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AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON AUGUST 28, 1997
REGISTRATION NO. 333-30601
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SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
--------------------
AMENDMENT NO. 2
TO
FORM S-2
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
--------------------
CIMETRIX INCORPORATED
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
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NEVADA 73 87-0439107
(STATE OF INCORPORATION) (PRIMARY STANDARD INDUSTRIAL (I.R.S. EMPLOYER IDENTIFICATION NO.)
CLASSIFICATION CODE NO.)
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100 NORTH TAMPA STREET
TAMPA, FLORIDA 33602
(813) 277-9199
(ADDRESS AND TELEPHONE NUMBER OF REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES)
--------------------
DAVID L. REDMOND
CIMETRIX INCORPORATED
100 NORTH TAMPA STREET
TAMPA, FLORIDA 33602
(813) 277-9199
(NAME, ADDRESS, AND TELEPHONE NUMBER OF AGENT FOR SERVICE)
COPY TO:
ROBERT C. RASMUSSEN, ESQ.
DAVID S. FELMAN, ESQ.
GLENN RASMUSSEN & FOGARTY, P.A.
100 SOUTH ASHLEY DRIVE, SUITE 1300
TAMPA, FLORIDA 33602
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APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC: As
soon as practicable after this Registration Statement becomes effective.
If any of the securities being registered on this Form are to be
offered on a delayed or continuous basis pursuant to Rule 415 under the
Securities Act of 1933, check the following box. [X]
If the registrant elects to deliver its latest annual report to
security holders, or a complete and legible facsimile thereof, pursuant to Item
11(a)(1) of this Form, check the following box. [ ]
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, please check the following box
and list the Securities Act registration statement number and the effective
registration statement for the same offering. [ ]
If this Form is a post-effective amendment filed pursuant to Rule
462(c) under the Securities Act, check the following box and list the Securities
Act registration number of the earlier effective registration statement for the
same offering. [ ]
If delivery of the Prospectus is expected to be made pursuant to Rule
434, please check the following box. [ ]
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THE REGISTRANT AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR DATES
AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL FILE
A FURTHER AMENDMENT THAT SPECIFICALLY STATES THAT THIS REGISTRATION STATEMENT
SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(A) OF THE
SECURITIES ACT OF 1933 OR UNTIL THE REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A),
MAY DETERMINE.
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PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
Item 14. Other Expenses of Issuance and Distribution.
The estimated expenses of the Offering (excluding broker-dealer
discounts and commissions) are as follows:
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ITEM AMOUNT
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SEC Registration Fee................................................... $ 3,030
Printing and Engraving Expenses........................................ 25,000
Legal Fees and Expenses................................................ 75,000
Accounting Fees and Expenses........................................... 1,000
Blue Sky Qualification Fees and Expenses (including legal fees)........ 25,000
Miscellaneous.......................................................... 970
========
Total......................................................... $ 130,000
========
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ITEM 15. INDEMNIFICATION OF DIRECTORS AND OFFICERS.
Section 6.1 of the Company's Bylaws provides for the indemnification of
the Company's directors and executive officers to the fullest effect permitted
by law. Pursuant to the Nevada General Corporation Law, the Company may, and in
some cases, shall, indemnify its directors and executive officers against
certain liabilities. In addition, the Company has entered into an indemnity
agreement with each of its current directors and executive officers pursuant to
which it is obligated to indemnify those persons to the fullest extent
authorized by law and to advance payments to cover defense costs against an
unsecured obligation to repay such advances if it is ultimately determined that
the recipient of the advance is not entitled to indemnification. Reference is
made to the form of Indemnification Agreement filed as Exhibit 10.7 to the
Registration Statement.
ITEM 16. EXHIBIT 5.
The following exhibits are filed as part of this Registration
Statement:
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EXHIBIT
NUMBER EXHIBIT DESCRIPTION
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2.1 Articles of Merger of Cimetrix (USA) Incorporated with and into Cimetrix Incorporated and related Agreement
and Plan of Merger dated June 28, 1995, between Cimetrix Incorporated and Cimetrix (USA) Incorporated (6)
3.1 Articles of Incorporation (1)
3.2 Bylaws, as amended*
4.1 Indenture among the Company and the initial holders of the Senior Notes*
4.2 Specimen Senior Note*
4.3 Common Stock Purchase Warrant (Series 1997)*
5.1 Form of Opinion of Glenn Rasmussen & Fogarty, P.A., regarding the validity of issuance of the
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securities being registered*
10.1 Proxy Agreements dated March 21, 1994, between Paul A. Bilzerian and Waldron Keith Seolas, Lincoln M.
Dastrup, and Shirlee Dastrup and related Three Year Irrevocable Proxies executed as of March 21, 1994,
by W. Keith Seolas, Robert K. Seolas, Suzette Seolas, Helene S. Seolas, and Shirlee Dastrup, transferring
voting rights to Bilzerian (4)
10.2 Lease dated November 22, 1996 between Capitol Properties Four,
L.C. and Cimetrix Incorporated*
10.3 Agreement dated April 15, 1997, between Cimetrix Incorporated and Bicoastal Holding Company for the services of
Paul A. Bilzerian and Terri L. Steffen, his wife*
10.4 Sale and Purchase Agreement dated June 8, 1995, between Cimetrix (USA), Inc. and Brigham
Young University (6)
10.5 Stock Option Plan of Cimetrix Incorporated (2)
10.6 Amendment No. 1 to the Cimetrix Incorporated Stock Option Plan*
10.7 Form of Indemnity Agreement between the Company and each of its executive officers*
10.8 Sublease Agreement dated June 30, 1997, between Cimetrix Incorporated and Just in time solutions, Incorporated*
10.9 Stock Purchase Warrant dated April 15, 1997 issued by Cimetrix Incorporated to David L. Redmond (3)
10.10 Amendment to Proxy Agreement dated August 9, 1995 between Paul A. Bilzerian and W. Keith Seolas, Lincoln M. Dastrup,
Shirlee Dastrup, Helene S. Berry, Robert K. Seolas and Suzette Seolas (6)
10.11 Consulting Agreement dated May 15, 1997 between Cimetrix Incorporated and PAJ Software Development for the services
of Paul A. Johnson (5)
10.12 Letter dated June 26, 1997 from Paul A. Bilzerian to Shirlee Dastrup, Linda Dastrup and Lincoln Dastrup, releasing
irrevocable proxies previously granted to Mr. Bilzerian (5)
10.13 Settlement Agreement and Mutual Release dated February 24, 1997 between Cimetrix Incorporated and Claude O.
Goldsmith, settling litigation over the validity of certain stock issuances and a stock option exercised by Mr.
Goldsmith (5)
10.14 Lease Agreement dated January 29, 1997 between Cimetrix Incorporated and Plaza IV Associates, Ltd. (5)
10.15 OEM Agreement dated September 25, 1996 between Cimetrix Incorporated and Fuji Machine Mfg. Co., Ltd.(a)
10.16 Agreement dated May 1994 between Cimetrix Incorporated, Waldron Keith Seolas, Robert K. Seolas, Suzette Seolas,
Helene S. Berry, W. Edward Red, Shirlee Dastrup, Lincoln M. Dastrup and Linda Dastrup providing for surrender to the
corporation of previously issued shares, restrictions against competition and disclosure of confidential information,
settlement of certain liabilities owed by and to the corporation, and corporate indemnification from liability by
reason of action as a former officer, director, promoter, control person, or shareholder of the corporation (4)
23.1 Independent Auditors' Consent*
23.2 Consent of Counsel (included in Exhibit 5.1)
24.1 Powers of Attorney relating to subsequent amendments*
28.1 Forms of Subscription Agreement*
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* Previously filed with the Registration Statement on Form S-2.
(a) Portions of this exhibit have been omitted pursuant to a request for
confidential treatment.
(1) Incorporated by reference to Annual Report on Form 10-K for the fiscal
year ended December 31, 1993.
(2) Incorporated by reference to Annual Report on Form 10-K for the fiscal
year ended December 31, 1994.
(3) Incorporated by reference from Proxy Statement dated May 2, 1997
pertaining to the 1997 Annual Meeting of Shareholders.
(4) Incorporated by reference to Quarterly Report on Form 10-QSB for the
quarter ended March 31, 1994.
(5) Incorporated by reference from the Quarterly Report on Form 10-Q for
the quarterly period ended June 30, 1997.
(6) Incorporated by reference to Quarterly Report on Form 10-QSB for the
quarterly period ended September 30, 1995.
ITEM 17. UNDERTAKINGS.
(a) The undersigned registrant hereby undertakes that, for
purposes of determining any liability under the Securities Act of 1933, each
filing of the registrant's annual report pursuant to Section 13(a) or 15(d) of
the Securities Exchange Act of 1934 (and, where applicable, each filing of an
employee benefit plan's annual report pursuant to Section 15(d) of the
Securities Exchange Act of 1934) that is incorporated by reference in the
registration statement shall be deemed to be a new registration statement
relating to the securities offered therein, and the offering of such securities
at that time shall be deemed to be the initial bona fide offering thereof.
(b) Insofar as indemnification for liabilities arising under the
Securities Act of 1933 may be permitted to directors, officers and controlling
persons of the registrant pursuant to the foregoing provisions, or otherwise,
the registrant has been advised that in the opinion of the Securities and
Exchange Commission such indemnification is against public policy as expressed
in the Act and is, therefore, unenforceable. In the event that a claim for
indemnification against such liabilities (other than the payment by the
registrant of expenses incurred or paid by a director, officer or controlling
person of the registrant in the successful defense of any action, suit or
proceeding) is asserted by such director, officer or controlling
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person in connection with the securities being registered, the registrant
will, unless in the opinion of its counsel the matter has been settled by
controlling precedent, submit to a court of appropriate jurisdiction the
question whether such indemnification by it is against public policy as
expressed in the Securities Act and will be governed by the final adjudication
of such issue.
(c) The undersigned registrant hereby undertakes to file, during any
period in which offers or sales are being made, a post-effective amendment to
this registration statement:
(i) To include any prospectus required by section 10(a)(3) of
the Securities Act of 1933;
(ii) To reflect in the prospectus any facts or events arising
after the effective date of the registration statement (or the
most recent post-effective amendment thereof) which,
individually or in the aggregate, represent fundamental change
in the information set forth in the registration statement; and
(iii) To include any material information with respect to the
plan of distribution not previously disclosed in the
registration statement or any material change to such
information in the registration statement.
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SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the
registrant has duly caused this registration statement to be signed on its
behalf by the undersigned, thereunto duly authorized, in the City of Tampa,
State of Florida, on August 28, 1997.
CIMETRIX INCORPORATED
By:/s/ David L. Redmond
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David L. Redmond
Executive Vice President and
Chief Financial Officer
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SIGNATURE TITLE DATE
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* President and Chief Executive Officer and August 28, 1997
- ------------------------- Director (as Director and Principal
PAUL A. BILZERIAN Executive Officer)
* Executive Vice President, Chief Financial August 28, 1997
- ------------------------- Officer and Director (as Director and
DAVID L. REDMOND Principal Financial and Accounting Officer)
* Director August 28, 1997
- -------------------------
DOUGLAS A. DAVIDSON
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* Director August 28, 1997
- -------------------------
PAUL A. JOHNSON
* Director August 28, 1997
- -------------------------
DR. RON LUMIA
* By: /s/ DAVID L. REDMOND
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David L. Redmond
Attorney in fact
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EXHIBIT 10.15
OEM AGREEMENT
[Certain information designated by an asterisk has been omitted
and filed separately with the Commission. Confidential treatment has
been requested for the omitted portions.]
This OEM Agreement (hereinafter, this "Agreement") is made and entered
into as of this 25th day of September, 1996 (hereinafter, the "Effective Date"),
by and between Cimetrix Incorporated, a Nevada corporation, with its principal
offices at 2222 South 950 East, Provo, Utah 84606 (hereinafter "Cimetrix") and
Fuji Machine Mfg. Co., Ltd. a Japanese corporation, with its principal offices
at 19 Chausuyama, Yamamachi, Chiryu, Aichi Pref.472, Japan (hereinafter "Fuji
Machine").
RECITALS
A. Cimetrix is the developer and sole owner of certain
proprietary simulation and mechanism control software for the control of
automation equipment and industrial machines, known and trademarked under the
name of CIMControl (hereinafter the "Licensed Software").
B. Fuji Machine manufactures machines for the electronics
industry and desires to use the Licensed Software in connection and combination
with its robots and machines more particularly described in Exhibit A hereto
(the "Fuji Machine Products").
Now, therefore, in consideration of the promises contained in this
Agreement, the parties agree as follows:
1. DEFINITION OF TERMS
(a) Bundled Products means Fuji Machine Products that are combined
with a copy of the Licensed Software.
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(b) Customer means any end user of any Bundled Products to whom
Fuji Machine sublicenses an executable copy of the Licensed Software for use on
such Fuji Machine Products.
(c) Documentation means the user manuals for the Licensed
Software.
(d) Enhancements means modifications or improvements to the
Licensed Software, or new extensions or components of the Licensed Product made
by Cimetrix.
(e) Fuji Applications means the graphical user interface screens
created by Cimetrix or Fuji Machine 'to integrate the Licensed Software with
Fuji Products.
(f) Fuji Enhancements means modifications or improvements to the
Licensed Software, or new extensions or components of the Licensed Product made
by Fuji or made by Cimetrix specifically for Fuji and paid for by Fuji.
(g) Licensed Software means any copy of the object or executable
code version of the proprietary computer software known as CIMControl software,
which includes CIMServer (CIMControl version), CIMTools and the CODE API, and/or
any copy of the object or executable code version of the proprietary computer
software known as GEM Manager (run time version).
(h) Number of Copies means the number of Fuji Machine Products
that contain a copy of the Licensed Software. In the event a single Fuji Machine
product is sold with multiple copies of CIMControl software, the multiple copies
shall be counted, for purposes of Paragraph 4(a) below, as a single copy of
CIMControl software.
(i) Sublicense Agreement means a contract between Fuji Machine and
a Customer whereby the Customer is granted the right to use all or part of an
object or executable code version of the Licensed Software.
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2. GRANT OF LICENSE
(a) Cimetrix hereby grants to Fuji Machine a non-transferable,
nonexclusive license to use and copy the Licensed Software and Documentation
solely for use in combination with the Bundled Products.
(b) Cimetrix grants Fuji Machine a non-exclusive, non-transferable
license to sublicense Customers to use an object or executable version of the
Licensed Software and to use the Documentation, provided that the Licensed
Software is incorporated as part of a Bundled Product, defined in Paragraph
1(a).
(c) Fuji Machine agrees to require its distributors and dealers to
comply with the relevant provisions in this Agreement, and to take all action
necessary to ensure compliance by its dealers and distributors with the relevant
terms of this Agreement.
(d) Cimetrix reserves all rights to the Licensed Software
not expressly granted to Fuji Machine in this Agreement. Without limiting the
generality of the foregoing, Cimetrix reserves the unrestricted right to
market, distribute, sell and license the Licensed Software in Japan and the
rest of the world, including without limitation, to or through other original
equipment manufacturers, value-added resellers, distributors, dealers,
resellers and end users. However, notwithstanding the aforesaid, Cimetrix
agrees: (1) not to provide any Fuji Machine specific software, such as the
Fuji Applications and the Fuji Enhancements, to any other party without Fuji
Machines specific prior written consent; ***
(e) Within thirty (30) days of a written request by Fuji Machine,
Cimetrix will deliver to Fuji Machine reproducible master copies of the Licensed
Software and Documentation. Cimetrix reserves the right to update or revise the
content and performance of the Licensed Software from time to time.
3. TERM OF AGREEMENT
The term of this Agreement shall commence on the effective date hereof
and extend for a period of five years. This Agreement shall automatically be
renewed for subsequent five-year periods unless either party, within ninety (90)
days prior the expiration of the original or any renewal term, gives written
notice to the other party that
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it does not desire to renew this Agreement. The terms and conditions applicable
to the initial period of this Agreement shall continue for the succeeding
renewal period unless changed by the mutual agreement of the parties.
4. PRICING AND PAYMENT TERMS
(a) Fuji Machine agrees to make an initial purchase of *** copies
of CIMControl Software for *** per copy. Cimetrix will include, at no
additional charge, *** copies of Lynx OS runtime software (VME or PC),
documentation not included. Thereafter, Cimetrix agrees to charge Fuji Machine
a sum not to exceed *** per copy for each additional copy of Lynx OS runtime
software. Fuji Machine shall make a prepayment of *** at the time that this
Agreement is executed by both parties, and shall thereafter pay *** for each of
the next *** copies of CIMControl Software sold by Fuji Machine. Thereafter,
Fuji Machine may purchase additional copies of CIMControl for *** per copy.
Fuji Machine shall also have the right to purchase copies of Cimetrix's GEM
Manager software product, runtime version, for *** per copy. Payment shall be
made within 45 days after the completion of each month that Bundled Products are
sold. For example, for Bundled Products sold by Fuji Machine during the month
of March, payment shall be due by May 15.
(b) Any payments not received when due shall be subject to a
service charge of one percent (1) per month.
(c) Except for Cimetrix's income tax liability, Fuji Machine
agrees to pay any and all sales, use, value-added, withholding, excise and
similar taxes on payments under this Agreement.
(d) Records and Audits. Fuji Machine shall send with each monthly
payment a statement certifying the number of Bundled Products sold, the type of
Bundled Product sold, the identity of each Customer that purchased a Bundled
Product, and the amount remitted to Cimetrix. Fuji Machine shall maintain
accurate records relating to the copying, distribution, and sublicensing of the
Licensed Software so as to establish the payments due to Cimetrix hereunder, to
identify all Sublicenses, and to otherwise verify Fuji Machine's compliance with
the terms of this Agreement. Such books and records shall be available at Fuji
Machine's principal place of business in Japan for inspection by an independent
auditor chosen and paid for by Cimetrix for determining whether the correct
Sublicense Fees have been paid and Fuji Machine has otherwise complied with the
terms of this Agreement. Fuji Machine shall immediately pay any overdue
payments revealed by such audit(s). Except as set forth below, such audit(s)
may be conducted no more than once in any twelve (12) month period. Cimetrix
shall bear the costs of the audit; provided, however, if the audit reveals
overdue payments in excess of five percent (5%) of the payments owed for any six
(6) month period, Fuji Machine shall pay the costs of such audit(s) and Cimetrix
shall have the right to conduct another audit during the same twelve (12) month
period. All information obtained by Cimetrix (or its independent third party
representative) during any such audit shall be treated as Confidential
Information in accordance with Section 13 below.
(e) Cimetrix agrees to provide Fuji Machine with its best OEM
pricing terms, for comparable Cimetrix OEM customers for all of its software and
hardware products, during the term of this Agreement.
5. FUJI MACHINE'S RESPONSIBILITIES
(a) Fuji Machine, at its own expense, will be responsible for
installing the Licensed Software as part of the Bundled Product.
(b) Fuji Machine agrees to submit to Cimetrix for review a written
summary describing the manner in which the Licensed Software is incorporated
into each separate Bundled Product and describing the operation of the Bundled
Product. Cimetrix agrees to keep all such summaries confidential.
(c) Fuji Machine agrees not to decompile, disassemble or otherwise
reverse engineer or modify the Licensed Software in any way without the prior
written consent Cimetrix, which may be withheld in its sole discretion.
(d) Fuji Machine agrees not to directly or indirectly sell the
Bundled Products to any country prohibited by the export control laws of the
United States Government without authorization of Cimetrix or the United States
Government.
(e) During the term of this Agreement, and for three years
thereafter, Fuji Machine agrees that it will not engage in the business of
developing, promoting, marketing, or licensing any computer software that
directly competes with the Licensed Software. Notwithstanding the aforesaid,
Fuji Machine shall have the right to,
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at any time, independently create software for use with its own machines,
whether for internal purposes or for resale, which right shall include licensing
other third party software for use with Fuji Machine's products, whether for
internal purposes or for resale.
6. PROPRIETARY RIGHTS IN SOFTWARE
Title to the Licensed Software and Enhancements are reserved to
Cimetrix. Fuji Machine acknowledges and agrees that Cimetrix is and shall remain
the owner of the Licensed Software and Enhancements thereto. Fuji Machine shall
retain all rights to Fuji Applications and Fuji Enhancements. Fuji Machine shall
have the right to translate the Licensed Software and Enhancements into Japanese
or the language 6f other countries into which the Bundled Products shall be
sold; provided that Fuji Machine shall provide Cimetrix with copies of all such
translations, and by this Agreement assigns all rights of any kind to such
translations to Cimetrix. However, in the event that Cimetrix either gives or
resells said translations to any other third party, Cimetrix agrees to either
reimburse Fuji Machine for its translation costs or pay Fuji Machine a
reasonable fee, whichever is less. Fuji Machine agrees that it will not use,
copy, distribute, or transfer the Licensed Software or Enhancements except as
permitted by this Agreement.
7. ADVERTISING AND TRADEMARK USAGE/PROTECTION
(a) Cimetrix hereby grants, and Fuji Machine hereby accepts, a
limited nonexclusive license to use Cimetrix's trademarks, trade names and logos
associated with the Licensed Software ("Cimetrix Trademarks") solely for the
purpose of marketing and distributing the Licensed Software as part of the
Bundled Products in accordance with this Agreement. Title to the Cimetrix
Trademarks and any goodwill arising out of Fuji Machine's use of the Cimetrix
Trademarks shall remain with and belong to Cimetrix and
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its licensors. At no time during or after the term of this Agreement shall Fuji
Machine challenge or assist others to challenge the Cimetrix Trademarks or the
registration thereof or attempt to use or register any trademarks, marks or
trade names confusingly similar t', those of Cimetrix.
(b) Cimetrix agrees that it will not identify Fuji Machine in any
of its advertisements or promotional materials until after Fuji Machine has
released the first Fuji Machine Product containing the Licensed Software to the
SMT marketplace.
(c) In order to ensure proper use of Cimetrix's trademarks, trade
names and/or logos on Bundled Products and in Fuji Machine's advertisements and
promotional materials, Fuji Machine agrees to provide Cimetrix with copies of
advertisements and promotional materials that refer to the inclusion or
availability of the Licensed Software or that include any Cimetrix Trademarks.
If Cimetrix identifies any improper usage of its trademarks in its review of
such materials, Fuji Machine agrees to make those changes reasonably requested
by Cimetrix.
8. PROPRIETARY RIGHTS INDEMNITY
(a) Cimetrix represents and warrants that (i) Cimetrix is the sole
author of the Licensed Software and has full and exclusive right to grant all
licenses and rights granted therein; (ii) that the Licensed Software has not
been published under circumstances that have caused loss of copyright therein;
(ii) that the Licensed Software does not infringe any patent, copyright, trade
secret or other proprietary right (including trade secrets of any third party);
and (iv) no claim, regardless of whether embodied in an action past or present,
of infringement of any patent, copyright, trademark or other intellectual
property
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right, has been made or is pending against Cimetrix with respect to the Licensed
Software or any enhancements.
(b) Fuji Machine agrees that Cimetrix has the right to defend, or
at its option to settle, any claim, suit or proceeding (collectively, "Claim")
brought against Fuji Machine on the issue of infringement of any United States
patent, United States copyright or United States trademarks by the Licensed
Software. Cimetrix shall have sole control of the defense of the Claim, and
Cimetrix agrees to pay, subject to the limitations hereinafter set forth, any
final judgment entered against Fuji Machine on such Claim. Fuji Machine agrees
that Cimetrix at its sole option shall be relieved of the foregoing obligations
unless Fuji Machine notifies Cimetrix promptly in writing of such Claim and
gives Cimetrix authority to proceed as contemplated herein, and, at Cimetrix's
expense, gives Cimetrix proper and full information and assistance to settle
and/or defend any such Claim. If the Licensed Software is the subject of any
Claim for infringement of another party's copyright, and the distribution or use
of the Licensed Software is or may be enjoined, then Cimetrix may: at its option
and expense (i) procure for Fuji Machine and its customers the right under such
copyright to distribute or use, as appropriate, the Licensed Software or part
thereof; (ii) suitably modify the Licensed Software or part thereof; or (iii) if
the use of the Licensed Software, or part thereof, is prevented by injunction,
terminate this Agreement.
(c) Notwithstanding the provisions of Paragraph 8(b) above,
Cimetrix assumes no liability for (i) any infringement claims with respect to
Fuji Machine's portion of the Bundled Products, or (ii) the modification of the
Licensed Software by Fuji Machine.
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(d) The foregoing provisions of this Section 8 state the entire
liability and obligation of Cimetrix and the exclusive remedy of Fuji Machine
and its customers, with respect to any alleged infringement of copyrights or
other intellectual property rights by the Licensed Software, the Cimetrix
Trademarks or any part thereof.
(e) Fuji Machine shall promptly notify Cimetrix in writing upon
its discovery of any unauthorized use or infringement of the Licensed Software
or Cimetrix's patent, copyright, trademark or other intellectual property rights
with respect thereto. Cimetrix shall have the sole and exclusive right to bring
an infringement action or proceeding against a third party and to recover
damages therefor, and, in the event that Cimetrix brings such an action or
proceeding, Fuji Machine shall cooperate and provide full information and
assistance to Cimetrix and its counsel in connection with any such action or
proceeding.
9. FUJI MACHINE'S WARRANTIES AND INDEMNITIES
Fuji Machine will indemnify Cimetrix for, and hold it harmless from,
any loss, expense (including reasonable attorneys' fees), damage or liability
arising out of any claim, demand, suit or action against Cimetrix resulting from
Fuji Machine's distribution of the Licensed Software or the Bundled
Products(subject to Section 8 above), provided that (i) Cimetrix promptly
informs Fuji Machine in writing of any such claim, demand or suit, (ii) Fuji
Machine is given control over the defense thereof and Cimetrix cooperates in the
defense, (iii) Cimetrix will not agree to the settlement of any such claim,
demand or suit prior to a final judgment thereon without the consent of Fuji
Machine, whose consent will not be unreasonably withheld, and (iv) provided that
the claim is not caused by Cimetrix or its products.
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10. TERMINATION
(a) Both parties shall have the right to terminate this Agreement
upon thirty (30 days' prior written notice if the other party is in breach of
any terms of this Agreement, including without limitation the payment of money,
and the breaching party fails to remedy such breach within the thirty (30) day
notice period.
(b) Except as specifically set forth below, upon any termination
or expiration of this Agreement all rights granted to Fuji Machine hereunder
shall terminate and Fuji Machine shall immediately cease all marketing and
distribution of the Licensed Software and, within fifteen (15) days of such
termination or expiration, shall (i) return all copies of the Licensed Software,
including without limitation master diskettes and user manuals, (ii) permanently
remove the Licensed Software from all unsold Bundled Products, (iii) pay to
Cimetrix any and all sums due under this Agreement, and (iv) certify to Cimetrix
that all of the foregoing has been completed. Any termination or expiration
shall not affect any Cimetrix Sublicenses of the Licensed Software previously
sublicensed by Fuji Machine or its distributors or dealers in accordance with
this Agreement.
(c) In the event if termination by either party in accordance with
any of the provisions of this Agreement, neither party shall be liable to the
other, because of such termination, for compensation, reimbursement or damages
on account of the loss of prospective profits or anticipated sales or on account
of expenditures, inventory, investments, leases or commitments in connection
with. the business or goodwill of Cimetrix or Fuji Machine. Termination shall
not, however, relieve either party of obligations incurred prior to the
termination.
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(d) The provisions of Sections 4, 5, 6, 7, 8, 9, 10, 11, 12, 13,
14 and 15 shall survive the termination of this Agreement for any reason. All
other rights and obligations of the parties shall cease upon termination of this
Agreement.
11. SOFTWARE ESCROW AGREEMENT
In the event of a material default of this OEM Agreement by Cimetrix,
which default remains uncured for more than thirty (30) days, Cimetrix shall be
required to immediately execute a Software Escrow Agreement in the form
attached hereto as exhibit B. Cimetrix represents and warrants that it
presently maintains, and will continue to maintain at all times, a current
version of the source code for each of the Licensed Software products
(specifically including, but not limited to, CIMControl and GEM Manager) in a
physically secure, off-site location that is updated within ten (10) working
days of any new software release. Cimetrix agrees that in the event of a
default by Cimetrix of any portion of this paragraph, Fuji Machine may be
irreparably harmed and, therefore, shall be entitled to seek preliminary and
permanent injunctive relief and specific performance, in addition to any other
remedies that it may have by law.
12. WARRANTY; DISCLAIMER OF WARRANTIES
(a) Fuji Machine shall be responsible for replacing any faulty
diskette or disk provided to the customers of the Bundled Products except for
diskettes or disks included in any Licensed Software package obtained directly
from Cimetrix and for correcting any faulty reproduction of the Licensed
Software by Fuji Machine.
(b) Any faulty diskette or disk provided by Cimetrix to Fuji (the
"Defective Software") shall be returned to Cimetrix for replacement along with
appropriate documentation as required. Upon inspection and verification of the
Defective Software, Cimetrix shall, at its option, ship a replacement Software
copy to Fuji Machine or its Customer at no charge or refund the amount paid by
Fuji Machine to Cimetrix for such Defective Software. The foregoing sets forth
the entire liability and obligation of Cimetrix and the exclusive remedy of Fuji
Machine and its customers with respect to any Defective Software.
13. NONDISCLOSURE AND RESTRICTED USE
In the course of performing this Agreement, both parties may. disclose
to the other party trade secrets and confidential and proprietary information of
the disclosing party ("Confidential Information"). Such Confidential Information
includes without
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limitation the terms and conditions of this Agreement, the trade secrets and
technology embodied in the Licensed Software and to the extent it is reasonably
identified as confidential information, any other technical and/or internal
specifications of the disclosing party's products, marketing plans, future
products and other business information. All Confidential Information shall
remain the sole property of the disclosing party and the receiving party shall
have no interest in or right to such Confidential Information except as
expressly set forth in this Agreement. Both parties agree that all Confidential
Information of the other party shall be held in strict confidence, will not be
disseminated or disclosed to any third party and will not be used by the
receiving party for any purpose other than performing its obligations under this
Agreement without the express written consent of the disclosing party. Both
parties agree to use at least the same degree of diligence to protect the other
party's Confidential Information as it uses to protect any of its own trade
secrets and other confidential information. The provisions of this Section shall
not apply to any information or materials which (i) are in the public domain at
the time of disclosing to the receiving party or which thereafter enter the
public domain through no action or inaction by the receiving party or its
employees; (ii) were in the possession of, or known by, the receiving party
prior to its receipt from the disclosing party; or (iii) are rightfully
disclosed to the receiving party by another person not in violation of the
proprietary or other rights of the disclosing party, or any other person or
entity.
14. LIMITATION OF LIABILITY
THE LIABILITY OF CIMETRIX AND ITS SUPPLIERS ARISING OUT OF THIS
AGREEMENT OR RELATED TO ANY CIMETRIX SOFTWARE SHALL NOT
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EXCEED THE AMOUNT PAID BY FUJI MACHINE TO CIMETRIX FOR THE APPLICABLE SOFTWARE
PRODUCT. IN NO EVENT SHALL CIMETRIX OR ITS SUPPLIERS BE LIABLE FOR COSTS OF
PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES. IN NO EVENT SHALL CIMETRIX OR ITS
SUPPLIERS BE LIABLE FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, OR INDIRECT
DAMAGES ARISING OUT OF THIS AGREEMENT, HOWEVER CAUSED, WHETHER FOR BREACH OF
CONTRACT, NEGLIGENCE OR OTHERWISE, AND WHETHER OR NOT CIMETRIX HAS BEEN ADVISED
OF THE POSSIBILITY OF SUCH DAMAGE. THESE LIMITATIONS SHALL APPLY NOTWITHSTANDING
ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED OR EXCLUSIVE REMEDY.
15. GENERAL
(a) In the event of disputes between the parties that they are
unable to resolve through discussion, they may file suit in the federal or state
courts of Utah. The rights and obligations of the parties under this Agreement
shall be governed by and construed under the laws of the State of Utah, without
reference to conflict of laws principles. The federal and state courts within
the State of Utah shall have exclusive jurisdiction to adjudicate any dispute
arising out of this Agreement. Fuji Machine hereby expressly consents to (i) the
personal jurisdiction of these federal and state courts within Utah and (ii)
service of process being effected upon it by certified mail sent to the address
set forth in Paragraph 15(d) below. In the event of any such litigation, the
prevailing party shall be entitled to recover its costs and reasonable attorneys
fees, including such costs and fees on appeal.
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(b) This Agreement sets forth the entire agreement and
understanding of the parties relating to the subject matter herein and merges
all prior discussions between them. No modification of or amendment to this
Agreement or the Exhibits attached hereto, nor any waiver of any rights under
this Agreement, shall be effective unless in writing signed by both parties.
(c) No delay, omission, or failure to exercise any right or remedy
provided for in this Agreement shall be deemed to be a waiver of the event
giving rise to such remedy, but every such right or remedy may be exercised,
from time to time, as may be deemed expedient; by the party exercising such
right or remedy.
(d) Any notice required or permitted by this Agreement shall be in
writing and shall be sent by prepaid registered or certified mail, return
receipt requested, or a nationally recognized one-day express courier service
addressed as follows:
To Cimetrix:
Paul A. Bilzerian
President
Cimetrix Incorporated
2222 South 950 East
Provo, UT 84606
Tel: 801/344-7000
Fax: 801/344-7077
To Fuji Machine:
Koichi Asai
Managing Director
Research and Development
Fuji Machine Mfg. Co., LTD.
19 Chausuyama, Yamamachi
Chiryu, Aichi Pref.472,
Japan
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Tel: (0566) 81-2111
Fax: (0566) 84-1010
In addition the parties shall send a separate copy of each and every notice by
facsimile to the foregoing fax numbers:
(e) Nonperformance of either party, except for the making of
payments, shall be excused to the extent that performance is rendered impossible
by strike, fire, flood, earthquakes, governmental acts or orders or
restrictions, or any other reason where failure to perform is beyond the control
and not caused by the negligence of the non-performing party.
(f) This Agreement may be executed in two or more counterparts,
each of which shall be deemed an original and all of which together shall
constitute one instrument.
(g) The relationship of Cimetrix and Fuji Machine established by
this Agreement is that of independent contractors and nothing contained in this
Agreement shall be construed to (i) give either party the power to direct and
control the day-to-day activities of the other, (ii) constitute the parties as
partners, joint venturers, co-owners or otherwise as participants in a joint or
common undertaking, or (iii) allow Fuji Machine to create or assume any
obligation on behalf of Cimetrix for any purpose whatsoever. All financial
obligations associated with Fuji Machine's business are the sole responsibility
of Fuji Machine. All sales and other agreements between Fuji Machine and its
customers
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are Fuji Machine's exclusive responsibility and shall have no effect on Fuji
Machine's obligations under this Agreement.
(h) The parties shall each be solely responsible for, and shall
indemnify and hold the other party free and harmless from any and all claims,
damages or lawsuits (including such other party's attorneys' fees) arising or
alleged to arise out of the acts of the indemnifying party, its employees or its
agents.
16. ASSIGNMENT
Fuji Machine shall not transfer or assign its rights or obligations
under this Agreement without the prior written consent of Cimetrix. Cimetrix
shall be entitled to assign this agreement, provided, however, that Cimetrix
shall not be relieved of any of its obligations under this Agreement. Subject to
the foregoing, this Agreement shall be binding upon and inure to the benefit of
the parties hereto, their successors and assigns.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
CIMETRIX INCORPORATED
By:
-------------------------------------
Paul A. Bilzerian, President
FUJI MACHINE MFG. CO., LTD.
By:
-------------------------------------
Koichi Asai, Managing Director
Research and Development
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EXHIBIT A
Description of Fuji Machine Products
[here insert description, model numbers, etc., of each Fuji Machine Product into
which the Licensed Software will be bundled]
<PAGE> 17
EXHIBIT B
SOFTWARE ESCROW AGREEMENT
This Software Escrow Agreement (hereinafter, this "Escrow Agreement")
is made and entered into as of this ____ day of __________, 199__ (hereinafter,
the "Effective Date") by and between Cimetrix Incorporated, a Nevada
corporation, with its principal offices at 2222 South 950 East, Provo, Utah
84606 (hereinafter "Cimetrix") and Fuji Machine Mfg. Co., Ltd., a Japanese
corporation, with its principal offices at 19 Chausuyama, Yamachi, Chiryu,
Aichi Pref. 472, Japan (hereinafter "Fuji Machines").
RECITALS
A. Cimetrix and Fuji Machine have previously entered into an OEM
Agreement with respect to the purchase, sale and distribution of certain
software products owned by Cimetrix, more particularly described in the OEM
Agreement as the Licensed Software.
Now, therefore, in consideration of the promises contained in this
Agreement, the parties agree as follows:
1. Deposits In Escrow
(a) Within thirty (30) days after the Effective Date of
this Software Escrow Agreement, Cimetrix will deposit with Escrow Agent all
machine processable and printed materials, data and information constituting
the Source Listings and any documentation for the Licensed Software as
installed pursuant to the OEM Agreement (all of the foregoing hereinafter
referred to as the "Material") which shall include, but not be limited to, all
existing user manuals, control procedures, record layouts for all files and
program listings-source codes. Cimetrix shall send written confirmation to
Fuji Machine that said deposit has been made. Cimetrix hereby represents and
warrants that it is the sole owner of all right, title, and interest in the
Material.
(b) In the event of any improvement of modification made
to the Source Listings by or on behalf of Cimetrix, Cimetrix shall within one
hundred twenty (120) days after such improvement or modification is released to
the general public, deposit with Escrow Agent a complete revision of the
Material encompassing all such improvements and/or modifications. It is
understood that this deposit requirement does not require Cimetrix to make any
improvements or modification it is not otherwise obligated to make. At such
time as such additional information or documentation is deposited with Escrow
Agent, Cimetrix will give written notices of such deposits to Fuji Machine.
Copies of the revised Material and the Material prior to revision shall be
maintained in escrow as provided hereunder.
<PAGE> 18
2. Access To Escrowed Material In The Event Of Default
(a) Fuji Machine shall give written notice to Escrow
Agent and Cimetrix of the occurrence of a material default by Cimetrix in the
performance of its obligations under the OEM Agreement to maintain or support
the operability and standards of the Licensed Software. Such notice shall
specify with particularity the nature of such default.
(b) Unless within fifteen (15) days after receipt by
Escrow Agent and Cimetrix of the notice referred to in Section 2(a) above,
Cimetrix shall file with Escrow Agent its affidavit executed by a person
believed by the Escrow Agent to a responsible executive officer of Cimetrix
that no event referred to in Section 2(a) above has occurred, or that such
event has been cured, Escrow Agent shall thereupon on the sixteenth (16) day
deliver to Fuji Machine in accordance with Fuji Machine's instructions the
entire Material. Escrow Agent shall notify Cimetrix within five (5) days after
receipt of Fuji Machine's notice pursuant to Section 2(a).
(c) In the event Cimetrix files an affidavit referred to
in Section 2(b) above disputing the fact that an event of default specified in
Section 2(a) has occurred, then Escrow Agent shall not deliver the Material
either to Fuji Machine or Cimetrix until directed to do so by Fuji Machine and
Cimetrix jointly, or until Escrow Agent is ordered to do so by a court of
competent jurisdiction.
3. Use of Escrowed Material.
Fuji Machine and Cimetrix agree that Fuji Machine's right to use the
Material after delivery pursuant to the terms thereof shall be limited solely
to the maintenance and support of the operability and standards of the Licensed
Software as described in the OEM Agreement and that no other rights to or
interest in the Material or Source Listings shall be transferred to Fuji
Machine hereunder.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
CIMETRIX INCORPORATED:
By_______________________
FUJI MACHINE MFG. CO., LTD.:
By________________________
