This OEM agreement (this “Agreement”) is made effective as of _________ (“Effective Date”) by and between
ALFA S.p.A. having its principal place of business located at _____________, (Italy), hereinafter referred to as “ALFA”
BETA INC., having its principal place of business located at _____________ (USA) hereinafter referred to as “BETA”
The parties agree as follows:
1.1 “Products” means authorised copies of the ALFA computer software programs identified in Exhibit A attached hereto and made a part hereof and related Product enabling license files, license keys and related Documentation.
1.2 “Documentation” means all user manuals and other written materials provided on CD or manuals supplied by ALFA to BETA describing the installation, operation and maintenance of the Products.
1.3 “License Agreement” means the ALFA Corporation License Agreement in the form of Exhibit F attached hereto and made a part hereof.
1.4 “Client System” means a computer-based system – which may consist of hardware, firm and/or software, developed, designed or assembled and implemented in whole or in part by BETA for a Client in which one or more Products are Embedded, to which BETA has added significant value through its development, design or assembly efforts.
1.5 “Embed” means to integrate a Product into a Client System, in such a fashion that the embedded Product becomes an integral part of the Client System.
1.6 “Product Revenue” means all fees paid by BETA to ALFA, including (i) Product license fees, and (ii) extended support contract fees.
1.7 “Client” means an End-User who obtains from BETA a duly authorised license right to use one or more Products as Embedded in a Client System at a designated location and who does not have a right to farther sublicense such Produces) to any other person.
1.8 “Price List” means the prices identified in Exhibit A.
1.9 “Purchase” or “Sale” of the Products, or words of similar import, mean the purchase or sale of a license right only.
GRANT OF BETA LICENSE RIGHTS
2.1 Grant of Distribution Rights. Subject to the terms and conditions of this Agreement and effective only during the term of this Agreement:
2.1.1 Development and Embedding License. ALFA grants to BETA a nonexclusive, non-transferable development license to use the Products to develop Client specific computer application Products, and to Embed Products into Client Systems.
2.1.2 Distribution License. ALFA grants to BETA a nonexclusive, non-transferable license to market, promote and distribute the Products solely as Embedded in Client Systems solely to clients.
2.1.3 Demonstration License. In furtherance of BETA’S marketing, promotion and distribution rights and obligations hereunder, BETA may use copies of the Products for demonstration purposes on its premises or flat of a prospect provided all copies are removed by BETA from the prospect’s site on the same day such copy is installed. BETA shall not leave in the possession of any customer or prospect any Product (or license file or license key component thereof) licensed to BETA for development or demonstration purposes hereunder.
2.1.4 Certain Limitations. The license rights granted to BETA under this Agreement axe limited to computer readable, object code versions of the Products only; BETA shall have no access to or any license rights to human readable, source code versions of any Product. All ALFA copyright, trademark and other proprietary and intellectual property notices shall be preserved and conspicuously displayed in connection with all use of any Product (including Documentation) or any reproduced portion thereof.
2.2 License Agreement. The terms and limitations of the License Agreement (including without limitation all liability and remedy limitations) are incorporated herein by this reference and apply to the Product license rights granted to LICENSES hereunder, except where such terms directly conflict with a term of this Agreement in which case the terms of this Agreement shall control.
DUTIES OF ALFA
3.1 PRODUCTS- ALFA shall provide to BETA the number of Products duly ordered by BETA pursuant to Section 5 hereof.
3.2 Training. ALFA shall provide training for BETA’s designated sales and product support personnel concerning the marketing, installation, operation and maintenance of the Products. BETA shall pay all expenses of its personnel attending such training session.
3.3 Technical Support. ALFA shall provide, at BETA’s expense, reasonable “second level” technical assistance to BETA in the event that BETA is unable, after using its best efforts, to resolve a technical problem encountered by a Client. BETA, at BETA’s expense, shall subscribe annually to ALFA Comprehensive Support subject to ALFA’s technical support terms and conditions as they may be modified from time to time by ALFA.
3.4 Product Warranty. The Product limited warranty set forth in the License Agreement including all limitation thereof and all disclaimers of other warranties.
Duties of BETA
4.1 Advertising and Promotion. If ALFA believes that any BETA promotional materials that mention the Products or their functionality are incorrect or misleading, then BETA shall promptly correct such materials.
4.2 Minimum Sales Commitment. Exhibit A sets forth minimum Product Revenue Amounts. BETA shall meet the minimum Product Revenue Amounts so shown.
4.2.1 Clients. BETA shall license the Products: (as Embedded in Client Systems), to Clients only under binding and enforceable License Agreements, or other binding and enforceable License agreements consistent with the terms of the license Agreement.
4.2.2 No Unauthorised Duplication. BETA shall not, nor shall BETA suffer or permit any Client or other person to, copy any Product or component thereof (including without limitation any license file) except strictly in accordance with the express provisions of this Agreement.
4.3 Technical Support. BETA shall provide all necessary technical support and assistance of the higher quality directly to Clients concerning the proper installation, operation and maintenance of the Clients System. BETA shall distribute promptly Product bug fixes, service packs, and other information regarding improvements to, enhancements to, the Products to Clients.
4.4 Personnel and Training
4.4.1 BETA shall maintain an adequate number of full-time, experienced personnel who are properly trained to market, promote, distribute, license, maintain, otherwise support the Client System(s) and otherwise perform its obligations under this Agreement.
4.4.2 BETA shall send, at its expense, one or more of its technical support employees and one or more of its customer service and training employees to training subsequent to catch new version release of ALFA’s Product.
4.5 Records, Reporting and Verifications
4.5.1 Records. BETA shall maintain accurate records of each Product sold to each Client including the identity of the Client (including name, address and phone number), Product part number, license file serial number and location. Without limiting the foregoing, BETA shall maintain accurate records as is customary in the industry and as may be necessary to confirm and verify compliance with the terms of this Agreement.
4.5.2 VERIFICATION. BETA’s records shall be made available to ALFA and its representatives during normal business hours following reasonable notice to verify compliance with the terms of this Agreement. If an audit discloses that the number of Product licenses or the amount of Product Revenue has been underreported by more than five percent in any reporting period then BETA shall immediately pay to ALFA the amount underreported plus a penalty equal to 100 percent of the underreported amount for that period.
4.6 Indemnification. BETA agrees to indemnify and hold ALFA harmless from and against any and all claims, actions, suits, damages, liabilities, costs and expenses (including reasonable attorneys’ fees) alleging or arising out of (i) the improper installation, support maintenance of the Products or Client Systems by BETA, (ii) any misrepresentations by LICENSES in respect of the Products or Client Systems, (iii) any act or omission that would constitute a violation by BETA of a provision of this Agreement or (iv) any negligent, wrongful or intentional acts or omissions on the part of BETA. If any act or omission of the BETA or their employees, servants, agents, or representatives causes or results in (i) damage to or destruction of property of ALFA or third parties, and/or (ii) death or injury to persons including, but not limited to, employees or invitees of either party, then BETA shall indemnify, defend, and hold ALFA harmless from and against any and all claims, actions, suits, damages, liabilities, costs and expenses, including reasonable attorneys’ fees, resulting therefrom.
4.7 Standard of Performance and Business Conduct
4.7.1 Protection and Preservation of Business. BETA shall perform each of the duties described in this Agreement in a commercially reasonable manner that preserves and protects ALFA’s business reputation and its proprietary rights in the Products.
4.7.2 Business Conduct; Compliance with Laws. BETA shall conducts its business in accordance with all applicable laws and regulations including, without limitation, the laws of the country of BETA’S place of business and the applicable laws of the United States of America. BETA represents that it is familiar with die Foreign Corrupt Practices Act (the FCPA) and covenants that it has not, and hereafter will not, violate any provision of the FCPA. BETA has not made, authorised or offered any payment or the giving of anything of value, directly or indirectly, to any foreign official, political party or officer thereof, candidate for political office or to any third party knowing the payment will be made to some one in the above list for the purposes of influencing that entity to use his or her influence to influence any act or decision of the government in order to retain business for BETA or any person with whom BETA is doing or has done business.
4.7.3 Export Control Compliance. BETA represents that it is familiar with the export control laws and regulations of the United States, including but not limited to regulations of Ac United States Bureau of Export Administration, prohibiting export of goods, directly or indirectly, to “embargoed” countries. BETA shall comply with all such laws and regulations. BETA’s export management system shall provide, among other things, for the review orders received to confirm: (i) that the ultimate destination of any Product is not a destination in violation of any such law or regulation; (ii) that the ultimate customer is not a person or entity on the “denied persons list”; and (iii) that the customer’s intended use does not violate any regulations regarding Diversion, Nuclear Proliferation, Missile Technology or Chemical or Biological Weapons.
4.7.4 Prior Approvals. If any governmental or other authority is required to approve or to receive notification of this Agreement or of the deployment of any Client System, then BETA agrees to advise ALFA promptly of such requirements and to comply fully therewith.
4.8 Anti-Piracy. BETA agrees it win not knowingly engage in the manufacturing, distribution, supply or transfer of counterfeit, pirated or illegal software; and it will not knowingly supply any Product or Client System to customers who engage in the use, manufacture, distribution or other simply or transfer of counterfeit, pirated or illegal software. BETA agrees to report to ALFA any suspected counterfeiting, piracy or other infringement of copyright in computer programs, manuals, marketing materials or other copyrighted materials owned by ALFA or its licensors.
4.9 Additional Covenants. BETA shall perform each of the additional terms, covenants and conditions, if any, described in Exhibit F to this Agreement.
5.1 General Provisions
5.1.1 BETA must purchase from ALFA all necessary or appropriate Product licenses prior to the deployment of any Client System.
5.1.2 All Product orders shall be subject to ALFA’S standard Terms and Conditions of Sale, a copy of which is attached hereto as Exhibit E, if and to the extent to they are not in contrast with this Agreement.
5.2 BETA agrees to pay, collect and remit to ALFA on the dates when they are due all value-added, sates, use, property and other taxes, duties and assessments imposed by any governmental agency in respect of the Products (other than income or similar withholding taxes imposed upon ALFA), and BETA agrees to indemnify defend and hold ALFA harmless against any such liabilities.
5.3 Import Requirements. BETA agrees to obtain at its expense all necessary customs, import and other governmental authorisations and approvals (including, without limitation, foreign exchange, foreign investment and transfer of technology approvals) with respect to this Agreement or BETA’s performance hereunder.
Price and Payment
6.1 Product Price List BETA acknowledges receipt of ALFA’S Product Prices (attached hereto as Exhibit A), which prices may be adjusted by ALFA at any time during the term of this Agreement upon not less than tinny (30) days prior written notice to BETA. BETA has sole discretion to set its own prices.
6.2 Product Price. ALFA reserves the right to amend the Product fist prices at any time.
Trade Secrets and Confidential and
7.1 Proprietary and Confidential Nature of Products
7.1.1 Except for the limited license rights herein granted ALFA does not hereby grant or otherwise transfer any rights or ownership of fee Products to BETA or any third party BETA may receive either from ALFA or others (such as ALFA distributors) non-public information about ALFA, the Products or ALFA’S business (such as information about sales, customers or personnel). All such information is ALFA confidential and proprietary information. Further, certain confidential information is also ALFA trade secret information. For Examples, confidential information about the Products, including but not limited to source code for the Products, is ALFA trade secret information.
7.2 BETA’s Duty to Protect
7.2.1 BETA agrees not to copy, without ALFA’S prior written consent, or otherwise any reproduce any Product, in whole or in part, except as permitted under, this Agreement or the License Agreement. BETA further agrees not to reverse engineer, disassemble or decompile any Product in whole or in part or otherwise attempt to reproduce the source code thereof or its equivalent. BETA further agrees to take all reasonable steps to ensure that no unauthorised persons shall have access to any of the Products or other confidential or trade secret information and that all authorised persons having access to the Products or information shall refrain from any disclosure, duplication or reproduction except to the extent reasonably required in the performance of BETA’s duties and as permitted under this Agreement.
7.2.2 BETA agrees to accord the Products and all other confidential and trade secret information the same degree and methods of protection as BETA undertakes with respect to its confidential information trade secrets and other proprietary data.
7.3 No Product Modifications. Unless authorised in Exhibit F to this Agreement, BETA shall not have the right to receive the source code to any of the Products, or to modify, adapt or alter any of the Products.
Use of Trademarks and Trade Names
8.1 Scope of Use
8.1.1 BETA hereby acknowledge ALFA’s ownership of the trade names and trademarks “ALFA “ and all related trademarks and service marks (including but not limited to “__________”).
8.1.2 ALFA hereby grants to BETA, during the term of this Agreement the non-exclusive limited right to use the proprietary Product names and marks only in connection with the use of the Products in connection with the performance of BETA’s duties under this Agreement BETA agrees not to use such names or marks in connection with any other products or services.
8.1.3 BETA shall properly apply and preserve all ALFA copyright notices and other proprietary rights notices.
8.2 Protection Against Infringement. BETA agrees to notify ALFA promptly of any suspected misuse of any ALFA trade name or trademark.
TERM AND TERMINATION
9.1 Term of Agreement. The initial term of this Agreement shall commence on the Effective Date above and end on ______. Thereafter this Agreement shall automatically be renewed for successive 3 month renewal periods unless ALFA notifies license of non-renewal at least 30 days before the end.
9.2 Termination by ALFA. Notwithstanding paragraph 9.1 hereof, ALFA may terminate this Agreement at any time after the occurrence of any of the following events upon written notice thereof to BETA.
9.2.1 BETA is declared or acknowledge that it is insolvent or otherwise unable to pay its debts as they become due or upon the filing of any proceeding (whether voluntary or involuntary) for bankruptcy, insolvency or relief from creditors of BETA;
9.2.2 BETA enters into any Agreements relating to its acquisition by an unaffiliated third party, or a majority of the equity interest of transferred to an unaffiliated third party;
9.2.3 BETA assigns or transfers, or attempts to assign or transfer, this Agreement or any of its rights or obligations hereunder, without ALFA’s prior written consent;
9.2.4 BETA breaches any material duty, obligation or limitation under this Agreement;
9.2.5 BETA breaches any other material provision or fails to perform any other material obligation of this Agreement and ALFA has given BETA notice of such breach or failure and BETA has failed to core the breach or failure within 30 days after such notice.
9.3 Termination by BETA. Notwithstanding Section 9.1 hereof, BETA may terminate this Agreement at any time after the occurrence of any of the following events upon written notice thereof to ALFA:
9.3.1 ALFA is declared or acknowledges that it is insolvent or otherwise unable to pay its debts as they become due or upon the filing of any proceeding (whether voluntary or involuntary) for bankruptcy, insolvency or relief from creditors of ALFA;
9.3.2 BETA enters into any Agreements relating to its acquisition by an unaffiliated third party, or a majority of the equity interest of transferred to an unaffiliated third party;
9.3.3 ALFA breaches any material provision of this Agreement and BETA has given ALFA notice of such breach and ALFA has failed to cure the breach within 30 days after such notice;
9.3.4 ALFA assigns or transfers this Agreement or any of its rights or obligations hereunder without BETA’S consent.
9.4 Actions Following Termination. Upon the termination (or expiration) of this Agreement, the parties agree to continue cooperating with each other and to carry out an orderly termination of their relations. BETA agrees not later than ten (10) days following the effective date of such termination:
(i) To provide ALFA with all outstanding reports and payments due ALFA;
(ii) To cease all use of the Products;
(iii) To assign to ALFA all rights, if any, to existing and prospective Clients;
(iv) To report to ALFA in reasonable detail the status of all pending Product orders, License Agreements, and relationships with existing and prospective Clients; and
(v) To return to ALFA all Products and other materials and information of ALFA in any form (proprietary or otherwise) in BETA’S possession or under its control. BETA shall return all consigned and promotional Product in inventory for no credit. BETA shall return all other Product in inventory for full credit, provided such Products axe the current version in original packaging.
9.5 Continuing Obligations. BETA’s obligations relating to payment for Products, confidential, trade secret and proprietary information, trademarks, maintenance of records, indemnity, anti-piracy, business conduct, import requirements and taxes, and arbitration of disputes shall survive termination or expiration of this Agreement.
9.6 Liability on Termination. BETA hereby waives any and all compensation or damages relating to or arising from, directly or indirectly, such termination and agrees that it shall have no rights to damages or indemnification of any nature, specifically including any commercial severance pay related to loss of future profits, expenditure for promotion of the Products, or payment of goodwill or other commitments in connection with the business and goodwill of BETA.
10.1 Complete Agreement. This Agreement, including the Exhibits attached hereto, sets forth the entire Agreement and understandings between the parties hereto with respect to the subject matter hereof. This Agreement merges all previous discussions and negotiations between the parties and supersedes and replaces any and every other Agreement which may have existed between ALFA and BETA.
10.2 Modification or Amendment. Except to the extent and in the manner specified in this Agreement, any modification or amendment of any provision of this Agreement must be in writing and bear the signature of the duly authorised representatives of both parties.
10.3 No Implied Waivers. The failure of either party to exercise any right or option granted under this Agreement, or to require the performance by the other party hereto of any provision of this Agreement, shall not prevent a subsequent exercise or enforcement of such provisions or be deemed a waiver of any subsequent breach of the same or any other provision of this Agreement.
10.4 Assignability. BETA shall not sell, assign, transfer, convey, delegate or encumber its duties and obligations hereunder, or any rights or interests hereunder, and shall not suffer or permit any voluntary assignment or transfer or encumbrance thereof, by operation of law or otherwise, without the prior written consent of ALFA. For purposes of this Agreement any sale, transfer, assignment or conveyance of a majority of the assets of BETA or either a majority or a controlling interest in the equity ownership of BETA, either directly or indirectly, whether voluntarily or by operation of law, shall be deemed to be an assignment or transfer in violation of this provision.
10.5 Notices. All notices, requests, reports, and other communications permitted or required to be given under this Agreement shall be in the English language, and shall be deemed to have been duly given if such notice or communication shall be in writing and sent by personal delivery or by airmail, cable, telegram, telex, facsimile transmission or other commercial means of rapid delivery, postage or costs of transmission and delivery prepaid, to the parties at the above addresses until such time as either party hereto shall give the other party hereto written notice of a change of address.
10.6 Law Governing Agreement. The validity of this Agreement and the rights, obligation and relations of the parties hereunder and in any dispute between them shall be construed and determined under and in accordance with the substantive laws of Italy. To the extent otherwise applicable, the parties hereto agree that the United Nations Convention on the International Sale of Goods shall not apply to this Agreement.
10.7 Severability. If any provision of this Agreement is determined by a court of competent jurisdiction to be in violation of any applicable law or otherwise invalid or unenforceable, such provision shall to such extent as it shall be determined to be illegal, invalid or unenforceable under such law be deemed null and void, but this Agreement shall otherwise remain in full force and effect.
10.8 Dispute Resolution. All disputes, claims or controversies arising out of or relating to this Agreement shall be finally settled by the competent Court of _______________ (Italy).
10.9 No Employment or agency Relationship. This Agreement does not create any relationship of employment, association, partnership franchise or agency between the parties, and BETA agrees to conduct its business as an independent contractor. BETA agrees not to assume, create or enter into any obligation, agreement or commitment on behalf of, or for the account of, ALFA or obligate ALFA in any manner.
In Witness Whereof, this Agreement has been executed as of the day and year first above written.
ALFA S.p.A. BETA INC.