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Exhibit 10.4
SOFTWARE TRANSFER AGREEMENT
This Software Transfer Agreement ("Agreement") is dated as of August
____, 1994 and is between and among Sage Systems, Inc. ("Sage"), Xxxxx XxXxxxx,
Sr. ("Author") and Trendwest Resorts, Inc. ("Trendwest"). Author has created the
source code and object code for those certain software programs ("Software," as
more particularly described below). Author has transferred all right, title and
interest in and to the ownership of the Software to Sage, including without
limitation, all copyrights.
For the past several years, Trendwest has been licensing the Software
from Sage. Trendwest also has been obtaining Software support and maintenance
and certain contract services from Sage. Sage desires to transfer a
non-exclusive, restricted ownership interest in the Software to Trendwest, and
Trendwest desires to accept such ownership interest in the Software, on the
terms and conditions described herein.
For good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties agree:
1. Definitions. The following definitions apply whenever the specified
terms are used in this Agreement or in any attachments to this Agreement:
a. "Affiliate" means Trendwest and Worldmark, The Club, a
California not for profit corporation, all parents, divisions, subsidiaries and
sister entities of either Trendwest or Worldmark, The Club, and any and all
joint ventures, partnerships, corporations, limited liability companies and all
other entities in which either of Trendwest or Worldmark, The Club own or
otherwise hold at least a ten percent (10%) interest.
b. "Confidential Information" means confidential information
relating to the Software, now existing or hereafter arising, which includes,
without limitation, research, developments, inventions, technical data, and any
and all other processes, formulae, marketing plans or proposals, customer lists
or other customer information, financial information, or any observations, data,
written material, records or documents. Confidential Information includes any
such information whether or not such information was developed, devised or
otherwise created in whole or in part by th efforts of Author, Sage or
Trendwest. Confidential Information shall not include matters of public
knowledge, unless either such matters become public knowledge as a result of
unauthorized disclosure to the general public, or the combination of such
matters would amount to Confidential Information.
c. "Intellectual Property Rights" mean all intellectual property
rights arising under federal, state or common law regarding the Software.
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d. "Know-How" means all information, now existing or hereafter
acquired, known to Author or Sage and related in any way to the Software,
including without limitation information directly or indirectly related to any
formula, method, procedure, process, design, or other subject matter that
contributes in whole or in part to the present or future development,
exploitation, utilization or understanding of the Software
e. "Software" means the computer software programs listed in
Exhibit A, together with all associated source codes, object codes
documentation, Intellectual Property Rights, Confidential Information, Know-How
and Trade Secrets.
f. "Trade Secrets" mean any and all Confidential Information that
is or would be a trade secret pursuant to RCW Chapter 19.108.
2. Transfer of Ownership Interest in the Software. Sage (and Author, to
the extent necessary to convey the interest being transferred to Trendwest
pursuant to this Section 2) hereby sells, conveys, assigns and otherwise
irrevocably transfers to Trendwest a non-exclusive ownership interest in and to
the Software.
a. Permitted Uses. Subject only to the restrictive uses set forth
in Section 2(b), Trendwest shall have full right, power and authority to
exercise its ownership interest as a joint owner of the Software, which
ownership interest shall include, without limitation, the rights to (a)
incorporate the Software into Trendwest operational and accounting systems, (b)
establish additional operational and accounting systems that incorporate the
Software, (c) use, service and support such systems which incorporate the
Software, and (d) modify the Software and create derivative works of the
Software, and manufacture such modified Software.
b. Restricted Uses. Trendwest may license the Software, and
manufacture operational and accounting systems that incorporate the Software for
further sale, but such sales, licenses or other transfers shall be made only to
related Trendwest entities and Affiliates. In particular, Trendwest shall not
engage in the business of mass marketing and licensing of the Software for
commercial purposes. Nothing in this Section 2(b) shall prohibit Trendwest from
transferring the Software to another unrelated entity in connection with a
merger, consolidation, share exchange, sale of assets, or other transfer of
interest not in the ordinary course of Trendwest's business.
3. Further Assurances. Author and Sage shall execute such additional
documents and take such reasonable further steps as may be necessary or
desirable to ensure that Trendwest shall have full joint ownership of the
Software as contemplated in this Agreement, including without limitation federal
copyright registrations of the Software.
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4. Miscellaneous
a Headings. The headings of the sections and paragraphs of this
Agreement are inserted for convenience only, and shall not control or affect the
meaning or construction of any of its provisions.
b. Waiver of Breach. The waiver of any breach of any provision of
this Agreement, or failure to enforce any provision hereof, shall not operate or
be construed as a waiver of any subsequent breach by any party.
c. Disputes. In any litigation or dispute arising out of this
Agreement, the substantially prevailing party will be entitled to recover all
reasonable costs and attorneys' fees, including costs and fees on appeal.
d. Rights Cumulative. The provisions of this Agreement shall not be
construed as limiting any rights or remedies that either party may otherwise
have under applicable law.
e. Severability. The invalidity of all or any part of any section
of this Agreement shall not render invalid the remainder of this Agreement or
the remainder of such section. If any provision of this Agreement is so broad as
to be unenforceable, such provision shall be interpreted to be only so broad as
is enforceable.
f. Governing Law. The rights and obligations under this Agreement
shall in all respects be governed by the laws of the State of Washington.
g. Integration. This Agreement constitutes the entire understanding
between the parties pertaining to the subject matter contained in it, and
supersedes all prior and contemporaneous agreements, representations and
understandings of the parties. This Agreement may not be altered, amended,
modified or otherwise changed in any respect whatsoever, except by a writing
duly executed by the parties.
DATED on the day first set forth above.
AUTHOR:
__________________________________
Xxxxx XxXxxxx, Sr.
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SAGE:
SAGE SYSTEMS, INC.
By:_______________________________
Its____________________________
TRENDWEST:
TRENDWEST RESORTS, INC.
By________________________________
Its_____________________________
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