Exhibit 10.20
SOFTWARE LICENSE AGREEMENT
This Agreement is entered into on August 1, 1997 by and between Duke
University, a North Carolina educational institution located in Durham, North
Carolina ("Duke"), and Vital Images, Inc., a corporation with its principal
place of business at 0000 Xxxx Xxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxx ("Licensee").
1. Definition of Terms.
a) Licensed Software. The term "Licensed Software" means software identified
as the DICOM Client Library as described in detail in Exhibit A, and any
subsequent Updates and Enhancements thereto furnished to Licensee by Duke
under this Agreement. "Licensed Software" does not include Source Code or
Server Software, as defined below, except as explicitly stated in this
agreement.
b) Source Code. The term "Source Code" means the source code to be delivered
by Duke pursuant to this Agreement which corresponds to the Licensed
Software, and will allow Licensee to produce the compiled version of the
Licensed Software.
c) Server Software. The term "Server Software" means software provided by
Duke whose primary function is to manage, store and transmit images under
DICOM standards on central servers, routers or archive systems, but shall
not include any software provided by Duke that is necessary for Licensee
to exercise its rights to use, market, distribute and sell Licensed
Software in accordance with this Agreement.
d) Field. The term "Field" shall mean the display of medical imaging data on
computer workstations, including but not limited to research, development,
marketing, sales, maintenance and support of software and hardware
products for the visualization of medical imaging data. Field shall not
include medical image management, storage or transmission on central
servers, routers or archive systems or products and systems whose primary
function is to provide such management, storage or transmission.
e) Licensed Products. The term "Licensed Products" shall mean products for
use in the Field, which incorporate the Licensed Software to which
Licensee has acquired commercial rights through this Agreement, developed
either through its own internal efforts, or from third parties, such as
but not limited to, through development agreements with other companies.
f) Documentation. The term "Documentation" means any support material
supplied by Duke with the Licensed Software or Source Code which describes
the operation or structure of the Licensed Software or Source Code, the
design, testing and other aspects of the Licensed Software or Source Code,
or tells how to install and use the Licensed Software or Source Code.
g) Updates. The term "Updates" means all bug fixes, changes, modifications,
and improvements to the Licensed Software which affect its operating
performance or efficiency, but which do not alter the basic functions
described in Exhibit A.
h) Enhancements. The term "Enhancements" means all changes and additions to
the Licensed Software which render it capable of performing additional
basic functions in the Field that were not provided by the Licensed
Software originally supplied under this Agreement.
2. License Grant. Duke grants to Licensee a fully paid-up, non-exclusive,
world-wide license to use, market, distribute and sell Licensed Software
incorporated into Licensed Products.
3. Limited Rights to Source Code. Duke grants to Licensee a limited, fully paid-
up, non-exclusive license to the Source Code upon which the Licensed Software
is based solely for Licensee's internal use in making Updates and
Enhancements to the Licensed Software. Licensee shall not have the right to
sell, license, disclose, or
1
otherwise distribute the Source code to others, or to use the Source Code to
develop or design products outside the Field.
4. Limited Rights to Server Software. Duke grants to Licensee a limited, fully
paid-up, non-exclusive license to the Server Software solely for Licensee's
internal use in developing, evaluating and testing Licensed Software and
Source Code. Licensee shall not have the right to sell, license, disclose,
or otherwise distribute the Server Software to others, to use it as the
basis for new products, or to include the Server Software in Licensee's
products.
5. Royalty payment. Licensee agrees to pay Duke a single royalty payment of
seventy five thousand dollars ($75,000), which payment shall be due thirty
(30) days after delivery of Source Code to Licensee.
6. Sublicenses. The Licensee may not grant sublicenses to the Licensed
Software, except that Licensee may grant sublicenses to third parties in
connection with its normal business of developing, marketing, distributing,
supporting, and selling Licensed Products, including conducting such
activities through direct sales channels, indirect sales channels (dealers
and distributors), and OEM's. Licensee may not grant sublicenses of any type
to Source Code.
7. Right to Copy Licensed Software and Documentation. Licensee may make such
copies of the Licensed Software and Documentation as are necessary for its
sales, marketing and development purposes so long as such use does not
violate the Confidentiality provisions of this Agreement.
8. Delivery.Licensee acknowledges that it has already received the Licensed
Software, Server Software and Documentation in an acceptable form. The
Source Code shall be delivered to Licensee within ____ days of the date of
this Agreement.
9. Term. The licenses granted to Vital Images herein, and the other rights and
obligations of the parties under this Agreement, shall commence on date of
this Agreement, and shall continue indefinitely unless terminated under the
provisions of Article 24 of this Agreement.
10. Due Diligence. The Licensee shall use commercially reasonable efforts to
bring products to market which incorporate the Licensed Software, and to
pursue required government approvals. During the term of this Agreement,
Licensee will maintain an active program of developing, marketing,
maintaining, selling, licensing or servicing Licensed Products. If during
the term of this Agreement, Licensee shall cease to actively support,
maintain, market, or sell Licensed Products, then the Licensee will be
considered to have breached this Agreement, and such breach shall be grounds
for termination as provided in Article 24 of this Agreement.
11. Taxes. Licensee shall pay all taxes (local, state and federal), including
all sales and use taxes, which may now or hereafter be imposed upon this
license, or the possession or use of the Licensed Software; provided,
however, that Duke shall be responsible for any income tax liability
incurred by Duke for royalties or other income received by Duke under this
Agreement.
12. Ownershipof Software. Duke represents that it is the sole and exclusive
owner of the Licensed Software, Server Software, Source Code, and the
Documentation. Licensee acknowledges that it has no rights in the Licensed
Software, Server Software, Source Code or Documentation except those
expressly granted by this Agreement, and that the Licensed Software, Server
Software, Source Code and Documentation shall not be used in any way not
specifically allowed by this Agreement. Duke acknowledges that any Upgrades
and Enhancements made by Licensee are the property of Licensee, and that
Duke's rights to such Upgrades or Enhancements are limited to those rights
granted in Article 15 of this Agreement. Licensee acknowledges that any
Upgrades and Enhancements made by Duke are the property of Duke, and that
Licensee's rights to such Upgrades or Enhancements are limited to those
rights granted in Articles 13 and 14 of this Agreement.
13. Software Updates and Enhancements. If Duke releases any Updates or
Enhancements to the Licensed Software during the first year of this License,
then those Updates or Enhancements, and associated revised Source Code, will
be furnished to Licensee at no additional cost. Thereafter, Duke will
continue to furnish any Updates or Enhancements released for a reasonable
fee to be negotiated in good faith. Duke's obligation to provide Updates and
Enhancements shall be subject to any restrictions placed upon Duke by its
obligations to others.
2
14. Requests for Updates and Enhancements. Licensee may from time to time, and
at its option, find it desirable to ask Duke to develop Updates or
Enhancements to the Licensed Software. Upon receiving such request, Duke
will provide Licensee with timelines and a budget for doing the work. If
Licensee accepts Duke's proposal, then Duke will proceed to develop,
evaluate and document the necessary modifications to the Licensed Software,
and Licensee will reimburse Duke for all direct and indirect costs incurred
in the performance of that research. Updates or Enhancements developed by
Duke with Licensee's funding will be incorporated into this Agreement
without additional fee from Licensee, unless otherwise agreed by the
parties, and Duke will provide the Licensee with the Source code associated
with such Updates or Enhancements.
15. Licensee Updates and Enhancements. Licensee shall have the right to modify
the Licensed Software and Source Code in order to make Updates or
Enhancements for use in Licensed Products. Licensee shall provide Duke with
copies of all such Updates and Enhancements to the Licensed Software
including associated revised Source Code. Duke is hereby granted a paid-up,
royalty free, non-exclusive license to use Licensee Updates and to
incorporate them into software for its own internal purposes or in software
which it may license to others. Duke is hereby granted a paid-up, royalty
free, non-exclusive license to use Licensee Enhancements for its own
internal purposes and to incorporate them into software for such internal
purposes only. Duke may not provide Licensee Enhancements to third parties
without the written consent of Licensee which may include compensation to
Licensee. Licensee's obligation to provide Updates and Enhancements to Duke
shall be subject to any restrictions placed upon Licensee by its obligations
to others. Updates and Enhancements provided by Licensee to Duke will be
provided to Duke without any representations or warranties as to the
performance or safety of the Updates and Enhancements.
16. Confidential Information. "CONFIDENTIAL INFORMATION" will mean all
information provided by one party to the other and clearly identified as
"Confidential" by the transmitting party at the time of disclosure,
including the terms of this agreement. If such transmittal occurs orally,
the transmitting party will promptly reduce such transmittal in writing,
xxxx and identify it as confidential, and promptly provide such record to
the other party. Specifically excepted from this is all information that:
(a) was previously known by the receiving party; (b) is publicly disclosed
except by breach of this AGREEMENT either prior to or subsequent to the
receiving party's receipt of such information; (c) is rightfully received by
the receiving party without an express obligation of confidence; (d) is
documented by contemporaneous, written records to have been independently
developed by personnel of either party without use of CONFIDENTIAL
INFORMATION provided by the other; or (e) is disclosed pursuant to any
judicial or government request, requirement or order, provided that the
disclosing party takes reasonable steps to provide the other party with
sufficient prior notice in order to allow the other party to contest such
request, requirement or order. The recipient of CONFIDENTIAL INFORMATION
will exert its reasonable best efforts to protect the confidential nature of
the information and will not disclose it to any third party without
authorization from the other party. This provision shall remain in effect
for five (5) years following disclosure of any CONFIDENTIAL INFORMATION
except in the case of Source Code which will be protected in accordance with
Article 17 of this Agreement. Duke recognizes the need of the Company to
provide its customers, dealers, agents and OEM's with sufficient
documentation and information to support training, operation, development,
marketing, selling and maintenance of the Licensed Products, and Licensee
shall be free to provide CONFIDENTIAL INFORMATION, except Source Code, for
such purposes after entering into a written confidentiality agreement with
the third party containing terms at least as restrictive as those in this
provision. Duke acknowledges that Licensed Software and the user and
maintenance instructions for the Licensed Software are not CONFIDENTIAL
INFORMATION except for those portions of the Documentation that Duke has
explicitly indicated to be Confidential.
17. Confidentiality of Source Code. Licensee acknowledges Duke's claim that the
Source Code is a valuable confidential property of Duke and is an
unpublished works on which Duke holds the sole and exclusive copyright.
Licensee agrees to maintain and protect the confidentiality of the Source
Code and not to disclose it or use it for any purpose not contemplated by
this Agreement. Licensee agrees to formulate and adopt appropriate
safeguards, in light of its own operating activities, including, but not
limited to, a) limiting access to only those employees actively involved in
making Updates or Enhancements to the Licensed Software as allowed by this
Agreement, b) making no more copies of the source code than strictly
necessary for such activities, c) maintaining documentation of those who
have access to the source code, d) not using the source code for any purpose
other than making Updates or Enhancements for incorporation into Licensed
Products as allowed by this Agreement, and e) instituting such other
measures as Licensee would take to protect it's own proprietary information.
Notwithstanding the provisions of Article 3 of this Agreement,
3
Licensee may, on a need-to-know basis and only as necessary for Licensee's
internal development purposes or as may be required for regulatory approval
for Licensed Products, disclose portions of the Source Code to its
consultants who have entered into written confidentiality agreements with
Licensee containing provisions at least as restrictive as those in this
Agreement. Licensee shall immediately notify Duke of any information which
comes to its attention which indicates that there has been any loss of
confidentiality of the Source Code and immediately take steps to rectify
such loss.
18. Copyright Notices. Licensee shall include Duke's copyright, and
confidentiality notices on all of its copies of the Licensed Software and
Source Code, and on all tangible media, such as tapes, disks, or diskettes,
upon which such copies are stored, in a manner consistent with notices on
materials received from Duke. Licensee shall include appropriate notices on
Licensed Products to protect the copyright in the Licensed Software
incorporated therein.
19. Installation, Maintenance and Training. Duke agrees to provide reasonable
advice to Licensee on the installation, maintenance and operation of the
Licensed Software, and on the structure of the Source Code. Duke will have
no obligation to provide direct user support, training or maintenance for
the Licensed Software or Licensed Products, or to provide any programming
services to make Updates or Enhancements to the Licensed Software.
20. Warranty and Limitations.
a) Licensed Software and Documentation. Licensee acknowledges that it has
received the Licensed Software, Server Software, and Documentation (not
including the Source Code), found it to be acceptable, and agrees not to
make any claims against Duke based upon the performance of the Licensed
Software, Server Software, or adequacy of the Documentation.
b) Source Code. Duke warrants that the Source Code to be delivered to
Licensee will include code necessary to compile and produce the Licensed
Software.
c) Licensee's Remedy. In the event that the Source Code fails to perform as
warranted, as Licensee's sole and exclusive remedy, Duke shall, within a
reasonable time, provide all reasonable programming services to
incorporate any missing or defective functions.
d) Warranty Period. This warranty shall be effective for the term of six (6)
months after the date of this Agreement ("Warranty Period"). All claims
must be made by Licensee within this Warranty Period.
e) Conditions Voiding Warranty. This warranty shall apply only to Source
Code that has not been modified by Licensee, and shall not apply to
Updates or Enhancements whether made by Licensee or Duke.
f) LIMITATIONS OF WARRANTY. THE FOREGOING WARRANTY IS THE ONLY WARRANTY MADE
BY DUKE. ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, BUT NOT
LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, ARE EXPRESSLY DISCLAIMED. Duke does not warrant the
usefulness, accuracy, or safety of the Licensed Software. Duke represents
that to the best of its knowledge as of the date of this Agreement that
the Software and technical information provided therewith does not
infringe rights of third parties.
21. Indemnification and Insurance.
a) Licensee agrees to indemnify, hold harmless and defend Duke, its
officers, trustees, employees, and agents, against any and all claims,
suits, losses, damages, costs, fees, and expenses asserted by third
parties, both government and non-government, resulting from or arising
out of Licensee's use of the Licensed Software or Licensee's products
incorporating the Licensed Software. Notwithstanding the foregoing, the
Licensee shall not be responsible for the negligence or intentional
wrongdoing of Duke, or for claims based upon copyright or patent
infringement by the Licensed Software.
b) Licensee shall maintain in force at its sole cost and expense, with
reputable insurance companies, general liability insurance and products
liability insurance coverage in an amount reasonably sufficient
4
to protect against liability under this provision. Duke shall have the
right to ascertain from time to time that such coverage exists, such
right to be exercised in a reasonable manner.
c) Duke shall have no obligation, express or implied, to supervise, monitor,
review or otherwise assume responsibility for the production,
manufacture, testing, marketing or sale of any product based upon the
Licensed Software, and Duke shall have no liability whatsoever to
Licensee or any third parties for or on account of any injury, loss, or
damage, of any kind or nature, sustained by, or any damage assessed or
asserted against, or any other liability incurred by or imposed upon
Licensee or any other person or entity, arising out of or in connection
with or resulting from:
i) the production, use, or sale of any product based upon or
incorporating the Licensed Software;
ii) the use of any Licensed Software, Server Software, Source Code, or
Documentation; or
iii) any advertising or other promotional activities with respect to any
of the foregoing.
Notwithstanding the foregoing, the Licensee shall not be responsible for
the negligence or intentional wrongdoing of Duke, or for claims based
upon copyright or patent infringement by the Licensed Software.
22. Use of Name. The Licensee will not use Duke's name or the name of Duke's
employees in advertising or publicity without Duke's prior written consent,
such consent not to be unreasonably withheld, such as in regulatory
disclosure requirements for the Licensee. The Licensee will not represent
that any product is endorsed by Duke.
23. Reserved Rights. Duke reserves the right to use the Licensed Software and
Updates and Enhancements created by Duke for its own teaching, research, and
clinical purposes, and to grant licenses to third parties. Duke reserves the
full right to decide any matters regarding publication of results generated
by research conducted at Duke.
24. Termination. The Licensee may terminate this license by giving Duke a ninety
(90) day notice. Duke may terminate only for cause. In the event Licensee
breaches any of the material terms of this Agreement including those of
Confidentiality, Duke may, at any time thereafter, give written notice of
the breach to Licensee, and demand that the same be cured. In the event that
such breach is not cured within ninety (90) days after notice, this
Agreement shall terminate after a Transition Period. Notwithstanding the
foregoing, in the event Licensee breaches any of its material obligations
regarding protection of the Source Code, Duke, in addition to all other
legal remedies available, shall have the right to give immediate notice of
termination which shall be effective after a Transition Period. In the event
of termination due to breach by Licensee, Duke shall grant Licensee a six
month "Termination Period" during which Licensee's rights under this
agreement will continue for the purpose of allowing Licensee to seek a
replacement for the Licensed Software and to transition its customer base to
a new product. This Agreement shall terminate immediately after the
Termination Period. Not withstanding the foregoing, this Agreement shall
immediately terminate upon the dissolution or liquidation of Licensee, or if
Licensee shall cease to exist as an active business except in connection
with a business combination of Licensee and assignment of this Agreement in
accordance with Article 26 of this Agreement.
25. Events Upon Termination. Upon the termination of this Agreement, Licensee
agrees to immediately terminate its use of the Licensed Software, Server
Software and Documentation, and to return to Duke all copies of the Source
Code, Server Software and Documentation. Licensee shall thereafter make no
further use of the Licensed Software, Server Software, Documentation, or
Source Code. Notwithstanding the foregoing, Termination shall not affect the
rights of Licensee's customers to continue to use Licensed Software
incorporated into Licensed Products sold or licensed by Licensee prior to
the date of Termination. Licensee may retain one copy of the Licensed
Software and Documentation related thereto for the sole purpose of providing
support to these customers. Termination of this Agreement shall not relieve
either party of the obligations arising hereunder before termination,
including the responsibility for paying previously accrued licensee fees and
the responsibility for not disclosing the Source Code or Confidential
Information.
26. Assignment. This Agreement may not be assigned by Licensee to any other
person, firm, or corporation without the express written approval of Duke
which will not be unreasonably withheld. Notwithstanding the
5
foregoing, Licensee may assign this Agreement to it's wholly owned
subsidiaries or in connection with a business combination of the Licensee by
or with a third party whether by merger, consolidation, sale of assets, or
otherwise, without consent of Duke. Subject to the foregoing, this Agreement
will inure to the benefit of and be binding upon the successors and assigns
of the parties.
27. Exportation of Technical Information. This license agreement is subject to
all of the United States laws and regulations controlling the export of
technical data, computer software, laboratory prototypes and other
commodities and technology and Licensee shall be responsible for adhering to
all such laws and regulations.
28. Entire Agreement. The parties have read this Agreement and agree to be bound
by its terms, and further agree that it constitutes the entire and exclusive
agreement of the parties and supersedes all previous communications,
representations, or agreements, either oral or written, between them. No
representations or statements of any kind made by any representative of Duke
which are not stated herein shall be binding on Duke.
29. All Amendments in Writing. Any modification or addition to any provision of
this Agreement must be agreed to in writing by a duly authorized
representative of each party.
30. Governing Law. This Agreement will be governed by and construed in
accordance with the laws of the State of North Carolina.
WHEREFORE, the parties hereto have authorized their officers or representatives
to execute this agreement as of the date and year first above written.
DUKE UNIVERSITY LICENSEE: Vital Images, Inc.
By:/S/ XXXXXX X. XXXXX By:/S/ XXXXXX X. XXXXX
Xxxxxx X. Xxxxx, Ph.D. Xxxxxx Xxxxx
Associate Vice Chancellor President
Director, Office of Science
and Technology
6
EXHIBIT A: DICOM CLIENT LIBRARY
The Client DICOM Library consists of a group of routines available to
application programmers. It provides the functions needed to manage receipt of
certain classes of medical images across a TCP/IP network. The client library
supports the ability to query and retrieve images and associated information
(Query/Retrieve) from a DICOM server. It also provides a means of storing images
from a remote server using the move functions, as well as basic DICOM print
functions as outlined below. Only the basic DICOM features needed to provide the
conformance as outlined below are included as licensed software.
The DICOM client library provides support for the following DICOM V3.0 SOP
Classes as a SCP (due to the support of the C-GET service):
----------------------------------------------------- --------------------------
SOP Class Name SOP Class UID
----------------------------------------------------- --------------------------
Computed Radiography Image Storage SOP Class 1.2.840.10008.5.4.1.1.1
----------------------------------------------------- --------------------------
CT Image Storage SOP Class 1.2.840.10008.5.4.1.1.2
----------------------------------------------------- --------------------------
MR Image Storage SOP Class 1.2.840.10008.5.4.1.1.4
----------------------------------------------------- --------------------------
US Image Storage SOP Class 1.2.840.10008.5.4.1.1.6
----------------------------------------------------- --------------------------
Secondary Capture Image Storage 1.2.840.10008.5.4.1.1.7
----------------------------------------------------- --------------------------
The DICOM client library provides support for the following SOP Classes as a
SCU:
------------------------------------------------------------ ------------------------------
SOP Class Name SOP Class UID
------------------------------------------------------------ ------------------------------
Patient Root Query/Retrieve Information Model - FIND 1.2.840.10008.5.1.4.1.2.2.1
------------------------------------------------------------ ------------------------------
Patient Root Query/Retrieve Information Model - GET 1.2.840.10008.5.1.4.1.2.2.3
------------------------------------------------------------ ------------------------------
Basic Grayscale Print Management Meta SOP Class 1.2.840.10008.5.1.19
------------------------------------------------------------ ------------------------------
Patient Root Query/Retrieve Information Model - MOVE 1.2.840.10008.5.1.4.1.2.2.2
------------------------------------------------------------ ------------------------------
The DICOM client library supports the following presentation contexts:
----------------------------------------------------------------------------------------------------------------------
Presentation Context Table
--------------------------------------------------- ------------------------------------------- -------- -------------
Abstract Syntax Transfer Syntax
--------------------------------------------------- ------------------------------------------- Extended
Name UID Name UID Role Negotiation
--------------------- ----------------------------- --------------------- --------------------- ------ -------------
Study Root 1.2.840.10008.5.1.4.1.2.2.1 DICOM Implicit VR 1.2.840.10008.1.2 SCU None
FIND Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
Study Root 1.2.840.10008.5.1.4.1.2.2.3 DICOM Implicit VR 1.2.840.10008.1.2 SCU None
GET Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
Verification 1.2.840.10008.1.1 DICOM Implicit VR 1.2.840.10008.1.2 SCU None
Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
CR Image 1.2.840.10008.5.1.4.1.1.1 DICOM Implicit VR 1.2.840.10008.1.2 SCP See Note+
Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
CT Image 1.2.840.10008.5.1.4.1.1.2 DICOM Implicit VR 1.2.840.10008.1.2 SCP See Note+
Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
MR Image 1.2.840.10008.5.1.4.1.1.4 DICOM Implicit VR 1.2.840.10008.1.2 SCP See Note+
Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
US Image 1.2.840.10008.5.1.4.1.1.6 DICOM Implicit VR 1.2.840.10008.1.2 SCP See Note+
Little Endican
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
Secondary Capture 1.2.840.10008.5.1.4.1.1.7 DICOM Implicit VR 1.2.840.10008.1.2 SCP See Note+
Little Endian
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
Basic Grayscale 1.2.840.10008.5.1.19 DICOM Implicit VR 1.2.840.10008.1.2 SCU None
Print Management Little Endian
Meta SOP Class
--------------------- ----------------------------- --------------------- --------------------- -------- -------------
+Note: SCU/SCP Role Negotiation is required due to the support of the C-GET
Service
7
