Software License Agreement - Lucent Technologies Inc. and Statistical Sciences Inc.
SOFTWARE LICENSE AGREEMENT
BETWEEN
LUCENT TECHNOLOGIES INC.
AND
STATISTICAL SCIENCES, INC.
EFFECTIVE AS OF FEBRUARY 18, 1996
RELATING TO LUCENT'S S SOFTWARE
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SOFTWARE LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - STATUS OF PRIOR AGREEMENTS
1.01 Prior Agreements
1.02 Retained Rights and Licenses and Survival of Obligations
ARTICLE II - RIGHT TO USE SOFTWARE PRODUCT
2.01 Grant of Right
2.02 Furnishing of SOFTWARE PRODUCT
2.03 Ownership
2.04 Non-Transmission
2.05 U.S. Export Control
2.06 Maintenance
2.07 Contractors
ARTICLE III - SUBLICENSING RIGHTS
3.01 Grant of Rights
3.02 Enforcement
ARTICLE IV - SOLE LICENSEE CONDITIONS
4.01 Development of CUSTOMER SOFTWARE
4.02 Termination of Certain Rights and Licenses
ARTICLE V - FEES
5.01 Yearly Fees
5.02 Sublicensing Fees
5.03 Accrual
5.04 Records
5.05 Payments
5.08 Taxes
ARTICLE VI - TERM OF THE AGREEMENT AND TERMINATION
6.01 Term
6.02 Termination for Breach.
6.03 Survival
ARTICLE VII - MISCELLANEOUS PROVISIONS
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7.01 Agreement Prevails
7.02 Disclaimer
7.03 Nothing Construed
7.04 Confidentiality
7.05 Publicity
7.06 Nonassignability
7.07 Addresses
7.08 Integration
7.09 Choice of Law
7.10 SUBSIDIARIES
7.11 Dispute Resolution
7.12 Additional Agreements
APPENDIX A - DEFINITIONS
APPENDIX B - DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT
APPENDIX C - YEARLY FEE SCHEDULE
APPENDIX D - SUBLICENSING FEE SCHEDULE
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SOFTWARE LICENSE AGREEMENT
This Software License Agreement ("Agreement") is effective as of
[ ]. The Parties to this Agreement, LUCENT TECHNOLOGIES INC., a
Delaware corporation ("LUCENT"), having an office at 600 Mountain Avenue, Murray
Hill, New Jersey 07974, and STATISTICAL SCIENCES, INC., a Massachusetts
corporation ("LICENSEE"), having an office at 1700 Westlake Avenue North, Suite
500, Seattle, Washington 98107, agree as follows.(1)
ARTICLE I
STATUS OF PRIOR AGREEMENTS
1.01 PRIOR AGREEMENTS
LUCENT, as successor to American Telephone and Telegraph Company, and
LICENSEE are parties to PRIOR LICENSE AGREEMENTS.
1.02 RETAINED RIGHTS AND LICENSES AND SURVIVAL OF OBLIGATIONS
As of the effective date hereof, all licenses, rights and obligations
under PRIOR LICENSE AGREEMENTS are terminated except: (i) licenses, rights and
obligations with respect to each product made, imported, sold, leased or put
into use under PRIOR LICENSE AGREEMENTS prior to the effective date of this
Agreement, and (ii) those obligations which, either explicitly or by their
nature, would survive termination of PRIOR LICENSE AGREEMENTS including, but not
limited to, confidentiality obligations and obligations to pay fees and
royalties due under such PRIOR LICENSE AGREEMENTS.
ARTICLE II
RIGHT TO USE SOFTWARE PRODUCT
2.01 GRANT OF RIGHT
(a) LUCENT, at the request of LICENSEE, grants to LICENSEE, during
the term of this Agreement as set forth in Section 6.01, a [ ] and [ ]
right to [ ] SOFTWARE PRODUCT, subject to Section 2.05, [ ] for LICENSEE's [
]. Such right to use includes the right to [ ] SOFTWARE
PRODUCT and to [ ], provided that any
such [ ] or [ ] that contains any part of SOFTWARE
PRODUCT is treated hereunder the same as SOFTWARE PRODUCT. During the SOLE
LICENSEE PERIOD, LUCENT agrees not to grant to any other party, except
SUBSIDIARIES of LUCENT and except as otherwise expressly provided in this
Agreement, rights to [ ] SOFTWARE PRODUCT or to [ ] SOFTWARE PRODUCT and
[ ]. LUCENT claims no ownership interest in
any portion of a [ ]or [ ] that is [ ].
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(1) Terms in capital letters defined in the Definitions Appendix shall have the
meanings specified therein.
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(b) LUCENT further grants to LICENSEE, during the term of this
Agreement as set forth in Section 6.01, [ ] and [ ]
right to [ ] and [ ] copies of CUSTOMER SOFTWARE under the terms and
conditions set forth in Article III herein.
(c) LICENSEE may make those copies of SOFTWARE PRODUCT necessary to
the use by LICENSEE for which rights are granted hereunder, provided that each
such copy contains any copyright or proprietary notice appearing on or in
SOFTWARE PRODUCT being copied.
(d) LICENSEE agrees that it will not use or copy SOFTWARE PRODUCT
except as authorized herein.
(e) Except as expressly provided in this Agreement, no right is
granted for the use of SOFTWARE PRODUCT directly for any third person, or for
any use by any third person of SOFTWARE PRODUCT. By way of example, but not of
limitation, use of SOFTWARE PRODUCT in a [ ] or a [ ]
is permitted only pursuant to a specific, separate provision. Upon request by
LICENSEE, LUCENT will enter into negotiations with LICENSEE for an agreement,
under reasonable terms and conditions, granting rights under such a specific,
separate provision.
2.02 FURNISHING OF SOFTWARE PRODUCT
Subject to receipt by LUCENT of the first yearly fee as specified in
Section 5.01, within a reasonable time after such receipt, LUCENT shall furnish
the NEW SOFTWARE PRODUCT portion of SOFTWARE PRODUCT to LICENSEE in the form
specified in APPENDIX B - DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT, attached
hereto. LICENSEE acknowledges possession of PRIOR SOFTWARE PRODUCT delivered to
LICENSEE by LUCENT. LUCENT agrees to consider requests by LICENSEE to furnish
additional source code and documentation relating to S. Any such furnished
additional source code and documentation shall be considered and treated as part
of NEW SOFTWARE PRODUCT.
2.03 OWNERSHIP
No ownership interest in SOFTWARE PRODUCT, or any portion thereof, is
transferred to LICENSEE hereunder. Nothing herein requires LICENSEE to furnish
CUSTOMER SOFTWARE or ADAPTATIONS to LUCENT.
2.04 NON-TRANSMISSION
LICENSEE agrees that it will not, without the prior written consent of
LUCENT, transmit, directly or indirectly, SOFTWARE PRODUCT to any country
outside of the United States.
2.05 U.S. EXPORT CONTROL
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(a) LICENSEE hereby assures LUCENT that it does not intend to and
will not knowingly, without the prior written consent, if required, of the
Bureau of Export Administration of the U.S. Department of Commerce, Washington,
D.C. 20230, United States of America, transmit directly or indirectly:
(i) CUSTOMER SOFTWARE; or
(ii) any immediate product (including processes and services)
produced directly by the use of SOFTWARE PRODUCT or CUSTOMER
SOFTWARE; or
(iii) any commodity produced by such immediate product if the
immediate product of SOFTWARE PRODUCT or CUSTOMER SOFTWARE
is a plant capable of producing a commodity or is a major
component of such plant;
to (1) Haiti, Iran, Iraq, the People's Republic of China, Syria, those
areas of the Republic of Bosnia and Herzegovina that continue under the control
of Bosnian-Serb military forces, or to any Group Q, S, Y or Z country specified
in Supplement No. 1 to Part 770 of the Export Administration Regulations issued
by the U.S. Department of Commerce or (2) any national or resident of the
foregoing countries.
(b) If the immediate product of SOFTWARE PRODUCT or CUSTOMER SOFTWARE
is a plant or a major component of a plant, LICENSEE hereby assures LUCENT that
any and all requirements of the Export Administration Regulations (including
obtaining necessary assurances or licenses) will be satisfied with respect to
any controlled commodity produced by such plant.
2.06 MAINTENANCE
During the term of this Agreement and following delivery of SOFTWARE
PRODUCT to LICENSEE, LUCENT may furnish, at its discretion, updates to SOFTWARE
PRODUCT. Such updates may include minor enhancements and/or revisions to correct
known problems. Appropriate documentation will be included with such updates.
One copy of each update will be furnished to LICENSEE. Such updates shall be
considered to be part of NEW SOFTWARE PRODUCT.
2.07 CONTRACTORS
(a) LICENSEE may permit access to SOFTWARE PRODUCT by its contractors
and may furnish and allow use of SOFTWARE PRODUCT by its contractors provided
such access, furnishing and use is exclusively for LICENSEE in connection with
work called for in written agreements between LICENSEE and such contractors in
accordance with Section 2.07(f) of this Agreement.
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(b) Any claim, demand or right of action arising on behalf of a
contractor from the furnishing to it or use by it of SOFTWARE PRODUCT shall be
solely against LICENSEE.
(c) Contractors shall agree to the same responsibilities and
obligations and other restrictions pertaining to the use of SOFTWARE PRODUCT as
those undertaken by LICENSEE under this Agreement.
(d) When a contractor's work for LICENSEE is completed, all copies of
SOFTWARE PRODUCT furnished to such contractor or made by such contractor and all
copies of any modifications or derivative works made by such contractor based on
SOFTWARE PRODUCT shall be returned to LICENSEE or destroyed, including any
copies stored in any computer memory or storage medium.
(e) A contractor may not acquire any ownership interest in any
modification or ADAPTATION prepared by such contractor based on or using
SOFTWARE PRODUCT subject to this Agreement unless such contractor also becomes a
licensee of LUCENT for SOFTWARE PRODUCT.
(f) LICENSEE and any such contractor shall enter into a written
agreement before or at the time of permitting access to, allowing the use of or
furnishing of SOFTWARE PRODUCT by such contractor. Such written agreement shall
be consistent with the requirements of this Section 2.07. Copies of such
agreements shall be provided to LUCENT on request; however, portions of such
agreements not required by this Section 2.07 maybe deleted from such copies.
ARTICLE III
SUBLICENSING RIGHTS
3.01 GRANT OF RIGHTS
(a) LUCENT, subject to receipt by LUCENT of the fees specified in
Sections 5.01 and 5.02, grants to LICENSEE, during the term of this Agreement as
set forth in Section 6.01, [ ] and [ ] rights:
(i) To [ ] CUSTOMER SOFTWARE, [ ] of CUSTOMER
SOFTWARE and [ ] or [ ],
such copies to customers anywhere in the world (subject to
LICENSEE satisfying applicable U.S. Government and foreign
government export requirements) for use on customers' CPUs [ ]
for such customers' [ ], provided that the
entity (LICENSEE or DISTRIBUTOR) obtains agreement, either in
writing or via a shrink wrap agreement, with such a customer,
before or at the time of furnishing each copy of CUSTOMER
SOFTWARE, that:
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(1) only a [ ], [ ] and [ ] to
[ ] such copy of CUSTOMER SOFTWARE is granted to such
customer;
(2) no ownership interest in CUSTOMER SOFTWARE is transferred to
such customer;
(3) such customer will not copy CUSTOMER SOFTWARE except as
necessary to use such CUSTOMER SOFTWARE for backup and
archive purposes in connection with such use;
(4) if a customer's right-to-use is terminated for any reason,
such customer will either destroy or return all copies of
CUSTOMER SOFTWARE in its possession;
(5) such customer will not transfer CUSTOMER SOFTWARE to any
other party except as authorized by LICENSEE;
(6) such customer will not export or re-export CUSTOMER SOFTWARE
without the appropriate United States and/or foreign
government licenses;
(7) such customer will not reverse compile or disassemble
CUSTOMER SOFTWARE; and
(8) LUCENT does not warrant CUSTOMER SOFTWARE, does not assume
any liability regarding CUSTOMER SOFTWARE and does not
undertake to furnish any support or information regarding
CUSTOMER SOFTWARE;
(ii) to [ ], [ ] to LUCENT, CUSTOMER
SOFTWARE to [ ] upon prior
written approval of LUCENT. Any request for approval
shall state the reason for such
donation, and LUCENT shall respond within forty-five
(45) days of receipt of such request. LUCENT reserves
the right to deny any such request. Any request
granted shall indicate to the [ ] that LUCENT
is participating in such [ ], and
(iii) to use CUSTOMER SOFTWARE [ ]
that are to be delivered customers and for [
] CUSTOMER SOFTWARE to prospective customers.
(b) Each portion of CUSTOMER SOFTWARE shall include an appropriate
copyright notice. Such copyright notice may be the copyright notice or notices
appearing in or on the corresponding portions of SOFTWARE PRODUCT or, if
LICENSEE makes copyrightable changes in developing CUSTOMER SOFTWARE, LICENSEE's
copyright notice.
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(c) During the SOLE LICENSEE PERIOD, LUCENT agrees not to grant to
any other party, except to SUBSIDIARIES of LUCENT, rights of the scope of the
rights granted in Section 3.01 (a).
(d) LICENSEE shall require each DISTRIBUTOR to enter into a written
agreement with its supplier (LICENSEE or another DISTRIBUTOR) of CUSTOMER
SOFTWARE before CUSTOMER SOFTWARE is furnished to such DISTRIBUTOR. Such
agreement shall include provisions consistent with and containing the relevant
substance of Sections 3.01(a), 3.01(e), 3.01(f) and this Section 3.01(d). For a
DISTRIBUTOR who is also to be an AUTHORIZED COPIER, such agreement shall also
include provisions consistent with and containing the relevant substance of
Section 5.04.
(e) DISTRIBUTORS who are not also AUTHORIZED COPIERS may not make
copies of CUSTOMER SOFTWARE, but may furnish to customers, and other
DISTRIBUTORS copies of CUSTOMER SOFTWARE furnished to such DISTRIBUTOR by
LICENSEE or other DISTRIBUTORS.
(f) If a DISTRIBUTOR fails to fulfill one or more of its obligations
under the agreement required by Section 3.01(d), LUCENT may, upon its election
and in addition to any other remedies that it may have, at any time notify
LICENSEE in writing of such breach and require LICENSEE to terminate all the
DISTRIBUTOR'S rights granted in such agreement by not less than three (3)
months' written notice to such DISTRIBUTOR specifying any such breach, unless
within the period of such notice all breaches specified therein shall have been
remedied; upon such termination such DISTRIBUTOR shall within thirty (30) days
immediately discontinue use of and return or destroy all copies of CUSTOMER
SOFTWARE in its possession.
(g) LUCENT agrees that it will, if so requested by LICENSEE during
the term of this Agreement as set forth in Section 6.01, grant LICENSEE the
right to [ ] CUSTOMER SOFTWARE, under reasonable terms and conditions, for
[ ] and [ ]. LUCENT agrees that it will, if so
requested by LICENSEE during the term of this Agreement as set forth in Section
in 6.01, consider entering into a [ ] with a [ ];
however, the entering into of any such [ ] shall be at LUCENT's sole
discretion.
3.02 ENFORCEMENT
LICENSEE shall use its best efforts to enforce the agreements with
customers and DISTRIBUTORS specified in Section 3.01 of this Agreement.
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ARTICLE IV
SOLE LICENSEE CONDITIONS
4.01 DEVELOPMENT OF CUSTOMER SOFTWARE
In partial consideration for the rights and licenses granted herein,
LICENSEE agrees to [ ] and to [ ],
[ ], CUSTOMER SOFTWARE which CUSTOMER
SOFTWARE [ ] furnished in NEW
SOFTWARE PRODUCT [ ].
4.02 TERMINATION OF CERTAIN RIGHTS AND LICENSES
The Parties agree that if LICENSEE fails to fulfill its obligation
under Section 4.01 that: (i) the agreement by LUCENT in Sections 2.01(a) and
3.01(c) not to grant licenses and rights to third parties, with respect to the
NEW SOFTWARE PRODUCT portion of SOFTWARE PRODUCT, is void as of [ ],
but that all other rights, licenses and obligations shall continue, and (ii) the
yearly fee due pursuant to Section 5.01 and specified in APPENDIX C - [ ]
FEE SCHEDULE, shall be reduced to [ ] United States
dollars (U.S. $[ ]) for the years [ ] and [ ]
and the sublicensing fee due pursuant to Section 5.02 and specified in APPENDIX
D - SUBLICENSING FEE SCHEDULE, shall be reduced to [ ] ([ ]) [ ]
for the years [ ] and [ ].
ARTICLE V
FEES
5.01 YEARLY FEES
In partial consideration for the rights and licenses granted herein,
LICENSEE shall pay to LUCENT the yearly fees specified in APPENDIX C - YEARLY
FEE SCHEDULE, subject to Section 4.02. All payments shall be payable within
sixty (60) days of the due date as specified. In no event shall fees payable
under this Section 5.01 be refundable. Fees payable to LUCENT under this Section
5.01 shall not be credited against any sublicensing fees payable under Section
5.02 of this Agreement.
5.02 SUBLICENSING FEES
(a) For the sublicensing rights granted under Article III of this
Agreement, LICENSEE shall pay to LUCENT, in the manner and at the times
specified in Section 5.05, fees as specified in APPENDIX D - SUBLICENSING FEE
SCHEDULE hereto, subject to Section 4.02.
(b) Amounts paid to LUCENT under this Section 5.02 shall not be
credited against any yearly fees payable under Section 5.01.
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5.03 ACCRUAL
(a) Fees shall accrue on CUSTOMER SOFTWARE upon the first sale,
lease, license or putting into use of such CUSTOMER SOFTWARE. Obligations to pay
accrued royalties shall survive termination of licenses and rights pursuant to
Article VI.
(b) When a company ceases to be a SUBSIDIARY of LICENSEE, fees which
have accrued with respect to any products of such company, but which have not
been paid, shall become payable with LICENSEE's next scheduled royalty payment.
5.04 RECORDS
(a) LICENSEE shall, for a seven (7) year period, keep full, clear and
accurate records of sales, leases, and other uses of CUSTOMER SOFTWARE by
LICENSEE or DISTRIBUTORS contributing to SUBLICENSING REVENUE, which records
include, but are not limited to, MAINTENANCE AGREEMENTS and of the number of
copies and price of CUSTOMER SOFTWARE furnished to customers.
(b) LICENSEE shall require that each AUTHORIZED COPIER shall, for a
seven (7) year period, keep full, clear and accurate records of sales, leases,
and other uses of CUSTOMER SOFTWARE by such AUTHORIZED COPIER contributing to
SUBLICENSING REVENUE, which records include, but are not limited to, the number
of copies and price of CUSTOMER SOFTWARE furnished.
(c) LICENSEE shall require that each AUTHORIZED COPIER shall furnish
a statement at least semiannually to LICENSEE identifying the number of copies
of CUSTOMER SOFTWARE furnished to customers and other DISTRIBUTORS since the
previous such statement was furnished.
(d) LICENSEE shall keep full, clear and accurate records of the
identities and locations of AUTHORIZED COPIERS.
(e) LUCENT shall have the right to make an examination and audit
during normal business hours, not more frequently than annually, of all records
kept pursuant to this Section 5.04 by LICENSEE, its SUBSIDIARIES and AUTHORIZED
COPIERS and such other records and accounts as may under recognized accounting
practices contain information bearing upon the amounts of fees payable to LUCENT
under this Agreement. Prompt adjustment shall be made by the proper Party to
compensate for any errors or omissions disclosed by such examination or audit.
Neither such right to examine and audit nor the right to receive such adjustment
shall be affected by any statement to the contrary appearing on checks or
otherwise unless such statement appears in a letter signed by the Party having
such right expressly waiving such right and such letter is delivered to the
other Party.
5.05 PAYMENTS
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(a) Within ninety (90) days after the end of each semiannual period
ending on June 30th or December 31st, commencing with the semiannual period
ending December 31, 1996, LICENSEE shall furnish to LUCENT a statement, in form
acceptable to LUCENT and certified by an authorized representative of LICENSEE,
identifying SUBLICENSING REVENUE and remitting fees due pursuant to Section
5.02, and including the number of copies and price of CUSTOMER SOFTWARE that
were furnished by LICENSEE, its SUBSIDIARIES and DISTRIBUTORS to customers and
the [ ] of MAINTENANCE AGREEMENTS during such semiannual period.
(b) Statements and payments shall be sent to LUCENT at the address
specified in Section 7.07 of this Agreement.
(c) Overdue payments shall be subject to a late payment charge
calculated at an annual rate of three percent (3%) over the prime rate (as
posted in New York City in the Wall Street Journal during delinquency). If the
amount of such late payment charge exceeds the maximum permitted by law, such
charge shall be reduced to such maximum amount.
(d) LICENSEE shall furnish whatever additional information LUCENT may
reasonably prescribe from time to time to enable LUCENT to ascertain the amounts
of fees payable pursuant hereto.
5.06 TAXES
LICENSEE shall pay any tax, duty, levy, customs fee, or similar charge
("taxes"), including interest and penalties thereon, however designated, imposed
as a result of the operation or existence of this Agreement, including taxes
which LICENSEE or its SUBSIDIARIES are required to withhold or deduct from
payments to LUCENT, except (i) net income taxes imposed upon LUCENT by any
governmental entity within the United States (the fifty (50) States and the
District of Columbia), and (ii) net income taxes imposed upon LUCENT by
jurisdictions outside the United States which are allowable as a credit against
the United States Federal income tax of LUCENT or any of its SUBSIDIARIES. In
order for the exception in (ii) to be effective, LICENSEE must furnish to LUCENT
evidence sufficient to satisfy the United States taxing authorities that such
taxes have been paid. Such evidence must be furnished to LUCENT within thirty
(30) days of issuance by the local taxing authority.
ARTICLE VI
TERM OF THE AGREEMENT AND TERMINATION
6.01 TERM
The term of this Agreement shall commence on February 18, 1996 and
shall continue, unless terminated pursuant to Sections 6.02 or 6.03, for a term
of six (6) years.
6.02 TERMINATION FOR BREACH
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If LICENSEE or any of its SUBSIDIARIES fails to fulfill one or more of
its obligations under this Agreement, LUCENT may, upon its election and in
addition to any other remedies that it may have, at any time terminate all the
rights granted by it hereunder by not less than [ ] ([ ]) [ ] written
notice to LICENSEE specifying any such breach, unless within the period of such
notice all breaches specified therein shall have been remedied. Upon such
termination LICENSEE and its SUBSIDIARIES shall destroy all copies of SOFTWARE
PRODUCT in its possession and certify such destruction in writing to LUCENT
within thirty (30) days. Upon such termination LICENSEE and its SUBSIDIARIES
shall also immediately discontinue distribution and use of and destroy all
copies of CUSTOMER SOFTWARE in its possession.
6.03 SURVIVAL
The obligations of LICENSEE and its SUBSIDIARIES under Sections 2.04,
2.05, 5.05, 7.04 and 7.05 shall survive and continue after any termination of
rights under this Agreement. The rights and obligations of customers in Section
301(a)(i)(18) shall survive and continue after termination of LICENSEE's rights
under this Agreement.
ARTICLE VII
MISCELLANEOUS PROVISIONS
7.01 AGREEMENT PREVAILS
This Agreement shall prevail notwithstanding any conflicting terms or
legends which may appear on or in SOFTWARE PRODUCT.
7.02 DISCLAIMER
LUCENT AND ITS SUBSIDIARIES MAKE NO REPRESENTATIONS OR WARRANTIES,
EXPRESSLY OR IMPLIEDLY. BY WAY OF EXAMPLE BUT NOT OF LIMITATION, LUCENT AND ITS
SUBSIDIARIES MAKE NO REPRESENTATIONS OR WARRANTIES, OF MERCHANTABILITY OR
FITNESS FOR ANY PARTICULAR PURPOSE, OR THAT THE USE OF SOFTWARE PRODUCT WILL NOT
INFRINGE ANY PATENT, COPYRIGHT OR OTHER INTELLECTUAL PROPERTY RIGHT. LUCENT AND
ITS SUBSIDIARIES SHALL NOT BE HELD TO ANY LIABILITY WITH RESPECT TO ANY CLAIM BY
LICENSEE OR ITS SUBSIDIARIES, OR A THIRD PARTY ON ACCOUNT OF, OR ARISING FROM,
THE USE OF SOFTWARE PRODUCT.
7.03 NOTHING CONSTRUED
Nothing contained herein shall be construed as:
(i) conferring by implication, estoppel or otherwise, any
license or right to use any name, trade name, trademark,
service mark, symbol or any other identification or any
abbreviation, contraction or simulation thereof;
(ii) an obligation upon LUCENT or any of its SUBSIDIARIES to
furnish any person, including LICENSEE, any assistance of
any kind whatsoever, or
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any information or documentation other than updates to
SOFTWARE PRODUCT furnished pursuant to Section 2.06; or
(iii) a grant to LICENSEE to sell, lease, sublicense (except to
SUBSIDIARIES) or otherwise transfer or dispose of SOFTWARE
PRODUCT, in whole or in part.
7.04 CONFIDENTIALITY
(a) LICENSEE agrees to hold all parts of SOFTWARE PRODUCT in
confidence for LUCENT. LICENSEE further agrees not to make any disclosure of
SOFTWARE PRODUCT (including methods or concepts utilized therein) to anyone,
except to employees and contractors of LICENSEE to whom such disclosure is
necessary to the use for which rights are granted hereunder.
(b) LICENSEE shall appropriately notify all employees and contractors
to whom any such disclosure is made that such disclosure is made in confidence
and shall be kept in confidence by them.
(c) LICENSEE's obligations under this Section 7.04 shall not apply to
any information relating to SOFTWARE PRODUCT (including any method or concept
utilized therein) that:
(i) is or becomes available without restriction to the general
public by acts not attributable to LICENSEE, its employees
or its contractors;
(ii) was rightfully in LICENSEE's possession without limitation
on disclosure before disclosure hereunder to LICENSEE;
(iii) is rightfully disclosed to LICENSEE by a third party
without restrictions on disclosure; or
(iv) is inherently disclosed by use of CUSTOMER SOFTWARE in
accordance with this Agreement.
7.05 PUBLICITY
LICENSEE agrees that it will not, without the prior permission of LUCENT:
(i) use in advertising, publicity, packaging, labeling or
otherwise any trade name, trademark, trade device,
service mark, symbol or any other identification or any
abbreviation, contraction or simulation thereof owned by
LUCENT or any of its SUBSIDIARIES or used by LUCENT or
any of its SUBSIDIARIES to identify any of its or their
products or services; or
(ii) represent, directly or indirectly, that any product or
service of LICENSEE is a product or service of LUCENT or
any of its SUBSIDIARIES or is
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made in accordance with or utilizes any information or
documentation of LUCENT or any of its SUBSIDIARIES.
7.06 NONASSIGNABILITY
The Parties hereto have entered into this Agreement in contemplation of [ ]
performance by LICENSEE and intend that the rights granted to LICENSEE hereunder
[ ]. Accordingly, [ ] this Agreement [ ] rights
[ ].
7.07 ADDRESSES
(a) Any notice or other communication hereunder shall be sufficiently
given to LICENSEE when sent by certified mail addressed to Math Soft, Inc., 101
Main Street, Cambridge, Massachusetts 02142, Attn: Chief Financial Officer or to
LUCENT when sent by certified mail addressed to Contract Administrator,
Intellectual Property, Lucent Technologies Inc., 2333 Ponce de Leon Boulevard -
Suite 511, Coral Gables, Florida 33134. Changes in such addresses may be
specified by written notice.
(b) Payments by LICENSEE shall be made to LUCENT at Sun Trust, P.O.
Box 913021, Orlando, Florida, 32891-3021. Alternatively, payments to LUCENT may
be made by bank wire transfers to LUCENT's account: Lucent Technologies
Licensing, Account No. 910-2-568475, at Chase Manhattan Bank, N.A., 4 Metrotech
Center, Brooklyn, New York 11245. Changes in such address or account may be
specified by written notice.
7.08 INTEGRATION
This Agreement sets forth the entire agreement and understanding between the
Parties as to the subject matter hereof and merges all prior discussions between
them. Neither of the Parties shall be bound by any warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein, in prior written agreements, or in a writing executed with or
subsequent to the execution of this Agreement by an authorized representative of
the Party to be bound thereby.
7.09 CHOICE OF LAW
The Parties are familiar with the principles of New York commercial law, and
desire and agree that the law of the State of New York, exclusive of its
conflict of laws provisions, shall apply in any dispute arising with respect to
this Agreement.
7.10 SUBSIDIARIES
(a) The grant of each right and license hereunder includes the right
to grant sublicenses and similar rights within the scope of the Agreement to a
Party's SUBSIDIARIES for so long as they remain its SUBSIDIARIES and agree to
abide by the terms, conditions and obligations herein. Any such sublicenses and
similar rights may be made effective retroactively,
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but not prior to the effective date hereof, nor prior to the becoming a
SUBSIDIARY of such Party.
(b) LICENSEE agrees that when a SUBSIDIARY's relationship to LICENSEE
changes so that it is no longer a SUBSIDIARY of LICENSEE, (i) all rights of such
former SUBSIDIARY to use SOFTWARE PRODUCT subject to this Agreement shall
immediately cease, (ii) such former SUBSIDIARY shall immediately discontinue use
of and return to LICENSEE or destroy all copies of SOFTWARE PRODUCT and (iii)
such former SUBSIDIARY shall return to LICENSEE or destroy all copies of
CUSTOMER SOFTWARE for which fees under Section 5.04 have not been paid.
7.11 DISPUTE RESOLUTION
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the Parties agree to submit the dispute
to a sole mediator selected by the Parties or, at any time at the option of a
Party, to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for
or against a Party and affording such remedy as is deemed equitable, just and
within the scope of the Agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
Statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other than patent disputes) include injunctive relief; (iv) shall
be made within four (4) months of the appointment of the arbitrator; and (v) may
be entered in any court.
(c) The requirement for mediation and arbitration shall not be deemed
a waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
(d) The arbitrator shall determine issues of arbitrability but may
not limit, expand or otherwise modify the terms of the Agreement.
(e) The place of mediation and arbitration shall be New York City.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive or
other damages in excess of compensatory damages and each Party irrevocably
waives any claim thereto.
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<PAGE> 17
(i) The Parties, their representatives, other Participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
7.12 ADDITIONAL AGREEMENTS
LICENSEE acknowledges that the rights granted herein in Sections 2.01(a),
2.01(b), and 3.01(a) are, subject to payment of fees specified herein and unless
this Agreement is otherwise terminated, for the term of this Agreement as set
forth in Section 6.01. The Parties agree that, if each Party so desires and if
LICENSEE has not materially breached this Agreement, an agreement, effective
subsequent to the termination of this Agreement, specifying similar rights,
licenses and obligations will be negotiated on reasonable terms and conditions.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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<PAGE> 18
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
LUCENT TECHNOLOGIES INC.
By: ______________________________
Title: _____________________________
Date: _____________________________
STATISTICAL SCIENCES, INC.
By: _______________________________
Title: ______________________________
Date: ______________________________
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY IN ANY MANNER
UNLESS DULY EXECUTED BY AUTHORIZED REPRESENTATIVES OF BOTH PARTIES
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<PAGE> 19
APPENDIX A
DEFINITIONS
ADAPTATION means any [ ] work [ ] on SOFTWARE PRODUCT
including (i) any work [ ] any of SOFTWARE PRODUCT [ ], (ii)
any work [ ] any COMPUTER PROGRAM from SOFTWARE PRODUCT [ ]
in a [ ] or [ ] to [ ] on a [ ], (iii) any work
[ ] a [ ] or [ ] from SOFTWARE PRODUCT that LICENSEE is
obligated to keep in confidence hereunder of (iv) any work otherwise covered by
any of LUCENT's intellectual property rights in SOFTWARE PRODUCT.
AUTHORIZED COPIER means a DISTRIBUTOR authorized by LICENSEE to make
copies of CUSTOMER SOFTWARE.
CPU means central processing unit.
COMPUTER PROGRAM means any object-code and/or source-code instruction
or plurality of such instructions for controlling the operation of a CPU.
CUSTOMER SOFTWARE means (i) COMPUTER PROGRAMS, [
] or [ ] SOFTWARE PRODUCT or [ ], (ii)
documentation listed in APPENDIX B-DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT
and any other documentation included in or based on SOFTWARE PRODUCT or an
ADAPTATION.
DISTRIBUTOR means an entity authorized by LICENSEE or another
DISTRIBUTOR to receive copies of CUSTOMER SOFTWARE from LICENSEE or another
DISTRIBUTOR and furnish such copies to customers and/or other DISTRIBUTORS.
[ ] means, with respect to any item (or service)
[ ], [ ] or [ ], the [ ] of (i) the [ ] which a
[ ] would [ ] from [ ] in [ ] in [ ]
of [ ] in [ ] and [ ] and [ ] as [ ],
[ ] [ ]; or (ii) the [ ] for [ ] in
the [ ], whether or not [ ] (and without excluding therefrom
any [ ] or [ ] thereof which are included in such
[ ]).
In determining "[ ]" price the following shall be [ ]:
(a) [ ];
(b) [ ];
(c) [ ]; and
(d) [ ].
<PAGE> 20
MAINTENANCE AGREEMENT means an obligation by LICENSEE, SUBSIDIARY,
DISTRIBUTOR or LICENSEE's contractor or agent to furnish on-going bug fixes,
releases, upgrades, and/or technical support of COMPUTER SOFTWARE.
NEW SOFTWARE PRODUCT means all or any portion of deliverables, such as
COMPUTER PROGRAMS, documentation and/or other information specifically listed in
Appendix B-DELIVERABLE COMPRISING NEW SOFTWARE PRODUCT.
PRIOR LICENSE AGREEMENTS means the Software License Agreement and the
Software Sublicensing Agreement, both effective April 1, 1991, between American
Telephone and Telegraph Company and Statistical Sciences, Inc., as well as
amendments thereto.
PRIOR SOFTWARE PRODUCT means all computer programs, documentation and
other information which comprised "software product" as defined in PRIOR LICENSE
AGREEMENTS, as well as other related information, documentation and software
furnished to LICENSEE prior to the effective date of this Agreement.
SOFTWARE PRODUCT means PRIOR SOFTWARE PRODUCT and NEW SOFTWARE PRODUCT.
SOLE LICENSEE PERIOD means the period beginning February 18, 1996, and
ending the [ ] of: (i) the date of terminating rights and licenses granted
herein pursuant to Article VI, or (ii) the [ ] termination of certain rights
and licenses pursuant to Section 4.02 if Section 4.02 as a result of LICENSEE's
failure to fulfill its obligations pursuant to Section 4.01.
SUBLICENSE REVENUE:
(a) for the case where: (i) the [ ] of [ ]
is [ ] or [ ] ([ ]%) of the [ ] of [ ]
furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS, and (ii) such [
] do not include [ ] which include [
], SUBLICENSE REVENUE means the [ ] of [ ]
furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS;
(b) for the case where: (i) the [ ] of [ ]
is [ ] or [ ] ([ ]%) of the [ ] of
[ ] furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS,
and (ii) one or more [ ] include [ ]
containing [ ], SUBLICENSE REVENUE means the [
] of [ ] furnished by LICENSEE, SUBSIDIARIES
and DISTRIBUTORS [ ] ([ ]) of the [ ]
of all such [ ] that [ ] such [ ]; or
(c) for the case where the [ ] of [ ]
is [ ] ([ ]%) of the [ ] of [
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<PAGE> 21
] furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS, SUBLICENSE
REVENUE means the [ ] of [ ] furnished by
LICENSEE, SUBSIDIARIES and DISTRIBUTORS [ ] ([ ]) of the [
] of [ ] ([ ]%) of the [
] of [ ] furnished by LICENSEE, SUBSIDIARIES and
DISTRIBUTORS.
SUBSIDIARY of a company means a corporation or other legal entity (i)
the majority of whose shares or other securities entitled to vote for election
of directors (or other managing authority) is now or hereafter controlled by
such company either directly or indirectly; or (ii) which does not have
outstanding shares or securities but the majority of whose ownership interest
representing the right to manage such corporation or other legal entity is now
or hereafter owned and controlled by such company either directly or indirectly;
but any such corporation or other legal entity shall be deemed to be a
SUBSIDIARY of such company only as long as such control or ownership and control
exists.
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<PAGE> 22
APPENDIX B
DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT
Version [ ] of S, consisting of the following files [ ] and for
on-line documentation:
[
<PAGE> 23
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<PAGE> 24
]
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<PAGE> 25
APPENDIX C
YEARLY FEE SCHEDULE
Payment Due Date Yearly Fee
------- -------- ----------
[ $
$
$
$
$
$]
<PAGE> 26
APPENDIX D
SUBLICENSING FEE SCHEDULE
YEAR FEES
---- ----
(beginning February 18)
---------------------
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE