EXHIBIT 10.8
SOFTWARE LICENSE AND TECHNOLOGY
ASSIGNMENT AGREEMENT
This Software License and Technology Assignment Agreement ("Agreement") is
entered as of November 25, 1996 ("Effective Date"), by and between Placeware,
Inc., a Delaware corporation ("Company") having its principal place of business
at 000 Xxxxxx Xxx, Xxxxx 000, Xxxx Xxxx, Xxxxxxxxxx 00000, and Xerox
Corporation, a New York corporation ("Xerox") having its principal place of
business at 000 Xxxx Xxxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxx 00000.
A. License and Assignments from Xerox.
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1. Xerox hereby conveys to the Company (i) a non-exclusive, perpetual,
sublicensable (except for patents), worldwide license to fully exploit the
inventions referenced in Attachment A or B and any intellectual property rights
(whether or not patented) and confidential information and know-how related
thereto (specifically no right to sublicense any patent is granted, unless the
patent is sublicensed in support of licenses with respect to products or code of
the Company where the licensees may have the right with respect to such code or
products to use, create, market and/or otherwise exploit such code, products and
derivative works thereof or where said sublicense is needed in connection with
said license in order to utilize said code, products or derivative works) and
(ii) all right, title and interest anywhere in the world to the Software and
other Placeware Project Output referred to in Attachment B and any non-patent
intellectual property rights and confidential information and know-how related
thereto ((i) and (ii) shall collectively comprise the "Rights"). Xerox also
hereby conveys to the Company all right, title and interest in and to the
equipment and, to the extent transferable, the associated software set forth in
Attachment C (these have been used by the personnel working on the "placeware"
project) on an "as-is" basis. Xerox represents and warrants that it has the
full power, authority and right to enter and perform this Agreement and to make
the transfers and licenses herein without violation of any rights of or
obligations to third parties granted in writing by Xerox. The Company agrees
that Xerox makes no other representations and warranties with regard to the
Rights or the equipment and software in Attachment C. In addition, Xerox will
not provide indemnification of the Company with regard to the claims of others
relating to the Rights or the equipment and software in Attachment C. Xerox
agrees to assist the Company, at the Company's expense, in every proper and
reasonable way to further document, evidence and perfect the foregoing rights
and assignments.
B. Licenses and Compensation from Company.
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1. Xerox will receive a non-exclusive license to the "placeware" source
code transferred by Xerox to the Company at the Effective Date (the "Snapshot
Code") only for internal use and internal non-commercial research purposes. In
the event of bankruptcy (which, if involuntary, is not dismissed within 120
days) or dissolution or winding-up of the Company without a successor within two
years from the Effective Date, Xerox will have the right to distribute or grant
sublicenses to the Snapshot Code.
2. Xerox shall receive 455,000 shares of Series A Preferred Stock in the
Company ("Shares"), representing approximately 10% of the Company's fully-
diluted shares outstanding following the Series A financing. The Company hereby
makes to Xerox the representations and warranties set forth in Section 2 (other
than Section 2.10) of the Series A Preferred Stock Purchase Agreement.
3. Xerox shall have a royalty-free, perpetual, binary, internal use
license for Company's binary versions of the Snapshot Code (including derivative
works based substantially on the Snapshot Code) that are made generally
commercially available by Company within four years of the Effective Date ("New
Versions"). The Company may provide support for the New Versions on its standard
rates and terms.
4. Xerox will receive $21,047.52 for the equipment to be conveyed to the
Company as specified in Attachment C.
5. Xerox will be entitled to obtain a right to distribute any New Version
directly or for OEM/embedded use in Xerox products on the same terms, conditions
and pricing to Xerox for such New Version under such arrangements as the most
favorable terms, conditions and pricing (taken as a whole) that the Company
grants to any similarly situated third party for such rights with respect to
such New Version.
6. Xerox will receive royalties based upon Net Revenues from New Versions
according to the following formula:
a. 2% of Net Revenues until total accrued and/or paid royalties to
Xerox since the Effective Date reach a cap of $1,000,000.
b. The royalties shall begin to accrue the earlier of (1) the first
day of the fiscal quarter following the Company's first fiscal quarter of
realizing net income from operations or (2) two and a half (2 1/2) years after
the Effective Date of this Agreement. Royalties are to be paid to Xerox
quarterly and within forty-five (45) days after the end of each fiscal quarter
for which royalties are due.
c. For purposes of this Agreement, "Net Revenues" shall mean the
amounts actually received by the Company from distribution or license of New
Versions less any deductions common in the industry including, by way of
example, shipping, handling, insurance, duties, taxes, bad debts and returns
(and reasonable reserves therefor), credits, refunds, rebates, discounts,
allowances, and price protections.
d. Xerox will be entitled to a royalty-free, nonexclusive, grant-back
patent license to the Company's improvements of any patent licensed from Xerox
hereunder.
C. Marketing/Endorsement. A mutually agreed upon press release will be
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jointly released at the Company's selected product launch and shall include a
quote from a Xerox executive.
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D. Standard Investor Representations and Covenants.
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1. Xerox hereby represents and warrants to the Company that:
a. The Shares (including for purposes of this Section D, all
underlying Common Stock or securities that may be issued with respect to any
Shares) will be acquired by Xerox for investment for Xerox' own account, not as
a nominee or agent, and not with a view to the resale or distribution of any
part thereof, and Xerox has no present intention of selling, granting any
participation in, or otherwise distributing such securities. By executing this
Agreement, Xerox further represents that it does not have any contract,
undertaking, agreement or arrangement with any person to sell, transfer or grant
participations to such person or to any third person, with respect to any of the
Shares.
b. Xerox is an experienced investor in securities of development-stage
companies and acknowledges that it is able to fend for itself, can bear the
economic risk of its investment and has such knowledge and experience in
financial or business matters that Xerox is capable of evaluating the merits and
risks of the investment in the Shares.
c. Xerox understands that the Shares it is acquiring are characterized
as "restricted securities" under the U.S. federal securities laws inasmuch as
they are being acquired from the Company in a transaction not involving a public
offering and that under such laws and applicable regulations such securities may
be resold without registration under the U.S. Securities Act of 1933, as amended
(the "Act") only in certain limited circumstances. In this connection, Xerox
represents that it is familiar with Rule 144 promulgated pursuant to the Act, as
presently in effect, and understands the resale limitations imposed thereby and
by the Act.
d. Without in any way limiting the representations set forth above,
Xerox further agrees not to make any disposition of all or any portion of the
Shares unless and until:
i. there is then in effect a registration statement under the Act
covering such proposed disposition and such disposition is made in accordance
with such registration statement; or
ii. (1) Xerox shall have notified the Company of the proposed
disposition and shall have furnished the Company with a detailed statement of
the circumstances surrounding the proposed disposition, and (2) if reasonably
requested by the Company, Xerox shall have furnished the Company with an opinion
of counsel, reasonably satisfactory to the Company, that such disposition will
not require registration of such shares under the Act.
e. It is understood that the certificates evidencing the Shares may
bear one or all of the following legends:
i. "These securities have not been registered under the Securities
Act of 1933, as amended (the "Act"). They may not be sold, offered for sale,
pledged or hypothecated in the absence of a registration statement in effect
with respect to the securities
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under such Act or, if requested by the Company, an opinion of counsel
satisfactory to the Company that such registration is not required or unless
sold pursuant to Rule 144 of such Act."
ii. Any legend required by the laws of any state of the United
States.
2. Xerox hereby agrees that it shall not, to the extent and during the
period of duration specified by the Company and an underwriter of Shares (or
other securities) of the Company, sell or otherwise transfer or dispose of
(other than to transferees who agree to be similarly bound) any securities of
the Company (other than securities already registered) during a reasonable and
customary period of time not to exceed 180 days, as agreed to by the Company and
the underwriters, following the Effective Date of a registration statement of
the Company filed under the Act. In order to enforce the foregoing covenant, the
Company may impose stop-transfer instructions with respect to the Shares until
the end of such one hundred eighty (180) day period.
E. Confidentiality.
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1. Xerox agrees that the Snapshot Code and Other Placeware Project Output
referred to in Attachment B and any underlying information, concepts and
algorithms are the confidential information of the Company ("Confidential
Information"). Except as licensed or expressly authorized herein, Xerox will
hold in confidence and not use or disclose such Confidential Information without
the express written approval of the Company. Notwithstanding the above, if
Xerox is going to access the Snapshot Code, it shall be required to keep the
Snapshot Code on a segregated, secure server and allow only restricted access to
Xerox employees, consultants or Xerox Company Personnel on a strictly "need-to-
know" basis provided Xerox keeps a log of such use and any such employees or
consultants agree to be bound by the confidentiality obligations herein. A
"Xerox Company Personnel" shall mean an employee or a consultant providing
services for a company in which Xerox directly or indirectly has majority
ownership including Fuji Xerox Limited and Rank Xerox Limited.
a. The obligations of Xerox recited in E(1) hereof shall terminate
with respect to any particular portion of such Confidential Information when and
to the extent that it is or becomes:
i. Part of the public domain through no fault of Xerox;
ii. Legally disclosable to anyone by a third party who receives
such Confidential Information from the Company;
iii. Independently developed by Xerox without any reference to the
Software.
iv. Known to Xerox free of any obligation of confidence or non-
use.
2. In no event shall the obligations of Xerox extend beyond five years for
concepts and algorithms embedded in the source code of the Software, however,
Xerox agrees not to make available any part of the Snapshot Code to a third
party unless Section E(1)(a) applies to same.
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F. Warranty Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT,
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NEITHER PARTY MAKES ANY WARRANTIES TO ANY PERSON OR ENTITY WITH RESPECT TO THE
RIGHTS, LICENSED TECHNOLOGY, SNAPSHOT CODE, NEW VERSIONS OR ANY DERIVATIVES
THEREOF AND EACH PARTY DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING WITHOUT
LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT.
G. Limitation of Liability. EXCEPT AS OTHERWISE PROVIDED BELOW, AND
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NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR OTHERWISE, NEITHER PARTY
SHALL BE LIABLE OR OBLIGATED UNDER ANY SECTION OF THIS AGREEMENT OR UNDER
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR
ANY SPECIAL, INDIRECT, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES, LOST
PROFITS OR LOST DATA.
H. Notices and Requests. All notices, consents, authorizations, and requests
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in connection with this Agreement shall be deemed given (i) five (5) days after
the day they are deposited in the U.S. air mails, postage prepaid, certified or
registered, return receipt requested; or (ii) four (4) days after they are sent
by air express courier, charges prepaid; and addressed as set forth above or to
such other address as a party so designates by written notice to the other.
I. Export Control. Xerox and the Company hereby agrees to comply with all
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export laws and restrictions and regulations of the Department of Commerce or
other United States or foreign agency or authority, and not to knowingly export,
or allow the export or re-export of any information or technology in violation
of any such restrictions, laws or regulations, or, without all required licenses
and authorizations, to Afghanistan, the People's Republic of China or any Group
Q, S, W, Y or Z country specified in the then current Supplement No. 1 to
Section 770 of the U.S. Export Administration Regulations (or any successor
supplement or regulations).
J. General. Neither this Agreement nor any license granted herein will be
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assignable, transferable or sublicensable by either party except as expressly
provided in this Agreement and except to a successor to substantially all that
party's assets or business. Except as otherwise expressly provided herein, any
provision of this Agreement may be amended and the observance of any provision
of this Agreement may be waived only with the written consent of the parties.
In any action or proceeding to enforce rights under this Agreement, the
prevailing party shall be entitled to recover costs and attorneys' fees. This
Agreement shall be construed and applied in accordance with the laws of the
State of California without regard to conflict of laws provisions. This
Agreement supersedes all proposals, oral or written, all negotiations,
conversations, or discussions between or among parties relating to the subject
matter of this Agreement and all past dealing or industry custom. If any
provision of this Agreement is held to be illegal or unenforceable, that
provision shall be limited or eliminated to the minimum extent necessary so that
this Agreement shall otherwise remain in full force and effect and enforceable.
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Xerox Corporation Inc. Coyote Hills Systems, Inc.
(Xerox) (Company)
_________________________________ _____________________________________
Signed Signed
_________________________________ _____________________________________
Printed Printed
_________________________________ _____________________________________
Title Title
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Exhibit A
Inventions
1. I-IP/950289 Low-Bandwidth Network Window System. Xxxx Xxxxx, Xxxxx Xxxxxx,
Xxxxx Xxxxxxx, Xxxx Xxxxxxx.
2. F-IP/950990 Jupiter Audio/Video Architecture: Secure Multimedia in Network
Places. Xxxxx Xxxxxx, Xxxx Xxxxx, Xxx Xxxxxxxxx Xxxxx Xxxxxxx.
3. A-IP/951514 Automated Access to Expertise. Xxxxxxx Xxxxx, Xxxxx Xxxxxxx,
Xxxxx Xxxxxx, Xxxxx Xxxxxxxx.
4. F-IP/921756, Software Video Compression for Teleconferencing, Xxx
Xxxxxxxxx.
F = Patent application filed.
A = Active; may still be filed
I = Inactive Status Recommended
Exhibit B
Technology
Software:
1) Java, C, and C++ "placeware" source code, providing shared Java
applications over a network in a web browser, with audio communications
between participants. This includes, without limitation, the code developed
by _________, _________, ___________, __________, and ____________ during
calendar year 1996 and third parties working with those developers.
2) C++ source code to implement video send/receive capability for the
Microsoft Windows version of the Jupiter client. This includes, without
limitation, code developed during 1995.
3) Developer's Guide, Administrator's Guide and API Reference Documentation
relating to the above.
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Other Placeware Project Output:
1) Business plan
2) Notes, presentations, video demo
3) Xerox Corporation's trademark application No. 75/160527. Xerox Corporation
does not have and, to the knowledge of the Office of the General Counsel of
Xerox, no Xerox company has any other trademark rights or applications
relating to the term "Placeware".
4) Internet domain name: xxxxxxxxx.xxx
Exhibit C
Equipment and Software [TO BE MODIFIED BY PLACEWARE]
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PURCHASED
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Asset No. Name Machine(s)*:
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Xxxx Xxxxx
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2B27346 SUN sparc 10 + b&w monitor + 64 mb + 400 mb disk
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Xxxxx Xxxxxx
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2B28985 Multimedia P133 w/2G disk & 32 MB Ram & 21" color monitor
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2B25384 . SUN Sparcstation 2 + b&w monitor + 64 mb + 400 mb disk
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2B25854 . SUN IPX + color monitor + 64 mb ram + 400 mb disk
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0X00000 . XXX Indy 000 XXx + 64 MB ram + 1G disk + color monitor + camera
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Connectix color camera
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2B26702 Powerbook 170
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2B26547 SUN sparc printer
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Xxxx Xxxxxxx
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2B28574 SUN Sparc-20 with color & xxxx-scale monitors, 1G disk, 96MB mem
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& hols
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2B28251 . Multimedia P90 with 20" color monitor, 1G+ disk, and 32MB mem
& software
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2B25097 . SUN Sparc IPX with xxxx-scale monitor, 400MB disk, 48MB mem
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Xxxx Xxxxx
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NEC Multisync XE 17
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Demo System
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2B25389 SUN Sparcstation 2 + 128 MB memory + 500 mb disk + Color Monitor
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2B25394 SUN Sparcstation 2 + 128 MB memory + 500 mb disk + Color Monitor
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Tape drive
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2B28737 Multimedia P133 w/2G disk & 32 MB Ram & 21" color monitor
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LOANED
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Asset No. Name Machine(s)*:
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Xxx Xxxxxxxx
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2B27510 Multimedia 486 PC with 15" color monitor & software
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2B28214 Multimedia P90 PC with 17" color monitor & software
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2B25853 SUN IPX with 17" color monitor
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2B25844 SUN Sparc 2 with color screen
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9600 Modem
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Connectix b&w camera
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2 color butcher cameras & 2 b&w butcher cameras.
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ISDN Combinet box & NT1
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Xxxxxxx Xxxxx
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2B28437 Multimedia P90 with 20" color monitor, 1G+ disk, and 32MB mem.
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2B28259 Multimedia P90 with 20" color monitor, 1G+ disk, and 32MB mem.
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ISDN Combinet box & NT1
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* Machines will be transferred with all resident software to the extent same
will not violate any rights of third parties.
1. Relocation of equipment and software is the responsibility of the Company.
2. "Loaned" equipment and software are loaned to the Company for so long as
Xxx Xxxxxxxx and Xxxxxxx Xxxxx, respectively, are employees of the Company
. Should they leave the employment of the Company their respective items
will be returned to Xerox. The Company is responsible for the maintenance
on loaned equipment
