24
Exhibit 10.1
All sections marked with two asterisks ("**") reflect portions which have been
redacted and filed separately with the Securities and Exchange Commission by
CyberMedia as part of a request for confidential treatment.
SERVICEWARE INC.
Software License and Distribution Agreement
This Software License and Distribution Agreement ("Agreement") is entered into
as of the effective date set forth below the signatures of the parties hereto
("Effective Date"), by and between ServiceWare Inc., a Pennsylvania corporation
having its principal office at ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇ ("ServiceWare"), and CyberMedia, Inc., a Delaware corporation having its
principal office at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇
("Licensee").
ServiceWare has developed and owns the ** for stand-alone personal computers and
the ** (collectively the ("**")) and the ** ("**") products. Licensee wishes to
license from ServiceWare on a non-exclusive basis and for an unlimited term **
and **, with the exception of ** providing functionality excluded in Section
2.4(a) below and ** providing Automated Learning functionality, for the purposes
of ** and sub-licensing and distributing ** and Object Code versions of ** along
with such ** and ** solely embedded in Licensee's products to third parties. In
consideration of ServiceWare granting such license to Licensee and delivering to
Licensee ** and ** in **, Licensee will pay ServiceWare a non-refundable license
fee (as specified in the General Terms and Conditions attached hereto).
NOW THEREFORE, in consideration of and subject to the premises and covenants
contained in the General Terms and Conditions and any Schedules and Amendments
to this Agreement, all attached hereto, which are made an integral part of this
Agreement, and intending to be legally bound, Licensee and ServiceWare have
caused this Agreement to be executed by their duly authorized representatives on
the Effective Date set forth below.
Licensee: CyberMedia, Inc. ServiceWare Inc.
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇ ▇▇▇▇▇
---------------- -------------
(Signature) (Signature)
Name: ▇▇▇▇ ▇▇▇▇▇▇▇ Name: ▇▇▇ ▇▇▇▇▇
---------------- -------------
(Type or Print) (Type or Print)
Title: President and CEO Title: President and COO
------------------ -----------------
(Type or Print) (Type or Print)
Effective Date: September 30, 1997
25
SERVICEWARE INC.
Software License and Distribution Agreement
General Terms and Conditions
1. Definitions. The following defined terms are used in this Agreement.
1.1 "Agreement" is defined in the preamble to this Agreement.
1.2 "Automated Learning" means the creation or updating of knowledge or
information in the ** database without utilizing the authoring capabilities
embedded in **.
1.3 "CIS Software" means software to aid in the process of acquiring and
retaining customers, such as software for managing customer service, internal
helpdesks or support centers, field service, and/or sales automation.
1.4 "CIS Vendors" means companies or business units of companies where the
manufacture or sale of CIS Software is a substantial portion of their revenues.
A partial list of CIS Vendors is attached in Schedule D. For companies with
multiple business units, only those business units which manufacture or sell CIS
Software shall be deemed CIS Vendors.
1.5 "Confidential Information" means any information of a party, which is
reduced to or embodied in a tangible form and which is either marked as
confidential or designated in writing at the time of disclosure or within ten
(10) Business Days thereafter as being Confidential Information. Confidential
Information does not include information which: (i) was in the receiving party's
possession without restrictions of confidentiality prior to receipt by the other
party; (ii) is or becomes public knowledge because of events other than an act
or failure to act by the receiving party or anyone under the receiving party's
direct or indirect control; or (iii) is or has been independently developed by
the receiving party, provided that such development was accomplished by the
receiving party or on its behalf without the use of, or any reference to,
Confidential Information.
1.6 "Corporate Products and Services" means those Licensee products which
are directed primarily at the large entity corporate user market, and not at the
single end user retail market.
1.7 "Corporate Revenue" is defined in Section 3.2 of this Agreement.
1.8 "Derivative Work" means a work that is based upon one or more
pre-existing work(s) and that, if prepared without the authorization of the
owner of the pre-existing work(s), would constitute a copyright infringement.
1.9 "Designated Contacts" mean the employees of Licensee authorized to
receive Support Services. The initial Designated Contacts are identified on the
Licensee Information Schedule attached hereto as Schedule B.
1.10 "Distribute" means to market, promote, sell, assign, distribute,
license, sub-license, lease, disclose or otherwise transfer to any Person,
including a Subsidiary of the transferor. A Distribution shall be deemed to have
occurred at the earliest time that the item Distributed is shipped or otherwise
leaves the possession of the transferor.
1.11 "Effective Date" is defined in the preamble to this Agreement.
1.12 "Incentive Payments" is defined in Section 3.2 of this Agreement.
1.13 "Intellectual Property Rights" means all forms of intellectual
property rights and protections that may be obtained and may include, without
limitation all right, title and interest in and to: (i) all letters patent and
all filed, pending or potential applications for letters patent, including any
26
reissue, reexamination, division, continuation or continuation-in-part
applications throughout the world now or hereafter filed; (iii) trade secrets,
and all trade secret rights and equivalent rights arising under the common law,
state law, federal law and laws of foreign countries; (iv) mask works,
copyrights, other literary property or authors' rights, whether or not protected
by copyright or as a mask work, under common law, state law, federal law and
laws of foreign countries; and (v) Marks.
1.14 "**" is defined in the preamble to this Agreement and is further
defined to mean the version of the ** available on September 30, 1997, including
all relevant and available technical, architectural, and user documentation and
including the publishing module for **, but specifically excluding (a) code
providing the functionality defined in Section 2.5(a) below and (b) ** providing
any Automated Learning functionality.
1.15 "**" is defined in the preamble to this Agreement and is further
defined to mean the version of the ** available on September 30, 1997, including
all relevant and available technical, architectural and user documentation, but
specifically excluding (a) code providing the functionality defined in Section
2.5(a) below and (b) ** providing any Automated Learning functionality.
1.16 "Licensee" is defined in the preamble to this Agreement.
1.17 "Licensee Products" means Licensee's First Aid '98, OEM products and
other CyberMedia products with ** and ** in Object Code form embedded therein,
provided such products shall be used solely for the function of PC Help.
1.18 "Licensee Technology" means any products developed by Licensee that
are not Derivative Works of ** or **.
1.19 "Marks" mean the proprietary indicia, trademarks, trade names,
symbols, logos and/or brand names under common law, state law, federal law and
laws of foreign countries owned or controlled by a party that are commercially
identified or associated with such party and/or one or more of the party's
products, which are listed on the Marks Schedule attached hereto as Schedule A
and which may be added to such Schedule by the party from time to time during
the Term.
1.20 "Object Code" means machine-readable program code containing the
actual computer instructions, after translation by a compiler, including both
the output of compilers and linking loaders.
1.21 "OEM" means to Distribute Licensee Products, either on a standalone
basis or as part of another company's product, without using the CyberMedia
brand name.
1.22 "PC Help" means assisting users of personal computers with problems
related to usage of the hardware, application software, and operating system
software of those personal computers.
27
1.23 "Person" means any individual, sole proprietorship, partnership, joint
venture, trust, unincorporated organization, association, corporation,
institution, public benefit corporation, entity or government, including,
without limitation, any Subsidiary, instrumentality, division, agency, body or
department thereof.
1.24 "Publish" means to convert data from the ** database into a format
that may used by another product.
1.25 "Modification Error" means any problem introduced through
modifications to ** and/or ** made by a party other than ServiceWare, unless the
modification was made at ServiceWare's specific written direction.
1.26 "Severe Error" means when ** and/or ** fails to function according to
its published documentation and Licensee is unable to proceed without a fix to
the problem or a workaround solution provided by ServiceWare. Modification
Errors are not Severe Errors.
1.27 "ServiceWare" is defined in the preamble to this Agreement.
1.28 "Source Code" means machine- or human-readable program code expressed
in a form suitable for modification by humans.
1.29 "Subsidiary" means a Person in which the specified party owns a
majority of the outstanding shares, securities, or other ownership interests
representing the right to vote for the election of directors or other managing
authority; provided, however, that in any country where the local law does not
permit foreign equity participation of at least 50%, a "Subsidiary" shall
include any Person organized under the laws of such country in which the
specified party owns the maximum percentage of outstanding shares or other
ownership interests permitted by local law, so long as the specified party
exercises actual control over the Person's operations. A Person will be deemed
to be a Subsidiary only so long as such ownership exists.
1.30 "Term" means the initial term and any renewal terms as set forth in
Article 13.
1.31 "Third Party Agreements" means agreements ServiceWare has with third
parties, attached as Schedule C, to incorporate their technology into the ** or
** products.
2. License Grants, Source Code Escrow and Release and Exclusivity.
2.1 Grant of License to **. Subject to the terms and conditions of this
Agreement and solely for the purposes of enabling Licensee to embed ** in Object
Code form in Licensee's Products and support and maintain such products,
ServiceWare hereby grants Licensee, during the Term and continuing indefinitely
thereafter, a non-exclusive, non-transferable (except as set forth in Section
2.11 below) license to:
(a) install, store, read, copy, modify, use and create
Derivative Works of the **,
(b) ** into Object Code form the ** thereof,
(c) execute and use the Object Code resulting from such
**, and
(d) install, store, read, modify, copy, use and create
Derivative Works of any related technical and user
documentation provided to Licensee by ServiceWare.
The license grant to ** hereunder includes a sub-license in
Object Code form to the Verity, Inc. Search `97 technology, which sub-license
shall be in effect for up to two (2) years from the Effective Date. Thereafter,
28
Licensee shall license the Verity Search `97 product directly from Verity, Inc.
and ServiceWare shall have no further responsibility to provide and sub-license
such technology to License.
2.2 **
2.3 Grant of License to Distribute ** and ** Object Code and Documentation.
Subject to the terms and conditions of this Agreement, ServiceWare
hereby grants to Licensee, during the Term and continuing indefinitely
thereafter, a non-exclusive, non-transferable, worldwide, ** license,
either directly or through Distributors, to reproduce and Distribute ** and/or
** in Object Code form only solely embedded in and as part of the Licensee
Products to Licensee's customers.
2.4 Grant of License to Use Marks. Subject to the terms and conditions of
this Agreement, ServiceWare hereby grants to Licensee, during the Term and
continuing indefinitely thereafter, a license to use ServiceWare's Marks in
accordance with Article 6 of this Agreement.
2.5 Distribution Conditions. The licenses granted under Sections 2.1 and
2.2 are conditioned upon and subject to the following restrictions:
(a) Licensee shall not allow the CIS Software to perform
Automated Learning functionality in ** or ** or Derivative works
thereof within Licensee's Products for a period of twelve (12) months
from the Effective Date. Licensee, Licensee's customers and Licensee's
Distributors shall not Publish in any manner the knowledge developed in
** and/or ** and any Derivative Work thereof for use with
non-Licensee Products and/or on any non-Licensee supplied client
viewer, with the exception of Inference's CBR II product.
(b) Content modified by users of ** and/or ** and any
Derivative Work thereof shall only be viewable within the version of
** and/or ** (as the case may be) embedded in the Licensee Products
or within Inference's CBR II product.
(c) Licensee may Distribute, and may permit a Distributor to
Distribute, Licensee's Products under Section 2.2 only if such
distribution is subject to a written license agreement with the
Licensee customer, or at Licensee's option, a "shrinkwrap" or Internet
"click" form of agreement. All such license agreements must contain
provisions that:
(i) provide that the Licensee customer may only use
the Licensee Product for its own internal business purposes
and prohibit the Licensee customer from sub-licensing,
transferring or otherwise disclosing the Licensee Product or
any portion thereof to any other Person;
29
(ii) require the Licensee customer to copy the
Licensee Product only as explicitly permitted in such
agreement;
(iii) require the Licensee customer to retain and/or
affix to any copies of the Licensee Product those Marks or
other proprietary notices that appear on or in the original
** and ** products or as designated by ServiceWare;
(iv) contain the agreement of the Licensee customer
not to reverse engineer or reverse compile or disassemble the
Licensee Product to attempt to gain access to the underlying
Source Code; and
(d) Each Distributor must enter into a written agreement with
its supplier of Licensee Products (i.e., Licensee or another
Distributor) before any such Licensee Product is furnished to that
Distributor. Such agreement must include provisions consistent with and
containing the relevant substance of Section 2.4(a) above, and which
are not contradicted by or in conflict with other provisions in such
agreement or any other agreement relating to the Licensee Products.
(e) Licensee shall use its best efforts to enforce all such
license agreements with Distributors and Licensee customers to the
extent Licensee does so with its own products, but at a minimum,
Licensee shall use no less than commercially reasonable efforts in
enforcing such license agreements.
(f) CIS Vendors shall not Distribute Licensee Products for a
period of 12 months after the Effective Date. During the 12 month
period beginning one year after the Effective Date, for each sale of
Licensee Products Distributed by CIS Vendors, Licensee shall pay
ServiceWare the greater of (i) ** per customer licensed to use Licensee
Products or (ii) ** of Licensee's gross revenues (less returns) for
such sales.
2.6. Source Code Escrow and Release to End-Users.
(a) Source Code Escrow with a Third Party Escrow Agent.
(i) To satisfy potential escrow requirements of
Licensee's major customers, Licensee may escrow a copy of the
** and ** Source Code with a single third party escrow agent
located in the United States that is mutually acceptable to
ServiceWare and Licensee. The terms of the escrow with the
escrow agent shall be as mutually acceptable to ServiceWare,
Licensee and the escrow agent.
(ii) Licensee shall promptly notify ServiceWare of
the identity of any Licensee customers for which it has
escrowed a Source Code copy of the Licensee Products.
(b) Release of Source Code to End-Users.
(i) If Licensee permanently ceases operations and
ServiceWare is unwilling, itself or through a designated third
party, to provide support services to Licensee customers, then
those Licensee customers who (1) currently have a fully-paid
support agreement with Licensee for Licensee Products, and (2)
upon licensing the Licensee Products, required Licensee to
escrow the Source Code of Licensee Products, may request that
the escrow agent release a copy of the Source Code of the
Licensee Products, including ** and/or ** (as the case may
be), to such Licensee customer.
(ii) Upon receipt of such request, the escrow agent
will promptly notify ServiceWare of such request. ServiceWare
30
will have ten (10) Business Days from the receipt of such
request to, in good faith, contest the release of the Source
Code of the Licensee Products, including ** and/or ** (as
the case may be), to the Licensee Customer. If ServiceWare
contests such release, then the Source Code of the Licensee
Products, including ** and/or ** (as the case may be), shall
not be released to the Licensee Customer until such dispute is
resolved.
(iii) If ServiceWare does not contest such release
within ten (10) Business Days of the receipt of the request to
release the Source Code of the Licensee Products, including
** and/or ** (as the case may be), then the Source Code of
the Licensee Products, including ** and/or ** (as the case
may be), shall be released to the Licensee customer, and, upon
such release, the Licensee customer is hereby granted a
limited, non-exclusive, non-transferable perpetual license to
use the Source Code of the Licensee Products, including **
and/or ** (as the case may be), solely for the maintenance
and support of its use of the Licensee Products as specified
in its license agreement with Licensee. The Licensee customer
may not distribute to any third party in any manner the Source
Code of the Licensee Products, including ** and/or ** (as
the case may be), or any portion thereof.
2.7 Limited Use of ** and **. Except as set forth in this Article 2,
Licensee and Licensee's Distributors shall not Distribute ** and/or ** in ** or
Object Code form, in whole or in part, to any third party, including, without
limitation, Subsidiaries (except as set forth in Section 2.11 below). Licensee
shall use the ** solely for the **, Distribution and support purposes described
in this Article 2, and shall not use the ** or any part thereof for any of
Licensee's, Licensee's customers' or Licensee's Distributors' other business
purposes.
2.8 No Restrictions on Future Development. Neither party shall be
restricted from developing products or functions for **, ** or Derivative Works
thereof as a result of any exchange between the parties of trade secret or other
information of a confidential nature.
2.9 Exclusivity. Except upon the prior written consent of Licensee,
ServiceWare agrees that it will not license the ** and/or ** to any third party
for the purpose of providing PC Help for a period of twelve (12) months from the
Effective Date. Licensee may withhold or decline to grant such request in its
reasonable business judgment. Such restriction shall not apply to potential
customers who will use the ** and/or ** for internal purposes and/or support
solely of their own customers. Licensee acknowledges that ServiceWare has
existing relationships with competitors of Licensee for such parties to market
** and/or ** and nothing in this Agreement shall restrict ServiceWare from
fulfilling its obligations under such relationships or of entering into other
relationships that do not violate the terms of this Section 2.8.
2.10 Third Party Agreements. Licensee understands that ServiceWare cannot
provide the ** for software provided to ServiceWare under Third Party
Agreements. Licensee further agrees that it must comply as a sub-licensee to the
sub-licensee specific terms of those Third Party Agreements, a complete list of
which is attached as Schedule D.
2.11 Conditions for Transfer of the ** and ** Licenses. Licensee may
transfer its license rights granted pursuant to Sections 2.1 and 2.2 above to a
Subsidiary or a third party (except in event of a change of control as more
fully described in this Section 2.11) only upon the prior written consent of
ServiceWare, which consent ServiceWare may withhold or decline to grant in its
reasonable business judgment. Upon the occurrence of a change in control of the
ownership of Licensee, whether by sale of assets, merger, consolidation or
otherwise, Licensee shall promptly notify ServiceWare of such event.
2.12 Use of ** and ** by Licensee's Subsidiaries and Consultants for the
Purpose of Supporting Licensee. Licensee may allow a Subsidiary or third party
consultant of Licensee to use ** and/or ** and Object Code forms solely for the
purpose of such Subsidiary and/or third party consultant (as the case may be)
assisting Licensee in its use of ** and/or **
31
pursuant to the provisions of this Agreement. Licensee shall (a) be fully
liable for the actions of such Subsidiary and/or third party consultant in such
party's use of ** and/or **, (b) maintain control over any and all copies of **
and/or ** Licensee provides to such Subsidiary and/or the third party consultant
and any copies of the same made by such Subsidiary and/or third party consultant
and (c) obtain from such Subsidiary and/or third party consultant any and all
copies of ** and ** in such party's possession upon termination or completion of
such party's assistance to Licensee for which it received .
2.13 Embedding Requirement. For purposes of this Agreement and the license
rights granted hereunder, Licensee shall embed ** and ** in Licensee's Products
so that the total functionality provided by ** and/or ** (as the case may be)
will not comprise a substantial portion of the total functionality provided by
each Licensee Product.
3. Payments.
3.1 Payments. In consideration of the licenses granted in Article 2,
Licensee shall pay to ServiceWare, without set-off or other deduction the
following guaranteed payments on the dates set forth below by way of bank wire
transfer to ServiceWare's designated bank account:
(a) October 1, 1997. **.
(b) December 31, 1997. **.
(c) March 31, 1998. **.
(d) June 30, 1998. **.
(e) September 30,1998. **.
3.2 Incentive Payments and Reporting. In addition to the payments set forth
in Section 3.1 above, Licensee shall make additional payments ("Incentive
Payments") to ServiceWare of up to **, which amount payable shall be calculated
based on the total revenue less returns from Corporate Products and Services
("Corporate Revenues") as follows:
(a) For the calendar year 1998, (i) if Corporate Revenues are
less than **, then the Incentive Payment shall be **; (ii) if Corporate
Revenues equal or exceed **, the Incentive Payment shall be **, and for
each additional dollar of Corporate Revenue in excess of ** up to **,
the Incentive Payment shall be increased by **; and (iii) if Corporate
Revenues equal or exceed **, then the Incentive Payment shall be **.
(b) For the calendar year 1999, (i) if Corporate Revenues are
**, then the Incentive Payment shall be **; (ii) if Corporate Revenues
equal or exceed **, the Incentive Payment shall be **, and for each
additional dollar of Corporate Revenue in excess of ** up to **, the
Incentive Payment shall be increased by **; and (iii) if Corporate
Revenues equal or exceed **, then the Incentive Payment shall be **.
Any incentive payments due pursuant to this Section 3.2 shall be paid to
ServiceWare within thirty (30) days following the end of the calendar quarter in
which the respective Corporate Revenue milestones were achieved based upon a
report provided by Licensee to ServiceWare by the 10th day following the end of
the respective quarter. The report shall be completed in sufficient detail to
compute the Incentive Payments referred to in this section.
3.3 Withholding of Payments. Licensee may withhold payments, pending
resolution of any outstanding Severe Errors by ServiceWare or if ServiceWare has
violated the exclusivity provisions set forth in Section 2.9 of this Agreement.
In no event may Licensee withhold the payment due on September 30, 1997. Once
32
all Severe Errors have been resolved, Licensee must remit to ServiceWare all
payments that have been withheld within five business days.
3.4 Service Charges. Licensee shall pay a service charge equal to the
lower of one and one-half percent (1 1/2%) per month or the highest rate
permitted by applicable law on all money amounts payable by Licensee under this
Agreement that are not paid within thirty (30) days of the due date.
3.5 Currency. All money payments to be made under this Agreement shall be
made in U.S. dollars and all money amountsstated herein are in U.S. dollars.
3.6 Taxes. Licensee shall assume and pay for all duty, sales, use,
transfer, value added and other excise taxes or other charges, including,
without limitation any applicable interest and penalties imposed with respect to
this Agreement and the provision of any products or services hereunder, except
for taxes on ServiceWare's income. Should Licensee claim exemption from any such
duty, tax or other charge, Licensee shall furnish ServiceWare with appropriate
executed exemption certificates, in accordance with applicable laws and
regulations, and Licensee agrees to indemnify and hold harmless ServiceWare from
all charges and expenses (including legal fees and expenses) that ServiceWare
may incur if any such exemption is challenged or denied or interest or penalties
are incurred as a result thereof.
3.7 Billing and Payments Addresses. Unless specifically provided for in
this Agreement, any payments, taxes, or other amounts due shall be made payable
to ServiceWare at the address set forth in Section 14.2 of this Agreement or at
such other address as Licensee may specify from time to time based upon invoices
provided by ServiceWare.
3.8 Audit. Licensee agrees to keep all usual and proper records and books
of accounts and all usual and proper entries therein relating to sub-licensing
of ** and **. Upon ServiceWare's request, at a mutually agreeable time, but not
more than once in a calendar year, ServiceWare may appoint at its own expense an
independent accounting firm ("Auditor"), which Licensee may disapprove only for
valid and reasonable business reasons. The Auditor shall be provided reasonable
access during Licensee's normal business hours to the manufacturing, accounting,
shipment, and other financial records as may be required of Licensee for
purposes of auditing the royalties and payments due. In the event that any
underpayment disclosed by the audit is greater than ten percent (10%) of the
total royalties due for the audited quarter, Licensee agrees to reimburse
ServiceWare for all reasonable expenses of such audit.
4. Delivery and Installation.
4.1 Shipment. ServiceWare shall deliver to a common carrier, F.O.B.
ServiceWare headquarters in Pittsburgh, Pennsylvania, ** and ** and any relevant
technical and user documentation for shipment to Licensee at the address set
forth in Section 14.2 of this Agreement or at such other address as Licensee may
provide to ServiceWare prior to shipment. Licensee shall pay all shipping
expenses from ServiceWare headquarters to Licensee's location. 4.2 Loss of
Media. If media are lost or damaged during the Term, ServiceWare will replace
such media at no cost to Licensee. Licensee shall pay all shipping charges
associated with replacing such media.
5. Ownership, Intellectual Property Rights, Confidential Information and Copies.
5.1 Ownership and Intellectual Property Rights. ServiceWare retains all
ownership rights in ** and **, including any and all Intellectual Property
Rights in the same, except that Licensee shall own any (a) Derivative Works it
creates of ** and/or ** that constitute original works of authorship by
Licensee and (b) the Licensee Technology. To the extent necessary to confirm
these rights in ServiceWare, Licensee hereby assigns to ServiceWare all
ownership rights and Intellectual Property Rights it may now or hereafter
possess in ** and **, except for Derivative Works it creates of ** and/or **
and the Licensee Technology, and each party agrees to execute all documents and
33
take all actions that the other party reasonably requests for the party to
confirm such assignments and for filing in the United States or any other
jurisdiction.
Licensee's ownership in any and all Derivative Works it makes
or has made of ** and/or ** shall not create, cause or imply any greater right
or license in the underlying ServiceWare work than has been expressly granted in
this Agreement. Licensee must identify any such Derivative Works it registers
with the United States Copyright Office, the United States Patent and Trademark
Office and/or other similar office in any foreign jurisdiction as constituting
derivatives of preexisting works of ServiceWare.
5.2 Copies; Preservation of Marks in Copies. Licensee may make copies
of ** and ** or any part thereof, provided that its use of all such copies is
in accordance with the terms of Article 2 of this Agreement. Licensee shall not
remove any ServiceWare ▇▇▇▇ or other proprietary notice that appears on or in
the copies of ** or ** delivered to Licensee, and Licensee shall retain such
ServiceWare Marks and notices on all whole or partial copies of ** and ** and
any Derivative Works thereof, except as otherwise provided for herein.
5.3 Confidential Information.
(a) Each party (the receiving party) shall not, without the
prior written consent of the other party (the disclosing party)
provide, disclose, transfer or otherwise make available any
Confidential Information of the disclosing party, or any portion or
copy thereof, to any person, including Subsidiaries, unless the
receiving party first obtains the express written approval of the
disclosing party. The receiving party shall give access to the
disclosing party's Confidential Information solely to those employees
and agents with a need to have access thereto, and who have agreed to
protect such Confidential Information in accordance with this
Agreement. The receiving party shall take the same security precautions
to protect against disclosure or unauthorized use of such Confidential
Information that it takes with its own confidential information of a
similar kind, which in no event shall be less than a reasonable
standard of care to prevent any such disclosure or unauthorized use.
The receiving party shall not be in breach of this provision if
Confidential Information is disclosed (i) with the disclosing party's
prior written approval or (ii) pursuant to any order of a court of
competent jurisdiction or duly authorized regulatory agency, provided
that reasonable steps are taken by the receiving party to give the
disclosing party sufficient prior notice in order to contest such
order. The receiving party agrees to provide the disclosing party (at
no expense to the disclosing party) all reasonable assistance and
documents the disclosing party may request in contesting such order.
(b) In addition to any information provided by ServiceWare that is
marked "confidential", the ** and ** and all terms and
conditions related to ServiceWare's pricing to Licensee shall be the
Confidential Information of ServiceWare.
(c) In the case of disclosures required by U.S. regulatory agencies,
the parties shall make best efforts to keep confidential business terms
from being made public, and shall, at a minimum, redact as confidential
business information the pricing terms and other financial information
contained herein, the names of the ServiceWare products provided
hereunder and that ServiceWare has **.
5.4 Publicity. ServiceWare and Licensee will not publicize in any news
media, advertising or promotional material, financial documents or otherwise
disseminate, any information regarding the terms of this Agreement without the
prior express written consent of each other. The obligations of Licensee and
ServiceWare under this Section 5.4 shall survive any termination of this
Agreement.
5.5 Unauthorized Use. Licensee agrees that, during and after the Term,
Licensee shall not: (a) develop, acquire or market materials or products that
utilize or incorporate, without authorization, ServiceWare's Intellectual
Property Rights and/or Confidential Information; or (b) except as otherwise set
34
forth herein, use any portion of ** and ** or any Derivative Work thereof in a
form that is not embedded in a Licensee product.
6. Ownership and Use of Marks.
All ServiceWare Marks and Marks included in ** and ** are and shall
remain the exclusive property of ServiceWare. Except as otherwise set forth
herein or as agreed in advance and in writing by ServiceWare, Licensee shall
retain on each copy of each Licensee Product it distributes, and on all
containers and storage media associated with such Licensee Product, all Marks
and other proprietary notices contained in **, ** and/or designated by
ServiceWare, and Licensee shall not alter, erase, deface or overprint any such
Marks or notices. In addition to the foregoing:
(a) Licensee shall adhere and conform to the guidelines
provided by ServiceWare from time to time concerning use of
ServiceWare's Marks and Marks contained in ** and **;
(b) the right to use ServiceWare Marks and Marks included in
** and ** shall not bear a royalty in addition to the consideration
specified under Article 3 of this Agreement;
(c) Licensee shall have no right hereunder to include any
ServiceWare Marks included in ** and ** in its corporate name or
combine any such Marks with any other ▇▇▇▇ without the prior express
written consent of ServiceWare; and
(d) all proprietary rights and goodwill in ServiceWare's Marks
and Marks included by ServiceWare in ** and ** shall remain the
property of ServiceWare and any use thereof by Licensee, Licensee's
customers and Licensee's Distributors hereunder will inure to the
benefit of ServiceWare.
Licensee shall make the following use of ServiceWare's Marks and
proprietary notices:
(a) For Licensee Products that Licensee sells directly to
Licensee's customers, Licensee shall maintain ServiceWare's copyright
notice in such products and provide a notice in the "about" box
mutually agreeable to the parties. All other uses, including, without
limitation, uses of product packaging, naming, collateral and
advertising, shall be as mutually agreed by the parties.
(b) For OEMs, in which Licensee provides the Licensee Product
under private label branding, Licensee shall only be required to
maintain ServiceWare's copyright notice in the Licensee Product.
7. Representations and Warranties.
7.1 General Representations and Warranties of the Parties. ServiceWare
warrants that it has all rights necessary to grant the licenses granted to
Licensee hereunder. Each party represents and warrants that it is authorized to
enter into this Agreement and that the representative of the party signing this
Agreement is duly authorized by the party to act therewith.
7.2 NO WARRANTY. EXCEPT AS OTHERWISE SET FORTH HEREIN, ** AND ** ARE
PROVIDED "AS IS," AND SERVICEWARE HEREBY DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
8. Support Services and Training
8.1 General Terms. ServiceWare shall provide the Support Services
defined in Schedule B to Licensee for one year. After that time, ServiceWare may
continue the Support Services to Licensee on an annual fee basis, subject to
mutual agreement by the parties on such annual fee.
35
8.2 No Obligation. Licensee is under no obligation to subscribe to the
Support Services. The licenses granted in this Agreement shall not be dependent
upon Licensee's purchase of Support Services or the termination of Support
Services for any reason.
8.3 Training and Transition Effort. ServiceWare shall provide to
Licensee, at a mutually agreed time, beginning within thirty (30) days from the
Effective Date, the following transition and training services:
(a) One (1) reasonably qualified Software engineer for up to
six (6) weeks of detailed engineering-level ** transition work
and training geared towards integration and technical support of the
Software with the Licensee product line, at Licensee's location. Each
party shall bear its own expenses in providing and attending such
services, except that Licensee shall be responsible for ServiceWare's
Software engineer's reasonable and documented travel, shelter and
subsistence costs in performance these services, to be approved by
Licensee in writing.
(b) Additional transition and training services for the
Software and Documentation may be requested by Licensee and provided by
ServiceWare upon such terms and conditions and at such rates as the
ServiceWare offers generally or provides to other third parties for
similar services.
9. Intellectual Property Indemnification, Limits of Liability and Obligation to
Assist.
9.1 Indemnification by ServiceWare. ServiceWare, at its expense, shall
defend, indemnify and hold harmless Licensee from any claim or suit brought
against Licensee alleging that the version of ** and ** provided to Licensee
by ServiceWare under this Agreement infringes any third party Intellectual
Property Right, provided that Licensee gives ServiceWare (a) prompt written
notice of such claim or suit, (b) the sole authority to defend and settle the
same, and (c) at no expense to Licensee, any information or assistance requested
by ServiceWare in connection with such defense or settlement. Licensee may, at
its option and at no expense to ServiceWare, participate in and/or observe the
defense of such claim or suit.
9.2 Remedies. If the use of the version of ** and ** provided to
Licensee by ServiceWare under this Agreement is enjoined by an order of a court
of competent jurisdiction because of a claim of infringement of any third
party's Intellectual Property Rights, or, if ServiceWare believes that such an
order is likely, then ServiceWare, at no expense to Licensee and at
ServiceWare's option, may use reasonable commercial efforts to (a) procure for
Licensee the right to continue using such version in accordance with this
Agreement or (b) modify such version so that it becomes non-infringing while
materially conforming to ** and ** specifications (as the case may be).
9.3 Exclusion from Indemnification. ServiceWare shall have no liability
for any claim of infringement based on use of the version of ** and/or **
provided to Licensee by ServiceWare under this Agreement that has been modified
or combined with other software, if the infringement would have been avoided by
use of the unmodified or uncombined version.
9.4 Indemnification by Licensee. Licensee shall defend, indemnify and
hold harmless ServiceWare from any claim or suit brought against ServiceWare
alleging that any Licensee Technology or any Derivative Work of ** and/or **
or any part thereof created by Licensee infringes any third party's Intellectual
Property Rights to the extent that such claim or suit arises from the acts of
Licensee, its employees, agents or representatives, including, without
limitation, such parties' actions in modifying, marketing, Distributing,
exporting or supporting ** and ** or any part thereof or the Licensee
Products.
9.5 LIMITATION OF LIABILITY. THIS ARTICLE 9 SETS FORTH THE ENTIRE
LIABILITY OF SERVICEWARE WITH RESPECT TO INFRINGEMENT OF A THIRD PARTY'S
INTELLECTUAL PROPERTY RIGHTS, AND SERVICEWARE SHALL HAVE NO ADDITIONAL LIABILITY
OR DUTIES WHATSOEVER WITH RESPECT TO ANY CLAIMED OR PROVEN INFRINGEMENT.
36
9.6 Obligation to Inform and Assist. Licensee shall promptly notify
ServiceWare in writing upon its discovery of any unauthorized use of ** and
**, or infringement of ServiceWare's Intellectual Property Rights with respect
thereto by Licensee, Licensee's customers or any third party. ServiceWare shall
have the sole and exclusive right to bring an action or proceeding against any
infringing third party, and, in the event that ServiceWare brings such an action
or proceeding, Licensee shall (at no expense to Licensee) cooperate and provide
all available information and reasonable assistance that ServiceWare or its
counsel may request in connection with any such action or proceeding.
10. Limitation of Liabilities
10.1 Limitation of Liability. Except for a claim or suit in which
ServiceWare is indemnifying Licensee pursuant to and in accordance with Article
9, in no event shall ServiceWare's liability for any and all claims, losses or
damages arising out of or relating to, in whole or in part, this Agreement, **
and ** or any services provided hereunder, regardless of the form of action or
legal theory under which liability may be asserted, exceed the lesser of: (a)
all amounts paid by Licensee to ServiceWare hereunder; or (b) until the second
anniversary of the Effective Date, $2.25 million, and, thereafter, an amount
equal to the difference between $2.25 million less the product of $750,000 times
the number of years that have elapsed since the Effective Date minus one (1).
10.2 NO LIABILITY FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES.
UNDER NO CIRCUMSTANCES WHATSOEVER SHALL SERVICEWARE BE LIABLE HEREUNDER FOR
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES, INCLUDING, WITHOUT LIMITATION,
LOST PROFITS OR LOSSES RESULTING FROM BUSINESS INTERRUPTION, EVEN IF SERVICEWARE
HAS BEEN ADVISED OF THE POSSIBILITY OR LIKELIHOOD OF SUCH DAMAGES.
11. Force Majeure.
Neither party shall be liable for delays in or failure of performance
(other than the obligation to make any payments due and payable under this
Agreement) due to causes beyond such party's reasonable control, including,
without limitation, acts of God, acts of civil or military authority, fires and
explosions. In the event of any such delay or failure, the affected party shall
immediately send written notice of the same and the reason therefor to the other
party. The performance of the affected party shall be deemed suspended so long
as, and to the extent that, any such Force Majeure continues; provided, however,
that after one hundred eighty (180) consecutive or cumulative days of such
suspension, the other party may terminate its obligations hereunder without
liability.
12. Export Control.
Licensee hereby agrees and acknowledges that any technology or
technical data obtained from ServiceWare, including ** and ** and Derivative
Works thereof, are under the jurisdiction of the export control laws and
regulations of the United States of America and that any direct or indirect
export, re-export, license, sale or other transfer of such technology or
technical data may require the prior authorization of the United States
government. Licensee expressly warrants that it will comply with all applicable
United States export control laws and regulations. Licensee hereby agrees that
it will indemnify ServiceWare and hold ServiceWare harmless from and against any
loss, liability, cost, damage or expense that ServiceWare may incur or suffer
resulting in any way from Licensee's failure to comply with all applicable
United States export control laws and regulations.
13. Term and Termination.
13.1 Term. This Term of this Agreement shall begin on the Effective
Date and continue until the third (3rd) anniversary thereof (the initial term)
37
and upon the expiration of the initial term, shall automatically renew for
successive one (1) year renewal terms unless either party notifies the other
party of its desire not to renew this Agreement after the initial term or at the
conclusion of any renewal term by providing the other party ninety (90) days
written notice of its intention not to renew prior to the expiration of the
initial term or any renewal term as the case may be. Further, this Agreement may
be terminated at any time during the term as set forth in Article 11 or Section
13.2 of this Agreement.
13.2 Termination for Cause. In the event of a breach by a party (the
breaching party) of its material obligations hereunder, the other party (the
non-breaching party) may terminate this Agreement upon written notice of such
breach, provided the breaching party has not cured such breach to the reasonable
satisfaction of the non-breaching party within thirty (30) days of the breaching
party being notified of such breach, or, if the breach consists solely of a
failure to pay money when due, fifteen (15) days, after prior written notice to
the breaching party of the existence and nature of the breach and of the
non-breaching party's intention to terminate if not cured.
Upon such termination as a result of Licensee having (a)
breached ServiceWare's Intellectual Property Rights or the license rights
granted in Article 2 above or (b) failed to pay ServiceWare the amounts payable
under this Agreement when due, then (x) Licensee shall immediately deliver to
ServiceWare the original and all whole and partial copies of ** and ** and any
Confidential Information or, with the prior written consent of ServiceWare,
destroy such original and all such copies and certify to ServiceWare in a
writing signed by an officer of Licensee such return or destruction; and (y) all
of Licensee's rights and licenses and all of ServiceWare's obligations hereunder
shall terminate.
13.3 Equitable Relief. In addition to any other remedies to which
ServiceWare may be entitled, and because unauthorized use or disclosure of
ServiceWare's Confidential Information or a breach of ServiceWare's Intellectual
Property Rights will create irreparable harm to ServiceWare, which cannot be
remedied by money damages alone, ServiceWare shall be entitled to seek
injunctive relief to prevent Licensee from breaching or continuing such breach.
13.4 Survival. The provisions of Articles 1, 2, 3, 5, 6, 7, 10, 12 and
14 and Sections 9.4., 9.6 and 13.3 shall survive the termination of this
Agreement, except that all provisions of this Agreement shall terminate in their
entirety, including, without limitation, the provisions of Article 2 (except for
Section 2.7 above), if this Agreement is terminated by ServiceWare pursuant to
Section 13.2.
14. General.
14.1. Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the parties hereto and their respective successors, assigns and
legal representatives.
14.2 Notices. All notices, requests and demands given to or made upon
the parties hereto shall be in writing and delivered by hand reputable overnight
courier, facsimile (with confirmation of receipt provided by the recipient and a
copy sent by first class mail, postage prepaid) or electronic mail (with
confirmation of receipt provided by the recipient and a copy sent by first class
mail, postage prepaid) to the appropriate designated business liaisons at the
following addresses:
If to ServiceWare: If to Licensee:
ServiceWare Inc. CyberMedia, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Either party may change the address to which notices must be sent by providing
written notice of the change to the other party in accordance with the
provisions of this Section 14.2. Any notice so given shall be deemed to have
been given on the second business day following the date it was sent.
38
14.3 Independent Contractors. The relationship between the parties
established by this Agreement is that of independent contractors, and nothing
contained in this Agreement shall be construed to: (a) give either party the
power to direct or control the day-to-day activities of the other, (b)
constitute the parties as partners, joint venturers, co-owners or otherwise as
participants in a joint or common undertaking, or (c) allow either party to
create or assume any obligation of or on behalf of the other party for any
purpose whatsoever.
14.4 Assignment. Neither this Agreement nor any rights, privileges,
duties or obligations under this Agreement may be assigned, sub-licensed, sold,
mortgaged, pledged or otherwise transferred or encumbered by Licensee without
the prior written consent of ServiceWare, which consent ServiceWare may withhold
or decline to grant in its reasonable business judgment. Any attempt to assign
this Agreement without the consent of ServiceWare shall be void. ServiceWare
shall not assign its rights arising hereunder to Licensee's Derivative Works
without the prior written consent of Licensee, which consent Licensee may
withhold or decline to grant in its reasonable business judgment. This Agreement
shall be binding on all permitted assignees and on all successors in interest to
the parties hereto and to such assignees.
14.5 Indulgences, Etc. No failure or delay on the part of any party in
exercising any right hereunder, irrespective of the length of time for which
such failure or delay shall continue, will operate as a waiver of, or impair,
any such right. No single or partial exercise of any right hereunder shall
preclude any other or further exercise thereof or the exercise of any other
right. No waiver of any right hereunder will be effective unless given in a
signed writing.
14.6 Further Assurances. Each party to this Agreement will, at the
request of the other party and without charge (provided that the cost to the
providing party is reasonable under the circumstances), execute and deliver all
such further instruments and documents as may be reasonably requested to further
confirm, carry out and otherwise accomplish the intent and purpose of this
Agreement.
14.7 Severability. If any provision of this Agreement is held to be
invalid or unenforceable under any circumstances, its application in any other
circumstances and the remaining provisions of this Agreement shall not be
affected thereby.
14.8 Headings. The Article and Section headings in this Agreement and
in any Schedules attached hereto are for purposes of reference only and shall
not restrict or affect the meaning or application of any provision herein or
therein contained.
14.9 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be an original and all of which shall
constitute together one and the same document.
14.10 Governing Law. This Agreement and any claim, whether in contract,
tort or otherwise, arising from this Agreement shall be governed by and
interpreted in accordance with the laws of the Commonwealth of Pennsylvania,
applicable to contracts made and performed entirely within the Commonwealth.
14.11 Entire Agreement; Amendments. This Agreement and any Schedules
attached hereto constitute the entire agreement and understanding of the parties
relating to the subject matter hereof, and no representation, condition,
understanding or agreement of any kind, oral or written, shall be binding upon
the parties unless expressly set forth herein or therein. This Agreement
supersedes all prior written and oral agreements and all other communications
between Licensee and ServiceWare relating to the subject matter hereof,
including the ** Bundling Agreement, dated July 31, 1996, which is
hereby terminated and its provisions shall be of no further effect, except for
payments due through September 30, 1997. Amendments to this Agreement shall be
effective only if in writing and signed by ServiceWare and Licensee. No payment
is due for any First Aid `98 or First Aid Deluxe shipment.
39
14.12 Future Agreements. The parties agree to negotiate in good faith
at a future date mutually agreeable to the parties agreements to upsell
additional ServiceWare knowledge content products to Licensee's customers.
15. **.
15.1 "**" means the ** for Windows 95 and the ** for Windows 95.
15.2 Grant of License to Distribute **. Subject to the terms and
conditions of this Agreement, ServiceWare hereby grants to Licensee, during the
Term and continuing indefinitely thereafter, a non-exclusive, non-transferable
(except as set forth in Section 2.11 above), worldwide, ** license to
use, reproduce and Distribute ** solely embedded in Licensee's Products.
15.3 Other Agreement Provisions Applicable. All provisions in this
Agreement applicable to ** and ** shall also be applicable to **.
15.4 Updates. Licensee shall receive updates for two (2) years from the
Effective Date. CyberMedia shall have the option to upgrade the Windows `95
** to the Windows `98 ** if and when ServiceWare makes
such ** generally available.
