EXHIBIT 10.1
***TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80 (B)(4),
200.83 AND 240.24B-2
AGREEMENT RESPECTING MODIFIED VERSION OF DESKTOP DNA(TM)
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PREVIO, INC. INFORMATION: MIRAMAR SYSTEMS, INC. INFORMATION:
------------------------ ---------------------------------
Miramar Address for Notice:
Previo Address For Notices: 00 Xxxx Xxxxxxxx Xxxxxx
00000 Xxxx Xxxxx Xxxxx, Xxxxx 000 Xxxxx Xxxxxxx, XX 00000
Xxx Xxxxx, XX 00000
Previo Contact Person: Miramar Contact Person:
Xxxxx Xxxxxxx Xxxx Xxxxxxx
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Previo Contact Person Telephone Number: Miramar Contact Person Telephone Number:
000-000-0000 000-000-0000 x000
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Previo Contact Person Email Address Miramar Contact Person Email Address:
xxxxx.xxxxxxx@xxxxxx.xxx xxxx@xxxxxxx.xxx
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This Agreement ("Agreement") is entered into by and between Miramar
Systems, Inc., a California corporation (hereinafter "Miramar"), and Previo,
Inc., a Delaware corporation (hereinafter, "Previo"), effective as of the date
fully signed by both parties as indicated at the bottom of this cover page (the
"Contract Date"). This Agreement consists of this cover page and the following
15 pages, in addition to the Exhibits and Schedules that are attached hereto and
incorporated herein by reference. The parties have executed this Agreement on
this cover page below intending to be bound hereby as of the signed and in
consideration of the promises, covenants and agreements set forth herein.
PREVIO, INC., MIRAMAR SYSTEMS, INC.
a Delaware corporation a California corporation
By: /S/ XXXXX XXXXXXX By: /S/ X. X. XXXXX
----------------------- -----------------------
Print Name: Xxxxx Xxxxxxx Print Name: X. X. Xxxxx
Title: CFO Title: CFO
Date: October 12, 2000 Date: October 6, 2000
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MIRAMAR AND PREVIO AGREE AS FOLLOWS:
ARTICLE 1.0 GENERAL AGREEMENT; PURPOSE
The purpose of this Agreement is to set forth the terms and conditions upon
which: (a) Miramar will develop and deliver to Previo a modified version of that
certain software program developed, marketed and sold by Miramar commonly known
as "Desktop DNA" (the existing version of such software referred to herein as
the "Product" and the modified version developed pursuant to this Agreement
being referred to herein as the "Modified Product"); and (b) Previo will
incorporate the Modified Product with and into its current and future versions
of Previo's "eSupport Essentials" product offerings (collectively referred to as
the "Previo Product") for license to third party users either directly by Previo
or through Previo's authorized resellers.
ARTICLE 2.0 TERM
The initial term of this Agreement shall commence on the Contract Date and
shall terminate on the last day before the second anniversary of the Acceptance
Date (as such term is defined below). Subject to the termination right set forth
in this Article 2, upon the expiration of the initial two year term, the term of
this Agreement shall automatically be renewed for consecutive annual periods,
and each such renewal annual term shall terminate on the last day before the
following anniversary of the Acceptance Date. Notwithstanding the foregoing,
either party may terminate this Agreement effective at the expiration of the
initial two year term or any subsequent renewal annual term by giving not less
than 90 days notice to the other party prior to the expiration of the then
current term, except that Miramar's right to such termination is not available
with respect to the first annual period subsequent to the initial two year term.
Should Previo elect to continue the term of this agreement for a one year period
subsequent to the initial two year term, then Previo will make additional
royalty prepayments as shown in schedule 3 to this agreement. This termination
right, and the term as set forth in this Article are subject to the early
termination rights of the parties set forth elsewhere in this Agreement.
ARTICLE 3.0 DEVELOPMENT OF MODIFIED PRODUCT
Section 3.1. PROCESS DOCUMENTS
3.1.1 Product Requirements Document ("PRD")
As soon as possible after the Contract Date, but not later than 30 days
after the Contract Date, Previo shall prepare and deliver to Miramar a Product
Requirements Document ("PRD") which shall outline Previo's requirements for the
Modified Product. The PRD shall contain sufficient detail and be presented in a
format which will enable Miramar to modify the Product to develop the Modified
Product in accordance with Previo's specifications. Previo shall update, revise
or clarify the PRD as may reasonably be necessary upon Miramar's request in
order to resolve ambiguities or uncertainties in the PRD. The parties shall work
together in the interpretation and understanding of the requirements of the PRD.
3.1.2 Test Plan
Miramar will deliver to Previo within the time period shown on Schedule 1
attached hereto and incorporated herein by this reference, a Test Plan
describing the tests that Miramar will execute on the Product and the Modified
Product prior to delivering code to Previo. Miramar shall update, revise or
clarify the Test Plan as may reasonably be necessary upon Previo's request in
order to resolve ambiguities or uncertainties in the Test Plan.
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3.1.3 Acceptance Test Plan
Previo will deliver to Miramar within the time period shown on Schedule 1
an Acceptance Test Plan describing the tests and configurations to be used by
Previo in determining whether the Modified Product conforms to the PRD. Previo
shall update, revise or clarify the Acceptance Test Plan as may reasonably be
necessary upon Miramar's request in order to resolve ambiguities or
uncertainties in the Acceptance Test Plan. Once agreed to by both parties, the
Acceptance Test Plan cannot be modified without approval of both parties.
Section 3.2. MODIFICATION OF THE PRODUCT
Upon receipt of the PRD, Miramar shall commence the development of the
Modified Product in accordance therewith. Previo shall deliver or otherwise make
available to Miramar all interfaces, required Previo Product code, technical
information and technical assistance as may reasonably be required by Miramar to
develop the Modified Product such that the Modified Product will function and
integrate with the Previo Product in the manner described in the PRD.
Section 3.3. DELIVERY OF MODIFIED PRODUCT; ACCEPTANCE AND TESTING
3.3.1 Miramar shall deliver to Previo a "beta" binary code version
of the Modified Product for testing by Previo, and one or more nearly final
versions ("Release Candidates") leading to a final "shipping" version of the
Modified Product within the time periods shown on Schedule 1. At the time
Miramar delivers code versions to Previo, it will also provide a list of any
unresolved bugs ("Defects") that may exist.
3.3.2 Previo shall, upon receipt of the beta version of the Modified
Product, test the Modified Product according to the Acceptance Test Plan to
determine if it conforms with the PRD and otherwise if it functions with the
Previo Product. Previo shall provide to Miramar written comments ("Defects")
concerning the conformance of the Modified Product with the PRD and otherwise
with respect to the functionality of the Modified Product within the time period
shown on Schedule 1 to permit Miramar to further modify the Modified Product to
create a Release Candidate that meets the requirements of the PRD and otherwise
satisfies Previo's requirements for the Modified Product. At the end of the beta
test period, Previo and Miramar shall review the combined list of Defects and
mutually agree on those that must be rectified in the Release Candidate ("Must
Fixes") and Previo will then document such through a mutually agreed upon
written summary ("Release Plan").
3.3.3 Miramar shall provide to Previo within the time period shown
on Schedule 1 a Release Candidate. Previo shall, within the time period shown on
Schedule 1, either accept or reject the Release Candidate version of the
Modified Product, using procedures defined in the Acceptance Test Plan. Previo
may reject the Release Candidate only in the event the Modified Product fails to
conform with the requirements of the PRD, fails to function properly when
integrated with the Previo Product, or fails to conform to the Release Plan.
Previo's rejection shall be in writing delivered to Miramar within the time
provided on Schedule 1, which writing shall include a statement of the basis for
rejection, including any additional Defects. Previo and Miramar will mutually
agree on Defects resulting in additional Must Fixes and document such through a
mutually agreed upon and updated Release Plan.
3.3.4 In the event Previo duly rejects the Release Candidate of the
Modified Product, Miramar shall further modify the Modified Product to address
the problems stated on the updated Release Plan, and shall return the modified
Release Candidate version to Previo within the time period shown on Schedule 1.
Previo shall test such modified Release Candidate within the time period shown
on Schedule 1, according to the Acceptance Test Plan. Previo shall accept the
Release Candidate unless the Release Candidate fails to conform to the updated
Release Plan or unacceptable side effects are introduced as a result of
correcting Must Fixes, in which case Previo may reject the modified Release
Candidate by giving written notice of rejection which shall include a statement
for the basis for rejection, including additional Defects.
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3.3.5 In the event Previo rejects the modified Release Candidate of
the Modified Product under Section 3.3.4, the process described in Sections
3.3.3 and 3.3.4 will be repeated.
3.3.6 Previo's acceptance of the Release Candidate version of the
Modified Product may be either through its affirmatively giving written notice
of acceptance or by its failing to reject within the time periods specified in
Schedule 1. Previo's acceptance shall be effective on the earlier of the day on
which Previo gives written notice of Acceptance to Miramar and the last day for
rejection as specified on Schedule 1 without Previo's having duly rejected the
Modified Product (such date being referred to herein as the "Acceptance Date").
3.3.7 Within 30 days after the Acceptance Date, Previo shall
integrate the Modified Product with and into all versions of the Previo Product
sold, licensed and distributed directly by Previo or via an ASP or MSP
subscription service, or distributed through Previo's authorized resellers;
provided, however, that Miramar acknowledges that Previo may provide a version
of the Previo Product without the Modified Product to one or more OEM, ASP, or
MSP resellers in the event such OEM, ASP, or MSP resellers are unwilling to
accept the Previo Product with the Modified Product integrated therein.
Section 3.4. PAYMENTS FOR DEVELOPMENT OF THE MODIFIED PRODUCT
Previo shall pay a total of [...***...] to Miramar as a fee for
nonrecurring engineering of the Modified Product (the "NRE Fee"). The NRE Fee
shall be payable as follows:
3.4.1 [...***...] shall be payable upon the Contract Date;
3.4.2 [...***...] shall be payable upon delivery by Miramar of the
beta version of the Modified Product; and
3.4.3 [...***...] shall be payable upon the Acceptance Date.
Article 4.0 LICENSE GRANTS
Section 4.1. GRANT OF LICENSE IN MODIFIED PRODUCT
Miramar hereby grants to Previo an exclusive, worldwide license to use,
possess, reproduce, and to incorporate the Modified Product with and into the
Previo Product only for the purpose of marketing and relicensing the Modified
Product as an integrated feature of the Previo Product, to Previo's customers
and licensees in the ordinary course of its business, either directly or through
resellers. The scope of the license grant includes the right to market and
license the Previo Product with the Modified Product integrated therein directly
to third parties, via an ASP or MSP subscription model, or through an authorized
Previo OEM reseller.
Confidential Information *CONFIDENTIAL TREATMENT REQUESTED
19
Section 4.2. GRANT OF RIGHT TO USE MIRAMAR TRADEMARK
Miramar grants to Previo the right to use Miramar's trade names and
trademarks, including the "Desktop DNA" and "Miramar Systems, Inc." trademarks,
exclusively for the purposes set forth in this Agreement and for no other
purpose. The use of Miramar's trade names and trademarks by Previo shall be
subject to and in accordance with Miramar's written instructions and policies
delivered to Previo from time to time.
Section 4.3. GRANT OF LICENSE IN PREVIO PRODUCT FOR DEVELOPMENT OF
MODIFIED PRODUCT
Previo hereby grants to Miramar a license in so much of the Previo Product
as is provided to Miramar in accordance with Section 3.2 above in connection
with Miramar's development of the Modified Product to use and copy the Previo
Product only as necessary to develop the Modified Product in accordance with the
PRD and as otherwise instructed by Previo.
Section 4.4. LICENSES CO-TERMINUS WITH TERMINATION OF AGREEMENT
Subject to the provisions of Article 6 below, the licenses granted under
this Article 4 shall terminate automatically and without further action upon the
termination of this Agreement for any reasons, excepting as described in Section
9.2.3 below.
Article 5.0 OWNERSHIP
Section 5.1. OWNERSHIP OF THE PRODUCT
Miramar represents that it has all rights in and to the Product as are
necessary to market and license the Product and to modify the Product to develop
the Modified Product. Nothing in this Agreement is intended to constitute a
license or other transfer of any interest in the Product by Miramar to Previo,
nor does this Agreement confer unto Previo any right to license or transfer any
rights in the Product or any copy of the Product.
Section 5.2. OWNERSHIP OF THE PREVIO PRODUCT
Previo represents that it has all rights in and to the Previo Product as
are necessary to market and license the Previo Product and to integrate the
Modified Product with and into the Previo Product. Except as provided in Article
4 above, nothing in this Agreement is intended to constitute a license or other
transfer of any interest in the Previo Product by Previo to Miramar, nor does
this Agreement confer unto Miramar any right to license or transfer any rights
in the Previo Product. Except as is expressly authorized herein, Miramar shall
not copy, modify, reproduce, reverse engineer, decompile, disassemble, or
otherwise attempt to determine the source code for the Previo Product in any
way. Miramar shall not have the right to make any derivative works based on the
Previo Product, or the underlying ideas, concepts and know-how on which it is
based.
Section 5.3. OWNERSHIP OF THE MODIFIED PRODUCT
Full ownership of, and title to, the Modified Product and all copies
thereof and all associated documentation, and the proprietary rights therein,
shall remain with and be vested in Miramar and its licensors, subject to the
license granted in Section 4.1 above. Except as is expressly authorized herein,
Previo shall not copy, modify, reproduce, reverse engineer, decompile,
disassemble, or otherwise attempt to determine the source code for the Modified
Product, or for the Product, in any way. Previo shall not have the right to make
any derivative works based on the Modified Product or the Product, or the
underlying ideas, concepts and know-how on which they are based.
Article 6.0 END-USERS
Previo shall only distribute the Modified Product as an integrated feature
of the Previo Product as contemplated herein to end-users - directly or through
resellers - under the terms of a signed or otherwise validly accepted license
agreement which as to proprietary rights, limitations of liability, warranty and
consequential damages, are at least as protective and restrictive as the Miramar
End-User License accompanied with the Product, a copy of which is attached
hereto as EXHIBIT A. Previo shall make no representations or warranties on
behalf of Miramar. Previo agrees to indemnify, defend, and hold Miramar harmless
from and against any claim, injury, loss or expense, including reasonable
attorneys' fees, arising out of (a) the failure of Previo to comply with the
provisions of this entire Article 6, or (b) any other wrongful conduct of
Previo, its resellers or agents.
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Article 7.0 SOURCE CODE ESCROW
Section 7.1. ESTABLISHMENT OF ESCROW
Upon written request of Previo, Miramar will establish an escrow
arrangement with a suitable third party software escrow company. This escrow
arrangement will require Miramar to deposit with the escrow company the latest
version of the source code for the Modified Product, along with the necessary
tools and documentation to permit Previo to perform necessary maintenance to the
Modified Product. Such escrow, and the obligation to maintain the same, will
terminate concurrent to the termination of this Agreement. Previo acknowledges
that the source code is Confidential Information of Miramar and is proprietary
to Miramar and that any use thereof which is an infringing use or which is
beyond the license granted in this Agreement will cause irreparable harm to
Miramar and that injunctive relief shall be available to Miramar to prevent or
stop any such use. The source code to the Modified Product along with any
modifications to the source code will remain the property of Miramar
notwithstanding its release. In the event that the condition which resulted in
the release of source code to the Modified Product is removed or remedied, then
Previo shall return all source code and related modifications to Miramar within
5 working days of written request by Miramar certifying that these conditions
have been eliminated.
Section 7.2. RELEASE CONDITIONS
The escrow instructions will set forth the conditions whereby the escrow
holder will be authorized to release the source code to Previo. These conditions
shall include, and be limited to: (i) Miramar's ceasing to maintain or support
the Modified Product according to the terms and conditions in this Agreement;
(ii) Miramar's ceasing to do business generally; (iii) Miramar's having
transferred all or substantially all of its assets or obligations to a third
party where such third party has not assumed all of the obligations of Miramar
as set forth in this Agreement; (iv) Miramar's having transferred all or
substantially all of the Product, its further development, or its support
obligations to a third party where such third party has not assumed all of the
obligations of Miramar as set forth in this Agreement. In the event such third
party is unwilling or unable to perform such support obligations as defined in
this Agreement, then Previo shall receive a source code release.
Section 7.3. FEES AND EXPENSES IN CONNECTION WITH ESCROW
Previo agrees to pay for, or reimburse Miramar for all of the out of pocket
expenses associated with (i) establishing an escrow arrangement for the source
code to the Modified Product; and (ii) all on going out of pocket expenses
associated with the continuation of such an escrow arrangement including, but
not limited to, annual fees, deposit fees and release fees.
Section 7.4. ARBITRATION
The escrow instructions shall provide for expedited arbitration proceedings
in the event of any disagreement or dispute respecting the occurrence or
nonoccurrence of any release condition, including, but not limited to, the
appointment of a single arbitrator and limited discovery and argument
proceedings.
Section 7.5. EXPANDED LICENSE RIGHTS
Section 7.6. Upon such Release Conditions as described in Section 7.2,
and notwithstanding the provisions of Section 5.3, the license rights granted to
Previo will expand to allow it to perform routine maintenance of the Modified
Product for a period of time corresponding to the then current term of the
contract, as defined in Sections 2.0 and 9.2.3, plus 1 year, such rights to
terminate earlier according to the provisions of Section 7.1.
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Article 8.0 MAINTENANCE AND SUPPORT
Section 8.1. ERRORS, BUGS AND MALFUNCTIONS
During the term of this Agreement, Miramar shall exercise commercially
reasonable efforts to promptly correct any error, bug, or malfunction in the
Modified Product reported by Previo.
Section 8.2. MAINTENANCE
MIRAMAR shall provide Previo with maintenance for the Modified Product
throughout the term of this Agreement. Maintenance shall consist of the
following:
(a) A technical support contact to support Previo from 8 am to 5 pm
Monday through Friday PST will be identified within 30 days of the Acceptance
Date. Miramar will simultaneously provide to Previo an escalation contact in
Miramar management to address situations wherein the response times described
below are not met or when a Severity 1 problem as described in Section 8.3 has
been identified by Previo management. In addition, a procedure for contacting
these persons will be established, which will include their telephone numbers,
email addresses, and any other related information;
(b) Miramar shall exercise commercially reasonable efforts to respond
to Previo's technical support requests as promptly as possible and in no event
later than within 8 business hours for Severity 1, 16 business hours for
Severity 2, or 24 business hours for Severity 3 problems (with Severity
definitions described in Section 8.3), from the time of initial contact by
Previo ; and
(c) Previo will receive all updates and upgrades to the Product that
pertain to the Modified Product as they become commercially available. Previo
and Miramar shall mutually agree upon a modified Acceptance Test Plan to be
executed by Previo to ascertain whether the updated Modified Product functions
correctly in the target environment. Miramar shall exercise commercially
reasonable efforts to promptly correct any malfunctions found during such tests.
(d) Previo may from time to time identify enhancements to the Modified
Product that will increase its value in the market. Previo will present these
enhancements to Miramar through an updated PRD. Should the parties mutually
agree that such enhancements are worthwhile and feasible, they will attempt to
negotiate an amendment to this Agreement to include these enhancements.
Section 8.3. ERROR REPORTING
Previo shall report and classify errors in the shipping Modified Product to
Miramar according to the following:
(a) Severity 1 - the Modified Product fails in a catastrophic manner
that makes it effectively useless to the customer in most if not all situations
in which the customer is interested in using the Modified Product. There are no
viable workarounds or alternatives. The customer may return the product if a
remedy is not forthcoming.
(b) Severity 2 - a significant feature or function of the Modified
Product fails in a manner that makes that feature or function effectively
useless to the customer in a significant number of situations in which the
customer is interested in using the Modified Product. There are no viable
workarounds or alternatives for the failing functionality.
(c) Severity 3 - Some portion of the Modified Product fails. The
customer has reasonable workarounds or alternatives for situations in which the
customer is interested in using the Modified Product.
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Subsequent to the termination of this agreement, and for a period of one
year after the last sale of the Modified Product by Previo, Miramar will provide
technical and developmental support as requested by Previo at an hourly amount
not to exceed of $100.00. Miramar shall provide an estimate to Previo of the
total hours anticipated to provide the requested maintenance prior to performing
such work, and shall not begin such work until Previo has provided a purchase
order to Miramar authorizing the work.
Article 9.0 FEES
Section 9.1. FEES PAYABLE TO MIRAMAR
In consideration of the licenses, covenants and agreements granted
hereunder, Previo shall pay the following royalties and fees to Miramar:
9.1.1 The NRE Fee; as detailed in section 3.4 of this Agreement.
9.1.2 A royalty fee (the "Royalty Fee") equal to a percentage of
Previo's Net Revenues will be determined with reference to Previo's books and
records regularly maintained in accordance with GAAP. The Royalty Fee shall be
calculated and paid in accordance with the provisions of Section 9.2.
Section 9.2. ROYALTY FEE
9.2.1 "Net Revenues" is defined as gross revenues less any returns
and discounts which are earned as a result of: i) the shipping, licensing, or
distribution of the Previo Product by either Previo or a reseller of Previo,
commencing with the first shipment of the Previo Product in a form that includes
the Modified Product, or ii) subscription revenues through ASP or MSP models
(where a party other than Previo is the ASP or MSP) for the Previo Product in a
form that includes the Modified Product, or iii) royalty revenues from OEMs that
license the Previo Product in a form that includes the Modified Product. Net
Revenues specifically exclude revenues received solely on account of consulting
services. The percentages of Net Revenues from which the Royalty Fee will be
determined are as set forth on Schedule 2 attached hereto and incorporated
herein by this reference.
9.2.2 Previo or Previo's agent will keep adequate records regarding
all sales or other sources of Net Revenues, and the calculations thereof, during
the term of this Agreement and shall report to Miramar at the end of each
calendar quarter the total Net Revenues for the previous quarter and the manner
and basis for the calculation thereof, no later than the 30th day following the
end of the quarter. If Miramar reasonably believes that Previo's reporting is
inaccurate, Miramar may request that Previo have a mutually agreed-upon
independent auditor audit Previo's records in a non-disruptive manner and give
Miramar a written certification that such amounts are correct. Audits will occur
no more than once each twelve (12)-month period and the cost of such audits will
be borne by Miramar; provided, however, that in the event an audit reveals an
underpayment exceeding five percent (5%) then Previo, in addition to immediately
paying the underpayment plus interest on the underpaid amount computed at 1.5%
per month, shall also be responsible for the full reasonable cost of the audit,
but in no case for an audit cost exceeding $50,000.
9.2.3 Previo shall make prepayments toward the Royalty Fee in the
amounts and at the times set forth on Schedule 3 attached hereto and
incorporated herein by this reference. Such prepayments shall be in
consideration for the exclusivity provisions of Section 13.2 hereof (except for
payments 9-12 for which no exclusivity shall be ascribed), and shall be credited
to actual Royalty Fees on a dollar for dollar basis. If, upon the effective date
of the termination of this Agreement by either party, an amount of prepaid
Royalty Fees are in Miramar's possession and have not been previously credited
against actual Royalty Fees, the Agreement shall survive termination until the
earlier of: (a) the date on which actual unpaid Royalty Fees equal or exceed
unused prepaid Royalty Fees; and (b) one year after the date on which this
Agreement would have terminated but for this Section 9.2.3, except in the event
Previo has exercised its option to extend the term of this Agreement for a one
year term subsequent to the initial two year term, the Agreement shall survive
termination for a maximum of six additional months after the date on which this
Agreement would have terminated but for this section 9.2.3. Any prepaid Royalty
Fees remaining upon such termination shall be retained by Miramar.
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Section 9.3. TAXES
Each party shall be responsible for the taxes to which it is subject and
for which it is legally responsible. Previo shall be responsible for any and all
taxes arising out of the license of the Previo Product as contemplated herein.
Article 10.0 LIMITATION OF LIABILITY
NEITHER PARTY WILL BE LIABLE FOR ANY (I) INDIRECT, INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES INCLUDING BUT NOT LIMITED TO LOSS OF PROFITS OR LOSS OF
USE OR DATA OR (II) PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, ARISING OUT OF
ANY BREACH OR FAILURE UNDER THIS AGREEMENT, EVEN IF A PARTY HAS ADVISED THE
OTHER PARTY OF THE POSSIBILITY OF THE DAMAGE AND EVEN IF A PARTY ASSERTS OR
ESTABLISHES A FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY PROVIDED IN
THIS AGREEMENT.
Article 11.0 NON-DISCLOSURE AGREEMENT
Section 11.1. PREVIO'S AGREEMENT
Previo will retain in confidence, and require its employees and permitted
consultants and agents (including replicators), to retain in confidence all
Confidential Information of Miramar, and will make no use of such Confidential
Information, except under the terms and during the existence of this Agreement
(including any renewals of this Agreement), and for a period of three years
after. However, Previo shall have no obligation to maintain the confidentiality
of information that: (i) it received rightfully from another party prior to its
receipt from Miramar; (ii) Miramar has disclosed to a third party without any
obligation to maintain such information in confidence; (iii) Previo can document
as having been independently developed by or for Previo without use of Miramar's
Confidential Information; or (iv) becomes publicly available by means other than
breach of Previo's obligations under this Agreement. Further, Previo may
disclose Confidential Information as required by governmental or judicial order,
provided Previo gives Miramar prompt notice of such order and complies with any
protective order (or equivalent) imposed on such disclosure. Previo shall treat
the terms and conditions of this Agreement as confidential; however, Previo may
disclose such information in confidence to its immediate legal and financial
consultants as required in the ordinary course of Previo's business.
Section 11.2. MIRAMAR'S AGREEMENT
Miramar will retain in confidence, and require its employees and permitted
consultants, to retain in confidence all Confidential Information of Previo, and
will make no use of such Confidential Information except under the terms and
during the existence of this Agreement (including any renewals of this
Agreement) , and for a period of three years after. However, Miramar shall have
no obligation to maintain the confidentiality of information that: (i) it
received rightfully from another party prior to its receipt from Previo; (ii)
Previo has disclosed to a third party without any obligation to maintain such
information in confidence; (iii) Miramar can document as having been
independently developed by or for Miramar without use of Previo's Confidential
Information; or (iv) becomes publicly available by means other than breach of
Miramar's obligations under this Agreement. Further, Miramar may disclose
Confidential Information as required by governmental or judicial order, provided
Miramar gives Previo prompt notice of such order and complies with any
protective order (or equivalent) imposed on such disclosure. Miramar shall treat
the terms and conditions of this Agreement as confidential; however, Miramar may
disclose such information in confidence to its immediate legal and financial
consultants as required in the ordinary course of Miramar's business.
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Section 11.3. DEFINITION OF CONFIDENTIAL INFORMATION
As used in this Agreement, "Confidential Information" shall mean
information of a party including, without limitation, the terms and conditions
of this Agreement, the Previo Customer List defined in Section 14.2, computer
programs, code, algorithms, names and expertise of employees and consultants,
know-how, formulas, processes, ideas, inventions (whether patentable or not),
schematics, PRDs, Test Plans, Acceptance Test Plans, and other technical,
business, financial and product development plans, forecasts, strategies and
information that is marked "Confidential" or, if disclosed verbally, identified
as confidential at the time of disclosure or that, by the nature of the
circumstances surrounding the disclosure, ought in good faith to be treated as
confidential.
Article 12.0 LIMITED WARRANTY
Section 12.1. CONFORMITY WITH SPECIFICATIONS
Miramar warrants that the Modified Product will operate substantially in
conformity with the PRD for a period of three hundred and sixty five (365)
calendar days from the Acceptance Date. In the event that Previo finds what it
believes to be errors in or a failure of the Modified Product, as delivered to
Previo, that constitute a breach of the warranty set forth in this Section 12.1,
and provided that Previo has notified Miramar of such error or failure during
the warranty period, Miramar will use reasonable commercial efforts to promptly
correct, at no charge to Previo, any such errors or failures. This is Previo's
sole and exclusive remedy, and Miramar's sole obligation, for any express or
implied warranties hereunder. Miramar's obligation to provide ongoing
maintenance of the Modified Product is as described in Sections 8.1 and 8.2.
Section 12.2. LIMITATIONS ON WARRANTY
THE EXPRESS WARRANTY SET FORTH IN SECTION 12.1 CONSTITUTES THE ONLY
WARRANTY WITH RESPECT TO THE MODIFIED PRODUCT. MIRAMAR MAKES NO OTHER
REPRESENTATION OR WARRANTY OF ANY KIND WHETHER EXPRESS OR IMPLIED (EITHER IN
FACT OR BY OPERATION OF LAW) WITH RESPECT TO THE MODIFIED PRODUCT AND EXPRESSLY
DISCLAIMS ON THE BEHALF OF ITSELF AND ITS LICENSORS ALL WARRANTIES OF
MERCHANTABILTY OR FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT THERETO. MIRAMAR
DOES NOT WARRANT THAT THE MODIFIED PRODUCT OR DOCUMENTATION ARE ERROR-FREE OR
THAT OPERATION OF THE PRODUCT WILL BE UNINTERRUPTED AND HEREBY DISCLAIMS ANY ALL
LIABILTY ON ACCOUNT THEREOF. MIRAMAR EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED
WARRANTIES OF NON-INFRIGEMENTS; THE SOLE REMEDY FOR INFRINGEMENT IS PROVIDED IN
Article 16.0. THIS SUBSECTION SHALL BE ENFORCEABLE TO THE EXTENT ALLOWED BY
APPLICABLE LAW.
Article 13.0 PARTIAL EXCLUSIVITY
Section 13.1. GENERAL
Except as expressly provided in Section 13.2 below, the parties hereto
agree that nothing contained in this Agreement shall be construed as creating an
exclusive relationship between the parties; rather, this Agreement is
non-exclusive and nothing in this Agreement shall prevent either party from
entering into the same or similar relationship with others, or from marketing or
developing similar or competing relationships with others, or from pursuing any
business opportunities or concepts independently of the other parties to this
Agreement.
Confidential Information
25
Section 13.2. AS TO PREVIO COMPETITOR
Subject to the early termination provisions set forth in this Section, and
conditioned upon Previo's timely making the Royalty Fee prepayments contemplated
in Section 9.2.3 and Schedule 3, for a period commencing on the Contract Date
and terminating on a date which is two (2) years after the Acceptance Date,
Miramar agrees that it will not provide the Modified Product or a modified
version of the Product to one of Previo's competitors, [...***...]. Previo may,
at its option, extend the term of the restriction as set forth in this Section
by making the further prepayments of the Royalty Fee described in Schedule 3.
Notwithstanding the foregoing, however, upon the expiration of one (1) year
after the Acceptance Date, Miramar shall have the right to terminate the
restrictions of this Section 13.2 effective at the end of any calendar quarter
(including upon the expiration of the first year after the Acceptance Date) by
notifying Previo at least five (5) days prior to the date on which Previo is
required to make a Royalty Fee prepayment for the subsequent quarter of
Miramar's desire to terminate the restrictions of this Section 13.2 In this
event, Miramar shall promptly return to Previo any then unused prepaid Royalty
Fees. The restrictions of this Section 13.2 shall expire and lapse automatically
and immediately in the event that Previo elects not to make, or fails to make,
any Royalty Fee prepayment as required or permitted by Section 9.2.3 and
Schedule 3. Once the restriction set forth in this Section 13.2 has expired,
lapsed or terminated, however, it may not be revived without the express written
consent of Miramar.
Section 13.3. AS TO PREVIO'S SECOND COMPETITOR
Miramar may at any time during the course of this agreement provide a
version of the Modified Product to [...***...] for incorporation into their
[...***...] product line. In the event that [...***...] announces the
availability, or begins shipment of a [...***...] product, which incorporates
Miramar's Modified Product (or another modified version of the Product for
integration in the [...***...] product), then the royalty rate table (Schedule
2) shall [...***...] and the royalty rate for Tiers 4 and 5 shall [...***...].
Section 13.4. PREVIO CUSTOMERS
Miramar shall have no direct contractual obligations to any Previo Product
end-user or any reseller engaged by Previo.
Article 14.0 COVENANT TO ATTRIBUTE CONTRIBUTION; ADDITIONAL REPORTING
Section 14.1. ATTRIBUTION
Previo shall, in all advertising, documentation (whether physical or
electronic) for the Previo Product, and other materials used for marketing or in
connection with the sale or distribution of the Previo Product, prominently
attribute to Miramar the contribution, by Miramar, of the Modified Product to
the Previo Product. Attached hereto as Exhibit B are the policies and terms upon
which such attribution will be made.
Should Miramar choose to use the existence of the relationship or a
description of the Modified Product in advertising, documentation, or other
marketing and sales materials, whether physical or electronic, Previo shall
retain the right to approve these materials, such approval not to be
unreasonably withheld.
Section 14.2. REPORTING REGARDING CUSTOMERS
Previo shall, on a calendar quarterly basis, deliver to Miramar a list of
all Previo customer names ("Customer List"), addresses and contact information
for all licenses or sales of the Previo Product for such calendar quarter.
Miramar acknowledges and understands that such information will not be available
nor supplied for customers who obtain the Previo Product through Previo's
resellers, OEMs or via ASP or MSP services. Miramar shall treat the information
delivered under this Section 14.2 as Confidential Information, and will restrict
the use of such information to the purpose of marketing and selling other
Miramar products.
Confidential Information *CONFIDENTIAL TREATMENT REQUESTED
26
Miramar acknowledges that the Customer List is Confidential Information of
Previo and is proprietary to Previo. Miramar further acknowledges that should
Miramar assign or transfer its rights or obligations under this Agreement that
upon the written objection by Previo according to the provisions of Section
17.4, all physical and electronic copies of the Customer Lists shall be returned
to Previo, all rights to use such Customer Lists will be terminated, and any
further obligation of Previo to provide such Customer Lists will also be
terminated.
Article 15.0 TERMINATION FOR DEFAULT
Section 15.1. TERMINATION ON MATERIAL DEFAULT
Subject to the requirements of Section 15.2, either party may, by written
notice to the other party, terminate this Agreement in whole or in part upon the
occurrence of a material default by either party in the performance of the terms
and conditions of this Agreement. For purposes of this Agreement, a "material
default" includes:
a) the failure of the other party to pay any monies upon the terms
contained herein;
b) the failure of the other party to perform any of its material
obligations under this Agreement;
c) the other party shall become bankrupt, have an order of
receivership issued against it, file a petition in bankruptcy, make any
arrangement with or assignment in favor of the creditors or go into liquidation
(other than voluntary liquidation for purposes of merger or reorganization,
where it does not result in any material diminution of the other party's ability
to perform its obligation hereunder).
Section 15.2. NOTICE REQUIREMENT
With respect to those material defaults which may be cured by the
defaulting party, each party's right to terminate this Agreement for any of the
reasons listed in Section 15.1 above may be exercised only if the defaulting
party does not promptly implement the necessary measures to correct such failure
within thirty (30) days (or more if authorized in writing by the non-defaulting
party) after receipt of notice from the non-defaulting party specifying in
reasonable detail the failure and if the defaulting party does not continue to
diligently prosecute the cure to completion.
Section 15.3. CONSEQUENCE OF TERMINATION
The provisions of Articles 5, 10, 11, 12, 13.1, 16 and 17 shall survive the
termination of this Agreement for any reason (including its expiration without
renewal). In addition, the provisions of Article 6 shall apply, in certain
circumstances, in the event of termination. In particular, end user licenses
rightfully acquired from Previo during the term of this Agreement shall remain
in force following termination. In addition, Previo's obligation to pay any
amounts which are due but which are not yet paid at the time of such termination
or expiration hereunder shall survive and continue upon such termination or
expiration.
Article 16.0 INDEMNIFICATION AGAINST INFRINGMENT ACTIONS
Section 16.1. BY MIRAMAR
Miramar shall defend, indemnify and hold Previo, its customers, licensees,
officers, directors, and employees harmless from and against any and all claims,
judgments, costs (including reasonable attorneys' fees and costs), damages,
liabilities and losses arising out of an infringement claim based on the use,
possession, reproduction, incorporation, marketing, or relicensing by Previo of
the Modified Product furnished hereunder (an "Infringement Claim"), and will pay
resulting costs, damages and legal fees finally awarded against Previo in such
suit that are attributable to an Infringement Claim; provided, however that
Previo (a) promptly notifies Miramar in writing of any such Infringement Claim,
(b) allows Miramar sole control over the defense and all related settlement
negotiations of such Infringement Claim and (c) cooperates with Miramar in a
timely manner, at Miramar's expense, in defending or settling such Infringement
Claim. Miramar may, at its sole discretion, (i) procure for Previo the right to
continue using the same or (ii) replace or modify it with a Modified Product
that is substantially similar in functionality to the Modified Product and is
reasonably acceptable to Previo to make it non-infringing; or, (iii) in the
event that Miramar shall determine that neither (i) or (ii) above are
commercially reasonable, Miramar may terminate this Agreement upon thirty (30)
days written notice and refund to Previo any then unused prepaid Royalty Fees.
Confidential Information
27
Section 16.2. BY PREVIO
Miramar shall have no liability for and Previo shall defend, indemnify and
hold Miramar, its licensors, officers, directors and employees harmless from and
against any and all claims, judgments, costs (including reasonable attorney's
fees and costs), damages, liabilities and losses arising out of an infringement
claim that is based upon: (a) use of other than the then-current, unaltered
release of the Product or Modified Product; (b) use, operation or combination of
the Modified Product with non-Miramar programs, data, methods, equipment or
documentation, if such infringement would have been avoided but for such use,
operation or combination; (c) damages that are a result of Previo's or its
agent's activities that take place after Miramar has notified Previo that
Miramar believes such activities may result in an infringement of third party
rights; (d) any modifications or marking of the Modified Product not
specifically authorized herein or in writing by Miramar; (e) use of the Product
by Previo that is outside the scope of the license granted under Article 4 of
this Agreement; or (f) any claim for damages, whether or not arising in the
context of an infringement action, from any Previo customer through Previo for
damages of any kind.
Article 17.0 MISCELLANEOUS
Section 17.1. FORCE MAJEURE
Neither party will be liable for any failure to perform due to unforeseen
circumstances or causes beyond the parties reasonable control, including, but
not limited to, acts of God, war, riot, embargoes, acts of civil or military
authorities, fire, flood, accident, strikes, inability to secure transportation,
facilities, fuel, energy, or materials, provided it promptly notifies the other
party of its inability to fulfill its non-monetary obligations and its
reasonable estimation of the duration of its inability to fulfill its
non-monetary obligations; provided, however, that non-performing party shall
exercise reasonable efforts to commence fulfillment of its obligations hereunder
as soon as possible and shall proceed to perform such obligations once the
cause(s) are removed. Time for performance will be extended by the length of the
force majeure.
Section 17.2. RELATIONSHIP OF THE PARTIES
Both parties hereto are independent contractors. Neither party will have
the authority to act for and/or bind the other in any way, or to represent that
either is responsible for the acts of the other. This Agreement will not be
construed as forming a partnership between the parties. Either party is
authorized to use the other's name as partner for marketing purposes with the
other parties' written consent in each instance, which consent shall not be
unreasonably withheld.
Section 17.3. NOTICES AND REQUESTS
All notices and requests required under this Agreement will be in writing,
will reference this Agreement (including its Contract Date) and will be deemed
given upon delivery if personally delivered or upon receipt if sent by
registered or certified mail, postage prepaid, return receipt requested, to the
addresses listed at the beginning of this Agreement, which addresses may be
modified upon subsequent written notice. In addition, any notice delivered to
MIRAMAR shall be copied to the following address:
Attn: Xxxxxxx Xxxxx, CFO
MIRAMAR SYSTEMS, INC.
00 Xxxx Xxxxxxxx Xxxxxx
Xxxxx Xxxxxxx, XX 00000
Confidential Information
28
Section 17.4. NO ASSIGNMENT OR TRANSFER
Neither party may assign or transfer its rights or obligations under this
Agreement without the prior written consent of the other party, which consent
shall not be unreasonably withheld or delayed. Any assignment or transfer made
in violation of this provision shall be null and void and of no further force or
effect.
Section 17.5. ENTIRE AGREEMENT
This Agreement and the exhibits and schedules attached hereto constitute
the entire Agreement between the parties, superceding any and all prior or
contemporaneous written and oral agreements or understandings of the parties
with respect to the subject matter hereof. No change, waiver, or discharge
hereof shall be valid unless it is in writing and is executed by the party
against whom such change, waiver, or discharge is sought to be enforced.
Section 17.6. SUCCESSORS AND ASSIGNS
This Agreement is binding upon the respective heirs, executors,
administrators, legal representatives, successors and permitted assigns of each
party hereto.
Section 17.7. INVALIDITY
If any term, covenant, condition or provision thereof, of this Agreement is
held by a court of competent jurisdiction to be invalid, void or unenforceable,
the remaining provisions of this Agreement shall be in full force and effect and
shall in no way be affected, impaired or invalidated. If any provision of this
Agreement is not valid and such invalidity reveals a situation not provided for
by this Agreement, the parties to this Agreement will jointly seek an
arrangement having a valid legal and economic effect as similar as possible to
the ineffective provision and covering the scope of any missing provision in a
manner reasonably directed to the purpose of this Agreement.
Section 17.8. GOVERNING LAW
The terms herein will be governed by the laws of the State of California,
except to the extent such laws are preempted or superceded by the federal laws
of the United States of America, which laws shall govern to the extent so
preempted or superceded. PREVIO HEREBY SUBMITS TO THE EXCLUSIVE JURISDICTION OF
THE FEDERAL AND STATE COURTS OF THE STATE OF CALIFORNIA, U.S.A. AND HEREBY
AGREES THAT ANY SUCH COURT SHALL BE A PROPER FORUM FOR THE DETERMINATION OF ANY
DISPUTE ARISING HEREUNDER.
Section 17.9. REMEDIES
Except as may be otherwise provided in this Agreement, the rights or
remedies of the parties hereunder are not exclusive, and either party shall be
entitled alternatively and cumulatively, subject to the other provisions of this
Agreement, to damages for breach, to an order requiring specific performance, or
to any other remedy available at law or in equity.
[END OF DOCUMENT]
SCHEDULES AND EXHIBITS BEGIN ON FOLLOWING PAGE
Confidential Information
29
SCHEDULE 1
DEVELOPMENT OF MODIFIED PRODUCT AND
SCHEDULE OF TESTING, ACCEPTANCE AND REJECTION
Confidential Information
SCHEDULE 2
ROYALTY FEE PERCENTAGES AND ROYALTY FLOOR
[...***...]
Confidential Information *CONFIDENTIAL TREATMENT REQUESTED
SCHEDULE 3
ROYALTY FEE PREPAYMENTS
Upon establishment of the Acceptance Date, all subsequent payment will occur on
the date three months there-after and be due and payable on that date. For
example, if the Acceptance Date occurs on January 18, 2000, then the "Payment 2"
will be due 90 days later (April 17). Payments 9 through 12 will be required
should Previo elect to extend the agreement for an additional one year term as
referred to in Article 2.0 of this agreement.
---------------- ------------------------------------------------ ------------
Payment 1 At acceptance [...***...]
---------------- ------------------------------------------------ ------------
Payment 2 At acceptance plus 1 quarter [...***...]
---------------- ------------------------------------------------ ------------
Payment 3 At acceptance plus 2 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 4 At acceptance plus 3 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 5 At acceptance plus 4 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 6 At acceptance plus 5 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 7 At acceptance plus 6 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 8 At acceptance plus 7 quarters at Previo's [...***...]
option
---------------- ------------------------------------------------ ------------
Payment 9 At acceptance plus 8 quarters should Previo [...***...]
exercise the option to extend for one year
beyond initial two year term.
---------------- ------------------------------------------------ ------------
Payment 10 At acceptance plus 9 quarters; same provision [...***...]
as Payment 9 above.
---------------- ------------------------------------------------ ------------
Payment 11 At acceptance plus 10 quarters; same provision [...***...]
as Payment 9 above.
---------------- ------------------------------------------------ ------------
Payment 12 At acceptance plus 11 quarters; same provision [...***...]
as Payment 9 above.
---------------- ------------------------------------------------ ------------
Confidential Information *CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
MIRAMAR END-USER LICENSE AGREEMENT
Confidential Information
EXHIBIT B
MIRAMAR CONTRIBUTION ATTRIBUTION POLICY
35
