Intel / QI Confidential subject to CNDA
EXHIBIT 10.21
INTEL SOFTWARE LICENSE AGREEMENT
QUADRANT INTERNATIONAL, INC.
INTEL Agreement #______________ Effective Date: _______________
"INTEL" INTEL Corporation
0000 Xxxxxxx Xxxxxxx Xxxxxxxxx
Xxxxx Xxxxx, XX 00000
"QI" Quadrant International.
Xxx Xxxxx Xxxxxx Xxxxxxx
Xxxxxxx, XX 00000
This Software License Agreement ("Agreement") is entered into as of the
Effective Date set forth above by and between INTEL and QI. INTEL and QI desire
for QI to offer to PC OEM customers Licensed Products that contain certain Intel
technology. INTEL therefore wishes to xxxxx and QI desires to receive licenses
to the INTEL technology, as set forth herein.
NOW THEREFORE, based on the terms and conditions set forth and for other good
and valuable consideration, receipt of which is hereby acknowledged, the parties
agree to the terms and conditions set forth in the following Exhibits attached
hereto, and agreements executed contemporaneously herewith, which are
incorporated herein by reference:
Exhibits (attached):
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Exhibit "A" License Grant Terms and Conditions
Exhibit "B": Description of Software and Documentation
Exhibit "C" Minimum Mandatory License Terms for Object Code Distribution
Exhibit "D" Intel Optimizer Logo License Agreement
Contemporaneous Agreements (not attached):
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"Letter Agreement", which includes Terms for Covenant not to Sue, etc.
"Equity Agreement", which includes [Agreement to Purchase re Series C
Preferred Stock of Q Information Systems, Inc.] and related documents"
INTEL CORPORATION QUADRANT INTERNATIONAL, INC.
/s/ D. Xxxxx Xxxxxx /s/ Xxxxx Xxx
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Signature Signature
D. Xxxxx Xxxxxx Xxxxx Xxx
---------------------------------- ----------------------------------
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED PORTIONS.
Printed Name Printed Name
VP + Dir Intel Architecture Labs Chief Financial Officer
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Title Title
4/23/99 4/23/99
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Date Date
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EXHIBIT A
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LICENSE GRANT TERMS AND CONDITIONS
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1. DEFINITIONS.
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1.1 "Derivative Work" means modifications, improvements, enhancements,
upgrades, updates, and revisions to an original work.
1.2 "Data Enabled" means a DTV receiver capable of decoding the [*] within
the [*] and providing those [*] in a form compatible with the [*] or in
the event [*] is not available, the [*]
1.3 "End User" means any person or entity that obtains License Products
primarily for his/her/its own use and not for resale or further
sublicensing.
1.4 "INTEL's Patents" means those patents and patent applications owned by
Intel or that Intel has the right to license to QI that explicitly read
on the Software as delivered by Intel to QI but only to the extent that
those specific patents are necessarily infringed by QI exercising the
copyright license granted in this Agreement.
1.5 "Licensed Products" means any QI software application that includes the
Software or Derivative Works thereof, adds substantial value to the
Software, is integrated with QI's [*], enables DTV data reception, and
provides [*] system information [*]
1.6 "PC OEM" means a corporate entity that derives at least 1/3 of its total
revenue from the sale of Intel Architecture based PC products.
1.7 "Intel(R) Architecture-based Personal Computers" means a personal
computer which includes a thirty-two (32) bit or greater microprocessor
architecture designed to execute the same instruction set as any thirty-
two (32) bit or greater microprocessor made or developed by Intel.
1.8 "QI Shares" means the shares of Series C Preferred Stock initially
convertible into an equal number of shares of QI Common Stock as set
forth in the Equity Agreement.
1.8.1 "Software" means those portions of Intel's Digital Content Receiver
Software that provide (i) [*] processing and (ii) [*] system information
[*] as more fully described in Exhibit B, and includes any bug fix or
updates for such Software as may be provided by INTEL at its discretion
during the support period described in Section 2.3, all as delivered by
Intel to QI hereunder.
1.8.2 "Object Code" means executable programs for Software or Derivative Works
thereof.
1.8.3 "Source Code" means Software and Derivative Works thereof in human
readable form.
[*]= CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED PORTIONS.
1.8.4 "Software Documentation" means manuals and other materials as
delivered by INTEL to QI in any medium, relating to design,
maintenance, installation, operation, advertising or training of
Software.
1.8.5 "Software HDTV Product" shall mean any QI software application
incorporating a TV decoder capable of receiving and displaying all audio
and video formats as specified in ATSC Digital Television Standard (ATSC
Document A/53). The software may utilize [*] to specifically [*] certain
steps in the [*] but shall not include any [*] specifically for [*].
1.8.6 "Software DTV Product" shall mean any QI software application that
enables [*], and provides [*] system information [*].
2. General Obligations of the Parties.
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2.1 Software Deliverables. Intel shall use reasonable commercial efforts to
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(i) release the first code drop of the Software to QI no later than [*]
(ii) optimize the Software for a Windows Driver Model (WDM)/DirectShow
framework prior to [*] and (iii) deliver the final code drop of the
Software to QI no later than [*]
2.2 Intel Training. Intel will, at a mutually agreeable time, provide one
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day of training to QI technical representatives on the Software at
Intel's Hillsboro, OR facilities.
2.3 Intel Technical Support. Intel will use commercially reasonable
-----------------------
efforts to provide phone and email support to QI during regular business
hours, not to exceed [*] on the Software through [*] Intel shall have no
obligation to provide any bug fixes or updates to the Software, but will
use commercially reasonable efforts to assist QI to resolve such issues.
2.4 QI Software HDTV Product Deliverables. QI shall use best efforts to (i)
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deliver a gold version (fully debugged, QA tested, commercial release)
Software HDTV Product to a Tier 1 PC OEM for Inclusion in Intel(R)
Architecture-based Personal Computers no later than [*] and (ii) release
a gold version (fully debugged, QA tested, commercial release) Data
Enabled Software HDTV product no later than the [*] from Intel.
2.4.1 Notice of Creation of Licensed Products. QI shall notify Intel in
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writing 15 days prior to the release of any version of Licensed
Product created either for sale or public display. Such notice shall
clearly detail what portions of Software or Derivative Works thereof
have been incorporated into the version of the Licensed Product. Such
Licensed Products shall be clearly identified by QI, utilizing release
numbers or other industry-accepted naming convention, to distinguish
such Licensed Product from any version of Software HDTV Product or
Software DTV Product created by QI not constituting Licensed Product
by virtue of not incorporating any portions of Software or Derivative
Works thereof.
[*]= CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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2.4.2 No Obligation to Create Licensed Products. QI shall be under no
-----------------------------------------
obligation to create Licensed Products in the development of Software
HDTV Product, Software DTV Product, or in the fulfillment of any
obligations specified in Section 2 of this Agreement.
2.5 QI Training. QI shall use reasonable commercial efforts to send
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appropriate engineering resources to Intel for a one (1) day training
session regarding the Software.
2.6 QI Support. QI shall provide all first level technical support for all
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Licensed Products. QI shall report bugs and other errors discovered in
the Software in a timely manner to Intel. QI shall provide all
technical support for any Software HDTV Product or Software DTV
Product not constituting a Licensed Product.
2.7 QI Derivative Works. QI shall provide Intel Derivative Works it
-------------------
creates of the Software in source and object code form within a
reasonable time after QI develops the same.
2.8 Delivery of QI Shares. As a condition precedent to the licenses
---------------------
granted to QI in Section 3, QI will issue and deliver to INTEL the QI
Shares as set forth in the Equity Agreement.
2.9 Necessary Licenses. As a condition precedent to QI's distribution of
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any Licensed Product, QI shall obtain license rights from third
parties as deemed necessary by QI, including any necessary licenses
relating to MPEG video and audio technologies.
3. LICENSE GRANTS.
3.1 Source Code. Subject to the terms and conditions of this Agreement,
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INTEL grants QI a [*] license, under INTEL's Patents, copyrights, and
trade secrets in the Source Code as delivered by Intel to QI to use,
copy, and create Derivative Works of the Software to develop Licensed
Products and support and maintain such Licensed Products. QI shall have
no right to disclose or sublicense the Source Code to any third party
for any reason, except subcontractors as provided for in Section 3.4.
3.2 Object Code. Subject to the terms and conditions of this Agreement,
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INTEL grants QI a [*] license, under INTEL's Patents, copyrights and
trade secrets in the Object Code to copy, have copied, publicly display,
publicly perform, and distribute (through multiple levels of
distribution) Object Code through QI's PC OEM customers but only (i) as
integrated into Licensed Products, (ii) included with Intel
Architecture-based Personal Computers, (iii) distributed to End-Users
pursuant to an End User license agreement containing terms at least as
restrictive as those set forth in Exhibit C. Agreements with PC OEMs
shall be at least as restrictive as the terms of this Agreement. QI
shall not distribute Licensed Products to or through any other person or
entity, or with any non-Intel(R) Architecture-based Personal Computers,
without the express prior written consent of Intel. QI's PC OEM
customers shall have no right to sublicense any Licensed Product to any
other person or entity except End-Users.
[*]= CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED PORTIONS.
5
3.3 To QI for Documentation. Subject to the terms and conditions of this
-----------------------
Agreement, INTEL grants QI a [*] license under INTEL's copyrights and
trade secrets covering the Documentation as it is initially delivered,
to copy and use Documentation internally only as reasonably necessary to
exercise the licenses granted to QI in Sections 3.1 and 3.2.
3.4 Use of Subcontractors. QI may use subcontractors to exercise the
---------------------
license rights granted in this Section 3, provided that such
subcontractors (i) agree to be bound by terms and conditions at least
as protective of the parties' rights as those found in this Agreement,
and who (ii) enter into written confidentiality and non-disclosure
agreements at least as restrictive as the confidentiality and non-
disclosure provisions found in this Agreement. Nothing in this Section
3.4 is intended to expand the license grants contained in Section 3 to
create any right to sublicense or to create any independent license
rights for QI's subcontractors. QI shall indemnify Intel for any
liability or injury resulting from its use of subcontractors.
4. OWNERSHIP RIGHTS; NO OTHER LICENSES GRANTED
-------------------------------------------
4.1 All rights not expressly granted herein are reserved to Intel, and no
other licenses are granted herein by implication, estoppel or
otherwise. No license or immunity is granted by Intel (either directly
or by implication, estoppel or otherwise) to any third party acquiring
the Software or Derivative Works from QI for the combination of these
items with other items or for the use of such combination. Intel
grants no licenses or other rights under any of its intellectual
property unless expressly set forth in this Agreement. QI acknowledges
that the licenses received from INTEL herein are intended for QI's use
with Licensed Products only and that no license is granted to design
or develop or to assist in designing or developing any other product
including any product for a third party. This Agreement also does not
xxxxx XX any rights to use the INTEL's trademarks unless an express
trademark license is granted.
4.2 The Software, and all intellectual property rights therein, are and
shall be the sole and exclusive property of INTEL.
4.3 As between INTEL and QI, both Derivative Works and Licensed Products
are and shall remain the sole and exclusive property of QI subject to
INTEL's ownership of the Software as set forth in Section 4.2.
4.3.1 All Software DTV Products and Software HDTV Products not constituting
Licensed Products, by virtue of not incorporating any portion of
Software or Derivative Products thereof, and all intellectual property
rights therein, are and shall be the sole and exclusive property of
QI.
4.4 As between INTEL and QI, QI shall assert no rights of patent or other
form of intellectual property rights against Intel, Intel's customers
or licenses, with regard to (i) any Intel technology or product that
is based on or incorporates the Software or any Intel developed
Derivative Work thereof and (ii) Licensed Products and any QI
developed
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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Derivative Works of the Software, as may be further specified in the
Letter Agreement executed contemporaneously with this Agreement.
5. TRADEMARK AND LOGO LICENSES
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5.1 INTEL Optimizers Logo License. All Licensed Products both containing
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Software, in whole or in part, and presenting a QI logo shall, at
INTEL's discretion and as reasonably requested by Intel, present a
version of INTEL Optimizers logo in a form and manner consistent with
INTEL Optimizers Logo Usage Guidelines and pursuant to the INTEL
Optimizers Logo License in the form of Exhibit D, attached hereto.
Licensed Products not presenting a QI logo may also, at QI's sole
discretion, present a version of INTEL Optimizers logo in a form and
manner, consistent with INTEL Optimizers Logo Usage Guidelines and
pursuant to the INTEL Optimizers Logo License in the form of Exhibit
D, attached hereto.
5.2 Trademarks; Certification or Endorsement. No rights or licenses are
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granted by this Agreement, expressly or by implication, for either
party to use any trademark, tradename, or any word or mark similar
thereto, of the other party in connection with any products
manufactured, used or sold by such party, or as part of either party's
corporate, firm or trade name, or for any other purpose. Neither party
shall make any statement to the effect or which implies that its
product is "certified" by the other or that its performance is
guaranteed by the other party without express written permission of
the other party.
6. AUDIT RIGHTS
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6.1 Audits. INTEL shall have the right to have an independent auditor
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inspect QI's relevant facilities and relevant records to the minimum
extent necessary to verify QI's compliance with the terms and
conditions of this Agreement. If such an inspection discloses QI is
not compliant with these terms, INTEL may exercise any or all rights
and remedies provided under this Agreement or by law, including but
not limited to the right to recover the cost of such audit. QI shall
keep full and accurate records and copies of all documents and other
material relating to this Agreement which are necessary for a ready
determination of QI's compliance with this Agreement and any
Statements of Work. INTEL may, but not more than once every twelve
(12) months, request an audit of QI's records by a nationally
recognized independent auditor acceptable to both Parties. The auditor
will disclose to INTEL only the information reasonably necessary for
INTEL to determine if QI has met its obligations hereunder and for
INTEL to enforce its rights. If any audit of XX's books and records
reveals that XX has failed to properly account hereunder, XX shall
reimburse INTEL for its reasonable expenses incurred in conducting the
audit.
7. CONFIDENTIALITY
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7.1 Source Code may include trade secrets of INTEL. QI will not disclose
or otherwise make any part of Source Code (whether or not modified by
QI) available, in any form, to any person other than QI's employees,
and their subcontractors, whose job performance requires such access.
XX agrees to instruct all such employees and subcontractors on
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these obligations with respect to use, copying, protection, and
confidentiality of Source Code.
7.2 The parties may from time to time disclose to each other Confidential
Information other than Source Code. Use and disclosure of such
information shall be governed by the terms of the Corporate Non-
Disclosure Agreement No. 85625 dated 18 Dec 1996 and incorporated into
this Agreement by this reference.
7.3 The parties hereto shall keep the terms of this Agreement confidential
and shall not now or hereafter divulge these terms to any third party
except: (a) with the prior written consent of the other party; (b) as
otherwise may be required by law or legal process, including to legal
and financial advisors in their capacity of advising a party in such
matters; (c) during the course of litigation, so long as the
disclosure of such terms and conditions are restricted in the same
manner as is the confidential information of other litigating parties;
or (d) in confidence to its legal counsel, accountants, banks and
financing sources and their advisors solely in connection with
complying with financial transactions; provided that, in (b) through
(d) above, (i) the disclosing party shall use all legitimate and legal
means available to minimize the disclosure to third parties, including
without limitation seeking a confidential treatment request or
protective order whenever appropriate or available; and (ii) the
disclosing party shall provide the other party with at least (ten) 10
days prior written notice of such disclosure.
8. WARRANTY DISCLAIMERS.
8.1 NO WARRANTY. INTEL PROVIDES SOFTWARE AND AND QI PROVIDES DERIVATIVE
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WORKS `AS IS,' WITHOUT WARRANTY OF ANY KIND. NEITHER PARTY NOR ITS
SUPPLIERS MAKE ANY WARRANTIES, EITHER EXPRESS OR IMPLIED, WITH RESPECT
TO SOFTWARE OR DERIVATIVE WORKS. EACH PARTY SPECIFICALLY DISCLAIMS THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, ANY WARRANTY AGAINST INFRINGEMENT OF ANY INTELLECTUAL
PROPERTY RIGHT OF ANY THIRD PARTY, AND ANY WARRANTIES ARISING BY
AFFIRMATION, PROMISE, DESCRIPTION OR SAMPLE. NEITHER PARTY IS
OBLIGATED TO PROVIDE ANY UPDATES, ENHANCEMENTS OR EXTENSIONS UNLESS
SPECIFICALLY SET FORTH IN THIS AGREEMENT OR A STATEMENT OF WORK.
SOFTWARE AND DERIVATIVE WORKS ARE NOT DESIGNED, INTENDED, OR
AUTHORIZED FOR USE IN ANY MEDICAL, LIFE SAVING OR LIFE SUSTAINING
SYSTEMS, OR FOR ANY OTHER APPLICATION IN WHICH THE FAILURE OF THE
SOFTWARE AND DERIVATIVE WORKS COULD CREATE A SITUATION WHERE PERSONAL
INJURY OR DEATH MAY OCCUR. NEITHER PARTY ASSUMES NOR AUTHORIZES ANY
PERSON TO ASSUME FOR IT ANY OTHER LIABILITY.
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9. LIMITED LIABILITY
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IN NO EVENT SHALL EITHER PARTY HAVE ANY LIABILITY TO THE OTHER PARTY,
END USERS OR ANY OTHER THIRD PARTY, FOR ANY LOST PROFITS OR COSTS OF
PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, OR FOR ANY INDIRECT,
SPECIAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT, UNDER
ANY CAUSE OF ACTION OR THEORY OF LIABILITY, AND WHETHER OR NOT SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE; PROVIDED,
HOWEVER, THAT THIS LIMITATION SHALL NOT APPLY TO ANY MATERIAL BREACH
BY QI OF A LICENSE GRANTED UNDER SECTION 3 HEREIN OR THE
CONFIDENTIALITY OBLIGATIONS SET FORTH IN SECTION 7 HEREIN. THESE
LIMITATIONS SHALL APPLY NOTWITHSTANDING THE FAILURE OF THE ESSENTIAL
PURPOSE OF ANY LIMITED REMEDY. NOTWITHSTANDING THE FOREGOING, INTEL'S
TOTAL LIABILITY FOR ALL CLAIMS UNDER THIS AGREEMENT, INCLUDING SECTION
10, SHALL NOT EXCEED [*]. THE PARTIES ACKNOWLEDGE THAT THE
LIMITATIONS ON POTENTIAL LIABILITIES SET FORTH HERE WERE ESSENTIAL
ELEMENTS IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
10. INTELLECTUAL PROPERTY INFRINGEMENT INDEMNIFICATION
--------------------------------------------------
10.1 Copyright Indemnity. INTEL will defend or settle any suit or proceeding
-------------------
brought against QI based solely upon a claim that the Software or part
thereof, alone and not in combination with any other product, item or
technology, constitutes a direct infringement of any United States
copyright, and pay all damages and costs finally awarded against QI
provided that QI: (i) promptly notifies Intel in writing of any such
suit or proceeding, (ii) provides Intel with sole control over the
defense or settlement of such suit or proceeding, and (iii) provides
reasonable information and assistance in the defense and/or settlement
of any such claim or action. Intel will not be responsible for any
costs, expenses or compromise incurred or made by QI without INTEL's
prior written consent.
10.2 Limited Remedies. If Intel determines at its sole discretion that QI's
----------------
distribution of the Software or any Derivative Work may be enjoined
because the Software or a part thereof constitutes or appears to
constitute a direct infringement of any third party intellectual
property right, Intel may, at its sole discretion and at its own
expense (i) procure for QI the right to continue distributing the
Software consistent with this Agreement, (ii) modify the Software so
that it becomes non-infringing, or (iii) terminate the license grant
with respect to the infringing part. Nothing in this Section 10.2
shall preclude QI from modifying the Software to avoid such
infringement.
10.3 Limitations. INTEL will not be liable under this Section 10 for any
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costs or damages, and QI will indemnify defend and hold INTEL harmless
from any expenses, damages, costs or losses resulting from any suit or
proceeding based upon a claim arising from (i) INTEL's compliance with
QI's designs, specifications or instructions (ii) modification of the
Software provided by INTEL by a party other than INTEL (iii) the
combination of Software or any part thereof furnished hereunder with
any other product, item or
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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technology (iv) the direct or contributory infringement of any process
patent using any Software or Derivative Work thereof hereunder, and
(v) any suit or proceeding based upon a claim arising from a
Derivative Work of the Software or Licensed Products, generally.
10.4 Disclaimer. THE FOREGOING STATES THE ENTIRE LIABILITY AND OBLIGATIONS
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AND EXCLUSIVE REMEDIES OF THE PARTIES WITH RESPECT TO ANY ALLEGED OR
ACTUAL INFRINGEMENT OF PATENTS, COPYRIGHTS, TRADE SECRETS, TRADEMARKS,
OR OTHER INTELLECTUAL PROPERTY RIGHTS BY THE SOFTWARE, DERIVATIVE
WORKS THEREOF OR BUG FIXES.
11. TERM, TERMINATION AND SURVIVAL.
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11.1 Term. This Agreement shall remain in effect for three (3) years unless
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earlier terminated as permitted herein.
11.2 Termination. This Agreement may be terminated by either party upon
-----------
notice, if the other party (i) breaches any material term or condition
of this Agreement and fails to remedy the breach within thirty (30)
days after being given notice thereof; (ii) becomes the subject of any
voluntary or involuntary proceeding under the U.S. Bankruptcy Code or
state insolvency proceeding and such proceeding is not terminated
within sixty (60) days of its commencement, (iii) ceases to be
actively engaged in business, or (iv) breach of any material term or
condition of the Equity Agreement.
11.3 Effect of Termination. Upon termination, all rights and licenses
---------------------
granted by Intel to QI hereunder shall immediately terminate; provided
that if this Agreement is terminated pursuant to Section 11.2(ii)
above QI shall have the right to distribute any inventory of Licensed
Products on hand upon the date of termination for a period of [*]
following termination subject to QI's continued compliance with the
terms of this Agreement. Additionally, immediately after termination of
this Agreement, QI shall discontinue all use, duplication and
distribution of the Software and Derivative Works thereof and shall, at
Intel's option, either return or destroy all copies except for copies
that have been distributed in compliance with this Agreement.
11.4 Survival. Notwithstanding the expiration or termination of this
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Agreement, the following provisions shall survive: 1 (Definitions); 4
(Ownership Rights, No Other Licenses Granted); 6 (Audit Rights); 7
(Confidentiality); 8 (Warranty Disclaimers); 9 (Limited Liability); 10
(Intellectual Property Infringement Indemnification); 11.4 (Survival);
and 12 (General).
12. GENERAL.
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12.1 Governing Law and Jurisdiction. Any claim arising under or relating
------------------------------
to this Agreement shall be governed by the internal substantive laws
of the State of Delaware or federal courts located in Delaware,
without regard to principles of conflict of laws. Each party hereby
agrees to jurisdiction and venue in the courts of the State of
Delaware for all disputes and litigation arising under or relating to
this Agreement. This provision is meant to comply with 6 Del. C.
Section 2708(a).
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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12.2 Export. QI shall not export any QI Product or system incorporating such
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QI Product without first obtaining any required license or other
approval from the U.S. Department of Commerce or any other agency or
department of the United States Government. In the event any QI
Product is exported from the United States or re-exported from a
foreign destination by QI or its distributer, QI shall ensure that the
distribution and export/re-export of the QI Product is in compliance
with all laws, regulations, orders, or other restrictions of the U.S.
Export Administration Regulations. QI agrees that neither it nor any
of its distributers will export/re-export any QI Product, directly or
indirectly, to any country for which the United States government or
any agency thereof requires an export license, other governmental
approval, or letter of assurance, without first obtaining such
license, approval or letter.
12.3 Assignment. QI may not assign its rights or delegate its obligations,
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or any part thereof under this Agreement without prior written consent
of Intel, whether in conjunction with a change of ownership, merger,
acquisition, sale or transfer of all, substantially all or any part of
its business or assets or otherwise, either voluntarily, by operation
of law or otherwise. Any attempt by QI to assign or delegate any
rights, duties or obligations set forth in this Agreement shall be
deemed a material breach of this Agreement and shall be null and void.
Except as provided above, the terms and conditions of this Agreement
shall bind and inure to each party's successors and assigns.
12.4 Independent Development. This Agreement does not prohibit INTEL or QI
-----------------------
from evaluating, acquiring from third parties not a party to this
Agreement, independently developing or marketing similar technologies
or products, or making and entering into similar arrangements with
other companies. Neither party is obligated by this Agreement to make
such products or technologies available to the other.
12.5 Residuals. Notwithstanding anything herein to the contrary, either
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party may use Residuals for any purpose, including use in the
development, manufacture, promotion, sale and maintenance of its
products and services; provided that this right to Residuals does not
represent a license under any patents, copyrights or mask work rights
of the disclosing party. The term "Residuals" means information of a
general nature, such as general knowledge, ideas, concepts, know-how,
professional skills, work experience or techniques (not specifics such
as exact implementations) that is retained in the unaided memories of
the receiving party's employees who have had access to the disclosing
party's information pursuant to the terms of this Agreement. An
employee's memory is unaided if the employee has not intentionally
memorized the information for the purpose of retaining and
subsequently using or disclosing it.
12.6 Relationship of Parties. The parties hereto are independent
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contractors. Neither party has any express or implied right or
authority to assume or create any obligations on behalf of the other
or to bind the other to any contract, agreement or undertaking with
any third party. Nothing in this Agreement shall be construed to
create a partnership, joint venture, employment or agency relationship
between QI and INTEL.
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12.7 Waiver. Failure by either party to enforce any term of this Agreement
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shall not be deemed a waiver of future enforcement of that or any
other term in this Agreement or any other agreement that may be in
place between the parties.
12.8 Notice. All notices required or permitted to be given hereunder shall
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be in writing, shall make reference to this Agreement, and shall be
delivered by hand, or dispatched by prepaid air courier or by
registered or certified airmail, postage prepaid, addressed as
follows:
Notices to Intel: Notices to QI:
----------------- --------------
INTEL Corporation
Attn: General Counsel
0000 Xxxxxxx Xxxxxxx Xxxx.
Santa Clara, CA 95052
With copy to:
Intel Corporation
Attn: Post Contract Management,
MS JF3-149
2111 N.E. 25th
Hillsboro, OR 97124
Such notices shall be deemed served when received by addressee or, if
delivery is not accomplished by reason of some fault of the addressee,
when tendered for delivery. Either party may give written notice of a
change of address and, after notice of such change has been received,
any notice or request shall thereafter be given to such party at such
changed address.
12.9 Dispute Resolution. All disputes arising directly under the express
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terms of this Agreement or the grounds for termination thereof shall
be resolved as follows:
The senior management of both parties shall meet to attempt to resolve
such disputes. If the senior management cannot resolve the disputes,
either party may make a written demand for formal dispute resolution
and specify therein the scope of the dispute. Within thirty days after
such written notification, the parties agree to meet for one day with
an impartial mediator and consider dispute resolution alternatives
other than litigation. If an alternative method of dispute resolution
is not agreed upon within thirty days after the one-day mediation,
either party may begin litigation proceedings.
12.10 Remedies. Subject to Section 10, which sets forth the parties exclusive
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remedies for intellectual property infringement, the remedies set
forth in this Agreement are in addition to those available law or in
equity. All rights and remedies, legal or equitable, whether conferred
hereunder, or by any other instrument or law will be cumulative and
may be exercised singularly or concurrently. Notwithstanding any other
provision of this Agreement, Intel shall have the right, without the
requirement of first seeking a remedy through dispute resolution, to
seek preliminary injunctive or other equitable relief in any
12
proper court in the event that Intel determines that XX's material
breach will cause Intel irreparable harm. In the event that equitable
relief is granted in the United States, XX will not object to foreign
courts granting provisions remedies enforcing such U.S. judgments.
12.11 Severability. The terms and conditions stated herein are declared to be
------------
severable. If any paragraph, provision, or clause in this Agreement
shall be found or be held to be invalid or unenforceable in any
jurisdiction in which this Agreement is being performed, the remainder
of this Agreement shall be valid and enforceable and the parties shall
use good faith to negotiate a substitute, valid and enforceable
provision which most nearly effects the parties' intent in entering
into this Agreement.
12.12 Entire Agreement. The terms and conditions of this Agreement, including
----------------
its exhibits, and contemporaneous agreements identified on the
signature page of this Agreement constitute the entire agreement
between the parties with respect to the subject matter hereof, and
merges and supersedes all prior and contemporaneous agreements,
understandings, negotiations and discussions. Neither of the parties
shall be bound by any conditions, definitions, warranties,
understandings, or representations with respect to the subject matter
hereof other than as expressly provided herein. The section headings
contained in this Agreement are for reference purposes only and shall
not affect in any way the meaning or interpretation of this Agreement.
No oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement. No amendments
or modifications shall be effective unless in writing signed by
authorized representatives of both parties. These terms and conditions
will prevail notwithstanding any different, conflicting or additional
terms and conditions which may appear on any purchase order,
acknowledgment or other writing not expressly incorporated into this
Agreement.
12.13 Counterparts. This Agreement may be executed in two (2) or more
------------
counterparts, all of which, taken together, shall be regarded as one
and the same instrument.
13
EXHIBIT B
---------
DESCRIPTION OF SOFTWARE AND DOCUMENTATION
-----------------------------------------
Description
-----------
Intel's Digital Content Receiver Software that enables
(i) [*] processing (as a [*]) and
(ii) [*] system information [*] (as a [*])
Software
--------
The following components are included in the Software licensed to QI hereunder:
K2 "driver" portion
-------------------
[*]
K2 upper-level portion
----------------------
[*]
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
14
EXHIBIT C
---------
Minimum Mandatory License Terms for Object Code Distribution
To be provided by Intel
15
EXHIBIT D
INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT
THIS INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT ("Agreement") is made by
Intel Corporation having offices at 000 XX 00xx Xxxxxx, Xxxxxxxxx, XX 00000(
"Intel") and Quadrant International, having offices at Xxx Xxxxx Xxxxxx Xxxxxxx,
Xxxxxxx, XX 00000 "Licensee").
WHEREAS, Intel and Licensee have entered into that certain Software License
Agreement dated ____________ ("Software License") wherein Intel licensed to
Licensee certain Evaluator Took Kit software (as defined in the Software
License, the "Software") for distribution incorporated into Licensee's products
(as defined in the Software License and further clarified below, the "Licensed
Products").
WHEREAS, the Software License provides that Licensee shall, at Intel's request,
use the Intel Optimizer Logo as set forth in this Agreement in conjunction with
distribution of the Software with Licensed Products;
WHEREAS, Intel has a specific Intel Optimizer Logo (as defined below, the
"Licensed Logo") that is associated with specific optimized code (as defined
below, the "Optimized Code") that is part of the Software; and
WHEREAS, Intel has now requested Licensee to use the Licensed Logo in
conjunction with the distribution of the Software Optimized Code with Licensed
Products and Licensee has agreed to do the same;
NOW THEREFORE, in consideration of the mutual covenants and promises contained
in this Agreement, and for other good and valuable consideration receipt of
which is hereby acknowledged, the parties agree as follows:
1. Definitions.
In addition to the definitions set forth in the Recitals, the following terms
have the following meanings:
1.1 "Licensed Logo" means the Logo set forth in Exhibit A
hereto, said Logo including the INTEL trademark, and the
OPTIMIZER designation.
1.2 "Licensed Name" means the name "Intel(R) Optimizer [ ] or
such other name that Intel may designate at its
discretion."
1.3 "Licensed Marks" means the Licensed Logo and the Licensed
Name.
1.4 "Intel Marks" means the Licensed Marks, the INTEL
trademark and trade name, and any other marks belonging
to Intel.
1.5 "Optimized Code" means those specific Software files
identified on attached Exhibit B, as delivered to
Licensee under the Software License. The Optimized Code
is the software that is specifically associated with the
Licensed Logo under this Agreement.
16
1.6 "Licensed Products" shall have the meaning set forth in
the Software Agreement except as specifically set forth
in Exhibit D. The purpose of Exhibit D is to limit use of
the Licensed Mark to Licensed Products that are
consistent with the Optimizer designation contained in
the Licensed Logo.
2. License Grant. Subject to Licensee's full compliance with the
terms of this Agreement, Intel hereby grants to Licensee a non-
exclusive, non-transferable, royalty-free, revocable license
to use the Licensed Marks in connection with Licensed Products
solely to indicate that the Licensed Products contain the
Software Optimized Code.
3. Product Quality.
3.1 The Licensed Marks shall be used only on and in
connection with Licensed Products that contain the
Software Optimized Code and that meet the quality and
performance standards customary in the software industry.
3.2 Licensee shall make no alterations or modifications to
the Software Optimized Code with which the Licensed Marks
are used except as necessary to integrate the Optimized
Code into Licensed Products; provided that such
modification does not affect the performance and
functionality of the Optimized Code. For the purpose of
this Agreement, Licensee agrees that it will not change,
modify, or alter the Software Optimized Code in any other
way. If Licensee makes any other modification to the
Optimized Code, this Agreement, including but not limited
to Licensee's right to use the Licensed Marks, shall
terminate immediately with respect to the modified
Optimized Code.
3.3 Licensee shall comply with all applicable laws and
regulations in the manufacture, assembly, marketing, and
sale of Licensed Products with which the Licensed Marks
are used.
4. Proper Usage.
4.1 Licensee shall comply with the usage and other
requirements set forth in Exhibit A hereto.
4.2 Licensee shall comply with any additional usage
guidelines for the Licensed Marks provided by Intel from
time to time. Licensee shall not alter the Licensed Logo
in any way, and shall use the camera-ready or electronic
artwork of the Licensed Logo provided by Intel.
4.3 Licensee shall display Licensed Marks only in a positive
manner.
5. Right to Inspect.
5.1 Intel shall have the right at its discretion to review,
inspect, and test any Licensed Product with which the
Licensed Marks are used, as well as associated users
manuals, collateral, advertising, and promotional
materials, including web sites, to determine compliance
with the terms of
17
this Agreement. Upon reasonable notice, Licensee shall
cooperate fully in providing Intel access to such
Licensed Products and materials.
5.2 Licensee will deliver to Intel as set forth in Exhibit C
two (2) copies of each Licensed Product, including source
and object code for the Optimized Code as contained in
such Licensed Product, at least forty five (45) days
prior to the commercial release of such Licensed Product
for the purpose of Intel verifying at its discretion that
the Optimized Code has not been modified inconsistent
with the provisions of this Agreement. As used in this
Section 5.2, "Licensed Product" shall include all major,
minor and maintenance releases of a Licensed Product,
each of which shall be separately submitted to Intel as
set forth in this Section 5.2 unless otherwise agreed by
Intel in writing. Licensee may submit pre-release
versions of Licensed Product in order to meet the
requirements of this Section 5.2 if the Optimized Code is
not modified in the final release. Intel will use
commercially reasonable efforts to review the Optimized
Code as included in the Licensed Product and notify
Licensee whether the Licensed Product can carry the Intel
Marks as permitted under this Agreement. If Intel fails
to give notice within fifteen (15) days of its receipt of
the Licensed Product that is subject to review, Licensee
may use the Licensed Marks with such Licensed Product
unless and until such right is terminated as permitted by
this Agreement.
6. Protection of Interest.
6.1 Acknowledgment of Rights. Licensee acknowledges Intel's
------------------------
exclusive rights to the Intel Marks and all goodwill
associated therewith, and acknowledges that any and all
use of the Intel Marks by Licensee inures to the sole
benefit of Intel. Licensee shall not challenge Intel's
exclusive rights in and to the Intel Marks, and shall not
do anything that might harm the reputation or goodwill of
Intel or the Intel Marks. Licensee shall take no action
inconsistent with Intel's rights in the Intel Marks. If
at any time Licensee acquires any rights in, or
registration(s) or application(s) for the Intel Marks by
operation of law or otherwise, Licensee will immediately
and at no expense to Intel assign such rights,
registrations, and/or applications to Intel, along with
any and all associated goodwill.
6.2 Enforcement. In the event that Licensee becomes aware of
-----------
any unauthorized use of the Intel Marks by a third party,
Licensee shall promptly notify Intel in writing and shall
cooperate fully, at Intel's expense, in any enforcement
of Intel's rights against such third party. The right to
enforce Intel's rights in the Intel Marks rests entirely
with Intel and shall be exercised at Intel's sole
discretion; Licensee shall not commence any action or
claim to enforce Intel's rights in the Intel Marks.
7. DISCLAIMER BY INTEL. INTEL MAKES NO REPRESENTATIONS OR
WARRANTIES OF ANY KIND RESPECTING THE INTEL MARKS, INCLUDING
THE VALIDITY OF INTEL'S RIGHTS IN THE INTEL MARKS IN ANY
COUNTRY, AND HEREBY EXPRESSLY DISCLAIMS ANY AND
18
ALL WARRANTIES THAT MIGHT OTHERWISE BE IMPLIED BY APPLICABLE
LAW.
8. Relationship Between the Parties. No agency, partnership,
joint venture, franchise, or employment relationship is
created between Intel and Licensee as a result of this
Agreement. Neither party is authorized to create any
obligation, express or implied, on behalf of the other party.
9. Waiver: The failure of either party to enforce at any time
the provisions of this Agreement shall in no way be construed
to be a present or future waiver of such provisions, nor in
any way affect the ability of any party to enforce each and
every provision thereafter.
10. Indemnity: Licensee agrees to indemnify, defend, and hold
Intel harmless from all loss, cost liability and expense
incurred by Intel and any of its subsidiaries or affiliated
entities that arise out of a claim concerning Licensee's
manufacturing, use or sale of Licensed Products incorporating
the Software except as specifically set forth in the Software
License and except where such claims are based solely on
Licensee's permitted use of the Licensed Marks. Intel agrees
to provide Licensee with prompt notice of any such claims and
shall provide Licensee with reasonable assistance (at
Licensee's expense) in defense or settlement of such claims as
set forth in the Software License.
11. LIMITATION OF LIABILITY: NEITHER PARTY SHALL BE LIABLE TO THE
OTHER FOR SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES, EVEN
IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
12. Term and Termination:
12.1 Term: This Agreement shall remain in effect until its
expiration or termination as provided herein
12.2 Expiration: This Agreement will expire in the event
that Licensee ceases to do business for any reason or in
the event the Software License is terminated for any
reason.
12.3 Termination: Either party may terminate this Agreement
with or without cause upon thirty (30) days advance
written notice. Either party may terminate this
Agreement for breach by the other party upon written
notice. Opportunity to cure the breach may be given, but
is not required under this Agreement.
12.4 Effect of Expiration or Termination: Upon any
termination or expiration of this Agreement, Licensee
shall immediately cease use of the Licensed Marks and
Intel Marks, even if Licensee continues to rightfully
distribute the Software as permitted in the Software
License.
12.5 Continuing Obligations: Obligations of the parties
under the provision of paragraphs 1, 5, 6, 7, 8, 10, 11,
12.4, 13, 14, 16 shall remain in force notwithstanding
the termination of expiration of this Agreement.
19
13. Assignment: This Agreement shall be binding upon and inure to
the benefit of the successor and permitted assignees of the
parties hereto. The rights granted to Licensee and Licensee's
obligations hereunder are personal . Licensee shall not assign
this Agreement or any right or obligation hereunder, whether
in conjunction with a change in ownership, merger,
acquisition, the sale or transfer of all, or substantially all
or any part of Licensee' business or assets or otherwise,
either voluntarily, by operation of law, or otherwise, without
the prior written consent of Intel, which Intel may give or
withhold at its sole discretion. Any such purported assignment
or transfer shall be deemed a material breach of this
Agreement and shall be null and void.
14. Choice of Law and Jurisdiction: The validity, construction
and performance of this Agreement shall be governed by the
laws of the State of Delaware and the United States of
America, without reference to conflict of laws principles. Any
dispute arising out of this Agreement shall be brought in ,
and the parties consent to personal and exclusive jurisdiction
of and venue in, the state and federal courts within Santa
Xxxxx County, California.
15. Equitable Relief: Licensee agrees that damages alone would be
insufficient to compensate Intel for a breach of this
Agreement, acknowledges that irreparable harm would result
from a breach of this Agreement, and consents to the entering
of an order for injunctive relief to prevent a breach or
further breach or any further action which could cause some
loss or dilution of Intel's goodwill, reputation, or rights in
any Intel Marks, and the entering of an order for specific
performance to compel performance of any obligations under
this Agreement.
16. Severability: If any provision of this Agreement is
determined by a court of competent jurisdiction to be invalid,
illegal or unenforceable, such determination shall not affect
the validity of the remaining provisions unless Intel
determines at its discretion that the court's determination
causes this Agreement to fail in any of its essential
purposes.
17. Entire Agreement: This Agreement, together with the Software
License, constitutes the entire agreement between the parties
concerning the subject matter hereof and supersedes all
proposals, oral or written, all negotiations, conversation,
and/or discussions between the parties relating to this
Agreement and all past courses of dealing or industry customs.
This Agreement may not be modified except in a wiring signed
by authorized representative of both parties.
18. Notices. Notices shall be given as set forth in the Software
Agreement. Licensed Products shall be delivered to Intel for
review as set forth in Exhibit C.
20
IN WITNESS WHEREOF, the parties by their duty authorized representatives, hereby
execute this Amendment to the Agreement.
INTEL CORPORATION LICENSEE:____________________________
___________________________________ _____________________________________
Signature Signature
___________________________________ _____________________________________
Printed Name Printed Name
___________________________________ _____________________________________
Title Title
___________________________________ _____________________________________
Date Date
21
EXHIBIT A
---------
(TO INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT)
A. Optimizer Logo Usage Guidelines for the Licensed Marks:
1. Licenses shall comply with the usage guidelines provided by Intel
from time to time and shall use the Licensed Marks only to promote,
represent, or otherwise refer to the existence of or capabilities
and/or functions of the Software in Licensed Products. Licensee shall
use the Licensed Marks in all Materials. As used herein, "Materials"
includes but is not limited to, splash screens, software dialogue
boxes, marketing, advertising (including broadcast), announcements,
packaging, manuals, instruction materials, documentation,
presentations, brochures, catalogs, point of purchase displays, web
sites, and any other similar collateral for Licensed Products.
2. Inspection of Materials: Licensee agrees to allow Intel to inspect
the first instance of the use of the Licensed Marks and to spot check
the use of the Licensed Marks in Materials which refer to either the
License Marks or any Intel Marks to ensure compliance with the terms
of this Agreement. Intel shall promptly review such Material upon it
receipt by Intel. Licensee agrees to make any modification to such
Material that may be requested by Intel relating either to the
Licensed Marks or to any Intel Marks prior to Licensee's release of
such Materials to the public. Such reviews and modification request
shall not be construed to make Intel responsible for the contents of
the Material and Licensee remains solely responsible for such
content.
B. Licensed Logo:
[INSERT LOGO HERE]
C. Attribution Requirements for Intel Marks:
Licensee shall attribute ownership of the Intel Marks to Intel by
using the appropriate trademark symbol designated by Intel (either
(TM) or (R)) and by using the appropriate trademark legend, as
follows:
For the Licensed Logo: "The Intel Optimizer Logo is a trademark of
---------------------
Intel Corporation, used under license."
For the INTEL Mark Alone: "Intel is a registered trademark of Intel
------------------------
Corporation."
1) Licensee shall not use the text attribution for any of the Intel
Marks on or in connection with any other products, goods or
services other than as specifically granted herein. Licensee
shall correct any deficiencies in Licensee's use of the text
attribution, and cease and desist from further publication of
distribution of the offending materials.
22
2) Licensee shall not use the following marks in any way or in any
activities related to Licensee's products:
a) Intel dropped "e" logo, other than as part of the License Mark
b) Any alteration of an existing Intel logo or Mark
c) Intel Technology Inside or other verbiage not referring to
Intel product by definition.
d) Intel name as a part of Licensee's logo treatment.
3) It is expressly understood that the text attribution inspection
rights held by Intel are for purposes of advertising the end user
of the Intel products contained in Licensed Products, and do not
in any way indicate Intel's approval, endorsement, or support of
the Licensed Products. Licensee expressly agrees that Licensee
shall not use the text attribution or the Intel name in any way
so as to indicate Intel's approval, endorsement or support of the
Licensee's products.
D. Material Element: The parties expressly acknowledge that the provisions of
this Exhibit constitute a material term of this Agreement.
23
EXHIBIT B
(TO INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT)
OPTIMIZED CODE
24
EXHIBIT C
(TO INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT)
INTEL CONTACT PROCEDURE
25
EXHIBIT D
(TO INTEL OPTIMIZER LOGO TRADEMARK LICENSE AGREEMENT)
LICENSED PRODUCTS
As used in this Agreement, the term "Licensed Products" is limited to products
of the following types:
26
