EXHIBIT 10.11
Development and License Agreement between the Registrant and Microsoft
Corporation, dated December 3, 1992
MICROSOFT CORPORATION
DEVELOPMENT AND LICENSE AGREEMENT
(Wonderware)
This Development and License Agreement (the "Agreement") is made and entered
into as of the later of the two dates on the signature page (the "Effective
Date") by and between WONDERWARE CORPORATION ("COMPANY"), a California
corporation, and MICROSOFT CORPORATION ("MS"), a Delaware corporation.
In consideration of the covenants and conditions hereinafter set forth, MS and
COMPANY agree as follows:
1. Development of Licensed Software. COMPANY shall develop and license to MS
on a non-exclusive basis a custom-designed software program for the
implementation of a Network DDE server on Windows NT which will compile and
run on both x86 and MIPS platforms (the "LICENSED SOFTWARE"), all in
accordance with the specifications attached hereto as Exhibit A and
incorporated by this reference (the "Specifications").
2. Delivery Schedule. COMPANY shall complete and deliver the LICENSED
SOFTWARE to MS according to the following schedule:
LICENSED SOFTWARE (or portion thereof) Due Date
Beta Quality Code January 1, 1993
Final Acceptance March 31, 1993
MS shall evaluate the LICENSED SOFTWARE and shall submit a written acceptance or
rejection to COMPANY within fifteen (15) days after MS' receipt of the LICENSED
SOFTWARE. Conformity to the Specifications and COMPANY's warranties herein shall
solely determine MS' right to accept or reject the LICENSED SOFTWARE. If
rejected, COMPANY shall promptly correct the LICENSED SOFTWARE. If COMPANY fails
to correct the licensed software within fifteen (15) days after notice of
rejection, MS may terminate this Agreement with no further obligation to
COMPANY.
3. License.
COMPANY hereby grants to MS a worldwide, fully paid, perpetual,
non-exclusive, irrevocable license (a) to use, modify, create derivative
works based upon, reproduce, distribute or license, or sell, rent or lease
copies of, the LICENSED SOFTWARE, in source and object code forms, and
derivative works thereof, and (b) to license third parties to exercise the
foregoing rights, including the right to license such rights to further
third parties.
Notwithstanding anything in license granted above to the contrary, MS shall
not license the source code of the LICENSED SOFTWARE or any derivative of
the LICENSED SOFTWARE to DEC for inclusion in non-MS operating systems. The
foregoing sentence, however shall not preclude DEC from shipping Network
DDE on versions of Windows NT that DEC licenses from MS.
4. Payment and Other MS Obligations.
(a) Royalties. In consideration for the development of the LICENSED
SOFTWARE and all royalties thereto, MS shall pay COMPANY [One Hundred
Thousand and no/100 Dollars ($100,000)] for the LICENSED SOFTWARE in
the following manner:
(i) [Thirty Thousand and no/100 Dollars ($30,000)] shall be paid to
COMPANY on the Effective Date of this Agreement;
(ii) [Forty Thousand and no/100 Dollars ($40,000)] shall be paid to
COMPANY upon MS' release of the beta version of the LICENSED SOFTWARE;
and
(iii)[Thirty Thousand and no/100 Dollars ($30,000)] shall be paid to
COMPANY upon MS' final acceptance of the LICENSED SOFTWARE.
(b) Limited License for Rights to MS PRODUCTS.
(i) License Grant. In addition to the payment described in subsection
(a) above, in consideration for the LICENSED SOFTWARE, upon
execution of this Agreement MS will provide COMPANY with one copy
of CLIPBOOK and CLIPSRV from Windows for Workgroups Version 3.1
and one copy of CLIPBOOK and CLIPSRV from Windows NT Version 3.1
(collectively, the "MS PRODUCTS") in source code form. MS hereby
grants COMPANY a limited, non-exclusive, non-transferable,
non-assignable, royalty-free ,perpetual license to: (a) modify
and adapt the MS PRODUCTS in source code form as needed to port
the MS PRODUCTS to MS and non-MS operating systems; and (b) to
reproduce and distribute worldwide such MS PRODUCTS in object
code form. COMPANY agrees that it will always distribute the MS
PRODUCTS pursuant to the terms of COMPANY's end-user license
agreement ("XXXX"). COMPANY's XXXX may be a "break-the-seal" end
user license agreement or a signed end user license agreement.
COMPANY's XXXX shall conform substantially to the terms and
conditions of the MS end user license agreement. MS agrees to
provide COMPANY with changes made to the MS PRODUCT to correct
defects or bugs in the MS PRODUCTS. Except as expressly provided
above, however, MS shall have no obligation to provide COMPANY
any updates or enhancements to the MS PRODUCTS, or any other
software or product.
(ii) MS' Proprietary Rights to MS PRODUCTS. COMPANY acknowledges that,
subject to the limited licenses granted above, all right, title
and interest in the MS PRODUCTS belong to MS and no proprietary
rights to the MS PRODUCTS whatsoever are being transferred under
this Agreement.
(iii)Restrictions on COMPANY's Use of MS PRODUCTS' Names. COMPANY
shall not use the words or names CLIPBOOK OR CLIPSERVE, or any
confusingly similar declaration thereof, in or pertaining to any
of COMPANY's products or in any COMPANY's marketing or
advertising.
(iv)Trademark Notices. Both parties shall use the appropriate
trademarks, product descriptors and trade symbols (either "(TM)"
or "(R)" in a superscript) when using the trademarks of the other
party in advertising, publicity, literature, packaging and other
promotional activities in connection with the other party's
products.;
(c)Windows NT Changes. Furthermore, in order to enable COMPANY to
complete the LICENSED SOFTWARE, MS hereby agrees to implement those
changes to Windows NT as set forth on Exhibit B attached hereto and
incorporated by this reference (the "WINDOWS NT Changes"). The WINDOWS
NT Changes is a complete and final list of such changes and can only be
modified by written consent of authorized representatives of both
parties. MS shall complete the WINDOWS BT Changes no later than
December 1, 1992.
(d)No Other MS Obligations. MS' payment and other obligations to the
COMPANY under this Agreement shall be limited to the payments and
obligations described in this Section 4; MS shall not otherwise be
responsible for any expenses or obligations of, or royalties to,
COMPANY.
5. Other COMPANY Obligations. In considerations of the obligations of MS
hereunder, COMPANY also covenants that COMPANY recognizes that Network DDE
and CLIPBOOK/CLIPSRV are components of Windows for Workgroups and as such
COMPANY will not market or promote Network DDE and CLIPBOOK/CLIPSRV as a
complete replacement for Windows for Workgroups.
6. Disclosure. COMPANY expressly undertakes to retain in confidence all
information and know-how transmitted to COMPANY by MS that MS has
designated as proprietary and/or confidential or that, by the nature of the
circumstances surrounding the disclosure, ought in good faith to be treated
as proprietary and/or confidential, and will make no use of such
information and know-how except under the terms and during the existence of
this Agreement. COMPANY's obligation under this Section 6 with respect to
any particular information shall extend to the earlier of such time as the
information protected hereby is in the public domain through no fault of
COMPANY or ten (10) years following its receipt by COMPANY.
7. Ownership of LICENSED SOFTWARE. Subject to the license granted above, all
right, title and interest in the LICENSED SOFTWARE belongs to COMPANY and
no proprietary rights of the LICENSED SOFTWARE are being transferred,
assigned or affected by this Agreement.
8. COMPANY Warranties. COMPANY warrants that:
(a) The LICENSED SOFTWARE as delivered to MS does not infringe any
copyright, patent, trade secret, or other proprietary right held by any
third party
(b) The LICENSED SOFTWARE will meet the Specifications listed in
Exhibit A of this Agreement; and
(c) The services provided by COMPANY shall be performed in a professional
manner and shall be of a high grade, nature, and quality.
9. Indemnity.
(a)COMPANY agrees to indemnify, defend, and hold MS and its successors,
officers, directors and employees harmless from any and all actions,
causes of action, claims, demands, costs, liabilities, expenses and
damages arising out of or in connection with any claim that the
LICENSED SOFTWARE, names, and marks furnished or licensed by COMPANY
under this Agreement constitute an infringement of any confidential
information, trade secret, patent, copyright, trademark, trade name, or
other legal right of any third party. COMPANY further agrees to
indemnify, defend, and hold MS and its successors, officers, directors
and employees harmless from any and all actions, causes of action,
claims, demands, costs, liabilities, expenses and damages arising out
of or in connection with any claim that COMPANY's modifications or
adaptations of the MS PRODUCTS under this Agreement constitute an
infringement of any confidential information, trade secret, patent,
copyright, trademark, trade name, or other legal right of any third
party.
(b)If any action shall be brought against MS in respect to which
indemnity may be sought from COMPANY pursuant to the provisions of this
Section 9, MS shall promptly notify COMPANY in writing, specifying the
nature of the action and the total monetary amount sought or other such
relief as is sought therein. MS shall cooperate with COMPANY at
COMPANY's expense in all reasonable respects in connection with the
defense of any such action. COMPANY may upon written notice thereof to
MS undertake to conduct all proceedings or negotiations in connection
therewith, assume the defense thereof, and if it so undertakes, it
shall also undertake all other required steps or proceedings to settle
or defend any such action, including the employment of counsel which
shall be satisfactory to MS, and payment of all expenses. MS shall have
the right to employ separate counsel and participate in the defense
thereof. COMPANY shall reimburse MS upon demand for any payments made
or loss suffered by it at any time after the date hereof, based upon
the judgment of any court of competent jurisdiction or pursuant to a
bona fide compromise or settlement of claims, demands, or actions, in
respect to any damages to which the foregoing relates.
(c) If the LICENSED SOFTWARE furnished hereunder is in any action held
to constitute an infringement and its use is enjoined, COMPANY
shall immediately and at its expense:
(i) procure for MS the right to continue use, sale, and marketing of
the LICENSED SOFTWARE, or
(ii) replace or modify the LICENSED SOFTWARE with a version of the
LICENSED SOFTWARE that is non-infringing.
If (i) or (ii) are not available to COMPANY, COMPANY shall refund to
MS all amounts paid to COMPANY by MS hereunder.
(d) This indemnity provision shall survive any termination or
expiration of this Agreement.
10. Termination. If the LICENSED SOFTWARE is not delivered on the due date(s)
specified above, or if the LICENSED SOFTWARE does not meet the Specifications in
Exhibit A, or if the services provided by COMPANY are not performed in a
professional manner or are not of a high grade, nature, and quality, MS may, at
its option and upon written notice to COMPANY, terminate this Agreement and/or
have the LICENSED SOFTWARE properly prepared at COMPANY's expense.
11. Notices and Requests. All notices and requests in connection with this
Agreement shall be deemed given as of the date they are received by messenger,
delivery service, or in the United States of America mails, postage prepaid,
certified or registered, return receipt requested, and addressed as follows:
COMPANY: WONDERWARE CORPORATION
Arter, Hadden, Xxxxxx, Xxxxx & Hall
0 Xxxx Xxxxx (Xxxxxxxx Xxxxxx)
Xxxxxx, XX 00000
Attention: Xxxxxxx X. XxXxxxx
MS: MICROSOFT CORPORATION
Xxx Xxxxxxxxx Xxx
Xxxxxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxxxx Xxxxxx
with a cc to: MICROSOFT CORPORATION
Xxx Xxxxxxxxx Xxx
Xxxxxxx, Xxxxxxxxxx 00000-0000
Attention: Law & Corporate Affairs
12. Miscellaneous:
(a) COMPANY is an independent contractor for MS, and nothing in this
Agreement shall be construed as creating an employer-employee
relationship, a partnership, or a joint venture between the
parties.
(b) In the event taxes are required to be withheld on payments made
hereunder by any U.S. (state or federal) or foreign governments, MS may
deduct such taxes from the amount owned COMPANY and pay them to the
appropriate taxing authority. MS shall in turn promptly secure and
deliver to COMPANY an official receipt for any taxes withheld. MS will
use reasonable efforts to minimize such taxes to the extent permissible
under applicable law.
(c) This Agreement shall be governed by the laws of the State of
Washington and COMPANY consents to jurisdiction and venue in the
state and federal courts sitting in the State of Washington. In
any action or suit to enforce any right or remedy under this
Agreement or to interpret any provision of this Agreement, the
prevailing party shall be entitled to recover its costs, including
reasonable attorneys' fees.
(d) Agreement does not constitute an offer by MS and it shall not be
effective until signed by both parties. This Agreement constitutes
the entire agreement between the parties with respect to the
LICENSED SOFTWARE and all other subject matter hereof and merges
all prior and contemporaneous communications. It shall not be
modified except by a written agreement dated subsequent to the
date of this Agreement and signed on behalf of COMPANY and MS by
their respective duly authorized representatives.
(e) This Agreement may be assigned by MS but shall not be assigned by
COMPANY without MS' prior written approval. Except as otherwise
provided, this Agreement shall be binding upon and inure to the
benefit of the parties' successors and lawful assigns.
MICROSOFT CORPORATION WONDERWARE CORPORATION
Xxxxxx Xxxxxx Xxxxxx Xxxxx
By (Sign) By (Sign)
Director, Advanced Windows President, CEO
Title Title
12/3/92 Dec 2, 1992
Date Date
00-0000000
COMPANY's Federal
Employer ID Number or
Social Security Number
Appendix A (Specifications)
This appendix specifies what Wonderware Software Development Corporation
(hereafter referred to as Wonderware) will deliver to Microsoft Corporation
(hereafter referred to as Microsoft) for the Microsoft Windows NT product as
specified in the development contract.
Network DDE
Wonderware will develop and component test the Network DDE component. Network
DDE is a system service which runs in the Local System account and services
network DDE requests. The Network DDE component has two parts, a client and a
server.
Network DDE Client
The Network DDE client will perform the following functions:
* Forward network DDE requests to the appropriate computer.
* For forwarding to Windows NT servers, the username, domain name,
and password is sent to allow the server side to perform a
network logon. The LSA challenge-response architecture will be
applied to pass the DES encrypted password over the network.
* For forwarding to Windows for Workgroup servers, the username and
password is sent to allow the server side to authenticate the
request. The Windows for Workgroups DES password encryption
scheme will be applied to pass the password over the network.
* Network DDE sessions, connections, and conversations will only be
started by using DDE with the appropriate AppTopic syntax.
* Network DDE client will log Error, Warning, and Information
events to the system event log as appropriate.
Network DDE Server
The Network DDE server will perform the following functions:
* Receive and service Newtork DDE requests from Windows NT and
Windows for Workgroup computers.
* Perform network logons using the username, domain name, and
password passed by Windows NT clients. The LSA challenge-response
architecture will be applied to pass the DES encrypted password
over the network.
* Perform network logons using the username, and password, and if
available the domain name, passed by Windows for Workgroups
clients. The LSA challenge-response architecture will be applied
to pass the DES encrypted password over the network.
* Act as a secure service, using impersonation of the client for
all accesses on its behalf including:
Initiation of a Network DDE conversation
Executes in a Network DDE conversation
Requests for each item in a Network DDE conversation
Advises for each item in a Network DDE conversation
Pokes for each item in a Network DDE conversation
* If there is a user interactively logged onto the server computer
and that user has added the share to their Trusted Shares List to
configure Network DDE to start an application on the client's
behalf:
Will run the application in the security context of the user
interactively logged on to the server
Will run the application minimized, restored, or maximized as
specified in the Network DDE share information or in the Trusted
Share List information for the user logged on to the server.
* Network DDE server will log Error, Warning, and Information
events to the system event log as appropriate.
DSDM
Wonderware will develop and component test the DSDMJ component. DSDM is a system
service which runs in the Local System account and services DDE Share requests.
* Act as a secure service, using impersonation of the client for all
accesses on its behalf including:
Enumerating Network DDE shares
Querying for Network DDE share information
Changing Network DDE shares
Adding Network DDE shares
Deleting Network DDE shares
* Provide API to allow the following functionality:
Enumeration of Network DDE shares
Query for Network DDE share information
Set Network DDE share information
Adding a Network DDE share
Deleting a Network DDE share
* DSDM will log Error, Warning, and Information events to the system event
log as appropriate.
Appendix B (Windows NT Changes)
This appendix specifies the modifications Microsoft Corporation will make to
Windows NT to enable Network DDE support as a part of this development and
license agreement.
* Microsoft will allow Network DDE to run in the security
context of Local System, and to create invisible windows on
the default desktop for the purposes of DDE communications.
* Microsoft will increase the timeouts for OLE clients to
allow for network delays.
* Microsoft will provide an API or other mechanism to set the
"quality of service" for DDE clients.
* Microsoft will provide an API for DdeImpersonateClientWindow
() that provides impersonation without requiring the client
to have a thread per conversation client window.
