TECHNOLOGY LICENSE
AND
DISTRIBUTION AGREEMENT
This Technology License and Distribution
Agreement (the "Agreement") is entered into
this 19th day of July, 1996 (the "Effective
Date") between Sun Microsystems, Inc, acting
by and through its JavaSoft business unit
("Sun") with its principal place of business
at 0000 Xxxxxx Xxxxxx, Xxxxxxxx Xxxx,
Xxxxxxxxxx 00000 and Jyra Research, Inc., a US
corporation with its principal place of
business at 00 Xxxxxxx Xxxxxx, Xxxxxxxxxx,
Xxxxxx 0X0, XX ("Licensee").
RECITALS
WHEREAS Sun wishes to license its eJavaOS
technology, while maintaining compatibility
among JAVA language-based products; and
WHEREAS Sun wishes to protect and promote
certain trademarks used in connection with its
eJavaOS and JAVA technologies; and
WHEREAS Licensee wishes to develop and
distribute products based upon Sun's eJavaOS
technology;
NOW THEREFORE, Sun and Licensee enter into
this Technology Licensing and Distribution
Agreement on the following terms.
1.0DEFINITIONS
1.1"Core Classes "means the classes
listed in Exhibit A.I.b.
1.2'Derivative ~work(s)" means: (i) for
material subject to copyright or mask work
right protection, any work which is based upon
one or more pre-existing works of the
Technology, such as a revision, modification,
translation, abridgement, condensation,
expansion, collection, compilation or any
other form in which such pre-existing works
may be recast, transformed or adapted, (ii)
for patentable or patented materials, any
adaptation, subset, addition, improvement or
combination of the Technology, and (iii) for
material subject to trade secret protection,
any new material, information or data relating
to and derived from the Technology, including
new material which may be protectable by
copyright, patent or other proprietary rights,
and, with respect to each of the above, the
preparation, use and/or distribution of which,
in the absence of this Agreement or other
authorization from the owner, would constitute
infringement under applicable law.
1.3"Documentation" means the
documentation which Sun provides for use with
the Technology, as more particularly
identified in Exhibit A.ll.
1.4"eJavaOS Environment' means the
combination of the JavaOS Runtime Interpreter,
Core Classes and Net Classes.
1.5"Embedded Application Programming
lnterface"or "EAPI" means the public
application programming interface to the
Technology as identified in Exhibit A, the
bytecode specification in the Documentation
entitled "Java Virtual Machine Specification"
and by the Java language specification in the
Documentation entitled "Java Language
Specification" and as modified by Sun during
the term of this Agreement, including all
public class libraries and interfaces.
1.8"Field of Use" means the relevant
market segments and/or product areas
identified in Exhibit B.
1.7"Java OS Runtime Interpreter" means
the program which implements the Java Virtual
Machine, as specified in the Java Virtual
Machine Specification, without the need for a
desktop-style
operating system, i.e., directly on bare
silicon. The JavaOS Runtime Interpreter is
formed of the Shared Part and the Platform-
Dependent Part.
1.8"Licensee Open Classes" means
additional Java classes developed by Licensee
which represent extensions to the EAPI, and
which are made available to third parties in
either source or binary form to use in the
development of additional software which
outputs Java bytecodes and/or runs on a Java
compatible Runtime Interpreter.
1.9"Net Classes" means the classes listed
in Exhibit A.l.c.
1.10
"Platform Dependent Part" means those
Source Code files and corresponding binary
code of the eJavaOS Environment which are not
in a "share" directory or subdirectory
thereof.
1.11
"Product(s) "means a Licensee product into
which the Technology is integrated in whole or
in part. A "Product" must: (i) have a
principal purpose which is substantially
different from that of the stand-alone eJavaOS
Environment; (ii) represent a significant
functional and value enhancement to the
eJavaOS Environment; (iii) operate in
conjunction with the eJavaOS Environment; and
(iv) not be marketed as a technology which
replaces or substitutes for the eJavaOS
Environment, A current list of Product(s) is
specified in Exhibit B, which may be amended
by Licensee to add Product(s) from time to
time.
1.12
"Shared Pad"means those those Source Code
files and corresponding binary code of the
eJavaOS Environment which are in any "share"
directory or subdirectory thereof.
1.13
"Source Code"means the human readable
version, in whole or in part, of the
Technology whether supplied by Sun or any
other entity, and any corresponding comments
and annotations.
1.14
"Technology" means the JavaOS Runtime
Interpreter, Core Classes and Net Classes, and
Updates thereto to the extent that Licensee is
entitled to receive them hereunder.
1.15
"Trademarks" means all names, logos,
designs, characters, and other designations or
brands used by Sun in connection with the
Technology.
1.16
"Updates" means bug fixes, modifications,
variations, enhancements, to the extent
included in a patch or dot release of the
Technology which Sun generally licenses as
part of the Technology.
2.0 LICENSE GRANTS
2.1Source Code License.
a. Subject to the terms and conditions
contained in this Agreement and subject to
Licensee's payments specified in Exhibit C,
Sun hereby grants to Licensee, under and to
the extent of Sun's Intellectual Property
Rights and solely for the Field(s) of Use
specified in Exhibit B, a perpetual,
worldwide, non-exclusive, non-transferable
license, without the right to sublicense
(except as specified in Section 0.xx(iii)),
to: (i) use the Source Code for internal
development and porting purposes, (ii)
modify the Source Code to create Derivative
Works (provided that Licensee shall be
limited solely to creating Derivative Works
that constitute Product(s), Licensee Open
Classes, and Licensee-implemented
modifications to the Platform Dependent
Part ("Permitted Derivative Works")), and
(iii) compile the Source Code and Permitted
Derivative Works thereof.
Licensee shall have no right to modify or
subset the EAPI or to modify' the
functional behavior of the JavaOS Runtime
Interpreter. Licensee may use the Source
Code of the Shared Part of the eJavaOS
Environment to develop Product(s),
Licensee Open Classes, and Licensee-
implemented modifications to the Platform
Dependent Part, but if it uses such Source
Code, it must use all of it without
modification.
Except as specified in Section 2.1 b(iii),
Licensee shall have no right to distribute
the Source Code of the Technology or of
Derivative Works.
b.Porting.
(i)Licensee may port the Platform
Dependent Part to platforms other than
those specified in Exhibit C.
(ii)Sun will work with Licensee to
identify any changes which are necessary
to the Shared Part of the eJavaOS
Environment to allow porting it to other
platforms, and Sun will use reasonable
efforts to make changes necessary to the
code for the Shared Part.
(iii) Licensee may sublicense and deliver
a copy of the Source Code of the
Technology to third parties (i) only in
association with the delivery and
sublicensing of Licensee Products, (ii)
solely for the purpose of enabling such
third party to port or localize Products
for Licensee, and (iii) only with Sun's
prior written approval. Any such
sublicense shall be made subject to terms
and conditions relating to ownership, use,
compatibility, and confidentiality of the
Technology substantially similar to those
contained herein.
c.Bug Fixes. Licensee will inform Sun
promptly, and no later than it informs any
third party, of any bugs identified in the
Technology, and to the extent that Licensee
elects to correct such bugs, Licensee will
make the Source Code of such bug fixes
promptly available to Sun free. of all
restrictions as they are implemented.
2.2 Binary Code License.
a.Sun hereby grants Licensee, under and to
the extent of Sun's Intellectual Property
Rights, a non-exclusive, worldwide, fully
paid up license to make, use and reproduce an
unlimited number of copies of the Technology
in binary form, for Licensee's internal use
during the term of this Agreement.
b.Worldwide Distribution. Sun hereby grants
Licensee a worldwide, nonexclusive license to
distribute the Product(s), solely in binary
form. Licensee may use such distribution
channels as Licensee deems appropriate,
including distributors, resellers, dealers
and sales representatives (collectively,
"Distributors"), provided however, that such
Distributors shall not modify the Technology,
and shall be obligated to abide by the
relevant terms in this Agreement governing
use, distribution, compatibility, and
confidentiality.
2.3 Documentation.
a. Sun hereby grants to Licensee, under and
to the extent of Sun's Intellectual Property
Rights, a non-exclusive, non-transferable
license to: (i) use the Documentation for
internal development purposes, (ii) copy, use
and modify the Documentation to create
technically accurate Licensee documentation
(which must include all the relevant Sun
copyrights, notices, and marks), (iii)
translate the Documentation into other
languages, and (iv) distribute such
translated or modified Documentation in
connection with distribution of the
Product(s). Licensee may also use a pointer
to the Sun Documentation on the Internet in
connection with distribution of the
Product(s).
2.4 Compatibilitv.
a.JavaOS Compatibility.
(i)From time to time, Sun will make
available test suites at no cost for
validating that Licensee's Product complies
with the then-current Specification of the
JavaOS Technology as defined by Sun as of the
date of that test suite ("JavaOS Test
Suite"). Sun shall use reasonable efforts to
review any changes to such JavaCS Test Suites
as much in advance as possible with Licensee,
but failure of Sun to do so shall not
constitute a breach of this Agreement and
shall not invalidate any such JavaOS Test
Suite published by Sun.
(ii)Each revision of a Product released by
Licensee must pass (confidential information
has been omitted and filed separately with
the SEC) that were current one hundred twenty
(120) days before First Customer Shipment of
such revision of such Product. Licensee shall
not release or distribute to any third party
the portion of Licensee's Product that
interprets Java bytecodes, which does not
successfully pass (confidential information
has been omitted and filed separately with
the SEC).
(iii) If Licensee provides Sun with written
notice of the existence of a bug in a current
JavaOS Test Suite, Licensee shall be released
from compatibility with the minimum portion
of such JavaOS Test Suite necessary to avoid
the impact of such bug, until such time as
Sun provides to Licensee a corrected or new
JavaOS Test Suite.
b. Applet Tag Compatibility. Any Product
that reads or writes hypertext markup
language (HTML) or standard generalized
markup language (SGML) shall use the Document
Type Definition ("DTD") as specified in
Exhibit E when referencing the Applet tag,
unless another DTD is defined for the Applet
tag by an industry standard.
c. Branding and Trademarks. Licensee shall
use a logo specified by Sun that indicates
compatibility with the JavaOS Test Suites
(the "Compatibility Logo") in a trademark
manner on all Licensee Product(s) distributed
hereunder. The terms and conditions governing
the parties' agreement as to trademarks,
logos, and branding shall be governed by the
Trademark License entered into herewith,
attached as Exhibit F hereto, and
incorporated by reference herein)
2.5 Licensee Open Classes.
(i) Licensee shall deliver to Sun free of
all restrictions the specification for the
application programming interface for each
Licensee Open Class as early as is reasonably
possible but in no event later than the date
on which it first provides such specification
or an implementation thereof to any third
party. Included in such specification shall
be an appropriate test suite sufficiently
detailed to allow Sun and third parties to
produce implementations compatible with the
specification. Licensee shall use its
reasonable commercial efforts to clarify' and
correct the specification or the test suite
upon written request by Sun and failure to do
so within sixty (80) days after such request
shall constitute breach of this Agreement.
(ii) Licensee shall notify Sun as soon as it
has made any general disclosure (i.e., not
subject to confidentiality obligations) of
such specification, or first releases a
Product implementing such specification,
after which Sun shall have no obligation of
confidentiality whatsoever with respect to
such specification. Licensee agrees that it
will take no steps whatsoever to prevent Sun
or any third party from creating independent
and compatible implementations based on such
specification, provided that such
implementations do not violate Licensee's
patents, copyrights or trade secrets in
Licensee's implementation of the Licensee
Open Classes (i.e., Licensee agrees that it
will not enforce copyright or patent claims
that relate to interface or compatibility
with such specification).
(iii) Licensee shall confine the names of all
Licensee Open Classes to names beginning with
"COM.Licensee" or such other convention as
Sun may reasonably require and shall not
modify or extend the names of public class or
interface declarations whose names begin with
"java", "COM.sun" or their equivalents in any
subsequent naming convention. Licensee will
make reasonable commercial efforts to ensure
that other commercial software packages which
it redistributes conform to this convention.
(iv) Licensee hereby grants Sun a non-
exclusive, worldwide, fully-paid-up license
to use an unlimited number of copies of the
Licensee Open Classes, in binary form, for
Sun's internal use, such use including but
not limited to demonstration rights. Licensee
agrees to reasonably negotiate in good faith
with Sun the terms of a commercial license
for the source code of the Licensee Open
Classes. The parties agree that the fees and
other terms and conditions of this Agreement
are a reasonable standard against which to
judge such a license on a proportionate basis
comparing the scope and complexity of the
portion of the Licensee Open Class being
licensed to the scope and complexity of the
Technology.
2.6Ownership.
a. Ownership by Sun. Sun retains all right,
title and interest in the Technology,
Documentation, Updates, bug fixes,
Trademarks, and Derivative Works, (except
for Permitted Derivative Works) and
associated Intellectual Property Rights.
Licensee agrees to execute (in recordable
form where appropriate) any instruments
and/or documents as Sun may reasonably
request to verify and maintain Sun's
ownership rights, or to transfer any part
of the same which may vest in Licensee for
any reason. Licensee further agrees to
promptly deliver to Sun any Derivative
Works in source code form (except for
Permitted Derivative Works) of the
Technology created by Licensee pursuant to
and during the term of this Agreement. Sun
shall have no obligations of
confidentiality to Licensee for such
Derivative Works, nor shall Sun be
obligated to incorporate any such
Derivative Works into the Technology.
b. Ownership by Licensee. Licensee retains
all right, title and interest in Permitted
Derivative Works created by Licensee
pursuant to and during the term of this
Agreement, subject to Sun's underlying
rights in the Technology and associated
Intellectual Property Rights identified in
Section 2.6a.
2.7Protection of Sun's Rights. Licensee
shall use, modify' and practice the Technology
and manufacture, market, distribute and sell
Product(s), Licensee Open Classes, and
Licensee-implemented modifications to the
Platform-Dependent Part of the eJavaOS
Environment only in a manner consistent with the
terms of this Agreement, and only in a manner
reasonably designed not to jeopardize or
prejudice Sun's Intellectual Property Rights,
including trademarks, trade dress and service
marks, and other proprietary rights.
2.8No Other Grant. Each party agrees that
this Agreement does not grant any right or
license, under any Intellectual Property Rights
of the other party, or otherwise, except as
expressly provided in this Agreement, and no
other right or license is to be implied by or
inferred from any provision of this Agreement or
by the conduct of the parties.
2.9Pre-Release. Licensee may release
Product(s) based on the pr~CS Technology
licensed by Sun hereunder only for beta testing
purposes.
3.0SUPPORT AND UPDATES
3.1During the Support Period (as defined
below), Sun shall provide to Licensee under the
terms and conditions of this Agreement, Updates
for the platforms specified in Exhibit C when
and if any such Updates are made available by
Sun to any commercial licensee similarly
situated.
3.2Subject to payment of the fee specified
in Exhibit C (3), Sun shall assign the
equivalent of one (1) half-time engineer to be
available via phone, electronic mail and/or
scheduled appointment during regular business
hours to support Licensee, from the Effective
Date through the fifth (5th) anniversary of the
Sun FCS Date (as defined below) (the "Support
Period"). The selection of the support engineer
shall be at Sun's sole discretion. Licensee may
designate a maximum of three (3) contacts to
interface with the Sun support engineer.
3.3Upon the request of Licensee, Sun agrees
to reasonably negotiate in good faith for
additional support through a separate support
agreement.
4.0
PAYMENT
4.1License Fees. Support Fees and
Royalties. Licensee shall pay to Sun the license
and support fees set forth in Exhibit C within
thirty (30) days from the Effective Date of this
Agreement, unless otherwise specified in Exhibit
C. Thereafter, and for the term of the
Agreement, Licensee shall pay the Support Fee on
or before the anniversary of the Effective Date.
Licensee shall pay to Sun the Royalties due
hereunder as set forth in Exhibit C.
4.2Taxes. All payments required by this
Agreement shall be made in United States
dollars, are exclusive of taxes, and Licensee
agrees to bear and be responsible for the
payment of all such
taxes, including, but not limited to, all sales,
use, rental receipt, personal property or other
taxes and their equivalents which may be levied
or assessed in connection with this Agreement
(excluding only taxes based on Sun's net
income).
4.3Records. Licensee shall maintain account
books and records consistent with Generally
Accepted Accounting Principles appropriate to
Licensee's domicile, as may be in effect from
time to time, sufficient to allow the
correctness of the royalties required to be paid
pursuant to this Agreement to be determined.
4.4Audit Rights. Sun shall have the right
to audit such accounts upon reasonable prior
notice. The right to audit may be exercised
through an independent auditor of Sun's choice
(the "Auditor"). The Auditor shall be bound to
keep confidential the details of the business
affairs of Licensee and to limit disclosure of
the results of any audit to only the sufficiency
of the accounts and the amount, if any, of any
additional payment or other payment adjustment
that should be made. Such audits shall not occur
more than once each year (unless discrepancies
are discovered in excess of the five percent
(5%) threshold set forth in Section 4.5, in
which case two consecutive quarters per year may
be audited). Except as set forth in Section 4.5
below, Sun shall bear all costs and expenses
associated with the exercise of its rights to
audit.
4.5Pavment Errors. In the event that any
errors in payments shall be determined, such
errors shall be corrected by appropriate
adjustment in payment for the quarterly period
during which the error is discovered. ln the
event of an underpayment of more than five
percent (5%) of the proper amount owed, upon
such underpayment being properly determined by
the Auditor, Licensee shall reimburse Sun the
amount of said underpayment and the reasonable
charges of the Auditor in performing the audit
that identified said underpayment, and interest
on the overdue amount at the prime rate plus
three percent (3%), from the date of accrual of
such obligation.
5.0
ADDITIONAL AGREEMENT OF PARTIES
5.1Notice of Breach or Infringement. Each
party shall notify' the other immediately in
writing when it becomes aware of any breach or
violation of the terms of this Agreement, or
when Licensee becomes aware of any potential or
actual infringement by a third party of the
Technology or Sun's Intellectual Property Rights
therein.
5.2Notices. Licensee shall not remove any
copyright notices, trademark notices or other
proprietary legends of Sun or its suppliers
contained on or in the Technology or
Documentation. Each unit of Product(s)
containing the Technology distributed by
Licensee shall include in Licensee's
documentation, or in other terms and conditions
of sale, notices substantially similar to those
contained on and in the Technology. Licensee or
its Distributors shall require an end user
license agreement for each unit of Product(s)
shipped and Licensee shall provide Sun with a
copy of such form agreement for review and
approval. If Licensee or its Distributors use a
package design or label for the Product(s), such
package design or label shall include an
acknowledgement of Sun as the source of the
Technology and such other notices as specified
in Exhibit F In addition, Licensee shall comply
with all reasonable requests by Sun to include
Sun's copyright and/or other proprietary rights
notices on the Product(s), documentation or
related materials, including but not limited to
the notices and acknowledgements as specified in
Exhibit F.
5.3End User Support. Licensee shall provide
technical and maintenance support service for
its distributors and end user customers in
accordance with Licensee's standard support
practices. Sun shall not be responsible for
providing any support to Licensee's distributors
or customers for the Technology or the
Product(s).
5.4Marketing. Licensee will cooperate with
Sun on mutually agreeable marketing and
promotional activities relating to the
Technology. Licensee's initial press
announcement concerning execution of this
Agreement must be reviewed and approved by Sun
prior to its release.
5.5Use of Licensee's name. Licensee hereby
authorizes Sun to identify' Licensee as a user
of the Technology in advertising, marketing,
collateral, customer lists and customer success
stories prepared by or on behalf of Sun for the
Technology, provided that Licensee will have the
right to approve the use of its name, such
approval not to be unreasonably withheld or
delayed.
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6.0LIMITED WARRANTY AND DISCLAIMER
6.1Limited Warranty. Sun represents and
warrants that the media on which the Technology
is recorded will be free from defects in
materials and workmanship for a period of ninety
(90) days after delivery. Sun's sole liability
with respect to breach of this warranty is to
replace the defective media. Except as expressly
provided in this Section 8.1, Sun licenses the
Technology and Documentation to Licensee on an
"AS 15" basis.
6.2General Disclaimer. EXCEPT AS SPECIFIED
IN THIS AGREEMENT, ALL EXPRESS OR IMPLIED
REPRESENTATIONS AND WARRANTIES, INCLUDING ANY
IMPLIED WARRANTY OF MERCHANTABILITY FITNESS FOR
A PARTICULAR PURPOSE OR NON-INFRINGEMENT, ARE
HEREBY DISCLAIMED.
6.3Logo Disclaimer. SUN MAKES NO WARRANTIES
OF ANY KIND RESPECTING THE COMPATIBILITY
LOGO(s), INCLUDING THE VALIDITY OF SUN'S RIGHTS
IN THE
COMPATIBILITY LOGO(s) IN ANY COUNTRY AND
DISCLAIMS ANY AND ALL WARRANTIES THAT MIGHT
OTHERWISE BE IMPLIED BY APPLICABLE LAW,
INCLUDING WARRANTIES AGAINST INFRINGEMENT OF
THIRD PARTY TRADEMARKS.
6.4Limitation. The warranties set forth in
this Article 6.0 are expressly subject to
Section 9.0 (Limitation of Liability).
7.0
CONFIDENTIAL INFORMATION
7.1Confidential Information. For the
purposes of this Agreement, "Confidential
Information" means the Technology and hat
information which relates to (i) Sun hardware or
software, (ii) Licensee hardware or software,
(iii) the customer lists, business plans and
related information of either party, and (iv)
any other technical or business information of
the parties, including the terms and conditions
of this Agreement In all cases, information
which a party wishes to be treated as
"Confidential Information" shall be marked as
"confidential" or "proprietary" (or with words
of similar import) in writing by the disc!osing
party on any tangible manifestation of the
information transmitted in connection with the
disclosure, or, if disclosed orally, designated
as "confidential" or "proprietary" (or with
words of similar import) at the time of
disclosure. Sun has no obligation of
confidentiality to Licensee with respect to
Derivative Works (except for Permitted
Derivative Works) and the specifications of the
Licensee Open Classes.
7.2Preservation of Confidentiality. The
parties agree that all disclosures of
Confidential Information (as defined under
Section 7.1 above) shall be governed by and
treated in accordance with the terms of the
Confidential Disclosure Agreement (the "CDA")
attached hereto as Exhibit D and incorporated
herein by reference, modified as follows:
(a)the definition of "Confidential
Information" shall be as set forth in
Section 7.1 above notwithstanding any
definition set forth in the CDA;
(b)the use of Confidential Information
shall be limited to the scope of the
licenses provided in this Agreement;
and
(c)the obligations of confidentiality
expressed in the CDA shall extend
three (3) years beyond termination of
this Agreement, except with respect
to Sun Source Code which shall be
held in confidence in perpetuity; and
(d)the CDA shall remain in effect for
the term of this Agreement.
8.0 LIMITED INDEMNITY
8.1Licensee acknowledges that Sun shall not
be liable for any defects or deficiencies in the
Technology or in any Product process or design
created by, with or in connection with the
Technology whether or not such defect and/or
deficiencies are caused, in whole or in part, by
defects or deficiencies in the design or
.implementation of the Technology. Upon delivery
of the Technology by Sun pursuant to this
Agreement, Sun will provide to Licensee a
limited indemnity as described in Sections 8.2-
8.5 below.
8.2Sun will defend, at its expense, any
legal proceeding brought against Licensee, to
the extent it is based on a claim that use of
the Technology is an infringement of a trade
secret or copyright in any country that is a
signatory to the Berne Convention, and will pay
all damages awarded by a court of competent
jurisdiction attributable to such claim,
provided that Licensee: (i) gives written notice
of the claim promptly to Sun; (ii) gives Sun
sole control of the defense and settlement of
the claim; (iii) provides to Sun, at Sun's
expense, all available information, assistance
and authority to defend; and (iv) has not
compromised or settled such proceeding without
Sun's prior written consent.
8.3Should any Technology or any portion
thereof become, or in Sun's opinion be likely to
become, the subject of a claim of infringement
for which indemnity is provided under Section
8.2, Sun shall, as Licensee's sole and exclusive
remedy for ongoing infringement, elect to: (i)
obtain for Licensee the right to use such
Technology; (ii) replace or modify the
Technology so that it becomes non-infringing; or
(iii) accept the return of the Technology and
grant Licensee a refund of the License Fee and
royalties, as depreciated on a five year
straight-line basis.
8.4Sun shall have no liability for any
infringement or claim which results from: (i)
use of other than a current unaltered version of
the Technology, if such version was made
available to Licensee; (ii) use of the
Technology in combination with any non-Sun-
provided equipment, software or data; or (iii)
Sun's compliance with designs or specifications
of Licensee.
8.5THIS ARTICLE STATES THE ENTIRE LIABILITY
OF SUN WITH RESPECT TO
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS
BY THE TECHNOLOGY. SUN
SHALL HAVE NO OTHER LIABILITY WITH RESPECT TO
INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS OF
LICENSEE OR ANY THIRD PARTY AS A RESULT OF USE,
LICENSE, OR SALE OF TECHNOLOGY
8.6Indemnity by Licensee. Except for claims
for which Sun is obligated to indemnify Licensee
under Section 8.2, Licensee shall defend and
indemnify Sun from any and all claims brought
against Sun by third parties, and shall hold Sun
harmless from all corresponding damages,
liabilities, costs and expenses, (including
reasonable attorneys' fees) incurred by Sun
arising out of or in connection with Licensee's
use, reproduction or distribution of the
Technology, Product(s) or Licensee Open Classes.
Licensee's obligation to provide indemnification
under this Section shall arise provided that
Sun: (i) gives notice of the claim promptly to
Licensee; (ii) gives Licensee sole control of
the defense and settlement of the claim; (iii)
provides to Licensee, at Licensee's expense, all
available information, assistance and authority
to defend; and (iv) has not compromised or
settled such proceeding without Licensee's prior
written consent.
9.0LIMITATION OF LIABILITY
9.1Limitation of Liability. Except for
express undertakings to indemnify under this
Agreement and/or breach of Sections 2.4, 7.0 or
9.2:
a. Each party's liability to the other for
claims relating to this Agreement, whether for
breach or in tort, shall be limited to the
license fees and royalties paid by Licensee for
the Technology related to the claims.
b. IN NO EVENT WILL EITHER PARTY BE LIABLE FOR
ANY INDIRECT INCIDENTAL, SPECIAL, CONSEQUENTIAL
OR PUNITIVE DAMAGES IN CONNECTION WITH OR
ARISING OUT OF THIS AGREEMENT (INCLUDING LOSS OF
PROFITS, USE, DATA, OR OTHER ECONOMIC
ADVANTAGE), NO MATTER WHAT THEORY OF LIABILITY,
EVEN IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN
THIS AGREEMENT FAIL OF THEIR ESSENTIAL PURPOSE
AND EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OR PROBABILITY OF SUCH DAMAGES.
FURTHER, LIABILITY FOR SUCH DAMAGE SHALL BE
EXCLUDED, EVEN IF THE EXCLUSIVE REMEDIES
PROVIDED FOR IN THIS AGREEMENT FAIL OF THEIR
ESSENTIAL PURPOSE. The provisions of this
Section 9.0 allocate the risks under this
Agreement between Sun and Licensee and the
parties have relied upon the limitations set
forth herein in determining whether to enter
into this Agreement.
9.2High Risk Activities. The Technology is
not designed or intended for use in on-line
control of aircraft, air traffic, aircraft
navigation or aircraft communications; or in the
design, construction,
operation or maintenance of any nuclear
facility. Sun disclaims any express or implied
warranty of fitness for such uses. Licensee
agrees that it will not knowingly use or license
the Technology for such purposes, and that it
will ensure that its customers and end users of
the Technology are provided with a copy of the
foregoing notice.
10.0 TERM AND TERMINATION
10.1 Term. The term of this Agreement shall begin
on the Effective Date and shall continue for a
period of five (5) years, or until terminated as
provided below. Each year for five (5)
consecutive years following expiration of the
initial five (5) year term, at Licensee's sole
option, Licensee may extend the term of this
Agreement for one (1) additional year. Licensee
shall indicate its intent to extend the
Agreement by written notice to Sun within thirty
(30) days prior to the expiration of the
preceding term. Termination is permitted either
for breach of this Agreement, upon thirty (30)
days written notice to the other party and an
opportunity to cure within such thirty (30) day
period, or upon any action for infringement of
any patent relating to the Technology by
Licensee against Sun or any of Sun's licensees
of the Technology.
10.2Termination for Convenience. Licensee may
notify Sun in writing at any time after the
first full year of this Agreement of its intent
to terminate this Agreement for Licensee's
convenience. Such termination shall be effective
at the next anniversary date of the Agreement
that occurs more than ninety (90) days after
Sun's receipt of such notice.
10.3Effect of Expiration. Upon expiration of
this Agreement, Sun shall retain use, under the
terms of this Agreement, of the Intellectual
Property Rights received hereunder, and Licensee
shall be authorized to: (i) distribute
Product(s) containing the version of the
Technology incorporated therein at the time of
expiration, subject to Licensee's continued
compliance with the JavaOS Test Suites current
at the time of expiration, and payment of
royalties, and (ii) retain one (1) copy of the
Technology in Source Code form to support
customers having copies of Product(s)
distributed by Licensee. All rights of Licensee
to receive Updates and/or Support hereunder
shall terminate upon such expiration.
10.4Effect of Termination.
a. In the event of termination of this Agreement
by Sun in accordance with Section 10.1 above or
by Licensee in accordance with Section 10.2
above, Licensee shall promptly: (i) return to
Sun all copies of the Technology and Derivative
Works thereof in tangible or electronic form,
Documentation, and Confidential information
(collectively "Sun Property") (excluding
Products, Licensee Open Classes and Licensee-
Implemented modifications to the Platform
Dependent Pant) in Licensee's possession or
control; or (ii) permanently destroy or disable
all copies of the Sun Property in Licensee's
possession or control, except as specifically
permitted in writing by Sun; and (iii) provide
Sun with a written statement certifying that
Licensee has complied with the foregoing
obligations. All rights and licenses granted to
Licensee shall terminate upon such termination.
b. In the event of termination of this Agreement
by Licensee in accordance with Section 10.1
above, the rights and licenses granted to
Licensee in this Agreement shall not terminate.
10.5No Liability for Expiration or Lawful
Termination. Neither party shall have the right
to recover damages or to indemnification of any
nature, whether byway of lost profits,
expenditures for promotion, payment for goodwill
or otherwise made in connection with the
business contemplated by this Agreement, due to
the expiration or permitted or lawful
termination of this Agreement. EACH PARTY WAIVES
AND RELEASES THE OTHER FROM ANY CLAIM TO
COMPENSATION OR INDEMNITY FOR TERMINATION OF THE
BUSINESS RELATIONSHIP UNLESS TERMINATION IS IN
MATERIAL BREACH OF THIS AGREEMENT.
10.6No Waiver. The failure of either party to
enforce any provision of this Agreement shall
not be deemed a waiver of that provision. The
rights of Sun under this Section 1 0.0 are in
addition to any other rights and remedies
permitted by law or under this Agreement.
10.7Survival. The parties' rights and
obligations under Sections 4.0 (for royalty
payments), 5.2, 5.3, 6.0, 7.0, 8.0, 9.0,10.0,
and 11.0 shall survive expiration or termination
of this Agreement.
10.8 Irreparable Harm. The parties acknowledge
that breach of Sections 2.0, 5.2, 5.3,7.0, 9.2,
or 11.8 may cause irreparable harm, the extent
of which would be difficult to ascertain.
Accordingly, they agree that, in addition to any
other legal remedies to which a non-breaching
party might be entitled, such party may seek
immediate injunctive relief in the event of a
breach of the provisions of such Articles.
11.0 MISCELLANEOUS
11.1Notices. All notices must be in writing and
delivered either in person or by certified mail
or registered mail, postage prepaid, return
receipt requested, to the person(s) and address
specified below. Such notice will be effective
upon receipt.
Sun
Licensee
Sun Microsystems, lnc.
0000 Xxxxxx Xxxxxx, XXXX00xX0
Xxxxxxxxx, Xxxxxxxxxx 0000x0000
Attn:Sun General Counsel
Jyra Research, Inc.
00 Xxxxxxx Xxxxxx, Xxxxxxxxxx
Xxxxxx 0X0, XX
Attn: Xxxxx Xxxxx - Technical Director
Xxxxxxxx Xxxxx - Director and Secretary
11.2
Partial Invalidity. If any term or
provision of this Agreement is found to be
invalid under any applicable statute or rule
of law then, that provision notwithstanding,
this Agreement shall remain in full force and
effect and such provision shall be deleted
unless such a deletion would frustrate the
intent of the parties with respect to any
material aspect of the relationship
established hereby, in which case, this
Agreement and the licenses and rights granted
hereunder shall terminate.
11.3
Complete Understanding. This Agreement and
the Exhibits hereto constitute and express the
final, complete and exclusive agreement and
understanding between the parties with respect
to its subject matter and supersede all previous
communications, representations or agreements,
whether written or oral, with respect to the
subject matter hereof. No terms of any purchase
order or similar document issued by Licensee
shall be deemed to add to, delete or modify the
terms and conditions of this Agreement. This
Agreement may not be modified, amended,
rescinded, canceled or waived, in whole or part,
except by a written instrument signed by the
parties.
11.4Language. This Agreement is in the
English language only, which language shall be
controlling in all respects, and all versions of
this Agreement in any other language shall be
for accommodation only and shall not be binding
on the parties to this Agreement. All
communications and notices made or given
pursuant to this Agreement, and all
documentation and support to be provided, unless
otherwise noted, shall be in the English
language.
11.5Governing Law. This Agreement is made
under and shall be governed by and construed
under the laws of the State of California,
regardless of its choice of laws provisions.
11.6 Compliance with Laws. The Technology,
including technical data, is subject to U.S.
export control laws, including the U.S. Export
Administration Act and its associated
regulations, and may be subject to export or
import regulations in other countries. Licensee
agrees to comply strictly with all such
regulations and acknowledges that it has the
responsibility to obtain such licenses to
export, re-export or import the Technology or
Product(s) as may be required after delivery to
Licensee.
Licensee shall make reasonable efforts to
notify and inform its employees having access to
the Technology of Licensee's obligation to
comply with the requirements stated in this
Article.
117
Disclaimer of Agency. Licensee is not
authorized to make any representation or
warranty on behalf of Sun to its end users or
third parties. The relationship created hereby
is that of licensor and licensee and the parties
hereby acknowledge and agree that nothing herein
shall be deemed to constitute Licensee as a
franchisee of Sun. Licensee hereby waives the
benefit of any state or federal statutes dealing
with the establishment and regulation of
franchises.
11.8 Delivery. As soon as practicable after the
Effective Date, Sun shall deliver to Licensee
one (1) copy of each of the deliverables set
forth in Exhibit A. Licensee acknowledges that
certain of the deliverables are in various
stages of completion and agrees to accept the
deliverables as and to the extent completed as
of the date of delivery and "AS IS." In the
event any deliverable is already in the
possession or custody of Licensee, such item(s)
shall, to the extent used in connection with the
rights granted in Section 2.0 above, be subject
to the terms of this Agreement, notwithstanding
any pre-existing agreement or understanding
between Licensee and Sun with respect to such
items.
11.9 Assignment and Change in Control. This
Agreement may not be assigned by either party
without the prior written consent of the other
party, which consent shall not be unreasonably
withheld or delayed, except that Sun may assign
this Agreement to a majority-owned subsidiary,
and Licensee may assign this Agreement to a
majority-owned subsidiary domiciled in the
United States or the European Union.
11.10 Construction. This Agreement has been
negotiated by Sun and Licensee and by their
respective counsel. This Agreement will be
fairly interpreted in accordance with its terms
and without any strict construction in favor of
or against either party.
11.11 Force Majeure. Except for the obligation
to pay money and Sun's obligation to make an
initial delivery of the Source Code, neither
party shall be liable to the other party for
non-performance of this Agreement, if the non-
performance is caused by events or conditions
beyond that party's control and the party gives
prompt notice under Section 11.1 and makes all
reasonable efforts to perform.
11.12 Exhibits.
The following are included herein by
reference as integral parts of this Agreement:
Exhibit A - Description of Technology and
Documentation
Exhibit B - Identification of Licensee
Product(s)
Exhibit C - Schedule of Fees and Royalties
Exhibit D - Confidential Disclosure Agreement
Exhibit E - Document Type Definition
Exhibit F - Trademark License
11.13
Section References. Any reference contained
herein to an article of this agreement shall
be meant to refer to all subsections of the
article.
11.14
No Competitive Restrictions. The Parties
agree that nothing in this Agreement is
intended to prohibit Licensee from
independently developing or acquiring
technology that is the same as or similar to
the Technology, provided that Licensee does
not do so in breach of Exhibit D to this
Agreement.
11.15
Condition Subsequent.
a.The parties acknowledge the following:
Licensee is currently engaged in an initial
offering of its common stock scheduled to
expire on July 5, 1996 unless extended by
Licensee to a later date (the "Initial
Offering"). Licensee is looking to the
proceeds of the Initial Offering to enable
Licensee to fulfill its initial payment
obligations under this Agreement. Licensee
intends promptly to disclose to its
prospective common stockholders the
existence and principal terms of this
Agreement in advance of the scheduled
expiration date of the Initial Offering in
order to enable its prospective common
stockholders to determine whether they wish
to purchase their shares notwithstanding
Licensee's entering into this Agreement.
b.On or before July 19, 1996, Licensee
shall provide written notice to Sun
("Licensee's Notice") truthfully indicating
either that: (i) Licensee has not received
and accepted the minimum proceeds required
to close the Initial Offering; or (ii)
Licensee has received and accepted the
minimum proceeds required to close the
Initial Offering.
x.Xx the event that Licensee's Notice
shall truthfully indicate that Licensee has
not received and accepted the minimum
proceeds required to close the Initial
Offering, then this Agreement and all
agreements entered into pursuant to or in
contemplation of this Agreement shall be
cancelled and of no effect as though they
had never been signed or delivered. In the
event that Licensee's Notice truthfully
indicates that Licensee has received and
accepted the minimum proceeds required to
close the Initial Offering, then this
Agreement and all such other agreements
shall remain fully effective in accordance
with their terms without reference to this
condition subsequent.
d.Licensee agrees that no press release
concerning this Agreement will be made
prior to satisfaction of this Condition
Subsequent, and that its disclosures
concerning this Agreement to prospective
common stockholders shall be identified as
confidential information of Licensee.
e.Neither Sun's obligation to make its
initial delivery of the Source Code under
this Agreement nor Licensee's obligations
to make any payments under this Agreement
will be triggered unless Licensee has
timely received and accepted the minimum
proceeds required to close the Initial
Offering in such manner as to require
Licensee to provide a Licensee" Notice as
set forth in subparagraph (b) (ii), above.
f.Sun's obligation to make its initial
delivery of the Source Code hrereunder will
not be triggered until fifteen (15)
business days after satisfaction of the
condition subsequent identified in this
Section.
g. 3 page side letter attached - dated 11
July 1996.
IN WITNESS WHEREOF, the parties have caused this
Agreement to be executed by their duly
authorized representatives.
Sun Microsystems; Inc.
By /s/ Xxxx Xxxxxx
Name: Xxxx Xxxxxx
Title: President, JavaSoft
Date: 7-19-96
Licensee:
By: Xxxxxxxx Xxxxx
Director & Secretary
Date: July 19, 1996
12
EXHIBIT A
DESCRIPTION OF TECHNOLOGY AND DOCUMENTATION
To the extent that Sun has not already
delivered any of the following listed items to
Licensee as of the Effective Date of the
Agreement to which this Exhibit A is attached,
Sun will deliver to Licensee under the terms
of the Agreement those items identified below.
I.eJavaOS Environment
The eJavaOS Environment consists of the
following source code:
a.The Source Code for the JavaOS Runtime
Interpreter
b.Core Classes: All the java files from the
following eJavaOS Packages:
java.lang(eJavaOS
Implementation)Language
Classes
xxxx.xx(eJavaOS Implementation)Stream I/O
java.util(eJavaOS
Implementation)General
utilities
java.applet(eJavaOS
Implementation)Java
Classes
x.Xxx Classes: All the java files from the
following JavaOS Package:
xxxx.xxx (JavaOS Implementation)Networking
Classes
11. Documentation:
Java OEM Language Specification
Java OEM API Documentation
Java OEM Virtual Machine Specification
eJavaOS OEM Specification
13
EXHIBIT B
IDENTIFICATION OF LICENSEE PRODUCT(S)
Product(s):Network Probe
Field(s) of Use: Computer Network Management
Systems
14
EXHIBIT C
SCHEDULE OF FEES AND ROYALTIES
X.Xxxxxxxxxx: eJavaOS Environment
1. Upfront License Fees:
$SOk for the first CPU architecture chosen
(SPARC or x86), payable within thirty days of
Effective Date.
$50k for each additional CPU
architecture chosen (SPARC or x86 or
any other future CPU ports made
generally available from
JavaSoft).
The fees and royalties specified in this
Agreement are for the platforms identified
below: (check applicable platforms)
SPARC/Solaris
Win32/lntelXX
Where such versions are not complete as of the
Effective Date, the license fees cover the
first commercial version shipped by Sun for
that platform.
2.
Per Unit Royalty:
Royalty Fees are to be applied on a
non-recurring basis per Product unit per CP\3
architecture.
Unit Volume Per Unit Royalty
1-5k $66.00
Thereafter $20.00
Payment of the royalties shall be made
quarterly, shall be due forty-five (45) days
following the end of Licensee's fiscal quarter
to which they relate and shall be submitted with
a written statement certifying
the number of Products sold and showing the
calculation of the royalties due. A network
probe Product shall be deemed a single unit of
Product for purposes of royalty payments
hereunder.
0.Xxxxxxx and Update Fees: For the period in
which Licensee is paying a royalty of $66.00 per
unit, Licensee shall pay $50,000. per year (for
updates and bug reporting only), the initial
payment due within thirty days of first delivery
of Source Code of the eJavaOS Environment, and
subsequent payments due upon each anniversary
date thereof. During this period, and subject to
availability from Sup, Licensee may request
primary support (112 time engineer at Sun for
technical support, upgrades and bug reporting)
for the Technology at a price of an additional
$20,000 per month for the period in which such
primary support is requested.
For the period in which Licensee is paying a
royalty of $20.00 per unit, Licensee shall pay
$300,000. per year for primary support (1/2 time
engineer at Sun for technical support, upgrades
and bug reporting).
Licensee will be permitted a maximum of three
(3) contact persons to communicate with the Sun
support staff. If more than three contacts
becomes necessary, Sun and Licensee will
negotiate in good faith additional support fees
on a per subsidiary basis as appropriate.
15
EXHIBIT D
CONFIDENTIAL DISCLOSURE AGREEMENT
(to be attached)
16
BI-LATERAL CONFIDENTIAL DISCLOSURE AGREEMENT
Effective Date: 16 May 1996
Sun Microsystems, Inc. by and through its JavaSoft
business unit, ("Sun"); and Jyra Research Inc.
("Party") agree that:
1. a) The information disclosed under this
Agreement ("Information") includes the following:
Sun Information: JavaSoft technology, business and
technical information relating to JavaSoft products,
JavaSoft product licensing practices and fees,
research and development plans, customers, and
marketing and future business plans:
Party Information:
_______________________________________________
(If not filled in by Party, then no
Party information is to be
disclosed)
B) Information may be used solely for the
purpose of evaluating business opportunities between
the parties.
2. This Agreement covers only information which is
disclosed between the Effective Date and twelve
(12)months thereafter. Each party's obligation
regarding information expires three (3) years after
the date of disclosure (except for Sun source code,
which shall be protected in perpetuity).
Information shall be used solely as permitted above,
and shall not be disclosed to a third party other
than a subsidiary, agent, or subcontractor of the
receiving party who has agreed to be bound by the
terms of this Agreement. Each party shall protect
information of the other party using the same degree
of care, but no less than a reasonable degree of
care, as such party uses to protect its own
confidential information. Upon termination of this
Agreement or the disclosing party's written request,
the receiving party shall cease use of information
and return or destroy all information.
3. Each party shall be obligated to protect only
information: (a) disclosed in tangible form clearly
labeled as confidential or proprietary at the time
of disclosure; or (b) disclosed in non-tangible
form, identified as confidential or proprietary at
the time of disclosure, and summarized in writing,
designated as confidential or proprietary, and
delivered to the other party within thirty (30) days
after disclosure.
4. This Agreement imposes no obligation upon the
receiving party with respect to information which:
(a) was in the possession of, or was known by, the
receiving party prior to its receipt from the
disclosing party, without an obligation to maintain
its confidentiality; (b) is or becomes generally
known to the public without violation of this
Agreement; (c) is obtained by the receiving party
from a third party, without an obligation to keep
such information confidential; or (d) is
independently developed by the receiving party
without use of information. Disclosure of the other
party's information is not prohibited if prior
notice is given to the other party and such
disclosure is: (a) compelled pursuant to a legal
proceeding, or (b) otherwise required by law.
5. Information is provided "AS IS", and all
representations and warranties, express or implied,
including fitness for a particular purpose,
merchantability, and noninfringement, are hereby
disclaimed. Neither party has an obligation to sell
or purchase any items from the other party. Except
for breaches relating to Sun source code, neither
party shall be liable for any special, incidental,
consequential or punitive damages by reason of any
alleged breach of this Agreement based upon any
theory of liability. Nothing in this Agreement
shall be construed as a representation that the
receiving party will not develop or acquire
information that is the same or similar to
information, provided that the receiving party does
not do so in breach of this Agreement. The
receiving party agrees that any breach of this
Agreement may result in irreparable harm to the
disclosing party for which damages would be an
inadequate remedy and, therefore, in addition to its
rights and remedies otherwise available at law, the
disclosing party shall be entitled to equitable
relief, including injunction, in the event of such
breach. The receiving party does not acquire any
rights in information, except the limited right to
use information as described above.
6. The Agreement constitutes the entire agreement
between the parties concerning its subject matter.
All additions or modifications to this Agreement
must be made in writing and must be signed by an
authorized representative of each party. The
parties agree to comply strictly with all applicable
export control laws and regulations. Any action
related to this Agreement will be governed by
California law, excluding choice of law rules.
SUN MICROSYTEMS, INC., by and
PARTY: Jyra Research Inc.
through JAVASOFT
BY: /s/ Xxx Kannegaarel BY:
/s/ Xxxxxxxx Xxxxx
NAME: Xxx Kannegaarel
NAME: Xxxxxxxx Xxxxx
TITLE: VP, JAVASOFT
TITLE: Director, Secretary
EXHIBIT E
F
DOCUMENT TYPE DEFINITION
In order to ensure interoperability between
all Java compliant browsers, Sun needs to
define the exact notation of applets in HTML
documents. The format of the APPLET tag is
chosen to be implementation language
independent and SGML compliant. SGML
compliance is important if the APPLET tag is
to be accepted as part of the HTML standard in
the future.
Example:
