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EXHIBIT 10.11 - SOFTWARE LICENSE AGREEMENT
SOFTWARE LICENSE AGREEMENT
This SOFTWARE LICENSE AGREEMENT is made and entered into as of the last
day written below by and between SalesLogix Corporation, a Delaware corporation
with its principal offices located at 0000 X Xxxxxx Xxxxxx Xxxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxx 00000 ("Licensor") and The XxXxxxxx Corporation, whose
principal place of business is located at 0000 Xxxxxxx Xxxx., Xxxxx 000, Xxxxxx
Xxxxx, Xxxxxxxxxx 00000 ("Licensee").
RECITALS
A. Licensor owns certain proprietary software products (consisting of
programs and related documentation) that Licensor distributes and licenses.
B. Licensee is in the business of developing, marketing and distributing
proprietary software products consisting of programs and related documentation.
C. Licensor and Licensee wish to enter into an agreement authorizing
Licensee to utilize and modify certain portions of source code versions of a
proprietary software product of Licensor and to promote, market, distribute,
license and sublicense Licensee's software products that incorporate object code
versions of the modified proprietary software product of Licensor, within a
specified market.
THE PARTIES AGREE AS FOLLOWS:
1. GLOSSARY
1.1 The "Act" means the Copyright Act of 1976, as amended.
1.2 A "business day" means a day, other than Saturday or Sunday, on which
banks located in Phoenix, Arizona and San Francisco, California are generally,
open for business in each of such cities. If the day on which an act or event is
scheduled to occur under this Agreement shall not be a business day, then the
same shall be timely if it occurs on the next following business day.
1.3 "Confidential Information" of a party hereto means all confidential
and proprietary information of such party marked as such (if such information is
capable of being so marked) not generally known to the public regarding such
party's products and business that are disclosed by such party (the "Disclosing
Party") to the other party (the "Non-Disclosing Party") under this Agreement
including, but not limited to, the Licensed Programs and designated portions of
the Licensed Materials (including by way of example, but not limitation, Source
Code design materials). Confidential Information does not include information
(i) in the public domain at the time of delivery, (ii) subsequently published or
otherwise made part of the public domain through no fault of the Non-Disclosing
Party or of its representatives, (iii) in the Non-Disclosing Party's possession
at the time of disclosure and not acquired by the Non-Disclosing
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party directly or indirectly from such Disclosing Party or its representatives
on a confidential basis, or (iv) which becomes available to the Non-Disclosing
Party on a non-confidential basis from a source that, to the best of its
knowledge, is not under an obligation to the Disclosing Party.
1.4 "Derivative Source Code" shall mean any work in Source Code form that
is based upon the Licensed Products or which contains or incorporates any
portion of the Licensed Products, such as a revision, modification, translation
(including compilation or recapitulation by computer), abridgment, condensation,
expansion, or any other form in which the Licensed Material may be recast,
transformed, or adapted, and that if prepared without authorization by the owner
of the pre-existing work, would constitute a copyright infringement.
1.5 "Derivative Work" shall mean any work that is based upon the Source
Code for the Licensed Products or which contains or incorporated any portion of
such Source Code, such as a revision, modification, translation (including
compilation or recapitulation by computer), abridgment, condensation, expansion,
or any other form in which the Licensed Programs may be recast, transformed, or
adapted, and that if prepared without authorization by the owner of the
pre-existing work, would constitute a copyright infringement.
1.6 "Documentation" shall mean all technical specifications and supporting
documentation in Licensor's possession, custody or control for the Source Code
for the Licensed Products, as set forth in Exhibit 1, including all updates and
modifications thereto.
1.7 "Effective Date" means the last day written below; provided that to be
effective this Agreement must be executed by an authorized representative of
each of the Licensee and Licensor.
1.8 "End Materials" means any user manuals, handbooks and other written
materials developed by Licensee or their licensees or sublicensees and provided
by Licensee or its licensees or sublicensees to End Users for use in conjunction
with End Programs, which may include a portion of Licensed Materials.
1.9 "End Products" means the End Programs and the End Materials.
1.10 "End Product Royally" means the fee payable by Licensor to Licensee
pursuant to Section 3.2.
1.11 "End Programs" means any computer software programs developed by or
for Licensee for sublicensing by Licensee or its licensees or sublicensees to
End Users which include a portion of a Licensed Program (including the code or
program logic or concepts). End Programs are intended to be Derivative Works and
compilations, as such terms are defined in Section 10 1 of the Act.
1.12 "End User" means any person or entity that is granted a license by or
through Licensee, its licensees, sublicensees or their respective agents,
pursuant to the authority granted under this Agreement, to use an End Product
solely for such End User's internal business purposes and that cannot re-sell,
lease, market, license, sublicense or otherwise distribute that End Product to
any other party.
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1.13 "Licenses" means the licenses granted to Licensee pursuant to Sections
2.1 through 2.3 of this Agreement.
1.14 "Licensed Materials" means all of the user manuals, diagrams,
listings, handbooks and other written materials developed by or for Licensor for
use in conjunction with any Licensed Program, which consist of the written
materials specified in Exhibit 1.
1.15 "Licensed Products" means the Licensed Materials and the Licensed
Programs.
1.16 "Licensed Programs" means the proprietary computer software programs
of Licensor licensed under this Agreement as are specified in Exhibit 1, each
consisting of a series of instructions in Source Code form (as defined below)
and the underlying program logic and concepts.
1.17 "Permitted Market" means the market consisting of construction,
engineering, property management, real estate brokerage, and home building.
1.18 "Royalty Rate" means twenty-five (25%) percent.
1.19 "Source Code" means a computer software program in a form in which the
program logic can be deduced by a human being, such as a printed listing of the
program, or in an encoded machine-readable form, such as might be recorded on
magnetic tape or disk, from which a printed listing can be made by processing it
with a computer. The Source Code for the Licensed Products shall be the most
current version developed by or for Licensor, including all updates,
enhancements, corrections and modifications.
1.20 "Trade Secret" shall mean any information, including any formula,
pattern, compilation, program, device, method, technique or process that derives
independent economic value from not being generally known to the public or to
other persons who can obtain economic value from its disclosure or use, and that
has been the subject of reasonable efforts by Licensor to maintain its secrecy.
2. LICENSES GRANTED
2.1 Licensed Materials. Licensor hereby grants to Licensee a
non-exclusive, worldwide license, and upon payment of the Fee as hereinafter
defined and all End Product Royalties, such license will be fully paid and
irrevocable:
2.1.1 to use, copy, adapt, modify, reproduce for internal purposes the
Licensed Materials, in whole or in part;
2.1.2 to use, copy, adapt, modify, reproduce, market, promote,
distribute, and license and sublicense the Licensed Materials, in whole or in
part, which rights shall include, but not be limited to, the right to
incorporate and distribute such Licensed Materials in End Materials to be
distributed by Licensee (subject to protecting portions of Licensed Materials
designated as Confidential Information in accordance with this Agreement) to End
Users within the Permitted Market; and
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2.1.3 to license and sublicense others to use, adapt, modify,
reproduce, market, promote, license, distribute, and sublicense the Licensed
Materials, in whole or in part, which rights shall include, but not be limited
to, the right to license and sublicense to third parties the right to
incorporate and distribute such Licensed Materials in End Materials to be
distributed by such third parties (subject to protecting portions of Licensed
Materials designated as Confidential Information in accordance with this
Agreement) to End Users within the Permitted Market.
2.2 Licensed Programs. Licensor hereby grants to Licensee, and Licensee
hereby accepts, a non-exclusive, perpetual worldwide license, and upon payment
of the Fee as hereinafter defined and all End Product Royalties, such license
will be fully paid and irrevocable:
2.2.1 to use, copy, reproduce, run, modify, enhance, execute and
compile the Source Code for the Licensed Programs, or have its contractors do so
on its behalf, solely for or in support of the exercise of Licensee's rights
under Sections 2.2.2 and 2.2.3;
2.2.2 to use, adapt, modify, reproduce, market, promote, license,
distribute, and sublicense the Licensed Programs to End Users within the
Permitted Market in Object Code form, in whole or in part, which rights shall
include, but not be limited to, the right to incorporate and distribute the
Licensed Programs to End Users in the Permitted Market in Object Code form in
End Programs to be distributed by Licensee;
2.2.3 to license and sublicense others to use, reproduce, market,
promote, distribute, license and sublicense the Licensed Programs to End Users
in the Permitted Market in Object Code form, in whole or in part, which rights
shall include, but not be limited to, the right to license and sublicense to
third parties the right to incorporate and distribute the Licensed Programs in
Object Code form in End Programs to be distributed by such third parties to End
Users in the Permitted Market; and
2.2.4 solely for or in support of the exercise of Licensee's rights
under Sections 2.2.2, 2.2.3, 2.3.2 and 2.3.3, to use, practice or otherwise
exploit any and all Trade Secrets, patent or patentable rights (except as
hereafter provided), or other proprietary rights that are embodied or reflected
in the Source Code for the Licensed Products or the Documentation, provided that
Licensee shall have no right to use, practice or otherwise exploit any letters
patent or patentable right covered by or issued pursuant to that certain
Application for Letters Patent of the United States, filed on February 24, 1995,
under Serial No. 08/394,030 (an invention entitled Apparatus and Method for
Creating and Executing Graphically Depicted Communication Processes) (the
"Patent Application") except to the extent that the "process builder and form
builder" functionality covered by the Patent Application is included in the
Licensed Programs and marketed as a part thereof and not as one or more
stand-alone products; and
2.2.5 to sublicense the Source Code for the Licensed Programs and
Derivative Source Code as incorporated into Licensee's Source Code, provided
that (i) Licensee provides Licensor with prior written notice of such
sublicense, including the name and address of the sublicensee and a reasonably
accurate description of the sublicensee's business, and (ii) Licensee provides
Licensor a written undertaking by the sublicensee, in form and substance
reasonably satisfactory to Licensor, pursuant to which the sublicensee
acknowledges and agrees that the scope of its sublicense is no broader than the
licenses set forth in this Agreement and that the
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sublicensee agrees to be bound by Licensee's obligations under this Agreement
(other than Licensee's obligations to pay the Fee and the End Product Royalties
under Section 3).
2.3 Derivative Works. Licensor hereby grants to Licensee a non-exclusive,
worldwide license, and upon payment of the Fee as hereinafter defined and all
End Product Royalties, such license will be fully paid:
2.3.1 to prepare Derivative Source Code based upon the Source Code for
the Licensed Programs and Documentation solely for or in support of the exercise
of Licensees rights under Sections 2.3.2 and 2.3.3, and to develop Derivative
Works based on the Licensed Products and any Derivative Works or compilations;
2.3.2 to use, adapt, modify, reproduce, market, promote, distribute,
license and sublicense such Derivative Works and compilations, in whole or in
part, provided that portions of such Derivative Works and compilations
containing Licensed Programs may be marketed, promoted, licensed and sublicensed
in Object Code form only and only to End Users in the Permitted Market; and
2.3.3 to license and sublicense others to use, reproduce, market,
promote, distribute, license and sublicense such Derivative Works and
compilations, in whole or in part, provided that such portions of such
Derivative Works and compilations containing Licensed Programs may be marketed,
promoted, licensed and sublicensed in Object Code form only and only to End
Users in the Permitted Market.
2.4 Implementation of Licenses. To implement this Agreement, Licensee may,
in such manner as it deems fit and at its sole cost and expense, edit, rewrite,
revise, adapt, translate, change the order of and add to or delete from any
material which comprises a Licensed Program and use the same for any purpose
permitted herein for a Licensed Program, by itself or in combination with any
other work, provided, however, that if Licensee shall register pursuant to the
Act its copyright in the End Programs and Derivative Works and compilations
based upon or containing Licensed Programs, Licensee shall identify in such
registration the pre-existing Licensed Program by Licensor which is included in
or upon which is based the End Program, derivative work or compilation. Licensee
shall affix to all copies of the Licensed Programs distributed by it such
copyright and confidentiality notices as required from time to time to implement
this Agreement. Licensee will include a proper Licensor copyright notice in the
"about box" of the End Programs in the same typeface and size as used by such
Licensee for other third party software copyright legends. Licensee and its
sublicensees shall grant sublicenses to End Users for use of End Programs,
Licensed Programs, End Materials, or Licensed Materials on terms and conditions
consistent with this Agreement and which protect the intellectual property
rights of Licensor to the same degree as the most valuable intellectual property
rights of Licensee is protected by them in similar circumstances.
2.5 Identification of Products. Notwithstanding anything stated herein to
the contrary, Licensor and Licensee agree that the Licensed Programs and End
Programs distributed pursuant to this Agreement will be identified to
sublicensee, End Users and any other third party under the Licensee's respective
trademarks and brands, subject to proper use or retention, as applicable, of
copyright legends identifying Licensor's copyright interests in therein.
Licensee
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and its sublicensees are not acquiring hereunder any license or right to use in
any manner any Licensor trademark or brand.
2.6 Exclusive Rights to Permitted Market. Licensor agrees, during the Term
of this Agreement, not to directly, or indirectly through its distributors or
other licensees, enter into new licenses of the Licensed Products. Licensee
acknowledges and agrees that neither this provision nor anything else in this
Agreement shall be construed to restrict (i) Licensor's right to license
directly, or indirectly through its distributors or other licensees, any other
software products of Licensor, including but not limited to the SalesLogix suite
of software products and any subsequent releases of software products other than
the Licensed Products, to End Users within the Permitted Market, or (ii)
Licensor's customers (VARs, OEMs, distributors, End Users, etc.) from
customizing copies of the SalesLogix products for the Permitted Market. For the
two year period commencing on the date hereof, Licensor will not develop a
product that is specifically designed for and targeted at the Permitted Market
in competition with the Licensed Products.
2.7 No Rights Outside Permitted Market. Licensee acknowledges and agrees
that this Agreement does not grant Licensee any rights to use, adapt, modify,
reproduce, market, promote, distribute, license or sublicense, directly or
indirectly, any Licensed Materials for sale, license or distribution to any End
Users outside of the Permitted Market. Licensee agrees not to engage, directly
or indirectly, in any licensing or marketing of the End Products outside of the
Permitted Market and will utilize its best efforts to ensure that its
distributors and licensees do not engage, directly or indirectly, in any
licensing or marketing of the End Products outside of the Permitted Market.
2.8 Term. The term of the Licenses shall be as provided in Section 7.0.
3. PAYMENTS TO LICENSOR; ACCEPTANCE
3.1 Technology License Fee. In consideration of the Licenses, Licensee
agrees to pay to Licensor a one-time Technology License Fee of one hundred
thousand dollars ($ 100,000) (the "Fee"). Licensee shall pay the Fee to
Licensor, by wire transfer or in other immediately available funds, as follows:
$62,500 will be paid no later than five (5) business days after the completion
of Licensee's first of two sessions as defined in Section 4.2.1, at Licensor's,
and the balance ($37,500) no later than thirty (30) days after first payment
($62,500) is received and acceptance is deemed.
3.2 End Product Royalty. In further consideration of the Licenses,
Licensee agrees to pay to Licensor an End Product Royalty for each copy,
distributed during the Term of this Agreement by Licensee, its licensees,
sublicensees or agents, of an End Product as follows:
3.2.1 Individual Products. The End Product Royalty for each copy of an
End Product distributed to an End User as an individual product shall be an
amount equal to the greater of: (i) two hundred dollars ($200.00); or (ii) the
Royalty Rate, multiplied by the actual invoice price to the End User for such
End Product.
3.2.2 Bundled Products. The End Product Royalty for each transaction
in which the End Product is bundled with other products for distribution to an
End User shall be an amount equal to the greater of (i) two hundred dollars
($200.00); or (ii) the Royalty Rate,
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multiplied by the then-current Licensee standard list price for the End Product,
the product of which shall be multiplied by a fraction, the numerator of which
is (x) the actual aggregate invoice price to the End User for the bundled suite
of products, and the denominator of which is (y) the aggregate then-current
unbundled Licensee list prices for the individual component products bundled for
sale to the End User in such transaction.
3.3 Payment of Royalties. The first End Product Royalty due in cash under
this Agreement shall be paid within fifteen (15) days after the sixth month
anniversary of the Effective Date of this Agreement and shall cover all
royalties collected during the first six months during which this Agreement is
in effect. Thereafter, the End Product Royalty shall be paid on a monthly basis,
within fifteen (15) days after the close of each month in which Licensee
collects revenue. All End Product Royalties due under this Section 3.3 shall be
net of the applicable End Product Royalties related to returns of Licensed
Product within the applicable warranty period, not to exceed thirty (30) days.
3.4 Royalty Cap. No further royalties shall be due under this Section 3.2
after Licensee has paid Licensor aggregate royalties under this Section 3.2
totaling three hundred thousand dollars ($300,000).
4. RESPONSIBILITIES AND OBLIGATIONS OF LICENSOR
4.1 Deliverables. Licensor shall timely deliver the most recent copies (as
demonstrated at Licensor's site as part of sessions defined in Section 4.2.1) of
the following (the "Deliverables") to the Licensee within five (5) days after
Licensor's receipt of the first installment of the Technology Fee as defined in
Section 3.1:
4.1.1 One copy of the Source Code and Object Code in electronic format
described in Exhibit 1.
4.1.2 One copy of the Licensed Materials in electronic format.
4.1.3 One copy of all licenses referred to in Exhibit 4, and any
documentation related to such licenses. Additionally code for such licenses in
electronic format.
4.1.4 One copy of each current maintenance agreement between Licensor
and an End User relating to the Licensed Products, for the purposes described in
Sections 4.3 and 5.1 hereof
4.1.5 One copy of all sales collateral and training materials of
Licensor as of the Effective Date, in hard copy and electronic format.
4.2 Acceptance Procedure.
4.2.1 Acceptance Criteria. Licensor shall demonstrate, at Licensor's
site in Scottsdale, Arizona, over a period not to exceed two noncontiguous
sessions, and over sessions not to exceed an aggregate of three (3) business
days in length, that the Licensed Programs meet the acceptance criteria as
defined on Exhibit 2 attached hereto (the "Acceptance Criteria") on
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equipment meeting the specifications described on Exhibit 2. Upon successfully
meeting the Acceptance Criteria, "Acceptance" will have occurred, and the Fee
shall be due and payable within the period specified in Section 3.1. To the
extent that Licensee, prior to the completion of the three business days
allotted for this purpose, becomes satisfied that the Licensed Programs meet the
acceptance criteria, Licensee may use the remainder of the allotted three
business days to obtain, free of any additional charge, an on-site technical
review of the Licensed Materials with Licensor' software programmers.
4.2.2 Cooperation. The Licensee agrees to provide the personnel and
equipment described on Exhibit 2 and to perform their responsibilities as
described in Exhibit 2 while Licensor is on-site, and the parties agree to
cooperate with each other fully in order to complete the acceptance procedures
in a timely and effective manner.
4.2.3 Bug List and Support. Attached hereto as Exhibit 3 is the "known
bug list" for the Licensed Programs. Licensee acknowledges that Licensor has no
obligation to make any such fixes, or to provide to Licensee any enhancements or
modifications made by or for Licensor to the Licensed Programs after the
Effective Date. For a period of ninety (90) days following Acceptance, Licensor
agrees to provide Licensee with telephone support for one technically qualified
project manager specified by Licensee. The telephone support provided by
Licensor shall respond to each Licensee inquiry within twenty-four (24) hours of
the inquiry, but shall be limited to technical, design and product-related
issues.
4.3 No Existing Maintenance Agreements, Assignment of Payment. Licensor
does not currently have any maintenance contracts with or warranty obligations
to end users of the Licensed Products. Licensor agrees that Licensee may provide
maintenance services with respect to the Licensed Products and further agrees to
refer any maintenance inquiries of end users of the Licensed Products to
Licensee for consideration. Licensor further agrees that any revenues which
Licensee receives for providing maintenance services to end users of the
Licensed Products 'shall not give rise to any royalty or payment obligation to
Licensor under this Agreement. Licensor further assigns to Licensee, upon
Acceptance, Licensor's remaining rights to receive payment under that agreement
dated August 23,1996 between Licensor and Xxxxxxxx Brothers.
4.4 Standard of Performance. Licensor shall perform its obligations under
this Agreement using a standard of performance that is equal to or greater than
the standard of performance used by Licensor to perform its general business
obligations and in any event shall use its best efforts and devote sufficient
resources to timely deliver the Licensed Programs, Licensed Materials, and
perform its other obligations under this Agreement.
5. RESPONSIBILITIES AND OBLIGATIONS OF LICENSEE
5.1 Intentionally deleted.
5.2 Standard of Performance. Licensee shall perform its obligations under
this Agreement using a standard of performance that is equal to or greater than
the standard of performance used by Licensee to perform its general business
obligations.
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5.3 Taxes. Except for taxes based upon Licensor's net income, Licensee and
its sublicensees and End Customers shall pay any federal, state or municipal
taxes, levied upon Licensee, including foreign export or import taxes, tariffs,
duties, or related charges based upon fees for the Licensed Programs, End
Programs, Licensed Materials or End Materials, or any services provided
hereunder, and shall indemnify and hold Licensor harmless therefrom and any
related interest or penalties arising from nonpayment by Licensee (except to the
extent that Licensor does not provide Licensee with timely notice of any tax
assessment received by it to which this Section 5.3 applies).
6. TRADEMARKS AND TRADE NAMES
The trademarks and trade names under which Licensee shall, in its sole
discretion, elect to market the End Products are and shall be the exclusive
property of Licensee and the use thereof shall inure to the sole benefit of
Licensee; provided that the trademarks and trade names under which Licensor
markets the Licensed Products are and remain the exclusive property of Licensor
and Licensee shall not have any right to use, nor shall it use the name
"Prospector", or any other trade name or trademark of Licensor, or any name or
xxxx confusingly similar thereto, except in connection with copyright notices.
Nothing in this Agreement or elsewhere gives either party any rights to the
trademarks or trade names of the other.
7. TERM AND TERMINATION
7.1 Term. The term of this Agreement shall be perpetual commencing on the
Effective Date, unless sooner terminated as set forth herein or by the written
consent of the parties.
7.2 Termination by Licensor. If Licensee defaults in performing any
material obligations required under this Agreement, Licensor may give written
notice of its intention to terminate this Agreement, describing in reasonable
detail the default. If Licensee fails to remedy such material default within
thirty (30) days (ten (10) days for a payment default) following receipt of such
written notice, or if such default is not capable of cure within such thirty
(30)-day period, and Licensee fails to commence cure procedures within such
thirty (30)-day period and diligently prosecute such procedures until the
default is cured, then Licensor may, in addition to all other remedies available
at law or in equity, terminate this Agreement and the Licenses after the
expiration of the notice period to remedy the default upon written notice.
7.3 Termination by Licensee. If Licensor defaults in performing any
material obligations required under this Agreement, Licensee may give written
notice of its intention to terminate this Agreement, describing in reasonable
detail the default. If Licensor fails to remedy such material default within
thirty (30) days (ten (10) days for a payment default) following receipt of such
written notice, or if such default is not capable of cure within such thirty
(30)-day period, and Licensor fails to commence cure procedures within such
thirty (30)-day period and diligently prosecute such procedures until the
default is cured, then Licensee may, in addition to all other remedies available
at law or in equity, terminate this Agreement upon written notice and retain
fully paid-up Licenses as set forth in Section 2, notwithstanding such
termination.
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8. EFFECT OF TERMINATION OR EXPIRATION
8.1 Effect; Survival; Irrevocability. Except as provided in Section 7.3
and Section 8.2, upon any termination or expiration of this Agreement, Licensee
shall immediately pay all amounts then due to Licensor and shall immediately
discontinue use of and shall destroy all Licensed Products, including all copies
thereof and all portions thereof in Licensee's inventory of End Products, and
shall deliver a certificate of its chief executive officer of compliance with
this provision. Sections 5, 6, 7.2, 8.2, 10, 11, 12, 13, and 19 shall survive
any termination or expiration of this Agreement. Nothing contained in this
Section 8.1 shall permit any Licensee or sublicensee to disclose Source Code for
Licensed Programs to any third party, and such Source Code shall remain
Confidential Information of Licensor notwithstanding any license for Licensed
Programs becoming irrevocable.
8.2 Installed End Users. Notwithstanding any provision of this Agreement to
the contrary, no termination or expiration of this Agreement shall affect the
rights of End Users to continue to use then-installed End Products pursuant to
then existing Licenses (without extensions of the then existing terms thereof).
9. ADMINISTRATION
Until such time as Licensee certifies to Licensor that all Confidential
Information of Licensor in such Licensee's possession, custody or control has
been destroyed by it, Licensor shall have the right once per calendar year to
have third party representatives reasonably approved by the Licensee inspect the
books and records of the Licensee reasonably related to compliance by the
Licensee with Section 11 of this Agreement. Any such inspection shall be
permitted by Licensee within thirty (30) days of receipt of Licensor's written
request to inspect, during normal business hours, at a time mutually agreed upon
by Licensor and Licensee. Licensor shall bear its own expenses in connection
with such inspection, which shall not exceed three (3) days per year at
Licensee's site. Licensor's representatives shall also comply with Licensee's
on-site confidentiality requirements.
10. COPYRIGHTS IN AND OWNERSHIP OF LICENSED PRODUCTS
10.1 Title. Licensor represents and warrants that, except as expressly
disclosed in Section 10.2, Licensor is the sole owner of the Licensed Products,
free and clear of any lien, encumbrance or other restriction, and that Licensor
conceived and developed the Licensed Products and did not acquire such Licensed
Products from any third party.
10.2 Right to License. Licensor represents and warrants that the only
Licensed Products conceived or developed by others are described in Exhibit 4,
that true and complete copies of the agreements and instruments granting to
Licensor its rights in such Licensed Products are attached as part of such
Exhibit 4 and that Licensor has all necessary power and authority to license all
Licensed Products in accordance with this Agreement without the consent or
approval of any third party except those described in Exhibit 4. Licensee
acknowledges that it is responsible for obtaining the consents or licenses
described in Exhibit 4 and that all rights with respect to Licensed Products
(including the right to produce Derivative Works therefrom) not
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explicitly granted in this Agreement remain the sole property of Licensor or of
Licensor's licensors.
10.3 Derivative Works. Subject to the rights of Licensor in the Licensed
Programs from which a derivative End Program is created or from which a
compilation results, (i) Licensee shall be the exclusive owner and the copyright
holder of such derivative and compilation End Programs, (ii) the exclusive use
thereof shall inure to the benefit of Licensee and (iii) no rights in the
Derivative Works and compilations created by or for Licensee are granted to
Licensor or any third party pursuant to this Agreement.
11. CONFIDENTIAL INFORMATION
11.1 Licensor's Obligations. Licensor shall safeguard and keep
confidential all Confidential Information of Licensee and shall return all
Confidential Information to Licensee promptly upon request and in any event
within fifteen (15) days of the termination or expiration of this Agreement.
Licensor agrees to safeguard any such Confidential Information received from
Licensee using measures that are equal to the standard of performance used by
Licensor to safeguard its own Confidential Information. Licensor shall use its
best efforts to safeguard and keep confidential the Licensed Products and
Licensed Materials and to maintain at its expense in full force and effect any
and all existing intellectual property rights in the Licensed Products and
Licensed Materials subject to the Licenses. Licensee shall have the right to
require Licensor, at Licensee's expense, to take such additional actions as
Licensee reasonably believes appropriate to obtain, maintain and enforce other
forms of proprietary protection (including without limitation patent and
copyright registration) that are not inconsistent with the confidential
treatment required by this Agreement.
11.2 Licensee's Obligations. Licensee shall safeguard and keep confidential
all Confidential Information of Licensor and shall return all Confidential
Information of Licensor to Licensor promptly upon breach of this Section and in
any event within fifteen (15) days of termination or expiration of this
Agreement. Licensee hereby agrees that, except as otherwise expressly provided
in this Agreement, all ownership rights in the Licensed Programs and Licensed
Materials remain in Licensor. Licensee further agrees to safeguard Confidential
Information using measures that are comparable to the standard of performance
used by Licensee to safeguard its own most valuable Confidential Information in
similar circumstances.
11.3 Joint Obligations. Subject to the provisions set forth in Section 2,
neither party shall, without the prior written consent of the other party:
11.3.1 disclose any Confidential Information of the other party to any
person other than an employee or an independent contractor who agrees to be
bound by this Section 11 or as expressly contemplated by this Agreement;
11.3.2 make any unauthorized copies of Confidential Information; or
11.3.3 use any Confidential Information of the other party for any
purpose except to implement its rights and obligations under this Agreement and
as other wise expressly contemplated by this Agreement;
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provided, however, that if any party or its representatives is requested or
required by law, court order, or subpoena to disclose any Confidential
Information, that party will promptly notify the other party of such request or
requirement so that the other party may seek an appropriate protective order or
other appropriate relief and/or waive compliance with provisions of this
Agreement, and if, in the absence of such relief or waiver hereunder, any party
or its representatives are, in the opinion of its counsel, legally compelled to
disclose Confidential Information, then that party may disclose such of the
Confidential Information to the person compelling disclosure as is, according to
such opinion, required, without liability hereunder.
11.4 Third-Party Infringement. If either party learns of any use or
disclosure of Confidential Information of the other party which is not permitted
under this Agreement, it shall promptly notify the party whose Confidential
Information was used or disclosed, stating in reasonable detail all facts known
to it with respect to such unauthorized use or disclosure and shall cooperate in
all respects reasonably requested by the party whose Confidential Information
was used or disclosed or its counsel, at such requesting party's expense, in
such requesting party's pursuit of available remedies against the person or
persons responsible for such unauthorized use or disclosure.
11.5 Injunctive Relief. Each party acknowledges that breach of the
foregoing obligations may cause irreparable injury to the party whose
Confidential Information is disclosed and that (notwithstanding any contrary
provision relating to the arbitration of disputes) such party may seek and
obtain injunctive relief against such breach or threatened breach without
prejudice to any other remedies which may be available to it.
11.6 Terms and Conditions of Agreement Confidential. In addition to
safeguarding the other's Confidential Information, each party further agrees to
keep the terms and conditions of this Agreement confidential.
12. REPRESENTATIONS AND WARRANTIES; LIMITATION OF LIABILITY
12.1 Of Licensor. Licensor hereby represents, warrants and covenants to
Licensee as follows:
12.1.1 License Rights. Licensor has the right to license the Licensed
Products to Licensee in accordance with the terms and conditions of this
Agreement, subject to Exhibit 4. Each delivery by Licensor to Licensee under
this Agreement shall contain only material that Licensor is legally entitled to
deliver to Licensee as Licensed Products.
12.1.2 Performance. Licensee acknowledges and agrees that it has
performed a complete due diligence review of the Licensed Programs and will,
upon completion of the Acceptance procedures described in Section 4.2, have had
the opportunity to review and inspect the Source Code for the Licensed Programs.
Licensee is willing to accept the Licensed Programs in their current form on an
AS IS basis provided that the Licensed Materials meet the Acceptance Criteria
specified in Exhibit 2. Licensor does not warrant that the Licensed Programs
will meet Licensee's requirements or will operate in combinations which Licensee
may, at its sole discretion, select to use with the Licensed Programs. Licensor
does not warrant that the Licensed Programs shall operate uninterrupted or free
of non-material efforts.
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12.1.3 Ability to Perform. Licensor warrants that it has the ability
to perform its obligations under this Agreement.
12.1.4 Title. There are no outstanding options, licenses, or
agreements of any kind relating to the Licensed Products in accordance with the
terms of this Agreement, subject to Exhibit 4.
12.1.5 Litigation. There is no claim, litigation, action, suit or
proceeding, administrative or judicial, pending or, to the best of Licensor's
knowledge, threatened against Licensor involving the Licensed Products, at law
or in equity, before any federal, state, local or foreign court or regulatory
agency, or other governmental or arbitral authority which could have a material
adverse effect on (i) the use of the Licensed Products by Licensee as
contemplated under this Agreement, or (ii) the consummation of the transactions
contemplated by this Agreement. To the best of Licensor's knowledge, there is no
basis or alleged basis upon which such claim, litigation, action, suit or
proceeding could be brought or initiated subject to Exhibit 4 letters.
12.1.6 Protection. Licensor has taken security measures believed by
Licensor to be sufficient to protect the secrecy and confidentiality of the
Licensed Products.
12.1.7 No Conflict or Default. To the best of Licensor's knowledge
neither the execution and delivery of this Agreement by Licensor, nor compliance
with the terms and provisions hereof, including without limitation, the
consummation of the transactions by Licensor contemplated hereby, will conflict
with or result in the breach of any term, condition, or provision of the
Certificate of Incorporation or Bylaws of Licensor or of any agreement, deed,
contract, mortgage, indenture, writ, order decree, legal obligation or
instrument to which Licensor is a party or by which it or the Licensed Products
are or may be bound, or constitute a material default (or an event which, with
the lapse of time or the giving of notice, or both, would constitute a material
default) thereunder, or result in the creation or imposition of any lien, charge
or encumbrance, or restriction of any nature whatsoever with respect to the
Licensed Products, or give to others any interest or rights, including rights of
termination, acceleration or cancellation In or with respect to the Licensed
Products.
12.2 Of Licensee. Licensee hereby represents, warrants and covenants to
Licensor as follows:
12.2.1 Ability to Perform. Licensee warrants that it has the ability
to perform its obligations under this Agreement.
THE FOREGOING WARRANTIES OF LICENSOR AND LICENSEE ARE EXCLUSIVE AND IN LIEU OF
ANY AND ALL OTHER WARRANTIES OF ANY KIND OR NATURE, INCLUDING WITHOUT LIMITATION
EXPRESSED OR IMPLIED WARRANTIES, AND WARRANTIES OF MERCHANTABILITY AND FITNESS
FOR A PARTICULAR PURPOSE.
12.3 Limitation of Liability. IN NO EVENT SHALL ANY PARTY BE LIABLE FOR ANY
INDIRECT, INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES, INCLUDING LOSS OF
PROFITS, REVENUE, DATA, OR USE, WHETHER INCURRED BY
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ANY OTHER PARTY HERETO OR ANY THIRD PARTY, WHETHER IN AN ACTION IN CONTRACT OR
IN TORT OR BASED ON A WARRANTY, EVEN IF THE OTHER PARTIES HERETO OR ANY OTHER
THIRD PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. NOTWITHSTANDING
THE FOREGOING, THIS SECTION 12.4 SHALL NOT APPLY TO BREACHES OF SECTION 11 OF
THIS AGREEMENT.
13. INDEMNIFICATION
13.1 Indemnification for Infringement. Licensor shall indemnify and hold
harmless Licensee and its licensees and sublicensees from and against any and
all losses, liabilities, damages, claims and expenses (including reasonable
attorneys' fees) arising from allegations that the use, copying, modification,
distribution and/or sale of Licensed Products infringes any U.S. patent, U.S.
copyright, any trade secret or any other proprietary or intellectual property
right arising under U.S. law; provided, however, that the foregoing indemnity
shall not apply to the extent that the alleged infringement is attributable to
alterations, modifications or re-engineering of the Licensed Products from the
form delivered to Licensee hereunder, or to use of the Licensed Products with or
in combination with other products by Licensee or sublicensees in circumstances
where use of the Licensed Products, in the form delivered to Licensee hereunder,
would not be infringing if not used with or in such combination.
13.2 Procedures. The indemnity set forth in Section 13.1 shall not apply
unless the Licensee claiming the right to indemnification notifies Licensor in
writing of any and all claims of infringement within a reasonable time, not to
exceed 60 days, after being informed or having received notice of them and
reasonably cooperates with Licensor (at no out-of-pocket expense to Licensee).
Licensor shall notify Licensee within 30 days after being informed or becoming
aware of any claims of infringement relating to the Licensed Products.
13.2.1 Licensor shall, in its reasonable discretion, control the
defense against claim(s) of infringement, for which it is required to provide
indemnification hereunder, and shall be responsible for related cost and
attorneys' fees. Licensor shall, in its reasonable discretion, have the right to
settle such claim(s) of infringement, provided that the final settlement permits
the continued, uninterrupted use of the Licensed Products by Licensee and its
sublicensees as contemplated by this Agreement, and no additional costs will be
incurred by Licensee as a result of such settlement.
13.2.2 Licensor shall pay all resulting costs or damages incurred by
Licensee or sublicensees awarded by a court of competent jurisdiction in favor
of third parties and attributable to claim(s) of infringement for which Licensor
is required to provide indemnification hereunder.
13.2.3 Licensor shall, upon a decision by a court of competent
jurisdiction that the Licensed Products are infringing, which decision impairs
or prevents Licensee's or sublicensees' use of the Licensed Products under the
terms and conditions of this Agreement, at Licensor's sole cost, (i) make
modification(s) to the Licensed Product(s) so that they are non-infringing, (ii)
secure a non-infringing license for the use of the Licensed Products by Licensee
and sublicensees, or (iii) provide an alternative solution(s), at no additional
cost to Licensee,
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enabling the standard use or application(s) development per the terms and
conditions of this Agreement by Licensee and sublicensees.
13.2.4 Licensor shall refund a pro rata portion of the Fee and End
Product Royalties paid by Licensee under this Agreement, based upon a five (5)
year useful life on a straight line basis, if it is unable to provide a remedy
and fails to perform as stated in 13.2.3 above and such refund shall constitute
complete and full satisfaction of Licensor's obligation's under this Section 13.
13.2.5 THE FOREGOING STATES THE ENTIRE OBLIGATION OF LICENSOR TO
LICENSEE AND SUBLICENSEES WITH RESPECT TO CLAIM(S) OF INFRINGEMENT.
14. ASSIGNMENT AND SUBLICENSE
14.1 Successors and Assigns. This Agreement is binding on the successors
and assigns of the parties; provided, that this Agreement may not be assigned by
either party without the prior written consent of the other party, except as
provided in this Section 14.
14.2 Assignment by Licensor. Notwithstanding Section 14.1, the rights and
obligations of Licensor may be assigned, without the consent of Licensee, by
Licensor to any corporation which is a wholly owned subsidiary or parent of
Licensor, which survives a merger in which Licensor participates and does not
independently survive or to any corporation or other person or business entity
which acquires all or substantially all of the Licensed Products from Licensor.
14.3 Assignment by License. Notwithstanding Section 14.1, all the rights
and obligations of Licensee under this Agreement may be assigned, without the
consent of Licensor, by Licensee to (i) any corporation or other business entity
which is a wholly owned subsidiary or parent of Licensee or which survives a
merger in which Licensee participates and does not independently survive, or
(ii) to any corporation or other person or business entity which acquires all or
substantially all of the assets of Licensee, or (iii) to any partner or
shareholder of Licensee, provided the assignee under (i), (ii) or (iii) agrees
to be bound by and any assume all of the obligations of Licensee hereunder.
14.4 Sublicenses. Notwithstanding Section 14.1, Section 2.6, or Section
8.1, Licensee may license or sublicense (each, a "Sublicense"), exclusively or
nonexclusively, in whole or in part, the rights of Licensee under this Agreement
to distribute Licensed Programs (or derivatives thereof) in Object Code form to
End Users in the Permitted Market, without the consent of Licensor, to any
corporation, person or business entity ("Sublicensee") to which Licensee sells,
licenses or sublicenses the rights to use, adapt, modify, reproduce, market,
promote, distribute, license and/or sublicense one or more End Products and/or
Derivative Works based on such End Product(s); provided, that such Sublicensee
shall have agreed in writing to perform, with respect to the Sublicense, the
same obligations Licensee has agreed to perform under Sections 5, 6, 11, 13 and
14 of this Agreement. Except as expressly provided in Section 2.2.5, the rights
that Licensee is authorized to so license or sublicense pursuant to a Sublicense
do not include any right to use, adapt, modify, or reproduce the Licensed
Programs in Source Code form, in whole or in part.
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15. NOTICES
Service of all notices under this Agreement to Licensor shall be effective
only upon the third (3rd) day after mailing, if mailed by registered mail,
return receipt requested, or upon delivery, if personally delivered, or
delivered by a national overnight courier service, and receipted for as follows:
SalesLogix Corporation, 0000 X. Xxxxxx Xxxxxx Xx., Xxxxx 000. Xxxxxxxxxx, XX
00000, Attention: President, with a copy to Xxxxxx Xxxxxxx, P.A. 0000 Xxxxx
Xxxxxxx, Xxxxx 0000, Xxxxxxx, Xxxxxxx 00000, Attention: Xxxxxx X. Xxxxxx.
Service of all notices under this Agreement to Licensee shall be effective only
upon the third (3rd) day after mailing, if mailed by registered mail, return
receipt requested, or upon delivery, if personally delivered, or delivered by a
national overnight courier service, and receipted for as follows: The XxXxxxxx
Corporation, 0000 Xxxxxxx Xxxx., Xxxxx 000, Xxxxxx Xxxxx, Xxxxxxxxxx, 00000
Attention: President. Any party may change its address for service of notice by
written notice to the other.
16. UNFORESEEN EVENTS
Notwithstanding anything else in this Agreement, no default, delay or
failure to perform on the part of either party shall be considered a breach of
this Agreement (other than nonpayment of money or breach of confidentiality
provisions) if such default, delay or failure to perform is shown to be due
entirely to causes beyond the reasonable control of the party charged with a
default, including, but not limited to, causes such as strikes, lock-outs or
other labor disputes, riots, civil disturbances, actions or inactions of
governmental authorities or suppliers, epidemics, war, embargoes, severe
weather, fire, earthquakes, acts of God or the public enemy or nuclear
disasters.
17. SEVERABILITY
To the fullest extent possible each provision of this Agreement shall be
interpreted in such fashion as to be effective and valid under applicable law.
If any provision of this Agreement is declared void or unenforceable for
particular facts or circumstances, such provision shall remain in full force and
effect for all other facts or circumstances. If any provision of this Agreement
is declared entirely void or unenforceable, such provision shall be deemed
severed from this Agreement, which shall otherwise remain in full force and
effect.
18. ENTIRE AGREEMENT; MODIFICATION
This Agreement, together with the Exhibits hereto, constitutes the entire
agreement between the parties with respect to the transactions contemplated
herein, and supersedes all proposals, oral or written, all negotiations,
conversations or discussions between the parties relating to this Agreement and
all past course of dealing or industry custom, and no representations,
warranties, inducements or oral agreements have been made by any party except as
expressly set forth herein or in other contemporaneous written agreements. This
Agreement may not be changed, modified or rescinded, except in writing, signed
by all parties hereto, and any attempt at oral modification of this Agreement
shall be void and of no effect.
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19. GENERAL TERMS AND CONDITIONS
19.1 Governing Law. The validity and performance of this Agreement shall be
governed by and construed in accordance with the laws of the State of Arizona,
excluding that body of law applicable to choice of law.
19.2 Headings. Headings included in this Agreement are for convenience only
and are not to be used to interpret this Agreement.
19.3 Waiver. The failure of either party to enforce at any time any of the
provisions hereof or exercise any right or option hereunder shall not be
construed to be a waiver of the right of such party thereafter to enforce any
such provisions or exercise such right or option.
19.4 No Joint Venture. This is a license agreement. No agency, partnership,
joint venture or other Joint relationship is created hereby. Licensee does not
extend to Licensor or Licensor's agents or distributors any authority of any
kind to bind Licensee in any respect whatsoever. Licensor does not extend to
Licensee, its agents or distributors, or sublicensees any authority of any kind
to bind Licensor in any respect whatsoever.
19.5 Attorneys' Fees. In any litigation or arbitration between parties, the
prevailing party shall be entitled to reasonable attorneys' fees and all costs
of proceedings, experts, investigations and related expenses, incurred in
enforcing, or pursuing other remedies with respect to, this Agreement, provided
that notice and an opportunity to cure pursuant to Section 7 was provided, to
the extent applicable.
19.6 Export. Licensee shall not export any Licensed Product to any country
for which the United States Government or any agency thereof requires an export
license or other governmental approval without first obtaining such license or
approval.
EXECUTED BY THE PARTIES AS PROVIDED BELOW:
EFFECTIVE DATE: FEBRUARY 19, 1997
Licensee: The XxXxxxxx Corp Licensor:
SALESLOGIX CORPORATION
By: /s/ Xxxxxx (illegible) By: /s/ Xxxxx X. Xxxxxxxxxx
----------------------- ------------------------
Title: President Title: V.P. Finance
-------------------- ---------------------
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EXHIBIT 1
DESCRIPTIONS OF LICENSED PROGRAMS AND LICENSED MATERIALS
1. Source code and Object code for all program pieces and parts of latest
version of Prospector (License Program) as of the effective date of this
agreement and third party products compatible with Visual Basic 3.0
programming language on media that is compatible with personal computers
(IBM compatible) operating with the DOS/Win31 operating systems.
2. Source code and Object code for all program pieces and parts of latest
version of Prospector (License Program) as of the effective date of this
agreement and third party products compatible with Visual Basic 4.0
programming language on media that is compatible with personal computers
(IBM compatible) operating with the Windows95 operating systems.
3. Any other Source and Object Code developed for or within the License
Programs that are not apparent to the end user operating the product that
is available and might have been used in prior releases or versions of the
license product.
4. On-line and printable user and administration documentation on media
compatible with personal computers (IBM compatible) operating with the
DOS/Win31 operating system.
5. Programs, database files, and data for the bug tracking system on media
compatible with personal computers (IBM compatible) operating with the
DOS/Win31 operating system.
6. Any other technical notes and documentation related to the design,
development, support, and maintenance of the license programs or license
materials on media compatible with personal computers (IBM compatible)
operating with the DOS/Win31 operating system.
7. Any source and object code developed as utilities for support and
maintenance of the license programs on media compatible with personal
computers (IBM compatible) operating with the DOS/Win31 operating system.
This would include functions for the creation of installation and security
disks for the license programs.
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EXHIBIT 2
ACCEPTANCE CRITERIA
1. Licensor will perform a complete review of the license programs functions
to demonstrate the use and the navigation of the system.
2. Licensor will operate license programs on personal computer (IBM
compatible) operating in the DOS/Win31 and Windows95 operating systems.
3. License program will compile and link into a run file on personal computer
(IBM compatible) operating in the DOS/Win31 operating system.
4. Licensor will explain and review source code of license programs and
related third party licensed products to demonstrate that included with the
licensed product are all the parts necessary to allow a reasonably
competent programmer to understand and use the source code for the license
product.
5. Licensor will explain and review source code of license materials (such as
user documentation and internal technical notes) to demonstrate that
included with the licensed materials are all the parts necessary to allow
someone proficient with the tools (Pagemaker 5.0) used to create license
materials, to use and maintain the license materials
6. Licensor will explain and review the sales and training materials to
demonstrate that included with the License Product are all the parts
necessary to allow someone proficient with the tools used to create the
sales and training materials, to use and maintain the sales and training
materials.
