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Exhibit 10.14
ISV SOFTWARE LICENSE AGREEMENT
THIS ISV SOFTWARE LICENSE AGREEMENT is entered into this 27th day of
April, 1999 (the "Effective Date") by and between BEA WEBXPRESS, INC., a
Delaware corporation with principal offices at 000 Xxxxxxxxxx, 00xx Xxxxx, Xxx
Xxxxxxxxx, Xxxxxxxxxx 00000 ("WebXpress") and CALICO COMMERCE, INC., a Delaware
corporation with principal offices at 000 X. Xxx Xxxxxx Xxxxxx, Xxxxx 000, Xxx
Xxxx, Xxxxxxxxxx 00000 ("Licensee").
RECITALS
WHEREAS, WebXpress desires to grant to Licensee, and Licensee desires to
receive from WebXpress, a worldwide, non-exclusive license to integrate
WebXpress's proprietary software in object code format into Integrated Products
(as hereinafter defined), and to distribute such WebXpress software as
integrated into Integrated Products, all in accordance with the terms of this
Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants
contained herein, the parties agree as follows:
AGREEMENT
1. DEFINITIONS.
For purposes of this Agreement the following terms shall have the meanings
set forth below.
1.1 "AFFILIATE" means an entity controlling, controlled by, or under
common control with Licensee. For purposes of this definition, "control" or any
correlative form thereof, means the ownership of more than fifty percent of the
voting stock of such entity, or if such entity is not a corporation, the
ability to control the day-to-day operations and business of such entity.
1.2 "DISTRIBUTOR" means an Affiliate, or third party distributor or
reseller, appointed by Licensee under the terms of this Agreement, who acquires
Integrated Products from Licensee solely for the purpose of distributing such
Integrated Products to End-Users, and not for such party's internal business
purposes. Any Distributor who seeks to make use of any Integrated Product for
its own internal business purposes must do so under the terms of an End-User
License Agreement.
1.3 "DISTRIBUTION AGREEMENT" means a written agreement between Licensee
and a Distributor, signed by both parties, covering the distribution by such
Distributor of any Integrated Product to End-Users, which agreement is
consistent with, and no less protective of WebXpress's proprietary and
intellectual property rights, than the terms of this Agreement.
1.4 "END-USER" means a person or entity who acquires Integrated Products
from Licensee or a Distributor for such person or entity's internal business
purposes, and not for sale, resale, lease or any other form of distribution to
third parties.
[***] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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1.5 "END-USER LICENSE AGREEMENT" means a written agreement between either
Licensee or a Distributor, and an End-User, which agreement is either signed by
both parties or is in "shrinkwrap" or "clickwrap" form, covering the licensing
of an Integrated Product to such End-User. Such agreement must be consistent
with, and no less protective of WebXpress's proprietary and intellectual
property rights in the WebXpress Software, than the terms of this Agreement.
Without limitation, an End-User License Agreement must contain terms consistent
with the applicable provisions of Section 2 of this Agreement.
1.6 "INTEGRATED PRODUCT" means an application software product created by
Licensee through the integration of WebXpress Software with application
software programs proprietary to Licensee ("Licensee Applications"). All
Integrated Products are subject to the restrictions on development, use and
distribution set forth in Section 2 of this Agreement. The Integrated Products
covered by this Agreement are described in greater detail in Schedule B,
attached hereto and made a part hereof.
1.7 "WEBXPRESS SOFTWARE" means the machine-readable, compiled, object
code form of WebXpress's proprietary software and associated documentation. The
specific WebXpress Software covered by this Agreement is set forth on Schedule
A, attached hereto and made a part hereof. Provided that Licensee is not in
material breach of this Agreement and is current in its payment of annual
support fees, the WebXpress Software covered by this Agreement shall also
include the object code form of any subsequent releases or successor products
of the WebXpress Software set forth on Schedule A, and any modifications
(including bug fixes, error corrections, enhancements and updates) to which
Licensee may be entitled pursuant to the terms Schedule E.
2. LICENSE GRANT.
2.1 LICENSE TO REPRODUCE AND DISTRIBUTE. Subject to the terms and
conditions of this Agreement, WebXpress hereby grants to Licensee, under
WebXpress's intellectual property rights in and to the WebXpress Software, a
worldwide, non-exclusive, non-transferable license: (i) to integrate the
WebXpress Software into Integrated Products including, but not limited to,
using the WebXpress Software to make the Integrated Products extensible to
third party applications and data; (ii) to reproduce the WebXpress Software as
so integrated into Integrated Products; and (iii) to distribute the WebXpress
Software as integrated into Integrated Products solely to End-Users who are
subject to an End User Agreement and Distributors as set forth in section 2.2
below. Licensee shall make no use of any copies of the WebXpress Software
except as provided in this Section 2.1. Licensee may sublicense the
distribution rights granted under this Section 2.1 solely as described in
Section 2.2. All rights not specifically granted herein shall be retained by
WebXpress.
2.2 SUBLICENSING. WebXpress grants to Licensee the right to appoint
Distributors to distribute the Integrated Products to End-Users. All
Distributors appointed by Licensee must execute a Distribution Agreement.
Licensee will use reasonable commercial efforts to ensure that such
Distributors comply with the terms of their respective Distribution Agreements
and will inform WebXpress promptly of any known violation, infringement or
breach which impacts the Integrated Products.
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2.3 RESTRICTIONS. Licensee's rights under Section 2.1 are, without
limitation on any other restrictions set forth in this Agreement, subject to the
following limitations and restrictions:
(i) Each Integrated Product made available for distribution to
End-Users must be developed so that the WebXpress Software and any of its API's
are accessible to the End-User only as allowed by use of an appropriate
license key issued by WebXpress and only for use related to the Integrated
Product;
(ii) Each and every End-User Agreement and each and every
Distributor Agreement shall provide that the End-User or Distributor, as the
case may be, may not under any circumstances attempt, or knowingly permit or
encourage others to attempt to decompile, decipher, disassemble, reverse
engineer or otherwise decrypt or discover the source code of all or any portion
of the Integrated Product, including the WebXpress Software embedded therein;
(iii) Each and every End-User Agreement shall provide that the
End-User may not under any circumstances use the WebXpress Software or any of
its API's in any manner except indirectly in connection with the use of the
Licensee Application portion of the Integrated Product, and that the End User
may not run any third party software applications on the WebXpress Software or
any of its API's, without first purchasing a license for such use from
WebXpress;
(iv) Licensee may not, under any circumstances, distribute the
WebXpress Software or any of its API's as standalone products;
(v) Licensee shall not integrate the WebXpress Software with any
products other than the Integrated Products without first obtaining WebXpress's
prior written consent.
2.4 LICENSEE CERTIFICATION. Licensee represents and warrants to and for
the benefit of WebXpress that each Integrated Product contains a significant
enhancement of features and/or functionality to the WebXpress Software embedded
therein, and that each Integrated Product is substantially different from any
of WebXpress's products and does not compete with any current WebXpress
products.
2.5 PROPRIETARY NOTICES. Licensee shall not remove, efface or obscure any
copyright notices or other proprietary notices or legends from any WebXpress
Software or WebXpress material provided hereunder, and shall reproduce all such
notices and legends when incorporating the WebXpress Software into the
Integrated Products.
2.6 BRANDING AND QUALITY CONTROL PROVISIONS.
2.6.1 "WEBXPRESS CHARGED" SEAL. Calico shall reproduce the software
without removing any copyright notices of other proprietary notices or legends.
2.6.2 QUALITY CONTROL PROVISIONS. The Licensee Application(s) shall
make commercially reasonable efforts to ensure that its Integrated Products be
of at least the same quality as Licensee's other products of a similar nature,
or, if Licensee has no other products of a similar nature, the Licensee's
Applications shall be of at least the same quality as the average quality of
other products of a similar nature which are generally available to the public.
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2.6.3 License agrees to include a referral to the WebXpress website
on the Licensee's website.
2.7 OWNERSHIP. The WebXpress Software is licensed, not sold to Licensee.
Except as specifically licensed to Licensee hereunder, WebXpress retains all
right, title and interest, including all intellectual property rights, in and
to the WebXpress Software.
2.8 EVIDENCE OF COMPLIANCE. Upon request of WebXpress, Licensee shall
promptly, and in any event within thirty (30) days, provide WebXpress with any
and all evidence reasonably necessary to confirm Licensee's compliance with the
provisions of Sections 2.1 through 2.6.
3. ROYALTIES AND SUPPORT FEES.
3.1 ROYALTY AND SUPPORT FEES. Licensee shall owe to WebXpress royalties
and, if Licensee so elects, support fees as set forth on Schedule C. All
royalties and support fees will be paid on a calendar quarterly basis within 30
days after the end of the quarter based upon Net Revenues. Included with the
payment, Licensee will provide WebXpress a report containing the number of
customers (including End-Users, ISV's and Distributors) receiving the Integrated
Product and the quantity shipped in the previous quarter. The report will
include shipments of marketing, demonstration, training and customer evaluation
copies for which no royalties will be owed.
3.2 AUDIT. Licensee shall maintain complete and accurate accounting and
distribution records, in accordance with generally accepted accounting
practices, to support and document royalties payable in connection with this
Agreement. Such records shall be retained for a period of three (3) years after
the royalties which relate to such records have been accrued and paid. Licensee
shall, upon written request from WebXpress, provide access to such records to an
independent auditor chosen by WebXpress for the purposes of audit. If any such
audit discloses a shortfall in payment to WebXpress of more than five percent
(5%) for any quarter, Licensee agrees to pay or reimburse WebXpress for the
expenses of such audit. If any such audit discloses a shortfall in payment to
WebXpress of more than fifteen (15%) for any quarter, WebXpress may terminate
this Agreement.
3.3 TAXES. Licensee shall complete the Resale Certificate attached in
Schedule D. Licensee agrees to provide WebXpress with further documentation, as
reasonably necessary, supporting such status. Licensee shall be responsible for
any sales or use or other taxes (other than taxes based on WebXpress's net
income) to the extent that any such taxes may arise in connection with this
Agreement.
4. WARRANTIES AND SUPPORT
4.1 LIMITED WARRANTY. WebXpress warrants that for a period of ninety (90)
days following delivery to Licensee, the WebXpress Software will perform
substantially in accordance with the accompanying WebXpress Documentation.
WebXpress does not warrant that the WebXpress Software will be error-free or
will operate without interruption. Licensee's exclusive remedy for breach of
the warranty contained in this Section 4.1 shall be, at WebXpress's discretion,
the correction of any such failure to perform, or refund of the license fee
paid by Licensee with respect to such non-conforming WebXpress Software.
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4.2 INTELLECTUAL PROPERTY AND VIRUS WARRANTY. WebXpress, to the best of
it's knowledge, warrants that the WebXpress Products do not infringe upon the
intellectual property rights, including but not limited to the patent,
trademark, trade secret, or copyright rights, of Licensee or any third party.
WebXpress warrants that it shall take all steps necessary, consistent with the
established industry standards in effect at the time, to insure that any
products (including modifications, corrections, and enhancements) provided
through WebXpress shall, when delivered to Licensee, be free of any disabling
codes or instruction, or any virus or other contaminant, that may be used to
access, modify, delete, damage or disable Licensee or End-User's system or data,
damage such systems or data, or disrupt Licensee or End-User's business.
4.3 YEAR 2000 COMPLIANCE. WebXpress warrants that the WebXpress
Software, when used in accordance with its associated documentation, will be
Year 2000 Compliant, WebXpress shall have no liability and expressly disclaims
any warranties in connection with any third party or Licensee's hardware or
systems, any third party or Licensee software, and the operation of any
WebXpress Software with any third party or Licensee's hardware or systems,
third party or Licensee software or equipment not supplied by WebXpress. In the
event of any breach of the warranty set forth in this Section 4.3, WebXpress
shall use best reasonable efforts to bring such non-conforming WebXpress
Software into Year 2000 Compliance at an additional cost to Licensee as soon as
practicable. In the event WebXpress is unable to do so, WebXpress shall refund
to Licensee fees paid to WebXpress in connection with such WebXpress Software.
The remedies provided in this Section 4.3 shall be the sole and exclusive
remedies available to Licensee, and the sole and exclusive obligation of
WebXpress, for a breach of the warranty set forth in this Section 4.3. For the
purpose of this Section 4.3, "Year 2000 Compliant" means software that has user
interfaces, date data fields, processing logic and outputs that correctly
recognize, process and otherwise support date data with respect to dates
occurring on or after January 1, 2000, provided that all other hardware,
software or firmware used in conjunction the software being evaluated for
compliance properly exchanges accurate and properly formatted date data with
the software being evaluated for compliance.
4.4 WEBXPRESS WARRANTY DISCLAIMER. EXCEPT AS EXPRESSLY SET FORTH IN
SECTION 4.1, 4.2 AND 4.3, WEBXPRESS HEREBY DISCLAIMS ALL OTHER WARRANTIES
EXPRESS, IMPLIED, OR STATUTORY, WITH RESPECT TO THE WEBXPRESS SOFTWARE,
INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE, AND NONINFRINGEMENT.
4.5 SERVICE AND SUPPORT. Subject to a current annual support contract
being in place and payment of any applicable support fees by Licensee,
WebXpress agrees to provide support and software upgrades as described in
Schedule E.
4.6 END-USER SUPPORT. Licensee shall, at its own expense, be solely
responsible for providing technical support (including without limitation
warranty service) and training to its Distributors and End-Users for the
Integrated Products. Licensee shall ensure that all questions from Distributors
or End-Users regarding the use or operation of the Integrated Products are
addressed to and answered by Licensee.
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5. INDEMNIFICATION.
5.1 WEBXPRESS INDEMNITY. WebXpress shall indemnify, defend and hold
Licensee harmless from and against any claim that the WebXpress Software as
used within the scope of this Agreement infringes any copyright, trademark,
trade secret or patent of any third party, provided that (i) Licensee notifies
WebXpress promptly in writing of the claim; (ii) WebXpress has sole control of
the defense and all related settlement negotiations; and (iii) Licensee
provides WebXpress, at WebXpress's expense, with all necessary assistance,
information, and authority to perform the above.
5.2 EXCLUSIONS. WebXpress shall have no liability for any claim of
infringement based on (i) use of other than the latest commercially available
version of the WebXpress Software provided to Licensee, to the extent the
infringement would have been avoided by use of such version and Licensee has
been given reasonable notice of the need to move to a different version of the
WebXpress Software, (ii) modification of the WebXpress Software by Licensee to
the extent the infringement would have been avoided without such modification;
or (iii) the combination or use of the WebXpress Software furnished hereunder
with materials not furnished by WebXpress to the extent such infringement would
have been avoided by use of the WebXpress materials alone.
5.3 ALTERNATIVES. In the event the WebXpress Software is held to, or
WebXpress believes is likely to be held to, infringe any third party copyright,
trademark, trade secret or patent, WebXpress shall have the right at its sole
option and expense to (i) substitute or modify the WebXpress Software so that
it is non-infringing, while retaining equivalent features and functionality; or
(ii) obtain for Licensee a license to continue using the WebXpress Software
under commercially reasonable terms; or (iii) if (i) and (ii) are not
reasonably practicable, terminate this Agreement as to the infringing WebXpress
Software and return to Licensee any license fees paid by Licensee hereunder
with respect thereto, amortized over a period of three years, which period the
parties agree is represents the useful life of the WebXpress Software. The
foregoing section 5.3 does not in any way limit WebXpress's obligations under
section 5.1.
5.4 SOLE OBLIGATION. The foregoing sections 5.1 through 5.3 state the
sole obligation and exclusive liability of WebXpress, and Licensee's sole
recourse and remedy for any infringements or claims of copyright and patent
infringement by the WebXpress Software.
5.5 LICENSEE INDEMNITY. Except to the extent the below arise from
infringement of such rights by the WebXpress Software, Licensee agrees to
indemnify, defend and hold WebXpress harmless from and against any costs,
losses, liabilities, claims or expenses (including attorneys' fees) arising out
of: (i) any claim that any Integrated Product infringes upon the intellectual
property or proprietary rights of any third party, (ii) the distribution of any
Integrated Product by Licensee or its Distributors; or (iii) the use of any
Integrated Product by and End-User, Distributor or third party.
6. TERM AND TERMINATION.
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6.1 INITIAL TERM. This Agreement shall become effective on the Effective
Date and shall remain in effect for a period of two (2) years thereafter unless
the Agreement is terminated as provided below.
6.2 TERMINATION.
6.2.1 BREACH. If either party defaults in a payment or other
material obligation under this Agreement and, in the case of breaches capable
of cure, fails to completely cure such default for a period of thirty (30) days
after written notice of default from the non-breaching party, the non-breaching
party may terminate this Agreement, in accordance with the provisions of this
Section 6, upon written notice of termination given to the defaulting party.
6.2.2 INSOLVENCY. Notwithstanding anything contained herein to the
contrary, either party may terminate this Agreement immediately by notice to
the other if:
(i) the other ceases to carry on its business; or
(ii) a receiver or similar officer is appointed for the
other and is not discharged within thirty (30) days; or
(iii) the other becomes insolvent, admits in writing its
inability to pay debts as they mature, is adjudicated bankrupt, or makes an
assignment for the benefit or its creditors or another arrangement of similar
import; or
(iv) proceedings under bankruptcy or insolvency laws are
commenced by or against the other and are not dismissed within (30) days.
6.3 EFFECT OF TERMINATION. Upon termination of this Agreement, (i) the
rights and licenses granted to Licensee, pursuant to this Agreement shall
automatically terminate, (ii) Licensee shall certify to WebXpress that all
WebXpress Software subject to this Agreement and in Licensee's possession has
been destroyed or removed from Licensee's equipment except such WebXpress
Software and supporting documentation which is required to meet the support
needs of Licensee's existing customers and (iii) Licensee shall cease to use all
intellectual property of WebXpress except as otherwise set forth in this section
6.3. Within thirty (30) days of termination, Licensee shall provide to WebXpress
a royalty report and pay all royalties accruing as of the date of termination,
in accordance with Section 3.1. All licenses granted to End-User pursuant to
appropriate End-User License Agreements shall survive termination. Sections 1,
2.7, 3, 4.4, 4.6, 5, 6.3, 7, 8 and 9 shall survive the expiration or earlier
termination of this Agreement.
7. CONFIDENTIALITY.
7.1 DEFINITION. For purposes of this Agreement, "Confidential
Information" of a party means information or materials disclosed or otherwise
provided by such party ("Disclosing Party") to the other party ("Receiving
Party") that are identified as confidential or proprietary. "Confidential
Information" does not include that which (i) was known to the Receiving Party,
without restriction and without duty of confidentiality, at the time of
disclosure, as evidenced by the written records of Receiving Party, (ii) is or
becomes part of public knowledge other than as
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a result of any action or inaction of the Receiving Party, (iii) is obtained by
the Receiving Party from an unrelated third party without a duty of
confidentiality, or (iv) is independently developed by the Receiving Party
without reliance upon or use of the Confidential Information of the Disclosing
Party. Without limiting the generality of the foregoing, and notwithstanding
the exclusions hereinbefore set forth, "Confidential Information" includes both
parties software and any information relating to the development, design,
manufacture and specifications of either party's software.
7.2 RESTRICTIONS ON USE AND DISCLOSURE. The Receiving Party shall not
use Confidential Information of the Disclosing Party for any purpose other than
in furtherance of this Agreement and the activities described herein. The
Receiving Party shall not disclose Confidential Information of the Disclosing
Party to any third parties except as otherwise permitted hereunder. The
Receiving Party may disclose Confidential Information of the Disclosing Party
only to those employees, consultants or sub-Licensees who have a need to know
such Confidential Information and who are bound to retain the confidentiality
thereof under provisions (including, without limitation, provisions relating to
nonuse and nondisclosure) no less restrictive than those required by the
Receiving Party for its own comparable Confidential Information. The Receiving
Party shall maintain Confidential Information of the Disclosing Party with at
lease the same degree of care it uses to protect its own proprietary
information of a similar nature or sensitivity, but no less than reasonable
care under the circumstances. Any copies of the Disclosing Party's Confidential
Information shall be identified as belonging to the Disclosing Party and
prominently marked "Confidential."
7.3 LEGAL OBLIGATION TO DISCLOSE. This Agreement will not prevent the
Receiving Party from disclosing Confidential Information of the Disclosing
Party to the extent required by a judicial order or other legal obligation,
provided that, in such event, the Receiving Party shall promptly notify the
Disclosing Party to allow intervention, and shall cooperate with the Disclosing
Party to contest or minimize the scope of the disclosure (including application
for a protective order). Each party shall advise the other party in writing of
any misappropriation or misuse of Confidential Information of the other party
of which the notifying party becomes aware.
7.4 INJUNCTIVE RELIEF. The parties acknowledge that the Confidential
Information are valuable trade secrets and that any unauthorized use or
disclosure of such information would cause WebXpress the Disclosing Party
irreparable harm for which its remedies at law would be inadequate.
Accordingly, the parties acknowledges and agrees that the Disclosing Party
shall be entitled, in addition to any other remedies available to it at law or
in equity, to seek the issuance of injunctive or other equitable relief.
7.5 RETURN OF CONFIDENTIAL INFORMATION. Upon the expiration or earlier
term of this Agreement and upon request of the Disclosing Party, each party (as
Receiving Party) shall immediately return to the Disclosing Party all
Confidential Information of the Disclosing Party embodied in tangible form, or
certify in writing to the Disclosing Party that all such Confidential
Information has been destroyed. The terms of this Section 7 shall survive the
expiration or earlier termination of this Agreement for a period of five (5)
years.
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7.6 SOURCE CODE PROTECTIONS. Licensee shall not under any circumstances
attempt, or knowingly permit or encourage any End-User, Distributor or third
party to decompile, decipher, disassemble, reverse engineer or otherwise
decrypt or discover the source code for the WebXpress Software.
8. LIMITATION OF LIABILITY.
EXCEPT FOR BREACHES OF SECTION 2.1, 2.2, 2.3, 2.5, 4.2 OR SECTION 7, IN NO
EVENT SHALL EITHER PARTY HAVE ANY LIABILITY FOR ANY INDIRECT, INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES IN ANY WAY ARISING OUT OF THIS AGREEMENT AND
HOWEVER CAUSED AND UNDER ANY THEORY OF LIABILITY, INCLUDING BUT NOT LIMITED TO
LOSS OF PROFITS OR LOSS OF DATA, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. EXCEPT FOR BREACHES OF SECTION 2.1, 2.2, 2.3, 2.5,
4.2 OR SECTION 7 AND BOTH PARTIES OBLIGATIONS PURSUANT TO SECTION 5, IN NO
EVENT SHALL EITHER PARTY'S CUMULATIVE LIABILITY ARISING OUT OF THIS AGREEMENT
EXCEED THE AMOUNTS ACTUALLY PAID BY LICENSEE TO WEBXPRESS PURSUANT TO THIS
AGREEMENT. THESE LIMITATIONS SHALL APPLY NOTWITHSTANDING ANY FAILURE OF
ESSENTIAL PURPOSE OF ANY REMEDY.
9. MISCELLANEOUS.
9.1 CONFIDENTIALITY OF AGREEMENT. Both WebXpress and Licensee agree that
the terms and conditions of this Agreement shall be treated as Confidential
Information and that no reference to the terms and conditions of this Agreement
or to activities pertaining thereto can be made in any form without the prior
written consent of the other party; provided, however, that the existence of
this Agreement shall not be treated as Confidential Information and that either
party may disclose the terms and conditions of this Agreement:
(i) as required by any court or other governmental body;
(ii) as otherwise required by law;
(iii) to legal counsel of the parties;
(iv) in confidence, to accountants, banks, proposed investors, and
financing sources and their advisors;
(v) in confidence, in connection with the enforcement of this
Agreement or rights under this Agreement; or
(vi) in confidence, in connection with a merger or acquisition or
proposed merger or acquisition, or the like.
9.2 PRESS RELEASE. Upon mutual agreement, WebXpress and Licensee shall
issue a joint press release announcing the relationship contemplated by this
Agreement with mutual endorsements for Integrated Products and WebXpress
Software.
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9.3 CUSTOMER REFERENCE. The Licensee agrees that WebXpress may disclose
the name of the Licensee as a customer on the WebXpress web site and on other
promotional materials. Licensee further agrees to provide WebXpress with the
following customer reference information for possible use on WebXpress's web
site and on other promotional material in conjunction with the Licensee's name:
(i) a brief marketing summary of the Licensee's Integrated Products under this
Agreement, and (ii) a quotation on how WebXpress's products and/or services
contributed to the success of the Integrated Products under this Agreement.
Licensee agrees to discuss the WebXpress Software with the press, industry
analysts and prospective (non-competitive) customers on a limited basis to be
mutually agreed upon by both parties.
9.4 ASSIGNMENT. Licensee may not assign this Agreement or any rights or
obligations hereunder, by operation of law or otherwise, without the prior
written consent of WebXpress, which shall not be unreasonably withheld.
9.5 NOTICES. All notices between the parties shall be in writing and
shall be deemed to have been given if personally delivered or sent by certified
or registered mail (return receipt) or telecopy to the addresses set forth as
follows, or such other address as is provided by notice as set forth herein:
If to WebXpress to: Contract Administrator
000 Xxxxxxxxxx Xx.
Xxx Xxxxxxxxx, XX 00000
If to Licensee to:
Director, Contract Operations
Calico Technology, Inc.
000 X. Xxx Xxxxxx
Xxx Xxxx, XX 00000
Notice shall be deemed effective upon receipt or, if delivery is not effected
by reason of some fault of the addressee, when tendered.
9.6 GOVERNING LAW; FORUM SELECTION. This Agreement shall be governed by
the laws of the State of California, as applied to agreements made, entered
into and performed entirely in California by California residents. All disputes
arising out of this Agreement shall be subject to the exclusive jurisdiction
and venue of the California state courts of San Francisco County, California
(or, if there is exclusive federal jurisdiction, the United States District
Court for the Northern District of California), and the parties consent to the
personal and exclusive jurisdiction of these courts. This Agreement shall not
be governed by the United Nations Convention on the International Sale of Goods.
9.7 SEVERABILITY. Any term or provision of this Agreement held to be
illegal or unenforceable shall, if possible, be interpreted so as to be
construed as valid, but in any event the validity or enforceability of the
remainder hereof shall not be affected.
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9.8 LEGAL COMPLIANCE. Licensee may not download or otherwise export or
re-export the WebXpress Software or any underlying information or technology
except in full compliance with all Untied States and other applicable laws and
regulations. In particular, but without limitation, none of the Software or
underlying information or technology may be downloaded or otherwise exported or
re-exported (i) into (or to a national or resident of) Cuba, Iran, Iraq, Libya,
North Korea, Syria, or Sudan, or (ii) to anyone on the US Treasury Department's
list of Specially Designated Nationals or the US Commerce Department's Table of
Deny Orders. By licensing the Software, Licensee is agreeing to the foregoing
and Licensee are representing and warranting that Licensee are not located in,
under control of, or a national or resident of any such country or on any such
list.
9.9 WAIVER. The waiver of, or failure to enforce, any breach or default
hereunder shall not constitute the waiver of any other or subsequent breach or
default.
9.10 INDEPENDENT CONTRACTORS. The relationship of the parties hereunder
shall be that of independent contractors, and nothing herein shall create or be
deemed to create a joint venture, partnership, agency or employer/employee
relationship. In no event will either party be permitted to make any agreement,
or represent that it is authorized to make any agreement, on behalf of the
other party, without the prior written consent of such other party.
9.11 THIRD PARTY BENEFICIARY. If Licensee licenses products containing the
RSA Data Security, Inc. ("RSA") products, then the parties agree and
acknowledge that RSA is and shall be a third party beneficiary of WebXpress's
rights and Licensee's obligations under this Agreement
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9.12 ENTIRE AGREEMENT. This Agreement, along with the Schedules
attached hereto which are incorporated herein by reference, sets forth the
entire Agreement between the parties and supersedes any and all prior
proposals, agreements, and representations between them, whether written or
oral. This Agreement may be changed only by mutual agreement of the parties in
writing
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
signed by duly authorized officers or representatives as of the Effective Date.
WEBXPRESS, INC. LICENSEE
By: /s/ XXXXX XXXXXX By: /s/ XXXXXX X. XXXXX
--------------------------------- --------------------------------
Name: Xxxxx Xxxxxx Name: Xxxxxx X. Xxxxx
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Title: Director, Fin. & Admin. Title: VP & CFO
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Date: 4/28/99 Date: 4/27/99
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SCHEDULE A
WEBXPRESS SOFTWARE
WebXpress Software covered by this Agreement:
WebLogic Application Server
WebLogic Application Server with Clustering
License Restriction: Licensee will incorporate code provided by WebXpress into
the Integrated Products which will make the WebXpress Software nonfunctional
without the presence of the Integrated Products.
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SCHEDULE B
INTEGRATED PRODUCTS
Integrated Products covered by this Agreement:
eSales Quote
eSales Loyalty Builder
More Info (Information Wizard)
The following describes the function and purpose of each of the Integrated
Products covered by this Agreement:
eSales Quote:
eSales Quote displays a compelling, individually customized quote presentation
to the customer that unifies customer requirements, configuration and pricing
for delivery to an order entry system. Calico provides the infrastructure to
store and retrieve quotes and configurations.
eSales Loyalty Builder:
eSales Loyalty Builder is a solution which maximizes the long-term value from
your customers and partners by tailoring their entire electronic sales
relationship with your company around their needs and preferences. Features
include custom tailored content, proactive engagement, and customer needs
gathering.
More Info (Information Wizard):
More Info provides sales and marketing information to users during the course
of a product sales session that directly relates to the configuration choices
the user is facing at the moment. Its three basic functions are creating
collections, assigning collections to configuration items and getting relevant
content during a user session.
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SCHEDULE C
ROYALTIES AND SUPPORT FEES
C.1. ROYALTIES:
SERVER BASED ROYALTIES:
Licensee will have the right to purchase the WebXpress Software licensed under
this Agreement at a discount from the then current local list price as follows:
Cumulative License Fees Paid Discount
---------------------------- --------
$[***] - $[***] (introductory pricing) [*]%
$[***] - $[***] [*]%
$[***] - $[***] [*]%
$[***] - $[***] [*]%
$[***] - $[***] [*]%
In addition, Licensee will receive [***]% discounts on purchases of internal
use licenses and WebXpress training courses.
For the initial year of this Agreement, the list price shall not increase. The
list price for the second year of this Agreement shall not increase over the
first year list price by greater than [***] percent and WebXpress shall notify
Licensee of any such increase thirty days prior to the effective date of the
increase.
SITE LICENSE ROYALTIES:
Licensee will pay royalties of [***]% of Net Revenues on any site licenses sold
of the Integrated Product. In the case where the Integrated Products that
include WebXpress Software are sold as a bundle with other Licensee products
whether developed by Licensee or another third party, Net Revenue shall be
calculated by using the proportion of the number of Integrated Products to the
total number of products in the bundle.
For the purposes of this Agreement, "Net Revenues" shall mean all gross
revenues generated by the sale of the Integrated Product, less trade
discounts, taxes, shipping and insurance.
C.2. ANNUAL SUPPORT FEES:
Annual Support Fees are [***]% of royalties. The annual support fees for
subsequent years will be [***]% of the royalties paid by Licensee under Section
C.1 for copies of the Integrated Product for which Licensee has a maintenance
agreement in place with the End User during such year. Such fees will be
payable on a quarterly basis. Licensee shall provide to WebXpress, along with
each
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payment, a report summarizing the number of End Users with maintenance
agreements that form a basis for such payment.
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C.3. ROYALTY FOR USE OF RSA'S SSL PRODUCT:
Licensee does not elect to license RSA's SSL Products from WebXpress. If in the
future Licensee does elect to license these products, then in addition to the
License fees described above, Licensee must pay $[***] per server and $[***]
per year for unlimited clients to WebXpress pursuant to WebXpress's License
Agreement with RSA.
C.4. COMMITMENT:
On the Effective Date of this Agreement, Licensee will prepay license fees of
$[***], which will be applied towards purchases of WebXpress Software
licensed under this agreement. This payment is non-cancelable and nonrefundable.
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SCHEDULE D
RESALE CERTIFICATE
WE HEREBY CERTIFY that we hold a valid seller's permit No. SR GH 99-80335
issued pursuant to laws and regulations governing Sales and Use Tax in the
state of California;
that we are engaged in the business of selling: software
that the products described within this ISV Software License Agreement, which
we shall license from WEBXPRESS, will be resold by us [licensed to our
customers], in accordance with the terms of the Agreement. A Description of the
products to be licensed from WebXpress is contained in the relevant schedule of
the Agreement.
/s/ [Signature Illegible]
---------------------------------------------
(Signature of Purchaser or Authorized Agent)
VP & CFO
---------------------------------------------
(Title)
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SCHEDULE E
SERVICE AND SUPPORT TERMS
WebXpress shall provide product support to Licensee to support its integration
of WebXpress Software into Licensee's applications. Support means that
WebXpress will provide: (a) software upgrades and product enhancements upon
their commercial release, and appropriate documentation with respect thereto,
and (b) technical assistance with respect to the WebXpress Software, including
(i) clarification of functions and features; (ii) clarification of
documentation; (iii) technical support and guidance in the operation of the
WebXpress Software; and (iv) WebXpress Software error analysis and correction.
Major product releases are not covered by the Service and Support contract, and
WebXpress retains the right to determine in its sole discretion if a release
constitutes an upgrade to an existing product or a new product release.
WebXpress will use commercially reasonable efforts to provide error corrections
or work-arounds for the most severe errors as soon as possible and based upon
WebXpress classification of the severity of the error.
Support shall be provided in compliance with Severity definitions and
Escalation guidelines as defined in Sections III and IV of this Schedule.
I. Engineering Contacts -- Licensee will designate no more than 5 individuals
who will be responsible for communicating and escalating support issues
between the companies.
II. Reporting Issues -- Licensee will report support requests via email or
phone as convenient. Licensee agrees to provide WebXpress with all the
necessary information to resolve the reported issue. This may include:
issue classification, test cases for isolating and reproducing the issue
and other issue documentation.
III. Phone coverage -- WebXpress's Support Center is staffed Monday through
Friday from 7:00 a.m. to 7:00 p.m. Pacific Time. For off-hour emergencies,
procedures can be customized to Licensee's specific needs upon mutual
agreement.
IV. Issue Definition --
o SEVERITY 1 -- Issue that impacts Licensee's application development
schedule, or an End-User's production capability. A high severity
issue is an error that causes a major feature of Licensee's product
to be unusable or causes irreparable loss of data and no recovery or
work-arounds are available.
o SEVERITY 2 -- Issue that results when a major feature is operational
but unstable or unreliable. Such error would not stop development.
o SEVERITY 3 -- Enhancements or defects that are targeted for updates,
but do not result in the loss of functionality in a major feature.
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IV. Escalation Guidelines - WebXpress's assigned Engineers will adhere to the
following timeframes for internal escalation of Licensee's support
requests in order to ensure maximum service responsiveness.
---------------------------------------------------------------------------------------
ESCALATION POINT
SEVERITY DEFINITION SEVERITY 1 SEVERITY 2 SEVERITY 3 FOR SEV. 1 ISSUES
---------------------------------------------------------------------------------------
Initial Response 4 hours 8 hours 12 hours N/A
---------------------------------------------------------------------------------------
Xxxxx 0 - problem determination 24 hours 2 days 4 days Support Manager
---------------------------------------------------------------------------------------
Level 2 - problem isolation 2 days 1 week 2 weeks Support Manager
---------------------------------------------------------------------------------------
Level 3 - Resolution* 7 days 3 weeks N/A Support Manager
---------------------------------------------------------------------------------------
* "Resolution" means a patch or workaround within the stated amount of time
unless otherwise agreed upon by the parties.
V. End-of-Life Product Support - WebXpress agrees to provide product support
to Licensee for the previous two versions of WebXpress products, or 12
months' versions, whichever is greater.
VI. Expanded support or technical assistance is available upon mutual
agreement of the parties at an additional charge in accordance with
WebXpress's then-current policy.
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FIRST AMENDMENT TO
ISV SOFTWARE LICENSE AGREEMENT
This first amendment (this "First Amendment") is entered into as of 28th
October 1999, ("First Amendment Date") between WEBXPRESS, A BEA COMPANY
("WebXpress"), a Delaware corporation having a place of business at 000
Xxxxxxxxxx Xxxxxx, 0xx xxxxx, Xxx Xxxxxxxxx, Xxxxxxxxxx 00000 and CALICO
COMMERCE, INC. ("Licensee"), a Delaware corporation having a place of business
at 000 X. Xxx Xxxxxx Xxxxxx, Xxxxx 000, Xxx Xxxx, Xxxxxxxxxx 00000.
RECITALS
A. WebXpress and Licensee entered into an ISV Software License Agreement,
dated as of April 27, 1999 (the "ISV Agreement"). All capitalized terms used
herein and not defined herein shall have the respective meanings specified in
the ISV Agreement.
B. In accordance with Section 9.12 of the ISV Agreement regarding
amendments to it, the parties now desire to further amend the ISV Agreement as
hereinafter provided.
NOW, THEREFORE, in consideration of the promises included herein and other
good and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto agree as follows:
AGREEMENT
1. License to Reproduce and Distribute. The following sentence is
inserted after the first sentence of Section 2.1 of the ISV Agreement:
Subject to the terms and conditions of this Agreement, Licensee may
also reproduce, use and distribute the WebXpress Software integrated
into Integrated Products for purposes of marketing, demonstration,
training and customer evaluation.
2. Royalty Fees. The last sentence of Section 3.1 of the ISV Agreement is
deleted.
3. Term. Section 6.1 of the ISV Agreement is deleted in its entirety and
replaced with the following:
This Agreement shall become effective on the Effective Date and shall
remain in effect for three years from the First Amendment Date unless
the Agreement is terminated as provided below. Prior to the second
anniversary of the First Amendment Date, Licensee may request that the
parties negotiate pricing terms for the years starting on the fourth
and fifth anniversary of the First Amendment Date, and if the parties
agree on pricing terms, this Agreement shall continue in effect for an
additional two years.
4. Prepayment and License Fees. The "Server Based Royalties" heading and
"Site License Royalties" heading of Section C.1 of the ISV Agreement are deleted
in their entirety and replaced by the following:
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PREPAYMENT AND LICENSE FEES:
Based on Licensee's commitment to prepay $[***] in License Fees, due
Net 30 from the First Amendment Date, Licensee may license the
WebXpress Software listed in Schedule A according to the schedule
below. This $[***] license fee prepayment is non-cancelable and
non-refundable. For purposes of determining the appropriate License
Fee, payment due, WebXpress will include in the cumulative total of
License Fees paid the $[***] Commitment due under Section C.4 of the
ISV Agreement, and also the $[***] in prepaid License Fees due under
this First Amendment, for a total credit of $[***].
Cumulative License Fees Paid License Fee (percent of Net Revenue)
$[***] - $[***] [*]%
$[***] - $[***] [*]%
$[***] - $[***] [*]%
greater than $[***] [*]%
For purposes of this Agreement, "Net Revenues" shall mean all gross
license revenues generated by the licensing of the Integrated Product,
as determined when Licensee's customer is obligated to pay. In
situations where revenue is recognized using the percentage of
completion method for financial statement purposes, gross license
revenues are determined when revenue is recognized. "Net Revenues" are
further defined to mean gross license revenues generated by the
licensing of the Integrated Product, net of channel discounts (which
may be a discount off the list price for the Integrated Product or a
referral fee, but not both) shipping and insurance, and exclusive of
any applicable sales tax or equivalent. For example, if Licensee sells
$100 worth of the Integrated Product to an end-user at a 10% discount
off list (equal to a discounted license fee of $90) and pays a
referral fee to a channel partner of 10% of the discounted license fee
(equal to $9), Licensee's royalty to WebXpress will be based on a Net
Revenue of $81.
When Integrated Products are sold as a bundle with Licensee software
that is not integrated with WebXpress Software, Licensee shall
uniformly allocate discounts on such Integrated Products and other
software, based on the comparison between the list prices of the
Integrated Products and other Licensee software included in the
transaction.
There is no royalty associated with use of the WebXpress Software for
marketing, demonstration, training and customer evaluation purposes.
5. Development License and Fees. WebXpress grants to Licensee a perpetual
(so long as Licensee is in compliance with this Agreement), non-exclusive,
non-transferable, fee-bearing, unlimited user license to use the Developer
Version of the WebLogic Server (the "DEVELOPER SOFTWARE") solely at Licensee
locations and solely for internal testing and development. Any third party
software products or modules supplied by WebXpress may be used solely with the
Developer Software. Licensee may not disclose the results of software
performance benchmarks to any third party without WebXpress's prior written
consent. Licensee may not use the Developer Software for production use and may
not offer it for resale. The Developer Software license fee
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shall be $[***]. The annual Developer Software support fee for 5x12 support
shall be $[***] per year during the initial 3 year term and thereafter shall not
increase by more than 10% of the previous year's fee at any renewal for the
following two years.
6. Support Fees. The following sentence is added to Section C.2:
Licensee may purchase 7x24 Extended Support for selected End Users for
an annual Support Fee of [*]% of the License Fees due for licenses of
the Integrated Product to such End Users.
7. Total Fees Due on First Amendment Date. Licensee shall pay to
WebXpress $[***] in prepaid License Fees, a $[***]Development License Fee, and
an initial $[***] Development Support Fee, for a total of $[***] due Net 30 from
the First Amendment Date. This $[***] payment is non-cancelable and
non-refundable.
8. Integrated Products. Schedule B of the ISV Agreement is amended to add
the following to the list of Integrated Products:
eSales Configurator:
Configurator is an expert system that matches customer requirements
with product attributes, guiding customers to products and services
that meet their needs.
On written notice to WebXpress, Licensee may extend the terms of this
ISV Agreement to include new or successor Licensee electronic commerce
application software products.
9. Notices. In Section 9.5 of the ISV Agreement, the corporate name
"Calico Technology, Inc." is amended to be "Calico Commerce, Inc.", and the
corporate contact title is changed from "Director, Contract Operations" to
"Corporate Counsel."
10. Support. Schedule E of the ISV Agreement is amended to add the
following sections:
VI. International Support. Global support will be provided during
local time in the place where the support call is made, and
otherwise in accordance with the support terms in this Schedule
E.
VIII. Source Code Escrow. WebXpress shall add Licensee as a
beneficiary to the WebXpress source code escrow agreement (the
"Escrow Agreement") with an independent third party escrow agent
in the business of providing escrow services (the "Escrow
Agent"), which agreement shall provide that the Escrow Agent
shall release WebXpress's source code to Licensee if any one of
the following circumstances remains uncorrected for more than 30
days:
(i) appointment of a trustee under Chapter 7 of Title 11 of the
United States Code;
(ii) the making by WebXpress of a general assignment for the
benefit of creditors;
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(iii) WebXpress refuses to make all commercially reasonable
efforts to provide Licensee with the support services
WebXpress is obligated to provide under this Agreement.
The Escrow Agreement shall provide that, upon the release of source
code , WebXpress shall grant to Licensee a worldwide, non-exclusive,
paid-up and royalty-free, perpetual, non-transferable license to use,
reproduce and modify the released source code, solely for the purpose
of supporting and maintaining the WebXpress Software. Licensee shall
pay all reasonable fees and expenses for such escrow arrangement,
including set-up fees, not to exceed seven hundred dollars ($700), and
annual maintenance fees, not to exceed three hundred fifty dollars
($350).
11. Entire Agreement; Effect of Amendment. This First Amendment, together
with the ISV Agreement, constitutes the entire agreement between the parties
with respect to the subject matter hereof. Except as modified by this First
Amendment, all terms and conditions of the ISV Agreement shall remain in full
force and effect.
Each of the undersigned represents and warrants that he or she is duly
authorized to sign this First Amendment on behalf of the party he or she
represents. Each party has read, understands and agrees to the terms and
conditions of this First Amendment. This First Amendment may be executed in any
number of counterparts, all of which shall constitute together one and the same
agreement.
WEBXPRESS, A BEA COMPANY CALICO COMMERCE, INC.
By: /s/ Xxxxxxxx Xxxx By: /s/ Xxxxxxx XxXxxxx
------------------------- -------------------------
Name: Xxxxxxxx Xxxx Name: Xxxxxxx XxXxxxx
------------------------ ------------------------
Title: Division Counsel Title: VP, Marketing
----------------------- -----------------------
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