Exhibit 10.7
[LOGO] NEON Systems, Inc.
LICENSE AND DISTRIBUTION AGREEMENT
This License and Distribution Agreement ("Agreement") is made effective as
of the 1st day of August, 2002 (the "Effective Date") between NEON Systems,
Inc., a Delaware corporation, having its principal offices at 00000 Xxxxxxxxx
Xxxxxxx, Xxxxx 000, Xxxxx Xxxx, Xxxxx 00000 ("NEON") and Peregrine/Bridge
Transfer Corporation, a Delaware corporation having its principal offices at
00000 Xxxx Xxxxx Xxxxx, Xxxxx 000, Xxx Xxxxx, Xxxxxxxxxx 00000 ("PBTC").
WHEREAS, NEON owns rights in certain software identified in Exhibit A
(collectively the "Licensed Software"); and
WHEREAS, PBTC wishes to license and distribute such Licensed Software
incorporated in or with certain software products of PBTC (the "PBTC Products").
NOW, THEREFORE, the parties hereby agree as follows:
1. GRANT OF LICENSES
1.1 Product Software Distribution License. Subject to the terms and
conditions hereof, NEON hereby grants to PBTC a nonexclusive, worldwide license
during the term of this Agreement, with rights of sublicense (through multiple
tiers of distribution), to the Licensed Software object code in order to use,
reproduce, distribute, grant access to, sell licenses to, offer to sell licenses
to, and to import, market, display, perform, demonstrate, distribute, or
otherwise derive revenues from PBTC Products. Subject to the terms and
conditions hereof, NEON grants to PBTC the right to appoint distributors and
resellers to exercise and grant the right to use, market, demonstrate,
reproduce, distribute and grant access to PBTC Products.
1.2 Product Software Development License. For the term of this Agreement
or as otherwise provided under this Agreement, NEON grants to PBTC: a
nonexclusive, worldwide, royalty-free, fully paid up, license to the Licensed
Software source code solely to use, reproduce, make derivative works, modify,
improve, import, have imported, export, display, perform and provide support to
sublicensees and subdistributors of PBTC Products. PBTC acknowledges that
Licensed Software Source Materials are subject to copyrights and contain trade
secrets owned or licensed by NEON. PBTC acknowledges that all components of the
Licensed Software and all related knowledge and information are trade secrets of
NEON. PBTC shall be responsible for ensuring the secrecy of such Licensed
Software. PBTC shall not remove, alter, or obscure any title, trademark,
restricted rights, confidentiality, or copyright notices of NEON (unless such
removal is reasonably necessary to avoid potential infringement of any third
party marks), or its suppliers, that are incorporated in the Licensed Software
or Documentation, and shall reproduce all such notices on any copies thereof. In
the event that PBTC is required to remove any notice or trademarks per this
Section, then PBTC shall provide NEON with written notice thereof within thirty
(30) days.
1.3 Documentation. NEON grants to PBTC a nonexclusive, worldwide,
royalty-free, fully paid up license, with right of sublicense, to use,
reproduce, make derivative works of, modify, import, market, display, perform,
demonstrate, distribute, and reproduce NEON's standard user documentation, user
instructions, and user's guides, whether in printed or electronic format,
associated with the Licensed
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Software, including user manuals, handbooks and related materials (the
"Documentation") solely for use with the PBTC Products. PBTC is authorized to
produce, reproduce and distribute, and authorize distributors and resellers to
produce, reproduce and distribute, such Documentation under PBTC's or its
reseller's own name(s), subject to the inclusion of a copyright notice
acknowledging NEON' s copyright in the Documentation.
1.4 End User License Terms. PBTC shall distribute the PBTC Products and
Documentation to third parties using an end user license agreement ("End User
License Agreement") having terms that are substantially similar to the terms set
forth in Exhibit B. PBTC shall not license or provide a copy of the Licensed
Software to anyone who: (a) has not signed a written End User License Agreement,
or (b) is not required, in order to install or use the PBTC Products, to
electronically sign the End User License Agreement in a manner such that the End
User License Agreement is valid, binding, and enforceable under federal law
(i.e., the E-Sign Act) or state law (i.e., UETA as adopted by a state).
1.5 Subdistributors & Resellers. Subject to all the terms and conditions
herein, PBTC may authorize subdistributors and resellers to reproduce and
distribute the Licensed Products and the Documentation; provided that PBTC first
obtains from each such subdistributor or reseller a signed, written agreement
substantially as protective of the Licensed Software as this Agreement
("Subdistributor Agreement"). Each Subdistributor Agreement pertaining to a
distribution to a reseller or PBTC shall contain terms and conditions
substantially as protective of NEON's proprietary rights as the terms and
conditions of this Agreement and shall state that NEON is an intended third
party beneficiary under such agreement. PBTC will promptly notify NEON of any
violation of a Subdistributor Agreement of which it becomes aware, and will take
all commercially reasonable efforts to enforce each Subdistributor Agreement
with at least the same degree of diligence used in enforcing similar agreements
governing distribution of PBTC's own products.
2. TAXES
PBTC shall be solely responsible for any and all sales, use, value-added,
withholding, and other taxes and duties related to the Licensed Products. PBTC
will pay all taxes and duties assessed in connection with this Agreement
(including, but not limited to, withholding taxes) and its performance under
this Agreement by any authority within or outside of the United States, except
solely for taxes payable on NEON income.
3. DELIVERY
Upon execution of this Agreement, NEON shall promptly deliver to PBTC the
master copy of the Licensed Software specified in Exhibit A, and one specimen of
the current Documentation. All shipments shall be FOB shipping point. Except as
otherwise expressly set forth herein, NEON shall have no obligation to provide
any goods or services to PBTC, and shall have no obligation to support,
maintain, update, or otherwise develop the Licensed Software and/or the PBTC
Products.
4. MARKETING AND COOPERATIVE EFFORTS
PBTC may assign PBTC's own label or brand to the PBTC Products and
associated documentation provided that PBTC shall include a copyright notice in
the start-up or "About" screen and the splash screen of the PBTC Products and on
the PBTC Products documentation indicating that portions of the PBTC Products
include technology used under license from NEON.
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5. CONFIDENTIALITY
5.1 Confidential Information. As used in this Agreement, the term
"Confidential Information" shall mean any information disclosed by one party to
the other pursuant to this Agreement which is in written, graphic, machine
readable or other tangible form and is marked "Confidential", "Proprietary" or
in some other manner to indicate its confidential nature. "Confidential
Information" shall include the Licensed Software and Documentation. Confidential
Information may also include oral information disclosed by one party to the
other pursuant to this Agreement, provided that such information is designated
as confidential at the time of disclosure and is reduced to writing by the
disclosing party within a reasonable time (not to exceed thirty (30) days) after
its first oral disclosure, and such writing is marked in a manner to indicate
its confidential nature and delivered to the receiving party.
5.2 Confidentiality. Each party shall treat as confidential all
Confidential Information of the other party and shall not disclose such
Confidential Information to any third party. Without limiting the foregoing,
each of the parties shall use at least the same degree of care with respect to
the other's Confidential Information that such party uses to prevent the
disclosure of its own confidential information of like importance. Each party
shall promptly notify the other party of any actual or suspected misuse or
unauthorized disclosure of the other party's Confidential Information. Except
for such materials PBTC may need to exercise its rights under Section 9.2(d)
hereof, each party shall, upon expiration or termination of this Agreement for
any reason, promptly return any and all documents, media, or other items which
contain or constitute any of the other's Confidential Information.
5.3 Exceptions. Notwithstanding the above, neither party shall have
liability to the other with regard to any Confidential Information of the other
which the receiving party can demonstrate:
(a) was in the public domain at the time it was disclosed or has
entered in the public domain through no fault of the receiving party;
(b) was known to the receiving party, without restriction, at the time
of disclosure, as evidenced by the receiving party's files in existence at
the time of disclosure;
(c) is disclosed with the prior written approval of the disclosing
party;
(d) was independently developed by the receiving party as evidenced by
the receiving party's files in existence at the time of disclosure;
(e) becomes known to the receiving party, without restriction, from a
source other than the disclosing party not under a duty of confidentiality
to the disclosing party;
(f) is disclosed by the disclosing party to any third party without
confidentiality obligations similar to those contained in this Agreement;
or
(g) is disclosed pursuant to the order or requirement of a court,
administrative agency, or other governmental body; provided, however, that
the receiving party shall provide prompt notice thereof to the disclosing
party to enable the disclosing party to seek a protective order or
otherwise prevent or restrict such disclosure. Notwithstanding anything to
the contrary herein, NEON shall be free to develop and commercially exploit
any and all goods and services which do not infringe upon the Confidential
Information or other proprietary rights of PBTC, including without
limitation any goods or services which are similar to or competitive with
any of the PBTC Products.
5.4 Confidentiality of Agreement. Each party agrees that the specific
terms and conditions of this Agreement will be treated as confidential
information and that no disclosure thereof will be made in any form without the
prior written consent of the other party, except (i) as required by applicable
disclosure laws; (ii) to accountants, banks, financing sources, lawyers and
related parties subject to a duty not to disclose to others; or (iii) in
connection with the enforcement of this Agreement.
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6. OWNERSHIP
Title and ownership of all proprietary rights in the Licensed Software and
Documentation and any translations thereof, including any copyright, patent,
trade secret, trademark or other intellectual property rights, shall remain the
property of NEON and its licensors where applicable. Notwithstanding anything in
this Agreement to the contrary, PBTC shall own and retain all right, title and
interest in and to any PBTC intellectual property in derivative works and the
like. Except as expressly set forth herein, no other rights or licenses are
granted to under this Agreement, whether by implication, estoppel, or otherwise.
NEON shall have no duty or obligation to protect, record, register, or enforce
any of its rights in any of the Licensed Software; NEON shall do so only in its
sole discretion.
7. WARRANTIES
7.1 Warranties by NEON. NEON warrants for the benefit of PBTC that NEON
has the full corporate right and authority to enter this Agreement, to carry out
its obligations under this Agreement, and to grant the rights granted to PBTC
and that its performance under this Agreement will not violate the terms of any
other agreement to which it is a party. 7.2 Warranties by PBTC. PBTC warrants
for the benefit of NEON that PBTC has full corporate right and authority to
enter into this Agreement and to carry out its obligations under this Agreement
and that its performance under this Agreement will not violate the terms of any
other agreement to which it is a party.
7.3. EXCLUSION OF WARRANTIES. EXCEPT FOR THE EXPRESS WARRANTIES SET FORTH
ABOVE, NEON, ITS LICENSORS AND PBTC DISCLAIM ALL OTHER WARRANTIES OF ANY KIND,
EXPRESS, IMPLIED, STATUTORY, OR IN ANY COMMUNICATION BETWEEN THEM, INCLUDING
WITHOUT LIMITATION ALL IMPLIED WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT,
TITLE, AND FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT TO ANY OF THE PRODUCTS
OR SERVICES SUBJECT TO THIS AGREEMENT.
8. INDEMNIFICATION
PBTC shall defend NEON against or settle, and indemnify and hold NEON
harmless from, any third party claim, suit, or other action ("Claim") and pay
any judgments or damages awarded in any judicial proceeding on the Claim, pay
any settlement amounts agreed upon by PBTC, and pay any associated costs and the
reasonable fees of attorneys, arising out of, or relating to any Claim (a) that
any PBTC Product, or its use, copying, distribution, modification, or
disclosure, infringes any third party intellectual property rights, including
any infringement of any third party patent, trademark, trade secret, copyright,
mask work, or other intellectual property or proprietary rights, or (b) that any
third party has incurred, suffered, or otherwise been damaged by any PBTC
Product, or its use, modification, copying, distribution, or disclosure, or (c)
based on PBTC's actions or omissions. In the event of any such Claim, NEON
agrees to promptly notify PBTC of the Claim and give PBTC sole control and
reasonably requested non-monetary assistance in the defense and settlement of
the Claim. PBTC'S OBLIGATIONS UNDER THIS SECTION SHALL EXTEND TO CLAIMS WHERE
NEON IS PARTIALLY OR CONCURRENTLY NEGLIGENT. If a court of competent
jurisdiction enters a final judgment that NEON is partially negligent with
respect to any such Claim, PBTC's obligations under this Section shall be
reduced on a proportionate basis based on the relative share of NEON's
negligence so adjudicated.
9. TERM AND TERMINATION
9.1 Term. The term of this Agreement shall be three (3) years from the
Effective Date ("Initial Term") and shall automatically be renewed thereafter on
an annual basis. PBTC may terminate this Agreement at any time by providing
ninety (90) day written notice to NEON. NEON may terminate the Agreement, upon
sixty (60) days written notice, if PBTC publicly announces discontinuance of
distribution or support for Licensed Software.
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9.2 Termination.
(a) Termination for Cause. Either party may terminate this Agreement
following thirty (30) days written notice to the other of a material breach
of this Agreement if such material breach is not cured within such period.
(b) Termination for Insolvency. Either party may terminate this
Agreement upon written notice if the other becomes the subject of a
voluntary or involuntary petition in bankruptcy or any proceeding relating
to insolvency, receivership, liquidation, or composition for the benefit of
creditors, if such petition or proceeding is not dismissed with prejudice
within sixty (60) days after filing.
(c) Survival. In the event of termination or expiration of this
Agreement, then the provisions of Sections 1.2, 1.3, 2, 5.1-5.4, 6, 7.3, 8,
9.2(d), 10, and 11.1 shall survive termination or expiration. Those
sections or clauses contained in the Exhibits to this Agreement which by
their nature are meant to survive shall survive termination of this
Agreement.
(d) Post-Termination Rights. Unless otherwise provided for in this
Agreement, in the event of any termination or expiration of this Agreement,
except for a material breach by PBTC, (i) all end user licenses for the
PBTC Products that have been paid for shall remain in effect, and (ii) PBTC
shall have the right to continue to use the Licensed Software, including
the Documentation, in accordance with this Agreement, for the sole and
limited purpose of supporting and maintaining existing end users of the
PBTC Product for up to one (1) additional year from such termination. PBTC
shall promptly return any and all documents, media and other items which
contain or constitute any of the Confidential Information of NEON upon the
expiration of such one (1) year period.
9.3 Termination Remedies Not Exclusive. The termination rights and
obligations of the parties set forth above in this Section 9 are not exclusive,
but are in addition to any other rights and remedies available to the parties,
in law or in equity, for breach of this Agreement.
10. LIMITATIONS OF LIABILITY
EXCEPT FOR A BREACH OF SECTIONS 1.1-1.5, 5.1-5.4, 6, or 8, IN NO EVENT WILL
EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR
INCIDENTAL DAMAGES, HOWEVER CAUSED, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. THESE LIMITATIONS OF LIABILITY WILL APPLY NOTWITHSTANDING ANY FAILURE
OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
11. GENERAL PROVISIONS
11.1 Governing Law. This Agreement shall be governed by, and interpreted
under, the laws of the State of Texas, without regard to conflict of laws
principles. The parties agree that the United Nations Convention on Contracts
for the International Sales of Goods is specifically excluded from application
to this Agreement. In the event an action is brought to enforce any provision or
declare a breach of this Agreement, the prevailing party shall be entitled to
recover, in addition to any other amounts awarded, reasonable legal and other
related costs and expenses, including attorney's fees, incurred thereby.
11.2 Compliance with Laws. Each party shall comply with all applicable
laws, rules and regulations in its performance of this Agreement. In particular,
PBTC shall not export or re-export, either directly or indirectly, any product,
information or data or any portion thereof, to any country outside of the United
States, except as permitted by relevant U.S. laws and regulations, including
without limitation the U.S. Export Administration Act and the regulations
promulgated thereunder.
11.3 Force Majeure. Neither party shall be liable for any loss, damage or
penalty resulting from delays or failures in performance hereunder, resulting
from acts of God or other causes beyond its
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control; provided that the affected party shall promptly notify the other and
use its good faith efforts to perform or effect a cure.
11.4 Assignment. This Agreement shall bind and inure to the benefit of
the successors and permitted assigns of the parties, but neither party shall
have the right to assign or otherwise transfer its rights under this Agreement
without receiving the express prior written consent of the other party, such
consent not to be unreasonably withheld. Notwithstanding the foregoing, (a) NEON
may assign or transfer this Agreement (i) to any entity or other person
controlled by, in control of, or under common control with NEON, or (ii) in the
event of a merger or a sale of all or a substantial portion of either party's
assets or stock; and (b) PBTC or NEON may assign this agreement to another
entity in connection with a corporate name-change, reorganization,
reincorporation, recapitalization or other corporate transaction, that does not
effect a change in control of the relevant company, without the consent of the
other party. In the event that a party assigns this Agreement, it is expressly
agreed that the entity to which the Agreement has been assigned shall be bound
by the same terms as those set forth in this Agreement.
11.5 Modification and Waiver. No modification to this Agreement, nor any
waiver of any rights, will be effective unless agreed to in writing by the party
to be charged. The waiver of any breach or default shall not constitute a waiver
of any other right hereunder or any subsequent breach or default.
11.6 Notices. All notices, consents and other communications hereunder to
be given in writing, as expressly provided herein, shall be transmitted to the
addresses for the parties first set forth above or to such other addresses as
either party may substitute by written notice to the other in such manner. Any
such notice shall be deemed served when delivered or, if delivery is not
accomplished by reason of some fault of the addressee, when tendered.
11.7 Severability. If any provision of this Agreement is determined to be
invalid or unenforceable, it shall be deemed to be modified to the minimum
extent necessary to be valid and enforceable. If it cannot be so modified, it
shall be deleted and the deletion shall not affect the validity or
enforceability of any other provision.
11.8 Relationship of Parties. The parties are independent contractors.
Under no circumstances will the employees of one party be deemed the employees
of the other party. This Agreement does not grant authority for either party to
act for the other in an agency or other capacity, or to make commitments of any
kind for the account of or on the behalf of the other party. There are no third
party beneficiaries of this Agreement, and nothing herein shall create any
rights in any third parties.
11.9 Entire Agreement. This Agreement, including all Exhibits hereto,
constitutes the entire and exclusive Agreement between the parties hereto with
respect to the subject matter hereof. The parties agree that this Agreement
takes precedence over and supercedes any other agreements referenced herein
solely to the extent that any conflicts or contradictions are created by such
other agreements. The Agreement shall not be modified by the terms in any
subsequent purchase order of PBTC or any invoice of NEON.
11.10 Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original, but all of which
together will constitute one and the same instrument.
11.11 Government End Users. It is NEON's position that the U.S. Government
should gain no greater or lesser rights than any other customer. NEON reserves
all unpublished rights under the United States copyrights laws. For all Federal
Acquisitions subject to the 1995 regulations, the following shall apply: This
provision applies to all acquisition of the Software by or for the U.S.
Government. In accordance with FAR 12.212 - Computer Software, the U.S.
Government shall have only those rights specified in the license contained in
any addendum to the contract.
The following FAR Clauses will be incorporated by reference for all Federal
Acquisitions:
52.212-4 Contract Terms and Conditions - Commercial Items (May 1999). In
accordance with FAR 12.302 the following provisions and clauses
are removed from
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52.212-4 and are not applicable to this Agreement: Sections (a),
(h), (n), (o) and (s).
52.212-5 Contract Terms and Conditions Required to Implement Statutes or
Executive Orders Commercial Items (Feb 2000)
52.227-19 Commercial Computer Software - Restricted Rights (Jun 87)
IN WITNESS WHEREOF, the undersigned are duly authorized to execute this
Agreement effective as of the last date set forth below.
NEON Systems, Inc. Peregrine/Bridge Transfer Corporation
By: ___________________________ By: ________________________________
_______________________________ ____________________________________
(Printed Name) (Printed Name)
Title: ________________________ Title: _____________________________
Date: _________________________ Date: ______________________________
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EXHIBIT A
LICENSED SOFTWARE
LICENSED SOFTWARE:
The Shadow Code base incorporated in the NEON 24x7 computer software product,
including object and source code therefor, as of the Effective Date.
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EXHIBIT B
Terms To Be Included in End User License Agreement
Each End User License Agreement between PBTC and its end user licensee
("End User"), for the PBTC Products shall require the End User to agree to
terms substantially as follows:
1. Title to the PBTC Product does not pass to the End User. Licensed
Software and all copies (in whole or part) shall remain the exclusive
property of NEON and its licensors.
2. End User only obtains a non-exclusive license, without the right
to sublicense, to access and/or use the Licensed Software, as applicable,
solely in conjunction with PBTC Products, and for no other purpose. End
User may make up to two copies of each PBTC Product exclusively for
inactive back-up or archival purposes. All archival and backup copies of
the PBTC Products are subject to the provisions herein, and all titles,
trademarks, confidentiality, and copyright and restricted rights notices
shall be reproduced in such copies.
3. End User shall not transfer, assign or license the use of all or
any portion of the Licensed Software to any third party or entity.
4. The Licensed Software included in the PBTC Products constitutes
highly valuable property of NEON and its licensors and contains trade
secrets and confidential information owned by NEON. End User shall observe
complete confidentiality with respect to the Licensed Software, and End
User shall not disclose all or any portion thereof to any third party or
entity, except to its employees, consultants and contractors as required in
the course of their work for PBTC, provided such employees, consultants and
contractors are under a confidentiality agreement that complies with the
terms of this Agreement.
5. End User shall not modify, decompile, disassemble or otherwise
reverse engineer, reverse assemble or reverse compile or create derivative
works based on the Licensed Software or any part thereof.
6. NEON has made no representation or warranties to the End User, and
End User shall look solely to PBTC with respect to any claim related to any
PBTC Products.
7. End User shall not remove or alter NEON's ownership, trademark,
copyright or other proprietary notices on the Licensed Software.
8. End User shall not transfer, directly or indirectly, any
restricted Licensed Software within the PBTC Product to any destination
subject to export restrictions under U.S. law, unless prior written
authorization is obtained from the appropriate U.S. agency.
9. THE PBTC PRODUCTS ARE PROVIDED "AS IS", WITH ALL FAULTS. PBTC, ITS
AFFILIATES AND LICENSORS SPECIFICALLY DISCLAIM ALL OTHER WARRANTIES,
INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT AND QUIET ENJOYMENT.
PBTC DOES NOT WARRANT THAT THE OPERATION OF THE PBTC PRODUCTS WILL BE
UNINTERRUPTED OR ERROR FREE, OR THAT ALL PRODUCT DEFECTS CAN BE CORRECTED.
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10. NEITHER PBTC, ITS AFFILIATES, NOR LICENSORS ARE LIABLE FOR ANY
SPECIAL, INDIRECT, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES RELATING
TO THIS AGREEMENT AND/OR ANY OF THE PBTC PRODUCTS (INCLUDING WITHOUT
LIMITATION LOST PROFITS, LOST COMPUTER USAGE TIME, AND DAMAGE OR LOSS OF
USE OF DATA), EVEN IF THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES, AND IRRESPECTIVE OF THE NEGLIGENCE OF ANY SUCH PARTY OR
WHETHER SUCH DAMAGES RESULT FROM A CLAIM ARISING UNDER TORT OR CONTRACT
LAW.
11. LIMITED RIGHTS DATA AND RESTRICTED RIGHTS COMPUTER SOFTWARE.
UNPUBLISHED - RIGHTS RESERVED UNDER THE COPYRIGHT LAWS OF THE UNITED
STATES. Use, duplication, or disclosure of any data and computer software
by the U.S. Government is subject to restrictions, as applicable, set forth
in FAR Section 52.227-14, DFARS 252.227-7013, DFARS 227.227-7014, DFARS
252.227-7015, and DFARS 252.227-7025, as amended from time to time.
Contractor/Manufacturer is NEON Systems, Inc., 00000 Xxxxxxxxx Xxxxxxx,
Xxxxx 000, Xxxxx Xxxx, Xxxxx 00000, XXX. Any contract notices should be
sent to this address.
12. The provisions of paragraphs 1, 4, 5, 6, 7, 9, 10, and 11 shall
survive any expiration of the term of End User License Agreement.
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