1
Exhibit 10.4
CONFIDENTIAL TREATMENT REQUESTED-REDACTED
SOFTWARE DISTRIBUTION AND LICENSE AGREEMENT
This SOFTWARE DISTRIBUTION AND LICENSE AGREEMENT (this "Agreement")
is entered into as of the 17th day of January 1995, by and between ICARUS
CORPORATION, a Maryland corporation with offices at One Central Plaza, ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("ICARUS"), and PRIMAVERA SYSTEMS
INC., a Delaware corporation having an ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("PRIMAVERA").
WHEREAS, Primavera has developed computer software and related
technology related to the scheduling of projects, and
WHEREAS, ICARUS has developed technology related to the project evaluation
and process evaluation of projects in the processing and related industries, and
WHEREAS, ICARUS desires to distribute Primavera computer software
technology with its computer software and market such bundled software worldwide
to its customers via its sales force, and through its Affiliate and its Dealers.
NOW, THEREFORE, in consideration of the mutual promises and undertakings
set forth in this Agreement, ICARUS and Primavera hereby agree as follows:
ARTICLE I
CONTRACT DOCUMENTS
1.01 Contract Documents. The agreement between the parties (Agreement)
shall consist of the Basic Agreement (pages 1 through 28) and the following
appendix:
1.02 Conflict. Should there be any conflict between the Basic Agreement
and the appendix, the Basic Agreement shall control.
ARTICLE II
DEFINITIONS
2.01 "Primavera Software" means the Primavera Project Planner project
scheduling software product commonly referred to in the industry as "P3 for
Windows," and all other software and firmware received by ICARUS under this
Agreement including user documentation, updates, upgrades and replacements
thereto, marketed directly or indirectly by Primavera.
2.02 "Source Code" means the Licensed Software when written in a form or
language understandable to humans, generally in a higher level computer language
and further including embedded comments, where such source code as created by
Primavera contains
- 1 -
2
sufficient information to permit a programmer with ordinary skills in writing
code for project scheduling to update or modify such software.
2.03 "User Documentation" means user manuals or other written descriptions
of the Licensed Software prepared by Primavera to assist an end user of such
software to understand and use such software.
2.04 "Program Documentation" means specifications and other written
descriptions of the Licensed Software sufficiently detailed to enable a skilled
programmer to have reasonable facility in understanding, using, updating and
modifying such software, and in incorporating such software in other software
products.
2.05 "Enhancement Kit" means a sealed package commercially released by
Primavera containing an Upgrade or Update to the Licensed Software encoded in
Object Code on electronic media, and documentation therefor, developed by
Primavera during the term of this Agreement.
2.06 "Licensed Software" means the Primavera Software and all Updates
and Upgrades thereto.
2.07 "Licensed Materials" means the Licensed Software and the User
Documentation.
2.08 "Confidential Information" means business and technical information
of a party hereto that is treated as confidential by such party, and which
includes but is not limited to computer programs, source code, algorithms,
customer lists, price lists, marketing plans and business plans, and that is
furnished to the other party hereto with written notice that the same is deemed
"Confidential Information."
2.09 "Object Code" means the Licensed Software in a form that can be
executed by a computer using the appropriate operating system without
compilation or interpretation. Object Code specifically excludes Source Code.
2.10 "Firmware" means any hardware device which must be present in the
computer operating environment while Primavera Software is functioning.
2.11 "ICARUS Software" means software marketed by ICARUS that incorporates
ICARUS project evaluation and/or process evaluation and/or cost estimating
and/or cost engineering technology for the chemical processing industries,
including but not limited to the chemical, petrochemical, oil refining, power
generation, ore beneficiation, pulp and paper, food, and related industries.
- 2 -
3
2.12 "Software Product" means a software product that comprises ICARUS
Software bundled with the Licensed Software, and is packaged and marketed by
ICARUS, its Affiliates, or its Dealers as a single product.
2.13 All dollar ($) figures herein are United States dollars.
2.14 "License Year" means a calendar year. The First License Year shall be
the calendar year 1995.
2.15 "Dealer" means an ICARUS authorized dealer, distributor, or Business
Partner that purchases or licenses Software Products from ICARUS and resells or
licenses such Software Products to another Dealer or to an End User. All Dealers
are independent contractors.
2.16 "Affiliate" means ICARUS Services Limited, an English corporation
having an office at The Graftons, Stamford ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇. ICARUS Services Limited is a corporation separate from ICARUS and is an
independent contractor.
2.17 "Primavera Product Kits" or " Product Kits" means a sealed package
bearing a unique serial number or series of unique serial numbers and which
includes (a) a copy of Primavera Software encoded in Object Code on electronic
media in a form released by Primavera, and (b) User Documentation developed by
Primavera.
2.18 "End User" means a person or entity that purchases or licenses one or
more copies of the Software Products from ICARUS, its Affiliate or Dealers, and
uses such Software Products solely in accordance with the terms of a Primavera
End User License.
2.19 "Primavera End User License" means the written license agreement
contained in each Primavera Product Kit that is distributed to each End User as
part of a Software Product and which shall be the same as that distributed by
Primavera to its own customers), and pursuant to which the End User has the
limited right to use the Licensed Software. The form of the Primavera End User
License is attached hereto as Appendix B.
2.20 "Update" means all corrections, minor improvements or additions, and
substitutions to the Licensed Materials prepared or owned by Primavera and which
may from time to time be distributed to end users without imposition of an
additional charge.
2.21 "Upgrade" means all modifications, additions and substitutions to
the Licensed Materials that result in substantial performance, structural, or
functional improvements or additions for which Primavera generally imposes a
separate charge on its end users.
2.22 "Kit Order" means a written order from ICARUS to Primavera for
Product Kits or Enhancement Kits manufactured by Primavera.
- 3 -
4
2.23 "Derivative Work" means any work, other than the Software Product,
derived from the Licensed Software or that utilizes or incorporates any part
thereof, in any medium, format or form whatsoever.
ARTICLE III
LICENSE GRANT
3.01 License. Primavera hereby grants to ICARUS, and ICARUS hereby accepts
from Primavera, a worldwide nonexclusive non-transferable right and license
during the term of this Agreement to:
(a) Distribute Primavera Product Kits solely as part of a Software
Product, and not as a standalone product, to End Users by sale or license
directly and through its Affiliate and Dealers;
(b) Distribute Primavera Product Kits by sale or license directly
and through its Affiliate and Dealers to End Users that have previously licensed
ICARUS Software;
(c) Distribute Enhancement Kits to End Users that have previously
licensed a Software Product by sale or license directly and through its
Affiliate and Dealers; and
(d) Use, publicly perform and publicly display the Licensed
Materials in marketing, promotion and support of the Software Products and to
sublicense its Affiliate and Dealers to do the same.
3.02 Version. Upon the commercial release by Primavera of Upgrades, if
any, to the Licensed Materials, ICARUS and Primavera shall jointly decide which
version of the Licensed Materials to include in the Software Products. It is
intended that during throughout the term of this Agreement that ICARUS shall
deliver the then current release of the Primavera software to its customers
subject to the time required by ICARUS to coordinate its own software with the
latest version from Primavera.
3.03 Distribution of Product Kits. ICARUS shall distribute the sealed
Primavera Product Kits and Enhancement Kits intact, with all packaging,
documentation, and Primavera End User Licenses contained therein. ICARUS shall
neither add any materials nor remove any materials from the Product Kits or the
Enhancement Kits. ICARUS shall not alter, deface or conceal any trademark or
tradename appearing in or on the Product Kits or the Enhancement Kits. ICARUS
shall require by written agreement that its Affiliate and Dealers adhere to the
terms of this provision.
- 4 -
5
[*]
In the event Primavera shall receive any ICARUS software or firmware from
ICARUS, Primavera shall not in any way translate, disassemble, reverse engineer
or decompile same. This provision shall survive the termination of this
Agreement.
3.05 Title; Reserved Rights.
(a) ICARUS acknowledges and agrees that the Licensed Materials are
owned by Primavera. The ownership of the copyrights in the Licensed Materials,
and title to the Licensed Materials and all copies thereof, shall remain with
Primavera. ICARUS shall have no ownership rights to them by virtue of this
Agreement.
(b) Primavera acknowledges and agrees that the ICARUS Software and
the Software Products, as collective works, are owned by ICARUS. The ownership
of the copyrights in the ICARUS software and the Software Products, as
collective works, and title to the ICARUS Software and all copies thereof, shall
remain with ICARUS. Primavera shall have no ownership rights to them by virtue
of this Agreement.
(c) Primavera hereby reserves all rights not specifically granted
herein to ICARUS. Except as expressly provided in Paragraph 3.01 hereof,
Primavera does not convey to ICARUS in this Agreement any intellectual property
rights in the Licensed Materials, including without limitation rights under
patent or copyright. By way of example, ICARUS shall have no right to reproduce,
copy, or modify or prepare "Derivative Works. of the Licensed Materials, the
Primavera Product Kits, or the Enhancement Kits.
3.06 No Obligation to Develop or Market. Nothing contained in this
Agreement shall be construed to obligate ICARUS to develop, market or license
the Software Products.
3.07 Competing Products.
(a) Primavera acknowledges and agrees that ICARUS may develop,
attempt to develop, market or license to or from others project scheduling or
evaluation software similar in nature to the Primavera Software or the Software
Products in competition with PRIMAVERA, none of which is precluded by this
Agreement.
(b) ICARUS acknowledges and agrees that, in view of the nonexclusive
nature of the rights granted to ICARUS herein, Primavera retains the right to
offer, sell, license,
----------------
[*] This information has been omitted pursuant to a request for
confidential treatment.
- 5 -
6
market or distribute the Licensed Materials and the Primavera Product Kits
directly or indirectly to any person or entity for any purpose, including
without limitation the development of software products that are functionally
similar to or competitive with ICARUS Software, the Software Products or any
other product hereafter distributed by ICARUS.
(c) ICARUS agrees to furnish reasonable advance notice to Primavera
in writing prior to entering into an agreement to license from a third party
project scheduling or project evaluation software, where such license permits
ICARUS to market such project scheduling or project evaluation software for
general license or sale to others. Primavera agrees to furnish reasonable
advance notice to ICARUS in writing prior to entering into an agreement to
license from a third party design or estimating software, where such license
permits Primavera to market such design or estimating software for general
license or sale to others.
3.08 Rental or Loan of Product Kits.
(a) ICARUS shall neither rent nor loan the Product Kits or the
Enhancement Kits, provided, however, ICARUS shall have the right to loan to
prospective End Users solely for evaluation purposes those Product Kits and
Enhancement Kits furnished to ICARUS pursuant to subparagraph (b). ICARUS shall
require by written agreement that its Affiliate and Dealers adhere to the terms
of this provision.
(b) Primavera shall, during the term of this Agreement, and upon
written request from ICARUS, furnish to ICARUS at no charge (except as provided
below) in each calendar year no more than twelve (12) Primavera Product Kits and
any related Enhancement Kits for inclusion in Software Products for loan to
prospective End Users. In no event shall the duration of any loan exceed sixty
(60) days. In the event the duration of any loan exceeds sixty (60) days, ICARUS
shall pay to Primavera the applicable royalty for said Product Kit without
regard to whether ICARUS invoices or collects funds from said prospective End
User, or otherwise causes the termination of the loan period; provided, however,
ICARUS may, subject to the limitations of the license grant, thereafter sell or
license said Primavera Product Kit without incurring any additional royalty
obligation to Primavera for said kit. ICARUS shall reimburse Primavera for the
shipping costs incurred by Primavera in furnishing such Product Kits for loan.
3.09 Internal Use; Training; Sales Demonstrations. Primavera shall, during
the term of this Agreement, and upon written request from ICARUS, furnish to
ICARUS at no charge in each calendar year Primavera Product Kits and any related
Enhancement Kits for use by ICARUS, its Affiliate and Dealers, in the amounts
set forth below, solely for their internal use, sales demonstrations, training
and technical support. ICARUS shall pay to Primavera the shipping costs incurred
by Primavera in furnishing same.
- 6 -
7
[*]
3.10 License of Primavera Marks.
(a) Primavera hereby grants to ICARUS for the term of this Agreement
a worldwide non-exclusive right and license, but not the obligation, to use and
sublicense to its Affiliate and Dealers the Primavera trademarks, service marks,
brand names, and logos used by Primavera for the Primavera Software (the
"Primavera Marks") in connection with the distribution, advertising and
promotion of the Software Products, subject to the provisions of this Paragraph
3.10.
(b) ICARUS acknowledges and agrees that except for the limited right
to use the Primavera Marks to the extent herein setforth, ICARUS has no rights
in the Primavera Marks. ICARUS acknowledges that Primavera owns and retains all
proprietary rights in and to all Primavera Marks, and that ICARUS shall take no
action or make any registration that would otherwise convey or grant an interest
in said Primavera Marks. ICARUS agrees not to contest or take any action to
contest Primavera's ownership of the Primavera Marks, or to use, employ or
attempt to register any trademark, service ▇▇▇▇, or tradename in any country in
the world that is confusingly similar to the Primavera Marks.
(c) ICARUS agrees that Primavera shall be the sole owner of any and
all goodwill in the Primavera Marks built up in the United States and in any
country in which the Software Products are distributed by ICARUS.
(d) ICARUS shall take no action that impairs or otherwise tarnishes
the Primavera Marks. ICARUS shall not remove or alter any ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ from
the Product Kits or Enhancement Kits.
(e) ICARUS shall require its Affiliate and Dealers to adhere to the
terms of this provision, and shall take steps generally consistent with the
monitoring of ICARUS's own marks to ensure that its Affiliate and Dealers use
the Primavera Marks in accordance with the terms of the license herein.
(f) ICARUS agrees to cooperate (at no cost to ICARUS) with Primavera
to protect Primavera's ownership of and interest in the Primavera Marks. This
cooperation includes prompt notice to Primavera of instances known to ICARUS in
which a third party is using the Primavera Marks without authorization.
Primavera shall have the right, but not the obligation, and shall bear all costs
and expenses, to (i) institute and prosecute any
--------------
[*] This information has been omitted pursuant to a request for
confidential treatment.
- 7 -
8
actions for infringement of the Primavera Marks throughout the world; (ii)
defend any petition to cancel any registration of the Primavera Marks; and (iii)
oppose any attempted use of or application to register any ▇▇▇▇ confusingly
similar to, or a colorable imitation of, any of the Primavera Marks throughout
the world. In the event that Primavera elects not to exercise the foregoing
rights in any particular instance, ICARUS may, at its cost and expense, exercise
such rights.
(g) Nothing contained in this Agreement shall be deemed to grant to
Primavera any rights to use, sublicense or otherwise, any trademarks, service
marks, brand names, logos belonging to ICARUS; and Primavera agrees that ICARUS
shall be the sole owner of any and all goodwill in the aforementioned, and
Primavera shall take no action that impairs or otherwise tarnishes same.
3.11 Misleading Practices; Unauthorized Warranties.
(a) To protect and preserve the goodwill and image of Primavera and
the Primavera Software, ICARUS agrees that it shall:
(i) refrain from publishing or using any misleading or
deceptive advertising or promotional material with respect to the Primavera
Software; and
(ii) refrain from making any representations, warranties
or guarantees to its Affiliate, Dealers or End Users with respect to the
specifications, features or capabilities of the Primavera Software or the
Product Kits that are inconsistent with or in addition to the warranty contained
in Primavera's End User License Agreement or the descriptions contained in the
User Documentation.
(b) ICARUS shall require that its Affiliate and Dealers agree in
writing to abide by the terms of this provision.
(c) ICARUS shall indemnify, defend and hold Primavera harmless
against claims by third parties arising from a breach by ICARUS, its Affiliate
or Dealers of this provision.
ARTICLE IV
PRODUCT KITS
4.01 Manufacture of Product Kits. Primavera shall have the sole right
to manufacture Primavera Product Kits, Demo Versions, and Enhancement Kits.
ICARUS shall not manufacture such kits.
4.02 Copy Protection Code. In the event ICARUS furnishes Primavera with
copy protection software in object code form, Primavera shall, at the reasonable
request of
- 8 -
9
ICARUS, incorporate such software in the Licensed Software contained in the
Primavera Product Kits delivered to ICARUS hereunder.
4.03 Product Kit Content; Revisions.
(a) Primavera reserves the right at any time without liability or
prior notice to ICARUS to (i) determine the contents of each Product Kit, and
(ii) revise such contents, provided, however, that the incorporation of any
Upgrade or Update in the Primavera Software contained in the Product Kit shall
be subject to the provisions of subparagraph (b).
(b) Primavera shall furnish to ICARUS no less than thirty (30) day
advance written notice of the commercial release by Primavera of any Upgrades or
Updates to the Primavera Software, which notice shall describe generally the
revisions reflected in such Upgrade or Update. ICARUS shall thereafter have the
right, which it may exercise by furnishing written notice to Primavera, to order
from Primavera Product Kits containing Primavera Software that incorporates such
Update or Upgrade. In the absence of such written notice from ICARUS, Primavera
shall, in fulfillment of Kit Orders from ICARUS, continue to ship to ICARUS
Product Kits containing Primavera Software that does not incorporate such
Upgrades or Updates. Nothing herein shall be deemed to preclude ICARUS from
subsequently electing to receive such upgrade or update provided such upgrade or
update remains available from Primavera.
(c) Nothing in this Agreement shall be construed to impose on
Primavera an obligation to develop or commercially release Upgrades to the
Primavera Software.
4.04 Revised Product Kits. In the event Primavera commercially releases
revised Product Kits, ICARUS may exchange the Product Kits in its inventory for
such revised Product Kits. ICARUS shall pay all shipping costs in connection
with any such exchange.
4.05 Initial Delivery of Product Kits. Within fourteen (14) days of the
date of this Agreement, Primavera shall deliver to ICARUS an initial supply of
12 Product Kits for inclusion by ICARUS in the Software Products.
4.06 Orders for Product Kits. Subsequent to the initial delivery of
Product Kits pursuant to Paragraph 4.05, all future orders by ICARUS for Product
Kits and Enhancement Kits shall be made pursuant to written Kit Orders.
4.07 Shipment of Product Kits; Risk of Loss.
(a) Primavera shall ship Product Kits and Enhancement Kits ordered
by ICARUS within five (5) days of the date of receipt by Primavera of the Kit
Order.
(b) Primavera shall ship all Product Kits and Enhancement Kits
F.O.B. Primavera's point of shipment to the ICARUS facilities designated in the
Kit Order. Unless
- 9 -
10
specified in the Kit Order, Primavera shall select the mode of shipment and the
carrier. ICARUS shall pay all shipping, freight and insurance charges.
(c) All risk of loss or damage for any Product Kits or Enhancement
Kits shall pass to ICARUS upon delivery by Primavera to the freight carrier, to
ICARUS, or to ICARUS's agent for delivery, whichever first occurs.
4.08 Controlling Terms. The terms and conditions of this Agreement shall
apply to each order accepted or shipped by Primavera. Any terms or conditions
appearing on the face or reverse side of any Kit Order that are different or
additional to the terms and conditions of this Agreement shall not be binding on
the parties unless both parties hereto expressly agree in a separate writing to
be bound by such different or additional terms and conditions. The terms and
conditions of this Agreement shall govern in the event of any conflict between
this Agreement and the terms of any Kit Order.
4.09 Cancellation of Order by Primavera. Primavera reserves the right to
cancel or suspend any Kit Order placed by ICARUS for Product Kits, or refuse or
delay shipment thereof, if ICARUS fails to make payments as required herein.
4.10 Cancellation of Order by ICARUS. ICARUS may cancel any Kit Order
without fee ten (10) days or more before the confirmed shipping date of the
Product Kits or Enhancement Kits.
4.11 Primavera End User License Agreement. All Product Kits and
Enhancement Kits (and Licensed Materials contained therein) furnished hereunder
and distributed by ICARUS shall be subject to the terms and conditions of
Primavera's End User License included in each Product Kit and Enhancement Kit,
as may be amended by Primavera from time to time. ICARUS shall ensure that each
End User shall receive such End User License.
4.12 Security Interest. ICARUS hereby pledges, assigns and grants to
Primavera, its successors and assigns a continuing security interest in and to
all Product Kits and Enhancement Kits delivered by Primavera to ICARUS hereunder
to secure payment in full to Primavera. ICARUS shall execute such UCC-1 forms
and other documents reasonably requested by Primavera to perfect such security
interest. Nothing herein shall be deemed to grant to Primavera a security
interest in any ICARUS Software or Software Product.
- 10 -
11
ARTICLE V
PRICES; PAYMENT
5.01 Prices to ICARUS.
(a) ICARUS shall pay to Primavera the following license fees:
(i) for each copy of a Software Product licensed for operation
by End User on a single user system, a Base License Fee (as adjusted in
subparagraph (b) below) based upon the number of single user systems as set
forth in the "Single User Systems" license fee chart in Appendix A, and subject
to the additional terms and conditions contained therein; and
(ii) for each copy of a Software Product licensed for
operation by End User on network systems, a Base License Fee (as adjusted in
subparagraph (b) below) based upon the number of simultaneous users in the End
User organization, as set forth in the "LAN" license fee chart in Appendix A,
and subject to the additional terms and conditions contained therein; and
[*]
In the event that an Enhancement Kit commercially released by
Primavera contains an Update, not an Upgrade, ICARUS shall pay to Primavera for
each Enhancement Kit only the shipping costs incurred by Primavera in furnishing
such Enhancement Kit to ICARUS.
(iv) The Base License Fees set forth in subparagraphs (i) and
(ii) above shall be adjusted for inflation as set forth in subparagraph (b)
below, and all pricing derived therefrom shall be likewise adjusted.
(b) Commencing with calendar year 1996, the adjusted Base License
Fee payable by ICARUS to Primavera for each additional copy of a Software
Product licensed to an End User shall consist of the Base License Fee for each
such copy, adjusted as of the commencement of each License Year during the term
hereof, by any change in the Index now known as the United States Bureau of
Labor Statistics, Consumer Price Index for all Urban Consumers, Washington, D.C.
▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ (▇▇▇▇-▇▇ = 100) (hereinafter referred to as the Index), or its
successor (or if discontinued its most nearly comparable
--------------
[*] This information has been omitted pursuant to a request for
confidential treatment.
- 11 -
12
successor) Index. Such adjustment shall be made by adding to the Base License
Fee, the product of the Base License Fee multiplied by a fraction
(i) the numerator of which is the difference between the Index
figure for the latest month of January for which the index is available at the
time of invoicing and the Index figure for the month of January for the First
License Year, and
(ii) the denominator of which is the Index figure for the
month of January of the First License Year.
The result of the foregoing computation shall constitute the adjusted
annual Base License Fees payable by ICARUS for each additional copy of a
Software Product licensed by ICARUS during the then current License Year. In the
event such Index is discontinued with no successor or comparable Index, then the
parties shall attempt to agree upon a substitute formula for the determination
of such License Fee adjustments in the basic License Fee to be paid hereunder,
but if they are unable to agree upon a substitute formula within thirty (30)
days, then the matter shall be determined by arbitration in accordance with the
then applicable rules of the American Arbitration Association. However, any such
substitute formula for License Fee adjustments whether arrived at by agreement
of the parties or by arbitration, shall require such adjustments to be
calculated and effected on the annual basis hereinbefore set forth.
5.02 End User Identification Reports; Forecasts.
(a) ICARUS shall submit to Primavera within thirty (30) days
following the last day of each ICARUS corporate quarter, a quarterly report
setting forth the names and addresses of each End User to which ICARUS, its
Affiliate or Dealers distributed a Software Product or an Enhancement Kit during
such quarter.
5.03 Payments by ICARUS.
(a) ICARUS shall pay to Primavera the license fees payable pursuant
to Paragraph 5.01 for each copy of a Software Product or Enhancement Kit
licensed to an End User within thirty (30) days following the last day of the
ICARUS corporate quarter during which such Software Product or Enhancement Kit
was licensed.
5.04 Interest. Interest shall accrue on any delinquent amounts owed by
ICARUS to Primavera hereunder at the rate of one and one-half percent (1.5%) per
month, or the maximum rate permitted by applicable law, whichever is less.
5.05 Taxes. ICARUS shall be responsible for and shall pay any and all
taxes, duties, withholdings or similar charges that are due and payable by
ICARUS directly to any governmental authority as a result of the distribution or
licensing of the Software Products,
- 12 -
13
including all sales, user, value-added, excise, personal property or other
similar taxes imposed by any local, state or federal government or regulatory
agency of any country.
5.06 Records; Audit.
(a) ICARUS shall maintain complete and accurate records sufficient
to permit the computation of the license fees payable hereunder to Primavera.
ICARUS shall, upon ten (10) days advance written notice by Primavera, but not
more frequently than once each calendar year, permit reasonable inspection of
such records by Primavera or its accountants at the offices of ICARUS during
normal working hours. Primavera shall maintain in confidence and not use or
disclose to third parties any of the information contained in or derived from
such records without the prior written consent of ICARUS.
(b) The cost of any audit shall be borne solely by Primavera, except
that if any audit reveals an underpayment by ICARUS of royalties for any quarter
of ten (10%) percent or more, ICARUS shall reimburse Primavera for all
reasonable costs associated with the audit and Primavera shall have the right to
audit the records maintained by ICARUS every six months from that time forth. If
any audit reveals an understatement of ICARUS of the license fees due hereunder,
ICARUS shall pay the amount of the understatement within ten (10) days of
receiving written notice from Primavera, which shall include a copy of the audit
report. If any audit reveals that ICARUS has overpaid the license fees, the
amount of the overpayment shall be applied to reduce the amount of the next
payment due from ICARUS, or at the election of ICARUS, shall be paid to ICARUS
within ten (10) days. Nothing herein shall be deemed to preclude ICARUS from
disputing the results of such audit.
(c) This provision shall survive for one (1) year following the
expiration or termination of this Agreement.
ARTICLE VI
TECHNICAL SUPPORT; CONFIDENTIALITY
6.01 Support to End Users. During the term of this Agreement, Primavera
shall offer to End Users such technical support services as Primavera makes
available to other end users of the Licensed Software at a price and under other
terms and conditions that are substantially the same as those offered by
Primavera to other similarly situated end users, including the applicability of
Primavera's technical support policies with respect to superseded versions of
the Licensed Software; provided, however, Primavera shall not offer, sell or
distribute Enhancement Kits directly to End Users, regardless of whether they
subscribe to Primavera's technical support services. The parties acknowledge and
agree that ICARUS, its Affiliate and Dealers shall have sole opportunity and
responsibility to order such Enhancement Kits from Primavera and distribute them
to End Users.
6.02 Support to ICARUS. Nothing in this Agreement shall be construed to
obligate Primavera to furnish technical support, maintenance services or
training of any kind to
- 13 -
14
ICARUS or to its Affiliate and Dealers, provided, however, any such support,
maintenance or training shall upon request, be provided at Primavera's
convenience to ICARUS at no greater charge than Primavera's charges its own
customers.
6.03 Confidentiality.
(a) Each party may disclose to the other information concerning its
Confidential Information as may be necessary to further the performance of this
Agreement. Each party agrees to treat the other's Confidential Information in
the manner prescribed herein.
(b) Primavera and ICARUS shall protect the other's Confidential
Information as follows:
(i) Except as specifically provided herein or otherwise
permitted by the other party in writing, each party shall not disclose
Confidential Information of the other party to third parties. Each party may
disclose Confidential Information of the other party only to those employees and
agents required to have knowledge of same to perform their duties pursuant to
this Agreement. Each party shall require each such employee or agent to enter
into a written non-disclosure agreement containing provisions substantially
consistent with the terms hereof prior to the disclosure of Confidential
Information to such employee or agent. Each party shall treat the Confidential
Information of the other party with the same degree of care as it protects its
own Confidential Information, and in no case less than a reasonable degree of
care.
(ii) Except as may specifically be permitted herein, upon the
termination of this Agreement, each party shall return to the other, or if so
requested, destroy all Confidential Information in the other's possession or
control, except such Confidential Information as may be reasonably necessary to
exercise the rights that survive the termination of this Agreement, but solely
to the extent and for the duration necessary.
(c) The foregoing obligations of confidentiality shall not apply
with respect to either party's Confidential Information to the extent that it:
(i) is within or later falls within the public domain
through no fault of the party receiving the Confidential Information; or
(ii) is, or becomes, available to the receiving party from
third parties who, in making such disclosure, have breached no written
confidentiality agreement, fiduciary or other duty; or
(iii) is previously known by the receiving party; or
- 14 -
15
(iv) is independently developed by or for the receiving
party without use of the Confidential Information.
ARTICLE VII
WARRANTY; INDEMNIFICATION
7.01 Warranty to ICARUS. Primavera hereby warrants to ICARUS that the
Product Kits and Enhancement Kits, when and as delivered to ICARUS, shall be
free from physical defects in materials and workmanship. This warranty shall
apply only during the period commencing upon delivery of the Product Kit or
Enhancement Kit and ending upon the later of (a) six (6) months after receipt by
ICARUS of the Product Kit or Enhancement Kit or (b) six (6) months after
delivery by ICARUS to an End User of the Enhancement Kit or Software Product
containing the Product Kit. Notwithstanding the foregoing, to the extent any
Primavera End User License contained in a Primavera Product Kit or Enhancement
Kit extends to any End User Warranty coverage broader in scope, longer in
duration or otherwise more comprehensive than the above warranty, then Primavera
shall honor such broader, longer or more comprehensive warranty for such Product
Kit or Enhancement Kit.
7.02 Warranty to End Users. The sole and exclusive warranty of Primavera
to End Users is set forth in the Primavera End User License Agreement contained
in each Product Kit and Enhancement Kit, and Primavera makes no other warranties
to or for the benefit of End Users in this Agreement.
7.03 Replacement Requests; Returns. ICARUS shall -honor all requests
from End Users for return or replacement of Product Kits or Enhancement Kits
pursuant to the terms of the warranty from Primavera contained in Primavera's
End User License Agreement. ICARUS shall require its Affiliate and Dealers to
submit to it all such requests for returns and replacements by End Users.
7.04 Exclusive Remedy; Replacement and Return Procedure.
(a) Primavera shall replace defective Product Kits and Enhancement
Kits that are returned to Primavera's point of shipment, freight prepaid, and
this shall be the sole and exclusive remedy of ICARUS, its Affiliate, Dealers
and End Users for any breach of Primavera's warranty, unless the Primavera End
User License specifies other rights and/or remedies.
(b) ICARUS shall request return authorization from Primavera prior
to a return shipment of defective Product Kits or Enhancement Kits, or of
Product Kit or Enhancement Kit returns by End Users, and Primavera shall provide
annual reimbursement of freight charges for such returns. Primavera may, at its
option, provide credit vouchers to ICARUS for the such kits replaced or returned
based on the fees charged to ICARUS hereunder.
- 15 -
16
7.05 Warranty Disclaimer. THE WARRANTY STATED IN PARAGRAPH 7.01 IS
PRIMAVERA'S SOLE AND EXCLUSIVE WARRANTY TO ICARUS PERTAINING TO THE LICENSED
MATERIALS, THE PRODUCT KITS AND THE ENHANCEMENT KITS, AND PRIMAVERA HEREBY
DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
7.06 Exclusion of Consequential Damages; Limitation of Liability. IN NO
EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY, OR TO ITS AFFILIATE
DEALERS OR END USERS, FOR ANY INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES,
REGARDLESS OF THE NATURE OF THE CLAIM, INCLUDING WITHOUT LIMITATION LOST
PROFITS, COSTS OF DELAY, ANY FAILURE OF DELIVERY, COSTS OF LOST OR DAMAGED DATA
OR DOCUMENTATION OR LIABILITIES TO THIRD PARTIES ARISING FROM ANY SOURCE. IN NO
EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY, OR TO ITS AFFILIATE,
DEALERS OR END USERS FOR DAMAGES IN EXCESS OF THE LICENSE FEES PAID BY ICARUS TO
PRIMAVERA HEREUNDER; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATION OF
LIABILITY SHALL NOT OPERATE TO LIMIT THE LIABILITY OF ICARUS TO PRIMAVERA FOR
INFRINGEMENT OF PRIMAVERA'S INTELLECTUAL PROPERTY RIGHTS IN THE LICENSED
MATERIALS OR FOR PAYMENTS DUE UNDER THE TERMS OF THIS AGREEMENT.
7.07 Limitation of Primavera Liability. IN THE EVENT THAT,
NOTWITHSTANDING PARAGRAPH 7.04 HEREOF, PRIMAVERA IS FOUND LIABLE FOR DAMAGES
BASED ON ANY DEFECT OR NONCONFORMITY IN A PRODUCT KIT OR AN ENHANCEMENT KIT,
ITS TOTAL LIABILITY FOR EACH DEFECTIVE KIT SHALL NOT EXCEED THE LICENSE FEE
PAID BY ICARUS FOR SUCH KIT.
7.08 Indemnification by Primavera. Primavera shall defend and hold ICARUS
harmless from all claims, suits, damages and expenses (including attorney's
fees) arising from a claim against ICARUS that the Licensed Materials infringe a
United States patent, copyright, trademark or other intellectual property right,
provided that Primavera receives prompt written notice of any such claim from
ICARUS, and Primavera is afforded the opportunity to exercise sole control of
the defense and all negotiations pertaining to such claim. Primavera shall also
have the right, at its expense, either to procure the right for ICARUS to
continue to distribute the Licensed Materials, or to replace or modify them so
that they become non-infringing. If neither of the foregoing alternatives is
available on terms that Primavera, in its sole discretion, deems desirable,
ICARUS shall return to Primavera the infringing Product Kits or Enhancement Kits
in its possession upon written request from Primavera, in which event Primavera
shall refund to ICARUS the price paid, if any, by ICARUS for such returned kits.
7.09 Notification of Infringement, Etc. ICARUS shall promptly notify
Primavera of (a) any claims, allegations or notification that the marketing,
licensing or use of the Licensed
- 16 -
17
Materials may or will infringe any patent, copyright, trademark or other
intellectual property right of any other person or entity; (b) any determination
or discovery that any person or entity is or may be infringing any patent,
copyright, trademark or other intellectual property right owned by Primavera;
and (c) any known failure of an End User to abide by the terms of Primavera's
End User License Agreement.
7.10 Indemnification. ICARUS shall defend, indemnify and hold Primavera
harmless from any and all claims of loss or damage to property or injury to
persons arising from the installation, use or possession of the Software
Products by ICARUS, its Affiliate, Dealers, End Users or any other person.
ARTICLE VIII
TERM; TERMINATION
8.01 Term. This Agreement shall become effective as of the date first
written above and continue for an initial term of ten (10) years, unless sooner
terminated as provided herein. Thereafter, either party may terminate this
Agreement upon ninety (90) days advance written notice to the other party.
8.02 Termination for Material Breach. Either party may, at its option,
terminate this Agreement in the event of a material breach by the other party.
Such termination may be effected only through a written notice to the other
party, specifically identifying the breach or breaches on which termination is
based. Following receipt of such notice, the party in breach shall have sixty
(60) days to cure such breach or breaches, said cure period to proceed
simultaneously with the dispute resolution procedure, if any, conducted pursuant
to Paragraph 9.12 hereof, and this Agreement shall terminate in the event that
such cure is not made by the end of such period. In the event that the parties
dispute either the existence of a material breach or the adequacy of attempted
cure, and either party submits such dispute to arbitration under Paragraph 9.13
hereof, the termination shall not be deemed effective until the arbitrator
renders a final decision finding an uncured material breach, provided, however,
that the termination shall be deemed effective if arbitration pursuant to
Paragraph 9.13 hereof is not initiated within fifteen (15) days after the
progressive dispute negotiation procedures under Paragraph 9.12 hereof are
complete. Either party may cure an alleged breach without waiving its right to
dispute resolution and arbitration as herein set forth, and shall be entitled as
part of a favorable arbitrator's decision to be compensated for payments made to
effect such cure or the payments due for Licensed software or services
delivered, as the case may be, to which it would have been entitled under this
Agreement.
8.03 Bankruptcy. If either party files a petition in bankruptcy (or is the
subject of an involuntary petition in bankruptcy that is not dismissed within
sixty (60) days after the effective filing date thereof); or is or becomes
insolvent; or enters into any formal arrangement with its creditors, or ceases
doing business in the ordinary course; or admits
- 17 -
18
of a general inability to pay its debts as they become due; then the other party
shall have the right to terminate this Agreement upon thirty (30) days written
notice.
8.04 Survival. Upon termination of this Agreement, ICARUS, its Affiliate
and Dealers may distribute to End Users their remaining inventory of Software
Products, provided that ICARUS remit to Primavera all license fees due and
payable hereunder by reason of the distribution of such remaining inventory. End
Users as of the effective date of expiration or termination of this Agreement
and End Users that license the remaining inventory of Software Products pursuant
to this Paragraph 8.04 shall have a continuing right to use the Licensed
Materials in accordance with the terms of Primavera's End User License.
Paragraphs 3.03, 3.04, 3.11, 6.03, 7.08, 7.10 and 8.04, and Articles VII and IX
hereof shall also survive the termination of this Agreement.
ARTICLE IX
MISCELLANEOUS
9.01 Entire Agreement. This Agreement, together with the Appendices
hereto, collectively set forth the entire agreement and understanding between
the parties hereto with respect to the subject matter hereof and, except as
specifically provided herein, supersede and merge all prior oral and written
agreements, discussions and understandings between the parties with respect to
the subject matter hereof, and neither of the parties shall be bound by any
conditions, inducements or representations other than as expressly provided for
herein.
9.02 Independent Contractors. In making and performing this Agreement,
Primavera and ICARUS act and shall act at all times as independent contractors
and nothing contained in this Agreement shall be construed or implied to create
an agency, partnership or employer and employee relationship between them. At no
time shall either party make commitments or incur any charges or expenses for or
in the name of the other party.
9.03 Notices. Any notice required or permitted to be given hereunder,
shall, except where specifically provided otherwise, be given in writing to the
person listed below by registered mail or overnight delivery service, and the
date upon which any such notice is received at the designated address shall be
deemed to be the date of such notice. Any notice shall be delivered as follows:
If to ICARUS: ICARUS Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: President
- 18 -
19
If to Primavera: Primavera Systems, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
President
or addressed to such other address as that party may have given by written
notice in accordance with this provision.
9.04 Amendments; Modifications. This Agreement may not be amended or
modified except in a writing duly executed by the parties hereto.
9.05 Assignment. Neither party may assign this Agreement, or any part
thereof, without the prior written consent of the other party.
9.06 Severability. The provisions of this Agreement shall be severable,
and if any of them are held invalid or unenforceable for any reason, such
provision shall be adjusted to the minimum extent necessary to cure such
invalidity. The invalidity or unenforceability of one or more of the provisions
contained in this Agreement shall not affect any other provisions of this
Agreement.
9.07 Waivers. Any delay or forbearance by either party in exercising any
right hereunder shall not be deemed a waiver of that right.
9.08 Governing Law. This Agreement shall be governed by and interpreted
in accordance with the substantive laws of the State of Delaware.
9.09 Disclaimer of UN Convention on Sale of Goods. PURSUANT TO ARTICLE 6
OF THE UNITED NATIONS CONVENTION ON CONTRACTS FOR THE INTERNATIONAL SALE OF
GOODS ("UN CONVENTION"), THE PARTIES AGREE THAT THE UN CONVENTION SHALL NOT
APPLY TO THIS AGREEMENT.
9.10 Export Controls.
(a) ICARUS shall cooperate (but at no cost to ICARUS) with Primavera
as reasonably necessary to permit Primavera to comply with the laws and
administrative regulations of the United States relating to the control of
exports of commodities and technical data ("Export Laws").
(b) ICARUS hereby assures Primavera that ICARUS will not export or
re-export directly or indirectly (including via remote access) any part of the
Licensed Materials or the Product Kits (including any Confidential Information)
to any country for which a validated license is required for such export or
re-export under the Export Laws without first obtaining such a validated
license.
- 19 -
20
(c) ICARUS will defend Primavera against any and all claims, and
indemnify Primavera against any and all losses or expenses, arising from or
otherwise in respect of any asserted violation of the Export Laws by ICARUS,
provided that Primavera shall furnish ICARUS with assistance and information and
cooperate with ICARUS in the defense of any such claim.
9.11 Force Majeure. Neither ICARUS, its Affiliate and Dealers nor
Primavera shall be liable for failure or delay of performance hereunder if
occasioned by force majeure, including war, declared or undeclared, fire, flood,
interruption of transportation, embargo, accident, explosion, inability to
procure, or shortage of supply of materials, equipment or production facilities,
governmental orders, regulations, restrictions, priorities or rationing, or by
strike, lockout, or other labor troubles, or any other cause beyond the control
of the party claiming that its failure of performance was occasioned by force
majeure. Any suspension of performance by reason of this paragraph shall be
limited to the period during which such cause or failure exists, but such
suspension shall not affect the term of this Agreement as heretofore defined.
9.12 Progressive Dispute Negotiation Procedure.
(a) This paragraph will govern any dispute between Primavera and
ICARUS arising from or related to the subject matter of this Agreement that is
not resolved by agreement between their respective personnel responsible for day
to day administration and performance of this Agreement.
(b) Prior to the filing of any suit with respect to such a dispute
(other than a suit seeking injunctive relief with respect to intellectual
property rights), the party believing itself aggrieved (the " Invoking Party")
will call for progressive management involvement in the dispute negotiation by
notice to the other party. Such a notice will be without prejudice to the
Invoking Party's right to any other remedy permitted by this Agreement.
(c) Primavera and ICARUS will use their best efforts to arrange
personal meetings and/or telephone conferences as needed, at mutually convenient
times and places, between their negotiators at the following successive
management levels, each of which will have a period of allotted time as
specified below in which to attempt to resolve the dispute:
PRIMAVERA ICARUS ALLOTTED TIME
FIRST LEVEL Manager ________ Manager _______ 7 bus. days
SECOND LEVEL CEO __________ CEO __________ 15 days
(d) The allotted time for the first-level negotiators will begin on
the effective date of the Invoking Party's notice.
- 20 -
21
(e) If a resolution is not achieved by the negotiators at any given
management level at the end of their allotted time, then the allotted time for
the negotiators at the next management level, if any, will begin immediately.
(f) If a resolution is not achieved by negotiators at the final
management level within their allotted time, then either party may within ten
(10) business days request mediation to resolve the dispute.
(g) The Mediation Rules of the American Arbitration Association
shall be used unless Primavera and ICARUS agree otherwise.
(h) The mediation shall take place in the city of the party that is
not the Invoking Party.
(i) The allotted period for completion of the mediation shall be
thirty (30) days.
(j) If a resolution is not achieved by mediation within the allotted
time or if mediation is not requested within the permitted ten-day period, then
either party may file an arbitration demand or other permitted action to resolve
the dispute.
9.13 Arbitration. In the event a dispute between the parties arising under
this Agreement is not resolved using the procedures of Paragraph 9.12, the
parties shall submit to binding arbitration before a single arbitrator in
Wilmington, Delaware, under the Commercial Arbitration Rules of the American
Arbitration Association, except that temporary restraining orders or preliminary
injunctions, or their equivalent in any country of the world, may be obtained
from any court of competent jurisdiction. The pre-hearing and hearing
proceedings in the arbitration shall be generally governed by the Federal Rules
of Civil Procedure and the judicial precedent interpreting those rules. The
decision of the arbitrator shall be final and binding with respect to the
dispute subject to the arbitration and shall be enforceable in any court of
competent jurisdiction. Each party shall bear its own expenses, attorney's fees
and costs incurred in such arbitration.
9.14 Counterparts. This Agreement may be executed in any number of
counterparts, each of which when so executed shall be deemed to be an original
and all of which when taken together shall constitute one Agreement.
9.15 Construction. This Agreement is the product of joint draftsmanship
and shall not be construed against one party more strictly than against the
other.
9.16 Confidentiality of Agreement. The pricing (Paragraph 5.01) terms of
this Agreement shall remain confidential, except to the extent disclosure may be
necessary in conjunction with enforcement of any term hereof, and on an as
needed basis to either party's accountants, lawyers and other professional
advisors, and to ICARUS' Affiliates.
- 21 -
22
9.17 Headings. The headings in this Agreement are inserted merely for the
purpose of convenience and shall not affect the meaning or interpretation of
this Agreement.
IN WITNESS WHEREOF, the parties hereto, intending to be legally bound,
have executed this Agreement as of the day and year first above written.
ATTEST: PRIMAVERA SYSTEMS, INC.
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇ BY:/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
-------------------------- -------------------------
TITLE: President
-------------------
ATTEST: ICARUS CORPORATION
/s/ ▇▇▇▇ ▇▇▇▇▇ BY:/s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
-------------------------- -------------------------
TITLE: President
-------------------
- 22 -
23
APPENDIX A --PRIMAVERA PRICE SCHEDULE
PRIMAVERA PROJECT PLANNER AND FINEST HOUR
NUMBER OF BASE LICENSE FEE EACH ADDITIONAL
SIMULTANEOUS LAN (LAN PRICE FOR SIMULTANEOUS USER
USERS (QUANTITY) SIMULTANEOUS (EACH ADDITIONAL)
USERS ON SAME FILESERVER)
[*]
SINGLE USER SYSTEMS
NUMBER OF SINGLE USER BASE LICENSE FEE - BULK EACH ADDITIONAL SYSTEM -
SYSTEMS PRICE (BULK PRICE FOR BULK PRICE
SEPARATE SINGLE USER (BULK INCREMENTAL PRICE)
UNITS)
[*]
Terms and conditions:
- Prices are in U.S. Dollars.
- LAN pricing is for the product installed on a single fileserver. The LAN
product is not separable into independent units.
- Bunk pricing is only valid for quantities ordered on the same purchase
order for the same delivery date to the same end user organization. The
bulk packs may not be shared among purchasers.
- For quantities not specifically listed, use the incremental price from the
next lower tier.
-------------
[*] This information has been omitted pursuant to a request for
confidential treatment.
- 23 -