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SOFTWARE LICENSE AGREEMENT
This SOFTWARE LICENSE AGREEMENT (this "Agreement") is entered into
effective as of February 21, 2001 (the "Effective Date"), by and between
Handspring, Inc., a Delaware corporation with its principal place of business at
000 Xxxxxxxx Xxxxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000, and OmniSky Corporation, a
Delaware corporation with its principal place of business at 0000 Xxxxxx Xxxxx,
Xxxx Xxxx, Xxxxxxxxxx 00000.
RECITALS
WHEREAS, Handspring has developed and is further developing certain
browser software, known as the Handspring Wireless Web Browser, which enables
wireless Internet access on wireless devices running the Palm OS operating
system ("Palm OS");
WHEREAS, OmniSky offers a wireless Internet and email service which
enables its Customers to access and navigate the Internet, send and receive
email messages and conduct e-commerce transactions;
WHEREAS, OmniSky desires to obtain a license to the Handspring Wireless
Web Browser, in order that it may supply such browser to its Customers, and
Handspring desires to grant such license in exchange for the license fees,
royalties and other provisions hereof, in accordance with the terms and
conditions set forth in this Agreement.
AGREEMENT
NOW, THEREFORE, the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "Affiliate" shall mean any Entity that is directly or indirectly
controlling, controlled by, or under common control with another Entity. For
purposes of this Agreement, an Entity shall be regarded as in control of another
Entity if it owns, or directly or indirectly controls, at least a majority of
the voting stock or other ownership interest of the other Entity, or if it
directly or indirectly possesses the power to direct or cause the direction of
the management and policies of the other Entity by any means whatsoever.
Notwithstanding the foregoing, OmniSky International, a joint venture of OmniSky
and News Corporation, shall be deemed to be an "Affiliate" for purposes of this
Agreement.
1.2 "Client Software" shall mean Handspring's proprietary Palm OS-based
browser application that resides on a wireless device, including without
limitation PDAs, handheld computers and wireless telephones.
1.3 "Customer" shall mean any authorized user of wireless services
provided by OmniSky (or its Affiliates), or another Entity pursuant to an
agreement with OmniSky (or its
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Affiliate), to whom an object code copy of the Client Software or Handspring
Derivative Work of the Client Software is sublicensed by OmniSky pursuant to the
terms of this Agreement.
1.4 "Entity" shall mean an individual, corporation, partnership, trust,
business trust, association, joint stock company, joint venture, pool,
syndicate, sole proprietorship, unincorporated organization, governmental
authority, or any other form of entity not specifically listed herein.
1.5 "Handspring" shall mean Handspring, Inc. together with its
permitted successors and assigns.
1.6 "Handspring Competitor" shall mean any of the parties listed in
Exhibit A.
1.7 "Handspring Derivative Work" shall mean a browser-related work
created by Handspring during the term of this Agreement based on or
incorporating the Licensed Software and operating on the Palm OS, including but
not limited to Modifications, translations, abridgments, condensations,
improvements, updates, enhancements, or any other form in which the Licensed
Software may be recast, transformed, adapted, or revised. For purposes of this
Section and for purposes of Section 1.10 as to OmniSky Derivative Works,
"Modifications" shall mean any additions to or deletions from the code for the
relevant software, including (a) any additions to or deletions from the contents
of a file containing code from such software and (b) any new file that contains
any material part of code from such software. Modifications (and Handspring
Derivative Works and OmniSky Derivative Works) shall not include new files that
do not contain any code from such software ("New File"). Handspring Derivative
Works of the Proxy Software comprise object code only. Handspring Derivative
Work shall also include any other work specifically so designated by both
parties in writing in the future.
1.8 "Licensed Software" shall mean, collectively, the Client Software
and the Proxy Software and Handspring Derivative Works of each, respectively.
The Proxy Software and Client Software collectively comprise the Handspring
Wireless Web Browser.
1.9 "OmniSky" shall mean OmniSky Corporation together with its
permitted successors and assigns.
1.10 "OmniSky Derivative Work" shall mean a work created by OmniSky and
based on or incorporating the Client Software and operating on the Palm OS,
including but not limited to Modifications (as defined in Section 1.7),
translations, abridgments, condensations, improvements, updates, enhancements,
or any other form in which the Client Software may be recast, transformed,
adapted, or revised within the scope of the license granted under Section 2.1.
The term "OmniSky Derivative Work" shall also include any other work
specifically so designated by both parties in writing in the future.
1.11 "Proxy Software" shall mean Handspring's proprietary server
application, in object code form only, for retrieving, reformatting and
delivering Internet content requested by the Client Software.
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ARTICLE 2
LICENSED SOFTWARE
2.1 Subject to the terms of this Agreement, Handspring hereby grants to
OmniSky (excluding its Affiliates) a nonexclusive, nontransferable, fee-bearing,
worldwide license, without the right to sublicense, for the term of this
Agreement, to use the source code of the Client Software delivered pursuant to
Section 2.4 (and any updates thereto) solely to modify the Client Software for
the purpose of creating OmniSky Derivative Works.
2.2 Subject to the terms of this Agreement, Handspring hereby grants to
OmniSky and its Affiliates a nontransferable, nonexclusive, fee-bearing,
worldwide license, during the term of this Agreement, to make copies of the
object code version of the Client Software and any Handspring Derivative Work
thereof, and to sublicense and distribute such copies to an unlimited number of
Customers pursuant to sublicense agreements that protect Handspring's
intellectual property rights therein to at least the same degree as this
Agreement. In addition, OmniSky and/or its Affiliates may sublicense the
foregoing distribution rights to the extent necessary to allow distribution of
such copies through one or more resellers or other intermediaries. Neither
OmniSky nor any Affiliate may sublicense its right to make such copies except to
a contract fabricator acting directly on its behalf (and not on behalf of a
reseller, intermediary or other third party). OmniSky shall have no right to
sublicense the source code version of the Client Software or any Handspring
Derivative Work thereof.
2.3 Subject to the terms of this Agreement, Handspring hereby grants to
OmniSky and its Affiliates a nonexclusive, nontransferable, fee-bearing,
worldwide license to use and copy the Proxy Software and Handspring Derivative
Works of the Proxy Software during the term of this Agreement. OmniSky may not
sublicense the foregoing rights to any third party, but may, on an Application
Service Provider basis, host and use copies of such Proxy Software and
Handspring Derivative Works (residing on servers within its possession and
control) for third parties.
2.4 Handspring shall deliver to OmniSky, within two (2) business days
after the Effective Date, a source code version and object code version of the
Client Software and, within ten (10) business days after the Effective Date, an
executable version or object code version of the Proxy Software. Should such
Licensed Software fail to conform to the specifications and features set forth
in Exhibit B ("Acceptance Criteria") in any material respect, as determined by
OmniSky in its sole discretion, OmniSky shall notify Handspring of such failure
and Handspring shall promptly modify and redeliver the Licensed Software to
OmniSky until it satisfies the Acceptance Criteria. The date upon which the
Licensed Software satisfies the Acceptance Criteria shall be the "Acceptance
Date," which date shall be certified in writing by OmniSky. Notwithstanding the
foregoing, either party may terminate this Agreement without liability to the
other party at 5:00 p.m. PT on March 31, 2001, or at any time within forty-eight
(48) hours thereafter, if Handspring has not received OmniSky's certification of
the Acceptance Date by such time.
2.5 Handspring shall provide OmniSky with all updates to the Licensed
Software commercially released by Handspring during the term of this Agreement
as soon as reasonably
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practicable but in no event later than the date such updates are first
commercially released by Handspring or any licensee of Handspring. Updates of
the Client Software shall be provided in both object and source code form.
Updates of the Proxy Software shall be provided in object code form only.
Updates provided pursuant to this Section 2.5 shall be deemed to be Handspring
Derivative Works.
2.6 Handspring grants OmniSky no rights under this Agreement other than
those expressly stated in this Agreement, whether by implication, estoppel or
otherwise. Without limiting the foregoing, except as expressly authorized
herein, OmniSky may not, and will ensure that no Affiliates, directly or through
any third party, (a) transfer or sublicense any Licensed Software; (b) reverse
engineer or otherwise attempt to access the source code of any Licensed
Software; or (c) copy the Licensed Software, except for a reasonable number of
backup copies for archival purposes. OmniSky will not delete or alter the
copyright, trademark or other proprietary rights notices of Handspring and its
licensors included with any Licensed Software, and will reproduce such notices
on all copies thereof.
2.7 OmniSky shall provide attribution credit to Handspring for the
Licensed Software in a reasonably prominent manner in a browser-related "About"
section of the OmniSky wireless services. Except as otherwise agreed by the
parties, OmniSky shall not brand the Licensed Software as OmniSky's proprietary
technology, except for standard proprietary branding of the OmniSky wireless
service by OmniSky in the ordinary course and branding of specific features of
OmniSky Derivative Works.
2.8 OmniSky shall deliver to Handspring the following reports regarding
the numbers of copies of the Client Software distributed to Customers hereunder,
including without limitation Customers served by the Proxy Software in
connection with ASP services under Section 2.3. Reports shall be submitted
covering the periods beginning on the Effective Date and ending, respectively,
on April 30, 2001, July 31, 2001, October 31, 2001 and January 31, 2002. Each
report shall be submitted no later than 45 days after the end of such period and
shall describe the cumulative number of copies distributed through the end of
such period.
2.9 Each party agrees to comply in all respects with all applicable
laws, ordinances, rules, regulations and requirements of governmental
authorities, including without limitation all export laws applicable in any
jurisdiction.
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ARTICLE 3
LICENSING AND MAINTENANCE FEES
3.1 In return for the licenses granted pursuant to Sections 2.1 and 2.2
and subject to the terms and conditions of this Agreement, effective as of the
Acceptance Date, OmniSky agrees to pay Handspring a one-time license fee equal
to $[***], payable in three installments according to the following: (i)
$[***] shall be paid by the Acceptance Date, (ii) $[***] shall be paid by
the first anniversary of the Effective Date and (iii) $[***] shall be paid by
the second anniversary of the Effective Date.
In furtherance of the foregoing and in consideration of the performance
by Handspring of its obligations under Sections 2.1 and 2.2, OmniSky agrees to
pay Handspring the annual maintenance fees for the Client Software set forth in
the following schedule:
Acceptance Date (covering the first full year): $[***]
First Anniversary of Effective Date
(covering the second full year): $[***]
Second Anniversary of Effective Date
(covering the third full year): $[***]
3.2 In return for the licenses granted pursuant to Section 2.3 and
subject to the terms and conditions of this Agreement, OmniSky agrees to pay
Handspring a license fee for the initial three years of the term of this
Agreement equal to $[***], of which (i) $[***] shall be due and payable on the
Acceptance Date, (ii) $[***] shall be due and payable on the first anniversary
of the Effective Date and (iii) $[***] shall be due and payable on the second
anniversary of the Effective Date. Unless and until either party notifies the
other that it declines to renew this Agreement as provided in Section 6.1,
$[***] shall be due and payable on each subsequent anniversary of the Effective
Date.
In furtherance of the foregoing and in consideration of the performance
by Handspring of its obligations under Section 2.3, OmniSky agrees to pay
Handspring the annual maintenance fees for the Proxy Software set forth in the
following schedule:
Acceptance Date (covering the first full year): $[***]
First Anniversary of Effective Date
(covering the second full year): $[***]
Second Anniversary of Effective Date
(covering the third full year): $[***]
3.3 In addition to the fees set forth in Sections 3.1 and 3.2, and
subject to the terms and conditions of this Agreement, OmniSky agrees to expend
not less than an aggregate of $[***] for marketing and related activities which
promote Handspring products and the Handspring trade name (the "Marketing
Funds"). With respect to the expenditure of such Marketing Funds, (i) $[***] of
such Marketing Funds shall be expended by the first anniversary of the Effective
Date, (ii) an additional $[***] of such Marketing Funds shall be expended by
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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the second anniversary of the Effective Date and (iii) the remaining $[***] of
such Marketing Funds shall be expended by the third anniversary of the Effective
Date. The Marketing Funds will be used for marketing and other promotional
activities that have been approved in advance by both OmniSky and Handspring.
Such activities may include, but are not limited to, prominent mention of
Handspring in advertisements, subsidization of wireless modems for use with
Handspring devices and inclusion of Handspring products in OmniSky media events.
Before any amounts may be credited against OmniSky's marketing obligations,
OmniSky must submit a request to Handspring, together with a description of the
activities and a budget of the costs of the activities, for approval. Handspring
will use reasonable efforts to respond to each such request within ten (10) days
of receipt. OmniSky may credit against its marketing obligations hereunder any
activities approved by Handspring pursuant to this Section 3.3. If OmniSky
expends, or causes to be expended, an amount which exceeds the approved budgeted
amount, any amounts that exceed the approved budget by more than 10% shall not
be credited against OmniSky's marketing obligations unless and until such excess
amounts are approved by Handspring.
3.4 In return for Handspring licensing and providing to OmniSky the
Handspring Derivative Works, OmniSky shall reimburse Handspring, within 30 days
after receipt of invoice therefor, for all amounts payable by Handspring to its
licensors and other third-party suppliers that would not have been payable by
Handspring but for OmniSky's exercise of the licenses granted hereunder.
Notwithstanding the foregoing, at least thirty (30) days prior to any delivery
to OmniSky of a Handspring Derivative Work, Handspring shall notify OmniSky in
writing of the amount of the reimbursement obligation that would be incurred by
OmniSky as a result of such Handspring Derivative Work. If OmniSky notifies
Handspring in writing within ten (10) business days after receiving the
foregoing reimbursement notice that OmniSky wishes to exclude such Handspring
Derivative Work from the licenses granted hereunder, Handspring shall not
deliver to OmniSky such Handspring Derivative Work, and OmniSky shall not be
responsible for any reimbursement obligation with respect thereto.
3.5 Notwithstanding the foregoing, if at anytime Handspring shall
license both the Client Software and the Proxy Software (excluding any hosting
of the Proxy Software by Handspring on an ASP-basis) to any Entity identified in
Exhibit C (a "Third Party License") in consideration for licensing, maintenance
or other fees which, in the aggregate and in light of any different terms of
such Third Party License, are less than the aggregate of the licensing,
maintenance and other fees (excluding the Marketing Funds) payable by OmniSky
hereunder, then the licensing, maintenance and other fees payable by OmniSky
hereunder shall automatically be reduced to an amount equal or, in light of any
different terms of such Third Party License, equivalent to the fees payable
under the Third Party License; provided that, under no circumstances shall
Handspring be required pursuant to this Section 3.5 to refund amounts previously
paid by OmniSky to Handspring under this Agreement. Handspring agrees to notify
OmniSky in writing within fourteen (14) days after its execution of any
agreement which triggers the fee reduction set forth in this Section 3.5.
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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ARTICLE 4
TECHNICAL SUPPORT
4.1 Handspring shall provide OmniSky with technical support of the
Proxy Software at the levels set forth on Exhibit D and for the period(s)
provided below. All technical support provided by Handspring will be performed
in a full and professional manner by qualified individuals. OmniSky shall pay
Handspring a total of $[***] in four equal installments of $[***] due in
advance, respectively, on the Acceptance Date and three, six and nine months
after the Effective Date, which shall entitle OmniSky to support through the
first anniversary of the Effective Date. Subject to OmniSky's continued payment
therefor, such support shall automatically renew for subsequent one-year terms
on the same terms unless OmniSky notifies Handspring, at least sixty (60) days
before the end of the then-current term, of its election not to renew. OmniSky
may terminate support at any time by written notice to Handspring; provided
that, if such termination occurs before the first anniversary of the Effective
Date, any unpaid balance of the $[***] fee for the initial year of such services
shall accelerate and be payable in full upon such termination. If such
termination occurs after the first anniversary of the Effective Date, OmniSky
shall not be responsible for any installment of the $[***] fee for the current
renewal term which has not yet become due pursuant to this Section 4.1. In
addition to the foregoing technical support, Handspring shall provide OmniSky,
at no additional charge, up to ten (10) hours per calendar quarter of technical
support regarding the use of the source code to the Client Software (in such
form as delivered hereunder by Handspring). OmniSky shall be solely responsible
for support of its Customers.
4.2 Notwithstanding the foregoing, if at anytime hereafter Handspring
commences providing technical support in substantially the same manner as
described in Section 4.1 as part of its licensing terms for the Licensed
Software for fees that, in the aggregate and in light of any different terms of
such technical support, are less than the fees payable by OmniSky therefor, then
the fees payable by OmniSky shall automatically be reduced to an amount equal
or, in light of any such different terms, equivalent to such lower fees.
4.3 Without limiting the technical support provided in Section 4.1,
within thirty (30) days after the Effective Date, Handspring shall conduct a
one-day training program regarding the Licensed Software for up to an aggregate
of ten (10) OmniSky personnel. Such program will take place at a time and place
mutually agreed by the parties, and shall be conducted in such a manner as is
reasonably adequate to train OmniSky personnel in relevant aspects of the
Licensed Software, including without limitation, the server architecture and
operations, installation, configuration, troubleshooting, scaling and tuning.
ARTICLE 5
OWNERSHIP OF DERIVATIVE WORKS
5.1 All Handspring Derivative Works shall be the sole and exclusive
property of Handspring. Other than any Licensed Software included therein, all
OmniSky Derivative Works
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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shall be the sole and exclusive property of OmniSky. Without limiting the
foregoing, upon termination or expiration of this Agreement for any reason,
OmniSky shall have no license, express or implied, with respect to any Licensed
Software included in any OmniSky Derivative Work.
5.2 Handspring agrees that its sole and exclusive ownership of
Handspring Derivative Works is subject to the licenses granted in such
Handspring Derivative Works in Article 2 hereof. OmniSky agrees that its sole
and exclusive ownership of OmniSky Derivative Works is subject to the licenses
granted in such OmniSky Derivative Works in Section 5.3.
5.3 OmniSky agrees to present, in both source and object code form, all
OmniSky Derivative Works to Handspring as soon as reasonably practicable but in
no event later than commercial release thereof by OmniSky. OmniSky hereby grants
to Handspring a perpetual (except as provided below), nonexclusive, worldwide
and royalty-free license to use, copy, distribute and modify the source code
version and object code version of any OmniSky Derivative Work; provided that,
for the period of one hundred eighty (180) days after the date of delivery to
Handspring of any OmniSky Derivative Work, Handspring shall be prohibited from
distributing such OmniSky Derivative Work to or using such OmniSky Derivative
Work on behalf of any other licensee of the Client Software without OmniSky's
prior written consent. Notwithstanding the foregoing, Handspring's rights in the
source code of OmniSky Derivative Works shall terminate upon expiration or
termination of this Agreement for any reason.
5.4 Subject to the terms of this Agreement, OmniSky hereby grants to
Handspring, under any rights exercisable by OmniSky now or hereafter in OmniSky
OneTap, a nonexclusive, perpetual, fully paid-up, worldwide license to use,
copy, modify and distribute OmniSky OneTap as part of Handspring's products or
services. For the purpose of this Agreement, OmniSky OneTap shall mean that
certain proprietary HTML-based software application, and related programming
interface, developed by OmniSky that enables applications to exchange data
through a tap or series of taps on a handheld device.
ARTICLE 6
TERMINATION
6.1 This Agreement is effective as of the Effective Date and, unless
earlier terminated as provided below, shall continue in effect for an initial
term of three years. Thereafter, this Agreement shall automatically renew for
successive one-year periods unless either party notifies the other party, in
writing no less than sixty (60) days before the end of the initial term or then
current renewal period, that such party declines to renew this Agreement. If the
parties renew this Agreement, OmniSky shall have a license to the source code of
the Client Software that, in consideration of the fees set forth in Section 3.1,
shall be deemed fully paid and royalty-free.
6.2 Either party hereto shall have the right to terminate this
Agreement if the other party breaches any of the material terms, conditions or
obligations of this Agreement, by giving such other party thirty (30) days
advance written notice which specifically sets forth the breach
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alleged. Such notice of termination shall not be effective if such other party
cures the specified breach within such thirty (30) day period. OmniSky shall
have the right to terminate this Agreement for convenience for any reason or no
reason upon thirty (30) days advance written notice to Handspring.
6.3 Without limiting any available remedy at law or in equity, upon any
termination of this Agreement pursuant to this Article 6, all rights and
obligations of the parties under this Agreement shall be extinguished, except
that (a) if OmniSky terminates for convenience as provided above, all unpaid
installments of the Client Software license fee set forth in Section 3.1 shall
accelerate and be paid in full on or prior to such termination, provided that
all such unpaid installments shall be cancelled if OmniSky terminates this
Agreement as a result of Handspring electing not to indemnify a third party
claim in reliance on the limitation of liability under Article 12, (b) all other
accrued payment obligations hereunder shall survive such termination or
expiration, (c) the rights and obligations of the parties under Articles 5, 6,
8, 10 and 12 shall survive such termination or expiration, and (d) OmniSky shall
deliver to Handspring all copies of the Licensed Software within its possession
or control, together with a writing executed by an officer of OmniSky certifying
that no copies of the source code of the Client Software have been delivered or
disclosed to any third party.
6.4 If OmniSky's rights, obligations or privileges hereunder are
assigned to any Handspring Competitor without Handspring's prior written
consent, all of OmniSky's rights in the source code of the Client Software (and
any updates) licensed hereunder shall terminate immediately prior to such
assignment, and OmniSky shall, prior to effectiveness of such assignment,
deliver to Handspring all copies of such source code within its possession or
control, together with a writing executed by an officer of OmniSky certifying
that no copies of such source code have been delivered or disclosed to any third
party. Otherwise, subject to Article 9 and Sections 6.1, 6.2 and 6.3, upon any
such assignment this Agreement will remain in full force and effect.
ARTICLE 7
REPRESENTATIONS AND WARRANTIES
7.1 Handspring represents and warrants that (i) it is a corporation
duly organized, validly existing, and in good standing under the laws of the
State of Delaware; (ii) to Handspring's knowledge, other than [***] to the
extent applicable to the Licensed Software ("[***] Rights"), Handspring is the
owner of all proprietary rights, including patent, copyright, trade secret,
trademark and other proprietary rights, in and to the Licensed Software; (iii)
it has the full corporate power and authority to enter into this Agreement and
to perform its obligations hereunder; (iv) upon execution, this Agreement shall
constitute a legal, valid and binding obligation of Handspring enforceable in
accordance with its terms; (v) it has not granted, and will not grant during the
term of this Agreement, any license or assignment that is inconsistent with the
license rights granted to OmniSky herein; and (vi) it is not aware of any
threatened or pending action, suit, investigation, claim or proceeding relating
to the Licensed Software as of the Effective Date of this Agreement.
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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7.2 OmniSky represents and warrants that (i) it is a corporation duly
organized, validly existing, and in good standing under the laws of the State of
Delaware; (ii) upon execution, this Agreement shall constitute a legal, valid
and binding obligation of OmniSky enforceable in accordance with its terms; and
(iii) it has the full corporate power and authority to enter into this Agreement
and to perform its obligations hereunder.
7.3 THE LIMITED WARRANTIES EXPRESSLY SET FORTH IN THIS SECTION 7 ARE IN
LIEU OF ALL OTHER WARRANTIES, AND HANDSPRING HEREBY DISCLAIMS ALL OTHER
WARRANTIES, WHETHER WRITTEN, ORAL, EXPRESS, IMPLIED OR STATUTORY, INCLUDING BUT
NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT AND FITNESS FOR A
PARTICULAR PURPOSE. WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, HANDSPRING
DOES NOT WARRANT THAT USE OF ANY LICENSED SOFTWARE WILL BE UNINTERRUPTED OR
ERROR FREE.
ARTICLE 8
INDEMNIFICATION
8.1 Handspring will defend, indemnify, and hold harmless OmniSky and
its directors, officers and employees from and against any and all claims,
costs, losses, damages, judgments, obligations, liabilities and expenses
(including, without limitation, reasonable attorneys' fees) arising out of or in
connection with or related in any way to any third-party claim alleging that the
Licensed Software, or the use and/or distribution thereof as contemplated
herein, infringe or misappropriate any copyright, trademark, trade secret or
patent (other than any [***] Rights) of any third party; provided that
OmniSky provides Handspring with (x) prompt written notice of such claim or
action; (y) sole control and authority over the defense or settlement of such
claim or action; and (z) reasonable assistance to defend and/or settle any such
claim or action; provided, further, that failure to give notice as provided in
subsection (x) above in a timely fashion shall not result in a waiver of any
right to indemnification hereunder except to the extent Handspring is prejudiced
thereby and then only to the extent of such prejudice. This Section does not
apply to liability for claims arising from modification of the Licensed Software
not performed by Handspring, use of the Licensed Software outside the scope of
the license granted herein or combination of the Licensed Software with other
products not provided by Handspring, to the extent such liability would not have
arisen but for such modification, use or combination.
8.2 Subject to the limitations described in the last sentence of this
Section, OmniSky will defend, indemnify, and hold harmless Handspring and its
directors, officers, employees and agents from and against any and all claims,
costs, losses, damages, judgments, obligations, liabilities and expenses
(including, without limitation, reasonable attorneys' fees) arising out of or in
connection with or related in any way to any third-party claim arising from the
development, reproduction, use or distribution of OmniSky Derivative Works;
provided that Handspring provides OmniSky with (x) prompt written notice of such
claim or action; (y) sole control and authority over the defense or settlement
of such claim or action; and (z) reasonable assistance to defend and/or settle
any such claim or action; provided, further, that failure to give notice as
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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provided in subsection (x) above in a timely fashion shall not result in a
waiver of any right to indemnification hereunder except to the extent OmniSky is
prejudiced thereby and then only to the extent of such prejudice. This Section
does not apply, and OmniSky shall have no liability hereunder, with respect to
any claim for which OmniSky is entitled to indemnification under any of the
terms of Section 8.1 above to the full extent of such indemnification.
8.3 THIS SECTION 8 SETS FORTH EACH PARTY'S SOLE OBLIGATION, AND THE
OTHER PARTY'S EXCLUSIVE REMEDY, FOR ANY THIRD-PARTY CLAIMS OF INFRINGEMENT
ARISING IN CONNECTION WITH THIS AGREEMENT.
ARTICLE 9
ASSIGNMENT
Neither party may assign this Agreement, in whole or in part, without
the other party's prior written consent. Notwithstanding the foregoing, each
party shall be entitled to assign its rights, obligations and privileges
hereunder, in whole or in part, to any Affiliate, merger partner, successor in
business, or acquirer of all or substantially all its assets without obtaining
the other's consent to such assignment. Any assignment by either party shall not
result in an increase in the scope of the licenses granted pursuant to this
Agreement unless agreed to in writing by the other party. In the event OmniSky
assigns its payment obligations to a foreign Affiliate, OmniSky or such
Affiliate shall bear responsibility for payment of any and all withholding taxes
such that net amounts paid to Handspring (or its Affiliates, as applicable)
hereunder shall not be reduced.
ARTICLE 10
CONFIDENTIALITY
10.1 A party hereto ("Recipient") receiving Confidential Information
(as defined below) of the other party ("Disclosing Party") will not use such
Confidential Information except to exercise rights or perform obligations under
this Agreement, and will not disclose such Confidential Information to any third
party. This Section does not apply to information that is (a) or becomes
publicly known through no act of Recipient, (b) in Recipient's possession when
disclosed without breach of any legal obligation, (c) received by Recipient from
a third party without such party's breach of any legal obligation, (d) developed
by Recipient without use of the Disclosing Party's Confidential Information, or
(e) disclosed as needed to enforce any right or obligation of this Agreement at
law or inequity. In addition, a Recipient may disclose Confidential Information
pursuant to a requirement of a judicial, administrative or other governmental
agency; provided that sufficient written notice is given to the Disclosing Party
prior to such disclosure to enable the Disclosing Party to seek an order
limiting or precluding such disclosure.
10.2 "Confidential Information" means (a) in the case of Handspring,
the source code of the Client Software, which shall be deemed a trade secret of
Handspring, (b) in the case of OmniSky, the reports delivered pursuant to
Section 2.8 and (c) in the case of either party, all other information that (i)
is designated as such in writing by the Disclosing Party when or before
disclosed to the Recipient;
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(ii) is orally or visually disclosed, or disclosed in writing without such
designation, if the Disclosing Party delivers such designation within 30 days
thereafter; or (iii) the Recipient may reasonably be expected to know, based on
its nature or the circumstances of its disclosure, is maintained in confidence
by the such party for competitive advantage or other commercial benefit.
ARTICLE 11
NOTICES
All notices or other communications required or permitted hereunder
shall be in writing and shall be personally delivered, telecopied (with
confirmation of transmission), or given by certified mail, postage prepaid with
return receipt requested, addressed as follows:
if to Handspring: Handspring, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxx Xxxx, XX 00000
Attention: Xxxx Xxxxxxxxxxxx
with a copy to: Handspring, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxx Xxxx, XX 00000
Attention: General Counsel
if to OmniSky: OmniSky Corporation
0000 Xxxxxx Xxxxx
Xxxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxx
with a copy to: OmniSky Corporation
0000 Xxxxxx Xxxxx
Xxxx Xxxx, XX 00000
Attention: General Counsel
Any party may change the above-specified recipient and/or mailing address by
notice to the other party given in the manner herein prescribed. All notices
shall be deemed given on the day when actually delivered as provided herein (if
delivered personally or by telecopy) or on the date when postmarked (if
delivered by mail).
ARTICLE 12
LIMITATIONS OF LIABILITY
OTHER THAN LIABILITY UNDER SECTION 10 AND LIABILITY UNDER SECTION 8 (EXCLUDING
CLAIMS UNDER PATENTS ISSUED AFTER THE EFFECTIVE DATE), NEITHER PARTY WILL BE
LIABLE TO THE OTHER PARTY UNDER ANY CAUSE OF ACTION OR THEORY OF LIABILITY FOR
(A) DAMAGES IN EXCESS OF AMOUNTS
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ACTUALLY PAID TO HANDSPRING UNDER THIS AGREEMENT, OR (B) SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING BUT NOT LIMITED TO LOSS OF USE,
DATA, BUSINESS OR PROFITS) ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT,
EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. EACH
PARTY ACKNOWLEDGES THAT THE FOREGOING LIMITATIONS SHALL APPLY NOTWITHSTANDING
ANY FAILURE OF ESSENTIAL PURPOSE OF THE LIMITED REMEDIES AVAILABLE HEREUNDER.
ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 Press Release. The parties agree to issue a joint press release
concerning the relationship created by this Agreement no later than ten (10)
days after the Acceptance Date. The content of this press release shall be
mutually agreed upon by the parties prior to release.
13.2 Titles and Headings. Titles and headings to paragraphs herein are
inserted for convenience of reference only and are not intended to affect the
meaning or interpretation of this Agreement.
13.3 Execution in Counterparts. This Agreement may be executed in one
or more counterparts and by facsimile, all of which shall be considered one and
the same agreement, and shall become a binding agreement when one or more
counterparts have been signed by each party and delivered to the other party.
13.4 Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to the subject matter hereof and supersedes all
previous or contemporaneous proposals or agreements, oral or written, and all
negotiations, conversations or discussions between the parties relating to the
subject matter hereof.
13.5 Amendments. No change, modification, extension, termination or
waiver of this Agreement, or any of the provisions contained herein, shall be
valid unless made in writing and signed by duly authorized representatives of
the parties hereto.
13.6 Severability. Should one or more of the provisions of this
Agreement be or become invalid, the parties shall substitute, by mutual consent,
valid provisions for invalid provisions, which valid provisions in their
economic effect are sufficiently similar to the invalid provisions that it can
be reasonably assumed that the parties would have entered into this Agreement
with such provisions. In case such provisions cannot be agreed upon, the
invalidity of one or several provisions of this Agreement shall not affect the
validity of this Agreement as a whole, unless the invalid provisions are of such
essential importance to this Agreement that it can be reasonably assumed that
the parties would not have entered into this Agreement without the invalid
provisions.
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13.7 Waiver. The waiver by either party hereto of any right hereunder
or the failure to perform or a breach by the other party shall not be deemed a
waiver of any other right hereunder or of any other breach or failure by said
party whether of a similar nature or otherwise.
13.8 Governing Law. This Agreement shall be governed by and interpreted
in accordance with the laws of the State of California, without reference to its
or any other jurisdiction's conflict of law principles.
13.9 No Partnership. OmniSky and Handspring are independent contractors
and neither party is the legal representative, agent, joint venture, partner or
employee of the other party for any purpose whatsoever. Neither party has any
right or authority to assume or create any obligations of any kind or to make
any representation or warranty on behalf of the other party, whether express or
implied, or to bind the other party in any respect whatsoever.
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in the manner appropriate for each, as of the day and year first
written above.
Handspring, Inc.
By: /s/ Xxxx Xxxxxxxxxxxx
------------------------
Name: Xxxx Xxxxxxxxxxxx
----------------------
Title: Vice President,
Business Development
----------------------
OmniSky Corporation
By: /s/ Xxxxxxx XxXxxxx
------------------------
Name: Xxxxxxx XxXxxxx
----------------------
Title: Chief Executive
Officer
---------------------
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EXHIBIT A
HANDSPRING COMPETITORS
[***]
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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EXHIBIT B
ACCEPTANCE CRITERIA
The Client Software is a proxy-based Web browser for the Palm OS that provides
users the ability to browse a wide variety of Internet content, including most
content marked up in HTML, WML, and HDML. The browser incorporates encryption
technology from Certicom.
The Client Software Requirements: a PDA modem and Internet Service Provider;
200K minimum free RAM (300K recommended).
ADDITIONAL SPECIFICATIONS AND FEATURES TO BE INTEGRATED INTO CLIENT SOFTWARE
[***]
BROWSER CLIENT SOFTWARE
OmniSky needs to be able to successfully compile the client source code into
executable object form and have the software run in a manner consistent with the
product specifications set forth above.
In addition, the compiled client executed in conjunction with the proxy server
shall have the following functionality:
DEVICE & PLATFORM SUPPORT
- Blazer shall support handheld devices using [***] or
higher, including [***]. Blazer will not
support [***] handhelds.
- Blazer shall be forward compatible to support the [***],
by the launch of [***]
BROWSER FUNCTIONALITY
- Support for the following functions on Blazer toolbar and in Blazer
Menus
[***]
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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[***]
- Support for the following options and user preferences:
[***]
CONTENT TYPES SUPPORTED
- [***]
CONTENT FORMATTING
- [***]
IMAGE HANDLING
- [***]
SECURITY
- [***]
PERSONALIZATION
- [***]
CONNECTIVITY
- [***]
SPEED ENHANCEMENTS
- [***]
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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CUSTOMIZATION
- [***]
OTHER
- [***]
- [***]
WEB PROXY SERVER SOFTWARE
OmniSky shall be able to, with the assistance of Handspring, successfully
install, configure and operate the proxy server. Once the proxy server is
running, it shall meet the following criteria:
- Latency will not increase by more than [***] for up to [***]
requests/second.
- Server will not have any unresolved priority 1 bugs, ie. Bugs that
prevent the system from functioning as it was designed to.
- [***] logging for reporting.
- [***]
- OmniSky will be able to extract data from the access log in following
measurement interval (tools not provided):
o httpop/s The number of accesses per second averaged over five
minutes.
o http/p5s The peak five second interval rate during that five
minutes.
o get/s The number of http get operations per second, normal
data transfers to.
o post/s The number of http post operations per second. These
are used to send query is initiated by a post.
o cgi/s The number of cgi-bin programs run on the server per
second. these are operations - we don't run cgi programs on
the server
o httpb/s The number of bytes of data per second recorded in the
access log transfer, so a very large transfer that takes more
than a few minutes will approve the TCP output measure and
will appear as an abnormally large value in one.
o to4KB/s The number of transfers per second up to 4 kilobytes
in size.
o to16KB/s The number of transfers per second from 4 to 16
kilobytes in size.
o to64KB/s The number of transfers per second from 16 to 64
kilobytes I in size.
o to256KB/s The number of transfers per second from 64 to 256
kilobytes in size.
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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o ov256KB/s The number of transfers per second more than 256
kilobytes in size.
o GATEWAY The number of http operations per second that were
requested by machine takes all the Web accesses from an
internal company and
PRODUCTION
- Database replication Issues.
o The Backend Database shall be setup to allow easy replication
of user specific data to multiple sites.
o Database schema shall be accessible by OS at anytime.
- Scalability/Usability:
o The Server/service shall be scalable up to but not limited to
a minimum of [***] users. Handspring should provide supporting
documentation regarding scaling the browser server.
o If the browser server has any custom scripting tools for
formatting it's output to a PDA, Handspring shall provide full
documentation on the scripting tool and they should be
responsible for reasonable training both the Product
Engineering staff and Production staff in its use. This
training at a minimum shall leave both the Product and
Production teams self sufficient with regard customization and
maintenance/installation of this feature of the browser
server.
[***] Confidential treatment has been requested for the bracketed portions. The
confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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EXHIBIT C
GoAmerica
YadaYada
Palm
Novatel Wireless
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EXHIBIT D
TECHNICAL SUPPORT
A designated Handspring representative shall be available (i) 24 hours per day,
7 days per week by telephone for Severity 1 and 2 problems and (ii) during
normal business hours by telephone and email for Severity 3 and 4 problems.
Handspring shall provide OmniSky with contact information for such
representative on the Effective Date.
For all reported problems, Handspring will acknowledge receipt of the support
request and assign an issue number. OmniSky may request an update on the issue
at reasonable times using this issue number.
A "business day" means any day other than Saturday, Sunday and a normal
Handspring holiday (New Year's Day, President's Day, Memorial Day, Independence
Day, Labor Day, Thanksgiving Day, the day after Thanksgiving Day and Christmas
Day). "Normal business hours" are 8:00 a.m. to 5:00 p.m. (Pacific Time) during
any business day.
When reporting issues, problems shall be classified by severity levels according
to the following table:
Severity Impact on OmniSky Operation Handspring Response
-------- --------------------------- -------------------
1 OmniSky service is not operational or is Initial assessment and status response within 1
effectively not operational due to its hour. Status updates as reasonably requested.
performance. Creates a significant impact Handspring will provide commercially reasonable
on business operations and OmniSky's efforts on a continuous basis until OmniSky
internal support team is available on an service is restored to its normal functionality.
around the clock basis to facilitate
resolution.
2 Material impact on performance of OmniSky Initial response within 2 hours. Handspring will
service. Service is operational but it provide commercially reasonable efforts to
performs very slowly or inconsistently. facilitate prompt resolution.
3 Annoyance. No material impact on Support will be provided as soon as commercially
performance of OmniSky service. practicable. Follow-up telephone or email
support will be available during normal business
hours.
4 Routine question regarding the operation Support will be provided as soon as commercially
of the Licensed Software, a new feature practicable. Follow-up telephone or email
request, documentation or any other support will be available during normal business
question. hours.
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