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Exhibit 10.16
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SIGNATURE PLUS SOFTWARE LICENSE AGREEMENT ("AGREEMENT")
This Agreement is made effective this 18th day of December, 1998 by and between
FirePond, Inc., a Minnesota corporation with offices at 0000 Xxxxxxx Xxxxx,
Xxxxxxx, Xxxxxxxxx, 00000, ("FirePond"), and BCBSM, Inc., dba Blue Cross and
Blue Shield of Minnesota, a corporation having a place of business at 0000 Xxxx
Xxxxx Xxxx, Xx. Xxxx, Xxxxxxxxx 00000, ("Licensee").
Whereas FirePond desires to grant Licensee and Licensee desires to accept from
FirePond, a license to use Signature Plus Software and the Signature Plus
ToolKit upon the terms and conditions hereinafter set forth. NOW, THEREFORE,
FirePond and Licensee agree as follows:
1. DEFINITIONS
1.1. "Attachment(s)" means any writing that is specifically identified as
attached to this Agreement and forming part of this Agreement and is signed
by authorized representatives of both parties.
1.2. "Documentation" means FirePond's standard documentation, which is
delivered to Licensee under this Agreement, including FirePond's standard
manuals, functional specifications, minimum hardware configuration required
and third party software required.
1.3. "Proprietary Information" means (i) with respect to FirePond, the
Software, Tools and Documentation and any complete or partial copies thereof,
the concepts, techniques, ideas and know-how in such programs, any
third-party software licensed with or as part of the Software or Tools,
benchmark results, and any other information identified or reasonably
identifiable as confidential and proprietary information of FirePond or their
licensors ("FirePond Proprietary Information"); and (ii) with respect to
Licensee, information identified or reasonably identifiable as the
confidential and proprietary information of Licensee ("Licensee Proprietary
Information"), provided that, any part of the FirePond or Licensee
Proprietary Information which: (a) is or becomes publicly available through
no act or failure of the other party; or (b) was or is rightfully acquired by
the other party from a source other than the disclosing party prior to
receipt from the disclosing party; or (c) becomes independently available to
the other party as a matter of right, shall be excluded.
1.4. "Software" means all Signature Plus software including Signature Plus
Sales (for laptops and/or desktops), Signature Plus Web (available via the
Internet), and EBridge identified in the Documentation in machine-readable
form licensed to Licensee hereunder, including all corrections,
modifications, enhancements and updates to the Software.
1.5. "Tools" means the Signature Plus ToolKit software identified in the
Documentation in machine-readable form licensed to Licensee hereunder,
including all corrections, modifications, enhancements and updates to the
Software.
1.6. "Use" means to load, execute, employ, utilize, store, or display the
Software for the limited purpose of helping Licensee salespeople and
customers learn about, sell and/or buy products or services manufactured,
distributed or sold by Licensee and to load, execute, employ, utilize, store,
or display Tools for the limited purpose of supporting the Software and to
maintain, distribute and synchronize Licensee's data to be used in the
Software.
1.7. "Licensee" means those entities set forth in an Attachment "Licensee."
2. GRANT OF LICENSE
2.1. Subject to the terms and conditions of this Agreement FirePond grants
and Licensee accepts a non-exclusive, non-transferable license with rights to
Use the Software, Documentation and other FirePond Proprietary Information
provided by FirePond to Licensee and to sublicense the Software to the number
of individuals identified in an Attachment who are authorized to Use the
Signature Plus Sales version of the Software ("Named Users") and to allow
access to the Software to the number of individuals identified in an
Attachment as allowed access to the Signature Plus Web version of the
Software ("Concurrent Users"). In order to sublicense the Software to Named
Users, Licensee shall have in effect with such Named Users agreements
sufficient to obligate such Named Users to terms substantially similar to the
terms of Exhibit A. Licensee may transfer the Software from one Named User to
another Named User provided the Software is promptly deleted by the Named
User no longer using the Software and provided Licensee shall notify FirePond
quarterly of such transfers.
2.2. Subject to the terms and conditions of this Agreement FirePond grants
and Licensee accepts a non-exclusive, non-transferable license with rights to
Use the Tools at the sites identified in the Signature Plus License Fee
Attachment ("Designated Site(s)"). Licensee may use the Tools on as many
single computer stations as needed at the Designated Site. Licensee may
transfer the Tools from one Designated Site to another Designated Site upon
prior written notice to FirePond. The Tools must be promptly deleted in their
entirety from the Designated Site no longer in use. Licensee may use a
third-party certified by FirePond to Use the Tools on behalf of Licensee.
2.3. Licensee shall maintain accurate records of all Named Users. Upon
FirePond's request, Licensee shall provide FirePond with a copy of such
records and executed agreements. In addition, FirePond shall have the right
to inspect such records for compliance with the terms of this Agreement no
more frequently than annually, during Licensee's normal business hours and
upon reasonable advance notice. Licensee shall cooperate with FirePond to
ensure that each Named User upholds the requirements imposed upon them
through this Agreement or the agreement set forth in Exhibit A and will take
reasonable steps to ensure that such Named Users comply with such terms and
conditions. Licensee shall not be required to track Concurrent Users.
Licensee agrees to notify FirePond immediately after gaining knowledge of the
possession, use, disclosure or reproduction of Software or Tools by any
person or other party not authorized to have the benefit of such possession,
use, disclosure, or reproduction and to cooperate with FirePond and its
representatives in any investigation of and litigation against such
unauthorized use.
2.4. Licensee may make one copy of the Software and Tools for archival
purposes. Licensee may reproduce or copy any portion of the Documentation
into machine-readable or printed form for its internal use and for
distribution to Named Users. Licensee shall not remove any proprietary,
copyright, trademark, or service xxxx legend from the Software, Tools,
Documentation or FirePond Proprietary Information and shall include such
legends on any complete or partial copies of the Software, Tools,
Documentation or FirePond Proprietary Information.
3. FEES AND PAYMENT TERMS
3.1. In consideration of the licenses granted hereunder, Licensee shall pay
to FirePond license fees for the Software and Tools as set forth in
Attachments. The amount of license fees shall be calculated based on the
total number of Named Users for the Software, the total number of Concurrent
Users accessing the Software, and the number of Designated Sites for Tools.
As set forth in an Attachment, fees for Maintenance Services shall be paid
annually in advance in an amount calculated as a percentage of the License
Fees. FirePond and Licensee shall agree to any other services under a
separate Services Agreement.
3.2. Travel expenses and incidental expenses of FirePond shall be billed in
accordance with the current Blue Cross and Blue Shield of Minnesota Per Diem
Expense Allowance for Consultants Policy, a current copy of which is attached
hereto as Attachment A. FirePond shall xxxx such fees and expenses monthly.
3.3. Invoices are payable in full upon receipt of invoice. If the payment of
such invoice(s) is subject to a good faith dispute between the parties, the
project managers at FirePond and Licensee shall use their best efforts to
expeditiously resolve the dispute. If the project managers are unable to
resolve the dispute within fifteen (15) days, it shall be referred to a
FirePond executive or his/her designee and a Licensee executive or his/her
designee for mutual resolution. If the dispute is not resolved at the
executive level within fifteen
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(15) days, FirePond shall have the right to bring suit on an open account.
All payments are to be made in U.S. dollars. Licensee shall pay a one and one
half percent penalty per month retroactive to the invoice date for payment(s)
received after thirty (30) days.
4. PROPRIETARY RIGHTS
4.1. Licensee acknowledges ownership of and title in and to all intellectual
property rights, including patent, trademark, service xxxx, copyright, and
trade secret rights, in the FirePond Proprietary Information are and shall
remain in FirePond and its respective licensors.
4.2. Except as permitted in this Agreement, Licensee shall not copy,
translate, disassemble, or decompile, nor create or attempt to create, by
reverse engineering or otherwise the source code from the object code of the
Software or Tools licensed hereunder or use it to create a derivative work,
unless authorized in writing by FirePond.
4.3. In order to protect the rights of FirePond and Licensee in their
respective Proprietary Information, FirePond and Licensee agree as follows:
4.3.1. Neither party shall, without the other party's prior written consent,
disclose, provide or make available any of the Proprietary Information of the
other party in any form to any person, except to bona fide employees,
officers, directors, or consultants or such party whose access is necessary
to enable such party to exercise its rights hereunder. Each party agrees that
prior to disclosing any Proprietary Information of the other party to any
consultant, it will obtain from that consultant a written acknowledgement
that such consultant will be bound by the same terms as specified in this
Section 4.
4.3.2. Licensee and FirePond acknowledge that any disclosure to third parties
of Proprietary Information may cause immediate and irreparable harm to the
owner of the disclosed Proprietary Information; therefore, each party agrees
to take all reasonable steps and the same protective precautions to protect
the Proprietary Information from disclosure to third parties as with its own
proprietary and confidential information.
4.4. Upon any termination hereunder, Licensee shall immediately cease Use of
the Software, Tools, Documentation and other FirePond Proprietary Information
and shall irretrievably delete and/or remove such items from all machines and
media and return such Software, Tools, Documentation and Proprietary
Information to FirePond within 30 days. Within 30 days after any termination,
FirePond shall return the Licensee Proprietary Information to Licensee.
5. MAINTENANCE SERVICES
Following expiration of the warranty period as defined in Section 7, Licensee
shall purchase and FirePond shall provide Licensee the maintenance services
identified in an Attachment.
6. INDEMNIFICATION
6.1. Subject to Section 6.2, if one party promptly notifies the other party
in writing of a third-party claim against it, the other party shall indemnify
the notifying party against all claims, liabilities, and costs, including
reasonable attorneys' fees reasonably incurred in the defense of any claim
brought against the notifying party by third parties alleging that the
notifying party's Use of the Software, Tools and Documentation or data or
other information supplied by the other party infringes or misappropriates:
(i) any United States patent; or (ii) a United States copyright; or (iii)
trade secret rights, provided that, the notifying party promptly notifies the
other party in writing of any such claim and the other party is permitted to
control fully the defense and any settlement of such claim. The notifying
party shall cooperate fully in the defense and may appear, at its own
expense, through counsel reasonably acceptable to the other party. The other
party may, in its sole discretion, settle any such claim on a basis requiring
FirePond to substitute for the Software, Tools and Documentation alternative
substantially equivalent non-infringing programs and supporting
documentation. The other party alone shall be responsible for taking such
actions which it determines are reasonably necessary or desirable in its sole
discretion in connection with any infringement or alleged infringement by a
third party of any portion of the Software, Tools and Documentation, provided
that should the software, Tools, or Documentation as delivered by licensee
become the subject of an infringement claim: Firepond at its sold expense
either (i) procure for licensee the right to continue to use the Software,
Tools, and Documentation as contemplated hereunder, or (ii) modify the
Software, Tools, or Documentation to eliminate any infringement claim,
provided that the Software and Tools' performance must remain the same as
provided for in the specifications, or (iii) replace the Software and Tools
with an equally suitable, compatible, and functionally equivalent
non-infringing product at no additional charge to licensee. If none of these
options are reasonably available to Firepond after executing its best efforts
to implement such options, then Firepond shall accept return of the Software,
Tools, and Documentation at Firepond's sole cost and expense and FirePond
shall pay to Licensee up to $3,500,000 as liquidated damages, as amortized
over five year useful life measured from the date of delivery..
6.2. FirePond makes no representation with respect to the possibility of
infringement if the claim of infringement is caused by: (1) Licensee's, Named
User's or Concurrent User's misuse or modification of Software, Tools and/or
Documentation; (2) Licensee's, Named User's or Concurrent User's failure to
use corrections or enhancements made available by FirePond; (3) Licensee's,
Named User's or Concurrent User's use of Software, Tools and/or Documentation
in combination with any product or information not owned or developed by
FirePond; or (4) Licensee's distribution, marketing or use for the benefit of
third parties other than Named Users or Concurrent Users of Software, Tools
and/or Documentation or distribution, marketing or use for the benefit of
third parties.
6.3. THE PROVISIONS OF THIS SECTION 6 STATE THE SOLE, EXCLUSIVE, AND ENTIRE
LIABILITY OF FIREPOND AND ITS LICENSORS TO LICENSEE AND LICENSEE'S SOLE
REMEDY WITH RESPECT TO THE INFRINGEMENT OF THIRD-PARTY INTELLECTUAL PROPERTY
RIGHTS.
7. WARRANTY
7.1. FirePond warrants that the Software and Tools will as delivered
materially conform to the functional specifications contained in the
Documentation and Exhibit B-2 ("Small Group Track") for 90 days following
execution of this Agreement. Services to be provided by FirePond during the
warranty period are those maintenance services identified in Section 5.
FirePond also warrants that the Software and Tools as delivered will be
materially free of all viruses, bombs and other self enacting devices that
could impair the functionality of the Software or Tools.
7.2. Should any component of the Software or Tools fail to conform materially
to the functional specifications therefore during the warranty period,
FirePond's sole obligation shall be, at FirePond's option, to correct the
defect by bringing the performance of the Software or Tools into material
compliance with the functional specifications or to replace the defective
component.
FirePond shall use reasonable commercial efforts to correct the defect by
bringing the performance of the Software into material compliance with the
functional specifications or to replace the defective component within thirty
(30) days or such longer period as is reasonable in the circumstances where
FirePond proceeds with all due diligence to cure such defect. In the event
FirePond is unable to correct or replace such defect within the stated time
period, Licensee shall refund the then present value of such Software to
Licensee, as amortized over a five (5) year useful life measured from the
date of delivery.
7.3. FirePond does not warrant that the Software or Tools will operate
uninterrupted nor that they will be free from minor defects or errors which
do not materially affect such performance nor that the applications contained
in the Software or Tools are designed to meet all Licensee's or Named Users'
or Concurrent Users' business requirements. FirePond makes no representation
or warranty as to the third-party software identified in the Documentation as
required to operate the Software or Tools.
7.4. FirePond represents and warrants to Licensee that: (i) the Software and
Tools shall, as delivered: (a) operate correctly and consistently with dates
and times before, during, and after the year 2000, and date and time ranges
before, spanning, and after 0:00 hours on January 1, 2000, and in a
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manner identical to that in which the Software and Tools operate with dates,
times and date and time ranges prior to the year 2000; (b) utilize data
structures (databases, data files, etc.) which accommodate and provide
4-digit date century recognition; (c) operate in a manner which treats the
year 2000 as the year immediately following the year 1999 to 2000 without
material functional or data abnormality; and (d) manage and manipulate data
involving the transition of dates from 1999 to 2000 without material
functional or data abnormality; (ii) the Software and Tools as delivered will
lose no material functionality with respect to the introduction of record
containing dates falling on or after January 1, 2000 provided that all
products (for example, hardware and software) used with the Software and
Tools properly exchange accurate date data with the Software and Tools. The
representations and warranties provided herein shall not be limited to, and
shall survive for so long as maintenance services are purchased. FirePond
shall be responsible for and shall indemnify Licensee from and against all
losses and damages of any kind or nature incurred by Licensee up to the
amount of license fees paid hereunder as a result of any breach of the
foregoing representations and warranties.
7.5. FIREPOND DISCLAIMS ALL OTHER WARRANTIES EXPRESS OR IMPLIED, INCLUDING
WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE EXCEPT TO THE EXTENT THAT ANY WARRANTIES IMPLIED BY LAW
CANNOT BE VALIDLY WAIVED.
8. LIMITATION OF LIABILITY
8.1. Subject to the limited warranty set forth in Section 7, Licensee's sole
and exclusive remedies for any damages or loss in any way connected with the
Software or Tools or services furnished by FirePond, whether due to
FirePond's negligence or breach of any other duty, shall be, at FirePond's
option: (i) replacement of the Software or Tools or performance of services;
or (ii) return or credit of an appropriate portion of any payment made or to
be made by Licensee with respect to the applicable portion of the Software or
Tools or services. The foregoing limitation of liability does not apply to
infringement of the property rights referred to in Section 6, or to personal
injury or death caused solely by the gross negligence or willful misconduct
of FirePond. With respect to damage to tangible property, FirePond will not
be responsible in any amount in excess of the amount by which such damage is
paid by FirePond's liability insurance.
8.2. ANYTHING TO THE CONTRARY HEREIN NOTWITHSTANDING, UNDER NO CIR-CUMSTANCES
SHALL FIREPOND AND ITS LICENSORS BE LIABLE TO LICENSEE OR ANY OTHER PERSON OR
ENTITY FOR SPECIAL, INCIDENTAL, CON-SEQUENTIAL, OR INDIRECT DAMAGES, LOSS OF
GOOD WILL OR BUSINESS PROFITS, WORK STOPPAGE, DATA LOSS, COMPUTER FAILURE OR
MALFUNCTION, ANY AND ALL OTHER COMMERCIAL DAMAGES OR LOSS, OR EXEMPLARY OR
PUNITIVE DAMAGES UNLESS SUCH DAMAGES OR LOSSES ARE DUE TO THE WILLFUL
MISCONDUCT OF FIREPOND.
9. EFFECTIVE DATE, TERM AND TERMINATION
9.1. This Agreement shall become effective upon execution by both parties and
shall continue in effect unless the Agreement is terminated under the terms
of Section 9.2 below.
9.2. This Agreement and the license granted hereunder shall terminate upon
the earliest to occur of the following: (i) thirty days after Licensee gives
FirePond written notice of Licensee's desire to terminate this Agreement, for
any reason, but only after payment of all License and Maintenance Fees then
due and owing; (ii) thirty days after FirePond gives Licensee notice of
Licensee's material breach of any provision of the Agreement (other than
Licensee's breach of its obligations under Section 4 (Proprietary Rights ) or
Section 11 (Assignment), which breach shall result in immediate termination),
including more than thirty days delinquency in Licensee's payment of any
money due hereunder, unless Licensee has cured such breach during such thirty
day period; (iii) immediately if Licensee or FirePond files a petition for
bankruptcy or insolvency, has an involuntary petition filed against it,
commences an action providing for relief under bankruptcy laws, files for the
appointment of a receiver, or is adjudicated a bankrupt concern.
9.3. In the event of any termination hereunder, Licensee shall not be
entitled to any refund of any payments made by Licensee except as otherwise
provided in this Agreement.
9.4. The following sections of this Agreement survive expiration or
termination of this Agreement: Section 4 (Proprietary Rights), Section 6
(Indemnification), Section 7.4 (Warranty Disclaimer), Section 8 (Limitation
of Liability), Section 11.7 (Governing Law), and Section 13 (Export Control).
10. ASSIGNMENT
Licensee may not, without FirePond's prior written consent, assign, delegate,
sublicense, pledge, or otherwise transfer this Agreement, or any of its
rights or obligations under this Agreement, or the Software, Tools or
Documentation, to any party, except as set forth herein. Any permitted
assignment of this Agreement shall provide that the provisions of this
Agreement shall continue in full force and effect and that Licensee shall
guaranty the performance of its assignee and shall remain liable for all
obligations hereunder.
11. GENERAL
11.1. Force Majeure. Neither FirePond nor Licensee shall be deemed to be in
default of any provision of this Agreement for any failure in performance
resulting from acts or events beyond the reasonable control of FirePond or
Licensee.
11.2. No Waiver. If either party should waive any breach of any provision of
this Agreement, it shall not thereby be deemed to have waived any preceding
or succeeding breach of the same or any other provision hereof.
11.3. Severability. If any provision of this Agreement is held to be
unenforceable, this Agreement shall be construed without such provision.
11.4. Agreement Binding/Entire Agreement. This Agreement shall be binding
upon and inure to the benefit of the parties hereto and their respective
successors and permitted assigns. This Agreement and each Attachment hereto
constitute the complete and exclusive statement of the agreement between
FirePond and Licensee, and all previous representations, discussions, and
writings are merged in, and superseded by, this Agreement. This Agreement may
be modified only by a writing signed by both parties. This Agreement and each
Attachment hereto shall prevail over any additional, conflicting, or
inconsistent terms and conditions which may appear on any purchase order or
other document furnished by Licensee to FirePond.
11.5. Rights to Injunctive Relief. Both parties acknowledge that remedies at
law may be inadequate to provide FirePond or Licensee with full compensation
in the event of Licensee's material breach of Sections 2 (Grant of License),
Section 4 (Proprietary Rights), Section 13 (Export Control), or FirePond's
material breach of Section 4 with respect to Licensee's Proprietary
Information, and that the non-breaching party shall therefore be entitled to
seek injunctive relief in the event of any such material breach.
11.6. Taxes and Duties. Licensee is responsible for all taxes concerning the
Software and Tools, excluding taxes based on FirePond's income. If Licensee
will sublicense Software to Named Users, Licensee shall submit a resale
exemption certificate to FirePond. Licensee will self-asses use tax in the
event Licensee does not sublicense Software or if Licensee provides Software
to Named Users without consideration to Licensee.
11.7. Governing Law. This Agreement shall be governed by and construed under
the State of Minnesota law without reference to its conflicts of law
principles. Any legal action or suit related to this agreement shall be
brought exclusively in the courts of Minnesota. Both parties agree that the
courts of Minnesota are a convenient forum for the resolution of disputes.
11.8. Notices. All notices or reports which are required or may be given
pursuant to this Agreement shall be in writing and shall be deemed duly given
when delivered to the respective executive offices of FirePond and Licensee
at the addresses first set forth above.
11.9. Publicity. Neither party shall use the name of the other in publicity,
advertising, or similar activity, without the prior written consent of the
other.
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12. ARBITRATION
Except for the right of either party to apply to a court of competent
jurisdiction for a Temporary Restraining Order or other provisional remedy to
preserve the status quo or prevent irreparable harm pending the selection and
confirmation of a panel of arbitrators, and for the right of FirePond to bring
suit on an open account for any payments due FirePond hereunder, (after
expiration of the informal dispute resolution as identified in Section 3.3) any
controversy or claim arising out of or relating to this Agreement shall be
settled by arbitration in Minneapolis, Minnesota, in accordance with the
Commercial Arbitration Rules of the American Arbitration Association, and
judgment upon the award rendered by the arbitrators may be entered in any court
having jurisdiction thereof. Arbitration shall be conducted by a panel of three
members, FirePond and Licensee each selecting one member and the third member,
who shall be chairman, selected by agreement between the other two members. The
chairman shall be an attorney-at-law, and the other members shall have a
background or training in computer law, computer science, or marketing of
computer products. The arbitrators shall have the authority to grant injunctive
relief in a form substantially similar to that which would otherwise be granted
by a court of law.
13. EXPORT CONTROL
13.1. Licensee shall comply with United States export rules and regulations
as they relate to Software, Tools and Documentation. Without obtaining any
necessary licenses, Licensee will not export or re-export outside the United
States Software, Tools or Documentation, whether directly or indirectly, and
will not cause, approve or otherwise intentionally facilitate others in so
doing. Licensee shall indemnify FirePond against any claims, losses,
liability, or damages suffered or incurred by FirePond arising out of or
related to any violation by Licensee of any United States or any foreign laws
or regulations relative to the Licensee or Named User use, export, or
re-export of Software, Tools or Documentation to or within any country
outside the United States. Licensee shall ensure that each Named User
complies with United States export rules and regulations as they relate to
Software.
13.2. Licensee shall cooperate with FirePond to protect FirePond's
intellectual property rights in foreign jurisdictions to which Software,
Tools or Documentation are used or distributed as reasonably requested by
FirePond.
13.3. FirePond may require changes in the agreement set forth in Exhibit A
from time to time or with respect to use in a particular country.
13.4 The Licensee acknowledges that the Stated of Direction is an expression
of intent for further development for the health care industry. Licensee
agrees that it has not relied on the potential development in executing this
Agreement and further agrees that the availability of said development shall
not affect Licensee's payment obligation of the license fee set forth in the
License Fee Attachment.
14. ESCROW
FirePond warrants that the source code for the Software as it is or as it
becomes available, will be deposited in an escrow account maintained at Data
Securities International, Inc. (the "Escrow Agent"). FirePond will from time to
time deposit in an escrow account copies of all new releases of the source code
for the Software.
FirePond or FirePond's trustee in bankruptcy shall authorize the Escrow Agent to
make and release a copy of the source code to Licensee upon the occurrence of
any of the following events:
(a) FirePond has ceased its ongoing business operations relating to the
licensing of software; or
(b) FirePond fails to carry out the material maintenance obligations imposed
on it pursuant to this Agreement after reasonable opportunity has been
provided to FirePond to perform such obligations; or
(c) The existence of any one or more of the following circumstances, if
uncorrected for more than ninety (90) days: (i) entry of an order of
relief under Title 11 of the United States Code; the making by FirePond of
the general assignment for the benefit of creditors; (ii) the appointment
of a general receiver or trustee in the bankruptcy of FirePond's business
or property; or (iii) action by FirePond under any state insolvency or
similar law for the purpose of bankruptcy, reorganization or liquidation.
The occurrence of the described events shall not constitute reason for the
release of the source code if, within the specified ninety (90) day
period, FirePond (including its receiver or trustee in bankruptcy)
provides to Licensee's adequate assurances, reasonably acceptable to
Licensee, of its continuing ability and willingness to fulfill all of its
maintenance and support obligations.
In the event of release under this Agreement, Licensee agrees that it will treat
and preserve the source code of the Software as a trade secret of FirePond in
accordance with the same precautions adopted by Licensee to safeguard its own
trade secrets against unauthorized use and disclosure. Release under this
provision shall not extend Licensee any greater rights or lesser obligations
than are otherwise provided or imposed under this Agreement.
IN WITNESS WHEREOF, the undersigned, intending to be legally bound, have duly
executed this Agreement to become effective as of the date first above written.
BCBSM, INC., DBA BLUE CROSS AND BLUE SHIELD OF MINNESOTA
By: /s/ Xxxx X. Xxxxxxx /s/ Xxxxxxx X. Xxxxxxxx
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Name: Xxxx X. Xxxxxxx Xxxxxxx X. Xxxxxxxx
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Title: CIO CFO
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Date: 12/18/98
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FIREPOND, INC.
By: /s/ Xxxxx X. Xxxxxx
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Name: Xxxxx X. Xxxxxx
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Title: CEO
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Date: 12/18/98
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EXHIBIT A
SOFTWARE NAMED USER AGREEMENT
1. DELIVERY
Upon acceptance of these terms, Named User will be provided electronic media
containing Software, as ordered by Named User through Licensee.
2. GRANT OF LICENSE
Subject to becoming effective as set forth above, Named User is hereby granted a
non-exclusive, non-transferable right to use Software for the limited purpose of
helping Named User and Named User's customers learn about, sell and/or buy
products manufactured, distributed or sold by Licensee. Named User agrees that
Software shall be used exclusively by Named User's authorized employees and only
for the limited purpose set forth above. The electronic media and Software shall
remain the property of Licensee and/or its suppliers. All applicable rights in
patents, copyrights, trade secrets and other confidential and proprietary
information, trademarks, and any other intellectual property rights in Software
are and shall remain in Licensee and/or its suppliers. Named User is forbidden
from copying, transferring possession, using, or permitting others to copy,
possess or use the electronic media and/or Software for any purpose not
specifically authorized in this Agreement. Named User warrants that any
individuals authorized by Named User to access Software shall be bound by the
terms and conditions of this Agreement.
3. TERM OF AGREEMENT
The term of this Agreement shall commence upon execution of the Agreement and
shall continue until termination as provided herein.
4. SOFTWARE SUPPORT
4.1 Warranty Disclaimer
LICENSEE AND ITS SUPPLIERS MAKE AND NAMED USER RECEIVES NO REPRESENTATION,
CONDITION OR WARRANTY, EXPRESS OR IMPLIED, IN ANY OTHER PROVISION OF THIS
AGREEMENT OR COMMUNICATION WITH NAMED USERS WITH RESPECT TO SOFTWARE, AND
LICENSEE AND ITS SUPPLIERS SPECIFICALLY DISCLAIM ANY IMPLIED WARRANTIES
WHETHER AS TO MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
MATTER. NAMED USER ASSUMES ALL RESPONSIBILITIES FOR THE SELECTION OF SOFTWARE
TO ACHIEVE NAMED USER'S INTENDED RESULTS. LICENSEE AND ITS SUPPLIERS DO NOT
WARRANT THAT SOFTWARE WILL MEET NAMED USER'S REQUIREMENTS OR THAT SOFTWARE
WILL BE UNINTERRUPTED OR ERROR FREE.
4.2 LIMITATION OF LIABILITY EXCEPT AS PROVIDED BELOW
LICENSEE AND ITS SUPPLIERS SHALL HAVE NO LIABILITY FOR ANY INCIDENTAL, SPECIAL,
CONSEQUENTIAL OR EXEMPLARY DAMAGES OF ANY DESCRIPTION, INCLUDING, WITHOUT
LIMITATION, DAMAGES DIRECTLY OR INDIRECTLY ARISING OUT OF THE INSTALLATION,
REMOVAL, USE OR NON-USE OF SOFTWARE OR LOSS OF PROFITS, WHETHER ARISING OUT OF
WARRANTY OR CONTRACT, NEGLIGENCE, OR OTHER NON-INTENTIONAL TORT OR OTHERWISE.
UNDER NO CIRCUMSTANCES SHALL LICENSEE'S AND ITS SUPPLIERS' LIABILITY EXCEED THE
APPLICABLE LICENSE FEE PAID BY NAMED USER UNDER THIS AGREEMENT, REGARDLESS OF
THE FORM OF THE ACTION. NAMED USER EXPRESSLY AGREES THAT THE LIMITATIONS OF
INCIDENTAL, SPECIAL, CONSEQUENTIAL AND EXEMPLARY DAMAGES SET FORTH ABOVE ARE
AGREED ALLOCATIONS OF RISK, ARE REFLECTED IN THE FEES THAT HAVE BEEN AGREED TO
BETWEEN THE PARTIES HEREIN.
5. RESTRICTIONS ON USE, CONFIDENTIALITY
To the maximum extent permitted by law, Named User agrees not to reverse
compile, disassemble, or otherwise reverse engineer Software or any portion
thereof. Named User further agrees not to disclose, reproduce, publish, release,
transfer, translate, copy or make available any portion of Software code or to
prepare or copy derivative or collective works based upon and/or containing any
portion of Software code. Named User agrees that all materials supplied under
this Agreement shall be kept in a secure place. Named User agrees to and shall
take appropriate action satisfactory to Licensee, by instruction, agreement or
otherwise, with any persons permitted access to Software to ensure continuous
confidentiality. All notices pertaining to use and ownership of the electronic
media and Software will be retained on the electronic media and Software in the
possession of Named User.
6. UNAUTHORIZED ACTS
Named User agrees to notify Licensee of the possession, use, knowledge,
disclosure or reproduction of any electronic media or Software made available to
Named User under this Agreement by any person, firm or organization not
authorized by this Agreement to have the benefit of such possession, use,
knowledge, disclosure or reproduction, and to cooperate with Licensee and its
representatives in any investigation of and litigation against such person, firm
or organization.
7. TERMINATION
Named User may terminate this Agreement without cause by giving Licensee thirty
(30) days written notice of termination. In the event of a material breach of
this Agreement which is not corrected, this Agreement may be terminated in the
following manner. The party complaining of the breach may terminate this
Agreement by serving written notice on the other party of its intention to
terminate the Agreement and stating the breach of the Agreement complained of,
whereupon the other party shall have a period of thirty (30) days to correct the
material breach; and in the event the breach is not corrected, the Agreement
shall stand terminated at the end of said thirty (30) days from service of the
notice. In the event the breach is corrected, the Agreement shall continue as if
no breach had occurred. If this Agreement is terminated at any time, Named User
shall cease use immediately of Software and shall promptly return or destroy all
Licensee originals and all materials related to Software and electronic media
received from Licensee and/or any other material furnished by Licensee to Named
User for use by Named User in connection with this Agreement, including any
modifications, and all supplementary or related program materials and
information, excluding normal printouts or handouts which have been distributed
to customers of Named User.
If for any reason the relationship between Licensee and its supplier of Software
or between Licensee and Named User is terminated, this Agreement will be
concurrently terminated, effective as of the relationship termination date.
8. GENERAL
This Agreement is entered into and shall be construed in accordance with the
laws of the State of Minnesota. This Agreement constitutes the entire agreement
between the parties and supersedes all other communications whether written or
oral. Neither the rights granted herein nor Software or copies thereof may be
licensed, assigned, or transferred by Named User. Any failure by Licensee to
terminate this Agreement for any particular cause shall not be interpreted as a
waiver of Licensee's right to subsequently cancel or terminate the Agreement for
a later similar reason. FirePond and other third-party suppliers of Licensee are
direct and intended third-party beneficiaries of this Agreement and may enforce
this Agreement directly against Named User.
IN WITNESS WHEREOF, the undersigned, intending to be legally bound, have duly
executed this Agreement.
Approved as to form:
BCBSM, INC., DBA BLUE CROSS AND BLUE SHIELD OF MINNESOTA
By: /s/ Xxxx X. Xxxxxxx /s/ Xxxxxxx X. Xxxxxxxx
------------------------------------------------------------
Name: Xxxx X. Xxxxxxx Xxxxxxx X. Xxxxxxxx
----------------------------------------------------------
Title: CIO CFO
---------------------------------------------------------
Date: 12/18/98
----------------------------------------------------------
FIREPOND, INC.
By: /s/ Xxxxx X. Xxxxxx
------------------------------------------------------------
Name: Xxxxx X. Xxxxxx
----------------------------------------------------------
Title: CEO
---------------------------------------------------------
Date: 12/18/98
----------------------------------------------------------
6
[FIREPOND LOGO]
SIGNATURE PLUS LICENSE FEE ATTACHMENT
This License Fee Attachment is considered an Attachment and is governed by the
provisions of the Signature Plus Software License Agreement dated 12/8/98
(hereinafter Agreement) executed by FirePond, Inc. and BCBSM, Inc. dba Blue
Cross and Blue Shield of Minnesota (for the purpose of this Attachment -
Client).
All amounts in U.S. ($)
================================================================================
================================================================================
LICENSE FEES (SIGNATURE PLUS - ENTERPRISE)
================================================================================
For a fee of $[ * * * ], Client shall receive an Enterprise License, payable
as follows:
$[ * * * ] payable upon execution of this Attachment.
$[ * * * ] payable March 15, 1999.
$[ * * * ] payable June 1, 1999.
----------
$[ * * * ] total
Client will be invoiced for the above stated license fee upon execution of this
Attachment with the payment schedule above. The above fees are not subject to
offset for any reason, including any Finder's Fee Client may earn.
================================================================================
================================================================================
LICENSE FEES (SIGNATURE PLUS - TOOLKIT) - DESIGNATED SITE
--------------------------------------------------------------------------------
Signature Plus Toolkit - Eagan Campuses of BCBSM, Inc. (Included in
above license fees) ........................................................ NA
================================================================================
================================================================================
FINDER'S FEE
--------------------------------------------------------------------------------
If Client purchases, and FirePond receives payments as described above for an
Enterprise License, and if Client provides substantive Assistance in procuring
binding Signature Plus License Agreements with other Blue Cross Blue Shield
entities (other than those entities listed in Attachment Licensee), Client may
earn a finder's fee (as provided below). For purposes of this Agreement,
"Assistance" shall mean the substantive and documented introduction and
recommendation of FirePond and FirePond products by Client to other Blue Cross
Blue Shield entities, including serving as a reference account and providing
mutually agreed access to Client's installation for purposes of demonstrations
of FirePond's products. In the event Client provides such Assistance and
FirePond executes such agreements, FirePond shall pay Client a finder's fee as
follows:
o For each Blue Cross Blue Shield entity entering binding qualifying license
agreements within two (2) years after execution of this Agreement,
FirePond shall pay Client a finder's fee equal to 15% of such Blue Cross
Blue Shield entities' license fees during that period (excluding any
implementation, maintenance or Service Fees).
o For each Blue Cross Blue Shield entity entering binding qualifying license
agreements after the first two (2) years following execution of this
Agreement but before the beginning of the fourth year after execution of
this Agreement, FirePond shall pay Client a finder's fee equal to 10% of
such Blue Cross Blue Shield entities license fee during that period
(excluding any implementation, maintenance or Service Fees).
o For each Blue Cross Blue Shield entity entering binding qualifying license
agreements after the first four (4) years after execution of this
Agreement but before the beginning of the sixth year after execution of
this Agreement, FirePond shall pay Client a finder's fee equal to 5% of
such Blue Cross Blue Shield entities license fee during that period.
(excluding any implementation, maintenance or Service Fees).
o The finder's fee shall expire five (5) years from the date of Execution of
this Agreement.
================================================================================
[ * * * ] Confidential treatment has been requested for the bracketed
portions. The confidential redacted portion has been filed
separately with the Securities and Exchange Commission.
7
[FIREPOND LOGO]
================================================================================
LIMITED SEMI EXCLUSIVE USE
--------------------------------------------------------------------------------
If Client purchases, and FirePond receives payments as described above for an
Enterprise License, and if Client provides substantive Assistance in procuring
binding Signature Plus License Agreements with other Blue Cross Blue Shield
entities (other than those entities listed in Attachment Licensee), FirePond
agrees that it shall not license, for use in Minnesota, to Health Partners,
Alliana, Health Systems of Minnesota, Preferred One or Medica doing business in
Minnesota for the period of December 18, 1998, to December 31, 2000. This
Limited Semi Exclusive Use License does not prohibit FirePond from using the
Software internally during such period, or from licensing the Software to third
parties other than Health Partners, Alliana, Health Systems of Minnesota,
Preferred One or Medica doing business inside and/or outside of Minnesota.
================================================================================
================================================================================
TAXES AND DUTIES
--------------------------------------------------------------------------------
All duties, taxes and levies (excluding taxes based on FirePond's net income),
if any, shall be borne by Client.
================================================================================
The fees and terms in this Attachment are valid until December 18, 1998. If
Client does not sign this Attachment prior to that date, FirePond may revise
such fees and terms.
================================================================================
SIGNATURES
--------------------------------------------------------------------------------
IN WITNESS WHEREOF, the parties have signed this Attachment by their duly
authorized representatives.
BCBSM, INC. DBA BLUE CROSS AND BLUE FIREPOND, INC.
SHIELD OF MINNESOTA
By: /s/ Xxxx X. Xxxxxxx /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxx X. Xxxxxx
---------------------------------------------- ------------------------
Name: Xxxx X. Xxxxxxx Xxxxxxx X. Xxxxxxxx Name: Xxxxx X. Xxxxxx
------------------------------------------------- ----------------------
Title: CIO CFO Title: CEO
------------------------------------------------- ---------------------
Date: 12/18/98 Date: 12/18/98
-------------------------------------------- ----------------------
8
[FIREPOND LOGO]
SIGNATURE PLUS MAINTENANCE ATTACHMENT
This maintenance attachment is considered an Attachment and is governed by the
provisions of the Software License Agreement (hereinafter Agreement) executed by
FirePond, Inc. and Licensee ("Licensee").
================================================================================
MAINTENANCE FEE All amounts in U.S.($)
--------------------------------------------------------------------------------
PLATINUM MAINTENANCE (REQUIRED, 15% OF THE TOTAL LICENSE FEE FOR THE
SOFTWARE AND TOOLS) ................................................$[ * * * ]
Client may purchase maintenance in a prepaid one-year block at a rate of 15% of
the license fee. Client shall elect this option at the time of execution of the
applicable License option.
See chart below for definition of Silver, Gold and Platinum maintenance.
If Licensee decides to buy additional seats, FirePond will calculate the license
fee based on the percentages above and pro-rate to the end of the then-current
Licensee maintenance year.
Maintenance shall start at the end of the warranty period as identified in the
Signature Plus Software License Agreement.
================================================================================
================================================================================
RESPONSE LEVELS
--------------------------------------------------------------------------------
FirePond shall provide support via a FirePond technical support representative
to research questions and resolve issues for the four Licensee designated
contacts identified in the attached schedule from 8:00 a.m. to 5:00 p.m. Central
Time Monday through Friday (excluding FirePond holidays). This service will also
provide a means for the Licensee designated contacts to provide feedback to
FirePond on the Software and Tools.
Following is a definition of severity levels:
o Critical: Software or Tools are non-operational.
o High: A major function of the Software or Tools is unavailable.
o Medium: The Software or Tools are in substantial non-conformance to the
functional specifications in the Documentation.
o Low: The Software or Tools substantially conform to the functional
specifications in the Documentation but contain minor discrepancies.
Licensee identified problems shall be handled according to the following table.
================================================================================
-------------------------------------------------------------------------------
Severity Silver Gold Platinum
-------- ---------------------- ---------------------- ----------------------
Critical FirePond will use best FirePond will use best FirePond will use best
efforts to respond to efforts to respond to efforts to respond to
the Licensee contact the Licensee contact the Licensee contact
within one business within one business within one business
hour of notice and hour of notice and hour of notice and
provide a fix plan provide a fix plan provide a fix plan
within three business within two business within one business
days. days day.
-------- ---------------------- ---------------------- ----------------------
High FirePond will use best FirePond will use best FirePond will use best
efforts to respond to efforts to respond to efforts to respond to
the Licensee contact the Licensee contact the Licensee contact
within four business within four business within four business
hours of notice and hours of notice and hours of notice and
provide a fix plan provide a fix plan provide a fix plan
within four business within three business within two business
days. days. days.
-------- ---------------------- ---------------------- ----------------------
Medium FirePond will use best FirePond will use best FirePond will use best
efforts to respond to efforts to respond to efforts to respond to
the Licensee contact the Licensee contact the Licensee contact
within one business within one business within one business
day of notice and day of notice and day of notice and
provide a fix plan provide a fix plan provide a fix plan
within five business within four business within three business
days. days. days.
-------- ---------------------- ---------------------- ----------------------
Low FirePond will use best FirePond will use best FirePond will use best
efforts to respond to efforts to respond to efforts to respond to
the Licensee contact the Licensee contact the Licensee contact
within two to five within two to five within two to five
business days of business days of business days of
notice and consider notice and consider notice and give
for inclusion in the for inclusion in the priority consideration
maintenance release. maintenance release. for inclusion in the
maintenance release.
-------------------------------------------------------------------------------
[ * * * ] Confidential treatment has been requested for the bracketed
portions. The confidential redacted portion has been filed
separately with the Securities and Exchange Commission.
9
[FIREPOND LOGO]
Maintenance includes issuance of upgrades as they become available from
FirePond. Upon issuance of an upgrade, FirePond shall provide the support
identified in this Attachment for the previous upgrade for a period of 12
months.
Maintenance service does not include the delivery of any software and associated
documentation which FirePond offers as separate products which have not been
licensed by Licensee.
Errors attributed to FirePond shall be those that are reproducible by FirePond
on unmodified FirePond software. FirePond will use reasonable efforts to work
with client to obtain corrections or workarounds to problems in third party
implementations/software.
FirePond shall use reasonable commercial efforts to correct the defect by
bringing the performance of the Software into material compliance with the
functional specifications or to replace the defective component within thirty
(30) days or such longer period as is reasonable in the circumstances where
FirePond proceeds with all due diligence to cure such defect. In the event
FirePond is unable to correct or replace such defect within the stated time
period, Licensee shall refund the then present value of such Software to
Licensee, as amortized over a five (5) year useful life measured from the date
of delivery.
All fix plan times begin when FirePond duplicates the problem.
FirePond shall have no obligation to support:
a. altered, damaged or modified (except for standard modifications utilizing
the standard software tools) software or any portion of the software
incorporated with or into other software;
b. Software problems caused by Licensee's negligence, abuse or
misapplication, use of software other than as specified in FirePond's
published and current documentation, or other causes beyond the control of
FirePond;
c. Software installed on or with any Computer Hardware, Operating System,
GUI, or Database Management System that is not specified in the
documentation covering the software.
TAXES AND DUTIES
--------------------------------------------------------------------------------
All duties, taxes and levies (excluding taxes based on FirePond's net income),
if any, shall be borne by Licensee.
================================================================================
================================================================================
MAINENTANCE FEE RENEWAL
--------------------------------------------------------------------------------
The renewal fee for the maintenance shall be based on the total license fee for
the Software and Tools as identified in the Signature Plus License Fee
Attachment governed by and attached to the Software License Agreement executed
by FirePond and Licensee.
If payment is not made within thirty (30) days of the due date, support services
will be suspended until payment is received. If payment is not received by
FirePond, within 180 days of the due date, the support services will be
terminated. Licensee will be required to pay a reinstatement fee to reactivate
support. The cost to reactivate will be all maintenance fees in arrears.
--------------------------------------------------------------------------------
10
[FIREPOND LOGO]
================================================================================
FEES AND PAYMENT TERMS
--------------------------------------------------------------------------------
The maintenance identified above is payable as follows:
$[ * * * ] payable upon expiration of the warranty period for the Software.
$[ * * * ] payable March 15, 1999.
$[ * * * ] payable June 1, 1999.
------------
$[ * * * ] total
For the initial first year, Licensee will be invoiced for the above stated
maintenance fee upon execution of this Attachment with the payment schedule
above, and annually in advance thereafter. Maintenance fees are subject to
change once during a calendar year upon sixty (60) days notice. This Attachment
shall automatically renew for subsequent one-year terms unless the Agreement is
terminated by sixty (60) days advance written notice prior to the end of the
current maintenance year. If after any period of non-maintenance under a
Signature Plus Maintenance Attachment, Licensee desires to re-establish
maintenance of the Software by FirePond, Licensee shall pay all maintenance at
current list prices calculated from the day maintenance was discontinued. To
stay in compliance with the Agreement, all past due amounts must be paid timely
in accordance with the terms of the Agreement.
Notwithstanding the foregoing, increases in annual maintenance over the initial
base year maintenance shall be limited to ten (10) percentage.
================================================================================
The fees and terms in this Attachment are valid until December 18, 1998. If this
Attachment is not signed by Licensee prior to that date, FirePond may revise
such fees and terms.
================================================================================
SIGNATURES
--------------------------------------------------------------------------------
BCBSM, INC. DBA BLUE CROSS AND BLUE FIREPOND, INC.
SHIELD OF MINNESOTA
By: /s/ Xxxx X. Xxxxxxx /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxx X. Xxxxxx
---------------------------------------------- ------------------------
Name: Xxxx X. Xxxxxxx Xxxxxxx X. Xxxxxxxx Name: Xxxxx X. Xxxxxx
------------------------------------------------- ----------------------
Title: CIO CFO Title: CEO
------------------------------------------------- ---------------------
Date: 12/18/98 Date: 12/18/98
-------------------------------------------- ----------------------
[ * * * ] Confidential treatment has been requested for the bracketed
portions. The confidential redacted portion has been filed
separately with the Securities and Exchange Commission.
11
[FIREPOND LOGO]
LICENSEE DESIGNATED CONTACTS
================================================================================
CONTACT #1
--------------------------------------------------------------------------------
Name:
---------------------------------------------------------------------------
Title:
--------------------------------------------------------------------------
Business Address:
---------------------------------------------------------------
Business Phone:
-----------------------------------------------------------------
Business Fax:
-------------------------------------------------------------------
E-mail:
-------------------------------------------------------------------------
================================================================================
CONTACT #2
--------------------------------------------------------------------------------
Name:
---------------------------------------------------------------------------
Title:
--------------------------------------------------------------------------
Business Address:
---------------------------------------------------------------
Business Phone:
-----------------------------------------------------------------
Business Fax:
-------------------------------------------------------------------
E-mail:
-------------------------------------------------------------------------
================================================================================
CONTACT #3
--------------------------------------------------------------------------------
Name:
---------------------------------------------------------------------------
Title:
--------------------------------------------------------------------------
Business Address:
---------------------------------------------------------------
Business Phone:
-----------------------------------------------------------------
Business Fax:
-------------------------------------------------------------------
E-mail:
-------------------------------------------------------------------------
================================================================================
CONTACT #4
--------------------------------------------------------------------------------
Name:
---------------------------------------------------------------------------
Title:
--------------------------------------------------------------------------
Business Address:
---------------------------------------------------------------
Business Phone:
-----------------------------------------------------------------
Business Fax:
-------------------------------------------------------------------
E-mail:
-------------------------------------------------------------------------
================================================================================
