EXHIBIT 10.17
EXECUTION COPY
DEVELOPMENT SERVICES AND REFERRAL AGREEMENT
This DEVELOPMENT SERVICES AND REFERRAL AGREEMENT (this "AGREEMENT") is
entered into, effective as of January 16, 2002 (the "EFFECTIVE DATE"), by and
between Document Sciences Corporation, a Delaware corporation ("DOCUMENT
SCIENCES"), and Objectiva Software Solutions, Inc., a California corporation
("OSS").
RECITALS
A. Document Sciences develops, markets and supports a family of document
automation software used in high volume print and transactional electronic
publishing applications (the "DOCUMENT SCIENCES SOFTWARE") and is interested in
outsourcing a significant portion of the development of the Document Sciences
Software to OSS.
B. OSS provides software development and other services for the creation
of document automation software applications and other applications.
C. OSS desires to provide, and Document Sciences is interested in
receiving, such services in accordance with the terms of this Agreement.
D. OSS also desires to sell the Document Sciences Software to third
party end users, subject to the terms and conditions of a reseller agreement to
be entered into by the Parties on even date herewith (the "RESELLER AGREEMENT").
E. Additionally, as a material inducement for OSS to enter into this
Agreement and provide the Services for the Fee, Document Sciences is
contemplating purchasing an aggregate of 1,217,500 shares of OSS common stock
from OSS and certain founding stockholders of OSS, pursuant to a certain Common
Stock Purchase Agreement (the "COMMON STOCK PURCHASE AGREEMENT"). The parties
agree that they shall in good faith negotiate and enter into the Common Stock
Purchase Agreement as soon as reasonably practicable.
NOW THEREFORE, in consideration of the foregoing and the mutual promises
and covenants set forth in this Agreement, and for good and valuable
consideration, the parties agree as follows:
AGREEMENT
1. DEFINITIONS.
1.1 "Deliverables" means software, in source and object code,
documentation, reports, processes, machines, compositions of matter,
improvements, inventions (whether or not protectable under patent laws), works
of authorship, information fixed in any tangible medium of expression (whether
or not protectable under copyright laws), moral rights, mask works, trademarks,
service marks, trade names, trade dress, trade secrets, know-how, ideas (whether
or not protectable under trade secret laws), and all other subject matter
protectable under patent, copyright, moral right, mask work, trademark, trade
secret or other laws, and includes without limitation all new or useful art,
combinations, discoveries, formulae, manufacturing techniques,
technical developments, discoveries, artwork, and designs that OSS, solely or
jointly with others, conceives, reduces to practice, creates, derives, develops
or makes within the scope of OSS's work for Document Sciences under this
Agreement pursuant to a Statement of Work.
1.2 "Development Tools" means a software product developed
pursuant to a Statement of Work or in connection with a Statement of Work that
is used to develop a Deliverable.
1.3 "Document Sciences Background Technology" means any
technology and Intellectual Property Rights owned by or licensed to Document
Sciences. Document Sciences Background Technology includes any Improvements
thereon whether developed by Document Sciences, OSS or jointly by the parties.
1.4 "Improvement" means any and all enhancements, modifications,
derivative works, updates, upgrades, improvements, or related changes to the
Document Sciences Background Technology or to the OSS Background Technology, as
the case may be, including without limitation derivative works of any
copyrighted material, whether developed solely by either party, jointly or
jointly with others.
1.5 "Intellectual Property Rights" means any and all known or
hereafter existing (a) rights associated with works of authorship throughout the
universe, including without limitation, exclusive exploitation rights,
copyrights, moral rights and mask works (including, without limitation, the
exclusive right to use, reproduce, modify, distribute, publicly display and
publicly perform the copyrighted work), (b) trademark, trade name rights,
service marks, trade dress and similar rights, (c) trade secret rights, (d)
patents (including, without limitation, the exclusive right to make, use, sell
and otherwise commercially exploit), designs, algorithms and other industrial
property rights, (e) technical, scientific and other know-how and information,
(f) other intellectual and industrial property and proprietary rights of every
kind and nature throughout the universe, whether arising by operation of law, by
contract or license, or otherwise, and regardless of whether such rights arise
under the laws of the United States, or any other state, country or
jurisdiction, and (g) all registrations, applications, renewals, extensions,
combinations, divisions or reissues of the foregoing.
1.6 "OSS Background Technology" means any technology and
Intellectual Property Rights owned by or licensed to OSS which are (i) in
existence prior to the Effective Date or (ii) developed after the Effective Date
and are unrelated to a Statement of Work. OSS Background Technology includes any
Improvements to or upon (i) or (ii) above, other than Improvements to (i) or
(ii) above made by Document Sciences and which are owned by Document Sciences as
provided in Section 4.2 ("Ownership of Improvements").
1.7 "Prospective Customer" has the meaning set forth in Section
8.2 ("Prospective Customer Notice").
1.8 "Qualified Referral" means any Prospective Customer other
than Prospective Customers either: (a) who have an existing account with OSS as
of the Effective Date; or (b) for whom a license and/or sale has already been
initiated by OSS within at least six (6) months before the date the applicable
Referral Notice was received by OSS.
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1.9 "Referral Notice" has the meaning set forth in Section 8.2
("Prospective Customer Notice").
1.10 "Services" means Software Development Services and other
services requested by Document Sciences and provided by OSS pursuant to a
Statement of Work.
1.11 "Software Development Services" means the design,
development, maintenance, implementation, support, testing, and documentation
services and other services as may be required to create, enhance, improve,
modify, update, or upgrade software applications as set forth in a Statement of
Work. Documentation services shall include creating, editing, enhancing,
improving, modifying, and keeping reasonably current design, specification,
testing, and other technical documents in a format acceptable to Document
Sciences in its sole discretion.
1.12 "Specifications" means the technical and other
specifications and criteria set forth in the applicable Statement(s) of Work.
1.13 "Statement of Work" means a written agreement in substantially the same
form as Exhibit A hereto, pursuant to which OSS shall perform Services for
Document Sciences.
2. SERVICES.
2.1 REQUEST FOR SERVICES. Subject to the terms of this Agreement,
OSS shall render Services to Document Sciences during the term of this Agreement
upon Document Sciences submitting a Statement of Work, setting forth the nature
of the Services requested and the Deliverables to be delivered.
2.2 DEVELOPMENT TEAM. For each Statement of Work, OSS shall
provide a team of software developers and other personnel in number and with the
skill and qualifications appropriate to perform the Services requested by
Document Sciences; provided, however, that, at a minimum, OSS shall provide ten
(10) software developers based in Beijing, China and the following individuals
to devote their efforts on a full-time basis, except as noted, to the
performance of Services: Xxxxx Xx, Xxxxxx Xxx, Xxxxx Sackallah and Xxxxxx
Xxxxxxxxx (at least 80% of his time) (such four individuals referred to as, the
"CORE DEVELOPMENT TEAM"). Concurrently with execution of this Agreement, the
Company shall cause each member of the Core Development Team to execute the
Proprietary Rights Assignment Agreement in the form attached as Exhibit B
hereto.
2.3 ACCEPTANCE OF DELIVERABLES AND SERVICES. Unless otherwise
agreed in a Statement of Work, for one hundred eighty (180) days after the
delivery of a Deliverable (the "EVALUATION PERIOD"), Document Sciences shall
have the right to evaluate and test the Deliverable in order to determine if it
conforms, in its sole discretion, with the Specifications set forth in the
Statement of Work for such Deliverable. In the event that the Deliverable does
not conform to such Specifications (each non-conformity referred to as an,
"Error"), Document Sciences will provide written notice to OSS describing the
Error(s) in sufficient detail to allow OSS to replicate the Error(s). OSS agrees
to use diligent efforts correct all such Errors and redeliver the corrected
Deliverable to Document Sciences within forty-five (45) days (the "CORRECTION
Period") for re-evaluation and re-testing as provided in this Section. If
Document
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Sciences does not report an Error during the Evaluation Period, Document
Sciences will be deemed to have accepted the Deliverable or the corrected
version of the Deliverable, if applicable. If OSS is not able to correct an
Error within the Correction Period, then Document Sciences may, in its sole
discretion, (i) modify the Specifications so that the Deliverable conforms, (ii)
accept such Error in the Deliverable, (iii) terminate the Statement of Work and
this Agreement and receive a refund of amounts paid to OSS for such Deliverable
or (iv) offset any amounts owed to OSS equal to the amounts paid to OSS for such
Deliverable.
2.4 DEVELOPMENT EFFORT. OSS shall use reasonable commercial
efforts to develop and deliver the Deliverables in accordance with the
Specifications and the Statement of Work; provided, however, that the due date
for any Deliverable, the performance of which was delayed on account or failure
of Document Sciences to complete any of its obligations hereunder in a timely
fashion, shall be extended by one (1) day for each day of Document Sciences'
lateness.
2.5 CHANGES. If Document Sciences proposes in writing a change to
a Statement of Work, OSS agrees to attempt in good faith to make such changes.
In the event such change materially increases OSS's costs with respect to such
Statement of Work or requires a modification to the schedule for development,
OSS and Document Sciences shall negotiate in good faith for an adjustment to the
development schedule, as reflected in an amendment to such Statement of Work.
2.6 NO CONFLICT WITH SERVICES. During the term of this Agreement
and for a period of one (1) year after the date of expiration or termination of
this Agreement, OSS will not provide to any third party any software development
duties or services for the development of products or services substantially
similar to the Deliverables or Services contemplated under this Agreement as
generally described in Exhibit C.
2.7 COSTS. The parties agree that each party will pay for its own
costs, fees and expenses related to its performance of its obligations under any
Statement of Work, except as provided in Section 3 ("Fees").
3. FEES.
3.1 SERVICE FEE. In consideration for the Services rendered
hereunder by OSS, Document Sciences shall pay OSS a fixed-fee of One Hundred
Twenty Nine Thousand One Hundred Sixty Six Dollars and Sixty-Seven Cents
($129,166.67) per month during the term of this Agreement (the "FEE"). Without
limiting any other provision in this Agreement, Document Sciences may
discontinue paying the Fee if (i) every Statement of Work is completed and OSS
has been fully compensated for all such Services as set forth herein and (ii)
Document Sciences provides OSS ninety (90) days prior written notice of its
intent to cease paying the Fee.
3.2 REFERRAL FEE. OSS shall pay Document Sciences a cash fee in
the amount of twenty percent (20%) of the net sale (in accordance with OSS's
standard accounting practices) received through a sale to a Qualified Referral
referred by Document Sciences ("REFERRAL FEE"). Referral Fees are payable within
thirty days (30) of the end of each calendar year.
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4. PROPRIETARY RIGHTS.
4.1 OWNERSHIP OF BACKGROUND TECHNOLOGY. Document Sciences shall
be the sole and exclusive owner of all right, title and interest in and to the
Document Sciences Background Technology. OSS shall be the sole and exclusive
owner of all right, title and interest in and to the OSS Background Technology.
Except as otherwise provided in Sections 4.8 ("License to Document Sciences
Background Technology") and 4.9 ("License to OSS Background Technology"), no
licenses or other rights with respect to such Background Technology are granted
to the other party.
4.2 OWNERSHIP OF IMPROVEMENTS. Notwithstanding anything to the
contrary in this Agreement, nothing in this Agreement shall preclude Document
Sciences from making Improvements to the OSS Background Technology that is in
the public domain (by reason of the publication of a patent or otherwise)
provided that any such activity does not infringe OSS's Intellectual Property
Rights. Subject to the foregoing sentence, Document Sciences shall own all
right, title and interest in and to all Improvements and any Intellectual
Property Rights therein made by Document Sciences to the public domain OSS
Background Technology. Document Sciences shall also own all right, title and
interest in and to all Improvements and any Intellectual Property Rights therein
made by OSS to the Document Sciences Background Technology.
4.3 OWNERSHIP OF DELIVERABLES. Document Sciences shall be the
sole and exclusive owner of all right, title and interest in and to the
Deliverables and all Intellectual Property Rights in the Deliverables.
4.4 OWNERSHIP OF DEVELOPMENT TOOLS. In the event that a
Development Tool is developed pursuant to a Statement of Work or in connection
with a Statement of Work, Document Sciences shall own all right, title and
interest in and to such Development Tool. OSS agrees to deliver the Development
Tool and all related documentation to Document Sciences to enable Document
Sciences to exploit such ownership rights.
4.5 WORKS MADE FOR HIRE. Excluding the OSS Background Technology,
all Deliverables, Development Tools and Improvements to Document Sciences
Background Technology made by OSS and all Intellectual Property Rights in any of
the foregoing shall be the property of Document Sciences and shall constitute
"work made for hire" (as defined in 17 U.S.C. Section 101) of which Document
Sciences is the author for purposes of Title 17 of the United States Code. To
the extent any Deliverable, Development Tool or Improvement to Document Sciences
Background Technology made by OSS or any Intellectual Property Rights in any of
the foregoing is not a "work made for hire" of which Document Sciences is the
author, OSS agrees to assign and hereby does assign to Document Sciences all
right, title and interest in and to such Deliverable, Development Tool or
Improvement to Document Sciences Background Technology made by OSS or any
Intellectual Property Rights in any of the foregoing. Additionally, OSS hereby
waives all moral or similar rights in all Deliverables, Development Tools and
Improvements to Document Sciences Background Technology made by OSS and all
Intellectual Property Rights in any of the foregoing.
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4.6 DISCLOSURE AND OWNERSHIP OF DELIVERABLES, DEVELOPMENT TOOLS
AND IMPROVEMENTS. OSS agrees to make and maintain technical and business
records, plans, drawings, files, studies, prototypes, cost and tooling
schematics during the course of providing the Services sufficient to enable
Document Sciences, or its designee, to reproduce any Deliverable, Development
Tool or Improvement to the Document Sciences Background Technology made by OSS,
which such technical and business records, plans, drawings, files, studies,
prototypes, cost and tooling schematics shall be and remain the property of
Document Sciences. Additionally, OSS shall take all reasonable and customary
precautions, including without limitation, at least daily backup of computer
files related to the Services and daily off-site storage of such computer files,
to prevent the loss or alteration of such computer files. OSS agrees to promptly
disclose to Document Sciences every Deliverable, Development Tools and
Improvement to the Document Sciences Background Technology made by OSS. OSS
hereby does and will assign to Document Sciences, or Document Sciences'
designee, OSS's entire worldwide right, title and interest in and to all
Deliverables, Development Tools, Improvements to the Document Sciences
Background Technology made by OSS and all associated records and Intellectual
Property Rights in any of the foregoing; provided, that no such assignment
includes OSS Background Technology.
4.7 ASSISTANCE. OSS agrees to execute upon Document Sciences'
request a transfer form in the form provided by Document Sciences for each
Deliverable, Development Tool and Improvement to the Document Sciences
Background Technology made by OSS. Additionally, OSS agrees to assist Document
Sciences in any reasonable manner to obtain, perfect and enforce, for Document
Sciences' benefit, Document Sciences' rights, title and interest in any and all
countries, in and to all patents, copyrights, moral rights, mask works,
trademarks, service marks, trade secrets, and other Intellectual Property Rights
in each Deliverable, Development Tool and Improvement to the Document Sciences
Background Technology made by OSS. OSS agrees to execute, when requested, for
each Deliverable, Development Tool and Improvement to the Document Sciences
Background Technology made by OSS (including derivative works, improvements,
renewals, extensions, continuations, divisionals, continuations in part, or
continuing patent applications for any of the foregoing), (i) patent, copyright,
trademark, service xxxx, mask work or similar applications related to such
Deliverables, Development Tools and Improvements to the Document Sciences
Background Technology made by OSS, (ii) documentation (including without
limitation assignments) to permit Document Sciences to obtain, perfect and
enforce Document Sciences' right, title and interest in and to such
Deliverables, Development Tools and Improvements to the Document Sciences
Background Technology made by OSS, and (iii) any other lawful documents deemed
necessary by Document Sciences to carry out the purpose of this Section 4
("PROPRIETARY RIGHTS"). If called upon to render assistance under this Section
4.7, OSS will be entitled to a fair and reasonable fee in addition to
reimbursement of authorized expenses incurred at the prior written request of
Document Sciences. In the event that Document Sciences is unable for any reason
to secure OSS's signature to any document OSS is required to execute under this
Section 4.7, OSS hereby irrevocably designates and appoints Document Sciences
and Document Sciences' duly authorized officers and agents as OSS's agents and
attorneys-in-fact to act for and in OSS's behalf and instead of OSS, to execute
such document with the same legal force and effect as if executed by OSS.
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4.8 LICENSE TO DOCUMENT SCIENCES BACKGROUND TECHNOLOGY. Except as
otherwise expressly permitted under the Reseller Agreement, Document Sciences
grants OSS a non-exclusive, worldwide, nontransferable (without right to
sublicense), royalty-free license to use and copy the Document Sciences
Background Technology that is specifically provided by Document Sciences to OSS
in connection with the development of a Deliverable solely for the purpose of
designing and developing a Deliverable.
4.9 LICENSE TO OSS BACKGROUND TECHNOLOGY. In the event any OSS
Background Technology (i) is included within or embodied in a Deliverable,
Development Tool or Improvement to the Document Sciences Background Technology
made by OSS, (ii) is necessary to exploit a Deliverable, Development Tool or
Improvement to the Document Sciences Background Technology made by OSS, or (iii)
relates in any way to Document Sciences' business or demonstrably anticipated
research into or development of any Deliverable, Development Tool or Improvement
to Document Sciences Background Technology, then OSS hereby grants to Document
Sciences, or Document Sciences' designee, a non-exclusive, worldwide,
royalty-free, fully-paid up, perpetual, irrevocable, transferable license (with
the right to sublicense through multiple tiers of distribution) to use,
reproduce, modify, distribute, publicly display, make, have made, sell, have
sold, offer for sale, or otherwise commercially exploit, such OSS Background
Technology and practice all applicable patent, copyright, moral right,
trademark, service xxxx, mask work, trade secret and other Intellectual Property
Rights relating to such OSS Background Technology.
4.10 RESTRICTIONS. Except as provided for in the Reseller
Agreement, and notwithstanding anything to the contrary in this Agreement, OSS
agrees that it shall not have the right to license, transfer, sell, assign or
otherwise distribute to any third party or create any derivative work of,
include in any other software application or otherwise utilize any (i)
Deliverable, (ii) Development Tool, or (ii) Improvement to Document Sciences
Background Technology made by OSS.
5. WARRANTIES.
5.1 MUTUAL REPRESENTATIONS. Each party represents and warrants to
the other party that, during the term of this Agreement, it possesses and shall
possess the full power and authority to enter into this Agreement and any
subsequent Statement of Work. Each party further represents and warrants that it
has full power and authority to fulfill its obligations hereunder and under any
Statement of Work, and the performance according to the terms of this Agreement
or any Statement of Work shall not breach any separate agreement by which such
party is bound.
5.2 NO CONFLICT OF INTEREST. OSS represents and warrants that, to
the best of OSS's knowledge, there is no other contract or duty on OSS's part
that conflicts with or is inconsistent with this Agreement.
5.3 COMPLIANCE WITH LAWS. Each party represents and warrants that
performance of its obligations hereunder shall comply with all applicable laws,
rules and regulations.
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5.4 PERFORMANCE OF DELIVERABLES. Notwithstanding any inspection
or acceptance by Document Sciences, OSS represents and warrants to Document
Sciences that, for a period of twenty-four (24) months after the acceptance of a
Deliverable, the Deliverable will perform substantially in accordance with the
Specifications set forth in the applicable Statement of Work.
5.5 WARRANTY OF SERVICES. OSS represents and warrants to Document
Sciences that the Services provided herein will be performed in compliance with
the Specifications set forth in the applicable Statement of Work. OSS further
represents and warrants that all Services performed hereunder will be performed
in a professional and workmanlike manner.
5.6 WARRANTY OF TITLE. OSS represents and warrants to Document
Sciences that Document Sciences will receive free, good and clear title to all
Deliverables, Development Tools and Improvements to Document Sciences Background
Technology made by OSS. OSS further represents and warrants that all
Deliverables, Development Tools and Improvements to Document Sciences Background
Technology made by OSS, except to the extent any Document Sciences Background
Technology provided to OSS by Document Sciences is embodied within any of the
foregoing, do not and will not violate, infringe or misappropriate any
Intellectual Property Rights of OSS or any third party. OSS represents and
warrants that all OSS personnel, including employees, subcontractors, and
agents, involved in the development of the Deliverables, Development Tools or
Improvements to Document Sciences Background Technology made by OSS have
assigned by written agreement to OSS all right, title, and interest to their
respective works.
5.7 NOTIFICATION OF ERRORS. OSS represents and warrants to
Document Sciences that it shall inform Document Sciences as soon as possible of
any material Errors in any Deliverables, Development Tools or Improvements to
Document Sciences Background Technology made by OSS. OSS further agrees to
inform Document Sciences of, and to provide to Document Sciences, as soon as is
reasonably possible, any solutions for such Errors.
5.8 VIRUS WARRANTY. OSS represents and warrants to Document
Sciences that all Deliverables, Development Tools and Improvements to Document
Sciences Background Technology made by OSS will contain no trojan horses, trap
doors, back doors, easter eggs, worms, time bombs, cancel bots or other similar
computer programming virus.
5.9 WARRANTY DISCLAIMERS. EXCEPT FOR THE FOREGOING WARRANTIES, NO
OTHER WARRANTIES OF ANY NATURE, EXPRESS, IMPLIED, STATUTORY, OR ANY WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AS TO THE DELIVERABLES,
THE SERVICES, DEVELOPMENT TOOLS OR IMPROVEMENTS TO DOCUMENT SCIENCES' BACKGROUND
TECHNOLOGY MADE BY OSS OR TO THE OSS BACKGROUND TECHNOLOGY OR AS TO ANY SOFTWARE
CODE, DOCUMENTATION OR OTHER MATERIALS PROVIDED BY DOCUMENT SCIENCES TO OSS IN
CONNECTION WITH THIS AGREEMENT ARE MADE BY EITHER PARTY TO THE OTHER UNDER THIS
AGREEMENT, AND BOTH PARTIES DISCLAIM ALL SUCH IMPLIED WARRANTIES.
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6. INDEMNIFICATION.
6.1 INDEMNIFICATION BY OSS. OSS agrees to defend, indemnify and
hold harmless Document Sciences and its officers, directors, agents, employees,
independent contractors and affiliates and their successors and assigns (each, a
"DOCX INDEMNIFIED PARTY") from and against any and all liability, obligation,
damages, loss, award, fine, fee, charge, cost or expense of any kind, character
or description (including reasonable attorneys' fees) arising out, related to or
in connection with of a claim, demand, suit, action or proceeding (each, an
"ACTION") based upon or related to (i) the Services, including without
limitation, any Deliverable, Development Tool or Improvement to the Document
Sciences Background Technology made by OSS; except to the extent such Action is
directly caused by the conduct of the DOCX Indemnified Party in violation of
this Agreement, and (ii) OSS's failure to comply with the terms of this
Agreement, including without limitation, any material breach of, or material
inaccuracy in, any of the representations or warranties made by OSS in this
Agreement.
6.2 OSS LIMITATIONS.
6.2.1 INFRINGEMENT ACTIONS. OSS shall have no
indemnification obligation under this Agreement for any Action for infringement
or misappropriation with respect to a Deliverable to the extent such Action
results from: (a) any modifications to such Deliverable made after acceptance by
Document Sciences, if the alleged infringement is directly caused by such
modification; or (b) any use of such Deliverable in combination with other
products, processes or materials in a manner not permitted or contemplated
hereunder, where the alleged infringement is directly caused by such
combination. In the event of such infringement Action, OSS may (or, where use of
such Deliverable is permanently enjoined, OSS shall), at its option and expense,
either (i) procure for Document Sciences the right to use, sell and otherwise
commercially exploit such Deliverable or (ii) replace or modify such Deliverable
so that it becomes noninfringing and remains functionally equivalent.`
6.2.2 PROCEDURAL LIMITATIONS. The obligations of OSS to
indemnify the DOCX Indemnified Party under this Agreement are contingent upon
(i) the DOCX Indemnified Party giving prompt written notice to the OSS of any
Action, (ii) OSS having, at its option, control of the defense and related
settlement negotiations; (iii) OSS receiving the reasonable cooperation of the
DOCX Indemnified Party in the defense of any Action. The DOCX Indemnified Party
shall have the option to hire counsel of its choice at its own expense in
defense of any Action, and OSS shall not compromise, settle or consent to the
entry of a judgment with respect to any Action without the prior written consent
of the DOCX Indemnified Party.
6.3 INDEMNIFICATION BY DOCUMENT SCIENCES. Document Sciences
agrees to defend, indemnify and hold harmless OSS and its officers, directors,
agents, employees, independent contractors and affiliates and their successors
and assigns (each, an "OSS INDEMNIFIED PARTY") from and against any and all
liability, obligation, damages, loss, award, fine, fee, charge, cost or expense
of any kind, character or description (including reasonable attorneys' fees)
arising out, related to or in connection with an Action based upon or related to
(i) any breach of its obligations under this Agreement; or (ii) any claim of
infringement or misappropriation based upon OSS's proper use of the Document
Sciences Background
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Technology in accordance with Section 4.8 ("License to Document Sciences
Background Technology").
6.4 DOCUMENT SCIENCES LIMITATIONS. The obligations of Document
Sciences' to indemnify the OSS Indemnified Party under this Agreement are
contingent upon (i) the OSS Indemnified Party giving prompt written notice to
Document Sciences of any Action, and (ii) Document Sciences having, at its
option, control of the defense and related settlement negotiations; (iii)
Document Sciences receiving the reasonable cooperation of the OSS Indemnified
Party in the defense of any such Action. The OSS Indemnified Party shall have
the option to hire counsel of its choice at its own expense in defense of any
Action, and Document Sciences shall not compromise, settle or consent to the
entry of a judgment with respect to any Action without the prior written consent
of the OSS Indemnified Party.
6.5 NO CONSEQUENTIAL DAMAGES; DAMAGES CAP. EXCEPT TO THE EXTENT
OF ANY INDEMNIFICATION OBLIGATIONS PURSUANT TO SECTION 6 ("INDEMNIFICATION") OR
FOR ANY LIABILITY ARISING UNDER SECTION 7 ("CONFIDENTIALITY"), IN NO EVENT SHALL
EITHER PARTY BE LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON OR ENTITY FOR ANY
SPECIAL, CONSEQUENTIAL, INCIDENTAL, INDIRECT, EXEMPLARY OR PUNITIVE DAMAGES,
HOWEVER CAUSED, WHETHER FOR BREACH OF CONTRACT, TORT, NEGLIGENCE, STRICT PRODUCT
LIABILITY OR OTHERWISE (INCLUDING, WITHOUT LIMITATION, DAMAGES BASED ON LOSS OF
PROFITS, DATA OR BUSINESS OPPORTUNITY), AND WHETHER OR NOT SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. ADDITIONALLY, IN NO EVENT SHALL THE
MAXIMUM AGGREGATE LIABILITY OF DOCUMENT SCIENCES FOR ALL CLAIMS ARISING OUT OF
OR RELATING TO THIS AGREEMENT OR ANY STATEMENT OF WORK EXCEED THE AMOUNTS PAID
BY DOCUMENT SCIENCES TO OSS UNDER THIS AGREEMENT.
6.6 BASIS OF THE BARGAIN; FAILURE OF ESSENTIAL PURPOSE. THE
PARTIES ACKNOWLEDGE THAT THEY HAVE ENTERED INTO THIS AGREEMENT IN RELIANCE UPON
THE LIMITATIONS OF LIABILITY AND THE DISCLAIMERS OF WARRANTIES AND DAMAGES SET
FORTH IN THIS AGREEMENT, AND THAT THE SAME FORM AN ESSENTIAL BASIS OF THE
BARGAIN BETWEEN THE PARTIES. THE PARTIES AGREE THAT THE LIMITATIONS AND
EXCLUSIONS OF LIABILITY AND DISCLAIMERS SPECIFIED IN THIS AGREEMENT WILL SURVIVE
AND APPLY EVEN IF FOUND TO HAVE FAILED OF THEIR ESSENTIAL PURPOSE. THIS
LIMITATION SHALL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY PROVIDED HEREIN.
7. CONFIDENTIALITY.
7.1 DEFINITION OF CONFIDENTIAL INFORMATION. "Confidential
Information" as used in this Agreement shall mean any and all technical and
non-technical information of each party, including patent, copyright, trade
secret, and proprietary information, techniques, sketches, drawings, models,
inventions, know-how, processes, apparatus, equipment, algorithms, software
programs, software source documents, and formulae related to the current, future
and proposed products and services of each of the parties, and includes, without
limitation, each party's
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respective information concerning research, experimental work, development,
design details and specifications, engineering, financial information,
procurement requirements, purchasing, manufacturing, customer lists, business
forecasts, sales and merchandising, and marketing plans and information.
"Confidential Information" also includes proprietary or confidential information
of any third party who may disclose such information to either party in the
course of the other party's business. The terms of this Agreement and the terms
of any Statement of Work shall be deemed Confidential Information. Additionally,
in connection with the provision of Services by OSS, Document Sciences may
provide OSS with Document Sciences Background Technology and software code in
source and/or object code. OSS acknowledges and agrees that such Document
Sciences Background Technology and software code is "Confidential Information"
for purpose of this Section 7 ("Confidentiality").
7.2 NONDISCLOSURE AND NONUSE OBLIGATION. Each party (the
"RECEIVING PARTY") agrees that it will not use, disseminate, or in any way
disclose any Confidential Information of the other party (the "DISCLOSING
PARTY"), to any person, firm or business, except that the Receiving Party may
use the Disclosing Party's Confidential Information to the extent necessary to
perform its obligations under this Agreement. The Receiving Party agrees that it
shall treat all Confidential Information of the Disclosing Party with the same
degree of care as the Receiving Party accords to its own Confidential
Information, but in no case less than reasonable care. The Receiving Party
agrees that it shall disclose Confidential Information of the other party, only
to those of its employees and contractors who need to know such information, and
the Receiving Party certifies that such employees and contractors have
previously agreed, either as a condition to employment or in order to obtain the
Confidential Information of the Disclosing Party, to be bound by terms and
conditions substantially similar to those terms and conditions applicable to the
Receiving Party under this Agreement. The Receiving Party shall immediately give
notice to the Disclosing Party of any unauthorized use or disclosure of
Disclosing Party's Confidential Information. The Receiving Party agrees to
assist the Disclosing Party in remedying any such unauthorized use or disclosure
of Disclosing Party's Confidential Information.
7.3 EXCLUSIONS FROM NONDISCLOSURE AND NONUSE OBLIGATIONS. The
obligations under Section 7.2 ("Nondisclosure and Nonuse Obligations") of the
Receiving Party, with respect to any portion of the Confidential Information of
the Disclosing Party, shall not apply to such portion that such Receiving Party
can document: (i) was in the public domain at or subsequent to the time such
portion was communicated to the Receiving Party by the Disclosing Party through
no fault of the Receiving Party, (ii) was rightfully in the Receiving Party's
possession free of any obligation of confidence at or subsequent to the time
such portion was communicated to the Receiving Party by the Disclosing Party,
(iii) was developed by employees or agents of such Receiving Party independently
of and without reference to any information communicated to the Receiving Party
by the Disclosing Party, or (iv) was communicated by the Disclosing Party to an
unaffiliated third party free of any obligation of confidence. A disclosure by
the Receiving Party of Confidential Information of the Disclosing Party, either
(i) in response to a valid order by a court or other governmental body, (ii) in
a filing with the U.S. Securities Exchange Commission (the "SEC") if required by
law, (iii) as otherwise required by law, (iv) to any prospective purchaser of
the shares or substantially all of the assets of the Receiving Party for so long
as such prospective purchaser agrees in writing to be bound by the
confidentiality provisions in this Section 7 ("Confidentiality") or (v) as is
necessary to establish the rights of either party under this Agreement, shall
not be considered to be a breach of this Agreement by
11
the Receiving Party or a waiver of confidentiality for other purposes; provided,
however, the Receiving Party shall provide prompt prior written notice thereof
to the Disclosing Party to enable the Disclosing Party to seek a protective
order or otherwise prevent such disclosure, if applicable.
7.4 OWNERSHIP AND RETURN OF CONFIDENTIAL INFORMATION AND OTHER
MATERIALS. All Confidential Information of the Disclosing Party and any
Derivatives thereof, whether created by the Disclosing Party or the Receiving
Party, shall remain the property of the Disclosing Party, and no license or
other rights to the Disclosing Party's Confidential Information or Derivatives
is granted or implied hereby, except as expressly set forth in this Agreement.
For purposes of this Agreement, "DERIVATIVES" shall mean: (i) for copyrightable
or copyrighted material, any translation, abridgment, revision or other form in
which an existing work may be recast, transformed or adapted; (ii) for
patentable or patented material, any improvement thereon until a patent for such
material is issued, making such information publicly available; and (iii) for
material which is protected by trade secret, any new material derived from such
existing trade secret material, including new material which may be protected
under copyright, patent and/or trade secret laws. All materials (including,
without limitation, documents, drawings, models, apparatus, sketches, designs,
lists and all other tangible media of expression) furnished by the Disclosing
Party to the Receiving Party shall remain the property of the Disclosing Party.
At the Disclosing Party's request and no later than five (5) business days after
such request, the Receiving Party shall promptly destroy or deliver to the
Disclosing Party, at the Disclosing Party's option, (i) all materials furnished
to the Receiving Party, (ii) all tangible media of expression in such Receiving
Party's possession or control to the extent that such tangible media incorporate
any of the Disclosing Party's Confidential Information, and (iii) written
certification of the Receiving Party's compliance with such obligations under
this sentence.
7.5 DISCLOSURE OF THIRD PARTY INFORMATION. Neither party shall
communicate any information to the other in violation of the proprietary rights
of any third party.
8. OSS PROMOTION AND REFERRAL.
8.1 REFERRAL BY DOCUMENT SCIENCES. During the term of this
Agreement and subject to Section 3.2 ("Referral Fee"), Document Sciences shall
use commercially reasonable efforts to promote the sale of OSS's software
development services to Document Sciences' customers; provided that, the type,
extent and nature of such promotion shall be in Document Sciences' sole
discretion. For each sale of OSS services or other products to a Qualified
Referral, OSS shall pay Document Sciences a Referral Fee.
8.2 PROSPECTIVE CUSTOMER NOTICE. Document Sciences shall refer
customers to OSS by providing written notice of such referral (a "REFERRAL
NOTICE"), which notice shall include a reasonable description of the referred
customer and identify a reasonable follow-up contact for such prospective
customer (the "PROSPECTIVE CUSTOMER").
9. AUDIT RIGHTS. During the term of this Agreement and for one (1) year
after termination or expiration of this Agreement, Document Sciences, its
auditors or designated representatives, upon seven (7) days prior written notice
to OSS, shall have the right to conduct
12
operational audits of OSS to confirm OSS's performance and observance of its
obligations under this Agreement, including without limitation, a review of all
documentation and materials related to this Agreement. OSS shall cooperate with
such audits and shall afford all persons involved in such audits reasonable
assistance and access to OSS's facilities and records during normal business
hours. Each party shall bear its own costs for any resources required by such
audits.
10. TERM AND TERMINATION.
10.1 TERM OF AGREEMENT. Unless earlier terminated as provided in
this Agreement, this Agreement shall commence on the Effective Date and shall
terminate two (2) years after the Effective Date.
10.2 TERM OF STATEMENTS OF WORK. Each Statement of Work shall be
effective on the date of execution by the parties and shall continue until the
later of (i) the date the last to be delivered Deliverable is accepted as
provided in this Agreement or (ii) the date on which the last task or obligation
of OSS under the Statement of Work has been performed in full.
10.3 TERMINATION FOR CAUSE.
10.3.1 THE AGREEMENT. If either party is in material
breach of the terms of this Agreement, the non-breaching party may give written
notice of such breach to the breaching party and an opportunity to cure the
breach within thirty (30) days. If such breach is not cured within such thirty
(30) day period, the non-breaching party may immediately terminate this
Agreement by subsequent written notice to the party in breach. Notwithstanding
the foregoing, Document Sciences may terminate this Agreement at any time (i) as
set forth in Sections 2.3 ("Acceptance of Deliverables and Services") or (ii) in
the event that OSS (w) is merged, consolidated, sells all or substantially all
of its assets, or implements or suffers any substantial change in management or
control, (x) becomes insolvent as defined by the State of California, (y)
breaches the provisions of Section 2.6 ("No Conflict with Services") or (z) in
accordance with Section 10.3.1.1 ("Core Development Team").
10.3.1.1 Core Development Team. The failure for
whatever reason of Xxxxxx Xxxxxxxxx to devote at least 80% of his time to the
performance of Services hereunder shall be a material breach of this Agreement
for which Document Sciences may terminate this Agreement at anytime. The failure
of any other member of the Core Development Team (collectively, the "Other
Members" and each, an "Other Member") to devote his efforts on a full-time basis
to the performance of Services hereunder while such Other Member provides his
services to OSS, either as an employee or otherwise, shall also be a material
breach of this Agreement for which Document Sciences may terminate this
Agreement at anytime time. Notwithstanding the foregoing sentence, the failure
of anOther Member of the Core Development Team to devote his efforts on a
full-time basis to the performance of Services hereunder because such Other
Member is no longer employed or otherwise providing his services to OSS shall
not constitute a material breach of this Agreement. In such event, the parties
will in good faith mutually agree upon another developer with similar
qualifications and experience to replace such Other Member on the Core
Development Team.
13
10.3.2 STATEMENTS OF WORK. Subject to Section 2.3
("Acceptance of Deliverables and Services"), if OSS is in material breach of the
terms of a Statement of Work, then Document Sciences may give written notice of
such breach to OSS and an opportunity to cure the breach within thirty (30)
days. If such breach is not cured within such thirty (30) day period, then
Document Sciences may immediately terminate the applicable Statement of Work and
this Agreement by subsequent written notice to OSS; provided, however, that
nothing herein shall require Document Sciences to terminate any other Statement
of Works in effect or this Agreement.
10.3.3 REMEDIES IN THE EVENT OF TERMINATION FOR CAUSE. In
the event a party terminates this Agreement or a Statement of Work pursuant to
this Section 10.3 ("Termination for Cause"), then such party shall, subject to
the terms of this Agreement, be entitled to seek available remedies at law or in
equity, including without limitation damages for unperformed services in a
Statement of Work, if any.
10.4 EFFECT OF TERMINATION.
10.4.1 ENTIRE AGREEMENT. Upon termination or expiration of
this Agreement for any reason (i) all unperformed Statements of Work shall
terminate, (iii) all partially or fully completed Deliverables, Development
Tools and Improvements to Document Sciences Background Technology made by OSS
associated with any terminated Statement of Work shall be delivered to Document
Sciences and (iii) all amounts due by Document Sciences to OSS under this
Agreement shall be due and payable.
10.4.2 STATEMENT OF WORK. Upon termination or expiration
of a Statement of Work all partially or fully completed Deliverables,
Development Tools and Improvements to Document Sciences Background Technology
made by OSS associated with the terminated Statement of Work shall be delivered
to Document Sciences.
10.5 SURVIVAL. The definitions contained in this Agreement and
the rights and obligations contained in the following sections shall survive any
termination or expiration of this Agreement: Section 2.6 ("No Conflict with
Services"), Section 4 ("Proprietary Rights"), Section 5 ("Warranties"), Section
6 ("Indemnification"), Section 7 ("Confidentiality"), Section 9 ("Audit
Rights"), Section 10 ("Term and Termination") and Section 11 ("General
Provisions").
11. GENERAL PROVISIONS.
11.1 NON-SOLICITATION. During the term of this Agreement and
continuing through the first anniversary of the termination or expiration of
this Agreement, each party agrees that it will not, and will ensure that its
affiliates do not hire, solicit or attempt to hire or solicit for employment any
employee of the other party; the foregoing does not prohibit solicitations or
employment resulting from mass media "want ads" not specifically directed
towards employees or consultants of the other party.
11.2 NO THIRD PARTY BENEFICIARIES. Documents Sciences and OSS
agree that, except as otherwise expressly provided in this Agreement, there
shall be no third party beneficiaries to this Agreement, including but not
limited to the insurance providers for either party.
14
11.3 GOVERNING LAW; CHOICE OF LAWS, JURISDICTION; VENUE AND
ATTORNEYS' FEES. In the event of a dispute arising under this Agreement, this
Agreement shall be construed, interpreted, applied, and the rights of the
parties hereunder shall be determined, in accordance with the laws of the State
of California without regard to conflicts of laws rules and excluding the
Convention on Contracts for the International Sale of Goods, and the dispute
shall be subject to the jurisdiction of the federal and state courts of the
State of California as set forth herein. The parties expressly and irrevocably
consent to the exclusive personal jurisdiction and venue of the federal courts
sitting within the County of San Diego, California, unless no federal subject
matter jurisdiction exists, in which case the parties consent to the exclusive
jurisdiction and venue in the Superior Court of San Diego County, California.
The parties expressly waive all defenses of lack of personal jurisdiction and
forum nonconveniens with respect to the federal and state courts sitting within
the County of San Diego, California. The parties also expressly consent to (i)
service of process being effected upon them by registered mail sent to the
addresses set forth in this Agreement and (ii) any final judgment rendered
against a party in any action or proceeding being conclusive as to the subject
of such final judgment and enforceable in other jurisdictions in any manner
provided by law. The prevailing party in any such action, at law or equity,
shall be entitled to reimbursement of its reasonable attorneys' fees, expenses
and costs incurred to pursue or defend such action from the non-prevailing
party.
11.4 SEVERABILITY; WAIVER. In the event any provision of this
Agreement is held by a tribunal of competent jurisdiction to be contrary to the
law, the remaining provisions of this Agreement will remain in full force and
effect. The waiver of any breach or default of this Agreement will not
constitute a waiver of any subsequent breach or default, and will not act to
amend or negate the rights of the waiving party.
11.5 ASSIGNMENT. OSS may not assign its rights or delegate its
duties under this Agreement either in whole or in part without the prior written
consent of Document Sciences, and any attempted assignment or delegation without
such consent will be null and void. Document Sciences may assign this Agreement
in whole or in part. This Agreement will bind and inure to the benefit of each
party's permitted successors and assigns.
11.6 NOTICES. All notices, demands and other communications
provided for or permitted hereunder shall be made in writing and shall be by
registered or certified first-class mail, return receipt requested, telecopier,
courier service or personal delivery:
If to Document Sciences:
Document Sciences Corporation
0000 Xxxxx xxx Xxxx
Xxxxxxxx, XX 00000
Attn: Xxxx X. XxXxxxxx
15
With a copy to:
Xxxxxx, Xxxx & Xxxxxxxx LLP
Jamboree Center
0 Xxxx Xxxxx
Xxxxxx, XX 00000
Attn: Xxxx X. Xxxxxxxx, Esq.
If to OSS:
Objectiva Software Solutions, Inc.
0000 Xxxxx xxx Xxxxx
Xxxxxxxx, XX 00000
Attn: J. Xxxxxxx Xxxxxx
All notices and communications shall be deemed to have been duly given when
delivered by hand, if personally delivered; when delivered by courier, if
delivered by commercial courier service; five (5) business days after being
deposited in the mail, postage prepaid, if mailed; and when receipt is
mechanically acknowledged, if telecopied.
11.7 RELATIONSHIP OF PARTIES. Document Sciences and OSS are
independent contractors and this Agreement will not establish any relationship
of partnership, joint venture, employment, franchise or agency between Document
Sciences and OSS. OSS, its representatives or employees, are not representatives
or agents of Document Sciences for any purpose other than as expressly set forth
in this Agreement, and neither Document Sciences nor OSS will have the power to
act for, bind the other or incur obligations on the other's behalf without the
other's prior written consent. Subject to the terms of this Agreement, Document
Sciences acknowledges that OSS is engaged in, and free to engage, other business
activities.
11.8 NO CONSTRUCTION AGAINST THE DRAFTER. The parties agree that
any principle of construction or rule of law that provides that an agreement
will be construed against the drafter of the agreement in the event of any
inconsistency or ambiguity in such agreement will not apply to the terms and
conditions of this Agreement.
11.9 INTERPRETATION OF CONFLICTING TERMS. In the event of a
conflict between or among the terms in this Agreement and other documents
referred to herein or made a part hereof, the documents shall control in the
following order: the Agreement, any Statement of Work and then any other
document incorporated herein by reference.
11.10 INSURANCE COVERAGE. During the term of this Agreement, OSS
shall procure and maintain commercial general liability insurance coverage of at
least five million dollars ($5,000,000) per occurrence and shall name Document
Sciences as an additional insured under such policy. Additionally, OSS shall
effect a waiver of subrogation clause in its commercial general liability policy
for the benefit of Document Sciences and, upon execution of this Agreement,
shall provide Document Sciences evidence of such waiver and a certificate of
16
insurance evidencing Document Sciences as an additional insured under OSS's
commercial general liability policy.
11.11 REMEDIES. The parties' rights and remedies under this
Agreement are cumulative. OSS acknowledges that in connection with the provision
of Services hereunder OSS will obtain and create valuable trade secrets and
proprietary information of Document Sciences, that any actual or threatened
breach of Section 4 ("Proprietary Rights") or Section 7 ("Confidentiality") will
constitute immediate, irreparable harm to Document Sciences for which monetary
damages will be an inadequate remedy and that injunctive relief might be an
appropriate remedy for such breach and that Document Sciences will not be
required to post a bond with respect to such injunctive relief.
11.12 ENTIRE AGREEMENT; COUNTERPARTS; ORIGINALS. This Agreement,
including all Statements of Work and other documents incorporated herein by
reference, constitutes the complete and exclusive agreement between the parties
with respect to the subject matter hereof, and supersedes and replaces any and
all prior or contemporaneous discussions, negotiations, understandings and
agreements, written and oral, regarding such subject matter. Any additional or
different terms in any response by OSS shall be deemed objected to by Document
Sciences without need of further notice of objection, and shall be of no effect
or in any way binding upon Document Sciences. This Agreement may be executed in
two or more counterparts, each of which will be deemed an original, but all of
which together shall constitute one and the same instrument. Once signed, any
reproduction of this Agreement made by reliable means (e.g., photocopy,
facsimile) is considered an original. This Agreement may be changed only by a
written document signed by the Chief Executive Officer or higher level officer
of Document Sciences and OSS in accordance with this Section 11.11. For purposes
of this Agreement, the term "written" means anything reduced to a tangible form
by a party, including a printed or hand written document, e-mail or other
electronic format.
[SIGNATURE PAGE FOLLOWS]
17
IN WITNESS THEREOF, the parties have executed this agreement as of the
Effective Date written above.
DOCUMENT SCIENCES CORPORATION OBJECTIVA SOFTWARE SOLUTIONS, INC.
By: /s/ Xxxx X. XxXxxxxx By: /s/ J. Xxxxxxx Xxxxxx
------------------------------ --------------------------------
Xxxx X. XxXxxxxx J. Xxxxxxx Xxxxxx
Chief Executive Officer Chief Executive Officer
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EXHIBIT A
STATEMENT OF WORK
SECTION 1: GENERAL SCOPE AND NATURE OF THIS STATEMENT OF WORK:
SECTION 2: OSS'S SPECIFIC RESPONSIBILITIES AND TASKS:
SECTION 3: DELIVERABLES:
SECTION 4: FORM OF DELIVERY OF DELIVERABLES:
SECTION 5: FUNCTIONAL AND TECHNICAL SPECIFICATIONS AND ADDITIONAL
REPRESENTATIONS REGARDING DELIVERABLES:
SECTION 6: ACCEPTANCE TESTING AND ACCEPTANCE CRITERIA:
SECTION 7: SCHEDULE OF PERFORMANCE:
SERVICE OR DELIVERABLE DATE TO BE PROVIDED
---------------------- -------------------
SECTION 8: SCHEDULE AND NATURE OF STATUS REPORTS:
SECTION 9: DEVELOPMENT TOOLS TO BE DEVELOPED, IF ANY,:
SECTION 10: PROJECT MANAGERS:
NOTE: This Statement of Work is governed by the terms of that certain
Development Services and Referral Agreement (the "AGREEMENT") in effect between
Document Sciences and OSS. Any item in this Statement of Work that is
inconsistent with the Agreement is invalid.
IN WITNESS WHEREOF, the parties have executed this Statement of Work as of the
date last written below.
Document Sciences Corporation Objectiva Software Solutions, Inc.
By: ________________________________ By: ___________________________________
Name: ______________________________ Name: _________________________________
Title: _____________________________ Title: ________________________________
Date: ______________________________ Date: _________________________________
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EXHIBIT B
FORM OF PROPRIETARY RIGHTS ASSIGNMENT AGREEMENT
This Proprietary Information and Inventions Agreement (this "Agreement")
is made effective as of January 16, 2002 (Effective Date"), by and between
Document Sciences Corporation, a Delaware corporation ("Document Sciences"), and
_______________________________, an individual ("Contractor").
RECITALS
A. Document Sciences and Objectiva Software Solutions, Inc., a California
corporation ("OSS"), are entering into that certain Development Services and
Referral Agreement, dated as of the date hereof, pursuant to which OSS is
providing software development services to Document Sciences as more fully
described therein (the "Development Agreement").
B. Contractor is an employee of OSS, and, as a condition to Document
Sciences entering into the Development Agreement, the parties hereto shall enter
into this Agreement.
C. Any terms capitalized but not defined in this Agreement shall have the
meaning ascribed to them in the Development Agreement.
NOW THEREFORE, in consideration of the foregoing and the mutual
promises and covenants set forth in this Agreement, and for good and valuable
consideration, the parties agree as follows:
AGREEMENT
1. Intellectual Property Rights.
1.1 Disclosure and Assignments of Innovations.
(a) Innovations; Document Sciences Innovations.
"Innovations" means any software, in source and object code, documentation,
reports, processes, machines, compositions of matter, improvements, inventions
(whether or not protectable under patent laws), works of authorship, information
fixed in any tangible medium of expression (whether or not protectable under
copyright laws), moral rights, mask works, trademarks, service marks, trade
names, trade dress, trade secrets, know-how, ideas (whether or not protectable
under trade secret laws), and all other subject matter protectable under patent,
copyright, moral right, mask work, trademark, trade secret or other laws, and
includes without limitation all new or useful art, combinations, discoveries,
formulae, manufacturing techniques, technical developments, discoveries,
artwork, designs, and all Intellectual Property Rights in any of the foregoing.
"Document Sciences Innovations" are Innovations that Contractor, solely or
jointly with others, conceives, reduces to practice, creates, derives, develops
or makes within the scope of Contractor's services for Document Sciences,
including without limitation, any Deliverable, Development Tool or Improvement
to Document Sciences Background Technology.
20
(b) Disclosure and Ownership of Document Sciences
Innovations. Contractor agrees to make and maintain technical and business
records, plans, drawings, files, studies, prototypes, cost and tooling
schematics during the course of providing the services hereunder sufficient to
enable Document Sciences, or its designee, to reproduce any Document Sciences
Innovation, which such technical and business records, plans, drawings, files,
studies, prototypes, cost and tooling schematics shall be and remain the
property of Document Sciences. Additionally, Contractor shall take all
reasonable and customary precautions, including without limitation, at least
daily backup of computer files related to any Document Sciences Innovations and
daily off-site storage of such computer files, to prevent the loss or alteration
of such computer files. Contractor agrees to promptly disclose to Document
Sciences every Document Sciences Innovation made by Contractor. Document
Sciences shall be the sole and exclusive owner of all right, title and interest
in and to any and all Document Sciences Innovations and all associated
Intellectual Property Rights therein. Contractor hereby does and will assign to
Document Sciences, or Document Sciences' designee, Contractor's entire worldwide
right, title and interest in and to any and all Document Sciences Innovations
and all associated records and Intellectual Property Rights in any of the
foregoing. Additionally, Contractor hereby waives all moral or similar rights in
any and all Document Sciences Innovations and all Intellectual Property Rights
in any of the foregoing.
(c) Assistance. Contractor agrees to execute upon
Document Sciences' request a signed transfer of Document Sciences Innovations to
Document Sciences in the form provided by Document Sciences for each Document
Sciences Innovation. Contractor agrees to assist Document Sciences in any
reasonable manner to obtain, perfect and enforce, for Document Sciences'
benefit, Document Sciences' rights, title and interest in any and all countries,
in and to all patents, copyrights, moral rights, mask works, trademarks, service
marks, trade secrets, and other Intellectual Property Rights in each of the
Document Sciences Innovations. Contractor agrees to execute, upon Document
Sciences' request, for each Document Sciences Innovation (including derivative
works, improvements, renewals, extensions, continuations, divisionals,
continuations in part, or continuing patent applications for any Document
Sciences Innovations), (i) patent, copyright, trademark, service xxxx, mask work
or similar applications related to such Document Sciences Innovations, (ii)
documentation (including without limitation assignments) to permit Document
Sciences to obtain, perfect and enforce Document Sciences' right, title and
interest in and to such Document Sciences Innovations, and (iii) any other
lawful documents deemed necessary by Document Sciences to carry out the purpose
of this Agreement. If called upon to render assistance under this Paragraph,
Contractor will be entitled to a fair and reasonable fee in addition to
reimbursement of authorized expenses incurred at the prior written request of
Document Sciences. In the event that Document Sciences is unable for any reason
to secure Contractor's signature to any document Contractor is required to
execute under this Paragraph 1.1(c) ("Assistance"), Contractor hereby
irrevocably designates and appoints Document Sciences and Document Sciences'
duly authorized officers and agents as Contractor's agents and attorneys-in-fact
to act for and on Contractor's behalf and instead of Contractor, to execute such
document with the same legal force and effect as if executed by Contractor.
21
(d) Out-of-Scope Innovations. In the event any
Innovation that is conceived, reduced to practice, created, derived, developed
or made by Contractor either outside of the scope of Contractor's services for
Document Sciences or before the Effective Date and (i) is included within or
embodied in a Document Sciences Innovation, (ii) is necessary to exploit a
Document Sciences Innovation, or (iii) relates at the time of conception or
reduction to practice of such Innovation to Document Sciences' business or
demonstrably anticipated research into or development of any Document Sciences
Innovation (collectively, the "Out-of-Scope-Innovations"), then Contractor
hereby grants to Document Sciences, or Document Sciences' designee, a
non-exclusive, worldwide, royalty-free, fully-paid up, perpetual, irrevocable,
transferable license (with the right to sublicense through multiple tiers of
distribution) to use, reproduce, modify, distribute, publicly display, make,
have made, sell, have sold, offer for sale, or otherwise commercially exploit,
such Out-of-Scope-Innovation and practice all applicable patent, copyright,
moral right, trademark, service xxxx, mask work, trade secret and other
Intellectual Property Rights relating to such Out-of Scope-Innovation.
Contractor agrees that Contractor will not incorporate, or permit to be
incorporated, any Out-of-Scope-Innovations or Innovations conceived, reduced to
practice, created, derived, developed or made by others into any of the Document
Sciences Innovations without Document Sciences' prior written consent.
1.2 Confidential Information.
(a) Definition of Confidential Information.
"Confidential Information" as used in this Agreement shall mean any and all
technical and non-technical information including patent, copyright, trade
secret, and proprietary information, techniques, sketches, drawings, models,
inventions, know-how, processes, apparatus, equipment, algorithms, software
programs, software source documents, and formulae related to the current, future
and proposed products and services of Document Sciences, Document Sciences'
suppliers and customers, and includes, without limitation, Document Sciences
Innovations and Document Sciences' information concerning research, experimental
work, development, design details and specifications, engineering, financial
information, procurement requirements, purchasing manufacturing, customer lists,
business forecasts, sales and merchandising and marketing plans and information.
(b) Nondisclosure and Nonuse Obligations. Except as
permitted in this Paragraph, Contractor shall neither use nor disclose the
Confidential Information. Contractor may use the Confidential Information solely
to perform services for the benefit of Document Sciences pursuant to the
Development Agreement. Contractor agrees that Contractor shall treat all
Confidential Information of Document Sciences with the same degree of care as
Contractor accords to Contractor's own Confidential Information, but in no case
less than reasonable care. Contractor agrees not to communicate any information
to Document Sciences in violation of the proprietary rights of any third party.
Contractor will immediately give notice to Document Sciences of any unauthorized
use or disclosure of the Confidential Information. Contractor agrees to assist
Document Sciences in remedying any such unauthorized use or disclosure of the
Confidential Information.
22
(c) Exclusions from Nondisclosure and Nonuse
Obligations. Contractor's obligations under Paragraph 1.2(b) ("Nondisclosure and
Nonuse Obligations") with respect to any portion of the Confidential Information
shall not apply to any such portion which Contractor can demonstrate, (a) was in
the public domain at or subsequent to the time such portion was communicated to
Contractor by Document Sciences through no fault of Contractor; (b) was
rightfully in Contractor's possession free of any obligation of confidence at or
subsequent to the time such portion was communicated to Contractor by Document
Sciences; or (c) was developed by Contractor independently of and without
reference to any information communicated to Contractor by Document Sciences. A
disclosure of Confidential Information by Contractor, either (a) in response to
a valid order by a court or other government body, (b) otherwise required by
law, or (c) necessary to establish the rights of either party under this
Agreement, shall not be considered to be breach of this Agreement or a waiver of
confidentiality for other purposes; provided, however, that the Contractor shall
provide prompt prior written notice thereof to Document Sciences to enable
Document Sciences to seek a protective order to otherwise prevent such
disclosure.
(d) Ownership and Return of Document Sciences Property.
All Confidential Information and any Derivatives thereof is and shall remain the
sole and exclusive property of Document Sciences, and no license or other rights
to the Confidential Information or Derivatives is granted or implied hereby,
except as expressly set forth in this Agreement or the Development Agreement.
Contractor hereby does and will assign to Document Sciences all rights, title
and interest Contractor may have or acquire in the Confidential Information and
any Derivatives thereof. At Document Sciences' request and no later than five
(5) business days after such request, Contractor shall promptly destroy or
deliver to the Document Sciences, at the Document Sciences' option, (i) all
Confidential Information and other materials furnished to Contractor by Document
Sciences, (ii) all tangible media of expression in Contractor's possession or
control to the extent that such tangible media incorporate any of the
Confidential Information, and (iii) written certification of Contractor's
compliance with such obligations under this sentence.
2. Survival. The rights and obligations contained within this
Proprietary Information and Inventions Agreement will survive any termination of
Contractor's services for Document Sciences.
3. Successors and Assigns. Contractor may not subcontract or
otherwise delegate Contractor's obligations under this Agreement without
Document Sciences' prior written consent and any purported delegation in
violation of this Paragraph shall be null and void. Subject to the foregoing,
this Agreement will be for the benefit of Document Sciences' successors and
assigns, and will be binding on Contractor's assignees.
4. Notice. Any notice given under this Agreement shall be delivered
personally or be written or telephonic. Written notice shall be sent via
next-day delivery or facsimile and by registered or certified mail, postage
prepaid, return receipt requested. Any telephonic notice must be followed within
three (3) days by written notice. All notices shall be effective when first
received at the following address except that any notice of change of address
will be deemed effective only upon receipt by the party to whom it is directed.
If notice is to be given to
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Document Sciences, it shall be sent to the address set forth in the Development
Agreement. If notice is given to Contractor, it shall be sent to the address
specified at the end of this Agreement.
5. Governing Law; Venue; Attorney Fees. In the event of a dispute
arising under this Agreement, this Agreement shall be construed, interpreted,
applied, and the rights of the parties hereunder shall be determined, in
accordance with the laws of the State of California without regard to conflicts
of laws rules and excluding the Convention on Contracts for the International
Sale of Goods, and the dispute shall be subject to the jurisdiction of the
federal and state courts of the State of California as set forth herein. The
parties expressly and irrevocably consent to the exclusive personal jurisdiction
and venue of the federal courts sitting within the County of San Diego,
California, unless no federal subject matter jurisdiction exists, in which case
the parties consent to the exclusive jurisdiction and venue in the Superior
Court of San Diego County, California. The parties expressly waive all defenses
of lack of personal jurisdiction and forum nonconveniens with respect to the
federal and state courts sitting within the County of San Diego, California. The
parties also expressly consent to (i) service of process being effected upon
them by registered mail sent to the addresses set forth in this Agreement and
(ii) any final judgment rendered against a party in any action or proceeding
being conclusive as to the subject of such final judgment and enforceable in
other jurisdictions in any manner provided by law. The prevailing party in any
such action, at law or equity, shall be entitled to reimbursement of its
reasonable attorneys' fees, expenses and costs incurred to pursue or defend such
action from the non-prevailing party.
6. Severability. In the event any one or more of the provisions of
this Agreement are unenforceable, the remainder of this Agreement will be
unimpaired. Any unenforceable provision will be replaced by a mutually
acceptable provision that comes closest to the intention of the parties at the
time the original provision was agreed upon.
7. Remedies. The parties' rights and remedies under this Agreement
are cumulative. Contractor acknowledges that in connection with the provision of
services to Document Sciences Contractor will obtain and create valuable trade
secrets and proprietary information of Document Sciences, that any actual or
threatened breach of Paragraph 1 ("Intellectual Property Rights") will
constitute immediate, irreparable harm to Document Sciences for which monetary
damages will be an inadequate remedy and that injunctive relief might be an
appropriate remedy for such breach and that Document Sciences will not be
required to post a bond with respect to such injunctive relief.
8. Waiver; Amendment; Modification. No term or provision hereof will
be considered waived by Document Sciences, and no breach excused by Document
Sciences, unless such waiver or consent is in writing signed by Document
Sciences. The waiver by Document Sciences o, or consent by Document Sciences to,
a breach of any provision of this Agreement by Contractor, shall not operate or
be construed as a waiver of, consent to, or excuse of any other or subsequent
breach by Contractor. This Agreement may be amended or modified only by mutual
written agreement of authorized representatives of the parties in writing.
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9. Entire Agreement. This Agreement constitutes the entire agreement
between the parties relating to this subject matter and superseded all prior or
contemporaneous oral or written agreements concerning such subject matter.
DOCUMENT SCIENCES CORPORATION CONTRACTOR:
By:_______________________________ By: ___________________________________
Xxxx X. XxXxxxxx Print Name:____________________________
Chief Executive Officer
Address:_______________________________
_______________________________________
_______________________________________
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EXHIBIT C
NO CONFLICT OF SERVICES
Deliverables and Services:
Document automation software applications that:
- produce a personalized object (document, web page, email, etc.)
by combining data with objects and business rules,
- deliver personalized objects produced through a batch or
interactive process,
- transform personalized content into an output page definition
such as Postscript, PDF, AFP, HTML or XML, or
- include a composition capability.
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