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EXHIBIT 10.25
CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
FIRST AMENDMENT TO THE
SOFTWARE LICENSE AGREEMENT
BETWEEN
XXXXXX XXXXXXXXXXX
AND
PHOENIX INTERNATIONAL LTD, INC.
This First Amendment to the Software License Agreement (this
"Agreement") is entered into as of this 27th day of December, 1996 (the
"Effective Date") by and between Xxxxxx Xxxxxxxxxxx ("Unisys"), with offices at
0000 Xxxx Xxxxxxxx Xxxx Xxxx, Xxxxx 000, Xxxx Xxxxx, Xxxxxxx 00000; and Phoenix
International Ltd, Inc. ("Phoenix"), with offices at 000 Xxxxxxxxx Xxxxx, Xxxxx
000, Xxxxxxxx, Xxxxxxx 00000.
WITNESSETH THAT:
WHEREAS, Phoenix and Unisys entered into that certain Software License
Agreement earlier in 1996 (the "Original Agreement"; the Original Agreement as
amended by this Amendment is referred to as the "Agreement"); and
WHEREAS, the parties wish to make certain changes to the Original
Agreement by this Amendment;
NOW THEREFORE, in consideration of the mutual covenants herein
contained, the parties hereto, intending to be legally bound by the provisions
hereof, hereby agree as follows:
I. Section 2.1(2) shall be replaced in its entirety with the following,
so as to stipulate the license fee to be paid by each End User that is provided
with Source Code for the Package, and to enumerate the restrictions applicable
to such End User's use of the Source Code:
Grant End Users sublicenses to the Package and Documentation
pursuant to License Agreements. To the extent so provided in
the applicable License Agreements, such sublicenses may extend
after termination of this Agreement, notwithstanding the
limited term of this Agreement. License Agreements may
include a license for, or an option to license, Source Code
obtainable or exercisable upon payment of a Source Code
license fee in an
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
amount XXXXXXXXXXXXXXXXXXXXXXXX (or, if the price or other
terms for the Source Code license prove to XXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX as the parties may
mutually agree on a case-by-case basis). Each Source Code
license must contain restrictions on use and disclosure,
provisions for ownership and protection of intellectual
property rights, and provisions for term and termination
before such Source Code license is granted or exercised. The
Source Code license fee shall be shared by the parties as
provided in Part I of Addendum B. Except as provided pursuant
to such a Source Code option or license, the End User shall
not be permitted to receive access to or delivery of Source
Code for the Package.
II. Section 3.3 shall be replaced in its entirety with the following, so
as to amend the minimum sublicensing criteria that Unisys must satisfy in order
to maintain exclusivity otherwise provided in Section 3.1 hereof:
3.3 The exclusivity described in Section 3.1 applicable in the
Territory shall continue until December 31, 1998 and
thereafter shall automatically renew for additional periods of
one (1) year each so long as the term of this Agreement
continues and Unisys sublicenses XXXXXXXXXXXX:
XXXXXXXXXXXXXX by December 31, 1998
XXXXXXXXXXXXXX by December 31, 1999
The minimum number of copies of the Package required to be
sublicensed in order for Unisys to maintain exclusivity in
renewal years extending on or after January 1, 2000 shall be
determined in accordance with Section 5.2 hereof.
For purposes of this paragraph, a "sublicense" means the
execution by the End User of a License Agreement for the
Package that provides for payment to Unisys of license fees in
accordance with Section 6.2 hereof sufficient to meet the per
copy and branch minimum royalty requirements established for
the Package as set forth in Addendum B hereto.
Sublicenses granted to Off-Shore Banks or any other End User
that does not agree to pay license and branch fees sufficient
for Phoenix to receive at least the minimum royalties set
forth in Addendum B hereto shall not be counted as sublicenses
of a copy of the Package for purposes of the exclusivity
criteria set forth in this paragraph, unless otherwise agreed
by
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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Phoenix in writing in advance.
If the Territory is hereafter expanded, the provisions under
which Unisys may obtain and maintain exclusivity (if
applicable) in additional areas shall be as agreed to by the
parties in the amendment providing for such expansion.
III. Section 4.2 shall be replaced in its entirety with the following, so
as to modify the conditions under which Unisys may market software products
which may be competitive with the Package:
4.2 Notwithstanding Section 4.1 hereof, the parties agree that
Unisys may market the SFB Product (or other software product
which may be competitive with the Package, with the
concurrence of Phoenix, such concurrence not to be withheld
absent compelling competitive reasons) under the following
circumstances:
(1) The customer requires a mainframe-based
application; or
(2) The customer is a current user of the SFB
Product (i.e., licensed to use the SFB
Product on the Effective Date) and desires to
continue to use and license the SFB Product
(including, for purposes of this Section
4.2(2) only, versions of the SFB Product
operating in a UNIX environment); or
(3) The customer indicates that the Package is
priced outside of the upper limits of the
customer's budgetary envelope (which the SFB
Product or another competitive software
product would otherwise satisfy); or
(4) The parties hereto mutually determine that
the Package cannot support the number of
branches requested by the End User (and for
such purpose, it is mutually acknowledged
that a single implementation of the Package
would not support more than 75 branches,
although the parties hereto may hereafter
determine that a greater or lesser number
should apply in view of practical experience
and plans, including Changes made or proposed
from time to time); or
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
(5) The customer is one of up to 10 prospective
customers of Unisys for which Unisys has
already provided significant marketing
effort, as identified on a list to be
provided to Phoenix by March 22, 1996.
In no event, however, without Phoenix's prior written consent,
(a) may the Package or Documentation be provided to an End
User to be used concurrently with a competitive software
product, including the SFB Product, unless the package is
being used concurrently with a competitive software product on
a temporary basis while the Package is being implemented as a
replacement for such competitive software product or (b) may
the Package or Documentation be merged or integrated, in whole
or in part, with any competitive software product, including
the SFB Product or related SFB documentation.
IV. Sections 5.1 and 5.2 shall be replaced in their entirety with the
following, so as to modify the expiration date of the initial term and change
the minimum sublicensing criteria that Unisys must satisfy in order to maintain
exclusivity otherwise provided in Section 3.1 hereof:
5.1 The initial term of this Agreement shall commence on the
Effective Date and shall continue for an initial period ending
on December 31, 2000.
5.2 Beginning six (6) months before expiration of the initial term
and each applicable renewal term (which, unless otherwise
agreed, shall be for terms of three (3) years each), the
parties agree to commence discussion and negotiation of the
minimum number of sublicenses of the Package that have to be
generated during each year of the ensuing renewal term in
order for Unisys to maintain exclusivity (it being agreed that
Phoenix will not require such number to be greater than
XXXXXXXX per year), the minimum license fees set for each
sublicense, and other terms applicable for renewal of this
Agreement. Unless otherwise agreed, exclusivity criteria
shall be applied on a cumulative basis within each renewal
term, and Unisys shall receive credit in any renewal term for
exceeding the exclusivity criteria in any prior term. Subject
to agreement on such additional terms, and provided that each
party is otherwise in compliance with the terms of this
Agreement and that Unisys has continuously satisfied the
criteria necessary to maintain exclusivity otherwise provided
in Section 3.1 hereof, this Agreement shall automatically
renew for a further period of three (3) years upon expiration
of the initial term and each renewal term.
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
V. Section 6.1 shall be replaced in its entirety with the following, so
as to modify the amount, terms of payment, and credit terms for the initial
royalties applicable for the Package and Documentation and certain other
deliverables:
1. For delivery of a copy of the Package and Documentation in its
then-existing form (Delivery #1) to Unisys upon execution of
the Agreement, and in consideration of the license granted to
Unisys in Section 2.1 with respect thereto, Unisys agrees to
pay Phoenix an initial royalty for the Package and
Documentation, in its existing form, XXXXXXXXXXXXXX, which the
parties acknowledge has been paid in full.
2. For delivery of Unisys Release 1.3.7 of the Package (Delivery
#2), scheduled to occur within fifteen (15) days after
execution of this Amendment, and in consideration of the
license granted to Unisys in Section 2.1 with respect thereto,
Unisys agrees to pay Phoenix the sum of XXXXXXXXXX.
3. For delivery of Unisys Release 2.0 of the Package, (Delivery
#3), scheduled to occur by March 15, 1997, and in
consideration of the license granted to Unisys in Section 2.1
with respect thereto, Unisys agrees to pay Phoenix the sum of
XXXXXX.
Payment of the foregoing amounts shall be made as follows:
Amount Payment Date
------ ------------
Delivery 2 XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
Delivery 3 XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
XXXXXXX XXXXXXXXXXXXXXXXXXXXX
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
Upon delivery of each Delivery (#1 - #3), the corresponding payment
shall be fully earned, unconditionally payable on the schedule
provided above and nonrefundable; each Delivery (#1 - #3) is distinct
and executable without the necessity of subsequent Deliveries.
Such initial royalties, to the extent paid, shall be applied on
XXXXXXXXXXXXX basis as a credit for additional royalties payable under
Section 6.2 hereof, up to a limit of XXXXXXXX per sublicense, but may
not be applied to implementation, customization, or other service
charges.
To the extent royalties are actually paid by Unisys under Section 6.2
hereof (and not merely credited under Section 6.2 as provided in the
immediately preceding paragraph of this Section 6.1), then to the
extent of any outstanding balance of initial royalties payable under
this Section 6.1, the royalties paid under Section 6.2 shall be
applied on a XXXXXXXXXXXXXX basis as a credit against the outstanding
balance of initial royalties payable under this Section 6.1, up to a
limit of XXXXXXXX per sublicense, XXXXXXXXXXXXXXXXXXXXXXXXXX.
VI. New paragraphs 8.6 and 8.7 shall be added to the Agreement, to clarify
Phoenix's obligation to maintain the competitive position of the Package, as
follows:
8.6 No later than XXXXXXXXXXXXXXXXX, Phoenix shall demonstrate, to
the reasonable satisfaction of Unisys, that Changes have been
made to the Package such that it will be capable to support an
installation of at least XXXXXXXXXXXXXXXXXXXXXXX with
satisfactory performance, including such parameters as product
stability, response time, daily reconciliation, etc. If
Phoenix fails to achieve this objective by XXXXXXXXXXXXXXXXX,
Unisys shall be entitled to pay XXX XXXXXXXXXXXXXXX otherwise
payable to Phoenix in XXXX, up to an amount which does not
exceed the initial royalties paid under Section 6.1 offset by
any royalties paid to Phoenix under Section 6.2 as of
XXXXXXXXXXXXXXXXX, into an escrow account until Phoenix meets
the objective, at which time the balance will be paid to
Phoenix; provided, however, that if the objective is not met
by XXXXXXXXXXXXXXXXX, Unisys shall be entitled to retain the
proceeds of the escrow account without further obligation to
Phoenix hereunder.
8.7 No later than XXXXXXXXXXXXXXXXX, Phoenix shall demonstrate, to
the reasonable satisfaction of Unisys, that Changes have been
made to
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
the Package such that it will be capable to support an
installation of at least XXXXXXXXXXXXXXXXXX with satisfactory
performance, including such parameters as product stability,
response time, daily reconciliation, etc. If Phoenix fails to
achieve this objective by XXXXXXXXXXXXXXXXX, there will be a
revision of Part I of Addendum B hereof, such that the Gross
Proceeds from license and branch fees on all License
Agreements entered into after XXXXXXX XXXX shall be paid
XXXXXXXXXX.
VII. Section 20.3 shall be replaced in its entirety with the following:
20.3 Each individual who Unisys permits to receive access to the
Source Code shall be prohibited from simultaneously
participating in any design, development or programming
activities relating to any software product or programming
that is competitive with the Package, with the sole exceptions
of (1) the SFB Product (to the extent allowed under Section
4.2 hereof), (2) such other software product or programming as
Phoenix may approve under Section 4.2 hereof, and (3) such
other product or programming as Phoenix may approve in the
future after receiving the notice required by Section 4.1
hereof.
VIII. The third and fourth paragraphs of Part I of Addendum B shall be
replaced with the following:
XXXXXXXXXXXXXXXXXXXXXXXXX from license and branch fees on all other
License Agreements.
XXXXXXXXXXXXXXXXXXXXXXXXX from the Source Code license fees paid by
End-Users prior to XXXXXXXXXXXXXX, and XXXXXXXXXXXXXXXXXXXX from the
Source Code license fees paid by End-Users after XXXXXXXXXXXXXX.
VI. The second, third and fourth paragraphs of Part II of Addendum B shall be
replaced in their entirety with the following:
XXXXXXXXXXXXXXXXXX from support and/or maintenance fees paid by all
End Users in connection with each sublicense of the Package -- for all
payments due or received from any or all End Users (regardless of when
the sublicense is executed) until 1 year after the First Conversion
Date. (For such purpose,
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
the "First Conversion Date" shall mean the date on which Conversion
and implementation have been completed for the first End User
sublicensed by Unisys.)
XXXXXXXXXXXXXXXXXXXXXX from support and/or maintenance fees paid by
all End Users in connection with each sublicense of the Package -- for
all payments due or received for all payments due or received from any
or all End Users (regardless of when the sublicense is executed)
between 1 year and 2 years after the First Conversion Date.
XXXXXXXXXXXXXXXXXXXXX from support and/or maintenance fees paid by all
End User in connection with each sublicense of the Package -- for all
payments due or received for all payments due or received from any or
all End Users (regardless of when the sublicense is executed) after 2
years after the First Conversion Date.
IX. Parts II and III of Addendum E shall be replaced in their entirety
with the new Parts II and III of Addendum E attached to this Amendment, so as
to delete the list of Pre-Qualified End Users and revise the list of Hold-Out
Accounts.
X. Capitalized terms used herein and not otherwise defined shall have the
meaning provided in the Original Agreement. Except as expressly provided
otherwise in this Amendment, the provisions of the Original Agreement shall
remain in full force and effect.
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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IN WITNESS WHEREOF, this Amendment has been duly executed by the parties
hereto, as of the date shown above.
Phoenix International Ltd, Inc. Xxxxxx Xxxxxxxxxxx
By: /s/ Xxxxxx Xxxxxxxxxx By: /s/ Xxxx X Xxxxxx
------------------------------- -------------------------------
Xxxxxx Xxxxxxxxxx Xxxx X. Xxxxxx
----------------------------------- ------------------------------------
(Printed Name) (Printed Name)
Title: Chairman & CEO Title: President
--------------------------- ----------------------------
Date: 12-27-96 Date: 12-27-96
---------------------------- -----------------------------
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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Parts II and III of Addendum E (New)
Part II: Pre-Qualified End Users
Deleted.
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
Part III. Hold-Out Accounts
Existing End Users:
XXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXX
First Amendment to Software License Agreement
between Xxxxxx Xxxxxxxxxxx and Phoenix International Ltd., Inc.
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