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EXHIBIT 10.28
WINK ENGINE LICENSE AGREEMENT
THIS AGREEMENT is made as of the 6th day of Oct, 1997 ("Effective Date") by and
between WINK COMMUNICATIONS, INC., a California corporation ("Wink"), whose
address is 0000 Xxxxxx Xxxxxxx Xxxxxxx, Xxxxxxx, XX 00000 and TOSHIBA AMERICA
CONSUMER PRODUCTS, INC., a New Jersey corporation ("CE Manufacturer"), whose
address is 00 Xxxxxx Xx., Xxxxx, XX 00000.
1. DEFINITIONS
1.1 For purposes of this Agreement, "Development Plan" shall mean the plan
for completion of the development activities including the
specifications, each party's respective development obligations,
milestones, a schedule, deliverables, and other relevant items, all as
mutually agreed upon.
1.2 For purposes of this Agreement, "Wink Engine" shall mean Wink's software
engine pursuant to this Agreement, in machine executable, object code
format. "Updates" shall mean updates containing error corrections or
minor enhancements to the Licensed Engine Product created by or for Wink
and designated by a change in version number to the right of the decimal
point. Updates do not include major enhancements to the Licensed Engine
Product designated by changes in the version number to the left of the
decimal point.
1.3 For purposes of this Agreement, "Licensed Engine Product" shall mean the
object code format version 1.0 and any Updates (version 1.x) of the Wink
Engine and other Wink-owned-files that are provided with the Wink
Engine, all as customized by Wink for the CE Manufacturer decoder chip
and other chips, and any related documentation which Wink may create, in
Wink's sole discretion, for public distribution with versions 1.0 and
1.x of the Wink Engine.
1.4 For purposes of this Agreement, "Intellectual Property Rights" shall
mean all current and future worldwide patents and other patent rights,
copyrights, mask work rights, trade secrets, and all other intellectual
property rights, including without limitation all applications and
registrations with respect thereto.
1.5 For purposes of this Agreement, "Combined Products" shall mean Toshiba
televisions containing the Licensed Engine Product embedded in ROM or
flash ROM chips.
1.6 For purposes of this Agreement, "Transaction Processing Fees" shall mean
processing fees collected by Wink from advertisers for individual user
requests for information or purchases of goods or services.
1.7 For purposes of this Agreement "Final Acceptance" shall mean the date
that Wink delivers to CE Manufacturer a master diskette or other digital
storage media containing the Licensed Engine Product for use by CE
Manufacturer in accordance with the terms of this Agreement.
2. LICENSE
2.1 Wink shall xxxxx XX Manufacturer a non-exclusive, non-transferable
license to use the Licensed Engine Product solely for the purpose of
incorporating the Wink Engine into a CE Manufacturer hardware component.
CE Manufacturer shall have no right to sublicense the foregoing rights.
The territory for the license of the Licensed Engine Product is the
United States of America provided, however that CE Manufacturer may ship
up to 2.5% of the Combined Products sold by CE Manufacturer in any given
year to Latin America without being in violation of this territorial
restriction.
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2.2 Wink hereby grants CE Manufacturer a non-exclusive, irrevocable,
royalty-free right and license, under all of Wink's Intellectual
Property Rights in and to the Wink icon images to use, copy, have
copied, display, distribute and modify the Wink icon images in
connection with use of the Licensed Engine Product. Except as expressly
provided herein, Wink does not xxxxx XX Manufacturer any right, title,
or interest in the Wink Property, whether by implication, estoppel or
otherwise. All property rights with respect to the Wink Property not
specifically granted herein are reserved to Wink.
3. PROPERTY RIGHTS
3.1 CE Manufacturer agrees that prior to, on and after the Effective Date,
Wink owns and shall own all right, title and interest in and to (a) the
Licensed Engine Product and all modifications and derivatives thereof,
(b) all Intellectual Property Rights relating to the design of the
Licensed Engine Product, (c) all files, code, or technology that is
related to the Wink Engine or the Licensed Engine Product (collectively,
the "Wink Property").
4. DEVELOPMENT
4.1. Wink shall use reasonable commercial efforts to complete each milestone
in accordance with the Development Plan. Upon completion of each
milestone, Wink shall deliver to CE Manufacturer all applicable
Deliverables for evaluation by CE Manufacturer. In the event CE
Manufacturer is late in the performance of its obligations with respect
to each milestone and such delay affects Wink's obligations hereunder,
Wink's performance of such affected obligations shall be delayed by the
same time period.
4.2. The parties intend that Wink have an environment in which to recreate
field situations, to allow Wink to replicate problems which may occur in
the field and to test solutions for such problems. In order to
facilitate Wink's performance of the support activities contemplated
herein, CE Manufacturer shall, at its own expense, provide Wink with all
of the hardware, software and equipment (the "Equipment') which is
reasonably necessary to functionally replicate a system of the type in
which the Wink Engine will actually be used. Upon expiration or
termination of this Agreement, Wink shall return all of the Equipment to
CE Manufacturer. CE Manufacturer shall retain ownership of all such
Equipment. Wink shall return all such software, hardware and equipment
to CE Manufacturer promptly upon request by CE Manufacturer, provided
that Wink's development and support obligations shall terminate to the
extent software, hardware or equipment returned to CE Manufacturer is
required by Wink to fulfill its obligations.
5. COMPENSATION
5.1 In consideration for the rights and licenses granted to it under Section
2 above, CE Manufacturer agrees to integrate Licensed Engine Product
into a minimum of [ * ] 1998 televisions, [ * ] 1999 televisions, and
[ * ] televisions. CE Manufacturer shall use reasonable efforts to
ship these quantities of Combined Products. However, CE Manufacturer
is unable to guarantee these quantities, since the quantities are
dependent upon the commercial acceptance of the Wink feature. CE
Manufacturer shall remit to Wink a quarterly per unit royalty payment
for each unit of Combined Product shipped from the factory for the U.S.
market and Latin America, net of returns. The per unit royalty is as
follows:
Wink agrees to reduce the Standard Wink Engine License Fees by
[ * ] for all Combined Products shipped from the factory for the
U.S. market and Latin America before April 1, 1999, as exhibited
by the Wink License Fee Schedule below:
--------
* Confidential Treatment has been requested with respect to certain
portions of this exhibit pursuant to a request for confidential treatment filed
with the Securities and Exchange Commission. Omitted portions have been filed
with the Commission.
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Wink License Fee Schedule
QUANTITY OF COMBINED STANDARD WINK ENGINE TOSHIBA'S WINK ENGINE LICENSE
PRODUCTS SHIPPED (IN UNITS) LICENSE FEE (PER UNIT) FEE FOR 1998 (PER UNIT)
0-100,000 [ * ] [ * ]
100,001-250,000 [ * ] [ * ]
250,001-500,000 [ * ] [ * ]
500,001-750,000 [ * ] [ * ]
750,001 or more [ * ] [ * ]
CE Manufacturer shall pay to Wink the full Standard Wink Engine
License Fees for all Combined Products shipped from the factory
for the U.S. market and Latin America from April 1, 1999 through
March 31, 2001, as exhibited by the Wink License Fee Schedule
above.
Such royalty shall accrue upon shipment or other transfer by CE
Manufacturer.
If Wink, during the term of this Agreement, grants to an unaffiliated
third party a license under Wink's Intellectual Property Rights to the
Wink Engine which is in all material respects equivalent to this
Agreement and which contains provisions requiring the third party to
make payments at rates of royalty and payment terms more favorable than
provided in this Agreement, then CE Manufacturer shall be entitled to
have the same royalty rate payable by such third party provided that CE
Manufacturer ships a quantity of Combined Products for the U. S. and
Latin America market equal to or greater than the third party's
shipments for the U. S. and Latin America market.
5.2 CE Manufacturer shall make royalty payments to Wink due under this
Agreement within forty-five (45) days after the end of each CE
Manufacturer fiscal quarter during the term of this Agreement. Such
payments shall be accompanied by a written report in a form acceptable
to Wink (see Exhibit A) which details all of the following with respect
to the applicable period: volume of monthly shipments of Wink equipped
television units by model number. Past due payments shall bear interest
at a rate equal to the lesser of (i) one and one-half percent (1- 1/2 %)
per month or (ii) the maximum legal rate permitted under law, and CE
Manufacturer shall be liable for all reasonable costs and expenses
(including, without limitation, reasonable court costs and attorneys'
fees) incurred by Wink in collecting any past due payments.
CE Manufacturer agrees to allow Wink or its designee to audit and
examine such books, records and accounts delivered to CE Manufacturer no
more than twice during CE Manufacturer's fiscal year, during CE
Manufacturer's normal business hours, to verify the accuracy of the
reports and payments made to Wink under this Section 5. Such audits
shall be limited to the time period ending three (3) years after the
conclusion of each of CE Manufacturer's fiscal years which occur during
the term of this Agreement. In the event such audit determines that CE
Manufacturer has not paid Wink the entire amount of royalty payments, CE
Manufacturer agrees to pay, in addition to any damages to which Wink
might be entitled, the amount of such shortfall plus interest at a rate
of one and one-half percent (1.5%) per month or the highest rate allowed
by law, whichever is lower. The cost of such audit shall be borne by
Wink, provided that if any such audit reveals an underpayment to Wink of
at least five percent (5%), CE Manufacturer shall reimburse to Wink its
costs of such audit.
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5.3 In consideration for the development provided under Article 5, CE
Manufacturer shall pay Wink a [ * ] integration fee. The integration fee
payment shall be due within 30 days after the Effective Date.
5.4 For the lifetime of the Combined Products manufactured before April 1,
2001, Wink agrees to revenue share with CE Manufacturer, its fees, on
all Wink generated transactions originating from CE Manufacturer
televisions. Wink will pay CE Manufacturer [ * ] of the Transaction
Processing Fees collected by Wink for the transactions. Wink shall make
revenue share payments to CE Manufacturer due under this Agreement
within forty-five (45) days after the end of each CE Manufacturer fiscal
quarter during the term of this Agreement.
Wink agrees to allow CE Manufacturer or its designee to audit and
examine such books, records and accounts related to Wink transactions
with CE Manufacturer television customers no more than twice during CE
Manufacturer's fiscal year, during Wink's normal business hours, to
verify the accuracy of the reports and payments made to CE Manufacturer
under this Section 5. Such audits shall be limited to the time period
ending three (3) years after the conclusion of each of CE Manufacturer's
fiscal years which occur during the term of this Agreement. In the event
such audit determines that CE Manufacturer has not been paid ten percent
(10%) of the Transaction Processing Fees collected by Wink for the
transactions with CE Manufacturer televisions, Wink agrees to pay, in
addition to any damages to which CE Manufacturer might be entitled, the
amount of such shortfall plus interest at a rate of one and one-half
percent (1.5%) per month or the highest rate allowed by law, whichever
is lower. The cost of such audit shall be borne by CE Manufacturer,
provided that if any such audit reveals an underpayment to CE
Manufacturer of at least five percent (5%), Wink shall reimburse to CE
Manufacturer its costs of such audit.
6. PROMOTION AND RESEARCH
6.1 Wink and CE Manufacturer shall participate in public relations programs,
starting with an initial announcement of the relationship between the
two companies. Timing and content of that announcement shall be mutually
agreed upon in writing by the parties. The joint press announcement
shall occur no later than 2 weeks from the date of executing this
Agreement.
6.2 CE Manufacturer agrees to promote and market the Wink feature to CE
Manufacturer customers, retailers and to the general public within the
United States. CE Manufacturer shall create and produce Wink related
marketing support materials and provide advertising support subject to
Wink's reasonable creative approval, of which approval will not be
unreasonably withheld.
Wink shall provide reasonable marketing support for Combined Products in
conjunction with CE Manufacturer's marketing efforts for Combined
Products. Wink shall have a minimum of twenty (20) national programmers
broadcasting Wink enhanced programming by December 31, 1998. Wink shall
use reasonable efforts to work with its programming partners to deliver
Wink related program promotions to subscribers and to the general public
within the United States.
6.3 CE Manufacturer is hereby granted the right to and shall place the Wink
logo on all Combined Products on the front panel and on the remote
control in clearly visible letters, no smaller than one-quarter inch in
height. (Samples of the Wink logo are displayed in Exhibit B).
6.4 Wink may, from time to time, undertake marketing tests and surveys,
rating polls and other research in connection with CE Manufacturer. CE
Manufacturer shall provide Wink with reasonable assistance in conducting
such research with respect to CE Manufacturer's customers. CE
Manufacturer agrees that Wink will have reasonable access to any and all
research regarding the deployment, launch, and usage of Wink service by
CE Manufacturer customers.
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7. NOTICES
7.1 All notices, statements, and other communications given hereunder shall
be in writing and shall be delivered by facsimile transmission, personal
delivery, certified mail, return receipt requested, or by next day
express delivery, addressed, if to WINK COMMUNICATIONS at 0000 Xxxxxx
Xxxxxxx Xxxxxxx, Xxxxxxx, XX 00000 and if to TOSHIBA AMERICA CONSUMER
PRODUCTS, INC. at 00 Xxxxxx Xx., Xxxxx, XX 00000. The date of such
facsimile transmission, telegraphing or personal delivery or the next
day if by express delivery, or the date three (3) days after mailing,
shall be deemed the date on which such notice is given and effective.
8. TRADEMARKS
8.1 All right, title and interest in and to the Wink feature or other
rights, of whatever nature, related thereto shall remain the property of
Wink. Further, CE Manufacturer acknowledges and agrees that all names,
logos, marks, copyright notices or designations utilized by Wink in
connection with the Wink feature are the sole and exclusive property of
Wink, and no rights or ownership are intended to be or shall be
transferred to CE Manufacturer.
9. REPRESENTATION
9.1 Wink represents and warrants to CE Manufacturer that (i) it is a
corporation duly organized and validly existing under the laws of the
State of California; (ii) Wink has the corporate power and authority to
enter into this Agreement and to fully perform its obligations hereunder
(iii) Wink is under no contractual or other legal obligation which in
any way interferes with its ability to fully, promptly and completely
perform hereunder; and (iv) nothing contained in the service shall
violate the civil or property rights, copyrights, trademark rights or
right of privacy of any person, firm or corporation.
9.2 CE Manufacturer represents and warrants to Wink that (i) CE Manufacturer
is a corporation duly organized and validly existing under the laws of
the State of New Jersey; (ii) CE Manufacturer has the requisite power
and authority to enter in this Agreement and to fully perform its
obligations hereunder, (iii) CE Manufacturer is under no contractual or
other legal obligation which in any way interferes with its ability to
fully, promptly and completely perform hereunder.
10. CONFIDENTIALITY
10.1 During the Term of this Agreement, and for a period of five (5) years
thereafter, each party will maintain in confidence all information which
it receives from the other party marked as "confidential" ("Confidential
Information"). Neither party will use, disclose or grant use of such
Confidential Information disclosed to it by the other party except as
expressly authorized by this Agreement. Each party will use at least the
same standard of care as it uses to protect its own Confidential
Information to ensure that its employees, agents or consultants do not
disclose or make any unauthorized use of such Confidential Information.
Each party will promptly notify the other upon discovery of any
unauthorized use or disclosure of the Confidential Information.
Notwithstanding the foregoing, CE Manufacturer may disclose Confidential
Information to employees of Toshiba Corporation for evaluation of the
Licensed Engine Product or its inclusion in Combined Products.
10.2 The obligations of confidentiality contained in Section 10.1 will not
apply to the extent that it can be established by a party by competent
proof that such Confidential Information:
(a) was already known to such party, other than under an
obligation of confidentiality, at the time of
disclosure;
(b) was generally available to the public or otherwise part
of the public domain at the time of its disclosure to
such party (provided, however, that a combination of
features individually in the public domain shall not
fall within this exception unless the fact of such
combination is also in the public domain);
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(c) became generally available to the public or otherwise
part of the public domain after its disclosure and other
than through any act or omission of such party in breach
of this Agreement;
(d) was disclosed to such party, other than under an
obligation of confidentiality, by a third party who had
no obligation to the other party not to disclose such
information to others;
(e) is authorized for release in writing by the disclosing
party;
(f) is developed by such party completely independently of
any such received Confidential information;
(g) is necessarily disclosed in a Licensed Product
11. WARRANTY AND INDEMNITY
11.1. Each party represents and warrants that neither the execution or
performance by such party of this Agreement, nor the consummation of any
transactions herein does or will violate any law, order, regulation or
ruling applicable to such party or its efforts hereunder. In addition,
Wink represents and warrants that (a) as of the Effective Date, no
action or proceeding alleging intellectual property infringement by the
Wink Engine has been threatened or is proceeding against Wink (nor,
insofar as Wink is aware, against any entity from which Wink has
obtained any rights related to the Wink Engine), (b) it has the right to
license the Intellectual Property Rights in and to the Wink Engine to CE
Manufacturer and (c) the Licensed Engine Product does not infringe upon
or violate any third party copyright, trade secret, trademark or any
U.S. patent right where such patent has been granted prior to the
Effective Date. CE Manufacturer's exclusive remedy, and Wink's sole
liability, for a breach by Wink of the warranties of subsections (a),
(b) and (c) above shall be Wink's indemnity set forth in this Section
11.
11.2. Wink agrees to defend, or at its option to settle, any claim, suit,
action or proceeding brought against CE Manufacturer by a third party as
a result of Wink's breach of its warranties under 12.l(b) and (c) above
(an "Action"), and to pay any settlement or final judgment entered
thereon against CE Manufacturer, subject to the limitations set forth
hereafter. Wink shall be relieved of its obligations hereunder unless CE
Manufacturer gives Wink (i) prompt written notice upon becoming aware of
the existence of an Action, (ii) sole control over the defense or
settlement of the Action and (iii) reasonable assistance in the defense
or settlement thereof. If it is, or in the opinion of Wink may be,
determined by competent authority that the Licensed Engine Product or
any part thereof, or the sale, distribution or use thereof as permitted
hereunder infringes any third party intellectual property rights
warranted in section 11.1(c) or is enjoined, then Wink at its sole
option and expense may (a) procure for CE Manufacturer the right under
such third party intellectual property rights listed in section 11.1(c)
to use, reproduce and distribute the Licensed Engine Product or such
part thereof or such trademark; (b) replace the Licensed Engine Product
or such part thereof or such trademark with other suitable software or
trademark without material degradation in performance or functionality;
(c) suitably modify the Licensed Engine Product or such part thereof or
such trademark to avoid infringement without material degradation in
performance or functionality; or (d) if none of the foregoing are
commercially reasonably feasible, terminate this Agreement.
11.3. The foregoing indemnity shall not apply to an Action to the extent it
arises out of (i) any modification of the Licensed Engine Product by a
party other than Wink or on Wink's behalf, (ii) any combination of the
Licensed Engine Product with hardware and/or software not supplied by
Wink (except the hardware of the CE Manufacturer Device), which
infringement does not cover the Wink Engine standing alone, or (iii) any
trademarks, trade names or other brandings not supplied by Wink. As used
in Subsection 11.3(i), "on Wink's behalf' shall mean that Wink has given
its written authorization for CE Manufacturer or a third party to
perform such modifications.
11.4. Wink warrants to CE Manufacturer that for a period of three (3) months
after Final Acceptance of the Licensed Engine Product and CE
Manufacturer-requested Updates and after delivery of any other Updates,
such Licensed Engine Product or Updates of any kind will operate under
ordinary use in substantial conformance with technical specifications
mutually agreed upon between Wink and CE Manufacturer. Wink does not
warrant that
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the Licensed Engine Product or Updates of any kind will be error-free or
meet all of CE Manufacturer's requirements. (This Section 11.4 lists
separately Licensed Engine Products and the different kinds of Updates
for clarification purposes only. Unless otherwise noted, in other
sections of this Agreement, the definition of Licensed Engine Product
includes Updates.)
11.5 WINK'S LIABILITY ARISING OUT OF THIS AGREEMENT SHALL NOT EXCEED THE
AMOUNTS RECEIVED FROM CE MANUFACTURER HEREUNDER. IN NO EVENT SHALL
EITHER PARTY BE LIABLE FOR COST OF PROCUREMENT OF SUBSTITUTE GOODS,
SERVICES OR TECHNOLOGY NOR SHALL EITHER PARTY BE LIABLE FOR LOST PROFITS
OR ANY CONSEQUENTIAL, INCIDENTAL, INDIRECT OR SPECIAL DAMAGES HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY ARISING OUT OF THIS AGREEMENT OR
THE TRANSACTIONS CONTEMPLATED HEREBY, EXCEPT THAT, WITH RESPECT TO
CLAIMS BY WINK AGAINST CE MANUFACTURER FOR BREACH OF THE SCOPE OF
LICENSES GRANTED IN THIS AGREEMENT, WINK SHALL BE ENTITLED TO RECOVER
LOST PROFITS. THE FOREGOING LIMITATIONS SHALL APPLY EVEN IF EITHER PARTY
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES AND NOTWITHSTANDING
ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
11.6 THE FOREGOING PROVISIONS OF THIS SECTION 11 STATE THE ENTIRE LIABILITY
AND OBLIGATION (EXPRESS, IMPLIED, STATUTORY, IN ANY COMMUNICATION WITH
WINK OR OTHERWISE) OF WINK AND THE EXCLUSIVE REMEDY OF CE MANUFACTURER
AND ITS SUBDISTRIBUTORS WITH RESPECT TO ANY ALLEGED INFRINGEMENT OF ANY
PATENT, COPYRIGHT, TRADE SECRET, TRADEMARK OR OTHER INTELLECTUAL
PROPERTY RIGHT BY THE WINK ENGINES OR ANY PART THEREOF.
12. INDEMNITY BY CE MANUFACTURER
12.l. Except with respect to any claim, suit, action or proceeding arising out
of any intellectual property infringement by the Licensed Engine
Product, CE Manufacturer agrees to defend, or at its option to settle,
any claim, suit, action or proceeding brought against Wink by a third
party arising out of (i) the manufacture, use or sale of the Licensed
Engine Product or Combined Products or (ii) CE Manufacturer's
modification, use or distribution of the Licensed Engine Product, and to
pay any settlement or final judgment entered thereon against Wink,
subject to the limitations set forth hereafter. CE Manufacturer shall be
relieved of its obligations hereunder unless Wink gives CE Manufacturer
(i) prompt written notice upon becoming aware of the existence of any
such claim, suit, action or proceeding, (ii) sole control over the
defense or settlement of such claim, suit, action or proceeding and
(iii) reasonable assistance in the defense or settlement thereof.
12.2. THE FOREGOING PROVISIONS OF THIS SECTION 12 STATE THE ENTIRE LIABILITY
AND OBLIGATION (EXPRESS, IMPLIED, STATUTORY, IN ANY COMMUNICATION WITH
CE MANUFACTURER OR OTHERWISE) OF CE MANUFACTURER AND THE EXCLUSIVE
REMEDY OF WINK WITH RESPECT TO ANY CLAIMS BROUGHT AGAINST WINK ARISING
FROM CE MANUFACTURER'S USE OF THE LICENSED ENGINE PRODUCT OR EXERCISE OF
THE RIGHTS AND LICENSES GRANTED TO CE MANUFACTURER HEREUNDER.
13. TERM AND TERMINATION
13.1 This Agreement shall become effective upon the date accepted and signed
by Wink (the "Effective Date"), and shall continue to be effective
through March 31, 2001.
13.2 Except as otherwise provided herein, neither CE Manufacturer nor Wink
may terminate this Agreement except upon sixty (60) days prior written
notice and then only if the other has made a misrepresentation herein or
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breaches any of its material obligations hereunder and such
misrepresentation or breach (which shall be specified in such notice) is
not or cannot be cured within sixty (60) days of such notice.
13.3. Notwithstanding any other provision herein, Wink will have the right to
terminate this Agreement or all or any licenses granted herein if
Customer fails to comply with any of its material obligations under this
Agreement. Should Wink elect to exercise this right to terminate for
nonperformance, it must be done in writing specifically setting forth
those items of nonperformance. CE Manufacturer will then have sixty (60)
days from receipt of notification to remedy the items of nonperformance.
Should CE Manufacturer fail to correct these items of nonperformance,
Wink's termination of this Agreement shall be without prejudice to any
other remedies Wink may have, including, without limitation, all
remedies with respect to the unperformed balance of this Agreement;
provided, however, that if CE Manufacturer has not made payment of the
fees or charges due hereunder and such nonpayment continues after sixty
(60) days prior written notice by Wink, then Wink may terminate this
Agreement or any license granted herein.
13.4. Upon expiration of the term (including any extensions thereof) of this
Agreement or upon the termination of this Agreement or of any license
granted hereunder for any reason, all rights of CE Manufacturer to use
the Licensed Engine Product will cease and CE Manufacturer will
immediately (i) cease manufacturing of Combined Product and agree to
sell remaining inventory of Combined Product within six (6) months from
the date of termination of this contract. (ii) purge all copies of all
Licensed Engine Products from all computer processors or storage media
on which CE Manufacturer has installed or permitted others to install
such Licensed Engine Product, and (iii) when requested by Wink, certify
to Wink in writing, signed by an officer of CE Manufacturer, that all
copies of the Licensed Engine Product have been returned to Wink or
destroyed and that no copy of any Licensed Engine Product remains in CE
Manufacturer's possession or under its control.
14. GENERAL
The parties agree that in the event it is necessary to employ attorneys
to enforce the terms of this Agreement, the prevailing party in any
lawsuit shall be entitled to an award of reasonable attorneys' fees and
court costs.
a) This Agreement may not be assigned without prior written mutual consent
of CE Manufacturer and Wink.
b) This Agreement may be amended only by an instrument in writing, executed
by CE Manufacturer and Wink.
c) This Agreement will be governed in all respects by the laws of the State
of California.
d) This Agreement represents the entire agreement between the parties and
supersede and replace all prior oral and written proposals,
communications and agreements with regard to the subject matter hereof
between CE Manufacturer and Wink.
e) The parties shall keep this Agreement and their relationship
confidential until such time as both parties agree to release
information to the public. Any press release or similar announcement
regarding this Agreement shall be approved by both parties prior to its
release.
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IN WITNESS WHEREOF, the parties by their duly authorized representatives
have entered into this Agreement as of the Effective Date.
WINK COMMUNICATIONS, INC. TOSHIBA AMERICA CONSUMER
PRODUCTS, IN
By: /s/ Xxxxxx Wilderotte By: /s/ Xxxxxxxxx Xxxxx
Name: Xxxxxx Wilderotte Name: Xxxxxxxxx Xxxxx
Title: President and CEO Title: President
Date: 10/8/97 Date: October 6, 1997
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EXHIBIT A
SAMPLE REPORT FORMAT FOR TOSHIBA COMBINED
PRODUCT UNIT SHIPMENTS
The figures in the following table represent the units of Combined
Product shipped for the U.S. market and Latin America for retail sale
(net of returns):
Model Number Month 1: Month 2: Month 3: Total for Quarter 1:
TP5OF60 542 63 105 710
TP5OF61 99 101 0 200
TP55F80 220 80 40 340
TP55F81 25 80 5 110
Total Units (net) 886 324 150 1,360
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EXHIBIT B
WINK LOGO
The following are samples of the Wink Logo, which shall be silk-screened on the
Combined Product and used in printed materials.
[COMPANY LOGO] [COMPANY LOGO]
wink itv wink itv
1-color Logo 3-color Logo
(e.g., for product silk-screening) (e.g., for printed materials)
Other relevant Xxxx Xxxx:
Wink ITV (TM) For use when referring in text to the Wink interactive system or
the interactive functionality provided by Wink's technology.
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WINK COMMUNICATIONS AND TOSHIBA
INTERACTIVE MONTA TV
PROJECT OUTLINE
This Project Outline is made between Wink Communications, Inc., a California
corporation having a principal place of business at 0000 Xxxxxxxxxx Xxxxx,
Xxxxxxx, Xxxxxxxxxx 00000, X.X.X. (hereinafter referred to as "Wink") and
Toshiba Corporation, a Japanese corporation having a principal place of business
at 1-1, Xxxxxxxx 0-xxxxx, Xxxxxx-xx, Xxxxx 000, Xxxxx (hereinafter referred to
as "Toshiba.")
Wink and Toshiba share the mutual goal to explore opportunities in the area of
interactive TV technologies. The first project of such collaboration is
developing and expanding use and acceptance of the interactive TV devices,
including the adapters to existing TV, that are enabled by information delivered
through the vertical blanking interval (VBI) and telephone lines (hereinafter
referred to "Interactive Monta TV.") This Project Outline provides a framework
for the two companies to proceed with the development of the Interactive Monta
TV with the goal of executing definite development agreement within two months
after the date of this Project Outline.
1. Development of Interactive Monta TV
(a) Wink has been developing the ICAP software which is designed to interpret
information transmitted with VBI and can run on the 8-bit processor incorporated
in the VBI decoding circuitry. Wink also has been developing the authoring tools
which run on the personal computers. Toshiba has developed the TC90AO1F-based
VBI decoder containing an 8-bit processor and the teletext software that will be
incorporated in the Toshiba TV products marketed in Japan. Based on these
technologies, Wink and Toshiba will cooperate to develop the interactive Monta
TV software and related authoring tools for the Japanese market in accordance
with the specifications and development schedules which will be specified in the
definitive agreement.
(b) Wink will develop and port the ICAP interpreter on the TC90AOlF decoder in
accordance with the specification requirements as derived from the current
Japanese teletext broadcasting system. Wink will develop the authoring tools
which run on the Windows3.1-based personal computers and generate information
programs for the Interactive Monta TV.
(c) Toshiba will develop the hardware interface modules for communication,
graphics and user interface libraries congruous with the ICAP interpreter and
the TC90AOlF decoder, and integrate the teletext software with the ICAP
interpreter. Toshiba will develop resources such as icons graphics and text
required for the Japanese market and modify the authoring tools for the Windows
3.11 environment.
(d) Wink and Toshiba will cooperate in installing the ICAP interpreter in the
Interactive TV and the authoring tools in the turn-key authoring systems for
broadcast program providers.
(e) Toshiba will develop a computer server designed to respond and interact with
the Interactive Monta TV. Wink will support Toshiba with interface for the ICAP
interpreter, communication libraries and other recommended functions.
2. Development Expenses
Ordinary development expenses incurred for the project will be borne by each
party, respectively, except those that are specifically defined in the
definitive agreement.
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3. Technological Information and On-site Engineers
(a) Wink and Toshiba will mutually disclose technological information required
for the development of the Interactive Monta TV and the authoring systems.
(b) To expedite the development process, even prior to conclusion of the
definitive agreement, Toshiba will dispatch engineers on site, as specified
below, to Wink to work with Wink engineers. Expenses including traveling and
hotel, required on the part of the dispatched engineers will be borne by
Toshiba. Wink will provide them with the offices, furniture and communication
services including telephone, fax, Internet access and access to the Toshiba
mail local access node.
Engineer(s) to work on interfaces to the TC90AOlF decoder - From February, 1995
Engineer(s) to work on the development of the authoring tools - From March, 1995
4. Invention and Know-how
(a) Software copyright for the software, as defined in 1.(c), which serves to
integrate the ICAP software with the TC90AO1F decoder developed by shared effort
will be owned by both parties including derivative portions of software with
significant enhancement and modifications to the portions of the original
software.
(b) Wink and Toshiba will confer to each other regarding patent applications on
invention, than relating to the original technologies as defined in 1. (a), (b),
(d) and (e), which resulting the shared development effort for the appropriate
procedures. Including these patents and both know-how which are developed by the
shared effort can be used by each party, or licensed to third parties without
royalty payable to the other.
5. Software license
(a) Wink and Toshiba will cooperate to promote the Interactive Monta TV as a
standard in the Japanese market. For this purpose Wink will license Toshiba the
Interactive Monta TV software and authoring tools that will be incorporated in
the Toshiba products. Wink will grant Toshiba the right to reproduce and deliver
the ICAP software and authoring tools with the Toshiba products and for the
demonstration and experimental purposes.
(b) Wink will grant the right for Toshiba to sublicense the TC90AO1F decoder
containing the ICAP software to other TV manufacturers who may want to use the
TC90AOIF decoder.
(c) Toshiba agrees that a prominent logo be affixed on the Interactive Monta TV
for purposes. The logo artwork will be determined by Wink, Toshiba and other TV
manufactures who use the ICAP software.
(d) The per copy licensing fee will be [*] or less for each Interactive Monta
TV product or other device containing the ICAP software. Further terms and
conditions regarding licensing the Toshiba products and the third party
licensing, including the licensing fee for authoring will be defined in the
definitive agreement.
6. Confidential Information
Any exchange of documents or other information will be governed by the
provisions of the Non-disclosure Agreement signed on January 9, 1995 between
Wink and Toshiba.
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Except as Wink and Toshiba may agree or as may be required by law, neither Wink
nor Toshiba will make any public announcement about or otherwise disclose to any
third party this Project Outline.
Wink Communications, Inc. Toshiba Corporation
By: /s/ Xxxx X. Xxxxxx By: /s/ Toshihida Yasui
Title: VP, Business Development Title:Deputy General Manager Advanced-I
Group
Date: 24 February 1995 Date: February 16, 1995
