Exhibit 10.12
Portions of this exhibit have been omitted pursuant to a request for
confidential treatment filed with the Securities and Exchange Commission. The
omissions have been indicated by asterisks ("*****"), and the omitted text has
been filed separately with the Securities and Exchange Commission.
CLEARING 21-REGISTERED TRADEMARK- SOFTWARE MARKETING
AND DISTRIBUTION AGREEMENT
RESTATEMENT
EFFECTIVE THIS 30TH DAY OF JANUARY, 2001
BETWEEN
SOCIETE DES BOURSES FRANCAISES, and its successor, Euronext-Paris, a corporation
organized and existing under the Laws of France duly registered with the Trade
Registry of Paris under number B 343 406 732 and having its registered offices
Palais de la Bourse, ▇▇▇▇▇ ▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, and having its principal
office ▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, duly represented by its Chairman and Chief
Executive Officer, ▇▇. ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇.
(Hereinafter referred to at times as "SBF" or "Licensee"),
AND
CHICAGO MERCANTILE EXCHANGE, a not for profit corporation organized under the
laws of the State of Illinois and having its principal office situated at ▇▇
▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ U.S.A., and its successor, Chicago
Mercantile Exchange Inc., a Delaware for-profit company, duly represented by its
President and Chief Executive Officer, ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇,
(Hereinafter referred to at times as "CME" or "Licensor"),
AND
NEW YORK MERCANTILE EXCHANGE, a New York corporation having an office at One
North End Avenue, World Financial Center, New York, New York 10282-1101
U.S.A., and its successor, New York Mercantile Exchange Inc., a Delaware
for-profit company, duly represented by its Executive Vice President, ▇▇.
▇▇▇▇ ▇▇▇▇▇▇▇.
(Hereinafter referred to at times as "NYMEX" or "Licensor").
1
RECITALS
WHEREAS, Licensors, as hereinafter defined, have developed, jointly own
and separately operate for their respective markets, a computerized system of
clearance and settlement for derivative instruments commonly referred to as
"CLEARING 21", with respect to which Licensors hold, or have applications
pending for, trademarks registered in the United States of America and
elsewhere.
WHEREAS, CME requested and received NYMEX's approval to include the
CLEARING 21 system in an exchange of technology by CME with SBF that occurred on
June 5, 1997 (collectively, the "June Technology Swap"), which approval was
granted in a letter dated May 15, 1997 from ▇▇. ▇▇▇▇▇▇▇▇▇ to ▇▇. ▇▇▇▇ ▇.
▇▇▇▇▇▇▇.
WHEREAS, as part of the June Technology Swap, CME granted SBF a CLEARING
21 software license for use in connection with SBF's own internal business
purposes (the "June CLEARING 21 License"), and SBF granted CME corresponding
license privileges with respect to certain electronic trade entry software
developed and owned by SBF.
WHEREAS, Licensors have agreed to authorize a sublicense of the Clearing
21 Software License Agreement to Clearnet, as permitted in the original
agreement without additional consideration, contingent upon, and to become
effective simultaneously with, this Agreement.
WHEREAS, Licensors and SBF entered into the original CLEARING 21 License
and Software Marketing and Distribution Agreement to promote CLEARING 21 as a
global standard for clearing and settlement of financial products and to advance
their mutual interest in promoting, marketing, licensing, sublicensing and
providing training and maintenance to prospective third party users of CLEARING
21.
WHEREAS, Licensors and SBF have agreed to restate the terms of the
original CLEARING 21 Software Marketing and Distribution Agreement as follows:
NOW THEREFORE, in consideration of the premises and the mutual promises
and undertakings herein expressed, Licensors and Licensee hereby agree as
follows:
ARTICLE 1 - INTERPRETATION
1.1. DEFINITIONS.
In this Agreement, unless the context otherwise requires:
(a) "Bilateral Agreement" shall have the meaning set forth in Section
8.3.
(b) "CLEARING 21" shall have the meaning set forth in the Recitals.
2
(c) "CLEARING 21 Base Product" means the CLEARING 21 computer software
modules, including the source code and object code therefor, and any manuals,
technical specifications and/or other forms of documentation pertaining thereto,
whether embodied in printed, electronic or any other type of format, as
developed, modified or enhanced from time to time by or for a Licensor; or by or
for another entity, not itself a party to this Agreement, pursuant to a separate
CLEARING 21 license agreement entered into by a Licensor or Licensee in which
such Licensor or Licensee is permitted by the terms of such license agreement to
relicense and redistribute such computer software modules and related
documentation. For purposes of this Agreement, the CLEARING 21 Base Product
shall include, but shall not be limited to, the following computer software
modules: Product, Organization and Account, Position Management, Performance
Bond, Settlement, Asset Management and Banking, Exception Risk, Currency,
Calendar, Security and Execution Control.
(d) "DEC" shall have the meaning set forth in Section 5.3.
(e) "DEC Enhancements" shall have the meaning set forth in Section 5.3.
The modules comprising the DEC Enhancements constitute a portion of the CLEARING
21 Base Product for which a Prospective User shall be required to obtain a
separate sublicense or sublicense upgrade.
(f) "Derivative Work" means any computer software module, including the
source code and object code therefor, and any manuals, technical specifications
and/or other forms of documentation pertaining thereto, whether embodied in
printed, electronic or any other type of format, that is based upon or derived
from the CLEARING 21 Base Product or any part thereof and is created: (a) by,
for, or under the direction of Licensee in accordance with the license granted
to Licensee by Licensors hereunder, or (b) by, for, or under the direction of a
Sublicensee in accordance with the terms of a sublicense agreement entered into
with Licensee.
(g) "Derivatives Product" means a financial product or contract whose
market value is based upon or derived from some other, underlying value,
including, without limitation, a futures contract, options contract, forward
contract, swap agreement or other similar type of instrument.
(h) "Intellectual Property Claim" shall have the meaning set forth in
Section 7.5.
(i) "June CLEARING 21 License" shall have the meaning set forth in
the Recitals.
(j) "June Technology Swap" shall have the meaning set forth in the
Recitals.
(k) "Licensor" means CME and NYMEX, severally. In the plural voice, the
term means CME and NYMEX, jointly and severally.
3
(l) "Prospective User" means an exchange, clearing house, financial
institution or other type of entity which provides clearance and settlement
services with respect to, without limitation, futures, securities, options and
other types of financial products.
(m) "Securities Product" means an equity or debt security or other similar
type of instrument.
(n) "Securities Products Enhancements" shall have the meaning set forth in
Section 5.4. The modules comprising the Securities Products Enhancements
constitute a portion of the CLEARING 21 Base Product for which a Prospective
User shall be required to obtain a separate sublicense or sublicense upgrade.
(o) "Standard CME Share" shall have the meaning set forth in Section
5.2.
(p) "Standard NYMEX Share" shall have the meaning set forth in
Section 5.2.
(q) "Standard Licensee Share" shall have the meaning set forth in
Section 5.2.
(r) "Sublicensee" means a Prospective User that has entered into and is a
party to a valid sublicense agreement (or a sublicense upgrade agreement) with
Licensee with respect to the CLEARING 21 Base Product or any part thereof and/or
the Derivative Works, in accordance with the sublicensing authority granted to
Licensee under this Agreement.
1.2. REFERENCES.
Unless something in the subject matter or context is inconsistent with the
resulting interpretation, all references to Sections, Paragraphs, Articles and
Schedules are to Sections, Paragraphs, Articles and Schedules of this Agreement.
The words "hereto", "herein", "of this Agreement", "under this Agreement" and
similar expressions mean and refer to this Agreement.
1.3. SCHEDULES.
The Schedules forming part of this Agreement are as follows:
Schedule 1 Prospective Users Reserved by CME
Schedule 2 Prospective Users Reserved by NYMEX
Schedule 3 Revenue Sharing Tables
Schedule 4 Exchanges and Clearing Organizations Subject to SBF
Marketing Plan
Schedule 5 CME and NYMEX Invoice Samples
1.4. HEADINGS.
4
The inclusion of headings in this Agreement is for convenience of
reference only and does not affect the construction or interpretation of this
Agreement.
1.5. NO OBLIGATION.
No provision of this Agreement shall be construed to bind or obligate
Licensors or Licensee in any way to develop, make further enhancements to or
maintain any current or future version of the CLEARING 21 Base Product or any of
the Derivative Works, including, without limitation, the DEC Enhancements and
the Securities Products Enhancements.
ARTICLE 2 - GRANT OF LICENSE AND RIGHT TO SUBLICENSE
2.1. LICENSE TO PROMOTE, MARKET AND DISTRIBUTE CLEARING 21.
Subject to the exceptions set forth in Sections 2.4, 3.4 and 3.5 hereof,
Licensors hereby grant to Licensee and Licensee hereby accepts from Licensors,
in accordance with the terms and conditions of this Agreement, an exclusive,
non-transferable, worldwide license to promote and market the CLEARING 21 Base
Product and Derivative Works to Prospective Users and to license and distribute
the CLEARING 21 Base Product and Derivative Works to each such Prospective User,
without the right to further sublicense or distribute the same, solely for use
in connection with the clearing and settlement of contracts, securities and
financial instruments traded or cleared through the facilities of each such
Prospective User; provided, however, that each such Prospective User shall have
first executed a written agreement which complies in all material respects with
the requirements set forth in Section 3.6 hereof. Licensee's duties under this
Agreement may be performed by ATOS-Euronext, a corporation organized and
existing under the laws of France duly registered with the Trade Registry of
Paris under number B 425 100 294 and having its registered offices Palais de la
Bourse, ▇▇▇▇▇ ▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, as a subcontractor. SBF agrees that its
use of ATOS-Euronext as a subcontractor shall not release it from any duties or
responsibilities hereunder and that SBF shall remain responsible to Licensors
for such performance as if it had directly performed hereunder.
2.2. LICENSE TO USE CLEARING 21 TRADEMARK.
Licensors hereby grant to Licensee and Licensee hereby accepts from
Licensors, in accordance with the terms and conditions of this Agreement, a
non-exclusive, non-transferable, worldwide license to use the CLEARING 21
trademark in connection with the performance of this Agreement, together with
the right to license use of such CLEARING 21 trademark to Prospective Users, but
without the right to further sublicense such use. Licensee agrees to acknowledge
Licensors' ownership of the CLEARING 21 trademark in all documents and other
materials employed by Licensee in connection with Licensee's promotion,
marketing and licensing of the CLEARING 21 Base Product and the Derivative Works
pursuant to this Agreement.
5
2.3. LICENSE TO CREATE DERIVATIVE WORKS.
Licensors hereby grant to Licensee and Licensee hereby accepts from
Licensors, in accordance with the terms and conditions of this Agreement, a
non-exclusive, non-transferable, worldwide license to create Derivative Works,
together with the right to grant a restricted sublicense to create such
Derivative Works to Prospective Users.
2.4. PROSPECTIVE USERS RESERVED BY LICENSORS.
CME expressly excludes from this Agreement and reserves for itself the
right to promote and market the CLEARING 21 Base Product, any part thereof
and/or the Derivative Works to the Prospective Users listed in Schedule 1
attached hereto. NYMEX expressly excludes from this Agreement and reserves for
itself the right to promote and market the CLEARING 21 Base Product, any part
thereof and/or the Derivative Works to the Prospective Users listed in Schedule
2 attached hereto. Each Licensor reserves for itself the right to license the
Clearing 21 Base Product, any part thereof and/or the Derivative works to
Prospective User in which such Licensor owns at least a 25% equity interest
(excluding however the exchanges listed in Schedule 4.).
2.5. OWNERSHIP RIGHTS.
Licensee acknowledges Licensors' exclusive ownership rights in the
CLEARING 21 trademark and agrees not to assert any ownership interests in such
trademark for itself or on behalf of any Sublicensee. Licensee and its
Sublicensees shall acquire no ownership rights whatsoever in the CLEARING 21
Base Product or the Derivative Works, and any provision to the contrary in any
sublicense agreement entered into by Licensee shall be null and void. Licensee
agrees not to remove Licensors' trademark, copyright or other proprietary
notices embedded in the CLEARING 21 Base Product, and shall require such notices
to be embedded in all Derivative Works created by or for Licensee or a
Sublicensee.
Derivative Works created by or for Licensee and/or by or for a Sublicensee
shall be the sole property of Licensors. Licensee agrees that all present and
future copyright or patent in any Derivative Work created by or for Licensee is
hereby assigned to Licensors, including, but not limited to, rights to create
derivative works thereon and any renewal rights, and Licensee agrees to execute
any documents necessary to vest full copyright or patent ownership in Licensors,
including waiver of any Licensee moral rights. Licensee agrees to provide
reasonable assistance to Licensors in securing and enforcing such copyrights or
patents; provided, however, that Licensee shall not be required to incur any
additional or extraordinary costs or expenses in connection therewith.
Licensors shall have a right without restriction to use the Derivative
Works for their own internal business purposes. Except as set forth in Section
2.6 below, Licensors shall also have a right without restriction, but not an
obligation, to incorporate any Derivative Works created by or for Licensee
and/or by or for a Sublicensee into the
6
CLEARING 21 Base Product, and to relicense or otherwise redistribute such
incorporated software to other licensees without any accounting therefor to
Licensee or any Sublicensee.
2.6. SUBLICENSE PROVISIONS BINDING UPON LICENSORS.
Licensors agree to be bound by any restrictive provision that is legally
enforceable against Licensee in any sublicense agreement entered into by
Licensee in accordance with this Agreement which prevents Licensee from
relicensing or otherwise redistributing Derivative Works created by or for such
Sublicensee; provided, however, that: (a) Licensee must notify Licensors of the
terms of any such restrictive provision; (b) Licensors may, at their option and
expense, enter into direct negotiations with such Sublicensee with the objective
of removing such restrictive provision; and (c) Licensors shall not be bound by
terms in any sublicense agreement that purport to restrict Licensors from
licensing and/or distributing software similar in function and design to the
subject Derivative Works, provided such software has been developed
independently by or for Licensors without reference to such Derivative Works.
2.7. NO OTHER RIGHTS OR INTEREST.
Except as expressly set forth in this Article 2, this Agreement confers
upon Licensee no proprietary rights to or interest in the CLEARING 21 trademark,
the CLEARING 21 Base Product or the Derivative Works.
ARTICLE 3 - RESPONSIBILITIES OF LICENSEE
3.1. COSTS AND EXPENSES.
Licensee shall be solely responsible for any costs and expenses incurred
by Licensee in connection with this Agreement.
3.2. EXCLUSIVITY.
*****, Licensee agrees not to engage in any activity and/or enter into any
agreement with any third party concerning or involving the promotion, marketing,
licensing and/or sublicensing of any product or service which would compete with
the CLEARING 21 Base Product.
3.3. REASONABLE COMMERCIAL EFFORTS.
Subject to the restrictions set forth in Section 2.4 above and Section 3.4
below, Licensee shall employ reasonable commercial efforts to promote, market
and sublicense the CLEARING 21 Base Product and/or the Derivative Works to
Prospective Users, and shall respond to qualified requests for proposal from
such Prospective Users. Licensee shall promote, market and sublicense the
CLEARING 21 Base Product and/or the
7
Derivative Works without regard to the business plans, strategic needs or
initiatives of any other person. Every quarter during the term of this
Agreement or any renewal thereof, Licensee shall report to Licensors in
writing the details of all contacts with, requests for information from,
requests for proposals from, proposals and presentations to Prospective
Users, progress of all negotiations and discussions, and business plans for
promoting CLEARING 21.
Every six months during the term of this Agreement or any renewal
thereof, Licensee shall advise Licensors in writing of the Prospective Users
in which Licensee has expended and/or intends to expend significant amounts
of time, money and effort in connection with the promotion and marketing of
the CLEARING 21 Base Product and/or the Derivative Works. Licensee agrees not
to list on such semi-annual report any Prospective User for which Licensee
has not established, or obtained internal approval to establish, a budget in
connection with the promotion and marketing of the CLEARING 21 Base Product
and/or the Derivative Works. Licensee further agrees to remove from such
semi-annual report any Prospective User for which Licensee's budget for the
promotion and marketing of the CLEARING 21 Base Product and/or the Derivative
Works has been eliminated.
Failure to comply with the terms stated in this section will constitute a
material breach of this Agreement under Section 8.1 below.
3.4. EXCLUDED PROSPECTIVE USERS.
Licensee agrees not to promote, market or sublicense the CLEARING 21 Base
Product and/or the Derivative Works to any Proposed User that is specifically
identified by name on Schedule 1 hereof. Subject to the conditions set forth in
this Section 3.4, Licensee further agrees to waive the marketing, promotion and
revenue sharing rights to which Licensee is otherwise entitled under this
Agreement with respect to such Prospective Users as are not specifically
identified by name on Schedule 1 or 2 hereof but which may in the future be
selected or designated in good faith by a Licensor as falling within one of the
two general exclusionary categories enumerated in Schedule 1 or 2. If a
licensing agreement entered into by a Licensor pursuant to this Section 3.4
involves a presently unnamed Prospective User referred to in Schedule 1 or 2
that was rightfully included prior to the date of such licensing agreement on
the semi-annual report of Prospective Users most recently prepared for Licensors
by Licensee pursuant to Section 3.3 above, such Licensor shall reimburse
Licensee for reasonable expenses incurred by Licensee that are directly related
to the promotion and marketing to such Prospective User by Licensee of the
CLEARING 21 Base Product and/or the Derivative Works during the one year period
preceding the effective date of such licensing agreement.
3.5. LICENSORS' RIGHT TO LICENSE CERTAIN PROSPECTIVE USERS.
In addition to the reservation of rights in Section 2.4, Licensee agrees
that each Licensor shall have the right to request in writing, at any time
during the term of this Agreement and any extension thereof, that Licensee enter
into a sublicensing agreement
8
with a specific Prospective User in connection with the promotion and
marketing of the CLEARING 21 Base Product and/or the Derivative Works. If
Licensee is unable or unwilling to do so within a reasonable time after
receipt of a valid request from Licensor, or if Licensee fails diligently to
pursue reasonable commercial efforts to induce the Prospective User to enter
into a sublicense agreement consistent with the terms of this Agreement,
Licensor shall thereafter be entitled, upon written notice to Licensee, to
pursue a separate licensing agreement, consistent with the terms of this
Agreement, with such Prospective User. If such a licensing agreement is
subsequently entered into by Licensor, Licensee shall be entitled to receive
the applicable payment specified in Section 5.7 hereof. In addition to the
foregoing, if a licensing agreement entered into by Licensor pursuant to this
Section 3.5 involves a Prospective User that was rightfully included prior to
the date of such licensing agreement on the semi-annual report of Prospective
Users most recently prepared for Licensors by Licensee pursuant to Section
3.3 above, Licensor shall reimburse Licensee for reasonable expenses incurred
by Licensee that are directly related to the promotion and marketing to such
Prospective User by Licensee of the CLEARING 21 Base Product and/or the
Derivative Works during the one year period preceding the effective date of
such licensing agreement.
3.6. SUBLICENSE AGREEMENT.
No sublicense agreement entered into by Licensee shall contain terms and
conditions which are inconsistent with this Agreement. Licensee shall prepare
and submit to Licensors the sublicense agreement that Licensee proposes to
employ in connection with the sublicensing of the CLEARING 21 Base Product and
the Derivative Works to each Prospective User.
Licensee shall obtain Licensors' written approval of such sublicense
agreement prior to entering into an agreement with a Prospective User. Licensee
shall permit Licensors thirty days from the date of receipt of the sublicense
agreement to review such sublicense agreement and to prescribe reasonable
modifications thereto, if any. Licensors shall be deemed to have waived all
rights with respect to the sublicense agreement if Licensors fail to communicate
such modifications to Licensee within such thirty day period. If the sublicense
agreement is identical in all material respects with previously approved
sublicenses, Licensors shall have ten days to approve.
Licensee agrees to incorporate Licensors' reasonable modifications into
such sublicense agreement. The sublicense shall specify, without limitation,
that the Sublicensee agrees to be bound by the terms, conditions and
restrictions set forth in this Agreement. Licensee agrees to provide Licensors
with a copy of all fully executed sublicense agreements within ten days of the
effective dates thereof.
3.7. NEGOTIATION OF SUBLICENSE AGREEMENT.
Subject to the requirements and restrictions set forth in Section 3.6
above and elsewhere in this Agreement including, without limitation, Articles 5
and 7 hereof, Licensee shall be entitled to negotiate the specific financial and
technical provisions that
9
shall govern the sublicense agreement or sublicense upgrade to be offered to
a Prospective User, including, without limitation, the precise sublicense fee
to be requested therefor and the terms and conditions of any software
development agreement governing the creation of Derivative Works for any such
Prospective User, and shall be solely responsible for scheduling any such
technical efforts and fulfilling any other covenants and commitments made by
Licensee therein to such Prospective User.
3.8. LICENSORS' PARTICIPATION IN ENHANCEMENTS.
Licensee shall be obliged to offer Licensors the opportunity to
participate in the development of technical enhancements under monetary terms
equivalent to those negotiated with such Prospective User with respect to the
work to be performed by Licensee's dedicated technical staff and/or long-term
subcontractors; provided, however, that this obligation shall only arise
whenever the amount of work associated with any such technical enhancement
effort exceeds the amount that may be adequately handled by Licensee's dedicated
technical staff and long-term subcontractors used by Licensee to undertake such
technical enhancement effort. Licensors shall have a maximum of fifteen days to
accept or reject an offer by Licensee pursuant hereto.
3.9. REPORTING OF DERIVATIVE WORKS.
Licensee agrees to provide Licensors, on a semi-annual basis commencing
six months after the effective date hereof, with an itemized report containing a
summarized functional description of the Derivative Works developed by or for
Licensee and/or any Sublicensee since the previous semi-annual report which
constitute significant modifications or enhancements to the CLEARING 21 Base
Product. Licensee shall provide an electronic version of the source code and
documentation for each Derivative Work to a Licensor requesting same within
thirty calendar days of such request.
Licensee agrees to use reasonable efforts to assist Licensors in obtaining
and maintaining patent, trademark, and/or copyright protection in any and all
locations around the world. Licensee agrees to use its best efforts to give
adequate notice to Licensors of enhancements prior to implementation of such
enhancements by each Sublicensee so that patent protection can be obtained
3. 10. REPORTING OF FEES.
Within fifteen days of the end of each calendar quarter beginning with the
first calendar quarter in which a payment is due to Licensors hereunder,
Licensee shall send Licensors a report for such calendar quarter and
cumulatively for the calendar year a detailed account of all fees due to
Licensors under this Agreement including: identification of each Sublicensee by
name and specific site or location; authorized type/model and number of
computers; date of sublicense agreement; specific CLEARING 21 software modules
sublicensed to such Sublicensee; date of installation of each such CLEARING 21
software module; effective dates of maintenance agreements; and the breakdown of
Licensors' and Licensee's respective shares of fees and charges
10
accrued and paid (expressed in both the currency of payment and in U.S.
dollars). Upon request, Licensee shall promptly provide Licensors with copies
of all invoices relevant to the calculation of fees due.
3.11. PAYMENTS TO LICENSORS.
Any payment due from Licensee to a Licensor under this Agreement, which is
contingent upon a payment schedule entered into between Licensee and a
Sublicensee, shall be payable in accordance with such payment schedule. All such
payments shall be paid to such Licensor at the date of the quarterly report
required by Section 3.10. Licensee agrees to make payments due hereunder to
Licensors in U.S. dollars, at the then-prevailing exchange rate on the date
payment is effected by Licensee. If local law or accounting principles require
that Licensee pay only in response to an invoice, Licensee shall prepare an
invoice per the sample provided by each Licensor in Schedule 5 and forward it to
Licensors for signature and presentation. Licensee shall supply sufficient
detail to explain its calculation of the payments owing to Licensors and will
provide copies of relevant materials upon request. Failure by Licensee to make
payments to Licensors within 45 calendar days of the end of each calendar
quarter shall constitute a material breach of this Agreement under Section 8.1
below.
3.12. COOPERATION.
Licensee agrees to cooperate, advise and consult with Licensors as
necessary to reasonably facilitate the successful evolution of the CLEARING 21
Base Product into a global standard for the clearance and settlement of
Securities Products and Derivatives Products, and to avoid wherever possible
unproductive duplication of effort as well as divergence, disparity or conflict
between the CLEARING 21 Base Product and any Derivative Works with respect to
systems design, user interfaces and module functionality.
ARTICLE 4 - RESPONSIBILITIES OF LICENSORS
4.1. COSTS AND EXPENSES.
Each licensor shall be solely responsible for its costs and expenses
incurred in connection with this Agreement.
4.2. RESTRICTIONS ON DIRECT PROMOTION, MARKETING AND/OR LICENSING.
Except as set forth in Sections 2.4 and 3.5, Licensors agree not to
promote, market and/or license the CLEARING 21 Base Product and/or the
Derivative Works to any third party during the term of this Agreement or any
extension thereof other than to those Prospective Users listed in Schedule 1 or
2 hereof.
4.3. RESTRICTIONS ON COMPETING MARKETING ARRANGEMENTS.
11
Except as expressly permitted elsewhere in this Agreement, Licensors agree
not to enter into any agreement with any third party during the term of this
Agreement or any extension thereof for the purpose of promoting, marketing and
licensing the CLEARING 21 Base Product or the Derivative Works in a manner that
would compete with Licensee.
4.4. ENHANCEMENTS.
Subject to the provisions set forth in Section 1.5 above, Licensors agree
to provide to Licensee, free of additional charge during the initial or any
renewal term of this Agreement, any new versions and any upgrades, modifications
and enhancements to existing versions of the CLEARING 21 Base Product, if any,
which Licensors may develop and offer to all similarly situated licensees of the
CLEARING 21 Base Product, together with any documentation developed by Licensors
therefor and a reasonable amount of training in connection therewith.
4.5. LICENSEE'S PARTICIPATION IN ENHANCEMENTS.
Licensors shall offer Licensee the opportunity to participate in the
development of any such new versions, upgrades, modifications and enhancements
to the CLEARING 21 Base Product undertaken by Licensors, upon monetary terms
satisfactory to both Licensors and Licensee; provided, however, that this
obligation shall only arise whenever the amount of work associated with any such
technical effort exceeds the amount that may be adequately handled by Licensors'
dedicated technical staffs and long-term sub-contractors used by Licensors to
undertake such technical effort. Licensee shall have a maximum of fifteen days
to accept or reject an offer by Licensors pursuant hereto.
4.6. MARKETING SPECIALIST.
During the term of this Agreement or any extension thereof, CME shall make
available to Licensee the services of one CME marketing specialist experienced
in and familiar with the features and functions of the CLEARING 21 Base Product,
when requested to do so by Licensee in connection with the promotion and
marketing of the CLEARING 21 Base Product and/or any Derivative Works to
Prospective Users. CME shall be solely responsible for payroll, travel and other
expenses associated with this marketing specialist.
4.7. PAYMENTS TO LICENSEE.
Any payment due from Licensors to Licensee pursuant to Section 5.7 of this
Agreement which is contingent upon a payment schedule entered into between
Licensors and a Prospective User shall be payable in accordance with such
payment schedule and shall be paid to Licensee within ten days of receipt by
Licensors of a payment from such Prospective User pursuant to such payment
schedule. Licensors agree to make payments due hereunder to Licensee in French
francs, or the successor currency thereto, at the then-prevailing exchange rate
on the date payment is effected by Licensors. Failure by
12
Licensors to make payments to Licensee within 45 calendar days of receipt by
Licensors of a payment from a Prospective User pursuant to such payment
schedule shall constitute a material breach of this Agreement under Section
8.1 below.
4.8. COOPERATION.
Licensors agree to cooperate, advise and consult with each other and with
Licensee as necessary to reasonably facilitate the successful evolution of the
CLEARING 21 Base Product into a global standard for the clearance and settlement
of Securities Products and Derivatives Products, and to avoid wherever possible
unproductive duplication of effort as well as divergence, disparity or conflict
between the CLEARING 21 Base Product and any Derivative Works with respect to
systems design, user interfaces and module functionality. Licensors shall
likewise cooperate with each other to share in an equitable manner technical
work for or on behalf of a Prospective User that is offered by Licensee to
Licensors pursuant to Section 3.8 hereof.
ARTICLE 5 -PRICING, REVENUE SHARING AND TAXES
5.1. *****
5.2. *****
5.3. *****
5.4. REVENUE SHARING EXCEPTION NUMBER 2: SECURITIES PRODUCTS
ENHANCEMENTS.
Subject to the exceptions set forth in Section 5.5 below, the gross price
established by Licensee for each sublicense or sublicense upgrade entered into
between Licensee and a Prospective User which is based upon or derived from a
version of the CLEARING 21 Base Product capable of clearing and settling
Securities Products (the "Securities Products Enhancements") shall be shared by
Licensors and Licensee in the percentages shown in Table C of Schedule 3 until
the absolute aggregate amounts received by Licensee pursuant to this Section 5.4
exceed the Standard Licensee Share for the equivalent number of sublicenses
and/or sublicense upgrades by a total of U.S. *****. Thereafter, future
sublicenses and sublicense upgrades entered into between Licensee and any
Prospective User that would otherwise be subject to this Section 5.4 shall
revert to the standard revenue sharing percentages reflected in Table A of
Schedule 3. However, the percentages reflected in Table C of Schedule 3 shall
only replace the standard revenue sharing percentages reflected in Table A of
Schedule 3 for a given Sublicensee upon commencing the use of CLEARING 21 for
clearing of Securities Products by such Sublicensee.
5.5. REVENUE SHARING EXCEPTION NUMBER 3: DEC ENHANCEMENTS PLUS
SECURITIES PRODUCTS ENHANCEMENTS.
13
In the event that a sublicense or sublicense upgrade is entered into by
Licensee and a Prospective User that includes both the DEC Enhancements and the
Securities Products Enhancements, wherein the overall U.S. ***** cap governing
reversion to the standard revenue sharing percentages reflected in Table A of
Schedule 3 has not been attained by either NYMEX or Licensee pursuant to
Sections 5.3 and 5.4 above, the gross price established by Licensee for each
such sublicense or sublicense upgrade entered into between Licensee and a
Prospective User shall be shared by Licensors and Licensee in the percentages
shown in Table D of Schedule 3 and aggregated in accordance with the provisions
of Sections 5.3 and 5.4 above until: (a) the absolute aggregate amounts received
by NYMEX pursuant to Section 5.3 and this Section 5.5 equal U.S. ***** more than
the Standard NYMEX Share for the equivalent number of relevant sublicenses, or
(b) the absolute aggregate amounts received by Licensee pursuant to Section 5.4
and this Section 5.5 equal U.S. ***** more than the Standard Licensee Share for
the equivalent number of relevant sublicenses. Thereafter, this Section 5.5
shall no longer apply to future sublicenses or sublicense upgrades that involve
both the DEC Enhancements and the Securities Products Enhancements, but rather
the criteria set forth in Sections 5.2, 5.3 and 5.4, whichever is applicable,
shall govern the revenue sharing percentages that apply to any such subsequent
sublicense or sublicense upgrade entered into by Licensee and a Prospective
User.
5.6. MAINTENANCE SERVICES.
Maintenance services related to any sublicense or sublicense upgrade shall
be offered by Licensee to all Sublicensees. Such maintenance services shall
include bug fixes, operating system upgrades and common changes to the CLEARING
21 Base Product. Charges for such maintenance services for each Sublicensee
shall be in accordance with the schedule set out at Section 5.1. Licensee shall
obtain Licensors' prior written approval of any lower or higher rate. Licensee
shall pay ***** percent of such gross annual charges for such maintenance
services to CME and shall keep the remaining ***** percent for itself. The
foregoing annual charge for maintenance services shall not include technical or
help desk support or major enhancements to the CLEARING 21 Base Product
requested by the Sublicensee; Licensee may charge each Sublicensee separately
for such additional services.
5.7. PAYMENT TO LICENSEE FOR CERTAIN DIRECT LICENSES.
Licensors are permitted, pursuant to Section 3.5 hereof, to license the
CLEARING 21 Base Product and/or the Derivative Works directly to a Prospective
User not listed on Schedule 1 or 2 in the event that Licensee is unable or
unwilling to enter into a sublicense agreement with such Prospective User within
a reasonable time following a written request from a Licensor to do so. If
Licensors enter into a license with such a Prospective User, they will pay *****
percent of the gross license fee to Licensee if the license is for Securities
Products only; ***** percent of the gross license fee to Licensee if the license
is for both Securities Products and Derivatives Products; and ***** percent of
the gross license fee to Licensee if the license is for Derivatives Products
only.
14
However, the percentages applicable to Securities Products or Securities
Products and Derivatives Products licenses specified herein shall only apply to
a given Sublicensee upon commencing the use of CLEARING 21 for clearing of
Securities Products by such Sublicensee.
Each Licensor is permitted, pursuant to Section 2.4 hereof, to license the
Clearing 21 Base Product, any part thereof and/or the Derivative works to
certain Prospective Users in which such Licensor owns at least a ***** equity
interest. If Licensor enters into a license with such a Prospective User, it
will pay the greater of ***** of the license fee or ***** to Licensee within 15
days of such Users first use of Clearing 21.
Notwithstanding any other provision of this Agreement, Licensee is not
entitled to any share of the license fees if Licensors license the CLEARING 21
Base Product and/or the Derivative Works to any Prospective User listed on
Schedule 1 or 2.
5.8. RIGHT TO AUDIT RECORDS.
Licensors and Licensee shall have the right, upon reasonable notice, by
independent audit and at their own respective expense, to audit each other's
records as they affect amounts payable to each other under this Agreement. If
any such audit results in a determination that there has been an under payment
greater than 15% of the payment actually made, then the costs of the audit shall
be borne by the party responsible for the underpayment.
5.9. TAXES.
All amounts payable under this Agreement are exclusive of, and will be
paid without deduction for, all taxes, levies, or similar governmental charges,
however designated, which may be assessed by any jurisdiction based on gross
revenues. Except for corporate income tax imposed on the payee(s) hereunder, or
other taxes, fees or duties relating specifically to this Agreement that may be
imposed by any federal, national, state or municipal taxing authority, the
remitter(s) of any amount due hereunder will pay all taxes including any related
penalties and interest or late charges, levies, or similar governmental charges,
or will provide the payee(s) hereunder with a certificate of exemption
acceptable to the appropriate taxing authority. The payee(s) hereunder agrees to
provide the remitter(s) hereunder with such forms or documents as may be
reasonably requested by such remitter(s) from time to time to certify exemption
from withholding of income tax. The provisions of this Section 5.9 shall survive
any termination of this Agreement.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES OF THE PARTIES
6.1. REPRESENTATIONS AND WARRANTIES OF CME.
15
CME represents and warrants to Licensee and NYMEX as follows and
acknowledges that Licensee and NYMEX are relying on the following
representations and warranties in connection with the transactions contemplated
hereby:
(a) CME has the corporate power and the capacity to enter into and to
perform its obligations under this Agreement and this Agreement has been duly
authorized, executed and delivered by CME and is a valid and binding obligation
of CME, enforceable in accordance with its terms;
(b) CME has obtained all necessary or required approvals to carry out
the terms of this Agreement;
(c) neither the entering into of this Agreement, nor the performance by
CME of any obligations under this Agreement will contravene, breach or result in
any default under the articles, by-laws, constating documents or other
organizational documents of CME or under any mortgage, lease, agreement, other
legally binding instrument, license, permit, statute, regulation, order,
judgment, decree or law to which CME is a party or by which CME may be bound;
and
(d) no authorization, consent or approval of, or filing with or notice to
any court or other person or entity that is not also a party to this Agreement
is required in connection with the execution, delivery or performance of this
Agreement by CME.
6.2. REPRESENTATIONS AND WARRANTIES OF NYMEX.
NYMEX represents and warrants to Licensee and CME as follows and
acknowledges that Licensee and CME are relying on the following representations
and warranties in connection with the transactions contemplated hereby:
(a) NYMEX has the corporate power and the capacity to enter into and to
perform its obligations under this Agreement and this Agreement has been duly
authorized, executed and delivered by NYMEX and is a valid and binding
obligation of NYMEX, enforceable in accordance with its terms;
(b) NYMEX has obtained all necessary or required approvals to carry out
the terms of this Agreement;
(c) neither the entering into of this Agreement, nor the performance by
NYMEX of any obligations under this Agreement will contravene, breach or result
in any default under the articles, by-laws, constating documents or other
organizational documents of NYMEX or under any mortgage, lease, agreement, other
legally binding instrument, license, permit, statute, regulation, order,
judgment, decree or law to which NYMEX is a party or by which NYMEX may be
bound; and
16
(d) no authorization, consent or approval of, or filing with or notice to
any court or other person or entity that is not also a party to this Agreement
is required in connection with the execution, delivery or performance of this
Agreement by NYMEX.
6.3. REPRESENTATIONS AND WARRANTIES OF LICENSEE.
Licensee represents and warrants to CME and NYMEX as follows and
acknowledges that CME and NYMEX are relying on the following representations and
warranties in connection with the transactions contemplated hereby:
(a) Licensee has the corporate power and the capacity to enter into, and
to perform its obligations under this Agreement and this Agreement has been duly
authorized, executed and delivered by Licensee and is a valid and binding
obligation of Licensee, enforceable in accordance with its terms;
(b) Licensee has obtained all necessary or required approvals to carry
out the terms of this Agreement;
(c) neither the entering into of this Agreement, nor the performance by
Licensee of any of its obligations under this Agreement will contravene, breach
or result in any default under the articles, by-laws, constating documents or
other organizational documents of Licensee or under any mortgage, lease,
agreement, other legally binding instrument, license, permit, statute,
regulation, order, judgment, decree or law to which Licensee is a party or by
which Licensee may be bound; and
(d) no authorization, consent or approval of, or filing with or notice to
any court or other person is required in connection with the execution, delivery
or performance of this Agreement by Licensee.
ARTICLE 7 - WARRANTY, DISCLAIMER AND INDEMNIFICATION PROVISIONS
7.1. LICENSORS' WARRANTIES AND WARRANTY DISCLAIMERS.
Licensors warrant that they own and have the right to license the CLEARING
21 Base Product. Licensors do not warrant uninterrupted operation of the
CLEARING 21 Base Product or that the CLEARING 21 Base Product will meet any
particular requirements of Licensee or any Prospective User. Licensee has
examined the source code for the CLEARING 21 Base Product and agrees to accept
same in "AS-IS" condition. THE WARRANTY GIVEN ABOVE CONSTITUTES THE ONLY
WARRANTY MADE BY LICENSORS WITH RESPECT TO THIS AGREEMENT. LICENSEE HEREBY
WAIVES ALL OTHER WARRANTIES OR GUARANTEES OF LICENSOR, WHETHER EXPRESS OR
IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE OR ANY OTHER WARRANTY WITH RESPECT TO THE QUALITY,
17
ACCURACY, PERFORMANCE STANDARDS OR FREEDOM FROM ERROR OF THE OPERATION, USE
AND FUNCTION OF THE CLEARING 21 BASE PRODUCT.
7.2. LICENSEE'S WARRANTIES.
Licensee acknowledges and agrees that Licensee will make no
representations to any Prospective User with respect to any warranty purportedly
made by Licensors except for those of ownership or right to license. Licensee
expressly agrees that any performance warranties that Licensee may make to
Sublicensees regarding the CLEARING 21 Base Product and/or the Derivative Works
shall be made only by and in the name of Licensee. Licensee warrants that any
Derivative Works which Licensee may develop hereafter pursuant to this Agreement
shall not infringe the intellectual property rights of any other entity.
Licensee hereby agrees to indemnify Licensors for any loss due to Licensee's
failure to comply with Licensee's obligations hereunder with respect to
warranties.
7.3. LICENSORS' DISCLAIMER OF LIABILITY.
Licensors disclaim liability and shall not be liable to Licensee or any
third party for indirect, special, incidental, exemplary or consequential
damages (including, without limitation, lost profits) related to this Agreement
or resulting from Licensee's or a Sublicensee's use or inability to use the
CLEARING 21 Base Product or the Derivative Works, arising from any cause of
action whatsoever, including contract, warranty, strict liability, or
negligence, even if Licensors have been notified of the possibility of such
damages. Without limiting the generality of the foregoing, Licensors shall not
have any liability to Licensee, any Sublicensee or any other entity based upon a
claim or allegation that, in licensing the CLEARING 21 Base Product and/or the
Derivative Works, Licensors have assumed the responsibility or obligation to
monitor, mitigate or avoid losses sustained by any customer or other participant
in connection with the trading, clearance or settlement of any Derivatives
Product or Securities Product.
7.4. LICENSORS' LIMITATION ON RECOVERY.
Licensors' sole responsibility hereunder shall be limited to refund of any
fees received by Licensors from Licensee or any other person with respect to
this Agreement or any sublicense agreement relating thereto. Under no
circumstances shall the liability of Licensors to Licensee exceed the amounts
due and owing from Licensee to Licensors under this Agreement.
7.5. LICENSORS' INDEMNIFICATION OF LICENSEE.
Licensors agree that they shall indemnify Licensee and its Sublicensees
and save them harmless from any and all costs, losses, damages, liability,
claims and demands (collectively, an "Intellectual Property Claim") incurred by
or made against Licensee and/or such Sublicensees alleging that the CLEARING 21
Base Product infringes
18
intellectual property rights of another person. In order to obtain
indemnification under this provision, Licensee must promptly notify Licensors
of any Intellectual Property Claim that is threatened or brought against
Licensee and/or its Sublicensees concerning the CLEARING 21 Base Product.
Licensors shall defend and contest or settle any such Intellectual Property
Claim, at their sole expense, in their own names and/or in the name of
Licensee and/or its Sublicensees, and Licensee must cooperate with and assist
Licensors to the extent that such cooperation may reasonably be required.
In the event of such infringement, Licensors may, at their sole option and
expense, either: (a) procure from the owner of the intellectual property rights,
the right for Licensee and its Sublicensees to continue the permitted use of the
CLEARING 21 Base Product; or (b) modify the CLEARING 21 Base Product, or the
infringing part or parts thereof, so that it is non-infringing, or replace the
same with a substitute of equal quality approved by Licensee, acting reasonably,
such that the CLEARING 21 Base Product or the substitute shall perform to the
same or better level of performance. Licensors shall have no liability if the
alleged infringement results or arises from or is caused by: (a) the use by
Licensee or a Sublicensee of other than a current release of the CLEARING 21
Base Product as provided by Licensors to Licensee under this Agreement; or (b)
modification of the CLEARING 21 Base Product by or for Licensee or a
Sublicensee; or (c) combination of the CLEARING 21 Base Product by or for
Licensee or a Sublicensee with programs or data not developed by Licensors;
provided the infringement would not have resulted from use of a current release
or absent such modification or combination.
Notwithstanding any other provision of this Agreement, Licensors provide
no indemnities hereunder regarding the infringement of intellectual property
rights that may be caused by any non-proprietary software incorporated into the
CLEARING 21 Base Product by or for Licensors pursuant to a license granted to
Licensors therefor.
7. 6. SURVIVAL UPON TERMINATION.
The provisions of this Article 7 shall survive any termination of this
Agreement.
ARTICLE 8 - TERM AND TERMINATION
8.1. MATERIAL BREACH.
Licensors, acting jointly, or Licensee may terminate this Agreement
forthwith in the event of a material breach by their respective counterparty
(including, without limitation, any failure to pay monies due in accordance with
this Agreement) which remains uncured ten calendar days after a demand for
correction of such breach has been given to the breaching party.
8.2. TERM; RENEWAL.
19
*****. This Agreement shall be renewed automatically for successive terms
of three years; provided, however, that Licensee may notify Licensors or
Licensors, acting jointly, may notify Licensee of their respective intentions to
terminate participation in the Agreement at the end of the initial term or any
successive term not later than twelve months prior to the expiration of the
initial term or any successive term. This Agreement shall not fail to be renewed
automatically by virtue of a decision by a Licensor to terminate its
participation in the Agreement unless the other Licensor decides at the same
time to terminate its participation in the Agreement.
8.3. SUPERSEDENCE OF PRIOR AGREEMENT.
The terms of this Agreement supersede the conflicting provisions, if any,
in an agreement entered into by and between the Licensors effective September 1,
1993 (the "Bilateral Agreement"). Should one Licensor under this Agreement cease
to participate in this Agreement for any reason, while the other Licensor
remains a party hereto, Licensors shall be obligated thereupon to initiate good
faith discussions with each other to determine how to resolve any conflicting
obligations between the provisions of the Bilateral Agreement and those of this
Agreement. If Licensors are unable to reach a consensus with respect to the
subject matter hereof within ninety days thereafter, the Bilateral Agreement
shall thereupon be deemed terminated, each Licensor shall be free to act
independently of the other Licensor in connection with the promotion and
marketing of the CLEARING 21 Base Product, and the Derivative Works that have
not yet been incorporated into the CLEARING 21 Base Product on the date of the
termination of the Bilateral Agreement shall be deemed to be owned solely by the
Licensor which remains a party to this Agreement. Nothing contained in this
Section 8.3 shall be construed to affect any of Licensee's rights under this
Agreement.
8.4. RIGHTS OF ACTION.
Neither the termination of this Agreement nor the cessation of
participation in this Agreement by either Licensor shall affect any right of
action of any party arising from anything which was done or not done, as the
case may be, prior to such termination taking effect.
8.5. CONTINUATION OF SUBLICENSE AGREEMENTS.
Neither the termination of this Agreement for any reason, nor the
cessation of participation in this Agreement by either Licensor, shall terminate
any sublicense agreement which is validly in effect on the date of such
termination or the date of cessation of such participation, and each such
sublicense agreement shall remain in full force and effect thereafter in
accordance with its terms. No termination of this Agreement shall affect the
ability of Licensee to fulfill its obligations under any commitment made by
Licensee in good faith and in accordance with this Agreement prior to the
effective date of such termination including, but not limited to, retention of
source code for the CLEARING 21 Base Product and Derivative Works solely for the
purpose of providing ongoing maintenance to existing Sublicensees. Termination
of this Agreement for any
20
reason shall not relieve Licensee of the obligation to pay any amounts due
Licensors with respect to pre-termination commitments from Sublicensees, even
though such amounts may be paid to Licensee after termination. The provisions
of this Section 8.5 shall survive any termination of this Agreement.
ARTICLE 9 - GENERAL
9.1. CONFIDENTIAL INFORMATION.
Licensee acknowledges that the CLEARING 21 Base Product and the Derivative
Works contain proprietary and confidential information of Licensors. Licensee
agrees to safeguard such confidential information by employing the highest
degree of care and diligence that it takes to safeguard its own most
confidential information, and such care shall not be any less than would be
taken by a reasonable company to safeguard such information. Licensee shall
require its Sublicensees to exercise an equal degree of care with respect to
such confidential information.
The provisions of this Agreement relating to the proprietary and
confidential nature of the CLEARING 21 Base Product and the Derivative Works
shall survive any termination of this Agreement.
9.2. FORCE MAJEURE.
Neither Licensors nor Licensee shall be liable for delay or failure in
performance, except the payment of money, resulting from acts beyond the control
of such party, including, but not limited to Acts of God, acts of war, fire,
flood, or other disaster, act of government, strike, lockout, communication line
or power failures.
9.3. GOVERNING LAW, ARBITRATION, AND CHOICE OF JURISDICTION.
All actions arising from disputes initiated by either Licensor against
Licensee in connection with this Agreement shall be heard and finally settled
under the Rules of Conciliation and Arbitration of the International Chamber of
Commerce by one or more arbitrators appointed in accordance with said Rules.
Resolution of all such disputes shall be governed in all respects by the
substantive laws of the Republic of France. The arbitration proceeding related
thereto shall be conducted in English. The place of arbitration in such cases
shall be Zurich, Switzerland.
All actions arising from disputes initiated by Licensee against either or
both Licensors or by one Licensor against the other Licensor in connection with
this Agreement shall be heard and finally settled in the federal or state courts
located in the City of New York, State of New York. Resolution of all such
disputes shall be governed in all respects by the substantive laws of the State
of New York without recourse to choice of law principles.
21
9.4. ASSIGNMENT OR DELEGATION.
Except as provided in Section 2.1 above, no party hereto may assign its
rights or delegate its obligations hereunder to any other person or entity
without the prior written consent of the other parties hereto; provided,
however, that NYMEX may assign or otherwise transfer this Agreement to New York
Mercantile Exchange Inc., a Delaware for-profit company, without the consent of
SBF or CME.
9.5. NOTICES.
Any notice or communication to be given under this Agreement may be
effectively given by delivering the same at the addresses hereinafter set out or
by sending the same by prepaid registered mail or facsimile to the parties at
such addresses. Any notice so mailed shall be deemed to have been received on
the fifth day next following the mailing thereof provided the postal service is
in operation during such time and any notice sent by facsimile shall be deemed
to have been received on transmission. The mailing addresses and facsimile
numbers of the parties for the purposes of this Agreement shall respectively be:
IN THE CASE OF EURONEXT-PARIS :
EURONEXT-PARIS
▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇
Attention : ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Chairman and Chief Executive
Officer
Facsimile: (33 1) 49.27.16.12
WITH A COPY TO:
EURONEXT-PARIS
▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇
Attention : ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Special Advisor to the Chairman
Facsimile: (33 1) 49.27.14.33
IN THE CASE OF CME:
CHICAGO MERCANTILE EXCHANGE INC.
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇.▇.▇.
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, President and Chief Executive Officer
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
WITH A COPY TO:
22
CHICAGO MERCANTILE EXCHANGE INC.
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇.▇.▇.
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Managing Director,
Business Development and Corporate/Legal Affairs
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
IN THE CASE OF NYMEX:
NEW YORK MERCANTILE EXCHANGE INC.
▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇
World Financial Center
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇.▇.▇.
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇, Executive Vice President
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
WITH A COPY TO:
NEW YORK MERCANTILE EXCHANGE INC.
▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇
World Financial Center
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇.▇.▇.
Attention: ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Senior Vice President and General
Counsel
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Any party may from time to time notify the others, in accordance with the
provisions of this Agreement, of any change of address or facsimile number which
thereafter, until changed by like notice, shall be the address or facsimile
number of such party for all purposes of this Agreement.
9.6. COMPLETE AGREEMENT.
Except as set forth below, this Agreement, including the Schedules
attached hereto, contains the complete and exclusive statement of the Agreement
between the Licensors and Licensee with respect to the subject matter hereof and
supersedes all prior and contemporaneous agreements, understandings, proposals,
negotiations, representations or warranties of any kind, whether oral or
written.
9.7. SEVERABILITY.
If any provision of this Agreement is declared by a court of competent
jurisdiction to be invalid, illegal or unenforceable, the parties agree that
such invalidity, illegality or unenforceability shall not affect the validity of
the remaining provisions of this Agreement and further agree to substitute for
the invalid provision a valid provision
23
which approximates the intent and economic effect of the invalid provision as
closely as possible.
9.8. AMENDMENT.
No provision of this Agreement may be amended, altered or waived except by
a further written agreement among the parties.
9.9. NO WAIVERS.
No failure on the part of any party to insist upon strict adherence to any
term or provision of this Agreement on any occasion shall be considered a waiver
of that term or provision and shall not deprive any such party of the right to
subsequently insist upon strict adherence to that term or provision or any other
term or provision of this Agreement.
9.10. CONSENTS, APPROVALS AND REQUESTS.
All consents and approvals to be given by any party under this Agreement
shall not be unreasonably withheld or delayed.
9.11. REMEDIES.
Licensors and Licensee acknowledge and agree that any violation of their
respective obligations under this Agreement will cause irreparable injury to
their counterparty herein, that each party's remedy at law for any violations or
threatened violations thereof may be inadequate and that each party shall not be
required to prove the inadequacy of legal remedies in order to become entitled
to a temporary or permanent injunction or other equitable relief specifically to
enforce such obligations. Licensors and Licensee consent to the issuance of
temporary and permanent injunctions to enforce such obligations. Notwithstanding
the foregoing, each party's rights and remedies under this Agreement are
cumulative and in addition to, and not in lieu of, any other rights and remedies
allowed at law or in equity.
9.12. CONTRACTUAL STATUTE OF LIMITATIONS.
No action or claim relating to this Agreement may be instituted more than
one year after the date upon which the aggrieved party becomes aware of the
event giving rise to such action or claim.
9.13. SPAN-REGISTERED TRADEMARK-.
With respect to the CLEARING 21 Base Product and/or the Derivative Works,
a Prospective User that intends to adopt the SPAN-Registered Trademark-
performance bond and risk management system must acquire a license for SPAN from
CME, *****. A Prospective
24
User so electing to use SPAN must execute CME's standard SPAN license
agreement and agree to comply with its terms.
This Agreement shall not be construed as restricting in any way CME's
right to license the SPAN system to any other entity outside of this Agreement,
nor shall the existence of the Agreement in and of itself be construed as
granting the other parties to this Agreement any rights whatsoever with respect
to the SPAN system.
IN WITNESS WHEREOF, Licensors and Licensee have executed this Agreement
effective on the date first above written.
EURONEXT-PARIS
/s/ ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
--------------------------------------
By ▇▇. ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Chairman and Chief Executive Officer
CHICAGO MERCANTILE EXCHANGE INC.
/s/ ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
--------------------------------------
By ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
President and Chief Executive Officer
NEW YORK MERCANTILE EXCHANGE INC.
/s/ ▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇
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By ▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇
Executive Vice President
25
SCHEDULE 1
TO CLEARING 21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
PROSPECTIVE USERS RESERVED BY CME
*****
S1-1
SCHEDULE 2
TO CLEARING 21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
PROSPECTIVE USERS RESERVED BY NYMEX
*****
S2-1
SCHEDULE 3
TO CLEARING 21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
REVENUE SHARING TABLES
TABLE A:
REVENUE SHARING PERCENTAGES GOVERNED EXCLUSIVELY BY SECTION 5.2 OF THE CLEARING
21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
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SUBLICENSE GRANTED IN: CME NYMEX LICENSEE
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Standard CLEARING 21 Base ***** ***** *****
Product
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TABLE B:
REVENUE SHARING PERCENTAGES GOVERNED BY SECTION 5.3 BUT NOT SECTION 5.5 OF THE
CLEARING 21
SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
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SUBLICENSE GRANTED IN: CME NYMEX LICENSEE
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DEC Enhancements, subject to ***** ***** *****
overall U.S. ***** cap on
NYMEX's excess revenues
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S3-1
TABLE C:
REVENUE SHARING PERCENTAGES GOVERNED BY SECTION 5.4 BUT NOT SECTION 5.5 OF THE
CLEARING 21
SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
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SUBLICENSE GRANTED IN: CME NYMEX LICENSEE
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Standard CLEARING 21 Base ***** ***** *****
Product plus Securities
Products Enhancements,
subject to overall U.S.
***** cap on Licensee's
excess revenues
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Securities Products ***** ***** *****
Enhancements only, subject
to overall U.S. ***** cap
on Licensee's excess
revenues
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TABLE D:
REVENUE SHARING PERCENTAGES GOVERNED BY SECTION 5.5 OF THE CLEARING 21
SOFTWARE
MARKETING AND DISTRIBUTION AGREEMENT
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SUBLICENSE GRANTED IN: CME NYMEX LICENSEE
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DEC Enhancements plus ***** ***** *****
both standard CLEARING 21
Base Product and
Securities Products
Enhancements, subject to
overall U.S. ***** cap on
both NYMEX's and
Licensee's excess revenues
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DEC Enhancements plus ***** ***** *****
only Securities Products
Enhancements, subject to
overall U.S. ***** cap on
both NYMEX's and
Licensee's excess revenues
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S3-2
SCHEDULE 4
TO CLEARING 21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
EXCHANGES AND CLEARING ORGANIZATIONS SUBJECT TO SBF MARKETING PLAN
*****
S4-1
SCHEDULE 5
TO CLEARING 21 SOFTWARE MARKETING AND DISTRIBUTION AGREEMENT
CME AND NYMEX INVOICE SAMPLES
S5-1
CHICAGO MERCANTILE EXCHANGE
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
INVOICE
TO: ATOS-Euronext INVOICE NO.
[EXAMPLE: C21-Q1-2000]
▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇ DATE:
France
C21 Royalties due to CME for licensing of C21 to [EXCHANGE 1] ________
Euros
C21 Royalties due to CME for licensing of C21 to [EXCHANGE 2] ________
Euros
Total Amount Due ________ Euros
Please submit payment via wire.
Wiring Instructions:
Bank 1
CME General Account
Account #50-29805
ABA Routing Number is ▇▇▇▇▇▇▇▇▇
NEW YORK MERCANTILE EXCHANGE
INVOICE
TO: ATOS-Euronext INVOICE NO.
[EXAMPLE: C21-Q1-2000]
▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇ DATE:
France
C21 Royalties due to NYMEX for licensing of C21 to [EXCHANGE 1]
________ Euros
C21 Royalties due to NYMEX for licensing of C21 to [EXCHANGE 2]
________ Euros
Total Amount Due ________ Euros
Please submit payment via wire.
Wiring Instructions: