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EXHIBIT 10.5
SOFTWARE LICENSE AGREEMENT
(TRANSFER OF LICENSE RIGHTS)
This Software License Agreement ("Agreement") is entered into by and between
ALCATEL USA MARKETING, INC. (formerly known as DSC Marketing Services, Inc.),
with principal offices at 0000 Xxxx Xxxx, Xxxxx, Xxxxx 00000 ("ALCATEL") and
MAXXIS GROUP, Inc., with principal offices at 0000 Xxxxxxxx Xxxx, Xxxxxx,
Xxxxxxx 00000 ("Licensee") to be effective the date of signature by ALCATEL's
authorized representative.
WHEREAS, Licensee understands and acknowledges that wherever the term ALCATEL is
used herein it shall include those companies formerly known as DSC
Communications Corporation and/or DSC Marketing Services, Inc.; and
WHEREAS, Licensee wishes to obtain the Right To Use ("RTU") certain Software
(defined as machine readable computer programs, instruction sequences,
procedures, data, logic, and/or rules provided by ALCATEL, exclusive of source
code, in or by any form or media) from ALCATEL for use on ALCATEL manufactured
equipment which Licensee has obtained from a third party (Cherry Communications,
Inc.); and
WHEREAS, ALCATEL is willing to license that certain Software to Licensee under
certain terms and conditions;
NOW THEREFORE, in consideration of the premises the parties agree as follows:
AFFIRMATION
Licensee hereby affirms that it is not a competitor of, nor controlled
by, nor under common control with a competitor of ALCATEL.
CONFIDENTIAL INFORMATION
Licensee acknowledges that all technical information, documentation,
Software and other information or data that ALCATEL supplies to Licensee which
is marked or otherwise identified as confidential and proprietary information of
ALCATEL shall hereinafter be collectively referred to as "Confidential
Information". Licensee agrees that it shall: (a) not disclose any Confidential
Information to any person, except to its employees having a need to know in
connection with the operation and maintenance of the Equipment (defined as any
equipment, components, assemblies, accessories, line cards, boards, and similar
items provided by ALCATEL, or obtained from a third party under a transaction
authorized by ALCATEL) or Software, and, where applicable, its contractors who
have agreed, in writing, to treat such Confidential Information in the same
manner; (b) not copy any Confidential Information, except as provided herein;
(c) not reverse engineer or decompile any Equipment, Software or Confidential
Information; and (d) compensate ALCATEL for any loss or damages resulting from a
breach of this provision.
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LICENSE GRANT
ALCATEL hereby grants Licensee, and Licensee hereby accepts, a
nonexclusive, nontransferable license to use the Software and those features of
the Software for which activation has been authorized by ALCATEL, solely on a
single System (defined as an arrangement of Equipment which, when interfaced
with Software, is operable to perform predetermined functions), or unit of
Equipment, as may be applicable. Use of the Software on multiple Systems or with
any equipment furnished by a party other than ALCATEL or its authorized
resellers is not licensed hereunder in the absence of a separate written
agreement between the parties hereto.
In accepting such Software license grant Licensee agrees to treat such
Software as Confidential Information. Licensee agrees to use such Software or
any portions or aspects thereof (including any methods or concepts utilized
therein) solely on the Equipment. Licensee agrees, within thirty (30) days after
the occurrence of either of the following events, to return, or certify to
ALCATEL in writing the destruction of, all Software, memory media, documentation
and/or other material (a) that has been modified, updated, or replaced; and/or
(b) upon Licensee's discontinued use of the Equipment. Licensee agrees that it
shall not at any time modify, disassemble, or decompile such Software, or
transfer or reverse engineer any portion of the Software or functioning of any
Equipment, or permit others to do so, without ALCATEL's prior written consent.
Licensee agrees it will not attempt to transfer Confidential Information,
including any Software or System, without the prior written consent of ALCATEL.
Licensee further agrees that it shall not reproduce or copy such Software in
whole or in part except for backup and archival purposes.
In the event Licensee breaches any of the above provisions, ALCATEL
reserves the right, upon notice to Licensee, to (a) require the immediate return
of all Confidential Information, including all applicable Software and copies
thereof, wherever such Confidential Information and copies thereof shall reside,
including any and all associated documentation for which Licensee is in breach
of license rights, or has not paid the applicable fee, and (b) terminate the
license for such Software and associated documentation granted to Licensee. Upon
receipt of such notice, Licensee agrees to immediately discontinue use of such
Software and associated documentation.
The rights and obligations of Licensee hereunder will survive
expiration or termination of this Agreement for any reason, and shall continue
even if the Software is no longer used with the Equipment.
INDEMNIFICATION
ALCATEL shall, at its expense, defend any claim or legal action
(collectively "claim") against Licensee to the extent that it is based on a
substantive allegation that the Software infringes any patent, copyright, trade
secret, or other intellectual property right of a third party. ALCATEL shall pay
all costs and damages, including reasonable attorneys fees, finally awarded
against Licensee that are directly attributable to such infringement, up to a
limit of
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ONE MILLION DOLLARS ($1,000,000), provided that ALCATEL is (a) given written
notice of any communications or actions taken with respect to such claim,
including copies of such communications, as soon as practicable but in no event
later than fourteen (14) calendar days after Licensee's receipt of such
communications, and (b) given the sole authority and reasonable assistance
necessary to defend or settle such claim.
This indemnity shall not apply if the alleged infringement arises from
(a) the use of any Software supplied that is produced in accordance with the
Licensee's specifications, designs or special instructions, (b) combining or
incorporating the Software with or into software components not furnished by
ALCATEL, if the Software alone would not have resulted in infringement, (c) the
use of the Software in a manner not contemplated by this Agreement, including in
a proprietary or patented process not contemplated herein, or (d) the Licensee's
modification of the Software.
If an injunction is obtained against Licensee's use of the Software, in
whole or in part, as a result of an infringement claim, or ALCATEL determines
that Licensee's use may be subject to such a claim, then ALCATEL may either: (a)
procure for Licensee the right to continue to use the Software, or (b) replace
or modify the Software with functionally equivalent or better Software so that
Licensee's use is not subject to the injunction or claim. If ALCATEL determines
that it cannot accomplish either of the foregoing in a commercially reasonable
manner, then Licensee may return to ALCATEL, or ALCATEL may require the return,
of the Software, or parts thereof, that are enjoined or determined by ALCATEL to
be subject to the claim. Upon ALCATEL's receipt thereof, it shall promptly
refund to Licensee the depreciated value of the returned Software or parts
thereof.
THE PROVISIONS OF THIS SECTION SET FORTH THE ENTIRE OBLIGATION OF
ALCATEL AND LICENSEE'S SOLE REMEDY WITH RESPECT TO ANY CLAIM OF INFRINGEMENT OF
ANY PATENT, COPYRIGHT, TRADE SECRET, OR OTHER INTELLECTUAL PROPERTY RIGHT OF A
THIRD PARTY, AND ALCATEL DISCLAIMS ALL OTHER WARRANTIES AND OBLIGATIONS WITH
RESPECT TO ANY SUCH CLAIM.
WARRANTY
ALCATEL warrants only that it has the right to license or sublicense
the Software covered under this Agreement. ALCATEL makes no further warranties
in this Agreement regarding the Software. The Software is provided "as is".
ALCATEL AND ITS SUPPLIERS AND LICENSORS DISCLAIM ALL OTHER WARRANTIES,
WHETHER EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR INTENDED OR PARTICULAR PURPOSE.
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LIMITATION OF LIABILITY
IN NO EVENT SHALL ALCATEL OR ALCATEL'S SUPPLIERS OR LICENSORS HAVE ANY
LIABILITY TO LICENSEE FOR CONSEQUENTIAL, INDIRECT, INCIDENTAL, OR SPECIAL
DAMAGES, INCLUDING, BUT NOT LIMITED TO, LOSS OF REVENUE OR PROFITS. ALCATEL'S
LIABILITY FOR ANY CLAIM, LOSS OR DAMAGE ARISING FROM OR IN CONNECTION WITH THIS
AGREEMENT SHALL BE LIMITED TO ACTUAL DAMAGES.
GENERAL
Licensee shall neither disclose the existence of this Agreement or its
terms and conditions, nor use the name of ALCATEL in any news release, public
announcement, advertisement, or other form of publicity without the prior
written consent of ALCATEL.
The rights and obligations of the parties and all interpretations and
performance of this Agreement shall be governed in all respects by the laws of
the State of Texas without regard to its conflict of laws rules.
This Agreement constitutes the entire agreement between ALCATEL and
Licensee with respect to the licensing of certain Software for use on certain
ALCATEL manufactured Equipment which Licensee obtained from a third party
through a transaction authorized by ALCATEL and supersedes all previous
negotiations, proposals, commitments, representations, writings, advertisements,
publications, and understandings of any nature whatsoever.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives effective the date of signature by
ALCATEL's authorized representative.
MAXXIS GROUP, INC. ALCATEL USA MARKETING, INC.
By: /s/ Xxxxxx X. Xxxxx By: /s/ Xxxxx Xxxxxx
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Name: Xxxxxx X. Xxxxx Name: Xxxxx Xxxxxx
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Title: President and CEO Title: Vice President
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Date: 9/30/98 Date: 10/1/98
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License Transfer, 9/29/98
