****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Confidential treatment has been requested for portions of this exhibit. The copy
filed herewith omits the information subject to the confidentiality request.
Omissions are designated as ****. A complete version of this exhibit has been
filed separately with the Securities and Exchange Commission.
SOFTWARE LICENSE AGREEMENT
BETWEEN
PHOENIX TECHNOLOGIES LTD.
AND
UNICORE ACQUISITION CORP.
This Software License Agreement ("Agreement") is by and between Phoenix
Technologies Ltd., a Delaware corporation, having its principal place of
business at 000 Xxxx Xxxxxxxx Xxxxx, Xxx Xxxx, XX 00000 ("Phoenix"), through its
subsidiary Award Software International, Inc ("Award") and Unicore Acquisition
Corp., a Massachusetts corporation having its principal place of business at
0000 Xxxxxxxx Xx., X. Xxxxxxx, XX 00000 ("Licensee"). Award and Licensee are
sometimes hereinafter referred to jointly as "the Parties", or singularly as "a
Party", and this Agreement is by and between Phoenix and Licensee.
WHEREAS, Phoenix and Licensee have entered into an Asset Purchase Agreement
("Purchase Agreement") by which Licensee is purchasing certain assets, and
taking on certain liabilities, as defined in the Purchase Agreement, of Unicore
Software, Inc. ("Unicore") that are currently held by Phoenix as a result of the
merger between Award, the parent company of Unicore, and Phoenix;
WHEREAS, as part of the Purchase Agreement, Phoenix has agreed to license
certain Award software products to Licensee, under the terms and conditions set
forth herein, for the purpose of developing Enhancements, as defined herein, in
support of End Users of Award Software; and
WHEREAS, as part of the Purchase Agreement, Licensee has agreed to grant
back to Award certain licenses to those software products in which title will
be transferred to Licensee as part of the Purchase Agreement, as well as for
those software upgrades developed by Licensee under this Software License
Agreement.
NOW THEREFORE, the Parties agree to grant each other the following
licenses, contingent upon the execution of the Purchase Agreement by the
Parties, and performance of all obligations by the Parties under the Purchase
Agreement, including the payment by Licensee to Phoenix of the Purchase Price
referenced therein, and subject to the terms and conditions set forth herein.
1.0 DEFINITIONS
1.1 "Defect" will mean any mistake, problem, or error which is capable of: (a)
reproduction by Phoenix, with respect to the Award Software; or (b) reproduction
by Unicore with respect to the Unicore Software, and which causes: (i) an
incorrect functioning or non-functioning of the Award or Unicore Software, or
(ii) renders the Award or Unicore Software inoperable, or (iii) causes the Award
or Unicore Software to fail to meet the Specifications thereof.
1.2 "Derivative Work" means computer software, which is a Modification that is
based on, or incorporating material from, an Enhancement or the Unicore
Software, so that the Modification, as a whole, represents an original work of
authorship.
1.3 "Enhancement" means any standard revision, Defect correction, Upgrade,
update or maintenance release of Award Software, developed by Licensee,
including requests by End Users for additional functionality or feature sets to
the Award Software.
1.4 "Upgrade" means any change in the Award Software to accommodate new and/or
additional peripheral devices
1.5 "Modification" means a revision, augmentation, abridgment, upgrade,
addition, adaptation, or other modification to an Enhancement or Unicore
Software.
1.6 "End User(s)" mean the end users of a PC that incorporates the Award
Software, or utilizes the Award Software as a replacement BIOS.
1.7 "Award Software" means the Award BIOS and Mr. BIOS software products
licensed hereunder, in Source Code format, and delivered to Licensee, and all
Award patent, copyright, trade secret and other intellectual property rights
embodied therein, including all revisions and Updates as provided in the SCAP
Appendix 2 attached hereto, and incorporated herein.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
1.8 "Unicore Software" means the Postcard/TM/, PC Diag/TM/, Quick Disk/TM/, and
Millenium/Pro/TM/ hardware products, and their associated software products in
Source Code format, and all enhancements, upgrades, revisions, corrections and
modifications thereto developed by or for Licensee for a period of one (1) year
from execution of this Agreement; as well as all patent, copyright, trade secret
and other intellectual property rights embodied therein, the title to which will
be transferred to Licensee under the Purchase Agreement.
1.9 "Source Code" means software which is coded in human readable form, and
related system level documentation, including comments and procedural code.
1.11 "Specifications" mean the descriptions, and the functional and operational
performance specified in the documentation for the Award or Unicore Software and
Enhancements licensed hereunder.
2.0 GRANT OF LICENSE.
2.1 To Licensee: For the Initial Term of this Agreement, and all Extensions to
the Initial Term pursuant to Section 11.1, Phoenix grants to Licensee, a
personal, non-transferable, ***** (except as provided in Section 12.5), royalty
bearing license to: (i) use the Award Software to develop new Enhancements, and
to use existing Enhancements previously developed by Licensee, solely for the
purpose of supporting End Users, and for no other purpose; (ii) to license
Enhancements and existing Enhancements to *****; *****; and (iii) to license,
pursuant to Section 2.1.1, the existing Enhancements and new Enhancements to End
Users, and for no other purpose. Licensee understands and agrees that the nature
and intent of the licenses granted hereunder is restricted to End Users, and is
not to be interpreted or construed to include *****. Licensee agrees that in any
agreement that Licensee enters with End Users for Enhancements that Licensee
will ensure that: (a) the End User(s) receive the Enhancement in an object code
format only; (b) the End User agrees that the Enhancements will be subject to
terms and conditions that protect the intellectual property content of the
Enhancement from unauthorized use or disclosure, including reverse engineering
of the Enhancement to determine its operation; and (c) that any agreement
between Licensee and End Users for the supply of Enhancements specifically holds
Phoenix and Award harmless from any liability resulting from the End User(s) use
of said Enhancements. Licensee agrees it will hold Phoenix and Award harmless
from any liability resulting from the use of said Enhancements by said End Users
or third parties; provided, however, that the Enhancements as developed by
Licensee, and not the unmodified Award Software, as licensed hereunder for use
by Licensee, are the basis for such liability. Unless specifically authorized by
Phoenix in writing, each copy of Award Software is provided for use on a single
central processing unit. Licensee will embed the copyright notices included with
the Award Software on any Enhancement so that such notice is displayed on the
post screen or sign-on message of the End User when possible. Licensee will not
alter or remove, nor permit any third party to alter or remove, such copyright
notices.
2.1.1 Licensee shall have an exclusive appointment to distribute Enhancements,
pursuant to Section 2.1(ii) and 2.1(iii) above, for *****, provided that the
Enhancements meet all material aspects of the Specifications, and Phoenix's
quality standards, as set forth in Appendix A, attached hereto and made part of
this Software License Agreement. If Licensee's Enhancements fail to meet all
material aspects of the Specifications, or the standards set forth in Appendix
A, Phoenix shall notify Licensee of the failure, wherein Licensee shall use its
best efforts to provide a cure. If Licensee fails to provide a cure for the
failure, to Phoenix's reasonable satisfaction within ninety (90) days, Phoenix
shall have the option, in its sole discretion, to: (i) to appoint an alternate
primary source for *****; or (ii) terminate the licenses granted hereunder to
the Award Software. Licensee agrees that the quality standards set forth in
Appendix A include satisfactory customer service to End Users, and that an
unreasonable number of valid complaints will be deemed a failure to meet
Phoenix's quality standards. Licensee further understands that third parties
licensed to use the Award Software may appoint individuals in North America to
distribute enhancements and upgrades to End Users, and that Phoenix has no
control over such appointments.
2.1.2 Licensee may only have and use the Award Software at Licensee's business
location described above. Licensee acknowledges that Award Software presently
resides at Licensee's business location described above, and that there is no
delivery obligation by Award or Phoenix under this Software License Agreement.
Licensee may relocate the Award Software to a different location upon written
notice to Phoenix identifying the new location.
2.1.3 Licensee will not sell, transfer, license, distribute, disclose or
sublicense the Award Software, or Enhancements thereto, except to the extent
authorized under this Software License Agreement. Except as provided herein, no
other license, express or implied, by estoppel or otherwise, to any other
intellectual property rights is granted herein, and no other rights to the Award
Software are granted hereunder except as specifically set forth in this Software
License Agreement.
2.1.4 Licensee shall not alter or remove, or permit any third parties to alter
or remove, Phoenix, Award and their suppliers' copyright notice from the Award
Software or Enhancement thereto. Licensee will include, in all Enhancements,
Phoenix and its suppliers' copyright notice embedded in the code and displayed
in the Source Code to the Enhancement.
2.1.5 Licensee may not authorize other parties to copy, reproduce, or otherwise
use the Award Software or Enhancements thereto, other than on behalf of Licensee
as permitted in Section 2.1.7, or to disassemble or reverse engineer the Award
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Software and any Enhancements thereto, without the prior written consent of
Phoenix, such consent shall not be unreasonably withheld. Licensee has no right
to sublicense its rights under Section 2.1 to third parties.
2.1.6 If Licensee is required to use Award Software labels in its supply of
Enhancements to End Users, Licensee (a) will promptly and securely affix an
applicable Award Software label for each copy of the Enhancement on the
integrated circuit or other medium containing the End User's Award Software; and
(b) will not use, reproduce, sublicense, distribute, transfer or ship any copy
of an Enhancement without first having complied with the provisions of this
Section 2.1.6. If Phoenix is required to use Unicore Software labels in its
licensing of Unicore Software, Phoenix: (a) will promptly and securely affix an
applicable Unicore Software label for each copy of the Unicore Software; and (b)
will not use, reproduce, sublicense, distribute, transfer or ship any copy of
Unicore Software without first having complied with the provisions of this
Section 2.1.6. Licensee currently prints its own Award Software labels, and
will continue to print Award Software labels for the purposes of this Section
2.1.6, adhering to the printing guidelines that have been established by Award
for such labels. Award currently prints its own Unicore Software labels, and
will continue to print Unicore Software labels for the purposes of this Section
2.1.6, adhering to the printing guidelines that have been established for such
labels.
2.1.7 Licensee may use the Award Software solely for the purposes of
understanding the Award Software, making Enhancements thereto, and creating
assembled and compiled object code versions of such Enhancements to support End
Users, and distribute said Enhancements in retail market channels, pursuant to
the terms and conditions of this Agreement. Licensee will use the Award Software
only at the site(s) designated in this Software License Agreement, or in another
written document signed by Phoenix. Licensee may disclose the Award Software and
Enhancements thereto only to those employees who (i) need to know and access
same to accomplish the purposes set forth in this Section 2.1; and (ii) who have
signed an agreement with Licensee obligating them (a) not to disclose any of the
Award Software or Enhancement except to Licensee's employees who have a similar
need to know and who have signed similar agreements and (b) not to use any part
of the Award Software or Enhancement thereto for any other purpose other than
those permitted in this Software License Agreement. The confidentiality
provisions regarding disclosure of the Award Software and any Enhancement will
survive any termination of this Agreement and will continue in effect until such
time as Phoenix may make the Award Software or any Enhancement available to the
public without restrictions on disclosure. Licensee acknowledges that the Award
Software and the Enhancements are trade secrets of Phoenix, and Licensee agrees
to maintain the Award Software and Enhancements currently existing, and those
developed under this Software License Agreement, in a secure fashion, exercising
the same degree of care to avoid publication and unauthorized use and disclosure
as Licensee employs with Licensee's own most valuable confidential information,
and take all necessary precautions to protect the Award Software and any
Enhancement from theft and unauthorized disclosure or use. Licensee will always
use at least a reasonable amount of care and protection to ensure the security
of the Award Software and any Enhancements thereto. Licensee will promptly
report any unauthorized disclosure or use, and take all necessary further
actions to remedy any unauthorized disclosure or use for which Licensee or its
agents are responsible, as reasonably requested by Phoenix in order to prevent
or remedy any such violation. Furthermore, Licensee will not sell, transfer,
encumber, license, or sublicense the Award Software disclosed hereunder, or any
Enhancement other than as expressly permitted under this Software License
Agreement.
2.1.8 Licensee has the sole responsibility for supporting Licensee's
Enhancements, and assuring that maintenance releases of such Enhancements have
equivalent functionality and compatibility with Award Software licensed or used
by End Users. Licensee will indemnify and hold Phoenix harmless for any Defects
that arise from Licensee's Enhancements.
2.2 To Phoenix: Licensee grants to Phoenix the following perpetual,
irrevocable, world wide, fully paid nonexclusive licenses: (i) to make, have
made, use, demonstrate, sell, import, export and otherwise distribute or
dispose of the Unicore Software as part of Phoenix's software product offering,
under existing and future Phoenix trademarks, to its customers and potential
customers as Phoenix deems necessary as part of Phoenix's business; (ii) to
prepare Modifications and Derivative Works based on the Unicore Software; and
use, demonstrate, sell, import, export and otherwise distribute or dispose of
said Modification and Derivative Works as part of Phoenix's software product
offering, under existing and future Phoenix trademarks, to its customers and
potential customers, as it deems necessary as part of Phoenix's business. The
licenses granted to Phoenix hereunder include the right to grant sublicensing
rights to the Unicore Software, and Modifications and Derivative Works based
thereon, to Phoenix customers, wherein the scope of such sublicensing rights
shall be within the scope of the licenses granted to Phoenix, but shall not
include the right for customers to grant sublicensing rights unless approval is
provided by Licensee, which shall not be unreasonably withheld.
2.2.1 Phoenix will not sell, transfer, license, distribute or disclose the
Unicore Software except to the extent authorized under this Software License
Agreement. Except as provided herein, no other license, express or implied, by
estoppel or otherwise, to any other intellectual property rights is granted
herein.
2.2.2 Phoenix shall not alter or remove, or permit any third parties to alter
or remove, Licensee's and their suppliers' copyright notice from the Unicore
Software, or Modification or Derivative Works thereof. Phoenix will include, in
all Modifications and Derivative Works, Licensee and its suppliers' copyright
notice embedded in the code and displayed in the Source Code to the
Modifications or Derivative Works, identifying same as the underlying work in
conjunction with Phoenix's own copyright notice for said Modifications or
Derivative Works.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
2.2.3 Phoenix may not authorize other parties to copy, reproduce, or otherwise
use the Unicore Software, or to disassemble or reverse engineer the Unicore
Software, other than on behalf of, or for the benefit of, Phoenix, or as
otherwise authorized under this Software License Agreement, without the prior
written consent of Licensee, which shall not be unreasonably withheld.
2.2.4 Phoenix may disclose the Unicore Software only to those employees ,
contractors and customers (including potential customers) who (i) need to know
and access same to accomplish the purposes set forth in this Section 2.2; and
(ii) who have signed an agreement with Phoenix obligating them (a) not to
disclose any of the Unicore Software, or Modification thereto, except to
Phoenix's employees who have a similar need to know and who have signed similar
agreements and (b) not to use any part of the Unicore Software for any other
purpose other than those permitted in this Software License Agreement. The
confidentiality provisions regarding disclosure of the Unicore Software will
survive any termination of this Agreement. Phoenix agrees to maintain the
Unicore Software in a secure fashion, exercising the same degree of care to
avoid publication and unauthorized use and disclosure as Phoenix employs with
its own most valuable confidential information of a like nature, and take all
necessary precautions to protect the Unicore Software and any Modification from
theft and unauthorized disclosure or use. Phoenix will always use at least a
reasonable amount of care and protection to ensure the security of the Unicore
Software. Phoenix will promptly report any unauthorized disclosure or use and
take any further actions as are reasonably requested by Licensee to prevent or
remedy any such violation.
2.2.5 Licensee will provide to Phoenix, for a period of one (1) year after the
execution of this Agreement, all updates, upgrades enhancements, modifications,
revisions (including the addition of new features and functionality) to the
Unicore Software, that are developed by or for Licensee, upon when such updates,
upgrades enhancements, modifications, revisions (including the addition of new
features and functionality) are first released.
3. OWNERSHIP.
3.1 Award Software, Enhancements and Derivative Works: Title and full
ownership in the Award Software, related documentation, and all copies thereof
will remain with Phoenix and/or its suppliers. Phoenix retains the right,
subject to the exclusive appointment set forth in Section 2.1.1, to use, copy,
modify, sublicense, and distribute the Award Software, and modifications,
derivative works and enhancements (including Enhancements) thereto made by or
for Phoenix. Licensee will do nothing to infringe upon any rights of Phoenix or
others in the Award Software, any other deliverables or documentation. Licensee
hereby acknowledges the ownership by Phoenix or its suppliers of the trademarks,
copyrights, patent rights, trade secrets and other intellectual property rights
for or in the Award Software. Licensee will cooperate with Phoenix, executing
all required documents, to ensure that all title to the Award Software is
perfected and recorded in Phoenix's name in within two (2) weeks of the
Effective Date.
3.1.2 All right, title and interest in and to Enhancements, and any and all
modifications to said Enhancements that are made by or for Licensee will remain
with Licensee. Licensee will provide Phoenix with a copy, in Source Code form,
of any Enhancement or modifications to Enhancements, made by or for Licensee, on
a quarterly basis. Subject to the exclusive appointment and confidentiality
obligations set forth herein, Phoenix shall have the right to make, have made,
use, demonstrate, sell, sublicense, import, export and otherwise distribute or
dispose of the Enhancements, or modifications thereto, in any manner Phoenix
deems appropriate in conducting its business. Any derivative work, as defined
under U.S. Copyright Laws, prepared by or for Licensee that is based on the
Award Software shall be classified as a "Work Made For Hire" and are and will
remain the sole and exclusive property of Phoenix. Licensee agrees that
regardless of whether such derivative works, or any portions thereof are legally
Works Made For Hire, all such derivative works to the Award Software, and any
portions thereof, will be the sole and exclusive property of Phoenix, and
Licensee hereby assigns to Phoenix all rights therein and in all related
intellectual property rights. Licensee hereby waives any and all moral rights,
as defined under the Berne Convention, in such works to the extent permitted by
law. At Phoenix's request and expense, Licensee will assist and cooperate with
Phoenix in all respects and will execute documents reasonably requested by
Phoenix to acquire, transfer, maintain, and perfect such intellectual property
rights. Licensee represents and warrants that: (a) any derivative works and any
and all modifications of the Award Software and Enhancements thereto made by
Licensee are the original work of Licensee; and (b) that any derivative works
and any and all modifications of the Award Software and Enhancements made by
Licensee will not infringe upon any rights of Phoenix or any third party.
3.2 Unicore Software: Upon execution of the Purchase Agreement, and subject to
the compliance of all terms and conditions therein by Licensee, title and full
ownership in Unicore Software will vest to Licensee, and ownership in said
Unicore Software and all copies thereof, will remain with Licensee. Licensee
retains the right to use, copy, modify, sublicense and distribute the Unicore
Software, and modifications and enhancements thereto made by or for Licensee.
Phoenix will take no action that, to the best of its knowledge, would infringe
upon Licensee's rights to the Unicore Software. Phoenix hereby acknowledges the
ownership by Licensee of the intellectual property embodied in the Unicore
Software. Phoenix will cooperate with Licensee in the execution of all required
documents to ensure that title is perfected and recorded in Licensee's name
within two (2) weeks of the Effective Date. Licensee shall supply Phoenix with
all such documents.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
3.2.1 Any and all Modifications, including Derivative Works, to the Unicore
Software made by or for Phoenix will remain the property and responsibility of
Phoenix. Phoenix shall have the right to make, have made, use, demonstrate,
sell, sublicense, import, export and otherwise distribute or dispose of the
Modification or Derivative Works, in any manner Phoenix deems appropriate in
conducting its business. Phoenix will have the right to register copyrights of
its Derivative Works (as a derivative work) and will have the responsibility of
defending them. Any Derivative Work will contain Licensee's copyright notice
embedded in the code and displayed in the Source Code to the Derivative Work.
4. CONFIDENTIALITY.
The Award Software, and Enhancements related thereto, include Phoenix
confidential and proprietary information and will remain the confidential and
proprietary information of Phoenix and/or its third party suppliers; likewise
the Unicore Software, and Modifications and Derivative Works thereof includes
confidential and proprietary information of Licensee and will remain the
confidential and proprietary information of Licensee ("Confidential
Information"). Confidential Information shall also include any and all technical
data, user's manuals, and information supplied by Phoenix to Licensee, and by
Licensee to Phoenix. As used herein a Party receiving Confidential Information
shall be a "Recipient" and a Party disclosing Confidential Information shall be
a "Disclosing Party". Confidential Information communicated verbally by the
Disclosing Party shall be identified as confidential at the time it is first
communicated and shall be described in writing within thirty (30) business days
of disclosure. Recipient of Confidential Information shall use reasonable
efforts to prevent the disclosure of the Confidential Information in any form,
except as identified herein for the purposes of this Agreement. Recipient may
only disclose Confidential Information to its employees whose duties require
such access and who are obligated to maintain the information in confidence.
This obligation of confidentiality with respect to the Recipient of Confidential
Information from a Disclosing Party shall not apply to information which is
shown to be (i) available to the public other than by breach of this Agreement
by Recipient; (ii) rightfully received by Recipient from a third party without
breach of a duty to the Disclosing Party; (iii) independently developed by
Recipient's employees without use of the Confidential Information; or (iv) known
to Recipient prior to first receipt from the Disclosing Party and with no
restriction of confidentiality. Unless otherwise provided for herein, the
Confidential Information will be safeguarded until such time as the Disclosing
Party makes the Confidential Information available to the public without
restrictions on disclosure. Recipients of Confidential Information will use at
least the same degree of care Recipient uses to protect its own most
confidential information but in no event less than reasonable care. Recipient
agrees to not disclose to third parties the existence or terms of this
Agreement, except where obligated by law to do so.
5.0 PHOENIX'S LIMITED WARRANTY AND REMEDIES
5.1 Phoenix warrants that the Award Software, as delivered by Phoenix to
Licensee hereunder will, for a period of three months after delivery of such
Award Software to Licensee, perform in accordance with the Specifications.
5.1.2 During the warranty period, Phoenix will repair Defects in the Award
Software which cause the Award Software to fail to conform to the
Specifications, provided Licensee has given Phoenix written notice of such
Defect.
5.1.3 Upon receiving a Defect notice from Licensee, Phoenix will have five (5)
working days in which to acknowledge whether or not the Defect exists. In the
event that the Defect exists, Phoenix will have twenty (20) working days in
which to correct the Defect.
5.1.4 If Phoenix is unable to correct any Defect after reasonable efforts,
Licensee may either (i) correct the Defect itself; or (ii) have a third party,
acceptable to Phoenix, provide the correction, wherein Phoenix's acceptance
shall not be unreasonably withheld provided the third party is under an
agreement that protects the intellectual and trade secret content of the Award
Software from unauthorized disclosure or use. If Phoenix and Licensee agree
that the Defect substantially reduces the value of the Award Software to
Licensee, Licensee may terminate the license granted by Phoenix for the Award
Software. Licensee's termination of its licenses under the Award Software shall
not affect the licenses granted Phoenix for the Unicore Software, which shall
remain in full force and effect.
5.1.5 THIS SECTION 5 SETS FORTH LICENSEE'S SOLE AND EXCLUSIVE REMEDIES FOR THE
PERFORMANCE OR NONPERFORMANCE OF THE AWARD SOFTWARE AND FOR ANY WARRANTY CLAIM
WITH RESPECT TO THE AWARD SOFTWARES. THE WARRANTY ABOVE WILL BECOME NULL AND
VOID WITH RESPECT TO ANY AWARD SOFTWARE THAT HAS BEEN MODIFIED IN ANY WAY BY
ANYONE OTHER THAN PHOENIX, WHETHER OR NOT SUCH MODIFICATIONS WERE PERMITTED
HEREUNDER.
5.1.6 Disclaimer of All Other Warranties. PHOENIX MAKES NO WARRANTIES, EITHER
EXPRESS OR IMPLIED, WITH RESPECT TO THE AWARD SOFTWARE OTHER THAN THE ONES
EXPRESSLY SET FORTH IN THIS SECTION 5, AND PHOENIX EXPRESSLY DISCLAIMS ANY SUCH
WARRANTIES, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT. NO AGENT
OF PHOENIX IS AUTHORIZED TO ALTER OR EXPAND THE WARRANTY OBLIGATIONS OF PHOENIX
AS SET FORTH IN THIS SECTION 5.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
6.0 LICENSEE'S LIMITED WARRANTY AND REMEDIES
6.1 Licensee warrants that the Unicore Software and Enhancement developed by
Licensee will, for a period of three months after delivery to Phoenix, perform
in accordance with the Specifications. For the Millenium/Pro software/firmware
("Millenium Pro"), Licensee further warrants that prior to delivery of the
Millenium Pro, and all Enhancements thereto developed by Licensee, to Award,
that the Millenium Pro and all such Enhancement will be tested for Y2K
compliance, using the compliance test specified by the NTSL on February 15, 1998
for Y2K compliance. If other compliance test updates are issued by the NTSL, and
if the Millenium Pro does not comply with the test updates issued by the NTSL,
Licensee will immediately notify Phoenix of the non-compliance. Licensee will
not deliver ant Millenium Pro product that does not meet the Y2K compliance
criteria. Licensee will fully indemnify and defend Award under Section 8.1 for
any violation of this Y2K compliance warranty.
6.1.2 During the warranty period, Licensee will repair Defects in the Unicore
Software and Enhancement which cause the Unicore Software or any Enhancement to
fail to conform to the Specifications, provided Phoenix has given Licensee
written notice of such Defect.
6.1.3 Upon receiving a Defect notice from Phoenix, Licensee will have five (5)
working days in which to acknowledge whether or not the Defect exists. In the
event that the Defect exists, Licensee will have twenty (20) working days in
which to correct the Defect.
6.1.4 If Licensee is unable to correct any Defect after reasonable efforts,
Phoenix shall have the option to either: (i) correct the Defect itself; or (ii)
have a third party, acceptable to Licensee, provide the correction, wherein
Licensee's acceptance shall not be unreasonably withheld provided the third
party is under an agreement that protects the intellectual and trade secret
content of the Unicore Software from unauthorized disclosure or use. If Phoenix
believes that the Defect substantially reduces the value of the Unicore Software
to Phoenix, Phoenix may terminate the license granted by Licensee for the
Unicore Software. Phoenix's termination of its licenses under the Unicore
Software shall not affect the licenses granted Licensee for the Award Software,
which shall remain in full force and effect.
6.1.5 THIS SECTION 6 SETS FORTH PHOENIX'S SOLE AND EXCLUSIVE REMEDIES FOR THE
PERFORMANCE OR NONPERFORMANCE OF THE UNICORE SOFTWARE AND ANY MODIFICATIONS TO
THE UNICORE SOFTAWRE DEVELOPED BY LICENSEE, AND FOR ANY WARRANTY CLAIM WITH
RESPECT TO THE UNICORE SOFTWARE AND ANY MODIFICATION THERETO DEVELOPED BY
LICENSEE. THE WARRANTY ABOVE WILL BECOME NULL AND VOID WITH RESPECT TO ANY
UNICORE SOFTWARE THAT HAVE BEEN MODIFIED IN ANY WAY BY ANYONE OTHER THAN
PHOENIX, OR LICENSEE OR THIRD PARTIES AUTHORIZED TO PERFORM SUCH MODIFICATIONS,
OR AS PERMITTED HEREUNDER.
6.1.6 Disclaimer of All Other Warranties. LICENSEE MAKES NO WARRANTIES, EITHER
EXPRESS OR IMPLIED, WITH RESPECT TO THE UNICORE SOFTWARE OR ANY DEVELOPED
MODIFICATIONS OTHER THAN THE ONES EXPRESSLY SET FORTH IN THIS SECTION 6, AND
LICENSEE EXPRESSLY DISCLAIMS ANY SUCH WARRANTIES, INCLUDING BUT NOT LIMITED TO
THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT. NO AGENT OF LICENSEE IS AUTHORIZED TO ALTER OR EXPAND THE
WARRANTY OBLIGATIONS OF LICENSEE AS SET FORTH IN THIS SECTION 6.
7. LIMITATION OF LIABILITY. For the purposes of this Agreement, Phoenix shall
not be liable for any property damage, personal injury, loss of profits,
interruption of business or any special, consequential or incidental damages,
however caused, whether for breach of warranty, contract, strict liability or
otherwise. Phoenix disclaims all liability, including liability for
infringement of any intellectual property rights relating to the Award Software
or other Confidential Information provided under this Agreement. Licensee agrees
that Licensee is assuming full responsibility for any and all risks and
liability of any type, whether known or unknown, relating to Licensee's exercise
of the license rights to the Award Software granted to Licensee herein. Phoenix
shall under no circumstances be liable to Licensee, any End User or other third
party, that receives Enhancements or NRE services from Licensee, for damages of
any kind whatsoever arising out of or based upon a claim that the Award
Software, or any modifications thereof, violates any patent, copyright, trade
secret or other intellectual property right of any third party; Licensee shall
defend, indemnify and hold Phoenix harmless from all such allegations and/or
claims pursuant to Section 8 hereunder. Licensee shall under no circumstances
be liable to Phoenix, or other third party, that receives Modifications to the
Unicore Software, or Derivative Works base thereon from Phoenix, for damages of
any kind whatsoever arising out of or based upon a claim that the Modifications
or Derivative Works, as developed by Phoenix, violates any patent, copyright,
trade secret or other intellectual property right of any third party, provided
that the basis for the claim is not cause by the Unicore Software alone. Phoenix
shall defend, indemnify and hold Licensee harmless from all such allegations
and/or claims pursuant to Section 8 hereunder.
8. INDEMNIFICATION
8.1 Indemnification of Phoenix Licensee will at its expense indemnify and
hold harmless Phoenix, and at Phoenix's option defend Phoenix, from any and all
actions, claims, costs, liabilities, losses, and expenses including, but not
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
limited to, reasonable attorneys' fees and cost of suit incurred by Phoenix as a
result of or arising from: (i) Licensee's use, misuse or modification of the
Award Software and use, misuse, sale and distribution of Enhancements thereto to
End Users and authorized third parties; (ii) arising out of or resulting from
Licensee's performance of NRE services, and any product or deliverable resulting
therefrom; and (iii) for Phoenix's use and incorporation of Unicore Software as
part of Phoenix's commercial software product line, including allegations,
claims, disputes or proceedings alleging that the Unicore Software or any
Enhancement infringes upon the patent or copyright of a third party, or that
the Unicore Software or any Enhancements wrongfully incorporates trade secrets
of a third party. The foregoing obligations upon Licensee apply only if: (i)
Phoenix promptly gives Licensee written notice of any claims and/or threatened
claims; (ii) Phoenix allows Licensee to direct and control the defense and/or
settlement of the claim; and (iii) Phoenix provides Licensee with the authority,
information and assistance (at Licensee's expense) that Licensee reasonably
requests to defend the claim, gives all relevant and available evidence in
Phoenix's possession (subject to an acceptable confidentiality agreement), and
gives reasonable assistance to Licensee in the defense of such claim or
threatened claim.
8.2 Indemnification of Licensee Phoenix will at its expense indemnify and
hold harmless Licensee, and at Licensee's option defend Licensee, from any and
all actions, claims, costs, liabilities, losses, and expenses including, but not
limited to, reasonable attorneys' fees and cost of suit incurred by Licensee as
a result of or arising from Phoenix's use, sale and distribution of
Modifications and Derivative Works to the Unicore Software developed by Phoenix,
provided however, that the Modifications and/or Derivative Works as developed by
Phoenix, and not the Unicore Software alone, are the basis for any such action
or claim.
9.0 PAYMENT
9.1 Licensee agrees to pay Phoenix a royalty of: (a) ***** percent for the first
***** dollars in net revenue; and thereafter (b) ***** percent of the net
revenue, that Licensee receives in the sale, licensing, supply, and
distribution of: (i) the Unicore Software; and (ii) the Enhancements to End
Users, as of the Effective Date of this Software License Agreement, and pursuant
to the transfer of title to the Unicore Software under the Purchase Agreement,
and the licenses granted hereunder. Licensee will submit royalty reports to
Phoenix, on a form approved by Phoenix, before the end of the month following
each calendar quarter after the Effective Date of this Agreement. Each report
will accurately set forth the number of units of each Enhancement sold, or
otherwise distributed or disposed of by Licensee during such quarter. Each such
report will be accompanied by payment of all royalty amounts due to Phoenix
pursuant to said report. Licensee's obligations to furnish quarterly royalty
reports and to make quarterly royalty payments to Phoenix will continue as long
as Licensee sells or distributes Enhancements. Royalty reports are required even
if Licensee reports no such sales or other distributions or disposals of
Enhancements. If Licensee stops providing Enhancements, Licensee will promptly
submit to Phoenix a written notice, a final quarterly royalty report, a final
royalty payment in the full amount of all royalty amounts due to Phoenix, and a
written certification that it has stopped distributing Enhancements based upon
the Award Software to End Users. No moneys paid hereunder are refundable unless
specifically provided for in this Agreement.
9.2 Royalty fees payable by Licensee to Phoenix hereunder do not include any
taxes or charges imposed by any federal, state, local, or foreign jurisdiction.
Licensee will pay any and all such taxes and charges (other than taxes based on
Phoenix's net income).
9.3 If a foreign government requires taxes to be withheld on payments to be
made by Licensee hereunder, then to the extent Phoenix is entitled to and can
utilize a US Foreign Tax Credit for such taxes, Licensee may deduct such taxes
from the amount owed to Phoenix and pay them to the appropriate tax authority.
Licensee will obtain and deliver to Phoenix a receipt and all other documents
necessary for Phoenix to claim a Foreign Tax Credit.
9.4 Once per calendar year Phoenix may audit or have a mutually agreed upon
independent nationally recognized accounting firm audit the records and
supporting documentation of Licensee relating to the number of Enhancements
shipped, distributed, transferred, or otherwise disposed of by Licensee to
determine whether Licensee has correctly reported and calculated the royalty
fees due Phoenix hereunder. If the Parties cannot mutually agree on a third
party auditor, the selection of the firm to conduct the audit shall be made by
the two firms initially selected. To facilitate the audit, Licensee will give
the auditors reasonable access, during normal business hours, to Licensee's
premises where such records and documentation are located, provided that such
auditors have executed a confidentiality agreement prior to such access. If an
audit discloses an underpayment of royalties, Licensee will immediately pay
Phoenix the additional royalties due, together with interest thereon from the
original payment due date at the rate of one percent per month or the highest
rate allowed by law (whichever is less). Phoenix and Licensee will bear their
own expenses incurred in the audit; however, if an audit discloses an
underpayment of royalties of five percent (5%) or more of the total royalties
originally due for the period being audited, Licensee will reimburse Phoenix for
all expenses incurred by Phoenix in the audit.
10.0 SUPPORT ,TRAINING, MAINTENANCE AND NRE
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
10.1 Licensee will provide support, maintenance and training to Phoenix, and End
Users via telephone consultation only, at no additional charge to Phoenix, for
the Award Software and Enhancements thereto. Support, maintenance and training
may include, but may not be limited to, (i) consultation and advice on the use
of the Award Software and Enhancements; (ii) assistance in problem
determination; (iii) correction of Defects in the Award Software and
Enhancements; and (iv) development of Upgrades for End Users. Licensee agrees to
provide reasonable and adequate service and support to all its customers and
users of Licensee's products for any Enhancements contained in Licensee's
Products. An unreasonable number of valid complaints that remain unresolved for
an unreasonable amount of time, regarding the support and service offered by
Licensee shall be deemed a violation of the Quality standards set forth by
Phoenix. Licensee will bear all expenses associated with its support of its
customers and End Users. Phoenix will bear all costs for its employees traveling
to Licensee's site to receive such training on Enhancements, and may request
that such training include Unicore Software.
10.2 Phoenix shall provide limited support, assistance and documentation, as
well as assistance with updates to the Award Software, to the extent necessary
to enable Licensee to develop Enhancements to the Award Software, and upgrades
thereto. Updates to the Award Software will be available to Licensee through
the traditional code drop process utilized by Award and Licensee. If Phoenix
makes the Award Software available to its other licensees under Phoenix's SCAP
Program, updates will be then be provided to Licensee under the SCAP Program, a
copy of the terms for such a Program are attached hereto as Appendix B. If the
method of obtaining updates under the SCAP Program is not satisfactory to
Licensee, Phoenix will work with Licensee to determine a mutually acceptable
alternative method for Licensee to obtain updates. Licensee may attend Phoenix
training classes at Phoenix's normal training rate.
10.3 Licensee will provide NRE services to End Users at said End User's
request, or at Phoenix's request if the End User has solicited Phoenix to
perform such NRE services. Phoenix will refer End User's making such a request
to Licensee, wherein Licensee will independently negotiate and contract directly
with the End User's for the performance of such services. Licensee will notify
any such End User that Phoenix is not a party to such services, and will have no
responsibility for the actions or work performed by Licensee in conduction such
NRE services. To the extent that Licensee retains ownership of the work product
developed while performing the NRE services, and that such work product is based
upon the Award Software, Licensee will provide Phoenix a license under such work
product pursuant to Section 2.2. Phoenix and Award shall additionally provide
referrals to Licensee on their web sites, as well as at trade shows where
Phoenix and/or Award are presenting Award Software.
11.0 TERM AND TERMINATION.
11.1 This Software License Agreement will have an Initial Term of ***** years
("Initial Term") from the Effective Date, or until this Agreement is terminated
by mutual agreement, for default, and/or as otherwise provided herein. This
Software License Agreement may be renewed and extended ("Extentions") upon
receipt by Phoenix of Licensee's intention to renew and extend the Initial Term,
six (6) months prior to the expiration of the Initial Term. Upon Phoenix's
receipt of the Licensee's request, this Software License Agreement may be
extended for an additional period of Three (3) years, with subsequent Three (3)
year Extensions available upon Phoenix's receipt of Licensee's request for
additional extensions of the Term within the time parameters provided herein.
Any such Extension shall be automatically granted by Phoenix, provided that
Licensee has performed in accordance with the rights and restrictions set forth
in this Agreement in all material respects, and met the Quality requirements in
both its Enhancements and service and support of End Users in all material
respects. If during the Initial Term or an Extension, Phoenix reasonably
believes Licensee has not satisfactorily met the Quality requirements in a
material , or has conducted itself in such a manner that Phoenix reasonably
believes may cause harm to Phoenix, Phoenix will notify Licensee and Licensee
will be required to cure the Quality problem to the reasonable satisfaction of
Phoenix, which shall not be unreasonably denied. If Licensee fails to provide a
satisfactory cure, Phoenix may reject the request for any Extension to this
Agreement, and Licensee's rights under the Award Software shall terminate.
Phoenix's rights granted under the Unicore Software shall remain in full force
and effect, pursuant to section 11.4.
11.2 Either party may terminate their respective license grant for material
breach of either the Purchase Agreement, or this Software License Agreement, by
providing thirty (30) days written notice, unless the breach is corrected within
the thirty (30) day period after such notice. If Award is the terminating party,
the licenses granted to Licensee under this Software License Agreement shall be
suspended until a cure for the action resulting in Award initiating the
termination is reached
11.3 Material breach on the part of Licensee will include, but not be limited
to, breach of the confidentiality, warranty or indemnification obligation of
either the Purchase Agreement or this Software License Agreement, misuse of the
licenses granted hereunder, the filing of a voluntary or involuntary petition to
declare insolvency or bankruptcy which is not dismissed within forty five (45)
days; making an assignment or other arrangement for the benefit of creditors;
being dissolved or liquidated; or being party to a merger, consolidation, or
other corporate reorganization in which a Party hereunder to such a merger,
consolidation, or other corporate reorganization is not the survivor.
11.4 Upon termination of the license granted herein, the Party subject to the
termination will stop reproducing, selling, distributing or sublicensing the use
of copies of the relevant (Award or Unicore) Software (including Enhancements in
the case of Award Software), and will deliver the Software, and all other
material pertaining to the Software, to the notifying
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Party, and will warrant that all said materials have been returned except for
those properly distributed by Licensee prior to the date of termination. The
termination of licenses granted hereunder will not affect the rights granted to
the other Party not subject to the termination, wherein such Party's rights
shall continue in full force and effect.
11.5 Licensee and Phoenix will remain obligated under this Agreement, including
the payment of royalties, for transactions that have already been completed and
to those parts of this Agreement relating to confidentiality, warranties,
indemnity, limitation of liability, and obligations upon termination.
12.0. GENERAL.
12.1 Licensee and Phoenix agree that this Software License Agreement
constitutes the complete agreement and understanding between the parties with
respect to the subject matter herein. This Software License Agreement, and the
Purchase Agreement, and all Exhibits and Appendices attached hereto, supersedes
all prior agreements, understandings, and negotiations, whether written or
verbal, with respect to the subject matter herein. No amendment or modification
of this Software License Agreement will be effective unless it is set forth in a
writing which refers to the particular provisions so amended or modified and is
executed by authorized representatives of both Parties.
12.2 Notices will be sent by first class mail, postage prepaid, by courier or
other personal delivery or by telecopy (with telephonic confirmation of receipt)
to the Parties at the following addresses:
For Phoenix: For Licensee:
000 Xxxx Xxxxxxxx Xxxxx 0000 Xxxxxxxx Xxxxxx
Xxx Xxxx, XX 00000 Xxxxx Xxxxxxx, XX 00000
U.S.A U.S.A.
Attn: General Counsel Attn: President, with copy to:
Xxxx X. Xxxxx, Esq.
Xxxxxx, Millimet & Branch
00 Xxxxx Xx., X.X. Xxx 00
Xxxxxxx, XX 00000
or to such other address as a Party designates in writing to the other Party.
Notices to Phoenix will be sent to the attention of the Legal Department.
12.3 This Agreement will be governed by and construed in accordance with the
internal laws of the State of California, without regard to or application of
choice of law rules or principles, with venue for any such disputes which arise
in connection with this Agreement being resolved in the state and federal courts
in Massachusetts.
12.4 No third party will have any rights under this Agreement. Nothing in this
Agreement will constitute the parties to be partners or joint venturers with, or
agents or employees of, each other. The parties are independent contractors,
and neither Party will have any right or power to create any obligation or
responsibility on behalf of the other Party.
12.5 Neither Party may assign its rights under this Agreement without the
other party's written consent, which shall not be unreasonably withheld. This
Section notwithstanding, either Party hereunder may assign its rights and
obligation under this Agreement in conjunction with a merger, acquisition,
divestiture or other legal proceeding involving the transfer of a controlling
interest of a Party's business, or a party's division, subsidiary or affiliate
business. In the event that the third party involved in the merger, acquisition,
divestiture or other transfer of a controlling interest is a competitor of the
non-assigning Party, the non assigning Party may terminate the licenses granted
hereunder to the assigning Party. Any attempted assignment or delegation by not
in accordance with this Section will be void and will give the non-assigning
Party the right to terminate this Agreement on written notice. Subject to the
foregoing,this Agreement will inure to the benefit of and be binding on the
respective successors and assigns of the Parties.
12.6 Waiver by either Party of nonperformance or any breach of any provision of
this Agreement will not operate as a waiver of any subsequent nonperformance or
other breach of the same or any other provision. The failure by a Party to
exercise any of its rights under this Agreement will not be deemed to constitute
a waiver of any such rights, or other rights or remedies available to such
Party.
In witness whereof, the Parties hereto have executed this Agreement on the date
specified below by an individual empowered with the requisite corporate
authority to do so.
Phoenix: Phoenix Technologies Ltd.
Signature:
Name: ___________________________
Title:___________________________
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Date: November 6, 1998
_______________________________
Licensee: Unicore Acquisition Corp.
Signature:___________________________
Name:________________________________
Title:_______________________________
Date: November 6, 1998
_______________________________
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Confidential treatment has been requested for portions of this exhibit. The copy
filed herewith omits the information subject to the confidentiality request.
Omissions are designated as ****. A complete version of this exhibit has been
filed separately with the Securities and Exchange Commission.
ADDENDUM "A"
TO THE
SOFTWARE LICENSE AGREEMENT
BETWEEN
PHOENIX TECHNOLOGIES LTD.
AND
UNICORE SOFTWARE, INC.
This Addendum A ("Addendum") is entered into as of the last date specified
in the execution block below, and by agreement of the Parties, and for the
purpose of making each Party whole, is made effective as of October 1, 1999
("Effective Date") between Phoenix Technologies Ltd., a Delaware corporation
having its principal place of business at 000 Xxxx Xxxxxxxx Xxxxx, Xxx Xxxx,
Xxxxxxxxxx 00000 ("Phoenix"), and Unicore Software Inc. a Massachusetts
corporation having its principal place of business at 0000 Xxxxxxxx Xx., X.
Xxxxxxx, XX 00000 ("Licensee"). Phoenix and Licensee shall be collectively
referred to in this Addendum as "Parties" or singularly as "Party".
Whereas Phoenix through its subsidiary Award Software International, Inc.
("Award") and Unicore Acquisition Corp. have entered into a Software License
Agreement (Agreement No. 18430100), dated November 6, 1998 ("Controlling
Agreement"), for the licensing of certain Award Software, as defined in the
Controlling Agreement;
Whereas Unicore Acquisition Corp. has changed its name since the Effective
Date and is now conducting business as Unicore Software Inc., referred to herein
as "Licensee", and now wishes to modify the Controlling Agreement to: (i) add
Phoenix's CardWare product as part of the Award Software licensed under the
Controlling Agreement, pursuant to the additional terms specified herein; and
(ii) to modify the Controlling Agreement as set forth herein.
NOW THEREFORE, the Parties agree to modify the Controlling Agreement as
follows:
1. Both Parties agree that the Phoenix CardWare product shall be added to and
made part of the Controlling Agreements subject to the following additional
terms that shall govern the use and distribution of the CardWare product by
Licensee:
(a) A new Section 1.12 shall be added as follows: "CardWare" shall mean
Phoenix's software solution, in Source Code format, that is PC Card
database independent, and utilizes PCMCIA standard Card Information
Structure (CIS) that provides "Plug and Play" operation and
compatibility for PC cards.
(b) A new Section 2.1.9 shall be added entitled "CardWare License Grant",
and shall set forth the following additional terms and conditions for
the use and distribution of CardWare by Licensee:
2.1.9 (a) For the Initial Term of this Agreement, and all Extensions
to the Initial Term pursuant to Section 11.1, Phoenix grants to
Licensee, a personal, restricted, non-transferable,*****, royalty
bearing license to use CardWare solely for the purpose of: (i)
understanding CardWare, making Enhancements thereto; (ii) creating
assembled and compiled object code versions of such Enhancements; and
(iii) distributing said Enhancements *****, pursuant to the terms and
conditions of this Agreement, and for no other purpose. Licensee
understands and agrees that the nature and intent of the licenses
granted hereunder is restricted to: (1) *****, and Licensee will ensure
any dealers, distributors, or resellers it engages will market the
CardWare product, and all Enhancements thereto, only to those *****;
and (2) *****; and Licensee agrees to use its reasonable best efforts
to ensure any dealers, distributors, or resellers will market the
CardWare product, and all Enhancements thereto, only to those *****.
Under no circumstances shall the licenses granted herein, or any *****;
for the purposes of the CardWare product, *****.
2.1.9(b) Licensee agrees that in any agreement that Licensee enters
with ***** for Enhancements that Licensee will ensure that: (a) *****
receive the Enhancement in an object code format only; (b) ***** agree
that the Enhancements will be subject to terms and conditions that
protect the intellectual property content of the Enhancement from
unauthorized use or disclosure, including reverse engineering of the
Enhancement to determine its operation; and (c) any agreement between
Licensee and ***** for the supply of Enhancements specifically holds
Phoenix and Award harmless from any liability resulting from the *****
use of said Enhancements. Licensee agrees it will hold Phoenix and
Award harmless from any liability resulting from the use of said
Enhancements by said ***** or third parties; provided, however, that
the Enhancements as
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
developed by Licensee, and not the unmodified CardWare product, as
licensed hereunder for use by Licensee, are the basis for such
liability. Unless specifically authorized by Phoenix in writing, each
copy of CardWare is provided for use on a single PC.
2.1.9(c ) Licensee will embed the copyright notices included with the
CardWare on any Enhancement so that such notice is displayed on the
post screen or sign-on message of the ****** when possible. Licensee
will not alter or remove, nor permit any third party to alter or
remove, such copyright notices.
2.1.9(d) Licensee may disclose CardWare and Enhancements thereto only
to those employees who (i) need to know and access same to accomplish
the purposes set forth in this Section 2.1.9; and (ii) who have signed
an agreement with Licensee obligating them (a) not to disclose any of
portion of CardWare or any Enhancement except to Licensee's employees
who have a similar need to know and who have signed similar agreements;
and (b) not to use any part of the CardWare or Enhancement thereto for
any other purpose other than those permitted in this Software License
Agreement. The confidentiality provisions regarding disclosure of
CardWare and any Enhancement will survive any termination of this
Agreement and will continue in effect until such time as Phoenix may
make CardWare or any Enhancement available to the public without
restrictions on disclosure. Licensee acknowledges that CardWare and
the Enhancements are trade secrets of Phoenix, and Licensee agrees to
maintain the CardWare and Enhancements currently existing, and those
developed under this Software License Agreement, in a secure fashion,
exercising the same degree of care to avoid publication and
unauthorized use and disclosure as Licensee employs with Licensee's own
most valuable confidential information of a like nature, and take all
necessary precautions to protect the CardWare product and any
Enhancement from theft and unauthorized disclosure or use. Licensee
will always use at least a reasonable amount of care and protection to
ensure the security of the CardWare and any Enhancements thereto.
Licensee will promptly report any unauthorized disclosure or use, and
take all necessary further actions to remedy any unauthorized
disclosure or use for which Licensee or its agents are responsible, as
reasonably requested by Phoenix in order to prevent or remedy any such
violation. Furthermore, Licensee will not sell, transfer, encumber,
license, or sublicense the CardWare product licensed hereunder, or any
Enhancement other than as expressly permitted under this Software
License Agreement.
2.1.9(e) Licensee may only have and use the CardWare product at
Licensee's business location specified above. Licensee acknowledges
that CardWare presently resides at Licensee's business location
specified above, and that there is no delivery obligation by Award or
Phoenix under this Addendum or Software License Agreement. Licensee may
relocate the CardWare product to a different location upon ten (10)
days advance written notice to Phoenix identifying the new location.
2.1.9(f) Licensee will not sell, transfer, license, distribute,
disclose or sublicense the CardWare product, or Enhancements thereto,
except to the extent authorized under this Software License Agreement.
Except as provided herein, no other license, express or implied, by
estoppel or otherwise, to any other intellectual property rights is
granted herein, and no other rights to CardWare are granted hereunder
except as specifically set forth in this Software License Agreement.
2.1.9(g) Licensee shall not alter or remove, or permit any third
parties to alter or remove, Phoenix, Award and their suppliers'
copyright notice from the CardWare product or Enhancement thereto.
Licensee will include, in all Enhancements, Phoenix and its suppliers'
copyright notice embedded in the code and displayed in the Source Code
to the Enhancement.
2.1.9(h) Licensee may not authorize other parties to copy,
reproduce, or otherwise use the CardWare product or Enhancements
thereto, other than on behalf of Licensee as permitted in this Section
2.1.9, or to disassemble or reverse engineer the CardWare product and
any Enhancements thereto, without the prior written consent of Phoenix.
2.1.9(i) Licensee is required to use Phoenix software labels in
its supply of CardWare and/or Enhancements to *****. Licensee (a) will
promptly and securely affix an applicable Phoenix software label for
each copy of the CardWare and/or Enhancement on the medium containing
the ***** CardWare product; and (b) will not use, reproduce,
sublicense, distribute, transfer or ship any copy of an Enhancement
without first having complied with the provisions of this Section 2.1.9
and the otherwise controlling provisions of this Software License
Agreement.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
(c) A new Section 3.1.3 shall be added for the CardWare product as follows:
"Title and full ownership in the CardWare product, Enhancements,
related documentation, and all copies thereof will remain with Phoenix
and/or its suppliers. Phoenix retains the right to use, copy, modify,
sublicense, and distribute the CardWare product, and modifications,
derivative works and enhancements (including Enhancements). Licensee
will provide Phoenix a copy of all Enhancements developed by Licensee
within ten (10) Days of development. Licensee will do nothing to
infringe upon any rights of Phoenix or others in the CardWare product,
any other deliverables or documentation. Licensee hereby acknowledges
the ownership by Phoenix or its suppliers of the trademarks,
copyrights, patent rights, trade secrets and other intellectual
property rights for or in the CardWare product Any derivative work, as
defined under U.S. Copyright Laws, prepared by or for Licensee that
is based on CardWare shall be classified as a "Work Made For Hire" and
are and will remain the sole and exclusive property of Phoenix.
Licensee agrees that regardless of whether such derivative works, or
any portions thereof are legally Works Made For Hire, all such
derivative works to CardWare, and any portions thereof, will be the
sole and exclusive property of Phoenix, and Licensee hereby assigns to
Phoenix all rights therein and in all related intellectual property
rights. Licensee hereby waives any and all moral rights, as defined
under the Berne Convention, in such works to the extent permitted by
law. At Phoenix's request and expense, Licensee will assist and
cooperate with Phoenix in all respects and will execute documents
reasonably requested by Phoenix to acquire, transfer, maintain, and
perfect such intellectual property rights. Licensee represents and
warrants that: (a) any derivative works and any and all modifications
of CardWare and Enhancements thereto made by Licensee are the original
work of Licensee; and (b) that any derivative works and any and all
modifications of CardWare and Enhancements made by Licensee will not
infringe upon any rights of Phoenix or any third party.
(d) Section 5 of the Controlling Agreement shall be replaced with the
following with respect to the CardWare product:
LICENSEE UNDERSTANDS THAT THE CARDWARE PRODUCT IS BEING PROVIDED "AS-IS",
AND THAT PHOENIX MAKES NO WARRANTIES, WHATSOEVER, WHETHER EXPRESS, IMPLIED OR
STATUTORY, INCLUDING, BUT NOT LIMITED TO ANY WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT, FITNESS FOR ANY PARTICULAR PURPOSE, OR ANY WARRANTY OTHERWISE
ARISING OUT OF ANY PROPOSAL, SPECIFICATION, OR SAMPLE. IN NO EVENT WILL
PHOENIX OR ITS SUPPLIERS BE LIABLE TO LICENSEE FOR ANY LOSS OF PROFITS, LOSS
OF USE, INCIDENTAL, CONSEQUENTIAL, INDIRECT, OR SPECIAL DAMAGES ARISING OUT OF
THIS ADDENDUM, WHETHER OR NOT PHOENIX HAD ADVANCE NOTICE OF THE POSSIBILITY OF
SUCH DAMAGES. PHOENIX REPRESENTS THAT AS OF THE EFFECTIVE DATE OF THIS
AGREEMENT IT IS NOT AWARE OF ANY CLAIM OR ALLEGATION BY ANY THIRD PARTY THAT
THE CARDWARE PRODUCT INFRINGES AN ISSUED U.S. PATENT OR REGISTERED U.S.
COPYRIGHT HELD BY SAID THIRD PARTY.
(e) Section 8.2 of the Controlling Agreement shall not apply to the CardWare
product.
(f) Section 9.1 of the Controlling Agreement with respect to the CardWare
product, shall be modified as follows:
(i) Section 9.1.1(a), specifying a royalty rate of ***** percent shall
be deleted as of March 5, 1999, and the continuing royalty rate
thereafter for the Award Software licensed under the Controlling
Agreement (other than CardWare) shall be ***** percent, as stated
in 9.1(b), provided Phoenix receives ***** Dollars within Five (5)
business days of execution of this Addendum.
(ii) A new Section 9.5 shall be added for the licensing of CardWare,
which shall read as follows:
Licensee agrees to pay Phoenix, as a prepayment on future
royalties for the sale, licensing, supply, and distribution of the
CardWare product: (a) ***** Dollars within Ten (10 Days of
execution of this Addendum or prior to March 31, 1999; (b) an
additional ***** Dollars prior to March 31, 1999; ***** Dollars
within Ninety (90) days following execution of this Addendum or
prior to June 10, 1999, whichever is earlier. Licensee agrees the
royalty rate applicable to the CardWare product that shall be
payable to Phoenix shall be ***** percent of the net revenue that
Licensee receives from the sale,
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
licensing, supply, and distribution of the CardWare product and
Enhancements thereto as of the Effective Date of this Addendum.
Licensee will submit royalty reports to Phoenix, on a form
approved by Phoenix, identifying each CardWare or CardWare
Enhancement sale, before the end of the month following each
calendar quarter after the Effective Date of this Agreement. Each
report will accurately set forth the number of units of each
CardWare product or CardWare Enhancement sold, or otherwise
distributed or disposed of by Licensee during such quarter. Each
such report will be accompanied by payment of all royalty amounts
due to Phoenix pursuant to said report. Licensee's obligations to
furnish quarterly royalty reports and to make quarterly royalty
payments to Phoenix will continue as long as Licensee sells or
distributes CardWare products or CardWare Enhancements. Royalty
reports are required even if Licensee reports no such sales or
other distributions or disposals of CardWare products or CardWare
Enhancements. If Licensee stops providing CardWare products or
CardWare Enhancements, Licensee will promptly submit to Phoenix a
written notice, a final quarterly royalty report, a final royalty
payment in the full amount of all royalty amounts due to Phoenix,
and a written certification that it has stopped distributing
CardWare products or CardWare Enhancements to *****. No moneys
paid hereunder are refundable unless specifically provided for in
this Agreement.
(g) Section 10 of the Controlling Agreement shall not apply to CardWare. For
Support, Training, Maintenance and NRE (Section 10), the following
shall apply for the CardWare product:
Licensee has the sole responsibility for supporting and maintaining the
CardWare product and Licensee's Enhancements, and assuring that
maintenance releases of such Enhancements have equivalent functionality
and compatibility with the CardWare product licensed or used by *****.
Licensee will indemnify and hold Phoenix harmless for any Defects that
arise from Licensee's Enhancements. Updates or revisions to the
CardWare product will be supplied to Licensee pursuant to the SCAP
Program identified in Section 10.2 when they are developed and made
available by Phoenix; however, Phoenix shall have no obligation to
develop such updates or enhancements, and any such development is at
the sole discretion of Phoenix.
(h) For CardWare, the following Sections of the Controlling Agreement that
reference Award Software, those Sections shall also apply to the
CardWare product: 1.3, 1.9, 4, 7, 8.1, 9.2, 9.3, 9.4, 11, 12, and all
Appendixes and Exhibits to the Controlling Agreement.
2. Section 11.1, with respect to all products licensed under the Controlling
Agreement (including CardWare), Section 11.1 shall be modified as follows:
"...Phoenix reasonably believes Licensee has not satisfactorily met the
material aspects of the Quality requirements, or has conducted itself
in such a manner that Phoenix reasonably believes may cause harm to
Phoenix, Phoenix will notify Licensee and Licensee will be required to
cure the Quality problem to the reasonable satisfaction of Phoenix,
which shall not be unreasonably denied."
3. Section 11.2, with respect to all products licensed under the Controlling
Agreement, Section 11.2 shall be modified to replace the name "Award" with
the name "Phoenix".
Each Party acknowledges that it has read this Addendum, understands it, and
agrees to be bound by its terms. This Addendum may only be modified by a written
instrument duly executed by authorized representatives of both Parties. The
terms and conditions not stated herein shall be as set forth in the Controlling
Agreement.
Licensee may not assign this Addendum, except as set forth in the Controlling
Agreement and only in conjunction with the Controlling Agreement.
This Addendum is entered into on behalf of the Parties by their duly authorized
representatives as identified below.
Phoenix: Phoenix Technologies Ltd.
Signature:__________________________________
Print Name/Title:___________________________
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Date:__________________________________
Licensee: Unicore Software Inc.
Signature:_____________________________
Print Name/Title:______________________
Date:__________________________________
APPENDIX A (QUALITY GUIDELINES)
TO
SOFTWARE LICENSE LICENSE ADDENDUM
BETWEEN
PHOENIX TECHNOLOGIES LTD.
AND
UNICORE ACQUISITION CORP.
Software Release Policy (Version 1.8a)
Requirements: To release a high quality software product, and provide high
quality service and support to ****** that meets or exceeds specified
requirements for timeliness and performance expectations. Delivery of products
and service to customers shall be made only after all key processes have been
successfully completed and quality control ("Quality") has issued the
appropriate certification.
General Guideline: At each release category (full deployment, intermediate
deployment, early deployment, or engineering), for approved distribution of
software without restrictions, the product must have received a Quality
certification and gone through the release process (KP011) as defined in the
Software Development Handbook, including completion of shipping request in the
release database. To receive a Quality certification the criteria defined below
must be met. If the Product does not pass the Quality certification criteria,
the Quality test report will identify problem areas. Whether the product passes
or fails the criteria, the Quality test report may be distributed to the
customer. Before any software can be released, it must be archived using the
officially sanctioned version control system for that product. For BIOS code,
the versions control tool is PVCS/VCM or Microsoft Visual Source Safe.
Exception Procedures: Exceptions to this policy require a written notification
to the customer, a project management corrective action plan for the exceptions,
and Quality acceptance of the plan. The written notification to the customer
includes all deviations from the key processes, including the areas of design
specification, code reviews, coding, unit test, quality testing, release notes,
list of unresolved defects, and a written schedule for fixing the deviations.
If fixes are not accomplished by the schedule date, within one day the customer
will be notified in writing of new schedule.
Full Deployment Release (FD) Criteria (Defined as fully compliant product for
unrestricted distribution to customers.)
To receive a Full Deployment Quality certification:
The criteria for the intermediate deployment phase continue to apply and
are expanded to include additional criteria.
These checklist items need to be in place.
A. Customer-ready set of Release Notes that has been reviewed and approved
are available.
B. All code is under appropriate version control.
C. The product has been successfully built.
D. The release has all components available, has been fully integrated and
tested for both function and compatibility criteria.
E. Product has successfully completed KP09/10. (Validation testing and
Problems Resolution)
F. The OEM release has been successfully tested on the OEM specific
platform.
G. Complete set of user documentation has been reviewed against the product
and differences noted and resolved.
If SPRs of severity one or two are not resolved, the product cannot be
released. Product must be returned to development engineering for
fixing.
If SPRs of severity three or four are detected in validation testing, a
conditional release is possible under satisfaction of the following
requirements:
A. Customer receives written notification of all known SPRs and accepts
product as is in writing.
B. Phoenix provides customer with written schedule for fixing SPRs.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
The Quality score is no higher than 4.
The product has been successfully deployed in all product lines, including
desktop, notebook, and server, where applicable. For an OEM, the product has
been successfully tested on specific platform.
Intermediate Deployment (ID) Criteria (Defined as broad distribution to primary
users to assess production readiness.)
To receive an Intermediate Deployment Quality certification:
The criteria for the early deployment phase continue to apply and are
expanded to include additional criteria.
These checklist items need to be in place.
A. Customer release notes are available for review.
B. All code is under appropriate version control.
C. All features are fully operational; that is, functions perform as
required by specification.
D. Product has exited KP09/10. Validation testing complete.
E. The OEM release is based on a specific factory CORE code base release.
F. The OEM release has been successfully validated on OEM specific
platform.
G. Preliminary user documentation is complete.
All SPRs of severity 1 and 2 are resolved.
All Severity 3 and 4 SPRs detected by Quality identified and fixes
scheduled.
The Quality score is no higher than 8.
Tested on at least two reference platforms and at least two deployments
platforms, completed with feedback/SPRs complying with intermediate deployment
definition. For OEM, tested on specific platform.
Preliminary Deployment (PD) Release Criteria (Defined as limited distribution to
development partners or OEMs to assess functionality and performance.)
To receive a preliminary deployment Quality certification:
These checklist items need to be in place.
A. Engineering Release notes available.
B. All code is under appropriate version control.
C. The code is architecturally stable; that is, none of the known SPRs
require an architectural change.
D. Product has exited KP08. All features present and code complete. KP09
validation testing complete.
E. The core production release has been tested on at least one reference
platform.
F. The OEM release has been engineering tested on the OEM platform or an
OEM platform that is as similar as possible (functionally and spec-wise)
to the target platform.
G. Preliminary user documentation is provided.
All SPRs of severity 1 and 2 are resolved.
All Severity 3 and 4 SPRs detected by Quality identified and fixes
scheduled.
The Quality score is no higher than 16.
Engineering Release Criteria (Defined as restricted distribution to a target
development partner for early functional evaluation with no quality guarantee.)
This is basically a code drop for a customer and typically only binary code is
provided. As an exception, source code may be provided if under version control
and customer is notified of engineering release status. Typically arrangements
are done under a written contractual agreement between Phoenix and the customer;
that is, NDA is in place, and licensing IP agreement also exists. This category
can also be for "bring-up-BIOS" (early development code with limited
functionality) or for sample source code for training.
The Exception policy described above is used to make this type of release
All code is under appropriate version control.
It must go through the release process (KP011) as defined in the Software
Development Handbook, including completion of shipping request in the release
database.
Release notes are available.
Authorized by appropriate managers with notification to Quality
authorization required from engineering manager or project manager.
Note that there are several types of engineering release deliverables supplied
without Quality testing.
. There is an evaluation BIOS for a prospective customer. Typically, it is
a binary BIOS delivered for evaluations, made up from the development
code base. It is build to support a specific chipset configuration. There
may not be any defined requirements for this evaluation unit.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
. The custom BIOS is for customers requiring special changes to the
standard BIOS. A binary BIOS is delivered. A platform may or may not be
available for testing. Even without a test platform, key processes are
completed: design, design review, code review, build, and release process
KP011.
. The source code release is the delivery of the BIOS source code that
supports a specific configuration that is not available for testing. The
criteria are user documentation, release notes, and component quality
reports.
. Partial source code release results when the customer requests code with
limited and specific functionality. There is no access to the customer
hardware. The criteria are again the completion of the appropriate key
process steps.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
APPENDIX B (SCAP)
TO
SOFTWARE LICENSE AGREEMENT
BETWEEN
PHOENIX TECHNOLOGIES LTD.
AND
UNICORE ACQUISITION CORP.
This Appendix B to the Software License Addendum is entered into by and between
Phoenix Technologies Ltd., a Delaware corporation, ("PHOENIX" herein) and
Unicore Acquisition Corp. ("LICENSEE" herein), and is made with reference to the
following facts and circumstances:
A. PHOENIX and LICENSEE entered into a Software License Agreement
("Software License") that is being executed concurrently with an Asset
Purchse Agreement between PHOENIX, through its subsidiary Award
Software International, Inc ("Award"), and pursuant to which PHOENIX
and LICENSEE entered into a cross licensing arrangement for certain
computer software programs, and Enhancements and Upgrades thereto for
******.
B. Pursuant to Section 10.2 of the Software License, LICENSEE has been
granted the right to obtain access to updates and new revisions
("Updates") to the Award Software that have been developed by or for
PHOENIX, with one means being a Source Code Access Program.
C. PHOENIX and LICENSEE desire to define the terms and conditions
governing LICENSEE's access and use of the Updates via a Source Code
Access Program, as set forth herein.
NOW, THEREFORE, in consideration of the promises and covenants hereinafter
set forth, PHOENIX and LICENSEE agree as follows:
1. SOURCE CODE ACCESS PROGRAM ("SCAP") FOR PHOENIX UPDATES TO AWARD SOFTWARE
a. Source Code Disclosure: Subject to the terms and conditions set out
----------------------
herein, PHOENIX grants to LICENSEE a non-exclusive, and worldwide license
to participate in the Phoenix Source Code Access Program ("SCAP") for
PHOENIX developed Updates to the Award Software, as defined in the Software
License, and to use and modify source code delivered to LICENSEE under the
SCAP for development of Enhancements, pursuant to the terms and
restrictions defined in the Software License, and for no other purpose.
LICENSEE may obtain source code disclosure for all Updates which are, or
will be made, available during the term of the Software License. LICENSEE
shall use the Updates and logical add-on programs only at the sites set out
in the Software License, and as permitted in said Software License and this
Appendix, and for no other purposes whatsoever.
LICENSEE shall not disclose any part of the Updates other than to those
employees who: (i) need to know said source code in order to understand or
modify the Award Software pursuant to the terms and restrictions set forth
in the Software License; and (ii) who have signed an agreement with
LICENSEE obligating them: (a) not to disclose any of the Update source code
except to LICENSEE's employees who have signed similar agreements; and (b)
not to use any part of the Update source code for any other purpose other
than those permitted in the Software Addendun and this Appendix. Phoenix
retains ownership of all intellectual property rights (including patents,
copyrights, trademarks and trade secrets) in and relating to the Updates.
LICENSEE acknowledges that the Updates are trade secrets of Phoenix and
LICENSEE agrees to maintain the Updates in a secure fashion, exercise the
same degree of care to avoid publication and unauthorized use and
disclosure as LICENSEE employs with its own proprietary and confidential
information of a like nature, and take all reasonable precautions to
protect the Updates from theft and unauthorized disclosure or use.
LICENSEE shall promptly report any unauthorized disclosure and take any
further actions to remedy any unauthorized
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
disclosure or use for which LICENSEE or its agents are responsible, as are
reasonably requested by PHOENIX to prevent or remedy any such violation.
The confidentiality provisions of this Appendix shall survive any
termination of this Appendix, and shall continue in effect until such time
as PHOENIX may make the Updates available to the public without
restrictions on disclosure.
b. Review of SCAP: The parties agree that from time to time PHOENIX may
--------------
request and LICENSEE will allow PHOENIX entry to LICENSEE's premises and
access to LICENSEE's records to review the use and internal distribution of
the Updates, to meet with LICENSEE's representatives to discuss such use
and distribution, and to verify that LICENSEE is in compliance with this
Appendix and the terms and conditions of the Software License.
2. SOURCE CODE ACCESS PROGRAM FEES.
In partial consideration for the licenses granted by LICENSEE to PHOENIX
under the Software License, PHOENIX agrees that LICENSEE access to the
Source Code Access Program shall be free of charge, provided LICENSEE is in
compliance with all terms of the Software License.
4. INCORPORATION OF ALL PROVISIONS OF PRIOR AGREEMENT AND SUBSEQUENT APPENDIX.
Except as expressly set forth herein, this Appendix is subject to each and
every provision of the Asset Purchase Agreement and the Software License;
each of which is incorporated herein by reference.
5. ENTIRE AGREEMENT.
This Appendix, and the incorporated Asset Purchase Agreement and Software
License, sets forth the entire agreement and understanding of the parties with
respect to LICENSEE's access and use of Award Software Updates, and supersedes
all prior and contemporaneous oral and/or written agreements, communications,
and understandings relating thereto. Neither party has entered into this
Appendix by reason of or in reliance on any representations of fact or opinion
which are not expressly set forth herein.
IN WITNESS WHEREOF, PHOENIX and LICENSEE have executed this Appendix as of the
day and year first above written.
Phoenix technologies Ltd. Unicore Acquisition Corp.
By:____________________________ By:_______________________________
Name:__________________________ Name:_____________________________
Title:_________________________ Title:____________________________
Date of Signing:______________ Date of Signing:__________________
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
AGREEMENT REGARDING CHANGE IN CONTROL
This Agreement Regarding Change in Control (the "Agreement"), dated as
of March 5, 1999, is made by and between Unicore Software, Inc., a Massachusetts
corporation ("Unicore"), and Phoenix Technologies Ltd., a Delaware corporation
("Phoenix").
WHEREAS, Phoenix and Unicore Acquisition Corporation (now Unicore) are
parties to a Software License Agreement dated as of November 6, 1998 (the
"License Agreement");
WHEREAS, TouchStone Software Corporation, a Delaware corporation
("TouchStone"), and the shareholders of Unicore are parties to an Agreement and
Plan of Acquisition (the "Acquisition Agreement"), dated as of March 5, 1999,
pursuant to which Unicore will be merged (the "Merger") with and into a new
Unicore Acquisition Corp. (the "Merger Sub"), a Delaware corporation and a
wholly-owned subsidiary of TouchStone, with the Merger Sub as the surviving
corporation;
WHEREAS, following the Merger, Merger Sub will change its name to
"Unicore Software, Inc." and will, by operation of law, be subject to all of the
rights and obligations of Unicore, as well as all restrictions imposed on
Unicore;
WHEREAS, pursuant to the terms of the License Agreement, the
consummation of the Acquisition Agreement and the transactions contemplated
thereby may require the consent of Phoenix; and
WHEREAS, Unicore and TouchStone request the
written consent of Phoenix to the Merger.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Following the Merger, in addition to those material breaches
listed in the License Agreement, the occurrence of any of the following shall
constitute a material breach of the License Agreement, giving Phoenix the right
to terminate the licenses granted by Phoenix under the License Agreement upon
satisfaction of the notice and cure provisions set forth in Section 11.2 of the
License Agreement:
(a) the filing by Merger Sub of a voluntary or involuntary petition
to declare insolvency or bankruptcy which is not dismissed within
forty-five (45) days;
(b) the making by Merger Sub of an assignment, including assignments
to Touchstone or any other affiliate or subsidiary of Touchstone,
or other arrangement for the benefit of creditors;
(c) the filing by TouchStone of a voluntary or involuntary petition
to declare insolvency or bankruptcy which is not dismissed within
forty-five (45) days;
(d) the making by TouchStone of an assignment or other arrangement
for the benefit of creditors;
(e) any change in the business model of Merger Sub, Touchstone, or
any subsidiary, affiliate or related entity of Merger Sub or
Touchstone pursuant to which any of the aforementioned entities
develops and markets a product which would be in direct
competition with the Award Software (as defined in the License
Agreement) licensed to Unicore under the License Agreement; or
(f) a change in control or ownership of fifty percent (50%) or more
of the voting stock of Touchstone or Merger Sub (collectively, a
"Change in Control"), if within twenty-one (21) days of its
receipt of written notice of the proposed Change in Control: (i)
Phoenix reasonably determines that the Change in Control would
have a material adverse effect on Phoenix; and (2) Phoenix
delivers written notice to Merger Sub within such twenty-one (21)
day period specifying the basis for its reasonable determination
that the Change in Control would have a material adverse effect
on Phoenix.
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
2. Following the Merger, neither Phoenix nor Merger Sub may assign
its rights under the License Agreement without the other party's written
consent, which shall not be unreasonably withheld or delayed.
3. Phoenix hereby consents to the Merger and the assignment of the
License Agreement, by operation of law, to Merger Sub and executes this
Agreement to effectuate such consent, and for the purposes of the Merger
contemplated herein only, Phoenix, agrees not to exercise its termination right
under Section 11.3 of the License Agreement. Following the Merger, Merger Sub
shall be entitled to the benefit of all rights of Unicore under the License
Agreement and shall be subject to all of the obligations and restrictions of
Unicore under the License Agreement.
4. In the event of any cleanroom or independent development by Merger
Sub of Award Software (as defined in the License Agreement) licensed under the
License Agreement, other than those developments related to Enhancements or
derivative works not otherwise permitted under the terms of the License
Agreement, Phoenix and Merger Sub shall enter into a mutually acceptable license
agreement which shall provide a reasonable royalty to Phoenix for the licensing
and distribution of products based upon said development.
5. The governing law and venue for disputes regarding this Agreement
shall be in accordance with the terms of the License Agreement.
6. This Agreement shall be binding upon and shall inure to the
benefit of the successors and assigns of each of the parties hereto, including
without limitation, Merger Sub, which is a successor of Unicore.
7. Each party acknowledges that it has read this Agreement,
understands it, and agrees to be bound by its terms. This Agreement may only be
modified by a written instrument duly executed by authorized representatives of
both parties. The terms and conditions not stated herein shall be governed by
the terms of the License Agreement.
[Reminder of Page Intentionally Left Blank]
****** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
Executed as an instrument under seal as of the date first set forth
above.
PHOENIX TECHNOLOGIES LTD.
By:__________________________________
Name:
Title:
UNICORE SOFTWARE, INC.
By:__________________________________
Name:
Title:
