TECHNOLOGY LICENSE AGREEMENT
NetObjects, Inc., a Delaware corporation, having an office at 000
Xxxxxxxxx Xxxx, Xxxxxxx Xxxx, Xxxxxxxxxx 00000 ("Seller"), and MERANT Inc., a
California corporation, having an office at 0000 Xxx Xxxx Xxxxxx, Xxxxxxxxx, XX
00000 ("Buyer"), enter into this Agreement as of February19, 2001 (the
"Effective Date"):
WHEREAS, Seller and Buyer are parties to that certain Asset Sale and
Purchase Agreement dated of even date herewith ("Asset Purchase Agreement");
WHEREAS, pursuant to such Asset Purchase Agreement, Seller is selling
and Buyer is purchasing all of Seller's right, title and interest in and to
certain software, patents, trademarks, trade names, copyrights and related
technology and documentation related to the Business Products of Seller's
Enterprise Division (collectively, the "Purchased Intellectual Property
Assets");
WHEREAS, Seller is retaining ownership in certain intellectual property
to which Buyer desires to have a license in order to realize full benefit and
enjoyment of the Purchased Intellectual Property Assets (collectively, the
"Licensed Intellectual Property" as further defined in Section 1.01(g) below)
and Seller desires to grant Buyer such license to the Licensed Intellectual
Property.
NOW, THEREFORE, in consideration of the foregoing and for other good
and valuable consideration the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
ARTICLE I
1.01 Definitions
Terms used herein shall have the meanings assigned below or, if no
meaning is assigned below to any such term, then the meaning for such term shall
be as assigned in the Asset Purchase Agreement:
(a) "Business" means the Seller's Enterprise Division insofar as it
involves the development, marketing, license and sale of products used for an
integrated content management environment for teams of web contributors and
developers, while providing centralized control over the site production effort;
professional services for the training and installation of such products; and
the personnel employed by Seller directly in the development, marketing and
licensing of such products, and performance of such services.
(b) "Business Products" means any and all versions of the following software
products of the Enterprise Division: NetObjects TeamFusion, NetObjects Authoring
Server and NetObjects Collage version 1.5 (consisting of the software products
identified in Schedule C "Collage Standard Licensing Package" and Schedule D
"Collage Additional Licensing Options" to Licensor's standard Collage Software
License and Services Agreement), and also means NetObjects Collage version 2.0
in its complete current form (includes both source code and object code versions
thereof and any and all prior releases or versions thereof) and related
documentation (including without limitation, user and training manuals and
technical documentation).
(c) "Business Services" means any consulting, training, evaluating or
similar service related to the Business Products.
(d) "Closing Date" is the date as defined in the Asset Purchase
Agreement.
(e) "End User" means a customer of Buyer (or its distributors, as the
case may be) who uses Buyer's products which incorporate any of the Licensed
Intellectual Property.
(f) "Intellectual Property Rights" shall mean, collectively, any and
all intellectual property rights and proprietary rights, whether arising under
the laws of the United States or any other state, country or jurisdiction
including, without limitation, rights in patents, trade secrets, copyrights,
mask works, moral rights, trade names, trademarks, and trade dress.
(g) "Level 3 Maintenance Services" shall mean the provision to Buyer of
maintenance and support services for NetObjects ScriptBuilder, including
diagnostic services and resolutions (workarounds, patches, corrected versions,
bug-fixes, error corrections, etc.) in the manner provided to other distributors
(including releases and updates typically provided to licensed distributors and
end users receiving maintenance and support services from Seller), so that Buyer
may provide maintenance and support to its end users.
(h) "Licensed Intellectual Property" means the Licensed Patents, the
Licensed Software, the Licensed Trademarks and all information (whether or not
protectible by patent, copyright, or trade secret rights) not generally known to
the public, including, but not limited to, works of authorship, inventions,
discoveries, patentable subject matter, product information, internal tools and
systems and development work-in-process used by the Business as of the Closing
Date which are needed or desirable to design, develop, produce and market
Business Products and/or Business Services.
(i) "Licensed Patents" means the patents and patent applications
identified in Appendix II, and all foreign counterparts of such patents and
applications, all foreign and domestic applications claiming priority thereto,
and all divisionals, reissues, continuations, and continuations-in-part thereof.
(j) "Licensed Software" means the software identified in Appendix I,
including any and all copyrights pertaining thereto and any and all related
documentation and programmers' notes.
(k) "Licensed Trademarks" means those trademarks identified in Appendix
III.
(l) "Subsidiary" of a company means a corporation or other legal entity
(i) the majority of whose shares or other securities entitled to vote for
election of directors (or managing authority) is now or hereafter controlled by
such company either directly or indirectly, or (ii) which does not have
outstanding shares or securities but the majority of whose ownership interest
representing the right to manage such corporation or
other legal entity is now or hereafter owned and controlled by such company
either directly or indirectly, but any such corporation or other legal entity
shall be deemed to be a subsidiary of such company only as long as such control
or ownership and control exists.
(m) "Third Party Licenses" shall mean the licenses identified in
Appendix IV.
1.02 License Grant for Licensed Software
(a) License for NetObjects TeamFusion. Seller hereby grants to Buyer
under all of Seller's Intellectual Property Rights, and Buyer hereby accepts, an
exclusive, perpetual, irrevocable, world-wide, royalty-free, non-assignable
(except in the course of the assignment or license of all or substantially all
of the Purchased Intellectual Property Assets to a third party or to a
Subsidiary or Affiliate of Buyer) license to use, copy, modify, perform,
display, and create derivative versions of NetObjects TeamFusion, including the
source code therefore; provided, however, that the license granted in this
Section 1.02(a) shall be solely for the purpose of licensing to End Users or
distributors NetObjects TeamFusion together with any version of NetObjects
Collage purchased under the Asset Purchase Agreement (or such future versions of
NetObjects Collage that are created by Buyer) in the field of Enterprise web
content management.
(b) Third Party Licenses. Seller hereby grants to Buyer, and Buyer
hereby accepts, a sublicense to the rights granted to Seller under the Third
Party Licenses, subject to the terms of such Third Party Licenses and to the
consent of the licensors of the Third Party Licenses, if any..
Buyer has reviewed and shall comply with the terms of the Third Party
Licenses. Notwithstanding any provisions of this Agreement or the Asset Purchase
Agreement, the only rights being granted to Buyer under the Third Party Licenses
are those sublicensed to Buyer under this Section 1.02(b). Seller is not selling
or assigning and Buyer is not purchasing or acquiring any of the Third Party
Licenses.
(c) License for NetObjects ScriptBuilder. Seller hereby grants to Buyer
under all of Seller's Intellectual Property Rights, and Buyer hereby accepts, an
exclusive, perpetual, irrevocable, world-wide, royalty-free, non-assignable
(except in the course of the assignment or license of all or substantially all
of the Purchased Intellectual Property Assets to a third party or to a
Subsidiary or Affiliate of Buyer) license to copy, perform and display
NetObjects ScriptBuilder; provided, however, that the license granted in this
Section 1.02(c) shall be solely for purpose of licensing to End Users or
distributors NetObjects ScriptBuilder bundled with any version of NetObjects
Collage or NetObjects Authoring Server purchased under the Asset Purchase
Agreement (or such future versions of NetObjects Collage or NetObjects Authoring
Server that are created by Buyer). Seller acknowledges and agrees that if Buyer
desires to bundle NetObjects ScriptBuilder with other products sold or licensed
by Buyer, this license shall be deemed to permit such bundling so long as the
parties mutually agree on a reasonable royalty for such bundling.
(d) Ancillary License. Seller hereby grants to Buyer, and Buyer hereby
accepts, an exclusive, perpetual, irrevocable, world-wide, royalty-free,
non-assignable (except in the course of the assignment or license of all or
substantially all of the Purchased Intellectual Property Assets to a third party
or to a Subsidiary or Affiliate of Buyer) license to (1) provide maintenance and
support services to the Licensed Software to End Users; (2) translate, copy, in
whole or in part, and distribute and authorize distributors and End Users to
translate, copy, in whole or in part, and distribute any user documentation
associated with the Licensed Software, including local language translations, in
connection with authorized use of the Licensed Software by End Users; and (3)
translate, copy, in whole or in part, and distribute and to authorize
distributors to translate, copy, in
whole or in part, and distribute any sales literature, including local language
translations, for the Licensed Software in connection with promoting the
Licensed Software to End Users.
(e) Buyer acknowledges and agrees that End Users shall be subject to an
end user license agreement containing terms and restrictions customarily found
in end user software license agreements, including, without limiting the
generality of the foregoing, terms prohibiting reverse engineering of the
Licensed Software. Furthermore, use by Government End Users shall be subject to
an end user license agreement that, in addition to containing terms customarily
found in end user software agreements, restricts and limits the rights the
Government obtains in the Licensed Software to the fullest extent possible under
the Defense FAR Supplement, the Code of Federal Regulations, or other applicable
regulations or statutes.
1.03 License Grant for Licensed Patents
Seller hereby grants to Buyer, and Buyer hereby accepts, an exclusive,
world-wide, perpetual, irrevocable, royalty-free license under the Licensed
Patents, with the right to grant sublicenses, to (a) practice and make
improvements to any or all of the inventions set forth, described and/or claimed
in any and all of the Licensed Patents and/or enabled by any and all of the
Licensed Patents, and (b) make, have made, use and sell or otherwise dispose of
products containing the Licensed Patents; provided, however that the licenses
granted herein shall be solely for the purpose of modifying and creating
derivative versions of NetObjects TeamFusion and licensing to End Users and
distributors NetObjects TeamFusion (either in the form originally delivered to
Buyer by Seller, or in a form created by Buyer) together with any version of
NetObjects Collage purchased under the Asset Purchase Agreement (or such future
versions of NetObjects Collage that are created by Buyer) in the field of
Enterprise web content management, and providing maintenance and support
services to such End Users and distributors. Seller does not hereby retain any
right to exercise, during the term of this Agreement, any of the rights granted
to the Buyer herein.
1.04 License Grant for Licensed Trademarks
(a) Seller grants to Buyer a non-exclusive, non-transferable,
perpetual, irrevocable, world-wide, royalty-free license to use the Licensed
Trademarks in connection with the Purchased Intellectual Property Assets.
(b) Seller hereby represents that Seller is the owner of all right,
title, and interest in and to the Licensed Trademarks. Buyer acknowledges the
ownership of the Licensed Trademarks in Seller, agrees that it will do nothing
inconsistent with such ownership and that all use of the Licensed Trademarks by
Buyer shall inure to the benefit of and be on behalf of Seller, and agrees to
assist Seller in recording this Agreement with appropriate government
authorities, if necessary. Buyer agrees that nothing in this Agreement shall
give Buyer any right, title or interest in the Licensed Trademarks other than
the right to use the Licensed Trademarks in
accordance with this Agreement, and Buyer agrees that it will not attack the
title of Seller to the Licensed Trademarks or attack the validity of this
Agreement.
(c) Buyer agrees that the nature and quality of all goods sold by Buyer
in connection with the Licensed Trademarks shall be of high quality and
consistent with the quality control standards established by the Seller. Buyer
agrees to cooperate with Seller in facilitating Seller's control of such nature
and quality. Buyer further agrees to display the xxxx NETOBJECTS SCRIPTBUILDER
with appropriate markings in connection with the marketing and sale or licensing
of products with which the NetObjects ScriptBuilder software is bundled.
1.05 Delivery of Licensed Intellectual Property
Seller shall deliver to Buyer, within five (5) days of the Effective
Date of this Agreement, all of the Licensed Intellectual Property licensed
hereunder, including all source code for the computer software known as
NetObjects TeamFusion and all related documentation and programmers' notes.
1.06 Ownership of Derivative Works
Seller acknowledges and agrees that Buyer shall retain ownership of any
and all derivative works (as that term is defined in Section 101 the U.S.
Copyright Act), modifications, enhancements, or improvements to the Licensed
Intellectual Property that are created, conceived or developed by Buyer
(collectively, "Buyer-Created Works"); provided, however, that Seller shall
retain ownership of the underlying, unmodified Licensed Intellectual Property
contained in such works. To the extent that any ownership of the Buyer-Created
Works is transferred to Seller, Seller hereby assigns to Buyer all of Seller's
right, title and interest, including any and all copyrights, patent rights,
moral rights or other intellectual property rights in and to such Buyer-Created
Works.
1.07 Nonassignability
(a) Seller has entered into this agreement in contemplation of personal
performance by Buyer and it is Seller's intention that a transfer of Buyer's
licenses not occur without Seller's express written consent, except as provided
in Section 1.02(a).
(b) Neither this agreement nor any licenses hereunder, in whole or in
part, shall be assignable or transferable by Buyer (by operation of law or
otherwise) without the other party's express written consent, except as provided
in Section 1.02(a).
(c) Any purported assignment or transfer of this agreement or licenses
hereunder by Buyer without Seller's necessary consent shall be void (without
affecting any other licenses or rights hereunder).
(d) Notwithstanding (a), (b) and (c) above, this agreement together
with all licenses hereunder shall be assignable or transferable by Buyer without
the Seller's consent in connection with Buyer's sale of all or substantially all
of the Business assets acquired by Buyer by and through the Asset Purchase
Agreement.
(e) Notwithstanding (a), (b) and (d) above, Buyer's rights to assign
the Third Party Licenses are subject to the assignment provisions of the Third
Party Licenses
1.08 Publicity
Nothing in this Agreement shall be construed as conferring upon Buyer
any right to include in advertising, packaging or other commercial activities
related to a Business Product, any reference to Seller (or any of its
Subsidiaries), its trade names, trademarks or service marks (including, without
limitation, "NetObjects") in a manner which would be likely to cause confusion
or to indicate that such Business Product is in any way certified by Seller, its
Subsidiaries or its controlling affiliates.
ARTICLE II
2.01 Term
(a) The term of the licenses granted in this Agreement shall be
perpetual, unless the licenses are terminated in accordance with this Agreement.
(b) Seller may terminate this Agreement and the licenses granted under
Section 1.02 at any time upon sixty (60) days' prior written notice to Buyer if
Buyer is in default of any material obligation of Buyer under this Agreement and
Buyer fails to cure the default within the sixty (60) days after written notice
of default is received by Buyer.
ARTICLE III
3.01 Maintenance, Support and Upgrades
Seller will designate a primary contact and a back-up contact to
provide, at no charge, Level 3 Maintenance Services to Buyer.
3.02 Source Code Escrow
(a) Seller has escrowed the source code for NetObjects ScriptBuilder
with Data Security International, Inc. ("DSI") or such escrow agent that might
replace DSI at a subsequent date, including all related documentation and
programmers' notes (collectively, the "Source Materials"). Seller will maintain
such escrow during the term of the Agreement. Seller will list Buyer as a
beneficiary of the source code escrow pursuant to the terms of the standard
"Source Code Escrow Agreement," used by DSI as revised to conform to this
Section 3.02.
(b) Buyer shall further in writing agree and confirm that the Source
Materials shall be deemed confidential information of Seller pursuant to the
Asset Purchase Agreement, with the actual date of disclosure of the Source
Materials being deemed the initial and final disclosure date of disclosure
thereunder.
(c) Buyer shall be entitled to obtain the Source Materials under this
Agreement if Seller (i) fails to make available or perform maintenance and
support services, including the services described in Section 3.01, for
NetObjects ScriptBuilder pursuant to the terms of this Agreement and Seller has
not cured such failure within three (3) business days despite Buyer's demand
that Seller make available or perform such services; (ii) files or is the
subject of the
filing of a petition by or against Seller for relief under the United States
Bankruptcy Code, makes a general assignment for the benefit of creditors,
appoints or has appointed a general receiver or trustee in bankruptcy for
Seller's business or property, provided that any such events will not apply if
within fifteen (15) days thereafter Seller or its receiver or trustee provides
assurances, reasonably satisfactory to Buyer, of Seller's continuing ability and
willingness to fulfill all material obligations under this Agreement; or (iii)
ceases business operations generally, unless within fifteen (15) days thereafter
a capable successor to the Seller, reasonably satisfactory to Buyer, agrees to
continue to make available and perform such maintenance and services.
(d) Seller hereby grants to Buyer, to be effective upon any release of
the Source Materials in accordance with the Escrow Agreement, a perpetual,
worldwide, royalty-free non-exclusive license, subject to the limitations set
forth in this Section 3.02(d), to use, copy, modify, perform, display and
prepare derivative or collective works of the Source Materials for the purpose
of providing support and maintenance of NetObjects ScriptBuilder, and for the
purpose of customization and integration of the NetObjects ScriptBuilder with
the Buyer's products, including without limitation the preparation of derivative
works consisting of bug fixes and updates, which Buyer may distribute and
sublicense externally in object code form only. The parties acknowledge and
agree that the arrangement referred to above is an agreement supplementary to
this Agreement for purposes of Section 365(n) of the United States Bankruptcy
Code.
ARTICLE IV
4.01 Indemnification
(a) Subject to the conditions and provisions of Section 4.01(b), Seller
agrees to indemnify, defend and hold harmless Buyer from and against any and all
demands, claims, complaints, actions or causes of action, suits, proceedings,
investigations, arbitrations, assessments, losses, damages, liabilities, costs
and expenses, including, but not limited to, interest, penalties and reasonable
attorneys' fees and disbursements (together, "Losses"), asserted against,
imposed upon or incurred by Buyer, directly or indirectly, by reason of or
resulting from (a) any misrepresentation or breach of the representations and
warranties of Seller contained in or made pursuant to this Agreement; or (b) any
noncompliance by Seller with any covenants, agreements or undertakings of Seller
contained in or made pursuant to this Agreement (collectively, claims under this
Section 4.01(a) shall be called "Infringement Claims").
(b) Buyer shall cooperate with Seller in a reasonable way to facilitate
the settlement or defense of such Infringement Claims, and shall not acknowledge
the validity of any alleged Infringement Claims or of any patent, copyright or
any third party, or otherwise make statements that could reasonably be expected
to have the effect of hampering or undermining Seller's defense or settlement of
the Infringement Claims. Seller shall not, without Buyer's prior written
consent, enter into any compromise or settlement that (i) commits Buyer to take,
or forbear to take, any action, other than the payment of a reasonable royalty
or other reasonable compensation for the use of third party intellectual
property rights or (ii) does not obtain for Buyer the right to continued use of
the allegedly infringing information unless Seller has (y) procured for Buyer
the right to continue using such third party intellectual property rights or (z)
provided instructions to replace or modify the same so that it is not subject to
such Infringement Claims and is functionally equivalent.
4.02 Proceedings Against Third Party Infringers
Buyer shall immediately notify Seller of any infringement, illegal use
or misuse by third parties of the Licensed Intellectual Property of which Buyer
becomes reasonably aware. Upon notification by Buyer of any infringement,
illegal use or misuse by third parties of the Licensed Intellectual Property, or
upon Seller otherwise learning of such infringement, illegal use or misuse by
third parties, Seller has the right, but not the duty, to initiate any
proceeding relating to the protection of the Licensed Intellectual Property. If
Seller elects to initiate a proceeding under this Section 4.02(a), Seller shall
bear the full burden of expenses for such proceedings and shall also take the
full benefit, if any, of such proceedings. In the event Seller makes such an
election, Buyer shall be kept fully informed of the proceedings and Buyer shall
have the right to comment thereon, but Seller shall retain full control of the
proceedings.
ARTICLE V
5.01 Compliance With U.S. Export Laws
(a) Buyer hereby assures Seller that it does not intend to and will not
knowingly export or re-export directly or indirectly, without first obtaining
any approvals required by the U.S. Government:
(i) the Licensed Intellectual Property;
(ii) any immediate product (including products and services)
produced directly by the use of the Licensed Intellectual Property; or
(iii) any commodity produced by such immediate product if the
immediate product is a plant capable of producing a commodity or is a major
component of such plant.
(b) To the extent any such approvals require Seller's input, approval,
acquiescence or other acknowledgement, Seller agrees to cooperate fully, without
further compensation, in providing all necessary assistance to permit Buyer to
obtain such approvals.
ARTICLE VI
6.01 Representations and Warranties
(a) Seller represents and warrants that:
(i) to the best of Seller's knowledge, the Licensed
Intellectual Property does not infringe any patent, trademark, service xxxx,
copyright, trade secret or other intellectual property right of any third party;
and the Seller has not advised any third party that such third party may be
infringing any Licensed Intellectual Property or breaching any license or
agreement involving Licensed Intellectual Property;
(ii) it is not, nor will it be as a result of the execution
and delivery of this Agreement or the performance of Seller's obligations under
this Agreement, in breach of any license, sublicense or other agreement relating
to the Licensed Intellectual Property or third party intellectual property
rights;
(iii) to the best of Seller's knowledge, there is no
unauthorized use, disclosure, infringement or misappropriation of any Licensed
Intellectual Property, any trade secret material to the Licensed Intellectual
Property, or any intellectual property right of any third party to the extent
licensed by or through the Seller, by any third party, including any employee or
former employee of Seller; and
(iv) it has the right to bring an action for the infringement
or misappropriation of all of the Licensed Intellectual Property
(b) Each party represents and warrants to the other that it has the
right to enter into and fully perform its obligations under this Agreement and
to grant the rights granted hereunder, and that the foregoing shall not
constitute a breach or violation of any other agreement entered into by such
party.
6.02 Limitation of Liability
(a) IN NO EVENT SHALL BUYER BE LIABLE FOR ANY SPECIAL, INCIDENTAL,
INDIRECT OR CONSEQUENTIAL DAMAGES OF ANY KIND IN CONNECTION WITH THIS AGREEMENT,
EVEN IF BUYER HAS BEEN INFORMED IN ADVANCE OF THE POSSIBILITY OF SUCH DAMAGES.
(b) The provisions of Section 4.01 shall be subject to the provisions
of Article 17 of the Asset Purchase Agreement.
ARTICLE VII
7.01 Exclusions
No licenses are granted to Buyer with respect to any of the Licensed
Intellectual Property except as provided in Section 1.02. Notwithstanding the
provisions of Article I, it is hereby expressly acknowledged and agreed that the
licenses granted herein shall not include, and Seller is not selling,
transferring, assigning, conveying or delivering to Buyer, and Buyer is not
purchasing, acquiring or accepting from Seller, any licenses or rights
applicable to the non-Business portion of Seller's operations, including, but
not limited to, the following:
(a) any proprietary information used exclusively by Seller in products
and services of Seller other than the Business Products or Business Services or
as expressly provided in the Asset Purchase Agreement, or elsewhere in this
Intellectual Property License Agreement;
(b) any Nonassignable Assets, as such term is defined in the Asset
Purchase Agreement, except for the rights granted under the Third Party Licenses
in Sections 1.02(b).
ARTICLE VIII
8.01 Miscellaneous
(a) The following provisions of the Asset Purchase Agreement are
incorporated herein by reference and made a part of this Agreement as though set
forth herein: Section 23 (Notices); Section 25 (Benefit and Assignment); Section
28 (Severability); and Section 30 (Governing Law).
(b) The following provisions of this Agreement shall survive the
expiration or termination for any reason of this Agreement: Sections 1.02, 1.03,
1.04, 1.05, 3.02, 4.01, 4.02, 5 and 8.01.
(c) This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original and all of which, when taken together, shall
constitute one and the same instrument.
SELLER: BUYER:
By: /s/ XXXXX XXXXX By: /s/ XXXX X. XXXXXXXXXX
Name: Xxxxx Xxxxx Name: Xxxx X. Xxxxxxxxxx
Title: President and Chief Executive Officer Title: President and Chief Executive Officer
Date: February 19, 2001 Date: February 19, 2001
