EXHIBIT 10.19
AGREEMENT BETWEEN AUTODESK, INC.
AND UNIVERSITY ONLINE, INC.
This Agreement made and effective as of April 15, 1996, (the "Effective
Date") by and between Autodesk, Inc. ("Autodesk"), a Delaware corporation, with
its principal place of business at 000 XxXxxxx Xxxxxxx, Xxx Xxxxxx, XX 00000,
and University Online, Inc. ("UOL") with its principal place of business at 000
Xxxx Xxxxx Xxxxxx, Xxxxx 000, Xxxxx Xxxxxx, Xxxxxxxx 00000.
RECITALS
WHEREAS, Autodesk is a producer of computer-aided design, multimedia,
and other software; and
WHEREAS, UOL is in the business of developing, publishing, and
distributing multimedia educational software through local area networks and
wide area networks, such as the Internet and the World Wide Web; and
WHEREAS, Autodesk desires to grant to UOL certain rights to use certain
Autodesk trademarks and to render certain other assistance in connection with
UOL's Internet activities; and
NOW, THEREFORE, in consideration of the mutual covenants herein, the
parties agree as follows:
1. Definitions
1.1 "Autodesk Virtual Campus" shall mean a campus-like graphical user
interface located on the Internet which a student or learning professional may
access to obtain information about about Autodesk products and other related
subject areas through the Internet.
1.2 "Student Management System" shall mean a system acquired or
developed by UOL to track and record enrollment, testing, grading,
recordkeeping, maintenance, registration and reporting necessary to provide
proper information to students, faculty, and Content Providers on the Autodesk
Virtual Campus. The Student Management System incorporates courseware that was
built using the development guidelines and templates of the Autodesk Virtual
Campus.
1.3 "Net Revenues" shall mean revenues to UOL derived from (i)
interactive courseware that runs on the Student Management System; (ii) revenues
derived from Products and Services that are downloaded from the Autodesk Virtual
Campus or ordered and shipped to customers through the Autodesk Virtual Campus
less costs paid by UOL to Content Providers, resellers, distributors,
individuals, credit card issuers, and consultants for such Products and Services
and (iii) Fees collected by UOL that are derived from advertising, promotion,
promotional links to other Internet addresses, or other revenue-generating
activities related to activities on the Autodesk Virtual Campus.
1.4 Products and Services, shall mean all items, except courseware
delivered through the Student Management System, including but not limited to
books, CD ROM's, and images.
1.5 Content Provider shall mean individuals, institutions, and
organizations that provide Productsand Services or courseware.
*[]CONFIDENTIAL TREATMENT REQUESTED; CERTAIN INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SEC.
2. License Grant
2.1 Autodesk hereby grants to UOL a non-exclusive right and license to
use the Autodesk name and registered logo in connection with the operation,
advertising and marketing of the Autodesk Virtual Campus. Either separately or
in conjunction with any UOL trademark or trade name, UOL agrees to include any
notices that Autodesk may reasonably request and to use the Autodesk name and
logo in accordance with guidelines as set forth in the Guidelines for Design
Corporate Identity Manual dated Summer 1995 provided by Autodesk, which Autodesk
may update, revise, or replace from time to time and shall provide to UOL. All
Autodesk trademarks and tradenames and shall remain the exclusive property of
Autodesk.
2.2 UOL agrees that any use by UOL of the Autodesk name and logo shall
be subject to review and approval in advance by Autodesk, in Autodesk's sole
discretion. Autodesk shall retain the right to demand immediate modification,
revision or cessation of use of the Autodesk name and logo in the event Autodesk
determines that the licensed trademarks are being used improperly or that the
content of the Autodesk Virtual Campus is of unacceptable quality such that it
is no longer in Autodesk's best interests to be associated with the Autodesk
Virtual Campus. Without limiting the generality of the foregoing, UOL shall not
use the Autodesk name or logo in any manner that, in Autodesk's determination,
may cause embarrassment to Autodesk or may damage Autodesk's reputation.
2.3 The right to use the Autodesk name and logo may not be licensed,
sold or assigned by UOL.
3. Competitive Accounts Restriction
3.1 UOL shall maintain the technical capability to prevent certain UOL
accounts, specified in Exhibit A ("Competitive Accounts"), from linking to the
Autodesk Virtual Campus. These technical security requirements shall include
separate hardware servers and communications lines. The Autodesk Virtual Campus
shall have its own unique Internet domain and shall allow UOL to prevent users
of the site from seeing UOL's other servers. Each server included under the
Autodesk Virtual Campus shall have its own unique TCP/IP address and shall be
addressable by means of a central server with a URL such as "xxx.xxx.xxx." The
on-line display of UOL's name on any of the server's pages shall be agreed upon
by both parties.
3.2 UOL shall not link or allow to be linked products that are
competitive to Autodesk's computer-aided design, imaging, or animation products.
Autodesk shall have the right to add additional accounts that are directly
competitive with Autodesk products to Exhibit A by written notice to UOL.
3.3 Autodesk confirms, that during the term of the Agreement,
Autodesk's Education Department in the Americas, and only that department, shall
not enter into a similar business relationship concerning the development of a
virtual campus for the Internet. The territory covered by Autodesk's Education
Department in the Americas is the U.S., Canada, Mexico, Central America, and
South America.
Notwithstanding the above, nothing in this Section 3 shall be
construed to prevent Autodesk, or any subdivision or department thereof, except
the Education Department in the Americas from (i) providing products and
services whether through a virtual campus or otherwise, through the Internet or
other channels; or (ii) licensing or acquiring products and services for the
purpose of providing such products and services through the Internet or other
channels.
UOL agrees that during the term of the Agreement it shall not
enter into a similar business relationship concerning the development of a
virtual campus for the Internet with the companies then-current version of
Exhibit A in the United States, Canada, Mexico, Central America, and South
America.
4. Development
4.1 UOL shall be responsible for all costs related to the development
and operation of the Autodesk Virtual Campus, including but not limited to
software, hardware, and telecommunications.
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4.2 Autodesk shall provide staff support to review and approve the
Autodesk Virtual Campus design specification on an ongoing basis. Revision One
of the specification shall be completed as set forth in Exhibit B, ("Milestone
Schedule"). Milestone dates are subject to the execution of this Agreement by
April 15, 1996. If the execution of the Agreement occurs after April 15, 1996
the milestone dates will be changed as agreed upon by both parties.
5. Support
UOL shall be solely responsible for providing support to Content
Providers and customers but shall not be obligated to provide support services
free of charge and shall have the option to subcontract such support services.
6. Marketing
6.1 UOL shall be responsible for all "directed" marketing costs for the
Autodesk Virtual Campus, as set forth in Exhibit C. UOL must have Autodesk's
prior written approval to make changes to Exhibit C, which shall not be
unreasonably withheld.
6.2 UOL shall also fund marketing and promotional activities to Content
Providers and potential customers and provide a summary on a quarterly basis of
marketing and promotional activities to Autodesk.
6.3 Autodesk shall perform certain marketing activities related to
promoting the Autodesk Virtual Campus, as set forth in Exhibit D.
6.4 Autodesk may, as appropriate, provide to UOL evaluation,
demonstration, and training disks and documentation for use in promotion of the
Autodesk Virtual Campus. An initial list of these materials are set forth in
Exhibit E. UOL shall electronically distribute such materials free of charge.
Autodesk shall have the right to update Exhibit E by written notice. All such
materials shall remain the exclusive property of Autodesk. UOL shall not remove
any copyright or trademark notices contained in such materials.
6.5 Autodesk shall provide UOL with a designated contact on an ongoing
basis to insure that the Autodesk Virtual Campus has the most current education
marketing information and is properly linked to the Autodesk Education Internet
site.
6.6 Autodesk shall assist UOL in linking where appropriate to
Autodesk's Internet web pages and shall provide promotional Internet links where
appropriate to the Autodesk Virtual Campus on the Internet. UOL shall reimburse
Autodesk for all costs incurred from the development of the link or the
development of a UOL promotional presence on Autodesk's Internet web page but
shall not be required to pay marketing, advertising or other fees to Autodesk
for providing the web link during the term of this Agreement.
7. Royalties
7.1 In consideration of the trademark rights granted hereunder and of
the other obligations assumed by Autodesk, UOL shall pay Autodesk a royalty of
[ ] percent ([ ]%) of Net Revenues.*
7.2 Royalties shall not be owed for the Autodesk documentation or
Autodesk demonstration, evaluation, or training disks distributed through the
Autodesk Virtual Campus. These materials are identified in Exhibit E. Autodesk
may by notification to UOL change, add, or delete materials.
7.3 Royalties shall be due and payable within twenty (20) days after
the close of each calendar quarter.
7.4 UOL shall provide Autodesk a royalty report identifying the Net
Revenue, the number of transactions , a description of the transaction, the
selling price, the number of demonstration, evaluation, and training disks
distributed within thirty (30) days after the close of each calendar quarter. If
the royalty report is provided
*[]CONFIDENTIAL TREATMENT REQUESTED; CERTAIN INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SEC.
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through electronic communication, Autodesk shall provide UOL with a designated
contact in the Autodesk Finance department.
7.5 Autodesk shall have the right upon reasonable notice to inspect and
audit UOL's records no more than twice annually for purposes of verification of
royalty reports. Any such audit shall be conducted by Autodesk or its
representatives during normal business hours at UOL's location and UOL shall
cooperate fully in such audit. Autodesk shall be responsible for all fees and
expenses for any such audits, provided, however, that, if the result of the
audit identifies an underpayment of 10% or more to Autodesk, the audit fees and
expenses shall be paid by UOL.
8. Disclaimers
8.1 Autodesk makes no endorsement of the products or courseware that
are the subject of this Agreement. UOL agrees that UOL shall be solely
responsible for the content of the Autodesk Virtual Campus and any products sold
by UOL.
8.2 Autodesk does not warrant the Autodesk documentation or Autodesk
demonstration, evaluation, or training disks that may be provided under
Paragraph 6.4. UOL SHALL NOT MAKE OR PASS ON TO ANY PARTY ANY WARRANTY OR
REPRESENTATION ON BEHALF OF AUTODESK. AUTODESK EXPRESSLY DISCLAIMS ANY IMPLIED
WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE, MERCHANTABILITY OR
NON-INFRINGEMENT.
8.3 EXCEPT AS EXPRESSLY STATED HEREIN, NEITHER PARTY HAS MADE ANY
WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED BY OPERATION OF LAW OR
OTHERWISE, CONCERNING THE SOFTWARE TO BE PROVIDED HEREUNDER, THE SCOPE OR
DURATION OF ANY MARKETING EFFORT WHICH AUTODESK MAY UNDERTAKE, OR THE SUCCESS OF
ANY SUCH MARKETING EFFORT. NEITHER PARTY HAS RELIED ON ANY EXPRESS OR IMPLIED
REPRESENTATION OF THE OTHER PARTY, WRITTEN OR ORAL, AS AN INDUCEMENT TO ENTERING
INTO THIS AGREEMENT.
8.4 UOL shall ensure that the following statement is prominently
displayed on the Autodesk Virtual Campus prior to customer purchase of any
Product or Service:
"The Autodesk Virtual Campus is independently operated by
Univesity Online, Inc. Autodesk makes no endorsement of the products or services
provided hereunder and does not guarantee the performance of such products and
services.Responsibility or liability for the performance (or failure to perform)
of any product or service shall remain solely with University Online, Inc."
9. Indemnity
UOL shall defend and hold Autodesk harmless from any action, claim,
lawsuit or proceeding of whatever nature related to or arising from the Autodesk
Virtual Campus and any sales, marketing, or distribution activities connected
with the Autodesk Virtual Campus.
10. Termination
10.1 Term. The term of the Agreement shall commence upon the Effective
Date and shall continue for three years and four months unless terminated
earlier in accordance with the terms of this Agreement. Autodesk shall have the
option to renew the term for an additional two (2) years upon thirty (30) days
written notice to UOL before the expiration of the initial term.
10.2 Termination for Cause. Subject to Autodesk's right of immediate
termination set forth in Paragraph 10, either party may terminate this Agreement
upon thirty (30) days written notice of a breach if such breach is not cured
within sixty (60) days from notification, provided however that, Autodesk may
terminate this Agreement upon ten (10) days' written notice for UOL's failure to
remit royalty payments when due.
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10.3 Termination for Insolvency. Autodesk may terminate this Agreement
immediately upon written notice (i) upon the institution by or against UOL of
insolvency, receivership or bankruptcy proceedings or any other proceedings for
the settlement of UOL's debts, (ii) upon UOL making an assignment for the
benefit of creditors or (iii) upon UOL' dissolution or ceasing to conduct
business in the normal course.
10.4 Return of Materials. All Autodesk information, data, photographs,
samples, literature, and sales aids of every kind shall remain the property of
Autodesk. Within thirty (30) days after the termination of this Agreement, UOL
shall return all such items as Autodesk may direct, at Autodesk's shipping
expense.
10.5 All UOL information, data, photographs, samples, literature, and
sales aids of any kind shall remain the property of UOL. Within thirty (30) days
after the termination of this Agreement, Autodesk shall return all such items as
UOL may direct, at UOL's shipping expense.
10.6 Survival of Terms. These terms and conditions of this Agreement
which by their nature should survive, shall survive and continue after any
termination of this Agreement.
10.7 Effect of Termination. Upon the termination of this Agreement for
any reason (at expiration of its term or pursuant to Sections 10.2 or 10.3), UOL
shall retain all right, title and interest in and to the Autodesk Virtual Campus
(which henceforth shall no longer be called the Autodesk Virtual Campus), with
all rights to exploit the virtual campus without renumeration or accountability
to Autodesk; the right and license granted to UOL in Section 2.1 for the use of
Autodesk's trademarks shall terminate and be of no further force or effect; UOL
shall immediately cease use of the Autodesk trademarks; and all royalties and
other payments from UOL to Autodesk shall immediately cease.
11. Publicity
All public announcements, press releases or other press contact made by
either party respecting the relationship established by this Agreement or
regarding the terms and conditions hereof shall be subject to the prior review
and approval of the other party, which approval shall not be unreasonably
withheld.
12. Limitation of Liability
THE PARTIES AGREE THAT IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE
OTHER PARTY, UNDER ANY THEORY OF LIABILITY, WHETHER IN AN ACTION BASED ON A
CONTRACT, TORT (INCLUDING NEGLIGENCE) OR ANY OTHER LEGAL THEORY, HOWEVER
ARISING, FOR ANY COSTS OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES OR FOR ANY
LOSS OF USE, INTERRUPTION OF BUSINESS, OR INDIRECT, SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES OF ANY KIND, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF
THE POSSIBILITY OF SUCH DAMAGE.
13. Confidentiality
Both parties shall hold as confidential any information which the one
party obtains from the other party in the performance of this Agreement and
which is marked or noted as confidential. Neither party shall, without the prior
written consent of the other party, publish or disclose such information or
authorize anyone else to publish or disclose such information, unless and until
such information has ceased to be confidential. Notwithstanding anything to the
contrary set forth herein, the following information shall not be deemed
confidential under this Agreement:
(a) Information which is in the public domain,
(b) Information which is received by the non-disclosing party without
any breach of the non-disclosing party's obligations hereunder,
(c) Any information which is independently developed by the
non-disclosing party without reference to or without any use of the disclosing
party's confidential information, or
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(d) Any information which is required by law to be disclosed.
Notwithstanding the foregoing, UOL may disclose terms of this Agreement
to potential third-party investors solely in connection with efforts to obtain
funding for UOL, provided that such third parties have executed a nondisclosure
agreement which includes restrictions on the disclosure of confidential
information substantially similar to the restrictions set forth herein.
The parties hereto acknowledge and agree that UOL may contract with a
third party to provide some or all of the funding required by UOL to accomplish
the development and operation of the Autodesk Virtual Campus. Other provisions
in this Agreement to the contrary notwithstanding, Autodesk acknowledges and
agrees that such third party may engage in financing efforts for the Autodesk
Virtual Campus project as described in this Agreement, which efforts will
require the disclosure to potential investors of the substance of this
Agreement. UOL agrees that all such disclosures will be subject to the prior
review and approval of Autodesk as contemplated by Section 11 above, and
Autodesk agrees to review and comment on such submissions promptly.
14. Miscellaneous Provisions
(a) This Agreement is made under and shall be construed in accordance
with the laws of the State of California, without regard to the conflict of law
provisions thereof.
(b) In the event legal action is undertaken to enforce or interpret the
terms of this Agreement, the prevailing party in such action shall be entitled
to recover reasonable attorneys' fees and costs incurred in addition to any
other relief to which it may be entitled.
(c) UOL may not assign or transfer any of its rights or
responsibilities set forth herein without the express written consent of
Autodesk.
(d) The Exhibits attached hereto and referenced herein are hereby
incorporated herein as part of this Agreement by this reference.
(e) This document and any referenced documents represent the entire
agreement between the parties as to the matters set forth and integrates all
prior discussions or understandings between them. This Agreement may only be
modified or amended in writing by a document signed by an authorized
representative of both Autodesk and UOL.
(f) The failure of either party to insist, in any one or more
instances, upon the performance of any of the terms, covenants or conditions of
this Agreement or to exercise any right hereunder, shall not be construed as a
waiver of the future performance of any such term, covenant or condition or the
future exercise of such right.
(g) Independent Contractors. It is agreed that the relationship between
the parties is that of independent contractors, and nothing contained in this
Agreement shall be construed or implied to create the relationship of partners,
joint venturers, agent and principal, employer and employee, or any relationship
other than that of independent contractors. At no time shall either party make
any commitments or incur any charges or expenses for or in the name of the other
party.
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15. Notices
(a) All notices given in connection with this Agreement shall be in
writing. Notice may be given by mailing the same by United States mail,
certified or registered, return receipt requested, first class postage prepaid,
or by sending the same by Federal Express or equivalent courier service,
addressed as follows:
(i) If to Autodesk: Autodesk, Inc.
000 XxXxxxx Xxxxxxx
Xxx Xxxxxx, XX 00000
Attention: Legal Department
(ii) If to UOL: University Online, Inc.
000 Xxxx Xxxxx Xxxxxx, Xxxxx 000
Xxxxx Xxxxxx, Xxxxxxxx 00000
Attention: Xxxx Xxxxxxxx, CFO
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
AUTODESK, INC. UNIVERSITY ONLINE, INC.
By: _________________________________ By: __________________________________
Print Name: _________________________ Print Name: __________________________
Title: _______________________________ Title: _______________________________
Date: ____________________________ Date: ______________________________
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