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EXHIBIT 10.46
CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
LICENSE AND MARKETING AGREEMENT
BETWEEN
INTEGRATED FINANCIAL SERVICES, INC.
AND
PHOENIX INTERNATIONAL LTD., INC.
This is a License and Marketing Agreement (the "License Agreement")
dated as of November 26, 1996, between Phoenix International Ltd., Inc.
("Phoenix") and Integrated Financial Services, Inc.("IFS").
IFS is the owner of certain computer programs and related
documentation, including the intellectual property rights pertaining thereto,
for the following six products: CreditPak, ConsumerPak, MortgagePak, BranchPak,
FeePak, and A&LPak (collectively, the "Pak Products"). Phoenix desires to
obtain from IFS a right and license to the Pak Products in order to re-market
the Pak Products to certain of its customers. IFS is willing to grant such
rights and licenses under the terms and conditions of this License Agreement.
Certain capitalized terms used in this License Agreement are defined in Section
9.7.
Phoenix and IFS, intending to be legally bound, agree as follows:
1. LICENSE
1.1. GRANT. In consideration for the payments described in Section
3.1, IFS hereby grants to Phoenix a worldwide, irrevocable, nonexclusive,
perpetual right and license to make, use, reproduce, and display, for purposes
of modification in connection with the interface of such Pak Products with
Phoenix's products; to make derivative works of the Pak Products for use as
part of or in connection with Phoenix's products and consistent with the
marketing rights granted herein; and, subject to compliance with Section 1.2,
sublicense, re-market, and distribute copies of each of the Pak Products to
XXXX of its customers or prospective customers. The rights and licenses
granted hereunder shall include the right and license to copy and display all
pictorial, graphic, or audiovisual works created as a result of the execution
of the Pak Products, even if such pictorial, graphic, or audiovisual works are
created by or with other programming or through other means. Title to all Pak
Programs, including an enhancements or modifications, shall at all times remain
solely with IFS.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
1.2. SUBLICENSE RESTRICTIONS. The Code portion of the Pak Products
may be sublicensed and distributed only in object code form. Phoenix shall
require each recipient of any product that contains the Pak Products, in whole
or in part, to be subject to the restrictions set forth in this Section 1.2.
Such restrictions shall be set forth in a written agreement signed by the
recipient prior to or upon receipt of the product.
1.2.1. The recipient may (a) make XXXXXXXXXXX portion of the
Pak Products in machine-readable form for nonproductive backup purposes only
and (b) use the Pak Products only for internal purposes and not for service
bureau work, multiple-user licenses, or time-sharing arrangements.
1.2.2. The recipient may not use, copy, modify, or transfer
the Pak Products, or any copy, adaptation, transcription, or merged portion
thereof, except as expressly permitted by IFS and Phoenix. The recipient's
rights are nonexclusive and nonassignable. If the recipient attempts to
transfer possession of any copy, adaptation, transcription, or merged portion
of the Pak Products to any other party (except with the prior written consent
of Phoenix and IFS), the recipient's rights in the Pak Products are
automatically terminated.
1.2.3. IFS shall have the sole and exclusive ownership of
all right, title, and interest in and to the Pak Products, including ownership
of all trade secrets and copyrights pertaining thereto, subject only to the
rights and privileges expressly granted by IFS hereunder.
1.2.4. The recipient is not entitled to receive source code,
and under no circumstances may the recipient reverse-compile or
reverse-assemble the object code.
1.2.5. The recipient must reproduce and include in all
copies of the Pak Products prepared by the recipient, and in all adaptations
thereof, any copyright notices and proprietary legends of IFS and, as
applicable, Phoenix, as they appear in the Pak Products and on the media
containing the Pak Products supplied to the recipient by IFS or Phoenix.
1.2.6. The recipient's obligations shall remain in effect
for as long as the recipient continues to possess or use any of the Pak
Products, and such obligations shall be for the benefit of IFS and shall be
enforceable by IFS.
1.3. SUBSIDIARIES OF PHOENIX. Phoenix may transfer, assign, or
sublicense the rights and licenses granted hereunder to one or more direct or
indirect subsidiaries of Phoenix, and each such subsidiary may correspondingly
transfer, assign, or sublicense such rights and licenses to any other
subsidiaries of Phoenix, provided that no such transfer shall operate to expand
the licenses granted hereunder and provided that in each case such subsidiaries
agree to be bound by the obligations of Phoenix and Phoenix remains bound by
the obligations it assumes under this License Agreement. For purposes hereof,
a subsidiary shall consist of any corporation,
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
partnership, joint venture, or other entity in which Phoenix has at least 50%
of the profits or voting rights.
1.4. PATENT RIGHTS. IFS further grants to Phoenix, its successors
and assigns, and any sublicensees and customers a worldwide, perpetual,
royalty-free, irrevocable, and nonexclusive immunity from suit under any
patents owned or licensable by IFS at any time during the term of this License
Agreement, as necessary for Phoenix to exercise any other rights and licenses
granted under this License Agreement.
2. MARKETING RIGHTS AND OBLIGATIONS OF PHOENIX
2.1. LEVEL OF EFFORT. Phoenix hereby undertakes to use its
reasonable commercial efforts to promote the sale, distribution, lease, and/or
sublicensing of the Pak Products to its customers and prospective customers.
2.2. MARKETING, INSTALLATION, AND TRAINING. IFS hereby grants to
Phoenix, for the term of this License Agreement, and Phoenix hereby accepts,
the exclusive right to market and distribute the Pak Products to XXXX of
Phoenix's current or prospective customers. Phoenix will provide IFS with a
list of such customers, updated from time to time and at least quarterly. IFS
agrees to keep such list confidential and not to pursue business development
efforts or enter into other marketing or licensing or sublicensing arrangements
with any entity on this list during the terms of this Agreement. Although
Phoenix will have the option to market the Pak Products and provide training to
its customers using Phoenix personnel, Phoenix and IFS agree to negotiate in
good faith to enter into a separate agreement on terms satisfactory to each
party under which IFS personnel will assist in such marketing and training.
2.3. RIGHT TO OBTAIN ADDITIONAL LICENSE RIGHTS. IFS agrees to
extend this Agreement from time to time or to enter into additional license
agreements with Phoenix providing Phoenix with the right to sublicense the Pak
Products beyond the XX customer limitation herein. Each such extension or new
agreement shall be on terms and conditions acceptable to both parties, except
that IFS also agrees that each such extension or new agreement will be on terms
and conditions no less favorable to Phoenix than IFS has offered or provided to
any other third party.
2.4. BACK-UP LICENSE. Simultaneously with the execution of this
License Agreement, IFS and Phoenix shall enter into a back-up license in form
and substance satisfactory to Phoenix.
3. PAYMENTS
3.1. INITIAL FEE. Phoenix shall pay IFS a one-time initial royalty
fee of XXXXX as follows: (i) upon execution of this Agreement, XXXXX in cash
(to be offset against the expenses payable by IFS under Section 9.6 below), and
(ii) XXXXX no later than XXXX, which may be paid in cash or by cancellation of
indebtedness.
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
3.2. RECURRING LICENSE FEES. Subject to compliance with Section
1.2, Phoenix may market and sublicense the Pak Products on terms, including
price, which Phoenix determines to be appropriate, provided that Phoenix agrees
to consult with IFS from time to time regarding such terms. Phoenix shall be
entitled to XXX of the first XXXXXX generated by the marketing and sublicensing
of the Pak Products pursuant to this Agreement. Thereafter, Phoenix shall be
entitled XXXXXXX, and IFS shall be entitled to XXX, of such XXXXXXX. Phoenix
agrees to provide an accounting to IFS quarterly, and at such other times as
may reasonably be requested by IFS, of the revenues it generates and the
sublicense agreements it enters into. Phoenix shall make all payments owing to
IFS pursuant to Section this 3.2 promptly after receipt by Phoenix of such
amounts.
4. MAINTENANCE AND SUPPORT OF PAK PRODUCTS
4.1. MAINTENANCE AND SUPPORT. Upon execution of this License
Agreement, IFS shall modify, at its own expense, the Pak Products as requested
by Phoenix in order to ensure that the Pak Products adequately interface with
the Phoenix system and also to include the enhancements which have been
requested by Phoenix's customers in connection with IFS's demonstrations of the
Pak Products prior to the date of this Agreement. IFS also agrees to provide
maintenance and support for the Pak Products for the term of this License
Agreement.
4.2. DELIVERY OF MAINTENANCE MODIFICATIONS AND BASIC ENHANCEMENTS.
IFS shall deliver to Phoenix, when and as prepared by IFS in the course of its
business, all basic enhancements and maintenance modifications to the Pak
Products arising from time to time, for inclusion in the Code and/or
documentation for the Pak Products. IFS agrees to consider and discuss with
Phoenix any proposal of Phoenix with respect to the preparation of possible
further basic enhancements and maintenance modifications.
5. PROPRIETARY PROTECTION
5.1. ACKNOWLEDGMENT OF CONFIDENTIALITY. Phoenix acknowledges that
the source code (the "Confidential Materials") consists of confidential
information of IFS. Phoenix shall treat the Confidential Materials in
confidence and shall not use, copy, or disclose them, nor permit any of its
personnel to use, copy, or disclose them, for any purpose that is not
specifically contemplated by this License Agreement.
5.2. PROPRIETARY LEGENDS. All Code and documentation shall be
marked with IFS's copyright notice. All products using the Pak Products
offered by Phoenix shall display IFS's copyright notice. However, Phoenix may
xxxx with its own copyright notice and register any Derivative Works of the
Code and documentation prepared by Phoenix. The parties agree to cooperate in
any such registration and to provide necessary information and prepare and
deliver duly executed documents reasonably required in such regard. In
addition, Phoenix agrees to notify IFS in advance of sublicensing or marketing
the Pak Products to any entity outside the
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
United States, so that IFS may take appropriate steps to obtain copyright
protection in such other countries.
6. REPRESENTATIONS AND WARRANTIES
6.1. RIGHT AND AUTHORITY. IFS represents and warrants that (a) it
is the owner of the Pak Products, including the Code and related documentation
and including all intellectual property rights therein under copyright, patent,
trademark, trade secret, and other applicable law; (b) it has the full and
sufficient right and authority to grant the rights and licenses granted herein;
(c) the Code and documentation have not been published under circumstances that
have caused loss of any U.S. copyright therein; and (d) the Code and
documentation, to the best of IFS's knowledge, do not infringe any copyright or
other intellectual property right of any third party.
6.2. WARRANTY. IFS warrants that the Pak Products will perform in
the manner specified in the system user manual, and will properly interface
with Phoenix's system, for a period of 90 days after each delivery of the Pak
Products pursuant to a sublicense in compliance with Section 1.2. IFS will
correct as soon as reasonably possible any Product which is non-conforming
during the term of the warranty period.
7. LIMITATION OF LIABILITY
7.1. EXCLUSION OF CONSEQUENTIAL DAMAGES, ETC. In no event shall
either party be liable to the other for any consequential, indirect, special,
or incidental damages, even if such party has been advised of the possibility
of such potential loss or damage. The foregoing limitations shall not be
construed to diminish the obligations of indemnity set forth in Section 8
hereof.
7.2. LIMITATION OF LIABILITY. In no event shall IFS be liable for
amounts in excess of the direct damages for breach of this License Agreement up
to the total amount actually paid by Phoenix hereunder. In no event shall
Phoenix be liable for amounts in excess of the direct damages for breach of
this License Agreement up to XXXXXXXXXXXXXXXXX exclusive of amounts payable in
accordance with the terms of this License Agreement.
8. INDEMNIFICATION
8.1. SCOPE OF INDEMNIFICATION. IFS hereby indemnifies and holds
harmless Phoenix, its successors, and its assigns, including any customers,
from any loss, liability, claim, or damage regarding the Code or any
documentation supplied hereunder, based on any actual or alleged infringement
of a patent, copyright, trade secret, or other intellectual proprietary right
of any third party. If such a claim arises, or if in IFS's judgment is likely
to arise, Phoenix agrees to allow IFS, at IFS's option, to procure the right
for Phoenix to continue to exercise its
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rights and licenses granted herein or to replace or modify them in a
functionally equivalent manner so they become non-infringing.
8.2. LIMITATIONS. IFS shall have no obligation under Section 8.1
hereof with respect to any claim of infringement of copyright, trade secret, or
other intellectual proprietary right based upon Phoenix's modification of the
Code or documentation or their combination, operation, or use with programs or
equipment not specified by IFS.
8.3. INDEMNIFICATION BY PHOENIX. Except for the matters addressed
in Section 8.1 hereof, Phoenix indemnifies and holds harmless IFS from any and
all loss, liability, claims, and damages based upon or relating to Phoenix's
products or any services offered by Phoenix involving the use of the Code and
related documentation, based on the performance or nonperformance of such
services, or based upon representations or commitments made by Phoenix or its
agents.
8.4. CONDITIONS. The foregoing indemnity obligations shall be
contingent upon the party seeking indemnity (a) giving prompt written notice to
the other party of any claim, demand, or action for which indemnity is sought;
(b) fully cooperating in the defense or settlement of any such claim, demand,
or action; and (c) obtaining the prior written agreement of the indemnifying
party to any settlement or proposal of settlement, which agreement shall not
unreasonably be withheld.
9. MISCELLANEOUS
9.1. TERMS CONFIDENTIAL. IFS and Phoenix shall hold in confidence
the terms of compensation set forth herein, and neither party hereto shall
disclose such terms to any other person or entity without the prior consent of
the other, or as may be required to comply with the Securities and Exchange
Commission reporting requirements.
9.2. FREEDOM OF ACTION. This License Agreement shall not be
construed to limit Phoenix's right to obtain services or software programs from
other sources, nor shall this License Agreement be construed to limit IFS's
right, except as provided in Section 2, to grant others any further
nonexclusive right or license in the Code and documentation. This License
Agreement alone establishes the rights, duties, and obligations of Phoenix and
IFS with respect to the subject matter hereof. Phoenix shall have no right or
interest whatsoever in any product of IFS other than the rights and licenses in
the Code or documentation granted herein, whether such product is conceived or
developed by IFS before, during, or after the course of IFS's performance of
this License Agreement. Nothing in this License Agreement shall be construed
to obligate Phoenix to a specified level of effort in its promotion and
marketing of the Pak Products and/or Phoenix's products incorporating the Pak
Products.
9.3. INDEPENDENT CONTRACTOR. Phoenix shall hold itself out only as
an independent contractor of IFS. or permitted to be given hereunder shall be
made in writing and shall be deemed effective when
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XXX-CONFIDENTIAL TREATMENT REQUESTED
AND CONFIDENTIAL PORTIONS FILED
SEPARATELY WITH THE COMMISSION
9.4. NOTICES. All notices, authorizations, consents, or other
communications required delivered in person, one day after being sent by
overnight carrier, or three days after being sent by certified mail, as
follows:
IF TO PHOENIX: Phoenix International Ltd., Inc.
000 Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxx, Xxxxxxx 00000
IF TO IFS: Integrated Financial Services, Inc.
0000 Xxxxxxxxxxxx Xxxx
Xxxxxxxx 000, Xxxxx 000
Xxxxxxx, Xxxxxxx 00000
Any party hereto may change its address for purposes hereof by so
notifying the other party.
9.5. MERGER, ETC. This License Agreement contains the whole
understanding of the parties with respect to the subject matter hereof and
supersedes all prior oral or written representations and agreements between the
parties relating thereto. This License Agreement may not be varied except by a
writing duly executed by both parties.
9.6. ATTORNEYS' FEES. IFS shall pay the attorneys' fees and
expenses incurred by Phoenix in connection with the negotiation, preparation,
and execution of this License Agreement and the stock purchase agreement
entered into between Phoenix and IFS concurrently with this License Agreement,
and the related agreements and documents in connection with these transactions.
The parties agree that these fees and expenses will total XXXXX. In addition,
in the event suit is brought or arbitration commenced to enforce or interpret
any part of this License Agreement, the prevailing party shall be entitled to
recover as an element of its cost of suit or arbitration, and not as damages,
reasonable attorneys' fees to be fixed by the court or arbitrator. The
"prevailing party" shall be the party, if any, who is entitled to recover its
costs of suit or arbitration, whether or not the suit or arbitration proceeds
to final judgment. The party not entitled to recover its costs of suit or
arbitration shall not recover attorneys' fees.
9.7. CERTAIN DEFINITIONS. When used in this License Agreement, the
capitalized terms listed below shall have the following meanings:
"CODE" shall mean computer programming code. If not otherwise
specified, Code shall include both object code and source code. Code shall
include maintenance modifications and enhancements thereto if, when, and to the
extent they are delivered to Phoenix by IFS under this License Agreement or
under any other agreement or arrangement between the parties.
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9.8. SUCCESSORS AND ASSIGNS. This License Agreement shall bind and
inure to the benefit of the parties hereto and their respective successors and
assigns. Neither party may assign its obligations hereunder to any other
party.
9.9. COUNTERPARTS. This License Agreement may be executed in one
or more counterparts, all of which shall be considered one and the same License
Agreement, and shall become effective when one or more such counterparts have
been signed by each of the parties and delivered to the other party.
10. TERMINATION
10.1. TERMINATION. IFS may, at its option, terminate this License
Agreement in the event of a failure of Phoenix to pay the fees required
hereunder. Phoenix may, at its option, terminate this License Agreement in the
event of a material breach by IFS. In each case, such termination may be
effected only through a written notice, specifically identifying the breach on
which termination is based. Following receipt of such notice, the party in
breach shall have 90 days to cure such breach, and this License Agreement shall
terminate in the event that such cure is not effected by the end of such
period.
10.2. SURVIVAL. In the event of the termination of this License
Agreement, in whole or in part, the provisions of Sections 5 through 10, as
well as such other provisions of this License Agreement as are addressed in
Section 10.3 hereof, shall survive and continue in effect.
10.3. RIGHTS NOT AFFECTED. The termination of this License
Agreement shall not affect any paid-up right or license theretofore attained by
Phoenix or any sublicensee of Phoenix, nor shall it impair the right or license
of any third party in Pak Products that have been or may yet be sublicensed in
accordance with this License Agreement. Notwithstanding the termination of
this License Agreement, Phoenix may continue to exercise the rights and
licenses granted hereunder as necessary to provide maintenance and support for
existing Pak Products sublicensed in accordance with Section 1.2.
IN WITNESS WHEREOF, the parties hereto have executed this License
Agreement upon the date first written above.
PHOENIX INTERNATIONAL LTD., INC. INTEGRATED FINANCIAL SERVICES, INC.
By: /s/ Xxxxxx Xxxxxxxxxx By: /s/ B. Xxxxx Xxxxx
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Name: X. Xxxxxxxxxx Name: B. Xxxxx Xxxxx
Title: Chairman & CEO Title: President & CEO
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