TECHNOLOGY LICENSE
AND
DISTRIBUTION AGREEMENT
This Technology License and Distribution Agreement (the "Agreement") is
entered into this 28th day of March, 1997 (the "Effective Date") between
Sun Microsystems, Inc., acting by and through its JavaSoft business unit
("Sun") with its principal place of business at 0000 Xxxxxx Xxxxxx,
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000 and Xxxxxx Xxxxxx Marketing Corporation,
a Texas corporation with its principal place of business at 00000 Xxxxx
Xxxxxx, Xxxxxx, Xxxxx 00000 ("Licensee").
RECITALS
WHEREAS Sun wishes to license its JavaTM technology while maintaining
compatibility among Java language based products; and
WHEREAS Sun wishes to protect and promote certain trademarks used in
connection with Java technology; and
WHEREAS Licensee wishes to develop and distribute products based upon
Sun's Java technology;
NOW THEREFORE, Sun and Licensee enter into this Technology Licensing and
Distribution Agreement on the following terms.
1.0 DEFINITIONS
1.1 "Applet Application Programming Interface" or "AAPI" means (a) the
public application programming interface to the Java Applet Environment
reflected in the Technology as identified in Exhibit A, (b) the bytecode
specification in the Documentation entitled "Java Virtual Machine
Specification," (c) the Java language specification in the Documentation
entitled "Java Language Specification" and (d) the Java API
Specification; all as modified by Sun during the term of this Agreement.
1.2 "Applet" means a Java program which (i) conforms to the AAPI and
(ii) when compiled, consists of Java byte codes executable by the Java
Runtime Interpreter (but does not include or incorporate the Java Runtime
Interpreter or Java Classes).
1.3 "Derivative Work(s)" means: (i) for material subject to copyright or
mask work right protection, any work which is based upon one or more pre-
existing works of the Technology, such as a revision, modification,
translation, abridgement, condensation, expansion, collection,
compilation or any other form in which such pre-existing works may be
recast, transformed or adapted, (ii) for patentable or patented
materials, any adaptation, subset, addition, improvement or combination
of the Technology, and (iii) for material subject to trade secret
protection, any new material, information or data relating to and derived
from the Technology, including new material which may be protectable by
copyright, patent or other proprietary rights, and, with respect to each
of the above, the preparation, use and/or distribution of which, in the
absence of this Agreement or other authorization from the owner, would
constitute infringement under applicable law.
1.4 "Documentation" means the materials which Sun provides for use with
the Technology, as more particularly identified in Exhibit A.
1.5 "Field of Use" means the relevant market segments and/or product
areas identified in Exhibit B.
1.6 "Intellectual Property Rights" means all intellectual property
rights worldwide arising under statutory or common law, and whether or
not perfected, including, without limitation, all (i) patents, patent
applications and patent rights; (ii) rights associated with works of
authorship including copyrights, copyright applications, copyright
registrations, mask work rights, mask work applications, mask work
registrations; (iii) rights relating to the protection of trade secrets
and confidential information; (iv) any right analogous to those set forth
in this Section 1.6 and any other proprietary rights relating to
intangible property (other than trademark, trade dress, or service xxxx
rights); and (v) divisions, continuations, renewals, reissues and
extensions of the foregoing (as and to the extent applicable) now
existing, hereafter filed, issued or acquired.
1.7 "Java Applet Environment" or "JAE" means the combination of the Java
Runtime Interpreter and the Java Classes.
1.8 "Java Classes" means the Source Code (and corresponding binary code)
of the Java packages identified in Exhibit A I.a.
1.9 "Java Runtime Interpreter" means the Source Code (and corresponding
binary code) which implements the Java virtual machine, as specified in
the Java Virtual Machine Specification.
1.10 "Licensee Open Classes" means extensions, or additions to the Java
Classes developed by Licensee which extend the AAPI, and which are made
available to third parties for use in the development of additional
software which outputs Java bytecodes and/or runs on a Java compatible
Runtime Interpreter. Licensee Open Classes do not include interfaces
within Products developed by Licensee which are used only internally by
Licensee.
1.11 "Platform Dependent Part" means those Source Code files (and
corresponding binary code) of the JAE which are not in a "share"
directory or subdirectory thereof.
1.12 "Product(s)" means Licensee hardware or software into which the
Technology is included or integrated, in whole or in part. A "Product"
including or integrating the JAE, or any portion thereof must: (i) have a
principal purpose which is substantially different from that of the stand-
alone JAE; (ii) represent a significant functional and value enhancement
to the JAE; (iii) operate in conjunction with the JAE; and (iv) not be
marketed as a technology which replaces or substitutes for the JAE. A
current list of Product(s) is specified in Exhibit B, which may be
amended by Licensee to add Product(s) from time to time.
1.13 "Shared Part" means those Source Code files (and corresponding
binary code) of the JAE which are in any "share" directory or
subdirectory thereof.
1.14 "Source Code" means the human readable version, in whole or in part,
of the Technology whether supplied by Sun or any other Java licensee and
any corresponding comments and annotations.
1.15 "Technology" means the JAE and Updates to the extent that Licensee
is entitled to receive them hereunder.
1.16 "Trademarks" means all names, logos, designs, characters, and other
designations or brands used by Sun in connection with the Technology.
1.17 "Updates" means bug fixes, modifications, variations, and
enhancements, to the extent included in a patch or dot release of the
Technology for the platform(s) specified in Exhibit C, which Sun
generally licenses as part of the Technology. The term "Updates" does not
include ports of the JAE to platforms other than those for which the fees
have been paid as specified in Exhibit C.
2.0 LICENSE GRANTS
2.1 Source Code License
a. Subject to the terms and conditions contained in this Agreement and
subject to Licensee's payments specified in Exhibit C, Sun hereby grants
to Licensee, under and to the extent of Sun's Intellectual Property
Rights and solely for the Field(s) of Use specified in Exhibit B, a
perpetual, worldwide, non-exclusive, non-transferable license, without
the right to sublicense (except as specified in Section 2.1b.(ii)), to:
(i) use the Source Code for internal development and porting, (ii) modify
the Source Code to create Derivative Works (provided that Licensee shall
be limited solely to creating Derivative Works that constitute
Product(s), Licensee Open Classes, and Licensee-implemented modifications
to the Platform Dependent Part ("Permitted Derivative Works")), and (iii)
compile the Source Code and Permitted Derivative Works thereof.
Licensee may extend the AAPI by the development of Licensee Open Classes
provided that Licensee complies with the naming conventions of Section
2.5b. Except for the above-described extensions, Licensee shall have no
right to modify or subset the AAPI or to modify the functional behavior
of the Java Runtime Interpreter.Licensee may use the Source Code of the
Shared Part of the JAE to develop Product(s), Licensee Open Classes, and
Licensee-implemented modifications to the Platform Dependent Part, but if
it uses such Source Code, it must use all of it without modification.
Except as specified in Section 2.1b.(iii), Licensee shall have no right
to distribute the Source Code of the Technology, or Permitted Derivative
Works (to the extent that such Permitted Derivative Works include any of
the Source Code).
b. Porting.
(i) Licensee may port the Platform Dependent Part to platforms other
than those specified in Exhibit C.
(ii) If Licensee identifies any changes which are necessary to the
Shared Part to enable porting to other platforms, Sun will make
reasonable efforts to evaluate the feasibility of implementing such
changes or reclassifying the necessary code as Platform Dependent.
(iii) Licensee may sublicense and deliver a copy of the Source Code
of the Technology to third parties located in the United States only in
association with the delivery and sublicensing of Licensee Products, and
solely for the purpose of enabling such third party to port or localize
Products for Licensee. Any such sublicense shall be made no less
restrictive than the terms and conditions of this Agreement. Distribution
of Source Code outside the United States will require prior written
approval by Sun.
c. Bug Fixes. Licensee will inform Sun promptly, and no later than it
informs any third party, of any bugs identified in the Technology, and to
the extent that Licensee elects to correct such bugs, Licensee will make
the Source Code of such bug fixes promptly available to Sun free of all
restrictions as they are implemented.
2.2 Binary Code License
a. Internal Use. Sun hereby grants a non-exclusive, worldwide, fully
paid up license to reproduce and use an unlimited number of copies of the
Technology in binary form, for Licensee's internal use during the term of
this Agreement.
b. Worldwide Distribution. Sun hereby grants Licensee a worldwide,
nonexclusive license to distribute the Product(s), solely in binary form.
Licensee may use such distribution channels for binary distribution as
Licensee deems appropriate, including distributors, resellers, dealers
and sales representatives (collectively, "Distributors").
2.3 Documentation.
a. Sun hereby grants to Licensee, and Licensee hereby accepts, under
Sun's Intellectual Property Rights, a non-exclusive, non-transferable
license (i) to use the Documentation for internal development purposes,
(ii) to use, modify, translate, and subset the Documentation to create
technically accurate Licensee documentation and for on-line help messages
directly applicable to the Product(s) which shall include all the
relevant Sun copyrights, notices, and marks. Licensee is prohibited from
book publishing activities with respect to the Documentation. Licensee
may also use a pointer to the Sun Documentation on the Internet in
connection with distribution of the Product(s).
2.4 Compatibility
a. Java Compatibility.
(i) From time to time, Sun will make available test suites at no cost for
validating that the portion of Licensee's Product which interprets Java
bytecodes complies with the then-current AAPI as defined by Sun as of the
date of that test suite ("Java Test Suite").
(ii) Each version of a Product released by Licensee that interprets Java
bytecodes must pass a Java Test Suite that was current within one hundred
twenty (120) days before the beta release of such version of the Product.
(iii) If Licensee provides Sun with written notice of the existence of a
bug in a current Java Test Suite, then Licensee shall be released from
compatibility with the minimum portion of such Java Test Suite necessary
to avoid the impact of such bug, until such time as Sun provides to
Licensee a corrected or new Java Test Suite.
(iv) Licensee shall use a logo specified by Sun that indicates
compatibility with the Java Test Suite (the "Compatibility Logo") in a
trademark manner on all Licensee Product(s) which include or integrate
the JAE distributed hereunder. The terms and conditions governing the
parties' agreement as to trademarks, logos, and branding shall be
governed by the Trademark License entered into herewith, attached as
Exhibit F hereto, and incorporated by reference herein.
b. Applet Tag Compatibility. Any Product that reads or writes
hypertext markup language (HTML) or standard generalized markup language
(SGML) shall use the Document Type Definition ("DTD") as specified in
Exhibit E when referencing the Applet tag, unless another DTD is defined
for the Applet tag by an industry standard.
2.5. Licensee Open Classes
a. Licensee shall deliver to Sun free of all restrictions the
specification for the application programming interface for Licensee Open
Classes as early as is reasonably possible but in no event later than the
date on which it first provides such specification or an implementation
thereof to any third party developer. Included with such specification
shall be an appropriate test suite sufficiently detailed to allow Sun and
third parties to produce implementations compatible with the
specification. Licensee shall use its reasonable commercial efforts to
clarify and correct the specification or the test suite upon written
request by Sun Licensee agrees to refrain from enforcing any Intellectual
Property Rights that it might have relating to the specification of
Licensee Open Classes and test suites.
b. Licensee shall only use names for all Licensee Open Classes that
begin with "COM.Licensee" or such other convention as Sun may reasonably
require, and shall not modify or extend the public class or interface
declarations whose names begin with "java", "sun.hotjava", "COM.sun" or
their equivalents in any subsequent naming convention. Licensee will make
reasonable commercial efforts to ensure that other software which it
distributes conforms to this convention.
c. Licensee hereby grants a non-exclusive, worldwide, fully-paid-up
license to use an unlimited number of copies of the Licensee Open
Classes, in binary form, for Sun's internal use, such use including but
not limited to demonstration rights. Licensee agrees to reasonably
negotiate in good faith with Sun the terms of a commercial license for
the source code of the Licensee Open Classes. The parties agree that the
fees and other terms and conditions of this Agreement are a reasonable
standard against which to judge such a license on a proportionate basis
comparing the scope and complexity of the Licensee Open Classes being
licensed to the scope and complexity of the Technology.
2.6 Ownership
a. Ownership by Sun. Sun retains all right, title and interest in the
Technology, Documentation, Updates, bug fixes, Trademarks, and Derivative
Works, (except for Permitted Derivative Works), and associated
Intellectual Property Rights. Licensee agrees to execute (in recordable
form where appropriate) any documents Sun may reasonably request to
verify and maintain Sun's ownership rights, or to transfer any part of
the same which may vest in Licensee for any reason. Licensee further
agrees to promptly deliver to Sun any Derivative Works (except for
Permitted Derivatives) of the Technology created by Licensee pursuant to
and during the term of this Agreement. Sun shall have no obligations of
confidentiality to Licensee for such Derivative Works, nor shall Sun be
obligated to incorporate any such Derivative Works into the Technology.
b. Ownership by Licensee. Licensee retains all right, title and
interest in Permitted Derivative Works created by Licensee pursuant to
and during the term of this Agreement, subject to Sun's underlying rights
identified in Section 2.6a.
2.7 No Other Grant. Each party agrees that this Agreement does not
grant any right or license, under any Intellectual Property Rights of the
other party, except as expressly provided in this Agreement, and no other
right or license is to be implied by or inferred from any provision of
this Agreement or by the conduct of the parties.
2.8 Contractors. Licensee may retain third parties located in the
United States to furnish services to it in connection with the
development of Product(s); provided however, that all such third parties
shall execute appropriate documents: (i) acknowledging their work-made-
for-hire status and/or effecting assignments of all Intellectual Property
Rights with respect to such work to Licensee or Sun, as appropriate, and
(ii) undertaking obligations of confidentiality and non-use with respect
to such work. Sun may, upon its request, review any documents proposed
for use by Licensee prior to any use of such contractors.
2.9 Pre-Release. Licensee may release Product(s) based on alpha and
beta releases of the JAE licensed by Sun hereunder only for alpha or beta
testing Product(s).
3.0 UPDATES AND SUPPORT
During the term of the Agreement, Licensee shall offer adequate levels of
support to customers of the Products. Therefore, Licensee agrees to
contract for Full Support each year for the first two years and then
either Full Support or Limited Support for each remaining year at
Licensee's option.
3.1 Limited Support and Updates. Sun shall provide Licensee under the
terms and conditions of this Agreement, Updates, and email and telephone
support (during regular business hours PST) to answer questions related
to bugs identified in the Technology by Licensee. Licensee shall have
viewing access to the Sun Java web-site bug tracking database. Licensee
may designate a maximum of three (3) contacts within Licensee's
organization to interface with the Sun support engineer.
3.2 Full Support. Sun shall provide the equivalent of one half (1/2)
time engineer to support Licensee in addition to the Limited Support and
Updates specified above, during the term of this Agreement. The selection
of the support engineer shall be at Sun's sole discretion. The support
engineer will provide the following services:
a) arranging meetings or discussions with Sun technical and management
personnel;
b) response to bug reports from Licensee;
c) developing bug fixes;
d) bug tracking for releases
e) providing Updates as released;
f) providing interim releases if the need arises; and
g) providing existing and future Documentation.
4.0 PAYMENT
4.1 License and Support Fees. Licensee shall pay to Sun the License
fees set forth in Exhibit C within thirty (30) days from the Effective
Date of this Agreement. Licensee shall pay the annual Update and Support
fees in four (4) equal installments beginning thirty (30) days after the
Effective Date and each ninety (90) days thereafter during the term of
the Agreement.
4.2 Royalty Payments. Payment of royalties shall be made quarterly,
shall be due thirty (30) days following the end of the calendar quarter
to which they relate and shall be submitted with a written statement
documenting the basis for the royalty calculation.
4.3 Taxes. All payments required by this Agreement shall be made in
United States dollars, are exclusive of taxes, and Licensee agrees to
bear and be responsible for the payment of all such taxes, including, but
not limited to, all sales, use, rental receipt, personal property or
other taxes and their equivalents which may be levied or assessed in
connection with this Agreement (excluding only taxes based on Sun's net
income).
4.4 Records. Licensee shall maintain account books and records
consistent with Generally Accepted Accounting Principles appropriate to
Licensee's domicile, as may be in effect from time to time, sufficient to
allow the correctness of the royalties required to be paid pursuant to
this Agreement to be determined.
4.5 Audit Rights. Sun shall have the right to audit such accounts upon
reasonable prior notice using an independent auditor of Sun's choice (the
"Auditor"). The Auditor shall be bound to keep confidential the details
of the business affairs of Licensee and to limit disclosure of the
results of any audit to the sufficiency of the accounts and the amount,
if any, of a payment adjustment that should be made. Such audits shall
not occur more than once each year (unless discrepancies are discovered
in excess of the five percent (5%) threshold set forth in Section 4.6, in
which case two consecutive quarters per year may be audited). Except as
set forth in Section 4.6 below, Sun shall bear all costs and expenses
associated with the exercise of its rights to audit.
4.6 Payment Errors. In the event that any errors in payments shall be
determined, such errors shall be corrected by appropriate adjustment in
payment for the quarterly period during which the error is discovered. In
the event of an underpayment of more than five percent (5%) of the proper
amount owed, upon such underpayment being properly determined by the
Auditor, Licensee shall reimburse Sun the amount of said underpayment and
all reasonable costs and expenses associated with the exercise of its
rights to audit, and interest on the overdue amount at the maximum
allowable interest rate from the date of accrual of such obligation.
5.0 ADDITIONAL AGREEMENT OF PARTIES
5.1 Notice of Breach or Infringement. Each party shall notify the other
immediately in writing when it becomes aware of any breach or violation
of the terms of this Agreement, or when Licensee becomes aware of any
potential or actual infringement by a third party of the Technology or
Sun's Intellectual Property Rights therein.
5.2 Notices. Licensee shall not remove any copyright notices, trademark
notices or other proprietary legends of Sun or its suppliers contained on
or in the Technology or Documentation. Each unit of Product(s)
containing the Technology distributed by Licensee shall include in
Licensee's documentation, or in other terms and conditions of sale,
notices substantially similar to those contained on and in the
Technology. Licensee or its Distributors shall require an end user
license agreement for each unit of Product(s) shipped and Licensee shall
provide Sun with a copy of such form agreement for review and approval.
If Licensee or its Distributors use a package design or label for the
Product(s), such package design or label shall include an acknowledgement
of Sun as the source of the Technology and such other notices as
specified in Exhibit F. In addition, Licensee shall comply with all
reasonable requests by Sun to include Sun's copyright and/or other
proprietary rights notices on the Product(s), documentation or related
materials, including but not limited to the notices and acknowledgements
as specified in Exhibit F.
5.3 End User Support. Licensee shall provide technical and maintenance
support service for its distributors and end user customers in accordance
with Licensee's standard support practices. Sun shall not be responsible
for providing any support to Licensee's distributors or customers for the
Technology or the Product(s).
5.4 Marketing. Licensee will cooperate with Sun on mutually agreeable
marketing and promotional activities relating to the Technology.
Licensee's initial press announcement concerning execution of this
Agreement must be reviewed and approved by Sun prior to its release.
5.5 References to Licensee. Licensee hereby authorizes Sun to make
reference to Licensee as a user of the Technology in advertising,
marketing, collateral, customer lists and customer success stories
prepared by or on behalf of Sun for the Technology, provided that
Licensee will have the right to approve the use of its name, such
approval not to be unreasonably withheld or delayed.
6.0 LIMITED WARRANTY AND DISCLAIMER
6.1 Limited Warranty. Sun represents and warrants that the media on
which the Technology is recorded will be free from defects in materials
and workmanship for a period of ninety (90) days after delivery. Sun's
sole liability with respect to breach of this warranty is to replace the
defective media. Except as expressly provided in this Section 6.1, Sun
licenses the Technology and Documentation to Licensee on an "AS IS"
basis.
6.2 General Disclaimer. EXCEPT AS SPECIFIED IN THIS AGREEMENT, ALL
EXPRESS OR IMPLIED REPRESENTATIONS AND WARRANTIES, INCLUDING ANY IMPLIED
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NON-
INFRINGEMENT, ARE HEREBY DISCLAIMED.
6.3 Logo Disclaimer. SUN MAKES NO WARRANTIES OF ANY KIND RESPECTING THE
COMPATIBILITY LOGO(s), INCLUDING THE VALIDITY OF SUN'S RIGHTS IN THE
COMPATIBILITY LOGO(s) IN ANY COUNTRY, AND DISCLAIMS ANY AND ALL
WARRANTIES THAT MIGHT OTHERWISE BE IMPLIED BY APPLICABLE LAW, INCLUDING
WARRANTIES AGAINST INFRINGEMENT OF THIRD PARTY TRADEMARKS.
6.4 Limitation. The warranties set forth in this Section 6.0 are
expressly subject to Section 9.0 (Limitation of Liability).
7.0 CONFIDENTIAL INFORMATION
7.1 Confidential Information. For the purposes of this Agreement,
"Confidential Information" means the Technology and that information
which relates to (i) Sun hardware or software, (ii) Licensee hardware or
software, (iii) the customer lists, business plans and related
information of either party, and (iv) any other technical or business
information of the parties, including the terms and conditions of this
Agreement. In all cases, information which a party wishes to be treated
as "Confidential Information" shall be marked as "confidential" or
"proprietary" (or with words of similar import) in writing by the
disclosing party on any tangible manifestation of the information
transmitted in connection with the disclosure, or, if disclosed orally,
designated as "confidential" or "proprietary" (or with words of similar
import) at the time of disclosure. Sun has no obligation of
confidentiality to Licensee with respect to Derivative Works and the
specifications of the Licensee Open Classes.
7.2 Preservation of Confidentiality. The parties agree that all
disclosures of Confidential Information (as defined under Section 7.1
above) shall be governed by and treated in accordance with the terms of
the Confidential Disclosure Agreement (the "CDA") attached hereto as
Exhibit D and incorporated herein by reference, modified as follows:
(a) the definition of "Confidential Information" shall be as set forth
in Section 7.1 above notwithstanding any definition set forth in the CDA;
(b) the use of Confidential Information shall be limited to the scope of
the licenses provided in this Agreement;
(c) the obligations of confidentiality expressed in the CDA shall extend
three (3) years beyond termination of this Agreement, except with respect
to Sun Source Code which shall be held confidential in perpetuity; and
(d) the CDA shall remain in effect for the term of this Agreement.
8.0 LIMITED INDEMNITY
8.1 Licensee acknowledges that portions of the Technology may be in pre-
release form and that Sun shall not be liable for any defects or
deficiencies in the Technology or in any Product, process or design
created by, with or in connection with the Technology whether or not such
defects and/or deficiencies are caused, in whole or in part, by defects
or deficiencies in the design or implementation of the Technology. Sun
will provide to Licensee a limited indemnity as described in Sections 8.2-
8.5 below for the Technology as of the Effective Date.
8.2 Sun will defend, at its expense, any legal proceeding brought
against Licensee, to the extent it is based on a claim that use of the
FCS or subsequent version(s) of the Technology, (excluding pre-release
versions) ("FCS Technology") is an infringement of a Berne Convention
copyright, and will pay all damages awarded by a court of competent
jurisdiction attributable to such claim, provided that Licensee: (i)
gives notice of the claim promptly to Sun; (ii) gives Sun sole control
of the defense and settlement of the claim; (iii) provides to Sun, at
Sun's expense, all available information, assistance and authority to
defend; and (iv) has not compromised or settled such proceeding without
Sun's prior written consent.
8.3 Should any FCS Technology or any portion thereof become, or in Sun's
opinion be likely to become, the subject of a claim of infringement for
which indemnity is provided under Section 8.2, Sun shall, as Licensee's
sole and exclusive remedy, elect to: (i) obtain for Licensee the right
to use such FCS Technology; (ii) replace or modify the FCS Technology so
that it becomes non-infringing; or (iii) accept the return of the
Technology and grant Licensee a refund of the License Fee and royalties,
as depreciated on a five year straight-line basis.
8.4 Sun shall have no liability for any infringement or claim which
results from: (i) use of other than a current unaltered version of the
FCS Technology, if such version was made available to Licensee; (ii) use
of the FCS Technology in combination with any non-Sun-provided equipment,
software or data; or (iii) Sun's compliance with designs or
specifications of Licensee.
8.5 THIS SECTION STATES THE ENTIRE LIABILITY OF SUN WITH RESPECT TO
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS BY THE TECHNOLOGY. SUN
SHALL HAVE NO OTHER LIABILITY WITH RESPECT TO INFRINGEMENT OF
INTELLECTUAL PROPERTY RIGHTS OF LICENSEE OR ANY THIRD PARTY AS A RESULT
OF USE, LICENSE, OR SALE OF TECHNOLOGY.
8.6 Indemnity by Licensee. Except with respect to claims for which Sun
is obligated to indemnify Licensee pursuant to Section 8.2, Licensee
shall defend and indemnify Sun from any and all claims brought against
Sun by third parties, and shall hold Sun harmless from all corresponding
damages, liabilities, costs and expenses, (including reasonable
attorneys' fees) incurred by Sun arising out of or in connection with
Licensee's use, reproduction or distribution of the Technology or
Product(s), or Licensee Open Classes. Licensee's obligation to provide
indemnification under this Section shall arise provided that Sun: (i)
provides notice of the claim promptly to Licensee; (ii) gives Licensee
sole control of the defense and settlement of the claim; (iii) provides
to Licensee, at Licensee's expense, all available information, assistance
and authority to defend; and (iv) has not compromised or settled such
proceeding without Licensee's prior written consent.
9.0 LIMITATION OF LIABILITY
9.1 Limitation of Liability. Except for express undertakings to
indemnify under this Agreement and/or breach of Sections 2.4, 7.0 or 9.2:
a. Each party's liability to the other for claims relating to this
Agreement, whether for breach or in tort, shall be limited to the license
fees and royalties paid by Licensee for the Technology related to the
claims.
b. IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY INDIRECT, INCIDENTAL,
SPECIAL, CONSEQUENTIAL OR PUNITIVE DAMAGES IN CONNECTION WITH OR ARISING
OUT OF THIS AGREEMENT (INCLUDING LOSS OF PROFITS, USE, DATA, OR OTHER
ECONOMIC ADVANTAGE), NO MATTER WHAT THEORY OF LIABILITY, EVEN IF THE
EXCLUSIVE REMEDIES PROVIDED FOR IN THIS AGREEMENT FAIL OF THEIR ESSENTIAL
PURPOSE AND EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OR
PROBABILITY OF SUCH DAMAGES. FURTHER, LIABILITY FOR SUCH DAMAGE SHALL BE
EXCLUDED, EVEN IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN THIS AGREEMENT
FAIL OF THEIR ESSENTIAL PURPOSE. The provisions of this Section 9.0
allocate the risks under this Agreement between Sun and Licensee and the
parties have relied upon the limitations set forth herein in determining
whether to enter into this Agreement.
9.2 High Risk Activities. The Technology is not designed or intended
for use in on-line control of aircraft, air traffic, aircraft navigation
or aircraft communications; or in the design, construction, operation or
maintenance of any nuclear facility. Sun disclaims any express or
implied warranty of fitness for such uses. Licensee agrees that it will
not use or license the Technology for such purposes, and that it will
ensure that its licensees and end users of the Technology are provided a
copy of the foregoing notice.
10.0 TERM AND TERMINATION
10.1 Term. The term of this Agreement shall begin on the Effective Date
and shall continue for a period of five (5) years, or until terminated as
provided below. Each year for five (5) consecutive years following
expiration of the initial five (5) year term, at Licensee's sole option,
Licensee may extend the term of this Agreement for one (1) additional
year. Licensee shall indicate its intent to extend the Agreement by
written notice to Sun within thirty (30) days prior to the expiration of
the preceding term. Termination is permitted either for breach of this
Agreement, upon thirty (30) days written notice to the other party and an
opportunity to cure within such thirty (30) day period, or upon any
action for infringement of Intellectual Property Rights relating to the
Technology by Licensee against Sun or any of Sun's licensees of the
Technology.
10.2 Effect of Expiration. Upon expiration of this Agreement, Sun shall
retain use, under the terms of this Agreement, of the Intellectual
Property Rights received hereunder, and Licensee shall be authorized to:
(i) distribute Product(s) containing the version of the Technology
incorporated therein at the time of expiration, subject to Licensee's
continued compliance with the Test Suites current at the time of
expiration, and payment of royalties, and (ii) retain one (1) copy of the
Technology in Source Code form to support customers having copies of
Product(s) distributed by Licensee. All other rights of Licensee shall
terminate upon such expiration.
10.3 Effect of Termination. In the event of termination of this
Agreement by Sun in accordance with Section 10.1 above, Licensee shall
promptly: (i) return to Sun all copies of the Technology and Derivative
Works thereof in tangible or electronic form, Documentation, and
Confidential Information (collectively "Sun Property") (excluding
Licensee Open Classes and Licensee-implemented modifications to the
Platform Dependent Part) in Licensee's possession or control; or (ii)
permanently destroy or disable all copies of the Sun Property in
Licensee's possession or control, except as specifically permitted in
writing by Sun; and (iii) provide Sun with a written statement certifying
that Licensee has complied with the foregoing obligations. All rights and
licenses granted to Licensee shall terminate upon such termination.
10.4 No Liability for Expiration or Lawful Termination. Neither party
shall have the right to recover damages or to indemnification of any
nature, whether by way of lost profits, expenditures for promotion,
payment for goodwill or otherwise made in connection with the business
contemplated by this Agreement, due to the expiration or permitted or
lawful termination of this Agreement. EACH PARTY WAIVES AND RELEASES THE
OTHER FROM ANY CLAIM TO COMPENSATION OR INDEMNITY FOR TERMINATION OF THE
BUSINESS RELATIONSHIP UNLESS TERMINATION IS IN MATERIAL BREACH OF THIS
AGREEMENT.
10.5 No Waiver. The failure of either party to enforce any provision of
this Agreement shall not be deemed a waiver of that provision. The rights
of Sun under this Section 10.0 are in addition to any other rights and
remedies permitted by law or under this Agreement.
10.6 Survival. The parties' rights and obligations under Sections 2.0,
4.0, 5.2, 6.0, 7.0, 8.0, 9.0, 10.0, and 11.0 shall survive expiration or
termination of this Agreement, excluding in the event of breach by
Licensee, Licensee's rights under Section 2.0, which shall terminate.
10.7 Irreparable Harm. The parties acknowledge that breach of Sections
2.0, 5.2, 7.0, 9.2, or 11.6 may cause irreparable harm, the extent of
which would be difficult to ascertain. Accordingly, they agree that, in
addition to any other legal remedies to which a non-breaching party might
be entitled, such party may seek immediate injunctive relief in the event
of a breach of the provisions of such Sections.
11.0 MISCELLANEOUS
11.1 Notices. All notices must be in writing and delivered either in
person or by certified mail or registered mail, postage prepaid, return
receipt requested, to the person(s) and address specified below. Such
notice will be effective upon receipt.
Sun Licensee
Sun Microsystems, Inc. Xxxxxx Xxxxxx Marketing Corporation
0000 Xxxxxx Xxxxxx 00000 Xxxxx Xxxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000 Xxxxxx, Xxxxx 00000
Attn: JavaSoft Business Development Attn: Chief Operating Officer
cc: JavaSoft Legal Department cc: Legal Department
11.2 Partial Invalidity. If any term or provision of this Agreement is
found to be invalid under any applicable statute or rule of law then,
that provision notwithstanding, this Agreement shall remain in full force
and effect and such provision shall be deleted unless such a deletion
would frustrate the intent of the parties with respect to any material
aspect of the relationship established hereby, in which case, this
Agreement and the licenses and rights granted hereunder shall terminate.
11.3 Complete Understanding. This Agreement and the Exhibits hereto
constitute and express the final, complete and exclusive agreement and
understanding between the parties with respect to its subject matter and
supersede all previous communications, representations or agreements,
whether written or oral, with respect to the subject matter hereof. No
terms of any purchase order or similar document issued by Licensee shall
be deemed to add to, delete or modify the terms and conditions of this
Agreement. This Agreement may not be modified, amended, rescinded,
canceled or waived, in whole or part, except by a written instrument
signed by the parties.
11.4 Language. This Agreement is in the English language only, which
language shall be controlling in all respects, and all versions of this
Agreement in any other language shall be for accommodation only and shall
not be binding on the parties to this Agreement. All communications and
notices made or given pursuant to this Agreement, and all documentation
and support to be provided, unless otherwise noted, shall be in the
English language.
11.5 U.S. Government Restricted Rights. If Licensee is licensing
Product or accompanying documentation to or on behalf of the U.S.
Government, it shall be made subject to "Restricted Rights", as that term
is defined in the Federal Acquisition Regulations ("FARs") in paragraph
52.227-19(c)(2), or its equivalent paragraph in the DOD Supplement to the
FARs. Contractor/Manufacturer is: Sun Microsystems Inc., 0000 Xxxxxx
Xxx., Xxxxxxxx Xxxx, XX 00000.
11.6 Governing Law. This Agreement is made under and shall be governed by
and construed under the laws of the State of California, regardless of
its choice of laws provisions.
11.7 Compliance with Laws. The Technology, including technical data, is
subject to U.S. export control laws, including the U.S. Export
Administration Act and its associated regulations, and may be subject to
export or import regulations in other countries. Licensee agrees to
comply strictly with all such regulations and acknowledges that it has
the responsibility to obtain such licenses to export, re-export or import
the Technology or Product(s) as may be required after delivery to
Licensee.
Licensee shall make reasonable efforts to notify and inform its employees
having access to the Technology of Licensee's obligation to comply with
the requirements stated in this Section.
11.8 Disclaimer of Agency. Licensee is not authorized to make any
representation or warranty on behalf of Sun to its end users or third
parties. The relationship created hereby is that of licensor and licensee
and the parties hereby acknowledge and agree that nothing herein shall be
deemed to constitute Licensee as a franchisee of Sun. Licensee hereby
waives the benefit of any state or federal statutes dealing with the
establishment and regulation of franchises.
11.9 Delivery. As soon as practicable after the Effective Date, Sun shall
deliver to Licensee one (1) copy of each of the deliverables set forth in
Exhibit A. Licensee acknowledges that certain of the deliverables are in
various stages of completion and agrees to accept the deliverables as and
to the extent completed as of the date of delivery and "AS IS." In the
event any deliverable is already in the possession or custody of
Licensee, such item(s) shall, to the extent used in connection with the
rights granted in Section 2.0 above, be subject to the terms of this
Agreement, notwithstanding any pre-existing agreement or understanding
between Licensee and Sun with respect to such items.
11.10 Assignment and Change in Control. This Agreement may not be
assigned by either party without the prior written consent of the other
party except that Sun may assign this Agreement to a majority-owned
subsidiary.
11.11 Construction. This Agreement has been negotiated by Sun and
Licensee and by their respective counsel. This Agreement will be fairly
interpreted in accordance with its terms and without any strict
construction in favor of or against either party.
11.12 Force Majeure. Except for the obligation to pay money, neither
party shall be liable to the other party for non-performance of this
Agreement, if the non-performance is caused by events or conditions
beyond that party's control and the party gives prompt notice under
Section 11.1 and makes all reasonable efforts to perform.
11.13 Exhibits. The following are incorporated herein by reference
as integral parts of this Agreement:
Exhibit A - Description of Technology and Documentation
Exhibit B - Identification of Licensee Product(s) and Field(s) of Use
Exhibit C - Schedule of Fees and Royalties
Exhibit D - Confidential Disclosure Agreement
Exhibit E - Document Type Definition
Exhibit F - Trademark License
11.14 Section References. Any reference contained herein to a
section of this Agreement shall be meant to refer to all subsections of
the section.
11.15 No Competitive Restrictions. The Parties agree that nothing in
this Agreement is intended to prohibit Licensee from independently
developing or acquiring technology that is the same as or similar to the
Technology, provided that Licensee does not do so in breach of its
obligations under this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives.
Sun Microsystems, Inc. Licensee: Xxxxxx Xxxxxx Marketing Corporation
By:___/s/ Xxx Patch______ By:___/s/ F.Xxxxxxx Xxxxxxxxxx, Xx._______
Name:____Lee Patch_______ Name:__ F.Xxxxxxx Xxxxxxxxxx, Xx.______
(Print or Type) (Print or Type)
Title:___V.P., General Counsel_ Title:__V.P., Chief Financial Officer_____
Date:____3/28/97___ Date:______3/28/97__________________
EXHIBIT B
IDENTIFICATION OF LICENSEE PRODUCT(S) AND FIELD(S) OF USE
Any internet appliance designed, manufactured or distributed by Xxxxxx
Xxxxxx using the Xxxxxx Xxxxxx uniViewTM technology or derivatives
thereof, as well as connectivity to the Xxxxxx Xxxxxx XpresswayTM
backroom internet service provider operation.
EXHIBIT D
CONFIDENTIAL DISCLOSURE AGREEMENT
(to be attached)
EXHIBIT F
TRADEMARK LICENSE
Java-Compatible Logo
LICENSOR
SUN MICROSYSTEMS, INC.
0000 Xxxxxx Xxxxxx
Xxxxxxxx Xxxx, XX 00000
X.X.X.
(000) 000-0000
LICENSEE
XXXXXX XXXXXX MARKETING CORPORATION
00000 XXXXX XXXXXX
XXXXXX, XXXXX 00000
U.S.A.
TRADEMARK LICENSE
The following terms and conditions governing Java compatibility branding
and trademarks generally ("License") are incorporated by reference into
the Technology License and Distribution Agreement ("TLDA") between Sun
and Licensee, attached hereto. Where this License is more specific than
or inconsistent with the TLDA, the terms of this License shall govern.
Otherwise, the TLDA shall apply. The parties agree that:
1. DEFINITIONS
1.1.. "Branded Product" means all online software or tangible
copies or units of any version of Licensee's Products being distributed
in association with any Compatibility Logo.
1.2. "Compatibility Logo" means the Java-compatible logo supplied by
Sun to Licensee from time-to-time. The current version of the logo(s)
are depicted at the end of this License.
1.3. "Licensee's Products" means only the products described in
Exhibit B of the TLDA.
2. GRANT OF LICENSE
Sun grants to Licensee a non-exclusive, non-transferable, personal, paid-
up, royalty-free license, within the Territory in Section 3, to use the
Compatibility Logos ("License") as provided herein with respect to each
of Licensee's Products that fully meet the certification requirements of
Section 4. Licensee is granted no other right, title, or license to the
Compatibility Logos or any other Sun trademark, and is specifically
granted no right or license to sublicense the Compatibility Logos or any
other Sun trademarks. This License shall apply and pass through to
Licensee's distributors who distribute Licensee's Products as transferred
by Licensee (i.e., without any modifications to the Product, product
packaging, documentation or other materials) ("Distributors"). Licensee
shall provide notice of this License to and enforce its terms with
Distributors. Sun shall be entitled to enforce the terms of this License
directly against any Distributor in the event Licensee fails to do so.
All subsequent references herein to "Licensee" shall include and apply to
"Distributors".
3. TERRITORY
Licensee shall not use any Compatibility Logo on or in Licensee's
Products distributed via tangible media (e.g., CD or diskettes) or on any
other tangible materials (e.g., user documentation) in countries other
than those listed below ("Territory"), unless Sun expressly agrees in
writing beforehand to extend the Territory (which Sun may refuse to do in
its sole discretion). This territorial restriction shall not apply to on-
line distribution of Licensee's Products over the Internet. Licensee
shall pay all costs, including fees for legal services, registrations,
recordals, and foreign language translations associated with any
extension of the Territory requested by Licensee. Sun may eliminate any
country from the Territory if it determines in its sole judgement that
use or continued use of the Compatibility Logo in such country may
subject Sun or any third party to legal liability, or may jeopardize the
Compatibility Logos or any Sun trademark in that or any other country.
In such event, Licensee shall promptly cease all use of the Compatibility
Logos in such countries upon written notice from Sun.
Australia
Austria
Belgium
Benin
Netherlands
Luxembourg
Brazil
Burkino Faso
Cameroon
Canada
Central African Republic
Chad
Chile
China (P.R.C.)
Columbia
Congo
Czech Republic
Denmark
Egypt
France
Gabon
Germany
Greece
Guinea
Hong Kong
Hungary
India
Indonesia
Israel
Italy
Ivory Coast
Japan
Mali
Malaysia
Mauritania
Mexico
New Zealand
Niger
Norway
Philippines
Portugal
Russia
Senegal
Singapore
South Korea
Spain
Sweden
Switzerland
Taiwan
Thailand
Togo
Turkey
Ukraine
UAE
U.K.
United States
Venezuela
4. CERTIFICATION
License applies only to versions of Licensee's Products that have
successfully passed the relevant Test Suites made available by Sun to
Licensee pursuant to the TLDA, and which otherwise fully comply with all
other compatibility and certification requirements of the TLDA. Upon
thirty (30) days written notice by Sun no more than two (2) times per
calendar year, Licensee shall permit Sun to inspect and test any Branded
Products at a mutually-agreeable location to ensure that they meet the
compatibility requirements of the TLDA. Upon request by Sun, Licensee
shall promptly make any modifications to any version of a Branded Product
necessary for it to meet such compatibility requirements.
5. LOGO AND TRADEMARK USAGE
Licensee shall use the Compatibility Logos only as specified in any
guidelines or policies made by Sun concerning the appearance, placement
or use of the Compatibility Logos ("Logo Guidelines"). Licensee shall:
(i) use only approved logo artwork provided by Sun, (ii) for tangible
media, display the Compatibility Logos on external product packaging,
documentation, and media (disk, CD-ROM, tape, etc.); (iii) for online
versions of Licensee's Product, display the Compatibility Logos on web
pages featuring information about the Product in GIF images that point to
the current Sun Java page (xxxx://xxxx.xxx.xxx) via hypertext link; (iv)
for both tangible-media and online versions, display the Compatibility
Logos on "splashscreens" appearing upon launch of Licensee's Product, if
any, and in general product information screens (e.g., "About", "Help",
"Info"); (v) display the Compatibility Logos on tangible marketing
collateral featuring Licensee's Products, including advertisements and
datasheets; and (vi) not display Compatibility Logos more prominently or
larger than Licensee's company name/logo and product name/logo, wherever
displayed.
Licensee shall comply with the current versions of the Sun Trademark &
Logo Policies and the Java/HotJava Trademark Guidelines
[xxxx://xxxx.xxx.xxx/xx_xxxxxxxxxx.xxxx], including but not limited to
using the Java/HotJava xxxx as an adjective followed by generic
descriptors, marking the Java/HotJava xxxx with a TM symbol, and
attributing the Java/HotJava xxxx as a trademark of Sun Microsystems,
Inc. in a legend on packaging, splashscreens, web page, and other
collateral and materials. Licensee may not include any Sun trademark
(e.g., Sun, Java, HotJava, Solaris, etc.) in Licensee's company, business
or subsidiary names, or in the name of any of Licensee's products,
services, technologies, or web pages. Licensee shall promptly modify any
usage and any material that does not conform to the Logo Guidelines, the
Sun Trademark & Logo Policies, or the Java/HotJava Trademark Guidelines
upon notice from Sun specifying the non-conformance. Licensee shall
notify its distributors and customers of any such non-conformance as to
materials or products already distributed, as may be reasonably requested
by Sun.
6. PROTECTION OF TRADEMARKS AND LOGOS
Sun is the sole owner of the Compatibility Logos (including the marks
depicted therein) and all goodwill associated therewith. Licensee's use
of the Compatibility Logos inures solely to the benefit of Sun. Licensee
shall not do anything that might harm the reputation or goodwill of the
Compatibility Logos. Licensee shall not challenge Sun's rights in or
attempt to register the Compatibility Logos, or any other name or xxxx
owned by Sun or substantially similar thereto. Licensee shall take no
action inconsistent with Sun's rights in the Compatibility Logos. If at
any time Licensee acquires any rights in, or registrations or
applications for, the Compatibility Logos by operation of law or
otherwise, it will immediately upon request by Sun and at no expense to
Sun, assign such rights, registrations, or applications to Sun, along
with any and all associated goodwill. Licensee shall assist Sun to the
extent reasonably necessary to protect and maintain the Compatibility
Logos worldwide, including but not limited to giving prompt notice to Sun
of any known or potential infringement of the Compatibility Logos, and
cooperating with Sun in the preparation and execution of any documents
necessary to record this License as may be required by the laws or rules
of any country. Sun may at its option commence, prosecute or defend any
action or claim concerning the Compatibility Logos in the name of Sun or
Licensee, or join Licensee as a party thereto. Sun shall have the right
to control any such litigation. Licensee shall not commence any action
regarding the Compatibility Logos. Sun shall reimburse Licensee for the
reasonable costs associated with providing such assistance, except to the
extent that any such costs result from a breach of the License by
Licensee.
IN WITNESS WHEREOF, the parties hereby execute this Agreement through the
authorized representatives whose names appear below.
Sun Microsystems, Inc. Licensee: Xxxxxx Xxxxxx Marketing Corporation
By:___/s/ Xxx Patch______ By:___/s/ F.Xxxxxxx Xxxxxxxxxx, Xx._______
Name:____Lee Patch_______ Name:__ F.Xxxxxxx Xxxxxxxxxx, Xx.______
(Print or Type) (Print or Type)
Title:___V.P., General Counsel_ Title:__V.P., Chief Financial Officer_____
Date:____3/28/97___ Date:______3/28/97__________________
COMPATIBILITY LOGOS LICENSED HEREUNDER
