Exhibit 10.4
EXECUTION COPY
PROPRIETARY SOFTWARE LICENSE
AGREEMENT
This PROPRIETARY SOFTWARE LICENSE
AGREEMENT (this “ Agreement ”) is dated as of
October 10, 2008, between Misys Open Source Solutions LLC, a
Delaware limited liability company, having a principal place of
business at 103 Foulk Road, Suite 202, Wilmington, Delaware 19803
(“ Licensor ”) and Misys Healthcare Systems,
LLC, a North Carolina limited liability company, having its
principal place of business at 8529 Six Forks Road, Raleigh, North
Carolina 27615 (“ Licensee ”). Licensor and
Licensee are referred to herein collectively as “
Parties ” and each individually as a “
Party ”.
W I T N E S
S E T H :
WHEREAS, Licensee is an Affiliate of
Licensor, and both Licensor and Licensee are wholly-owned indirect
subsidiaries of Misys plc, a public limited company organized under
the laws of England, having a principal place of business at One
Kingdom Street, London W26BL, United Kingdom (“ Misys
”);
WHEREAS, at the Closing (as defined
in the Agreement and Plan of Merger, dated as of March 17,
2008, by and among Misys, Licensee, Allscripts Healthcare Solutions
Inc., a Delaware corporation, having its principal place of
business at 222 Merchandise Mart, Suite 2024, Chicago, IL 60654
(“ Allscripts ”) and Patriot Merger Company,
LLC, a North Carolina limited liability company (the “
Merger Agreement ”)), Misys will ( i
) cause Licensee to merge with a wholly-owned subsidiary of
Allscripts, with Licensee as the surviving company and ( ii
) acquire, directly or indirectly, 54.5% of the equity
interests in Allscripts on a fully-diluted basis (as determined
pursuant to the Merger Agreement);
WHEREAS, Section 5.2(e) of the
Merger Agreement provides that no later than the Closing Date (as
defined in the Merger Agreement), Licensee shall transfer assets
related to the products known as the Misys Connect products to
Misys or its designee, and that Misys or its designee will, in
consideration of such transfer, enter into arrangements to provide
Licensee with continued access to such assets;
WHEREAS, Misys has selected Licensor
as its designee for purposes of Section 5.2(e) of the Merger
Agreement;
WHEREAS, pursuant to a Software
Assignment Agreement of even date herewith, Licensee transferred,
assigned and delivered to Licensor all of Licensee’s right,
title and interest in, to and under the software commonly referred
to as Misys Connect and all intellectual property developed and
owned by Licensee and used solely in connection with Misys Connect,
including software, copyrights, patents, trade secrets and
non-software items relating thereto (the “ Misys Connect
Software ”);
WHEREAS, the Misys Connect Software
is comprised of both proprietary and open-source components,
certain open-source components of which are being
licensed to Licensee by Licensor pursuant to the
Apache License V2.0 (the “ Open Source Software License
Agreement ”), and the proprietary components of which and
non-software items relating thereto are being licensed to Licensee
by Licensor pursuant to this Agreement; and
WHEREAS, subject to the terms and
conditions contained herein, Licensee desires to use, and Licensor
is willing to license Licensee to use, the Licensed Works (as
defined below) on the terms and conditions set forth
herein.
NOW THEREFORE, for good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
1.1. “ Affiliate
” means, with respect to any Person, another Person that, at
the time of determination, directly or indirectly, through one or
more intermediaries, controls, is controlled by, or is under common
control with, the first Person, whether by contract, possession
(directly or indirectly) of power to direct or cause the direction
of the management or policies of such entity or the ownership
(directly or indirectly) of securities or other interests in such
Person.
1.2. “ Affiliate
Sublicensee ” has the meaning set forth in
Section 2.2.
1.3. “ Agreement
” has the meaning set forth in the preamble.
1.4. “ Allscripts
” has the meaning set forth in the second WHEREAS
clause.
1.5. “ Confidential
Information ” means all written or oral information
disclosed by either Party to the other relating to the business of
either Party that has been identified as confidential or that by
the nature of the circumstances surrounding disclosure ought to be
treated as confidential. Without limiting the foregoing,
Confidential Information shall include, but not be limited to,
information regarding either Party (or information of an Affiliate
or third party which the disclosing party is required to maintain
as confidential) that pertains to the financial condition of such
Party (or Affiliate or third Person), other financial information,
business plans and processes, trade secrets, proprietary technical
information, know-how, inventions, techniques, software (including,
but not limited to, the Proprietary Misys Connect Software and
Improvements, Maintenance Releases and Upgrades), documentation
(including, but not limited to, the Proprietary Misys Connect
Software Documentation), personnel records, sales data and
contractual arrangements between such Party or an Affiliate and a
third Person. Notwithstanding the definition set forth herein,
Confidential Information shall not include information that: (
i ) is publicly available or in the public domain at
the time disclosed; ( ii ) is or becomes publicly
available or enters the public domain through no fault of the
recipient; ( iii ) is rightfully communicated to the
recipient by Persons not bound by confidentiality obligations with
respect thereto; ( iv ) is already in the
recipient’s
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possession free of any confidentiality
obligations with respect thereto at the time of disclosure; (
v ) is independently developed by the recipient; (
vi ) is approved for release or disclosure by the
disclosing Party without restriction; ( vii ) is
disclosed in response to an order of a court or other governmental
body, provided that the Party making the disclosure
pursuant to the order shall first have given notice to the other
Party and made a reasonable effort to obtain a protective order; (
viii ) is otherwise required by law or regulation to be
disclosed; ( ix ) is commingled with other third Person
information for statistical purposes; or ( x ) is
disclosed to establish a Party’s rights under this Agreement,
including to make such court filings as may be required to do
so.
1.6. “ End User License
Agreement ” has the meaning set forth in
Section 2.3.
1.7. “ Existing
Customers ” has the meaning set forth in
Section 2.4.
1.8. “ Field of Use
” means healthcare information technology products and
services.
1.9. “ Improvements
” has the meaning set forth in
Section 3.1(a).
1.10. “ Licensed
Software ” means the object code form of Licensed Works
and written documentation related thereto that is licensed by
Licensee or its Affiliate Sublicensees to their respective
customers.
1.11. “ Licensed Works
” means the Proprietary Misys Connect Software and the
Proprietary Misys Connect Software Documentation.
1.12. “ Licensee
” has the meaning set forth in the preamble.
1.13. “ Licensee
Improvements ” has the meaning set forth in
Section 9.3(c).
1.14. “ Licensor
” has the meaning set forth in the preamble.
1.15. “ Maintenance
Releases ” means releases of the Proprietary Misys
Connect Software or part thereof in source code and object code
versions designed to correct errors and otherwise cause the
Proprietary Misys Connect Software to substantially conform to the
operational features detailed in the Proprietary Misys Connect
Software Documentation.
1.16. “ Merger
Agreement ” has the meaning set forth in the second
WHEREAS clause.
1.17. “ Misys ”
has the meaning set forth in the first WHEREAS clause.
1.18. “ Misys Connect
Software ” has the meaning set forth in the fifth WHEREAS
clause.
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1.19. “ Open Source
Software License Agreement ” has the meaning set forth in
the sixth WHEREAS clause.
1.20. “ Open-Sourced
Works ” has the meaning set forth in
Section 2.8.
1.21. “ Parties ”
and “ Party ” each have the meaning set forth in
the preamble.
1.22. “ Person ”
means an individual, corporation, partnership, joint venture,
association, trust, limited liability company, Governmental Entity
(as such term is defined in the Merger Agreement), unincorporated
organization or other entity.
1.23. “ Proprietary Misys
Connect Software ” means the proprietary components of
the Misys Connect Software set forth on Exhibit A attached hereto
and made a part hereof, in both source code and object code forms,
in such forms and media as they shall exist from time to
time.
1.24. “ Proprietary Misys
Connect Software Documentation ” means all non-software
items identified on Exhibit A hereto.
1.25. “ Shared Services
Agreement ” means that certain Shared Services Agreement
to be executed following the Closing Date (as defined in the Merger
Agreement) between Misys and Allscripts.
1.26. “ Territory
” means worldwide.
1.27. “ Upgrades
” means software in source code and object code versions that
accomplishes performance, structural or functional improvements or
changes, or adds features to, whether by modification, adaptation,
replacement, supplement or revision, or that is a derivative work
of, the Proprietary Misys Connect Software.
1.28. “ Virus ”
means malicious code, whether or not capable of replication or
attachment to disks or other files, that is capable of performing
an illicit activity or replicating itself on a computer or network
of computers and thereby of damaging other computer programs or
data located on such computer or network or otherwise causing a
defect in the operation of such computer or network, including by
causing any computer data, memory, or related hardware to become,
without specific user instructions, erased, altered or unusable.
The term “Virus” includes, but is not limited to,
viruses, Trojan horses, time bombs, worms or similar malicious
software, programs or files.
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ARTICLE II
LICENSE
2.1. Grant of License .
Subject to the terms and conditions contained herein, Licensor
hereby grants to Licensee:
(a) a nonexclusive, royalty-free
right and license to use, access, reproduce, store, perform,
sublicense to certain of its Affiliates as contemplated in
Section 2.2 herein, transmit, display, modify, customize,
translate and create derivative works from the Licensed Works in
the Territory within the Field of Use; provided that , in
the event that Misys no longer commercially licenses products and
services within the Field of Use, the license granted to Licensee
under this Section 2.1(a) shall become exclusive;
(b) the nonexclusive, royalty-free
right and license to grant sublicenses of the Licensed Software,
either alone, or bundled with Licensee’s, its
Affiliates’ or third-party software, for use by
Licensee’s and its Affiliate Sublicensees’ (as defined
below) customers within the Field of Use.
2.2. Affiliate Sublicensees .
Licensee may sublicense any of its rights or delegate any of its
obligations under this Agreement with respect to the Licensed Works
to either ( a ) Allscripts or ( b ) an
entity which is directly or indirectly wholly-owned by Allscripts
(each such entity described in clauses (a) and (b) of
this sentence, an “ Affiliate Sublicensee ”),
including, but not limited to, the right to grant further
sublicenses of the Licensed Software to the customers of such
Affiliate Sublicensees within the Field of Use in the Territory,
provided that ( i ) any such Affiliate
Sublicensee’s use of the Licensed Works remains subject to
the terms and conditions of this Agreement, and ( ii
) Licensee shall be responsible for ensuring that each
Affiliate Sublicensee performs in accordance with the terms and
conditions of this Agreement. Any sublicense granted to an
Affiliate Sublicensee hereunder shall contain provisions that (
x ) Licensor shall be a third-party beneficiary of such
sublicense and ( y ) the sublicense will, at
Licensor’s option, be deemed automatically assigned by
Licensee to Licensor upon any termination of this Agreement. Any
End User License Agreement (as defined below) granted to a customer
of any Affiliate Sublicensee pursuant to Section 2.3 herein
shall survive any termination of this Agreement and Licensor may,
at its option, assume such End User License Agreement in the event
that this Agreement terminates. Except for the right to enter into
sublicenses with customers pursuant to Section 2.3 herein, no
Affiliate Sublicensee shall be permitted to sublicense to any other
Person the rights granted to it with respect to the Licensed
Works.
2.3. Customer Licenses . The
Licensed Software that Licensee or its Affiliate Sublicensees
license to customers shall be licensed in object code form (
i . e ., non-printed, machine readable form) only,
for customers’ use, including for the making of backup copies
and for disaster recovery purposes. Licensee further agrees to
cause its customers to reproduce and incorporate all copyright,
trademark and other proprietary notices contained in any copies of
the Licensed Software it licenses to customers. Any
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end user license agreement between Licensee or
any of its Affiliate Sublicensees and any of their respective
customers covering the Licensed Software (each, an “ End
User License Agreement ”) must be consistent with the
terms of this Agreement and contain provisions stating that the End
User License Agreement ( i ) will survive any
termination of this Agreement and that Licensor may, at its option,
assume such End User License Agreement in the event that this
Agreement terminates and ( ii ) cannot be assigned,
sublicensed or otherwise transferred by the customer without the
prior written consent of Licensee or its Affiliate Sublicensee (as
applicable), except in the event of the assignment or sale of all
or substantially all of the customer’s assets, or any merger,
consolidation or other business consolidation to which the customer
is a party.
2.4. Existing Customers .
Licensor acknowledges that as of the date of this Agreement,
Licensee licenses the Misys Connect Software to certain of its
customers (“ Existing Customers ”) and agrees
that Licensee may continue to license the Misys Connect Software to
such Existing Customers under the terms and conditions of their
current agreements; provided that Licensee shall use
reasonable efforts to transition all Existing Customers to End User
License Agreements consistent with the terms and conditions hereof
as soon as possible and shall use reasonable efforts to do so prior
to the first anniversary of the date hereof.
2.5. Delivery . Licensor and
Licensee acknowledge and agree that Licensee is in possession of
the Proprietary Misys Connect Software and Proprietary Misys
Connect Software Documentation as it exists on the date hereof in
source code and object code form and that no delivery thereof is
required; provided , however , in the event Licensee
is not in the possession of the aforementioned Proprietary Misys
Connect Software or Proprietary Misys Connect Documentation,
Licensor shall provide a copy to Licensee upon Licensee’s
written request. Promptly after completion thereof, Licensor shall
deliver to Licensee any Proprietary Misys Connect Software that
Licensor creates after the date hereof.
2.6. Compliance with Laws .
Licensee shall at all times comply with all laws, decrees and
regulations applicable to this Agreement and the Licensed Works.
Except as otherwise expressly stated herein, the Parties
specifically waive and disclaim the applicability of the Uniform
Commercial Code, Uniform Electronic Transactions Act and Uniform
Computer Information Transactions Act to this Agreement.
2.7. Restriction on Licenses
. Neither Party shall license the use of any proprietary adapter
that is part of the Licensed Works or any Improvements thereto if
such license would make available to a competitor of the other
Party the confidential proprietary intellectual property of such
other Party, without the prior consent of the other
Party.
2.8. Conversion to Open-Source
License . Licensor may at any time license, or make available
for license, any of the Licensed Works or any component thereof
pursuant to any open-source license (such works, “
Open-Sourced Works ”); provided that
(i) Licensor provides Licensee with thirty (30) days
advance notice of its intent to do so and (ii) the source code
for any such Open-Sourced Works does not,
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