Exhibit 10.1
EXHIBIT C TO ASSET PURCHASE AGREEMENT
TELETECH’s ®
IDENTIFY! ™ AND IDENTIFY! PLUS™
SOFTWARE AND INTELLECTUAL PROPERTY LICENSE AGREEMENT
LICENSE AGREEMENT
This
Software and Intellectual Property License Agreement
(“Agreement”) is effective as of September 28,
2007 (“Effective Date”) by and between licensor
TeleTech Holdings, Inc. (“TeleTech”), a Delaware
corporation with its principle place of business at 9197 S. Peoria
Street, Englewood, CO 80129, licensee Aspen Marketing Services,
Inc. (“Aspen”), a Delaware corporation its principal
place of business at 1240 North Avenue, West Chicago, IL 60185, and
Aspen Acquisition Holdings LLC, a Delaware limited liability
company (“Aspen’s Parent”) (individually
“Party”, collectively the “Parties”).
RECITALS
WHEREAS
TeleTech is the owner of certain computer software, known as and
referred to herein as Identify! software and Identify! Plus
software and associated intellectual property, for use in the
provision of telephone answering services; and
WHEREAS
Aspen desires to obtain a license to use and revise the computer
software licensed from TeleTech in connection with providing
telephone answering services to Aspen’s customers, and
TeleTech has agreed to license the computer software to Aspen upon
the terms and conditions of this Agreement;
NOW
THEREFORE in consideration of the mutual covenants set forth
herein, the receipt and sufficiency of which are hereby
acknowledged, and contingent upon the mutual endorsement and
execution of a corresponding Asset Purchase Agreement as defined
herein, the Parties agree as follows:
1
Definitions. The following terms shall have the meanings
stated:
1.1
Affiliate . Any entity (but not a competitor) of
TeleTech which now or in the future controls, is controlled by, or
is under common control with Aspen, with “control”
defined as a more than fifty percent (50%) ownership interest. This
Agreement shall apply to the use of the Software by Aspen and its
Affiliates. For the Software used by an Affiliate,
“Aspen” and “Party” as used herein shall
mean the applicable Affiliate.
1.2
Aspen’s Customers . Aspen’s customers,
end users and/or subscribers of Aspen’s Services.
1.3
Asset Purchase Agreement . The corresponding Asset
Purchase Agreement between NewGen Results Corporation
(“NewGen”) and Aspen for the sale and transfer of
certain assets of NewGen to Aspen.
1.4
Automotive Field of Use . The design, creation,
manufacturing, marketing, distribution, sale and servicing of
automobiles, including passenger cars, trucks and SUVs.
1.5
Calendar Quarter. Each of the following four calendar
quarters: January 1 to March 31; April 1 to June 30; July 1 to
September 30; and October 1 to December 31.
1.6
Confidential Information . Any data, material or
information provided by TeleTech to Aspen in printed, written,
graphic, photographic or other tangible form, as well as stored,
transmitted and received electronically, or information of TeleTech
that is presented, communicated or disclosed orally, including but
not limited to information marked as “Confidential”,
“Secret”, “Proprietary”,
“Restricted”, “Private” or words of similar
import, information generally known in the business to be
confidential, and any other information disclosed to Aspen by
TeleTech concerning the businesses and affairs of TeleTech and its
subsidiaries that is not already generally available to the public,
including, without limitation, trade secrets and know-how.
Confidential Information shall include the Software, Source Code,
TeleTech IP, trade secrets and any Derivative Work (other than
Derivative Works created by Aspen pursuant to this Agreement) and
shall also include any information which can be obtained from
examining, testing, utilizing or analyzing the Software or
Derivative Work (other than Derivative Works created by Aspen
pursuant to this Agreement), or any software, hardware or component
thereof as well as any accompanying materials, manuals, records or
documents of similar nature. Confidential Information shall not
include information that is: (i) lawfully known to Aspen prior
to its disclosure by TeleTech, and such knowledge is not a direct
or indirect result of a breach of any obligation by any third
party; (ii) now or later becomes in the public domain other
than as a result of a breach by Aspen or its obligations
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hereunder;
(iii) received subsequently by Aspen from a third party who
has the lawful right to disclose same; (iv) independently
developed by Aspen without reference to the Confidential
Information received hereunder, as evidenced by Aspen’s
records, or (v) Derivative Works created by Aspen pursuant to
this Agreement.
1.7
Mutual Confidential Information . Any Derivative
Works created by Aspen pursuant to this Agreement.
1.8
Copyrights . All “original works of
authorship” as defined by copyright law, including registered
and/or unregistered copyrights associated with the Software.
1.9
Derivative Work . A work based on, or incorporating,
the Software, including but not limited to translations,
abridgments, condensations, improvements, updates, fixes,
modifications and enhancements, or any other form in which the
Software may be recast, transformed, adapted, or revised, and
includes any other work specifically so-designated by both Parties
in writing in the future.
1.10
Designated Engineers . Employees of Aspen who have
access to the Source Code and/or who are engaged in creating
Derivative Works, selected by Aspen at any time during the term of
this Agreement and identified in writing to TeleTech.
1.11
Documentation . TeleTech’s existing
documentation of the Software.
1.12
Gross Revenue. All receipts, revenues, credits and
any other amounts received by Aspen from, or generated by,
(i) any and all contracts involving use of the Software or any
Derivative Work, or (ii) any other use of the Software or any
Derivative Work, before deductions of any expenses.
1.13
Identify! . Computer software, written in computer
languages including XML, PLSQL, TSQL and CSharp, owned by TeleTech
for the provision of telephone answering services, including,
tracking, managing, recording and forwarding customer calls to a
call center, including accessing and forwarding customer
data.
1.14
Identify! Plus . Computer software, written in
computer languages including XML, PLSQL, TSQL and CSharp, including
version 2.0, owned by TeleTech for the provision of telephone
answering services, including, tracking, managing, recording and
forwarding customer calls to a call center, including accessing and
forwarding customer data.
1.15
Intellectual Property . All of the following in any
jurisdiction throughout the world: (a) all inventions (whether
patentable or unpatentable and whether or not reduced to practice),
all improvements thereto, and all patents, patent applications, and
patent disclosures, together with all reissuances, continuations,
continuations-in-part, divisionals, extensions, reexaminations,
utility models, certificates of invention, industrial designs, and
design patents, as well as the rights to file for, and to claim
priority to, any such patent rights, (b) all Trademarks,
service marks, trade dress, logos, slogans, trade names, corporate
names, Internet domain names, and rights in telephone numbers,
together with all translations, adaptations, derivations, and
combinations thereof and including all goodwill associated
therewith, and all applications, registrations, and renewals in
connection therewith, (c) all copyrightable works, Copyrights,
and all applications, registrations, and renewals in connection
therewith, (d) all mask works and all applications,
registrations, and renewals in connection therewith, (e) all
trade secrets and confidential information (including ideas,
research and development, know-how, formulas, compositions,
manufacturing and production processes and techniques, technical
data, designs, drawings, specifications, customer and supplier
lists, pricing and cost information, and business and marketing
plans and proposals), (f) all computer software (including
source code, executable code, data, databases, and related
documentation), (g) all advertising and promotional materials,
(h) all other proprietary rights, (i) all copies and
tangible embodiments thereof (in whatever form or medium); and
(j) all income, royalties, damages and payments related to any
of the foregoing (including damages and payments for past, present
or future infringements, misappropriations or other conflicts with
any intellectual property), and the right to sue and recover for
past, present or future infringements, misappropriations or other
conflict with any intellectual property.
1.16
License Fees . All fees owed to TeleTech pursuant to
this Agreement including the First Year Royalty Fee, Second Year
Royalty Fee, Running Royalty Fees — Automotive, Running
Royalty Fees — Non-Automotive, as each of those are defined
in Sections 3.1, 3.2, 3.3, and 3.5 respectively of this
Agreement.
1.17
Non-Automotive Field of Use . Any and all business,
industry and/or commerce in a field other than the Automotive Field
of Use.
1.18
Services . Telephone answering services, including,
without limitation, tracking, managing, recording and forwarding
customer calls to a call center, including accessing and forwarding
customer data and routing customer calls to a professional customer
care agent.
1.19
Site(s) . The physical location or locations in the
Territory used, controlled or owned by Aspen where the Software is
permissibly deployed under the Agreement.
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1.20
Software . TeleTech’s most recent version of
Identify! and Identify! Plus software, as of the Effective Date, in
Source Code and executable form.
1.21
Source Code . The source code of the Software written
in programming language, including comments and procedural code,
such as job control language statements, in a form intelligible to
trained programmers and capable of being translated into object
code for operation on computer equipment through assembly or
compiling, and accompanied by documentation in sufficient detail to
enable a trained programmer through study of such documentation to
maintain and/or modify the Software without undue
experimentation.
1.22
Territory . The United States of America, Canada and
Mexico, including their respective territories and
possessions.
1.23
[Intentionally omitted].
1.24
Trademarks . Identify! and Identify! Plus, including
all trademark rights, trademark applications and trademark
registrations associated therewith. This includes trademark
application serial numbers 77/263,087 and 77/263,226.
1.25
USD . United States Dollars.
2 Software License .
2.1
Automotive Field of Use . TeleTech grants to Aspen,
and Aspen accepts, subject to all of the terms and conditions of
this Agreement: (i) an exclusive, perpetual, non-assignable,
revocable, nontransferable, limited license to use the Software in
executable form within the Territory solely in connection with
providing the Services to Aspen’s Customers doing business in
the Automotive Field of Use; and (ii) in connection therewith,
a non-exclusive, revocable, non-assignable, nontransferable,
limited license to use, solely through Designated Engineers, the
Source Code to modify and create, use and reproduce Derivative
Works of the Software, by Aspen’s Designated Engineers for
Aspen’s Customers in connection with providing the Services
in the Automotive Field of Use. All Designated Engineers must
execute a Non-Disclosure Agreement in the form attached hereto as
Exhibit A, with copies of the executed Non-Disclosure
Agreements provided to TeleTech, and be identified in writing to
TeleTech before accessing the Source Code. If a Designated
Engineer’s employment with Aspen terminates then that
individual’s status as a Designated Engineer terminates and
Aspen shall take commercially reasonable steps to ensure that
Confidential Information in the possession of such terminated
Designated Engineer is returned.
2.2
Non-Automotive Field of Use . TeleTech grants to
Aspen, and Aspen accepts, subject to all of the terms and
conditions of this Agreement: (i) a non-exclusive, perpetual,
non-assignable, revocable, nontransferable, limited license to use
the Software in executable form within the Territory solely in
connection with providing the Services to Aspen’s Customers
doing business in the Non-Automotive Field of Use; and (ii) in
connection therewith, a non-exclusive, revocable, non-assignable,
nontransferable, limited license to use, solely through Designated
Engineers, the Source Code to modify and create, use and reproduce
Derivative Works of the Software, by Aspen’s Designated
Engineers for Aspen’s Customers in connection with providing
the Services in the Non-Automotive Field of Use. All Designated
Engineers must execute a Non-Disclosure Agreement in the form
attached hereto as Exhibit A, with copies of the executed
Non-Disclosure Agreements provided to TeleTech, and be identified
in writing to TeleTech before accessing the Source Code. If a
Designated Engineer’s employment with Aspen terminates then
that individual’s status as a Designated Engineer terminates
and Aspen shall take reasonable steps to ensure that Confidential
Information in the possession of such terminated Designated
Engineer is returned.
2.3
No Sublicense; Copies; No Other Rights Granted .
Aspen shall have no right to sublicense the Software or Derivative
Works, or to grant sublicenses under this Agreement, without the
prior written consent of TeleTech. Aspen may make a reasonable
number of copies of the Software as needed for back-up, archival
and testing purposes and of the Documentation as needed for
Aspen’s business purposes as granted herein. The equipment
and location where the archival copies are stored shall be listed
on Exhibit B attached to this Agreement and shall be deemed
Authorized Equipment and Site consistent with Section 4.2
below. Aspen shall have no other right to copy, in whole or in
part, the Software. Any copy of the Software made by Aspen is the
exclusive property of TeleTech. Aspen’s rights in the
Software shall at no time exceed the scope of the license granted
under Sections 2.1 and 2.2 of this Agreement. TeleTech
reserves all rights not expressly granted to Aspen hereunder.
3 License Fees and Terms
.
3.1
First Year Royalty Fee, Automotive Field of Use . On
the Effective Date, Aspen shall pay TeleTech a royalty fee equal to
$225,000 USD (“First Year Royalty Fee”), for the
license provided in Section 2.1 in the Automotive Field of Use
for the period of time beginning on the Effective Date and ending
twelve (12) months thereafter.
3.2
Second Year Royalty Fee, Automotive Field of Use . On
the first year anniversary of the Effective Date, Aspen shall pay
TeleTech a royalty fee equal to $2,000,000 USD (“Second Year
Royalty Fee”), for the license provided in Section 2.1
in the
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Automotive
Field of Use for the period of time beginning twelve
(12) months after the Effective Date and ending twenty-four
(24) months after the Effective Date.
3.3
Running Royalty Fees — Automotive Field of Use;
Minimums . Unless Aspen shall give written notice of
termination to TeleTech not less than 60 days prior to the
beginning of any applicable one-year term, beginning on the second
year anniversary of the Effective Date and continuing throughout
the term of this Agreement, Aspen shall pay TeleTech an ongoing
annual royalty fee equal to five percent (5%) of all Gross Revenue
received by Aspen (“Running Royalty Fees-Automotive Field of
Use”), subject to Section 3.4. Aspen shall pay TeleTech
the Running Royalty Fees-Automotive Field of Use within thirty
(30) days after the expiration of each Calendar Quarter,
accompanied by the certified reports as required by
Section 3.9. If the Running Royalty Fees-Automotive Field of
Use paid by Aspen in a calendar year is less than $150,000 USD,
then Aspen shall pay TeleTech, by February 1 of the next calendar
year, an amount equal to the difference between $150,000 USD and
the Running Royalty Fees-Automotive Field of Use paid to date for
the calendar year.
3.4
Offsets to License Fees . Running Royalty
Fees-Automotive Field of Use Field of Use may be offset in the
following manner: if TeleTech’s gross revenue from Aspen for
call center services provided by TeleTech to Aspen pursuant to the
Master Services Agreement and Statement of Work between the Parties
(“TeleTech Call Center Services”) exceeds $5,000,000
USD annually, each $1,000,000 USD of gross revenue annually in
excess of $5,000,000 USD will reduce the Running Royalty
Fees-Automotive Field of Use Field of Use by $100,000 USD, up to a
maximum reduction of $150,000 USD per year. For illustration
purposes only, if TeleTech Call Center Services are $6,000,000 USD
in a calendar year, then the Running Royalty Fees-Automotive Field
of Use Field of Use owed by Aspen will be reduced by $100,000 USD
for the calendar year.
3.5
Running Royalty Fees—Non-Automotive Industry .
Commencing on the Effective Date and continuing unless Aspen shall
give written notice of termination to TeleTech not less than
60 days prior to the beginning of any applicable one-year
term, Aspen shall pay TeleTech, within thirty (30) days after
the end of each Calendar Quarter, an ongoing annual royalty fee
equal to five percent (5%) of all Gross Revenue received by Aspen
for such Calendar Quarter (and without duplication of any other
License Fees payable hereunder) derived from utilizing the Software
or any Derivative Work in the Non-Automotive Field of Use
(“Running Royalty Fees—Non-Automotive”)
accompanied by the certified reports as required by
Section 3.9.
3.6
Transmission of Payments . All License Fees and any
other payments payable by Aspen pursuant to this Agreement shall be
paid in cash in immediately available USD funds by check or wire
transfer to TeleTech.
3.7
Late Payments . TeleTech’s obligations and
Aspen’s rights are contingent on full and timely payment of
all amounts required to be paid hereunder. Failure to make timely
payment within 30 days of the due date thereof will be deemed
a material breach of this Agreement and entitle TeleTech to
terminate this Agreement pursuant to Section 9.2. TeleTech
reserves the right to invoice Aspen for interest on any overdue sum
at the rate of one and a half percent (1.5%) per month (or the
highest rate allowed by applicable law), calculated from the due
date of payment to the date of collection. Payment subsequently
received from Aspen will be first applied to such late charges,
then to amounts past due and then to new billings.
3.8
Taxes, Etc . All amounts are net of, and Aspen shall
pay all additional sums for, any sales and use taxes, duties, and
other similar assessments related to the Software under this
Agreement (exclusive of taxes based on TeleTech’s net
income). Teletech shall provide Aspen reasonable detail of such
taxes and shall request compensation by Aspen of such taxes within
180 days of the date such taxes were paid or required to be paid by
Teletech, whichever is later. If Teletech fails to notify Aspen of
any such taxes within the 180-day period referred to above, Aspen
shall not be required to pay or reimburse Teletech for any such
taxes. Aspen shall indemnify and hold harmless TeleTech from all
claims and liability arising from Aspen’s failure to comply
with the requirements of this Section 3.8.
3.9
Reporting Obligations.
a.
Aspen shall maintain, during the term of this Agreement and for a
period of two (2) years following termination of this
Agreement, records showing the Gross Revenue under the license
herein granted in sufficient detail to enable the License Fees
payable hereunder by Aspen to be audited pursuant to
Section 3.10.
b.
Aspen will provide to TeleTech, within thirty (30) days after
the end of each Calendar Quarter, a written report reporting all
Gross Revenue by Aspen during the preceding three-month period and
the License Fees due thereon. The report shall contain all
information necessary for the determination of License Fees payable
hereunder. The report shall be signed and certified by the Chief
Financial Officer of Aspen. If, for any three-month period, no
License Fee payments shall be due, Aspen shall submit a written
report to TeleTech to that effect. All reports shall be delivered
to TeleTech at the address specified in this Agreement and
substantially in the format of the report attached as
Exhibit D.
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c.
The reports provided by Aspen pursuant to this Section 3.9 and
any information provided by Aspen in any audit performed pursuant
to Section 3.10 and all records used or generated in any such
audit shall be confidential, and TeleTech shall take reasonable
measures to maintain the confidentiality of such reports and
information.
3.10
Audit Rights .
a.
During the term of this Agreement and for a period of two
(2) years following termination of this Agreement, Aspen
agrees to permit its books and records to be examined, and/or its
use of the Software and Derivative Works to be examined, upon
written request from TeleTech and at a reasonable time during
Aspen’s normal business hours and at a location where Aspen
normally keeps its records, Software and Derivative Works, to the
extent necessary to verify the reports provided for in
Section 3.9(b) and Aspen’s compliance with the terms and
conditions of the Agreement regarding use of the Software and
Derivative Works, such examination to be made at the expense of
TeleTech by TeleTech or its agents or any certified public
accountant appointed by TeleTech (with respect to any audit in
connection with Section 3.9).
b.
If the results of the audit reveal that Aspen has underpaid amounts
due under this Agreement, Aspen shall pay, within thirty
(30) days of written notice of the audit results, TeleTech the
amount of such deficiency, together with interest as provided for
under this Agreement plus an additional 2.00% per annum. If an
audit shows that Aspen has paid more than required under this
Agreement, any excess amounts shall, at the option of Aspen, be
refunded by TeleTech or credited against future royalties. TeleTech
shall assume the costs of such audits, provided that Aspen shall be
liable to TeleTech for the cost of such audits in the event that
such audit results in a determination that Aspen has paid less than
ninety percent (90%) of the monies owed TeleTech under this
Agreement for the period of the audit.
3.11
Non-Compete . Upon receipt of the Source Code, Aspen
may have the opportunity to discover TeleTech’s trade secret
information in that Source Code and as such, except as otherwise
stated in this Agreement, Aspen, on its own or indirectly through
others, shall not create or attempt to create any software outside
of this Agreement to function as, take the place of or replace the
Software during the term of this Agreement; provided however that
the parties agree that Aspen’s use, improvements, updates,
enhancements or modifications to the Appointnet software which do
not contain the Software, shall not be considered to be a breach of
this Agreement or competition with Teletech; and provided further
than the parties agree that Aspen’s modifications, creation,
use or reproduction of Derivative Works of the Software in
accordance with and as contemplated by this Agreement shall not be
considered to be a breach of this Agreement or competition with
Teletech.
4 Delivery, Installation and
Support .
4.1
Delivery . TeleTech shall deliver the Software at
Closing. With respect to the Source Code, within 5 business days of
the execution of this Agreement, TeleTech shall deliver the Source
Code on CD-ROM or DVD-ROM to Rick Goddard at Aspen .
4.2
Installation, Authorized Equipment and Site . Aspen
shall be solely responsible for installing the Software. Aspen
shall install and use the Software and Source Code only on the
computer equipment (“Authorized Equipment”) at the
Site(s) listed on Exhibit B attached to this Agreement.
Exhibit B shall be amended by Aspen each time there is a
change to the Authorized Equipment and/or Site(s). Upon the sale or
transfer of any Site, the license grants to the Software and Source
Code with respect to such Site will immediately terminate, unless
TeleTech and the purchaser of such Site (“Purchaser”)
agree in writing to the transfer of the Software and Source Code
and enter into a Software License Agreement with respect to the
Software and Source Code. If the Software and Source Code are not
transferred to the Purchaser as provided for herein, Aspen may
elect to transfer the licenses at no additional cost for use at a
different Aspen location and all such use of the Software and
Source Code at the new Site shall be governed by the terms of this
Agreement, provided that Exhibit B has been amended
accordingly.
4.3
Support . TeleTech shall have no responsibility for
supporting, maintaining, correcting and/or updating the Software in
any manner under this Agreement.
5 Limited Warranty and
Disclaimers .
5.1
Limited Warranty . TeleTech warrants to Aspen that
(i) the Software is the most recent version as of the
Effective Date, (ii) TeleTech exclusively owns and possess all
right, title and interest to the Software, free and clear of any
lien, license or other restriction or limitation, including
regarding use or disclosure, (iii) to Seller’s Kno
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