[Confidential treatment requested for portions of this document. Redacted
information is marked with an asterisk (*).]
LICENSE AGREEMENT
This License Agreement and all Attachment hereto (collectively,
"Agreement") is entered into and effective as of January 30, 1999 ("Effective
Date"), by and between Siteman, Inc. ("Siteman"), a California corporation,
with its principal place of business at 0000 Xxxxxx Xxxx Xxxx, Xxxxx 000,
Xxxxx Xxxxx, Xxxxxxxxxx 00000 and iXL, Inc. ("iXL"), a Delaware corporation,
with its principal place of business at 0000 Xxxxx Xxxxxx, XX, Xxxxxxx,
Xxxxxxx 00000.
WHEREAS, iXL currently owns an e-commerce solution known as Siteman and
MerchantWAVE that involve the development and maintenance of a web authoring
and template tool for multiple web site management;
WHEREAS, pursuant to that certain Asset Purchase Agreement of even date
herewith (the "Asset Purchase Agreement"), Siteman will acquire from iXL and
iXL will sell and transfer to Siteman, certain properties, assets, and rights
of iXL;
WHEREAS, pursuant to that certain Services Agreement of even date
herewith (the "Services Agreement"), iXL agrees to perform certain services;
and
WHEREAS, iXL and Siteman have agreed to enter into this Agreement to
provide for iXL's continued right to use the Licensed Software and practice
certain patent rights.
NOW, THEREFORE, in consideration of the foregoing and mutual agreements,
provisions and covenants contained herein, the receipt and sufficiency of
which are hereby acknowledged, and subject to the terms and conditions set
forth herein, iXL and Siteman hereby agree as follows:
1. Definitions.
a. "Affiliates" means entities that are wholly owned subsidiaries of iXL
Enterprises, Inc. For purposes of this Agreement, "iXL" includes Affiliates
and Affiliates are granted and may exercise rights as set forth in this
Agreement if such Affiliates sign agreements binding such Affiliates to all
restrictions and obligations in this Agreement.
b. "Clients" means those clients of iXL to which iXL sublicenses the
right to use the Licensed Software, Derivative Works and Improvements in
accordance with this Agreement, excluding clients that are Competitors of
Siteman (as defined and set forth in Attachment F).
c. "Derivative Work" means work developed by or for iXL that is a
modification, enhancement, upgrade or improvement of the Licensed Software.
Derivative Work does not include iXL Independent Inventions (as defined in
Section 5.c. below).
d. "End-Users" means those customers of Clients to which Client
sublicenses the right to access and use the Licensed Software in accordance
with this Agreement.
e. "Improvements" mean any modifications, alterations, changes,
upgrades, releases or versions of and to the Licensed Software made by or for
Siteman, that are generally made available by Siteman to its end users and
licensees (including, but not limited to availability under any Maintenance
Support program) for the correction of errors or as otherwise incorporated
into the Licensed Software, except for modifications, alterations, changes,
upgrades, releases or versions of and to the Licensed Software marketed as
new and separate products distinct from the Licensed Software.
f. "iXL Clients" means only those Clients that are Originated by iXL and
that acquire the Licensed Software or Services as a result of iXL closing the
transaction for such Licensed Software or Services with the Client. For the
purpose of this Agreement, "Originated" means that iXL has actively solicited
a person working for a Client who (i) has authority to evaluate, select, and
acquire software or related services on behalf of such Client; and (ii) has
executed or directly influenced the execution of an agreement between such
Client and iXL and/or Siteman for the Licensed Software.
g. "Licensed Intellectual Property Rights" means the Licensed Patents,
trademarks, inventions, copyrights, processes, technical information,
software and designs pertaining to the Licensed Software.
h. "Licensed Patents" means the patent application listed in Attachment
B hereto and any embodiments or inventions thereof, throughout the world,
including divisions, reissues, continuations, renewals, and extensions of the
foregoing, applications therefor, and patents that may issue on such
applications, or that contain the same disclosure as the patent application
listed in Attachment B, or that rely upon for priority the patent application
listed in Attachment B.
i. "Licensed Software" means the Siteman and MerchantWAVE software
products owned by Siteman and fully described in Attachment A hereto in
object code form, together with documentation provided therewith by Siteman
and all Improvements.
j. "Services" means the development, customization, set-up, support and
maintenance services that iXL provides to its Clients that are more
specifically set forth in an agreement between iXL and its Clients.
k. "Source Code" means only the human readable code of the Licensed
Software necessary for iXL to create Derivative Works.
2. License Grants.
a. Subject to all of the terms and conditions of this Agreement, Siteman
hereby grants to iXL, under all of Siteman's rights in the Licensed
Intellectual Property Rights, a non-exclusive, non-transferable, worldwide,
royalty-free license to:
2
i. use and reproduce the Licensed Software for (A) iXL's internal
use and (B) providing Services to iXL's Clients;
ii. use, reproduce and display the Licensed Software for the
purposes of (A) demonstrating the features and functionality of the Licensed
Software to prospective Clients and End Users and (B) providing support for
the Licensed Software to Clients and End Users, including, without
limitation, training related to the Licensed Software; and
iii. use the Source Code solely to modify the Licensed Software to
create Derivative Works.
b. Subject to all of the terms and conditions of this Agreement
(including, without limitation, to the payment obligations of iXL in
Attachment C), Siteman hereby grants to iXL, under all of Siteman's rights in
the Licensed Intellectual Property Rights, a non-exclusive, non-transferable,
worldwide right to:
i. distribute, on behalf of iXL or on behalf of Siteman, the
Licensed Software only to Clients;
ii. sublicense to Clients the right to access (via the world wide
web) and use the Licensed Software pursuant to a written agreement, in a form
approved by Siteman, between iXL and its Clients; and
iii. sublicense to Clients the right to further sublicense to
End-Users the right to access (via the world wide web) and use the Licensed
Software pursuant to a written agreement, in a form approved by Siteman,
between Clients and End-Users.
c. Subject to all the terms and conditions of this Agreement, Siteman
hereby grants to iXL, under Siteman's rights in the Licensed Patent, a
worldwide, non-exclusive, non-transferable, non-sublicensable, license to
manufacture, use, import, sell and distribute the Licensed Software,
Derivative Works, and any other web authoring tool, template tool, or
e-commerce solution (collectively "Technology") licensed by iXL directly to
end users. iXL's exercise of the rights granted in this paragraph are
royalty-bearing according to the terms of Attachment C hereto, to the extent
the Licensed Software or a Derivative Work is licensed to a Client or an iXL
Client. iXL's exercise of the rights granted in this paragraph are not
royalty-bearing to the extent that Technology licensed by iXL is not the
Licensed Software or a Derivative Work, unless iXL purchases or develops
Technology that performs substantially the same functionality as the Licensed
Software and is competitive with the Licensed Software.
d. Notwithstanding the obligations of iXL provided in Attachment C,
Siteman shall deliver to iXL and the iXL Clients listed in Attachment D, all
Improvements to the Licensed Software, royalty-free, for a period of
twenty-four (24) months after the Effective Date.
e. The parties agree to resolve all disputes between iXL and Siteman
arising out of or relating to payments owed under this Agreement; a party's
alleged infringement of the other
3
party's right; and/or the applicability of royalties to a transaction,
according to the provisions of Attachment E hereto.
3. License Restrictions.
a. None of the licenses granted in Section 2 are sublicensable except
as expressly provided therein.
b. iXL may not use third party distributors to distribute the Licensed
Software, unless iXL receives prior written consent of Siteman.
c. This license is non-exclusive. Accordingly, nothing in this
Agreement shall be construed as limiting in any manner Siteman's marketing or
distribution activities or its appointment of other licensees, dealers,
distributors, value-added resellers, original equipment manufacturers, or
agents anywhere in the world.
4. Branding and Attribution. iXL may distribute and sublicense the
Licensed Software under their own trademarks and shall have no obligation to
attribute ownership or origin to Siteman except that all copies of the
Licensed Software shall include Siteman's applicable proprietary rights
notices (such as, without limitation, copyright and patent notices and
markings). In its sole discretion, iXL may also distribute and sublicense the
Licensed Software under Siteman's trademarks for the Licensed Software,
subject to Section 7.f. below.
5. Ownership.
a. As between iXL and Siteman, Siteman retains all right, title and
interest in and to the Licensed Software (excluding the portion of Derivative
Works created by or for iXL, as set forth in Section 5(b) below), Licensed
Intellectual Property Rights (including, without limitation, all patent
rights, copyrights, trademarks, trade secret rights and other proprietary
rights), except as expressly and unambiguously licensed herein and except as
otherwise mutually agreed to in writing between Siteman, iXL and a Client.
b. The parties agree that any Derivative Works or any other
modifications or improvements made by iXL to the Licensed Software or
Licensed Intellectual Property Rights shall be jointly owned by Siteman and
iXL only to the extent of such derivations, modifications or improvements.
Except as provided herein, the parties agree that neither party shall have a
duty to (i) account to the other for any exploitation of a Derivative Work or
any other such modifications, improvements or (ii) deliver any of the
foregoing work product to the other party. iXL may not assign its interest in
a Derivative Work or any other modifications or improvements to the Licensed
Software to any third party without Siteman's prior written consent. If iXL
or Siteman individually own a Derivative Work or any other modification or
improvement created by iXL by operation of law, then the party individually
owning the Derivative Work will automatically assign to the other party,
without further consideration, free and clear of all security interests and
other restrictions and liens whatsoever, an irrevocable, undivided joint
ownership interest in such individually owned Derivative Work, modification
or improvement and any intellectual property rights therein.
4
c. Any and all derivative works, modifications, improvements,
inventions, and discoveries that are developed, achieved, or created by iXL
that do not infringe any copyright rights in the Licensed Software are the
sole and exclusive property of iXL ("iXL Independent Invention"). Subject to
the terms of this Agreement and the Asset Purchase Agreement, each party
acknowledges that the other party may, on its own or in concert with third
parties, achieve discoveries, develop improvements and create new inventions.
6. Commissions. During the Term of this Agreement, and subject to all the
terms and conditions of this Agreement, the parties agree to pay the
commissions and royalties set forth in Attachment C hereto.
7. iXL Covenants and Representations. Except as expressly and unambiguously
provided herein and as conditions of iXL's licenses hereunder, iXL
represents, warrants and agrees:
a. iXL is a corporation duly organized and validly existing under the
laws of the State of Delaware, with full corporate power and authority to
enter into this Agreement and to carry out the transactions and agreements
contemplated hereby, and no further corporate action is or will be required
to execute this Agreement and perform hereunder. This Agreement is
enforceable against iXL in accordance with its terms;
b. to keep Siteman informed as to any material problems with the
Licensed Software and any resolutions proposed and arrived at for those
problems of which iXL becomes aware, and to communicate promptly to Siteman
any and all modifications, design changes or improvements of the Licensed
Software suggested by iXL or any of its customers, employees or agents that
iXL in its sole reasonable judgment deems feasible and useful as a potential
modification or improvement to the Licensed Software;
c. not to conduct its business in a manner which unfavorably reflects
upon Siteman and the Licensed Software;
d. to provide Siteman with monthly written reports setting forth the
number of units of Licensed Software licensed for the applicable monthly
period;
e. to keep complete and accurate books and records of its sales and
sublicensing revenues from Clients and documented End Users of Licensed
Software and all other transactions relating to Licensed Software for at
least a period of three (3) years after such revenues are received by iXL.
Siteman shall have the right (upon reasonable notice and during iXL's normal
business hours and no more than once a year) to have an independent certified
public accountant inspect and audit the books and records of iXL for the
purpose of verifying iXL's compliance with the terms and conditions of this
Agreement and any reports or information due hereunder. As a condition to
making such inspection, the auditors shall execute an agreement in reasonable
form, to maintain the confidentiality of such records and not to disclose any
information with respect thereto to any person, including Siteman, other than
to advise Siteman concerning the completeness and accuracy of the monthly
accounts and payments or to advise Siteman of any discrepancies therein;
5
f. that any use of any Siteman trademarks by iXL or its Affiliates
shall be in compliance with the provisions of all applicable laws and
regulations. iXL agrees (and shall cause its Affiliates to agree) (i) to
comply with quality control standards and trademark usage guidelines that
Siteman may promulgate from time to time with respect to the Licensed
Software identified by such trademarks and service marks, (ii) to conduct any
and all advertising and promotion in which such trademarks or service marks
are used so as not to jeopardize the continued validity and enforceability of
those trademarks and service marks, (iii) that all use of Siteman's
trademarks by iXL or its Affiliates shall inure to the benefit of Siteman and
(iv) not to register or attempt to register any of Siteman's trademarks
anywhere in the world. If iXL fails to use Siteman's trademarks and service
marks in material compliance with this Section, such failure shall be deemed
to be a material breach of one of iXL's material obligations under this
Agreement, subject to written notice and a thirty (30) day right to cure;
g. to comply with the U.S. Foreign Corrupt Practices Act (regarding
among other things, payments to government officials) and all export laws,
restrictions, national security controls and regulations of the United States
or other applicable foreign agency or authority, and not to export or
reexport, or allow the export or reexport of any Licensed Software or any
copy or direct product thereof in violation of any such restrictions, laws or
regulations, or, without all required licenses and proper authorizations, to
Cuba, Libya, North Korea, Iran, Iraq or Rwanda, or to any Group D:1 or E:2
country (or any national of such country) specified in the then current
Supplement No. 1 to Part 740, or, in violation of the embargo provisions in
Part 746, of the U.S. Export Administration Regulations (or any successor
regulations or supplement);
h. that Derivative Works created by iXL will not, to iXL's knowledge,
infringe any patents, copyrights, trademarks, or other intellectual property
rights, including, without limitation, trade secrets, privacy or similar
rights of any person or entity;
i. Covenant Not to Xxx. At no time will iXL, its successors, assigns,
or affiliates make any claim or commence or prosecute against Siteman,
Siteman's affiliates or Siteman's or Siteman's affiliates' directors,
officers, successors, or assigns, any suit, action, or proceeding asserting
or alleging any kind of infringement of any or all patents in (i) Derivative
Works, or (ii) iXL Independent Inventions made by or for iXL and relating to
the Licensed Patent.
8. Siteman Covenants and Representations. Except as expressly and
unambiguously provided herein, Siteman represents, warrants and agrees:
x. Xxxxxxx is a corporation duly organized and validly existing under
the laws of the State of California, with full corporate power and authority
to enter into this Agreement and to carry out the transactions and agreements
contemplated hereby, and no further corporate action is or will be required
to execute this Agreement and perform hereunder. This Agreement is
enforceable against Siteman in accordance with its terms.
b. To the best of Siteman's knowledge, that Siteman will not grant to
any other person any right, claim, or interest in and to the Improvements and
the Intellectual Property Rights
6
thereto which would interfere with or adversely affect iXL's rights under
this Agreement or the consummation of the transactions contemplated hereby;
c. to provide iXL with monthly written reports setting forth the number
of units of Licensed Software licensed for the applicable monthly period;
d. to keep complete and accurate books and records of its sales and
sublicensing revenues from iXL Clients for a period of three (3) years after
such revenues are received by iXL. iXL shall have the right (upon reasonable
notice and during Siteman's normal business hours and not more than once a
year) to have an independent certified public accountant inspect and audit
the books and records of Siteman for the purpose of verifying Siteman's
compliance with the terms and conditions of this Agreement and any reports or
information due hereunder. As a condition to making such inspection, the
auditors shall execute an agreement in reasonable form, to maintain the
confidentiality of such records and not to disclose any information with
respect thereto to any person, including iXL, other than to advise iXL
concerning the completeness and accuracy of the monthly accounts and payments
or to advise iXL of any discrepancies therein;
e. to comply with the U.S. Foreign Corrupt Practices Act (regarding
among other things, payments to government officials) and all export laws,
restrictions, national security controls and regulations of the United States
or other applicable foreign agency or authority, and not to export or
re-export, or allow the export or re-export of any Licensed Software or any
copy or direct product thereof in violation of any such restrictions, laws or
regulations, or, without all required licenses and proper authorizations, to
Cuba, Libya, North Korea, Iran, Iraq or Rwanda, or to any Group D:1 or E:2
country (or any national of such country) specified in the then current
Supplement No. 1 to Part 740, or, in violation of the embargo provisions in
Part 746, of the U.S. Export Administration Regulations (or any successor
regulations or supplement);
f. not impose any liabilities, duties or obligations on iXL through any
oral or written agreements with Clients, without the prior written consent of
iXL;
g. that Improvements will not to Siteman's knowledge, infringe any
patents, copyrights, trademarks, or other intellectual property rights,
including trade secrets, privacy or similar rights of any person or entity;
h. Covenant Not to Xxx. At no time will Siteman, its successors,
assigns, or affiliates make any claim or commence or prosecute against iXL
and iXL's Affiliates and iXL's and iXL's Affiliates' directors, officers,
successors, or assigns, any suit, action, or proceeding directly or
indirectly asserting or alleging any kind of infringement of any or all of
the Licensed Patent. Siteman's covenant not to xxx is personal to iXL and
iXL's Affiliates and iXL's and iXL's Affiliates' directors, officers,
successors, or assigns. Siteman's covenant not to xxx iXL under this Section
8.h is not a covenant not to xxx third parties, except as follows: at no time
will Siteman, its successors, assigns, or affiliates make any claim or
commence or prosecute against iXL's and iXL's Affiliates' licensees ("iXL
Licensees"), any suit, action, or proceeding asserting or alleging any kind
of infringement of any or all of the Licensed Patent for use of Technology
7
(as defined in Section 2.c above) pursuant to a valid license from iXL or
iXL's Affiliates for such Technology in accordance with the license granted
to iXL in Section 2.c.
9. Term. Unless terminated earlier as provided herein, this Agreement shall
commence on the Effective Date and shall terminate thirty (30) months
thereafter ("Term").
10. Termination.
a. This Agreement may be terminated by a party for cause immediately
upon the occurrence of any of the following events:
i. if the other party ceases to do business, or otherwise
terminates its business operations; or
ii. if the other party shall fail to promptly secure or renew any
license, registration, permit, authorization, or approval "Permit" necessary
for the conduct of its business in the manner set forth in this Agreement,
and if any such Permit is revoked, suspended, or not reinstated within one
hundred and eighty (180) days of written notice describing such failure; or
iii. if the other party materially breaches any material provision
of this Agreement and fails to cure such breach within sixty (60) days
(immediately in the case of a breach of Section 13) of written notice
describing the breach; or
iv. if the other party shall seek protection under any bankruptcy,
receivership, trust deed, creditors arrangement, composition or comparable
proceeding, or if any such proceeding is instituted against the other party
(and not dismissed within ninety (90) days).
x. Xxxxxxx may terminate the licenses in Sections 2.a and 2.b
immediately upon any merger or consolidation of iXL or any of its Affiliates
with, or any sale, lease, exchange, mortgage, pledge, transfer,
relinquishment or other disposition of all or substantially all of iXL's or
any of its Affiliate's assets, stock or business or of controlling interest in
iXL or any of its Affiliates (whether by operation of law or otherwise) to
any Competitor (as such term is defined in Attachment F) or subsidiary or
affiliate thereof; provided, however, that (i) any and all sublicenses
granted under Section 2, prior to Siteman's exercise of the termination
rights hereunder, shall continue in full force and effect in accordance with
their terms after such termination, and (ii) iXL and its Affiliates may
continue to exercise the rights granted in Section 2 solely to perform for
Clients any remaining contract obligations, as of the date of such
termination, of iXL and its Affiliates.
c. Neither party shall incur any liability whatsoever for any damage,
loss or expenses of any kind suffered or incurred by the other (or for any
compensation to the other) arising from or incident to any termination of
this Agreement by such party that complies with the terms of the Agreement
whether or not such party is aware of any such damage, loss or expenses.
d. Upon termination of this Agreement naturally at the end of the Term,
the license rights granted to iXL in Section 2.a and 2.b will terminate. The
following provisions shall
8
survive any expiration or termination of this Agreement: Sections 1, 2(c), 3,
5, 7 (except for 7.(d)), 8, 10, 11, 13, 14, 15, 16, 17 and 19.
e. Upon (x) termination of this Agreement by Siteman for iXL's breach
according to the terms of Section 10(a) above, or (y) the earlier of (A) a
final determination by a court of competent jurisdiction or an arbitrator
that iXL has materially breached a material term of this Agreement or failed
to secure and renew any Permit as required herein, or (B) iXL's failure to
file an action seeking a declaratory judgment that iXL has not materially
breached a material term of this Agreement within sixty (60) days after iXL
receives written notice from Siteman as required in Section 10(a); all
license rights granted to iXL hereunder shall terminate and iXL will
immediately return to Siteman all, Proprietary Information of Siteman in its
possession, custody or control in whatever form held (including all copies or
embodiments thereof). Notwithstanding the foregoing termination, all
sublicenses granted by iXL to Clients in accordance with this Agreement prior
to such termination shall continue in full force and effect and iXL may
continue to use the Licensed Software after such termination solely for the
sole purpose of iXL's satisfying any maintenance, warranty, or support
obligations it may have to Clients as of the effective date of such
termination.
f. Termination is not the sole remedy under this Agreement and, whether
or not termination is effected, all other remedies will remain available.
g. Termination of this Agreement for any reason shall not affect either
party's rights and obligations under the Services Agreement.
11. Intellectual Property Prosecution and Maintenance.
x. Xxxxxxx shall be responsible for and control the preparation, filing
and prosecution of all patent, trademark and copyright applications and the
maintenance of all patents and registered trademarks and copyrights in and
for the Licensed Intellectual Property Rights and Licensed Software, using
counsel of its choice.
b. Until such time as Siteman had paid iXL all fees for Services as
provided in the Services Agreement, with respect to the trademark and patent
applications/registrations listed in Schedule 1.1(g) respectively of the
Asset Purchase Agreement, Siteman shall use reasonable commercial efforts to
(i) maintain and prosecute the trademark and the patent
applications/registrations, (ii) conduct any appropriate interference,
enforcement, cancellation, infringement or opposition proceedings or pursue
such other legal remedies reasonably necessary and appropriate to maintain
and protect such trademarks and patent, and (iii) pursue such other
applications and registrations as necessary and appropriate to protect the
Licensed Software and Licensed Patent in any and all jurisdictions in which
the Licensed Software and Licensed Patent are offered to End-Users. Siteman
is entitled to use its reasonable business judgment in making any decision
relating to the immediately foregoing obligations in this paragraph. If in
iXL's reasonable business judgment, Siteman has not taken adequate action to
comply with its obligations set forth in this Section 11.b, Siteman will
perform any additional action at iXL's written request and at iXL's sole
expense.
9
c. Upon Siteman's full payment to iXL of all fees for Services as
provided in the Services Agreement, Siteman shall have no further obligation
to, and it shall be in Siteman's sole discretion whether to, (i) prepare,
file or prosecute any patent, trademark or copyright applications or maintain
any patents or trademark or copyright registrations or (ii) conduct or bring
any interference, opposition, cancellation, enforcement, infringement or any
other action or proceeding relating to the Licensed Intellectual Property
Rights or Licensed Software.
d. Notwithstanding anything in this Agreement to the contrary, Siteman
shall have no obligations whatsoever in connection with any patent
applications filed that are based on iXL Independent Inventions or
improvements or modifications of the Licensed Software or Licensed Patent
created by or for iXL.
12. Intellectual Property Infringement and Enforcement. iXL shall promptly
notify Siteman of any third party infringement of the Licensed Software
and/or the Licensed Intellectual Property Rights of which iXL becomes aware.
iXL has no obligation, right or authority to resolve, xxxxx or commence any
legal proceedings or take any other action in connection with any alleged
infringement of the Licensed Intellectual Property Rights or the Licensed
Software without Siteman's prior written consent, which consent Siteman may
give or withhold in its sole discretion. If Siteman provides iXL with such
written consent, iXL may in its sole discretion undertake such efforts
provided that iXL cooperates with Siteman in connection with, and keeps
Siteman currently apprised of the status of such efforts.
13. Confidentiality.
a. DEFINITION OF CONFIDENTIAL INFORMATION. "Confidential
Information" means any information provided by either party or prepared by
either party (either oral, written, or digital) upon review of such
information, technical data, or know-how provided to either party by the
other (including any director, officer, employee, agent, or representative of
the other) or obtained by either party from the other (including any
director, officer, employee, agent, or representative of the other) including
but not limited to, that which relates to research, product plans, products,
services, customers, markets, software, developments, inventions, processes,
designs, drawings, engineering, hardware configuration information, marketing
or finances of the disclosing party. Confidential Information does not
include information, technical data or know-how which (i) is in the
possession of the receiving party at the time of disclosure (except for any
information acquired by Siteman from iXL under the Asset Purchase Agreement)
as shown by the receiving party's files and records immediately prior to the
time of disclosure, or (ii) prior to or after the time of disclosure becomes
part of the public knowledge or literature, not as a result of any improper
inaction or action of the receiving party, or (iii) is expressly approved by
the disclosing party, in writing, for release, or (iv) comes into the
possession of the receiving party from a third party that was not, to the
recipient's knowledge, subject to any confidentiality restriction.
b. NON-DISCLOSURE OF CONFIDENTIAL INFORMATION. Each party hereby
agrees not to use or disclose any Confidential Information provided to it by
or obtained by it from the other party for any reason including its own use
of for any purpose except as provided hereunder. Neither party will, except
as required by law or court order, disclose any Confidential Information of
the other party to unrelated third parties or to employees, agents or
professional advisors of the party
10
receiving Confidential Information, except employees, agents or professional
advisors who are required to have the information in order to carry out the
obligations of this Agreement. Each party will have or has had employees to
whom Confidential Information of the other party is disclosed or who have
access to Confidential Information of the disclosing party sign a
nondisclosure or similar agreement in content substantially similar to this
Section. Each party agrees that it will take all reasonable measures to
protect the secrecy of and avoid disclosure or use of Confidential Information
of the other party in order to prevent it from falling into the public domain
or the possession of persons other than those persons authorized under this
Agreement to have any such information. Such measures shall include the
highest degree of care that the receiving party utilizes to protect its own
Confidential Information of a similar nature. Each party agrees to notify
the other in writing of any misuse or misappropriation of Confidential
Information of the disclosing party immediately after such misuse or
misappropriation.
c. PATENT OR COPYRIGHT INFRINGEMENT. Except as otherwise expressly
provided herein, nothing in this Agreement is intended to grant any rights
under any patent or copyright of either party, nor shall this Agreement grant
either party any rights in or to the other party's Confidential Information.
Further, both parties agree not to reverse engineer, attempt to reverse
engineer, decompile or disassemble any computer software programs or devices
supplied by the other party without the prior written consent of the other
party.
d. REMEDIES. Each party agrees that its obligations provided in
this Agreement are necessary and reasonable in order to protect the
disclosing party and its business, and each party expressly agrees that
monetary damages would be inadequate to compensate the disclosing party for
any breach by the receiving party of its covenants and agreements set forth
in this Agreement. Accordingly, each party agrees and acknowledges that any
such violation or threatened violation will cause irreparable injury to the
disclosing party and that, in addition to any other remedies that may be
available, in law, in equity or otherwise, the disclosing party shall be
entitled to obtain injunctive relief against the threatened breach of this
Agreement or the continuation of any such breach by the receiving party,
without the necessity of proving actual damages.
e. RETURN OF MATERIALS. Any materials or documents which have been
furnished by one party to the other in connection with this Agreement will be
promptly returned by the receiving party, accompanied by ALL copies of such
documentation, within ten (10) days after this Agreement has been terminated.
11
14. Disclaimer of Warranties.
a. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED HEREIN, THE LICENSED SOFTWARE
AND LICENSED INTELLECTUAL PROPERTY RIGHTS ARE PROVIDED TO iXL AND ITS
AFFILIATES "AS IS." EXCEPT AS OTHERWISE EXPRESSLY PROVIDED HEREIN, SITEMAN
MAKES NO WARRANTIES TO ANY PERSON OR ENTITY WITH RESPECT TO THE LICENSED
SOFTWARE OR LICENSED INTELLECTUAL PROPERTY RIGHTS OR ANY LICENSES AND
DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING WITHOUT LIMITATION, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT.
b. Except as otherwise expressly provided herein, nothing in this
Agreement is or shall be construed as:
i. a warranty or representation by Siteman as to the validity
or scope of any patent claim or patent within the Licensed Patents;
ii. a warranty or representation that anything made, used,
imported, sold or otherwise disposed of under any license granted hereunder
is or will be free from infringement of any patent rights, foreign or
domestic, or other intellectual property right of any third party;
iii. an obligation to bring or prosecute actions or suits
against third parties for infringement of the Licensed Software or the
Licensed Intellectual Property Rights;
iv. granting by implication, estoppel or otherwise any licenses
or rights under patents or other rights of Siteman or third parties other
than as expressly provided herein, regardless of whether such patents or
other rights are dominant or subordinate to the Licensed Software or any
Licensed Intellectual Property Rights; or
v. obligating iXL to make, use, sell, import, offer for sale or
promote the Licensed Intellectual Property Rights or Licensed Software or
achieve any particular amount of sales or revenues in licensing fees from the
Licensed Intellectual Property Rights or the Licensed Software.
12
15. Limitation of Liability.
a. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR OTHERWISE,
NEITHER PARTY WILL BE LIABLE TO THE OTHER PARTY OR TO ANY OTHER PERSON OR
ENTITY WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY
(I) FOR ANY INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST
PROFITS, LOST BUSINESS OR LOST DATA OR (II) FOR COST OF PROCUREMENT OF
SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES, EVEN IF THE 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.
b. EXCEPT FOR EACH PARTY'S PAYMENT OBLIGATIONS HEREUNDER AND IN THE
ASSET PURCHASE AGREEMENT AND IN THE SERVICES AGREEMENT AND EXCEPT FOR EACH
PARTY'S LIABILITY UNDER SECTION 16 OF THIS AGREEMENT, NEITHER PARTY WILL BE
LIABLE TO THE OTHER PARTY OR TO ANY OTHER PERSON OR ENTITY WITH RESPECT TO
ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT
LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY AMOUNTS IN EXCESS OF ONE
MILLION DOLLARS ($1,000,000).
c. THE LIMITATIONS OF LIABILITY PROVIDED IN THIS SECTION 15 REPRESENT A
FUNDAMENTAL TERM OF THIS AGREEMENT AND EACH PARTY WOULD NOT HAVE ENTERED INTO
THIS AGREEMENT WITHOUT THE INCLUSION OF SUCH TERMS.
16. Indemnification
a. iXL shall defend, indemnify and hold Siteman and its officers,
directors, agents and employees harmless from liability resulting from any
claim relating to (x) iXL's license or sale of the Licensed Software or iXL
Independent Inventions or (y) iXL's provision of any services relating to the
Licensed Software (except for claims relating to the validity or scope of the
Licensed Intellectual Property Rights (except as otherwise provided in the
Asset Purchase Agreement)) or iXL Independent Inventions or (z) any claim
that any Derivative Works infringe any third party patent, copyright, or are
the result of a misappropriation of any trade secret, or infringement of any
other intellectual property right of any third party, provided that: (i) iXL
is promptly notified of any and all threats, claims and proceedings related
thereto, (ii) iXL shall have sole control of the defense and/or settlement
thereof, (iii) Siteman furnishes to iXL, upon request, information available
to Siteman for such defense, and (iv) Siteman provides iXL with reasonable
assistance.
b. iXL shall have no obligation under this Section 16 if and to the
extent that such claim arises from: (i) compliance by iXL with Siteman's
specifications, if any, (ii) modification of the Licensed Software other than
by iXL, or (iii) combination of Licensed Software with products other than
those supplied by iXL, and the alleged infringement or misappropriation
relates to
13
such compliance, modification or combination. iXL shall also not have any
obligation with respect to a claim if it has provided Siteman with changes
that would have avoided the problem and the changes are not fully
implemented. The preceding exclusions do not in any way affect iXL's
liability and indemnification obligations in connection with the assets
acquired by Siteman in the Asset Purchase Agreement.
x. Xxxxxxx shall defend, indemnify and hold iXL and its officers,
directors, agents and employees harmless from liability resulting from any
claim that any Improvements infringe any third party patent, copyright, or
are the result of a misappropriation of any trade secret, or infringement of
any other intellectual property right of any third party, provided that: (i)
Siteman is promptly notified of any and all threats, claims and proceedings
related thereto, (ii) Siteman shall have sole control of the defense and/or
settlement thereof, (iii) iXL furnishes to Siteman, upon request, information
available to iXL for such defense, and (iv) iXL provides Siteman with
reasonable assistance.
x. Xxxxxxx shall have no obligation under this Section 16 and to the
extent that such claim arises from: (i) compliance by Siteman with iXL's
specifications, if any, (ii) modification of the Licensed Software other than
by Siteman, or (iii) combination of an Improvement with products other than
those supplied by Siteman, and the alleged infringement or misappropriation
relates to such compliance, modification or combination. Siteman shall also
not have any obligation with respect to a claim if it has provided iXL with
changes that would have avoided the problem and the changes are not fully
implemented.
17. Relationship of Parties. The parties hereto expressly understand and
agree that each party is (a) an independent contractor in the performance of
each and every part of this Agreement, (b) solely responsible for all of its
employees and agents and its labor costs and expenses arising in connection
therewith, and (c) responsible for and will indemnify the other party from
any and all claims, liabilities, damages, debts, settlements, costs,
attorneys' fees, expenses and liabilities of any type whatsoever that may
arise on account of such party's activities or those of its employees or
agents (including, without limitation, subdistributors), including without
limitation, providing unauthorized representations or warranties (or failing
to effectively disclaim all warranties and liabilities on behalf of the other
party) to customers or breaching any term, representation or warranty of this
Agreement. Neither party is in any manner associated with or otherwise
connected with the actual performance of this Agreement on the part of the
other party, nor with the other party's employment of other persons or
incurring of other expenses. Except as expressly provided herein, neither
party shall have the right to exercise any control whatsoever over the
activities or operations of the other party.
18. Assignment.
a. Neither party may assign any right under this Agreement, and any
purported assignment will be null and void and a breach of this Agreement,
except for the following:
i. Either party may assign some or all of its rights and/or
delegate some or all of its obligations under this Agreement with the express
prior written consent of the other party, which may be granted or withheld in
the other party's sole discretion.
14
ii. Either party may assign all of its rights indivisibly to an
Affiliate. The Affiliate in question must agree in writing to comply with the
assigning party's obligations under, and to be bound by, this Agreement.
iii. Either party may assign all of its rights indivisibly in
connection with a sale or other disposition of (a) substantially all the
assigning party's stock to a single acquiring person or entity or (b)
substantially all the assets of the assigning party's business relating to
the Licensed Software to a single acquiring person or entity. The acquiring
person or entity must agree in writing to comply with the assigning party's
obligations under, and to be bound by, this Agreement.
b. Notwithstanding the foregoing, any of the following occurrences
shall not be deemed an assignment or otherwise in violation of this Section
18 or this Agreement:
i. an occurrence which involves a reorganization or
restructuring of either party or a conversion by either party into another
form of legal entity (such as to or from a limited liability iXL) if following
such occurrence more than fifty percent (50%) of the then outstanding shares
of such party are owned directly or indirectly by all or substantially all of
the individuals or entities who were beneficial owners such party's shares
immediately prior to such occurrence; or
ii. there is a transfer of shares or securities pursuant to a
contractual obligation with an investor, as a result of the exercise of
rights by such investor pursuant to any agreement valid and existing as of
the Effective Date; or
iii. any transactions in the ordinary course of business resulting
from or related to an initial public offering, or the free trade of shares on
any public market.
c. For purposes of this Agreement, restrictions on transferability of
the licenses granted herein do not apply to an assignment pursuant to this
Section 18.
19. General.
a. No Covenant Not to Compete - Except as otherwise provided in the
Asset Purchase Agreement, nothing in this Agreement or any related document
executed by the parties may be construed to prevent either party from
competing against the other party, and either party may create, develop,
improve, invent, discover, use, license, sublicense, offer, assign, transfer,
purchase or acquire any and all software, code, technologies, products and
services now in existence and hereinafter invented.
b. Amendment and Waiver - Except as otherwise expressly provided
herein, any provision of this Agreement may be amended and the observance of
any provision of this Agreement may be waived (either generally or in any
particular instance and either retroactively or prospectively) only with the
written consent of both parties.
15
c. Governing Law and Legal Actions - This Agreement shall be governed
by and construed under the laws of the State of California and the United
States without regard to conflicts of laws provisions thereof. The sole
jurisdiction and venue for actions related to the subject matter hereof shall
be the California state and U.S. federal courts having within their
jurisdiction the location of Siteman's principal place of business. Both
parties consent to the jurisdiction of such courts and agree that process may
be served in the manner provided herein for giving of notices or otherwise as
allowed by California state or U.S. federal law. In any action or proceeding
to enforce rights under this Agreement, the prevailing party shall be
entitled to recover costs and attorneys' fees.
d. Headings - Headings and captions are for convenience only and are
not to be used in the interpretation of this Agreement.
e. Notices - Notices under this Agreement shall be sufficient only if
personally delivered, delivered by a major commercial rapid delivery courier
service with tracking capabilities and costs prepaid, or mailed by certified
or registered mail, return receipt requested and postage prepaid, to a party
at its address first set forth herein or as amended by notice pursuant to
this subsection. If not received sooner, notice by mail shall be deemed
received five (5) days after deposit in the U.S. mails.
f. Severability - If any provision of this Agreement is held to be
illegal or unenforceable, that provision shall be limited or eliminated to
the minimum extent necessary so that this Agreement shall otherwise remain in
full force and effect and enforceable.
g. Remedies - The rights and remedies of a party set forth herein with
respect to failure of the other to comply with the terms and conditions of
this Agreement (including, without limitation, rights of termination of this
Agreement) are not exclusive, the exercise thereof shall not constitute an
election of remedies and the aggrieved party shall in all events be entitled
to seek whatever additional remedies may be available in law or equity.
[CONTINUED ON THE NEXT PAGE]
16
h. Entire Agreement - This Agreement (including all Attachments hereto)
and the Asset Purchase Agreement supersede all proposals, oral or written,
all negotiations, conversations, or discussions between or among parties
relating to the subject matter of this Agreement and all past dealing or
industry custom.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the Effective Date first set forth above.
iXL, INC.
By: /s/ U. Xxxxxxx Xxxxx, Xx.
----------------------------
Name: U. Xxxxxxx Xxxxx, Xx.
----------------------------
Title: Director
----------------------------
SITEMAN, INC.
By: /s/ Xxxx Xxxxxxx
----------------------------
Name: Xxxx Xxxxxxx
----------------------------
Title: President
----------------------------
17
ATTACHMENT A
LICENSED SOFTWARE
SITEMAN CORE MODULE DESCRIPTIONS
SOFTWARE LICENSED BY THIRD PARTIES OR PUBLIC DOMAIN SOFTWARE
3rd Party .jar files
msxml.jar
orotools.jar
voyager2.0.0.jar
osforms library.
SOFTWARE DEVELOPED AND OWNED BY SELLERS
Siteman.jar
/net/siteman/admin/*.class
/net/siteman/container/*.class
/net/siteman/content/*.class
/net/siteman/html/*.class
/net/siteman/publish/*.class
/net/siteman/xdata/*.class
/net/siteman/exporter/*.class
/net/siteman/importer/*.class
/net/siteman/util/*.class
/net/siteman/storage/*.class
/net/siteman/events/*.class
/net/siteman/stats/*.class
/net/siteman/janitor/*.class
/net/siteman/service/*.class
/net/siteman/callback/*.class
/net/siteman/webmdlink/*.class
18
MERCHANTWAVE CORE MODULE DESCRIPTIONS
Software Licensed by Third Parties or Public Domain Software
3rd Party .jars
sybase4.0.jar
jgl3.10.jar
cryptix2.02.jar
Software Developed and Owned by Sellers
MerchantWAVE .jar files.
cwi.jar
cwiservlets.jar
cwidatabase.jar
SOURCE CODE RESPOSITORY -- iXL utilizes a CVS respository to store all the
files necessary to build the application. The MerchantWAVE source code
respository is outlined below. The source code is stored in the /merchantwave
directory and /encanto directory
/merchantwave/source/.../*.java
/merchantwave/database/.../*.qpp
/merchantwave/bin/.../*.class
/encanto/source/.../*.java
/encanto/database/.../*.sql
/merchantwave/server/.../*.ini,*html
/tools/source
/tools/bin
19
ATTACHMENT B
PATENTS AND PATENT APPLICATIONS
-----------------------------------------------------------------------------------------------------------
OWNER APPLICATION STATUS FILING DATE TITLE
NUMBER
-----------------------------------------------------------------------------------------------------------
U.S. 08/719,561 Notice of Allowance issued filed 9/25/96 DYNAMIC GENERATION AND
(iXL Enterprises, 8/4/98 DISPLAY OF CATALOGS
Inc. USPTO acknowledged receipt
of the issue fee on 10/28/98
Issue notification has not
been received
-----------------------------------------------------------------------------------------------------------
20
ATTACHMENT C
COMMISSIONS, ROYALTIES AND PAYMENTS
The parties agree that iXL will sell and/or sublicense the Licensed
Software to Clients under this Agreement on its own behalf and/or on behalf
of Siteman. It is the intent of the parties that, subject to the terms in
this Attachment C, both situations shall be treated the same for the purpose
of determining each party's share of the License Fees generated from iXL's
Sales of Licensed Software. For purposes of this Attachment C and this
Agreement, the term "License Fees" shall be an amount equal to the greater of
(i) Siteman's then applicable published fees for licensing the Licensed
Software or (ii) the amount actually paid by Clients either directly to
Siteman or to iXL for a license or sublicense to use the Licensed Software;
the term "Sales" shall mean all sales by iXL of the Licensed Software to iXL
Clients from the Effective Date through and including December 31, 1999; and
the term "Recurring Revenue" shall mean ongoing revenue (not including
License Fees) in an amount equal to the greater of (a) Siteman's then
applicable published rates or (b) the amount actually paid by Clients either
directly to Siteman or to iXL, for hosting, access and content service fees
relating to the Licensed Software that are derived from Sales closed by iXL
from the Effective Date through and December 31, 1999.
1. SALES ON BEHALF OF SITEMAN.
For all Sales on behalf of Siteman, Siteman will pay to iXL commissions
equal to a percentage of all License Fees actually received by Siteman for
such Sales as follows:
a. [*] percent [*] of such License Fees for cumulative Sales up to and
including [*] Dollars [*]; and
b. [*] percent [*] of such License Fees for cumulative Sales over
[*] Dollars [*].
2. SALES ON BEHALF OF iXL.
For all Sales on behalf of iXL, iXL shall retain commissions equal to a
percentage of all License Fees actually received by iXL for such Sales as
follows:
a. [*] percent [*] of such License Fees for cumulative Sales up to and
including [*] Dollars [*]; and
b. [*] percent [*] of such License Fees for cumulative Sales over
[*] Dollars [*].
After retaining the foregoing commissions in this Paragraph 2, iXL shall
pay all remaining amounts of such License Fees to Siteman as royalties
hereunder.
21
3. RECURRING REVENUES PAID DIRECTLY TO SITEMAN.
For all Recurring Revenues paid by iXL Clients directly to Siteman,
Siteman will pay to iXL commissions equal to a percentage of all such
Recurring Revenues actually received by Siteman for the initial twelve (12)
months of such Recurring Revenue as follows:
a. [*] percent [*] of such Recurring Revenues for cumulative Recurring
Revenues up to and including [*] Dollars [*]; and
b. [*] percent [*] of such Recurring Revenues for cumulative Recurring
Revenues over [*] Dollars [*].
4. RECURRING REVENUES PAID TO iXL.
For all Recurring Revenues paid by Clients to iXL rather than Siteman,
iXL shall retain commissions equal to a percentage of all such Recurring
Revenues actually received by iXL for the initial twelve (12) months of
such Recurring Revenues as follows:
a. [*] percent [*] of such Recurring Revenues for cumulative Recurring
Revenues up to and including [*] Dollars [*]; and
b. [*] percent [*] of such Recurring Revenues for cumulative Recurring
Revenues over [*] Dollars [*].
After retaining the foregoing commissions in this Paragraph 4, iXL shall
pay all remaining amounts of such Recurring Revenues to Siteman as royalties
hereunder.
5. COMMISSIONS TO BE PAID TO iXL'S SALES PERSONNEL FOR SALES AND RECURRING
REVENUES.
a. For iXL sales force personnel who conclude Sales, iXL agrees to pay
such sales force personnel commissions in an amount not less than [*] percent
[*] of the License Fees derived from such Sales.
b. For iXL sales force personnel who conclude sales resulting in
Recurring Revenue, iXL agrees to pay such sales force personnel commissions
in an amount not less than [*] percent [*] of such Recurring Revenues for
the initial twelve (12) months of such Recurring Revenues.
c. iXL agrees to pay the foregoing commissions in subparagraphs 5.a and
5.b above out of the amounts iXL receives from Siteman under Paragraphs 1 and
3 above in this Attachment C or retained by iXL under Paragraphs 2 and 4
above in this Attachment C, as the case may be, in addition to any regular
iXL commissions payable by iXL to its sales personnel for the sale and license
of the Licensed Software or products or services offered by iXL. As part of
this arrangement, iXL and Siteman will also agree on additional collaborative
methods (e.g., training, joint marketing, etc.) to motivate the iXL sales
force to offer, license and sell the Licensed Software.
22
6. OTHER COMMISSIONS.
iXL agrees to pay Siteman a [*] percent [*] finder's fee in connection
with any services provided by iXL to Clients that are referred to iXL by
Siteman (excluding iXL Clients and clients that are or were clients of iXL
prior to such referral). The payment of such finders fee shall be the subject
of a separate agreement between the parties to be negotiated within thirty
(30) days after the Effective Date.
7. MISCELLANEOUS.
a. iXL is not entitled to and has no right to receive or retain any
commissions, royalties or any other payment for (a) any sales of the Licensed
Software by iXL or otherwise that do not constitute Sales (as defined in this
Attachment C) or (b) any recurring revenues derived from any sales of the
Licensed Software by iXL or otherwise that do not constitute Recurring
Revenue (as defined in this Attachment C). To the extent iXL receives any
such payments directly from Clients, it shall immediately transfer such
amounts in full to Siteman.
b. All commissions and royalties payable under this Agreement will be
paid within thirty (30) days after the end of each calendar month in which
the commission or royalty accrued during the term of this Agreement. iXL must
submit an invoice to Siteman for the payment of commissions.
x. Xxxxxxx and iXL will negotiate in good faith and mutually agree upon
ongoing commissions and royalties for Sales after 1999.
23
ATTACHMENT D
iXL Clients Who Paid for a Fully Paid-Up License Prior to the Effective
Date
Endeavor Technologies, Inc. d/b/a WebMD
24
ATTACHMENT E
Dispute Resolution
1. SCOPE OF ARBITRATION. All disputes between iXL and Siteman arising
out of or relating to all royalty disputes and infringement disputes, shall be
resolved by final and binding arbitration conducted in accordance with and
subject to the provisions of the United States Arbitration Act, 9 U.S.C.
Sections 1 ET SEQ., provided, however, that prior to filing a demand for
arbitration, the parties shall attempt to resolve their disputes through
negotiation, and, if the dispute remains unresolved, by non-binding
mediation, as provided in this Attachment E. Any mediator or arbitrator
utilized by the parties under this Agreement must have ten (10) years
experience intellectual property disputes and have experience in the software
and internet industries.
2. MEETING BEFORE ARBITRATION. In the event there is a dispute arising
out of or relating to a payment dispute or infringement dispute, the parties
first shall attempt to resolve the dispute by negotiations between senior
executives of the parties who have authority to settle the controversy. The
disputing party shall give the other party written notice of the dispute.
Within twenty days after receipt of said notice, the receiving party shall
submit a written response to the disputing party. The notice and response
shall include (a) a statement of each party's position and a summary of the
evidence and arguments supporting its position, and (b) the name and title of
the executive who will represent that party. The executives shall meet at a
mutually acceptable time and place within thirty days after the date of
receipt of the disputing party's notice and, after that, as often as they
reasonably deem necessary to exchange relevant information and to attempt to
resolve the dispute. If the matter is not resolved within sixty days after
the receipt of the disputing party's notice, or if the party receiving said
notice will not meet within thirty days, then either party may initiate
mediation of the dispute according to the terms provided below.
3. MEDIATION BEFORE ARBITRATION. In the event the dispute is not
resolved by negotiation as provided in the preceding paragraph, then, prior
to filing a demand for arbitration, either party shall, if it still wishes to
resolve the dispute, refer the dispute to mediation, I.E., an informal,
non-binding conference or conferences between the parties in which a mediator
will seek to guide the parties to a resolution of the dispute. The mediation
shall take place in San Francisco, California, if requested by iXL, and shall
take place in Atlanta, Georgia if requested by Siteman. The mediation shall
be conducted under the auspices of the J.A.M.S./ENDISPUTE "JAMS" office in
the city where the mediation is to be conducted, or, if JAMS has no office in
that city, under the auspices of the JAMS office closest to the city where
the mediation is to be conducted. The parties are free to select any mutually
acceptable mediator from the list provided by such JAMS office. If the
parties cannot agree or have no particular choice of mediator, then a list
and resumes of available mediators will be sent to the parties, each of whom
shall inform JAMS of those mediators who are acceptable, provided that at
least one such mediator shall be designated acceptable. JAMS shall then
select a mediator who is acceptable to both parties. The mediation shall
occur within sixty days after the request for mediation. The fees and costs
of the mediation shall conform to the then current fee schedule at JAMS and,
in the absence of an agreement to the contrary, shall be borne equally by
each party.
25
4. ARBITRATION. If the dispute is not finally resolved within thirty
days after the first day of the mediation, then either party may demand
arbitration by filing a demand for arbitration. The arbitration shall be
conducted under the auspices of JAMS. An arbitration demanded by iXL shall
take place in San Francisco and an arbitration demanded by Siteman shall take
place in Atlanta, Georgia. The arbitration shall be conducted by one
arbitrator mutually agreed upon by iXL and Siteman, under the JAMS
Arbitration Rules and Procedures in effect on the Effective Date of the
Agreement, except that the parties shall have any right to discovery as would
be permitted under the Federal Rules of Civil Procedure for a period of
ninety days following the selection of the arbitrator, and the arbitrator
shall resolve any dispute which arises in connection with such discovery. The
fees and costs of JAMS and the arbitrator shall, in the absence of an
agreement to the contrary, be borne equally by each party. The prevailing
party shall be entitled to an award of costs, expenses and reasonable
attorneys' fees. Judgment upon the award rendered by the arbitrator may be
entered in any court of competent jurisdiction. The award shall not include,
and the arbitrator shall not have the power to award, any damages or relief
which are excluded by the Agreement.
5. EXCLUSION OF REQUEST FOR INTERIM INJUNCTIVE RELIEF. Notwithstanding
this Attachment E, either party may apply to any court of competent
jurisdiction for a temporary restraining order, preliminary injunction or
other interim injunctive relief, as may be necessary to protect such party's
intellectual property rights and confidential and trade secret information.
26
ATTACHMENT F
COMPETITORS OF SITEMAN
"Competitor" means any entity that (a) manufactures, markets, sells,
distributes or operates e-commerce solutions that include substantially the
same functionality as the Licensed Software or (b) is engaged in the business
of the development and maintenance of Web authoring and template tools for
multiple Web site management.
27
