Exhibit 10.13
SOFTWARE DEVELOPMENT, MARKETING
AND
ROYALTY AGREEMENT
(SOGS)
This SOFTWARE DEVELOPMENT, MARKETING AND ROYALTY AGREEMENT (this
"Agreement") is entered into this ___ day of January, 2001, by and among ORION
HEALTHCARE TECHNOLOGY, INC., an Iowa corporation, formerly known as Accurate
Assessments, Inc., an Iowa corporation, with offices at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Orion"), SOUTH OAKS FOUNDATION, a non-profit
corporation, with offices at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇,
and WSNCHS EAST, INC. d/b/a South Oaks Hospital, a non-profit corporation, with
offices at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (together, "South
Oaks")
WHEREAS, South Oaks has developed the South Oaks Gambling Screen
("SOGS"), a written questionnaire completed manually by practitioners providing
treatment or conducting research in the area of gambling addictions;
WHEREAS, Orion is a leading developer and marketer of computer software
in the healthcare field related to addictions, including, without limitation,
gambling;
WHEREAS, the parties desire to enter into a relationship whereby Orion
will (a) convert the written text comprising SOGS into a computer software
program (the "Software") and thereby automate certain functions of SOGS, (b)
market, sell and license the Software and (c) pay South Oaks a royalty for each
copy of the Software licensed or sold;
WHEREAS, South Oaks owns rights in and to SOGS;
WHEREAS, South Oaks has agreed to grant Orion a license to use SOGS in
connection with Orion's duties described in this Agreement;
WHEREAS, Orion has agreed to develop, market, sell and license the
Software on behalf of South Oaks on condition that, among other things as more
particularly described in this Agreement, Orion has the exclusive right to so
develop, market, sell and license the Software;
NOW, THEREFORE, in consideration of the above premises and other good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, Orion and South Oaks hereby agree as follows:
1. DEVELOPMENT OF THE SOFTWARE. South Oaks hereby grants Orion
the exclusive right to develop a software program incorporating and automating
SOGS and Orion hereby agrees to review SOGS and develop and convert the text and
substance of SOGS into a computer software program designed to automate the
screen. South Oaks reserves unto itself any and all other of its rights to and
in SOGS not herein specifically and expressly granted to Orion.
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2. MARKETING AND SALES OF THE SOFTWARE.
a. South Oaks hereby grants Orion the exclusive right
and Orion hereby agrees to actively market, promote, license and sell
the Software.
b. Orion may solicit orders directly or through
subcontractors or agents. Orion shall be responsible for its
employees', subcontractors' or agents' acts or omissions in performing
marketing services and for the payment of amounts owed (if any) to its
employees, subcontractors, or agents, as may be appropriate.
c. Orion, in its sole discretion, may develop specific
sales and marketing materials for use in the marketing and licensing
of the Software, which materials may be reviewed by South Oaks. Orion
shall retain all right, title and interest in all such marketing
materials.
d. Orion shall bear the sole responsibility for the
delivery of the Software to licensees and for the billing and
collection of all amounts owed to Orion through its licensing or sales
of the Software.
e. Unless otherwise specified herein, Orion agrees that
the use of the Software by licensees shall be pursuant to applicable
licensing agreements, manuals and any other documentation developed by
Orion.
f. Orion shall maintain full, clear and accurate records
with respect to each and every copy of the Software distributed by
Orion, each license granted, each license agreement executed, and all
receipts from installation, maintenance and support of the Software
and all other revenues related thereto. South Oaks further agrees to
cooperate fully with Orion should a dispute arise with a licensee or
another entity regarding the sale, licensing, distribution or
maintenance and support of the Software, including, without
limitation, the right to use trademarks, servicemarks, trade names,
logos and copyrighted materials for which a license is granted
pursuant to this Agreement.
g. Title to the Software and all patents, copyrights,
trademarks, design rights, trade secrets, moral rights and other
proprietary rights in the Software are and will remain the exclusive
property of Orion, regardless of whether specifically recognized or
perfected under the laws of the country where the Software is used;
provided, however, that South Oaks is not relinquishing any of its
rights to SOGS. South Oaks will not (i) take any action that
jeopardizes any proprietary rights that Orion may develop, (ii) acquire
any right in the Software without the express written consent of Orion
other than those right to SOGS is has reserved or (iii) perform any
reverse engineering of the Software.
3. GRANT OF LICENSES TO ORION. South Oaks hereby grants to Orion
a non-exclusive license to use its trademarks, servicemarks, trade names and
logos, including, without limitation, the name "South Oaks Foundation", "South
Oaks Hospital", "South Oaks Gambling Screen" and abbreviations and derivations
thereof (collectively, the "Marks") in the Software and materials used to
market, promote, license, sell and distribute the Software. South Oaks hereby
grants to Orion a world-wide royalty-bearing exclusive license to use any and
all of the copyrighted
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material comprising the South Oaks Gambling Screen in writing, developing,
commercializing, marketing, promoting, licensing and selling the Software.
4. ROYALTY PAYMENTS.
a. Orion hereby agrees to pay a royalty to South Oaks
for the use of SOGS, which royalty shall be paid as follows:
i. five percent (5%) of the retail price of
each copy of the Software sold or licensed as a separate,
stand-alone product (a "Stand-Alone Sale"); and
ii. $5.00 for each copy sold or licensed as a
unit bundled, combined or packaged together with other
software products sold or licensed by Orion.
b. With respect to any copies of the Software returned
to Orion for full refund, South Oaks shall repay to Orion any royalty
paid by Orion for such returned copy of the Software.
c. On or before the 15th of March, June, September and
December, Orion shall remit to South Oaks the appropriate payments for
the Software licensed or sold by Orion during the previous month,
together with a written royalty statement setting forth the total sales
and licenses of the Software (identifying the Stand-Alone Sales and
Bundled Sales during the period covered by the statement) and the total
of royalty payments previously made which should be repaid to Orion as
the result of returns of the Software.
d. Orion shall pay directly all income, franchise,
sales, use, personal property, ad valorem, value added, stamp or other
taxes, levies, customs duties or other imposts or fees, including
withheld taxes (except only a tax levied by the United States of
America or the States of Nebraska, New York or Rhode Island based on
the net income of South Oaks), together with all penalties, fines and
interest thereon that in any way arise out of this Agreement, whether
on or measured by the price, the charges, the programs or the services
furnished, or their use, however designated, levied or based
(hereinafter collectively called "Tax").
e. With respect to any copies of the Software
licensed or sold as the result of the independent marketing or
referral efforts of South Oaks, the royalty fee due to South Oaks
shall be calculated in accordance with the provisions of paragraph a.
above.
5. INSTRUCTION AND TRAINING. Intentionally omitted.
6. ASSIGNMENT. This Agreement may not be assigned in whole or in
part by either party without the prior written approval of the other party,
which shall not be unreasonably withheld; provided, however, Orion may assign
this Agreement to any present or future affiliate or subsidiary or assign its
right to receive payment hereunder without such consent.
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7. SOUTH OAKS'S REPRESENTATIONS AND INFRINGEMENT CURE. South Oaks
hereby represents and warrants that it owns and has title in and to SOGs, free
of claims by third parties. South Oaks hereby further represent and warrant that
it has not granted similar or conflicting rights or exclusive licenses to any
third party with respect to SOGS and that to the best of its knowledge, the
development, marketing, licensing, sale or delivery of the Software will not
infringe upon the proprietary rights of any third party. In the event the
Software becomes the subject of a claim for patent or copyright infringement or
other infringement of proprietary rights, whether such claim is asserted against
Orion or South Oaks or any licensee of the Software, (a) South Oaks agrees to
(i) assist Orion in any effort to protest such claim or procure the right to
continue to use the Software and (ii) in the event any of South Oaks'
representations and warranties above is false, pay Orion's costs in connection
with the actions to be taken by Orion under (i), including, without limitation,
reasonable attorneys' fees; and (b) Orion may (i) at its cost, procure the right
to continue using the Software; or (ii) modify the Software so as to make it
non-infringing. If Orion, in its sole discretion, determines that it is not
reasonably able to procure such rights or so modify the Software or otherwise
secure the right to continue using the Software, then this Agreement shall
terminate and Orion shall, within 30 days of the termination, remit to South
Oaks any royalty fees due for licensed or sold Software, less any credits due to
Orion for royalty fees paid on returned Software. This Section 7 states the
entire and exclusive obligation of Orion to South Oaks and of South Oaks to
Orion relating to the Software with respect to any actual or alleged
infringement of patents, copyrights or other proprietary rights of third parties
by the Software or any part thereof.
8. FORCE MAJEURE. Neither party shall be liable for delays in
performance of this Agreement caused by acts of God, government restrictions or
interference, strikes or other labor disputes, fires, power outages,
communications failures, or for any other cause, to the extent that any such
causes are beyond its reasonable control; provided, however, that if such delay
shall continue for thirty (30) days, then either party may terminate this
Agreement upon thirty (30) days' written notice to the other party. If the
non-performing party performs within said thirty (30) day period, then this
Agreement shall continue in full force and effect as though no such notice had
been given. In no event shall failure to timely pay amounts owed be excused.
9. INDEPENDENT CONTRACTOR. In connection with this Agreement,
each party is an independent contractor and as such will not have any authority
to bind or commit the other party except as provided hereunder. Nothing herein
shall be deemed or construed to create a joint venture, partnership or agency
relationship between the parties for any purpose.
10. LIMITATION OF LIABILITY.
a. No party shall be liable for damages caused by acts
or events beyond such party's control. In addition, neither party shall
have liability for information or advice supplied by third-party
vendors.
c. No party shall be liable for incidental, indirect,
special or consequential damages or for lost profits, savings or
revenues of any kind, whether or not the party has been advised of the
possibility of such damages.
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d. Orion shall not be liable for any damages
arising from the unavailability of the Software.
11. TERM AND TERMINATION.
a. The term of this Agreement commences on the date
first set forth above and shall terminate one year thereafter. After
the expiration of the initial term of the Agreement, the Agreement
shall automatically renew for additional twelve (12) month terms
unless terminated or canceled by either party as set forth in
paragraph 11(b) below.
b. Upon any material default by a party under this
Agreement, the other party may terminate this Agreement by giving not
less than thirty (30) days' prior written notice to the defaulting
party; provided, however, the defaulting party shall have the right to
cure such default within such thirty (30) day period. If not cured
within such thirty (30) day period, the Agreement shall terminate upon
the expiration of such thirty (30) day period. In addition and
notwithstanding the foregoing, either party may terminate this
Agreement at any time with 30 days' prior written notice to the other
party.
c. Upon termination for any reason, each party shall
pay to the other any royalty fee due or due to be refunded within 30
days of termination.
12. MISCELLANEOUS.
a. MODIFICATIONS. This Agreement may be amended,
restated, supplemented or otherwise modified from time to time,
provided, however, that any amendment, restatement, supplement,
modification or waiver of any provision of this Agreement or any
Attachment to this Agreement must be in writing and signed by
authorized representatives of both parties.
b. SEVERABILITY. If any portion of this Agreement is
found to be invalid or unenforceable, the parties agree that such
provisions shall be enforced to the greatest extent permitted by law
and the remaining portions shall remain in effect. The parties further
agree that in the event such invalid or unenforceable portion is an
essential part of this Agreement, they will immediately begin good
faith negotiations for a replacement.
c. NO WAIVER. If either party fails to enforce any
right or remedy available to it under this Agreement, such failure
shall not be construed as a waiver of any right or remedy with respect
to any other breach or failure by the other party.
d. GOVERNING LAW. This Agreement and all matters
arising out of or relating to this Agreement shall be governed by the
laws of the State of Nebraska and shall be deemed to be executed in
and the Software performed from Omaha, Nebraska.
e. SURVIVAL OF TERMS. The respective obligations of
Orion and South Oaks hereunder which by their nature would continue
beyond termination or expiration hereof shall survive the termination
or expiration of this Agreement.
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f. AUTHORIZATION. Each party represents and warrants
that it has the power and authority to execute this Agreement and that
the individual signing this Agreement is authorized to do so. The
parties further represent and warrant that upon execution of this
Agreement, it shall be a valid and binding agreement between the
parties enforceable in accordance with its terms.
g. ENTIRE AGREEMENT. This Agreement constitutes the
entire agreement between the parties with respect to the Software and
supersedes all prior or contemporaneous agreements, proposals or
understandings, whether written or oral.
13. NOTICES. Any notice required or permitted hereunder shall be
in writing and addressed to the other parties as first set forth in this
Agreement or to the last known address of such party. Any notice sent shall be
deemed to be received and valid upon (i) actual receipt, if hand delivered, (ii)
three business days from date on which such notice was sent, if sent by
certified or first class mail, postage prepaid, or (iii) upon the next business
day if such notice was sent by facsimile or overnight mail.
REMAINDER OF PAGE INTENTIONALLY LEFT BLANK
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first written above.
ORION HEALTHCARE TECHNOLOGY, INC.,
an Iowa corporation
By
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Name
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Title
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SOUTH OAKS FOUNDATION, a non-profit corporation
By
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Name
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Title
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WSNCHS EAST, INC. d/b/a South Oaks Hospital,
a non-profit corporation
By
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Name
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Title
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