright Office, and other applicable Governmental Authorities.
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Grantors agree as follows:
SECTION 1. Grant of Security. Each Grantor hereby grants to the Administrative Agent for the benefit of the Secured Parties a security interest in and to all of such Grantors right, title and interest in and to all of the following property now owned or at any time hereafter acquired by such Grantor or in which such Grantor now has or at any time in the future may acquire any right, title or interest, as collateral security for the prompt and complete payment and performance when due (whether at the stated maturity, by acceleration or otherwise) of such Grantors Obligations (as defined in the Guarantee and Collateral Agreement):
(a) (i) all United States trademarks, service marks, trade names, domain names, corporate names, company names, business names, trade dress, trade styles or logos and all registrations of and applications to register the foregoing (except for intent-to-use applications for trademark or service mark registrations filed pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051, unless and until an Amendment to Allege Use or a Statement of Use under Sections 1(c) and 1(d) of said Act has been filed and accepted) and any new renewals thereof, including each registration and application identified in Schedule 1, (ii) the right to sue or otherwise recover for any and all past, present and future infringements and dilutions thereof, (iii) all income, royalties, damages and other payments now and
hereafter due and/or payable with respect thereto (including payments under all licenses entered into in connection therewith, and damages and payments for past, present or future infringements and dilutions thereof) and (iv) all other rights of any kind whatsoever accruing thereunder or pertaining thereto, together in each case with the goodwill of the business connected with the use of, and symbolized by, each of the above;
(b) (i) all United States patents, patent applications, including without limitation each issued patent and patent application identified on Schedule 1, (ii) all inventions and improvements described and claimed therein, (iii) the right to sue or otherwise recover for any and all past, present and future infringements thereof, (iv) all income, royalties, damages and other payments now and hereafter due and/or payable with respect thereto (including payments under all licenses entered into in connection therewith, and damages and payments for past, present or future infringements thereof) and (v) all reissues, divisions, continuations, continuations-in-part, substitutes, renewals, and extensions thereof, all improvements thereon and all other rights of any kind whatsoever accruing thereunder or pertaining thereto;
(c) (i) all United States copyrights, whether or not the underlying works of authorship have been published, and all copyright registrations and copyright applications, and any renewals or extensions thereof, including each registration identified on Schedule 1, (ii) the right to sue or otherwise recover for any and all past, present and future infringements 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, present or future infringements thereof) and (iv) all other rights of any kind whatsoever accruing thereunder or pertaining thereto; and
(d) any and all Proceeds of the foregoing.
SECTION 2. Recordation. Each Grantor authorizes and requests that the United States Register of Copyrights or the United States Commissioner of Patents and Trademarks, as applicable, record this Intellectual Property Security Agreement.
SECTION 3. Execution in Counterparts. This Agreement may be executed by one or more of the parties to this Agreement on any number of separate counterparts (including by telecopy or electronic pdf), and all of said counterparts taken together shall be deemed to constitute one and the same instrument.
SECTION 4. Governing Law. This Intellectual Property Security Agreement shall be governed by, and construed and interpreted in accordance with, the law of the State of New York.
SECTION 5. Conflict Provision. This Intellectual Property Security Agreement has been entered into in conjunction with the provisions of the Guarantee and Collateral Agreement and the Credit Agreement. The rights and remedies of each party hereto with respect to the security interest granted herein are without prejudice to, and are in addition to those set forth in the Guarantee and Collateral Agreement and the Credit Agreement, all terms and provisions of which are incorporated herein by reference. In the event that any provisions of this Intellectual Property Security Agreement are in conflict with the Guarantee and Collateral Agreement or the Credit Agreement, the provisions of the Guarantee and Collateral Agreement or the Credit Agreement shall govern.
IN WITNESS WHEREOF, each of the undersigned has caused this Intellectual Property Security Agreement to be duly executed and delivered as of the date first above written.
ADESA, INC. | ||
By: | /s/ Eric M. Loughmiller | |
Name: | Eric M. Loughmiller | |
Title: |
STATE OF INDIANA | ) | |||
: | ss.: | |||
COUNTY OF HAMILTON | ) |
On this 23rd day of April, 2007, before me personally appeared Eric M. Loughmiller, proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the entity upon behalf of which the person acted executed the instrument.
/s/ Kathleen E. Bramel |
Notary Public |
My commission expires: May 31, 2007 |
IN WITNESS WHEREOF, each of the undersigned has caused this Intellectual Property Security Agreement to be duly executed and delivered as of the date first above written.
ADESA WISCONSIN, LLC | ||
By: | /s/ Eric M. Loughmiller | |
Name: | Eric M. Loughmiller | |
Title: |
STATE OF INDIANA | ) | |||
: | ss.: | |||
COUNTY OF HAMILTON | ) |
On this 23rd day of April, 2007, before me personally appeared Eric M. Loughmiller, proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the entity upon behalf of which the person acted executed the instrument.
/s/ Kathleen E. Bramel |
Notary Public |
My commission expires: May 31, 2007 |
IN WITNESS WHEREOF, each of the undersigned has caused this Intellectual Property Security Agreement to be duly executed and delivered as of the date first above written.
INSURANCE AUTO AUCTIONS, INC. | ||
By: | /s/ Eric M. Loughmiller | |
Name: | Eric M. Loughmiller | |
Title: |
STATE OF INDIANA | ) | |||
: | ss.: | |||
COUNTY OF HAMILTON | ) |
On this 23rd day of April, 2007, before me personally appeared Eric M. Loughmiller, proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the entity upon behalf of which the person acted executed the instrument.
/s/ Kathleen E. Bramel |
Notary Public |
My commission expires: May 31, 2007 |
IN WITNESS WHEREOF, each of the undersigned has caused this Intellectual Property Security Agreement to be duly executed and delivered as of the date first above written.
AUTOMOTIVE FINANCE CORPORATION | ||
By: | /s/ Eric M. Loughmiller | |
Name: | Eric M. Loughmiller | |
Title: |
STATE OF INDIANA | ) | |||
: | ss.: | |||
COUNTY OF HAMILTON | ) |
On this 23rd day of April, 2007, before me personally appeared Eric M. Loughmiller, proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the entity upon behalf of which the person acted executed the instrument.
/s/ Kathleen E. Bramel |
Notary Public |
My commission expires: May 31, 2007 |
BEAR STEARNS CORPORATE LENDING INC., | ||
as Administrative Agent | ||
By: | /s/ Victor Bulzacchelli | |
Name: | Victor Bulzacchelli | |
Title: | Vice President |
Schedule 1
COPYRIGHTS
None.
PATENTS
None.
TRADEMARKS
Jurisdiction | Trademark | Registration No. (App. No.) | Reg. Date (App. Date) | Record Owner | Status/ Comments | |||||
Canada | ADESA | TMA434,316 | October 7, 1994 | ADESA Properties Canada, Inc. | Registered | |||||
Canada | DESIGN ONLY | TMA601,386 | February 4, 2004 | ADESA Properties Canada, Inc. | Registered | |||||
Canada | ISAIAH 40:31 and Design | TMA492,524 | April 7, 1998 | ADESA Properties Canada, Inc. | Registered | |||||
Mexico | ADESA | 779545 | February 24, 2003 | ADESA, Inc. | Registered | |||||
Mexico | ADESA and Design | 764584 | October 21, 2002 | ADESA, Inc. | Registered | |||||
Mexico | DESIGN ONLY | 764583 | October 21, 2002 | ADESA, Inc. | Registered | |||||
Mexico | PAR and Design | 810808 | October 24, 2003 | ADESA, Inc. | Registered | |||||
United States | A and Design | 3,070,822 | March 21, 2006 | ADESA, Inc. | Registered | |||||
United States | ADESA | 1,783,137 | July 20, 1993 | ADESA, Inc. | Registered |
Jurisdiction | Trademark | Registration No. (App. No.) | Reg. Date (App. Date) | Record Owner | Status/ Comments | |||||
United States | ADESA FLORIDA CARS AUCTION GROUP ADESA CLEARWATER ADESA JACKSONVILLE ADESA OCALA ADESA ORLANDO ADESA TAMPA WWW.ADESA.COM and Design | 2,766,567 | September 23, 2003 | ADESA, Inc. | Registered | |||||
United States | ADESA and Design | 2,504,409 | November 6, 2001 | ADESA, Inc. | Registered | |||||
United States | ADESA INC. A and Design | 3,138,256 | September 5, 2006 | ADESA, Inc. | Registered | |||||
United States | ADESA INC. and Design | 3,144,560 | September 19, 2006 | ADESA, Inc. | Registered | |||||
United States | ADESA MARKET GUIDE | 2,804,621 | January 13, 2004 | ADESA, Inc. | Registered | |||||
United States | ADESA RUN LIST | 2,930,226 | March 8, 2005 | ADESA, Inc. | Registered | |||||
United States | AUTOLOT | 2,462,333 | June 19, 2001 | ADESA, Inc. | Registered | |||||
United States | AUTOVIN | (77-126,546) | (March 9, 2007) | ADESA, Inc. | Pending | |||||
United States | DE@LERBLOCK | 2,509,994 | November 20, 2001 | ADESA, Inc. | Registered | |||||
United States | DESIGN ONLY | 2,504,410 | November 6, 2001 | ADESA, Inc. | Registered | |||||
United States | DOPPLER DISPATCH | 2,554,587 | April 2, 2002 | ADESA, Inc. | Registered | |||||
United States | DRIVEN BY VALUES | 3,057,695 | February 7, 2006 | ADESA, Inc. | Registered | |||||
United States | LEASECHECK | (77-126,624) | (March 9, 2007) | ADESA, Inc. | Pending | |||||
United States | LOTCHECK | (77-126,696) | (March 9, 2007) | ADESA, Inc. | Pending | |||||
United States | PAR | 2,151,277 | April 14, 1998 | ADESA, Inc. | Registered | |||||
United States | PAR NORTH AMERICA VEHICLE TRANSITION SERVICES and Design | 2,630,448 | October 8, 2002 | ADESA, Inc. | Registered | |||||
United States | PARTNERS IN SUCCESS | (77-026,738) | (October 23, 2006) | ADESA, Inc. | Pending | |||||
United States | PULSE | 2,663,020 | December 17, 2002 | ADESA, Inc. | Registered |
Jurisdiction | Trademark | Registration No. (App. No.) | Reg. Date (App. Date) | Record Owner | Status/ Comments | |||||
United States | SITECHECK | (77-127,917) | (March 11, 2007) | ADESA, Inc. | Pending | |||||
Wisconsin | CASCADE MOTORS | Registration Nos. not issued by Wisconsin Secretary of State | July 7, 2004 | ADESA Wisconsin, LLC | Registered | |||||
Intl Register | IAA | 889469 | March 29, 2006 | Insurance Auto Auctions, Inc. | Registered | |||||
Intl Register | IAA and design | 910468 | June 13, 2006 | Insurance Auto Auctions, Inc. | Registered | |||||
Intl Register | INSURANCE AUTO AUCTIONS | 885284 | March 29, 2006 | Insurance Auto Auctions, Inc. | Registered | |||||
Intl Register | RUN & DRIVE | 885285 | March 29, 2006 | Insurance Auto Auctions, Inc. | Registered | |||||
United States | INSURANCE AUTO AUCTIONS | 3,026,577 | December 13, 2005 | Insurance Auto Auctions, Inc | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | AUCTION PASSPORT | (77-140,108) | (March 26, 2007) | Insurance Auto Auctions, Inc. | Pending | |||||
United States | BIDFAST | 1,782,221 | July 13, 1993 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | DATALINK | 2,382,030 | September 5, 2000 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | FASTTOW | 1,783,610 | July 20, 1993 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. |
Jurisdiction | Trademark | Registration No. (App. No.) | Reg. Date (App. Date) | Record Owner | Status/ Comments | |||||
United States | FASTTRACK | 1,788,966 | August 17, 1993 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | IAA | 1,899,150 | June 13, 1995 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | IAA | 1,900,846 | June 20, 1995 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | INSURANCE AUTO AUCTIONS | 1,839,138 | June 7, 1994 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | RUN & DRIVE | 2,387,323 | September 19, 2000 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | SUREPAY | 1,794,418 | September 21, 1993 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. | |||||
United States | VIC/SMARTLOSS | 1,980,959 | June 18, 1996 | Insurance Auto Auctions, Inc. | Registered; unreleased security interest from Insurance Auto Auctions, Inc. to Bear Stearns Corporate Lending Inc. recorded at reel 3092 and frame 0553. |