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EXHIBIT 10.5
DATED 30th December 1998
SOFTWARE LICENCE
MATCH HEALTH CARE (1)
SERVICES LIMITED
MPOWER SOLUTIONS INC (2)
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Tel: ▇▇▇▇-▇▇▇ ▇▇▇▇
Fax: ▇▇▇▇ ▇▇▇ ▇▇▇▇
Ref: 0847658.01
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THIS AGREEMENT is made the 30th day of December 1998
BETWEEN:-
(1) MATCH HEALTHCARE SERVICES LIMITED whose registered office is at ▇▇▇▇▇▇▇
House, Red Lion Square, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇
(the "Licensor"); and
(2) MPOWER SOLUTIONS INC, with its principal offices at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (the "Licensee")
WHEREAS:-
(A) The Licensor is the owner of a computer software product known as
Matchnet further details of which are set out in Schedule 1 (the
"Software").
(B) The Licensee wishes to acquire from the Licensor a licence to use modify
and sublicense the use of the Software in the Territory (as defined in
Schedule 3) and the Licensor is willing to grant such an agreement on
the terms of this agreement.
NOW IT IS HEREBY AGREED AS FOLLOWS:
1. GRANT OF LICENCE
1.1 In consideration of the payments to be made by the Licensor pursuant to
Clause 3 the Licensor hereby grants to the Licensee and the Licensee
hereby accepts the following exclusive licences in respect of the
healthcare market in the Territory (save as provided below) and
non-exclusive licences in respect of the non healthcare market in the
Territory each of which licences shall be non-transferable (the
"Licenses"):
1.1.1 a licence to use alter amend upgrade translate modify and enhance
the Software to integrate the Software with the Licensee's
software products;
1.1.2 a licence to market distribute and grant a sub-licence of the use
(but not to modify or further sub-licence the Software) of the
Software.
Provided that such exclusivity will forthwith cease and such licences shall
become non-exclusive on the expiry of 18 months from the Commencement Date if
the sales targets set out at Clause 5.1.1 are not achieved and where such sales
targets are achieved but the sales targets set out in Clause 5.1.2 are not
achieved then the
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exclusivity shall terminate at the end of 30 months from the Commencement Date.
Notwithstanding the above the exclusivity shall in any event forthwith terminate
on the expiry of 10 years from the Commencement Date.
1.2 The Licensor shall promptly following the signature of this Agreement
furnish the Licensee with one reproducible copy of the Software together
with its current (as at the date hereof) user manual written operating
instructions therefor.
2. TERM
The Agreements shall take effect on the date of the signature by the
parties of this Agreement ("the Commencement Date") and shall continue
thereafter until or unless terminated by either party pursuant to
Clause 11.
3. LICENCE FEE AND ROYALTIES
3.1 In consideration of the grant of the Licences the Licensee shall pay to
the Licensor:
3.1.1 the sum of US $850,000 (the "Initial Fee") in accordance with
Schedule 2; and
3.1.2 a sum equal to 17.5% of all sums received or paid to the Licensee
in respect of sales or licences granted by the Licensee of the
Software or any products sold or licences granted by the Licensee
in each year during the term of this Agreement (including in
respect of sales made prior to the termination of this Agreement,
and received after the termination of the Agreement) which
contain the Software (in whole or in part) ("Relevant Products)
such payments shall be made within 90 days of the date of the
Licensor's invoice therefor.
3.2 If any deduction or withholding is required by law in respect of any
payment due to the Licensor, the Licensee shall pay such additional
amounts as may be necessary to ensure that the Licensor receives a net
amount equal to the full amount which it would have received had the
payment not been subject to the withholding.
4. TECHNICAL ASSISTANCE
4.1 From the Commencement Date until the Licensee's first installation of
the Software with an end user the Licensor shall provide the Licensee
with all reasonable and necessary technical support (excluding
developmental programming) in connection with the operation of the
Software to facilitate the handover of an operational product ("the
Assistance") and shall during the 6
* Confidential Treatment Requested
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months following the signature of the Licensor's first licence of the
Software provide to the Licensee Assistance in connection with the
operation of the Software up to a maximum of 10 man days per month the
Assistance to be provided pursuant to this Clause 4.1 shall be free of
charge.
4.2 The Assistance to be provided pursuant to Clause 4.1 shall wherever
possible be provided remotely by or on behalf of the Licensor provided
that if in the reasonable opinion of the Licensor it is desirable or at
the request of the Licensee the Licensor may provide such assistance at
the premises of the Licensee in which case the Licensee shall pay all
costs reasonably incurred by the Licensor in respect of travel
subsistence and accommodation within 60 days of the date of the
Licensor's invoice in respect thereof.
4.3 If the Licensee requests any Assistance in excess of that to be provided
pursuant to Clause 4.1 then any such Assistance provided by the Licensor
will be at its then prevailing time and materials rates and otherwise on
terms to be agreed between the parties.
5. SALES TARGETS
5.1 The Licensee shall during the term of this Agreement attain the
following sales of the Relevant Products:-
5.1.1 during the first 18 months, from the Commencement Date the
Licensee shall achieve no less than $2,000,000 worth of sales of
the Relevant Products; thereafter
5.1.2 the Licensee shall achieve no less than $3,000,000 worth of sales
per year of the Relevant Products.
6. LICENCEES END-USERS
The Licensee shall ensure that the terms of its sub-licence to its
end-users contains a prohibition on granting any further licences or sub
licences in respect of the Software and to the maximum extent permitted
by applicable law not to modify or reverse engineer the Software and the
Licensee undertakes to the Licensor that it will not distribute any
copies of the Software (in whole or in part) to any end user prior to
receiving its written acceptance of such prohibition.
7. UNDERTAKINGS BY THE LICENCEE
The Licensee undertakes and agrees with the Licensor that it will at all
times
* Confidential Treatment Requested
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during the continuance in force of this Agreement and where applicable,
following termination hereof observe and perform the terms and
conditions set out in this Agreement and in particular;
7.1 will use at all times its best endeavours to promote and extend the
market for the Software to all potential licensees in the Territory and
work diligently to obtain the Sales Targets;
7.2 will at its own expense provide advertising and publicity for the
Software;
7.3 will not without the previous consent in writing of the Licensor be
concerned or interested either directly or indirectly in the production,
importation, sale, licensing or advertisement of any software which is
so like or similar to the Software as to be capable of restricting,
competing or otherwise interfering with or which might otherwise
restrict or interfere with the market for the Software;
7.4 will not incur any liability on behalf of the Licensor or in any way
pledge or purport to pledge the Licensor's credit or purport to make any
contract binding upon the Licensor;
7.5 will not alter, obscure, remove, conceal or otherwise interfere with any
eye-readable or machine-readable marking on the Software which refers to
the Licensor as author or developer of the Software or otherwise refers
to the Licensor's copyright or other intellectual property rights in the
software;
7.6 will permit any duly authorised representative of the Licensor upon
reasonable prior notice to enter into any of the Licensees' premises for
the purpose of ascertaining that the provisions of this Agreement are
being complied with by the Licensee;
7.7 will immediately bring to the attention of the Licensor any improper or
wrongful use of the Licensor's trade marks, intellectual or commercial
property rights which come to the notice of the Licensee and will in the
performance of its duties under this Agreement use every effort to
safeguard the property rights and interests of the Licensor and will at
the request and cost of the Licensor take all steps required by the
Licensor to defend such rights;
7.8 will during the continuance of the Agreement keep full accurate and
up-to-date details of the number of sales and the amount of revenue
payable and received and outstanding from sales of the Relevant Products
and shall on reasonable prior written notice permit an auditor or other
independent representative appointed by
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the Licensor to inspect such records at all reasonable times;
7.9 will on the Licensor's written request, provide to the Licensor a report
from the Licensee's external auditors certifying the accuracy of the
information submitted by the Licensee pursuant to Clause 7.8 provided
that the Licensor shall not request such a report more than once in any
period of 6 months during the Term.
7.10 will from time to time on request by the Licensor, supply to the
Licensor reports, returns and other information relating to the
Agreements; and
7.11 will at all times in good faith and not take any action which will
prejudice the prospects of the Licensor in relation to its entitlement
in respect of sale or licences of Relevant Products.
8. LIABILITY
Except to the extent that statute prevents liability from being lawfully
excluded in an Agreement of this nature and between the respective
parties hereto, any statement, representation, condition, warranty or
other term express or implied, statutory or otherwise, as to the
quality, merchantability, suitability or fitness for any particular
purpose of the Software is hereby excluded and the Licensor shall not be
liable to the Licensee or to any other persons by reason thereof or any
duty, statutory or otherwise, for any loss or damage (whether direct
indirect or consequential) arising directly or indirectly in connection
with the Software or any documentation manual provided by the licensor
to the licensee relating thereto.
9. COPYRIGHT, PATENTS, TRADE MARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS
9.1 The Licensee acknowledges that any and all of the copyright trade marks
and other intellectual property rights subsisting in or used in
connection with the Software including all documentation and manuals
relating thereto are and shall remain the property of the Licensor and
the Licensee shall not during or at any time after the expiry or
termination of this Agreement in any way question or dispute the
ownership thereof by the Licensor.
9.2 The Licensee also acknowledges that such copyright trade marks and other
rights belonging to the Licensor may only be used by the Licensee with
the consent of the Licensor and during this Agreement.
9.3 The Licensee shall not during or after the expiry or termination of this
Agreement,
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without the prior written consent of the Licensor, use or adopt any
name, trade name, trading style or commercial designation that includes
or is similar to or may be mistaken for the whole or any part of any
trade ▇▇▇▇ trade name, trading style or commercial designation used by
the Licensor.
10. CONFIDENTIALITY
10.1 Except as provided by Clause 10.2 each party shall at all times during
the continuance of this Agreement and thereafter:
10.1.1 use its best endeavours to keep all Restricted Information
(which for the purpose of this Agreement means any confidential
information which is disclosed by either part to the other
pursuant to or in connection with this Agreement (whether orally
or in writing and whether or not such information is expressly
stated to be confidential or marked as such) of the other party
confidential and accordingly not to disclose any of the other
party's Restricted Information to any other person; and
10.1.2 not use any of the other party's Restricted Information for any
purpose other than the performance of its obligations under this
Agreement.
10.2 Any Restricted Information of each party may be disclosed by the other
party (the "Disclosing Party") to:
10.2.1 any governmental or other authority or regulatory body; and
10.2.2 any employees of the Disclosing Party or of any of the
aforementioned persons;
to such extent only as is necessary for the purposes contemplated by
this Agreement or as is required by law and subject in each case to the
Disclosing Party using all reasonable endeavours to ensure that the
person in question keeps the same confidential and does not use the same
except for the purposes for which the disclosure was made.
11. TERMINATION
11.1 Notwithstanding any provisions herein contained this Agreement may be
terminated forthwith by either party by notice in writing from the party
not at fault if any of the following events shall occur:-
11.1.1 if the other party shall at any time be in default under this
Agreement
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and shall fail to remedy such default (if capable of remedy) within
thirty (30) days from receipt of notice in writing from the first party
specifying such default;
11.1.2 if the other party shall commit any act of bankruptcy, shall
have a receiving order made against it, shall make or negotiate
for any composition or arrangement with or assignment for the
benefit of its creditors or if the other party being a body
corporate, shall present a petition or have a petition presented
by a creditor for its winding up or shall enter into any
liquidation (other than for the purpose of reconstruction or
amalgamation), shall call any meeting of its creditors, shall
have a receiver of all or any of its undertakings or assets
appointed, shall be deemed by virtue of the relevant statutory
provisions under the applicable law to be unable to pay its
debts, or shall cease to carry on business;
may be so terminated by the Licensor if any of the following events
shall occur:-
11.1.3 non-payment of any sum payable under this Agreement to the
Licensor by its due date for payment; and
11.1.4 the Licensee fails to meet the sales targets pursuant to Clause
5.
11.2 The expiry or termination of this Agreement shall be without prejudice
to the rights of the parties accrued up to the date of such expiry or
termination.
11.3 Upon the termination of this Agreement the Licensee shall at the request
of the Licensor and within 30 days thereof transfer or assign to the
Licensor all Licences with its end users relating to the Software.
12. INTEREST
The Licensee shall pay to the Licensor interest on any amount payable to
the other hereunder which is not paid within 30 days of the day on which
it falls due at a rate equal to 2% per annum over LIBOR (which for the
purposes of this Agreement shall mean (i) the rate for US dollar
deposits for that period which appears on the Telerate page 3750 (or
such other page as may replace that page for the purpose of displaying
offered rates of lending banks for London inter-bank deposits as
aforesaid) at or about 11 am on the first day of that period or (ii)
such other rate as may be agreed between the Licensor and the Licensee
both before and after judgement until the date of payment.
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13. WAIVER
Failure or neglect by the Licensor to enforce at any time any of the
provisions hereof shall not be construed nor shall be deemed to be a
waiver of the Licensor's rights hereunder nor in any way affect the
validity of the whole or any part of this Agreement nor prejudice the
Licensor's rights to take subsequent action.
14. ASSIGNMENT OR TRANSFER
This Agreement shall not be assigned by the Licensee in whole or in
part, to any party without the prior written consent of the Licensor not
to be unreasonably withheld.
15. AGREEMENT
This Agreement supersedes any arrangements, understandings, promises or
licences made or existing between the parties and constitutes the entire
understanding between the parties. Except as otherwise provided herein,
no addition, amendment to or modification of this Agreement shall be
effective unless it is in writing and signed by and on behalf of both
parties.
16. NOTICES
16.1 Any notice by either party to be given hereunder shall be delivered or
sent by first class post or by facsimile transmission (such facsimile
transmission notice to be confirmed by letter posted within 12 hours) to
the address or to the facsimile number of the party set out below (or
such other address or numbers as may have been notified) and any such
notice or other document shall be deemed to have been served (if
delivered) at the time of delivery (if sent by post) upon the expiration
of 48 hours after posting and (if sent by facsimile transmission) upon
the expiration of 12 hours after dispatch.
Notices to Licensor:
Address: ▇▇▇▇▇▇▇ House, Red Lion Square,
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇
Facsimile Number: 0181 875 9720
Attention of: Company Secretary
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Notices to Licensee:
Address: ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Facsimile Number: 001 303 488 9705
Attention of: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
The Licensee appoints ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ to accept service on its behalf of
any suit action or proceedings arising out of or in connection with the
Agreement which may be commenced pursuant to this Agreement.
17. ANNOUNCEMENTS/PRESS RELEASES
Save as required by law or any relevant regulatory authority, no
announcement or press release concerning this Agreement shall be made by
the Licensee without the prior written approval of the Licensor.
18. COSTS
Each of the Licensee and the Licensor shall bear its own costs incurred
in the negotiation or preparations of this Agreement.
19. HEADINGS
The headings of the paragraphs of this Agreement are inserted for
convenience of reference only and are not intended to be part of or to
affect the meaning or interpretation of this Agreement.
20. SEVERABILITY
In the event that any or any part of the terms, conditions or provisions
contained in this Agreement shall be determined by any competent
authority to be invalid, unlawful or unenforceable to any extent such
term, condition or provision shall to that extent be severed from the
remaining terms, conditions and provisions which shall continue to be
valid and enforceable to the fullest extent permitted by law.
21. LAW
The parties hereby agree that this Agreement and the provisions hereof
shall be governed and construed in accordance with English Law and the
parties hereby submit to the non-exclusive jurisdiction of the English
courts in relation to any dispute arising in connection with the
Agreement.
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AS WITNESS the hands of the duly authorised representatives of the
parties hereto the day and year first before written
SIGNED by )
)
duly authorised )
for and on behalf of )
MATCH HEALTHCARE )
SERVICES LIMITED )
in the presence of: )
SIGNED by )
duly authorised ) /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
for and on behalf of ) President and CEO
MPOWER SOLUTIONS INC. )
in the presence of: ) /s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
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SCHEDULE 1
The Software
The Software consists of the Matchnet software.
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SCHEDULE 2
Initial Fee
1. Initial Payment
US $[*] on or before February 1999;
2. Payment Terms for Balance
US $[*] which shall be paid by applying the royalties payable
pursuant to Clause 3.1.2 until such sum (together with accrued interest)
has been paid in full. Thereafter the royalties shall be payable in
accordance with Clause 3.1.2. If at the expiry of 18 months from the
Commencement Date there is any part the US $[*] (or interest
thereon) unpaid the Licensee shall forthwith pay all such sums to the
Licensor by single payment.
3. Interest
Subject to Clause 12, interest shall accrue on all the sums referred to
above at the rate of 1 per cent above LIBOR from the Commencement Date
to the date of payment.
* Confidential Treatment Requested
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SCHEDULE 3
The Territory
The Territory is the healthcare and non-healthcare markets in the United
States of America
