Software Design License and Distribution Agreement
This Software Design License and Distribution Agreement (this Agreement) made this
the (date), the Effective Date, by and between (Name of Licensor), a corporation
organized and existing under the laws of the state of (name of state), with its principal
office located at (street address, city, state, zip code), referred to herein as Licensor,
and (Name of Licensee), a corporation organized and existing under the laws of the
state of (name of state), with its principal office located at (street address, city, state, zip
code), referred to herein as Licensee.
Whereas, Licensor and Licensee desire to enter into an independent software licensor
relationship whereby Licensee shall be authorized to develop and distribute certain
software applications that incorporate Licensor's specified software products;
Now, therefore, for and in consideration of the mutual covenants contained in this
Agreement, and other good and valuable consideration, the parties agree as follows:
A. Licensor’s Trademark means the authorized licensor’s name, logo,
and/or certain other trademarks, trade names, and service marks specified in
Exhibit A and provided by Licensor for only those limited purposes explicitly
provided in this Agreement.
B. Business Plan means the business plan submitted by Licensee to
Licensor, attached hereto as Exhibit B, which serves as the basis for Licensor's
approval of Licensee's participation in this ISV Build program.
C. Distributors means dealers, distributors, resellers, original equipment
manufacturers, value added resellers, software licensors, and similar entities who
obtain the Software Application from Licensee, solely for redistribution to an End-
D. Documentation means the Licensor supplied copyrighted information and
reference material relating to the operation and functionality of the Licensed
Software, including user manuals, if any.
E. End-User(s) means customer(s) of Distributors or Licensee acquiring the
Software Application for the sole purpose of using same for internal, in-house
purposes and not for redistribution, sublicensing, or resale in any form.
F. End-User License means the then-current end-user license agreement
shipped with, and/or incorporated in, each Licensed Software product which sets
forth the terms and conditions under which a licensee may use such Licensed
G. Enhancement means a modification or revision to the Software
Application expanding its functionality or improving its performance.
H. License Fee means the monetary amount in the currency specified in
Exhibit C to be paid by Licensee to Licensor as set forth in this Agreement.
I. Licensed Software means the Licensor computer software application(s)
and component(s) in machine-readable, object code form identified in Exhibit D
of this Agreement, and any subsequent version(s) of said software which
Licensor, at its sole discretion, may make available to Licensee by written notice
pursuant to this Agreement; however, this definition does not include the Source
J. Marketing Materials means the marketing collateral and other advertising
materials that Licensor may supply Licensee from time to time during the Term
and which use are governed by the terms of the Marketing Materials Program
attached hereto as Exhibit E.
K. Net Licensing Proceeds or NLP shall mean the actual billings of
Licensee from all sales, licensing or other revenue-generating distribution of the
Software Application: (i) exclusive of any separately itemized and documented
taxes, interest, or finance charges, service fees and insurance or transportation
costs actually paid by Distributors or End-User(s), (ii) less any documented
credits or refunds for returns, and (iii) less any documented credits, rebates,
discounts or promotional allowances made by Licensee to its Distributors or End-
User(s) directly related to the Software Application.
L. Seat means (i) one computer for non-networked single user
environments, or (ii) named user, one permitted or possible concurrent user for
networked or multi-user terminal based environments.
M. Software Application means the Licensee software product described in
Exhibit D that results from Licensee's integration of all or part of the Licensed
Software with Licensee's own software application(s) and/or component(s). The
Software Application shall include all modifications, improvements, and
Enhancements thereto made by or for Licensee during the term hereof. It is
recognized by the parties that the Software Application may incorporate elements
of the Licensed Software that is necessary to accomplish the requirements of this
Agreement; however, the definition of the Software Application shall not include
any Licensed Software provided to Licensee by Licensor which is not
incorporated into the coding of the Software Application.
N. Source Code means a human readable form of computer program
showing the computer language instructions comprising the program, from which
Object Code can be produced, in which the program logic may be deduced by a
human being, and from which a printed listing can be made by processing it with
O. Object Code means a form of computer program resulting from the
compilation or other processing of Source Code by a computer into machine
language or intermediate code, and thus is a form that would not be convenient
to human understanding of the program logic, but which is appropriate for the
construction and linking of binary executable modules, as well as for the
execution by a computer.
P. Territory means the geographic territory in which the Software Application
is to be distributed, as set forth in Exhibit F.
Q. Any references in this Agreement to the sale, selling, or purchase of the
Licensed Software shall mean the sale or purchase of a license to use such
Licensed Software or copies thereof.
II. Grant of License.
A. Subject to Licensee's compliance with the terms and conditions of this
Agreement and the End-User License, Licensor grants to Licensee a
nonexclusive, nontransferable license to use, reproduce, and distribute (directly
and indirectly through Distributors) as a perpetual license, the Licensed Software
solely as an embedded or integrated component of the Software Application to
End-User(s) only within the Territory.
B. Licensee shall be responsible for the supervision, management, control,
and use of the Licensed Software in accordance with this Agreement and the
End-User License. Licensee may make up to twenty (20) copies of the Licensed
Software and Documentation for use solely for development of the Software
Application only at the Development Site(s) set forth in Exhibit D. Licensee and
End-User(s) shall not (a) modify, reverse engineer, reverse compile, uncompile,
decompile or disassemble the Licensed Software, including but not limited to, the
Source Code, the DLL, EXE, COM and/or other binary code, (b) make derivative
works of the executable portions of the Licensed Software or (c) attempt to
discover any Licensor proprietary information or trade secret from the Licensed
Software. Licensee may, however, link its software to the Licensed Software and
revise the user interface of the Licensed Software. Licensee shall not make any
revisions, modifications, and/or additions to the Documentation in order to create
any user manual or other documentation to support the operation of the Software
Application. Notwithstanding the foregoing, Licensee will not copy, or assist
others in copying, the Licensed Software or Documentation except in object code
format: (i) as necessary to read the Licensed Software from the media into the
memory of a computer solely for the purpose of executing it for a Licensed
Software Seat; or (ii) to create a single backup copy. All copies of the Licensed
Software shall contain the same proprietary notices which appear on and in the
Licensed Software and Licensee shall maintain and not alter or remove any
copyright, trademark, and other proprietary notices which appear on or are
contained in the Licensed Software.
C. Licensee may copy, license, and market the Software Application;
provided that (i) programmability of the Software Application by End-User(s) is
limited solely to that which can be made available through a Licensee
developed/supplied library; (ii) programmability of the Software Application by
End-User(s) is only allowed by and through externally supplied client languages
(iii) the Licensed Software is used solely by Licensee for development purposes
to create Licensee's Software Application; (iv) the Licensee, or any Distributors,
sublicenses, markets and distributes the Software Application only in the
Territory and Market as set forth in this Agreement; and, (v) the Licensee
sublicenses the Software Application under the terms of Licensee's standard
license agreement which contains terms substantially similar to the minimum
terms and conditions described in Exhibit D pursuant to which End-User(s) are
granted a license to use the Licensed Software.
D. No less than thirty (30) days prior to the anticipated date of first customer
shipment of the Software Application, Licensee shall deliver an archive copy, in a
format acceptable to Licensor, of the Software Application to Licensor for its
review to assist Licensor's monitoring of Licensee's compliance with this
Agreement. In the event that the Software Application is not in conformance with
the requirements of this Agreement, Licensor shall notify Licensee of the areas of
non-conformance within fifteen (15) days of receipt of the Licensed Software.
Licensor reserves the right to withhold approval to distribute the Software
Application until such time as the Software Application complies with the
requirements of this Agreement and/or terminate this Agreement. Licensor
further reserves the right to terminate this Agreement at any time the Licensee is
not in compliance with this Section II (License Grant). Notwithstanding the
foregoing, upon receipt of written notification of non-compliance as set forth
above, Licensee shall have thirty (30) days to correct such non-compliance.
Licensee will deliver the updated version of the Software Application to Licensor
for review. The parties acknowledge that Licensor's approval of the Licensed
Software shall not constitute a warranty or representation as to the reliability or
quality of the Software Application, or a waiver with respect to Licensor's rights
pursuant to this Agreement.
A. Except as expressly licensed to Licensee in Section II above, Licensee
acknowledges and agrees that:
1. Title to and all rights of ownership in the Licensed Programs, and
all copies of all or any part of them, are and remain with Licensor;
2. The Licensed Programs contain and are comprised of Licensor's
trade secrets and other proprietary, confidential information; and
3. Licensee will not sell, lease, lend, transfer, assign, hypothecate, or
otherwise distribute the Licensed Programs except as expressly
authorized in this Agreement.
B. Licensor retains all right, title, and interest in and to Licensed Software,
including the Source Code, Documentation, and any other Licensor proprietary
materials in Licensee's possession as a result of this Agreement (collectively the
Materials). Licensee acknowledges and agrees that Licensor holds the copyright
to the Materials and, except as expressly provided herein, Licensee is not
granted any other right or license to patents, copyrights, trade secrets, or
trademarks with respect to the Materials. Moreover, Licensor reserves all rights
not expressly granted in this Agreement. Licensee shall take all reasonable
measures to protect Licensor's proprietary rights in the Materials and shall not
copy, use or distribute the Materials, or any derivative thereof, in any manner or
for any purpose, except as expressly authorized in this Agreement. Licensee
shall notify Licensor promptly in writing upon its discovery of any unauthorized
use of the Materials or infringement of Licensor's patent, copyright, trade secret,
trademark, or other intellectual property rights. Licensee shall not distribute any
Materials to any person or entity unless necessary for Licensee to fulfill its
obligations under this Agreement. Further, Licensee shall not distribute any
Materials to any person or entity if Licensee is aware that such person or entity
may be involved in potential unauthorized use of the Materials or other
infringement of Licensor's proprietary rights.
A. Licensee shall pay to Licensor the fees in the amounts set forth in Exhibit
C of this Agreement for the Software License version set forth in Exhibit D.
Licensee may license subsequent versions of the Licensed Software made
available for general release during the Term, upon payment of the then-current
license fees, if any, and at the then-current royalty rates. In addition, Licensee
shall pay to Licensor a royalty as set forth in Exhibit C, calculated as a
percentage of Net Licensing Proceeds and in accordance with the methods
specified below and in this Agreement. All fees and royalties are non-refundable.
Unless otherwise provided, all invoices are due and payable in full within sixty
(60) days of the date of invoice. Additionally, Licensor may terminate this
Agreement for failure to pay any undisputed amounts.
B. Royalties will be paid on all licensing or distribution of the Software
Application subject to the conditions set forth herein. Royalties shall not be paid
on copies of the Software Application provided to existing End-User(s) without a
fee or charge, in order to correct a defect that prevents the Software Application
from executing under normal operating conditions in accordance with the
technical and functional specification as described in the original Software
Application documentation. There will also be no royalties paid on, not for resale
copies provided to Distributors, or copies used exclusively by Licensee for non-
revenue purposes such as backup, testing, development, demonstration, or
training purposes, up to a maximum of 100 copies. Notwithstanding the
foregoing, Royalties shall accrue the first time the Licensed Software is delivered
to an End-User within the Software Application.
C. Licensee shall submit reports to Licensor, commencing with the first full
calendar month following the Effective Date (Royalty Reports). The Royalty
Reports shall include a detailed statement of the type and quantities of Software
Applications distributed by Licensee during the previous calendar quarter broken
out by geographical location. Unless otherwise provided in writing, Royalty
Reports shall be returned to Licensor within thirty (30) days after the end of each
calendar quarter. Unless otherwise provided in writing, Royalty Reports shall be
due every calendar quarter even if no royalties have accrued or are payable for
the calendar quarter. A purchase order, if royalty payments are due, shall
accompany the Royalty Report.
D. In any action brought by Licensor to collect monies due under this
Agreement in which Licensor is the prevailing party, Licensor shall be entitled to
recover all costs and attorneys' fees incurred in maintaining such action.
E. Licensee shall maintain records for Licensor's review relating to the
Software Applications that will allow Licensor to ascertain the types and
quantities of all copies made of the Software Applications, whether retained by
Licensee, or distributed to Distributors or End-User(s). In addition to Royalty
Reports, Licensee shall provide annually to Licensor, within ninety (90) days after
the end of Licensor's fiscal year, a forecast of Software Applications projected to
be licensed during the upcoming fiscal year and certification of the quantities of
the Software Applications shipped for the fiscal year then ended. Licensor shall
be entitled, at any time during the term of this Agreement, to audit the books and
records of Licensee for purposes of compliance with the terms of this Agreement
and verifying such Royalty Reports. Any such audit shall be conducted by
Licensor or its representatives during normal business hours with at least seven
(7) days written notice to Licensee, and Licensee shall cooperate fully with
Licensor or its representatives in any such audit. In the event such inspection or
audit discloses any underpayment, Licensee shall promptly pay Licensor such
F. Except for royalty withholding and income taxes based solely upon the net
income of Licensor, all taxes, assessments, levies, duties, and charges of any
kind, imposed by federal, state, local or other governmental agencies with
respect to this Agreement, whether measured by gross receipts applicable to this
transaction or otherwise, shall be paid by, and shall be the sole responsibility of
Licensee, including but not limited to, any sales, use, or value-added tax, and
any import or export taxes or duties. Notwithstanding the foregoing, Licensee
shall deduct from the royalties and pay on behalf of Licensor to the relevant
authorities, such withholding taxes as may be due by Licensor as required by
applicable laws. Licensee shall provide Licensor satisfactory proof of withholding
tax payments within 15 working days of the end of each fiscal year during which
any such payments accrue or are made.
G. Credit Establishment. Licensee must continuously maintain sufficient
credit standing to meet Licensor's requirements. Licensee shall provide Licensor
with all reasonable financial information, including but not limited to financial
statements, letter(s) of credit, credit reports, federal tax return(s) and any other
documents reasonably requested by Licensor to allow Licensor to establish credit
for Licensee. ISV may not purchase direct from Licensor pursuant to this
Agreement until a credit account has been established.
H. Licensor Account Balance. In the event Licensee has a balance on an
Licensor account, Licensee must be current on payments, and remain current on
payments against any such balance.
A. Licensee shall be solely responsible for providing, at its sole expense, any
and all support relating to the Software Application, including Distributor and End-
User support. This Agreement does not include any support from Licensor to
Licensee, or any third party.
B. Licensee shall promptly notify Licensor of bugs or errors in the Licensed
Software or Documentation. Licensor shall not be obligated to correct any such
errors discovered by Licensee or reported to Licensee by End-User(s).
VI. Marketing and Trademarks.
A. Publicity. Neither party may make any public statement, press release, or
other announcement relating to the terms of or existence of this Agreement
without the prior written approval of the other party, except as required by law.
Notwithstanding the foregoing, Licensee hereby grants to Licensor the right, but
not the obligation, to issue an initial press release, the timing and wording of
which will be subject to Licensee's approval, regarding the relationship between
Licensor and Licensee. Moreover, Licensee agrees that Licensor may, but has
no obligation to; make descriptive references to Licensee's name and the
Software Application to state in its print media and/or on its web site that
Licensee is a licensee of the Licensed Software.
B. Marketing Materials. Licensee may distribute Marketing Materials in
accordance with the terms and conditions described in the attached Exhibit E
Marketing Materials Program.
C. Trademarks and Logos. Licensor hereby grants Licensee the limited
right to use the Licensor Trademarks and logos set forth below in any literature,
promotion or advertising relating to the Software Application. Licensee's use of
the Licensor Trademarks in any literature, promotion, or advertising shall be in
accordance with Licensor's guidelines for such usage as set forth and updated
from time to time in the Legal Notices and Trademarks page of Licensor.com.
Licensee shall not contest, oppose, or challenge Licensor's ownership of the
Licensor Trademarks nor misappropriate the same for its own use or any use
other than that set forth in this Section. All representations of the Licensor
Trademarks that Licensee intends to use shall be exact copies of those provided
by Licensor and Licensor may revoke License's right to use such logo if it does
not comply with such guidelines. If any of the Licensor Trademarks are to be
used in conjunction with another trademark on or in relation to the Software
Application, then the Licensor Trademarks shall be presented equally legibly and
equally prominently, but nevertheless separated from the other so that each
appears to be a trademark in its own right, distinct from the other mark. All use of
the Licensor Trademarks shall inure to the sole benefit of Licensor. Effective
upon the termination or expiration of this Agreement, Licensee shall cease all
usage of the Licensor Trademarks.
1. Licensee shall employ the logo http.www.xxxxx.com in the splash
screens of the Software Applications, and the documentation, packaging,
advertising, and or promotional materials for the Software Applications
subject to the requirements of this Section VI.
2. Licensee shall employ the Licensor logo in the installation and start
up splash screens of the Software Applications, and the documentation,
packaging, advertising, and or promotional materials for the Software
Applications subject to the requirements of this Section VI.
D. Licensor Developer Support. Licensee shall register with Licensor to
participate in the Licensor Developer Network (“VDN”) Program at the
professional service level. Licensee shall renew the VDN program on a yearly
basis during the term of the Agreement at the then current fees
E. Proprietary Notice. Licensee will place any required third party copyright
notices in the copyright area of (i) the on-line documentation regarding the
Software Application, (iii) the ‘About Box’ or similar notice page of the Software
Application and (iv) any other document related to Software Application that
contains copyright information.
A. Confidential Information. As used in this Agreement, confidential
information shall mean any information:
1. Designated as confidential orally or in writing by either party hereto,
2. Related to the Licensed Software or Documentation,
3. Related to a Parties business or operations, or
4. Other information received by a Party by virtue of that Party's
relationship with the other Party including, but not limited to, customer
information, product plans, product designs, product costs, product prices,