Exhibit 10.18
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission pursuant to a request for
confidential treatment. Asterisks denote omissions.
SOFTWARE LICENSE AGREEMENT
--------------------------
THIS SOFTWARE LICENSE AGREEMENT (this "Agreement") is made and entered into
on this 1st day of October, 1999, by and between Deutsche Borse AG, a German
Aktiengesellschaft with its registered office in Frankfurt am Main, Federal
Republic of Germany ("DBAG"), the Swiss Stock Exchange, a Swiss association with
its registered office in Zurich, Switzerland ("SWX" and, together with DBAG,
"Licensors") and Ceres Trading Limited Partnership, a Delaware limited
partnership having its principal offices in Chicago, Illinois, U.S.A. ("Ceres"
or "Licensee"), and the Board of Trade of the City of Chicago ("CBOT"), an
association created by special act of the Illinois legislature, and the managing
general partner of Ceres.
PREAMBLE
--------
WHEREAS, the parties and certain of their affiliates are engaged in a joint
undertaking to provide electronic trading facilities more efficiently by sharing
technology and resources and to facilitate global trading by the members of the
derivatives exchanges owned by them or their affiliates; and
WHEREAS, Licensors have developed, at substantial expense, software for
trading financial derivative products; and
WHEREAS, as part of such undertaking, the parties deem it to be mutually
advantageous to undertake to use, to the extent possible, the same software for
trading on such derivatives exchanges; and
WHEREAS, in order to achieve this goal, Licensors have agreed to license
software they have developed for use in electronic trading to Licensee on the
terms herein provided; and
WHEREAS, the parties agree that the agreements between them should be
structured so that, in the event their efforts at joint development and
utilization of technology are not realized or are terminated for any reason,
both parties should continue to be able individually to provide and support
electronic trading facilities to their members and customers.
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
covenants herein set forth, and for other good and valuable consideration, the
receipt and adequacy of which are hereby acknowledged by both parties hereto,
the parties agree as follows:
1 Definitions
-----------
Unless otherwise specified in the body of this Agreement, each term set
forth below when used anywhere in this Agreement or its exhibits and attachments
shall have the respective meaning ascribed to it below:
1.1 "Affiliate" means, with respect to any person, any person that
directly, or indirectly through one or more intermediaries, controls, is
controlled by or is under common control with the person in question. For
purposes of this definition, "control" means the
2
possession, directly or indirectly, of more than 50% of the equity interests of
a person and the power to direct or cause the direction of the management and
policies of a person, whether through ownership of voting securities, by
contract or otherwise. In addition, for purposes of this Agreement, CBOT and its
Affiliates are deemed to be Affiliates of Ceres.
1.2 "Alliance Agreement" means the Alliance Agreement dated as of the date
hereof and among SWX, DBAG, Eurex Deutschland, Eurex Zurich AG, Eurex Frankfurt
AG, CBOT, Ceres and Ceres Alliance LLC, as amended, restated or replaced by such
parties from time to time, to set forth certain of their understandings
regarding their joint undertaking to develop and manage technology resources and
operate a common network for electronic trading.
1.3 "CBOT Commercial Start" means the date on which Licensee first uses
the Programs for the actual trading (as opposed to testing or simulation) of
products.
1.4 "CBOT Competitor" means as of any date, (a) any entity providing
facilities and services for the trading of derivative products which is located
in Canada, Mexico or the United States or (b) any entity that provides or plans
to provide facilities and services for the trading of derivative products
substantially identical to any derivative product traded on the CBOT as of the
date of the grant or proposed grant of any sublicense pursuant to Section 2.3.
Notwithstanding the foregoing, the Joint Venture Entity and its Affiliates will
not be deemed to be CBOT Competitors during the term of the Alliance Agreement,
and, for the avoidance of doubt, any entity providing or planning to provide
facilities or services for the trading of Cash Market Products (as that term is
defined in the Alliance Agreement) will not deemed to be a CBOT Competitor with
respect to such Cash Market Products.
1.5 "Effective Date" means the effective date of the Alliance Agreement.
1.6 "Eurex 2.0 Date" means September 28, 1998, the date on which the
Eurex Exchanges implemented the software known as Eurex Release 2.0 on such
Exchanges.
1.7 "Eurex Competitor" means, as of any date, (a) any entity providing
facilities and services for the trading of derivative products which is located
in any of the European countries listed in Schedule E of the Alliance Agreement
(the "European Countries") or (b) any entity that provides or plans to provide
facilities and services for the trading of derivative products substantially
identical to any derivative product traded on either Eurex Exchange as of the
date of the grant or proposed grant of any license pursuant to Section 2.3.
Solely for purposes of this Agreement, the Euro and the Ecu shall be deemed to
be currencies of the European Countries. Notwithstanding the foregoing, the
Joint Venture Entity and its Affiliates will not be deemed to be Eurex
Competitors during the term of the Alliance Agreement.
1.8 "Eurex Exchanges" means Eurex Deutschland and Eurex Zurich.
1.9 "Joint Venture Entity" means the joint venture entity defined in
Section 3.1 of the Alliance Agreement.
1.10 "Licensee" means Ceres and any entity into which it may be merged or
which acquires all or substantially all of its assets.
1.11 "Licensors" means the Licensors identified above and any entities
into which
3
either of them may be merged or which acquires all or substantially all of the
assets of either of them.
1.12 "Programs" means all of the software, in all formats (including,
without limitation, source code, object code and executable code formats and
interfaces such as look and feel, screen layouts, databases and database works,
as well as all preparatory materials) which were used as of the Eurex 2.0 Date
by the Licensors and the Eurex Exchanges in providing and supporting electronic
trading facilities and services for the members of Eurex Exchanges, and other
materials that Licensors agree to license to Licensee, the Program Documentation
and any portions of any of the foregoing that form the basis of, are contained
or reflected in, form a portion of or are incorporated in derivative works
prepared pursuant to this Agreement; provided, however, that the term "Programs"
does not include the commercially available third party software identified in
Exhibit A hereto which Licensors and the Eurex Exchanges currently use in
providing such electronic trading facilities and services.
1.13 "Program Documentation" means all design documentation, technical
specifications and user manuals, in both human readable and machine readable
form, flow charts and narratives, as well as all other materials used as of the
Eurex 2.0 Date by Licensors and the Eurex Exchanges in providing and supporting
electronic trading facilities and services for the members of the Eurex
Exchanges and all other tangible materials provided by Licensors to Licensee
pursuant to the terms of this Agreement which represent, describe or specify the
Programs or their uses, operations or applications.
1.14 "Proprietary Rights" means, with respect to any item, all trade
secret, copyright, patent, trademark, service xxxx, certification xxxx, trade
dress or other intellectual property or proprietary rights in all countries
related to such item or any part thereof, any extensions and renewals of the
foregoing, and any registrations, patents or applications with respect to the
foregoing, including any Licensors Confidential Information (as defined in
Section 7.3 below) included therein or related thereto.
1.15 "Release 3.0 Modifications" means all Modifications (as defined
in Section 7.1 below) made to the Programs before the Effective Date.
2 Grant of License
----------------
2.1 Subject to the terms and conditions of this Agreement, Licensors
hereby grant to Licensee a non-exclusive, non-transferable, irrevocable and
perpetual license, royalty-free except as provided in Section 6 and non-
terminable for any reason except by Licensee as provided in Section 8, to use,
for itself and, by way of sublicenses granted pursuant to Section 2.2, its
Affiliates, the Programs to provide and support electronic trading facilities
and services for the trading of products of any kind on the CBOT and to
distribute the same as herein provided. Licensee shall have the right to make
sufficient copies of the Programs to support its use thereof as authorized
hereunder. Licensee shall also have the right, itself or through independent
contractors, to modify the Programs and make derivative works thereof and/or to
merge the same into other programs and materials, subject to the provisions of
the Alliance Agreement relating to maintenance of a common source code (as
described in the Alliance Agreement). Licensee may use the Programs for such
purposes at any number of locations anywhere in the world, and may permit the
Programs to be used for such purposes by any employee or agent of Licensee or
its permitted sublicensees. Further, Licensee may provide to CBOT users those
components of the Programs, if any, as are necessary for such users to
participate in the electronic trading facilities
4
described above. Licensee shall have no other rights with respect to the
Programs other than as provided in this Agreement.
2.2 Licensee may sublicense the Programs to third parties, provided,
however, that, prior to the expiration of five years after the Effective Date,
any such sublicense shall require the consent of Licensors, which consent shall
not be unreasonably withheld. No such consent shall be required for any such
sublicense granted to (a) any entity performing clearing functions with respect
to the electronic trading facilities described in Section 2.1 solely for
purposes of performing such functions: (b) CBOT and others of its Affiliates to
provide and support electronic trading facilities and services for CBOT users
for the trading of products on the CBOT as contemplated in Section 2.1; and (c)
during the term of the Alliance Agreement, the Joint Venture Entity and its
Affiliates. Any such sublicense shall contain terms for the benefit of the
Licensors which are comparable to the restrictions contained herein with respect
to (i) protecting the confidentiality and proprietary nature of the Programs,
the Licensors' Confidential Information and the Licensors' Proprietary Rights
with respect thereto, (ii) limitations on use, (iii) disclaimers of warranties,
(iv) limitations on liability and (v) limitations on transfers, assignments and
sublicensings. Except for the sublicenses described in (a), (b) and (c) of this
Section 2.2, Licensors and Licensee agree that they shall each have the right to
one-half of the revenues received from any such sublicensee of the Programs
(without material Modifications, as defined in Section 7.1 below) to which a
sublicense is granted during the term of the Alliance Agreement. Revenue sharing
with respect to distributions of the Programs (together with material
Modifications) will be addressed in the Alliance Agreement or in a separate
written agreement.
2.3 Notwithstanding the foregoing, Licensee shall at no time during the
period from the date hereof through the fourth anniversary of the termination of
the Alliance Agreement grant or permit to continue to exist, either directly or
indirectly through one or more Affiliates or intermediaries, any sublicense of
any portion of the Programs to any entity that is or becomes a Eurex Competitor
at any such time. In partial consideration of this undertaking, the Licensors
agree not to grant or permit to continue to exist, either directly or indirectly
through one or more Affiliates or intermediaries, any license of any portion of
the Programs to any entity that is or becomes a CBOT Competitor at any time
during the period from the date hereof through the fourth anniversary of the
termination of the Alliance Agreement.
2.4 All full and partial copies of any source code of the Programs and
Program Documentation which contains or describes such source code, which
Licensee acknowledges contains confidential and extremely valuable trade secrets
of Licensors, shall not be disclosed other than as necessary (including to
appropriate third party service providers) in connection with Licensee's
business as described above and shall be stored and used only at sites within
the United States or, subject to Licensors' consent, which may not be
unreasonably withheld, in other countries, at which stringent security
precautions are employed that reflect the confidential nature and extreme value
of such source code and Program Documentation. Such consent is hereby granted by
Licensors to the possession and use of the Programs, source code and related
Program Documentation in Germany in connection with the Project described in the
Alliance Agreement, subject to appropriate confidentiality arrangements and
limitations on use.
2.5 Except as provided in Section 2.3 above, all of the restrictions,
limitations and conditions contained in this Agreement on the use and disclosure
of the Programs and the Confidential Information shall, except as may from time
to time be otherwise agreed by the parties, terminate on the earlier to occur of
(i) the date on which the portions of the Programs
5
remaining in the derivative works prepared pursuant to this Agreement, taken in
the aggregate, comprise a de minimus portion of the value of such derivative
works to Licensors or (ii) the ninth anniversary of the Effective Date.
3 Term of License
---------------
This Agreement shall be effective upon the Effective Date and shall
continue in perpetuity unless terminated by Licensee pursuant to Section 8.
4 Delivery
--------
Licensor shall deliver the Programs to Licensee as soon as practicable after the
Effective Date. Licensee shall be responsible for the installation of the
Programs.
5 Warranties; Disclaimer of Warranties
------------------------------------
5.1 Licensors warrant that:
5.1.1 The Programs are listed and accurately described in the
Specifications attached hereto as Exhibit B and include all of the software used
on the Eurex 2.0 Date by Licensors and the Eurex Exchanges in providing and
supporting electronic trading facilities and services for the members of the
Eurex Exchanges except for the third party software identified in Exhibit A
hereto which Licensors warrant is available from third party vendors.
5.1.2 To Licensors' knowledge as of the date hereof, (i)
Licensors, taken together, and their respective licensors are the lawful owners
of all intellectual property rights in the Programs with full rights to grant
the license granted herein and (ii) as delivered to Licensee, the Programs do
not infringe upon the intellectual property rights of any third party and are
not subject to any claim of infringement by any third party. However, Licensors
are aware of the claims based on U.S. Patent No. 4,903,201 (the "Patent")
asserted in the case captioned Electronic Trading Systems Corporation v. Board
of Trade, et al., Civil Action No. 3-99CV1016-X, pending in the United States
District Court for the Northern District of Texas (the "Texas Case"). While none
of the parties to this Agreement have any reason to believe that, when used in
the manner contemplated in this Agreement, the Programs do or will infringe any
valid patent rights of the plaintiff in the Texas Case, notwithstanding any
other provision of this Agreement, no party shall have any liability (including,
without limitation, under Section 5.2) to another party under this Agreement
arising out of or in connection with the Patent or any claims asserted with
respect thereto, in the Texas Case or otherwise, based upon the Patent.
5.1.3 To Licensors' knowledge as of the date hereof, the Programs
do not contain any timer, clock, counter or other limiting design or routine
which causes the Programs to become erased, inoperable or otherwise incapable of
being used in the full manner for which they are designed and licensed pursuant
to this Agreement after being used or copied a certain number of times, or after
the lapse of a certain period of time, after the occurrence or lapse of any
similar triggering factor or event, or because they have been installed on or
moved to a central processing unit or system which has a different serial
number, model number or other identification different from the system on which
they were originally installed.
6
5.1.4 Licensors are adapting the Programs to enable them to
accommodate the millennium date change for the functions for which they are
intended to be used. Licensors are aware of no inability of the Programs to be
so able to accommodate such date change and have no reason to believe that,
after the implementation of such adaptations, such inabilities will occur. If
such inabilities nevertheless become apparent, any adaptations Licensors make to
eliminate such inabilities will be delivered to Licensee and shall be deemed to
constitute a portion of the Programs.
5.1.5 Neither of Licensors is a party to any agreement that
impairs its rights to grant the license herein or perform its obligations
hereunder.
5.1.6 On the date hereof, Licensors use their electronic trading
facilities to operate the Eurex Exchanges and, in the opinion of Licensors, such
facilities, including the software used therein, function on such date
satisfactorily in all material respects for such purposes.
5.2 Licensee's sole remedies with respect to breaches by Licensors of
their warranties under Section 5.1 shall be the commercially reasonable efforts
of the Licensors to correct such breaches or cause such breaches to be
corrected.
5.3 Licensee recognizes that, in licensing the Programs from Licensors it
is relying upon its own investigation of the Programs and its judgments on the
suitability of the Programs for its purposes and acknowledges that Licensors can
and do not make any representation or warranty that the Programs do or will (i)
meet the requirements of Licensee or operate in configurations selected by
Licensee, (ii) operate in the environment of Licensee in an uninterrupted or
error-free manner or (iii) conform to any performance specifications.
5.4 EXCEPT AS SET FORTH IN SECTION 5.1, THE PROGRAMS ARE BEING PROVIDED TO
LICENSEE AS IS, AND LICENSORS DO NOT MAKE, AND HEREBY DISCLAIM, ANY AND ALL
OTHER WARRANTIES, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, INCLUDING BUT NOT
LIMITED TO IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE, AND SHALL HAVE NO LIABILITY IN CONNECTION WITH
OR ARISING OUT OF ANY FAILURE OF THE PROGRAMS (i) TO MEET LICENSEE'S
REQUIREMENTS OR OPERATE IN CONFIGURATIONS SELECTED BY LICENSEE, (ii) TO OPERATE
IN LICENSEE'S ENVIRONMENT IN AN UNINTERRUPTED OR ERROR-FREE MANNER OR (iii) TO
CONFORM TO ANY PERFORMANCE SPECIFICATIONS, OR IN CONNECTION WITH OR ARISING OUT
OF ANY ABILITY OR INABILITY TO USE THE PROGRAMS IN CONNECTION WITH ANY OF THE
FINANCIAL PRODUCTS OR CONTRACTS TRADED (OR FAILED TO BE TRADED) ON ANY EXCHANGE
OR BY ANY MEMBERS THEREOF. LICENSORS SHALL HAVE NO LIABILITY OF ANY KIND UNDER
THIS AGREEMENT FOR ANY MODIFICATIONS MADE TO THE PROGRAMS BY LICENSEE OR ANY
SUBLICENSEE OR ANY PARTY ACTING ON BEHALF OF ANY OF THEM.
5.5 Each of the Licensors and Licensee hereby represents and warrants to
the others as follows:
7
5.5.1 It has all requisite corporate power and authority to enter
into this Agreement and to carry out the transactions contemplated hereby.
5.5.2 The execution, delivery and performance of this
Agreement and the consummation of the transactions contemplated hereby have been
duly authorized by all requisite corporate action on its part.
5.6 EXCEPT AS SET FORTH IN SECTION 5.7, IN NO EVENT SHALL LICENSORS BE
LIABLE FOR, AND LICENSEE HEREBY WAIVES AND RELEASES ANY CLAIMS IT MIGHT
OTHERWISE HAVE TO BE COMPENSATED BY LICENSORS IN CONNECTION WITH THIS AGREEMENT
FOR, ANY SPECIAL, INDIRECT, CONSEQUENTIAL OR COLLATERAL DAMAGES (SUCH AS,
WITHOUT LIMITATION, LOSS OF REVENUE, LOSS OF PROFITS, LOSS OF DATA, LOSS OF USE,
INTERRUPTION OF BUSINESS OR LOSS OF GOODWILL), OR ANY DAMAGES OTHER THAN DIRECT
DAMAGES, WITHOUT REGARD TO THE CIRCUMSTANCES GIVING RISE TO ANY PURPORTED CLAIM
AND REGARDLESS OF THE LEGAL OR EQUITABLE GROUNDS ON WHICH ANY PURPORTED CLAIM IS
BASED, ARISING FROM THE GRANTING OF THE LICENSE GRANTED HEREIN OR THE DEPENDENCE
UPON OR USE OF THE PROGRAMS BY LICENSEE OR ANY THIRD PARTY.
5.7 The provisions of Section 5.6 shall not apply to any damages resulting
from or arising out of any breach by Licensors of their obligations under
Section 2.3.
5.8 Licensee agrees to indemnify, defend and hold Licensors harmless
against any and all damages, costs or expenses (including reasonable attorney's
fees) relating to, based on or arising out of all claims brought by non-members
of the Eurex Group (as that term is defined in the Alliance Agreement) arising
out of Licensee's use, disclosure or modification of the Programs, or any such
use, disclosure or modification by any third party to which Licensee has made
available any portion of the Programs, other than with respect to that portion
of any such damages, costs or expenses resulting directly from any breach by
Licensors of their warranties set forth in Section 5.1.
6 License Fees on Termination of Alliance Agreement
------------------------------ ------------------
6.1 Should a finding be made in any arbitration proceeding conducted
pursuant to the Alliance Agreement that CBOT, Ceres or any related party of
either of them which is a party to the Alliance Agreement materially breached
any material provision of the Alliance Agreement prior to the CBOT Commercial
Start and failed to timely cure such breach and, as a result of such breach,
DBAG, SWX, Eurex Frankfurt, Eurex Zurich or any related party of any of them
which is a party to the Alliance Agreement has given valid notice of termination
of the Alliance Agreement (the "Termination Notice"), then, unless, within 30
days of the date of its receipt of such finding, Licensee elects to terminate
the license granted herein pursuant to Section 8.1, Licensee shall be obligated
to pay to Licensors an amount equal to 500,000 Euros for each full month after
the Termination Notice was given (the "Termination Date") up to a maximum of
thirty million (30,000,000) Euros). The first such payment (in an amount equal
to 500,000 Euros multiplied by the number of months that have elapsed from the
Termination Date to the date of such payment) shall be due thirty days after the
receipt by Licensee of the arbitration panel's
8
report of findings. The second such payment (in the amount of 500,000 Euros)
shall be made on the same date as the first such payment. Successive payments
(in the amount of 500,000 Euros each) shall be made on the same day of each
month thereafter until the first to occur of: i) the later termination of the
license by Licensee pursuant to Section 8.1 below or ii) receipt by Licensors
from Licensee of total payments of thirty million (30,000,000) Euros pursuant to
this Section 6.1. If Licensee elects to terminate the license granted hereunder
pursuant to Section 8.1, the minimum payment under this Section 6.1 shall be
2,000,000 Euros.
6.2 Should a finding be made in any arbitration proceeding conducted
pursuant to the Alliance Agreement that CBOT, Ceres or any related party of
either of them which is a party to the Alliance Agreement materially breached
any material provision of the Alliance Agreement within 60 months subsequent to
the CBOT Commercial Start and failed to timely cure such breach and, as a result
of such breach, DBAG, SWX, Eurex Frankfurt, Eurex Zurich or any related party of
any of them which is a party to the Alliance Agreement has given the Termination
Notice, then, unless, within 30 days of the date of its receipt of such finding,
Licensee elects to terminate the license granted herein pursuant to Section 8.1,
Licensee shall be obligated to pay to Licensors an amount equal to 500,000 Euros
for each full month after the Termination Date to the first to occur of the
later termination of the license by Licensee pursuant to Section 8.1 or the 60th
month following the month in which the CBOT Commercial Start occurred. The first
such payment (in an amount equal to 500,000 Euros multiplied by the number of
months that have elapsed from the Termination Date to the date of such payment)
shall be due thirty days after the receipt by Licensee of the arbitration
panel's report of findings. The second such payment (in the amount of 500,000
Euros) shall be made on the same date as the first such payment. Successive
payments (in the amount of 500,000 Euros each) shall be made on the same day of
each month thereafter until the first to occur of: i) the termination of the
license by Licensee pursuant to Section 8.1 below or ii) the 60th month
following the month in which the CBOT Commercial Start occurred. If Licensee
elects to terminate the license granted hereunder pursuant to Section 8.1, the
minimum payment under Section 6.2 shall be 2,000,000 Euros.
6.3 Payments due under Sections 6.1 and 6.2 for partial months shall be
determined pro-rata on the basis of a thirty (30) day month.
6.4 Except as specifically provided in this Section 6, no license fee
shall be required to be paid by Licensee to Licensor with respect to the license
granted herein.
6.5 Licensors' sole remedy for Licensee's failure to make any payment due
under this Section 6 shall be for money damages in the amount specified in this
Section 6 plus interest and the cost of collection. Failure of Licensee to make
any payment due under this Section 6 or otherwise shall not give rise to a right
of Licensors to terminate the license granted hereunder.
7 Ownership, Confidentiality and Protection of Proprietary Information
--------------------------------------------------------------------
7.1 Title. (a) Licensors (and their licensors) shall be the sole and
-----
original owners of, and shall have the sole and exclusive title in and to, the
Programs, all Proprietary Rights with respect to the Programs and any causes of
action arising out of or related to any infringement or misappropriation of any
of the foregoing.
(b) Subject to the foregoing, it is understood and agreed that each of the
Licensors and Licensee shall each individually have all rights, title and
interest in and to, and all
9
Proprietary Rights with respect to (all such rights, title and interest and
Proprietary Rights being hereinafter collectively referred to, for each Licensor
and Licensee, as "Rights"), all of the alterations, adaptations, amendments,
enhancements, extensions, modifications, developments and improvements of the
Programs and combinations of the Programs with other software to the extent
created by Licensors or Licensee or jointly created by Licensors and Licensee or
caused to be created by any or all of them ("Modifications"); provided however,
that Modifications shall include only (1) the Release 3.0 Modifications, but
with respect to Licensee, only upon payment of eight million (8,000,000) Euros,
in accordance with paragraph (1) of the payment schedule set forth in Exhibit E
(the "Payment"), it being recognized that Licensee's rights and obligations with
respect to the "distributed matching algorithm" component of the Release 3.0
Modifications are further set forth in paragraph (2) of Exhibit E, and
Licensee's obligations with respect to the "system limits" component of the
Release 3.0 Modifications are further set forth in paragraph (3) of Exhibit E;
and (2) Modifications made after the Effective Date, each as distinguished from
any elements of the Programs employed in connection with any Modifications.
Subject to the preceding sentence, each of the Licensors and Licensee shall have
the right to use, distribute, license, sublicense and otherwise exploit
Modifications (as defined in the preceding sentence) in any manner it believes
appropriate without accounting to any other party.
(c) Simultaneous with the execution of this Agreement, DBAG shall cause to
be executed and delivered to an escrow agent acceptable to the Licensors and
Licensee ("Escrow Agent"): (1) as evidence of DBAG's Rights concerning the
Release 3.0 Modifications, a true and accurate copy of a letter from Xxxxxxxx
Consulting to DBAG in the form set forth in Exhibit C (the "AC Letter"); and (2)
the assignment of Rights concerning the Release 3.0 Modifications from DBAG to
Ceres in the form set forth in Exhibit D consistent with paragraph (b) of this
Section 7.1 (the "Assignment"). The Escrow Agent shall be instructed that, upon
notice from Ceres and DBAG that the Payment has been made and of the date
thereof, the Escrow Agent shall date the Assignment as of the date specified in
the joint instructions (which the parties acknowledge will be the date that the
Payment is received by DBAG) as the date of the Payment and shall deliver the
Assignment to Ceres.
(d) Prior to receipt of the Assignment by Ceres, Ceres and CBOT may have
access to the Release 3.0 Modifications solely for the purpose of engaging in
preparation for their use at the CBOT pursuant to the Alliance Agreement.
(e) Failure to make any payment in connection with the Release 3.0
Modifications shall not entitle Licensors to terminate the license to the
Programs granted herein. No provisions of this Agreement relating to the
Programs shall apply to the Modifications or the Release 3.0 Modifications.
7.2 Modifications to the Programs made by or on behalf of Licensors,
Licensee and/or CBOT after termination or expiration of the Alliance Agreement
for any reason shall be deemed to be solely owned by the party on whose behalf
such Modifications were made, subject, in the case of Modifications made by or
on behalf of Licensee, to the underlying rights of Licensors in and to the
Programs as provided herein. The party by or on whose behalf such Modifications
are made shall have the sole right to copy, publish and to distribute such
Modifications and to adapt them, to create derivative works thereof, to
translate such Modifications and to publish these adaptations, derivative works
and/or translations of such Modifications, to transmit or broadcast such
Modifications also in an interactive way and to license such Modifications to
third parties, and with respect to any such Modification which is a
10
database, will own all economic exploitation rights and in particular the right
of reproduction, distribution and communication to the public of any database in
part or in total; provided, however, that in the case of such Modifications made
by or on behalf of CBOT and/or Licensee, each of their rights in and use of such
Modifications shall be subject to the underlying rights of Licensors in and to
the Programs and all applicable provisions of this Agreement.
7.3 The receiving party of any Confidential Information (as defined below)
agrees to use reasonable efforts to protect such Confidential Information from
unauthorized use or disclosure (intentional, inadvertent or otherwise) and in
any event shall take such steps to protect the proprietary interest therein of
the disclosing party as it takes to protect the confidentiality and ownership of
its own information and materials of a like nature. Notwithstanding the
foregoing, the receiving party's obligations to protect the confidentiality of
any Confidential Information shall terminate if the same becomes part of the
public domain without breach by the receiving party of its obligations
hereunder. Further, the foregoing obligations shall not apply to information
which is disclosed to the receiving party without obligations of confidentiality
by a third party with the right to do so. For the purposes of this Agreement,
"Confidential Information" means confidential information the receiving party or
any of its related parties or their respective directors, officers, employees or
agents receives in connection with the transactions contemplated herein relating
to the software, products, business and financial plans and information and
trade secrets and other information relating to the business of the disclosing
party and/or its related parties (including, in the case of either Licensor, the
Eurex Exchanges) and their respective related parties, and information subject
to an obligation of confidence to a third party, and "Licensors Confidential
Information" means Confidential Information with respect to which either
Licensor is a disclosing party.
8 Termination
-----------
8.1 If Licensee decides to terminate this Agreement, it shall give written
notice thereof to Licensors, and the license, all sublicenses and all rights
pursuant to this Agreement to use the Programs and any Licensors Confidential
Information shall immediately terminate. Licensee shall, and shall ensure that
all sublicensees and any other parties to which it has provided any portion of
the Programs or Licensors Confidential Information shall, promptly return or
destroy all copies of the Programs (including derivative works based thereupon)
in all forms, partial and complete, whether or not modified or merged into other
programs, other than and for so long as required for archival purposes pursuant
to applicable regulatory requirements. Licensee shall then promptly deliver to
Licensors a written statement certifying its compliance with this requirement.
8.2 Notwithstanding anything to the contrary contained elsewhere in this
Agreement, the following sections of this Agreement shall survive any
termination hereof: Sections 2.3, 2.4, 2.5, 5.2, 5.3, 5.4, 5.6, 5.7, 5.8, 6, 7,
8 and 9. The last sentence of Section 9.6 and Section 9.7 shall survive the
liquidation, dissolution, bankruptcy or reorganization of Ceres.
9 General Provisions
------------------
9.1 All notices given under this Agreement shall become effective only
when actually received at the following addresses:
11
CBOT and The Board of Trade of the City of Chicago
Ceres: 000 Xxxx Xxxxxxx Xxxx., Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000
United States of America
Attention: Xx. Xxxxx X. Xxxxx
Telephone: x0-000-000-0000
Facsimile: x0-000-000-0000
DBAG: Deutsche Borse AG
Xxxxxxxxxxx 0
00000 Xxxxxxxxx xx Xxxx
Xxxxxxx Xxxxxxxx of Germany
Attention: Xx. Xxxxxx Xxxxxxxx
Telephone: x00-00-00000000
Facsimile: x00-00-0000-0000
SWX: Swiss Stock Exchange
Xxxxxxxxxxxxx 00
0000 Xxxxxx
Xxxxxxxxxxx
Attention: Xx. Xxxx Xxxxxxxxx
Telephone: x00-0-000-00-00
Facsimile: x00-0-000-0000
Any party may change its address for the purpose of notices by giving
notice thereof to each other party in accordance with the provisions of this
Section 9.1.
9.2 This Agreement shall be governed by, and construed and enforced in all
respects by the internal laws, and not the conflict of laws rules, of the State
of New York and the United States of America applicable to transactions executed
and performed in the City of New York, other than the United Nations Convention
on the International Sale of Goods.
9.3 Any dispute, controversy or claim arising out of, relating to or in
connection with this Agreement, including, without limitation, any dispute
regarding its validity, or the breach thereof, shall be finally settled by
arbitration in accordance with the arbitration rules of the United Nations
Convention on International Trade Law except as may be modified herein or by
agreement of the parties.
12
9.3.1 The arbitration shall be conducted by three arbitrators. The
arbitrators shall be familiar with business and legal matters similar to those
that are the subject of this Agreement and the subject of the dispute.
Licensors, on the one hand, and Licensee, on the other, shall each appoint one
arbitrator, obtain its appointee's acceptance of such appointment, and deliver
written notification of such appointment and acceptance to the other party
within thirty days after delivery of a formal request for arbitration from any
party to the other. In the event a party fails to appoint an arbitrator or
deliver notification of such appointment to the other party within this time
period, upon request of either party, such arbitrator shall instead be appointed
by a third party to be identified pursuant to the Alliance Agreement (the
"Appointing Official") within thirty days of receiving such request. The two
arbitrators appointed in accordance with the above provisions shall appoint the
third arbitrator, obtain the appointee's acceptance of such appointment and
notify the parties in writing of such appointment and acceptance within thirty
days of their appointment. If the first two appointed arbitrators fail to
appoint a third arbitrator or notify the parties of that appointment within this
time period, then, upon request of either party, the third arbitrator shall be
appointed by the Appointing Official within thirty days of receiving such
request. The third arbitrator shall serve as Chairman of the tribunal. No
arbitrator appointed by the Appointing Official may be a director, officer,
employee, counsel or agent of any party, and without the consent of all of the
parties to the arbitration, may not be a resident of the United States, Germany
or Switzerland.
9.3.2 The place of arbitration shall be London and the proceedings
shall be conducted in the English language.
9.3.3 The award rendered by the arbitrators shall be final and
binding on the parties. Judgment on the award may be entered in any court of
competent jurisdiction.
9.3.4 The parties acknowledge that irreparable damage may occur in
the event of breach of any of the terms of this Agreement. It is accordingly
agreed that, notwithstanding this Section 9.3, the parties do not intend to
deprive any court with jurisdiction of its ability to issue a preliminary
injunction, attachment or other form of provisional remedy in aid of the
arbitration and a request for such provisional remedies by a party to a court
shall not be deemed a waiver of this agreement to arbitrate. In addition to the
authority conferred upon the tribunal by the rules specified above, the tribunal
shall also have the authority to grant provisional and permanent remedies,
including injunctive relief (but excluding termination of the license granted
hereunder).
9.4 The provisions of this Agreement are severable and the
unenforceability of any provision of this Agreement shall not affect the
enforceability of any other provision hereof. In addition, in the event that
any provision of this Agreement (or portion thereof) is determined by a court of
competent jurisdiction, an arbitral award obtained pursuant to Section 9.3 or
any regulatory authority having jurisdiction to be unenforceable as drafted by
virtue of the scope, duration, extent or character of any obligation contained
therein, it is the mutual agreement of the parties that such provision (or
portion thereof) shall be construed in a manner designed to effectuate the
purpose of such provision to the maximum extent enforceable under applicable
law. If such construction is not possible, the parties undertake, to the extent
reasonably possible, to modify such provision in order to implement the purposes
of such provision as fully as possible.
13
9.5 Except as otherwise expressly provided herein, this Agreement and the
Exhibits attached hereto constitute the entire agreement between the parties
with respect to the subject matter hereof, supersede all prior contracts or
agreements with respect to the subject matter hereof, and may only be modified
by a written instrument signed by both parties hereto. This provision shall not
be deemed to affect any rights any party may have against any third party.
9.6 This Agreement shall be binding upon and inure to the benefit of the
parties and their respective successors and permitted assigns. Neither CBOT nor
Ceres shall, without the prior written consent of Licensors (which consent shall
not be withheld in the event of a Reorganization, as defined in the Alliance
Agreement, involving the CBOT or Ceres, and shall not be withheld unreasonably
in the case of a Change of Control, as defined in the Alliance Agreement, which
does not result in termination of the Alliance Agreement) assign any of its
rights or delegate any of its obligations under this Agreement (in whole or in
part). Notwithstanding the foregoing, the CBOT shall not delegate or assign its
obligations under Section 9.7 to any entity other than an entity or entities (if
more than one), which, as a result of a Reorganization involving the CBOT, are
successor(s) to the CBOT as designated contract markets (each, a "CBOT
Successor"). Each CBOT Successor will guarantee the obligations of Licensee in
accordance with Section 9.7 and will, through the execution of this Agreement,
become an additional party hereto with identical rights and obligations to those
of the CBOT hereunder. To the extent that the CBOT remains a designated
contract market after a Reorganization, it will remain a guarantor under Section
9.7. Any purported assignment by Licensee in violation hereof shall be void and
ineffective and shall constitute a material breach of this Agreement.
9.7(a) CBOT hereby unconditionally and irrevocably guarantees to Licensors
the full and timely performance by Ceres of all of Ceres' obligations (the
"Performance Obligations") under or pursuant to this Agreement, including
without limitation, the indemnity obligations hereunder, as and when the same
shall be due to be performed under this Agreement, and all liabilities of Ceres
under this Agreement in the event of any breach by Ceres of any term hereof.
CBOT hereby waives any provision of any statute, regulation or judicial decision
otherwise applicable hereto which restricts or in any way limits the rights of
an obligee against a guarantor or surety following a default or failure of
performance by an obligor with respect to whose obligations the guarantee or
surety is provided.
(b) Licensors may proceed to protect and enforce any or all of their
rights under this Section 9.7 pursuant to Section 9.3, whether for the specific
performance of any covenants or agreements of Ceres under or pursuant to this
Agreement, and shall be entitled to require and enforce the performance by CBOT
of all acts and things required to be performed hereunder by Ceres.
(c) CBOT shall not be entitled to and does hereby waive any and all
defenses now or hereafter available to guarantors, sureties and other secondary
parties at law or in equity, with the exception of any defenses Ceres may have
against Licensors that are available to CBOT.
(d) Licensors shall be entitled to proceed on first demand directly
against CBOT in respect of any Performance Obligation hereunder without any
requirement that it first make any demand against or exhaust any remedies
available to it from Ceres or to take any other steps.
14
9.8 This Agreement may be executed in counterparts, each of which shall
be deemed an original, but all of which, taken together, shall constitute one
and the same instrument.
Licensee: Licensors:
CERES TRADING
LIMITED PARTNERSHIP
BY: Board of Trade of the DEUTSCHE BORSE AG
City of Chicago
BY: /s/ Xxxxxx X. Xxxxxxx BY: /s/ [illegible]
------------------------- -------------------------
ITS President--C.E.O. ITS
------------------------- -------------------------
BY: /s/ Xxxxx X. Xxxxxxx BY: /s/ [illegible]
----------------------------------- -------------------------
ITS Chairman of the Board of Directors ITS
----------------------------------- -------------------------
BOARD OF TRADE OF SWISS STOCK EXCHANGE
THE CITY OF CHICAGO
BY: /s/ Xxxxxx X. Xxxxxxx BY: /s/ [illegible]
------------------------------ -------------------------
ITS President--C.E.O. ITS
------------------------------ -------------------------
BY: /s/ Xxxxx X. Xxxxxxx BY: /s/ [illegible]
----------------------------------- -------------------------
ITS Chairman of the Board of Directors ITS
----------------------------------- -------------------------
Exhibit C
October 1, 1999
Deutsche Borse AG
Xxxxxxxxxxx 0-00
00000 Xxxxxxxxx xx Xxxx
Xxxxxxx
Gentlemen:
Deutsche Borse AG ("DBAG") and the Swiss Stock Exchange (together, the "Eurex
Parties") began using certain software referred to as "Eurex Release 2.0" on
September 28, 1998, in the operation of electronic trading on Eurex Deutschland
and Eurex Zurich (the "Eurex Exchanges"). Pursuant to the Rahmenvertrag between
Xxxxxxxx Consulting GmbH ("Xxxxxxxx GmbH") and Deutsche Borse AG dated August
19, 1999 and the Leistungsschein zum Rahmenvertrag Eurex 3.0 between Xxxxxxxx
GmbH and Deutsche Borse AG dated August 19, 1999 (together, the "August 19
Agreements"), Xxxxxxxx GmbH and Xxxxxxxx Consulting LLP (together with Xxxxxxxx
GmbH, "AC") have created and have agreed to create certain alterations,
adaptations, amendments, enhancements, extensions, modifications, developments
and improvements of Eurex Release 2.0 (the "Modifications"), it being understood
that "Modifications" do not include any elements of Eurex Release 2.0 employed
in connection with the creation of the Modifications. With respect to the
Modifications (and particularly with respect to the Modifications used by the
Eurex Exchanges as of the date hereof), and, for the sole purpose of delineating
the extent of our rights in the Modifications, we hereby confirm as follows:
1. Except as expressly provided below, the intellectual property rights in the
Modifications and all original work product and copies thereof including
tapes, listings and other documentation developed by AC in making the
Modifications shall be deemed to be owned by DBAG. AC, at DBAG's expense,
shall take such steps as are reasonably required by DBAG to vest and
perfect such ownership in DBAG and/or its designees and hereby grants to
DBAG the irrevocable, exclusive and transferable right in the Modifications
and in all data, databases and works belonging thereto in source code and
object code together with all written or machine readable documentation and
in any materials and results pertaining thereto to use the same for all
purposes connected with the business purpose of DBAG and DBAG's group
companies (as defined in Sections 15, 16, 17, 18, 19, 291 and 292 of the
German Stock Corporation Act) in any way and form and without temporal or
geographic limitation.
Deutsche Borse AG
Borsenplatz 7-11
October 1, 1999
Page 2
2. Without limiting the generality of the foregoing, AC acknowledges that it
has irrevocably granted to DBAG the right to copy the Modifications, to
publish and to distribute the Modifications, or any portions thereof, under
any name and to adapt them, to create derivative works of the
Modifications, to translate the Modifications and to publish such
adaptations, derivative works and/or translations of the Modifications, to
transmit or broadcast the Modifications also in any interactive way and to
rent the Modifications to third parties. AC agrees that DBAG is regarded
as the maker of any databases and that it owns all economic exploitation
rights and that DBAG may reproduce, distribute and communicate to the
public any such database in part or in total. DBAG is entitled to grant
sublicenses in all of the above-mentioned rights.
3. As regards the moral rights in the Modifications, AC acknowledges that it
is responsible for assuring that DBAG is entitled to (a) the undisturbed
use of the Modifications and (b) in particular and without limitation
hereto, to exercise for the relevant author the right of dissemination, the
right of recognition of authorship, the right to prevent distortions of the
work, the right to decide whether the work should bear the author's
designation, the right of access to copies of the work and the revocation
rights in the Modifications. If in the context of the undisturbed use of
these rights by DBAG a dispute arises between an author on the one side and
DBAG on the other side, then AC shall make sure that the author will
exercise its moral rights as directed by DBAG.
4. AC acknowledges that it is precluded from developing for itself or for
others materials which are derived from those produced in creating the
Modifications. However, subject to the confidentiality obligations of AC
to the Eurex Parties, this restriction will not preclude AC from using
general concepts, know-how and ideas used or developed in the course of
providing services under the August 19 Agreements.
5. DBAG understands that the tools, methodologies, techniques, and related
information used by AC to create the Modifications are and shall remain the
property of AC. Except as specified by AC in the attachment hereto, AC has
not incorporated any third party technology (defined to include any AC
proprietary technology) into the Modifications or otherwise used any third
party technology in the creation or implementation of the Modifications in
a manner that would infringe upon any proprietary interests of a third
party or require a license from a third party in order to lawfully use,
copy, support, modify or distribute the Modifications or any component
thereof.
Deutsche Borse AG
Borsenplatz 7-11
October 1, 1999
Page 3
6. This letter is governed by German substantive law, excluding the United
Nations Convention on the International Sale of Goods.
Very truly yours,
Xxxxxxxx Consulting LLP
By: By
------------------------------ -----------------------------
------------------------------ -----------------------------
Xxxxxxxx Consulting
Unternehmensberatung GmbH
By: By
------------------------------ -----------------------------
------------------------------ -----------------------------
Exhibit D
[date]
Ceres Trading Limited Partnership
000 Xxxx Xxxxxxx Xxxxxxxxx
Xxxxx 000-X
Xxxxxxx, Xxxxxxxx 00000 XXX
Gentlemen:
We refer to the Software License Agreement dated October 1, 1999, between
Deutsche Borse AG, the Swiss Stock Exchange, Ceres Trading Limited Partnership
and the Board of Trade of the City of Chicago ("Agreement"). Capitalized terms
used in this letter shall be defined as they are in the Agreement. Pursuant to
Section 7.1 of the Agreement, DBAG hereby assigns co-ownership rights, title
and interest in and to the Release 3.0 Modifications to Ceres as follows:
1. Except as expressly provided below, Licensee and each of the Licensors will
each own the intellectual property rights in the Release 3.0 Modifications
and all original work product and copies thereof including tapes, listings
and other documentation developed by or for DBAG in making the Release 3.0
Modifications. DBAG, at Licensee's expense, shall take such steps as are
reasonably required by Licensee to vest and perfect such rights in Licensee
or its designees and DBAG hereby grants to Licensee the irrevocable, non-
exclusive and transferable right in the Release 3.0 Modifications and in
all data, databases and works belonging thereto in source code and object
code together with all written or machine readable documentation and in any
materials and results pertaining thereto to use the same for all purposes
connected with the business purpose of Licensee and Licensee's group
companies (as defined in Sections 15, 16, 17, 18, 19, 291 and 292 of the
German Stock Corporation Act) in any way and form and without temporal or
geographic limitation.
2. Without limiting the generality of the foregoing, DBAG acknowledges that it
has irrevocably granted to Licensee the co-ownership right to copy the
Release 3.0 Modifications, to publish and to distribute the Release 3.0
Modifications, or any portions thereof, under any name and to adapt them,
to create derivative works of the Release 3.0 Modifications, to translate
the Release 3.0 Modifications and to publish such adaptations, derivative
works and/or translations of the Release 3.0 Modifications, to transmit or
broadcast the Release 3.0 Modifications also in any interactive way and to
rent the Release 3.0 Modifications to third parties. DBAG agrees that
Licensee is jointly regarded as the maker of any databases and that
Licensee co-owns all economic exploitation rights and that each of them
separately may reproduce, distribute and communicate to the public any such
database in part or in total. Licensee is entitled to grant sublicenses in
all of the above-mentioned rights..
3. As regards the moral rights in the Release 3.0 Modifications, DBAG
acknowledges that it is responsible for assuring that Licensee is entitled
to (a) the undisturbed use of the
Ceres Trading Limited Partnership
[date]
Page Two
Release 3.0 Modifications and (b) in particular and without limitation
hereto, to exercise (on a co-ownership basis) for the relevant author the
right of dissemination, the right of recognition of authorship, the right
to prevent distortions of the work, the right to decide whether the work
should bear the author's designation, the right of access to copies of the
work and the revocation rights in the Release 3.0 Modifications. If in the
context of the undisturbed use of these rights by Licensee a dispute arises
between an author on the one side and Licensee on the other side, then DBAG
will instruct AC to make sure that the author will exercise its moral
rights as directed by Licensee.
4. Nothing herein will preclude either of the Licensors or Licensee from
developing for itself or for others materials which are derived from those
produced in creating the Release 3.0 Modifications.
5. Licensee understands that the tools, methodologies, techniques, and related
information used by Xxxxxxxx Consulting Unternehmensberatung GmbH and
Xxxxxxxx Consulting LLP (together "AC") to create the Release 3.0
Modifications are and shall remain the property of AC. Except as specified
in the attachment hereto, no third party technology (defined to include any
AC proprietary technology) has been incorporated into the Release 3.0
Modifications or otherwise used in the creation or implementation of the
Release 3.0 Modifications in a manner that would infringe upon any
proprietary interests of a third party or require a license from a third
party in order to lawfully use, copy, support, modify or distribute the
Release 3.0 Modifications or any component thereof.
6. Nothing herein is intended to grant Licensee any rights in the Programs,
it being understood that Licensee's rights therein are governed by the
Agreement.
7. Each of the rights described above may be exploited by either of the
Licensors or Licensee in any manner it believes appropriate without
accounting to any other party; provided that, notwithstanding any other
provision of this letter, Licensee's right to use or otherwise exploit the
"distributed matching algorithm" component of the Release 3.0 Modifications
is subject to Licensee's payment to DBAG of [**], in accordance with
paragraph (2) of Exhibit E of the Agreement. Furthermore, this Assignment
shall not affect the payment obligation of Licensee under paragraph (3) of
Exhibit E of the Agreement.
Ceres Trading Limited Partnership
[date]
Page Three
8. This letter is governed by German substantive law, excluding the United
Nations Convention on the International Sale of Goods.
Very truly yours,
Deutsche Borse AG
By: By
------------------------------ -----------------------------
------------------------------ -----------------------------
Exhibit E
Payments In Respect of the Release 3.0 Modifications
The payments described below represent Ceres' reimbursement of certain research
and development costs incurred by DBAG in connection with the Release 3.0
Modifications after January 29, 1999.
(1) Ceres shall pay eight million (8,000,000) Euros to DBAG in exchange for the
Assignment and for related training materials according to the following
schedule: (a) On or before October 15, 1999, Ceres shall pay [**] to DBAG;
(b) On or before December 15, 1999, Ceres shall pay [**] to DBAG; and (c)
As of December 31, 1999, DBAG shall invoice Ceres for the final three
million (3,000,000) Euros, and such invoice shall be paid in full by Ceres
no later than May 31, 2000.
(2) Ceres may not use or otherwise exploit the "distributed matching algorithm"
component of the Release 3.0 Modifications unless and until it has paid
[**] to DBAG. Following such payment, Ceres will have all Rights with
respect to the "distributed matching algorithm" component of the Release
3.0 Modifications.
(3) Ceres shall pay three million (3,000,000) Euros to DBAG thirty (30) days
after daily volume in CBOT contracts traded electronically on the Eurex
platform exceeds 200,000 for five consecutive trading days. Notwithstanding
the foregoing, DBAG will invoice Ceres for the three million Euro amount
described in the preceding sentence as of December 31, 2000, and such
invoice shall be paid in full by Ceres no later than June 30, 2001. This
payment will reimburse DBAG for certain costs incurred in connection with
the "system limits" component of the Release 3.0 Modifications.
(4) The payments described in each of paragraphs (1), (2) and (3) are separate
and distinct, and a payment under one paragraph will not be counted as a
payment under any other paragraph.
