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CONFIDENTIAL EXHIBIT 10.12
TREATMENT REQUESTED
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REDACTED FORM OF AGREEMENT
GEOWORKS - TOSHIBA
CORPORATE TECHNOLOGY AGREEMENT
RECITALS..................................................................... 1
AGREEMENT.................................................................... 1
1. DEFINITIONS........................................................ 1
2. CROSS-LICENSES..................................................... 2
3. PRODUCTS........................................................... 3
4. PROPRIETARY RIGHTS................................................. 4
5. PAYMENTS........................................................... 5
6. ADVERTISING, TRADEMARK USAGE/PROTECTON AND PUBLICITY............... 8
7. MISCELLANEOUS RECIPROCAL OBLIGATIONS............................... 9
8. LICENSED TECHNOLOGY ENHANCEMENTS................................... 9
9. CUSTOMER SUPPORT................................................... 9
10. MANUFACTURING RESPONSIBILITIES..................................... 10
11. GEOWORKS' INDEMNITIES.............................................. 10
12. TOSHIBA'S INDEMNITIES.............................................. 11
13. ERROR CORRECTION................................................... 12
14. TERM OF AGREEMENT AND TERMINATION.................................. 13
15. NONDISCLOSURE AND RESTRICTED USE................................... 14
16. LIMITATION OF LIABILITY............................................ 15
17. GENERAL............................................................ 15
SCHEDULE 1
TOSHIBA ADVANCED PAYMENT AND BEST EFFORTS.................................... 18
SCHEDULE 2
AFFILIATES................................................................... 19
SCHEDULE 2A
ADDRESSES FOR NOTICES........................................................ 20
SCHEDULE 3
IDENTIFICATION OF THE GEOWORKS LICENSED TECHNOLOGY........................... 21
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SCHEDULE 3A
LICENSE TO DISTRIBUTE ENSEMBLE 1.2 .......................................... 23
SCHEDULE 3B
LICENSE TO DISTRIBUTE GEOWORKS 2.0 OPERATING SYSTEM SOFTWARE................. 25
SCHEDULE 3C
LICENSE TO DISTRIBUTE GEOWORKS APPLICATION SOFTWARE VERSION 2.0 ............. 26
SCHEDULE 4
IDENTIFICATION OF THE TOSHIBA LICENSED TECHNOLOGY............................ 27
SCHEDULE 4A
LICENSE TO DISTRIBUTE TOSHIBA ###............................................ 28
SCHEDULE 5
LIST OF TOSHIBA PRODUCTS..................................................... 31
SCHEDULE 5A
THE PIZZA PROJECT............................................................ 32
SCHEDULE 6
LIST OF GEOWORKS PRODUCTS.................................................... 35
SCHEDULE 7
GEOWORKS TRADEMARKS, LOGOS AND PROPRIETARY MARKINGS.......................... 36
SCHEDULE 8
LOCALIZATION OF GEOWORKS LICENSED TECHNOLOGY................................. 37
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the Commission.
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###Confidential portions have been
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GEOWORKS - TOSHIBA
CORPORATE TECHNOLOGY AGREEMENT
This Agreement is effective as of March 17, 1993 (the "Effective Date"), by
and between GEOWORKS, a California corporation ("GEOWORKS"), and Toshiba
Corporation a Japanese corporation ("TOSHIBA").
RECITALS
A. TOSHIBA is a developer, manufacturer, and distributor of computer and
consumer electronics equipment to its customers.
B. GEOWORKS is a developer, manufacturer, distributor, and publisher of
computer software technologies.
C. GEOWORKS and TOSHIBA wish to establish a close working relationship in
which GEOWORKS and TOSHIBA will each license to the other certain technologies,
and in which the parties will cooperate in the adaptation and exploitation of
those technologies in multiple markets and across multiple product lines.
D. THIS AGREEMENT will serve as the foundation and framework for such a
relationship.
AGREEMENT
1. DEFINITIONS
1 "Party" and "Parties" refer to GEOWORKS and TOSHIBA.
2 "Licensor Party" refers to the Party that is granting licensing
rights with respect to its Licensed Technology, and "Licensee Party" refers to
the Party that is receiving such licensing rights. Thus, for example, GEOWORKS
is the Licensor Party and TOSHIBA is the Licensee Party with respect to
GEOWORKS' GEOS Technology; and TOSHIBA is the Licensor Party and GEOWORKS is the
Licensee Party with respect to TOSHIBA's ### Technology.
3 "Schedule" means a document which the Parties may, by mutual
agreement, sign and attach to this Agreement at any time during the term of this
Agreement. All Schedules
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shall be subject to the terms and conditions of this Agreement, unless otherwise
provided in any such Schedule. In the event of a conflict between the terms of a
Schedule and the terms of this Agreement, the terms of the Schedule shall be
given effect for the subject matter covered by that Schedule.
4 "Licensed Technology" means the GEOWORKS and TOSHIBA software,
Product Materials, and other proprietary technologies described in one or more
Schedules.
5 "Product Materials" means the packaging, artwork, end-user
instruction manuals, registration cards, promotional materials, software end
user license agreement and limitation of liability, and other materials which
the Parties identify in one or more Schedules, to be distributed with one or
more specified Products.
6 "Bundled Technology" means the Licensor Party's Licensed
Technology reproduced on diskettes, hard disks, PCMCIA cards, or functionally
equivalent storage devices, and distributed together with the Licensee Party's
Products as a single commercial unit.
7 "Embedded Technology" means the Licensor Party's Licensed
Technology reproduced in solid state media (e.g., Read Only Memory (ROM) and
Programmable Read Only Memory (PROM)) and physically integrated into the
Licensee Party's Products and distributed as a single physical and commercial
unit.
8 "Products" means the computer software, personal computer
systems, consumer electronics devices, and other devices manufactured and sold
by a Licensee Party when combined and distributed with Bundled Technology or
Embedded Technology of a Licensor Party, as identified in one or more Schedules.
9 "Product Specifications" means a description of the
characteristics and functionality of a Product, as set forth in one or more
Schedules. Product Specifications may also include timelines and milestones for
Product development, testing and acceptance criteria, a description of the
intended market for the Product, and a description of modifications to be made
to the Licensed Technology for operation with the Product.
2. CROSS-LICENSES.
1 Licenses. Subject to all the terms and conditions herein, and
subject to any specific provisions of a Schedule, each Party (as the Licensor
Party) hereby grants to the other Party (as the Licensee Party) the following:
(a) Distribution: a non-exclusive, non-transferable, worldwide
license, for the term of this Agreement, to distribute the Licensor Party's
Licensed Technology,
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only with or as part of the Licensee Party's Products, and only in the form of
Bundled Technology or Embedded Technology;
(b) Reproduction: a non-exclusive, non-transferable license, for
the term of this Agreement, to make exact copies of the Licensor Party's
Licensed Technology, with modifications only if pre-approved in writing by the
Licensor Party, such reproduction to occur only at the premises identified in
one or more Schedules and solely for the purpose of bundling or embedding such
copies with Licensee's Products;
(c) Trademarks: a non-exclusive, non-transferable worldwide
license, for the term of this Agreement, to use the Licensor Party's trademarks
and logos associated with the Licensed Technology, as identified in one or more
Schedules, solely for the purpose of marketing and distributing the Bundled
Technology or the Embedded Technology; and
(d) Sublicensing: the right to sublicense to its distributors
and dealers the right to bundle or embed the Licensor Party's Licensed
Technology with the Licensee Party's Products in accordance with the terms of
this Agreement. Except for end users' rights to make back-up copies of the
Licensed Technology in accordance with any applicable Software end user license
agreement attached as a Schedule, the Licensee Party may not authorize any other
party to make copies of the Licensor Party's Licensed Technology. The Licensee
Party agrees to take reasonable steps to ensure compliance by its dealers and
distributors with the relevant terms of this Agreement.
2 Corporate License: The licenses granted in this Section 2
(CROSS-LICENSES) shall extend to the Licensee Party and to the Licensee Party's
Affiliates, as identified in one or more Schedules, provided that each such
Affiliate agrees in writing to comply with and be bound by all the terms and
conditions of this Agreement, and further provided that the Licensee Party
guarantees to the Licensor Party in writing such Affiliate's fulfillment of such
obligations. An "Affiliate" of a Licensee Party is any entity which is
controlled by the Licensee Party, any entity which controls the Licensee Party,
or any entity which is controlled by an entity which controls the Licensee
Party. Control occurs by an entity controlling or owning, directly or
indirectly, more than fifty percent (50%) of the voting stock of the controlled
entity.
3 No Implied Licenses. There are no implied licenses under this
Agreement, and any rights not expressly granted to the Licensee Party hereunder
are reserved by the Licensor Party.
3. PRODUCTS
In consideration for the Advance Payment set forth in Schedule 1,
TOSHIBA shall have the right, at any time during the term of this Agreement, to
add one or more Products to this Agreement.
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For each GEOWORKS or TOSHIBA Product, the Parties shall create and
attach one or more Schedules identifying the Licensed Technology and
establishing Product Specifications, a delivery schedule, acceptance procedures,
license terms, payment terms, and other pertinent provisions, including but not
limited to the following:
1 Identification of Licensed Technology
2 Product Specifications: The Parties understand that a mutually
satisfactory completion of each project under this Agreement requires the joint
development of a set of specifications which describe the Product and its
intended operations and features in reasonable detail. The Parties shall meet
and confer in order to draft and revise, as appropriate, the detailed written
specifications. Both Parties shall sign the agreed-upon detailed written
specification, which shall thereafter be a material provision of this Agreement.
3 Delivery Schedule: a detailed list or description of deliverable
components, a description of the medium on which deliverables shall be stored, a
timetable for delivery of the deliverable components, the location for delivery
and person designated to receive deliverables, and any other delivery terms
established by the Parties.
4 Acceptance: the criteria for acceptance or rejection of the
Licensed Technology, a procedure for testing and acceptance or rejection, a
procedure for correction of rejected items, and a timetable for such testing and
acceptance procedures.
5 License Terms: any license terms that may deviate from the
standard licensing provisions of Section 2 (CROSS-LICENSES) of this Agreement.
6 Payment: the amount of the payments and basis for calculation,
the Products to which the royalties are applied, royalty payment periods, and
any payment terms that may deviate from the standard payment provisions of
Section 5 (PAYMENTS) of this Agreement.
7 Product Materials and Marking Requirements: identification of the
Licensor Party's Product Materials to be included with the Product, the
proprietary markings and notices to appear on or with the Product, and any terms
that may deviate from the standard provisions of Sections 4.2 (GEOWORKS
Proprietary Notices), 6 (ADVERTISING, TRADEMARK USAGE/PROTECTION AND PUBLICITY)
and 7 (MISCELLANEOUS RECIPROCAL OBLIGATIONS) of this Agreement.
8 Training: the amount, nature, location and cost of training to be
provided by the Licensor Party to the Licensee Party.
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4. PROPRIETARY RIGHTS.
1 GEOWORKS Technology Ownership. Title to the GEOWORKS Licensed
Technology is reserved to GEOWORKS and its licensors. TOSHIBA acknowledges and
agrees that GEOWORKS and GEOWORKS' licensor(s) are and shall remain the owners
of all Intellectual Property Rights in and to the GEOWORKS Licensed Technology.
The terms "purchase", "sell," "sold" and "distributed," when used with the
GEOWORKS Licensed Technology in this Agreement refer only to the purchase, sale
or distribution of a license to use the Licensed Technology. TOSHIBA agrees that
it will not use, copy, distribute, modify or transfer the GEOWORKS Licensed
Technology except as expressly permitted in writing by GEOWORKS or otherwise in
accordance with the terms of this Agreement.
2 GEOWORKS Proprietary Notices. As a condition to the licenses
granted to TOSHIBA under Section 2 (CROSS-LICENSES), TOSHIBA shall reproduce and
include any and all GEOWORKS (and GEOWORKS' licensors') copyright notices,
patent notices, trademarks, service marks, restricted rights legends, and/or
other proprietary markings, all in the forms provided by GEOWORKS, in the manner
and location established in one or more Schedules.
3 TOSHIBA Technology Ownership. Title to the TOSHIBA Licensed
Technology is reserved to TOSHIBA and its licensors. GEOWORKS acknowledges and
agrees that TOSHIBA and TOSHIBA's licensor(s) are and shall remain the owners of
all Intellectual Property Rights in and to the TOSHIBA Licensed Technology. The
terms "purchase", "sell," "sold" and "distributed," when used with the TOSHIBA
Licensed Technology in this Agreement refer only to the purchase, sale or
distribution of a license to use the Licensed Technology. GEOWORKS agrees that
it will not use, copy, distribute, modify or transfer the TOSHIBA Licensed
Technology except as expressly permitted in writing by TOSHIBA or otherwise in
accordance with the terms of this Agreement.
4 TOSHIBA Proprietary Notices. As a condition to the licenses
granted to GEOWORKS under Section 2 (CROSS-LICENSES), GEOWORKS shall reproduce
and include any and all TOSHIBA (and TOSHIBA's licensors') copyright notices,
patent notices, trademarks, service marks, restricted rights legends, and/or
other proprietary markings, all in the forms provided by TOSHIBA, in the manner
and location established in one or more Schedules.
5 Warranty of Title.
(a) GEOWORKS hereby warrants that GEOWORKS owns all right, title
and interest in and to the GEOWORKS Licensed Technology or has obtained the
right to market or sublicense the Licensed Technology or any portion thereof
from a third party who does own the Licensed Technology or any portion thereof.
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(b) TOSHIBA hereby warrants that TOSHIBA owns all right, title
and interest in and to the TOSHIBA Licensed Technology or has obtained the right
to market or sublicense the Licensed Technology or any portion thereof from a
third party who does own the Licensed Technology or any portion thereof.
5. PAYMENTS.
1 Responsible Party. Each Party shall be responsible for the record
keeping, calculation, reporting and payment obligations of itself and all of its
Affiliates, so that all payments shall be made and all records shall be kept,
for purposes of audit, by a single entity.
2 Royalty Payments. The Parties shall establish initial royalties
for the sale or other distribution of each Product, and shall negotiate in good
faith to establish annual adjusted royalties for each Product.
(a) Annual Royalty Rate Determination. Unless a Schedule
provides otherwise, the royalty for a Product will be adjusted and determined
annually in advance, based upon:
A Per-Unit Royalty based on the ### ###, where ### is the
price paid to the Licensee Party by non-affiliated third parties (i.e., not
internal selling price)
The determination of each new annual royalty rate should be
influenced by the actual average wholesale price of the Product during the prior
year, the expected unit volume, the relative contribution of the Licensed
Technology to the total Product value, the prior year's royalty rate, the rate
of inflation, the Product's life cycle, and other factors
If the Parties are unable to reach agreement as to new
royalty rate, the previous royalty rate shall remain in effect.
(b) GEOWORKS Technology Royalties. Separate royalties for GEOS
2.X Operating System Technology and each GEOWORKS 2.X Application will be
determined. The royalty is anticipated to be in the range of ### of ### for GEOS
2.X Operating System Technology and ### of ### for GEOWORKS 2.X Applications
Technology. The royalty may be subject to ### for very ### ###, and ### for ###.
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3 Other Payments. As payment for services provided hereunder, the
Parties may provide for compensation from one Party to the other Party as set
forth in one or more Schedules.
4 Currency. All payments under this Agreement are to be made in
U.S. dollars.
5 Tax. Any withholding income tax under the laws of Japan or the
United States to be imposed upon the payments by one party (the "payor" Party)
to the other party (the "payee" Party) hereunder shall be the responsibility of
the payee Party. The payor Party is hereby authorized to deduct and pay such tax
to the relevant tax authorities on behalf of the payee Party. The payor Party
shall promptly furnish the payee Party with appropriate evidence certifying that
such tax has been paid.
6 Records. Each Party shall maintain complete and correct records
establishing the amount of royalties and other payments due hereunder. Each
Party shall ensure that any Affiliates and sub-contractors it may use in
accordance with this Agreement maintain similar records, and each Party shall
maintain copies of all such records at the location of the responsible Party, as
set forth in Section 5.1 (Responsible Party).
7 Reports. No later than forty-five (45) days after the end of each
calendar quarter, each Party shall send to the other Party a report detailing
for such Payment Period:
(a) The number of units of Product shipped by the reporting
Party, including a breakdown as applicable by Affiliate, Product, version and
country; and
(b) A detailed account of all royalty and other amounts due and
the basis for calculation.
At the same time as submitting the foregoing report, the reporting
Party shall pay the amount due for such Payment Period.
8 Audits. At reasonable times during the term of this Agreement and
for twelve (12) months after the later of (i) expiration or any termination of
this Agreement, or (ii) the date on which a Party last ships units of any
Product in accordance with Section 14.4 (Limited Rights After Termination), an
independent third-party representative of either Party, reasonably acceptable to
the other Party, upon reasonable notice and during the audited Party's normal
business hours, shall have the right to conduct an audit of the relevant
portions of the audited Party's books of account to verify compliance with this
Agreement. Notwithstanding the requirement that each Party maintain copies of
records of its Affiliates, as set forth in Section 5.1 (Responsible Party)
above, the audit may extend to the books of account of the audited Party and of
its Affiliates. The audited Party shall immediately pay any overdue payments
revealed by such audit(s), together with
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interest thereon at the rate of 1.5% per month (or the maximum permitted by
applicable law, if less) from the due date until paid. Except as set forth
below, such audit(s) may be conducted no more than once in any twelve-month
period. The auditing Party shall bear the costs of the audit; provided, however,
if the audit reveals overdue payments in excess of five percent (5%) of the
total royalty payable for any Payment Period, the audited Party shall pay the
costs of such audit(s) and for each such audit(s) the auditing Party shall have
the right to conduct another audit during the same twelve-month period. All
information obtained by the auditing Party's independent third party
representative during any such audit shall be confidential and the auditing
Party and its independent third party representatives will keep it confidential,
except to the extent it is reasonably necessary to disclose such information to
enforce this Agreement.
9 Inspection of Facilities. At reasonable times during the term of
this Agreement and for twelve (12) months after the later of (i) expiration or
any termination of this Agreement, or (ii) the date on which a Party last ships
units of any Product in accordance with Section 14.4 (Limited Rights After
Termination), an independent third party representative of either Party,
reasonably acceptable to the other Party, upon reasonable notice and during the
inspected Party's normal business hours, shall have the right to inspect the
premises of the other Party and its Affiliates to verify compliance with this
Agreement.
6. ADVERTISING, TRADEMARK USAGE/PROTECTION AND PUBLICITY.
1 Acknowledgement of GEOWORKS. TOSHIBA agrees that it will identify
the GEOWORKS Licensed Technology by its product(s) name(s) as set forth in one
or more Schedules, and GEOWORKS as the publisher of the Licensed Technology in
TOSHIBA's documentation included with Products. TOSHIBA further agrees to comply
with GEOWORKS' trademark usage guidelines as GEOWORKS, which GEOWORKS will
deliver to TOSHIBA together with the alpha delivery of the Licensed Technology.
2 Acknowledgement of TOSHIBA. Unless TOSHIBA gives prior written
permission, GEOWORKS shall not identify the TOSHIBA Licensed Technology by its
product(s) name(s), or TOSHIBA as the publisher thereof. However, GEOWORKS shall
be entitled to use TOSHIBA's name and the name of TOSHIBA's Products in
GEOWORKS' promotional literature and marketing materials upon GEOWORKS' receipt
of prior approval from TOSHIBA, such approval not to be unreasonably withheld.
7. MISCELLANEOUS RECIPROCAL OBLIGATIONS.
1 Customer Lists. Each Party will provide to the other Party at no
charge its list of customers (names and addresses) who have returned
registration cards included in Products. Such lists will be provided in machine
readable format (as available) within thirty days after each calendar quarter
during the term of this Agreement beginning with the first full calendar quarter
in which a Party first distributes any of the Products.
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2 Public Relations Programs. The Parties shall cooperate in
mutually beneficial public relations programs.
3 Press Releases. Neither Party shall issue any press releases
regarding this Agreement without the other Party's prior review and written
approval, not to be unreasonably withheld. Such review and comments will be
provided within five (5) business days.
4 Materials Packed with the Products. Unless provided otherwise in
a Schedule, each unit of Product will be packaged to include the Product
Materials provided by the Licensor Party, provided that the Licensee Party may
use at its discretion its own end user license agreement, subject to the prior
review and approval of the Licensor Party, such approval not to be unreasonably
withheld." The Licensee Party will have the right to pre-approve the Licensor
Party's Product Materials to be included with the Products, such approval not to
be unreasonably withheld or delayed (the Licensee Party to reply to the Licensor
Party within five (5) business days).
5 Outer Packaging and Screen Displays. Unless provided otherwise in
a Schedule, GEOWORKS' notices and/or logos, in the form provided by GEOWORKS and
approved by TOSHIBA (such approval not to be unreasonably withheld or delayed),
will appear prominently (1) on the outer packaging containing any TOSHIBA
Product (e.g., by means of a stick-on label); (2) on any separate GEOWORKS
Licensed Technology user manual or, if integrated therewith, on the Product user
manual, and (3) on a start-up display screen, an "about" screen, or other
mutually acceptable screen display.
8. LICENSED TECHNOLOGY ENHANCEMENTS.
Unless otherwise provided in an applicable Schedule, the cross-licenses
granted in Section 2 (CROSS-LICENSES) shall extend to, and the term "Licensed
Technology" shall be deemed to include, all Basic Enhancements developed and
released by each Party during the term of this Agreement. A "Basic Enhancement"
is any revision to the Licensed Technology which is denoted and designated by
the Licensor Party, in its sole discretion, as a change in the digit(s) to the
right of the decimal point [X.(X)X or X.X(X)] in the version number thereof. The
Licensee Party may incorporate any such Basic Enhancement in Products, at its
discretion and at its expense. Should the Licensee Party elect not to
incorporate and distribute such Basic Enhancement, then the Licensor Party may,
at its election, discontinue its support of the earlier version of the Licensed
Software nine (9) months after the Licensor Party's release of the Basic
Enhancement. Any amendment to the Licensed Technology which is denoted and
designated by the Licensor Party, in its sole discretion, as a change in the
digit(s) to the left of the decimal point [(X).XX] in the product version number
is considered to be a new technology and is not covered by this Agreement. Upon
the Licensee Party's request, the Parties shall negotiate in good faith as to
the terms and conditions under which such a new technology may be made available
to the Licensee Party.
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9. CUSTOMER SUPPORT.
1 First Level Customer Support. Each Party will provide, at a
minimum, telephone support for end users of its Products. In the event the
trained technical personnel are unable to answer the end users' question(s)
regarding the Licensed Technology after using reasonable efforts, such technical
personnel may contact the Licensor Party with respect to such technical support
questions. In the event that the Licensee Party's customers first call the
Licensor Party directly for technical support, the Licensor Party may refer such
customers to the Licensee Party.
2 Samples of Products. Before the first shipment, the License Party
will deliver to the Licensor Party at least five final versions of each Product.
The Licensor Party shall have and retain use of such Products to meet its
support and maintenance obligations under this Agreement.
10. MANUFACTURING RESPONSIBILITIES.
Unless otherwise provided in a Schedule, all Licensed Technology shall
be delivered to the Licensee Party on floppy diskette or tape in machine
readable text or code. The Licensee Party will manufacture accurate copies of
the Licensed Technology in its Products, at its expense, according to mutually
agreed quality control procedures and standards. Unless the Licensor Party
otherwise agrees in writing, all of the Licensed Technology computer programs
(including data files) shall be loaded in the Licensee Party's Product so that
all the functions and features of the Licensed Technology may be utilized by an
end user. Without the Licensor Party's prior written consent, the License Party
may not exclude any of the Licensed Technology computer programs.
11. GEOWORKS' INDEMNITIES.
1 Indemnity. GEOWORKS will defend TOSHIBA against, and pay any
resulting awards and settlements arising from, any claim, demand, suit or action
to the extent it alleges that any GEOWORKS Product or the GEOWORKS Licensed
Technology as supplied by GEOWORKS infringes upon any patent issued as of the
Effective Date of this Agreement, or any trademark or copyright or trade secret
of any third party, provided that (1) TOSHIBA promptly informs GEOWORKS in
writing of any such claim, demand, action or suit, (2) GEOWORKS is given control
over the defense thereof and TOSHIBA cooperates in the defense at GEOWORKS'
expense, and (3) TOSHIBA will not agree to the settlement of any such claim,
demand, action or suit prior to a final judgment thereon without the prior
written consent of GEOWORKS, which consent will not be unreasonably withheld.
TOSHIBA shall have the right to select its own counsel to participate in any
such defense at TOSHIBA's expense. GEOWORKS' indemnity obligations do not apply
to (1) modifications to the GEOWORKS Licensed Technology made by GEOWORKS to
TOSHIBA's specifications, (2) modifications made to the GEOWORKS Licensed
Technology by
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anyone other than GEOWORKS, (3) use of a superseded version of the GEOWORKS
Licensed Technology after release of an upgrade by GEOWORKS in accordance with
Section 8 (LICENSED TECHNOLOGY ENHANCEMENTS) hereof, (4) use of a superseded
infringing version of the GEOWORKS Licensed Technology by TOSHIBA after release
of a non-infringing version by GEOWORKS in accordance with Section 11.2 hereof
(GEOWORKS OPTIONS), and (5) any use or combination of the GEOWORKS Licensed
Technology with any technology, software or hardware not supplied by GEOWORKS,
if such alleged infringement would be avoided by use of the Licensed Technology
alone or with other technology, software or hardware. GEOWORKS' indemnity
obligation does apply to third-party software which is supplied by GEOWORKS with
the Licensed Software.
2 GEOWORKS' Options. If a claim, demand or suit alleging
infringement is brought or GEOWORKS believes one may be brought, GEOWORKS shall
have the option at its expense to (1) modify the GEOWORKS Licensed Technology to
avoid the allegation of infringement, while at the same time maintaining
compliance of the Licensed Technology with the Product Specifications (if
applicable), (2) obtain for TOSHIBA a license to continue bundling and/or
embedding the Licensed Technology, or (3) if neither (1) nor (2) is reasonably
practicable in GEOWORKS' discretion, terminate this Agreement as to the affected
Licensed Technology or portion thereof only, upon written notice.
3 Limitation. This Section 11 sets forth GEOWORKS' entire liability
to TOSHIBA for any actual or alleged infringement or misappropriation of any
third party's intellectual property rights resulting from the GEOWORKS Licensed
Technology.
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12. TOSHIBA'S INDEMNITIES.
1 Indemnity. TOSHIBA will defend GEOWORKS against, and pay any
resulting awards and settlements arising from any claim, demand, suit or action
to the extent it alleges that any TOSHIBA Product or the TOSHIBA Licensed
Technology as supplied by TOSHIBA infringes upon any patent issued as of the
Effective Date of this Agreement, or any trademark or copyright or trade secret
of any third party, provided that (1) GEOWORKS promptly informs TOSHIBA in
writing of any such claim, demand, action or suit, (2) TOSHIBA is given control
over the defense thereof and GEOWORKS cooperates in the defense at TOSHIBA'
expense, and (3) GEOWORKS will not agree to the settlement of any such claim,
demand, action or suit prior to a final judgment thereon without the written
consent of TOSHIBA, which consent will not be unreasonably withheld. GEOWORKS
shall have the right to select its own counsel to participate in any such
defense at GEOWORKS' expense. TOSHIBA's indemnity obligations do not apply to
(1) modifications to the TOSHIBA Licensed Technology made by TOSHIBA to
GEOWORKS' specifications, (2) modifications made to the TOSHIBA Licensed
Technology by anyone other than TOSHIBA, (3) use of a superseded version of the
TOSHIBA Licensed Technology after release of an upgrade by TOSHIBA in accordance
with Section 8 hereof (LICENSED TECHNOLOGY ENHANCEMENTS), (4) use of a
superseded infringing version of the TOSHIBA Licensed Technology by GEOWORKS
after release of a non-infringing version by TOSHIBA in accordance with Section
12.2 (TOSHIBA'S OPTIONS) hereof, and (5) any use or combination of the TOSHIBA
Licensed Technology with any technology, software or hardware not supplied by
TOSHIBA, if such alleged infringement would be avoided by use of the Licensed
Technology alone or with other technology, software or hardware.
2 TOSHIBA's Options. If a claim, demand or suit alleging
infringement is brought or TOSHIBA believes one may be brought, TOSHIBA shall
have the option at its expense to (1) modify the TOSHIBA Licensed Technology to
avoid the allegation of infringement, while at the same time maintaining
compliance of the Licensed Technology with the Product Specifications (if
applicable), (2) obtain for GEOWORKS a license to continue bundling and/or
embedding the Licensed Technology, or (3) if neither (1) nor (2) is reasonably
practicable in TOSHIBA's discretion, terminate this Agreement as to the affected
Licensed Technology or portion thereof only, upon written notice.
3 Limitation. This Section 12 sets forth TOSHIBA's entire liability
to GEOWORKS for any actual or alleged infringement or misappropriation of any
third party's intellectual property rights resulting from any Product.
13. ERROR CORRECTION.
1 Definition of Failure. For purposes of this Section 13, a Failure
is a variation in a Product, which is discovered and reported to the Licensor
Party during the term of this Agreement, between the Licensed Technology and the
Product Specifications, the existence of
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which can be verified by both Parties. The term "Failure," and the Licensor
Party's liability hereunder with respect to Failures, is limited to such a
variation with respect to hardware devices, software applications and systems,
and the intended uses of the Product which are expressly identified in (1) the
Product Specifications, and (2) a test plan jointly developed by the Parties as
set forth in one or more Schedules; and "Failures" are limited to variations as
to which the Licensor Party has had a reasonable testing opportunity prior to
Acceptance.
2 Request for Correction. If a Licensee Party identifies a Failure
at any time after Acceptance, the Licensee Party shall give written notice to
the Licensor Party specifying the nature of such Failure. Within seven (7) days
after receiving a written request from the Licensee Party and verifying the
error, the Licensor Party will provide to the Licensee Party a written analysis
of the cause of the Failure. Similarly, within fourteen (14) days after
receiving a request from the Licensee Party and verifying the error, the
Licensor Party will provide to the Licensee Party a written proposal to correct
the Failure. the Licensor Party agrees to effect such correction with deliberate
speed upon its receipt of the Licensee Party's written acceptance of the
Licensor Party's proposal to correct such Failure.
3 Liability for Cost of Correction. The Licensor Party shall be
responsible for all internal engineering expenses incurred by the Licensor Party
in connection with its correction of any Failure. The Licensee Party shall be
responsible for all costs and expenses associated with its refund, recall, or
replacement of any unit of any Product affected by any Failure.
4 No Second Royalties. If any unit of any Product affected by a
Failure is returned to the Licensee Party by the end-user for a repair or
replacement, the Licensor Party will receive no additional royalty by virtue of
the Licensee Party's repair or replacement of the returned unit.
5 EXCEPT AS SET FORTH IN THIS SECTION 13, AND TO THE EXTENT
PERMITTED BY APPLICABLE LAW, ALL EXPRESS AND IMPLIED WARRANTIES WITH RESPECT TO
THE LICENSED SOFTWARE, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE ARE HEREBY EXCLUDED.
14. TERM OF AGREEMENT AND TERMINATION.
1 Term. The term of this Agreement shall begin on the Effective
Date and shall continue for five (5) years unless terminated earlier in
accordance with this Agreement. The Agreement may be renewed or extended by
mutual Agreement.
2 Termination For Breach. Each Party shall have the right to
terminate this Agreement upon thirty (30) days prior written notice if the other
Party is in breach of any material term of this Agreement, including without
limitation the payment of monies, and the breaching
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Party fails to remedy such breach within the thirty-day notice period.
Notwithstanding the foregoing, either Licensor Party may terminate this
Agreement immediately upon written notice in the event the Licensee Party
distributes the Licensor Party's Licensed Technology in a manner that is not
bundled or embedded with a Product.
3 Bankruptcy. Each Party shall have the right to terminate this
Agreement immediately upon written notice in the event that the other Party
becomes insolvent, files for any form of bankruptcy, makes any assignment for
the benefit of creditors, or ceases to conduct business (other than in
connection with an assignment permitted under Section 17.2 (Assignment)).
4 Limited Rights After Termination. Upon any termination or
expiration of this Agreement, if this Agreement is not terminated due to breach
by a Licensee Party, each Licensee Party may continue to distribute its on-hand
inventory of Products in accordance with the terms and conditions of this
Agreement for a period of six (6) months following such termination or
expiration. Each Party will, however, cease production of any additional copies
of the other Party's Licensed Technology and any additional units of the Product
as of the termination date and will cause any third parties who obtained from it
the right to manufacture copies of the Licensed Technology or units of Product
to do likewise. Any termination or expiration shall not affect any end user's
rights to use Products and to obtain first level customer support from the
Licensee Party in accordance with the software end user license and shall
further not affect the right of any non-affiliated third party who purchased
units of Product from TOSHIBA to sell such units to its customers. The Licensee
Party may retain only such copies of the Licensed Technology as it may
reasonably require for its internal use in providing continued First Level
Customer Support to its end-user customers.
5 General Effect of Termination. Except as specifically set forth
above in Subsection 14.4 (Limited Rights After Termination), upon any
termination or expiration of this Agreement all rights granted hereunder,
including without limitation the licenses granted under Section 2
(CROSS-LICENSES), shall terminate and each Party shall (i) immediately cease all
use, localization, modification, sublicensing, copying, embedding, integration,
marketing and distribution of the other Party's Licensed Technology, (ii) within
thirty (30) days of such termination or expiration return all copies of the
Licensed Technology, including without limitation master diskettes, user
manuals, and unused registration cards and promotional material, (iii) within
thirty (30) days of such termination or expiration pay to the other Party any
and all sums due under this Agreement, and (iv) within thirty (30) days of such
termination or expiration certify in writing to the other Party that all of the
foregoing has been completed. Upon any termination of this Agreement, each Party
shall destroy or return to the other all Confidential Information provided by
the other Party.
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15. NONDISCLOSURE AND RESTRICTED USE.
1 Confidential Information. In the course of performing this
Agreement, each Party (the "Disclosing Party") may disclose to the other Party
("the Receiving Party") trade secrets and confidential and proprietary
information of the Disclosing Party, clearly marked or, in the case of verbal
communications, clearly confirmed in writing as "CONFIDENTIAL" or any other
similar legend ("Confidential Information"). Such Confidential Information
includes without limitation the terms and conditions of this Agreement,
technical and/or internal specifications of the Disclosing Party's products,
non-public marketing plans, future products and other non-public business
information, the trade secrets and technology embodied in the Licensed
Technology, the trade secrets and technology embodied in Products, each Party's
sales data and other non-public information. All Confidential Information shall
remain the sole property of the Disclosing Party and the Receiving Party shall
have no interest in or right to such Confidential Information except as
expressly set forth in this Agreement. Both Parties agree that all Confidential
Information of the other Party shall be held in strict confidence, will not be
disseminated or disclosed to any third party except the Affiliates of the
Receiving Party and will not be used by the Receiving Party nor its Affiliates
for any purpose other than performing its obligations under this Agreement
without the express written consent of the Disclosing Party for three (3) years
from the date of disclosure, except for Technical Information, which shall not
be subject to a time limit. "Technical Information" includes source code, pseudo
code, sample code for drivers and applications, flow charts, product
specifications, design documentation, programmer's documentation, and error
reports and analyses. Both Parties agree to use at least the degree of diligence
to protect the other Party's Confidential Information as a reasonably prudent
technology company would normally use to protect any of its own trade secrets
and other confidential information. The provisions of this Section shall not
apply to any information or materials:
(1) which are in the public domain at the time of disclosure to
the Receiving Party or which thereafter enter the public domain through no
action or inaction by the Receiving Party or its employees; or
(2) which the Receiving Party can establish and document was in
the possession of, or known by, the Receiving Party prior to its receipt from
the Disclosing Party; or
(3) which are rightfully disclosed to the Receiving Party by
another person not in violation of the proprietary or other rights of the
Disclosing Party, or any other person or entity; or
(4) which are independently developed by the Receiving Party,
provided that the person or persons developing the same have not had access to
the Confidential Information furnished to the Receiving Party by the Disclosing
Party hereunder; or
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(5) which are required to be disclosed pursuant to law,
provided, however, that a minimum of ten (10) days written notice shall be
provided by the Party intending to disclose in order to permit the
non-disclosing Party to take such action as it deems appropriate to prevent or
limit such disclosure.
2 Restricted Use. Without prejudice to the generality of the
foregoing, each Party agrees not to use any of the Confidential Information or
Licensed Technology of the other Party for any use or purposes except those
expressly specified herein.
16. LIMITATION OF LIABILITY.
EXCEPT FOR BREACH OF SECTION 15.2 (Restricted Use) AND EACH PARTY'S
INDEMNITY OBLIGATIONS WITH RESPECT TO THIRD PARTY CLAIMS UNDER SECTIONS 11
(GEOWORKS' INDEMNITIES) AND 12 (TOSHIBA'S INDEMNITIES), REGARDLESS OF WHETHER
ANY REMEDY SET FORTH HEREIN FAILS OF ITS ESSENTIAL PURPOSE, (1) NEITHER PARTY TO
THIS AGREEMENT SHALL BE LIABLE TO THE OTHER PARTY FOR INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES OR THE LOSS OF ANTICIPATED PROFITS ARISING FROM ANY
PERFORMANCE OR BREACH OF THIS AGREEMENT BY SUCH PARTY EVEN IF NOTICE IS GIVEN OF
THE POSSIBILITY OF SUCH DAMAGES, AND (2) IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR ANY DAMAGES IN EXCESS OF AMOUNTS PAID TO IT BY THE OTHER PARTY UNDER
THIS AGREEMENT.
17. GENERAL.
1 Entire Agreement. This Agreement and the Schedules hereto state
the entire agreement between the Parties and supersede all prior communications,
written or oral, between the Parties. No terms in any purchase order or other
forms shall apply, even if such purchase order or other forms are accepted by
either Party. No amendment or modification of this Agreement may be made except
by an instrument in writing signed by both Parties.
2 Assignment. This Agreement may not be assigned in whole or in
part by either Party without the prior written consent of the other Party, which
consent shall not be unreasonably withheld, except that either Party may assign
this Agreement without the other Party's prior written consent in the event of a
merger or reorganization of such Party or sale of substantially all of its
assets.
3 Governing Law. This Agreement will be governed and interpreted in
accordance with the laws of the State of California, U.S.A., except for that
body of law pertaining to conflicts of law, and the U.S. copyright laws, but
excluding the Convention on Contracts for the International Sale of Goods. Any
suit hereunder will be brought in the federal or state courts in the Northern
District of California and TOSHIBA hereby submits to the personal jurisdiction
thereof.
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4 Choice of Language. The original of this Agreement has been
written in English and English is the governing language of this Agreement.
5 Independent Contractors. Each Party will be deemed to have the
status of an independent contractor towards the other Party, and nothing in this
Agreement will be deemed to place the Parties in the relationship of
employer-employee, principal-agent, partners or joint venturers.
6 Attorneys' Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the provisions
of this Agreement, the prevailing Party in such action shall recover all
reasonable costs and expenses, including attorneys' fees, incurred in connection
therewith.
7 Waiver. The failure of either Party to enforce any provision of
this Agreement shall not be deemed a waiver of that or any other provision of
this Agreement.
8 Force Majeure. Neither Party will be deemed in default of this
Agreement to the extent that performance of its obligations is delayed or
prevented by reason of any act of God, fire, natural disaster, accident, act of
government, or any other cause beyond the control of such Party ("Force
Majeure"), provided that such Party gives the other Party written notice thereof
promptly and, in any event, within fifteen (15) days of discovery thereof and
uses its good faith efforts to cure the breach. In the event of such a Force
Majeure, the time for performance or cure will be extended for a period equal to
the duration of the Force Majeure but not in excess of six (6) months.
9 Severability. If any provision contained in this Agreement is
determined to be invalid or unenforceable, in whole or in part, the remaining
provisions and any partially enforceable provision will, nevertheless, be
binding and enforceable, and the Parties agree to substitute for the invalid
provision a valid provision which most closely approximates the intent and
economic effect of the invalid provision.
10 Notices. Notices to either Party shall be in writing, in the
English language, and shall be deemed delivered when served in person or two
business days after being dispatched by an internationally recognized express
courier service, and delivered to the addresses set forth in Schedule 2A. A
Party may change its address for purposes of receiving notices by giving notice
of the change to the other Party.
11 Survival. The rights and obligations under Sections 4
(PROPRIETARY RIGHTS), 5 (PAYMENTS), 11 (GEOWORKS' INDEMNITIES), 12 (TOSHIBA'S
INDEMNITIES), 13.4 (Waiver of Implied Warranties), 14.4 (Limited Rights After
Termination), 14.5 (General Effect of Termination), 15 (NONDISCLOSURE AND
RESTRICTED USE), 16
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(LIMITATION OF LIABILITY), and 17 (GENERAL) shall survive the expiration and any
termination of this Agreement.
12 Compliance With Laws. Both Parties agree to comply with all
applicable laws and regulations in performing their duties hereunder. Both
Parties understand that the Licensed Technology of the other Party may be
restricted by the governments of the United States and/or Japan from export to
certain countries and each Party agrees that it will not distribute or reexport
directly or indirectly, the Licensed Technology of the other Party, or its
direct product, in any way which will violate any of the export control laws or
regulations of the United States and Japan, or to any prohibited country under
such laws and regulations. TOSHIBA shall promptly comply, at its expense, with
any requirement that this Agreement be approved by or registered with the
Japanese Ministry of Finance, the Japanese Fair Trade Commission, and any other
agency or governmental body in Japan, as required by law. TOSHIBA shall keep
GEOWORKS currently informed of its efforts in this connection. If such approvals
are not obtained promptly after the Effective Date of this Agreement, then
GEOWORKS shall have the right to terminate this Agreement upon notice to
TOSHIBA.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
Effective Date.
TOSHIBA GEOWORKS
By: /s/ ▇. ▇▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
------------------------------------- -------------------------
Signature Signature
▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
---------------------------------------- ----------------------------
Print Name Print Name
General Manager International Agreements President
Negotiations and Legal Services Division ----------------------------
---------------------------------------- Title
Title
March 17, 1993 February 24, 1993
---------------------------------------- ----------------------------
Date Date
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SCHEDULE 1
TOSHIBA ADVANCED PAYMENT
AND BEST EFFORTS
Advanced Payment.
In consideration for the worldwide, corporate technology licenses granted to
TOSHIBA in Section 2 (CROSS-LICENSES), TOSHIBA agrees to pay to GEOWORKS the sum
of ### ###.
Payment shall be made as follows:
### upon signing this Agreement
### upon delivery by GEOWORKS to TOSHIBA of an alpha version of the
GEOWORKS Licensed Technology for the first TOSHIBA Product incorporating
the GEOWORKS 2.0 GEOS software
### upon final delivery by GEOWORKS to TOSHIBA of the GEOWORKS Licensed
Technology for the first TOSHIBA Product incorporating the GEOWORKS 2.0
GEOS software
The payments shall be treated as advances against royalties, and shall be
recouped by TOSHIBA out of ### of each royalty payment otherwise due to GEOWORKS
under this Agreement.
Marketing Efforts.
TOSHIBA agrees to actively develop and market Products incorporating the
GEOWORKS Licensed Technology.
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SCHEDULE 2
AFFILIATES
TOSHIBA AFFILIATES
Toshiba America Information Systems, Inc.
GEOWORKS AFFILIATES
GEOWORKS has no Affiliates at this time.
ADDITIONAL AFFILIATES
TOSHIBA and GEOWORKS may add Affiliates during the term of the Agreement,
subject to the prior approval of the other party, which will not be unreasonably
withheld.
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SCHEDULE 2A
ADDRESSES FOR NOTICES
GEOWORKS' ADDRESS TOSHIBA'S ADDRESS
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, PH 1-1, Shibaura 1-chome
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ Minato-ku, Tokyo 105
U.S.A. Japan
GEOWORKS' TELEPHONE NUMBER TOSHIBA'S TELEPHONE NUMBER
▇▇ ▇▇▇-▇▇▇-▇▇▇▇ ▇▇▇ ▇-▇▇▇▇-▇▇▇▇
GEOWORKS' FACSIMILE NUMBER TOSHIBA'S FACSIMILE NUMBER
▇▇ ▇▇▇-▇▇▇-▇▇▇▇ ▇▇▇ ▇-▇▇▇▇-▇▇▇▇
GEOWORKS' NOTICE RECIPIENT TOSHIBA'S NOTICE RECIPIENT
▇▇▇▇ ▇▇▇▇▇▇▇▇ Senior Manager
Vice-President, OEM Business International Agreements Negotiations
and Legal Services Division
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SCHEDULE 3
IDENTIFICATION OF THE GEOWORKS LICENSED TECHNOLOGY
1. GEOWORKS Ensemble 1.2 (Object Code)
GeoWorks Ensemble 1.2 (does not include Borland Quattro Pro)
2. GEOWORKS Application Software Version 2.0
GeoWrite
GeoCalc
GeoFile
GeoDraw
GeoComm
Notetaker
Solitaire
3. GEOWORKS 2.0 Operating System Software (Object Code)
Operating System Kernel
GeoManager, file manager
Preferences, application for setting system defaults
Personal Information Managers (PIM)
Calculator
GeoDex
GeoPlanner
Notepad
Scrapbook
Fonts and Font Rasterizer
4. Documentation:
All End-User Manuals and Documentation as provided by GEOWORKS
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5. Languages:
Licensed Technology:
GEOWORKS Ensemble 1.2: English
GEOWORKS Application
Software Version 2.0: English and Japanese (Localized version
developed pursuant to Schedule 8)
GEOWORKS 2.0 Operating
System Software: English and Japanese (Localized version
developed pursuant to Schedule 8)
Product Materials:
GEOWORKS Ensemble 1.2: English
GEOWORKS Application
Software Version 2.0: English and Japanese
GEOWORKS 2.0 Operating
System Software: English and Japanese
[Additional Technology may be added by mutual consent.]
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SCHEDULE 3A
LICENSE TO DISTRIBUTE ENSEMBLE 1.2
Licensor
GEOWORKS
Licensee
TOSHIBA (Japan only)
Licensed Technology
GEOWORKS Ensemble 1.2 (not including Borland Quattro Pro)
English Language Version
Licensed Materials
Object Code and End User Documentation (English) (one master copy of each)
License Rights
Non-exclusive right and license to use, execute, copy, reproduce, display,
perform, distribute internally and/or externally, license and sublicense in
Japan, in the English language version only
Royalty
###
Term of License
One year from Effective Date of this Agreement
Manufacturing
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Toshiba to manufacture and package copies at its expense. Packaging to be
approved by GEOWORKS.
Bundling Requirement
The Licensed Technology is to be distributed embedded in, or preloaded on,
TOSHIBA's personal computers
Warranty and Error Correction
GEOWORKS warrants only to TOSHIBA that for the one hundred eighty (180) days
following the date of initial delivery to TOSHIBA of the Licensed Technology
that:
(1) The Licensed Technology as supplied by GEOWORKS will perform
substantially the functions described in the user manuals provided by GEOWORKS;
and
(2) The media on which the master copy of the Licensed Technology is
furnished, if applicable, will be free from defects in materials and workmanship
under normal use.
Section 13 (ERROR CORRECTION) of the Agreement is not applicable.
Product Materials
[To be determined by GEOWORKS and approved by TOSHIBA]
Training
None.
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SCHEDULE 3B
LICENSE TO DISTRIBUTE GEOWORKS 2.0 OPERATING SYSTEM SOFTWARE
Licensor
GEOWORKS
Licensee
TOSHIBA
Licensed Technology
Operating System Kernel
GeoManager, file manager
Preferences, application for setting the system defaults
Personal Information Managers (PIM)
Calculator
GeoDex
GeoPlanner
Notepad
Scrapbook
Fonts and Font Rasterizer
Term of License
Term of the Agreement
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SCHEDULE 3C
LICENSE TO DISTRIBUTE GEOWORKS APPLICATION SOFTWARE VERSION 2.0
Licensor
GEOWORKS
Licensee
TOSHIBA
Licensed Technology
GeoWrite
GeoCalc
GeoFile
GeoDraw
GeoComm
Notetaker
Solitaire
Term of License
Term of the Agreement
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SCHEDULE 4
IDENTIFICATION OF THE TOSHIBA LICENSED TECHNOLOGY
1. ###
[Additional Technology may be added by mutual consent.]
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SCHEDULE 4A
LICENSE TO DISTRIBUTE TOSHIBA ###
Licensor
TOSHIBA
Licensee
GEOWORKS
Licensed Technology
###
Object Code and End User Documentation License Rights
Non-exclusive right and license to use, execute, copy, reproduce, display,
perform, distribute internally and/or externally, license and sublicense
Source Code License Rights
Non-exclusive right and license to reproduce, use internally, execute and
modify; no sublicensing.
Source Code is subject to Confidentiality and Nondisclosure provisions of the
Agreement. Access is to be limited to employees of GEOWORKS who need to have
access in order to carry out the purposes of this Agreement.
GEOWORKS may permit access to the Source Code by its contractors; provided that
such access and use is exclusively for GEOWORKS in connection with work called
for in written agreements between GEOWORKS and such contractor and is in
accordance with the terms of this Agreement. GEOWORKS' contractors shall agree
to the same responsibilities and other restrictions pertaining to the use of the
Source Code as those undertaken by GEOWORKS hereunder.
Modifications
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GEOWORKS may modify the source code to (1) correct Errors, (2) prepare
Derivative Works and (3) to integrate the ### with GEOWORKS' GEOS Technology.
All modifications will be owned exclusively by TOSHIBA. GEOWORKS agrees that if
under any judicial or statutory law of any country, or under any treaty,
GEOWORKS has heretofore acquired or may hereinafter acquire any right, title or
interest in and to any copyright, patent, trademark or trade secret
("Intellectual Property Rights") or Moral Rights (as defined below) in any or
all of the TOSHIBA Licensed Technology, then without prejudice to any other
right of TOSHIBA hereunder, GEOWORKS shall and hereby does waive such Moral
Rights, to the extent permitted by applicable law, and shall assign any and all
such Intellectual Property Rights and Moral Rights to TOSHIBA or as TOSHIBA may
direct. Such waiver and/or assignment shall be made upon the earliest to occur
of TOSHIBA's request, expiration of this Agreement, or earlier termination of
this Agreement. GEOWORKS agrees to take all necessary steps to perfect TOSHIBA's
rights in and to any or all of the TOSHIBA Licensed Technology. GEOWORKS hereby
appoints TOSHIBA as its attorney-in-fact to effect the assignment herein above
described.
Definition of Moral Rights. For purposes of this Agreement, "Moral Rights" means
any rights of paternity or integrity, any right to claim authorship of the
modified TOSHIBA Licensed Technology to object to any alleged distortion,
mutilation or other modification of, or other alleged derogatory action in
relation to, any or all of the TOSHIBA Licensed Technology whether or not such
would be prejudicial to GEOWORKS' honor or reputation, and any similar right,
existing under judicial or statutory law of any country, or under any treaty,
regardless of whether or not such right is denominated or generally referred to
as a "moral" right.
Royalty
Payable quarterly, expressed as a percentage of GEOWORKS' licensing revenue
attributable to the GEOS 2.0 Operating System when bundled with the TOSHIBA
Licensed Technology.
The royalty will be determined annually in advance.
The initial royalty, for the ### period commencing upon first shipment of a
bundled unit, shall be as follows: ### of GEOWORKS' licensing revenue
attributable to the GEOS 2.0 Operating system when bundled with the TOSHIBA
Licensed Technology
Term of License
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Term of the Agreement
Manufacturing
GEOWORKS to manufacture and package copies at its expense
Bundling Requirement
Licensed Technology to be distributed by GEOWORKS only bundled with its GEOS 2.X
operating system.
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SCHEDULE 5
LIST OF TOSHIBA PRODUCTS
1. "Pizza"
###
[Additional products to be added from time to time by TOSHIBA, during the term
of this Agreement.]
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SCHEDULE 5A
THE PIZZA PROJECT
Project Definition
A ### for the ### , to be developed by TOSHIBA. TOSHIBA will embed or
preload the GEOWORKS Licensed Technology in the Berkeley Product.
GEOWORKS Licensed Technology
GEOS 2.0 Operating System
The Following 2.0 Applications: [to be determined]
The Following End User Documentation (in English): [to be determined]
Localization
To be performed by ### under a separate Schedule
Specifications
To be developed by both Parties, signed by both Parties, and attached to
this Schedule.
Timetable
[to be determined]
GEOWORKS' Responsibilities
LOCALIZATION OF GEOWORKS LICENSED TECHNOLOGY:
### the localization of the GEOWORKS LICENSED TECHNOLOGY with necessary
assistance of ### in accordance with the Schedule 8.
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SUPPORT OF MODIFICATION OF TOSHIBA LICENSED TECHNOLOGY:
GEOWORKS shall provide TOSHIBA with necessary technical support to help
TOSHIBA modify TOSHIBA LICENSED TECHNOLOGY for the purpose of integration into
GEOWORKS LICENSED TECHNOLOGY as described in the Schedule 8.
SUPPORT OF CUSTOMIZATION FOR TOSHIBA PRODUCT:
Upon request of TOSHIBA, GEOWORKS shall provide TOSHIBA with necessary
technical assistance in the customization of GEOWORKS LICENSED TECHNOLOGY for
TOSHIBA PRODUCT.
TRAINING FOR TOSHIBA'S APPLICATION DEVELOPMENT:
Upon request of TOSHIBA, GEOWORKS shall provide TOSHIBA with necessary
training to enable TOSHIBA's engineers to develop TOSHIBA's own application
software which operates on GEOWORKS 2.0 Operating System Software.
TOSHIBA's Responsibilities
ASSISTANCE IN LOCALIZATION OF GEOWORKS LICENSED TECHNOLOGY:
TOSHIBA shall assist GEOWORKS in the localization of the GEOWORKS LICENSED
TECHNOLOGY in accordance with the Schedule 8.
MODIFICATION OF TOSHIBA LICENSED TECHNOLOGY:
TOSHIBA shall modify the TOSHIBA LICENSED TECHNOLOGY for the purpose of
integration into GEOWORKS LICENSED TECHNOLOGY as described in the Schedule 8.
DEVELOPMENT OF HARDWARE:
TOSHIBA shall develop the ### for the ### in which or with which the
GEOWORKS LICENSED TECHNOLOGY shall be embedded.
Compensation
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----------------------------------
###Confidential portions have been
omitted and filed separately with
the Commission.
----------------------------------
1. ###
2. ###
3. ###
The ### will be determined ###.
The ###, for the ### commencing upon ### of a ###, shall be as
follows:
###
###
Product Materials
[to be determined]
Training
[to be determined]
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SCHEDULE 6
LIST OF GEOWORKS PRODUCTS
1. GEOS 2.X
2. GEOWORKS Applications running under GEOS 2.X
[Additional products to be added from time to time by GEOWORKS, during the term
of this Agreement] SCHEDULE 7
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SCHEDULE 7
GEOWORKS TRADEMARKS, LOGOS AND PROPRIETARY MARKINGS
[To be amended by GEOWORKS from time to time during the term of this Agreement.]
Trademarks
GEOS(R)
PC/GEOS(R)
GEOWORKS(R)
GEOWORKS Ensemble(R)
Ensemble(R)
GeoComm(R)
GeoDex(R)
GeoDraw(TM)
GeoManager(TM)
GeoPlanner(TM)
GeoWrite(TM)
GeoFile(R)
GeoCalc(TM)
ROM/GEOS(TM)
Pen/GEOS(TM)
Logos
[to be determined]
Proprietary Markings
[to be determined]
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----------------------------------
###Confidential portions have been
omitted and filed separately with
the Commission.
----------------------------------
SCHEDULE 8
LOCALIZATION OF GEOWORKS LICENSED TECHNOLOGY
1 Introduction: TOSHIBA and GEOWORKS will cooperate in the localization
of the GEOWORKS Licensed Technology.
2 Localization Tasks: Localization tasks will include the following:
.1 Modification of the GEOS 2.0 Operating System to accommodate
double byte character set (DBCS) using Unicode
.2 Integration of the ### into the GEOS environment
.3 Integration of Kanji outline font(s)
.4 Localization of the GEOS 2.0 Operating System and 2.0 Application
Suite to Japanese Language and Custom, including ### ###.
.5 Creation of additional programs, to be determined
.6 User manual translation and localization
.7 Product Materials translation and localization
3 TOSHIBA Tasks:
[to be determined]
4 GEOWORKS Tasks:
[to be determined]
5 Procedures: TOSHIBA will recommend in writing, in English, any changes
appropriate to adapt the GEOWORKS Licensed Technology to the market in Japan or
required by the local laws of Japan. TOSHIBA and GEOWORKS will agree in writing
on appropriate changes
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and/or translations. TOSHIBA will assist in preparing such changes by utilizing
software localization tools provided by GEOWORKS, and TOSHIBA will review
GEOWORKS' execution of all agreed-upon changes and/or translations to GEOWORKS
programs. TOSHIBA is to make absolutely no changes directly to GEOWORKS
programs, either object code or source code, unless GEOWORKS gives prior written
approval to such changes. All such coding changes will be done by GEOWORKS,
unless GEOWORKS gives prior written approval to coding changes by TOSHIBA.
6 Approval by GEOWORKS: TOSHIBA shall not distribute or make use of any
of the localized GEOWORKS Licensed Technology until TOSHIBA has provided
GEOWORKS with a master copy of all disks and camera-ready copy of all printed
material and TOSHIBA has received written notification from GEOWORKS that the
adaptations or original work have been approved. GEOWORKS will perform such
review and notification in a timely manner.
7 Intellectual Property Rights and Moral Rights:
.1 Work for Hire. TOSHIBA will perform, as a work for hire and as an
independent contractor, the translations, localization and modifications
required by this Schedule and will waive and/or assign any and all ownership
rights to the localized GEOWORKS materials that might otherwise accrue to
TOSHIBA from its activities hereunder.
.2 Proprietary and Moral Rights. TOSHIBA agrees that if under any
judicial or statutory law of any country, or under any treaty, TOSHIBA has
heretofore acquired or may hereinafter acquire any right, title or interest in
and to any copyright, patent, trademark or trade secret ("Intellectual Property
Rights") or Moral Rights (as defined below) in any or all of the GEOWORKS
Licensed Technology, then without prejudice to any other right of GEOWORKS
hereunder, TOSHIBA shall and hereby does waive such Moral Rights, to the extent
permitted by applicable law, and shall assign any and all such Intellectual
Property Rights and Moral Rights to GEOWORKS or as GEOWORKS may direct. Such
waiver and/or assignment shall be made upon the earliest to occur of GEOWORKS'
request, expiration of this Agreement, or earlier termination of this Agreement.
TOSHIBA agrees to take all necessary steps to perfect GEOWORKS' rights in and to
any or all of the GEOWORKS Licensed Technology. TOSHIBA hereby appoints GEOWORKS
as its attorney-in-fact to effect the assignment herein above described.
.3 Definition of Moral Rights. For purposes of this Agreement,
"Moral Rights" means any rights of paternity or integrity, any right to claim
authorship of the localized GEOWORKS Licensed Technology to object to any
alleged distortion, mutilation or other modification of, or other alleged
derogatory action in relation to, any or all of the GEOWORKS Licensed Technology
whether or not such would be prejudicial to TOSHIBA's honor or reputation, and
any similar right, existing under judicial or statutory law of any country, or
under any treaty, regardless of whether or not such right is denominated or
generally referred to as a "moral" right.
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----------------------------------
###Confidential portions have been
omitted and filed separately with
the Commission.
----------------------------------
.4 United States Copyright Law. TOSHIBA'S localization services
shall be performed, interpreted and enforced under United States Copyright law.
.5 Japanese Copyright Law Conditional Provisions. If,
notwithstanding the Parties' agreement to apply United States Copyright Law to
this Agreement, any court of competent jurisdiction determines that this
Agreement, or TOSHIBA's localization services hereunder, are governed,
interpreted or enforced under Japanese law, then TOSHIBA agrees to the following
additional provisions:
.1 For purposes of the Japanese Copyright Act, any translation
of the Licensed Technology shall be considered a "copy," and any other adaption
of the Licensed Technology shall be considered a "secondary work."
.2 Notwithstanding the foregoing assignment provisions, if
TOSHIBA retains any residual copyright interest in any localized works prepared
hereunder, TOSHIBA hereby grants to GEOWORKS a royalty-free, worldwide,
perpetual, non-exclusive and irrevocable license to modify such localized works
for marketing and other business purposes, to the extent that any such
modification does not injure the reputation or honor of TOSHIBA, and to use,
copy, sell, license and distribute such modified localized works. TOSHIBA shall
exercise reasonable judgment in connection with any determination that a
modification by GEOWORKS made hereunder injures TOSHIBA's honor or reputation.
8 Timeline:
[to be determined]
9 Compensation:
[to be determined]
10. Indemnity and Error Correction: The provisions set forth in Sections
11 and 13 shall apply to the localization of GEOWORKS Application System Version
2.0 and GEOWORKS 2.0 Operating System Software except any portion of Toshiba ###
which is included in such localization.
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