Exhibit 10.14
SOFTWARE DEVELOPMENT, MARKETING
AND
ROYALTY AGREEMENT
(GSI)
This SOFTWARE DEVELOPMENT, MARKETING AND ROYALTY AGREEMENT (this
"Agreement") is entered into this ___ day of January, 2001, by and among ORION
HEALTHCARE TECHNOLOGY, INC., an Iowa corporation, formerly known as Accurate
Assessments, Inc., an Iowa corporation, with offices at 0000 Xxxxxx Xxxxxx,
Xxxxx 000, Xxxxx, Xxxxxxxx 00000 ("Orion"), SOUTH OAKS FOUNDATION, a non-profit
corporation, with offices at 000 Xxxxxxx Xxxxxxx, Xxxxxxxxxx, Xxx Xxxx 00000,
and WSNCHS EAST, INC. d/b/a South Oaks Hospital, a non-profit corporation, with
offices at 000 Xxxxxxx Xxxxxxx, Xxxxxxxxxx, Xxx Xxxx 00000 (together, "South
Oaks").
WHEREAS, South Oaks has developed the Gambling Severity Index ("GSI"), a
written questionnaire completed manually by practitioners providing treatment or
conducting research in the area of gambling addictions;
WHEREAS, Orion is a leading developer and marketer of computer software in
the healthcare field related to addictions, including, without limitation,
gambling;
WHEREAS, the parties desire to enter into a relationship whereby Orion will
(a) convert the written text comprising GSI into a computer software program
(the "Software") and thereby automate certain functions of GSI, (b) market, sell
and license the Software and (c) pay South Oaks a royalty for each copy of the
Software licensed or sold;
WHEREAS, South Oaks owns rights in and to GSI;
WHEREAS, South Oaks has agreed to grant Orion a license to use GSI in
connection with Orion's duties described in this Agreement;
WHEREAS, Orion has agreed to develop, market, sell and license the Software
on behalf of South Oaks on condition that, among other things as more
particularly described in this Agreement Orion has the exclusive right to so
develop, market, sell and license the Software;
NOW, THEREFORE, in consideration of the above premises and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, Orion and South Oaks hereby agree as follows:
1. DEVELOPMENT OF THE SOFTWARE. South Oaks hereby grants Orion the
exclusive right to develop a software program incorporating and automating GSI
and Orion hereby agrees to review GSI and develop and convert the text and
substance of GSI into a computer software program designed to automate the
screen. South Oaks reserves unto itself any and all other rights in and to GSI
not herein specifically and expressly granted to Orion.
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2. MARKETING AND SALES OF THE SOFTWARE.
a. South Oaks hereby grants Orion the exclusive right and Orion hereby
agrees to actively market, promote, license and sell the Software.
b. Orion may solicit orders directly or through subcontractors or
agents. Orion shall be responsible for its employees', subcontractors' or
agents' acts or omissions in performing marketing services and for the
payment of amounts owed (if any) to its employees, subcontractors, or
agents, as may be appropriate.
c. Orion, in its sole discretion, may develop specific sales and
marketing materials for use in the marketing and licensing of the Software,
which materials may be reviewed by South Oaks. Orion shall retain all
right, title and interest in all such marketing materials.
d. Orion shall bear the sole responsibility for the delivery of the
Software to licensees and for the billing and collection of all amounts
owed to Orion through its licensing or sales of the Software.
e. Unless otherwise specified herein, Orion agrees that the use of the
Software by licensees shall be pursuant to applicable licensing agreements,
manuals and any other documentation developed by Orion.
f. Orion shall maintain full, clear and accurate records with respect
to each and every copy of the Software distributed by Orion, each license
granted, each license agreement executed, and all receipts from
installation, maintenance and support of the Software and all other
revenues related thereto. South Oaks further agrees to cooperate fully with
Orion should a dispute arise with a licensee or another entity regarding
the sale, licensing, distribution or maintenance and support of the
Software, including, without limitation, the right to use trademarks,
servicemarks, trade names, logos and copyrighted materials for which a
license is granted pursuant to this Agreement.
g. Title to the Software and all patents, copyrights, trademarks,
design rights, trade secrets, moral rights and other proprietary rights in
the Software are and will remain the exclusive property of Orion,
regardless of whether specifically recognized or perfected under the laws
of the country where the Software is used; provided, however, that South
Oaks is not relinquishing any of its right to GSI. South Oaks will not (i)
take any action that jeopardizes any proprietary rights that Orion may
develop, (ii) acquire any right in the Software without the express written
consent of Orion other than those rights to GSI it has retained, or (iii)
perform any reverse engineering of the Software.
3. GRANT OF LICENSES TO ORION. South Oaks hereby grants to Orion a
non-exclusive license to use its trademarks, servicemarks, trade names and
logos, including, without limitation, the name "Gambling Severity Index," "South
Oaks Foundation," "South Oaks Hospital" and abbreviations and derivations
thereof (collectively, the "Marks") in the Software and materials used to
market, promote, license, sell and distribute the Software. South Oaks hereby
grants to Orion a world-wide royalty-bearing exclusive license to use any and
all of the copyrighted
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material comprising the Gambling Severity Index in writing, developing,
commercializing, marketing, promoting, licensing and selling the Software.
4. ROYALTY PAYMENTS.
a. Orion hereby agrees to pay a royalty to South Oaks for the use of
GSI, which royalty shall be paid as follows:
i. five percent (5%) of the retail price of each copy of the
Software licensed or sold as a separate, stand-alone product (a
"Stand-Alone Sale"); and
ii. $15.00 for each copy licensed or sold as a unit bundled,
combined or packaged together with other software products licensed or
sold by Orion.
b. With respect to any copies of the Software returned to Orion for
full refund, South Oaks shall repay to Orion any royalty paid by Orion for
such returned copy of the Software.
c. On or before the 15th of March, June, September and December, Orion
shall remit to South Oaks the appropriate payments for the Software
licensed or sold by Orion during the previous month, together with a
written royalty statement setting forth the total sales or licenses of the
Software (identifying the Stand-Alone Sales and Bundled Sales during the
period covered by the statement) and the total of royalty payments
previously made which should be repaid to Orion as the result of returns of
the Software.
d. Orion shall pay directly all income, franchise, sales, use,
personal property, ad valorem, value added, stamp or other taxes, levies,
customs duties or other imposts or fees, including withheld taxes (except
only a tax levied by the United States of America or the States of Nebraska
or New York based on the net income of South Oaks), together with all
penalties, fines and interest thereon that in any way arise out of this
Agreement, whether on or measured by the price, the charges, the programs
or the services furnished, or their use, however designated, levied or
based (hereinafter collectively called "Tax").
e. With respect to any copies of the Software licensed or sold as the
result of the independent marketing or referral efforts of South Oaks, the
royalty fee due to South Oaks shall be calculated in accordance with the
provisions of paragraph a. above.
5. INSTRUCTION AND TRAINING. Intentionally omitted.
6. ASSIGNMENT. This Agreement may not be assigned in whole or in part by
either party without the prior written approval of the other party, which shall
not be unreasonably withheld; provided, however, Orion may assign this Agreement
to any present or future affiliate or subsidiary or assign its right to receive
payment hereunder without such consent.
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7. SOUTH OAKS'S REPRESENTATIONS AND INFRINGEMENT CURE. South Oaks hereby
represents and warrants that it owns and has title in and to GSI, free of claims
by third parties. South Oaks hereby further represents that South Oaks has not
granted similar or conflicting rights or exclusive licenses to any third party
with respect to GSI and that to the best of South Oaks' knowledge, the
development, marketing, licensing, sale or delivery of the Software will not
infringe upon the proprietary rights of any third party. In the event the
Software becomes the subject of a claim for patent or copyright infringement or
other infringement of proprietary rights, whether such claim is asserted against
Orion or South Oaks or any licensee of the Software, (a) South Oaks agrees to
(i) assist Orion in any effort to protest such claim or procure the right to
continue to use the Software and (ii) in the event any of South Oaks's
representations and warranties above is false, pay Orion's costs in connection
with the actions to be taken by Orion under (i), including, without limitation,
reasonable attorneys' fees; and (b) Orion may (i) at its cost, procure the right
to continue using the Software; or (ii) modify the Software so as to make it
non-infringing. If Orion, in its sole discretion, determines that it is not
reasonably able to procure such rights or so modify the Software or otherwise
secure the right to continue using the Software, then this Agreement shall
terminate and Orion shall, within 30 days of the termination, remit to South
Oaks any royalty fees due for licensed or sold Software, less any credits due to
Orion for royalty fees paid on returned Software. This Section 7 states the
entire and exclusive obligation of Orion to South Oaks and of South Oaks to
Orion relating to the Software with respect to any actual or alleged
infringement of patents, copyrights or other proprietary rights of third parties
by the Software or any part thereof.
8. FORCE MAJEURE. Neither party shall be liable for delays in performance
of this Agreement caused by acts of God, government restrictions or
interference, strikes or other labor disputes, fires, power outages,
communications failures, or for any other cause, to the extent that any such
causes are beyond its reasonable control; provided, however, that if such delay
shall continue for thirty (30) days, then either party may terminate this
Agreement upon thirty (30) days' written notice to the other party. If the
non-performing party performs within said thirty (30) day period, then this
Agreement shall continue in full force and effect as though no such notice had
been given. In no event shall failure to timely pay amounts owed be excused.
9. INDEPENDENT CONTRACTOR. In connection with this Agreement, each party
is an independent contractor and as such will not have any authority to bind or
commit the other party except as provided hereunder. Nothing herein shall be
deemed or construed to create a joint venture, partnership or agency
relationship between the parties for any purpose.
10. LIMITATION OF LIABILITY.
a. No party shall be liable for damages caused by acts or events
beyond either party's control. In addition, neither party shall have
liability for information or advice supplied by third-party vendors.
b. No party shall be liable for incidental, indirect, special or
consequential damages or for lost profits, savings or revenues of any kind,
whether or not the party has been advised of the possibility of such
damages.
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c. Orion shall not be liable for any damages arising from the
unavailability of the Software.
11. TERM AND TERMINATION.
a. The term of this Agreement commences on the date first set forth
above and shall terminate one year thereafter. After the expiration of the
initial term of the Agreement, the Agreement shall automatically renew for
additional twelve (12) month terms unless terminated or canceled by either
party as set forth in paragraph 11(b) below.
b. Upon any material default by a party under this Agreement, the
other party may terminate this Agreement by giving not less than thirty
(30) days' prior written notice to the defaulting party; provided, however,
the defaulting party shall have the right to cure such default within such
thirty (30) day period. If not cured within such thirty (30) day period,
the Agreement shall terminate upon the expiration of such thirty (30) day
period. In addition and notwithstanding the foregoing, either party may
terminate this Agreement at any time with 30 days' prior written notice to
the other party.
c. Upon termination for any reason, each party shall pay to the other
any royalty fee due or due to be refunded within 30 days of termination.
12. MISCELLANEOUS.
a. MODIFICATIONS. This Agreement may be amended, restated,
supplemented or otherwise modified from time to time, provided, however,
that any amendment, restatement, supplement, modification or waiver of
any provision of this Agreement or any Attachment to this Agreement must
be in writing and signed by authorized representatives of both parties.
b. SEVERABILITY. If any portion of this Agreement is found to be
invalid or unenforceable, the parties agree that such provisions shall be
enforced to the greatest extent permitted by law and the remaining portions
shall remain in effect. The parties further agree that in the event such
invalid or unenforceable portion is an essential part of this Agreement,
they will immediately begin good faith negotiations for a replacement.
c. NO WAIVER. If either party fails to enforce any right or remedy
available to it under this Agreement, such failure shall not be construed
as a waiver of any right or remedy with respect to any other breach or
failure by the other party.
d. GOVERNING LAW. This Agreement and all matters arising out of or
relating to this Agreement shall be governed by the laws of the State of
Nebraska and shall be deemed to be executed in and the Software performed
from Omaha, Nebraska.
e. SURVIVAL OF TERMS. The respective obligations of Orion and South
Oaks hereunder which by their nature would continue beyond termination or
expiration hereof shall survive the termination or expiration of this
Agreement.
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f. AUTHORIZATION. Each party represents and warrants that it has the
power and authority to execute this Agreement and that the individual
signing this Agreement is authorized to do so. The parties further
represent and warrant that upon execution of this Agreement, it shall be a
valid and binding agreement between the parties enforceable in accordance
with its terms.
g. ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
between the parties with respect to the Software and supersedes all prior
or contemporaneous agreements, proposals or understandings, whether written
or oral.
13. NOTICES. Any notice required or permitted hereunder shall be in
writing and addressed to the other parties as first set forth in this Agreement
or to the last known address of such party. Any notice sent shall be deemed to
be received and valid upon (i) actual receipt, if hand delivered, (ii) three
business days from date on which such notice was sent, if sent by certified or
first class mail, postage prepaid, or (iii) upon the next business day if such
notice was sent by facsimile or overnight mail.
REMAINDER OF PAGE INTENTI0NALLY LEFT BLANK
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first written above.
ORION HEALTHCARE TECHNOLOGY, INC., an
Iowa corporation
By
-------------------------------------
Name
-----------------------------------
Title
----------------------------------
SOUTH OAKS FOUNDATION, a non-profit
corporation
By
-------------------------------------
Name
-----------------------------------
Title
----------------------------------
WSNCHS EAST, INC. d/b/a South Oaks
Hospital, a non-profit corporation
By
-------------------------------------
Name
-----------------------------------
Title
----------------------------------
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