EXHIBIT 10.2
FIRST AMENDED AND RESTATED
LICENSE, MAINTENANCE AND DISTRIBUTION AGREEMENT
THIS FIRST AMENDED AND RESTATED LICENSE, MAINTENANCE AND DISTRIBUTION
AGREEMENT is entered as of this 28th day of May, 1999 ("Effective Date"), by and
between Reuters Limited, a company organized under the laws of England and
Wales, with offices at 00 Xxxxx Xxxxxx, Xxxxxx XX0X 0XX, Xxxxxx Xxxxxxx
("Reuters") and TIBCO Finance Technology, Inc., a Delaware corporation, with
offices at 0000 Xxxxxxxx Xxxxxx, Xxxx Xxxx, Xxxxxxxxxx 00000 ("TFT"), on the one
hand, and TIBCO Software, Inc., a Delaware corporation, with offices at 0000
Xxxxxx Xxxxx, Xxxx Xxxx, XX 00000 ("TSI"), on the other.
WITNESSETH:
WHEREAS, Reuters owns all right, title and interest in and to certain
software and related technology for the creation of infrastructure middleware
and devices for linking information, applications, and other software across
local, wide-area and intra/inter networks in an event-driven (publish and
subscribe) fashion;
WHEREAS, TFT is a subsidiary of Reuters that develops and markets products
and services based on such Reuters technology for various applications in the
financial services market and TSI is a majority-owned indirect subsidiary of
Reuters that was established by Reuters to, among other things, develop products
and services based on such Reuters technology for various applications not
related to financial services;
WHEREAS, Reuters, TFT and TSI entered into the License, Maintenance and
Distribution Agreement dated as of December 31, 1996 (the "Existing License
----------------
Agreement");
---------
WHEREAS, Reuters, TFT and TSI desire to amend and restate the Existing
License Agreement on the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the mutual covenants and promises
contained herein, the parties hereto agree as follows:
ARTICLE 1.
DEFINITIONS
1.1 Construction. All references in this Agreement to "Articles,"
------------
"Sections," and "Schedules" refer to the articles, sections, exhibits and
schedules to this Agreement. As used in this Agreement, neutral pronouns and
any variations thereof shall be deemed to include the feminine and masculine and
all terms used in the singular shall be deemed to include the plural, and vice
versa, as the context may require. The words "hereof", "herein" and "hereunder"
------ ------ ---------
and other words of similar import refer to this Agreement as a whole, including
the exhibits and schedules hereto, as the same may from time to time be amended
or supplemented and not to any
[ * ] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
subdivision contained in this Agreement. The word "including" when used herein
---------
is not intended to be exclusive and means "including without limitation."
-----------------------------
References in this Agreement to "sell" and "sale" and the like, when used with
respect to software, shall be deemed to refer to grant of a license of such
software and shall in no event imply the transfer of title to such software.
1.2 Capitalized Terms. The following capitalized terms will have the
-----------------
meanings provided below:
(a) "Acquiror's Products" means (i) products owned or Controlled by
-------------------
any Person that acquires in a bona fide transaction all or substantially all of
the business or assets of TSI (whether by merger, acquisition, asset sale or
similar transaction), as of immediately prior to the effectiveness of the
acquisition of such business or assets, and including products owned or
Controlled by such Person that are under development as of such acquisition date
and that are first made commercially available within six (6) months thereafter,
and (ii) products derived from or based upon the products described in (i) above
and that are made commercially available within six (6) months of such
acquisition date.
(b) "Affiliate(s)" of a Party means a Person that, but only for so
------------
long as such Person, directly or indirectly through one or more intermediaries,
controls, is controlled by or is under common control with, such Party,
provided, however, that, for the purposes of this Agreement, (i) Reuters and TSI
and (ii) TFT and TSI, shall not be considered Affiliates of each other. For the
purposes of the foregoing, unless otherwise stated with respect to the use of
the term "Affiliate", "control" means the direct or indirect ownership by the
controlling entity of 40% or more of the voting stock of the controlled entity
or the right of the controlled entity to appoint more than 40% of the board of
directors of the controlled entity. The term "Affiliates" excludes Persons that
are under common ownership by a governmental or national entity.
(c) "Agreement" means this First Amended and Restated License,
---------
Maintenance and Distribution Agreement, including all exhibits and schedules
hereto.
(d) "Agreement of Organization" means that certain agreement dated as
-------------------------
of November 14, 1996 by and among Reuters, TFT, Reuters Nederland, B.V., TSI and
Xxxxx Xxxxxxxx.
(e) "Authorized License" means a license pursuant to which products
------------------
are licensed, or services are provided, by TSI to a Third-party or to an
Affiliate of TSI, or by the Reuters Parties to a Third-party, and which
contains, at a minimum, terms as protective of the Parties as the terms set
forth in Schedule 1.2(e), and which is consistent with such terms and the terms
of this Agreement.
(f) "Broker" means any Person engaged in the business of effecting
------
transactions in Securities for the account of others, including proprietary
trading systems, electronic brokers, and any such Person that is also a Dealer.
(g) "Commodity Product" means a Licensed Product or any other software
-----------------
product sold or licensed by TSI as an off-the-shelf, stand-alone product, sold
or licensed,
2
pursuant to an industry standard shrink wrap or click wrap license, directly or
through normal software distribution channels, and which is intended by TSI or
an Affiliate of TSI to be used by the end-user without the requirement for
additional customization, or consulting services, excluding any such product
that constitutes a Financial Product.
(h) "Confidential Information" means any information disclosed by one
------------------------
Party to the other, which if in written, graphic, machine-readable or other
tangible form is marked as "Confidential" or "Proprietary", or which, if
disclosed orally or by demonstration, is identified at the time of initial
disclosure as confidential and reduced to writing and marked "Confidential"
within thirty (30) days of such disclosure.
(i) "Control" means, with reference to rights, software products or
-------
other Technology not owned by a referenced Party, the right of such Party to
grant rights and sublicenses with respect thereto to the other Party or Parties
without violating any obligation owing by such Party to a Third-party or an
Affiliate of such other Party; provided that, if a payment of royalties or other
consideration to such Third-party or such Affiliate is required in connection
with the exercise by such other Party or Parties or their Affiliates of such
rights, such software products and other Technology shall be deemed not to be
Controlled by such Party unless such other Party or Parties agrees in writing to
be responsible for all such royalties and consideration payable to such Third-
party or Affiliate.
(j) "Dealer" means any Person engaged in the business of buying and
------
selling Securities for his own account, through a Broker or otherwise.
(k) "Deliverable" means any tangible material, work or thing delivered
-----------
by one Party to the other hereunder, including, without limitation, the physical
media on which any Source Code or Object Code is stored and associated technical
documentation.
(l) "Derivative Works" has the meaning ascribed to it under the United
----------------
States Copyright Law, Title 17 U.S.C. Sec. 101 et seq.
(m) "Disclosing Party" means a Party that discloses Confidential
----------------
Information to the other Party.
(n) "Distribution License" has the meaning set forth in Section
--------------------
6.1(a).
(o) "Effective Date" has the meaning set forth in the preamble.
--------------
(p) "Embedded" means, with reference to a hardware or software product
--------
or component thereof, the incorporation or integration of such hardware or
software product or component thereof with another hardware or software product
or component thereof that contains significant additional functionality or
features, provided such first hardware or software product or component thereof
(including its application programming interfaces) cannot be accessed and used
by an end-user on a stand-alone basis. In the context of a service offering,
"Embedded" means the use of a hardware or software product or component thereof
in a value-added service offering containing significant additional
functionality or features (such as a Reuters information
3
service or Personal Trader Workstation); provided that the end user of such
service offering is not able to access and use such product or component
(including its application programming interfaces) directly or on a stand-alone
basis. For the avoidance of doubt, "Embedded" use shall not include stand-alone
rental, service bureau or similar stand-alone use of such software product or
component thereof.
(q) "Enhancement" means any improvement, upgrade, enhancement, fix,
-----------
extension to, or add-on module compatible or interoperable with, or Derivative
Work of, any Technology, including any software or hardware.
(r) "Exclusivity Period" has the meaning set forth in Section 6.1(c).
------------------
(s) "Existing License Agreement" has the meaning set forth in the
--------------------------
Recitals.
(t) "ETX Software" means the TIB/Enterprise Transaction Express
------------
transaction-based messaging system that is based on the TIB Software.
(u) "Financial Product" means a software or hardware product
-----------------
specifically designed for use by a Financial Services Company, including such
products that are intended or designed primarily to operate as, or as part of,
financial trading or financial transactions products or systems, financial news,
financial information or financial data products or systems or market data
systems.
(v) "Financial Services Company" means any Person that is engaged in
--------------------------
or operates a financial services business including, without limitation, banks
(including savings, commercial, merchant, and investment banks and credit
unions), Securities Brokers, Dealers, investment managers, investment funds or
partnerships, insurers, reinsurers, clearing organizations, Securities trading
rooms and Securities exchanges. A Person shall be deemed to be engaged in or
operate a financial services business for purposes of the foregoing sentence if
such Person is a member of a group of related or affiliated companies where a
majority portion measured in terms of revenues or capitalization of such group
is attributable to activities constituting or relating to a financial services
business; provided, however, that any such member of such a group of related or
affiliated companies that itself is not engaged in or does not operate a
financial services business shall not be considered a Financial Services Company
if such member agrees in writing not to provide access to any Licensed Products
or Licensed Services to or for the benefit of any other member of such group
that is or is deemed to be a Financial Services Company. A Person that is
engaged in a financial services business that is merely incidental to the
operation of that Person or its Affiliates shall not by reason of such
incidental activity be considered a "Financial Services Company."
(w) "Intellectual Property Rights" means all rights owned or
----------------------------
Controlled by a Party hereto in, to, or arising out of: (i) any U.S. or foreign
patent or any application therefor and any and all reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof; (ii)
inventions (whether patentable or not in any country), invention disclosures,
improvements, trade secrets, proprietary information, know-how, technology and
technical data; (iii) copyrights, copyright registrations and, applications
therefor in the U.S. or any foreign
4
country, and all other rights corresponding thereto throughout the world; and
(iv) any other proprietary or intellectual property rights, including any rights
in Technology, including software, arising anywhere in the world, but excluding
any trade names, trademarks, service marks and similar rights.
(x) "Licensed Products" means any software and/or hardware products,
-----------------
based on or incorporating any TIB Technology and Reuters Enhancements, excluding
any Financial Products, if such products are covered by one or more unexpired
and valid patents of the Reuters Parties, incorporate or comprise a work of
authorship (including without limitation any derivative work) that is protected
in whole or in part by any valid copyrights of the Reuters Parties, embody or
utilize any trade secrets of the Reuters Parties that remain protectible under
applicable law or otherwise are protected or covered by valid and subsisting
Intellectual Property Rights of the Reuters Parties. As of the Effective Date,
the Licensed Products include, without limitation, TIB Rendezvous, TIB/Hawk,
TIB/Energy, TIB/ETK and the ETX Software. Following the Effective Date, the
parties will negotiate in good faith appropriate procedures, including dispute
resolution mechanisms, for determining, in a manner binding on the Parties,
which TSI Products, including new TSI Products first released after the
Effective Date, constitute Licensed Products as defined herein.
(y) "Licensed Services" means services, including consulting, design,
-----------------
integration, customization, operation and development services, based on,
related to, or using the TIB Technology and Reuters Enhancements, provided by
TSI to Third-parties that are not a Financial Services Company (it being agreed
and acknowledged that any such services shall continue to constitute Licensed
Services only if such services are based on, relate to or use TIB Technology or
Reuters Enhancements that are covered by one or more unexpired and valid patents
of the Reuters Parties, incorporate or comprise a work of authorship (including
without limitation any derivative work) that is protected in whole or in part by
any valid copyrights of the Reuters Parties, embody or utilize any trade secrets
of the Reuters Parties that remain protectible under applicable law or otherwise
are protected or covered by valid and subsisting Intellectual Property Rights of
the Reuters Parties).
(z) "Maintenance Services" means the maintenance and support services
--------------------
to be provided by TSI to Reuters and TFT in accordance with Section 5.2.
(aa) "Object Code" means machine-executable computer software prepared
-----------
by compiling and linking Source Code or machine independent representations of
computer software intended for subsequent interpretation or just-in-time
compiling.
(bb) "OEM Sales" has the meaning set forth in Section 2.5(b).
---------
(cc) "Original Effective Date" means December 31, 1996, the effective
-----------------------
date of the Existing License Agreement.
(dd) "Party" means either or both of (i) Reuters and TFT; or (ii) TSI.
-----
5
(ee) "Person" means any legal person or entity, including any
------
individual, corporation, partnership, joint venture, association, joint stock
company, trust, unincorporated association, limited liability corporation,
governmental entity, or other person or entity of similar nature.
(ff) "Quarterly Minimum License Fee Installments" has the meaning set
------------------------------------------
forth in Section 6.3(a).
(gg) "Receiving Party" means a party that receives Confidential
---------------
Information from the other Party.
(hh) "Reserved Field" means the use of TIB Technology or Reuters
--------------
Enhancements in the operation of a Financial Services Company, or the licensing
of the TIB Technology or Reuters Enhancements or any product or service based
thereon, directly or indirectly to (whether or not through the use of an
interposed Person or through or to consultants to or agents of) a Financial
Services Company, or the provision of any consulting, design, integration,
customization, operational, support or development services to any Financial
Services Company.
(ii) "Reuters Enhancements" shall have the meaning set forth in
--------------------
Section 2.3.
(jj) "Reuters Intellectual Property Rights" means all Intellectual
------------------------------------
Property Rights owned or Controlled by Reuters or TFT that cover, protect or are
embodied in any TIB Technology or any Reuters Enhancements or the manufacture or
use of TIB Technology or Reuters Enhancements.
(kk) "Reuters Parties" means Reuters and TFT.
---------------
(ll) "Revenue-Sharing Products" shall have the meaning set forth in
------------------------
Section 6.3(a).
(mm) "Security" means any note, stock, treasury stock, bond,
--------
debenture, certificate of interest or participation in any profit-sharing
agreement or in any oil, gas, or other mineral royalty or lease, any collateral-
trust certificate, preorganization certificate or subscription, transferable
share, investment contract, voting-trust certificate, certificate of deposit,
for a security; any put, call, straddle, option, or privilege on any security;
certificate of deposit, or group or index of securities (including any interest
therein or based on the value thereof), or any, swap, put, call, straddle,
option, or privilege entered into on a securities exchange relating to foreign
currency, or in general, any instrument commonly known as a "security"; or any
certificate of interest or participation in, temporary or interim certificate
for, receipt for, or warrant or right to subscribe to or purchase, any of the
foregoing, all contracts for the sale of any of the foregoing or of any
commodity for future delivery, options thereon, and commodity options (including
but not limited to cash currency options) as those terms are defined in the US
Commodity Exchange Act, that are traded on or subject to the rules of a formally
organized and regulated exchange.
6
(nn) "Source Code" means computer software and any associated
-----------
documentation in human-readable form, including programmers' comments, and the
following items to the extent that they are confidential: data files and
structures, APIs, header and include files, macros, programming tools not
commercially available, technical specifications, flowcharts and logic diagrams.
(oo) "Special Purpose Joint Venture" means a joint venture or similar
-----------------------------
arrangement between Reuters and TSI for the purposes of undertaking a specific
development or consulting project for one or more Third-parties.
(pp) "Specified Companies" means the following: [ * ] and its
subsidiaries and any other principal competitor of Reuters.
(qq) "Technology" means all technology, including without limitation,
----------
all know-how, show-how, techniques, trade secrets, inventions (whether or not
patented or patentable), algorithms, routines, software (including firmware and
middleware) files, data-bases, processes, devices and hardware.
(rr) "TFT- Reuters License" means that certain Products Distribution
--------------------
Agreement dated as of August 3, 1995 by and between Reuters Limited and
Teknekron Software Systems, Inc.
(ss) "TFT Financial Products" means the TFT products listed on
----------------------
Schedule 1.2(ss) and any other Financial Products that were owned or Controlled
by TFT as of the Original Effective Date.
(tt) "Third-party" means any Person other than (i) a Party or (ii) an
-----------
Affiliate of a Party.
(uu) "Third Party Reseller" has the meaning set forth in Section
--------------------
2.5(a).
(vv) TIB-Derived Technology" means any Technology derived from or
----------------------
based on any TIB Technology or Reuters Enhancements, including any Derivative
Work created from any TIB Technology or Reuters Enhancements.
(ww) "TIB Software" means the infrastructure middleware, in Source
------------
Code and Object Code form, for linking information, applications, or other
software across local, wide area and intra/inter networks in an event-driven
(publish and subscribe) fashion, and its associated administrative components
owned by Reuters as of the Original Effective Date, licensed to TFT pursuant to
the TFT-Reuters License, and licensed to TSI hereunder, but excluding (and the
licenses contemplated hereby exclude): (i) any software applicable exclusively
to the Reserved Field, and also excluding any TFT Financial Products; and (ii)
any software created by TFT exclusively for Reuters pursuant to the Research and
Development Agreement between Teknekron Software Systems Inc. and Reuters, dated
as of August 3, 1995.
7
[ * ] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
(xx) "TIB Technology" means all Technology, including the TIB
--------------
Software, related to the creation of infrastructure middleware or devices for
linking information, applications, and other software across local, wide-area
and intra/inter networks in an event-driven (publish and subscribe) fashion and
owned or Controlled by a Reuters Party. For the avoidance of doubt, TIB
Technology does not include any Technology independently developed by TSI after
the Original Effective Date.
(yy) "Transferred TIB-Related Marks" means the trademarks, service
-----------------------------
marks and other marks listed on Schedule 1.2(yy) and their derivatives.
(zz) "TSI Intellectual Property Rights" means all Intellectual
--------------------------------
Property Rights owned or Controlled by TSI.
(aaa) "TSI Products" means any software and/or hardware products that
------------
are owned or Controlled by TSI for so long as TSI owns or Controls such
products, but in all events excluding Acquiror's Products (it being agreed and
understood that any TSI software and/or hardware products, and any derivative or
successor products thereto, included in any Acquiror's Products immediately
prior to the time at which the Person in question acquires all or substantially
all of the business or assets of TSI, shall continue to constitute TSI Products
hereunder notwithstanding the foregoing exclusion of Acquiror's Products).
(bbb) "TSI Technology" means any Technology owned or Controlled by
--------------
TSI (including any first developed or acquired after the Effective Date),
including without limitation any Enhancements to the TIB Technology owned or
Controlled by TSI.
(ccc) "TSI Limited Distribution Rights" means those non-exclusive,
-------------------------------
worldwide, distribution rights of TSI to certain TFT products to be designated
in writing from time to time by TFT (but which shall include MarketSheet, value-
added servers such as TIC and GSM, and feed handlers) and distributed by TSI to
non-Financial Services Companies or to Financial Services Companies solely in
connection with TSI-provided XXXXX.xxx hosting services pursuant to Section
2.12, with (I) TFT providing or having provided second and third-level support
to TSI, (II) TSI paying to TFT a license and maintenance distribution fee of
[ * ]% of all revenue recognized in accordance with the allocation principles of
Section 6.4 and GAAP in respect of such products unless otherwise agreed and
(III) as to be specifically set forth in a standard distribution agreement
between TSI and TFT.
ARTICLE 2.
LICENSE GRANTS
2.1 Reuters- TIB Technology License.
-------------------------------
(a) Subject to the terms and conditions of this Agreement, including
Section 2.4, the Reuters Parties hereby grant to TSI a royalty-free, fully paid,
worldwide, perpetual, non-exclusive, non-assignable, non-sublicensable (except
as provided in
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
8
Sections 2.1(a)(2), 2.1(b) and 2.5 below) and irrevocable right and license
under the Reuters Intellectual Property Rights to:
(1) Make, have made, internally use, copy, modify, and create
Derivative Works from the TIB Software and otherwise internally use and exploit
the TIB Technology for the purposes of developing, creating and maintaining
Licensed Products;
(2) Perform, display, offer for sale, import, sell, sublicense and
distribute Licensed Products; provided that, except as set forth in Section
2.1(c) below, any TIB Software included in, or forming part of, such Licensed
Products is distributed only in Object Code form and only in accordance with an
Authorized License;
(3) Make, have made, internally use, copy, modify and create
Derivative Works from the TIB Software and otherwise internally use and exploit
the TIB Technology, for the purposes of providing Licensed Services in
accordance with an Authorized License;
(4) Make, have made, internally use, copy, modify and create
Derivative Works from the TIB Software and otherwise internally use and exploit
the TIB Technology, for the purpose of performing TSI's obligations as a
participant in a Special Purpose Joint Venture; and
(5) Make, have made, internally, use, copy, modify and create
Derivative Works from the TIB Software and otherwise internally use and exploit
the TIB Technology for the purpose of performing Maintenance Services.
(b) Subject to and without limiting Sections 2.5 and 6.1(a), (b), (c) and
(d), TSI shall have the right to distribute Licensed Products through Third-
party and Affiliate distributors, resellers and original equipment
manufacturers, provided that the terms and conditions of TSI's distribution
arrangements are consistent with and in compliance with the terms and conditions
of this Agreement.
(c) TSI shall not directly or indirectly license, disclose, or permit or
provide access to, TIB Software Source Code to any Third-party or any TSI
Affiliate except in the following circumstances and in accordance with the
following procedures:
(1) If TSI reasonably believes that it is necessary for it to license
such Source Code to a Third-party (other than a Financial Services Company or a
Specified Company) or any TSI Affiliate for the purposes of pursuing a strategic
relationship with such Third-party or TSI Affiliate necessary to increase the
marketability or value of the TIB Technology (for example, an arrangement
whereby the TIB Technology will be incorporated in a widely distributed Third-
party operating system), it shall so inform Reuters and provide Reuters with
such details of the proposed transaction as Reuters shall reasonably request.
Following Reuters' review of such materials, which shall occur promptly, Reuters
shall inform TSI whether Reuters consents to TSI granting the contemplated
Source Code license and any terms and conditions that Reuters reasonably
requires to be added to the Source Code license between TSI and such
9
Third-party. Reuters may condition its approval of the Source Code license on
the incorporation of the terms reasonably suggested by Reuters.
(2) Reuters shall not unreasonably withhold or delay its approval
of TSI granting a Source Code license in accordance with the foregoing.
(3) Under no circumstances shall TSI license or provide Source
Code to any Third-party absent Reuters' express, prior written approval in
accordance with the foregoing.
(d) Notwithstanding the provisions of Section 2.3(c), following the
first to occur of December 31, 1999, or the consummation of an initial public
offering of the stock of TSI, TSI shall no longer have the obligation to obtain
Reuters' review or approval prior to, or in connection with, the licensing of
TIB Software Source Code to Third-parties pursuant to Section 2.3(c); provided
that any such licensing shall in all events remain subject to the terms and
conditions of this Agreement, including Section 2.4; and any terms and
conditions of an Authorized License which by nature are inconsistent with the
licensing of Source Code shall be subject to appropriate modification to reflect
such licensing of Source Code.
(e) In consideration of the grant of the foregoing license to TSI by
the Reuters Parties, TSI shall grant to Reuters the license under the TSI
Intellectual Property Rights set forth in Section 2.6.
2.2 Reservation of Rights. All rights in or to any Reuters Intellectual
---------------------
Property Rights not expressly granted toTSI hereunder are reserved to the
Reuters Parties.
2.3 Reuters Enhancements to TIB Technology.
--------------------------------------
(a) Either Reuters Party may, in its sole discretion, create or
acquire any Enhancement to the TIB Software ("Reuters Enhancements") following
--------------------
the Effective Date.
(b) In the event that: (i) either Reuters Party develops any Reuters
Enhancements prior to the fifteenth (15th) anniversary of the Original Effective
Date; and (ii) the incorporation of such Reuters Enhancements into Licensed
Products, or the use of such Reuters Enhancements by TSI, would facilitate
compatibility, interoperability or conformance to common standards between TSI
and Reuters or TFT products based on TIB Technology, then, subject to the terms
and conditions hereof, Reuters shall disclose such Reuters Enhancements to TSI
and shall, and hereby does, grant to TSI a royalty-free, fully-paid, worldwide,
non-exclusive, perpetual, non-sublicensable (except when Embedded in Licensed
Products as provided in Section 2.3(b)(2)), and irrevocable right and license
under all Intellectual Property Rights owned by Reuters at any time prior to the
fifteenth (15th) anniversary of the Original Effective Date, in such Reuters
Enhancements, to:
(1) Internally use, copy, modify and create Derivative Works from
such Reuters Enhancements, and otherwise internally use and exploit such Reuters
Enhancements, or any Technology derived from or based on such Enhancements, in
developing,
10
making, having made, importing, creating, providing, maintaining and enhancing
Licensed Products or Licensed Services; and
(2) Distribute, perform, display, sell or license such Reuters
Enhancements, or any Technology derived from or based on such Enhancements, in
each case only if Embedded in Licensed Products, including as an integral part
of Licensed Products, or as a feature thereto.
(c) Following the fifteenth (15th) anniversary of the Original
Effective Date, the license granted pursuant to Section 2.3(b) shall continue in
perpetuity without payment of any kind to Reuters; provided, however, that such
license shall not apply to any Reuters Enhancements that come into existence
following such anniversary, except as may be agreed by Reuters and TSI. For the
purpose of the foregoing, any patent rights shall be deemed to have come into
existence as of the earliest priority date that may be claimed by the
application resulting in such patent and regardless of the issuance date of such
patent.
(d) The Parties agree that ETX Software constitutes TIB Software
licensed to TSI pursuant to the Existing License Agreement and that all
Enhancements to ETX Software created or developed by TFT after the Original
Effective Date constitute "Reuters Enhancements" hereunder. TSI shall,
accordingly, maintain ETX Software to the same extent as TSI maintains other
Licensed Products pursuant to Section 5.2. TFT shall retain all revenue it has
recognized or in the future may recognize, if any, with respect to the
licensing, sub-licensing, distribution, maintenance or support of ETX Software
(including its upgrades, Enhancements and subsequent versions). TSI shall
retain all revenue it has recognized with respect to the licensing, maintenance
or support of the ETX Software to or for customers who are not Financial
Services Companies. TFT will pay to TSI, the actual cost (fully burdened, but
not at intercompany charge rates) of TSI personnel who have developed, supported
and maintained, or shall in the future develop, support or maintain, the ETX
Software sold or licensed to TFT customers, effective from the date such
personnel became employees of TSI (as of July of 1998), excluding any costs
incurred in connection with the development of TSI's RVTX product. The actual
cost of such TSI personnel who have developed, supported and maintained the ETX
Software prior to the Effective Date shall be paid by TFT within thirty (30)
days after receipt of an invoice therefor from TSI, together with appropriate
substantiation. The actual cost of TSI personnel who in the future develop,
support or maintain the ETX Software shall be paid on a quarterly basis upon
receipt of an invoice from TSI therefor, together with appropriate
substantiation. TFT shall have the audit rights provided in Section 12.3 in
connection with amounts billed by TSI under this Section 2.3(d).
2.4 Limitations on Right of TSI to Exploit TIB Technology In Reserved
-----------------------------------------------------------------
Field.
-----
(a) TSI is not authorized to, and TSI agrees that it shall not, except
as expressly permitted herein, make available, license, sell, distribute or
otherwise commercially exploit any existing or future Licensed Products directly
to a Financial Services Company or a Specified Company by any means whatsoever,
whether now existing or hereafter devised, subject only to the right of TSI to
license or distribute Commodity Products to Financial Service
11
Companies when and as provided in Section 6.3(a) and TSI's rights granted in
Section 2.12. Subject to TSI's rights under Section 6.3(a) and Section 2.12, TSI
(i) shall use all commercially reasonable efforts to prevent any licensing or
distribution by it or any of its Affiliates of Licensed Products over the
Internet directly to Financial Services Companies and (ii) shall neither
maintain any sales force to sell any Licensed Products nor provide any Licensed
Services directly to Financial Services Companies and shall neither sell and
distribute any Licensed Products nor provide any Licensed Services indirectly to
Financial Services Companies except through a Third Party Reseller to the extent
expressly permitted by Section 2.5. More specifically, subject to TSI's rights
under Sections 2.5, 2.12 and 6.3(a), the license to TIB Technology and Reuters
Enhancements granted by the Reuters Parties to TSI in Sections 2.1 and 2.3 shall
exclude any right under the Reuters Intellectual Property Rights to, and subject
to Sections 2.5, 2.12 and 6.3(a) under no circumstances shall TSI or any
Affiliate of TSI:
(1) use, copy, display, create Derivative Works from, or otherwise
exploit any TIB Technology, any TIB-Derived Technology or any Reuters
Enhancements for the purposes of developing, creating, enhancing, maintaining or
supplying any products (including without limitation any Financial Product) or
providing any services directly for or to any Financial Services Company (other
than Reuters or a Reuters Affiliate) or Specified Company;
(2) provide, disclose or license any TIB Technology, any TIB-Derived
Technology or any Reuters Enhancements directly to any Financial Services
Company or Specified Company;
(3) provide any design, consulting, integration, embedding, [A
operational support, partnering, co-sourcing, data processing, network
management, service provisioning, or other similar services that utilize in any
way any TIB Technology, or any Reuters Enhancement, or are provided with any TIB
Technology, or any Reuters Enhancements, in any case directly to any Financial
Services Company or Specified Company;
(4) make available, license, sell or otherwise distribute any Licensed
Product, whether stand-alone or on a packaged basis with a Financial Product,
directly to any Financial Services Company or Specified Company; and
(5) use, copy, display, develop, license, or support any Financial
Products that incorporate or are based on any TIB Technology, any TIB-Derived
Technology or any Reuters Enhancements, including any Licensed Products that
include or are packaged with a Financial Product, or any Licensed Product that
includes functionality or features that are specifically designed for use by a
Financial Services Company or a Third-party for the purpose of developing
products or services for Financial Services Companies.
(b) The limitations set forth in Section 2.4(a)(5) shall not prohibit TSI
from developing, supporting, maintaining, enhancing, providing services for,
selling, licensing or otherwise distributing Licensed Products to or for a
Third-party that is not a Financial Services Company or a Specified Company and
(1) that have applicability to Financial Services Companies so long as such
products are generally applicable to other fields and do not include
functionality or features specifically designed for use by a Financial Services
Company and are
12
not specifically designed for use by a Third-party for the purpose of developing
products or services for Financial Services Companies or (2) that include
functionality or features requested by either of the Reuters Parties.
(c) TSI shall disclose to Reuters the identity of each Person with
whom TSI enters into an agreement or other arrangement to provide Licensed
Products or Licensed Services, or to otherwise disclose Confidential Information
pertaining to any TIB Technology or Reuters Enhancements. Such information
shall be reported to Reuters at least semi-annually. Reuters' receipt of any
report shall be without prejudice to Reuters' rights and remedies under this
Agreement and shall not be construed in any way as the acceptance by Reuters of
the compliance by TSI with any other of the terms of this Agreement. Such
reports shall be provided directly to Reuters and not to TFT and shall be used
by Reuters solely with respect to Reuters' review of TSI's compliance with this
Agreement and the enforcement of this Agreement.
2.5 Extent of Permitted Third-Party Distribution in Reserved Field.
--------------------------------------------------------------
(a) Notwithstanding anything to the contrary stated in this
Agreement, the Reuters Parties hereby grant to TSI a royalty-free (but subject
to the revenue sharing obligations expressly set forth in Section 2.5(b)), fully
paid up, worldwide, perpetual, non-exclusive, non-assignable right and license,
under the Reuters Intellectual Property Rights, to grant any and all systems
integrators, original equipment manufacturers, resellers, distributors or other
licensees other than any Financial Services Company or Specified Company (each a
"Third Party Reseller") of Licensed Products (whether in Object Code or Source
--------------------
Code form), without payment by the Third Party Reseller of any license fees or
other consideration to the Reuters Parties (but subject to the revenue sharing
obligations expressly set forth in Section 2.5(b)), non-exclusive, worldwide,
perpetual, rights and licenses to exercise any and all of the rights under the
license to TIB Technology granted by Reuters to TSI in Section 2.1 and to
Reuters Enhancements granted by Reuters to TSI in Section 2.3, whether inside or
outside the Reserved Field and in each case without subjecting the Third Party
Reseller to the limitations set forth in Section 2.4, but without relieving TSI
of its obligations to comply with the provisions of Section 2.4 and in all cases
subject to the following provisions of this Section 2.5.
(b) Notwithstanding anything to the contrary stated in this Agreement,
nothing herein shall require that the Third Party Reseller itself be subject to
contractual prohibitions on use or distribution of Licensed Products or using,
preparing or distributing any Derivative Work based on any Licensed Products in
the Reserved Field; provided that any revenue received from a Third Party
Reseller and recognized by TSI in accordance with GAAP, (less any discounts not
already deducted from revenues and less any withholding taxes included in such
revenues), that is attributable to sales or distribution of TSI Products that
are Licensed Products by such Third Party Reseller, or the provision of related
maintenance or support by such Third Party Reseller, in each case to Financial
Services Companies shall be [ * ] between Reuters and TSI on a [ * ] basis (with
TSI being obligated to pay Reuters its share of any such revenue within thirty
(30) days after the end of each fiscal quarter after receipt by TSI of any
related payments by such Third Party Reseller).
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
13
(1) The provisions of Section 6.4 hereof are applicable with respect
to allocating revenues attributable to sales of such TSI Products that are
Licensed Products (or the provision of related maintenance or support) relative
to revenues attributable to any other TSI products, services or any other item,
sold or provided in connection therewith.
(2) No such sharing of license and maintenance revenue shall be
applicable in respect of sales ("OEM Sales") by a Third Party Reseller (or its
---------
distributor) of any hardware or software products of such Third Party Reseller
into or with which any Licensed Product has been Embedded, integrated or
packaged and to which the Third Party Reseller has contributed substantial
value-added functionality and features in addition to such Licensed Product
(e.g., Cisco bundling TSI Products on a CD with its Active Directory network
applications), but excluding any sales by systems integrators and other
resellers of integrated or packaged products that include Licensed Products to a
customer in connection with a specific transaction rather than as a part of an
integrated or packaged product that is released for commercial sale to their
customers generally ("OEM Reseller").
------------
(3) Nothing in Sections 2.4(b) and 2.5 shall in any way be deemed to
permit TSI (or any TSI Affiliate), directly or indirectly, to assist in any way
in (a) the provision of Licensed Services by any such Third Party Reseller for
any Financial Services Company or Specified Companies, (b) the development by
any such Third Party Reseller of any Derivative Work of TIB Technology or
Reuters Enhancements that constitutes a Financial Product or is specifically
designed for use by a third party that has a purpose of developing a Financial
Product or (c) the provision of a service specifically designed for Financial
Services Companies or Specified Companies, including without limitation by
enhancing or modifying any Licensed Products for the purpose of creating or
facilitating the creation of any such Derivative Work. Furthermore, TSI shall
not, directly or indirectly, assist in any way in the development by any Third
Party Reseller of any products with finance functionality or features that
incorporate, embed or are derived from any TIB Technology, Reuters Enhancements
or TIB-Derived Technology. Notwithstanding the foregoing, nothing in Section
2.5 shall restrict TSI from (1) making available general purpose interfaces or
other integration tools not specifically designed for use with a Financial
Product or specifically designed for use by a Third-party for developing
products or services for Financial Services Companies or Specified Companies
when such interfaces or tools are provided for the purpose of (i) integrating
the Licensed Products with other products or components, including Financial
Products, and/or (ii) developing general purpose interfaces between the Licensed
Products and other products or components, including Financial Products or (2)
providing standard training, maintenance and support for Licensed Products to
Third Party Resellers in accordance with TSI's standard training, maintenance
and support practices.
(c) During such time as any Third Party Reseller (excluding OEM Resellers)
is a party to a reseller or other distribution agreement with TSI and
distributes products to Financial Services Companies in greater than de minimis
amounts, TSI shall exert all reasonable commercial efforts to assist Reuters in
making such Third Party Reseller a reseller or distributor also of Reuters, with
Reuters being the provider of all TSI Products to or for Financial Services
14
Companies. TSI will notify Reuters promptly upon commencement of material
negotiations with respect to any such new reseller or other distribution
agreement.
(d) TSI shall include in each reseller or other distribution agreement
with a Third Party Reseller entered into after the Effective Date (i) a
requirement that the Third Party Reseller provide TSI with sufficient
information such that TSI can identify accurately the extent to which any
license fees or other payments made by such Third Party Reseller to TSI are
attributable to sales to Financial Services Companies (other than OEM Sales) and
(ii) adequate mechanisms for verifying the accuracy of the information reported
by such Third Party Reseller with respect to sales by Financial Services
Companies, provided that if the manner of resale utilized by such Third Party
Reseller makes infeasible the identification of the extent to which any license
fees or other payments made by such Third Party Reseller to TSI are attributable
to sales to Financial Services Companies (or TSI after diligent efforts is
otherwise unable to obtain the information), no such covenant shall be required
and the amount of sales by such Third Party Reseller that is deemed to be
attributable to sales to Financial Services Companies will be fixed at a good
faith mutually agreeable specified percentage that is designed to approximate
the actual percentage of such sales by such Third Party Reseller that are
attributable to sales to Financial Services Companies, which percentage shall be
subject to a negotiated adjustment at the request of either Party no more
frequently than annually if such Party believes that such percentage is not
fairly reflective of the actual percentage of such sales by such Third Party
Reseller that are attributable to sales to Financial Services Companies.
(e) The Reuters Parties shall have the right to engage its external
auditor to audit the books and records of TSI pursuant to Section 12.3 for
purposes of verifying the calculation of the amounts payable by TSI to Reuters
Parties in accordance with the foregoing provisions of this Section 2.5, subject
to reasonable confidentiality provisions and further provided that such right
shall be exercised no more frequently than once each calendar year. If any
adjustments are made to the amount of revenues related to Financial Services
Companies that were realized in a given quarter after the payment of the share
thereof that is due to the Reuters Parties in respect of such quarter,
corresponding adjustments will be made to the amount payable to Reuters Parties
in respect of such quarter.
(f) TSI hereby represents and warrants that as of the Effective Date
(i) TSI is not a party to any TSI reseller or other distribution agreement with
a Third Party Reseller (including OEM Resellers) except as disclosed on Schedule
2.5(f) hereto (each such disclosed agreement being referred to as a "Prior TSI
---------
Reseller Agreement"); and (ii) true and correct copies of each Prior TSI
------------------
Reseller Agreement have been provided to the Reuters Parties, except to the
extent prohibited by a confidentiality provision therein. If a copy of any
Prior TSI Reseller Agreement or any portion thereof has not been provided to
Reuters by reason of any such confidentiality provision, TSI hereby agrees and
covenants with the Reuters Parties to use reasonable efforts to obtain a waiver
thereof within a reasonable time after the Effective Date. As and when TSI
enters into any reseller or other distribution agreement with a Third Party
Reseller after the Effective Date, TSI shall give the Reuters Parties notice
thereof and shall provide therewith a true and complete copy of such agreement.
15
2.6 TSI License.
-----------
(a) TSI hereby grants to Reuters a royalty-free, fully-paid,
worldwide, non-exclusive, perpetual, sublicensable, and irrevocable right and
license under all TSI Intellectual Property Rights at any time prior to the
fifteenth (15th) anniversary of the Original Effective Date, to:
(1) Internally use, make, have made, copy, modify and create
Derivative Works from any TSI Technology and otherwise internally use and
exploit the TSI Technology in developing, making, having made, importing,
creating, providing, maintaining and enhancing any Reuters' (or any of its
Affiliates') products or services; and
(2) Sub-license, distribute, perform, display, sell or license
any TSI Technology, or any Technology derived from or based on such Technology,
Embedded in Reuters' (or any of its Affiliates') products or services, including
as an integral part thereof, or as a feature thereto.
(b) Following the fifteenth (15th) anniversary of the Original
Effective Date, the license granted pursuant to Section 2.6(a) shall continue in
perpetuity without payment of any kind to TSI; provided, however, that such
license shall not apply to any TSI Technology that comes into existence
following such anniversary, except as may be agreed by Reuters and TSI. For the
purpose of the foregoing, any patent rights shall be deemed to have come into
existence as of the earliest priority date that may be claimed by the
application resulting in such patent and regardless of the issuance date of such
patent.
(c) TSI agrees that it will not avoid the acquisition or creation of
Intellectual Property Rights, or dispose of any of its Intellectual Property
Rights for the purposes of avoiding the grant to Reuters of the licenses set
forth in this Section 2.6.
(d) Notwithstanding the foregoing provisions of this Section 2.6, TSI
Technology and TSI Intellectual Property Rights shall exclude all (i) Technology
and/or intellectual property rights owned or Controlled by any Person that
acquires all or substantially all of the business or assets of TSI (whether by
merger, acquisition, asset sale or other similar transaction), immediately prior
to the date of the acquisition of such business or assets, and (ii) Technology
and/or intellectual property rights derived from or based upon the Technology
and/or intellectual property rights described in (i) above (it being agreed and
understood that any TSI software and/or hardware products, and any products
derived from such TSI software and/or hardware products, and the TSI
Intellectual Property Rights therein, that are incorporated or utilized in such
products immediately prior to the time at which such Person so acquires all or
substantially all of the business or assets of TSI shall in all events continue
to constitute TSI Technology and TSI Intellectual Property Rights hereunder).
(e) Reuters may sublicense to all of its Affiliates any and all of
the rights licensed by TSI to Reuters pursuant to the foregoing provisions of
this Section 2.6; provided that, unless TSI otherwise agrees in writing, TFT and
its successors and assigns (other than a successor or assign that is Reuters or
an Affiliate of Reuters) shall in no event be authorized to
16
exercise any such rights for the purpose of (i) conducting, supporting,
participating or engaging in any business involving the provision of services
that are not related to a Financial Product to a Person that is not a Financial
Services Company, including providing design, consulting, integration,
embedding, operational support, partnering, co-sourcing, data processing,
network management, service provisioning, or similar services; or (ii) engaging
in the business of creating, licensing or selling a product that is not a
Financial Product to a Person that is not a Financial Services Company. This
Section 2.6(e) shall apply to TFT and its successors and assigns only (other
than a successor or assign that is Reuters or an Affiliate of Reuters), and,
subject to the foregoing, shall not in any way apply to or bind Reuters or any
other Affiliate of Reuters; provided, however, that this Section 2.6(e) shall in
no way limit TFT's ability to use third-party resellers as contemplated by
Section 6.1(m).
2.7 API Publication. Solely for standards-setting purposes or to promote
---------------
the widespread adoption of industry standards associated with the TIB
Technology, TSI may publish generally applicable APIs or technical
specifications related to the TIB Technology, provided that such publication is
designed to achieve broad dissemination, is generally consistent with the then
current TFT procedures with respect thereto and does not materially adversely
affect any Reuters Intellectual Property Rights.
2.8 Trademark License.
-----------------
(a) The Reuters Parties hereby assign and transfer to TSI all of
their respective right, title and interest in and to the Transferred TIB-Related
Marks and all goodwill associated therewith, subject to a perpetual, royalty-
free, irrevocable, worldwide right and license in favor of the Reuters Parties
and their Affiliates to use Transferred TIB-Related Marks in connection with the
marketing, use, sale and distribution of any of the Reuters Parties' and their
Affiliates' respective products or the provision by the Reuters Parties or their
Affiliates of any services. At TSI's sole expense, the Reuters Parties shall
perform such acts and execute such documents as are reasonably required to
perfect the foregoing assignment and obtain and enforce trademark, service xxxx
and other similar rights in the Transferred TIB-Related Marks. TFT shall be
permitted to continue to use indefinitely TIBCO or TIB as part of its corporate
name, provided that such corporate name is at least as distinctive from TIBCO
Software, Inc. as TFT's current corporate name. The Reuters Parties and their
Affiliates' right to use such Transferred TIB-Related Marks shall be only in
conformance with TSI's trademark usage guidelines delivered to the Reuters
Parties from time to time, which guidelines shall be reasonable and shall not be
inconsistent with the scope of the license herein granted and shall not become
effective prior to thirty (30) days after notice thereof has been given by TSI.
TSI shall maintain the right to substitute any alternative trademark to the
Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is
held to infringe any other xxxx; provided that, if TSI advises either or both of
the Reuters Parties in writing of an alleged infringement, Reuters will be
responsible for any and all losses, liabilities, damages, costs and expenses
assessed or incurred as a result of such actual or alleged infringement that
accrue on or after the date of such notice.
(b) The Reuters Parties hereby acknowledge and recognize TSI's
exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not
to take any action
17
inconsistent with such ownership. The Reuters Parties acknowledge that their use
and the use by Reuters Parties Affiliates of the Transferred TIB-Related Marks
pursuant to this Agreement and any goodwill established thereby shall inure to
the sole benefit of TSI (or its Affiliates).
(c) The Reuters Parties and their Affiliates shall support TSI in
policing the use of the Transferred TIB-Related Marks and shall cooperate with
TSI in protecting the Transferred TIB-Related Marks, including cooperating in
becoming a registered user immediately of the Transferred TIB-Related Marks.
Such cooperation by the Reuters Parties and their Affiliates shall be at the
sole expense of TSI. Each of the Reuters Parties and their Affiliates shall
notify TSI of any infringement of the Transferred TIB-Related Marks that comes
to its attention.
(d) Neither Reuters Parties nor their Affiliates will attempt to
register with any trademark office, anywhere in the world, any trademark: (i)
that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii)
that otherwise infringes or dilutes in a significant way any of the Transferred
TIB-Related Marks.
(e) The Reuters Parties and their Affiliates shall maintain the
quality of products and services in connection with which any Transferred TIB-
Related Xxxx is used at a level at least as high as the quality of the Reuters
or Reuters Affiliate products and services bearing the Transferred TIB-Related
Marks prior to the date hereof. The Reuters Parties and their Affiliates shall
not knowingly take or permit to be taken any actions that would detract in a
significant way from the goodwill or reputation associated with the Transferred
TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters Parties product or
service associated with or bearing any of the Transferred TIB-Related Marks
fails to conform to the quality standards set forth herein, TSI shall provide
the Reuters Parties and their Affiliates with written notice thereof and the
Reuters Parties and their Affiliates shall promptly remedy any such failure and
provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI
shall consent to the Reuters Parties registering, at their own expense, product
and company names and related marks that include the word "TIB", which (except
for the "TIB" component) are not confusingly similar with any TSI xxxx in
existence or applied for at such time, and which are used by a Reuters Party
solely in connection with TFT's company name or the marketing, use, sale and
distribution of any of the Reuters Parties' respective products or the provision
by the Reuters Parties of any services; provided, however, that if consent to
such registration is prohibited in a jurisdiction, TSI shall, at the Reuters
Parties' expense, either apply to register or assist the Reuters Parties in
applying to register such name and/or xxxx and license it to the Reuters Parties
in such jurisdiction. TSI and the Reuters Parties shall enter into a customary
license agreement embodying such terms and limited usage rights by TSI
consistent with the other terms of this Agreement; provided that,
notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not
be required to take any action pursuant to this Section that would
18
injure, harm or otherwise adversely affect the goodwill associated with the TIB
xxxx or TSI's rights in the xxxx.
2.9 Reuters Affiliates. All rights and licenses granted by TSI to Reuters
------------------
pursuant to this Agreement, including without limitation the license
granted by TSI to Reuters under Section 2.6 and the Distribution License granted
by TSI to Reuters under Section 6.1, may be assigned, transferred or sublicensed
to, or otherwise exercised and enjoyed by, any Affiliate of Reuters without
limitation; provided that Reuters remains responsible for such Affiliates'
performance under this Agreement.
2.10 Third-party License Grants by the Reuters Parties. Neither the
-------------------------------------------------
Reuters Parties nor their Affiliates shall grant to a Third-party that is not an
Affiliate of Reuters a license to: (i) the TIB Technology of substantially the
same scope or broader as the license to the TIB Technology granted to TSI
hereunder; or (ii) a substantial portion of the Source Code for the TIB Software
that grants such Third-party the right to use such Source Code for the purposes
of creating general purpose, nonapplication specific, middleware products.
Without in any way limiting or expanding the foregoing, nothing set forth in
this Section 2.10 shall in any way restrict the Reuters Parties from licensing
Source Code for the TIB Software or other TIB Technology to Financial Services
Companies or to a Third-party that is licensing TIB Technology for the purposes
of creating products or services for Financial Services Companies or from
granting a confidential license to Source Code in connection with any escrow or
similar arrangement required in the course of granting a license to Object Code
for the TIB Software.
2.11 Payment. Reuters acknowledges the receipt of a payment by TSI of the
-------
sum of $10,000,000.00 in connection with the licenses granted under the
Original License Agreement.
2.12 XXXXX.xxx. Notwithstanding the restrictions set forth in Article 2,
---------
TSI shall be permitted to make available XXXXX.xxx Inter/Intranet hosting
services to Financial Services Companies; provided that TSI shall not provide
any Financial Products or services that use Financial Products (either
internally or otherwise) as part of or in connection with such XXXXX.xxx
services, except that TSI may, as the sole exception to the foregoing, provide
as part of XXXXX.xxx, hosting services for the stock quote and other financial
market data products offered by Third-parties. Notwithstanding the foregoing,
nothing in this Section 2.12 shall limit or otherwise affect any distribution or
other rights of TSI with respect to TSI Products that are not Licensed Products
after the expiration of the Exclusivity Period. TSI shall pay to Reuters [ * ]
percent ([ * ]%) of the XXXXX.xxx Revenues within thirty (30) days after the end
of the fiscal quarter in which TSI recognizes such revenue. For purposes of this
Section 2.12, "XXXXX.xxx Revenues" shall mean the revenues recognized by TSI in
accordance with GAAP with respect to TSI's provision of XXXXX.xxx services to
Financial Services Companies, less hardware costs, Internet service provider
fees and third party software fees in each case to the extent separately
allocable to the customer. TSI will be permitted under the TSI Limited
Distribution Rights to make available TFT products (e.g., feed handlers) in
XXXXX.xxx hosting services provided directly by TSI subject to payment by TSI to
TFT of a license and maintenance fee of [ * ]% of all revenue (less hardware
costs, Internet service provider fees and third party software fees in each case
to the extent separately allocable to the customer) recognized in accordance
with GAAP and
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
19
allocable to such TFT products, with TFT providing all related third-level
support for such TFT products inclusive in such fee. To the extent that any TFT
products or TSI Products are licensed, and related services are provided,
directly to Financial Services Companies (rather than as part of TSI-provided
XXXXX.xxx hosting services), the TFT products and related services shall be
provided by TFT and the TSI Products and related services shall, during the
Exclusivity Period, be provided by TFT. Any TFT products and related services
that are licensed or provided directly to non-Financial Services Companies
(rather than provided as part of XXXXX.xxx hosting services) shall be licensed
or provided by TSI pursuant to the TSI Limited Distribution Rights. All
allocations in this Section 2.12 shall be made consistent with Section 6.4.
2.13 Distribution Rights. All rights and licenses granted to a Party
-------------------
hereunder to sell, sublicense or otherwise distribute any products or Technology
shall include the right to sell, sublicense or distribute such products or
Technology by any and all means whatsoever whether now known or hereafter
devised, subject to any limitations or other provisions applicable to
distribution over the Internet or other specified means that are expressly set
forth in this Agreement.
ARTICLE 3.
DELIVERABLES
3.1 Initial Delivery of Licensed Technology. Pursuant to Section 3.1 of
---------------------------------------
the Existing License Agreement, Reuters has delivered by electronic transfer to
TSI the Deliverables related to the TIB Technology contemplated to be delivered
by Reuters to TSI.
3.2 Delivery of TSI Technology. During the period beginning on the
--------------------------
Effective Date and ending on the fifteenth (15th) anniversary of the Original
Effective Date, TSI will disclose, and where reasonably necessary, deliver, or
cause to be disclosed or delivered to Reuters, or its designee, all TSI
Technology including, any TSI Source Code and other materials and information as
may reasonably be requested by Reuters, related to TSI Technology, hereafter
owned or Controlled by TSI. Such TSI Technology shall be so delivered promptly
upon the creation of such TSI Technology; provided that TSI shall deliver Source
Code (in the form of human-readable Source Code listing printouts, in machine-
readable electronic form) of all TSI Products, including Enhancements to
existing TSI Products promptly as each alpha, beta and general release version
(including any customizable TSI Products supported by TSI) is available and in
any event no less frequently than every 90 days. TSI represents and warrants
that all TSI Technology, including Source Code, existing on the Original
Effective Date has been disclosed or, if reasonably necessary, delivered to
Reuters or its designee as provided in Section 3.2 of the Existing License
Agreement. Through and until the fifteenth (15th) anniversary of the Original
Effective Date, the Parties will maintain in effect the "clean room" procedures
established pursuant to Paragraph 2 of the letter agreement entered into by the
Parties as of the Original Effective Date.
20
ARTICLE 4.
OWNERSHIP
4.1 Ownership by Reuters. As between each of the Reuters Parties and TSI,
--------------------
such Reuters Party shall be the exclusive owner, subject to the rights granted
to TSI hereunder or to Third-parties, of: (i) all Technology independently
developed by such Reuters Party, including in the course of providing
maintenance services; and (ii), subject to any patent rights of TSI, all
Intellectual Property Rights that cover, protect or embody such Technology set
forth in (i) of this Section 4.1.
4.2 Ownership by TSI. As between the Reuters Parties and TSI, TSI shall
----------------
be the exclusive owner, subject to the rights granted to Reuters hereunder and
to Third-parties, of: (i) any Technology independently developed by TSI,
including in the course of providing Maintenance Services; and (ii), subject to
any patent rights of the Reuters Parties, all Intellectual Property Rights that
cover, protect or embody such Technology. To the extent that such Technology is
a Derivative Work with respect to, or based on any TIB Technology, TSI's
ownership of such Technology shall be subject to Reuters' ownership of the TIB
Technology on which such Derivative Work is based or that is incorporated in
such Derivative Work, and its Intellectual Property Rights therein.
4.3 Cooperation. Each Party shall, upon the other Party's request,
-----------
cooperate with the requesting Party in obtaining, perfecting or protecting such
Party's interests, including Intellectual Property Rights, in any Technology,
software or product, at the requesting Party's expense.
4.4 Jointly-Developed Technology. The allocation of Intellectual
----------------------------
Property Rights in any Technology that is jointly developed by the Parties shall
be determined by mutual agreement allocating ownership and related rights and
obligations with respect to such Technology on a case-by-case basis in
accordance with the principles of Section 5.10.
ARTICLE 5.
DEVELOPMENT AND MAINTENANCE SERVICES
5.1 Development of TIB Technology.
-----------------------------
(a) Reuters may, in its sole discretion, continue to improve and
enhance the TIB Technology including by creating Reuters Enhancements that are
licensed under Section 2.3 hereof.
(b) Subject to Section 5.4, TSI shall continue to enhance, update and
improve the TIB Technology as it relates to Licensed Products and Licensed
Services. All such Enhancements shall be licensed and disclosed to Reuters in
accordance with Sections 2.6 and 3.2, respectively.
21
5.2 Maintenance Services.
--------------------
(a) TSI shall provide second and third level maintenance and support
for TSI Products to Reuters and its Affiliates with respect to all Reuters and
Reuters Affiliates' direct and indirect customers that acquire TSI Products
(whether or not such TSI Products are Embedded and including without limitation
customers that have entered into agreements with TFT after the Original
Effective Date). Such maintenance and support shall be in accordance with TSI's
then current normal maintenance and support practices, but in all events shall
be of no less quality and scope than the second and third level of maintenance
and support being provided by TSI on the Effective Date and in any event of not
less quality and scope than generally accepted industry standards. TSI shall
have no obligation to provide maintenance or support directly to any such
customers; provided that, notwithstanding the foregoing, the Reuters Parties
reserve the right to request any member of the TFT/Reuters dedicated staff
maintained pursuant to Section 5.2(b) to provide such direct support in cases
where such direct support is reasonably necessary, and TSI agrees to provide
such direct support when and as so requested.
(b) Without limiting the generality of any other provision of this
Agreement that relates to the maintenance and support obligations of TSI, TSI
shall maintain, at no additional charge to Reuters or its Affiliates during any
period that minimum annual license fees are payable pursuant to Section 6.3,
TFT/Reuters-dedicated staff of at least ten (10) full-time employees (subject to
semi-annual proportionate increase based on the extent to which license fees
paid to TSI in any semi-annual period are proportionately greater than the
license fees that were paid during the previous semi-annual period, without
regard to any minimum license fee payments) that are exclusively dedicated to
the performance of maintenance, technical, sales and administrative support for
and as directed by Reuters and TFT in connection with Reuters and TFT sales and
support of TSI Products and, as TSI and TFT shall mutually agree in order for
TSI to carry out such obligations, located in whole or in part at TFT's offices.
Additional TFT/Reuters-dedicated staff that may be necessary to provide adequate
support shall be provided by TSI as Reuters or TFT shall require; provided that
such additional staff shall be provided at support rates to be agreed by TSI and
the Reuters Parties. Additional dedicated maintenance and support for Embedded
TSI Products will be on a time and materials basis to the extent requested by
TFT.
(c) The Maintenance Services to be provided by TSI shall be equivalent
to or better than the normal level of maintenance provided by TSI to its
customers and shall, at a minimum, include the following:
(1) TSI shall promptly disclose to the Reuters Parties any bugs,
defects or errors in the operation of the TSI Products as the same become known
to TSI;
(2) TSI shall use its diligent efforts to remedy any bugs,
defects, or errors in the operation of the TSI Products known to it, including
as a result of any request from Reuters to remedy any bugs, errors or other
defects in such software in accordance with the severity level of such bugs,
defects or errors set forth in Schedule 5.2(a);
22
(3) TSI shall promptly provide to the Reuters Parties any Enhancements
made by TSI, or available to TSI, to the TSI Products and any materials or
documentation related to the operation or use of such software, in each case in
sufficient number and form to provide to all end-users; and
(4) Qualified TSI personnel will be available during normal business
hours in each region where TSI normally provides maintenance and support
services and will respond in accordance with the standards set forth in Schedule
5.2(c) to calls from Reuters Parties regarding assistance with, or malfunctions
or errors in the operation of, the TSI Products.
5.3 Sharing of Maintenance Revenue. The payments owing in respect of
------------------------------
maintenance revenue shall be as provided in Section 6.3; provided that the
Parties shall allocate pursuant to Section 6.4 the portion of Reuters or TFT
maintenance revenues generated with respect to a Reuters or TFT product
containing an Embedded TSI Product that is attributable to such Embedded TSI
Product.
5.4 Maintenance of TIB Software Products. TSI shall be responsible for
------------------------------------
maintaining, enhancing, supporting and improving any TIB Software products
licensed to TSI hereunder. TSI shall use its reasonable efforts to assure that
such software products are, to the extent reasonably practicable, at all times
maintained as competitive and viable products in the relevant market place.
Notwithstanding the foregoing, TSI may, in its discretion, determine that it no
longer wishes to continue to maintain or support one or more TIB Software
products, and in such event, it shall provide Reuters with reasonable advance
notice thereof and, at Reuters' request, shall provide Reuters with reasonable
assistance, at no cost to Reuters, to permit Reuters to acquire the resources,
skills and expertise to continue to maintain and support such product upon the
discontinuance of maintenance and support thereof by TSI.
5.5 Other TSI Development Services. If Reuters requests that TSI
------------------------------
undertake other development or consulting services related to the TIB
Technology, the parties shall negotiate in good faith toward an agreement for
the provision of such services by TSI, on a most-favored-customer basis, to
Reuters.
5.6 Other TFT Consulting Services. If TSI requests the consulting or
-----------------------------
other services of TFT in connection with the provision by TSI of products or
services to a Third-party, it shall provide TFT written notice thereof. TFT or
Reuters shall have the option, but not the obligation, to provide such services
on terms to be reasonably negotiated.
5.7 TFT Support of TSI Products. TFT shall make available to TSI on
---------------------------
reasonable terms and conditions (including compensation to be agreed and
consistent with TFT's marketing of its own products and services), the services
of TFT's international sales and service offices which services shall be for the
purpose of enabling TSI to market, install and maintain Licensed Products or to
provide Licensed Services in the regions served by such TFT offices.
5.8 Builds and Flavoring, Etc. If requested by Reuters or any of its
-------------------------
Affiliates in connection with any license of TSI Products by Reuters, such
Affiliate or their distributors, TSI shall promptly and diligently generate
builds of such products to be delivered to such licensees
23
and shall perform such flavoring and ticketing as reasonably requested by
Reuters or such Affiliate for such licensee in a manner designed to satisfy any
reasonable acceptance criteria or specifications relating to such products,
provided that all costs and expenses related to such builds or flavoring or
ticketing that are not normally done by TSI in the ordinary course of building
and releasing such TSI Products shall be paid by Reuters or the requesting
Affiliate on a time and materials basis.
5.9 Year 2000. TSI will ensure that as part of Maintenance Services it
---------
has available as and when reasonably required by the Reuters Parties a
proportionate share of its field and central support and technical staff of at
least the same scope as set forth in Section 5.2 during the period from December
30, 1999 through January 30, 2000 as may be required to address Year 2000 issues
with respect to the TSI Products previously licensed to end-users by Reuters,
its Affiliates and their distributors. The proportionate share shall be
determined by reference to revenues attributable to TSI Products sold by
Reuters, its Affiliates and their distributors as compared to all other TSI
Product revenue since December 31, 1996.
5.10 Certain Intellectual Property Ownership. In the event that TSI or a
---------------------------------------
Reuters Party provide consulting or development services, one to the other,
involving the development of software, the parties shall agree in writing as to
the respective ownership of intellectual property rights (including patents,
copyrights, trade secrets and similar rights) in and to any such software
("Developed Software") and their respective obligations with respect thereto.
Nothing in this Section 5.10 shall be deemed to constitute or create any
transfer of any intellectual property rights of either party that existed prior
to the provision of the particular consulting or development services and that
were used in the provision of such consulting or development services, and the
intellectual property ownership of such Developed Software shall be subject to
any such pre-existing rights.
ARTICLE 6.
REUTERS DISTRIBUTION RIGHTS
6.1 Distribution of TSI Products.
----------------------------
(a) Subject to the terms and conditions of this Article 6, Reuters
(and its Affiliates) shall be the preferred distribution channel to Financial
Services Companies, for all existing and future TSI Products, and TSI hereby
agrees and covenants with Reuters not to take any action, the purpose or effect
of which is to circumvent the role of Reuters (and its Affiliates) as such
preferred distribution channel, including without limitation by appointing any
Third Party Reseller to sell TSI Products principally to Financial Services
Companies or appointing any Third Party Reseller that TSI is aware intends to
sell TSI Products principally to Financial Services Companies.
(b) TSI hereby grants to Reuters the right and license (the
"Distribution License") to copy, make, have made, perform, display, offer for
---------------------
sale, import, sell sublicense and otherwise distribute on the terms and
conditions set forth in this Article 6, any and all current or future TSI
Products (including hardware and/or software products) that TSI, either
24
directly or through others, now or hereafter makes available, sells, licenses,
distributes or otherwise exploits.
(c) For the five (5)-year period commencing on the Effective Date (the
"Exclusivity Period"), the Distribution License, to the extent it authorizes
------------------
Reuters to sublicense, distribute and otherwise exploit TSI Products to or for
Financial Services Companies shall be sole and exclusive throughout the world
(including as to TSI), subject only to the provisions of Sections 6.1(d) and (e)
and the right of TSI to license, distribute or otherwise provide or exploit TSI
Products through Third Party Resellers to the same extent as TSI is permitted
to license, distribute or otherwise provide or exploit Licensed Products
pursuant to Section 2.5. As an adjunct to the exclusive rights of Reuters under
the Distribution License during the Exclusivity Period and to ensure that
Reuters (and its Affiliates) enjoy the full benefit of such exclusive rights,
TSI agrees that, during the Exclusivity Period, it shall not, and shall cause
its subsidiaries not to, directly or indirectly (whether or not through the use
of an interposed Person or through or to consultants or agents), conduct,
support, participate or engage in any business involving the provision of
services to a Financial Services Company, including providing consulting,
design, integration, customization, operation, support, development, partnering,
co-sourcing, data-processing, network management and similar services to a
Financial Services Company. Except as provided in the foregoing provisions of
this Section 6.1(c), the Distribution License shall be non-exclusive.
Notwithstanding the exclusive rights granted in this Section 6.1(c), TSI agrees
and acknowledges that Reuters and its Affiliates have no best efforts obligation
with respect to the exercise by Reuters of any such exclusive rights.
(d) Without limiting the generality of the foregoing, the distribution
rights of Reuters (and its Affiliates) set forth in Section 6.1(c) shall not
limit the right of TSI (at any time) to provide to a Third-party that is not a
Financial Services Company any TSI Products and related services: that (i) are
generally applicable to all fields, (ii) do not include functionality or
features specifically designed for use by a Financial Services Company, and
(iii) are not specifically designed for use by such Third-party or TSI Affiliate
for the purposes of creating products or services for Financial Services
Companies. In addition, commencing with the first year in respect of which
Reuters has elected not to pay a minimum annual license fee pursuant to Section
6.3(a) and continuing thereafter, the foregoing exclusive distribution rights
shall not limit TSI from selling, licensing, distributing or otherwise
exploiting Commodity Products to any third party; provided that, if TSI
materially breaches any of its obligations under this Agreement, and such breach
has not been cured within the period and in the manner specified in Section
6.6(a), solely with respect to Financial Services Companies, TSI thereafter
shall be prohibited from selling, licensing, distributing or otherwise
exploiting, (x) during the Exclusivity Period, any and all Commodity Products,
and (y) after the expiration of the Exclusivity Period, any and all Commodity
Products that are Licensed Products, in each case irrespective of whether
Reuters has continued to elect pursuant to Section 6.3(a) to pay a minimum
annual license fee to TSI at the time of any such breach. For the avoidance of
doubt, the Parties agree that nothing in this Section 6.1 creates any exceptions
or otherwise affects any rights or limitations set forth in Article 2 with
respect to the licensing or other exploitation of Licensed Products.
25
(e) In addition, nothing in Section 6.1(a), (b) or (c) will prohibit
TSI from bona fide mergers, acquisitions, purchases of assets or other similar
transactions by TSI of or with going concerns that sell products or provide
services to Financial Services Companies. In the event of such transaction, TSI
shall be permitted to continue and expand the business of such acquired or
merged entity in all respects or the assets so acquired including with respect
to Financial Services Companies, notwithstanding any provision of this Agreement
to the contrary, except that the restrictions in Section 2.4 shall continue to
apply following any such transaction with respect to the products or services of
such going concerns that are sold or provided to Financial Services Companies to
the extent that TSI has Embedded or incorporated any TIB Technology, Reuters
Enhancements or TIB-Derived Technology into such product or services. TSI
Affiliates shall be subject to, and have the rights under, the terms of this
Agreement. Notwithstanding the foregoing provisions of this Section 6.1(e), and
subject to TSI's right to grant sublicenses as and to the extent provided in
Sections 2.1(a)(2), 2.1(b) and 2.5 above, TSI shall not, except with Reuters'
consent (in accordance with Section 12.6), directly or indirectly, assign its
rights under this Agreement.
(f) TSI shall cause, and shall cause its subsidiaries to cause, their
respective employees to comply with the exclusivity rights in favor of Reuters
for so long as they are employees of TSI or a subsidiary of TSI.
(g) TSI shall not, directly or indirectly, assign, transfer or dispose
of its rights under this Agreement (by change of control, through affiliate
action, takeover, reorganization, restructuring, spin-off or similar corporate
transactions or otherwise), for the purposes of circumventing, avoiding or
limiting the exclusivity rights of Reuters set forth in Section 6.1(c).
(h) During the Exclusivity Period, and provided that TSI is actively
in the business of supplying Licensed Products and Licensed Services in
accordance in all material respects with the rights granted to it hereunder,
except as otherwise agreed by TSI in writing, TFT, including any subsidiary of,
or successor (other than a successor that is Reuters or an Affiliate of Reuters)
to TFT, shall neither: (i) conduct, support, participate or engage in any
business involving the provision of services that are not related to a Financial
Product to a Person that is not a Financial Services Company, including
providing design, consulting, integration, embedding, operational support,
partnering, co-sourcing, data processing, network management, service
provisioning, or similar services; nor (ii) engage in the business of creating,
licensing or selling a product that is not a Financial Product to a Person that
is not a Financial Services Company. TSI agrees and acknowledges that TIB
Mercury and TIB Exchange each constitutes a Financial Product. This Section
6.1(h) shall apply to TFT only, and, without limiting the foregoing, shall not
in any way apply to or bind Reuters or any other Affiliate of Reuters.
(i) The exclusive rights of the parties contained in this Section 6.1
relate to matters which are of a special, unique and extraordinary character and
a violation of any of the terms of this Section 6.1 will cause irreparable
injury to the aggrieved party, the amount of which will be impossible to
estimate or determine and which cannot be adequately compensated. Therefore,
the aggrieved party shall be entitled to an injunction, restraining order or
other
26
equitable relief from any court of competent jurisdiction in the event of any
breach of the exclusivity rights of such party under this Section 6.1. The
rights and remedies provided by this Section 6.1 are cumulative and in addition
to any other rights and remedies, including damages (including monetary,
punitive or enhanced damages), which the aggrieved party may have hereunder or
at law or in equity.
(j) The parties hereto agree that, if any court of competent
jurisdiction in a final nonappealable judgment determines that a specified time
period, a specified geographical area, a specified business limitation or any
other relevant feature of this Section 6.1 is unreasonable, arbitrary or against
public policy, then a lesser time period, geographical area, business limitation
or other relevant feature which is determined to be reasonable, not arbitrary
and not against public policy may be enforced against the applicable Party.
(k) Nothing set forth in this Section 6.1 is intended to or shall
otherwise grant TSI any rights or licenses with respect to the Reuters
Intellectual Property Rights.
(l) TSI Products shall be sublicensed and otherwise distributed under
this Section 6.1 pursuant to Authorized Licenses.
(m) Notwithstanding the foregoing provisions of this Section 6.1,
solely with respect to TFT and its successors and assigns (other than a
successor or assign that is Reuters or an Affiliate of Reuters), and except as
otherwise agreed by TSI in writing, the Distribution License exercisable by TFT
shall be limited to the sale, sublicense and distribution to Financial Services
Companies and the sale, sublicense and distribution of TSI Products on a
Embedded basis with Financial Products, provided that TFT shall not be
prohibited from providing TSI Products through a third party distributor or
reseller of TFT (each a "TFT Distributor") so long as the following conditions
are satisfied: (i) TFT cooperates with TSI to avoid channel conflict with TSI
in relation to any such provision of TSI Products or related services to non-
Financial Services Companies; and (ii) TFT makes the payments specified in
Section 6.3(b). In the event that any such TFT Distributor engages in more than
such de minimis sales of TSI Products to entities that are not Financial
Services Companies ("Non-FSC Sales"), (x) TFT shall use reasonable commercial
efforts to assist TSI in obtaining a distribution or resale relationship
directly with the TFT Distributor with TSI being the provider of all TSI
Products to or for non-Financial Services Companies; (y) if more than [ * ] (but
less than [ * ]) of the revenues received by TFT from any such TFT Distributor
are attributable to Non-FSC Sales, [ * ] of such revenues from Non-FSC Sales
shall be paid by TFT to TSI; and (z) if more than [ * ] of the revenues received
by TFT from any such TFT Distributor are attributable to Non-FSC Sales [ * ] of
such revenues from Non-FSC Sales shall be paid by TFT to TSI.
(n) If either Reuters or TSI wish to have TSI engage in an activity,
or to produce a product, otherwise prohibited to TSI pursuant to Section 6.1(c),
the Parties shall engage in good faith negotiations in relation to whether to
permit TSI, on such terms and conditions as may be agreed in writing, to engage
in such otherwise prohibited activities either on its own or jointly with
Reuters and/or TFT. If either TFT or TSI wish to have TFT engage in
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
27
an activity otherwise prohibited to TFT pursuant to this Section 6.1, the
Parties shall engage in good faith negotiations in relation to whether to permit
TFT, on such terms and conditions as may be agreed in writing, to engage in such
otherwise prohibited activities either on its own or jointly with TSI.
6.2 Supply of Products. In order to permit Reuters to distribute TSI
------------------
Products in accordance with Section 6.1, TSI shall promptly inform Reuters of
the existence of each new TSI Product that TSI intends generally to make
available, sell, embed, license, sublicense or distribute. At the same time
that TSI makes such TSI Product available for sale or license to any Third-
party, TSI shall also make such TSI Product, and true and correct copies of any
related documentation and release notes, available to Reuters for distribution
and sale by Reuters and Reuters Affiliates pursuant to Section 6.1. TSI shall
make TSI Products available to Reuters at least to the same extent such products
are made available for sale or license to Third-parties (e.g., as indicated on
TSI's "Product Availability" chart).
6.3 Distribution Fee.
----------------
(a) Reuters shall pay TSI minimum annual license fees in respect of
licensing and maintenance revenue recognized by the Reuters Parties in respect
of TSI Products other than ETX Software (collectively the "Revenue-Sharing
---------------
Products") of $16 million, $18 million and $20 million during 1999, 2000 and
--------
2001, respectively. The minimum annual license fees will be payable in
quarterly installments on the last day of each calendar quarter ("Quarterly
---------
Minimum License Fee Installments"); provided that (x) a Quarterly Minimum
--------------------------------
License Fee Installment shall be payable at such time only if Reuters reasonably
determines in good faith that TSI is not then in material breach of this
Agreement and (y) the $16 million minimum annual license fee for 1999 shall be
paid in three equal quarterly installments at the end of each quarter in 1999
beginning with the quarter ending June 30, 1999 (with the $16 million minimum
license fee payable over the last three quarters of 1999 being reduced by the
amount of any license fees paid previously by the Reuters Parties to TSI in
respect of sales of TSI Products during 1999). Any such Quarterly Minimum
License Fee Installment that is so withheld as provided in clause (x) above will
be payable by Reuters to TSI (without interest) promptly after TSI shall have
cured any and all such material breaches or if the breach is not capable of such
cure, TSI shall have taken remedial measures to substantially mitigate any
adverse impact on the Reuters Parties of such breach to Reuters' reasonable
satisfaction. In no event shall any Quarterly Minimum License Fee Installment
payable in respect of a given quarter exceed the difference between (i) the sum
of the scheduled Quarterly Minimum License Fee Installment payable in respect of
such quarter and any Quarterly Minimum License Fee Installments payable in
respect of any prior quarter during the year in question and (ii) the aggregate
amount of license fees (including Quarterly Minimum License Fee Installments)
paid in respect of any such prior quarters during such year.
Commencing with TSI's last fiscal quarter of 2001 and, so long as Reuters
shall have elected in accordance herewith to pay a minimum annual license fee in
respect of each intervening year, during TSI's last fiscal quarter of each
succeeding year thereafter (or, if TSI's fiscal year is hereafter changed, the
last calendar quarter of each such year), Reuters may elect at
28
any time prior to the end of such quarter to pay, in the following year, a
minimum annual license fee, in the case of each of the year 2002 and the year
2003, equal to $20 million, and for each year thereafter 110% of the minimum
annual license fee payable by Reuters hereunder in such year in which the
election is made (with the minimum annual license fee for the year 2004
accordingly being set at $22 million); provided that if Reuters does not elect
to pay such minimum license fee in the following year the following arrangements
will be applicable:
(1) Reuters shall pay to TSI, on a quarterly basis, [ * ]% of the
licensing and maintenance revenue of the Reuters Parties and their Affiliates
that is attributable to Revenue-Sharing Products recognized in accordance with
GAAP or its foreign equivalent by the Reuters Parties and their Affiliates
during each quarter;
(2) notwithstanding any provision of this Agreement to the contrary,
but subject to Section 6.6, the provisions of Section 2.4 and in Section 6.1(c)
shall be deemed not to apply to Commodity Products, and TSI shall be permitted
to sell, license or otherwise distribute Commodity Products to Financial
Services Companies, with TSI permitted to provide standard maintenance,
including upgrades, enhancements and bug fixes to customers of Commodity
Products; and
(3) the provisions of Section 5.2(b) regarding TSI's dedicated support
obligations will be waived and TSI's maintenance obligation will consist of
third level only, with Reuters having a right to contract with TSI for second
level maintenance.
Once the arrangements in clauses (1), (2) and (3) above become effective
following Reuters opting not to elect in respect of any applicable year to pay a
minimum annual license fee in accordance with the foregoing provisions of this
Section 6.3(a), such arrangements shall continue in effect in perpetuity,
subject to the provisions of Section 6.6.
(b) At all times during which Reuters (or any Reuters Affiliate)
distributes any TSI Products pursuant to this Article 6, Reuters shall pay TSI,
on a quarterly basis, a license fee in respect of TSI Products equal to [*]%
(or such lower rate as is expressly provided in Section 6.3(a) or Section 6.6)
of the license and maintenance revenues attributable to Revenue-Sharing Products
recognized by the Reuters Parties or any of their Affiliates during the prior
quarter in accordance with GAAP or its foreign equivalents (less any discounts
not already deducted from revenues and less any withholding taxes included in
such revenues), excluding revenues attributable to TSI Products that are
Embedded in TFT or Reuters products, such as TFT's Market Data System product or
Reuters' Triarch product (including any successor products of Reuters or its
Affiliates that incorporates or combines such TFT Market Data System or Reuters
Triarch product, any and all such products being referred to as an "MDS") or
---
where TIB/Rendezvous is packaged with an MDS for use exclusively with such MDS,
such that the end user may utilize TIB/Rendezvous only in connection with such
MDS and with no other application, thereby requiring separate sale of
TIB/Rendezvous to the end user for use in connection with other applications.
However, if either of the Reuters Parties or any of their Affiliates sells or
distributes such Revenue-Sharing Products through a Third-party, such license
and maintenance fee shall be [*]% of the revenue recognized by such Reuters
Parties or Affiliates
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
29
in accordance with GAAP or its foreign equivalents (less any discounts not
already deducted from revenues and less any withholding taxes included in such
revenues). The foregoing license fee rate shall be effective as of January 1,
1998. License Fees in excess of the applicable Quarterly Minimum License Fee
Installment will be payable in respect of a particular calendar quarter only if
and to the extent the aggregate amount of license fees accrued in respect of
such quarter, together with the license fees accrued during all prior calendar
quarters during the year in question, exceed the sum of the Quarterly Minimum
License Fee Installment payable for such quarter and all such prior quarters in
such year.
(c) TSI shall have the right, at its sole expense, to engage its
external auditors to audit the books and records of the Reuters Parties or any
of their Affiliates relating to the maintenance and distribution of TSI Products
for purposes of verifying the calculation of the license fees payable to TSI,
subject to reasonable confidentiality provisions and further provided that such
right shall be exercised no more frequently than once each calendar year. If
any adjustments are made to the amount of licensing revenues that were
recognized in a given quarter after the payment of license fees in respect of
such quarter, corresponding adjustments will be made to the amount of license
fees payable in respect of such quarter. The Reuters Parties shall maintain
complete and accurate files and books and records of account with respect to the
revenues earned from maintenance and distribution of the TSI Products by the
Reuters Parties and their Affiliates. Records will be maintained for a period
of at least three (3) years after the creation of such records.
6.4 Allocation of Revenue. In order to allocate fairly revenues relating
---------------------
to licenses of TSI and Reuters Parties products, services or any other item and
the provision of related maintenance and support, such revenues shall be
determined in accordance with the following:
(i) The Reuters Parties shall allocate fees fairly as between the
TSI Product license and maintenance fees, on the one part, and
any Reuters or TFT products, services or any other item, sold in
connection with any customer transaction or series of related
transactions. Such fair allocation shall be based on a
presumption that TSI Product license or maintenance fees have
not been discounted at a greater rate (based on standard list
price) than any Reuters or TFT products, maintenance, services or
any other item, sold in connection with any customer transaction
or series of related transactions.
(ii) The Reuters Parties shall not structure any customer transaction
or series of transactions with the purpose of reducing the
pricing or allocation of TSI Product license or maintenance fees
in relation to any such Reuters or TFT products or services or
other items. For example, in a transaction that includes TSI
Products and Reuters or TFT services, Reuters and TFT shall
fairly allocate service fees only for services actually performed
and shall not, in connection with the determination of the amount
properly allocable to sales of products, deem TSI Product or
license fees to have been discounted in a proportionate amount
greater than the proportionate amount that such services have
been discounted.
30
The provisions of this Section 6.4(i) and (ii) shall apply mutatis mutandis
to the allocation of revenues of TSI that are subject to a payment obligation
from TSI to any Reuters Party under this Agreement.
6.5 Reconciliation of 1998 License Fee Amounts. The amount payable by
------------------------------------------
TFT to TSI in respect of the licensing by the Reuters Parties of TSI Products
and the provision of related maintenance services during 1998 shall be
reconciled on the books of TFT and TSI (and an appropriate adjusting payment
shall be made) to reflect the actual amount owing to TSI under the Existing
License Agreement based on the [ * ]% license fee payable as described in
Section 6.3 above.
6.6 Effect of the Occurrence of Specified Events on License Fee
-----------------------------------------------------------
Obligations of Reuters.
----------------------
(a) In the event that (i) any of the material restrictions imposed on
TSI pursuant to Section 2.4 or the exclusivity rights of Reuters in Section
6.1(c) ceases to be legally and fully effective (in the case of the exclusivity
rights granted in Section 6.1(c), other than by reason of expiration of the
Exclusivity Period), or (ii) TSI shall have materially breached any of its
obligations under this Agreement, and such breach shall not have been cured
within a reasonable period not to exceed six months from the date written notice
of such breach is given by Reuters or, in the case of an incurable breach, TSI
shall not have taken remedial measures to substantially mitigate any material
adverse impact on Reuters (and its Affiliates) of such breach to Reuters'
reasonable satisfaction within a reasonable period not to exceed six months from
the date written notice of such breach is given by Reuters, then,
notwithstanding anything contained in this Agreement to the contrary,
(x) if and to the extent applicable, Reuters, at its election, may
cease immediately paying any further Quarterly Minimum License
Fee Installments owing by Reuters for the remainder of such year
or in any future year as to which Reuters otherwise would have an
obligation to pay any minimum annual license fees pursuant to
Section 6.3(a);
(y) only in the event of a material breach by TSI of any of its
obligations under this Agreement that is not cured when and as
provided above in clause (ii) of this Section 6.6(a), and
irrespective of whether Reuters is or is not then paying a
minimum annual license fee to TSI pursuant to Section 6.3(a), TSI
thereafter shall, solely with respect to Financial Services
Companies, be prohibited from selling, licensing, distributing or
otherwise exploiting, (I) during the Exclusivity Period, any and
all Commodity Products, and (II) after the expiration of the
Exclusivity Period, any and all Commodity Products that are
Licensed Products, with the effect that thereafter TSI shall be
prohibited from selling, licensing or distributing Commodity
Products (or, after the expiration of the Exclusivity Period,
Commodity Products that are Licensed Products) to Financial
Services Companies without regard to any election by Reuters to
31
[ * ] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
pay, or any payment by Reuters of, any minimum annual license fee
pursuant to Section 6.3(a); and
(z) the license fee rates specified in Section 6.3 in respect of
licensing and maintenance revenue shall be reduced to [ * ]% (or,
if lower, the lowest equivalent distribution fee or license fee
received by TSI at such time for equivalent volumes from any
other distributor or reseller of TSI Products), in each case
effective as of the date on which such notice of breach has been
given by the Reuters Parties.
(b) If, after the expiration of the Exclusivity Period, TSI engages
in any activity of a kind that is defined to be within the exclusive rights of
Reuters under Section 6.1(c) (and thus such activity would have violated the
exclusive rights of Reuters but for the expiration of the Exclusivity Period),
and if such activity has not ceased in its entirety and the adverse impact of
such activity on Reuters (and its Affiliates) eliminated in its entirety
(including without limitation through the termination of all rights and licenses
granted by TSI in connection with such activity) within six (6) months after TSI
commenced such activity, or if TSI is incapable of causing such activity to
cease in its entirety and eliminating the adverse impact of such activity on
Reuters (and its Affiliates) in its entirety, TSI shall have failed to take
remedial measures to substantially mitigate any material adverse impact on the
Reuters Parties of such activity to Reuters' reasonable satisfaction within six
(6) months after TSI commenced such activity,
(i) if and to the extent applicable, Reuters, at its election, may
cease immediately paying any further Quarterly Minimum License
Fee Installments owing by Reuters for the remainder of such year
or in any future year as to which Reuters otherwise would have an
obligation to pay any minimum annual license fees pursuant to
Section 6.3(a) (it being understood that, upon any such election
by Reuters, TSI shall be permitted to sell, license or distribute
Commodity Products to any third party in perpetuity, subject to
Section 6.6(a)); and
(ii) the license fee rates specified in Section 6.3 in respect of
license and maintenance revenue attributable to Revenue-Sharing
Products shall be reduced to * percent (*%) (or, if lower, the
lowest equivalent distribution fee or royalty received by TSI at
such time for equivalent volumes from any other distributor or
reseller of TSI Products), effective as of the date on which TSI
commenced such activity.
ARTICLE 7.
CONFIDENTIAL INFORMATION
7.1 Treatment of Confidential Information.
-------------------------------------
(a) The Receiving Party shall treat as confidential all of the
Disclosing Party's Confidential Information (except to the extent that the
Receiving Party receives such
[ * ] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
32
Confidential Information in connection with a transfer of ownership thereof
pursuant to this Agreement) and shall not use such Confidential Information
except as expressly permitted under this Agreement. Without limiting the
foregoing, the Receiving Party shall use at least the same degree of care which
it uses to prevent the disclosure of its own confidential information of like
importance, but in no event with less than reasonable care, to prevent the
disclosure of the Disclosing Party's Confidential Information.
(b) All Deliverables provided by Reuters to TSI, other than published
documents and materials, disclosing the TIB Technology shall be deemed
Confidential Information of Reuters notwithstanding any failure to xxxx such
documents or materials as "Confidential."
(c) TSI may disclose Reuters Confidential Information to a Third-party
only: (i) as may be permitted by this Agreement; (ii) subject to a written
Confidentiality Agreement that contains terms at least as protective of such
information as this Agreement; or (iii) with Reuters' express, prior written
approval.
7.2 Exclusions.
----------
(a) Confidential Information shall exclude information that the
Receiving Party can demonstrate: (i) was independently developed by the
Receiving Party; (ii) became known to the Receiving Party, without restriction,
from a Third-party or Affiliate who had a right to disclose it; (iii) was in the
public domain at the time it was disclosed or enters the public domain through
no act or omission of the Receiving Party; or (iv) was known to the Receiving
Party at the time of disclosure.
(b) The restrictions set forth in Section 7.1 shall not apply to
Confidential Information which is required to be disclosed by the Receiving
Party pursuant to an 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 and shall use reasonable
efforts to obtain a protective order or otherwise prevent public disclosure of
such information.
7.3 Confidentiality of Agreement. Each Party agrees that the terms and
----------------------------
conditions of this Agreement, but not the existence of this Agreement, shall be
treated as Confidential Information and that no reference to the terms and
conditions of this Agreement or to activities pertaining thereto can be made in
any form of pubic or commercial advertising without the prior written consent of
the other Parties; provided, however, that each Party may disclose the terms and
conditions of this Agreement:
(a) as required by any court or other governmental body;
(b) as otherwise required by law;
(c) to legal counsel of the parties;
33
(d) in connection with the requirements of any securities market
filing or public offering;
(e) in confidence, to accountants, banks, and financing sources and
their advisors; or
(f) in confidence, in connection with the enforcement of this
Agreement or rights under this Agreement.
7.4 Third-party Disclosure. Each Party agrees that, to the extent it is
----------------------
permitted to disclose Confidential Information to a Third-party or Affiliate
(other than a Party), it shall do so pursuant to a written non-disclosure
agreement containing terms at least as protective of Confidential Information as
those set forth in this Agreement.
7.5 Remedies. Unauthorized use by a Receiving Party of the Disclosing
--------
Party's Confidential Information will result in irreparable harm to the
Disclosing Party. Therefore, if a Party breaches any of its obligations with
respect to confidentiality and unauthorized use of Confidential Information
hereunder, the Disclosing Party, in addition to any rights and remedies it may
have, shall be entitled to seek equitable, including injunctive, relief to
protect its Confidential Information.
ARTICLE 8.
[INTENTIONALLY OMITTED]
ARTICLE 9.
TERM
9.1 Term. The term ("Term") of this Agreement shall commence on the
----
Effective Date and shall continue in perpetuity unless terminated by written
agreement of the Parties.
9.2 No Termination for Breach.
-------------------------
(a) This Agreement may not be terminated by any Party and, subject to
any modified terms that shall become applicable hereunder in the event of the
happening of specified events or actions, the rights granted, and obligations
imposed, under this Agreement shall continue in full force and effect,
notwithstanding any material breach of any term hereof by any party.
(b) In the event of a breach of any term of this Agreement by a Party
(the "Breaching Party"), the other Party (the "Non-Breaching Party") may bring
--------------- -------------------
any action against the Breaching Party and may seek any and all relief and
remedies, including damages (including monetary, punitive or enhanced damages),
injunctive relief and equitable relief against the
34
Breaching Party. In the event of an adjudicated material breach by TSI of any
term of this Agreement, a court or other tribunal shall award, and TSI agrees to
pay, all costs, including court costs and attorneys' and expert fees, incurred
by Reuters in bringing and maintaining such action (including any appeals).
ARTICLE 10.
REPRESENTATIONS AND WARRANTIES; INDEMNIFICATION
10.1 Warranties and Representations of the Reuters Parties. The Reuters
-----------------------------------------------------
Parties represent and warrant to TSI that: (i) they have the right, power and
authority to enter into this Agreement and to fully perform their obligations
hereunder; and (ii) the making of this Agreement does not violate any agreement
existing between the Reuters Parties and any other Person.
10.2 Warranties and Representations of TSI. TSI represents and warrants
-------------------------------------
to the Reuters Parties that: (i) it has the right, power and authority to enter
into this Agreement and to fully perform its obligations hereunder; (ii) the
making of this Agreement does not violate any agreement existing between TSI and
any Person; (iii) to its knowledge, the TSI Products do not infringe or result
in a misappropriation or other violation of the Intellectual Property Rights of
any Third-party; (iv) the TSI Products provided by TSI to the Reuters Parties
and the exercise by the Reuters Parties of any right granted to it by TSI
hereunder with respect thereto will not infringe or result in a misappropriation
or other violation the Intellectual Property Rights of any Third-party (but
excluding the combination of TSI Products with third party hardware or software
or such infringement or misappropriation that results from any modification by a
Reuters Party to such TSI Product); (v) for ninety (90) days following delivery
of any TSI Product to TFT or Reuters, such TSI Product, under normal use and
service, will substantially conform in all material respects with the functional
descriptions described in the then current user documentation provided by TSI
for such product and will be free from viruses (provided that (1) TSI's
obligation under the foregoing warranty shall be limited solely to repair or
replacement of any such product defects and correction of functionality problems
of which TSI is notified during such ninety (90) day period, with the period
tolled after such notice; (2) a Reuters Party shall give TSI prompt notice of
any alleged defect and shall provide TSI with such reasonable information and
materials as such Reuters Party shall have available in order for TSI to
diagnose and replicate the problem; (3) TSI shall have reasonable time to
review such information and materials and to determine the necessary repair; and
(4) TSI's warranty shall not apply (x) to program defects which have been
previously identified by TSI to the Reuters Parties and for which program
corrections have been submitted to the Reuters Parties, (y) in the event there
has been an alteration or revision to the TSI Product that was not authorized by
TSI, or (z) where the latest TSI Product update or revision has been supplied
but not used); and (vi) will not contain any undisclosed timers, lock-outs,
backdoors or trapdoors or any other means of disabling the product (excluding
flavoring or ticketing mechanisms).
10.3 Year 2000 Warranties TSI represents and warrants to the Reuters
--------------------
Parties that, through July 31, 2000 and subject to the provisions set out below
in this Section 10.3, each TSI
35
Product shall be Year 2000 Compliant (the "Year 2000 Warranty"). "Year 2000
------------------ ---------
Compliant" shall mean that there will not be a reduction in any material respect
---------
in the TSI Product's functionality, as a result of its inability to process date
information accurately before, on or after January 1, 2000 (including leap
years), which is solely attributable to the TSI Product. Where any Other
Materials are used in connection with any TSI Product, TSI will not be in breach
of the Year 0000 Xxxxxxxx if the failure of the TSI Product to be Year 2000
Compliant is caused by any Other Materials being unable to process date
information accurately before, on or after January 1, 2000 (including leap
years). "Other Materials" means any hardware, firmware, software (including
---------------
databases and operating systems), and other materials, and any data or
information, which are used in connection with the TSI Products and are not part
of the TSI Products, including any other materials, software, data or
information provided by the Reuters Parties or a Third-party licensee or
distributor of the Reuters Parties and used in connection with the TSI Products.
Neither TSI nor any Affiliates, employees, officers or directors, nor any third
party supplier to TSI will be liable to the Reuters Parties or to any third
party for any loss or damage in connection with any breach of the Year 2000
Warranty, except as provided in this Section 10.3. If TSI is in breach of the
Year 0000 Xxxxxxxx in relation to a TSI Product, the Reuters Parties' exclusive
remedies, and TSI's exclusive obligations are: (a) to require TSI, at TSI's
option, to either repair, replace or provide a workaround for the relevant
product; or (b) if TSI is unable to provide a repair, replacement or workaround
within a reasonable period of time, to release Reuters Parties from the
obligation to pay maintenance fee royalties in respect of that TSI Product
during the period from 1 January 2000 to the date on which the relevant product
becomes Year 2000 Compliant. The Year 0000 Xxxxxxxx does not apply to any data
or other information provided to TSI by any information provider. Accordingly,
TSI shall not be liable for any loss or damage arising from the fact that any
such data or other information is not Year 2000 Compliant.
10.4 WARRANTY EXCLUSIONS. EXCEPT AS PROVIDED IN SECTIONS 10.2 AND 10.3
-------------------
ABOVE, ALL SOFTWARE, TECHNOLOGY AND INTELLECTUAL PROPERTY LICENSED OR PROVIDED
HEREUNDER, IS LICENSED AND PROVIDED, AS IS, AND WITHOUT WARRANTY OF ANY KIND.
ALL EXPRESS AND IMPLIED WARRANTIES, INCLUDING WARRANTIES OF TITLE, NON-
INFRINGEMENT, MERCHANTABILITY, UNINTERRUPTED SERVICE OR FITNESS FOR A PARTICULAR
PURPOSE ARE EXPRESSLY DISCLAIMED.
10.5 Indemnification.
---------------
(a) TSI shall defend, indemnify and hold harmless the Reuters Parties
from and against any third-party claim, lawsuit or proceeding, and any debts,
liabilities, losses, cost or expenses relating thereto or arising therefrom,
including reasonable attorneys' fees, to the extent based on a claim that the
TSI Products infringe, result in a misappropriation of or otherwise violate the
Intellectual Property Rights of a Third-party (excluding any claim based on the
combination of the TSI Products with any third party hardware or software, where
the TSI Products would not so infringe, misappropriate or violate absent such
combination, or where such infringement or misappropriation is attributable to
any TIB Technology or Reuters Enhancement and would not have occurred but for
such TIB Technology or Reuters
36
Enhancement); provided that TSI is promptly notified in writing of such claim
and provided further that TSI shall have the exclusive right to control such
defense and/or settlement, and the Reuters Parties provides reasonable
assistance (at TSI's expense and reasonable request) in the defense of same. In
no event shall the Reuters Parties settle any claim, lawsuit or proceeding
without TSI's prior written approval. The Reuters Parties may, at its own
expense, join in such defense if it so chooses.
(b) In the event of any such claim, lawsuit or proceeding, TSI, at its
sole option and expense, may (1) procure for the Reuters Parties the right to
continue to use the TSI Products that are the subject thereof to the full extent
provided in this Agreement or (2) replace or modify the TSI Products with
software that in all material respects is functionally equivalent. If neither
of the foregoing alternatives is reasonably practical in the reasonable opinion
of TSI, after giving due consideration to all factors including financial
expense, TSI may give notice to the Reuters Parties that all further use or
exploitation of such TSI Product shall be at the sole risk of the Reuters
Parties and the Reuters Parties thereafter will be responsible for any and all
losses, damages, costs and expenses assessed or incurred as a result of such
actual or alleged infringement that accrue on or after the date of such notice.
(c) The foregoing states the entire liability of TSI with respect to
the infringement of any Third-party Intellectual Property Rights.
ARTICLE 11.
LIMITATION OF LIABILITY
EXCEPT AS PROVIDED IN SECTION 6.1(f), IN NO EVENT SHALL A PARTY BE LIABLE
TO THE OTHER FOR ANY SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES,
INCLUDING LOST PROFITS, COST OF COVER OR LOST BUSINESS OPPORTUNITIES, ARISING
OUT OF OR IN CONNECTION WITH THIS AGREEMENT OR ANY EVENTS OR TRANSACTIONS
ARISING BY VIRTUE OF THIS AGREEMENT, INCLUDING WITHOUT LIMITATION ANY BREACH
HEREOF AND WHETHER THE CAUSE OF ACTION IS BASED IN CONTRACT, TORT (INCLUDING
NEGLIGENCE) OR OTHERWISE. THE FOREGOING LIMITATIONS SHALL APPLY EVEN IF THE
PARTY AGAINST WHOM DAMAGES ARE SOUGHT HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES.
ARTICLE 12.
MISCELLANEOUS
12.1 Notices. Any notice or reports required or permitted to be given
-------
under this Agreement shall be given in writing and shall be delivered by
personal delivery, telegram, telex, telecopier, facsimile transmission or
registered mail, postage prepaid, return receipt requested, and shall be deemed
given upon personal delivery five (5) days after deposit in the mail or upon
acknowledgment of receipt of electronic transmission. Notices shall be sent to
the Parties as follows or to such other person and address that a Party may
specify in writing;
37
If to Reuters: If to TSI:
--------------- ---------
Reuters Limited TIBCO Software, Inc.
00 Xxxxx Xxxxxx 0000 Xxxxxx Xxxxx
Xxxxxx, Xxxxxxx Xxxx Xxxx, XX 00000
EC4P 4 AJ Attn: Chief Executive Officer
Attention: General Counsel Tel: (000) 000-0000
Tel: 000-00000-000-0000 Fax: (000) 000-0000
Fax: 000-00000-000-0000
If to TFT:
---------
TIBCO Finance Technology, Inc.
0000 Xxxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Attn: Chief Executive Officer
Tel: (000) 000-0000
Fax: (000) 000-0000
12.2 Bankruptcy. All rights and licenses granted to a Party under or
----------
pursuant to this Agreement by the other (other than the trademark license
pursuant to Section 2.8) are, and shall otherwise be deemed to be, for purposes
of Section 365(n) of the U.S. Bankruptcy Code (11 U.S.C. 101, et seq.), licenses
to rights of "intellectual property" as defined thereunder. Notwithstanding any
provision contained herein to the contrary, if a party is under any proceeding
under the Bankruptcy Code and the trustee in bankruptcy of such party, or the
party, as a debtor in possession, rightfully elects to reject this Agreement,
the other party may, pursuant to 11 U.S.C. Section 365(n)(1) and (2), retain any
and all rights hereunder granted to it, to the maximum extent permitted by law,
subject to the payments, if any, specified herein.
12.3 Audit. Reuters shall have the right, subject to reasonable limits
-----
and reasonable confidentiality provisions, upon reasonable notice, to enter
TSI's premises during normal business hours provided that such rights be
exercised not more than once per calendar year for the purposes of (i)
inspecting TSI's operations and determining TSI's compliance with the terms of
this Agreement or (ii) auditing TSI's financial records for the sole purpose of
verifying the calculations of the amounts payable to the Reuters Parties
pursuant to Section 2.5. TSI shall cooperate with Reuters during such inspection
or audit and shall make available to Reuters such materials and information as
Reuters shall reasonably request. TSI shall maintain complete and accurate files
and books and records of account with respect to all of its activities hereunder
and all transactions relating to the Licensed Products and Licensed Services.
Records will be maintained for a period of at least three (3) years after the
creation of such records.
12.4 Export Regulation. Neither TSI nor any of its sublicensees or
-----------------
assignees shall export, directly or indirectly, any Technology or information
acquired or licensed under this Agreement or any products utilizing any such
Technology or information to any country for
38
which the U.S. Government or any agency thereof at the time of export requires
an export license or other government approval without first obtaining such
license or approval.
12.5 Waiver or Delay. Any waiver of any kind or character by a Party of a
---------------
breach of this Agreement must be in writing, shall be effective only to the
extent set forth in such writing, and shall not operate or be construed as a
waiver of any subsequent breach of the other party. No failure of a Party to
insist upon strict compliance by the other with any obligation or provision
hereunder, and no custom or practice of the parties at variance with the terms
hereof, shall constitute a waiver of such Party's right to demand exact
compliance with the terms of this Agreement. Nor shall a Party's delay or
omission in exercising any right, power or remedy upon a breach or default by
the other Party impair any such right, power or remedy. The exercise of any
right or remedy provided by this Agreement shall be without prejudice to the
right to exercise any other right or remedy provided by law or equity.
12.6 Assignment.
----------
(a) TSI may not directly or indirectly assign or transfer this
Agreement or any of its rights, duties or obligations hereunder, except with the
express written consent of Reuters, which consent shall not unreasonably be
withheld. Reuters may, in its sole discretion, assign or transfer this
Agreement, assign its rights and benefits under this Agreement, or delegate its
duties hereunder to a Third-party, in whole or in part. Without limiting the
foregoing, the acquisition by, or the merger of TFT with, an Affiliate of
Reuters shall not in any way affect the rights or obligations of TFT hereunder
and such acquiring or surviving corporation shall succeed to all of TFT's rights
and be bound by the obligations under this Agreement.
(b) In the event of the sale of any Reuters Affiliate, or
substantially all of the assets of such Reuters Affiliate to a Third-party, all
of such Affiliate's rights hereunder shall be transferable to such Third-party
provided that such Third-party is bound by the provisions hereof and Reuters may
grant, or sublicense to such Third-party, a license to all TSI Intellectual
Property rights granted to Reuters hereunder as of the date of such acquisition,
and such grant shall not in any way affect or limit Reuters' rights to such
Intellectual Property Rights hereunder. In the event of any such transfer of a
Reuters Affiliate that is not a Reuters Party, such Third-party shall not be
entitled to any license to Enhancements created after the date of such transfer.
12.7 Sales Tax. The Parties shall reasonably cooperate with one another in
----------
order to minimize sales and use taxes applicable to each of them as a result of
the transactions contemplated hereby, provided that a Party shall not be
required to act in a manner that is disadvantageous to itself.
12.8 Force Majeure. If by reason of labor disputes, strikes, lockouts,
-------------
riots, war, inability to obtain labor or materials, earthquake, fire or other
action of the elements, accidents, governmental restrictions, appropriation or
other cause beyond the control of a Party hereto, either party is unable to
perform in whole or in part its obligations as set forth in this Agreement, then
such party shall be relieved of those obligations to the extent it is so unable
to perform and such inability to perform shall not make such Party liable to the
other Party. Neither Party shall
39
be liable for any loss, injury, delay or damages suffered or incurred by the
other Party due to the above causes.
12.9 Severability. The provisions of this Agreement are severable and if
------------
any one or more such provisions shall be determined to be invalid, illegal or
unenforceable, in whole or in part, the validity, legality and enforceability of
any of the remaining provisions or portions thereof shall not in any way be
affected or impaired thereby and shall nevertheless be binding between the
parties hereto. Notwithstanding the foregoing, if any Section or provision
respecting limitations on the scope of any license grants to TSI with respect to
any Reuters Intellectual Property Rights is declared void or unenforceable, then
the corresponding grant of such license or rights to TSI shall also be void.
12.10 Headings. The Section and article headings and captions of this
--------
Agreement are included merely for convenience of reference. They are not to be
considered part of, or to be used in interpreting, this Agreement and in no way
limit or affect any of the contents of this Agreement or its provisions.
12.11 Governing Law. This Agreement shall be constructed in accordance
-------------
with, and all disputes hereunder shall be governed by, the laws of the State of
New York (without regard to that State's principles of choice of laws). The
parties exclude in its entirety the application to this Agreement of the United
Nations Convention on Contracts for the International Sale of Goods. Any
dispute arising out of this Agreement shall be brought in, and the parties
consent to personal and exclusive jurisdiction of a venue in, the State and
federal courts within New York City, New York.
12.12 Relationship of the Parties. Nothing contained in this Agreement,
---------------------------
as such, shall be construed as creating any agency, partnership, or other form
of joint enterprise between the Reuters Parties and TSI. The relationship
between the Reuters Parties and TSI shall at all times be that of independent
contractors with respect to the matters contemplated by this Agreement. Neither
the Reuters Parties nor TSI shall have authority to contract for or bind the
other in any manner whatsoever. This Agreement confers no rights upon a Party
except those expressly granted herein.
12.13 Entire Agreement. This Agreement is the complete, entire, final
----------------
and exclusive statement of the terms and conditions of the agreement between the
parties. This Agreement supersedes, and the terms of this Agreement govern, any
prior agreements, term sheets or letters of intent between the parties with
respect to the subject matter hereof, including without limitation the Existing
License Agreement, which the Parties hereby agree to terminate effective on the
Effective Date. This Agreement may not be modified except in a writing executed
by duly authorized representatives of the Parties. In the event of any conflict
between any terms of this Agreement and the Agreement of Organization, the terms
of this Agreement shall control.
12.14 Counterparts. This Agreement may be executed in counterparts, each
------------
of which shall be deemed an original, but all of which together shall constitute
one and the same instruments.
40
12.15 Non-Solicitation. TSI and the Reuters Parties shall agree not to
----------------
solicit the employees of the other party or parties for the two-year period
commencing on the Effective Date.
12.16 Joint Marketing Activities. TSI and TFT may from time to time
--------------------------
agree on joint marketing activities. Neither party shall have any financial
obligation to the other in relation to marketing or advertising except as may be
agreed in writing in advance.
12.17 Publicity. The parties shall maintain the confidentiality of this
---------
Agreement and not disclose or discuss its contents or the matters contemplated
herein other than with affiliates and advisors that are subject to
confidentiality restrictions or duties without, in the case of the Reuters
Parties, the written consent of TSI and, in the case of TSI, the written consent
of Reuters, subject in either case to applicable law. No press release or
similar public communication regarding this Agreement or the matters
contemplated herein shall be made without the prior written consent of both
parties.
12.18 Cedel Contract. The assignment, effective January 1, 1998 of the
--------------
Software License and Development Agreement dated January 1, 1994, as amended
(the "Cedel Contract"), with Cedel Bank is hereby ratified by the Parties, and
TSI shall have the right in the future to continue such contractual relationship
with Cedel Bank, Cedel Global Services, or their Affiliates, or their successors
and assigns (the "Cedel Parties"), and to enter into amendments and additional
similar agreements with the Cedel Parties; provided, however, to the extent that
TSI is requested to provide products or services not related to Cedel's
"Strategic Businesses" (as defined in the agreement with Cedel Global Services
dated May 11, 1999) for Deutsche Borsa in connection with the merger of Cedel
and Deutsche Borsa, TSI shall, to the extent permitted by the terms of that
agreement, offer TFT the first right to provide such products or services.
12.19 Subcontractors. Any Party shall have the right to appoint and use
--------------
third party subcontractors with respect to performance of its obligations
hereunder, provided that such Party remains responsible for such subcontractors'
performance hereunder.
12.20 Authority. Notwithstanding that an obligation of TSI is expressly
---------
stated as being to either or both of Reuters of TFT, the satisfaction or
performance by TSI of any such obligation to either Reuters or TFT shall be
deemed to satisfy all such obligations of TSI to both Reuters and TFT and as
between Reuters and TFT, Reuters shall be deemed to have the authority to
provide all consents and approvals, and otherwise act on behalf of and bind, TFT
with respect to any issue or dispute arising out of or related to this Agreement
or the making or interpretation of this Agreement. In addition, Reuters and TFT
shall be jointly and severally liable to TSI for either of Reuters or TFT's
breach of any provision of this Agreement.
41
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
signed by their respective duly authorized officers or representatives as of the
date first above written.
REUTERS LIMITED TIBCO SOFTWARE, INC.
By:_____________________________ By:__________________________
Name:___________________________ Name:________________________
Title:__________________________ Title:_______________________
TIBCO FINANCE TECHNOLOGY, INC.
By:_____________________________
Name:___________________________
Title:__________________________
42
