MVP CROSS LICENSE AGREEMENT
CONTENTS
- Preamble
Licensed Products
Title
1. License Grants
2. Consideration
3. Term and Termination
4. TI Engineering Support
5. Maintenance Support
6. Availability of Licensed Products
7. Warranty and Warranty Disclaimers
8. Patent Infringement Disclaimer
9. Updates and Releases
10. Limitation of Liabilities
11. Force Majeure
12. Assignment
13. Applicable Law and Jurisdiction
14. Waiver
Severability
Export Control Compliance
15. Publicity
16. Headings
17. Notice
18. Complete Agreement
19. Summary of Schedules
MVP CROSS LICENSE AGREEMENT
This Agreement is entered into by and between the Application Specific Product
Group of Texas Instruments France with its offices at 821 Avenue Xxxx Xxxxx,
00000 Xxxxxxxxxx Xxxxxx, Xxxxxx ("TI") and IAT AG with its offices at
Geschaeftshaus Wasserschloss Xxxxxxxxxxx 00, 0000 Xxxxxxxxx-Xxxxx, Xxxxxxxxxxx
("IAT").
WHEREAS the parties have previously executed a Cross License Agreement for a ten
(10) year term beginning, September 1, 1994, which the parties now desire to
cancel and replace by this Agreement.
NOW THEREFORE the parties hereto agree as follows:
1. LICENSED PRODUCTS
TI shall deliver to IAT the software products and related documentation
detailed in Schedule 1 (collectively referred to as "TI products") and
IAT shall deliver to TI the software products and related documentation
detailed in Schedule 2 (collectively referred to as "IAT Products").
2. TITLE
TI represents that it has sufficient rights to grant the license to the
TI Products and IAT represents that it has sufficient rights to grant the
license to the IAT Products. Nothing contained in this Agreement shall be
construed as transferring any right, title, or interest in the TI Product
or the IAT Products (collectively referred to as the "Licensed Products")
by one party to the other, except as expressly set forth herein.
3. LICENSE GRANTS
3.1 TI grants to IAT a worldwide non-transferable, non-assignable,
non-exclusive, fully paid up license to use, modify, compile, or
otherwise develop as applicable software programs which may be original
or derivative with respect to the TI Products, and to make, have made,
use, sell and otherwise dispose of hardware and software products
incorporating object code versions of such software programs.
3.1.1 IAT may also sublicense third parties to use, modify, compile or
otherwise develop as applicable software programs which may be original
or derivative with respect to the TI Products, and to make, have made,
use, sell and otherwise dispose of hardware and software products
incorporating object code version of such software programs, provided
that IAT first executes with each such third party a software license
agreement substantially similar to this Agreement. Such third parties
shall not have the right to sublicense the TI Products.
3.1.2 IAT undertakes to reproduce on all original or derivative software
programs of the TI Products, all copyright notices exactly as and where
they appear on the TI Products, or as
closely as possible where a change in media precludes exact reproduction,
and to procure a written undertaking from its sublicensees to do the
same.
3.1.3 Except as may be required pursuant to any sublicense granted by IAT under
Section 3.1.1 above, IAT undertakes to maintain any source code of the TI
Products as confidential, and not to disclose or otherwise make available
such source code to any other party, and to procure a written undertaking
from its sublicensees to do the same. The obligations of this provision
shall survive termination or expiration of this Agreement.
3.1.4 IAT shall ensure that all end users are restricted by written agreement
from copying, distributing, translating, adapting, arranging or otherwise
altering any object code versions of the TI Products, or reverse
compiling such object code except as allowed by local legislation
implementing Article 6 of the EC Software Directive and only to the
extent necessary to achieve interoperability of an independently created
program with other programs, and procure a written undertaking from its
sublicensees to do the same. Such end users shall be specifically
prohibited from copying, adapting or reverse compiling such object code
for the purpose of error correction.
3.2 IAT grants to TI a worldwide transferable, non-assignable non-exclusive
fully paid up license to use, modify, compile or otherwise develop as
applicable software programs which may be original or derivative with
respect to the IAT Products, to incorporate object code versions of such
software programs in its MVP Software Library, and to make, have made,
use, sell and otherwise dispose of hardware and software products
incorporating object code versions of such software programs.
3.2.1 TI may also sublicense third parties to use, modify, compile or otherwise
develop as applicable software programs which may be original or
derivative with respect to the IAT Products, and to make, have made, use,
sell and otherwise dispose of hardware and software products
incorporating object code versions of such software programs, provided
that TI first executes with each such third party a software license
agreement substantially similar to this Agreement. Such third parties
shall not have the right to sublicense the IAT products.
3.2.2 TI undertakes to reproduce on all original or derivative software
programs of the IAT Products, all copyright notices exactly as and where
they appear on the IAT Products, or as closely as possible where a change
in media precludes exact reproduction, and to procure a written
undertaking from its sublicensees to do the same.
3.2.3 Except as may be required pursuant to any sublicense granted by TI under
Section 3.2.1 above, TI undertakes to maintain any source code of the IAT
Products as confidential, and not to disclose or otherwise make available
such source code to any other party, and to procure a written undertaking
from its sublicensees to do the same. The obligations of this provision
shall survive termination or expiration of this Agreement.
- 2 -
3.2.4 TI shall ensure that all end users are restricted by written agreement
from copying, distributing, translating, adapting, arranging or otherwise
altering any object code versions of the IAT Products, or reverse
compiling such object code except as allowed by local legislation
implementing Article 6 of the EC Software Directive and only to the
extent necessary to achieve interoperability of an independently created
program with other programs, and procure a written undertaking from its
sublicensees to do the same. Such end users shall be specifically
prohibited from copying, adapting or reverse compiling such object code
for the purpose of error correction.
3.3 TI and IAT shall ensure that the preprinted agreements accompanying
Licensed Products supplied to end users include provisions disclaiming
all product warranties either express or implied, and any liability for
patent infringement and indirect, incidental or consequential damages, to
the extent permitted under local law. End users shall be required to
comply with United States and other applicable export control
regulations.
4. CONSIDERATION
4.1 TI and IAT understand and agree that the cross licenses granted herein
represent full and fair consideration one for the other, and that no
license fees or royalty payments shall be payable by either party to the
other in respect thereof.
5. TERM AND TERMINATION
5.1 This Agreement shall be for ten (10) years beginning __________ 1994
unless terminated sooner as provided for herein. This Agreement may be
extended for additional one (1) year periods thereafter by mutual written
agreement of the parties.
5.2 Either party may terminate this Agreement at any time upon written notice
to the other in the event that:
A. The other party is in material or persistent breach of any term of
this Agreement and such breach is not corrected within sixty (60)
days from written notice thereof.
B. The other party shall be or become insolvent; or
C. The other party admits in writing its inability to pay its debts
as they mature; or
D. The other party shall make an assignment (other than working
capital financing) for the benefit of creditors; or
E. There are instituted by or against the other party judicial or
administrative proceedings in bankruptcy or under any insolvency
law or for reorganization, receivership or dissolution; or
- 3 -
F. The other party shall have a substantial change in ownership such
as to create a material conflict of interest.
5.3 Upon termination of this Agreement for either of the reasons specified in
Sections 5.2.A or 5.2.F, each party shall return and/or certify
destruction of all copies of the Licensed Products belonging to the other
party and all original or derivative versions of such Licensed Products
in source code or object code in its possession. Such termination shall
not affect the rights and obligations of existing sublicensees and end
users.
5.4 Upon termination of this Agreement for any of the reasons specified in
Sections 5.2.B through 5.2.E, the defaulting party hereby assigns joint
ownership and unrestricted rights in the Licensed Products of the
defaulting party, to the other party, including the right to license such
Licenced Products to third parties without accounting to the other.
6. TI ENGINEERING SUPPORT
6.1 TI shall assign an engineer to IAT's site for three (3) months beginning
June 1, 1194, free of charge to IAT, to collaborate with IAT in the
development and merging of the Licensed Products.
6.2 IAT agrees to provide suitable office space for the TI engineer and to
provide telephone, fax, E-mail and other necessary support services free
of charge to TI.
6.3 IAT shall make known to TI's engineer upon his arrival at IAT's site, any
regulations it may have relating to conduct, safety and security.
6.4 IAT represents that it maintains adequate Worker's Compensation insurance
for injury (including death), howsoever caused, covering TI's engineer
while working at IAT's site. IAT will provide a certificate of insurance
representing such coverage to TI, upon request.
7. MAINTENANCE SUPPORT
7.1 For a period of one (1) year from delivery of the TI Products to IAT, TI
will at no charge to IAT, verify and correct errors in the TI Products
that are reported by IAT. The time to correct verified errors shall be
mutually agreed by the parties on a case-by-case basis. TI shall furnish
IAT with the appropriate reproduction media or written instructions or
documentation necessary to correct the error.
7.2 Likewise, for a period of one (1) year from delivery of the IAT Products
to TI, IAT will at no charge to TI, verify and correct errors in the IAT
Products that reported by TI. The time to correct verified errors shall
be mutually agreed by the parties on a case-by-case
- 4 -
basis. IAT shall furnish TI with the appropriate reproduction media or
written instructions or documentation necessary to correct the error.
8. AVAILABILITY OF LICENSED PRODUCTS
Estimated delivery dates for the Licensed Products are specified in
Schedules 1 and 2. Both parties shall use reasonable endeavours to
deliver the Licensed Products on the dates specified. The parties agree
to review and discuss any slippages which may occur with a view to
defining appropriate corrective measures, however, neither party shall be
liable for any loss or expense (consequential or otherwise) if it fails
to meet a scheduled delivery date for any reason.
9. WARRANTY AND WARRANTY DISCLAIMERS
9.1 Nothing contained herein shall constitute a warranty or representation by
TI to maintain production of the hardware with which the TI Products are
to be used.
9.2 The Licensed Products are supplied 'As Is'. Neither party warrants that
the functions contained in the Licensed Products will be free from error
or will meet the other party's specific requirements, or that of any
sublicensees or end users. Neither party shall have any responsibility or
liability for errors or product malfunction resulting from the other
party's use or modification of the Licensed Products or the use or
modifications of the Licensed Products by other parties. Each party
assumes complete responsibility for its decisions made or actions taken,
based on information obtained using the Licensed Products. Any statements
made by one party to the other concerning the utility of the Licensed
Products are not to be construed as express or implied warranties.
9.3 THE FOREGOING WARRANTY IS IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR
IMPLIED INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
10. PATENT INFRINGEMENT DISCLAIMER
Nothing contained in this Agreement shall be construed as a warranty or
representation that any use of the Licensed Products will be free from
infringement of third party rights or, an agreement to bring or prosecute
actions or suits against third parties for infringement of any of the
rights licensed herein, or conferring any rights to bring or prosecute
actions or suits against third parties for infringement.
- 5 -
11. UPDATES AND NEW RELEASES
The licenses granted pursuant to this Agreement shall be deemed to
include and extend to any updates or new releases to the Licensed
Products which either party may choose in its sole discretion to supply
to the other from time to time.
12. LIMITATION OF LIABILITIES
NEITHER PARTY SHALL BE LIABLE FOR INDIRECT, INCIDENTAL OR CONSEQUENTIAL
DAMAGES WHETHER SUCH DAMAGES ARE ALLEGED AS A RESULT OF TORTIOUS CONDUCT
OR BREACH OF CONTRACT OR OTHERWISE, EVEN IF THE OTHER PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. SUCH EXCLUDED DAMAGES SHALL
INCLUDE BUT SHALL NOT BE LIMITED TO COST OF REMOVAL AND REINSTALLATION OF
GOODS, LOSS OF GOODWILL, LOSS OF PROFITS, LOSS OF USE OR DATA,
INTERRUPTION OF BUSINESS OR OTHER ECONOMIC LOSS.
13. FORCE MAJEURE
Neither party shall be liable, wholly or in part, for non-performance or
a delay in performance of its obligations under this Agreement, if due to
contingencies or causes beyond the reasonable control of the party,
including but not limited to: flood, wind, hurricane, tornado, earth
quake, explosion, or other similar catastrophe; hostilities, restraint of
rulers or people, civil commotion, act of terrorism, strike, labor
dispute, blockade or embargo; lack or failure of transportation, shortage
of suitable parts, fuel materials, or labor; or any act of nature, fires,
accident, epidemic or quarantine restrictions.
14. ASSIGNMENT
This Agreement may not be transferred or assigned in any form by either
party without the prior written consent of the other party, executed by a
duly authorized representative. Any unauthorized transfer or assignment
shall be void.
15. APPLICABLE LAW AND JURISDICTION
It is expressly agreed that the validity and construction of this
Agreement, and performance hereunder, shall be governed by the laws of
England and that the courts of England, to whose jurisdiction the parties
hereby submit, shall have exclusive jurisdiction to hear all disputes
arising herefrom.
- 6 -
16. WAIVER
Consent by either party to, or waiver of, a breach by the other party,
whether express or implied, shall not constitute a consent to, waiver of,
or excuse for any other different or subsequent breach.
17. SEVERABILITY
If any provision, or part of any provision of this Agreement, or the
Attachments hereto, is invalidated by operation of law or otherwise, the
provision or part will to that extent be deemed omitted and the remainder
of this Agreement, or applicable Attachment will remain in full force and
effect. Should the case arise, the parties agree that such invalidated
provision or part thereof shall be replaced by a similar but legally
valid provision which is as close as possible in commercial effect to the
invalidated provision or part thereof.
18. EXPORT CONTROL COMPLIANCE
TI and IAT undertake that they will not knowingly (1) export or reexport,
directly or indirectly, any product or technical data (as defined by the
U.S. Export Administration Regulations) or any controlled products
restricted by other applicable national regulations, including software,
received from the other party under this Agreement, (2) disclose such
technical data for use in, or (3) export or reexport, directly or
indirectly, any direct product of such technical data, or of such other
controlled products, including software, any destination to which such
export or reexport is restricted or prohibited by U.S. or non-U.S. law,
without obtaining prior authorization from U.S. Department of Commerce
and other competent government authorities to the extent required by
those laws.
19. PUBLICITY
Neither party shall publicly announce or disclose the existence of this
Agreement or its contents without the prior written consent of the other
party. This clause shall survive the expiration or termination of this
Agreement.
20. HEADINGS
The headings in this Agreement are for the convenience of the parties
only and shall not be considered in the construction or interpretation of
this Agreement.
- 7 -
21. NOTICES
All notices made or required to be given under this Agreement shall be in
writing and shall be sent by registered mail to the addresses indicated
below with notice of receipt and shall be effective on receipt thereof:
IAT AG: Geschaeftshaus Wasserschloss Xxxxxxxxxxx 00
0000 Xxxxxxxxx-Xxxxx
Xxxxxxxxxxx
Texas Instruments France: 821 avenue Xxxx Xxxxx
00000 Xxxxxxxxxx Xxxxxx
Xxxxxx
22. COMPLETE AGREEMENT
22.1 The parties understand and agree that the Cross License Agreement
beginning September 1, 1994, previously executed by the parties, is
hereby cancelled.
22.2 This Agreement and its Schedules are the complete and exclusive statement
of the Agreement between the parties, which supersedes all proposals or
prior agreements, oral or written, and all other communications between
the parties relating to the subject matter of this Agreement and any of
its Schedules. No addition to or modification of this Agreement shall be
binding upon either party unless reduced in writing and duly executed by
the parties to this Agreement.
- 8 -
23. SUMMARY OF SCHEDULES
The following are attached hereto and incorporated by reference herein.
Schedule 1 -- TI Products and Availability
Schedule 2 -- IAT Products and Availability
Agreed: Texas Instruments France Agreed: IAT AG
By By
Name Name
Title Title
Date Date
- 9 -
SCHEDULE 1
TI PRODUCTS AND DELIVERY
Source Code Estimated delivery
----------- ------------------
JPEG encode and decode 1Q 94
H.261 encode and decode July 94
G.728 encode and decode June 94
G.722 encode and decode July 94
Documentation
TI standard documentation
Note
1. Delivery of H.261 to IAT shall be contingent on the prior or concurrent
delivery of G.711 to TI.
- 10 -
SCHEDULE 2
IAT PRODUCTS AND DELIVERY
Source Code Estimated delivery
----------- ------------------
H.221, H.242, H.230 preliminary version July 94
H.221, H.242, H.230 final version October 94
Documentation
To the same standard as TI's documentation of the H261 and JPEG software
algorithms.
Note
1. 'Preliminary' as mentioned above indicates a version of the software which is
functional to the extent of allowing terminal to terminal videoconferencing for
demonstration purposes, but which may not be fully functional to the full extent
of the standard specifications.
- 11 -
Transfer of source codes between Texas Instruments and IAT
--------------------------------------------------------------------------------
On August 25, 1994, IAT transfers to Texas Instruments the actual status of the
source codes for H.221, H.242, H.230 and G.711. At the same time Texas
Instruments transfers the actual status of the source codes for H.261, G.728,
G.722 and JPEG to AIT. The following clauses will be applicable:
1. MVP CROSS LICENSE AGREEMENT, signed by IAT on August 8, 1994.
2. Texas Instruments informs all of its concerned staff about the content of
above-mentioned MVP CROSS LICENSE AGREEMENT, above all about the treatment
of the source codes (i.e. no passing-on of the source codes).
3. IAT informs all of its concerned staff about the content of above-mentioned
MVP CROSS LICENSE AGREEMENT, above all about the treatment of the source
codes (i.e. no passing-on of the source codes).
The same is applicable for all further transfers of source codes according to
the MVP CROSS LICENSE AGREEMENT.
Agreed: Texas Instruments Agreed: IAT AG
By: By:
Name: Name:
Date: Date:
- 12 -
