Exhibit 10.2
LICENSE AND PURCHASE OPTION AGREEMENT
This License and Purchase Option Agreement ("Agreement") is made and
entered into on the 12th day of July, 2005 (the "Effective Date") by
and between, Tarantella, Inc., (including its successors and assigns,
"Tarantella"), a California corporation, with its principal place of
business at 000 Xxxxxxxx Xxx, Xxxxx X, Xxx Xxxxx, Xxxxxxxxxx, 00000,
and Propalms Limited ("Pro"), a British corporation, with its place
of business at the Propalms Ltd, Xxxxx Xxxx, Xxxxxx Xxxxxx, Xxxxx
Xxxxxxxxx XX00 0XX
WHEREAS, Tarantella is a developer and distributor of a Tarantella
software product known as "Terminal Services Edition" or "TSE"
(hereafter the "Licensed Product" as more fully described in Exhibit
A attached hereto);
WHEREAS, Pro is in the business of software IP ownership, providing
commercial systems and software application integration, and the
distribution and sale of software;
WHEREAS, Pro wishes to license the Licensed Product, and Tarantella
is willing to license the Licensed Product, subject to and in
accordance with the terms of this Agreement; and
WHEREAS, Pro is entitled to exercise an option to purchase the
Licensed Product and all associated IP (other than the associated
patents and marks which are not unique to the Licensed Product,
if any) per the terms of this Agreement.
NOW, THEREFORE, in consideration of the mutual covenants contained in
this Agreement, the adequacy and sufficiency of which are hereby
acknowledged, Tarantella and Pro agree as follows:
1.0 GRANT OF LICENSE
1.1 Subject to the terms and conditions of this Agreement,
Tarantella hereby grants to Pro an exclusive (except for the SCO
Distributor Agreement dated March 31, 2000 between Tarantella
(formerly the Santa Xxxx Operation) and Tomen Electronics
Corporation (as amended) and the Source Code License and
Localization Agreement dated March 31, 2000 between Tomen and
Tarantella (as amended) and any other licenses that may have been
granted prior to the Effective Date), nontransferable, royalty free,
perpetual, and world wide right to demonstrate, market, produce,
distribute, license and support the Licensed Product through
resellers and distributors or directly to end users. Tarantella
also grants a nontransferable, royalty free, perpetual, and global
license to Pro to use the TSE trademark in connection with the
Licensed Products.
1.2 Tarantella also grants a personal, non transferable, royalty
free, perpetual, exclusive (other than with respect to the TSE Patents
which shall be nonexclusive and the Source Code License with Tomen) and
global license under Tarantella's IP to Pro to use the Licensed
Product's source code ("Source Code"), including for the creation of
derivative works; provided that Pro may not (a) assign, sublicense or
otherwise transfer the Source Code (including any source code associated
with a derivative work) and its related intellectual property
(hereafter "IP" as defined below) rights in any way and (b) subject to
subparagraph (a), Pro shall own any derivative work that it creates.
Any such assignment of the Source Code (including any source code
associated with a derivative works), sublicense or transfer shall be
null and void. "Intellectual Property" or "IP" shall mean any or all
of the following and all worldwide rights therein, arising therefrom,
or associated therewith which are owned by Tarantella as of the
Effective Date: (i) patents (including all improvement patents,
enhancements and other modifications) (collectively, "the TSE Patents"),
(ii) inventions (whether patentable or not), invention disclosures,
improvements, trade secrets, proprietary information, know how,
processes, technology, technical data and customer lists, (iii)
copyrights, copyright registrations and applications therefor and all
other rights corresponding thereto throughout the world, (iv)
computer software, including all source code, object code, firmware,
development tools, files, records and data, all media on which any of
the foregoing is recorded, all Web addresses, sites and domain names,
(v) industrial designs and any registrations and applications therefor
throughout the world, (vi) trade names, logos, common law trademarks
and service marks, trademark and service xxxx registrations and
applications therefor and all goodwill associated therewith throughout
the world, (vii) databases and data collections and all rights therein
throughout the world, (viii) processes, devices, prototypes, schematics,
test methodologies, and development tools, (ix) any similar,
corresponding or equivalent rights to any of the foregoing and
(x) documentation related to any of the foregoing.
1.3 Except as specifically set forth in Sections 1.1 and 1.2
hereof and subject to Section 14, Pro shall have no other rights, and
no such rights shall be granted in the Licensed Products and the IP
related to, or in connection with, the Licensed Product (the "TSE IP").
Subject to Section 14, ownership of the Licensed Product, and except
as specifically set forth in Sections 1.1 and 1.2, all TSE IP are and
shall at all times be retained by Tarantella including the right to
enforce all rights associated with the TSE IP provided, that for the
term of this Agreement Tarantella shall have no right to use the
TSE IP for commercial purposes or to create and to demonstrate, market,
produce, distribute, sell, license, support or otherwise use any such
derivative works created by Tarantella (or its assignees). The
parties agree and acknowledge that notwithstanding the foregoing,
Tarentella (and its successors and assigns) are permitted to make use
of the TSE Patents for licensing activities arising out of suspected
infringement or broad based cross licensing activities.
1.4 The grant of license in this Section 1 does not contemplate or
include the transfer of the remote data protocol ("RDP") license or
license to the Detours Library from the Microsoft Corporation
("Microsoft"). Pro acknowledges the need for an RDP license to as
well as a Detours License to enable the Licensed Product and agrees
that it shall be solely responsible for acquiring any such license
directly from Microsoft.
2.0 ASSIGNED AGREEMENTS
Subject to the terms and conditions of this Agreement, Tarantella
hereby assigns and delivers to Pro all of its right, title, and
interest in, to and under various agreements regarding the Licensed
Product, including any click-through licenses (the "Assigned
Agreements"). A list of the Assigned Agreements is attached hereto
as Exhibit B. Pro hereby specifically assumes each of the Assigned
Agreements and agrees to be bound by the terms and conditions of the
Assigned Agreements, including all obligations of Tarantella
thereunder.
3.0 SOFTWARE LICENSE AGREEMENT
Pro shall require its customers to execute or cause to be executed a
license agreement between Pro and any customer containing provisions
substantially similar to those included in the software license
agreement as set forth in Exhibit C. Pro shall provide a copy of any
such license agreement prior to its use and any such license agreement
shall be subject to the approval of Tarantella, which approval shall
not be unreasonably withheld or delayed.
4.0 SUPPORT AND MAINTENANCE OF LICENSED PRODUCT
4.1 Pro agrees that it shall be solely responsible for and shall
provide, at a minimum, to Tarantella's current Licensed Product
customers, support and maintenance services in accordance with the
relevant Assigned Agreements. Such support and maintenance services
consist of technical assistance via telephone or e-mail and upgrades
and updates to the Licensed Product if and when they become available
as more specifically described in the relevant Assigned Agreements.
4.2 After the current term of any agreement or commitment to
provide support and maintenance by Tarantella to a Licensed Product
customer expires or is otherwise terminated, and to the extent that
Pro elects to continue to provide such support and maintenance, Pro
shall enter into new agreements or commitments that are solely between
Pro and any such customers.
4.3 Tarantella will prepare a letter to all current TSE customers
informing them of this Agreement and that various rights of the TSE
product have been purchased by Pro. This letter will be attached as
Exhibit E to this Agreement.
4.4 Tarentella shall provide Pro with the names of the TSE
developers and support team personnel.
5.0 MARKETING
5.1 Tarantella shall provide to Pro a master copy or make available
for web download, all available marketing materials, spec or data
sheets, brochures, presentations, relevant sales tools, and any similar
materials related to the Licensed Products. Pro shall have the right
to use such materials, subject to the terms of this Agreement. Pro may
modify or rebrand such materials as it sees fit but only to the extent
not otherwise in breach of the terms of this Agreement.
5.2 Pro and Tarentella shall issue a mutually agreeable press
regarding this Agreement within seven (7) days .
6.0 PRICING AND PAYMENT
6.1 Pro shall make payments to Tarantella in United States dollars.
Pricing, fees, royalties, and the payment terms are set forth in
Exhibit D.
6.2 Pro shall provide for and bear all costs of Pro production,
development, inventory, stocking, and distribution of the Licensed
Product.
6.3 Pro shall pay for the Licensed Product as set forth in
Exhibit D, which is exclusive of shipping, handling, and any federal,
state, municipal or other governmental taxes, duties, licenses, fees,
excises or tariffs now or hereinafter imposed on the production,
storage, licensing, sale, transportation, import, export or use of
Licensed Products. Pro agrees to pay such charges or, in lieu thereof,
Pro shall provide an exemption certificate acceptable to Tarantella and
the applicable taxing authority. Tarantella, however, shall be
responsible for all taxes based upon its net income.
7. TERM OF AGREEMENT; OBLIGATIONS UPON TERMINATION
7.1 This Agreement shall be in effect from the Effective Date and
will continue thereafter until terminated in accordance with the terms
of this Agreement.
7.2 Should either party materially breach any provision of this
Agreement, and fail to remedy such breach within thirty (30) days
of written notice thereof, the injured party may terminate this
Agreement, as well as pursue any other rights and remedies provided
by law or equity. Upon such termination, Pro shall cease any and
all use, sale or distribution of the Licensed Product (including any
derivative works); provided that any such termination shall not
affect any customer licenses of the Licensed Products properly
acquired hereunder prior to the effective date of such termination.
8.0 WARRANTY
8.1 Tarantella does not warrant that the Licensed Products will
meet Pro requirements or that its operation will be uninterrupted or
error free. Tarantella warrants that the reproduction of the software
on the media material provided by Tarantella is correct in all
material ways.
8.2. Tarantella warrants that it has provided Pro all the
information relating to any licensing of the TSE product.
Tarantella also warrants that unless specified within this Agreement
there are no lawsuits or any legal actions pending with the TSE
product.
8.3 EXCEPT AS SPECIFICALLY PROVIDED IN SECTION 8.1 and 8.2,
LICENSED PRODUCTS ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE IMPLIED
WARRANTIES OF TITLE, NONINFRINGEMENT, MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE.
8.4 TARANTELLA MAKES NO WARRANTIES OF ANY KIND, EXPRESSED OR
IMPLIED, WITH RESPECT TO ANY THIRD PARTY OR OPEN SOURCE TECHNOLOGY
THAT MAY BE INCLUDED IN OR WITH THE LICENSED PRODUCT, INCLUDING, BUT
NOT LIMITED TO, THE IMPLIED WARRANTIES OF TITLE, NONINFRINGEMENT,
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
8.5 TARANTELLA MAKES NO WARRANTY DIRECTLY TO PRO END USER
CUSTOMERS AND NO SUCH CUSTOMER SHALL HAVE ANY THIRD PARTY RIGHTS
AGAINST TARANTELLA.
9.0 LIMITATION OF LIABILITY
9.1 NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR INDIRECT,
SPECIAL, PUNITIVE, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND
SUSTAINED OR INCURRED IN CONNECTION WITH THIS AGREEMENT AND THE
SOFTWARE THAT IS SUBJECT TO THIS AGREEMENT REGARDLESS OF THE FORM
OF ACTION AND WHETHER OR NOT SUCH DAMAGES ARE FORESEEABLE, AND EVEN
IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS. IN
NO CASE WILL TARANTELLA BE LIABLE FOR ANY REPRESENTATION OR WARRANTY
MADE TO ANY THIRD PARTY BY PRO OR ANY AGENT OF PRO OTHER THAN THOSE
WARRANTIES PERMITTED HEREIN.
9.2 WITH THE EXCEPTION OF THE INDEMNIFICATION OF BOTH PARTIES AS
SET FORTH BELOW, IN NO EVENT SHALL TARANTELLA'S LIABILITY UNDER OR
ARISING OUT OF THIS AGREEMENT EXCEED THE SUM OF MONIES RECEIVED BY
TARANTELLA FROM PRO UNDER THIS AGREEMENT.
10.0 INDEMNIFICATION
10.1 Tarantella agrees to indemnify, defend and hold PRO and its
resellers, distributors, customers and other third parties
(collectively, "Indemnitees") harmless from any and all damages,
liabilities, costs and expenses (including expenses and attorney's
fees) incurred by such Indemnitees as a result of any claim, judgment
or adjudication against such Indemnitees alleging that the Licensed
Products, other materials provided by Tarantella hereunder, trade
names or the marks used as permitted hereunder infringe or
misappropriate any U.S. trademark, trade secret, copyright, patent
or other proprietary right of any third party, provided: (i) the
Indemnitee promptly notifies Tarantella in writing of the claim; and
(ii) the Indemnitee agrees that Tarantella will have the sole control
of any action and all negotiations for settlement and compromise.
Notwithstanding the foregoing, Tarantella shall have no obligation or
liability under this Section 10.1 for any infringement claim
resulting from modifications to the Licensed Products not made by
Tarantella, use of the Licensed Products in any manner not expressly
permitted hereunder, or the combination of the Licensed Products with
any product or software not provided by Tarantella, if such
infringement would not have occurred but for such modifications,
misuse or combination. The obligations contained in this Section
10.1 shall expire on the earlier of: a) termination of this Agreement
for a material breach of Pro; b) December 31, 2007 or c) the
expenditure by Tarantella for the discharge of its obligations under
this Section 10.1 of more than $1,000,000.
10.2 Should the Licensed Products, or the operation of the
Licensed Products, become, or in Tarantella's opinion be likely to
become, the subject of infringement of any trademark, copyright or
patent, Pro agrees to permit Tarantella, at Tarantella's option and
expense, either to procure for Pro the right to continue using the
Licensed Products, or to replace or modify the Licensed Products so
that they become noninfringing. If Tarantella determines that neither
of the foregoing options are feasible, then Tarantella shall accept
return of all of the affected Licensed Product(s) and refund to Pro
all amounts paid hereunder for such Licensed Product(s), depreciated
on a straight line method using a useful life of five (5) years.
10.3 .
10.4 THE ABOVE CLAUSE 10.1 and 10.2 STATES THE ENTIRE LIABILITY
OF TARANTELLA WITH RESPECT TO INFRINGEMENT OF PATENTS, COPYRIGHTS,
TRADEMARKS OR ANY OTHER FORM OF INTELLECTUAL PROPERTY RIGHT BY ANY
LICENSED PRODUCT SUPPLIED BY PRO.
10.5 Pro agrees to indemnify, defend and hold Tarantella harmless
from any and all damages, liabilities, costs and expenses (including
expenses and attorney's fees) incurred as a result of any claim,
judgment or adjudication against Tarantella (a) alleging that any
derivative work of the Licensed Product by Pro infringe or
misappropriate any trademark, trade secret, copyright, patent or other
proprietary right of any third party, (b) alleging any breach of the
terms of any of the Assigned Agreements or (c) alleging any breach of
the obligation to provide support and maintenance as contemplated in
Section 4.0; provided, that in any such circumstance, (i) Tarantella
promptly notifies Pro in writing of the claim; and (ii) Tarantella
agrees that Pro will have the sole control of any action and all
negotiations for settlement and compromise.
11.0 RESTRICTED RIGHTS LEGEND
When licensed to the U.S., State, or Local Government, the Licensed
Product and software documentation distributed by Pro is commercial
software or documentation as defined in Federal Acquisition Regulation
clause 12.212, and has been developed exclusively at private expense.
If Licensed Product or software documentation is acquired by or on the
behalf of the U.S. Government or a U.S. Government prime contractor or
subcontractor (at any tier), the U.S. Government's rights in the
Licensed Software or technical data is as set forth in this Agreement;
this is in accordance with 48 CFR 227.7201 through 227.7202(4) (for
Department of Defense (DoD) acquisitions) and with 48 CFR 2.101 and
12.212 (non-DoD acquisitions). All Licensed Product or software
documentation acquired by the State or Local Government said computer
software/documentation shall be acquired under the licenses customarily
provided to the general public. Manufacturer: Tarantella, Inc.,
000 Xxxxxxxx Xxx, Xxxxx X, Xxx Xxxxx, Xxxxxxxxxx 00000.
12.0 EXPORT CONTROL
Pro shall comply with all applicable Federal, state and local laws,
ordinances, codes, rules and regulations in the performance of this
Agreement, including, without limitation, Federal Communications
Commission Regulations, U.S. Department of Commerce Export Regulations,
and U.S. Treasury and U.S. Customs Regulations.
13.0 PATENT, COPYRIGHT AND TRADEMARK RIGHTS
13.1 In the event that Pro uses the name of the Licensed Products
or the "TSE" trademark in any of its advertising, publications,
packaging, external or other communications of any kind, Pro shall
cause to appear the appropriate proprietary designations and notices
for the Licensed Products, including, all necessary, copyright,
trademark, service xxxx and patent notices. At a minimum, the
appropriate trademark symbol must be used at least once for each
Licensed Product in accordance with standard trademark practices.
13.2 Pro agrees not to assert any patent rights related to any
Intellectual Property rights licensed or transferred under this
Agreement against Tarantella (and its successors and assigns), its
affiliates, customers, distributors or other licensees for making,
using, selling, offering for sale, or importing any products which
implement, use or incorporate any such Intellectual Property rights
licensed or transferred under this Agreement.
14.0 RIGHT TO PURCHASE
At anytime after the Maximum Amount has been paid by Pro, or
Tarantella decides in its sole discretion to sell the TSE IP (other
than the TSE Patents), but in no event later than 31st December, 2007,
Pro shall have the right to purchase the TSE IP (other than the TSE
Patents) for $1.00 and on such other terms and conditions as may be
agreed in good faith between the parties in their reasonable
discretion. Once the Maximum Amount has been paid and the TSE IP
rights (other than the TSE Patents) have been transferred, the
Agreement shall be terminated.
15.0 CONFIDENTIALITY
15.1 Each party shall at all times retain in confidence all
confidential and/or proprietary information and know how disclosed
or made available by the other. The recipient shall make no use
of such information and know how except under the terms and for
the duration of this Agreement (or thereafter as necessary to
exercise its rights that continue beyond termination hereof). The
parties hereby agree that all the terms and conditions of this
Agreement and exhibits hereto, shall be treated as confidential
material and shall not be disclosed without the prior written
consent of the disclosing party.
15.2 Confidential and/or proprietary information shall not include
information the recipient can document: (a) is in or (through no
improper action or inaction by the recipient) enters the public
domain; (b) was rightfully in its possession or known by it prior
to receipt from the disclosing party; (c) was rightfully disclosed
to it by another person without restriction; or (d) was independently
developed by it by persons without access to such information and
without use of any confidential and/or proprietary information of
the disclosing party.
15.3 Each party, with prior written notice to the disclosing party,
may disclose confidential and/or proprietary information to the
minimum extent possible that is required to be disclosed pursuant to
the lawful requirement or request of a government entity or agency,
provided that reasonable measures are taken to guard against further
disclosures, including without limitation, seeking appropriate
confidential treatment or a protective order, or assisting the other
party to do so.
15.4 Each party understands that the other party may develop or
receive information similar to the confidential information. Subject
to copyrights and patent rights of each party, (i) either party may
develop or acquire technology or products, for itself or others, that
are similar to or competitive with the technology or products of the
disclosing party, and (ii) each party is free to use information which
may be retained in the unaided memory of the receiving party's
employees or contractors who have had access to the confidential
information of the other party disclosed hereunder (including, in
this context, engineers who may have had access to the Licensed
Product Source code prior to the Effective Date).
16.0 ASSIGNMENT OF RIGHTS
Neither party may assign this Agreement without the prior written
consent of the other party, which consent shall not be unreasonably
withheld or delayed. Notwithstanding the foregoing, Tarantella may
assign this Agreement without consent or restriction to any party
acquiring Tarantella, or all, or substantially all of its assets.
Tarantella shall use commercially reasonable efforts to provide Pro
with notice of any such assignment. This Agreement if properly
assigned shall be binding upon and inure to the benefit of the
parties hereto, their successors, administrators, heirs and assigns.
17.0 CONTROLLING LAW
This Agreement and the licenses granted under it shall be governed by
and construed in accordance with the laws of the State of California,
excluding its conflict of law provisions thereof, and the parties
hereby consent to the exclusive jurisdiction of the California courts.
The UN Convention for the International Sale of Goods shall not apply.
18.0 SEVERABILITY
If any provision or provisions of this Agreement shall be held to be
invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not in any way be
affected or impaired thereby. The parties will seek in good faith to
agree on the replacement of any invalid, illegal, or unenforceable
provision with a valid, legal, and enforceable provision which, in
effect, will, from an economic or substantive viewpoint, most nearly
and fairly approach the effect of the invalid, illegal, or unenforceable
provision.
19.0 ACTS BEYOND PARTIES' CONTROL
Neither party shall be liable for any delay or failure in its
performance hereunder due to any cause beyond its reasonable control;
provided, however, that this provision shall not be construed to
relieve Pro of its obligation to make any payments pursuant to this
Agreement.
20.0 BINDING EFFECT
Subject to the limitations herein expressed, this Agreement will
benefit and be binding upon the parties, their successors,
administrators, heirs and assigns.
21.0 THE PARTIES AS INDEPENDENT CONTRACTORS
The parties shall at all times be independent contractors and shall
so represent themselves to all other parties. No party has granted to
the other the right to bind it in any manner or thing whatsoever and
nothing herein shall be deemed to constitute a partnership, to make
one party the agent or legal representative of the other, nor to
constitute the parties as joint venturers.
22.0 WAIVER
The waiver of one breach or default hereunder shall not constitute
the waiver of any subsequent breach or default.
23.0 REPRESENTATION AND WARRANTIES
Each party represents and warrants that (a) it has all requisite
corporate power and authority to execute, deliver, and perform this
Agreement and (b) the execution and delivery by it, the
consummation of the transactions contemplated hereby and the
performance by it of its obligations hereunder have been duly and
validly authorized by all necessary corporate action.
24.0 ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between Pro and
Tarantella regarding the subject matter hereof and supersedes all
previous negotiations, proposals, commitments, writings,
advertisements, and understandings of any nature whatsoever. This
Agreement may be modified only in writing executed by an authorized
representative of each party. Any terms set forth on any purchase
order or other document related hereto which are submitted to or
sent by either party and which are in conflict with or in addition
to the terms of this Agreement shall be null and void.
25.0 SURVIVAL OF PROVISIONS
The provisions of this Agreement that by their nature extend beyond
the applicable expiration date or other termination of this Agreement
will survive and remain in effect until all obligations are satisfied.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the Effective Date.
TARANTELLA, INC. PROPALMS LTD.
By: By:
Name: Name:
Title: Title:
Date: Date:
EXHIBIT A
LICENSED PRODUCT DESCRIPTION
1. The Licensed Product is described as follows:
Secure Global Desktop Terminal Services Edition (TSE)
Versions :
V.2.1
V.4.0
License Generator for Keys for the above versions
