CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.
EXHIBIT 10.22
SALE AND LICENSE AGREEMENT
THIS SALE AND LICENSE AGREEMENT (the "Agreement") is made as of March 20,
2000 (the "Effective Date") by and between ***, Inc., a Delaware corporation
with its principal place of business at *** ("Company"), and Xxxxxxx.xxx, Inc.,
a Delaware corporation with its principal place of business at 000 Xxxxxxxx,
Xxxxxxx Xxxx, XX 00000 and its affiliates ("Xxxxxxx.xxx").
RECITALS
WHEREAS, Company owns certain client and server support software known as
***;
WHEREAS, Xxxxxxx.xxx wishes to receive a license to the source code to the
*** software pursuant to the terms of this Agreement and Company wishes to
provide such license; and
WHEREAS, Company wishes to provide Xxxxxxx.xxx certain rights if
Xxxxxxx.xxx exercises the option granted by Company pursuant to this Agreement
and Xxxxxxx.xxx wishes to provide certain rights back to Company in such event.
NOW THEREFORE, in consideration of the mutual promises set forth below, the
sufficiency of which is hereby acknowledged, the parties agree as follows:
AGREEMENT
1. Definitions.
-----------
1.1 "Delivery Date" means the date Company delivers the Trio Source
Code to Xxxxxxx.xxx.
1.2 "Employee" means an employee or independent contractor
performing services for or on behalf of Xxxxxxx.xxx, or Company, as applicable.
1.3 "Intellectual Property Rights" means, to the extent owned or
controlled by the granting or transferring party in any country, all relevant
(i) copyright rights (including copyright applications), (ii) mask work rights,
(iii) rights to exploit trade secrets and other non-public or confidential
information, (iv) patent rights (including patent applications, disclosures,
renewals, divisions, continuations, extensions or continuations in part, and
patentable inventions), (v) moral rights, (vi) trademarks, (vii) know-how and
(viii) any other similar rights or intangible assets recognized under any laws
or international conventions, in any country or jurisdiction in the world,
including but not limited to those patent, copyright and trademark registrations
and pending applications listed on Exhibit D.
1.4 "Licensed Object Code" shall have the meaning stated in Section
3.3.2.
1.5 "Licensed Source Code" shall have the meaning stated in Section
3.3.1.
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
1.6 "Limited Functionality Version of Trio" means the Licensed
Object Code with functionality limited to capabilities described in Exhibit E.
1.7 "New Version" means a new release of Trio which contains new
features and/or additional functionality that Company makes generally available
to its customers or which Company uses on the Company Support Website, and which
is identified by a change in the version number to the left of the decimal
point. New Versions do not include Company Integrated Products.
1.8 "Non-Web-Based" shall have the meaning stated in Section 3.4.
1.9 "Company Integrated Products" means computer code independently
developed by Company without use of or reference to Confidential Information
(other than the Trio Code) which integrates with the Trio Code but does not
incorporate Trio Code or proprietary portions thereof.
1.10 "Company Support Website" means the website operated by Company
identified by the Company domain name or any successor web site, including all
sub-sites containing the same branding, look, feel, and functionality, for
providing a marketplace for support technicians to offer and provide computer
users with technical support services, all affiliated sites, and all co-branded
sites.
1.11 "Object Code" means software in machine readable format.
1.12 "Option Period" shall have the meaning stated in Section 3.1.
1.13 "Option to Purchase" shall have the meaning stated in Section
3.1.
1.14 "Source Code" means software in human-readable format and
accompanying documentation.
1.15 "Trio" means the complete *** client and server software, in
source code form, including any related technical specification documentation
provided by Company, and any necessary build scripts and internal development
tools required to create derivative works including those components as more
particularly described on Exhibit B ("Trio Components"). For the avoidance of
---------
doubt, Trio shall also include all previous versions of what is currently known
as ***. Trio Code does not include any software belonging to ***.
1.16 "Trio Code" shall mean all Source Code, Object Code, Technology
and Intellectual Property Rights for Trio including: (i) as currently released,
(ii) all previously released versions prior to the date that Xxxxxxx.xxx
exercises the Option to Purchase, (iii) Trio in the form in which it is
integrated with the *** client software as of the date that Xxxxxxx.xxx
exercises the Option to Purchase, and (iv) all New Versions and Upgrades.
1.17 "Technology" shall mean inventions (whether or not patentable),
ideas, processes, formulas, and know-how related to Trio and controlled by
Company and either (a)
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
used by Company as of the date of this Agreement, or (b) used by Company in
development or implementation of New Versions or Upgrades.
1.18 "Upgrade" means a new release of Trio which contains
corrections or bug fixes that Company makes generally available to its customers
who have a current maintenance agreement for Trio or which Company uses on the
Company Support Website, and which is identified by a change in the version
number to the right of the decimal point. An Upgrade does not include New
Versions.
2. Trio Source Code License Grant to Xxxxxxx.xxx.
---------------------------------------------
2.1 Source Code License. Subject to the terms and conditions of
-------------------
this Agreement, Company hereby grants to Xxxxxxx.xxx, and Xxxxxxx.xxx hereby
accepts, a nonexclusive, nontransferable (subject to Section 12.2
("Assignment")), fee-bearing, limited license to use, modify and create
derivative works of the Source Code version of Trio subject to the following
limitations: (i) Xxxxxxx.xxx may use, modify or create derivative works of the
Source Code only for Xxxxxxx.xxx's internal development efforts in connection
with integrating the Source Code of Trio with Xxxxxxx.xxx's software, (ii) only
Employees of Xxxxxxx.xxx may have access to, use, modify or create derivative
works of the Source Code of Trio, (iii) Xxxxxxx.xxx will only make copies of the
Source Code of Trio as necessary to utilize the rights stated in this Section
2.1, and (v) Xxxxxxx.xxx shall take all security precautions to maintain the
confidentiality of and prevent accidental or other loss or disclosure of the
Source Code of Trio as it uses to protect its own source code, but in no event
less than commercially reasonable security precaution. If Xxxxxxx.xxx does not
exercise the Option to Purchase, then the license for the Trio Source Code
stated in this Section 2.1 shall terminate upon the expiration of the Option
Period. If Xxxxxxx.xxx exercises such Option to Purchase, then, subject to the
terms of this Agreement, all rights in and to the Trio Source Code shall be
transferred and assigned to Xxxxxxx.xxx, in accordance with Section 3.
2.1.1 Limitations; Ownership. Except in the event Xxxxxxx.xxx
----------------------
exercises the Option to Purchase and except for the rights stated in Section 2,
(i) Xxxxxxx.xxx is granted no rights in Trio, and Company expressly reserves to
itself all rights not granted to Xxxxxxx.xxx, and (ii) Company retains exclusive
ownership of Trio as well as any modifications and derivative works of Trio
created by Xxxxxxx.xxx which do not incorporate Xxxxxxx.xxx code or proprietary
portions thereof. In the event Xxxxxxx.xxx elects not to exercise the Option to
Purchase, Xxxxxxx.xxx shall immediately provide Company with all modifications
and derivative works of Trio created by Xxxxxxx.xxx, unless such modifications
and derivative works incorporate Xxxxxxx.xxx software code or proprietary
portions thereof. After Xxxxxxx.xxx exercises the Option to Purchase, it shall
own any modifications and derivative works of Trio that it creates during the
Option Period. Xxxxxxx.xxx will not alter or remove any proprietary rights
notice in the Source Code of Trio or the documentation therefore unless
Xxxxxxx.xxx exercises the Option to Purchase.
2.2 Fees For Trio Source Code License. Xxxxxxx.xxx shall pay to
---------------------------------
Company the sum of *** dollars (US $***) as a one-time, fully-paid license fee
in consideration of the license granted to Xxxxxxx.xxx in Section 2.1. This
license fee
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
shall be paid to Company within thirty (30) days of the Delivery Date. The
license fee shall become non-refundable and non-recoupable upon receipt by
Company.
2.3 Training Regarding Trio Source Code. Company shall provide
-----------------------------------
training to Xxxxxxx.xxx engineers during a sixty-day period (the "Training
Period") to be specified by Xxxxxxx.xxx, but in no event shall the Training
Period extend beyond three (3) months after the expiration of the Option Period.
The training shall consist of up to four (4) eight (8) hour days and four (4)
four (4) hour days of training to be provided on dates during the Training
Period to be mutually agreed by the parties; such agreement shall not be
unreasonably withheld. Xxxxxxx.xxx shall pay to Company the sum of *** dollars
(US $***) for this training. Training shall be provided on-site at Xxxxxxx.xxx's
facilities and there shall be no limit to the number of Employees entitled to
participate in such training. Such payment shall be made within twenty (20) days
after commencement of the Training Period but in any event no later than the end
of the Option Period. The training fee shall become non-refundable and non-
recoupable upon receipt by Company, and the training shall be deemed complete
three (3) months after expiration of the Option Period or, in the event
Xxxxxxx.xxx elects not to exercise the Option to Purchase, the expiration of the
Option Period.
2.4 Integration Assistance From Company. For sixty (60) days after
-----------------------------------
the Delivery Date, Company shall provide Xxxxxxx.xxx with access to two (2)
Company designated technical Employees who are sufficiently knowledgeable
regarding the Source Code of Trio to provide integration assistance to
Xxxxxxx.xxx. The Company designated Employees shall advise Xxxxxxx.xxx how to
best integrate the Source Code of Trio with the Xxxxxxx.xxx software, but such
advice shall not require creation of software code or documentation. If
Xxxxxxx.xxx deems necessary, such assistance shall be on-site at Xxxxxxx.xxx
facilities. Xxxxxxx.xxx shall pay Company a technical assistance fee of ***
dollars (US $***) in consideration of such support provided by Company. The
technical assistance fee shall be payable to Company within thirty (30) days of
the Delivery Date. This payment shall be deemed non-refundable and non-
recoupable upon receipt by Company, and integration assistance shall be deemed
complete upon the earlier of three (3) months after the expiration of the Option
Period or, in the event Xxxxxxx.xxx elects not to exercise the Option to
Purchase, expiration of the Option Period.
2.5 Maintenance of Trio Source Code. For a period of ninety (90)
-------------------------------
days after the Delivery Date, Company shall provide maintenance and support for
the Trio Source Code as originally provided to Xxxxxxx.xxx, and for Upgrades or
New Versions, if any, created by Company during such 90-day period. The support
and maintenance shall be provided during Company's regular business hours,
Monday through Friday, 8 am to 5 pm Pacific time, except Company holidays.
Xxxxxxx.xxx shall contact Company for maintenance and support at
customerservice@***.com. In addition, Company shall provide Backline
maintenance and support for the Trio Source and Object Code, as originally
provided and previous releases, and for Upgrades or New Versions, if any, to
assist Xxxxxxx.xxx in the transition of support obligations; such Backline
maintenance obligation shall expire upon the earlier to occur of one (1) year
after Xxxxxxx.xxx elects to exercise the Option to Purchase or expiration of
maintenance and support obligations assigned to Xxxxxxx.xxx pursuant to Section
3.4. "Backline" maintenance shall mean assistance only after Xxxxxxx.xxx has
made reasonable attempts to resolve an error in the Trio Source Code or Object
Code. In consideration of the maintenance and support provided, Xxxxxxx.xxx
shall pay Company *** dollars (US $***).
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
The payment for support and maintenance shall be due and payable within thirty
(30) days after the Delivery Date.
2.6 Engineering Services. Beginning on the Effective Date and
--------------------
ending on the earlier of (i) Xxxxxxx.xxx's exercise of the Option to Purchase,
or (ii) ninety (90) days after the Delivery Date, Company shall provide
engineering services to Xxxxxxx.xxx with respect to Trio. Notwithstanding the
foregoing, the engineering services from Company shall be provided for a minimum
of sixty (60) days after the Effective Date. In consideration of such services,
Xxxxxxx.xxx shall pay to Company *** dollars ($***) for each month during which
Company provides engineering services. The payment for engineering services
shall be due and payable for each month in advance three (3) days after the
Delivery Date and the 23rd day of April and May, 2000. For purposes of this
Section 2.6, the $*** monthly Engineering Services fee is earned by Company
after the first day of such services in each month during the 90 days following
the Effective Date. This payment shall be deemed non-refundable and non-
recoupable upon receipt by Company.
2.7 Upgrades and New Versions. Company agrees to provide the Source
-------------------------
Code for Upgrades and/or New Versions of Trio, if and when available.
Notwithstanding anything to the contrary in Section 2.5, Company's obligation to
provide such Upgrades expires only in the event Xxxxxxx.xxx elects not to
exercise the Option to Purchase. Upgrades, New Versions, and modifications to
the Source Code for Trio (whether or not made generally commercially available)
shall be provided to Xxxxxxx.xxx for the term of this Agreement, without
additional charge, after Xxxxxxx.xxx elects to exercise the Option to Purchase.
3. Option for Source Code Transfer.
-------------------------------
3.1 Option Period. During the period of ninety (90) days after the
-------------
Effective Date (the "Option Period"), Xxxxxxx.xxx shall have an exclusive option
to exercise its right to purchase and obtain all of the Trio Code (the "Option
to Purchase"). Xxxxxxx.xxx shall exercise this option by providing notice to
Company as specified in Section 12.10 ("Notices"). If Xxxxxxx.xxx does not
exercise the option stated in this Section 3 before the end of the Option
Period, then the option shall expire and be of no further effect. During the
Option Period, Company shall not assign, transfer, pledge or otherwise encumber
any Trio Code or agree to do so. Notwithstanding the foregoing and except with
respect to Section 3.3.3 or *** exercising its source code escrow option under
the existing agreement between *** and Company, Company shall not license the
Trio Code to any third party during the Option Period.
3.2 Source Code Transfer. Subject to the terms and conditions of
--------------------
this Agreement and upon exercise of the Option to Purchase:
3.2.1 Company hereby transfers and assigns to Xxxxxxx.xxx,
and Xxxxxxx.xxx hereby accepts, all right, title and interest in and to the Trio
Code. Company will, within sixty (60) days of the Effective Date, provide to
Xxxxxxx.xxx all documentation and information regarding all questions or
challenges or potential bases therefore known to Company as of the Effective
Date with respect to the patentability or validity of any claims of any existing
patents or patent applications relating to the Trio Code.
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
3.2.2 Company agrees that all Trio Code shall be the sole
property of Xxxxxxx.xxx and its assigns, and Xxxxxxx.xxx and its successors and
assigns shall be the sole owner of all patents, trademarks and copyrights and
all other Intellectual Property Rights relevant thereto.
3.2.3 Company and each of its employees, as necessary
(hereinafter collectively referred to as "Company") assign to Xxxxxxx.xxx any
rights Company may have or acquire in all Trio Code (subject to those rights
expressly licensed herein.) Company further agrees as to such Trio Code to
assist Xxxxxxx.xxx in every reasonable way (but at Xxxxxxx.xxx's expense) to
obtain and from time to time enforce patents, trademarks, copyrights and other
Intellectual Property Rights in the Trio Code in any and all countries, and to
that end Company will execute all documents for use in applying for and
obtaining such rights and enforcing the same, as Xxxxxxx.xxx may desire,
together with any assignments thereof to Xxxxxxx.xxx or persons designated by
it. Company's obligation to assist Xxxxxxx.xxx in any and all countries shall
continue beyond the termination of this Agreement. In the event that Xxxxxxx.xxx
is unable for any reason whatsoever to secure Company's signature to any lawful
and necessary document required to secure, protect or assert its Intellectual
Property Rights with respect to Trio Code (including renewals, extensions,
continuations, divisions or continuations-in-part of any patents), Company
hereby irrevocably designates and appoints Xxxxxxx.xxx and its duly authorized
officers and agents, as Company's agents and attorneys-in-fact to act for and in
Company's behalf and instead of Company, to execute and file any such
application and to do all other lawfully permitted acts to further the
prosecution and issuance of patents, the registration of copyrights and
trademarks, or the securing of any other Intellectual Property Rights thereon
with the same legal force and effect as if executed by Company.
3.2.4 Company agrees that this Section 3.2 includes all
rights of paternity, integrity, disclosure and withdrawal and any other rights
that maybe known as or referred to as "moral rights," "artist's rights," "droit
moral," or the like. To the fullest extent any of the foregoing is ineffective
under applicable law, Company hereby provides any and all waivers and consents
necessary to accomplish the purposes of the foregoing to the extent applicable.
3.3 Source Code License to Company. Subject to Company's compliance
------------------------------
with this Agreement and in the event Xxxxxxx.xxx exercises the Option to
Purchase, Xxxxxxx.xxx hereby grants to Company the following:
3.3.1 Source Code License. Subject to the terms and
-------------------
conditions of this Agreement, Xxxxxxx.xxx hereby grants to Company, and Company
hereby accepts, a nonexclusive, nontransferable (subject to Section 12.2
("Assignment")), limited license to use, modify and create derivative works or
Company Integrated Products of the Source Code of Trio in the form in which it
is being used by Company on the day Xxxxxxx.xxx exercised the Option to
Purchase, and related documentation and any derivative works thereof
(collectively, "Licensed Source Code"), subject to the following limitations:
(i) Company may use, modify or create derivative works of the Licensed Source
Code or Company Integrated Products only (a) for the purpose set forth in, and
subject to, Section 3.3.3, and (b) for the purpose of maintaining the Company
Support Website, subject to Section 3.3.4; (ii) only Employees of Company may
have access to use, modify or create derivative works of the Licensed Source
Code; (iii) Company will
6
only make copies of the Licensed Source Code as necessary to utilize the rights
stated in this Section 3.3 of the Agreement; and (iv) Company shall take all
security precautions to maintain the confidentiality of and prevent accidental
or other loss or disclosure of the Licensed Source Code as it uses to protect
its own source code, but in no event less than commercially reasonable security
precautions.
3.3.2 Deployment License. Subject to the terms and
------------------
conditions of this Agreement and upon exercise of the option, Xxxxxxx.xxx grants
to Company, and Company hereby accepts, a world-wide, nontransferable (subject
to Section 12.2 ("Assignment")), non-exclusive, license to (i) use, copy,
modify, and compile into Object Code the Licensed Source Code ("Licensed Object
Code") and related documentation, and (ii) use, copy, and distribute the
Licensed Object Code and related documentation solely (a) to *** Corporation, in
accordance with Section 3.3.3, below, and (b) directly and indirectly in
connection with the Company Support Website, subject to Section 3.3.4.
3.3.3 *** Corporation Relationship. In 1999, *** and Company
----------------------------
entered into a contract regarding the Trio software. For a period of one (1)
year from the Effective Date, *** and Company may amend such contract or enter
into additional contracts regarding Trio (collectively, "*** Contract"). Company
shall have the right to fulfill its contractual obligations to *** Corporation
including but not limited to (i) depositing the Licensed Source Code in an
escrow account pursuant to its obligations to *** Corporation; (ii) providing
support and maintenance services to *** Corporation with respect to the Licensed
Source Code (but only in the event both parties agree, in writing, that Company
may distribute such Licensed Source Code) and Licensed Object Code, and (iii)
provide a defense and indemnity to *** Corporation with respect to the Licensed
Source Code (but only in the event both parties agree, in writing, that Company
may distribute such Licensed Source Code) and Licensed Object Code with respect
to intellectual property rights claims as required by the agreement with ***,
and Xxxxxxx.xxx agrees to provide reasonable assistance, at Company's expense,
with such defense. All such rights are expressly conditioned upon (i) Company
using best efforts to fulfill the obligations in order to prevent the release
from escrow of source code pursuant to the *** Contract, (ii) providing *** with
only Licensed Object Code (unless both parties agree, in writing, that Company
may distribute such Licensed Source Code), (iii) providing to Xxxxxxx.xxx on a
monthly basis, all copies of all modifications and derivative works of Licensed
Source Code and the Licensed Object Code (excluding Company Integrated Product)
which Company created in the prior month, (iv) not allowing *** to transfer,
distribute, or resell the server component of Trio, and (v) ***'s agreement to
(x) be subject to a license agreement at least as restrictive as the contract
between *** and Company dated in 1999, and (y) distribute the client-side
component of Trio pursuant only to a license agreement at least as restrictive
as the End User License Agreement attached as Exhibit G.
3.3.4 Company Support Website Conditions. The rights set
----------------------------------
forth in Section 3.3.2(b) are expressly conditioned upon (i) providing third
parties only the Limited Functionality Version, (ii) providing to Xxxxxxx.xxx on
a monthly basis, all copies of all modifications and derivative works of
Licensed Source Code and the Licensed Object Code (excluding Company Integrated
Product) which Company created in the prior month, (iii) providing third parties
only the License Object Code of the Limited Functionality Version, and
7
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
(iv) distributing the Limited Functionality Version only pursuant to a license
agreement at least as restrictive as the End User License Agreement attached as
Exhibit G.
3.3.5 Restrictions. Company shall have only the rights in
------------
the Licensed Source Code and the Licensed Object Code as stated in this Section
3. All rights not expressly granted to Company are reserved to Xxxxxxx.xxx.
Company shall not resell, sublicense, or redistribute the Licensed Source Code
or the Licensed Object Code to any third party, except as permitted herein.
Notwithstanding anything else, Xxxxxxx.xxx retains all title to, and, except as
expressly licensed herein, all rights to Trio, all copies and derivative works
thereof (excluding Company Integrated Products) (by whomever produced) and all
related documentation and materials regarding Trio provided by Xxxxxxx.xxx to
Company pursuant to this Section 3.
3.3.6 Disclaimer of Warranties. XXXXXXX.XXX MAKES NO
------------------------
REPRESENTATIONS OR WARRANTY OF ANY KIND WHETHER EXPRESS OR IMPLIED (EITHER IN
FACT OR BY OPERATION OF LAW) WITH RESPECT TO THE LICENSED OBJECT CODE, LICENSED
SOURCE CODE, MODIFICATIONS TO TRIO CODE, OR OTHER MATERIAL PROVIDED BY
XXXXXXX.XXX. XXXXXXX.XXX EXPRESSLY DISCLAIMS ALL IMPLIED WARRANTIES OF NON-
INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
3.3.7 Option Price. In consideration of the transfer and
------------
assignment in Section 3.2 ("Source Code Transfer") and in the event that
Xxxxxxx.xxx exercises its Option to Purchase, Xxxxxxx.xxx shall pay to Company
the sum of *** dollars ($***). This sum shall be paid to Company on or before
August 10, 2000.
3.4 Existing Customer Transition. If Xxxxxxx.xxx exercises the
----------------------------
option stated herein, then the parties shall use commercially reasonable efforts
to transition Company's Non-Web-Based customers for Trio, except ***
Corporation, to Xxxxxxx.xxx. As used in this Agreement, "Non-Web-Based" means
those Company customers who have rights to use Trio through means other than the
Company Support WebSite. Company agrees to assign to Xxxxxxx.xxx those Non-Web-
Based customer contracts under which Company grants use of Trio that Company may
assign. Company agrees to use commercially reasonable efforts to obtain consent
to assign contracts for use of Trio which may not be assigned without consent.
Once the transition is complete, Xxxxxxx.xxx shall be fully responsible for
providing all support and maintenance, including Upgrades and New Versions, to
such customers, and Xxxxxxx.xxx shall be entitled to receive all sums that
become due and owing from customers, or have been paid by the customers for
period of support and maintenance not already provided by Company. Company shall
remain liable for any and all liabilities which accrued prior to the assignment
of customer contract.
3.5 Prospective Customer Transition. During the six (6) months
-------------------------------
after Xxxxxxx.xxx exercises the option stated herein, the parties shall use
commercially reasonable efforts to transition leads regarding prospective
customers from the Company marketing team to the Xxxxxxx.xxx marketing team. The
transition efforts shall include transferring Company's contact database,
introductions to Company's contacts, and assistance with sales support efforts
(e.g., product presentations and demonstrations).
8
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
3.6 Restricted Customers. Xxxxxxx.xxx shall not license Trio either
--------------------
alone or combined with any other software and/or hardware to any of the
following companies for a period of *** commencing on the date that Xxxxxxx.xxx
exercises the Option to Purchase: ***, and ***.
3.7 Future Payments. In the event that Xxxxxxx.xxx exercises its
---------------
Option to Purchase, Xxxxxxx.xxx agrees (i) to pay Company minimum payments equal
to a total of $*** in *** (***) equal *** installments beginning ***, 2000 and
thereafter on the 20th day of the *** of each successive ***, and (ii) for each
agreement Xxxxxxx.xxx enters into with the companies listed on Exhibit C
("Company Customers"), that includes Trio, during the *** following the exercise
of the Option to Purchase, to pay Company (a) *** percent (***%) of the total
Net License Revenue (defined below) of agreements that Xxxxxxx.xxx enters into
with Company Customers with respect to Trio as a stand-alone product; and (b)
*** percent (***%) of the total Net License Revenue (defined below) of the
agreements that Xxxxxxx.xxx enters into with the Company Customers with respect
to Trio, as licensed in combination or incorporated with Xxxxxxx.xxx products,
provided, however, total payments to Company pursuant to this Section 3.7 shall
not exceed $***. As used in this Agreement, "Net License Revenue" means the
license fees plus professional services fees (but not support and maintenance
fees) for licenses of Trio either as a stand-alone product or as incorporated
into Xxxxxxx.xxx products, received from such Company Customers during the term
of such agreement with Company Customers.
3.7.1 *** Corporation. In no event may Xxxxxxx.xxx license
---------------
Trio on a stand-alone basis to *** Corporation during the *** period beginning
on the exercise of the Option Period. In the event Xxxxxxx.xxx licenses Trio as
integrated with Xxxxxxx.xxx products, Xxxxxxx.xxx shall pay Company *** percent
(***%) of Net License Revenue.
3.7.2 ***, Inc. Xxxxxxx.xxx may license Trio as a stand-
---------
alone product or in combination or incorporated with Xxxxxxx.xxx products to
***, Inc. provided such sale is under an agreement which requires ***, Inc.'s
participation as a corporate service provider in the Company Support Website.
Xxxxxxx.xxx agrees to pay Company (a) *** percent (***%) of the total Net
License Revenue of agreements that Xxxxxxx.xxx enters into with ***, Inc. with
respect to Trio as a stand-alone product; and (b) *** percent (***%) of the
total Net License Revenue of the agreements that Xxxxxxx.xxx enters into with
***, Inc. with respect to Trio, as licensed in combination or incorporated with
Xxxxxxx.xxx products, provided, however, total payments to Company pursuant to
this Section shall not exceed $***.
3.7.3 Payment Schedule. Payments to Company for any Net
----------------
License Revenue received from sales to Company Customers, ***, or ***, as
provided above, shall be due and payable within thirty (30) days following the
calendar quarter in which such Net License Revenue is received by Xxxxxxx.xxx.
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
3.8 Records and Audit. Xxxxxxx.xxx agrees to keep complete, clear
-----------------
and accurate records for at least one (1) year after its obligation to make
payments to Company in Section 3.7 expires relating to the amounts owed to
Company. Company or its agent may audit the applicable records in order to
verify Xxxxxxx.xxx's compliance with the payment obligation in Section 3.7. Any
such audit shall be conducted during regular business hours at Xxxxxxx.xxx's
offices, with reasonable advance notice, and in such a manner as not to
interfere unreasonably with Xxxxxxx.xxx's normal business activities. Company
shall bear the expenses of any such audit unless such audit reveals an
underpayment of five percent (5%) or more, in which event the costs of such
audit shall be borne by Xxxxxxx.xxx. Xxxxxxx.xxx shall promptly pay any amount
found due and owing to Company, including interest on past due amounts at the
lesser of 1 1/2 percent per month or the highest rate allowed by applicable law,
and audit expenses, if any, due to Company under this Section.
4. Taxes. Xxxxxxx.xxx shall be responsible for and shall pay sales,
-----
value-added or similar tax arising from this Agreement except taxes based on
Company's net income.
5. Marketing.
---------
5.1 Press Announcement. Company and Xxxxxxx.xxx will issue a
------------------
mutually agreeable joint press release regarding this Agreement.
5.2 Xxxxxxx.xxx Trademark. Xxxxxxx.xxx hereby grants to Company a
---------------------
non-exclusive, non-transferable (subject to Section 12.2 ("Assignment")),
royalty-free, world-wide right to use or display Xxxxxxx.xxx's trade name and
trademark ("Xxxxxxx.xxx Trademarks") as identified on Exhibit A ("Trademarks")
---------
in Company's marketing materials, sales efforts and on Company's web site.
Company shall comply with Xxxxxxx.xxx's trademark usage guidelines of which
Company has notice in connection with all Company use of the Xxxxxxx.xxx
Trademarks. All of Company's use of the Xxxxxxx.xxx Trademarks shall be subject
to Xxxxxxx.xxx's prior approval not to be unreasonably withheld or delayed. No
approval by Xxxxxxx.xxx shall be required for the use or display of the
Xxxxxxx.xxx Trademarks if such use or display has been previously approved by
Xxxxxxx.xxx. Xxxxxxx.xxx shall have the right to inspect Company's use of the
Xxxxxxx.xxx Trademarks to determine if it complies with the trademark guidelines
and is used in a manner that is consistent with quality goods and services. If
Xxxxxxx.xxx believes that Company's use is inconsistent with the trademark
guidelines or in connection with inferior goods or services, then Xxxxxxx.xxx
shall notify Company. If Company does not correct the deficiency within thirty
(30) days, then Company shall cease all use of the Xxxxxxx.xxx Trademarks,
destroy any tangible items containing the Xxxxxxx.xxx Trademarks, and remove the
Xxxxxxx.xxx Trademarks from all electronic media. Company acknowledges that all
use of the Xxxxxxx.xxx Trademarks pursuant to this Agreement, including any
goodwill generated thereby, shall inure to the benefit of Xxxxxxx.xxx and that
Company shall not have any right, title or interest in the Xxxxxxx.xxx
Trademarks except as expressly provided herein. Company shall not use any
trademark, service xxxx, trade name or other designation that is confusingly
similar to the Xxxxxxx.xxx Trademarks, nor will Company register or attempt to
register the Xxxxxxx.xxx Trademarks. All rights not granted to Company herein
are expressly reserved by Xxxxxxx.xxx.
10
5.3 Company Trademark. Company hereby grants to Xxxxxxx.xxx a non-
-----------------
exclusive, non-transferable (subject to Section 12.2 ("Assignment")), royalty-
free, world-wide right to use or display Company's trade name and trademark
("Company Trademarks") as identified on Exhibit A ("Trademarks") in
---------
Xxxxxxx.xxx's marketing materials, sales efforts and on Xxxxxxx.xxx's web site.
Xxxxxxx.xxx shall comply with Company's trademark usage guidelines of which
Xxxxxxx.xxx has notice in connection with all Xxxxxxx.xxx use of the Company
Trademarks. All of Xxxxxxx.xxx's use of the Company Trademarks shall be subject
to Company's prior approval not to be unreasonably withheld or delayed. No
approval by Company shall be required for the use or display of the Company
Trademarks if such use or display has been previously approved by Company.
Company shall have the right to inspect Xxxxxxx.xxx's use of the Company
Trademarks to determine if it complies with the trademark guidelines and is used
in a manner that is consistent with quality goods and services. If Company
believes that Xxxxxxx.xxx's use is inconsistent with the trademark guidelines or
in connection with inferior goods or services, then Company shall notify
Xxxxxxx.xxx. If Xxxxxxx.xxx does not correct the deficiency within thirty (30)
days, then Xxxxxxx.xxx shall cease all use of the Company Trademarks, destroy
any tangible items containing the Company Trademarks, and remove the Company
Trademarks from all electronic media. Xxxxxxx.xxx acknowledges that all use of
the Company Trademarks pursuant to this Agreement, including any goodwill
generated thereby, shall inure to the benefit of Company and that Xxxxxxx.xxx
shall not have any right, title or interest in the Company Trademarks except as
expressly provided herein. Xxxxxxx.xxx shall not use any trademark, service
xxxx, trade name or other designation that is confusingly similar to the Company
Trademarks, nor will Xxxxxxx.xxx register or attempt to register the Company
Trademarks. All rights not granted to Xxxxxxx.xxx herein are expressly reserved
by Company.
5.4 Trademark Obligations. Neither party shall do or cause to be
---------------------
done any act contesting or in any way impairing or reducing the other party's
right, title, and interest in connection with the use or registration of the
other party's trademarks. Except as provided in this Agreement, both parties
agree not to attach additional trademarks, logos or trade designations to the
trademarks of the other party.
5.5 Joint Marketing and Sales Incentives. If Xxxxxxx.xxx exercises
------------------------------------
the Option to Purchase, then Company agrees to pay Xxxxxxx.xxx up to *** dollars
($***) to be used for sales incentives, joint marketing programs, and any other
purpose that the parties use commercially reasonable efforts to mutually agree
in writing in advance for a *** (***)*** period beginning on the date that
Xxxxxxx.xxx exercises the Option to Purchase. Within forty-five (45) days after
Xxxxxxx.xxx exercises the Option to Purchase, the parties shall develop a
marketing plan that will describe how the payments from Company shall be
allocated between joint marketing, sales incentives and any other purposes.
5.5.1 Joint Marketing. Xxxxxxx.xxx and Company agree that
---------------
during the term of this Agreement both parties will promote their business
relationship to the electronic support industry, including without limitation,
endorsements of each party's business and promotion of awareness regarding the
enhanced value to the electronic support industry resulting from the parties'
combined technologies. The portion of the Company joint marketing and sales
incentives described in Section 5.5 allocated to joint marketing projects shall
be used in conjunction with Xxxxxxx.xxx funds during the *** period. For each
joint marketing
11
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
effort approved by the vice president of marketing for each party, each party
shall pay one half (1/2) of the costs associated with the project, except for
projects which do not require equal involvement, in which case each party may
pay a mutually agreed proportion of the costs. Each project shall specify, at a
minimum, the type of marketing and the vehicle for delivering the message to
make sure that both companies are marketing to the same customers.
5.5.2 Sales Incentives. A portion of the Company joint
----------------
marketing and sales incentives described in Section 5.5, to be agreed upon by
the parties, may be allocated to a sales incentive program for Xxxxxxx.xxx to
(i) induce Xxxxxxx.xxx and its sales professionals to bring Qualified Customers
to Company, and (ii) compensate Xxxxxxx.xxx based upon a percentage of revenue
derived from customers brought to Company by Xxxxxxx.xxx. As used in this
Agreement, a "Qualified Customer" means one of the following: (i) ***; (ii) ***;
(iii) *** of ***, and (iv) *** and ***. Company shall pay a commission to
Xxxxxxx.xxx for bringing the Qualified Customer to Company based on a percentage
of the revenue recognized by Company on account of the referred Qualified
Customer. The parties shall negotiate in good faith to determine the percentages
payable to Xxxxxxx.xxx. Xxxxxxx.xxx and Company may, in their sole discretion,
agree to allocate the Company financial support for sales incentives to other
programs.
6. Confidential Information.
------------------------
6.1 Confidentiality Obligation. Each party acknowledges that, in
--------------------------
the course of performing its duties under this Agreement, it may receive
information relating to the other party which the receiving party knows, or has
reason to know is of a confidential and/or proprietary nature ("Confidential
Information"). Such Confidential Information may include, but is not limited to,
the terms and conditions of this Agreement, minimum price guidelines, future
product releases, trade secrets, know-how, inventions, techniques, processes,
programs, schematics, software, data, pricing and discount schedules, customer
lists, financial information and business, sales and marketing plans. To be
treated as Confidential Information, information disclosed in written form must
be marked "Confidential" at the time of disclosure or, if disclosed orally, must
be designated as "Confidential". Any information relating to Trio Code shall be
treated as Company's Confidential Information unless Xxxxxxx.xxx exercises the
Option to Purchase, in which event such information shall be deemed to be
Xxxxxxx.xxx's Confidential Information, without the necessity of being marked as
"Confidential". The receiving party shall at all times both during the term of
this Agreement and all times thereafter (a) take the same degree of care that it
uses to protect its own confidential and proprietary information of similar
nature and importance (but in any event no less than reasonable care) in order
to protect the confidentiality of, and avoid the unauthorized use, disclosure,
publication or dissemination of the Confidential Information, and (b) not use
such Confidential Information for any purposes other than as may be reasonably
necessary for the performance of its duties or enjoyment of its rights
hereunder. The receiving party shall not disclose any Confidential Information
to any person or entity other than to the receiving party's employees or
consultants as may be reasonably necessary for purposes of performing its duties
or enjoyment of its rights hereunder; provided that such employees and
consultants have first entered into agreements at least as protective of the
Confidential Information as the terms and conditions of this Section 6
("Confidential Information").
12
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
6.2 Exceptions. The parties' obligation under Section 6.1
----------
("Confidentiality Obligation"), with respect to any portion of Confidential
Information, shall not apply to any such portion that the receiving party can
document: (a) was in the public domain at or subsequent to the time such portion
was communicated to the receiving party by the disclosing party through no fault
of the receiving party; (b) was rightfully in the receiving party's possession
free of any obligation of confidence at or subsequent to the time such portion
was communicated to the receiving party by the disclosing party; (c) was
developed by employees or agents of the receiving party independently of and
without reference to any Confidential Information communicated to the receiving
party by the disclosing party; or (d) was communicated by the disclosing party
to an unaffiliated third party free of any obligation of confidence. A
disclosure of any portion of Confidential Information, either (x) in response to
a valid order by a court or other governmental body or as otherwise required by
law, or (y) with respect to the term and conditions of this Agreement, to a
party's attorneys, accountants or prospective investors of such party, who are
subject to an obligation to keep such Confidential Information confidential,
shall not be considered to be a breach of this Agreement or a waiver of
confidentiality for other purposes; provided, however, that with respect to
subsection (x) above, the party being required to disclose the information shall
provide prompt prior written notice thereof to the other party to enable the
other party to seek a protective order or otherwise prevent such disclosure.
Notwithstanding the foregoing, Company agrees that any and all information
related to the Trio Source Code shall always be deemed Confidential Information,
whether or not the exceptions in this Section 6.2 apply and shall be deemed
Xxxxxxx.xxx's Confidential Information upon exercise of the Option to the
Purchase until such time as Xxxxxxx.xxx makes such information available in the
public domain.
7. Indemnification.
---------------
7.1 Company Proprietary Rights Indemnity. For *** after the date
------------------------------------
that Xxxxxxx.xxx exercises the Option to Purchase, Company shall defend,
indemnify, and hold Xxxxxxx.xxx harmless from all costs (inclusive of reasonable
attorneys' fees), damages, losses, penalties and expenses incurred due to any
third party claim, suit, or proceeding brought against Xxxxxxx.xxx arising from
or relating to any third party claims that Trio or any related Intellectual
Property Rights infringe or misappropriate any Canadian or United States patent
granted prior to one year after the date Xxxxxxx.xxx exercises the Option to
Purchase or any Canadian or United States trademark. Company's obligations with
respect to Canadian patents and trademarks in the foregoing sentence are subject
to Company's due diligence with regard to Canadian rights; and Company agrees to
use commercially reasonable efforts to perform such due diligence within a
reasonable time after the Effective Date, but in any event shall be deemed to
have performed such due diligence within thirty (30) days of the Effective Date.
The foregoing obligation is subject to Xxxxxxx.xxx (i) giving Company prompt
written notice of any such claim; (ii) allowing Company to control the defense
and settlement of such claim; (iii) not entering into any settlement or
compromise of such claim without Company's prior written consent; and (iv)
providing all reasonable assistance requested by Company in the defense or
settlement of such claim, at Company's expense. Notwithstanding the foregoing,
Xxxxxxx.xxx may, at its expense, participate in the defense of any indemnity
that is the subject of this Section 7.1, but if Xxxxxxx.xxx elects not to so
participate, then Company agrees to keep Xxxxxxx.xxx reasonably informed
regarding the progress of its defense and settlement of any such claims. Company
agrees not to enter into any settlement of any third party claims described in
this
13
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Section 7.1 without Xxxxxxx.xxx's consent, which shall not be unreasonably
withheld. In the event of any infringement or misappropriation, Company may, at
its option (i) replace or modify the relevant portion(s) of Trio with non-
infringing software which is functionally equivalent or superior; or (ii) obtain
a license for Xxxxxxx.xxx to continue using the applicable portion(s) of Trio or
related Intellectual Property Rights in accordance with this Agreement.
Company's obligations hereunder shall not apply (i) if Xxxxxxx.xxx has modified
Trio (whether or not with Company's approval), but only to the extent such
modification caused the infringement, or (ii) if Company has modified Trio
solely to comply with the request of Xxxxxxx.xxx, to the extent such
modification is the alleged basis of the suit, or (iii) to the extent any claims
are based upon the use of Trio or any component thereof in combination with
hardware, firmware, or software not supported by Company as set forth in Trio
documentation. THE FOREGOING STATES COMPANY'S SOLE OBLIGATION WITH RESPECT TO
ANY CLAIMS FOR PATENT AND TRADEMARK INFRINGEMENT OR MISAPPROPRIATION OF THIRD
PARTY PROPRIETARY RIGHTS BY TRIO. THE FOREGOING, AND XXXXXXX.XXX'S RIGHTS TO
BRING SUIT FOR COMPANY'S BREACH OF SECTION 8.1, STATES XXXXXXX.XXX'S SOLE AND
EXCLUSIVE REMEDIES WITH RESPECT TO ANY CLAIMS FOR PATENT AND TRADEMARK
INFRINGEMENT OR MISAPPROPRIATION OF THIRD PARTY PROPRIETARY RIGHTS BY TRIO.
7.2 Xxxxxxx.xxx Indemnity. For *** after the date that Xxxxxxx.xxx
---------------------
exercises the Option to Purchase, Xxxxxxx.xxx shall defend, indemnify, and hold
Company harmless from all costs (inclusive of reasonable attorneys' fees),
damages, penalties and expenses incurred due to any third party claim, suit, or
proceeding made against Company arising from or relating to (i) any claims,
warranties or representations made by Xxxxxxx.xxx with respect to Trio, prior to
exercise of the Option to Purchase, that differ from Company's documentation,;
and (ii) any claim for infringement of a United States patent granted prior to
one year after the date Xxxxxxx.xxx exercises the Option to Purchase or a United
States trademark where the claim is based upon a modification by or for
Xxxxxxx.xxx of Trio not performed by Company or done by Company in accordance
with Xxxxxxx.xxx's specification (excluding claims based on Company's
intentional infringement of copyright or misappropriation of trade secret). The
foregoing obligation is subject to Company (i) giving Xxxxxxx.xxx prompt written
notice of any such claim; (ii) allowing Xxxxxxx.xxx to control the defense and
settlement of such claim; (iii) not entering into any settlement or compromise
of such claim without Xxxxxxx.xxx's prior written consent; and (iv) providing
all reasonable assistance requested by Xxxxxxx.xxx in the defense or settlement
of such claim, at Xxxxxxx.xxx's expense. THE FOREGOING STATES COMPANY'S SOLE AND
EXCLUSIVE REMEDY AND XXXXXXX.XXX'S SOLE OBLIGATION WITH RESPECT TO ANY CLAIM OF
INFRINGEMENT OR MISAPPROPRIATION OF THIRD PARTY PROPRIETARY RIGHTS BY TRIO.
8. Warranties.
----------
8.1 Company Warranties. Company warrants and represents the
------------------
following:
8.1.1 It is the sole owner of all rights, title and
interest, including all Intellectual Property Rights in the Trio Code and that
it has full power and authority (a) to transfer and assign the Intellectual
Property Rights as herein transferred and assigned without the
14
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
consent of any other person and (b) to enter into and perform its obligations
under this Agreement.
8.1.2 It has not assigned, transferred, pledged or otherwise
encumbered any Trio Code or agreed to do so and has not licensed or agreed to
license Source Code to Trio except in source code escrow provisions in two
contracts.
8.1.3 It is not aware of any actual or potential
infringement or misappropriation of any third party's intellectual property
rights (or any claim or potential claim thereof).
8.1.4 Entering into or performing under this Agreement will
not violate any right of, or breach any obligation to, any third party under any
agreement or arrangement between Company and such third party.
8.1.5 Trio Code does not infringe any third party trade
secrets or copyrights or knowingly infringe any other third party intellectual
property rights.
8.1.6 The Trio Code contains no "computer viruses" or "time
bombs" as those terms are commonly understood in the information processing
industry and that the Trio Code contains no code or instructions (including any
code or instructions provided by third parties) that may be used to access,
modify, delete, damage, or disable any computer, associated equipment, computer
programs, data files or other electronically stored information operated or
maintained by Xxxxxxx.xxx or its customers.
8.1.7 The century change is supported in the Object and
Source Code of Trio's logic and data, and shall support the use, entry or
creation of dates on and after January 1, 2000 so that when a properly formatted
and accurate four digit year is either properly entered into or provided to the
Object or Source Code of Trio by another program, it shall not fail or otherwise
product incorrect date results.
8.1.8 For *** commencing on the Delivery Date, the Source
Code and Object Code shall perform in substantial conformance to the applicable
documentation.
8.1.9 Entering into or performing under this Agreement will
not trigger any source code escrow release provision. Company shall use
commercially reasonable efforts to prevent release of Trio Source Code for any
reason, and if such escrow becomes released, any license rights exercisable by
the licensee is limited to internal use for *** or in any other event, to
provide the support services that Company failed to provide.
8.1.10 It has provided to Xxxxxxx.xxx all license agreements
for Trio, except for the *** Agreement as described in Section 3.3.3.
8.2 Xxxxxxx.xxx Warranties. Xxxxxxx.xxx warrants and represents as
----------------------
follows:
8.2.1 Xxxxxxx.xxx has full power and authority to enter into
and perform its obligations under this Agreement.
15
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
9. Consequential Damages Waiver.
----------------------------
NEITHER PARTY WILL BE LIABLE FOR ANY LOSS OF USE, INTERRUPTION OF BUSINESS, OR
ANY INDIRECT, SPECIAL, INCIDENTAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES OF ANY
KIND (INCLUDING LOST PROFITS) REGARDLESS OF THE FORM OF ACTION, WHETHER
CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT PRODUCT LIABILITY OR OTHERWISE,
EVEN IF THE PARTY FROM WHOM DAMAGES ARE SOUGHT HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. THE FOLLOWING EXCEPTIONS SHALL APPLY: (i) THE
FOREGOING LIMITATION SHALL NOT APPLY TO ANY CLAIM FOR BREACH OF SECTION 6
("CONFIDENTIAL INFORMATION"); (ii) COMPANY'S INDEMNITY OBLIGATION STATED IN
SECTION 7.1 SHALL INCLUDE INDIRECT, SPECIAL, INCIDENTAL, EXEMPLARY, OR
CONSEQUENTIAL DAMAGES SUBJECT TO THE DOLLAR CAP STATED IN SECTION 10; AND (iii)
COMPANY'S LIABILITY FOR BREACH OF THE WARRANTY STATED IN SECTION 8.1.5 SHALL NOT
BE SUBJECT TO THE LIMITATIONS OF THIS SECTION.
10. Limitation of Liability.
-----------------------
NOTWITHSTANDING ANY OTHER PROVISIONS OF THIS AGREEMENT TO THE CONTRARY, EACH
PARTY'S LIABILITY TO THE OTHER UNDER THIS AGREEMENT SHALL BE LIMITED TO THE
TOTAL PAYMENTS MADE BY XXXXXXX.XXX TO COMPANY WITH RESPECT TO TRIO UNDER THIS
AGREEMENT. THE FOLLOWING EXCEPTIONS SHALL APPLY: (i) THE FOREGOING LIMITATION
SHALL NOT APPLY TO ANY CLAIM FOR BREACH OF SECTION 6 ("CONFIDENTIAL
INFORMATION"); (ii) COMPANY'S OBLIGATIONS STATED IN SECTION 7.1 SHALL BE CAPPED
AT *** ($***); (iii) COMPANY'S LIABILITY FOR BREACH OF THE WARRANTY STATED IN
SECTION 8.1.5 SHALL NOT BE SUBJECT TO THE LIMITATIONS OF THIS SECTION; AND (iv)
XXXXXXX.XXX'S OBLIGATIONS STATED IN SECTION 7.2 SHALL BE CAPPED AT *** DOLLARS
($***).
11. Term and Termination.
--------------------
11.1 Term. This Agreement shall commence on the Effective Date and,
----
if Xxxxxxx.xxx does not exercise the Option to Purchase, then this Agreement
shall terminate upon the expiration of the Option Period. If, however,
Xxxxxxx.xxx exercises such option, then this Agreement shall be in effect in
accordance with its terms until terminated as provided herein.
16
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
11.2 Rights If Option Goes Unexercised. If Xxxxxxx.xxx does not
---------------------------------
exercise the Option to Purchase, then this Agreement shall terminate, but the
rights and obligations stated in the following Sections shall survive: 1
("Definitions"), 2.1.1 ("Limitations; Ownership"), Fees set forth in Sections
2.2 - 2.6; 6 - ("Confidential Information"), 9 ("Consequential Damages Waiver"),
10 ("Limitation of Liability"), 11.2 ("Rights If Option Goes Unexercised"), and
12 ("Miscellaneous").
11.3 Termination With Cause After Exercise of Option to Purchase.
-----------------------------------------------------------
Either party may terminate this Agreement for cause after Xxxxxxx.xxx exercises
the Option to Purchase, as follows: (1) after written notice of a material
breach and thirty (30) days opportunity to cure; (2) after written notice and
thirty (30) days opportunity to cure if the other party becomes insolvent or
fails generally to pay its obligations as they arise; or (3) if proceedings are
commenced under state or federal bankruptcy laws by or against the other party
which are not dismissed within ninety (90) days of commencement.
11.4 Rights Upon Termination After Exercise of Option to Purchase.
------------------------------------------------------------
Upon termination for either cause after Xxxxxxx.xxx exercises the Option to
Purchase, the following shall occur:
11.4.1 All rights and obligations shall terminate except
those identified in Section 11.4.4 All agreements between Xxxxxxx.xxx and third
parties which are not in breach by which the third party obtained a license to
use a copy of Trio shall remain in full force and effect pursuant to their
respective terms.
11.4.2 The parties shall immediately cease using the
trademarks of the other party.
11.4.3 Each party shall return or destroy the Confidential
Information belonging to the other party.
11.4.4 Survival. The following Sections shall survive
--------
termination for cause as provided under Section 11.3: 1 ("Definitions"), 3.2
("Source Code Transfer"), 6 ("Confidential Information"), 7 ("Indemnification"),
9 ("Consequential Damages Waiver"), 10 ("Limitation of Liability"), 11.4
("Rights Upon Termination After Exercise of Option to Purchase"), and 12
("Miscellaneous"), and only in the event Xxxxxxx.xxx breaches the agreement, 3.3
("Source Code License to Company"). In the event this Agreement is terminated
for Xxxxxxx.xxx's breach due to failure to pay, all rights under Section 3.2
("Source Code Transfer") shall be suspended until such failure to pay is cured.
12. Miscellaneous.
-------------
12.1 Import and Export Regulations. Each party acknowledges and
-----------------------------
agrees that it shall not import, export, or re-export, directly or indirectly,
Trio to any country in violation of the import and export laws and regulations
of any applicable jurisdiction. Each party further
17
agrees to defend, indemnify and hold the other harmless for any losses, costs,
claims or other liabilities arising out of it's breach of this Section 12.1
subject to the notice and cooperation obligations stated in Section 7
("Indemnification").
12.2 Assignment. For a period of three (3) years beginning on the
----------
Effective Date, Xxxxxxx.xxx may not assign this Agreement without Company's
prior written consent, and any attempt to do so without that consent will be
void. Notwithstanding the foregoing, either party may assign this Agreement
without consent in the event of a merger, acquisition, sale of all or
substantially all of its assets or other similar reorganization, except that if
Company's assignee is a competitor of Xxxxxxx.xxx as listed on Exhibit F, then
(i) Section 3.8 shall not survive such assignment and shall have no force and
effect; (ii) all Company's right to Licensed Source Code and any copies or
derivatives works thereof (except Company Integrated Code) expire, including but
not limited to Section 3.3.1 and (iii) Company shall immediately destroy all of
Xxxxxxx.xxx's Confidential Information and not disclose any such information to
competitors. Xxxxxxx.xxx shall have the right to amend Exhibit F with respect to
its competitors at any time by written notice to Company. Consent to a specific
assignment of this Agreement shall not constitute a consent to further
assignment. This Agreement shall be binding on the parties and their respective
successors and permitted assigns. Any assignment in contravention of this
subsection shall be void.
12.3 No Offset. Payments shall be made in accordance with the terms
---------
of this Agreement. In no event may either party offset the amount due from the
other under any other agreement when making any payments due hereunder.
12.4 Choice of Law. This Agreement will be governed by and construed
-------------
according to the laws of the State of California and the United States, without
regard to that body of law controlling conflicts of laws. The parties agree that
the United Nations Convention on Contracts for the International Sale of Goods
is specifically excluded from application to this Agreement.
12.5 Amendment. This Agreement may be amended or supplemented only
---------
by a writing that refers explicitly to this Agreement and that is signed on
behalf of both parties.
12.6 Waiver. No waiver will be implied from conduct or failure to
------
enforce rights. No waiver will be effective unless in a writing signed on behalf
of the party against whom the waiver is asserted. A waiver in one instance shall
not be construed as a waiver of any subsequent like breaches.
12.7 United States Government Purchases. If either party sublicenses
----------------------------------
Trio to any agency of the U.S. Government, then it shall identify Trio and
related documentation provided in any proposal submitted to or agreement with
such agency as "commercial computer software" and "commercial computer software
documentation," respectively, as such terms are used in 48 C.F.R. 12.212 of the
Federal Acquisition Regulations ("FAR") and its successors and 48 C.F.R.
227.7202 of the Department of Defense FAR Supplement ("DFARS") and its
successors. In accordance with FAR 12.212 or DFARS 227.7202, as applicable, each
party shall provide Trio and related documentation to all U.S. Government end
users with only those rights set forth in the end user license.
18
12.8 Force Majeure. Except for the obligation to pay money owed,
-------------
neither party will have the right to claim damages or to terminate this
Agreement as a result of the other party's failure or delay in performance due
to circumstances beyond its reasonable control, including, but not limited to,
labor disputes, strikes, lockouts, shortages of or inability to obtain energy,
war, riot, insurrection, epidemic, acts of God, or governmental action not the
fault of the nonperforming party; provided., if such condition continues for
ninety (90) days, the party whose performance is not delayed by such condition
may terminate this Agreement upon written notice.
12.9 Severability. If any provision of this Agreement is held to be
------------
unenforceable or invalid by a court of competent jurisdiction, such
unenforceability or invalidity shall not render this Agreement unenforceable or
invalid as a whole. Rather, such provision shall be stricken from the Agreement
and the remaining provisions shall be fully enforceable.
12.10 Notices. All notices or reports permitted or required under
-------
this Agreement shall be in writing and shall be by personal delivery or by
certified or registered mail, return receipt requested, and deemed given upon
personal delivery or five (5) days after deposit in the mail. Notices shall be
sent to the signatories of this Agreement at the addresses set forth at the
beginning of this Agreement or such other person and/or address as either party
may specify in writing.
12.11 Relationship of Parties. The parties to this Agreement are
-----------------------
independent contractors. There is no relationship of agency, partnership, joint
venture, employment or franchise between the parties. Neither party has the
authority to bind the other or to incur any obligation on its behalf. Neither
party shall have, and shall not represent that it has, any power, right or
authority to bind the other, or to assume or create any obligation or
responsibility, express or implied, on behalf of the other or in the other's
name, except as herein expressly permitted.
12.12 Counterparts. This Agreement may be executed in two
------------
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
12.13 Entire Agreement. This Agreement, including all Exhibits to
----------------
this Agreement, which are hereby incorporated by reference, represents the
entire agreement between the parties relating to Trio and supersedes all prior
and contemporaneous representations, discussions, negotiations and agreements,
whether written or oral relating to Trio. The following Exhibits are attached:
Exhibit A - Trademarks
Exhibit B - Trio Components
Exhibit C - Company Customers
Exhibit D - Trio Registered Rights
Exhibit E - Limited Functionality Version of Licensed Object Code
Exhibit F - Competitors
Exhibit G - End User License Agreement
19
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the day and year first written above.
***, INC.
By: /s/ ***
---------------------------------
Title: President & CEO
------------------------------
Date: March 30th, 2000
-------------------------------
XXXXXXX.XXX
By: /s/ Radha R. Busu
---------------------------------
Title: CEO & President
------------------------------
Date: March 30, 2000
-------------------------------
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Exhibit A
---------
Trademarks
----------
Xxxxxxx.xxx Trademarks
----------------------
Xxxxxxx.xxx (and related logos)
SupportAction
In the event Xxxxxxx.xxx exercises the Option to Purchase:
***
***
***
***
Company Trademarks
------------------
*** (and related logos)
***.com
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Exhibit B
---------
Trio Components
This Exhibit B describes the components to be licensed to Xxxxxxx.xxx in
accordance with the License Agreement. For each component, all material in its
source form is included, whether textual or not (e.g. *** resources created and
edited in their binary form using an authoring tool such as *** or ***). The
sections below describe the main elements of the *** Client and the *** Server.
In addition to the items described below, documentation associated with any
demonstrations conducted by Company, documentation associated with any
presentations, and documentation associated with *** including but not limited
to common auxiliary pieces, such as make files, Visual Studio projects and
workspaces, miscellaneous build utilities, product documentation, documentation
of sales demonstrations, slides, and product literature are also included.
A. *** Client
The *** Client comprises the components that ***-enable an application. The
platforms supported are:
. ***
. ***
. ***
. ***
. ***
All versions of the *** Client include the following components:
. API header file this .h file is common across all platforms and describes
the types, constants, and functions available in the ***
Client API.
. *** code this platform-dependent file is provided to customers in
either source or object form depending on the specific
platform. The *** code is statically linked to the ***-
enabled application and implements the *** Client API in
stub form. The *** code is responsible for locating and
loading the "real" runtime client code in the *** Library.
All API calls are passed to the *** Library.
. *** Library this is a platform-dependent, dynamically-loaded library
used at runtime by ***-enabled applications. The dynamic
loading mechanism is different for each platform. The
library includes all the code to implement the *** ***
functionality, ***, data ***, *** creation and population,
and the API. The library, upon receipt of the *** () call,
inserts itself into the *** mechanism appropriate to each
platform.
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. *** this is a "true" application, launched by the *** Library,
the user, or possibly various platform-dependent "startup"
mechanisms. It processes new *** files created by the
Library, collects some additional information for the ***,
interacts with the user if desired, and performs the network
communication with the *** Server.
. Test application each platform has at least one test
application used internally for development to exercise the
*** API and the Client's *** capability.
In addition, the *** version of the *** Client contains some extra functionality
that allows it to be "***" into an application at *** without having to change
the *** or *** any *** components to the application. These components are part
of the "***" mechanism:
. *** this application runs at startup and calls the ***API to ***
the *** of *** applications. When an application ***, a
local list of files names is checked. If the application's
file name is in the list, then that application is "***".
*** also provides a user interface in the *** that allows
the user to initiate the creation of a ***.
. *** this ***is "***" into the application by ***. During
application startup, this code gets control and essentially
executes a call to the *** API function *** () on *** of the
application. This loads the *** Library into the process
space.
. *** this is a small application that allows the user to choose
which application should be associated with a *** that is
created by the user outside the context of any particular
*** application. Because *** from different application may
use different configuration settings and may be sent to
different servers, the user must specify which application
the *** is for.
In addition to the above, there are miscellaneous items associated with the
Client portions of the *** system. Notable items include:
. Java support this is Java code that allows a portion of the *** Client
API to be called from Java applications running on ***
platforms. This is primarily a *** layer that calls the ***
API via *** mechanism. Java compatibility is not officially
supported and this code has not been maintained (although it
works). Also, automatic *** in Java is not possible, but a
reasonable facsimile can be accomplished with a "***"***
that calls the *** API
. *** tools in order to derive *** information from a *** when the
***-enabled application was not *** with *** information,
some of the output from the application *** process needs to
be stored on the *** Server. In addition, this *** output
sometimes needs to be post-processed in order for the ***
Server to use it. Various platform-dependent tools are
included to convert *** output to usable forms.
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. Build tools each time a ***-enabled application is built, a *** file
must be created on the *** Server and shipped with the
application and the *** Client components. In addition, ***
information from that particular *** of the application
needs to be uploaded to the *** Server. Various build tools
are included (primarily ***.pl, a perl script) to facilitate
automating these actions as part of the build process.
. Plug-in *** the *** supports a plug-in architecture for additional data
*** code modules. Plug-ins are platform-specific binary
objects in the appropriate shared library form. Some samples
are included, as are the plug-ins developed by Company for
specific customers.
B *** Server
The *** Server runs on ***. (It will run on *** with the *** release to ***.)
The Server comprises the following:
. *** this is a web server extension for *** on *** and *** on
***. The *** sits outside the firewall and *** incoming ***
with the network connection to the ***. This is an extremely
light-weight component and it does not interpret the data;
it simply acts as a *** to ensure firewall integrity.
. *** this is a ***. The ***communicates with the ***. It's role
is to implement the communication, assign an *** to the
incoming ***, store the *** as a file local to the ***
Server, and register the *** as ready to be processed in the
database. As part of the communication, it may assign a
client ***, generate and communicate an encryption key, and
encrypt/decrypt data over the *** link.
. *** this is an ***. The ***polls the *** for incoming *** to be
processed. Incoming *** are read from the local file system
and put through a series of steps that include *** and ***
handling. *** processes raw data in the *** and generates
more useful data which is then stored as a replacement or in
addition to the raw data. *** are *** servers called by the
***, the bulk of which are always included and are integral
to the operation of ***. (However, it is possible to add
customer- or application-specific ***.) One major *** step
is the *** of *** information for *** and similar items.
Once *** is complete, the *** executes each of the ***. Each
*** is a *** server. One special *** is data-driven and
implements most of the functions available via the ***
Configuration portion of the web user interface. Other ***
perform specific tasks and have no user interface. The data-
driven *** uses information stored in the *** to determine
whether incoming *** meet the given *** criteria and, if so,
to execute the associated
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
***. *** are also *** servers and
can be added as desired. Once all *** have run completely
(which may involve delayed retries), the *** is committed to
the ***. The *** performs (or orchestrates) the bulk of the
incoming processing of *** which takes a relatively large
amount of time (up to several seconds per ***). In order to
scale, any number of *** can be run in the save *** Server
network.
. *** this is an ***. *** monitors all the other *** that are part
of the *** Server and can start, stop, or restart them under
administrator-defined conditions. Conditions that can be
monitored include lockup, abnormal termination, memory
leakage, *** leakage, total run time, and anything else that
can be observed with the *** utility ***. *** is a failsafe
mechanism and safety net to ensure that the *** can operate
without human intervention for extended periods, despite
bugs in the operating system or the *** themselves.
. Web most *** Server interaction is performed via a standard web
browser through network connections to one or more instances
of the *** Server Web interface. The web interface is
implemented primarily with *** web pages. The *** pages are
used to perform some logic, some dynamic HTML generation,
and interaction with the bulk of the server-side logic in
the form of *** .
. Web Support these are *** objects called by the *** pages. Most of the
sophisticated logic driven from the web user interface is
implemented as C++ classes encased in ***. This allows them
to be called from many application server technologies (***,
***, ***, etc) as well as from other binary components of
the *** Server. Database interaction, for reporting,
querying, or administration, goes through these "***" ***
objects. The "***" objects use the common classes for
database connectivity and object manipulation. All database
access is abstracted, as is access to the *** and the data
elements (called ***) within the ***.
. *** this is an ***. The *** performs periodic actions for the
*** Server. Automatic *** that can be sent by email can be
scheduled, as well as the removal of old data from the
database. In addition, when *** are removed from the
database via the user interface, they are actually only
marked for deletion; the actual deletion occurs as a
scheduled task. The *** performs or initiates periodic or
scheduled tasks.
. Database Setup these are generally SQL scripts used to create the initial
tables and table content needed by the *** Server.
. Installer this is the "script" for *** that installs the *** Server
components onto an *** system.
. *** Modules these are *** objects registered as ***. *** Modules for the
*** and *** have been implemented. Each uses *** APIs to
create new ***
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
and to *** them from the contents of the ***. Common classes
used in each use *** configuration data that describes the
*** between the *** and the ***. A *** application is also
provided as an authoring/administration tool for the
configuration data so that *** can be easily created and
maintained.
. Queries these are text files using an *** syntax to describe the
reports in the *** system. *** reports use a format called
*** (for ***) to describe the query parameters of the
report. These *** files are read and stored in the database
during initial server setup and represent the set of default
reports.
. *** this is a *** application. A portion of the server's
administration parameters are stored in each ***. This
application provides a user-friendly front-end for setting
up and maintaining these configuration parameters.
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Exhibit C
---------
Company Customers
-----------------
The following customers in the Company sales pipeline as of the Effective Date
are as follows:
***
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Exhibit D
---------
Trio Registered Rights
----------------------
Patents, Applications, and Registrations
----------------------------------------
***
***
Trademarks, Applications, and Registrations
-------------------------------------------
To Be Completed Within (30) Days by Company
Copyrights, Applications, and Registrations
-------------------------------------------
None
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
Exhibit E
---------
Limited Functionality Version of Licensed Object Code
-----------------------------------------------------
For use in conjunction with the Company Support Website, the functionality of
Trio will be limited in accordance to the following:
A. Trio Client
1. Only versions for ***, ***, and *** systems will be supported.
Company will not distribute versions of the Trio Client for
*** or *** systems.
2. All copies of the Trio Client distributed by Company will use
the same user interface, as Company may update it from time to
time.
3. All copies of the Trio client will share a single ***
describing the data to be *** by the client; such *** will not
be modifiable except by Company Employees.
4. The Trio Client will *** information only upon initiation by
the end user. Non-end user initiated events will not be used
to initiate ***.
5. The Trio Client will *** information only and will not perform
*** to collect *** information. The Trio Client will not ***
information, such as ***, *** contents, *** values, and ***.
6. The Trio Client may *** and *** and *** between the user and
the system and applications
7. The Trio Client will communicate only with the Trio Server
operated by Company in conjunction with the Company Support
Website, and will send *** information only to that Trio
Server.
B. Trio Server
1. Access will be available to the data for only a single *** at
a time. In particular this means users will not be able to
view lists of available ***.
2. Reports that contain information from multiple *** will not be
available. It
will not be possible to create or edit report definitions.
3. No graphic report formats (pie charts, bar charts, etc.) will
be available.
4. The Trio Server will not initiate the creation of *** within
*** systems.
5. The Trio Server web interface will be restricted to disallow
access to the Server *** section.
6. It will not be possible to create or edit Trio Client
configurations and Trio *** files.
7. No access to Trio ***, plug-in ***, or plug-in *** will be
provided.
8. Web access to the Trio Server will be available only to users
with registered, validated Company accounts.
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*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
9. All features of the Trio Server will be accessible by Company
Employees.
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Exhibit F
---------
***
*CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
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Exhibit G
---------
End User License Agreement
This End User License Agreement ("Agreement") is entered into as of _______
(the "Effective Date") by and between Licensor and you ("Licensee") and sets
forth the terms and conditions under which Licensor agrees to license software
to Licensee. Licensor is the entity from which you received the software.
1. LICENSE.
-------
1.1 License Grant. Subject to the terms and conditions of this Agreement,
-------------
Licensor grants to Licensee and Licensee accepts from Licensor a non-exclusive,
non-transferable, fully paid up, perpetual license to install and use the
software ("Software") on one computer together with any related technical
specification documentation provided by Licensor ("Documentation"; unless
otherwise noted, the Software and Documentation are referred to collectively
herein as "Software"). Licensee may make a reasonable number of copies of the
Software for backup and archival purposes only.
1.2 Restrictions. Licensee shall not (and shall not allow any third party
------------
to) (i) decompile, disassemble, or otherwise reverse engineer (except to the
extent that applicable law prohibits reverse engineering restrictions) or
attempt to reconstruct or discover any source code, underlying ideas,
algorithms, file formats or programming or interoperability interfaces of the
Software by any means whatsoever, (ii) remove any product identification,
copyright or other notices, (iii) provide, lease, lend, use for timesharing,
service bureau or hosting purposes or otherwise use or allow others to use the
Software to or for the benefit of third parties, (iv) modify or incorporate into
or with other software or create a derivative work of any part of the Software,
(v) disseminate information or analysis (including, without limitation,
benchmarks) regarding the quality or performance of the Software from any
source, (vi) use the output or other information generated by the Software
(including, without limitation, output describing the structure of a software
program) for any purpose other than use by the Software in accordance with its
specifications, or (vii) resell, sublicense or distribute to any third-party the
Software or any component thereof. Notwithstanding anything else, Xxxxxxx.xxx,
Inc. retains all title to, and, except as expressly licensed herein, all rights
to the Software, all copies thereof and all related documentation and materials.
Licensee must reproduce and include the copyright notice and other proprietary
notices that appear on the original Software on any copies and any media thereof
made in accordance with the terms of this Agreement.
2. Warranty. SOFTWARE IS PROVIDED "AS IS" AND COMPANY MAKES NO WARRANTY OR
--------
REPRESENTATION, WHETHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT. WITH RESPECT TO ANY SOFTWARE, YOU (LICENSEE) BEAR THE ENTIRE
RISK AS TO QUALITY AND PERFORMANCE. SHOULD THE SOFTWARE PROVE DEFECTIVE
FOLLOWING LICENSE, YOU (LICENSEE) (AND NOT THE COMPANY OR ANY DISTRIBUTOR OR
RETAILER) ASSUME THE ENTIRE COST OF ALL NECESSARY SERVICING OR REPAIR.
3. TERM AND TERMINATION. This Agreement shall expire upon the date set
--------------------
forth by Licensor. Licensor may terminate this Agreement for cause if Licensee
fails to cure any material breach of this Agreement within thirty (30) days
after written notice of such breach (or immediately in the case of the failure
to pay any amounts in accordance with the payment terms specified herein). All
provisions except Section 1.1 shall survive termination. Upon termination,
Licensee shall immediately cease all use of the Software and return or destroy
all copies of the Software and all portions thereof and so certify to Licensor.
Termination is not an exclusive remedy and all other remedies will be available
whether or not this Agreement is terminated.
4. Limitation of Liability. NOTWITHSTANDING ANYTHING IN THIS AGREEMENT TO
-----------------------
THE CONTRARY, NEITHER LICENSOR, ITS SUPPLIERS OR RESELLERS SHALL BE LIABLE OR
OBLIGATED WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT OR UNDER
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR ANY OTHER LEGAL OR EQUITABLE THEORY
(I) FOR ANY AMOUNTS IN EXCESS IN THE AGGREGATE OF THE FEES PAID TO LICENSOR BY
LICENSEE WITH RESPECT TO THE COPIES OF SOFTWARE THAT ARE THE SUBJECT OF THE
CLAIM DURING THE TWELVE MONTH PERIOD PRIOR TO THE CAUSE OF ACTION, (II) FOR ANY
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, FOR
ANY COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY, SERVICES OR RIGHTS);
(III) FOR INTERRUPTION OF USE OR LOSS OR CORRUPTION OF DATA; OR (IV) FOR ANY
MATTER BEYOND ITS REASONABLE CONTROL. SOME STATES DO NOT ALLOW THE EXCLUSION OR
LIMITATION OF INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO THE ABOVE LIMITATIONS AND
EXCLUSIONS MAY NOT APPLY TO LICENSEE.
5. RIGHT TO AUDIT. On Licensor's written request Licensee shall furnish
--------------
Licensor with a signed certification certifying that the Software is being used
pursuant to the terms of this Agreement including any copy and user limitations.
12
6. No Export; Government Use. Licensee will not remove or export from the
-------------------------
United States or reexport from anywhere any part of the Software or any direct
product thereof except in compliance with and with all applicable export laws
and regulations, including without limitation, those of the U.S. Department of
Commerce. Licensee warrants that it is not on the United States' prohibited
party list and not located in or a national resident of any country on the
United States' prohibited country list. As defined in Federal Acquisitions
Regulations (or otherwise), the Software is a "commercial item" and commercial
computer software" and commercial computer software documentation" and any use,
modification, reproduction, release, performance, display, or disclosure of such
software or documentation by the U.S. Government shall be governed solely by the
express terms of this Agreement. Licensee acknowledges that the Software
contains encryption technology, export of which is restricted by the U.S. and
certain foreign laws.
7. Privacy. The Software contains features which may allow Licensor to
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collect data from, control and or/monitor computers running the Software without
notice to or knowledge by Licensee. Licensee hereby acknowledges such features
and is responsible for familiarizing itself with such features.
8. GENERAL PROVISIONS.
------------------
8.1 Remedies and Legal Actions. The failure of either party to insist, in
--------------------------
any one or more instances, upon the performance of any of the terms, covenants,
or conditions of this Agreement or to exercise any right hereunder, shall not be
construed as a waiver or relinquishment of the future performance of any rights,
and the obligations of the party with respect to such future performance shall
continue in full force and effect. The remedies under this Agreement shall be
cumulative and not alternative and the election of one remedy for a breach shall
not preclude pursuit of other remedies unless as expressly provided in this
Agreement. This Agreement shall be governed in all respects by the substantive
laws of the State of California, United States of America (excluding conflict of
laws rules) as applied to agreements entered into and to be performed entirely
within the State of California between California residents, without regard to
the U.N. Convention on Contracts for the International Sale of Goods. Any
dispute regarding this Agreement shall be subject to the exclusive jurisdiction
of the California state courts in and for Santa Xxxxx County, California or, if
there is federal jurisdiction, the United States District Court for the Northern
District of California, and the parties agree to submit to the personal and
exclusive jurisdiction and venue of these courts. The prevailing party in any
legal action brought by one party against the other and arising out of this
Agreement will be entitled, in addition to any other rights and remedies it may
have, to reimbursement for its expenses, including court costs and reasonable
attorneys' fees. Xxxxxxx.xxx is an express third party beneficiary of this
Agreement and can enforce this agreement as if a party hereto. If any covenant
set forth in this Agreement is determined by any court to be unenforceable by
reason of its extending for too great a period of time or by reason of its being
too extensive in any other respect, such covenant shall be interpreted to extend
only for the longest period of time and to otherwise have the broadest
application as shall be enforceable.
8.2 Assignment. Licensee shall not assign or otherwise transfer any of its
----------
rights, obligations or licenses hereunder without the prior written consent of
Xxxxxxx.xxx, including any assignment by operation of law as a result of the
merger or acquisition of Licensee. Subject to the foregoing, the provisions of
this Agreement shall apply to and bind the successors and permitted assigns of
the parties.
8.3 Entire Agreement; Headings. This Agreement, together with all exhibits
--------------------------
and schedules hereto, constitutes the complete, final and exclusive statement of
the terms of the Agreement among the parties pertaining to the subject matter
hereof and supersedes all prior agreements, understandings, negotiations and
discussions of the parties. No modification or rescission of this Agreement
shall be binding unless executed in writing by the party to be bound thereby.
The descriptive headings of this Agreement are intended for reference only and
shall not affect the construction or interpretation of this Agreement.
8.4 Force Majeure. Either party shall be excused from any delay or failure
-------------
in performance hereunder, except the payment of monies by Licensee caused by
reason of any occurrence or contingency beyond its reasonable control, including
but not limited to, acts of God, earthquake, floods, lightning, labor disputes
and strikes, other labor or industrial disturbances, riots, war, acts of the
public enemy, insurrections, embargoes, blockages, regulations or orders of any
government, agency or subdivision thereof, shortages of materials, rationing,
utility or communication failures, casualty, novelty of product manufacture or
other unanticipated product development problems, and governmental requirements.
The obligations and rights of the party so excused shall be extended on a
day-to-day basis for the period of time equal to that of the underlying cause of
the delay; provided that such party shall give notice of such force majeure
event to the other party as soon as reasonably possible.
8.5 Notices; Authority. All notices required or permitted to be given by one
------------------
party to the other under this Agreement shall be sufficient if sent by either
certified mail, return receipt requested, telegram or hand delivered to the
parties. All notices shall be effective upon receipt. Each party represents that
all corporate action necessary for the authorization, execution and delivery of
this Agreement by such party and the performance of its obligations hereunder
has been taken.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed
and delivered as of the day set forth above.
ACCEPTED BY:
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Licensee: Licensor:
------------------------------- -----------------------
Name: Name:
------------------------------- ---------------------------
Title: Title:
------------------------------- --------------------------
Date: Date:
------------------------------- ---------------------------
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