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EXHIBIT 10.8
ASSET CONTRIBUTION AND RECEIVABLES SETTLEMENT AGREEMENT
THIS ASSET CONTRIBUTION AND RECEIVABLES SETTLEMENT AGREEMENT is entered
into as of January 1, 1999 (the "EFFECTIVE DATE"), by and between NETWORKS
ASSOCIATES, INC., a Delaware corporation ("NAI"), and XxXXXX.XXX CORPORATION., a
Delaware corporation and a wholly owned subsidiary of NAI ("XXXXXX.XXX").
RECITALS
WHEREAS, XxXxxx.xxx is a wholly-owned subsidiary of NAI; and
WHEREAS, XxXxxx.xxx is engaged in the field of internet-based software
sales and services, and the conduct of such other activities as may be
incidental or related thereto; and
WHEREAS, consistent with the resolutions of the NAI board of directors,
NAI is to transfer to XxXxxx.xxx certain intellectual property and related
research and development assets, including assets previously owned by the direct
and indirect wholly owned subsidiaries of NAI, as well as certain rights to
future revenues and tangible assets including cash; and
WHEREAS, NAI and XxXxxx.xxx desire such transfer of assets to qualify
as a tax free contribution of capital under Section 351 of the Internal Revenue
Code of 1986, as amended.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements, provisions and covenants contained herein, and for other good and
valuable consideration, the receipt and legal sufficiency whereof are hereby
acknowledged, the parties hereto further agree as follows:
ARTICLE I
TRANSFER OF ASSETS
SECTION 1.1 AGREEMENT TO TRANSFER AND TRANSFER OF INCLUDED ASSETS. Upon
and subject to the terms and conditions of this Agreement, as of January 1,
1999, NAI hereby assigns, agrees to assign, transfers, conveys and delivers to
XxXxxx.xxx all of its right, title, and interest in the following assets (the
"INCLUDED ASSETS"): all tangible personal property, intangible property, rights
and other assets owned by NAI and listed in Exhibit A attached hereto, as of the
Closing Date.
SECTION 1.2 FURTHER AGREEMENTS TO TRANSFER ASSETS. Following the Effective
Date of this Agreement, if the NAI board of directors approves a subsequent
assignment or transfer to XxXxxx.xxx of assets not included among the Included
Assets, and the XxXxxx.xxx board of directors approves the acceptance of such
subsequent assignment or transfer of assets (an "ADDITIONAL TRANSFER"), then
such Additional Transfer may be effected subject to the terms and conditions of
this Agreement. Such Additional Transfer may be effected by adding a list of the
assets to be included in the Additional Transfer in an addendum to Exhibit A,
and by the execution of an additional Xxxx of Sale substantially in the form
attached hereto as Exhibit B.
SECTION 1.3 LIABILITIES. NAI shall not transfer, and XxXxxx.xxx shall not
assume, any liabilities whatsoever as part of this Agreement, except for those
liabilities that may result directly from any of the Included Assets on Exhibit
A. Such liabilities resulting directly from any of the Included Assets on
Exhibit A shall be referred herein to as the "ASSUMED LIABILITIES".
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SECTION 1.4 CONSIDERATION FOR THE TRANSFER. As consideration for the
transfer described in Section 1.1 above, XxXxxx.xxx agrees to record such
transfer as a contribution of capital on behalf of NAI. NAI shall not receive
and XxXxxx.xxx shall not give any additional stock or other consideration in
consideration of this transfer.
SECTION 1.5 COOPERATION. NAI shall take all actions necessary to execute
any and all documents as may be reasonably requested by XxXxxx.xxx from time to
time to transfer the assets listed in Section 1.1 hereof and Exhibit A hereto
and otherwise fully vest or perfect in XxXxxx.xxx all right, title and interest
in and to such assets assigned pursuant to this Agreement.
ARTICLE II
REPRESENTATIONS AND WARRANTIES OF NAI
NAI hereby represents and warrants to XxXxxx.xxx as follows:
SECTION 2.1 INCORPORATION; AUTHORIZATION; ETC.
(a) Organization and Good Standing. NAI is a corporation duly
organized, validly existing and in good standing under the
laws of the jurisdiction of the State of Delaware. NAI has
full corporate power and authority to execute, deliver and
perform this Agreement. The execution, delivery and
performance of this Agreement by NAI has been duly authorized
by all necessary corporate and stockholder actions.
(b) Binding Effect. This Agreement has been duly executed and
delivered by NAI and, assuming the due execution and delivery
hereof by XxXxxx.xxx, constitutes the legal, valid and binding
obligation of NAI, enforceable against NAI in accordance with
its terms.
(a) Ownership of Assets. NAI has good, valid and marketable title
to all the Included Assets free and clear of all claims,
charges, liens, mortgages, security interests, pledges,
restrictions or encumbrances. NAI owns or possesses licenses
or other legally enforceable rights to use all intellectual
property related and other intangible assets which are
Included Assets.
ARTICLE III
REPRESENTATIONS AND WARRANTIES OF XXXXXX.XXX
XxXxxx.xxx hereby represents and warrants to NAI as follows:
SECTION 3.1 INCORPORATION; AUTHORIZATION; ETC.
(a) Organization. XxXxxx.xxx is a corporation duly organized,
validly existing and in good standing under the laws of the
State of Delaware. XxXxxx.xxx has full corporate power and
authority to execute, deliver and perform this Agreement. The
execution, delivery and performance of this Agreement by
XxXxxx.xxx has been duly authorized by all necessary corporate
actions on the part of XxXxxx.xxx.
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(b) Binding Effects. This Agreement has been duly executed and
delivered by XxXxxx.xxx, and, assuming the due execution and
delivery hereof by NAI, this Agreement constitutes the legal,
valid and binding obligation of XxXxxx.xxx, enforceable
against XxXxxx.xxx in accordance with its terms.
ARTICLE IV
ADDITIONAL COVENANTS AND MISCELLANEOUS PROVISIONS
SECTION 4.1 INDEMNIFICATION. In the event that the transfer of assets
effected by this Agreement fails to qualify as a tax free contribution of
capital under Section 351 of the Internal Revenue Code of 1986, as amended,
XxXxxx.xxx agrees to indemnify NAI against any tax liabilities, losses, claims,
or other damages that result from such failure.
SECTION 4.2 ACCOUNT RECONCILIATION. In connection with the assets being
contributed to XxXxxx.xxx pursuant to this Agreement, including but not limited
to those assets specified in Exhibit A hereto, and any other assets attributable
to the XxXxxx.xxx business as operated since January 1, 1996, NAI will make a
single, lump-sum, no interest payment net of all taxes to XxXxxx.xxx for
purposes of reconciling the accounts of each company. To the extent any revenues
are received by NAI after September 30, 1999 which are attributable to
XxXxxx.xxx assets or the XxXxxx.xxx business, NAI shall make a lump-sum payment
without interest to XxXxxx.xxx on a quarterly basis thereafter.
SECTION 4.3 COMPLIANCE WITH BULK SALES LAWS. The parties hereby waive
compliance with the bulk sales law and any other similar laws in any applicable
jurisdiction in respect of the transactions contemplated by this Agreement,
including, without limitation, any applicable state tax law that may require
notification of state taxing authorities and related actions in respect of bulk
sales of assets outside of the ordinary course of business.
SECTION 4.4 NOTIFICATION OF CERTAIN MATTERS. NAI shall promptly notify
XxXxxx.xxx, or XxXxxx.xxx shall promptly notify NAI:
(a) if, subsequent to the date of this Agreement and prior to the
Closing Date, it becomes aware of the occurrence of any event
or the existence of any fact that renders any of the
representations and warranties made in Article II and III,
respectively, inaccurate or untrue in any material respect;
(b) of any notice or other communication from any third party
alleging that the consent of such third party is or may be
required in connection with the transactions contemplated by
this Agreement; or
(c) of any notice or other communication from any governmental
authority in connection with the transactions contemplated
hereby.
SECTION 4.5 FURTHER ASSURANCES. Each party hereto shall execute, deliver,
file and record, or cause to be executed, delivered, filed and recorded, such
further agreements, instruments and other documents, and take, or cause to be
taken, such further actions, as the other party hereto may reasonably request as
being necessary or advisable to effect or evidence the transactions contemplated
by this Agreement.
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SECTION 4.6 ACCESS. The parties hereto will allow each other reasonable
access to the books and records of one another relating to the Included Assets
and the Assumed Liabilities, and to personnel having knowledge of the
whereabouts and/or contents thereof, for legitimate business reasons, such as
the preparation of tax returns or the defense of litigation. The requesting
party will hold in confidence all confidential information identified as such
by, and obtained from, the disclosing party or any of its officers, agents,
representatives or employees.
SECTION 4.7 GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with federal law as it applied to patents, copyrights
and trademarks and in accordance with the laws of the State of California as
applied to contracts entered into and to be performed entirely within the State
of California.
SECTION 4.8 THIRD PARTY BENEFICIARIES. Nothing in this Agreement is
intended, nor shall it be constructed, to confer any rights or benefits upon any
person (including, but not limited to, any employee or former employee of NAI)
other than the parties hereto.
SECTION 4.9 ENTIRE AGREEMENT. This Agreement and the schedules and
Exhibits hereto contain the entire agreement between the parties with respect to
the transfer of NAI assets to XxXxxx.xxx, and constitutes the complete, final
and exclusive embodiment of the parties agreement with respect to that subject
matter and supersedes all prior agreements whether written or oral which may
have been entered into by the parties on the subject matter.
SECTION 4.10 SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon
and inure to the parties hereto and their respective successors and assigns,
provided, however, that no party hereto will assign its rights or delegate its
obligations under this Agreement without the express written consent of the
other parties hereto except that XxXxxx.xxx may, upon notice to the other
parties hereto, assign its rights under this Agreement to any one or more of its
affiliates so long as such assignee or assignees assumes all of XxXxxx.xxx's
liabilities and obligations hereunder.
SECTION 4.11 AMENDMENT. No change, modification or amendment of this
Agreement shall be valid or binding on the parties unless such change or
modification shall be in writing signed by the party or parties against whom the
same is sought to be enforced.
Executed as of January 1, 1999
BY:
NETWORKS ASSOCIATES, INC. XxXXXX.XXX CORPORATION
0000 Xxxxxxx Xxxxxx 0000 Xxxxxx Xxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000 Xxxxx Xxxxx, Xxxxxxxxxx 00000
By: /S/ XXXXXXX XXXXX By: /S/ XXXXXXX XXXXXXX
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Name: Xxxxxxx Xxxxx Name: Xxxxxxx Xxxxxxx
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Title: Chief Financial Officer Title: Chief Executive Officer
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EXHIBIT A
TO THE ASSET CONTRIBUTION AGREEMENT
ASSETS TO BE TRANSFERRED
Networks Associates, Inc. ("NAI") hereby transfers to XxXxxx.xxx
Corporation all tangible personal property, intangible property, rights and
other assets listed on this Exhibit A which prior to the Closing Date were owned
by NAI:
o The co-host agreements and other agreements to which NAI is party which
relate specifically to the consumer e-commerce business [including
those agreements with Tesserae, Computer Literacy, Visto, and
Xxxxxx.xxx (formerly Xxxxxxxx.xxx)].
o XxXxxx.xxx customer database and subscriptions (defined as customers
who have registered for evaluation versions of retail products such as
Clinic, Oil Change, or retail SecureCast).
o Revenue attributable to XxXxxx.xxx advertising and sponsorship
agreements
o Revenue attributable to co-host agreements without a retail product
distribution arrangement (co-hosts with a retail product distribution
component shall have a royalty to be decided).
o NAI hereby assigns, transfers and sets over, unto XxXxxx.xxx, its
successors, legal representatives and assigns, its entire right, title
and interest in, to and under the said inventions listed below, and the
said United States application and all divisions, renewals and
continuations thereof, and all Patents of the United States which may
be granted thereon and all reissues and extensions thereof; and all
applications for industrial property protection, including, without
limitation, all applications for patents, utility models, and designs
which may hereafter be filed for said invention in any country or
countries foreign to the United States, together with the right to file
such applications and the right to claim for the same the priority
rights derived from said United States application under the Patent
Laws of the United States, the International Convention for the
Protection of Industrial Property, or any other international agreement
or the domestic laws of the country in which any such application is
filed, as may be applicable; and all forms of industrial property
protection, including, without limitation, patents, utility models,
inventors' certificates and designs which may be granted for said
inventions in any country or countries foreign to the United States and
all extensions, renewals and reissues thereof.
NAI MATTER SERIAL NO. XXX. NO. TITLE STATUS FILING ISSUE INVENTOR(S) TYPE
---------- ---------- -------- ----- ------ ------- ------ ----------- ----
DATE DATE
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US
98.017.01 09/208,735 Method and System for Pending 12/8/98 Sampath, Basic
Maintaining and Xxxxxxxxxxxxxxx,
Configuring a Personal Xxxxxxxxx,
Computer Katchapalayam,
US Kannan
98.019.01 09/248,115 Method and Apparatus for Pending 2/11/99 Sampath, CIP of
Securing Software Xxxxxxxxxxxxxxx, 09/208,735
Distributed Over a Network Kannan,
Revashetti,
Katchapalayam
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98.020.01 US Method and System for Pending 3/16/99 Xxxxxxxxxxxxxxx, CIP of
09/270,107 Processing Events Related to Kannan, 09/248,115
a First Type of Browser from Sampath,
a Second Type of Browser Katchapalayam
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EXHIBIT B
XXXX OF SALE
Pursuant to that certain Asset Contribution and Receivables Settlement
Agreement dated as of January 1, 1999 (the "Asset Contribution Agreement"), by
and among Networks Associates, Inc., a Delaware corporation, and XxXxxx.xxx
Corporation, a Delaware corporation, for good and valuable consideration,
receipt of which is hereby acknowledged, Networks Associates Inc. does hereby
convey, assign, transfer and deliver to XxXxxx.xxx Corporation good, valid and
marketable title to the Included Assets free and clear of any and all mortgages,
pledges, leases, licenses, charges, liens, encumbrances and defects, other than
the Assumed Liabilities, which XxXxxx.xxx Corporation hereby assumes.
Capitalized terms used, but not defined herein, shall have the meanings
described thereto in the Asset Contribution Agreement.
IN WITNESS WHEREOF, the parties have caused this Xxxx of Sale to be
duly executed effective as of January 1, 1999.
NETWORKS ASSOCIATES INC.
/s/ XXXXXXX XXXXX
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By: Xxxxxxx Xxxxx
Title: Vice President and Chief
Financial Officer
XxXXXX.XXX CORPORATION
/s/ XXXXXXX XXXXXXX
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By: Xxxxxxx Xxxxxxx
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Title: Chief Executive Officer
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