EXHIBIT 10.19
SOFTWARE LICENSE AGREEMENT
BETWEEN
VIATEL, INC.
AND
LUCENT TECHNOLOGIES INC.
▇▇▇▇▇▇▇▇ # ▇▇▇▇▇▇▇▇-▇▇-▇▇
SOFTWARE LICENSE AGREEMENT
This Agreement is made the 22nd day of October, 1998 (the "Effective
Date") between Lucent Technologies Inc., a corporation organized and existing
under the laws of the State of Delaware, and having its corporate headquarters
at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to
as "Lucent") and Viatel, Inc., a corporation organized and existing under the
laws of Delaware and having its principal office at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to as "Licensee"). Each of Lucent and
Licensee may be referred to in this Agreement individually as a "Party" and
collectively as the "Parties."
1. HEADINGS & DEFINITIONS
All headings used in this Agreement are inserted for convenience only and are
not intended to affect the meaning or interpretation of this Agreement. For the
purpose of this Agreement, the following definitions will apply:
"Acceptance Test" means those tests performed by Licensee after
Lucent's installation of Licensed Materials as described in the
Statement of Work.
"Advertising" means all advertising, sales promotion, press releases,
and other publicity matters relating to performance under this
Agreement.
"Affiliate" of a corporation means it Subsidiaries, any company of
which it is a Subsidiary, and other Subsidiaries of such company. For
purposes of this Agreement, the meaning of "Affiliate" shall not
include any company or subsidiary which is a manufacturer of
telecommunications products in direct competition with Lucent.
"Agreement" means this Agreement concluded between Lucent and Licensee
named herein incorporating these conditions, including any amendment
changes authorized by the parties.
"Attachment" means any document appended to this Agreement and referred
to as an Attachment which further describes the agreement concluded
between Lucent and Licensee named herein.
"Change of Control" means, with respect to a Party either (1) the
consolidation or merger of the Party with or into any other entity
where such Party is not the surviving entity; (2) the sale, transfer or
other disposition of all or substantially all of the Party's assets; or
(3) the acquisition by any entity, or group of entities acting in
concert, of beneficial ownership of more than fifty percent (50%) of
the Party's outstanding voting securities.
"Change Order" means the written order between Lucent and Licensee to
execute a change in the tasks, activities or responsibilities from that
which was previously agreed to by the Parties.
"Completion Notice" means the written document delivered by Lucent to
Licensee confirming the completion of tasks or activities referenced in
the Notice according to the terms of the Agreement.
"Days" or "days" means, unless otherwise stated, calendar days.
"Defect" means an error condition that causes the Licensed Materials to
fail to operate in compliance with the Specifications.
"Designated Processor" means the central processing unit or units for
which a license to use Licensed Materials are initially granted as
described in the Statement of Work.
"Dollars" means U.S. dollars.
[TERM AND DEFINITION REDACTED]
"Enhancement" means any modification to the Licensed Materials that are
directly related to maintaining interoperability with the Nortel
Switches. Enhancements does not include new generic releases or other
new features or functionality.
"Firmware" means a combination of (1) Hardware and (2) Software
represented by a pattern of bits contained in such Hardware.
"Hazardous Materials" means material designated as a "hazardous
chemical substance or mixture" pursuant to Section 6 of the Toxic
Substance Control Act; a "hazardous material" defined in the Hazardous
Materials Transportation Act (49 U.S.C. 1801, et seq.); "hazardous
substance" as defined in the Occupational Safety and Health Act Hazard
Communication Standard (29 CFR 1910.1200).
"Information" means all documentation and technical and business
information in whatever form recorded, which a Party may furnish under,
or has furnished in contemplation of, this Agreement.
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[TERM AND DEFINITION REDACTED]
"Licensed Materials" means the Software (including Enhancements and
Updates) and Related Documentation for which licenses are granted by
Lucent under this Agreement and identified in the Statement of Work.
No Source Code versions of Software are included in Licensed Materials.
"Nortel Switches" means the Software contained in the specific DMS
I00E, DMS 250, DMS 300 and DMS GSP switches manufactured by Northern
Telecom Ltd. and identified in the Statement of Work with such features
and functionalities and configurations in existence as of the Effective
Date and included in the Statement of Work.
"Related Documentation" means materials useful or necessary in
connection with use of Software Products such as, but not limited to,
flowcharts, logic diagrams and listings, program descriptions and
Specifications; no Source Code is included in Related Documentation.
"Services" means the services performed for Licensee as more fully
described in this Agreement, including, but not limited to, (1)
engineering services, (2) installation services, and (3) other services
such as maintenance, support and training provided hereunder and in the
Statement of Work. However, Services does not include post-warranty
maintenance and support.
"Software" means a computer program consisting of a set of logical
instructions and tables of information which guide the functioning of a
processor; such program may be contained in any medium whatsoever,
including Hardware containing a pattern of bits representing such
program, but the term "Software" does not mean or include such medium.
"Software Products" means, collectively, Licensed Materials, Third
Party Products and Services.
"Specifications" means Lucent's or its vendor's technical
specifications for particular Software Products furnished hereunder, as
more fully described in the Statement of Work included as Appendix B.
"Statement of Work" means the Statement of Work attached hereto as
Appendix B, as the same may be amended from time to time by written
agreement between Lucent and Licensee.
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"Source Code" means any version of Software incorporating high-level or
assembly language or human readable material that generally is not
directly executable by a processor.
"Subsidiary" of a company means a corporation the majority of whose
shares or other securities entitled to vote for election of directors
is now or hereafter owned or controlled by such company either directly
or indirectly; but such corporation shall be deemed to be a Subsidiary
of such company only as long as such ownership or control exists.
"T+52 Delivery" means the delivery and installation of all Licensed
Materials by Lucent as described in the Statement of Work such that
Licensee may begin carrying out the relevant Acceptance Tests on or
before the date representing "T+52." [REDACTED]
"Third Party Product" means Software not developed by Lucent and/or
hardware not manufactured by Lucent.
"Update" means a modification to the Licensed Materials that rectifies
or provides "fixes" to a Defect.
"Use" with respect to Licensed Materials means loading the Licensed
Materials, or any portion thereof, into a processor for execution of
the instructions and tables contained in such Licensed Materials or any
other use of the Licensed Materials in accordance with this Agreement.
"Warranty Period" means a period of time equal to the following:
[REDACTED]
2 TERM OF AGREEMENT
This Agreement shall be effective on the date first written above and, except as
otherwise provided herein, shall continue in effect unless terminated in
accordance with the provisions herein. The modification, termination or
expiration of this Agreement shall not affect the rights or obligations of
either Party under any order accepted by Lucent before the effective date of the
modification, termination or expiration.
3. SCOPE OF AGREEMENT
3.1 SCOPE
This Agreement shall apply to Lucent's provision to Licensee of the
Software Products set forth on Appendix A - "List of Deliverable Items
and Prices." The Software Products will be provided pursuant to the
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Statement of Work attached hereto as Appendix B. In the event of any
amibiguity or conflict between this Agreement and the Statement of
Work, the terms of this Agreement will control.
3.2 CHANGE IN SCOPE OR SCHEDULE
Either Party may request changes in the work within the general scope
of the Agreement consisting of additions, deletions, or other revisions
with the Agreement Prices and Schedule being adjusted accordingly. The
receiving Party will respond promptly to the requested change
identifying these impacts on schedules and pricing. If the Parties
agree to the change, it will be authorized by a Change Order, signed by
the Parties and performed in accordance with the applicable conditions
of this Agreement.
4. LICENSEE'S COMMITMENT
Licensee through the execution of this Agreement agrees to license and/or
purchase [REDACTED] of the Software Products as described in Appendix A and
the Statement of Work (the "1998 Commitment"). The Software Products described
in the Statement of Work will be delivered/performed on basis of purchase orders
as may be agreed to by the parties. Such purchase orders are for project
management purposes only and do not affect Licensee's commitment to license
and/or purchase the Software Products as described in the Statement of Work.
For a period [REDACTED] following the Effective Date, until Licensee has
purchased or licensed Software Products manufactured by Lucent's Communications
Software Group or its successor business unit or stand-alone software
manufactured by Lucent ("CS Software Products") with a purchase or license price
not less than [REDACTED], Lucent will be considered by Licensee as a preferred
supplier of Software Products similar to products manufactured by the
Communications Software Product Group of Lucent or successor thereof. The status
of preferred supplier means that Lucent will have and will be given the
opportunity to bid on any project of Licensee containing products and services
substantially similar in quality and functionality to CS Software Products and
Licensee shall award the project or portion thereof -if applicable- to Lucent if
the Lucent offered price for that project or the relevant portion thereof is not
more than [REDACTED] than the lowest price offered by an alternative supplier
for a substantially similar solution or substantially comparable portion.
In the event Lucent, pursuant to the foregoing, will not be awarded the project
or corresponding portion of it, then Licensee will arrange a meeting between one
or more Executive Officers of Licensee and one or more Executive Officers of the
Communications Software Product Group in order to consult how Lucent may
increase its success-rate in being awarded orders.
5. PRICING SCHEDULE
Prices, fees, and charges for the Software Products (hereinafter "Prices") are
set forth in Appendix A.
Unless expressly stated in writing, Lucent's prices are exclusive of charges for
transportation and other related services and any sales or other tax or duty
which Lucent may be required to collect or pay upon the ordered transaction.
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6. PURCHASE ORDERS
All purchase orders submitted by Licensee shall be deemed to incorporate and be
subject to the terms and conditions of this Agreement, unless otherwise agreed
in writing by the Parties. No provision or data on any purchase order or
contained in any documents attached to or referenced in any purchase order shall
be binding to the extent that it is in addition to or contradicts the terms and
conditions contained herein or the provisions of the Statement of Work
(including amendments thereto). All other such data and provisions shall be
deemed deleted and are hereby rejected except to the extent such data and
provisions are incorporated in an executed Change Order. Additional provisions
applicable to the ordering of specific items may be found in the other clauses
or Attachments of this Agreement.
All purchase orders shall contain the information reasonably necessary for
Lucent to fulfill the order. Lucent promptly will notify Licensee if Lucent is
unable to FULFILL a purchase order as submitted.
The Parties recognize that from time to time Licensee may desire that Lucent
provide Services promptly and without adhering to the ordering process set out
by the above paragraphs, for example, in the case of a telephonic request for
emergency support. Licensee shall promptly establish a "running order" against
which invoices for Services performed in response to such requests can be billed
at a reasonable cost to be approved by Licensee (such approval not to be
unreasonably withheld or delayed) and will be paid for by Licensee.
While it is Lucent's objective to provide Licensee with an acknowledgment of
each order received, it is Licensee's responsibility to advise Lucent of any
missing or late notifications to insure that the order has not been lost. No
order is to be considered "accepted" by Lucent unless its receipt has been
acknowledged (such acknowledgement not to be unreasonably withheld or delayed),
however, orders for Services to be billed against a running order shall be
deemed accepted by Lucent if Lucent commences performance thereof.
7. DELIVERY
Lucent will make arrangements for the delivery of Licensed Materials ordered by
Licensee according to the Specifications and intervals included in Appendix B -
Statement of Work. Licensee will specify the location for the order to be
delivered. Delivery will be made according to the standard procedures of Lucent,
unless otherwise requested by Licensee and agreed to by Lucent in writing.
7.1 SPECIAL PACKING AND/OR MARKING
Lucent's prices include packing and marking containers in accordance
with Lucent's standard practices for shipment. When, in order to meet
Licensee's written request, Lucent packs a product and/or is required
to ▇▇▇▇ shipping cartons in accordance with Licensee's written
specifications, such shall be done by Lucent for an additional charge
which shall be invoiced to and paid by Licensee in accordance with the
terms and conditions of this Agreement; provided that such charges have
been agreed upon by the Parties in writing.
Lucent shall:
(a) Render the commercial invoice;
(b) Send full set of ▇▇▇▇ of lading, marked as to who to notify;
(c) Render certificate of Origin or Quality;
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(d) Enclose Packing List;
(e) ▇▇▇▇ containers in accordance with characteristics and
requirements of each container, in English, with appropriate
illustrative marks universal in international trade;
(f) ▇▇▇▇ each container with carton number, contract number,
destination, weights and cubes. International shipments will
also be marked with the freight-forward location and the port
of destination.
7.2 PASSING OF RISK AND TITLE
Title to Licensed Materials shall not pass to Licensee, but shall
remain with Lucent or its suppliers, as the case may be. Title to
hardware will pass upon delivery to Licensee's facility. Risk of loss
or damage to Licensed Materials, including any media containing the
Licensed Materials, or other items furnished to Licensee under this
Agreement shall pass to Licensee upon delivery of said Licensed
Materials or items to an authorized shipping agent or upon completion
of transmission if electronically delivered.
Nothing herein shall, during the period a Party has the risk of loss or
damage to an item, relieve the other Party of responsibility for loss
or damage to the item resulting from the acts or omissions of such
other Party, its employees or agents.
8. ACCEPTANCE
After Lucent's installation of the Licensed Materials, or any part thereof as
set forth in Appendix B, Lucent will deliver a Completion Notice to Licensee and
Licensee will carry out Acceptance Tests in accordance with the Statement of
Work, testing the compliance of the Licensed Materials with the Statement of
Work (Appendix B). Licensee will start the Acceptance Tests no later than
[REDACTED] days after Lucent's installation of the Licensed Materials and
receipt of the Completion Notice and complete the Acceptance Tests no later than
[REDACTED] days after Lucent's installation of the Licensed Materials and
receipt of the Completion Notice by Licensee.
Licensed Materials will be considered fully accepted unless Lucent receives
written notification to the contrary documenting the specific material
non-compliance with the Specifications within [REDACTED] after Lucent's
installation of such Licensed Materials and Licensee's receipt of the Completion
Notice. Lucent will promptly correct any material non-compliance for which it is
responsible and deliver the modified Licensed Material. Licensee shall have
[REDACTED] days from the date of installation of the modified Licensed Materials
and Licensee's receipt of the Completion Notice to inspect, test, evaluate said
modified Licensed Materials to determine whether the modified Licensed Materials
are materially compliant with the Specifications. Modified Licensed Materials
will be considered fully accepted unless Lucent receives written notification to
the contrary documenting the specific material non-compliance with the
Specifications within [REDACTED] days after Lucent's installation of such
modified Licensed Materials and Licensee's receipt of the Completion Notice.
This process shall be repeated until the Licensed Materials are considered
accepted per this section.
Notwithstanding anything in this Agreement to the contrary, Licensee's Use of
any part of the Licensed Materials for any purpose other than testing, or any
other Use conducted at Lucent's direction or under Lucent's supervision, as
provided for above or training, whether or not revenue is generated, shall
constitute Acceptance for all relevant purposes of this Agreement, including but
not limited to, commencement of the applicable warranty period.
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The costs and expenses of the Acceptance Tests will be borne by Licensee. Upon
request of Licensee, Lucent will provide reasonable support to Licensee during
the Acceptance Tests.
8A. [REDACTED]
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[REDACTED]
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9. INVOICES AND TERMS OF PAYMENT
Lucent will forward invoices in Lucent's standard format or as otherwise agreed
in writing by the Parties to Licensee upon shipment of the Licensed Materials or
portion thereof. Lucent will forward invoices for Services upon completion of
the Services or portion thereof described in the invoice or as soon thereafter
as practicable. Licensee will pay said invoices as set out below. If Licensee
requires special information on the invoice or that it be in a special format,
then Licensee shall pay Lucent for additional charges associated with complying
with Licensee's special needs provided that the charges have been agreed upon by
the Parties in writing.
Licensee shall pay each invoice for Licensed Materials or Third Party Products
within [REDACTED] days from the date of the invoice. Licensee shall pay each
invoice for Services within the later of (i) [REDACTED] days from the date of
the invoice or (ii) [REDACTED] business days from acceptance or deemed
acceptance by Licensee of that portion of the work or the Licensed Materials to
which the Services relate. Such invoice shall not be subject to withholding or
reduction for any reason, except as provided for in this clause. All bank
charges, taxes, levies and other costs which may be due or become due on
transfers of payments shall be for the account of Licensee.
If Licensee disputes any item contained on the invoice, then Licensee shall pay
all undisputed amounts to Lucent and notify Lucent of the disputed items within
the [REDACTED] days of receipt of the invoice. Upon resolution of the disputed
amount, which shall occur within [REDACTED] days, Licensee shall pay in full all
amounts due to Lucent. If Licensee is unable to document a claim against the
invoiced item, the original invoice date plus [REDACTED] days will be the basis
for calculating late payment penalties set forth below. Delinquent payments and
disputed payments where the dispute is resolved in favor of Lucent, are subject
to a late payment charge equal to the lesser of (i) [REDACTED] or (ii) the
maximum amount allowed by law.
If an undisputed invoice remains unpaid for [REDACTED] days after payment is
due, Licensee shall be in default of its obligations under the Agreement, and
Lucent may terminate this Agreement; PROVIDED, HOWEVER, that Lucent will have
provided [REDACTED] Days prior written notice to Licensee, and Licensee will
have failed to pay all monies due, including late payment charges by the end of
such [REDACTED] Day period. If Lucent elects to terminate this Agreement
pursuant to this paragraph, Lucent may, without prejudice to any other rights or
remedies of Lucent in this Agreement or at law or in equity suspend all work,
and Licensee shall return to Lucent (or destroy in accordance with Lucent's
written instructions) such portion of Lucent's products and all copies of
Licensed Materials at all Licensee locations for which payment (including,
without limitation, license fees) has not been received. Licensee shall bear the
expense of removal of Lucent's products and Licensed Materials. All costs
associated with restoring Licensee's premises to pre-installation condition
shall be the sole responsibility of Licensee. Licensee shall pay all documented
damages, costs and expenses (including, without limitation, reasonable legal
fees) incurred by Lucent in termination of this Agreement.
10. TAXES & LEVIES
Licensee shall be liable for and shall reimburse Lucent for all taxes, duties,
levies and related charges (including any interest and penalties), however
designated (excluding taxes on Lucent's net income) imposed upon or arising from
the provision of Services, or the transfer, sale, license, or use of Licensed
Materials or other items provided by Lucent. Taxes reimbursable under this
clause shall be separately listed on the invoice.
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Lucent shall not collect the otherwise applicable tax if Licensee's purchase is
exempt from Lucent's collection of such tax and a valid tax exemption
certificate is furnished by Licensee to Lucent.
Lucent reserves the right to claim United States or foreign customs duty
drawback on all sales pursuant to this Agreement. The Parties agrees to
cooperate with each other in this regard in all reasonable ways, including,
without limitation, providing proof of exportation, advance notice of
exportation, certificates, endorsements, or any other documentation or proof as
may be necessary for Lucent or its Affiliates to receive payment of the drawback
claims and, if required by the United States Customs Service or similar entity,
by making the Licensed Materials available for examination by such Customs
Service or entity.
11. EXPORT CONTROL
The Parties acknowledge that any License Materials and Information (including,
but not limited to, Services and training) provided under this Agreement may be
subject to U.S. export laws and regulations, and any use or transfer of such
Licensed Materials and Information must be authorized under those regulations.
Licensee agrees not to use, distribute, transfer, or transmit the Licensed
Materials or Information (even if incorporated into other products) in violation
of U.S. export regulations. If reasonably requested by Lucent, Licensee also
agrees to sign written assurances and other export-related documents as may be
required for Lucent to comply with U.S.
export regulations.
12. APPLICABLE LICENSES
Upon delivery of Licensed Materials pursuant to this Agreement, and subject to
Licensee's payment of the applicable fees and compliance with the applicable
terms and conditions hereunder, Lucent grants to Licensee a perpetual, personal,
nontransferable, and nonexclusive license with use limitations to Use Licensed
Materials on the Designated Processors for its own business operations. Licensee
is authorized to Use Licensed Materials within a capacity limitation to
interface with such network elements at such capacity levels within Licensee's
network as set forth in the Statement of Work. Licensee must pay additional
license fees prior to exceeding the authorized capacity limitation. Except as
provided in the following paragraph, no license is granted to Licensee to
sublicense such Licensed Materials furnished by Lucent. Licensee shall not
reverse engineer, decompile or disassemble Software furnished as object code to
generate corresponding Source Code. Unless otherwise agreed in writing by
Lucent, Licensee shall not modify Software furnished by Lucent under this
Agreement except as provided in the Related Documentation. If the Designated
Processor becomes temporarily inoperative, Licensee shall have the right to Use
the Licensed Materials temporarily on a backup processor until operable status
is restored and processing on the backup processor is completed.
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Lucent grants to Licensee a non-exclusive and non-transferable right to
sublicense the Licensed Materials to a wholly-owned Subsidiary on a single
Designated Processor; provided, however, as follows:
(i) Such Subsidiary is bound in writing by the same terms,
conditions and restrictions as contained in this Agreement,
but shall have no right to grant future sublicenses.
(ii) Licensee shall remain fully liable for the performance by the
Subsidiary of all terms of the sublicense.
(iii) Licensee shall use best efforts to enforce Lucent's rights
under such sublicense agreement and shall do such things and
provide Lucent with such assistance as may be necessary for
Lucent to enforce such rights.
12.1 TITLE, RESTRICTIONS AND CONFIDENTIALITY OF LICENSED MATERIALS
All Licensed Materials (whether or not part of Firmware) furnished by
Lucent, and all copies thereof made by Licensee, including
translations, compilations, and partial copies are, and shall remain,
the property of Lucent. Except for any part of such Licensed Materials
which is or becomes generally known to the public through acts not
attributable to Licensee, Licensee shall hold such Licensed Materials
in confidence, and shall not, without Lucent's prior written consent,
disclose, provide, or otherwise make available, in whole or in part,
any Licensed Materials to anyone, except to its employees having a
need-to-know in connection with licensed Use. Licensee shall not make
any copies of any Licensed Materials except as necessary to exercise
the rights granted hereunder. Licensee shall reproduce and include any
Lucent copyright and proprietary notice on all such necessary copies of
Licensed Materials. Licensee shall also ▇▇▇▇ all media containing such
copies with a warning that Licensed Materials are subject to
restrictions contained in an agreement between Lucent and Licensee and
that they are the property of Lucent. Licensee shall maintain records
of the number and location of all copies of Licensed Materials. If
Licensee's license is canceled or terminated, or when the Licensed
Materials are no longer needed by Licensee in Licensee's discretion,
Licensee shall return all copies of such Licensed Materials to Lucent
or follow written disposition instructions provided by Lucent.
12.2 MODIFICATIONS TO USER CONTROLLED MODULES
Licensee may add to, delete from, or modify user controlled Software
modules or menus as contemplated in the Related Documentation. Such
changes or modifications, however extensive, shall not affect Lucent's
title to the Licensed Materials. Licensee shall retain ownership to
intellectual property independently developed by Licensee. Lucent shall
have no liability for Licensee's errors in making such changes or
modifications.
12.3 CHANGES IN LICENSED MATERIALS
Prior to shipment, Lucent at its option may, upon prior written notice
to Licensee and with Licensee's prior written consent, not to be
unreasonably withheld or delayed, modify the Specifications relating to
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its Licensed Materials, provided the modifications, under normal and
proper Use, do not materially adversely affect the Use, function, or
performance of the ordered Licensed Materials. Unless otherwise agreed
in writing, such substitution shall not result in any additional
charges to Licensee with respect to licenses for which Lucent has
quoted fees to Licensee.
12.4 OPTIONAL SOFTWARE FEATURES
Software provided to Licensee under this Agreement may contain optional
features which are separately licensed and priced. Licensee agrees that
such optional features will not knowingly be activated by Licensee
without written authorization from Lucent and Licensee's payment of
appropriate license fees. If such features are activated knowingly by
Licensee, Licensee agrees to so notify Lucent promptly and to pay
Lucent the license fees for the activated features, as well as the
reasonable cost of money for the period in which such features were
activated. In the event that such features are activated without
Licensee's knowledge in spite of Licensee's reasonable efforts to
comply with this restriction, Licensee agrees to cooperate with Lucent
to deactivate such features and prevent future activation of such
features.
12.5 RELOCATION OF LICENSED MATERIALS
Upon [REDACTED] days advance written notice, Licensee may move Software
contained in the Licensed Materials or optional feature packages for
which Licensee has the right to Use, from a Designated Processor and
relocate them to another Designated Processor within the same company
as Licensee. Unless otherwise agreed by the parties in writing,
Licensee shall not be required to pay additional right-to-use fees as a
result of such relocation, except where size sensitive units are a
factor or where use of the Software is for a different purpose than
originally specified. Lucent may charge Licensee for Services requested
by Licensee in support of such relocation. Licensee shall remove all
copies of the Software from any processor from which the Software has
been relocated. To the extent that Lucent otherwise consents to the
relocation of a Designated Processor outside of the United States or
the United Kingdom, Lucent and Licensee agree to negotiate in good
faith an amendment to the geographic territories covered by Section 15.
The Parties acknowledge that such an amendment, if agreed, may increase
costs to Licensee.
12.6 CANCELLATION OF LICENSE
Notwithstanding any other clause in this Agreement to the contrary, if
Licensee materially breaches any of the terms and conditions of this
Agreement with respect to the unauthorized Use, transfer or sublicense
of Licensed Materials, and such failure continues beyond [REDACTED]
days after receipt of written notice thereof by Licensee, Lucent, upon
written notice to Licensee, may, in addition to any other remedies
hereunder, cancel the license granted hereunder for the applicable
portion of the Licensed Materials affected by the unauthorized Use,
transfer or sublicense. Cancellation of license shall not relieve
Licensee of its obligation to pay all the fees that have accrued for
Use of the Licensed Materials.
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13. WARRANTY
13.1 [REDACTED]
13.2 YEAR ▇▇▇▇ ▇▇▇▇▇▇▇▇
(a) Lucent represents and warrants that during the period
beginning on the warranty start date and for the Warranty
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Periods set forth in this Agreement, but in no event ending
prior to December 31, 2001, the Licensed Materials delivered
by Lucent to Licensee under this Contract will:
(i) record, store, present and process calendar dates
falling on or after January 1, 2000 in the same
manner and with the same functionality as such
products record, store, present and process calendar
dates failing on or before December 31, 1999
(including, without limitation, the recognition of
the Year 2000 as a leap year); and
(ii) provide the same functionality with respect to the
introduction of records containing dates falling on
or after January 1, 2000, as it provides with respect
to the introduction of records containing dates
falling on or before December 31, 1999. All of the
foregoing functionality shall be known as "Year 2000
Capable."
(b) Year 2000 CapableLicensed Materials that are intended to
interoperate as described in the Statement of Work will be
compatible and interoperate in such manner as to process
between them, as applicable, date related data correctly as
described in Section (a) above.
(c) The foregoing sets forth an additional warranty for Lucent's
products and Software. The failure of the Licensed Materials
to meet the foregoing requirements during the warranty period
set forth in this subsection 13.2 entitles Licensee to the
remedies set forth elsewhere in this Section 13.
(d) Other than as set forth in Section 13.2(b), nothing in the
foregoing shall be deemed to make Lucent responsible for the
Year 2000 capability of any third party Software
interoperating or intending to operate with the Licensed
Materials.
13.3 NO ADDITIONAL WARRANTIES
THE FOREGOING WARRANTIES ARE EXCLUSIVE AND ARE IN LIEU OF ALL OTHER
EXPRESS AND IMPLIED WARRANTIES, INCLUDING BUT NOT LIMITED TO WARRANTIES
OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. LICENSEE'S
SOLE AND EXCLUSIVE REMEDY SHALL BE LUCENT'S OBLIGATION TO REPAIR,
REPLACE, CREDIT, OR REFUND AS SET FORTH ABOVE. LICENSEE'S SOLE REMEDY
FOR INFRINGEMENT SHALL BE THE REMEDIES SET FORTH IN "PATENTS,
TRADEMARKS & COPYRIGHTS" HEREIN.
13.4 POST-WARRANTY SUPPORT
Post-warranty support will be provided on terms and conditions and
subject to such fees as contained in a separate maintenance agreement
attached hereto
14. USE OF INFORMATION
All technical and business information in whatever form which bears a legend or
notice restricting its use, copying or dissemination or, if not in tangible
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form, is described as being proprietary or confidential at the time of
disclosure and is subsequently summarized in writing so marked and delivered to
the receiving Party within thirty (30) days of disclosure to the receiving Party
(all hereinafter designated "Information") shall remain the property of the
furnishing Party. All Software shall be deemed to be Information regardless of
how labeled. The furnishing Party grants the receiving Party the right to use
such Information only as follows: Such Information (a) shall not be reproduced
or copied, in whole or part, except for use as authorized in this Agreement; and
(b) shall, together with any full or partial copies thereof, be returned or
destroyed when no longer needed. Licensee shall use such Information only (a) to
order, (b) to evaluate the Licensed Materials, or other items, or Services, or
(c) to install, operate, and maintain the particular Licensed Materials, or
other items for which it was originally furnished. Unless the furnishing Party
consents in writing, such Information, except for that part, if any, which is
known to the receiving Party to be free of any confidential obligation, or which
becomes generally known to the public through acts not attributable to the
receiving Party, shall be held in confidence by the receiving Party. The
receiving Party may disclose such Information to other persons, upon the
furnishing Party's prior written authorization, but solely to enable such third
party to perform acts which this clause expressly authorizes the receiving Party
to perform itself and further provided such other person agrees in writing (a
copy of which writing will be provided to the furnishing Party at its request)
to the same conditions respecting use of Information contained in this clause
and to any other reasonable conditions requested by the furnishing Party.
15. PATENTS, TRADEMARKS & COPYRIGHTS
In the event of any claim, action, proceeding or suit by a third party against
Licensee alleging an infringement of any United States or United Kingdom patent,
copyright, or trademark, or a violation in the United States or United Kingdom
of any trade secret or proprietary rights by reason of the use, in accordance
with Lucent's or other applicable specifications, any of the Licensed Materials
or other item furnished by Lucent to Licensee under this Agreement, Lucent, at
its expense, will defend Licensee, subject to the conditions and exceptions
stated below. Lucent will reimburse Licensee for any losses, liabilities,
claims, actions, cost, expense or attorney's fee, incurred at Lucent's written
request or authorization, and will indemnify Licensee against any liability
assessed against Licensee by final judgment on account of such infringement or
violation arising out of such use.
If Licensee's use shall be enjoined or in Lucent's reasonable opinion is likely
to be enjoined, Lucent will, at its expense and at its option, either (a)
replace the affected portion of the Licensed Materials or other item furnished
pursuant to this Agreement with a suitable substitute free of any infringement
or violation, (b) modify it so that it will be free of the infringement or
violation, or (c) procure for Licensee a license or other right to use it. If
none of the foregoing options is practical, Lucent will give Licensee as much
notice as possible and then remove the enjoined portion of the Licensed
Materials or other item, or in the event that removal of a portion is not
commercially reasonable, such greater portion of the Licensed Materials or items
that is commercially reasonable, and refund to Licensee a PRO RATA portion of
the license right to use fees paid to Lucent under this Agreement equal to the
remaining useful life of the Licensed Materials, which useful life will be
deemed to be ten (10) years from the date of delivery of the Licensed Materials.
Licensee shall give Lucent prompt written notice of all such claims, actions,
proceedings or suits alleging infringement or violation and Lucent shall have
full and complete authority to assume the sole defense thereof, including
appeals, and to settle same. Licensee shall, upon Lucent's request and at
Lucent's expense, furnish all necessary information and assistance available to
Licensee and cooperate in every reasonable way to facilitate the defense and/or
17
settlement of any such claim, action, proceeding or suit at Lucent's expense. If
Lucent fails or refuses to provide the defense of Licensee as required by this
Section 15, Licensee shall be entitled to proceed with its own defense at the
expense of Lucent. Lucent shall be entitled to proceed with a defense of
Licensee with a reservation of rights.
No undertaking of Lucent under this section shall extend to any such alleged
infringement or violation to the extent that it: (a) arises from adherence to
design modifications, specifications, drawings, or express written instructions
which Lucent is expressly directed by Licensee to follow, but only if such
alleged infringement or violation does not reside in corresponding commercial
Licensed Material of Lucent's design or selection; or (b) arises from adherence
to instructions to apply Licensee's trademark, trade name, or other company
identification; or (c) resides in a Licensed Material which is not of Lucent's
origin and which is furnished by Licensee to Lucent for use under this
Agreement; or (d) relates to use of Licensed Materials or other items provided
by Lucent in combinations with other products, Licensed Materials or other
items, furnished either by Lucent or others, which combination was not
installed, recommended or otherwise approved by Lucent.
THE LIABILITY OF LUCENT AND LICENSEE WITH RESPECT TO ANY AND ALL CLAIMS,
ACTIONS, PROCEEDINGS, OR SUITS BY THIRD PARTIES ALLEGING INFRINGEMENT OF
PATENTS, TRADEMARKS, OR COPYRIGHTS OR VIOLATION OF TRADE SECRETS OR PROPRIETARY
RIGHTS BECAUSE OF, OR IN CONNECTION WITH, ANY ITEMS FURNISHED PURSUANT TO THIS
AGREEMENT SHALL BE LIMITED TO THE SPECIFIC UNDERTAKINGS CONTAINED IN THIS
SECTION.
16. LIMITATIONS OF LIABILITY
[REDACTED]
18
17. FORCE MAJEURE
Neither Party shall be liable to the other Party for any loss, damage, delay or
failure of performance resulting directly or indirectly from any cause which is
beyond its reasonable control, including, but not limited to the elements;
extraordinary traffic conditions; riots; civil disturbances; wars; states of
belligerency or acts of the public enemy; labor disputes; strikes; work
stoppages; inability to secure raw materials, product or transportation
facilities; or the laws, regulations, acts or failure to act of any governmental
authority, including but not limited to denial of a U.S. Export License,
hereinafter referred to as "Force Majeure". A Party shall promptly notify the
other Party of the occurrence of a Force Majeure event and the notifying Party
shall be excused from any further performance of these obligations affected by
the Force Majeure Event for as long as such Force Majeure Event continues and
such Party uses and continues to use its best efforts to recommence performance.
Failure of a Party to perform under this Agreement because of the endurance of a
Force Majeure event for more than thirty (30) days will represent grounds by the
other Party to terminate the portion of this Agreement affected by the Force
Majeure event.
18. INDEPENDENT CONTRACTOR
All work performed by one Party under this Agreement shall be performed as an
independent contractor and not as an agent of the other and neither Party shall
be, nor represent itself to be, the employee, agent, representative, partner or
joint venture of the other. Neither Party shall have the right or authority to
assume or create an obligation on behalf of or in the name of the other or to
otherwise act on behalf of the other. The performing Party shall be responsible
for its employees' and agents' compliance with all applicable laws, rules, and
regulations while performing work under this Agreement.
19. ASSIGNMENT
Except as provided in this Agreement, neither Party shall assign this Agreement
or any right or interest under this Agreement, nor delegate any work or
19
obligation to be performed under this Agreement, (an "assignment") without the
other Party's prior written consent. Notwithstanding the foregoing, Lucent may
assign or delegate any portion of this Agreement that relates to work performed
in the European Union to an affiliate entity domiciled in the European Union;
provided, however, that Lucent shall remain responsible for the performance by
the assignee of such obligations. Nothing shall preclude a Party from employing
a subcontractor in carrying out its obligations under this Agreement, but a
Party's use of such subcontractor shall not release the Party from its
obligations under this Agreement.
20. NON-WAIVER
No waiver of the terms and conditions of this Agreement, or the failure of
either Party to strictly enforce any term or condition of this Agreement on one
or more occasions shall be construed as a waiver of the same or of any other
term or condition of this Agreement on any other occasion.
21. SEVERABILITY
If any provision in this Agreement, or any portion thereof, is subsequently held
to be invalid or unenforceable under any applicable statute or rule of law, then
that provision or portion notwithstanding, this Agreement shall remain in full
force and effect and such provision or portion shall be deemed omitted and this
Agreement shall be construed as if such invalid or unenforceable provision or
portion had not been contained herein.
22. SETTLEMENT OF DISPUTES
Senior Management of either Party may, upon notice of a dispute and within five
(5) business days of receipt of such a notice from the other Party elect to
utilize a non-binding resolution procedure whereby each presents its case before
a panel consisting of two senior executives of each of the Parties and, if such
executives can agree upon such an individual, a mutually acceptable neutral
advisor. If a Party elects to use the procedure set forth in this clause, the
other Party shall participate. The hearing shall occur no more than 10 business
days after a Party serves notice to use the procedure set forth in this clause.
If the matter cannot be resolved by such senior executives, the neutral advisor,
if one has been agreed upon, may be asked to assist such senior executives in
evaluating the strengths and weaknesses of each Party's position on the merits
of their dispute. The Parties shall each bear their respective costs incurred in
connection with the procedure set forth in this clause, except that they shall
share equally the fees and expenses of the neutral advisor, if any, and the cost
of the facility for the hearing.
If a dispute is not resolved as set forth above, then either Party may, upon
notice to the other Party, submit the dispute to binding arbitration in
accordance with the following:
(a) The arbitration shall be held in New York City before a panel
of three arbitrators. Either Party may, upon notice to the
other Party, demand arbitration by serving on the other Party
a statement of the dispute, the facts relating or giving rise
to such dispute and the name of the arbitrator selected by it.
Issues of arbitration shall be decided by the arbitrators.
(b) Within five (5) days after receipt of such notice, the other
Party shall name its arbitrator, and the two arbitrators named
by the Parties shall, within five (5) days after the date of
such notice, select the third arbitrator.
(c) The arbitration shall be administered by the American
Arbitration Association and be governed by the Commercial
20
Arbitration Rules of the American Arbitration Association, as
may be amended from time to time, except as expressly provided
in this clause. The arbitrators may not amend or disregard any
provision of this clause.
(d) Discovery shall only be allowed as ordered by the arbitrators.
The arbitrators shall allow such discovery as is appropriate
to the purposes of arbitration in accomplishing a fair, speedy
and cost-effective resolution of disputes. The arbitrators
shall reference the rules of evidence of the Federal Rules of
Civil Procedure then in effect in setting the scope and
direction of such discovery, but shall afford substantial
weight to the burden of discovery in making such
determinations.
(e) The decision and award rendered by the arbitrators shall be
binding on the Parties. The arbitrators shall have no
authority to award punitive or exemplary damages or to award
damages in excess or in contravention of the Agreement.
(f) The arbitration shall be governed by the United States
Arbitration Act. The award shall be made within four (4)
months of the appointment of the arbitrator and judgment on
the award may be entered by any court having jurisdiction.
(g) The costs of the arbitration proceedings conducted pursuant to
this clause shall be paid by the Party designated by the
arbitrators.
23. TERMINATION; SURVIVAL OF OBLIGATIONS
In the event that either Party is in material breach or default of the terms of
this Agreement and such breach or default continues for a period of thirty (30)
days after receipt of written notice from the other Party, then the Party not in
breach or default shall have the right to terminate this Agreement without any
charge , obligation or liability except for (i) charges to Licensee for Software
Products already delivered and accepted or deemed accepted and (ii) charges to
Licensee for Services already performed. Notwithstanding the foregoing, if the
non-breaching party is Licensee, Licensee may, at its option and in addition to
the remedies provided in Section 8A , return all Software Products to Lucent and
receive a refund from Lucent for the amounts paid to Lucent in clauses (i) and
(ii) above. The Party not in breach or default shall provide full cooperation to
the other party in every reasonable way to facilitate the remedy of the breach
or default hereunder within the applicable cure period. Notwithstanding the
foregoing, if the nature of the material breach or default is such that it is
not a payment obligation (other than failure to comply with the license
restrictions contained herein) and it is incapable of cure within the foregoing
thirty (30) day period, then the thirty (30) day cure period may be extended for
a reasonable period of time (in no event to exceed an additional thirty (30)
days), provided that the Party in breach or default is proceeding diligently and
in good faith to effectuate a cure.
The Parties agree, in good faith to negotiate and finalize the maintenance
agreement (the "Maintenance Agreement"), as referred to in the letter from
Lucent dated October 21, 1998, within a period of fifteen (15) business days
following the Effective Date. The Maintenance Agreement will be based on the
pricing and other principles as stated in the above referred to letter. In the
event no agreement is reached within said time frame with respect to a
maintenance agreement, either party will have the right to immediately terminate
this Agreement with no additional obligations.
The Parties' rights and obligations which, by their nature, would continue
beyond the termination, cancellation, or expiration of this Agreement, including
21
but not limited to, the obligations in the clauses entitled Limitations of
Liability, Patents, Trademarks and Copyrights, Use of Information, Publication
of Agreement, and Export Control, shall survive such termination, cancellation,
or expiration.
24. GOVERNING LAW
Except as required by local law in any jurisdiction outside of the United States
and as expressly agreed to in writing by the Parties, this Agreement and the
rights and obligations of the Parties under this Agreement shall be construed in
accordance with and be governed by the laws of the State of New York without
giving effect to the principles therein relating to the conflicts of law.
25. NOTICES
All notices, requests, approvals and other communications ("Notices") required
or allowed under this Agreement shall be in writing and addressed as set forth
below or to such other person and/or address as either Party may designate by
written Notice pursuant hereto. Such Notices shall be deemed to have been given
when received. Notices may be delivered by hand or sent by prepaid certified or
registered airmail, confirmed facsimile or electronic mail, provided a copy is
also forwarded by prepaid registered airmail.
Lucent: Lucent Technologies Inc.
Global Commercial Markets
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Contract Manager
Licensee: Viatel, Inc.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
26. ENTIRE AGREEMENT
This Agreement, which includes any exhibits or attachments hereto, represents
the entire Agreement and understanding between the Parties and all prior
discussions and arrangements between the Parties, whether oral or written, are
merged into this Agreement and there are no other representations,
understandings, arrangements or agreements between the Parties, except as
expressly set forth herein. Neither Party shall be bound by any conditions,
definitions, warranties, understandings, or representations with respect to the
subject matter hereof other than as expressly provided in this Agreement.
This Agreement may be modified only by written amendment and signed by
authorized representatives of the Parties. No course of dealing or usage of
trade shall be invoked to modify the terms or conditions of the Agreement.
22
27. COUNTERPARTS
This Agreement may be executed in one or more counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument.
LUCENT TECHNOLOGIES INC. VIATEL, INC.
By: /s/(SIGNATURE ILLEGIBLE) By: /s/(SIGNATURE ILLEGIBLE)
------------------------------- -----------------------------------
Name:______________________________ Name:__________________________________
Title:_____________________________ Title:_________________________________
Date:______________________________ Date:__________________________________
23
LUCENT TECHNOLOGIES
▇▇▇▇ Labs Innovations
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ Lucent Technologies
Sales Engineering Director ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
Communication Software Business ▇▇▇▇ ▇▇▇▇ ▇▇-▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
October 21, 1998
Dear ▇▇▇▇▇,
This letter refers to our discussions of last Friday (98/10/16) with respect to
changes to the scope of work of our project, and is intended to synchronize our
presently negotiated SOW (Version 3.0 DRAFT 3) to the total price of the project
and the license agreement we are currently negotiating. Secondly, we also refer
to the discussions of last Friday regarding VIATEL's request for maintenance
services. Thirdly, we would like to bring up a subject not previously discussed,
which is a recent change to the number of switches in your described network,
that is now included in the above referenced SOW and for which you have not
approved pricing.
[REDACTED]
1
Definition of 'no-breakage' support:
No-breakage support means:
a) During the term of this maintenance agreement Lucent agrees to maintain
the compatibility between the Software on the one hand, and the NORTEL
DMS systems 100E, 250/300, and GSP on the other hand, provided that
VIATEL has made available to Lucent well in advance all such
information (which may include Proprietary Information), subject to the
use and disclosure restrictions of this Agreement, as reasonably
required to establish such compatibility.
b) If VIATEL determines, upon analysis undertaken, that there have been
any changes to its NORTEL DMS systems 100E, 250, 300, and GSP installed
in its network that would affect the compatibility or the operating
ability with Lucent's product or successor product, then VIATEL shall
promptly provide to Lucent the information necessary for Lucent to
update the compatibility of its products or successor products.
c) Compatibility as referred to in sub a) and sub b) means that the
functionality of Lucent products will not be affected. However,
compatibility does not mean, and Lucent does not warrant, that the new
functionality of the new generic release of the NORTEL DMS software
will work in conjunction with and is supported by the Lucent product.
[REDACTED]
Please provide us with written confirmation on acceptance of this letter.
Sincerely
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
2
APPENDIX A
Contract Price List 98/10/22
VIATEL SERVICE & NETWORK OPERATIONS CENTER PROJECT
COMMUNICATION SOFTWARE PRICES
[REDACTED]
APPENDIX B
[REDACTED]