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EXHIBIT 10.6
TECHNOLOGY CROSS LICENSE AGREEMENT
This TECHNOLOGY CROSS LICENSE AGREEMENT (this "Agreement") is made and
entered into this 1st day of January, 1999 (the "Effective Date"), by and
between Networks Associates Technology Corp (hereinafter referred to as "NAI"),
a corporation organized and existing under the laws of the State of Delaware,
Networks Associates, Inc., a corporation organized and existing under the laws
of the State of Delaware, doing business in the name of Network Associates,
Inc., and having its principal place of business at 0000 Xxxxxxx Xxxxxx, Xxxxx
Xxxxx, XX 00000 ("Parent"), and XxXxxx.xxx, a corporation organized and existing
under the laws of the State of Delaware and having its principal place of
business at 0000 Xxxxxx Xxxxxx, Xxxxx Xxxxx XX 00000 ("XxXxxx.xxx").
RECITALS
WHEREAS, the parties have determined to separate XxXxxx.xxx into a
separate, publicly traded company; and
WHEREAS, the parties desire that XxXxxx.xxx utilize NAI's copyrights,
trademarks, patents, trade secrets and proprietary rights ("Intellectual
Property Rights"), and that NAI utilize XxXxxx.xxx's Intellectual Property
Rights;
WHEREAS, the parties agree that in consideration of the rights granted
each party will agree to limit the party's field of business within the scope of
a permitted business purpose; and
WHEREAS, as a material inducement for XxXxxx.xxx to enter into this
Agreement Parent has agreed to act as the guarantor of all NAI's duties,
obligations and liabilities hereunder;
NOW, THEREFORE, IN CONSIDERATION OF THE FOREGOING AND THE MUTUAL
COVENANTS AND AGREEMENTS CONTAINED HEREIN, THE PARTIES HERETO HEREBY AGREE AS
FOLLOWS:
DEFINITIONS
1.1 "Confidential Information" means all documents, disclosures and
written or oral statements disclosed by a party (the "Disclosing Party") to the
other party (the "Receiving Party") shall be deemed "Confidential Information"
unless clearly marked otherwise or if the information in such documents,
disclosures or statements is non-confidential pursuant to Section 8 below.
Except as provided herein, "Confidential Information" shall include, without
limitation, proprietary, technical, marketing, operating, performance, cost,
business pricing policies, programs, inventions, discoveries, trade secrets,
techniques, processes, computer programming techniques, and all record bearing
media containing or disclosing such information and techniques disclosed
pursuant to this Agreement. Any source code or unlinked object
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files or modules disclosed by the Disclosing Party to the Receiving Party shall
be deemed "Confidential Information" unless it is clearly and in writing marked
as "Non-Confidential."
1.2 "Derivative Works" means a derivative work within the meaning of
the Copyright Act of 1976 (as amended) including, without limitation, any
modification, revision, port, translation, abridgment, condensation or expansion
of either the XxXxxx.xxx Licensed Product or the NAI Licensed Product (each a
"Licensed Product" as the case may be in context), or any form in which the
Licensed Product is recast, transferred, transformed or adapted, which, if
prepared without the rights granted under this Agreement, would result in
copyright infringement.
1.3 "End User" means a sub-licensor of a software product who
acquires the right to use the software product under a License for single-node,
individual-consumer home office or single-node, individual-small office use only
and not for resale or multi-user usage.
1.4 "XXXX(s)" means the End User license agreement(s) to be provided
with each Licensed Product in accordance with the terms of this Agreement.
1.5 "Evaluation" means any distribution of a software product
whereby the user is reviewing, testing or evaluating the software and has a
limited right of use subject to a maximum sixty (60) day non-recurring limited
use XXXX.
1.6 "License" means any End-User sub-license whether subscription or
perpetual.
1.7 "Licensee" or "Licensor" means for purposes of this Agreement,
depending upon the context of use, either NAI or XxXxxx.xxx shall be identified
as the "Licensee" or "Licensor" of either the NAI Licensed Products or the
XxXxxx.xxx Licensed Products.
1.8 "XxXxxx.xxx Copyright Claim" means the rights under the
Copyright Act of 1976 (as amended) in and to any XxXxxx.xxx Licensed Product,
any Derivative Work thereof created by or for XxXxxx.xxx, any Derivative Work
created by or for XxXxxx.xxx of an NAI Licensed Product and any work included
therein within the meaning of the Copyright Act of 1976 (as amended), including,
without limitation, any original software, in source or binary format.
1.9 "XxXxxx.xxx Permitted Business Purpose" means the Sale or
Licensing of software products to or software services to Permitted OEMs (as
defined in and limited by the license granted in Section 2.2 (a)), and to End
Users solely via the Internet .
1.10 "XxXxxx.xxx Licensed Product" means any software product, in
Source Code or Object Code form, purchased, produced or developed using any
method within the scope of a XxXxxx.xxx Copyright Claim.
1.11 "XxXxxx.xxx Patent Rights" means all patent rights arising out
of all patent applications and all U.S and foreign patent rights issued,
transferred or assigned to XxXxxx.xxx, or any subsidiaries, partnerships or
joint ventures of XxXxxx.xxx (provided that with respect to such subsidiary,
partnership or joint venture (i) XxXxxx.xxx and/or its affiliates own more than
51% of the voting control of such subsidiary, partnership or joint venture; or
(ii) on the date it the patent is issued , products which are the fundamental
object of protection by the patent are competitive with
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then existing NAI products), during the Term of this Agreement and all
divisions, continuations, continuations-in-part, and substitutions thereof; all
foreign patent applications corresponding to the preceding applications; and all
U.S. and foreign patents issuing on any of the preceding applications, including
extensions, reissues, and re-examinations.
1.12 "XxXxxx.xxx Trademarks" means the trademarks, trade dress, logos
and designs from time to time owned by XxXxxx.xxx.
1.13 "XxXxxx.xxx Site" means any XxXxxx.xxx owned or licensed site(s)
on the World Wide Web.
1.14 "NAI Copyright Claim" means the rights under the Copyright Act
of 1976 (as amended) in and to any NAI Licensed Product, any Derivative Work
thereof created by or for NAI, any Derivative Work of a XxXxxx.xxx Licensed
Product created by or for NAI, and any work included therein within the meaning
of the Copyright Act of 1976 (as amended), including, without limitation, any
original software, in source or binary format.
1.15 "NAI Permitted Business Purpose" means any business purpose
other than the XxXxxx.xxx Permitted Business Purpose. NAI Permitted Business
Purpose includes, but is not limited to, (i) enterprise-wide, multi-user
Licensing, subscription or Sale of software products or services to third party
businesses through any method of distribution including the World Wide Web, and
(ii) Licensing, subscription or Sale of software products or services to End
Users that is distributed or initiated by any method other than the Internet.
1.16 "NAI Licensed Product" means any software product, in Source
Code or Object Code form, purchased, produced or developed using any method
within the scope of a NAI Copyright Claim.
1.17 "NAI Patent Rights" means all U. S. and foreign patent rights
issued, transferred or assigned to NAI, or any subsidiaries (other than
XxXxxx.xxx), partnerships or joint ventures of NAI (provided that with respect
to such subsidiary, partnership or joint venture (i) NAI and/or its affiliates
own more than 51% of the voting control of such subsidiary, partnership or joint
venture; or (ii) on the date it the patent is issued , products which are the
fundamental object of protection by the patent are competitive with then
existing XxXxxx.xxx products), during the Term of this Agreement and all
divisions, continuations, continuations-in-part, and substitutions thereof; all
foreign patent applications corresponding to the preceding applications; and all
U.S. and foreign patents issuing on any of the preceding applications, including
extensions, reissues, and re-examinations.
1.18 "NAI Trademarks" means the trademarks, trade dress, logos and
designs from time to time owned by NAI.
1.19 "Net Revenue" means actually recognized revenue derived from any
subscription or service for the Sale or License of any NAI Licensed Product by
XxXxxx.xxx, sold as a stand alone product or bundled with other NAI Licensed
Products, XxXxxx.xxx Licensed Products or products, or third party products or
services, less any third party, non-NAI royalty payments due and owing, accrued
or recognized, as reasonably determined by XxXxxx.xxx.
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1.20 "Object Code" means the binary machine-executable form of
computer software programming code, including scripts and HTML pages.
1.21 "Patent Rights" means the XxXxxx.xxx Patent Rights or the NAI
Patent Rights, as applicable.
1.22 "Sale" of a product, or to "Sell" a product means the sale,
license, lease, or other transfer or disposition of that product, or to commence
productive use of such product, provided, however, that in no event will Sell or
Sale be deemed to authorize the "first sale" within the meaning of the Copyright
Act of 1976 (as amended) by a person or entity who is not the holder of the
copyright and/or patent right for such product.
1.23 "Source Code" means the human-readable form of computer
programming code and compiled but unlinked object code or unlinked object
modules.
1.24 "Term" has the meaning set forth in Section 9.1.
1.25 "Upgrades" means any update, enhancement, new release or new
version of a software product of a party which (i) is prepared by or for such
party, (ii) is substantially similar to such software product, (iii) is
generally released by such party, and (iv) is marketed under the same product
number and nomenclature as such software product, including, without limitation,
major and minor upgrades to such product, and any functional supersets thereto.
SECTION 2.
TECHNOLOGY LICENSES
2.1 Patent License Grants.
(a) To XxXxxx.xxx. Subject to the terms and conditions of
this Agreement, during the Term NAI hereby grants XxXxxx.xxx a worldwide,
nonexclusive, nontransferable license under the NAI Patent Rights to make, have
made, import, use, offer for Sale, Sell or License NAI Licensed Products alone
or bundled with other products solely for the XxXxxx.xxx Permitted Business
Purpose.
(b) To NAI. Subject to the terms and conditions of this
Agreement, during the Term XxXxxx.xxx hereby grants NAI a non-exclusive,
non-transferable license under the XxXxxx.xxx Patent Rights to make, have made,
import, use, offer for Sale, Sell or License XxXxxx.xxx Licensed Products alone
or bundled with other products and for the NAI Permitted Business Purpose.
(c) Protection. The Licensee under this Section 2.1 agrees
to xxxx all of the products licensed hereunder that the licensee Sells pursuant
to this Agreement in accordance with the applicable statute or regulations
relating to patent marking in the country or countries of manufacture and sale
thereof.
(d) Ownership. At all times the owner of the patent rights
licensed hereunder will retain ownership of its patent rights and, subject to
the terms hereof, may use and commercialize its own patent rights itself or with
third parties.
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2.2 Software License Grants.
(a)(a) To XxXxxx.xxx. Subject to the terms and conditions of
this Agreement, during the Term NAI grants to XxXxxx.xxx the following
worldwide, nonexclusive (except to the limited extent set forth in Section 2.3,
in which it is exclusive), royalty-bearing and nontransferable licenses, under
NAI's copyrights and trade secrets in and to the NAI Licensed Products and
solely for the XxXxxx.xxx Permitted Business Purpose:
(i) To distribute the then current release of the
NAI Licensed Products (A) alone or bundled with XxXxxx.xxx Licensed Products or
other products; and to reproduce and use copies of the NAI Licensed Products
therefor; or (B) to third party OEMs for the sole purpose of bundling the NAI
Licensed Products with such third party's products and distributing the bundled
products to End Users ("Permitted OEMs").
(ii) To use, manufacture, reproduce, incorporate,
build, integrate, package or repackage NAI Licensed Products media, alone or
bundled with XxXxxx.xxx Licensed Products or other products.
(iii) To sublicense the NAI Licensed Products to End
Users, alone or bundled with XxXxxx.xxx Licensed Products or any third party
products.
(iv) To distribute and use NAI Licensed Products for
help desk, development testing, demonstration and internal use purposes on
XxXxxx.xxx's computers for technical support, service, training, and sales
promotion, and to copy NAI Licensed Products for such purposes without charge.
(v) To use, reproduce and prepare Derivative Works
of the NAI Licensed Products and to use, reproduce, manufacture, have
manufactured, distribute and sublicense such Derivative Works.
(b) To NAI. Subject to the terms and conditions of this
Agreement, XxXxxx.xxx grants to NAI the following worldwide, non-exclusive
(except to the limited extent as set forth in Section 2.3, in which it is
exclusive), royalty-bearing and nontransferable licenses, under XxXxxx.xxx's
copyrights and trade secrets in and to the XxXxxx.xxx Licensed Products and
solely for the NAI Permitted Business Purpose :
(i) To distribute the XxXxxx.xxx Licensed Products:
(A) alone or bundled with NAI Licensed Products or other products; and to
reproduce and use copies of the XxXxxx.xxx Licensed Products therefor; and (B)
to third party OEMs for the purpose of bundling the XxXxxx.xxx Licensed Products
with such third party's products and distributing the bundled products to End
Users.
(ii) To manufacture, reproduce, incorporate, build,
integrate, package or repackage XxXxxx.xxx Licensed Products media, alone or
bundled with NAI Licensed Products or any third party products.
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(iii) To sublicense XxXxxx.xxx Licensed Products to
End Users, alone or bundled with NAI Licensed Products or other products.
(iv) To distribute and use XxXxxx.xxx Licensed
Products for help desk, development testing, evaluation, demonstration and
internal use purposes on NAI's computers for technical support, service,
training, and sales promotion, and to copy XxXxxx.xxx Licensed Products for such
purposes without charge.
(c) To use, reproduce and prepare Derivative Works of the
XxXxxx.xxx Licensed Products and to use, reproduce, manufacture, have
manufactured, distribute and sublicense such Derivative Works.
2.3 Exclusivity.
(a) During the term of this Agreement, the rights granted by
NAI pursuant to Section 2.2(a) shall be exclusive within the scope of the
XxXxxx.xxx Permitted Business Purpose. Such exclusive shall extend to the
actions of NAI. Further, NAI shall not grant to any third party any of the
rights enumerated in Section 2.2 for use within the XxXxxx.xxx Permitted
Business Purpose.
(b)(b) During the term of this Agreement, the rights granted by
XxXxxx.xxx pursuant to Section 2.2(b) shall be exclusive within the scope of
the NAI Permitted Business Purpose. Such exclusive shall extend to the actions
of XxXxxx.xxx. Further, XxXxxx.xxx shall not grant to any third party any of the
rights enumerated in Section 2.2 for use within the NAI Permitted
Business Purpose.
2.4 User Documentation. Subject to the terms and conditions of this
Agreement, NAI hereby grants to XxXxxx.xxx a worldwide, nonexclusive,
nontransferable license, under NAI's copyrights in and to the User
Documentation, to use and prepare Derivative Works of the User Documentation and
to reproduce and distribute the User Documentation and Derivative Works thereof
prepared pursuant to this Section 2.4, to End Users in connection with the
permitted distribution of NAI Licensed Products.
2.5 Bugs Reports and Bug Fixes. Each party as Licensee will from
time to time provide to the Licensor available information regarding bugs or
errors in the Licensor's products, and with any fixes or corrections to such
bugs or errors that it may develop for such products in Source Code form. Upon
delivery, such bug fixes and error corrections shall be considered "NAI Licensed
Products" or "XxXxxx.xxx Licensed Products" as applicable for purposes of this
Agreement. The Licensee will include with such Source Code deliveries a
description of the bug or error as available.
2.6 Enhancements; Derivative Works. Each party will retain all
right, title and interest in and to any modifications or Derivative Works it
creates with respect to its own or the other party's Licensed Products. The
creating party will promptly provide to the other party any such modifications
to or Derivative Works (in Source Code form) arising out of the other party's
Licensed Products. Upon delivery, such modifications and Derivative Works shall
be and hereby are licensed to the other party pursuant to the terms of Section
2.2(a) or (b) as appropriate; provided, however the Licensee under this Section
2.6 shall pay a royalty with respect to such modifications of Derivative Works
as set forth in
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Section 6. Except as expressly set forth herein the respective party as Licensor
shall not have a duty or obligation to support the Derivative Works provided to
the other party as Licensee.
2.7 No Implied Rights. Only the licenses granted pursuant to the
express terms of this Agreement shall be of any legal force or effect. No other
license rights shall be granted or created by implication, estoppel or
otherwise.
2.8 Mutual Exclusive Use. Nothing in this Agreement shall be deemed
to prohibit either party from selling, using, marketing, distributing products
or technology, or otherwise engaging in any commercial activities outside their
respective Permitted Business Purpose, other than with respect to such
activities involving the XxXxxx.xxx Licensed Products and NAI Licensed Products,
respectively. Notwithstanding the foregoing, for the Term of this Agreement,
each party agrees that it shall not market, license, sell or distribute to any
third party any products that, at the time such activities commenced,
substantially replicated the functionality of and was competitive with any
product(s) that the other party generally made available to its customers.
SECTION 3.
DELIVERY; DISTRIBUTION
3.1 Notice/Shipment. NAI shall deliver master disks or CD-ROMs
containing the NAI Licensed Products promptly after the Effective Date.
Thereafter, within thirty (30) days of either party developing any XxXxxx.xxx
Licensed Products or NAI Licensed Products hereunder or Upgrades thereto, such
party shall notify the other party of such development and shall promptly
deliver master disks or CD-ROMs containing the XxXxxx.xxx Licensed Products or
the NAI Licensed Products to the other party in Source Code and Object Code
form.
3.2 Packaging and Distribution. Software products of either party
may be packaged and distributed by each respective party in any format, provided
such packaging and distribution is in conformity with the party's respective
permitted business purpose.
3.3 XXXX. In all cases, XxXxxx.xxx shall distribute each Licensed
Product to End Users with the then current XXXX provided by NAI for each such
Licensed Product, a copy of which is attached hereto as Exhibit D; provided,
however, the parties will negotiate in good faith to determine the level of end
user support granted in each such XXXX for a period of sixty (60) days following
the Effective Date of this Agreement. If the parties are unable to agree on
support provisions after such sixty (60)-day period, the support provision shall
be a one-year term of maintenance and support including telephone support and
updates generally provided by the parties to their end user customers. NAI may
from time to time modify or replace its XXXX, subject to XxXxxx.xxx's approval
of the support provisions. NAI shall consult with XxXxxx.xxx regarding any other
such modification or replacement as soon as practicable, and to consider
reasonable comments made by XxXxxx.xxx.
SECTION 4
PROPRIETARY RIGHTS
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4.1 NAI Proprietary Rights. Title to and ownership of all copies of
the NAI Licensed Products, whether in machine-readable or printed form, and all
Intellectual Property Rights therein, and all Derivative Works thereof created
by or on behalf of NAI and all Intellectual Property Rights therein, are and
shall remain the exclusive property of NAI. XxXxxx.xxx shall not take any action
to jeopardize, limit or interfere in any manner with NAI's ownership of and
rights with respect to the NAI Licensed Products. XxXxxx.xxx shall have only
those rights in or to the NAI Licensed Products granted to it pursuant to this
Agreement.
4.2 XxXxxx.xxx Proprietary Rights. Title to and ownership of all
copies of the XxXxxx.xxx Licensed Products, whether in machine-readable or
printed form, and all Intellectual Property Rights therein, and all Derivative
Works thereof created by or on behalf of XxXxxx.xxx and all Intellectual
Property Rights therein, are and shall remain the exclusive property of
XxXxxx.xxx. NAI shall not take any action to jeopardize, limit or interfere in
any manner with XxXxxx.xxx's ownership of and rights with respect to the
XxXxxx.xxx Licensed Products. NAI shall have only those rights in or to the
XxXxxx.xxx Licensed Products granted to it pursuant to this Agreement.
4.3 Proprietary Notices. Neither party shall remove or alter any
copyright or other proprietary patent notices of the other party, appearing on
or in copies of any of the respective Licensed Products licensed from the other
party, including the NAI Licensed Products delivered to XxXxxx.xxx by NAI or the
XxXxxx.xxx Licensed Products delivered to XxXxxx.xxx by NAI. Each portion of any
such material reproduced by such party shall include the copyright or patent
notice or notices appearing in or on the corresponding portion of such materials
as delivered by the other party. Notwithstanding the foregoing, at Licensing
NAI's election, XxXxxx.xxx shall refrain from including an NAI copyright notice
in the published version of the user documentation for the XxXxxx.xxx Licensed
Products.
SECTION 5.
INTELLECTUAL PROPERTY PROSECUTION AND ENFORCEMENT
5.1 Licensee's Responsibilities. Each party as Licensor hereunder
shall have the sole right to control the preparation, filing, prosecution and
maintenance with respect to its own Patent Rights, and any interference or
opposition proceeding relating thereto, using patent counsel of its choice.
5.2 Cross License Grants.
(a) NAI hereby grants to XxXxxx.xxx, subject to the terms
and conditions set forth herein, the non-exclusive, non-transferable right and
license to use the NAI Trademarks (i) to design and have designed the NAI
Licensed Products, (ii) to manufacture and have manufactured the NAI Licensed
Products, (iii) to import, distribute, display and Sell the NAI Licensed
Products, and (iv) to advertise, promote and market the NAI Licensed Products.
(b) XxXxxx.xxx hereby grants to NAI, subject to the terms
and conditions set forth herein, the non-exclusive, non-transferable right and
license to use the XxXxxx.xxx Trademarks (i) to design and have designed the
XxXxxx.xxx Licensed Products, (ii) to manufacture and have manufactured the
XxXxxx.xxx Licensed Products, (iii) to import, distribute, display and Sell the
XxXxxx.xxx Licensed Products, and (iv) to advertise, promote and market the
XxXxxx.xxx Licensed Products.
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5.3 Rights to Trademarks. Each party's use of the other party's
trademarks hereunder shall inure exclusively to the benefit of the Licensor, and
the Licensee shall not acquire or assert any rights therein. The Licensee will
not challenge the Licensor's ownership of or the validity of the Licensor's
trademarks or any application for registration thereof throughout the world. The
Licensee agrees that it shall not during the Term of this Agreement or
thereafter, register or apply to register any of the Licensor's trademarks, or
any similar or derivative xxxx, anywhere in the world. The Licensee agrees,
during the Term of this Agreement and thereafter, never to contest the rights of
the Licensor in the Licensor's trademarks.
5.4 Protection of Trademarks. The Licensee shall assist the
Licensor, at Licensor's request and expense, in protection and maintenance of
the Licensor's Trademarks. In connection therewith, the Licensee shall, without
limitation, execute and deliver to the Licensor in such form as it may
reasonably request, all instruments necessary to (i) effectuate copyright and
trademark protection, (ii) record the Licensee as a registered user of any of
the Licensor's trademarks pursuant to this Agreement, or (iii) cancel any such
registration. If the Licensor fails or refuses to take reasonable steps to
procure, protect and maintain the Licensor's intellectual property rights in the
Licensor's trademarks, the Licensee may, at Licensor's expense, take reasonable
steps on the Licensor's behalf. The Licensee will use the Licensor's trademarks
in compliance with all applicable legal requirements, and the Licensee shall
cause to appear on all of Licensor's licensed products, and all materials, such
legends, markings and notices as may be required by applicable law.
5.5 Quality Standards. The Licensee undertakes that the design and
development of the Licensor's products as well as all advertising, promotions or
other materials of any and all types prepared in connection with the Licensor's
trademarks and the Licensor's licensed products shall be of a style, appearance
and quality commensurate with the Licensee's other products. All use of the
Licensor's trademarks and Licensor's Licensed Products shall be subject to
approval by the Licensor for conformity with the Licensor's then-current
trademark guidelines. XxXxxx.xxx shall use the "VirusScan" trademark or such
other of NAI's trademarks as NAI directs in connection with any virus detection
and cleaning technology provided by NAI hereunder (the "NAI Virus Xxxx"). Any
bundled product of XxXxxx.Xxx that includes any virus detection and cleaning
technology provided by NAI hereunder shall contain a reasonably prominent NAI
Virus Xxxx. The Licensor may at any time upon reasonable notice inspect any use
of the Licensor's Trademarks, even if previously approved. If the Licensor
determines that the Licensee is using the Licensor's Trademarks improperly, the
Licensor shall notify the Licensee, and the Licensee shall use its best efforts
to remedy the improper use within two (2) business days following receipt of
such notice. Licensee's use of the Licensor's Trademarks in a manner
inconsistent with this Agreement or inconsistent with any trademark guidelines
supplied by the Licensor to the Licensee shall constitute a Dispute within the
meaning of Section 13 hereof. The Licensee shall not harm, misuse or bring into
disrepute the Licensor's Trademarks.
5.6 Enforcement. If either party as Licensee hereunder becomes aware
that any Intellectual Property Rights of the other party are being or have been
infringed by any third party, Licensee shall promptly notify the Licensor in
writing describing the facts relating thereto in reasonable detail.
5.7 Infringement Claims.
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(a) Indemnification by Licensor. Licensor shall defend,
indemnify and hold harmless the Licensee and its officers, directors, employees,
shareholders, customers, agents, successors and assigns from and against any and
all loss, damage, settlement or expense, including legal expenses and costs of
investigation, as incurred ("Losses"), resulting from or arising out of any
claim in the United States or in any country which is a signatory to the Berne
Convention on Copyright which alleges that any licensed product provided to the
Licensee hereunder or the use thereof infringes upon, misappropriates or
violates any patents, copyrights, trademarks or trade secret rights or other
proprietary rights of persons, firms or entities who are not parties to this
Agreement. As a condition to such defense and indemnification, the Licensee will
provide Licensor with prompt written notice of the claim and permit Licensor to
control the defense, settlement, adjustment or compromise of any such claim,
provided the Licensee shall reasonably cooperate in the defense of such action
at Licensor's expense. No settlement that prevents the Licensee from continuing
to use the licensed product will be made without the Licensee's prior written
consent unless the Licensor procures for the Licensee the right to continue
using the licensed product, or replaces or modifies the licensed product so that
it becomes non-infringing. The Licensee may employ counsel at its own expense to
assist it with respect to any such claim; provided, however, that if such
counsel is necessary because of a conflict of interest of either Licensor or its
counsel or because Licensor does not assume control, Licensor will bear the
expense of such counsel. The Licensee shall have no authority to settle any
claim on behalf of Licensor.
(b) Licensor's Efforts. If the licensed product, in whole or
in party, are or in Licensor's opinion may become, the subject of any claim,
suit or proceeding for infringement of, or it is judicially determined that the
licensed product, in whole or in party, infringes any third party's Intellectual
Property Right, or if the licensed product's use is enjoined, then the Licensor
may, at its option and expense, and using reasonable efforts to act as soon as
possible: (1) procure for the Licensee the right to continue use of the licensed
product; (2) replace or modify the licensed product so as not to infringe such
third party's Intellectual Property Right while conforming, as closely as
possible, to the specifications agreed upon by the parties, (3) if the parties
mutually agree, the Licensee may undertake to replace or modify the licensed
product so as not to infringe such third party's Intellectual Property Right and
such work shall be reimbursed by Licensor at a mutually agreeable fee structure.
If Licensor is unable to achieve either of the foregoing within thirty (30) days
(or such longer period as determined by the Licensee in good faith) after a
determination by a court of competent jurisdiction of infringement or the entry
of an injunction, as applicable, Licensor shall promptly refund to the Licensee
the license fees paid for any licensed product the use of which is legally
prohibited.
5.8 Exceptions to Licensor Indemnity. Licensor shall have no
obligation under Section 5 to the extent any claim of infringement or
misappropriation results from (i) use of the Licensed Product in combination
with any other product, end item, or subassembly not intended by Licensor, or
(ii) the fact that the infringement would not have occurred but for such
combination, incorporation or use.
5.9 Limitation on Indemnity. This Section 5 shall represent the
entire and exclusive obligation of Licensor to Licensee regarding any claim that
the licensed product infringes the Intellectual Property Rights of a third
party.
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SECTION 6.
ROYALTY PAYMENTS
6.1 Royalties.
(a) XxXxxx.xxx. In consideration for the license and rights
granted herein, XxXxxx.xxx shall pay to NAI running royalties on Net Revenue of
the NAI Licensed Products Distributed by XxXxxx.xxx at the rates set forth in
Exhibit A. "Distributed" shall refer to a purchase by an End User of a license
to an NAI Licensed Product within the XxXxxx.xxx Permitted Business either
alone, or bundled with other NAI Licensed Products, XxXxxx.xxx Licensed Products
or products, or any third party products. Nothing herein shall be construed to
subject to the foregoing royalty any revenue or other consideration received by
XxXxxx.xxx with respect to subscription licenses, services, advertising,
sponsorships, co-hosting and other e-commerce arrangements that do not include
NAI Licensed Products.
(b) NAI. For the Term of this Agreement, in consideration
for the license and rights granted herein (including but not limited to those
set forth in Section 2.6), NAI shall pay to XxXxxx.xxx a quarterly royalty of
two hundred and fifty thousand dollars ($250,000), whether or not any new
Derivative works or other technology were actually made subject to the licenses
set forth herein during any given quarter.
6.2 Payments. Within thirty (30) days of the last day of each
calendar quarter, XxXxxx.xxx shall deliver to NAI a written statement (a
"Royalty Statement") showing the number of NAI Licensed Products distributed by
XxXxxx.xxx during the immediately preceding quarter, the Net Revenue calculated
for such quarter and the aggregate royalties payable to NAI for such quarter.
Along with such Royalty Statement, XxXxxx.xxx shall pay NAI all amounts due to
NAI pursuant to such Royalty Statement. NAI shall pay the royalty payment set
forth in Section 6.1(b), without demand or invoice from XxXxxx.xxx, within
thirty (30) days of the last day of the immediately preceding quarter for which
the royalty applied.
6.3 Inspection Rights. XxXxxx.xxx shall maintain during the Term and
for a period of three (3) years thereafter, true and complete books of account
containing an accurate record of all data necessary for the verification of
royalties due to NAI under this Agreement, and NAI and its representatives shall
have the right to examine such books at all reasonable times (but no more than
once per quarter) upon no less than ten (10) days' advance notice to XxXxxx.xxx.
Such examination shall be made during normal business hours at the principal
place of business of XxXxxx.xxx. In the event that any such examination reveals,
for any period, an underpayment of royalties to NAI by an amount greater than
five percent (5%) of the amount actually due NAI, XxXxxx.xxx shall promptly
reimburse NAI for all costs and expenses associated with such examination.
6.5 Support. Subject to NAI's then-current fees (but in no event
greater than NAI's allocated cost plus ten percent), NAI or its reasonably
acceptable designee will provide to End Users all front-line and back-line
technical support for NAI Licensed Products (including beta releases) and
XxXxxx.xxx Licensed Products distributed by XxXxxx.xxx hereunder, including
assistance with installation, configuration and media. The support terms which
NAI, as of the Effective Date, expects to use are as
12
set forth in Exhibit E. Such terms may only be revised as NAI and XxXxxx.xxx
mutually deem appropriate. XxXxxx.xxx agrees that any user documentation
prepared by XxXxxx.xxx for NAI Licensed Products and XxXxxx.xxx Licensed
Products will clearly and conspicuously state that End Users should call NAI or
its designee for technical support for the NAI Licensed Products and the
XxXxxx.xxx Licensed Products. In addition, NAI will use all reasonable efforts
to negotiate with its third party provider(s) of back end support to offer such
support to XxXxxx.xxx under the existing contract(s) with such third party
provider(s). If NAI is unable to so include XxXxxx.xxx then XxXxxx.xxx shall
procure its own back-end support with respect to the subject matter of this
agreement. NAI or its designee (which may be XxXxxx.xxx, upon agreement by the
parties) will provide to End Users all front-line and back-line technical
support for the NAI Licensed Products other than those distributed by XxXxxx.xxx
hereunder, including assistance with installation, configuration and media.
THIRD PARTY RIGHTS; ASSIGNMENT OF CONTRACTS
7.1 Third Party Rights.
(a) Each party shall use reasonable efforts to grant to the
other, at the other's sole cost, a sublicense to the other party under the
licensing party's rights in any rights such party obtains with respect to third
party products during the Term (the "Third Party Rights"). In the event the
licensing party is unable for any reason to grant the other party such a
sublicense, including without limitation restrictions on sublicensing or
disapproval by the third party licensor, the licensing party shall use
reasonable efforts to assist the other party, at the other party's sole cost, to
acquire a non-exclusive license to use the Third Party Rights from the third
party licensor of such rights.
(b) All of the Third Party Rights that are sublicensed to a
party hereunder will be subject to payment by such party of a portion of the
license fees and/or royalty obligations paid or payable thereunder as reasonably
agreed upon by the parties in their good faith business judgment. The
sublicensee will be solely responsible for any sublicense fee imposed by the
owner of such Third Party Rights as a condition to consent to such sublicense;
provided that the sublicensee will have the right to advance notification of
such fee and the right to decline such sublicense.
SECTION 8.
CONFIDENTIALITY
8.1 Confidential Information. Except as expressly provided herein,
the parties agree that, for the term of this Agreement and for five (5) years
thereafter (ten (10) when such Confidential Information includes Source Cose),
the receiving party shall keep completely confidential and shall not publish or
otherwise disclose and shall not use for any purpose except for the purposes
contemplated by this Agreement any Confidential Information furnished to it by
the disclosing party hereto, except that to the extent that it can be
established by the receiving party by written proof that such Confidential
Information: was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
13
(a) was generally available to the public or otherwise part
of the public domain at the time of its disclosure to the receiving party;
(b) became generally available to the public or otherwise
part of the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement; or
(c) was subsequently lawfully disclosed to the receiving
party by a person other than a party hereto.
8.2 Permitted Use and Disclosures. Each party hereto may use or
disclose information disclosed to it by the other party to the extent such use
or disclosure is reasonably necessary in complying with any applicable law or
governmental regulations including but not limited to the Securities Act of 1933
and the Securities Exchange Act of 1934, or exercising its rights hereunder to
develop or commercialize Licensed Products, provided that if a party is required
to make any such disclosure of another party's confidential information, other
than pursuant to a confidentiality agreement, it will give reasonable advance
notice to the latter party of such disclosure and, will use its best reasonable
efforts to secure confidential treatment of such information prior to its
disclosure (whether through protective orders or otherwise). Notwithstanding the
foregoing, disclosures of Source Code licensed from the other party under demand
from a court ordered subpoena shall be permitted provided such disclosure is
made under a "For Your Eyes Only" disclosure only to attorneys or members of the
court and specifically not disclosed to competitors of NAI or XxXxxx.xxx.
TERM AND TERMINATION
9.1 License Period. The term of this Agreement will commence on the
Effective Date of this Agreement and will remain in full force and effect in
perpetuity unless earlier terminated in accordance with this Section 9 (the
"Term").
9.2 Termination by Mutual Agreement. This Agreement may be
terminated pursuant to the mutual, written agreement of the parties.
9.3 Termination for Insolvency. This Agreement may be terminated by
either party, upon written notice to the other party, (i) upon the institution
by or against the other party of insolvency, receivership or bankruptcy
proceedings or any other proceedings for the settlement of the other party's
debts, (ii) upon the other party's making an assignment for the benefit of
creditors, or (iii) upon the other party's dissolution, winding up or ceasing to
conduct business in the normal course.
9.4 Termination for Default. Either party may terminate this
Agreement for the substantial breach by the other party of a material term. The
terminating party shall first give the other party written notice of the alleged
breach and a reasonable period of at least thirty (30) days in which to cure the
alleged breach. If a cure is not achieved during the cure period, then the
parties shall enter into the dispute resolution procedures specified in Section
13. Neither party shall be precluded from seeking temporary equitable remedies.
14
9.5 Termination upon Merger. This Agreement and all licenses granted
herein shall terminate immediately prior to the effective time of any merger of
XxXxxx.xxx and NAI, or upon the merger of XxXxxx.xxx with any Affiliate of NAI.
For purposes of the foregoing, "Affiliate" shall mean any corporation,
partnership, joint venture or other entity or person of which NAI has direct or
indirect beneficial ownership of fifty percent (50%) or more of the voting
interests (representing the right to vote for the election of directors or other
managing authority). Notwithstanding the foregoing, this Section 9.5 shall not
be deemed effective (1) in the event any XxXxxx.xxx common stock is (or has been
within the previous twenty four (24) months) publicly traded on the NASDAQ
National Market or the New York Stock Exchange; or (2) in the event that third
party or parties have in the immediately preceding twenty four (24) months
purchased any preferred stock, common stock or other equity security (or any
instrument convertible into any equity security) of XxXxxx.xxx ("Third Party
Equity") and the aggregate purchase price paid for all such Third Party Equity
exceeds thirty million dollars ($30,000,000) at a pre-money valuation equal to
or in excess of three hundred million dollars ($300,000,000).
9.6 [Intentionally Omitted]
9.7 [Intentionally Omitted]
9.8 Effect of Termination.
(a) Termination of this Agreement for any reason shall not
release any party hereto from any liability which, at the time of such
termination, has already accrued to the other party or which is attributable to
a period prior to such termination nor preclude either party from pursuing any
rights and remedies it may have hereunder or at law or in equity with respect to
any breach of this Agreement. It is understood and agreed that monetary damages
may not be a sufficient remedy for any breach of this Agreement and that the
non-breaching party may be entitled to injunctive relief as a remedy for any
such breach. Such remedy shall not be deemed to be the exclusive remedy for any
such breach of this Agreement, but shall be in addition to all other remedies
available at law or in equity.
(b) Upon any termination of this Agreement, each of
XxXxxx.xxx and NAI shall promptly return to the other party all of such other
party's Confidential Information.
(c) In the event this Agreement is terminated for any
reason, each party shall have the right to Sell or otherwise dispose of the
stock of any of the other party's products licensed hereunder then on hand until
six (6) months after such termination, subject to the applicable terms of this
Agreement.
(d) All licenses granted hereunder shall terminate upon the
termination of this Agreement.
9.9 Survival. Notwithstanding the termination of this Agreement, all
EULAs that have been granted under this Agreement prior to termination shall
survive, subject to the continued compliance of each End User with the terms and
conditions of the applicable XXXX. The provisions of Sections 1, 4, 9, 10.8,
10.9, 12, 13 and 15 shall survive the expiration or termination of this
Agreement for any reason.
15
All other rights and obligations of the parties shall cease upon expiration or
termination of this Agreement.
SECTION 10.
REPRESENTATIONS AND WARRANTIES
10.1 General. XxXxxx.xxx and NAI each represents and warrants to the
other that:
(a) it is a corporation duly organized, validly existing and
in good standing under the laws of its jurisdiction of incorporation set forth
above and is duly qualified and authorized to do business as a foreign
corporation in good standing in all jurisdictions in which the nature of its
assets or business requires such qualification;
(b) it has full right, power and authority to enter into
this Agreement and to perform all of its obligations hereunder;
(c) its execution, delivery and performance of this
Agreement have been duly and properly authorized by all necessary actions and
this Agreement constitutes its valid and binding obligation, enforceable against
it in accordance with its terms; and
(d) its execution, delivery and performance of this
Agreement will not, with or without the giving of notice or passage of time, or
both, conflict with, or result in a default or loss of rights under, any
provision of its certificate of incorporation or by-laws or any other material
agreement or understanding to which it is a party or by which it or any of its
material properties may be bound.
10.2 Disclaimer. Nothing in this Agreement is or shall be construed
as:
(e) A warranty or representation by either party as to the
validity or scope of any claim or patent within such party's Patent Rights;
(f) Subject to Sections 5 and 11, a warranty or
representation that anything made, used, Sold, or otherwise disposed of under
any license granted in this Agreement is or will be free from infringement of
any patent rights, trademarks or other Intellectual Property Right of any third
party; or
(g) Granting by implication, estoppel, or otherwise any
licenses or rights under patents or other rights of such party or third parties,
regardless of whether such patents or other rights are dominant or subordinate
to any patent within such party's Patent Rights.
10.3 No Warranties. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH HEREIN
NEITHER NAI NOR XXXXXX.XXX GRANTS ANY WARRANTIES WITH RESPECT TO THE RIGHTS
GRANTED HEREUNDER, EXPRESS OR IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW, BY
STATUTE OR OTHERWISE, AND NAI AND XXXXXX.XXX SPECIFICALLY DISCLAIM ANY EXPRESS
OR IMPLIED WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF THE PATENT RIGHTS GRANTED HEREUNDER OR NON-INFRINGEMENT.
SECTION 11.
16
INDEMNIFICATION
11.1 Indemnification. Each party (an "Indemnifying Party") agrees to
indemnify, defend and hold the other party (an "Indemnified Party") and its
directors, officers, employees and agents harmless from and against any and all
liabilities, claims, demands, expenses (including, without limitation, attorneys
and professional fees and other costs of litigation), losses or causes of action
(each, a "Liability") arising out of or relating in any way to (i) the
possession, manufacture, use, sale or other disposition of the Indemnified
Party's licensed products, whether based on breach of warranty, negligence,
product liability or otherwise, (ii) the exercise of any right granted to the
indemnifying Party pursuant to this Agreement, or (iii) any breach of this
Agreement by the Indemnifying Party, except to the extent, in each case, that
such Liability is caused by the gross negligence or willful misconduct of the
Indemnified Party as determined by a court of competent jurisdiction.
11.2 Process of Indemnification. The Indemnified Party will give
prompt notice to the Indemnifying Party of any Liability with respect to which
the Indemnified Party seeks indemnification. The Indemnifying Party shall
assume, at its sole cost and expense, the defense of such Liability. The
Indemnifying Party shall not, without consent of the Indemnified Party (which
consent shall not be unreasonably withheld), effect any settlement or discharge
or consent to the entry of any judgment, unless such settlement or judgment
includes as an unconditional term thereof the giving by the claimant or
plaintiff to the Indemnified Party of a general release from all liability in
respect of such Liability.
SECTION 12.
LIMITATION OF LIABILITY
12.1 Exclusion and Limitation of Damages. IN NO EVENT SHALL EITHER
PARTY BE LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF
THIS AGREEMENT OR THE USE OR DISTRIBUTION OF LICENSED SOFTWARE BY NAI,
XXXXXX.XXX OR ANY THIRD PARTY, WHETHER UNDER THEORY OF CONTRACT, TORT (INCLUDING
NEGLIGENCE), INDEMNITY, PRODUCT LIABILITY OR OTHERWISE.
SECTION 13.
DISPUTE RESOLUTION
13.1 Dispute Resolution. Any dispute, controversy, claim or
disagreement between the parties hereto arising from, relating to or in
connection with this Agreement, any agreement, certificate or other document
referred to herein or delivered in connection herewith, or the relationship of
the parties hereunder or thereunder, including questions regarding the
interpretation, meaning or performance of this Agreement, and including claims
based on contract, tort, common law, equity, statute, regulation, order or
otherwise ("Dispute") shall be resolved in accordance with this Section 13.
13.2 Dispute Review; Mediation.
17
a) Xxxxx 0 Xxxxxxx Xxxxxx. Upon the written request of either
party, NAI and XxXxxx.xxx shall each appoint a designated
representative whose task shall be to meet the other party's
designated representative (by conference telephone call or in
person at a mutually agreeable site) in an endeavor to resolve
any Dispute ("Level 1 Dispute Review"). The designated
representatives shall meet as often as the parties reasonably
deem necessary to discuss the Dispute and negotiate in good
faith in an effort to resolve the Dispute without the necessity
of any formal proceeding.
b) Xxxxx 0 Xxxxxxx Xxxxxx. If resolution of the Dispute cannot be
resolved within the earlier of (a) fifteen (15) days of the
first Xxxxx 0 Xxxxxxx Xxxxxx meeting and (b) such time as when
either party gives the other notice of an impasse ("Level 1
Dispute Termination Date"), a chief executive officer (or a
functional equivalent) of each party shall meet (by conference
telephone call or in person at a mutually agreeable site) within
72 hours after the Xxxxx 0 Xxxxxxx Xxxxxxxxxxx Date for the
purpose of resolving such unresolved Dispute ("Level 2 Dispute
Review").
13.3 Submission of Dispute to Mediation. If the parties are unable to
resolve the Dispute within a reasonable period after commencement of the Xxxxx 0
Xxxxxxx Xxxxxx, the parties shall give each other notice of the existence of a
continuing impasse (the date on which both parties are in receipt of such
notice, the "Level 2 Dispute Termination Date") and shall thereafter immediately
submit the Dispute to mediation in accordance with the Commercial Mediation
Rules of the American Arbitration Association ("AAA") and shall bear equally the
costs of the mediation. The parties will act in good faith to jointly appoint a
mutually acceptable mediator, seeking assistance in such regard from the AAA
within fifteen (15) days of the Xxxxx 0 Xxxxxxxxxxx Xxxx. The parties agree to
participate in good faith in the mediation and negotiations related thereto for
a period of thirty (30) days commencing with the selection of the mediator and
any extension of such period as mutually agreed to by the parties.
13.4 Arbitration.
a) If the parties cannot agree to a mediator within fifteen (15)
days of the Xxxxx 0 Xxxxxxx Xxxxxxxxxxx Date or if the Dispute
is not resolved within thirty (30) days after the beginning of
the mediation and any extension of such periods as mutually
agreed to by the parties, the Dispute shall be submitted to, and
finally determined by, binding arbitration in accordance with
the following provisions of this Section 13.4, regardless of the
amount in controversy or whether such Dispute would otherwise be
considered justiciable or ripe for resolution by a court or
arbitration panel.
b) Any such arbitration shall be conducted by the AAA in accordance
with its current Commercial Arbitration Rules (the "AAA Rules"),
except to the extent that the AAA Rules conflict with the
provisions of this Agreement in which event the provisions of
this Agreement shall control.
c) The arbitration panel (the "Panel") shall consist of three
neutral arbitrators ("Arbitrators"), each of whom shall be an
attorney having eight (8) or more years experience in the
primary area of law as to which the Dispute relates, and shall
be appointed in accordance with the AAA Rules ("Basic
Qualifications").
18
d) Should an Arbitrator refuse or be unable to proceed with
arbitration proceedings as called for by this Section 14, a
substitute Arbitrator possessing the Basic Qualifications shall
be appointed by the AAA. If an Arbitrator is replaced after the
arbitration hearing has commenced, then a rehearing shall take
place in accordance with the provisions of this Agreement and
the AAA Rules.
e) The arbitration shall be conducted in San Francisco, CA;
provided that the Panel may from time to time convene, carry on
hearings, inspect property or documents and take evidence at any
location which the Panel deems appropriate.
f) The Panel may in its discretion order a pre-exchange of
information including production of documents, exchange of
summaries of testimony or exchange of statements of position and
shall schedule promptly all discovery and other procedural steps
and otherwise assume case management initiative and control to
effect an efficient and expeditious resolution of the Dispute.
g) At any oral hearing of evidence in connection with any
arbitration conducted pursuant to this Agreement, each party and
its legal counsel shall have the right to examine its witnesses
and to cross-examine the witnesses of the other party. No
testimony of any witness shall be presented in written form
unless the opposing parties shall have the opportunity to
cross-examine such witness, except as the parties otherwise
agree in writing and except under extraordinary circumstances
where, in the opinion of the Panel, the interests of justice
require a different procedure.
h) Within fifteen (15) days after the closing of the arbitration
hearing, the Panel shall prepare and distribute to the parties a
written award, setting forth the Panel's findings of facts and
conclusions of law relating to the Dispute, including the
reasons for the giving or denial of any requested remedy or
relief. The Panel shall have the authority to award any remedy
or relief that a court of competent jurisdiction could order or
grant, and shall award interest on any monetary award from the
date that the loss or expense was incurred by the successful
party. In addition, the Panel shall have the authority to decide
issues relating to the interpretation, meaning or performance of
this Agreement, any agreement, certificate or other document
referred to herein or delivered in connection herewith, or the
relationships of the parties hereunder or thereunder, even if
such decision would constitute an advisory opinion in a court
proceeding or if the issues would otherwise not be ripe for
resolution in a court proceeding, and any such decision shall
bind the parties in their performance of this Agreement and such
other documents.
i) Except as necessary in court proceedings to enforce this
arbitration provision or an award rendered hereunder, or to
obtain interim relief, or in connection with an initial public
offering or securities filing, or to legal counsel of the
parties, no party nor any arbitrator shall disclose the
existence, content or results of any arbitration conducted
hereunder without the prior written consent of the other
parties.
j) To the extent that the relief or remedy granted in an award
rendered by the Panel is relief or a remedy on which a court
could enter judgment, a judgment upon the award rendered by the
Panel may be entered in any court having jurisdiction thereof.
Otherwise, the award shall be binding on the parties in
connection with their obligations under this Agreement and in
any subsequent arbitration or judicial proceedings among any of
the parties.
19
k) The parties agree to share equally the cost of any arbitration,
including the administrative fee, the compensation of the
arbitrators and the costs of any neutral witnesses or proof
produced at the direct request of the Panel.
l) Notwithstanding the choice of law provision set forth in Section
14.1, The Federal Arbitration Act, 9 U.S.C. Section Section
Sections 1 to 14, except as modified hereby, shall govern the
enforcement of this Agreement.
13.5 Recourse to Courts and Other Remedies. Notwithstanding the
Dispute resolution procedures contained in this Agreement, any party may apply
to any court having jurisdiction (a) to enforce this Agreement to arbitrate, (b)
to seek provisional injunctive relief so as to maintain the status quo until the
arbitration award is rendered or the Dispute is otherwise resolved, (c) to avoid
the expiration of any applicable limitation period, (d) to preserve a superior
position with respect to other creditors, or (e) to challenge or vacate any
final judgment, award or decision of the Panel that does not comport with the
express provisions of this Agreement.
SECTION 14.
MISCELLANEOUS PROVISIONS
14.1 Governing Law. This Agreement and any dispute arising from the
performance or breach hereof shall be governed by and construed and enforced in
accordance with the laws of the state of California, without reference to
conflicts of laws principles.
14.2 Independent Contractors. The relationship of NAI and XxXxxx.xxx
established by this Agreement is that of independent contractors, and nothing
contained in this Agreement shall be construed to (i) give either party the
power to direct and control the day-to-day activities of the other, (ii)
constitute the parties as partners, joint venturers, co-owners or otherwise as
participants in a joint undertaking, or (iii) allow either party to create or
assume any obligation on behalf of the other party for any purpose whatsoever.
Except as expressly set forth herein, all financial and other obligations
associated with each party's activities hereunder shall be the sole
responsibility of such party.
14.3 Notices. All notices between NAI and XxXxxx.xxx shall be in
writing and delivered by hand or by certified mail, return receipt requested,
addressed to XxXxxx.xxx or NAI at the respective addresses set forth below, and
shall be effective upon receipt. Any person entitled to notice hereunder may
change its address by giving written notice to all others entitled to notice.
NOTICES TO NAI WILL BE ADDRESSED TO:
Network Associates, Inc.
0000 Xxxxxxx Xxxxxx
Xxxxx Xxxxx, XX 00000
Attn: Vice President of Legal Affairs
NOTICES TO XXXXXX.XXX WILL BE ADDRESSED TO:
20
XxXxxx.xxx
0000 Xxxxxx Xxxxxx
Xxxxx Xxxxx, XX 00000
Attn: Chief Financial Officer
14.4 10.2 Patent Marking. Each party agrees to xxxx all Licensed
Products sold pursuant to this Agreement in accordance with the applicable
statute or regulations relating to patent marking in the country or countries of
manufacture and sale thereof.
14.5 Force Majeure. Failure on the part of either party hereto to
meet any of the terms and conditions contained herein because of any
governmental restriction, strike or major labor disturbance, war, revolution,
riot, earthquake, fire, or flood shall not constitute a breach of this Agreement
and shall excuse the party involved from any action by the other party hereto,
based upon the said failure to perform.
14.6 Waiver; Entire Agreement; Partial Invalidity. In the event
either party shall at any time waive any of its rights under this Agreement or
waive the performance by the other party of any of its obligations hereunder,
such waiver shall not be construed as a continuing waiver of the same rights or
obligations or a waiver of any other rights or obligations. This Agreement
(which includes the Exhibits hereto) constitutes the entire agreement between
the parties as to the subject matter hereof and merges and supersedes all prior
discussions between the parties as to the subject matter hereof. This Agreement
may not be changed or terminated except by a written amendment signed by both
parties. Any provision of this Agreement that shall be or is determined to be
invalid shall be ineffective, but such invalidity shall not affect the remaining
provisions hereof. The titles to the paragraphs hereof are for convenience only
and have no substantive effect. This Agreement has been prepared jointly by the
parties and shall not be construed against one party as the draftsman thereof.
14.7 Non-Assignability and Binding Effect. Neither party shall,
without the prior written consent of the other party, transfer or assign this
Agreement in whole or in part, whether by operation of law or otherwise, to any
third party (including affiliated companies) without the prior written consent
of the other party. Any purported transfer or assignment without such consent
shall be void ab initio. Subject to the foregoing, this Agreement will inure to
the benefit of the parties and their permitted successors and assigns.
14.8 Injunctive Relief. XxXxxx.xxx acknowledges that its failure to
perform any of the material terms or conditions of this Agreement shall result
in immediate and irreparable damage to NAI. XxXxxx.xxx also acknowledges that
there may be no adequate remedy at law for such failure and that, in the event
thereof, NAI shall be entitled to equitable relief in the nature of an
injunction and to all other available relief, at law or in equity.
14.9 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall constitute an original and all of which taken
together shall constitute one and the same agreement.
14.10 Compliance with Laws. In exercising their rights under this
Agreement, the parties shall fully comply in all material respects with the
requirements of any and all applicable laws, regulations,
21
rules and orders of any governmental body having jurisdiction over the exercise
of rights under this Agreement.
14.11 Construction. The headings in this Agreement are provided for
reference only and shall not be used as a guide to interpretation. When used in
this Agreement, the singular includes the plural and the plural includes the
singular, and gender related pronouns include the feminine, masculine and
neuter.
14.12 Export of Technical Data. Each Party agrees to comply with U.S.
export laws and regulations when exporting any materials or any items licensed
or developed under this Agreement or any portion thereof, or any system
containing such materials or items or portions thereof, or any technical data or
other Confidential Information, or any direct product of any of the foregoing
(collectively, "Program") from the U.S. or re-exporting (as defined in Section
734.2(b) of the Export Administration Regulations, as amended ("Regulations")) a
Program from one foreign country to another. It is the exporting party's
responsibility to comply with the U.S. Government requirements as they may be
amended from time to time. Without limiting the generality of the foregoing: (i)
regardless of any disclosure made by the exporting party to the other party of
an ultimate destination of a Program, the exporting party shall not export or
transfer, whether directly or indirectly, a Program, to anyone outside the U.S.
(including further export if the exporting party took delivery of the Program
outside the U.S.) without first complying strictly and fully with all export
controls that may be imposed on the Program by the U.S. Government or any
country or organization of nations within whose jurisdiction the exporting party
operates or does business; and (ii) absent any required prior authorization from
the Bureau of Export Administration, U.S. Department of Commerce, 00xx xxx
Xxxxxxxxxxxx Xxxxxx, Xxxxxxxxxx, XX 00000, the exporting party will not export
or re-export the Program to any country in Country Groups D:1 or E:2 as defined
in the supplement No. 1 to Section 740 of the Regulations or such other
countries as come under restriction (including embargo) by action of the U.S.
Government, or to nationals from or residing in the foregoing countries, without
first obtaining permission from the appropriate U.S. Government authorities.
Each party will reasonably cooperate with the other party in obtaining export
licenses or approvals.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE DULY EXECUTED THIS AGREEMENT
AS OF THE EFFECTIVE DATE.
XxXxxx.xxx Corporation Networks Associates
Technology Corporation
By: /s/ XXXXXXX XXXXXXX By: /s/ XXXXXXX XXXXX
--------------------------------- -------------------------------------
Name: XXXXXXX XXXXXXX Name: XXXXXXX XXXXX
------------------------------- -----------------------------------
Title: Title:
------------------------------ ----------------------------------
Networks Associates, Inc. does hereby unconditionally and irrevocably agree to
guaranty the performance of, and all obligations, duties, and liabilities of
Network Associates Technology Corporation under this Agreement. Network
Associates, Inc. will perform all necessary acts to cause Network Associates
Technology Corporation to fully perform hereunder.
Networks Associates, Inc.
By: /s/ XXXXXXX XXXXX
---------------------------------
Name: XXXXXXX XXXXX
-------------------------------
Title:
------------------------------
22
EXHIBIT A
ROYALTIES ON NAI LICENSED PRODUCTS
Percentage of Net Revenue
Q1 1999 20.00%
Q2 1999 18.375%
Q3 1999 16.75%
Q4 1999 15.125%
Q1 2000 13.50%
Q2 2000 11.875%
Q3 2000 10.25%
Q4 2000 8.625%
Q1 2001 Through the remaining Term of this Agreement = 7.00%
23
EXHIBIT B
MCAFEE SOFTWARE END USER LICENSE AGREEMENT
NOTICE TO ALL USERS: CAREFULLY READ THE FOLLOWING LEGAL AGREEMENT ("AGREEMENT"),
FOR THE LICENSE OF SPECIFIED SOFTWARE ("SOFTWARE") BY NETWORK ASSOCIATES, INC.
("McAfee"). BY CLICKING THE ACCEPT BUTTON OR INSTALLING THE SOFTWARE, YOU
(EITHER AN INDIVIDUAL OR A SINGLE ENTITY) CONSENT TO BE BOUND BY AND BECOME A
PARTY TO THIS AGREEMENT. IF YOU DO NOT AGREE TO ALL OF THE TERMS OF THIS
AGREEMENT, CLICK THE BUTTON THAT INDICATES THAT YOU DO NOT ACCEPT THE TERMS OF
THIS AGREEMENT AND DO NOT INSTALL THE SOFTWARE. (IF APPLICABLE, YOU MAY RETURN
THE PRODUCT TO THE PLACE OF PURCHASE FOR A FULL REFUND.)
1. License Grant. Subject to the payment of the applicable license fees, and
subject to the terms and conditions of this Agreement, McAfee hereby grants to
you a non-exclusive, non-transferable right to use one copy of the specified
version of the Software and the accompanying documentation (the
"Documentation"). You may install one copy of the Software on one computer,
workstation, personal digital assistant, pager, "smart phone" or other
electronic device for which the Software was designed (each, a "Client Device").
If the Software is licensed as a suite or bundle with more than one specified
Software product, this license applies to all such specified Software products,
subject to any restrictions or usage terms specified on the applicable price
list or product packaging that apply to any of such Software products
individually.
a. Use. The Software is licensed as a single product; it may not be used
on more than one Client Device or by more than one user at a time, except as set
forth in this Section 1. The Software is "in use" on a Client Device when it is
loaded into the temporary memory (i.e., random-access memory or RAM) or
installed into the permanent memory (e.g., hard disk, CD-ROM, or other storage
device) of that Client Device. This license authorizes you to make one copy of
the Software solely for backup or archival purposes, provided that the copy you
make contains all of the Software's proprietary notices.
b. Server-Mode. You may use the Software on a Client Device as a server
("Server") within a multi-user or networked environment ("Server-Mode") only if
such use is permitted in the applicable price list or product packaging for the
Software. A separate license is required for each Client Device or "seat" that
may connect to the Server at any time, regardless of whether such licensed
Client Devices or seats are concurrently connected to, accessing or using the
Software. Use of software or hardware that reduces the number of Client Devices
or seats directly accessing or utilizing the Software (e.g., "multiplexing" or
"pooling" software or hardware) does not reduce the number of licenses required
(i.e., the required number of licenses would equal the number of distinct inputs
to the multiplexing or pooling software or hardware "front end"). If the number
of Client Devices or seats that can connect to the Software can exceed the
number of licenses you have obtained, then you must have a reasonable mechanism
in place to ensure that your use of the Software does not exceed the use limits
specified for the licenses you have obtained. This license authorizes you to
make or download one copy of the Documentation for each Client Device or seat
that is licensed, provided that each such copy contains all of the
Documentation's proprietary notices.
c. Volume Licenses. If the Software is licensed with volume license terms
specified in the applicable price list or product packaging for the Software,
you may make, use and install as many additional copies of the Software on the
number of Client Devices as the volume license authorizes. You must have a
reasonable mechanism in place to ensure that the number of Client Devices on
which the Software has been installed does not exceed the number of licenses you
have obtained. This license authorizes you to make or download one copy of the
Documentation for each additional copy authorized by the volume license,
provided that each such copy contains all of the Documentation's proprietary
notices.
2. Term. This Agreement is effective for an unlimited duration unless and
until earlier terminated as set forth herein. This Agreement will terminate
automatically if you fail to comply with any of the limitations or other
requirements described herein. Upon any termination or expiration of this
Agreement, you must destroy all copies of the Software and the Documentation.
3. Updates. For the time period specified in the applicable price list or
product packaging for the Software you are entitled to download revisions or
updates to the Software when and as McAfee publishes them via its electronic
bulletin board system, website or through other online services. For a period of
ninety (90) days from the date of the original purchase of the Software, you are
entitled to download one (1) revision or upgrade to the Software when and as
McAfee publishes it via its electronic bulletin board system, website or through
other online services. After the specified time period, you have no further
rights to receive any revisions or upgrades without purchase of a new license or
annual upgrade plan to the Software.
4. Ownership Rights. The Software is protected by United States copyright laws
and international treaty provisions. McAfee and its suppliers own and retain all
right, title and interest in and to the Software, including all copyrights,
patents, trade secret rights, trademarks and other intellectual property rights
therein. Your possession, installation, or use of the Software does not transfer
to you any title to the intellectual property in the Software, and you will not
acquire any rights to the Software except as expressly set forth in this
Agreement. All copies of the Software and Documentation made hereunder must
contain the same proprietary notices that appear on and in the Software and
Documentation.
5. Restrictions. You may not rent, lease, loan or resell the Software. You may
not permit third parties to benefit from the use or functionality of the
Software via a timesharing, service bureau or other arrangement, except to the
extent such use is specified in the applicable list price or product packaging
for the Software. You may not transfer any of the rights granted to you under
this Agreement. You may not reverse engineer, decompile, or disassemble the
Software, except to the extent the foregoing restriction is expressly prohibited
by applicable law. You may not modify, or create derivative works based upon,
the Software in whole or in part. You may not copy the Software or Documentation
except as expressly permitted in Section 1 above. You may not remove any
proprietary notices or labels on the Software. All rights not expressly set
forth hereunder are reserved by McAfee. McAfee reserves the right to
periodically conduct audits upon advance written notice to verify compliance
with the terms of this Agreement.
6. Warranty and Disclaimer.
a. Limited Warranty. McAfee warrants that for sixty (60) days from the
date of original purchase the media (e.g., diskettes) on which the Software is
contained will be free from defects in materials and workmanship.
b. Customer Remedies. McAfee's and its suppliers' entire liability and
your exclusive remedy for any breach of the foregoing warranty shall be, at
McAfee's option, either (i) return of the purchase price paid for the license,
if any, or (ii) replacement of the defective media in which the Software is
contained. You must return the defective media to McAfee at your expense with a
copy of your receipt. This limited warranty is void if the defect has resulted
from accident, abuse, or misapplication. Any replacement media will be warranted
for the remainder of the original warranty period. Outside the United States,
this remedy is not available to the extent McAfee is subject to restrictions
under United States export control laws and regulations.
c. Warranty Disclaimer. Except for the limited warranty set forth herein,
THE SOFTWARE IS PROVIDED "AS IS." TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE
LAW, MCAFEE DISCLAIMS ALL WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING BUT
NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, AND NONINFRINGEMENT WITH RESPECT TO THE SOFTWARE AND THE ACCOMPANYING
DOCUMENTATION. YOU ASSUME RESPONSIBILITY FOR SELECTING THE SOFTWARE TO ACHIEVE
YOUR INTENDED RESULTS, AND FOR THE INSTALLATION OF, USE OF, AND RESULTS OBTAINED
FROM THE SOFTWARE. WITHOUT LIMITING THE FOREGOING PROVISIONS, MCAFEE MAKES NO
WARRANTY THAT THE SOFTWARE WILL BE ERROR-FREE OR FREE FROM INTERRUPTIONS OR
OTHER FAILURES OR THAT THE SOFTWARE WILL MEET YOUR REQUIREMENTS. SOME STATES AND
JURISDICTIONS DO NOT ALLOW LIMITATIONS ON IMPLIED WARRANTIES, SO THE ABOVE
LIMITATION MAY NOT APPLY TO YOU. The foregoing provisions shall be enforceable
to the maximum extent permitted by applicable law.
7. Limitation of Liability. UNDER NO CIRCUMSTANCES AND UNDER NO LEGAL THEORY,
WHETHER IN TORT, CONTRACT, OR OTHERWISE, SHALL MCAFEE OR ITS SUPPLIERS BE LIABLE
TO YOU OR TO ANY OTHER PERSON FOR ANY INDIRECT, SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES OF ANY CHARACTER INCLUDING, WITHOUT LIMITATION, DAMAGES
FOR LOSS OF GOODWILL, WORK STOPPAGE, COMPUTER FAILURE OR MALFUNCTION, OR FOR ANY
AND ALL OTHER DAMAGES OR LOSSES. IN NO EVENT WILL MCAFEE BE LIABLE FOR ANY
DAMAGES IN EXCESS OF THE LIST PRICE MCAFEE CHARGES FOR A LICENSE TO THE
SOFTWARE, EVEN IF MCAFEE SHALL HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. THIS LIMITATION OF LIABILITY SHALL NOT APPLY TO LIABILITY FOR DEATH OR
PERSONAL INJURY TO THE EXTENT THAT APPLICABLE LAW PROHIBITS SUCH LIMITATION.
FURTHERMORE, SOME STATES AND JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR
LIMITATION OF INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO THIS LIMITATION AND
EXCLUSION MAY NOT APPLY TO YOU. The foregoing provisions shall be enforceable to
the maximum extent permitted by applicable law.
8. United States Government. The Software and accompanying Documentation are
deemed to be "commercial computer software" and "commercial computer software
documentation," respectively, pursuant to DFAR Section 227.7202 and FAR Section
12.212, as applicable. Any use, modification, reproduction, release,
performance, display or disclosure of the Software and accompanying
Documentation by the United States Government shall be governed solely by the
terms of this Agreement and shall be prohibited except to the extent expressly
permitted by the terms of this Agreement.
9. Export Controls. Neither the Software nor the Documentation and underlying
information or technology may be downloaded or otherwise exported or re-exported
(i) into (or to a national or resident of ) Cuba, Iran, Iraq, Libya, North
Korea, Sudan, Syria or any other country to which the United States has
embargoed goods; or (ii) to anyone on the United States Treasury Department's
list of Specially Designated Nations or the United States Commerce Department's
Table of Denial Orders. By downloading or using the Software you are agreeing to
the foregoing and you are certifying that you are not located in, under the
control of, or a national or resident of any such country or on any such list.
IN ADDITION, YOU SHOULD BE AWARE OF THE FOLLOWING: EXPORT OF THE SOFTWARE MAY BE
SUBJECT TO COMPLIANCE WITH THE RULES AND REGULATIONS PROMULGATED FROM TIME TO
TIME BY THE BUREAU OF EXPORT ADMINISTRATION, UNITED STATES DEPARTMENT OF
COMMERCE, WHICH RESTRICT THE EXPORT AND RE-EXPORT OF CERTAIN PRODUCTS AND
TECHNICAL DATA. IF THE EXPORT OF THE SOFTWARE IS CONTROLLED UNDER SUCH RULES AND
REGULATIONS, THEN THE SOFTWARE SHALL NOT BE EXPORTED OR RE-EXPORTED, DIRECTLY OR
INDIRECTLY, (A) WITHOUT ALL EXPORT OR RE-EXPORT LICENSES AND UNITED STATES OR
OTHER GOVERNMENTAL APPROVALS REQUIRED BY ANY APPLICABLE LAWS, OR (B) IN
VIOLATION OF ANY APPLICABLE PROHIBITION AGAINST THE EXPORT OR RE-EXPORT OF ANY
PART OF THE SOFTWARE. SOME COUNTRIES HAVE RESTRICTIONS ON THE USE OF ENCRYPTION
WITHIN THEIR BORDERS, OR THE IMPORT OR EXPORT OF ENCRYPTION EVEN IF FOR ONLY
TEMPORARY PERSONAL OR BUSINESS USE. YOU ACKNOWLEDGE THAT THE IMPLEMENTATION AND
ENFORCEMENT OF THESE LAWS IS NOT ALWAYS CONSISTENT AS TO SPECIFIC COUNTRIES.
ALTHOUGH THE FOLLOWING COUNTRIES ARE NOT AN EXHAUSTIVE LIST THERE MAY EXIST
RESTRICTIONS ON THE EXPORTATION TO, OR IMPORTATION OF, ENCRYPTION BY: BELGIUM,
CHINA (INCLUDING HONG KONG), FRANCE, INDIA, INDONESIA, ISRAEL, RUSSIA, SAUDI
ARABIA, SINGAPORE, AND SOUTH KOREA. YOU ACKNOWLEDGE IT IS YOUR ULTIMATE
RESPONSIBILITY TO COMPLY WITH ANY AND ALL GOVERNMENT EXPORT AND OTHER APPLICABLE
LAWS AND THAT MCAFEE HAS NO FURTHER RESPONSIBILITY AFTER THE INITIAL SALE TO YOU
WITHIN THE ORIGINAL COUNTRY OF SALE.
10. High Risk Activities. The Software is not fault-tolerant and is not
designed or intended for use in hazardous environments requiring fail-safe
performance, including without limitation, in the operation of nuclear
facilities, aircraft navigation or communication systems, air traffic control,
weapons systems, direct life-support machines, or any other application in which
the failure of the Software could lead directly to death, personal injury, or
severe physical or property damage (collectively, "High Risk Activities").
McAfee expressly disclaims any express or implied warranty of fitness for High
Risk Activities.
11. Miscellaneous. This Agreement is governed by the laws of the United States
and the State of California, without reference to conflict of laws principles.
The application of the United Nations Convention of Contracts for the
International Sale of Goods is expressly excluded. This Agreement sets forth all
rights for the user of the Software and is the entire agreement between the
parties. This Agreement supersedes any other communications with respect to the
Software and Documentation. This Agreement may not be modified except by a
written addendum issued by a duly authorized representative of McAfee. No
provision hereof shall be deemed waived unless such waiver shall be in writing
and signed by McAfee or a duly authorized representative of McAfee. If any
provision of this Agreement is held invalid, the remainder of this Agreement
shall continue in full force and effect. The parties confirm that it is their
wish that this Agreement has been written in the English language only.
12. MCAFEE CUSTOMER CONTACT. If you have any questions concerning these terms
and conditions, or if you would like to contact McAfee for any other reason,
please call (000) 000-0000, fax (000) 000-0000, or write: McAfee Software, 0000
Xxxxxxx Xxxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000. xxxx://xxx.xxxxxx.xxx.
Statements made to you in the course of this sale are subject to the Year 2000
Information and Readiness Disclosure Act (Public Law 105-271). In the case of a
dispute, this Act may reduce your legal rights regarding the use of any
statements regarding Year 2000 readiness, unless otherwise specified in your
contract or tariff.
24
EXHIBIT C
SUPPORT TERMS
