EXHIBIT 10.17
SOFTWARE LICENSE AGREEMENT
This Agreement made effective as of this 11th day of December, 1998, by
and between xxxxXxxxx.xxx, Inc., a corporation established pursuant to the laws
of the state of Delaware and having a principal place of business at 0000
Xxxxxxxx Xxxxxx, 0xx Xxxxx, Xx. Xxxxx, XX 00000 (hereinafter the "Licensee") and
BarterOne LLC (d/b/a xxxxxxx.xxx), a limited liability company established under
the laws of the state of Delaware and having a principal place of business at
0000 Xxxxxxxxx Xxxxxx, Xxxx Xxxxxx Xxx 000, Xxxxxx, XX 00000 (hereinafter the
"Licensor") (hereinafter the Licensee and the Licensor are together referred to
from time to time as the "Parties").
WHEREAS the Licensor possesses certain confidential and proprietary
know-how and technology including owing and holding the exclusive worldwide,
perpetual license to the ORBIT(TM) (On-line Reciprocal Business and Inventory
Transaction) System (hereinafter the "Licensed Soft xxxx"), a customized robust
end-to-end solution for the rapidly emerging business-to-business Electronic
Business market and which offers a multiple payment software application
providing the capability to market goods and services over the internet using
multiple forms of payment and including on-line open bid payment modules, and
WHEREAS the Licensee is engaged in the business of retail and corporate
trade consulting, brokering the sale of goods and services with either a trade,
cash or blend (cash and trade combined) transaction payment mechanism, and is
involved in various other commercial endeavors, and
WHEREAS the Licensor possesses certain confidential and proprietary
know-how and technology relating to the Licensed Software and to associated
technologies and commercial, marketing and sales methodologies, and
WHEREAS, effective as of the date of this Agreement, the Licensee has
been organized as a corporation existing under the laws of the state of
Delaware, which corporation will, among other things, develop and implement
on-line auctions for the disposition of corporate/investment assets, and
WHEREAS the Licensee desires to license the Licensed Software in order
to use and enhance it for specific applications involving on-line auctions, all
on the terms and subject to the conditions set forth herein.
NOW THEREFORE, in consideration of the mutual covenants and agreements
hereinafter contained and for other good and valuable consideration (the
receipt, adequacy and sufficiency of which are hereby acknowledged by the
Parties by their execution hereof), the Parties hereby covenant and agree as
follows:
ARTICLE 1 - INTERPRETATION
1.1 Definitions
In this Agreement and the Schedules (if any) annexed hereto, unless
there is something in the subject matter or context inconsistent herewith, the
following expressions shall have the respective meanings indicated below:
"Agreement" - means this agreement entitled "Software License
Agreement" and all of the Schedules (if any) annexed hereto.
"Code" means the computer programming code. Except as other specified,
Code shall include both Object Code and Source Code.
"Corporate/Investment Assets" means assets directly or indirectly
belonging to any entity and/or employed or utilized in connection with any
entity's business activities, including, without limitation, equipment,
machinery, inventory, etc., and component parts thereof, excepting diamonds
and/or other precious gems, in finished or unfinished form, precious metals, in
raw or finished form, jewelry, currency in any form, oil, gas, coal and electric
power, and telecommunications, cable and water services.
"Documentation" means written materials (and machine-readable text
subject to display or printout) which relate to and describe Code.
"Improvements" means upgrades (including subsequent versions),
enhancements, or other releases, alterations, modifications or customizations,
of software, Code or related technology, including Documentation, with respect
to the Licensed Software.
"Know-How" means inventions (whether patentable or not), improvements,
techniques, devices, data and other information (including, but not limited to
computer source code, flow charts, opinions, drawings, blueprints and
engineering and test specifications). Know-How shall also include user manuals
and other Documentation for computer programs as updated periodically.
"Object Code" means Code that is intended to be directly executable by
a computer after suitable processing but without the intervening steps of
compilation or assembly.
"Source Code" means Code, other than Object Code, and related source
code documenta tion, comments and procedural code, such as job control language,
which may be printed out or displayed in human readable form.
1.2 Entire Agreement - This Agreement including any and all Schedules
(if any) attached hereto constitutes the entire agreement between the Parties
pertaining to the subject matter hereof and supersedes all prior agreements,
understandings, representations, proposals and/or other communications in
respect of the licensing of the Licensed Software, whether oral or written. No
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supplement, modification or waiver of this Agreement shall be binding unless
executed in writing by each of the Parties. The terms of this Agreement shall
prevail over any conflicting, additional or other terms contained in any
purchase order or other written, electronic or oral communication between the
Parties.
1.3 Governing Law - This Agreement shall be governed by and construed
in accordance with the laws of the Commonwealth of Massachusetts and the Parties
consent and attorn to the jurisdiction of the courts of such state.
1.4 Number and Gender - Words importing the singular include the plural
and vice versa and words importing gender include both genders.
1.5 Headings - The Article and Section headings contained herein are
included solely for convenience, are not intended to be full or accurate
descriptions of the contents thereof and shall not be considered part of this
Agreement or to affect the interpretation hereof.
1.6 Currency - Unless otherwise indicated, all dollar amounts referred
to in this Agree ment are in United States Dollars.
ARTICLE 2 - GRANT OF LICENSE
2.1 Grant of License - Subject to the terms and conditions of this
Agreement, the Licensor hereby grants to the Licensee and the Licensee hereby
accepts from the Licensor, an exclusive worldwide, perpetual license to the
Licensed Software, and any improvements thereto and component parts thereof (non
exclusive for the electric and gas utility industry and restricted for
electricity related trade applications in the states of PA, NJ, MD, DE & MA
pursuant to the terms and condi tions of a license agreement between the
Licensor and PECO Energy Company, through its subsid iary Energy Trading
Company), for the development of an Internet based Electronic Business platform
as a specific business-to-business custom application service for on-line
Corporate/Investment Asset recovery operations, including, without limitation,
the following activities as they relate to same (i) private corporate
extranet/intranet distribution and Corporate/Investment Asset registration
services, (ii) management, on-line and off-line marketing, remarketing and sales
of Corporate/Investment Assets of companies both as an internal mechanism for
the redistribution of corporate and investment assets and a general
business-to-business commercial remarketing facilitator, (iii) registered
on-line business-to-business open bid process for the resale of corporate and
investment assets, and (iv) virtual web based center for product sales and
liquidation services, as well as the inclusive license rights to utilize the
system on a worldwide basis and at any of the Licensee's or the Licensee's
clients' locations and on any number of central processing units, provided that
such use is solely in conjunction with use of the Licensed Software solely for
the purposes herein identified and described in this Section 2.1. The Parties
further agree that,
(a) The Licensee shall have the right to develop and make future
improvements to the Licensed Software for specific custom
applications, and such Improvements shall be
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proprietary to and for the sole use of the Licensee. The
Licensor will have no liability or obligation towards the
funding of any Improvements to the Licensed Software.
(b) The Licensee shall provide to the Licensor a true, complete
and updated listing of the locations at which the Licensed
Software may be used.
(c) The Licensee shall provide all its own support, maintenance
and hosting of the Licensed Software.
(d) The Licensee will make available to the Licensor, on a
non-exclusive first look basis and at preferential pricing
determined by the Licensee, any and all Improvements and/or
functionality it may develop to the Licensed Software that are
not related to the purposes for which the Licensed Software is
hereby licensed.
2.2 Improvements; Source Code - The license to the Licensed Software
granted pursuant to Section 2.1 above includes any Improvements as well as the
right to alter and/or modify the Licensed Software, and the Licensor shall
promptly deliver to the Licensee any and all Improvements developed by or on
behalf of the Licensor. The Parties agree that the Licensor will at all times
keep possession of all Source Codes for the Licensed Software, except that the
Licensor will provide and transfer to Licensee a full copy of the current Source
Code for the Licensed Software. Upon request from the Licensee and for the
purpose of customizing, enhancing, altering or modifying the Licensed Software,
the Licensor shall promptly deliver to the Licensee a copy of the most
up-to-date Source Code (in machine readable form) for the Licensed Software.
2.3 Restriction on Use - The Licensee may make copies of the Licensed
Software for use on any number of central processing units of the Licensee and
the Licensee's clients and the Licensee may make copies for back up or archive
purposes. Licensee may make as many copies of the Licensor's manuals or similar
materials related to the Licensed Software as Licensee desires.
2.4 Assignment/Sublicense of License
(i) The Licensee shall have the right, as it may
determine from time to time, acting through its board
of directors and in accordance with and subject to
such directors' fiduciary duties to the Licensee and
its stockholders and the provisions of the Licensee's
Certificate of Incorporation and bylaws, as the same
may be amended from time to time, to sublicense the
Licensed Software on a nonexclusive basis for use by
the clients or customers of the Licensee in the
normal course of the Licensee's business.
(ii) In addition, the Parties recognize that the Licensee
may, from time to time, consider new business
opportunities related to the Licensed Software
licensed to the Licensee pursuant to this Agreement.
The Parties further recognize that the Licensee may,
acting through its board of directors and in
accordance with and subject to such directors'
fiduciary duties to the Licensee and its
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stockholders and the provisions of the Licensee's
Certificate of Incorporation and bylaws, as the same
may be amended from time to time, sublicense or
otherwise arrange for the use of the Licensed
Software to or by other persons or entities,
including without limitation the Licensor or
affiliates of either the Licensee or the Licensor, to
use the Licensed Software for purposes or in
industrial sectors not deemed beneficial to the
Licensee and/or consistent with its business
activities, on such terms as the Licensee, acting
through its board of directors and in accordance with
and subject to such directors' fiduciary duties to
the Licensee and its stockholders and the provisions
of the Licensee's Certificate of Incorporation and
bylaws, as the same may be amended from time to time,
may deem to be in the best interests of the Licensee.
The Li censee's board of directors shall give written
notice to the Licensor and Xxxxxxx-Xxx, LLC, a
Maryland limited liability company, should the Li
censee's board of directors consider sublicensing or
otherwise arranging for the use of the Licensed
Software to any other person or entity for purposes
or in industrial sectors not deemed beneficial to the
Licensee and/or consis tent with its business
activities as provided pursuant to this paragraph
(ii), which such notice shall set forth the terms and
conditions, including the time parameters (if any),
or any such proposed sublicense or use right.
Thereupon, the Licensor and/or Xxxxxxx-Xxx, LLC shall
have the right, within ten days of such notice or
such shorter time period as the Licensee shall allow
in light of the requirements of the initiator's
proposal, to make a competing proposal to the
Licensee's board of directors with respect thereto.
(iii) Except as provided in paragraphs (i) and (ii) of this
Section 2.4, neither the Licensor nor the Licensee
shall have the right to assign, transfer or convey,
directly or indirectly, by sub-license or otherwise,
this Agreement or any of the rights and/or
obligations of either party hereunder without the
prior written consent of the other party.
ARTICLE 3 - REPRESENTATIONS AND WARRANTIES
3.1 Subject to Article 6 hereof, the Licensee acknowledges that the
Licensed Software being provided by the Licensor hereunder, and any improvements
made by the Licensor or Documen tation provided by the Licensor with respect
thereto, are the sole and exclusive property of the Licensor and that the
Licensee acquires no right, title or interest therein.
3.2 The Licensor represents and warrants to the Licensee that: (i) the
Licensor is the sole and exclusive owner of all right, title and interest in and
to the Licensed Software and has sufficient rights to license the Licensed
Software to the Licensee as contemplated in this Agreement; (ii) the Licensor
has the right to enter into this Agreement and grant the rights granted
hereunder and there are no outstanding agreements or understandings of any kind
binding upon the Licensor that are inconsistent with this Agreement or the
rights granted hereunder; (iii) the Licensed Software does not and will not
contain any "backdoor" or concealed access or any "software locks" or any
similar
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devices which, upon the occurrence of a certain event, the passage of a certain
amount of time, or the taking of any action (or the failure to take action) by
or on behalf of the Licensor, will cause the Licensed Software to be destroyed,
erased, damaged or otherwise made inoperable; (iv) to its best knowledge, the
Licensed Software does not infringe upon or violate the copyrights, patents,
trade secrets, trademarks or other proprietary rights of any third party; (v)
there are no pending or threatened suits, legal proceedings, claims or
governmental investigations against or with respect to the Licensor relating to
the Licensed Software or any component part thereof; (vi) the Licensor has not
received any notice and no notice is threatened or expected of any claim of
infringement or violation of any third party's copyrights, patents, trade
secrets, trademarks or other proprietary rights; (vii) the Licensed Software
will perform in substantial conformity with its specifications as set forth in
the Documentation, which shall not mean that it shall be error-free but may be
subject to simple work-arounds or de-bugging; (viii) the version of the Licensed
Software delivered on the date hereof is the most current and best version of
such software in existence on the date hereof; (ix) any Licensor Improvements
will be developed solely by full time employees of the Licensor acting within
the scope of their employment or by independent contractors who have transferred
to the Licensor by written agreement their ownership rights in the Improvements
or who have granted the Licensor a right to sublicense the Licensor
Improvements.
3.3 The Licensee represents to the Licensor that the Licensee has the
right to enter into this Agreement and fulfill its duties and obligations
hereunder and there are no outstanding agree ments of any kind binding upon the
Licensee that are inconsistent with this Agreement.
3.4 The Licensor hereby agrees to indemnify, defend and hold harmless
the Licensee and its permitted assigns and sub-licensees, and their respective
directors, officers, employees and agents, at the Licensor's sole cost and
expense, from and against any and all losses, expenses, claims, actions,
proceedings, damages or liabilities arising out of, relating to or based upon
any infringement or violation, or alleged infringement or violation, of any
copyright, patent, trademark or other proprietary right of any third party,
arising out of or related to the use by the Licensee or its permitted assigns or
sub-licensees of the Licensed Software or any component part thereof. The
Licensor agrees to pay and all obligations, liabilities, costs and damages of
the Licensee and its permitted assigns and sub-licensees, including, without
limitation, reasonable attorney's fees, which are attributable to any such
claim, action or proceeding if the Licensee or its permitted assigns or
sub-licensees, having actual knowledge thereof, promptly notifies the Licensor
in writing of any such claim, action or proceeding and gives the Licensor sole
control of the defense or settlement of such claim, action or proceeding and
provides Licensor with reasonable non-economic assistance in the defense of any
such claim, action or proceeding. If the Licensed Software or any component part
thereof is held to constitute an infringement or violation of any third party's
proprietary rights and the Licensee's or its permitted assigns' or
sub-licensee's use thereof is or may reasonably be expected to be enjoined, then
the Licensor shall, at the Licensor's option and sole expense, either secure for
the Licensee or its permitted assigns or sub-licensees, as the case may be, the
right to continue to use the Licensed Software and any component part thereof,
or replace or modify same to make them non-infringing.
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ARTICLE 4 - CONFIDENTIALITY
4.1 The Licensee acknowledges that the Licensed Software is
confidential and considered as trade secret of the Licensor. The Licensee agrees
to maintain the confidentiality of and not to release, disclose or divulge the
Licensed Software or any part thereof to any person without the prior written
consent of the Licensor; provided that the Licensee shall not be obligated to
maintain in confidence that information which:
(i) can be demonstrated by reasonably documented proof to
have been in the possession of the Licensee prior to
receipt thereof from the Licensor or to have been
developed in the course of work entirely independent
of any disclo sure made hereunder or the subject
matter of this Agreement;
(ii) is or becomes part of the public domain other than
through breach of this Agreement or through the fault
of the Licensor;
(iii) is necessarily disclosed in any products sold or
shipped by either of the Parties;
(iv) is or becomes available to the Licensee from a source
other than the Licensor which source has no
obligation to the Licensor in respect thereof; or
(v) is made available by the Licensor in written form to
a third party on an unrestricted basis.
The Licensee shall instruct its employees who have access to the
Licensed Software to comply with the provisions of this Article 4 and the
Licensee shall take at least the same steps to prevent disclosure and misuse of
the Licensed Software as it takes with respect to its own confidential
information.
ARTICLE 5 - COMMERCIAL EXCLUSIVITY
5.1 The Licensor and the Licensee agree to exclusively use and promote
the individual services provided by the other in their separate business
activities. Therefore, the Licensee and Xxxxx Xxxxxxx International Limited and
Xxxxxxx Xxx International, Inc. and their respective affiliates will exclusively
use the Licensor for all on-line Electronic Business applications and the
Licensee for all on-line auction applications contemplated by this Agreement and
the Licensor and Positive Asset Remarketing, Inc. and their respective
affiliates will exclusively use the Licensee and/or Xxxxx Xxxxxxx International
Limited and Xxxxxxx Xxx International, Inc. for the disposition of
Corporate/Investment Assets pertaining to auctions and private treaty sales. The
Licensor shall pay to the Licensee an amount equal to twenty percent (20%) of
the gross profits derived from any and all business referred to the Licensor by
the Licensee, and the Licensee shall pay to the Licensor an amount equal to
twenty percent (20%) of the gross profits derived from any and all business
referred to the Licensee by the Licensor. Notwithstanding anything to the
contrary contained herein, the Parties recognize that Xxxxx Xxxxxxx
International Limited and Xxxxxxx Xxx International, Inc. and their respective
affiliates are presently developing the capability to allow bidders and others
to
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participate electronically in live auctions conducted or to be conducted by such
companies and the Parties hereby recognize and agree that such activities shall
not be subject to or restricted by the provisions of this Section 5.1. It is
understood by the Parties that Xxxxx Xxxxxxx International Limited and Xxxxxxx
Xxx International, Inc. contemplate utilizing technology when developed to
facilitate participation electronically in live auctions and agree that should
the Licensor have such technology available, Xxxxx Xxxxxxx International Limited
and Xxxxxxx Xxx International, Inc. shall utilize such technology as long as the
terms, conditions and pricing for use are competitive with other similar
technology available in the marketplace. It is further understood that should
Xxxxx Xxxxxxx International Limited and Xxxxxxx Xxx International, Inc. choose
not to use the Licensor's technology referred to in the preceding sentence, then
the Licensor shall have the right to market said technology in the marketplace.
ARTICLE 6 - TERM AND TERMINATION
6.1 This Agreement shall remain in full force and effect until
terminated as hereinafter provided. This Agreement may be terminated by the
Licensor in the event that the Licensee shall be in material breach of any
provisions hereof and shall fail to remedy such material breach within thirty
(30) days after receiving written notice thereof from the Licensor; provided,
however, that, notwithstanding the foregoing, this Agreement may not be
terminated by the Licensor if, with respect to a material breach which is
incapable of cure during such 30 day period, after such 30 day period, the
Licensee is continuing to be diligently and in good faith seeking to cure such
failure, but in any event such attempt to cure shall not exceed a six (6) month
period, commencing upon the date of receipt by the Licensee of the Licensor's
notice of material breach. All rights and licenses granted under or pursuant to
this Agreement by the Licensor to the Licensee are, and shall otherwise be
deemed to be, for purposes of 11 U.S.C. 365, licenses of "intellectual property"
as defined under 11 U.S.C. 101 (56). If a judgment is entered into against the
Licensee in regards to any bankruptcy proceedings, for its own account, under
the Bankruptcy Code, or should the Licensee dissolve and/or wind up its business
and affairs, this Agreement shall terminate. The Parties further agree that, in
the event of a commencement of a bankruptcy proceeding by or against the
Licensor under the Bankruptcy Code, the Licensee shall be entitled to a complete
duplicate of (or complete access to, as appropriate) the Licensed Software and
any such intellectual property and all embodiments of the Licensed Software and
such intellectual property, and same, if not already in its possession, shall be
promptly delivered to the Licensee (i) upon any such commencement of a
bankruptcy proceeding, upon written request therefor by the Licensee, unless the
Licensor elects to continue to perform all of its obligations under this
Agreement, or (ii) if not delivered under (i) above, upon the rejection of this
Agreement by or on behalf of the Licensor upon written request therefor by the
Licensee.
6.2 Upon dissolution of or the entry of a judgment in regards to any
bankruptcy proceed ing against the Licensee, all rights to the Licensed Software
and all copies of the Licensed Software that are in the Licensee's possession,
will revert back to and be returned to the Licensor.
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ARTICLE 7-DISCLAIMER OF WARRANTIES/LIMITATION OF LIABILITY
7.1 DISCLAIMER OF WARRANTIES - OTHER THAN AS SET FORTH IN ARTICLE 3
HEREOF, THE LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES OR CONDITIONS OF ANY
KIND CONCERNING THE LICENSED SOFTWARE OR ITS USE, FUNCTION OR OWNERSHIP AND
SHALL NOT BE LIABLE IN ANY MANNER FOR ANY REPRESENTATION OR WARRANTY OR
CONDITION OF ANY KIND WHETHER EXPRESS OR IMPLIED OR COLLATERAL OR WHETHER
ARISING BY OPERA TION OF LAW OR OTHERWISE INCLUDING, WITHOUT LIMITATION, ANY
WARRANTY OF MER CHANTABLE QUALITY OR FITNESS FOR A PARTICULAR PURPOSE OR THAT
THE LICENSED SOFTWARE WILL BE ERROR FREE.
7.2 LIMITATION OF LIABILITY - LICENSOR SHALL NOT HAVE ANY LIABILITY OF
ANY KIND FOR INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES ARISING OUT
OF ANY BREACH OF THIS AGREEMENT EVEN IF LICENSOR HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES, EXCEPT AS OTHERWISE PROVIDED IN ARTICLE 3 HEREOF.
ARTICLE 8 - OTHER PROVISIONS
8.1 Binding Effect - This Agreement is binding upon and shall inure to
the benefit of the Parties and their respective permitted successors and
assigns.
8.2 Survival - All representations, warranties, and indemnifications,
and obligations which expressly by their nature survive termination of this
Agreement, shall survive any termination of this Agreement and shall continue in
full force and effect subsequent to and notwithstanding such termination.
8.3 Notice - Any notice given hereunder shall be in writing and given
by personal delivery or sent by registered or certified mail, postage prepaid
and addressed to the Parties at the addresses shown on the first page hereof.
Any notice so given shall be deemed to have been received on the date on which
it was delivered or if sent by mail, on the third business day next following
the mailing thereof. In the event of actual or threatened sustained disruption
of postal service, notice shall not be sent by mail. Either party may change its
address hereunder by giving written notice of such change to the other party in
the manner provided above.
8.4 Counterparts - This Agreement may be executed in counterparts and
shall become binding when one or more counterparts hereof, individually or taken
together, shall bear the signatures of all of the Parties.
8.5 Independent Contractor - The Parties to this Agreement are each an
independent contractor as to the other and shall not be considered or deemed to
be an agent, employee, joint venturer or partner of the other except as
otherwise expressly agreed to in a writing signed by the Parties. Neither party
shall have authority to contract for or bind the other in any manner and shall
not represent itself as an agent of the other or as otherwise authorized to act
for or on behalf of the other.
IN WITNESS whereof the Parties have duly executed this Agreement as of
the date first written above.
BarterOne, L.L.C. xxxxXxxxx.xxx, Inc.
By: /s/Xxxx Xxxxxx By: /s/Xxxxxx X. Xxxx
-------------- -----------------
Name: Xxxx Xxxxxx Name: Xxxxxx X. Xxxx
------------- -----------------
Title: President Title: President
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ACKNOWLEDGEMENT
By executing below, Xxxxx Xxxxxxx International Limited, a company
organized under the laws of the United Kingdom, Xxxxxxx Xxx International, Inc.,
a Maryland corporation, and Positive Asset Remarketing, Inc., a Massachusetts
corporation, expressly acknowledge the terms and conditions set forth in Section
5.1 of that certain Software License Agreement dated as of December 11, 1998,
and hereby expressly agree to be bound by their respective obligations and
commitments pursuant to such Section 5.1.
IN WITNESS WHEREOF, this acknowledgement has been executed by the
undersigned as of the 3rd day of February, 1999.
XXXXX XXXXXXX INTERNATIONAL
LIMITED
By: /s/Xxxxxx X. Xxxxxxx
------------------------------
Printed Name: Xxxxxx X. Xxxxxxx
---------------------
XXXXXXX XXX INTERNATIONAL, INC.
By: /s/Xxxxxxx X. Xxx
------------------------------
Printed Name: Xxxxxxx X. Xxx
---------------------
POSITIVE ASSET REMARKETING, INC.
By: /s/Xxxxxxxx X. Xxxxx
-------------------------------
Printed Name: Xxxxxxxx X. Xxxxx
---------------------
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