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EXHIBIT 10.14
SOFTWARE LICENSE AGREEMENT
AETHER INTELLIGENT MESSAGING (AIM)
This Software License Agreement ("Agreement") is made effective as of
the date last executed below ("Effective Date") by and between Aether
Technologies International, L.L.C. (hereinafter, "Aether" or "Aether
Technologies"), located at 00000 Xxxxxxxxx Xxxxx, Xxxxxx Xxxxx, XX 00000, and
AirWeb Corporation (d/b/a OpenSky Corporation) ("Licensee"), located at 000
Xxxxxxx Xxxxxx, Xxxxx 000, Xxxx Xxxx, XX 00000.
The parties agree as follows:
1. Licensed Software. The software to be licensed to Licensee (which
excludes all of Licensee's affiliates, subsidiaries, partnerships, associations
or other entities or legal relationships in whatever form (collectively
referred to as "Licensee's Subsidiaries")), is Aether's AIM software and
documentation (the "Licensed Software"), as described on Exhibit A. The portion
of the Licensed Software described on Exhibit B hereto is referred to herein as
the "Client Code." All references herein to Licensed Software shall include the
Client Code.
2. License Grant. Subject to the terms of this Agreement, Aether
grants to Licensee a personal, perpetual, worldwide, irrevocable, royalty-free,
non-exclusive and, except as provided in Section 7, non-transferable license to
(a) reproduce, display and use the Licensed Software at any of Licensee's data
centers and (b) reproduce, sublicense and distribute, directly or indirectly
through value added resellers, original equipment manufacturers, system
integrators or other intermediaries, the Client Code solely for use by
Licensee's customers on wireless hardware devices. Before copying the Licensed
Software, Licensee shall provide Aether with 90 days' written notice and Aether
will have the opportunity to make copies of the Licensed Software and install
such copies in additional data centers identified by Licensee. Licensee shall
also have the right to make two copies of the Licensed Software as archival or
backup copies for its own internal use. No rights are granted under this
Agreement to modify the Licensed Software. Except as otherwise provided in this
Section 2, Licensee is expressly prohibited from licensing or distributing the
Licensed Software to any third party, which includes Licensee's Subsidiaries,
without the prior written permission of Aether, and any such attempted license
or distribution is a material breach of this Agreement.
Licensee acknowledges that the Licensed Software contains intellectual
property belonging exclusively to Aether Technologies. Except as provided
herein, Licensee acknowledges and agrees that this Agreement does not grant any
right, title or interest in and to any patents, copyrights, trade secrets,
trademarks or other property rights or rights of ownership in the Licensed
Software in whatever form. All rights not expressly granted by Aether hereunder
are reserved by Aether Technologies.
3. License Fee. No fees are due and payable by Licensee to Aether or
from Aether to Licensee for the license granted or services provided pursuant
to this Agreement. Aether has agreed to enter into this Agreement as
consideration for the shares of Series A Preferred Stock of Licensee issued and
sold to Aether by Licensee as set forth in that certain Series A Preferred
Stock Purchase Agreement, dated as of August __, 1999.
4. Copyright Notice. OpenSky shall reproduce all copyright notices
contained in the Licensed Software on each copy made by Licensee of the
Licensed Software in whatever form.
5. Term. This Agreement shall be effective as of the Effective Date
and shall remain in effect until terminated pursuant to this Section 5. Either
party may terminate this Agreement by providing written notice to the other
party if the other party is in material breach of this Agreement and has not
remedied such breach within thirty (30) days of notice thereof. The parties
agree that their respective obligations and applicable limitations under
Sections 2 (License Grant), 7 (No Assignment; No Reverse Engineering), 8
(Confidentiality), 9 (Representations and Warranties), 10 (Indemnification),
and 11 (Limitation of Liability) shall survive any expiration or termination of
this Agreement and that any other obligations and duties which by their nature
extend beyond the expiration or termination of this Agreement shall survive any
expiration or termination and shall remain in effect for a period of ten (10)
years thereafter.
6. Support.
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(a) Aether shall, at Aether's sole expense, provide Licensee
with all Updates as they become generally available to Aether's
licensees. In this Agreement, "Updates" means all new versions of the
Licensed Software, including all error corrections, patches,
work-arounds, fixes, enhancements, new versions defined by changes to
the version number (e.g., 2.0 to 3.0).
(b) Should Licensee need any custom modifications to the
Licensed Software, Aether agrees to negotiate in good faith an agreement
for the provision of such modifications on a time and materials basis.
(c) If at any time during the term of this Agreement, the
Licensed Software fails to substantially conform to the Documentation,
Aether shall, at its option, either modify or replace the Licensed
Software to conform to the Documentation in a prompt manner after
receiving notice of any substantial nonconformity from Licensee.
7. No Assignment; No Reverse Engineering. Neither this Agreement nor
the rights or obligations hereunder, either in whole or in part, may be
assigned or otherwise transferred, whether voluntarily or by operation of law,
by Licensee without the prior written consent of Aether, which consent may be
withheld in Aether's sole discretion, and any attempted transfer or assignment
is null and void and shall be deemed a material breach of this Agreement.
Notwithstanding the foregoing, Licensee may assign this Agreement to an
acquirer of all of the stock or substantially all of the assets of Licensee.
Licensee shall not reverse engineer, reverse compile or disassemble the
Licensed Software.
8. Confidentiality. Licensee hereby acknowledges that the Licensed
Software, embodied in whatever form or media, constitutes a valuable trade
secret belonging to Aether, and Licensee agrees to hold such trade secret in
strict confidence, and not to use or disclose such trade secret, except as
permitted hereunder. Licensee further acknowledges that Aether is the owner of
and retains all title to the Licensed Software recorded on the original media
and all subsequent copies regardless of the form or media.
9. Representations and Warranties.
(a) Each party represents and warrants to the other that (i)
it has the legal right and corporate power and authority to execute,
deliver, and perform this Agreement, provided that the sole and
exclusive remedy for a breach of this Subsection 9 as it relates to
intellectual property rights will be the indemnification obligations
(including the limits thereto) set forth in Section 10; (ii) its
execution, delivery, and performance of this Agreement has been duly
authorized in accordance with all appropriate corporate power and
authority; (iii) the individual signing this Agreement on its behalf has
been authorized to execute this Agreement in the capacity set forth
under such individual's name on the signature page hereof; and (iv) the
execution, delivery, and performance of this Agreement constitutes its
legal, valid, and binding obligation enforceable against it in
accordance with its terms, except as enforcement may be limited by
applicable bankruptcy, insolvency, reorganization, or other similar laws
affecting the enforcement of creditors' rights generally and that the
remedy of specific performance may be subject to judicial discretion.
(b) Aether represents and warrants to Licensee that the
Licensed Software will perform substantially in accordance with its
Documentation.
10. Indemnification.
(a) General. Aether, at its own expense, will indemnify and
defend Licensee, its employees, representatives, agents and affiliates
against any claim, suit, action or proceeding based on or arising from a
claim brought by a third party that the use, copying, display, or
distribution of the Licensed Software by Licensee as permitted in
Section 2 infringes in any manner Intellectual Property Right of any
third party. In this Agreement, "Intellectual Property Rights" means all
rights in, to, or arising out of: (i) any U.S., international or foreign
patent or any application therefor and any and all reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof;
(ii) inventions (whether patentable or not in any
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country), invention disclosures, improvements, trade secrets,
proprietary information, know-how, technology and technical data; (iii)
copyrights, copyright registrations, mask works, mask work
registrations, and applications therefor in the U.S. or any foreign
country, and all other rights corresponding thereto throughout the
world; (iv) moral rights; and (v) any other proprietary rights anywhere
in the world similar to those described in this definition. Aether's
obligations set forth in this Section 10 are conditioned on (i) Aether's
prompt notice of any indemnified claim, and (ii) Licensee permits Aether
to assume and control the defense of the action, with counsel chosen by
Aether. Aether will pay any and all costs, damages, and attorneys fees
awarded against Licensee in connection with or arising from any such
claim, suit or proceeding.
(b) Election of Remedy. In the event that Licensee's ability
to use the Licensed Software is enjoined due to a claim
covered by the indemnity obligations set forth in Section
10(a) above, Aether will, at its option and expense,
either: (i) procure for Licensee the right to use the
Licensed Software; (ii) replace the infringing material so
that it is non-infringing; (iii) modify the infringing
material so that it is non-infringing or, (iv) if none of
the above options are reasonably available after
commercially reasonable attempts by Aether, Aether may, at
its option, terminate this Agreement.
(c) Sole and Exclusive Remedy. The foregoing states Aether's
entire liability and Licensee's sole and exclusive remedy
with respect to the infringement of intellectual property
rights of any third party.
(d) LIMIT ON INDEMNITY LIABILITY. IN NO EVENT SHALL AETHER'S
AGGREGATE, CUMULATIVE LIABILITY TO LICENSEE ARISING OUT OF OR RELATING
TO THE INDEMNITY OBLIGATIONS DESCRIBED IN THIS SECTION 10 EXCEED ONE
MILLION DOLLARS ($1,000,000). THIS LIMITATION ON LIABILITY IS CUMULATIVE
WITH ALL PAYMENTS BEING AGGREGATED TO DETERMINE SATISFACTION OF THE
LIMIT. THE EXISTENCE OF ONE OR MORE CLAIMS OR SUITS UNDER THIS SECTION
WILL NOT ENLARGE THE LIMIT.
(e) Warranty Disclaimer. SUBJECT TO AETHER'S OBLIGATIONS UNDER
SECTION 9(b), AETHER TECHNOLOGIES MAKES NO REPRESENTATIONS OR WARRANTIES
THAT THE LICENSED SOFTWARE IS FREE OF ERRORS. THE LICENSED SOFTWARE IS
PROVIDED ON AN "AS IS" BASIS AND ALL RISK IS WITH LICENSEE. SUBJECT TO
AETHER'S OBLIGATIONS UNDER SECTION 9(b), AETHER TEHNOLOGIES MAKES NO
WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO ANY MATTER WHATSOEVER.
IN PARTICULAR, ANY AND ALL WARRANTIES OF MERCHANTABILITY, OR FITNESS FOR
A PARTICULAR PURPOSE ARE EXPRESSLY EXCLUDED.
11. Limitation of Liability. NEITHER PARTY SHALL BE LIABLE TO THE
OTHER PARTY OR ANY THIRD PARTY FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL
DAMAGES, LOSS OF PROFITS OR REVENUE, OR INTERRUPTION OF BUSINESS IN ANY WAY
ARISING OUT OF OR RELATED TO THIS AGREEMENT, REGARDLESS OF THE FORM OF ACTION,
WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT PRODUCT LIABILITY OR
OTHERWISE, EVEN IF ANY REPRESENTATIVE OF THE PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
12. Entire Agreement. This Agreement and any attachments hereto
represent the entire agreement and understanding of the parties with respect to
the subject matter hereof and supersede all prior representations,
understandings and agreements, whether oral or written, with respect to such
subject matter. This Agreement may be modified only by a writing executed by
both parties hereto.
13. Governing Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of Maryland as such laws are applied
to agreements entered into and to be performed entirely within Maryland between
Maryland residents and by the laws of the United States. The parties hereby
submit to the jurisdiction of the State of Maryland, and the United States
District Court of Maryland, and agree that such tribunals
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shall have jurisdiction and venue over all controversies in connection
herewith. The parties exclude in its entirety the application to this Agreement
of the United Nations Convention on Contracts for the International Sale of
Goods.
14. Export Regulations. Licensee shall not export, directly or
indirectly, any information acquired under this Agreement or any products
utilizing any such information to any country for which the U.S. Government or
any agency thereof at the time of export requires an export license or other
government approval without first obtaining such license or approval.
15. Relationship of the Parties. Each of the parties shall at all
times during the term of this Agreement act as, and shall represent itself to
be, an independent contractor, and not an agent or employee of the other.
16. Waiver. A waiver of any default hereunder or of any of the terms
and conditions of this Agreement shall not be deemed to be a continuing waiver
or a waiver of any other default or of any other term or condition, but shall
apply solely to the instance to which such waiver is directed. The exercise of
any right or remedy provided in this Agreement shall be without prejudice to
the right to exercise any other right or remedy provided by law or equity,
except as expressly limited by this Agreement.
17. Injunctive Relief. The copying or use of the Licensed Software in
a manner inconsistent with any provision of this Agreement will cause
irreparable injury to Aether for which Aether will not have an adequate remedy
at law. Aether shall be entitled to equitable relief in court, including but
not limited to temporary restraining orders, preliminary injunctions and
permanent injunctions.
18. Severability. In the event any provision of this Agreement is
found to be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not in any way be affected or
impaired.
19. Notices. Any notice provided for or permitted under this
Agreement will be treated as having been given when (a) delivered personally,
(b) sent by confirmed telex or telecopy, (c) sent by commercial overnight
courier with written verification of receipt, or (d) mailed postage prepaid by
certified or registered mail, return receipt requested, to the signatory of the
party to be notified, at the address set forth above, or at such other place of
which the other party has been notified in accordance with the provisions of
this Section 19 (Notices). Copies of all notices to Aether shall also be sent
to the following address: Aether Technologies, Attention, Chief Financial
Officer, 00000 Xxxxxxxxx Xxxxx, Xxxxxx Xxxxx, XX 00000, telecopy (410)
654-6554. Copies of all notices to Licensee shall also be sent to the following
address: Wilson, Sonsini, Xxxxxxxx & Xxxxxx, Attention: Xxxxx X. Xxxxx, Esq.,
000 Xxxx Xxxx Xxxx, Xxxx Xxxx, XX 00000, facsimile (000) 000-0000. Notices will
be treated as having been received upon the earlier of actual receipt or five
(5) days after posting.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives effective as of the Effective
Date.
Licensee: Aether Technologies International,
AirWeb Corporation L.L.C.:
(d/b/a OpenSky Corporation)
By: /s/ Xxxxxxx X. Xxxxxx By: /s/ Xxxxx X. Xxxx
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Printed: Xxxxxxx X. Xxxxxx Printed: Xxxxx X. Xxxx
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Title: CFO and Secretary Title: Manager
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Date: August 9, 1999 Date: 8/9/99
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SCHEDULE A
DETAILED SOFTWARE LIST
The object code for the software described in the attached documentation
and the attached documentation
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SCHEDULE B
DESCRIPTION OF CLIENT CODE
The object code for the Client Software described in the attached documentation
and the attached documentation relating to the Client Software
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