EXHIBIT 10.12
INFOMODELER TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This Agreement is made as of October 7, 1996 (the "Effective Date") by and
between Asymetrix Corporation ("Asymetrix"), a Washington corporation having its
principal office at 000 - 000xx Xxxxxx X.X., Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx
00000, and ASX Corporation ("ASX"), a Washington corporation having an office at
000 - 000xx Xxxxxx X.X., Xxxxx000, Xxxxxxxx, Xxxxxxxxxx 00000.
In consideration of the covenants and conditions hereinafter set forth,
Asymetrix and ASX agree as follows:
1. DEFINITIONS.
(a) "Asymetrix Product" means a product of Asymetrix that incorporates or
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otherwise utilizes any portion of the InfoModeler Technology in combination with
other technology of Asymetrix or third parties such that a majority of the
functionality of such product is derived from technology other than the
InfoModeler Technology.
(b) "ASX Product" means a product of ASX that incorporates or otherwise
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utilizes the InfoModeler Technology, either alone or in combination with other
technology of ASX or third parties such that a majority of the functionality of
such product is derived from the InfoModeler Technology.
(c) "Competing Product" means any product that competes with an ASX
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Product; provided, however, that "Competing Product" shall not include any
products in the ToolBook II or SuperCede product lines, including any successors
to such product lines, whether marketed under the `ToolBook II' or `SuperCede'
names or not, even if such products can perform some of the same functions as an
ASX Product.
(d) "Confidential Information" means (i) any of a party's proprietary
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technology or computer software in all versions and forms of expression, whether
or not the same has been patented or the copyright thereto registered, is the
subject of a pending patent or registration application, or forms the basis for
a patentable invention; (ii) any manuals, notes, documentation, technical
information, drawings, diagrams, specifications, formulas or know-how related to
any of the foregoing; (iii) any information regarding current or proposed
products, customers, contracts, business methods, financial data or marketing
data; and (iv) any other information that is clearly marked or designated as
confidential or proprietary by such party. Confidential Information includes
unwritten information that is identified by such party as confidential at the
time of disclosure. Confidential Information does not include information which:
(v) was in a party's lawful possession prior to the disclosure and had not been
obtained by such party either directly or indirectly from the other party; (vi)
is lawfully disclosed to such party by a third party without restriction on
disclosure; (vii) is independently developed by such party without reference to
the other party's Confidential Information; or (viii) is publicly disclosed by
the other party. It shall be the receiving party's burden to show information is
not Confidential Information of the other party.
(e) "InfoModeler Technology" means all original works of authorship,
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inventions, software source code, algorithms, documentation, know-how, concepts,
techniques and discoveries and all other subject matter which Asymetrix has
developed as of the date of this Agreement and which are related to the
InfoModeler and database query projects of the Asymetrix Client/Server Division,
including copyrights and trade secrets covering the foregoing throughout the
world, but not including the Patents; provided, however, that "InfoModeler
Technology" shall not include any know-how, ideas, concepts, techniques or
discoveries related to computer programming or software applications development
generally, whether known to Asymetrix prior to or developed in the course of
developing any particular software.
(f) "Net Revenue" means all revenue to ASX from sales of ASX Products or
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services related to ASX Products, less any amounts for returns, sales taxes
collected by ASX, shipping and handling charges, separately invoiced amounts for
export duties and customs charges, and amounts written off as uncollectable in
accordance with ASX's normal accounting practices, all with respect to sales of
ASX Products or services related to ASX Products only.
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(g) "Patents" means any issued patents and patent applications (including
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any future patents that may be issued to ASX pursuant to such applications),
including any foreign equivalents, covering aspects of the InfoModeler
Technology now owned or hereafter acquired by ASX.
2. TRANSFER OF INFOMODELER TECHNOLOGY.
(a) Assignment. Asymetrix hereby sells, assigns, transfers and conveys to
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ASX all of its right, title and interest in and to the InfoModeler Technology,
including without limitation all documents and files in both printed and
electronic form relating thereto.
(b) Registered User and Prospect Lists. Asymetrix shall provide ASX with
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all information related to the existing registered users of Asymetrix's
InfoModeler product, which ASX may use for whatever purpose it deems
appropriate. Asymetrix shall also provide ASX with a list of all known
qualified prospective customers for the InfoModeler products, which ASX may use
for whatever purpose it deems appropriate. Asymetrix may continue to use such
InfoModeler registered user and prospect lists for whatever purpose Asymetrix
deems appropriate.
(c) Referrals. Following execution of this Agreement, Asymetrix shall
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refer all inquiries regarding the InfoModeler products to ASX, including sales
leads and potential strategic partners, and shall cease to sell the InfoModeler
product. Asymetrix shall not be entitled to any compensation for such referrals
beyond the revenue based payments described in Section 6.
(c) Technical Support. Following execution of this Agreement, ASX shall be
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responsible for providing technical support to all end users of the InfoModeler
product licensed by ASX as well as the existing registered user base originally
licensed by Asymetrix. Asymetrix may refer any technical support calls received
after the date hereof to ASX's technical support staff, and such calls shall be
given equal priority with calls directly to ASX regardless of whether the end
user was licensed InfoModeler by Asymetrix or ASX.
3. LICENSE TO INFOMODELER SOFTWARE.
(a) Grant and Scope. Subject to the restrictions set forth in Section
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3(b), ASX hereby grants to Asymetrix a non-exclusive, royalty-free, world-wide,
perpetual, non-terminable right and license (i) to modify, copy, merge, and
incorporate any portion of the InfoModeler Technology into other computer
programs in connection with the design, development, and manufacture of
Asymetrix Products; (ii) to make, have made, duplicate, have duplicated, modify,
use, market, display, perform, sell, license, or otherwise transfer or
distribute object code copies of the InfoModeler Technology but only
incorporated into and forming a part of Asymetrix Products, and to authorize
Asymetrix's distributors, resellers, value added resellers, original equipment
manufacturers and other parties authorized by Asymetrix to market or distribute
Asymetrix Products to do any of the foregoing described in this subsection
3(a)(ii); and (iii) to make and use a reasonable number of copies of Asymetrix
Products for purposes of marketing, training, and demonstrations related to the
Asymetrix Products. ASX hereby grants to Asymetrix a non-exclusive, royalty-
free, world-wide, perpetual, non-terminable license under all of the Patents to
allow Asymetrix to fully exercise the rights granted hereby.
(b) Restrictions. Asymetrix shall not be permitted to market, display,
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perform, sell, distribute, sublicense or otherwise transfer the InfoModeler
Technology (i) on a standalone basis separate and apart from the Asymetrix
Products; (ii) as part of any Competing Product; or (iii) in source code form.
Nothing herein shall prevent Asymetrix from developing, marketing and
distributing Competing Products provided that any such Competing Products do not
incorporate any InfoModeler Technology and are developed without reference to
ASX Confidential Information.
(c) Survival. The license granted hereby is intended to be perpetual and
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shall continue and be binding on the surviving party in any merger or
consolidation of ASX or purchaser of all or substantially all of the assets of
ASX.
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4. RIGHTS TO MODIFICATIONS.
ASX shall own any all modifications, updates, upgrades and future versions of
the InfoModeler Technology made by ASX following the Effective Date, and
Asymetrix shall have no rights with respect to any of the foregoing pursuant to
this Agreement. Any modifications to the InfoModeler Technology made by
Asymetrix hereunder shall be owned in their entirety by Asymetrix, and Asymetrix
shall have no rights with respect to any of the foregoing pursuant to this
Agreement.
5. ASX COMMON STOCK.
In consideration of the transfer of the InfoModeler Technology to ASX and the
covenants and agreements of Asymetrix hereunder, ASX shall, concurrently with
the execution of this Agreement issue to Asymetrix 3,500,000 shares of the $.01
par value common stock of ASX. ASX represents, warrants and agrees that upon
issuance, such shares of ASX common stock shall be duly authorized, validly
issued, fully paid and nonassessable.
6. REVENUE BASED PAYMENTS.
(a) Revenue Based Payments. In consideration of the transfer of the
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InfoModeler Technology to ASX and the covenants and agreements of Asymetrix
hereunder, ASX shall make revenue based payments to Asymetrix in an amount equal
to 8% of Net Revenues for a period of five years from the Effective Date.
(b) Payment and Reporting. ASX shall provide to Asymetrix a written
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statement, accompanied by a check for all revenue based payments then payable,
not later than 30 days after the close of each calendar quarter during which
revenue based payments accrued and specifying for such quarter: (i) the Net
Revenues for the calendar quarter; (ii) the amount of any credit against such
revenue based payments for the particular calendar quarter (if applicable); and
(iii) a calculation of the revenue based payments payable to Asymetrix.
(c) Records and Audit. ASX shall keep accurate records and books of account
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concerning its Net Revenues adequate to determine the amount of the revenue
based payments owed Asymetrix, which shall be preserved by ASX in a safe place
for a period of one year following the five-year period during which such
revenue based payments are payable. Throughout the five-year period during
which revenue based payments are payable to Asymetrix, and during the year
following expiration thereof, Asymetrix or its certified public accountants
shall have the right, upon 30 days prior written notice and at Asymetrix's
expense, to audit ASX's records concerning the distribution of the InfoModeler
Products; provided that such right shall be limited to one audit in any twelve
month period. If an audit reveals that ASX has underpaid the per copy royalties
due Asymetrix, ASX shall promptly pay to Asymetrix the amount of the
underpayment. If such underpayment exceeds five percent of the total amount
actually owed, ASX shall promptly reimburse Asymetrix for its costs and expenses
in performing such audit. All information obtained in the audit shall be kept
confidential by Asymetrix and its certified public accountants, except to the
extent necessary for Asymetrix to enforce its rights under this Agreement. The
certified public accountants conducting any such audit shall execute a non-
disclosure agreement reasonably acceptable to ASX prior to conducting any such
audit.
7. NON-DISCLOSURE.
A party receiving Confidential Information ("Recipient") of the other party
("Discloser") shall not use the Confidential Information for any purpose other
than performing its obligations under this Agreement. Throughout the term of
this Agreement and for a period of five years after the completion thereof,
Recipient shall limit disclosure of Confidential Information within its own
organization to its employees having a need to know and who have agreed to be
bound by the terms of this Agreement. Recipient shall not disclose Confidential
Information to any third party individual, corporation, or other entity without
the prior written consent of Discloser. Recipient shall have satisfied the
foregoing obligations if it uses the same degree of care as Recipient uses to
protect its own Confidential Information of a like nature, but no less than a
reasonable degree of care, to prevent the unauthorized dissemination of
Confidential Information. Recipient shall be entitled to disclose Confidential
Information in a response to a court order or as otherwise required by law,
provided that Recipient shall first give notice to Discloser
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and make a reasonable effort to obtain a protective order to protect the
confidentiality of the information. Recipient shall immediately notify Discloser
of any actual or suspected unauthorized use of Confidential Information and will
cooperate with Discloser in obtaining injunctive or other equitable relief.
8. DISCLAIMER OF WARRANTIES.
BOTH PARTIES AGREE THAT THE INFOMODELER TECHNOLOGY IS TRANSFERRED AND LICENSED
"AS IS" WITH NO WARRANTIES WHATSOEVER, EITHER EXPRESS OR IMPLIED. EACH PARTY
EXPRESSLY DISCLAIMS ANY IMPLIED WARRANTIES, INCLUDING ANY IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE AND NON-INFRINGEMENT.
9. EXCLUSIONS OF DAMAGE.
ASYMETRIX SHALL NOT, UNDER ANY CIRCUMSTANCES, BE LIABLE TO ASX FOR ANY DAMAGES
RESULTING FROM THE DUPLICATION, MARKETING, USE OR DISTRIBUTION OF ANY PORTION OF
THE INFOMODELER TECHNOLOGY BY OR UNDER A LICENSE FROM ASX. ASX SHALL NOT, UNDER
ANY CIRCUMSTANCES, BE LIABLE TO ASYMETRIX FOR ANY DAMAGES RESULTING FROM THE
DUPLICATION, MARKETING, USE OR DISTRIBUTION OF ANY PORTION OF THE INFOMODELER
TECHNOLOGY BY OR UNDER A LICENSE FROM ASYMETRIX. NEITHER PARTY SHALL BE LIABLE
TO THE OTHER FOR CONSEQUENTIAL, INCIDENTAL, SPECIAL OR EXEMPLARY DAMAGES, EVEN
IF SUCH PARTY HAS BEEN APPRISED OF THE LIKELIHOOD OF SUCH DAMAGES OCCURRING.
10. INDEPENDENT CONTRACTOR.
The parties hereunder are independent contractors and not an employees of the
other. Neither party shall be subject to the other party's control or direction
over the performance of this Agreement. Neither party's employees shall be
covered by the other's benefit programs, such as health insurance, social
security, workers' compensation or unemployment compensation. Each party shall
be responsible for paying all taxes related to payments made to it hereunder,
and neither party shall be responsible for withholding or payment of those
taxes. Nothing contained herein shall be deemed or construed as creating a joint
venture or a partnership between ASX and Asymetrix. Neither ASX nor Asymetrix
is by virtue of this Agreement authorized as an agent or other representative of
the other.
11. GENERAL.
(a) Entire Agreement. This Agreement contains all the agreements,
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understandings, representations, conditions, warranties and covenants, and
constitutes the sole and entire agreement between the parties hereto pertaining
to the subject matter hereof and supersede all prior communications or
agreements, written or oral. This Agreement may not be modified except by
written instrument signed by each party.
(b) Governing Law. This Agreement and the rights and obligations of the
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parties hereunder shall be construed in accordance with and shall be governed by
the internal laws of the State of Washington and applicable federal law. Each
party hereby consents to the jurisdiction and venue of the courts of the State
of Washington, United States of America or of any federal court located in such
state.
(c) Interpretation and Waiver. If any provision of this Agreement is
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declared invalid or unenforceable the remaining provisions of this Agreement
shall remain in full force and effect. Waiver by either ASX or Asymetrix of one
or more terms, conditions, or defaults of this Agreement shall not constitute a
waiver of the remaining terms and conditions or of any future defaults of this
Agreement.
(d) Assignment. Either party may assign its right and interest in this
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Agreement upon written notice to the other party, provided that (i) the assignee
agrees to assume and be bound by all of the obligations of the assignor
hereunder and (ii) the assignor shall be released from its obligations only with
a written release from the other party. Subject to the above limitation, this
Agreement will inure to the benefit and be binding upon the
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parties, their successors, and assigns. Unless otherwise specifically agreed to
by the non-assigning party, no assignment by either party shall relieve the
assignor from its obligations pursuant to this Agreement.
(e) Attorney's Fees. The prevailing party in disputes concerning this
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Agreement shall be entitled to the costs of collections and enforcement,
including but not limited to reasonable attorney's fees, court costs and all
necessary expenses, regardless of whether litigation is commenced.
(f) Notices. All notices provided pursuant to this Agreement shall be in
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writing and hand delivered or deposited in the United States mail first class,
postage prepaid, and addressed to the addresses set forth above, or such other
address as the party to receive the notice so designates by notice to the other.
(g) Injunctive Relief. Each party acknowledges that the breach, or
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threatened breach, of Section 7 or any action by Asymetrix with respect to the
InfoModeler Technology outside the scope of the license granted in Section 3
could give rise to irreparable injury to the other party which would be
inadequately compensated in money damages. Accordingly, either party may seek a
restraining order and/or an injunction prohibiting the breach or threatened
breach of Section 7, and ASX may seek a restraining order and/or an injunction
prohibiting any action by Asymetrix with respect to the InfoModeler Technology
outside the scope of the license granted in Section 3, in all cases in addition
to, and not in limitation of, any other legal remedies which may be available to
such party.
IN WITNESS WHEREOF, the parties have executed this Agreement by their duly
authorized representatives.
Asymetrix: ASYMETRIX CORPORATION
By /s/ Xxxxx Xxxxxxxxx
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Name Xxxxx Xxxxxxxxx
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Title President & CEO
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ASX: ASX CORPORATION
By /s/ Xxxxx Xxxxxx
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Name Xxxxx Xxxxxx
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Title VP OPS
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FIRST AMENDMENT TO
INFOMODELER TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This First Amendment to the InfoModeler Technology Transfer and License
Agreement ("Amendment") is made as of January 14, 1998 (the "Effective Date") by
and between Asymetrix Learning Systems, Inc., a Washington corporation,
previously known as Asymetrix Corporation ("Asymetrix"), having its principal
office at 000 000xx Xxxxxx X.X., Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx 00000, and
InfoModelers, Inc. a Washington corporation, previously known as ASX Corporation
("InfoModelers"), having its principal office at 000 000xx Xxxxxx X.X., Xxxxx
000, Xxxxxxxx, Xxxxxxxxxx 00000.
Recitals
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A. Pursuant to that certain InfoModeler Technology Transfer and License
Agreement (the"Original Agreement") made as of October 7, 1996 ("Original
Effective Date"), Asymetrix transferred certain technology to InfoModelers for
the consideration described in the Original Agreement, and InfoModelers granted
certain licenses to Asymetrix on the terms and conditions set forth in the
Original Agreement.
B. As partial consideration for the transfer of such technology to
InfoModelers, InfoModelers agreed to make certain revenue based payments to
Asymetrix as more fully described in the Original Agreement.
C. The license to such technology granted to Asymetrix pursuant to the
Original Agreement was limited to certain technology as it existed on the
Original Effective Date and Asymetrix was granted no right or license to any
improvements made to such technology after that date.
D. Asymetrix and InfoModelers each desire to modify the Original
Agreement to eliminate the revenue based payments to Asymetrix, to provide
Asymetrix with and a license to the current version of certain technology of
InfoModelers, to grant a license to the current version of certain technology of
Asymetrix to InfoModelers, to make certain other modifications to the Original
Agreement, and to set forth their modified agreements in this Amendment.
Agreement
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Therefore, in consideration of the foregoing and the mutual covenants and
conditions hereinafter set forth, Asymetrix and InfoModelers agree to amend the
Original Agreement as follows. Except for such modifications as may be
necessary to make such terms and conditions consistent with this Amendment, the
remainder of the Original Agreement shall continue in full force and effect. In
the event of any inconsistency between the Original Agreement and this
Amendment, the terms and conditions of this Amendment shall control.
1. Section 1 of the Original Agreement is amended to include the following new
definitions:
(a) Preamble. The preamble Section 1 is deleted in its entirety and
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replaced with the following:
"In addition to capitalize terms defined elsewhere in this Agreement, the
following capitalized terms shall, when used in this Agreement, have the
meanings defined herein. To the extent a term is defined in this Amendment and
the Original Agreement, the meaning in this Amendment shall control."
(b) Section 1(c). Section 1(c) of the Original Agreement "Competing
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Product" is deleted in its entirety and replaced with the following:
"(c) "Online Learning Product" means a software product of Asymetrix
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that (i) is designed for authoring, creating, developing, deploying, tracking,
administering or managing education and training on either stand-alone computers
or over the Internet, intranets, or computer networks; and (ii) incorporates or
otherwise utilizes any portion of the Product in combination with other
technology of Asymetrix or third parties."
(c) Section 1(f). Section 1(f) of the Original Agreement "Net Revenue" is
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deleted in its entirety and replaced with the following:
"(f) "InfoAssistant Technology" means the binary and source code developed
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by Asymetrix, including comments and related documentation and user interface,
and included in Asymetrix's "InfoAssistant" software product, but shall not
include any revisions, enhancements, translations, modifications, adaptations,
refinements, derivatives or improvements thereto made by Asymetrix or any
successor to it, and shall not include any elements of the "InfoAssistant"
product developed by third parties and licensed by Asymetrix."
(d) New Section 1(h). The Original Agreement is amended to include the
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following new Section 1(i);
(h) "Product" means (i) the binary and source code, including comments
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and related documentation and user interface, for the "InfoModeler 3.1" software
product and (ii) the binary and source code, including comments and related
documentation and user interface, for the "ActiveQuery" software product, as
they both exist on the date of this Amendment. "Product" shall not include any
revisions, enhancements, translations, modifications, adaptations, refinements,
derivatives or improvements thereto made by or for InfoModelers or any successor
to InfoModelers to the "InfoModeler 3.1" software product or the "ActiveQuery"
software product."
2. Section 2(c) of the Original Agreement "Referrals" is deleted in its
entirety and replaced with the following:
"(c) Referrals. Asymetrix shall refer all inquires regarding the
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InfoModeler Product to InfoModelers, including sales leads and potential
strategic partners, and shall cease to sell the InfoModelers Product. Asymetrix
shall not be entitled to any compensation for such referrals."
3. Section 2(d) of the Original Agreement "Technical Support" is deleted in
its entirety.
4. Section 3 of the Original Agreement is deleted in its entirety and replaced
with the following:
"3. LICENSE TO ASYMETRIX.
(a) Product License. Subject to the restrictions set forth in Section
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3(b) below, InfoModelers hereby grants to Asymetrix (i) a non-exclusive,
royalty-free, world-wide, perpetual, non-terminable (except pursuant to Section
13) right and license to modify (only as set forth below), copy, merge and
incorporate any portion of the Product into the Online Learning Products, and
(ii) to make, have made, duplicate, have duplicated, use, market, display,
perform, sell, sublicense, or otherwise distribute machine-readable object code
copies of the Product, but only as incorporated into and forming as part of an
Online Learning Product, and to authorize Asymetrix's distributors, resellers,
value added resellers, original equipment manufacturers and other parties
authorized by Asymetrix to market or distribute Online Learning Products to do
any of the foregoing described in this Subsection 3(a)(ii). Asymetrix's right to
modify any portion of the Product set forth in Subsection 3(a)(i) above shall be
exclusively limited to any modification of the any of the Product necessary for
bug fixes, maintenance or support or to make any of the Product compatible with,
or able to be incorporated into, any On-Line Learning Product. InfoModelers
herby grants to Asymetrix a non-exclusive, royalty-free, world-wide, perpetual,
non-terminable (except pursuant to Section 13) license under all of the Patents
solely to allow Asymetrix to fully exercise the rights granted in this Section
3.
(b) Restrictions. Asymetrix shall not market, display, perform, sell,
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distribute, license, sublicenses, assign or otherwise transfer the Product (i)
on a standalone basis separate and apart from any Online Learning Product; or
(ii) as part of any product other than an Online Learning Product. Nothing
herein shall prevent Asymetrix from developing, marketing and distributing any
products that are not Online Learning Products provided that any such products
do not incorporate any of the Product and are developed without reference to any
of InfoModelers' Confidential Information. Except as expressly permitted in this
Agreement, the Product may not be used, copied, translated, redistributed,
retransmitted, published, sold, rented, leased, marketed, sublicensed, pledged,
assigned, disposed of, encumbered, transferred, altered, modified or enhanced,
whether in whole or in part, nor may Asymetrix create derivative works from or
based upon any portion of the Product. Asymetrix may not remove any proprietary
notices, marks or labels from the Product. Asymetrix shall not request or
authorize anyone else to take any of the foregoing actions. Asymetrix
acknowledges that the Product is licensed "as is" and that InfoModelers shall
not provide any customer, technical or other support, service or maintenance to
Asymetrix or any end user of any Asymetrix Product, including without
limitation, any Online Learning Product.
(c) Survival. The license granted pursuant to this Section 3 shall
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continue and be binding on the surviving party in any merger or consolidation of
InfoModelers or the purchaser of all or substantially all of the assets of
InfoModelers."
5. Section 4 of the Original Agreement is deleted in its entirety and replaced
with the following:
"4. LICENSE TO INFOMODELERS.
(a) InfoAssistant License. Subject to the restrictions set forth in
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Section 4(b) below, Asymetrix hereby grants to InfoModelers (i) a non-exclusive,
transferable, royalty-free, world-wide, perpetual, non-terminable right and
license to modify, copy, merge and incorporate any portion of the InfoAssistant
Technology into its software products, and (ii) to make, have made, duplicate,
have duplicated, use, market, display, perform, sell, sublicense, or otherwise
distribute machine-readable object code copies of the Product, but only as
incorporated into and forming a part of its software products, and to authorize
InfoModelers' distributors, resellers, value added resellers, original equipment
manufacturers and other parties authorized by InfoModelers to market or
distribute its software products to do any of the foregoing described in this
Subsection4(a)(ii).
(b) Restrictions. InfoModelers shall not market, display, perform,
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sell, distribute, license,sublicense, assign or otherwise transfer the Product
on a standalone basis separate and apart from its software products.
InfoModelers may not remove any proprietary notices, marks or labels from the
InfoAssistant Technology. Asymetrix shall not request or authorize anyone else
to take any of the foregoing actions. InfoModelers acknowledges that the
InfoAssistant Technology is licensed "as is" and that Asymetrix shall not
provide any customer, technical or other support, service or maintenance to
InfoModelers or any end user of an InfoModelers software product.
(c) Survival. The license granted pursuant to this Section 4 shall
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continue and be binding on the surviving party in any merger or consolidation of
Asymetrix or the purchaser of all or substantially all of the assets of
Asymetrix."
6. Section 6 of the Original Agreement is deleted in its entirety.
7. Section 7 of the Original Agreement is amended to include the following new
subsection:
"(b) Non-Solicitation. For a period of three years from the date of this
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Agreement, neither Asymetrix nor any of its officers, directors, agents or
employees, will solicit, induce or attempt to influence, directly or indirectly,
any programmer who is employed by InfoModelers on the Effective Date to
terminate his or her employment with InfoModelers."
8. Section 8 of the Original Agreement is deleted in its entirety and replaced
with the following:
"8. DISCLAIMER OF WARRANTIES.
THE PARTIES AGREE THAT THE INFOMODELER TECHNOLOGY, INFOASSISTANT TECHNOLOGY
AND THE PRODUCT ARE ALL TRANSFERRED AND/OR LICENSED "AS IS" WITH NO WARRANTIES
WHATSOEVER, EITHER EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE AND NON-INFRINGEMENT."
9. Section 9 of the Original Agreement is deleted in its entirety and replaced
with the following:
"9. EXCLUSIONS OF DAMAGE.
ASYMETRIX SHALL NOT, UNDER ANY CIRCUMSTANCES, BE LIABLE TO INFOMODELERS FOR
ANY DAMAGES RESULTING FROM THE DUPLICATION, MARKETING, USE OR DISTRIBUTION OF
ANY PORTION OF THE INFOMODELERS TECHNOLOGY OR THE INFOASSISTANT TECHNOLOGY BY OR
UNDER A LICENSE FROM INFOMODELERS. INFOMODELERS SHALL NOT, UNDER ANY
CIRCUMSTANCES, BE LIABLE TO ASYMETRIX FOR ANY DAMAGES RESULTING FROM THE
DUPLICATION, MARKETING, USE OR DISTRIBUTION OF ANY PORTION OF THE PRODUCT BY OR
UNDER A LICENSE FROM ASYMETRIX. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR
CONSEQUENTIAL, INCIDENTAL, PUNITIVE, SPECIAL OR EXEMPLARY DAMAGES, EVEN IF SUCH
PARTY HAS BEEN APPRISED OF THE LIKELIHOOD OF SUCH DAMAGES OCCURRING."
10. The Original Agreement is amended to include the following new sections:
"12. COPYRIGHTS.
Asymetrix acknowledges that the copyright in the Product and in any copies
thereof are owned by InfoModelers and are protected by applicable United States
and foreign copyright, proprietary right, trade secret or similar laws and by
applicable international treaty provisions. No title to or ownership of the
Product is transferred to Asymetrix by this Agreement. Asymetrix will place a
notice setting forth InfoModelers's copyright in the Product in the "About Box"
of each Online Learning Product containing any portion of any of the Product, or
such other location in any Online Learning Product setting forth third-party
copyright rights. Asymetrix will not infringe, violate or contest any such
rights of InfoModelers in the Product and will take reasonable precautions to
protect InfoModelers's rights in the Product; provided, however, that the
foregoing shall not preclude Asymetrix from asserting any defense that may be
available to it in the event a claim is asserted against Asymetrix related to
the Product (other than
a claim asserted by InfoModelers for breach of this Agreement by Asymetrix).
InfoModelers acknowledges that the copyright in the InfoAssistant Technology
and in any copies thereof are owned by Asymetrix and are protected by applicable
United States and foreign copyright, proprietary right, trade secret or similar
laws and by applicable international treaty provisions. No title to or ownership
of the InfoAssistant Technology is transferred to InfoModelers by this
Agreement. InfoModelers will not infringe, violate or contest any such rights of
Asymetrix in the InfoAssistant Technology and will take reasonable steps and
precautions to protect Asymetrix's rights in the InfoAssistant Technology;
provided, however, that the foregoing shall not preclude InfoModelers from
asserting any defense that may be available to it in the event a claim is
asserted against InfoModelers related to the Product (other than a claim
asserted by Asymetrix for breach of this Agreement by InfoModelers).
13. TERM AND TERMINATION.
(a) Term. Except to the extent set forth in Section 13(b) and 13(c),
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the term of this Agreement shall continue in perpetuity.
(b) Termination of License. This license set forth in Section 3 may
----------------------
be terminated: by InfoModelers if Asymetrix materially breaches its obligations
under Section 3 or Section 4 or materially fails to perform or comply with any
other provision herein and such failure is not cured within 30 days of written
notice thereof.
(c) Effect of Termination. The following shall occur on termination
---------------------
of the license set forth in Section 3:
i. Asymetrix shall continue to have the right to exercise the rights
and licenses granted in Section 3 until the earlier of: (x) the next
version release of its Online Learning Products or (y) for one hundred
eighty (180) days after the effective date of termination;
ii. Except as otherwise specifically set forth herein, the rights and
remedies as provided in this Section shall not be exclusive and are in
addition to any other rights and remedies provided by law or this
Agreement; and
iii. The provisions of Sections 1, 2, 4, 7, 8, 9, 10, 11 and 12 shall
survive perpetually any termination of the license granted in Section
3".
IN WITNESS WHEREOF, the parties have executed this Amendment by their duly
authorized representatives as of the Effective Date.
ASYMETRIX LEARNING INFOMODELERS, INC.
SYSTEMS, INC.
/s/ X. Xxxxxxxxx /s/ Xxx Xxx Xxxx
----------------------- -------------------------
Signature Signature
X. Xxxxxxxxx Xxx Xxx Xxxx
----------------------- -------------------------
Name Name
CEO President & CEO
----------------------- -------------------------
Title Title
