EXHIBIT 10.20
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("AGREEMENT") is entered as of December 16, 1996
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between VeriSign, Inc., a Delaware corporation ("VSI"), having a principal
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mailing address at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and
VeriSign Japan KK, a corporation incorporated under the laws of Japan ("VSJ"),
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having a principal mailing address of ▇-▇▇-▇ ▇▇▇▇▇▇-▇▇▇▇▇▇, ▇▇▇▇▇▇-▇▇, ▇▇▇▇▇
▇▇▇, ▇▇▇▇▇.
WHEREAS, the parties acknowledge the existence of an oral agreement for the
license made by and between VSI and VSJ before the date hereof, and
WHEREAS, both VSI and VSJ are desirous of drawing up this written agreement
which clarifies matters dealt with in, and replaces in its entirety, the oral
agreement between VSI and VSJ,
VSI and VSJ agree as follows:
1. DEFINITIONS
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Capitalized terms when used in this Agreement shall have the meanings shown
in Exhibit "A" hereto.
2. GRANT OF LIMITED LICENSES AND DISTRIBUTION RIGHTS
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2.1 OBJECT CODE LICENSE. VSI hereby grants VSJ a non-transferable
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(except as provided in Section 9.2), license exclusive in the Territory during
the term specified in Section 8 to:
2.1.1 Incorporate the Root Keys and VSI Object Code into VSJ
Products to create Bundled Products.
2.1.2 Adapt, enhance, improve or modify the VSI Software in order to
create VSJ Modifications.
2.1.3 Reproduce and have reproduced the Root Keys, the VSI Object
Code, the VSJ Modifications and Translated Versions incorporated in Bundled
Products, and VSI Object Code separately from a Bundled Product, and the User
Manual as reasonably needed for inactive backup or archival purposes.
2.1.4 Reproduce, have reproduced, and sublicense or otherwise
distribute the Root Keys, the VSI Object Code, the VSJ Modifications and
Translated Versions incorporated in Bundled Products, and VSI Object Code
separately from a Bundled Product, and User Manuals.
2.1.5 Translate, or contract for translation of, the User Manual and
the CPS into the Japanese language to create a Translated Version.
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2.1.6 Use, copy, modify, and create derivative works of, the CPS
solely for use in creating Protocols for use by VSJ in providing Private Label
Certificate System services to VSJ's customers.
2.1.7 Use the CPS policies and procedures to provide Public
Certificate services to VSJ's customers.
2.2 LIMITATIONS ON LICENSES. The licenses granted in Section 2.1 shall
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be limited as follows:
2.2.1 Portions of the VSI Object Code which have been licensed to
VSI by third parties may be incorporated into VSJ Products only to the extent
permitted by VSI's licenses with such third parties.
2.2.2 VSJ may not reverse engineer, decompile or disassemble the VSI
Object Code or any part thereof.
2.2.3 Sublicenses of the VSI Object Code and Bundled Products,
including Translated Versions, shall be granted only to (i) Distributors and
(ii) End User Customers. Sublicenses shall prohibit Distributors and End Users
Customers from making any modification to any part of the VSI Object Code or any
Bundled Product, including Translated Versions.
2.2.4 VSJ may sublicense the VSI Object Code and Bundled Products,
including Translated Versions, only to customers whose business is primarily
located in the Territory for use in the Territory and for use outside the
Territory only to the extent such use is ancillary to its business in the
Territory.
2.2.5 VSJ may not make modifications of any kind to the Root Keys,
and shall prohibit Distributors and End User Customers from making any
modification to the Root Keys.
2.2.6 VSJ may not in any way sell, rent, license, sublicense or
otherwise distribute the Root Keys or any part thereof or the right to use the
Root Keys or any part thereof as a stand-alone product to any person or entity.
2.2.7 VSI shall publish the Certification Practice Statement ("CPS")
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on the Internet at ▇▇▇▇://▇▇▇.▇▇▇▇▇▇▇▇.▇▇▇. The CPS is incorporated into this
Agreement by reference. VSI may modify or amend the CPS incorporated into the
terms of this Agreement, effective upon publication on the Internet. No change
to the CPS made by VSI will cause any change to the fees specified in Section 3
of this Agreement. VSJ shall be entitled to create a Translated Version of the
CPS which is localized for the laws and practices of Japan (a "LOCALIZED CPS")
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provided that VSJ shall obtain VSI's prior written consent prior to making any
change or modification to the Localized CPS which deviates from the CPS for the
purpose of conforming the CPS to the laws and practices of Japan. The exercise
of the rights granted to VSJ pursuant to this Section 2 shall at all times
conform to the Localized CPS. Each Certificate issued will contain information
tying the Certificate to the version of the Localized CPS in
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effect at the time of issuance of the Certificate. VSJ shall promptly modify or
amend the Localized CPS to reflect any modification or amendment to the CPS made
by VSI and shall obtain VSI's written consent prior to publication of such
modification or amendment for any deviation of the modification or amendment to
the Localized CPS from the corresponding modification or amendment to the CPS.
2.2.8 VSJ may not copy or reproduce the Licensed Products or any
part, version or form thereof, except as expressly permitted in Section 2.1.
2.2.9 VSI expressly reserves the right to enter into OEM license
agreements for the Licensed Products with customers who have business operations
on a worldwide scale, including in the Territory, provided the business of such
customers is primarily located outside the Territory.
2.3 TRADEMARK LICENSE. VSI hereby grants VSJ and its Distributors a
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license exclusive in the Territory during the term specified in Section 8 to use
the name and ▇▇▇▇ "VeriSign" and its Japanese transliteration (collectively the
"TRADEMARK") as part of the VSJ's trade name and in conjunction with the VSJ's
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marketing of the Products in the Territory. The Trademark is and will remain
the exclusive property of VSI whether or not specifically recognized or
registered under applicable law. VSI shall be responsible for ensuring that the
Trademark is and continues to be validly registered in Japan in the name of VSI
during the term of this Agreement, and VSI shall pay all costs and expenses
associated with the application for and maintenance of such registration. VSJ
will not take any action that jeopardizes the proprietary rights in, or acquire
any right to, the Trademark of VSI except for the limited use rights granted in
this Section 2.3. VSJ will not register, directly or indirectly, any trademark,
service ▇▇▇▇, trade name, company name or other proprietary or commercial right
which is identical or confusingly similar to the Trademark. All advertisements
and promotional materials will (i) clearly identify VSI as the owner of the
Trademark, (ii) conform to VSI's then-current trademark usage guidelines and
(iii) otherwise comply with any applicable local notice or marking requirements.
Before publishing or disseminating any advertisement or promotional materials
bearing the Trademark, VSJ will deliver a copy of the advertisement or
promotional materials to VSI for approval. If VSI gives notice that the
proposed use of its Trademark is inappropriate, VSJ will refrain from placing
the advertisement or promotional material in circulation until such time as it
has received VSI's approval. Products resold and sublicensed by a Distributor
shall bear VSI's trademarks and service marks and shall not be privately labeled
by such Distributor or other parties. VSJ shall cause Distributors to comply
with the requirements of this Section 2.3.
2.4 TITLE.
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2.4.1 Except for the limited licenses granted in Sections 2.1 and
2.3, VSI shall at all times retain full and exclusive right, title and ownership
interest in and to the Root Keys, VSI Software, and User Manual and in any and
all related patents, trademarks, copyrights or proprietary or trade secret
rights. All references to sales, purchases and similar terms are not to be
construed as transferring any rights in the VSI Software or the User Manual.
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2.4.2 VSJ hereby assigns and transfers exclusively to VSI, its
successors and assigns, all Intellectual Property Rights VSJ may now or
hereafter have in a Translated Version and a VSJ Modification, and all portions
and copies thereof in any form, to the full extent permitted under applicable
law as set forth in Exhibit "E".
2.5 DISTRIBUTION RIGHTS. VSI hereby grants VSJ a royalty-free right to
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distribute the Hardware in the Territory, subject, however, to the rights of BBN
Communications, a division of Bolt ▇▇▇▇▇▇▇ and ▇▇▇▇▇▇, Inc. and affiliated
entities ("BBN"), as set forth in the Source Code Software License Agreement
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between BBN Communications and RSA Data Security, Inc. ("RSA") dated October 5,
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1992, the Value-Added Reseller Agreement between BBN Communications and RSA
dated October 7, 1992 and the Software License Agreement between BBN Systems and
Technologies and RSA dated September 22, 1994. To the extent possible, VSI will
pass through to VSJ any warranties on the Hardware received from BBN or any
other supplier of the Hardware.
2.6 MODIFICATIONS OF VSI SOFTWARE. VSI agrees to cooperate with VSJ in
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preparing modifications of VSI Software to meet local needs of VSJ. VSI will
use reasonable efforts to accommodate any VSJ request for modification of VSI
software to meet VSJ local needs. VSJ requests for modification of VSI Software
to meet VSJ local needs shall not be based on particular requirements of a
single customer of VSJ but rather on more general requirements of the market in
the Territory. VSJ may, upon reasonable written notice and for the purpose of
assisting in development of modifications to the VSI Software to meet VSJ's
local needs, provide a reasonable number of technical personnel to participate
in development of such modifications, but VSI shall have the right to determine
in its sole discretion the number of VSJ personnel accepted to participate in a
development of a particular modification. Upon receiving a written request from
VSJ for such modifications, which request shall not be unreasonably refused, VSI
will provide within ninety (90) days, a schedule detailing the time frame within
which time the request will be fulfilled. Should the request be refused, VSI
shall provide written notification of the refusal to VSJ within forty-five (45)
days detailing the reasons for rejecting the request and giving details of such
modifications as are necessary to make the request acceptable. To the extent
VSJ personnel are provided pursuant to this section, such personnel shall be
provided solely at VSJ's cost, and, upon request, VSJ shall provide evidence of
satisfaction of all state and federal employment and immigration laws and worker
compensation requirements in connection with such personnel. VSJ may request
VSI's assistance in obtaining such evidence. Such personnel shall execute
confidentiality agreements as VSI shall reasonably request and shall agree to
abide by all reasonable VSI visitor regulations. VSJ understands that VSI
operates a secure facility and that there are portions of such facility that
VSJ's personnel will not be permitted to enter. In the event that VSI
determines that any of VSJ's personnel has, without legitimate excuse, breached
a VSI visitor regulation, VSI shall advise VSJ of such breach, and VSJ shall
immediately cause such person to be removed from VSI's facility, and may provide
a replacement. In the event that VSI decides, in its sole discretion, to
implement any modifications to VSI Software which result from participation of
VSJ personnel in development into the VSI Software for use outside the
Territory, VSI will negotiate in good faith with VSJ with respect to bearing an
appropriate portion of the cost of such VSJ personnel participation.
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2.7 CROSS LICENSE. VSJ and VSI shall conduct semi-annual reviews of the
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software and technology possessed or used by VSJ for the purpose of determining
whether such software and technology should be the proprietary property of VSI
or VSJ. VSI shall have sole authority to determine ownership. VSI and VSJ
agree to enter into a cross-license agreement whereby (i) VSI agrees to license
to VSJ for use and sublicense in the Territory improvements to the VSI Software
developed by VSI and not otherwise licensed to VSJ hereunder and additional
software created by VSI, both only so long as VSI's ownership of the outstanding
shares of VSJ's capital stock (calculated on a fully-diluted basis after giving
effect to the exercise of all options, warrants or other rights to purchase
shares of VSJ capital stock and the conversion of all securities convertible
into shares of VSJ's capital stock) exceeds fifty percent (50%) and (ii) VSJ
agrees to license to VSI for use and sublicense outside of the Territory all
additional software products created by VSJ. The parties agree to negotiate
appropriate terms, including royalty rates, and the cross-licenses will be on
commercial terms similar to the terms of this Agreement, provided, however, that
the license from VSJ to VSI shall be non-exclusive.
2.8 ASSIGNMENT. VSI hereby assigns to VSJ all of its right, title and
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interest in the contract entitled "RSA Commercial Hierarchy Certifier Agreement"
executed between RSA Data Security, Inc. ("RSA") and NTT Electronics dated
January 10, 1995, which was assigned by RSA to VSI by written assignment dated
April 17, 1995. VSJ hereby assumes all outstanding liabilities and obligations
of VeriSign under such contract.
2.9 OPTION FOR NON-EXCLUSIVE RIGHTS OUTSIDE THE TERRITORY. VSJ shall
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have the right to request, and VSI agrees to consider on a case-by-case basis,
an expansion of rights granted to VSJ pursuant to this Section 2 to countries
outside the Territory on a non-exclusive basis.
3. LICENSE AND OPERATIONS FEES
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3.1 LICENSE AND OPERATIONS FEES. In consideration of the grant of the
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licenses by VSI to VSJ and the operations support and maintenance under this
Agreement, VSJ shall pay to VSI the following license and operations fees
("LICENSE AND OPERATIONS FEES"):
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3.1.1 An annual License and Operations Fee, for the initial five (5)
year period, in the following amounts shall be payable in equal quarterly
installments due at the beginning of each calendar quarter, with the full amount
for Year 1 and the initial installment for the second year due on the date of
execution of this Agreement:
Year 1 (Calendar Year 1996): $150,000.00
Year 2 (Calendar Year 1997): $250,000.00
Year 3 (Calendar Year 1998): $350,000.00
Year 4 (Calendar Year 1999): $450,000.00
Year 5 (Calendar Year 2000): $450,000.00
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After payment of the amounts set forth above in this Section 3.1.1 for the
initial five (5) year period, the annual License and Operations Fees shall be
considered fully paid.
3.1.2 A royalty in the amount of Twenty Percent (20%) of the End
User Price for Public Certificates issued by VSJ or a Distributor in 1997 or
1998 and for each renewal thereof. Royalties for years after 1998 shall be as
agreed between the parties.
3.1.3 A royalty in the amount of Fifteen Percent (15%) of the End
User Price for Private Certificates or Custom Public Certificates issued by VSJ
or a Distributor in 1997 or 1998 and for each renewal thereof. Royalties for
years after 1998 shall be as agreed between the parties.
3.1.4 A royalty in the amount of Twenty Percent (20%) of the End
User Price of all ECAS licenses by VSJ or a Distributor in 1997 or 1998.
Royalties for years after 1998 shall be as agreed between the parties.
3.1.5 A royalty in the amount of Fifteen Percent (15%) on all CPS
consulting fees collected by VSJ for CPS consulting services provided by VSJ.
3.1.6 License and Operation Fees or royalties provided in this
Section 3.1 may be reduced in order to maintain VSJ's competitiveness in the
Territory by a joint determination by VSI and VSJ of the reasonableness of such
reduction. VSJ may notify VSI of its request for such reduction. Upon VSI's
receipt of such request, the parties shall in good faith review the situation
and discuss possible reduction of the License and Operation Fees or royalties.
3.2 HARDWARE. VSI will provide the Hardware to VSJ at the cost VSI pays
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to BBN (or any other supplier of the Hardware), as such cost may change from
time to time, plus twenty percent (20%) to cover shipping and handling
("HARDWARE FEES").
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3.3 TAXES. In the event that the Japanese government imposes any income
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taxes on any part of the License and Operations Fees and requires VSJ to
withhold such tax from payments to VSI, VSJ shall withhold such tax from the
payments and promptly furnish VSI with tax receipts issued by appropriate tax
authorities so as to enable VSI to support a claim for credit against income
taxes which may be paid by VSI. All taxes (other than such withheld Japanese
income taxes), duties, fees and other governmental charges of any kind
(including sales and use taxes, but excluding United States or California taxes
based on the gross revenues or net income of VSI) which are imposed by or under
the authority of any government or any political subdivision thereof on the
License and Operations Fees or any aspect of this Agreement shall be borne by
VSJ and shall not be considered a part of, a deduction from or an offset
against, the License and Operations Fees.
3.4 TERMS OF PAYMENT. Annual License and Operations Fees pursuant to
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Section 3.1.1 shall be payable in equal quarterly installments due at the
beginning of each calendar quarter. Royalties due pursuant to Sections 3.1.2,
3.1.3, 3.1.4 and 3.1.5 shall accrue with respect to Certificates, ECAS licensed
or otherwise distributed by VSJ or Distributors or CPS consulting fees upon the
date of
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issuance for the Certificates, upon the date of invoice for ECAS, to an End User
Customer or Distributor, and upon the date CPS consulting fees are collected by
VSJ. Hardware Fees due pursuant to Section 3.2 shall accrue when VSJ receives an
invoice from VSI. Such Royalties and Hardware Fees shall be paid by VSJ to VSI
at VSI's address set forth above on or before the thirtieth (30th) day after the
close of the calendar quarter during which the fees accrued.
3.5 U.S. CURRENCY. All payments hereunder shall be made in lawful United
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States currency. For payments received by VSJ in currencies other than United
States currency, the amount of VSJ's License and Operations Fees to VSI shall be
calculated using the closing TTS exchange rate published in The Wall Street
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Journal Western Edition on the last business day such journal is published in
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the calendar quarter immediately preceding the date of payment. To the extent
the exchange rate of Japanese yen to U.S. dollars is greater or lesser than
112(Yen) to $1 U.S. at the time a payment amount for License and Operations Fees
payable pursuant to Section 3.1.1 is to be calculated, VSI and VSJ agree to
split on a fifty-fifty basis the difference between (a) the payment amount
calculated at the exchange rate of 112(Yen) to $1 U.S. and (b) the payment
amount calculated at the closing TTS exchange rate described in the previous
sentence. The exchange rate adjustment set forth in the preceding sentence
shall apply only to License and Operations Fees payable pursuant to Section
3.1.1 and not to royalties payable pursuant to Sections 3.1.2, 3.1.3, 3.1.4 or
3.1.5 or to Hardware Fees payable pursuant to Section 3.2.
3.6 LICENSING REPORT. A report in reasonably detailed form setting forth
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the calculation of royalties due from VSJ pursuant to Sections 3.1.2, 3.1.3,
3.1.4 and 3.1.5 and signed by a responsible officer of VSJ shall be delivered to
VSI on or before the thirtieth (30th) day after the close of each calendar
quarter during the term of this Agreement, regardless of whether royalty
payments are then required to be made pursuant to Sections 3.1.2, 3.1.3, 3.1.4
or 3.1.5. The report shall include, at a minimum, the following information (if
applicable to the calculation of such royalties) with respect to the relevant
quarter: (i) the total number of Certificates issued and renewed (indicating the
number of Public and Private Certificates); (ii) the total End User Price for
Certificates, ECAS invoiced to Distributors and End User Customers; (iii) total
royalties accrued; (iv) total CPS consulting fees collected by VSJ; and (v) such
other information as reasonably requested by VSI.
3.7 AUDIT RIGHTS. VSI shall have the right, at its sole cost and
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expense, to conduct during normal business hours and not more frequently than
annually, an audit of the appropriate records of VSJ to verify the number of
Certificates, and copies/units of ECAS, licensed or otherwise distributed by VSJ
and Distributors and the End User Price therefor. If such amounts are found to
be different than those reported, or the License and Operations Fees and
royalties accrued are different than those reported, VSJ will be invoiced or
credited for the difference, as applicable. Any additional License and
Operations Fees and royalties shall be payable within thirty (30) days of such
invoice. If the deficiency in License and Operations Fees and royalties paid by
VSJ is greater than five percent (5%) of the License and Operations Fees and
royalties reported by VSJ for any quarter, VSJ will pay the reasonable expenses
associated with such audit, in addition to the deficiency.
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4. OPERATIONS SUPPORT AND MAINTENANCE
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4.1 MAINTENANCE. VSI shall provide maintenance for the VSI Software as
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set forth in Section 4.3 for no charge in addition to the annual License and
Operations Fees. VSI shall use reasonable efforts to cause BBN to provide
maintenance for the Hardware, and VSI shall liaise with BBN in relation to
maintenance on behalf of VSJ. VSI may cease to offer maintenance for any
version of any VSI Software by notice delivered to VSJ ninety (90) days before
such cessation if VSI generally ceases to offer maintenance to its licensees of
the same version or product. The limited warranty in Section 7.1 shall not
affect VSI's maintenance obligations under this Section 4.
4.2 ADDITIONAL CHARGES. In the event VSI is required to take actions to
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correct a difficulty or defect which is traced to VSJ errors, modifications,
enhancements, software or hardware, then VSJ shall pay to VSI its time and
materials charges at VSI's rates then in effect. In the event VSI's personnel
must travel to perform maintenance or on-site support, VSJ shall reimburse VSI
for any reasonable out-of-pocket expenses incurred, including travel to and from
VSJ's sites, lodging, meals and shipping, as may be necessary in connection with
duties performed under this Section 4 by VSI.
4.3 OPERATIONS MAINTENANCE AND SUPPORT PROVIDED BY VSI. For all portions
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of the VSI Software as to which maintenance is in effect, VSI will provide VSJ
with the following services:
4.3.1 On VSJ's request, VSI shall provide in writing within a
reasonable time the names of personnel assigned to give general support to VSJ
as provided in this Section 4.3. On VSI's request, VSJ will provide a list with
the names of the employees designated to receive support from VSI. Either party
may change the names on such lists at any time by providing written notice to
the other party.
4.3.2 VSI will provide telephone support to VSJ during VSI's normal
business hours. VSI shall provide the support specified in this Section 4.3.2
to VSJ's employees responsible for developing Bundled Products, maintaining
Bundled Products, and providing support to End User Customers.
4.3.3 VSI shall inform VSJ in writing of current and impending
changes in the area of technology relevant to a particular support request by
VSJ. VSI will also notify VSJ within a reasonable time of impending actions by
VSI that VSI has reason to believe will have a direct impact on VSJ's
activities.
4.3.4 In the event VSJ discovers an error in the VSI Software which
causes the VSI Software not to operate in material conformance to VSI's
published specifications therefor, VSJ shall submit to VSI a written report
describing such error in sufficient detail to permit VSI to reproduce such
error. Upon receipt of any such written report, VSI will use its reasonable
business judgment to classify a reported error as either: (i) a "Level 1
Severity" error, meaning an error that causes the VSI Software to fail to
operate in a material manner or to produce materially incorrect results and for
which there is no workaround or only a difficult workaround; or (ii) a "Level 2
Severity" error, meaning an error that produces a situation in which the VSI
Software is usable but does not function in the most convenient or expeditious
manner, and the use or value of the VSI Software suffers no material impact.
VSI will
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acknowledge receipt of a conforming error report within two (2) business days
and (A) will use its continuing best efforts to provide a correction for any
Level 1 Severity error to VSJ as early as practicable; and (B) will use its
reasonable efforts to include a correction for any Level 2 Severity error in the
next release of the VSI Software.
4.3.5 Nothing contained in this Agreement shall obligate VSI to
provide, or to incur any cost or expense associated with, the start-up costs for
databases, porting of software code, or other cryptography not included in the
Licensed Products, the responsibility for all of which shall remain with VSJ at
its sole cost and expense unless otherwise agreed by VSI and VSJ, or to the
extent provided in Section 2.6.
4.4 TRAINING. At VSJ's request, VSI will provide the training specified in
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this Section 4.4 to VSJ employees at VSI's facilities. Training will be in the
areas of Private Label services engineering, operations, sales and marketing. In
order to meet VSJ's local needs, VSJ may, upon reasonable written notice,
propose a reasonable number of personnel to participate in training specified in
this Section 4.4. Based on availability of resources, VSI in its sole discretion
shall have the right to determine the number of VSJ personnel accepted to
participate in training at a particular time. To the extent VSJ personnel are
provided pursuant to this section, such personnel shall be provided solely at
VSJ's cost, and, upon request, VSJ shall provide evidence of satisfaction of all
state and federal employment and immigration laws and worker compensation
requirements in connection with such personnel. VSJ may request VSI's assistance
in obtaining such evidence. Such personnel shall execute confidentiality
agreements as VSI shall reasonably request and shall agree to abide by all
reasonable VSI visitor regulations. VSJ understands that VSI operates a secure
facility and that there are portions of such facility that VSJ's personnel will
not be permitted to enter. In the event that VSI determines that any of VSJ's
personnel has, without legitimate excuse, breached a VSI visitor regulation, VSI
shall advise VSJ of such breach, and VSJ shall immediately cause such person to
be removed from VSI's facility, and may provide a replacement.
4.5 NOTIFICATION OF ERRORS. VSI shall notify VSJ of any errors in the
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VSI Software of which VSI becomes aware on the same basis as it generally so
notifies its other licensees of the VSI Software.
4.6 SUPPORT OF CERTIFICATE DIRECTORIES AND CRLS. VSI will establish a
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support mechanism of Certificate directories and CRLs (Certificate Revocation
List) to maintain a global infrastructure for the Public Certificates. VSI will
also use reasonable efforts to cause its insurer to cover Public Certificates
issued by or under authority of VSJ under its general liability insurance policy
maintained in the United States of America.
5. MASTER COPY
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As soon as practicable, VSI shall deliver to VSJ one (1) copy of each of
the Root Keys, the VSI Object Code, and the User Manual.
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6. ADDITIONAL OBLIGATIONS OF VSJ
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6.1 BUNDLED PRODUCT MARKETING. VSJ is authorized to represent to
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Distributors and End User Customers only such facts about the Hardware and
Licensed Products as VSI states in its published product descriptions,
advertising and promotional materials or as may be stated in other non-
confidential written material furnished by VSI. VSJ agrees to concentrate its
marketing and sales efforts in the Territory and not to solicit actively any
sales of VSI Object Code and Bundled Products outside the Territory.
6.2 CUSTOMER SUPPORT. VSJ shall, at its expense, provide all support for
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the Bundled Products, VSI Object Code and Hardware to Distributors and End User
Customers.
6.3 PROTECTION OF ROOT KEYS. VSJ shall, at its expense, provide proper
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storage for the Root Keys in CIS Hardware or other secure hardware approved by
VSI.
6.3
6.4 LICENSE AGREEMENTS. VSJ shall cause to be delivered to each
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Distributor and End User Customer a license agreement which shall contain, at a
minimum, substantially all of the limitations of rights and the protections for
VSI which are contained in Sections 2.2, 6.5.2, 7.2, 7.3 and 9.8 of this
Agreement and shall prohibit Distributors and End User Customers pursuant to
written agreements from modifying, reverse engineering, decompiling or
disassembling the VSI Object Code or any part thereof. VSJ shall use
commercially reasonable efforts to ensure that all Distributors and End User
Customers abide by the terms of such agreements, and shall indemnify VSI for
damages arising out of any failure by a Distributor or End User Customer to
comply with the Sections of the Agreement enumerated in this Section. VSJ shall
prepare a Translated Version of such license agreement and of the CPS for use in
the Territory. VSJ shall be responsible for ensuring that the Japanese language
versions accurately convey the provisions of the English language versions
thereof.
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6.5 CONFIDENTIALITY; PROPRIETARY RIGHTS.
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6.5.1 Each party acknowledges that in the performance of its
respective duties under this Agreement, each may disclose to the other its
confidential and proprietary know-how, technology, techniques or marketing
plans, and, in the case of VSI, the Root Keys (collectively, the "PROPRIETARY
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INFORMATION"). Each party agrees to hold the other's Proprietary Information
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within its own organization and shall not, without specific written consent of
the other party or as expressly authorized herein, utilize in any manner,
publish, communicate or disclose any part of the Proprietary Information to
third parties. This Section 6.4.1 shall impose no obligation on a party with
respect to any Proprietary Information (other than the Root Keys) which such
party can establish: (i) at the time of disclosure in writing is not marked or
stamped with a legend identifying it as "Company Private," "Proprietary,"
"Confidential" or a similar legend; (ii) is in the public domain at the time
disclosed by the other party; (iii) enters the public domain after disclosure
other than by breach of the receiving party's obligations hereunder; (iv) is
known by the receiving party prior to its receipt from the other party; (v) is
independently developed by the receiving party without breach of this Agreement;
or (vi) is disclosed pursuant to a requirement of a court, governmental agency,
law or regulation, provided that the receiving party gives the other party prior
notice of such disclosure.
6.5.2 VSJ agrees not to remove or destroy any proprietary, trademark
or copyright markings or confidentiality legends placed upon or contained within
the Root Keys, VSI Object Code, User Manuals or any related materials or
documentation. VSJ further agrees to insert and maintain: (i) within every
Bundled Product and any related materials or documentation a copyright notice in
the name of VSJ and the name of VSI; (ii) within every copy of the VSI Object
Code and the User Manual a copyright notice in the name of VSJ and the name of
VSI; and (iii) within the splash screens, user documentation, printed product
collateral, product packaging and advertisements for the Bundled Product a
statement that the Bundled Product contains the Root Keys or VSI Software, as
applicable. VSJ shall cease to use the markings, or any similar markings, in
any manner on the termination of the license rights granted pursuant to Section
2.
6.5.3 The placement of a copyright notice on any of the VSI Software
shall not constitute publication or otherwise impair the confidential or trade
secret nature of the VSI Software.
6.5.4 Each party acknowledges that the restrictions contained in
this Section 6.5 are reasonable and necessary to protect their legitimate
interests and that any violation of these restrictions will cause irreparable
damage to them within a short period of time, and each party agrees that the
other party will be entitled to injunctive relief against each violation. Each
party further agrees that all confidentiality commitments hereunder shall
survive the expiration or termination for any reason of the license rights
granted pursuant to Section 2.
6.6 DELIVERY OF TRANSLATED VERSION TO VSI. Immediately upon completion
-------------------------------------
of any translation, VSJ will deliver to VSI one (1) complete copy of the
Translated Version.
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6.7 GOVERNMENT SUBLICENSE. If VSJ proposes to grant or grants any
---------------------
sublicense of any Licensed Products to any government entity, VSJ shall notify
VSI and comply with VSI's reasonable requirements.
6.8 NOTICES. VSJ shall immediately advise VSI of any legal notices
-------
served on VSJ which might affect VSI, the Root Keys, the VSI Software or any
Bundled Products.
6.9 INDEMNITY. VSJ EXPRESSLY INDEMNIFIES AND HOLDS HARMLESS VSI, ITS
---------
SUBSIDIARIES, AGENTS AND AFFILIATES FROM: (i) ANY AND ALL LIABILITY OF ANY KIND
OR NATURE WHATSOEVER TO VSJ'S END USER CUSTOMERS, DISTRIBUTORS AND THIRD PARTIES
WHICH MAY ARISE FROM ACTS OF VSJ, INCLUDING ANY DISCREPANCIES BETWEEN THE
ENGLISH LANGUAGE VERSION AND A TRANSLATED VERSION, OR FROM THE LICENSE OF
BUNDLED PRODUCTS OR VSI OBJECT CODE BY VSJ OR ANY DOCUMENTATION, SERVICES OR ANY
OTHER ITEM FURNISHED BY VSJ TO ITS END USER CUSTOMERS OR DISTRIBUTORS (OTHER
THAN LIABILITY ARISING FROM THE UNMODIFIED VSI SOFTWARE); AND (ii) ANY LIABILITY
ARISING IN CONNECTION WITH AN UNAUTHORIZED REPRESENTATION OR ANY
MISREPRESENTATION OF FACT MADE BY VSJ OR ITS AGENTS, EMPLOYEES OR DISTRIBUTORS
TO ANY PARTY WITH RESPECT TO THE VSI SOFTWARE OR ANY BUNDLED PRODUCTS.
7. LIMITED WARRANTY; DISCLAIMER OF WARRANTIES; LIMITATION OF LIABILITY;
--------------------------------------------------------------------
INTELLECTUAL PROPERTY INDEMNITIES
---------------------------------
7.1 LIMITED WARRANTY. During the initial one (1)-year period of this
----------------
Agreement, VSI warrants that the VSI Software will operate in material
conformance to VSI's published specifications for such VSI Software. VSI does
not warrant that the VSI Software or any portion thereof are error-free. VSJ's
exclusive remedy, and VSI's entire liability in tort, contract or otherwise for
any warranted nonconformity under this Section 7.1, shall be correction of any
warranted nonconformity as provided in Section 4.3.2. This limited warranty and
any obligations of VSI under Section 4.1 shall not apply to any VSJ
Modifications or any nonconformities caused thereby.
7.2 DISCLAIMER. EXCEPT FOR THE EXPRESS LIMITED WARRANTY PROVIDED IN
----------
SECTION 7.1, THE LICENSED PRODUCTS ARE PROVIDED "AS IS" WITHOUT ANY WARRANTY
WHATSOEVER. EXCEPT FOR THE PASS-THROUGH WARRANTIES PROVIDED IN SECTION 2.5, IF
ANY, THE HARDWARE IS PROVIDED "AS IS" WITHOUT ANY WARRANTY WHATSOEVER. VSI
DISCLAIMS ALL OTHER WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO ANY MATTER
WHATSOEVER, INCLUDING ALL IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS. VSI DISCLAIMS
ANY WARRANTY OR REPRESENTATION TO ANY PERSON OTHER THAN VSJ WITH RESPECT TO THE
LICENSED PRODUCTS AND THE HARDWARE. VSJ SHALL NOT, AND SHALL TAKE ALL MEASURES
NECESSARY TO INSURE THAT ITS AGENTS AND EMPLOYEES DO NOT, MAKE
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OR PASS THROUGH ANY SUCH WARRANTY ON BEHALF OF VSI TO ANY DISTRIBUTOR, END USER
CUSTOMER OR OTHER THIRD PARTY.
7.3 LIMITATION OF LIABILITY. EXCEPT WITH RESPECT TO VSI'S OBLIGATIONS
-----------------------
UNDER SECTION 7.4, IN NO EVENT WILL VSI BE LIABLE TO VSJ (OR TO ANY PERSON
CLAIMING RIGHTS DERIVED FROM VSJ) FOR INDIRECT, INCIDENTAL, SPECIAL,
CONSEQUENTIAL OR EXEMPLARY DAMAGES ARISING OUT OF OR RELATED TO THE TRANSACTIONS
CONTEMPLATED UNDER THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO LOST PROFITS,
BUSINESS INTERRUPTION OR LOSS OF BUSINESS INFORMATION, EVEN IF VSI HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. VSI'S TOTAL LIABILITY ARISING OUT
OF OR RELATED TO THIS AGREEMENT SHALL NOT EXCEED THE CUMULATIVE AMOUNT OF
LICENSE AND OPERATION FEES PAID BY VSJ, REGARDLESS OF WHETHER ANY ACTION OR
CLAIM IS BASED ON WARRANTY, CONTRACT, TORT OR OTHERWISE.
7.4 PROPRIETARY RIGHTS INFRINGEMENT BY VSI.
--------------------------------------
7.4.1 Subject to the limitations set forth in this Section 7.4, VSI,
at its own expense, shall: (i) defend, or at its option settle, any claim, suit
or proceeding against VSJ on the basis of infringement of any Japanese patent,
copyright, trade secret or other intellectual property right by the unmodified
Licensed Products as delivered by VSI (excluding the VSJ Modifications); and
(ii) pay any final judgment entered or settlement against VSJ on such issue in
any such suit or proceeding defended by VSI. The maximum aggregate amount of
judgments and settlements payable by VSI pursuant to this Section 7.4.1 shall be
limited to the cumulative amount of License and Operations Fees paid by VSJ.
VSI shall have no obligation to VSJ pursuant to this Section 7.4.1 unless: (A)
VSJ gives VSI prompt written notice of the claim; (B) VSI is given the right to
control and direct the investigation, preparation, defense and settlement of the
claim; and (C) the claim is based on VSJ's use, at the time of its distribution,
of the most recent version or the immediately preceding version of the
unmodified Licensed Products in accordance with this Agreement.
7.4.2 If VSI receives notice of an alleged infringement described in
Section 7.4.1, VSI shall have the right, at its sole option, (i) to obtain the
right to continue use of the Licensed Products; (ii) to replace or modify the
Licensed Products so that they are no longer infringing; or (iii) to terminate
the license rights granted pursuant to Section 2 of this Agreement as to the
affected Licensed Products.
7.4.3 THE RIGHTS AND REMEDIES SET FORTH IN SECTION 7.4.1 CONSTITUTE
THE ENTIRE OBLIGATION OF VSI AND THE EXCLUSIVE REMEDY OF VSJ CONCERNING
PROPRIETARY RIGHTS INFRINGEMENT BY THE LICENSED PRODUCTS OR THE HARDWARE.
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7.5 PROPRIETARY RIGHTS INFRINGEMENT BY VSJ.
--------------------------------------
7.5.1 Subject to the limitations set forth in this Section 7.5, VSJ,
at its own expense, shall: (i) defend, or at its option settle, any claim, suit
or proceeding against VSI on the basis of infringement of any Japanese patent,
copyright or trade secret by any Bundled Product (except to the extent arising
from the unmodified License Products) or the VSJ Modifications; and (ii) pay any
final judgment entered or settlement against VSI on such issue in any such suit
or proceeding defended by VSJ. The maximum aggregate amount of judgments and
settlements payable by VSJ pursuant to this Section 7.5.1 shall be limited to
the cumulative amount of License and Operations Fees paid by VSJ. VSJ shall
have no obligation to VSI pursuant to this Section 7.5.1 unless: (A) VSI gives
VSJ prompt written notice of the claim; and (B) VSJ is given the right to
control and direct the investigation, preparation, defense and settlement of the
claim.
7.5.2 THE RIGHTS AND REMEDIES SET FORTH IN SECTION 7.5.1 CONSTITUTE
THE ENTIRE OBLIGATION OF VSJ AND THE EXCLUSIVE REMEDIES OF VSI CONCERNING VSJ'S
PROPRIETARY RIGHTS INFRINGEMENT.
8. TERM AND TERMINATION
--------------------
8.1 TERM. The license rights granted pursuant to Section 2 shall be
----
effective as of the date hereof and shall continue in full force and effect
during the existence of VSJ unless and until terminated pursuant to the terms of
this Agreement. VSI shall be entitled to terminate all the license rights
granted pursuant to this Agreement at any time on written notice to VSJ in the
event of a default by VSJ and a failure to cure such default within a period of
one hundred twenty (120) days following receipt of written notice specifying
that a default has occurred or, if any such default is incapable of being cured
within such period, a failure within such one-hundred-twenty (120)-day period to
commence and diligently pursue a cure; provided, however, that in no event shall
a defaulting party have more than one hundred eighty (180) days after receipt of
written notice of a default to cure such default. In addition, VSI shall have
the right to terminate the trademark license rights granted pursuant to Section
2.3 of this Agreement at any time with thirty (30) days' written notice to VSJ
if VSI's ownership of the outstanding shares of VSJ's capital stock (calculated
on a fully diluted basis after giving effect to the exercise of all options,
warrants or other rights to purchase shares of VSJ's capital stock and the
conversion of all securities convertible into shares of VSJ's capital stock) has
become less than or equal to fifty percent (50%).
8.2 INSOLVENCY. In the event that VSJ is adjudged insolvent or bankrupt,
----------
or upon the institution of any proceedings by or against VSJ seeking relief,
reorganization or arrangement under any laws relating to insolvency, or upon any
assignment for the benefit of creditors, or upon the appointment of a receiver,
liquidator or trustee of any of VSJ's property or assets, or upon the
liquidation, dissolution or winding up of VSJ's business, then and in any such
events all the license rights granted pursuant to this Agreement may immediately
be terminated by VSI upon giving written notice.
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8.3 DISPOSITION OF LICENSED PRODUCTS AND USER MANUALS ON TERMINATION.
----------------------------------------------------------------
Upon the expiration or termination pursuant to this Section 8 of the license
rights granted pursuant to Section 2, the remaining provisions of this Agreement
shall remain in full force and effect, and VSJ shall cease making copies of,
using or licensing the Licensed Products and Bundled Products, except as
provided in the next sentence. Unless the termination pursuant to this Section
8 of the license rights granted pursuant to Section 2 was caused by a default
based on breach of the confidentiality obligations of Section 6.4.1, VSJ shall
have the right for ninety (90) days thereafter to make the number of copies of
Bundled Products and VSI Object Code as are necessary to fill orders placed with
VSJ prior to such termination. VSJ shall destroy all tangible and machine-
readable copies of the Licensed Products and Bundled Products not covered by the
preceding sentence nor subject to any then-effective license agreement with an
End User Customer and all information and documentation provided by VSI to VSJ
(including all Proprietary Information), other than such copies of the VSI
Object Code, the User Manual and the Bundled Products as are necessary to enable
VSJ to perform its continuing support obligations in accordance with Section
6.2, if any.
8.4 USE OF TRADE NAME ON TERMINATION. Upon the expiration or termination
--------------------------------
for any reason pursuant to this Section 8 of the license rights granted pursuant
to Section 2, VSJ shall remove "VeriSign" and its Japanese transliteration from
its trade name and cease all use of same.
9. MISCELLANEOUS PROVISIONS
------------------------
9.1 GOVERNING LAWS. IT IS THE INTENTION OF THE PARTIES HERETO THAT THE
--------------
INTERNAL LAWS OF THE STATE OF CALIFORNIA, U.S.A. (IRRESPECTIVE OF ITS CHOICE OF
LAW PRINCIPLES) SHALL GOVERN THE VALIDITY OF THIS AGREEMENT, THE CONSTRUCTION OF
ITS TERMS, AND THE INTERPRETATION AND ENFORCEMENT OF THE RIGHTS AND DUTIES OF
THE PARTIES HERETO. THE PARTIES AGREE THAT THE UNITED NATIONS CONVENTION ON
CONTRACTS FOR THE INTERNATIONAL SALE OF GOODS SHALL NOT APPLY TO THIS AGREEMENT.
THE PARTIES HEREBY AGREE THAT ANY SUIT TO ENFORCE ANY PROVISION OF THIS
AGREEMENT OR ARISING OUT OF OR BASED UPON THIS AGREEMENT OR THE BUSINESS
RELATIONSHIP BETWEEN THE PARTIES HERETO SHALL BE BROUGHT IN THE UNITED STATES
DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA OR THE SUPERIOR OR
MUNICIPAL COURT IN AND FOR THE COUNTY OF SANTA CLARA, CALIFORNIA, U.S.A. EACH
PARTY HEREBY AGREES THAT SUCH COURTS SHALL HAVE EXCLUSIVE IN PERSONAM
-----------
JURISDICTION AND VENUE WITH RESPECT TO SUCH PARTY, AND EACH PARTY HEREBY SUBMITS
TO THE EXCLUSIVE IN PERSONAM JURISDICTION AND VENUE OF SUCH COURTS.
-----------
9.2 BINDING UPON SUCCESSORS AND ASSIGNS. Except as otherwise provided
-----------------------------------
herein, this Agreement shall be binding upon, and inure to the benefit of, the
successors, executors, heirs, representatives, administrators and assigns of the
parties hereto; provided, however, that this Agreement shall not be assignable
by VSJ, by operation of law or otherwise, without the prior written consent of
VSI, which shall not be unreasonably withheld except that VSI's consent shall
not be required (if VSI is given notice within thirty (30) days after such
assignment) for an assignment of this
VeriSign, Inc.
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Page 16
Agreement resulting from a merger, reorganization, reincorporation or other
acquisition of VSJ in which VSI remains the owner of an amount in excess of
fifty percent (50%) of the resulting entity. Any purported assignment or
delegation in violation of this Section shall be void and of no effect.
9.3 SEVERABILITY. If any provision of this Agreement, or the application
------------
thereof, shall for any reason and to any extent, be invalid or unenforceable,
the remainder of this Agreement and application of such provision to other
persons or circumstances shall be interpreted so as best to reasonably effect
the intent of the parties hereto. IT IS EXPRESSLY UNDERSTOOD AND AGREED THAT
EACH AND EVERY PROVISION OF THIS AGREEMENT WHICH PROVIDES FOR A LIMITATION OF
LIABILITY, DISCLAIMER OF WARRANTIES OR EXCLUSION OF DAMAGES IS INTENDED BY THE
PARTIES TO BE SEVERABLE AND INDEPENDENT OF ANY OTHER PROVISION AND TO BE
ENFORCED AS SUCH.
9.4 ENTIRE AGREEMENT. This Agreement and the exhibits and schedules
----------------
hereto constitute the entire understanding and agreement of the parties hereto
with respect to the subject matter hereof and supersede all prior and
contemporaneous agreements or understandings between the parties.
9.5 AMENDMENT AND WAIVERS. Any term or provision of this Agreement may
---------------------
be amended, and the observance of any term of this Agreement may be waived, only
by a writing signed by the party to be bound thereby.
9.6 ATTORNEYS' FEES. Should suit be brought to enforce or interpret any
---------------
part of this Agreement, the prevailing party shall be entitled to recover, as an
element of the costs of suit and not as damages, reasonable attorneys' fees to
be fixed by the court (including without limitation, costs, expenses and fees on
any appeal).
9.7 NOTICES. Whenever any party hereto desires or is required to give
-------
any notice, demand, or request with respect to this Agreement, each such
communication shall be in writing and shall be effective only if it is delivered
by personal service or mailed, certified or registered mail, postage prepaid,
return receipt requested, addressed as follows:
VSI: To the address set forth on page 1
If to VSI,
with a copy to: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, Esq.
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ Morosoli & Maser LLP
▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
VSJ: To the address set forth on page 1
Such communications shall be effective when they are received by the
addressee thereof; but if sent by certified or registered mail in the manner set
forth above, they shall be effective ten (10) days
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after being deposited in the mail. Any party may change its address for such
communications by giving notice thereof to the other party in conformity with
this Section.
9.8 FOREIGN RESHIPMENT LIABILITY. THIS AGREEMENT IS EXPRESSLY MADE
----------------------------
SUBJECT TO ANY LAWS, REGULATIONS, ORDERS OR OTHER RESTRICTIONS ON THE EXPORT
FROM THE UNITED STATES OF AMERICA OF THE VSI SOFTWARE OR BUNDLED PRODUCTS OR OF
INFORMATION ABOUT SUCH VSI SOFTWARE OR BUNDLED PRODUCTS WHICH MAY BE IMPOSED
FROM TIME TO TIME BY THE GOVERNMENT OF THE UNITED STATES OF AMERICA.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the day
and year first written above.
VSJ:
VERISIGN JAPAN, KK VERISIGN, INC.
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
-------------------------------- -------------------------------
Printed Name: ▇▇▇▇ ▇▇▇▇▇▇ Printed Name: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
---------------------- ---------------------
Title: President and Representative Title: CEO
----------------------------- ----------------------------
Director
-----------------------------
EXHIBIT A
DEFINITIONS
10. "BUNDLED PRODUCTS" means one or more of the VSJ Products which has
been or will be developed by VSJ and in which a Root Key has been or will be
embedded or with which VSI Object Code has been or will be bundled.
11. "CERTIFICATES" means Public Certificates and Private Certificates,
collectively.
12. "CERTIFICATION AUTHORITY" OR "CA" means VSI and any entity, group,
division, department, unit for office which is Certified by VSI to, and has
accepted responsibility to, issue certificates to specified subscribers in a
Hierarchy in accordance with the CPS or a Protocol.
13. "CERTIFICATION PRACTICE STATEMENT" OR "CPS" means the VeriSign
specification of policies, procedures and resources to control the entire
Certificate process and transactional use of Certificates within a VeriSign
Public Hierarchy.
14. "CIS" means VSI's proprietary software product known as "Certificate
Issuing System" included in the VSI Software, the description of which is
included in Exhibit D.
15. "CSC CIS" means an enhanced version of the CIS software used
internally by VSI to manage certificate services which is not licensed or sold
to customers.
16. "CUSTOM PUBLIC CERTIFICATE" means a Public Certificate which is
issued under a brand name of an End User Customer or under both VeriSign's name
and an End User Customer's name.
17. "DISTRIBUTOR" means a dealer or distributor in the business of
reselling or sublicensing Products in the Territory and for use in the Territory
by virtue of authority of VSJ.
18. "ECAS" means VSI's proprietary software product known as the
"Electronic Commerce Authentication System" included in the VSI Software, the
description of which is included in Exhibit D.
19. "END USER CUSTOMER" means a person or entity purchasing or
sublicensing Products from VSJ or a Distributor solely for personal or internal
use in the Territory and without right to sublicense, assign or otherwise
transfer such Products to any other person or entity.
20. "END USER PRICE" means standard price (as listed in VSJ's published
price schedule on the date of the grant of the license or the sale in questions)
for such Certificates or ECAS. Alternatively, End User Price may mean the
actual price VSJ charges to an End User Customer to which VSJ has agreed to
provide a discount from the standard price. With respect to Certificates or
ECAS which are licensed or otherwise distributed by VSJ or a Distributor as part
of a larger group of products or as an integral part of another product, a
license fee shall be due as set forth above as though the Certificate or ECAS
had been licensed or distributed separately at the standard End User Price by
VSJ or such Distributor; provided, however, that if the amount invoiced for the
Certificates or ECAS when licensed or distributed in this manner is more than
five percent (5%) below the standard End User Price for the
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Page 19
Certificates or ECAS, then the End User Price relating to such invoice shall be
deemed to be no less than ninety-five percent (95%) of the standard End User
Price, notwithstanding the actual amount of the invoice.
21. "HARDWARE" means the CIS Hardware described in Exhibit B.
22. "HIERARCHY" means a domain consisting of a system of chained
Certificates leading from the Primary Certification Authority through one or
more Certification Authorities to Subscribers.
23. "INTELLECTUAL PROPERTY RIGHT" means any and all copyrights, moral
rights, trademark rights, patent rights, and other intellectual and proprietary
rights, title and interests, worldwide.
24. "LICENSED PRODUCTS" means the Root Keys and the VSI Software,
collectively.
25. "PRIMARY CERTIFICATION AUTHORITY" OR "PCA" means an entity that
establishes policies for all Certification Authorities and Subscribers within
its domain.
26. "PRIVATE CERTIFICATE" means a collection of electronic data used to
identify the owner in a Private Hierarchy.
27. "PRIVATE HIERARCHY" means a domain consisting of a chained
Certificate hierarchy which is entirely self-contained within an organization or
network and not designed to be interoperable with or intended to interact
through public channels with any external organizations, networks, and Public
Hierarchies.
28. "PRIVATE LABEL CERTIFICATE SYSTEM" means a system for issuance and
use of Private Certificates in a Private Hierarchy in accordance with a Protocol
specified by the entity responsible for the Private Hierarchy.
29. "PRODUCTS" means the Hardware, Bundled Products and VSI Object Code.
30. "PROTOCOL" means a specification of policies, procedures and
resources to control the entire Certificate process and transactional use of
Certificates within a Private Hierarchy.
31. "PUBLIC CERTIFICATE" means a collection of electronic data used to
identify the owner in a Public Hierarchy.
32. "PUBLIC HIERARCHY" means a domain consisting of a system of chained
Certificates leading from VSI as the Primary Certification Authority through one
or more Certification Authorities to Subscribers in accordance with the VeriSign
Certification Practice Statement. Certificates issued in a Public Hierarchy are
intended to be interoperable among organizations, allowing Subscribers to
interact through public channels with various individuals, organizations, and
networks.
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33. "ROOT KEYS" means the root keys listed in Exhibit C.
34. "SUBSCRIBER" means an individual, a device or a role/office that has
requested a Certifier to issue him, her or it a Certificate.
35. "TERRITORY" means the country of Japan.
36. "TRANSLATED VERSION" means a version of the VSI Object Code, the User
Manual, license agreements, or the CPS created by translating the English
version into the Japanese language through the efforts of employees or agents of
VSJ.
37. "USER MANUAL" means the most current version of one or more user
manuals customarily supplied by VSI to end users who license the VSI Software.
38. "VSJ PRODUCT" means any product developed by VSJ into which a Root
Key is to be embedded, or with which VSI Object Code is to be bundled, to create
a Bundled Product.
39. "VSJ MODIFICATIONS" means all modifications, improvements and
enhancements to the VSI Software created by VSJ pursuant to this Agreement.
40. "VSI OBJECT CODE" means the VSI Software in machine-readable,
compiled object code form.
41. "VSI SOFTWARE" means VSI proprietary software products listed on
Exhibit C. "VSI Software" shall also include all annual updates to such
software products provided by VSI generally to its distributors or customers of
such software products and all modifications to such software made at VSJ's
request to accommodate VSJ's local needs pursuant to Section 2.6 of this
Agreement.
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EXHIBIT B
Hardware
CIS Hardware Secure Certificate Signing Unit (CSU) hardware
provided by BBN
Datakey Reader(s) Used for Co-Signing business
EXHIBIT C
Root Keys
Commercial Hierarchy Root Key
Secure Server Hierarchy Root Key
Low Assurance Hierarchy Root Key
Personal Root Key
VeriSign Class 1 Assurance Root Key
VeriSign Class 2 Assurance Root Key
VeriSign Class 3 Assurance Root Key
VeriSign Class 4 Assurance Root Key
EXHIBIT D
VSI Software
CIS Certificate Issuing Software including the user interface
and management of the CIS hardware and certificate database.
CSC CIS An enhanced version of the CIS software used internally by
VSI to manage certificate services which is not licensed or
sold to customers.
Persona Responder Automatic, anonymous certificate issuing for Internet user's
testing and play.
Co-Issuer Tool Software that allows co-issuer customers to preview
certificate requests and forward them to VSI.
WinSign Software utility under development that provides for a
digital signature creation and verification capability in
the Windows environment.
ECAS Electronic Commerce Authentication System including user
interface, customer management and certificate management
software.
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Page 24
EXHIBIT "E"
TRANSLATED VERSIONS
42.. ASSIGNMENT OF RIGHTS IN TRANSLATED VERSIONS. VSJ assigns and transfers
exclusively to VSI, its successors and assigns, all Intellectual Property Rights
VSJ may now or hereafter have in all Translated Versions, and all portions and
copies thereof in any form, including, without limitation, each of the following
rights, to the full extent permitted under applicable law:
42.1. COPYRIGHT: The entire copyright in any Translated Version,
whether vested, contingent or future, including without limitation all economic
rights and all exclusive rights to use any Translated Version, subject to the
rights granted in Sections 2.1.2, 2.1.3, 2.1.4 or 2.1.5 of this Agreement.
42.2. PATENT, DESIGN, TRADEMARK RIGHTS: All rights in and to any
inventions, designs, and marks embodied in any Translated Version, including
without limitation all utility and design patent rights and equivalent rights in
and to such inventions and design rights, and all trademark and service ▇▇▇▇
rights. VSJ also assigns and transfers to VSI all right, title, and interest in
and to any documents, magnetically or optically encoded media, and other
materials created by VSJ in connection with a Translated Version.
42.3 OTHER RIGHTS: All rights of action and all other rights of
whatever nature in and to Translated Version, whether now known or in the future
created, to which VSJ is now or may at any time after the date of this Agreement
be entitled in any portion of any Translated Version under applicable law, to
hold to VSI, its successors and assigns absolutely. VSJ will not take any
action, whether judicial or otherwise, that has the purpose or effect of
challenging or diminishing the rights of VSI or its successors or assigns in any
Translated Version as described herein.
42.4 APPLICATIONS, RENEWALS, FURTHER ASSIGNMENTS AND TRANSFERS: The
rights assigned, transferred, and licensed to VSI hereunder shall include (i)
the exclusive right to make and secure applications and registration, (ii) the
exclusive exercise of such rights for the unlimited, entire period of such
rights throughout the world, (iii) the exclusive right to renewals, reversions,
and extension of such rights, and (iv) the exclusive right to authorize,
transfer, license, sublicense, deal in, dispose of, and assign others to own or
exercise such rights, title and interests. Without limitation, VSJ acknowledges
that all rights of every kind and nature whatsoever in a Translated Version may
be assigned by VSI to such other successors and assigns as it sees fit, subject
to the rights granted in Sections 2.1.2, 2.1.3, 2.1.4 or 2.1.5 of this
Agreement.
43.. EXCLUSIVE WORLDWIDE LICENSE. In the event that, by operation of law,
VSJ is deemed to have retained rights in any portion of a Translated Version,
VSJ grants to VSI, its successors and assigns, an exclusive, irrevocable,
worldwide, paid-up license to use the Translated Versions, and all inventions,
designs, and marks embodied therein.
VeriSign, Inc.
License Agreement
Page 25
44.. AGREEMENT NOT TO USE TRANSLATED VERSIONS. VSJ acknowledges that VSI has
expended substantial time, financial, and human resources in designing and
developing the VSI Software, User Manual and the CPS, that the majority of the
Translated Versions shall consist of work created by VSI, and that components
prepared by VSJ shall comprise only a limited and inseparable portion of the
Translated Versions. Accordingly, VSJ acknowledges and agrees that VSJ and its
employees, subcontractors, and other representatives have no right to, and will
not, directly or indirectly, use any Translated Version in any way, except as
explicitly provided in this Agreement or as otherwise agreed in writing by VSI.
Likewise, VSJ agrees not to make any application or registration for any
Intellectual Property Right in any Translated Version or in VSI Software, the
User Manual or the CPS.
45.. REPRESENTATIONS AND WARRANTIES. VSJ represents and warrants to VSI that:
45.1 NO INFRINGEMENT. Translated Versions, as delivered by VSJ to VSI
pursuant to Section 6.6 of this Agreement do not and will not infringe any
Intellectual Property Right held by any third party, except to extent the
unmodified VSI Object Code or User Manual or license agreement or CPS provided
to VSJ by VSI so infringes.
45.2 QUALITY OF TRANSLATION. The translation shall be performed in a
professional manner, shall be of a high quality and shall be free from known
"bugs," computer viruses, and other material errors or destructive elements.
45.3 ALL NECESSARY RIGHTS. VSJ has all necessary rights, or at its
sole expense shall have secured in writing all transfers of rights and other
consents necessary to make the assignments, licenses and other transfers of
Intellectual Property Rights in the Translated Versions and the warranties set
forth in this Exhibit "E", and for VSI and its successors and assigns
exclusively to own and exercise all Intellectual Property Rights in Translated
Versions as provided in this Agreement. Without limitation, VSJ shall secure all
necessary written agreements, consents and transfers of rights from VSJ
employees and other persons whose services are used for the translation,
including a written agreement with employees that all works created under this
Agreement (including Translated Versions) fall within the scope of their
employment duties, and that all Intellectual Property Rights in such works vest
in VSJ as the employer and are fully transferable.
45.4 WAIVER OF MORAL RIGHTS. VSJ and all employees creating work under
this Agreement, and other persons who may have claims of moral rights in any
part of a Translated Version have agreed that: (i) they shall have no objection
to publication and use of the work in the manner described in this Agreement;
(ii) they shall remain anonymous authors; (iii) VSI and its successors and
assigns may make future modifications and adaptations to the work, and may make
disclosure and disposal of the work (and any modifications or adaptations
thereof) in the manner that VSI or its successors or assigns see fit; and (iv)
their remuneration for such works is adequate and reasonable.
VeriSign, Inc.
License Agreement
Page 26
46.. LIMITATIONS OF LIABILITY.
46.1 LIMITATIONS. VSI shall have no obligation under any provision of
this Agreement with respect to any (i) warranty claim, (ii) maintenance
obligation, or (iii) claim of infringement of copyright, trade secret, or other
intellectual property right, if any such claim or obligation results from the
creation of a Translated Version by VSJ or its employees or agents except to the
extent the unmodified VSI Object Code or the User Manual or license agreement or
CPS provided to VSJ by VSI creates such obligation or claim.
46.2 INDEMNIFICATION. VSJ agrees to indemnify and hold VSI harmless
from any and all loss, liability, claims, and damages based on or relating to a
Translated Version (including without limitation, as a result of any claim that
a Translated Version infringes a patent, copyright trade secret or other
intellectual property right of any third party), VSJ's manufacturing, marketing
or distribution of a Translated Version, and any services offered or provided by
VSJ in connection with a Translated Version, unless such liability, claim or
damage arises out of the unmodified VSI Object Code or the User Manual or
license agreement or CPS provided to VSJ by VSI.
