LICENSE AGREEMENT
EXHIBIT
10.3
This
License Agreement (“Agreement”) is effective as of January 1, 2009 (the
“Effective Date”) by and between, on one hand, Primal Solutions, Inc, a Delaware
corporation (“Primal”), and Wireless Billing Systems, a California corporation
(“WBS”) (WBS and Primal, collectively, “Licensee”), and, on the other hand,
BillWise, Inc., a California corporation (“BillWise”) (BillWise and Licensee,
each a “Party” and collectively the “Parties”), with respect to the following
facts:
WHEREAS,
the Parties have entered into that certain Asset Purchase Agreement dated as of
the Effective Date (“APA”), pursuant to which BillWise is purchasing certain
assets from, and assuming certain obligations and liabilities of, Licensee,
including the Software and Trademarks;
WHEREAS,
Licensee requires a license back to the Software and Trademarks in order to
perform certain of its obligations under the APA and to continue to service its
customers (excluding the Transferred Customers) existing as of December 31, 2008
(“Customers”); and
WHEREAS,
BillWise is willing to grant Licensee such a license pursuant to the terms and
conditions of this Agreement.
NOW,
THEREFORE, based on the foregoing premises and in consideration of the promises
contained in this Agreement, the Parties agree as follows:
1. DEFINITIONS
. Capitalized
terms used in this Agreement have the meanings ascribed to them below or where
defined in this Agreement. Any capitalized terms used and not defined
in this Agreement have the meanings ascribed to such terms in the
APA.
1.1 “Affiliate” means, with
respect to an entity, any other entity that controls, is controlled by, or is
under common control with such entity. For the purposes of this
Agreement, the term “control” means the possession, directly or indirectly, of
the power to direct or cause the direction of the management and policies of any
such person whether through the ownership of voting securities, by contract, or
otherwise.
1.2 “Confidential Information”
means all information regarding a Party’s business or affairs, including,
without limitation, the Software, business concepts, processes, methods,
systems, know-how, devices, formulas, product specifications, marketing methods,
prices, customer lists, methods of operation, and other information, whether in
oral, written, or electronic form, that is either designated as confidential or
that is disclosed under circumstances such that a reasonable person would know
it is confidential. The terms, but not the existence, of this
Agreement are confidential. The following information will not be
deemed Confidential Information: (i) information that is or
becomes publicly available through no fault of the Party obligated to keep it
confidential; (ii) information with regard to the other Party that was
rightfully known by a Party prior to commencement of discussions regarding the
subject matter of the Agreement; (iii) information that was independently
developed by a Party without use of the Confidential Information; and (iv)
information rightfully disclosed to a Party by a third party without continuing
restrictions on its use or disclosure.
1.3 “including” means including,
without limitation.
1.4 “Intellectual Property Rights”
means any and all of the following (by whatever name or term known or
designated) now known or hereafter existing anywhere in the
world: (i) rights associated with works of authorship,
including, without limitation, all exclusive exploitation rights, copyrights,
moral rights, and mask work rights; (ii) trade secret rights and other
Confidential Information;
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(iii)
patents (including, without limitation, reissues, divisions, reexaminations,
extensions, provisionals, continuations, and continuations-in-part thereof),
designs, and other industrial property rights; (iv) source code, object
code, formulas, ideas, concepts, mask works, methods, know-how, processes,
devices, and the like, whether or not any of the foregoing are subject to
protection under law; (v) all registrations, applications, renewals,
extensions, continuations, divisions, reissues, and the like; and (vi) all
other intellectual property and proprietary rights of every kind and nature
whether arising by operation of law, contract, license, or otherwise, including
trademark, service xxxx, trade dress, and other marks based on designation of
source or origin.
1.5 “Software” means all of the
software transferred to BillWise pursuant to the APA (including Connect IXC,
Access IM, Connect RTR, IPC, WPM, Marketing Dashboard and Revenue Assurance
Suite), and any derivative works, modifications, or improvements thereof
produced by or on behalf of Licensee to the extent Licensee retains ownership
and has the right to transfer ownership thereof, in each case including all
associated source code, object code, documentation, and related Intellectual
Property Rights; provided that “Software,” for purposes of this Agreement, shall
not include Connect CCB, Communications Resources Manager (CRM), and
EBP&P.
1.6 “Trademarks” means the trademarks, service
marks, trade dress, and similar indicia that were transferred to BillWise
pursuant to the APA that are used to identify or distinguish the various
products associated with the Software.
1.7 “Use” means use, copy,
distribute, create derivative works from, modify, display, perform, transmit,
make, sublicense, offer to sublicense, import, maintain, and
improve.
2. LICENSE. Subject
to the terms and conditions of this Agreement, BillWise hereby grants Licensee a
worldwide, royalty free and fully-paid, irrevocable, and non-transferable right
and license, under all Intellectual Property Rights, to Use the Software and
Trademarks solely for the purposes of: (i) providing services as
necessary to support BillWise pursuant to the terms of the APA and as otherwise
requested by BillWise and (ii) while Licensee has outstanding contractual
obligations to Customers, providing its services to such Customers, including,
without limitation, Time-Warner Cable, Inc., and otherwise as necessary to
fulfill its obligations under its agreements with such Customers, as amended or
otherwise modified. Notwithstanding the foregoing, Licensee may not
sell or transfer any license to the Software except consistent with past
practices in the ordinary course of its business.
3. PROPRIETARY
RIGHTS.
3.1 Ownership of Intellectual
Property Rights. Except for the rights expressly granted under
this Agreement, BillWise will own all Intellectual Property Rights and all other
right, title, and interest in and to the Software and Trademarks. No
right or license will be implied by estoppel or otherwise, other than the rights
and licenses expressly granted in this Agreement, and all rights not
specifically granted to Licensee in this Agreement are reserved by
BillWise. BillWise owns all Intellectual Property Rights in and to
the Trademarks and Software, including, without limitation, any updates or
upgrades thereto provided by BillWise under this or any other
agreement. To the extent that Licensee retains ownership and has the
right to transfer ownership thereof, Licensee hereby assigns to BillWise
exclusive ownership of any derivative works, modifications, or improvements of
Software produced by or on behalf of Licensee, either separately or jointly with
others.
3.2 Quality
Control. BillWise acknowledges and agrees that it is familiar
with the quality of goods and services provided by Primal prior to the Effective
Date and such quality is acceptable with respect to goods and services bearing
the Trademarks. Primal shall use reasonable efforts to ensure that
the quality of the goods and services bearing the Trademarks remains equal to or
better than quality of
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goods and
services provided by Primal prior to the Effective Date. Primal shall
obtain BillWise’s prior written approval before using the Trademarks on any
newly created marketing materials.
3.3 Confidential
Information. Any Confidential Information of one Party
(hereinafter the “Disclosing Party”) received by the other Party (hereinafter
the “Receiving Party”) under this Agreement shall be used, disclosed, or copied,
only for the purposes of, and only in accordance with, this
Agreement. The Receiving Party shall use reasonable efforts to
prevent the unauthorized Use of the Disclosing Party’s Confidential Information;
provided, however, that a Party
may disclose the Confidential Information to its Affiliates and subcontractors
that: (i) have a need to know such Confidential Information for
purposes of carrying out their obligations under this Agreement but only to the
extent that such Confidential Information is needed to perform their obligations
under this Agreement and (ii) have agreed in writing in advance to be bound by a
written confidentiality agreement reasonably acceptable to the other
Party. The Receiving Party shall notify the Disclosing Party
immediately in the event of any unauthorized Use of any Confidential
Information. Further, either Party may disclose the terms of this
Agreement, subject to the execution of a confidentiality agreement, to its board
of directors or other similar governing body, its attorneys and accountants, and
potential acquisition partners or funding sources, and as required by law, rule,
regulation. Either Party shall have the right to disclose
Confidential Information as required by law or legal process or under the
applicable rules of a securities market or exchange; provided, however, that the
disclosing Party shall use reasonable efforts to give the other Party a
reasonable opportunity to intervene to prevent such disclosure or to obtain a
protective order, and that any Confidential Information so disclosed otherwise
remains subject to the confidentiality obligations set forth in this
Section.
4. EXCLUSION OF
DAMAGES. EXCEPT
AS MAY OTHERWISE BE PROVIDED IN THE APA, NEITHER PARTY SHALL BE LIABLE TO THE
OTHER PARTY OR ANY THIRD PARTY FOR ANY CONSEQUENTIAL, INDIRECT, SPECIAL,
PUNITIVE, INCIDENTAL OR SIMILAR DAMAGES, WHETHER FORESEEABLE OR UNFORESEEABLE
AND BASED ON ANY CAUSE OF ACTION, INCLUDING CLAIMS FOR LOSS OF GOODWILL OR LOST
PROFITS, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES
OCCURRING.
5. TERM AND
TERMINATION. This
Agreement will commence as of the Effective Date and will continue until
Licensee has fulfilled or been discharged of its obligations set forth in
Section 2 of this Agreement, whether under written agreements or
otherwise. The Parties acknowledge and agree that they otherwise
intend this Agreement to be non-terminable. If a Party breaches this
Agreement, the other Party will have no right to terminate this Agreement;
rather, its sole remedy will be to seek an injunction and damages as may be
available under applicable law. Section 3.3 of this Agreement shall
survive any termination of this Agreement until such time as the Confidential
Information becomes publicly available through no fault of the Receiving
Party.
6. GENERAL.
6.1 Entire
Agreement. This Agreement (and the Recitals, which are hereby
incorporated herein by this reference), and the APA, constitutes the entire
understanding and agreement, and supersedes any and all prior or contemporaneous
representations, understandings, and agreements between the Parties with respect
to the subject matter of this Agreement, all of which are hereby merged into
this Agreement. All amendments, supplements or modifications of this
Agreement must be in writing and executed by the Parties.
6.2 Independent
Parties. Nothing contained in this Agreement will be deemed to
create, or be construed as creating, a joint venture or partnership between the
Parties. Neither Party is, by virtue of this Agreement or otherwise,
authorized as an agent or legal representative of the other
Party. Neither Party to this Agreement is granted any right or
authority to assume or to create any obligation or
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responsibility,
express or implied, on behalf or in the name of the other Party, or to bind such
other Party in any manner.
6.3 No Third Party
Beneficiary. Nothing contained in this Agreement will be
deemed to create, or be construed as creating, any third party beneficiary right
of action upon any third party whatsoever.
6.4 Export
Regulations. Licensee shall not export, directly or
indirectly, any Software or other Confidential Information acquired under this
Agreement in violation of any applicable export and import laws and regulations
(including, without limitation, those of the United States).
6.5 Injunctive
Relief. Each Party agrees that if it breaches any of its
obligations with respect to the other Party’s Confidential Information or
infringes the other Party’s Intellectual Property Rights, it will cause the
other Party irreparable injury that cannot be readily remedied in monetary
damages in an action at law. Therefore, each Party agrees that the
other Party shall be entitled to obtain, on an expedited basis from any court of
competent jurisdiction, and without the requirement of the posting of a bond or
other security, immediate injunctive relief to enjoin any such breach or
prospective breach or any infringement or prospective
infringement. The foregoing will be in addition to, and not in lieu
of, such other remedies as either Party may otherwise have available to it under
applicable law.
6.6 Waiver. No
waiver of any provision of this Agreement, or any rights or obligations of
either Party under this Agreement, will be effective, except pursuant to a
written instrument signed by the Party waiving compliance, and any such waiver
will be effective only in the specific instance and for the specific purpose
stated in such writing.
6.7 Severability of
Provisions. In the event that any provision of this Agreement
is found invalid or unenforceable pursuant to judicial decree or decision, the
remainder of this Agreement will remain valid and enforceable according to its
terms.
6.8 Force
Majeure. If, by reason of any labor dispute, strike, lockout,
riot, war, act of terrorism, inability to obtain labor or materials, earthquake,
fire or other action of the elements, accident, governmental restriction,
appropriation or other cause beyond the control of a Party, either Party is
unable to perform in whole or in part its obligations as set forth in this
Agreement, then such Party shall be relieved of those obligations to the extent
it is so unable to perform and such inability to perform shall not make such
Party liable to the other Party. Neither Party shall be liable for
any loss, injury, delay, or damages suffered or incurred by the other Party due
to the above causes.
6.9 Binding Effect;
Assignment. This Agreement will be binding upon and will inure
to the benefit of the Parties and their respective heirs, representatives,
successors and permitted assigns. BillWise may freely assign this
Agreement without the prior written consent of the Licensee; Licensee may assign
this Agreement only upon the prior written consent of BillWise, such consent not
to be unreasonably withheld. If either Party subcontracts any of its
rights or obligations under this Agreement to any third party, such Party shall
remain fully responsible for the acts and omissions of its subcontractors and
for the performance of its obligations under this Agreement.
6.10 Forum, Governing Law and
Jurisdiction. The validity, construction, interpretation, and
legal effect of this Agreement will be governed by the laws of the State of
California (irrespective of its choice of law rules) and the United States of
America applicable to contracts entered into and performed entirely within the
State of California. Any action at law or in equity arising under or
in connection with this Agreement will be filed only in an appropriate State or
Federal Court located in Orange County,
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California. The
Parties hereby irrevocably consent and submit to the exclusive personal
jurisdiction of and venue in such courts for the purposes of litigating any such
action.
6.11 Notice. Any
notice given by either Party to the other shall be in writing and will be sent
by personal delivery, internationally recognized overnight courier or U.S. Mail,
certified, postage prepaid, return receipt requested, to the Parties at their
respective addresses set forth in the APA, or such other address(es) as
specified in writing by such Party in accordance with this
Section. Notice will be effective when delivered or five (5) days
after it is sent, whichever is sooner.
6.12 Review of Counsel;
Construction. Each of the Parties acknowledges that it has had
the opportunity to have this Agreement reviewed by independent legal counsel of
its choice. The rule of construction that any ambiguity in an
agreement be construed against the drafter will not apply to this
Agreement. All references to periods of time reflect calendar
periods, unless expressly stated otherwise. The headings to Sections
of this Agreement are for convenience or reference only and do not form a part
of this Agreement and will not in any way affect its
interpretation.
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IN WITNESS WHEREOF, the Parties have
executed this Agreement as of the Effective Date.
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PRIMAL
SOLUTIONS, INC.
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BILLWISE,
INC.
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By: /s/ Xxxx X.
Xxxxxxx
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By: /s/ Xxxxxx X.
Xxxxxxx
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Name:
Xxxx X. Xxxxxxx
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Name:
Xxxxxx X. Xxxxxxx
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Title:
Authorized Person
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Title:
President
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WIRELESS
BILLING SYSTEMS
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By: /s/ Xxxx X.
Xxxxxxx
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Name:
Xxxx X. Xxxxxxx
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Title:
Authorized Person
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