EXHIBIT 10.10.1
AMENDMENT TO TECHNOLOGY TRANSFER AGREEMENT
This Amendment to Technology Transfer Agreement (the "Amendment
Agreement") is made and entered into as of this 18th day of March 1997 by and
between Rae Technology, LLC, a California corporation ("Rae") and NetObjects
Inc., a Delaware corporation ("NetObjects").
R E C I T A L S
WHEREAS, Rae and NetObjects are parties to a Technology Transfer
Agreement dated as of February 2, 1996, a copy of which is attached hereto as
Exhibit A (the "Technology Transfer Agreement");
WHEREAS, NetObjects desires to enter into an Agreement and Plan of
Merger (the "Merger Agreement") with, INTER ALIA, International Business
Machines Corporation on substantially the terms set forth in that draft Merger
Agreement of March 16, 1997;
WHEREAS, a condition to the Merger Agreement is the effectiveness of
certain amendments to the Technology Transfer Agreement;
WHEREAS, Rae and NetObjects each believe that amendment of the
Technology Transfer Agreement is in their respective best interests and desire
to amend the Technology Transfer Agreement in the manner set forth herein.
NOW, THEREFORE, for good and valuable consideration, including the
share issuance contemplated by the Merger Agreement, the receipt and adequacy of
which are hereby acknowledged, the parties hereby agree as follows:
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A G R E E M E N T
1. EFFECTIVENESS EFFECT.
Effective immediately prior to the Effective Time (as defined in the
Merger Agreement), the Technology Transfer Agreement shall be amended as set
forth in Section 2 of this Amendment Agreement. Upon the closing of the Merger,
this Amendment Agreement shall be effective as of March 18, 1997 for all
purposes. Except as specifically set forth herein, the terms of the Technology
Transfer Agreement shall remain unmodified and in full force and effect.
2. AMENDMENT.
(a) The second recital to the Agreement shall be amended in full to
read as follows:
"WHEREAS, to achieve the business objectives of the parties and
to permit full implementation of the "Solo Technology" by Transferee,
the parties now desire to amend and restate the Former Agreement,
among other things, to provide for an assignment and transfer of all
of Transferor's rights, title and interests in and to the "Solo
Technology" to Transferee, with Transferee granting back to Transferor
a worldwide, perpetual, royalty-free, non-assignable, non-exclusive
license, with right of sublicense, in the Field of Use (as hereinafter
defined) with respect to all of the transferred technology and a
limited, nonexclusive, nontransferable license in the Field of Use
with respect to Transferee's modification of the "Solo Technology" for
the sole purpose of developing and marketing software applications for
the stand-alone Personal Information Management (PIM) market; and"
(b) Section 2(c) of the Agreement shall be amended in full to read as
follows:
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(c) "Intellectual Property Rights" shall mean all Confidential
Information and, whether or not the following constitute Confidential
Information, all of Transferor's United States and foreign copyrights,
know-how, patents, licenses, patent applications, inventions, trade
secrets, formulas, algorithms, processes, methodologies, designs,
schematics, diagrams and the like pertaining to the Technology, or the
Resulting Technology as the case may be; PROVIDED, HOWEVER, that the
Intellectual Property Rights shall not include any trademark rights
relating to the trademark "Solo" or any other trademarks of Transferor.
(c) Section 2(d) of the Agreement shall be amended in full to read as
follows:
(d) "Field of Use" shall mean all commercial applications of the
Technology and the related Technical Information and Intellectual Property
Rights solely to derive or create Transferor's existing personal
information manager programs and successor versions and releases thereof,
which are single user software programs primarily intended to be used by
individuals to manage personal data such as personal contacts, events,
schedules, tasks, projects, notes, pictures and lists of documents, files
and other personal information.
(d) Section 2(e) of the Agreement shall be amended in full to read as
follows:
(e) "Resulting Solo-N Technology" shall mean all the results of
the research, development and engineering work performed by Transferee
after the effective date of the Amended Agreement, February 2, 1996, up to
December 31, 1998 with respect to the Technology as it existed on the
effective date of the Former Agreement, including, without limitation, all
derivative works, modifications, improvements, advanced software programs,
patentable inventions or copyrightable material or any combination thereof
that will allow commercial exploitation of the Technology in the Field of
Use.
(e) Section 3(d) of the Agreement shall be amended in full to read as
follows:
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(e) Transferee hereby grants to Transferor exclusively in the
Field of Use a non-transferable, worldwide, royalty-free, perpetual,
non-exclusive, non-assignable, right and license, with right of
license to Transferor's end user customers (both directly and through
resellers), to use and reproduce the Technology and the Intellectual
Property Rights, Confidential Information, Technical Information and
Business Records related thereto, and to prepare derivative works from
(including, but not limited to, the Resulting Solo-R Technology) make,
use, and, except with respect to source code, to disclose, perform,
display, sell, offer to sell, identify and distribute (both directly
and through resellers) computer products incorporating the same to be
used solely by end users.
(f) Section 3(f) of the Agreement shall be amended in full to read as
follows:
(f) Transferee hereby grants to Transferor exclusively in the
Field of Use a nontransferable, worldwide, royalty-free, perpetual, non-
exclusive, non-assignable, right and license, with right of sublicense to
Transferor's resellers and end user customers, to use the trademarks "Solo"
or "S.O.L.O." and the goodwill associated therewith solely to identify the
Technology, the Resulting Solo-N Technology and the Resulting Solo-R
Technology in the products of Transferor incorporating the same; PROVIDED,
HOWEVER, that Transferor shall only use such marks to identify products
that are of comparable quality to the products of Transferee incorporating
the Technology.
(g) Section 5(b) of the Agreement shall be amended in full to read as
follows:
(b) Subject to Section 5(a), title and ownership to the
Resulting Solo-R Technology in the Field of Use and the Intellectual
Property Rights related thereto shall reside in Transferor.
(h) Section 7(a) of the Agreement shall be amended in full to read as
follows:
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(a) All derivative works, modifications and improvements to the
Technology and all inventions of whatsoever kind or nature incorporating or
otherwise utilizing any of the Intellectual Property Rights related to the
Technology developed by Transferee subsequent to the date of this Amended
Agreement, including, but not limited to, the Resulting Solo-N Technology,
shall be owned by Transferee; provided that all such derivative works,
modifications and improvements to the Technology developed by Transferee
subsequent to the date of this Amended Agreement, February 2, 1996, through
December 31, 1998 shall be licensed to Transferor pursuant to the
provisions of Section 3(e) hereof.
(i) Section 12 of the Agreement shall be amended in full to read as
follows:
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"This Amended Agreement and all of the terms hereof shall be
binding upon and inure to the benefit of the parties hereto and their
respective successors and assigns."
3. CORRECTION.
With effect from and after the execution of this Amendment Agreement,
the second sentence of Section 3(a) of the Agreement shall be revised by
substituting "Transferee" for the second reference to "Transferor".
4. GENERAL.
The Technology Transfer Agreement, as amended by this Amendment
Agreement, constitutes the entire agreement between the parties relating to its
subject matter and supersedes all prior or contemporaneous oral or written
agreements and understandings between the parties. No modification of the
Agreement or this Amendment Agreement shall be binding on either party unless in
a writing signed by both parties. International Business Machines Corporation
is an express beneficiary of this Amendment Agreement. This Amendment Agreement
shall be governed by and construed in accordance with the laws of the State of
California, excluding those laws that direct the application of the laws of
another jurisdiction.
IN WITNESS WHEREOF, this Amendment Agreement is executed as of the
date and year first above written.
RAE TECHNOLOGY, LLC, NETOBJECTS, INC.
as successor-in-interest to
Rae Technology, Inc.
By:__________________ By:_____________________
Its:_________________ Its:____________________
