CERTICOM OEM LICENSE AGREEMENT
CERTICOM CORP SAC
Xxxxx 000 0000 Xxxx 00xx XXX 000
200 Xxxxxxxx B1vd W. Edina, Minnesota 55435
Xxxxxxxxxxx, Xxxxxxx
Xxxxxx X0X 0X0
("CERTICOM") ("LICENSEE")
1. EFFECTIVE DATE OF THIS AGREEMENT: 11-26-97
2. MATERIALS: Software: Security Builder, Re1ease 1.2
Documentation: Getting Started Guide; Developer's Guide;
Programmer's Reference
3. LICENSEE APPLICATIONS: SAC TECHNOLOGIES BIOMETRIC
IDENTIFICATION, COMMUNICATION
AND SECURITY PRODUCT LINE,
(I.E.; SACMAN, SACCAT, SACREMOTE ETC.)
4. FEES: Base License Fee: [*]
Per Copy License Fee: [*]
Maintenance Fees: [*] per year for one Licensee
contact person;
[*] per year for each additional
contact person
5. SPECIAL TERMS: Maintenance fees will be waived for [*] from the date
of this agreement.
================================================================================
Certicom, or it's designated subsidiary, agree to license to Licensee the
Software and Documentation noted above (collectively, the "Materials"), and
Licensee agrees to accept such license and pay the fees noted above, all in
accordance with the attached terms and conditions.
CERTICOM CORP.
By: /s/ Xxxx Xxxxxxxx By: /s/ Xxxxx Xxxxx
----------------------------- --------------------------
Name: Xxxx Xxxxxxxx Name: Xxxxx Xxxxx
Title: EVP Sales & Marketing Title: CEO
* Confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
TERMS AND CONDITIONS FOR CERTICOM OEM LICENSE AGREEMENT
1. LICENSE. Certicom grants Licensee a non-exclusive, non-transferable license
to use, and to make a reasonable number of copies of the Materials solely to
create Licensee Applications. Certicom also grants Licensee a non-exclusive,
non-transferable right to reproduce and distribute object code of those portions
of the Software designated in the Software as the Runtime files or
re-distributable files ("Runtime"); provided Licensee agrees to: (i) distribute
the Runtime in object code form only, loaded or burned into memory in an
integrated circuit, and only in conjunction with and as part of Licensee
Applications; (ii) indemnify, hold harmless, and defend Certicom from and
against any claims or lawsuits, including attorney's fees, that arise or result
from the use or distribution of Licensee Applications: (iii) not permit further
distribution of the Runtime by Licensee's end users except as authorized in this
Agreement; and (iv) reproduce and place in the Runtime the proprietary rights
notices of Certicom that appear in the Software. Licensee shall notify Certicom
within 30 days of Licensee's public distribution of each Licensee Application or
upgrade.
2. SUB-LICENSE RIGHTS. Licensee may sub-license to another party
("Sub-Licensee") the right to copy Licensee Applications incorporating the
Runtime provided that: (i) Licensee obtains the prior written approval of
Certicom, such approval not to be unreasonably withheld: and (ii) Licensee
requires that Sub-Licensee accounts for the number of copies made, and Licensee
pays for all such copies in accordance with Section 5. Licensee may also
sub-license to Sub-Licensee the sub-license rights set forth in the preceding
sentence, including the right to further sub-license such rights under the terms
herein provided that in all such cases Licensee shall be responsible for making
payments to Certicom of each per copy fee as required under Section 5. Licensee
shall impose restrictions on Sub-Licensee no less restrictive or no less
protective of Certicom than those specified in Sections 1, 2, 3 and 4.
3. OWNERSHIP; PROTECTION. All title and ownership in and to the Materials,
including all intellectual property rights such as copyright, trade secrets,
patents and trade-marks, shall at all times remain with Certicom. Licensee
acknowledges that the Software represents and embodies trade secrets and
confidential information of Certicom and its licensors. Licensee agrees to take
all reasonable measure to keep confidential the Software and protect Certicom's
rights in the Materials. Licensee agrees not to disclose the Materials to
anyone, or copy them, except as permitted under this Agreement, and Licensee
agrees not to disassemble, decompile or otherwise reverse engineer the Software.
Licensee will include in its written license agreements and distribution
agreements for Licensee Applications provisions no less restrictive or
protective of Certicom than those specified in Sections 1, 2, 3 and 4.
4. COMPLIANCE WITH LAWS. Licensee shall comply with all applicable export,
control and other relevant laws of any applicable jurisdiction. Determination of
the applicable law is Licensee's responsibility. Licensee understands that the
Software is cryptographic in nature and therefore the Materials are highly
regulated. For purposes of use of the Materials by the US Government, the
Materials are provided with Restricted Rights and use. Duplication or disclosure
by the US Government is subject to restrictions as set forth in subparagraph
(c)(1)(ii) of the Rights in Technical Data and Computer Software clause at DFARS
252.227-7013 or subparagraphs (c)(1) and (2) of the Commercial Computer Software
Restricted Rights at 48 CFR 52.227-19, as applicable. Manufacturer is Certicom
Corp., 000 Xxxxxxxx Xxxx. X., Xxxxx 000, Xxxxxxxxxxx, Xxxxxxx, Xxxxxx, LSR 3L7.
5. FEES. Licensee shall pay to Certicom the one-time base license fee set out on
page 1 of this Agreement within 30 days after Certicom delivers the Software to
Licensee. In addition, Licensee shall also pay to Certicom the per copy fee set
out on page 1 of this Agreement for each copy of the License Applications
containing a Runtime that Licensee uses or authorizes a third party to use
directly or through third parties. If Licensee Applications are used in a
service bureau environment or otherwise rented to subscribers, then each
subscriber is counted as one copy. Within 10 days after the end of each calendar
quarter Licensee shall pay to Certicom the per copy license fees for each copy
of Licensee Applications that Licensee, its Sub-licensees or any of their
distributors authorized in such quarter, together with a report indicating the
total number of copies of Licensee Applications authorized. Maintenance,
training and other fees are due within 30 days of the invoice date and are
subject to change by Certicom once per year. Interest shall accrue on all
overdue amounts at a rate equal to the lesser of (i) 18% per year or (ii) the
highest rate allowed by law.
6. TAXES. In addition to the fees payable by Licensee to Certicom, all taxes,
duties or other charges of any kind resulting from this Agreement stall be the
responsibility of Licensee. If any withholding tax or similar charge is
applicable to the fees paid by the Licensee to Certicom, Licensee shall pay such
additional amount as shall result in Certicom receiving the total amount of the
fees it would have been paid but for such tax or levy.
7. BOOKS AND RECORDS; AUDIT. For each year hereof Licensee agrees to maintain,
until seven years after such year, complete books, records and accounts relevant
to computation and accounting for amounts payable under Section 5. Licensee
agrees to allow a representative of Certicom the right to audit and examine such
books, records and accounts during Licensee's normal business hours no more than
once per year upon reasonable notice to verify the accuracy of the reports and
payments made to Certicom under Section 5. If such examination leads to a
determination that Licensee has not paid all amounts properly payable under this
Agreement, Licensee agrees to pay, in addition to any damages to which Certicom
might be entitled, the amount of such shortfall plus the costs incurred by
Certicom in respect of the audit.
8. MAINTENANCE. Maintenance Services will be available for the fees noted on
page l, provided that either party may terminate Maintenance Services on 90 days
notice. Maintenance Services consists of: reasonable technical assistance to one
designated contact of Licensee for the correction of errors in the Software; and
upgrades to the Software that Certicom makes available as part of Maintenance
Services. Licensee shall be solely responsible for the maintenance and support
of Licensee Applications and Licensee shall instruct its sub-licensees and
licensees to contact Licensee directly.
9. LIMITED WARRANTY. Certicom warrants for a period of sixty (60) days from the
first date that it delivers to Licensee a copy of the Software that (i) the
Software shall operate in conformity with the current Documentation for such
Software: and (ii) the media on which the Software is furnished shall be free
from defects in materials and faulty workmanship under normal use. Certicom's
sole liability and Licensee's exclusive remedy for any failure to meet these
warranties shall be limited to repair or replacement of the Software at
Certicom's option and expense.
10. WARRANTY DISCLAIMER. Except as provided in Section 9, Certicom licenses the
Materials to Licensee on an "as is" basis. The warranties in Section 9 are in
lieu of all other warranties or conditions, and Certicom makes no other
warranty, condition or representation of any kind whether express or implied,
and Certicom expressly disclaims the implied warranties or conditions of
merchantability, merchantable quality, fitness for a particular purpose,
infringement and those arising by statute or otherwise in law or from the course
of dealing or usage of trade. Certicom does not represent or warrant that the
Software will meet any or all of Licensee's particular requirements, that the
operation of the Software will be error-free or uninterrupted, or that all
programming errors in the Software can be found in order to be corrected.
11. LIMITATION OF LIABILITY. LICENSEE AGREES THAT ANY LIABILITY ON THE PART OF
CERTICOM FOR BREACH OF THE WARRANTIES CONTAINED HEREIN OR ANY OF THE OTHER
PROVISIONS OF THIS AGREEMENT OR ANY OTHER BREACH GIVING RISE TO LIABILITY OR IN
ANY OTHER WAY ARISING OUT OF OR RELATED TO THIS AGREEMENT FOR ANY CAUSE OF
ACTION WHATSOEVER AND REGARDLESS OF THE FORM OF ACTION (INCLUDING BREACH OF
CONTRACT, STRICT LIABILITY, TORT INCLUDING NEGLIGENCE OR ANY OTHER LEGAL OR
EQUITABLE THEORY), SHALL BE LIMITED TO LICENSEE'S DIRECT DAMAGES IN AN AMOUNT
NOT TO EXCEED THE TOTAL AMOUNT PAID TO CERTICOM BY LICENSEE UNDER THIS AGREEMENT
DURING THE TWO YEARS PRIOR TO THE EVENT GIVING RISE TO LIABILITY. LICENSEE
AGREES THAT IN NO EVENT WILL CERTICOM BE LIABLE FOR DAMAGES IN RESPECT OF
INCIDENTAL, ORDINARY, PUNITIVE, EXEMPLARY, INDIRECT, SPECIAL, OR CONSEQUENTIAL
DAMAGES EVEN IF CERTICOM HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES
INCLUDING, BUT NOT LIMITED TO, BUSINESS INTERRUPTION, LOST BUSINESS REVENUE,
LOST PROFITS, FAILURE TO REALIZE EXPECTED SAVINGS, ECONOMIC LOSS, LOSS OF DATA,
LOSS OF BUSINESS OPPORTUNITY OR ANY CLAIM AGAINST LICENSEE BY ANY OTHER PARTY.
12. INDEMNIFICATION. Certicom shall defend Licensee from any claim that the
copies of the Software or Documentation licensed to Licensee hereunder, when
used within the scope of this Agreement, infringe any patent, copyright,
trademark or trade secret of any third party and Certicom shall indemnify
Licensee for any costs and damages (including reasonable attorney's fees)
awarded by a court against Licensee in respect of such a claim; provided that
Licensee promptly notifies Certicom in writing of any such claim and promptly
tenders the control of the defense and settlement of any such claim to Certicom
at Certicom's expense and with Certicom's choice of counsel. Licensee shall
cooperate with Certicom, at Certicom's expense, in defending or settling such
claim. Certicom may, at Certicom's sole option and expense: (i) procure for
Licensee the right to continue use of the pertinent item or infringing part
thereof, (ii) modify the pertinent item or infringing part thereof with other
software having substantially the same capabilities, or (iii) if neither of the
foregoing is commercially practicable to achieve within a reasonable period of
time, Certicom may terminate Licensee's right to use the pertinent item and
refund to Licensee the amount it has paid Certicom for such item less a
reasonable amount to reflect Licensee's prior use of the item. Certicom shall
have no liability for any infringement arising from (i) the use of the Software
other then as set forth in its accompanying Documentation; (ii) the modification
of the Software unless such modification was made or authorized by Certicom,
when such infringement would not have occurred but for such modification; or
(iii) the combination or use of the Software with other software, items or
processes not approved by Certicom in advance if such infringement would have
been avoided by the use of the Software standing alone. This section states
Certicom's entire obligation with respect to any claim regarding the
intellectual property rights of any third party.
13. TERM AND TERMINATION. The term of this Agreement shall commence on the
Effective Date and shall continue until terminated as set forth below:
(i) If Licensee fails to make any payment due within 30 days after
receiving written notice from Certicom that such payment is delinquent,
Certicom may terminate this Agreement on written notice to Licensee at
any time following the end of such 30 day period;
(ii) If Licensee is late in making payments more than two times in any
twelve month period or an audit, pursuant to Section 7, discovers any
under payment of 25% or more for the payment due for any twelve month
period, Certicom may terminate this Agreement immediately upon written
notice to the Licensee;
(iii) If either party materially breaches any term or condition of this
Agreement and fails to cure that breach within 30 days after receiving
written notice of the breach, the non-breaching party may terminate
this Agreement on written notice at any time following the end of such
30 day period.
(iv) This Agreement shall terminate automatically without notice and
without further action by Certicom in the event Licensee becomes
insolvent (i.e., becomes unable to pay its debts in the ordinary course
of business as they come due) or makes an assignment of this Agreement
for the benefit of creditors or if any other bankruptcy proceedings are
commenced by or against Licensee.
Upon the termination of this Agreement for any reason: (1) all rights granted
hereunder shall automatically revert to Certicom; (2) Licensee shall immediately
pay to Certicom all amounts due and outstanding as of the date of such
termination or expiration; and (3) licensee shall (a) return to Certicom the
originals and all copies of the Materials and all other materials received from
Certicom in Licensee's possession or control; (b) erase any and all of the
foregoing from all computer memories and stored Licensee Applications within its
possession or control; and (c) provide Certicom with a written statement
certifying that it has complied with the foregoing obligations. The end user
licenses to Licensee Applications which have already been granted shall survive
any such termination.
14. GENERAL.
(a) All notices hereunder shall be in writing and shall be duly given
if delivered personally or sent by registered or certified mail return receipt
requested, postage prepaid, to the respective addresses of the parties appearing
on page one of this Agreement. Any notice given shall be deemed to have been
received on the date which it is delivered if delivered personally, or, if
mailed, on the fifth business day next following the mailing thereof. Either
party may change its address for notices by giving notice of such change as
required in this clause (a).
(b) Dates and times by which Certicom is required to render performance
shall be postponed automatically to the extent and for the period of time that
Certicom is prevented from meeting them by reason of any cause beyond its
reasonable control.
(c) This Agreement, the license rights granted hereunder and the
Materials, or any part thereof, may not be assigned or transferred by Licensee
without the prior written consent of Certicom. A change of control of Licensee,
whether by sale or issuance of shares, or merger, or otherwise, shall be deemed
to be an assignment.
(d) This Agreement shall be governed by the laws in force in the
Province of Ontario. NO ACTION AGAINST CERTICOM REGARDLESS OF FORM (INCLUDING
NEGLIGENCE), ARISING OUT OF ANY CLAIMED BREACH OF THIS AGREEMENT OR TRANSACTIONS
UNDER THIS AGREEMENT OR IN ANY OTHER WAY RELATED TO THIS AGREEMENT MAY BE
BROUGHT BY LICENSEE MORE THAN ONE YEAR AFTER THE CAUSE OF ACTION HAS OCCURRED.
(e) Licensee and Certicom are independent contracting parties. Neither
Licensee nor Licensee employees, consultants, contractors, or agents are agents,
employees or joint venturers of Certicom, nor do they have any authority to bind
Certicom by contract or otherwise to any obligation. Licensee agrees not to make
any statements which state or imply that Certicom certifies or guarantees
Licensee Applications or that Licensee Applications are warranted, tested or
approved by Certicom.
(f) Failure by Certicom to enforce any provision of this Agreement
shell not be deemed a waiver of future enforcement of that or any other
provision and no waiver of a breach will constitute a waiver of subsequent
breaches of the same or of a different nature unless expressly stated in writing
signed by Certicom.
(g) All monetary amounts referred to in this Agreement are in United
States dollars.
(h) The provisions in Sections 3, 4, 7, 10, 11 and 13 shall remain in
force and effect after the termination of this Agreement.
(i) This Agreement and any subsequent written amendments signed by both
parties, shall constitute the entire agreement between the parties hereto in
respect of the subject matter of this Agreement.
* END OF TERMS AND CONDITIONS *
