EXHIBIT 10.45
FIRST AMENDMENT TO MARKETING AND DISTRIBUTION AGREEMENT
This First Amendment to Marketing and Distribution Agreement ("Amendment")
is made as of December ___, 1999 by and between AVANTGO, INC. ("AvantGo") and
MICROSOFT CORPORATION ("Microsoft").
AMENDMENT
1. Amendment.
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1.1 A new Section 1.13 shall be added to the Agreement to read as
follows:
1.13 "AvantGo Trademarks" shall have the meaning provided in Section 2.8.
1.2 A new Section 2.8 shall be added to the Agreement to read as
follows:
2.8 AvantGo hereby grants to Microsoft a non-exclusive, royalty-free,
fully paid up, worldwide right and license to use the AvantGo
trademarks identified on Exhibit IV, attached hereto (the "AvantGo
Trademarks"), in Windows CE for the Palm-size PC, known under the
internal Microsoft confidential code-name "Rapier" and currently
planned to be released under the name Windows for Pocket PC
Professional Edition 2000 and Windows for Pocket PC Standard Edition
2000 (hereinafter "the Product"), and in connection with the
marketing, sale, and distribution of the Product. Microsoft
acknowledges that AvantGo will own the AvantGo Trademarks.
Microsoft's use of the AvantGo Trademarks shall inure solely to the
benefit of AvantGo.
1.3 Section 5.3 shall be deleted in its entirety and replaced with the
following:
5.3 Obligations Upon Termination. Articles 1, 2.1 (only to the extent
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the grant under Article 2.1 is irrevocable pursuant to Article 6
hereof), 2.2, 2.6, 2.7, 2.8, 6.3, 7, 8, 9 and 10 and all payment
obligations incurred prior to termination, shall survive the
expiration or termination of this Agreement.
1.4 A new Section 6.3 and 6.4 shall be added to the Agreement to read as
follows:
6.3 In the event that Microsoft includes a web home page on the Product
to advertise and enable access to file AvantGo service and such web
home page contains the logos and trademarks of Xxxxxx.xxx LLC and
Times Company Digital (collectively referred to as "Content
Providers") identified in Exhibit V, then AvantGo warrants that
AvantGo, or an agent or licensee of AvantGo approved by Microsoft in
writing, shall have valid and effective agreements with each of the
Content Providers such that each agreement and Content Provider (i)
states that the Content Providers will provide content of such
Content Provider to end users of the Product through June 30, 2001;
(ii) licenses the Content Provider logos and trademarks to Microsoft
for inclusion in the default homepage of the Product worldwide,
subject to Content Provider's prior review and approval; (iii)
represents and warrants that the logos and trademarks do not
infringe any third party trademark rights; and (iv) directly
indemnifies Microsoft for any claims brought against Microsoft that
the Content Provider logos and trademarks infringe or misappropriate
any rights of a third party anywhere in the world.
6.4 In the event that Microsoft includes a web home page on the Product
to advertise and enable access to the AvantGo service and such web
home page contains one or more logos or trademarks of a Sony entity,
then AvantGo warrants that it shall have valid and effective
agreements with Sony Online Entertainment, Inc. (hereinafter "Sony
Online") and Hilltop New Media, Inc. d/b/a Columbia TriStar
Interactive (hereinafter "Columbia TriStar") stating that Sony
Online and Columbia TriStar will provide its content to end users of
the Product through June 30, 2001,
however, in the event that Sony Online discontinues to deliver its
content, this will not constitute a warranty breach as long as one
or more Sony entities provide content through June 30, 2001.
1.5 Section 8.1 shall be deleted in its entirety and replaced with the
following:
8.1 AvantGo warrants; (i) that AvantGo has not granted and will not
grant any rights in the Software or the AvantGo Trademarks to any
third party which grant is inconsistent with the rights granted to
Microsoft in this Agreement; (ii) to the best of AvantGo's
knowledge, the Software does not infringe any patent; (iii) that
neither the Software nor the AvantGo Trademarks infringe any
trademark, trade secret, copyright or other proprietary right held
by a third party, provided that Microsoft agrees that AvantGo shall
not be responsible for any settlement made by Microsoft which would
require an admission of AvantGo's breach of subsections (ii) and
(iii) without AvantGo's written permission, whose permission shall
not be unreasonably withheld. EXCEPT FOR THE EXPRESS WARRANTIES
STATED ABOVE, AVANTGO DISCLAIMS ALL WARRANTIES ON SOFTWARE AND
SERVICES FURNISHED HEREUNDER INCLUDING ALL IMPLIED WARRANTIES OF
MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR A PARTICULAR USE.
1.6 Section 8.2 shall be deleted in its entirety and replaced with the
following:
8.2 AvantGo shall, at its expense and Microsoft's request, defend any
claim or action brought against Microsoft, and Microsoft's
subsidiaries, affiliates, directors, officers, employees, agents and
independent contractors, to the extent such action is based upon a
claim that the Software or AvantGo Trademarks infringe or violate
any patent, copyright, trademark, trade secret or other proprietary
right of a third party; and AvantGo shall indemnify and hold
Microsoft harmless from and against any costs, damages, and fees
reasonably incurred by Microsoft, including but not limited to fees
of attorneys and other professionals, that are attributable to such
claim; provided that: (i) Microsoft gives AvantGo reasonably prompt
notice in writing of any such claim or action and permits AvantGo,
to answer and defend the claim or action; (ii) Microsoft provides
AvantGo information, assistance and authority, at AvantGo's expense,
to assist AvantGo in defending the claim or action; and (iii)
Microsoft shall not be responsible for any settlement made by
AvantGo without Microsoft's written permission, which permission
shall not be unreasonably withheld. AvantGo shall have no indemnity
liability under this Section to the extent that the claim or lawsuit
is based upon Microsoft's modification of the Software. Microsoft
shall have the right to employ separate counsel at its own expense
and participate in the defense of any claim or action. In the event
Microsoft and AvantGo agree to settle a claim or action, AvantGo
agrees not to publicize the settlement without first obtaining
Microsoft's written permission, which permission will not be
unreasonably withheld.
1.7 The "Software" defined on Exhibit I shall be amended to include the
AvantGo desktop Mobile Application Link Software, also known as
"AvantGo Connect."
1.8 New Exhibits IV and V shall be added to the Exhibit in the form
attached to this Amendment.
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2. Effect of Amendment. This Amendment shall amend, modify and supersede, to the
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extent of any inconsistencies, the provisions of the Agreement. Except as
expressly affected by this Amendment, the Agreement shall remain in full
force and effect. Capitalized terms used in this Amendment and not otherwise
defined shall have the meaning ascribed to such terms in the Agreement.
IN WITNESS WHEREOF, the parties have executed this Amendment as of the date
set forth above. All signed copies of this Amendment shall be deemed originals.
This Amendment does not constitute an offer by MICROSOFT. This Amendment shall
be effective upon execution on behalf of AvantGo and Microsoft by their duly
authorized representatives.
MICROSOFT CORPORATION AVANTGO, INC.
/s/ Xxxxx Xxxx /s/ Xxxxx Xxx
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(Sign) (Sign)
Xxxxx Xxxx Xxxxx Xxx
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Name (Print) Name (Print)
Director of Marketing CEO
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Title Title
1/25/00 12/25/99
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Date Date
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