|
(PAGE NUMBERS REFER TO PAPER DOCUMENT
ONLY)
EXHIBIT
10.84
SOFTWARE LICENSE AGREEMENT
This
Software License Agreement (this
“Agreement”) is made and entered
into this 29th day of March, 2005 (the “Effective
Date”), by and between EXPRESS DIGITAL GRAPHICS,
INC. , a Colorado corporation with offices at 9780 Mt. Pyramid
Ct., Suite 120, Englewood, CO 80112 (“Licensor”) and
CPI CORP., a Delaware corporation with offices at 1706
Washington Avenue, St. Louis, MO 63103 (“Licensee”)
. In consideration of the mutual covenants contained herein
and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
1
Definitions.
As
used herein, the terms “Agreement,” “Effective
Date,” “Licensor” and “Licensee”
shall have the meanings indicated above, and the following terms
shall have the following meanings:
1.1
“Active Camera Room(s)” means a Camera
Room that is in use no less than eight (8) months in any calendar
year by Licensee.
1.2
“ Affiliate ” means any person,
corporation or other entity, which is controlled by, or is under
common control with Licensee for the purpose of operating
photographic portrait studios.
1.3
“ Camera Room(s)” means a room or
a mobile unit with a lighting system and camera that is used for
portrait photography .
1.4
“Change in Ownership” means a change in
ownership of a party evidenced by (a) acquisition or other transfer
of more than fifty percent (50%) of its common stock to a third
party or (b) a third party’s acquisition of all or
substantially all of a party’s assets or business.
1.5
“Closed Modifications” means
modifications to the Software requested by Licensee which are
incorporated into the Licensor’s Software code base and not
integrated into Licensor’s “off-the-shelf”
Software and are provided to Licensee according to the fee schedule
set forth in Exhibit B. Licensor may provide such Closed
Modifications to third parties subject to such third parties’
payment of project-cost-plus-expedite-fees as determined by
Licensor in its sole discretion.
1.6
“Confidential Information” means any and
all trade secrets, proprietary or confidential information as such
terms are most broadly defined under common law, statute and other
applicable law, including without limitation, plans, schedules,
specifications, training materials, test results, pricing,
marketing, customer and financial information and Licensed
Technology source code and documentation, to the extent previously,
currently or subsequently disclosed by one party to the other
hereunder or otherwise. Confidential Information will not include
information that the receiving party can prove: (a) was
already in the receiving party’s possession as a matter of
record prior to receipt; ( b) was independently developed by the
receiving party as a matter of record; (c) was obtained from a
third party who, insofar as is known to the receiving party, was
not prohibited from transmitting the information to the receiving
party by a contractual, legal or fiduciary obligation to the
disclosing party; or (d) was or became generally available to the
public other than as a result of disclosure by the receiving
party.
1.7
“Customizations” means Closed
Modifications, Open Modifications and Exclusive Modifications to
the Software requested by Licensee and performed by Licensor
pursuant to any Statement(s) of Work.
1.8
“Documentation” means the standard user
manual or other documentation or explanatory material describing
the functions and principles for operating the Software.
|
|
1.9
“Error” means a failure of the Software
to operate in material conformance with its
Documentation.
1.10
“Error
Fixes” means Error-correction modifications to the
Software provided pursuant to the Maintenance Agreement.
1.11
“Exclusive Modifications” means
modifications to the Software requested by Licensee which are
designated as exclusively licensed to Licensee and mutually agreed
to between both parties in writing and provided by Licensor at the
fee schedule set forth in Exhibit B. Such Exclusive Modifications
may be incorporated into the Licensor’s code base, solely for
the benefit of the Licensee, but will not be integrated into the
Licensor’s “off –the-shelf” Software or
otherwise provided to third-parties without the written
consent of Licensee.
1.12
“ Lab ” means a central or regional photo
processing laboratory owned or leased and controlled by Licensee or
any Affiliate that is in communication with one or more Studios or
customers of Licensee to provide order processing and direct
digital printing and that is configured in accordance with computer
specifications provided by Licensor.
1.13
“Lab Software” means the Labtricity
server and workstation Software platform developed by Licensor and
all associated components, including Labtricity server, Gateway
server, print server and all other related components and successor
Lab Software products.
1.14
“Licensed Technology” means the Software,
the Documentation, any material created for Licensee under the
Maintenance Agreement, and all code, ideas, inventions, algorithms,
know-how, methods and techniques contained or embodied
therein.
1.15
“Maintenance Agreement” means the
Maintenance Agreement of even date herewith by and between the
parties, attached hereto as Exhibit C.
1.16
“ Open Modifications” means modifications
to the Software requested by Licensee which are incorporated into
the Licensor’s Software code base and may be integrated into
Licensor’s “off-the-shelf” Software at
Licensor’s sole option, or otherwise provided to
third-parties subject to such third parties’ payment of
expedite-fees as determined by Licensor in its sole discretion.
Open Modifications shall be provided according to the fee schedule
set forth in Exhibit B.
1.17
“Project” means the development,
implementation and/or support of the Customizations and/or services
described in any Statement of Work.
1.18
“Proprietary Rights” means
patent rights, copyrights, trade secret rights and all other
intellectual property and proprietary rights of any sort throughout
the world, whether or not registered or perfected.
1.19
“Software” means the object code version
of the Studio Software and Lab Software licensed in accordance with
this Agreement, as well as any Customizations created pursuant to
any Statement(s) of Work and Error Fixes and Upgrades provided
pursuant to the Maintenance Agreement.
1.20
“Source Code Escrow Agreement” means the
source code escrow agreement executed by the parties as more fully
set forth in Exhibit D.
1.21
“Statement(s) of Work” means the
statement(s) of work executed by Licensor and Licensee for
Customizations to the Software, performed on a project-by-project
basis. All such Statements of Work shall classify all
Customizations as Open Modifications, Closed Modifications and/or
Exclusive Modifications. Each Statement of Work executed by the
parties shall contain (a) a description of all the services and
Customizations that will be provided by Licensor to Licensee
thereunder, including any third party services and products; and
(b) complete pricing information for the Project. If there is a
conflict between any term of this Agreement and a Statement of
Work, the terms of this Agreement shall prevail. Each Statement of
Work executed by the parties shall be deemed attached hereto and
incorporated herein.
|
|
1.22
“Studio” means a mobile or fixed-site
retail photographic studio with one or more Camera Rooms owned or
leased and controlled by Licensee or any Affiliate that is
configured in accordance with computer specifications provided by
Licensor.
1.23
“Studio Software” means the (i) Portrait
& Wedding and Darkroom Pro download/print server Software and
(ii) Portrait & Wedding and Darkroom Pro sales/capture software
platforms developed by Licensor, and all associated components and
all successor products of (i) and (ii) herein.
1.24
“ Upgrades ” means any enhancements or
modifications to the Software (including Open, Closed and Exclusive
Modifications).
1.25
“Warranty Period” shall have the
meaning set forth in Section 9.2 below.
2 License
Grant.
2.1
“ Commercial License” Subject to all the
terms and conditions of this Agreement, Licensor hereby grants
Licensee under all Proprietary Rights of Licensor applicable to the
Licensed Technology (i) a perpetual, non-exclusive, non-sub
licensable and non-transferable license (except as set forth in
this Section 2.1 and in Section 14.1) solely to use the
Licensed Technology (except for Exclusive Modifications) in
accordance with the Documentation in Licensee’s current and
future Studios and Labs as long as Licensee
pays Licensor Studio Software License Fees and Lab
Software License Fees pursuant to Section 7, and (ii) a perpetual,
exclusive, non-sub licensable and non-transferable license
(except as set in this Section 2.1 and in Section 15.1) solely
to use any Exclusive Modifications in accordance with the
Documentation in the Licensee’s Studios and
Labs as long as Licensee pays Licensor Studio Software
License Fees and Lab Software License Fees pursuant to Section 7.
The licenses granted by this Section 2.1 includes the right to copy
the Licensed Technology as necessary for installation in
Licensee’s current and future Studios and Labs, subject to
Licensee’s payment of Licensee Fees in accordance with
Section 7. Licensee may use the Licensed Technology in all current
and future Studios and Labs and may relocate any of its
Studios and Labs without incurring additional fees so long as it
pays aggregate fees in accordance with Section 7. Notwithstanding
any other provision of this Agreement, Licensee may sublicense use
of the Lab Software to one or more third party labs upon payment of
an additional license fee of Ten Thousand Dollars ($10,000.00) per
lab, provided that any such third party lab shall use the Lab
Software exclusively to provide service to Licensee and Licensee
shall be responsible for any such third party lab’s full
compliance with the terms of this Agreement.
2.2
“
Lab Software Configuration; Gateway
Administration” Licensor agrees to assist Licensee,
at Licensee’s expense to set up an independent configuration
of Labtricity at Licensee’s offices in St. Louis, all other
Lab locations and other Licensee hosting facilities, if any.
Licensee shall not be required to route its photography through the
Licensor gateway; however, the parties agree to work towards
setting up a duplicate set of Licensee Labtricity gateways at
Licensor’s designated hosting location(s) for the purposes of
disaster recovery at Licensee’s sole cost and expense,
including but not limited to all costs of setup and annual hosting.
Licensor shall be responsible for all software administration on
the Gateway server. Licensee shall be responsible for all hardware
administration on the Gateway server.
2.3
“Scope” Licensee has no right to receive,
use or examine any source code or design documentation relating to
the Licensed Technology except as set forth in this Agreement, the
Maintenance Agreement and the Escrow Agreement. The Licensed
Technology and the configurations of the Studios/Camera Rooms and
the Labs shall require and may include third party software and/or
hardware for the Software to operate in accordance with its
Documentation. Licensee shall be solely responsible for purchasing
any such third party hardware and shall procure any and all
licenses necessary to use such third party software prior to any
receipt or use of the Software by Licensee. The third party
licenses and hardware required to operate Licensee’s Studios
and Labs with the Software are identified on Exhibit A, attached
hereto and incorporated herein.
|
|
3
Restrictions on License.
3.1
“Restrictions”
Except as reasonably required to use the Licensed Technology in
accordance with this Agreement and, except for copies solely for
back-up, archival, stand-by, disaster recovery, testing and quality
assurance purposes, Licensee may not copy the Licensed Technology
except with Licensor’s prior written consent. Licensee must
reproduce and include Licensor’s copyright notice and any
other proprietary notices that appear on the original Licensed
Technology on any copies and any media therefor. Licensor shall
deliver to Licensee Software keys solely for back-up, archival,
stand-by, disaster recovery, testing and quality assurance copies
of the Licensed Technology. Any and all use of the Licensed
Technology shall be in accordance with the terms and conditions of
this Agreement. Except as otherwise expressly provided in this
Agreement or previously approved in writing by Licensor, Licensee
shall not and shall not allow any third party to: (a) decompile,
disassemble, or otherwise reverse engineer or attempt to
reconstruct or derive any source code or underlying ideas,
algorithms, structure or organization from the Licensed Technology
or from any other information by any means whatsoever; (b)
distribute, disclose or allow use of any of the Licensed Technology
in any format through any timesharing device, service bureau,
network or by any other means, to or by any third party other than
Licensee’s personnel; (c) remove or obscure any
identification, copyright or other proprietary or restrictive
notices or legends contained or included in any of the Licensed
Technology; or (d) modify, incorporate into or with other software
or create a derivative work of the Licensed Technology or any
portion thereof. A software protection key will be incorporated
into the Software to protect against unlawful duplication and
copyright infringement. ANY ATTEMPTS TO REVERSE ENGINEER, COPY OR
OTHERWISE USE THE SOFTWARE IN VIOLATION OF THIS SECTION 3.1
WILL IMMEDIATELY VOID ALL WARRANTIES TO THE SOFTWARE UPON
LICENSOR’S NOTICE TO LICENSEE IN ACCORDANCE WITH SECTION 8.2
(b).
3.2
“Audit Rights” Licensor will have access
to such portion of Licensee’s records and premises to allow
Licensor to determine whether Licensee is in compliance with the
terms and conditions of this Agreement. Such inspection and audit
shall be conducted by an independent third party auditor selected
and paid by Licensor and reasonably acceptable to Licensee, and
such auditor shall be required to sign a confidentiality agreement
in a form containing terms and conditions customarily found in such
agreements. Such access will be: (a) not more than once each twelve
(12) month period; (b) during Licensee’s regular business
hours, on reasonable written notice; and (c) arranged so that, to
the extent possible, Licensee’s regular business activities
are minimally disrupted. Licensee will immediately correct any
deficiencies discovered in the course of the audit. If the results
of any such audit reveal that Licensee is not in compliance with
the terms and conditions of this Agreement (or, with respect to
Licensor’s payment obligations, has underpaid Licensor by
greater than five percent (5%), then Licensee shall pay or
reimburse Licensor for the costs and expenses incurred by Licensor
with respect to such audit; otherwise, Licensor shall be
responsible for all such costs and expenses.
4
Maintenance Services; Training; Source Code Escrow.
4.1
“Maintenance”
Licensor will provide maintenance services in accordance with the
Maintenance Agreement attached hereto as Exhibit C for so long as
Licensee uses the Licensed Technology and pays Maintenance
Fees.
4.2
“Training” At Licensee’s expense,
Licensor will train Licensee employees and agents selected by
Licensee in the maintenance of the Licensed Technology at the rates
set forth in Exhibit B. Licensor further agrees to provide a
reasonable fee based service to train end user support teams of
Licensee, as determined by Licensor in its sole and reasonable
discretion.
5
Source Code Escrow.
Contemporaneously
with the execution of this Agreement, the parties shall execute and
deliver a three-party source code escrow agreement with an
independent third party escrow agent, substantially in the form
attached hereto as Exhibit D (the “Escrow Agreement”).
Licensor shall deliver the source code and documentation for
the Licensed Technology and all Error Fixes and Upgrades to the
escrow agent in accordance with the terms of the Escrow
Agreement, but in no event later than fifteen (15) days after the
Effective Date. Licensor shall have no right to amend the Escrow
Agreement without the prior written consent of all the parties to
the Escrow Agreement.
|
|
Licensee shall pay Licensor
annually in accordance with Exhibit B for updating and
maintaining the escrowed source code and Licensee shall pay all
Escrow Agent fees (as prescribed in the Escrow
Agreement).
6
Licensor’s Retention of Rights.
As
between the parties, Licensor retains exclusive ownership of all
rights, title and interest including, without limitation, all
Proprietary Rights, in and to the Licensed Technology, and all
copies, portions and modifications (by whomever made) thereof.
Unless otherwise agreed in the Statement of Work, any and all
Customizations to the Software or other Licensed Technology
developed pursuant to a Statement of Work or otherwise provided as
part of the Maintenance Services shall be owned exclusively by
Licensor, and licensed to Licensee as set forth in Section 2 of
this Agreement. The license does not constitute a sale of the
Licensed Technology, or any portion or copy thereof. Each party
recognizes that Licensor grants no licenses, by implication,
estoppel or otherwise, except for the license expressly set forth
in Section 2 of this Agreement.
7
Charges and Payment.
7.1
“General” Licensee shall pay to Licensor
the Studio License Fees and the Lab License Fees in accordance with
the provisions contained in the attached Exhibit B. Licensor
acknowledges receipt of Licensee’s payment of License Fees
for the first 246 camera rooms that were installed in 2004. In
addition, Licensee will pay or reimburse Licensor for all taxes,
assessments, duties, permits and fees, however designated, that are
levied upon this Agreement, the Software or the licenses granted
hereunder, excluding, however, franchise taxes and
employment taxes payable by Licensor and taxes based on
Licensor’s net income. All payments made by Licensee to
Licensor shall be made in U.S. Dollars.
7.2
“Credits for Certain Modifications”
Licensor shall notify Licensee prior to incorporating the Closed
Modifications into the Software and/or otherwise
providing or licensing the Closed Modifications to
another customer of Licensor. Licensor shall obtain
Licensee’s written consent (which Licensee may, in its sole
discretion, withhold) prior to incorporating the Exclusive
Modifications into the Software or otherwise providing or licensing
the Exclusive Modifications to another customer of Licensor.
Licensee shall receive a credit towards the current year’s
fees due under the Maintenance Agreement equal to the sum of 50% of
the development cost for each Closed or Exclusive Modification to
allow Licensor to provide any such Closed or Exclusive Modification
to another customer and share the cost of development.
Shou
|
|
