{"id":41080,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/intellectual-property-security-agreement-ebay-inc-and-imperial.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"intellectual-property-security-agreement-ebay-inc-and-imperial","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/finance\/intellectual-property-security-agreement-ebay-inc-and-imperial.html","title":{"rendered":"Intellectual Property Security Agreement &#8211; eBay Inc. and Imperial Bank"},"content":{"rendered":"<pre>                                                                              \n                   INTELLECTUAL PROPERTY SECURITY AGREEMENT\n                   ----------------------------------------\n\n     This Intellectual Property Security Agreement (the 'Agreement') is made as\nof July 20, 1997, by and between EBAY, INC., a California corporation\n('Grantor'), and IMPERIAL BANK, a California chartered bank ('Secured Party').\n\n                                   RECITALS\n                                   --------\n\n     A.   Secured Party has agreed to lend to Grantor certain funds (the\n'Loan'), and Grantor desires to borrow such funds from Secured Party pursuant to\nthe terms of a Commitment Letter dated July 16, 1997 and the Starter Kit Loan\nand Security Agreement dated July 20, 1997 (the 'Loan Agreement;', all\ncapitalized terms used herein without definition shall have the meanings\nascribed to them in the Loan Agreement).\n\n     B.   In order to induce Secured Party to enter into the Loan Agreement,\nGrantor has agreed to grant a security interest in certain intangible property\nto Secured Party for purposes of securing the obligations of Grantor to Secured\nParty.\n\n     NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:\n\n     1.   Grant of Security Interest.  As collateral security for the prompt and\n          --------------------------                                            \ncomplete payment and performance of all of Grantor's present or future\nindebtedness, obligations and liabilities to Secured Party, Grantor hereby\ngrants a security interest and mortgage to Secured Party, as security, in and to\nGrantor's entire right, title and interest in, to and under the following (all\nof which shall collectively be called the 'Collateral'):\n\n          (a)  Any and all copyright rights, copyright applications, copyright\nregistrations and like protections in each work or authorship and derivative\nwork thereof, whether published or unpublished and whether or not the same also\nconstitutes a trade secret, now or hereafter existing, created, acquired or\nheld, including without limitation those set forth on Exhibit A attached hereto\n                                                      ---------                \n(collectively, the 'Copyrights');\n\n          (b)  Any and all trade secrets, and any and all intellectual property\nrights in computer software and computer software products now or hereafter\nexisting, created, acquired or held;\n\n          (c)  Any and all design rights which may be available to Grantor now\nor hereafter existing, created, acquired or held;\n\n          (d)  All patents, patent applications and like protections including\nwithout limitation improvements, divisions, continuations, renewals, reissues,\nextensions and\n\n \ncontinuations-in-part of the same, including without limitation the patents and\npatent applications set forth on Exhibit B attached hereto (collectively, the\n                                 ---------                                   \n'Patents');\n\n          (e)  Any trademark and servicemark rights, whether registered or not,\napplications to register and registrations of the same and like protections, and\nthe entire goodwill of the business of Grantor connected with and symbolized by\nsuch trademarks, including without limitation those set forth on Exhibit C\n                                                                 ---------\nattached hereto (collectively, the 'Trademarks');\n\n          (f)  Any and all claims for damages by way of past, present and future\ninfringement of any of the rights included above, with the right, but not the\nobligation, to sue for and collect such damages for said use or infringement of\nthe intellectual property rights identified above;\n\n          (g)  All licenses or other rights to use any of the Copyrights,\nPatents or Trademarks, and all license fees and royalties arising from such use\nto the extent permitted by such license or rights;\n\n          (h)  All amendment, renewals and extensions of any of the Copyrights,\nTrademarks or Patents; and\n\n          (i)  All proceeds and products of the foregoing, including without\nlimitation all payments under insurance or any indemnity or warranty payable in\nrespect of any of the foregoing.\n\n     2.   Authorization and Request.  Grantor authorizes and requests that the\n          -------------------------                                           \nRegister of Copyrights and the Commissioner of Patents and Trademarks record\nthis security agreement.\n\n     3.   Covenants and Warranties.  Grantor represents, warrants, covenants and\n          ------------------------                                              \nagrees as follows:\n\n          (a)  Grantor is now the sole owner of the Collateral, except for non-\nexclusive licenses granted by Grantor to its customers in the ordinary course of\nbusiness;\n\n          (b)  Performance of this Agreement does not conflict with or result in\na breach of any agreement to which Grantor is party or by which Grantor is\nbound, except to the extent that certain intellectual property agreements\nprohibit the assignment of the rights thereunder to a third party without the\nlicenser's or other party's consent and this Agreement constitutes an\nassignment;\n\n          (c)  During the term of this Agreement, Grantor will not transfer or\notherwise encumber any interest in the Collateral, except for non-exclusive\nlicenses granted by Grantor in the ordinary course of business or as set forth\nin this Agreement;\n\n          (d)  To its knowledge, each of the Patents is valid and enforceable,\nand no part of the Collateral has been judged invalid or unenforceable, in whole\nor in part, and no claim has been made that nay party of the Collateral violates\nthe rights of any third party;\n\n                                       2\n\n \n          (e)  Grantor shall promptly advise Secured Party of any material\nchange in the composition of the Collateral, including but not limited to any\nsubsequent ownership right of the Grantor in or to any Trademark, Patent or\nCopyright not specified in this Agreement;\n\n          (f)  Grantor shall (i) protect, defend and maintain the validity and\nenforceability of the Trademarks, Patents and Copyrights (ii) use its best\nefforts to detect infringements of the Trademarks, Patents and Copyrights and\npromptly advise Secured Party in writing to material infringements detected and\n(iii) not allow any Trademarks, Patents or Copyrights to be abandoned, forfeited\nor dedicated to the public without the written consent of Secured Party, which\nshall not be unreasonably withheld unless Grantor determines that reasonable\nbusiness practices suggest that abandonment is appropriate;\n\n          (g)  Grantor shall register or cause to be registered (to the extent\nnot already registered) with the United States Patent and Trademark Office or\nthe United States Copyright Office, as applicable, those intellectual property\nrights listed on Exhibit A, B and C hereto within thirty (30) days of the date\nof this Agreement.  Grantor shall register or cause to be registered with the\nUnited States Patent and Trademark Office or the United States Copyright Office,\nas applicable, those addiitonal intellectual property rights developed or\nacquired by Grantor from time to time in connection with any product prior to\nthe sale or licensing of such product to any third party (including without\nlimitation revisions or additions to the intellectual property rights listed on\nsuch Exhibits A, B and C).  Grantor shall, from time to time, execute and file\nsuch other instruments, and take such further actions as Secured Party may\nreasonably request from time to time to perfect or continue the perfection of\nSecured Party's interest in the Collateral;\n\n          (h)  This Agreement creates, and in the case of after acquired\nCollateral, this Agreement will create at the time Grantor first has rights in\nsuch after acquired Collateral, in favor of Secured Party a valid and perfected\nfirst priority security interest in the Collateral in the United States securing\nthe payment and performance of the obligations evidenced by the Loan Agreement\nupon making the filings referred to in clause (i) below;\n\n          (i)  To its knowledge, except for, and upon, the filing with the\nUnited States Patent and Trademark office with respect to the Patents and\nTrademarks and the Register of Copyrights with respect to the Copyrights\nnecessary to perfect the security interests created hereunder, and except as has\nbeen already made or obtained, no authorization, approval or other action by,\nand no notice to or filing with, any U.S. governmental authority or U.S.\nregulatory body is required either (i) for the grant by Grantor of the security\ninterest granted hereby or for the execution, delivery or performance of this\nAgreement by Grantor in the U.S. or (ii) for the perfection in the United States\nor the exercise by Secured Party of its rights and remedies hereunder;\n\n          (j)  All information heretofore, herein or hereafter supplied to\nSecured Party by or on behalf of Grantor with respect to the Collateral is\naccurate and complete in all material respects;\n\n          (k)  Grantor shall not enter into any agreement that would materially\nimpair or conflict with Grantor's obligations hereunder without Secured Party's\nprior written consent,\n\n                                       3\n\n \nwhich consent shall not be unreasonably withheld. Grantor shall not permit the\ninclusion in any material contract to which it becomes a party of any provisions\nthat could or might in any way prevent the creation of a security interest in\nGrantor's rights and interests in any property included within the definition of\nthe Collateral acquired under such contracts, except that certain contracts may\ncontain anti-assignment provisions that could in effect prohibit the creation of\na security interest in such contracts if Grantor is required, in its\ncommercially reasonable judgment, to accept such provisions; and\n\n          (l)  Upon any executive officer of Grantor obtaining actual knowledge\nthereof, Grantor will promptly notify Secured Party in writing of any event that\nmaterially adversely affects the value of any Collateral, the ability of Grantor\nto dispose of any Collateral or the rights and remedies of Secured party in\nrelation thereto, including the levy of any legal process against any of the\nCollateral.\n\n     4.   Secured Party's Rights.  Secured Party shall have the right, but not\n          ----------------------                                              \nthe obligation, to take, at Grantors sole expense, any actions that Grantor is\nrequired under this Agreement to take but which Grantor fails to take, after\nfifteen (15) days' notice to Grantor.  Grantor shall reimburse and indemnify\nSecured Party for all reasonable costs and reasonable expenses incurred in the\nreasonable exercise of its rights under this section 4.\n\n     5.   Inspection rights.  Grantor hereby grants to Secured Party and its\n          -----------------                                                 \nemployees, representatives and agents the right to visit, during reasonable\nhours upon prior reasonable written notice to Grantor, any of Grantor's plants\nand facilities that manufacture, install or store products (or that have done so\nduring the prior six-month period) that are sold utilizing any of the\nCollateral, and to inspect the products and quality control records relating\nthereto upon reasonable written notice to Grantor and as often as may be\nreasonably requested.\n\n     6.   Further Assurances; Attorney in Fact.\n          ------------------------------------ \n\n          (a) On a continuing basis, Grantor will make, execute, acknowledge and\ndeliver, and file and record in the proper filing and recording places in the\nUnited States, all such instruments, including appropriate financing and\ncontinuation statements and collateral agreements and filings with the United\nStates Patent and Trademark Office and the Register of Copyrights, and take all\nsuch action as may reasonably be deemed necessary or advisable, or as requested\nby Secured Party, to perfect Secured Party's security interest in all\nCopyrights, Patents and Trademarks and otherwise to carry out the intent and\npurposes of this Agreement, or for assuring and confirming to Secured Party the\ngrant or perfection of a security interest in all Collateral.\n\n          (b)  Grantor hereby irrevocably appoints Secured Party as Grantor's\nattorney-in-fact, with full authority in the place and stead of Grantor and in\nthe name of Grantor, from time to time in Secured Party's discretion, to take\nany action and to execute any instrument which Secured Party may deem necessary\nor advisable to accomplish the purposes of this Agreement, including (i) to\nmodify, in its sole discretion, this Agreement without first obtaining Grantor's\napproval of or signature to such modification by amending Exhibit A, Exhibit B\nand Exhibit C, thereof, as appropriate, to include reference to any right, title\nor interest in any\n\n                                       4\n\n \nCopyrights, Patents or Trademarks acquired by Grantor after the execution hereof\nor to delete any reference to any right, title or interest in any Copyrights,\nPatents or Trademarks in which Grantor no longer has or claims any right, title\nor interest, (ii) to file, in its sole discretion, one or more financing or\ncontinuation statements and amendments thereto, relative to any of the\nCollateral without the signature of Grantor where permitted by law and (iii)\nafter the occurrence of an Event of Default, to transfer the Collateral into the\nname of Bank or a third party to the extent permitted under the California\nUniform Commercial Code.\n\n     7.   Events of Default.  The occurrence of any of the following shall\n          -----------------                                               \nconstitute an Event of Default under the Agreement.\n\n          (a) An Event of Default occurs under the Loan Documents; or\n\n          (b) Grantor breaches any warranty or agreement made by Grantor in this\nAgreement and, as to any breach that is capable of cure, Grantor fails to cure\nsuch breach within ten (10) days of the occurrence of such breach.\n\n     8.   Remedies.  Upon the occurrence and continuance of an Event of Default,\n          --------                                                              \nSecured Party shall have the right to exercise all the remedies of a secured\nparty under the California Uniform Commercial Code, including without limitation\nthe right to require Grantor to assemble the Collateral and any tangible\nproperty in which Secured Party has a security interest and to make it available\nto Secured Party at a place designated by Secured Party. Secured Party shall\nhave nonexclusive, royalty free license to use the Copyrights, Patents and\nTrademarks to the extent reasonably necessary to permit Secured Party to\nexercise its rights and remedies upon the occurrence of an Event of Default.\nGrantor will pay any expenses (including reasonable attorneys' fees) incurred by\nSecured Party in connection with the exercise of any of Secured Party's rights\nhereunder, including without limitation any expense incurred in disposing of the\nCollateral.  All of Secured Party's rights and remedies with respect to the\nCollateral shall be cumulative.\n\n     9.   Indemnity.  Grantor agrees to defend, indemnify and hold harmless\n          ---------                                                        \nSecured Party and its officers, employees, and agent against:  (a) all\nobligations, demands, claims, and liabilities claimed or asserted by any other\nparty in connection with the transactions contemplated by this Agreement, and\n(b) all losses or expenses in any way suffered, incurred, or paid by Secured\nParty as a result of or in any way arising out of, following or consequential to\ntransactions between Secured Party and Grantor, whether under this Agreement or\notherwise (including without limitation reasonable attorneys' fees and\nreasonable expenses), except for losses arising from or out of Secured Party's\ngross negligence or willful misconduct.\n\n     10.  Course of Dealing.  No course of dealing, nor any failure to exercise,\n          -----------------                                                     \nnor any delay in exercising any right, power or privilege hereunder shall\noperate as a waiver thereof.\n\n     11.  Attorneys' Fees.  If any action relating to this Agreement is brought\n          ---------------                                                      \nby either party hereto against the other party, the prevailing party shall be\nentitled to recover reasonable attorneys' fees, costs and disbursements.\n\n                                       5\n\n \n     12.  Amendments.  This Agreement may be amended only by a written\n          ----------                                                  \ninstrument signed by both parties hereto.\n\n     13.  Counterparts.  This Agreement may be executed in two or more\n          ------------                                                \ncounterparts, each of which shall be deemed an original but all of which\ntogether shall constitute the same instrument.\n\n     14.  California Law and Jurisdiction; Jury Waiver.  This Agreement shall be\n          --------------------------------------------                          \ngoverned by the laws of the State of California, without regard for choice of\nlaw provisions.  Grantor and Secured Party consent to the exclusive jurisdiction\nof any state or federal court located in Santa Clara County, California.\nGRANTOR AND SECURED PARTY EACH WAIVE THEIR RESPECTIVE RIGHTS TO A JURY TRIAL OF\nANY CLAIM OR CAUSE OF ACTION BASED UPON OR ARISING OUT OF THE LOAN AGREEMENT\nTHIS ASSIGNMENT, OR ANY OF THE TRANSACTIONS CONTEMPLATED HEREIN, INCLUDING\nCONTRACT CLAIMS, TORT CLAIMS, BREACH OF DUTY CLAIMS, AND ALL OTHER COMMON LAW OR\nSTATUTORY CLAIMS.\n\n                 [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]\n                 \n                                       6\n\n \n     IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the\nday and year first above written.\n\nAddress of Grantor:                               GRANTOR\n                                                   \n                                                  EBAY, INC.\n \n2005 Hamilton Avenue, Suite 270                   By:  \/s\/ PIERRE OMIDYAR\n                                                     --------------------------\nSan Jose, CA  95125                               Title:  CEO\n                                                        -----------------------\nAttn:  Mr. Jeff Skoll\n \nAddress of Secured Party:                         SECURED PARTY:\n\n                                                  IMPERIAL BANK\n \n2460 Sand Hill Road, Suite 102                    By:  \/s\/ D. SOUSA\n                                                     -------------------------\nMenlo Park, CA  94025                             Title:     AVP\n                                                        ---------------------- \n\nAttn:  Mr. David Sousa\n\n                                      S-1\n\n \n                                   EXHIBIT A\n                                   ---------\n\n                                  Copyrights\n\n\n                                               Registration\/       Registration\/\nDescription                                    Application\/        Application\/\n-----------                                       Number                Date\n                                               -----------         ------------\n\n\n \n                                   EXHIBIT B\n                                   ---------\n\n                                    Patents\n\n                                               Registration\/       Registration\/\nDescription                                    Application\/        Application\/\n-----------                                       Number                Date\n                                               ------------        ------------\n\n\n \n                                   EXHIBIT C\n                                   ---------\n\n                                  Trademarks\n\n\n                                               Registration\/       Registration\/\nDescription                                    Application\/        Application\/\n-----------                                      Number                Date\n                                               ------------        ------------\n\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7840],"corporate_contracts_industries":[9415],"corporate_contracts_types":[9560,9570],"class_list":["post-41080","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-imperial-bank","corporate_contracts_industries-financial__banks","corporate_contracts_types-finance","corporate_contracts_types-finance__security"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/41080","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=41080"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=41080"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=41080"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=41080"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}