SOFTWARE AGREEMENT
THIS SOFTWARE AGREEMENT ("Agreement") is made this 1st day of July 1991, by and
between High Power Software Inc. ("HPS), having its principal place of business
at 0000 Xxxx Xx Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxxxxx 00000, and
SERENA Consulting, Inc. ("SERENA"), having its principal place of business at
000 Xxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxxxxx 00000.
1.0 DEFINITIONS
SyncTrac shall mean the executable or object code for all computer
programs and any related modifications, enhancements, documentation,
and information relating to the SyncTrac computer product.
2.0 LICENSE GRANT
2.1 HPS grants to SERENA exclusive, worldwide, non-transferable
marketing rights to copy, market, and distribute SyncTrac in
executable or object code form only, and under the terms and
conditions set forth herein, pursuant to the terms of a written
license agreement.
2.2 HPS further grants to SERENA the right to distribute evaluation
copies of SyncTrac pursuant to the terms of a written temporary
license agreement.
2.3 HPS further grants to SERENA the right to appoint intermediaries
to market and distribute copies of SyncTrac pursuant to written
distributor agreements.
2.4 SERENA will use its best reasonable efforts in the promotion and
marketing of SyncTrac, both domestically and internationally.
2.5 As long as SERENA retains exclusive marketing rights to SyncTrac
under this Agreement, SERENA will not market any product which is
competitive in the marketplace with SyncTrac.
3.0 SERIALIZATION
HPS shall include the version, release, and serial number embedded in
the object code in each production copy of SyncTrac. HPS will be
solely responsible for creation of trial and customer copies of
SyncTrac.
4.0 SUB-LICENSING AND END-USERS
Trial and customer copies of SyncTrac may be distributed to end-users
with the following provisions:
(a) End-user may install SyncTrac only at a single location and only
on a single CPU, unless approved in writing by SERENA. End-user
shall not attempt to modify or transfer SyncTrac; and,
(b) All ownership rights, title, and interest to SyncTrac and all
modifications and enhancements thereof are reserved by SERENA
and HPS, FIFTY PERCENT (50%) FOR SERENA AND
FIFTY PERCENT (50%) FOR HPS, AS CO-OWNERS.
5.0 PROPRIETARY RIGHTS NOTICES
SERENA shall include a notice in each production copy of SyncTrac that
proprietary rights to SyncTrac are reserved by HPS and SERENA. This
notice shall be:
(a) embedded in the object code;
(b) printed on the title pages of all documentation; and,
(c) printed on labels attached to tapes and other recording
media.
6.0 TERM
The term of this Agreement shall be three (3) years commencing July 1,
1991. Thereafter, it may be renewed at SERENA's option for subsequent
terms of five (5) years each, upon written notice to HPS not less
than thirty (30) days prior to the termination date of each preceding
term.
7.0. PAYMENTS AND REPORTS
7.1 HPS shall be entitled to Royalties Payable equal to:
(a) twenty-eight percent (28%) of SERENA's cash receipts from
sales, leases, and rentals of SyncTrac; and,
(b) forty-five percent (45%) of SERENA's cash receipts from
maintenance and enhancement fees for SyncTrac ("Royalties
Payable").
Royalties Payable shall be determined monthly based on SERENA's
cash receipts from both domestic and international SyncTrac
sales.
7.2 In each of the initial thirty-six (36) months of this Agreement,
HPS shall receive a royalty advance of $9,755.00 ("Advance
Royalty") against Royalties Payable hereunder. In the event
Royalties Payable are less than the Advance Royalty paid, the
difference shall be deemed an advance to HPS recoverable against
future Royalties Payable, but shall not constitute a debt or
obligation of HPS or its principals except to the extent it is
recovered from or offset against future Royalties Payable.
7.3 Each month's Royalties Payable shall be reduced by the cumulative
unrecovered Advance Royalty paid to establish the Net Royalty
Payable. Seventy-five percent (75%) of the Net Royalty Payable
shall be retained by SERENA as reimbursement for fifty percent
(50%) of the Development Expense Advances (as defined in
paragraph 10.1) until such advances have been repaid in full.
The balance of the Net Royalty Payable shall be paid to HPS
monthly. Such advances shall not constitute a debt or obligation
of HPS or its principals except to the extent they are recovered
from or offset against Net Royalty Payable under the terms of
this paragraph.
7.4 SERENA further agrees to report for each copy of SyncTrac
distributed by or for SERENA as follows:
7.4.1 Within thirty (30) days after the end of each calendar
quarter, SERENA will send HPS a written report on the
distribution of all copies of SyncTrac during the quarter,
as well as a written report of any maintenance contracts
relating to SyncTrac.
7.4.2 Each report will specify the following
(a) the number of copies distributed by or for SERENA;
(b) the number of maintenance contracts;
(c) the total applicable royalties; and,
(d) the net amount due HPS.
7.5 Unless otherwise specified, all payments due hereunder will be
in United States dollars and will be made by check or wire
transfer to a bank account specified by HPS.
8.0 COSTS
SERENA shall be responsible for payment for all costs related to the
production, marketing, and distribution of SyncTrac. Such costs shall
include, but not limited to, expenses related to marketing, packaging,
reproduction, support, and advertising.
9.0 RECORDKEEPING AND AUDITS
SERENA agrees to prepare and maintain the following records which can
also be audited by HPS or its authorized agent(s):
9.1 Copies of all reports to HPS and copies of the substantiating
original agreements, bills, and invoices.
9.2 Records of the following:
(a) the name, address, and telephone number of each customer
to whom SyncTrac is distributed;
(b) the name of the individual contact if the customer is an
organization;
(c) the serial number of each copy distributed to each
customer; and,
(d) copies of all sub-license agreements, showing all parties'
signatures.
9.3 Any report or record may be audited at any time by HPS or its
authorized agent(s).
10.0 DEVELOPMENT
10.1 HPS will use its best efforts to develop, maintain, and document
SyncTrac and related products. Prior to July 1, 1991, SERENA
advanced to HPS certain funds for the development of SyncTrac.
Attached hereto as Exhibit "A" is a schedule of such advances
showing the fifty percent (50%) recoverable portion thereof,
herein referred to as Development Expense Advances. After
July 1, 1991, HPS shall assume responsibility for all
development expenses, including the cost of telephone lease
lines and access to SERENA's mainframe computer service but
excluding computer time at SERENA's mainframe computer service
(providing said computer time is reasonable), other than the
cost for computer use, which shall be paid by SERENA, provided
the same is with reasonable limits.
10.2 HPS will provide the first line technical support for SyncTrac
until notified by SERENA that SERENA is able to provide first-
line technical support. SERENA agrees to credit HPS $2500.00 per
month against Development Expense Advances while HPS is
providing first-line technical support.
10.3 HPS grants SERENA the right of first refusal to market software
products developed, owned, or acquired by HPS during the term
of the Agreement. For each product, the right of first refusal
will extend for ninety (90) days after notification in writing
to SERENA by HPS. Failure of SERENA to respond in writing, or to
indicate its intention to meet the terms of a submitted
proposal, within the ninety (90) day period, will be deemed as a
waiver by SERENA and will release HPS from any further
commitment with respect to the product offered.
11.0 WARRANTY
11.1 Upon receipt of documentation demonstrating a defect or error in
SyncTrac, HPS will use its best efforts to:
(a) supply an avoidance procedure within fifteen (15) days; and,
(b) supply a correction with twenty (20) days thereafter.
11.2 HPS agrees to inform SERENA of any defect or error in SyncTrac
within a reasonable time after discovery by HPS, and at SERENA's
request, to perform the obligations set forth in paragraph 11.1
(above) with respect to those defects or errors.
11.3 HPS shall not be responsible for all or any part of SyncTrac
that has been modified by any party other than HPS unless HPS
has reviewed the modification and determined that it constitutes
a valid correction of SyncTrac.
11.4 HPS warrants that SyncTrac will operate in accordance with its
documentation. HPS disclaims any other warranty, express or
implied, including the implied warranties of merchantability and
fitness for a particular purpose. HPS does not represent that
SyncTrac will be error-free or will operate without
interruption.
12.0 INFRINGEMENT CLAIM
12.1 HPS will indemnify SERENA against any claim that SyncTrac, as
delivered by Licensor, infringes any third party's patent,
copyright or trade secret under the laws of the United States.
This obligation of HPS shall be subject, however, to the
following terms and conditions:
12.1.1 The obligation will arise only if SERENA gives HPS prompt
notice of the infringement claim and grants HPS, in
writing, exclusive control over its defense and
settlement.
12.1.2 The obligation will cover only the latest release of
SyncTrac delivered by HPS, and will not cover any
correction, modification, or addition made by anyone
other than HPS.
12.1.3 The obligation will not cover claims that SyncTrac
infringes any third party's rights as used in combination
with any software not supplied by HPS.
12.1.4 If an infringement claim is asserted, or if HPS believes
one to be likely, HPS will have the right, but not the
obligation, to procure a license from the person claiming
or likely to claim infringement, or to modify SyncTrac to
avoid the claim of infringement.
12.2 The foregoing is HPS' exclusive obligation with respect to
claims of infringement or proprietary rights of any kind.
13.0 PROPRIETARY RIGHTS
13.1 Under the terms of this Agreement, HPS grants SERENA an
exclusive world-wide license in all proprietary rights in
SyncTrac, including all patent rights, copyrights, copyright
registrations, trade secrets, trademarks, service marks, and
related goodwill and proprietary information. All applications
for patent, registration of copyright or registration of
trademarks or service marks in any jurisdiction, shall be in the
name of HPS and SERENA as co-owners, but SERENA's exclusive
license shall be recorded in connection with any such
application or resulting patent, copyright registration, or
trademark, or service xxxx registration. All notices of
proprietary rights shall include the names of both HPS and
SERENA.
13.1.1 During the term of this Agreement, both HPS and SERENA
will consult and agree on any matters involving these
proprietary rights, including without limitation,
selection of alternative or additional trademarks or
service marks and decisions regarding filing of
applications for registration relating to any such
proprietary rights.
13.1.2 HPS and SERENA will share equally the cost of any
applications for registration or protection of
proprietary rights in or related to SyncTrac, including
without limitation, patent applications, applications
for copyright registration and applications for
trademark or service xxxx registration. HPS and SERENA
will cooperate fully with respect to all such
applications and shall execute all documents necessary
or appropriate in connection with any such application
or recording of licenses granted pursuant to this
Agreement.
13.2 Each party agrees to use reasonable effort, and at least the
same care that it uses to protect its own confidential
information of like importance, to prevent unauthorized
dissemination or disclosure of the other party's confidential
information during and after the term of this Agreement.
13.2.1 Confidential information will include:
(a) any source code and programmer's documentation for
SyncTrac;
(b) non-public financial information concerning either
party;
(c) either party's research and development, new product,
pricing and marketing plans, unless and until publicly
announced; and,
(d) any information designated as confidential in writing
at or prior to disclosure.
13.2.2 These confidentiality obligations will not apply to
information that:
(a) becomes known to the general public without fault or
breach on the part of the receiving party;
(b) the disclosing party customarily provides to others
without restriction on disclosure; or
(c) the receiving party obtains from a third party
without breach of any nondisclosure obligation and
without restriction on disclosure.
13.3 Nothing herein shall be construed to restrict the right of HPS
to use any techniques, algorithms, know-how, codes or
documentation related to SyncTrac in connection with other
products developed by HPS or its principals.
14.0 FIRST RIGHT OF REFUSAL
During the pendency of this Agreement, SERENA shall have the first
right of refusal to acquire HPS' interest in SyncTrac. In
consideration therefor, SERENA shall pay to HPS a sum certain in such
amount and by cash or promissory note as the parties shall then
agree. The determination of the amount shall acknowledge the
Royalties Payable during the remaining term, HPS' share of the
proprietary rights retained hereunder and such other factors as the
parties deem relevant.
15.0 TERMINATION
15.1 This Agreement will terminate upon the sooner of any of the
following:
15.1.1 The expiration of this Agreement in accordance with
paragraph 6.0;
15.1.2 On the thirtieth (30th) day after either party gives the
other notice in writing of a material breach by the other
of any term or condition hereof, unless the breach is
satisfactorily resolved before that day; and,
15.1.3 When either party, at its discretion, gives the other
notice of termination in writing after the other has
been, for more than sixty (60) days, the subject of any
voluntary or involuntary proceeding relating to
bankruptcy, insolvency, liquidation, receivership, or
assignment for the benefit of creditors.
15.2 After termination, as set forth above, SERENA will have no right
to copy, market or distribute SyncTrac and will promptly return
to HPS all copies of SyncTrac in its possession or under its
control.
15.3 After termination, end-users properly sublicensed prior to
termination may continue to use SyncTrac under the terms of
their written sublicense agreements, but all benefits and
obligations of the sublicenses will be shared equally by HPS and
SERENA.
15.4 Payment and indemnification obligations arising prior to
termination and the obligations of each party to keep the
other's confidential information will remain in force.
15.5 If termination is due to bankruptcy by either party, the non-
bankrupt party has the first right of refusal to acquire the
rights and ownership of the other party at a mutually agreeable
price, said price not to exceed four times the revenues for the
twelve (12) months immediately preceding the date of bankruptcy.
15.6 In the event SERENA does not choose to continue marketing
SyncTrac after three (3) years, HPS and SERENA will mutually
agree to other marketing channels and the distribution in
revenues from said channels.
16.0 SOURCE CODE ESCROW
The parties agree to execute a source code escrow agreement pursuant
to which the parties will deposit a fully documented copy of the
source code for SyncTrac, including any subsequent upgrades,
versions, and releases.
17.0 GENERAL PROVISIONS
17.1 This Agreement will be governed by and construed according to
the laws of the State of California.
17.2 This Agreement may be amended or supplemented only in writing,
signed and agreed upon by both parties. No purchase order,
invoice, or similar document will amend this Agreement even if
accepted by the receiving party in writing.
17.3 No waiver will be implied from conduct or failure to enforce
rights. No waiver will be effective unless done so in writing on
behalf of the party claimed to have waived.
17.4 If any part of this Agreement is found to be invalid or
unenforceable, it will be enforced to the maximum extent
permitted by law, and other parts of this Agreement will remain
in force.
17.5 Either party may seek injunctive or other equitable relief to
remedy any actual or threatened unauthorized disclosure of
confidential information or unauthorized use, copying, marketing,
distribution, or sublicensing of SyncTrac.
17.6 This Agreement represents the entire agreement between the
parties relating to SyncTrac and supersedes all prior
representations, discussions, negotiations and agreements,
whether written or oral.
17.7 All notices, reports, requests, and other communications
required or permitted hereunder must be in writing. They will be
deemed given when:
(a) delivered personally;
(b) sent by commercial overnight courier with written
verification of receipt thereof; or
(c) sent by registered or certified mail, postage prepaid.
Such communications will be delivered to the receiving party's
address, set forth below, or to any other address that the
receiving party may have provided for purposes of notice
hereunder.
17.8 In any suit to enforce this Agreement, including arbitration, the
prevailing party will have the right to recover its costs and
reasonable attorney's fees, including costs, fees, and expenses
on appeal.
17.9 For purposes of this Agreement, the parties to this Agreement are
independent contractors. There is no relationship of partnership,
agency, franchise, or joint venture between the parties. Neither
party has the authority to bind the other or to incur any
obligation on its behalf.
17.10 Either party may assign this Agreement to the surviving entity
in a merger or consolidation in which it retains a majority
interest. Otherwise, neither party may assign any rights or
delegate any duties under this Agreement without the other's
prior written consent. Any attempt to do so without that consent
will be void. This Agreement will bind and inure to the benefit
of the parties and their respective successors and permitted
assigns.
17.11 SERENA and HPS agree to meet on an annual basis to set quotas and
to align and evaluate SyncTrac's direction.
HIGH POWER SOFTWARE SERENA INTERNATIONAL
/s/ Xxxxxxx X. Xxxxxxx
Chief Operating Officer
/s/ Xxxxx X. Xxxxxx FOR
------------------------------- ----------------------------------
XXXXX X. XXXXXX, President XXXXXXX X. XXXXXX, President
/s/ Xxxxxxxx Xxxxxx 2,27,96
-------------------------------
XXXXXXXX XXXXXX, Vice President
0000 Xxxx Xx Xxxxxx, Xxxxx 000 000 Xxxxxxx Xxxxxxxxx, Xxxxx 000
Xxxxxxxxxx, Xxxxxxxxxx 00000 Xxxxxxxxxx, Xxxxxxxxxx 00000
EXHIBIT "A"
Summary of SyncTrac's Development Expenses
HIGH POWER SOFTWARE
ITEM Feb'9 Mar Apr May Jun Jul Aug Sep Oct Nov Dec Xxx
Xxxxxxxx 5000
Xxxxx 2083 4165 4165 4165 4165 4165 4165 4165 4165 4165 4165 4165
Rent 540 540 540 540 540 -150 000 000 000
Phone 000 000 000 007 419 199 411 265
Printer 1000
??? - 936 1248 1248 1248 1404 1937 1980 880 2640 2420 4255
Tymnet 144 1351 1937 2308 1943 2073 4091 1632 1362 3163 2832 6176
Document
TOTAL 2367 7249 8172 9688 8315 8381 10604 7872 6407 10558 10007 20186
ITEM TOTAL '90 Feb Mar Apr May Jun TOTAL '91TOTAL
Xxxxxxxx 5000 5000 5000 5000 5000 5000 25,000 30,000
Xxxxx 47897.5 4165 4165 4165 4165 4165 4165 24,990 72,888
Rent 4320 590 590 590 590 590 2,950 7,270
Phone 2380 0 2,380
Printer 1000 0 1,000
??? 20196 3302 3607 4160 2240 13,309 33,505
Tymnet 29012 3584 1833 5372 10,789 39,801
Document 2520 2220 7200 6795 7815 26,550 26,550
TOTAL 109806 19161 17415 26487 1879 0 17570 4165 103,588 213,396
THIS EXHIBIT REPRESENTS ONE-HALF (1/2) OWED BY HPS IN DEVELOPMENT AND
RECOVERAGE EXPENSES.
ADDENDUM TWO TO SOFTWARE AGREEMENT
THIS ADDENDUM TWO to the Software Agreement ("Agreement"), said Agreement being
effective July 1, 1991, is made June 6, 1995, by and between High Power Software
Inc. ("HPS") and SERENA Consulting ("SERENA"), doing business as SERENA
International. The first and only ADDENDUM to the Agreement was made April 1,
1994.
1. XXXX:Select
1.1 Ownership of XXXX:Select
HPS and SERENA agree that, for the period until June 6, 1995, HPS and SERENA had
joint ownership of the product known as XXXX:Select (also known as DMS/Sync or
DS/Sync), a product derived from the program code of SyncTrac. For definition
purposes for the Agreement and this Addendum Two, "ownership" is defined as
proprietary information, copyright, trademarks and trade secrets whether or not
any portion thereof is, or may be, validly copyrighted or registered. On June 6,
1995, SERENA agrees to grant its ownership of 50% of XXXX:Select to HPS for no
consideration. This grant of ownership is done to enable HPS to strike a
contract with Sterling Software for the marketing of XXXX:Select by Sterling
Software.
1.2 Share of Cash Receipts Associated with XXXX:Select
HPS and SERENA agree that, for the period until June 6, 1995, HPS and SERENA
agree to share any net revenues to SERENA for XXXX:Select at 50% for HPS and 50%
for SERENA. Net revenues are defined as the cash received by SERENA or HPS on
XXXX:Select, including, but not limited to, license fees and maintenance fees,
advances on license fees and maintenance fees, and sale of the ownership of
XXXX:Select by HPS. Effective June 6, 1995, HPS and SERENA agree to share any
net revenues received by HPS and SERENA at 75% for HPS and 25% for SERENA. The
receiving party shall pay the appropriate share to the other party within 15
days of receipt of the monies.
1.3 Payment for Costs of SERENA's Computer Services Facility Associated with
XXXX:Select
HPS agrees to reimburse SERENA in the amount of $250.00 per month for the costs
of SERENA's mainframe computer services facility for work done by HPS associated
with the development, maintenance, support and marketing of XXXX:Select. This
charge shall be reimbursed by HPS to SERENA by the 15th day of the month
following the month in which the charges are incurred.
Should HPS' computer time, file sizes, tape mounts, and other activities
associated with XXXX:Select increase dramatically, HPS agrees to discuss the
increase in costs
associated with the XXXX:Select activity with SERENA, and agree at a mutually
agreeable charge for the XXXX:Select activity.
1.4 Marketing Rights for XXXX:Select in Italy
SERENA signed a marketing agreement with Selesta Gestione Centri ("Selesta") in
which SERENA agreed to give Selesta marketing rights to XXXX:Select in Italy at
a commission rate higher than the commission rate for SyncTrac and higher than
the software industry standard in exchange for the source code and documentation
to XXXX:Select from Selesta.
The source code for XXXX:Select was passed from SERENA to HPS for no
consideration.
To assure no misunderstanding in ownership and marketing rights for XXXX:Select,
SERENA agrees to assign its rights under the marketing agreement with Selesta to
HPS. In so doing, HPS will receive the royalties stipulated in the marketing
agreement with Selesta for the revenues generated by Selesta in Italy. SERENA
grants this assignment with the understanding that HPS will not reassign the
marketing rights for: XXXX:Select in Italy to Sterling Software or any entity
controlled by Sterling Software. Should HPS reassign the marketing rights for
XXXX:Select in Italy to Sterling Software, the marketing rights for XXXX:Select
shall revert to SERENA.
HPS agrees to report for each copy of XXXX:Select distributed by or for HPS as
follows:
Within 15 days after the end of each month, HPS will send SERENA a written
report on the distribution of all copies of XXXX:Select during the month,
as well as a written report of any maintenance contracts relating to
XXXX:Select.
Each monthly report will specify the number of copies of XXXX:Select
distributed by or for HPS; the number of maintenance contracts; the total
applicable royalties; and the net amount due SERENA.
HPS agrees to pay the royalties due to SERENA from revenues generated by Selesta
in accordance with Section 1.2 above.
2. Advances against SyncTrac Royalties
In the initial 36 months (July 1991 through June 1994) of the Agreement, SERENA
agreed to pay $9,755.00 per month for a total of $351,180 as an Advance Royalty
against Royalties Payable as defined in the Agreement. In fact, SERENA paid a
total of $444,610 in Advance Royalties to HPS during the first 36 months of the
Agreement. From July 1994 through May 1995, SERENA paid an additional
$183,000.00 in
Page 2
Advance Royalties to HPS, bringing the total advances to $627,610.00 at May 31,
1995.
SERENA agrees to continue to pay the greater of Net Royalty Payable or $15,000
per month in Advance Royalty through June 1997. A Net Royalty Payable will occur
when the total Royalties Payable accrued against SyncTrac revenues throughout
the term of this Agreement and against XXXX:Select revenues through the period
ended June 6, 1995, and other amounts owed by HPS to SERENA generates a total
amount in excess of the Advance Royalties, offset by any technical support
credits (See Section 3 below). A Net Advance Royalties will occur when the
Advance Royalties, offset by any technical support credits (See Section 3
below), exceeds the total Royalties Payable accrued against SyncTrac revenues
throughout the term of this Agreement and against XXXX:Select revenues through
the period ended June 6, 1995, and other amounts owed by HPS to SERENA. At May
31, 1995, the total of Advance Royalties, offset by technical support credits,
was still in excess of Royalties Payable and other monies paid by SERENA on
behalf of HPS in the amount of $25,412.72. This amount represents the Net
Advance Royalties at May 31, 1995.
3. Credit against Advance Royalties for Technical Support Services by HPS
The Agreement called for HPS to "provide the first-line technical support for
SyncTrac until notified by SERENA that SERENA is able to provide first-line
technical support," and SERENA agreed to "credit HPS $2,500.00 per month against
Development Expense Advances while HPS is providing first-line technical
support."
In fact, the credit of $2,500.00 was applied as an offset against the Advance
Royalties of $9,755.00 from SERENA to HPS for the period from July 1991 through
May 1992. In May 1992, SERENA notified HPS that SERENA was able to provide
first-line support, and the credit of $2,500.00 was stopped.
The technical support credit was renewed in February 1994 in the amount of
$3,000.00 per month, and this technical support credit of $3,000.00 per month
has continued through May 1995 as an offset against Advance Royalties (although
the amount of the Advance Royalties changed, as explained in Section 2 above).
HPS will continue to receive a credit of $3,000.00 per month against the Advance
Royalty as long as there is a Net Advance Royalties and HPS is providing
technical support for SERENA. When the Net Advance Royalties reaches zero (or,
stated another way, when there is a Net Royalties Payable balance), or HPS does
not provide technical support for SERENA, the credit stops. The credit will be
renewed if a Net Advance Royalties returns.
Page 3
4. Copies of Master License Agreements ("MLAs") and Software License
Agreements for SyncTrac
SERENA agrees to provide a copy of each MLA and SLS for every SyncTrac customer
by the 15th day of the month following the month in which the MLA and SLS is
signed.
HIGH POWER SOFTWARE SERENA CONSULTING
/s/ Xxxxx X. Xxxxxx /s/ Xxxxxxx X. Xxxxxx
-------------------------- -----------------------------
Xxxxx X. Xxxxxx, President Xxxxxxx X. Xxxxxx, President
Date: Date: 95/09/01
-------------------- --------
/s/ Xxxxxxxx Xxxxxx
-------------------------------
Xxxxxxxx Xxxxxx, Vice President
Date: 95/08/04
--------
0000 Xxxx Xx Xxxxxx, Xxxxx 000 000 Xxxxxxx Xxxxxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000 Xxxxxxxxxx, XX 00000
Page 4
DT: August 17, 1995
TO: Xxxx Xxxxxxx
FR: Xxxx Xxxxxxx
RE: Addendum Two to HPS Agreement
Xxxx:
The following is my understanding of the important parts of the 8/04/95 HPS
Agreement.
- Any XXXX:Select monies (revenues) received by HPS prior to June 6,
1995 are to be shared 50/50 between HPS and SERENA. Revenues include
license fees, M&E, advances on license fees and the sale of the
ownership of XXXX:Select.
- XXXX:Select revenue received by HPS after June 6 are to be shared 75%
for HPS and 25% for SERENA.
- HPS is to pay SERENA within 15 days of receipt of the monies.
- HPS will reimburse SERENA in the amount of $250 per month for
mainframe usage. Again, this is to be paid by the 15th. The Agreement
doesn't stipulate a start time for this. Aug. 1?
- HPS will send SERENA a report on the distribution of all copies of
XXXX:Select distributed during the month as well as a listing of all
maintenance contracts. These reports will show the applicable
royalties and the net amount due SERENA.
- SERENA will continue to pay HPS $15,000 per month as an advance on
Royalties.
- The Net Royalty Payable will be netted against any amounts owed to
SERENA by HPS for XXXX:Select revenues.
- HPS will continue to receive a credit of $3,000 per month against the
Advance Royalty as long HPS is providing technical support and there
is a negative Net Advance Royalties balance.
- When the Net Advance Royalties reaches zero (or when there is a
positive balance payable) or when HPS does not provide technical
support, the credit stops.
This seems to be all the relevant parts. My only question is "does the $250 per
month start on Aug. 1"?
Date: Feb. 27, 1996
From: Xxxxxxxx Xxxxxx
To: Xxxx Xxxxxxx
Subj: Addendum #3 to our software agreement
Dear Xxxx:
To comply with our addendum #3 effective January 31st 1996, I am supplying all
the software and the documentation for the SyncTrac/OP product. I have attached
two disk copies which include the following 6 directories:
DOC Includes SyncTrac for DOS User Guide (DOS330U.DOC)
and SyncTrac for UNIX User Guide (UNX110U.DOC)
INCLUDE All "include" files related to the Micro Soft Assembler part of the
SYNC.ASM and SYNCGEN.ASM programs.
MASM The Assembler source codes of the SYNC and SYNCGEN programs
SYNCNET SyncTrac for Network (Alpha version)
SYNCPC SyncTrac for DOS online portion version 3.3.0
SYNCUDOS SyncTrac for UNIX, and its DOS equivalent. This software Detects
Changes in a LAN environment and UNIX servers. It is currently in
use at House Hold Credit Services.
If there is anything else that you need please let me know. Thank you very much
Xxxx.
Sincerely Yours,
Xxxxxxxx Xxxxxx
/s/ Xxxxxxxx Xxxxxx
MEMORANDUM
DT: 2/28/96
TO: JohnV, Alex
FR: Xxxx Z
RE: PAYMENT TO HPS FOR SYNCTRAC FOR OPEN PLATFORMS
cc: Xxxx, Xxxx
FL: sync\hpspay.doc
Attached is signed Addendum Three, EFFECTIVE 1/31/96, to Software Agreement with
HPS. This Addendum Three stipulates, among other things, that:
1. Forgiveness by SERENA of Right to Receive 25% of all Cash Receipts on
XXXX:Select
No more monies from HPS for XXXX:Select after 1/31/96. Read carefully.
2. Reimbursement by HPS to SERENA for the Use of its Mainframe Computer
Facilities or its Mainframe Computer Facilities Access
HPS will owe us 50% reimbursement on SyncTrac time and 50% on XXXX:Select time.
Maribet has set up separate IDs for XXXX:Select, but she just did this. There
will be very little on XXXX:Select in Feb96.
3.1 Purchase of HPS' 50% ownership in SyncTrac/Open Platforms (SyncTrac/OP)
For $86,422, we are purchasing the remaining 50% ownership in SyncTrac/OP. We
already own 50%.
PLEASE PREPARE CHECK TODAY FOR SIGNATURE BY XXXX OR ME. SEND BY FEDEX TODAY TO
HPS.
Thank you.
BillZ
ADDENDUM THREE TO SOFTWARE AGREEMENT
THIS ADDENDUM THREE is subject to and incorporates all of the provisions stated
in the Software Agreement, as amended, ("Agreement"), said Agreement being
effective July 1, 1991, by and between High Power Software Inc. ("HPS") and
SERENA Consulting ("SERENA"), doing business as SERENA International. This
Addendum Three is effective January 31, 1996, and takes precedence over any
conflicting points contained in the Agreement.
1. Forgiveness by SERENA of Right to Receive 25% of all Cash Receipts on
XXXX:Select
HPS and SERENA agree that HPS shall retain all cash receipts for or related to
XXXX:Select for all license agreements signed by Sterling Software or
Selesta-Italy with licensees after January 31, 1996, or for the sale of the
ownership of XXXX:Select. For all license agreements signed by Sterling Software
or Selesta-Italy with licensees before or on January 31, 1996, and for all other
cash receipts by HPS for XXXX:Select before or on January 31, 1996, HPS shall
owe SERENA 25% of the cash receipts.
2. Reimbursement by HPS to SERENA for the Use of its Mainframe Computer
Facilities or its Mainframe Computer Facilities Access
HPS agrees to reimburse SERENA for the prorated computer costs charged on or by
SERENA's mainframe computer facilities. HPS will reimburse 100% of the prorated
computer costs for the computer time associated with any XXXX:Select
machine-time usage and HPS will reimburse 50% of the prorated computer costs for
the computer time associated with any SyncTrac machine-time usage. These
prorated computer costs are calculated by (a) taking the computer time charged
to the HPS TSO User Identification (ID) numbers (2 IDs for SyncTrac and 2 IDs
for XXXX:Select for now and future IDs as mutually agreed) at or by SERENA's
mainframe computer facilities, (b) divided by the total computer time charged at
or by SERENA's mainframe computer facilities, and (c) multiplied by the total
computer time charges at or by SERENA's mainframe computer facilities. These
prorated computer costs will be invoiced to HPS by SERENA and will be offset
against any royalties due to HPS from SERENA, as described in the Agreement.
3. SyncTrac/Open Platforms - SyncTrac for use on operating systems other than
IBM Mainframe (Multiple Virtual System (MVS), Disk Operating System/Virtual
Storage Extended (DOS/VSE), and Virtual Machine (VM))
3.1 Purchase of HPS' 50% ownership in SyncTrac/Open Platforms (SyncTrac/OP)
HPS hereby transfers, grants, conveys, assigns, and relinquishes exclusively to
SERENA all of HPS's right, title, and interest in and to both the tangible and
the intangible property constituting SyncTrac/OP, in perpetuity (or for the
longest period of time otherwise permitted by law), including the following
corporeal and incorporeal incidents to SyncTrac/OP:
a) Title to and possession of the media, devices, and documentation that
constitute all copies of the SyncTrac/OP, its component parts, and all
documentation relating thereto, possessed or controlled by HPS, which
are to be delivered to SERENA pursuant to this Agreement;
b) All right, title, and benefit of HPS in and to the inventions,
discoveries, improvements, ideas, trade secrets, know-how,
confidential information, and all other intellectual property owned or
claimed by HPS pertaining to SyncTrac/OP (but excluding any right or
interest in the trademarks and trade names of HPS); and
c) All of the right, title, interest, and benefit of HPS in, to, and
under all agreements, contracts, licenses, and leases entered into by
HPS, or having HPS as a beneficiary, pertaining to SyncTrac/OP,
including (without limitation) HPS's rights as licensor under any
End-User License Agreements.
In exchange for this transfer of right and title in SyncTrac/OP from HPS to
SERENA, SERENA agrees to pay HPS the sum of $86,422 on or before February 29,
1996.
3.2 Covenant Not to Compete
HPS shall not engage in the business of acquiring, developing, marketing,
distributing, licensing, or maintaining systems and application computer
programs having any function similar to, competitive with, or substitutable for
SyncTrac/OP, except as related to SyncTrac/MVS or as otherwise agreed by SERENA.
HPS shall not engage in any such activity, directly or indirectly, on its own
behalf or in the service of or on behalf of others. HPS further acknowledges and
agrees that the foregoing prohibition will have no impact on their other
business and prospects, including their research and development activities or
any other functions or operations. Notwithstanding the foregoing, this provision
shall not restrict in any manner the acquisition or use of any programming or
materials by HPS solely for internal purposes.
3.3. Consent to Injunctive Relief
The parties agree that in the event of a breach of this Agreement by HPS, money
damages may not be adequate remedy to SERENA, and therefore, SERENA shall be
entitled to an injunction for enforcement of the covenant not to compete.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement under
seal effective as of the date shown above.
HIGH POWER SOFTWARE SERENA CONSULTING
/s/ Xxxxx X. Xxxxxx /s/ Xxxxxxx X. Xxxxxx
-------------------------- ----------------------------
Xxxxx X. Xxxxxx, President Xxxxxxx X. Xxxxxx, President
/s/ Xxxxxxxx Xxxxxx 2,27,96
-------------------
Xxxxxxxx Xxxxxx, Vice President
0000 Xxxx Xx Xxxxxx, Xxxxx 000 000 Xxxxxxx Xxxxxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000 Xxxxxxxxxx, XX 00000
Page 2
AGREEMENT
The undersigned parties acknowledge that High Power Software ("HPS") wishes to
copy the VSAM Synchronization technology into the SyncTrac Code Base from Delta
Backup. Both parties further acknowledge that this will not change HPS'
ownership of Delta Backup (a/k/a XXXX SELECT), nor will it in any way change the
present joint ownership of SyncTrac. SyncTrac shall continue to be owned 50% by
SERENA and 50% by HPS.
Furthermore, the issue of whether or not the VSAM Synchronization shall be
considered a core component of SyncTrac or a separately purchased option is a
decision that will be made jointly between HPS and SERENA's marketing
department.
ACCEPTED BY:
SERENA SOFTWARE INTERNATIONAL HIGH POWER SOFTWARE
(SERENA) (HPS)
/s/ Xxxxxxx X. Xxxxxx /s/ Xxxxxxxx Xxxxxx
------------------------------ -----------------------------
Signature Signature
XXXXXXX X. XXXXXX XXXXXXXX XXXXXX
----------------- ---------------
Printed Name Printed Name
Chief Technology Officer V.P.
------------------------ ----
Title Title
1998/05/06 5/6/1998
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Date Date
