EXHIBIT 10.2
ASSIGNMENT OF COPYRIGHTS AND TRADEMARK RIGHTS
THIS ASSIGNMENT OF COPYRIGHTS AND TRADEMARKS (this "AGREEMENT") dated
as of October 31, 2001 (the "EFFECTIVE DATE"), is entered into by and between
Broderbund Properties LLC ("BRODERBUND"), with offices located at 000 Xxxxxxx
Xxxxxxxxx, Xxxxxx, Xxxxxxxxxx 00000 and International Microcomputer, Inc.
("ASSIGNEE"), a California corporation with offices located at 00 Xxxxxxx Xxx,
Xxxxxx, Xxxxxxxxxx 00000.
RECITALS
WHEREAS, Broderbund is the owner of a certain software program which a
predecessor in interest of Broderbund's had developed, marketed, distributed and
sold under the name "Org Plus"; and
WHEREAS, Assignee desires to acquire from Broderbund all rights, title
and interest in such software program and trademarks related thereto so that
Assignee may market, distribute and sell such software program; and
WHEREAS, Broderbund desires to assign such rights to Assignee in
exchange for certain licenses to Assignee's products and other consideration;
NOW THEREFORE, in consideration of the mutual covenants contained
herein, the parties hereto agree as follows:
1. DEFINITIONS.
The following capitalized terms shall have the respective meaning set
forth below when used herein:
"ASSIGNED AGREEMENTS" means the contracts set forth in Exhibit A
attached hereto.
"CODE" means computer programming code. Except as otherwise specified,
Code shall include both object code and source code.
"COPYRIGHT INTERESTS" means the interests Broderbund or affiliate of
Broderbund owns, or has the right to assign, in copyrights in and to the
Products (other than the Generic Code), together with any other copyright
interests accruing by reason of international copyright conventions and any
moral rights pertaining thereto, including the right to xxx for, settle, or
release any past, present, or future infringement thereof.
"DOCUMENTATION" means written materials (and machine-readable text
subject to display and printout) that directly relate to and/or describe
particular Code.
"EXISTING LICENSES" means the end-user license agreements between
Broderbund and its end-user customers, which relate solely to copies of the
Products that have already been fully delivered and installed.
"GENERIC CODE" means the Code consisting of subroutines, if any, that
are currently part of the Product and used by Broderbund, its affiliates or
third parties in other products or for other purposes.
"OTHER INTERESTS" means the interests, other than the Copyright
Interests and the Trademark Interests, that Broderbund or any predecessor or
affiliate of Broderbund owns or have the right to assign in (a) any idea,
design, concept, technique, invention, discovery, or improvement, whether or not
patentable, but including patents, patent applications, trade secrets, and
know-how, that are embodied in or evidenced by the Products (excluding Generic
Code) or required to be used or practiced in order to exercise the rights and
licenses granted hereunder; and (b) pictorial, graphic, or audio/visual works,
including icons, screens, characters, data formats, and reports created as a
result of execution of the Products (excluding Generic Code), whether such
pictorial, graphic, or audio/visual works are created by use of the Products
alone or with other programming or through other means.
"PRODUCT(S)" means the forms of Code and Documentation listed in
Exhibit B attached hereto.
61
"PURCHASE PRICE" has the meaning ascribed thereto in Section 6.1
hereof.
"REGISTERED USER DATABASE" means the database of the names and other
information respecting registered users of the Product distributed by
Broderbund.
"TRADEMARK INTERESTS" means the interests Broderbund or any predecessor
or affiliate of Broderbund owns, or have the right to assign, in the United
States and foreign registered and common law trademarks and service marks set
forth in Exhibit C attached hereto, together with all other trademark or service
xxxx interests accruing by reason of international trademark conventions,
accompanied by the goodwill of all business connected with the use of and
symbolized by such marks including the right to xxx for, settle, or release any
past, present, or future infringement thereof or unfair competition involving
the same.
2. CONVEYANCE OF RIGHTS.
2.1 Copyright Interests. Subject to the payment of the Purchase Price
and the other terms and conditions set forth herein, Broderbund, for itself and
its affiliates, hereby transfers, grants, conveys, assigns, and relinquishes
exclusively to Assignee, in perpetuity, all of Broderbund's and its
predecessors' and affiliates' right, title, and interest in and to the Copyright
Interests.
2.2 Trademark Interests. Subject to the payment of the Purchase Price
and the other terms and conditions set forth herein, Broderbund, for itself and
its affiliates, hereby transfers, grants, conveys, assigns, and relinquishes
exclusively to Assignee, in perpetuity, all of Broderbund's and its
predecessors' and affiliates' right, title, and interest in and to the Trademark
Interests. Broderbund further transfers and assigns the right to file for and
obtain registrations of the Trademark Interests anywhere in the world with the
right to base priority on Broderbund's first date of use or on any application
and/or registration being assigned herein. Except as permitted under Article 5
hereof, Broderbund covenants not to use or display the Trademark Interests
anywhere in the world except by authorization of Assignee, and further covenants
not to contest or challenge the validity of the Trademark Interests, any
applicable registrations thereof or the ownership of the Trademark Interests by
Assignee.
2.3 License to Other Interests. As of the Effective Date, Broderbund,
to the extent of its right and power to do so, grants Assignee a worldwide,
nonexclusive, irrevocable, royalty-free, and assignable right and license,
together with the right to grant sublicenses, in and to the Other Interests, as
necessary for Assignee (or any person or entity acting with Assignee or under
its authority) to use, execute, copy, display, and perform and to distribute,
license, and sublicense internally and externally the Products.
2.4 License to Generic Code. As of the Effective Date, Broderbund, to
the extent of its right and power to do so, grants Assignee a worldwide,
nonexclusive, irrevocable, royalty-free, and assignable right and license in and
to the Generic Code, as necessary for Assignee (or any person or entity acting
with Assignee or under its authority) to use, execute, copy, display, and
perform and to distribute, license, and sublicense internally and externally the
Products.
2.5 Existing Contracts. Assignee agrees to cooperate with Broderbund,
at Broderbund's expense, to assist Broderbund in performing any obligations
remaining under any Existing Licenses.
3. ASSIGNMENT OF AGREEMENTS.
3.1 Condition of Assigned Agreements. Broderbund represents and
warrants, to the best of its knowledge, that (a) Assignee has simultaneously
been furnished true and complete copies of the Assigned Agreements, (b) the
Assigned Agreements are in full force and effect without material amendment or
waiver, and (c) there is and has been no act, event, or circumstance that, with
the lapse of time or the giving of notice as required, constitutes a material
breach or default under the terms of the Assigned Agreements.
3.2 Assignment and Assumption. Broderbund hereby assigns, transfers,
and conveys all rights and obligations under the Assigned Agreements to
Assignee, and Assignee assumes the obligation for performance of the terms of
the Assigned Agreements. Assignee shall perform the Assigned Agreements in
accordance with their terms, and shall make
62
all payments, if any, that become due and payable thereunder after the Effective
Date. Assignee shall have no right to any amounts previously paid to Broderbund
under any Assigned Agreement.
3.3 Support. Each party shall be responsible to support the Products
that it distributes.
4. DELIVERY AND ASSISTANCE.
4.1 Products. Assignee acknowledges that it is already in possession of
a master disk of the Products in the form delivered to Assignee under a Software
License Agreement between Assignee and Broderbund's predecessor in interest
dated as of October 2, 1998.
4.2 User Lists. Broderbund hereby transfers the Registered User
Database to Assignee which Assignee may use for purposes of marketing,
distribution and sale of the Products.
4.3 Cooperation. Broderbund shall provide reasonable cooperation to
Assignee (at Assignee's expense) to effect the transfer of ownership of the
Copyright Interests and Trademark Interests to Assignee.
4.4 Further Assurances. Each party hereto agrees that upon the other
party's reasonable request (and expense) it shall execute and deliver such
further conveyance agreements, and take such further action, as may be necessary
or desirable to evidence more fully the transactions described in this
Agreement. Broderbund agrees to provide Assignee (at Assignee's expense)
reasonable cooperation with respect to Assignee's filings for copyright and
trademark protection respecting the rights assigned hereunder. Notwithstanding
the foregoing, Assignee will bear all expenses (including attorney's fees)
associated with any filings for copyright and trademark protection.
5. RESERVATION OF RIGHTS AND LICENSES BY Broderbund.
5.1 Products. Broderbund hereby reserves and retains for its and its
affiliates' own benefit, and Assignee confirms upon Broderbund, the
nonexclusive, irrevocable, royalty-free right and license under the Copyright
Interests, Trademark Interests and Other Interests to make and use copies of the
Products only for purposes of sublicensing such copies, in object code form
only, pursuant to the warranty provision(s) of the Existing Licenses. Such
rights and licenses shall be perpetual. Nothing contained in this Section 5.1
shall be construed to allow Broderbund to copy, manufacture, distribute or sell
the Products to any person other than existing customers.
5.2 Archival Copies. Broderbund may make and retain additional but no
more than 25 copies of the Products for nonproductive archival purposes.
6. ASSIGNEE'S OBLIGATIONS; OTHER OBLIGATIONS
6.1 Assignee's Obligations. In consideration of the rights conveyed to
Assignee hereunder, Assignee shall execute the Software License and Distribution
Agreement, attached as Exhibit E dated October 31, 2001 and the Termination
Agreement attached as Exhibit F dated October 31, 2001. The execution of these
agreements is a condition precedent to the effectiveness of this Agreement and
the rights conveyed herein.
6.2 Other Obligation. As further consideration for the rights conveyed
and obligations assumed pursuant to this Agreement, each of the parties hereby
agrees to mutually release and forever discharge the other from any claims,
liabilities, damages, expenses, fees, indemnification obligations, or any other
amounts which either of them may owe the other relating to litigation between
Imageline, Inc. and Assignee. In entering into this agreement and making this
release, both parties expressly waive the provisions of Section 1542 of the
California Civil Code which provides as follows: "A general release does not
extend to claims which the creditor does not know or suspect to exist in his
favor at the time of executing the release, which if known by him, must have
materially affected his settlement with the debtor." Each party understands and
acknowledges the significance and consequences of waiving the provisions and
benefits of Section 1542, and
63
each specifically intends to waive both known and unknown claims under this
provision as well as under any similar federal or common law principle.
7. REPRESENTATION AND WARRANTIES; LIMITATIONS; INDEMNIFICATION.
7.1 Representations and Warranties. Broderbund represents and warrants
that (a) to the knowledge of Broderbund, the Copyright Interests, the Trademark
Interests, and the Other Interests, as heretofore exercised in connection with
Broderbund's business, do not infringe the rights of any other person or entity;
(b) to the knowledge of Broderbund, no claim of any such infringement or
violation has been threatened or asserted, and no such claim is pending against
Broderbund, its affiliates, or its end-user customers; (c) Broderbund has not
entered into any agreement (other than the Assigned Agreements), license (other
than the Existing Licenses), release, or order that currently or in the future
will restrict the right of Broderbund or Assignee to exploit the Products in any
way; and (d) the execution, delivery, and performance of this Agreement by
Broderbund do not and will not violate any security agreement, indenture, order,
or other instrument to which Broderbund is a party or by which it or any of its
assets is bound.
7.2 No Warranty. Notwithstanding anything to the contrary contained
herein, Broderbund makes no representation or warranty that it (a) owns or holds
rights in any Trademark Interests, Other Interests or the Registered User
Database or (b) owns or holds rights in any goodwill of any business connected
with the use of and symbolized by any Trademark Interests or Other Interests;
provided, however, that Broderbund hereby confirms to Assignee that it is not
aware, and knows of no reason that it should be aware, of any action or
threatened action which contests Broderbund's ownership of the Copyright
Interests, the Trademark Interests, the Other Interests or the Registered User
Database.
7.3 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT,
Broderbund MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT
TO THE PRODUCTS, COPYRIGHT INTERESTS, TRADEMARK INTERESTS, OTHER INTERESTS OR
THE REGISTERED USER DATABASE, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
THE LIABILITY OF EITHER PARTY TO THE OTHER UNDER ALL OF THE PROVISIONS OF THIS
AGREEMENT (OTHER THAN THE LIABILITY OF BRODERBUND TO ASSIGNEE UNDER SECTIONS 7.1
(a)) SHALL BE LIMITED TO DIRECT DAMAGES AND, EXCEPT AS PROVIDED IN THIS SECTION,
SHALL NOT EXCEED$100,000. IN NO EVENT WILL EITHER PARTY BE RESPONSIBLE TO THE
OTHER FOR INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES (INCLUDING LOST PROFITS)
EVEN IF THE OTHER PARTY HAS PREVIOUSLY BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
8. INDEMNIFICATION.
8.1 Broderbund Indemnification. Broderbund agrees to indemnify and hold
harmless Assignee, its successors and assigns, including any subsidiary,
officer, director, employee, agent, contractor, licensee, or customer, from and
against any loss, liability, claim, or damage (including court costs and
reasonable attorney fees) sustained by it or them as a result of (a) a claim or
allegation that the Products (excluding any trademarks, service marks or logos
included therein) infringe the registered copyright or trademark of any third
party or (b) the breach of any representation, warranty or agreement of
Broderbund made herein. If such a claim arises, or in either party's judgment is
likely to arise, Assignee agrees to allow Broderbund, at Broderbund's option, to
procure the right to permit the continued exercise of such rights in the Product
or to replace, re-label, or modify them without material change so they become
non-infringing. Broderbund shall have no obligation under the foregoing
obligation with respect to any claim of infringement based upon Assignee's,
IMSI's or any licensee's or purchaser's modification of the Products or their
combination, operation; or use with programs or equipment.
8.2 Assignee Indemnification. Assignee shall indemnify and hold
harmless Broderbund, its successors and assigns, including any subsidiary,
officer, director, employee, agent, contractor, licensee, or customer, from and
against any loss, liability, claim, or damage (including court costs and
reasonable attorney fees) sustained by it or them as a result of the (a)
marketing or servicing by Assignee of the Product and (b) breach of any
representation, warranty or agreement of Assignee made herein.
64
8.3 Litigation. With respect to any claims falling within the scope of
the foregoing indemnifications:
(a) each party agrees to notify the other promptly of and keep the
other fully advised with respect to such claims and the progress
of any suits in which the other party is not participating;
(b) the indemnifying party shall have the right to defend any suit
instituted against the indemnified party;
(c) the indemnifying party shall have the right to participate, at its
expense, in the defense of a claim or suit made or filed against
the indemnified party; and
(d) a party participating in or assuming the defense of a claim or
suit against the other party shall not settle such claim or suit
without the prior written approval of the other party, which
approval will not be unreasonably withheld or delayed.
8.4 Indemnification Limits. Neither party shall be required to make any
indemnification payment pursuant to this Section 8 until such time as the total
amount of all damages that have been directly suffered or incurred by such party
exceeds US $25,000. Each party's indemnification obligations set forth herein
shall terminate two (2) years after the Effective Date and neither party shall
be required to indemnify the other for any amount accrued after such period.
9. NOTICES.
Notices permitted or required under this Agreement shall be sent to the
addresses set forth below and shall be sent by hand delivery, by facsimile
followed with written confirmation sent by mail, by overnight courier or by
registered or certified mail, return receipt requested. Notices shall be deemed
to have been given on the date actually received if sent by hand delivery or
overnight courier, on the date sent if sent by facsimile, or three (3) days
after mailing if sent by registered or certified mail.
If to Broderbund: If to Assignee:
Broderbund, Inc. IMSI
000 Xxxxxxx Xxxxxxxxx 00 Xxxxxxx Xxx
Xxxxxx, Xxxxxxxxxx 00000 Xxxxxx, Xxxxxxxxxx 00000
Attention: Vice President, Legal Affairs Telephone: (000) 000-0000
Telephone: (000) 000-0000 Facsimile: (000) 000-0000
Facsimile: (000) 000-0000
10. DISPUTE RESOLUTION.
Intentionally omitted.
11. MISCELLANEOUS.
11.1 Entire Agreement. This Agreement contains the entire understanding
of the parties hereto relating to the Products, supersedes any prior written or
oral agreement or understandings between the parties with respect to the
Products, and cannot be changed or terminated orally. This Agreement may be
amended only by a writing signed by the parties hereto.
11.2 Assignment. This Agreement may be freely assigned by either party.
11.3 Enforceability. The invalidity or unenforceability of any
provision of this Agreement will not affect the validity or enforceability of
any other provision of this Agreement.
11.4 Independent Contractors. Broderbund and Licensee shall perform
their duties pursuant to this Agreement as independent contractors. Nothing in
this Agreement shall be construed to create a joint venture,
65
partnership or other joint relationship between Broderbund and Assignee. Neither
party shall have the ability to incur any obligation on behalf of the other
party.
11.5 Successors. All rights and obligations arising out of this
Agreement shall inure to the benefit of, and be binding on and enforceable by
the parties and their respective successors and permitted assigns.
11.6 Governing Law. This Agreement and its validity, construction and
performance shall be governed in all respects by the internal laws of the State
of California and all claims and/or lawsuits in connection with agreement must
be brought in San Francisco, California.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the date first set forth above.
BRODERBUND PROPERTIES LLC INTERNATIONAL MICROCOMPUTER, INC.
By: /s/ Xxxxxx Xxxxxxx
By: /s/ Xxxxxx Xxxxxxxx
Its: President
Its: CFO
66
EXHIBIT A
ASSIGNED AGREEMENTS
1. Source Code License and Distribution Agreement between Broderbund's
predecessor in interest and Microsoft Corporation dated April 2, 1999.
2. Apple Computer Desktop Services Site-License Agreement between Banner Blue
Corporation and Apple Computer, Inc. dated March 14, 1991.
67
EXHIBIT B
PRODUCT
Org Plus software product and related documentation as delivered to IMSI under
the Software License Agreement between IMSI and the Learning Company Properties
Inc. dated as of October 2, 1998. The Product does not include any upgrades,
updates, new versions, work in progress or network versions thereof, or other
modifications thereto, owned by Broderbund or any third party, including without
limitation any modifications developed by IMSI (each a "DERIVATIVE PROGRAM").
Broderbund hereby confirms to Assignee that Broderbund has granted no rights in
any Derivative Program to any third party other than under the Existing Licenses
and the Assigned Agreements.
68
EXHIBIT C
Registered Users
69
EXHIBIT D
TRADEMARKS
"ORG PLUS"
70
