Exhibit 10.19
SOFTWARE TRANSFER AGREEMENT
This Software Transfer Agreement (this "Agreement"), is entered into as of
April 25, 1997 (the "Effective Date"), by and between HighwayMaster Corporation
("HighwayMaster"), a Delaware corporation, and Burlington Motor Carriers, Inc.
("Burlington"), a Delaware corporation.
WHEREAS, Burlington owns the entire right, title, and interest in and to
computer software and related materials for which it desires to transfer to
HighwayMaster; and
WHEREAS, HighwayMaster desires to receive all right, title, and interest in
and to the computer software and related materials from Burlington;
NOW THEREFORE, in consideration of the mutual promises contained herein, as
well as the execution of the Information Management Services Agreement between
HighwayMaster and Burlington, effective ______, 1997 and each of the Exhibits
thereto ("Data Processing Agreement") it is hereby agreed as follows:
1. DEFINITIONS
1.1 "PROGRAM" shall mean the software customer refers to internally as the
Spirit software, including any and all versions of source code, object code, job
control language, or other listings that relate or refer to the operations and
accounting software, training simulator, and related code used to operate the
data center of Burlington, other than software properly licensed by Burlington
from third parties.
1.2 "RELATED DELIVERABLES" shall mean technical specifications, functional
specifications, programming manuals, operations manuals, and the like that
relate to the design, function, or operation of the Program.
2. DELIVERY: PAYMENT
2.1 SPECIFICATIONS. Burlington shall prepare and deliver to HighwayMaster
the Program and Related Deliverables.
2.2 COPIES. Burlington shall not retain any versions or copies of the
Program and Related Deliverables, other than those versions and copies that
HighwayMaster agrees in writing that Burlington can retain to perform its duties
and obligations under this Agreement and the Information Management Services
Agreement.
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2.3 PAYMENT. CONFIDENTIAL TREATMENT REQUESTED
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO RULE 24B-2 UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS
AMENDED.
3. RIGHTS CONVEYED
3.1 GENERAL ASSIGNMENT. Burlington assigns to HighwayMaster and
HighwayMaster accepts from Burlington all right, title, and interest in and to
the Program and Related Deliverables.
3.2 COPYRIGHT. The rights conveyed under Section 3.1 shall include but
not be limited to an irrevocable grant of the sole and exclusive rights to the
Program and Related Deliverables with the rights to use, modify, market, and
license the Program and Related Deliverables throughout the world, including all
copyrights in the Program and Related Deliverables and in all derivative works,
together with all exclusive rights granted to an author under the copyright laws
of the United States, foreign countries, and international copyright conventions
and the right to grant these rights or any part of them to third parties.
3.3 OTHER INTELLECTUAL PROPERTY. The rights conveyed under this Section
3.1 shall include but not be limited to all right, title, and interest in and to
any inventions, discoveries, ideas, trade secrets, trade names, or other
intellectual property embodied in the Program and Related Deliverables.
3.4 NO RIGHTS TO "SPIRIT" TRADEMARK. The trademark "Spirit" will remain
the sole and exclusive property of Burlington. HighwayMaster will not utilize
the trademark "Spirit" in marketing the Spirit Software to third parties, and
will, prior to providing trademarked material to third parties, replace the
"Spirit" name or logo on the software with a trade xxxx to be determined by and
owned by HM.
4. WARRANTY
4.1 OWNERSHIP. Burlington represents and warrants to HighwayMaster that
Burlington has the power and authority to enter into this Agreement as the sole
and exclusive owner of all rights conveyed in SECTION 3, except for material in
the public domain.
4.2 AUTHORSHIP. Burlington represents and warrants to HighwayMaster that
the Program and Related Deliverables are original except for material in the
public domain and such excerpts from other works as may be included with the
written permission of the copyright owners; and that Burlington retains the
entire right, title, and interest in and to the Program and Related Deliverables
as either: (i) the author of the Program and Related Deliverables produced as a
work
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made for hire; or (ii) the assignee from the true and original authors of
the Program and Related Deliverables.
4.3 INFRINGEMENT. Burlington represents and warrants to HighwayMaster
that the Program and Related Deliverables do not contain any libelous material
or injurious instructions; that the Program and Related Deliverables do not
infringe any patent, trade name, trademark, trade secret, or copyright; and that
the Program and Related Deliverables do not invade or violate any right of
privacy, personal or proprietary right, or other common law or statutory right.
4.4 DISCLAIMER. BURLINGTON SPECIFICALLY DISCLAIMS ANY IMPLIED WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5. INDEMNITY
5.1 INDEMNITY. Burlington agrees to indemnify and hold harmless
HighwayMaster, or its assigns, harmless from any and all losses, damages,
liabilities, costs, charges, and expenses, including reasonable attorneys' fees,
arising out of any breach of any of the representations and warranties contained
in Section 4. This shall include any and all expense whatsoever, as reasonably
incurred (including the fees and expenses of counsel chosen by HighwayMaster) in
investigating, preparing or defending against any litigation, threatened
litigation, mediation or arbitration with any third party arising out of
Burlington's breach (or Burlington's alleged breach as claimed by such third
party) of any of the representations and warranties contained in Section 4.
6. INTELLECTUAL PROPERTY
6.1 OWNERSHIP. The Program and Related Deliverables constitute valuable
and confidential trade secrets of HighwayMaster which hereafter are proprietary
to HighwayMaster, and all right, title, and interest thereto belongs to
HighwayMaster as of the Effective Date. All applicable copyrights, trade
secrets, patent and other intellectual and proprietary rights in the Program and
Related Deliverables are hereafter the sole and exclusive property of
HighwayMaster. It is expressly understood that no title to or ownership of the
Program and Related Deliverables, or any part thereof, remains with Burlington.
7. COUNTERPARTS
7.1 COUNTERPARTS. This Agreement may be executed in several counterparts,
each of which shall be deemed to be an original, but all of which shall
constitute one and the same instrument.
8. GOVERNING LAW
8.1 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of Texas.
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9. JURISDICTION
9.1 JURISDICTION. The parties hereto consent to the exclusive jurisdiction
of the federal district court residing in Dallas, Texas (or if no federal
jurisdiction exists, to the state district court in Dallas, Texas) for all
litigation which may be brought with respect to or arising out of the terms of
and the transactions and relationships contemplated by this Agreement.
10. FURTHER ASSURANCES
10.1 FURTHER ASSURANCES. Subsequent to the Effective Date, the parties
shall execute and deliver such additional documents and certificates as may be
necessary to give effect to this Agreement. Burlington specifically agrees to
use its best efforst to cause execution by itself or its employees, ex-
employees, contractors, or others of any and all documents to acquire, procure,
or perfect the rights conveyed in Section 3 for the benefit of HighwayMaster,
but in no event shall Customer be released or excused from its warranties set
forth in Sections 4.1, 4.2 and 4.3 above. This Agreement shall survive the
termination of the Information Management Services Agreement betweent the
parties.
11. LIMITATION OF LIABLITY
11.1 LIMITATION OF LIABILITY. If either party shall breach any covenant,
agreement or undertaking required of it by this Agreement, the liability of such
party shall be limited to direct damages, actually incurred. Neither party
shall be liable to the other for any special or consequential damages or for any
claim or demand made by any third party. Provided, that this section 13.1 shall
not limit the duty of Burlington to provide defense costs, license fees and
other costs directly incurred as a result of claims by any third party arising
from Burlington's alleged breach of ownership, authorship, or infringement
warranties set forth in Sections 4.1, 4.2 and 4.3 above, and as set forth more
completely in the indemnity provided in Section 5.1 above.
IN WITNESS WHEREOF, this Agreement has been executed by the undersigned
duly authorized officers of the parties:
HIGHWAYMASTER CORPORATION BURLINGTON MOTOR CARRIERS, INC.
By: /s/ XXXXXX QUICK By: /s/ XXXXXX X. XXXXXXX
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Name: Xxxxxx Quick Name: Xxxxxx X. Xxxxxxx
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Title: EVP - COO Title: Chairman - CEO
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Date: 4/25/97 Date: 4/25/97
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