SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 8-K
CURRENT REPORT
PURSUANT TO SECTION 13 OR 15 (D) OF THE
SECURITIES EXCHANGE ACT OF 1934
Date of Report
(Date of earliest event reported) March 28, 1997
NESTOR, INC.
(Exact name of registrant as specified in charter)
Delaware 0-12-965 13-3163744
(State of other jurisdiction (Commission IRS employer
of incorporation) file number) identification no.
One Richmond Square, Providence, Rhode Island 02906
(Address of principal executive offices)
Registrant's telephone number, including area code: 401-331-9640
N/A
(Former name or former address, if changed since last report)
Item 5. Other Events.
1) The Corporation entered into a Prism Non-Exclusive
License Agreement dated March 28, 1997, by and between the
Corporation and Total System Services, Inc. ("TSYS") allowing
TSYS to use the Corporation's PRISM product in its business. A
copy of such License Agreement is annexed as an exhibit hereto.
EXHIBITS
The following exhibit is filed herewith:
Exhibit No. Description
10.32 License Agreement dated as of March 28, 1997
between Nestor, Inc. and Total System
Services, Inc.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act
of 1934, the Registrant has duly caused this report to be signed
on its behalf by the undersigned thereunto duly authorized.
Dated: April 8, 1997 NESTOR, INC.
(Registrant)
By:/s/ Nigel P. Hebborn
Chief Financial Officer
LICENSE AGREEMENT
AGREEMENT (the "Agreement") made this 28th day of March,
1997 (the "Effective Date"), by and between Nestor, Inc. a
Delaware corporation having a place of business at One Richmond
Square, Providence, RI 02906 ("Nestor"), and Total System
Services, Inc., a Georgia corporation, having a place of business
at 1200 6th Avenue, Columbus, Georgia 31901 ("Licensee" and
together with Nestor, the "Parties" and each singularly a
"Party").
WITNESSETH:
WHEREAS Nestor has developed certain computer software
technology capable of various applications (any of such
technology as from time to time delivered to Licensee pursuant to
this Agreement as software, the "Nestor Software"); and
WHEREAS Licensee wishes to acquire a non-exclusive limited
license to use the Nestor Software as developed for such
applications as the Parties may hereafter agree;
NOW, THEREFORE, in consideration of the mutual promises,
covenants and agreements herein contained and other good and
valuable consideration, the receipt, adequacy and sufficiency of
which is hereby acknowledged, the Parties hereby agree as
follows:
I. Grant of License, Maintenance and Related Matters.
A. During the term of this Agreement, Licensee may request
Nestor to develop an application for the Nestor Software. Any
such development shall be subject to agreement by the Parties on
the terms and conditions therefor, such agreement to be evidenced
by execution and delivery by both Parties of an addendum to this
Agreement in the form attached (an "Addendum"). Each Addendum to
this Agreement shall only apply to the application set forth
therein and no terms and conditions set forth in one Addendum
shall apply to another Addendum unless such second Addendum
expressly so provides.
B. Subject to the provisions of this Agreement and to
agreement in advance by the Parties on the applicable Addendum,
Nestor hereby grants to Licensee, and Licensee accepts, a
nontransferable (subject to the terms herein) and non-exclusive
license (the "License") to use the Nestor Software. Licensee
and its Affiliates may use the Nestor Software only for internal
use purposes and to provide services to Affiliates and to third
party customers of Licensee or any of its Affiliates anywhere in
the world. Licensee and its Affiliates may permit third party
customers of Licensee or any of its Affiliates to make data
requests to, and receive data reports from, the Nestor Software
through remote user interfaces. The Nestor Software must be used
by Licensee or an Affiliate only on computer equipment located in
a facility in the United States or Canada, and the facility must
be controlled by Licensee or one of its Affiliates. Each
Affiliate that uses the Nestor Software must execute a
counterpart copy of this Agreement, and Licensee will be jointly
and severally liable for any breach of this Agreement by the
Affiliate using the Nestor Software. "Affiliate" means an entity
in which Licensee owns [SEEKING CONFIDENTIAL TREATMENT] *******
******************* or more of the outstanding equity interests.
Licensee may not duplicate any copy of the Nestor Software,
except that Licensee may make a reasonable number of copies
necessary for the purposes of this Agreement, provided it
reproduces and includes on all such copies all Nestor proprietary
notices. Notwithstanding anything that may be to the contrary in
this Agreement or any Addendum, neither this Agreement nor any
Addendum is intended to or shall convey to Licensee any rights in
and to the Nestor Software other than a license to use it. All
rights not expressly granted to Licensee are reserved by Nestor.
C. If Licensee wishes to acquire the right for Licensee
(or its Affiliates) to use the Nestor Software on computer
equipment located outside of the United States or Canada, it may
notify Nestor in writing, and Nestor and the Licensee will enter
into good faith negotiations concerning the pricing terms that
would apply to that use. Licensee's use of the Nestor Software
will be subject to the mutually agreed pricing terms, the terms
and conditions of this Agreement (other than pricing terms
included in applicable Addenda), and any mutually agreed
additional terms and conditions which are appropriate under the
circumstances (including appropriate modifications to Nestor's
maintenance obligations under Paragraph I F needed to reflect
logistical considerations in supporting software outside of the
United States and Canada). Nestor agrees that it will not grant
any rights to any third party inconsistent with Licensee's rights
under this paragraph.
D. Except as provided in this subparagraph I.D, the
License includes the Nestor Software in object code only and does
not include source code ("source code" is a computer program or
any part thereof in human-readable form; "object code" is a
computer program restricted in its entirety to machine-executable
instructions). If and to the extent Nestor elects to deliver
Licensee any portion of the Nestor Software in source code (the
"Nestor Software Source Code"), such delivery will be indicated
in the applicable Addendum and Nestor hereby grants to Licensee,
and Licensee accepts, a personal, nontransferable and non-
exclusive license, subject to the provisions of this Agreement
(such license to be included in the "License"), but only:
1. to use the Nestor Software Source Code for the
purposes specified in the applicable Addendum,
without disclosing the software to any third party
(other than a consultant that provides services to
Licensee as necessary to permit Licensee to use
the Nestor Software and the Nestor Software Source
Code as provided in this Agreement and that has
first executed a confidentiality agreement as
required under Paragraph V.C); and
2. to compile the resulting software to the extent
necessary to create a copy thereof in object code
form only; and
3. to use the resulting object code for any use
Licensee may make of the Nestor Software as
provided in Paragraph I B of this Agreement.
If and to the extent Nestor elects not to deliver to Licensee any
portion of the Nestor Software Source Code prior to execution of
the applicable Addendum, Nestor shall duly execute and deliver
the Escrow Agreement in the form attached as Exhibit A (the
"Escrow Agreement"). Nestor must deliver to the escrow agent
named therein a complete master, reproducible copy of the Nestor
Software Source Code, including but not limited to any
compile/link scripts, program comments, installation scripts and
other documentation necessary to recompile such source code into
the object code of the Nestor Software, within ten business days
following the date on which Nestor receives written notice from
Licensee that Licensee is using the Nestor Software in commercial
operations. Nestor shall promptly update the Nestor Software
Source Code in escrow to reflect all revisions, modifications and
enhancements to the Nestor Software that are provided to Licensee
pursuant to this Agreement. If Nestor (1) materially fails to
respond to any Level A Error as required under Paragraph 1.F, or
(2) materially fails to respond to Level B Errors on a recurring
basis, resulting in a material impairment of Licensee's use of
the Nestor Software, then the Nestor Software Source Code will be
delivered to Licensee in accordance with, and subject to the
terms of, the Escrow Agreement, and Nestor hereby grants to
Licensee a perpetual, non-exclusive, worldwide, royalty free
license to use and modify the Nestor Software Source Code solely
in connection with the performance of Nestor's maintenance
obligations under this Agreement, without disclosing the Nestor
Software Source Code to any third party (other than a consultant
that provides services to Licensee as necessary to permit
Licensee to use the Nestor Software and the Nestor Software
Source Code as provided under this Agreement and that has first
executed a confidentiality agreement as required under Paragraph
V.C). Licensee shall pay all costs and expenses arising out of or
related to the Escrow Agreement. The failure of Licensee to pay
all such costs and expenses shall result in termination of the
Escrow Agreement.
Licensee shall not (except as expressly permitted in this
subparagraph I.D), (i) have any right to use, sublicense, copy,
create derivative works from, rent, lease, assign or transfer any
Nestor Software Source Code or (ii) disclose or in any way
disseminate to any third party any part of the Nestor Software in
source code form. The Nestor Software Source Code shall be used
by Licensee solely in the United States. If Licensee obtains the
Nestor Software Source Code pursuant to the Escrow Agreement,
then Nestor will have no further obligation to furnish
maintenance and support under Paragraph 1.F of this Agreement.
E. If and to the extent the Nestor Software requires the
use of software belonging to third-parties (the "Third-Party
Software"), such Third-Party Software is not included in the
License. Unless otherwise agreed by the Parties, within thirty
(30) days prior to execution of any Addendum Nestor shall deliver
to Licensee a list of all such Third-Party Software which is
required as of the date of the Addendum. Licensee shall license
all such Third-Party Software directly from the third party and
Nestor shall have no obligation or liability to Licensee
therefor.
F. During the term of this Agreement, Nestor will furnish
as soon as practicable any error corrections or updates (minor
revisions to the Nestor Software that do not add material
features or functionality) to the Nestor Software in the same
manner in which Nestor furnishes such error corrections and
updates to its maintenance and support customers generally, at no
charge to Licensee, and will provide such other maintenance and
consulting on the Nestor Software as set forth in the applicable
Addendum subject to the provisions of this Paragraph below. If
Nestor makes any enhancements to the Nestor Software (changes to
the Nestor Software that add material features or functionality),
Nestor will furnish such enhancements to Licensee, ************,
[SEEKING CONFIDENTIAL TREATMENT]*********************************
*************** if Nestor makes such enhancements generally
available to its other maintenance and support customers. All
error corrections, updates and enhancements furnished to Licensee
shall be deemed licensed under and subject to the terms and
conditions of this Agreement. Nestor shall not be required to
furnish error corrections or updates to Licensee if (i) the
Nestor Software is used on an operating or hardware system that
Nestor does not generally support, (ii) the updates are
developed by Nestor specifically for a third party and are not
made generally available to Nestor's other maintenance and
support customers, or (iii) Nestor is legally prohibited from
delivering or licensing the updates to Licensee. If Nestor
elects to produce any additional documentation for the Nestor
Software after the date hereof, Nestor will furnish copies
thereof to Licensee as part of the maintenance services to be
provided by Nestor (though it is understood that Nestor is under
no obligation to produce any additional documentation after the
date of this Agreement, except as provided in any Addendum).
If Licensee specifically requests any enhancements to the
Nestor Software, Nestor, at its election (not to be unreasonably
denied), will make such enhancements and Nestor will be entitled
to receive time and materials incurred in connection with the
preparation of such requested enhancements, at Nestor's standard
hourly rate, [SEEKING CONFIDENTIAL TREATMENT]*******************
*****. If Licensee makes a written request for any such
enhancements, Nestor will provide a written, non-binding estimate
of the time and expense required to effect such enhancement, and
will deliver such estimate to Licensee within a reasonable period
of time (not to exceed fourteen (14) days following receipt of
Licensee's request). If Licensee accepts such proposal, Nestor
will furnish the requested enhancements within a mutually agreed
time frame.
In staffing the effort to correct Level A and Level B Errors
(as defined below), and generally providing support services to
Licensee, Nestor will make technical personnel available to
Licensee 24 hours per day, 7 days per week, 52 weeks per year by
telephone and/or pager. In the event of the existence of an
error in the Nestor Software which completely prevents the Nestor
Software from operating (a "Level A Error"), Nestor will
immediately commence efforts to correct such error. Such efforts
shall include, but are not limited to, establishing remote access
capabilities and making its technical personnel available to
Licensee within [SEEKING CONFIDENTIAL TREATMENT]**************
******* following a Level A Error service call placed to Nestor's
designated emergency telephone number or its designated
employee's home or pager number. In the event of an error in the
Nestor Software which does not completely prevent the Nestor
Software from operating but which materially and adversely
affects the operation of the Nestor Software (a "Level B Error"),
Nestor will commence efforts to correct such error as soon as
commercially practicable. Such efforts shall include, but are
not limited to, establishing remote access capabilities and
making its technical personnel available to Licensee within
[SEEKING CONFIDENTIAL TREATMENT]****************** following a
Level B Error service call placed to Nestor's designated
emergency telephone number or its designated employee's home or
pager number. Within [SEEKING CONFIDENTIAL TREATMENT]***********
****** following a Level A Error service call and within [SEEKING
CONFIDENTIAL TREATMENT]********************* following a Level B
Error service call, Nestor will provide Licensee with a written
diagnosis and analysis regarding the error, including, but not
limited to, their determination of whether error correction will
be by remote access or on site at Licensee's location and an
estimate of the length of time in which such error will be
corrected. In the event a determination is made that error
correction will be made on site at Licensee's location, Nestor
will immediately dispatch (on the next available airplane), its
technical personnel to Licensee's location. Nestor will correct
errors other than Level A or Level B Errors in the ordinary
course (for example, through normal updates released in ordinary
course).
II. Installation, Royalty Rate, Payment and Related
Matters.
A. Nestor agrees to use its best efforts to install any
application of the Nestor Software on Licensee's system in
accordance with the timetable set forth in an applicable
Addendum, but installation and installation dates are not
guaranteed. Licensee understands that a Nestor Software
installation requires Licensee's cooperation and compliance with
Nestor's reasonable instructions and access by Nestor to
Licensee's premises and system; and Licensee agrees to provide
all of the foregoing to Nestor.
B. Licensee shall pay (in U.S. dollars) to Nestor during
the term of this Agreement royalties and/or fees at the rates set
forth in an applicable Addendum. Except as expressly provided in
this Agreement, no payment shall be subject to a refund. Any
undisputed amount not paid when due shall bear interest at the
lower of one and one half (1 1/2%) percent per month or the maximum
rate allowed by law. In the event Nestor is required to
institute an action to collect any such amount, it will be
entitled to reimbursement by Licensee of its reasonable expenses
so incurred (including attorneys' fees).
C. All shipments by Nestor to Licensee shall be F.O.B.
Nestor's place of business. Royalties do not include shipping,
insurance and other similar charges, for all of which Licensee
shall be responsible. Licensee shall be liable and responsible
for the reporting and payment of all taxes and duties (except
income taxes accrued against Nestor) arising from this Agreement
and shall indemnify and hold Nestor harmless from any failure of
Licensee to do so.
D. Licensee will keep such records as will enable the
royalties payable hereunder to be accurately determined by
Nestor. Such records will be retained by Licensee and made
available to auditors selected by Nestor for examination at the
request and at the expense of Nestor during reasonable business
hours at the offices of Licensee set forth in the preamble to
this Agreement for a period of at least two (2) years after the
end of the calendar year in which [SEEKING CONFIDENTIAL
TREATMENT]********************************** to which the records
relate occurred. Auditors selected by Nestor must be affiliated
with a "Big Six" accounting firm that is not utilized by [SEEKING
CONFIDENTIAL TREATMENT] ****************** (or any successor to
that company). Such auditors must execute confidentiality
agreements having the same force and effect as required by
Paragraph V(B) of this Agreement. Nestor may conduct audits of
Licensee's records no more than once annually. Within twenty
(20) days after the end of each month during the term of this
Agreement, Licensee shall deliver to Nestor a statement,
certified by a duly authorized officer of Licensee, setting forth
the royalties due for such month together with the data upon
which such royalties have been calculated. Licensee shall
reimburse Nestor for the costs of any audit and the immediately
following audit if an audit determines that any such statement is
understated by more than [SEEKING CONFIDENTIAL TREATMENT]******
************. Nestor may immediately terminate this Agreement if
any two consecutive audits determine that such statements were
understated by more than [SEEKING CONFIDENTIAL TREATMENT]******
*************. Except as otherwise provided in the applicable
Addendum, payment of royalties each month during the term of this
Agreement shall be made by Licensee no later than the earlier of
forty (40) days after the end of the month in which the
transaction occurred or thirty (30) days following receipt by
Licensee of payment from its customers. All other charges will
be due within thirty (30) days following receipt of invoice
therefor. To the extent Licensee overcharges any of its
customers and overpays the amount of royalties due to Nestor,
such overpayment to Nestor will be credited against the amount of
royalties payable to Nestor the month following the month in
which such overpayment is discovered. Any credit made to the
royalties payable to Nestor pursuant to the preceding sentence
must be made within two (2) years following the date of any
overpayment to Nestor, if at all.
III. Third-party Claims and Actions; Infringements and
Unauthorized Use.
A. Provided that Licensee notifies Nestor in writing of
any claim or action in which it is alleged that the Nestor
Software infringes a United States issued patent, copyright,
trade secret, or trademark ("Infringement Action") within ten
(10) days following the date on which Licensee received notice
and/or knowledge thereof (but in any event as soon as
practicable) and Licensee, at Nestor's cost, fully cooperates
with Nestor in settlement or defense of any Infringement Action,
Nestor shall take sole control of the settlement of any
Infringement Action and the defense of any litigation resulting
solely therefrom and shall be responsible for, and indemnify
Licensee from, the costs (including reasonable attorneys fees),
losses (excluding lost profits) and expenses of any Infringement
Action and the payment of any settlement or judgement arising out
of the Infringement Action. Notwithstanding the foregoing,
Licensee's right to indemnification as provided in this Paragraph
III A shall not be affected by any failure of Licensee to give
Nestor notice of an Infringement Action if such failure to
provide notice does not materially affect Nestor's ability to
settle or defend any such action. If the use by Licensee of the
Nestor Software is enjoined, either (a) on an interim or
temporary basis, but then only thirty (30) days after Nestor has
had an opportunity to contest such order and has failed or
exhausted its right to do so or (b) as a final result of any such
action, Nestor shall, at its option either (i) replace such parts
of the Nestor Software as have been enjoined (provided the
functionality thereof is not materially altered), or (ii) procure
a license for Licensee to use same, or (iii) in addition to any
amounts that Nestor is required to indemnify under the first
sentence of this Paragraph III.A, reimburse Licensee an amount
equal to the loss, costs and expenses (including additional
software license fees) incurred by Licensee in obtaining
replacement software to replace the infringing Nestor Software
for the remainder of the initial term of this Agreement, up to an
amount not to exceed the lesser of (1) the aggregate amount of
royalties paid to Nestor under this Agreement, minus [SEEKING
CONFIDENTIAL TREATMENT]********** (except that if Nestor has
received less than [SEEKING CONFIDENTIAL TREATMENT] *********,
then an amount equal to $0), or (2) [SEEKING CONFIDENTIAL
TREATMENT] *****************. Licensee shall permit Nestor to
replace any portion of the Nestor Software Nestor deems desirable
(provided the functionality thereof is not materially altered).
Nestor assumes no obligation or liability for and will not
indemnify Licensee from any expenses, damages, costs (including
reasonable attorneys' fees) or losses resulting from any claim or
action arising from or relating to (i) the use of the Nestor
Software in combination with any other product (unless Third
Party Software or provided by Nestor), (ii) any modification of
the Nestor Software (unless made by Nestor), (iii) the breach by
Licensee of any of its agreements, warranties or duties contained
in this Agreement, (iv) any actions or claims of trademark
infringement involving any marking or branding used in connection
with the Nestor Software which was not approved or applied by
Nestor. This Paragraph III.A. states the entire liability and
obligation of Nestor and the exclusive remedy of Licensee with
respect to any actions or claims of alleged infringement relating
to or arising out of the subject matter of this Agreement.
B. Licensee shall immediately notify Nestor (with full
particulars) of any possible infringers or unauthorized users of
the Nestor Software of which Licensee obtains knowledge. Nestor,
in its sole discretion, shall determine what steps, if any, are
to be taken with respect to any infringement or unauthorized use
of the Nestor Software and any damages recovered shall be payable
solely to Nestor. Licensee agrees to fully cooperate with
Nestor, at Nestor's expense, in all stages of any such action.
In no event shall Nestor be obligated hereunder to commence legal
proceedings. Licensee shall not undertake any legal action or
other steps of any kind to prevent or restrain any such
infringement or unauthorized use or collect damages resulting
therefrom without Nestor's advance written permission.
IV. Warranties and Covenants.
A. Each Party warrants that this Agreement has been duly
and validly authorized and executed by it and is its valid and
binding obligations.
B. Nestor warrants that it knows of no claim that the
Nestor Software infringes any United States issued patent,
copyright, trademark, trade secret or other intellectual property
right.
C. Nestor warrants that the Nestor Software does not
include any encryption devices that are subject to the
International Trade and Arms Regulations.
D. Nestor warrants that it has not and will not enter any
agreement that conflicts with, restricts or prohibits Licensee's
right to use the Nestor Software in accordance with this
Agreement, whether inside or outside the United States.
E. Nestor shall maintain in force at all times during the
term of this Agreement the following bonds and other insurance.
Such insurance ("Insurance Coverage") shall be written for not
less than the following limits:
1. Worker's Compensation Statutory Limits
2. Liability Insurance
(1) Bodily Injury - not less than [SEEKING
CONFIDENTIAL TREATMENT] ************* for
each occurrence.
(2) Property damage - not less than [SEEKING
CONFIDENTIAL TREATMENT] ************ due to
any one occurrence.
(3) Bond Coverage - not less than [SEEKING
CONFIDENTIAL TREATMENT] ************** for
each occurrence.
3. Motor Vehicle Insurance shall be provided for not
less than [SEEKING CONFIDENTIAL TREATMENT]**
*********** for any occurrence involving bodily
injury and/or property damage.
4. Umbrella Coverage of [SEEKING CONFIDENTIAL
TREATMENT] ******************* for any occurrence.
Upon execution of this Agreement and thereafter at
least annually, Nestor shall provide Licensee a
certificate of insurance evidencing the above
coverages.
F. NESTOR WARRANTS THAT THE NESTOR SOFTWARE WILL BE
OPERATIONAL AND AVAILABLE TO LICENSEE'S CUSTOMERS [SEEKING
CONFIDENTIAL TREATMENT] ******* OF THE TIME BASED ON A STANDARD
OF TWENTY-FOUR HOURS PER DAY, SEVEN DAYS PER WEEK, FIFTY TWO
WEEKS PER YEAR (IT BEING UNDERSTOOD AND AGREED THAT THIS WARRANTY
WILL NOT BE BREACHED IF THE NESTOR SOFTWARE IS UNAVAILABLE BUT
THE NESTOR SOFTWARE IS NOT A PRINCIPAL CAUSE OF THE
UNAVAILABILITY). NESTOR FURTHER WARRANTS THAT, NO LATER THAN
JUNE 30, 1998, THE NESTOR SOFTWARE WILL BE YEAR 2000 COMPLIANT
AND WILL OPERATE IN THE SAME MANNER WITH YEAR DATES OF 2000 AND
BEYOND AS IT OPERATED WITH YEAR DATES OF 1900 AND BEYOND,
ASSUMING THAT DATA INPUT TO THE NESTOR SOFTWARE IS IN MUTUALLY
AGREED FORMATS. THE PARTIES WILL COOPERATE AND USE GOOD FAITH
EFFORTS TO MUTUALLY AGREE UPON AND DEFINE THE REQUIRED DATA
FORMATS TO BE USED WITH THE NESTOR SOFTWARE, AS SOON AS
PRACTICABLE (AND IN ALL EVENTS PRIOR TO JANUARY 1, 1998). IF
THE NESTOR SOFTWARE IS NOT YEAR 2000 COMPLIANT BY JUNE 30, 1998,
LICENSEE WILL HAVE THE RIGHT, AT NESTOR'S SOLE COST AND EXPENSE,
TO OBTAIN THE NESTOR SOFTWARE SOURCE CODE AND CORRECT OR HAVE A
THIRD PARTY CORRECT THE NESTOR SOFTWARE SUCH THAT IT IS YEAR 2000
COMPLIANT. AS LICENSEE'S EXCLUSIVE REMEDY FOR ANY MATERIAL
DEFECT IN THE NESTOR SOFTWARE, NESTOR SHALL CORRECT OR CURE ANY
SUCH MATERIAL DEFECT. IN THE EVENT NESTOR IS UNABLE TO CURE OR
CORRECT SUCH NONCONFORMITY OR DEFECT AFTER IT HAS HAD A
REASONABLE OPPORTUNITY TO DO SO, LICENSEE'S EXCLUSIVE REMEDY
SHALL BE REIMBURSEMENT OF AN AMOUNT EQUAL TO THE LOSS, COST AND
EXPENSES (INCLUDING ADDITIONAL SOFTWARE LICENSE FEES) INCURRED BY
LICENSEE IN OBTAINING REPLACEMENT SOFTWARE TO REPLACE THE
DEFECTIVE NESTOR SOFTWARE FOR THE REMAINDER OF THE INITIAL TERM
OF THIS AGREEMENT, UP TO AN AMOUNT NOT TO EXCEED THE LESSER OF
(1) THE AGGREGATE AMOUNT OF ROYALTIES PAID TO NESTOR UNDER THIS
AGREEMENT, MINUS [SEEKING CONFIDENTIAL TREATMENT]************
(EXCEPT THAT IF NESTOR HAS RECEIVED LESS THAN [SEEKING
CONFIDENTIAL TREATMENT] *********, THE AMOUNT WILL BE $0), OR (2)
[SEEKING CONFIDENTIAL TREATMENT] ***********. EXCEPT AS
EXPRESSLY SET FORTH IN THIS AGREEMENT, NESTOR EXPRESSLY DISCLAIMS
ANY AND ALL WARRANTIES OR GUARANTEES OF ANY KIND WHATSOEVER,
EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE. NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS
PARAGRAPH, NESTOR SHALL REMAIN RESPONSIBLE FOR ITS
INDEMNIFICATION OBLIGATIONS SET FORTH IN PARAGRAPH III.
G. REGARDLESS OF WHETHER ANY REMEDY HEREIN FAILS OF ITS
ESSENTIAL PURPOSE, IN NO EVENT WILL NESTOR OR LICENSEE BE LIABLE
FOR ANY INCIDENTAL, SPECIAL, EXEMPLARY, PUNITIVE, INDIRECT OR
CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATING IN ANY WAY TO
THIS AGREEMENT, THE NESTOR SOFTWARE OR THE USE OF THE SAME
(INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOST INFORMATION,
LOST SAVINGS, LOST PROFITS OR BUSINESS INTERRUPTION), EVEN IF
NESTOR OR LICENSEE HAS BEEN INFORMED, IS AWARE, OR SHOULD BE OR
HAVE BEEN AWARE, OF THE POSSIBILITY OF SUCH DAMAGES. THE SOLE
REMEDY FOR ANY DISK OR OTHER MACHINE READABLE MATERIAL SUPPLIED
BY NESTOR WHICH IS PHYSICALLY DEFECTIVE SHALL BE, AT NESTOR'S
OPTION, REPLACEMENT OF SUCH DISK OR MATERIAL OR REFUND OF THE
ROYALTY PAID TO NESTOR RELATING TO SUCH DISK OR MATERIAL. IN NO
EVENT WILL NESTOR BE LIABLE IN DAMAGES OR OTHERWISE IN EXCESS OF
THE ROYALTIES RECEIVED BY NESTOR FROM LICENSEE UNDER THIS
AGREEMENT. NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS
PARAGRAPH, THE LIMITATIONS OF LIABILITY HEREIN SHALL NOT APPLY TO
THE INDEMNIFICATION PROVIDED IN PARAGRAPH III.A., OR TO DAMAGES
ARISING OUT OF NESTOR'S OR LICENSEE'S GROSS NEGLIGENCE OR WILLFUL
MISCONDUCT.
H. Licensee further understands, agrees and/or warrants
that:
1. it does not intend to and will not use,
disseminate or transfer in any way the Nestor
Software in violation of any applicable law, rule
or regulation of the United States, or any State
of the United States or any foreign country of
applicable jurisdiction (including without
limitation any United States law, rule or
regulation relating to technology export or
transfer) and it will obtain at its own cost any
required export licenses;
2. it has all legal right and authority to conduct
its activities as contemplated by this Agreement;
3. this Agreement is a license agreement only, not an
agreement for the sale of any copy of the Nestor
Software, and Licensee obtains no rights in or to
the Nestor Software other than the limited right
to use it granted by the License and no right
(except as expressly provided in this Agreement)
to create derivative works from, rent, lease,
assign, sublicense, transfer or otherwise use or
copy the Nestor Software is granted either
expressly by implication or otherwise;
4. it will not intentionally infringe the copyright
or other proprietary rights in the Nestor Software
nor permit others to do so and it is, except as
permitted hereunder, to the maximum extent
permitted by law, prohibited from modifying,
dissembling, decompiling, or "reverse engineering"
any part of the Nestor Software;
5. Licensee assumes all responsibility and liability
for the selection of the Nestor Software to
achieve the results intended and for use of and
results obtained from the Nestor Software (except
as provided in Paragraphs IIIA and IIIC);
6. it is solely responsible for warranting any
services it supplies to others for which it uses
the Nestor Software and liable for any warranty
(either express, implied or otherwise) claims
resulting therefrom; and
7. it is solely responsible for all expenses incurred
by it in its performance of this Agreement.
V. Confidentiality, Ownership of Discoveries and Related
Matters.
A. Each Party (the "Receiving Party") agrees, acknowledges
and covenants that certain of the data and/or information
(whether oral, written or in machine-readable form) disclosed to
it by the other Party (the "Disclosing Party") pursuant to or as
contemplated by the provisions of this Agreement contains
valuable trade secrets and other proprietary information (the
"Disclosing Party Confidential Information"); and that
unauthorized use or disclosure of such Disclosing Party
Confidential Information could irreparably injure the Disclosing
Party, which injury cannot be remedied solely by the payment of
money damages.
B. As used in this Paragraph V, the term Disclosing Party
Confidential Information means the following:
1. if disclosed by Licensee to Nestor, (1) all data
and other information supplied to Licensee by its
customers (including without limitation all credit
card transaction, authorization, and account
data); (2) all information concerning Licensee's
customers (including without limitation the
identity of such customers as customers of
Licensee and the number of transactions processed
by Licensee on behalf of customers); and (3) all
information disclosed to Nestor that is contained
in royalty reports required to be delivered under
this Agreement, and information received by Nestor
and its agents in connection with an audit under
Paragraph II.D;
2. if disclosed by Nestor to Licensee, all Nestor
Software in source code form;
3. if disclosed by either Party to the other and not
previously listed in this sentence, all other
data, software, programs and information of any
kind which if in writing, is clearly marked as
confidential and proprietary material belonging to
the Disclosing Party or if not in writing, is
summarized or described, as the case may be, and
identified as confidential and proprietary in a
memorandum prepared by the Disclosing Party and
delivered to and received by the Receiving Party
within ten (10) days following the disclosure in
question; and
4. the terms and conditions of this Agreement
(including pricing).
C. The Receiving Party agrees that it shall hold in strict
confidence and not use or reproduce (except as expressly
permitted by or contemplated by this Agreement) or disclose any
Disclosing Party Confidential Information. The Receiving Party
further agrees to disclose the Disclosing Party Confidential
Information only to those of its employees or contractors who
have a need to know same as contemplated by the purposes of this
Agreement and then only if such employees and contractors have
previously executed and delivered to the Receiving Party
confidentiality agreements substantially of the same force and
effect as this Paragraph V. The Receiving Party also agrees,
acknowledges and covenants that, if the Disclosing Party delivers
to it the Disclosing Party Confidential Information described in
subparagraphs V.B.1. and 2., the Receiving Party will take all
steps necessary to prevent the unauthorized use or disclosure of
such material, including but not limited to, maintaining it under
lock and key when not in use.
D. The provisions of this Paragraph V shall not apply to
any Disclosing Party Confidential Information which : (i) is
already in the public domain at the time of disclosure; or
(ii) after disclosure becomes a part of the public domain by
publication through action other than by the Receiving Party in
violation of this Agreement or any other confidentiality
agreement between the Parties (a "Confidentiality Agreement"); or
(iii) is received by the Receiving Party after the time of
disclosure from a third-party who did not require such
information to be held in confidence and who did not acquire,
directly or indirectly through one or more intermediaries, such
information from the Disclosing Party under any obligation of
confidence or (iv) is agreed to by the Disclosing Party in
writing in advance of such publication, reproduction or use.
E. The Receiving Party shall not be liable to the
Disclosing Party for disclosure of any Disclosing Party
Confidential Information if such disclosure is made pursuant to a
governmental or judicial mandate, provided that the Receiving
Party shall have given the Disclosing Party notice of such
mandate prior to the submission of said Disclosing Party
Confidential Information and, provided further, that the
Receiving Party shall have taken no action to prevent or
interfere with efforts the Disclosing Party may take to intervene
in any such proceeding or to otherwise prevent such disclosure.
F. The Receiving Party agrees to fully cooperate with the
Disclosing Party, at no cost to the Disclosing Party (except for
reasonable out-of-pocket expenses in cases not involving a breach
of this Agreement attributable to the Receiving Party) in any
action or proceeding whereby the Disclosing Party seeks to
prevent or restrain any unauthorized use of the Disclosing Party
Confidential Information or to seek damages therefor.
G. The provisions of this Agreement shall not limit any
rights which either party may have under any Confidentiality
Agreement, whether in force before or after this Agreement.
H. All right, title and interest in and to the Nestor
Software and other material delivered to Licensee pursuant to
this Agreement (whether or not developed or customized for
Licensee) shall remain with Nestor and Licensee obtains only the
right to use it granted by the License. Licensee (or its
customers) retain sole ownership of the data and other
information disclosed to Nestor by Licensee (which had been
supplied to Licensee by its customers) ("Customer Data"). Nestor
will return to Licensee all copies of the Customer Data at
Licensee's request, and Nestor will not retain any copies
(whether in electronic form or otherwise). Nestor agrees that it
will not use (or permit the use of) any of the Customer Data for
any purpose other than fulfillment of Nestor's obligations to
Licensee under this Agreement. In particular, Nestor agrees that
it will not use (or permit the use of) the Customer Data to build
or customize a data model for Nestor's own use or for any third
party, nor will Nestor use or make available to any third party
the custom data models furnished to Licensee which reflect or
incorporate the Customer Data. The preceding sentence is not
intended to limit Nestor's right to use Nestor's "standard" data
models which do not reflect or incorporate the Customer Data.
I. All of the provisions of this Paragraph V shall survive
any termination or expiration of this Agreement.
VI. Term and Termination.
A. The term of this Agreement shall commence on the
Effective Date and shall continue for a period of five (5) years
unless earlier terminated in accordance with this Agreement.
Thereafter, this Agreement shall continue for successive two (2)
year periods, unless either party provides at least three hundred
and sixty (360) days advance written notice of termination to the
other prior to the end of the initial term or any renewal term.
B. This Agreement shall immediately terminate if Licensee
liquidates, dissolves, shall be adjudicated insolvent, files or
has filed against it a petition in bankruptcy or for
reorganization (but in the case of any involuntary filing, only
thirty (30) days after Licensee has had an opportunity to contest
such filing), takes advantage of any insolvency act or
proceeding, including an assignment for the benefit of creditors,
or commits any other act of bankruptcy.
C. Either party shall have the right at any time, upon
thirty (30) days advance written notice and opportunity to cure,
to terminate this Agreement and the License, or at its option, to
suspend its performance hereunder, if such other party has
breached this Agreement or has failed to or is unwilling or
unable to comply with its obligations under this Agreement.
D. Termination of this Agreement and the License shall not
release either party from any of its obligations or liabilities
accrued or incurred under this Agreement, or rescind or give rise
to any right to rescind any payment made or other consideration
given hereunder. Termination of this Agreement shall
automatically terminate all Addenda. Upon termination of this
Agreement and the License, Licensee shall cease all activities
under the License and shall (i) (at Nestor's election)
immediately deliver to Nestor or irretrievably destroy, or cause
to be so delivered or destroyed, any and all copies of the Nestor
Software in whatever form and any written or other materials
relating to the Nestor Software in Licensee's possession, custody
or control and (ii) within thirty (30) days deliver to Nestor a
certification thereof.
VII. Miscellaneous.
A. Neither this Agreement, the License or other interest
hereunder shall be assignable by either party without prior
written consent of the non-assigning party. Notwithstanding the
foregoing either party may assign its rights and obligations
hereunder to any acquiror of all or substantially all of the
assets of such party. Subject to the foregoing, this Agreement
shall be for the benefit of and be binding upon the Parties'
successors.
B. The headings and captions used in this Agreement are
for convenience only and are not to be used in the interpretation
of this Agreement.
C. The failure of either Party to require performance of
any provision of this Agreement shall not affect the right to
subsequently require the performance of such or any other
provision of this Agreement. The waiver of either Party of a
breach of any provision shall not be taken or held to be a waiver
of any subsequent breach of that provision or any subsequent
breach of any other provision of this Agreement.
D. The Parties are independent contractors and engage in
the operation of their own respective businesses. Neither Party
is the agent or employee of the other Party for any purpose
whatsoever. Nothing in this Agreement shall be construed to
establish a relationship of co-partners or joint venturers
between the two Parties. Neither Party has the authority to
enter into any contracts or assume any obligations for the other
Party or to make any warranties or representations on behalf of
the other Party.
E. If any provision of this Agreement is, or is determined
to be, invalid, illegal or unenforceable, all remaining
provisions of this Agreement shall nevertheless remain in full
force and effect, and no provision of this Agreement shall be
deemed to be dependent upon any provision so determined to be
invalid, illegal or unenforceable unless otherwise expressly
provided for herein. Should any provision of this Agreement be
found or held to be invalid, illegal or unenforceable, in whole
or in part, such provision shall be deemed amended to render it
enforceable in accordance with the spirit and intent of this
Agreement.
F. This Agreement has been entered into, delivered and is
to be governed by, construed, interpreted and enforced in
accordance with the laws of the State of New York (without giving
reference to choice-of-law provisions) from time to time in
effect. The Parties agree that the United Nations Convention on
Contracts for the International Sale of Goods shall not apply to
any of the transactions which are contemplated by this Agreement.
G. If a dispute, controversy or claim arises between the
Parties in connection with, concerning or related to this
Agreement, any Addendum hereto, the License, the Nestor Software,
the Nestor Technology or Licensee's use thereof, such dispute,
controversy or claim shall be determined and settled in New York,
New York administered by the American Arbitration Association in
accordance with its Commercial Arbitration Rules. The
arbitration hearing shall be held in New York, New York unless
Licensee and Nestor mutually agree to another location. The
arbitration shall be heard by a panel of three neutral
arbitrators, each of whom shall be experienced in the resolution
of disputes, controversies or claims relating to data processing
services, at least one of whom shall be an attorney. Any award
rendered shall be final and conclusive upon the Parties and any
judgment thereon may be enforced in any court having
jurisdiction, unless otherwise provided by New York law.
Discovery limited to reasonable production of documents pursuant
to the rules then in effect under the Federal Rules of Civil
Procedure (without reference to the local rules of any court)
shall be permitted. The fact that arbitration has commenced
shall not impair the exercise of any termination rights in
accordance with the provisions of this Agreement. The Parties
hereby consent (a) to the non-exclusive jurisdiction of the
courts of the State of New York or to any Federal Court located
within the State of New York for any action (i) to compel
arbitration, (ii) to enforce the award of the arbitrators or
(iii) at any time prior to the qualification and appointment of
the arbitrators, for temporary, interim or provisional equitable
remedies and (b) to service of process in any such action by
registered mail, return receipt requested, or by any other means
provided by law.
H. This Agreement contains the entire and exclusive
agreement of the Parties with respect to its subject matter.
This Agreement supersedes any agreements and understandings,
whether written or oral, entered into by the Parties prior to its
effective date and relating to its subject matter, including the
Confidentiality Agreement, dated September 9, 1996, between
Nestor and Licensee and the Confidentiality Agreement, dated
September 13, 1996, between Nestor and Licensee. No modification
or amendment of this Agreement shall be effective unless it is
stated in writing, specifically refers hereto and is executed on
behalf of each Party. The term "Agreement" shall include all
duly and validly executed Addenda to this Agreement.
I. Neither Party hereto shall be liable to the other for
failure or delay in meeting any obligations hereunder as the
result or strikes, lockouts, war, Acts of God, fire, flood or
acts of government, if beyond the control of such Party.
J. Any notices required or permitted to be sent hereunder
shall be deemed given and in effect as of the date of mailing,
when served personally, by overnight courier, or by certified
mail, return receipt requested; to the addresses stated below:
To Nestor: Nestor, Inc.
One Richmond Square
Providence, RI 02906
Attention: President
To Licensee: Total System Services, Inc.
1200 6th Avenue
Columbus, GA 31901
Attention: President
IN WITNESS WHEREOF, the Parties hereto have set their hands
and seals by their duly authorized representatives as of the day
and year first above written.
LICENSEE NESTOR, INC.
By: /s/Andrew W. Marks By: /s/Nigel P. Hebborn
Group Vice President Chief Financial Officer
[SEAL] [SEAL]
ADDENDUM NUMBER 1
TO LICENSE AGREEMENT
DATED MARCH 28, 1997 BETWEEN
NESTOR INC. AND TOTAL SYSTEM SERVICES, INC.
The following is a description of the deliverables as set forth
in Paragraph I.A. of the Agreement.
[SEEKING CONFIDENTIAL TREATMENT]
The Date of this Addendum is: March 28, 1997.
LICENSEE NESTOR, INC.
By: /s/Andrew W. Marks By: /s/Nigel P. Hebborn
Group Vice President Chief Financial Office
ADDENDUM NUMBER 2 TO LICENSE AGREEMENT
DATED MARCH 28, 1997 BETWEEN
NESTOR INC. AND TOTAL SYSTEM SERVICES, INC.
[SEEKING CONFIDENTIAL TREATMENT]
The Date of this Addendum is: March 28, 1997.
LICENSEE NESTOR, INC.
By: /s/Andrew W. Marks By: /s/Nigel P. Hebborn
Group Vice President Chief Financial Officer
