LICENSE AGREEMENT
THIS Agreement is entered into between ACI WORLDWIDE INC., a Nebraska
corporation, having a principal office at 000 Xxxxx 000xx Xxxxxx, Xxxxx, XX
00000-0000 ("ACI"), and XXXXXX, INC. a Delaware corporation, having a principal
xxxxxx xx Xxx Xxxxxxxx Xxxxxx, Xxxxxxxxxx, XX 000000 ("Xxxxxx").
WHEREAS, Xxxxxx has developed or acquired certain Software Products more
specifically described below; and
WHEREAS, ACI has been distributing certain of the Software Products under a
Non-Exclusive License Agreement dated April 28, 1998, as amended (the "1998
Agreement") under which, among other things ACI has relied upon Xxxxxx to
provide support, maintenance and enhancements for the Software Products; and
WHEREAS, ACI (a) desires to obtain the right to use, modify, market and
re-license said Software Products and obtain the source code and other related
documentation to be able to directly provide warranty, maintenance and support
services to ACI's customers and enhance the Software Products and (b) shall be
fully responsible and liable for the provision of such services to its
licensees; and
WHEREAS, in connection with the license of the Software Products as herein
provided, ACI desires (a) to employ certain existing employees of Xxxxxx, and
(b) to be assigned by Xxxxxx a certain existing customer license of the Software
Products.
NOW, THEREFORE, the parties hereto agree as follows:
1.0 DEFINITIONS (Additional capitalized terms are defined in the Attachments)
1.1 "Affiliate" means any corporation that (a) directly or indirectly controls,
is controlled by, or is under common control with the party. ACI shall promptly
notify Xxxxxx of any Affiliate to which ACI gives a copy of the source code for
the Software Programs. The current list is set forth on Attachment F. Control
means the ownership of more than 50% of the voting securities of an entity. A
party and any and all of its Affiliates exercising any rights under this
Agreement shall be jointly, severally responsible and liable for any and all of
the duties, obligations and liabilities under this Agreement of such party or
Affiliates. If any corporation which has become an Affiliate under this
Agreement ceases to directly or indirectly control, be controlled by or be under
common control with such party, then, immediately thereupon, such corporation
shall cease to be able to exercise any of the rights of an Affiliate under this
Agreement but shall nevertheless remain fully responsible and liable.
1.2 "Agreement" means this License Agreement and the attachments to this
Agreement (the "Attachments").
1.3 "Documentation" means the technical and user manuals provided by Xxxxxx with
the Software Programs and such other related written materials including any
training materials, programmers notes, or other similar material.
1.4 "Software Products" means the Software Programs and Documentation, as well
as all copies and translations thereof. Xxxxxx shall delivery the Software
Products no later than ten days after the date of this Agreement.
1.5 "Software Programs" means the computer software modules in both source code
and machine-readable object code specified in Attachment A
2.0 LICENSE
2.1 Xxxxxx hereby grants to ACI a world-wide, perpetual (except as provided in
article 9.0), non-revocable (except as provided in article 9.0),
non-transferable, non-exclusive license (the "License") to copy, use, modify,
enhance, market, sub-license (directly or through its customary and usual
distribution channels for its other products), maintain and support the Software
Products, all subject to the terms and conditions of this Agreement and the
Attachments. The rights granted to ACI under the License are restricted to, and
may only be exercised with respect to, applications related to fraud detection
(including money laundering detection) in electronic payments (the "Field of
Use"). Any ACI Affiliate may exercise any of ACI's rights hereunder.
2.2 Any copy or other reproduction shall be automatically deemed an integral
part of the Software Products licensed hereunder and owned exclusively by
Xxxxxx.
2.3 ACI may brand, customize and extend the Software Products as well as use the
Software Programs as a development platform to develop new functions and new
end-user product or application (the "New Technology"), provided that all copies
of the Software Products or any other software incorporating any part of the
Software Products include all Xxxxxx propriety property notices; and further
provided that all such new functions and new applications are within the Field
of Use. New Technology does not include a work which merely interfaces with a
Software Program. All New Technology shall be owned exclusively by Xxxxxx;
provided that during the term of this Agreement ACI shall not be required to
disclose to Xxxxxx the details of any such New Technology. All New Technology
shall, except as expressly set forth in this Agreement, be deemed licensed by
Xxxxxx to ACI under the License as if it were part of the Software Products.
2.4 ACI shall be limited to distributing (sub-licensing) the Software Programs
in object-code format. Except pursuant to the escrow terms in the customer's
Software Agreement (which terms for the Software Programs shall be no different
from ACI's standard escrow terms for its other software which it licenses to
customers), ACI shall be prohibited from (i) sub-licensing or otherwise
distributing, transferring or disclosing the Software Programs source code or
its proprietary design to any third-party and (ii) licensing the Software
Programs to any third-party for use as a development platform. ACI shall
prohibit all Software Program licensees from translating, reverse engineering,
decompiling or disassembling the Software Program object code or otherwise
attempting to derive its source code or proprietary design therefrom. ACI or its
distributors shall sub-license the Software Products under the terms of the
license agreement set forth on Attachment C. ACI may modify or replace the
license agreement at any time, in whole or in part, provided no modification or
replacement will diminish protection of Nestor's confidentiality or intellectual
property rights or increase Nestor's potential liability. ACI will effectively
enforce against all customers that obtained the Software Products from ACI the
provisions of the Software Agreement that affect Nestor's confidentiality or
intellectual property rights in the Products. If ACI learns that any customer
has breached any such provision, ACI will immediately notify Xxxxxx and take, at
ACI's expense, all steps that may be available to enforce the Software
Agreement, including availing itself of actions for seizure or injunctive
relief. If ACI fails to take these steps in a timely and adequate manner, Xxxxxx
may take them in its own or ACI's name and at ACI's expense.
3.0 CHARGES
3.1 ACI shall pay to Xxxxxx the license fees for the Software Products, as
specified in Attachment A. All payments shall be remitted to Xxxxxx in U.S.
dollars. ACI Affiliates sublicensing the Software Products may pay the license
fees directly to Xxxxxx.
3.2 ACI shall be liable and responsible for the reporting and payment of all
taxes and duties (except income taxes accrued against Xxxxxx) arising from this
Agreement and shall indemnify and hold Xxxxxx harmless from any failure of ACI
to do so.
3.3 ACI will maintain accurate records of its activities under this Agreement,
including without limitation (i) a current list of customers of the Software
Products, (ii) copies of all Software Agreements executed with customers, (iii)
all revenue received by ACI arising out of or in connection with the Software
Products and (iv) any other records reasonably necessary or desirable to
demonstrate ACI's compliance with the terms and conditions of this Agreement.
Such records will be retained by ACI and made available no more than once
annually to Xxxxxx for examination or audit at the request and at the expense of
Xxxxxx during reasonable business hours at the offices of Licensee set forth in
the preamble to this Agreement for a period of at least five (5) years after the
date of the transactions to which the records relate. Substantially
simultaneously with any payment required by this Agreement to be made by ACI to
Xxxxxx ACI shall deliver to Xxxxxx such information as is reasonably necessary
for Xxxxxx to determine the basis for the calculation of such payment. ACI shall
reimburse Xxxxxx for the costs of such audit if the audit determines that the
amounts paid to Xxxxxx are understated by more than five percent (5%). Within 30
days after the end of each 3-month period of this Agreement, ACI will provide
Xxxxxx with a quarterly report that shows the actual sub-licenses obtained
during the quarter. Copies of the Software Agreements relating to such payments
will be provided promptly upon request.
4.0 WARRANTY
4.1 Xxxxxx makes no representations or warranties as to the performance of the
Software Programs.
4.2 Xxxxxx represents and warrants that it owns or has the right to license the
Software Products set forth in the Attachments. The foregoing sentence does not
include, and Xxxxxx hereby disclaims any representation or warranty regarding
any claim, right or interest of HNC Software, Inc., or any parent, subsidiary,
affiliate or successor in interest of or to HNC Software, Inc. (collectively
"HNC").
4.3 THE WARRANTIES, CONDITIONS, REPRESENTATIONS, GUARANTEES, AND INDEMNITIES, AS
SET FORTH IN THIS ARTICLE 4.0 AND ARTICLE 5.0 ARE THE EXCLUSIVE REMEDY OF ACI
AND LIABILITY OF XXXXXX AND IN LIEU OF ALL OTHER WARRANTIES, CONDITIONS,
REPRESENTATIONS, GUARANTEES, AND INDEMNITIES, WHETHER EXPRESS OR IMPLIED,
ARISING BY LAW, CUSTOM, PRIOR ORAL OR WRITTEN STATEMENTS, OR OTHERWISE
(INCLUDING, BUT NOT LIMITED TO, ANY WARRANTY OF FITNESS FOR PARTICULAR PURPOSES
OR MERCHANTABILITY). EXCEPT AS SPECIFICALLY PROVIDED IN SECTION 4.2 and SECTION
5.2, THE SOFTWARE PRODUCTS ARE NOT ERROR-FREE AND ARE BEING PROVIDED "AS IS"
WITHOUT WARRANTY OF ANY KIND AND LICENSOR HEREBY DISCLAIMS ALL OTHER WARRANTIES,
WHETHER EXPRESS OR IMPLIED, ORAL OR WRITTEN, WITH RESPECT TO THE SOFTWARE
PRODUCTS INCLUDING, WITHOUT LIMITATION, ALL IMPLIED WARRANTIES OF TITLE,
NON-INFRINGEMENT, NON-INTERFERENCE WITH ENJOYMENT, MERCHANTABILITY OR FITNESS
FOR ANY PARTICULAR PURPOSE AND ALL WARRANTIES IMPLIED FROM ANY COURSE OF DEALING
OR USAGE OF TRADE.
4.4 Each party does hereby warrant that this Agreement has been duly and validly
authorized and executed by it and is its valid and binding obligation.
5.0 INFRINGEMENT
5.1 If a third party (other than HNC) makes a claim or brings an action against
ACI claiming that the Software Products (except for any New Technology) infringe
a patent or copyright or trade secret, Xxxxxx will defend ACI and will pay the
damages and costs finally awarded against ACI, but only if (i) ACI notifies
Xxxxxx promptly after the claim is asserted or threatened and sufficiently
before any answer or other response therein is due to allow Xxxxxx reasonable
time to prepare such response or answer, (ii) Xxxxxx has full control over the
defense, settlement, or other resolution of the claim, and (iii) at Nestor's
request and expense, ACI assists Xxxxxx in defending, settling, or otherwise
resolving the claim.
5.2 If Xxxxxx receives notice of an infringement claim or otherwise concludes
that the Software Products may infringe the proprietary rights of a third party,
ACI will allow Xxxxxx, at Xxxxxx'x option and expense, to (i) procure the right
for ACI to continue using, modifying, marketing and re-licensing the Software
Products, (ii) modify or replace the Software Products without adversely
affecting their operating specifications or (iii) reimburse to ACI 15% of the
amounts ACI would have to pay its customers under subsection 5.2 of Attachment
C.
5.3 Xxxxxx will have no obligation to ACI under Sections 5.1 and 5.2 above if an
infringement claim based in whole or in part on (i) a modification of the
Software Products made by ACI, (ii) the combination of the Software Products
with an item not supplied by Xxxxxx, (iii) use of the Software Products in a
manner not intended by the Documentation, or (iv) Nestor's compliance with ACI's
design, specifications, or instructions.
5.4 THE RIGHTS GRANTED TO ACI UNDER THIS SECTION 5.0 SHALL BE ACI'S SOLE AND
EXCLUSIVE REMEDY FOR ANY ALLEGED INFRINGEMENT BY XXXXXX HEREUNDER OF ANY PATENT,
COPYRIGHT, TRADE SECRET OR OTHER PROPRIETARY RIGHT OR FOR ANY BREACH OF THE
WARRANTY GIVEN IN ARTICLE 4.0.
5.5 If a third party makes a claim or brings an action against Xxxxxx claiming
that the New Technology infringes a patent or copyright or trade secret, ACI
will defend Xxxxxx and will pay the damages and costs finally awarded against
Xxxxxx, but only if (i) Xxxxxx notifies ACI promptly after the claim is asserted
or threatened and sufficiently before any answer or other response therein is
due to allow ACI reasonable time to prepare such response or answer, (ii) ACI
has full control over the defense, settlement, or other resolution of the claim,
and (iii) at ACI's request and expense, Xxxxxx assists ACI in defending,
settling, or otherwise resolving the claim.
5.6 ACI will have no obligation to Xxxxxx under Sections 5.1 and 5.2 above if an
infringement claim based in whole or in part on (i) a modification of the New
Technology made by Xxxxxx, (ii) the combination of the New Technology with an
item not supplied by ACI, (iii) use of the New Technology in a manner not
intended by the its documentation, or (iv) ACI's compliance with Nestor's
design, specifications, or instructions.
5.7 THE RIGHTS GRANTED TO XXXXXX UNDER THIS SECTION 5.0 SHALL BE NESTOR'S SOLE
AND EXCLUSIVE REMEDY FOR ANY ALLEGED INFRINGEMENT BY ACI HEREUNDER OF ANY
PATENT, COPYRIGHT, TRADE SECRET OR OTHER PROPRIETARY RIGHT.
5.8 With respect to the indemnity obligations set forth in subsections 5.1 and
5.5, if the alleged infringement claim involves more than an allegation that
either the Software Products or the New Technology is solely responsible for the
damages or other remedies sought, the obligations of indemnity shall be
proportioned between Xxxxxx and ACI in accordance with the amount of fault each
of them bears for the claim in total.
5.9 Except as specifically set forth herein, Xxxxxx assumes no obligation or
liability for, and ACI will indemnify, defend and hold Xxxxxx harmless from any
claim or action arising from or relating to (i) the use by ACI or its
distributors or customers of the Software Products or any other software
containing any part of the Software Products, (ii) any warranty made by ACI,
either expressly, by implication or otherwise.
6.0 LIMITATION OF LIABILITY
6.1 EXCEPT AS SPECIFICALLY SET FORTH IN ARTICLE 5.0 OR FOR BREACHES OF ARTICLES,
7.0 AND 8.0, NEITHER PARTY SHALL BE RESPONSIBLE FOR ANY CONSEQUENTIAL, INDIRECT,
INCIDENTAL, SPECIAL, OR PUNITIVE DAMAGES, (INCLUDING CLAIMS FOR LOSS,
INTERRUPTION IN USE OR UNAVAILABILITY OF DATA, LOSS OF GOODWILL, LOSS OF
PROFITS, STOPPAGE OF OTHER WORK OR IMPAIRMENT OF OTHER ASSETS) ARISING OUT OF
BREACH OR FAILURE OF EXPRESS OR IMPLIED WARRANTY, BREACH OF CONTRACT, BREACH OF
WARRANTY, NEGLIGENCE, OR STRICT LIABILITY IN TORT, EXCEPT ONLY IN THE CASE OF
PERSONAL INJURY OR PROPERTY DAMAGE WHERE THE LAW REQUIRES SUCH LIABILITY, EVEN
IF THE PARTY HAS BEEN INFORMED, IS AWARE, OR SHOULD BE OR SHOULD HAVE BEEN
AWARE, OF THE POSSIBILITY OF SUCH DAMAGES
6.2. THE SOLE REMEDY FOR ANY DISK OR OTHER MACHINE READABLE MATERIAL SUPPLIED BY
XXXXXX WHICH IS PHYSICALLY DEFECTIVE SHALL BE REPLACEMENT OF SUCH DISK OR
MATERIAL. EXCEPT AS SPECIFICALLY SET FORTH IN ARTICLE 5.0 OR FOR BREACHES OF
ARTICLES 2.0, 4.0, 7.0 AND 8.0, IN NO EVENT WILL EITHER PARTY BE LIABLE IN
DAMAGES OR OTHERWISE TO THE OTHER PARTY IN EXCESS OF THE ROYALTIES PAID OR TO BE
PAID UNDER THIS AGREEMENT.
7.0 CONFIDENTIALITY
7.1 "Confidential Information" means, as belonging to either party, (i) such
party's proprietary or confidential information which is a) designated in
writing as such, or b) that by nature of the circumstances surrounding the
disclosures in good faith ought to be treated as proprietary or confidential,
and, as belonging to Xxxxxx, (ii) all Software Products, and any software or
other material containing any part of a Software Product and all New Technology.
The presence of a copyright notice on any Confidential Information will not
constitute publication or otherwise impair the confidential nature thereof.
7.2 Each party shall use the other party's Confidential Information only for the
purposes as set forth in the Agreement and Attachments and shall disclose the
Confidential Information only as specifically authorized in Section 7.3 below.
Neither party shall remove any confidentiality, copyright, or similar notices or
legends from the Confidential Information and shall implement such safeguards
and controls as may be necessary or appropriate to protect against unauthorized
uses or disclosures of the Confidential Information.
7.3 Each party may disclose the Confidential Information only to its or its
Affiliates' employees, officers, directors, consultants, agents or customers to
the extent that such disclosures are required to exercise its rights and perform
its obligations under the Agreement and Attachments. Each party shall take such
steps as may be reasonably requested by the other or otherwise required to
ensure that the aforementioned persons acknowledge and comply with the use and
confidentiality restrictions contemplated under this Agreement. Each party shall
be responsible for breach of the obligations set forth in this Article 7.0 by
its or its Affiliates' employees, officers, directors, consultants, agents or
customers.
7.4 Notwithstanding anything contained in Section 7.0, unless otherwise agreed
to the contrary in writing prior to its disclosure, either party is free to use
any "residuals" resulting from access to the other party's Confidential
Information. The term "residuals" means general information in non-tangible
form, which may be retained by persons who have had access to the Confidential
Information without conscious attempt to memorize this information and without
using written materials to refresh recollection, including ideas, concepts,
know-how or techniques contained therein. Any new software products developed
from the residuals shall be considered New Technology. Neither party shall have
an obligation to limit or restrict the assignment of such persons.
7.5 Neither party will have an obligation to maintain the confidentiality of any
data or information which (i) was in such party's lawful possession prior to the
disclosure thereof by the other party, (ii) is later lawfully made available to
such party by a third party having no obligation of secrecy to the other party,
(iii) is independently developed by such party, (iv) is, or later becomes,
available to the public through no fault of such party, or (v) is required to be
disclosed by court order; provided in the case of (v) that the party which is
the subject of the order promptly give notice thereof to the other party and
take no steps to interfere with any efforts such other party may take to quash
such order.
7.6 The Software Products, including without limitation, the New Technology, and
the Software Product's design, structure, organization and source code are
valuable trade secrets of Xxxxxx. ACI shall institute all necessary procedures
and controls to protect the Software Programs including but not limited to: (i)
maintain a controlled, secure environment for the storage and use of the source
code; and (ii) inform any employee that is granted access to all or any portion
of the source code of the importance of preserving the confidentiality and trade
secret status of the source code.
8.0 OWNERSHIP
8.1 Each party acknowledges that the Confidential Information of the other
party, as well as all related trade marks, logos, other names or markings
identifying the Confidential Information, and trade secrets, copyrights,
patents, or other proprietary rights of the other party, are and shall remain
the exclusive property of the other party. Each party agrees not to take any
action that interferes with said proprietary rights of the other party or
attempt to copyright or patent any portion of said other party's property or
register or attempt to register any trademark, service xxxx, trade name, or
company name which is identical or confusingly similar to said marks, names, or
markings.
8.2 Except for the limited rights expressly granted in this Agreement, Xxxxxx
does not by this Agreement grant ACI any right, title or ownership interest in
and to the Software Products or in any related patents, trademarks, copyrights
or proprietary or trade secret rights, whether by implication, estoppel or
otherwise. Xxxxxx shall at all times retain full and exclusive right, title and
ownership interest in and to the Software Products. Xxxxxx shall retain sole and
exclusive ownership worldwide of all associated right, title and interest in the
Software Products, even if suggestions, comments, and/or ideas made by ACI are
incorporated into the Software Products.
8.3 All copies of the Software Products are the property of XXXXXX. All title
and copyrights in and to the Software Products and any copies of the Software
Products are owned by Xxxxxx. ACI shall preserve all copyrights and trademarks
in the Software Products. Xxxxxx reserves unpublished-rights under the copyright
laws of the United States. PRISM is a trademark of Xxxxxx. ACI may use such
trademark only to identify the Software Products, in accordance with accepted
trademark practice, including identification of trademark owner's name. Such use
of any trademark does not give ACI any rights of ownership in that trademark.
8.4 In the event that either party files a patent application or obtains an
issued patent (including without limitation all domestic and international,
continuations, divisions, continuations-in-part, re-examinations and reissue
applications and any parent applications therefor) relating to or arising out of
the Software Products or the New Technology ("Patent Rights"), then (a) in the
case of ACI, ACI agrees to grant and does hereby grant to Xxxxxx an
unrestricted, non-exclusive, transferable, irrevocable, royalty-free right and
license to use, sell or sublicense such Patent Rights (in whole or in part), and
(b) in the case of Xxxxxx, Xxxxxx agrees to grant and does hereby grant to ACI,
a nonexclusive, assignable in accordance with the terms of the Agreement,
royalty-free right and license to use or sublicense such Patent Rights (in whole
or in part) during the term of the Agreement solely in accordance with the scope
of the License granted to ACI under Section 2 of this Agreement, but only to the
extent that the absence of such license would interfere with the License granted
to ACI under Section 2 of this Agreement.
9.0 TERM AND TERMINATION
9.1 (a) Subject to section 9.2 below this Agreement is perpetual.
9.2 (1) Either party may immediately terminate this Agreement, or any and all
Attachments, without judicial notice or resolution, by giving written notice to
the other party, if the other party (i) becomes insolvent or assigns all, or
substantially all, of its assets or business for the benefit of creditors, (ii)
resolves to wind up business, dissolve, or liquidate, (iii) otherwise ceases to
conduct business or commits any other act of bankruptcy.
(2) Xxxxxx may immediately terminate this Agreement if a) ACI commits a material
breach of any provision of this Agreement or the Attachments related to the use,
disclosure or sublicensing of the Software Products (except for failure to pay
royalties), or a material breach of Article 7.0 or subsection 11.12 (except
subsections (1), (5), (6), (7) and (8)) (a "Tier 1" breach) and b) fails to cure
such breach within one hundred twenty (120) days after Xxxxxx demands such cure
and c) Xxxxxx has once previously been required to institute an action to
collect damages caused by, or restrain the same or similar breach and ACI did
not prevail in that action.
(3) Xxxxxx may immediately terminate this Agreement if a) ACI commits a material
breach of any other provision of this Agreement or the Attachments (a "Tier 2"
breach) and b) fails to cure such breach within one hundred twenty (120) days
after Xxxxxx demands such cure and c) Xxxxxx has twice previously been required
to institute an action to collect damages caused by, or restrain the same or
similar breach and ACI did not prevail in either action.
Xxxxxx may not institute an action for either a Tier 1 or Tier 2 breach if said
breach is cured by ACI within sixty (60) days after Xxxxxx demands such cure.
9.3 Upon the termination of this Agreement by either party, ACI shall (i) cease
all marketing and sublicensing activities under the Agreement, (b) within ten
(10) calendar days pay all amounts due and outstanding hereunder and (c) deliver
to Xxxxxx or its designee all copies of the Software Products within ACI's
possession, custody or control (together with a certificate of an officer of ACI
certifying such delivery); provided ACI may retain sufficient copies of the
Software Products to be able to support, maintain and enhance the Software
Products that have been sublicensed to customer prior to the termination until
such time as such sublicenses shall expire or terminate.
Notwithstanding any termination of this Agreement, the License and any
sublicenses shall continue in effect with respect to any sublicenses granted by
ACI prior to termination; and ACI shall remain liable to Xxxxxx for royalties
accruing with respect thereto. Termination of this Agreement and the License
shall not release ACI from any of its obligations, or liabilities accrued, or
incurred under this Agreement, or rescind or give rise to any right to rescind
any payment made or other consideration given hereunder.
9.4 The following Sections shall survive termination of the Agreement: Section
5.0, Infringement; Section 6.0, Limitation of Liability; Section 7.0,
Confidentiality; Section 8.0, Ownership; Section 9.0, Term and Termination and
Section 11.0, Miscellaneous.
10.0 EXCLUSIVITY
Xxxxxx agrees, for a period of one year, not to grant source code rights similar
to the source code rights granted in this Agreement to an entity, or such
entity's successor through acquisition or merger, listed on Attachment D.
11.0 MISCELLANEOUS
11.1 Except as required by law, ACI and Xxxxxx agree that neither party will
disclose the existence or terms of this Agreement without the other party's
consent.
11.2 If a court of competent jurisdiction holds any provision of this Agreement
to be illegal or invalid, the provision shall be automatically severed from this
Agreement. Any such holding shall not affect the legality or validity of the
remaining provisions of this Agreement.
11.3 If either party commences a legal action against the other party in
connection with this Agreement, the losing party shall reimburse the prevailing
party for the reasonable attorneys' fees and expenses which it may incur in such
action, whether or not such action is prosecuted to a final and non-appealable
judgment.
11.4 If either party fails to give notice or enforce any right under this
Agreement, such failure shall not constitute a waiver of such right, unless such
waiver is reduced to writing and signed by the waiving party. If a party waives
its right in writing, such waiver shall not constitute a waiver of any other
right or of any subsequent violation of the same right that has been waived.
11.5 The parties to this Agreement shall be excused for failures or delays in
performing an obligation under this Agreement and the Attachments if such
failure or delay is caused by force majeure, including, but not limited to,
fortuitous event and acts of God; wars, riots and insurrections; laws, decrees,
ordinances and governmental regulations; strikes and lockouts; transportation
stoppages or slowdowns; floods, fires and explosions; or the inability to obtain
necessary export or import licenses or permits.
11.6 This Agreement shall not be construed to constitute any party as an
employee, attorney-in-fact, legal representative or business partner of the
other parties.
11.7 Neither party may assign, pledge or otherwise transfer this Agreement or
any right or obligations hereunder without the prior written authorization of
the other party; provided either party may assign this Agreement without the
prior written authorization of the other party to an Affiliate of such party or
to any entity which acquires all or substantially all of the stock or assets of
such party provided that such assignee agrees in writing to be bound by this
Agreement.
11.8 All notices required or permitted under this Agreement shall be given in
writing and shall be personally delivered or sent by certified mail, postage
prepaid, addressed as follows:
If to XXXXXX:
Xxxxxx, Inc.
Xxx Xxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
XXX
Attn: President
If to ACI:
ACI Worldwide Inc.
000 Xxxxx 000xx Xxxxxx
Xxxxx, Xxxxxxxx 00000-0000
XXX
Attn: Contracts Administration
11.8.1 The parties may change their address from time to time upon written
notice to the other party.
11.8.2 Any notice shall be deemed to have been effective when delivered.
11.9 Except as otherwise provided above, this Agreement may be amended only by
the consent of both parties expressed in writing and signed by a duly authorized
representative of each party.
11.10 This Agreement and the Attachments will be governed by and interpreted
under the laws of the State of New York , without regard to any provisions of
New York law which would require the application of the substantive law of
another jurisdiction. ACI and Xxxxxx also exclude the United Nations Convention
on Contracts for the International Sale of Goods, if applicable.
11.11 Any dispute arising out of or relating to this Agreement, the License, a
breach thereof or ACI's use of the Software Products shall be settled by
arbitration before three neutral arbitrators (selected from a panel of attorneys
having experience with and knowledge of computers and the computer business) in
Chicago, Illinois and administered by the American Arbitration Association in
accordance with its Commercial Arbitration Rules. Any provisional or equitable
remedy which would be available from a court of law shall be available from the
arbitrators to the Parties. Judgment upon the award of the arbitrators may be
enforced in any court having jurisdiction thereof. The Parties hereby consent to
the non-exclusive jurisdiction of the courts of the Commonwealth of
Massachusetts or the State of Nebraska or to any Federal Court located within
the Commonwealth of Massachusetts or the Sate of Nebraska for any action (i) to
compel arbitration, (ii) to enforce the award of the arbitrators or (iii) at any
time prior to the qualification and appointment of the arbitrators, for
temporary, interim or provisional equitable remedies and to service of process
in any such action by registered mail, return receipt requested, or by any other
means provided by law.
11.12 ACI acknowledges that the Software Products and any technical information
relating thereto is subject to United States export controls, and that a
specific license may be required prior to delivery thereof to the country of
installation. Xxxxxx will, at ACI's expense, provide reasonable assistance as
required by ACI in securing any required export license. Xxxxxx shall have no
liability to ACI in the event the United States declines to issue the necessary
export license. ACI will not export, re-export, divert, transfer, or disclose,
directly or indirectly, any Software Products or related technical information,
documents, or materials, or any direct product thereof, from the country of
delivery or to any person who is not a national or resident thereof, without
obtaining the required re-exportation license from the United States government.
ACI further understands and agrees that:
(1) it does not intend to and will not use, market, sublicense, disseminate or
transfer in any way the Software Products in violation of any applicable law,
rule or regulation of the United States, or any State of the United States or
any foreign country of applicable jurisdiction;
(2) it will not accept any purchase order or contract (including without
limitation any United States or foreign government contract) that by its terms
or by the operation of law will abridge or otherwise diminish Nestor's rights in
and/or to the Software Products (and that all such orders or contracts with any
government or governmental agency will include "restricted" or "limited" rights
provisions or be on no less favorable terms to Xxxxxx);
(3) this Agreement is a license agreement only, not an agreement for the sale or
assignment of the Software Products, and neither ACI nor any sublicensee obtains
any rights in or to the Software Products other than the limited rights granted
by the License;
(4) it will not infringe the copyright or other proprietary rights in the
Software Products nor permit others to do so;
(5) it will be solely responsible and liable for all necessary or desirable
steps to market, and adequately support and maintain, the Software Products to
or for its customers;
(6) ACI assumes all responsibility and liability for the selection of the
Software Products to achieve the results intended and for the installation of,
use of and results obtained from the Software Products;
(7) it is solely responsible for warranting the Software Products to its
customers and liable for any warranty claims therefore (either express, implied
or otherwise); and
(8) it is solely responsible for all expenses incurred by it in its performance
of this Agreement.
The obligations of this Section 11.12 will survive termination of this
Agreement.
11.13 The parties contemplate that substantially simultaneously with the
execution of this Agreement ACI will enter into employment relationships with
the current Xxxxxx employees listed on Attachment B.
11.14 For a period of eighteen months from the date of this Agreement, Xxxxxx
agrees not to hire or retain either as an employee, or as or through a
consultant, any former employee listed on Exhibit B who is a current employee of
ACI except with prior mutual consultation and consent of ACI. For a period of
one year from the date of this Agreement, each party agrees not to hire or
retain either as an employee or as or through a consultant any current employee
of the other party (other than those listed on Exhibit B) except with prior
mutual consultation and consent of such party. Each party acknowledges that a
breach of this subsection 11.4 would cause irreparable harm to the other party
and that the other party shall be entitled to injunctive relief in the event of
such a breach.
11.15 Xxxxxx shall, within thirty (30) days of the effective date, cause the
assignment of the agreement listed on Attachment E.
11.16 This Agreement and its Attachments constitute the entire agreement among
the parties regarding this matter, and they supersede all prior discussions or
agreements related to the same, including but not limited to the 1998 Agreement
which is terminated as of the effective date of this Agreement. This Agreement
and any Attachments shall only be effective upon signature by both parties. The
effective date of this Agreement and the Attachment(s) shall be February 1,
2001.
IN WITNESS WHEREOF, the parties cause this Agreement to be signed by the duly
authorized representatives of ACI and Xxxxxx on the dates and at the places
specified below.
ACI WORLDWIDE INC.
("ACI")
By: /s/ Xxxx Xxxxxx
--------------------------------------------
(Signature)
Xxxx Xxxxxx
--------------------------------------------
(Printed Name)
President
--------------------------------------------
(Title)
Date: February 1, 2001
--------------------------------------------
XXXXXX, INC.
("Xxxxxx")
By: /s/ Xxxxxxxx Xxxxx
--------------------------------------------
(Signature)
Xxxxxxxx Xxxxx
--------------------------------------------
(Printed Name)
President -- NestorCommerce
--------------------------------------------
(Title)
Date: February 1, 2001
--------------------------------------------
LICENSE AGREEMENT XXXXXX AND ACI
ATTACHMENT A
PRISM Modules
1.0 SOFTWARE PRODUCTS AND FEES
1.1 Products.
I.D. Software Product Description
--------- ------------------------------------------------------------
PI-ST010 PRISM Scoring Engine on Compaq Nonstop Server
Platform (Batch) - Credit
PI-ST020 PRISM Scoring Engine on Compaq Nonstop Server
Platform (Batch) - Debit
PI-ST030 PRISM Scoring Engine on Compaq Nonstop Server
Platform (Batch) - Private Label
PI-ST040 PRISM Scoring Engine on Compaq Nonstop Server
Platform (Batch) - Money Laundering Detection
PI-ST050 PRISM Scoring Engine on Compaq Nonstop Server
Platform (Batch) - Merchant
PI-ST011 PRISM Scoring Engine on Compaq Nonstop Server
Platform (XPNET) - Credit
PI-ST021 PRISM Scoring Engine on Compaq Nonstop Server
Platform (XPNET) - Debit
PI-ST031 PRISM Scoring Engine on Compaq Nonstop Server
Platform (XPNET) - Private Label
PI-ST041 PRISM Scoring Engine on Compaq Nonstop Server
Platform (XPNET) - Money Laundering Detection
PI-ST051 PRISM Scoring Engine on Compaq Nonstop Server
Platform (XPNET) - Merchant
PI-SI010 PRISM Scoring Engine on IBM Platform - Credit
PI-SI020 PRISM Scoring Engine on IBM Platform - Debit
PI-SI030 PRISM Scoring Engine on IBM Platform - Private Label
PI-SI040 PRISM Scoring Engine on IBM Platform - Money
Laundering Detection
PI-SI050 PRISM Scoring Engine on IBM Platform - Merchant
PI-SN010 PRISM Scoring Engine on Windows/NT Platform - Credit
PI-SN020 PRISM Scoring Engine on Windows/NT Platform - Debit
PI-SN030 PRISM Scoring Engine on Windows/NT Platform - Private Label
PI-SN040 PRISM Scoring Engine on Windows/NT Platform
- Money Laundering Detection
PI-SN050 PRISM Scoring Engine on Windows/NT Platform - Merchant
PI-UN000 PRISM Model Update on Windows/NT Platform
PI-AN010 PRISM Analysis/Review System (Single Institution) - Credit
PI-AN020 PRISM Analysis/Review System (Single Institution)- Debit
PI-AN030 PRISM Analysis/Review System (Single Institution)
- Private Label
PI-AN040 PRISM Analysis/Review System (Single Institution)
- Money Laundering Detection
PI-AN050 PRISM Analysis/Review System (Single Institution) - Merchant
PI-AN011 PRISM Analysis/Review System (Multi Institution) - Credit
PI-AN021 PRISM Analysis/Review System (Multi Institution) - Debit
PI-AN031 PRISM Analysis/Review System (Multi Institution)
- Private Label
PI-AN041 PRISM Analysis/Review System (Multi Institution)
- Money Laundering Detection
PI-AN051 PRISM Analysis/Review System (Multi Institution) - Merchant
Modeler's Workbench is a collection of utilities located on a
computer called \\RMDP266\Modelers-Workbench. All source code,
documentation, presentations, help files, training material
associated with the PRISM products listed in the agreement are
stored in this version control system and are to be included in
the list of modules covered by the agreement.
AS SUCH PRODUCTS EXIST ON THE DATE OF THIS AGREEMENT
1.2 Within a reasonable time after the execution of this Agreement, XXXXXX
shall deliver one (1) copy of the Software Programs to ACI. ACI may
make additional copies as necessary to exercise its rights under the
Agreement. All copies shall include any confidentiality and copyright
notices included with the delivered copy.
1.3 Substantially simultaneously with the delivery set forth in 1.2 Xxxxxx
shall deliver one (1) set of Documentation to ACI. ACI may make
additional copies as necessary to exercise its rights under the
Agreement. All copies shall include any confidentiality and copyright
notices included with the delivered copy.
TOTAL FEES:
1.4 In accordance with the schedule set forth below, ACI shall pay to
Xxxxxx $1,104,000 by bank wire or other means acceptable to Xxxxxx.
Such amount shall be an initial royalty, shall not be subject to
recoupment or setoff and shall not constitute a prepayment of any
other amounts due under this Agreement.
1.5 ACI shall pay to Xxxxxx 15% of all fees paid for license and
maintenance (however denominated) of the Software Products from
sub-licensing the Software Products or software containing any part of
the Software Products, provided however for purposes of calculating
the amount due Xxxxxx in any individual sublicense, ACI shall not
consider any discount of the list price of the Software Programs to a
greater degree than the discount off the list price of any other ACI
software that is also licensed at the time of or in conjunction with
such sublicense (e.g. if the discount on the Software Programs is 20%
and the discount on the other ACI software is 10%, then for purposes
off calculating the amount due Xxxxxx the Software Programs shall only
be discounted 10%). ACI shall retain 100% of all other amounts
received from sub licensing (e.g. integration and installation fees,
modeling fees, and customization fees). For greater clarity, in the
event a Non-Affiliate third party sub-licenses the Software Products,
Xxxxxx shall receive 15% of what ACI receives from the third party as
license and maintenance fees.
ACI shall not use the Software Products for a service bureau, or
similar type of processing services arrangement.
GUARANTEED FEES:
1.6 ACI agrees to pay the following cumulative minimum guaranteed fees
generated by monthly license fees from ACI's customers:
For the first quarter of the Agreement $ 75,000
By the second quarter of the Agreement $175,000
By the third quarter of the Agreement $310,000
By the fourth quarter of the Agreement $472,650
ADVANCE FEES:
1.7 ACI agrees to pay Xxxxxx the following additional cumulative advance
fees upon request by Xxxxxx:
For the first quarter, the difference between $150,000 and the actual
royalties due for the first quarter of the Agreement
By the second quarter, the difference between $326,000 and the actual
royalties due for the first and second quarter of the Agreement
The difference between $531,000 and the actual royalties due for the
first, second and third quarter of the Agreement
The difference between $767,400 and the actual royalties due for the
first, second, third and fourth quarter of the Agreement
Actual royalties for this subsection 1.7 include the amounts due under
1.6. The amount payable under subsection 1.4 is not to be included
towards the amounts in either subsection 1.6 or subsection 1.7
Beginning with royalties due for the fifth quarter of the Agreement,
any amounts advanced to Xxxxxx under subsection 1.7 shall be recovered
by ACI by withholding 50% of the amounts due under subsection 1.5
until the amount withheld equals the amount advanced.
ADDITIONAL DEFINITIONS
The following additional definitions apply to this Attachment:
1.1 "Initial License Fee" or "ILF" means the initial fee payable by ACI
for the rights granted under the Agreement.
2.1 "On-Going License Fee" or "OLF" means the on-going fee payable by ACI
for the rights granted under this Agreement, as set forth in
sub-section 1.5
2.0 DELIVERY.
3.1 The Software Products will be delivered to ACI either personally or by
common carrier. Risk of loss will pass to ACI upon delivery to ACI or
the carrier, as the case may be. XXXXXX shall arrange for
transportation and insurance for ACI's account.
3.0 ON-GOING LICENSE FEE
ACI agrees to pay the On-Going License Fee set forth in Section 1.5 for the
term of the Agreement. Payment shall be made monthly to Xxxxxx for
payments: a) received during the preceding month, or b) due ACI from a
customer which, although not yet received from such customer, ACI has
recognized as revenue such amount in its normal course of revenue
recognition for more than 120 days.
Payments to be made under subsection 1.6 shall be made within thirty (30)
days after the end of the quarter.
Payments to be made under subsection 1.7 shall be made within thirty (30)
days of the request by Xxxxxx.
4.0 PAYMENTS
(U.S. Dollars) Total Amount
------------------------------------ ------------
a. Twenty-five percent (25%) of the
Initial License Fee payable upon the
effective date of this Agreement: $276,000
b. Twenty-five percent (25%) of the
Initial License Fee payable 30 days
after the effective date of this Agreement $276,000
c. Twenty-five percent (25%) of the
Initial License Fee payable 90 days
after the effective date of this Agreement $276,000
d. Twenty-five percent (25%) of the
Initial License Fee payable 120 days after
the effective date of this Agreement $276,000
e. On-Going License Fee payable monthly see 1.5 and 3.0
f. Expenses payable monthly for actual
expenses incurred during each month: Variable
LICENSE AGREEMENT XXXXXX AND ACI
ATTACHMENT B
Xxxxxx Employees
Xxx X. Xxxx
Xxxxxxx X. Xxxxxx
Xxxxxx Xxxxxxxx
Xxxxxx Xxxxxxx
Xxxxx Xxxxxxxxx-Xxxxx
Xxx Xxxx
Xxxxxx Xxxxx
Xxxxxxx Xxx
Xxxx Xxxxx
Xxxxxx Xxxxxx
Xxxxxxx Xxxxxxxx
Xxxxxx Xxxxx
LICENSE AGREEMENT XXXXXX AND ACI
ATTACHMENT C
Software Agreement
LICENSE AGREEMENT L ****
THIS Agreement is entered into between ACI WORLDWIDE INC., a Nebraska
corporation, having a principal office at 000 Xxxxx 000xx Xxxxxx, Xxxxx, XX
00000-0000 ("ACI"), and CUSTOMER NAME, a corporation, having a principal office
at ("Customer"). Subject to ACI's consent, which shall not be unreasonably
withheld, an Affiliate may contract for Software Products and related services
by agreeing to be bound by the terms and conditions of this Agreement and
incorporating this Agreement by reference.
WHEREAS, ACI has developed or acquired certain Software Products more
specifically described below; and
WHEREAS, Customer desires to obtain the right to use said Software Products and
certain related development, installation, maintenance and/or support services.
NOW, THEREFORE, the parties hereto agree as follows:
1.0 DEFINITIONS (Additional capitalized terms are defined in the Attachments)
1.1 "ACI Expenses" means all reasonable and necessary out-of-pocket expenses
which ACI may incur in rendering the services, including expenses relating to
air fares, ground transportation, and lodging, plus a per city per diem based
upon the then-current IRS guidelines, and telephone, telefax, courier, express
mail, and dial-up data transmissions which are incurred by ACI in the
fulfillment of this Agreement and the Attachments. ACI will, upon request,
provide receipts to Customer in support of reimbursable ACI Expenses of $75 or
more.
1.2 "Affiliate" means any corporation that directly or indirectly controls, is
controlled by, or is under common control with Customer, but expressly excludes
any entity that is, in ACI's reasonable judgment, a competitor of ACI. Control
means the ownership of more than 50% of the voting securities of an entity.
1.3 "Agreement" means this License Agreement.
1.4 "Custom Software Modification" or "CSM" means the special computer software
modules, enhancements or other features specified in Attachment B(s) hereto that
ACI may develop, upon Customer's request, in order to satisfy the particular
requirements of Customer.
1.5 "Documentation" means the technical and user manuals provided by ACI with
the Software Programs.
1.6 "Hardware System" or "HWS" means the computer hardware system of Customer
specified in an Attachment.
1.7 "Single Network Image" or "SNI" means one or more HWSs that are running
substantially the same set of Software Programs and any CSMs.
1.8 "Software Products" means the Software Programs and Documentation, as well
as all copies and translations thereof.
1.9 "Software Programs" means the computer software modules in machine-readable
object code specified in an Attachment, including CSM's.
2.0 LICENSE
2.1 ACI hereby grants to Customer a non-transferable and non-exclusive license
to use the Software Products subject to the terms and conditions of this
Agreement and the Attachment(s).
2.2 Except as otherwise set forth herein or in an Attachment, Customer shall not
modify, copy or otherwise reproduce the Software Products without the prior
written authorization of ACI. Any such modification, copy or other reproduction
shall be automatically deemed an integral part of the Software Products licensed
hereunder and owned exclusively by ACI.
3.0 CHARGES
3.1 Customer shall pay to ACI the charges for the Software Products and related
services and for all ACI Expenses, as specified in the Attachments. All payments
shall be remitted to ACI in U.S. dollars. Customer shall pay such charges within
thirty (30) calendar days after the date of receipt of ACI's corresponding
invoice.
3.2 All amounts payable by Customer to ACI under this Agreement and the
Attachments are exclusive of any tariffs, duties, taxes, or similar governmental
charge which may be assessed based on the delivery, possession, or use of the
Software Products or the execution or performance of this Agreement and the
Attachments, excluding ACI franchise taxes or taxes based upon ACI's income. If,
under applicable law, Customer is required to withhold tax from any such
payment, upon request of ACI, Customer will promptly furnish ACI with an
official receipt of payment of the taxes to the local taxing authority.
3.3 Any late payment under this Section 3.0 shall accrue interest at the annual
rate of eighteen percent (18%) or the highest allowable legal rate, whichever is
less.
4.0 WARRANTY
4.1 ACI represents and warrants that the Software Programs shall operate
substantially in conformance with the Documentation upon delivery and during the
Warranty Period set forth in the Attachment(s). ACI does not warrant that the
Software Programs will satisfy or may be customized to satisfy all of Customer's
requirements or that the use of the Software Products will be uninterrupted or
error-free.
4.2 ACI shall make such corrections, modifications, additions or other
adjustments as may be required to satisfy the warranty specified in Section 4.1
above. Said services shall be furnished without charge unless the correction or
adjustment is necessitated by (i) Customer's negligence, (ii) Customer's
modification, or other change of the Software Programs, (iii) the failure of
data supplied by Customer to conform to the applicable formats of ACI, (iv)
failure or breakdowns of the HWS, (v) failures or errors by Customer's
operators, or (vi) any other cause not inherent in the Software Programs. Under
such circumstances, ACI shall have the right to charge Customer for services on
a time-and-materials basis at its then-current rates and for any ACI Expenses.
4.3 In the event ACI is unable to make such corrections, modifications,
additions, or other adjustments during the Warranty Period or within a
reasonable period of time thereafter, Customer may return the Software Programs
and receive a refund of any license fees paid for such Software Programs.
4.4 ACI represents and warrants that it owns or has the right to license the
Software Products set forth in the Attachments.
4.5 THE WARRANTIES, CONDITIONS, REPRESENTATIONS, GUARANTEES, AND INDEMNITIES, AS
SET FORTH IN THIS SECTION 4.0 AND SECTION 5.0 ARE EXCLUSIVE AND IN LIEU OF ALL
OTHER WARRANTIES, CONDITIONS, REPRESENTATIONS, GUARANTEES, AND INDEMNITIES,
WHETHER EXPRESS OR IMPLIED, ARISING BY LAW, CUSTOM, PRIOR ORAL OR WRITTEN
STATEMENTS, OR OTHERWISE (INCLUDING, BUT NOT LIMITED TO, ANY WARRANTY OF FITNESS
FOR PARTICULAR PURPOSES OR MERCHANTABILITY).
5.0 INFRINGEMENT
5.1 If a third party brings an action against Customer claiming that the current
version of the Software Products infringe a copyright or trade secret, ACI will
defend Customer and will pay the damages and costs finally awarded against
Customer, but only if (i) Customer notifies ACI immediately after the claim is
asserted or threatened, (ii) ACI has full control over the defense, settlement,
or other resolution of the claim, (iii) Customer does not take a position that
is adverse to ACI, and (iv) at ACI's request, Customer assists ACI in defending,
settling, or otherwise resolving the claim.
5.2 If ACI receives notice of an infringement claim or otherwise concludes that
the Software Products may infringe the proprietary rights of a third party,
Customer will allow ACI, at ACI's option, to (i) procure the right for Customer
to continue using the Software Products, (ii) modify or replace the Software
Products without adversely affecting their operating specifications, or (iii) if
ACI determines that neither (i) nor (ii) is practicable, terminate Customer's
right to use the infringing Software Product and accept its return against
payment of its then-depreciated value, computed on a five (5) year straight-line
depreciation schedule commencing as of its installation date.
5.3 ACI will have no obligation to Customer under Sections 5.1 and 5.2 above if
the copyright or trade secret infringement claim is based on (i) a modification
of the Software Products not made by ACI, (ii) the combination of the Software
Products with an item not supplied by ACI, or (iii) use of the Software Products
in a manner not intended by the Documentation.
5.4 THE RIGHTS GRANTED TO THE CUSTOMER UNDER THIS SECTION 5.0 SHALL BE THE
CUSTOMER'S SOLE AND EXCLUSIVE REMEDY FOR ANY ALLEGED INFRINGEMENT BY ACI
HEREUNDER OF ANY COPYRIGHT, TRADE SECRET OR OTHER PROPRIETARY RIGHT OR FOR ANY
BREACH OF THE WARRANTY GIVEN IN SECTION 4.4.
6.0 LIMITATION OF LIABILITY
6.1 EXCEPT AS SPECIFICALLY SET FORTH IN SECTION 5.0, ACI SHALL NOT BE
RESPONSIBLE FOR ANY CONSEQUENTIAL, INDIRECT, INCIDENTAL, SPECIAL, OR PUNITIVE
DAMAGES, WHETHER FORESEEABLE OR UNFORESEEABLE, (INCLUDING CLAIMS FOR LOSS,
INTERRUPTION IN USE OR UNAVAILABILITY OF DATA, LOSS OF GOODWILL, LOSS OF
PROFITS, STOPPAGE OF OTHER WORK OR IMPAIRMENT OF OTHER ASSETS) ARISING OUT OF
BREACH OR FAILURE OF EXPRESS OR IMPLIED WARRANTY, BREACH OF CONTRACT, BREACH OF
WARRANTY, MISREPRESENTATION, NEGLIGENCE, STRICT LIABILITY IN TORT OR OTHERWISE,
EXCEPT ONLY IN THE CASE OF PERSONAL INJURY OR PROPERTY DAMAGE WHERE THE LAW
REQUIRES SUCH LIABILITY.
6.2 EXCEPT AS SPECIFICALLY SET FORTH IN SECTION 5.0, IN NO EVENT WILL ACI'S
TOTAL LIABILITY TO CUSTOMER IN ANY ACTION, WHETHER IN CONTRACT OR TORT, EXCEED
THE AMOUNT ACTUALLY PAID TO ACI IN THE TWELVE MONTHS PRIOR TO THE EVENT WHICH
CAUSED THE DAMAGE.
7.0 CONFIDENTIALITY
7.1 "Confidential Information" means (i) all ACI proprietary or confidential
information which is a) designated in writing as such or b) that by nature of
the circumstances surrounding the disclosures in good faith ought to be treated
as proprietary or confidential, and c) all ACI Software Products; and (ii) all
Customer proprietary or confidential information which is a) designated in
writing as such or b) that by nature of the circumstances surrounding the
disclosure in good faith ought to be treated as proprietary or confidential. The
presence of a copyright notice on any Confidential Information will not
constitute publication or otherwise impair the confidential nature thereof.
7.2 Each party shall use the Confidential Information only for the purposes as
set forth in the Agreement and Attachments and shall disclose the Confidential
Information only as specifically authorized in Section 7.3 below. Neither party
shall remove any confidentiality, copyright, or similar notices or legends from
the Confidential Information and shall implement such safeguards and controls as
may be necessary or appropriate to protect against unauthorized uses or
disclosures of the Confidential Information.
7.3 The receiving party shall not disclose Confidential Information except (i)
to its employees or consultants having a need to know such Confidential
Information and (ii) in accordance with judicial or other governmental order,
provided the receiving party gives reasonable notice to the other party prior to
such disclosure and shall comply with any protective order or equivalent. Prior
to permitting access to the Confidential Information, the receiving party will
have executed written agreements with its employees and consultants, sufficient
to enable it to comply with all the provisions of this Agreement. Such receiving
party shall be responsible for breach by its employees and consultants of the
obligations set forth in this Section 7.0.
7.4 Except as otherwise specifically provided in this Agreement or Attachments,
Customer shall not, and shall not authorize any third party to, reproduce,
translate, or otherwise copy, enhance, add to, or modify the Software Products,
or reverse assemble or de-compile the Software Programs, or develop any computer
software system, subsystem, or module that incorporates or otherwise uses
elements of the Software Programs, without the specific prior written
authorization of ACI.
7.5 If any employee, officer, director, consultant, or agent of either party
violates the provisions of this Section 7.0, or if any third party obtains any
Confidential Information through one party without the other party's
authorization, then such disclosing party shall take, at its own expense, all
actions that may be required to remedy such violation, or recover such
Confidential Information and to prevent such employee, officer, director, agent,
consultant, or third party from using or disseminating such Confidential
Information, including, but not limited to, legal actions for seizure and
injunctive relief, if then available under local law. If the disclosing party
fails to take such actions in a timely and adequate manner, the other party or
its designee may take such actions in its own name or disclosing party's name
and at the disclosing party's expense.
7.6 Notwithstanding anything contained in Section 7.0, unless otherwise agreed
to the contrary in writing prior to its disclosure, ACI is free to use any
"residuals" resulting from access to Customer's Confidential Information. The
term "residuals" means information in non-tangible form which may be retained by
persons who have had access to the Confidential Information, including any
ideas, concepts, know-how, or techniques contained in Customer's Confidential
Information. ACI shall have no obligation to limit or restrict the assignment of
such persons. Any new products resulting from the residuals shall be considered
New Technology. However, the foregoing shall not be deemed to grant to ACI a
license under the Customer's copyrights or patents.
7.7 Neither party will have an obligation to maintain the confidentiality of any
data or information which (i) was in such party's lawful possession prior to the
disclosure thereof by the other party, (ii) is later lawfully made available to
such party by a third party having no obligation of secrecy to the other party,
(iii) is independently developed by such party, or (iv) is, or later becomes,
available to the public through no fault of such party.
8.0 OWNERSHIP
Each party acknowledges that the Confidential Information of the other party, as
well as all related trade marks, logos, other names or markings identifying the
Confidential Information, and trade secrets, copyrights, patents, or other
proprietary rights of the other party, are and shall remain the exclusive
property of the other party, whether or not protected under local intellectual
or industrial property laws. Customer shall not acquire any right, title, or
interest in or to the Software Products, except as a licensee under this
Agreement and the Attachments. Unless otherwise agreed to in writing in the
applicable Attachment, ACI or its licensors will own any copy, translation,
modification, adaptation or development based thereon, which may be created by
or for ACI, or by or for Customer. If, by operation of law, Customer is deemed
to posses any rights in such items, Customer hereby assigns such rights to ACI
and/or its licensors. To the extent Customer's rights are inalienable under
applicable law, Customer hereby waives such rights and, if such waiver is deemed
invalid, grants ACI, its licensors and their designees the exclusive,
irrevocable, worldwide royalty free right to use, market, modify and grant
licenses to such items without identifying Customer or seeking Customer's
consent. Each party agrees not to take any action that interferes with said
proprietary rights of the other party or attempt to copyright or patent any
portion of said other party's property or register or attempt to register any
trademark, service xxxx, trade name, or company name which is identical or
confusingly similar to said marks, names, or markings.
9.0 INSPECTION
During the term of this Agreement and for a period of one (1) year after its
expiration or termination, ACI or its representative may, upon prior written
notice to Customer at any time, and subject to Customer's security rules and
policies and applicable laws and/or regulations, inspect the computer
processors, facilities, and premises of Customer during normal working hours for
the purpose of verifying Customer's compliance with the terms and conditions of
this Agreement and the Attachments. In conducting any such inspection, ACI shall
use all reasonable efforts to minimize the disruption of Customer's normal
business activities. ACI shall be entitled to copy or otherwise reproduce any
items that Customer may have in its possession or under its control which
violate the terms and conditions of this Agreement or the Attachments.
10.0 ADDITIONAL SERVICES
Customer may, subject to the availability of ACI personnel, verbally order up to
40 hours of additional services at ACI's then-current fees for such services.
11.0 TERMINATION
11.1 (a) Either party may immediately terminate this Agreement, or any and all
Attachments, without judicial notice or resolution, by giving written notice to
the other party, if the other party (i) commits a material breach of any
provision of this Agreement or the Attachments (including but not limited to
Customer's promise to make payment under an Attachment) and fails to cure such
breach within thirty (30) days after the non-breaching party demands such cure,
(ii) becomes insolvent or assigns all, or substantially all, of its assets or
business for the benefit of creditors, (iii) resolves to wind up business,
dissolve, or liquidate, or (iv) otherwise ceases to conduct business.
11.2 (a) Upon the expiration or termination of this Agreement by either party,
Customer shall, within ten (10) calendar days, (i) pay all amounts due and
outstanding hereunder, and (ii) deliver to ACI or its designee all Software
Products within Customer's possession or control.
(b) In the event of termination by ACI for breach by Customer, Customer shall
owe ACI all the remaining amounts due under this Agreement and the Attachments
until such period of time that Customer could terminate this Agreement without
breach. In the event of termination by Customer for breach by ACI, ACI shall owe
Customer as damages an amount equal to a pro-rata refund of all one-time or
initial license fees paid under this Agreement and the Attachments based upon a
five year straight line depreciation beginning upon expiration of the Warranty
Period and a pro-rata share of any pre-paid maintenance or periodic license fees
paid. EACH PARTY AGREES THAT THIS PARAGRAPH CONSTITUTES THE SOLE REMEDY FOR
BREACH OF THIS AGREEMENT AND THE ATTACHMENTS OTHER THAN FOR BREACH OF SECTIONS
5.0 OR 7.0.
11.3 The following Sections shall survive termination of the Agreement: Section
4.0; Section 5.0; Section 6.0; Section 7.0; Section 8.0; Section 9.0; Section
11.0 and Section 12.0.
12.0 MISCELLANEOUS PROVISIONS
12.1 ACI and its affiliates may use Customer's name on its customer lists, and
refer to Customer's name as a customer. In addition, Customer and ACI may
publicly announce the execution of this Agreement without disclosing its
specific content. Any other use of Customer's name in a press release or other
promotional material shall be subject to Customer's consent.
12.2 If a court of competent jurisdiction holds any provision of this Agreement
to be illegal or invalid, the provision shall be automatically severed from this
Agreement. Any such holding shall not affect the legality or validity of the
remaining provisions of this Agreement unless either party reasonably deems such
severed provision to be essential to this Agreement, in which case such party
may terminate this Agreement upon written notice to the other party.
12.3 If either party commences a legal action against the other party in
connection with this Agreement, the losing party shall reimburse the prevailing
party for the reasonable attorneys' fees and expenses which it may incur in such
action, whether or not such action is prosecuted to a final and non-appealable
judgment.
12.4 If either party fails to give notice or enforce any right under this
Agreement, such failure shall not constitute a waiver of such right, unless such
waiver is reduced to writing and signed by the waiving party. If a party waives
its right in writing, such waiver shall not constitute a waiver of any other
right or of any subsequent violation of the same right that has been waived.
12.5 The parties to this Agreement shall be excused for failures or delays in
performing an obligation under this Agreement and the Attachments if such
failure or delay is caused by force majeure, including, but not limited to,
fortuitous event and acts of God; wars, riots and insurrections; laws, decrees,
ordinances and governmental regulations; strikes and lockouts; transportation
stoppages or slowdowns; floods, fires and explosions; or the inability to obtain
necessary export or import licenses or permits.
12.6 This Agreement shall not be construed to constitute any party as an
employee, attorney-in-fact, legal representative or business partner of the
other parties.
12.7 Customer may not assign, pledge or otherwise transfer this Agreement or any
right or obligations hereunder without the prior written authorization of ACI;
provided Customer may assign this Agreement to an Affiliate of Customer or to
any entity which acquires all or substantially all of the stock or assets of
Customer. ACI may assign, in whole or on part, any of its rights and interests
(including it's right to payment under an Attachment), and its obligations, to a
third party without Customer's consent. This Agreement shall bind the authorized
assigns or successors of any party. Customer acknowledges that ACI may use
employees or consultants of Affiliates to perform some of its obligations
hereunder; provided, however, that ACI shall remain ultimately responsible for
their performance.
12.8 All notices required or permitted under this Agreement shall be given in
writing and shall be personally delivered or sent by certified mail, postage
prepaid, addressed as follows:
If to Customer:
-----------------------------------------
-----------------------------------------
-----------------------------------------
Attn: -----------------------------------------
If to ACI:
ACI Worldwide Inc.
000 Xxxxx 000xx Xxxxxx
Xxxxx, Xxxxxxxx 00000-0000
XXX
Attn: Contracts Administration
12.8.1 The parties may change their address from time to time upon written
notice to the other party.
12.8.2 Any notice shall be deemed to have been effective when delivered.
12.9 Except as otherwise provided above, this Agreement and its Attachments may
be amended only by the consent of both parties expressed in writing and signed
by a duly authorized representative of each party.
12.10 This Agreement and Attachments shall be executed in its English-language
version. In the event this Agreement and the Attachments is also executed in a
local-language version, the English-language version shall control in the event
of any discrepancies.
12.11 This Agreement and the Attachments will be governed by and interpreted
under the laws of the State of Nebraska, without regard to any provisions of
Nebraska law which would require the application of the substantive law of
another jurisdiction. ACI and Customer also exclude the United Nations
Convention on Contracts for the International Sale of Goods, if applicable.
12.12 Any controversy or claim arising out of, or relating to, this Agreement
and the Attachments, or the existence, validity, breach, or termination hereof,
whether during or after its term, will be submitted for resolution to the courts
in Omaha, Nebraska, to whose jurisdiction Customer consents. Notwithstanding the
foregoing, either party may seek injunctive relief against the other party from
any other judicial or administrative authority pending the resolution of such
controversy or claim.
12.13 Customer acknowledges that the Software Products and any technical
information relating thereto is subject to United States export controls, and
that a specific license may be required prior to delivery thereof to the country
of installation. Customer will provide reasonable assistance as required by ACI
in securing any required export license. ACI shall have no liability to Customer
in the event the United States declines to issue the necessary export license.
Customer will not export, re-export, divert, transfer, or disclose, directly or
indirectly, any Software Products or related technical information, documents,
or materials, or any direct product thereof, from the country of delivery or to
any person who is not a national or resident thereof, without the prior written
approval of ACI and obtaining the required re-exportation license from the
United States government. The obligations of this Section 12.13 will survive
termination of this Agreement
12.14 No party may commence an action under this Agreement and the Attachments
more than one (1) year after the occurrence of an event of default, or in the
event such default is not discoverable by the injured party when it has
occurred, more than one (1) year after such default could, and in the exercise
of due diligence, would have been discovered.
12.15 This Agreement and its Attachments constitute the entire agreement among
the parties regarding this matter, and they supersede all prior discussions or
agreements related to the same. This Agreement and any Attachments shall only be
effective upon signature by both parties. The effective date of this Agreement
and the Attachment(s) shall be the last date set forth in the signature block.
13.0 SOURCE CODE
13.1 ACI shall furnish Customer the Software Programs in object code form. In
addition, ACI will deliver certain software programs in source code form. For
those Software Programs furnished in object code, ACI will escrow the source
code as set forth below. Customer agrees not to reverse assemble, decompile or
otherwise reverse engineer the object code in an attempt to obtain the source
code for such object code. In the event any source code is released to Customer
under this Section it shall be automatically deemed an integral part of the
Software Programs and shall be subject to all proprietary, confidentiality, and
other restrictions and obligations applicable to the Software Programs under
this Agreement.
13.2 ACI warrants and represents that ACI shall, at its expense, maintain the
source code for the current and immediately preceding release of the object for
the Software Programs in escrow at SourceFile LLC. in Oakland, California,
U.S.A. ACI may change the escrow agent at any time during the term of this
Agreement and shall promptly notify Customer in writing of any such change.
13.3 Customer shall be entitled to receive the source code for the Software
Programs during the term of this Agreement only if (i) ACI is dissolved,
liquidated, or otherwise ceases to carry on business in a regular manner that
allows ACI to fulfill its maintenance and support obligations with respect to
the Software Products, and (ii) ACI's business or part thereof affecting said
maintenance and support obligations is not assumed by any successor or assignee
of ACI.
13.4 Under the circumstances specified above, the escrow agent shall be
authorized to release said source code to Customer thirty (30) calendar days
after receipt of a written request from Customer specifying the conditions which
justify the release and accompanied by a copy of this Agreement, provided that
(i) Customer remits a copy of said written request to ACI upon sending it to the
escrow agent and (ii) during said thirty (30) calendar day period ACI does not
deliver to the escrow agent an affidavit executed by a duly authorized officer
of ACI disputing the existence of the alleged conditions which justify the
release. Unless otherwise settled by ACI and Customer in writing, any such
factual dispute shall be resolved under the laws of the State of Nebraska,
U.S.A., by the U.S. Federal District Courts in Omaha, Nebraska, U.S.A. The
escrow agent shall not release the source code to Customer pending such
settlement or resolution.
IN WITNESS WHEREOF, the parties cause this Agreement to be signed by the duly
authorized representatives of ACI and Customer on the dates specified below.
ACI WORLDWIDE INC. CUSTOMER NAME
("ACI") ("Customer")
By: By:
---------------------------------- -----------------------------------
(Signature) (Signature)
---------------------------------- -----------------------------------
(Printed Name) (Printed Name)
---------------------------------- -----------------------------------
(Title) (Title)
Date: Date:
-------------------------------- --------------------------------
LICENSE AGREEMENT XXXXXX AND XXXXXX
LICENSE AGREEMENT XXXXXX AND ACI
ATTACHMENT D
Excluded Entities
eFunds
Oasis
S2
Mosaic
Corillian
Sema Group
Paysys
S1
Trintech
Brokat
LICENSE AGREEMENT XXXXXX AND ACI
ATTACHMENT E
Bank of Nova Scotia
Xxxxxx represents that 2000 license fees from the following agreement totals at
least $130,000 and that such agreement is in full force and effect and Xxxxxx
has not received any notice from the customer that Xxxxxx is in breach of the
agreements.
"Agreement with Bank of Nova Scotia" dated October 27, 1997.
(copy attached hereto)
Xxxxxx and ACI agree to the letter attached as Exhibit 1 to Attachment E
Exhibit 1 to Attachment E
[XXXXXX, INC. LETTERHEAD]
[date]
ACI etc:
Re: License (the "License") dated October 27, 1997, by and between Xxxxxx, Inc.
("Xxxxxx") and the Bank of Nova Scotia, a Canadian corporation, having a place
of business at 0000 Xxxxxxxx Xxxxxx Xxxx, Xxxxxxxxxxx Xxxxxxx X0X 0X0 Xxxxxx
("Licensee").
Gentlemen:
This is to confirm that Xxxxxx and ACI Worldwide Inc. ("ACI") have agreed as
follows:
1) Effective the date of this Letter, Xxxxxx hereby assigns and transfers, and
ACI hereby accepts the assignment and transfer of, all of Nestor's rights and
obligations under the License. Substantially simultaneously herewith, ACI and
Xxxxxx shall deliver to Licensee a letter informing the Licensee of this
assignment
2) Xxxxxx shall be entitled to all payments accrued under the License up to the
assignment date and ACI shall be entitled to all payments which accrue after the
assignment date. ACI and Xxxxxx shall cooperate to effect the intent of this
paragraph 2. prior to the assignment.
3) Xxxxxx shall indemnify and hold ACI harmless from any and all claims,
actions, judgments, settlements or demands of any kind made by Licensee,
alleging breach of the License and based solely on events occurring before the
date hereof. ACI shall indemnify and hold Xxxxxx harmless (including reasonable
attorneys' fees) from any and all claims, actions, judgments, settlements or
demands of any kind made by Licensee, alleging breach of the License and based
solely on events occurring on or after the date hereof. If the alleged breach of
the License involves events occurring both before and on or after the date
hereof, the obligations contained in the prior two (2) sentences shall be
proportioned between Xxxxxx and ACI in accordance with the amount of fault each
of them bears for such events in total. An indemnifying party's obligations
under this paragraph are conditioned on (i) prompt notification by the
indemnified party after the claim is asserted or threatened and sufficiently
before any answer or other response therein is due to allow reasonable time to
prepare such response or answer, (ii) full control by the indemnifying party
over the defense, settlement, or other resolution of the claim, and (iii) at the
request and expense of the indemnifying party, assistance by the indemnified
party in defending, settling, or otherwise resolving the claim.
4) Except as required by law, ACI and Xxxxxx agree that neither party will
disclose the existence or terms of this Letter without the other party's
consent.
5) If either party commences a legal action against the other party in
connection with this Letter, the losing party shall reimburse the prevailing
party for the reasonable attorneys' fees and expenses which it may incur in such
action, whether or not such action is prosecuted to a final and non-appealable
judgment.
6) If either party fails to give notice or enforce any right under this Letter,
such failure shall not constitute a waiver of such right, unless such waiver is
reduced to writing and signed by the waiving party. If a party waives its right
in writing, such waiver shall not constitute a waiver of any other right or of
any subsequent violation of the same right that has been waived.
7) This Letter shall not be construed to constitute any party as an employee,
attorney-in-fact, legal representative or business partner of the other parties.
8) All notices required or permitted under this Letter shall be given in writing
and shall be personally delivered or sent by certified mail, postage prepaid,
addressed as follows:
If to XXXXXX:
Xxxxxx, Inc.
Xxx Xxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
XXX
Attn: President
If to ACI:
ACI Worldwide Inc.
000 Xxxxx 000xx Xxxxxx
Xxxxx, Xxxxxxxx 00000-0000
XXX
Attn: Contracts Administration
The parties may change their address from time to time upon written notice to
the other party. Any notice shall be deemed to have been effective when
delivered.
9. Except as otherwise provided above, this Letter may be amended only by the
consent of both parties expressed in writing and signed by a duly authorized
representative of each party.
10. This Letter will be governed by and interpreted under the laws of the State
of New York , without regard to any provisions of New York law which would
require the application of the substantive law of another jurisdiction. ACI and
Xxxxxx also exclude the United Nations Convention on Contracts for the
International Sale of Goods, if applicable.
11. Any dispute arising out of or relating to this Letter, the License, or a
breach thereof shall be settled by arbitration before three neutral arbitrators
(selected from a panel of attorneys having experience with and knowledge of
computers and the computer business) in Chicago, Illinois and administered by
the American Arbitration Association in accordance with its Commercial
Arbitration Rules. Any provisional or equitable remedy which would be available
from a court of law shall be available from the arbitrators to the Parties.
Judgment upon the award of the arbitrators may be enforced in any court having
jurisdiction thereof. The Parties hereby consent to the non-exclusive
jurisdiction of the courts of the Commonwealth of Massachusetts or the State of
Nebraska or to any Federal Court located within the Commonwealth of
Massachusetts or the State of Nebraska for any action (i) to compel arbitration,
(ii) to enforce the award of the arbitrators or (iii) at any time prior to the
qualification and appointment of the arbitrators, for temporary, interim or
provisional equitable remedies and to service of process in any such action by
registered mail, return receipt requested, or by any other means provided by
law.
12. This Letter constitutes the entire agreement among the parties regarding
this matter, and they supersede all prior discussions or agreements related to
the same. This Letter shall only be effective upon signature by both parties.
If the above comports with your understanding of our agreement, please signify
same by signing the enclosed copy of this Letter below where indicated and
returning it to the undersigned.
Yours very truly,
XXXXXX, INC.
by: /s/ Xxxxxxxx Xxxxx
-------------------------------
name: Xxxxxxxx Xxxxx
title: President, NestorCommerce
date: February 1, 2001
ACCEPTED AND AGREED TO
AS OF THE DATE OF THIS LETTER
ACI WORDWIDE INC.
by: /s/ Xxxx Xxxxxx
-------------------------------
name: Xxxx Xxxxxx
title: President
date: February 1, 2001
