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EXHIBIT 10.8
INTRAVISION LICENSE AGREEMENT
This IntraVision License Agreement (this "Agreement"), is made
by and between Spatial Component LLC ("Spatial"), a company organized under the
laws of the state of Delaware, and PlanetCAD Inc. (formerly known as Spatial
Technology Inc.), a corporation organized under the laws of the State of
Delaware ("PlanetCAD") (each a "Party," together, the "Parties").
WITNESSETH:
WHEREAS, PlanetCAD, Spatial, and DASSAULT SYSTEMES CORP.
entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase
Agreement"), pursuant to which Spatial, a fully owned subsidiary of DASSAULT
SYSTEMES CORP. acquired the Component Business (as defined in the Purchase
Agreement) from PlanetCAD including certain software; and
WHEREAS, in connection with the Purchase Agreement and as a
condition to closing the transaction contemplated thereunder, and for good and
valuable consideration, Spatial desires to license to PlanetCAD certain
software, some in source code, and to appoint PlanetCAD as the exclusive end
user reseller for such software and end user products associated with such
software, all in accordance with the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual agreements and
covenants set forth in the Purchase Agreement and in this Agreement, and
intending to be legally bound hereby, the Parties hereby agree as follows:
1. DEFINITIONS
As used in this Agreement, the terms defined in this section shall have
the following respective meanings. Capitalized terms not otherwise defined
herein shall have the same meanings as set forth in the Purchase Agreement.
AFFILIATE(S) shall mean, with respect to any specified Person, any other Person
that, directly or indirectly, Controls, is Controlled by, or is under common
Control with such Person. As of the date of signature of this Agreement, the
list of Affiliates for each party is specified in Schedule A.
ASP(S) shall mean for this Agreement, application services provider, i.e.
service(s) offered on line, through Web sites or as enterprise versions offered
on corporate Intranets, allowing end users to use an application software
functionality, provided by a supplier on its Web site or on a corporate server
in the case of enterprise versions, on a one task at a time or subscription
basis, and charged to the end user as such, with no access to the underlying
software application that allows the technical work of the task to be performed.
The foregoing does not preclude
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PlanetCAD from providing the IntraVision Viewer as an Internet hosted ASP or on
a corporate server for enterprise versions.
CNDA shall mean the Confidential and Non-Disclosure Agreement ref
01344A2000GRUP, among, inter alia, PlanetCAD and Spatial executed
contemporaneously herewith.
CONTROL, with respect to the relationship between or among two or more Persons,
shall mean the possession, directly or indirectly, or as trustee or executor, of
the power to direct or cause the direction of the affairs or management of a
Person, whether through the ownership of voting securities, as trustee or
executor, by contract or otherwise, including, without limitation, the
ownership, directly or indirectly, of securities having the power to elect a
majority of the board of directors or similar body governing the affairs of such
Person; provided that PlanetCAD shall not be deemed to be controlled by any
other Person or under common control with any Person that is not one of its
subsidiaries and Spatial shall not be deemed to be controlled by any other
Person or under common control with any Person that is not controlled or under
common control of Dassault Systemes.
DERIVATIVE WORK(S), means, related to Software, a work which is based upon in
whole or in part of such Software, such as a revision, enhancement,
modification, translation, abridgment, condensation, expansion, or any other
form in which such Software may be recast, transformed, or adapted, or which, if
prepared without authorization of the owner of the copyright or other
intellectual property right in such Software, would constitute a copyright
infringement or other violation of the intellectual property rights. A
Derivative Work shall also include, without limitation, compilations or
link-edits, improvements, bug fixes, corrections, look and feel changes,
upgrades, updates and new version that incorporate such Software in whole or in
part.
EFFECTIVE DATE means November 14, 2000.
INTRAVISION shall mean the computer software program known as IntraVISION
Enterprise(R) or IntraVision Enterprise Viewer, in the version and release that
is commercially available at the Effective Date.
IVSDK shall mean the IntraVision Software Development Kit, in the version and
release that is commercially available at the Effective Date, as well as further
corrections, enhancements and modifications.
INTELLECTUAL PROPERTY shall mean (a) inventions, whether or not patentable,
whether or not reduced to practice, and whether or not yet made the subject of a
pending patent application or applications, (b) ideas and conceptions of
potentially patentable subject matter, including without limitation, any patent
disclosures whether or not reduced to practice and whether or not yet made the
subject of a pending patent application or applications, (c) Patents, (d)
Trademarks, (e) copyrights (registered or otherwise) and registrations and
applications for registration thereof, all moral rights of authors therein, and
all rights therein provided by international treaties, conventions or common
law, (f) Software, and (g) trade secrets.
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PERSON(S) shall mean any individual or legal entity, including without
limitation, partnership, corporation, association, trust or unincorporated
organization.
SOFTWARE shall mean any computer software program, including programming-code,
on-line documentation, if any, user interface related thereto or associated
therewith, to the extent that such user interface does exist, and related user
and installation documentation other than on-line documentation associated with
this computer software program.
SOURCE CODE shall mean computer-programming code and related system
documentation, comments and procedural code, that is not directly executable by
a computer but which may be printed out or displayed in a form readable and
understandable by a qualified programmer.
2. PURPOSE
Subject to the terms and conditions herein, Spatial agrees to license
the source code of IntraVision and to grant PlanetCAD the exclusive
right to sell IntraVision.
3. OWNERSHIP RIGHTS AND LICENSE GRANTS
3.1 Ownership of IntraVision. Except for the rights granted
PlanetCAD in this Section 3, all right, title and interest in
and to IntraVision shall remain with Spatial, including the
right to create Derivative Works of IntraVision.
3.2 Source Code Development and Derivative Works License to
IntraVision. As of the Effective Date, and subject to Sections
5.1 and 10.20, Spatial grants to PlanetCAD a perpetual,
worldwide, irrevocable, exclusive license to use, maintain and
support, adapt, prepare, compile, install, make, execute,
access, and reproduce, the IntraVision Source Code, and make
Derivative Works thereof, to develop and to offer its
customers end user products. The license in this Section 3.2
grants PlanetCAD from the Effective Date the exclusive right
to (a) market and distribute IntraVision products; (b) create
Derivative Works of, and modifications and enhancements to
IntraVision in which all right, title and interest will be in
PlanetCAD; and (c) use the IntraVision name and all trademarks
and trade names associated therewith for such marketing and
distribution. The parties agree that notwithstanding the
exclusivity granted to PlanetCAD for this license, all
licenses previously granted to end users or distributors are
valid and in full force and effect and Spatial shall be
entitled to keep using its rights to IntraVision for
fulfilling all such existing obligations through their
contractual term. Spatial will keep all right to use
IntraVision for test and demonstration purposes. PlanetCAD
shall not use this license to create a software that is
similar to the IVSDK or that competes with the IVSDK.
3.3 Ownership of Derivative Works of IntraVision. The Parties
agree that Derivative Works based on IntraVision will be
created by PlanetCAD under this Agreement
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and that all right, title and interest in and to all or part
of the Derivative Works made by PlanetCAD pursuant to the
license granted in Section 3.2 shall be owned exclusively by
PlanetCAD. Spatial understands and agrees that such Derivative
Works made by PlanetCAD, as well as any portion thereof, shall
be the sole property of PlanetCAD from date of creation and,
to the extent permitted by law. To the extent an assignment is
necessary and that this assignment cannot be made at present,
Spatial agrees to assign to PlanetCAD all of its right, title
and interest in and to these Derivative Works, and any part
thereof, and in and to all copyrights, patents and other
proprietary rights Spatial may have in such Derivative Works.
3.4 IntraVision Customers. Subject to any applicable law and, when
required by law or contract, subject to customers' approval if
needed, Spatial shall assign its IntraVision customers,
including any maintenance contracts for ongoing updates and
support, to PlanetCAD. In order to facilitate such assignment,
Spatial shall introduce its customers to PlanetCAD and assist
PlanetCAD in transitioning such customers. The list of such
customers is attached to this Agreement as Schedule B;
PlanetCAD agrees to fulfill the obligations due these
customers and take all actions reasonably necessary to satisfy
them. PlanetCAD agrees that it has full knowledge of these
customers and related obligations since they were PlanetCAD
customers until the Effective Date. PlanetCAD agrees to
discharge Spatial from any and all liabilities related to such
transferred customers.
4. MAINTENANCE, SUPPORT AND UPGRADES
Spatial shall not provide maintenance, support, or upgrades
for IntraVision.
5. ROYALTY FEES, PAYMENT
5.1 Royalty Fees. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND
REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED
INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE
COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL
TREATMENT.]
5.2 Reporting and Payment of Royalty. Royalty payments will be
made on a quarterly basis. PlanetCAD shall provide a royalty
report to Spatial within 10 business days after the end of
each quarter, subject to adjustment within 30 days of receipt
of such report, and the report shall be accompanied by payment
for royalties due, if any.
5.3 Audit Rights. PlanetCAD shall, for two years, keep true and
accurate records and books of account for each transaction
subject to the royalty obligation set forth in this Section 5
containing all particulars which may be necessary for the
purpose of auditing payments to Spatial under this Agreement.
During such two year
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period, and upon reasonable notice to PlanetCAD, Spatial shall
have the right to have an audit conducted through a licensed
independent accounting firm, of any billings, collections, and
taxes on such itemized statement, and to examine the records
and books of account of PlanetCAD in connection therewith.
PlanetCAD will bear the costs of such audit if a discrepancy
or error of computation in an amount greater than USD 10,000
in favor of Dassault is identified. Any audit conducted
pursuant to this Section 5.3 shall not be conducted in such a
manner as to unreasonably interfere with PlanetCAD's
operations and in no event shall an audit be conducted more
frequently than once each year.
6. PAYMENTS AND TAXATION
6.1 Payments. All payments due under this Agreement shall be made
in U.S. dollars by bank check or electronic transfer to an
account designated by Spatial.
6.2 Definition of Net Revenue. Net Revenue shall consist of all
revenues recognized by PlanetCAD for the sale and licensing of
IntraVision and Derivative Works thereof, including enterprise
versions and ASP services offered directly or indirectly by
PlanetCAD that incorporate, or are facilitated by or are based
on IntraVision and/or Derivative Works thereof. Royalty
payments to Spatial shall be based on a prorata share of the
total price (if IntraVision is offered as a service or ASP or
as a bundled product). Any discount on bundled products,
services, ASPs or other products including IntraVision or
Derivative Works as well as in IntraVision or Derivative Works
sold as standalone products, shall be made pro rata to the
other products in the same offer/bundle of software or
services. Net Revenue shall be net of any applicable discounts
and net of any commissions or fees paid to third party
resellers, and less any other fees and charges invoiced by
PlanetCAD to the customers, without deduction by PlanetCAD of
any other costs or expenses related to achievement of the
revenue, provided, however, that Net Revenue shall be reduced
by the amount, if any, of (i) value-added taxes, (ii) sales
taxes or (iii) withholding taxes imposed by any jurisdiction
on payments made by a payor in such jurisdiction to a payee
outside of such jurisdiction.
6.3 Pricing. PlanetCAD will set prices for IntraVision and ASP
services based on IntraVision, based on a competitive
assessment of similar products. PlanetCAD will provide
information to Spatial within 15 days of any change to list
prices.
7. WARRANTIES AND DISCLAIMER OF WARRANTIES
7.1 Mutual Representations. Each Party represents and warrants to
the other Party that such Party:
(i) Has suitable agreements with its respective employees
to meet the confidentiality obligations under this
Agreement; and
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(ii) It is under no obligation or restriction, and will
not assume any obligation or restriction, that would
prevent it from performing its obligations under this
Agreement.
7.2 Spatial Representations. Spatial makes no representation and
warranties on IntraVision since the product was transferred to
it by PlanetCAD under the Purchase Agreement. IntraVision is
licensed on an "AS IS" basis. Spatial represents that it has
no intention to (i) make or develop products based on or
incorporating IntraVision or (ii) upgrade, modify, enhance or
otherwise maintain IntraVision.
7.3 DISCLAIMER OF WARRANTIES. THERE SHALL BE NO WARRANTIES,
EXPRESS OR IMPLIED, EXCEPT AS STATED IN THIS SECTION 7,
INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, USE, OR
REQUIREMENT. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS
AGREEMENT, ANY INFORMATION OR MATERIALS FURNISHED BY EITHER
PARTY TO THE OTHER ARE PROVIDED ON AN "AS IS" BASIS.
8. LIMITATION OF LIABILITY AND INDEMNIFICATION
8.1 LIMITATION OF LIABILITY.
8.1.1 WITH THE EXCEPTION OF CLAIMS FOR PERSONAL INJURY OR
DEATH, AND THE CONFIDENTIALITY PROVISIONS SET FORTH
IN SECTION 10.1: IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR ANY SPECIAL, EXEMPLARY, INCIDENTAL,
INDIRECT, OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING ANY LOST PROFITS, LOST SAVINGS, LOST STAFF
TIME OR OTHER ECONOMIC DAMAGES ARISING OUT OF OR IN
CONNECTION WITH THIS AGREEMENT, EVEN IF ADVISED OF
THE POSSIBILITY OF SUCH DAMAGES.
8.1.2 IN NO EVENT SHALL EITHER PARTY BE LIABLE UNDER THIS
AGREEMENT FOR AN AMOUNT GREATER THAN THE AMOUNT THAT
SPATIAL HAS RECEIVED PURSUANT TO SECTION 5.1 IN THE
TWELVE MONTH PERIOD PRECEDING THE CLAIM.
9. TERM
This Agreement shall come into force as of the Effective Date, and
shall remain valid until the expiration of the last copyright or other
protection available in any Software herein licensed.
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10. MISCELLANEOUS
10.1 Confidentiality. All communications and information disclosed
by one Party to the other Party under this Agreement shall be
subject to the terms and conditions of the CNDA.
Notwithstanding anything to the contrary in the CNDA, all
information relating to the Source Code of IntraVision thereof
shall be deemed to be Confidential Information under the CNDA
even though they are not marked confidential.
10.2 Freedom of Action. Except as otherwise provided, nothing
contained in this Agreement shall be construed to limit or
impair any right of either Party to enter into similar
agreements with other parties, or to develop, acquire, license
or market, directly or indirectly, other products or services,
competitive with those offered by the other Party.
10.3 Additional Instruments. Notwithstanding termination of this
Agreement, the Parties covenant and agree to execute and
deliver any additional instruments or documents necessary to
carry out the general intent of this Agreement, including
without limitation patent assignments or any other assignments
necessary to evidence the ownership of Intellectual Property
contemplated hereby or any such additional instruments or
documents, including such instruments as may be required by
the laws of any jurisdiction, now or in effect or hereinafter
enacted, that may affect a Party's rights, title or interest,
as applicable, in and to any of the software governed hereby.
10.5 Irreparable Injury. Each Party acknowledges and agrees that
each covenant in this Agreement pertaining to confidential
information and ownership of intellectual property is
reasonable and necessary to protect and preserve the rights of
the other Party in its confidential information and
intellectual property, and that any breach by such Party of
the terms of this Agreement may result in irreparable injury
to the other Party. Each Party, therefore, subject to a claim
of laches, estoppel, acquiescence or other delay in seeking
relief, consents and agrees that the other Party shall be
entitled to seek and obtain a temporary restraining order and
a permanent injunction to prevent a breach or contemplated
breach of this Agreement and waives any requirement that the
other Party post a bond in connection with seeking such
injunctive relief.
10.6 Relationship of the Parties. PlanetCAD and Spatial are
independent contractors, and nothing in this Agreement will
create any partnership, joint venture, agency, franchise,
sales representative, or employment relationship between the
Parties. Neither Party has the authority to act as agent for
the other Party or to conduct business in the name of such
other Party or make statements, warranties or representations
that exceed or are inconsistent with the warranties provided
hereunder.
10.7 Notices. All notices required or permitted shall be given in
writing, in the English language, and shall be deemed
effectively delivered upon personal delivery or
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three days after deposit with a carrier by registered mail or
other equivalent service, postage prepaid, return receipt
requested, addressed as follows, or to such other address as
either Party may designate to the other:
In the case of PlanetCAD: PlanetCAD Inc.
2520 55th Street, Suite 200
Boulder, Colorado 80301
Attn: Office of the President
In the case of Spatial: Spatial
2425 55th Street, Suite 100
Boulder, Colorado 80301
Attn: Mr. Mike Payne, CEO
10.8 Headings. The descriptive headings contained in this Agreement
are for convenience of reference only and shall not affect in
any way the meaning or interpretation of this Agreement.
10.9 Severability. If any term or other provision of this Agreement
is deemed invalid, illegal or incapable of being enforced by
any law or public policy, all other terms and provisions of
this Agreement shall nevertheless remain in full force and
effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner
materially adverse to any Party.
10.10 Entire Agreement. This Agreement, together with the Schedules
attached hereto, constitutes the entire agreement of the
Parties with respect to the subject matter hereof and
supersedes all prior agreements and undertakings, both written
and oral, between Spatial and PlanetCAD with respect to the
subject matter hereof.
10.11 Amendment. This Agreement may not be amended or modified
except by an instrument in writing signed by, or on behalf of,
duly authorized representatives of Spatial and PlanetCAD.
10.12 Applicable Law, Venue. This Agreement shall be governed by,
and construed in accordance with, the Laws of the State of New
York, applicable to contracts executed in and to be performed
entirely within that state (without regard to the conflicts of
Law provisions thereof). This Agreement shall not be governed
by the U.N. Convention on Contracts for the International Sale
of Goods. The parties hereto hereby (a) submit to the
exclusive jurisdiction of any court of competent jurisdiction
sitting in the State of Delaware, The City of Wilmington for
the purpose of any Action arising out of or relating to this
Agreement brought by any party hereto, and (b) agree, to the
fullest extent permitted by applicable law, to waive, and not
to assert by way of motion, defense, or otherwise, in any such
Action, any claim that is not subject personally to the
jurisdiction of the above-named courts, that its property is
exempt or immune from attachment or
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execution, that the Action is brought in an inconvenient
forum, that the venue of the Action is improper, or that this
Agreement may not be enforced in or by any of the above-named
courts.
10.13 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES
TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT
MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR
PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN
CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS
CONTEMPLATED HEREUNDER.
10.14 Counterparts. This Agreement may be executed in one or more
counterparts, each of which when executed shall be deemed to
be an original but all of which taken together shall
constitute one and the same agreement.
10.15 No Waiver. The failure of either Party to enforce any
provision of this Agreement shall not constitute a waiver of
the right to subsequently enforce such provision, or any other
provision of this Agreement.
10.16 Force Majeure. Neither Party shall be held liable for any
failure to perform any of its obligations under this Agreement
for as long as, and to the extent that such failure is due to
an event of force majeure. An event of force majeure shall
include general strikes, lockouts, acts of God, acts of war,
mobilization of troops, fire, extreme weather, flood, or other
natural calamity, embargo, acts of governmental agency,
government or any other laws or regulations.
10.17 Expenses. Except as expressly provided for in this Agreement,
each Party shall bear its own expenses incurred in connection
with this Agreement, including without limitation travel and
living expenses incurred by that Party's employees.
10.18 Assignment; Subcontracting; Third Party Beneficiaries.
(a) This Agreement may be assigned or otherwise
transferred, by operation of law or otherwise without
the express written consent of PlanetCAD and Spatial,
but in such event the assigning Party shall give
notice to the non-assigning Party and the
non-assigning Party shall have the right to terminate
its maintenance and support obligations under this
Agreement within the 30 day period following receipt
of such notice.
(b) Either Party may assign or otherwise transfer all or
part of this Agreement to any of its Affiliates and
for as long as it remains an Affiliate; provided that
no such assignment shall relieve a Party of any of
its obligations under this Agreement. In the event
there is a change of Control of an Affiliate which
terminates its status as an Affiliate of the party to
this Agreement, and this
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Agreement has been assigned to such an Affiliate,
this Agreement shall be assigned back to the party
within 6 months of the effective date of the change
of Control.
(c) This Agreement shall be binding upon and inure solely
to the benefit of the Parties hereto and their
permitted assigns, subcontractor or transferee, and
nothing herein, express or implied, is intended to or
shall confer upon any other person, including,
without limitation, any union or any employee or
former employee of either Party, any legal or
equitable right, benefit or remedy of any nature
whatsoever, including, without limitation, any rights
of employment for any specified period, under or by
reason of this Agreement.
10.19 Trademarks. Spatial grants to PlanetCAD a non-exclusive,
royalty-free license to use the mark IntraVision(R) in
connection with advertising, promotion, sale and support of
any products or services developed or created under Section 3
of this Agreement. Subject to the foregoing, neither Party
shall have the right under this Agreement to use the other
Party's trademarks or trade names in connection with any
product, service, promotion, public announcement,
advertisement or other publication, without securing the prior
written consent of such other Party.
10.20 Third Party Licenses. Each party is relieved of its
obligations, if any, to (i) deliver the Source Code of a
product licensed hereunder or (ii) authorize the creation of
Derivative Works from Source Code hereunder to the extent that
fulfilling such obligations would cause such party to breach
any third party license agreement entered into by such party
after the Effective Date.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed in duplicate originals by their duly authorized officers or
representatives.
In Paris, on November 14, 2000
For PlanetCAD Inc. For Spatial
Its: Chief Executive Officer Its: Secretary
Name: R. Bruce Morgan Name: Thibault de Tersant
Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant