EXHIBIT 10.40
AMENDMENT NUMBER 2 TO
MARKETING AND DISTRIBUTION AGREEMENT
This AMENDMENT NUMBER 2 TO MICROSOFT MARKETING AND DISTRIBUTION AGREEMENT (the
"Amendment"), effective as of the 31st day of August, 2001 (the "Amendment
Effective Date"), is made by and between Microsoft Corporation, a Washington
corporation ("Microsoft") and AvantGo, Inc., a Delaware corporation ("AvantGo").
Microsoft and AvantGo shall each be referred to herein as "Party" or
collectively as "the Parties."
RECITALS
A. Microsoft and AvantGo entered into a Marketing and Distribution, effective
as of June 2, 1999, whereby AvantGo licensed certain rights in specified
technology to Microsoft.
B. The Parties entered into a First Amendment to Marketing and Distribution
Agreement dated as of January 25, 2000 (collectively the Marketing and
Distribution Agreement and the First Amendment to Marketing and
Distribution Agreement shall be referred to as the "Agreement") whereby,
among other things, AvantGo licensed certain rights in additional specified
technology and specified trademark rights to Microsoft.
C. The Parties now agree that Microsoft and AvantGo would like to modify
specified terms and conditions of the Agreement as provided herein.
The Parties hereby agree as follows:
AGREEMENT
1. Trademarks. Section 2.8 of the Agreement shall be deleted in its entirety
and replaced with the following:
AvantGo hereby grants to Microsoft a non-exclusive, royalty-free,
fully paid up, worldwide right and license, with the right to
sublicense such license to third parties, subject to the terms of the
Agreement, to use the AvantGo trademarks identified on Exhibit II,
attached hereto (the "AvantGo Trademarks"), in Windows CE for the
Palm-size PC products (i) 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; and (ii) known under the
internal Microsoft confidential code-name "Merlin" and currently
planned to be released under the names Microsoft Mobile Software for
the Pocket PC 2002 Professional Edition, Microsoft Mobile Software for
the Pocket PC 2002 Premium Edition, and Microsoft Mobile Software for
the Pocket PC 2002 Premium Plus Phone Edition, with which the Software
is distributed (hereinafter a commercial product containing either
"Rapier" or "Merlin" shall be referred to as "the Products"); and in
connection with the marketing, sale, and distribution of the Products.
Microsoft acknowledges that AvantGo will own the AvantGo Trademarks.
Microsoft's and its sublicensees' use of the AvantGo Trademarks shall
inure solely to the benefit of AvantGo. To the extent technically
possible, Microsoft shall use reasonable efforts to comply with
trademark use requirements contained in written usage guidelines
provided by AvantGo from time to
time, and upon the request of AvantGo, furnish samples of its usage of
the AvantGo Trademarks to AvantGo. In the event Microsoft updates,
subsequent to the Amendment Effective Date, the interface for the
Products, Microsoft will to the extent reasonably possible incorporate
any new versions of the AvantGo Trademarks made available by AvantGo
to Microsoft.
2. Support and Maintenance. Subsection (ii) shall be deleted from Section 3.3
and replaced with the following: "(ii) for a period of [******] following
each new release of the Software, support such new release and the prior
release of the Software only; provided that in any event notwithstanding
the foregoing, the version of the Software contained in the Products that
contain Merlin shall be supported for a period of at least [******] from
the first date that any such Product is first made publicly available,
which shall in no event be later than December 1, 2001; and provided that
in no event will AvantGo be required to support versions of the Software
other than the two (2) most current versions of the Software; and..."
3. Windows CE Client Support. The Parties wish to acknowledge that the
following are Supported Devices under Section 4.3 of the Agreement: The
[*****] Products that contain Rapier that are supported as of the Amendment
Effective Date and all Products that will contain Merlin.
4. User Registration System. Section 4.4 of the Agreement shall be deleted in
its entirety and replaced with the following:
AvantGo shall prepare a quarterly report (the "Report") for Microsoft
that includes the following information: (i) a demographic and usage
pattern summary profiling End Users to the extent that AvantGo creates
such summaries and subject to AvantGo's published privacy policy; (ii)
the total and monthly number of Windows CE registrations for the
AvantGo service(iii) the number of active users on AvantGo's service;
(iv) the number of total users on AvantGo's service; and (v) a list of
the top twenty (20) Pocket PC channels. A quarterly meeting shall be
held by the Parties and each Report shall be provided to Microsoft by
AvantGo at such quarterly meeting. The parties acknowledge and agree
the contents of the Reports are confidential information of AvantGo
and, unless otherwise agreed in writing, may only be used by Microsoft
for internal analysis.
5. Web Sites. Section 4.5 of the Agreement shall be deleted and replaced with
the following:
4.5.1 As long as the Software is distributed by Microsoft in the
Products, Microsoft shall create a hypertext link to XxxxxXx.xxx
incorporating an AvantGo logo identified and described on Exhibit
II on the portion of the Microsoft web site dedicated to Windows
CE. As long as the Software is distributed by Microsoft in the
Products, AvantGo shall provide generally equal presence (e.g.
logo size, visibility of information, etc.) for Windows CE and
other operating system products on XxxxxXx.xxx. Microsoft's use
of the AvantGo logo shall comply with the trademark guidelines
attached on Exhibit II.
4.5.2 The Parties will mutually agree upon the default channels to be
provided to new Pocket PC registrants. The Parties will discuss
the listing at each quarterly meeting to be held by the Parties
and will mutually agree on any changes to such listing.
[******] Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
6. Term. Section 5.1 shall be deleted in its entirety and replaced with the
following: "This Agreement will have a term of two (2) years from the date
of the first public availability of a Product containing Merlin, of which
Microsoft will promptly provide AvantGo written notice and which shall in
no event be later than December 1, 2001 and shall automatically renew for
additional one (1) year periods unless either party notifies the other of
its intent not to renew at least thirty (30) days prior to the Agreement's
scheduled expiration."
7. Limitation of Liability. In the ninth and tenth lines of Article 9 of the
Agreement, "[******] UNITED STATES DOLLARS (US$[******])" shall be deleted
and replaced with "[******] UNITED STATES DOLLARS (US$[******])". In the
eighteenth and nineteenth lines of Article 9, "[******] UNITED STATES
DOLLARS (US$[******])" shall be deleted and replaced with "[******] UNITED
STATES DOLLARS (US$[******]).
8. Additional Areas of Potential Marketing Activities. The fifth bullet point
listed on Exhibit III of the Agreement shall be deleted in its entirety and
replaced with the following: "Working with between five (5) and ten (10)
content providers to optimize their channels for the Merlin Software with
content that takes advantage of 320x240 resolution color displays and/or
rich media."
9. Effect of Amendment. This Amendment shall amend, modify and supersede, to
the extent of any inconsistencies, the provisions of the Agreement, as
amended. 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. Any reference to the Agreement shall be deemed to
reference the Agreement as amended by this Amendment.
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/ Xxxx Xxxxxxxxxxx /s/ Xxxxxxx Xxxx
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By (signature) By (signature)
Xxxx Xxxxxxxxxxx Xxxxxxx Xxxx
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Name (print) Name (print)
Vice President Chief Executive Officer
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Title Title
August 31, 2001 August 13, 2001
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Date Date
[******] Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
