MARKETING LICENSE AGREEMENT
THIS MARKETING LICENSE AGREEMENT (this "Agreement"), dated as of the __
day of February 1999, is by and between Summus, LTD. ("LTD"), a Missouri
corporation, and High Speed Net Solutions, Inc. (formerly known as xxxx.xxx,
inc.) ("HSNS"), a Florida corporation;
WHEREAS, LTD owns certain computer software programs and related
documentation;
WHEREAS, pursuant to the terms of a Letter Agreement dated January 14,
1999 (the "Letter Agreement") among LTD, Summus Technologies, Inc., a Delaware
corporation, HSNS, and Xxxx Xxxxxxxx, LTD has agreed to grant certain rights, as
hereinafter described, to market, distribute, and license such programs and
related documentation;
WHEREAS, HSNS further desires to receive such rights to such programs
and their related documentation from LTD;
NOW, THEREFORE, in consideration of the mutual covenants herein
contained, LTD and HSNS, intending to be legally bound by the provisions hereof,
hereby agree as follows:
1. DEFINITIONS. Except as indicated herein, capitalized terms contained
herein shall have the meanings contained in Appendix A hereto.
2. RIGHTS; RESTRICTIONS AND REFUSAL RIGHTS.
2.1 LTD hereby grants to HSNS (but to HSNS only and not to any
affiliates of HSNS), and HSNS accepts from LTD, subject to the
terms and conditions set forth herein, the following license
and marketing rights to the Products (the "Rights") in the
Territory:
(a) the exclusive right to market and license the
streaming product as identified on Exhibit A hereto
(including Revisions, Enhancements and Upgrades) (the
"Streaming Product"), except for the Government
Sector. LTD will also have the right to market the
Streaming Product in the OEM market. LTD retains the
exclusive rights to sell the Streaming Product in the
Government Sector.
(b) HSNS shall have the exclusive worldwide direct
response ("DR") rights in and to the existing
Products, and a right of first refusal for the DR
rights in and to newly developed Products of LTD on
mutually agreed upon terms, under any and all names
and trademarks, in the following channels of
distribution: direct mail, print (not including
catalogues or image or two-step advertising in trade
magazines), DR television and radio, multi-level
(a/k/a network marketing) and syndication. The
Products cannot be sold in the channels and
vertical markets where HSNS has exclusivity under
this Section 2.1(b), bundled or unbundled, through
the specified exclusive means and methods. This shall
not prohibit a third party OEM manfufacturer from
promoting the attributes of the Products in any form
of advertising promoting the sale of the third
party's items in which LTD's products are embedded,
such as QuickTime. All sales to the Government
Sector are outside the scope of this Agreement,
however, any contract with the government shall
prohibit the government, directly or indirectly, from
making same or similar Product(s) available through
DR means and/or retail.
(c) a non-exclusive license to market and license the
other Products, including newly developed Products,
of LTD.
2.2 In connection with the Rights granted hereunder, HSNS has the
right to:
(a) Demonstrate and promote the Products to prospective
End Users pursuant to the terms herein. The Products
and Documentation may not be provided to any
prospective End User (for evaluation, use, or any
other purpose) except pursuant to a License
Agreement, provided that limited copies of the
Products and Documentation may, as necessary, be
provided to prospective End Users for evaluation or
trial use pursuant to a form of agreement containing
provisions acceptable to LTD for confidentiality,
ownership and protection of intellectual property
rights; limitation of liability; restrictions on use;
the return of the Product, Documentation and any
other materials provided to such prospective End User
upon termination of such Agreement; and term and
termination.
(b) Grant End Users sublicenses to the Products and
Documentation pursuant to License Agreements. To the
extent so provided in the applicable License
Agreements, such sublicenses may extend after
termination of this Agreement, notwithstanding the
limited term of this Agreement.
(c) Grant sublicense rights to Authorized Sublicensees
pursuant to the terms of a Sublicense Agreement.
2.3 The Rights granted pursuant to this Agreement are subject to
the rights to terminate such Rights under this Agreement and
compliance with the terms, conditions and obligations under
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the Letter Agreement and this Agreement required to maintain
such Rights. Further, the Rights granted pursuant to this
Agreement are subject to certain licensing/marketing
agreements of LTD with third parties as identified on EXHIBIT
E, including LTD's obligations thereunder, entered into prior
to the date of execution of the Letter Agreement.
2.4 HSNS shall not, without LTD's prior written approval:
(a) use the Products, the Documentation or any
Confidential Information that it may acquire in
connection with this Agreement or the Letter
Agreement to develop, support, or invest in, directly
or indirectly, the development of any product which
has, entirely or partially, the same functions as any
of the Products or which would be in direct or
indirect competition with any of the Products;
(b) make any changes or other modifications to the
Products or grant any such rights to any End User or
Authorized Sublicensee or distribute the Products in
a form or manner other than as provided by LTD to
HSNS; or
(c) grant any other rights to any other person other
than to End Users or Authorized Sublicensees pursuant
to a License Agreement or Sublicensee Agreement
respectively, including any rights to incorporate any
Product or related intellectual property rights into
the products or services of any other person (except
as contemplated by and set forth in Exhibit A, Part 2
regarding the license of the right to create a
product utilizing the DLL which product cannot have
any more functionality or uses or applications than
any single Product of the Products listed on Exhibit
A, Part 1, and agreed to in writing by LTD).
2.5 Except as otherwise expressly stated in this Agreement, the
Rights granted to HSNS shall cease upon termination of this
Agreement.
2.6 Except with respect to the Streaming Product, there will be no
first refusal rights. With respect to any new Product,
including, but not limited to, a chip, that directly or
indirectly supplants, replaces, competes with, is similar to
in its function or intended use, or obsoletes the Streaming
Product, HSNS will have first refusal rights for forty-five
days after receipt of notice from LTD to fund the development,
and such funding will include the right to market the new
product on an exclusive basis, on terms and conditions
mutually agreed upon by HSNS and LTD through reasonable good
faith negotiations.
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3. MARKETING OBLIGATIONS.
3.1 HSNS agrees to do the following during the term of this
Agreement: (a) use its best efforts to market, promote and
license the Products in the Territory; and (b) hire and
maintain sufficient staff in HSNS's reasonable opinion,
including a sales force in HSNS's reasonable opinion of
sufficient size, to market, promote and license the Products
throughout the Territory. HSNS shall use its best efforts to
market, promote and license the Products in all possible
channels and/or sectors of distribution. In connection with
these efforts, HSNS shall not make any false or misleading
representations or statements regarding any of the Products or
their capabilities.
3.2 HSNS agrees to provide LTD upon its reasonable request with
information regarding HSNS's marketing plans and forecasts;
such plans and forecasts shall be non-binding and subject to
change, and may be delivered formally or informally, but shall
be sufficient to demonstrate that the effort and resources
being devoted by HSNS are sufficient to comply with its
obligations under Section 3.1. HSNS also shall meet with LTD
upon the reasonable request of LTD on matters relating to
market conditions, sales forecasting, planning, Product
marketing and Product competitiveness and similar factors.
3.3 The parties will work together to develop appropriate pricing
so that neither party undercuts one another in the
marketplace.
3.4 With respect to the OEM market, HSNS and LTD will work
together and keep one another informed so that there is no
duplication of effort or confusion in the marketplace.
4. LTD SERVICES. In the event that HSNS requests assistance or services
from LTD which are beyond the scope of LTD's commitments in this Agreement or
the Letter Agreement, LTD will attempt to accommodate HSNS's request by
providing such assistance or services on such basis as mutually agreed to in
writing between HSNS and LTD from time to time. Such assistance or services may
include, but is not limited to, maintenance and support services relating to the
Products, professional consulting services and marketing and promotional support
such as providing demonstrations and participation in trade shows. In the event
that such services relate to creating Enhancements for which HSNS pays LTD to
develop, the parties will also agree as to what additional marketing and
licensing rights HSNS shall have with respect to such Enhancements which shall
reasonably protect HSNS.
5. CHANGES. LTD agrees to provide HSNS with such Changes to the Products
(in Object Code form) and/or Documentation, if any, as LTD may make or obtain
from time to time and authorize for general release. LTD shall keep HSNS
generally advised with regard to Changes that are available or that LTD has
announced are planned, to the extent such Changes are or may be provided under
this Section 5.
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6. TITLE; INTELLECTUAL PROPERTY.
6.1 HSNS may copy the Products and Documentation only in Object
Code and only as required to perform its duties hereunder.
HSNS agrees to include all copyright, trademark and other
proprietary notices and legends of LTD on each copy of any
Product or Documentation as they appear in the versions
provided by LTD to HSNS and HSNS further agrees not to remove,
destroy or otherwise alter any such notices or legends on any
copy of any Product or Documentation provided to HSNS. All
copies of the Products and Documentation provided to or made
by or for HSNS shall be accounted for upon LTD's request.
6.2 LTD retains all right, title, and interest in and to the
Products, Documentation, any changes or modifications thereto
and all intellectual property rights throughout the world
contained therein. To the extent that any changes or
modifications to the Products or Documentation, including all
associated intellectual property rights, are not owned in
their entirety by LTD immediately upon their creation, HSNS
agrees to assign (and hereby automatically assigns) and shall
cause all other persons and entities who create or contribute
to any changes or modifications to assign, all right, title
and interest therein to LTD, to be effective immediately
without the necessity of consideration or further
documentation; provided, however, that this assignment
provision shall not apply to any changes, modifications or
other work performed by LTD on behalf of HSNS for which there
is a written agreement executed by LTD which provides that the
ownership of such changes, modifications or other work shall
be owned by a party other than LTD. HSNS agrees to take such
further action and execute such further documentation as LTD
may reasonably request to give effect to this Section 6.2.
6.3 HSNS may not distribute, sell, sublease, sublicense, assign,
give, pledge or transfer in any way any copies of the Products
or Documentation except as provided in this Agreement. HSNS
may not, and shall not authorize any other party to, modify,
reverse engineer, decompile, or translate the Products or
Documentation without the prior written consent of LTD.
6.4 HSNS is authorized to identify HSNS as an independent business
which has been authorized by LTD to market the Products to End
Users and Authorized Sublicensees, and to use and display
LTD's trade names, trademarks, service marks and logos for
purposes of promoting, advertising and marketing the Products
to prospective End Users and Authorized Sublicensees;
provided, however, that HSNS shall obtain LTD's prior written
approval of the content and form of any promotional,
advertisement or marketing materials utilizing such trade
names, trademarks, service marks or logos. LTD's approval
shall not be unreasonably withheld and shall be deemed given
if LTD does not object in writing within two (2) business days
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after HSNS submits its request to LTD in writing together with
a copy of the proposed promotional, advertisement or marketing
materials. In connection with the foregoing approval
requirements, HSNS is not required to submit for reapproval
any promotional, advertisement or marketing materials which
are in substantially the form of such materials previously
approved by LTD in writing in accordance with this Section
6.4. All such actions shall further be subject to reasonable
advertising and usage guidelines and any other quality
standards or specifications provided by LTD, if any, from time
to time during the term of this Agreement. In all other
respects, this Agreement confers no right or license with
regard to LTD's trade names, trademarks, service marks or
logos, or any related goodwill, all of which shall be the
exclusive property of LTD. HSNS shall assist LTD, at LTD's
request, in perfecting and maintaining LTD's rights under
trademark and similar laws in each country in the Territory by
advising LTD of any special registration, recording or notice
requirements. HSNS will not at any time (i) challenge LTD's
right, title or interest in any such marks, names or logos of
LTD or the validity thereof or any registration thereof, (ii)
do or cause to be done or omit to do anything, the doing,
causing or omitting of which would contest or in any way
impair or lead to impair the rights of LTD in such marks,
names or logos, (iii) use any trademark, service xxxx, trade
name, insignia or logo that is confusingly similar to or a
colorable imitation of any such marks, names or logos of LTD,
or (iv) use or authorize any other person to use such marks,
names or logos in a manner which disparages such names, marks
or logos or the Products identified thereby or which
diminishes the stature or image of quality of such names,
marks or logos among the public or causes confusion or
deception among the public with respect thereto. LTD expressly
reserves the right from time to time, upon providing notice
and a transition period that is reasonable under the
circumstances, to modify and change its names, marks and logos
and such names, marks and logos as modified or changed shall
for all purposes be deemed the marks, names and logos referred
to in this Agreement.
6.5 HSNS shall notify LTD in the event that it discovers any
infringement of LTD's rights in any Product or any of LTD's
trade names, trademarks, service marks or logos or any
violation of the terms of a License Agreement or Sublicense
Agreement, and shall cooperate with LTD and assist in the
prosecution of LTD's claims, provided that LTD retains
financial responsibility for costs of assistance and
prosecution. LTD shall be entitled to retain any proceeds from
such claims, including settlement amounts.
7. THIRD PARTY MATERIALS. The Products and/or Documentation may include
or require commercially available programming or materials from third-party
licensors, sellers or distributors (collectively, "Third-Party Materials"). The
Third-Party Materials may be subject to restrictions, payment obligations or
procurement responsibilities that are different from or in addition to the
restrictions and charges applicable to the Products and Documentation hereunder
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and HSNS and/or each End User or Authorized Sublicensee shall be responsible for
obtaining such Third Party Materials pursuant to a separate agreement with each
such third party. Exhibit D hereto lists the Third-Party Materials that are
pertinent on the date of execution of this Agreement. The Products are not
compatible with and are not warranted for any other kind of computer programming
or operating system other than the Third Party Materials. LTD reserves the right
to augment the Exhibit upon reasonable written notice to HSNS.
8. CONFIDENTIAL INFORMATION AND DISCLOSURE.
8.1 Each party, as recipient ("Recipient") of Confidential
Information obtained directly or indirectly from the other
party (the "Disclosing Party"), agrees to the following
confidentiality obligations:
8.2 HSNS, as Recipient, agrees at all times to protect and
preserve the confidentiality of the Products, Documentation,
and all other Confidential Information of LTD, as Disclosing
Party. HSNS agrees not to permit or authorize access to, or
disclosure of, the Products, Documentation, or any other
Confidential Information of LTD to any person or entity other
than (i) End Users or Authorized Sublicensees who have entered
into confidentiality agreements approved by LTD, to the extent
necessary for such End Users or Authorized Sublicensees to
evaluate the Products in advance of entering into a License
Agreement or Sublicense Agreement, (ii) End Users or
Authorized Sublicensees who have entered into License
Agreements or Sublicense Agreements, to the extent necessary
for such End Users or Authorized Sublicenses to exercise their
rights under applicable License Agreements or Sublicense
Agreements, and (iii) employees and professional advisors of
HSNS who have agreed in a written agreement to be bound by the
terms of this Agreement and have a "need to know" such
information in order to enable HSNS to perform HSNS's
obligations under this Agreement and applicable License
Agreements and Sublicense Agreements. HSNS may disclose
necessary portions of the Products, Documentation, or other
Confidential Information of LTD to governmental regulatory
authorities if such disclosure is required for compliance with
applicable laws, but HSNS shall notify LTD of the applicable
legal requirements before such disclosure occurs and HSNS
shall use its best efforts to help LTD obtain protection as
may be available to preserve the confidentiality of such
information following disclosure.
8.3 LTD, as Recipient, agrees at all times to protect and preserve
the confidentiality of all Confidential Information of HSNS,
as Disclosing Party. LTD agrees not to permit or authorize
access to, or disclosure of, the Confidential Information of
HSNS to any person or entity other than employees and
professional advisors of LTD who have agreed in a written
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agreement to be bound by the terms of this Agreement and have
a "need to know" such information in order to enable LTD to
perform LTD's obligations under this Agreement and applicable
License Agreements and Sublicense Agreements. LTD may disclose
necessary portions of the Confidential Information of HSNS to
governmental regulatory authorities if such disclosure is
required for compliance with applicable laws, but LTD shall
notify HSNS of the applicable legal requirements before such
disclosure occurs and LTD shall use its best efforts to help
HSNS obtain protection as may be available to preserve the
confidentiality of such information following disclosure.
8.4 Prior to disposal of any media or materials that contain any
part of the Confidential Information of the Disclosing Party,
the Recipient shall obliterate or otherwise destroy all code,
instructions, commentary, or further evidence of Confidential
Information, for example, by erasing, incinerating, or
shredding such materials.
8.5 The restrictions in this Section 8 are in addition to any
other restrictions on use and disclosure set forth elsewhere
in this Agreement (for example, additional restrictions are
set forth in Section 2.1(a) regarding limited disclosure of
the Products to prospective End Users for evaluation
purposes).
8.6 The parties agree that money damages would not be a sufficient
remedy for any breach of this Section 8 and that either party
shall be entitled to equitable relief, including injunctive
relief and specific performance, as a remedy for any such
breach by the other party. Such remedies shall not be deemed
exclusive remedies, but shall be in addition to all other
remedies available at law or in equity.
9. FEES AND CHARGES; RECORDS AND AUDIT RIGHTS.
9.1 HSNS shall collect all license and other fees for the Products
under License Agreements and Sublicense Agreements from the
End Users and Authorized Sublicensees. HSNS shall use its best
efforts to ensure that LTD receives the benefits contemplated
by this Agreement and will not price Products in a manner to
minimize, circumvent, evade or attempt to avoid the payment of
royalties to LTD.
9.2 For the Rights granted hereunder, HSNS shall pay LTD as
follows:
(a) Upfront Payment
(1) HSNS will pay upfront $3,000,000 for this
Agreement. The $3,000,000 will be paid by HSNS in installments
of $750,000 over four months with the first installment due
upon the execution of this Agreement and each remaining
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installment due at the end of each successive one month period
thereafter. This Agreement will not be effective until the
first $750,000 payment is made. Except for the first payment,
with respect to these payments, there is a thirty day cure
period before this Agreement terminates, but interest at 8%
per annum will accrue on any late payments. The $3 Million
advance payment is only recoverable from or against 20% of the
royalties as specified in Section 9.2(b)(2) hereof.
(2) After the initial three year term of this
Agreement, HSNS will have the option to renew this Agreement
for an upfront payment per year repayable against royalties of
the greater of (i) $2.5 Million or (ii) 15% of the prior
year's Royalty payments to LTD under this Agreement. This
renewal upfront payment will be paid in six equal monthly
installments, with the first payment being made at the
beginning of the additional term. This upfront payment will be
repaid pursuant to the same formula (i.e., the 70/30 of net)
used in the repayment of the initial $3 Million advance as
stated in Section 9.2(b)(2) hereof.
(b) Royalties.
(1) LTD will receive seven and a half percent (7
1/2%) of the Adjusted Gross Revenue generated relating to,
incorporating, or involving, Summus Products by HSNS outside
of the OEM market. The full amount of this seven and one-half
percent (7 1/2%) will be paid to LTD on a monthly basis, and
there will be no deductions from such royalties.
(2) Royalties for sales of the Streaming Product in
the OEM market will be divided 50/50 of net, with each party
recouping direct costs as documented. Until HSNS recoups the
initial $3 Million payment for the Agreement set forth in
Section 9.2(a)(1) above, the royalty payment shall be split
70/30 of net, with LTD receiving 30%, and the other 20% which
otherwise would be payable to LTD being applied to pay down
the $3 Million. The terms and conditions of any OEM sale not
involving the Streaming Product in which HSNS has involvement,
including the appropriate compensation for HSNS and LTD, will
be determined through reasonable good faith negotiations
between LTD and HSNS on a case by case basis.
All required payments of royalties hereunder shall be due and
payable monthly no later than the fifteenth (15th) day of each
month following the immediately preceding month.
9.3 HSNS shall further pay LTD for any services rendered by LTD in
accordance with any agreement reached pursuant to Section 4
hereof. Any payments for such services shall be due and
payable by HSNS to LTD within fifteen (15) days from the date
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LTD issues an invoice to HSNS for such services, or as may
otherwise be agreed to in writing by HSNS and LTD.
9.4 HSNS shall retain accurate records in accordance with sound
accounting practices to support all payments owed to LTD
hereunder. HSNS will provide LTD, on a monthly basis, a
written account, certified by an authorized officer of HSNS,
of all amounts which may be due to LTD hereunder, which
account shall show in detail the calculations and any relevant
materials or information required to determine such amounts.
This written account shall accompany the payment by HSNS of
such amounts. To the extent no such payment is owed for a
particular month, the written account shall be provided to LTD
no later than the fifteenth (15th) day of the month following
the immediately preceding month showing in detail why no
payment is owed. During the first three months of this
Agreement, in addition to the general rights set forth in
Section 9.5 (and not in limitation thereof), LTD and HSNS
agree that Xx. Xxx Xxxxxxx (or if replaced his successor) will
participate in the monthly reconciliation for HSNS and will
have access, on a confidential basis, to all of HSNS's records
and information relating thereto, including the records and
information of its affiliates. As part of this process, HSNS
and LTD will agree on appropriate procedures to protect LTD
hereunder and to ensure LTD receives appropriate payment
hereunder. During these three months, HSNS and LTD shall agree
upon the appropriate form of the written account contemplated
by this Section 9.4, as well as what materials or other
information should accompany such account.
9.5 During the term of this Agreement and for a period of two (2)
years after any termination of this Agreement, upon fifteen
(15) business days advance notice by LTD, HSNS shall allow the
employees of LTD (which shall include Xx. Xxx Xxxxxxx (or if
replaced his successor) and only such employees of LTD which
such officer may reasonably need to provide support and
assistance), an independent accountant appointed by LTD and
any other experts or advisors of LTD (provided, however, that
there shall not be more than three (3) people at any time on
HSNS's premises) access, at all reasonable times during normal
business hours, and on a confidential basis, to HSNS's
business records and information, including the records and
information of its affiliates, for purposes of verifying the
royalties and the performance of HSNS's other obligations
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under this Agreement or the Letter Agreement. The cost of any
audit by any such employees, accountants, experts and advisors
shall be borne by LTD unless the royalties previously paid by
HSNS for any period are less than ninety-four percent (94%) of
the royalties determined by such employees, accountants,
experts or advisors as payable for that period, in which event
HSNS shall immediately reimburse to LTD the costs of such
audit. Unless LTD provides legitimate business reasons to HSNS
in writing, (i) after the initial three month period described
in Section 9.4, LTD shall not be entitled, during the next two
(2) year period, to the above described access more than
quarterly, and (ii) after the two (2) year period described in
(i), LTD shall not be entitled thereafter to the above
described access more than semiannually. Upon the reasonable
request of LTD, HSNS agrees to modify its procedures and
methods of operation to best ensure that LTD properly receives
the benefits contemplated under this Agreement.
9.6 HSNS shall collect, report and pay to the relevant taxing
authority, and indemnify LTD for any liability relating to,
all applicable excise, property, VAT, sales and use, or
similar taxes, any withholding requirement in addition to or
in lieu thereof, and any customs, import, export or other
duties, levies, tariffs, taxes, or other similar charges that
are imposed by any jurisdiction for the transactions
contemplated herein (excluding any taxes based on the net
income of LTD).
9.7 In addition to any other rights or remedies available to a
party hereunder, except as otherwise specifically provided
herein, the other party shall pay interest on any amounts past
due at the rate of eighteen percent (18%) per annum.
10. LIMITED WARRANTY AND REMEDY; INFRINGEMENT AND OBLIGATION TO DEFEND.
10.1 LTD warrants that, for a period of ninety (90) days from the
date that a Product is licensed to an End User or an
Authorized Sublicensee, LTD will correct the computer programs
of the most current edition of a Product if such Product fails
to operate in accordance with the Documentation if LTD is
provided written notice within such ninety (90) day period.
This limited warranty is the sole and exclusive remedy in the
event of the discovery of any such failure or nonconformity in
any Product. LTD makes no warranty that operation of any
Product will be uninterrupted or error free. This limited
warranty shall not apply to (i) changes or modifications made
to any Product other than those made by LTD, or (ii) any
Product used with hardware or operating environments other
than those approved in writing by LTD.
10.2 LTD agrees to indemnify and defend HSNS, its shareholders,
officers, directors and employees and agents and hold them
harmless from and against all claims, and related liabilities,
damages and expenses, arising from the actual or alleged
infringement by any Product of a United States patent or
copyright; provided that HSNS notifies LTD in writing within
five (5) business days of the receipt by HSNS of any such
claim or notice of any such claim and permits LTD upon
request, and at LTD's cost and expense, to assume and control
the defense for settlement thereof. HSNS agrees to cooperate
with LTD in every reasonable manner in the defense of such
claim. In defending or settling any such claim LTD may elect
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to (1) obtain the right of continued use of such Product or
part thereof, which is alleged to be infringing or (2) replace
or modify such Product, or part thereof, so as to avoid such
claim of infringement and HSNS will cease use of the edition
of the Product, or part thereof, which was replaced or
modified. LTD will not be obligated to defend or settle any
such claim of infringement resulting from HSNS's or any other
parties additions to, changes in, or modifications of a
Product, or resulting from HSNS's use of any Product in
combination with materials other than the Third Party
Materials.
The foregoing provisions constitute LTD's sole liability, and
HSNS's sole recourse, in the event of any infringement of
third-party rights by the Products.
11. DISCLAIMER OF WARRANTIES AND ASSURANCES.
11.1 EXCEPT AS PROVIDED IN SECTION 10 HEREOF, LTD MAKES AND HSNS
RECEIVES NO WARRANTIES OF ANY KIND (WHETHER, EXPRESS, IMPLIED,
STATUTORY OR OTHERWISE, OR WHETHER IN ANY PROVISION OF THIS
AGREEMENT OR ANY OTHER COMMUNICATION OR OTHERWISE), AND LTD
SPECIFICALLY DISCLAIMS ANY WARRANTY OF TITLE, MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE.
11.2 IT IS MUTUALLY ACKNOWLEDGED THAT NEITHER PARTY HAS GIVEN ANY
ASSURANCE TO THE OTHER CONCERNING THE RESULTS, PROFITABILITY
OR SUCCESS OF ANY MARKETING EFFORT WHICH HSNS MAY UNDERTAKE.
11.3 HSNS understands and agrees that use of or connection to the
internet is inherently insecure and that connection to the
internet provides opportunity for unauthorized access by a
third party to HSNS's or any End User's or Authorized
Sublicensee's computer systems, networks, and any and all
information stored therein. ALL INFORMATION TRANSMITTED AND
RECEIVED THROUGH THE INTERNET CANNOT BE EXPECTED TO REMAIN
CONFIDENTIAL AND LTD CANNOT AND DOES NOT GUARANTEE THE
PRIVACY, SECURITY, AUTHENTICITY, OR NONCORRUPTION OF ANY
INFORMATION SO TRANSMITTED, OR STORED IN ANY SYSTEM CONNECTED
TO THE INTERNET. LTD SHALL NOT BE RESPONSIBLE FOR ANY ADVERSE
CONSEQUENCES WHATSOEVER OF HSNS'S OR ANY END USER'S OR
AUTHORIZED SUBLICENSEE'S CONNECTION TO OR USE OF THE INTERNET,
AND LTD SHALL NOT BE RESPONSIBLE FOR ANY USE BY HSNS OR ANY
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END USER OR ANY AUTHORIZED SUBLICENSEE OF ANY INTERNET
CONNECTION IN VIOLATION OF ANY LAW, RULE OR REGULATION OR ANY
VIOLATION OF THE INTELLECTUAL PROPERTY RIGHTS OF ANOTHER.
12. LIMITATION OF LIABILITY.
12.1 LTD'S LIABILITY FOR ANY AND ALL DAMAGES SHALL BE LIMITED TO
THE EXCLUSIVE REMEDY SET FORTH IN SECTION 10.
12.2 UNDER NO CIRCUMSTANCES SHALL LTD BE LIABLE UNDER THIS
AGREEMENT OR THE LETTER AGREEMENT FOR ANY INCIDENTAL,
INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES OF HSNS OR ANY
OTHER PERSON, INCLUDING, BUT NOT LIMITED TO, LOST SAVINGS OR
PROFITS.
12.3 THE PARTIES HEREBY AGREE THAT THE LIMITATIONS OF LIABILITY AND
EXCLUSION OF CERTAIN DAMAGES SET FORTH IN SECTION 12.2 WILL
SURVIVE AND SHALL APPLY REGARDLESS OF THE SUCCESS OR
EFFECTIVENESS OF OTHER REMEDIES CONTAINED HEREIN, INCLUDING
THE TOTAL FAILURE OR FAILURE OF ESSENTIAL PURPOSE OF THE
LIMITED REMEDY SET FORTH IN SECTION 10.
12.4 HSNS ACKNOWLEDGES THAT LTD HAS SET ITS FEES, AGREED TO THE
ROYALTY PROVISIONS AND ENTERED INTO THIS AGREEMENT AND THE
LETTER AGREEMENT IN RELIANCE UPON THE LIMITATIONS OF LIABILITY
AND THE DISCLAIMERS OF WARRANTIES AND DAMAGES SET FORTH IN
THIS AGREEMENT, AND THAT THE SAME FORM AN ESSENTIAL BASIS OF
THE BARGAIN BETWEEN THE PARTIES.
13. INDEMNIFICATION . HSNS agrees to indemnify LTD, its shareholders, officers,
directors and employees and agents and hold them harmless from and against any
and all claims, liabilities, damages and expenses (including reasonable
attorneys' fees) (a) asserted by any End User or any Authorized Sublicensee in
excess of the limitations set forth in this Agreement or the applicable proper
form of a License Agreement or Sublicense Agreement if such claims, liabilities
or damages result from a failure by HSNS to enter into the proper form of a
License Agreement or Sublicensee Agreement or other failure by HSNS to comply
with this Agreement or (b) arising out of or resulting from (i) HSNS's or any
Authorized Sublicensee's false or misleading advertising in connection with any
of the Products licensed by HSNS or its Authorized Sublicensees, (ii) any
violation of any applicable law or regulation in connection with the marketing,
distribution, license, advertisement or promotion of any of the Products, or
(iii) any use of the Products or actions, statements, or representations of HSNS
or its Authorized Sublicensees not authorized by this Agreement.
13
14. NOTICES. All notices or other communications to be given hereunder
shall be in writing and delivered personally, by telecopy (confirmation
by air mail), or by commercial overnight courier (second day courier in
the case of international dispatch), courier charges prepaid, and
addressed to the appropriate party as set forth below.
If to HSNS: High Speed Net Solutions, Inc.
0000 X. Xxxxxxxxx Xxxxx
Xxxxx Xxxxx, XX 00000
ATTN: Xxxxxxx Xxxxxx, President
Telecopy No: (000) 000-0000
With a Copy to: High Speed Net Solutions, Inc.
P. O. Xxx 00000
Xxxxxxx Xxxxx, XX 00000
Telecopy No: (000) 000-0000
If to LTD: Summus, LTD.
0000 Xxxxxx Xxxxx Xxxx, Xxxxx 0000
Xxxxxxxx, XX 00000
ATTN: Xx. Xxxxx Xxxxxxx
Telecopy No: 000-000-0000
With a Copy to: Summus, LTD.
0000 Xxxxxx Xxxxx Xxxx, Xxxxx 0000
Xxxxxxxx, XX 00000
ATTN: Xxx Xxxxxxx
Telecopy No: 000-000-0000
Notices delivered personally shall be effective upon delivery and
notices delivered by mail shall be effective upon their receipt by the
party to whom they are addressed.
15. ASSIGNMENT.
15.1 If either party (a "Transferring Party") provides the other party thirty
(30) days advance written notice, the Transferring Party may assign or otherwise
transfer this Agreement and the Letter Agreement to an Equivalent Entity. For
purposes of this Section, an Equivalent Entity is an entity the ownership of
which is not materially different from the Transferring Party and the financial
condition of which is equivalent to or better than the Transferring Party. The
other party shall have the right to request, and the Transferring Party shall
provide within five (5) days, any information reasonably necessary to confirm
and establish that any proposed transferee is an Equivalent Entity.
14
15.2 In addition, HSNS may transfer this Agreement and the Letter Agreement in
connection with a sale of HSNS provided that (a) the transferee agrees in
writing to assume all the obligations of HSNS hereunder and to be bound by the
terms and conditions of this Agreement; (b) the assignee is an entity that is
capable of performing under this Agreement and is not a direct competitor of
LTD; and (c) LTD receives a nonrefundable cash payment of the greater of (i) $10
Million or (ii) 15% of the prior year's royalties paid under this Agreement.
15.3 Except as set forth in this Section, neither this Agreement nor the Letter
Agreement can be assigned or otherwise transferred by either HSNS or LTD without
the written consent of the other party, which consent shall not be unreasonably
withheld.
16. COMPLIANCE WITH LAWS.
16.1 The parties shall in the performance of this Agreement comply
with all applicable laws, executive orders, regulations,
ordinances, rules, proclamations, demands and requisitions of
national governments or of any state, local or other
governmental authority which may now or hereafter govern
performance hereunder.
16.2 HSNS shall, at its own expense, comply with all laws relating
to the marketing, distribution or licensing of the Products,
and shall procure all licenses and pay all fees and other
charges required thereby.
16.3 Notwithstanding anything in this Agreement to the contrary, it
is acknowledged and agreed that neither LTD nor HSNS may ship,
export or re-export the Products or Documentation, or any
other information, process, product or service obtained
directly or indirectly from LTD, to any country or entity
which is the subject of any prohibition imposed by the U.S.
Export Administration Act of 1979, U.S. Executive Orders, the
U.S. Department of Commerce, and the North Atlantic Treaty
Organization. HSNS understands that, if such a prohibition
applies and an export license cannot be obtained with
reasonable effort, the disclosure or delivery of the Products
and Documentation may not occur. To assure compliance, HSNS
agrees to notify LTD of each prospective End User as soon as
possible so that LTD can evaluate whether prohibitions may
apply or export licenses may be available. HSNS shall be
responsible for all of the costs to obtain any export
licenses.
17. INSURANCE. Each party shall include the other party as a named
beneficiary for purposes of any product liability or general liability
insurance that may cover claims or liabilities with which the other
party could be charged because of personal or property damage or
injuries suffered by any person or entity, or any other liability,
resulting from the Products or the use or license thereof. Each party
shall provide the other party with evidence satisfactory to the other
party of such insurance.
15
18. INDEPENDENT CONTRACTOR. Each party hereto shall be and remain an
independent contractor; nothing herein shall be deemed to constitute
the parties as partners, and neither party shall have any authority to
act, or attempt to act, or represent itself, directly or by
implication, as an agent of the other or in any manner assume or
create, or attempt to assume or create, any obligation on behalf of or
in the name of the other, nor shall either by deemed the agent or
employee of the other.
19. SEVERABILITY. If any court should find any particular provision of this
Agreement void, illegal, or unenforceable, then that provision shall be
regarded as stricken from this Agreement and the remainder of this
Agreement shall remain in full force and effect.
20. PUBLICITY; ANNOUNCEMENTS. Neither party shall, except as may be
required by law or federal regulation, or except with the prior written
permission of the other party, publicly advertise or otherwise disclose
the terms or conditions of this Agreement or the Letter Agreement. All
public announcements by HSNS, including but not limited to press
releases, mentioning or relating to LTD, including any announcements
concerning LTD, LTD's technology or its business or business
relationships, shall be approved in writing by Xxxxx Xxxxxxx or his
written designee prior to their being made or issued. If any
announcement is properly sent to Xxxxx Xxxxxxx'x attention at LTD, and
he does not respond within two business days, then HSNS shall be free
to make such announcement without his written approval as set forth in
the information provided to Bjorn. All such announcements shall be
accurate and complete and take into consideration the business and
other concerns of LTD.
21. NOTICE OF DELAY. Whenever any occurrence is delaying or threatens to
delay either party's timely performance under this Agreement, that
party shall promptly give notice thereof, including all relevant
information with respect thereto, to the other party.
22. GOVERNING LAW: COUNTERPARTS. This Agreement and the Letter Agreement
shall be governed by and construed and enforced in accordance with the
laws of the United States of America and the State of South Carolina,
without regard to conflict of law provisions. This Agreement is entered
into in the United States of America, all funds shall be paid to LTD in
U.S. dollars in the United States of America, and nothing herein shall
be construed to require LTD to do business or maintain any office of
business establishment outside the United States of America. This
Agreement may be executed in any number of counterparts, each of which
together shall constitute one and the same instrument.
23. NO THIRD PARTY RIGHTS. Notwithstanding anything else in this Agreement to
the contrary, the End Users and Authorized Sublicensees of HSNS shall not have
any right or otherwise be entitled to assert any claim against LTD under this
15
Agreement as a third party beneficiary or otherwise, and LTD shall have no duty
or responsibility in connection with this Agreement to any such End User or
Authorized Sublicensee.
24. ENTIRE AGREEMENT; WAIVER.
24.1 This Agreement together with the Letter Agreement,
constitutes the entire agreement between the parties with
respect to the subject matter hereof and shall supersede all
previous proposals, negotiations, representations,
commitments, writings, agreements and other communications,
both oral and written, between the parties. In this
connection, the parties agree that this Agreement and the
Letter Agreement supersede that certain Letter Memorandum
Agreement between LTD, Summus Technologies, Inc. and Xxxx
Xxxxxxxx Direct, Inc. and such agreement is hereby terminated.
All Addenda, attachments and exhibits referred to as
accompanying this Agreement are hereby incorporated in and
made part of this Agreement. This Agreement may not be
released, discharged, changed or modified except by an
instrument in writing signed by a duly authorized
representative of each of the parties (other than changes to
the Exhibits by LTD as expressly contemplated by this
Agreement). The headings contained in this Agreement are for
reference purposes only and shall not affect the meaning or
interpretation hereof.
24.2 A waiver by either party of its rights hereunder shall
not be binding unless contained in a writing signed by an
authorized representative of the party waiving its rights. The
non-enforcement or waiver of any provision on one occasion
shall not constitute a waiver of such provision on any other
occasions unless expressly so agreed in writing. It is agreed
that no usage of trade or other regular practice or method of
dealing between the parties hereto shall be used to modify,
interpret, supplement or alter in any manner the terms of this
Agreement or the Letter Agreement.
25. SURVIVAL OF PROVISIONS. In addition to the rights and obligations which
survive as expressly provided for elsewhere in this Agreement, the Sections and
Addenda which by their nature should survive (including, without limitation,
Sections 6.2, 6.3, 6.5, 8, 9, 11, 12, 13, 14, 16, 17, 20, 22 and 23) shall
survive and continue after any termination or cancellation of this Agreement. In
the event that this Agreement is terminated pursuant to Section 26, the license
rights granted under Section 2.1(b) shall also survive any such termination as
well as any other provisions which by their nature should survive to give effect
to the responsibilities, obligations and rights of the parties relating to such
license rights.
26. TERMINATION.
26.1 If any payment required by Section 9.2(a)(1) hereof is not
timely made (taking into consideration any applicable cure
period and required notice relating thereto) this Agreement
17
may be terminated by LTD. In addition, unless a renewal
payment is made in accordance with Section 9.2(a)(2) hereof,
this Agreement shall terminate on February 23, 2002 (or, if
renewed, following the initial three year term of this
Agreement, this Agreement shall terminate when an upfront
renewal payment that is due in accordance with Section
9.2(a)(2) is not made).
26.2 Without limiting Section 26.1 regarding LTD's ability to
terminate this Agreement, the exclusive Rights granted under
this Agreement may be terminated by LTD, and shall become
nonexclusive rights, if HSNS fails to perform its obligations
under this Agreement or under the Letter Agreement in any
material respect; provided, however, that LTD notifies HSNS of
such breach and gives HSNS, in the case of a failure to make
any payment required under this Agreement or under the Letter
Agreement thirty (30) days, and in all other cases ninety (90)
days, to cure such breach.
26.3 Any rights under this Section 26 are in addition to and
without prejudice to any right or remedy otherwise existing
under this Agreement or at law in respect of any breach of
this Agreement.
18
IN WITNESS WHEREOF, the parties hereto have executed this
Agreement as of the day and year first above written.
Summus, LTD. High Speed Net Solutions, Inc.
By:______________________________ By:______________________________________
Title:___________________________ Title:___________________________________
Date:____________________________ Date:____________________________________
Xxxx Xxxxxxxx Direct, Inc. (which is a party hereto solely for the purposes of
Section 24 hereof).
By:______________________________
Title:___________________________
Date:____________________________
Summus Technologies, Inc. (which is a party hereto solely for the purpose of
Section 24 hereof).
By:______________________________
Title:___________________________
Date:____________________________
19
APPENDIX A
DEFINITIONS
-----------
"Adjusted Gross Revenue" shall mean the total amount of funds actually received
by HSNS (excluding postage and handling, C.O.D. charges, sales, value added and
other taxes) relating to the Products minus returns, chargebacks, cancellations,
undeliverables and bad debt.
"Agreement" shall mean this Marketing License Agreement.
"Authorized Sublicensee" means any person who has executed a Sublicense
Agreement approved in writing by LTD and HSNS.
"Changes" means Revisions, Enhancements and Upgrades to any Product or the
Documentation, if any, including translations into foreign languages used in the
Territory.
"Confidential Information" shall mean any competitively sensitive or secret
business, marketing or technical information of a Disclosing Party. (References
to the "Disclosing Party" and the "Recipient" are defined in Section 8). The
Disclosing Party shall take reasonable steps to call the Recipient's attention
to the confidentiality of its Confidential Information at the time of
disclosure, including by legending as "Confidential" documentation and media
containing Confidential Information, and summarizing in writing oral disclosures
of Confidential Information so the summaries are provided following disclosure
as evidence of the Confidential Information that has been imparted. In all
cases, however, LTD's Confidential Information shall include the Products (in
Object Code and Source Code form) and Documentation, including all Changes and
derivative works or translations thereof. Confidential Information shall not
include, however, information which (i) is generally known to the public or
readily ascertainable from public sources (other than as a result of a breach of
confidentiality by the Recipient or any person or entity associated with the
Recipient), (ii) is independently developed without reference to or reliance on
any Confidential Information of the Disclosing Party, as demonstrated by written
records in the Recipient's possession (which shall be provided to the Disclosing
Party at the Disclosing Party's request), or (iii) is obtained from an
independent third party who created or acquired such information without
reference to or reliance on Confidential Information of the Disclosing Party, as
demonstrated by written records in the Recipient's possession (which shall be
provided to the Disclosing Party at the Disclosing Party's request).
"DLL" shall mean, with respect to each Product listed on Exhibit A, Part 1, the
functions and data in the dynamic-link libraries of LTD which have been utilized
by LTD to create such Product.
"Documentation" means the technical and operating documentation and
specifications relating to a Product provided to HSNS by LTD for HSNS to provide
20
to End Users and Authorized Sublicensees and attached hereto as Exhibit B, as
amended or supplemented from time to time in writing by LTD.
"End User" shall mean any person who has executed a License Agreement.
"Enhancement" means improved performance to the existing functionality for any
portion of a Product owned by LTD that has been released to HSNS, which does not
constitute a material change in the Product or its programs.
"Government Sector" shall be defined in the traditional sense to include
national government agencies worldwide (excluding state, county, local and other
similar governmental agencies) and government contractors, but only to the
extent the government contractor is actually dealing with such a government.
"HSNS" shall mean High Speed Net Solutions, Inc. (formerly known as xxxx.xxx,
inc.), a Florida corporation.
"Letter Agreement" shall mean the Letter Agreement dated January 14, 1999, among
LTD, Summus Technologies, Inc., a Delaware corporation, HSNS and Xxxx Xxxxxxxx.
"License Agreement" means a license agreement directly between an End User and
HSNS containing terms and conditions in substantially the form of Exhibit C
hereto. LTD and HSNS shall, subsequent to the date hereof and prior to entering
into any particular License Agreement, agree in writing on the form or forms of
scope of use, pricing and other provisions of such form of License Agreement,
which are identified in such form as subject to variation or subsequent approval
by the parties, and periodically agree in writing on any changes to the standard
form of the License Agreement. The License Agreement shall in all cases contain
provisions acceptable to LTD regarding scope of use, confidentiality, ownership
by LTD of the Products and Documentation and protection of all applicable
intellectual property rights, limited warranties and remedies, limitation of
liability, and provisions permitting the End User to use the Products only for
its own internal operations. The parties acknowledge and agree that the form of
License Agreement set forth in Exhibit C must be modified (particularly the
scope of use rights) for use in connection with the license of the right (as set
forth in Exhibit A, Part 2) to create a product utilizing the DLL which product
cannot have any more functionality or uses or applications than any single
Product of the Products listed on Exhibit A, Part 1. The parties shall,
subsequent to the date hereof, agree in writing on the form or forms of License
Agreements for the license relating to the use of the DLL to create such a
product and prior to entering into each such License Agreement, HSNS shall
obtain LTD's prior written approval of the final form of such License Agreement,
which approval shall not be unreasonably withheld. No License Agreement shall be
effective, and no license to use a Product shall be valid, unless a License
Agreement has been signed by HSNS and the End User or HSNS has received
confirmation that End User agrees to be bound by the terms of the License
Agreement pursuant to a method consistent with current industry practice for the
21
distribution and license of software by means similar to the distribution of the
Products. HSNS agrees to consult with LTD in advance and obtain LTD's written
approval for any method of licensing of the Products to End Users in a form
other than by written agreement.
"LTD" shall mean Summus, LTD., a Missouri corporation.
"Object Code" shall mean the machine executable form or forms of a Product which
results from the compilation and/or assembly of Source Code. LTD shall have the
right to specify the form of the Object Code to be provided to any category or
categories of End Users or Authorized Sublicensees.
"Products" shall mean any and all services and/or products which incorporate or
utilize the technology which currently is being, or has been, or will be
developed by LTD, including Revisions, Enhancements and Upgrades, together with
the Documentation thereof. Such Products are and shall be identified in Exhibit
A hereto, as amended or supplemented in writing from time to time by LTD. The
Products shall be provided to HSNS in only Object Code form. The Products shall
include all Changes, if any, provided to HSNS, End Users or Authorized
Sublicensees by LTD.
"Rights" shall have the meaning set forth in Section 2.1 of this Agreement.
"Revision" means a change made in a Product to correct errors or defects in the
Product or to make the Product conform to LTD's then current Documentation.
"Source Code" shall mean the version of a Product in symbolic programming
language(s) employed by LTD to develop the Product which when compiled and/or
assembled is transformed into an Object Code form of the Product.
"Sublicense Agreement" means a sublicense agreement directly between an
Authorized Sublicensee and HSNS containing terms and conditions substantially
similar to this Agreement granting an Authorized Sublicensee the right to grant
Rights to the Products to End Users pursuant to a License Agreement. The parties
acknowledge and agree that the terms of a Sublicense Agreement must be modified
from the terms of this Agreement for use in connection with the license of the
right (as set forth in Exhibit A, Part 2) to create a product utilizing the DLL
which product cannot have any more functionality or uses or applications than
any single Product of the Products listed on Exhibit A, Part 1. The terms and
conditions of any Sublicense Agreement must be approved in advance in writing by
LTD and HSNS and prior to entering into each Sublicense Agreement, HSNS shall
obtain LTD's prior written approval of the final form of such Sublicense
Agreement, which approval shall not be unreasonably withheld. In this
connection, HSNS will use all reasonable efforts to protect the legitimate
interests of LTD (including the ownership by LTD of the Products and associated
intellectual property rights and the rights to receive royalties consistent with
22
the intent of this Agreement and the Letter Agreement (and to verify those
royalties)) in selecting Authorized Sublicensees and, if mutually agreed,
negotiating Sublicense Agreements.
"Territory" means anywhere in the world. It is agreed and acknowledged that LTD
reserves the right to condition licenses granted in the Territory, or make
adjustments to the Products or Documentation licensed in the Territory, to the
extent advisable in LTD's judgment to protect LTD's intellectual property rights
and upon providing HSNS with specifically stated reasons in reasonable detail
for such conditions or adjustments. Such conditions or adjustments may include
disabling codes with expiration dates of short duration, limitation of
installation to urban areas or specified regions, exclusion of development
tools, compliance with local laws at HSNS's or the End User's expense, special
signature, insurance or indemnity requirements, special audit requirements,
and/or reasonable standards for all in-country use of the Products and
Documentation.
"Upgrade" shall mean changes (if any) made in any Product to permit the Product
to be used and to operate properly with versions of an operating system that are
supported by LTD or a release of a Product subsequent to the initial delivery in
which LTD has incorporated accumulated Revisions or Enhancements, together with
new or revised Documentation which properly describes the updated Product.
23
EXHIBIT A
1. DESCRIPTION OF PRODUCTS
--------------------------
The Streaming Product, Video Mail Product (Release 1.0), and 4U2C Product as
further identified and specified in the Documentation on Exhibit B hereto.
As and when developed and completed, the contemplated Video Conferencing Product
currently in process of development shall also be a Product hereunder and at
such time as such Product is developed and completed, LTD will supplement this
Exhibit to add such Product and supplement Exhibit B to add the related
Documentation.
As and when completed, the contemplated Release 2.0 of the Video Mail Product
currently in process of completion shall be an Upgrade to an existing Product
hereunder and at such time as such Release 2.0 is completed, LTD will supplement
this Exhibit to add such Release 2.0 as an Upgrade and supplement Exhibit B to
add the related Documentation.
2. ADDITIONAL LICENSE RIGHTS
----------------------------
In addition to the Products listed above, HSNS may license to End Users and
Authorized Sublicensees, in accordance with the terms and conditions of this
Agreement, the right to create a product utilizing the DLL which product cannot
have any more functionality or uses or applications than any single Product of
the Products listed above in Part 1, pursuant to a License Agreement or
Sublicensee Agreement, each of which must be agreed to in advance in writing by
LTD. Although the DLL is not a Product, the foregoing additional license rights
shall be included in the definition of Product hereunder.
24
EXHIBIT B
DOCUMENTATION
-------------
The Documentation for the Streaming Product, Video Mail Product (Release 1.0)
and 4U2C Product is attached hereto.
25
EXHIBIT C
FORM OF LICENSE AGREEMENT
-------------------------
The attached form of License Agreement contains the required terms for the
License Agreement.
26
EXHIBIT D
THIRD PARTY MATERIALS
---------------------
See Exhibit B. The Documentation for each Product as listed in Exhibit B lists
any Third Party Materials for such Product.
27
EXHIBIT E
EXISTING LICENSING/MARKETING AGREEMENTS:
----------------------------------------
To the best of LTD's knowledge, after due diligence and investigation,
the existing licensing/marketing agreements are as attached hereto.
HSNS shall cooperate with LTD, and permit LTD to amend this Exhibit, to
the extent that additional existing licensing/marketing agreements are
identified after the date hereof which do not unreasonably interfere with HSNS's
rights hereunder.
EXHIBIT E
---------
AGREEMENT TYPE COMPANY NAME DATE
-------------- ------------ ----
IDV Adobe Systems, Inc. 6/15/96
MDI Adobe Systems, Inc. 9/26/97
NDA Applied Communications Concerts, Inc. 3/11/96
PDA Ball Corp. 9/7/94
CA Base-Ten Systems Inc. 9/2/94
PDA BellSouth 10/6/95
NDA Xxxx-Xxxxx & Xxxxxxxx Inc. 10/18/95
NDA Cambridge Parallel Processing Ltd. 11/5/95
CNCA Carolina First 5/14/98
NDA CBI Microsystems 7/29/97
NDA Century Business Services 3/2/98
PLA Chori America Inc. 5/15/98
SLA Clorepo Inc. 12/4/95
PLA Compaq Computer Corp. 2/21/97
Compression Systems 10/16/96
NDA CompuServe 3/15/96
SLA Computer Presentations Inc. 3/15/93
LMA Computer Presentations Inc. 12/9/94
SLA Concept Corp. 10/17/96
NDA Concurrent Computers 2/17/98
NDA Connectix Corp. 7/18/96
PDA Continuum Technology Corp. 8/17/95
PDA Conversant Systems 8/1/94
NDA Corel Corp. 1/19/96
SLA Corel Corp. 4/24/96
NDA CRYPTEK Secure Communications 3/31/98
NDA Cycore Computers 11/1/97
1
AGREEMENT TYPE COMPANY NAME DATE
-------------- ------------ ----
LA XXXX Commercial Credit 3/9/95
NDA Danzell Investment Management Co. 2/23/98
PLA Digital Equipment Corp. 7/24/97
PLA Digital Equipment Corp. 1/15/98
NDA Xxxxxxx Kodak Co. 10/29/97
NDA EDI of S.C. 7/11/97
PDA Envisage Systems Ltd. 1/29/96
XX Xxxxx Leasing Co. 10/23/95
NDA Fiber & Wireless Inc. 12/11/96
MOU/NDA Fiber & Wireless Inc. 8/11/97
NDA Friedman, Billings, Xxxxxx & Co. Inc. 2/3/98
SLA FujiFilm 4/7/97
NDA Fuji Medical Systems 8/6/97
SLA The Great Human Infocom 9/22/97
PDA Xxxxxx Corp. 1/19/94
NDA Xxxxxx Corp. 2/20/95
LA Harris Corp. 12/11/96
SLA Xxxxxx Corp. 2/24/97
NDA HAWA Communications Inc. 2/25/98
PNDA HDS 12/7/94
SLA HDS 5/11/95
NDA I/O Software Inc. 4/9/97
SLA IBM 11/30/95
LA Idmatics 12/8/97
NDA Image Data LLC 9/16/97
PDA Image etc. 10/2/95
SLA Image etc. 1/8/96
SLA Infogrames 3/15/96
NDA Information Sciences Group Inc. 7/23/97
NDA InMedia Presentations Inc. 6//9/97
SLA InMedia Presentations Inc. 7/2/97
NDA InSoft Inc. 4/24/96
NDA Infomedia Inc. 8/27/97
SLA Integrated Computing Engines Inc. 12/19/96
TRA Integrated Computing Engines Inc. 2/7/97
TRA Integrated Computing Engines Inc. 2/7/97
TRA Integrated Computing Engines Inc. 2/24/97
NDA Integrated Computing Engines Inc. 9/10/97
NDA Iomega 11/3/97
NDA Iomega 11/10/97
PDA ION Corp. 4/9/96
NDA IPIX 2/18/98
2
AGREEMENT TYPE COMPANY NAME DATE
-------------- ------------ ----
MOU Xxxxxx, Xxxxxxx, Xxxx P.A. 3/6/98
NDA Ledge Multimedia 8/25/97
NDA LG Electronics 4/29/96
NDA Live Pix Co. 5/15/97
NDA XxXxxxxxx Xxxxxxx Corp. 5/11/92
PDA Magnavox 7/1/93
RDA Magnavox 4/11/94
PDA Magnavox 5/26/94
SBA Magnavox 10/21/94
MOU Magnavox 1/13/95
LA Magnavox 8/11/95
NDA Medison 10/29/97
PNDA MEGA International Services Inc. 8/26/96
NDA Megahertz Corp. 11/7/94
NDA MicroSoft Corp. 11/7/96
LA Mitre Corp. 12/10/97
DA Motorola 8/16/95
PDA National Access 1/29/96
PDA Naval Undersea Warfare Center 9/21/95
PDA NBS 12/14/95
PNDA Odectics/Gyyr Inc. 12/1/95
NDA Old Dominion Funding Group 5/14/98
NDA Omni Vision Technologies Inc. 12/18/97
PDA OptiMed Tech 10/12/95
PDA Origin Ltd. 3/5/96
TPSA Panasonic Technologies Inc. 4/3/98
LA PassTech Inc. 8/11/97
SA PEN-TECH Associates Inc. 9/18/95
BNDA Philips Semiconductors 12/8/98
PNDA Photo Telesis Corp. 9/7/94
CA Prodigy Services Co. 7/27/95
PDA PROSTAR 2/1/96
MOU Prosolvia Research & Technology 4/9/97
Trm. Agrmnts. Pyrotechnix Inc. 2/28/96
Trm. Contrcts. Pyrotechnix Inc. 4/18/96
SLA Raytheon Co. 2/23/95
PDA Raytheon TI Systems Inc. 10/28/97
PLA Raytheon TI Systems Inc. 3/4/98
PDA Rockwell International 8/11/95
NDA SATC 10/8/97
PDA SCRA 7/18/95
NCNDCA Law Offices of Xxxxxx Xxxx 5/20/98
3
AGREEMENT TYPE COMPANY NAME DATE
-------------- ------------ ----
NCNDCA Law Offices of Xxxxxx Xxxx 5/20/98
PDA Seaside Consulting 3/4/96
SLA SEMS 7/11/96
NDA Sonetech Corp. 4/4/97
MOU Sonetech Corp. 8/12/97
NDA Surgical Navigation Technologies 2/6/98
LMA Symbol Technologies Inc. 9/17/96
ADS Symbol Technologies Inc. 7/22/97
NDA Tactics US 5/22/98
NDA Texas Xxxxxxx Co. Inc. 2/19/98
SLA 3D Cubed 12/1/97
USC 8/26/93
Research Arg. USC 7/21/97
USC 11/21/97
NDA Verinet Inc. 9/12/97
Settlmnt. Arg. Verinet Inc. 5/5/98
CA Virtual Resources Inc. 2/5/98
LMA Voxware Inc. 5/6/98
LMA Xxxxx Group Inc. 7/15/96
NDA White Pine Software 12/4/96
XXX Xxxxx Pine Software 3/6/97
NDA Winnov 11/1/96
TRA Winnov 4/5/97
NDA Xxxxxxx X. Xxxxxxxx & Co. Inc. 2/5/98
DDA Visualmail Systems Inc. 10/31/97
CA WorldScape L.L.C. 11/12/96
NDA WorldScape L.L.C. 7/15/97
NDA Xaos Tools 10/16/97
NDA Xxxxxx Xxxxxx 5/15/98
NDA Xxxxx Xxxxxx 2/24/98
Manufactures Sales Xxx Xxxxx 8/10/94
Agent Agreement
NDA Xxxx Xxxxx 5/20/98
Receipt for Xxxx Xxxxx 11/5/96
Software
Acknowledgement
Technical Rights Xxxxxx Xxxxxxxx 5/26/97
Agreement
NDA Xxxxxxx Xxxxxx 5/28/98
NDA Abe Ostovsky 2/13/98
NDA Xxxx Xxxxxx
NDA Xxxxx Xxxxxxxx 2/12/98
4
AGREEMENT TYPE COMPANY NAME DATE
-------------- ------------ ----
NDA B.W. Stuck 2/8/98
LMA Telia
LMA World Connect
LMA ICC
LMA BARAKA Intra Com
5
KEY:
---
ADS Agreement for Development Services
BNDA Bilateral Non-Disclosure Agreement
CA Confidentiality Agreement
CNCA Confidentiality and Non-Competition Agreement
DDA Development and Distribution Agreement
IDV Agreement for Receipt of Confidential Information
LA Lease Agreement
LMA License and Marketing Agreement
MDI Mutual Disclosure of Information
MOU Memorandum Agreement
NCNDCA Non-Circumvention, Non-Disclosure, and Confidentiality Agreement
NDA Non-Disclosure Agreement
PDA Proprietary Information Agreement
PLA Product Loan Agreement
PNDA Proprietary Non-Disclosure Agreement
RDA Research and Development Agreement
SA Sales Agreement
SBA Special Bailment Agreement
SLA Software License Agreement
Stt.A Settlement Agreement
TPSA Temporary Personnel Services Agreement
TRA Technical Rights Agreement
6
