SOFTWARE LICENSE AGREEMENT
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This SOFTWARE LICENSE AGREEMENT (the "Agreement") is entered into this 28th
day of May, 1999, by and between MAVERICK INTERNATIONAL PROCESSING SERVICE,
INC., an Arizona corporation with its principal place of business at 0000 X.
Xxxxxxxx Xxxxxxxxx, Xxxxxx, Xxxxxxx 00000 (the "Licensor") and U.S. WIRELESS
DATA, INC., a Colorado corporation with its principal place of business at
Watergate Tower II, 0000 Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000-0000
(the "Licensee").
RECITALS
WHEREAS, Licensor is the owner of certain computer software programs
and related documentation pertaining to the authorization and capture of data
transactions originating with the use of payment cards; and
WHEREAS, Licensor desires to grant to Licensee, and Licensee desires to
obtain a non-exclusive, fully paid license to use certain of those programs on
the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
covenants contained herein, the parties agree as follows:
1. Grant of License.
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1.1 License. Licensor hereby grants to Licensee, and Licensee hereby
accepts, subject to the terms and conditions set forth in this Agreement, a
non-exclusive, non-transferable, perpetual license in the United States to (a)
use the StrongBox(TM) payment authorization and data capture software developed
and owned by Licensor and any changes or additions thereto made pursuant to
Section 3 below (the "Licensed Software"); and (b) use any documentation
developed by Licensee relating to the Licensed Software. Licensed Software shall
include documentation, scripts, database stored procedures, and binary
executable code. Licensed Software does not include any Source Code. "Source
Code" means the version of the Licensed Software in assembly language or
high-level language which must be assembled or compiled so that a computer can
execute the program.
1.2 Title to Software. The Licensed Software shall remain the exclusive
property of Licensor. Licensee shall not acquire any title to or ownership of
the Licensed Software under or by reason of this Agreement or any
customizations, enhancements or upgrades that might be made by Licensor at the
request of Licensee.
Licensee will ensure that all copies of the Licensed Software are
conspicuously marked with Licensor's copyright notice as follows:
"This Product has been provided and may be used only under the
terms and conditions of an Agreement, which includes restrictions
on copying and transfer to third parties. No title or ownership to
this Product is hereby transferred."
(C)Maverick(R) International Processing Services, Inc. 1999
2. License Fee.
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2.1 Issuance of Stock. In consideration of Licensor's granting of the
License, Licensee shall grant to Licensor three hundred thousand (300,000)
shares of Licensee's common stock ("Stock"), having an expected market value of
One Million Dollars ($1,000,000) to be delivered no later than thirty (30) days
after the date of this Agreement (the "Delivery Date"). If the market value of
Stock is less than $3 1/3 per share, (split-adjusted) at the Delivery Date,
Licensee shall deliver sufficient additional Stock of up to seventy-five
thousand (75,000) shares to return the aggregate market value to One Million
Dollars ($1,000,000). If the market value of Stock is less than $2 2/3 per share
(split-adjusted) at the Delivery Date, the total consideration received under
this Agreement shall be limited to 375,000 shares multiplied by the applicable
market value per share. The Licensee's Common stock will have a restrictive
legend attached and be subject to the terms and conditions of rule 144 of the
securities act.
3. Updates and Maintenance.
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3.1 Upon the completion of any maintenance or enhancements to the
Licensed Software made by Licensor for its own benefit during the term of the
Management Services Agreement (an "Update"), such Update shall be installed on
the Maverick Systems and operated for Licensor and shall be automatically
included in the license granted herein to Licensee, at no extra charge, unless
such Update was developed or created at Licensee's request, in which event
Licensee shall pay to Licensor a fee of Licensor's direct development cost plus
25% markup for the development of such Update. In the event Licensee has paid
Licensor for the Update and Licensor subsequently wishes to use the Update for
its own benefit, Licensor shall reimburse Licensee for one-half of the
development fee. Notwithstanding any request for development or payment of a
development fee by Licensor, the resulting Update shall remain the sole and
exclusive property of Licensor.
4. Installation and Operation of Licensed Software.
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4.1 Designated Site. During the term of the Management Services
Agreement the Software shall reside only on systems belonging to or under the
control of Licensor (the "Maverick System") and will be operated by Licensor on
behalf of Licensee under the terms of said agreement. Upon termination of the
Management Services Agreement, Licensee may designate a single domestic site
where it wishes to have the Software installed (the "Designated Site") and shall
provide written notice of the date upon which it wishes the software to be
delivered (the "Delivery Date"); provided, however, such notice shall be given
no later than one hundred eighty (180) days prior to the Delivery Date." In the
event of a termination for cause by USWD, the Delivery Date shall be no more
than thirty (30) days after such termination. Licensor will deliver two (2)
copies of the production version of the Licensed Software as it exists as of
fourteen (14) days prior to the Delivery Date and will install one (1) copy at
the Designated Site promptly but no later than fourteen (14) business days after
the Delivery Date.
4.2 Licensee to Prepare Designated Site. Licensee shall arrange to have
the Designated Site prepared and ready for installation of the Licensed
Software, at Licensee's sole expense. Licensor agrees that its cost for any
assistance in site preparation, installation and training shall be limited to
its direct costs, including, but not limited to salary and benefits for
personnel and out-of-pocket travel expenses, plus a markup of twenty-five
percent (25%).
4.3 Hardware. Promptly upon receipt of notice of the Delivery Date,
Licensor shall advise Licensee concerning the specifications and requirements
for (a) all hardware and
related installation systems, needed to be installed by
Licensee at the Designated Site in order to operate the Licensed Software and
(b) all operating systems, utilities or other supporting software that, in
Licensor's reasonable judgment are required for proper operation of the Licensed
Software. Licensee shall be solely responsible, at its sole cost and expense,
for the acquisition of all hardware to create the system on which the Licensed
Software is to be installed (the "USWD System"), all electrical cabling
necessary to install the USWD System and all work necessary to provide such
cabling and electrical power for that system. In the event of any conflicts
between the written environmental or technical specifications provided by
Licensor and those of any manufacturer of hardware being used for the USWD
System, Licensee shall follow the specifications of the manufacturer of such
hardware.
4.4 Maintenance. After delivery of Licensed Software, Licensor shall
perform maintenance for processing updates mandated by Visa, U.S.A., Inc. and
MasterCard International, Inc. only. Terms and conditions for such maintenance
are contained in the Software Maintenance Agreement that is Exhibit A attached
hereto and is hereby incorporated by reference into this Agreement. After
delivery, Licensee shall be have the right, subject to Exhibit A, to customize,
update or develop modifications and improvements to the Licensed Software, or
retain the services of a third party to do so on its behalf, in which case the
derivative copyrights relating to such updates, customizations and modifications
shall be the property of Licensee or such third party, although Licensee shall
not acquire any title or ownership of the underlying Licensed Software by reason
thereof.
5. Confidential Information and Non-Disclosure.
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Licensor and Licensee each acknowledges that in the course of performing its
obligations hereunder, it may receive, develop or otherwise acquire certain
information that the other party deems as its proprietary and confidential
information ("Confidential Information"). All Confidential Information of a
party that the other party may now possess, may obtain during or after the
performance of this Agreement will be held confidential by the receiving party,
and that party will not (nor will it assist any other person to do so) directly
or indirectly reveal, report, publish or disclose such Confidential Information
to any person, firm or corporation not expressly authorized by the party owning
such Confidential Information to receive such Confidential Information, or use
(or assist any person to use) such Confidential Information except (a) for the
benefit of the party owing the Confidential Information and in the course of
performing it obligations hereunder, or (b) as necessary to fulfill any
obligations of the revealing party under this Agreement; provided, however, that
the forgoing will not apply to the extent that either party is required to
disclose Confidential Information of the other party by applicable law or legal
process so as the revealing party promptly notifies the other party of such
pending disclosure and consults with that party prior to such disclosure
concerning the advisability of seeking a protective order or other means of
preserving the confidentiality of the Confidential Information. Each party
acknowledges that the Confidential Information of the other party is important
and unique to that party and that it materially affects the party's goodwill and
its successful conduct of business. Licensee shall not, nor help others to,
reverse engineer, decompile, create or attempt to create the Source Code of the
Licensed Software.
6. Licensor's Representations and Warranties.
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Licensor hereby makes the following representations and warranties to Licensee:
6.1 Licensor is the owner of the Licensed Software, with the right and
authority to convey and grant the license granted to Licensee herein.
6.2 Licensee's use of the Licensed Software as contemplated in this
Agreement will not infringe any third party's proprietary rights.
7. Warranties.
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7.1 Conformance to Specifications. Licensee acknowledges that all
Licensed Software is the same software that will have been utilized by Licensor
in the operation of its payment processing business during the term of the
Management Services Agreement and that all Licensed Software, whether existing
at the time of execution of this Agreement or an Update as set forth herein,
will have been installed, tested and operated by Licensor for the benefit of
Licensor for an undetermined period of time before the Delivery Date and that,
as a result of such prior operation, Licensor shall have direct knowledge of the
features, functions and operability of the software. Therefore, Licensor makes
no warranties, written or implied, and specifically disclaims any warranties for
merchantability or fitness for a particular purpose, regarding Licensed
Software. Further, Licensor makes no warranties, written or implied, regarding
the operation of the Licensed Software on the USWD System. Licensor does not
warrant the operation of any hardware, firmware, operating systems, utilities or
other supporting software constituting the USWD System and utilized in
conjunction with the Licensed Software. Licensor acknowledges that hardware or
firmware problems may adversely affect the operation of the Licensed Software
and that Licensor shall not be responsible for such problems.
7.2 Physical Media Warranty. Licensor warrants to Licensee, subject to
limitations regarding the USWD System set forth in Section 7, that each copy of
the Licensed Software provided by Licensor to Licensee is and will be free from
physical defects in the media that tangibly embodies the copy (the "Physical
Media Warranty"). The Physical Media Warranty does not apply to defects
discovered more than thirty (30) calendar days after the date of delivery of the
copy by Licensor.
(a) The Physical Media Warranty does not apply to defects
arising from acts of non-Licensor personnel, misuse, theft, vandalism,
fire, water, acts of God or other peril.
(b) Licensee's sole remedy for breach of the Physical Media
Warranty, to the exclusion of all other remedies therefor, will be
replacement by Licensor of any copy provided by Licensor that does not
comply with the warranty at Licensor's expense, including shipping and
handling costs.
7.3 No Surreptitious Code Warranty.
(a) Licensor warrants to Licensee that no copy of the
Licensed Software provided to Licensee by Licensor contains or will
contain any Self-Help Code nor any unauthorized Code (as defined
below) (the "Surreptitious Code Warranty"); provided, however, this
warranty specifically excludes any Self-Help Code that might reside in
the Licensed Software by virtue of the use of third-party compilers,
utilities and programming tools in the development of the Licensed
Software. (b) As used in this Agreement, "Self-Help Code" means any
back door, time bomb, drop dead device or other software routine
designed to disable a computer program automatically with the passage
of time or under the positive control of a person other than a
licensee of the program. Self-Help Code does not include software
routines in a program, if any, designed to permit Licensor (or other
person acting by authority of Licensor) to obtain remote access to
Licensee's computer systems via modem for purposes of maintenance or
technical support.
(c) As used in this Agreement, "Unauthorized Code" means
any virus Trojan horse, worm or other software routines or hardware
components designed to permit unauthorized access; to disable, erase
or otherwise harm software, hardware or data; or to perform any other
such actions. The term Unauthorized Code does not include Self-Help
Code.
8. Responsibility for Use.
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Licensee shall take all reasonable and necessary actions to establish back-up
and other protective measures to insure the protection and retention of its data
and information. Licensor assumes no responsibility for Licensee's negligence or
failure to take reasonable measures to protect the Licensed Software or
Licensee's data from inadvertent modification, deletion, destruction or
disclosure.
9. Patent, Trade Secret and Copyright.
-----------------------------------
9.1 Licensor warrants that the intellectual and industrial property
rights of the Licensed Software are vested in Licensor and that Licensor is not
in any way restricted from granting rights to use the Licensed Software as
foreseen in this Agreement.
9.2 Licensor shall hold harmless and indemnify Licensee against all
claims from third parties regarding infringement of intellectual and industrial
property rights concerning the use of the Licensed Software as foreseen in this
Agreement. If a third party brings any action against Licensee, Licensor shall
take over all conduct of the claim and all settlements (including the judicial
costs) at its own expense. Licensee is obliged to notify Licensor in writing
immediately upon receipt of any such claim giving full details, and may make no
statements prejudicial to Licensor unless forced thereto according to Arizona
law. In no event shall Licensee settle any such claims, lawsuit or proceedings
without Licensor's prior written approval. Licensee shall cooperate with
Licensor in the defense of any claim, lawsuit or proceeding.
9.3 If as the result of legal action or otherwise it is proven that use
of the Licensed Software by Licensee infringes the intellectual and industrial
property rights of a third party, Licensor shall at its own discretion and at no
charge to Licensee:
(a) Acquire continued rights of use for Licensee; or
(b) Alter or exchange the Licensed Software in such a way that
the infringement ceases. Such alteration or exchange may not lead to
the Licensed Software's no longer satisfying the applicable
specifications. Licensor's and Licensee's other rights and obligations
under this Agreement will apply without limitation to the parts of the
Licensed Software thus altered or exchanged.
The foregoing constitutes the entire liability of Licensor with respect
to infringement of any patents, trademarks, copyrights, licenses or other third
party proprietary right by Licensed Software.
9.4 Licensor shall not be liable for infringements of intellectual and
industrial property rights if Licensee has altered any part of the Licensed
Software as such software existed as of the Delivery Date, and such alterations
are the direct cause of the infringement. If a third party brings any action
against Licensor, Licensee shall take over all conduct of the claim and all
settlement (including the judicial costs) at its own expense. Licensor is
obligated to notify Licensee in writing immediately upon receipt of any such
claim giving full details, and may make no statements prejudicial to Licensee
unless forced thereto according to Arizona law.
9.5 Licensee shall indemnify and hold harmless Licensor from any claim
by any party, other than those claims stated in this Section 9, arising or
related to Licensee's own activities concerning the use of Licensed Software.
10. Default and Termination for Cause.
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10.1 Failure by Licensor or Licensee to comply with any material term
or condition under this Agreement shall entitle the other party to give the
party in default written notice requiring it to make good such default;
provided, however, that if Licensee violates any of the conditions of Section 9,
this Agreement shall terminate immediately. If the party in default has not
cured such default within thirty (30) days of such notice, the notifying party
shall be entitled, in addition to any other rights it may have under this
Agreement, or otherwise under law (except as limited by this Agreement), to
terminate this Agreement by giving written notice to take effect immediately.
10.2 The right of either party to terminate this Agreement hereunder
shall not be affected in any way by is waiver or failure to take action with
respect to any previous default.
10.3 Upon the termination of this Agreement for a breach by Licensee,
Licensee shall return the Licensed Software and any documentation relating
thereto, and all copies thereof, to Licensor and shall certify that it no longer
has any right to use the Licensed Software. No part of any license fee shall be
returned to Licensee upon termination unless caused by Licensor's default. The
term "default" as used in this Agreement shall include the institution of
proceedings by or against either party under federal or state bankruptcy laws,
or an assignment or receivership for the benefit of creditors.
11. Applicable Law and Disputes.
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This Agreement shall be governed by and construed in accordance with the laws of
the State of Arizona. If a dispute concerning this Agreement arises, the parties
will first meet and attempt to resolve the matter in good faith. If such
resolution is not possible, the dispute will be submitted to the competent court
in Tucson, Arizona.
12. Additional Terms and Conditions.
--------------------------------
12.1 This Agreement forms the only correct and complete representations
with respect to what has been agreed between Licensor and Licensee regarding the
subject matter contained herein. Any previous representations, communications
and/or agreement, whether written or verbal, are superseded by this Agreement.
12.2 No changes may be made to this Agreement unless made in writing
and signed by the duly authorized representatives of both parties. The failure
of any party to enforce any of its rights hereunder shall not be deemed to be a
waiver of such rights, unless such waiver is an express written waiver which has
been signed by the waiving party. Waiver of any one breach shall not be deemed
to be a waiver of any other breach of the same or any other provision hereof.
12.3 Any notice herein required or permitted to be given shall be in
writing or by facsimile transmission with subsequent written confirmation, and
may be personally serviced or sent by United States mail and shall be deemed to
have been given upon receipt by the party notified. For the purposes hereof, the
addresses of the parties shall, until changed as hereinafter provided, be as
follows:
If to the Maverick:
Maverick Processing Services, Inc.
0000 X. Xxxxxxxx
Xxxxxx, Xxxxxxx 00000
Attn: Xxxxx X. Xxxx,
Vice President & Legal Counsel
If to Licensee: U.S. Wireless Data, Inc.
Watergate Tower II
0000 Xxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000-0000
Attn: _________________
or such substituted persons or addresses of which any of the parties may give
notice to the other in writing.
12.4 Licensee may not assign this Agreement or the License granted
therein, in whole or in part without the prior written consent of Licensor.
Provided, however, the foregoing shall not apply to any assignment to a
subsidiary, affiliate, parent or by way of merger or operation of law unless
such assignment is to a Competitor of Licensor or to a party which, through such
assignment, becomes a Competitor of Licensor.
12,5 In performing their responsibilities pursuant to this Agreement,
Licensor and Licensee are in the position of independent contractors. Except as
specifically set forth herein, neither is intended to and shall not be deemed to
be an agent of the other.
12.5 This Agreement may be executed in one or more counterparts and by
different parties in separate counterparts, with the same effect as if all
parties hereto had signed the same documents. All counterparts so executed and
delivered shall be deemed to be an original, shall be construed together and
shall constitute one agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date and year first above written.
MAVERICK INTERNATIONAL U.S. WIRELESS DATA, INC.
PROCESSING SERVICES, INC.
/s/ Xxxx X. Xxxxxxxx By /s/ Xxx Xxxxxxxxx
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Xxxx X. Xxxxxxxx, Chairman & CEO Title President
Date: June 9, 19990 Date June 10, 1999
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