1
EXHIBIT 10.23
DEVELOPMENT AND LICENSE AGREEMENT
THIS DEVELOPMENT AND LICENSE AGREEMENT (the "Agreement") is made as of
15 Jan 96 (the "Effective Date"), between Wink Communications, Inc., a
California corporation with offices at 0000 Xxxxxxxxxx Xxxxx, Xxxxxxx, XX 00000
("Wink") and Scientific-Atlanta, a Georgia corporation having with offices at
Xxx Xxxxxxxxxx Xxxxxxx Xxxxx, Xxxxxxxx, XX 00000 ("S-A").
1. BACKGROUND
A. Wink is a software developer that has been developing a software
protocol for delivering interactive applications synchronized with or
independent of television programs and advertisements. Wink is in the business
of customizing and licensing its software engine (the "Wink Engine TM") that
decodes the protocol and displays the interactive applications overlaid on a
television screen.
B. S-A is a manufacturer of satellite and cable communications
equipment, including analog and digital home communications terminals ("HCTs")
such as those currently designated 8600x, 8600xd and 8600xdi.
C. Wink and S-A desire that Wink develop and grant to S-A the right to
embed a customized version of the Wink Engine on S-A's HCTs to be distributed
worldwide within such HCTs.
The terms of the Agreement are as follows:
2. DEFINITIONS
2.1 "Development Schedule" shall mean the schedule for completion of
the Development Activities set forth in Exhibit A hereto.
2.2 "Exhibit A" shall mean the exhibits attached hereto as Exhibit
A. There shall be one Exhibit A for each S-A Device to which the
Wink Engine is ported.
2.3 "Specifications" shall mean the technical and other
specifications for the Deliverables to be developed by the
parties as described below and in Exhibit A hereto and as set
forth thereafter in Exhibit B hereto.
2.4 "Wink Engine" shall mean Wink's software engine described in
Exhibit C hereto, in machine executable, object code format, as
adapted by Wink, and any and all Updates thereto.
2.5 "Milestone" shall mean each milestone identified in Exhibit A
hereto.
2.6 "Deliverables" shall mean each Deliverable identified in Exhibit
A hereto, to be delivered at the time of each completion of a
Milestone by Wink.
2.7 "Initial Product" shall mean the final release of version 1.0 of
any product and the first version of a New Product (e.g. any
product labeled version x.0).
2.8 "Intellectual Property Rights" shall mean all current and future
worldwide patents and other patent rights, copyrights, mask work
rights, trade secrets, and all other intellectual property
rights, including without limitation all applications and
registrations with respect thereto.
2
2.9 "Licensed Technology" shall mean version 1.0 and any Updates
(version 1.x) of the Wink Engine in object code format, and any
related documentation which Wink may create, in Wink's sole
discretion, for public distribution with Versions 1.0 and 1.x of
the Wink Engine.
2.10 "Subdistributors" shall mean entities authorized by S-A to
distribute the Licensed Technology including, without
limitation, subsidiaries, affiliates, distributors, resellers,
system operators, value-added resellers, dealers or sales
representatives.
2.11 "Update" shall mean a new version of the Wink Engine which
contains Error Corrections or minor new features or
functionality, but which is not a New Product, in each case as
determined in Wink's sole discretion as follows. An Update shall
be designated by a change in the digit or digits to the right of
the decimal point in the version number. In the case of the
version numbers described in Exhibit A hereto, Updates shall be
designated by a change to any one of the digits denoted as
follows (using the letter "x" as a placeholder): 0.xxx
2.12 "New Product" shall mean a software product which contains major
new features or functionality and which Wink offers to its
customers at a separate price, in each case as determined in
Wink's sole discretion as follows. A New Product shall be
designated by a change in the digit or digits to the left of the
decimal point in the version number.
2.13 "S-A Device" shall mean any S-A analog or digital home
communications terminal ("HCT") including those currently
designated as 8600x, 8600xd and 8600xdi or a separate plug-in
device for S-A HCTs (e.g. the Genius card for the 8600x).
2.14 "Combined Product" shall mean an S-A Device containing the Wink
Engine embedded in a ROM or flash ROM chip.
2.15 "Error Correction" shall mean an error correction by Wink to fix
a reproducible programming error resident in the Wink Engine
which prevents the Wink Engine from conforming to the
Specifications, and which is discovered by Wink or S-A and, if
discovered by S-A, reported to Wink with sufficient information
to allow Wink to reproduce and locate such error.
2.16 "Protocol" shall mean Wink's Interactive Communicating
Applications Protocol.
3. DEVELOPMENT, DELIVERY AND ACCEPTANCE
3.1 Development. Wink agrees to port and customize the Licensed
Technology to one S-A's 8600x HCT or plug-in device, as
designated in Exhibit A. Wink also agrees to port the Licensed
Technology to other devices for additional NRE Fees, as set
forth in Exhibit A. Wink agrees to perform such Development
Activities in accordance with the Task Description and
Specifications. In connection therewith, S-A shall (i) assist
Wink in producing the Specifications and (ii) provide other
necessary materials and information, as mutually agreed by the
parties in the Specifications or otherwise. The parties may
agree on additional Development Activities and Task Descriptions
by amending Exhibit A hereto.
3.2 Provision of Software. Hardware and Equipment. S-A shall provide
all hardware, software, and equipment ("Equipment") reasonably
necessary for Wink to duplicate the S-A environment, and all
Equipment that is used to perform the activities in Exhibit A or
in support thereof pursuant to Section 9.2 and not expected to
be used by Wink for porting to devices other than those
described in Exhibit A, to Wink at S-A's cost therefor,
provided, that Wink shall use such Equipment only for the
Development Activities or as otherwise provided for in Section
9.2. A preliminary list of Equipment is included in Exhibit A,
such list shall exclude PCs and Sun workstations, but may
include any such PCs or Sun
-2-
3
workstations that are part of a combined product provided by S-A or by
third parties for development of S-A platforms. The list in Exhibit A
may be updated from time to time by mutual agreement. S-A shall retain
ownership of all such software, hardware and equipment provided to Wink,
and Wink shall return all such software, hardware and equipment to S-A
promptly upon request by S-A; provided that Wink's development and
support obligations under this Section 3.2 and Section 9.2 below shall
terminate to the extent software, hardware or equipment returned to S-A
is required by Wink to fulfill its obligations.
3.3 Modifications. Wink may, upon written approval by S-A in each
instance, which approval shall not be unreasonably withheld,
alter the Specifications commensurate with good faith efforts to
finalize and refine the Deliverables in accordance with S-A's
needs and objective for the Wink Engine.
3.4 Delivery and Acceptance.
3.4.1 Wink shall use all reasonable commercial efforts to
complete each Milestone in accordance with the
Development Schedule. Upon completion of each Milestone,
Wink shall deliver to S-A all applicable Deliverables
for evaluation by S-A pursuant to Section 3.4.2 below.
In the event S-A is late in the performance of its
obligations with respect to Section 3.1 and such delay
affects Wink's obligations hereunder, Wink's performance
of such affected obligations shall be delayed by the
same time period.
3.4.2 Within thirty (30) days after receipt, S-A shall review
and evaluate such Deliverables and shall provide Wink
with a written acceptance of the Deliverables or a
written statement of errors to be corrected. S-A shall
not withhold acceptance of any Deliverable (except the
Specifications and Development Schedule) unless such
Deliverable materially deviates from the Specifications,
and such deviation is documented and promptly reported
to Wink. S-A's failure to provide an acceptance or
statement of errors within such thirty day period (as
applicable) shall be deemed an acceptance of such
Deliverables. When deviations from the Specifications
are identified and confirmed, Wink shall use all
reasonable commercial efforts to correct such
deviations, if any, as soon as commercially reasonable
practicable, and to return a copy of the updated
Deliverables to S-A for review and reevaluation in
accordance with the foregoing procedure. The foregoing
procedure shall be repeated until acceptance by S-A of
the Deliverables or the parties mutually agree to cease
development and terminate this Agreement.
3.5 Transfer of Software. Upon S-A's acceptance of all Deliverables
(other than Specifications and Development Schedule) pertaining
to a particular development project, Wink shall deliver to S-A a
master diskette or other digital storage media (the "Master
Media") containing the Wink Engine for use by S-A in accordance
with the terms of this Agreement, including without limitation
Section 4.
3.6 Delivery Outside of California. Tangible property will not be
delivered within the State of California unless such delivery is
by means of remote telecommunications or unless the parties
hereto are satisfied that such transfer will not incur a sales
or use tax liability. Any attempted transfer contrary to the
terms hereof will be void and of no effect. If the delivery is
made by remote telecommunications, the parties will keep a
detailed contemporaneous log documenting each transmission by
date, time, place, and the individuals responsible for such
transmission.
3.7 Right to Pursue Other Projects. The parties acknowledge and
understand that, independent of the development efforts
hereunder, Wink and S-A each have been and continue to be
actively engaged in research and development in the field, and
in the course of such research and development may have
developed or may hereafter develop similar software to the Wink
Engine; provided that in S-A's case, such similar software shall
be developed without use of, or reference to, materials or
information provided by Wink under this Agreement. In addition,
Wink may develop or modify the Wink Engine for itself or for
others. The parties agree that this Agreement shall not be
construed as (i) prohibiting such independent
-3-
4
research and development, either on their own behalf or under
contract with others, (ii) precluding either party from
developing, acquiring, utilizing or distributing such similar
software without obligation the other party so long as such
research and development or such party do not otherwise breach
the terms of this Agreement or (iii) prohibiting such
development or modification of the Wink Engine by Wink.
4. GRANT OF RIGHTS
4.1 Wink Engine. Subject to the terms and conditions of this
Agreement, Wink grants to S-A a worldwide, non-exclusive,
non-transferable (except as provided in Section 15.3), right and
license, under all of Wink's Intellectual Property Rights in and
to the Licensed Technology, to (a) reproduce and have reproduced
the Licensed Technology, and to use the Protocol as necessary or
useful therefor in conjunction with the use of the Licensed
Technology, solely (i) for the purpose of loading the data into
the memory element of the device (e.g. ROM or flash ROM chip)
containing the Licensed Technology with one unit of an S-A
Device to create the Combined Product or (ii) as necessary in
the course of distribution and support of the Combined Product
as permitted hereunder; and (b) distribute the Licensed
Technology, and to use the Protocol as necessary or useful
therefor in conjunction with the use of the Licensed Technology,
either (i) as part of the Combined Product or (ii) through a
one-time (not including transmission of Updates) transmission of
the Licensed Technology through coaxial cable, satellite
transmission or other electronic transmission to a unit of an
S-A Device which was previously acquired from S-A, for use only
with such previously acquired unit.
S-A's license under subsection 4.1 (b)(ii) is subject to the
conditions that (x) S-A and its Subdistributors shall observe
procedures reasonably acceptable to Wink for monitoring the
distribution of the Licensed Technology, and record retention
and audit procedures mutually agreed in writing by S-A and Wink
prior to any such distribution, in order to permit accurate and
complete counting and to reasonably enforce compliance with the
licenses granted to such Subdistributor of each S-A Devices in
which the Licensed Technology was incorporated, or to which the
Licensed Technology was transmitted, and (y) S-A and its
Subdistributors shall implement measures reasonably acceptable
to Wink, including without limitation encryption, to prevent
interception of transmissions of Licensed Technology by third
parties. Any such monitoring and encryption procedures agreed to
in writing by S-A and Wink shall be deemed reasonable by virtue
of such agreement.
4.2 Have Reproduced. S-A shall have the right to provide the
Licensed Technology to its third party manufacturers for ROM and
flash ROM chips (each a "Submanufacturer", provided that each
such third party manufacturer shall agree in a signed writing
(i) to manufacture Wink Engines and Combined Products only for
S-A's account, (ii) not to sell or distribute Wink Engines and
Combined Products except to S-A, (iii) to keep the Licensed
Technology confidential pursuant to terms and conditions no less
restrictive than the terms and conditions of the parties'
Non-Disclosure Agreement described in Section 11 below and (iv)
that Wink is a third party beneficiary of such agreement and may
enforce such agreement directly against such third party
manufacturer. In the event that S-A desires to provide the
Licensed Technology to a Submanufacturer without also providing
such Submanufacturer with software owned by S-A, S-A's provision
of the Wink Engine to such Submanufacturer shall be subject to
(a) Wink's written approval (not to be unreasonably withheld) of
such Submanufacturer, (b) S-A's assurance that it will use the
same level of care in choosing Submanufacturers for S-A Devices
incorporating the Wink Engine as it does for its other products,
and will take all reasonable steps to prevent unauthorized
disclosure of Wink Confidential Information, (c) S-A's prompt
notification to Wink if S-A knows or believes that a
Submanufacturer has breached the provisions of subsection (i) -
(iv) above.
4.3 Subdistributors. S-A may exercise its distribution rights
hereunder through the use of Subdistributors; provided, that
each Subdistributor must agree in a signed writing, prior to
obtaining the Licensed Technology from S-A, to be bound by all
applicable restrictions on S-A set forth in this Agreement. S-A
shall ensure that Wink is a third party beneficiary of such
agreement and may enforce such agreement
-4-
5
directly against such Subdistributor. S-A shall promptly notify
Wink if S-A has reason to believe that any of S-A's
Subdistributors may not be not abiding by such restrictions. S-A
shall, and shall cooperate with Wink at Wink's request to,
diligently police and enforce such restrictions.
4.4 Proprietary Notices. All copies of the Licensed Technology
reproduced or distributed by S-A shall contain copyright and
other proprietary notices in the same manner in which Wink
incorporates such notices in the Licensed Technology or in any
other manner requested by Wink. Wink's current copyright and
proprietary notices are set forth in Exhibit F. In addition, all
memory devices or other devices that are shipped by S-A which
contain the Wink Engine shall be permanently and legibly marked
with such patent notice as may be permitted or required under
Xxxxx 00, Xxxxxx Xxxxxx Code. In the event marking of the memory
device or other device is not commercially reasonable, S-A shall
permanently and legibly xxxx the S-A Device into which such
memory device is incorporated with such patent notice as may be
permitted or required under Xxxxx 00, Xxxxxx Xxxxxx Code.
4.5 Limitations. S-A shall not modify, prepare derivative works of,
reverse engineer, disassemble, decompile, or otherwise have or
attempt to obtain access to the source code of the Licensed
Technology, except as permitted under the provisions of Sections
10.7.
4.6 Enforcement. S-A shall (i) use commercially reasonable efforts
to ensure that all Submanufacturers abide by the terms of their
written agreements described herein and (ii) keep Wink apprised
of its activities in enforcing such agreements.
4.7 End-User Terms. S-A shall ensure that an end-user license
agreement substantially similar to the agreement attached hereto
as Exhibit E is set forth in the manual for the Combined
Product, in the same form and in the same location as any other
product and/or software protection terms are set forth in such
manual.
4.8 Most Favored Licensee. In the event that Wink grants a license
to a similarly situated third party to distribute or otherwise
copy the Wink Engine (including versions of the Wink Engine
which are ported or otherwise adapted to meet the requirements
of the third party) for royalty payments which are more
favorable to the licensee than those provided to S-A hereunder,
Wink shall promptly notify S-A of such grant and S-A shall have
the right to require that the royalty payments provided for
hereunder be reduced to match those extended to such third
party; provided that S-A adopts all of the terms and conditions
contained in such third party agreement. This Section 4.8 shall
not apply unless such third party agreements are similar in all
material respects, including without limitation, the following:
(i) that the Wink Engine will be incorporated into devices
similar to S-A Devices, (ii) that the third party expects to
grant licenses or distribute a comparable volume of Wink
Engines, (iii) that the third party requires substantially the
same amount of development and maintenance effort on the part of
Wink, (iv) that the third party payments are comparably
structured.
4.9 License by Wink. Without S-A's prior written approval, Wink may
not license, sell or otherwise authorize the use of the Licensed
Technology to any person or entity for use on any S-A Device if
S-A is also offering, or willing to offer, on commercially
reasonable terms a license to the Licensed Technology to such
person or entity for use on such S-A Device. If S-A is not
offering, and is not willing to offer, on commercially
reasonable terms, a license to the Licensed Technology to such
person or entity for use on such S-A Device, Wink may license
the Licensed Technology to such person or entity for use on such
S-A Device only after it has repaid S-A the NRE fees paid by S-A
pursuant to Section 5.1 below for the development of the
Licensed Technology for such S-A Device. Nothing in this Section
4.9 shall prevent Wink from licensing a version of the Wink
Engine for use on any S-A Devices for which the Licensed
Technology has not been previously adopted, provided that (i) no
modification or adaptation of such S-A Device is required by S-A
nor is S-A required to provide any other assistance or support
to Wink or its prospective licensee, and (ii) except as
otherwise required for Wink to perform its obligations under
this
-5-
6
Agreement, nothing in this Agreement grants to Wink any license
or other rights (by implication or otherwise) in any patents,
proprietary information, trade secrets or other intellectual
property of S-A relating to such S-A Device.
5. COMPENSATION
5.1 Non-Recurring Engineering. In consideration of the duties and
obligations of Wink under Xxxxxxx 0, X-X shall pay Wink the
amounts set forth in Exhibit A times set forth in Exhibit A
hereto.
5.2 Per-Copy Royalty. In consideration for the rights and licenses
granted to it under Section 4 above, for each copy of (i) the
Combined Product distributed by S-A or a Subdistributor and (ii)
the Wink Engine transmitted to an S-A Device by S-A or a
Subdistributor for use with a particular unit of an S-A Device,
that is distributed by a Subdistributor pursuant to a agreement
with S-A, S-A shall pay Wink the per-copy royalty set forth in
Exhibit A hereto.
S-A and its Subdistributors shall have no obligation to pay more
than one royalty for any particular unit of an S-A Device or
Combined Product, except as set forth in Section 5.5. In the
event that S-A or a Subdistributor distributes a Combined
Product to an end user for which a royalty is or has been paid
and thereafter accepts a return of the same unit of Combined
Product, S-A or such Subdistributor may redistribute such unit
or a substitute unit of Combined Product to the same End-User
without owing an additional royalty hereunder to Wink. In
addition, S-A shall have no obligation to pay any royalty for
any products which do not incorporate the Wink Engine or any
portion thereof.
5.3 Payments. S-A shall make royalty payments to Wink within
forty-five (45) days after the end of each calendar quarter
during the term hereof, with respect to distributions by S-A in
such calendar quarter. Such payments shall be accompanied by a
written report which details by product and customer, with
respect to the applicable calendar quarter (i) the number of
Combined Products distributed by S-A to Subdistributors, (ii)
the number of copies of the Wink Engine for which a royalty is
due hereunder distributed by S-A and its Subdistributors other
than as part of a Combined Product, (iii) the royalty due Wink
with respect to Combined Products and copies of the Wink Engine
distributed during such calendar quarter, and (iv) the number of
copies of the Licensed Technology (including without limitation
Updates) or Combined Products distributed by S-A or its
Subdistributors for which no royalty is due under the exceptions
to Section 5.2 set forth in Sections 5.5 or 5.6. Subject to the
provisions of Xxxxxxx 0, X-X in its sole discretion shall
determine its marketing strategy with respect to any and all of
its products except as may be expressly set forth herein, and
nothing in this Agreement shall be construed as a
representation, warranty or agreement with respect to the
success of such strategy or a commitment with respect to the
volume of any such products.
5.4 Advance Royalties. S-A shall pay Wink the non-refundable royalty
advances set forth in Exhibit A hereto, at the times set forth
in Exhibit A hereto. All advances paid by SA hereunder shall be
credited against S-A's royalty payments under Section 5.2.
5.5 Distribution Of Updates. S-A shall not incur a royalty with
respect to its or its Subdistributors' distribution of Updates
(as permitted by Section 9.2 hereof) unless (1) such Update is
the first Wink Engine to be distributed to or with a particular
unit of an S-A Device or (2) if this Agreement is amended to
include future versions of the Wink Engine, the version number
of a Wink Engine previously distributed to or with such unit has
a lower digit to the left of the decimal point than does the
subsequently distributed Wink Engine.
5.6 Promotional Units. S-A may distribute a reasonable number of
Combined Products (not to exceed 200 per calendar quarter) as
promotional units, without incurring a royalty therefor to Wink
under the provisions of Section 5.2.
-6-
7
5.7 Currency; Taxes. All payments hereunder shall be in United
States dollars. All payments by S-A shall be made free and clear
of, and without reduction for, any and all taxes, including,
without limitation, sales, use, value added, withholding, or
similar taxes, other than taxes which are imposed by the United
States or any political subdivision thereof based on the net
income of Wink. Any such taxes which are otherwise imposed on
payments to Wink shall be the sole responsibility of S-A;
provided, however, to the extent Wink recoups any such
withholding tax, as a result of actually reducing its United
States income tax liability as a result of a credit for such
withholding tax, S-A shall be allowed to reduce royalties due
Wink for the quarter in which such amounts were so recouped. S-A
shall provide Wink with official receipts issued by the
appropriate taxing authority or such other evidence as is
reasonably requested by Wink to establish that such taxes have
been paid.
5.8 Books and Records: Audit. S-A agrees to maintain, and to require
that each third party who distributes the Wink Engine maintain
and provide to S-A, until two (2) years after the earlier of (i)
the termination of this Agreement or (ii) the last shipment of
the Wink Engine hereunder, complete and current books, records
and accounts regarding all copying and distribution activities
pursuant to this Agreement, the payments due to Wink thereon,
and payments by S-A in accordance with Section 11.5. S-A agrees
to allow Wink or its designee to audit and examine such books,
records and accounts and the Master Media delivered to S-A no
more than once each calendar quarter, during S-A's normal
business hours, to verify the accuracy of the reports and
payments made to Wink under this Section 5. In the event such
audit determines that S-A has not paid for all of the copies of
Combined Products and Wink Engines distributed, S-A agrees to
pay, in addition to any damages to which Wink might be entitled,
the amount of such shortfall plus interest at a rate of one and
one-half percent (1.5%) per month or the highest rate allowed by
law, whichever is lower. The cost of such audit shall be borne
by Wink, provided that if any such audit reveals an underpayment
to Wink of at least five percent (5%), S-A shall reimburse to
Wink its costs of such audit.
6. WARRANTY
6.1 Product Warranty. Wink warrants to S-A that each Initial Product
and any Updates thereto shall function without defects under
ordinary use that cause it not to be in substantial conformance
with the Specifications for a period of eighteen (18) months
after S-A's acceptance of such Initial Product. Wink does not
warrant that the Wink Engines will meet all of S-A's
requirements, except as set forth in the Specifications.
6.2 Defects not Covered by Warranty. Wink's warranty shall not
extend to problems in the Wink Engine that result from: (i)
S-A's failure to implement any Error Corrections or Updates to
the Licensed Technology which are provided by Wink, to the
extent the same are made available to S-A free of charge and
without material degradation in function and/or performance;
(ii) changes to the operating system or environment or S-A
Devices which adversely affect the Wink Engine; (iii) any
alterations of or additions to the Licensed Technology performed
by parties other than Wink or on Wink's behalf, (iv) use of the
Wink Engine in a manner inconsistent with the Specifications;
(v) accident, negligence, or misuse of the Wink Engine by any
party other than Wink personnel; (vi) combination of the Wink
Engine with other products not supplied by Wink (excluding the
S-A hardware device and those third party software or hardware
products which are identified in the Specifications as
compatible with the Wink Engine), which problems do not affect
the Wink Engine standing alone; or (vii) operation of the Wink
Engine outside of environmental specifications. As used in
Subsection 6.2(iii), "on Wink's behalf" shall mean that Wink has
given its written authorization for S-A or a third party to
perform such alterations or additions.
6.3 Exclusive Remedy. Wink's sole obligation and S-A's exclusive
remedy under the above warranty shall be for Wink to use all
commercially reasonable efforts to make Error Corrections to the
Wink Engines to bring them into conformity with Wink's warranty
set forth above, at no to cost to S-A (other than as
-7-
8
provided for in Section 9.4); provided, that Wink shall have no
obligation to correct all errors in the Wink Engine.
6.4 Disclaimer. EXCEPT FOR THE ABOVE EXPRESS LIMITED WARRANTY, WINK
MAKES AND S-A RECEIVES NO WARRANTIES WITH RESPECT TO THE WINK
ENGINE, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, AND WINK
SPECIFICALLY DISCLAIMS ANY IMPLIED WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT OR FITNESS FOR A PARTICULAR PURPOSE.
7. PROPERTY RIGHTS
S-A agrees that prior to, on and after the Effective Date, as between
S-A and Wink, Wink owns and shall own all right, title and interest in (a) the
Licensed Technology and all modifications and derivatives thereof and (b) all
Intellectual Property Rights relating to the design, manufacture, marketing,
operation or service of the Licensed Technology. Except as expressly provided in
Section 4, Wink does not grant to S-A any right, title or interest in the
Licensed Technology, whether by implication, estoppel or otherwise. All property
rights with respect to the Licensed Technology and the Protocol not specifically
granted herein are reserved to Wink.
8. MARKETING; TRADEMARKS AND TRADE NAMES
8.1 Use of Trademarks.
8.1.1 Promotion and Advertising. During the term of this
Agreement, in the event that S-A or its Subdistributors
advertises, promotes or markets the Wink Engine or its
functionality, whether as stand-alone or as part of the
Combined Product or any value-added product
incorporating the Combined Product, S-A shall, and shall
require any Subdistributors that advertise, promote or
market the above to, use the trademarks, marks, trade
names, logos, and other product and company identifiers
of Wink that Wink may adopt, from time to time ("Wink
Trademarks"). Use of the Wink trademarks shall be
consistent with Wink's trademark usage policy which Wink
may adopt from time to time.
8.1.2 Other Uses of Trademarks. S-A has paid no consideration
for the use of the Wink Trademarks as set forth herein.
S-A and its Subdistributors may use trade names, marks
or trademarks in addition to the Wink Trademarks in
connection with the Combined Product. At no time during
or after the term of this Agreement shall S-A register,
attempt to register or cause the registration of any of
the Wink Trademarks other than in Wink's name, at Wink's
specific written request and at Wink's expense, or other
trademarks which give rise to the likelihood of
confusion, except in the event S-A adopts, uses or
acquires a trademark, xxxx or trade name substantially
similar to a Wink Trademark prior to Wink's adoption,
use or acquisition of such Wink Trademark.
8.2 Marketing and Promotion. S-A shall aggressively promote the Wink
technology in its presentations to customers and in its
marketing materials, unless specific evidence exists that the
Wink technology is unsuitable or unmarketable to a particular
customer.
8.3 Wink Markings and User Interface Elements.
8.3.1 Remote Button. S-A shall promote and market, at a
competitive price, remote control(s) that: (a) are for
use with S-A Devices that are capable of hosting the
Wink Engine, (b) contain a dedicated button for enabling
the functionality of the Wink Engine ("Wink Button"),
where the Wink Button shall include a marking chosen by
Wink, on and/or adjacent to the Wink Button, (c) S-A
-8-
9
shall aggressively promote and market remote controls
that include the Wink Button unless specific evidence
exists that the Wink Button is unsuitable or
unmarketable to a particular customer. The location and
size of the button shall be mutually agreed to by the
parties, but such button and its markings shall be as
prominent as buttons and markings for the Menu, Info,
Guide and Select options on any such remote.
8.3.2 Manuals. S-A shall ensure that manuals, or any other
documentation describing functionality, for the S-A
Devices and remotes will contain information on use of
the Wink Engine functionality and Wink copyright and
proprietary notices. The content and location of such
information And notices shall be agreed upon by the
parties, but such information and notices shall be in
the same place, the same size and same prominence as
similar information for other functionality.
8.3.3 Device Specific On screen Information. S-A shall ensure
that: (i) If a S-A Device has a main menu or menu with
similar functionality, a menu item will be reserved for
Wink, which will allow users to access information
regarding the Wink functionality, the content of screen
and name of menu item in menu shall be mutually agreed
upon by the parties; (ii) If a S-A Device has the
capability to display help screens that include
descriptions of box device or remote control
functionality, information regarding Wink functionality
shall be provided, the content and style of such
information shall be mutually agreed to by the parties.
8.3.4 Splash Screens. Subject to Customer approval, Wink shall
have the right to include splash screen that shall be
displayed from time to time and that will contain
information, including without limitations Wink
markings, and copyright and other proprietary right
notices. S-A shall use its best efforts to obtain such
Customer approval and shall allow Wink to negotiate with
any Customer that withholds such approval.
8.4 Proprietary Rights. Except as expressly set forth herein,
nothing herein shall grant to S-A or its Subdistributors any
right, title or interest in the Wink Trademarks. At no time
during or after the term of this Agreement shall S-A or its
Subdistributors challenge or assist others to challenge the Wink
Trademarks or the registration thereof or attempt to register
any trademarks, marks or trade names confusingly similar to
those of Wink.
8.5 Approval of Representations. All representations of Wink's
Trademarks that S-A or its Subdistributors intend to use shall
first be submitted to Wink for approval (which shall not be
unreasonably withheld) of design, color, and other details, or
shall be exact copies of those used by Wink, and shall conform
to any reasonable trademark usage guidelines adopted by Wink and
supplied to S-A. To ensure trademark quality, within a
reasonable time prior to S-A's first commercial shipment of the
Combined Product or any value-added product incorporating the
Combined Product (where the components of the value-added
product affect, in S-A's reasonable discretion, the performance
of the Wink Engine) bearing one or more Wink Trademarks, S-A
shall supply to Wink one such Combined Product or value-added
product for inspection and testing by Wink to ensure that such
Combined Product or value-added product conforms to Wink's
standards of quality for products sold under the Wink
Trademarks. In no event shall S-A commence commercial shipment
of any such Combined Product or other such value-added product
incorporating the Combined Product (except as set forth above)
under the Wink Trademarks without Wink's prior written approval;
provided that if Wink has not approved or disapproved an S-A
request within twenty (20) days of its receipt by Wink, such
request shall be deemed to have been approved.
8.6 Press Releases. The parties intend to cooperate and participate
in public relations programs to promote the Wink Engine and the
relationship between the parties. Appropriate personnel from
each party shall participate in such public relations program.
The parties shall cooperate with respect to and mutually approve
(not to be unreasonably withheld or delayed) all press releases
issued by either party with respect
-9-
10
to this Agreement or the parties' relationship. Such approval is
intended to protect the timing of disclosure of the availability
of the Wink Engine and the Combined Product and of the existence
of the parties' relationship, as well as to ensure proper
references, accurate information and correct proprietary notices
and information. Unless otherwise agreed in writing by the
parties, each press release issued pursuant to this Section 8.4
shall contain: (i) in the body of the release, the name and
location of both parties and a quote from an executive of both
parties; (ii) in a footnote at the end of the release, both
parties' proprietary notices with respect to technology
discussed in the body of the release. Whenever feasible, the
press release shall also include the logo of each party.
8.7 Disclosures of Terms and Relationship. Each party agrees not to
disclose the terms of this Agreement to any third party or use
the other party's name, trademark, or trade name in any
advertising press release, sales promotion or other similar
manner, without the other's written consent in its sole
discretion, except to such party's accountants, attorneys and
other professional advisors, or as required by securities or
other applicable laws. Notwithstanding this paragraph, each
party shall have the right to say the following in private
meetings with customers, prospective customers, or prospective
investors in Wink:
- Scientific-Atlanta and Wink Communications have a
long-term strategic relationship.
- Scientific-Atlanta and Wink Communications are working
together.
- Scientific-Atlanta is licensing Wink's technology.
- Wink Communications is porting the Wink Engine to
Scientific-Atlanta set-tops.
9. TRAINING, SUPPORT AND MAINTENANCE
9.1 Out of Warranty Maintenance. In addition to the support
obligations set forth in Section 6.1, Wink will provide Out of
Warranty Maintenance ("Support") as follows:
9.1.1 Updates. Wink, in its sole discretion, shall release
Updates from time to time. Wink agrees to make
available to S-A, at no charge to S-A, all such Updates
and permit S-A to distribute Updates to its
Subdistributors and Submanufacturers for their use
consistent with this Agreement. S-A shall promptly
notify its Submanufacturers and Subdistributors of the
availability of each Update and, S-A shall require (in
the case of any Submanufacturer) or request (in the case
of any Subdistributor) them to promptly begin using each
such Update in place of the previous version of the
Licensed Technology. S-A shall be solely responsible for
distributing such Updates to its customers.
9.1.2 Other Support. Wink shall make available at prices to be
determined by Wink support service packages that shall
provide for out of warranty error corrections in
addition to the Updates provided by Wink from time to
time ("Support Packages"); provided that the price of
such Support Packages shall not exceed one hundred and
twenty dollars ($120.00) per hour during the initial
term of this Agreement. Wink agrees to make available
Support Packages for the then current and immediately
prior Update (or in the case of the first Update to an
Initial Product, the Initial Product) of the Wink
Engine, and any other Update that Wink, in its sole
discretion, decides to support. Notwithstanding the
above, Support Packages shall include support for all
versions that were released within the last six (6)
months. In the case Wink releases a New Product Wink
shall offer a Support Package that provides out of
warranty error corrections for the last Update of the
previous product (e.g. Wink will support version 1.9
when version 2.0 is released) for at least one year
after the release of the New Product.
9.2 Provision of Hardware, Software and Equipment. The parties
intend that Wink have an environment in which to recreate field
situations, to allow Wink to replicate problems which may occur
in the field and to test solutions for such problems. In order
to facilitate Wink's performance of the support activities
-10-
11
contemplated herein, S-A shall, at its own expense, provide Wink
with all of the hardware, Software and equipment (the
"Equipment") which is reasonably necessary to functionally
replicate a system of the type in which the Wink Engine will
actually be used. The Equipment may comprise some or all of the
same Equipment contemplated in Section 3.2. A preliminary list
of the Equipment is included in Exhibit A hereto, and shall be
updated from time to time by mutual agreement. Upon expiration
or termination of this Agreement, Wink shall return all of the
Equipment to S-A. S-A shall retain ownership of all such
Equipment, and Wink shall use the Equipment only for purposes of
its obligations with respect to this Section and Section 3.2
above. In the event that S-A is late in the performance of its
obligations with respect to this Section 9.2 and such delay
affects Wink's obligations under this section, Wink's
performance of such affected obligations shall be delayed by the
same time period. Wink shall return all such software, hardware
and equipment to S-A promptly upon request by S-A; provided that
Winks development and support obligations under this Section 9.2
and Section 3.2 above shall terminate to the extent software,
hardware or equipment returned to S-A is required by Wink to
fulfill its obligations.
9.3 Training. Wink shall provide, at Winks facilities, a training
class for four (4) S-A employees each time an Initial Product is
released, or at least once per year covering the most current
Update of each Wink Engine developed under this Agreement. In
addition, Wink shall make available training packages to train
S-A and its customers on the Wink Engine and functionality.
Training provided pursuant to such packages shall be at one
thousand dollars ($1000.00) per day, plus travel and expenses in
accordance with Section 9.4 below, and any costs for training
facilities incurred by Wink.
9.4 Travel Requirements. In the event that, in the performance of
its obligations under this Section 9, Section 6.3 or under
Section 3, it is mutually agreed by the parties that Wink
engineering employees or contractors will travel from Wink's
facility, S-A shall pay and/or promptly reimburse Wink for, all
reasonable travel (if by air, coach class), room and board, car
rental and other similar expenses associated with such travel,
which expenses are approved in writing by S-A prior to their
being incurred; provided that Wink shall not be paid and/or
reimbursed for employee or contractor time expended with respect
to such travel. Any such travel expenses approved in writing by
S-A shall be deemed reasonable by virtue of such approval.
Notwithstanding the above, if it is determined that the travel
resulted from support and maintenance for a problem caused by a
deviation of the Licensed Technology from the Specifications,
Wink shall be responsible for all such travel expenses incurred
by Wink.
10. TERM AND TERMINATION
10.1 Term. This Agreement shall commence on the Effective Date and
shall continue in full force and effect for a term of five (5)
years from the first commercial shipment of Combined Product by
S-A The term of this Agreement may be extended by mutual
agreement of the parties.
10.2 Termination for Cause. If either party materially defaults in
the performance of any provision of this Agreement, the
non-defaulting party may give written notice to the defaulting
party that if the default is not cured within thirty (30) days
this Agreement shall be terminated. If the non-defaulting party
gives such notice and the default is not cured within thirty
(30) days, this Agreement shall terminate immediately upon
notice by the non-defaulting party. For the purposes of
determining a material default by Wink based on late or
non-delivery of a Deliverable, Wink shall be presumed to be in
material default of this Agreement if, and only if, it fails to
deliver a Deliverable within one (1) year of the date such
Deliverable is due; provided that S-A has fulfilled its
obligations to provide software, hardware and equipment to Wink
with respect to such Deliverable.
10.3 Termination for Insolvency. This Agreement shall terminate upon
written notice given by a party, at such party's option and
without further notice, upon the earlier of: (i) the institution
by or against the other party of insolvency, receivership or
bankruptcy proceedings or any other proceedings for the
settlement
-11-
12
of the other party's debts, (ii) the other party's making an
assignment for the benefit of its creditors, (iii) the other
party's declaration in writing of its inability to pay debts as
they become due, or (iv) the other party's dissolution or
ceasing to conduct business as a going concern.
10.4 Effect of Termination. Upon the expiration or termination of
this Agreement, the following provisions shall take effect:
10.4.1 Subject to the provisions of Section 10.5, the rights
and licenses granted to S-A under this Agreement shall
automatically terminate, and S-A and its Subdistributors
shall immediately cease all use of the Wink Trademarks;
10.4.2 Any and all sublicenses for end use for the Wink Engine
or S-A Devices granted by S-A or its Subdistributors
shall continue in effect according to their terms and
conditions;
10.4.3 Within ten (10) days after such expiration or
termination, S-A shall return, and shall certify to Wink
the return of, all Master Media and all Wink
Confidential Information in its or its Submanufacturers'
possession at the time of expiration or termination. In
addition, Wink shall return, and shall certify to S-A
the return of, all S-A Confidential Information in its
possession at the time of expiration or termination. S-A
shall not make or retain any Master Media, copies of the
Wink Engines, or any other materials containing
confidential information of Wink entrusted to S-A.
Notwithstanding the foregoing, S-A may (i) maintain a
single copy of the Master Media and (ii) retain any
Confidential Information necessary for support, subject
to the provisions of Section 11, both solely to provide
support to its Subdistributors and to end users in
existence as of the effective date of expiration or
termination; and
10.4.4 S-A shall pay all outstanding amounts owed to Wink
within forty-five (45) days of quarter end. In the event
Wink is performing development tasks for S-A at the time
of any termination, S-A shall also pay to Wink the next
payment due under the Development Schedule; provided
however, that if the Agreement is terminated by S-A
based on a breach by Wink, then S-A shall only be
obligated to pay Wink the portion of the next milestone
that is proportional to the amount of work completed by
Wink for that milestone.
10.4.5 In the event this Agreement is terminated by S-A
pursuant to Section 10.2 above based on a Wink's failure
to deliver a Deliverable within the time period
prescribed in Section 10.2, Wink shall refund any
advance royalty payments made by S-A that have not been
applied against royalties due Wink at the time of such
termination.
10.4.6 The provisions of Sections 6, 7, 10, 11, 12, 13, and 14
shall survive the expiration or termination of this
Agreement for any reason.
10.5 Sell-off Period. In the event of the expiration of this
Agreement or a termination by S-A, S-A may, subject to the
provisions of Section 5 (including without limitation S-A's
obligation to pay royalties in connection with all
distributions) dispose of its inventory of Wink Engines and
Combined Products on hand, for a period not to exceed sixty (60)
days after the effective date of such expiration or termination
(the "Sell-Off Period"), and in connection therewith, S-A shall
use the Wink Trademarks during the Sell-Off Period pursuant to
the provisions of Section 8.
10.6 Destruction of Inventory. Within ten (10) days after (i) the end
of the Sell-Off Period, in the event of the expiration or
termination of this Agreement by S-A or (ii) the effective date
of termination, in the event of a termination by Wink, S-A shall
destroy, and shall certify to Wink the destruction of, all
copies of the Wink Engine in its or its Subdistributors' or
Submanufacturers' possession.
-12-
13
10.7 Source Code Escrow. Upon request of S-A, Wink agrees to put into
escrow a copy of the Licensed Technology in human readable
format ("Source Code"), in detail that is in accordance with the
industry standard for such Source Code. Prior to Wink putting
the Licensed Technology into escrow, the parties shall execute a
source code escrow agreement which contains the provisions
below:
10.7.1 Escrow Account. Within sixty (60) days of the signing of
an source code escrow agreement between S-A, Wink and
Data Securities International ("Escrow Agent"), Wink
agrees to place in an escrow account in California, a
copy of the Source Code. The escrow agreement shall
contain, at a the terms and conditions set forth in this
Section 10.7. S-A shall bear all fees, expenses and
other charges incurred to open and maintain such escrow
account. If S-A does not pay such charges, Wink may
close the escrow account with no further obligation to
S-A under this Section 10.7. Upon commercial release of
Updates to the Licensed Technology, Wink shall add to
the escrow account, any Updates that S-A is licensed to
receive under this Agreement; provided, however, that
Wink shall not be obligated to make deposits into the
escrow account more frequently than twice per year. Wink
shall be allowed to close the escrow account for any
product six (6) months after the release of a new
version of such product that is a New Product. If the
Escrow Agent provides the Source Code to S-A under the
escrow agreement, S-A agrees to hold all materials and
information in the escrow account in confidence pursuant
to Section 10.7.5 and Section 11 below, and not to use
such materials for any purpose other than those purposes
contemplated under Section 10.7.4 below.
10.7.2 Access. The Source Code shall remain under seal and
unopened unless a Release Condition (as defined in
Section 10.7.3 below) occurs.
10.7.3 Release. S-A shall notify Wink in writing if S-A
believes that one of the following events (the "Release
Conditions") has occurred and that it intends to seek
release of the Source Code from the escrow account: (i)
Wink's dissolution or ceasing to do business in the
normal course, or (ii) Wink's breach of its support and
maintenance obligations under Section 9.1 above if such
breach is not cured within forty-five (45) days written
notice by S-A. If Wink notifies S-A in writing that it
disputes whether any such Release Condition has
occurred, officers of each company shall negotiate for a
period of ten (10) business days to attempt to resolve
the dispute. At the end of such ten (10) business day
period, if the parties have not resolved the dispute,
the parties shall refer the matter to arbitration as
provided for in the escrow agreement. If the arbitrator
determines that S-A is entitled to the Source Code, then
Wink shall instruct the Escrow Agent to release the
Source Code to S-A. Under no circumstances shall the
Escrow Agent release the Source Code without
instructions from Wink to do so.
10.7.4 License. Upon the release of the Source Code pursuant to
Section 10.7.3 above, S-A shall have a nonexclusive,
nontransferable, with no right to sublicense, right to
use, with a right to modify and created derivative works
only for the purposes of creating Updates, and without a
right to have modified, the Source Code solely to
support and maintain the Licensed Technology. S-A shall
assign to Wink right, interest and title in any
derivative works created by S-A pursuant to this Section
10.7.4. Subject to the license granted hereunder, Wink
shall retain all copyrights and other proprietary rights
in and to the Source Code. The Source Code and any
derivative works of tile Source Code shall be subject to
the royalty obligations that are contained in this
Agreement with respect to Licensed Technology. S-A shall
have the right to copy the Source Code only to create
backup copies. S-A shall not distribute, sell,
sublicense or otherwise transfer the Source Code to a
third party. S-A's license to the Source Code shall
terminate six (6) months after the release of a new
version of the Wink Engine that is a New Product. Upon
termination, S-A shall destroy, or return to Wink, all
copies of the Source Code.
-13-
14
10.7.5 Security. In addition to the obligations set forth in
Xxxxxxx 00 xxxxx, X-X agrees to use the Source Code
under carefully controlled conditions for the purposes
set forth in this Agreement, and to inform all employees
who are given access to such Source Code by S-A that
such materials are confidential trade secrets of Wink
and are licensed to S-A as such. S-A shall restrict
access to such Source Code to those employees of S-A who
have agreed to be bound by a confidentiality obligation
which incorporates the protections and restrictions
substantially as set forth herein, and who have a need
to know in order to carry out the purposes of this
Agreement. S-A agrees to keep a written record of those
persons accessing such materials and will store such
materials in a locked room with limited access when not
in use. Upon request by Wink, S-A shall provide Wink
with the names of all individuals who have accessed such
materials, and shall take all actions reasonably
required to recover any such materials in the event of
loss or misappropriation, or to otherwise prevent their
unauthorized disclosure or use. S-A shall be fully
responsible for the conduct of all its employees, agents
and representatives who may in any way breach this
Agreement.
11. CONFIDENTIALITY
11.1 Obligation of Confidentiality. The parties acknowledge that by
reason of their relationship to each other hereunder, each may
have access to certain information and materials concerning the
other's business, plans, customers, technology and products that
is confidential and of substantial value to that other party,
which value would be impaired if such information were disclosed
to third parties ("Confidential Information"). Without limiting
the foregoing, Confidential Information shall include the source
code of the Wink Engine. Each party agrees that it shall, not
use in any way, for its own account or the account of any third
party, nor disclose to any third party, except as may be
expressly permitted under this Agreement, any such Confidential
Information revealed to it by the other party and shall take
every reasonable precaution to protect the confidentiality of
such information. Upon request by either party, the other party
shall advise whether or not it considers any particular
information or materials to be confidential, provided that the
Licensed Technology (except for documentation identified by Wink
as public)shall at all times be deemed Confidential Information
of Wink. Neither party shall develop or have developed any
software programs utilizing any of the other party's
Confidential Information.
11.2 Exceptions. Information shall not be deemed Confidential
Information hereunder if such information:
11.2.1 Is or becomes part of the public domain through no fault
or breach on the part of the receiving party;
11.2.2 Is known to the receiving party prior to the disclosure
by the disclosing party and such knowledge can be shown
by written records;
11.2.3 Is subsequently rightfully obtained by the receiving
party from a third party who has the legal right to
disclose it;
11.2.4 Is independently developed by the receiving party
without the use of any Confidential Information or any
breach of this Agreement;
11.2.5 Is approved for public release by the disclosing party;
or
11.2.6 Is required to be disclosed by judicial action provided
that the receiving party has first given the disclosing
party reasonable notice of such requirement and fully
cooperates with the disclosing party in seeking
confidential treatment for any such disclosure.
-14-
15
11.3 Injunctive Relief. The parties acknowledge that any breach of
the provisions of this Section 11 may cause irreparable harm and
significant injury to an extent that may be extremely difficult
to ascertain. Accordingly, each party agrees that each will
have, in addition to any other rights or remedies available to
it at law or in equity, the right to seek injunctive relief to
enjoin any breach or violation of this Section 11.
12. INTELLECTUAL PROPERTY, WARRANTY AND INDEMNITY
12.1 Warranty. Each party represents and warrants that neither the
execution or performance by such party of this Agreement, nor
the consummation of any transactions herein does or will violate
any law, order, regulation or ruling applicable to such party or
its efforts hereunder. In addition, Wink represents and warrants
that (a) as of the Effective Date, no action or proceeding
alleging intellectual property infringement by the Wink Engine
has been threatened or is proceeding against Wink (nor, insofar
as Wink is aware, against any entity from which Wink has
obtained any rights related to the Wink Engine), (b) it has the
right to license the Intellectual Property Rights in and to the
Wink Engine to S-A and (c) the Licensed Technology and the
Trademarks do not infringe any patent in the U.S., or any
copyright, trade secret or trademark. S-A's exclusive remedy,
and Wink's sole liability, for a breach by Wink of the
warranties of subsections (b) and (c) above shall be Winks
indemnity set forth in this Section 12.
12.2 Indemnity. Wink agrees, at its expense, to defend, or at its
option to settle, any claim, suit, action or proceeding brought
against S-A by a third party as a result of Wink's breach of its
warranties under 12.1(b) and (c) above (an "Action"), and to pay
any settlement or final judgment entered thereon against S-A,
subject to the limitations set forth hereafter. Wink shall be
relieved of its obligations hereunder unless S-A gives Wink (i)
prompt written notice upon becoming aware of the existence of an
Action, (ii) sole control over the defense or settlement of the
Action and (iii) reasonable assistance in the defense or
settlement thereof. If it is, or in the opinion of Wink may be,
determined by competent authority that the Licensed Technology
or any part thereof, or the sale, distribution or use thereof as
permitted hereunder infringes any patent, copyright, trade
secret or trademark of a third party or is enjoined, then Wink
at its sole option and expense may (a) procure for S-A the right
under such patent, copyright, trade secret or trademark to use,
reproduce and distribute the Licensed Technology or such part
thereof or such trademark; (b) replace the Licensed Technology
or such part thereof or such trademark with other suitable
software or trademark without material degradation in
performance or functionality; (c) suitably modify the Licensed
Technology or such part thereof or such trademark to avoid
infringement without material degradation in performance or
functionality; or (d) if none of the foregoing are commercially
reasonably feasible, terminate this Agreement in whole or in
part with respect to any country or any version of the Wink
Engine; provided that in such case Wink shall refund to S-A a
portion of royalties paid by S-A on any S-A Devices for which
S-A provides a refund to its customers in any such country or
for any such version of the Wink Engine. The proportion of
royalties to be refunded by Wink on such S-A Devices shall be
equal to the proportion of the original price charged by S-A to
its customers for the Wink Engine that is refunded by S-A to its
customers.
12.3 Limitations. The foregoing indemnity shall not apply to an
Action to the extent it arises out of (i) any modification of
the Licensed Technology by a party other than Wink or on Wink's
behalf, (ii) any combination of the Licensed Technology with
hardware and/or software (including software written using the
Wink Authoring Tool or using the Wink APIs) not supplied by Wink
(except hardware of the S-A Device and except hardware and
software specified in Specifications), or (iii) any trademarks,
trade names or other brandings not supplied by Wink. As used in
Subsection 12.3(i), "on Wink's behalf" shall mean that Wink has
given its written authorization for S-A or a third party to
perform such modifications.
12.4 Disclaimer. THE FOREGOING PROVISIONS OF THIS SECTION 12 STATE
THE ENTIRE LIABILITY AND OBLIGATION (EXPRESS, IMPLIED,
STATUTORY, IN ANY COMMUNICATION
-15-
16
WITH WINK OR OTHERWISE) OF WINK AND THE EXCLUSIVE REMEDY OF S-A
WITH RESPECT TO ANY ALLEGED INFRINGEMENT OF ANY PATENT,
COPYRIGHT, TRADE SECRET, TRADEMARK OR OTHER INTELLECTUAL
PROPERTY RIGHT BY THE WINK ENGINES OR ANY PART THEREOF
12.5 Indemnification Outside the U.S.. In the event that S-A from
time to time provides written notification pursuant to Section
14.6 to Wink of its desire to sell products utilizing the
Licensed Technology in any country other than the United States,
Wink shall, within thirty (30) days after receipt of any such
notice, notify S-A in writing that either (i) it has no
objection to the sale of such products in such country,
whereupon the warranty and indemnification by Wink contained in
Section 12.1 and 12.2. shall thereafter apply to such sale by
S-A, or (ii) that it will pay one-half the cost in the form of a
credit against royalties to be paid on licenses granted by S-A
in such country (but not to exceed a total of $10,000 to be paid
by Wink per country) of obtaining an infringement study or
opinion of patent counsel selected by S-A and approved by Wink,
in which event the warranty and indemnification by Wink
contained Sections in 12.1 and 12.2 shall not apply to such
sales by S-A. Wink shall be a named client of any such patent
counsel, and shall be entitled to all of the protections and
benefits resulting out of any such study or opinion that are
normally afforded to clients in such situations. In the event
S-A licenses the Licensed Technology outside the United States
without first consulting Wink pursuant to this Section 12.5, the
warranty and indemnification by Wink contained Sections in 12.1
and 12.2 shall not apply to such sales by S-A. In the event that
such study or opinion, concludes that there is a significant
risk that sales of the Licensed Technology will infringe a third
party's intellectual property rights in any such country, and
S-A nevertheless sells or licenses the Licensed Technology in
such country, S-A shall indemnify and hold harmless Wink against
third party intellectual property infringement claims based on
such sales or licenses as set forth in Section 13.1 below. If
S-A and Wink disagree as to the conclusion in any such opinion
or report, the disagreement shall be submitted for arbitration
pursuant to the Commercial Arbitration Rules of the American
Arbitration Association.
13. INDEMNITY BY S-A
13.1 Indemnity. Except with respect to any claim, suit, action or
proceeding (a) arising out of any intellectual property
infringement by the Licensed Technology (except as set forth in
(iii) below), or (b) or which is based on the failure of the
Licensed Technology to meet the Specifications, S-A agrees, at
its expense, to defend, or at its option to settle, any claim,
suit, action or proceeding brought against Wink by a third party
arising out of S-A's use of the Licensed Technology or exercise
of the rights and licenses granted hereunder, including, without
limitation: (i) the manufacture, use or sale of the Licensed
Technology or Combined Products, (ii) S-A's or its
Subdistributors' modification, use or distribution of the
Licensed Technology, and to pay any settlement or final judgment
entered thereon against Wink, subject to the limitations set
forth hereafter; or (iii) any claim that sales or licenses of
the Licensed Technology made by S-A infringe a third party's
intellectual property rights in any country in which S-A is
obligated to indemnify Wink pursuant to Section 12.5(ii) above.
S-A shall be relieved of its obligations hereunder unless Wink
gives S-A (i) prompt written notice upon becoming aware of the
existence of any such claim, suit, action or proceeding, (ii)
sole control over the defense or settlement of such claim, suit,
action or proceeding and (iii) reasonable assistance in the
defense or settlement thereof.
13.2 Disclaimer. THE FOREGOING PROVISIONS OF THIS SECTION 13 STATE
THE ENTIRE LIABILITY AND OBLIGATION (EXPRESS, IMPLIED,
STATUTORY, IN ANY COMMUNICATION WITH S-A OR OTHERWISE) OF S-A
AND THE EXCLUSIVE REMEDY OF WINK WITH RESPECT TO ANY CLAIMS
BROUGHT AGAINST WINK ARISING FROM S-A'S USE OF THE LICENSED
TECHNOLOGY OR EXERCISE OF THE RIGHTS AND LICENSES GRANTED TO X-X
XXXXXXXXX.
-00-
00
00. GENERAL
14.1 Governing Law and Jurisdiction. This Agreement shall be governed
by and construed under the laws of the State of California,
without reference to conflict of laws principles.
14.2 Import & Export Controls. S-A understands that Wink is subject
to regulation by agencies of the U.S. government which prohibit
export or diversion of certain products and technology to
certain countries. Any and all obligations of Wink including
without limitation obligations to provide products, technology,
documentation, or technical assistance, will be subject in all
respects to such United States laws and regulations that will
from time to time govern the license and delivery of technology
and products abroad or to foreign nationals by persons subject
to the jurisdiction of the United States. S-A warrants that it
will comply in all respects with the export and reexport
restrictions set forth in any export licenses obtained by the
Wink or S-A (if necessary). S-A warrants that it will not, and
will take all actions which may be reasonably necessary to
assure that its end-user do not, contravene such United States
laws or regulations. Such laws include without limitation:
Export Administration Regulations, 15 C.F.R. 768 et. seq.;
International Traffic in Arms Regulations, 22 C.F.R. 120 et.
seq.; Nuclear Regulatory Commission Export Regulations, 10
C.F.R. 110 et. seq; Department of Energy Export Regulations, 10
C.F.R. 8 10 et. seq.; Treasury Department Antiboycott
Regulations, IRS Code 999; and Office of Foreign Asset Control
Regulations, 31 C.F.R. 500 et. seq.
14.3 No Assignment. This Agreement and any rights or obligations of
S-A or Wink hereunder shall not be assigned by either party
without the prior written consent of the other party, which
consent shall not be unreasonably withheld, except that either
party may assign its rights and obligations hereunder to any
entity (i) which controls, is controlled by or is under common
control with such party or (ii) which acquires all or
substantially all of the assets or business of such party to
which this Agreement pertains, provided in both cases that such
entity shall assume in writing or by operation of law such
party's obligations under this Agreement. Subject to the
foregoing, this Agreement shall be binding upon and inure to the
benefit of the parties hereto and their successors and assigns.
14.4 Independent Contractors. The relationship of the parties
established by this Agreement is that of independent
contractors, and nothing contained in this Agreement shall be
construed to (i) give either party the power to direct and
control the day-to-day activities of the other, (ii) constitute
the parties as partners, joint venturers, co-owners or otherwise
as participants in a joint or common undertaking, or (iii) allow
either party to create or assume any obligation on behalf of the
other party for any purpose whatsoever.
14.5 Compliance with Laws. In exercising its rights under this
license, each party shall fully comply with the requirements of
any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of
rights under this license.
14.6 Notices. All notices under this Agreement shall be in writing
and sent by (i) certified air mail, return receipt requested,
postage prepaid or (ii) commercial courier service. If properly
addressed to or delivered at the address for each party set
forth above, a notice shall be deemed given upon delivery or,
where delivery cannot be effected due to the actions of the
addressee, upon tender.
14.7 Entire Agreement. This Agreement represents the entire agreement
of the parties with respect to the subject matter hereof and
supersedes all prior or contemporaneous agreements,
understandings, proposals and representations by the parties,
including without limitation the memorandum of understanding
between the parties dated August 1, 1995.
14.8 Limitation of Liability. (i) IN NO EVENT SHALL WINK BE LIABLE TO
S-A IN THE AGGREGATE FOR ANY AMOUNT IN EXCESS OF THE AMOUNTS
PAID(AND THE AMOUNTS WHICH HAVE
-17-
18
ACCRUED HEREUNDER BUT HAVE NOT BEEN PAID) BY S-A HEREUNDER AND
(ii) IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR
LOST PROFITS, LOSS OF DATA OR FOR ANY SPECIAL, INCIDENTAL,
CONSEQUENTIAL OR INDIRECT DAMAGES ARISING IN ANY WAY OUT OF THIS
AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY. As
used in this section 14.8, "lost profits" shall not include, in
the case of an infringement of intellectual property rights or
the disclosure of source code, actual damages (including without
limitation entitlement to a reasonable royalty, as measured by
the royalty rate provided for in this Agreement) suffered as a
result of such infringement or disclosure, but shall include any
profits made by an infringer or discloser. THIS LIMITATION SHALL
APPLY EVEN IF SUCH PARTY KNOWS OR HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES AND NOTWITHSTANDING ANY FAILURE OF
ESSENTIAL PURPOSE OF ANY LIMITED REMEDY PROVIDED FOR HEREIN.
14.9 Counterparts. This Agreement may be executed in any number of
counterparts and when so executed and delivered shall have the
same force and effect as though all signatures appeared on one
document.
14.10 Severability. The provisions of this Agreement shall be
severable, and if any provision of this Agreement shall be held
or declared to be illegal, invalid, or unenforceable, such
illegal, invalid or unenforceable provision shall be severed
from this Agreement and the remainder of the Agreement shall
remain in full force and effect, and the parties shall negotiate
a substitute, legal, valid and enforceable provision that most
nearly reflects the parties' intent in entering into this
Agreement.
14.11 Basis of Bargain. Wink and S-A acknowledge and agree that Wink's
entering into this Agreement and the amount of S-A's royalty
hereunder have been done or set in reliance upon the limitations
of liabilities and disclaimers of warranty set forth in this
Agreement, and that the same form an essential basis of the
parties' bargain.
IN WITNESS WHEREOF, the parties by their duly authorized representatives
have entered into this Agreement as of the Effective Date.
WINK COMMUNICATIONS, INC. SCIENTIFIC-ATLANTA
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxxxxx X Xxxxxx
Name: Xxxx X. Xxxxxx Name: Xxxxxxx X. Xxxxxx
Title: VP, Business Development Title: VP/GM Broadband
Technologies
-18-
19
EXHIBIT A-1
DEVELOPMENT OF WINK ENGINE
for 68HC11 to reside on Genius Card
1. Device & Specifications
Wink and S-A agree that Wink shall port the Wink Engine to the 68HC11 to
reside on the S-A Genius Card containing a total of 128K Flash ROM and 128K RAM.
(Final details on memory to be available to Wink still to be determined, but it
is expected to be approximately 108K of Flash.)
The Specifications shall be developed by the parties and accepted by
S-A. Upon S-A's acceptance thereof, the Specifications shall be set forth in
Exhibit B-1 hereto. Any modifications to the accepted Specifications shall be
made only upon the mutual written agreement of the parties.
2. Development Milestones
All dates are relative -- most of them depend on prior milestones'
on-time completion. Any reference to N days after a milestone refers to calendar
days after that milestone.
COMPLETION
MILESTONE DELIVERER DATE
--------- --------- ----
1. Delivery of preliminary specification (revised Wink 12/20/95
statement of work)
2. S-A's comments on preliminary specification S-A 1/31/96
3. Delivery of documents: X-X
- XX / RF-IPPV Processor Interface Spec 11/15/95
- SM Host Interface Spec 1/31/96
- Scrambler RS-485 Interface Spec 1/15/96
- SM10 User Manual 1/15/96
- ISP User Manual 1/15/96
- HEC User Manual 1/15/96
- 8600x Low-Level API Spoec (Wink has draft) 1/31/96
- File format for WSM in HEC 1/15/96
4. Delivery of hardware, software (+ licenses & docs S-A
for each):
- 3 development 8600x settops (pre-assembled) 1/15/96
- 3 ICE units 2/14/96
- 3 copies of development software 2/07/96
- 3 Genius cards 2/28/96
----------
(1) Specific development software (complier, including linker and
assembler) to be chosen by Wink, and Wink will arrange delivery to its own
office. It is listed as an item to be delivered by S-A because, as with all
other items to be delivered by S-A listed in Exhibit A-1, the development
software and its delivery shall be paid for by S-A. For the development software
and its delivery, such payment by S-A shall be in the form of prompt
reimbursement to Wink by S-A up to a maximum of $10,000.
-19-
20
COMPLETION
MILESTONE DELIVERER DATE
--------- --------- ----
5. Support for #4: one day of on-site time at Wink's S-A 2/29/96
facilities by settop box developer to
train/demonstrate development software on development
settops
6. Delivery of development schedule Wink 3/29/96
7. Delivery of head-end equipment, licenses, support Wink 2/12/96
(after Wink's move to new office, no schedule
for 1/27-28):
- SM 10/20 (incl. diagnostic modem)
- Head End Controller (HEC)
- Information Services Provider (ISP)
- 6 Scramblers (8656x)
- 6 agile modulators
- 5 8600X devices with Genius card slot-RF
Processor
- all documentation (eg, user & admin. manuals) and
licenses re the above
- on-site visit by support person for as long as needed
to get the headend installed and Wink personnel
trained in its use & maintenance
8. S-A's comments on development schedule delivered to Wink S-A 4/12/96
* 9. Delivery of final specification, revised development schedule Wink 5/31/96
and revised milestones
10. Delivery of 5 Genius cards for development & testing S-A 6/03/96
11. Signing of documents in #9 or statement of specific concerns S-A 6/14/96
* 12. Delivery of alpha release of Wink Engine Version 1.0 Wink 9/23/926(2)
13. Delivery of beta release of Wink Engine Version 1.0 Wink 11/18/96(2)
14. Delivery of final release of Wink Engine Version 1.0 Wink 1/24/927(2)
* 15. Acceptance of final release of Wink Engine Version 1.0 S-A 2/24/97
*Payments due upon this milestone (other payments also due upon milestones not
listed above). See Sections 4 & 5 below for more information.
3. Per Copy Royalty:
[*]
4. Royalty Advances:
[*] Taking into account S-A's concerns regarding attaching payments to
milestones, Wink and S-A hereby agree to amend the assignment of payments under
the Memorandum of Understanding such that the following payments are
--------
(2) Estimated date. Wink cannot commit to a date for this milestone
until Wink's engineers have had 30 days to evaluate working settop hardware
(i.e., until Milestone #6).
* Confidential treatment has been requested with respect to certain
portions of this exhibit pursuant to a request for confidential treatment filed
with the Securities and Exchange Commission. Omitted portions have been filed
with the Commission.
-20-
21
due upon the following events, rather than those events described in the
Memorandum of Understanding concerning the porting of the Wink Engine for use
with PowerTV residing on a Genius card:
ADVANCE AMT.
EVENT (US DOLLARS)
Signing of Memorandum of Understanding [*] (paid)
Delivery of Alpha release of Wink Engine [*] (not yet paid)
(Version 1.0)
S-A's Acceptance of Licensed Technology [*] (not yet paid)
5. NREs. In addition to the amount set forth above, S-A shall pay a
non-refundable NRE fee as follows:
ADVANCE AMT.
EVENT (US DOLLARS)
November 1, 1995 [*] (not yet paid)
Signing of Contract [*] (not yet paid)
Acceptance of final specifications [*] (not yet paid)
and revised development
schedule & milestones, by S-A
The sooner of (a) demonstration of 68HC 11 [*] (not yet paid)
Wink Engine software at National Cable Show in
May 1996 or (b) delivery of alpha release of
Wink Engine Version 1.0
S-A's Acceptance of Licensed Technology [*] (not yet paid)
Wink and S-A will also mutually agree upon reasonable NRE Fees for
localization of the customized Licensed Technology for non-U.S. markets.
WINK COMMUNICATIONS, INC. SCIENTIFIC-ATLANTA
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxxx
Name: Xxxx X. Xxxxxx Name: Xxxxxxx X. Xxxxxx
Title: VP, Business Development Title: VP/GM Broadband Technologies
Date: 15 Jan 96 Date:
----------------------------
-21-
22
EXHIBIT A-2
DEVELOPMENT OF WINK ENGINE
for PowerTV to reside on Genius Card
1. Device & Specifications
Wink and S-A agree that Wink shall port the Wink Engine to the PowerTV
operating system to reside on the S-A Genius Card containing 68000 and PowerTV
operating system in ROM, and a total of 512K FlashROM and 512K RAM. (Final
details on memory to be available to Wink still to be determined.)
The Specifications shall be developed by the parties and accepted by
S-A. Upon S-A's acceptance thereof, the Specifications shall be set forth in
Exhibit B-2 hereto. Any modifications to the accepted Specifications shall be
made only upon the mutual written agreement of the parties.
2. Development Milestones
COMPLETION
MILESTONE DELIVERER DATE
(All milestones for PowerTV Wink Engine are TBD.)
3. Per Copy Royalty:
[ * ]
4. NREs. S-A shall pay a non-refundable NRE fee
as follows:
ADVANCE AMT.
EVENT (US DOLLARS)
Signing of Memorandum of Understanding [*] (paid)
Acceptance of final specifications and [*] (not yet paid)
revised development schedule & milestones
by S-A
Delivery of alpha release of Wink Engine [*] (not yet paid)
Version 1.0
S-A's Acceptance of Licensed Technology [*] (not yet paid)
Wink and S-A will also mutually agree upon reasonable NRE Fees for
localization of the customized Licensed Technology for non-U.S. markets.
-22-
23
WINK COMMUNICATIONS, INC. SCIENTIFIC-ATLANTA
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxxx
Name: Xxxx X. Xxxxxx Name: Xxxxxxx X. Xxxxxx
Title: VP, BUSINESS DEVELOPMENT Title: VP/GM Broadband Technologies
Date: 15 Jan 1996 Date:
---------------------------
-23-
24
EXHIBIT B
SPECIFICATIONS
-24-
25
EXHIBIT C
SOFTWARE PROGRAM
A platform- and user interface-independent software engine that implements
Wink's Interactive Communicating Applications Protocol ("ICAP") for the
interpretation of interactive graphical applications.
Under the terms of this Agreement, the above engine will be version 1.0 of the
Wink Engine which will be adapted for use with certain S-A Devices described in
this Agreement. All references to the Wink Engine in this Agreement shall refer
to the adapted version of the above engine.
-25-
26
EXHIBIT D
SAMPLE WINK TRADEMARK
[see attached page]
-26-
27
EXHIBIT E
END USER LICENSE AGREEMENT
Use of the PowerTV(TM) operating system software and other firmware
("the Software") that operates with your 8600xDI-3 Rome Communications Terminal
("HCT") provided to you by your service provider is subject to the license terms
found on this label and in your Operator's Manual.
READ THE TERMS AND CONDITIONS OF THIS LICENSE AGREEMENT CAREFULLY BEFORE
REMOVING THIS LABEL. THE SOFTWARE IS OWNED BY SCIENTIFIC-ATLANTA, INC. AND ITS
SUPPLIERS AND IS COPYRIGHTED AND LICENSED TO YOU (NOT SOLD). BY REMOVING THE
LABEL, YOU ARE ACCEPTING AND AGREEING TO THESE LICENSE TERMS. IF YOU ARE NOT
WILLING TO BE BOUND BY THE TERMS OF THIS LICENSE AGREEMENT, YOU SHOULD CALL YOUR
SERVICE PROVIDER AND ASK FOR THE REMOVAL OF YOUR HCT. THIS LICENSE AGREEMENT
REPRESENTS THE ENTIRE AGREEMENT CONCERNING THE SOFTWARE BETWEEN YOU AND
SCIENTIFIC-ATLANTA.
You have the nonexclusive revocable right to use the Software only with
the HCT that was supplied to you by your service provider. This License
Agreement does not convey to you any interest in or to the Software.
You may not copy, sublicense, modify, reverse engineer, decompile, or
disassemble (except to the extent applicable laws specifically prohibit such
restriction) the Software, in whole or in part, or disclose any of the Software
to third parties. You may not transfer the Software or your license separately
from the HCT on which it operates. If you do any of these acts, your license and
right to use the Software is automatically terminated.
The Software remains the property of Scientific-Atlanta and its
suppliers. You will not remove any copyright notice from the Software and agree
to prevent any unauthorized copying of the Software.
THIS LICENSE AGREEMENT IS EFFECTIVE WHEN YOU REMOVE THIS LABEL FROM THE
HCT AND SHALL CONTINUE UNTIL TERMINATED. You may terminate this License
Agreement at any time by returning the HCT to your service provider.
Scientific-Atlanta may terminate this License Agreement upon the breach by you
of any term. On such termination by Scientific-Atlanta, you agree to return the
HCT and Software to your service provider.
Scientific-Atlanta does not warrant that the Software is error free or
will operate in an uninterrupted manner. Scientific-Atlanta's cumulative
liability to you or any other party for any loss or damages resulting from any
claims, demands, or actions arising out of or relating to this License Agreement
shall not exceed the installation fee paid for the HCT and the Software.
SCIENTIFIC-ATLANTA MAKES NO WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT.
SCIENTIFIC-ATLANTA SHALL NOT BE LIABLE TO YOU FOR ANY INDIRECT, SPECIAL,
INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR EXEMPLARY DAMAGES HOWEVER BASED ARISING
OUT OF OR IN CONNECTION WITH THIS LICENSE OR ANY ACTS OR OMISSIONS ASSOCIATED
THEREWITH OR RELATING TO THE USE OF THE SOFTWARE OR HCT. SOME STATES DO NOT
ALLOW THE LIMITATION OR EXCLUSION OF LIABILITY FOR INCIDENTAL OR CONSEQUENTIAL
DAMAGES, SO THE ABOVE LIMITATION OR EXCLUSION MAY NOT APPLY TO YOU.
This License Agreement shall be construed and governed in accordance
with the laws of the State of Georgia exclusive of its choice of laws
provisions. Should any term of this License Agreement be void or unenforceable,
the remaining terms shall still be valid. Failure of either party to enforce any
rights granted in this license or to take action against the other shall not be
deemed a waiver as to subsequent enforcement of rights or subsequent actions for
future breaches.
-27-
28
Use, duplication or disclosure of the Wink Engine component of the
Software by the U.S. Government is subject to "Restricted Rights", as that term
is defined in the Department of Defense ("DOD") Supplement to the Federal
Acquisition Regulations ("DFARS") in paragraph 252.227-7013(c)(1) if to the DOD,
or, if the Wink Engine is supplied to any unit or agency of the U.S. Government
other than DOD, the Government's rights in Wink Engine will be as defined in
paragraph 52.227-19(c)(2) of the Federal Acquisition Regulations ("FAR").
Contractor: Wink Communications, 0000 Xxxxxxxxxx Xxxxx, Xxxxxxx, XX 00000.
-28-
29
EXHIBIT F
PROPRIETARY NOTICES
1. Screens displayed to the End-Users from time to time shall contain, at a
minimum, the following:
Copyright 199 , Wink Communications, Inc.
--
Patents No. [Need to insert patent numbers]
------------------------
2. Memory devices containing the Licensed Technology shall be marked with, at a
minimum, the following:
Patents No. [Need to insert patent numbers]
---------------------------
3. Wink, the Wink eye and "i" shall be marked with either "Registered in U.S.
Patent and Trademark Office" or with the letter R enclosed within a circle.
-29-
30
AMENDMENT NO. 1 TO DEVELOPMENT AND LICENSE AGREEMENT
THIS AMENDMENT NO. 1 TO DEVELOPMENT AND LICENSE AGREEMENT ("Amendment")
is made and entered into as of this 27th day of January, 1998, by and between
WINK COMMUNICATIONS, INC., a California corporation with offices at 0000
Xxxxxxxxxx Xxxxx, Xxxxxxx, XX 00000 ("Wink"), and SCIENTIFIC-ATLANTA, INC. a
Georgia corporation with offices at Xxx Xxxxxxxxxx Xxxxxxx Xxxxx, Xxxxxxxx, XX
00000 ("S-A").
WITNESSETH:
WHEREAS, Wink and S-A executed a Development and License Agreement dated
as of January 15, 1996 (the "Development Agreement"); and
WHEREAS, Wink and S-A desire to amend the Development Agreement;
NOW, THEREFORE, in consideration of the premises and the mutual promises
and agreements contained herein, the parties hereto, intending to be legally
bound, hereby agree as follows:
1. Section 11 of the Development Agreement is hereby amended and
restated to read in its entirety as follows:
"11. CONFIDENTIALITY
11.1 Obligation of Confidentiality. The parties acknowledge
that by reason of their relationship to each other
hereunder, they anticipate that each may have access to
certain information and materials concerning the other's
business, plans, customers, technology and products that
may be considered proprietary and/or confidential and of
substantial value to that other party, which value would
be impaired if such information were improperly used or
disclosed to third parties. The use and disclosure of
such information is subject to the provisions of this
Section 11.
11.2 Definition of "Information", "Proprietary Information"
and "Confidential Information". For purposes of this
Agreement, (i) "Information" means any communications,
materials or data in any form, including, but not
limited to, oral, written, graphic or electronic forms,
which includes designs, drawings, specifications, or
business, marketing, product performance or technical
information, relating to the products or services of
either party; (ii) "Proprietary Information" means
information which has been developed, and is owned, by
the disclosing party (the "Disclosing Party") regarding
the design, specifications or product performance of, or
other technical information concerning, the products or
services of the Disclosing Party; and (iii)
"Confidential Information" means Information which,
although not necessarily developed or owned by the
Disclosing Party, the Disclosing Party wishes to be
treated by the receiving party (the "Receiving Party")
as confidential. Both Proprietary Information and
Confidential Information must be clearly identified as
such by the Disclosing Party prior to disclosure. In the
case of written material, the Disclosing Party must
prominently label it either "PROPRIETARY INFORMATION" or
"CONFIDENTIAL INFORMATION." In the case of material
presented orally, the Disclosing Party must give advance
notification that such information will be disclosed
(including a general non-confidential and
non-proprietary description of the nature of the
information to be disclosed) and should be treated by
the Receiving Party as either "PROPRIETARY" or
"CONFIDENTIAL." In addition, the Disclosing Party must
confirm the disclosure in writing within thirty (30)
days following oral disclosure, specifically identifying
the material that the Disclosing Party deems to be
either Proprietary Information or Confidential
Information.
-30-
31
It is acknowledged by the parties that Information
furnished by Wink to S-A prior to January 27, 1998 may
not have been properly marked as provided in the
preceding paragraph. Therefore, it is agreed that such
Information shall be categorized as set forth on
Schedule 11.2 attached to and incorporated in this
Agreement regardless of the marking on, or failure to
xxxx, such Information. Any Information delivered by
Wink to S-A which is not described on Schedule 11.2
shall not be deemed to be, and shall not be treated as,
either Proprietary Information or Confidential
Information.
11.3 Use of Information. A Receiving Party may use
Proprietary Information of a Disclosing Party only for
the purposes contemplated under this Agreement, or as
otherwise authorized by the Disclosing Party. A party
may use Confidential Information for any purpose, but
must maintain the confidentiality of such Information as
provided in Section 11.4.
11.4 Duty of Protection. For a period of three years from the
date of disclosure, a Receiving Party must protect
Proprietary Information and Confidential Information
disclosed to it by using the same degree of care, but
not less than a reasonable degree of care, to prevent
the unauthorized disclosure, dissemination or
publication of the Information as the Receiving Party
uses to protect its own Proprietary Information or
Confidential Information of a like nature. Each party
agrees to permit disclosure of the Proprietary
Information and Confidential Information only to those
of its employees who have a "need to know," and to those
third parties authorized to received such Information
under this Agreement (or otherwise authorized by the
Disclosing Party to receive such Information).
11.5 Exceptions. Information will not be deemed either
Proprietary Information or Confidential Information
under this Agreement if such information (a) is or
becomes generally available to the public or otherwise
part of the public domain through no fault or breach on
the part of the Receiving Party; (b) is known to the
Receiving Party prior to the disclosure by the
Disclosing Party and such knowledge can be shown by
adequate evidence; (c) is subsequently rightfully
obtained by the Receiving Party from a third party who
has the legal right to disclose it; (d) is independently
developed by the Receiving Party without the use of any
Proprietary Information or any breach of this Agreement;
(e) is approved for public release by the Disclosing
Party; (f) is disclosed by the Receiving Party with the
Disclosing Party's prior written approval; or (g) is
required to be disclosed by judicial action, provided
that the Receiving Party has first given the Disclosing
Party reasonable notice of such requirement and
cooperates with the Disclosing Party in seeking
confidential treatment for any such disclosure.
11.6 Injunctive Relief. The parties acknowledge that any
breach of the provisions of this Section 11 may cause
irreparable harm and significant injury to an extent
that may be extremely difficult to ascertain.
Accordingly, each party agrees that each will have, in
addition to any other rights or remedies available to it
at law or in equity, the right to seek injunctive relief
to enjoin any breach or violation of this Section 11.
11.7 Determination of Classification of Information. If a
Disclosing Party marks or otherwise identifies
Information as "PROPRIETARY" or "CONFIDENTIAL", and the
Receiving Party disagrees with such designation, the
Receiving Party shall immediately return such
Information to the Disclosing Party and the parties
shall attempt to resolve the proper designation of such
Information through mutual agreement. If the parties are
unable to reach agreement, either party may submit the
issue for determination by a single arbitrator to be
selected by the American Arbitration Association
("AAA"), which arbitrator shall be skilled and
experienced in matters of intellectual property similar
to the Information at issue. The arbitration shall be
conducted under the Commercial Arbitration Rules of the
AAA, and the decision of the arbitrator shall be
appealable to and reviewable by any court of competent
jurisdiction. Failure of a Receiving
-31-
32
Party to object to any designation of Information as
"Proprietary" or "Confidential" upon receipt of such
Information or at any particular time thereafter shall
not be deemed a waiver of such objection nor be
evidence, or create any presumption, that such
Information was correctly designated."
2. Section 3.7 of the Development Agreement is hereby amended and
restated to read in its entirety as follows:
"3.7 Right to Pursue Other Projects. The parties acknowledge
and understand that, independent of the development
efforts hereunder, Wink and S-A each have been and
continue to be actively engaged in research and
development in the field of interactive television
applications, and in the course of such research and
development may have developed or may hereafter develop
similar and competing products. Such products shall be
developed without use of, or reference to, Proprietary
Information of the other party. The parties agree that
this Agreement shall not be construed as (i) prohibiting
such independent research and development, either on
their own behalf or under contract with others, or (ii)
precluding either party from developing, acquiring,
utilizing or distributing such similar and competing
products without obligation to the other party so long
as such research and development of such party does not
otherwise breach the terms of this Agreement.
3. Exhibits. The parties may amend, supplement and add Exhibits to the
Agreement from time to time as mutually agreed, and such amended and
supplemental Exhibits shall be executed by both parties. The parties shall
replace the existing Exhibits A-1 and A-2 and complete and add Exhibit B. Until
such time as such amended and completed Exhibits X-0, X-0 and B are executed,
the parties waive any breach arising out of the failure of either party to meet
the milestones set forth in the existing Exhibits. The parties covenant and
agree to continue to use reasonable efforts to complete Exhibit B and the
revisions to Exhibits A-1 and A-2.
4. Waiver. Each party hereby waives any breach arising out of or
relating to any failure by the other party to perform any of its obligations
through the date of this Amendment under Sections 3.1, 3.2, 3.4, 3.7 (other than
its obligations under Section 3.7 as amended and restated by this Amendment),
5.1, 5.4 and Section 11 (other than its obligations under Section 11 as amended
and restated by this Amendment) of the Agreement, and Exhibits X-0, X-0 and B
thereto.
5. Binding Effect. This Amendment inures to the benefit of, and is
binding upon, Wink and its respective successors and assigns, and S-A, and its
respective successors and assigns.
6. Entire Agreement. This Amendment is intended by the parties hereto to
amend and supplement the Development Agreement and, except as otherwise stated
herein, the Development Agreement shall remain in full force and effect
according to its terms.
7. Governing Law. This Amendment shall be deemed to be made in, and in
all respects shall be interpreted, construed, and governed by and in accordance
with, the laws of the State of California. No provision of this Amendment shall
be construed against or interpreted to the disadvantage of any party hereto by
any court or other governmental or judicial authority or by any board of
arbitrators by reason of such party or its counsel having or being deemed to
have structured or drafted such provision.
8. Headings. The section and paragraph headings contained in this
Amendment are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Amendment.
9. Counterparts. This Amendment may be executed in two or more
counterparts, each of which shall be deemed to be an original but all of which
together shall constitute one and the same instrument.
-32-
33
IN WITNESS WHEREOF, the parties hereto have executed this Amendment as
of the date first above written.
WINK COMMUNICATIONS, INC.
By: /s/ Xxxxxx Xxxxxxxxxxx
SCIENTIFIC-ATLANTA, INC.
By: /s/ Xxxxxxx Necessary
-33-
34
SCHEDULE 11.2
Documents that contain Wink Proprietary Information
- Wink Release Notes on Functionality of the Wink Engine
- ICAP Protocol Specification, including Wink Service Map details
- 8600x Work Items (document provided during 8/8/97 project review meeting)
- Wink Engine Source Code
Documents that Contain Wink Confidential Information
- Wink Engine Object code and Executable Code
- Wink test Lists and Test Apps
- Spreadsheets containing Wink Business Models
- Architecture Proposal: S-A Gateway Options
- Wink Studio users Guide
- Meeting notes containing Wink-specific capabilities including Joint Meeting
Notes: October 16-17, 1997
- Wink Bugs Databases
- E-mails, faxes, written notes, and other documents containing system
diagrams with Wink components
- Wink product development schedules and future plans
- Functional Specification (Draft): Response Return Path for Wink Engine on
8600x w/Genius Card
- ICAP Protocol Overview
- Presentations containing Wink strategies, proposals, future features,
and system diagrams containing Wink
Components
-34-
