EXHIBIT 10.18
SOFTWARE LICENSE AGREEMENT
This Agreement, dated as of June 30, 1999 ("Effective Date"), is made and
entered into by and between Xxxxxx.xxx Corporation., a Delaware Corporation
("Xxxxxx.xxx"), and CyberSourceCorporation, a Delaware Corporation
("CyberSource"). Xxxxxx.xxx and CyberSource are sometimes referred to herein
individually as a "Party" and collectively as the "Parties." The Parties agree
as follows:
Section 1. Definitions
Whenever used in this Agreement with initial letters capitalized, the
following terms will have the following specified meanings:
"Client" means a customer of CyberSource that has entered into a
contractual agreement to purchase Internet commerce services from CyberSource
Subscription.
"Competitor" means any corporation or other entity that is in the business
of providing electronic commerce transaction services to third party entities.
"CyberSource Subscription" means a subscription for CyberSource services or
products.
"Exclusivity Period" means the period of time beginning on the Effective
Date of this Agreement and ending two (2) years thereafter.
"License" means the license granted by Xxxxxx.xxx to CyberSource under
paragraph 2.1.
"Licensed Software" means the software described on the attached Exhibit A.
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"Make" (or such conjugation thereof as the context may require) means to
create, write, prepare, develop, originate or otherwise make (or such
conjugation thereof as the context may require).
"Modified Software" means any derivative work or modification of the
Licensed Software that is Made by CyberSource.
"Proprietary Right" means any patent, copyright, trademark, trade secret or
other intellectual property right.
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[*] = CERTAIN INFORMATION CONTAINED IN THIS EXHIBIT HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
Section 2. The Licensed Software
2.1 License Grant
Subject to the terms and conditions of this Agreement, Xxxxxx.xxx
hereby grants to CyberSource a perpetual (subject to paragraph 5.2), non-
exclusive (subject to paragraph 2.4), transferable (except as permitted under
paragraph 6.5), worldwide license to do the following:
(a) copy, reproduce, modify, market and otherwise use the Licensed
Software as reasonably required for the business of CyberSource;
2.2 Deliverables
Upon execution of this Agreement, Xxxxxx.xxx will deliver to CyberSource
a reproducible copy of the Licensed Software in the format(s) described on the
attached Exhibit A.
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2.3 License Fee
Upon execution of this Agreement, CyberSource will pay to Xxxxxx.xxx a
non-refundable license fee of Six Hundred Thousand Dollars ($600,000).
2.4 Exclusivity
During the Exclusivity Period, Xxxxxx.xxx will not license or otherwise
distribute the Licensed Software to any Competitor of CyberSource. However,
Xxxxxx.xxx may license or otherwise distribute the Licensed Software during the
Exclusivity Period to any third party that is not a Competitor of CyberSource,
provided that such third party has the right to use the Licensed Software only
for its own internal purposes and not for resale. Xxxxxx.xxx warrants to
CyberSource that, as of the date of this Agreement, Xxxxxx.xxx has not licensed
or otherwise distributed the Licensed Software to any third party.
Section 3. Proprietary Rights
3.1 Licensed Software
Subject to the License, Xxxxxx.xxx reserves any and all right, title and
interest (including, without limitation, all Proprietary Rights) in and to the
Licensed Software. No title to the Licensed Software is transferred to
CyberSource under this Agreement.
3.2 Modified Software
Subject to Xxxxxx.xxx's rights in the Licensed Software as set forth in
paragraph 3.1, CyberSource will be the owner of any and all right, title and
interest (including, without limitation, all Proprietary Rights) in and to any
and all Modified Software, free of any claims
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whatsoever by Xxxxxx.xxx. In the event that CyberSource decides to market
services resulting from the Licensed Software and/or Modified Software,
CyberSource agrees that said service will be made available to Xxxxxx.xxx at the
then current price for said service, or as otherwise mutually agreed-upon by
Xxxxxx.xxx and CyberSource.
3.3 Further Action
Each Party will take such action (including, but not necessarily limited
to, the signature and delivery of documents) as the other Party may reasonably
request to effect, perfect or evidence the right title and interest of each
Party in any Proprietary Rights as set forth in this Section 3.
Section 4. Disclaimers
4.1 Licensed Software
a. THE LICENSED SOFTWARE IS PROVIDED TO CYBERSOURCE "AS IS," "WITH ALL
FAULTS, DEFECTS, BUGS, ERRORS AND OMISSIONS" AND WITHOUT EXPRESS OR
IMPLIED WARRANTY OF ANY KIND. WITHOUT LIMITATION OF THE FOREGOING,
XXXXXX.XXX MAKES NO WARRANTY WITH RESPECT TO THE LICENSED SOFTWARE,
INCLUDING, WITHOUT LIMITATION, ANY: (A) IMPLIED WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE; (B) IMPLIED
WARRANTY ARISING FROM COURSE OF PERFORMANCE, COURSE OF DEALING OR
USAGE OF TRADE; OR (C) IMPLIED WARRANTY OF NONINFRINGEMENT.
b. XXXXXX.XXX FURTHER WARRANTS THAT TO THE BEST OF ITS KNOWLEDGE THE
LICENSED SOFTWARE DOES NOT INFRINGE THE INTELLECTUAL PROPERTY OR
OTHER PROPRIETARY RIGHTS OF ANY THIRD PARTY.
Section 5. Termination
5.1 Termination for Material Breach or Default
a. If CyberSource commits a material breach of or default under
this Agreement, then Xxxxxx.xxx may give CyberSource written
notice of the breach or default (including, but not necessarily
limited to, a statement of the facts relating to the breach or
default, the provisions of this Agreement that are in breach or
default and the action required to cure the breach or default)
and that this Agreement will terminate pursuant to this
paragraph if the breach or default is not cured within [thirty
(30)] days after CyberSource receives such notice (or such
later date as may be specified in such notice). If CyberSource
fails to cure the specified breach or default within such
[thirty (30)]-day period (or
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such later date as may be specified in such notice), then this
Agreement will terminate.
b.
5.2 Effect of Termination for CyberSource's Breach
Upon any termination of this Agreement pursuant to paragraph 5.1, the
following will apply:
(a) the License for the Licensed Software will terminate; and
(b) the Parties' respective rights and obligations under paragraph
5.2 and Sections 3, 4 and 6 will survive the termination of this
Agreement.
Section 6. Miscellaneous
6.1 Limitation of Liability
EXCEPT FOR THE PARTIES' OBLIGATIONS UNDER PARAGRAPH 6.2 AND FOR A BREACH
BY EITHER PARTY OF THE OTHER PARTY'S PROPRIETARY RIGHTS AS SET FORTH IN SECTION
3, NEITHER PARTY WILL HAVE ANY OBLIGATION OR LIABILITY FOR ANY INDIRECT,
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR FOR ANY LOSS OF REVENUE, PROFIT
OR SAVINGS. IN NO EVENT WILL XXXXXX.XXX'S LIABILITY UNDER THIS AGREEMENT EXCEED
THE AMOUNT OF THE LICENSE FEES PAID BY CYBERSOURCE TO XXXXXX.XXX UNDER THIS
AGREEMENT.
6.2 Indemnity
a) Xxxxxx.xxx will hold CyberSource harmless defend at Xxxxxx.xxx's
expense any legal cause of action brought against CyberSource, to
the extent that such cause of action is based upon a claim that the
Licensed Software provided hereunder infringes a copyright, United
States patent, trade secret, or other intellectual property rights
of a third. Xxxxxx.xxx will pay those costs and damages incurred by
or awarded against CyberSource which are attributable to any such
claim, provided that (i) CyberSource notifies Xxxxxx.xxx in writing
promptly after CyberSource becomes aware of such claim or the
possibility thereof (provided however that the failure to so notify
shall not affect CyberSource's rights to indemnification hereunder
unless, and then only to the extent that, the Xxxxxx.xxx has been
actually prejudiced thereby); and, (ii)
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Xxxxxx.xxx has sole control of the settlement, compromise,
negotiation, and defense of any such action (provided however that
written consent of CyberSource shall be required in the event that
the settlement confers any admission of liability by or injunctive
relief against CyberSource); and, (iii) CyberSource cooperates, in
good faith, in the defense of any such legal action.
b) CyberSource will hold Xxxxxx.xxx harmless defend at CyberSource's
expense any legal cause of action brought against Xxxxxx.xxx, to the
extent that such cause of action is based upon a claim that the
Modified Software hereunder infringes a copyright, United States
patent, trade secret, or other intellectual property rights of a
third. CyberSource will pay those costs and damages incurred by or
awarded against Xxxxxx.xxx which are attributable to any such claim,
provided that (i) Xxxxxx.xxx notifies CyberSource in writing
promptly after Xxxxxx.xxx becomes aware of such claim or the
possibility thereof (provided however that the failure to so notify
shall not affect Xxxxxx.xxx's rights to indemnification hereunder
unless, and then only to the extent that, the CyberSource has been
actually prejudiced thereby); and, (ii) CyberSource has sole control
of the settlement, compromise, negotiation, and defense of any such
action (provided however that written consent of Xxxxxx.xxx shall be
required in the event that the settlement confers any admission of
liability by or injunctive relief against Xxxxxx.xxx); and, (iii)
Xxxxxx.xxx cooperates, in good faith, in the defense of any such
legal action.
6.3 Independent Contractor
The parties are independent contractors. This Agreement will not be
interpreted or construed to create or evidence any agency, partnership or
similar relationship between the parties or to impose any agency, partnership or
similar obligation or liability upon either party.
6.4 Notices
Any notice or other communication given by one Party to the other Party
under this Agreement will be deemed properly made if given in writing and
delivered in person, sent via facsimile or overnight courier or mailed, properly
addressed and stamped with the required postage, to the intended recipient at
the address listed on the signature page of this Agreement and to the attention
of the person signing this Agreement. Either Party may from time to time change
its address for notices and other communications under this Agreement by giving
the other Party notice of such change in accordance with this paragraph.
6.5 Assignment
Neither party will assign this Agreement or any of its rights under this
Agreement to any third party without the prior written consent of the other
party, which consent will not be unreasonably withheld. However, either party
may assign this Agreement without such
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consent to any successor of the other party by way of any merger, consolidation
or other corporate reorganization of the assigning party or any sale of all or
substantially all of the assets of the assigning party, provided that such
successor assumes or is otherwise fully bound by all of the obligations of the
assigning party under this Agreement. No assignment by either party, with or
without such consent, will relieve said party from any of its obligations under
this Agreement. Subject to the foregoing restriction on assignment, this
Agreement will be fully binding upon, inure to the benefit of and be enforceable
by the Parties and their respective successors and assigns.
6.6 Governing Law
This Agreement will be interpreted, construed and enforced in all
respects in accordance with the laws of the State of California without
reference to its choice of law principles.
6.7 No Waiver
The failure of either Party to insist upon or to enforce strict
performance of any provision of this Agreement, or to exercise any right or
remedy under this Agreement, will not be interpreted or construed as a waiver or
relinquishment to any extent of such Party's right to assert or rely upon any
such provision, right or remedy in that or any other instance; rather, the same
will be and remain in full force and effect.
6.8 Entire Agreement
This Agreement sets forth the entire agreement, and supersedes any and
all prior agreements, between the Parties with regard to the subject matter
hereof. No amendment of this Agreement will be valid unless set forth in a
written instrument signed by the Parties.
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IN WITNESS WHEREOF, the Parties have entered into this Agreement as of the
date first set forth above.
Xxxxxx.xxx: CyberSource:
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Xxxxxx.xxx Corporation CyberSourceCorporation
By: /s/ Xxxx Xxx By: /s/ Xxxxxxx X. Xxxxxxxxx
--------------------------------- -----------------------------------
Name: Xxxx Xxx Name: Xxxxxxx X. Xxxxxxxxx
Title: V.P., Corporate Development --------------------------------
Title: CEO, President
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Address: 0000 Xxxx Xxxxxxx Xxx. Address:550 X. Xxxxxxxxxx Xxxx.
Xxxxxxxxx, XX 00000 ------------------------------
Xxx Xxxx, XX 00000
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Attention: Xxxx Xxx Attention: Legal Department
Facsimile: 000-000-0000 --------------------
Facsimile: 000-000-0000
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EXHIBIT A
1. Licensed Software:
Source Code Files
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File Name Description
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File Name Description
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File Name Description
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2. Format(s) for delivery of Licensed Software:
digitally delivered over Internet
3. Description of Licensed Software:
See attached next page.
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
[ALL INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED INFORMATION.]
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