Form F.3
Resale License and Development Agreement
(Allows Resale of Licensor Software When Combined with Licensee Software)
This Resale License and Development Agreement (this "Agreement") is made by and between ______("Licensor"), with a place of business at ______and ______("Reseller"), with its principal place of business at ______. The effective date of this Agreement shall be the date set forth on the signature page hereto ("Effective Date").
WHEREAS, Licensor is the owner of certain software as more particularly described herein; and,
WHEREAS, Reseller desires to obtain a license to such Licensor software in order to develop and market products incorporating the Licensor software and technology and Licensor is willing to grant Reseller a license upon the terms and conditions set forth below; and,
WHEREAS, Reseller desires to obtain the services of Licensor to develop additional software on the terms and conditions set forth below.
NOW, THEREFORE, in consideration of the mutual covenants herein contained, the adequacy and sufficiency of which are hereby acknowledged, Reseller and Licensor agree as follows:
1. Definitions. Terms not otherwise defined elsewhere in this Agreement shall have the meanings set forth below.
1.1. "Confidential Information" means that information and know-how of either party ("Disclosing Party") which is disclosed to the other party ("Receiving Party") pursuant to this Agreement, in written form and marked "Confidential," "Proprietary" or similar designation, or if disclosed orally, the Disclosing Party shall indicate that such information is confidential at the time of disclosure and send a written summary of such information to the Receiving Party within thirty (30) days of disclosure and mark such summary "Confidential," "Proprietary" or similar designation. Notwithstanding the foregoing, the information to be included in the definition of the term “Confidential Information” shall be limited as described in Section10.2. For purposes hereof, the Licensor Software and the Reseller Products shall be deemed to be Confidential Information.
1.2 “Custom Products” means any software applications, technical services, and/or related documentation requested from Reseller by a Target Customer that do not contain nor directly relate to the Reseller Products.
1.3. "Documentation" means the documentation for the Licensor Software which is provided to Reseller to assist Reseller in creating the Target Customer documentation for the Reseller Products.
1.4. "Reseller Products" mean the software applications and related documentation specifically set forth on Exhibit A hereto which will contain or utilize the Licensor Software and Documentation and which add substantial value. Reseller Products may be bundled with hardware products or may be licensed on a stand-alone basis.
1.5. "Subscriber" means a third party authorized directly or indirectly by Reseller or a Target Customer to use the Reseller Products on the Subscriber's device.
1.6. “Target Customers” means ______and the platforms with respect to which the Reseller Products incorporating the Licensor Software may be utilized by each such Target Customer as set forth on attached ExhibitB (the “Target Platforms”). In no event shall ______(“Company”) be included in the Target Customers. Any changes in the definition of Target Customers shall only be permitted with Licensor’s prior written approval.
1.7. “Territory” means the United States and Canada.
1.8. "Updates" means maintenance releases to the Licensor Software and/or Documentation.
1.9. "Licensor Software" means the object code of Licensor's Software as specifically set forth in ExhibitC hereto and any Updates thereof which are used to create the Reseller Products.
2. Licenses.
2.1. Reseller Distribution Licenses. Licensor hereby grants to Reseller an exclusive and non-transferable license during the term of this Agreement, and thereafter as provided in Section13, to use, reproduce, support, demonstrate, market and distribute, directly or indirectly (including over the internet or via other electronic means) to Target Customers within the Territory (i) the Licensor Software in object code form, solely as part of the Reseller Products, with full rights to sublicense and have sublicensed such Licensor Software and the rights granted to Reseller hereunder and (ii) the Documentation, when integrated into or delivered with Reseller's documentation for the Reseller Products, or as otherwise provided under this Agreement, with full rights to sublicense and have sublicensed such Documentation and the rights granted to Reseller hereunder. The Reseller Products can be bundled with hardware products or be licensed on a stand-alone basis. Notwithstanding the foregoing, Reseller’s rights to sublicense and have sublicensed the Licensor Software and the rights granted to it are limited to such rights associated only with its distribution of Reseller Products to Target Customers and their Subscribers.
2.2. Restrictions on Use and Transfer. Reseller's use of the Licensor Software and Documentation shall be limited to the purposes specifically set forth in Section 2 herein. Without limiting the generality of the foregoing, Reseller receives no rights to and agrees not to decompile, disassemble or otherwise reverse engineer the Licensor Software. Notwithstanding the foregoing, Licensor acknowledges that Reseller has, or has access to, the resources that would be required to independently create to perform substantially the same functions as the Licensor Software and has a business interest in doing so, and use of the phrase “reverse engineer” shall not be deemed to include, and Reseller shall not be prevented from, utilizing any analysis Reseller now has or hereafter obtains or creates of the functions that are to be performed by the Licensor Software as part of the process of such independent development provided, however, that Reseller shall not use or infringe upon any Confidential Information of Licensor in doing so.
2.3. Other Limitations.
a. Reseller shall contractually prohibit its Target Customers from distributing Reseller Products other than to such Target Customers’ Subscribers.
b. Reseller shall not distribute Reseller Products to Company.
Subject to the provisions set forth in this Section 2.3 above, Reseller products shall be marketed, licensed and distributed under Reseller’s brand names and trademarks.
3. Delivery and Acceptance.
3.1. General. A single copy of the Licensor Software and Documentation will be delivered to Reseller via electronic transmission or via hard media, as determined by Reseller. All such shipments shall be F.O.B. Origin. The Licensor Software, including any Updates, is subject to Reseller's inspection and test at Reseller's facility before final acceptance. If any Licensor Software delivered hereunder fails to conform to the specifications for such Licensor Software set forth in ExhibitD hereto and to the Documentation or other relevant written materials provided to Reseller (collectively, the "Specifications"), Reseller shall notify Licensor of such failure and Licensor shall have up to twenty (20) days to deliver to Reseller conforming Licensor Software. If Licensor fails to deliver conforming Licensor Software within such twenty-day period, Reseller shall have the right, without liability, to terminate this Agreement.
3.2. Conformance to Specifications. All Licensor Software delivered hereunder shall fully comply with (i) the Specifications and (ii) all applicable United States and foreign laws, rules and regulations.
3.3. Responsibilities of the Parties. Each of the parties shall be responsible for the fulfillment of all duties and responsibilities as further detailed in ExhibitE.
4. Payments.
4.1. Fees. All payments under this Agreement shall be made to a bank and account for Licensor in the United States and in accordance with this Section 4 and with the terms set forth in ExhibitF hereto. The payments described herein are expressed in U.S. dollars and do not include any taxes, duties or similar fees which may be collectable or withheld pursuant to law.
4.2. Payment Terms. Except as otherwise specified herein, all payments to Licensor will be made in U.S. dollars. Payment shall not constitute acceptance of the Licensor Software or Documentation by Reseller. For every three (3) calendar months, Reseller shall remit payment(s) to Licensor as specified in ExhibitF.
4.3. Taxes. Reseller shall pay all import duties, customs fees, sales (unless an exemption certificate is furnished by Reseller to Licensor), use, withholding and value added taxes (except for taxes imposed on Licensor's net income) with respect to any products sold or licensed to, and any services rendered to, Reseller by Licensor in respect of this Agreement or furnish Licensor with evidence acceptable to the taxing authority to sustain an exemption therefrom. Reseller shall have the right to offset any amounts due to Licensor under this Agreement by the amount of any payments made by Reseller for import duties and customs fees under this Section 4.3 until such time that Reseller has recovered all such payments.
4.4. Reports and Audit. Reseller shall keep adequate records to verify all reports and payments to be made to Licensor pursuant to this Agreement for a period of two (2) years following the date of such reports and payments. Licensor and its representatives shall have the right to reasonable access to all books, accounting records and other materials of Reseller that Licensor deems relevant for purposes of determining the fees payable to Licensor pursuant to this Agreement. Reseller shall make reasonable efforts to require its Target Customers to provide Licensor and its representatives with reasonable access to all books, accounting records and other materials that Licensor deems relevant for purposes of determining the fees payable to Licensor pursuant to this Agreement.
5. Technical Support.
5.1. Technical support services for the Licensor Software shall be provided by the parties as set forth in ExhibitG hereto.
6. Marketing and Publicity.
6.1. Disclosure. Licensor shall not, without Reseller's prior written approval, and except as required by law in the good faith judgment of Licensor, make any public announcement or disclosure as to the existence or matters set forth in this Agreement.
6.2. Press Release and Hypertext Links. Notwithstanding the foregoing, (i) Reseller shall permit Licensor to issue a press release upon the execution of this Agreement in a form mutually agreeable to both parties; and (ii) Reseller and Licensor shall each host a hypertext link on an appropriate page of their websites linking a user to the appropriate page of the other party's website, allowing such user to access relevant information about the Reseller Products and additional products and services of the other party. The parties hereto agree to cooperate in the development and management of such hypertext links.
6.3. Licensor Marketing Materials. Subject to Reseller’s prior approval, which may be withheld at Reseller’s discretion, Reseller agrees to place Licensor's printed marketing materials in the packaging of the Reseller Products, such materials to be produced by Licensor and provided to Reseller at Licensor's expense.
7. Proprietary Rights.
7.1. Ownership. Reseller acknowledges and agrees with Licensor that, as between Licensor and Reseller, Licensor is the sole owner of the Licensor Software and Documentation and that all title, including but not limited to copyrights, trademarks, patent rights and trade secrets, in and to the Licensor Software, are owned by Licensor, and that Reseller has no rights in and to such Licensor Software and Documentation other than as expressly provided for herein. All right, title and interest in and to the Reseller Products and related documentation (excluding the Licensor Software and Documentation) shall at all times remain with Reseller, and Licensor has no rights thereto.
7.2. Proprietary Rights Notices. Reseller agrees that it will not remove, alter or otherwise obscure any proprietary rights notices appearing in the Licensor Software or Documentation.
7.3. U.S. Government Restricted Rights Legend. Licensor warrants that all Licensor technical data, Software and Documentation is commercial in nature and developed solely at private expense. Licensor Software is delivered as Commercial Computer Software as defined in DFARS 252.227-7014 (June 1995) or as a commercial item as defined in FAR 2.101(a) and as such is provided with only such rights as are provided in Licensor's standard commercial license for such software. Technical data is provided with limited rights in relation to the United States Government or any contractor therefor only as provided in DFARS 252.227-7015 (Nov. 1995) or FAR 52.227-14 (June 1987), whichever is applicable. Reseller will: (a) identify and license the Reseller Products in all proposals and agreements with the United States Government or any contractor therefor; and (b) legend or mark the Reseller Products provided pursuant to any agreement with the United States Government or any contractor therefore in a form sufficient to obtain for Licensor and its suppliers the protection intended by this Section 7.3 (U.S. Government Restricted Rights Legend).
7.4. Subscriber Licensing. Reseller agrees to include in each agreement it enters into with a Target Customer a provision requiring the Target Customer to include in the agreement to be executed by its Subscribers for use of an Reseller Product that contains Licensor Software provisions that provide substantially the same protection to both Reseller and Licensor as Reseller agrees to provide Licensor under this Agreement.
8. Warranty.
8.1. Licensor Warranty. Licensor warrants that the Licensor Software will substantially conform with the Specifications. Licensor warrants the magnetic media containing the Licensor Software against failure during the warranty period. This warranty will remain in effect for one hundred eighty (180) days from the delivery of the Licensor Software to Reseller. For any Update provided to Reseller hereunder, the warranty period shall apply to that Update as of the date of acceptance of the update by Reseller. If, during the warranty period, the media on which the Licensor Software is provided is found to be defective, Licensor shall provide Reseller with conforming replacement media. If, during the term of this warranty, Reseller provides written notice to Licensor of any other failure of the Licensor Software to satisfy this warranty, Licensor and Reseller shall promptly coordinate a meeting of their respective personnel with appropriate authority to work to resolve the failure. Licensor further warrants that it has all right, power and authority to enter into this Agreement and to grant the licenses hereunder. THE FOREGOING WARRANTIES ARE IN LIEU OF ALL OTHER WARRANTIES OR CONDITIONS, AND EXCEPT FOR THE EXPRESS WARRANTIES OR CONDITIONS STATED IN THIS AGREEMENT, LICENSOR DISCLAIMS ALL WARRANTIES AND CONDITIONS, EITHER EXPRESS OR IMPLIED, IN CONNECTION WITH THE LICENSOR SOFTWARE AND THE PROVISION OF OR FAILURE TO PROVIDE SUPPORT SERVICES, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES AND CONDITIONS OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND ANY WARRANTY THAT LICENSOR SOFTWARE WILL OPERATE PROPERLY ON ANY DEVICE(S). FURTHERMORE, LICENSOR REPRESENTS TO RESELLER THAT AS OF THE EFFECTIVE DATE, LICENSOR IS NOT AWARE OF ANY CLAIM ALLEGING INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS BY THE LICENSOR SOFTWARE OR DOCUMENTATION. THE WARRANTY IN THIS AGREEMENT SHALL BECOME VOID AND NULL WITH RESPECT TO ANY SOFTWARE THAT HAS BEEN MODIFIED IN ANY WAY BY ANYONE OTHER THAN LICENSOR, BUT ONLY WITH RESPECT TO AND TO THE EXTENT OF SUCH MODIFICATION.