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EXHIBIT 2.3
FORM OF TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement (this "AGREEMENT") is made and
entered into as of __________, 1999 (the "EFFECTIVE DATE"), by and between HNC
Software Inc., a Delaware corporation having its principal place of business at
0000 Xxxxxxxxxxx Xxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 ("HNC"), and Retek Inc.
("RETEK"), a Delaware corporation having its principal place of business at
Midwest Plaza, 000 Xxxxxxxx Xxxx, 00xx Xxxxx, Xxxxxxxxxxx, XX 00000.
RECITALS
Retek wishes to obtain a nonexclusive license from HNC to use the
Licensed Technology (as defined in Section 1.4 below) solely within the Field of
Use (as defined in Section 1.2 below). HNC is willing to grant such a license to
Retek, subject to the terms and conditions of this Agreement.
NOW, THEREFORE, the parties hereby agree as follows:
ARTICLE 1: CERTAIN DEFINITIONS
For the purposes of this Agreement:
1.1 "IMPROVEMENT" OR "IMPROVEMENTS" mean any findings, discoveries,
inventions, additions, modifications, formulations, variations, enhancements,
refinements, derivative works, developments or changes based upon or
incorporating the Licensed Technology.
1.2 "FIELD OF USE" means the field of software-based products and/or
services designed specifically to provide, automate, manage and/or otherwise
facilitate any one or more of the following functions or applications for
Retailers (as defined below) and/or the members of their Retail Supply Chain:
the design, manufacture, assembly, shipment, import, storage, delivery,
tracking, merchandising, retail store shelf management, inventory planning,
management and/or pricing of consumer goods sold at retail, and any other
activity involved in the operation of a retail organization.
1.3 "INTELLECTUAL PROPERTY RIGHTS" means, collectively, all of the
following worldwide intangible legal rights, whether or not filed, perfected,
registered or recorded and whether now or hereafter existing, filed, issued or
acquired: (i) patents, patent applications, and patent rights, including any and
all continuations, divisions, reissues, reexaminations or extensions thereof;
(ii) rights associated with works of authorship, including but not limited to
copyrights, copyright applications and copyright registrations,; (iii) rights
relating to the protection of trade secrets, know-how and other confidential
information, including but not limited to rights in industrial property and all
associated information and other confidential or proprietary information; (iv)
industrial design rights; and (v) any rights analogous to those set
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forth in the preceding clauses and any other proprietary rights relating to
intangible property; but specifically excluding trademarks, service marks,
logos, trade dress, trade names and service names;
1.4 "LICENSED TECHNOLOGY" means the technology more fully described
in Exhibit A, and all Intellectual Property Rights therein.
1.5 "RETAILERS" means businesses whose primary business is the sale
of consumer goods at retail.
1.6 "RETAIL SUPPLY CHAIN" means wholesalers, suppliers, distributors,
manufacturers, brokers, bailors and transporters of consumer goods sold at
retail, and other entities involved in the provision of services to Retailers.
ARTICLE 2: LICENSE GRANT
2.1 LICENSE GRANT. Subject to the terms and conditions of this
Agreement, HNC hereby grants to Retek a non-exclusive, non-transferable,
worldwide, perpetual, royalty-free license under HNC's Intellectual Property
Rights in the Licensed Technology to use and reproduce the Licensed Technology
and to create Improvements of the Licensed Technology ("Permitted
Improvements"), in each case solely in connection with the marketing, sale,
licensing and distribution of products and services within the Field of Use.
2.3 RESERVATION OF RIGHTS. Retek's rights in the Licensed Technology
are hereby limited to those license rights expressly granted to Retek under
Section 2.1 of this Agreement and all rights not expressly granted to Retek
herein are expressly reserved and retained by HNC.
2.4 TRADEMARKS. Nothing herein shall be construed to grant any right
to Retek to use any of HNC's trademarks, service marks, logos, trade dress,
trade names or service names or goodwill associated therewith.
ARTICLE 3: OWNERSHIP
3.1 HNC OWNERSHIP. HNC and its suppliers own all worldwide right,
title and interest in and to the Licensed Technology and all worldwide
Intellectual Property Rights therein. Retek will not delete or in any manner
alter the copyright, trademark, and other proprietary rights notices of HNC
appearing on or in the Licensed Technology as delivered to Retek, unless Retek
shall have a good faith belief that such notices have become inapplicable. Retek
will reproduce such notices on all copies it makes of the Licensed Technology
(including Improvements of Licensed Technology), in whole or in part. In
addition, Retek will use its reasonable efforts to protect HNC's Intellectual
Property Rights in the Licensed Technology and will report promptly to HNC any
material infringement of such rights of which Retek
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becomes aware. HNC reserves the right at its discretion to assert claims against
third parties for infringement or misappropriation of its Intellectual Property
Rights in the Licensed Technology and to retain all compensation, damages and
other amount payable to HNC with regard to such infringement or
misappropriation.
3.2 RETEK OWNERSHIP. Subject to the license grants set forth in
Section 2.1 and HNC's ownership rights described in Section 3.1, Retek will own
all worldwide right, title and interest in and to the Permitted Improvements
created by Retek pursuant to and in accordance with Section 2.1. Retek shall not
have or acquire any right, title or interest whatsoever in or to any of the
Licensed Technology or any Intellectual Property Rights therein. Notwithstanding
the provisions of this Section, Retek shall not exploit any Permitted
Improvements created by Retek in any manner other than the manner in which Retek
is expressly licensed to exploit the Licensed Technology or any Permitted
Improvements under Section 2.1.
ARTICLE 4: WARRANTY DISCLAIMER
THE LICENSED TECHNOLOGY IS PROVIDED ON AN "AS IS" BASIS WITHOUT
WARRANTY OF ANY KIND AND HNC AND ITS SUPPLIERS HEREBY DISCLAIM ALL WARRANTIES,
WHETHER EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR PARTICULAR
PURPOSE. HNC DOES NOT WARRANT THAT THE LICENSED TECHNOLOGY IS ERROR-FREE OR THAT
IT WILL MEET RETEK'S REQUIREMENTS OR THAT THE OPERATION OF THE LICENSED
TECHNOLOGY WILL BE UNINTERRUPTED OR ERROR-FREE, OR THAT ERRORS IN THE LICENSED
TECHNOLOGY OR NONCONFORMITY TO ITS DOCUMENTATION CAN OR WILL BE
CORRECTED.
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ARTICLE 5: CONFIDENTIAL INFORMATION
5.1 DEFINITION. "CONFIDENTIAL INFORMATION" means confidential and
proprietary information of either party or its affiliates ("DISCLOSING PARTY")
that is disclosed to the other party or its affiliates ("RECEIVING PARTY")
which, in the case of written information, is marked "confidential" or
"proprietary" and which, in the case of information disclosed orally, is
identified at the time of the disclosure as confidential and proprietary and
will be summarized and confirmed in writing as such by the Disclosing Party
within thirty (30) calendar days of the disclosure. Confidential Information
shall not include information that: (i) is now or subsequently becomes generally
available to the public through no fault or breach of the Receiving Party; (ii)
is independently developed by the Receiving Party after the Effective Date
without the use of any Confidential Information of Disclosing Party; or (iii)
the Receiving Party rightfully obtains from a third party who has the right to
transfer or disclose it. Notwithstanding anything herein to the contrary, each
party acknowledges that the Licensed Technology (in any form) shall be deemed
"Confidential Information" of HNC for all purposes of this Agreement, whether or
not it is so marked or designated by HNC.
5.2 NONDISCLOSURE. The Receiving Party shall not disclose, publish,
or disseminate the Confidential Information of the Disclosing Party to anyone
other than those of such Receiving Party's employees and consultants with a need
to know, or as may by required by legal process, and the Receiving Party agrees
to use the same degree of care that it takes to hold in confidence its own most
valuable proprietary information, but not less than reasonable care, to prevent
any unauthorized use, disclosure, publication, or dissemination of the
Disclosing Party's Confidential Information. The Receiving Party agrees to
accept and use the Disclosing Party's Confidential Information only for the
purpose of carrying out its authorized activities under this Agreement. In the
event a Receiving Party is required to disclose Disclosing Party's Confidential
Information by an order of a court or governmental agency, then the Receiving
Party shall first give written notice to the Disclosing Party to allow the
Disclosing Party to make a reasonable effort to obtain a protective order or
other confidential treatment for the Confidential Information.
ARTICLE 6: INJUNCTIVE RELIEF
Retek acknowledges that any breach of its obligations under this
Agreement with respect to HNC's Licensed Technology, Intellectual Property
Rights or Confidential Information or any failure by Retek to use Licensed
Technology strictly in accordance with the license rights granted to Retek under
Section 2.1 of this Agreement will cause HNC irreparable injury for which there
are inadequate remedies at law, and therefore, HNC will be entitled to equitable
relief (including by not limited to injunctive relief and the remedy of specific
performance) in addition to all other rights and remedies provided by this
Agreement or available at law. Retek further agrees that HNC shall be entitled
to recover reasonable attorneys' fees and court costs expended in connection
with any litigation initiated to this Agreement.
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ARTICLE 7: INDEMNITY
Retek will be solely responsible for any commercial or legal liability
that may arise as a result of Retek's exercise of any of the license rights
granted by HNC to Retek under this Agreement, and Retek shall defend, indemnify,
and hold HNC harmless from and against any and all suits, claims, proceedings,
judgments, awards, damages, loss, liability, cost and expenses (including
without limitation reasonable attorney's fees and other related costs) that are
incurred or suffered by HNC or any of its affiliates, directors, officers,
employees, or agents to the extent arising from (i) Retek's exercise of any
license or other rights granted to Retek under this Agreement; or (ii) the
conduct of Retek's business directly or through any affiliate of Retek.
ARTICLE 8: EXCLUSION OF DAMAGES; LIMITATION OF LIABILITY
(a) IN NO EVENT SHALL HNC BE LIABLE TO RETEK OR TO ANY THIRD PARTY FOR
ANY SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING WITHOUT
LIMITATION LOSS OF USE, DATA, BUSINESS OR PROFITS) ARISING OUT OF OR IN
CONNECTION WITH THIS AGREEMENT OR THE USE, OPERATION OR PERFORMANCE OF ANY OF
THE LICENSED TECHNOLOGY, WHETHER SUCH LIABILITY ARISES FROM ANY CLAIM BASED UPON
CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE), PRODUCT LIABILITY OR OTHERWISE,
AND WHETHER OR NOT HNC HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS OR
DAMAGE.
(b) IN NO EVENT SHALL HNC'S AGGREGATE CUMULATIVE TOTAL LIABILITY UNDER
THIS AGREEMENT EXCEED $10,000.
(c) THIS SECTION IS A MATERIAL INDUCEMENT AND CONDITION TO HNC FOR
ENTERING INTO THIS AGREEMENT.
ARTICLE 9: TERM AND TERMINATION
9.1 TERM. This Agreement will commence on the Effective Date and will
remain in full force and effect thereafter unless terminated in accordance with
the terms of this Agreement.
9.2 MATERIAL BREACH. HNC will have the right to terminate this
Agreement and all licenses granted by it hereunder upon notice to Retek if Retek
breaches any material term or condition of this Agreement and fails to cure that
breach within thirty (30) days after receiving written notice of the breach. In
the event of a breach of this Agreement by Retek, which breach is not cured
within such thirty (30) day time period, HNC shall be entitled to terminate this
Agreement immediately upon written notice to Retek.
9.3 INSOLVENCY. Either party will have the right to terminate this
Agreement immediately upon notice to the other party if the other party: (a)
becomes the subject of a
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voluntary petition in bankruptcy or any voluntary proceeding relating to
insolvency, receivership, liquidation, or composition for the benefit of
creditors; or (b) becomes the subject of an involuntary petition in bankruptcy
or any involuntary proceeding relating to insolvency, receivership, liquidation,
or composition for the benefit of creditors, if such petition or proceeding is
not dismissed within sixty (60) days of filing.
9.4 CERTAIN EVENTS OF TERMINATION. Upon the occurrence of (a) any
breach or violation by Retek of its obligations under Section 5.5 - CERTAIN
POST-DISTRIBUTION TRANSACTIONS of the Separation Agreement dated as of
_________, 1999 among HNC, Retek and Retek Information Systems, Inc. (the
"SEPARATION AGREEMENT"); or (b) the occurrence of any event that would trigger
an indemnification obligation of Retek under Section 5.5 of the Separation
Agreement, or (c) any Change of Control (as defined below) of Retek which
results in Retek directly or indirectly controlled by or under common control
with, any Prohibited Successor (as defined below), HNC shall be entitled to
terminate this Agreement and Retek's rights hereunder upon giving written notice
to Retek. As used herein, the term "CHANGE OF CONTROL" means: (a) a transaction
or series of related transactions that results in the sale or other disposition
of all or substantially all of Retek's assets; or (b) a merger or consolidation
in which Retek is not the surviving corporation or in which, if Retek is the
surviving corporation, the shareholders of Retek immediately prior to the
consummation of such merger or consolidation do not, immediately after
consummation of such merger or consolidation, own stock or other securities of
Retek that possess a majority of the voting power of all Retek's outstanding
stock and other securities and the power to elect a majority of the members of
Retek's board of directors; or (c) a transaction or series of related
transactions (which may include without limitation a tender offer for Retek's
stock or the issuance, sale or exchange of stock of Retek) if the shareholders
of Retek immediately prior to the initial such transaction do not, immediately
after consummation of such transaction or any of such related transactions, own
stock or other securities of Retek that possess a majority of the voting power
of all Retek's outstanding stock and other securities and the power to elect a
majority of the members of Retek's board of directors. "PROHIBITED SUCCESSOR"
means any of the entities listed in Exhibit B hereto. As used herein, the term
"CONTROL" (including, with correlative meanings, the terms, "CONTROLS"
"CONTROLLING", "CONTROLLED BY" or "UNDER COMMON CONTROL WITH") with respect to a
designated person means the possession, directly or indirectly, of the power to
vote a majority of the securities having voting power for the election of
directors (or other persons acting in similar capacities) of such person or
otherwise to direct or cause the direction of the management and policies of
such person, whether through the ownership of voting securities, by contract or
otherwise.
9.5 CESSATION OF BUSINESS. In the event Retek winds up, dissolves or
otherwise ceases doing business, HNC shall be entitled to terminate this
Agreement immediately upon written notice to Retek.
9.6 EFFECT OF TERMINATION. Upon termination of this Agreement: (a) the
rights and licenses granted to Retek pursuant to this Agreement will
automatically terminate, and (b) Retek shall, within thirty (30) days, ship to
HNC or destroy (including purging from any system or storage media) all items
all Licensed Technology and other Confidential Information
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in its possession or control, and an officer of Retek shall certify in writing
that Retek as complied with the provisions of this Section. However, termination
of this Agreement will not terminate customer software licenses validly granted
by Retek in accordance with this Agreement prior to the effective date of
termination of this Agreement.
9.7 NONEXCLUSIVE REMEDY. Termination of this Agreement by HNC will be a
nonexclusive remedy for breach and will be without prejudice to any other right
or remedy of such party.
9.8 NO DAMAGES FOR TERMINATION. NEITHER PARTY WILL BE LIABLE TO THE
OTHER FOR DAMAGES OF ANY KIND, INCLUDING WITHOUT LIMITATION INCIDENTAL OR
CONSEQUENTIAL DAMAGES, DAMAGES FOR THE LOSS OF GOODWILL, PROSPECTIVE PROFITS OR
ANTICIPATED INCOME, OR DAMAGES RESULTING FROM ANY EXPENDITURES, INVESTMENTS,
LEASES OR COMMITMENTS MADE BY EITHER PARTY ON ACCOUNT OF THE TERMINATION OR
EXPIRATION OF THIS AGREEMENT IN ACCORDANCE WITH ITS TERMS.
9.9 SURVIVAL. The rights and obligations of the parties under the
following Articles of this Agreement shall survive any termination of this
Agreement: Article 3 (Ownership), Article 4 (Warranty Disclaimer) 5
(Confidentiality), 6 (Injunctive Relief), 7 (Indemnity), 8 (Exclusion of
Damages), 9 (Term and Termination) and 10 (General Provisions).
ARTICLE 10: GENERAL PROVISIONS
10.1 GOVERNING LAW. This Agreement will be governed by and construed in
accordance with the internal laws of the State of California, without reference
to its conflict of law rules.
10.2 COMPLIANCE WITH LAWS. Retek agrees to comply in all material
respects with all applicable laws, rules, and regulations in connection with its
activities under this Agreement, including without limitation, any applicable
export controls imposed by the U.S. Export Administration Act of 1978, as
amended (the "ACT") and the regulations promulgated under the Act.
10.3 ASSIGNMENT. Retek may not assign this Agreement or assign its
license rights hereunder in whole or in part without HNC's prior written
consent. Any attempt to assign this Agreement or assign or sublicense Retek's
license rights hereunder without such consent will be void and of no effect.
Subject to the terms of this Section 10.3, this Agreement will bind and inure to
the benefit of the parties and their respective successors and permitted
assigns.
10.4 ATTORNEYS' FEES. In the event that any action or proceeding is
brought in connection with this Agreement, the prevailing party shall be
entitled to recover its costs and reasonable attorneys' fees following a final
judgment.
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10.5 SEVERABILITY. If for any reason a court of competent jurisdiction
finds any provision of this Agreement invalid or unenforceable, then that
provision of the Agreement will not be voided, but rather will be enforced to
the maximum extent legally permissible and the other provisions of this
Agreement will remain in full force and effect.
10.6 INDEPENDENT CONTRACTOR. The parties to this Agreement are
independent contractors and this Agreement will not establish any relationship
of partnership, joint venture, employment, franchise, or agency between the
parties. Neither party will have the power to bind the other or incur
obligations on the other's behalf without the other's prior written consent.
10.7 NOTICES. All notices required or permitted under this Agreement
will be in writing and delivered by confirmed facsimile transmission, by courier
or overnight delivery service, or by certified mail, and in each instance will
be deemed given upon receipt. All communications to a party will be sent to the
address of the party set forth in the preamble above or to such other address as
may be specified by such party to the other in accordance with this Section.
Either party may change its address for notices under this Agreement by giving
written notice to the other party by the means specified in this Section.
10.8 COUNTERPARTS. This Agreement may be executed in counterparts, each
of which will be deemed an original, but both of which together will constitute
one and the same instrument.
10.9 ENTIRE AGREEMENT. This Agreement constitutes the complete and
exclusive agreement between the parties with respect to the subject matter
hereof, superseding and replacing any and all prior and contemporaneous
agreements, communications, and understandings (both written and oral) regarding
such subject matter.
10.10 MODIFICATION. No modification to this Agreement, nor any waiver
of any rights, shall be effective unless consented to in writing and the waiver
of any breach or default shall not constitute a waiver of any other right or of
any subsequent breach or default.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed as of the Effective Date by their duly authorized representatives.
HNC SOFTWARE INC. RETEK INC.
By:__________________________________ By:________________________________
Name:________________________________ Name:______________________________
Title:_______________________________ Title:_____________________________
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