EXHIBIT 10.38
AMENDED AND RESTATED
CONSULTING SERVICES AGREEMENT
The following confirms the agreement between XXXXXX XXXXXX (the
"Consultant") and XXXXXX.XXX INC., (the "Company"), with respect to consulting
services to the Company:
1. Definitions.
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a. "Company Materials" means documents or other media or tangible items
that contain or embody Proprietary Information or any other information
concerning the business, operations or plans of the Company, whether such
documents have been prepared by me or by others including, without limitation,
financial models. financial forecasts. financial projections, drawings,
photographs, charts, graphs, notebooks, customer lists, computer software
(whether in executable, data or other form and in any format or structure
whatsoever), computer media or printouts, sound recordings and other printed,
typewritten or handwritten documents, as well as samples, prototypes, models,
products and the like.
b. "Inventions" means any and all improvements, inventions (whether or not
patentable), works of authorship, derivative works, trade secrets, technology,
computer software, application programming interfaces, ideas, designs,
processes, techniques, know-how and data made or conceived or reduced to
practice or developed by me (in whole or in part, either alone or jointly with
others).
c. "Proprietary Information" means any and all information (whether
conveyed orally or in writing) about algorithms, trade secrets, computer
software, designs, technology, ideas, know-how, products, services, customer
lists, finances, financial models, financial forecasts, financial projections,
processes, data, techniques, improvements, inventions (whether patentable or
not), works of authorship, business and product development plans, the salaries
and terms of compensation of employees, regulatory approval, the terms and
existence of third party agreements, negotiations with third parties and other
information concerning the Company's actual or anticipated business, research or
development, or which is received in confidence by or for the Company from any
third party.
d. "Rights" means any and all patent rights, copyright rights, mask work
rights, trade secret rights, moral rights and other intellectual property and
proprietary rights anywhere in the world.
e. "Results" means any and all deliverables or results of the Services
including, without limitation, all financial models, financial forecasts,
financial projections and Inventions.
f. "Services" means the consulting services provided by the Consultant to
the Company during the term of this Agreement. The Services include, without
limitation, strategic planning and business development advice.
2. Proprietary Information. All Proprietary Information and all Rights in
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connection therewith are the sole property of the Company. Consultant hereby
assigns to the Company any Rights Consultant may have or acquire in such
Proprietary Information. At all times, both during the term of this Agreement
and after its termination, Consultant will keep in confidence and trust and will
not use or disclose any Proprietary Information without the prior written
consent of the Company. Any assignment of copyright hereunder includes all
rights of paternity, integrity, disclosure and withdrawal and any other rights
that may be known as or referred to as "moral rights" (collectively "Moral
Rights"). To the extent such Moral Rights cannot be assigned under applicable
law and to the extent the following is allowed by the laws in the various
countries where Moral Rights exist, Consultant hereby waives such Moral Rights
and consents to any action of the Company that would violate such Moral Rights
in the absence of such consent. Consultant will confirm any such waivers and
consents from time to time as requested by the Company.
3. Company Materials. All Company Materials are the sole property of the
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Company. Consultant agrees that during the term of this Agreement, Consultant
will not remove any Company Materials from the business premises of the Company
or deliver any Company Materials to any third party except as may be necessary
and appropriate in the ordinary course of performing the Services. Consultant
further agrees that upon the Company's request and in any event upon completion
of the Services, Consultant shall deliver to the Company all Company Materials
and Results. At all times before or after completion of the Services, the
Company shall immediately have the right to examine the Results and any
materials relating there to ensure Consultant's compliance with the provisions
of this Agreement.
4. Consulting Services.
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a. This Agreement will terminate on October 31, 2002, unless terminated
earlier pursuant to Section 10 of this Agreement.
b. Consultant agrees to render the Services to the Company for the term of
this Agreement. Consultant acknowledges and agrees that the Company may from
time to time prescribe (in writing) additional duties which shall be deemed
"Services" under this Agreement. Consultant also agrees to promptly submit all
Results to the Company, in written form or other tangible form. Consultant
shall report directly to the Secretary of the Company and shall provide the
Services in accordance with the instructions of the Secretary, and with such
reasonable instructions given to him by any other officer of the Company.
c. As compensation for the Services, Consultant shall receive a grant of
non-qualified options to purchase 36,000 shares of the Company's Common Stock
with an exercise price equal to $35.625 (the closing price of the Company's
Common Stock on Nasdaq on October 20, 1999). The options shall vest in 36 equal
monthly installments beginning on the date of grant. In addition, the Company
shall pay Consultant an amount of $2,000 per day for any special projects for
which the Company requests Consultant's assistance. Finally the Company will
reimburse Consultant for reasonable long distance travel (transportation,
lodging and meals) and telephone expenses Consultant is required to incur in
providing the Services and approved in advance by the Company.
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d. Consultant shall provide the Company with bi-monthly invoices detailing
the consulting hours, fees and expense reimbursements which Consultant believes
are due under this Agreement, and shall itemize and provide receipts for
expenses upon request. The Company agrees to pay approved invoices within
thirty (30) days of receipt.
5. Intellectual Property.
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a. During the term of this Agreement and for one (1) year thereafter,
Consultant will promptly disclose (in writing) any and all Inventions to the
Company; provided that Consultant shall not be required to disclose items
conceived and developed in the course of employment for a third party where
Consultant is contractually precluded from disclosure. Such disclosures shall
be received by the Company in confidence to the extent they are not assigned in
Section 5.c below and do not extend such assignment. Consultant will not
disclose Inventions covered by this Section 5.a. to any person outside the
Company unless requested to do so by management personnel of the Company.
b. Consultant agrees that any and all Inventions are the sole property of
the Company. Consultant agrees to assign and hereby assigns to the Company all
Rights to all such Inventions. The Company shall be the sole owner of all
Rights in connection therewith. Furthermore, all works of authorship will be
"works made for hire" to the extent allowed by law.
c. Consultant agrees to perform, during and after the term of this
Agreement, all acts deemed necessary or desirable by the Company to permit and
assist it, at Consultant's hourly rate as stated in Section 4.c, in evidencing,
perfecting, obtaining, maintaining, defending and enforcing Rights and/or
Consultant's assignment of Inventions in any and all countries. Such acts may
include, but are not limited to, execution of documents and assistance or
cooperation in legal proceedings. Consultant hereby irrevocably designates and
appoints the Company and its duly authorized officers and agents, as
Consultant's agents and attorneys-in-fact, with full power of substitution, to
act for and in its behalf and instead of Consultant, to execute and file any
documents and to do all other lawfully permitted acts to further the above
purposes with the same legal force and effect as if executed by Consultant.
d. If any Rights or Inventions assigned hereunder or any Results are based
on, or incorporate, or are improvements or derivatives of, or cannot be
reasonably made, used, reproduced and distributed without using or violating
technology or Rights owned or licensed by Consultant and not assigned hereunder,
Consultant hereby grants the Company a perpetual, irrevocable, worldwide, fully
paid-up royalty-free, non-exclusive, sublicensable right and license to exploit
and exercise all such technology and Rights in support of the Company's exercise
or exploitation of any Results or assigned Rights or Inventions (including any
modifications, improvements and derivatives thereof).
6. Prior Inventions. Consultant has attached hereto as Attachment A a complete
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list of all existing Inventions to which Consultant claims ownership as of the
date of this Agreement and that Consultant desires to specifically clarify are
not subject to this Agreement, and Consultant acknowledges and agrees that such
list is complete. If no such list is attached to this Agreement,
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Consultant represents that Consultant has no such Inventions at the time of
signing this Agreement.
7. Non-Solicitation. During the term of this Agreement and for one (1) year
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thereafter, Consultant will not encourage or solicit any employee or consultant
of the Company to leave the Company for any reason.
8. Intentionally Omitted.
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9. No Conflict with Obligation to Third Parties. Consultant represents that
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performance of all the terms of this Agreement will not breach any agreement to
keep in confidence proprietary information acquired by Consultant in confidence
prior to the execution of this Agreement. Consultant has not entered into, and
Consultant agrees not to enter into, any agreement (either written or oral) that
conflicts or might conflict with Consultant's obligations under this Agreement.
10. Terminable At-Will. Consultant agrees that this Agreement may be
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terminated by either the Company or the Consultant at any time, for any reason,
with or without cause, by giving written notice to the other party; termination
to be effective upon the other party's receipt of notice.
11. Independent Contractor; Taxes. Consultant is an independent contractor and
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is solely responsible for all taxes, withholdings, and other similar statutory
obligations, including, but not limited to, Workers' Compensation Insurance; and
Consultant agrees to defend, indemnify and hold Company harmless from any and
all claims made by any entity on account of an alleged failure by Consultant to
satisfy any such tax or withholding obligations.
12. No Agency. Consultant has no authority to act on behalf of or to enter
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into any contract, incur any liability or make any representation on behalf of
the Company.
13. Compliance with Law. Consultant's performance under this Agreement shall
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be conducted with due diligence and in full compliance with the highest
professional standards of practice in the industry. Consultant shall comply
with all applicable laws and Company safety rules in the course of performing
the Services. If Consultant's work requires a license, Consultant has obtained
that license and the license is in full force and effect.
14. Indemnification. Consultant will indemnify and hold Company harmless, and
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will defend Company against any and all loss, liability, damage, claims, demands
or suits and related costs and expenses to persons or property that arise,
directly or indirectly, from acts or omissions of Consultant, or breach of any
term or condition of this Agreement.
15. Survival. Consultant agrees that Sections 1 through 3 and Sections 5
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through 20 of this Agreement shall survive any termination of this Agreement,
and that the Company is entitled to communicate Consultant's obligations under
this Agreement to any future client or potential client of Consultant.
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16. Choice of Law; Severability. This Agreement shall be construed in
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accordance with the laws of the State of California without regard to the
conflict of laws provisions thereof. If any provision of this Agreement is held
to be illegal or unenforceable, such provision shall be limited or excluded from
this Agreement to the minimum extent required so that this Agreement shall
otherwise remain in full force and effect and enforceable in accordance with its
terms.
17. Successors and Assigns; Assignment. This Agreement shall be binding upon
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Consultant, and inure to the benefit of, the parties hereto and their respective
heirs, successors, assigns, and personal representatives; provided, however,
that it shall not be assignable by Consultant.
18. Entire Agreement. This Agreement, together with all Attachments, contains
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the entire understanding of the parties regarding its subject matter and can
only be modified by a subsequent written agreement executed by the parties.
This Agreement supersedes and replaces the Consulting Services Agreement dated
October 20, 1999 and that agreement shall be of no further force and effect.
19. Notices. All notices required under this Agreement shall be addressed to
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the address set forth below (or at such other address as may be provided by
written notice given in accordance with this Section 19) and provided by (i)
registered mail, return receipt requested; or (ii) facsimile, with a
confirmation copy as provided in clause (i), (iii) or (iv) of this Section 19;
or (iii) Federal Express, DHL, or an equivalent courier service with tracking
capabilities; or (iv) hand delivery.
20. Attorney Fees. If any action at law or in equity is necessary to enforce
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or interpret the terms of this Agreement, the prevailing party shall be entitled
to all attorneys' fees, courts costs and necessary disbursements, in addition to
any other relief to which the party may be entitled.
Dated: November 15, 1999
Accepted and Agreed to:
XXXXXX.XXX INC. CONSULTANT
By: /s/ Xxxxxxx X. Xxxxxxxx /s/ Xxxxxx Xxxxxx
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Consultant Signature
Name: Xxxxxxx X. Xxxxxxxx
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Title: Sr. Director, Legal Affairs
and Secretary
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ATTACHMENT A
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XXXXXX.XXX INC.
0000 00xx Xxxxxx, Xxxxx 000
Xxxxx Xxxxxx, Xxxxxxxxxx 00000
Gentlemen:
1. The following is a complete list of Inventions relevant to the
performance of consulting services for Xxxxxx.xxx Inc. (the "Company") that have
been made, conceived, developed or first reduced to practice by me (in whole or
in part, either alone or jointly with others) prior to the execution of the
Company's Consulting Services Agreement (the "Agreement") that I desire to
clarify are not subject to the Agreement.
_______ No Inventions
_______ See below
_______ Additional sheets attached
Consultant Signature
Name
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