Software OEM Agreement

Exhibit 10.8 -------------------------------------------------------------------------------- Confidential treatment has been requested for portions of this exhibit. The copy filed herewith omits the information subject to the confidentiality request. Omissions are designated as *****. A complete version of this exhibit has been filed separately with the Securities and Exchange Commission. --------------------------------------------------------------------------------


ALLAIRE SOFTWARE OEM AGREEMENT


Licensee: DeskTalk Systems, Inc.
A California Corporation


Address: 19191 S. Vermont Avenue, 9th Floor
Torrance, CA. 90505


Legal Contact: Paul Madick Title: General Counsel Direct: 310.630.1046 Main: 310.630.1000 Fax: 310.323.6197 Email: pmadick@desktalk.com Technical Contact: Andy MacBean Address: 61 Spitbrook Road, Suite 400
Nashua, NH 03060-5614 Phone: 603.897.0000 x 30 Email: amacbean@desktalk.com Date: August 7, 2000


This Agreement is entered into as of the date set forth above between Allaire Corporation, a Delaware corporation having its principal place of business at 275 Grove Street, Newton, Massachusetts 02466 ("Allaire") and the Licensee identified above ("Licensee").


RECITALS
--------


A. Allaire owns, markets and distributes the proprietary commercial computer software products identified on Exhibit A to this Agreement (together with any upgrades, successor or replacement products, whether or not subject to the rights granted under this Agreement, the "Allaire Products");


B. Licensee is developing and intends to market and distribute the proprietary commercial computer software product identified on Exhibit A (the "Licensee Products"); and


C. Licensee and Allaire desire to enter into an agreement whereby Licensee will have the right to distribute the Allaire Products together with the Licensee Products as a single commercial unit (the "Product Bundle") pursuant to the terms of this Agreement.


AGREEMENT
---------


1. PRE-DISTRIBUTION DELIVERABLES
-----------------------------


1


1.1 Transfer of Master Copies. Allaire shall provide master copies of the
------------------------- Allaire Products (the "Master Copies") and the Allaire end-user license agreement to Licensee promptly following execution of this Agreement. Licensee shall have the right pursuant to the terms and conditions of this Agreement to make exact object code copies of the Allaire Products to be distributed under this Agreement only from the Master Copies. Licensee shall fully account for all copies of the Allaire Products. Notwithstanding anything to the contrary Licensee shall not be obligated to account for any NFR copies of the Allaire Products. Except as expressly permitted by this Agreement, Licensee is strictly prohibited from providing access or transferring the Master Copies to any other third parties.


1.2 Product Compatibility and Installation. Licensee shall verify the
-------------------------------------- compatibility of the Allaire Products with the Licensee Products prior to distributing the Product Bundle. If appropriate, Licensee agrees to provide Allaire with units of the Product Bundle during the term of this Agreement for Allaire to use in assisting Licensee with any compatibility issues if required. Licensee is responsible for properly combining the installation of the Allaire Products and the Licensee Products into a single installation or may distribute in conjunction with Licensee Products, provided that the Allaire Products are not distributed as a standalone product. Allaire hereby grants Licensee the nonexclusive, nontransferable right to reproduce and use the Allaire Products for software compatibility testing (with the Licensee Products for purposes of development, quality assurance testing and support of the Product Bundle at no cost to Licensee.


2. BUNDLE DISTRIBUTION
-------------------


2.1 Bundle Distribution Rights. Allaire grants to Licensee a worldwide,
-------------------------- non-exclusive, non-transferable, fee-bearing license (a) to reproduce exact object code copies of the Allaire Products pre-installed onto the media containing Licensee's Products and (b) to market and distribute the Allaire Products; provided that (i) copies of the Allaire Products are marketed and distributed with the Licensee Products as a single commercial unit (i.e., the Product Bundle), for a single price, and not as a stand-alone product and (ii) use of copies of the Allaire Products is governed by Licensee's end user license agreement ("Licensee's EULA") the terms and conditions of which shall be at least as protective of Allaire's intellectual property and other rights (including, without limitation, all prohibitions on copying and use) as is Allaire's end user license agreement, a copy of which is attached hereto as Exhibit E and made a part hereof (the "Allaire EULA"), and which inures to the benefit of Allaire, provided that Licensee's EULA shall be freely transferable so long as the End User transferor completely uninstalls the Product Bundle and the End User transferee agrees to be bound by all of the terms and conditions of Licensee's EULA and further provided that Licensee's EULA need not contain any restriction that the Product Bundle be used for internal purposes only. Licensee shall not alter or remove any patent, trademark, copyright and trade secret notifications or "restricted rights" or 'limited rights" legends (or their equivalent under the laws of any foreign government) included with the Allaire Products. Licensee shall refrain from quoting or referring to a separate price for the Allaire Products.


2.2 Sublicense Rights. Allaire grants to Licensee a worldwide, non-
----------------- exclusive, nontransferable, fee-bearing license to sublicense its marketing and distribution rights under paragraph 2.1, subject to the limitations set forth in this Agreement, to third parties ("Sublicensees"); provided that Licensee enters into a written agreement with each such Sublicensee that (i) is at least as protective of Allaire's intellectual property and other rights as is


2


this Agreement, (ii) provides payment, record-keeping and reporting obligations and audit rights at least equivalent to those set forth in this Agreement and (iii) permits Licensee to provide Allaire with the minimum marketing assurances set forth on Exhibit C. Licensee agrees to exercise its audit and other rights
--------- in, and to enforce such Sublicensee agreements, as reasonably requested by Allaire or as otherwise necessary to protect Allaire's rights hereunder. Notwithstanding the right to sublicense granted pursuant to this Section 2.2, the Product Bundle shall not be marketed under any brand name other than as expressly provided in this Agreement. Notwithstanding the above, Licensee may market and distribute the Product Bundle under an alternate brand name, provided that the Product Bundle remains materially similar in functionality.


2.3 Scope of Distribution. Licensee and Allaire acknowledge and agree
--------------------- that it is the intent of the parties that Licensee shall sell the Product Bundle (and not a version of Licensee's Product that does not include the Allaire Product) during the term of this Agreement.


2.4 No Other Distribution Rights. Other than as expressly provided in
------------------------- this Section 1 and 2, Licensee is not authorized to distribute or to authorize others to distribute the Allaire Products in any other manner without the written consent of Allaire.


2.5 Licensee's End User License Agreement. The terms and conditions of
------------------------------------- Licensee's EULA shall serve as the only documentation distributed by Licensee to end users defining each user's rights and obligations regarding the Allaire Products and Licensee agrees to provide in a conspicuous manner one copy of Licensee's EULA with each unit of the Product Bundle. Licensee agrees to exercise its rights in, and to enforce Licensee's EULA, as reasonably necessary to protect Licensee's rights thereunder and Allaire's rights hereunder. Although Licensee shall not be liable to Allaire for any user's failure to comply with the terms and conditions of the end-user license agreement, Licensee agrees to report to Allaire any known or suspected violation(s) of the end-user license agreement and to reasonably cooperate with Allaire in any enforcement actions taken by Allaire, at Allaire's expense.


2.6 License to use Allaire Marks.- The Bundled Products shall be branded
----------------------------- in accordance with Exhibit A. Allaire hereby grants to Licensee and Licensee's
--------- distributors a nonexclusive and nontransferable right to use Allaire's name and other trademarks (the "Marks") solely in furtherance of the marketing and distribution of the Product Bundle pursuant to this Agreement and only in accordance with the guidelines identified by Allaire from time to time. Except as specifically provided in this Agreement, nothing in this Agreement shall confer upon Licensee any right, title or interest in any of the Marks or goodwill of Allaire.


2.7 Retained Rights. As between Allaire and Licensee, all rights to the
--------------- Allaire Products, including rights to prepare derivative works, shall belong to Allaire and, except as expressly granted pursuant to this Agreement, all such rights are reserved to Allaire. By way of illustration (and not limitation):


(a) Except as expressly provided under this Agreement, Allaire does not convey any intellectual property rights to Licensee. For the purposes of this Agreement, "intellectual property rights" means the intangible legal rights or interests evidenced by or embodied in (1) any idea, design, concept, technique, invention, discovery, or improvement, regardless of patentability, but including patents, patent applications, trade secrets, and know-how; (2) any work of authorship, regardless of the availability of copyright protection, but


3


including copyrights and any moral rights recognized by law; and (3) any other similar rights, in each case on a worldwide basis. Licensee has no right whatsoever to receive, review, or otherwise use or have access to the source code for the Allaire Products.


(b) Allaire retains the right to market, distribute and support the Allaire Products through any person or entity on any terms deemed desirable by Allaire in its sole discretion.


(c) Without the prior written consent of Allaire, except as expressly permitted by this Agreement, Licensee shall refrain from copying, reverse engineering, disassembling, decompiling, translating, or modifying the Allaire Products, or granting any other person or entity the right to do so.


Notwithstanding anything to the contrary contained in this Agreement, in the event of any willful violation of Allaire's intellectual property rights which would result in material harm to Allaire, Allaire shall have the right to immediately terminate this Agreement by written notice given at any time after such violation. For any other violation of Allaire's intellectual property rights, Allaire shall have the right to terminate this Agreement if, within thirty (30) days after written notice, Licensee has failed to cure such violation to Allaire's reasonable satisfaction.


3. CONSIDERATION; COSTS
--------------------


3.1 Fees. As consideration for the rights licensed to Licensee hereunder,
---- Licensee shall pay to Allaire, immediately upon the execution of this Agreement, the fees specified in Exhibit B which is attached hereto and made a part hereof.
---------


3.2 Promotional Consideration. As additional consideration for the rights
------------------------- licensed to Licensee hereunder, Licensee, shall, at its own expense, actively promote and market the Product Bundle. Licensee and Allaire shall, in addition, specifically undertake the marketing and promotional activities identified in Exhibit C. Subject to the terms of this Agreement, Licensee may in its --------- discretion, without the prior approval of Allaire, undertake additional marketing and promotional activities for the Product Bundle. Licensee agrees, however, that any reference to the Allaire Products shall be subject to prior review and approval by Allaire (which approval shall not be unreasonably withheld). Licensee shall not (i) make any representations or statements regarding the Allaire Products other than those contained in Allaire's sales literature and advertising copy or (ii) state or imply that Licensee's products are endorsed or recommended by Allaire.


3.3 Costs and Taxes. Licensee shall assume all costs and obligations
--------------- involved with developing, manufacturing, marketing and distributing the Product Bundle, including any commissions and all sales, property, excise, duties, and other federal and local taxes (other than those based on Allaire's net income). Except as expressly agreed in writing, each party shall bear its own expenses arising from negotiating and other performance due under this Agreement.


4. PROFESSIONAL SERVICES, UPGRADES AND SALES INFORMATION.
-----------------------------------------------------


4.1 Technical Support and Other Professional Services. The technical
---------------------------------------- support obligations of each party for the Product Bundle and the Allaire Products and Licensee Products


4


included therein are set forth in Exhibit D. Additional professional services
--------- provided by Allaire, if any, are also set forth on Exhibit D.
---------


4.2 Updates and Up-grades. If Exhibit A specifies a particular numbered
--------------------- --------- release of the Allaire Products, then Licensee's rights under this Agreement shall not extend to subsequent numbered releases. If Exhibit A does not specify
--------- a particular numbered release, then Licensee's rights under this Agreement shall extend to subsequent numbered releases of those Allaire Products identified in the exhibit, which are introduced by Allaire during the term of this Agreement. In such case, Allaire shall provide such subsequent numbered releases to Licensee when they are prepared for release and the parties shall have the same rights and obligations with respect to the subsequent numbered release as are set forth herein. Upon receipt of a new release, Licensee shall use all commercially reasonable efforts to incorporate such new release in the next scheduled release of the Product Bundle.. Nothing in this Agreement shall preclude Allaire from altering, deleting or adding to the Allaire Products. Allaire agrees, however, to use commercially reasonable efforts to notify Licensee of any such alterations, etc., in advance. Allaire reserves the right to obsolete support for any release except the current release or one prior release.


4.3 Registration and Sales Information. Licensee shall provide to Allaire
---------------------------------- the payment and forecast reports specified in Exhibit B.
---------


5. WARRANTIES AND INDEMNITY
------------------------


5.1 Warranty.
--------


(a) Allaire warrants that at the time of delivery to Licensee the Allaire Products will be free from defects that prevent the software from performing in all material respects in the manner described in the applicable user manual for a period of 90 days from the date of delivery to Licensee. Allaire does not warrant that the operation of each Allaire Product will be uninterrupted or error-free.


(b) Allaire warrants that on the date of delivery to Licensee the Allaire Products will not contain any code that is intentionally constructed to damage, interfere with or otherwise adversely affect computer programs, data files, or hardware without the consent or intent of the program's rightful end user.


(c) Allaire warrants all media delivered to Licensee to be free of defects in materials and workmanship under normal use for 90 days from the date of delivery to Licensee.


(d) Allaire warrants that the Allaire Products are capable of correctly processing, providing and/or receiving date data within and between the twentieth and twenty-first centuries (including leap year calculations), and the years 1999 and 2000; provided that (i) all products (for example, hardware, software and firmware) used with the Allaire Products properly exchange accurate date data with the Allaire Products, (ii) the Allaire Product is used in accordance with the then current applicable Documentation , and (iii) the most current version of the Allaire Product in question is installed and being used (including all Allaire patches, fixes and other interim releases and updates thereto) at the time any non-compliance with this warranty is reported. In the event of any non-compliance with the foregoing warranty, provided that all of the foregoing conditions are met and provided that any non-compliance with the above warranty is reported and the Allaire Product in question is returned no more than ninety (90) days


5


following the advent of the Year 2000, Allaire will, at its option, as the sole remedy for such non-compliance, either (i) provide a corrected Allaire Product (or replacement products substantially similar in functionality) at no charge to Licensee or refund the amount paid by Licensee for each unit of Allaire Product returned by Licensee as a result of such non-compliance. THE REMEDIES SET FORTH IN THIS YEAR 2000 COMPLIANCE WARRANTY ARE THE SOLE AND EXCLUSIVE REMEDIES FOR BREACH OF AN EXPRESS OR IMPLIED YEAR 2000 COMPLIANCE WARRANTY WITH RESPECT TO THE ALLAIRE PRODUCTS.


At Allaire's option and provided that any non-compliance with the above warranties stated in sections (a), (c) and (d) hereof is reported in writing no more than ninety (90) days following delivery to Licensee, Allaire's sole responsibility shall be (i) to replace defective media or documentation, as the case may be, (ii) to use reasonable efforts to correct such defects in the Allaire Products without charge, or if (i) and (ii) are not commercially reasonable, (iii) to refund the license fee paid to Allaire for the each affected copy of the Allaire Product and terminate all licenses granted to Licensee for such copy. Any replacement software will be warranted for the remainder of the original warranty period or 30 days, whichever is longer. THESE REMEDIES ARE THE SOLE AND EXCLUSIVE REMEDIES AVAILABLE TO LICENSEE FOR BREACH OF EXPRESS OR IMPLIED WARRANTIES WITH RESPECT TO THE SOFTWARE AND RELATED DOCUMENTATION.


THE WARRANTIES SET FORTH HEREIN ARE THE ONLY WARRANTIES APPLICABLE TO THE ALLAIRE PRODUCTS. ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF TITLE, MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE ARE EXPRESSLY DISCLAIMED.


5.2 Notice and Indemnification.
--------------------------


(a) Notice of Certain Claims and Infringing Acts. Licensee agrees to
-------------------------------------------- notify Allaire in writing of any claim or action for infringement threatened or brought against Licensee, or conflicting uses of, application or registrations for proprietary rights in, or acts of infringement or unfair competition involving the Allaire Products or the Marks, promptly after Licensee learns of such matter. Licensee shall furnish all records, documents, specimens and testimony relating to such claim or action as Allaire may reasonably request, at Allaire's cost. When requested by Allaire Licensee shall provide such reasonable assistance to Allaire as may be necessary and customary to assist Allaire in defending or enforcing such claim, at Allaire's cost; however, Licensee shall not cause any legal action for enforcement to be instituted without Allaire's prior written approval.


(b) Indemnification by Allaire. Allaire agrees to defend, indemnify
-------------------------- and hold harmless Licensee against and in respect of any loss, damages, obligation, penalty, deficiency or liability (including, without limitation, reasonable attorneys' fees) awarded by a court of final jurisdiction against Licensee that result from infringement by the Allaire Products on any patent, copyrights, misappropriation of trade secrets or other intellectual property right of any third party, except if and to the extent such claim of infringement is based on modifications to the Allaire Products made by Licensee or the marketing, distribution or use of the Allaire Products in conjunction or combination with the Licensee Products or products or software not supplied by


6


Allaire. Allaire shall have the right (i) to demand the destruction or return from Licensee of any copies of an Allaire Product which is the subject of a claim of infringement at any time following receipt of notice of such claim (and to credit Licensee the net amount paid for such returned copies, if appropriate), such return to be made at Allaire's direction and expense, and (ii) immediately upon notice, to suspend or terminate the licenses granted hereunder with respect to any of the Allaire Products which are the subject of a claim of infringement. THE FOREGOING STATES LICENSEE'S SOLE AND EXCLUSIVE REMEDY WITH RESPECT TO CLAIMS OF INFRINGEMENT OF THIRD PARTY PROPRIETARY RIGHTS OF ANY KIND.


(c) Indemnification by Licensee. Licensee agrees to defend, indemnify
--------------------------- and hold harmless Allaire against and in respect of any loss, damages, obligations, penalty, deficiency or liability (including, without limitation, reasonable attorneys' fees) awarded by a court of final jurisdiction against Allaire that result from (a) infringement by the Allaire Products on any patent, copyrights, misappropriation of trade secrets or other intellectual property right of any third party solely to the extent that such claim results from a modification or alteration of the Allaire Products by Licensee or the marketing, distribution or use of the Allaire Products in conjunction or combination with the Licensee Products or products or software not supplied by Allaire or (b) any warranty, condition, representation or indemnity granted by Licensee for the Product Bundle in addition to or in lieu of the warranties described in this Agreement, (c) infringement by Licensee's Product (or any other third party product or technology included in the Product Bundle) on any U.S. patent, copyrights, misappropriation of trade secrets or other intellectual property right of any third party. or (d) any breach of the terms and conditions of this Agreement that give rise to termination of this Agreement THE FOREGOING STATES ALLAIRE'S SOLE AND EXCLUSIVE REMEDY WITH RESPECT TO CLAIMS OF INFRINGEMENT OF THIRD PARTY PROPRIETARY RIGHTS OF ANY KIND.


(d) Conditions to Indemnity Obligations. The obligations to defend
----------------------------------- and provide indemnification under this Section 5.2 are subject to the following conditions: (i) the party claiming indemnification shall promptly notify the party having the duty of indemnification in writing of any indemniflable claim or action for which indemnification is sought (provided that any failure to so notify shall not limit the indemnifying party's indemnification obligation except if and to the extent such failure materially prejudiced the indemnifying party's ability to defend against any claim, suit or other proceeding), (ii) the indemnifying party shall, at its option, have sole control of the defense of any such claim or action and all negotiations for any settlement or compromise, provided that the party seeking indemnification shall have the right to provide for its own, separate defense at its own cost and expense.


(e) Settlement and Cooperation. The parties agree to cooperate in
-------------------------- good faith in the defense or settlement of any such demand, claim or suit.


5.3 No Remedy Exclusive/Limitation of Liability. NEITHER PARTY SHALL BE
------------------------------------------- LIABLE TO THE OTHER PARTY FOR ANY INCIDENTAL, CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES OR LOST OR IMPUTED PROFITS OR ROYALTIES ARISING OUT OF THIS AGREEMENT OR ITS TERMINATION, WHETHER FOR BREACH OF WARRANTY OR ANY OBLIGATION ARISING THEREFROM OR OTHERWISE, WHETHER LIABILITY IS ASSERTED IN CONTRACT OR TORT (INCLUDING NEGLIGENCE AND STRICT PRODUCT LIABILITY) AND IRRESPECTIVE OF WHETHER THE PARTY HAS ADVISED OR HAS BEEN ADVISED OF THE POSSIBILITY


7


OF ANY SUCH LOSS OR DAMAGE. EXCEPT FOR THE PARTIES' INDEMNIFICATION OBLIGATIONS IN SECTION 5.2 (B) AND 5.2 (C) ABOVE, NEITHER PARTY'S AGGREGATE LIABILITY FOR DIRECT DAMAGES SHALL EXCEED $1,000,000.00. THE FOREGOING LIMITATIONS SHALL NOT APPLY TO A PARTY'S STATUTORY RIGHTS UNDER APPLICABLE INTELLECTUAL PROPERTY LAWS. EACH PARTY HEREBY WAIVES ANY CLAIMS THAT THESE EXCLUSIONS DEPRIVE SUCH PARTY OF AN ADEQUATE REMEDY.


6. CONFIDENTIALITY
---------------


6.1 Obligation of Confidence. During the performance of this Agreement,
------------------------ each party may receive confidential information from the other. Each party will treat confidential information as confidential and shall protect the disclosed Confidential Information by using the same degree of care, but no less than a reasonable degree of care, to prevent the unauthorized dissemination or publication of the Confidential Information as the recipient uses to protect its own Confidential Information. Neither party will disclose confidential information other than to those of its employees or agents who need to know such information for performance of each party's rights and obligations under this Agreement. Neither party will use confidential information for any purpose beyond the performance of its rights and obligations under this Agreement without the prior written consent of the other party. All confidential information shall remain the property of the disclosing party, and each party will return or destroy any tangible materials containing such confidential information upon request of the other party.


6.2 Identification of Confidential Information. The parties hereby agree
------------------------------------------ that, for purposes of this Agreement, "confidential information" shall mean all information marked or identified as confidential or proprietary, or received under circumstances reasonably interpreted as imposing an obligation of confidentiality. It includes, but is not limited to trade secrets and business matters such as registration cards, research and development information, unreleased software, new products, business opportunities, sales and marketing plans and financial and personnel information. Confidential information does not lose its status as confidential information merely because it was known by a limited number of persons or entities or because it was not entirely originated by either party.


6.3 Exclusions. The obligations of confidentiality and protection imposed
---------- by this paragraph shall not apply, or shall cease to apply, to any information that: (1) was lawfully known by either party prior to its receipt hereunder; (2) is or becomes publicly available without breach of this Agreement; (3) is lawfully received by either pa ...