EXHIBIT 10.4
LICENSE AGREEMENT
The Agreement, dated as of February 1, 2000, is by and between Ulticom, Inc., a
New Jersey corporation ("Licensor"), and Comverse Network Systems, Inc., a
Delaware corporation ("Comverse").
1. DEFINITIONS
1.1 "Affiliate" of a party means any corporation or other business entity
that directly or indirectly controls, is controlled by, or is under common
control with, such party at any time. For the avoidance of doubt, Affiliate of
Comverse shall include without limitation each of the entities listed in Exhibit
21 to the Annual Report of Comverse Technology, Inc. for the year ended January
31, 1999.
1.2 "Code" means computer programming code of the Licensed Program and
Modifications, including, without limitation, Source Code and Object Code
thereof.
1.2.1 "Source Code" means the human-readable form of the computer
programming code of the Licensed Program and Modifications, including
all comments, source code listings, flow charts, assembler
instructions, and any procedural code such as job control language
statements.
1.2.2 "Object Code" means the machine-readable form of the computer
programming code of the Licensed Program and Modifications.
1.3 "Confidential Information" means information treated as confidential
and proprietary by a party ("Disclosing Party") disclosing the same to the other
("Receiving Party") under or in connection with this Agreement, including,
without limitation, the Source Code and Intellectual Property and other
confidential information embodied in the Licensed Materials, where such
information is marked "Confidential" or "Proprietary" or when the nature of such
information reasonably suggests that the information is confidential or
proprietary. Confidential Information shall not include information that is (a)
in the possession of the Receiving Party without obligation of confidence to
Disclosing Party before receipt thereof from the Disclosing Party; (b) available
to the public without fault of the Receiving Party; (c) disclosed to the
Receiving Party, without restriction, by a third party who is not under any
legal obligation (either by agreement with the Disclosing Party or otherwise)
prohibiting such disclosure; or (d) developed independently by the Receiving
Party without reliance upon the Confidential Information furnished by the
Disclosing Party.
1.4 "Derivative Work" means any addition, change, Enhancement or
Modification by Licensee of or to the Licensed Materials, but shall not include
any unmodified elements of the Licensed Materials used or licensed for use with
any such addition, change, Enhancement or Modification. Title to all Derivative
Works shall immediately vest in Licensee and Derivative Works shall not be
subject to any restriction in this Agreement.
1.5 "Documentation" means any and all material in written, electronic or
other form that describes the design, functions, operation or use of the
Licensed Program, including, without limitation, Technical Documentation and
User Documentation, as the foregoing may exist from
time to time and at any time.
1.5.1 "Technical Documentation" means any and all available material
in written, electronic or other form that describes the design,
function or operation of the Licensed Program, including, without
limitation, Program Specifications, functional requirements, logic
manuals, flow charts, schematics, statements of principles of
operations, and architecture standards describing the data flows, data
structures and control logic of the Licensed Program.
1.5.2 "User Documentation" means any and all available material in
written, electronic or other form that describes the functions,
operation, or use of the Licensed Program, including, without
limitation, installation guides, user manuals, training materials,
release notes, and working papers.
1.6 "Enhancements" means any and all changes or additions to the Licensed
Program and/or Documentation, including new releases and versions thereof other
than Modifications, that add significant new functions to, or substantially
improve performance of, any material aspect of the Licensed Program and/or
Documentation.
1.7 "Error" means any statement or omission that causes or results, in the
case of the Licensed Program, in an incorrect functioning, or, in the case of
Documentation, in an incomplete or incorrect statement, and that results, in
either case, in a failure to comply in any material respect with the Program
Specifications.
1.8 "Intellectual Property" means any and all intellectual property
associated with the Licensed Program and Documentation including, without
limitation, designs, formulas, procedures, methods, apparatus, ideas, creations,
improvements, works of authorship, materials, processes, inventions, techniques,
data, know-how, algorithms, programs, subroutines, tools, patents and patentable
materials, copyrights and copyrightable materials, and trade secrets.
1.9 "Licensed Materials" means the Licensed Program, Documentation, and
Intellectual Property, or any part thereof.
1.10 "Licensed Program" means the computer software heretofore delivered
by Licensor to Comverse in Source Code format under the names Signalware and
OMNI, and Modifications thereof, including, but not limited to, Code, screens,
user interfaces, report formats, templates, menus, and icons.
1.11 "Licensee" means Comverse and its Affiliates.
1.12 "Licensee System" means any product which is manufactured, developed,
marketed, sold, licensed or used by Licensee or used by a Licensee customer that
provides significant value, content and/or functionality in addition to that of
the Licensed Program incorporated therein and, in the case of software products,
without limitation on the generality of the foregoing, includes applications and
application programming interfaces in addition to those included in the Licensed
Program.
1.13 "Modifications" means any and all changes or additions to the
Licensed Program
and/or Documentation, other than Enhancements, to correct Errors therein,
including the Code of such Modifications.
1.14 "Program Specifications" means the description and requirements of
the design, features, functions or operations of the Licensed Program included
in its Documentation.
2. LICENSE
2.1 Grant. Licensor hereby grants to Licensee an irrevocable, perpetual,
royalty-free, world-wide, non-exclusive license (i) to use, exploit or
sublicense or otherwise provide to others (with the right to sublicense) the
Licensed Materials; (ii) to develop or otherwise create, or to have developed or
otherwise created, any Licensee System incorporating Licensed Materials; and
(iii) to use, exploit, sublicense or otherwise provide to others (with the right
to sublicense) the Licensed Materials in conjunction with, on or as an element
of, any Licensee System; provided, that Licensee shall not, without the prior
written consent of Licensor, by sublicense or otherwise, distribute or authorize
the use of Licensed Materials except in conjunction with, on or as an element
of, a Licensee System.
2.2 Scope. The license granted to Licensee pursuant to Section 2.1
includes all of the following rights:
2.2.1 The right to install, use and exploit the Licensed Materials at
any Licensee sites and locations;
2.2.2 The right to install, use and exploit the Licensed Materials
(i) for the purpose of developing or otherwise creating or of having
developed or otherwise created any Licensee System and (ii) in conjunction
with, on or in connection with any Licensee System;
2.2.3 The right to use and execute the Licensed Materials on any
platform;
2.2.4 The right to create Derivative Works;
2.2.5 The right to permit subcontractors to develop Licensee Systems
and the right to have independent third parties use the Licensee Systems to
develop products to be used in conjunctions with, on or in connection with
the Licensee Systems; and
2.2.6 The right to sublicense and/or otherwise provide the Licensed
Materials (with the right to sublicense) to others;
provided, however, that Licensee shall not use, operate, execute or
otherwise exploit, or sublicense others to use, operate, execute or otherwise
exploit, Licensed Materials except as provided in the "provided" phrase of
Section 2.1.
3. DELIVERY, MAINTENANCE AND SUPPORT
3.1 Deliverables. The parties acknowledge that a complete copy of the
Licensed Program has heretofore been delivered to Comverse and that, except as
hereinafter expressly
provided, Licensor shall not be required to deliver any further Licensed
Programs to Licensee hereunder.
3.2 Maintenance and Support. It is expressly agreed that Licensee will be
responsible for providing technical support to its customers. Licensor shall
provide Tier 4 support as requested by Licensee. This shall be "expert to
expert" basis. Licensee's support center will contact Licensor's support
center. The price for such support will be $150 (U.S.) per hour. While
Licensee does not contemplate using Licensor for remote or deployed site
support, in the event such support is deemed necessary, requisite travel,
lodging and incidental expenses will be invoiced to Licensee as a separate line
item. Licensor will provide Licensee with all Modifications promptly as they
become available.
4. PROPRIETARY RIGHTS
4.1 Ownership. Notwithstanding the license granted under section 2.1,
Licensor retains all of its ownership and license rights in the Licensed
Materials (including, without limitation, all Intellectual Property), except as
to Derivative Works, which shall be the property of Licensee.
4.2 Treatment of Licensor Confidential Information. Licensee shall
maintain all Licensor Confidential Information in confidence and shall use it
only for the purposes contemplated by this Agreement.
4.3 Exceptions. Notwithstanding Section 4.2:
4.3.1 Licensee may disclose Confidential Information, including
without limitation Source Code of the Licensed Program, in connection with
the development, manufacture, distribution, sale, licensing, operation and
support of Licensee Systems, under agreements restricting the further
disclosure or use thereof for any other purpose. Without limitation on the
generality of the foregoing, Licensee expressly agrees that Source Code of
the Licensed Program shall not be licensed to any person or disclosed to
any person under terms that would permit the use thereof other than in
connection with the use, support or development of Licensee Systems.
4.3.2 Licensee may disclose Confidential Information: (a) to those
persons who have a need to know such information to accomplish the purposes
and activities contemplated by this Agreement; or (b) upon the prior
written approval of Licensor.
4.3.3 Licensee may disclose Confidential Information to governmental
agencies or in litigation, as required by law. Licensee will give Licensor
the greatest practicable notice of any such compelled disclosure.
4.4 Treatment of Licensee Confidential Information. Licensor shall
maintain all Licensee Confidential Information in confidence and shall use it
only in connection with the work Licensor is to perform for Licensee. Licensor
shall not use such information for its own benefit and shall use reasonable
precautions to retain it in confidence to prevent its disclosure to others.
Such information shall not be disclosed to anyone other than Licensor's
employees or
agents who need such information to be able to perform the work to be done.
4.5 Exceptions. Notwithstanding Section 4.4:
4.5.1 Licensor may disclose Confidential Information: (a) to those
persons who have a need to know such information to accomplish the work; or
(b) upon the prior written approval of Licensee.
4.5.2 Licensor may disclose Licensee confidential material to
governmental agencies or in litigation, as required by law. Licensor shall
give Licensee the greatest practicable notice of any such compelled
disclosure.
4.6 Return of Confidential Information. Upon termination or expiration of
this Agreement, each party shall deliver to the other all Confidential
Information belonging to the latter that is in its possession or under its
control, except for Confidential Information which relates to licenses and
sublicenses that survive the expiration or termination of this Agreement
pursuant to Section 7.1 and 10.5.
4.7 Irreparable Harm. The parties agree that breach of the above
obligations of confidentiality shall be deemed to cause irreparable harm.
5. REPRESENTATIONS AND WARRANTIES
5.1 Warranty of Title. Licensor hereby represents, warrants and covenants
to Licensee that it is the legal and beneficial owner of all right, title and
interest in and to the Licensed Materials (including, without limitation, all
Intellectual Property), having good title thereto, free and clear of any and all
liens, and that it has full power and authority to grant the licenses and
perform its obligations under this Agreement.
5.2 No Other Warranty. Except for the warranty set forth in Section 5.1,
the Licensed Materials are provided AS IS, and Licensor makes no other warranty,
express or implied with respect to performance, functionality, absence of
defects, or non-infringement. THE REPRESENTATIONS AND WARRANTIES OF LICENSOR
SET FORTH IN THIS AGREEMENT WITH RESPECT TO THE LICENSED MATERIALS ARE IN LIEU
OF ALL OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS, IMPLIED OR STATUTORY,
INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED REPRESENTATIONS OR WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5.3 Indemnification. Licensor shall defend or settle, at its sole
expense, any and all suits, proceedings and claims for infringement or alleged
infringement of any patent, copyright, trade secret or other proprietary right
of any third party, arising out of any use of the Licensed Materials pursuant
to, in connection with or as contemplated by this Agreement, and shall indemnify
and save Licensee harmless from and against all costs, damages, and expenses on
account of such infringement (including reasonable attorneys' fees), provided
that Licensor is notified promptly in writing of such claim or of the
commencement of such suit or proceeding, as the case may be, and is given
authority, information, and reasonable assistance for defense or settlement
thereof. If Licensee modifies, alters or changes the Licensed Materials without
Licensor's review and consent, then any indemnity of Licensor to Licensee under
this Section 5.3 shall be null and void to the extent that the infringement
would not exist but for such modification, alteration or change.
Notwithstanding the foregoing, in no event shall Licensor be liable to Licensee
for any incidental, indirect, consequential or exemplary damages.
6. DISPUTE RESOLUTION. Each party hereby consents to jurisdiction and venue
in the federal and state courts sitting in the County of New York, State of New
York.
7. TERM AND TERMINATION
7.1 Term. This Agreement shall be in effect for the period of ten (10)
years following the date first set forth above. Thereafter, this Agreement
shall automatically renew from year to year unless terminated by either party by
written notice to the other not less than sixty (60) days prior to the
expiration of the initial or any subsequent renewal period. The licenses
granted hereunder, and any sublicenses granted by Licensee, shall survive the
termination or expiration of this Agreement.
7.2 Remedies. Except as provided under Section 7.1, this Agreement may
not be terminated, and the parties shall be entitled solely to actions for
damages or injunctive relief in the event of any breach or threatened breach of
the provisions hereof.
7.3 Bankruptcy. Pursuant to section 365(n)(1)(B) of the Bankruptcy Code,
11 U.S.C. (S) 365(n)(1)(B), if this Agreement is rejected by the trustee in
bankruptcy as an executory contract, failure by Licensee to assert its right to
retain the benefits of the intellectual property encompassed by the Licensed
Materials, shall not be construed by the courts as a termination by the Licensee
of this Agreement under section 365(n)(1)(A) of the Bankruptcy Code, 11 U.S.C.
(S)365(n)(1)(A). In the event of Licensor's bankruptcy, then (1) unless and
until the trustee in bankruptcy rejects this Agreement, on written request by
Licensee the trustee shall perform this Agreement or provide Licensee with a
copy of any new or additional Source Code for the Software which has not been
previously provided to Licensee hereunder; and (2) if and when the trustee
rejects this Agreement, in addition to Licensee's other rights at law or in
equity, Licensee shall be entitled to its rights under section 365(n) of the
Bankruptcy Code, 11 U.S.C. (S) 365(n), including, without limitation, the right
to obtain a copy of such new or additional Source Code for the Software from the
trustee. In the event the trustee in bankruptcy releases the Source Code for
the Software to Licensee, Licensee shall be obligated to use such Source Code
solely in connection with the exercise of its rights under Section 2 of this
Agreement. Licensee acknowledges that the Source Code shall remain Licensor's
sole and exclusive property, and that Licensee shall acquire neither title nor
ownership rights to such Source Code or the Licensed Program.
8. Modifications Developed By Licensee
Licensee shall advise Licensor promptly of its development of any
Modifications and provide a description of the nature and content thereof. At
the request of Licensor, Licensee shall grant to Licensor an irrevocable,
perpetual, royalty-free, world-wide, non-exclusive license to use, exploit or
sublicense or otherwise provide to others (with the right to sublicense) any
Modifications, which license shall be equivalent in all material respects to the
rights and license
granted to Licensee hereunder.
9. Remedies
The parties agree and acknowledge that the Licensed Materials constitute
critical and strategic elements of Licensee's business and the Licensee Systems.
Accordingly, Licensee is making and will make substantial investment and take
strategic decisions in reliance upon this Agreement and the rights and licenses
granted to Licensee hereunder. In light of the foregoing, the rights and
licenses granted to Licensee hereunder shall be irrevocable, shall be broadly
construed and shall not be subject to termination for any reason or cause
whatsoever including, without limitation, by operation of law or by virtue of
any claimed or actual breach of this Agreement.
10. MISCELLANEOUS
10.1 Headings. Unless otherwise stated, all references to Articles and
Sections refer to the articles and sections of this Agreement. The headings of
the Articles and Sections of this Agreement are for convenience only and in no
way limit or affect the terms or conditions of this Agreement.
10.2 Governing Law. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of New York (without regard to
the principles of conflicts of law embodied therein) applicable to contracts
executed and performable in such state.
10.3 Severability. If any provision or any portion of any provision of
this Agreement is construed to be illegal, invalid or unenforceable, such
provision or portion thereof shall be deemed stricken and deleted from this
Agreement to the same extent and effect as if it were never incorporated herein,
but all other provisions of this Agreement and the remaining portion of any
provision that is construed to be illegal, invalid or unenforceable in part
shall continue in full force and effect; provided that such resulting
construction of the Agreement does not frustrate the main purpose of the
Agreement.
10.4 Entire Agreement. This Agreement constitutes the entire agreement
between the parties and supersedes all previous agreements, promises,
representations, understandings and negotiations, whether written or oral,
between the parties with respect to the subject matter hereof. Any modification
and/or amendment to this Agreement must be in writing and executed by both
parties.
10.5 Survival. The provisions of Articles 2, 4, 5, 6, 8 and 9 shall
survive termination or expiration of the Agreement.
10.6 Successors and Assigns. All the terms and conditions of this
Agreement are binding upon and inure to the benefit of the parties hereto, their
successors, legal representatives and permitted assigns. Except as permitted in
this Agreement, Licensee may not transfer, lease, assign or sublicense its
rights hereunder to any third party, provided that this Agreement may be
assigned to any Affiliate of Licensee and may be assigned pursuant to a merger,
consolidation or other disposition as a going concern of the business and assets
of Licensee, or of the business
unit of Licensee engaged in the distribution of Licensee Systems.
10.7 Relationship Between the Parties. Neither party shall represent
itself as the agent or legal representative of the other or as joint venturers
for any purpose whatsoever, and neither shall have any right to create or assume
any obligations of any kind, express or implied, for or on behalf of the other
in any way whatsoever.
10.8 Non-Waiver. A failure of either party to enforce at any time any
term, provision or condition of this Agreement, or to exercise any right or
option herein, shall in no way operate as a waiver thereof, nor shall any single
or partial exercise preclude any other right or option herein; in no way
whatsoever shall a waiver of any term, provision or condition of this Agreement
be valid unless in writing, signed by the waiving party, and only to the extent
set forth in such writing.
10.9 Notices. Unless expressly stated otherwise, all notices required
herein shall be given in writing and shall be delivered (and notice shall be
deemed effective upon delivery) in person, by courier, or sent by certified
United States mail, postage prepaid, return receipt requested, to the following
address:
To Licensee: Comverse Network Systems, Inc.
000 Xxxxxxxxxxx Xxxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attn: Legal Department
To Licensor: Ulticom, Inc.
0000 Xxxxxx Xxxx
Xxxxx Xxxxxx, XX 00000
Attn: Contracts Administration
10.10 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, and all of which
together shall be deemed to be one and the same instrument.
IN WITNESS THEREOF, Licensor and Licensee have caused this Agreement to be
signed and delivered, all as of the date first hereinabove written
ULTICOM, INC. COMVERSE NETWORK SYSTEMS, INC.
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxx Xxxxxxx
-------------------------------- ----------------------------------
Xxxxx Xxxxxxx Xxxxx Xxxxxxx
President Executive Vice President
