TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
This Technology Development and License Agreement (the "Agreement")
entered into as of the 5th day of May, 1997 (the "Effective Date"), by and
between NETSPEAK CORPORATION, a Florida corporation ("NetSpeak") with its
principal place of business at 000 Xxxxx Xxxxx Xxxx, Xxxxx 000, Xxxx Xxxxx,
Xxxxxxx 00000 and ACT NETWORKS, INC., a Delaware corporation ("ACT"), with its
principal place of business at 000 Xxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxxxx 00000.
RECITALS:
A. NetSpeak has designed and is the owner of certain software modules
for use in sophisticated communications solutions relating to the integration of
Internet protocol based communications systems and public switched telephone
networks.
B. ACT is developing a hardware and software platform for frame relay
systems for wide area networks integrating voice, data and facsimile
communications utilizing telecommunications systems.
C. The parties desire to work in cooperation to adapt the NetSpeak
software to be compatible with the ACT hardware and software platform for the
purpose of marketing customer solutions.
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration the parties hereto agree as follows:
1. DEFINITIONS. All capitalized terms contained within this agreement
shall have the meaning set forth in this Section 1 unless otherwise defined in
the text of this agreement.
1.1 "ACT" shall mean ACT Networks, Inc. and any
Affiliates thereof.
1.2 "ACT Documentation" shall mean the ACT user manuals,
programmers' guides, system guides and/or related
publications which are supplied to NetSpeak by ACT in
accordance with the sale of the ACT Product
hereunder.
1.3 "ACT Marks" shall mean the trademarks, logos and
trade names associated with the ACT Product whether
or not registered.
1.4 "ACT Product" shall mean the SDM-Rx as further
described in Schedule B.
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1.5 "ACT Software" shall mean the computer software
programs included in the ACT Product, in Object Code
form, as well as any enhancements, new releases,
updates or modifications thereto, in Object Code
form, which ACT provides to NetSpeak under this
Agreement.
1.6 "Affiliates" shall mean any entity that controls, is
controlled by or is under common control with a
relevant party hereto, with "control" meaning
ownership of more than fifty percent (50%) of the
voting stock of the entity, or, in the case of a
non-corporate entity, an equivalent interest.
1.7 "Agreement Term" shall mean five (5) years from the
Effective Date of the Agreement.
1.8 "Effective Date" shall mean the date upon which both
parties have entered this Agreement as set forth
above.
1.9 "Integrated Product" shall mean the product
integrating the ACT Product and a NetSpeak Product,
as described in Section 4.
1.10 "Intellectual Property" shall mean any trade secrets,
patents, copyrights, trademarks, know-how, moral
rights, and/or other intellectual property and
proprietary rights of any type under the laws of any
governmental authority in the world, domestic or
foreign, including, without limitation, all
applications and registrations relating to any of the
foregoing.
1.11 "NetSpeak" shall mean NetSpeak Corporation and any
Affiliates thereof.
1.12 "NetSpeak Documentation" shall mean the NetSpeak user
manuals, programmers' guides, system guides and/or
related publications which are supplied to ACT by
NetSpeak in accordance with the licenses granted
hereunder.
1.13 "NetSpeak Marks" shall mean the trademark
WebPhone/Trademark/ and other NetSpeak marks to be
agreed to by the Parties.
1.14 "NetSpeak Product(s)" shall mean NetSpeak Software.
1.15 "NetSpeak Software" shall mean the computer software
programs listed on Schedule A of this Agreement, in
Object Code form, any enhancement, new releases,
updates or modifications thereto, in Object Code
form, provided by NetSpeak to ACT, as well as new
software programs developed by NetSpeak for use in
conjunction with the ACT Platform.
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1.16 "Object Code" shall mean a rendition or compilation
of a software program primarily readable in binary or
machine language translated from Source Code by means
of a complier, assembler and/or interpreter.
1.17 "Proprietary Information" shall mean information as
defined in Section 13.
1.18 "Source Code" shall mean a written rendition of a
software program readable and comprehensible by a
skilled computer programmer.
2. LICENSING AND DISTRIBUTION RIGHTS GRANTED BY NETSPEAK.
For the duration of the term of this Agreement, and subject to
all the terms and conditions herein, including payment of the applicable
royalties:
2.1 NetSpeak hereby grants to ACT a worldwide,
non-transferable (except as provided in Section 27), and non-exclusive license
to reproduce, bundle and distribute the NetSpeak Software and NetSpeak
Documentation with the ACT Platform for distribution and licensing by ACT,
through ACT's distribution channels.
2.2 NetSpeak hereby grants to ACT a worldwide,
non-transferable, and non-exclusive license to use the NetSpeak Software and
NetSpeak Documentation for internet enablement of ACT customer web sites.
2.3 NetSpeak hereby grants to ACT a worldwide, non-exclusive
license to reproduce, distribute and sublicense through multiple tiers of
distribution to end-users, the NetSpeak Software and NetSpeak Documentation,
through ACT's distribution channels.
2.4 Any use, distribution or sublicensing of NetSpeak Products
by ACT as allowable under Sections 2.1-2.3 of this Agreement shall be under
terms similar to the then current terms and conditions of a NetSpeak Program
License Agreement, a sample of which is described in Schedule D hereto.
3. LICENSING AND DISTRIBUTION RIGHTS GRANTED BY ACT.
For the duration of the term of this Agreement, and subject to
the terms and conditions herein:
3.1 Subject to all of the terms and conditions of this
Agreement, ACT grants to NetSpeak, and NetSpeak accepts, a worldwide,
non-exclusive, non-transferable, non-sublicensable right and license to
distribute and sublicense through multiple tiers of distribution to end-users
the ACT Product. The parties will agree in the future whether the Integrated
Product will be distributed under ACT's label or under NetSpeak's label. If
sales are to occur under NetSpeak's label, NetSpeak shall supply, at its expense
and reasonably in advance of orders, the necessary artwork, labels and color
information for the Integrated Product. Any software and/or firmware contained
in the ACT Product is licensed for distribution only and is
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not to be sold. Any distribution or sublicensing of the ACT Product by NetSpeak
as allowable under this Section 3.1 shall be under terms similar to the then
current terms and conditions of an ACT Networks End-User License Agreement, a
sample of which is described in Schedule E hereto. NetSpeak is not entitled to
receive any source code or source documentation with respect to any such
software or firmware.
4. PRODUCT DEVELOPMENT & INTEGRATION. The parties further have agreed
to assist each other in the integration of their respective products. To
accomplish these broad goals, the parties have agreed to the following
development and integration objectives.
4.1 The parties, utilizing the Co-Development Committee will
jointly define a design specification to ensure compatibility between the
NetSpeak Products and the ACT Product. Following review and approval by each
party of the design specification, each party will use commercially reasonable
efforts to modify its respective product(s) in order to conform with the design
specification. Any and all modifications made to the NetSpeak Products in order
to conform with the design specification will be owned by NetSpeak and will be
considered NetSpeak's Intellectual Property. Similarly, any and all
modifications to the ACT Product so that the ACT Product conforms with the
design specification will be owned by ACT and will be considered ACT
Intellectual Property. NetSpeak hereby covenants to incur a minimum of Eighty
Thousand Dollars ($80,000) in expenses in pursuing the development and
integration of the NetSpeak Products hereunder.
4.2 CALL CONTROL. ACT shall be responsible for adding the
WebPhone Application Programming Interface (WAPI) compatible call control to the
ACT Platform. ACT shall also be responsible for adding the agreed upon
compression/decompression code (codecs) into the ACT Product and implementing
codec negotiation capability into the ACT Product. Both parties shall use
commercially reasonable efforts to integrate the WAPI into the ACT Product, and
utilizing the Co-Development Committee described herein for guidance, to devote
such resources as the parties shall determine jointly are necessary to
accomplish this integration.
4.3 SESSION MANAGEMENT. The parties, utilizing the
Co-Development Committee for such guidance as is required shall jointly define
the implementation strategy for session management negotiation, including,
without limitation, determination of the amount of resources that each party
shall devote to such implementation.
4.4 SNMP MIB EXTENSIONS. The parties shall jointly identify
and use commercially reasonable efforts to implement the SNMP MIB extensions,
utilizing the Co-Development Committee assistance for such tasks.
4.5 DELIVERY OF MASTER COPIES OF NETSPEAK PRODUCTS. NetSpeak
shall deliver to ACT, at NetSpeak's cost and expense, a "gold master" copy of
each NetSpeak Product to be used, sold and/or distributed by ACT, stored upon
such machine-readable storage media as the parties may hereafter agree in
writing from which duplicates of such NetSpeak Product and the NetSpeak
Documentation may be produced once testing is complete and the Integrated
Product is ready for market release.
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4.6 NO RIGHT TO REPRODUCE, MODIFY OR REVERSE ENGINEER. Nothing
in this Agreement shall be construed as giving either party any right to, and
each party agrees that it shall not, and shall not permit or assist any other
person or entity to alter, modify, adapt, port or create a derivative works, as
that term is defined in the U.S. copyright laws, of any product of either other
party except as may be expressly and clearly permitted in this Agreement. Each
party further agrees that it shall not, and shall not permit or assist any other
party to, disassemble, decompile or reverse engineer all or any part of any
product of the other party. Without limiting the materiality of any other term
of this Agreement, the failure of either party to comply with the provisions of
this Section 4.6 shall be considered a material breach of this Agreement.
5. CUSTOM ENGINEERING, ENHANCEMENTS, UPGRADES, AND MODIFICATIONS.
5.1 Enhanced feature functionality and upgrades which may be
developed by NetSpeak in the future for any NetSpeak Product shall be offered to
ACT for such additional royalties and payments, and may be accepted or rejected
by ACT in its sole discretion.
5.2 Enhanced feature functionality and upgrades which may be
developed by ACT in the future for the ACT Product shall be offered to NetSpeak
for such additional royalties and payments, and may be accepted or rejected by
NetSpeak in its sole discretion.
5.3 Either party may, from time to time, request the other to
provide non-recurring engineering ("NRE") services to custom engineer, modify,
and create enhancements to the products subject to this Agreement. Each party
agrees to undertake such work provided it has available resources to be devoted
to the work requested and after conducting its own review. A party shall
complete its review of the work requested within ten (10) business days of its
receipt of a written request from the other for such services, and shall deliver
a written response indicating that it either: (i) accepts the request for
services; or (ii) rejects the request due to lack of resources, which may
include time and/or manpower. Ownership of any work product resulting from such
NRE services shall belong to the party paying for such work, subject to any
prior Intellectual Property rights of the other party in the underlying product.
The party owning such rights shall provide the developing party with a license
to such rights, subject to royalties and terms to be agreed to by the parties.
6. PRODUCT MANAGERS. At all times during the Agreement Term, each party
shall identify to the other party a "Product Manager" who shall be primarily
dedicated to that party's product and who shall be reasonably satisfactory to
the other party. The Product Manager shall be a designated individual employee
of each party who shall be available to either NetSpeak or ACT (as applicable)
on a reasonable basis during such party's regular business hours. Each Product
Manager shall maintain continuous, but not necessarily daily, contact with such
personnel of either ACT or NetSpeak (as applicable) may from time to time
designate, shall be fully familiar with such party's methods of operation in
general and the product in particular, shall coordinate the performance by its
company of such company's obligations under this Agreement, and shall promptly
respond to all inquiries from the other party, both oral and written. Xxxx
Xxxxxxx is hereby initially appointed by ACT and is deemed reasonably
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satisfactory by NetSpeak, as the ACT Product Manager. Xxxxx Xxxxx is hereby
initially appointed by NetSpeak and is deemed reasonably satisfactory by ACT, as
the NetSpeak Product Manager. Each party shall be entitled to change its
designated product manager upon provision of written notice of such change to
the other party. Neither party's Product Manager is authorized to amend, alter
or extend this Agreement in any manner.
7. CO-DEVELOPMENT COMMITTEE. A Co-Development Committee shall be
established, comprised of each party's Product Manager described above and a
Development Manager to be appointed by each party. Xxxx XxXxxxx is hereby
appointed by ACT, and is deemed reasonably satisfactory by NetSpeak, as the ACT
Development Manager. Xxxxx Xxxxx is hereby appointed by NetSpeak, and is deemed
reasonably satisfactory by ACT, as the NetSpeak Development Manager. The
Co-Development Committee shall be responsible for the resolution of all
technical problems arising during (i) the modification and interpretation by
either party of any product enhancement, modification, upgrade or bug fix to any
existing product of the other party and (ii) customer support and shall be
responsible for identifying the countries in which homologation is to be
obtained and for determining the timing for seeking homologation in each
country. If the Co-Development Committee is unable to reach a decision with
respect to any issue within ten (10) days, the Product Managers shall resolve
the issue. In the event the Product Managers cannot resolve any issue within
five (5) days, the Product Managers shall submit the problem to the chief
executive officers of the parties for resolution. If the parties are unable to
resolve the dispute within five (5) days thereafter, the dispute shall be
resolved by binding arbitration. Arbitration shall be conducted under the
then-current Commercial Arbitration Rules of the American Arbitration
Association ("AAA") in Denver, Colorado. One arbitrator shall be chosen within
thirty (30) days by the AAA from a panel of arbitrators knowledgeable and
experienced in network computing, development of computer software and/or
hardware and commercial transactions. No discovery by the parties will be
conducted. Each party shall have no more than four (4) hours to present its
case. The arbitrator shall decide this dispute within five (5) days of the
conclusion of the parties' presentation. The written determination of the
arbitrator shall be final and shall not be subject to judicial review; provided,
however, that any award or determination rendered by the arbitrator(s) may be
entered in a court of competent jurisdiction. The prevailing party shall be
entitled to recover the costs of arbitration and attorneys' fees, which shall be
made part of the arbitrator's award. The arbitrator shall determine the
"prevailing party" for this purpose.
8. CONFERENCES. The parties agree to hold regularly scheduled meetings
on, at a minimum, a monthly basis. Each party will bear its own costs associated
with such meetings. Interim meetings will be coordinated on a AD HOC basis as
needed by telephone conferencing and based on need.
9. JOINT TRAINING PROGRAMS. NetSpeak and ACT agree to participate in
joint sales training and technical support training programs to be jointly
developed by the parties. Each party shall bear its own costs and expenses in
connection with such training programs. ACT and NetSpeak recognize that training
and installation must of necessity be a mutual and joint effort, and that such
installation and training will require the support and cooperation of both
parties. ACT may request additional training or general consulting services from
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NetSpeak, which training and services shall be provided in accordance with
NetSpeak's normal and customary rates.
10. COOPERATION. Both NetSpeak and ACT acknowledge and agree that
successful porting and integration of the ACT Product with the NetSpeak Software
shall require their full and mutual good faith cooperation. As such, the parties
agree to use commercially reasonable efforts to provide information and access
to personnel to achieve such porting and integration.
11. TECHNICAL SUPPORT. The parties agree to provide technical support
to one another in meeting the objectives of this Agreement. The parties further
agree to provide first and second level support to each other and their
respective customers, during the relevant warranty periods. The parties
acknowledge that the typical customer of the Integrated Product will want to
deal with only one vendor. As such, it will be the obligation of the party
selling the ACT Product to the customer to provide front line support. However,
it will be essential for the other party to provide effective, prompt back up
support.
12. ROYALTIES, ORDERS AND PAYMENT.
12.1 The royalties ("Royalties") and prices hereunder shall be
as set forth in Section 12.9 and Schedule C. Each party shall, from time to
time, provide the other with price lists for such party's products. ACT is
hereby granted a credit in the amount of Eighty Thousand Dollars ($80,000) to be
applied to Royalties accruing hereunder and with respect to any royalties or
other amounts payable by ACT to NetSpeak in connection with the purchase or
license of products under any other agreement between the parties.
12.2 Each party shall pay to the other a fixed rate of $120.00
per hour for custom engineering and enhancements as provided in Section 5.3
herein. Each party shall pay to the other such other party's then current
standard charges or customer service fees, as applicable, for any requested
customer support or out-of-warranty repair services.
12.3 ACCRUAL. Royalties payable under this Agreement shall be
deemed to accrue upon the shipment of such product in response to customer
orders, provided, however, that ACT shall have no obligation to pay Royalties to
NetSpeak for any sale or shipment of NetSpeak Products to NetSpeak. Royalty
payments are due and payable within thirty (30) days after the end of each
calendar quarter of the Agreement Term. Royalties received later than the due
date may, at NetSpeak's option, bear interest at a rate of eighteen percent
(18.00%) per annum.
12.4 ADJUSTMENTS. Without limiting any other term of this
Agreement, neither party will be obligated to pay Royalties on (a) units shipped
to end users, re-sellers, value-added re-sellers or dealers in replacement of
defective units in compliance with unit warranties; (b) units used for
demonstration or marketing purposes; (c) units shipped for service and support
purposes; or (d) units actually returned by customers.
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12.5 QUARTERLY STATEMENTS. In order to substantiate any
Royalty payment due under this Agreement, each party shall deliver to the other,
within thirty (30) days after the end of each calendar quarter of the Agreement
Term, a statement detailing the sales (including returns) and shipments of units
during the immediately preceding calendar quarter and cumulative for the term to
date. Such statement shall set out all figures by product and by state and
country. Any such Royalties that are due shall accompany the statement (if paid
by cashier's check) or shall have been previously wired to the recipient's
account.
12.6 AUDITS. Each party agrees to keep and preserve, during
the term of this Agreement, and for at least two (2) years after the expiration
of its term or any extension thereof, accurate records of all transactions
relating to this Agreement. In particular, each party shall ensure that its
records adequately identify the product so that they can be distinguished from
other goods not licensed hereunder. Each party or its designated representative
shall have the right, at its expense, at any time during the other party's
normal business hours and upon fifteen (15) business days prior written notice
to that party, to examine and make extracts of all such records, including all
build and ship records, invoices and other records that relate to the
manufacture, shipment and sale of product. If such an audit detects a shortfall
in Royalties paid, the audited party shall pay the unpaid Royalties together
with interest at a rate of eighteen percent (18.00%) per annum from the date due
on any unpaid amount. In addition, if in an audit of records it is determined
that there is a shortfall of ten percent (10.00%) or more in the amount of
Royalties due (exclusive of interest) as reported for the period which is the
subject of such audit, the audited party shall, upon request of the auditing
party, reimburse the auditing party for full out-of-pocket costs of the audit,
including without limitation, the costs of the auditing party's own employee
auditors, for actual working time and for travel time during normal working
hours.
12.7 PAYMENT FORMS. All payments due hereunder shall be made
by check or wire transfer. All payments shall be made in United States Dollars,
free of any withholding tax and of any currency control or other restriction.
12.8 TAXES. Each party shall be solely responsible for any
applicable sales, use, value added or other tax, tariff, duty or assessment
levied or imposed arising out of or related to any of the transactions
contemplated under this Agreement, other than any tax based on the parties'
income.
12.9 MOST FAVORED CUSTOMER RATES. NetSpeak agrees that the
royalty rates charged for any of its products under this Agreement shall be no
greater than that charged for the same product from its most favored customers.
12.10 FUTURE PRODUCTS. The parties intend to develop and
commercialize a new gateway server that will replace the Integrated Product. The
parties are currently working together to identify and develop the optimal
platform for this gateway server. While the parties desire to enter into a
binding contract for the development of a new platform, the source of the
technology, the specifications and the costs associated with the development of
this gateway server are so uncertain as to make a development contract
impracticable at this time. However, the parties agree that (i) in the event
that NetSpeak desires to develop or have developed a
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gateway server, it will first negotiate in good faith with ACT and, before
entering into an agreement with any third party for the same, provide ACT with
the right (exercisable upon thirty (30) days written notice) to match the terms
of a development/purchase agreement with such third party and (ii) in the event
ACT intends to develop or acquire a product which would function as the next
generation (after the Rx) gateway server, ACT agrees to negotiate in good faith
with NetSpeak and, before entering into an agreement with any third party for
the same, provide NetSpeak with the right (exercisable upon thirty (30) days
written notice), to match the terms of a development/purchase agreement with
such third party. The obligations under this paragraph 12.10 shall be in effect
for one (1) year from the date of this Agreement. In the event that the parties
hereto do reach an agreement based on their good faith negotiations, it is
intended that the terms of such agreement will be substantially similar to the
terms of this Agreement.
13. PROPRIETARY RIGHTS AND INTELLECTUAL PROPERTY.
13.1 NETSPEAK PROPERTY RIGHTS. ACT acknowledges and agrees
that the NetSpeak Products listed in Schedule A and all other items licensed
hereunder, and all copies thereof, constitute valuable trade secrets of NetSpeak
or proprietary and confidential information of NetSpeak and title thereto
remains in NetSpeak. All applicable copyrights, trade secrets, patents,
trademarks, and other Intellectual Property rights in the NetSpeak Products
listed in Schedule A and all other items licensed hereunder are and remain in
NetSpeak. All other aspects of the NetSpeak Products and all other items
licensed hereunder, including without limitation, programs, methods of
processing, specific design and structure of individual programs and their
interaction and unique programming techniques employed therein as well as screen
formats shall remain the sole and exclusive property of NetSpeak and shall not
be sold, revealed, disclosed or otherwise communicated, directly or indirectly,
by ACT to any person, company or entity whatsoever other than for the purposes
set forth herein. It is expressly understood that no title to or ownership of
the NetSpeak Products, or any part thereof is hereby transferred to ACT. The
parties hereto agree that the rights granted to each other hereunder, are rights
in "intellectual property" within the scope of Xxxxxxx 000 xx xxx Xxxxxx Xxxxxx
Bankruptcy Code.
13.2 ACT PROPERTY RIGHTS. NetSpeak acknowledges and agrees
that the ACT Product listed in Schedule B and all other items licensed
hereunder, and all copies thereof, constitute valuable trade secrets of ACT or
proprietary and confidential information of ACT and title thereto remains in
ACT. All applicable copyrights, trade secrets, patents, trademarks and other
Intellectual Property rights in the ACT Product and all other items licensed
hereunder are and remain in ACT. All other aspects of the ACT Product and all
other items licensed hereunder, including without limitation, programs, methods
of processing, specific design and structure of individual programs and their
interaction and unique programming techniques employed therein as well as screen
formats shall remain the sole and exclusive property of ACT and shall not be
sold, revealed, disclosed or otherwise communicated, directly or indirectly, by
NetSpeak to any person, company or entity whatsoever other than for the purposes
set forth herein. It is expressly understood that no title to or ownership of
the ACT Product, or any part thereof is hereby transferred to NetSpeak. The
parties hereto agree that the rights granted to each other hereunder, are rights
in "intellectual property" within the scope of Xxxxxxx 000 xx xxx Xxxxxx Xxxxxx
Bankruptcy Code.
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13.3 TRADEMARK LICENSES. During the term of this Agreement,
and subject to the terms and conditions of this Agreement, NetSpeak hereby
grants to ACT a personal, non-transferable, non-exclusive, worldwide right and
license to: (a) use and reproduce the NetSpeak Marks, either alone or co-branded
with any ACT Marks, solely in connection with the sale and distribution of the
Integrated Product; and (b) use, reproduce, display the NetSpeak Marks publicly
in connection with demonstration, promotion and advertisement of the Integrated
Product. Similarly, during the Term of this Agreement, and subject to the terms
and conditions of this Agreement, ACT hereby grants to NetSpeak a personal,
non-transferable, non-exclusive, worldwide right and license to: (c) use and
reproduce the ACT Marks, either alone or co-branded with any NetSpeak Marks,
solely in connection with the sale and distribution of the Integrated Product;
and (d) use, reproduce, display the ACT Marks publicly in connection with
demonstration, promotion and advertisement of the Integrated Product. ACT
acknowledges that NetSpeak is the owner of the NetSpeak Marks, whether or not
registered. Similarly, NetSpeak acknowledges that ACT is the owner of the ACT
Marks, whether or not registered. Each party agrees that it has no power or
right and shall not during the term of this Agreement:
(i) attack the title or right of the other party in the
other party's xxxx;
(ii) claim any right, title or interest in or to the other
party's xxxx adverse to the other party;
(iii) register or apply for registration of the other party's
xxxx or any name or xxxx that incorporates or is confusingly similar to the
other party's xxxx anywhere in the world without the other party's express
written consent; and
(iv) designate any name or xxxx that incorporates the other
party's xxxx as a common law trademark or the like anywhere in the world without
the other party's express written consent.
Further, each party agrees to the use the marks of the other party in accordance
with the guidelines set forth in Schedule F hereto.
13.4 ESCROW. In the event it appears that the parties are not
adequately meeting customer support requirements or that a party may not be able
to meet its obligations hereunder, the parties agree to negotiate in good faith
to set up an escrow agreement to ensure each party can meet its service and
support obligations to its customers.
14. NON-DISCLOSURE, CONFIDENTIALITY, BREACHES AND INJUNCTIVE RELIEF.
14.1 The NetSpeak Software (including, without limitation,
software modules and any future product, modifications, changes, enhancements,
upgrades, revisions, or additions made thereto) is and shall be the sole and
exclusive property of NetSpeak, including all applicable Intellectual Property
rights inherent therein and appurtenant thereto. The ACT Product (including,
without limitation, software modules and any future product, modifications,
changes, enhancements, upgrades, revisions, or additions made thereto) is and
shall be the sole
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and exclusive property of ACT, including all applicable Intellectual Property
rights inherent therein and appurtenant thereto. Accordingly, neither party
shall sell, transfer, publish, disclose, display or otherwise make available to
others any source code or object code, documentation or other material relating
to the other party's products. The parties shall assist one another in
identifying and preventing any use or disclosure of the source code or object
code, or of any portion of the hardware or software, or any of the algorithms or
logic contained therein. Without limitation of the foregoing, the parties shall
immediately notify one another in the event that they learn or have reason to
believe that any person has violated, or intends to violate, the terms of this
Agreement, or, if not bound thereby, intends to infringe upon or dilute the
Intellectual Property in any way whatsoever; and the parties will cooperate in
seeking injunctive or other equitable relief in the name of either ACT or of
NetSpeak against any such person.
14.2 The parties hereby acknowledge that the hardware and
software which are subject to this Agreement, and other items related thereto,
contain proprietary Intellectual Property ("Proprietary Information") of the
respective parties and agree to maintain the confidentiality of the Proprietary
Information in a manner using at least as great a degree of care as the manner
used to maintain the confidentiality of their own most confidential information
and shall similarly bind their employees and consultants in writing. Neither
party shall be obligated under this Section 14.2 with respect to information
that the receiving party can document:
(i) is or has become readily publicly available without
restriction through no fault of the receiving party
or its employees or agents; or
(ii) is received without restriction from a third-party
lawfully in possession of such information and
lawfully empowered to disclose such information; or
(iii) was rightfully in the possession of the receiving
party without restriction prior to its disclosure by
the other party; or
(iv) was independently developed by employees or
consultants of the receiving party without access to
such Proprietary Information.
Each party hereto acknowledges that the disclosure or unauthorized use by it or
any of its employees or agents of any aspect or portion of the hardware or
software, or any Proprietary Information of the other party will give rise to
irreparable injury to such party, which is inadequately compensable in damages.
Accordingly, in order to prevent any disclosure or dilution of the Intellectual
Property or business secrets, the affected party may seek or obtain equitable
relief, including the right to seek injunctive relief in a court of competent
jurisdiction, and each party hereby consents to the obtaining of such injunctive
relief from the court and to the enforcement of such injunctive relief, provided
that the enjoined party is a proper party to, and the other party has standing
to maintain, any such proceedings.
14.3 All of the undertakings and obligations relating to
confidentiality and non-disclosure, whether contained in this paragraph or
elsewhere in this Agreement, and whether of NetSpeak or of ACT, shall survive
the termination of this Agreement for any reason whatsoever.
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15. PERMITS AND APPROVALS. ACT intends to homologate the ACT Product in
various jurisdictions under ACT's name. To the extent permissible, ACT shall
provide NetSpeak with the benefits of the homologation ACT receives. In all
respects, however, NetSpeak shall be responsible for obtaining approvals and
permits for the sale of the NetSpeak Products and ACT shall be responsible for
obtaining approvals and permits for the ACT Product.
16. REPRESENTATIONS AND WARRANTIES.
16.1 NetSpeak represents and warrants that:
(a) For a period of ninety (90) days from first
use, each NetSpeak Product operates and will
operate substantially in accordance with the
specification set forth in the NetSpeak
Documentation for such NetSpeak Products;
(b) The NetSpeak Products and the NetSpeak Marks
and use thereof as contemplated by this
Agreement will not infringe or
misappropriate any copyright, trade secret,
publicity, privacy or other right of any
third party and are not defamatory or
obscene;
(c) NetSpeak has the necessary rights to grant
the rights and licenses contemplated by this
Agreement, without the need for any
consents, approvals or immunities not yet
obtained;
(d) NetSpeak has full power to enter into this
Agreement, to grant the rights and licenses
granted hereunder and to perform its
obligations hereunder; and
(e) to the best of NetSpeak's knowledge, as of
the Effective Date the NetSpeak Products do
not infringe any patent or trademark rights
of any third party.
16.2 ACT represents and warrants that:
(a) ACT's warranty for the Product is attached
hereto as Exhibit C;
(b) The ACT Product and the ACT Marks and use
thereof as contemplated by this Agreement do
not infringe or misappropriate any
copyright, trade secret, publicity, privacy
or other right of any third party and are
not defamatory or obscene;
(c) ACT has the necessary rights to grant the
rights and licenses contemplated by this
Agreement, without the need for any
consents, approvals or immunities not yet
obtained;
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(d) ACT has full power to enter into this
Agreement, to grant the rights and licenses
granted hereunder and to perform its
obligations hereunder; and;
(e) To the best of ACT's knowledge, as of the
Effective Date the ACT Product does not
infringe any patent or trademark rights of
any third party.
16.3 THE WARRANTY STATED ABOVE IS A LIMITED WARRANTY, AND IS
THE ONLY WARRANTY MADE BY THE PARTIES. NETSPEAK AND ACT DO NOT MAKE, AND
NETSPEAK AND ACT HEREBY EACH EXPRESSLY WAIVE ALL OTHER WARRANTIES, WHETHER
EXPRESS OR IMPLIED. NETSPEAK AND ACT SHALL HAVE NO LIABILITY WITH RESPECT TO
THEIR OBLIGATIONS UNDER THIS AGREEMENT, OR OTHERWISE, FOR ANY INDIRECT, SPECIAL,
INCIDENTAL, EXEMPLARY, CONSEQUENTIAL, OR PUNITIVE DAMAGES, EVEN IF THEY HAVE
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE ABOVE-STATED EXPRESS
WARRANTY IS IN LIEU OF ALL OTHER LIABILITIES OR OBLIGATIONS OF NETSPEAK OR ACT
FOR DAMAGES THAT MIGHT ARISE OUT OF, OR IN CONNECTION WITH, THE DEVELOPMENT,
DELIVERY, USE, OR PERFORMANCE OF ANY NETSPEAK PRODUCT OR ACT PRODUCT. IN ANY
EVENT, THE LIABILITY OF NETSPEAK TO ACT AND OF ACT TO NETSPEAK FOR ANY REASON
AND UPON ANY CAUSE OF ACTION WHATSOEVER SHALL BE LIMITED TO THE AMOUNT THEN
PREVIOUSLY PAID TO NETSPEAK BY ACT (IN THE CASE OF NETSPEAK) OR ACT BY NETSPEAK
(IN THE CASE OF ACT), AS THE CASE MAY BE, FOR PRODUCTS OR SERVICES HEREUNDER
(EXCEPT FOR A BREACH OF SECTION 14.2 OR WITH RESPECT TO EITHER PARTY'S
OBLIGATIONS OF INDEMNITY UNDER SECTION 17, IN WHICH CASE EACH PARTY'S LIABILITY
SHALL BE LIMITED TO THREE MILLION DOLLARS ($3,000,000)).
16.4 The express warranty contained herein, but not the
exclusions and waivers of warranties contained herein, shall terminate and
become null and void, and shall be of no further force and effect, if (i) any
modifications are made by ACT, or any third party, to any NetSpeak Product,
without the prior written consent of NetSpeak, or (ii) any modifications are
made by NetSpeak, or any third party, to the ACT Product, without the prior
written consent of ACT.
17. INDEMNITY.
17.1 Subject to the conditions set forth in Section 17.3
below, NetSpeak shall indemnify, hold harmless and defend ACT against any claim,
suit or proceeding and any damages and liability therefrom or settlement
therefor (including reasonable fees of attorneys and related costs):
(a) Based on a claim that a NetSpeak Product or
NetSpeak Xxxx infringes the patent,
copyright, trademark, trade secret,
publicity, privacy, or other right of any
third party, or is defamatory or
-13-
obscene, except to the extent that such
infringement is due solely to (i) the
combination of the NetSpeak Product with the
ACT Product, or (ii) NetSpeak following the
design specifications of ACT, or (iii) a
modification of the NetSpeak Product by
other than NetSpeak, or (iv) use of the
NetSpeak Product that is incidental to an
infringement not resulting primarily from
the NetSpeak Product;
(b) Based on a representation or warranty
concerning a NetSpeak Products set forth in
the NetSpeak Documentation; or
(c) Resulting from any material breach of this
Agreement by NetSpeak.
17.2 Subject to the conditions set forth in section 17.3
below, ACT shall indemnify, hold harmless and defend NetSpeak against any claim,
suit or proceeding and any damages and liability therefrom or settlement
therefor (including reasonable fees of attorneys and related costs):
(a) Based on a claim that the ACT Product or an
ACT Xxxx infringes the patent, copyright,
trademark, trade secret, publicity, privacy,
or other right of any third party, or is
defamatory or obscene; except to the extent
that such infringement is due solely to (i)
the combination of the ACT Product with a
NetSpeak Product, or (ii) ACT following the
design specifications of NetSpeak, or (iii)
modification of the ACT Product by other
than ACT, or (iv) use of the ACT Product
that is incidental to an infringement not
resulting primarily from the ACT Product;
(b) Based on a representation or warranty
concerning an ACT Products set forth in the
ACT Documentation; or
(c) Resulting from any material breach of this
Agreement by ACT.
17.3 The Indemnifying Party's obligation to defend and
indemnify the Indemnified Party shall be conditioned upon (i) the Indemnified
Party's full cooperation with the Indemnifying Party, at the Indemnifying
Party's expense, in its defense of such claim(s) and (ii) the Indemnifying Party
being allowed to assume sole control over the defense and all negotiations for a
settlement. In no event shall either party settle any such claim, lawsuit or
proceeding without the Indemnifying Party's prior written approval, which
approval shall not be unreasonably withheld. The Indemnifying Party is in no way
authorized to agree to any settlement, compromise or the like which would
require the Indemnified Party make any payment or bear other obligations,
including without limitation, the obligation to make a grant back (but excluding
the obligation to stop using the affected product) without prior written
approval of the Indemnified Party. If, as a result of any such claim, litigation
or threat thereof, either NetSpeak or ACT is permanently enjoined from using any
hardware or software or other
-14-
product, then the Indemnifying Party, at its sole option and expense, may
replace or modify the hardware or software, or other product with a
noninfringing substitute of equivalent performance, functionality and quality,
so as to settle such claim, litigation or threat thereof. If such settlement or
modification is not reasonably practicable, after giving due consideration to
all factors including financial expense, then the Indemnifying Party may
terminate this Agreement upon ninety (90) days' prior written notice to the
Indemnified Party, provided that the Indemnifying Party is not limited by any
settlement or order of any court of competent jurisdiction. The foregoing states
the entire liability of the Indemnifying Party with respect to infringement of
any Intellectual Property. Each party may, but shall have no obligation
hereunder to, maintain insurance coverage for its errors and omissions, in such
amounts as such party shall in its sole discretion determine, from time to time.
The Indemnifying Party shall be relieved of its obligations hereunder to the
extent the Indemnified Party has not provided prompt written notice of a claim
and the lack of such notice has prejudiced the Indemnifying Party's ability to
defend such claim.
18. TERMINATION. This Agreement shall terminate on the fifth (5th)
anniversary of the Effective Date, unless either party has exercised its option
to extend this Agreement for successive one (1) year periods, by providing not
less than one hundred eighty (180) days' written notice prior to the expiration
of the original term or any extension of this Agreement, as the case may be.
Non-payment of the Royalties or any other payment when due under this Agreement,
including non-payment of any invoice for any modification, change, enhancement,
upgrade, revision, or addition to any of the product, or in the event that there
is a material breach of this Agreement, shall also be cause for termination of
this Agreement upon not less than thirty (30) days' prior written notice and
after having been given an opportunity to cure any such default of not less than
thirty (30) days. The termination of this Agreement shall automatically, and
without any further action by the parties, terminate and extinguish the licenses
and any other rights hereunder. In the event of the termination of this
Agreement, then each party shall return all manifestations of, and media and
record embodying, Proprietary Information of the other in its possession,
custody or control. Notwithstanding the foregoing, all provisions hereof
relating to confidentiality shall survive the termination of this Agreement.
19. CUSTOMER LISTS. The parties may agree, from time to time, to the
customer accounts for which each party agrees to act as principal sales agent.
20. FORCE MAJEURE. Neither party shall be liable to the other for any
delay or failure to perform due to causes beyond its reasonable control (such as
war, riots, insurrections, sovereign compulsion, strikes or lock-outs, flood,
fire, earthquake, or natural disasters, or atmospheric conditions), except that
this provision shall not apply to the parties' obligations to pay any sums due
to one another hereunder or to obligations of confidentiality. Performance times
shall be considered extended for a period of time equivalent to the times lost
because of any such delay. The parties will attempt to meet such extended
performance times. If such extended performance times conflict with pre-existing
contractual commitments of the parties to other entities, then the parties shall
so advise one another, and the parties shall use best efforts to agree in
writing to an alternative implementation schedule. If the parties are unable to
agree upon an alternative implementation schedule, or if the delay continues for
a period of (3) months or more, then this Agreement may be terminated by either
party, and neither party shall be liable
-15-
to the other for such termination, provided that the parties pay for all
services rendered and expenses incurred in accordance with the payment
provisions herein.
21. NOTICES. All notices, consents, demands, requests, approvals,
waivers and other communications which are required or may be given hereunder
shall be in writing and shall be deemed to have been duly given five (5) days
after having been mailed to such party by registered mail, return receipt
requested, postage prepaid, or the lesser of three (3) days or the actual date
of receipt if sent by courier or overnight delivery service (E.G., Federal
Express, UPS, DHL), addressed as follows:
if to NetSpeak Xxxxxx Xxxxxxx
NetSpeak Communications, Inc.
000 Xxxxx Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxxx, Xxxxxxx 00000
with a copy to:
Bookstein & Xxxxxxx, P.C.
Xxx Xxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Xxxxx X. Xxxxx, Esq.
if to ACT ACT Networks, Inc.
000 Xxxxxx Xxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Attention: Vice President, Business Development
with a copy to:
Xxxxxxx, Phleger & Xxxxxxxx LLP
0000 XxxXxxxxx Xxxxx, Xxxxx 0000
Xxxxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: Xxxxxxxx X. Xxxxxxx, Xx., Esq.
22. BINDING EFFECT. This Agreement shall inure to the benefit of, and
shall be binding upon, each of the parties hereto, their respective heirs,
personal representatives, administrators, successors and assigns.
23. CHOICE OF LAW; VENUE. The validity, interpretation, and enforcement
of this Agreement, and all other instruments and documents executed in
connection with this transaction, shall be governed by the laws of the State of
California, excluding those laws relating to the resolution of conflicts between
laws of different jurisdictions.
24. COMPLIANCE WITH U.S. EXPORT LAWS. Each party hereby agrees to
comply with all export laws and restrictions and regulations of the Department
of Commerce or other United States or foreign agency or authority, and not
knowingly export, or allow the
-16-
export or re-export of any Proprietary Information, ACT Products, NetSpeak
Products or any direct product thereof in violation of such restrictions, laws
or regulations, or, without all required licenses and authorizations, to any
Group D:1 or E:2 country specified in the then-current Supplement No. 1 to
Section 740 of the U.S. Export Administration Regulations (or any successor
supplement or regulations).
25. WAIVER. Any party may, at its discretion, waive in writing any or
all of the conditions herein contained to which its obligations hereunder are
subject, provided that neither failure nor delay on the part of a party to
exercise any right, power or privilege hereunder shall operate as a waiver
thereof, nor shall any singular or partial exercise of any right, power or
privilege hereunder preclude any other or further exercise thereof or the
exercise of any other right, power or privilege. No waiver of any of the
provisions of this Agreement shall be deemed or shall constitute a waiver of any
other provisions hereof (whether or not similar), nor shall such waiver
constitute a continuing waiver unless otherwise expressly provided.
26. SEVERABILITY. If any provision of this Agreement shall be
determined by a court of competent jurisdiction, or by award of an arbitral
tribunal, and enforced by such a court, to be invalid, illegal or unenforceable,
then such determination shall not affect or impair the validity, legality, or
enforceability of the remaining provisions contained herein.
27. ASSIGNABILITY. This Agreement may not be assigned by either party
without the prior written consent of the other party, which consent shall not be
unreasonably withheld.
28. ENTIRE AGREEMENT; AMENDMENT. This Agreement, together with the
other Exhibits attached hereto which are incorporated herein by this reference,
expresses the
-17-
entire and exclusive understanding of the parties. This Agreement may be
modified or amended only by an instrument in writing executed by an authorized
officer of each of the parties hereto.
29. COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement the date
first above written.
NETSPEAK CORPORATION, a Florida corporation
By:/s/ XXXXXX XXXXXXX
-------------------------------------------------
Name: Xxxxxx Xxxxxxx
Title: President
ACT NETWORKS, INC., a Delaware corporation
By:/s/ XXXXXX X. XXXXXXX
-------------------------------------------------
Name: Xxxxxx X. Xxxxxxx
Title: CFO and Vice President,
Finance and Administration
-18-
SCHEDULE A
NETSPEAK PRODUCTS TITLES, DESCRIPTION, AND SPECIFICATIONS
Connection server
Information server
ACDserver
Database server
Credit processing server
Firewall proxy server
Control center
NetSpeak-branded WebPhone client software
NSCP software developer's kit (SDK)
-19-
SCHEDULE B
ACTS PRODUCT TITLES, DESCRIPTION AND SPECIFICATIONS
1. ACT PRODUCTS. The SDM-Rx which is anticipated to be released
commercially in the third calendar quarter of 1997. Software/firmware which is
intended to be incorporated into the SDM-Rx includes:
RX hardware platform
TrueSpeech 8.5 voice algorithm
ACELP 8Kbps voice algorithm
T1/E1, ISDN BRI and analog interfaces
Least cost router interface
Call control interface
Echo canceller
-20-
SCHEDULE C
1. PURCHASE TERMS AND CONDITIONS
(a) ORDERING. NetSpeak shall provide ACT, on a calendar
quarterly basis, with nonbinding, rolling twelve (12) month forecasts of its
requirements for the ACT Products and Integrated Product. NetSpeak will purchase
units of the ACT Products and/or Integrated Product by issuing a written
purchase order indicating model number and quantity of each Integrated Product
and each ACT Product desired, the price, and requested delivery date. All
purchase orders shall be dated, uniquely numbered for identification, reference
this Agreement, incorporate the terms and conditions of this Agreement and be
signed by a duly authorized representative of NetSpeak. The terms and conditions
of this Agreement prevail regardless of any conflicting terms or conditions on
the purchase order. Purchase orders must be received by ACT at least sixty (60)
days prior to the requested delivery date specified on the order, and during the
term of this Agreement. All such purchase orders and delivery dates are subject
to written acceptance by ACT and shall be deemed accepted if in accordance with
the terms of this Agreement and are not rejected in writing by the ACT within
ten (10) days of receipt thereof.
(b) PRICES. The list price for the ACT Products shall be as
determined by ACT in its discretion. All prices are exclusive of any sales,
usage, import, excise, and other taxes (except those specified based upon ACT's
net income), shipping and insurance. Such items, including any withholding taxes
on royalty fees and other costs, when applicable, shall appear as separate items
on ACT's invoices, and shall be paid by NetSpeak. Due to the development efforts
of both parties with respect to the ACT Product and due to the fact that the
products purchased hereunder will, in most cases, be the Integrated Product, it
is ACT's intention to provide NetSpeak with a discount from list price for
purchases of the Integrated Product which are at least as favorable as those
provided to ACT's best customers purchasing the Integrated Product. However, it
is not intended that the pricing of the ACT Product hereunder result in ACT
discounting its products to other third parties as a result of agreements with
such third parties. As such, ACT and NetSpeak will, based upon the foregoing,
agree on the appropriate discount at the time ACT prepares its price list for
the ACT Product.
(c) PAYMENT. All payments shall be made in U.S. currency in
the United States and shall be due within thirty (30) days after delivery to the
carrier or date of invoice, whichever is later. If at any time NetSpeak is
delinquent in the payment of any invoice or is otherwise in breach of this
Agreement, ACT may, in its discretion, withhold shipment (including partial
shipments) of any order or may, at its option, require NetSpeak to pay C.O.D.
for further shipments. A service charge of one and one-half percent (1.5%) per
month (or the maximum rate permitted by law) may be assessed by ACT on payments
more than ten (10) days past due.
-21-
2. RESCHEDULING, SHIPMENT AND DELIVERY
(a) RESCHEDULING. All purchase orders are non-cancelable.
During the first thirty (30) days following the receipt of NetSpeak's purchase
order by ACT, NetSpeak may reschedule the delivery date for such purchase order
without penalty to a date not later than sixty (60) days following the original
scheduled delivery date. Purchase orders may not be rescheduled more than once.
(b) SHIPPING DATES. ACT will provide to NetSpeak a scheduled
delivery date for each purchase order within ten (10) business days after
acceptance of the purchase order. ACT will attempt to deliver the Products by
the requested delivery date, subject to restrictions in manufacturing,
scheduling, material and production availability. ACT will notify NetSpeak of
any delays in delivery as soon as ACT becomes aware of such delay. If deliveries
are made in installments, each shipment shall be paid for when due without
regard to the other scheduled deliveries. In the event ACT notifies NetSpeak of
a delay of five (5) or more days in the scheduled delivery date, NetSpeak shall
have the right to reschedule the delivery date within sixty (60) days of the
originally requested delivery date.
(c) FREIGHT CHARGES. Delivery shall be made F.O.B. at ACT's
plant of manufacture. NetSpeak shall be responsible for all freight, handling
and insurance charges. Unless given written instruction to the contrary, ACT
shall be responsible for and shall select the carrier for all shipments. In no
event shall ACT have any liability in connection with shipment, nor shall the
carrier be deemed to be an agent of ACT.
(d) SECURITY INTEREST. Title to and risk of loss or damage
shall pass from ACT to NetSpeak upon delivery to common carrier or NetSpeak's
representative at the F.O.B. point. Delivery shall be deemed made upon transfer
of possession to the carrier. NetSpeak grants ACT a security interest in the ACT
Products purchased under this Agreement to secure payment for those ACT Products
purchased. If requested by ACT, NetSpeak agrees to execute financing statements,
from time to time, to perfect this security interest.
3. BUYER COVENANTS AND REPRESENTATIONS
Buyer covenants to Seller to:
(a) keep ACT informed as to any problems encountered with the
ACT Products and any resolutions arrived at for those problems.
(b) comply with all export control laws and regulations of the
United States Government, including but not limited to 15 CFR Parts 730-799
Export Administration Regulations of the Department of Commerce, 22 CFR Parts
120-130 International Traffic in Arms Regulations of the Department of State, 31
CFR 500 Foreign Assets Control Regulations of the Department of the Treasury,
and regulations issued under the authority of the Atomic Energy Act of 1954 by
the Nuclear Regulatory Commission or the Department of Energy, or successor
supplement or regulation. NetSpeak shall not export, or allow to be exported or
reexported, any Proprietary Information, or ACT Product in violation of any such
restriction, law
-22-
or regulation. NetSpeak shall maintain applicable records about all exports,
including showing compliance with the regulations pertaining to export to
military entities or for military end-users, and shall obtain and bear all
expenses relating to any necessary licenses and/or exemptions with respect to
the export from the United States of all materials or items deliverable by ACT
to any location and shall demonstrate to ACT compliance with all applicable
export control laws and regulations prior to delivery thereof by ACT.
4. LIMITED WARRANTY AND AFTER WARRANTY SUPPORT
(a) ACT warrants to NetSpeak, and only to NetSpeak, that all
ACT Products shall be free from material defects in materials and workmanship
under normal and proper use, and shall substantially conform to the
specifications to be published by ACT. The fact that the warranty runs only to
NetSpeak does not obviate ACT's obligation to fulfill warranty claims by
NetSpeak which arise from claims by NetSpeak's customers, although all warranty
claims of such customers shall be asserted by NetSpeak. NetSpeak agrees not to
make any other warranty commitment on ACT's behalf beyond those in the foregoing
limited warranty. Such warranty does not apply to units of the Products that
have been mishandled, mistreated, used, maintained or stored in any manner other
than in the conformity with ACT's instructions. The warranty on all ACT Products
which can be identified by shipment will terminate one (1) year after the date
of receipt of such ACT Products by the NetSpeak. With respect to all ACT
Products for which receipt documentation is not available, the warranty shall
terminate one (1) year from the date of the manufacturing date code stamped on
the ACT Product.
(b) Any claim under the warranty must be submitted before the
end of the warranty period to ACT at such address as ACT provides NetSpeak upon
request. The units of the ACT Products subject to a warranty claim must be
securely packaged, insured, and shipped freight prepaid. NetSpeak must obtain a
return authorization number from ACT before shipping any ACT Product, and
include a written description of the defect.
NETSPEAK'S SOLE AND EXCLUSIVE REMEDY FOR ANY BREACH OF THE
FOREGOING WARRANTY SHALL BE REPLACEMENT OF OR (AT ACT'S OPTION OR IF REPLACEMENT
IS IMPRACTICAL) REFUND FOR RETURNED NONCONFORMING UNITS OF THE ACT PRODUCTS FOR
WHICH FULL DOCUMENTATION AND PROOF OF NON-CONFORMITY IS PROVIDED TO ACT WITHIN
ONE (1) YEAR AFTER THE ORIGINAL NON-CONFORMING UNITS ARE RECEIVED BY NETSPEAK.
EXCEPT FOR THE FOREGOING WARRANTIES ACT DOES NOT WARRANT THE MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OF ANY PRODUCT OR PERFORMANCE, DOES NOT MAKE
ANY WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO, PRODUCT, SPECIFICATIONS,
SUPPORT SERVICE OR ANYTHING ELSE AND DOES NOT MAKE ANY WARRANTY TO NETSPEAK'S
DISTRIBUTORS, CUSTOMERS OR AGENTS. ACT HAS NOT AUTHORIZED ANYONE TO MAKE ANY
REPRESENTATION OR WARRANTY OTHER THAN AS PROVIDED ABOVE.
(c) In the event that any ACT Product is returned to ACT under
the provisions of this Section, ACT will use commercially reasonable efforts to
repair or replace such ACT Product, at ACT's sole expense, within ten (10) days
of the receipt of such Product by ACT.
-23-
Transportation costs incurred with respect to the return of such Product shall
be borne by NetSpeak when returned to ACT, and by ACT when returned to NetSpeak.
ACT Products repaired by the ACT under the warranty provisions hereof shall be
warranted for a period of ninety (90) days or the remainder of the original
warranty period, whichever is greater.
(d) If NetSpeak wishes to have any ACT Product repaired other
than under the warranty provisions herein, ACT agrees to repair such ACT Product
at ACT's then-current standard published repair rates (without discounts), and
NetSpeak shall reimburse ACT for all travel, room, board or other expenses
incurred by ACT in connection therewith.
-24-
SCHEDULE D
NETSPEAK CORPORATION LICENSE AGREEMENT
(PRODUCT NAME) (RELEASE/VERSION NUMBER)
BY INSTALLING AND RUNNING THIS SOFTWARE PROGRAM YOU AGREE TO BE BOUND BY THE
TERMS AND CONDITIONS OF THIS AGREEMENT. IF YOU DO NOT AGREE TO THE TERMS OF THIS
AGREEMENT, DO NOT CONTINUE THIS INSTALLATION AND DELETE ANY PORTIONS OF THIS
SOFTWARE ALREADY INSTALLED ON YOUR SYSTEM.
LICENSE GRANT
NetSpeak Corporation ("NetSpeak") grants to You a non-exclusive license under
Copyrights to use its (Product Name/Release) software ("Software Product") on a
single computer at any one time. The Software Product is in use on a computer
when it is resident in memory (I.E., RAM) or when executable or other files are
installed on the hard drive or other storage device of the computer.
You may not, or may not permit other individuals to, copy, modify, translate,
reverse engineer, decompile, disassemble, or create derivative works from the
Software Product, or remove any proprietary notices or labels on the Software
product, including copyright, trademark or patent pending notices.
SOFTWARE PRODUCT
NetSpeak reserves the right to at any time alter prices, features, capabilities,
functions, licensing terms, release dates, general availability or any other
characteristics of the Software Product as NetSpeak sees fit.
TITLE
Title, ownership rights, and intellectual property rights in and to the Software
Product remain with NetSpeak. The Software Product is protected by the copyright
and patent laws of the United States and international copyright treaties.
You acknowledge and agree that the Software Product contains proprietary and
confidential information of NetSpeak. You agree to protect the confidential and
proprietary nature of the Software Product in the same manner that You protect
Your own confidential information of like value, provided that You will in all
cases use reasonable care to protect the Software Product.
LIMITED WARRANTY
NETSPEAK WARRANTS THAT THE SOFTWARE PRODUCT WILL PERFORM SUBSTANTIALLY IN
ACCORDANCE WITH THE ACCOMPANYING DOCUMENTATION FOR A PERIOD OF NINETY (90) DAYS
FROM DATE OF FIRST USE. SOME STATES AND JURISDICTIONS DO NOT ALLOW LIMITATION ON
THE DURATION OF IMPLIED WARRANTIES, SO THE ABOVE LIMITATION MAY NOT APPLY TO
YOU. EXCEPT AS EXPRESSLY PROVIDED HEREIN THERE ARE NO WARRANTIES, CONDITIONS OR
REPRESENTATIONS EXPRESS OR IMPLIED BY STATUTE, USAGE, CUSTOM OF THE TRADE OR
OTHERWISE WITH RESPECT TO THE SOFTWARE PRODUCT LICENSED BY NETSPEAK HEREUNDER,
INCLUDING BUT NOT LIMITED TO, WARRANTIES OR REPRESENTATIONS OF WORKMANSHIP,
MERCHANTABILITY, SUITABILITY OR FITNESS FOR A PARTICULAR PURPOSE, DURABILITY OR
NONINFRINGEMENT. WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, NETSPEAK DOES
NOT WARRANT THAT THE SOFTWARE PRODUCT WILL MEET ALL OF YOUR NEEDS OR THAT
OPERATION OF THE SOFTWARE PRODUCT WILL BE ERROR FREE. THIS LIMITED WARRANTY
CONSTITUTES AN ESSENTIAL PART OF THIS AGREEMENT.
CUSTOMER REMEDY
NETSPEAK AND ITS SUPPLIERS' ENTIRE LIABILITY AND YOUR EXCLUSIVE REMEDY SHALL BE,
AT NETSPEAK'S OPTION TO EITHER (A) REFUND THE LICENSE FEE, OR (B) REPAIR OR
REPLACE THE SOFTWARE PRODUCT THAT DOES NOT MEET NETSPEAK'S LIMITED WARRANTY.
THIS LIMITED WARRANTY IS VOID IF FAILURE OF THE SOFTWARE PRODUCT HAS RESULTED
FROM ACCIDENT, ABUSE, OR MISAPPLICATION. ANY REPLACEMENT SOFTWARE PRODUCT UNDER
THE LIMITED REMEDY WILL BE WARRANTED FOR THE REMINDER OF THE ORIGINAL WARRANTY
PERIOD OR THIRTY (30) DAYS, WHICH EVER IS LONGER.
LIMITATION OF LIABILITY
UNDER NO CIRCUMSTANCES AND UNDER NO LEGAL THEORY, WHETHER IN TORT, CONTRACT, OR
OTHERWISE, SHALL NETSPEAK OR ANY OTHER PERSON BE LIABLE FOR ANY DIRECT,
INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES OF ANY
CHARACTER INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF GOODWILL, WORK
STOPPAGE, COMPUTER FAILURE OR MALFUNCTION, OR ANY AND ALL OTHER COMMERCIAL
DAMAGES OR LOSSES, EVEN IF NETSPEAK HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. IN NO EVENT WILL NETSPEAK BE LIABLE FOR ANY DAMAGES WHATSOEVER IN
EXCESS OF THE AMOUNT PAID FOR THE SOFTWARE PRODUCT THAT IS THE SUBJECT MATTER OF
THE CLAIM OR THAT IS DIRECTLY RELATED TO THE CAUSE OF ACTION.
-25-
TERM
This Agreement shall become effective upon your installation of the Software
Product and shall terminate automatically upon breach of this Agreement by you,
if any. NetSpeak may terminate this Agreement at any time, for any reason,
however, NetSpeak may refund a prorated portion of the license fee upon any such
termination, at NetSpeak's discretion.
MISCELLANEOUS
If any provision of this Agreement is held to be unenforceable for any reason,
such provision shall be reformed only to the extent necessary to make it
enforceable. This Agreement shall be governed by and construed under Florida
law, except as preempted by United States Federal law. The application the
United Nations Convention of Contracts for the International Sale of Goods is
expressly excluded.
You shall comply with all export regulations pertaining to the Software Product
in effect from time to time. In particular, without limiting the generality of
the foregoing, You hereby warrant that you will not directly or indirectly
export, re-export or transship the Software Product or such other information,
media or products in violation of or otherwise in contravention of the export
laws, rules and regulations.
U.S. GOVERNMENT RESTRICTED RIGHTS
Use, duplication or disclosure by the Government is subject to restrictions set
forth in subparagraphs (a) through (d) of the Commercial Computer-Restricted
Rights clause at FAR 52,227-19 when applicable, or in subparagraph (c)(1)(ii) of
the Rights in Technical Data and Computer Software clause at DFARS 252,227-7013,
and in similar clauses in the NASA FAR Supplement.
CUSTOMER SUPPORT
Unless you have entered into a separate support and maintenance agreement with
NetSpeak, you shall receive technical support during the term of this Agreement
in accordance with the NetSpeak software support policy in effect for the
Software Product. For technical support related to the Software Product call
NetSpeak Corp. at (000) 000-0000.
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SCHEDULE E
ACT NETWORKS END-USER LICENSE AGREEMENT
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SCHEDULE F
GUIDELINES FOR USING NETSPEAK MARKS AND ACT MARKS
1.1 These guidelines ("Guidelines") set forth the proper treatment and use of
the Trademarks on or in association with NetSpeak's Products and the ACT
Product, hereafter "Products." Compliance with these guidelines is the sole
responsibility of each respective party. In the event of a conflict between the
provisions of this Schedule and the Agreement, the Agreement shall control.
2.0 Use of Trademarks
2.1 The Trademarks may only be used on the Products, its packaging, collateral
documentation and in advertising for the Products. The Trademarks may never be
used on or in connection with any other products or services, and, particularly
not on novelty items or T-shirts, without express written permission of the
party owning the xxxx.
2.2 The Trademarks may not be used as part of or in any emblem or insignia.
2.3 The Trademarks must not be used in a manner which may cause confusion as to
the source or origin of products or services being offered. As such, the
Trademarks may not be:
2.3.1 displayed in a striking and solitary manner by the other party;
2.3.2 made more prominent than the remainder of the text in which the
Trademarks are used by the other party;
2.3.3 as prominent or more prominent than the trademark or company name
of either party;
2.3.4 used as part of the name or other identifier of a business,
product, or service not connected with the Products.
2.4 At the first or a prominent occurrence of the Trademark in advertising, it
should be symbolically indicated that the marks are trademarks. In the United
States, this is usually done by using the symbol "/Trademark" or "/Registered
trademark/" with the same footnote. Note that in some countries, a translated
version of the U.S. trademark attribution is not only used, but may be required.
You should check with your legal department to insure that local laws and
customs are adhered to and followed.
2.5 Each party will provide to the other party camera-ready artwork of its
respective marks. The other party may not alter this artwork in any way
whatsoever.
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2.6 A party may only reproduce the Trademarks in accordance with the
instructions included on the camera-ready artwork. The Trademarks artwork may
not be recreated in any way. Each party may resize the other party's trademarks
using photographic proportional processes.
2.7 Each party agrees not to use any trademark, service xxxx or tradename in
combination with the Trademark of the other party without prior written approval
of the other party. A minimum border must be placed around the Trademarks equal
to one half of the Trademark's largest dimension.
2.8 Each party may conduct spot checks of the Products and advertising and will
periodically (but no more than twice a year) send out requests for samples to
monitor compliance with the Agreement and these guidelines.
2.9 Each party must correct any deficiencies in their use of the trademarks on
the Products or in advertising, and cease and desist from further publication or
distribution of the offending materials upon reasonable notice from the other
party.
2.10 The accuracy and appropriateness of all claims used in advertising or
promotional materials which includes the Trademarks is the sole responsibility
of the party using the xxxx even if the other party is aware of the
advertisement or promotional materials.
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