LICENSE AGREEMENT DSP Software Engineering, Inc.
This License Agreement (the "Agreement") is dated as of the Effective Date (as
defined below), and is entered into by DSP Software Engineering, Inc., a
Massachusetts corporation having its principal place of business at 000
Xxxxxxxxx Xxxxxxxx, Xxxxxxx, XX 00000 ("DSPSE") and the following Developer (the
"Developer"):
RSI Systems, Inc.
Company Name
Advanced Engineering
Department Name
Xxx Xxxxxxxxx Xxxxx, 0000 Xxxxx Xxxxxxxxx, #000
Address
Edina, MN 55439
City, [State or Territory], Country, Postal Code
DSPSE is the owner of the component(s) and related documentation described in
Exhibit A to this Agreement, and Developer desires to use each component and
incorporate all or portions of each component into the Developer Product, as
defined in Section 1.1. Each party agrees to the terms and conditions set forth
in this Agreement. The parties have caused this Agreement to be executed by
their duly authorized representatives:
DSP SOFTWARE ENGINEERING, INC.
/s/ Xxxxxx X. Xxxxx Xxxxx
By
Xxxxxx X. Xxxxx Xxxxx
Name
President
Title
21 November 1995
-----------------------------------------------------
Date
DEVELOPER
/s/ Xxxxx Xxxxxx
By
Xxxxx Xxxxxx
Name
VP Engineering
Title
2-1-96
------
Date
Xxxxx Xxxxxx
"Attention" person for legal notices, if any
Accepted and agreed to with respect to applicable Sections
DISTRIBUTOR
Company Name
Address
City, [State or Territory], Country, Postal Code
By
Name
Title
Date
1. DEFINITIONS
1.1. "Department" means the development group, named above, responsible
for integrating all or a portion of a Component into the Developer
Product.
1.2. "Developer Product" means any executable software created by
Developer in which either (i) all or any portion, or (ii) any
translation or derivative of all or any portion, of a Component is
embedded.
1.3. "Distributor" means either the entity designated as the Distributor
on the signature page of this Agreement, or, if no entity is so
designated, the DSPSE.
1.4. "Documentation" means the DSPSE user manuals, programmers' guides,
system guides and/or related publications which are supplied to
Developer by DSPSE for purposes of facilitating Developer's use of
each Component.
1.5. "Effective Date" means the later date of signature of this Agreement
by Distributor or Developer.
1.6. "Component" means the component(s) listed on Exhibit A of this
Agreement, as well as any enhancements, new releases, updates or
other modifications to each such component which Developer may
receive from Distributor under the same component name or names
during the term of this Agreement.
1.7. "Proprietary Information" is defined in Section 4.2 below.
1.8. "Reseller" means each recipient of the rights which Developer is
permitted to sublicense by Section 2.2 below, other than an end-user
not otherwise involved in the marketing, distribution or further
sublicensing of the Developer Product.
2. GRANT OF LICENSE
2.1. DSPSE grants to Developer, and Developer hereby accepts from DSPSE,
a non-exclusive, non-transferable license to use and modify each
Component to create the Developer Product, subject to the following
limitations:
(i) all development work shall be performed exclusively by the
Department or by an independent contractor otherwise permitted
by this Agreement, and the Component shall be used exclusively
for such purposes;
(ii) the Developer shall not permit any source code or object code
to leave the Department, and access to any such code shall be
strictly limited to persons requiring such access in order to
create the Developer Product; only executable code as embedded
in or integrated with the Developer Product may be permitted
to leave the Department;
(iii) the Developer must add significant value to each Component, so
that the Developer Product does not consist primarily of any
Component(s) merely repackaged and resold in nearly identical
form to, or performing only the same important functions of,
the Component(s) as delivered to the Developer;
(iv) as embedded into or integrated with the Developer Product,
each Component shall be usable solely to further the
functionality of the Developer Product;
(v) Developer's use of each Component shall be strictly limited to
the Developer Product(s) specifically listed in Exhibit A of
this Agreement.
The foregoing shall not be deemed to prohibit the reproduction of
the Developer Product at locations other than the Department.
2.2. DSPSE grants to Developer, and Developer hereby accepts from DSPSE,
a non-exclusive, non-transferable license to copy, market,
distribute and sublicense each Component to end-users solely in
executable code form and as embedded in or integrated with the
Developer Product. Developer may sublicense to its Resellers its
right to market and distribute any Component, solely in executable
form as embedded in or integrated with the Developer Product, to
end-users as provided for above; provided, that no Reseller shall be
granted rights in violation of or in excess of Articles 4, 5 and 6
and Sections 10.1, 10.2 and 10.11 of this Agreement. Developer may
use independent contractors in its development of the Developer
Product, provided that all such contractors given access to any
Component undertake in writing the obligations of Developer under
Articles 2 and 4.
2.3. Notwithstanding anything contained in this Agreement to the
contrary, Developer agrees that the grant of the license rights
above is subject to the additional terms and conditions, if any,
listed on Exhibit A which shall control and supersede any
inconsistent terms of this Agreement.
2.4. Upon the execution and delivery of this Agreement, and the
Distributor's receipt of a purchase order for the Component(s) which
references the full amount of the license fee, if any, listed on
Exhibit A for the Component(s) (the "License Fee"), the Distributor
shall endeavor to promptly deliver each of the Component(s) and
Documentation to Developer.
2.5. In addition to the rights granted by Section 2.1 and 2.2, Developer
may make copies of each Component, provided that any such copy is
either created as a reasonably necessary step in the creation of the
Developer Product or is created solely for archival purposes.
Developer may copy the Documentation but only for use within the
Department for permitted development purposes. No Component or
Documentation may be distributed or disclosed, in any way, to any
person or entity outside of the Department, except to independent
contractors in the manner contemplated by this Agreement, or
otherwise as expressly permitted by the terms of this Agreement.
Developer shall not remove any trademark or copyright notice which
appears on any Documentation or in any Component. All Developer
Products delivered to Resellers and end-users shall include such
notices, in embedded form, in the Developer Product.
3. LICENSE AND ROYALTY FEES
3.1. Developer shall pay to Distributor the License Fee within thirty
(30) days of the invoice date;
3.2. The Royalty payments (the "Royalty"), if any, specified on Exhibit A
shall be paid to Distributor as follows:
(i) during each calendar quarter, including the calendar quarter
in which the Effective Date occurs, the Royalty amount will
accrue for each unit of any Developer Product that is
manufactured and shipped by Developer during such quarter,
regardless of whether such unit is ever sold, licensed or
transferred by a Reseller to any end-user or other third party
during such quarter or thereafter;
(ii) within 30 days after the end of each calendar quarter during
which Royalties have accrued and/or during which Royalties
have been paid or remain outstanding, Developer shall submit
to the Distributor the report required by Section 7.1(ii)
below, together with the full Royalty amount payable with
respect to the quarter just ended.
3.3. The License Fee and Royalty, if any, are exclusive of any federal,
state, municipal or other governmental taxes, duties, excise taxes
or tariffs (collectively "Taxes") now or hereinafter imposed on the
sale, transportation, import, export, or use of any Component or
Documentation, all of which shall be paid by Developer unless
Developer shall have provided an exemption certificate acceptable to
DSPSE and Distributor and the applicable taxing authority. Should an
audit of either party by governmental authorities result in a claim
that such charges are due, Developer shall reimburse Distributor for
any such charges, together with interest, penalties and other costs,
other than those arising from DSPSE's or Distributor's failure to
make timely payment of Taxes, promptly following written request
therefor by Distributor.
4. PROPRIETARY INFORMATION
4.1. As between DSPSE and Developer, all title and other ownership rights
(including all patent, copyright and trade secret rights) in each
Component and any portion thereof which is embedded in, or
integrated with the Developer Product, and in any enhancements or
modifications of any Component that sequentially execute between the
entry and exit points of such Component, which may be created by
Developer, whether or not so embedded or integrated, shall remain in
DSPSE. Subject to the rights of DSPSE in the Component and any
portions of Component and any such enhancements or modifications
which are so embedded or integrated, Developer shall own all right,
title and interest in the derivative work represented by any
Developer Product that it develops.
4.2. It is expressly understood and agreed that each Component, including
but not limited to the proprietary software (in whatever form), and
Documentation constitute valuable proprietary products and trade
secrets of DSPSE embodying substantial creative effort and
confidential information, ideas and expressions (collectively
"Proprietary Information") which require protection against
unauthorized use, transfer, reproduction, or disclosure. Developer
agrees that it will protect all Proprietary Information with at
least the same degree of care as it uses to protect its own most
confidential, unclassified information, will make no use of any
Confidential Information except as permitted by this Agreement, will
allow access thereto only by its employees who have agreed to abide
by the confidentiality terms of this Agreement, and only as required
for the use of the Proprietary Information as specifically permitted
by this Agreement, and shall not transfer the Proprietary
Information or any portion thereof to any third party except as
specifically permitted by this Agreement. Developer shall be
responsible for its employees, agents, representatives, independent
contractors and Resellers complying with the terms of this
Agreement.
4.3. Upon termination of this Agreement, Developer shall delete all
copies of the Proprietary Information in any form from its system
files and storage media, shall destroy or return to DSPSE all
printed copies of the Proprietary Information, shall terminate all
use of the Proprietary Information and each Component and deliver to
DSPSE all storage media owned by DSPSE then in Developer's
possession. Within thirty (30) days after such termination,
Developer shall certify in writing to DSPSE that Developer and each
of its Resellers has complied with its obligations under this
subsection. Notwithstanding the foregoing, Developer may continue to
sell or use all inventory of any Developer Product which exists on
the date of such termination.
4.4. Developer shall promptly notify DSPSE of any infringement of DSPSE's
proprietary rights in the Confidential Information or unauthorized
disclosure of any Confidential Information that comes to Developer's
attention.
4.5. Developer acknowledges that a material violation of the
confidentiality undertakings of this Article 4 by Developer could
result in substantial and irreparable damage to DSPSE if DSPSE could
not take immediate action to prevent further disclosure of DSPSE's
valuable intellectual property and other Proprietary Information,
and that DSPSE would not have an adequate remedy at law to
compensation it for any such breach. Accordingly, Developer consents
(without limiting the right of DSPSE to any other remedy) to the
entry of an injunction by any court of competent jurisdiction
against any threatened or continuing material breach of this
Article.
5. LIMITED WARRANTY
5.1. DSPSE warrants that each Component, as delivered to Developer, will
substantially perform in accordance with the specification sheet
published by DSPSE for such Component at the time of delivery to
Developer, however, DSPSE does not warrant that the use of any
Component will be uninterrupted or error-free. Developer's exclusive
remedy and DSPSE's sole liability under this warranty shall be for
DSPSE to attempt, through reasonable efforts, to correct any
material nonconformity, if such failure is reported to DSPSE within
90 days of the date of such delivery ("Warranty Period"), if
Developer has provided DSPSE (upon DSPSE's request) with such
information as DSPSE reasonably requests to enable DSPSE to
reproduce the defect in question; provided, that if DSPSE is unable
to correct any such failure in a Component within a reasonable time,
DSPSE may, at its sole option, refund to Developer the License Fee
paid for such Component and the Royalty amounts, if any, that DSPSE
received for any related Developer Products for which Developer can
document that it has had to provide refunds, solely because of such
defect. Upon such payment, this Agreement may be terminated by DSPSE
at its election as to such Component.
5.2. For one year from the Effective Date, Distributor will provide to
Developer, free of charge, all updates of each Component that are
released by DSPSE to the general public solely as a "bug fix".
5.3. DSPSE warrants that each Component, as delivered to Developer, does
not infringe any copyright or trade secret. DSPSE will defend at its
expense and indemnify Developer with respect to any motion brought
against Developer to the extent that it is based on a breach of the
foregoing warranty, and DSPSE will pay any costs and damages finally
awarded against Developer, or any settlement finally paid with the
consent of DSPSE (which consent shall not be unreasonably withheld)
by Developer, and reimburse Developer for attorney's fees reasonably
incurred in connection therewith, provided that Developer notifies
that DSPSE promptly in writing of such claim and allows DSPSE to
fully control the defense of such claim. The foregoing is further
conditioned on the following:
(i) DSPSE shall have no liability of indemnity with respect to,
nor any obligation to defend or reimburse Developer with
respect to legal fees relating to, any action or claim based
upon the interpretation, conformance with, or development of
Component that substantially complies with any industry
recognized standard, which such claim is based upon or would
not arise but for such interpretation, conformance or
compliance.
(ii) Should any Component or any portion thereof become, or in
DSPSE's opinion by likely to become, the subject of any claim
of infringement, DSPSE shall at its option
(a) procure for Developer the right to continue exercising
its rights hereunder with respect to such Component,
(b) replace or modify such Component to make it
noninfringing, or
(c) terminate the license granted hereunder and refund to
Developer a pro rata portion of the License Fee paid by
the Developer, calculated on the basis of a three year
period from the date of this Agreement and actual date
upon which Developer was no longer able to use the
Product as a result of such alleged infringement.
(iii) DSPSE shall have no liability for any claim of infringement
based upon:
(a) use or combination of any portion of any Component with
any products not supplied by DSPSE (including without
limitation the Developer Product), if such infringement
would not have occurred without such use or combination;
(b) use or marketing of any Component by Developer, or use,
distribution or licensing of the Developer Product by
Developer, after having been given notice, or having a
reason to believe, that such Component infringes a
copyright of a third party, unless prompt written notice
has been given to DSPSE; or
(c) use of other than the latest unmodified version of any
Component delivered to Developer by Distributor or
DSPSE, if the infringement would have been avoided by
the use of such version.
(iv) Any limitation on Developer's remedies in this Agreement shall
not apply with respect to Developer's rights under the terms
set forth under this Section 5.3. In no event will DSPSE be
liable for any claim against Developer by any party except as
provided in this Section 5.3.
(v) Notwithstanding anything herein to the contrary, this Section
5.3 states the entire liability of DSPSE, and the sole
recourse of Developer, with respect to infringements of
copyrights and trade secrets.
5.4. The warranty provided herein extends only to Developer and not to
any Reseller or end-user of the Developer Product. Developer shall
indemnify DSPSE for any expenses incurred by DSPSE, directly or
indirectly (including without limitation attorneys' fees, settlement
costs and court costs), as a result of any claim or action by any
third party arising out of or resulting from the Developer Product,
except to the extent that the same relates solely to any defect in
the embedded Component; provided, that this indemnification
obligation shall not apply with respect to any expenses, claims or
damages that are finally adjudicated by a court of competent
jurisdiction to have been caused by the gross negligence or willful
misconduct of DSPSE. Developer will defend at its expense any such
claim or action brought against DSPSE and Developer will pay any
costs and damages finally awarded against DSPSE in any action that
are attributable to such claim, and reimburse DSPSE for reasonable
attorneys' fees reasonably incurred in connection therewith,
provided that DSPSE notifies Developer promptly in writing of such
claim, allows Developer to fully control the defense of such claim
and does not agree to any settlement of such claim without
Developer's written consent.
5.5. The warranty set forth above is exclusive and is in lieu of all
other warranties of DSPSE. NO OTHER WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR ANY PARTICULAR PURPOSE ARE MADE BY DSPSE. IN NO EVENT
WILL DSPSE BE LIABLE FOR ANY DAMAGES CAUSED BY DEVELOPER'S FAILURE
TO PERFORM ITS OBLIGATIONS HEREUNDER, OR FOR ANY LOST PROFITS OR ANY
OTHER INCIDENTAL OR CONSEQUENTIAL DAMAGES, REGARDLESS OF THE FORM OF
ACTION, WHETHER IN CONTRACT OR IN TORT, INCLUDING NEGLIGENCE, EVEN
IF DSPSE HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. Such
warranty shall not be deemed to have failed of its essential purpose
so long as DSPSE is making good faith efforts to correct defects
under the terms of the warranty, or has made the refunds or
replacements provided for by this Agreement. The warranty set forth
herein allocates risks of Component nonconformity, and DSPSE's
prices reflect the allocations of such risk.
5.6. DSPSE's entire liability and Developer's sole and exclusive remedy
for any claim concerning performance or nonperformance by DSPSE,
pursuant to or in any way related to the subject matter of this
Agreement, or for damages for any causes whatsoever and regardless
of the form of action, whether in contract or in tort including
negligence, or any other legal theory, shall be actual damages up to
the amount of the aggregate payments actually made to DSPSE, or
which DSPSE has received through Distributors, as the case may be,
hereunder in the most recent twelve (12) months prior to such
damages occurring.
6. MAINTENANCE AND SUPPORT
6.1. Developer shall be entitled to five (5) free hours of telephone
support from Distributor for each Component, as delivered to
developer, that it licenses pursuant hereto during Distributor's
normal business hours during the first six months following the
Effective Date. To the extent that Developer has not requested and
received a full five hours of telephone support in such time period,
Distributor may, but shall not be required, to provide the balance
of such five hours of telephone support thereafter. Developer is not
entitled to any free support for any Component that has been
modified such that it is not identically as delivered. Developer may
purchase support, as available from Distributor or DSPSE, for any
modified Component at Distributor's or DSPSE's then current
consulting rate.
6.2. Subject to availability, Developer may purchase additional telephone
support or on site support from Distributor at Distributor's then
current rates. All reasonable travel expenses incurred by
Distributor to provide such on site support, if any, shall be paid
for by Developer promptly following its receipt of reasonable
documentation therefor.
6.3. Developer may purchase a one year maintenance contract ("Maintenance
Contract") for each Component from DSPSE for 10% of the then current
list License Fee for such Component. A Maintenance Contract:
(i) Extends the obligation provided by Section 6.1 for an
additional twelve (12) months;
(ii) Entitles Developer to an additional five (5) hours of
telephone support for such Component; and
(iii) Entitles Developer to receive any revised or updated versions
of such Component that are released by DSPSE to the general
public.
7. AUDITS AND REPORTS
7.1. If and only if Exhibit A hereto requires Developer to pay a Royalty
to Distributor then:
(i) During the term of this Agreement, Developer shall use its
best efforts to maintain accurate and sufficiently detailed
records of its production of each Developer Product so as to
enable DSPSE or Distributor to verify the accuracy of the
payments that Distributor receives pursuant to such Section
3.2;
(ii) Developer shall, together with each payment required under
Section 3.2, submit to Distributor a report reasonably
supporting the calculation of such payment;
(iii) Developer agrees that if at any time either DSPSE or
Distributor believes that a material underpayment of Royalties
has occurred, then either such entity or the representatives
of either shall have the right, upon ten (10) days' prior
written notice, to examine Developer's related books and
records, for the purpose of verifying the accuracy of the
Royalty payments and their accompanying reports. The party
conducting such audit shall bear the cost and expense of any
such audit; provided, however, that if any audit reveals that
there has been an underpayment to Distributor of more than 5%
of the amount properly payable, then the full cost and expense
of such audit shall be paid for by Developer and the amount of
such underpayment shall be forwarded immediately to
Distributor.
8. TERM AND TERMINATION
8.1. This Agreement shall commence as of the Effective Date and continue
indefinitely unless terminated in accordance with this Article 8.
8.2. This Agreement shall terminate upon the first to occur of:
(i) The expiration of thirty (30) days after the giving of notice
by the non-breaching party of a material breach of any of the
provisions of this Agreement, provided that such breach is not
cured within such thirty (30) day period. The parties agree
that any breach of Article 4 is inherently incurable and shall
give DSPSE the right to terminate this Agreement immediately;
(ii) By written notice of either party if the other, without curing
the condition within thirty (30) days of the event, ceases
doing business as a going concern, becomes insolvent, makes an
assignment for the benefit of creditors, admits in writing its
inability to pay its debts as they become due, files a
voluntary petition in bankruptcy, is subject to an involuntary
petition in bankruptcy which is not dismissed with ten (10)
days, is adjudicated bankrupt or insolvent, or files or has
filed against it a petition seeking any reorganization,
arrangement or composition, under any present or future
statute, law or regulation.
8.3. Notwithstanding anything contained herein to the contrary, all
licenses of the Developer Product acquired by end-users which
conform to the terms of this Agreement, shall survive termination of
this Agreement if granted in good faith during the term of this
Agreement. All provisions of this Agreement regarding
indemnification, warranty, liability and limits thereon, records
retention and audit, and confidentiality and/or protection of
proprietary rights and trade secrets shall survive termination
hereof.
8.4. Termination of this Agreement, shall not relieve either of the
parties of their respective obligations to pay any monies due or
which become due as of or subsequent to the date of termination.
9. DEVELOPER PRODUCT MARKETING LITERATURE
9.1. Use of any of the trademarks or trade names of DSPSE, including
without limitation a designation that such trademarks or trade names
are the property of DSPSE, on any sales promotion, advertising, news
release, stationary or other media produced by or for Developer, may
only be done as required by Section 2.5 above or otherwise with the
prior consent of DSPSE which consent will not be unreasonably
withheld.
10. GENERAL
10.1. Developer shall not export the Developer Product, except in
compliance with all applicable U.S. and foreign export and import
laws and regulations. Developer shall be solely responsible for
compliance with and the obtaining of all export licenses which may
be required.
10.2. The trademarks under which DSPSE markets each Component and its
constituent parts are the exclusive property of DSPSE. This
Agreement gives Developer no rights therein, except the restricted
license to reproduce such trademarks as provided in Section 2.5 and
9.1.
10.3. Notices: All notices shall be in writing and deemed given and
received when delivered in person, by telex or facsimile, or by
commercial air courier service. Notices shall be addressed to each
party at its address set forth above, or such other address as the
recipient may have specified by earlier notice to the sender. In
addition, notice to DSPSE shall be to the attention of Distribution
Manager; notice to Developer shall be to the attention of the
person, if any, designated on the signature page of this Agreement
to receive legal notices.
10.4. Assignment; Successors: This Agreement shall not be assigned by
either party without the advance written consent of the other, which
consent both parties agree will not be unreasonably withheld;
provided, however, that DSPSE may assign this Agreement in its
entirety to a successor, to all or a substantial portion of its
business or, to a purchaser of all of DSPSE's rights in any
Component. This Agreement shall be binding upon and inure to the
benefit of the parties, their successors and permitted assigns.
10.5. Entire Agreement: This Agreement constitutes the entire Agreement
between the parties with respect to its subject matter; except as
provided herein, all prior agreements, representations, statements,
negotiations and undertakings, with respect to such subject matter
are terminated and superseded hereby.
10.6. Independent Contractors: This parties shall at all times be
independent contractors with respect to each other in carrying out
this Agreement.
10.7. Amendments: No amendment to this Agreement shall be effective unless
it is in writing and signed by a duly authorized representative of
each party.
10.8. Headings Not Controlling: Headings used in this Agreement are for
reference only and shall not be deemed a part of this Agreement.
10.9. Consent to Breach Not Waiver: No term or provision hereof shall be
deemed waived and no breach excused, unless such waiver or consent
shall be in writing and signed by the party claimed to have waived
or consented. Any consent by any party to, or waiver of, a breach by
the other, whether express or implied, shall not constitute a
consent to, waiver of, or excuse for any other different or
subsequent breach.
10.10.Severability: In the event any provision of this Agreement is held
illegal, void or unenforceable, to any extent, in whole or in part,
as to any situation or person, the balance shall remain in effect
and the provision in question shall remain in effect as to all other
persons or situations, as the case may be.
10.11.Restrictive Rights Legends: If Developer is acquiring any Component
on behalf of any unit or agency of the U.S. Government, the
following shall apply:
(i) For units of the Department of Defense, use, duplication or
disclosure by the Government is subject to restrictions as set
forth in subparagraph (c)(1)(ii) of the Rights in Technical
Data and Computer Software Clause at DFAR 252.277*7013;
(ii) For any other unit or agency use, reproduction or disclosure
is subject to the restrictions set forth in subparagraphs (a)
through (d) of the Commercial Computer Software * Restricted
Rights clause at FAR 52.227 * 19, and the limitations set
forth in DSPSE's standard commercial agreement for this
software. Contractor/manufacturer is DSP Software Engineering,
Inc., 000 Xxxxxxxxx Xxxxxxxx, Xxxxxxx, XX 00000.
10.12.Governing Law: This Agreement shall be deemed to have been made in
the Commonwealth of Massachusetts, and shall be governed by and
construed in accordance with the laws of the Commonwealth of
Massachusetts, exclusive of its rules governing choice of law and
conflict of laws.
