OPTUMSOFT INC. License Agreement
Exhibit 10.16
OPTUMSOFT INC.
This License Agreement (this “Agreement”) is entered into as of November 30, 2004_ (the “Effective Date”) by and between Optumsoft, Inc., a California corporation with its principal offices at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ (“Optumsoft”), and Arastra, Inc., a California corporation with its principal offices at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇, ▇▇ ▇▇▇▇▇ (“Licensee”). The parties agree as follows:
1. License Grant. Subject to the terms and conditions of this Agreement, Optumsoft grants Licensee a non-exclusive license to install, download, modify and/or use the software product described on Exhibit A hereto (together with any accompanying documentation, the “Software”), only in the manner and for the purpose described in Exhibit A (the “Licensed Use”). The license is also non-revocable and, in the event that Arastra is acquired, may be assigned to the acquiring entity. No rights or licenses in the Software are granted to Licensee other than those rights expressly granted in this Agreement.
2. Licensed Uses. Licensee may install and use the Software for the Licensed Use only on Arastra machines, provided that (a) Licensee shall take reasonable steps to ensure that only employees and consultants of Licensee who have signed NDA’s as defined below) have access to the object code or user interfaces of the Software, and (b) Licensee shall ensure that only the employees shall have access to the source code of the Software, and that all of such employees have signed NDA’s. Licensee may use the Software only for its internal business purposes, and shall not sublicense or distribute the Software or use the Software to provide services to any third party, provided that Licensee may use, distribute and sublicense the Incorporated Software (as defined in Exhibit A) pursuant to the provisions of Exhibit A. Licensee make or have made as many copies of the Incorporated Software as Licensee reasonably desires in connection with its use and distribution of Licensee products incorporating the Incorporated Software. For purposes of this agreement “NDA” means an enforceable written agreement pursuant to which a consultant or employee who has access to the Software as a result of their relationship with Licensee is required to keep Confidential Information of Optumsoft (as defined below) strictly confidential, and pursuant to which such employee or consultant’s inventions relating to Software will be owned by or assigned to Optumsoft. The Arastra employee agreement is acceptable as an NDA under this definition.
3. Ownership. Optumsoft and its licensors retain all title to and, except as expressly and unambiguously licensed herein, all rights and interest in (i) the Software, all copies, modifications, and derivative works thereof (by whomever produced), and (ii) all copyright rights, patent rights, trade secret rights and all other intellectual property and proprietary rights anywhere in the world in the Software. The Software is licensed to Licensee and is not sold. Licensee specifically acknowledges that Optumsoft is granting the license herein in consideration of its right to own any improvements, corrections, or modifications to the Software, and any derivative works thereof, made by or for Licensee. Accordingly, any modifications to or derivative works of the Software made by Licensee and its employees or consultants shall be works made for hire, shall be the sole property of Optumsoft, and shall be “Software” for all purposes hereunder. If Licensee or its consultant is nevertheless deemed to be the owner of any such works, it agrees to sign (and to cause its employees and consultants to sign) such assignments as are to vest ownership of such works in Optumsoft. Licensee agrees to deliver copies of all improvements, corrections, modification, and derivative works whenever requested by Optumsoft.
4. Restrictions and Cooperation. Licensee agrees to cooperate with Optumsoft and its licensors in connection with their efforts to protect their copyright and other legal rights in the Software. Optumsoft may, from time to time, request the implementation of additional security measures for the Software, and Licensee shall cooperate with such measures. In addition, Licensee agrees to execute (or cause its employees or consultants to execute) any applications, assignments, or other documents or perform any other acts reasonably requested by Optumsoft in order to assist Optumsoft in securing and protecting its ownership of works created by or for Licensee that are property of Optumsoft pursuant to Section 3 hereof.
5. Consideration. The Licenses herein are granted free of any license fees and royalties, subject to Licensee’s compliance with all of the covenants herein set forth, including without limitation the provisions of Section 3 and 4.
6. Support and Maintenance. Optumsoft shall have no support or maintenance obligations to Licensee with respect to the Software, but shall deliver such modifications, improvements, additions, updates and upgrades as it determines in Optumsoft’s sole discretion to make available to Licensee, all of which shall be “Software” for all purposes hereunder.
7. Indemnities. Licensee shall defend, indemnify and hold Optumsoft harmless from and against any and all damages, liabilities, costs and expenses (including, without limitation, attorneys’ fees) (“Losses”) arising out of Licensee’s breach of its obligations under this Agreement, Optumsoft’s enforcement of its rights hereunder, and any third-party claims resulting from Licensee’s distribution to third parties of Incorporated Software. In addition, each party (the “Indemnifying Party”) agrees to indemnify there other party (the “Indemnified Party”) from and against any and all Losses resulting from a third-party claim that the Software violates any patent, copyright or trade secret rights of such third party, if and only to the extent such claim results from a grossly negligent or intentional violation of such third party’s rights by the Indemnifying Party or any employee or consultant given access to the Software by such Indemnifying Party.
8. Term and Termination. This Agreement will become effective on the Effective Date and will remain in force until terminated by Arastra by it giving written notice of termination to the Optumsoft. Licensee agrees to destroy all copies of the Software and any confidential information of Optumsoft in its possession immediately upon any termination of this Agreement and, if requested by Optumsoft, to provide a certificate of such destruction signed by an officer of Licensee.
9. Confidentiality. Licensee acknowledges that the Software contains valuable trade secrets of Optumsoft and other information proprietary to Optumsoft and its licensors. Licensee shall: (i) keep confidential such trade secrets and proprietary information, including without limitation all information concerning ideas and algorithms related to the Software (ii) disclose such information only to its employees and agents to the extent required to use the Software under the terms of this Agreement and (iii) bind its employees, consultants, agents and other third parties in writing to maintain the confidentiality of such trade secrets and proprietary information and not use or disclose such information except as permitted in this Agreement.
10. Disclaimer of Warranties. THE SOFTWARE IS PROVIDED “AS IS” WITHOUT ANY WARRANTY OF ANY KIND INCLUDING. WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT. OPTUMSOFT DOES NOT WARRANT THAT THE SOFTWARE IS ERROR-FREE OR THAT IT WILL OPERATE WITHOUT INTERRUPTION. OPTUMSOFT DOES NOT WARRANT GUARANTEE OR MAKE ANY REPRESENTATION REGARDING THE USE, OR THE RESULTS OF THE USE OF THE SOFTWARE INCLUDING, WITHOUT LIMITATION, THE CORRECTNESS, ACCURACY OR RELIABILITY OF SUCH USE OR RESULTS. LICENSEE ACKNOWLEDGES AND AGREES THAT OPTUMSOFT IS NOT RESPONSIBLE FOR AND WILL HAVE NO LIABILITY FOR HARDWARE, SOFTWARE OR OTHER ITEMS OR ANY SERVICES PROVIDED BY ANY PERSONS OTHER THAN OPTUMSOFT.
11. Limitation of Liability. TO THE MAXIMUM EXTENT PERMITTED BY LAW, OPTUMSOFT WILL NOT BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR (i) ANY AMOUNTS IN EXCESS IN THE AGGREGATE OF THE AMOUNTS PAID BY LICENSEE FOR THE SOFTWARE, (ii) ANY LOST DATA OR OTHER SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY CHARACTER INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF GOODWILL, WORK STOPPAGE, COMPUTER FAILURE OR MALFUNCTION. LOSS OF DATA, OR ANY AND ALL LOST PROFITS, EVEN IF OPTUMSOFT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR (iii) THE COST OF PROCURING SUBSTITUTE GOODS, SERVICES OR TECHNOLOGY. THE LIMITATION OF LIABILITY SET FORTH IN THIS SECTION 11 SHALL NOT APPLY TO THE EXTENT PROHIBITED BY APPLICABLE LAW.
12. Compliance with Laws. Licensee shall be solely responsible for complying with all applicable laws, statutes, rules, regulations and ordinances of the country or territory (“Territory”) in which Licensee uses the Software and shall indemnify Optumsoft for any claims, damages or costs arising from any claim related to or arising from violation of such laws, statutes, rules, regulations or ordinances by Licensee in relation to the Software or this Agreement. If Licensee receives any notice or becomes aware of any violation of any law, statute, rule, regulation or ordinance of the Territory by the Software or the use thereof, Licensee shall promptly notify Optumsoft of such notice or violation.
13. Export. Licensee represents, warrants and agrees that it will not, directly or indirectly, export, re-export or transmit the Software or any part thereof to any country in which such export, re-export or transmission is restricted by any applicable U.S. regulation or statute, or to Cuba, North Korea, Iran, or Sudan or to any Group D:1 or E:2 country (or any national of such country) specified in the current NOI to Part 740 of the U.S. Export Administration Regulations (or any successor regulations or supplement) without the prior written consent of both Optumsoft and, if required, of the Bureau of Export Administration of the U.S. Department of Commerce, or such other governmental entity as may have jurisdiction over such export or transmission. Licensee shall otherwise comply with all applicable export control laws of the United States and the Territory.
14. Miscellaneous. A party’s failure to exercise or its delay in exercising any rights hereunder will not be deemed to be a waiver of such right. If any provision of this Agreement shall be held by any court of competent jurisdiction to be unenforceable or invalid, that provision shall be limited or eliminated to the minimum extent necessary so that this Agreement shall otherwise remain in full force and effect and enforceable. This Agreement shall be construed pursuant to the laws of the State of California and the United States without regard to conflicts of laws provisions thereof and without regard to the United Nations Convention on Contracts for the International Sale of Goods. Licensee irrevocably submits to the jurisdiction of any state or federal court sitting in Santa ▇▇▇▇▇ County, California, United States of America, and consents to venue in such forum with respect to any action or proceeding that relates to this Agreement. No amendment to or modification of this Agreement will be binding unless in writing and signed by a duly authorized officer of Optumsoft. The provisions of Sections 3-5 end 7-11 and this Section 14 shall survive termination of this Agreement. This Agreement is in the English language only, which language shall be controlling and any revision of this Agreement in any other language shall not be binding. Both parties agree that this Agreement is the complete and exclusive statement of the mutual understanding of the parties and supersedes and cancels all previous written and oral agreements and communications relating to the subject matter of this Agreement; provided, however, that if Licensee has manually executed (or in the future manually executes) another agreement with Optumsoft governing Licensee’s use of the Software, then to the extent that such other agreement contains terms and conditions additional to or in conflict with the term and conditions hereof, such other agreement will prevail.
In witness whereof, the parties hereto have executed this Agreement as of the Effective Date.
| Optumsoft, Inc. | Arastra, Inc. | |||||
| By | /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ |
By | /s/ Andreas Bechtolsheim | |||
| Name | ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ |
Name | Andreas Bechtolsheim | |||
| Title |
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Title | Director | |||
EXHIBIT A
Description of Software:
The computer software system called TACC, computer object schema compiler and supporting run-time framework software (in source and object code format) and associated documentation (the “Software”). The term “Software” does not include data-compiler output resulting from Licensee-specified inputs, which shall be the property of Licensee. To the extent run-time software is incorporated in object code format in one or more software products of Licensee, it shall be “Incorporated Software” hereunder.
Licensed Use: The Software may be used for internal business purposes and modified. Licensee may sublicense Incorporated Software directly or through distributors to end users pursuant to distribution agreements and end-user licenses containing reasonable and customary restrictions on use. Licensee shall ensure that the source code of the Software is not disclosed to or used by anyone except the Employees or Consultants covered by an NDA, and shall not copy, use, disclose, distribute, sell or sublicense any portion of the Software except as expressly permitted in the License Agreement, including this Exhibit A.