Exhibit 10.17
EXECUTABLE COPY
LICENSE AGREEMENT*
This Agreement is made this fourteenth day of July, 2000 (the "Effective Date"),
by and between Ford Motor Company, a Delaware Corporation having its principle
place of business at Xxx Xxxxxxxx Xxxx, Xxxxxxxx, XX 000000, (hereinafter
"Ford") and Vastera Solution Services Corporation, a Delaware corporation having
a principle place of business at 00000 Xxxxxxxx Xxxxx, Xxxxxx, XX 00000
(hereinafter "Vastera").
WHEREAS, Ford has developed and owns certain Information Technology that it uses
in its internal operations concerning the import and export trade management
portion of its business.
WHEREAS, Ford and Vastera are entering into another agreement, contemporaneously
herewith, in which Vastera will convey to Ford a certain equity share in
Vastera's business (the "Stock Transfer Agreement").
WHEREAS, Ford and Vastera are entering into this Agreement in order to convey
sufficient rights in certain Ford-owned Information Technology to allow Vastera
to conduct Vastera's business and to make improvements in such Information
Technology.
NOW, THEREFORE, for and in consideration of the agreements set forth below,
Vastera and Ford agree as follows:
1. DEFINITIONS.
"Information Technology" means the computer programs and systems listed in
Schedule A (including any associated files, documentation and data, to the
extent such data is not proprietary or unique to Ford's business) and any
modifications or Derivative Works based upon any such program, system, file,
documentation or data.
"Ford's Intellectual Property" means know-how or inventions held as trade
secrets; inventions for which applications for patents are filed in any country;
patented inventions; writings, data and software and any other works of
authorship that are protectable by trade secrets and/or copyrights and embodied
in Information Technology.
"Derivative Work" means a work of authorship based on one or more preexisting
works, including, without limitation, a translation, condensation,
transformation, expansion or adaptation, which, if prepared without
authorization of the owner of the copyright of such preexisting work, would
constitute a copyright infringement. The term "Derivative Work" does not include
the preexisting work upon which the Derivative Work is based.
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* Portions of this document have been omitted, with the precise position of
these omissions marked with an asterisk, pursuant to a request for confidential
treatment and such omitted portions have been filed separately with the U.S.
Securities and Exchange Commission.
"HSR Act" means the Xxxx-Xxxxx-Xxxxxx Antitrust Improvements Act of 1976, as
amended, and the related regulations and published interpretations.
2. LICENSE.
In consideration of the equity share to be provided to Ford under the Stock
Transfer Agreement executed contemporaneously herewith, Ford hereby grants to
Vastera a worldwide, nonexclusive, permanent, personal, nontransferable license
under Ford's Intellectual Property with rights to use, reproduce, modify and
prepare Derivative Works based upon Information Technology for the sole purpose
of supporting Vastera's business of providing import and export trade management
services to Ford, subsidiaries of Ford, and Vastera's other customers.
3. OWNERSHIP.
Ford represents either that it owns all rights, title and interest in
Information Technology and all copies thereof, or that some rights in
Information Technology are owned by one or more third party and Ford has the
right to grant the rights granted herein. Vastera agrees that it will not make
any claim of ownership to any right, title or interest to Ford's Intellectual
Property, Information Technology or copies thereof contrary to Ford's or such
third party's claim of ownership.
4. ASSIGNMENT.
Neither this Agreement nor any rights granted hereunder, in whole or in part
shall be assignable or otherwise transferable by Vastera, except that Vastera
may assign this Agreement (including all rights granted hereunder) without the
consent of Ford to an entity that acquires all, or substantially all, of the
business of the Vastera, so long as (i) such acquiring entity is not a
competitor of Ford or Ford Subsidiaries and (ii) such acquiring entity agrees to
utilize the rights granted hereunder only in support of Ford and Ford Subsidiary
operations. Except as provided in this Section 4, nothing in this Agreement
grants to Vastera the right to assign, sell, lease, loan or otherwise transfer
Information Technology in whole or in part to a third party.
5. MAINTENANCE.
Ford shall provide Information Technology maintenance support in connection with
this Agreement as further described in Schedule A.
6. FORD'S IP WARRANTY/INDEMNITY.
(a) Ford warrants that the transfer to Vastera and Vastera's licensed use of
Information Technology, in its original form as of the Effective Date, will not
infringe any copyrights or trade secrets of any other entity. Ford will
indemnify and defend Vastera from any claim, liability and expense, including
reasonable attorneys' fees, arising out of any breach of the foregoing warranty,
provided that Vastera notifies Ford in a timely fashion of such claim. In the
event a
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claim of infringement is asserted or Ford has reason to believe such a claim may
be asserted, Ford may replace or arrange to modify the Information Technology to
make it non-infringing, or Ford may procure at its expense a license for Vastera
to use the rights allegedly infringed.
(b) Ford represents that it has no knowledge of any threat or allegation that
Information Technology infringes or may infringe the intellectual property
rights of any third party.
(c) Ford will indemnify Vastera against any claim, liability, and expense,
including reasonable attorneys' fees, arising out of and associated with a final
judgment of infringement by Vastera of any third party patents that results from
Vastera's licensed use of Information Technology, provided that such indemnity
is subject to the following conditions ("Patent Indemnity"):
(i) Patent Indemnity applies only to the infringement claims brought
against Vastera for patents that were issued on or before the Effective
Date;
(ii) Ford's obligations under the Patent Indemnity do not apply to
the extent that the patent infringement by Vastera is attributable to
Vastera's use of Derivative Works;
(iii) Ford's aggregate liability in
connection with the Patent Indemnity is limited to *;
(iv) Ford's maximum
aggregate liability in connection with the Patent Indemnity shall not
exceed *; and
(v) Ford shall have no obligation under the Patent Indemnity
for any claims brought against Vastera after the * anniversary of the
Effective Date.
(d) In the event a claim that Vastera's use of Information Technology
infringes a third party's patent commences in any court against Vastera during
the period of Ford's obligations under the Patent Indemnity, or Ford has reason
to believe such a claim may be asserted, Ford may replace or arrange to modify
the Information Technology to make it non-infringing, or Ford may procure at its
expense a license for Vastera to use the rights allegedly infringed.
(e) Ford shall be entitled (but is not required) to participate in Vastera's
defense of any patent infringement-related claim against Vastera in which the
Patent Indemnity applies, and to employ counsel at Ford's expense to assist in
the handling of such claims. Vastera shall cooperate with Ford in taking any
reasonable actions that would minimize Ford's liability associated with the
Patent Indemnity (e.g., participation in settlement negotiations, etc.). Vastera
will not compromise or settle any patent infringement-related claims in which
the Patent Indemnity applies without the prior written consent of Ford.
(f) Until the * anniversary of the Effective Date, Vastera shall promptly
notify Ford in writing of any actual or potential patent infringement claims
that arise or may be reasonably expected to arise in connection with Vastera's
use of Information Technology.
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* This portion of the document has been omitted pursuant to a request for
confidential treatment and such portion has been filed separately with the U.S.
Securities and Exchange Commission.
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(g) *. Following such disclosure, Vastera shall cooperate with Ford in the
formulation and execution of a joint strategy to address any potential patent
infringement issues related to Vastera's use of Information Technology.
7. WARRANTY DISCLAIMER AND LIMITATION OF LIABILITY.
(a) EXCEPT TO THE EXTENT OF THE REPRESENTATION AND WARRANTY MADE
ABOVE, FORD MAKES NO OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS
OR IMPLIED. BY WAY OF EXAMPLE BUT NOT OF LIMITATION, FORD MAKES NO
REPRESENTATIONS OR WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
ANY PARTICULAR PURPOSE. FORD SHALL IN NO EVENT BE LIABLE TO
VASTERA, ITS SUCCESSORS, OR A THIRD PARTY FOR ANY DAMAGES, WHETHER
DIRECT OR INDIRECT, SPECIAL OR GENERAL, CONSEQUENTIAL OR
INCIDENTAL, ARISING FROM ANY LOSS CLAIMED AS A RESULT OF VASTERA'S
USE OF INFORMATION TECHNOLOGY.
(b) FORD MAKES NO WARRANTY OR REPRESENTATION THAT INFORMATION
TECHNOLOGY CAN BE USED FOR ANY PARTICULAR FUNCTION OR THAT VASTERA
HAS THE ABILITY TO USE IT. FORD ASSUMES NO RESPONSIBILITY FOR THE
SAFETY, QUALITY, DESIGN, SPECIFICATIONS, COMPLETENESS, ACCURACY OR
OTHER CHARACTERISTICS OF THE PERFORMANCE, OUTPUT OR END PRODUCT
RESULTING FROM THE USE OF INFORMATION TECHNOLOGY. VASTERA'S USE OF
THE LICENSED SOFTWARE WILL NOT DIMINISH VASTERA'S OBLIGATIONS OR
MITIGATE ANY FAILURES TO PERFORM SPECIFIC SERVICES UNDER ANY
PURCHASE ORDER CONTRACTS ISSUED TO VASTERA BY FORD.
(c) EXCEPT TO THE EXTENT OF THE REPRESENTATION, WARRANTY AND INDEMNITY
PROVIDED ABOVE, NOTHING CONTAINED HEREIN SHALL BE CONSTRUED AS
CONFERRING BY IMPLICATION, ESTOPPEL OR OTHERWISE THE
INDEMNIFICATION OF VASTERA BY FORD AGAINST ANY CLAIM OF
INFRINGEMENT OF OTHER THIRD PARTY INTELLECTUAL PROPERTY RIGHTS,
WHETHER OR NOT THE EXERCISE OF ANY RIGHT GRANTED HEREIN
NECESSARILY EMPLOYS OR REQUIRES THE PRACTICE OF ANY SUCH EXISTING
OR SUBSEQUENTLY CREATED THIRD PARTY INTELLECTUAL PROPERTY RIGHTS.
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* This portion of the document has been omitted pursuant to a request for
confidential treatment and such portion has been filed separately with the U.S.
Securities and Exchange Commission.
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8. VASTERA INDEMNITY.
Vastera shall indemnify, defend and otherwise hold Ford harmless against any and
all claims brought by any third party against Ford by reason of a failure of
Vastera 's services * and Vastera shall be responsible for * in assisting
Vastera in defending or settling any such claim.
9. INDEMNIFICATION PROCEDURES.
With respect to a party's indemnity obligations hereunder with respect to
third-party claims, the following procedures shall apply:
(a) NOTICE. Promptly after receipt by any entity entitled to
indemnification hereunder of notice of the commencement or
threatened commencement of any civil, criminal, administrative, or
investigative action or proceeding involving a claim in respect of
which the indemnitee will seek indemnification pursuant to the
terms and conditions herein, the indemnitee shall notify the
indemnitor of such claim in writing. No failure to so notify an
indemnitor shall relieve it of its obligations under this
Agreement except to the extent that it can demonstrate damages
attributable to such failure. Within fifteen (15) days following
receipt of written notice from the indemnitee relating to any
claim, but no later than ten (10) days before the date on which
any response to a complaint or summons is due, the indemnitor
shall notify the indemnitee in writing if the indemnitor
acknowledges its responsibilities and obligations with respect to
such indemnification and elects to assume control of the defense
and settlement of that claim (a "Notice of Election").
(b) PROCEDURE FOLLOWING NOTICE OF ELECTION. If the indemnitor delivers
a Notice of Election relating to any claim within the required
notice period, the indemnitor shall be entitled to have sole
control over the defense and all negotiations for the compromise
or settlement of such claim; provided that (i) the indemnitee
shall be entitled to participate in the defense of such claim and
to employ counsel at its own expense to assist in the handling of
such claim, and (ii) the indemnitor shall obtain the prior written
approval of the indemnitee before entering into any settlement of
such claim or ceasing to defend against such claim. The indemnitor
shall not be required to indemnify the indemnitee for any amount
paid or payable by the indemnitee in the settlement of any claim
for which the indemnitor has delivered a timely Notice of Election
if such amount was agreed to without the written consent of the
indemnitor.
(c) PROCEDURE WHERE NO NOTICE OF ELECTION IS DELIVERED. If the
indemnitor does not deliver a Notice of Election relating to any
claim within the required notice period, the indemnitee shall have
the right to defend the claim in such manner as
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* This portion of the document has been omitted pursuant to a request for
confidential treatment and such portion has been filed separately with the U.S.
Securities and Exchange Commission.
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it may deem appropriate, at the cost and expense of the indemnitor.
The indemnitor shall promptly reimburse the indemnitee for all such
costs and expenses.
10. NO TRADEMARK LICENSE
No license is granted to Vastera under this Agreement, by implication or
otherwise, that would allow Vastera to use any existing or future trademark of
Ford or of any member of the Ford Group.
11. DISPUTE RESOLUTION.
If a material breach occurs or a dispute arises between the parties relating to
this Agreement, the following procedure shall be implemented before either party
pursues other available remedies, except that either party may seek injunctive
relief from a court where appropriate in order to maintain the status quo while
this procedure is being followed:
(a) The parties shall hold a meeting promptly, attended by persons
with decision-making authority regarding the dispute, to attempt
in good faith to negotiate a resolution of the dispute; provided,
however, that no such meeting shall be deemed to vitiate or reduce
the obligations and liabilities of the parties hereunder or be
deemed a waiver by a party hereto of any remedies to which such
party would otherwise be entitled hereunder.
(b) If within thirty (30) days after such meeting the parties have not
succeeded in negotiating a resolution of the dispute, they agree
to submit the dispute to mediation in accordance with the then
current Model Procedure for Mediation of Business Disputes of the
Center for Public Resources and to bear equally the costs of the
mediation.
(c) The parties will jointly appoint a mutually acceptable mediator,
seeking assistance in such regard from the Center for Public
Resources if they have been unable to agree upon such appointment
within twenty (20) days from the conclusion of the negotiation
period.
(d) The parties agree to participate in good faith in the mediation
and negotiations related thereto for a period of thirty (30) days.
If the parties are not successful in resolving the dispute through
the mediation, then the parties agree to submit the matter to
binding arbitration or a private adjudicator.
(e) Mediation or arbitration shall take place in Pittsburgh,
Pennsylvania unless otherwise agreed by the parties. Equitable
remedies shall be available in any arbitration. Punitive damages
shall not be awarded. This Section is subject to the Federal
Arbitration Act, 9 U.S.C.A. Section 1 ET SEQ.
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(f) In the event of arbitration, the parties agree that the award of
the arbitrator shall be (1) the sole and exclusive remedy between
them regarding any claims, counterclaims, or issues presented to
the arbitrator; (2) final and subject to no judicial review; and
(3) made and shall promptly be payable in U.S. dollars free of any
tax, deduction, or offset. The parties further agree that any
costs, fees, or taxes incident to enforcing the award shall, to
the maximum extent permitted by law, be charged against the party
resisting such enforcement. The parties hereto agree that judgment
on the arbitration award may be entered and enforced in any court
of competent jurisdiction. Each party shall, except as otherwise
provided herein, be responsible for its own costs, including legal
fees, incurred in the course of any arbitration proceedings. The
fees of the arbitrator shall be divided evenly between the
parties.
12. GENERAL.
12.1 FORCE MAJEURE
Either party's delay or failure to perform (except for a party's payment
obligation) shall be excused for so long as, and to the extent that, it is
prevented from performing any of its obligations under this Agreement, in whole
or in part, as a result of delays caused by fire, flood, earthquake, elements of
nature or acts of God, riots, civil disorders, rebellions or revolutions in any
country, or any other cause beyond the reasonable control of such party (a
"Force Majeure Event"). The non-performing party shall promptly notify the other
party of the circumstances causing its delay or failure to perform and of its
plans and efforts to implement a workaround solution. For as long as such
circumstances prevail, the party whose performance is delayed or hindered shall
continue to use reasonable efforts to minimize the length and effect of delays
and shall re-commence performance after the cessation of the Force Majeure
Event.
12.2 BINDING NATURE
This Agreement shall be binding on the parties hereto and their respective
successors and assigns.
12.3 ENTIRE AGREEMENT; AMENDMENT; WAIVER
This Agreement, including the Schedules referred to herein and attached hereto
constitutes the entire agreement between the parties with respect to the subject
matter hereof and supersedes all prior agreements, whether written or oral, with
respect to the subject matter contained in this Agreement. No amendment or
modification or waiver of a breach of any term or condition of this Agreement
shall be valid unless set forth in a writing signed by each of the parties. The
failure of a party to enforce, or the delay by either of them in enforcing, any
of their respective rights under this Agreement will not be deemed a continuing
waiver or a modification of any rights hereunder and a party may, within the
time provided by applicable law and consistent with the provisions of this
Agreement, commence appropriate legal proceedings to enforce any or all of its
rights.
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12.4 NOTICES
All notices, requests, demands, and determinations under this Agreement (other
than routine operational communications), shall be in writing and shall be
deemed duly given (i) when delivered by hand, (ii) one (1) day after being given
to an express, overnight courier with a reliable system for tracking delivery,
or (iii) six (6) calendar days after the day of mailing, when mailed by United
States mail, registered or certified mail, return receipt requested, postage
prepaid, and addressed as follows:
In the case of Ford: Ford Motor Company
Xxx Xxxxxxxx Xxxx, 00xx Xxxxx
Xxxxxxxx, Xxxxxxxx 00000
ATTENTION: Vice President, Material Planning
and Logistics
With copies to: Ford Motor Company
Xxx Xxxxxxxx Xxxx
Xxxxxxxx, Xxxxxxxx 00000
ATTENTION: Assistant Tax Officer, Corporate
Finance
Ford Motor Company
Office of the General Counsel
Xxx Xxxxxxxx Xxxx, XXX Xxxxx 000
Xxxxxxxx, Xxxxxxxx 00000
Attention: Assistant General Counsel --
Transactions
In the case of Vastera: Vastera Solution Services Corporation
00000 Xxxxxxxx Xxxxx
Xxxxxx, Xxxxxxxx 00000-0000
ATTENTION: General Counsel
With copies to: Vastera Solution Services Corporation
00000 Xxxxxxxx Xxxxx
Xxxxxx, Xxxxxxxx 00000-0000
ATTENTION: Vastera designated Liaison
A party may from time to time change its address or designee for notification
purposes by giving the other prior written notice of the new address or designee
and the date upon which it will become effective.
12.5 COUNTERPARTS
This Agreement may be executed in several counterparts, all of which taken
together shall constitute one single agreement between the parties hereto.
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12.6 SEVERABILITY
In the event that any provision of this Agreement conflicts with the law under
which this Agreement is to be construed or if any such provision is held invalid
by an arbitrator or a court with jurisdiction over the parties, such provision
shall be deemed to be restated to reflect as nearly as possible the original
intentions of the parties in accordance with applicable law. The remainder of
this Agreement shall remain in full force and effect.
12.7 CONSENTS AND APPROVAL
Except where expressly provided as being in the discretion of a party, where
agreement, approval, acceptance, consent, or similar action by either party is
required under this Agreement, such action shall not be unreasonably delayed or
withheld.
12.8 SURVIVAL
Any provision of this Agreement which contemplates performance or observance
after any termination or expiration of this Agreement (in whole or in part)
shall survive any termination or expiration of this Agreement and continue in
full force and effect.
12.9 THIRD PARTY BENEFICIARIES
This Agreement is entered into solely between, and may be enforced only by, Ford
and Vastera. This Agreement shall not be deemed to create any rights in third
parties, including suppliers and customers of a party, or to create any
obligations of a party to any such third parties.
12.10 CHOICE OF LAW
This Agreement and performance under it shall be governed by and construed in
accordance with the laws of the State of Michigan without regard to its choice
of law principles.
12.11 NEGOTIATED TERMS
The parties agree that the terms and conditions of this Agreement are the result
of negotiations between the parties and that this Agreement shall not be
construed in favor of or against any party by reason of the extent to which any
party or its professional advisors participated in the preparation of this
Agreement.
12.12 TITLES AND HEADINGS
Titles and headings of Sections of this Agreement are for convenience only and
will not affect the construction of any provision of this Agreement.
12.13 NO INDIVIDUAL AUTHORITY
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Neither party shall, without the express, prior written consent of the other
party, take any action for or on behalf of or in the name of the other party,
assume, undertake, or enter into any commitment, debt, duty or obligation
binding upon the other party, except for actions taken pursuant to agreements
entered into between such party or its Affiliates and any other party.
12.14 PARENT GUARANTY
In connection with this Agreement, Ford and Vastera, Inc. have executed a Parent
Guaranty, attached hereto as Schedule B.
13. CONDITIONS PRECEDENT
13.1 HSR ACT
Both Parties' obligations under this Agreement are subject to the termination or
expiration of any HSR Act waiting period applicable to the Stock Transfer
Agreement among Ford, Vastera, and Vastera, Inc. (the "Stock Transfer
Agreement", dated as of the date hereof).
13.2 ACCOUNTING TREATMENT
Both Parties' obligations under this Agreement are subject to the receipt by
Vastera of written approval or concurrence from the United States Securities and
Exchange Commission of its treatment of the transactions contemplated by the
Stock Issuance Agreement as a business combination applying the purchase method
of accounting under generally accepted accounting principles, provided that the
foregoing condition precedent shall be deemed waived by both Parties in the
event that no such written approval or concurrence has been received by Vastera
within sixty (60) days of the Effective Date.
FORD MOTOR COMPANY VASTERA SOLUTION SERVICES
CORPORATION
By: /s/ Xxxxx Xxxxxx By: /s/ Arjun Rishi
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Printed: Printed:
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Title: Title:
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Date: Date:
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