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EXHIBIT 10.21
SOFTWARE LICENSE AGREEMENT
This Software License Agreement ("Agreement"), is made this 16th day of
June, 1998 (the "Effective Date") by and between U S West Communication
Services, Inc., a Colorado corporation and its Affiliates, having a place of
business at 0000 Xxxxxxxx, Xxxxxx, XX 00000 ("U S West"), and Datamatix, Inc., a
Delaware corporation, having a place of business at 000 Xxxx Xxxxxx Xxxx, Xxxx
xx Xxxxxxx, XX 00000 ("LICENSEE").
RECITALS
U S West is the owner of a certain software program as more fully
described in Schedule A, attached hereto and incorporated herein by this
reference; and
U S West and LICENSEE mutually desire to enter into this Agreement
which grants a license to LICENSEE in the software program to accordance with
the provisions hereof.
AGREEMENT
In consideration of the mutual promises and benefits contained herein,
the parties agree to the accuracy of the above recitals and further agree as
follows:
1.0 DEFINITIONS
The following terms are used in this Agreement, as defined in this
Section:
1.1 "AFFILIATE" shall mean an entity which directly, or indirectly
through one or more intermediaries, controls, is controlled
by, or is under common control with U S West. For the purposes
of this Subsection 1.1, "control" means (i) in the case of
corporate entities, direct or indirect ownership of 20% or
more of the stock or shares entitled to vote for the election
of the board of directors or other governing body of the
entity; and (ii) in the case of non-corporate entities, direct
or indirect ownership of 20% or more of the equity interests
of the entity.
1.2 "PROGRAM" shall mean the software program and all related
materials, documentation and information described in Schedule
A.
1.3 "SOURCE CODE" shall mean the Program written in programming
language, including all comments and procedural code, in a
form intelligible to trained programmers and capable of being
translated into Object Code for operation on computer
equipment through assembly or compiling.
1.4 "OBJECT CODE" shall mean the Program assembled or compiled in
digital binary form on software media, which is readable and
usable by machines, but not generally
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readable by unaided humans without reverse assembly, reverse
compiling, or other reverse engineering.
1.5 "DERIVATIVE WORK" shall mean a work that is based on the
Program, such as a revision, enhancement, modification,
translation, abridgment, condensation, expansion, or any other
form in which such preexisting works may be recast,
transformed, or adapted, and that, if prepared without
authorization of the owner of the copyright in such
preexisting work, would constitute a copyright infringement.
For purposes hereof, a Derivative Work shall also include any
compilation that incorporates any portion of the Program.
1.6 "CONFIDENTIAL INFORMATION" shall mean any and all technical
information, know-how, inventions or business information,
including third party information, furnished or disclosed by
one party to the other, in whatever form or medium including,
but not limited to, the Program, Source Code, Object Code,
product/service specifications, prototypes, other computer
programs, models, drawings, marketing plans, financial data,
and personnel statistics, which are marked as confidential or
proprietary by the disclosing party or, for information which
is orally disclosed, the disclosing party indicates to the
other at the time of disclosure the confidential or
proprietary nature of the information and provides a summary
of the orally disclosed information in writing to the
receiving party within twenty (20) days after such disclosure,
which summary is also marked as confidential or proprietary.
The Program in any form or medium and all related
documentation shall be deemed by the parties to be
Confidential Information whether or not marked as confidential
or proprietary.
1.7 "DISPUTE" shall mean any claim, controversy or dispute of any
kind or nature whatsoever arising between the parties
hereunder.
2.0 GRANT OF LICENSE
2.1 Subject to the terms and conditions of this Agreement, U S
West hereby grants to LICENSEE a non-exclusive,
non-transferable (except as allowed under the provisions of
Subsection 13.1 below), perpetual, personal license to use,
copy, and create Derivative Works based on the Program, in
Object and Source Code forms, solely for its internal business
purposes.
2.2 LICENSEE shall own all right, title and interest in and to all
Derivative Works that LICENSEE creates or has created.
2.3 U S West shall retain all right, title and interest in and to
the Program subject to the license granted hereunder. The
Program may not be copied, used, modified or distributed for
any purpose other than as expressly authorized under this
Agreement.
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2.4 LICENSEE shall provide U S West, Inc. and its wholly owned
subsidiaries any services it offers its customers that use the
Program, or any Derivative Works thereof, at no charge.
3.0 PAYMENT
3.1 In consideration of the license granted by U S West to
LICENSEE under Section 2 above, LICENSEE shall pay to U S West
all amounts when due in accordance with Schedule B, attached
hereto and incorporated herein by this reference ("Payments").
All Payments are to be made in United States dollars.
3.2 Payments to U S West shall be made payable to "U S West
Communication Services Inc.," and shall be submitted to 0000
Xxxxxxxx, 0xx Xxxxx, Xxxxxx, XX 00000, Attention Miles
Morimoto, or at such other address as U S West may specify by
written notice.
3.3 All Payments specified under this Agreement do not include
duties, taxes, withholdings, assessments, surcharges,
value-added taxes, or any other charges imposed by the United
States or any foreign government or any other United States or
foreign taxing authority (collectively, the "Taxes") and
LICENSEE shall pay or reimburse U S West to a like amount if
withheld from Payments due U S West. Any Taxes payable by
LICENSEE which U S West may be required to collect or pay upon
provisions of this license of the Program or any other
services, shall be paid by LICENSEE upon U S West's written
demand. LICENSEE agrees to indemnify and hold U S West
harmless from and against all liability, costs, expense, and
penalties for LICENSEE's failure to timely pay any Taxes.
Notwithstanding this Subsection 3.3, LICENSEE shall not be
responsible for income taxes which may be payable by U S West.
3.4 If LICENSEE fails to pay any amounts due under this Agreement
within sixty (60) days, LICENSEE shall pay to U S West
interest on such past due amounts from the date due until paid
at the rate of one and one half percent (1-1/2%) of the unpaid
balance per month or, where a lower rate is prescribed by law,
the highest rate thereby permitted. In the event of such
nonpayment, U S West may at its option, and in addition to any
other right which it has under this Agreement at law or in
equity, terminate this Agreement and the licenses granted
hereunder for default under the provisions of Section 9.0
below.
4.0 LIMITED SUPPORT
U S West shall provide LICENSEE the limited support services in
accordance with Schedule C, attached hereto and incorporated herein by
this reference.
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5.0 RECORDS AND REPORTS
5.1 LICENSEE shall keep complete and accurate records and books of
account containing all information required for the
computation and verification of the amounts to be paid
hereunder. Such records and books shall be maintained by
LICENSEE in accordance with legal restrictions, but in any
case no less than three (3) years after termination of this
Agreement.
5.2 LICENSEE further agrees, upon at least ten (10) business days
prior written notice from U S West, to permit one or more
accountants selected by U S West to have access during
ordinary business hours to such records as may be necessary to
audit with respect to any payment prior to such request, the
correctness of any report or payment made under this
Agreement, to obtain information as to the payments due for
any such period in the case of failure of LICENSEE to report
or make payment pursuant to the terms of this Agreement. Such
accountant shall not disclose to U S West any information
relating to the business of LICENSEE except that which is
necessary to inform U S West of (i) the accuracy or inaccuracy
of LICENSEE's payments; (ii) compliance or noncompliance by
LICENSEE with any other terms and conditions of this
Agreement; and (iii) the extent of any such inaccuracy or
noncompliance. Such accountant shall have the right to make
and retain copies of any pertinent portions of the records and
books of account. U S West shall bear the cost of any audits
under this Agreement; provided, however, that if the audit
determines that LICENSEE has underpaid to U S West in an
amount of Ten Thousand Dollars ($10,000.00) or more, LICENSEE
shall reimburse U S West for the cost of such audit.
5.3 LICENSEE shall provide U S West with a written statement of
account to accompany the Payments made to U S West in
accordance with Section 3.0 above.
6.0 LIMITED WARRANTY
6.1 U S West warrants that it has full power and authority to
enter into this Agreement.
6.2 EXCEPT FOR THE LIMITED WARRANTY SET FORTH ABOVE, THE PROGRAM
IS LICENSED HEREUNDER "AS IS," AND U S West DISCLAIMS ANY AND
ALL WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING (WITHOUT
LIMITATION) ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE PROGRAM WILL
OPERATE ERROR-FREE.
6.3 U S West disclaims any on-going obligations to LICENSEE to
support, maintain, enhance, or update the Program, subject to
Section 4.0 above.
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7.0 LIMITATION OF LIABILITY
U S WEST, ITS RESPECTIVE EMPLOYEES, OFFICERS, DIRECTORS,
REPRESENTATIVES AND AGENTS (HEREINAFTER COLLECTIVELY CALLED "THE
GROUP") SHALL HAVE NO LIABILITY TO LICENSEE FOR ANY DAMAGES, LOSSES, OR
EXPENSES INCLUDING BUT NOT LIMITED TO ANY DIRECT, INDIRECT, SPECIAL,
CONSEQUENTIAL, INCIDENTAL, EXEMPLARY, PUNITIVE OR OTHER INDIRECT
DAMAGES, OR LOSS OF PROFITS. LOSS OF USE OR LOSS OF DATA, HOWSOEVER
CAUSED OR ARISING AND REGARDLESS OF LEGAL THEORY OR FORESEEABILITY.
8.0 CONFIDENTIALITY
8.1 Each party agrees to hold all Confidential Information other
than that which describes and/or embodies the Program in
confidence for a period of three (3) years after the date of
disclosure. However, Confidential Information comprising the
description and/or embodiment of the Program shall be held in
confidence for so long as it is confidential to, or a trade
secret of, U S West. During such period each party will use
Confidential Information solely for the purposes of this
Agreement unless otherwise allowed herein or by written
permission of the disclosing party. Each party agrees not to
copy such Confidential Information of the other unless such
party is otherwise licensed to so copy or unless, specifically
authorized by the disclosing party. Each party agrees that it
shall not make disclosure of any such Confidential Information
to anyone except its employees for the purposes set forth
above. Each party shall appropriately notify each such
employee that the disclosure is made in confidence and shall
be kept in confidence in accordance with this Agreement.
Notwithstanding the previous limitation on disclosure,
disclosure may be made to subcontractors of a party and as
permitted under this Agreement but only if such subcontractor
has previously signed a confidentiality agreement in which the
subcontractor agrees to be bound by provisions at least as
restrictive as those contained in this Section 8.0. Each party
also agrees that it will make requests for Confidential
Information of the other party only if necessary to accomplish
the purposes set forth in this Agreement. The obligations set
forth herein shall be satisfied by each party through the
exercise of the same degree of care used to restrict
disclosure and use of its own information of like importance,
but not less than is reasonable under the circumstances.
8.2 Each party agrees that in the event permission is granted by
the other to copy such Confidential Information, each such
copy shall contain and state the same confidential or
proprietary notices or legends, if any, which appear on the
original. Except as provided in this Agreement, nothing herein
shall be construed as granting to either party any right or
license under any copyrights, inventions, or patents now or
hereafter owned or controlled by the other party.
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8.3 Upon termination of this Agreement for any reason or upon
request of the disclosing party, all Confidential Information,
together with any copies of same as may be authorized herein,
shall be returned to the disclosing party or certified
destroyed by the receiving party. The requirements of use and
confidentiality set forth herein shall survive the termination
of this Agreement as provided above.
8.4 The obligations imposed in this Agreement regarding
Confidential Information shall not apply to any information
which:
(i) is already in the possession of the receiving party
and is documented in written records in its
possession prior to such disclosure; or
(ii) is independently developed by the receiving party
without reliance on or access to Confidential
Information hereunder, and is documented in written
records in its possession; or
(iii) is or becomes publicly available through no fault of
the receiving party; or
(iv) is obtained by the receiving party from a third
person who is under no obligation of confidence to
the party whose Confidential Information is
disclosed; or
(v) is disclosed without restriction by the disclosing
party.
9.0 TERMINATION
9.1 Either party has the right to terminate this Agreement if the
other party breaches or is in default of any material
obligation hereunder, which default is incapable of cure or
which, being capable of cure, has not been cured within
forty-five (45) days after receipt of written notice of such
default from the non-defaulting party or within such
additional cure period as the non-defaulting party may
authorize in writing.
9.2 Either party may terminate this Agreement by written notice to
the other party, and may regard the other party as in default,
if the other party becomes insolvent, makes a general
assignment for the benefit of creditors, suffers or permits
the appointment of a receiver for its business or assets,
becomes subject to any proceedings under any bankruptcy or
insolvency law (which has not been terminated within thirty
(30) days of any filing) whether domestic or foreign, or has
wound up or liquidated, voluntarily or otherwise.
9.3 Upon termination of this Agreement, there shall be no refund,
in whole or in part, of any Payments already made, and
LICENSEE shall make all Payments in accordance
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with Section 3.0 above which may be due or may have accrued up
to the date of termination.
9.5 Upon termination of this Agreement, the licenses granted to
LICENSEE shall immediately terminate and LICENSEE shall return
to U S West all copies of the Program and any associated
documentation as set forth in Section 8.3 above.
9.6 Termination of this Agreement shall be in addition to any
other right or remedy which the terminating party may have
either at law or in equity or under this Agreement.
10.0 EXPORT
LICENSEE acknowledges that the Program may be subject to United States
re-export regulations. Specifically, LICENSEE agrees and certifies that
the Program, technical data or information provided by U S West, or the
direct product thereof, will not be re-exported except as permitted by
United States laws and regulations, and the prior written authorization
of U S West. LICENSEE shall be solely responsible for compliance with
all laws and regulations applicable to export of the Program outside of
the United States of America. LICENSEE shall defend and indemnify U S
West against any costs, expenses, fines and other liability for failure
to so comply, provided that U S West shall cooperate with all
reasonable requests from LICENSEE for information.
11.0 PUBLICITY
No identification of the other party, reference to the other party or
reference to the other party's names, codes, drawings or specifications
will be used in any advertising or promotional efforts in reference to
activities undertaken hereunder without the other party's prior written
permission. Each party agrees to indemnify the other against any claim
arising out of its failure to do so.
12.0 DISPUTE RESOLUTION
12.1 If a Dispute arises hereunder and such Dispute cannot be
settled through negotiation, the parties agree to resolve the
matter through binding arbitration. Federal law shall govern
the arbitrability of all claims.
12.2 A single arbitrator engaged in the practice of law, who is
knowledgeable about the subject matter of this Agreement and
the matter in dispute, shall conduct the arbitration under the
then-current Commercial Arbitration Rules of the American
Arbitration Association ("AAA") unless otherwise provided
herein. The arbitrator shall be selected in accordance with
AAA procedures from a list of qualified people maintained by
the AAA. The arbitration shall be conducted in a city selected
by the
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party the Dispute is being brought against and all expedited
procedures prescribed by the AAA rules shall apply. The laws
of the State of Colorado, United States of America, shall
govern the construction and interpretation of this Agreement.
12.3 Either party may request from the arbitrator injunctive relief
to maintain the status quo until such time as the arbitration
award is rendered or the Dispute is otherwise resolved. The
arbitrator shall not have authority to award punitive damages.
12.4 Each party shall bear its own costs and attorneys' fees, and
the parties shall share equally the fees and expenses of the
arbitrator. The arbitrator's decision and award shall be final
and binding, and judgment upon the award rendered by the
arbitrator may be entered in any court having jurisdiction
thereof.
12.5 If any party files a judicial or administrative action
asserting claims subject to arbitration, as prescribed herein,
and the other party successfully stays such action and/or
compels arbitration of said claims, the party filing said
action shall pay the other party's costs and expenses incurred
in seeking such stay and/or compelling arbitration, including
reasonable attorneys' fees.
13.0 GENERAL
13.1 This Agreement is for the benefit of U S West and LICENSEE and
not for any other person. The rights, duties and privileges of
LICENSEE hereunder shall not be transferred or assigned by it
either in part or in whole without prior written consent of
US West. However, LICENSEE shall have the right to transfer
its rights, duties and privileges under this Agreement in
connection with its merger and consolidation with another firm
or the sale of substantially all its business to another
person or firm, provided that such person or firm shall first
have agreed with U S West to perform the transferring party's
obligations and duties hereunder. U S West may transfer or
assign this Agreement to an Affiliate or successor.
13.2 The relationship of U S West and LICENSEE established by this
Agreement is of licensor and licensee, each to constitute an
independent contractor. Nothing in this Agreement shall be
construed to give either party the power to direct or control
the daily activities of the other party, or to constitute the
parties as principal and agent, employer and employee,
partners, joint ventures, co-owners, or otherwise as
participants in a joint undertaking. U S West and LICENSEE
understand and agree that, except as specifically provided in
this Agreement, U S West does not grant LICENSEE the power or
authority to make or give any agreement, statement,
representation, warranty, or other commitment on behalf of U S
West, or to enter into any contract or otherwise incur any
liability or obligation, express or implied, on behalf of U S
West, or to transfer, release, or waive any right, title, or
interest of U S West.
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13.3 A term or condition of this Agreement can be waived or
modified only with the written consent of both parties.
Forbearance or indulgence by either party in any regard shall
not constitute a waiver of the term or condition to be
performed, and either party may invoke any remedy available
under this Agreement, at law or in equity, despite such
forbearance or indulgence.
13.4 Any notice, demand or other communication required or
permitted to be given to either party to this Agreement shall
be in writing and shall be either personally delivered by hand
or delivered by prepaid courier or sent by electronic means
such as facsimile, telex or electronic mail, charges prepaid
and confirmed by prepaid registered mail. Any notice
personally delivered or delivered by courier shall be deemed
received upon delivery. Any notice sent by electronic means
shall be deemed received upon the date the sending terminal
confirms that the notice was received by the receiving
terminal. Any notice required or permitted to be given to
either party shall be delivered or sent to:
U S West Communication Service, Inc.
0000 Xxxxxxxx, 0xx Xxxxx
Xxxxxx, XX 00000
Attn.: Miles Morimoto
Director Transaction Services
LICENSEE
000 Xxxx Xxxxxx Xxxx
Xxxx xx Xxxxxxx, XX 00000
Attn.: Xxxxxxx X. Xxxxxx
Vice President, Sales & Marketing
cc: U S West
0000 Xxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attn.: Intellectual Property & Technology
Transfer Office
The address at which notice may be given to a party may be
changed by such party giving notice to the other party as
provided in this Subsection 13.4.
13.5 Headings are inserted for convenience of reference only and
shall not be used for the purpose of interpreting this
Agreement.
13.6 The rights and obligations of the parties which by their
nature would be expected to survive termination or expiration
of this Agreement shall so survive.
13.7 Neither party shall be liable for delay or failure in
performance resulting from acts beyond the control of such
party, including but not limited, and whether similar or
dissimilar, to acts of God, acts of war, riot, fire, flood or
other disaster, acts of government, strike, lockout,
communication line or power failure. Either party may delay
delivery or performance occasioned by causes beyond control of
such party in
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accordance with this Subsection 13.7. If such delay exists
beyond a period of sixty (60) calendar days, either party, at
its option, shall have the right to terminate this Agreement,
in whole or in part.
13.8 This Agreement, or portion thereof, may be terminated or
modified by written agreement of the parties in the event of
any notification from the United States Government, or any
judicial statement, whether by appealable order, final
judgment or otherwise that the terms, conditions, or
performance of obligations hereunder are inconsistent with the
terms of the Telecommunications Act of 1996 or other
applicable laws.
13.9 This Agreement and matters connected to the performance
thereof shall be construed, interpreted, applied and governed
in all respects in accordance with the laws of the State of
Colorado.
13.10 This Agreement, appendices and any schedule attached hereto,
when initialed or signed by both parties, contain the complete
and exclusive statement of the agreement between the parties,
and supersedes all prior and contemporaneous agreements,
understandings, proposals, negotiations, representations or
warranties of any kind whether oral or written with respect to
the subject matter hereof. No oral or written representation
that is not expressly contained in this Agreement is binding
on U S West or LICENSEE.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement on
the dates set forth below.
U S WEST LICENSEE
Accepted By: Accepted By:
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Name Name
V.P. Internet Services V.P. Sales & Marketing
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Title Title
6/22/98 6/24/98
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Date Date
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