EXHIBIT 10.19
DEVELOPMENT SERVICES AND REFERRAL
AGREEMENT
This DEVELOPMENT SERVICES AND
REFERRAL AGREEMENT (this “ Agreement ”) is
entered into, effective as of January 16, 2004 (the “
Effective Date ”), by and between Document Sciences
Corporation, a Delaware corporation (“ Document
Sciences ”), and Objectiva Software Solutions, Inc., a
California corporation (“ OSS ”).
RECITALS
A. Document
Sciences develops, markets and supports a family of document
automation software used in high volume print and transactional
electronic publishing applications (the “ Document
Sciences Software ”) and is interested in continuing its
outsourcing relationship with OSS.
B. OSS
provides software development and other services for the creation
of document automation software applications and other
applications.
C. OSS
desires to provide, and Document Sciences is interested in
receiving, such services in accordance with the terms of this
Agreement.
D. OSS also
desires to sell the Document Sciences Software to third party end
users, subject to the terms and conditions of the reseller
agreement previously signed by the Parties herewith (the “
Reseller Agreement ”).
NOW THEREFORE,
in consideration of the foregoing
and the mutual promises and covenants set forth in this Agreement,
and for good and valuable consideration, the parties agree as
follows:
AGREEMENT
1. DEFINITIONS.
1.1 “ Deliverables ” means
software, in source and object code, documentation, reports,
processes, machines, compositions of matter, improvements,
inventions (whether or not protectable under patent laws), works of
authorship, information fixed in any tangible medium of expression
(whether or not protectable under copyright laws), moral rights,
mask works, trademarks, service marks, trade names, trade dress,
trade secrets, know-how, ideas (whether or not protectable under
trade secret laws), and all other subject matter protectable under
patent, copyright, moral right, mask work, trademark, trade secret
or other laws, and includes without limitation all new or useful
art, combinations, discoveries, formulae, manufacturing techniques,
technical developments, discoveries, artwork, and designs that OSS,
solely or jointly with others, conceives, reduces to practice,
creates, derives, develops or makes within the scope of OSS’s
work for Document Sciences under this Agreement pursuant to a
Statement of Work.
1.2 “ Development Tools ” means a
software product developed pursuant to a Statement of Work or in
connection with a Statement of Work that is used to develop a
Deliverable.
1.3 “ Document Sciences Background
Technology ” means any technology and Intellectual
Property Rights owned by or licensed to Document Sciences. Document
Sciences Background Technology includes any Improvements thereon
whether developed by Document Sciences, OSS or jointly by the
parties.
1.4 “ Improvement ” means any and
all enhancements, modifications, derivative works, updates,
upgrades, improvements, or related changes to the Document Sciences
Background Technology or to the OSS Background Technology, as the
case may be, including without limitation derivative works of any
copyrighted material, whether developed solely by either party,
jointly or jointly with others.
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1.5 “ Intellectual Property Rights
” means any and all known or hereafter existing (a) rights
associated with works of authorship throughout the universe,
including without limitation, exclusive exploitation rights,
copyrights, moral rights and mask works (including, without
limitation, the exclusive right to use, reproduce, modify,
distribute, publicly display and publicly perform the copyrighted
work), (b) trademark, trade name rights, service marks, trade dress
and similar rights, (c) trade secret rights, (d) patents
(including, without limitation, the exclusive right to make, use,
sell and otherwise commercially exploit), designs, algorithms and
other industrial property rights, (e) technical, scientific and
other know-how and information, (f) other intellectual and
industrial property and proprietary rights of every kind and nature
throughout the universe, whether arising by operation of law, by
contract or license, or otherwise, and regardless of whether such
rights arise under the laws of the United States, or any other
state, country or jurisdiction, and (g) all registrations,
applications, renewals, extensions, combinations, divisions or
reissues of the foregoing.
1.6 “ OSS Background Technology ”
means any technology and Intellectual Property Rights owned by or
licensed to OSS which are (i) in existence prior to the Effective
Date or (ii) developed after the Effective Date and are unrelated
to a Statement of Work. OSS Background Technology includes any
Improvements to or upon (i) or (ii) above, other than Improvements
to (i) or (ii) above made by Document Sciences and which are owned
by Document Sciences as provided in Section 4.2 (“Ownership
of Improvements”).
1.7 “ Prospective Customer ” has
the meaning set forth in Section 8.2 (“Prospective Customer
Notice”).
1.8 “ Qualified Referral ” means
any Prospective Customer other than Prospective Customers either:
(a) who have an existing account with OSS as of the Effective Date;
or (b) for whom a license and/or sale has already been initiated by
OSS within at least six (6) months before the date the applicable
Referral Notice was received by OSS.
1.9 “ Referral Notice ” has the
meaning set forth in Section 8.2 (“Prospective Customer
Notice”).
1.10 “ Services ” means Software
Development Services and other services requested by Document
Sciences and provided by OSS pursuant to a Statement of
Work.
1.11 “ Software Development Services
” means the design, development, maintenance, implementation,
support, testing, and documentation services and other services as
may be required to create, enhance, improve, modify, update, or
upgrade software applications. Documentation services shall include
creating, editing, enhancing, improving, modifying, and keeping
reasonably current design, specification, testing, and other
technical documents in a format acceptable to Document Sciences in
its sole discretion.
2. SERVICES.
2.1 Development Team
. OSS shall provide a
team of software developers and other personnel in number and with
the skill and qualifications appropriate to perform the Services
requested by Document Sciences; provided, however, that, at a
minimum, OSS shall provide fourteen (14) software developers based
in Beijing, China and the following individuals to devote their
efforts on a full-time basis, except as noted, to the performance
of Services: Frank Xie, Yiping Tan (at least 50% of his time),
Husam Saqallah (at least 50% of his time) and Nasser Barghouti (at
least 50% of his time) (such four individuals referred to as, the
“ Core Development Team ”).
2.2 No Conflict with
Services . During the
term of this Agreement and for a period of one (1) year after the
date of expiration or termination of this Agreement, OSS will not
provide to any third party any software development duties or
services for the development of products or services substantially
similar to the Deliverables or Services contemplated under this
Agreement as generally described in Exhibit C .
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2.3 Costs .
The parties agree that each party
will pay for its own costs, fees and expenses related to its
performance of its obligations except as provided in Section 3
(“Fees”).
3. FEES.
3.1 Service Fee
. In consideration for the Services
rendered hereunder by OSS, Document Sciences shall pay OSS a
fixed-fee of One Hundred Thirty Six Thousand One Hundred Sixty Six
Dollars and Sixty-Seven Cents ($136,166.67) per month during the
term of this Agreement (the “ Fee ”). Without
limiting any other provision in this Agreement, Document Sciences
may discontinue paying the Fee if (i) OSS has been fully
compensated for all such Services as set forth herein and (ii)
Document Sciences provides OSS ninety (90) days prior written
notice of its intent to cease paying the Fee.
3.2 Referral
Fee . OSS shall pay
Document Sciences a cash fee in the amount of twenty percent (20%)
of the net sale (in accordance with OSS’s standard accounting
practices) received through a sale to a Qualified Referral referred
by Document Sciences (“ Referral Fee ”).
Referral Fees are payable within thirty days (30) of the end of
each calendar year.
4. PROPRIETARY
RIGHTS .
4.1 Ownership of Background
Technology . Document
Sciences shall be the sole and exclusive owner of all right, title
and interest in and to the Document Sciences Background Technology.
OSS shall be the sole and exclusive owner of all right, title and
interest in and to the OSS Background Technology. Except as
otherwise provided in Sections 4.8 (“License to Document
Sciences Background Technology”) and 4.9 (“License to
OSS Background Technology”), no licenses or other rights with
respect to such Background Technology are granted to the other
party.
4.2 Ownership of
Improvements . Notwithstanding anything to the contrary in this
Agreement, nothing in this Agreement shall preclude Document
Sciences from making Improvements to the OSS Background Technology
that is in the public domain (by reason of the publication of a
patent or otherwise) provided that any such activity does not
infringe OSS’s Intellectual Property Rights. Subject to the
foregoing sentence, Document Sciences shall own all right, title
and interest in and to all Improvements and any Intellectual
Property Rights therein made by Document Sciences to the public
domain OSS Background Technology. Document Sciences shall also own
all right, title and interest in and to all Improvements and any
Intellectual Property Rights therein made by OSS to the Document
Sciences Background Technology.
4.3 Ownership of
Deliverables . Document Sciences shall be the sole and
exclusive owner of all right, title and interest in and to the
Deliverables and all Intellectual Property Rights in the
Deliverables.
4.4 Ownership of Development
Tools . In the event
that a Development Tool is developed pursuant to a Statement of
Work or in connection with a Statement of Work, Document Sciences
shall own all right, title and interest in and to such Development
Tool. OSS agrees to deliver the Development Tool and all related
documentation to Document Sciences to enable Document Sciences to
exploit such ownership rights.
4.5 Works Made for
Hire . Excluding the
OSS Background Technology, all Deliverables, Development Tools and
Improvements to Document Sciences Background Technology made by OSS
and all Intellectual Property Rights in any of the foregoing shall
be the property of Document Sciences and shall constitute
“work made for hire” (as defined in 17 U.S.C. §
101) of which Document Sciences is the author for purposes of Title
17 of the United States Code. To the extent any Deliverable,
Development Tool or Improvement to Document Sciences Background
Technology made by OSS or any Intellectual Property Rights in any
of the foregoing is not a “work made for hire” of which
Document Sciences is the author, OSS agrees to assign and hereby
does assign to Document Sciences all right, title and interest in
and to such Deliverable, Development Tool or Improvement to
Document Sciences Background Technology made by OSS or any
Intellectual Property Rights in any of the foregoing. Additionally,
OSS hereby waives all moral or similar rights
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in all Deliverables, Development Tools and
Improvements to Document Sciences Background Technology made by OSS
and all Intellectual Property Rights in any of the
foregoing.
4.6 Disclosure and Ownership
of Deliverables, Development Tools and Improvements
. OSS agrees to make and maintain
technical and business records, plans, drawings, files, studies,
prototypes, cost and tooling schematics during the course of
providing the Services sufficient to enable Document Sciences, or
its designee, to reproduce any Deliverable, Development Tool or
Improvement to the Document Sciences Background Technology made by
OSS, which such technical and business records, plans, drawings,
files, studies, prototypes, cost and tooling schematics shall be
and remain the property of Document Sciences. Additionally, OSS
shall take all reasonable and customary precautions, including
without limitation, at least daily backup of computer files related
to the Services and daily off-site storage of such computer files,
to prevent the loss or alteration of such computer files. OSS
agrees to promptly disclose to Document Sciences every Deliverable,
Development Tools and Improvement to the Document Sciences
Background Technology made by OSS. OSS hereby does and will assign
to Document Sciences, or Document Sciences’ designee,
OSS’s entire worldwide right, title and interest in and to
all Deliverables, Development Tools, Improvements to the Document
Sciences Background Technology made by OSS and all associated
records and Intellectual Property Rights in any of the foregoing;
provided, that no such assignment includes OSS Background
Technology.
4.7 Assistance
. OSS agrees to execute upon
Document Sciences’ request a transfer form in the form
provided by Document Sciences for each Deliverable, Development
Tool and Improvement to the Document Sciences Background Technology
made by OSS. Additionally, OSS agrees to assist Document Sciences
in any reasonable manner to obtain, perfect and enforce, for
Document Sciences’ benefit, Document Sciences’ rights,
title and interest in any and all countries, in and to all patents,
copyrights, moral rights, mask works, trademarks, service marks,
trade secrets, and other Intellectual Property Rights in each
Deliverable, Development Tool and Improvement to the Document
Sciences Background Technology made by OSS. OSS agrees to execute,
when requested, for each Deliverable, Development Tool and
Improvement to the Document Sciences Background Technology made by
OSS (including derivative works, improvements, renewals,
extensions, continuations, divisionals, continuations in part, or
continuing patent applications for any of the foregoing), (i)
patent, copyright, trademark, service mark, mask work or similar
applications related to such Deliverables, Development Tools and
Improvements to the Document Sciences Background Technology made by
OSS, (ii) documentation (including without limitation assignments)
to permit Document Sciences to obtain, perfect and enforce Document
Sciences’ right, title and interest in and to such
Deliverables, Development Tools and Improvements to the Document
Sciences Background Technology made by OSS, and (iii) any other
lawful documents deemed necessary by Document Sciences to carry out
the purpose of this Section 4 (“ Proprietary Rights
”). If called upon to render assistance under this Section
4.7, OSS will be entitled to a fair and reasonable fee in addition
to reimbursement of authorized expenses incurred at the prior
written request of Document Sciences. In the event that Document
Sciences is unable for any reason to secure OSS’s signature
to any document OSS is required to execute under this Section 4.7,
OSS hereby irrevocably designates and appoints Document Sciences
and Document Sciences’ duly authorized officers and agents as
OSS’s agents and attorneys-in-fact to act for and in
OSS’s behalf and instead of OSS, to execute such document
with the same legal force and effect as if executed by
OSS.
4.8 License to Document
Sciences Background Technology . Except as otherwise expressly permitted under
the Reseller Agreement, Document Sciences grants OSS a
non-exclusive, worldwide, nontransferable (without right to
sublicense), royalty-free license to use and copy the Document
Sciences Background Technology that is specifically provided by
Document Sciences to OSS in connection with the development of a
Deliverable solely for the purpose of designing and developing a
Deliverable.
4.9 License to OSS Background
Technology . In the
event any OSS Background Technology (i) is included within or
embodied in a Deliverable, Development Tool or Improvement to the
Document Sciences Background Technology made by OSS, (ii) is
necessary to exploit a Deliverable, Development Tool or Improvement
to the Document Sciences Background Technology made by OSS, or
(iii) relates in any way to
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Document Sciences’ business or
demonstrably anticipated research into or development of any
Deliverable, Development Tool or Improvement to Document Sciences
Background Technology, then OSS hereby grants to Document Sciences,
or Document Sciences’ designee, a non-exclusive, worldwide,
royalty-free, fully-paid up, perpetual, irrevocable, transferable
license (with the right to sublicense through multiple tiers of
distribution) to use, reproduce, modify, distribute, publicly
display, make, have made, sell, have sold, offer for sale, or
otherwise commercially exploit, such OSS Background Technology and
practice all applicable patent, copyright, moral right, trademark,
service mark, mask work, trade secret and other Intellectual
Property Rights relating to such OSS Background
Technology.
4.10 Restrictions
. Except as provided for
in the Reseller Agreement, and notwithstanding anything to the
contrary in this Agreement, OSS agrees that it shall not have the
right to license, transfer, sell, assign or otherwise distribute to
any third party or create any derivative work of, include in any
other software application or otherwise utilize any (i)
Deliverable, (ii) Development Tool, or (ii) Improvement to Document
Sciences Background Technology made by OSS.
5. WARRANTIES.
5.1 Mutual
Representations .
Each party represents and warrants to the other party that, during
the term of this Agreement, it possesses and shall possess the full
power and authority to enter into this Agreement and any subsequent
Statement of Work. Each party further represents and warrants that
it has full power and authority to fulfill its obligations
hereunder and under any Statement of Work, and the performance
according to the terms of this Agreement or any Statement of Work
shall not breach any separate agreement by which such party is
bound.
5.2 No Conflict of
Interest . OSS
represents and warrants that, to the best of OSS’s knowledge,
there is no other contract or duty on OSS’s part that
conflicts with or is inconsistent with this Agreement.
6. COMPLIANCE WITH
LAWS . Each party
represents and warrants that performance of its obligations
hereunder shall comply with all applicable laws, rules and
regulations.
6.1 Warranty of
Services . OSS
represents and warrants that all Services performed hereunder will
be performed in a professional and workmanlike manner.
6.2 Warranty of
Title . OSS
represents and warrants to Document Sciences that Document Sciences
will receive free, good and clear title to all Deliverables,
Development Tools and Improvements to Document Sciences Background
Technology made by OSS. OSS further represents and warrants that
all Deliverables, Development Tools and Improvements to Document
Sciences Background Technology made by OSS, except to the extent
any Document Sciences Background Technology provided to OSS by
Document Sciences is embodied within any of the foregoing, do not
and will not violate, infringe or misappropriate any Intellectual
Property Rights of OSS or any third party. OSS represents and
warrants that all OSS personnel, including employ
