Exhibit 10.3
TRADEMARK AND LICENSE SECURITY
AGREEMENT
This TRADEMARK AND LICENSE SECURITY
AGREEMENT (this “ Agreement ”), dated as of
December 22, 2008, is by and between GTC BIOTHERAPEUTICS, INC.
(“ Grantor ”) and LFB BIOTECHNOLOGIES S.A.S.U.
(“ Grantee ”).
W I T N E S
S E T H :
WHEREAS, pursuant to that certain
Note and Warrant Purchase Agreement by and between the Grantor and
the Grantee dated October 31, 2008 (the “ Purchase
Agreement ”), the Grantor is issuing and selling to the
Grantee a secured convertible note in the original principal amount
of $15,000,000 (the “ Convertible Note ”) and a
warrant to purchase up to 23,193,548 shares of common stock of the
Grantor;
WHEREAS, in connection with the
Purchase Agreement and Convertible Note Grantor and Grantee have
entered into that certain Security Agreement, dated as of the date
hereof (as may be amended, restated, supplemented or otherwise
modified from time to time, the “ Security Agreement
”); and
WHEREAS, Grantor has agreed to
pledge the Trademark Collateral (as defined below) to Grantee in
accordance with the terms of the Security Agreement and this
Agreement, to secure the Indebtedness (as defined in the Security
Agreement).
NOW, THEREFORE, in consideration of
these premises and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the
parties hereto agree as follows:
1. Defined Terms .
(i) Unless otherwise defined herein,
capitalized terms used herein which are defined in the Security
Agreement shall have the meanings specified in the Security
Agreement.
(ii) 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 and schedule references are to this Agreement unless
otherwise specified.
(iii) All terms defined in this
Agreement in the singular shall have comparable meanings when used
in the plural, and vice versa , unless otherwise
specified.
(iv) “ Default ”
means the occurrence of either of the following events:
(a) any default by Grantor under the terms of the Security
Agreement or any other Debt Document; or (b) any Event of
Default.
2. Security Interest in
Trademarks . As security for prompt payment in full of all of
the Indebtedness, Grantor hereby grants to Grantee a first priority
security interest, having priority over all other security
interests in all of Grantor’s now owned or existing and
hereafter acquired or arising (collectively, the “
Trademark Collateral ”):
(i) trademarks, registered
trademarks and trademark applications, trademark registrations,
trade names, service marks, registered service marks, service mark
applications, and service mark registrations (except for
“intent-to-use” applications for trademark or service
mark registrations prior to the filing of an amendment alleging use
or a verified statement of use), including, without limitation, the
registered trademarks, trademark applications, registered service
marks and service mark applications and registrations listed on
Schedule A , and (a) all renewals thereof,
(b) all income, royalties, damages and 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 or future
infringements or dilutions thereof, (c) the right to sue for
past, present and future infringements and dilutions thereof, and
(d) all of Grantor’s rights corresponding thereto
throughout the world (all of the foregoing registered trademarks,
trademark applications, registered service marks and service mark
applications, together with the items described in clauses
(a)-(d) in this paragraph 2(i), being sometimes hereinafter
individually and/or collectively referred to, alone or in
conjunction with non-U.S. Trademarks identified in Schedule C, as
the “Trademarks);
(ii) the goodwill of Grantor’s
business connected with and symbolized by the
Trademarks;
(iii) license agreements with any
other party in connection with any Trademarks or such other
party’s trademarks, registered trademarks, trademark
applications, trademark registrations, trade names, service marks,
registered service marks, service mark applications and service
mark registrations, whether Grantor is a licensor or licensee under
any such license agreement, including, but not limited to, the
license agreements listed on Schedule B , and the right
upon the occurrence and during the continuance of a Default to use
the foregoing in connection with the enforcement of Grantee’s
rights under the Security Agreement (all of the foregoing being
hereinafter referred to collectively as the “ Licenses
”). Notwithstanding the foregoing provisions of this
Section 2 , the Licenses shall not include any license
agreement which by its terms prohibits (which prohibition is
enforceable under applicable law) the grant of the security
interest contemplated by this Agreement for so long as such
prohibition continues; it being understood that upon request
of Grantee, Grantor will in good faith use reasonable efforts to
obtain consent for the creation of a security interest in favor of
Grantee in Grantor’s rights under such license agreement
(excluding any license of non-custom computer software);
and
(iv) Non-U.S. Trademarks and
Licenses relating, including without limitation those listed on
Schedule C ,
3. Restrictions on Future
Agreements . Grantor will not, without Grantee’s prior
written consent, enter into any agreement, including, without
limitation, any license agreement, which is inconsistent with this
Agreement, and Grantor further agrees that it will not take any
action, and will not permit any action to be taken by others
subject to its control, including licensees, or fail to take any
action, which would affect the validity or enforcement of the
rights transferred to Grantee, under this Agreement or any other
Debt Document or the rights associated with those Trademarks which
are necessary or desirable in the operation of Grantor’s
business.
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4. New Trademarks . Grantor
represents and warrants that the Trademarks and Licenses listed on
Schedules A , B and C ,
respectively, include all of the trademark applications and
registrations and Licenses to any Trademarks which Licenses are
material to the operation of Grantor’s business (excluding
any license of non-custom computer software) now owned or held by
Grantor. If, prior to the termination of this Agreement, Grantor
shall (i) obtain rights to any new Trademark or Licenses or
(ii) become entitled to the benefit of any new or existing
Trademark or License, the provisions of Section 2 shall
automatically apply thereto, and Grantor shall give to Grantee
prompt written notice thereof. Grantor hereby authorizes Grantee to
modify this Agreement by (a) amending Schedules A ,
B or C , as the case may be, to include any
Trademarks or Licenses which are described under this
Section 4, and (b) filing, in addition to and not in
substitution for, this Agreement, a short form of this Agreement
containing on Schedules A , B or C
thereto, as the case may be, such Trademarks or Licenses, as the
case may be, which are described under this Section 4.
Notwithstanding the foregoing, Grantor agrees that Grantee’s
security interest shall extend to all of the collateral listed in
Section 2 and this Section 4, regardless of whether
Grantee actually amends Schedules A , B or C ,
respectively.
5. Royalties . Grantor hereby
agrees that the use by Grantee of the Trademarks and Licenses as
authorized hereunder shall be coextensive with Grantor’s
rights thereunder and with respect thereto and without any
liability for royalties or other related charges from Grantee to
Grantor.
6. Nature and Continuation of
Grantee’s Security Interest . This Agreement is made for
collateral security purposes only. This Agreement shall create a
continuing security interest in the Trademarks and the Licenses and
shall remain in full force and effect until the Indebtedness has
been paid in full and the Security Agreement terminated, at such
time the rights granted to Grantee hereunder shall also
terminate.
7. Further Assignments and
Security Interests . Grantor agrees not to sell or assign its
respective interests in, or grant any license under (other than
granting any license in the ordinary course of business), the
Trademarks without the prior written consent of Grantee.
8. Duties of Grantor .
Grantor shall have the duty to the extent desirable in the conduct
of Grantor’s business and consistent with Grantor’s
current business practices or Grantor’s reasonable business
judgment: (i) to prosecute diligently any trademark
applications or registrations or service mark applications or
registrations that are part of the Trademarks pending as of the
date hereof or thereafter until the termination of this Agreement;
(ii) to make applications for trademarks and service marks as
Grantor deems appropriate; (iii) to take reasonable steps to
preserve and maintain all of Grantor’s rights in the
trademark and service mark applications and trademark and service
mark registrations that are part of the Trademarks
(iv) to
