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EXHIBIT 10.1
Portions of this exhibit have been 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, marked "[***]" in this
exhibit, has been filed with the Securities and Exchange Commission together
with such request for confidential treatment.
CROSS LICENSE AGREEMENT
This Cross License Agreement, dated as of November 14, 2000
(this "Agreement"), is made by and between Dassault Systemes, a societe anonyme
organized under the laws of France and the owner of Purchaser ("Dassault
Systemes") and/or certain affiliates of Dassault Systemes, 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 COMPONENTS, LLC and DASSAULT
SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000
("Purchase Agreement"), pursuant to which DASSAULT SYSTEMES CORP. acquired the
Component Business (as defined in the Purchase Agreement) from PlanetCAD and
SPATIAL COMPONENTS, LLC, including certain software; and
WHEREAS, in connection with the Purchase Agreement and as a
condition to closing the transaction contemplated thereunder the Parties hereto
desire to license to each other certain software and to provide certain software
support and maintenance services to each other, all in accordance with the terms
and conditions set forth herein.
NOW, THEREFORE, in consideration of the premises and 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 C.
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
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users to use an application software functionality, provided by either party 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.
CBD SOFTWARE shall mean the following computer software programs, whichever
packaging and naming, in the version and release that is commercially available
at the Effective Date, as well as corrections, enhancements and modifications of
the software delivered in the maintenance services provided hereunder: ACIS (R)
3D Toolkit, ACIS (R), Advanced Blending Husk, ACIS(R) Advanced Rendering Husk,
ACIS(R) Local Operations Husk, ACIS(R) Shelling Husk, ACIS(R) Precise Hidden
Line Husk, ACIS(R) Mesh Surface Husk, ACIS(R) Space Warping Husk, ACIS(R)
Advanced Surfacing Husk, ACIS(R) Cellular Topology Husk, Spatial Deformable
Modeler, ACIS(R) Deformable Modeling Husk, JetScream(TM), ACIS(R) JetScream
Husk, ACIS(R) RevEnge Husk (MetroCad), ACIS(R) AEC Husk, IVSDK, ACIS(R) Open
Viewer and Plug-ins, Large Model Viewer, 3D Building Blox(TM), SAT(R) (ACIS File
Format).
CNDA shall mean the Confidential and Non-Disclosure Agreement among, inter alia,
PlanetCAD and Dassault Systemes executed contemporaneously herewith.
COMPETITOR shall mean any Person that manufactures, produces or distributes
CAD/CAM/PDM products or services of the kind manufactured, produced or
distributed by Dassault Systemes or its Affiliates in the countries where
Dassault Systemes or its Affiliates does business during the term of this
Agreement, directly or indirectly, through distributors or subsidiaries. In the
event PlanetCAD is uncertain whether a Person is considered a Competitor,
PlanetCAD shall consult with Dassault Systemes, and Dassault Systemes will make
a determination whether such Person is deemed a Competitor for the purposes of
this Agreement.
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 neither PlanetCAD nor Dassault Systemes shall be deemed to
be controlled by any other Person or under common control with any Person that
is not one of their respective subsidiaries.
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.
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KNOW-HOW shall mean all residual information of a non-tangible form, which is
not protected by the United States or European Union laws of copyright, patent
or trade secrets and which may be retained by a party who has had access to
confidential and proprietary information of the other party, including ideas,
concepts or techniques contained therein.
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.
OBJECT CODE shall mean computer-programming code, substantially or entirely in
binary form, that is directly executable by a computer after suitable
processing, but without the intervening steps of assembly, compilation or
link-edit.
PERSON(S) shall mean any individual or legal entity, including without
limitation, partnership, corporation, association, trust or unincorporated
organization.
RUN-TIME shall designate all software materials and databases that are necessary
to use any Software as well as this Software itself.
SERVER SOFTWARE means all software, including without limitation, Web interface,
Web middleware, Web dynamic content billing, Web content generation software,
and any Derivative Works thereof that is used by PlanetCAD to provide
application services over the Internet. The list of all such Software, including
the Third Party Software, as of the date of execution of this Agreement, is
attached as Schedule A to the Server Software License Agreement, executed by the
Parties concurrently herewith.
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.
THIRD PARTY SOFTWARE shall mean computer software programs owned by a party
other than PlanetCAD and incorporated into, or currently used by PlanetCAD as of
the Effective Date, in connection with the Server Software.
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TRANSLATOR shall mean the CATIA/SAT translator Software for geometry and
topology to be developed and licensed pursuant to Section 3.
WBM SOFTWARE shall mean the following Software, whichever packaging and naming,
in the version and release that is commercially available at the Effective Date,
as well as corrections, enhancements and modifications of the software delivered
in the maintenance services provided hereunder: IGES Toolkit, PRO/E Translator,
Current CATIA V4 Translator (GSSL), the STL Translator, IGES View, and STEP
Toolkit. WBM Software does not include any of the Server Software.
2. PURPOSE
Subject to the terms and conditions herein, PlanetCAD agrees to license the WBM
Software to Dassault Systemes, Dassault Systemes agrees to license the CBD
Software to PlanetCAD, and PlanetCAD and Dassault Systemes each agree to provide
certain maintenance and support services to the other.
3. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE TRANSLATOR
3.1 Development of the Translator. Unless otherwise agreed by the
Parties, Dassault Systemes shall develop the Translator
according to the specifications set forth in Schedule A,
attached hereto and incorporated herein by reference.
Dassault Systemes shall deliver to PlanetCAD (a) the CATIA V4
Translator within six (6) months of the Effective Date, and
(b) the CATIA V5 Translator within nine (9) months of the
Effective Date. If Dassault Systemes does not develop and
deliver the either Translator within these time periods (the
"Translator Delivery Date"), it is mutually agreed that
Dassault Systemes will provide PlanetCAD with the necessary
access to CATIA APIs, and the necessary reasonable technical
and development support required to allow PlanetCAD to develop
the Translator. Such technical and development support shall
be charged to PlanetCAD according to Dassault Systemes'
service price list. In any event, Dassault Systemes agrees to
provide PlanetCAD with three supported Run Time versions of
the necessary CATIA application software, which may only be
used by PlanetCAD internally and solely for the purpose of
testing the Translator.
3.2 Ownership of the Translator and Derivative Works. Should the
Translator be developed by Dassault Systemes and except for
the rights granted to PlanetCAD in this Section 3, all right,
title and interest in and to the Translator and Derivative
Works thereof shall remain with Dassault Systemes. Should the
Translator be developed by PlanetCAD, and except for the
rights granted to Dassault Systemes in this Section 3, all
right, title and interest in and to the Translator and
Derivative Works thereof shall remain with PlanetCAD.
3.3 Grant of License by Dassault Systemes to the Translator. Upon
the Effective Date, and should Dassault Systemes be the owner
of the Translator, Dassault
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Systemes grants to PlanetCAD a fully-paid, royalty-free,
perpetual, irrevocable, non-exclusive, worldwide license:
(i) To use the Source Code of the Translator and the
Derivative Works (a) to make Derivative Works, and/or
(b) to support and maintain PlanetCAD's ASPs or
enterprise versions thereof using the Translator as
the underlying software application.
(ii) To use, prepare, compile, install, make, execute,
access, reproduce, sell and distribute copies of the
Run Time for the Translator and Derivative Works in
order for PlanetCAD to offer ASPs or enterprise
versions thereof.
(iii) To use the Run-Time of the CATIA Software that may be
necessary for PlanetCAD to offer public ASPs using
the Translator as the underlying software
application, being understood that PlanetCAD will not
give access to this Run-Time to the ASPs' users. For
enterprise versions requiring use of the Translator,
the end user is responsible for purchasing a license
to use CATIA as may be necessary.
(iv) Notwithstanding the foregoing, PlanetCAD shall not
have the right hereunder to use, reproduce, sell or
distribute the Translator or its Derivative Works as
a component toolkit product.
3.4 Grant of License by PlanetCAD to the Translator. Upon the
Effective Date, and should PlanetCAD be the owner of the
Translator, PlanetCAD grants to Dassault Systemes a
fully-paid, royalty-free, perpetual, irrevocable,
non-exclusive, worldwide license:
(i) To use the Source Code of the Translator and the
Derivative Works (a) to make Derivative Works and/or
(b) to support and maintain, directly or through
distributors or Affiliates, its customers and
partners.
(ii) To use, prepare, compile, install, make, execute,
access, reproduce, sell and distribute copies of the
Run Time for the Translator and Derivative Works.
3.5 Distribution Rights of Source Code. Should Dassault Systemes
be the owner of the Translator, and upon Dassault Systemes'
prior approval pursuant to this Section, Dassault Systemes
hereby grants PlanetCAD the limited right to distribute Source
Code of the Translator only to the extent necessary to fulfill
any contractual source code escrow obligations of third party
agreements relating to the sale and distribution of enterprise
versions of on line ASPs as contemplated by Section 3.3. The
distribution right set forth herein is subject to (a)
PlanetCAD giving Dassault Systemes reasonable notice of such
contractual source code escrow obligations and (b) Dassault
Systemes' approval, which shall not be unreasonably withheld
or delayed.
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4. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE CBD SOFTWARE
4.1 Ownership of the CBD Software. Except for the rights granted
PlanetCAD in this Section 4, all right, title and interest in
and to the CBD Software and Derivative Works thereof shall
remain with Dassault Systemes.
4.2 License to the CBD Software. As of the Effective Date, subject
to the restrictions set forth in Sections 4.4 and 13.20, and
in consideration for the royalty payments set forth in Section
8.1.2, Dassault Systemes grants to PlanetCAD:
(i) A perpetual, worldwide, irrevocable, non-exclusive
license to use, maintain and support, adapt, prepare,
compile, install, make, execute, access, reproduce
(but not to distribute), internally or at
sub-contractor's site as authorized in Section 13.18,
the CBD Software and Derivative Works including
Object Code, Source Code and Run-Time thereof to
offer its customers on line ASPs and enterprise
versions thereof.
(ii) A perpetual, worldwide, irrevocable, non-exclusive
license to use, sell and distribute the Run Time
version of the CBD Software if necessary and only as
embedded in such on line ASPs and enterprise versions
thereof.
All rights and licenses relating to Derivative Works of the
CBD Software are set forth in Section 6.
4.3 Distribution Rights of Source Code. Except as provided in
Section 13.20, Dassault Systemes' prior approval pursuant to
this Section, Dassault Systemes hereby grants PlanetCAD the
limited right to distribute Source Code of the CBD Software
only to the extent necessary to fulfill any contractual source
code escrow obligations of third party agreements relating to
the sale and distribution of enterprise versions of on line
ASPs as contemplated by Section 4.2(ii). The distribution
right set forth herein is subject to (a) PlanetCAD giving
Dassault Systemes reasonable notice of such contractual source
code escrow obligations and (b) Dassault Systemes' approval,
which shall not be unreasonably withheld or delayed.
4.4 Restrictions Relating to the CBD Software. The licenses
granted in Section 4.2 and 4.3 shall be subject to the
following restrictions:
(a) PlanetCAD will not develop any CAD/CAM/PDM modelling
applications, without the prior written approval of
Dassault Systemes; and
(b) The licenses granted in Section 4.2 and 4.3 shall not
be used by PlanetCAD, directly or indirectly, in the
development, marketing, distribution, licensing,
supporting and sale of component software with
similar functionalities to the CBD Software.
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(c) PlanetCAD will not allow any third party, including
any end-user of "planetCAD.com", and other Internet
and intranet services or other enterprise services of
PlanetCAD: (i) to use CBD Software except when
embedded inside an authorized ASP created under the
terms of this Agreement, (ii) to download and/or use
any CBD Software as a separate or stand alone
component, or (iii) to access the Source Code of the
CBD Software, subject to Section 4.3.
(d) The scope of the above licenses is limited to the
purpose of developing, maintaining and enhancing the
PlanetCAD Web service presently named "3Dshare.com"
and other non CAD/CAM/PDM Internet and intranet
PlanetCAD Web services or enterprise version thereof.
(e) Except for the restrictions set forth in this Section
4, PlanetCAD shall not be subject to any other
restrictions under the licenses granted in Section
4.2, and 4.5 and 4.6.
4.5 Specific licensing terms for ACIS (R) Open Viewer. As of the
Effective Date, Dassault Systemes grants to PlanetCAD the
non-exclusive, non transferable, fully paid up right to
distribute the Run Time of ACIS(R) Open Viewer, for free down
load from its Web sites. This license shall automatically
terminate when Dassault Systemes will no longer make this
Software available for free down load on its own Web sites.
4.6 Specific licensing terms for ACIS(R) Open Viewer Plug-Ins. As
of the Effective Date, Dassault Systemes grants to PlanetCAD
the non-exclusive, non-transferable right to distribute
Plug-ins for ACIS(R) Open Viewer on its Web sites. This
license is granted for 3 years from the Effective Date and for
the financial consideration provided in Section 8.1.4.
5. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE WBM SOFTWARE
5.1 Ownership of the WBM Software. Except for the rights granted
Dassault Systemes in this Section 5, all right, title and
interest in and to the WBM Software and Derivative Works
thereof shall remain with PlanetCAD.
5.2 License to the WBM Software. Except as provided in Section
13.20, as of the Effective Date, PlanetCAD grants to Dassault
Systemes:
(i) A perpetual, paid-up, royalty-free, worldwide,
irrevocable, non-exclusive license to use, maintain
and support, adapt, prepare, compile, install, make,
execute, access, reproduce (but not to distribute),
internally or at sub-contractor's site as authorized
in Section 13.18, the WBM Software and Derivative
Works including both Object Code, Source Code and
Run-Time thereof (i) to offer its customers and
partners, directly or through its Affiliates and
distribution network, on line ASPs and enterprise
versions
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thereof, and/or (ii) to make and offer stand alone
software products and component products (i.e., as
toolkits designed to be embedded into other software
products) and/or (iii) to make Derivative Works.
(ii) A perpetual, paid-up, royalty-free, worldwide,
irrevocable, exclusive license to use, adapt,
prepare, compile, install, make, execute, access,
reproduce and distribute, directly or indirectly, the
WBM Software and Derivative Works as component
products and/or stand alone software products in
Run-Time or Object Code format only, directly or
through its Affiliates and distribution network.
(iii) A perpetual, paid-up, royalty-free, worldwide,
irrevocable, non-exclusive license to sell and
distribute the WBM Software and Derivatives Works in
connection with on-line ASPs, enterprise versions
thereof, directly or through its Affiliates and
distribution network.
5.3 Distribution Rights of Source Code. Except as provided in
Section 13.20, upon PlanetCAD's prior approval pursuant to
this Section, PlanetCAD hereby grants Dassault Systemes the
limited right to distribute Source Code of the WBM Software
only to the extent necessary to fulfill any contractual source
code escrow obligations of third party agreements relating to
the sale and distribution of enterprise versions of on line
ASPs as contemplated by Section 4.2(ii). The distribution
right set forth herein is subject to (a) Dassault Systemes
giving PlanetCAD reasonable notice of such contractual source
code escrow obligations and (b) PlanetCAD's approval, which
shall not be unreasonably withheld or delayed.
6. DERIVATIVE WORKS
As specified in the above Sections 3.3, 4.2 and 5.2, each
Party ("Licensee") to whom the other Party ("Licensor") has
granted a license under these sections, is allowed to make
Derivative Works from the Software so licensed to Licensee.
The Parties therefore agree as follows with respect to any
such Derivative Works made by Licensee according to the
provision of the corresponding license:
6.1 Ownership of Derivative Works. The Parties agree that all
right, title and interest in and to all or part of the
Derivative Works made by Licensee pursuant to the licenses
granted in the Agreement shall be owned exclusively by
Licensor. Licensee understands and agrees that such Derivative
Works made by Licensee, as well as any portion thereof, shall
be the sole property of Licensor from date of creation and, to
the extent permitted by law, shall be considered as works made
for hire under the copyright laws of the United States of
America. To the extent an assignment is necessary and that
this assignment cannot be made at present, Licensee agrees to
assign to Licensor 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 Licensee
may have in such Derivative Works.
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The Parties however agree that the creator of a
Derivative Work shall remain the owner of such
Derivative Work should such Derivative Work be
Software (i) developed by or for licensee and using
all or part of the licensed Software as a component
of an application (i.e. embedded or included in whole
or in part in such other Software), and (ii) as long
as such Software contains new functionality,
significant value added, or creates a new function
that is packaged as a standalone product and which
user interface is different from existing Software.
The Parties also agree that application of an
alternative interface technology if this interface is
not combined with other significant application level
functionalities shall not be considered as having
significant added value.
6.2 Delivery Obligations of the Parties.
(i) At the end of each quarter, in the event that either
Party has made any Derivative Work, such Party shall
deliver to Licensor one copy of the Source Code of
such Derivative Work, in a sealed and dated envelope,
in the form of a CD-ROM, or other appropriate media.
(ii) Such items shall be sent to Licensor, as applicable,
by international registered mail to the following
address:
In the case of PlanetCAD : PlanetCAD Inc.
2520 55th Street, Suite 200
Boulder, Colorado 80301
Attn. Office of the President
In the case of Dassault Systemes: Spatial Corp.
2425 55th Street, Site 100
Boulder, Colorado 80301
Attn. Mike Payne
or may be delivered to either Party by e-mail
transmission if agreed to in advance by the receiving
Party.
The Parties agree to make their best reasonable
commercial efforts to comply with the above process
which aims to facilitate the tracing and evidencing
of the Derivative Works. Should any Party miss some
delivery with that respect, it will make its best
reasonable commercial efforts to do it as soon as
possible; in any case, both parties recognize that
should any of them not deliver Derivative Work under
this process, the other Party will keep all its
rights and actions to request the transfer of
ownership to any work that such other Party deems a
Derivative Work under this Agreement.
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6.2 Know-How. The Parties hereby acknowledge and agree that any
and all rights to Know-How developed or shared under this
Agreement by either Party shall be jointly owned by the
Parties and may be used by either party in the operation of
their respective business during and following termination of
this Agreement.
7. MAINTENANCE AND SUPPORT
7.1 Maintenance and Support for the Translator. Commencing on the
Effective Date and unless otherwise agreed by the Parties
pursuant to Section 3.1, the Licensor (Dassault Systemes or
PlanetCAD, as the case may be) will provide the Licensee with
four years maintenance and support as described in the
"Maintenance and Support Services Schedule," attached hereto
as Schedule B and incorporated herein by reference.
7.2 Maintenance and Support for the CBD Software. Commencing on
the Effective Date, Dassault Systemes will provide PlanetCAD
with three years maintenance and support as described in the
Maintenance and Support Services Schedule. At the end of three
years, Dassault Systemes will continue to offer maintenance
and support of those parts of CBD Software it continues to
market and support at conditions no less favourable than those
offered to other customers.
7.3 Maintenance and Support for the WBM Software. Commencing on
the Effective Date, PlanetCAD will provide Dassault Systemes
with three years maintenance and support as described in the
Maintenance and Support Services Schedule. After the
three-year period, PlanetCAD will continue to provide
maintenance for any WBM Software that is embedded in Dassault
Systemes Software (a) for so long as such Dassault Systemes
product is marketed and for the twelve month period following
cessation of marketing activities relating to such product; or
(b) except if PlanetCAD provides twelve month advance notice
of discontinuation of WBM Software.
7.4 Effect of Change of Control of PlanetCAD. If there is a change
of Control of PlanetCAD to the benefit of a Competitor of
Dassault Systemes, Dassault Systemes will not be required to
continue providing maintenance or support services, as set
forth in Schedule B, for the Translator and/or CBD Software.
8. LICENSE AND MAINTENANCE FEES; PAYMENT
8.1 License Fees and Applicable Royalties.
8.1.1 Translator. The license on the Translator granted by
Dassault Systemes to PlanetCAD shall be granted in
full consideration of the licenses granted and the
services provided by PlanetCAD under this Agreement.
Therefore, no license fee shall apply to the
Translator.
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8.1.2 CBD Software.
(a) Royalty. In consideration of the license
granted by Dassault Systemes on the CBD
Software, PlanetCAD will pay a royalty equal
to [***] per year for "3Dshare.com" and/or
follow-on and enterprise versions of
"3Dshare.com" and any other PlanetCAD
service offered, directly or indirectly, by
PlanetCAD that incorporates, or is
facilitated by or based on ACIS and/or any
other CBD Software component, with a minimum
annual royalty of [***]. This royalty shall
survive termination of any support or
maintenance obligation set forth in this
Agreement.
(b) Reporting and Payment of Royalty. The
minimum annual royalty will apply for a
[***] period, and will begin on January 1,
2001. Royalty payments will be made on a
quarterly basis. PlanetCAD shall provide a
royalty report to Dassault Systemes within 7
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. The final payment for each 12 month
period shall be comprised of the amount of
royalties due for the fourth quarter and
(ii) if necessary, a supplemental payment to
satisfy the minimum annual royalty
requirement set forth in Section 8.1.2(a).
At least three months before the end of the
[***] initial period, the Parties shall
negotiate in good faith the amount of
minimum annual royalties to be paid for the
following years. If no agreement has been
reached by the end of each [***] period, the
minimum annual royalty shall be [***] of the
then applicable minimum annual royalty. For
the following year, if no agreement is
reached with regard to royalties, the
Parties shall submit the matter to
arbitration under the Commercial Arbitration
Rules ("CAR") of the American Arbitration
Association. Said dispute shall be submitted
to a single arbitrator chosen by the Parties
in accordance with the CAR. The arbitrator
shall render his/her decision under the
substantive law of the State of New York,
and the arbitration shall be conducted in
the State of Delaware. The same procedure
shall apply at the end of each following
[***] period.
8.1.3 WBM Software. The license on the WBM Software shall
be granted to Dassault Systemes in full consideration
of the licenses granted and the services provided by
Dassault Systemes under this Agreement. Therefore, no
license fee shall apply to the WBM Software.
8.1.4 In consideration of the license granted by Dassault
Systemes on Plug-ins for ACIS(R) Open Viewer
according to Section 4.6, PlanetCAD will pay a
royalty equal to [***]. Royalty payments will be made
on a quarterly basis. PlanetCAD shall provide a
royalty report to Dassault Systemes within 10 days
after the end of each quarter, subject to adjustment
within
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30 days of receipt of such report, and the shall be
accompanied by payment for royalties due, if any.
8.1.5 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 8 containing all
particulars which may be necessary for the purpose of
auditing payments to Dassault Systemes under this
Agreement. During such two year period, and upon
reasonable notice to PlanetCAD, Dassault Systemes
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 8.1.5 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.
8.2 Maintenance Fees.
8.2.1 Translator. Unless otherwise agreed by the Parties,
the Translator Licensee will pay the Translator
Licensor an annual maintenance fee for the Translator
of [***] per year. Said fee shall be paid on a
quarterly basis, in advance, commencing on the date
the Translator Licensor provides the Translator that
meets the specifications set forth in Schedule A.
8.2.2 CBD Software. Maintenance fees for the CBD Software
are included in the royalty fees due Dassault
Systemes for the CBD Software pursuant to Section
8.1.2(a) of this Agreement.
8.2.3 WBM Software. As consideration for the license on the
CBD Software, PlanetCAD will provide maintenance on
the WBM Software at no cost to Dassault Systemes.
9. PAYMENTS AND TAXATION
9.1 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 Dassault Systemes.
9.2 Definition of Net Revenue. Net Revenue shall consist of all
revenues recognized by PlanetCAD for sales and licensing of
ASPs that include or are facilitated by or are based on the
CBD Software, including the price paid by the customers, less
any applicable discounts and net of any commissions or fees
paid to third party resellers, to obtain access to ASPs and
any other fees and charges invoiced by
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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.
9.3 PlanetCAD shall pay any applicable sales or value added tax on
the payments due.
10. WARRANTIES AND DISCLAIMER OF WARRANTIES
10.1 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
(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.
10.2 PlanetCAD Representations. PlanetCAD represents and warrants
to Dassault Systemes that it owns and/or has valid licenses in
all rights, title and interest in and to the WBM Software.
PlanetCAD also represents and warrants that, should PlanetCAD
develop the Translator, The Translator will materially conform
to the specifications set forth in Schedule A for three months
following delivery to Dassault Systemes, provided that the
Translator is properly used in the operating environment as
specified by PlanetCAD. If the Translator does not so conform,
PlanetCAD will attempt to make the Translator perform as
warranted.
PlanetCAD does not warrant that the functions contained in the
Translator will meet Dassault Systemes requirements or will
enable it to attain the objectives Dassault Systemes has set
for itself, or that it will operate in the combination which
may be selected for use by Dassault Systemes, or that the
operation of the Translator will be uninterrupted or free of
Errors. Dassault Systemes shall have exclusive responsibility
for (a) program selection to achieve Dassault Systemes'
intended results, (b) program installation, (c) taking
adequate measures to properly test, operate and use each
Translator and (d) results obtained therefrom. Dassault
Systemes shall also have exclusive responsibility for
selection, use and results of any other programs or
programming equipment or services used in connection with the
Translator.
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10.3 Dassault Systemes Representations. Dassault Systemes
represents and warrants that:
(i) With exception (a) to the CBD Software that has been
delivered to Dassault Systemes by PlanetCAD pursuant
to the Purchase Agreement, and (b) to the Derivative
Works that shall be made by PlanetCAD to the CBD
Software according to Section 6 of this Agreement, it
owns and/or has valid licenses in all rights, title
and interest in and to the CBD Software; and
(ii) The Translator will materially conform to the
specifications set forth in Schedule A for three
months following delivery to PlanetCAD, provided that
the Translator is properly used in the operating
environment as specified by Dassault Systemes. If the
Translator does not so conform, Dassault Systemes
will attempt to make the Translator perform as
warranted. If after 60 days from notice by PlanetCAD
of the non-conformance, Dassault Systemes has not
provided a conforming Translator, PlanetCAD can
cancel the license to the non-conforming Translator
and PlanetCAD will be entitled to develop itself the
Translator according to the provisions of Section 3.1
above. In such case, the license set forth in this
Section 3.4 shall be deemed to be automatically
granted to PlanetCAD.
Dassault Systemes does not warrant that the functions
contained in the Translator will meet PlanetCAD's
requirements or will enable it to attain the
objectives PlanetCAD has set for itself, or that it
will operate in the combination which may be selected
for use by PlanetCAD, or that the operation of the
Translator will be uninterrupted or free of Errors.
PlanetCAD shall have exclusive responsibility for (a)
program selection to achieve PlanetCAD's intended
results, (b) program installation, (c) taking
adequate measures to properly test, operate and use
each Translator and (d) results obtained therefrom.
PlanetCAD shall also have exclusive responsibility
for selection, use and results of any other programs
or programming equipment or services used in
connection with the Translator.
10.4 DISCLAIMER OF WARRANTIES. THERE SHALL BE NO WARRANTIES,
EXPRESS OR IMPLIED, EXCEPT AS STATED IN THIS SECTION 10,
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.
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11. LIMITATION OF LIABILITY AND INDEMNIFICATION
11.1 LIMITATION OF LIABILITY.
11.1.1 WITH THE EXCEPTION OF CLAIMS FOR (i) PERSONAL INJURY
OR DEATH, (ii) INTELLECTUAL PROPERTY INFRINGEMENT
INDEMNIFICATION, AS SET FORTH IN SECTION 11.2, AND
(iii) THE CONFIDENTIALITY PROVISIONS SET FORTH IN
SECTION 13.1: 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.
11.1.2 IN NO EVENT SHALL EITHER PARTY BE LIABLE UNDER THIS
AGREEMENT FOR AN AMOUNT GREATER THAN THE AMOUNT THAT
[***].
11.2 Intellectual Property Infringement Indemnification. Each Party
agrees to hold the other Party, its subsidiaries,
distributors, assignees and Affiliates, and their respective
officers, directors, employees, and shareholders
(collectively, the "Indemnities") harmless from and against
any claim of any nature, including, but not limited to,
administrative, civil or criminal procedures, which is or may
be made or raised against a Party's Indemnities by any third
party that the use or distribution of the Software that is the
subject of this Agreement and owned by the other Party,
infringes or violates any third party's patent, copyright,
trade secret or other intellectual property right in any
country. Indemnification hereunder shall cover all damages,
regardless of their nature, settlements, expenses and costs,
including costs of investigation, court costs and attorneys'
fees. The payment of any indemnification shall be contingent
on:
(i) A Party giving prompt written notice to the other
Party of any such claim or allegation;
(ii) Cooperation by the indemnified Party with the other
Party in its defense against the claim; and
(iii) The indemnified Parties obtaining the other Party's
prior written approval of any settlement, if any, by
the indemnified Party of such matters, such approval
not to be unreasonably withheld.
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Notwithstanding the foregoing, neither Party shall have the
obligation to indemnify the other for any claims of
infringement based on any modification by the latest version
of its Software, or from the combination of its Software with
any other program, to the extent such claim would not have
arisen without such combination or from use of the unmodified
Software.
11.3 Additional Remedies. If the operation, distribution or use of
any Software that is the subject of this Agreement becomes, or
is likely to become, the subject of a claim involving the
infringement or other violation of any patent, copyright,
trade secret, or other intellectual property rights of any
third party, the Parties will jointly determine in good faith
what appropriate steps can be agreed upon, with a view towards
curing such infringement or other violation, at the Software
owner's sole charge. Such steps may include, but are not
limited to:
(i) The owner securing the right for the other Party to
continue using the Server Software, or
(ii) The owner replacing or modifying the Software so that
it becomes non-infringing.
If no other option is reasonably available, the owner of the
Software agrees to use its best efforts to withdraw, at its
sole expense, the infringing Software from the market.
12. TERM AND BREACH OF MATERIAL OBLIGATIONS
12.1 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.
12.2 Breach of Material Obligations. In the event a Party fails to
perform any of its material obligations under this Agreement,
the non-breaching Party has given written notice to the other
Party of such failure to perform, and the breach is not cured
within a sixty day period from receipt of the notice, the
non-breaching Party may terminate any and all of its
obligations to provide maintenance and support, as set forth
in Section 7, to the breaching Party.
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13. MISCELLANEOUS
13.1 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 the CBD Software
and Derivative Works thereof and the WBM Software and
Derivative Works thereof and the Translator shall be deemed to
be Confidential Information under the CNDA even though they
are not marked confidential.
13.2 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.
13.3 Termination of Third Party Licenses. In the event either
Dassault Systemes' or PlanetCAD's rights in a third party
license that is part of Software subject to the terms of this
Agreement is terminated, Dassault Systemes and PlanetCAD will
reasonably assist each other in attempting to obtain a
satisfactory solution to the loss of such rights. In the event
such a solution is not obtained, despite the good faith
efforts of the Parties, the Party whose rights in the third
party license were terminated may terminate the license
granted hereunder as to the specific Software so affected.
13.4 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.
13.5 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.
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13.6 Relationship of the Parties. PlanetCAD and Dassault Systemes
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.
13.7 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 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 Dassault Systemes: Dassault Systemes
9 Quai Marcel Dassault
92150 Suresnes
Attn. Thibault De Tersant
cc: Law Department
13.8 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.
13.9 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.
13.10 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 Dassault Systemes and PlanetCAD with respect
to the subject matter hereof.
13.11 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 Dassault Systemes and
PlanetCAD.
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13.12 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 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.
13.13 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.
13.14 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.
13.15 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.
13.16 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.
13.17 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.
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13.18 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 Dassault
Systemes, 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 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) Either Party may subcontract services necessary to
perform the obligations set forth in this Agreement
provided that (i) any and all such subcontractors
shall have entered into agreements with the
subcontracting Party sufficient to enable that Party
to comply with all terms and conditions of this
Agreement; and (ii) the subcontracting Party shall
have obtained prior approval from the other Party,
which will not be unreasonably withheld, (a) of its
subcontractors, and (b) the method the subcontracting
Party will make the Source Code of any Software that
is the subject of this Agreement available to said
subcontractors, in the event access to such Source
Code is necessary.
(d) 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.
13.19 Trademarks. Notwithstanding any other provisions of this
Agreement, 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.
13.20 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
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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 Dassault Systemes
Its: Chief Executive Officer Its: Executive Vice President
Name: R. Bruce Morgan Name: Thibault de Tersant
Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant
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