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EXHIBIT 10.12
EMPLOYMENT
TRADE SECRET AND
NON-COMPETITION AGREEMENT
This Agreement is made and entered into as of August 27, 1996 by and
between OptiMark Technologies, Inc., a Delaware corporation (the "Company"),
and Xxxx X. Xxxxxxx (the "Officer").
WHEREAS, the Company is in the business of designing, producing and
selling methods of structuring or coordinating markets for fungible items;
WHEREAS, the Company intends its business to be world-wide in scope;
WHEREAS, in the operation of its business, the Company develops and
acquires valuable confidential information, including trade secrets, which is
essential to its commercial success;
WHEREAS, Officer is an executive of the Company; and
WHEREAS, Officer is in a position of trust and confidence in which he
will learn, develop and have access to the Company's confidential information;
NOW, THEREFORE, in consideration of the mutual covenants contained
herein and other good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, the Company and the Officer agree as follows:
1. Confidential Information, Non-Competition and
Non-Solicitation.
(a) Definitions. As used in this Agreement,
(i) "Proprietary Information" means information
related to the Company's Business (defined below) which the Company possesses
or to which the Company has rights which has commercial value. Proprietary
Information includes, by way of example and without limitation, trade secrets,
product ideas, designs, configurations, processes, techniques, formulas, source
and object code forms of software, improvements, inventions, discoveries, data,
know-how, copyrightable materials, marketing plans and strategies, sales and
financial reports and forecasts, and customer lists. Proprietary Information
includes information discovered, conceived, prepared or developed by the
Officer in the course of the Officer's employment by the Company or otherwise
relating to Inventions and Developments which belong to the Company under
Section l(d) below, as well as other information to which the Officer may have
or had access in connection with the Officer's employment.
(ii) "Inventions and Developments" means any and
all inventions, developments, creative works and useful ideas of any
description whatsoever, whether or not patentable or copyrightable, relating to
the Company's Business.
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Inventions and Developments include, by way of example and without limitation,
discoveries or improvements which consist of or relate to any form of
Proprietary Information.
(iii) "Company-Related Inventions and Developments"
means all Inventions and Developments (but excluding any Inventions and
Development that relate to the project Pegasus) which either (A) relate at the
time of conception or development to the actual or demonstrably anticipated
business of the Company or to its actual or demonstrably anticipated research
and development; (B) result from or relate to any work performed for the
Company, whether or not during normal business hours; (C) are developed on
Company time; or (D) are developed through the use of the Company's Proprietary
Information, equipment and software, or other facilities or resources.
(iv) "Business" means the development of methods
for structuring or coordinating markets for fungible items.
(v) "Termination Without Cause" means cessation
of employment of Officer either (a) initiated by Officer (after thirty days
written notice without cure) as a direct result of (1) a substantial diminution
of his job responsibility or compensation or both or (2) his forced relocation
from Durango, Colorado, or (b) initiated by the Company other than as a direct
result of commission by Officer of a felony or a repeated failure by Officer to
discharge assigned duties.
(b) Confidentiality. The Officer understands and agrees
that the Officer's employment has created a relationship of confidence and
trust between the Officer and the Company with respect to (i) all Proprietary
Information and (ii) the confidential information of others with which the
Company has a business relationship with reasonable expectations (whether as a
result of a contract or otherwise) that such information will not be disclosed.
The information referred to in clauses (i) and (ii) of the preceding sentence
is referred to in this Agreement, collectively, as "Confidential Information."
At all times, both during the Officer's employment with the Company and after
its termination, the Officer will keep in confidence and trust all such
Confidential Information, and will not use or disclose any such Confidential
Information without the written consent of the Company, except as may be
necessary in the ordinary course of performing the Officer's duties to the
Company and except to the extent required by applicable law or court order (in
each case following notice to the Company). The restrictions set forth in this
Section l(b) will not apply to information which is or becomes known to the
public or in the trade, unless such knowledge results from an unauthorized
disclosure by the Officer, but this exception will not affect the application
of any other provision of this Agreement to such information in accordance with
the terms of such provision.
(c) Documents, Records, etc. All documents, records,
apparatus, equipment and other physical property, whether or not pertaining to
Confidential Information, furnished to the Officer by the Company or produced
by the Officer in connection with the Officer's employment will be and remain
the sole property of the
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Company. The Officer will return to the Company all such materials and
property as and when requested by the Company. In any event, the Officer will
return all such materials and property immediately upon termination of the
Officer's employment for any reason. The Officer will not retain with the
Officer any such material or property or any copies thereof after such
termination, except that one copy of any such materials may be delivered to
independent counsel for the Company to the extent the Officer deems it
reasonably necessary to preserve any of its rights hereunder, provided that
such independent counsel is reasonably acceptable to the Company, and the
Officer provides prior notice to the Company describing any such materials and
such independent counsel agrees to keep such material confidential.
(d) Ownership of Inventions and Developments. The
Officer agrees that all Company-Related Inventions and Developments which the
Officer conceives, creates, reduces to practice or develops, in whole or in
part, either alone or jointly with others, prior to or during the course of the
Officer's employment with the Company will be the sole property of the Company.
The Officer agrees that the Company will be the sole owner of all patents,
copyrights and other proprietary rights in and with respect to such
Company-Related Inventions and Developments. To the fullest extent permitted
by law, such Company-Related Inventions and Developments will be deemed works
made for hire. The Officer hereby irrevocably transfers and assigns to the
Company any proprietary rights worldwide which the Officer may have or acquire
in any such Company-Related Inventions and Developments, whether now known or
hereafter to become known. In the event Officer has any right in and to the
Company-Related Inventions and Developments that cannot be assigned to the
Company, Officer hereby unconditionally and irrevocably waives the enforcement
of all such rights, and all claims and causes of action of any kind with
respect to any of the foregoing against the Company and its customers, whether
now known or hereafter to become known, and agrees at the request and expense
of the Company, and its successors and assigns, to consent to and join in any
action to enforce such rights and to procure a waiver of such rights from the
holders of such rights. In the event Officer has any rights in and to the
Company-Related Inventions and Developments that cannot be assigned to the
Company and cannot be waived, Officer hereby grants to the Company and its
successors and assigns an exclusive, worldwide, fully paid-up, royalty free
license during the term of such rights to use, reproduce, distribute, modify,
publicly perform and publicly display, with the right to sublicense and assign,
such rights in and to the Company-Related Inventions and Developments, Officer
acknowledges and agrees that he retains no rights to the Company-Related
Inventions and Developments and agrees not to challenge the validity of the
ownership by the Company of such Company-Related Inventions and Developments.
The Officer agrees to execute any documents and take any actions that may be
required to effect and confirm such transfer and assignment and waiver. The
provisions of this Section 1(d) will apply to all Company-Related Inventions
and Developments which are conceived, created or developed during the course of
the Officer's employment with the Company, whether before or after the date of
this Agreement, and whether or not further development or reduction to practice
may take place after termination of the Officer's employment, for which purpose
it will be presumed that any Company-Related Inventions and Developments
conceived by the
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Officer which are reduced to practice within six months after termination of
the Officer's employment were conceived during the course of the Officer's
employment with the Company unless the Officer is able to establish a later
conception date by clear and convincing evidence. The provisions of this
Section l(d) will not apply, however, to any Inventions and Developments which
may be disclosed in a separate schedule attached to this Agreement prior to its
acceptance by the Company.
(e) Disclosure of Inventions and Developments. The
Officer agrees to disclose fully and promptly to the Company, or any persons
designated by it, all Company-Related Inventions and Developments which are or
may be subject to the provisions of Section l(d).
(f) Obtaining and Enforcing Proprietary Rights. The
Officer agrees to assist the Company, at the Company's request from time to
time and at the Company's expense, to obtain and enforce patents, copyrights or
other proprietary rights with respect to Company-Related Inventions and
Developments in any and all countries. The Officer will execute all documents
reasonably necessary or appropriate for this purpose. This obligation will
survive the termination of the Officer's employment, provided that the Company
will compensate the Officer at a reasonable rate after such termination for
time actually spent by the Officer at the Company's request on such assistance.
In the event that the Company is unable for any reason whatsoever to secure the
Officer's signature to any document reasonably necessary or appropriate for any
of the foregoing purposes (including renewals, extensions, continuations,
divisions or continuations in part), the Officer hereby irrevocably designates
and appoints the Company and its duly authorized officers and agents as the
Officer's agents and attorneys-in-fact to act for the Officer and on the
Officer's behalf, but only for the purpose of executing and filing any such
document and doing all other lawfully permitted acts to accomplish the
foregoing purposes with the same legal force and effect as if executed by the
Officer.
(g) Third-Party Agreements and Rights. The Officer
hereby confirms that the Officer is not bound by the terms of any agreement
with any previous company or other party which restricts in any way the
Officer's use or disclosure of information or the Officer's engagement in any
business. The Officer represents to the Company that the Officer's execution
of this Agreement, the Officer's employment with the Company and the
performance of the Officer's proposed duties for the Company will not violate
any obligations the Officer may have to any such previous company or other
party. In the Officer's work for the Company, the Officer will not disclose or
make use of any information in violation of any agreements with or rights of
any such previous company or other party, and the Officer will not bring or
transmit to the premises of the Company any copies or other tangible
embodiments or electronic versions of non-public information belonging to or
obtained from any such previous employment or other party.
(h) Non-Competition and Non-Solicitation. For a period
beginning on the date hereof and ending eighteen months after the date on which
the Officer ceases to be employed by the Company for any reason whatsoever, the
Officer, directly or indirectly, whether as owner, sole proprietor, partner,
shareholder, director, member,
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consultant, agent, founder, co-venturer or otherwise, will: (i) not engage,
participate or invest in any business activity anywhere in the world which
develops, manufactures or markets products or performs services which are
competitive with the products or services of the Company at the time of the
Officer's termination, or products or services which the Company has under
development or which are the subject of active planning at the time of the
Officer's termination; provided, however, that the Officer may own, as a
passive investor, publicly-traded securities of any corporation which competes
with the business of the Company so long as such securities do not, in the
aggregate, constitute more than 5% of any class of outstanding securities of
such corporation; (ii) refrain from hiring or attempting to employ, recruiting
or otherwise soliciting, inducing or influencing any person to leave employment
with the Company or its resellers or distributors; and (iii) refrain from
directly or indirectly soliciting competitive business from any of the
Company's customers, end users, resellers or distributors on behalf of any
business which competes with the Company. The Officer understands that the
restrictions set forth in this Section 1(h) are intended to protect the
Company's interest in its Proprietary Information and established customer
relationships and goodwill, and agrees that such restrictions are reasonable
and appropriate for this purpose.
(i) Injunction. The Officer agrees that it would be
difficult to measure any damages caused to the Company which might result from
any breach by the Officer of the promises set forth in this Agreement, and that
in any event money damages would be an inadequate remedy for any such breach.
Accordingly, the Officer agrees that if the Officer breaches, or proposes to
breach, any portion of this Agreement, the Company shall be entitled, in
addition to all other remedies that it may have, to an injunction or other
appropriate equitable relief to restrain any such breach without showing or
proving any actual damage to the Company.
(j) Termination Without Cause. In the event of
termination of Officer without Cause, as defined in Subsection 1(a)(v) above,
then
(i) The Company shall pay to Officer as his sole
and exclusive severance the amount of his base annual salary at the time of
termination, for eighteen months thereafter, payable in eighteen equal monthly
installments less applicable withholding items.
(ii) All stock options granted to Officer shall
vest and immediately be exercisable in accordance with their terms.
(iii) The Company shall loan the Officer upon his
written request, submitted within thirty days of termination, sufficient funds
to exercise, and for the sole purpose of exercising, all vested stock options.
That loan shall be represented by a promissory note with interest at the then
prime rate, without recourse and secured by a first perfected security interest
in all shares so purchased, principal and all accrued interest to be due upon
the earlier of the sale of any or all of the shares or December 31, 2005.
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In the event of the cessation of Officer's employment for any reason, including
death, except Termination Without Cause, Officer shall receive no severance.
2. Extent of Service. So long as the Officer is employed by the
Company, the Officer shall devote substantially all of the Officer's business
time, attention and energies, best efforts and business judgment, skill and
knowledge to the advancement of the Company's interests and to the discharge of
the Officer's duties and responsibilities hereunder.
3. No Employment Obligation. The Officer understands and agrees
that this Agreement does not create an obligation on the part of the Company to
continue the Officer's employment by the Company. The Officer acknowledges and
agrees that, except as expressly provided in any subsequent agreement to the
contrary, he is an employee "at will."
4. Inclusion of Company's Subsidiaries. All references to
"Company" in this Agreement shall be deemed to include the Company and each of
its subsidiaries, as in existence from time to time.
5. Integration. This Agreement constitutes the entire agreements
between the parties with respect to the subject matter hereof and supersede all
prior agreements between the parties with respect to any related subject
matter.
6. Assignment; Successors and Assigns; Binding Effect. Neither
the Company nor the Officer may make any assignment of this Agreement or any
interest herein, by operation of law or otherwise, without the prior written
consent of the other party; provided, however, that the Company may assign its
rights under this Agreement without the consent of the Officer in the event
that the Company shall hereafter effect a reorganization, consolidate with or
merge into any other corporation, partnership, organization or other entity, or
transfer all or substantially all of its properties or assets to any other
corporation, partnership, organization or other entity in which even for
purposes of Section 1(h) hereof as used in determining the scope of the
Company's business, references to the Company shall be deemed to refer to the
Company immediately prior to such reorganization, consolidation or merger.
This Agreement shall inure to the benefit of and be binding upon the Company
and the Officer, their respective successors, executors, administrators, heirs
and permitted assigns.
7. Enforceability. If any portion or provision of this Agreement
shall to any extent be declared illegal or unenforceable by a court of
competent jurisdiction, then the remainder of this Agreement, or the
application of such portion or provision in circumstances other than those as
to which it is so declared illegal or unenforceable, shall not be affected
thereby, and each portion and provision of this Agreement shall be valid and
enforceable to the fullest extent permitted by law.
8. Waiver. No waiver of any provision hereof shall be effective
unless made in writing and signed by the waiving party. The failure of any
party to require the
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performance of any term or obligation of this Agreement, or the waiver by any
party of any breach of this Agreement, shall not prevent any subsequent
enforcement of such term or obligation or be deemed a waiver of any subsequent
breach.
9. Notices. Any notices, requests, demands and other
communications provided for by this Agreement shall be sufficient if in writing
and delivered in person or sent by registered or certified mail, postage
prepaid, return receipt requested, to the Officer at the last address the
Officer has filed in writing with the Company or, in the case of the Company,
at its main offices, attention of the Chairman of the Board of Directors.
10. Amendment. This Agreement may be amended or modified only by
a written instrument signed by the Officer and by a duly authorized
representative of the Company.
11. Governing Law. This is a Colorado contract and shall be
construed under and be governed in all respects by the internal laws of the
State of Colorado, without giving effect to its conflicts of law principles.
12. Counterparts. This Agreement may be executed in any number of
counterparts, each of which when so executed and delivered shall be taken to be
an original; but such counterparts shall together constitute one and the same
document.
13. Notices. Any notices, requests, demands and other
communications provided for by this Agreement shall be sufficient if in writing
and delivered in person or sent by registered or certified mail, postage
prepaid, return receipt requested, to the Officer at the last address the
Officer has filed in writing with the Company or, in the case of the Company,
at its main offices, attention of the Chairman of the Board of Directors.
14. Amendment. This Agreement may be amended or modified only by
a written instrument signed by the Officer and by a duly authorized
representative of the Company.
15. Governing Law. This is a Colorado contract and shall be
construed under and be governed in all respects by the internal laws of the
State of Colorado, without giving effect to its conflicts of law principles.
16. Counterparts. This Agreement may be executed in any number of
counterparts, each of which when so executed and delivered shall be taken to be
an original; but such counterparts shall together constitute one and the same
document.
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IN WITNESS WHEREOF, this Agreement has been executed as a sealed
instrument by the Company, by its duly authorized officer, and by the Officer,
as of the date first above written.
COMPANY:
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OPTIMARK TECHNOLOGIES, INC.
By: /s/ Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx, Chief Executive Officer
OFFICER:
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/s/ Xxxx X. Xxxxxxx
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Xxxx X. Xxxxxxx
