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License Agreement

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Sectors: Computer Software and Services, Computer+Hardware
Governing Law: New York, View New York State Laws
Effective Date: December 03, 2002
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OEM-IN SOFTWARE LICENSE AGREEMENT
(with Reproduction Rights)


THIS OEM SOFTWARE LICENSE AGREEMENT, including the Exhibits ("Agreement"), effective as of December 3, 2002 ("Effective Date"), is hereby made by and between Cisco Systems, Inc., a California corporation, having principal offices at 170 West Tasman Drive, San Jose, California 95134-1706 (Cisco Systems, Inc. referred to herein as "Cisco") and Visual Networks Operations, Inc., a Delaware corporation, having principal offices at 2092 Gaither Road, Rockville, Maryland, 20850 ("Licensor").


For good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties agree as follows:


1. SOFTWARE.


1.1 Software. Licensor hereby licenses to Cisco the Licensor software products described in Exhibit B, as it may be amended from time to time in accordance with the terms hereof (the "Software"). The Software includes copies of software provided on disks or other media or provided electronically, user documentation, packaging and any enhancements, modifications, updates, bug fixes, releases, patents, patent rights, copyrights, trade secrets, know-how and other intellectual property related thereto. The Software shall be provided by Licensor in conformance with the functional, technical and other specifications for the Software set forth in Exhibit B, as modified from time to time by written agreement of the parties (the "Specifications").


1.2 Additional; New Software Products. Current Licensor software not listed on Exhibit A may be added upon mutual agreement by the parties of the applicable price or royalties for such additional software, and any other terms specific to such software, which shall be contained in an Addendum hereto. Licensor shall keep Cisco informed of any new software products of Licensor. Cisco will notify Licensor if it wishes to add new software products to this Agreement. Cisco and Licensor shall then proceed to negotiate the applicable price or royalties for such additional software, and any other terms specific to such software, which shall be contained in an Addendum hereto. Upon reaching an agreement on these items, such software shall be considered Software under this Agreement and shall be licensed under the terms and conditions of this Agreement.


1.3 Upgrades. Licensor shall keep Cisco informed of all Software upgrades, enhancements, improvements and bug fixes. Licensor shall make such items available to Cisco no later than the date Licensor releases such items to any of its other licensees and at no additional charge unless otherwise expressly provided in this Agreement.


1.4 Project Managers. Each party has appointed a single project manager ("Project Manager"). The names, addresses and telephone and fax numbers of the Project Managers are attached to this Agreement as Exhibit C. The Project Managers shall act as liaisons between the parties with respect to their respective performance of this Agreement and shall provide the parties from time to time with the names and telephone numbers of additional specific contact persons (e.g., to communicate specific information regarding support, enhancements, etc.) when such direct contact is preferable. In the event that either party appoints a new Project Manager, such party will promptly notify the other.


2. OWNERSHIP; GRANT OF RIGHTS


2.1 Ownership. Licensor shall own all right, title, and interest in the Software, including any modifications, enhancements, improvements or derivative works thereof or thereto, made by Licensor or on behalf of Cisco by Licensor.


2.2 License Grant. Subject to the terms of this Agreement, Licensor hereby grants Cisco and its Affiliates (as defined below) a nonexclusive, worldwide, irrevocable (subject to the termination provisions of this Agreement) perpetual fee-bearing, non-transferable license, subject to the limitations contained herein, to:


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(a) use, manufacture and have manufactured, import, reproduce and have reproduced, and embed or have embedded into Cisco products object code copies of the Software;


(b) copy, have copied, distribute, sell and offer to sell the Software as stand-alone products or as incorporated into, or in connection with, or for use with, any Cisco product by any means now known or developed in the future in object code format in accordance with this Agreement, through multiple tiers of distribution, including without limitation resellers, distributors, VARS and OEMs ("Resellers"), to end users or directly to end users;


(c) provide customer support (including, without limitation, to fix Software bugs) pursuant to Section 7 below;


(d) sublicense to end users, directly or indirectly, the right to use the Software; and


(e) for manufacturing purposes only, authorize the granting of sublicenses of all of the license rights granted to Cisco and its Affiliates in this Section 2.2.


"Affiliates" shall mean, with respect to any Person, any other Person who is directly or indirectly controlling, controlled by or under common control with such Person as of the Effective Date or thereafter. A Person shall be deemed to be an Affiliate of another Person only so long as the foregoing control relationship exists. For the purposes of this definition, the term "control", when used with respect to any Person, means the possession, directly or indirectly, of voting securities representing the right to elect a majority of the Board of Directors (or other governing body) of such Person. "Person" means an individual, corporation, partnership, association, trust or other entity or organization.


2.3 End User Restriction. Cisco shall, and shall require its Resellers to, include an end user software license with each copy of the Software distributed to a customer that is as protective as the form attached hereto as Exhibit I. Cisco agrees to promptly notify Licensor of any known or suspected breach of the software license with respect to the Software, and further agrees to, upon Licensor's request, assign the claim to Licensor.


2.4 Modification by Cisco. Neither Cisco nor its Resellers shall have the right, to modify the Software without Licensor's express written consent; provided, however, that Cisco shall have the right to modify the Software and any end user documentation, or have the Software modified, for the purpose of embedding the Software into Cisco products, and for branding purposes. Furthermore, Cisco shall not reverse assemble, decompile, reverse engineer or otherwise attempt to derive source code (or the underlying ideas, algorithms, structure or organization) from Software, except as specifically authorized in writing by Licensor. Except for the express licenses granted herein, no other licenses are granted by implication, estoppel or otherwise.


2.5 U.S. Government End Users. The Software and associated software documentation qualify as "commercial items," as that term is defined at 48 C.F.R. 2.101, consisting of "commercial computer software" and "commercial computer software documentation" as such terms are used in 48 C.F.R. 12.212. Consistent with 48 C.F.R.12.212 and 48 C.F.R. 227.7202-1 through 227.7202-4, Licensee will provide to Government end user, or, if this Agreement is direct Government end user will acquire, the Software and software documentation with only those rights set forth herein that apply to non-governmental customers. Use of this Software and software documentation constitutes agreement by the government entity that the computer software and computer software documentation is commercial, and constitutes acceptance of the rights and restrictions herein.


2.6 Cisco Property.


(a) During the term of this Agreement Cisco may provide equipment, designs, materials, software and other property of Cisco (collectively "Cisco Property") to Licensor for its use in fulfilling its obligations hereunder. All Cisco Property furnished to Licensor by Cisco or paid for by Cisco in connection with this Agreement shall (i) be clearly marked or tagged as the property of Cisco; (ii) be and remain personal property;


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(iii) be subject to inspection by Cisco at any time; (iv) be used only to provide Software to Cisco and Cisco's authorized subcontractors, if any; (v) be kept free of liens and encumbrances; (vi) be kept separate from other materials, tools, or property of Licensor or held by Licensor; and (vii) not be modified in any manner by Licensor.


(b) Cisco shall retain all rights, title and interest in the Cisco Property, and Licensor shall treat and maintain the Cisco Property with the same degree of care as Licensor uses with respect to its own valuable equipment, but in no event with less than a reasonable degree of care for equipment of a similar kind and importance. Licensor shall bear all risk of loss or damage to Cisco Property until it is returned to Cisco. Upon Cisco's request, Licensor shall deliver all Cisco Property to Cisco in good condition, normal wear and tear excepted, without cost to Cisco (exclusive of freight costs); the parties shall determine the manner and procedure for returning the Cisco Property, and Cisco shall pay the corresponding freight costs. Licensor waives any legal or equitable right it may have to withhold Cisco Property, and Licensor shall execute all documents, or instruments evidencing Cisco's ownership of the Cisco Property as Cisco may from time to time request.


2.7 Certain Patent Rights. Licensor hereby grants to Cisco and its Affiliates, and the customers, distributors or manufacturers of Cisco or Cisco's Affiliates a nonexclusive, perpetual, irrevocable, fully-paid, royalty-free, and worldwide license under all of Licensor's patent rights to use, make, have make, sell, offer for sale, and import the Suggested Enhancements (as defined in Section 7.2 below), and incorporate it or combine it with other products and services of any kind.


2.8 [***]


3. FEES; PAYMENT; TAXES.


3.1 Royalties and License Fees.


(a) Subject to the terms and conditions of this Agreement, Cisco shall pay Licensor the royalties and/or license fees in the amounts and on the terms and conditions as specified in Exhibit A.


(b) Licensor shall be obligated to pay all license fees and royalties, if any, with respect to any third party proprietary rights and technologies which are required for the exercise of Cisco's rights under this Agreement.


3.2 Payment Terms. Any payments required to be made by Cisco hereunder shall be made in accordance with the terms set forth in Exhibit A.


3.3 Taxes. The amounts paid pursuant to this Agreement are not subject to sales and use tax. Cisco shall provide Licensor with satisfactory documentation (including but not limited to resale exemption or other certificates) supporting such status. All amounts payable by Cisco to Licensor pursuant to this Agreement shall be net of international withholding taxes, and Cisco will provide Licensor with written documentation (including but not limited to copies of receipts) of any and all such withholding taxes paid in connection with such license fees and royalties. All other items of tax based in whole or in part on the income of a party shall be the sole responsibility of such party.


3.4 Non-Revenue Uses. Cisco shall be entitled to use and copy the Software free of charge for development and testing purposes, as well as for distribution to Cisco's customers for evaluation purposes; provided, however, that if such free Software copies are thereafter licensed to customers, Cisco shall pay Licensor the license fee or royalty described in this Agreement. If requested by Cisco, the parties will mutually agree to a one-time internal operational use license fee that will entitle Cisco to unlimited internal operational use of the Software.


*** Confidential Information has been omitted and filed separately with the
Securities and Exchange Commission pursuant to a confidential treatment
request.


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3.5 [***]


4. DELIVERY OF MASTERS


Pursuant to the license in Section 2.2, Licensor will provide to Cisco, at no charge and in a format to be reasonably specified by Cisco, two (2) sets of golden masters ("Software Masters") for all Software made available by Licensor hereunder. The Software Masters will be in machine readable, binary form and will include Software release documentation and will be shipped to Cisco within (5) business days of first commercial availability, or the signing of an addendum including such software hereunder. Additionally, Licensor will provide beta versions of Software to Cisco for testing and evaluation purposes within (5) business days of release to other beta testers and other non-commercially-available versions of Software to Cisco for testing and evaluation purposes as commercially reasonable.


5. SOFTWARE SPECIFICATIONS; CHANGES; DEPLOYMENT


5.1 Specifications. Licensor shall make best commercially reasonable efforts to provide Cisco with ninety (90) days' written notice of any intended changes in the function, revision level, design or appearance of any Software or to any specifications for any Software irrespective of impact on design or function.


5.2 Cisco's Change Request. When a design change is required by Cisco, Cisco shall provide Licensor with written notice of all the documentation, specifications and proposed effective date of such design change. Within fifteen (15) days of receipt of such notice, Licensor shall advise Cisco in writing as to the time frame, costs and pricing for implementation of such change.


5.3 Interoperability Testing. Licensor shall perform such tests and provide Cisco with the test results in accordance with the Interoperability and Acceptance Testing Guidelines attached hereto as Exhibit D as modified from time to time upon mutual written agreement of the parties. Cisco shall provide Licensor with each Cisco product required for Licensor to perform such tests. Licensor shall provide, at Cisco's request, all Licensor products, including beta copies of Software or other Software not yet commercially available, so that Cisco may perform its own interoperability testing.


5.4 Marketing and Deployment. Licensor shall adhere to the marketing and deployment guidelines set forth in Exhibit K.


6. END USER DOCUMENTATION AND TRADEMARKS


6.1 End User Documentation. Licensor shall deliver end user documentation in accordance with Exhibit E and hereby grants Cisco a worldwide, perpetual, nonexclusive, non-transferable license to copy, have copied, modify, have modified, incorporate and have incorporated and distribute all or any portion of such end user documentation, provided such documentation is provided with, or in association to, the Software, in accordance with this Agreement.


6.2 Trademarks and Branding Guidelines. Cisco shall comply with
Licensor's trademark and branding guidelines as set forth in Exhibit
F.


6.3 Quality Control. Cisco will present and promote the Software fairly
and in compliance with all federal, state and local laws,
regulations and ordinances. Cisco may accurately use Licensor's
product names in Cisco's advertising and promotional media; provided
(i) that Cisco conspicuously indicates in each such medium that such
names are trademarks of Licensor, and (ii) that, as requested by
Licensor from time to time, Cisco submits all such media to Licensor
for prior approval and follows reasonable trademark usage guidelines
communicated by Licensor.


*** Confidential Information has been omitted and filed separately with the
Securities and Exchange Commission pursuant to a confidential treatment
request.


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6.4 Obligation Upon Termination or Expiration. Upon expiration or
termination of this Agreement for any reason, Cisco will immediately
cease all use of Licensor trademarks, marks, and trade names that
Licensor may adopt from time to time and, at Licensor's election,
either destroy or deliver to Licensor all materials in Cisco's
control or possession which bear such marks or names.


6.5 Trademarks. In connection with its rights hereunder, Cisco may use
its name and any of its trademarks, trade names, logos and/or
slogans or those of any third party in connection with the license,
sublicense or distribution of the Software and any end-user
documentation, marketing, or sales literature used with the
Software. If Cisco contemplates the use or inclusion of a trademark,
trade name, logo and/or slogan of a direct competitor of Licensor
for a Cisco product which also contains the Software, Cisco will
consult with Licensor regarding how to reasonably avoid inaccuracy
or confusion as to the origin or ownership of the Software contained
in such Cisco product.


6.6 Copyright Notices. Cisco shall ensure that all copies of the
Software in Cisco's possession or control incorporate copyright and
other proprietary notices in the same manner that Licensor
incorporates such notices in the Software and Documentation or in
any manner reasonably requested by Licensor, subject to reasonable
modifications or removals pursuant to Cisco's branding of the
Software.


6.7 Packaging. Unless otherwise requested by Cisco, packaging for the
Software shall be Cisco's responsibility. Upon the request of Cisco,
Licensor shall package the Software according to the Cisco standard
packaging guidelines in effect at the time of the request. Within a
reasonable time after the request for Licensor to package the
Software, Cisco shall deliver its product packaging guidelines to
Licensor. Cisco and Licensor shall thereafter mutually agree upon
the price and the payment terms for such services.


7. SUPPORT


7.1 Support. Licensor shall provide the support services described in
Exhibit G on the terms and conditions set forth therein.


7.2 Suggested Enhancements. Cisco shall communicate to Licensor its
knowledge of any problems encountered with the Software or any
modifications, design changes or improvements of the Software
suggested by a customer of the Software ("Suggestions"). Cisco
further agrees (i) that Licensor shall own all right, title and
interest in and to any modifications, enhancements or improvements
to the Software made by Licensor as the result of a Suggestion
provided by Cisco ("Suggested Enhancements") , without the payment
of any additional consideration thereof to Cisco and (ii) that, if
applicable upon Licensor's reasonable request, it will cooperate
with Licensor in connection with perfecting and enforcing Licensor's
rights, title and interest to any Suggested Enhancements.


8. SOFTWARE ESCROW


Upon execution hereof, the parties shall enter into an "Escrow Agreement" in the form attached hereto as Exhibit H.


9. REPRESENTATIONS AND WARRANTIES


9.1 Representations and Warranties of Licensor. Licensor hereby represents and warrants to Cisco and its Affiliates as follows:


(a) Licensor has the full power to enter into this Agreement, to carry out its obligations under this Agreement and to grant the rights and licenses granted to Cisco in this Agreement.


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(b) For a period of [***], the Software will (i) perform substantially in accordance with the applicable published or mutually agreed upon specifications and related documentation provided by Licensor and substantially achieve any function described therein and (ii) be free from defects in materials, workmanship or design. Licensor will promptly correct or replace (at its option) any defective Software. NO OTHER WARRANTIES ARE EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES OF QUALITY, PERFORMANCE, NONINFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. NOR ARE THERE ANY WARRANTIES CREATED BY A COURSE OF DEALING, COURSE OF PERFORMANCE OR TRADE USAGE. LICENSOR DOES NOT WARRANT THAT THE SOFTWARE WILL MEET CISCO'S NEEDS OR BE FREE FROM ERRORS, OR THAT THE OPERATION OF THE SOFTWARE WILL BE UNINTERRUPTED. THE FOREGOING EXCLUSIONS AND DISCLAIMERS ARE AN ESSENTIAL PART OF THIS AGREEMENT AND FORMED THE BASIS FOR DETERMINING THE FEES CHARGED FOR THE SOFTWARE.


9.2 Representations and Warranties of Cisco. Cisco hereby warrants and represents to Licensor that Cisco has the full power to enter into this Agreement and to carry out its obligations under this Agreement.


10. INDEMNIFICATION


10.1 Indemnification by Licensor. Licensor shall defend, indemnify and hold harmless Cisco and its Affiliates, officers, directors, employees, shareholders, customers, agents, successors and assigns from and against any and all loss, damages, liabilities, settlement, costs or expense (including legal expenses and the expenses of other professionals) as incurred, resulting from or arising out of (i) any claim of product liability in any way relating to the Software; or (ii) any claim which alleges that any Software provided to Cisco hereunder or the use, manufacture, import, service, support or distribution thereof, all solely as authorized herein, infringes upon, misappropriates or violates any trade secret under the laws of the United States, patent or trademark under the laws of the United States, Canada or a member country of the European Union and/or copyright under the laws of any adherent to the Berne Convention of persons, firms or entities who are not parties to this Agreement. As a condition to such defense and indemnification, Cisco will provide Licensor with prompt written notice of the claim and permit Licensor to control the defense, settlement, adjustment or compromise of any such claim. Cisco may employ counsel at its own expense to assist it with respect to any such claim; provided, however, that if such counsel is necessary because of a conflict of interest of either Licensor or its counsel or because Licensor does not assume control, Licensor will bear the expense of such counsel. Cisco shall have no authority to settle any claim on behalf of Licensor.


10.2 Licensor's Efforts. If the manufacture, use or distribution of the Software is enjoined or becomes the subject of a claim of infringement, Licensor shall use best commercially reasonable efforts at its option to: (i) obtain such licenses; or (ii) make such replacements or modifications as are necessary to the continue the manufacture, use or distribution of the Software without infringement and in compliance with the specifications, if any, and Documentation. If Licensor is unable to achieve either of the foregoing within thirty (30) days (or such longer period as determined by Cisco in good faith) after the holding of infringement or the entry of the injunction, as applicable, Licensor shall promptly refund to Cisco the license fees or royalties paid for any Software, the use, manufacture, import, support, service or distribution of which is legally prohibited. Except to the extent reduced by payments described in this paragraph, nothing in this paragraph shall limit any other remedy of Cisco.


10.3 Exceptions to Licensor Indemnity. Licensor shall have no obligation under paragraphs 10.1 and 10.2 to the extent any claim of infringement or misappropriation results from (i) use of the Software in combination with any other product, end item, or subassembly not intended by Licensor if the infringement would not have occurred but for such combination; (ii) any claim based on Cisco's use of the Software after Licensor has informed Cisco of modifications or changes in the Software required to avoid such claims and offered to implement those modifications or changes, if such claim would have been avoided by implementation of Licensor's suggestions; or (iii) use of the Software other than as permitted under this Agreement, if the infringement would not have occurred but for such use.


*** Confidential Information has been omitted and filed separately with the
Securities and Exchange Commission pursuant to a confidential treatment
request.


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11. CONFIDENTIALITY


11.1 Agreement as Confidential Information. The parties shall treat the terms and conditions and the existence of this Agreement as Confidential Information. Each party shall obtain the other's consent prior to any publication, presentation, public announcement or press release concerning the existence or terms and conditions of this Agreement. The parties understand and agree that, to the extent that either party is required to disclose the existence of this Agreement or the terms hereof pursuant to any applicable law, order or regulation of any government or regulatory entity, it is permitted to do so, but each party shall to the extent reasonably possible, provide the other party with prior notice and cooperate with the other party to limit or redact the required disclosure.


11.2 Confidential Information. The parties shall comply with the provisions of the Non-Disclosure Agreement attached hereto as Exhibit J (the "NDA"). To the extent that the term stated in the NDA terminates prior to the termination of this Agreement, the parties agree that the term of the NDA shall be automatically extended to the term of this Agreement.


12. LIMITATION OF LIABILITY


EXCEPT AS PROVIDED UNDER SECTION 10 (INDEMNITY), UNDER NO CIRCUMSTANCES WILL EITHER PARTY (WHICH IN THE CASE OF CISCO, INCLUDES AFFILIATES OF CISCO) BE LIABLE TO THE OTHER UNDER ANY CONTRACT, STRICT LIABILITY, NEGLIGENCE OR OTHER LEGAL OR EQUITABLE THEORY, FOR ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST PROFITS IN CONNECTION WITH THE SUBJECT MATTER OF THIS AGREEMENT. THIS SECTION DOES NOT LIMIT EITHER PARTY'S LIABILITY FOR BODILY INJURY OF A PERSON, DEATH, OR PHYSICAL DAMAGE TO PROPERTY. THIS LIMITATION WILL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY PROVIDED HEREIN.


13. TERM AND TERMINATION


13.1 Term. Unless terminated earlier as provided herein, this Agreement shall commence on the Effective Date and end on January 31, 2004, unless terminated sooner by written notice given by a party pursuant to this Section. This Agreement shall be renewed automatically for additional successive one (1) year periods, unless notice of non-renewal is given to the other no later than sixty (60) days prior to the expiration of the initial term or then current renewal term.


13.2 Termination for Convenience. Cisco may terminate this Agreement at any time for its convenience, for no reason or for any reason, upon delivery of written notice to Licensor. In the event of such termination, Licensor shall be entitled to receive and retain all License payments made or payable by Cisco in accordance with Exhibit A and otherwise pursuant to this Agreement.


13.3 Termination for Cause. This Agreement may be terminated by a party for cause immediately upon the occurrence of and in accordance with the following:


(a) Insolvency Event. Either may terminate this Agreement by delivering written notice to the other party upon the occurrence of any of the following events: (i) a receiver is appointed for either party or its property
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