VERTICAL MARKET
SOFTWARE DEVELOPMENT/LICENSING AGREEMENT
THIS AGREEMENT is made and entered into this 12th day of October, 1994,
between, Thinking Tools, Inc., a California Corporation, with a principal place
of business at Xxx Xxxxx Xxxxxxxx Xxxxx, Xxxxxxxx Xxx, Xxxxx 000, Xxxxxxxx, XX,
00000, ("Developer"), and Coopers & Xxxxxxx L.L.P., a Delaware limited liability
partnership with offices at 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx Xxxx, XX, 00000
("Licensee") who hereby agree as follows:
1. Introduction
Licensee is interested in securing Developer to create and
license to Licensee the Original Work described in Exhibit A attached hereto.
Developer is interested in developing the Original Work and licensing the same
to Licensee pursuant to the terms and for the purposes expressed in this
Agreement.
2. Definitions
(a) "Conversion": A version of a software program similar in
look, feel, use and play to an end user of the software program upon which it is
based, but which is a SKU other than the SKU of the software program.
(b) "Original Work": The work or product to be created by
Developer pursuant to this Agreement, and as generally defined in Exhibit A,
including the title of the work, executable software code (but excluding the
source code or any object modules), any end-user documentation, manuals,
artwork, promotional and other materials related to the same, except for any
end-user documentation, manuals, artwork, promotional and other materials
prepared by licensee or by third parties with licensee's assistance, all of
which shall be the property of the licensee or third party, as the case may be.
If Developer has performed for Licensee a design study, the term "Original Work"
shall further include the design study as developed by Developer. The term
Original Work shall also include any New Version, Translation, or Conversion to
the product created by Developer pursuant to this Agreement or any other
Agreement subsequently entered into between Developer and Licensee.
(c) "Derivative Work": Any product that is based on or derived
from the Original Work which contains code from the Original Work, or utilizes
any artwork from the Original Work, and in whatever medium incorporated.
Derivative Work shall include, in addition, any work or product considered
derivative pursuant to 17 U.S.C. Section 101 to the Original Work for purposes
of this Agreement. Notwithstanding the above, Derivative Work shall exclude any
work considered a part of the Original Work under this Agreement.
(d) "Licensee Material": All information and materials
provided to Developer by Licensee or Licensee's agents, during the course of the
development of the Original Work, including, but not limited to, comments,
design notes, images, likenesses, and the layout and design of any of Licensee's
facilities, plant, physical operations or other such properties of Licensee
included in the artwork of the Original Work.
(e) "New Version": An updated version of the Original
Work correcting for errors or incorporating minor improvements or modifications.
(f) "Point Of Contact": An individual appointed by Licensee,
and one appointed by Developer to facilitate the communication and exchange of
information between the parties. As of the date of this agreement, the Point Of
Contact individuals for Developer and Licensee are the individuals listed in
Exhibit A to this Agreement. All notices required under this Agreement, any
information to be exchanged, and all reports or comments concerning the Original
Work, including delivery of the Original Work itself, shall be through and to
the Point of Contact unless otherwise provided for herein.
(g) "Territory": The geographical area expressed in Exhibit A.
(h) "Translation": A version of a software program in a
language other than that of the original program (i.e., French, German,
English, etc.) but otherwise generally identical to the software program.
3. Grant of Rights
(a) Subject to the terms of this Agreement, Licensee hereby
commissions Developer to create the Original Work for the consideration provided
for herein and for the licensing of the same to Licensee for the Territory, on
the terms and for the uses specified in Exhibit A. Licensee understands that the
license of the Original Work to Licensee is non-transferable or assignable
except as provided in Exhibit A to this Agreement.
(b) In order to protect Licensee's Confidential Information
and trademarks/logo, Licensee hereby grants to Developer a fully paid up and
perpetual worldwide license for the use of Licensee's Confidential Information
and trademarks/logo solely for incorporation of the same into the Original Work
as licensed to Licensee. Licensee grants to Developer a fully paid up and
perpetual worldwide license to incorporate all other Licensee Material for use
in the Original Work and/or any Derivative Work.
(c) Title to the Original Work and any Derivative Work,
including all components thereto, shall vest and remain with Developer.
(d) Developer and Licensee agree that: (a) the copyright for
the P/Q Matrix, shown in Exhibit C, is jointly owned by Developer and Licensee;
(b) both Developer and Licensee have the right to use the P/Q Matrix for any
purpose; and (c) Developer and Licensee shall each be responsible for its use of
the P/Q Matrix.
4. Developer Obligations
(a) Developer shall assign technically competent software
personnel to the development of the Original Work, and agrees to use its best
efforts to develop and license the Original Work to Licensee as is provided for
in the Milestones To Completion provided for in
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Exhibit B to this Agreement. Due to the nature of custom programming of this
type, the Milestones provided for in Exhibit B are estimates only, and Developer
makes no guarantee that all or any of the Milestones will be met as originally
contemplated. If, however, Developer believes that a Milestone is not achievable
by Developer, Developer shall contact Licensee, in writing and to Licensee's
Point of Contact, and specify the Milestones which may not be achieved within
the schedule originally provided for or at all, the reason for the delay or
modification, and proposed remedial measures to mitigate the same. The parties
shall meet and confer on the development of new or additional Milestones, or for
the modification of the dates for existing Milestones, and as regards the
completion of the Original Work.
(b) If, in the development of the Original Work, Developer is
or becomes of the opinion that the Original Work is not possible as anticipated
by Licensee, Developer shall contact Licensee, in writing to Licensee's Point of
Contact, and provide to the same Developer's foundation for Developer's
conclusion concerning the feasibility of the Original Work, the modifications to
the Original Work necessary to render the same feasible and/or useful to
Licensee and any new or modified Milestone necessitated by the same. Developer
and Licensee shall meet and confer on the modifications proposed by Developer,
and to work in good faith to resolve the conceptual obstacles as presented. If,
however, Developer or Licensee in good faith believe these problems are not
surmountable, or the remedial measures necessary to resolve the same would
either render the Original Work unusable by Licensee or uneconomical for
Developer to develop, either may terminate this Agreement at such time. Upon
termination under this paragraph, only payments then due from Licensee shall be
and become immediately payable, however no unaccrued payments will be due
pursuant to this Agreement thereafter, and the license granted to Licensee
herein shall terminate. Upon termination of this Agreement under this paragraph,
all materials and software provided to or exchanged between the parties hereto
shall be resumed.
(c) Six-Month Maintenance and Updates. Developer agrees that
for a period of six-months following the date of acceptance, Developer shall, at
its expense, correct any errors in the Original Works which comes to its
attention that has a significant negative effect on the sales or perception of
the product as mutually agreed to by Developer and Licensee. These corrections
are limited to the functionality and features of the Original Work as described
in Exhibit A. Developer agrees to release a New Version of the Original Work
which includes any agreed to corrections and/or minor improvements within the
Six-Month Maintenance and Update period if requested by Licensee. At Licensee's
option and cost, Developer will place such portions of the source or object code
of which the Original Work is comprised, and a list of commercially available
third party software tools required, into a mutually agreeable escrow account
for the use of the same by Licensee solely for the support and maintenance of
the Original Work and solely in the event of Developer's inability to continue
providing such maintenance, support and update services.
(d) Delivery of Original Work. Delivery of all materials and
updates, including the Original Work itself, shall be made to Licensee, FOB
Developers principal place of business.
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5. Licensee Obligations
(a) Licensee understands that the Original Work is to be
designed to the specifications and with the data and other information to be
supplied by Licensee, and that Licensee's integral involvement is necessary to
the successful completion of the Original Work as called for herein.
(b) Licensee shall review the progress of the Original Work at
various stages of development of the same. Developer shall submit the Original
Work to Licensee at regular intervals for review and comment by Licensee, and
Licensee shall provide timely review responses, suggestions and objections to
Developer concerning the same. Licensee shall submit the response, suggestions
and objections, in writing, to Developer's Point of Contact, no greater than
fifteen (15) days after submission of the Original Work as then developed for
Licensee's review. Failure to respond to the submitted work, or any part
thereof, within the fifteen (15) day period (unless the same is extended by
mutual written agreement of the parties) shall be deemed acceptance of the same
as meeting Licensee's requirements.
(c) If at any time during the development of the Original Work
Licensee believes that, due to the modifications or additions made in the
revision then under consideration, the Original Work is or will not be of a
nature or quality reasonably required by Licensee, Licensee shall immediately
notify Developer in writing of the same, including a written detail of the
modifications necessary to cause the Original Work to be or become suitable. If
Developer is unable or unwilling to modify the same as requested, and an
irreconcilable conflict should arise, the parties shall submit the issue to
binding Arbitration under the rules of the American Arbitration Association
provided, however, that the arbitration panel selected shall include no less
than two individuals with significant experience in software development. The
decision of the arbitration panel as to how the issues or conflicts are to be
equitably addressed by the parties shall be final.
6. Copyright and Intellectual Property Interests
(a) Licensee agrees to take all actions and cooperate as is
necessary or reasonably requested of Licensee by Developer to secure, evidence
and protect Developer's ownership interest in the Original Work or any
Derivative Work, including the copyrightability and the vesting of any copyright
or tradename of the Original Work or any Derivative Work in Developer. Licensee
and Developer further agree to execute such documents as might be necessary to
carry out this provision.
(b) The name and logo of Developer, and appropriate
intellectual property notices, shall appear on the sign-on or initial screen of
the Original Work, and any documentation for the same, provided, however, that
the display of Developer's Logo and other notices shall in no event exceed the
prominence of Licensee's name or logo.
(c) Developer agrees to assign to Licensee the trade name
selected by Licensee for its use on the Original Work, and will take all action
and cooperate as is necessary or reasonably
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requested by Licensee to secure, evidence and protect Licensee's ownership
interest, including the copyright ability and the vesting of any copyright in
such trade name (provided such trade name is not then in use by Developer or any
of its affiliates).
7. Payments
(a) Payments. Licensee shall pay Developer the development
fees and/or royalties as provided for and in accordance with Exhibit B to this
Agreement. All payments shall be due within thirty (30) days of Developer's
invoice for the same. Payments shall be made directly to Developer's principal
place of business via certified, or registered US mail, return receipt
requested, wire transfer, DHL, UPS or Federal Express.
(b) Currency and Conversion. All payments made pursuant to
this Agreement shall be made in United States dollars. Where conversion from a
local currency to United States currency is necessary for payment, all royalties
and receipts for the period for which payment is made shall be converted as of
the exchange rate applicable as of the last day of the period to which payment
relates. Licensee agrees to bear any costs of conversion.
(c) Time is of the essence in all payments pursuant to this
Agreement, and any unpaid amounts not paid within ten days of the due date for
the same shall include a late payment penalty in the amount of five percent (5%)
of the amount unpaid and shall further bear interest of 1.5% per month,
compounded annually, on the unpaid balance.
8. Warranties and Indemnification
(a) Title. Developer warrants that the Original Work,
exclusive of Licensee Material, will be an original work of authorship and shall
incorporate only such software and artwork as is owned or licensed by Developer.
Developer warrants that Developer will have good and marketable title or license
to the Original Work, exclusive of Licensee Material, sufficient to license the
same to Licensee as provided for in this Agreement. Developer further warrants
that Developer has no knowledge of any fact or event which would preclude
Developer from entering into this Agreement or to carry out the obligations
contained herein.
(b) Developer makes no warranties with respect to the Original
Work, or any documentation thereof, either express or implied, including without
limitation any warranties as to the merchantability or fitness for a particular
purpose or quality thereof. Developer does not warrant, for example, that the
Original Work will be free of errors or that its use will be uninterrupted, nor
does Developer warrant that any data or calculation included in the Original
Work will be accurate or materially correct.
(c) Developer agrees to indemnify, defend and hold Licensee
harmless from any and all claims by subcontractors of Developer, and for
whatever reason, excluding, however, claims of or relating to the Licensee
Material.
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(d) Developer agrees to indemnify, defend and hold Licensee
harmless from any and all claims, and resulting losses, damages or expenses,
that the Original Work, the Derivative Work or the New Version infringe any U.S.
patents, copyrights or trade secrets, trademarks or similar proprietary rights
related to an item or component provided or work performed by the Developer,
provided that Licensee gives Developer prompt notice thereof. If any such item
or component thereof is in Developer's reasonable opinion likely to be held to
constitute an infringing product, Developer shall at its expense and option
either (i) procure for Licensee the right to use such item or component, (ii)
replace it with a non-infringing item, or, (iii) modify it in a manner
acceptable to Licensee to make it non-infringing.
(e) Licensee agrees to indemnify, defend and hold Developer
harmless from any and all claims, based upon products liability or strict
liability theories, by end users of the Original Work, or claims which are
predicated upon the use of the Original Work or the content of any Licensee
Material. The parties understand that the subject matter, accuracy and scope of
the Original Work is within the specific area of Licensee's expertise, and
Licensee is obligated under this Agreement to ensure the accuracy of the
Original Work in these particulars and to the extent feasible.
(f) Neither party shall be responsible to the other, under any
circumstances, for personal injury, consequential, punitive, lost profits or
other damages. The sole remedy of the parties for any breach of this Agreement,
but for the confidentiality and indemnification provisions hereof, shall be
limited to the consideration provided for herein, rescission of this Agreement
or injunctive relief, as is appropriate.
9. Term and Termination
(a) Term. The licenses granted herein shall be in
perpetuity.
(b) Effect of Termination.
(i) Developers Right to Terminate. Developer
shall have the right to terminate this Agreement if Licensee materially
defaults on any of its obligations under this Agreement unless, within thirty
(30) days after written notice of such default from Developer, Licensee takes
such steps as would be reasonably required to cure the default in a timely
fashion.
(ii) Licensee's Right to Terminate. Except as
provided for herein, Licensee shall have the right to terminate this Agreement
if Developer materially defaults on any of its obligations under this Agreement,
unless within thirty (30) days after written notice of such default Developer
takes such steps as would be reasonably required to cure the default in a timely
fashion.
(iii) Termination in Event of Bankruptcy. Either
party shall have the right immediately to terminate this Agreement if the other
party makes a general assignment for the benefit of creditors, suffers or
permits the appointment of a receiver for its business or assets, becomes
subject to any proceeding under any bankruptcy or insolvency law (which shall
not be
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dismissed within sixty (60) days from the filing of any petition in connection
therewith), whether domestic or foreign, or has wound up or liquidated,
voluntarily or otherwise.
10. Confidentiality
(a) Retention of Proprietary Rights in Confidential
Information. Each party may disclose to the other information concerning its
inventions, confidential information, trade secrets, and confidential know-how
("Confidential Information") to further the performance of this Agreement.
Except as provided for herein, all such Confidential Information disclosed
hereunder shall remain the sole property of the party disclosing the same, and
the receiving party shall have no interest or rights with respect thereto. The
source code listings and the supporting documentation for the Original Work, and
any documentation related thereto, are regarded as Confidential Information of
Developer, and are subject to this non-disclosure provision.
Notwithstanding the above, Confidential Information shall not
include, whether or not the same is marked as such or included on the
Non-Disclosure List, information or materials (i) which is known to the public
(ii) which is already known to the receiving party prior to its disclosure (iii)
which is lawfully received from third parties without obligations or
confidentiality or (iv) which is developed by the receiving part independently
of the information or materials received from the other party.
(b) Confidentiality. Each party agrees to maintain the
Confidential Information of the other in confidence and to the same extent that
it protects its own proprietary information in order to assure recognition and
continued protection of the status of such information as a trade secret or
confidential information, and further agrees to take all reasonable precautions
to prevent any unauthorized disclosure of such information. The obligation of
this paragraph shall survive the termination of this Agreement for whatever
reason.
11. Agreement not to Constitute Joint Venture
Nothing in this Agreement shall be construed as making either
Developer, or Licensee the agent of, or in joint venture with, the other for any
purposes.
12. Assignment
This Agreement and the rights and obligations hereunder shall
not be assigned in whole or in part by either party without the prior written
consent of the other, and any purported assignment without such written consent
shall be void and of no effect. Licensee understands that Developer may contract
with others to perform some or all or Developer's obligations hereunder, however
any such agreement shall not absolve Developer of its responsibilities under
this Agreement.
Notwithstanding the foregoing provision, Developer shall have
the right to assign its right to payments hereunder without Licensee's consent,
and either party may assign this
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Agreement without the other party's consent to any subsidiary or affiliate or to
a successor by reason of merger, consolidation or sale or exchange of assets or
other reorganization.
13. Notice
Any notice required or permitted to be given under this
Agreement will be given in writing to the Point of Contact at their respective
addresses as set forth in this Agreement. Notices will be deemed given on the
earlier of (1) the date when the same is actually received or (2) five (5) days
after mailing by certified or registered mail, return receipt requested, to the
address of the receiving party. Address and Point of Contact may be changed by
giving notice of the same pursuant to this paragraph.
14. Administrative Provisions
This Agreement represents the full and complete understanding
of every kind or nature whatsoever between the parties hereto concerning this
subject matter, may be executed in counterparts, and shall be construed in
accordance with the laws of the State of California. All amendments or
modifications to this Agreement shall be in writing and signed by all parties to
this Agreement. This Agreement is severable and the invalidity of any term of
condition shall not effect the validity of any other term or condition. The
covenants, conditions and obligations herein contained shall apply to and bind
any heirs, successors or assigns of the parties hereto.
Any delay or failure to enforce a provision of this Agreement
shall not be deemed to constitute a waiver of the same. This Agreement shall be
deemed executed in the County of Contra Costa, State of California, and any
dispute relating to this Agreement or its performance shall be resolved by
binding arbitration under the then existing rules of the American Arbitration
Association to be conducted in said County. The powers of the Arbitrator(s) in
such proceeding shall include the ability to grant injunctive relief as deemed
appropriate.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written.
[DEVELOPER] /s/ Xxxx Xxxxx LICENSEE /s/ Win Xxxxxxx
---------------- -----------------
Date: October 21, 1994 Date: October 25, 1994
By: Xxxx Xxxxx By: Win Xxxxxxx
Title: President Title: Principal
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EXHIBIT A
1. Description of Original Work: TeleSim
TeleSim is a computer software, game-like simulation of the
telecommunications market where the user creates and executes
product strategies for their telecom company while competing
with other telecom companies for market share, revenues,
profits and customer awareness.
2. Features and Function of the Original Work
The features and functions of TeleSim are expressed in the
beta release of TeleSim for NYNEX (Version 1.0).
3. License Territory
World-wide
4. Usage
TeleSim will be used to train the senior executives of the
telecommunications industry, giving them an awareness of the
nature of competing in a high technology, competitive market
place.
5. License Terms
Developer hereby grants to Licensee a world-wide, perpetual
license to use and without limitation, to reproduce, the
Original Work subject to the following:
(i) For a period the greater of five years from
Licensee's final acceptance of the Original Work or
any period of one-year of non-use by Licensee,
Developer shall not license or sell the Original Work
worldwide without written approval from Licensee.
(ii) Notwithstanding the foregoing, Developer may use
the Original Work in any product for use outside the
telecommunications industry (such as a similar
product for the senior executive group of another
industry), and for any noncompetitive product,
including other products for the telecommunications
industry (such as process simulations of the physical
plant of a telecommunications provider, the
simulation of particular telecom plant and equipment
or training products not focused upon senior
executives of the telecom industry), provided
however, that Developer shall not use Licensee's
confidential information and trademarks.
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November 8, 1995
Fax: (000) 000-0000
Mr. Win Xxxxxxx
Coopers & Xxxxxxx
1301 Avenue of the Americas
Xxx Xxxx, Xxx Xxxx 00000
Dear Xx. Xxxxxxx:
By signing below, this letter will serve as an agreement that the
royalty paid by Coopers & Xxxxxxx to Thinking Tools, Inc. for sale of generic
versions of TeleSim I (i.e., based on the AT&T version of TeleSim I) shall be
20% of the sales price or $2,000, whichever is greater. At no charge to Coopers
& Xxxxxxx, Thinking Tools, Inc. will include a customer identification screen
for each customer, provided that the customer has signed a written
authorization, that allows Thinking Tools, Inc. to utilize the customer's name
and logo on that screen.
THINKING TOOLS, INC. COOPERS & XXXXXXX
/s/ Xxxx X. Xxxxx /s/ Win Xxxxxxx
----------------------------- -----------------------------------------
By: Xxxx X. Xxxxx By: Win Xxxxxxx
President Partner, Coopers & Xxxxxxx Consulting LLP
----------------------------- -----------------------------------------
Title Title
November 20, 1995 11/9/95
----------------------------- -----------------------------------------
Date Date
EXHIBIT A
1. Description of Original Work: TeleSim
TeleSim is a computer software, game-like simulation of the
telecommunications market where the user creates and executes
product strategies for their telecom company while competing
with other telecom companies for market share, revenues,
profits and customer awareness. Original Work shall include
the TeleSim product created by AT&T.
2. Features and Function of the Original Work
The features and functions of TeleSim are expressed in the
beta release of TeleSim for NYNEX (Version 1.0).
3. License Territory
World-wide
4. Usage
TeleSim will be used to train the senior executives of the
telecommunications industry, giving them an awareness of the
nature of competing in a high technology, competitive market
place.
5. License Terms
Developer hereby grants to Licensee a world-wide, perpetual
license to use and without limitation, to reproduce, the
Original Work subject to the following:
(i) For a period the greater of five years from
Licensee's final acceptance of the Original Work or
any period of one-year of non-use by Licensee,
Developer shall not license or sell the Original Work
worldwide without written approval from Licensee.
(ii) Notwithstanding the foregoing, Developer may use
the Original Work in any product for use outside the
telecommunications industry (such as a similar
product for the senior executive group of another
industry), and for any noncompetitive product,
including other products for the telecommunications
industry (such as process simulations of the physical
plant of a telecommunications provider, the
simulation of particular telecom plant and equipment
or training products not focused upon senior
executives of the telecom industry), provided
however, that Developer shall not use Licensee's
confidential information and trademarks.
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