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Confidential Material Omitted and Filed Separately with the Securities
and Exchange Commission.
* denotes omissions.
EXHIBIT 10.4
DEVELOPMENT/LICENSE AGREEMENT
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Agreement made this 4th day of March 1994 between GeoTel Communications
Corporation, a corporation with its principal place of business at ▇▇ ▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Licensee") and DANAR Corporation, a
corporation with its principal place of business at ▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Licensor").
In consideration of the mutual covenants contained herein, the parties
agree as follows:
1. LICENSE GRANT. Subject to the terms and conditions of this
Agreement, Licensor hereby grants to Licensee a perpetual, worldwide,
non-exclusive license to use the software program(s) (the "Program") identified
on Exhibit A attached hereto. Licensee will receive all machine readable source
code for the Program and may modify the Program or combine it with other
software, provided that the portions of such derivative software incorporating
the Program shall remain subject to the provisions hereof. Usage of the Program
by Licensee will be limited to any application developed by licensee that
incorporates the Program in a value added manner and where the Program does not
constitute the predominant/primary market focus of the application. Licensee has
the right to enter into licensing and/or sub-licensing agreements with
customers, vars, distributors and strategic partners for Licensee's developed
applications that contain the Program, without restriction so long as usage of
the Program by such entities is as defined herein and the Programs source code
is not disclosed.
2. MATERIALS FURNISHED. Licensor shall furnish Licensee with one (1)
copy of the machine readable source code for the Program and one (1) copy of
Licensor's standard user documentation for the Program (the "Documentation").
Licensee shall have the right to duplicate, in whole or in part, the Program or
the Documentation in either its original form or incorporated within Licensee's
products or documentation. Licensor shall also furnish Licensee with source code
for Licensor's entire portfolio of SS7 software for possible future use by
Licensee under the terms herein.
3. CONFIDENTIALITY. Licensee acknowledges that the Program and the
Documentation (collectively the "Licensed Material") constitute valuable and
proprietary information of Licensor and that the entire right, title and
interest in and to the Licensed Material, together with all copyright and other
rights related thereto, shall at all time reside with Licensor. Licensee may
disclose the functionality and architecture of the Licensed Materials in
conjunction with its normal business operations. Licensee will not disclose
source code. Release of source code by licensee to any third party either
intentionally or otherwise constitutes a preach of this agreement Licensor may,
upon such violation terminate this agreement without recourse if violation is
not remedied within 30 days. Licensee has the right to remove or revise any
legends or notices affixed to the Licensed Material.
4. DEVELOPMENT SCOPE AND PAYMENT SCHEDULE. Licensor agrees to commence
a best efforts development program that delivers the following by May 1, 1994:
a.) a modified version of the Program consisting of ANSI MTP, ANSI SCCP
and CCITT TCAP as required by the AT&T document dated May 1, 1993 titled AT&T
Intelligent Call Processing Service - SS7 Network Interface Specifications for a
two-link combined linkset implementation, including co-operative interface
design with Licensee's engineers for the interface between the SS7 stack and the
TCP/IP stack for Licensee's application.
b.) Provide one week of on-site testing and integration support for
AT&T qualification and certification testing of the Licensee's application at a
to-be-defined AT&T location.
c.) Provide complete documentation for the modified Program.
d.) Provide training at DANAR Corporation on system design and
capabilities for a period not to exceed two (2) weeks. (training can be on
Licensee's site if agreement is reached on expenses.)
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In consideration for the deliverables defined above, the Licensee agrees to the
following payment schedule:
i.) $20,000 upon start of work.
ii.) $20,000 upon delivery of acceptable: SCCP source code;
Test program to demonstrate
SCCP source code;
Release notes for above.
iii.) $20,000 upon delivery of acceptable: TCAP source code;
Test program to demonstrate
TCAP source code;
Release notes for above.
iv.) $20,000 upon delivery of acceptable: Gateway API source code;
Test program to demonstrate
Gateway API source code;
Release notes for above.
v.) $20,000 upon: Successful completion of
AT&T compatibility testing;
Delivery of final Program
source code with all
bug fixes;
Delivery of final
documentation.
5. Royalty Fee and payment. Licensee shall pay Licensor the one time
royalty License fee of $*. The payment schedule is as follows:
a.) $* on March 1, 1995
b.) $* on June 30, 1995
c.) $* on September 30, 1995
one time royalty represents the entire amount paid for the perpetual
License described in Paragraph 1. Licensee has no limitations to the number of
copies it may distribute. These payments will not be made if deliverables
described in Paragraph 4 are not completely accepted by 12/31/94.
6. INFRINGEMENT. Licensor shall defend Licensee against a claim that
the modified Program, when used within the scope of the License granted herein,
infringes a U.S. patent, copyright or right to license. Licensor shall pay all
costs and damages finally awarded as a result of such a claim, provided that (a)
Licensee immediately notifies Licensor of such claim, (b) Licensor has sole
control on the defense and settlement thereof, and (c) such claim does not arise
as a result of Licensee's modification of the Program or use of the Program in
connection with other software. If such a claim occurs or in Licensor's opinion
is likely to occur, Licensor will obtain for Licensee the right to continue to
use the Program or modify the Program so that it becomes non-infringing.
Licensor warrants that it has the right to enter into this agreement and can
deliver clear title to grant the License rights described herein.
7. WARRANTY AND LIMITATION OF WARRANTY AND REMEDY. Licensor warrants
that for a period of six (6) months starting on January 1, 1995 for the modified
Program and for a period of three (3) years from date of receipt by Licensee for
each CCS7 Attachment card (the "Hardware") shall comply with Licensor's
specifications as defined in Appendix B. Upon receipt of notice from Licensee
during such period that the Program fails to comply with such specifications,
Licensor shall make best efforts to provide programming and related services to
correct such errors and defects in a timely manner. Upon receipt of notice from
Licensee during such period that the Hardware fails to comply with such
specifications, Licensor shall repair or replace the defective component within
45 days of receipt of such failed component. Any and all shipment costs will be
paid by Licensee.
8. LIMITATION OF LIABILITY. LICENSOR'S LIABILITY FOR DAMAGES HEREUNDER,
WHETHER FOR BREACH OF WARRANTY OR CONTRACT, TORT (INCLUDING NEGLIGENCE) OR
* Portions have been omitted for confidential treatment.
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OTHERWISE, BUT EXCLUDING INFRINGEMENT, SHALL IN NO EVENT EXCEED THE AMOUNT OF
THE LICENSE FEE PAID BY LICENSEE. IN NO EVENT WILL LICENSOR HAVE ANY LIABILITY
FOR SPECIAL, INDIRECT, CONSEQUENTIAL, PUNITIVE OR INCIDENTAL DAMAGES OR FOR LOST
PROFITS OR SAVINGS, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY
THEREOF.
9. MAINTENANCE. Licensee agrees to purchase a minimum of one (1)
year of annual support maintenance for a fee of $* starting on July 1, 1995.
This maintenance shall include, but not be limited to software updates, bug
fixes, telephone support, problem determination, and on-site support (at
Licensee's expense). Licensor shall provide maintenance services for a period
of five (5) years so long as continuous maintenance is kept in force by
Licensee. Licensee will be entitled to all future modifications and
enhancements to Program as long as maintenance is in force.
10. HARDWARE PRICING AND NEW TECHNOLOGY. Licensee will purchase from
Licensor the Hardware products required to support the Program. Pricing is as
follows:
Quantity 1-4 * per card
Quantity 5-35 * per card
Quantity 36-200 * per card
Quantity 200+ * per card
Licensee will provide a four (4) quarter non-binding forecast to Licensor on a
quarterly basis. Licensee will place non-cancelable purchase orders on a
quarterly calendar basis. Lead time will be 90 days. Licensor will deliver to
Licensee a version of the Hardware and Program that conforms with the IBM AT bus
specification which requires no modifications to the Licensee's software
application external to the supplied SS7 program no latter than June 1, 1995.
Pricing is FOB Seattle, WA exclusive of taxes, insurance, shipping and duties.
11. MANUFACTURING RIGHTS. Licensee will be granted full and complete
manufacturing rights and License to the Hardware upon the following occurrence:
a.) A change of the majority ownership of Licensor occurs. In the event
Licensee evokes this clause upon change of ownership, Licensee will pay to
Licensor a royalty of $200.00 per card for the first quantity of 500 Hardware
cards the Licensee produces. Licensee retains the right to continue product
procurement of Hardware product through new majority ownership upon change of
ownership
b.) Licensor files or has filed against it court action for the purpose
of bankruptcy or liquidation.
c. Licensor fails to meet delivery of Hardware against an accepted
purchase order within the 90 day lead time for delivery.
All of Licensor's related documentation, ▇▇▇▇ of materials, vendor listings,
mechanical drawings and schematics for the Hardware will be on file at Licensees
premises. These documents will be delivered to Licensee no latter than 12/31/94.
Release of these documents by licensee to any third party either intentionally
or otherwise constitutes a preach of this agreement. Licensor may, upon such
violation terminate this agreement without recourse if violation is not remedied
within 30 days.
12. MISCELLANEOUS PROVISIONS.
a.) Licensee shall have the right to assign the rights granted
hereunder if a change in the majority ownership in Licensee occurs or upon the
sale of all or substantially all of the assets of Licensee.
* Portions have been omitted for confidential treatment.
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b.) Licensor shall have the right to assign the rights granted
hereunder if a change in the majority ownership in Licensor occurs or upon the
sale of all or substantially all of the assets of Licensor. Licensee retains
the rights defined in section 11(a).
c.) Licensee shall have until April 1, 1994 to evaluate the
Product. If Licensee determines the Product does not perform to specification or
meet the requirements of Licensee's application then this entire agreement will
be void. Any payments made to Licensor will be forfeited by Licensee.
d.) All notices given hereunder shall be in writing addressed to
the other party at its address set forth in the preamble hereof, to the
attention of its President in the case of Licensee and to its President in the
case of Licensor.
e.) If any provision hereof is held to be unenforceable for any
reason, such determination shall not affect the validity or enforceability of
the remaining provision hereof. Licensor shall not be responsible for any
failure to fulfill its obligations hereunder due to reasons beyond its control.
f.) This Agreement (i) shall be governed by and construed in
accordance with the laws of the Commonwealth of Massachusetts, (ii) shall be
binding upon and insure to the benefit of the parties and their respective
successors and assigns, subject to the restriction on transfer set forth in
Subparagraph 12 (a) hereof, (iii) constitutes the entire agreement between the
parties concerning the subject matter hereof and supersedes any prior or
contemporaneous agreements, understandings, proposals, promises and
representations in connection therewith, and (iv) may be amended, modified,
waived or revoked only by a written instrument executed by both parties hereto.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
under seal in duplicate originals as of the date first written above.
GEOTEL COMMUNICATIONS CORPORATION DANAR CORPORATION
By: By:
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Title: Title:
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