SOFTWARE LICENSE AGREEMENT
THIS AGREEMENT is made as of the 8th day of May, 1998 by and between
SIBONEY LEARNING GROUP ("Siboney") with an address at 0000 Xxxxxxx, Xxxxx 000,
Xx. Xxxxx, Xxxxxxxx 00000, Xxxxxx Xxxxxx of America and NECTAR FOUNDATION
("NECTAR") with an address at 00 Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxx, Xxxxxx X0X
0X0.
WHEREAS, Siboney is in the business of creating, publishing and
marketing software for use on microcomputers; and
WHEREAS, the parties desire that Siboney modify and distribute in the
United States certain software originally developed by NECTAR.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties mutually agree as
follows:
1. License Grant. NECTAR hereby grants to Siboney an exclusive license
and right in the United States, its territories and possessions, to use, revise,
modify and create derivative works of the "MathTrek 1,2,3", "MathTrek 4,5,6" and
"Math Trek 7,8,9" software program series (the "Licensed Software") for use on
Macintosh and Windows operating systems, and to repackage, manufacture, market,
distribute, sell, lease, license and sub-license such revised and/or modified
Licensed Software. Such revisions, modifications and derivative works are
referred to herein as "Modified Software". The foregoing licenses to Siboney are
subject to NECTAR's right set forth in Section 2 hereof, and to any licenses
previously granted by NECTAR to end-users of the Licensed Software. Siboney
shall have no rights in the Licensed Software or Modified Software other than as
set forth in this Agreement. NECTAR shall, as reasonably requested by Siboney,
consult with Siboney concerning such revisions, modifications and the like, and
all revisions and the like will be subject to NECTAR's approval, which shall not
be unreasonably withheld. NECTAR shall receive one (1) copy of every commercial
product created pursuant to this license.
2. Marketing. Siboney shall diligently develop, market and promote the
Modified Software. Decisions regarding the packaging, pricing and trademarks for
the Modified Software shall be made solely by Siboney. NECTAR shall be notified
of the initial pricing structure and any subsequent changes in pricing.
Notwithstanding anything to the contrary in Section 1, NECTAR shall have the
exclusive right to license, market and distribute the Licensed Software to its
existing distributors identified on Exhibit A hereto.
3. Duties Upon Execution. Upon execution of this Agreement, NECTAR will
provide Siboney with all source code, technical information and content
documentation regarding the Licensed Software which NECTAR has in its possession
or under its control. NECTAR represents that copyright to the external functions
PostGrid and PostGraph in the source code is owned by Brain Waves Software, Inc.
NECTAR cannot provide this code or information about how to use the external
functions using such Brain Waves source code, and Siboney shall not use such
code.
4. Earned Royalties. Siboney will pay to NECTAR earned royalties
("Earned Royalties") based on sales of the Modified Software, in an amount equal
to twenty-two and one-half percent (22.5%) of Siboney's Net Receipts for
Modified Software. Earned Royalties will accrue upon Siboney's issuance of an
invoice for a Modified Software product.
5. Royalty Computation. "Net Receipts" are defined for purposes of this
Agreement as all consideration received by Siboney or its affiliates, directly
or indirectly, from the distribution, publication, lease, sale or other
commercialization of the Modified Software, as applicable, less any discounts,
returns, sales or use taxes, refunds, freight, shipping and handling charges. If
Siboney intends to license any Modified Software covered by this Agreement as
part of a package with other similar software, it shall first notify NECTAR. Net
Receipts for Modified Software licensed in such packages shall be apportioned
based on the relative retail or suggested retail prices reasonably established
by Siboney for the various programs comprising the package.
6. Method of Payment; Audit. Siboney shall pay NECTAR applicable Earned
Royalties for each calendar quarter hereafter, beginning December 31, 1998,
within 30 days following the end of each quarter in which Earned Royalties have
accrued, accompanied by a statement showing Net Receipts. NECTAR shall have the
right, not more than once each calendar year, upon reasonable notice to Siboney
and during Siboney's regular business hours, to have such calculations and the
records on which they are based reviewed by an accountant of its choosing.
NECTAR's expenses in conjunction with any audit shall be reimbursable by Siboney
within 30 days of presentation of a written statement of expenses if it is
determined that there is more than a ten percent (10%) error in Siboney's
statement and/or payment to NECTAR. If such review shows an overpayment by
Siboney, then the amount of such overpayment shall be promptly refunded by
NECTAR to Siboney.
7. Guaranteed Minimum Royalties. Siboney will pay NECTAR a guaranteed
minimum royalty payment totaling $180,000 (in U.S. Dollars). This guaranteed
royalty will accrue in specified amounts (each, a "Guaranteed Amount") for
certain periods (each, a "Guarantee Period) and be payable as follows: $30,000
will accrue on December 31, 1999 and be payable January 31, 2000; $60,000 will
accrue on December 31, 2000 and be payable January 31, 2001 and $90,000 will
accrue on December 31, 2001 and be payable January 31, 2002. Earned Royalties
will be credited against the applicable Guaranteed Amount, if any. Earned
Royalties for any Guarantee Period in excess of the Guaranteed Amount for that
period shall be credited dollar for dollar to reduce the Guaranteed Amount for
the following guarantee period. For example, if Earned Royalties accrued as of
December 31, 1999 total $40,000, then the Guaranteed Amount payable January 31,
2001 shall be reduced to $50,000. The guaranteed minimum royalty payment does
not affect Siboney's obligation to pay all Earned Royalties accrued during a
particular period.
8. Ownership. The Modified Software shall be the property of NECTAR,
subject to Siboney's exclusive license as defined herein, and Siboney agrees to
xxxx a copyright notice on each copy of Modified Software in the following form:
"? NECTAR Foundation."
9. Warranty of Authority. Except as set forth in Section 3, NECTAR
warrants and represents that it has full power and authority to grant the rights
granted in this Agreement without the consent of any other party.
10. Warranty of Noninfringement. NECTAR warrants that the Licensed
Software does not infringe the copyright, trademark, trade secret or any other
proprietary right, or the right to privacy, of any third party, and further
warrants that the Licensed Software does not contain any defamatory, libelous or
unlawful material. NECTAR agrees to defend, indemnify and hold harmless Siboney
from and against any third-party claims, demands, liabilities, suits,
proceedings and costs, including attorneys fees, incurred by Siboney arising
from any alleged breach of the warranty of NECTAR under this section.
11. Claims of Infringement. Siboney and NECTAR will give each other
prompt and complete written notice whenever either becomes aware of any actual
or impending unauthorized use of the Licensed Software or Modified Software.
Siboney shall have complete discretion to act or forebear acting in regard to
such actual or impending unauthorized use. NECTAR, however, shall cooperate at
Siboney's sole expense with Siboney and follow Siboney's directions if Siboney
elects to act in regard to such actual or impending unauthorized use, and any
recovery awarded to or paid as a result of any action undertaken by Siboney
shall belong solely to Siboney. If Siboney, however, shall elect not to act,
NECTAR shall be deemed authorized to act at its own expense on its own behalf
and any recovery shall belong solely to NECTAR.
12. Term and Termination. This Agreement shall be effective upon
execution and shall remain in effect until terminated by either party. NECTAR
may terminate this Agreement after December 31, 2001, on 6 months notice to
Siboney, in the event Earned Royalties for a calendar year do not meet or exceed
$30,000 (in U.S. Dollars). Siboney may terminate this Agreement on 6 months
notice any time after December 31, 2001. Upon termination pursuant to this
Section, (a) the licenses granted herein shall terminate except as to those
Modified Software products already distributed or sublicensed by Siboney, (b)
Siboney shall have no rights to license or distribute any Modified Software not
invoiced as of the end of the 6-month period and (c) Siboney remains obligated
for Earned Royalties due on Modified Software invoiced prior to the end of such
6-month period. This Agreement will be terminated automatically upon the filing
of a petition in bankruptcy by or against Siboney.
13. Breach. In the event of a breach of any material term of this
Agreement, the non-breaching party shall provide a notice of breach to the other
party, which notice shall specify the nature of the breach. If the defaulting
party fails to cure the breach within the thirty-day period following its
receipt of such notice, then, at its option, the non-breaching party may
terminate this Agreement upon notice to the other party and: (a) the licenses
granted herein shall terminate except as to those Modified Software products
already distributed or sublicensed by Siboney, (b) Siboney shall have no rights
to license or distribute any Modified Software not invoiced as of the end of the
30-day period and (c) Siboney remains obligated for Earned Royalties due on
Modified Software invoiced prior to the end of such 30-day period.
14. No Joint Venture. Nothing in this Agreement shall be construed as
creating a joint venture or any other type of partnership relationship between
the parties. Each party shall be considered an independent contractor.
15. Non-Waiver. Any party's waiver of or failure to enforce any of its
rights under this Agreement shall not act as a waiver of forfeiture of any other
right or of the same right in any other instance.
16. Notice. Any notice, request, approval, consent and payment required
under this Agreement (collectively, "Notice") shall be in writing and sent to
the other party by (a) certified mail, return receipt requested, (b) a
nationally recognized overnight courier at the address set forth herein; or (c)
transmitted by telecopy with confirmation of receipt, all at the addresses set
forth below:
With respect to Siboney: Xxxxx Xxxx
Siboney Learning Group
0000 Xxxxxxx, Xxxxx 000
Xxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
With respect to NECTAR: Xxxxxx X'Xxxxx
NECTAR Foundation
00 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxx
Xxxxxx X0X 0X0
Fax: (000) 000-0000
Notice will be deemed to have been given on the first date of actual receipt of
either form of notice.
17. Assignments. This Agreement may not be assigned by either party
without the written approval of the other party, which shall not be unreasonably
withheld.
18. Choice of Law and Forum; Consent to Jurisdiction. NECTAR
acknowledges that in entering into this Agreement, it is purposefully availing
itself of the benefits of doing business in the United States. NECTAR
irrevocably consents to the exclusive jurisdiction of the United States District
Court for the Eastern District of Missouri and the St. Louis County Circuit
Court with regard to any controversy related to or arising out of this
Agreement, and waives any objection to jurisdiction or venue of such courts. Any
requirements under the Hague Convention or any other international treaty,
convention or compact notwithstanding, NECTAR agrees that service of process by
any of the methods for notice set forth in Section 12 of this Agreement shall be
deemed appropriate service. NECTAR irrevocably consents that any judgements
obtained against it arising out of or relating to this Agreement may be enforced
in any jurisdiction in which NECTAR has assets.
19. Entire Agreement. This Agreement constitutes the entire agreement
and understanding among the parties concerning the subject matter hereof and
supersedes all prior agreements and understandings, whether written or oral. No
modification of claimed waiver of any of the provisions hereof shall be valid
unless in writing and signed by the party against whom such modifications or
waiver is sought to be enforced.
20. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed to be an original, and all of which
together shall constitute one and the same Agreement. This Agreement may be
executed and delivered by electronic facsimile transmission with the same force
and effect as if it were executed and delivered by the parties simultaneously in
the presence of one another.
SIBONEY CORPORATION NECTAR FOUNDATION
By: /s/ Xxxxxx X. Xxxx By: /s/ X. X. X'Xxxxx
----------------------------------- -----------------------------------
Printed Name: Xxxxxx X. Xxxx Printed Name: X. X. X'Xxxxx
------------------------ -------------------------
Title: President,
Siboney Learning Group Title: /s/ Executive Director
------------------------------- -------------------------------
AMENDMENT TO SOFTWARE LICENSE AGREEMENT
THIS AMENDMENT TO SOFTWARE LICENSE AGREEMENT ("Amendment") is made as
of the 8th day of September, 1999 by and between SIBONEY LEARNING GROUP
("Siboney") with an address at 0000 Xxxxxxx, Xxxxx 000, Xx. Xxxxx, Xxxxxxxx
00000, Xxxxxx Xxxxxx of America and NECTAR FOUNDATION ("NECTAR") with an address
at 00 Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxx, Xxxxxx X0X 0X0.
RECITALS
A. Siboney and NECTAR entered into a software license agreement made as
of the 8th day of May, 1998 (the "License Agreement").
B. The parties to the License Agreement desire to amend the License
Agreement with respect to the matters referred to herein.
NOW, THEREFORE, in consideration of the premises and of the agreements
and provisions set forth herein, and subject to the conditions contained herein,
it is mutually agreed as follows:
1. Definitions. Unless otherwise defined herein, all capitalized terms
used herein shall have the same meaning assigned to them in the License
Agreement.
2. License Grant. Paragraph 1 of the License Agreement is hereby
amended by adding the following after the second sentence of the paragraph:
"The definition of Licensed Software shall include, in addition to the
program series specifically identified in the first sentence of this
paragraph, the "ScienceTrek 4-6" program series, and such other
software programs as the parties agree to in writing."
3. Earned Royalties. Paragraph 4 of the License Agreement is deleted in
its entirety and replaced with the following:
"4.1 Siboney will pay to NECTAR earned royalties ("Earned Royalties")
based on sales of the Modified Software for any MathTrek software
program ("Modified MathTrek Software"), as follows: Effective for
Earned Royalties accrued prior to July 1, 1999, Siboney will pay NECTAR
Earned Royalties based upon sales of the Modified MathTrek Software in
an amount equal to twenty-two and one-half percent (22.5%) of Siboney's
Net Receipts for such Modified MathTrek Software. Effective for Earned
Royalties accrued on or after July 1, 1999, Siboney will pay NECTAR
Earned Royalties based upon sales of the Modified MathTrek Software in
an amount equal to twenty percent (20%) of Siboney's Net Receipts for
the first $350,000 of cumulative Earned Royalties for such Modified
MathTrek software. After cumulative Earned Royalties for Modified
MathTrek Software reach $350,000, the royalty will be reduced to an
amount equal to fifteen percent (15%) of Siboney's Net Receipts on all
future sales of Modified MathTrek Software.
4.2 For any Licensed Software program or Modified Software program
other than MathTrek software programs (each, an "Additional Software
Program"), Siboney will pay to NECTAR Earned Royalties based on sales
of such Additional Software Program in an amount equal to twenty
percent (20%) of Siboney's Net Receipts for such Additional Software
Program, provided that after cumulative Earned Royalties for such
Additional Software Program reach $250,000, the royalty for that
program will be reduced to an amount equal to fifteen percent (15%) of
Siboney's Net Receipts on all future sale of such Additional Software
Program."
4. Guaranteed Minimum Royalties. Paragraph 7 of the License Agreement
is deleted in its entirety and replaced with the following:
"Siboney will pay NECTAR a guaranteed minimum royalty payment totaling
$350,000 (in U.S. Dollars). This guaranteed royalty will accrue in
specified amounts (each, a "Guaranteed Amount") for certain periods
(each, a "Guarantee Period) and be payable as follows: $100,000 will
accrue on December 31, 1999 and be payable January 31, 2000; $125,000
will accrue on December 31, 2000 and be payable January 31, 2001 and
$125,000 will accrue on December 31, 2001 and be payable January 31,
2002. Earned Royalties will be credited against the applicable
Guaranteed Amount, if any. Earned Royalties for any Guarantee Period in
excess of the Guaranteed Amount for that period shall be credited
dollar for dollar to reduce the Guaranteed Amount for the following
guarantee period. For example, if Earned Royalties accrued as of
December 31, 1999 total $120,000, then the Guaranteed Amount payable
January 31, 2001 shall be reduced to $105,000. The guaranteed minimum
royalty payment does not affect Siboney's obligation to pay all Earned
Royalties accrued during a particular period."
5. Term and Termination. Section 12 of the License Agreement is amended
by deleting "$30,000" in the second sentence and replacing it with "$60,000."
6. Full Force and Effect; Entire Agreement. Except to the extent
expressly provided in this Amendment, the terms and conditions of the License
Agreement shall remain in full force and effect and shall be binding on the
parties thereto. The License Agreement, as amended hereby, constitutes the
entire agreement among the parties hereto and no representations, inducements,
promises or other agreements, which are otherwise not embodied herein or therein
shall be of any force and effect.
7. Counterparts. This Amendment may be executed simultaneously in one
or more counterparts, each of which shall be deemed an original, but all of
which taken together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be
executed as of the date first set forth above.
SIBONEY LEARNING GROUP
By: /s/ Xxxxxx X. Xxxx
------------------------------------
Title: President
---------------------------------
NECTAR FOUNDATION
By: /s/ X. X. X'Xxxxx
------------------------------------
Title: Executive Director
--------------------------------
