Exhibit 10.23
CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.
AMENDMENT ONE
TO
SALE AND LICENSE AGREEMENT
This Amendment Number One ("First Amendment") to that certain Sale and License
Agreement dated March 20, 2000 ("Agreement"), by and between [***] ("Company")
and ▇▇▇▇▇▇▇.▇▇▇, Inc., and its affiliates ("▇▇▇▇▇▇▇.▇▇▇") is made effective as
of June 14, 2000 ("Amendment Effective Date"), and is incorporated into and made
a part of the Agreement. Capitalized terms used but not defined herein shall
have the meaning ascribed to them in the Agreement.
The following Sections of the Agreement are hereby modified as follows:
1. The first sentence of Section 2.5 (Maintenance of Trio Source Code) is
amended and restated as follows:
"During the Option Period, Company shall provide maintenance and support
for the Trio Source Code as originally provided to ▇▇▇▇▇▇▇.▇▇▇, and for Upgrades
or New Versions, if any created by Company during the Option Period."
2. Section 3.1 (Option Period) is amended and restated in its entirety as
follows:
"3.1 Option Period. During the period beginning on the Effective Date and
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ending on [***] or [***] in the event [***] to [***] the [***] (as [***]) (the
"Option Period"), ▇▇▇▇▇▇▇.▇▇▇ shall have an exclusive option to exercise its
right to purchase and obtain all of the Trio Code (the "Option to Purchase").
▇▇▇▇▇▇▇.▇▇▇ shall exercise this option by providing notice to Company as
specified in Section 12.10 ("Notices"). If ▇▇▇▇▇▇▇.▇▇▇ does not exercise the
option stated in this Section 3 before the end of the Option Period, then the
option shall expire and be of no further effect. During the Option Period,
Company shall not assign, transfer, pledge or otherwise encumber any Trio Code
or agree to do so. Notwithstanding the foregoing and except with respect to
Section 3.3.3 or [***] exercising its source code escrow option under the
existing agreement between [***] and Company, Company shall not license the Trio
Code to any third party during the Option Period.
3.1.1 Distribution License. Notwithstanding anything to the contrary
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in Section 2.1, during the Option Period and subject to the terms and conditions
of this Agreement, Company hereby grants to ▇▇▇▇▇▇▇.▇▇▇ a royalty-bearing,
limited, exclusive (except as provided below), world-wide, nontransferable
(except as provided below and in Section 12.2 "Assignment") license to reproduce
and sublicense, in Object Code format only, Trio (as a stand-alone product) or
Trio (as licensed in combination, or incorporated, or integrated with
▇▇▇▇▇▇▇.▇▇▇ products) to all customers except for the Restricted Customers
listed in Section 3.6 ("Distribution License"). Such Distribution License
specifically includes the right for ▇▇▇▇▇▇▇.▇▇▇ to use or sublicense to
subdistributors, resellers, outsource service providers, and other agents to
exercise the rights set forth herein. Such Distribution License is an exclusive
license, subject only to Company's rights to sublicense Trio provided that the
same restrictions as set forth in Section 3.3 shall apply to Company. Each
customer sublicense shall be pursuant only to a license agreement at least as
restrictive as the End User License Agreement attached as Exhibit G (except that
use shall not be restricted to just one (1) computer). ▇▇▇▇▇▇▇.▇▇▇ shall be
responsible for any assistance needed by customers to install the Trio at
customer sites, for providing customers with initial training and for direct
technical support.
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3.1.2 Distribution License Payments for Distribution License. In
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consideration for the Distribution License set forth in Section 3.1.1,
▇▇▇▇▇▇▇.▇▇▇ hereby agrees to pay Company a [***] license payment of [***]
("[***] License Payment") for each [***] ([***]) [***] period beginning on [***]
and continuing until the earliest to occur of ▇▇▇▇▇▇▇.▇▇▇ exercising the Option
to Purchase, ▇▇▇▇▇▇▇.▇▇▇ terminating the Distribution License as set forth
herein, or the expiration of the Option Period; such [***] License Payment shall
be payable thirty (30) days after the [***] of each [***] period except for the
first [***] License Payment which shall be payable ninety (90) days after the
[***] of the [***] period. Notwithstanding the foregoing, ▇▇▇▇▇▇▇.▇▇▇ shall
have the right to terminate the Distribution License after the [***] [***]
License Payment upon ten (10) days advance written notice; such termination
shall be effective as of the end of the applicable [***] ([***]) [***] period."
3. Section 3.3.7 (Option Price) is deleted in its entirety.
4. The first sentence of Section 3.4 (Existing Customer Transition) is amended
and restated as follows:
"Beginning on the Amendment Effective Date, Company shall use commercially
reasonable efforts to transition Company's Non-Web-Based customers for Trio,
except [***] Corporation, to ▇▇▇▇▇▇▇.▇▇▇."
5. The first sentence of Section 3.5 (Prospective Customer Transition) is
amended and restated as follows:
"During the six (6) month period beginning on the Amendment Effective Date,
the parties shall use commercially reasonable efforts to transition leads
regarding prospective customers from the Company marketing team to the
▇▇▇▇▇▇▇.▇▇▇ marketing team."
6. The first two paragraphs of Section 3.7 (Future Payments) are amended and
restated in its entirety as follows:
"3.7 Future Payments.
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(a) In the event that ▇▇▇▇▇▇▇.▇▇▇ exercises its Option to Purchase,
▇▇▇▇▇▇▇.▇▇▇ agrees to pay Company in accordance with Attachment 1, attached
hereto.
(b) Beginning on the Amendment Effective Date, and regardless of whether
or not ▇▇▇▇▇▇▇.▇▇▇ has exercised the Option to Purchase, for each agreement
▇▇▇▇▇▇▇.▇▇▇ enters into with the companies listed on Exhibit C ("Company
Customer"), that includes Trio, during the [***] ([***]) [***] following the
Amendment Effective Date, ▇▇▇▇▇▇▇.▇▇▇ agrees to pay Company (a) [***] percent
([***]%) of the total Net License Revenue (defined below) of agreements that
▇▇▇▇▇▇▇.▇▇▇ enters into with Company Customers with respect to Trio as a stand-
alone product; and (b) [***] percent ([***]%) of the total Net License Revenue
(defined below) of the agreements that ▇▇▇▇▇▇▇.▇▇▇ enters into with the Company
Customers with respect to Trio, as licensed in combination or incorporated with
▇▇▇▇▇▇▇.▇▇▇ products, provided, however, total payments to Company pursuant to
this Section 3.7 shall not exceed [***]. As used in this Agreement, "Net
License Revenue" means the license fees plus professional services fees (but not
support and maintenance fees) for licenses of Trio either as a stand-alone
product or as incorporated into ▇▇▇▇▇▇▇.▇▇▇ products, received from such Company
Customers during the term of such agreement with Company Customers. Within
thirty (30) days after the Amendment Effective Date and until the expiration of
the [***] ([***]) [***] period following the Amendment Effective Date,
▇▇▇▇▇▇▇.▇▇▇ agrees to appoint at least [***] ([***]) full time equivalent
employees responsible for the marketing, sales, support, maintenance, or
distribution of Trio.
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3.7.1 [***] Corporation. During the period beginning on the
Amendment Effective Date and continuing through one (1) year after the
exercise of the Option to Purchase, in no event may ▇▇▇▇▇▇▇.▇▇▇ license Trio
on a stand-alone basis to [***] Corporation.. During the period beginning on
the Amendment Effective Date and continuing through one (1) year after the
exercise of the Option to Purchase, in the event ▇▇▇▇▇▇▇.▇▇▇ licenses Trio as
integrated with ▇▇▇▇▇▇▇.▇▇▇ products, ▇▇▇▇▇▇▇.▇▇▇ shall pay Company [***]
percent ([***]%) of Net License Revenue."
7. Section 5.1 (Press Announcement) is deleted in its entirety.
8. Section 5.5 (Joint Marketing and Sales Incentives) is amended and restated
in its entirety as follows:
"5.5 Joint Marketing and Sales Incentives. Beginning on the date
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▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase, Company agrees to pay ▇▇▇▇▇▇▇.▇▇▇
up to [***] ([***]) to be used for sales incentives, joint marketing programs,
and any other purpose that the parties use commercially reasonable efforts to
mutually agree in writing in advance for a [***] ([***]) [***] period beginning
on the date that ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase. Within forty-
five (45) days after ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase, the parties
shall (i) develop marketing plan that will describe positioning of the
companies' relationship and how the payments from Company shall be allocated
between joint marketing, sales incentives and any other purposes, and (ii)
finalize a mutually agreeable joint press release regarding this Agreement. In
the event both parties agree that Company shall expend dollars for sales
incentives or joint marketing programs prior to the date ▇▇▇▇▇▇▇.▇▇▇ exercises
the Option to Purchase, such dollars shall be counted towards the above-
mentioned [***] ([***]). "
9. In Section 7.1 (Company Proprietary Rights Indemnity), "For three (3) years
after the date that ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase," shall be
replaced with: "Beginning on the Amendment Effective Date and for three (3)
years after the date that ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase,".
10. In Section 7.2 (▇▇▇▇▇▇▇.▇▇▇ Indemnity), "For three (3) years after the date
that ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase," shall be replaced with:
"Beginning on the Amendment Effective Date, and for three (3) years after the
date that ▇▇▇▇▇▇▇.▇▇▇ exercises the Option to Purchase".
11. Except as amended herein, the remaining terms and conditions of the
Agreement remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have executed this First Amendment
as of the Amendment Effective Date.
[***] ▇▇▇▇▇▇▇.▇▇▇, INC.
By: By:
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Title: Title:
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Date: Date:
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Attachment 1
Pricing for Option to Purchase
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Price for the transfer and assignment
Date by which ▇▇▇▇▇▇▇.▇▇▇ exercises ("Purchase") as set forth in Section
its Option to Purchase 3.2 ("Source Code Transfer")
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In the event ▇▇▇▇▇▇▇.▇▇▇ exercises its Option to Purchase, it shall owe to
Company the corresponding Price as set forth above depending on the date by
which ▇▇▇▇▇▇▇.▇▇▇ exercises its Option to Purchase. ▇▇▇▇▇▇▇.▇▇▇ shall pay [***]
percent ([***]%) of the applicable Price set forth above within thirty (30) days
after exercise of the Option to Purchase. ▇▇▇▇▇▇▇.▇▇▇ shall pay the remaining
[***] percent ([***]%) in equal installments on the dates, following the
exercise of the Option to Purchase, when the [***] License Payments would have
otherwise been due, ending on [***].
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