LICENSE AGREEMENT
BETWEEN
SERVICE SYSTEMS DEVELOPMENT LIMITED PARTNERSHIP
AND
NEWGEN RESULTS CORPORATION
MADE AS OF
OCTOBER 11, 1995
LICENSE AGREEMENT
THIS LICENSE AGREEMENT made as of the 11th day of October, 1995;
B E T W E E N:
SERVICE SYSTEMS DEVELOPMENT LIMITED PARTNERSHIP, a
limited partnership formed under the laws of the
Province of Ontario (hereinafter collectively called
the "Partnership"),
-and-
NEWGEN RESULTS CORPORATION, a corporation formed
under the laws of the State of California
(hereinafter called "Newgen"),
WHEREAS the Partnership owns certain computer-based programs which
address various functions within the service and parts departments of
automobile dealership;
AND WHEREAS the Partnership wishes to grant to Newgen a licence to
Enhance and use the said programs to provide Service Bureau Services subject
to and in accordance with the provisions of this Agreement.
NOW THEREFORE THIS AGREEMENT WITNESSES in consideration of the
mutual covenants and agreements contained in this Agreement, the parties
agree as follows:
ARTICLE 1 - INTERPRETATION
1.1 DEFINITIONS
Whenever used in this Agreement, unless the context otherwise
requires, the following terms shall have the respective meanings set out
below:
(a) "AFFILIATES" means The Xxxxxxx and an affiliate or associate (as
such terms are defined in the CANADA BUSINESS CORPORATIONS ACT,
R.S.C. 1985, c. C-44, as amended [the "CBCA"] of Newgen or The
Xxxxxxx; provided that an affiliate or associate of The Xxxxxxx
shall remain an Affiliate hereunder only so long as such Person
remains an affiliate or associate (as such terms are defined in the
CBCA) of The Xxxxxxx;
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(b) "AGREEMENT" means this licence agreement and all instruments
supplemental to or addition or confirmation of this agreement which
are executed by both parties;
(c) "COMPONENTS" means the following computer-based programs of the
Partnership which address various functions within the service
departments of automobiles dealerships namely "Service Rental Car
Management", "After Visit Follow-up", "Customer Management",
"Service Advisor Appointment Scheduling", "Repair Order and
Work-in-Process Control", "Labour Invoicing", "Technician
Productivity Management", "Technician Payroll", "Service Sales
Analysis", "Customer Problem Analysis", "VIP Service Management",
"Labour Time Guidelines", "Detailed Service History" and
"Telemarketing/Repair Order Writing", collectively and all
associated source and object codes, and technical, system and user
documentation related thereto, but the term "Components" does not
include any Existing Enhancements or Newgen Enhancements;
(d) "EFFECTIVE DATE" means October 11, 1995;
(e) "ENHANCEMENTS" means in relation to any computer programs and
related technical system and user documentation, updates, upgrades,
modifications, enhancements, improvements, revisions, adaptations,
derivative works, by-passes, corrections, new versions, new
releases, translations and customizations of such materials;
(f) "EXISTING ENHANCEMENTS" means all Enhancements made to the
Components by Newgen Dealer Services or any Affiliate as same
exists as of the Effective Date;
(g) "INTELLECTUAL PROPERTY RIGHTS" means all intellectual and industrial
property rights and includes rights to (i) inventions and patents
for inventions, including re-issue thereof and continuation and
continuations in part, (ii) copyrights, (iii) designs and
industrial designs, (iv) trade-marks (v) know-how, trade secrets
and confidential information, and (vi) other proprietary rights;
(h) "LICENSED COMPONENTS" means the Components and Existing Enhancements;
(i) "NEWGEN DEALER SERVICES" means Newgen Dealer Services (1992) Inc., a
corporation incorporated under the CBCA and which corporation
amalgamated with 173403 Canada Ltd.;
(j) "NEWGEN ENHANCEMENTS" means Enhancements made to the Licensed
Components by Newgen or any Affiliate after the Effective Date of
this Agreement, but the term "Newgen Enhancements" does not include
the Components;
(k) "NEWGEN SERVICES" means Newgen Services Inc., a corporation
incorporated under the laws of the State of California;
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(l) "PERSON" includes any entity included, without limitation, an
individual, a trust, partnership, firm, association, unincorporated
organization, corporation or governmental body;
(m) "SALES AND MAINTENANCE AGREEMENT" means the sales and
maintenance agreement between the Partnership and Newgen Dealer
Services made the first day of August, 1991, as amended by the
Sales and Maintenance Amending Agreement made the ninth day of
October, 1991, and the Consent Agreement made the ninth day of
November, 1995;
(n) "SALES AND MAINTENANCE SUB-LICENSE AGREEMENT" means the sales and
maintenance sub-license agreement between the Partnership, Newgen
Dealer Services and Newgen Services made the ninth day of October,
1991;
(o) "SERVICE BUREAU SERVICES" means the use of computer software to
provide computer based services for a third Person such as without
limitation, data processing services, shared processing services,
facilities management services, outsourcing services and remote
access services; and
(p) "THE XXXXXXX" means individually and collectively Xxxxxxx Xxxxxxx
Xxxxxxx Xxxxxx, Xxxx Xxxxxx Xxxxxx, Xxxxxx Xxxxxx, X.X. Xxxxxx and
Xxx Xxxxxx.
1.2 HEADINGS
The division of this Agreement into Articles and Sections and the
insertion of headings are for convenience of reference only and shall not
affect the construction or interpretation of this Agreement. The terms "this
Agreement", "hereof", "hereunder" and similar expressions refer to this
Agreement and not to any particular Article or Section or other portion hereof
and include any agreement supplemental hereto. Unless something in the subject
matter or context is inconsistent therewith, references herein to Articles or
Sections are to Articles or Sections of this Agreement.
1.3 EXTENDED MEANINGS
In this Agreement words importing the singular number only shall
include the plural and VICE VERSA. The terms "provision" and "provisions"
refer to terms, conditions, provisions, covenants, obligations, undertakings,
warranties and representations in this Agreement.
ARTICLE 2 - GRANT OF RIGHTS AND OWNERSHIP
2.1 GRANT OF RIGHTS
Subject to the provisions of this Agreement including the
Partnership's right to terminate this Agreement pursuant to Section 6.2, the
Partnership hereby grants to Newgen, and Newgen hereby accepts from the
Partnership, a non-exclusive, perpetual and irrevocable license
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to (i) develop Enhancements to the Licensed Components, (ii) provide Service
Bureau Services using the Licensed Components and Enhancements, (iii)
reproduce, transmit electronically, and provide electronic access to and
copies or partial copies of the Licensed Components to third Persons in
relation to the foregoing, and (iv) sub-license the aforesaid rights to
Affiliates and other Persons. In the event Newgen grants a sub-license
hereunder to a third Person to exercise its license rights hereunder, it will
obtain from such person an agreement to maintain the Licensed Components in
confidence as required by Section 2.3.
2.2 OWNERSHIP OF COPYRIGHT
(a) Newgen acknowledges that the Partnership is the owner of all right,
title and interest and all Intellectual Property Rights in the Licensed
Components (including the Existing Enhancements).
(b) The parties agree that Newgen shall be the owner of all right, title
and interest and all Intellectual Property Rights in the Newgen Enhancements
and Newgen will have the sole and exclusive worldwide right to do and to
authorize others to do any or all of the acts which are conferred upon the
owner of a copyright, including the sole and exclusive worldwide right to
reproduce, distribute copies, develop Enhancements and otherwise commercially
exploit the Newgen Enhancements without the consent of the Partnership;
provided, however, that nothing herein shall confer upon Newgen any right to
commercially exploit the Licensed Components except as expressly provided
herein.
2.3 CONFIDENTIALITY
Newgen agrees to maintain the confidentiality of the source codes
to the Licensed Components, and not to release, disclose, divulge or permit
access to same by any third party, other than to Newgen or its Affiliates
and their employees, agents and contractors on a "need to know" basis.
Newgen shall require any of its Affiliates and their agents and contractors
who have access to any such source codes to maintain them in confidence.
Newgen shall take at least the same steps to prevent disclosure and
unauthorized use of the source codes as it takes with respect to its own
confidential information. Notwithstanding the foregoing, the obligations of
Newgen as set forth herein shall not apply in any respect to Licensed
Components or any other information, materials or works of authorship of the
Partnership (the "Information") which (i) are or become publicly known or
readily ascertainable by the public, through no wrongful act of Newgen, (ii)
are received by Newgen from a third Person without breaching an obligation to
the Partnership, (iii) are independently developed by or for Newgen, or (iv)
are disclosed to a third Person by the Partnership without similar
restrictions and obligations of confidentiality and non-disclosure.
2.4 CONSENT
The Partnership hereby consents to Newgen Dealer Services providing
Newgen with copies of the Licensed Components as the same exists as of the
Effective Date. This software (including related technical, system and user
documentation) shall be deemed for all purposes herein to constitute the
Licensed Components.
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ARTICLE 3 - LICENSE FEES
3.1 LICENSE FEES
Newgen agrees to pay to the Partnership a one time license fee in
the sum of one hundred and ten thousand dollars ($110,000). This sum shall be
payable as follows:
(a) $50,000 upon execution of this Agreement by both parties; and
(b) the balance of $60,000 in equal monthly installments of $3,333.33 per
month for eighteen consecutive months commencing with the first
monthly payment which shall be due on the first day of January, 1996
and paid upon execution of this Agreement by the parties.
3.2 SERVICE BUREAU SERVICES
Except as provided in Section 3.1, there is no obligation hereunder
to make any payment to the Partnership where Newgen or any Affiliate of
Newgen or any other Person provides any Service Bureau Service using the
Licensed Components or Newgen Enhancements.
3.3 OVERDUE AMOUNTS
All past due amount shall bear interest at an annual rate equal to
the lessor of twelve percent (12%) per annum and the Prime Rate plus two
percent (2%). For the purposes of this Section, "Prime Rate" means the rate
of interest per annum, established from time to time by the Bank of Montreal
as the reference rate of interest for the determination of interest rates
that such bank will charge to customers of varying degrees of credit worthiness
in Canada for Canadian dollar demand loans at Xxxxxxx, Xxxxxxx.
3.4 TAXES AND DUTIES
Newgen is responsible for and shall pay all income, sales, goods
and services or other taxes, duties, fees and other similar charges levied,
assessed or imposed upon or with respect to the performance by Newgen of its
obligations under this Agreement, but excluding any taxes on the income of
the Partnership.
ARTICLE 4 - WARRANTIES
4.1 WARRANTY AND LIABILITY DISCLAIMER
EXCEPT AS PROVIDED HEREIN, NEITHER PARTY MAKES ANY REPRESENTATIONS
OR WARRANTIES OF ANY KIND TO THE OTHER. WITHOUT LIMITING THE GENERALITY OF
THE FOREGOING, EXCEPT AS PROVIDED HEREIN, THE PARTNERSHIP MAKES NO
REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE LICENSED COMPONENTS
OR THEIR USE, FUNCTION OR OWNERSHIP AND SHALL NOT BE LIABLE IN ANY MANNER FOR
ANY
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REPRESENTATION OR WARRANTY OR CONDITION OF ANY KIND, WHETHER EXPRESSED OR
IMPLIED OR COLLATERAL, OR WHETHER ARISING BY OPERATION OF LAW OR OTHERWISE,
INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABLE QUALITY OR
FITNESS FOR A PARTICULAR PURPOSE OR THAT THE LICENSED COMPONENTS WILL BE
ERROR FREE. THE PARTIES ALSO AGREE THAT NEITHER WILL HAVE ANY LIABILITY TO
THE OTHER FOR DIRECT, INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES,
HOWEVER CAUSED, EVEN IF THE OTHER HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES, EXCEPT FOR DAMAGES RESULTING FROM A FAILURE TO PAY UNDER SECTION 3.1.
4.2 WARRANTY
The Partnership represents and warrants to Newgen that to the best
of its knowledge: (i) it is the owner of all right, title and interest and
all Intellectual Property Rights in the Licensed Components, (ii) it has the
right to grant the rights set out in Article 2 and to enter into this
Agreement, (iii) it has not granted any other Person any rights inconsistent
with the rights granted herein, and (iv) to the best of its knowledge, without
enquiry, the Licensed Components do not infringe or violate any United States
or Canadian Intellectual Property Right or moral right of any third Person.
ARTICLE 5 - RELATIONSHIP
5.1 RELATIONSHIP OF PARTIES
The relationship of the Partnership and Newgen shall at all times
be and remain that of independent contractors. Newgen shall not represent
itself to be the agent, joint venturer, partner or employee of the
Partnership, or to be related to the Partnership.
ARTICLE 6 - TERM
6.1 TERM
This Agreement shall come into force on the Effective Date and
shall remain in full force and effect in each geographic region of the world
for a period which is the greater of fifty (50) years, and the date upon
which the copyright and all other Intellectual Property Rights in the
Licensed Components shall expire in such geographic region of the world.
6.2 TERMINATION
This Agreement may only be terminated in accordance with the
following provisions:
(a) at such time and on such conditions as the parties agree; or
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(b) if Newgen shall at any time fail to make any of the payments due to
the Partnership under Section 3.1, then the Partnership may serve
upon Newgen a notice of intention to terminate this Agreement which
notice shall specify such default; and if, within thirty (30) days
after the date of receipt of such notice, Newgen shall not have
cured all of the payment defaults indicated in such notice or
present a plan acceptable to the Partnership for curing of such
default, then, upon expiration of such thirty (30) day period, the
Partnership may, at its option, terminate this Agreement effective
immediately upon notice in writing to Newgen.
6.3 OBLIGATIONS ON TERMINATION
Unless otherwise agreed to by the parties upon the termination of
this Agreement pursuant to section 6.2, Newgen shall cease to be a licensee
of the Partnership hereunder and shall promptly: (i) return to the
Partnership, or certify the destruction of, all copies of Licensed Components
provided to it hereunder and in its possession or control; and (ii) cease to
provide Service Bureau Services using the Licensed Components.
6.4 SURVIVAL
All obligations of the parties which expressly or by their nature
survive the termination of this Agreement (including, without limitation,
the provisions of Sections 2.2, 2.3, 6.4, 7.6 and 7.8) shall continue in full
force and effect subsequent to and notwithstanding such termination and until
they are satisfied or by their nature expire.
ARTICLE 7 - GENERAL
7.1 JURISDICTION
This Agreement shall be governed by and interpreted in accordance
with the laws of the Province of Ontario and the applicable laws of Canada.
7.2 ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties
pertaining to the subject matter of this Agreement and supersedes all prior
agreements, understandings, negotiations and discussions, whether oral or
written, of the parties relating to such subject matter, and there are no
warranties, representations or other agreements between the parties or any
Affiliates of the parties in connection with such subject matter except as
specifically set forth in this Agreement. No supplement, modification or
waiver of this Agreement shall be binding unless executed in writing by the
party to be bound thereby.
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7.3 SEVERANCE
If any provision of this Agreement is declared invalid or
unenforceable such provision shall be severed from this Agreement and the
other provisions shall remain in full force and effect.
7.4 WAIVER OF AGREEMENT
A term or condition of this Agreement can be waived or modified only
by written consent of both parties. Forbearance or indulgence by either party
in any regard shall not constitute a waiver of the term or condition to be
performed, and either party may invoke any remedy available under this
Agreement or by law despite such forbearance or indulgence.
7.5 CURRENCY
All dollar amounts referred to in this Agreement are in Canadian
funds unless otherwise provided.
7.6 NOTICES
Any communication under this Agreement shall be in writing and
delivered personally or sent by registered mail, postage prepaid, or
transmitted by telecopier or other form of recorded communication tested
prior to transmission, addressed as follows:
If to the Partnership, at:
Service Systems Development Limited Partnership
00 Xxxx Xxxxxx Xxxxx Xxxx
Xxxx 00
Xxxxxxxx Xxxx, Xxxxxxx
X0X 0X0
ATTENTION: Xxxxx Xxxxx
Facsimile No.: (000) 000-0000
If to Newgen, at:
Newgen Results Corporation
00000 Xxxx Xxxxx Xxxxx
Xxxxx 000
Xxx Xxxxx, XX 00000
U.S.A.
ATTENTION: Xxxxxxx X. Xxxxxx
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Facsimile No.: (000) 000-0000
Any communication so given shall be deemed to have been received on
the date on which it was delivered or transmitted by telecopier or other form
of recorded communication, or on the fifth (5th) day following the mailing of
such communication. Either party may change its address for purposes of
receipt of any such communication by giving notice of such change to the
other party in the manner prescribed above. In the event of actual or
threatened disruption of postal service, communications shall not be given by
mail.
7.7 ASSIGNMENT
Either party may assign or transfer this Agreement without the prior
written consent of the other upon the assignee or transferee, as the case
may be, undertaking to the other party to be bound by this Agreement to the
same extent as the assigning or transferring party is bound hereto, but any
such assignment or transfer shall not relieve the assigning or transferring
party of any of its duties or responsibilities hereunder and the assigning or
transferring party shall undertake in writing to indemnify and hold the other
party harmless against any breach by the assignee or transferee of any of
the provisions of this Agreement. This Agreement shall enure to the benefit
of and be binding upon the respective successors and assigns of the parties
hereto.
7.8 FURTHER ASSURANCES
The parties agree to cooperate with and assist each other and take
such action as may be reasonably necessary to implement and carry into
effect this Agreement to its full extent.
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IN WITNESS WHEREOF the parties have executed this Agreement as of the
Effective Date.
SERVICE SYSTEMS DEVELOPMENT
LIMITED PARTNERSHIP, by its general
partner, SSD Service Systems Development
Limited
By: /s/ c/s
---------------------------------
(Authorized Signatory)
NEWGEN RESULTS CORPORATION
By: /s/ Xxx Xxxxxx c/s
---------------------------------
(Authorized Signatory)
