Exhibit 10.38
OEM LICENSE AGREEMENT
1.: PARTIES, BACKGROUND AND DEFINITIONS
1.1 PARTIES TO AGREEMENT
This OEM License Agreement (The "Agreement") is entered into by and between St.
Xxxx Software, Inc., a Minnesota corporation, ("St. Xxxx") and Frontec AMT AB,
Gardsvagen 7.S-169 70 Solna, a Swedish Company ("Frontec"). The parties agree as
follows:
1.2 BACKGROUND
Frontec develops and distributes messaging, EDI, message broker, mapping and
intelligent messaging software and related materials for application in various
markets. Frontec desires that St. Xxxx adapt St. Paul's Evision spEDI*map
mapping technology to interface with Frontec's AMTrix server and St. Xxxx
desires to develop such software product. Frontec wishes to obtain a limited
license to market and sell such product in conjunction with AMTrix, and St. Xxxx
desires to grant Frontec such license.
1.3 DEFINITIONS
(a) "Adapt" or any derivative of adapt as used in Section 1.2 and late
paragraphs shall mean that St. Paul's spEDI*map logos shall be removed
from the spEDI*map Windows 95 client version shipped to Frontec. It
specifically excludes the server processes that are used by the St.
Xxxx translator. This adapted product shall not suggest that the St.
Xxxx Copyright Notices are or shall be removed. The adaptation does not
change the adapted product ownership rights, which shall remain with
St. Xxxx Software.
(b) "Advance" shall have the meaning set forth in Sections 8.1.
(c) "Affiliate of Frontec" means any company directly or indirectly
controlling, controlled by or under common control with Frontec.
(d) "AMT Interface Test" shall have the meaning set forth in Section 2.4.
(e) "Beta Testing" shall have the meaning set forth in Section 2.4.
(f) "Customer" means any third party that is granted the right to use the
Licensed Product.
(g) "Customer License Agreement" means a sublicense between Frontec and a
Customer for the use of the FAMT Product whose terms are no more
burdensome to St. Xxxx or to Frontec than those terms of this Agreement
that are reasonably applicable to such Customer.
(h) "Development Fee" shall have the meaning set forth in Section 2.7.
(i) "Documentation" means the Frontec Documentation and the St. Xxxx
Documentation.
(j) "Enhancements" means changes or additions to the Licensed Product made
by St. Xxxx, other than Maintenance Modifications that add
functionality or substantially improve performance of the Licensed
Product by changes in system design and/or coding techniques.
(k) "Error" means a statement or condition in the Licensed Product, or a
statement or diagram in the Documentation, that is not in conformity
with Structural Definition.
(l) "Error Correction" means a change to the Licensed Product or the St.
Xxxx Documentation that causes the Licensed Product or the St. Xxxx
Documentation to conform to the Structural Definition.
(m) "FAMT Product" means Frontec's proprietary AMTrix software containing
the Licensed Product.
(n) "Frontec Documentation" means Frontec's AMTrix documentation including
a derivative work of the St. Xxxx Documentation prepared by Frontec by
editing, reorganizing, and expanding the St. Xxxx Documentation into
the format and trade dress deemed appropriate by Frontec for purposes
of marketing the FAMT Product.
(o) "Frontec Products" means all software, data and related materials as to
which Frontec has the right to distribute, excluding the Licensed
Product.
(p) "Frontec" means Frontec and any Affiliate of Frontec.
(q) "Structural Definition" means the mutually agreed upon description of
the output structures and logic set to load them for the Licensed
Product set forth in SCHEDULE A and any future version thereof provided
by St. Xxxx and accepted by Frontec.
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(r) "Licensed Product" means the adapted spEDI*map Technology in object
code, to be furnished by St. Xxxx hereunder, that implements the
Structural Definition set forth in SCHEDULE A attached hereto (as may
be mutually amended), plus all Maintenance Modifications and
Enhancements furnished by St. Xxxx to Frontec under this Agreement.
(s) "Maintenance Modifications" means modifications or revisions to the
Licensed Product made by St. Xxxx that provide Error Correction,
support new releases of the operating systems with which the Licensed
Product is designed to operate, support new input or output devices, or
constitute other changes made as part of the St. Xxxx Software
Enhancement process. St. Xxxx Software shall not furnish to Frontec
hereunder any Maintenance Modifications that cause the Licensed Product
to fail to conform to the Structural Definition.
(t) "Object Code" means the machine-readable computer code which enables
the computer to execute the programs that comprise the Licensed
Product, which is derived from the Source Code to the Licensed Product
by a process generally referred to as compilation, and which may be
stored in a variety of magnetic media or other formats.
(u) "Source Code" means the underlying computer programs: (i) which
comprise the Licensed Product; (ii) which are readable by human beings
when displayed on a monitor or printed on paper, regardless of the
media on which the programs are stored, and (iii) which must be
translated by a process generally known as compilation into Object Code
before the Licensed Product can be executed by a computer.
(v) "Royalty" shall have the meaning set forth in Section 8.2.
(w) "spEDI*map Technology" means St. Paul's proprietary Evision spEDI*map
technology, version V2.0 and St. Xxxx Documentation.
(x) "St. Xxxx Documentation" means St. Paul's published documentation and
training materials for the Licensed Product, which shall be provided to
Frontec in electronically readable form in Microsoft Word format and
shall consist of human-readable English-language statements and
information required by Customers for the operation of the Licensed
Product.
(y) "Statement of Acceptance" means the statement issued by Frontec to St.
Xxxx accepting the Licensed Product pursuant to Section 2.5.
(z) "Commercially Reasonable Marketing Efforts" means that Frontec will
actively market, promote and sell the Licensed Product as Part of the
FAMT Product
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through Frontec offices on a worldwide basis in market areas it
normally conducts business during the term of this agreement. Actively
market means create, distribute marketing literature, advertisement,
sales demonstration and training material to sales personnel and
customers for the purpose of promoting and selling the FAMT product.
2: DEVELOPMENT OF THE FAMT PRODUCT.
2.1 APPOINTMENT OF LIASONS; TIME SCHEDULE
Upon execution of this Agreement, each party shall appoint one or more liasons,
who shall be responsible for developing a time schedule within one week of the
execution of this Agreement for implementing the activities described herein,
which shall be attached hereto as SCHEDULE B and incorporated herein as part of
this Agreement. Such liasons shall serve for their respective organizations to
coordinate communication between the parties under this Agreement. A party's
liason shall be subject to change upon written notice to the other party.
2.2 DELIVERABLES
St. Xxxx shall develop and deliver the Licensed Product to Frontec in accordance
with SCHEDULE B. The Licensed Product shall be delivered to Frontec in the form
of a single copy on CD-Rom.
2.3 LICENSE TO USE FRONTEC PRODUCTS
Frontec hereby grants St. Xxxx a nonexclusive, nontransferable, revocable,
royalty-free right and license to copy and use any Frontec Products provided by
Frontec during the term of this Agreement solely for St. Paul's internal use in
developing the Licensed Product.
2.4 TESTING
Upon delivery of the Licensed Product to Frontec, Frontec will conduct tests to
verify that the Licensed Product's interface functionality conforms to the
Structural Definition (the "AMT INTERFACE TEST"). Following successful
completion of the AMT Interface Test (as mutually determined by St. Xxxx
Software and Frontec), Frontec shall conduct a field test of the FAMT Product,
under reasonable beta test procedures to be submitted to St. Xxxx for review
prior to commencement of the test, involving up to three (3) potential end-users
selected by Frontec, for the purpose of testing and evaluating the reliability
and performance of the FAMT Product ("BETA TESTING"). During all testing,
Frontec shall report to St. Xxxx any user or interface problems, particularly
those involving Errors. St. Xxxx shall use Commercially Reasonable Efforts to
make promptly all functionality or
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necessary Error Corrections and shall respond to all reasonable recommendations
changes to the Documentation and Structural Definition.
2.5 ACCEPTANCE
Frontec shall accept the FAMT Product at such time as it determines in its sole
discretion that the FAMT Product is commercially marketable to end-users and
that it conforms to the Structural Definition. When Frontec makes such
determination, it shall execute and furnish to St. Xxxx a Statement of
Acceptance. St. Xxxx shall countersign the Statement of Acceptance, whereupon
the version of the Structural Definition used for acceptance shall supersede all
prior versions of Structural Definition for purposes of this Agreement. The FAMT
Product will be considered available for general release upon execution of the
Statement of Acceptance.
2.6 END-USER DOCUMENTATION
Frontec shall, within fourteen (14) business days of delivery of the Statement
of Acceptance, provide to St. Xxxx a final draft of the Frontec Documentation
for St. Paul's review. St. Xxxx shall review the Frontec Documentation for
technical accuracy within twenty-one (21) business days and report to Frontec in
writing any perceived inaccuracies and recommend corrections. Frontec may
incorporate into the Frontec Documentation such recommended corrections, as it
deems necessary to ensure technical accuracy.
2.7 DEVELOPMENT FEE
Frontec shall pay St. Xxxx $50,000 for the development of the Licensed Product
described herein (the "Development Fee"). The Development Fee shall be payable
by Frontec in three equal installments as follows: one-third upon delivery of
the Licensed Product. one-third upon successful completion of the AMT Interface
Test, and one-third upon completion of the Beta Testing, or January 31, 1998,
which ever occurs first, unless a delay is caused by a St. Xxxx issue regarding
delivery of the Licensed Product.
2.8 Termination if No Acceptance
If Frontec does not issue a Statement of Acceptance, Frontec may terminate this
Agreement upon notice to St. Xxxx, and the Development Fees payable to St. Xxxx
hereunder shall not be refunded.
3: MARKETING RIGHTS
3.1 GRANT; TRADE DRESS
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St. Xxxx hereby grants to Frontec a nonexclusive, worldwide right to market,
distribute, and sublicense to Customers any and all versions of the Licensed
Product as part of the FAMT Product, including Enhancements and modifications
thereto, under Frontec's logos and trade dress.
3.2 MARKETING EFFORTS
Frontec will use Commercially Reasonable Marketing Efforts to attain the revenue
assumptions set forth in Schedule C. The parties agree that the revenue
assumptions are subject to uncertainty where the uncertainty may make the
assumptions easier or more difficult to obtain.
4: LICENSE
4.1 GRANT
Conditional upon Frontec's issuance of the Statement of Acceptance, St. Xxxx
hereby grants to Frontec a limited, nonexclusive, worldwide right and license to
(i.e. copy the Licensed Product for inclusion in the FAMT Product and to market
and distribute copies of the Licensed Product, as included in the FAMT Product,
to Customers under Customer License Agreements; (ii) copy the St. Xxxx
Documentation to prepare Frontec Documentation as a derivative work thereof, and
to copy and distribute the Frontec Documentation as part of the FAMT Product to
its customers; and (iii) make demonstration and training copies of the Licensed
Product for use by Frontec and its sales force in development, testing,
demonstration and training activities.
4.2 NO SOURCE CODE
The license in Section 4.1 is for object code only. Frontec shall not obtain
access to or any use of St. Paul's source code. St. Xxxx does not grant any
rights whatsoever in St. Paul's source code.
5: FRONTEC'S RIGHT TO SUBLICENSE
Frontec may sublicense any or all of its rights and obligations under this
Agreement to any party that is a participant in Frontec's distribution system,
PROVIDED that any such sublicense shall not release Frontec from any of its
obligations hereunder and such sublicensee shall comply with and be subject to
the terms and conditions of this Agreement that are reasonably applicable to
such sublicensee.
6: PROTECTION AND CUSTOMER SUBLICENSING TERMS
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6.1 PROTECTION FROM UNAUTHORIZED USE
Frontec shall protect the Licensed Product and the St. Xxxx Documentation and
St. Xxxx shall protect the Frontec Products, from unauthorized use, copying,
modification, or distribution with at least the same level of effort and
security as such party has in effect with respect to its own proprietary
computer programs, but in no event less than a reasonable degree of care.
6.2 NO REVERSE ASSEMBLY
Frontec shall not reverse-assemble, reverse-compile, or reverse-engineer the
Licensed Product and St. Xxxx shall not reverse-assemble, reverse-compile, or
reverse-engineer the Frontec Products.
6.3 SUBLICENSING TO CUSTOMERS
Frontec shall at all times ensure that Customers use the Licensed Product under
the terms of a Customer License Agreement. Notwithstanding the foregoing
sentence, Frontec may provide Customers with temporary royalty-free licenses to
use the Licensed Product solely for evaluation purposes in connection with the
licensing of the Licensed Product.
7: SUPPORT; SOURCE CODE ESCROW
7.1 FRONT LINE SUPPORT
Frontec shall provide the following first-line technical support services to
Customers under annual maintenance agreements.
a. Maintenance Modifications developed by St. Xxxx;
b. Telephone consultation service to aid end-users in
installation and use of the Licensed Product as part of the
FAMT Product; and
c. Enhancements developed by St. Xxxx.
7.2 SECOND LINE SUPPORT
St. Xxxx shall provide second-line support for the Licensed Product to Frontec
during St. Xxxx Software's normal business hours, which are Monday through
Friday 7:00 AM - 5:00 PM CST (or, when applicable, CDT) following the initial
distribution of the Licensed Product to Customers. St. Xxxx shall start to solve
Errors in the Licensed Product that essentially affect a Customer's production
within 4 hours of notification. If a
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reported Error causes the Licensed Product to be inoperative or unable to
process information for which it is intended. St. Xxxx shall provide an Error
Correction or use Commercially Reasonable Efforts to provide a workaround within
24 hours.
7.3 ADDITIONAL SUPPORT; TRAINING
Frontec may purchase additional services from St. Xxxx to be provided by a
technical support person approved by Frontec. The fee for such support person
shall be a reasonable fee agreed upon by the parties. Frontec shall have the
right to send four representatives to attend any training sessions conducted by
St. Xxxx for the Licensed Product and any upgrades and new versions, and St.
Xxxx shall notify Frontec of the scheduling of any such training sessions. The
fee for such training sessions shall be agreed between the parties in advance of
the training sessions.
7.4 UPDATES
St. Xxxx shall provide Frontec with updates of the Licensed Product that will
incorporate Maintenance Modifications and Enhancements, as they become generally
available, as well as any related documentation. St. Xxxx shall provide to
Frontec at least once annually a "modification level" update to the Licensed
Product, which shall include all Maintenance Modifications regardless of whether
they were previously provided to Frontec, for incorporation in all future copies
of the FAMT Product. Source Code related to such modification level shall at the
same time be placed in escrow under Section 7.5. If Frontec wishes to deliver an
FAMT Product with enhancements and support of standards St. Xxxx has not made
available, Frontec shall notify St. Xxxx of its need for such support. St. Xxxx
shall promptly notify Frontec whether or not it plans to make such enhancements
available. If St. Xxxx agrees to make such enhancements available, St. Xxxx
shall use commercially reasonable efforts to complete such work within a
reasonable time period. If St. Xxxx does not agree to make such enhancements
available, Frontec may elect to complete such enhancements. If Frontec so
elects, St. Xxxx shall provide the appropriate procedures normally used by St.
Xxxx to validate whether or not the enhancements function correctly with the
Licensed Product and St. Xxxx shall provide a reasonable amount of technical
assistance to enable Frontec to complete the testing, at St. Xxxx Software's
standard rates then in effect.
7.5 SOURCE CODE ESCROW
Within a reasonable time following acceptance of the Licensed Product by
Frontec, St. Xxxx shall place the Source Code for the Licensed Product in escrow
at the Vault Inc., located in Minneapolis, Minnesota, at Frontec's expense,
under the terms of St. Paul's Source Escrow Agreement with The Vault, Inc. St.
Xxxx will cause Frontec to be registered as a beneficiary to such Escrow
Agreement. In the event St. Xxxx fails to provide support services hereunder or
is rendered unable to provide support services
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generally, or due to (i) any rejection or termination of the Agreement under
Title 11 of the United States Code, as now constituted or hereafter amended (the
"BANKRUPTCY CODE"), or any other federal or state bankruptcy, insolvency,
receivership, or similar law; (ii) failure of a trustee, including St. Xxxx as
debtor in possession, in any bankruptcy case hereafter filed by or against St.
Xxxx either to assume this Agreement within fifteen (15) days after the filing
of the initial bankruptcy petition or to perform this Agreement within the
meaning of Section 365(a)(4)(i) of the Bankruptcy Code; or (iii) the termination
of substantially all of St. Paul's ongoing business operations, the escrow agent
shall release to Frontec copies of the Source Code deposited in escrow and
Frontec shall have the right to use such Source Code solely to maintain and
support the Licensed Product for its customers.
8: ROYALTIES
8.1 ADVANCE
Frontec shall pay St. Xxxx a $100,000 advance against Royalties, payable upon
availability for general release by Frontec of the FAMT Product (the "ADVANCE"),
or no later than March 1, 1998, which ever occurs first, unless a delay is
caused by a St. Xxxx issue regarding delivery of the Licensed Product.
8.2 ROYALTY AMOUNT
During the initial three-year term of this Agreement, as contemplated by Section
15, Frontec shall pay St. Xxxx a royalty equal to twenty-five percent (25%) of
Frontec's Net Sales (the "ROYALTY"). "Net Sales" means the total revenues from
the sale of licenses allocated to the Licensed Product, but not less than an
annual average of $2,000 per license, plus one-quarter of the revenue received
from Customers for maintenance contracts in respect to licenses allocated to the
Licensed Product, after deducting sales or other taxes, shipping charges,
duties, returns, and allowances. The Advance shall be charged against Royalties
due.
8.3 PAYMENT OF ROYALTY
Frontec shall pay St. Xxxx the Royalty owed in U.S. Dollars, without deduction
for any foreign income or excise taxes, by the 30th day of each calendar
Quarter, with respect to the Licensed Product/FAMT Product and maintenance
agreements sold during each preceding calendar Quarter, or any portion thereof
(the "ROYALTY PERIOD"). A Licensed Product/FAMT Product shall be considered
"sold" based on Frontec's product income recognition policy. A maintenance
agreement shall be considered "sold" based on Frontec's income recognition
policy. Concurrent with each Royalty payment, Frontec shall
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submit a statement setting forth the Net Sales during the Royalty Period,
together with the amount of any credits for returns made or allowed for Licensed
Products/FAMT Product. An officer of Frontec shall certify such statements as
true and correct.
9: RECORDS, REPORTS AND AUDITS
9.1 REQUIRED RECORDS
Frontec shall prepare and maintain at its expense complete and accurate books
and records documenting the sublicensing of any Licensed Product, and any
license, support or other fees received therefrom. The books and records
prepared by Frontec shall be retained for a minimum of three (3) years from the
date on which Frontec is obligated to pay such fee to St. Xxxx.
9.2 AUDIT; INSPECTION
During the initial term hereof, any renewal periods, and for a period of three
(3) year after expiration or termination of this Agreement. St. Xxxx shall have
the right at its expense and upon reasonable notice, to examine or have examined
by an independent auditor during normal business hours, Frontec's books and
records to determine or verify Frontec's performance hereunder, the amounts of
license, support and other fees due to St. Xxxx by Frontec hereunder, and the
extent that such amounts have been paid, and the accuracy of any reports
furnished by Frontec to St. Xxxx. In addition, Frontec shall permit, and cause
its manufacturers to permit, St. Xxxx or its representatives to inspect the
facilities where the FAMT Products are being manufactured and/or packaged, upon
reasonable notice and during normal business hours.
10: OWNERSHIP; LEGAL NOTICES
10.1 OWNERSHIP
The parties agree that: (i) St. Xxxx is and shall remain the owner of all rights
in and to the spEDI*map Technology; (ii) Frontec is and shall remain the owner
of all rights in and to the Frontec Products, and (iii) St. Xxxx shall be the
owner of all rights in and to any and all Adaptations of the spEDI*map
Technology developed by either party under this Agreement. The parties agree to
execute any documents reasonably requested and mutually agreed to by the other
to effect any of the provisions of this Article 10.
10.2 LEGAL NOTICES
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Frontec shall place on the Licensed Product and the Documentation as well as on
all promotional, packaging, and advertising material related thereto all
appropriate legal notices as reasonably required by St. Xxxx, to give notice to
the consuming public of St. Paul's right, title, and interest in the spEDI*map
Technology and the St. Xxxx Documentation.
11: ST. PAUL'S WARRANTIES AND REPRESENTATIONS
11.1 THE LICENSED PRODUCT
St. Xxxx represents and warrants that (i) St. Xxxx is either the author of
the Licensed Product and the St. Xxxx Documentation or has obtained and
currently holds all rights necessary to grant the licenses and rights granted
herein, (ii) the Licensed Product and the St. Xxxx Documentation have not
been published under circumstances that have caused the loss of copyright
therein; (iii) the Licensed Product and the St. Xxxx Documentation shall
substantially conform to the Structural Definition and shall function on the
machines and with the operating systems identified in the Structural
Definition in accordance with same, (iv) the Licensed Product will not
contain any virus, clock, time bomb, or other disabling device; (v) the
Liscensed Product is year 2000 compliant; (vi) St. Xxxx has not granted and
will not grant to any third party any license to use the Licensed Product,
and (vii) the Source Code for the Licensed Product has not and will not be
released to any third party, except pursuant to the escrow agreement
described in Section 7.5.
11.2 NO INFRINGEMENT
St. Xxxx represents and warrants that no claim or action relating to the
infringement of any copyright, trademark, or other intellectual property right
has been made or is pending against St. Xxxx or any entity from which St. Xxxx
has obtained rights with respect to the Licensed Product and the St. Xxxx
Documentation. St. Xxxx further represents and warrants that the use or
distribution of the Licensed Product and the St. Xxxx Documentation and
Frontec's exercise of the licenses granted herein do not and will not infringe
any copyright or infringe or violate any other proprietary right (including
trade secrets) of any third party.
12: PROTECTION AGAINST INFRINGEMENT
The parties shall, to the extent commercially reasonable under the
circumstances, cooperate in the enforcement of all rights in the Licensed
Product and Documentation against infringers. St. Xxxx shall have the right, but
not the obligation, to institute and prosecute lawsuits against third persons
for infringement of the rights licensed by St. Xxxx in this Agreement. If St.
Xxxx does not institute an infringement suit within thirty (30)
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days after Frontec's written request that it do so. Frontec may institute and
prosecute such lawsuit. Any lawsuit shall be prosecuted solely at the cost and
expense of the party bringing suit and all sums recovered in any such lawsuits,
whether by judgement, settlement or otherwise, in excess of the amount of
reasonable attorneys' fees and other out of pocket expenses of such suit, shall
belong to the party bringing the suit. Upon request of the party bringing the
lawsuit, the other party shall execute all papers, testify on all matters, and
otherwise cooperate in every way necessary and desirable for the prosecution of
any such lawsuit. The party bringing suit shall reimburse the other party for
the expenses incurred as a result of such cooperation.
13: INSURANCE
St. Xxxx shall, throughout the term of this Agreement and for a period of one
year following termination of this Agreement, obtain and maintain at its own
cost and expense from a qualified insurance company reasonably standard
commercial liability insurance in reasonable amounts as determined by St. Xxxx.
14: CONFIDENTIALITY
14.1 CONFIDENTIAL INFORMATION
St. Xxxx and Frontec agree that certain information supplied by each (the
"DISCLOSING PARTY") to the other (the "RECEIVING PARTY") during the course of
this Agreement may be proprietary, secret or confidential, including without
limitation, customer data, software, business practices or other confidential
or proprietary information ("CONFIDENTIAL INFORMATION"). All Confidential
Information shall be clearly marked as such by the Disclosing Party, or if
initially disclosed orally, identified as such at the time of disclosure or
in writing by the Disclosing Party within thirty (30) days of the initial
oral disclosure. Unless otherwise specified herein, Confidential Information
shall not include information: (a) previously known by the Receiving Party
free of any confidentiality obligation, (b) independently developed by the
Receiving Party, (c) disclosed to the Receiving Party by a third party having
the right to disclose such information to the Receiving Party, or (d) known
or disclosed to the public or generally known to persons engaged in the
respective businesses of St. Xxxx or Frontec through no fault of the
Receiving Party. All Confidential Information shall be held in confidence by
the Receiving Party following the date of disclosure and shall be used only
for the purposes of this Agreement unless the Disclosing Party provides prior
written consent to the contrary unless the disclosure of such information is
required by law or order of a court or governmental agency, in which case
disclosure shall be made only after reasonable advance notice to the
Disclosing Party, except in the case of disclosure to regulatory authorities.
Either party may disclose Confidential Information of the other party to its
consultants or affiliates if necessary in
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connection with the performance of its obligations hereunder or as otherwise
contemplated hereby, provided that such consultants and affiliates are bound in
writing to maintain the confidentiality of such Confidential Information to at
least the extent provided in this Section. All Confidential Information shall be
maintained in secure premises by the Receiving Party, and the Receiving Party
shall take all appropriate measures to prevent the unauthorized disclosure
thereof. The terms and conditions of this Agreement shall be treated by each
Party as the Confidential Information of the other Party. The parties shall
agree in advance as to what information will be released for external use.
14.2 NO RESTRICTION ON DEVELOPMENT
Each party (the "ACKNOWLEDGING PARTY") acknowledges that the other party may
develop or receive information from others that may be similar to the
Acknowledging Party's Confidential Information. The parties agree that either
party may continue to develop, and is not restricted in the future from
developing and marketing, a product that is similar to the Licensed Product,
provided the developing party does not use the other party's Confidential
Information and does not utilize any development efforts which violate paragraph
6.2 of this Agreement.
15: TERM AND RENEWAL
Unless terminated earlier pursuant to any provisions of Article 16, this
Agreement shall commence on the date countersigned by an authorized officer of
St. Xxxx after having been signed by Frontec, and shall continue in force for
three years from thereafter. This Agreement shall be automatically renewed for
additional one-year periods unless terminated in writing by the parties as
provided for herein.
16: TERMINATION
16.1 TERMINATION FOR FAILURE TO AGREE ON ROYALTY RATE
The parties shall use reasonable efforts to agree in writing as to the Royalty
rate for any renewal period following the initial three-year term. If the
parties cannot agree prior to the commencement of the new term, this Agreement
shall terminate.
16.2 TERMINATION WITHOUT CAUSE
This Agreement may be terminated at the conclusion of the initial three-year
term by either party upon 180 days' written notice to the other party prior to
the end of such term. In
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addition, after the initial three year term, this Agreement may be terminated by
either party upon 180 days' written notice to the other party.
16.3 TERMINATION FOR BREACH
Either party may terminate this Agreement upon sixty (60) days notice if the
other party commits a material breach of any provision of this Agreement or
otherwise fails materially to fulfill any of its obligations hereunder and such
party fails to cure such breach during such sixty (60) day period.
16.4 TERMINATION FOR BANKRUPTCY
Either party hereto may terminate this Agreement upon written notice to the
other party without opportunity for cure if such other party becomes insolvent
or, whether voluntary or involuntary, if any process or proceeding of any court
is instituted against such party by attachment or levy or execution, in
insolvency or bankruptcy, or in receivership, or if any general assignment is
made or attempted to be made for the benefit of creditors by such party, or if
such party ceases to conduct its business in the normal course of business.
16.5 RETURN OF INFORMATION
Promptly upon termination, Frontec shall, at its expense, return to St. Xxxx or
destroy all copies of the Licensed Product, related materials, and other
materials developed by or belonging to St. Xxxx which are in possession or
control of Frontec. Concurrently therewith, a duly authorized office of Frontec
shall certify in writing to St. Xxxx that all such materials have been returned
to St. Xxxx or destroyed. However, provided that this Agreement has not been
terminated due to a breach by Frontec, Frontec may retain one (1) copy of the
Licensed Product for internal use only in assisting Customers that were duly
licensed prior to the termination.
16.6 EFFECT OF TERMINATION: REFUNDS
Termination shall have no effect on sublicenses for the Licensed Product granted
by Frontec prior to the effective date of such termination, nor shall
termination have any effect on the obligation of Frontec to pay Royalties for
copies made and distributed to Customers at any time. If this Agreement is
terminated due to breach by or bankruptcy of St. Xxxx following payment of the
Advance. St. Xxxx shall immediately refund to Frontec that portion of the
Advance that does not reflect earned Royalty due to St. Xxxx on the date of
termination.
16.7 SURVIVAL
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Sections 7.5 and 9.2, and Articles 11, 13, 14, and 17 through 20 hereof shall
survive any termination or expiration of this Agreement.
17: NO CONSEQUENTIAL DAMAGES.
Except for St. Paul's agreement to indemnify and defend Frontec and Frontec's
Customers pursuant to Article 18, neither party shall be liable to the other for
special, indirect, incidental, or consequential damages whether any such claim
is based in contract, tort, negligence, strict liability or otherwise.
18: INDEMNIFICATION
18.1 INDEMNIFICATION BY ST. XXXX
St. Xxxx shall protect, defend (or in St. Paul's discretion, settle) indemnify
and hold Frontec harmless from any and all claims, demands, liabilities,
obligations, deficiencies, losses, damages, actions, suits, proceedings,
assessments, judgments or settlements (collectively, "CLAIMS"), including
without limitation all reasonable costs and expenses related thereto such as
attorney's fees, (i) that are asserted against Frontec or Frontec's Customers to
the extent that such Claims are based upon a contention that the Licensed
Product or the St. Xxxx Documentation used within the scope of this Agreement or
a Customer license agreement infringes any patents, copyrights, trade secrets or
other intellectual property rights of any third party, or (ii) by Customers
based on or arising out of (a) failure of the Licensed Product or the St. Xxxx
Documentation to meet the Structural Definition in any material respect, (b)
misleading or inaccurate statements in the St. Xxxx Documentation, or (c) the
failure of St. Xxxx to perform any of its other obligations under Article 7,
PROVIDED that Frontec or its Customer promptly notifies St. Xxxx in writing of
any such Claims. St. Xxxx shall have the sole right to control at St. Paul's own
expense, the defense and negotiation of all such Claims and Frontec and its
Customers (as to claims of the type described in clause (i) above) shall fully
cooperate in St. Paul's defense of all such claims, at St. Paul's expense.
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18.2 INJUNCTION
If, as a result of any Claim, St. Xxxx or Frontec is enjoined from licensing or
sublicensing the Licensed Product, or if St. Xxxx believes that such injunction
is likely or that any Licensed Product is likely to become the subject of a
claim of infringement of the intellectual property rights of any third party.
St. Xxxx shall in its sole discretion and without any additional cost to Frontec
or Frontec's Customers, either (i) procure the rights for Frontec to use and
sublicense, and Frontec's Customers to continue to use, the Licensed Product, or
(ii) replace or modify the Licensed Product so as to make it non-infringing and
in substantial conformance with the Structural Definition.
18.3 EXCEPTIONS; ENTIRE OBLIGATION
St. Xxxx shall not be liable under this Article 18 to the extent a claim of
infringement is based upon the modification of the Licensed Product or any
portion thereof by anyone other than St. Xxxx or without St. Paul's written
approval, UNLESS Frontec can establish that the infringement claim is not a
result of such modification. This Article 18 states St. Paul's entire and
exclusive obligation to Frontec and Frontec's Customers for any claim of
infringement relating to the Licensed Product.
19: EXPENSES
Except as otherwise provided herein, or as may hereafter be established by an
agreement in writing executed by the parties hereto, all expenses incurred by
each party in performing its obligations hereunder shall be borne by the party
incurring the expense, except that in the event of a breach of this Agreement by
a party, the prevailing party shall be entitled to all costs of collection and
enforcing its rights hereunder, including reasonable attorneys' fees.
20: GENERAL PROVISIONS
20.1 FINAL AGREEMENT
This Agreement supersedes all prior and contemporaneous agreements and
understandings between the parties relating to its subject matter (including,
without limitation, the Mutual Nondisclosure Agreement between the parties dated
September 16, 1997 and is the complete and exclusive statement of the terms of
their agreement. This Agreement may be amended, altered or modified only by
writing so stating its purpose, and signed by both parties.
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20.2 GOVERNING LAW
This Agreement and all aspects of the relationship between St. Xxxx and Frontec
shall be governed by and construed in accordance with the laws of the United
State of America, and to the extent not superceded by United States law, to the
laws of the State of New York. Each party hereby consents to the exclusive
jurisdiction and venue of the federal and state courts located in New York. The
parties expressly reject the application to this Agreement of the United Nations
Convention on Contracts for the International Sale of Goods.
20.3 NOTICES
Any notice, request or demand required to be given or made hereunder shall be
made in writing, and may be delivered in person, by certified or registered
mail, postage prepaid, or by overnight courier. All notices shall be addressed
to the party and address set forth at the end of this Agreement, unless and
until a party provides written notice of a new address for receipt of notice.
All notices shall be deemed received when (i) received, or (ii) when delivery
first attempted by the carrier at the address of record, whichever occurs first.
20.4 SEVERABILITY
If any provisions of this Agreement or the application thereof to any party or
circumstances shall to any extent be invalid or unenforceable in any
jurisdiction, that provision shall be severed from this Agreement as to such
jurisdiction (but, to the extent permitted by law, not elsewhere), and shall not
affect the remainder thereof.
20.5 NO WAIVER
No waiver of any obligation or right of either party shall be effective unless
in writing and executed by both parties. Any such waiver shall not preclude a
party from exercising any other right or later exercising the same right.
20.6 ASSIGNMENT
This Agreement shall inure to the benefit of and shall be binding upon the
parties hereto and their respective successors, legal representatives and
permitted assigns. Except as described in Article 5, neither party shall assign
or transfer this Agreement or any part hereof except to a party controlling,
controlled by or under common control with such party without the prior written
consent of the other party, which consent shall not be unreasonably withheld.
Any attempted assignment or transfer in derogation of this prohibition is void.
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20.7 FORCE MAJEURE
Neither party shall be liable for nonperformance or delays in performance
hereunder if caused by factors beyond its reasonable control, including without
limitation, acts of God, acts of public enemy, acts of government or courts of
law or equity, civil war, insurrection or riots, interruption of transportation,
embargo, litigation or other private or public proceedings, accident, inability
to procure materials, prohibition of import or export of materials, government
orders, regulations, restrictions, priorities or rationing or strikes, lockouts
or other labor disputes, fires, floods, explosions, earthquakes or other
casualties.
20.8 COMPLIANCE WITH LAWS
Frontec acknowledges and understands that the Licensed Product may be subject to
restriction on exportation and re-exportation pursuant to the United States
Export Administration Regulations. Frontec shall comply with all applicable laws
and regulations and maintain all required licenses and permits.
20.9 NO JOINT RELATIONSHIP
Frontec and St. Xxxx are independent contractors and neither has nor shall have
any power, nor will either represent that either has any power, to bind the
other party or to assume or create any obligation or responsibility, express or
implied, on behalf of the other party or in other party's name. This Agreement
shall not be construed as constituting Frontec and St. Xxxx as agents, partners,
joint ventures, franchisers or as an association or arrangement which might
impose liability upon St. Xxxx or Frontec for any act or failure to act of the
other.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
day and year first above written.
Accepted by Accepted by
FRONTEC AMT AB ST. XXXX SOFTWARE, INC.
By: /s/ Xxxx Xxxxxxx By: /s/ [ILLEGIBLE]
---------------------------- ----------------------------
Name: Xxxx Xxxxxxx Name: [ILLEGIBLE]
-------------------------- --------------------------
Title: CEO Title: [ILLEGIBLE]
------------------------- -------------------------
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Date: 11-10-97 Date: 11-10-97
-------------------------- --------------------------
Address: Address:
Gardsvagen 7
X-000 00 Xxxxx, Xxxxxx 0000 Xxxxxx Xxxx Xxxxx
Xx. Xxxx, Xxxxxxxxx 00000
XXX
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