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Exhibit 10.1
CONFIDENTIAL TREATMENT REQUESTED - REDACTED
TECHNOLOGY LICENSING AND MARKETING AGREEMENT
This Technology Licensing and Marketing Agreement (hereinafter called
Agreement) is entered into as of the first day of May 1997, by and between
ICARUS Corporation, a Maryland corporation with offices at Xxx Xxxxxxx Xxxxx,
00000 Xxxxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxx 00000, hereinafter called ICARUS, and
Xxxxxxxxxx Engineering Services Inc., an Arizona corporation having an office at
0000 Xxxxx Xxxxxx Xxxxx, Xxxx, XX 00000-0000 hereinafter called XXXXXXXXXX.
WHEREAS ICARUS has developed computer software, database products,
publications, technology, and know-how related to the design and project and
process evaluation of projects in the chemical processing and related
industries; and
WHEREAS ICARUS has developed a direct sales and marketing force,
affiliates, and a worldwide network of dealers, distributors, sales agents, and
business partners; and
WHEREAS ICARUS desires to develop computer software, technology, and
know-how which incorporate XXXXXXXXXX computer software, database products,
technology, and know-how and market such software, technology, and know-how
worldwide to its customers via ICARUS' direct sales and marketing force,
affiliates, and worldwide network of dealers, distributors, sales agents, and
business partners; and
WHEREAS XXXXXXXXXX has developed computer software, database products,
publications, technology, and know-how related to the estimating of projects in
the chemical processing and related industries; and
WHEREAS XXXXXXXXXX desires to utilize ICARUS' direct sales and
marketing force, affiliates, and worldwide network of dealers, distributors,
sales agents, and business partners for the purpose of increasing XXXXXXXXXX'X
sales of its software, database products, training, publications, and other
products; and
WHEREAS XXXXXXXXXX has compiled, created and published general
construction estimating information in textual form contained in three volumes
entitled "Xxxxxxxxxx General Construction Standards" and has compiled, created
and published process plant construction estimating information in textual form
contained in four volumes entitled "Xxxxxxxxxx Process Plant Estimating
Standards" (hereinafter collectively referred to as the "Standards");
WHEREAS XXXXXXXXXX has compiled, created and published the Standards in
machine readable format, entitled "Combined General Construction, Process Piping
and Equipment," ("Combined") which has also been published in two parts entitled
"General Construction" ("General") and "Process Piping and Equipment"
("Piping"), hereinafter collectively referred to as the "Data Bases" and
individually referred to as the "Individual Data Bases"; and
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WHEREAS XXXXXXXXXX and ICARUS desire to enter into a beneficial
relationship for the purpose of expanding their markets; and
WHEREAS it is the intent of XXXXXXXXXX and ICARUS that integration of
their respective technologies will permit ICARUS to develop software that
encompasses conceptual estimating through detailed estimating.
NOW, THEREFORE, in consideration of the mutual promises and
undertakings set forth in this Agreement, ICARUS and XXXXXXXXXX hereby agree as
follows:
1. Definitions
A. "ICARUS MARKETING CHANNELS" means the ICARUS direct sales and
marketing force, ICARUS affiliates, and ICARUS' worldwide
network of dealers, distributors, sales agents, and business
partners, as the same may be determined or altered by ICARUS
from time to time.
B. "CPI" means the Chemical Processing Industries including but
not limited to the chemical, specialty chemical, oil,
petrochemical, pharmaceutical, ore beneficiation, food,
electrical power generation, pulp and paper, and related
industries.
C. "RACE" means the Unit Cost Estimating Software (as hereinafter
defined) developed by and/or owned by XXXXXXXXXX which is
designed to produce cost estimates and related data and
information for processing facilities in the CPI during the
term of this Agreement.
D. "XXXXXXXXXX Software" means RACE and any other computer
software programs developed by and/or owned by XXXXXXXXXX
during the term of this Agreement which are Unit Cost
Estimating Software (as hereinafter defined).
E. "XXXXXXXXXX Database Products" means the Data Bases and
Individual Data Bases which are marketed and distributed by
XXXXXXXXXX to its customers on media such as but not limited
to CD ROM, Floppy Diskettes, Computer Tape, and/or Computer
Files which can be accessed by computer software.
F. "ICARUS Software and Services" means
(i) any system of computer programs, associated
documentation, technology, and know-how owned and/or
marketed by ICARUS MARKETING CHANNELS including but
not limited to the ICARUS 2000, ICARUS Process
Evaluator (IPE), ICARUS Project Manager (IPM),
Questimate, ICARUS Mentor, ARCHES(R), ICUE, ICUE
Reporter, ICARUS Manpower Productivity Expert (MPE),
COST(R)
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System, and the firmware known as the ICARUS System
Device (as hereinafter defined), and
(ii) any other or future system of computer programs,
and/or any combination of these systems and/or any
modifications made to such systems or combinations
thereof which may become part of this Agreement (as
determined by ICARUS) along with their associated
documentation, technology, and know-how, and
(iii) any services owned and/or marketed by ICARUS
MARKETING CHANNELS relating to ICARUS' computer
programs and/or products and services marketed by
ICARUS MARKETING CHANNELS including all associated
documentation, technology, know-how, and any
estimates prepared by ICARUS using ICARUS 2000,
ICARUS Process Evaluator (IPE), ICARUS Project
Manager (IPM), Questimate, ICARUS Mentor, ARCHES(R),
ICUE, ICUE Reporter, ICARUS Manpower Productivity
Expert (MPE), COST(R) or any other ICARUS systems and
programs.
G. "Unit Cost Estimating Software" means a computer program
which uses quantities of Project Components (as hereinafter
defined) [*] by users which are then multiplied by unit costs
for such Project Components accessed from XXXXXXXXXX Database
Products and/or other cost databases in order to produce cost
estimates [*].
H. "Project Component" means a particular type of process
equipment, materials handling equipment, or the material and
associated labor required to install the equipment in a
processing facility in the CPI.
I. "Design and Cost Model" means a mathematical representation of
a Project Component which is part of a computer program which
simulates the mechanical design, and/or cost of a process
facility design under a specified set of conditions and which
may use expert systems technology to represent and/or develop
certain data relating to and/or incorporating process design,
process simulation, unit operation(s) design, unit processes
design, mechanical design, process selection and/or sizing,
and/or user expertise and which can use an object oriented
project knowledge base.
J. "ICARUS System Device" or "ISD" means the firmware and
associated computer programs, technology, and know-how
developed and/or owned by ICARUS that when attached to a
serial port of a computer controls the calendar time
(duration) and number of users that can access a particular
computer program.
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[*] This information has been omitted pursuant to a request for
confidential treatment.
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K. "End-User Customer" means an organization that purchases
and/or licenses XXXXXXXXXX Software and/or XXXXXXXXXX Database
Products for its own use and not for sale and/or licenses
and/or sublicense to others.
2. Licensed Rights
A. Nothing in this Agreement shall be construed to transfer title
to XXXXXXXXXX Software, XXXXXXXXXX Database Products and/or
any other service or any publication owned by XXXXXXXXXX, to
ICARUS.
B. Nothing in this Agreement shall be construed to transfer title
to ICARUS Software and Services to XXXXXXXXXX.
C. Nothing in this Agreement shall be construed to restrict
XXXXXXXXXX from marketing XXXXXXXXXX Software, XXXXXXXXXX
Database Products, or any XXXXXXXXXX publication or service
directly to XXXXXXXXXX customers.
D. Nothing in this Agreement shall be construed to restrict
ICARUS from marketing ICARUS Software and Services to ICARUS
MARKETING CHANNELS and/or ICARUS customers, nor restrict
ICARUS from developing or attempting to develop or license
from others, other software technology and know how, whether
similar or dissimilar to the XXXXXXXXXX Software and/or
Integrated Software (as hereinafter defined). ICARUS agrees
not to develop and/or market, apart from the Integrated
Software, Unit Cost Estimating Software during the term of
this Agreement. Nothing contained in this Agreement, however
shall be construed to obligate ICARUS to develop or devote any
particular amount of financial or other resources to the
development of, marketing of, or sale or licensing of the
Integrated Software. However ICARUS shall have the right to
develop software ("Customer Software") that contains Unit Cost
Estimating Software for a customer of ICARUS provided that
such Customer Software is not otherwise directly or indirectly
marketed by ICARUS or such customer as a commercially
available product.
E. ICARUS hereby grants XXXXXXXXXX the right to become an ICARUS
Sales Agent, with the non-exclusive right to market ICARUS
software directly to XXXXXXXXXX'X customers. ICARUS agrees to
pay XXXXXXXXXX the fee as specified in the ICARUS Sales
Agent's Agreement.
X. XXXXXXXXXX shall provide to ICARUS, and hereby grants to
ICARUS, the right to use the original source code of the
XXXXXXXXXX Software ("Original XXXXXXXXXX Source Code")
subject to the following:
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(i) If ICARUS requests that an addition, deletion and/or
other change be made to the Original XXXXXXXXXX
Source Code (hereafter "Modified XXXXXXXXXX Source
Code"), that relates solely to the functional
operation of XXXXXXXXXX'X Software then ICARUS shall
describe such change to XXXXXXXXXX, whereupon
XXXXXXXXXX shall have the option to either create the
Modified XXXXXXXXXX Source Code or elect to have
ICARUS do so. If XXXXXXXXXX elects to create the
Modified XXXXXXXXXX Source Code itself but either
does not or cannot make the requested change within
the time frame requested by ICARUS, then ICARUS shall
have the right to create the Modified XXXXXXXXXX
Source Code. The party creating the Modified
XXXXXXXXXX Source Code shall, upon completion and
testing, give a copy to the other party.
(ii) ICARUS is hereby permitted to integrate and/or
interface the Original XXXXXXXXXX Source Code and/or
Modified XXXXXXXXXX Source Code and/or XXXXXXXXXX
Software, with ICARUS Software and Services; the
resulting integrated software hereby being deemed the
"Integrated Software", and any modifications to the
Original XXXXXXXXXX Source Code or Modified
XXXXXXXXXX Source Code made by ICARUS in conjunction
therewith being hereby deemed the "Integration Source
Code." XXXXXXXXXX agrees at all times to cooperate
with ICARUS and/or assist ICARUS in performing the
interface and/or integration of XXXXXXXXXX Software
and ICARUS Software and Services. Thereafter, ICARUS
shall be responsible for making and tracking such
additional changes as may be necessary in all future
versions thereof.
(iii) XXXXXXXXXX shall have the right to elect not to
incorporate the Modified XXXXXXXXXX Source Code into
the XXXXXXXXXX Software as marketed by XXXXXXXXXX;
however, ICARUS shall nevertheless be permitted to
incorporate the Modified XXXXXXXXXX Source Code into
the Integrated Software.
(iv) Notwithstanding the foregoing, ICARUS shall also
retain the right to make changes to the Original
XXXXXXXXXX Source Code or Modified XXXXXXXXXX Source
Code that relates solely to copy and/or license
management using the ICARUS System Device (or any
substitute device utilized by ICARUS), and such
changes as may be required in order to integrate
XXXXXXXXXX Software into ICARUS Software and Systems,
and which shall be deemed part of the Integration
Source Code.
(v) XXXXXXXXXX shall at all times retain sole ownership
and title to the Original XXXXXXXXXX Source Code and
the Modified XXXXXXXXXX Source Code, if created by
XXXXXXXXXX.
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ICARUS shall at all times retain sole ownership and
title to the source code of all ICARUS Software
Original and to those portions of the Modified
XXXXXXXXXX Source Code created by ICARUS in
accordance with the terms of this Agreement. Subject
to the terms of this Agreement, XXXXXXXXXX and ICARUS
hereby grant exclusive, fully paid-up cross-licenses
to one another to make, use, sell, copy, publish, or
otherwise reproduce and utilize those portions of the
Modified XXXXXXXXXX Source Code authored or created
by XXXXXXXXXX or ICARUS.
G. Except to the extent such rights have already been granted for
those existing XXXXXXXXXX dealers identified in paragraph 3
below, XXXXXXXXXX hereby grants ICARUS the exclusive right to
market, sell, license and sublicense XXXXXXXXXX Software and
XXXXXXXXXX Database Products via ICARUS MARKETING CHANNELS.
XXXXXXXXXX hereby grants ICARUS the right to purchase such
XXXXXXXXXX Database Products, at a discount of forty percent
(40%) or the highest discount offered to any XXXXXXXXXX
reseller, whichever discount is greater, off the list price of
XXXXXXXXXX Database Products.
X. XXXXXXXXXX and ICARUS agree to cooperate to reconcile their
respective two cost bases for their cost estimating and
pricing methodologies so that ICARUS Software and Services,
ICARUS' data and XXXXXXXXXX data are consistent. XXXXXXXXXX
agrees to provide ICARUS, upon request, a technical review
before each release of XXXXXXXXXX Software and XXXXXXXXXX
Database Products, to ensure consistency with ICARUS Software
and Services.
I. License of XXXXXXXXXX Marks
(i) XXXXXXXXXX hereby grants to ICARUS for the term of
this Agreement a worldwide non-exclusive right and
license, but not the obligation, to use and
sublicense to ICARUS and ICARUS Marketing Channels
the XXXXXXXXXX trademarks, service marks, brand
names, logos, and other proprietary rights used by
XXXXXXXXXX for the XXXXXXXXXX Software and XXXXXXXXXX
Database Products (the "XXXXXXXXXX Marks") in
connection with the distribution, advertising and
promotion of the XXXXXXXXXX Database Products,
XXXXXXXXXX Software, and Integrated Software, subject
to the provisions of this Section 2 Paragraph I.
(ii) ICARUS acknowledges and agrees that except for the
limited right to use the XXXXXXXXXX Marks to the
extent herein setforth, ICARUS has no rights in the
XXXXXXXXXX Marks. ICARUS acknowledges that XXXXXXXXXX
owns and retains all proprietary rights in and to all
XXXXXXXXXX Marks, and that ICARUS shall take no
action or
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make any registration that would otherwise convey or
grant an interest in said XXXXXXXXXX Marks. ICARUS
agrees not to contest or take any action to contest
XXXXXXXXXX'x ownership of the XXXXXXXXXX Marks, or to
use, employ or attempt to register any trademark,
service xxxx, or tradename in any country in the
world that is confusingly similar to the XXXXXXXXXX
Marks.
(iii) ICARUS agrees that XXXXXXXXXX shall be the sole owner
of any and all goodwill in the RICHARDSON Marks built
up in the United States and in any country in which
the XXXXXXXXXX Database Products, XXXXXXXXXX
Software, and Integrated Software are distributed by
ICARUS.
(iv) ICARUS shall take no action that impairs or otherwise
tarnishes the XXXXXXXXXX Marks.
(v) ICARUS shall require its Affiliates and Dealers to
adhere to the terms of this provision, and shall take
steps generally consistent with the monitoring of
ICARUS' own marks to ensure that its Affiliates and
Dealers use the XXXXXXXXXX Marks in accordance with
the terms of the license herein.
(vi) ICARUS agrees to cooperate (at no cost to ICARUS)
with XXXXXXXXXX to protect XXXXXXXXXX'x ownership of
and interest in the XXXXXXXXXX Marks. This
cooperation includes prompt notice to XXXXXXXXXX of
instances known to ICARUS in which a third party is
using the XXXXXXXXXX Marks without authorization.
XXXXXXXXXX shall have the right, but not the
obligation, and shall bear all costs and expenses, to
(a) institute and prosecute any actions for
infringement of the XXXXXXXXXX Marks throughout the
world; (b) defend any petition to cancel any
registration of the XXXXXXXXXX Marks; (c) and oppose
any attempted use of or application to register any
xxxx confusingly similar to, or a colorable imitation
of, any of the XXXXXXXXXX Marks throughout the world.
In the event that XXXXXXXXXX elects not to exercise
the foregoing rights in any particular instance,
ICARUS may, at its cost and expense, exercise such
rights.
(vii) Nothing contained in this Agreement shall be deemed
to grant to XXXXXXXXXX any rights to use, sublicense
or otherwise, any trademarks, service marks, brand
names, logos, and other proprietary rights belonging
to ICARUS; and XXXXXXXXXX agrees that ICARUS shall be
the sole owner of any and all goodwill in the
aforementioned, and XXXXXXXXXX shall take no action
that impairs or otherwise tarnishes same.
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J. Nothing contained in this Agreement shall be construed as
limiting rights that the parties may enjoy outside the scope
of the rights granted and the obligations and restrictions set
forth or treated herein.
3. Marketing
Subject to all existing and pending Dealer and Distributor agreements
between XXXXXXXXXX and third parties, the existence of which ICARUS
acknowledges the notice of, XXXXXXXXXX and ICARUS agree that XXXXXXXXXX
and ICARUS MARKETING CHANNELS, will be the exclusive worldwide marketers
of XXXXXXXXXX'X Software and XXXXXXXXXX Database Products to the CPI.
XXXXXXXXXX and ICARUS agree that ICARUS MARKETING CHANNELS shall be the
exclusive worldwide resellers of XXXXXXXXXX Software and XXXXXXXXXX
Database Products. However XXXXXXXXXX shall have the right to market
XXXXXXXXXX Software and XXXXXXXXXX Database Products directly to its own
End-User Customers, but not for subsequent resale or transfer.
4. Additional Obligations of the Parties
X. XXXXXXXXXX agrees to assist ICARUS in the development and
marketing of ICARUS' ARCHES(R) software and such other
software as may be owned or developed by ICARUS, for building
design and construction. XXXXXXXXXX shall in its sole
discretion decide the level of any such assistance if any. It
is the understanding of the parties that ICARUS will control
the development of the ARCHES(R) software.
X. XXXXXXXXXX agrees to provide ICARUS with one (1) current
updated copy of each publication marketed by XXXXXXXXXX in
order for ICARUS to (i) check for any inconsistencies between
ICARUS Software and Services and XXXXXXXXXX Software,
XXXXXXXXXX Database Products, XXXXXXXXXX data and/or
technology, and (ii) for ICARUS to become knowledgeable about
such XXXXXXXXXX publications.
C. Each party shall bear its own costs associated with any
development work related to any software development and
technology integration.
5. Training
A. ICARUS agrees to inform ICARUS customers about XXXXXXXXXX
training classes relating to the use of (i) the XXXXXXXXXX
Software, and (ii) XXXXXXXXXX Database Products. XXXXXXXXXX
agrees to train ICARUS personnel and certify them for
retraining of others, in order that ICARUS may offer training
to its customers relating to the use of XXXXXXXXXX Database
Products.
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B. ICARUS agrees to train ICARUS MARKETING CHANNELS in order to
promote XXXXXXXXXX Database Products.
6. Maintenance and Technical Support Services
A. ICARUS agrees to provide all technical support services to
customers licensing Integrated Software from ICARUS Marketing
Channels. XXXXXXXXXX shall at its sole option determine the
amount of technical support services XXXXXXXXXX shall provide
customers of Integrated Software. XXXXXXXXXX agrees to provide
software maintenance and bug fixes of XXXXXXXXXX Software to
ICARUS as soon as they are available for use by customers of
XXXXXXXXXX Software at no charge to ICARUS or ICARUS
customers.
X. XXXXXXXXXX agrees to provide all technical support services to
customers licensing XXXXXXXXXX Database Products from ICARUS
Marketing Channels at no charge to ICARUS or ICARUS customers.
7. Covenants
X. XXXXXXXXXX agrees that it shall not enter agreement(s) with
any third party to market XXXXXXXXXX Software or XXXXXXXXXX
Database Products, or to develop products which would be in
competition with ICARUS Software and Services, for the full
term of this agreement or any renewal term of this agreement
and without regard to any early termination of this agreement
except upon mutual agreement by both parties.
B. ICARUS agrees that it shall not enter agreement(s) with any
third party to market Unit Cost Estimating Software, or to
develop products which would be in competition with XXXXXXXXXX
Unit Cost Estimating Software, or XXXXXXXXXX Database
Products, for the full term of this agreement or any renewal
term of this agreement and without regard to any early
termination of this agreement except upon mutual agreement by
both parties.
8. Term
This Agreement shall be effective on the date first above written and
shall remain in force until terminated as provided herein, or for a period
of ten (10) years and shall be automatically renewed for additional
renewal terms of ten (10) years, unless six (6) months prior to any
anniversary date of a renewal term after the tenth (10th) year, either
party gives written notice of termination.
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9. Default
In the event of default by either party under any term or condition of
this Agreement, in addition to all other rights and remedies at law
available to the non-defaulting party, the non-defaulting party shall be
entitled to full and complete equitable relief, including the remedy of
temporary, preliminary and permanent injunction, in order to enforce the
terms and conditions of this Agreement and to protect the non-defaulting
parties' rights, including intellectual property rights and proprietary
information.
10. Trade Secrets and Technical Information
A. ICARUS and XXXXXXXXXX agree to treat all proprietary technical
information and trade secrets identified as such by either party as
they would treat their own most valuable trade secrets.
B. ICARUS and XXXXXXXXXX shall, unless otherwise authorized in writing
by the other party, hold in confidence and not divulge to third
parties or use in any way other than for providing services as
described herein, any confidential technical information identified
in writing as such by the party providing such information, which is
disclosed, directly or indirectly, to either party by the other.
Confidential technical information shall not include:
(i) information already known by the recipient and which was
acquired in a lawful manner and without obligation of
confidentiality;
(ii) information which is now or hereafter becomes a part of the
public domain through no wrongful act of the recipient;
(iii) information lawfully received by the recipient, without
obligation of confidentiality, from a third party who is free
to disclose it; or
(iv) information which the recipient can show by reasonable
evidence had been independently developed without reference to
confidential information received from the other party hereto.
11. Reports
A. ICARUS shall submit a quarterly report to XXXXXXXXXX within thirty
(30) days of the last day of each calendar quarter listing the name
and address of each customer (i) licensing Integrated Software and/or
other ICARUS software containing XXXXXXXXXX'X Database Products, from
ICARUS MARKETING CHANNELS, and (ii) that purchased XXXXXXXXXX'X
Database Products from ICARUS MARKETING CHANNELS.
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X. XXXXXXXXXX shall submit a quarterly report to ICARUS within thirty
(30) days of the last day of each calendar quarter listing the name
and address of each customer licensing ICARUS software directly from
XXXXXXXXXX, and provide to ICARUS a copy of the signed license
agreement for each customer. The foregoing shall bin addition to the
requirements of the ICARUS Sales Agent's agreement described in
paragraph 2E above.
12. Payments
A. ICARUS agrees to pay XXXXXXXXXX a royalty fee for [*] software
product licensed by ICARUS Marketing Channels to customers, that
contains Original XXXXXXXXXX Source Code and/or Modified XXXXXXXXXX
Source Code, which royalty shall be based upon the [*] of Authorized
Simultaneous Users ("ASU's"). Royalty fees due hereunder shall be [*]
the royalty fee of (i), (ii), or (iii) set forth below:
(i) a royalty of [*] for [*] ASU, a royalty fee of [*] for [*]
ASU's, a royalty fee of [*] for [*] ASU's, a royalty fee of [*]
for [*] ASU's plus [*] ASU over [*] ASU's; or
(ii) [*] of the [*] price for the [*] of ASU's for such XXXXXXXXXX
Software as described on the [*] XXXXXXXXXX Price Schedule; or
(iii) [*] of the [*] price charged by XXXXXXXXXX to its customers
for XXXXXXXXXX Software according to XXXXXXXXXX'X [*].
B. Each party shall remit payment to the other party for amounts due
within thirty (30) days of the last report as described in paragraph
11 of this Agreement.
13. Force Majeure
ICARUS, ICARUS MARKETING CHANNELS and XXXXXXXXXX shall not be
liable for failure or delay of performance hereunder if occasioned by
"force majeure", including war, declared or undeclared, fire, flood,
interruption of transportation, embargo, accident, explosion, inability to
procure, or shortage of supply of materials, equipment or production
facilities, governmental orders, regulations, restrictions, priorities or
rationing, or by strike, lockout, or other labor troubles, or any other
cause beyond the control of the party claiming that its failure of
performance was occasioned by "force majeure". Any suspension of
performance by reason of this paragraph shall be limited to the period
during which such cause or failure exists, but such suspension shall not
affect the term of this Agreement as heretofore defined.
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[*] This information has been omitted pursuant to a request for confidential
treatment.
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14. Entire Agreement
This Agreement constitutes the agreement between the parties hereto and
supersedes all prior negotiations, representations or agreements related
to this Agreement either written or oral. No changes, alterations or
modifications to this Agreement shall be effective unless in writing and
signed by the parties hereto, provided, however, XXXXXXXXXX'X marketing of
ICARUS software shall be governed by the ICARUS Sales Agent's agreement.
15. Notices and Transmittals
A. All notices required or permitted to be given by this Agreement shall
be in writing and shall be sent by registered or certified mail to
ICARUS or XXXXXXXXXX at their office addresses set forth in this
Agreement or such other address as notified in writing after the date
hereof.
B. The date of any notice shall be the date it is first received by the
office of the addressee.
C. All Notices shall be directed to:
ICARUS:
ICARUS Corporation
Xxx Xxxxxxx Xxxxx
xx000 Xxxxxxxxx Xxxx
Xxxxxxxxx, XX 00000
Attention: President
XXXXXXXXXX:
Xxxxxxxxxx Engineering Services Inc.
0000 X Xxxxxx XX
Xxxx, XX 00000-0000
Attention: President
16. Index - Headings
Index to this Agreement and headings and subheadings of Articles contained
herein are used for convenience and ease of reference, and in no way
define, limit or describe the scope or intent of this Agreement or any of
its provisions.
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17. Severability
If any provision or clause of this Agreement or application thereof to any
person or circumstance is held invalid or unconscionable, such invalidity
or unconscionability shall not affect any other provision or application
of the Agreement which can be given effect without the invalid or
unconscionable provision or application, and to this end the provisions of
this Agreement are declared to be severable.
18. Waiver and Invalidity
No benefit or right accruing to either party under this Agreement shall be
deemed waived unless the waiver is reduced to writing and signed by both
parties. The waiver by either party in one instance of any act, condition
or requirement stipulated in this Agreement shall not be deemed a
continuing waiver or a waiver of any other act, condition or requirement
or a waiver of the same act, condition or requirement in other instances.
19. Governing Law
The validity, construction and interpretation of this Agreement, and the
rights and obligations of the parties hereto, shall be governed by the
laws of the State of Maryland, U.S.A. (including, where applicable, the
Uniform Commercial Code as adopted by the State of Maryland).
20. Warranties
A. Each party represents and warrants to the other party that it is the
author and owner of its software, technology, and know-how and/or has
full and exclusive right to grant all licenses and rights granted
herein, that its software, technology, and know-how have not been
published or, disclosed under circumstances that have caused loss of
copyright or, trade secret status therein, and that its software,
technology, and know-how do not infringe any copyright or other
proprietary rights including trade secrets of any third party.
X. XXXXXXXXXX hereby represents and warrants that the Original
XXXXXXXXXX Source Code is as represented, that the media containing
same shall be free of defects in materials and workmanship, and that
any inherent defects shall be promptly remedied by XXXXXXXXXX without
cost, expense or further liability to ICARUS.
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21. Indemnification
X. XXXXXXXXXX and ICARUS hereby agree to indemnify and defend the other
party against all claims that such party's respective software
infringes any patent, copyright, trademark, or trade secret rights of
a third party, and such party agrees to pay all costs, damages, and
attorney fees incurred by the other party with any such claim. The
parties further agree to submit to personal jurisdiction in any forum
in which the other party may be sued on any claim subject to
indemnification.
B. Neither party shall have any obligation to defend the other party, or
to pay any such costs, damages, and attorney fees for any claim based
upon the combination, operation, or use of the other party's software
and/or technology with any programs or data not supplied by that
party if such infringement would have been avoided by the
combination, operation, or use of such software and/or technology
without such particular programs or data.
C. The parties represent and warrant that no claim of infringement of
any patent, copyright, trademark, or other intellectual property
right, has been made or is pending against that party or any entity
from which that party has obtained such rights relative to software
delivered to the other party hereunder.
D. The foregoing indemnities are conditioned on (i) prompt written
notice of any claim or proceeding subject to indemnity; (ii)
reasonable cooperation by the indemnified party in the defense and
settlement of such claim at the expense of the indemnifying party;
and (iii) prior written approval by the indemnifying party of any
settlement, which approval shall not be unreasonably withheld.
22. Confidentiality of Terms
Neither party shall, without prior written authorization of the other
party, disclose to any third party the terms and conditions of this
Agreement except as may be necessary to establish or assert rights
hereunder or as required by law; provided, however, that either party may,
on a confidential basis, disclose this Agreement to its accountants,
attorneys, financing organizations, or as otherwise may be required by
law.
23. Assignment
Neither party shall sell, transfer, assign, or subcontract any right or
obligation hereunder except as expressly provided herein without the prior
written consent of the other party. Any act in derogation of the foregoing
shall be null and void. The parties agree that the foregoing does not
apply to a transfer of ownership of either party.
15
24. Arbitration
Any controversy or claim arising out of or relating to this Agreement, or
the breach thereof, shall be settled by arbitration in accordance with the
Rules of the American Arbitration Association, and judgment upon the award
rendered by the Arbitrator(s) may be entered into any Court having
jurisdiction thereof. Notwithstanding the foregoing, this provision shall
not be deemed to preclude either party from obtaining equitable relief,
including injunctive relief in any court of competent jurisdiction to
enforce any term or condition hereunder without the necessity of
arbitration.
16
IN WITNESS WHEREOF, the parties hereto, intending to be legally bound,
have executed and sealed this Agreement effective the day and year first above
written.
Xxxxxxxxxx Engineering Services Inc. (XXXXXXXXXX)
By/s/Xxxx X. Xxxxxxxx (SEAL)
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Signature Date
Xxxx X. Xxxxxxxx
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Name
President
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Title
ICARUS Corporation (ICARUS)
By/s/Xxxxxxx X. Xxxxxx III (SEAL)
-------------------------------------------------------
Signature Date
Xxxxxxx X. Xxxxxx III
-------------------------------------------------------
Name
Vice President
-------------------------------------------------------
Title
17
XXXXXXXXXX ENGINEERING SERVICES, INC.
0000 X. Xxxxxx Xx.
X.X. Xxx 0000
Xxxx, Xxxxxxx 00000-0000
(000) 000-0000 * Fax: (000) 000-0000 * Email:00000.0000@xxxxxxxxxx.xxx
May 18, 1997
XXXXXXXXXX ENGINEERING SERVICES, INC.
Whereas Xxxxxxxxxx and ICARUS have agreed to the marketing and reselling
exclusivity under paragraph 3 of their agreement, Xxxxxxxxxx agrees to
make reasonable efforts to lawfully non-renew or terminate said
distributor agreements pursuant to the Term and Termination section
present in every agreement. In addition, in order to protect Xxxxxxxxxx'x
income derived from the annual renewal of Database Products previously
sold under above said agreements, ICARUS grants to Xxxxxxxxxx the right to
offer replacement agreements granting the above said distributors the
right to maintain only those Database Products sold to End-User Customers
while the original agreements were in effect. In addition, ICARUS agrees
to allow Xxxxxxxxxx the retention of its agreement with its distributor in
Canada and agrees to allow Xxxxxxxxxx to sign the pending agreements with
distributors in Mexico, Venezuela and Indonesia allow.
/s/ Xxxxxxx X. Xxxxxx 5/18/97 Vice President
-------------------------------------------------------
Xxxxxxx X. Xxxxxx
/s/ Xxxx X. Xxxxxxxx 5/18/97 President
-------------------------------------------------------
Xxxx X. Xxxxxxxx
