EXHIBIT 10.12
Software Distribution Agreement
This Software License Agreement is entered into on December 14, 2001 hereto,
by and between New Mexico Software Inc. ("Licensor") a New Mexico corporation,
with offices at 0000 Xxxxxx Xxxxxx XX, Xxxxxxxxxxx, Xxx Xxxxxx 00000 and Sony
Electronics Inc. ("Licensee"), with offices at 0 Xxxx Xxxxx, Xxxx Xxxxx Xxx
Xxxxxx 00000-0000.
Whereas, Sony has developed a Digital Capture Device and Server to capture,
digitize, store, and transmit images in medical applications, and New Mexico
Software has developed a software system that allows managed storage and
access to digital assets including digital images, and will develop a version
thereof called AMCv1.0 adapted for management of medical images on a single
server at an end user customer site.
Now, Therefore, Licensor and Licensee agree to the terms and conditions
attached hereto establishing their respective rights and obligations relating
to Licensee's distribution of Licensee's Server.
In Witness Whereof, the parties hereto have caused this Agreement to be
executed by their authorized representatives.
Licensee: Licensor:
Sony Electronics Inc. New Mexico Software Inc.
BY: /s/ Xxxxxx Xxxxxx BY: /s/ Xxxxxxx X. Xxxxxxxx
NAME: Xxxxxx Xxxxxx NAME: Xxxxxxx X. Xxxxxxxx
TITLE: SVP TITLE: President
DATE: 1/7/02 DATE: 12/14/01
1. DEFINITIONS. As used in this Agreement, any capitalized term, which is
defined in this Agreement or in the attached Exhibit A (Definitions) of
this Agreement shall have the meaning specified therein.
2. GRANT OF LICENSE
2.1. Licensor hereby grants to Licensee, for the term of this Agreement,
a royalty-bearing, worldwide right and license to, within the Field of
Use:
2.1.1. use the Licensed Software internally for testing purposes;
2.1.2. distribute the Licensed Software to End Users for their
use in connection with a Licensee Server, pursuant to the
End User License Agreement attached hereto;
2.1.3. reproduce and have reproduced the Licensed Software to the
extent reasonably necessary for the exercise of the other
rights granted herein; and,
2.1.4. to market, distribute, reproduce, have reproduced, edit,
translate and modify information and documentation related
to the Licensed Software, to incorporate any such material
into written materials produced by Licensee, and to use
such material to further Licensee's support, maintenance,
development, marketing and distribution efforts in
connection with the Licensed Software;
2.2. Nothing contained herein shall be construed as obligating Licensee
to advertise, market or distribute the Licensed Software.
2.3. Until July 31, 2002, Licensee shall deal exclusively with Licensor
for software having the general capabilities of the Licensed Software
within the Field of Use, and will not distribute, market, or promote
products or services that could reasonably be expected to detract
from actual or potential use of Licensed Software.
3. CONSIDERATION
3.1. Licensee shall pay Licensor the royalty amounts specified in Exhibit
B (Fee Schedule).
3.2. Licensor shall pay all personal property taxes assessed on the
Licensed Software and taxes based on Licensor's net income.
3.3. Within 30 days of the end of each calendar month during the term of
this Agreement, Licensee shall send to Licensor:
3.3.1. a summary report setting forth the number of copies of the
Licensed Software distributed during the preceding month
for which a royalty fee is due;
3.3.2. a computation of royalties due; and
3.3.3. payment of royalties due in U.S. currency.
3.4. Licensee shall maintain records of reproduction and distribution of
all copies of Licensed Software subject to royalty for a period of
two (2) years following the event giving rise to the royalty payment
obligation. Licensee shall also, at Licensor's expense, and subject
to such obligations of confidentiality as the Licensee may reasonably
require, permit a mutually agreed upon certified public accountant
to have reasonable access, at a time mutually agreed to during
Licensee's normal business hours, to audit, on an annual basis,
Licensee's records and books of account which solely relate to
reproduction and distribution of copies of Licensed Software subject
to royalty, for the purpose of determining whether the appropriate
royalties have been paid to Licensor.
Page 2
4. TERM OF AGREEMENT
4.1. The term of this Agreement shall commence as of the date first
above written and extend until July 31, 2002.
4.2 Unless earlier terminated as provided in Section 9, Licensee may
elect to extend the term of this Agreement for an unlimited number
of additional one (1) year terms (subject to the royalty
obligations set forth in Section 3) by Licensee giving Licensor
notice of such election within the ninety (90) day period prior
to the expiration of the then current term.
5. WARRANTY
5.1. Licensor represents and warrants to Licensee that:
5.1.1. Licensor is the true and lawful owner of the Licensed
Software, or, for any of the Licensed Software as to which
it is not the owner, Licensor has the rights necessary for
full performance of Licensee's obligations hereunder; and
5.1.2. during the term of this Agreement Licensor will have full
power and authority to license the Licensed Software to
Licensee and convey all other rights and licenses granted
to Licensee under this Agreement.
6. SUPPORT
6.1. Licensor shall provide Licensee with ongoing support and maintenance
for the Licensed Software pursuant to this Section for the period
and for the fees outlined in Exhibit B.
6.2. For support and maintenance Licensor shall:
6.2.1. have trained support personnel with working knowledge of
the Licensed Software available for telephone consultation
with Licensee's support personnel during Licensor's normal
operating hours;
6.2.2. correct any deviation of the Licensed Software from the
Specification within five (5) days.
6.3. Licensor's obligations to provide support and maintenance are
conditioned upon Licensee:
6.3.1. giving notice to Licensor's support personnel;
6.3.2. using its good faith efforts to convey an accurate
description of the deviation, to reasonably analyze the
potential reasons causing the deviation, and to create an
appropriate environment allowing Licensor to inquire
further about the nature of the deviation.
6.4. After determination that a deviation from the Specification exists
with the Licensed Software, and upon Licensee's reasonable request,
Licensor shall provide a Fix Release to Licensee without additional
charge.
6.5. Both parties shall supply the other party with a current and ongoing
exchange of information relative to any problem encountered by
End-Users pertaining to the Licensed Software. The parties understand
that the right and duty to exchange such information is to be broadly
construed, and may encompass situations that do not call for either
party's response under this Section.
6.6. Licensor's obligations to provide support and maintenance under this
Section shall survive the expiration or earlier termination of this
Agreement by one (1) year.
7. OWNERSHIP RIGHTS
7.1. As between Licensor and Licensee, title to the Licensed Software and
its related documentation created by Licensor and delivered by
Licensor to Licensee pursuant to this Agreement shall remain vested
in Licensor.
Page 3
7.2. Any addition or change to the Licensed Software made by Licensor or
Licensee during the term of this Agreement shall be the property of
Licensor.
8. INDEMNITY
8.1. Licensor shall defend, at its expense, any suit or proceeding brought
against Licensee and End Users, and will pay all damages and costs
awarded in such suit or proceeding, insofar as such suit or
proceeding is based on a claim that the Licensed Software, used
unmodified, for its intended purpose, and in accordance with the End
User License Agreement and this Agreement, infringes any patent,
copyright, trade secret, or any trademark, or misappropriates any
other proprietary right, provided Licensee or the affected End User
gives Licensor prompt notice of any such claim and Licensor is given
reasonable assistance, at Licensor's cost, in such defense.
8.2. In the event that, in any jurisdiction, the Licensed Software is
held in a suit or proceeding to infringe any patent, copyright, trade
secret or trademark, or misappropriate any other proprietary right or
its use is enjoined, Licensor, at its own expense, shall, for Licensed
Software used in that jurisdiction, either: (a) procure for Licensee
the right to continue using the Licensed Software; (b) modify the
Licensed Software so that it becomes noninfringing while still
conforming to the Specification; or, (c) refund all royalties paid
for Licensed Software that infringes or misappropriates, in which
case Licensee's rights in the Licensed Software shall terminate.
9. TERMINATION
9.1. If a party fails to perform any of its obligations under this
Agreement and such failure remains uncured for a period of thirty
(30) days following the non-defaulting party giving the defaulting
party notice thereof, then the nondefaulting party, in addition to
any other rights available to it under law or in equity, may withhold
its performance or may terminate this agreement at any time by giving
the defaulting party notice thereof.
9.2. Notwithstanding Section 9.1, if Licensee is the nondefaulting party
and Licensee terminates this Agreement, the rights, licenses and
options granted herein, notwithstanding such termination, shall
remain in effect to the extent necessary to support and maintain
licenses to End Users already in effect.
9.2. Licenses to End Users already issued shall remain in effect despite
any termination of this Agreement, provided that royalties due
pursuant to Section 3.1 have been paid and that such End Users are
in compliance with the End User License Agreement.
10. SURVIVAL. The respective rights and obligations of the parties pursuant
to Sections 2.3, 3, 5-9, and 11-15 shall survive the expiration or earlier
termination of this Agreement.
11. COPYRIGHT. Any packaging Licensee uses to contain the Licensed Software
(or other software of which the Licensed Software is a part) shall contain
a copyright notice specifying the year(s) of software development and the
notice "copyright New Mexico Software, Inc.," or such other notice as
Licensor shall reasonably direct to conform to applicable law.
12. SOURCE CODE
12.1. Promptly upon Licensor's delivery, and Licensee's acceptance as
meeting the Specification of the Licensed Software in accordance
with the Specification, Licensor shall deposit the Source for
the Licensed Software with an escrow agent (Escrow Agent)
acceptable to both the Licensor and Licensee under the terms
and conditions set forth in an escrow agreement (Escrow
Agreement) acceptable to both Licensor
Page 4
and Licensee, and that such Escrow Agreement shall contain the
release provisions set forth in below. The cost of such Escrow
Agreement will be borne by Licensee.
12.2. Licensor shall update the Source with the Escrow Agent within
ten (10) days after acceptance by Licensee of an object code
copy of the Licensed Software different from the object code
copy previously accepted by Licensee.
12.3. Licensor hereby grants Licensee a contingent license, which is
subject to the conditions in this Section, to use the Source
for support and maintenance purposes only. Licensee shall
disclose the Source only to its employees where such disclosure
is necessary for Licensee's enjoyment of its license to the
Source. The Escrow Agent shall release the Source to Licensee
and this contingent license shall become effective if Licensor,
at any time during the term of this Agreement:
12.3.1. Licensor ceases, for any reason, to do business; or
12.3.2. Licenosor fails to perform its support and maintenance
obligations hereunder and such failure remains uncured
for a period of thirty (30) day following Licensee
giving Licensor notice thereof; or
12.3.3. Licensor commits any act of bankruptcy within the
meaning of the Bankruptcy Code; or
12.3.4. if bankruptcy, receivership, insolvency,
reorganization, dissloution, liquidation, or other
similar proceedings are instituted by or against
Licensor and any of its assigned under any federal
or state law, and are not dismissed within sixty (60)
days.
13. LIMITATION OF LIABILITY
13.1. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOSSES OF ANY
KIND WHICH MAY BE SUFFERED BY THE OTHER. SUCH DAMAGES INCLUDE,
BUT ARE NOT LIMITED TO, COMPENSATION, REIMBURSEMENT OR DAMAGES
ON ACCOUNT OF PRESENT OR PROSPECTIVE PROFITS, EXPENDITURES,
INVESTMENTS OR COMMITMENTS, WHETHER MADE IN THE ESTABLISHMENT,
DEVELOPMENT OR MAINTENANCE OF BUSINESS REPUTATION OR GOODWILL,
OR FOR ANY OTHER REASON WHATSOEVER, INCLUDING, BUT NOT LIMITED
TO, THE CLAIMS OF ANY THIRD PARTY.
13.2. The parties acknowledge that this limitation of liability will
in no way affect either party's right to seek appropriate relief
at law for any death, personal injury or property damage
resulting from the other's negligence, willful misconduct or
strict liability in tort arising out of the subject matter of
this Agreement.
13.3. Licensor warrants that the Licensed Software will conform to
the Specification. Apart from that warranty, the Licensed
Software is made available AS-IS. Except as provided in the End
User License Agreement attached to this Agreement, all other
warranties, including any warranties of MERCHANTABILITY and
FITNESS FOR A PARTICULAR PURPOSE are DISCLAIMED.
14. NOTICE. All notices and other communications required or permitted to be
given under this Agreement shall be in writing and will be delivered
personally, or mailed by registered or certified mail, return receipt
requested, postage prepaid, or by telex, telecopy or other form of
Page 5
rapid transmission, confirmed by mailing as described above, addressed
as follows:
If to Licensee:
Sony Electronics Inc.
0 Xxxx Xxxxx XX-0X0
Xxxx Xxxxx, XX 00000
Attention: Xxxxxx Xxxxx, GM, Business Development
Facsimile # (000) 000-0000
With a copy to:
Sony Electronics Inc.
0 Xxxx Xxxxx
Xxxx Xxxxx, XX 00000
Attention: General Counsel, Law Department
Facsimile # (000) 000-0000
If to Licensor:
New Mexico Software
0000 Xxxxxx Xxxxxx XX
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Attn: Xxxx Xxxxxxxx, CEO
Facsimile # (000) 000-0000
15. GENERAL PROVISIONS
15.1. No right or interest in this Agreement shall be assigned or
subcontracted by Licensor without the prior written consent of
Licensee, and no delegation of Licensor's support and
maintenance obligations under Section 6 may be made without such
consent of Licensee, which consents may be withheld for any or
no reason. Notwithstanding the foregoing, Licensor may assign
its interest in this Agreement to a successor to the entire
portion of its business associated with this Agreement without
the consent of Licensee. Licensor may subcontract the
performance of its support and maintenance obligations under
Section 6.1 to third parties without Licensee's consent but by
giving Licensee notice thereof, so long as Licensor remains
primarily liable to Licensee therefor.
15.2. Either party's waiver of any breach or failure to enforce any
of the terms and conditions of this Agreement at any time shall
not in any way affect, limit or waive such party's right
thereafter to enforce and compel strict compliance with every
term and condition hereof.
15.3. This Agreement shall be deemed to have been made and executed
in the State of New Mexico and any dispute arising hereunder
shall be resolved in accordance with the laws of New Mexico,
without reference to its conflict of laws principles.
15.4. Except as specifically provided in this Agreement, the rights
and remedies of the parties set forth herein shall be
cumulative and in addition to any rights and remedies available
to them at law and/or in equity.
15.5. This Agreement constitutes the complete agreement between the
parties and supersedes all prior communications and agreements
between them with respect to the subject matter hereof and may
not be mofified or otherwise amended except by a further writing
executed by both parties hereto, which writing specifies that
it is an amendment hereto.
Page 6
15.6. This Agreement was drafted with the joint participation of the
parties and/or their legal counsel and any ambiguity contained
herein shall not be construed against any party as the draftsman,
but in accordance with its fair meaning.
15.7. If any provision of this Agreement is held invalied or
unenforceable by any court of final jurisdiction, it is the
intent of the parties that all other provision of this Agreement
be construed to remain fully valid, enforceable, and xxxxxx on
the parties, and that the invalid or unenforceable provision be
severed herefrom only to the extent necessary to correct such
invalidity or unenforceability.
Page 7
Exhibit A - DEFINITIONS
1. End User means an entity which is granted the right to use the Licensed
Software in connection with the Licensee Server, but does not received any
rights to further distribute the Licensed Software.
2. Field of Use means the storage and management of digital images obtained
in the course of providing human health care.
3. Fix Release means any Release provided between Versions primarily to corect
errors and any defects in, or make modifications and enhancements to, the
immediately preceding Version of Licensed Software.
4. Licensed Software means AMCv1.0, as set forth in the Specification.
5. Licensee Server means Licensee's Digital Capture Device and Server.
6. Release means a tested copy of Licensed Software that Licensor delivers to
Licensee. A release letter created by licensor specifying the date of the
Release and the changes therein shall accompany each release.
7. Revision means the initial version of the Licensed Software and subsequent
releases, which contain substantial new features (including but not limited
to significant new functions and/or substantial performance improvements
over the latest prior Revisions), and incorporates all object code
corrections and Fix Releases from the latest prior Revision.
8. Souce means the source code and related documentation for each Fix
Release, Release or Revision of the Licensed Software accepted by Licensee.
The documentation includes the product manual.
9. Specification means the specification for Licnesor's AMCv1.0 software
attached to this Agreement.
10. Version means a rendition of the Licensed Software that is developed to
substantially conform to its own corresponding specification.
Page 8
Exhibit B - FEE SCHEDULE
1. Royalties
1.1. For each installation of the Licensed Software on the Licensee
Servers, Licensee shall provide the End User with a License key
obtained from Licensor. For the first 500 (five hundred)
installations, Licensee shall pay a royalty of $2,000.00 (two
thousand dollars) per installation. From 501 (five hundred and one)
to 1,000 (one thousand) installations, Licensee shall pay a royalty
of $1,500.00 (fifteen hundred dollars), and for all installations
beyond 1,000 (one thousand), Licensee shall pay a royalty of
$1,000.00 (one thousand dollars) per installation.
1.2. Licensee may use the Licensed Software for Backup of the Licensed
Software, archives of the Licensed Software, maintenance of the
Licensed Software, replacement of the Licensed Software, support for
the Licensed Software, development of systems to work in connection
with the Licensed Software, testing of systems including the Licensed
Software, and for demonstrating the Licensed Software to prospective
customers at no charge, all without payment of a royalty fee to
Licensor.
2. Support
2.1. Licensor shall provide programming support to ensure that the
Licensed Software conforms to the Specification at no charge to
Licensee.
2.2. Licensee shall pay Licensor at Licensor's most favorable rates
charged any customer for the same service for any support or
maintenance services, including training and installation assistance.
2.3. Licensor has no obligation to provide features, performance, or
capabilities in the Licensed Software beyond those in the
Specification.
Page 9
