<PAGE>
As filed with the Securities and Exchange Commission on October 27, 1999.
Registration No. 333-84033
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
----------------
POST-EFFECTIVE
AMENDMENT NO. 1
TO
FORM S-1
REGISTRATION STATEMENT
Under
THE SECURITIES ACT OF 1933
----------------
INTERTRUST TECHNOLOGIES CORPORATION
(Exact Name of Registrant as Specified in its Charter)
----------------
Delaware 7371 52-1672106
(State or Other (Primary Standard Industrial (I.R.S. Employer
Jurisdiction of Classification Code Number) Identification Number)
Incorporation or
Organization)
4750 Patrick Henry Blvd., Santa Clara, CA 95054
(408) 855-0100
(Address, including zip code, and telephone number, including area code, of
registrant's principal executive offices)
----------------
Victor Shear
Chief Executive Officer and Chairman of the Board
InterTrust Technologies Corporation
4750 Patrick Henry Blvd., Santa Clara, CA 95054
(408) 855-0100
(Name, address, including zip code, and telephone number, including area code,
of agent for service)
Copies to:
Robert V. Gunderson, Jr., Esq. Laird H. Simons III, Esq.
Bennett L. Yee, Esq. Katherine Tallman Schuda, Esq.
William E. Growney, Jr., Esq. Tyler R. Cozzens, Esq.
Amy S. Cohen, Esq. Pamela A. Sergeeff, Esq.
Margaret E. Paige, Esq. Fenwick & West LLP
Gunderson Dettmer Stough Two Palo Alto Square
Villeneuve Franklin & Hachigian, LLP Palo Alto, California 94306
155 Constitution Drive (650) 494-0600
Menlo Park, California 94025
(650) 321-2400
----------------
Approximate date of commencement of proposed sale to the public:
As soon as practicable after the effective date of this Registration Statement.
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, as amended, check the following box. [_]
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, please check the following
box and list the Securities Act registration statement number of the earlier
effective registration statement for the same offering. [_]
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [_]
If this Form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [X]
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. [_]
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
<PAGE>
EXPLANATORY NOTE
This post-effective Amendment No. 1 to the Form S-1 Registration Statement
is being filed for the sole purpose of amending exhibits.
<PAGE>
PART II
Information Not Required in Prospectus
Item 13. Other Expenses of Issuance and Distribution
The following table presents the costs and expenses, other than underwriting
discounts and commissions, payable by us in connection with the sale of common
stock being registered. All amounts are estimates except the SEC registration
fee, the NASD filing fees, and The Nasdaq National Market listing fee.
<TABLE>
<S> <C>
SEC registration fee............................................. $ 37,405
NASD filing fee.................................................. 10,965
Nasdaq National Market listing fee............................... 90,000
Printing and engraving expenses.................................. 150,000
Legal fees and expenses.......................................... 450,000
Accounting fees and expenses..................................... 250,000
Road show expenses............................................... 50,000
Blue sky fees and expenses....................................... 5,000
Custodian and transfer agent fees................................ 15,000
Miscellaneous fees and expenses.................................. 91,630
----------
Total.......................................................... $1,150,000
==========
</TABLE>
Item 14. Indemnification of Directors and Officers
Section 145 of the Delaware General Corporation Law authorizes a court to
award or a corporation's board of directors to grant indemnification to
directors and officers in terms sufficiently broad to permit indemnification
under limited circumstances for liabilities, including reimbursement for
expenses incurred, arising under the Securities Act of 1933, as amended (the
"Securities Act"). Article VI, Section 6.1 of our bylaws provides for mandatory
indemnification of our directors, officers, and employees to the maximum extent
permitted by the Delaware General Corporation Law. Our sixth amended and
restated certificate of incorporation provides that our officers and directors
shall not be liable for monetary damages for breach of the officers' or
directors' fiduciary duty as officers or directors to our stockholders and us.
This provision in the sixth amended and restated certificate of incorporation
does not eliminate the officers' or directors' fiduciary duty, and, in
appropriate circumstances, equitable remedies like injunctive or other forms of
non-monetary relief will remain available under Delaware law. In addition, each
officer or director will continue to be subject to liability for breach of the
officer's or director's duty of loyalty to us or our stockholders for acts or
omissions not in good faith or involving intentional misconduct, for knowing
violations of law, for actions leading to improper personal benefit to the
officer or director, and for payment of dividends or approval of stock
repurchases or redemptions that are unlawful under Delaware law. The provision
also does not affect an officer's or director's responsibilities under any
other law, like the federal securities laws or state or federal environmental
laws. We have entered into indemnification agreements with our officers and
directors, a form of which is attached as Exhibit 10.1 and incorporated by
reference. The indemnification agreements provide our officers and directors
with further indemnification to the maximum extent permitted by the Delaware
General Corporation Law. Reference is made to Section 7 of the underwriting
agreement contained in Exhibit 1.1 to this registration statement, indemnifying
our officers and directors against limited liabilities.
II-1
<PAGE>
Item 15. Recent Sales of Unregistered Securities
Since January 1, 1996, we have issued and sold the following securities:
1. We granted direct issuances or stock options to purchase 8,099,900 shares
of our common stock at exercise prices ranging from $0.625 to $14.00 per share
to employees, consultants, directors, and other service providers under our
1995 stock plan. At the closing of this offering, we will grant additional
stock options to purchase 1,301,000 shares of our common stock at 85% of the
initial public offering price and at the initial public offering price to
employees, consultants and directors under and our 1999 equity incentive plan.
We granted direct issuances or stock options to purchase 1,234,360 shares of
our common stock at exercise prices ranging from $0.01 to $7.65 per share to
service providers outside of the 1995 stock plan and 1999 equity incentive
plan.
2. We issued and sold an aggregate of 2,182,050 shares of our common stock
to employees, consultants, and other service providers for aggregate
consideration of approximately $3,028,423 under direct issuances or exercises
of options granted under our 1995 stock plan. We issued and sold an aggregate
of 1,902,200 shares of our common stock to employees, consultants, and other
service providers for aggregate consideration of approximately $1,215,131 under
direct issuances or exercises of options granted under our 1992 stock plan. We
issued and sold an aggregate of 320,360 shares of our common stock to
employees, consultants, and other service providers for aggregate consideration
of approximately $449,701 under direct issuances or exercises of options
granted outside of the stock plans.
3. On February 29, 1996, we issued a warrant to purchase 16,000 shares of
our class A voting common stock with an exercise price of $1.25 per share to
Alexander Communications in connection with the payment of a convertible
promissory note. The warrant was subsequently exercised and we issued 16,000
shares thereunder.
4. On April 24, 1996, we issued a warrant to purchase 8,000 shares of our
class A voting common stock with an exercise price of $1.25 per share to John
Holmgreen in connection with the payment of a convertible promissory note. The
warrant was subsequently exercised and we issued 8,000 shares thereunder.
5. On April 24, 1996, we issued two warrants to purchase a total of 200,000
shares of our class A voting common stock with an exercise price of $1.25 per
share to Otto Candies, LLC in connection with the payment of two convertible
promissory notes. The warrants were subsequently exercised and we issued
200,000 shares thereunder.
6. On April 27, 1996, we issued a warrant to purchase 32,000 shares of our
class A voting common stock with an exercise price of $1.25 per share to the
Hubbs Family Trust in connection with the payment of a convertible promissory
note. The warrant was subsequently exercised and we issued 32,000 shares
thereunder.
7. In March, April, and June 1996, we issued and sold 3,966,666 shares of
our series A preferred stock for an aggregate purchase price of approximately
$10,135,000 to a group of investors under a stock purchase agreement.
8. In August and October 1996, June and December 1997, and January, March,
April, July, August, September, November, and December 1998, we issued and sold
6,533,721 shares of our series B preferred stock for an aggregate purchase
price of approximately $27,997,000 to a group of investors under a stock
purchase agreement.
II-2
<PAGE>
9. On August 19, 1996, we issued a warrant to purchase 311,016 shares of our
class B non-voting common stock to Upgrade Corporation of America. The warrant
will be terminated upon the initial public offering of our common stock.
10. On November 1, 1996, we issued a warrant to purchase 10,000 shares of
our class A voting common stock with an exercise price of $2.56 per share to
the Rutherford Bolen Group. The warrant was subsequently exercised and we
issued 10,000 shares thereunder.
11. On April 28, 1998, we issued a warrant to purchase 2,000 shares of our
class B non-voting common stock with an exercise price of $1.50 per share to
Peter Williams. The warrant was subsequently exercised and we issued 2,000
shares thereunder.
12. On June 4, 1998, we issued a warrant to purchase 3,000 shares of our
class B non-voting common stock with an exercise price of $1.50 per share to
Peter Williams. The warrant was subsequently exercised and we issued 3,000
shares thereunder.
13. On December 21, 1998, we issued a warrant to purchase 4,000 shares of
our class B non-voting common stock with an exercise price of $1.75 per share
to Bill Horne.
14. In March 1999, we issued and sold 850,000 shares of our series C
preferred stock for an aggregate purchase price of approximately $5,007,000 to
a group of investors under a stock purchase agreement.
15. In April and May 1999, we issued and sold 1,142,023 shares of our series
D preferred stock for an aggregate purchase price of approximately $9,707,000
to a group of investors under a stock purchase agreement.
16. In July 1999, we issued and sold 1,309,700 shares of our series E
preferred stock for an aggregate purchase price of approximately $15,716,000 to
a group of investors under a stock purchase agreement and issued 83,333 shares
of our series E preferred stock upon the conversion of a $1.0 million
promissory note.
17. On September 7, 1999, we issued a warrant to purchase 325,000 shares of
our class A voting common stock with an exercise price of $14.00 per share to
Allen & Company Inc. in connection with a financial consulting agreement.
18. On October 12, 1999, we issued 85,000 shares of our class A voting
common stock to a Mpeg TV LLC in exchange for the purchase of audio decoding
and rendering technology and related assets and a license to video technology
valued at $1,190,000.
The sale of the above securities was determined to be exempt from
registration under the Securities Act in reliance upon Section 4(2) of the
Securities Act or Regulation D promulgated thereunder, or Rule 701 promulgated
under Section 3(b) of the Securities Act as transactions by an issuer not
involving any public offering or transactions under compensation benefit plans
and contracts relating to compensation as provided under Rule 701. The
recipients of securities in each transaction represented their intentions to
acquire the securities for investment only and not with a view to or for sale
in connection with any distribution and appropriate legends were affixed to the
share certificates issued in these transactions. All recipients had adequate
access, through their relationships with us, to information about us.
II-3
<PAGE>
Item 16. Exhibits and Financial Statement Schedules
(a) Exhibits
<TABLE>
<CAPTION>
Exhibit
No. Description
------- -----------
<C> <S>
1.1** Form of Underwriting Agreement.
3.1** Fifth Amended and Restated Certificate of Incorporation of the
Registrant.
3.2** Form of Sixth Amended and Restated Certificate of Incorporation to
be filed upon the closing of the offering made under this
Registration Statement.
3.3** Bylaws of the Registrant.
3.4** Amended and Restated Bylaws of the Registrant to be effective upon
the closing of the offering made under this Registration Statement.
4.1** Reference is made to Exhibits 3.1, 3.2, 3.3 and 3.4.
4.2** Form of Registrant's Common Stock certificate.
4.3** Form of Registration Rights under select Convertible Promissory
Notes.
4.4** Form of Registration Rights under select Class A Common Stock
Purchase Agreements.
4.5** Form of Series A Preferred Stock Registration Rights.
4.6** Form of Series B, C, D and E Preferred Stock Registration Rights.
4.7** Form of Registration Rights found in a Class B Non-Voting Common
Stock Warrant.
5.1** Opinion of Gunderson Dettmer Stough Villeneuve Franklin & Hachigian,
LLP.
10.1** Form of Indemnification Agreement entered into by the Registrant
with each of its directors and executive officers.
10.2** 1999 Equity Incentive Plan and forms of agreements thereunder.
10.3** 1999 Employee Stock Purchase Plan.
10.4** 1999 Non-Employee Directors Option Plan.
10.5*** [This exhibit has been omitted]
10.6**** [This exhibit has been omitted]
10.7**** [This exhibit has been omitted]
10.8**** [This exhibit has been omitted]
10.9**** [This exhibit has been omitted]
10.10**** [This exhibit has been omitted]
10.11** Lease between Mission West Properties, L.P. and the Registrant dated
July 21, 1999.
10.12+ Technology Development, Marketing, and License Agreement by and
between the Registrant and National Westminster Bank PLC dated
August 18, 1998.
10.13+ Technology Development and License Agreement by and between the
Registrant and Universal Music Group, Inc. dated April 13, 1999.
10.14**+ Technology Development and License Agreement by and between the
Registrant and Upgrade Corporation of America dated August 7, 1996
10.15**+ Technology Development and License Agreement by and between the
Registrant and Mitsubishi Corporation dated October 7, 1996.
10.16** Warrant for the purchase of Class A Voting Common Stock made by the
Registrant and held by Allen & Company Incorporated, dated September
7, 1999
10.17** Amendment to Technology, Development, Marketing and License
Agreement by and between the Registrant and National Westminster
Bank dated August 18, 1998.
10.18** Amendment to Technology Development and License Agreement by and
between the Registrant and Universal Music Group, Inc. dated April
13, 1999
21.1** Subsidiaries of the Registrant.
23.1** Consent of Ernst & Young LLP, independent auditors.
23.2** Consent of Counsel. Reference is made to Exhibit 5.1.
24.1** Power of Attorney.
27.1** Financial Data Schedule.
</TABLE>
- --------
** Previously filed.
*** This warrant was terminated upon the initial public offering.
**** These leases are no longer in existence.
+Confidential treatment has been requested for certain portions which have been
blacked out in the copy of the exhibit filed with the Securities and
Exchange Commission. The omitted information has been filed separately with
the Securities and Exchange Commission pursuant to the application for
confidential treatment.
II-4
<PAGE>
(b) Financial Statement Schedules
All schedules have been omitted because the information required to be
presented in them is not applicable or is shown in the consolidated financial
statements or related notes.
Item 17. Undertakings
We undertake to provide to the underwriters at the closing specified in the
underwriting agreement certificates in the denominations and registered in the
names as required by the underwriters to permit prompt delivery to each
purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
may be permitted to directors, officers, and controlling persons of the
Registrant under the Delaware General Corporation Law, our sixth amended and
restated certificate of incorporation or our amended and restated bylaws, the
underwriting agreement, or otherwise, we have been advised that in the opinion
of the Securities and Exchange Commission this indemnification is against
public policy as expressed in the Securities Act, and is, therefore,
unenforceable. In the event that a claim for indemnification against these
liabilities, other than the payment by us of expenses incurred or paid by a
director, officer, or controlling person of ours in the successful defense of
any action, suit, or proceeding, is asserted by a director, officer, or
controlling person in connection with the securities being registered in this
offering, we will, unless in the opinion of our counsel the matter has been
settled by controlling precedent, submit to a court of appropriate jurisdiction
the question of whether this indemnification by us is against public policy as
expressed in the Securities Act and will be governed by the final adjudication
of this issue.
We undertake that:
(1) For purposes of determining any liability under the Securities Act, the
information omitted from the form of prospectus filed as part of this
registration statement in reliance upon Rule 430A and contained in a form of
prospectus filed by us under Rule 424(b)(1) or (4) or 497(h) under the
Securities Act shall be deemed to be part of this registration statement as of
the time it was declared effective.
(2) For the purpose of determining any liability under the Securities Act,
each post-effective amendment that contains a form of prospectus shall be
deemed to be a new registration statement relating to the securities offered,
and the offering of these securities at that time shall be deemed to be the
initial bona fide offering.
II-5
<PAGE>
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the Registrant
has duly caused this post effective Amendment No. 1 to the Registration
Statement to be signed on its behalf by the undersigned, thereunto duly
authorized, in the City of Santa Clara, State of California, on this 27th day
of October, 1999.
Intertrust Technologies Corporation
By /s/ Victor Shear
-----------------------------------
Victor Shear
Chairman of the Board and Chief
Executive Officer
Pursuant to the requirements of the Securities Act of 1933, as amended, this
post effective Amendment No. 1 to the Registration Statement has been signed by
the following persons on behalf of the Registrant and in the capacities and on
the date indicated:
<TABLE>
<CAPTION>
Signature Title Date
<S> <C> <C>
/s/ Victor Shear Chairman of the Board and October 27, 1999
- ------------------------------ Chief Executive Officer
Victor Shear (Principal Executive
Officer)
David C. Chance* Executive Vice Chairman October 27, 1999
- ------------------------------
David C. Chance
Peter van Cuylenburg* Director, President and October 27, 1999
- ------------------------------ Chief Operating Officer
Peter van Cuylenburg
Erwin N. Lenowitz* Vice Chairman of the October 27, 1999
- ------------------------------ Board, Chief Financial
Erwin N. Lenowitz Officer (Principal
Financial and Accounting
Officer) and Secretary
</TABLE>
II-6
<PAGE>
INDEX TO EXHIBITS
<TABLE>
<CAPTION>
Exhibit
No. Description
------- -----------
<C> <S>
1.1** Form of Underwriting Agreement.
3.1** Fifth Amended and Restated Certificate of Incorporation of the
Registrant.
3.2** Form of Sixth Amended and Restated Certificate of Incorporation to
be filed upon the closing of the offering made under this
Registration Statement.
3.3** Bylaws of the Registrant.
3.4** Amended and Restated Bylaws of the Registrant to be effective upon
the closing of the offering made under this Registration Statement.
4.1** Reference is made to Exhibits 3.1, 3.2, 3.3 and 3.4.
4.2** Form of Registrant's Common Stock certificate.
4.3** Form of Registration Rights under select Convertible Promissory
Notes.
4.4** Form of Registration Rights under select Class A Common Stock
Purchase Agreements.
4.5** Form of Series A Preferred Stock Registration Rights.
4.6** Form of Series B, C, D and E Preferred Stock Registration Rights.
4.7** Form of Registration Rights found in a Class B Non-Voting Common
Stock Warrant.
5.1** Opinion of Gunderson Dettmer Stough Villeneuve Franklin & Hachigian,
LLP.
10.1** Form of Indemnification Agreement entered into by the Registrant
with each of its directors and executive officers.
10.2** 1999 Equity Incentive Plan and forms of agreements thereunder.
10.3** 1999 Employee Stock Purchase Plan.
10.4** 1999 Non-Employee Directors Option Plan.
10.5*** [This exhibit has been omitted]
10.6**** [This exhibit has been omitted]
10.7**** [This exhibit has been omitted]
10.8**** [This exhibit has been omitted]
10.9**** [This exhibit has been omitted]
10.10**** [This exhibit has been omitted]
10.11** Lease between Mission West Properties, L.P. and the Registrant dated
July 21, 1999.
10.12+ Technology Development, Marketing, and License Agreement by and
between the Registrant and National Westminster Bank PLC dated
August 18, 1998.
10.13+ Technology Development and License Agreement by and between the
Registrant and Universal Music Group, Inc. dated April 13, 1999.
10.14**+ Technology Development and License Agreement by and between the
Registrant and Upgrade Corporation of America dated August 7, 1996
10.15**+ Technology Development and License Agreement by and between the
Registrant and Mitsubishi Corporation dated October 7, 1996.
10.16** Warrant for the purchase of Class A Voting Common Stock made by the
Registrant and held by Allen & Company Incorporated, dated September
7, 1999
10.17** Amendment to Technology, Development, Marketing and License
Agreement by and between the Registrant and National Westminster
Bank dated August 18, 1998.
10.18** Amendment to Technology Development and License Agreement by and
between the Registrant and Universal Music Group, Inc. dated April
13, 1999
21.1** Subsidiaries of the Registrant.
23.1** Consent of Ernst & Young LLP, independent auditors.
23.2** Consent of Counsel. Reference is made to Exhibit 5.1.
24.1** Power of Attorney.
27.1** Financial Data Schedule.
</TABLE>
- --------
** Previously filed.
*** This warrant was terminated upon the initial public offering.
**** These leases are no longer in existence.
+ Confidential treatment has been requested for certain portions which have
been blacked out in the copy of the exhibit filed with the Securities and
Exchange Commission. The omitted information has been filed separately with
the Securities and Exchange Commission pursuant to the application for
confidential treatment.
<PAGE>
CONFIDENTIAL
EXHIBIT 10.12
_______________________________________________________
TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE
AGREEMENT
by and between
INTERTRUST TECHNOLOGIES CORPORATION
and
NATIONAL WESTMINSTER BANK PLC
_______________________________________________________
______________________________
August 18, 1998
______________________________
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
TABLE OF CONTENTS
-----------------
<TABLE>
<CAPTION>
Page
----
<S> <C>
1. DEFINITIONS AND RULES OF CONSTRUCTION................................... 1
1.1 Definitions......................................................... 1
1.2 Rules of Construction............................................... 6
2. TECHNOLOGY ACCESS AND SUPPORT........................................... 6
2.1 Technology Access................................................... 6
2.2 Training, Assistance and Technical Support.......................... 7
2.3 Additional Assistance; Further Standard Support Packages............ 10
3. LIMITED LICENSE GRANT AND RESTRICTIONS.................................. 10
3.1 Limited License to InterTrust Technology and Modified Technology.... 10
3.2 Limited License to Perform Clearinghouse Functions.................. 11
3.3 License to InterTrust Trademarks.................................... 11
3.4 No Additional Licenses.............................................. 11
3.5 General Restrictions................................................ 11
4. NATWEST SUPPORT AND ADDITIONAL COVENANTS................................ 12
4.1 NatWest Support of InterTrust Technology............................ 12
4.2 Customer and Clearing Agreements.................................... 14
4.3 Notices and Branding................................................ 15
4.4 InterTrust Trademarks............................................... 17
4.5 NatWest's Use of NatWest Trademarks on NatWest Products............. 18
4.6 NatWest Trademarks.................................................. 18
5. LICENSE FEES AND PAYMENT TERMS.......................................... 19
5.1 Fees and Royalties.................................................. 19
5.2 Payment Procedure................................................... 21
5.3 Currency............................................................ 21
5.4 Taxes............................................................... 21
5.5 Interest............................................................ 21
5.6 Audit............................................................... 22
6. PROPRIETARY INFORMATION AND OWNERSHIP................................... 22
6.1 InterTrust Ownership................................................ 22
6.2 NatWest Ownership................................................... 22
6.3 NatWest Limited License to InterTrust............................... 23
6.4 Independent Technology.............................................. 23
7. JOINT ACTIVITIES AND FURTHER COVENANTS.................................. 23
7.1 Joint Press Releases................................................ 23
7.2 Promotion and Marketing............................................. 24
7.3 Technology Advisory Committee....................................... 24
7.4 Security Validation................................................. 25
8. PARTNERING COMMITMENTS
8.1 Intertrust Partnering Commitment.................................... 26
</TABLE>
(i)
<PAGE>
CONFIDENTIAL
<TABLE>
<S> <C>
8.2 NatWest Partnering Commitment........................................ 26
9. CONFIDENTIALITY......................................................... 29
9.1 Classification of Technology and Documents.......................... 29
9.2 Confidentiality Obligations......................................... 29
9.3 Confidentiality of Agreement and Publicity.......................... 29
9.4 Confidentiality of Payments, Audit and Certification Testing........ 30
10. REPRESENTATIONS AND WARRANTIES......................................... 30
10.1 Representations and Warranties of Both Parties..................... 30
10.2 Representations and Warranties of InterTrust....................... 30
10.3 Limitation......................................................... 31
10.4 Reporting and Other Covenants...................................... 31
11. INDEMNIFICATION AND REMEDIES........................................... 31
11.1 Indemnification.................................................... 31
11.2 Cumulative Remedies................................................ 32
11.3 Equitable Remedies................................................. 32
12. EXCLUSION OF DAMAGES................................................... 32
13. TERM AND TERMINATION................................................... 33
13.1 Agreement.......................................................... 33
13.2 Events of Termination.............................................. 33
13.3 Effect of Termination.............................................. 33
13.4 NatWest Continuing Rights.......................................... 34
13.5 Survival........................................................... 34
14. MISCELLANEOUS.......................................................... 34
14.1 Governing Law...................................................... 34
14.2 Venue and Jurisdiction............................................. 34
14.3 Compliance with Law and Export Controls............................ 35
14.4 Amendment or Modification; Assignment.............................. 35
14.5 Notices............................................................ 35
14.6 Waiver............................................................. 35
14.7 No Third Party Beneficiaries....................................... 36
14.8 No Agency.......................................................... 36
14.9 Recovery of Costs and Expenses..................................... 36
14.10 Severability...................................................... 36
14.11 No Solicitation of Employees...................................... 36
14.12 Counterparts; Facsimiles.......................................... 36
14.13 Entire Agreement.................................................. 37
</TABLE>
Exhibits A through H
(ii)
<PAGE>
CONFIDENTIAL
TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE AGREEMENT
THIS TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE AGREEMENT (this "Agreement")
---------
is made and entered into as of the 18/th/ day of August, 1998 (the "Effective
---------
Date") by and between INTERTRUST TECHNOLOGIES CORPORATION, a Delaware
- ----
corporation ("InterTrust"), with offices at 460 Oakmead Parkway, Sunnyvale,
----------
California 94086-4708 and NATIONAL WESTMINSTER BANK PLC, an English corporation
("NatWest") with offices at 41 Lothbury, London, England EC2P 2BP (each a
-------
"Party" and collectively, the "Parties"), with reference to the following:
----- -------
RECITALS
The following provisions form the basis for, and are hereby made a part of, this
Agreement.
A. InterTrust has developed and is continuing to develop a general purpose
architecture and technologies for, among other things, rights protection and
event management related to electronic commerce, including securely managing
electronic information delivery, use, and use consequences.
B. NatWest is a diversified, global financial services corporation. It desires
to provide financial and information clearing services, and related services,
based upon InterTrust technology.
C. The Parties mutually desire that NatWest become an InterTrust Core Partner
and establish product and service offerings using InterTrust Technology.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants contained herein, and
for other good and valuable consideration, the Parties agree to the following:
1. DEFINITIONS AND RULES OF CONSTRUCTION.
1.1 Definitions. In addition to capitalized terms defined elsewhere in this
-----------
Agreement, the following terms shall have the meanings set forth below.
"Application Product(s)" means any software application that: (i) is
----------------------
developed using InterTrust Technology and/or Modified Technology; (ii) directly
contains or incorporates InterTrust Technology solely in the form of Authorized
Application Software, and/or Modified Technology in Object Code and/or Source
Code in accordance with the licenses hereunder; (iii) is not enabled to permit
the performance of any Clearinghouse Functions; and (iv) is in Compliance with
InterTrust Specifications.
"Authorized Application Software" means software incorporating InterTrust
-------------------------------
Technology in Object Code and/or in Source Code (solely as such Object Code and
Source Code are identified and designated by InterTrust on Exhibit A hereto),
that is permitted for distribution in accordance with the applicable licenses
hereunder in such form solely as specified on Exhibit A, which Exhibit may be
amended from time to time by InterTrust to add Object Code and/or Source Code,
or to delete Object Code and/or Source Code to address issues with respect to
security, interoperability, standardization, market growth and/or architectural
and functional integrity (such as to correct Material Defects), and in a manner
consistent for all Core Partners.
"Authorized Clearinghouse Provider" means any Person that is expressly
---------------------------------
licensed by InterTrust to engage in specified Clearinghouse Function activities
and services, but only to the extent: (i) of the scope of such license; and
(ii) that such license is valid and in force.
NatWest/InterTrust Agreement August 18, 1998 ________/________
<PAGE>
CONFIDENTIAL
"Authorized Clearinghouse Software" means software incorporating InterTrust
---------------------------------
Technology, solely in Object Code form and solely as such Object Code is
identified and designated by InterTrust on Exhibit A, that is permitted for
distribution as incorporated in Clearinghouse Products in accordance with the
applicable licenses hereunder in such form solely as specified in such Exhibit
A, which Exhibit may be amended from time to time by InterTrust to add Object
Code, or to delete Object Code to address issues with respect to security,
interoperability, standardization, market growth and/or architectural and
functional integrity (such as to correct Material Defects), and in a manner
consistent for all Core Partners.
"Clearinghouse Function(s)" means any one or more activities, as well as
-------------------------
services resulting therefrom, that use any InterTrust Technology and/or Modified
Technology, or use information derived at least in part from use of such
technology, to: (i) enable payment fulfillment or provision of other
consideration (including service fees, product fees or any other fees and/or
charges) based at least in part on a Control Use; (ii) perform audit, billing,
payment fulfillment (or provision of other consideration) and/or other clearing
activities involving more than one Person; and/or (iii) compile, aggregate, use
and/or provide information relating to more than one Person's use of one or more
Secure Containers and/or Content, including Contents of Secure Containers or any
other Content Managed at least in part using any InterTrust Technology and/or
Modified Technology. Clearinghouse Functions shall include activities, as well
as services resulting therefrom, that use any InterTrust Technology and/or
Modified Technology, or use information derived at least in part from use of
such technology, to, for example: (a) provide financial clearing; (b) provide
object registry services and rights, permissions, prices, and/or other Rules and
Controls information; (c) electronically certify information used with or
required by Rules and Controls, such as authenticating identity, class
membership or other attributes of identity context; (d) provide information
based upon usage auditing, user profiling, and/or market surveying related to
more than one Person's use of one or more Secure Containers and/or Content;
and/or (e) employ information derived from user exposure to Content, such as
advertising.
"Clearinghouse Product(s)" means any software application that: (i) is
------------------------
developed using InterTrust Technology and/or Modified Technology; (ii) directly
contains or incorporates InterTrust Technology solely in the form of Authorized
Clearinghouse Software, and/or Modified Technology only in Object Code, in
accordance with the licenses hereunder; (iii) is enabled to permit the
performance of any Clearinghouse Functions; and (iv) is in Compliance with
InterTrust Specifications.
"Commerce 1.0 (FCS Version)" means certain software having the
--------------------------
functionality described in Exhibit A hereto that incorporates InterTrust
Technology, as provided by InterTrust to NatWest consistent herewith.
"Commerce 1.0 (GA Version)" means certain software having the functionality
-------------------------
described in Exhibit A hereto (as such Exhibit may be modified from time to time
by InterTrust consistent with this Agreement) that incorporates InterTrust
Technology, as provided by InterTrust to NatWest consistent herewith, and is
intended for general commercial availability, dissemination in accordance
herewith, and use in accordance herewith in a widely distributed manner.
Commerce 1.0 (GA Version) shall have at least substantially the same
functionality as Commerce 1.0 (FCS Version).
"Commerce 2.0" means certain software constituting a New Release of
------------
InterTrust's Commerce 1.0 (FCS Version) software and Commerce 1.0 (GA Version)
software incorporating enhanced digital rights management functionality,
including at a minimum such functionality described in Exhibit A hereto that
incorporates InterTrust Technology, as provided by InterTrust to NatWest
consistent herewith.
"Compliance," "Complied" or "Compliant" means fully consistent with and
---------- -------- ---------
fully conforming to all applicable portions of: (i) the most current version of
the InterTrust Specifications (as defined in Section 4.1((b)) hereof) existing
on the date of NatWest's first commercial use, distribution, sale or other
transfer of any applicable NatWest Product or first use of any such product in
connection with any service associated therewith, as the case may be; and
thereafter (ii) the most current version of InterTrust Specifications in
accordance with Section 4.1((b)) hereof, as applied to any such NatWest Product,
and/or associated service. A NatWest Product
2
<PAGE>
CONFIDENTIAL
and/or any associated service that has not passed any required certification
tests as set forth in Section 4.1 hereof shall be deemed non-Compliant with
InterTrust Specifications.
"Content(s)" means any analog or digital information representing text,
----------
graphics, video, digital linear motion pictures, sound and sound recordings,
still images, computer programs or executable or interpretable components
thereof, other data, or other such analog or digital information. Content shall
include any electronic representation of: (i) Rules and Controls; and (ii)
information derived from the Management of Content.
"Content Transaction" means any discrete electronic compensation event
-------------------
related to a specific overall Content compensation arrangement amongst Persons
(which may be comprised of component events and arrangements): (i) Managed, in
whole or in part, through the use of any InterTrust Technology and/or Modified
Technology; and (ii) in connection with which consideration of any kind
(including consideration directly related to such event) is due or payable at
any time to NatWest and/or any other one or more Persons, at least in part, for
any (a) initiated, consummated and/or performed sale, rental, lease, license,
vending and/or any other comparable provision of one or more rights related to
Content, or (b) use of, including any interaction with, Content (such as access
to Content, including production of modified Content).
"Control Use" means any use of InterTrust Technology and/or Modified
-----------
Technology in compliance with InterTrust Specifications to Manage Content
including initiating and/or otherwise governing any consequence (electronic,
physical or otherwise) related to the use and/or processing of Content and/or
provision of goods or services conveyed by or associated with such Content.
Control Use shall include, for example: (i) metering, auditing, charging,
and/or billing, for access to or any other interaction with any Content; and/or
(ii) administering permitted and/or prohibited uses of Content.
"Core Partner" means any Person with whom InterTrust enters into an
------------
agreement or set of agreements, pursuant to which InterTrust: (i) directly
provides early access to InterTrust Technology prior to InterTrust's first
commercial release or provision of such technology to the general public; (ii)
grants a general purpose license to use InterTrust Technology in software
products, applications, and services (excepting limitations with respect to
performing Clearinghouse Functions); and (iii) grants a license to perform
Clearinghouse Functions of a substantially comparable or broader scope than the
licenses granted in Section 3.2 hereof (a "Core Partner Agreement")
"Core Technology" means those components of InterTrust Technology described
---------------
by InterTrust on Exhibit A hereto as core technologies of such InterTrust
Technology, as such Exhibit may be amended from time to time by InterTrust.
"Customer" means any Person that receives or acquires a NatWest Product
--------
(directly or indirectly) from NatWest, and/or participates in an associated
service, pursuant to a Customer Agreement (as set forth in Section 4.2) to: (i)
use such product and/or associated service as an end-user, or further distribute
such product, without modification, to an end-user or to one or more other
Persons for distribution, without modification, to an end-user; or (ii) use such
product solely to (a) incorporate Authorized Application Software into their
products to provide an InterRights Point, or (b) develop and incorporate
software components that initiate interface and operation with an InterRights
Point provided by InterTrust Technology, each of which software components and
InterRights Point is Compliant with InterTrust Specifications; provided that
-------- ----
Customer shall not include any Person who NatWest knows, or has reason to know,
has a present intention to use a NatWest Product and/or associated service for
any use not permitted in a Customer Agreement including, without limitation, the
performance of any Clearinghouse Function, unless such Person is an Authorized
Clearinghouse Provider.
"Documentation" means certain English language versions of documentation
-------------
and/or instructions relating to use of InterTrust Technology that InterTrust may
from time to time provide with the InterTrust Technology, including such
documentation that InterTrust has specifically and in writing identified as
being suitable for general distribution by NatWest to Customers ("Distributable
-------------
Documentation").
- -------------
3
<PAGE>
CONFIDENTIAL
"Enterprise 1.0" means that software described in Exhibit A hereto (as such
--------------
Exhibit may be amended from time to time by InterTrust) that incorporates
InterTrust Technology, as provided by InterTrust to NatWest consistent herewith,
intended solely for use within enterprises and/or for use by enterprises solely
in connection with such enterprise's Content and within the context solely of
products and/or associated services for direct customers of an enterprise or
other Persons having a value chain relationship with such enterprise (such as
suppliers, distributors, consultants, etc.). The initial delivery of such
software shall be in a GA version.
"Gross Commercial Value" means all sums of money as consideration, and/or
----------------------
the fair market value of any other provided consideration, relating directly to
or deriving directly from: (i) any Content Transaction; and/or (ii) performing
any other activity within the Clearinghouse Functions. Without limiting the
foregoing, such consideration shall include consideration based upon Management
of Content and/or information derived at least in part therefrom, including, for
example, consideration: (a) paid by a user as a consequence of, for example,
user exposure to, or other interaction with, Content; (b) paid by a user as a
consequence of the acquisition of one or more rights related to Content; and/or
(c) paid by a proxy or subsidizing payer (such as an advertiser) based upon user
exposure to Content, where, for example but without limitation, after (due to or
based on) receipt of information about user exposure to Content, such advertiser
pays consideration based at least in part on value resulting from such exposure.
Notwithstanding the foregoing Gross Commercial Value shall be reduced by any
included sales, use, value-added or other taxes (except withholding taxes)
imposed by any national, state, local or foreign government and paid by NatWest
as a consequence of clearing a Content Transaction and/or as a consequence of
performing any other directly related activities within the Clearinghouse
Functions.
"Intellectual Property Rights" mean all patent rights, copyrights,
----------------------------
trademarks, trade secret rights, and other similar proprietary rights in any
jurisdiction, and all applications and registrations therefor.
"InterRights Point(s)" means certain InterTrust Technology (as set forth on
--------------------
Exhibit A hereto, as such Exhibit may be amended by InterTrust consistent with
this Agreement) that is a distributed rights and event management, and
distributed administration, virtual machine (i.e. node) that performs, at least
----
in part, as an extension to basic electronic resource management, or is
integrated within such basic resource management.
"InterTrust Specifications" mean the InterTrust technology specifications
-------------------------
provided to NatWest, as established and/or modified by InterTrust in accordance
with Section 4.1((b)) hereof. Such InterTrust Specifications may include: (i)
required design criteria for licensed products and/or associated services,
including, for example, criteria for ensuring the architectural and functional
integrity, standardization, security capability, and/or interoperability of
InterTrust-based technology, components, products and/or associated services
(such as, criteria for electronic environments employing InterTrust Technology
for rights and/or other event-related process management, for example the
operation of general purpose InterRights Points that interoperate with
InterRights Points distributed or normally used by other Persons); (ii)
procedures and requirements for installation, initialization, backup, restore
and/or security updates; and (iii) required certification tests and procedures
to verify Compliance.
"InterTrust Technology" means any and all technology developed by
---------------------
InterTrust and/or by a third Person for InterTrust and provided by InterTrust to
NatWest as set forth in this Agreement directly relating to distributed rights
management systems and methods, electronic content administration, peer-to-peer
trusted event management, and/or distributed electronic commerce automation and
process control systems and methods. For example, such technology includes the
Commerce 1.0 product, the Enterprise 1.0 product, pre-releases thereof, Update
Releases, New Releases and such other products as referenced in Exhibit A hereto
(as such Exhibit may be modified by InterTrust from time to time to provide, for
example, any product modification and/or reconfigurations made available
hereunder).
"InterTrust Trademarks" mean those InterTrust names, logos and other marks
---------------------
listed on Exhibit B hereto, as such Exhibit may be modified by InterTrust in
accordance with Section 4.4 hereof.
4
<PAGE>
CONFIDENTIAL
"Licensed Rights" mean all of InterTrust's worldwide Intellectual Property
---------------
Rights (other than trademark rights) in and to the InterTrust Technology and/or
the Modified Technology, that InterTrust (at any time during the term of this
Agreement) owns or otherwise has the right to grant licenses of the scope
granted herein without the agreement of, or requirement for payment (or the
granting of other consideration) to, any Person.
"Manage(d)" or "Management" means any form of governance, regulation,
--------- ----------
management and/or control, at least in part, through any use of any software,
firmware, hardware (being able to carry out functions) or comparable electronic
means, or combinations thereof, of: (i) rights, processes and/or obligations
related to, or associated with, use of (including access to, transport of,
and/or storage of) Content, including Content related disposition and/or
consequences thereof; and/or (ii) events or event processes related to, or
associated in any manner with, the use of (including access to), attempted use
of, and/or disposition of, Content and/or events, including any consequences
thereof.
"Material Defect(s)" means defect(s) or bug(s) in the InterTrust products
------------------
incorporating InterTrust Technology as delivered by InterTrust to NatWest,
wherein such defect(s) or bug(s) in such delivered products causes one or more
of such delivered InterTrust products to fail to perform: (i) materially in
conformance with (a) the capabilities ascribed to such products in the
applicable portions of InterTrust Specifications, or (b) features and functions
ascribed to such products as specified in Exhibit A; and (ii) in a commercially
reasonable manner in accordance with reasonable U.S. software industry
practices. Material Defects shall not include or mean any defects or bugs in
Modified Technology absent from InterTrust Technology.
"Modified Technology" means all modifications of, and enhancements and/or
-------------------
additions to, the InterTrust Technology created by (or for) NatWest as provided
hereunder, including without limitation all derivative works of the InterTrust
Technology (or other Modified Technology) as such term is defined in the U.S.
Copyright Act (17 U.S.C. (S) 101 et seq., as amended), but only if such
-- ---
modifications, enhancements, additions and/or derivative works are permitted
under Section 3.1((b)) and elsewhere in this Agreement.
"NatWest Product(s)" means any Application Product and/or Clearinghouse
------------------
Product that is developed by (or, consistent with this Agreement, for) NatWest
and is branded and marketed in accordance with the provisions of Sections
4.3((c)), 4.5 and other provisions hereof.
"NatWest Trademarks" mean the names, logos and other marks listed in
------------------
Exhibit B (as such Exhibit may be modified by NatWest from time to time
consistent with Section 4.6 hereof): (i) that are owned or licensed for use
exclusively by NatWest, that may be used as stipulated hereunder in connection
with, and are limited in use to representing exclusively, NatWest, NatWest
Products, and/or associated services permitted hereunder; and (ii) over which
NatWest exercises exclusive control with respect to the commercial use thereof.
"New Release" means any future release by InterTrust of a successor product
-----------
of the Commerce 1.0 product line, the Enterprise 1.0 (GA version) and/or
additional Enterprise 1.0 product line products provided to NatWest hereunder
and (i) that (a) is designated by InterTrust as a numerical change to the
digit(s) to the left of the decimal point for the version number thereof (e.g.,
---
Commerce X.0; Enterprise X.0); or (b) is designed to provide significantly
improved or enhanced functionality for Commerce 1.0's and/or Enterprise 1.0's
general purpose software platform for Distributed Peer-to-Peer Digital Rights
Management (as defined in Exhibit F attached hereto) for the desktop, portable,
minicomputer, mainframe, and/or server computing market(s), as compared to the
immediately preceding version; and (ii) that InterTrust may develop, or have
developed for it, from time to time and make generally available to its Core
Partners. New Releases will reflect additional functionality as determined by
InterTrust after reviewing and analyzing input of Core Partners through
activities of the Technology Advisory Committee (described in Section 7.3
hereof) with respect to current and anticipated market requirements and
reasonable commercial priorities).
"Object Code" shall mean the computer executable binary code derived from
-----------
compiled Source Code for execution by a computing device or system.
5
<PAGE>
CONFIDENTIAL
"Person" means any individual, corporation, limited liability company,
------
partnership, firm, joint venture, association, joint-stock company, trust,
unincorporated organization, government body or agency, or other entity.
"Rules and Controls" mean any information that directs, enables, specifies,
------------------
describes, and/or provides means for performing or not performing operations
related to Content, controlling, for example, usage consequences, and including,
for example, restricting the performance of operations, such as, for example, in
the performance of Management of such Content.
"Secure Container(s)" means electronic container(s) or other electronic
-------------------
data arrangement(s) that: (i) uses one or more cryptographic or other
obfuscation techniques to provide protection for Content; and (ii) supports the
use of Rules and Controls to Manage Content. Secure Container(s) shall not mean
Certificate Authority and/or Session Encryption as such terms are defined in
Exhibit F attached hereto.
"Source Code" means a human-readable, non-executable set of instructions
-----------
for a computer program, from which it may be possible, together with related
source materials and documentation, to discern the logic, algorithms, internal
structure, and operating feature design characteristics of such computer
program.
"Standard Support Package(s)" means one or more technical support packages
---------------------------
that InterTrust may establish and make available to certain or all customer
categories to provide, for example, training, consultation and other technical
assistance, as well as technical support in the form of correction of defects
(including Material Defects) and priority response times in connection
therewith.
"Update Release" means any future release of InterTrust software products
--------------
that is a supplement to the Commerce 1.0 software, or a New Release (including
the Enterprise 1.0 software) provided to NatWest hereunder that: (i)(a) is
designed primarily to correct and/or mitigate known Material Defects in, and/or
to provide minor improvements to, such Commerce 1.0, Enterprise 1.0 or New
Release software, or (b) is designated by InterTrust as a numerical change to
the digit(s) right of the decimal point for the version number thereof (e.g.
----
Commerce 1.XX; Enterprise 1.XX); and (ii) InterTrust may develop, or have
developed for it, from time to time and make generally available to its Core
Partners in accordance herewith.
1.2 Rules of Construction. As used in this Agreement, all terms used in the
---------------------
singular shall be deemed to include the plural, and vice versa, as context
requires. Hereof, herein and hereunder refer to this Agreement as a whole,
------ ------ ---------
including any exhibits hereto, as the same may from time to time be amended or
supplemented and not to any subdivision contained in this Agreement. Including
---------
shall mean including, without limitation; compliance, complied, or comply shall
----------------------------- ---------- -------- ------
mean full compliance, fully complied or fully comply; for example shall mean for
------------------------------- ------------- ----------- ---
example without limitation; and InterTrust shall mean InterTrust and any lawful
- -------------------------- ---------- -------------------------
successor. Descriptive headings are inserted for convenience only, and shall not
- ---------
be utilized in interpreting this Agreement. This Agreement has been negotiated
by the Parties and their respective counsel and shall be fairly interpreted in
accordance with its terms and without any strict construction in favor of or
against either Party. Any and all rights exercisable, actions permitted to be
taken, or decisions to be made, by a Party under this Agreement may be made by
such Party in its sole discretion, except to the extent (and solely to the
extent) expressly provided herein to the contrary, meaning, for example, any use
of the word discretion related to a Party's decision means the sole discretion
of that Party.
2. TECHNOLOGY ACCESS AND SUPPORT.
2.1 Technology Access.
-----------------
(a) Initial Availability. Subject to the terms of this Agreement,
--------------------
InterTrust shall make available to NatWest: (i) the Commerce 1.0 (FCS version);
and (ii) the Documentation set forth in Exhibit A hereto. Such software and
Documentation shall be made available to NatWest promptly following the
execution of this Agreement, receipt of the amount specified in Section 5.1
((a))((i)) hereof, and NatWest's Compliance with the
6
<PAGE>
CONFIDENTIAL
applicable InterTrust Specification concerning Site Certification in effect as
of the Effective Date. Further, InterTrust's Commerce 1.0 (GA Version) and
Enterprise 1.0 (GA Version), respectively, shall be supplied to NatWest at
reasonably the same time as (but in no event later than five (5) business days
after) such software is first made available to any Core Partner, and before
such software is made generally available publicly.
(b) Additional Technology. In addition to the foregoing, and subject to
---------------------
the terms and conditions of this Agreement, InterTrust shall make available to
NatWest: (i) Update Releases at no additional charge (beyond the Support Fee set
forth in Section 5.1((c)) hereof) for a period of [*] years following the
Effective Date; and (ii) New Releases (1) at no additional charge (beyond the
Support Fee) for a period of [*] years after the Effective Date and, (2) for the
subsequent [*] years on terms (including price) [*] and at a cost no greater
than reasonably consistent with applicable U.S. Software Industry practices.
Notwithstanding the foregoing, NatWest shall be entitled to obtain in accordance
with the provisions of this Section 2.1((b)): (A) at no additional charge
(beyond the Support Fee and/or such fees as set forth in Sections 5.1((a))((iv))
and 5.1((a))((v)) InterTrust's Commerce 2.0 software release and, whether in the
form of one or more New Releases and/or Update Releases, software that provides
those functions specified in Section I.B. of Exhibit A hereto (the "Requested
---------
Functionality"), as available from InterTrust at any time during the term of
- -------------
this Agreement; and (B) such portions of New Releases and/or Update Releases, as
applicable, made available by InterTrust after the end of the [*] year following
the Effective Date, if any, that are strictly necessary for NatWest Products and
associated services to remain in Compliance with then existing InterTrust
Specifications and/or subsequent New Specification pursuant to Section 4.1((b))
hereof, provided that such New Release and/or Update Release portions shall be
--------
made available to NatWest on terms (including price) [*] and at a cost no
greater than reasonably consistent with applicable U.S. Software Industry
practices. Further notwithstanding the foregoing, the revenue sharing royalties
set forth in Section 5.1((b)) shall be payable to InterTrust as set forth
therein. Any Update Releases and/or New Releases that NatWest is entitled to
receive pursuant to this Section 2.1((b)) shall be supplied to NatWest at
reasonably the same time (but in no event later than five (5) business days
after) when such software is first made available to any Core Partner and before
such product is made generally available publicly, except that the foregoing
shall not restrict InterTrust from providing Update Releases and/or New Releases
to customers and/or making such Update Releases generally available publicly
where such Update Releases and/or New Releases provide, in material part,
updated software responsive to security, interoperability and/or integrity
concerns. The Parties acknowledge and agree that nothing in this Section 2.1
shall be construed to require InterTrust to make any InterTrust technology
available to NatWest that has been developed by InterTrust as a custom or
specialized effort for, or jointly with, one or more current or prospective
development partners and/or other licensees of InterTrust. To the extent that
InterTrust and NatWest mutually agree in a separate written agreement to have
InterTrust develop any custom or specialized software for, or jointly with,
NatWest (other than the Requested Functionality), the terms and conditions of
such separate agreement shall specifiy whether such custom or specialized
software may be made available to any third Person.
(c) Acknowledgments. In accordance with the above, and subject to
---------------
InterTrust representations set forth in Section 10.2 hereof, it is acknowledged
and agreed that the InterTrust Technology may employ or may operate with one or
more technologies that may not be proprietary to InterTrust but are included
within the Licensed Rights as specified on Exhibit A (the "Third Party
-----------
Technology") and as may be modified from time to time by InterTrust. NatWest's
- ----------
use of the Third Party Technology is limited by the terms of any licenses or
rights that InterTrust may have therein and may sublicense to NatWest.
2.2 Training, Assistance and Technical Support. Subject to the terms and
------------------------------------------
conditions of this Agreement, InterTrust agrees to provide NatWest with the
training, support and assistance set forth in this Section 2.2 for a period of
twenty-four (24) months from the Effective Date (the "Support Period") at no
--------------
additional cost beyond the Support Fee specified in Section5.1((c)). Section
2.2((a)) hereof relates to the provision of Assistance (defined below) and
Section 2.2((b)) relates to technical support of software provided by InterTrust
hereunder. After the Support Period, Assistance and such technical support shall
be provided to NatWest through Standard Support Packages that NatWest may select
and pay for, all as set forth in Section 2.3; provided that at least one
-------- ----
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
7
<PAGE>
CONFIDENTIAL
such Standard Support Package shall provide Assistance and technical support for
provided software (including the correction of Material Defects) reasonably
commensurate with provisions of Section 2.2((a)) and 2.2((b)) hereof.
(a) Training and Assistance. In order to assist NatWest in use of
-----------------------
InterTrust Technology, InterTrust shall provide to NatWest, subject to
applicable terms and conditions of this Agreement, reasonable training, support,
and consulting assistance rendered by appropriately qualified, trained and
experienced personnel ("Assistance"). Up to a limit of two hundred (200) hours
----------
per annum of such Assistance shall be made available to NatWest during the
Support Period. Such Assistance shall be measured based upon InterTrust's
person-hours expended, shall exclude de minimus ad hoc communications and time
-----------------
spent on administrative tasks, and shall be subject to reasonable agreement
between the Parties on scheduling and availability of resources. Assistance
shall include: (i) lecture and hands-on training at InterTrust's facility
(unless otherwise agreed by the Parties) for up to six (6) NatWest personnel;
and (ii) access via e-mail, telephone, and/or video teleconferencing to
InterTrust's support personnel, consistent with applicable U.S. software
industry practices and the foregoing. NatWest shall have access to InterTrust's
automated technical support website in a manner no less favorable than
InterTrust provides to any other Core Partner. In addition, and as set forth in
Section 2.2((d)), InterTrust shall designate a support engineer as NatWest's
primary contact for technical support related matters. NatWest shall be
responsible for all expenses incurred by NatWest's personnel in traveling to and
attending any training and support meetings. In the event InterTrust's personnel
travel from InterTrust's facilities in connection with the provisions of such
Assistance (upon InterTrust's and NatWest's mutual agreement approving such
travel), NatWest shall promptly reimburse InterTrust for all reasonable out-of-
pocket travel expenses incurred by InterTrust's personnel. During the Support
Period, InterTrust shall make Assistance available to NatWest in support of at
least the then-current version of Commerce 1.X and Enterprise 1.X as provided to
NatWest by InterTrust, and those versions distributable in accordance with
InterTrust Specifications, all in accordance with Sections 2.2((a)) and 2.2((b))
hereof, and consistent with Section 4.1((b)) hereof.
(b) Correction of Material Defects.
------------------------------
(i) General. In addition to InterTrust's own on-going quality
-------
assurance efforts, if NatWest brings any Material Defect to InterTrust's
attention in accordance with commercially reasonable and appropriate InterTrust
standard support policy notification procedures (and made available in writing
to NatWest), InterTrust shall use reasonable efforts in accordance with
applicable U.S. software industry practices, at InterTrust's expense, to correct
such Material Defect. If a Material Defect can not through the exercise of such
reasonable efforts be so corrected, or is not otherwise in good faith reasonably
foreseen to be so correctable with commercially reasonable application of
InterTrust resources, InterTrust will use such reasonably prompt efforts to
adjust InterTrust Technology to mitigate such Material Defect in a manner
reasonably commercially designed and/or intended to minimize material adverse
disruption to functionality of InterTrust Technology in current use. Consistent
with the foregoing, InterTrust's efforts to correct or mitigate Material Defects
shall be provided reasonably in a manner set forth in this Section 2.2((b)),
including, as applicable, for the level of NatWest commercial use of InterTrust
Technology. If NatWest requests and InterTrust agrees to commit resources beyond
the level required hereunder, such efforts will be subject to reasonable
reimbursement by NatWest to InterTrust as agreed by the Parties and as
consistent with reasonable industry practice. InterTrust's sole obligation with
respect to any Material Defect shall be InterTrust's correction or mitigation of
such Material Defect pursuant to the terms of this Section 2.2((b)),NatWest's
sole and exclusive remedies with respect to any Material Defect shall be: (i)
InterTrust's correction or mitigation of such Material Defect pursuant to the
terms of this Section 2.2((b)); (ii) NatWest's suspension of certain payments
during the pendency of Critical Material Defects pursuant to Section 5.1((f));
and/or (iii) NatWest's termination of this Agreement as provided in Section
2.2((b))((iii)) or as provided in Section 13.2((a)) in the event of a breach of
this Section 2.2((b)).
(ii) Classification of Priority. When InterTrust is made aware by
--------------------------
NatWest of a Material Defect in accordance with the notification procedures of
Section 2.2((b))((i)) and in the manner set forth below, InterTrust and NatWest
will work together to reasonably classify such Material Defect into the
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
8
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appropriate priority level consistent with the following: (1) a Material Defect
that renders the NatWest Products commercially unusable, resulting in total
business disruption of NatWest's Clearinghouse Function services ("Critical
--------
Material Defects"); (2) a Material Defect that substantially impairs the
- ----------------
commercial use of NatWest Products ("Priority Material Defects"); and (3) a
-------------------------
Material Defect that has lesser impact on the commercial use of NatWest
Products, and/or a Material Defect not described in the immediately preceding
subparagraphs (1) and/or (2) ("Other Material Defects"). In order for InterTrust
----------------------
and NatWest to make such classification and/or correct or mitigate a Material
Defect, NatWest shall describe the alleged defect in reasonable detail, in
writing to the extent possible (and orally to the extent this may expedite the
correction of any Critical Material Defect); provided that all descriptions must
-------- ----
be in sufficient detail to allow InterTrust to reliably reproduce such defect.
(iii) Critical Material Defects. In the event NatWest brings a
-------------------------
Critical Material Defect to InterTrust's attention in accordance with Section
2.2((b))((i)) and ((ii)) hereof, and subsequent to written notification by
NatWest to InterTrust that NatWest is performing live commercial transactions
involving the performance of Clearinghouse Functions on a meaningful commercial
scale, InterTrust will make good faith efforts to communicate an initial
response concerning such Critical Material Defect within six (6) hours.
InterTrust shall devote its support resources in a priority manner to work on
providing an urgent bug fix or workaround patch, process and/or procedure to
temporarily correct or mitigate such defect as soon as practicable, and in a
commercially reasonable manner, and, thereafter, use good faith efforts to work
toward a longer term solution within a commercially reasonable and practical
time frame as may be reasonably projected at such time by InterTrust after
consultation with NatWest, all of the foregoing taking into account the nature,
severity and complexity of such defect, the type and availability of engineering
resources required, and the magnitude of NatWest's commercial, revenue
generating use of InterTrust Technology. In the event a Critical Material Defect
causes a total disruption in one or more of NatWest's substantial live services
involving the performance of Clearinghouse Functions on a material scale as
compared to NatWest's overall services supported by InterTrust Technology, and
InterTrust has failed within sixty (60) days of receipt of notice from NatWest
in accordance with the provisions of Sections 2.2((b))((i)) and 2.2((b))((ii))
to provide an urgent bug fix or workaround patch, process and/or procedure to
temporarily correct or mitigate such defect to restore operation of such
services, NatWest may terminate this Agreement upon providing InterTrust with
ten (10) days prior written notice thereof.
(iv) Priority Material Defects. In the event NatWest brings a
-------------------------
Priority Material Defect to InterTrust's attention in accordance with Sections
2.2((b)))((i)) and 2.2((b))((ii)), and subsequent to written notification by
NatWest to InterTrust that NatWest is performing live commercial transactions
involving the performance of Clearinghouse Functions on meaningful commercial
scale, InterTrust will make good faith efforts to communicate an initial
response concerning such Priority Material Defect within forty-eight (48) hours.
InterTrust shall reasonably devote its support resources to work on providing a
bug fix or workaround patch, process and/or procedure to correct or mitigate
such defect within a practical and commercially reasonable time frame as may be
reasonably projected at such time by InterTrust after consultation with NatWest,
taking into account the nature, severity and complexity of such defect, the type
and availability of engineering resources required, and the magnitude of
NatWest's commercial, revenue generating use of InterTrust Technology.
(v) Other Material Defects. In the event NatWest brings an Other
----------------------
Material Defect to InterTrust's attention in accordance with Sections 2.2((b))
((i)) and 2.2((b))((ii)), InterTrust will make good faith efforts to: (1)
communicate a response promptly; and (2) thereafter correct or mitigate such
defect in manner consistent with Section ((b))((i)) hereof.
(c) Status Meetings. To assist the Parties in sharing information, and
---------------
coordinating and evaluating their efforts relating to InterTrust Technology and
their mutual technical and business objectives, following the Effective Date the
Parties shall meet from time to time to discuss, among other things: (i)
InterTrust's development progress; (ii) implementation of such technology by
NatWest; and (iii) feedback concerning Assistance provided to NatWest and
product development and marketing progress by NatWest (the "Status
------
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Meetings"). Such Status Meetings shall take place not less frequently than once
- --------
a quarter during the first twelve months following the Effective Date.
(d) Dedicated Personnel. InterTrust and NatWest will each appoint a
-------------------
relationship manager, to coordinate its activities pursuant to this Section 0,
and a technical project manager, to coordinate and facilitate the Assistance set
forth in Sections 2.2((a)) and 2.2((b)). InterTrust will reasonably and
consistently maintain such dedicated personnel. InterTrust will also promptly
respond to any NatWest concerns regarding such personnel. InterTrust may utilize
InterTrust resources located in the United Kingdom and/or Europe in part in
providing the Assistance and other services set forth in this Section 2.2.
2.3 Additional Assistance; Further Standard Support Packages. During the
--------------------------------------------------------
Support Period, additional Assistance may be made available by InterTrust to
NatWest beyond the two hundred (200) hours per annum allocated under Section
2.2((a)) ("Additional Assistance"). To the extent NatWest requests, and
InterTrust decides to provide such Additional Assistance, NatWest shall pay to
---------------------
InterTrust fees that are no higher than the lowest fees charged by InterTrust to
any other customers for such Additional Assistance under like circumstances and
at a cost no greater than reasonably consistent with applicable U.S. software
industry practices. Following the Support Period (or earlier if agreed by
NatWest and InterTrust), NatWest may select one or more Standard Support
Packages that InterTrust may offer, except that to the extent NatWest is using
InterTrust Technology and InterTrust requires its customers (who have license
rights and obligations comparable to NatWest) to maintain at least a certain
minimum level of support with respect to its licensed activities, NatWest shall
select and maintain at least such minimum level of support provided by a
Standard Support Package, which minimum level will have associated support fees
not materially in excess of the Support Fee (as adjusted upward for inflation or
to maintain support fees reasonably commensurate with industry standard support
fees in comparable circumstances) and shall provide support commensurate with
the level of support provided in Section 2.2((a)) and 2.2((b)) hereof. Such
support (including correction of Material Defects) shall be provided to NatWest
at a cost no higher than the lowest fees charged by InterTrust to any other Core
Partner for substantially the same level of support under like circumstances and
no greater than reasonably consistent with U.S. software industry practices.
3. LIMITED LICENSE GRANT AND RESTRICTIONS.
3.1 Limited License to InterTrust Technology and Modified Technology. Subject
----------------------------------------------------------------
to the terms and conditions of this Agreement, InterTrust grants to NatWest
during the term of this Agreement a limited, nonexclusive, nontransferable
(except as provided in Section 14.4), nonsublicensable (except as expressly
provided in subparagraph (d) and (e) below), worldwide right and license under
the Licensed Rights to:
(a) use and reproduce the InterTrust Technology and Modified Technology
solely for the purpose of: (1) designing, making, developing, and producing
NatWest Products; and (2) exercising the rights granted under Sections 3.1((b)),
3.1((c)), 3.1((d)), 3.1((e)) and 3.2 hereof;
(b) modify the InterTrust Technology, except any Core Technology, to: (1)
create Modified Technology solely for the purpose of enabling incorporation of
InterTrust Technology into NatWest Products; and (2) incorporate such Modified
Technology into NatWest Products;
(c) use NatWest Products and/or provide associated services in connection
therewith in Compliance with InterTrust Specifications, and otherwise solely in
accordance with this Agreement;
(d) market, distribute, offer for sale, sell, license for use, import,
export and/or otherwise transfer NatWest Products that are Application Products,
and Distributable Documentation, to NatWest Customers pursuant to a Customer
Agreement in accordance with, and as defined in, Section 4.2 hereof, and
otherwise solely in accordance with this Agreement; and
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(e) market, distribute, offer for sale, sell, license for use, import,
export and/or otherwise transfer NatWest Products that are Clearinghouse
Products, solely to Authorized Clearinghouse Providers pursuant to a Customer
Agreement specific to such Authorized Clearinghouse Providers supplied in
accordance with, and as defined in, Section 4.2 hereof, and otherwise solely in
accordance with this Agreement.
3.2 Limited License to Perform Clearinghouse Functions. Subject to the terms
- --- --------------------------------------------------
and conditions of this Agreement, InterTrust grants to NatWest during the term
of this Agreement a limited, nonexclusive, nontransferable (except as set forth
in Section 14.4), nonsublicensable (except as expressly provided in subparagraph
(ii) below), worldwide right and license under the Licensed Rights to: (i)
perform Clearinghouse Functions solely under NatWest Trademarks as specified
herein and in Compliance with InterTrust Specifications; and (ii) have
Authorized Clearinghouse Providers perform any and all tasks and functions
permitted by this Agreement to service InterRights Points provided to a Customer
by NatWest in accordance with Section 3.1((d)), to the extent such Authorized
Clearinghouse Provider has been granted by InterTrust rights of the scope
necessary to perform the immediately foregoing activities. Such Clearinghouse
Functions as set forth in subparagraph (i) of this Section 3.2 may be performed
to service solely InterRights Points that have been provided by (a) a NatWest
Product, and solely in connection with such NatWest Product, or (b) a Person
having a valid written license from InterTrust allowing such Person to permit
Authorized Clearinghouses Providers to service InterRights Points provided by
such Person.
3.3 License to InterTrust Trademarks. Subject to the terms and conditions of
--------------------------------
this Agreement, InterTrust grants to NatWest during the term of this Agreement a
limited, royalty-free, nonexclusive, nontransferable (except as set forth in
Section 14.4), nonsublicensable (except as expressly provided in Section
3.1((d)) and ((e)) and Section 3.2(ii)), worldwide license to use and display
the InterTrust Trademarks solely: (i) on NatWest Products and in connection with
associated services to indicate that such products and services are in
Compliance with InterTrust Specifications; (ii) on related Distributable
Documentation and marketing and sales materials to identify that InterTrust
Technology is being utilized by NatWest; and (iii) as otherwise set forth herein
or reasonably stipulated in writing by InterTrust's Chairman of the Board, or
any other InterTrust officer designated in a written communication to NatWest
signed by InterTrust's Chairman of the Board (an "InterTrust Designated
---------------------
Officer").
- -------
3.4 No Additional Licenses. NatWest understands and acknowledges that
----------------------
InterTrust is licensing to NatWest only certain limited rights to use InterTrust
Technology as described herein; and InterTrust understands that NatWest is
licensing to InterTrust only certain limited rights as expressly set forth
herein. Thus, notwithstanding the generality of any other provision herein: (i)
NatWest acknowledges and agrees that the licenses granted under Sections 3.1,
3.2, and 3.3 are the only licenses granted to NatWest; (ii) InterTrust
acknowledges that the licenses granted under Sections 4.6 and 6.3 are the only
licenses granted to InterTrust; and (iii) both Parties acknowledge that no other
licenses have been expressly, or by implication or estoppel, now or in the
future, granted except pursuant to a separate written agreement executed by an
authorized officer of NatWest and an InterTrust Designated Officer. Any and all
rights of InterTrust not expressly granted to NatWest under this Agreement are
reserved and retained by InterTrust. Any and all rights of NatWest not expressly
granted to InterTrust under this Agreement (including pursuant to Sections 4.6
and 6.3 hereof) are reserved and retained by NatWest.
3.5 General Restrictions. NatWest covenants that it shall not: (i) during the
--------------------
term of this Agreement (a) reverse engineer any portion of the Core Technology
or any technology that has been supplied to NatWest in Object Code form only,
(b) modify any portion of the Core Technology, and/or (c) engage in any "clean
room" activities designed to replicate the functionality of the Core Technology
for any use inconsistent with this Agreement; or (ii) after the term of this
Agreement, use or exploit the InterTrust Technology for any purpose whatsoever
(except as expressly provided in Section 13.3). Any material use by NatWest of
any portion of the InterTrust Technology and/or Modified Technology outside the
scope of the licenses granted by InterTrust hereunder shall constitute a
material breach of this Agreement. If the provisions of subsections (i)(a),
(i)(b) and/or (i)(c) of this Section 3.5 are prohibited by any jurisdiction
having competent jurisdiction over this Agreement and such prohibition cannot be
waived by a Party by nature of the foregoing language, or otherwise be
reasonably avoided by a Party (such as, for example, by developing, accessing
and/or using any relevant
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portions of the InterTrust Technology outside of such jurisdiction), then (1)
before engaging in any of the activities set forth in such subsections (i)(a),
(i)(b) and/or (i)(c), NatWest shall provide InterTrust with ninety (90) days
prior written notice; and (2) all information and/or technology derived from
such activities (the "Derived Information") shall be treated as InterTrust
-------------------
Confidential Information (defined below) or Top Secret Information (defined
below) as the case may be, and shall be used solely within the scope of
NatWest's licenses granted under this Agreement and the other terms and
conditions hereof. Furthermore, any disassembly, decompilation or reverse
engineering undertaken in reliance upon such applicable jurisdiction' s
prohibiting law shall take place only where such disassembly, decompilation or
reverse engineering of any InterTrust software (or any part thereof) and
reproduction of the software and translation of its form are indispensable to
obtain the information necessary to achieve the interoperability of the software
with other programs, provided that: (A) these acts are performed by such Person
-------- ----
or by another Person having a right to use a copy of the software, or on their
behalf by a Person authorized under this Agreement to do so and where such acts
are not in violation of any applicable governing law; (B) the information
necessary to achieve reasonable interoperability has not previously been readily
available to the Persons referred to in subparagraph (A); and (C) these acts are
confined to the parts of the software which are necessary to achieve
interoperability (as interoperability may legally be most narrowly interpreted
under applicable law and precedent, for example to exclude from
"interoperability" any acts that compromise system security and/or undermine
basic viability or functionality of InterTrust Technology and/or NatWest
Products) and occur solely as is consistent with the licenses under this
Agreement, and where any rights to use any information derived from such acts
terminate immediately and fully upon any cessation or termination of applicable
licensed rights hereunder.
4. NATWEST SUPPORT AND ADDITIONAL COVENANTS
4.1 NatWest Support of InterTrust Technology.
----------------------------------------
(a) NatWest Use of InterTrust Technology. In accordance with the
------------------------------------
licenses granted to NatWest and the other terms hereunder, in addition to those
provisions of Section 8.1, NatWest agrees to make commercially reasonable, good
faith efforts to develop, produce, and distribute or use for commercial
purposes, in a commercially meaningful manner, a NatWest Product (as applicable)
as soon as commercially reasonable and practicable, and in any case within
twelve (12) months following the Effective Date. Such time period shall be
extended by any period in which there is a delay in InterTrust's delivery of the
Commerce 1.0 (GA Version) software beyond that set forth as of the Effective
Date in Exhibit A hereto, or there exists a Material Defect in the Commerce 1.0
software that materially impedes NatWest's development efforts as relevant, but
only for the period from the date that NatWest shows such efforts to have been
first materially impeded to the date such defect has been reasonably corrected
or mitigated as provided in Section 2.2((b)).
(b) Compliance with InterTrust Specifications.
-----------------------------------------
(i) Products and Services. NatWest shall not commence the
---------------------
distribution, sale or other transfer of any specific NatWest Product, or perform
any service directly relating to InterTrust Technology, unless such products
and/or services are in Compliance with InterTrust Specifications. Such
InterTrust Specifications shall be established and applied in a
nondiscriminatory and consistent manner with respect to all Persons regarding
similar products, services, and/or circumstances directly related to use.
InterTrust Specifications promulgated as of the Effective Date are set forth in
Exhibit C hereto.
(ii) Compliance with New Specifications. InterTrust may, from time to
---- ----------------------------------
time, modify InterTrust Specifications to accommodate changes in InterTrust
Technology, and/or any related InterTrust product development, for such purposes
as, for example, improving architectural integrity, functional capability,
standardization, security capability, efficiency, and/or interoperability of
technology, components, products and/or services that use InterTrust Technology
(a "New Specification"). InterTrust shall use commercially reasonable efforts to
-----------------
maintain compatibility between a New Specification and the then-preceding
Specification taking into account benefits of performance, functionality,
security enhancements, growth of installed base and
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range of supported platforms, and potential burden resulting from version
incompatibility. Priority shall be given to considerations of security,
interoperability and platform support in evaluating when such compatibility is
not commercially appropriate. To the extent InterTrust releases a New
Specification that applies to any portion of a NatWest Product and/or service
associated with InterTrust Technology then being performed or distributed by
NatWest (as applicable), NatWest shall bring any further such products delivered
to Customers, and/or any such services (as applicable), into Compliance with
such New Specification as of the earliest to occur of: (A) the next version,
release, or production cycle of such NatWest Product and/or such associated
service (the "Next Version"), as earlier applicable, but only to the extent that
------------
NatWest receives notice of such New Specification within a reasonably sufficient
time of such Next Version to accommodate new aspects of such New Specification;
and (B) [*] months after NatWest receives a released copy of such New
Specification. InterTrust and NatWest further agree that NatWest shall, within
[*] months after receiving a released copy of such New Specification,
implement such new aspects of such New Specification for all applicable services
supporting and/or employing NatWest Products and/or any other products employing
InterTrust Technology provided to Customers and not meeting such New
Specification. Notwithstanding the foregoing, should serious technical
interoperability and/or security requirements commercially necessitate more
prompt action, NatWest and InterTrust will confer and agree upon more
aggressive, practical schedules (taking into account the severity of security
and interoperability concerns) feasible to ensure Compliance with the New
Specification for all NatWest Products and any services relating to InterTrust
Technology. Under such conditions, NatWest shall take whatever commercially
appropriate steps are reasonable and required under the circumstances to
minimize or eliminate (as may be necessary) a continuation of such
interoperability and/or security problems. InterTrust represents to NatWest that
all Core Partner Agreements existing as of the Effective Date contain
substantially similar commitments regarding compliance by such Core Partner with
InterTrust Specifications and New Specifications as provided for in this Section
4.1(b)(c). If during the term of this Agreement InterTrust enters into a
technology development and/or license agreement with any Core Partner having
terms [*] to such Core Partner than those contained in this Section 4.1((b)),
and pursuant to such agreement the requirements of Compliance with
Specifications [*] to such Core Partner than the set forth in this Section
4.1((b)), NatWest shall thereafter going forward be accorded [*] regarding the
requirements of Compliance with Specifications under this Section 4.1((b)), but
solely to the specific extent and nature of such [*].
(c) Compliance Testing.
------------------
(i) Purpose. NatWest acknowledges that:(1) in support of InterTrust
-------
Technology, InterTrust will implement one or more certification programs
designed to ensure that licensed products and/or associated services (including
NatWest Products) use InterTrust Technology and/or Modified Technology in
Compliance with InterTrust Specifications in accordance with this Agreement (the
"Certification Program(s)"); and (2) such Certification Program(s) is (are)
------------------------
critical to maintaining the reliability, interoperability, and tamper resistance
of products and services employing InterTrust Technology and/or Modified
Technology, and in maintaining public confidence in the integrity of InterTrust
Technology and/or brands as the resource for interoperable electronic commerce.
In establishing its Certification Programs, as may be modified from time to
time, InterTrust shall use reasonable efforts to establish policies supporting
efficient certification of products and services based upon InterTrust
Technology, subject, in InterTrust's discretion, to achieving the aforementioned
goals of certification. As appropriate under the circumstances as determined by
InterTrust, such alternatives may, under certain circumstances, include: (A) the
pre-certification of certain components of InterTrust Technology for use in
NatWest Products; (B) providing test programs or suites amenable for self
certification or preliminary assessment of certifiability; and/or (C) otherwise
supporting certification policies and/or technology that enables reasonable
certification efficiency and Compliance with InterTrust Specifications. Any
Certification Program(s) established by or for InterTrust for Development
Partners shall be applied in a nondiscriminatory and consistent manner with
respect to NatWest and all other Persons providing similar products and/or
services.
(ii) Certification Requirements. Consistent with the foregoing,
--------------------------
prior to NatWest's first commercial use, or distribution, sale, or other
transfer, of a NatWest Product or associated service (as applicable) InterTrust
may require NatWest's: (1) use of a suite of test software provided by
InterTrust (or an InterTrust
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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delegate ("Delegate") in accordance herewith) to test and verify that
--------
NatWest Products (and/or associated services) are, at least in part, in
Compliance with InterTrust Specifications; and/or (2) submission of samples to
InterTrust (and/or an InterTrust Delegate) of such NatWest Products (in Object
Code form unless Source Code is necessary or reasonably appropriate) and
associated programs, parameter data, and other information that may be
technically material to ascertain Compliance with InterTrust Specifications
and/or to allow InterTrust (or a Delegate) to perform confidential testing
("Certification Testing"). To the extent that options (1) or (2) immediately
---------------------
above do not, or can not reasonably be anticipated to, provide sufficient
information to verify Compliance, such Certification Program(s) may also require
the provision to InterTrust and/or an InterTrust Delegate of detailed
specifications and documentation related to NatWest's use of InterTrust
Technology and Modified Technology for NatWest Products, and/or any associated
services, but only to the extent that any such specifications and documentation
are reasonably requested for certification assessment purposes and may be
material to Certification Testing. All specifications and documentation provided
by NatWest in connection with any such Certification Program(s) shall be
authenticated in writing by an authorized representative of NatWest, and no
NatWest Product and/or associated service shall be made commercially available
hereunder unless it has become a Compliant Product (defined below). Any such
Delegate performing certification in connection with NatWest Products and
associated services hereunder shall: (A) not have commercial interests
materially adverse to NatWest; and (B) have agreed to enter into a
confidentiality agreement to maintain the confidentiality of NatWest
Confidential Information.
(iii) InterTrust Certification Response. In connection with any
---------------------------------
submissions made to InterTrust or an InterTrust Delegate in connection with a
Certification Program, InterTrust (or such Delegate) will respond in a
reasonably prompt manner recognizing product delivery time frames as appropriate
following receipt of submitted products and access to, or receipt of technology
supporting, such service, unless commercially reasonable factors result in
prolonging such response. Such response shall be in the form of: (1) a written
approval that the product or service is certified (a "Compliant Product")
-----------------
(NatWest Products and services relating to InterTrust Technology not being
Compliant until such certification has been granted); or (2) if not approved, a
summary, with reasonable details as feasible, of problems and, where feasible,
suggested solutions.
(iv) Costs. To defray costs associated with the performance and
-----
administration of the Certification Program, in connection with the
certification of any product or service NatWest shall be charged a reasonable
fee not to exceed U.S. software industry norms for similar testing activities as
may be available (and, if in part or in full conducted or managed by InterTrust,
not more than the full cost incurred by InterTrust in performing, administering,
and/or managing such tests, and, to the extent conducted by a Delegate, not more
than fees charged by such Delegate to NatWest and InterTrust). An estimate of
such fee shall be provided to NatWest, as applicable, as soon as reasonably
practical upon NatWest's submission of samples or documentation for and access
to services, for testing, and such fee shall be paid by NatWest in accordance
with standard U.S. software industry practices.
(d) Documentation Format. NatWest may modify the format of Distributable
--------------------
Documentation and supplement the content thereof, but only in a manner
consistent with such Distributable Documentation, to the extent reasonably
necessary to enable NatWest's Customers to utilize NatWest Products and/or
associated services. Subject to the provisions of this Agreement, NatWest may,
at its expense, translate, or have translated for it, the Distributable
Documentation into any appropriate language for purposes of delivery to its
Customers or its own internal use. InterTrust shall have the right to receive
and approve (to the extent referencing InterTrust Technology and/or capabilities
and/or functions enabled by InterTrust Technology) any non-English translations
made by or for NatWest of documentation provided by NatWest concerning NatWest
Products and any related services (including Distributable Documentation),
legends and notices required pursuant to Section 0 hereof and other required
notices, and all versions of InterTrust Technology.
4.2 Customer and Clearing Agreements.
--------------------------------
(a) Basic Requirements. NatWest shall distribute NatWest Products only to
------------------
Customers (and perform associated services only for Customers), and only after
NatWest shall have first notified and required
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such Person to become bound by a form of customer agreement ("Customer
--------
Agreement") for such NatWest Product (and/or associated service) appropriate for
- ---------
such Customer (such as whether such Customer is an end-user or intends to
further distribute NatWest Product) as provided by NatWest. Such Customer
Agreement forms shall have terms relating to InterTrust Technology and
InterTrust's rights and interests consistent with and reflective of the terms of
this Agreement. Such Customer Agreement shall also have terms consistent with,
reflective of, and based upon the items set forth in Exhibit D hereto
(collectively, the "InterTrust Terms"). Such InterTrust Terms shall be signed by
----------------
an InterTrust Designated Officer and appended to Exhibit D, and NatWest and
InterTrust may from time to time supplement or amend Exhibit D as provided in
Section 0(0).
(b) Additional Provisions. The approved InterTrust Terms shall be used
---------------------
by NatWest in all Customer Agreements unless and until: (i) NatWest requests a
modification of the InterTrust Terms and InterTrust consents in its discretion
in writing to such modification; or (ii) InterTrust reasonably requires that
NatWest alter the InterTrust Terms where such alteration is needed to prevent or
mitigate any impairment of any part of its Intellectual Property Rights, or any
impairment of the security and/or interoperability of InterTrust Technology and
applications and/or services based thereon, for example in view of court
decisions and/or applicable regulations and/or newly available information.
Such alteration to the InterTrust Terms shall be signed by an InterTrust
Designated Officer and attached to Exhibit D in accordance herewith. NatWest
agrees and acknowledges that NatWest's compliance with this Section 4.2((b))
with respect to any specific Customer shall constitute a condition precedent to
the licenses granted under Section 3 hereof with respect to any such Customer's
use of NatWest Products and/or associated services. To the extent any InterTrust
Terms are deemed, or are reasonably believed by InterTrust to have a substantial
likelihood of being deemed, unenforceable or otherwise ineffective in any
relevant jurisdiction, NatWest shall, upon becoming aware of such InterTrust
Terms being deemed unenforceable or otherwise ineffective, or upon receiving
written notice from InterTrust as to such reasonable belief, substitute new
terms provided by InterTrust concerning such unenforceable or ineffective
provision in such Customer Agreement forms or existing Customer Agreements, and
take other actions as reasonably specified by InterTrust related to such
unenforceability concerns, including reforming, modifying and/or canceling any
such Customer Agreement if necessary to provide InterTrust with the legally
enforceable protection contemplated hereunder.
(c) InterTrust Terms Review. Under no circumstances: (i) shall any such
-----------------------
review by InterTrust of InterTrust Terms and/or any terms of any Customer
Agreement subsequently be interpreted and/or used as comments of InterTrust to
be relied upon by NatWest in any manner whatsoever regarding compliance of such
InterTrust Terms and/or such Customer Agreement terms with the provisions of
this Agreement; and/or (ii) shall any such review or lack of review by
InterTrust be deemed (1) binding on InterTrust or constitute any waiver of any
rights whatsoever hereunder by InterTrust and/or (2) an admission or waiver of
any kind whatsoever under any circumstances whatsoever, except that NatWest may
rely on InterTrust Terms attached to Exhibit D hereto as amended from time to
time in accordance herewith.
(d) Clearing Agreement. Where NatWest is performing any Clearinghouse
------------------
Function services for a Person selling, acting as lessor or licensor of,
vending, or in any comparable manner providing rights related to Content, or
performing any other activities constituting a Content Transaction for
consideration for such Content (a "Vendor"), NatWest shall have a written
------
agreement with such Vendor concerning such performance of Clearinghouse
Functions, and such agreement shall contain (in addition to the InterTrust
Terms, as applicable), at minimum, provisions: (i) requiring such Vendor to
report and certify Customer's Portion Information (as defined in Section
5.1((b)) hereof) to NatWest in writing, and regularly update such reported
information (consistent with the timing of NatWest's obligation to remit
royalties pursuant to Section 5.2 hereof) in the event of any change thereof;
(ii) terminating such agreement in the instance that such reported information
is found to have been materially or intentionally misrepresented or repeatedly
negligently reported; and (iii) permitting InterTrust to act as a third party
beneficiary (with the right to enforce) those provisions set forth in the
preceding subparagraphs (i) and (ii) under the law of such jurisdiction and
venue as set forth in the InterTrust Terms, unless any such terms are prohibited
by applicable law, and then as reasonably agreed by the Parties.
4.3 Notices and Branding.
--------------------
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(a) Product Notices. NatWest shall place Notices (as hereinafter defined)
---------------
on all NatWest Products, and Distributable Documentation: (i) in the "about
box," or (ii) at such other equivalent location(s) as may be required to provide
legally sufficient notice and/or as reasonably agreed in writing by InterTrust
and NatWest, such as on certain screens generated by or including the NatWest
Products and/or any associated services, and at such other locations as
appropriate to protect InterTrust's Intellectual Property or as may be
reasonable practice in the U.S. software industry. For purposes of this
Agreement, the term "Notices" shall consist of: (i) Intellectual Property
Rights, warranty, and disclaimer notices; and (ii) field of use notices
consistent with the terms of this Agreement (including protection of InterTrust
rights recognized hereby) as all such notices may be reasonably amended by
InterTrust from time to time consistent with the provisions of Section
4.2((b)), and this Agreement. A representative version of such Notices as of
the Effective Date are attached hereto as Exhibit E. NatWest shall not remove,
alter, cover, obfuscate and/or otherwise deface any InterTrust Trademarks or
Notices on any InterTrust Technology or associated documentation, marketing and
advertising materials therefor, and shall contractually prohibit any and all
Customers from -- and take commercially reasonable efforts to enforce such
prohibitions against any Person known by NatWest to be in breach of such
provisions concerning -- removing, altering, covering, obfuscating or otherwise
defacing of any InterTrust Trademarks or Notices on any InterTrust Technology
or associated documentation, marketing and advertising materials therefor.
Compliance with subsections (i) and (ii) immediately above (following notice
and opportunity to cure in accordance with the provisions of Section 13.2
hereof) shall constitute a condition precedent to the licenses granted under
Section 3 hereof with respect to those specific NatWest Products and/or
associated services not in compliance herewith.
(b) InterTrust Branding. NatWest shall, in accordance with the provisions
-------------------
of this Section 4.3((b)) and InterTrust's reasonable instructions provided from
time to time by InterTrust to NatWest, place the InterTrust brands as specified
below on all NatWest Products and associated services, Distributable
Documentation, marketing, sales, and advertising materials therefor, packaging
for any physical media containing any such products or services, on
initialization and/or start-up screens of any NatWest Products and/or
associated services, or such screens generated by or including the NatWest
Products and/or any associated services.
The InterTrust brands shall be the symbol or mark denoting Compliance of such
NatWest Products and/or associated services with InterTrust Specifications,
including the statement that such NatWest Products or associated services are
"InterTrustworthy" or "InterTrustable" (as such symbol or mark may be amended by
InterTrust from time to time consistent with the provisions of Section 4.4((e))
hereof). Such branding shall be located and appear in the manner specified by
InterTrust, which shall be prominent, although secondary to the brands of
NatWest and/or a NatWest Customer on a NatWest Product and/or service. Such
InterTrust branding shall be prominent, but not unreasonably detract from, or
interfere with, such other brands. NatWest shall not remove, alter, cover,
obfuscate and/or otherwise deface any InterTrust brands and shall contractually
prohibit its Customers from, and take commercially reasonable efforts to enforce
such prohibitions against any Customer known to NatWest to be in breach of such
provision concerning, the removal, alteration, covering, obfuscation or
otherwise defacing of such InterTrust brands.
(c) NatWest Product Branding. NatWest Products that are: (i)
------------------------
Clearinghouse Products (and/or services associated therewith) shall be branded
and marketed solely under NatWest Trademarks; and (ii) Application Products
(and/or services associated therewith) shall be branded and marketed solely
under NatWest Trademarks or "Co-Branded" (as defined below) under a NatWest
----------
Trademark and the trademark of a Customer in accordance with the provisions
hereof (except where use of InterTrust Trademarks is also required herein, or
other trademarks of Persons are also included in a limited manner to identify
other technology or services associated with such NatWest Product and/or
associated service), and in all events in accordance with the provisions of
Section 4.5 and other provisions hereof. As used herein, "Co-Branded" means that
----------
both a NatWest Trademark brand and the brand of a NatWest Customer appear on a
NatWest Product and/or associated service; provided that the NatWest brand shall
-------- ----
at least be clearly evident and prominent in all instances of branding usage
without unreasonably detracting from or interfering with such NatWest Customer
brand. References to Clearinghouse Function services with, in, or otherwise
related to NatWest Products that are Application Products, and/or services
through which NatWest provides Clearinghouse Function services shall be
prominently branded solely under NatWest Trademarks (except as provided under
Section 4.3((b)) including prominent branding on screens and/or user interfaces
directly relating to initiating and/or reporting on transactions, and
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materially prominent, though potentially secondary, mention on other splash
screens and/or other relevant screens visible to end users. If NatWest is not
performing the Clearinghouse Function services for any NatWest Product and/or
associated service then, in addition to the foregoing with respect to a Co-
Branded Product, the NatWest Trademark Brand shall occupy not less than [*]
percent ([*]%) of the aggregate presentation area in any NatWest Product and/or
associated service dedicated to the presentation of any brands. In no event
shall branding be employed that may be in any manner unclear that the branding
and provision of Clearinghouse Products (and/or services associated therewith)
is provided solely by NatWest.
(d) Network Notices. At InterTrust's option and upon NatWest's approval,
---------------
which shall not be unreasonably withheld given the balance of commercial
reasons, NatWest Web pages that materially promote or otherwise support NatWest
Products, and/or associated services and InterTrust Technology (and/or at least
one NatWest Web page that materially promotes NatWest Products and/or associated
services if no Web pages materially promote or otherwise support InterTrust
Technology) shall contain a graphical banner provided by InterTrust and a link
to a Web page provided by InterTrust on the Internet or the equivalent thereof
on any other public electronic network that materially promotes InterTrust
Technology. At NatWest's option and upon InterTrust's approval, which shall not
be unreasonably withheld given the balance of commercial reasons, InterTrust Web
pages that materially promote or otherwise support InterTrust Technology and
NatWest Products and/or associated services (and/or at least one InterTrust Web
page that materially promotes InterTrust Technology if no Web pages materially
promote or otherwise support NatWest Products and/or associated services) shall
contain a graphical banner provided by NatWest and a link to a Web page provided
by NatWest on the Internet or the equivalent thereof on any other public
electronic network that materially promotes NatWest Products and/or associated
services so long as NatWest treats InterTrust as its preferred partner for
Secure Container and/or Digital Rights Management technologies.
(e) Prospective Notice. The Notices shall be effective beginning on the
------------------
date InterTrust gives NatWest written notice thereof and NatWest shall implement
and/or comply with applicable portions thereof as soon as reasonably
commercially practicable thereafter.
4.4 InterTrust Trademarks.
---------------------
(a) Standards. NatWest recognizes the importance of InterTrust's
---------
reputation and goodwill as the provider of a commercial trust environment and in
connection with NatWest's use and distribution of licensed products and services
bearing InterTrust Trademarks. Consequently, to maintain InterTrust's interest
in and rights to the InterTrust Trademarks NatWest shall utilize the InterTrust
Trademarks in accordance with reasonable trademark guidelines (which may include
approved samples and exemplars) as may be provided to NatWest by InterTrust.
Such trademark guidelines shall include a list of InterTrust Trademarks and
shall specify restrictions on use, if any, including permitted and prohibited
countries and jurisdictions. InterTrust Trademarks and trademark guidelines as
of the Effective Date are initially listed on Exhibit B attached hereto, and may
be modified by InterTrust from time to time upon InterTrust's provision to
NatWest of reasonable prior written notice. Any such modification shall not
include any names, logos or marks that substantially conflict, create a
likelihood of confusion with, or cause substantial or material dilution of any
then-existing trademark rights of NatWest.
(b) Trademark Ownership; Contestability. NatWest acknowledges and agrees
-----------------------------------
that all uses of InterTrust Trademarks as permitted hereunder, and goodwill
associated therewith, shall inure solely to the benefit of InterTrust. NatWest
shall not contest the validity of any InterTrust Trademarks (or registrations
thereof or applications with respect thereto), or InterTrust's exclusive
ownership of the InterTrust Trademarks or their associated goodwill: (i) with
respect to any InterTrust Trademarks included on Exhibit B as of the Effective
Date ("Initial Trademarks"); and/or (ii) with respect to any InterTrust
------------------
Trademarks later added to such Exhibit B in accordance with Section 4.4((a))
("Added Trademarks") (provided that NatWest uses such Added Trademarks in
----------------
commerce during the term hereof). NatWest agrees to make available to
InterTrust, upon request with reasonable notice, samples of records and other
documentary evidence as is (are) retained in the ordinary course of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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NatWest's business regarding its use of the InterTrust Trademarks, and
information regarding first use of the InterTrust Trademarks by NatWest in each
country.
(c) Confusing Similarity. NatWest shall not use any marks identical with
--------------------
or confusingly similar to any of the Initial Trademarks, or Added Trademarks
used in commerce by NatWest at any time, and shall not register or attempt to
register any marks identical with or confusingly similar to any Initial
Trademarks or any Added Trademarks used in commerce by NatWest at any time
during the term hereof. NatWest also shall not knowingly permit to be used or
affixed (and shall take commercially reasonable steps to prohibit Customer from
using or affixing) any trademark on any NatWest Product supplied to such
Customer to the extent such trademark could reasonably be thought to be
confusingly similar to or create any market confusion with any trademarks used
by such Customer in connection with any products or services using Secure
Container technology (other than InterTrust Technology Secure Containers).
(d) Approvals. InterTrust shall have the right to review (reasonably
---------
prior to first commercial use) and to approve (which approval shall not be
unreasonably withheld or delayed) all uses of InterTrust Trademarks, including
any use thereof on NatWest Products, and in connection with associated services
(including performance of Clearinghouse Functions) provided by NatWest relating
to products and applications employing InterTrust Technology and/or Modified
Technology, and in related documentation and marketing materials. Uses or
ranges of uses of InterTrust Trademarks approved in writing by InterTrust may be
used by NatWest in connection with NatWest Products and/or associated services,
and all applicable related documentation and marketing materials until
InterTrust informs NatWest in writing that such use or range of uses is no
longer approved, and such notification shall take effect in the manner set forth
in Section 4.3((e)) hereof.
(e) Prospective Notice. Changes in the InterTrust Trademarks and
------------------
associated standards of quality shall be effective beginning on the date
InterTrust gives NatWest written notice thereof and NatWest shall, as soon as
reasonably commercially practicable thereafter, implement and/or comply with
such respective portions thereof.
4.5 NatWest's Use of NatWest Trademarks on NatWest Products. To promote the
-------------------------------------------------------
branded and distinct identity of any NatWest Products, or associated services,
NatWest acknowledges and agrees that any trademark or logo used by NatWest
and/or a NatWest Customer (with respect to Co-Branded NatWest Products) in
commerce to specifically identify, label or market any such products or services
(other than trademarks or logos that serve to generally identify NatWest or such
NatWest Customer) shall not, concurrently or thereafter, be used to identify any
product or service other than such NatWest Products, and associated services,
whether by NatWest, such NatWest Customer, or pursuant to license from NatWest.
4.6 NatWest Trademarks. InterTrust shall obtain permission from NatWest for any
------------------
use of NatWest's Trademarks in connection with marketing activities (which
permission shall not be unreasonably withheld or delayed) and shall comply with
NatWest's instructions provided in writing by NatWest concerning such further
use of any NatWest Trademarks, except that InterTrust shall have the royalty
free, nontransferable (except as provided in Section 14.4) worldwide right to
use the NatWest Trademarks and other NatWest trademarks as selected by NatWest,
solely in connection with any publicity in accordance with Sections 4.3((d)),
7.1, 7.2 and 9.3 hereof. InterTrust shall comply with all reasonable trademark
guidelines provided in writing by NatWest concerning such use of any NatWest
Trademarks which guidelines shall specify restrictions on use, including
permitted countries and jurisdictions. The provisions of Section 4.4 shall apply
reciprocally to InterTrust with respect to NatWest Trademarks as it applies to
NatWest with respect to InterTrust Trademarks, and InterTrust shall comply with
such provisions. NatWest Trademarks and trademark guidelines as of the Effective
Date are listed on Exhibit B attached hereto, and may be reasonably modified by
NatWest from time to time upon NatWest's provision to InterTrust of reasonable
prior written notice thereof. Any such modification will not include any names,
logos or marks that substantially conflict with, create a likelihood of
confusion with, or cause a substantial or material dilution of then-existing
trademark rights of InterTrust.
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5. LICENSE FEES AND PAYMENT TERMS.
5.1 Fees and Royalties.
------------------
(a) InterTrust Technology Fees. In consideration of the licenses granted
--------------------------
to NatWest herein and the other terms and conditions hereof, NatWest shall pay
to InterTrust the following nonrefundable license fees, net of any withholding
tax:
(i) concurrently with the execution hereof, [*] dollars ($US[*]);
(ii) within thirty (30) days after the delivery to NatWest of the
Commerce 1.0 (GA Version), [*] dollars ($US[*]);
(iii) upon the earlier of (1) NatWest's first commercial transfer
and/or use of a NatWest Product and/or associated services pursuant to Section
3.1((c)) and/or ((d)) hereof, or (2) one (1) year from the Effective Date, [*]
dollars ($US[*]), which payment shall be [*] due InterTrust in the manner set
forth in Section 5.2 below ("[*]");
(iv) within thirty (30) days after the delivery to NatWest of any
Update Release and/or New Release, which alone or in combination with previous
releases, contains all of Requested Functionality, [*] dollars ($US[*]), which
payment shall also be [*] due InterTrust in the manner set forth in Section 3.2
below as [*]; and
(v) within thirty (30) days after the delivery of Commerce 2.0 or
June 1, 2000 whichever is earlier, [*] dollars ($US[*]), and on the first day
of each calendar quarter for three calendar quarters, commencing with the first
calendar quarter after the payment set forth in Section 5.1((a))((iv)), [*]
dollars ($US[*]), all four of such payments shall also be [*] due InterTrust in
the manner set forth in Section 5.2 below as [*].
(b) InterTrust Technology Royalties. In consideration of the licenses
-------------------------------
granted to NatWest herein and the other terms and conditions hereof, for
NatWest's exercise of the license pursuant to Section 3.2 hereof NatWest shall
pay to InterTrust the following royalties, net of any withholding tax:
(i) six-tenths of one percent (0.6%) of the Gross Commercial Value
of each Content Transaction where such Content Transaction involves the
performance of a Clearinghouse Function;
(ii) two percent (2%) of the Gross Commercial Value received as
consideration for the complete or partial performance by or on behalf of NatWest
of any Clearinghouse Function, but not including those Clearinghouse Functions
that are set forth in Section 5.1((b))((i)) above;
provided that (x) in calculating the Gross Commercial Value of a Content
- -------- ----
Transaction in accordance herewith in the instance where a royalty due under
subparagraph (i) above is based on any consideration provided to one or more
Vendors other than through NatWest (such consideration the "Customer's
----------
Portion"), NatWest may, in exercise of its good faith, rely upon information
- -------
reported to it by such Vendors in accordance with the provisions of Section 0(0)
hereof quantifying sums of money as consideration, and/or the fair market value
of any other consideration, provided to such Person ("Customer's Portion
------------------
Information"); so long as NatWest has used reasonable efforts in accordance with
- -----------
applicable industry practices of the Payment Card Services industry to assess
and validate the accuracy of such Customer's Portion Information, where
reasonable grounds for suspicion exist. NatWest shall promptly discuss with an
InterTrust Designated Officer any such suspicions (including any apparent
inconsistencies or anomalies with Customer's Portion Information); (y) where
royalties both under subparagraphs (i) and (ii) immediately above would result
from such performance of Clearinghouse Functions for the same, identical,
discrete Content Transaction or other electronic event, then in such instance
only the greater of the two royalties described in (i) and (ii) above (measured
by the amount to be received by InterTrust
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
19
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hereunder) shall be due and payable to InterTrust for such identical discrete,
Content Transaction or other electronic event; and/or (z) the Gross Commercial
Value received as consideration for the complete or partial performance by or on
behalf of NatWest of any Clearinghouse Function for purposes of subparagraph (i)
and (ii) above shall not include consideration received by NatWest or any Person
controlled by NatWest ("NatWest Affiliate") for the offering by NatWest or a
NatWest Affiliate of a NatWest or NatWest Affiliate product and/or service to an
end user wherein such NatWest or NatWest Affiliate product and/or service: (1)
has been positioned or offered based in whole or in part upon NatWest's and/or
NatWest Affiliate's use of information derived by NatWest at least in part from
the use of any InterTrust Technology and/or Modified Technology; (2) is
reasonably considered to be a financial industry product and/or service; and (3)
is not, for compensation, being provided in whole or in part to provide the end
user with any such derived information; and
(iii) for all revenue and the monetary value of any other
consideration, if any, received by NatWest directly in connection with the sale,
lease, license, distribution, transfer, or other use of NatWest Products and/or
services that utilize NatWest Products and/or InterTrust Technology (such as
service fees for packaging third party Content and/or fees for hosting Content
in connection with a NatWest service), and not based on performance of
Clearinghouse Functions, a royalty of two percent (2%) of all such revenue and
any such monetary value for other consideration received by NatWest, minus any
sales, use, value added or other taxes (except withholding taxes) imposed by any
national, state, local or foreign government and paid by and/or for NatWest on
such received revenue and/or any other consideration (as calculated according to
generally accepted accounting principles consistently applied with past
practices).
(c) Support and Maintenance Fee. Subject to the provisions hereof, in
---------------------------
partial consideration of InterTrust's provision of Support and Assistance set
forth in Section 2.2 hereof, and Upgrades and New Releases, during the Support
Period, NatWest shall pay to InterTrust the amount of [*] dollars (US$[*]) on an
annual basis (the "Support Fee"). NatWest shall pay the Support Fee in four
-----------
quarterly installments within thirty (30) days after each calendar quarter in
accordance with Section 0 hereof.
(d) [*]. If InterTrust [*] to such licensee than those granted to NatWest
hereunder (the Parties' acknowledging that license scope and partnering
commitments are important terms in the overall consideration), and pursuant to
such agreement: (i) [*] the type in [*], and/or [*] set forth in such sections
hereof; and/or (ii) the [*] or any [*] is [*] to the licensee thereof than that
set forth in Section [*] hereof, the [*] set forth in Section [*], and/or [*]
hereof shall [*], as applicable, to such [*] charged to such other licensee or
NatWest shall thereafter going forward be [*], as applicable. Upon NatWest's
written request which shall not be made more than [*] in any calendar year,
InterTrust will deliver a written confirmation certified by the General Counsel
of InterTrust as to whether the [*] under Section [*] remain applicable or
whether Natwest is entitled to [*] by virtue of this Section 5.1(d).
(e) Review of Royalty Rates; No Minimum Royalty. Upon the seventh (7th)
-------------------------------------------
anniversary of the Effective Date, or earlier if requested by NatWest in writing
as a result of significant market exigency, the Parties agree to discuss and
review the royalty rates set forth in Section 5.1((b))((i)), 5.1((b))((ii)),
and/or 5.1((b))((iii)) hereof. Any change in such rates shall be subject to
agreement in writing by NatWest and InterTrust in the exercise of each party's
discretion. Neither Party shall have any obligation whatsoever to agree to any
modification of such royalties. NatWest is under no obligation to meet any
royalty minimum usage requirements, and, provided that it complies with its
obligation of Section 5.1((a)) and 5.1((b)), NatWest shall have freedom to price
its Content Transactions and Clearinghouse Functions, including the option not
to charge its Customers.
(f) Suspension of Certain License Payments. In the event a Critical
--------------------------------------
Material Defect causes a total disruption in one or more of NatWest's services
involving the commercial performance of Clearinghouse Functions
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
20
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and such service(s) with which the Critical Material Defect is associated is a
substantial service in the context of the overall such services being
delivered by NatWest and supported by and employing InterTrust Technology,
NatWest shall be entitled to suspend making any payments that become due and
payable under Section 5.1(a) during the pendency of such Critical Material
Defect -- i.e., from the time that such Critical Material Defect is reported
to InterTrust as set forth in Section 2.2 (b) (ii) until such time InterTrust
has provided an urgent bug fix or workaround patch, process and/or procedure
to temporarily correct or mitigate such defect in the manner set forth in
Section 2.2(b)(ii) hereof.
5.2 Payment Procedure. Commencing upon the first payment by NatWest to
-----------------
InterTrust of royalties specified in Section 5.1((a))((iii) or 5.1((a))((v))
hereof NatWest shall be [*] percent ([*] %) of all [*] under Sections
5.1((b))((i)) and 5.1((b))((ii)) in a calendar quarter [*]; provided that the
-------- ----
total amount of all such [*] during the term shall not exceed [*] dollars
($US[*]) in the aggregate. Except as otherwise expressly provided in this
Agreement, within [*] days after the end of each calendar quarter, NatWest shall
pay InterTrust all amounts due and/or payable pursuant to the licenses and
support provided hereunder, and received during such calendar quarter. NatWest
shall make all payments hereunder by wire transfer to such account as designated
by InterTrust in writing. Concurrently with each royalty payment, NatWest shall
provide to InterTrust a written royalty report, certified to be accurate by an
officer of NatWest specifying: (i) the revenues derived by NatWest that are
subject to royalties during each calendar month of such quarter; (ii) the basis
for calculation of the amounts due and payable; and (iii) summaries of business
records employed by NatWest to arrive at the information set forth in (i) and
(ii) immediately above. The manner of calculation of the amounts due and payable
to InterTrust hereunder shall be determined in accordance with recognized and
generally accepted U.S. accounting procedures and principles that shall be
consistently applied to all such payments.
5.3 Currency. Gross Commercial Value and all consideration received by NatWest
--------
pursuant to Section 5.1((b)) in a currency other than U.S. dollars shall be
converted by NatWest to U.S. dollars on a monthly basis for purposes of payment
to InterTrust on a quarterly basis according to the rate of exchange for such
currency, as published by The Wall Street Journal (Western Edition) on the last
business day during each calendar month of a calendar quarter for which such
royalties are due. If The Wall Street Journal (Western Edition, or main edition
in absence of a Western Edition) ceases or fails to publish such rate of
exchange at any time during the term of this Agreement, the rate of exchange
during any such period of cessation shall be such rate as published by the Bank
of America (San Francisco, California) or its legal successor on the last
working day of such calendar quarter for which such royalties are due. In the
event all of the above cease to operate, the Parties shall reasonably agree upon
another internationally reputable source for such rate of exchange.
5.4 Taxes. NatWest shall pay taxes, including but not limited to withholding
-----
taxes, imposed by any foreign government or any other jurisdictions outside of
the United States, as applicable, on all fees and royalties payable to
InterTrust under this Agreement. NatWest shall be responsible for payment of
all sales, use, value-added and other taxes, duties and other charges that may
fall due with respect to the transfer to or licensing, reproduction,
distribution, and/or use by NatWest of the NatWest Products, and with respect to
NatWest's activities with respect to the Clearinghouse Functions. InterTrust
shall be responsible for payment of all sales, use, value-added and other taxes
that may be imposed by the United States government on InterTrust with respect
to the transfer or licensing to NatWest of the InterTrust Technology hereunder
or with respect to the payments received hereunder.
5.5 Interest. NatWest agrees that all sums owed or payable to InterTrust
--------
hereunder shall bear interest (compounded daily) at the rate of [*] percent
([*]%) per month or [*] percentage ([*]%) points above the U.S. Prime Rate on an
annualized basis as published at the end of a calendar quarter for which such
royalties are due, whichever is higher, or such lower rate as may be the maximum
rate permitted under applicable law, from the date upon which payment of the
same shall first become due up to and including the date of payment thereof
whether before or after judgment, and that NatWest shall be additionally liable
for all costs and expenses of collection, including, without limitation,
reasonable fees for attorneys and court costs. Notwithstanding the foregoing,
such specified rate of interest shall not excuse or in any way whatsoever be
construed as a waiver of NatWest's express obligation to timely provide any and
all payments due to InterTrust hereunder.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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5.6 Audit. NatWest shall maintain during the term of this Agreement and for a
-----
period of five (5) years thereafter all books, records, accounts, and technical
materials regarding NatWest's activities in connection herewith sufficient to
determine and confirm NatWest's royalty obligations hereunder. Upon InterTrust's
request, NatWest will permit an independent auditor from one of the five largest
international accounting firms of InterTrust's choice (subject to NatWest's
consent, which shall not be unreasonably withheld or delayed) to examine and
audit, at InterTrust's expense, during a reasonable time (but no more than once
during a six (6) month period), such books, records, accounts, documentation and
materials, and take extracts therefrom or make copies thereof for the purpose of
verifying the correctness of reported royalty statements and payments provided
by NatWest. Prior to such audit, InterTrust shall cause such independent auditor
to execute a written confidentiality agreement supplied by NatWest, which shall
contain terms that are commercially reasonable under the circumstances and are
designed to reasonably protect the confidentiality of NatWest's information.
NatWest shall pay any unpaid delinquent amounts disclosed by such audit within
ten (10) days of InterTrust's request; provided that any such payment shall not
constitute an admission or waiver of any kind. To the extent such examination:
(i) discloses an underpayment of more than [*] dollars ($US[*]) and such
underpayment represents a sum greater than [*] of the sums paid to InterTrust by
NatWest during the applicable period subject to such audit; or (ii) discloses an
underpayment of more than [*] dollars ($US[*]), NatWest shall fully reimburse
InterTrust, promptly upon demand, for the reasonable fees and disbursements due
the auditor for such audit; provided that such prompt payment shall not be in
-------- ----
lieu of any other remedies or rights available to InterTrust hereunder. If an
audit reveals an overpayment, InterTrust shall notify NatWest of such
overpayment and NatWest will apply the amount of such overpayment against future
royalties due and payable to InterTrust (and such application against future
royalties shall not be subject to the provisions of Section 5.2 hereof
concerning the [*]).
6. PROPRIETARY INFORMATION AND OWNERSHIP.
6.1 InterTrust Ownership. NatWest acknowledges and agrees that, as between
--------------------
InterTrust and NatWest, InterTrust is the sole and exclusive owner of, and shall
retain and hereby reserves (and nothing herein shall alter InterTrust's
reservation of) all right, title and interest in: (i) the InterTrust Technology,
created by (or for) or owned by InterTrust, and all Intellectual Property Rights
embodied therein; (ii) all Intellectual Property Rights created or embodied in
any works (whether tangible or intangible) created independently and solely by
(and/or by any third party for) InterTrust in connection with its performance of
this Agreement; and (iii) Modified Technology not owned by NatWest pursuant to
Section 0 hereof, and all Intellectual Property Rights embodied therein
(collectively, the "InterTrust Property"). No provision contained in this
-------------------
Agreement shall be construed to transfer to NatWest or any other Person any
title or ownership interest in any InterTrust Property.
6.2 NatWest Ownership. As between NatWest and InterTrust, NatWest shall be the
-----------------
sole and exclusive owner of the portions of the following created independently
and solely by (and/or by any third party for) NatWest hereunder, and shall
retain and hereby reserves (and nothing herein shall alter NatWest's reservation
of) all right, title and interest in: (i) any NatWest Products, except with
respect to any InterTrust Property incorporated therein; (ii) Modified
Technology created in accordance with the terms hereof (except such Modified
Technology that merely re-implements the existing functionality of InterTrust
Technology provided to NatWest, including, for example, porting or translation
thereof, which shall be deemed InterTrust Property); and (iii) all Intellectual
Property Rights embodied in such part of NatWest Products or such Modified
Technology (collectively "NatWest Property") independently developed by NatWest
----------------
consistent with subparagraph ("i") and ("ii") above. No provision contained in
this Agreement shall be construed to transfer to InterTrust or any other Person
any title or ownership interest in any NatWest Property. As between NatWest and
InterTrust, NatWest shall be the sole and exclusive owner of any customer data
and usage information that is derived directly or indirectly by NatWest from a
NatWest Customer through any use of InterTrust Technology without any breach of
this Agreement or any obligations owed by any third Person to InterTrust;
provided that such data or information: (a) is not also communicated by such
- -------- ----
Customer or any third Person to InterTrust; and/or (b) does not relate to
InterTrust or include any InterTrust Technology. Nothing in the foregoing
portion of this paragraph
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
22
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CONFIDENTIAL
shall be construed in any manner whatsoever to transfer, license or grant any
license or right to any Intellectual Property Rights of InterTrust.
6.3 NatWest Limited License to InterTrust. In consideration of the licenses
-------------------------------------
granted, and other consideration provided, by InterTrust to NatWest under this
Agreement during the term of this Agreement, NatWest hereby grants:
(a) to InterTrust, its affiliates, and their successors, assigns, and
direct and indirect customers a nonexclusive, royalty-free and worldwide license
under all patent rights of NatWest to manufacture, have manufactured, use, sale,
offer for sale, license for use, import, distribution and/or otherwise
exploitation of: (i) InterTrust Technology; (ii) any technology that directly
interfaces with, or is necessary for applications built on top of InterTrust
Technology to be interoperable with, the API (Application Programming Interface)
of InterTrust Technology; and/or (iii) technology permitting the Management of
Content by the application and technical enforcement, at least in part of, Rules
and Controls, and/or distributed, peer-to-peer operating system technology; but
solely to the extent that such activities would, but for such license, infringe
any such patent rights of NatWest (including any patents disclosing and/or
claiming any Modified Technology); and
(b) to InterTrust, its affiliates and their successors a nonexclusive,
royalty-free and worldwide license under the Intellectual Property Rights (other
than trademarks, trade names, and service marks) of NatWest to use NatWest
Products solely in connection with InterTrust's internal development of any
product, or internal performance of any services, and/or evaluation of such
NatWest Products, provided that the foregoing provisions of this Section
6.3((b)) are for internal use only of NatWest Products and shall not be
construed to include external distribution of any NatWest Product or portion
thereof.
InterTrust represents to NatWest that all Core Partner Agreements existing as of
the Effective Date contain substantially similar commitments regarding the grant
by a Core Partner of certain patent licenses as provided for in this Section
6.3. If during the term of this Agreement InterTrust enters into any Core
Partner Agreement having terms [*].
6.4 Independent Technology. Except as provided in the provisions of Section
----------------------
8.2 hereof, nothing in this Agreement shall be construed to prohibit NatWest
from using, selling, licensing, transferring or otherwise exploiting any
technology that NatWest: (i) can demonstrate was developed by NatWest employees
or consultants without the use of, reliance on, or reference or access to, any
portion of InterTrust Technology and/or Modified Technology, and without any
breach of this Agreement or any other obligation owed to InterTrust, and in
which InterTrust does not have any patent rights; or (ii)(a) rightfully obtains
directly or indirectly from a third Person who has not (1) breached any legal
obligation owed to InterTrust and/or (2) obtained such InterTrust technology in
violation of any law, and (b) which does not infringe or misuse any InterTrust
Intellectual Property Rights or other legally cognizable rights of InterTrust of
any kind whatsoever; (collectively, "Independent Technology"). Nothing in this
----------------------
Section 6.4 shall be construed to grant any licenses or rights of any kind
whatsoever to NatWest with respect to such Independent Technology.
7. JOINT ACTIVITIES AND FURTHER COVENANTS.
7.1 Joint Press Releases. Promptly following the Effective Date, the Parties
--------------------
shall work together to publicly issue one or more mutually agreeable press
releases disclosing the existence of this Agreement, describing the Parties'
intentions to develop important electronic commerce products, services, and
technology, and generally promoting NatWest Products, the InterTrust Technology,
and the planned InterTrust-related services of NatWest (the "Joint Press
-----------
Releases"). Unless otherwise agreed in writing, all further public disclosures
- --------
by either Party
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
23
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concerning the subject matter of the Joint Press Releases shall be consistent
with the content of the Joint Press Releases. All other disclosures with respect
to the terms hereof shall be made in accordance with Section 0.
7.2 Promotion and Marketing. Following the Effective Date, relevant personnel
-----------------------
of NatWest and InterTrust shall meet from time to time to discuss, frame and
prepare a joint activity marketing plan to promote their commercial relationship
hereunder. In connection with such marketing plan, the Parties shall jointly
and reasonably cooperate with each other, and participate in, from time to time,
promotional, marketing, and sales activities designed to: (i) increase industry
awareness of both InterTrust and InterTrust Technology, and NatWest Products;
(ii) promote the dissemination and use of InterTrust's technology as the general
purpose electronic rights standard solution for electronic commerce; and (iii)
promote NatWest as a primary electronic commerce service provider. InterTrust
shall reasonably: (a) assist and support NatWest in the establishment of
relevant NatWest brands on NatWest Products and associated services; and (b)
appropriately support NatWest's Clearinghouse Functions and related services by
communicating the availability of such services, as reasonable and appropriate
to potentially interested persons; provided that NatWest promotes and uses
-------- ----
InterTrust Technology in the Preferred Positioning manner set forth in Section
4.2. NatWest shall reasonably assist InterTrust with marketing activities
relating to the InterTrust Technology by, for example, displaying and endorsing
the display of certain InterTrust Trademarks on products and services (and
materials relating thereto) and jointly participating, as mutually agreed, in
trade shows and customer events. At no time shall NatWest or InterTrust make any
representation or warranty to any Person materially inconsistent with: (1)
InterTrust Specifications or Documentation; or (2) the efforts of the Parties
with respect to promotion, marketing or other matters under this Agreement. As
relevant and appropriate from time to time, and to encourage efficient
partnering efforts concerning approaching customers and staging their own
promotional and marketing activities, each Party agrees, in its reasonable
discretion, to share with the other, as appropriate (and subject, for example,
to the absence of a specific, material conflict in interest regarding the
disclosure of any specific marketing information), its marketing plans relevant
to the commercialization of InterTrust Technology, NatWest Products and
associated services, and/or other material InterTrust and/or NatWest electronic
commerce services and/or products, and related public relations activities.
7.3 Technology Advisory Committee. To further strategic opportunities among
-----------------------------
the Parties and to encourage feedback concerning InterTrust Technology,
InterTrust currently intends to establish a committee limited to representatives
of: (i) leading companies chosen from certain technology, financial and/or
content industry companies that have close technology strategic relationships
with InterTrust; and (ii) certain leading experts in technology or business
applicable to information and electronic commerce (the "Technology Advisory
-------------------
Committee"). The Technology Advisory Committee shall meet regularly at a forum
- ---------
to be selected by InterTrust for the purpose of: (a) discussing and exchanging
ideas for improving the functionality, interoperability, and market
acceptability of InterTrust Technology and related issues pertaining to the
electronic commerce industry; (b) providing input to InterTrust regarding
InterTrust product marketing, and development of Upgrade Releases and New
Releases; and (c) keeping Core Partners confidentially appraised as to planned
upcoming changes in InterTrust Technology or Specifications, as commercially
reasonable for InterTrust in its discretion. Upon the establishment of the
Technology Advisory Committee: (1) InterTrust shall grant NatWest the right to
have one seat as a member of the Technology Advisory Committee; and (2) NatWest,
at its option, may elect and notify InterTrust of its designation of an
executive (who may be an employee of NatWest and who shall not be involved in
Supporting Other Technology, and shall be an Agent of NatWest for
confidentiality purposes in accordance with Section 1 of Exhibit G attached
hereto) to serve on such committee. To the extent it participates, NatWest
shall: (A) be responsible for all acts and omissions of the representative in
connection with the Technology Advisory Committee; and (B) pay for all expenses
incurred by NatWest in connection with participation on such Committee.
NatWest's membership on the Technology Advisory Committee shall be contingent
upon (and subject to): (X) material adherence to generally applicable committee
rules, and the terms and conditions hereof; (Y) NatWest avoiding activities that
materially conflict with InterTrust's interests as determined by InterTrust; and
(Z) continuation of the Technology Advisory Committee.
7.4 Security Validation. Throughout the term hereof, InterTrust and NatWest
-------------------
will reasonably cooperate and work together to maintain, enhance and promote the
robustness of the security aspects of InterTrust Technology
24
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CONFIDENTIAL
and NatWest Products and associated services, as reasonably determined by
InterTrust and/or NatWest with respect to its technology, products or services,
as applicable, and taking into account and balancing relevant interests such as
commercial feasibility and desirability, the varying nature of applications and
implementations of NatWest Products, regulatory and governmental restrictions,
and overall commercial use of InterTrust Technology by NatWest. InterTrust
agrees to use commercially reasonable, practical and affordable efforts with
respect to InterTrust Technology, and NatWest agrees to use commercially
reasonable, practical and affordable efforts with respect to NatWest Products,
to establish and perform or have performed, security testing procedures and
practices, including use of appropriate, circumscribed, third party "tiger
testing." The Parties will further discuss and work together to consider, where
(and as) practical, affordable and appropriate, obtaining validation and/or
certification for appropriate portions of the respective Party's security
related technologies and/or services from one or more relevant and appropriate
third parties or organizations. Each Party agrees to share with the other
relevant aspects of test results for, and/or identified security breaches of,
InterTrust Technology and NatWest Products where practical, subject to
confidentiality obligations, requirements of law, and appropriate security
practices.
8. PARTNERING COMMITMENTS.
8.1 InterTrust Partnering Commitment.
--------------------------------
(a) Initial Commitment Period. Subject to the terms hereof (including
-------------------------
NatWest's performance of its partnering commitment set forth in Section 8.2),
and in the absence of NatWest's prior written consent, InterTrust shall not [*]
with (or [*]) any Banking Institution (as defined in Exhibit F attached
hereto) other than NatWest ("InterTrust Partnering Commitment") for a period of
[*] year from the Effective Date (the "Initial Commitment Period"); provided
------------------------- --------
that if InterTrust provides NatWest with the Commerce 1.0 (GA Version) release
- ----
after December 31, 1998, then the Initial Commitment Period shall be extended
beyond such period of [*] year by that number of days between December 31, 1998
and the date upon which such Commerce 1.0 (GA Version) is so provided.
Notwithstanding the foregoing, InterTrust shall be entitled to [*] (or [*])
with: (A) a Person that is not a US Bank or a Foreign Bank (each as defined in
Exhibit F) as of the effective date of the Core Partner agreement, provided that
if such Person is a Foreign Bank Affiliate as of the effective date thereof
InterTrust shall prohibit such Person in such Core Partner license agreement
from assigning any rights to perform any Payment Card Services that are (or are
broadly equivalent to) Clearinghouse Functions under such license agreement to
any Foreign Bank or other Foreign Bank Affiliate during the Commitment Period;
and/or (B) any non-sovereign state or government, and/or any foreign bank
controlled by a sovereign state or government outside of the European Union.
Further notwithstanding anything herein, InterTrust may from time to time inform
NatWest in writing of prospective Core Partners, but not more frequently than
[*] Core Partner requests per calendar quarter. Within ten (10) business days
thereafter NatWest shall notify InterTrust in writing whether such prospective
Core Partner is a Banking Institution (as defined in Exhibit F) or has a Foreign
Bank Affiliate. Where NatWest has notified InterTrust that such prospective Core
Partner is not deemed to be a Banking Institution, or has failed to so provide
notice within such time period, InterTrust shall have the right to [*] without
any obligation or liability hereunder. Such InterTrust Partnering Commitment
shall continue during the Initial Commitment Period only if NatWest devotes (and
NatWest hereby agrees that it shall devote) serious and substantial efforts and
resources to: (i) offer, provide, publicly promote, support and make available
in a commercially meaningful, expeditious, and general purpose manner one or
more competitive, global financial clearing services supporting licensed
InterTrust Technology users (assuming, where applicable, reasonable prior
agreement between NatWest and such users) (a "Global Clearing Service"); and
-----------------------
(ii) establishing definitive commercial relationships with two or more premier
financial or clearinghouse institutions or other relevant important parties to
provide infrastructure services using InterTrust technology to support Content
Transactions (for example, top-ranked, world-class Banking Institutions, or
other financial institutions or non-bank clearinghouses with major strategic
presence) as decided and agreed upon by each of the Parties ("Important
---------
Parties"), where such Important Parties agrees to support InterTrust
- -------
Technology in a manner comparable to NatWest as described herein and at least
through preferentially performing financial Clearinghouse Function services for
the Commitment Period (defined below) and a commercially meaningful period
thereafter (collectively, the "Performance Criteria"). At least one of such
--------------------
Important Parties shall be based in the United States and be a top-ranked
Banking Institution or financial/clearinghouse Important Party (including, for
example, [*]). The Parties anticipate NatWest having the primary direct
commercial relationship with such Important Parties; provided that such
-------- ----
Important Parties will need to obtain a license from InterTrust with respect to
InterTrust Technology. The InterTrust Partnering Commitment shall not limit in
any way whatsoever the rights of: (1) InterTrust to work with or license any
technology or Intellectual Property Rights to any Person so long as InterTrust
complies with this Section 8.1; and/or (2) any InterTrust Core Partner to
exercise its rights with respect to InterTrust technology (so long as any such
Core Partner is not a Banking Institution which first became a Core Partner
during the Commitment Period).
(b) InterTrust Partnering Commitment Extension. If, as of the close of
------------------------------------------
the Initial Commitment Period NatWest has complied with the provisions of
Section 8.2((a)), is publicly offering and providing a Global Clearing Services,
and has executed heads of agreement (containing substantially detailed
fundamental terms) ("Heads of Agreement(s)") with at least two (2) Important
---------------------
Parties as provided in Section 8.1((a)) and redacted copies of which are
provided to InterTrust (provided that the non-redacted provisions in such
-------------
Heads of Agreement must be sufficient to allow InterTrust to determine whether
NatWest's obligations in Section 8.1((a)) have been satisfied), then (except
where the Scaleback Option (defined below) has been exercised because NatWest
has decided to engage in those activities set forth in Section 8.2((c)) the
InterTrust Partnering Commitment shall be extended for an additional [*] year
period, except that such period shall earlier terminate three (3) months after
the expiration of the Initial Commitment Period if NatWest has failed to execute
binding definitive agreement to effectuate the Heads of Agreements with such
Important Parties prior to the end of such three (3) month period (the "Second
------
Commitment Period"; the Initial Commitment Period and any such extension or
- -----------------
further extension collectively, the "Commitment Period"). During the Second
-----------------
Commitment Period, if any, NatWest shall use serious and substantial efforts to
establish a global consortium of Important Parties committed to supporting
InterTrust Technology as the technology standard for Digital Rights Management
in the area of financial clearing services, and the Parties contemplate that
NatWest will have formed such consortium of Important Parties committed to
establishing InterTrust Technology as the de facto standard for Digital Rights
-- -----
Management (as defined in Exhibit F) and related financial clearing. If
InterTrust Technology has become the global de facto standard for Digital Rights
-- -----
Management, the InterTrust Partnering Commitment may be subject to a further
extension at InterTrust's discretion, and for such period as InterTrust may
notify NatWest in writing.
25
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
8.2 NatWest Partnering Commitment. Subject to InterTrust's performance of its
-----------------------------
partnering commitment set forth in Section 8.1 and in partial consideration for
providing NatWest with early, substantial access to Confidential and Top Secret
Information, initial development rights and privileges concerning InterTrust
Technology, Intellectual Property Rights, and the rights granted to NatWest
hereunder (including certain "most favored" provisions and the InterTrust
Partnering Commitment), NatWest agrees to the following partnering commitment
(the "NatWest Partnering Commitment"):
-----------------------------
(a) Preferred Solution. During the Commitment Period, NatWest and its
------------------
respective units and controlled affiliates shall: (i) refrain from acting as a
clearinghouse for any Secure Container technology other than Secure Containers
of the InterTrust Technology, and/or performing any activities and/or services
that would constitute Clearinghouse Function activities and/or services if
InterTrust Technology, Modified Technology, or information derived at least in
part from use of such technology were used, where the foregoing activities and/
or services result from the use of any Secure Container technology other than
Secure Containers of the InterTrust Technology; and (ii) treat InterTrust
Technology as NatWest's preferred and primary Digital Rights Management
technology and/or Secure Container technology solution ("Preferred
---------
Positioning"). In providing such Preferred Positioning, NatWest shall: (1)
- -----------
recommend, endorse, and actively and publicly promote InterTrust Technology as
its preferred and primary Digital Rights Management and Secure Container
technology and business solution, and InterTrust as its preferred and primary
Digital Rights Management partner, provided that the foregoing in regard to any
-------- ----
press release shall also be consistent with the provisions of Section 7.1; and
(2) refrain from deploying, using, licensing, developing, marketing, negotiating
agreements related to, and/or otherwise supporting (including recommending,
promoting, or otherwise endorsing in a substantive manner (e.g., in any
----
promotional materials), and/or assisting another Person in the deployment, use,
license, development and/or marketing of) (hereafter, "Support[s][ing]") Digital
---------------
Rights Management and/or Secure Container technology other than Digital Rights
Management and Secure Container Technology of the InterTrust Technology ("Other
-----
Technology"). Notwithstanding the foregoing, "Support[s][ing]" for purposes of
- ----------
this Section 8.2 ((a)) shall not include the mere provision of and/or
arrangement of loans or other financings for Persons by affiliates or operating
units of NatWest other than Card Services, where such provision or arranging of
loans or financing is made in the ordinary course of its business. Further
notwithstanding the foregoing, if at any time any affiliate or operating unit of
NatWest other than Card Services decides to make, or otherwise approves, any
investment by NatWest in equity or similar securities in any Persons whose
business involves, or has announced either publicly or to NatWest that it plan
to engage in, the development, distribution, licensing or marketing of
Distributed Peer to Peer Rights Management technology (as defined in Exhibit F)
(but not including any investment made by NatWest pursuant to its employees
retirement investment fund or of another Person's funds acting on such other
Person's behalf (and where no equity participation is taken by NatWest for its
own account)) ("Non-Partnering Investment Decision"), NatWest shall immediately
----------------------------------
notify InterTrust in writing. Upon any such Non-Partnering Investment Decision,
InterTrust, as its sole and exclusive remedy, shall be entitled to terminate all
or any portion of its obligations under Section 8.1, which termination shall be
effective (notwithstanding any cure procedures set forth in Section 13.2) six
(6) months after the date of such Non-Partnering Decision. Exhibit F hereto sets
forth, as of the Effective Date, a sample list of products that, to InterTrust's
knowledge, claim to use Secure Containers and/or provide Digital Rights
Management solutions. Such list may be supplemented or amended from time to time
by InterTrust during the Commitment Period.
(b) Use of Other Technology Providers. If at any time during the
---------------------------------
Commitment Period NatWest decides to initiate activities Supporting any Other
Technology, NatWest shall promptly (and in all events as soon as reasonably
practical and before initiating such activity) notify InterTrust in writing of
such intent (a "Non-Partnering Event"). Such notice shall provide InterTrust
--------------------
with reasonable summary information regarding such Other Technology, including
generally the scope and nature of contemplated Supporting activity, and such
other information as may be reasonably useful in order to assist InterTrust in
deciding whether to exercise the Scaleback Option, except that such notice need
not disclose any detailed proprietary information (other than the fact that
NatWest is initiating Support of Other Technology) that may be subject to
confidentiality obligations
26
<PAGE>
CONFIDENTIAL
owed by NatWest to any third Person (the "NatWest Notice"). Similarly, if
--------------
InterTrust becomes aware of any information that causes InterTrust to believe
that a Non-Partnering Event may have occurred, InterTrust shall so notify
NatWest in writing and provide NatWest with reasonable information concerning
the nature of InterTrust's information ("InterTrust Notice"). In the event of
-----------------
such an InterTrust notice to NatWest, NatWest shall promptly thereafter provide
a written communication to InterTrust responding to InterTrust's notice and
providing information regarding such InterTrust-provided information as is
reasonably calculated to enable InterTrust to decide whether to exercise the
Scaleback Option, except that such communication need not disclose any detailed
proprietary information (other than the fact that NatWest is initiating Support
of Other Technology) that may be subject to confidentiality obligations owed by
NatWest to any third Person. After a NatWest Notice or InterTrust Notice has
been sent in accordance with this Section 8.2((b)), the Parties shall promptly
and reasonably cooperate with each other to gather and report such relevant
facts and circumstances as may be reasonably required by InterTrust to: (1) help
InterTrust determine whether a Non-Partnering Event has occurred; and (2) help
InterTrust decide whether to exercise its Scaleback Option.
(c) Scaleback Option; Remedies. If NatWest has delivered the NatWest
--------------------------
Notice, or if information available to InterTrust after the completion of the
process initiated pursuant to Section 8.2((b)) following the delivery by
InterTrust of the InterTrust Notice indicates to InterTrust that NatWest has
engaged (or is engaging) in a Non-Partnering Event that was the subject of such
notice, then InterTrust shall have the right, notwithstanding the provisions of
Section 8.l and/or other provisions of Section 8.2 hereof: (i) to scaleback the
InterTrust Partnering Commitment of Section 8.1((a)) such that InterTrust may
negotiate and enter into a Core Partner relationship with any Banking
Institution that grants such Banking Institution a license to use InterTrust
technology and perform Clearinghouse Functions in any field and in any manner
other than the provision of Payment Card Services (as defined below) under such
Banking Institution's brand; and (ii) if the Second Commitment Period or any
subsequent extension of such period is then in effect, InterTrust's Partnering
Commitment shall immediately terminate, or if such period has not yet commenced,
InterTrust Partnering Commitment shall not extend to the Second Commitment
Period nor any further extension period. Any failure by InterTrust to fully
exercise all of its rights under the Scaleback Option with respect to a
specific Non-Partnering Event shall not be deemed or construed to limit or
otherwise adversely affect in any manner whatsoever: (1) InterTrust's ability to
exercise the Scaleback Option with respect to other Non-Partnering Events, or
the specific Non-Partnering Events if circumstances about the nature of the
Non-Partnering Event, including available relevant information, change in the
future; and/or (2) seek or receive remedies at law or in equity with respect to
such specific or any other Non-Partnering Event except (and solely except) in
the circumstance expressly set forth in the following sentence. In the event a
material division, material business unit or controlled affiliate ("Unit") of
----
NatWest -- other, but solely other, than any such Unit having principal
responsibility for payment card services (including issuing credit, charge,
prepayment, or other payment cards (alone or in combination with other
services), and/or issuance of credit and/or performance of services for and/or
on behalf of merchants and/or cardholders concerning transactions involving such
cards) (collectively, the "Payment Card Services") -- Supports Other Technology
---------------------
in a manner in breach of Section 8.2((a)), InterTrust's sole remedy shall be
exercise of the Scaleback Option pursuant to this Section 8.2((c)) hereof. That
unit of NatWest having principal responsibility for Payment Card Services as of
the Effective Date is known as "Card Services" and shall not include any senior
business unit or function to which, or through which, Card Services reports (so
long as several Units report to or through such senior business unit or
function) and may, hereafter, if not held in a single unit, include other units
in combination to provide such Payment Card Services. Notwithstanding the
foregoing, if: (x) any Non-Partnering Event in accordance herewith involves
Other Technology that is a Distributed, Peer-to-Peer Digital Rights Management
Technology (defined in Exhibit F); (y) any Unit of NatWest participates in a
consortium not in existence as of the Effective Date Supporting Payment Card
Services for Other Technology (but not if that Unit of NatWest having principal
responsibility for Payment Card Services is directly Supporting Payment Card
Services for such Other Technology); and/or (z) any other terms and conditions
hereof (including Section 8.2((a)) are not complied with, then, in addition to
exercise of
27
<PAGE>
the Scaleback Option pursuant to this Section 8.2, InterTrust shall be entitled
to obtain such remedies as available at law or in equity.
(d) Limitations. Nothing in Section 8.2 of this Agreement shall be
-----------
construed to require NatWest to use InterTrust Technology in connection with any
particular NatWest payment services activity and/or product, if NatWest first
responds to any specific customer interest in any other product by using
commercially reasonable efforts to satisfy such customer request by recommending
the use of InterTrust Technology instead of an alternative requested technology
but such customer persists in requiring the use of such an alternative
technology. In addition, NatWest may: (i) act as an acquirer bank to provide
payment services to customers provided that no NatWest Trademark is apparent to
any end-user and NatWest is not acting directly under a license or sublicense to
provide clearing services supporting any Secure Container technology not
provided by InterTrust; and (ii) as an minor part of NatWest services, collate
and deliver Content of third Persons on a limited basis using Other Technology
solely for delivery of such Content, provided that (a) the owner or licensor of
-------- ----
such third party Content requires NatWest to use such Other Technology for the
delivery of such third Person's Content (and after NatWest has used commercially
reasonable efforts to persuade such third Person to allow the use of InterTrust
Technology in connection with such content delivery), (b) NatWest receives no
license to (and does not) modify, or otherwise customize such other Technology
in any manner, (c) NatWest refrains from associating any NatWest brand with such
third party Content (other than as generally indicated on such NatWest product
or service), and (d) NatWest does not promote the brand of the provider of such
Other Technology on any part of its general clearing services, marketing
materials or products, other than strictly to indicate that such Content is
being delivered using such Other Technology where necessary in the performance
of its service of delivering such Content.
(e) Clarification; Cooperation. During the Commitment Period, the Parties
--------------------------
shall reasonably cooperate with each other to appropriately and reasonably
address any questions and requests for clarification that are reasonably
provided and are consistent with this Agreement and that concern the nature and
applicability of the definitions of Digital Rights Management, Secure Containers
and other provisions of this Section 8 to specific situations; provided that in
-------- ----
all events the provisions of this Agreement, including, for example, Section
4.2((c)), shall apply to (and exclusive govern) all such discussions, and
nothing in responses to such questions and requests shall be deemed to modify
this Agreement or its terms and conditions in any manner whatsoever, unless
satisfying the requirements of Section 14.4 hereof.
28
<PAGE>
CONFIDENTIAL
9. CONFIDENTIALITY.
9.1 Classification of Technology and Documents. Technology, documents and
------------------------------------------
other information to be exchanged by the Parties shall be marked, as
appropriate, to identify the confidential or nonconfidential nature of the
information, and information exchanged orally or visually shall be described as
appropriate, to alert the recipient of the confidential or nonconfidential
nature of the information. As regards InterTrust Technology (including
Documentation) and other documents or information provided by InterTrust to
NatWest in tangible form, or provided orally or visually hereunder, such
information shall be marked, or indicated as: (i) "Unclassified"; (ii)
"Confidential"; or (iii) "Top Secret." NatWest information shall be marked or
indicated, as appropriate, as: (a) "Unclassified" or (b) "Confidential." A Party
and its authorized personnel shall exercise careful judgment when they are in
possession of information of the other Party that has not been marked or at the
time of such disclosure indicated to be within one of the above-described
classifications. If any information provided by one Party has not been marked or
indicated as above and is not known with certainty by the receiving Party to
have been either publicly released or otherwise classified as "Unclassified,"
then such other Party, its employees and any other Person authorized to possess
such information shall treat such information as "Confidential," except
information provided by InterTrust relating to security capabilities,
trustedness, and architecture (or design) integrity of the InterTrust
Technology, which shall be considered to be "Top Secret" and shall be handled as
provided by Section 0 of Exhibit G hereto.
9.2 Confidentiality Obligations. Subject to the provisions hereof, the Parties
---------------------------
(and their relevant personnel and agents) shall hold, maintain and treat
Confidential Information of NatWest or InterTrust, and/or Top Secret Information
of InterTrust, as applicable, in the manner set forth in Exhibit G hereto.
Subject to the provisions of this Section 9, upon the Effective Date of this
Agreement, information relating to the subject matter of this Agreement, when
disclosed after the Effective Date shall be covered by the confidentiality
provisions of this Section 9 and Exhibit G. Any information disclosed by one
Party to the other Party relating to the subject matter of this Agreement when
disclosed by one Party to the other Party prior to the Effective Date or
relating to subject matter outside of this Agreement shall be covered under the
Non-Disclosure/Non-Use Agreements between InterTrust and NatWest, as applicable,
dated 10 September 1997, 9 September 1997 and 14 April 1998.
9.3 Confidentiality of Agreement and Publicity. Except as otherwise provided
------------------------------------------
in Sections 7.1 and/or in Section 3 of Exhibit G, neither Party hereto shall at
any time, without the prior written consent of the other, disclose the specific
details of the terms and conditions of this Agreement to any Person, other than:
(i) as required by law, regulation or rules of a securities exchange or other
regulatory authority, for example, in connection with any initial public
offering of securities pursuant to a registration under the Securities Act of
1933, as amended (an "IPO"); (ii) to investors holding (or potential investors
---
who may purchase) approximately one percent (1%) or more of the outstanding
equity shares of such Party prior to an IPO and having no reasonably anticipated
conflict of interest with the other Party; and/or (iii) to Agents of a Party (as
defined in Exhibit G) having a substantial need to know, or financial
institutions or professional advisors having a reasonable need to know such
information and having no reasonably anticipated conflict of interest with the
other Party. In each and every case set forth above, the receiving Person shall
be bound by a confidentiality agreement sufficient in scope to protect the
Parties' rights and interests hereunder. Notwithstanding the foregoing
provisions of this Section 9.3: (a) either Party may publicly discuss or
otherwise disclose in general terms that an agreement exists between the Parties
to develop products and services using InterTrust Technology, but may provide no
further material details as to the specific activities and commitments of the
other Party, without the prior written consent of such other Party; and (b)
either Party may make such disclosures to the extent permitted under this
Section 9.3 in order to perform its obligations or exercise its rights under
this Agreement.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
29
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CONFIDENTIAL
9.4 Confidentiality of Payments, Audit and Certification Testing. All
------------------------------------------------------------
information received during an audit or pursuant to a Certification Program as
provided herein, all information concerning Certification Testing (including any
results thereof and any information received pursuant to any Certification
Testing), and all payment information received pursuant to this Agreement, shall
be treated as "Confidential Information." Notwithstanding the foregoing,
information concerning whether a NatWest Product or any associated services
being disseminated or used in commerce is Compliant with InterTrust
Specifications shall not be treated as confidential information under any
provision of this Agreement.
10. REPRESENTATIONS AND WARRANTIES.
10.1 Representations and Warranties of Both Parties. Each Party represents and
----------------------------------------------
warrants to the other Party that as of the Effective Date:
(a) it is a corporation duly incorporated, validly existing and in good
standing under the laws of the jurisdiction in which it is organized, with full
corporate power and authority to carry on its business as it is now being
conducted;
(b) the execution, delivery and performance of this Agreement and the
consummation of the transactions contemplated hereby have been duly authorized
by such Party, and neither the performance of this Agreement nor the
consummation of the transactions contemplated hereby will violate any provision
of the charter or organizational documents of such Party; and
(c) this Agreement constitutes a valid and binding obligation of such
Party, enforceable against such Party in accordance with its terms.
10.2 Representations and Warranties of InterTrust. In addition to Section 10.1
--------------------------------------------
above, InterTrust represents and warrants to NatWest that as of the Effective
Date:
(a) InterTrust has not, to the knowledge of the officers of InterTrust,
entered into a Core Partner arrangement with any organization that is a Banking
Institute.
(b) InterTrust owns or has the right to grant the licenses hereunder with
respect to the InterTrust Technology, including under applicable law;
(c) to the knowledge of the executive officers of InterTrust, the
InterTrust Technology does not infringe any Person's U.S. patent, trademark,
copyright, or trade secret right, and no active claims or allegations of any
such infringement are pending; PROVIDED THAT INTERTRUST MAKES NO WARRANTY WITH
-------- ----
RESPECT TO THE INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS OTHER THAN THE
FOREGOING REPRESENTATION;
(d) InterTrust is unaware of, and has in good faith employed
commercially reasonable steps in accordance with the U.S. software industry
practices to prevent and/or minimize [*], [*], [*], or other similar
devices or mechanisms that are intended to [*], [*] or [*] the operation of the
InterTrust Technology or NatWest Products or cause such technologies to [*],
inconsistent with reasonable business practices. A summary of such reasonable
steps that have been taken is included in Exhibit H hereto.
(e) the InterTrust Technology as delivered to NatWest pursuant to this
Agreement will, when delivered, operate without [*] caused directly by the [*]
in the [*] to the [*], and will be able to accurately process (including [*]
and [*]) [*] and [*] associated with the [*], and recognize the [*] as a [*];
provided that NatWest agrees that InterTrust's sole obligation and NatWest's
- -------- ----
sole and exclusive remedy for any breach of this representation will
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
30
<PAGE>
CONFIDENTIAL
be to [*] set forth in Section 2.2(b) treating any such [*] to [*] or [*].
10.3 Limitation. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT TO THE
----------
CONTRARY: (i) THE INTERTRUST TECHNOLOGY AND PRODUCTS ARE PROVIDED "AS IS"
WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR PARTICULAR
REQUIREMENTS AND NONINFRINGEMENT; (ii) INTERTRUST SHALL ASSUME NO RISK AS TO THE
QUALITY, ACCURACY, INFRINGEMENT AND PERFORMANCE OF THE INTERTRUST TECHNOLOGY
PRODUCTS; AND (iii) INTERTRUST DOES NOT WARRANT THAT INTERTRUST TECHNOLOGY OR
THE INTERTRUST TECHNOLOGY PRODUCTS WILL MEET NATWEST'S REQUIREMENTS OR THOSE OF
ANY THIRD PARTY, OR THAT INTERTRUST TECHNOLOGY PRODUCTS WILL BE ERROR FREE OR
WILL OPERATE WITHOUT INTERRUPTION. NatWest specifically, and without
limitation, acknowledges that the Sample Applications, deployable applications
and deployable components (as each are described in Exhibit A) that may be
provided to NatWest as part of InterTrust Technology are intended, solely to aid
NatWest in its development efforts, should NatWest decide to use them.
10.4 Reporting and Other Covenants. InterTrust shall promptly inform NatWest,
--------------
in writing, of any breach by InterTrust of any provision hereunder that comes to
the attention of an InterTrust executive officer. NatWest shall promptly inform
InterTrust, in writing, of any breach by NatWest, of any provision hereof and/or
by a Customer of a Customer Agreement, that comes to the attention of a NatWest
officer or manager. InterTrust agrees that the representations set forth in
Sections 10.2(b)-(e) shall apply to each new delivery of InterTrust Technology
as if such representations were made as of the date of such delivery of
InterTrust Technology; provided that any InterTrust [*] of any and all
-------------
breach(es) of the foregoing shall be [*] to an [*] not to [*] in any and all
circumstances.
11. INDEMNIFICATION AND REMEDIES.
11.1 Indemnification.
---------------
(a) InterTrust Indemnification. InterTrust shall indemnify and hold
--------------------------
NatWest and its employees, officers and directors (the "NatWest Parties")
---------------
harmless from any and all liability, judgments, costs, damages, claims, suits,
actions, proceedings, expenses and/or other losses, including reasonable
attorneys' fees (collectively, "Claims") or portions thereof, to the extent
------
awarded by a court of competent jurisdiction or pursuant to a settlement as
provided hereunder, resulting from controversies or litigation asserted by any
third Person against the NatWest Parties arising directly or indirectly from:
(i) InterTrust's breach of any of its obligations under this Agreement, or its
representations and warranties set forth in Sections 10.1, 10.2, or 10.4
(subject to the provisions thereof); and (ii) NatWest's proper use of InterTrust
Trademarks as set forth herein; provided, however, that, this indemnity does not
-------- ------- ----
extend to any Claim (collectively, the "Indemnification Exclusions") relating
--------------------------
to: (1) any Modified Technology or other modifications thereto made by NatWest
or any third Person or combinations of the InterTrust Technology with any
product, technology or service of NatWest or of any Person, where such Claim
resulted from such modification or combination and not from the InterTrust
Technology by itself as contained in such modification or combination; or (2)
the use of any InterTrust Technology in any manner inconsistent with InterTrust
Specifications or Documentation to the extent that such Claim would have been
avoided in the absence of such inconsistent use.
(b) NatWest Indemnification. NatWest shall indemnify and hold
-----------------------
InterTrust, its employees, officers and directors (the "InterTrust Parties")
------------------
harmless from any and all Claims or portions thereof to the extent awarded by a
court of competent jurisdiction or pursuant to a settlement as provided
hereunder, resulting from controversies or litigation asserted by any Person
against the InterTrust Parties arising directly or indirectly from: (i)
NatWest's breach of any of its obligations, representations or warranties
hereunder; (ii) InterTrust's proper use of NatWest Trademarks as set forth
herein; (iii) the design, manufacture, use, distribution and/or disposition by
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
31
<PAGE>
CONFIDENTIAL
or for NatWest of Modified Technology, NatWest Products, performance of any
service associated with the foregoing, and/or other exercise by NatWest of the
licenses hereunder, except where such Claims would have arisen solely out of
InterTrust Technology as directly provided to NatWest by InterTrust in the
absence of NatWest activities hereunder, and further, except to the extent
NatWest is indemnified by InterTrust under Section 11.1 ((a)) hereof; and (iv)
any Claim relating to the Indemnification Exclusions.
(c) Third Party Claims. In case any Claim is brought by a third Person
------------------
for which Claim indemnification is or may be provided hereunder, the indemnified
Party shall provide prompt written notice thereof to the other Party. Where
obligated to indemnify such Claim, the indemnifying Party shall, upon the demand
and at the option of the indemnified Party, assume the defense thereof (at the
expense of the indemnifying Party) within thirty (30) days or at least ten (10)
days prior to the time a response is due in such case, whichever occurs first,
or, alternatively upon the demand and at the option of the indemnified Party,
pay to such Party all reasonable costs and expenses, including reasonable
attorneys' fees, incurred by such Party in defending itself. The Parties shall
cooperate reasonably with each other in the defense of any Claim, including
making available (except as expressly set forth herein to the contrary, and in
all events under the strongest protective order reasonably available) all
records necessary to the defense of such Claim, and the indemnified Party shall
have the right to join and participate actively in the indemnifying Party's
defense of the Claim. Notwithstanding the foregoing (and any other Section of
this Agreement), it is understood and acknowledged that InterTrust need not
under any circumstance provide Top Secret Information except as expressly
provided to the contrary in Section 3 of Exhibit G. Each Party shall be entitled
to prior notice of any settlement of any Claim to be entered into by the other
Party and to reasonable approval of a settlement to the extent such Party's
rights would be directly and materially impaired. Without limiting the
foregoing, in the event of any Claim or threatened Claim that [*] any [*]: (a)
upon NatWest's written request, InterTrust will use all reasonable efforts
(taking into account the gravity of the situation) to [*] or [*] NatWest (at
NatWest's expense) to [*] and otherwise [*] in accordance with the terms and
conditions hereof such portion of InterTrust Technology on [*] to [*], each in
the exercise of its own discretion; or (b) at InterTrust's sole discretion,
InterTrust may use [*] or [*] of the [*], as the case may be, so as to make such
portion of the [*] while [*] substantially [*] and [*] of such [*] or [*] of the
[*] that are material to NatWest's then-current use of such technology. If
options (a) and (b) are not [*]: (1) NatWest shall have the right, as its sole
and exclusive remedy in connection with such Claim, threatened Claim or action
of InterTrust in accordance with this Section 0(0), to terminate the licenses
granted hereunder upon thirty (30) days prior written notice; and (2) InterTrust
may, and without any liability whatsoever, terminate the licenses granted
hereunder as to such portion upon thirty (30) days prior written notice if in
the good faith opinion of InterTrust or its professional advisors, InterTrust
has a material risk of liability from NatWest's continued use of such portion of
InterTrust Technology.
11.2 Cumulative Remedies. Except as expressly provided herein to the contrary,
-------------------
no remedy made available to a Party by any of the provisions of this Agreement
is intended to be exclusive of any other remedy, and each and every remedy shall
be cumulative and shall be in addition to every other remedy given hereunder or
now or hereafter existing at law or in equity or by statute or otherwise.
11.3 Equitable Remedies. Each Party agrees that it may be impossible or
------------------
inadequate to measure and calculate a Party's damages from any material breach
of the covenants set forth in Sections 3.5, 5.6, 8,9, 13.2, 13.3, or 14.4
hereof. Accordingly, each Party agrees that if it or any of such Party's Agents
thereof materially breach or threaten a material breach or anticipatory
repudiation of any of such provisions, in addition to any other right or remedy
available, the other Party shall be entitled: (i) to obtain an injunction
against the breaching Party and such Party's Agents thereof, from a court of
competent jurisdiction restraining such breach or threatened breach; and (ii) to
specific performance of any such provision of this Agreement.
12. EXCLUSION OF DAMAGES.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
32
<PAGE>
CONFIDENTIAL
EXCEPT AS SET FORTH IN THE IMMEDIATELY FOLLOWING SENTENCE, NEITHER PARTY SHALL
BE LIABLE TO THE OTHER PARTY, ITS AGENTS, AFFILIATES, CUSTOMERS, OR ANY OTHER
PERSONS, FOR ANY LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES,
ARISING OUT OF THE BREACH OF THIS AGREEMENT. NOTWITHSTANDING THE IMMEDIATELY
PRECEDING SENTENCE, A PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ALL DAMAGES,
INCLUDING INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES TO THE EXTENT SUFFERED
OR INCURRED BY THE OTHER PARTY IN THE FOLLOWING CIRCUMSTANCES: (i) THE
MISAPPROPRIATION OF TRADE SECRETS OF THE DAMAGED PARTY BY THE LIABLE PARTY, OR
ITS AGENTS; (ii) THE WILLFUL MISCONDUCT OR MATERIAL BREACH OF THIS AGREEMENT IN
BAD FAITH BY THE LIABLE PARTY, OR ITS AGENTS; OR (iii) THE BREACH OF SECTIONS
6 AND/OR 9 HEREOF.
13. TERM AND TERMINATION.
13.1 Agreement. This Agreement shall commence on the Effective Date and,
---------
unless and until terminated earlier pursuant to Section 13.2, shall continue for
a period of twenty (20) years.
13.2 Events of Termination. This Agreement and the licenses granted hereunder
---------------------
shall be subject to termination upon the occurrence of any of the following
events and such other provisions hereof expressly so stating (each, an "Event of
--------
Termination"):
- -----------
(a) Except as expressly provided elsewhere in this Agreement, if either
Party materially defaults on any of its material obligations under this
Agreement, the non-defaulting Party shall have the right to initiate a
termination procedure under this Agreement by written notice describing with
reasonable specificity the nature of the default and requiring that such default
be cured in accordance herewith. Unless: (i) within sixty (60) calendar days of
receiving such written notice of such default, the defaulting Party remedies the
default; or (ii) in the case of a default that cannot with earnest due diligence
be cured within such sixty day period, the defaulting Party institutes, within
thirty (30) days of the commencement of the Cure Period, steps necessary to
remedy the default and thereafter employs best efforts to diligently prosecute
the same to completion (collectively, as applicable, the Cure Period"), at the
---------------
end of such Cure Period the non-defaulting Party may terminate this Agreement.
Notwithstanding the foregoing, the Cure Period associated with a NatWest breach
of its payment obligations under Section 5 shall be ten (10) days.
Notwithstanding any of the foregoing, a Party shall have the right both to
immediately terminate this Agreement and to obtain injunctive relief in the
event the other Party engages in any: (1) intentional, material unauthorized use
of technology known by such Party to be outside of the rights granted hereunder
(or, in the case of NatWest, any unauthorized disclosure of InterTrust Top
Secret Information) and/or (2) intentional, material unauthorized disclosure of
Confidential Information known by such Party to be a violation of this
Agreement;
(b) By a Party at its option, effective immediately upon written notice
to the other Party, in the event of: (i) the filing by the other Party of a
petition in bankruptcy or insolvency; (ii) the appointment of a receiver for the
other Party for all or substantially all of its property relevant to the
business activities under this Agreement; (iii) the making by the other Party of
any assignment or attempted assignment for the benefit of creditors for all or
substantially all of its properties relevant to its business activities under
this Agreement; or (iv) the institution of any proceedings for the liquidation
or winding up of the other Party's business or for the termination of its
corporate charter, if any such proceeding is not dismissed within one hundred
and twenty (120) days of institution;
(c) Upon thirty (30) days prior written notice to InterTrust, NatWest may
terminate this Agreement this Agreement in the event InterTrust is in breach of
the representations set forth in Section 10.2((b)); or
(d) Upon thirty (30) days prior written notice to NatWest, InterTrust may
terminate this Agreement in the event NatWest: (i) fails to release any NatWest
Products and/or associated service in a material, commercial fashion within [*]
months from the date InterTrust first delivers Commerce 1.0 (GA
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
33
<PAGE>
CONFIDENTIAL
Version) to NatWest in accordance with the provisions of Section 2.1 hereof,
and/or makes no release of any NatWest Product commercially available for any
consecutive [*] month period during the term of this Agreement,
provided that such time period shall be extended by any period in which there
exists a Material Defect in the Commerce 1.0 software that materially impedes
NatWest's development efforts as relevant, but only for the period from the date
that NatWest shows such effort to have been first materially impeded to the date
such defect has been reasonably corrected or mitigated as provided in Section
2.2(b); (ii) fails to timely make payments due under this Agreement on two or
more occasions over a twelve (12) month period; or (iii) engages in conduct
directly contrary to a partnering relationship by engaging in the licensing or
transferring to multiple third Persons of any technology (other than InterTrust
Technology) that contains or includes Secure Containers to Manage Content for
incorporation or use by such third Persons in products and/or applications for
other customers, including end users (and provided that the foregoing provisions
of this subparagraph (iii) shall not be construed to include licensed activities
as set forth herein).
13.3 Effect of Termination. Upon the expiration or termination of this
---------------------
Agreement: (i) all licenses granted hereunder shall automatically terminate;
(ii) InterTrust shall have the right to retain all sums already paid by NatWest
hereunder, and NatWest's only payment obligation under Sections 5.1((a)), ((b))
and ((c)) will be to pay to InterTrust all sums accrued but unpaid within thirty
(30) days thereafter; and (iii) NatWest shall discontinue use of InterTrust
Technology and the use of any portion of such InterTrust Technology in any
Modified Technology, as expeditiously as commercially practicable (and in all
events within thirty (30) days of such expiration or termination), and
discontinue making, using, selling or otherwise transferring or exploiting any
product or service that in the absence of a license hereunder would infringe any
InterTrust Intellectual Property Rights (including termination of distribution
of NatWest Products and any associated services); provided, however, that all
-------- ------- ----
licenses properly granted to end-users pursuant to the then-existing Customer
Agreements solely for Applications Products shall continue in full force and
effect in accordance with the terms thereof (but only where such licenses do not
provide any rights to such end-users with respect to Clearinghouse Functions,
other than as may be expressly provided hereunder and where one or more
Authorized Clearinghouse Providers (other than NatWest and/or its successors)
provide Clearinghouse Functions). Confidential and Top Secret Information shall
be returned to the Party and/or securely destroyed in the manner set forth in
Exhibit G hereto.
13.4 NatWest Continuing Rights. The Parties acknowledge that Section 365(n) of
-------------------------
Title 11 of the United States Code (collectively, the "Bankruptcy Code")
---------------
provides, in part that, in the event InterTrust undertakes a bankruptcy
proceeding under the Bankruptcy Code, NatWest as a licensee of InterTrust
Technology is entitled to retain and continue to exercise its licenses hereunder
in accordance with the terms of the Bankruptcy Code. All rights and licenses
granted under this Agreement shall be deemed to be for the purpose of such
Section 365(n), licenses of right to "intellectual property" as defined under
Section 101 of the Bankruptcy Code.
13.5 Survival. The respective rights and obligations of InterTrust and NatWest
--------
under the provisions of Sections 3,5, 4.5, 5.6 (but only for a period of five
years), 6.1, 6.2, 9, 11, 12, 14 and this Section 13.5 shall survive expiration
or termination of this Agreement.
14. MISCELLANEOUS.
14.1 Governing Law. This Agreement, any and all actions arising out of or in
-------------
any manner affecting the interpretation of this Agreement, and any actions
between the Parties involving the InterTrust Technology, any InterTrust
Property, Licensed Rights, InterTrust Intellectual Property and/or any
Confidential or Top Secret Information ("Party Disputes") shall be governed
--------------
solely by, and construed solely in accordance with, the laws of the United
States of America and the Commonwealth of Virginia, excluding that body of law
relating to conflict of laws. The Parties hereby acknowledge and agree that the
United Nations Convention on Contracts for the International Sale of Goods shall
not apply to this Agreement. To the extent permitted by law, the provisions of
this Agreement shall supersede any provisions of the Uniform Commercial Code as
adopted or made applicable to this Agreement in any competent jurisdiction.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
34
<PAGE>
CONFIDENTIAL
14.2 Venue and Jurisdiction. In connection with any litigation between the
----------------------
Parties involving a Party Dispute, each Party hereby unconditionally and
irrevocably consents to the exclusive jurisdiction and venue, in the Courts of
the Commonwealth of Virginia and in the U.S. Federal District Court, located in
the City of Alexandria, Virginia (or any direct successor thereto) and
irrevocably: (i) waives any objection and covenants that it shall refrain from
making any motion concerning personal jurisdiction, venue, transfer, or
convenience of the Parties with respect to a Party Dispute filed in said courts;
and (ii) consents to the service of process of said courts in any matter
relating to this Agreement by the mailing of process by registered or certified
mail, postage prepaid, at the addresses specified in this Agreement. If
necessary, NatWest shall appoint a registered agent in the Commonwealth of
Virginia for acceptance of service of process and/or other notices provided for
under this Agreement and shall notify InterTrust of the identity of such
registered agent within thirty (30) days after the Effective Date.
14.3 Compliance with Law and Export Controls. The Parties shall at all times
---------------------------------------
comply with all applicable U.S. and foreign federal, state, and local laws,
rules and regulations relating to the execution, delivery and performance of
this Agreement and to the InterTrust Technology Products and Modified
Technology. NatWest acknowledges that because one or more aspects of the
InterTrust Technology is likely to be subject to the export control laws,
regulations and requirements of the United States and other jurisdictions,
NatWest Products likely will require export and other approvals as well.
InterTrust shall use all commercially reasonable efforts at InterTrust's expense
to obtain any license or other approval, if any, that may be required by the
United States government for InterTrust to make the InterTrust Technology
Products and/or Documentation or information relating thereto generally
available internationally.
14.4 Amendment or Modification; Assignment. This Agreement may not be amended,
-------------------------------------
modified or supplemented by the Parties in any manner, except by an instrument
in writing signed by the InterTrust Designated Officer and a duly authorized
officer of NatWest. NatWest shall not assign or transfer (whether expressly, by
operation of law or otherwise) its rights or obligations hereunderto any Person
(including any affiliate): (i) who has commercial interests materially in
conflict with InterTrust's interests; or (ii) without InterTrust's prior written
consent, which consent shall not be unreasonably withheld; provided that NatWest
-------- ----
may, without the prior written consent of InterTrust, assign its rights and
obligations hereunder to (x) any wholly-owned NatWest affiliate or (y) any
Person in connection with any merger or sale of substantially all of NatWest's
assets and business; provided further that such affiliate or such Person, as
-------- ------- ----
applicable, does not have commercial interests materially in conflict with
InterTrust's interests and such successor in interest or transferee assumes in
writing NatWest's rights and obligations under this Agreement. InterTrust shall
not assign or transfer (whether expressly, by operation of law or otherwise)
this Agreement or its rights or obligations hereunder to any Person without
NatWest's prior written consent, which consent shall not be unreasonably
withheld. Notwithstanding the foregoing, InterTrust shall be entitled to assign
or transfer such rights or obligations hereunder in connection with any merger
or sale of substantially all of the assets or business related to this Agreement
without such NatWest consent; provided that the successor-in-interest or
-------- ----
transferee assumes in writing InterTrust's rights and obligations under this
Agreement and consents to the licenses hereunder. Subject to the foregoing,
this Agreement will benefit and bind the successors and permitted assigns of the
Parties. Any attempted transfer or assignment without such consent shall be
null and void ab initio and of no force or effect.
-- ------
14.5 Notices. Any notice hereunder shall be in writing and shall be either:
-------
(i) personally delivered; (ii) transmitted by postage prepaid registered or
certified airmail, return receipt requested; or (iii) by facsimile with a
confirmation copy deposited prepaid with an internationally recognized express
courier service. Unless otherwise provided herein, all notices shall be deemed
to have been duly given on: (a) the date of receipt (or if delivery is refused,
the date of such refusal) if delivered personally, by facsimile, or by express
courier; or (b) ten (10) days after the date of posting if transmitted by mail.
Notwithstanding the foregoing, communication of Confidential Information or Top
Secret Information shall be governed by practices adequate to appropriately
protect such information as may be specified herein or in the future by
InterTrust. Either Party may change its address for purposes hereof on not less
than three (3) days prior notice to the other Party. Notice hereunder shall be
directed:
35
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CONFIDENTIAL
If to InterTrust, to: If to NatWest, to:
460 Oakmead Parkway National Westminster Bank Plc
Sunnyvale, California 94086 41 Lothbury
Attn: General Counsel London, England EC2P 2BP3933
Fax: (408) 222-6144 Attn.: Company Secretary
Fax: (44) 171-726-1035
14.6 Waiver. Any provision of this Agreement may be waived by the Party
------
entitled to the benefit thereof. Neither Party shall be deemed, by any act or
omission, to have waived any of its rights or remedies hereunder unless such
waiver is in writing and signed by, in the case of InterTrust, InterTrust
Designated Officer, and in the case of NatWest, a NatWest authorized officer,
and then only to the extent specifically set forth in such writing. A waiver
with reference to one event shall not be construed as continuing or as a bar to
or waiver of any right or remedy as to a subsequent event.
14.7 No Third Party Beneficiaries. Nothing express or implied in this
----------------------------
Agreement is intended to confer, nor shall anything herein confer, upon any
Customer or any Person other than the Parties and any respective successors or
permitted assigns of the Parties, any rights, remedies, obligations or
liabilities whatsoever.
14.8 No Agency. Nothing herein contained shall be construed to constitute the
---------
Parties hereto as partners or joint venturers or the agent of the other Party in
any sense of those terms whatsoever. Neither Party assumes any liability of the
other Party nor shall have any authority to enter into any binding obligation on
behalf of the other Party.
14.9 Recovery of Costs and Expenses. If any Party to this Agreement brings an
------------------------------
action against the other Party to enforce its rights under this Agreement, the
prevailing Party shall be entitled to recover its costs and expenses, including
without limitation, reasonable attorneys' fees and costs incurred in connection
with such action, including any appeal of such action.
14.10 Severability. If the application of any provision or provisions of this
------------
Agreement to any particular facts or circumstances shall be held to be invalid
or unenforceable by any court of competent jurisdiction, then: (i) the validity
and enforceability of such provision or provisions as applied to any other
particular facts or circumstances and the validity of other provisions of this
Agreement shall not in any way be affected or impaired thereby; and (ii) such
provision or provisions shall be reformed without further action by the Parties
hereto and only to the extent necessary to make such provision or provisions
valid and enforceable when applied to such particular facts and circumstances.
14.11 No Solicitation of Employees. Each Party agrees that neither it nor any
----------------------------
of its affiliates will, without the prior written consent of the other Party,
directly or indirectly solicit or encourage any person employed by the other
Party to leave the employ of such other Party and become an employee such former
Party until two (2) years after such employee shall have ceased being employed
by such other Party.
14.12 Counterparts; Facsimiles. This Agreement may be executed in any number
------------------------
of counterparts, each of which when so executed and delivered shall be deemed an
original, and such counterparts together shall constitute one and the same
instrument. Each Party shall receive a duplicate original of the counterpart
copy or copies executed by it. For purposes hereof, a facsimile copy of this
Agreement, including the signature pages hereto, shall be deemed to be an
original. Notwithstanding the foregoing, the Parties shall deliver original
execution copies of this Agreement to one another as soon as practicable
following execution thereof.
36
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CONFIDENTIAL
14.13 Entire Agreement. This Agreement represents the entire agreement of the
----------------
Parties with respect to the subject matter hereof and supersedes all prior
and/or contemporaneous agreements and understandings, written or oral between
the Parties with respect to the subject matter hereof (except as set forth in
Section 0 hereof).
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of
the date first written above by the undersigned duly authorized.
<TABLE>
<S> <C>
INTERTRUST TECHNOLOGIES NATIONAL WESTMINSTER BANK PLC
CORPORATION
By:___________________________________ By:_____________________________________
Name: Victor Shear Name: Patrick J. Boylan
Title: Chairman and Chief Executive Officer Title: Managing Director, Card Services
</TABLE>
37
<PAGE>
EXHIBIT A
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
INTERTRUST TECHNOLOGY PRODUCT DELIVERABLES AND RELATED ITEMS
------------------------------------------------------------
I. INTERTRUST TECHNOLOGY: PRODUCTS AND DOCUMENTATION
II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE
III. INTERTRUST AUTHORIZED CLEARINGHOUSE SOFTWARE
IV. INTERTRUST CORE TECHNOLOGY
<PAGE>
I. INTERTRUST TECHNOLOGY ESTIMATED PRODUCT DELIVERABLE
A. InterTrust Systems Developer's Kit Release 1.0
-----------------------------------------------
The InterTrust Systems Developer's Kit Release 1.0 provides a broad range of
software, components and sample applications that allow developers to
incorporate highly flexible and distributed digital rights management and the
persistent protection of digital information into computer software, and to
support e-commerce businesses, infrastructures and clearinghouses. In general,
this software:
. facilitates the rapid integration of InterTrust(TM) secure electronic
commerce and digital rights management technologies into customer-specific
applications;
. enables development of rights management tools for viewing, packaging and
editing;
. allows the creation of Secure Containers for music-, video-, text-, image-
based, and other forms of digital content. DigiBox containers provide
persistent protection of digital information across information networks and
through digital distribution channels;
. permits specification of conditions and consequences governing the use of
digital data and executables. These conditions may include distributed usage
management, auditing, and payment control related to client interaction with
(and usage of) digital information;
. has client and server support for Windows 95 and NT 4.0 and server support
for Windows NT 4.0 and Solaris 2.5.1;
. enables and integrates with customer-specific services, such as: payment,
financial and usage clearinghouses, multiple network protocols, database
systems, updates, etc; and
. supports deployment services for installation and registration.
The Systems Developer's Kit Release 1.0 comprises two announced product sets:
Commerce 1.0 and Enterprise 1.0. These products are, initially, comprised of
the same software, but are intended for different uses. The Commerce 1.0
product is intended as an interoperable secure foundation for global commerce
where InterRights Points serve as a general purpose resource for a variety of
application products, together Managing Content from, potentially, a wide
variety of unrelated Persons. Enterprise 1.0 is intended solely for use within
enterprises and/or for use by enterprises solely in connection with such
enterprise's Content and within the context solely of products and/or services
for direct customers of such enterprise or other persons having a value chain
relationship with such enterprise (such as suppliers, distributors, consultants,
etc.). Enterprise 1.0 comprises that software described above for Commerce 1.0,
used for such purposes described immediately above.
1. Systems Developer's Kit 1.0 Deliverables:
-----------------------------------------
Systems Developer's Kit 1.0 delivers software, development tools, and
documentation for creating InterTrust-aware applications and run-time
environments, and provides the framework for clearinghouse activities and
deployment activities, including deployment administration. Production-
<PAGE>
level core InterTrust software, application programming interfaces and tools,
and sample software applications are provided.
The deliverables represent product sets, each targeted to support a different
InterTrust rights functional area. They are:
. Application Developer's Kit ("ADK");
---
. Transaction Authority Framework(TM); and
. InterRights(TM) Point (Golden Master).
In Systems Developer's Kit 1.0, these product sets will be released together.
For future releases, and at InterTrust's discretion, these product sets may be
independently delivered and may be available as independent deliverables.
a. Applications Developer's Kit 1.0:
---------------------------------
The Application Developer's Kit provides programming libraries, sample
applications that demonstrate packaging and viewing, certain deployable
application and components, source code for the sample applications, pre-
activated (non-deployable) InterRights Points for test purposes, and
documentation.
. Core Technology Software - Object Code
- InterTrust Programming Libraries (including ITAPI, the Layout Interpreter
Library, Rights Management Library, and utility libraries);
. ITAPI: The programming interface to the InterRights Point software
includes functions that are used to package and read DigiBox
containers, specify business rules, and perform administrative
functions associated with use of DigiBox containers.
. InterTrust Interoperability Library ([*]): This interface uses
ITAPI to construct various governed elements, such as budget objects,
CHInfo objects, and CHAccount objects. It manages the construction of
the controls required for these objects and provides consistent use of
those controls to help enable interoperability of objects.
. InterTrust Layout Interpreter Library ([*]): The internal
organization of a DigiBox container usually is specified in a layout
template produced by the Layout Editor and interpreted by both
packaging and viewing applications using the Layout Interpreter
programming interface.
. Rights Management Library ([*]): Applications can use this class
library to create and manipulate controls (business rules) rather than
writing directly to the ITAPI to do so.
- Pre-activated InterRights Points (software to support the development
environment); and
- InterTrust Rights Wallet(TM) and core Rights Wallet(TM) applets: supports
administration of the
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
InterRights Point in the packaging and viewing environment. These provide
an administrative interface to the InterRights Point software to enable
users of the system to set budgets, set passwords, commence payment
activities, and perform other administrative functions associated with use
of DigiBox containers and the InterRights Point software.
. Applications and Components - Source Code and Object Code (include)
- InterTrust Layout Tool (executable and source code): a graphical editing
tool for creating DigiBox container layout templates that are later used
in packaging operations. This tool creates a content layout template that
specifies how the elements representing digital content in a DigiBox
container will be organized. NatWest can use the basic template supplied
with the InterTrust Packager, or can use this tool to create different
templates for its own content. Templates facilitate interoperability among
packaging and viewing applications that use the InterTrust software.
- InterTrust Rights Selector (executable and source code): an [*]
component, intended to be embedded in viewer applications, for displaying
rights controls in readily human-readable and manipulable format. The
Rights Selector component reads a set of business rules (controls) from a
DigiBox container and displays them in human-readable from.
- InterTrust Survey/License Control (executable and source code): an [*]
component, intended to be embedded in viewer applications, for presenting
HTML based survey and license agreements to consumers;
. Consumer Sample Applications and Components - Object Code and Source Code
for portions that may be altered
- InterTrust Packager: sample software that creates a DigiBox container,
places specified content into a DigiBox container, associates business
rules and specified controls with the content, and places such rules
inside the container as well;
- InterTrust Viewer: sample software that reads the contents of a DigiBox
container created with an InterTrustworthy Packager; displays the rules
that govern use of the content; and, after the user agrees to those rules,
displays, prints, or saves the content as specified by the business rules.
This application implements InterTrust defined [*] component
interfaces to invoke survey and license agreement mechanisms and supports
a plug-in interface for handling specific media types;
- InterTrust Media [*] Control: a sample [*] component that demonstrates how
to build plug-in media handlers; and
- InterTrust Installer.
b. Transaction Authority Software:
------------------------------
The Transaction Authority software provides the framework for Clearinghouse
activities and Deployment activities, including deployment administration.
. Core Technology: Object Code Format (except as noted):
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
- Transaction Authority Framework Software - secure communication
infrastructure and protocols, general processing of incoming data, and
database storage. The Transaction Authority Framework (TAF) software is a
software framework made up of several components that handle the secure
reception and processing of DigiBox containers. It is designed to enable
validation and processing of requests that require interaction between an
InterRights Point and some financial or management authority, called a
transaction authority. The TAF is the basis of any transaction authority
system, whether it is specialized as a financial clearinghouse, a usage
clearinghouse, or a Deployment Manager (DM):
The TAF accepts communications from the dispersed InterRights Points,
opens DigiBox containers within its own InterRights Point, manages work
flow, and hands off audit records and other messages to the clearinghouse
provided by InterTrust business partners. The TAF also packages
acknowledgment responses in DigiBox containers and sends them back to the
originating InterRights Points. Well-defined software interfaces are
provided so that partner software can interact with the TAF;
- Deployment Manager Software - a set of programs for secure node deployment
and initialization, provision of naming services to nodes, and provision
of secure date and time services to nodes. It initializes each InterRights
Point and authorizes addition of new users. It authorizes backup and
restores activities of provider and consumer systems. It is also
responsible for key distribution and name services within a deployment.
(Source Code provided for those portions of the software that may be
altered); and
- Installer Software: Software for tamper-resistant installation of the
InterRights Point (Source Code provided for those portions of the software
that may be altered).
. Clearinghouse Sample Applications and Components - Source Code and Object
Code:
- Usage Clearinghouse Application--sample software for gathering and
aggregating usage information, such as usage audits and user profiles;
- Financial Clearinghouse Application--sample software for performing
prototypical clearinghouse functions in the area of financial clearing;
- Deployment Service Prototype Component--sample software for customizing an
initialized InterRights Point (e.g., associating that InterRights Point
with a particular InterTrust deployment and obtaining installation
demographics)
c. InterRights Point (Golden Master):
---------------------------------
The Golden Master provides a deployable version of the InterRights Point
software that may be replicated for distribution. The InterRights Point is the
component that provides secure processing of DigiBox containers and enforces
business rules. In Commerce 1.0, the InterRights Point software is a
cooperating or server process that can run on Microsoft Windows95 and Windows NT
4.0. The InterRights Point software presents the InterTrust Application
Programming Interface (ITAPI) to applications. This interface has a proxy or
"client" portion that communicates via RPC with a "server" portion. This server
side of the ITAPI then makes requests of the Protected Processing
Environment(TM) (PPE) software in the InterRights Point. The PPE software does
the actual secure manipulation of containers.
<PAGE>
The client-server implementation used for ITAPI allows an application and the
InterRights Point to be located on the same machine or on different ones. The
interface supports multiple local and remote clients and also multiple
simultaneous users.
2. Commerce 1.0 Documentation:
---------------------------
- Commerce 1.0 Overview
- Commerce 1.0 Installation and Configuration Guide
- Commerce 1.0 Glossary
- Applications User's Guide
- Application Developer's Guide
- Application Developer's Kit: Supplemental Libraries
- Application Developer's Kit: ITAPI Vol 1 Concepts
- Application Developer's Kit: ITAPI Vol 2 Reference
- Application Developer's Kit: Interoperability Library
- Application Developer's Kit: Rights Metafile Format
- Clearinghouse Developer's Guide
- Deployment Manager Developer's Guide
3. Commerce 1.0 Schedule:
----------------------
. Beta Release: Shipped March 1998
. First Commercial Shipment (FCS): Shipped July 1998
. General Availability (target): October 1998
Note: Source (where applicable and made available). Object Code for Windows 95
and Windows NT 4.0 for client software and Windows NT 4.0 and Solaris 2.5.1 for
server software. Additional platforms under development, and to be supplied by
InterTrust as available and determined by InterTrust in its discretion.
InterTrust Rights Editor/Commerce Modeler product application to be made
available for internal use through provision of licensed developer copies (n/c).
4. Enterprise 1.0 (GA Version):
----------------------------
Functionality supportive of use of InterTrust technology within the Enterprise
context (described above).
B. Requested Functionality
-----------------------
The following functionalities, which will be incorporated into one or more New
Release(s) or Upgrade Release(s), constitutes the "Requested
Functionalities"):
. Prepayment: control mechanism which supports prepayment, including the
budget [top-up] procedure and local transaction maintenance applet.
. Aggregate Limits for Corporate Accounts: permits groups of users (for
example, all users within one company) to share an enforced limit on their
individual spending.
Support for User Multi-Currencies: permits users to convert monies in one
budget to equivalent monies in a budget of a different currency.
Note: Based at least in part upon further clarifications from NatWest with
respect to its product
<PAGE>
plan and timing, anticipated commercial use of InterTrust Technology and
desired attributes of the Requested Functionality, and subject to
commercial and technical feasibility and other commercially reasonable
factors, InterTrust will use reasonable efforts to develop and incorporate
the Requested Functionality in future Upgrade Releases and New Releases.
C. InterTrust Systems Developer's Kit Release 2.0 - Initial Description of
-----------------------------------------------------------------------
Features and Functionality
---------------------------
Systems Developer's Kit 2.0 will add greater value chain management capability
and independent delivery of control functionality to InterTrust Systems
Developer's Kit 1.0, and it is anticipated that the release will support the
following functionality:
. InterRights Point-based value-chain management, enabling support of chain
of control models directly within InterRights Point;
. Deliver controls independently of controlled digital information, enabling
complex updatable, control models for usage/advertising and trading
systems; and
. Additional major functionality under evaluation but not yet specified -
priority of additional functionality dependent, in part, on experience with
earlier releases, market priorities and timing of completion.
II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE AND CORE TECHNOLOGY
Your Agreement contains provisions that: (1) prohibit modification of InterTrust
Technology (that is designated Core Technology) (files noted as "Core
Technology" may not be modified; files expressly noted herein to be
"Customizable" Technology may be modified), and (2) restrict redistribution of
any software except "Authorized Application Software" (files noted as
"Authorized Application Software" may be distributed, as applicable solely in
accordance with the terms and conditions hereof and in the Agreement; files not
expressly noted as "Authorized Application Software" may not be distributed).
(Any information concerning Customizable Technology or "Core Technology" found
in source files themselves may not be relied upon and shall be superseded by the
designations noted herein). Any and all further restrictions noted in the file
(or Agreement) concerning distribution (such as with the IRP Golden Master
process) must be adhered to or such file shall not be Authorized Application
Software. As of the Effective Date there is no Authorized Clearinghouse
Software.
LISTING OF CUSTOMIZABLE TECHNOLOGY AND AUTHORIZED APPLICATION SOFTWARE
REDISTRIBUTION OF NON-SOURCE FILES
All references to file and directory locations refer to the default installation
directories, which are set by the user at installation.
The binary and online help files listed below are "Authorized Application
Software" and may be redistributed, solely subject to terms and conditions of
the Agreement. All other files may not be redistributed (except as specifically
noted separately in the Source File section below):
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
SOURCE FILE CUSTOMIZATION AND REDISTRIBUTION
Source files contained in the directories listed in this section are
"Customizable" and may be modified solely as expressly provided therein. In
some cases, redistribution of the customized output is authorized and such files
are Authorized Application Software for redistribution solely subject to terms
and conditions of the Agreement. The paragraph preceding each section describes
the customization and redistribution restrictions. Source files in any
directory not listed in this section may not be modified or changed in any
manner.
* CUSTOMIZABLE, BUT REDISTRIBUTABLE ONLY VIA THE IRP GOLDEN MASTER PROCESS
The source files contained in the directories listed immediately below are
customizable but are redistributable only via the IRP Golden Master
redistribution process and solely subject to terms and conditions of your
Agreement:
[*]
* CUSTOMIZABLE BUT NOT REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY)
The source files contained in the directories listed immediately below are
customizable but not redistributable in any manner:
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
* REDISTRIBUTABLE ONLY
The source files contained in the directory listed immediately below are
redistributable (subject to terms and conditions of your Agreement) but may not
be modified or changed in any manner
[*]
* CUSTOMIZABLE AND REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY)
The source files contained in the directories listed immediately below are
customizable and redistributable (solely subject to terms and conditions of your
Agreement):
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
The source files contained in this directory are third-party files which are
customizable
if the instructions contained in those files are correctly followed:
[*]
III. SPECIAL ACKNOWLEDGMENTS AND THIRD PARTY LICENSE REQUIREMENTS
* It is acknowledged and agreed that the InterTrust Technology may employ or may
operate with one or more technologies that may not be proprietary to InterTrust
but are included within the licenses granted in Section 3.1 (the "Third Party
Technology") and as may be modified from time to time by InterTrust. Licensee's
use of the Third Party Technology is limited by the terms of any licenses or
rights that InterTrust may have therein and may sublicense to Licensee.
* This Software contains the following licensed Microsoft DLLs: msvcrt.dll,
msvcirt.dll, mfc42.dll, amovie.exe, atl.dll. These files: (i) may be used only
in conjunction with licensed Microsoft products; and (ii) may not be
redistributed to anyone and/or modified.
* Certain portions of the Software contain software provided under license to
InterTrust from Inso Corporation. The Inso software is contained in files in the
following directory, [*] (where [*] is the default installation directory which
is set by the user at the time of installation). As stipulated in InterTrust's
agreement with Inso, use of these files is for internal development and use, and
demonstration purposes only (except where the
----
terms and conditions of a separate agreement are satisfied).
* Certain portions of the Software contains software provided under license to
InterTrust from Basis Technology Corporation ("Basis"). The Basis Software is
contained in the [*] file in binary form. (c) Basis Technology. All Rights
Reserved. As stipulated in InterTrust's agreement with Basis, these files may
not be modified. You agree that use of the Basis Software shall occur solely (1)
in connection with internal development purposes, and archival copies; (2) as a
integral component of InterTrust technology or licensee's software directly
associated therewith; and (3) where such Basis Software is related as InterTrust
Confidential Information under the terms and conditions of this Agreement.
* Certain portions of the Software have used [*] and [*] to which this notice
applies: [*] Copyright (C) 1990-2, [*] Copyright (C) 1991-2, [*] Inc. All rights
reserved. License to copy and use this software is granted provided that it is
identified as the [*], Inc. [*], and/or [*], Inc.[*] in all material
mentioning or referencing this software or this function. License is also
granted to make and use derivative works provided that such works are identified
as "derived from the [*], Inc. [*], and/or derived from the [*], Inc.[*] in all
material mentioning or referencing the derived work. [*] Inc. makes no
representations concerning either the merchantability of this software or the
suitability of this software for any particular purpose. It is provided "as is"
without express or implied warranty of any kind. These notices must be retained
in any copies of any part of this documentation and/or software.
* Certain portions of the Software have used DES software, to which this notice
applies: des - fast & portable DES encryption & decryption Copyright (C) 1992
Dana L. How. THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (c) 1995 by
[*]. Permission to use, copy, and modify this software without fee is hereby
granted, provided that this entire notice is included in all copies of any
software which is or includes a copy or modification of this software and in all
copies of the supporting documentation for such software. This software may be
subject to export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER
UNITED STATES EXPORT REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE
SOFTWARE). THIS SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR
IMPLIED WARRANTY. IN PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST
TECHNOLOGIES CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND
CONCERNING THE MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY
PARTICULAR PURPOSE.
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (C) 1994 [*]
Company. Permission to use, copy, modify, distribute and sell this software and
its documentation for any purpose is hereby granted without fee, provided that
both that copyright permission notice and this permission notice appear in
supporting documentation. [*] Company (and InterTrust Technologies Corporation)
make no representations about the suitability of this software for any purpose.
It is provided "as is" without express or implied warranty.
* Certain portions of the Customizable Technology (as indicated in such
portions' source files) have used Independent JPEG Group software and certain
portions of the Software supplied in executable format (as indicated in
Software's "About Box") are based in part upon the work of the Independent JPEG
Group. (C) 1991, 1992, 1993, 1994, 1995, Thomas G. Lane. The Graphics
Interchange Format (C) is the copyright property of CompuServe Incorporated. GIF
(sm) is a Service Mark property of CompuServe Incorporated. Certain portions of
the Independent JPEG Software were loosely based on giftoppm from the PBMPLUS
distribution as of February 1991 to which this notice applies: Copyright (C)
1990, David Koblas. Permission to use, copy, modify, and distribute this
software and its documentation for any purpose and without fee is hereby
granted, provided that the above copyright notice appears in all copies and that
both that copyright notice and this permission notice appear in supporting
documentation. This software is provided "as is" without express or implied
warranty.
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
EXHIBIT B
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
TRADEMARKS
----------
InterTrust Trademarks
---------------------
InterTrust
The InterTrust Logo
InterTrust Commerce Architecture
InterRights Point
InterTrustworthy
DigiBox
Virtual Process Control
Electronic Value Chain Management
Commerce 1.0
Commerce Modeler
Rights Editor
Enterprise Modeler
Commerce Appliance
InterTrustable
Rights Expression Tools
Trust Virtual Machine
Transaction Authority Framework
TrustMail
MailTrust
TrustPublish
ComplyTrust
PromoteTrust
PageForward
AssertTrust
NetTrust
TrustNet
Publish America
Commerce America
TrustStation
CommerceStation
RightsStation
RightsWallet
Electronic Express
<PAGE>
CONFIDENTIAL
NatWest Trademarks (registered)
-------------------------------
321 Zero
ActionLine
AD 1692
Airlease
AT THE THREE CROWNS IN THE STRAND NEXT DOOR TO THE CLOBE
TAVERN AD 1692
BankLine
BIS
Caller
CAMPBELL'S OFFICE
CF
Compass Computer Aided Share Service
Compsure
Counter Intelligence
Coutts
Coutts Card
COUTTS & CO.
COUTTS & CO. ACCOUNTACARD
COUTTS & CO. CAMPBELL'S OFFICE
COUTTS & CO. SELECT PORTFOLIO
COUTTS & CO. SHARE SELECTION SERVICE
Coutts CrownLine
Coutts CrownPay
COUTTS FINANCE CO.
COUTTS MORTGAGE RESERVE ACCOUNT
COUTTS RESERVE ACCOUNT
Coutts Portfolio Service
Credit Zone
D.A.L.A.S.
Decipher
Elevator Finance
HBS Heythrop Business School
Heythrop
HLN Heythrop Learning Network
IMMAS
INCS Institutional Nominee Custodial System
IntWest
Junior World Savers
Magex
National Westminster Bank
National Westminster bank SERVICETILL
National Westminster Relay
National Westminster the Action Bank
NatWest
NatWest - the Action Bank
NatWest 321Zero
NatWest Actionline
NatWest Advantage
<PAGE>
CONFIDENTIAL
NatWest Autopay
NatWest BankLine
NatWest BankLine Services
NatWest BrokerLine
NatWest Business Insurance Services
NatWest Business Line
NatWest C.A.R.E.S.
NatWest Cardline
NatWest Cash Bond
NatWest Corporate Quarterly
NatWest CQ
NatWest Crown Reserve
NatWest Currency Business Account
NatWest Currency Reserve Plus
NatWest Current Plus
NatWest Current Plus Account
NatWest Customer Service Line
NatWest Customerbridge
NatWest Datalink Service
NatWest Diamond Reserve
NatWest Dimensions
NatWest EuroCash
NatWest Export Ease
NatWest face 2 face with Finance
NatWest First Reserve
NatWest Global Financial Markets
NatWest Gold Plus Current Account
NatWest Gold Plus Service
NatWest HealthSense
NatWest Markets
NatWest Microcall Service
NatWest more than just a bank
NatWest NetWork
NatWest Network
NatWest On Line
NatWest One Two Three
NatWest Portfolio Reserve Scheme
NatWest Premium Investment Management Service
NatWest Premium Reserve
NatWest Primary
NatWest Privilege Banking
NatWest Relay
NatWest Reward Reserve
NatWest RoomrateR
NatWest Security Plus
NatWest Special Reserve
NatWest Streamline
NatWest Student Plus
NatWest StudentLine
NatWest the Piggy Bank
NatWest Touchscreen
<PAGE>
CONFIDENTIAL
NatWest TradeBridge
NatWest Treasury Reserve
NatWest Unit Trust Selection Service
NatWest Vehicle Concepts
NatWest Vehicle Services
NatWest VehicleFocus
NatWest VehicleSelect
NatWest World Money Centre
NWM
NWVS
Pace
PHAROS Single Market Advisor
Pioneer Fund
Primeline
PRIVATE PERSPECTIVE
PROTECTOR
Raid Cash Till
Rapid Deposit
SatWest
Streamline
Streamline EFT
The Action Bank
The Golden Key Package
The International Financial Centre London
The NatWest Exporter Forums and Awards
Three Crowns
World Savers
NatWest Trademarks (pending)
----------------------------
AIRLEASE
Bondline
CROWN ACCOUNTING SERVICE
FACEFLOW
FACTORNET
FIRST FOR FINANCE
Gartmore
Greenwich NatWest
GUIDE
Home Life
I.M.S Nova
KEYCASH
Lombard
L
L/L/L
L Lombard FIRST FOR FINANCE
L Lombard Direct
Lombard
Lombard L
<PAGE>
CONFIDENTIAL
LOMBARD DIRECT
Lombard FIRST FOR FINANCE
Lombard L Asset Finance
Lombard L Asset Management
Lombard L Bank
Lombard L Banking Services
Lombard L Business
Lombard L Corporate Finance
Lombard L Factoring Services
Lombard L Home Finance
Lombard L Invoice Discounting
Lombard L Motor
Lombard L Network systems
Lombard L Personal
Lombard L Sales Aid Finance
Lombard L Vendor programmers
Lombard Motorloan
LOMBARD NORTH CENTRAL
LOMBARD WHOLESALE FINANCE
L TRIPLE CHOICE
MAX CAT KID CLUB
MOTORVIEW
MV MOTORVIEW
NatWest Business Deposits Direct
NatWest Direct Business Banking
NatWest Directlink
NatWest ShareBuild
NatWest Vehicle Solutions
Protector
SIMCO
The Golden Arrow Package
The Golden Star Package
THE PERSONAL LOAN SERVICE FROM LOMBARD DIRECT
TRADING WINDOWS
ULSTER BANK
Ulster Bank Anytime
UPFRONT
Wheelease
Zenda
<PAGE>
EXHIBIT 4.7
FORM OF REGISTRATION RIGHTS
FOUND IN A CLASS B NON-VOTING COMMON STOCK WARRANT
Registration Rights. The Company agrees that the Shares issued or
-------------------
issuable upon exercise of this Warrant shall be deemed "Registrable Securities"
as such term is defined in the Company's Series B Preferred Stock Purchase
Agreement of even date herewith (the "Series B Agreement") solely for purposes
of granting "piggyback" registration rights under subSection 4.1(c) of the
Series B Agreement and the right to participate, but not demand registration,
under Section 4.1(b) of the Series B Agreement; provided, however, that in the
event of any cutback of securities requested by the underwriters, the Shares
shall be subject to cutback prior to any cutbacks on any holders of Common stock
issued or issuable upon conversion of the Company's Preferred Stock and then
only on a pro rata basis with other holders of Common Stock.
<PAGE>
CONFIDENTIAL
EXHIBIT D
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
SPECIFIC INTERTRUST TERMS
-------------------------
At a minimum, the InterTrust Terms will contain terms that:
(i) prohibit Customers from disassembling, modifying or reverse
engineering any portion of the InterTrust Technology incorporated in the NatWest
Product (as relevant), and except as strictly prohibited by law (in which case
the provisions of Section 3.5 shall apply);
(ii) stipulate that such Customer has no right to use such product in any
manner whatsoever not licensed to NatWest hereunder, or notwithstanding any
other provision hereof, to engage in or perform any Clearinghouse Functions
whatsoever unless such customer is an Authorized Clearinghouse Provider;
(iii) grant such Customer only a limited license solely to use the
NatWest Product (as relevant), and, as applicable, to (A) incorporate Authorized
Application Software into such customer's software product to provide a
InterRights Point that is Compliant with InterTrust Specifications or (B)
develop and incorporate software components that provide the interface for, and
support operations in conjunction with, an InterRights Point provided by NatWest
under this Agreement;
(iv) permit such Customer to engage NatWest and/or another Authorized
Clearinghouse Provider (as determined by NatWest for its Customers) to perform
Clearinghouse Functions with respect to such customer's software product, but
solely in accordance with the provisions hereof;
(v) provide that if such Customer is permitted to modify any portion of
InterTrust Technology Source Code (as set forth above), such Customer shall
grant to InterTrust and InterTrust customers a license under such Customer's
patent rights, but solely to the extent necessary to permit InterTrust and
InterTrust customers to make, have made, use, offer for sale, sell and/or import
the InterTrust Technology;
(vi) brand NatWest Products that are Application Products solely in the
manner set forth in Section 4.3(c), and on Co-Branded Products communicate in a
prominent manner through the use of one or more NatWest brands for NatWest
InterTrustworthy clearing services (and as set forth in Section 4.3) that
Clearinghouse Function services are being performed by NatWest;
(vii) prohibit such Customer from removing, altering, covering,
obfuscating and/or otherwise defacing any InterTrust Trademarks or Notices on
any InterTrust Technology or associated documentation, marketing and advertising
materials therefor;
(viii) require such Customers to place Notices on products and associated
documentation, marketing and advertising materials therefor in the same manner
as in this Agreement;
(ix) provide that such agreement may be subject to modification as may be
reasonably required to protect InterTrust's rights, for example in InterTrust's
Intellectual Property Rights, to the fullest extent permitted by applicable law;
<PAGE>
CONFIDENTIAL
(x) provide that InterTrust shall be a third party beneficiary with the
right to enforce (according to the law and venue as provided in the Agreement)
those InterTrust Terms or provisions in the Customer Agreement that directly
concern (a) InterTrust's Intellectual Property Rights, and/or (b) disclosure or
use of InterTrust Technology or Confidential Information where such disclosure
or use (1) could adversely affect the security and/or interoperability of
InterTrust Technology and/or (2) supports or enables the performance of
Clearinghouse Functions by a Person other than an Authorized Clearinghouse
Provider; and
(xi) contain such other provisions as stipulated in Exhibit E of this
Agreement.
<PAGE>
CONFIDENTIAL
EXHIBIT E
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
DRAFT PRODUCT LEGENDS AND NOTICES
---------------------------------
A) Placement. In addition to placement as specified in the Agreement, the
---------
Notices stipulated herein shall be placed in a human readable form and in a
conspicuous place:
. In a prominent position on all manuals for (or other documentation
provided with) NatWest Products and/or associated services
(collectively, the "Distributed Products"); and
--------------------
. On the outside of all packaging, floppy discs and other media
containing Distributed Products.
B) Content Of Required Notices For Distributed Products That Are Application
-------------------------------------------------------------------------
Products.
---------
1. Copyright Notices. A copyright notice shall be placed on Distributed Products
(and associated materials) as set forth in Section A hereof that shall reflect
the copyright ownership of InterTrust, as applicable, and the proper year as
follows:
Copyright (C) 1997-XXXX InterTrust Technologies Corporation
All rights reserved.
2. Patent Notices. Patent notices shall be placed on Distributed Products (and
---------------
associated materials) as set forth in Section A hereof that shall reflect
InterTrust patent rights as follows:
This product and its use may be covered by one or more of the following patents:
US 4,827,508, US 4,977,594, US 5,050,213, US 5,410,598, EP 329681, AT133305 and
DE3751678. Additional US and foreign patents are pending.
Such patent notice shall be modified to reflect any additional patents under the
Licensed Rights issued to InterTrust where NatWest is provided licenses under
such additional patent rights under this Agreement and/or such patents relate to
InterTrust Technology.
3. Trademark Notices. Trademark notices shall be placed on Distributed Products
------------------
(and associated materials) as set forth in Section A hereof and Trademark
Guidelines as attached below and from time to time to be provided to NatWest,
and shall have such content as set forth in the Trademark Guidelines.
4. Third Party Notices. The Documentation contains some references to trademarks
-------------------
owned by entities other than InterTrust. Other trademarks that are referenced
herein or in the Documentation are the property of their respective owners. For
example, Microsoft and Windows are registered trademarks of Microsoft
Corporation.
Certain portions of the InterTrust Technology may incorporate one or more of the
following software modules, and if such modules are used in NatWest Products,
NatWest shall include the following notices, as applicable:
* (C) 1997 Basis Technology. All rights reserved.
* Certain portions of the Software have used [*] and [*], to which this notice
applies: [*] Copyright (C) 1990-2, [*] Copyright (C) 1991-2, [*], Inc. All
rights reserved. License to copy and use this software is granted provided that
it is identified as the "[*], Inc. [*] [*]", and/or "[*], Inc. [*]" in all
material mentioning or referencing this software or this function. License is
also granted to make and use derivative works provided that such works are
identified as "derived from the [*], Inc. [*]", and/or "derived from the [*],
Inc. [*]" in all material mentioning or referencing the derived work. [*], Inc.
makes no representations concerning either the merchantability of this software
or the suitability of this software for any particular purpose. It is provided
"as is" without express or implied warranty of any kind. These notices must be
retained in any copies of any part of this documentation and/or software.
* Certain portions of the Software have used DES software, to which this notice
applies: des-fast & portable DES encryption & decryption Copyright (C) 1992
Dana L.How. THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (c) 1995 by
[*]. Permission to use, copy, and modify this software without fee is hereby
granted, provided that this entire notice is included in all copies of any
software which is or includes a copy or modification of this software and in all
copies of the supporting documentation for such software. This software may be
subject to export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER UNITED
STATES EXPORT REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE
SOFTWARE). THIS SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR
IMPLIED WARRANTY. IN PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST
TECHNOLOGIES CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND
CONCERNING THE MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY
PARTICULAR PURPOSE.
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (C) 1994 [*]
Company. Permission to use, copy, modify, distribute and sell this
software and its documentation for any purpose is hereby granted without fee,
provided that both that copyright permission notice and this permission notice
appear in supporting documentation. [*] Company (and InterTrust Technologies
Corporation) make no representations about the suitability of this software for
any purpose. It is provided "as is" without express or implied warranty.
* Certain portions of the Customizable Technology (as indicated in such
portions' source files) have used Independent JPEG Group software and certain
portions of the Software supplied in executable format (as indicated in
Software's "About Box") are based in part upon the work of the Independent JPEG
Group. (C) 1991, 1992, 1993, 1994, 1995, Thomas G. Lane. The Graphics
Interchange Format (C) is the copyright property of CompuServe Incorporated. GIF
(sm) is a Service Mark property of CompuServe Incorporated. Certain portions of
the Independent JPEG Software were loosely based on giftoppm from the PBMPLUS
distribution as of February 1991 to which this notice applies: Copyright (C)
1990, David Koblas. Permission to use, copy, modify, and distribute this
software and its documentation for any purpose and without fee is hereby
granted, provided that the above copyright notice appears in all copies and that
both that copyright notice and this permission notice appear in supporting
documentation. This software is provided "as is" without express or implied
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
[*]
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
warranty.
5. Field of Use Notices. Field of Use notices shall be placed on Distributed
--------------------
Products (and associated materials) as set forth in Section A hereof as follows:
"This product is licensed and adapted only for certain limited, expressly
approved uses, and solely as provided in the Customer Agreement (or, as
applicable, the sublicense agreement) executed in connection with your receipt
of this Product. No other licenses are granted. Specifically and without
limitation no licenses: (i) to modify and/or reverse engineer this product;
and/or (ii) any performance of clearinghouse functions have been granted. As
more fully set forth in the Customer Agreement, clearinghouse functions are
those activities using this product or derived from use of this Product that:
(a) enable payment fulfillment or provision of consideration
(including service fees, product fees or any other fees and/or
charges) based at least in part on gathering and/or processing of
electronic information conveyed by or associated with contents of
DigiBox containers;
(b) perform any audit, billing, payment fulfillment (or provision of
other consideration) and/or other clearing activities involving
more than one person; or
(c) compile, aggregate, use and/or provide information relating to
more than one person's use of one or more DigiBox containers
and/or contents thereof for any consideration.
Clearinghouse Functions shall include, for example, any of the
following activities or services: (a) financial clearing; (b)
providing object registry services and rights, permission, prices,
and/or rules information for registered objects; (c) electronically
certifying information such as authenticating identity, class
membership or other attributes of identity context; (d) providing
information based upon usage auditing, user profiling, and/or market
surveying related to more than one person's use of one or more DigiBox
container and/or contents thereof; and (e) employing information
derived from user exposure to content such as advertising."
6. Warranty Notices and Disclaimers.
--------------------------------
The following warranty notices shall be placed on all Distributed Products (and
associated materials), as set forth in Section A hereof in the form here
specified, and in bold letters, the following warranty disclaimer:
"THE INTERTRUST SOFTWARE HAS BEEN PROVIDED BY INTERTRUST TECHNOLOGIES
CORPORATION ("INTERTRUST") SOLELY IN THE FORM OF MIDDLEWARE, "AS IS" AND WITHOUT
----------
WARRANTY BY INTERTRUST OF ANY KIND, AND, TO THE MAXIMUM EXTENT ALLOWED BY
APPLICABLE LAW, INTERTRUST DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY,
NONINFRINGEMENT AND FITNESS FOR A PARTICULAR PURPOSE, REGARDING THIS PRODUCT.
THERE IS NO WARRANTY THAT THE FUNCTIONS CONTAINED IN THE INTERTRUST SOFTWARE
WILL MEET YOUR REQUIREMENTS OR THAT THE OPERATION THEREOF WILL BE UNINTERRUPED
OR ERROR-FREE. INTERTRUST DOES NOT WARRANT, GUARANTEE OR MAKE ANY
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
REPRESENTATIONS REGARDING THE USE OR THE RESULTS OF THE USE OF THIS PRODUCT WITH
RESPECT TO ITS ACCURACY, RELIABILITY, SECURITY CAPABILITY, CURRENTNESS OR
OTHERWISE. NO ORAL OR WRITTEN INFORMATION OR ADVICE GIVEN BY ANY PERSON SHALL
CREATE A WARRANTY IN ANY WAY WHATSOEVER RELATING TO INTERTRUST. THE ENTIRE RISK
AS TO THE USE, PERFORMANCE AND RESULTS OF THIS PRODUCT IS ASSUMED BY YOU. THE
EXCLUSION OF IMPLIED WARRANTIES IS NOT PERMITTED BY SOME JURISDICTION THUS, THE
ABOVE EXCLUSION MAY NOT APPLY TO YOU."
NatWest shall also include, in the same place, disclaimer of liability language
as follows:
"YOU ACKNOWLEDGE TO AND FOR INTERTRUST'S BENEFIT AND THE BENEFIT OF THEIR
DIRECTORS, EMPLOYEES OR AGENTS ("AGENTS") THAT THE INTERTRUST SOFTWARE, AS WITH
MOST SOFTWARE, MAY CONTAIN BUGS AND IS NOT DESIGNED OR INTENDED FOR USE IN
HAZARDOUS ENVIRONMENTS REQUIRING FAIL-SAFE PERFORMANCE IN WHICH THE FAILURE OF
THE APPLICATION SOFTWARE COULD LEAD TO DEATH, PERSONAL INJURY OR PHYSICAL OR
ENVIRONMENTAL DAMAGE. INTERTRUST AND ITS AGENTS SHALL HAVE NO LIABILITY
WHATSOEVER FOR ANY LOSS SUFFERED AS THE RESULT OF A BREACH OF SECURITY INVOLVING
INTERTRUST SOFTWARE, WHETHER OR NOT SUCH BREACH RESULTS FROM THE DELIBERATE,
RECKLESS OR NEGLIGENT ACTS OF ANY PERSON.
UNDER NO CIRCUMSTANCES SHALL INTERTRUST OR ITS AGENTS BE LIABLE FOR ANY
UNAUTHORIZED USE OF ANY CONTENT OF ANY PERSON, OR ANY USE OF THE SOFTWARE TO
DEVELOP, DISTRIBUTE OR USE OF ANY MATERIAL THAT IS DEFAMATORY, SLANDEROUS,
LIBELOUS OR OBSCENE, THAT PORTRAYS ANY PERSON IN A FALSE LIGHT, THAT CONSTITUTES
AN INVASION OF ANY RIGHT TO PRIVACY OR AN INFRINGEMENT OF ANY RIGHT TO
PUBLICITY, THAT GIVES RISE TO ANY BREACH OF CONTRACT INVOLVING ANY THIRD PARTY
OR TO ANY BUSINESS TORT OR SIMILAR CLAIM OF A THIRD PARTY OR ANY VIOLATION OF
ANY FOREIGN, FEDERAL, STATE OR LOCAL STATUTE OR REGULATION, OR THAT OTHERWISE
CAN BE REASONABLY LIKELY TO EXPOSE DEVELOPER OR INTERTRUST TO CRIMINAL OR CIVIL
ACTIONS.
IN NO EVENT WILL INTERTRUST AND/OR ITS AGENTS BE LIABLE TO YOU FOR ANY
CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES (INCLUDING DAMAGES FOR LOSS OF
BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE
LIKE) ARISING OUT OF THE USE OR INABILITY TO USE THE SOFTWARE, EVEN IF
INTERTRUST AND/OR ITS AGENTS HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. BECAUSE SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF
LIABILITY FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATIONS MAY NOT
APPLY TO YOU. TO THE EXTENT AS APPLIED IN A PARTICULAR CIRCUMSTANCE ANY
DISCLAIMER OR LIMITATION ON DAMAGES OR LIABILITY SET FORTH HEREIN IS WHOLLY
PROHIBITED BY APPLICABLE LAW, THEN, INSTEAD OF THE PROVISIONS HEREOF IN SUCH
PARTICULAR CIRCUMSTANCE, INTERTRUST AND ITS AGENTS SHALL BE ENTITLED TO THE
MAXIMUM DISCLAIMERS AND/OR LIMITATIONS ON DAMAGES AND LIABILITY AVAILABLE AT LAW
OR IN EQUITY BY SUCH APPLICABLE LAW IN SUCH PARTICULAR CIRCUMSTANCE, IN NO EVENT
TO EXCEED US$10."
7. Confidentiality and Trade Secret Notices. Except as described below for
----------------------------------------
InterTrust Top Secret Information, NatWest shall place trade secret notices in
such places as specified in Section A hereof
<PAGE>
CONFIDENTIAL
(as applicable) and as applicable, conspicuously and prominently: (a) on the
cover, first page, and in noticeable form in the header or footer of all
subsequent pages, of all printed copies of any InterTrust Confidential
Information authorized under this Agreement, (b) on packaging of media
containing such information, such as floppy disks, and (c) on the initial screen
of all electronic copies of any InterTrust Confidential Information. For
Confidential Information, the content of such trade secret notice provided to
Licensee pursuant to the agreement between the parties.
CONFIDENTIAL INFORMATION OF INTERTRUST TECHNOLOGIES CORPORATION
Where InterTrust Technologies Corporation has provided NatWest with Top
Secret Information, NatWest shall provide notices as set forth immediately
above, having the following content:
TOP SECRET INTERTRUST INFORMATION, SUBJECT TO SPECIAL HANDLING PROCEDURES AS SET
FORTH IN THE AGREEMENT BETWEEN THE PARTIES. DO NOT COPY, DISCLOSE, OR
DISTRIBUTE.
<PAGE>
CONFIDENTIAL
Trademark Guidelines for Use of Trademarks of InterTrust Technologies
---------------------------------------------------------------------
Corporation
-----------
1. These Trademark Guidelines ("Guidelines") are provided pursuant to the
Technology Development, Marketing and License Agreement (the "Agreement")
between National Westminster Bank Plc ("Licensee") and InterTrust
Technologies Corporation ("InterTrust"). The trademarks of InterTrust
Technologies Corporation as listed on Exhibit B (as may be amended or
supplemented from time to time by InterTrust) ("InterTrust Trademarks") are
valuable intellectual property of InterTrust that identify genuine technology
and/or products licensed by InterTrust. Since the InterTrust Trademarks
signify a high standard of quality and reliability, InterTrust must maintain
control over how each of the InterTrust Trademarks is used. Therefore, these
Guidelines and the provisions of applicable sections of the Agreement must be
followed in their entirety in order to preserve and protect the InterTrust
Trademarks.
2. The InterTrust Trademarks must be used on products and/or services that
include InterTrust licensed technology or other material ("Licensed
Material") and/or that have been certified as InterTrustworthy by InterTrust
Certification Program; as provided for in the Agreement. The InterTrust
Trademarks must also be used on associated initial computer screens,
packaging, collateral documentation, manuals advertising, and promotional
materials. The InterTrust Trademarks may never be used on or in connection
with any other products or services, except as expressly provided for under
the Agreement.
3. At the first or a prominent occurrence of a InterTrust Trademark on a
computer screen and/or splash screen or in advertising, copy, promotional
materials, documentation, manuals, or packaging, it must be symbolically
indicated that the InterTrust Trademark used therein is a legal trademark
belonging to InterTrust. This can be done by (1) indicating the "TM" symbol
at the upper right corner of the trademark for an unregistered InterTrust
Trademark and indicating the circled "R" (R) symbol at the upper right corner
of the trademark for a registered trademark, and (2) appending an "*" after
the InterTrust Trademark and placing the appropriate statement selected from
the following on a suitably noticeable area (which shall generally occur near
the copyright notice in text or on screen) of each such copy:
(For an unregistered InterTrust Trademark)
*____________________ (insert InterTrust Trademark) is a trademark in the
USA and other countries of InterTrust Technologies Corporation and is used
by _____________________ (insert licensee name) under license.
(For a registered InterTrust Trademark)
*____________________ (insert InterTrust Trademark) is a trademark in the
USA and other countries of InterTrust Technologies Corporation (Reg. U.S.
Pat. and Tm. Off.) and is used by __________________(insert licensee name)
under license.
Some countries may require that a translated version of these above
statements be used. Licensee must comply with any such local laws.
4. InterTrust Trademarks may not be used in any manner that may cause confusion
as to the source of origin of products and/or services. InterTrust trademarks
are to be used in an evident, but potentially secondary manner to the main
brand on products and services. As a general matter, the only InterTrust
trademark that need directly and evidently appear on the product or service
is a mark indicating compliance with InterTrust's Specifications, as
designated by InterTrust - such as the mark "InterTrustWorthy". Under no
circumstances may InterTrust Trademarks be used or identified on a product or
in a business name or identifier of a business, InterTrust, product, or
service not connected with licensee's products incorporating the Licensed
Material. No variations, compounds, or imitations of the InterTrust
Trademarks may be used at any time, except as expressly authorized in writing
by the InterTrust Designated Officers.
5. All of the InterTrust Trademarks that are word marks must always be used
either as a symbol standing alone or as an adjective describing a noun, with
the noun being the generic name of the product to which the trademark
<PAGE>
CONFIDENTIAL
is applied. (For example, "an InterTrust rights protection system" not "an
InterTrust," or "a DigiBox secure container" not "a DigiBox.") Possessive
or plural forms of the InterTrust Trademark word marks are prohibited.
Additional guidelines regarding specific uses of InterTrust Trademarks and
logos may be provided by InterTrust from time to time.
6. The InterTrust Trademarks may not be used as part of or in any emblem or
insignia or on novelty items except as expressly authorized in writing by
the InterTrust Designated Officers. The InterTrust Trademarks may not be
used in combination with any other trademark, service mark or trade name
except as expressly authorized in writing by an InterTrust Designated
Officer.
7. InterTrust will provide its licensees with camera-ready artwork of the
InterTrust Trademarks. This is the form of the InterTrust Trademarks that
must be used, and this artwork shall not be altered in any way with the
exception of resizing, which may be done using conventional photographic
proportional processes. The InterTrust Trademarks may be used in black and
white, the exact color scheme specified by InterTrust in the artwork, or in
such other color treatments as may have been previously authorized in
writing by InterTrust. Such authorization may be rescinded at any time.
In addition, the area surrounding any use of a logotype form of a
InterTrust Trademark must be free of any other pattern or graphic element
for at least the width of a band that is itself at least 20% of the
logotype form of the InterTrust Trademark, unless the licensee has received
the prior written authorization of InterTrust, which may be rescinded in
writing at any time.
8. Exhibit B of the Agreement includes a listing of all current registered
InterTrust Trademarks, and InterTrust will provide prompt amendment of
Exhibit B as registrations are obtained.
9. Schedule 1 hereto lists those countries in which licensees' use of
InterTrust Trademarks is prohibited or otherwise restricted. InterTrust
will provide prompt amendment of Schedule 1 as changes occur.
10. Licensee will use InterTrust Trademarks solely in a manner consistent with
proper trademark usage and with the high standards of quality and
reliability that InterTrust Trademarks represent.
11. In addition to these Guidelines, InterTrust may amend these Guidelines at
any time and/or provide additional instructions from time to time which
must be followed in use of InterTrust Trademarks. Such amendment and/or
additional instructions shall not be inconsistent with the terms of the
Agreement.
<PAGE>
CONFIDENTIAL
SCHEDULE 1
Countries in Which Use of InterTrust Trademarks is Prohibited or Otherwise
Restricted
None
<PAGE>
CONFIDENTIAL
EXHIBIT F
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
PARTNERING COMMITMENT ITEMS
---------------------------
I. DEFINITIONS
-----------
"Banking Institution" means a Person that: (i)() is either a Savings Association
or a Bank Holding Company as defined and registered under the Bank Holding
Company Act 12 U.S. 1841 et. seq. which is in effect as of the Effective Date
(or a direct or indirect subsidiary of either) that (a) itself or through an
affiliate (as defined in 12 U.S. 1841) either issues credit cards to customers
or processes credit card transactions on behalf of merchants who accept such
credit cards, and (b) is recognized, on its own or through an affiliate, as a
Visa or Master Card independent service organization (any such Person, a [*]);
or (ii) as to other Persons not provided in (i) immediately above, to
InterTrust's reasonable belief after reasonable examination, is, or is a direct
or indirect affiliate of, a "foreign bank" (as defined in 12 CFR Section
211.2(j) effective as of the Effective Date and whether or not actually subject
to the International Banking Act of 1978), that (a) has (together with its
direct or indirect affiliates on a consolidated basis) at least (1) thirty
percent (30%) of its assets devoted to the business of banking, or (2) at least
(A) $US 50 Billion of its assets devoted to the business of banking in the case
of a foreign bank organized under the laws of and headquartered in a country
that is a member of the European Union, or (B) $US 100 Billion of its assets
devoted to the business of banking in the case of a foreign bank organized under
the laws of or headquartered in a country other than a country that is a member
of the European Union; (b) by itself or through an affiliate either issues
credit cards to customers or processes credit card transactions on behalf of
merchants who accept such credit cards; and (c) is recognized, on its own or
through an affiliate, as a Visa or Proxy Card independent service organization
(collectively, with respect to such a "foreign bank," hereinafter a Foreign
Bank, and with respect to such an affiliate thereof, hereinafter a Foreign Bank
Affiliate). For purposes of subparagraph (ii)(a) immediately above, assets
devoted to activities listed in Section 211.5(d)(1)(7) (which regulation is in
effect as of the Effective Date) shall be considered banking assets; except that
with respect to a Person who is a "foreign bank," assets devoted to activities
listed in Section 211.5(d)(1)(14) (which regulation is in effect as of the
Effective Date) shall be considered banking assets.
"Digital Rights Management" means technology that can: (i) stipulate Rules and
-------------------------
Controls governing, Managing, regulating and/or controlling (a) interests (such
as rights, processes and/or obligations) in, related to, and/or associated with
use of any Content, and/or (b) securely manage events and/or event processes
related to or associated with use of, attempted use of, and/or disposition of,
Content or digital events; and (ii) enforce such Rules and Controls through
technical means. Neither Digital Rights Management nor Secure Container shall
mean (1) use of a certificate authority and/or digital certificate solely to
authenticate the identity of a Person provided that no Rules and Controls are
associated with either the certificate authority services and/or with said
digital certificates ("Certificate Authority"), or (2) use of session and/or
---------------------
link encryption to protect Content solely during transport provided that no
Rules and Controls are associated with such Content, and that such encryption is
used during transport only and does not permit persistent protection ("Session
-------
Encryption").
- ----------
"Distributed Peer to Peer Digital Rights Management" means an architecture in
--------------------------------------------------
which, generally speaking, plural distributed computers or other devices (i.e.,
----
nodes) have the potential to act as
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
directly interacting peers in providing Digital Rights Management so that
trusted processes are not required to be performed at one or more centrally
located servers.
II. LIST OF OTHER TECHNOLOGY PROVIDERS--To aid in defining Digital Rights
----------------------------------
Management, Secure Container technologies and Distributed Peer to Peer Digital
Rights Management, the Parties agree that the following lists are exemplary and
not intended as exhaustive. Companies listed in Section A may be considered as
having, or representing they have, some form of Digital Rights Management
technology including simpler lock/unlock solutions:
A. Companies Providing Some Form of Secure Container (including simple
Lock/Unlock Control Technology) and/or other Digital Rights Management Software
or Hardware Component Capabilities. (We have not included water marketing
technology companies on this list, though they border and in some instance
cross over into rights management)
[*]
B. Companies Providing Distributed Peer-to-Peer Digital Rights Management
systems or Hardware Component Capabilities
None presently known as of the Effective Date.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
EXHIBIT G
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
CONFIDENTIALITY PROVISIONS AND FORMS OF INTERTRUST CONFIDENTIALITY AGREEMENTS
-----------------------------------------------------------------------------
CONFIDENTIALITY PROVISIONS
--------------------------
1. InterTrust Information.
----------------------
(a) Confidential Information. To the extent that NatWest receives from
------------------------
InterTrust under this Agreement any InterTrust Technology or any other
information or technology that is marked "Confidential" when disclosed in
written form, or indicated as "Confidential" when disclosed orally ("InterTrust
----------
Confidential Information"), NatWest shall hold such InterTrust Confidential
- ------------------------
Information in strict confidence and in a manner that is: (i) sufficiently
secure for the character and content of the InterTrust Confidential Information;
and (ii) not less secure than procedures used by NatWest to protect its
comparably important information and technology. NatWest shall not, without the
prior written consent of an InterTrust Designated Officer, use, disclose,
provide or otherwise make available any InterTrust Confidential Information to
any Person, except to any employee, director, agent or professional consultant
(collectively "Agents") of NatWest who does not have a potential conflict of
------
interest with InterTrust Technology. Furthermore, in each case of disclosure to
an Agent of NatWest access to such InterTrust Confidential Information shall be
allowed only to Agents who have a reasonable need to know such InterTrust
Confidential Information, and then only to the extent necessary to enable
NatWest to use InterTrust Confidential Information solely to exercise its
license hereunder and/or as expressly allowed hereunder. NatWest shall, as the
case may be: (a) require their Agents having access to any portion of InterTrust
Confidential Information to strictly maintain its confidentiality; and (b)
ensure that each such Agent shall have executed with NatWest a written non-
disclosure/non-use agreement in the form set forth in this Exhibit G or as
subsequently provided by InterTrust, or NatWest's applicable form agreement
which shall effectively and comparably bind such Agent to an agreement of the
same scope as InterTrust's form agreement, and which such form agreement shall
be subject to InterTrust's reasonable prior written approval. Upon such
approval, the form agreement shall replace the pre-existing such form agreement.
NatWest shall notify InterTrust promptly in writing of any unauthorized
disclosure or other misuse or misappropriation of any portions of the InterTrust
Confidential Information which may come to the attention of a NatWest officer.
NatWest shall maintain a log of the Agents accessing and the location of all
originals and copies of material excerpts of technical Confidential Information.
NatWest shall be fully responsible for any breach of its obligations under this
Agreement by any Agent to whom such Confidential Information is disclosed. Any
obligation of NatWest to keep InterTrust Confidential Information in confidence
shall expire thirty-six (36) months after disclosure of such information by
InterTrust to NatWest; provided that InterTrust Technology shall be kept
-------- ----
confidential in perpetuity.
(b) Top Secret Information. In order to protect InterTrust's rights, the
----------------------
rights of InterTrust licensees, and the secure interoperability and reputation
of InterTrust implementations, NatWest shall treat any InterTrust Technology or
other confidential information that is either marked "Top Secret" when disclosed
in written form, or indicated as "Top Secret" when disclosed orally ("Top Secret
----------
Information") in a manner not less secure than NatWest's most secret information
- -----------
and, in all events in a manner sufficient to ensure the security of such Top
Secret Information, given such great sensitivity of such Top Secret Information.
NatWest shall allow disclosure of such Top Secret Information to no more than
[*] designated individual employees of NatWest at any time (and to no Agents
who are not employees), each of whom has a direct need to know such information
or be exposed to such Top Secret Information (as agreed in each case by
InterTrust) and then only to the extent necessary for NatWest to
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
use Top Secret Information solely to exercise its rights and perform its
obligations under this Agreement. NatWest shall not substitute any employee
designated to receive Top Secret Information with another employee, unless such
designated employee's employment with NatWest has been terminated and such
person is no longer able to serve the intended role. None of such employees
shall receive a disclosure of any such Top Secret Information until: (i) such
employee executes an InterTrust Top Secrecy Agreement (in the form set forth in
this Exhibit G or as subsequently provided by InterTrust in writing) covering
such information and exposure; and (ii) an original executed copy of such
agreement is received by InterTrust, with return receipt provided to NatWest,
which such receipt may be provided by fax communication if so requested in
writing. Notwithstanding the foregoing, NatWest and NatWest employees described
above shall make no physical embodiments (for example, any reproduction or copy,
including descriptive notes) whatsoever of Top Secret Information, without the
prior express written authorization of an InterTrust Designated Officer, nor
shall NatWest or such NatWest employees disclose any Top Secret Information to
any Person, except as described in this Section 1 of this Exhibit G. If NatWest
becomes aware that any Top Secret Information has been disclosed or treated
other than as set forth in this Section 1 of this Exhibit G, and/or as specified
in a Top Secrecy Agreement, NatWest shall immediately inform InterTrust of such
occurrence and take immediate steps to correct such compromise. NatWest shall
maintain a log of the employees accessing and location of all originals and
other tangible embodiments of all Top Secret Information. NatWest shall be fully
responsible for any breach by any NatWest employee of this Agreement related to
the unauthorized use or disclosure of Top Secret Information.
2. NatWest Information. To the extent that InterTrust receives NatWest
-------------------
confidential information that is either marked "Confidential" when disclosed in
written form or indicated as "Confidential" when disclosed orally ("NatWest
-------
Confidential Information"), under this Agreement, InterTrust shall hold such
- ------------------------
NatWest Confidential Information in confidence in a manner that is sufficiently
secure for the character and content of the information and under no
circumstances shall such NatWest Confidential Information be held in a manner
that is less secure than procedures used by InterTrust in connection with its
comparably important information. Except as to the disclosure by NatWest of the
Modified Technology or such disclosures inherent in the Certification Testing of
NatWest Products and/or any associated services pursuant hereto, and only to the
extent expressly specified by InterTrust Specifications, NatWest shall not
disclose or otherwise provide or make available any NatWest Confidential
Information which is directly related to InterTrust Technology and InterTrust's
business activities, without first acquiring written approval from an InterTrust
Designated Officer. InterTrust shall not use, disclose, provide or otherwise
make available any NatWest Confidential Information it has received in any form
to any person except an Agent of InterTrust. In a disclosure to Agents of
InterTrust, access to NatWest Confidential Information shall be allowed only to
Agents who have a reasonable need to know such confidential information and only
to the extent necessary to enable InterTrust to use confidential information to
exercise its rights and perform its obligations hereunder. InterTrust shall:
(a) require its Agents having access to any portion of confidential information
to strictly maintain its confidentiality; and (b) ensure that each such Agent
shall have executed with InterTrust a written non-disclosure/non-use agreement
to be provided by NatWest, and attached as part of this Exhibit G, or
InterTrust's applicable form agreement which shall effectively and comparably
bind such Agent to an agreement of the same scope as NatWest's form agreement,
and which InterTrust form agreement shall be subject to NatWest's reasonable
prior written approval. Upon such approval, the InterTrust form agreement shall
replace the relevant portion of this Exhibit G. InterTrust agrees to notify
NatWest promptly in writing of any unauthorized disclosure or other misuse or
misappropriation of NatWest Confidential Information provided to InterTrust
which may come to the attention of an InterTrust officer. InterTrust shall be
fully responsible for any breach of InterTrust's obligations under this
Agreement by any Agent to whom such NatWest Confidential Information has been
disclosed. Any obligation of InterTrust to keep NatWest information in
confidence shall expire thirty-six (36) months after
<PAGE>
CONFIDENTIAL
disclosure of such information by NatWest to InterTrust.
3. Exceptions. Notwithstanding the provisions of Sections 1 and 2 above, the
----------
confidentiality restrictions herein shall not apply to information that the
recipient thereof can demonstrate: (i) is or becomes generally known to the
public through no breach of any of these obligations, as of the date such
information becomes so known; (ii) is or shall have been independently developed
by such recipient (as demonstrated by recipient's written records) by employees
who had no access to such information; or (iii) is or shall have been rightfully
received, with no obligation of confidentiality or non-use, by such recipient
from any Person (other than as a result of another Person's breach of an
obligation of confidentiality to the discloser of such information), as of the
date such information is so received. In the case of Top Secret Information,
however, the availability to NatWest of information that is, or is substantially
equivalent to Top Secret Information based upon Section (i), (ii) and/or (iii)
above shall not, in any manner, diminish NatWest's obligations with respect to
the Top Secret Information provided by InterTrust to NatWest (and all copies or
derivatives thereof), and NatWest shall be prohibited from further disclosing to
third parties any such information in NatWest's possession based upon the
foregoing subsection (i), (ii) and/or (iii). In the event any Party is required
by law, regulation or order of a court or other authority of competent
jurisdiction to disclose the other Party's Confidential Information, such Party
shall notify such other Party as promptly as possible, and shall, upon such
other Party's request, reasonably assist in challenging or restricting the scope
of such required disclosure. Top Secret information may be disclosed only for
in camera inspection, or otherwise upon the prior written approval of an
- -- ------
InterTrust Designated Officer. In all events, a Party subject to such required
disclosure shall disclose only such information that is strictly required
pursuant thereto and no further information.
4. Return/Destruction. Each Party shall deliver to the other Party within ten
------------------
(10) days from the date of termination of this Agreement or as soon as is
reasonably practicable thereafter (except as relates to Top Secret Information)
(and provided that in no event shall such period exceed thirty (30) days) all
copies of all materials protected as Confidential Information or Top Secret
Information under this Agreement (the "Return Period"). Such returned
-------------
information shall include all copies in the possession or under the control of
such Party or their Agents; provided that with respect to non-tangible copies of
-------- ----
such information, rather than returning such non-tangible copies the receiving
Party may elect to fully and securely destroy such copies (e.g., in the case of
----
a computer file, permanently deleting such files) and provide the disclosing
Party during the Return Period with an affidavit or declaration signed by an
officer with knowledge of the facts certifying that all such non-tangible copies
have been so destroyed. Return of Confidential Information shall be by
commercially secure means as reasonably specified by the disclosing Party.
Return of Top Secret Information shall be made, at InterTrust's option as
specified by an InterTrust Designated Officer by written instruction to NatWest:
(a) by physical and secure pickup at NatWest's offices by an InterTrust officer
designated in writing by such InterTrust Designated Officer; or (b) as otherwise
may be determined by InterTrust as commercially reasonable. Such delivery shall
be during normal business hours and in each instance to the hands of an
InterTrust officer who receives a listing of the contents of such delivery
certified by an officer of NatWest and audited and countersigned by such
InterTrust officer. Within one (1) month after the termination of this
Agreement in the case of Top Secret Information and two (2) months after the
termination of this Agreement in the case of Confidential Information, each
Party will certify in writing to the other Party (as applicable hereunder) that,
to the best of its knowledge, all such materials and tangible embodiments have
been delivered to the other Party.
<PAGE>
CONFIDENTIAL
TOP SECRECY AGREEMENT
---------------------
FOR CERTAIN INTERTRUST INFORMATION
----------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of
---------
____________________ between INTERTRUST TECHNOLOGIES CORPORATION
("InterTrust"), a Delaware corporation, having a place of business at 460
----------
Oakmead Parkway, Sunnyvale, California 90486, and
___________________________________("Recipient"), an individual citizen of
---------
_______________, residing at __________, and an employee of National Westminster
Bank Plc ("NatWest"), a United Kingdom corporation with offices at 41 Lothbury,
-------
London, England.
The parties agree as follows:
1 Purpose.
-------
(a) Pursuant to a Technology Development, Marketing and License Agreement
dated August 18, 1998 between InterTrust and NatWest (the "License Agreement"),
-----------------
InterTrust may disclose to NatWest certain information including load module
related, encryption related, document manager related and/or other information
considered Top Secret and proprietary by InterTrust (hereinafter referred to as
the "InterTrust Top Secret Information") and which shall conspicuously be marked
---------------------------------
with a notice or legend with the phrase "Top Secret", as provided in the License
Agreement. In consideration for said information being provided to Recipient,
Recipient agrees to be bound by the terms of this Agreement.
(b) InterTrust wishes to protect the InterTrust Top Secret Information
from unauthorized use and disclosure. Disclosure of InterTrust Top Secret
Information to Recipient, and use and disclosure of Top Secret Information
received by Recipient shall occur only in accordance with the terms and
conditions of this Agreement.
2 Non-Disclosure and Restrictions on Use of InterTrust Extremely
--------------------------------------------------------------
Confidential.
- ------------
(a) Except as otherwise provided in an express written agreement signed
by InterTrust's Chairman, or other such person designated in writing by the
Chairman (a "Designated InterTrust Officer"), Recipient agrees that he or she
-----------------------------
shall: (i) hold in strictest confidence and not disclose any InterTrust Top
Secret Information to any person or entity either within or outside NatWest,
except to another NatWest employee who has also signed a Top Secrecy Agreement
and is authorized to receive Top Secret Information pursuant to the Licensed
Agreement, or as expressly permitted in writing by a Designated InterTrust
Officer; (ii) use InterTrust Top Secret Information solely for purposes
authorized by the License Agreement: (iii) use said Top Secret Information in no
other way whatsoever; (iv) apply the strictest feasible measures to protect the
secrecy of, and prevent unauthorized disclosure or use of, InterTrust Top Secret
information (which such measures shall not be less stringent than NatWest uses
to protect its own most highly sensitive and secret information); and (v)
produce no physical embodiments of any portion of the Top Secret Information
without the express written authorization of a Designated InterTrust Officer.
Recipient agrees to notify InterTrust promptly in writing of any unauthorized
disclosure or other misuse or misappropriation of the InterTrust Top Secret
Information which may come to Recipient's attention.
(b) Notwithstanding the foregoing, Recipient shall be entitled to
disclose Top Secret Information pursuant to a court order issued by a court of
competent jurisdiction or as otherwise required by law; provided that Recipient
-------- ----
shall provide prompt advance notice thereof to InterTrust to
<PAGE>
CONFIDENTIAL
enable InterTrust to seek a protective order or otherwise prevent such
disclosure, shall disclose no more than the minimum information required by such
court order or by law, and in all events any such disclosure shall be in camera
-- ------
only.
3 Return of Materials. Upon request of a Designated InterTrust Officer,
-------------------
Recipient shall immediately return to InterTrust by secure delivery means all
tangible embodiments of InterTrust Top Secret Information in Recipient's
possession or otherwise under Recipient's control.
4 Equitable Remedies. Recipient agrees that unauthorized disclosure or use of
------------------
InterTrust Top Secret Information will cause InterTrust substantial and
irreparable damage. Recipient further agrees that it may be impossible or
inadequate to measure and calculate InterTrust's damages from any breach of the
covenants set forth in Sections 2 and/or 3 hereof. Accordingly, Recipient
agrees that if he or she breaches or threatens breach of any of such sections,
InterTrust will have available, in addition to any other right or remedy
available, the right to obtain an injunction against him or her, from a court of
competent jurisdiction restraining such breach or threatened breach and to
specific performance of any such provision of this Agreement, and Recipient
hereby consents to the issuance of such injunction and to the ordering of
specific performance under such circumstances.
5 Governing Law: Jurisdiction and Venue. This Agreement shall be governed by
-------------------------------------
and construed under the laws of the United States of America and the
Commonwealth of Virginia, without reference to conflict of law principles. All
disputes arising out of or relating to the subject matter of this Agreement
shall be subject to the exclusive jurisdiction and venue of the United States
District Court for the Eastern District of Virginia, Alexandria Division
Virginia, or if jurisdiction does not properly lie in such court, the
Commonwealth courts in Alexandria, Virginia. The parties consent to the
personal and exclusive jurisdiction and venue of such court and waive any
argument that jurisdiction or venue in such court is improper or inconvenient.
6 Severability; Export Compliance. If any provision or portion thereof in
-------------------------------
this Agreement shall be found or be held to be illegal, invalid or unenforceable
in any jurisdiction in which this Agreement is being performed, then this
Agreement shall nevertheless be given full force and effect without said
provision or portion. Recipient certifies that no Top Secret Information, or
any portion thereof, will be exported to any country in violation of U.S. export
regulations or other regulations applicable to Recipient and such information.
7 Entire Agreement. This Agreement constitutes the entire agreement between
----------------
Recipient and InterTrust regarding the InterTrust Top Secret Information
disclosed hereunder and supersedes all oral or written agreements, either
entered prior to or contemporaneously with this Agreement, concerning the
InterTrust Top Secret Information, except the provisions of the License
Agreement, the provisions of which shall be deemed to be supplemented hereby as
of the date first written above. This Agreement may not be modified except by
written agreement dated subsequent to the date of this Agreement and signed by
both parties.
8 Successors. Subject to the limitations set forth in this Agreement, this
----------
Agreement will inure to the benefit of and be binding upon the parties, their
successors and assigns.
9 Notices. For all purposes hereof, any notice pursuant hereto shall be
-------
deemed given upon receipt by the Party at the address indicated above.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above
<PAGE>
CONFIDENTIAL
written.
INTERTRUST TECHNOLOGIES CORPORATION EMPLOYEE
--------
By:________________________ By:______________________
Name: ____________________ Name:
National Westminster Bank Plc
Title: ___________________ Title:_______________________
<PAGE>
CONFIDENTIAL
NON-DISCLOSURE AGREEMENT
------------------------
FOR INTERTRUST CONFIDENTIAL INFORMATION
---------------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of ______________
---------
between INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware
----------
corporation, having a place of business at 460 Oakmead Parkway, Sunnyvale,
California 90486, and ___________("Recipient"), an individual citizen of
---------
__________________________, residing at
___________________________________________________________, and an employee of
National Westminster Bank Plc ("NatWest"), a United Kingdom corporation with
-------
offices at 41 Lothbury, London, England.
The parties agree as follows:
1. Pursuant to a Technology Development, Marketing and License Agreement dated
August 18, 1998 between InterTrust and NatWest (the "License Agreement"),
-----------------
InterTrust may disclose to NatWest certain confidential information including
technical information embodied in and/or associated with InterTrust's InterTrust
Technology including, without limitation, software products and/or other
developments related to distributed, secure rights and/or event management,
associated designs, inventions, plans, and other information (the "Confidential
------------
Information"), all of which such information shall conspicuously be marked with
- -----------
a notice or legend with the phrase "Confidential", as provided in the License
Agreement. In consideration for such Confidential Information being provided to
Recipient, Recipient agrees to be bound by the terms of this Agreement.
Disclosure of InterTrust Confidential Information to Recipient, and use and
disclosure of Confidential Information received by Recipient, shall occur only
in accordance with the terms and conditions of this Agreement.
2. For a period of three (3) years following the disclosure of any Confidential
Information (such period to extend in perpetuity with respect to InterTrust
Technology), Recipient will retain such Confidential Information in confidence,
and will discuss such Confidential Information only with other NatWest
employees, other individuals who are under the direct control of NatWest and
work full time on NatWest premises (an "Individual Consultant"), -- all of whom
---------------------
shall have a need to know said Confidential Information and who have executed a
copy of this Agreement. Recipient shall not, without the prior written
permission of InterTrust's Chairman or such other InterTrust Officer as who has
been designated in writing by InterTrust's Chairman (a "Designated InterTrust
---------------------
Officer"), disclose Confidential Information to any person other than as set
- -------
forth immediately above. Furthermore, without express written authorization of a
NatWest officer who is empowered by NatWest to provide such an authorization,
the Recipient will not make copies, in whole or in part, of the Confidential
Information, including translating, in whole or in part, the Confidential
Information into another language and/or shipping the Confidential Information,
in whole or in part, or any direct product thereof, to any other country. The
undersigned will not use the Confidential Information in any manner that is not
authorized by NatWest and in accordance with the License Agreement and the
undersigned will use the Confidential Information solely in the exercise of
NatWest's rights as provided by the License Agreement. Under no circumstances
will any information subject to the export or import laws of any jurisdiction be
transferred pursuant to their agreement without proper prior certification and
notification of appropriate regulatory offices in applicable jurisdictions and
InterTrust.
3. The undersigned will not use Confidential Information except in fulfillment
of the undersigned employee's and/or other individual's obligations with
NatWest, and for no other purposes whatsoever. The undersigned understands and
acknowledges that the unauthorized use of Confidential Information may cause
InterTrust very substantial damage, for which damages may be impossible to
measure or inadequate to compensate. Accordingly, Recipient agrees that if he or
she breaches or threatens breach of any of such sections, InterTrust will have
available, in addition to any other right or remedy available, the right to
obtain an injunction against him or her, from a court of competent jurisdiction
restraining such breach or threatened
<PAGE>
CONFIDENTIAL
breach and to specific performance of any such provision of this Agreement, and
Recipient hereby consents to the issuance of such injunction and to the ordering
of specific performance under such circumstances.
4. The undersigned will return all physical embodiments of Confidential
Information in the undersigned's possession to InterTrust promptly upon request
by InterTrust, and in no event later than fifteen (15) days thereafter.
5. Notwithstanding any thing else in this Agreement, the confidentiality
restrictions of this Agreement shall not apply to information that: (i) is or
becomes known to the public through no breach of any of the undersigned's
obligations under this Agreement, or NatWest's or any other NatWest employee's,
obligations of confidentiality to NatWest and/or to InterTrust; (ii) was known
to Recipient prior to its disclosure by InterTrust, as evidenced through written
documentation; (iii) shall have been independently developed by the Recipient
without any reliance on or use of any InterTrust Confidential Information, as
demonstrated through written documentation; or (iv) shall have been rightfully
supplied to Recipient, with no obligation of confidentiality or non-use from a
third party without any breach of any obligation of confidentiality to
InterTrust or NatWest (as applicable) as of the date such information is so
supplied. In addition, the Recipient shall be entitled to disclose Confidential
Information pursuant to a court order issued by a court of competent
jurisdiction or as otherwise required by law; provided that the undersigned
-------- ----
shall provide prompt advance notice thereof to InterTrust to enable InterTrust
to seek a protective order or otherwise prevent such disclosure and shall
disclose no more than the minimum information required by such court order or by
law.
6. If any provision or portion thereof in this Agreement shall be found
or be held by a court of competent jurisdiction to be illegal, invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
then this Agreement shall nevertheless be given full force and effect without
said provision or portion. This Agreement may not be modified except by written
agreement dated subsequent to the date of this Agreement and signed by both
parties. This agreement shall be governed by and construed under the laws of
the United States of America and the Commonwealth of Virginia, USA, without
reference to conflicts of laws principles. All disputes arising out of or
relating to the subject matter of this Agreement shall be subject to the
exclusive jurisdiction and venue of the United States District Court for the
Eastern District of Virginia, Alexandria Division Virginia, or if jurisdiction
does not properly lie in such court, the Commonwealth courts in Alexandria,
Virginia. The parties consent to the personal and exclusive jurisdiction and
venue of such court and waive any argument that jurisdiction or venue in such
court is improper or inconvenient.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
InterTrust Technologies Corporation Employee
By: _____________________ By:_________________________
Title:___________________ Title:______________________
<PAGE>
CONFIDENTIAL
EXHIBIT H
TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT
The following are procedures and policies that InterTrust employees are
instructed to routinely follow to avoid or minimize potential infection of any
software virus: In addition, such checking is incorporated in QA testing before
any software release.
. Software code is routinely checked with commercially available third party
virus software for existence of any viruses.
. InterTrust currently has a site license to virus checking software by Network
Associates.
. InterTrust regularly receives from Network Associates updates designed to
detect the latest known software viruses.
. InterTrust's policy and practice is to keep source code under strict source
control, using Clear Case software.
. Employees are prohibited, under InterTrust's policies, from downloading or
incorporating any software from any third party (including through the
Internet) without first obtaining prior approval from an authorized technical
manager whose responsibility is to test such software for viruses before any
use by InterTrust employees.
. InterTrust regularly educates new and existing employees regarding these
procedures and policies.
<PAGE>
CONFIDENTIAL
EXHIBIT 10.13
_______________________________________________________
TECHNOLOGY DEVELOPMENT AND LICENSE
AGREEMENT
by and between
INTERTRUST TECHNOLOGIES CORPORATION
and
UNIVERSAL MUSIC GROUP, INC.
_______________________________________________________
______________________________
APRIL 13, 1999
______________________________
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
<TABLE>
<S> <C>
1. Definitions and Rules of Construction......................................... 1
1.1 Definitions.............................................................. 1
1.2 Rules and Construction................................................... 11
2. ADDITION OF AUTHORIZED VENTURES............................................... 12
2.1 Addition of Authorized Ventures.......................................... 12
2.2 Interpretation of Definitions............................................ 15
3. TECHNOLOGY ACCESS AND SUPPORT................................................. 15
3.1 Technology Access........................................................ 16
3.2 Training, Assistance and Technical Support............................... 16
3.3 Additional Assistance; Further Support................................... 18
4. UNIVERSAL LICENSES and RESTRICTIONS........................................... 18
4.1 License Grant and Option................................................. 18
4.2 License to InterTrust Trademarks......................................... 19
4.3 Limited License to Clearinghouse Functions............................... 19
4.4 No Additional Licenses................................................... 20
4.5 General Restrictions..................................................... 20
5. USE OF CONTRACTORS; UNIVERSAL SUPPORT AND ADDITIONAL COVENANTS............... 20
5.1 Use of Contractors....................................................... 20
5.2 Universal Support of InterTrust Technology............................... 21
5.3 Notices and Branding..................................................... 24
5.4 InterTrust Trademarks.................................................... 26
5.5 Universal's Use of Universal Trademarks on Universal Products............ 27
5.6 Universal Trademarks..................................................... 27
5.7 Translation of Material in Foreign Languages............................. 28
6. LICENSE FEES AND PAYMENT TERMS................................................ 28
6.1 Fees and Royalties....................................................... 28
6.2 [*]...................................................................... 29
6.3 Payment Procedure........................................................ 30
6.4 Currency................................................................. 30
6.5 Taxes.................................................................... 30
6.6 Interest................................................................. 30
6.7 Audit.................................................................... 31
7. PROPRIETARY INFORMATION AND OWNERSHIP......................................... 31
7.1 InterTrust Ownership..................................................... 31
7.2 Universal Ownership...................................................... 31
7.3 Universal License to InterTrust.......................................... 32
8. JOINT ACTIVITIES AND PARTNERING COMMITMENT.................................... 32
8.1 Joint Press Release...................................................... 32
8.2 Promotion and Marketing.................................................. 33
8.3 Technology Advisory Committee............................................ 33
8.4 Partnering Commitment.................................................... 33
9. CONFIDENTIALITY............................................................... 34
9.1 Classification of Technology and Documents For Confidentiality Purposes.. 34
9.2 InterTrust Information................................................... 34
9.3 Universal Information.................................................... 36
9.4 Exceptions............................................................... 37
9.5 Confidentiality of Agreement and Publicity............................... 37
9.6 Confidentiality of Payments, Audit and Certification Testing............. 38
9.7 NDA...................................................................... 38
10. REPRESENTATIONS AND WARRANTIES................................................ 38
10.1 Representations and Warranties of Both Parties........................... 38
10.2 Representations and Warranties of InterTrust............................. 39
10.3 Limitation............................................................... 39
10.4 Reporting Covenants...................................................... 39
11. INDEMNIFICATION AND REMEDIES.................................................. 39
11.1 Indemnification.......................................................... 39
</TABLE>
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
<TABLE>
<S> <C>
11.2 Cumulative Remedies...................................................... 41
11.3 Equitable Remedies....................................................... 41
12. EXCLUSION OF DAMAGES.......................................................... 41
13. TERM AND TERMINATION.......................................................... 42
13.1 Agreement................................................................ 42
13.2 Events of Termination.................................................... 42
13.3 Effect of Termination.................................................... 44
13.4 Survival................................................................. 45
14. MISCELLANEOUS................................................................. 45
14.1 Governing Law............................................................ 45
14.2 Venue and Jurisdiction................................................... 45
14.3 Compliance with Law and Export Controls.................................. 45
14.4 Amendment or Modification................................................ 46
14.5 No Assignment............................................................ 46
14.6 Notices.................................................................. 46
14.7 Waiver................................................................... 47
14.8 No Third Party Beneficiaries............................................. 47
14.9 No Agency................................................................ 47
14.10 Severability............................................................. 47
14.11 Counterparts; Facsimiles................................................. 47
14.12 Force Majeure............................................................ 47
14.13 Entire Agreement......................................................... 47
</TABLE>
<PAGE>
CONFIDENTIAL
EXHIBITS
A InterTrust Technology Estimated Product Deliverables
B InterTrust Specifications
C Trademarks
D Authorized Development Venture Signature Page
Authorized Clearinghouse Venture Signature Page
E Screening Procedures
F InterTrust Terms
G Product Legends and Notices
H InterTrust Mark Denoting Compliance
I Form of InterTrust Confidentiality Agreements
J Internal Procedures for Testing Viruses and Y2K Compliance
K Joint Press Release
<PAGE>
CONFIDENTIAL
TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
THIS TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT (this "Agreement") is made and
---------
entered into as of the ___ day of April, 1999 (the "Effective Date") by and
--------------
between: INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), with offices at 460
----------
Oakmead Parkway, Sunnyvale, California; and UNIVERSAL MUSIC GROUP, INC.
("Universal,"), with offices at 70 Universal City Plaza, Universal City,
---------
California (each of InterTrust and Universal a "Party" and collectively the
-----
"Parties"), with reference to the following:
-------
RECITALS
A. InterTrust has developed and is continuing to develop a general purpose
architecture and technologies for, among other things, rights protection
and event management related to electronic commerce, including securely
managing electronic information delivery, use, and usage consequences.
Universal is involved in, among other things, the creation, publishing and
distribution of music content (and technology related thereto).
B. Universal desires to obtain a license from InterTrust to use, among other
things, certain InterTrust Technology so that Universal can: (i) with
respect to music content, develop and deploy computer software player
applications for managing music content distribution; (ii) upon exercise of
an option to expand the music content to include certain other
entertainment content, develop and deploy Content Management applications
to support a variety of Universal entertainment businesses; and (iii)
perform Clearinghouse Function services in the manner set forth herein.
C. As set forth herein, the Parties mutually desire that Universal become an
InterTrust Business Partner and offer products and services within the
music field, and optionally, other content fields using InterTrust
Technology.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants contained herein, and
for other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the Parties agree to the following terms and conditions:
1. DEFINITIONS AND RULES OF CONSTRUCTION.
1.1 Definitions. In addition to the other capitalized terms defined
-----------
elsewhere in this Agreement, the following terms shall have the meanings set
forth below:
"Added InterTrust Marks" shall have the meaning set forth in Section
----------------------
5.4(a).
"[*]" shall have the meaning set forth in Section 6.1(a).
-----------------
"Agent(s)" shall have the meaning set forth in Section 9.2(a).
--------
"Application Product(s)" means any application software for use in the
----------------------
Entertainment Field, including but not limited to a music player, that: (i) is
developed by (or for) Universal hereunder using InterTrust Technology and/or
Modified Technology solely to directly Manage end-user interaction with, and
end-user administration of, Content; (ii) directly contains or incorporates
InterTrust Technology solely in the form of Authorized Application Software
and/or Modified Technology in Object Code and/or Source Code in accordance with
the licenses granted by InterTrust to Universal hereunder; (iii) is in
Compliance with InterTrust Specifications; and (iv) is not enabled to perform
any Clearinghouse Functions or to permit the performance of Clearinghouse
Functions by any Person other than an Authorized Clearinghouse Provider except
(and solely except) as directly relates to permitting a specific end-user and/or
an
Universal/InterTrust Agreement _______/_______
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
1
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Authorized Clearinghouse Provider, as appropriate, to pay bills on their behalf
and/or otherwise direct, review, and/or receive such end-user's usage history
information, or review and/or directly (at least in part) manage such end-user's
specific end-user rights and permissions, but solely as directly authorized and
set-up by, and subject to the direct control of an Authorized Clearinghouse
Provider for, and solely for both such end-user's specific use on a single
InterRights Point and for integrated cooperative operation with Clearinghouse
Functions operated at a remote data center under the direct control of an
Authorized Clearinghouse Provider for the purpose of efficiently providing: (a)
data to such data center for such Authorized Clearinghouse Provider's
Clearinghouse Function operations, and (b) certain Authorized Clearinghouse
Provider's Clearinghouse Functions to operate on such end-user's InterRights
Point on behalf of such Authorized Clearinghouse Provider and/or such specific
single end-user, all in Compliance with InterTrust Specifications.
"Assistance" shall have the meaning set forth in Section 3.2(a).
----------
"Authorized Application Software" means software representations of
-------------------------------
InterTrust Technology in Object Code and/or in Source Code (solely as such
Object Code and Source Code are identified and designated by InterTrust on
Exhibit A as defined herein), that is permitted for distribution as incorporated
in Application Products in accordance with the applicable licenses hereunder,
solely in such form as specified on Exhibit A and in Compliance with InterTrust
Specifications, as defined herein (or as otherwise designated in writing by
InterTrust to Universal or as marked by InterTrust on any tangible medium
representing InterTrust Technology provided to Universal hereunder); provided
--------
that any such designations or markings shall be made and applied by InterTrust
- ----
in a non-discriminatory and consistent manner with respect to all Business
Partners regarding similar products and/or services.
"Authorized Clearinghouse Provider(s)" means any Person(s) that is (are)
------------------------------------
expressly licensed by InterTrust to engage in specified Clearinghouse Function
activities and services in Compliance with InterTrust Specifications, but only
to the extent: (i) of the scope of such license; and (ii) that such license is
valid and in force.
"Authorized Clearinghouse Venture" shall have the meaning set forth in
--------------------------------
Section 2.1(b).
"Authorized Development Venture" shall have the meaning set forth in
------------------------------
Section 2.1(a).
"Authorized Venture" means the Development Venture and/or the
------------------
Clearinghouse Venture, as applicable in the context in which reference is made.
"Business Partner(s)" means any Person (other than a Core Partner) with
-------------------
whom InterTrust enters into an agreement or set of agreements, pursuant to which
InterTrust: (i)(a) directly provides early access to InterTrust Technology prior
to InterTrust's first commercial release of such technology to the general
public, (b) grants a general purpose license to use InterTrust Technology in
software products, applications and services within one or more specific, but
not most, fields, and (c) grants a license to perform Clearinghouse Functions
with no materially greater scope than the license fields granted in Section 4.3
hereof in one or more specific, but not most, fields; or (ii) directly provides
and grants those items of (i)(a) and (i)(b) above, or item (i)(c) above, to a
Person in the Entertainment Field (as defined as of the Effective Date without
exercise of the Option).
"California Venue" shall have the meaning set forth in Section 14.2.
----------------
"Certification Program(s)" shall have the meaning set forth in Section
------------------------
5.2(c)(i).
"Claims" shall have the meaning set forth in Section 11.1(a).
------
"Clearinghouse Function(s)" means any one or more activities including
-------------------------
providing products and/or services resulting therefrom, that use any InterTrust
Technology and/or Modified Technology, and/or use information derived at least
in part from use of such technology, in all instances in Compliance with
InterTrust Specifications to: (i) enable payment fulfillment and/or provision of
any other consideration (including service fees, product fees or any other fees
2
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CONFIDENTIAL
and/or charges) based at least in part on a Control Use; (ii) perform audit,
billing, payment fulfillment (and/or provision of any other consideration)
and/or other clearing activities involving more than one Person; and/or (iii)
compile, aggregate, use and/or provide information relating to more than one
Person's use of one or more InterTrust Technology Secure Containers and/or
Content, including Contents of such Secure Containers or any other Content
Managed at least in part using any InterTrust Technology and/or Modified
Technology. Clearinghouse Functions shall include, for example, the use of
InterTrust Technology and/or Modified Technology, and/or use of information
derived at least in part from any use of such technology, for: (a) financial
clearing; (b) providing object registry services and rights, permissions,
prices, and/or other Rules and Controls information for objects managed at least
in part through the use of InterTrust Technology; (c) electronically certifying
information used with or required by Rules and Controls, such as authenticating
identity, class membership and/or other attributes of identity context; (d)
providing information based upon auditing usage, user profiling, and/or market
surveying related to more than one Person's use of one or more InterTrust
Technology Secure Containers and/or Content; and/or (e) employing information
derived from user exposure to Content, such as advertising exposure information.
"Clearinghouse Product(s)" means (and is strictly limited to) any
------------------------
software application for use in the Entertainment Field that: (i) is developed
by (or for) Universal hereunder using InterTrust Technology and/or Modified
Technology; (ii) directly contains or incorporates InterTrust Technology and/or
Modified Technology solely in Object Code and as specified in Exhibit A, all in
accordance with the licenses hereunder; (iii) is enabled to permit the
performance of any Clearinghouse Functions; and (iv) is in Compliance with
InterTrust Specifications.
"Clearinghouse Venture" means a joint venture corporation or limited
---------------------
liability company Controlled by Universal alone or jointly with [*] and/or its
Controlled affiliates, and whose: (i) principal business purpose and activity is
to perform Clearinghouse Functions in the Entertainment Field and in accordance
with the terms and conditions of Section 2.1(b) and other applicable terms of
this Agreement; and (ii) constituent members and/or equity holders who are
Competitive Entities shall neither (a) have access to any InterTrust
Confidential Information or Top Secret Information by virtue of such Person's
involvement in the Clearinghouse Venture, nor (b) Govern, nor participate in any
manner in the Governance of, such corporation or company. Notwithstanding the
foregoing, Clearinghouse Venture shall not have [*] and/or any of its Controlled
affiliates (collectively, [*]) as a constituent member, equity holder, or
otherwise as a participant in the Clearinghouse Venture.
"Co-Branded" shall have the meaning set forth in Section 5.3(c).
----------
"Compliance," "Compl[y][ied]" or "Compliant" means fully (and without
----------- ------------- ---------
exception) consistent with and fully conforming to all applicable portions of
the InterTrust Specifications (as set forth in Section 5.2(b) hereof). A
Universal Product and/or any associated service that has not been certified to
have passed any required certification tests in the manner set forth in Section
5.2(c) hereof and/or that does not satisfy the preceding sentence hereof shall
be deemed non-Compliant with InterTrust Specifications.
"Compliant Product" shall have the meaning set forth in Section
-----------------
5.2(c)(iii).
"Commerce 1.1" means the software described in Exhibit A that
------------
incorporates InterTrust Technology, as provided by InterTrust to Universal
consistent herewith.
"Competitive Entity" means any Person who deploys and/or provides, or
------------------
positions itself as deploying and/or providing, Other Technology products and/or
associated services to other Persons. For purposes of this definition, the
development, marketing and distribution of Pre-Authorized Other Technology by
[*] and its Controlled affiliates (collectively, [*]) or [*] shall not be
construed to make [*] or [*], respectively, a Competitive Entity solely by
virtue of such development, marketing and distribution of Pre-Authorized Other
Technology.
"Compliance Update" shall have the meaning set forth in Section 3.1(b).
-----------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
3
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"Compromising Event" shall have the meaning set forth in Section
------------------
2.1(d)(ii).
"Confidential Information" shall have the meaning set forth in Section
------------------------
9.1.
"Confidentially Handled Information" shall have the meaning set forth in
----------------------------------
Section 2.1(d)(ii).
"Content(s)" means any digital information representing, for example,
----------
text, graphics, animation, video, digital linear or non-linear motion pictures,
sound and sound recordings, still images, computer programs or executable or
interpretable components, and data. Content shall include, for example, any
electronic representation of: (i) Rules and Controls; and/or (ii) information
derived from the Management of Content.
"Content Transaction" means any event or combination of events: (i)
-------------------
Managed, in whole or in part, through the use of any InterTrust Technology
and/or Modified Technology in Compliance with InterTrust Specifications; and
(ii) in connection with which consideration of any kind (including consideration
directly related to any such event or combination of events) is due and/or
payable at any time to Universal and/or any other one or more Persons, at least
in part, for any (a) initiated, consummated and/or performed sale, rental,
lease, license, vending and/or any other comparable provision of one or more
rights related to Content, and/or (b) any other use of, including any
interaction with, Content (such as access to Content, including production of
modified Content) where one or more rights are provided related to Content
interaction; provided that, the foregoing specifically does not include secure
-------- ----
transaction services that merely provide delivery and/or access to Content and
do not Manage one or more specific rights to purchase, vend, pass along, view,
read, listen, edit (including modify, cut, and/or paste), copy, play, print,
execute, re-distribute, and/or similarly directly otherwise interact with such
Content for a fee and/or the provision of any other consideration by one or more
users, user representatives, and/or proxy payers (such as advertisers paying fee
for user interaction with embedded promotional material).
"Contractor" means any Person, including consultants, who, in
----------
accordance with the provisions of Section 5.1 and other provisions hereof,
enters into an agreement with Universal to develop or assist in the development
of Universal Products for Universal (and/or provide other services directly
relating to this Agreement) and who, in that regard, has access to InterTrust
Technology and/or InterTrust Confidential Information; provided that such
-------- ----
agreement as relates to work being performed by such Contractor for Universal,
and further to any and all InterTrust Confidential Information and/or Top Secret
Information (as may be permitted under Section 9.2(b)): (i) binds such Person to
the applicable terms and conditions of this Agreement; (ii) requires such Person
to perform such work for Universal's exclusive benefit and under Universal's
direct and actual management, control, and supervision; and (iii) stipulates
that as between Contractor and Universal, Universal shall be the exclusive owner
of any work product produced by such Person for Universal (subject to
InterTrust's rights as set forth herein).
"Contractor Agreement" shall have the meaning set forth in Section 5.1.
--------------------
"Control(s)" means having, directly or indirectly, the power or right
----------
to elect the board of directors or similar managing authority and/or generally
direct Persons to, or make, or cause the making of, policies or management
decisions, whether through the ownership of voting securities, by contract or
otherwise. A "Controlled Person" means a Person under the Control of another
-----------------
Person.
"Control Use" means any use of InterTrust Technology and/or Modified
-----------
Technology, but solely in Compliance with InterTrust Specifications, to Manage
Content including initiating and/or otherwise governing any consequence
(electronic, physical or otherwise) related to the use and/or processing of
Content and/or provision of goods or services conveyed by or associated with
such Content. Control Use shall include, for example: (i) metering, auditing,
charging, and/or billing, for access to and/or any other interaction with any
Content; and/or (ii) administering permitted and/or prohibited uses of Content.
4
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"Core Partner" means any Person with whom InterTrust enters into an
------------
agreement or set of agreements, pursuant to which InterTrust: (i) directly
provides materially early access to InterTrust Technology prior to InterTrust's
first commercial release or provision of such technology to the general public;
(ii) grants a general purpose license to use InterTrust Technology in software
products, applications, and services; and (iii) grants a license to perform
Clearinghouse Functions of a broader scope than granted to Business Partners.
"Core Technology" means those components of InterTrust Technology
---------------
described by InterTrust on Exhibit A as core technologies of such InterTrust
Technology.
"CPI" means the Consumer Price Index published by the U.S. Department of
---
Labor, Bureau of Labor Statistics, or a successor agency.
"Cure Period" shall have the meaning set forth in Section 13.2(a).
-----------
"Customer" means any Person that receives or acquires a Universal Product
--------
directly or indirectly from Universal (as provided hereunder) and/or
participates in an associated service for the purpose of using Content and with
a present intention: (i) to use such product and/or associated service privately
as an end-user, including end-user activity while functioning as a provider of
Content, in any case without any modification whatsoever of such Universal
Product; (ii) to further distribute such Universal Product within the
Entertainment Field without any modification whatsoever to an end-user; or (iii)
to use such Universal Product, without any modification whatsoever, solely
within the Entertainment Field to (a) incorporate Authorized Application
Software into their products to provide an InterRights Point, or (b) develop and
incorporate software components that initiate interface and operation with an
InterRights Point provided by InterTrust Technology; each of which Authorized
Application Software, software components and InterRights Points are Compliant
with InterTrust Specifications. Customer shall not include any Person who has a
present intention to perform any activities in breach of such Person's Customer
Agreement.
"Customer Agreement" shall have the meaning set forth in Section 5.2(d).
------------------
"Default Notice" shall have the meaning set forth in Section 13.2(a).
--------------
"Development Venture" means a joint venture corporation or limited
-------------------
liability company whose: (i) principal business purpose and activity is to
engage in the development and marketing of Application Products and/or other
activities permitted under such corporation's or company's sublicense in
accordance with the provisions of Section 2.1(a); and (ii) constituent members
and/or equity holders who are a Competitive Entity shall neither (a) have access
to any InterTrust Confidential Information or Top Secret Information by virtue
of such party's involvement in the Development Venture, nor (b) Govern, nor
participate in any manner in the Governance of, the Development Venture;
provided that where [*] and [*] access to InterTrust Technology occurs solely
- -------- ----
in the context of Section 2.1(d)(iii) hereof or as otherwise agreed in
writing by Universal and a Designated InterTrust Officer (in each Party's,
-----------------------------
then the provision of discretion, the foregoing subparagraph (b) shall not apply
to [*] and [*].
"Digital Rights Management" means technology that can: (i) stipulate
-------------------------
Rules and Controls for Managing any interest(s) (as related, for example, to
rights and/or obligations) in and/or associated with use of any Content, device
and/or process, including, for example, securely Managing event(s), including
any event process(es), that is/are related to and/or otherwise associated with,
use of, attempted use of, and/or disposition of, any Content and/or digital
event; and (ii) enable the observance of (including, for example, to enforce) at
least a portion of such Rules and Controls through technical means.
"Documentation" means certain English language versions of documentation
-------------
and/or instructions as specifically designated by InterTrust that may assist
Universal in the use of InterTrust Technology (including such documentation that
InterTrust has specifically and in writing identified on Exhibit A as being
suitable for general distribution by Universal to
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
5
<PAGE>
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Customers ("Distributable Documentation")), that InterTrust may from time to
---------------------------
time provide with the InterTrust Technology as identified in Exhibit A (as such
Exhibit and such documentation may be modified in accordance herewith).
"Domain(s)" shall have the meaning set forth in Section 5.2(b)(i).
---------
"Domains of Usage" shall have the meaning set forth in Section 5.2(b)(i).
----------------
"Entertainment Field" means solely the business of publishing, selling,
-------------------
distributing and/or otherwise making available, directly or indirectly, Content
consisting solely of music, sound and sound recordings (including music), and
music video in all forms now known or that hereafter become available (so long
as such music video does not take a form reasonably considered to be a motion
picture, television show, game and/or other comparable such non-video
entertainment form), all of the foregoing for entertainment purposes to the mass
market for use generally by consumers and/or public performance venues. If, but
solely if, Universal effectively exercises the Option pursuant to Section 4.1(b)
hereof, then as of the effective date of the exercise of the Option,
Entertainment Field shall further include entertainment video of all forms (in
addition to music video), electronic games, and linear or non-linear motion
pictures and television shows, all of the foregoing for entertainment purposes
to the consumer mass market for use generally by consumers and/or public
performance venues. All such content may have additional Content (such as
textual materials) associated and co-packaged, co-delivered, and/or otherwise
directly coupled with it, so long as such additional content is directly and
substantially related to the associated entertainment Content, and so long as
such additional content is provided solely in a secondary and/or ancillary
manner. Examples of such additional content associated with music content in
such a secondary and ancillary manner include liner notes and lyrics that often
accompany CDs, and promotional and/or background material, including comparable
additional content located on websites reached by electronic links on the
Internet providing additional merchandising opportunities.
"Event of Termination" shall have the meaning set forth in Section 13.2.
--------------------
"Exhibit A" means that Exhibit A attached hereto as of the Effective
---------
Date and as such exhibit is modified from time to time by InterTrust in its
discretion; provided that all such modifications shall be provided to Universal
-------- ----
in writing and made and applied by InterTrust in a non-discriminatory and
consistent manner with respect to all Business Partners regarding similar
products and/or services.
"Govern[ed][ing][ance]" means: (i) having the power or right to Control a
---------------------
Person; and/or (ii) serving as an officer or similar management position of a
Person, or serving as a member of the board of directors of a Person and/or
serving as a member of a similar managing authority that makes, directs, or has
the authority to make or direct such Person to make, policies or management
decisions.
"Gross Commercial Value" means all sums of money and/or the monetary
----------------------
value of any other provided consideration, except for such sums reported as
intercompany revenues in the stand alone financial statements of wholly owned
and controlled Persons of Universal Music Group, Inc. that are eliminated in and
reflected in Universal Music Group Inc's consolidated financial statements
prepared in accordance with generally accepted accounting principles
consistently applied, relating directly to, including deriving directly from:
(i) any Content Transaction; and/or (ii) the performance of any Clearinghouse
Function, including any Clearinghouse Functions supporting a Content
Transaction. Without limiting the foregoing, such consideration shall include
consideration based upon Management of Content and/or information derived at
least in part therefrom, including, for example, any one or more of
consideration: (a) paid by a user as a consequence of, for example, user
exposure to, and/or any other interaction with, Content; (b) paid by a user as a
consequence of the acquisition of one or more rights related to Content; and/or
(c) paid by a proxy or subsidizing payer (such as an advertiser) based upon user
exposure to Content, where, for example but without limitation, after receipt of
information about user exposure to Content, such advertiser pays consideration
based at least in part on value resulting from, due to and/or based on such
exposure. Notwithstanding the foregoing Gross Commercial Value shall not include
any sales, use, value-added or other taxes (except withholding taxes) imposed by
any national, state, local or foreign
6
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CONFIDENTIAL
government and paid by Universal as a consequence of clearing a Content
Transaction and/or as a consequence of performing any other activities within
the Clearinghouse Functions.
"Initial Fee" shall have the meaning set forth in Section 6.1(a).
-----------
"Initial InterTrust Marks" shall have the meaning set forth in Section
------------------------
5.4(a).
"Initial Support Period" shall have the meaning set forth in Section 3.2.
----------------------
"Initial Term" shall have the meaning set forth in Section 13.1.
------------
"Intellectual Property Rights" mean all patent rights, copyrights,
----------------------------
trademarks, trade secret rights, and other proprietary rights in any
jurisdiction, and all applications and registrations therefor.
"InterRights Point(s)" means certain InterTrust Technology as set forth
--------------------
on Exhibit A hereto that is a distributed rights and event management, peer,
server, and/or client (i.e., node) that performs, at least in part, as an
----
extension to basic electronic resource (for example, process) management and/or
is integrated within such basic electronic resource management. For the
purposes of this Agreement, the InterRights Point is at least in part integrated
within or otherwise operatively coupled to software applications, operating
systems (and/or extensions thereto), and/or electronic appliances (including
personal computers and consumer electronic devices) for supporting Management of
Content.
"InterTrust Confidential Information" shall have the meaning set forth in
-----------------------------------
Section 9.2(a).
"InterTrust Designated Officer" means: (i) InterTrust's Chairman of
-----------------------------
Board or EVP Corporate Development and General Counsel, or any other InterTrust
officer designated in a written communication to Universal signed by
InterTrust's Chairman of the Board or EVP Corporate Development and General
Counsel; and (ii) solely with respect to specified areas of responsibility,
other InterTrust management personnel designated in a written communication to
Universal signed by InterTrust's Chairman of the Board or EVP Corporate
Development and General Counsel, to act on behalf of InterTrust solely within
such specified areas.
"InterTrust Parties" shall have the meaning set forth in Section 11.1(b).
------------------
"InterTrust Preferred Cure Notice" shall have the meaning set forth in
--------------------------------
Section 13.1.
"InterTrust Property" shall have the meaning set forth in Section 7.1.
-------------------
"InterTrust Specifications" mean the InterTrust Technology
-------------------------
specifications, as established and/or modified by InterTrust in its discretion
and in accordance with Section 5.2(b) hereof, that are provided to Universal.
Such InterTrust Specifications may include: (i) required design criteria for
products and/or associated services employing InterTrust Technology and/or
Modified Technology, including, for example, product and related criteria for
ensuring the architectural and functional integrity, standardization, security
capability, and interoperability of InterTrust-based technology, components,
products and/or associated services (such as, for example, criteria for
electronic environments employing InterTrust Technology for rights and/or other
event related process management, for example the operation of general purpose
InterRights Points that interoperate with InterRights Points distributed or
normally used by other Persons); (ii) procedures and requirements for
installation, initialization, backup, restore and security updates; and (iii)
required certification tests and procedures to verify Compliance of Universal
Products and related services with such InterTrust Specifications. InterTrust
Specifications developed as of the Effective Date are included as Exhibit B
hereto.
"InterTrust Technology" means all or any portion of the technology
---------------------
developed by and/or for InterTrust that is provided, delivered or otherwise made
available by InterTrust to Universal as set forth in this Agreement and as
described in Exhibit A (as defined herein). Such technology directly relates to
distributed rights management systems and methods,
7
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peer-to-peer trusted event management and/or distributed electronic commerce
administration systems and methods, and includes the Commerce 1.1 product, any
Updates, and New Releases, and such other products referenced in Exhibit A
hereto.
"InterTrust Technology Products" shall have the meaning set forth in
------------------------------
Section 3.1(c).
"InterTrust Terms" shall have the meaning set forth in Section 5.2(d).
----------------
"InterTrust Trademarks" mean InterTrust's names, logos and other marks as
---------------------
listed on Exhibit C hereto, as such Exhibit may be modified by InterTrust from
time to time pursuant to Section 5.4 hereof.
"IP Dispute(s)" shall have the meaning set forth in Section 14.1.
-------------
"IPO" shall have the meaning set forth in Section 9.5.
---
"Joint Press Releases" shall have the meaning set forth in Section 8.1.
--------------------
"Legacy License" shall have the meaning set forth in Section 13.3(b).
--------------
"Legacy Products" shall have the meaning set forth in Section 13.3(b).
---------------
"Licensed Rights" mean all of InterTrust's worldwide Intellectual
---------------
Property Rights (other than trademark rights) in and to the InterTrust
Technology and/or the Modified Technology that InterTrust (during the term of
this Agreement) owns or otherwise has the right to grant licenses of the scope
granted herein (through acquisition or otherwise) without the agreement of, or
requirement for payment (or the granting of other consideration) to, any Person.
"[*] Project" means a pilot trial coordinated by [*], [*] and [*] that
-------
primarily uses [*] technology (currently known as [*]) to electronically
distribute music, with respect to which Universal may participate.
"Major Material Defect" shall have the meaning set forth in Section
---------------------
13.2(d).
"Manage(d)(ing)" or "Management" means any form of governance,
-------------- ----------
regulation, management and/or control, in any way and by any means, of, as
applicable in the context in which reference is made herein: (i) rights,
processes and/or obligations related to or associated with use of (including
access to, transport of, and/or storage of ) Content, including Content related
disposition and/or consequences thereof; and/or (ii) events or event processes
related or associated in any manner with the use of (including access to),
attempted use of, and/or disposition of, Content and/or events, including any
consequences thereof.
"Material Defect(s)" means defect(s) or bug(s) in the InterTrust
------------------
Technology as delivered by InterTrust to Universal and used by Universal,
wherein such defect(s) or bug(s) in such delivered technology cause the
InterTrust Technology to fail to perform: (i) materially in conformance with the
capabilities, characteristics, and characteristic combinations ascribed to
InterTrust Technology products in Exhibit A; and (ii) in a commercially
reasonable manner in accordance with reasonable software industry practices
relating to such capabilities. Material Defect shall not include any defects or
bugs introduced as a result of any modification of (or to) the InterTrust
Technology by Universal or any Person not a Party hereto, unless such
modification was expressly required by InterTrust Specifications and the
implementation of such modification has been expressly approved in writing by an
InterTrust Designated Officer, and then such modification shall be considered a
Material Defect solely to the extent strictly needed to satisfy such InterTrust
Specification requirement.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
8
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"Modified Technology" means all modifications of, and enhancements and/or
-------------------
additions to, the InterTrust technology, created by (or for, as provided
hereunder) Universal, including without limitation all derivative works of the
InterTrust Technology (or other Modified Technology) as such term is defined in
the U.S. Copyright Act (17 U.S.C. (S) 101 et seq., as amended), but only if such
modifications, enhancements, additions and/or derivative works are permitted
under Sections 4.1(a)(i), 4.1(a)(ii), and elsewhere in this Agreement.
"New Release" means any future release of InterTrust software products
-----------
that is a successor product of the Commerce 1.1 product line provided to
Universal hereunder and: (i) (a) that is generally designated by InterTrust as a
numerical change to the digit(s) to the left of the decimal point for the
version number thereof (e.g., Commerce X.0), or (b) which release is designed to
---
provide new significant and/or materially improved or enhanced functionality
over the predecessor release and that is reasonably considered a successor
product of Commerce 1.1's general purpose platform for distributed peer-to-peer
digital rights management in accordance with reasonable U.S. software industry
practices (for example, Windows 98 is a successor to Windows 95); and (ii) that
InterTrust may develop, or have developed for it, from time to time and make
generally available to its Business Partners.
"New Specification" shall have the meaning set forth in Section
-----------------
5.2(b)(ii).
"New Version" shall have the meaning set forth in Section 5.2(b)(ii).
-----------
"Non-Partnering Venture Event" shall have the meaning set forth in
----------------------------
Section 2.1(d).
"Notices" shall have the meaning set forth in Section 5.3(a).
-------
"Object Code" means the computer executable binary code derived from
-----------
compiled Source Code for execution on a computing system.
"Option" shall have the meaning set forth in Section 4.1(b).
------
"Other Technology" means any Digital Rights Management and/or Secure
----------------
Container technology other than InterTrust technology.
"Other Special Advanced Technology" means any Special Advanced Technology
---------------------------------
other than InterTrust Technology.
"Party Disputes" shall have the meaning set forth in Section 14.1.
--------------
"Person" means any individual, corporation, limited liability company,
------
partnership, firm, joint venture, association, joint-stock company, trust,
unincorporated organization, government body or agency, or other entity.
"Pre-Authorized Other Technology" means, as an exception to Other
-------------------------------
Technology, that specific copy protection technology currently: (i) designed,
developed and employed or specified and planned for deployment by [*] for use in
connection with its [*] digital music initiative; and/or (ii) designed and
developed by [*] for protecting transmission of digital information to DVD
appliances, and currently marketed and known as, the [*], [*], or for copy
protection on pre-recorded DVD audio disks; provided that under no circumstances
-------- ----
shall Pre-Authorized Other Technology be construed to include in any manner any
Other Special Advanced Technology or any technology or activities other than
that expressly set forth above including with respect to materially different
products and/or associated services.
"Preferred Technology" means taking the following actions: (i) marketing
--------------------
and representing to third Persons that InterTrust Technology is Universal's
primary, leading, principal and prominent foundation technology for Digital
Rights Management within the Entertainment Field; (ii) using InterTrust
Technology, at least in part, on the majority of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
9
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CONFIDENTIAL
aggregated instances for Management of Content owned, exclusively licensed to,
or controlled by Universal; and (iii) displaying InterTrust Technology in (or
on, as applicable) any Universal Products and/or associated services as the
default and primary technology for Digital Rights Management, where such display
is substantially more prominent than any display of any Other Technology that is
expressly permitted under this Agreement.
"Rules and Controls" means any electronic information that directs,
------------------
enables,and specifies, describes, and/or provides contributing means for
performing or not-performing, permitted and/or required operations related to
Content, including, for example, restricting or otherwise governing the
performance of operations, such as, for example, Management of such Content.
"Screening Procedures" shall have the meaning set forth in Section
--------------------
2.1(d)(ii).
"Secure Container(s)" means electronic container(s) or electronic data
-------------------
arrangements that: (i) use one or more cryptographic or other obfuscation
techniques to provide protection for at least a portion of the Content thereof;
and (ii) supports the use of Rules and Controls to enable the Management of
Content.
"Source Code" means a human-readable, non-executable set of
-----------
instructions for a computer program, from which it may be possible, together
with related source materials and documentation, to discern logic, algorithms,
internal structure, and operating feature design characteristics of such
computer program.
"Special Advanced Technologies" mean: (i) designs or models involving a
-----------------------------
collection of distributed, and fully or partially interoperable, tamper
resistant electronic nodes in software, software/hardware, or hardware form,
such nodes supporting separate interoperable peers and/or those portions of
operating system nodes comprising at minimum comparable capabilities of such
peers, and where such nodes: (a) have the ability to securely communicate; (b)
employ Rules and Controls to Manage Content related events; and (c) will, in
some or all instances, support client and/or server capabilities; and/or (ii)
designs or models involving a collection of plural, distributed tamper resistant
clients and/or nodes where such clients and/or nodes employ Rules and Controls
to Manage Content related events and where (a) such Rules and Controls, in
conjunction with one or more such tamper resistant clients and/or nodes, can
help ensure persistent protection of Content subsequent to receipt of such
Content at a client and/or node, and (b) some or all attributes of such
persistent protection is set through the specification of one or more Rules and
Controls by one or more Persons providing such Content and/or having other
stakeholder (including any trust service, or societal organization or body)
interests, and (c) differing persistent protection Rules and Controls
arrangements can be employed to define, at least in part, differing Management
schemes for different Content deliverables. Notwithstanding the foregoing, in
no event shall the Pre-Authorized Other Technology be construed to be Special
Advanced Technologies.
"Standard Support" shall have the meaning set forth in Section 3.2(a).
----------------
"Status Meetings" shall have the meaning set forth in Section 3.2(c).
---------------
"Support" shall have the meaning set forth in Section 3.2.
-------
"Support Fee" shall have the meaning set forth in Section 6.1(c).
-----------
"Technology Advisory Committee" shall have the meaning set forth in
-----------------------------
Section 8.3.
"Term" shall have the meaning set forth in Section 13.1.
----
"Top Secret Disclosure Procedures" shall have the meaning set forth in
--------------------------------
Section 9.4.
"Top Secret Information" shall have the meaning set forth in Section
----------------------
9.2(b).
10
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CONFIDENTIAL
"Trademark Guidelines" shall have the meaning set forth in Section
--------------------
5.4(a).
"Universal Confidential Information" shall have the meaning set forth in
----------------------------------
Section 9.3.
"Universal Executive(s)" means any Universal officer or executive and/or
----------------------
other Universal senior management personnel who have direct operational
responsibility for Universal's activities hereunder and/or for Universal's
participation in an Authorized Venture.
"Universal Product(s)" means an Application Product and/or Clearinghouse
--------------------
Product that is developed by (or, consistent with this Agreement, for) Universal
hereunder and branded and marketed, as applicable, in accordance with the
provisions of Section 5.3 and other provisions hereof. Universal Products shall
include the Universal Reader Module and Universal Content Packager.
"Universal Reader Module" means an Application Product having as its
-----------------------
principal function the end-user use of Content secured by InterTrust Technology,
including enabling an end-user to interact with such Content under the
Management of an InterRights Point and subject to associated Rules and Controls.
"Universal Content Packager" means an Application Product having as its
--------------------------
principal functions the support for: (i) specification of Rules and Controls for
Content; (ii) description of further associations between certain Rules and
Controls and certain Content; and/or (iii) interaction with an InterRights Point
to enable the placement of Content and/or Rules and Controls into Secure
Containers of the InterTrust Technology such that a Universal Reader Module can
Manage user interaction with such Content in a manner consistent with applicable
Rules and Control (all of the foregoing in a manner compliant with such product
being as an Application Product, including Compliance with InterTrust
Specifications).
"Universal/InterTrust Trial" shall have the meaning set forth in Section
--------------------------
8.4(b).
"Universal Parties" shall have the meaning set forth in Section 11.1(a).
-----------------
"Universal Property" shall have the meaning set forth in Section 7.2.
------------------
"Universal Trademarks" means the names, logos and trademarks owned or
--------------------
licensed for use exclusively by Universal, that may be used solely as stipulated
hereunder in connection with Universal Products and/or associated services
permitted hereunder. Such Universal Trademarks may be modified by Universal
from time to time consistent with Section 5.6 hereof.
"Updates" means any future release of InterTrust software products that
-------
is a supplement to Commerce 1.1 and/or a New Release provided to Universal
hereunder that: (i)(a) is designed primarily to correct and/or to mitigate known
Material Defects in, and/or to provide minor improvements to, such Commerce 1.1
or New Release software, or (b) is generally designated by InterTrust as a
numerical change to the digit(s) right of the decimal point for the version
number thereof (e.g. Commerce 1.XX); and (ii) InterTrust may develop, or has
developed for it, from time to time and make generally available to Business
Partners.
"Venture Agent(s)" shall have the meaning set forth in Section
----------------
2.1(d)(ii).
"Venture Executive(s)" means: (i) any officer or executive of the
--------------------
Authorized Venture; and/or (ii) other personnel who have direct operational
responsibility for the activities of such Authorized Venture.
"Virginia Venue" shall have the meaning set forth in Section 14.2.
--------------
1.2 Rules and Construction. As used in this Agreement, all terms used
----------------------
in the singular shall be deemed to include the plural, and vice versa, as
context requires. The words hereof, herein, herewith and hereunder refer to this
------ ------ -------- ---------
Agreement
11
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CONFIDENTIAL
as a whole, including any Exhibits hereto, as the same may from time to time be
amended or supplemented, and not to any subdivision contained in this Agreement.
When used herein, including shall mean including, without limitation; consistent
--------- -----------------------------
shall mean fully consistent; discretion shall mean sole discretion; compliant
---------------- ---------- --------------- ---------
or compliance shall mean fully compliant or full compliance; in accordance
---------- ---------------------------------- -------------
shall mean in full accordance; and for example shall mean for example without
------------------ ----------- -------------------
limitation. Descriptive headings are inserted for convenience only, and shall
- ----------
not be utilized in interpreting this Agreement. This Agreement has been
negotiated by the Parties and their respective counsel and shall be fairly
interpreted in accordance with its terms and without any strict construction in
favor of or against either Party. Any and all rights exercisable, actions
permitted to be taken, or decisions to be made, by a Party under this Agreement
may be made by such Party in its sole discretion, except to the extent (and
solely to the extent) expressly provided herein to the contrary.
2. ADDITION OF AUTHORIZED Ventures.
2.1 Addition of Authorized Ventures.
-------------------------------
(a) Grant of Sublicense to Development Venture. Subject to
------------------------------------------
the terms and conditions hereof, Universal may create a Development Venture and,
in connection therewith, sublicense to the Development Venture those (and solely
those) rights, licenses and benefits -- and the Development Venture agrees to
assume the specified obligations -- expressly set forth in (i) Section 4.1(a)
(except that such rights, licenses, and benefits shall exclude all rights,
licenses, and benefits of Universal obtained pursuant to the proper exercise of
the Option under 4.1(b)), and (ii) Sections 4.2, 1, 3 (except that InterTrust
shall have no obligation whatsoever to provide any technology and/or services
beyond those set forth in such Section 3 including any duplicative deliverables
and/or perform, and/or have performed, any duplicative efforts due to such
sublicense and/or delegation in Section 2.1(b)), 4.4, 4.5, 5, 6.1(b), 6.3
(provided that amounts shall be due within thirty (30) days of the end of a
calendar quarter if Universal is not providing the primary accounting services
to and on behalf of the Development Venture), 6.4, 6.5, 6.6, 6.7, 7, 8.1, 8.2,
8.4, 9 (except Sections 9.5 and 9.7), 10.3, 10.4, 11, 12, 13 and 14 hereof (all
of the immediately foregoing listed sections collectively, the "Development Pass
----------------
Through Provisions"). Such sublicense shall exist and persist solely where all
- ------------------
of the provisions of this Section 2.1 have been, and continue during the
duration of such sublicense to be, complied with. Universal's right to grant
such sublicense shall expire if not made to the Development Venture in
accordance herewith within [*] months from the Effective Date. In the event
Universal during such [*] month period desires to grant a sublicense to the
Development Venture, Universal shall first provide to InterTrust: (1) written
notice setting forth information as required by this Agreement with respect to
such Development Venture and certifying that such Person qualifies as the
Development Venture; and (2) a signature page in the form attached hereto as
Exhibit D-1 that has been executed by the Development Venture. Upon written
acknowledgment by an InterTrust Designated Officer of receipt and acceptance of
such executed signature pages (which acknowledgment and acceptance shall not be
unreasonably withheld or delayed unless the proposed Development Venture does
not meet the requirements set forth herein) and the execution of a written
sublicense compliant with the provisions hereof, a copy of which (redacted to
omit economic terms) shall be delivered to InterTrust: (A) such Venture shall
automatically and with no further action become the "Authorized
Development Venture"; (B) such Authorized Development Venture shall be
- -------------------
entitled to certain benefits set forth in Section 3 to the extent Universal
directs InterTrust to provide such benefits to such Authorized Development
Venture, provided that InterTrust shall have no obligation whatsoever to
-------- ----
provide any technology and/or services beyond those set forth in Section 3
including any duplicative deliverables and/or perform (and/or have performed)
duplicative efforts due to such sublicense and/or delegation in Section 2.1(b);
(C) Universal and the Authorized Development Venture shall be jointly and
severally liable and responsible to InterTrust for the obligations of the
Authorized Development Venture under the provisions specified in this Section
2.1(a) and such sublicense agreement; and (D) Universal shall not thereafter
retain any right to grant any other sublicense under this Agreement (except as
set forth in Section 4.1(a)(iv) concerning transfer of Application Products).
The Authorized Development Venture shall have no right whatsoever to sublicense
its rights granted hereunder except (and solely except) as expressly set forth
in Section 4.1(a)(iv) concerning transfer of Application Products.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
12
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(b) Delegation to Clearinghouse Venture. Subject to the
-----------------------------------
terms and conditions hereof, Universal may create a Clearinghouse Venture and,
in connection therewith, delegate during the Term to the Clearinghouse Venture
those (and solely those) rights, licenses and benefits -- and the Clearinghouse
Venture also assumes the obligations -- expressly set forth in: (i) Section 4.3
(except that such rights, licenses, and benefits shall exclude any rights of
Universal obtained pursuant to the proper exercise of the Option under 4.1(b))
and provided that all activities involving Clearinghouse Functions shall be
under a single brand in accordance herewith, to service solely information
derived from use of InterRights Points in connection with Universal Products
that are Application Products or the Development Venture-branded equivalent
thereof regarding as provided for herein functional purpose (all of the
foregoing to be treated as a "Universal Product" for purposes of this Agreement)
developed and marketed by the Development Venture using InterTrust Digital
Rights Management technology; and (ii) Sections 1, 3 (except that InterTrust
shall have no obligation whatsoever to provide any technology and/or services
beyond those set forth in Section 3 including any duplicative deliverables
and/or perform (and/or have performed) duplicative efforts due to such
delegation and/or sublicense in Section 2.1(a)), 4.2, 4.3, 4.4, 4.5, 5, 6.1(b),
6.2, 6.3 (provided that amounts shall be due within [*] days of the end of a
calendar quarter if Universal is not providing the primary accounting services
to and on behalf of the Clearinghouse Venture), 6.4, 6.5, 6.6, 6.7, 7, 8.1, 8.2,
8.4, 9 (except Sections 9.5 and 9.7), 10.3, 10.4, 11, 12, 13, and 14 hereof (all
of the immediately foregoing listed sections collectively, the
"Clearinghouse Pass Through Provisions" which together with the Development Pass
-------------------------------------
Through Provisions shall be referred to as the "Pass Through Provisions");
-----------------------
provided that such delegation shall exist and persist solely where all of the
- -------- ----
provisions of this Section 2.1 have been, and continue during the duration of
such delegation to be, complied with. In the event Universal desires to delegate
such rights and licenses to the Clearinghouse Venture, Universal shall first
provide to InterTrust: (1) written notice setting forth information as required
by this Agreement with respect to such Clearinghouse Venture and certifying that
such Person qualifies as the Clearinghouse Venture; and (2) a signature page in
the form attached hereto as Exhibit D-2 that has been executed by the
Clearinghouse Venture. Upon written acknowledgment by an InterTrust Designated
Officer of receipt and acceptance of such executed signature pages (which
acknowledgment and acceptance shall not be unreasonably withheld or delayed
unless the proposed Clearinghouse Venture does not meet the requirements set
forth herein) and the execution of a written delegation agreement compliant with
the provisions hereof, a copy of which (redacted to omit economic terms) shall
be delivered to InterTrust: (A) such Clearinghouse Venture shall automatically
and with no further action become the "Authorized Clearinghouse Venture"; (B)
--------------------------------
such Authorized Clearinghouse Venture shall be entitled to certain benefits set
benefits set forth in Section 3.1 to the extent Universal directs InterTrust to
provide such benefits to such Authorized Clearinghouse Venture except that
InterTrust shall have no obligation whatsoever to provide any technology and/or
services beyond those set forth in Section 3 including any duplicative
deliverables and/or perform (and/or have performed) duplicative efforts due to
such delegation and/or sublicense in Section 2.1(b); (C) Universal and the
Authorized Clearinghouse Venture shall be jointly and severally liable and
responsible to InterTrust for the obligations of the Authorized Clearinghouse
Venture under the provisions specified in this Section 2.1(b) and such
delegation agreement; and (D) Universal shall not thereafter retain any right to
exercise the rights and licenses under Section 4.3 nor to further grant or
delegate any rights thereunder (except as set forth in Section 4.1(a)(iv)
concerning transfer of Application Products). The Authorized Clearinghouse
Venture shall have no right whatsoever to sublicense or delegate its rights
hereunder.
(c) Further Procedures and Covenants. All clearing activities
--------------------------------
(i.e., any and all activities that would constitute Clearinghouse Functions if
----
performed using InterTrust Technology, Modified Technology and/or information
derived at least in part from use of such technology) that are performed by the
Authorized Clearinghouse Venture, for example at any data center or other
Authorized Clearinghouse Venture data handling location, or at any Customer
installation, shall be in Compliance with InterTrust Specifications and shall
use exclusively information received in or contained in Secure Containers of the
InterTrust Technology and/or Modified Technology, unless otherwise agreed in
writing by the Parties (in each Party's discretion). Such information received
in or contained in Secure Containers of InterTrust Technology and/or Modified
Technology shall be based on or derived at least materially in part from Content
Managed by InterTrust Technology and/or Modified Technology. InterTrust
Technology shall serve as each Authorized Venture's primary foundation Digital
Rights Management technology for such Content Management; provided that Other
-------- ----
Technology may be supported at Universal's discretion in a manner solely
consistent with the provisions hereof, but such support of Other Technology
shall not be construed in any way
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
13
<PAGE>
CONFIDENTIAL
whatsoever to be licensed under this Agreement for any use - in any manner
whatsoever and notwithstanding any interpretation of any other provisions
hereof -- with any InterTrust Technology or Licensed Rights received by
Universal under this Agreement. Each of the sublicense agreement set forth in
Section 2.1(a) and the delegation agreement set forth in Section 2.1(b) shall
provide that it is to and for InterTrust's benefit, and (i) in the event
Universal fails to promptly enforce the rights sublicensed hereunder, then such
rights may be enforced by InterTrust at its discretion as a third party
beneficiary (provided that notice is first provided to Universal and Universal
does not fully enforce such rights expeditiously thereafter), and/or (ii) with
respect to InterTrust's Intellectual Property Rights and/or rights in InterTrust
Technology or to payment of royalties or other fees for performance of
Clearinghouse Functions and/or royalties or other fees for distribution of
venture products and/or associated services using InterTrust Technology as would
be due InterTrust hereunder if performed or distributed (as applicable) by
Universal, such rights as specified in subparagraph "ii" above may be enforced
by InterTrust at its discretion, directly and/or as a third party beneficiary,
irrespective of any Universal enforcement actions. Universal shall promptly, in
a commercially reasonable time frame, from time to time and/or upon InterTrust's
written request provide an updated list of all officers, directors and equity
holders of each Authorized Venture and any changes thereto.
(d) Competitive Entity Restrictions.
-------------------------------
(i) General. If at any time any Competitive Entity participates
-------
in the Governance of an Authorized Venture or gains access to any InterTrust
Confidential Information and/or Top Secret Information directly or indirectly
from the Authorized Venture (a "Non-Partnering Venture Event"), then (1) such
----------------------------
Authorized Venture and/or Universal, upon any Venture Executive or Universal
Executive (as the case may be) becoming aware of such Non-Partnering Venture
Event, shall promptly provide written notice thereof to InterTrust and (B) such
Competitive Entity shall within thirty (30) days cease participation in the
Governance of any Authorized Venture and immediately cease to have access to
InterTrust Confidential Information. Under no circumstances shall a Competitive
Entity have any access to any Top Secret Information, and if any such access
occurs, the provisions of the immediately preceding sentence shall apply with
respect thereto. Within thirty (30) days after initiating such Non-Partnering
Venture Event, either: (x) such Competitive Entity and such Authorized Venture,
as of and when such Authorized Venture becomes aware of such Non-Partnering
Venture Event, shall have taken such action as necessary to fully divest such
Competitive Entity of all its equity interest and other securities in such
Authorized Venture, or (y) such Competitive Entity shall have ceased such Non-
Partnering Venture Event. If such Competitive Entity has neither completed the
divestiture of its equity interest in such Authorized Venture nor ceased such
Non-Partnering Venture Event within the thirty (30) day period, then InterTrust
shall have the right to immediately terminate the sublicense or the delegation
(as the case may be) and/or this Agreement. If such Non-Partnering Venture Event
is a material, intentional act participated in by a Competitive Entity with the
knowledge of an officer or executive of such Competitive Entity, then the
Authorized Venture shall take such actions as necessary to divest such
Competitive Entity of all its equity interest and other securities convertible
into equity interest in the Authorized Venture. To the extent a Competitive
Entity has ceased to participate in the Governance of the Authorized Venture and
to have access to InterTrust Confidential Information, shall have otherwise
returned in an appropriate, secure manner any such Confidential Information and
makes no use of such Confidential Information, and such intentional Non-
Partnering Venture Event by such Competitive Entity has not materially harmed
InterTrust, such Competitive Entity may otherwise participate in the Authorized
Venture in a manner consistent with this Agreement so long as such Non-
Partnering Venture Event did not occur with the knowledge of any Universal
Executive or Authorized Venture Executive and did not involve a Competitive
Entity gaining access to Top Secret Information. In no instance shall any such
divestiture or cessation of a Non-Partnering Event be deemed to limit in any
manner any other right InterTrust has under this Agreement, or at law or in
equity.
(ii) Management of Technology. In order to avoid potential
------------------------
conflicts or controversy with respect to development by personnel,
subcontractors, consultants, or other agents of Universal and/or any Authorized
Venture (each of the foregoing, "Venture Agent(s)") of any Other Technology,
----------------
Universal and each Authorized Venture shall establish and maintain at all times
during which any rights hereunder are in effect, the "Screening Procedures" set
--------------------
14
<PAGE>
CONFIDENTIAL
forth on Exhibit E hereto to prevent: (i) exposure of any member or personnel of
Universal or any Authorized Venture, as applicable, who has access and/or
exposure to InterTrust Confidential Information and/or Top Secret Information
from performing any work directly related to any Other Technology; and/or (ii)
exposure of any member or personnel of Universal or any Authorized Venture who
is performing, has performed on behalf of any Authorized Venture, or will,
solely as set forth herein, subsequently perform any technical work or analysis
directly relating to Other Technology from having access or exposure to, or
performing any work with respect to, InterTrust Confidential Information and/or
Top Secret Information (collectively, and along with information of the
Authorized Venture as provided in Exhibit E, "Confidentially Handled
----------------------
Information"). Such Screening Procedures shall be in place while licenses and
- -----------
the sublicense and/or delegation are in effect and for a period of twelve (12)
months thereafter. In no event shall more than an aggregate of twelve (12)
employees of Universal and the Authorized Ventures at any given point in time be
authorized to, and/or receive or otherwise gain access to, InterTrust Top Secret
Information, and then subject to the provision of Section 9.2(b) hereof. No
Venture Agent shall remove, or permit its personnel to remove, any InterTrust
Confidential Information and/or Top Secret Information from premises controlled
by the Authorized Venture, except as may be expressly provided for herein and/or
in InterTrust Specifications. If any Universal Executives or any Venture
Executives become aware of any breach of this Section 2.1(d) (a "Compromising
------------
Event"), such Person shall, as soon as reasonably possible under the
- -----
circumstances taking into account the nature and severity of the Compromising
Event, take such steps as appropriate considering the circumstances to cease
such Compromising Event and to prevent the reoccurrence of Compromising Events.
Such appropriate steps under the circumstances shall, at a minimum, include: (i)
promptly informing InterTrust in writing of the occurrence of and circumstances
surrounding a Compromising Event; (ii) investigating the nature and extent of
the contamination caused by the Compromising Event (and report such findings
promptly to InterTrust in writing); and (iii) taking effective measures to
remedy all material effects of such Compromising Event. In the event Universal
and any Authorized Venture fail to take the actions set forth in this Section
2.1(d), InterTrust shall be entitled to immediately terminate such sublicense or
delegation (as the case may be) and/or this Agreement, and Section 11.3 shall
apply, in addition to any other remedies available to InterTrust under this
Agreement, at law or in equity; provided that any such termination shall not
-------- ----
occur for Universal's or the Authorized Venture's failure, as applicable, to
comply with the provisions of the immediately preceding subparagraph (iii) where
Universal and such Authorized Venture, as applicable, used good faith efforts to
comply with the provisions of such subparagraph (iii) including following
InterTrust's reasonable instructions concerning remedying the effects of such
Compromising Event.
(iii) Exception for ADK Sublicense. To the extent that Universal
----------------------------
grants a sublicense to the Development Venture under the Development Pass
Through Provisions solely with respect to InterTrust Technology consisting of
those portions of the Commerce 1.1 Application Developer's Kit (as described in
Exhibit A) as provided by InterTrust (the "ADK Technology") and provides such
--------------
Development Venture no access to any InterTrust Technology other than the ADK
Technology, then: (1) the provisions of Sections 2.1(d)(i) and 2.1(d)(ii) shall
not restrict [*] or [*] from having access to InterTrust Confidential
Information contained in such ADK Technology; (2) such access and participation
shall not be construed to be a Non-Partnering Venture Event; (3) the Screening
Procedures set forth in Section 2.1(d)(ii) shall not apply to members and
personnel of the Development Venture who have access solely to the ADK
Technology and no other InterTrust Technology; and (4) the provisions of Section
9 shall not restrict the use by employees of [*] or [*] who are Agents of the
Development Venture of information that is learned by such Agents from exposure
to the ADK Technology pursuant hereto and retained in the memory of such Agents,
provided that all other confidentiality obligations (including non-disclosure
obligations) under Section 9 shall continue to apply in accordance herewith. The
provisions of this Section 2.1(d)(iii) shall be effective for eighteen (18)
months from the Effective Date, and thereafter for so long as [*] and [*] are
not Competitive Entities.
2.2 Interpretation of Definitions. In the event any of the Pass Through
-----------------------------
Provisions reference Universal or reference defined terms which refer to
Universal, such Pass Through Provisions and defined terms shall apply to the
appropriate Authorized Venture mutatis mutandis.
3. TECHNOLOGY ACCESS AND SUPPORT.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
15
<PAGE>
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3.1 Technology Access.
-----------------
(a) Initial Availability. Subject to the terms and conditions of
--------------------
this Agreement, InterTrust shall make available, deliver, or otherwise provide
to Universal the Commerce 1.1 software and related Documentation (as the
foregoing are set forth on Exhibit A hereto) promptly following the execution of
this Agreement and receipt of the amount specified in Section 6.1(a) hereof.
(b) Additional Technology. In addition to the foregoing, and
---------------------
subject to the terms and conditions of this Agreement, InterTrust shall make
available to Universal for the first [*] years of the Term, all Updates and New
Releases. Further, subject to the terms and conditions hereof, from the [*] year
of the Term through the remainder of the Term or pursuant to Section 13.3(b),
InterTrust shall make available to Universal: (i) such portions of Updates
and/or New Releases, as applicable, made available by InterTrust after the end
of the [*] year, if any, as are necessary for Universal Products and associated
services to remain in Compliance with then existing InterTrust Specifications
and/or subsequent New Specifications that replace existing InterTrust
Specifications, but only to the extent necessary for Universal Products and/or
associated services then in Compliance with such InterTrust Specifications to
avoid becoming non-Compliant with such subsequent New Specifications (the
"Compliance Update(s)"); and (ii) those Updates and/or New Releases, as
--------------------
applicable, made available by InterTrust after the end of the [*] year of the
Term to the end of the Term, if any, in addition to Compliance Updates, that are
strictly applicable to digital distribution of music Content (as may be expanded
pursuant to Universal's exercise of the Option under Section 4.1(b) hereof),
provided that the Updates and New Releases of this subparagraph (ii) shall be
- -------------
made available to Universal if, and only if, Universal has at all times during
the period between eighteen (18) months from the Effective Date and the end of
such [*] year treated InterTrust Technology as its Preferred Technology in a
consistently uninterrupted manner in all material respects, and for so long, and
only for so long, as Universal continues after such [*] year to treat InterTrust
Technology as its Preferred Technology in a consistently uninterrupted manner in
all material respects. Notwithstanding the foregoing, a material breach of
subparagraph 3.1(b)(ii) above committed both without the intent of a Universal
Executive to willfully breach this Agreement and without reckless disregard in
such connection shall be subject to the Cure Period and procedures of Section
13.2(a) (so long as such Cure Period shall not exceed [*] days); provided that
-------------
any such breaches of such subparagraphs are infrequent and cured in accordance
with the provisions of Section 13.2(a) and this Section 3.1(b). Universal shall
be entitled to obtain all of the foregoing Updates and New Releases [*]. The
Parties acknowledge and agree that nothing in this Section 3.1 shall be
construed to require InterTrust to make any InterTrust Technology or InterTrust
Technology Products available to Universal that has been developed by InterTrust
as a custom or specialized effort for, or jointly with, one or more current or
prospective Business Partners and/or other licensees of InterTrust.
(c) Acknowledgments. In accordance with the above, it is
---------------
acknowledged and agreed that the InterTrust Technology may employ or may operate
with one or more technologies that may not be proprietary to InterTrust but are
included within the Licensed Rights as specified on Exhibit A (the "InterTrust
----------
Technology Products") and as may be modified from time to time by InterTrust in
- -------------------
its discretion, provided that such modifications shall be made and applied by
-------------
InterTrust in a nondiscriminatory and consistent manner with respect to all
Business Partners regarding similar products and/or services and provided to
Universal in writing. It is further acknowledged that the Sample Applications
and Components (as each are defined in Exhibit A) that may be provided to
Universal as part of InterTrust Technology would be provided, and are intended,
solely to aid Universal in its development efforts should Universal decide in
the exercise of its discretion to use them. Provision of such applications and
components is not intended to, and in no manner whatsoever should be construed
to, constitute a warranty or representation of fitness for a particular purpose
or of any other kind.
3.2 Training, Assistance and Technical Support. Subject to the terms and
------------------------------------------
conditions of this Agreement, InterTrust agrees to provide to Universal the
training, assistance and technical support set forth in this Section 3.2
("Support") for a period of twenty-four (24) months from the Effective Date (the
-------
"Initial Support Period").
----------------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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(a) Training and Assistance. In order to assist Universal in its
-----------------------
use of InterTrust Technology, InterTrust shall provide to Universal, subject to
applicable terms and conditions of this Agreement, reasonable training, support
and consulting assistance as follows ("Assistance").
----------
(i) During the first twelve (12) months of the Initial
Support Period, InterTrust shall make InterTrust employee-equivalent time
available to Universal to provide up to a limit of five hundred (500) hours of
Assistance (to be measured based upon actual hours expended and reasonably
documented), subject to reasonable agreement between the Parties on scheduling,
availability of resources and related matters. Universal shall have secure
access to InterTrust's applicable relevant automated technical support website.
Consistent with the provisions hereof, Assistance shall be rendered by
appropriately reasonably skilled and qualified InterTrust personnel and include
(1) lecture and hands-on training (at InterTrust's site unless agreed otherwise
by the Parties) for up to four (4) Universal personnel, and (2) access via e-
mail and telephone during normal business hours to InterTrust support personnel,
consistent with InterTrust standard policies and consistent with applicable U.S.
software industry practices and the foregoing. Universal shall be responsible
for all expenses incurred by Universal's personnel in traveling to and attending
any training and support meetings (such meetings are normally held at an
InterTrust facility). In the event InterTrust's personnel travel from
InterTrust's facilities to provide Assistance (upon InterTrust's and Universal's
mutual agreement made in writing (including by email)), Universal shall
reimburse InterTrust for all actual, documented and reasonable travel, lodging,
and out-of-pocket expenses incurred by InterTrust's personnel. To the extent
InterTrust provides Assistance as set forth in this Section 3.2 for another
Person in the Entertainment Field, InterTrust shall also make such Assistance
available to Universal, at Universal's option, [*].
(ii) If, after the first twelve (12) months of the Initial
Support Period, InterTrust offers standard support package(s) to Business
Partners, at least one of which support packages is substantially commensurate
with the support provided by InterTrust to Universal during the first twelve
(12) months of the Initial Support Period and has economic terms [*] (as
adjusted upward for inflation to reflect the CPI, as set forth in Section 6.3,
or as adjusted upward to maintain support fees reasonably commensurate with
U.S. software industry standard support fees in comparable circumstances
("Standard Support"), Universal shall choose among such Standard Support
----------------
packages as may be available, and, thereafter, all Support and other
obligations as set forth in Section 3.2 hereof shall be exclusively governed
by the terms and conditions of the support package so chosen by Universal. If
Standard Support is not available as of the end of such first twelve (12)
months of the Initial Support Period, during the remainder of the Initial
Support Period Universal shall receive the same support it received during the
first twelve (12) months of the Initial Support Period on terms [*], which
terms shall be commercially reasonable consistent with U.S. software industry
practices.
(b) Correction of Material Defects. In addition to InterTrust's
------------------------------
own ongoing quality assurance efforts, if Universal brings a Material Defect to
InterTrust's attention in a writing describing the alleged defect in reasonable
detail, InterTrust shall use commercially reasonably prompt efforts in
accordance with applicable U.S. software industry practices, at InterTrust's
expense, to reasonably correct such Material Defect. If a Material Defect cannot
be reasonably so corrected InterTrust will use commercially reasonable prompt
efforts in accordance with applicable U.S. software industry practices to [*] or
[*] InterTrust Technology to mitigate such Material Defect while maintaining [*]
of InterTrust Technology as incorporated in Commerce 1.1, or as may be in
material, commercial (e.g. non-pilot and non-beta) distribution in Universal
----
Products. Universal agrees that it has the responsibility to reasonably test its
implementations employing InterTrust Technology and/or Modified Technology in
accordance with reasonable practices for consumer electronic commerce payment
and security products and services, and further in Compliance with InterTrust
Specifications. Notwithstanding the foregoing, InterTrust shall have no
obligation to: (i) correct or mitigate any Material Defect if such correction or
mitigation is commercially unreasonable for InterTrust, for example, it causes
InterTrust undue commercial burden; (ii) communicate on the subject of Material
Defect with any Person other than Universal and/or an Authorized Venture, as
applicable; (iii) correct any Material Defect
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
17
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that has been properly identified by Universal but that cannot be reproduced by
InterTrust using commercially reasonable diligence including reasonable
assistance by Universal in identifying and replicating such defect; or (iv)
perform any services relating to correction of Material Defect at any site other
than an InterTrust facility, except as may be agreed by InterTrust in the
exercise of its discretion.
(c) Status Meeting. To assist the Parties in coordinating and
--------------
evaluating their efforts relating to InterTrust Technology and their mutual
technical and business objectives, during the Term the Parties shall meet from
time to time to discuss, among other things: (i) InterTrust's progress in
development of the InterTrust Technology; (ii) implementation of such technology
by Universal; (iii) feedback concerning Assistance provided to Universal and
product development and marketing progress by Universal; and (iv) other issues
that reasonably concern the Parties' mutual technical and business objectives
(the "Status Meetings"). Such Status Meetings shall take place at InterTrust's
---------------
offices not less frequently than once a calendar quarter during the first twelve
(12) months of the Term.
(d) Dedicated Personnel. InterTrust and Universal will each
-------------------
appoint a relationship manager, to coordinate its activities pursuant to this
Section 3.2, and a technical project manager to coordinate and provide the
Assistance set forth in Sections 3.2(a) and 3.2(b).
3.3 Additional Assistance; Further Support. During the Initial Support
--------------------------------------
Period, additional Assistance may be made available by InterTrust to Universal
beyond the Assistance allocated under Section 3.2(a). To the extent Universal
requests, and InterTrust decides (in the exercise of its discretion) to provide
such additional Assistance, Universal shall pay to InterTrust such fees as
InterTrust customarily charges its preferred customers for such assistance under
like circumstances. Following the Initial Support Period all support or
assistance thereafter provided shall be according to InterTrust's standard
support policies and packages; provided that support at least commensurate with
-------------
the provisions of Section 3.2(b) shall be available to Universal so long as
Universal has materially, commercially employed InterTrust Technology. To the
extent InterTrust reasonably requires Business Partners who have license rights
and obligations comparable to Universal to maintain at least a certain minimum
level of support with respect to its licensed activities, Universal shall
maintain at least such minimum level of support. Such support shall be available
to Universal on reasonable terms consistent with industry practices, and [*].
4. UNIVERSAL LICENSES and RESTRICTIONS.
4.1 License Grant and Option.
------------------------
(a) License Grant. Subject to the terms and conditions of this
-------------
Agreement, InterTrust grants to Universal, during the Term of this Agreement a
limited, nonexclusive, nontransferable, nonsublicensable (except as set forth in
Section 2.1 or Section 4.1(a)(iv)), worldwide right and license under the
Licensed Rights, for use solely within the Entertainment Field, to:
(i) use and reproduce the InterTrust Technology solely for
the purpose of: (1) designing and developing Universal Products that are in
Compliance with the InterTrust Specifications; and (2) exercising the rights
granted under Sections 4.1(a)(ii), 4.1(a)(iii) and 4.1(a)(iv) hereof;
(ii) modify the InterTrust Technology, except the Core
Technology, to: (1) create Modified Technology solely for the purpose of
enabling incorporation of InterTrust Technology into Universal Products that are
in Compliance with InterTrust Specifications; and (2) incorporate such Modified
Technology into Universal Products in Compliance with InterTrust Specifications;
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(iii) use Universal Products, and/or provide services
associated therewith solely within the Entertainment Field, and solely for so
long as such Universal Product and/or associated services are Compliant with
InterTrust Specifications and are otherwise used in accordance with this
Agreement; and
(iv) distribute, offer for sale, sell, license for use,
import and/or otherwise transfer: (1) Universal Products solely if they are
Application Products, and (2) Distributable Documentation; both solely (A)
within the Entertainment Field to Universal's Customers pursuant to a Customer
Agreement in accordance with Section 5.2(d) and otherwise (B) in accordance with
this Agreement.
(b) Option. InterTrust grants to Universal the option, as set forth
------
in this Section 4.1(b), to expand the scope of the Entertainment Field to
include Content consisting of all forms of video, electronic games, television
shows, and linear and non-linear motion pictures (the "Option"). The right to
------
exercise the Option shall expire as of [*] months after the Effective Date,
unless prior to the expiration of such [*] month period InterTrust has received
from Universal written notice of Universal's decision to exercise the Option
(pursuant to the notice procedures of Section 14.6 hereof). To the extent that
Universal is then in compliance with this Agreement, and when Universal has
satisfied the foregoing option exercise procedures, InterTrust shall then
promptly notify Universal that such notice has been received and that the
Entertainment Field shall thereafter be so expanded under the applicable
licenses set forth in this Agreement.
4.2 License to InterTrust Trademarks. Subject to the terms and conditions
--------------------------------
of this Agreement, InterTrust grants to Universal during the Term of this
Agreement a limited, nonexclusive, nontransferable, nonsublicensable (except as
set forth in Sections 2.1 and 4.1(a)(iv)) worldwide license to use and display
the InterTrust Trademarks solely: (i) on applicable Universal Products and
associated services, for example in Compliance with InterTrust Specifications to
indicate that such products and services are in Compliance with InterTrust
Specifications; (ii) on related Distributable Documentation, marketing and sales
materials to identify that InterTrust Technology is being utilized by Universal;
and (iii) as set forth herein or otherwise reasonably stipulated in writing by
an InterTrust Designated Officer. InterTrust shall have the right to approve
uses and/or ranges of use in connection with InterTrust Trademarks, including
any use thereof on Universal Products, in connection with associated services
provided by Universal relating to products and applications employing InterTrust
Technology and/or Modified Technology, and in related documentation, marketing
and sales materials. Once approved, Universal may use such InterTrust Trademarks
in accordance herewith until InterTrust notifies Universal in writing to the
contrary and in accordance with the provisions hereof. In the event of any such
disapproval or modification of a provision previously approved in accordance
herewith, Universal shall conform its use of such InterTrust Trademarks
according to the terms and conditions of Section 5.4(d) hereof.
4.3 Limited License to Clearinghouse Functions. Subject to the terms and
------------------------------------------
conditions of this Agreement, InterTrust grants to Universal during the Term of
this Agreement a limited, nonexclusive, nontransferable, nonsublicensable
(except and solely except as expressly set forth in Section 2.1), worldwide
right and license under the Licensed Rights, solely within the Entertainment
Field, to: (i) perform Clearinghouse Functions solely under Universal Trademarks
as specified herein and in Compliance with InterTrust Specifications; and (ii)
have Authorized Clearinghouse Providers perform any and all tasks and functions
permitted by this Agreement solely to service InterRights Points provided to a
Customer by Universal in accordance with Section 4.1(a)(iv), to the extent such
Authorized Clearinghouse Provider has been granted by InterTrust rights of the
scope necessary to perform the immediately foregoing activities and solely for
use with Content Managed by InterTrust Technology licensed hereunder. Such
Clearinghouse Functions as set forth in subparagraph (i) of this Section 4.3 may
be performed to service InterRights Points that have been provided by (a) a
Universal Product, and solely in connection with such Universal Product, or (b)
a Person having a valid written license from InterTrust allowing such Person to
permit Authorized Clearinghouse Providers to service InterRights Points provided
by such Person. Subject to the terms and conditions hereof, Universal shall be
an Authorized Clearinghouse Provider within the scope of rights set forth within
this Section 4.3, and shall also be entitled to engage one or more Authorized
Clearinghouse Providers to perform Clearinghouse Functions with respect to
Universal Products solely in accordance with this Agreement and as permitted
under each such Authorized Clearinghouse Provider's license with
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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InterTrust. InterTrust shall be compensated for any Clearinghouse Functions
performed by any such Authorized Clearinghouse Provider relating to Universal
Products in accordance with the terms of the license agreement between
InterTrust and such Authorized Clearinghouse Provider. Mitsubishi Corporation,
National Westminster Bank Plc. and Reciprocal, Inc. (formerly Rights Exchange,
Inc.) are currently designated as Authorized Clearinghouse Providers (subject to
continuing satisfaction by such providers of the terms and conditions of their
respective license agreements with InterTrust).
4.4 No Additional Licenses. Universal understands and acknowledges that
----------------------
InterTrust is licensing to Universal only certain limited rights to use
InterTrust Technology as described herein. Thus, notwithstanding the generality
of any other provision herein, Universal acknowledges and agrees that the
licenses granted under Sections 4.1, 4.2 and 4.3, and the license set forth in
Section 13.3(b), are the only licenses granted to Universal, and that no other
licenses whatsoever have been or shall be granted, expressly, or by implication
or estoppel, now or in the future unless, and solely unless, a written agreement
between the Parties (in the exercise of each Party's discretion) is executed in
a manner compliant with Section 14.4 hereof. Any and all rights possessed by
InterTrust and not expressly granted to Universal under this Agreement are
reserved and retained by InterTrust.
4.5 General Restrictions. Universal covenants that it shall not: (i)
--------------------
during the Term of this Agreement and during the period in which any rights
under Section 13.3(b) hereof are in effect (a) use or exploit any InterTrust
Technology or perform any Clearinghouse Functions outside of the Entertainment
Field or in any manner not Compliant with InterTrust Specifications, and/or (b)
reverse engineer any InterTrust Technology that has been supplied to Universal
in Object Code form only, or modify any portion of the Core Technology and/or
participate in "clean rooming" the Core Technology; (ii) after the Term, and/or
the grant of the sublicense of Section 2.1, as applicable as to the rights of
Section 2.1, use InterTrust Technology or exploit the Licensed Rights in any
unlicensed manner whatsoever; or (iii) after the rights of Section13.3(b) of
this Agreement have ceased in accordance with the provisions hereof, use or
exploit InterTrust Technology (in whole or in part) for any purpose whatsoever.
Any use by Universal of any portion of the InterTrust Technology and/or Modified
Technology outside the scope of the licenses granted by InterTrust hereunder
shall constitute a material breach of this Agreement.
5. USE OF CONTRACTORS; UNIVERSAL SUPPORT AND
ADDITIONAL COVENANTS.
5.1 Use of Contractors. Subject to the terms and conditions of this
------------------
Agreement, Universal may use Contractors in connection with the rights granted
herein; provided that: (i) InterTrust approves use of such Contractor in writing
-------------
(such approval not to be unreasonably withheld or delayed; reasonable grounds
for withholding such approval including such Contractor having a reasonably
known or anticipated material conflict of interest with InterTrust's business,
such as, for example, commercially or publicly using, deploying, or
participating in the commercial or public use or deployment of any Other
Technology; (ii) Universal shall be jointly and severally liable for actions of
its Contractors; and (iii) each such Contractor has executed and InterTrust has
received a copy of a form of contractor agreement protective of (a) InterTrust's
Technology and InterTrust's associated Intellectual Property Rights and (b) Top
Secret Information in accordance with the provisions hereof and/or InterTrust
Confidential Information, (all of the foregoing (as may be made available by
InterTrust under this Agreement)); and wherein the Parties, each in the exercise
of its reasonable discretion, agree to the form of such contractor agreement and
wherein such contractor agreement shall specify any physical location, security
provisions, as well as adherence to InterTrust Specifications and other
parameters necessary for secure handling of such information (such form to be
attached as an Exhibit hereto upon such approval by the Parties) (the
"Contractor Agreement"). All such use of Contractors by Universal shall be
--------------------
limited to that use of Contractors reasonably needed by Universal to effectively
and directly exercise its rights hereunder, and Universal acknowledges and
agrees that InterTrust may refuse to approve the use of Contractors (or
contractor sites) where InterTrust in good faith believes that the number of
Contractors and/or sites having access to InterTrust Technology and/or
InterTrust Confidential Information poses a material risk (1) to the security or
trustedness of InterTrust Technology-based deployments, or (2) concerning
disclosure or misuse of InterTrust Confidential Information; provided that use
-------------
of up to five (5) such Contractors shall not, in and of itself, be considered to
20
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exceed an acceptable number of Contractors hereunder. It is understood that
approval of Contractors with respect to access to Top Secret Information will be
more stringent given the nature of such information.
5.2 Universal Support of InterTrust Technology.
------------------------------------------
(a) Universal Use of InterTrust Technology. In accordance with the
--------------------------------------
licenses granted to Universal and the other terms and conditions hereof,
Universal agrees to use its commercially reasonable best efforts to develop,
produce, and generally distribute in a commercially meaningful manner one or
more Universal Products within [*] months following the Effective Date. Such
time period shall be extended by any period in which there exists a Material
Defect in the InterTrust Technology that reasonably impedes Universal's
development efforts in a material manner, but only for the period from the date
that Universal documents such defect as provided in Section 3.2(b) hereof to the
date InterTrust has reasonably corrected or mitigated such defect as provided in
Section 3.2(b) and only to the extent that such Material Defect has reasonably
impeded such development efforts in a material manner.
(b) Compliance with InterTrust Specifications.
-----------------------------------------
(i) Products and Services. Universal shall not for any
---------------------
reason commence the distribution, sale or other transfer of any specific
Universal Product, or perform any associated service relating to InterTrust
Technology or otherwise exercise any license right hereunder that is subject to
any InterTrust Specifications, unless such products and/or services, and/or
other exercise of any such license right, as applicable, (1) are in Compliance
with InterTrust Specifications existing on the date of Universal's commencement
of such distribution, sale, or other transfer of such specific Universal
Product, performance of any associated services, and/or other exercises of such
license rights hereunder, and (2) are otherwise performed in full compliance
with this Agreement, with no exceptions whatsoever. After such commencement of
such distribution, sale, or other transfer of a specific Universal Product,
performance of an associated service or other exercise of any such licensed
right hereunder, Universal shall continue to comply with InterTrust
Specifications, as such InterTrust Specifications may be changed or modified
from time to time in the manner and within the time frames set forth in Section
5.2(b)(ii). Such InterTrust Specifications shall be established and applied in a
nondiscriminatory and consistent manner with respect to all Persons regarding
similar products and/or services. Further, in making decisions regarding
InterTrust Specifications, InterTrust shall not [*] (defined below) so as to
result in unreasonable and different commercial burdens for [*] (defined below)
versus another [*], unless considerations of security, interoperability,
performance, commercial progress, functionality enhancement of InterTrust
Technology, or similar material considerations indicate that such distinctions
reasonably merit such formulation; provided that InterTrust has considered the
-------- ----
[*] to InterTrust Specifications, including,for example, the [*] and Compliant
products and/or associated services, wherein (A) any such modifications should
be, in InterTrust's [*], reasonable in the [*] of each of the following [*]
(each a "[*]", and, collectively, "[*]": [*], [*] (e.g., [*]), [*] (including
[*] and/or confidential information and high value [*] information), and (B)
such [*] takes into consideration the [*] and [*] of such differing [*] as they
operate, and/or will or can operate, together as an overall secure,
interoperable, distributed electronic commerce and communications environment.
(ii) Compliance with New Specifications. InterTrust may,
----------------------------------
from time to time in its discretion, change or enhance InterTrust
Specifications, or modify InterTrust Specifications, for example, to accommodate
changes in InterTrust Technology, and/or any related InterTrust product
development, for, without limitation, such purposes as, improving architectural
integrity, functional capability, standardization, security capability,
efficiency, and/or interoperability of technology, components, products and/or
services that use InterTrust Technology (a "New Specification"). InterTrust
-----------------
shall use commercially reasonable efforts to maintain compatibility between a
New Specification and the then-preceding Specification, unless considerations of
security, interoperability, performance, business development and/or
functionality enhancement indicate that such compatibility is not commercially
appropriate.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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To the extent InterTrust releases a New Specification that applies to any
portion of a Universal Product and/or service associated with InterTrust
Technology then being performed or distributed by Universal (as applicable),
Universal shall bring any further such products delivered to Customers, and/or
any such services (as applicable), into Compliance with such New Specification
as of the earliest to occur of: (1) the next version, release, or production
cycle of such Universal Product and/or such associated service (the "Next
----
Version"), as earlier applicable, but only to the extent that Universal receives
- -------
notice of such New Specification within a reasonably sufficient time prior to
the release of such Next Version to accommodate new aspects of such New
Specification; and (2) [*] months. InterTrust and Universal further agree that
Universal shall, within [*] months after receiving a released copy of such New
Specification, implement such new aspects of such New Specification for all
applicable services supporting and/or employing Universal Products and/or
associated services provided to Customers not meeting such New Specification
that were shipped to Customers prior to Universal fulfilling the requirement of
the immediately preceding sentence. Within the context of Technology Advisory
Committee meetings and/or communications with members of such Technology
Advisory Committee in accordance with the provisions of Section 8.3, InterTrust
will, as appropriate from time to time, inform Universal that a change in
InterTrust Specifications is pending in advance of InterTrust's release of a New
Specification; provided that: (i) InterTrust has made a final determination that
-------- ----
it will issue such a New Specification materially prior to providing such New
Specification to Universal, and, in InterTrust's exercise of good faith, the
modifications contained within such New Specification reasonably, commercially
merit an early disclosure; and (ii) in InterTrust's exercise of good faith the
content of such New Specification and the date upon which such New Specification
will be released are sufficiently certain such that, on balance, the benefit of
Core Partners and Business Partners knowing about such New Specification
materially outweighs the potential detriment to Core Partners and Business
Partners of the announcement of a pending New Specification prior to its
completion and release. The sole and exclusive remedy for any such lack of
notification by InterTrust shall be an extension of the [*] month period
specified in subsection (2) immediately above by one (1) month. Notwithstanding
the foregoing, should serious technical interoperability and/or security
requirements commercially necessitate more prompt actions, Universal and
InterTrust will confer and agree upon the most prompt, practical schedule
feasible (considering the circumstances of such serious technical
interoperability and/or security requirement) to ensure Compliance with the New
Specification for all Universal Products and any associated services relating to
InterTrust Technology. Under such conditions, Universal shall take whatever
commercially appropriate steps are reasonable and required under the
circumstances to eliminate (as may be necessary and feasible) a continuation of
such interoperability and/or security problems. As may be reasonable,
appropriate, and applicable in light of Universal Products and consistent with
the purposes of the New Specification, in response to a reasonable request by
Universal, the Parties will examine in good faith (and may mutually agree in
each Party's discretion) as to whether, and if whether, under what
circumstances, when, and, to what extent, any time period set forth in the
preceding portions of this Section 5.2(b)(ii) should be altered to accomodate
reasonable commercial factors that may result from the deployment of silicon
embedded hardware versions of InterTrust Technology as may be built directly
into consumer devices and/or computers.
(c) Compliance Testing.
------------------
(i) Purpose; Basic Parameters. Universal acknowledges that:
-------------------------
(1) in support of InterTrust Technology, InterTrust will implement one or more
certification programs designed to ensure that licensed products and/or
associated services (including Universal Products) use InterTrust Technology
and/or Modified Technology in Compliance with InterTrust Specifications and that
Universal Products and associated services are in compliance with this Agreement
(the "Certification Program(s)"); and (2) such Certification Program(s) is (are)
-----------------------
critical to maintaining the reliability, interoperability, and tamper resistance
of products and associated services employing InterTrust Technology and/or
Modified Technology, and in maintaining public confidence in the integrity of
InterTrust Technology and/or brands as the resource for interoperable electronic
commerce. In establishing its Certification Programs, as may be modified from
time to time, InterTrust shall use reasonable efforts to establish policies
supporting efficient certification of products and services based upon
InterTrust Technology, subject, in InterTrust's discretion, to achieving the
aforementioned goals of certification. As appropriate under the circumstances as
determined by InterTrust in its discretion, such alternatives may, under certain
circumstances, include: (A) the pre-certification of certain components of
InterTrust Technology for use in Universal Products; (B) providing test programs
or suites amenable for self certification or preliminary assessment of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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certifiability; and/or (C) otherwise supporting certification policies and/or
technology that reasonably enhance certification efficiency and Compliance with
InterTrust Specifications. Any Certification Program(s) established by or for
InterTrust for Business Partners, and all requirements with respect thereto,
shall be applied in a nondiscriminatory and consistent manner with respect to
Universal and all other Persons providing similar products and/or services.
(ii) Certification Requirements. Consistent with the
--------------------------
foregoing, in connection with any Certification Program InterTrust may, in
InterTrust's discretion, require the use of a suite of test software provided by
InterTrust (or an InterTrust delegate) for use by Universal to test and verify
that Universal Products (and/or associated services) are in Compliance with
InterTrust Specifications prior to the first distribution, sale, or other
transfer to, or use by, a Customer of such Universal Products (or associated
services, as applicable) or prior to further testing, as may be appropriate, by
InterTrust or a certifying authority authorized by InterTrust. If use of a test
suite is unsuitable, unavailable, impractical and/or inappropriate under the
circumstances as determined by InterTrust, InterTrust may require submission of
samples to InterTrust, or in InterTrust's discretion an InterTrust delegate, of
such Universal Products (and/or associated services) and associated programs,
parameter data, and other information (in Object Code form unless Source Code is
reasonably necessary) that may be technically material to Compliance with
InterTrust Specifications, so as to allow InterTrust (or an InterTrust delegate)
to perform confidential testing. To the extent that the foregoing procedures do
not, or can not reasonably be anticipated to, provide sufficient information to
verify Compliance, such Certification Program(s) may also require the provision
to InterTrust (or an InterTrust delegate) of full and detailed specifications
and documentation related to Universal's use of InterTrust Technology and
Modified Technology for Universal Products (and/or associated services) being
tested, and any additional Universal Products and materials reasonably required
for certification assessment purposes only, and are reasonably considered
material to Certification Testing. Universal shall comply with any Certification
Program established by InterTrust in accordance with the provisions of this
Section 5.2(c)(ii) and specifically acknowledges that such programs are
important in establishing a secure, trusted environment. All specifications and
documentation provided by Universal in connection with any such Certification
Program(s) shall be authenticated in writing by a Universal Executive, and no
Universal Product and/or associated service shall be made commercially available
hereunder unless it has become a Compliant Product (defined below).
(iii) InterTrust Certification Response. In connection with
---------------------------------
any submissions made to InterTrust or an InterTrust delegate in connection with
a Certification Program, InterTrust (or an InterTrust delegate) will respond in
a reasonably prompt manner following receipt of submitted products and access
to, or receipt of technology supporting, such service, unless commercially
reasonable factors necessitate prolonging such response, and in which case
written notification of such factors shall be provided to Universal. It is
acknowledged that InterTrust's (or an InterTrust delegate's) response time will
depend on factors such as ease of responsibly testing the product and quality of
implementation, including usability, reliability and clearness of code and
relevant documentation. Such response shall be in the form of: (1) a written
approval that the product or service is certified (a "Compliant Product"), such
-----------------
Universal Product and/or associated service relating to InterTrust Technology
not being Compliant until such certification has been granted; or (2) if not
approved, a detailed summary description of all identified factors causing it
not to be Compliant and, where known by InterTrust (or such delegate, as
applicable) and feasible, suggested solutions.
(iv) Costs. To defray costs associated with the performance
-----
and administration of the Certification Program, in connection with the
certification of any product or service Universal shall be charged a reasonable
fee not to exceed U.S. software industry norms for similar testing activities as
may be available (and, if conducted or managed by: (1) InterTrust, Universal
will be entitled such fee [*] or (2) an InterTrust delegate, Universal will pay
such fee that is charged by such InterTrust delegate to Universal and/or
InterTrust). A good faith estimate of such fee shall be provided to Universal by
InterTrust or an InterTrust delegate, as applicable, as soon as reasonably
practical upon Universal's submission of required samples or documentation for
testing, and such fee shall be paid by Universal at such time as is reasonably
required by InterTrust or such InterTrust delegate.
(d) Customer Agreements.
-------------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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(i) Basic Requirements. Universal shall distribute
------------------
Universal Products and/or perform associated services only to, and/or for,
Customers for use solely within the Entertainment Field, and only after
Universal shall have first notified and required such Person to become bound by
a form of customer agreement for such Universal Product (and/or associated
service) and appropriate for such Customer (such as whether such Customer is an
end-user or intends to further distribute the Universal Product and/or
associated services, without modification whatsoever) (the "Customer
--------
Agreement(s)"), each such form of Customer Agreement having been provided by
- ------------
Universal, and such Customer having been bound under the terms and conditions of
such Customer Agreement. Such Customer Agreement forms shall have: (1) terms
relating to InterTrust Technology and InterTrust's rights and interests
consistent with and reflective of the terms of this Agreement; and (2) terms
consistent with, reflective of, and based upon the items set forth in Exhibit F
hereto (collectively, the "InterTrust Terms"), such InterTrust Terms shall be
-----------------
signed by an InterTrust Designated Officer and appended to Exhibit F, and
InterTrust may from time to time supplement or amend Exhibit F as provided in
this Section. The approved InterTrust Terms shall be used by Universal in all
Customer Agreements unless and until: (A) Universal requests a modification of
the InterTrust Terms and InterTrust consents in its discretion in writing to
such modification; or (B) InterTrust reasonably requires that Universal alter
the InterTrust Terms where such alteration is needed to protect InterTrust's
rights under this Agreement or to protect, or to prevent or mitigate any
impairment of any part of, its Intellectual Property Rights, for example in view
of court decisions and/or applicable regulations and/or newly available
information. Such alteration to the InterTrust Terms shall be signed by an
InterTrust Designated Officer and attached to Exhibit F in accordance herewith.
Universal agrees and acknowledges that Universal's compliance with this Section
5.2(d) shall constitute a condition precedent to the licenses granted under
Sections 4.1, 4.2, and 4.3 hereof with respect to any such Customer's use of
Universal Products and/or associated services. Universal agrees that to the
extent any of the InterTrust Terms are, or are likely to be, deemed
unenforceable or otherwise ineffective in any relevant jurisdiction, Universal
shall, upon any Universal Executive or General Counsel becoming aware of such
likelihood of being unenforceable or otherwise ineffective, including, for
example notification thereof by InterTrust, substitute new terms provided by
InterTrust concerning such unenforceable or ineffective provision in such
Customer Agreement forms and existing Customer Agreements, and take other
commercially reasonable actions as specified by InterTrust related to such
unenforceability concerns, including reforming, modifying and/or canceling any
such Customer Agreement if reasonably necessary to provide InterTrust with the
legally enforceable protection contemplated hereunder. Universal agrees and
acknowledges that Universal's performance of its obligations hereunder is
necessary for InterTrust to adequately protect its Intellectual Property Rights.
(ii) InterTrust Review of Customer Agreements. Unless an
----------------------------------------
InterTrust Designated Officer, in InterTrust's discretion, expressly and in
writing agrees otherwise, under no circumstances: (1) shall any such review by
InterTrust of InterTrust Terms and/or any term of any proposed Customer
Agreement subsequently be interpreted and/or used as comments of InterTrust to
be relied upon by Universal in any manner whatsoever regarding compliance of
such InterTrust Terms and/or such Customer Agreement with the provisions of this
Agreement; and/or (2) shall any such review or lack of review by InterTrust be
deemed (A) binding on InterTrust or constitute any waiver of any rights
whatsoever hereunder by InterTrust and/or (B) an admission or waiver of any kind
whatsoever under any circumstances whatsoever, except that Universal may rely on
InterTrust Terms attached to Exhibit F hereto as amended from time to time in
accordance herewith.
5.3 Notices and Branding.
--------------------
(a) Product Notices. Universal shall, in accordance with the
---------------
instructions and/or exemplars and samples attached hereto and/or provided from
time to time by InterTrust to Business Partners, place Notices (as hereinafter
defined) in a readable form and in a conspicuous place on all Universal
Products, associated services and Distributable Documentation: (i) in the "about
box;" (ii) on manuals and other documentation (including the Distributable
Documentation) for, and packaging for physical media containing, Universal
Products and/or associated services, and (iii) at such other equivalent
location(s) as may be reasonably specified by InterTrust and agreed to by
Universal, such agreement not to be unreasonably withheld, such as on certain
screens generated by or including the Universal Products
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and/or any associated services, and at such other locations as appropriate to
protect InterTrust's Intellectual Property Rights. For purposes of this
Agreement, the term "Notices" shall consist of: (i) Intellectual Property
-------
Rights, warranty, and disclaimer notices; and (ii) field of use notices
consistent with the terms of this Agreement. A representative version of such
Notices as of the Effective Date is attached hereto as Exhibit G; and such
Notices may be modified from time to time by InterTrust provided that (1)
written notice thereof is provided to Universal, (2) such modifications are
established and applied in a non-discriminatory and consistent manner with
respect to all Business Partners regarding similar products and/or services, and
(3) the provisions of Section 5.3(e) hereof shall apply thereto. Universal shall
not remove, alter, cover, obfuscate and/or otherwise deface any InterTrust
Trademarks or Notices on any InterTrust Technology or associated documentation,
marketing and advertising materials therefor, and shall not knowingly permit
(including by having a provision in Customer Agreements prohibiting) the
removal, alteration, covering, obfuscation or otherwise defacing of any
InterTrust Trademarks or Notices on any InterTrust Technology or associated
documentation, marketing and advertising materials therefor. Compliance with
subsections (i) and (ii) immediately above (following notice and opportunity to
cure in accordance with the provisions of Section 13.2(a) hereof) shall
constitute a condition precedent to the licenses granted under Sections 2.2,
4.1, 4.2 and/or 4.3 hereof.
(b) InterTrust Branding. Universal shall, in accordance with the
-------------------
provisions of this Section 5.3(b) and InterTrust's reasonable instructions
provided from time to time by InterTrust to Universal, place the InterTrust
brands as specified below on all Universal Products and associated services,
Distributable Documentation, marketing, sales, and advertising materials
therefor, packaging for any physical media containing any such products or
services, on initialization and/or start-up screens of any Universal Products
and/or associated services, or such screens generated by or including the
Universal Products and/or any associated services, except that Universal is not
required to place such InterTrust brands on any physical media surface (e.g.,
CD-ROM surface) which predominantly contains music Content that is not Managed
by InterTrust Technology and where Universal is not providing brand space on
such physical media surface for one or more other technologies that are employed
in support of one or more portions of Content stored on such physical media,
where, for example, such portions do not constitute the principal Content stored
on such physical media. Further, Universal shall also place InterTrust brands on
the primary player interface for any Universal Reader Module, but may place such
InterTrust brands in a secondary, though reasonably prominent, manner and
Universal shall not be required to place such brands on secondary interface
screens, except as may be common industry practice. The InterTrust brands shall
be the symbol or mark denoting Compliance of such Universal Products and/or
associated services with InterTrust Specifications as set forth on Exhibit H
hereto, including the statement that such Universal Products or associated
services are "MetaTrust Certified," "InterTrustworthy," or "InterTrustable" (as
such symbol or mark is selected and may be amended by InterTrust from time to
time consistent with the provisions of Section 5.4(d) hereof). Such branding
shall be located and appear in the manner reasonably specified by InterTrust,
which shall be prominent, although secondary to the brands of Universal, and/or
a Universal Customer on Universal Products and/or services. Such InterTrust
branding shall be prominent, but not unreasonably detract from, or interfere
with, such other brands. Universal shall not remove, alter, cover, obfuscate
and/or otherwise deface any InterTrust brands and shall not knowingly permit
(including by having a provision in Customer Agreements prohibiting) the
removal, alteration, covering, obfuscation or otherwise defacing of any such
InterTrust brands.
(c) Universal Product Branding. Universal Products that are
--------------------------
Application Products (and/or services associated therewith) shall be branded and
marketed solely under Universal Trademarks or "Co-Branded" (as defined below)
under a Universal Trademark and the trademark of a Customer in accordance with
the provisions hereof (except where use of InterTrust Trademarks is also
required herein, or other trademarks of Persons are also included in a limited
manner to identify other technology or services associated with such Universal
Product and/or associated service), and in all events in accordance with the
provisions of Section 4.5 and other provisions hereof. As used herein, "Co-
---
Branded" means that the Universal Trademark brand is not materially less
- -------
prominent than the brand of such Universal Customer that also appears on the
Universal Product, and in all events not less than essentially [*] percent
([*]%) of the aggregate presentation and visible area devoted to identification
of brands on a product or service offering (or in related materials) containing
references to any such brand. Any references to Clearinghouse Function services
with, in, or otherwise related to Universal Products that are Application
Products, and/or products or services through which Universal provides
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
25
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Clearinghouse Function services shall be branded and marketed solely under
Universal Trademarks (except where use of InterTrust Trademarks is also required
herein, or other trademarks of Persons are also included in a limited manner to
identify other technology or services associated therewith) and stipulated in
accordance with the provisions of Section 4.5. Such Clearinghouse Function
services shall be promoted in a prominent manner, including most prominent
mention on interfaces directly relating to initiating and/or reporting on
transactions, and materially prominent, mention on other splash screens and/or
other relevant interfaces. Co-branding may not be used in association with
Universal Clearinghouse Function services and products.
(d) Network Notices. At InterTrust's request and upon
---------------
Universal's approval, which shall not be unreasonably withheld, Universal World
Wide web pages that materially promote or otherwise support Universal Products,
and/or associated services and InterTrust Technology (and/or at least one
Universal Web page that materially promotes Universal Products and/or associated
services if no World Wide web pages materially promote or otherwise support
InterTrust Technology) shall contain a graphical icon provided by InterTrust
which is a link to a web page provided by InterTrust on the Internet or the
equivalent thereof on any other public electronic network that is controlled by
and materially promotes InterTrust Technology. At Universal's request and upon
InterTrust's approval, which shall not be unreasonably withheld, InterTrust Web
pages that materially promote or otherwise support InterTrust Technology and/or
Universal Products and/or associated services (and/or at least one InterTrust
Web page that materially promotes InterTrust Technology if no Web pages
materially promote or otherwise support Universal Products and/or associated
services) shall contain a graphical icon provided by Universal which is a link
to a Web page provided by Universal on the Internet or the equivalent thereof on
any other public electronic network that is controlled by and materially
promotes Universal Products and/or associated services so long as Universal
promotes InterTrust Technology as its Preferred Technology.
(e) Prospective Notice. The Notices shall be effective beginning
------------------
on the date InterTrust gives Universal written notice thereof (in accordance
with Section 14.6) and Universal shall implement and/or comply with applicable
portions thereof as soon as reasonably commercially practicable thereafter.
5.4 InterTrust Trademarks.
---------------------
(a) Standards. Universal recognizes the importance of
---------
InterTrust's reputation and goodwill, and of maintaining high, uniformly applied
standards of quality in connection with Universal's use and distribution of
products, applications, and services pursuant hereto bearing InterTrust
Trademarks. Consequently, to maintain InterTrust's interest in and rights to the
InterTrust Trademarks, products, and associated services, and to maintain in the
mind of the public and customers that InterTrust Technology and its components
represent high levels of quality, trust and reliability, Universal shall utilize
the InterTrust Trademarks in accordance with trademark guidelines ("Trademark
---------
Guidelines") (which may include approved samples and exemplars) as may be
- ----------
provided to Universal (and/or reasonably modified) by InterTrust from time to
time in its discretion (and the implementation thereof shall be consistent with
Section 5.4(d)). A copy of the current Trademark Guidelines is included in
Exhibit C hereto. Such Trademark Guidelines shall: (i) include a list of
InterTrust Trademarks and shall specify restrictions on use, if any, including
permitted and prohibited countries and jurisdictions; and (ii) may be revised
from time to time by InterTrust. InterTrust Trademarks, as listed on Exhibit C
hereto (the "Initial InterTrust Marks"), may be modified by InterTrust from time
------------------------
to time to include new Trademarks upon InterTrust's provision to Universal of
reasonable prior written notice ("Added InterTrust Marks") (and the
----------------------
implementation thereof shall be consistent with Section 5.4(d)). Any such Added
InterTrust Marks shall not include any names, logos or marks that are identical
with, substantially similar to, or substantially conflict or create a likelihood
of confusion with and/or significantly undermine the value of, any then-existing
trademark rights of Universal, or trademark rights with respect to any names,
logos or marks then used on any Universal Products, where Universal promptly
notifies InterTrust in writing that such new trademark is believed in good faith
by Universal to so conflict with, or significantly undermine the value of, then-
existing trademarks of Universal.
(b) Trademark Ownership; Contestability. Universal acknowledges
-----------------------------------
and agrees that all uses of InterTrust Trademarks as permitted hereunder, and
the goodwill associated therewith, shall inure solely to the benefit of
InterTrust.
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Universal agrees that except in the case of a breach of Section 5.6(b) hereof it
shall not contest the validity of any InterTrust Trademarks or registrations
thereof or applications with respect thereto, or InterTrust's exclusive
ownership of the InterTrust Trademarks or their associated goodwill. Universal
agrees to make available to InterTrust, upon request with reasonable notice,
samples of records and other documentary evidence as is/are retained in the
ordinary course of Universal's business regarding its use of the InterTrust
Trademarks, and Universal shall observe, at minimum, reasonable industry
standards for recording and maintaining such information, including, for
example, information regarding first use of the InterTrust Trademarks by
Universal in each country.
(c) Confusing Similarity. Subject to InterTrust's obligations
--------------------
under Section 5.4(a), Universal shall not use any marks identical with or
confusingly similar to any of the InterTrust Trademarks, or Added InterTrust
Trademarks used in commerce by InterTrust at any time, and shall not register or
attempt to register any marks identical with or confusingly similar to any of
the Initial InterTrust Marks, or Added InterTrust Marks. Universal also shall
not knowingly permit to be used or offered (and shall prohibit in its Customer
Agreements a Customer from using or affixing) any trademark on any Universal
Product (and/or associated service) supplied to such Customer to the extent such
trademark could reasonably be thought to substantially conflict or create a
likelihood of confusion with, and/or be significantly undermined in value by,
any trademarks used by such Customer in connection with any products or services
using any Other Technology.
(d) Prospective Notice. Changes in the InterTrust Trademarks and
------------------
associated standards of quality shall be effective beginning on the date
InterTrust gives Universal written notice thereof and Universal shall, as soon
as reasonably commercially practicable thereafter, implement and/or comply with
such respective portions thereof. In the event a change in the Trademark
Guidelines due to any judgment, agreement pursuant to settlement of a claim, or
other modification of Trademark Guidelines in connection with a potential
InterTrust liability, and upon written notice from InterTrust, Universal will
implement such changes and cease activities non-compliant with such changes in a
more expeditious manner taking into account the gravity of the circumstances.
5.5 Universal's Use of Universal Trademarks on Universal Products. To
-------------------------------------------------------------
promote the branded and distinct identity of Universal Products, and/or
associated services, Universal acknowledges and agrees that it shall not, at any
time, use (and it shall prohibit in its Customer Agreement any Person whose
trademark appears with Universal Product from using) any trademark or logo used
in commerce to specifically identify, label or market any such products or
associated services, to identify any product or service other than such
Universal Products, and associated services (other than trademarks or logos that
serve to generally identify Universal or to generally identify a Universal
Customer who has co-branding rights hereunder in regards to such Universal
Products and/or associated services).
5.6 Universal Trademarks. Subject to the terms and conditions of this
--------------------
Agreement, InterTrust shall have a royalty free right to use the Universal
Trademarks and other Universal trademarks as selected by Universal in its sole
discretion, solely in connection with any publicity in accordance with Section
8.1 and 8.2, and solely with the advance written approval of Universal, in each
instance, at the sole discretion of Universal. Universal hereby agrees that at
any time after the Joint Press release during the Term, InterTrust may display
Universal's corporate logo on InterTrust's website and/or promotional materials
solely to disclose that Universal is a licensee of InterTrust; provided however
that each such use of the Universal logo, including without limitation the form,
size and placement of such logo on any web page and promotional materials, shall
be subject to the advance written approval of Universal, in its sole discretion.
Further, in this connection:_
(a) Standards. InterTrust recognizes the importance of
---------
Universal's reputation and goodwill, and of maintaining high, uniformly applied
standards of quality in connection with InterTrust's use of Universal Trademarks
as permitted hereunder. Consequently, to maintain Universal's interest in and
rights to the Universal Trademarks, products, and associated services, and to
maintain in the mind of the public and customers that Universal products and
services represent high levels of quality, trust and reliability, InterTrust
shall utilize the Universal Trademarks in accordance with trademark guidelines
(which may include approved samples and exemplars) as may be provided to
InterTrust (and/or reasonably modified) by Universal from time to time in its
discretion. Such trademark guidelines may be revised from time
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to time. As to Universal Trademarks not in commercial use as of the Effective
Date, such trademarks shall not include any names, logos or marks that are
identical with, substantially similar to, or substantially conflict or create a
likelihood of confusion with and/or significantly undermine the value of any
then-existing trademark rights of InterTrust or Added InterTrust Trademarks,
where InterTrust promptly notifies Universal in writing that such new trademark
is believed in good faith by InterTrust to so conflict or significantly
undermine the value of such then-existing trademarks of InterTrust.
(b) Trademark Ownership; Contestability. InterTrust acknowledges
-----------------------------------
and agrees that all uses of Universal Trademarks as permitted hereunder, and the
goodwill associated therewith, shall inure solely to the benefit of Universal.
InterTrust agrees that except in the case of a breach of Section 5.4(a) hereof
it shall not contest the validity of any Universal Trademarks or registrations
thereof or applications with respect thereto, or Universal's exclusive ownership
of the Universal Trademarks or their associated goodwill. InterTrust agrees to
make available to Universal, upon request with reasonable notice, samples of
records and other documentary evidence as is/are retained in the ordinary course
of InterTrust's business regarding its use of the Universal Trademarks, and
InterTrust shall observe, at minimum, reasonable industry standards for
recording and maintaining such information, including, for example, information
regarding first use of the Universal Trademarks by InterTrust in each country.
(c) Confusing Similarity. InterTrust shall not use any marks
--------------------
identical with or confusingly similar to any of the Universal Trademarks and
shall not register or attempt to register any marks identical with or
confusingly similar to any of the Universal Trademarks.
(d) Prospective Notice. Changes in the Universal Trademarks and
------------------
associated standards of quality shall be effective beginning on the date
Universal gives InterTrust written notice thereof and InterTrust shall, as soon
as reasonably commercially practicable thereafter, implement and/or comply with
such respective portions thereof. In the event a change in the Universal
trademark guidelines due to any judgment, agreement pursuant to settlement of a
claim, or other modification of trademark guidelines in connection with a
potential Universal liability, and upon written notice from Universal,
InterTrust will implement such changes and cease activities non-compliant with
such changes in a more expeditious manner taking into account the gravity of the
circumstances.
5.7 Translation of Material in Foreign Languages. InterTrust shall
--------------------------------------------
have the right to receive and approve, such approval not to be unreasonably
withheld or delayed, any non-English translations made by or for Universal of
documentation, marketing and sales materials provided by Universal concerning
Universal Products and any related services (to the extent such documentation,
marketing, and/or sales materials reference InterTrust Technology and/or
capabilities and/or functions enabled by InterTrust Technology), legends and
notices required pursuant to Section 5.3 hereof and other required notices, and
all versions of InterTrust Technology. If InterTrust informs Universal of any
errors in such translations, Universal shall promptly correct such errors.
6. LICENSE FEES AND PAYMENT TERMS.
6.1 Fees and Royalties.
------------------
(a) InterTrust Technology and Option Fees. In consideration of
-------------------------------------
the licenses granted to Universal herein and the other terms and conditions
hereof, Universal shall pay to InterTrust the following amounts, net of any
withholding tax and concurrently with the execution hereof, a nonrefundable
payment of [*] dollars (US$[*]) (the "Initial Fee"), which will be [*] due
-----------
InterTrust in the manner set forth in Section 6.3 below ([*]) if (and only if)
Universal does not exercise the Option as set forth in Section 4.1(b) hereof.
Concurrently with Universal's exercise of the Option, Universal shall pay to
InterTrust a nonrefundable payment of [*] dollars (US$[*]). If Universal
directly receives any license fee from any Authorized Venture or the
participants of an Authorized Venture in connection with the grant of the
sublicense of Section 2.2 (or such Authorized Venture participants'
participation in an Authorized Venture), Universal shall pay to InterTrust [*]
percent ([*]%) of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
28
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such fee, if any; provided that such license fee shall not include capital
-------- ----
contributions made by such Venture participants to an Authorized Venture.
(b) InterTrust Technology Royalties. In consideration of the
-------------------------------
licenses granted to Universal herein and the other terms and conditions hereof,
Universal (and/or an Authorized Clearinghouse Provider as may be permitted under
this Agreement) shall pay to InterTrust the following royalties, net of any
withholding tax:
(i) six-tenths of one percent (0.6%) of the Gross
Commercial Value of each Content Transaction where any Clearinghouse Function is
performed at least in part;
(ii) two percent (2%) of the Gross Commercial Value
received for the complete or partial performance of any Clearinghouse Functions
at least in part, but in no event including the payment of royalties for
Clearinghouse Functions under Section 6.1(b)(i) above; and
(iii) for all revenue and the monetary value of other
consideration, if any, actually received by Universal directly in connection
with the sale, lease, license, distribution, transfer, or other use of Universal
Products and/or services that utilize Universal Products and/or InterTrust
Technology (such as service fees for packaging third party Content and/or fees
for hosting Content in connection with a Universal service), and not based on
performance of Clearinghouse Functions, a royalty of two percent (2%) of all
such revenue and any such monetary value for other consideration received by
Universal, minus any sales, use, value added or other taxes (except withholding
taxes) imposed by any national, state, local or foreign government and paid by
and/or for Universal on such received revenue and/or any other consideration (as
calculated according to generally accepted accounting principles consistently
applied with past practices).
(c) Support Fee. Subject to the provisions hereof, in partial
-----------
consideration for InterTrust's provisions of Support set forth in Section 3.2
hereof and other maintenance activities as set forth herein, during the Initial
Support Period, Universal shall pay to InterTrust the amount of [*] dollars
(US$[*]) per quarter (the "Support Fee"). The Support Fee shall be paid within
-----------
thirty (30) days after the first day of each calendar quarter in accordance with
Section 6.4 hereof.
6.2 [*] If InterTrust [*] with: (i) a Business Partner in the
Entertainment Field [*] Universal hereunder, or (ii) another Business Partner
outside of the Entertainment Field who may provide products and/or services to
the Entertainment Field [*] where the [*] hereunder; and further pursuant to
either such agreement [*] wherein such [*] are also [*] than the [*] set forth
in such sections hereof, the [*], at Universal's option, to the [*] and [*]
provided by InterTrust [*] as may be employed to service the Entertainment
Field, as applicable.
6.3 Payment Procedure. In the instance, but solely in the instance,
-----------------
where Universal has not exercised its Option pursuant to Section 4.1(b) hereof,
Universal shall be entitled thereafter to [*] percent ([*]%) of all [*] by
Universal and [*] under Sections [*] and [*] in a calendar quarter [*] the
[*]; provided that the total amount of all such [*] under this Agreement shall
-------- ----
under no circumstances [*] dollars ($US[*]) in the aggregate. Except as
otherwise expressly provided in this Agreement, within [*] days after the end of
each calendar quarter, Universal shall pay InterTrust all amounts due and/or
payable pursuant to the licenses and support provided hereunder, and invoiced,
billed, transferred
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
29
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or received, whichever occurs first, during such calendar quarter. In the event
any rise in inflation during the later [*] days of such [*] day period
results in a decline in more than twenty-five (25%) of the value of any payment,
the Parties shall promptly and mutually agree on a method for making appropriate
adjustments to such payment to avoid such decline, which agreement shall not be
unreasonably withheld or delayed. Universal shall make payments hereunder by
wire transfer, or in the instance of quarterly payments, by check or wire
transfer, to such account as designated by InterTrust in writing. Concurrently
with each royalty payment, Universal shall provide to InterTrust a written
royalty report, certified to be accurate by an officer of Universal specifying:
(i) the revenues derived by Universal that are subject to royalties during each
calendar month of such quarter; (ii) the basis for calculation of the amounts
due and payable; and (iii) summaries of business records employed by Universal
to arrive at the information set forth in (i) and (ii) immediately above. The
manner of calculation of the amounts due and payable to InterTrust hereunder
shall be determined in accordance with recognized and generally accepted U.S.
accounting procedures and principles that shall be consistently applied to all
such payments.
6.4 Currency. Gross Commercial Value received by Universal subject to
--------
the royalties of Section 6.1(a) in a currency other than U.S. dollars shall be
converted by Universal to U.S. dollars on a monthly basis for purposes of
payment to InterTrust on a quarterly basis according to the rate of exchange for
such currency, as published by the Wall Street Journal (Western Edition or main
edition in absence of a Western edition) on the last business day during each
calendar month of a calendar quarter for which such royalties are due, or if The
Wall Street Journal ceases or fails to publish such rate of exchange at any time
during this Agreement, the rate of exchange during any such period of cessation
shall be such rate published by Bank of America (San Francisco, California) or a
comparable source as may be reasonably chosen by InterTrust for its Business
Partner and agreed by Universal, such agreement shall not be unreasonably
withheld.
6.5 Taxes. Universal shall pay taxes, including but not limited to
-----
withholding taxes, imposed by any foreign government or any other jurisdictions
outside of the United States, as applicable, on all fees and royalties payable
to InterTrust under this Agreement. To the extent international treaties permit
InterTrust to obtain, with minimal burden and expense to InterTrust, a valid
Certificate of Tax Exemption (or functional equivalent) from foreign
jurisdictions permitting Universal to make such fee and royalty payments free of
any such foreign jurisdiction withhold taxes, InterTrust and Universal shall
work together in good faith to obtain such certificate. In no event shall
InterTrust receive, in the aggregate, less than the fees and royalties set forth
in Section 6.1, including, for example, where Universal is required by a foreign
jurisdiction to reduce any fee or royalty payment owed to InterTrust by the
amount of withhold taxes. In addition, if InterTrust receives a refund from any
such foreign jurisdiction for any amount of withhold taxes paid by Universal,
InterTrust shall pay such amount to Universal. Universal shall be responsible
for payment of all sales, use, value-added and other taxes, duties, and other
charges that may fall due with respect to: (i) the transfer to or licensing,
reproduction, distribution, and/or use by Universal of, the Universal Products;
and (ii) Universal's activities in regards to the Clearinghouse Functions.
InterTrust shall be responsible for payment of all sales, use, value-added and
other taxes that may be imposed on InterTrust with respect to: (a) the transfer
to, or licensing to, Universal of the InterTrust Technology hereunder; or (b)
the payments received hereunder. Except as provided in this Section 6.5, each
Party shall be responsible for its own income tax liability imposed by any
government.
6.6 Interest. Universal agrees that: (i) all sums owed or payable to
--------
InterTrust hereunder shall bear interest (compounded daily) at the [*] Rate on
an annualized basis as published at the end of a calendar quarter for which such
royalties are due, or such lower rate as may be the maximum rate permitted under
applicable law, from the date upon which payment of the same shall first become
due up to and including the date of payment thereof whether before or after
judgment; and (ii) shall be additionally liable for all costs and expenses of
collection, including, without limitation, reasonable fees for attorneys and
court costs in that connection. Notwithstanding the foregoing, such specified
rate of interest shall not excuse or in any way whatsoever be construed as a
waiver of Universal's express obligation to timely provide any and all payments
due to InterTrust hereunder.
6.7 Audit. Universal shall maintain at a reasonable North American
-----
location during the Term of this Agreement for the Audit Period (as defined
below) all books, records, accounts, and other information regarding Universal's
activities
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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in connection herewith sufficient according to reasonable accounting practices
to determine and confirm Universal's royalty obligations hereunder. Upon
InterTrust's prior written request, Universal will permit an internationally-
recognized top-five accounting firm of InterTrust's choice (subject to
Universal's consent, which shall not be unreasonably withheld or delayed) to
examine and audit, during normal business hours at the location where records
are normally kept (but no more than once every six (6) months), such books,
records, accounts, and other information, and take extracts therefrom or make
copies thereof for the purpose of verifying the correctness of Universal's
reported royalty statements and payments provided by Universal. Universal
shall pay any unpaid delinquent amounts within [*] days of InterTrust's
request. To the extent such examination discloses an annualized underpayment
of more than [*] percent ([*]%) of sums actually due InterTrust and/or an
underpayment of more than [*] dollars (US$[*]), Universal shall fully
reimburse InterTrust, promptly upon demand, for the fees and disbursements due
the auditor for such audit; provided that such prompt payment shall not be in
lieu of any other remedies or rights available to InterTrust hereunder. If an
audit reveals an overpayment, InterTrust shall promptly notify Universal of
such overpayment and Universal and InterTrust will reasonably discuss and
agree upon the methods for applying the amount of such overpayment against
future royalties in the next payment period or successive periods in a manner
reasonably balancing InterTrust's and Universal's commercial circumstances and
interests but such repayment shall be in a manner that does not cause undue
hardship for InterTrust and, in the absence of significant circumstances, any
such applied amount to effect repayment shall not exceed [*] percent ([*]%) of
royalties due in any payment period hereunder. As defined herein, with respect
to a royalty payment made hereunder for an applicable period, "Audit Period"
------------
shall mean four (4) years following such royalty payment. Any Claim for
delinquent or inaccurate payment of royalty for any particular quarterly royalty
period shall not be initiated by InterTrust for underpayment (or Universal for
overpayment) shall be commenced within one (1) year of the commencement of the
applicable audit; provided that the foregoing limitation shall not apply with
-------- ----
respect to any payment due InterTrust: (a) where an audit has been conducted
and an underpayment determined, InterTrust has informed Universal of such
determined underpayment, and such determined underpayment has not been made in
full to InterTrust; or (b) if Universal and/or its Agents have engaged in any
fraud, gross negligence, material misrepresentation or material omission with
respect to royalty payments and/or reports hereunder. All of the foregoing
shall be subject to statutes of limitation under applicable law.
7. PROPRIETARY INFORMATION AND OWNERSHIP.
7.1 InterTrust Ownership. Universal acknowledges and agrees that, as
--------------------
between InterTrust and Universal, InterTrust is the sole and exclusive owner of,
and shall retain and hereby reserves (and nothing herein shall alter
InterTrust's reservation of) all right, title and interest in: (i) the
InterTrust Technology, enhancements and modifications thereto, and derivative
works thereof created by or for, or acquired by, InterTrust, and all
Intellectual Property Rights embodied therein; (ii) all Intellectual Property
Rights created, or embodied in any works (whether tangible or intangible)
created or independently developed, by InterTrust in connection with its
performance of this Agreement; and (iii) Modified Technology not owned by
Universal pursuant to Section 7.2 hereof, and all Intellectual Property Rights
embodied therein (collectively, the "InterTrust Property"). No provision
-------------------
contained in this Agreement shall be construed to transfer to Universal or any
other Person any title or ownership interest in any InterTrust Property.
7.2 Universal Ownership. InterTrust acknowledges and agrees that, as
-------------------
between Universal and InterTrust, Universal shall be the sole and exclusive
owner of, and shall retain and hereby reserves (and nothing herein shall alter
Universal's reservation of) all right, title and interest in, the portions of
the following created solely by (or for) Universal hereunder: (i) any Universal
Products, except for any InterTrust Property therein; (ii) Modified Technology
created in accordance with the terms hereof (except (a) for any InterTrust
Property therein and/or (b) to the extent (and solely to the extent) such
Modified Technology merely reimplements the existing functionality of InterTrust
Technology provided to Universal (including, for example, porting or translation
thereof) and not to the extent that such Modified Technology adds new
functionality or enhanced functionality); and (iii) all Intellectual Property
Rights embodied in such Universal Products or such Modified Technology
("Universal Property") independently developed by or for Universal in accordance
-------------------
herewith. No provision contained in this Agreement shall be construed to
transfer to InterTrust or any other Person any title or ownership interest in
any Universal Property.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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7.3 Universal License to InterTrust. In consideration of the licenses
-------------------------------
granted and of other consideration provided by InterTrust to Universal under
this Agreement, during the Term of this Agreement and during the period in which
any rights under Section 13.3(b) are in effect, Universal hereby grants to:
(a) InterTrust, its affiliates, and their successors, assigns,
and direct and indirect customers (including users of InterTrust Technology) a
limited, nontransferable, nonsublicensable, nonexclusive, royalty-free and
worldwide license under the patent rights of Universal to make, use, sell, offer
for sale, import, distribute and/or otherwise exploit InterTrust Technology, any
products or services directly relating to the InterTrust Technology and/or
directly relating to electronic rights management, distributed electronic event
management, or distributed operating system technology, but solely to the extent
that such activities would, but for such license, infringe any such patent
rights of Universal (including any patents disclosing and/or claiming any
Modified Technology); and
(b) InterTrust, its affiliates, and their successors and
assigns a nonexclusive, royalty-free and worldwide license under the
Intellectual Property Rights (other than trademark, tradenames, and services
marks) of Universal to use Universal Products solely in connection with
InterTrust's internal testing, evaluation and enhancement of performance,
security and/or interoperability characteristics of InterTrust Technology with
such Universal Products, and not for redistribution, licensing, sale or other
transfer to any Person.
If during the Term of this Agreement InterTrust enters into any agreement with
my Business Partner in the Entertainment Field [*] under the licenses granted
under this Section 7.3, but solely to the specific extent nature of the terms
and conditions [*].
8. JOINT ACTIVITIES AND PARTNERING COMMITMENT.
8.1 Joint Press Release. Except as otherwise provided in this
-------------------
Agreement, promptly after the Effective Date, the Parties shall issue the press
release in the form attached hereto as Exhibit K (the "Joint Press Release"). In
-------------------
addition, Universal and InterTrust shall throughout the Term work together to
publicly issue additional mutually agreeable press releases disclosing the
future plans of the Parties relating to the use of InterTrust Technology and
support for the MetaTrust Utility (the "Followup Press Releases"). Upon
-----------------------
InterTrust's request from time to time, and so long as Universal is using
InterTrust Technology in development of or distribution of a pilot trial or in
development of or distribution of a commercial release of a Universal Product,
Universal will use reasonable efforts to meet with investors, potential
investors or licensees and/or financial and marketing analysts to promote and
clearly endorse, to InterTrust's benefit, InterTrust Technology, including
explaining for a minimum of twelve (12) months from the Effective Date that
InterTrust is Universal's preferred rights and distributed trust management
technology partner and Universal's direct and material support for the MetaTrust
Utility. Unless otherwise agreed in writing, all further public disclosures by
either Party concerning the subject matter of the Joint Press Release, the
Followup Press Releases and/or Section 8.2 hereof shall be consistent with, and
not exceed the scope of, the content of the Joint Press Release, the Followup
Press Releases, InterTrust Specifications and the other provisions hereof. All
other public disclosures with respect to the terms hereof shall be made in
accordance with Section 9.5.
8.2 Promotion and Marketing. The parties shall jointly participate
-----------------------
in, and from time to time (as they may agree) engage in, promotional, marketing,
and sales activities designed to: (i) increase industry awareness of Universal
Products (and associated services) and InterTrust Technology; and (ii) promote
the dissemination and use of InterTrust's technology as the general purpose
Digital Rights Management and Secure Container standard solution for electronic
commerce. Each Party will assist the other with marketing activities relating to
the Universal's use of InterTrust Technology by, for example, displaying certain
InterTrust Trademarks on products and services (and materials relating thereto)
and jointly participating in, as mutually agreed in each Party's discretion,
trade shows and customer events.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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8.3 Technology Advisory Committee. To further strategic opportunities
-----------------------------
among the Parties and to encourage feedback concerning InterTrust Technology,
InterTrust currently intends to establish a committee limited to representatives
of: (i) leading companies chosen from certain technology, financial and/or
content industry companies that have close technology strategic relationships
with InterTrust; and (ii) certain leading experts in technology or business
applicable to information and electronic commerce (the "Technology Advisory
-------------------
Committee"). The Technology Advisory Committee shall meet regularly at a forum
- ---------
to be selected by InterTrust for the purpose of discussing and exchanging ideas
for improving the functionality, interoperability, and market acceptability of
InterTrust Technology and related issues pertaining to the electronic commerce
industry. Upon the establishment of the Technology Advisory Committee: (a)
InterTrust shall grant Universal the right to have one seat as a member of the
Technology Advisory Committee; and (b) Universal, at its option, may elect and
notify InterTrust of its designation of an executive (who may be an employee of
Universal) to serve on such committee. Universal may propose that in place of
itself a representative of the Authorized Venture serve on behalf of, and as a
designee of, Universal on the Technology Advisory Committee, such designation
shall be subject to InterTrust's prior written approval. To the extent it
participates, Universal shall: (1) be responsible for all acts and omissions of
the representative in connection with the Technology Advisory Committee; and (2)
pay for all expenses incurred by Universal in connection with participation on
such Committee unless InterTrust pays for expenses of any other Business Partner
member, wherein such other Business Partner member's agreement has overall terms
substantially similar to the terms hereof. Universal's right to a seat on the
Technology Advisory Committee shall be contingent upon (and subject to): (A)
material compliance with generally applicable committee rules, and the terms and
conditions hereof; (B) avoidance of activities by Universal and/or Authorized
Venture (as applicable) that materially conflict with InterTrust's interests, as
determined by InterTrust in its discretion; and (C) continuation of the
Technology Advisory Committee. It is acknowledged that Universal's
representative on the Technology Advisory Committee will be exposed to
InterTrust Confidential Information, and may be exposed to confidential
information of other InterTrust partners.
8.4 Partnering Commitment
---------------------
(a) Basic Provisions. In recognition of and partial consideration for
----------------
providing Universal with material, early access to technology and highly
confidential InterTrust Technology and Intellectual Property, and the rights
hereunder, Universal agrees to the following partnering commitment. Without
obtaining the express prior written consent of an InterTrust Designated Officer,
in the exercise of InterTrust's discretion, during the first [*] ([*]) years of
the Term Universal shall not, in connection with the Management of Content in
the Entertainment Field (as such field may be further expanded upon the exercise
of the Option): (i) commercially or publicly use, deploy, or participate in the
commercial or public use or deployment of, any technology, products and/or
associated services that use or incorporate any Other Special Advanced
Technology, except that a Universal Reader Module may incorporate and support
(1) Pre-Authorized Other Technology for use in conjunction with InterTrust
Technology (where InterTrust Technology is the Preferred Technology) and where
the use of such InterTrust Technology is Compliant with InterTrust
Specifications; and (2) any Other Technology, provided that such use of such
Other Technology has been mutually approved in writing by Universal and an
InterTrust Designated Officer in each Party's good faith exercise of its
discretion, following discussion by the Parties of their respective commercial
interests; nor (ii) perform in whole or in part any clearinghouse functions
(that would be deemed Clearinghouse Functions if performed using InterTrust
Technology) using any Other Technology and/or for information that has been
derived at least in part from the use of any Other Technology (except and solely
except as incorporated in a Universal Reader Module in accordance with the
provisions of the immediate preceding subparagraph (i)). During such [*] ([*])
year period, upon InterTrust's prior written request, Universal agrees to
verbally endorse InterTrust Technology as its Preferred Technology to investors,
potential investors and/or licensees of InterTrust provided such verbal
endorsement need not be publicly made and will be subject to a non-disclosure
agreement unless otherwise agreed in writing (including by email) by an
InterTrust Designated Officer and a Universal Executive.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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(b) Caveats. Notwithstanding the foregoing, subparagraphs (i) and (ii) of
-------
Section 8.4(a) immediately above shall not be construed in any way to prohibit
Universal from participating in the [*]; provided that Universal does not
-------- ----
materially develop any Digital Rights Management technology for the project.
Universal shall not publicly promote and/or market the [*] to a greater degree
than the other participants in the [*], and, shall within [*] ([*]) months after
the Effective Date, launch, conduct and use reasonable efforts to have other
major music labels join in, a music trial project in the U.S. on a scale at
least reasonably comparable to the [*] using InterTrust Technology as its
principal Digital Rights Management technology (the "Universal/InterTrust
--------------------
Trial"). Further, nothing in Section 8.4(a) shall be construed to require
- -----
Universal to refrain from distributing Content intended for use with any Other
Special Advanced Technology or Other Technology where the artist or provider of
such Content individually instructs Universal to do so, provided that Universal
-------- ----
uses commercially reasonable efforts to recommend and promote the use of
InterTrust Technology with such Content instead of any Other Special Advanced
Technology or Other Technology; and further provided that for the [*] ([*]) year
------- -------- ----
period stated in Section 8.4(a), Universal does not use any Universal brand
directly with such Other Special Advanced Technology. Universal shall not
promote the brand of the provider, or provider products and/or services, of such
Other Special Advanced Technology or Other Technology on any part of its
marketing materials or products except to the minimum extent necessary as
required by any such artist or provider of such Other Special Advance Technology
or Other Technology, and then only directly regarding the specific use of such
Other Special Advanced Technology or Other Technology for such artist's or
provider's specific entertainment products.
9. CONFIDENTIALITY.
9.1 Classification of Technology and Documents For Confidentiality
--------------------------------------------------------------
Purposes. For ease in complying with the terms of this Section 9, information
and documents to be exchanged by the Parties shall be marked, as appropriate, to
identify the confidential or non-confidential nature of the information, and
information exchanged orally or visually shall be described, as appropriate, to
alert the recipient of the confidential or non-confidential nature of the
information. As regards InterTrust Technology (including Documentation) and
other documents or information provided by InterTrust to Universal in tangible
form, or provided orally or visually hereunder, such information shall be marked
or indicated, as appropriate, as: (i) "Unclassified"; (ii) "Confidential"; or
(iii) "Top Secret," and, as regards Universal information, such information
shall be marked as: (a) "Unclassified" or (b) "Confidential." All InterTrust
Confidential Information and Universal Confidential Information may be referred
to as "Confidential Information." A Party and its authorized personnel shall
------------------------
exercise careful judgment when they are in possession of information of the
other Party that has not been marked or indicated with one of the above-
described classifications. If any information provided by one Party has not
been marked or indicated as above and is not known with certainty by the
receiving Party to have been either publicly released or otherwise classified as
"Unclassified," then such other Party, its employees and any other Person
authorized to possess such information shall treat such information as
"Confidential," except that information provided by InterTrust to Universal
orally or visually regarding security (including tamper resistance and/or
cryptographic key management) aspects of InterTrust Technology which is
thereafter confirmed in writing by InterTrust that such information constitutes
Top Secret Information shall be treated as of the date of receipt of such
writing by Universal as Top Secret Information in accordance with Section 9.2(b)
hereof.
9.2 InterTrust Information.
-----------------------
(a) Confidential Information. To the extent that Universal
------------------------
receives from InterTrust under this Agreement any InterTrust Technology or any
other information or technology that is marked "Confidential" when disclosed in
written form, or indicated as "Confidential" when disclosed orally or visually
("InterTrust Confidential Information"), Universal shall hold such InterTrust
-----------------------------------
Confidential Information in strict confidence and in a manner that is: (i)
sufficiently secure for the character and content of the InterTrust Confidential
Information as reasonably determined by Universal to protect the interests of
InterTrust and the InterTrust Technology environment (and in accordance with the
provisions hereof); and (ii) not less secure than procedures used by Universal
to protect its comparably important information and technology. Universal shall
not in any manner whatsoever, without InterTrust's prior written consent, use,
disclose, provide or otherwise make available any InterTrust Confidential
Information to any person, except to any employee, director or Contractor
("Agent(s)") of Universal, each of whom shall operate under the same
--------
restrictions as Universal (in addition to
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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CONFIDENTIAL
complying with any other provision hereof relating to such agreement).
Furthermore, in each case of disclosure to an Agent of Universal, access to such
InterTrust Confidential Information shall be allowed only to such Agents who
have a reasonable need to know such InterTrust Confidential Information, and
then only to the extent necessary to enable Universal to use InterTrust
Confidential Information solely to exercise its rights or perform its obligation
hereunder and/or as expressly allowed hereunder. Universal shall: (1) require
its Agents having access to any portion of InterTrust Confidential Information
to strictly maintain its confidentiality; and (2) ensure that each such Agent
shall have executed with Universal a written non-disclosure/non-use agreement in
the form set forth on Exhibit I hereto or as subsequently provided by
InterTrust, or Universal's applicable form agreement which shall effectively and
comparably bind such Agent to an agreement of the same scope as InterTrust's
form agreement, and which such form agreement shall be subject to InterTrust's
reasonable prior written approval which approval will not be unreasonably
withheld or delayed. Upon such approval, the form agreement shall replace the
relevant portion of Exhibit I. In the case of a Contractor, such provisions
shall be in the Contractor Agreement. Universal shall notify InterTrust promptly
in writing of any unauthorized disclosure or other misuse or misappropriation of
any portions of the InterTrust Confidential Information upon any Universal
Executive becoming aware of such unauthorized disclosure or other such misuse or
misappropriation. Universal shall use reasonable efforts to maintain a log of
the Agents accessing and the location of all originals and copies of material
excerpts of technical InterTrust Confidential Information. Universal shall be
fully responsible for any breach of Universal's obligations under this Agreement
by an Agent to whom such InterTrust Confidential Information has been disclosed.
Subject to the provisions of Section 9.4, any obligation of Universal to keep
InterTrust Confidential Information in confidence shall expire thirty-six (36)
months after disclosure of such information by InterTrust to Universal, except
with respect to InterTrust Technology, in which case such obligation shall
continue in perpetuity.
(b) Top Secret Information. In order to protect InterTrust's
----------------------
rights, the rights of InterTrust licensees, and the secure operation and/or
interoperability and reputation of InterTrust implementations, Universal shall
treat any InterTrust Technology or other confidential information that it may
receive that is either marked "Top Secret - Do Not Copy" or similar legend
containing at least the words "Top Secret" (and at least on the cover page or in
comparable other places) when disclosed in written form, or indicated as "Top
Secret" when disclosed orally or visually and identified in writing to a
Universal Executive as Top Secret within thirty (30) days of such oral or visual
disclosure ("Top Secret Information") in a manner not less secure than
----------------------
Universal's most secret information and, in all events in a manner sufficient to
ensure the security of such Top Secret Information, given such great sensitivity
of such Top Secret Information. Universal shall allow disclosure of such Top
Secret Information to no more than an aggregate of twelve (12) designated
individual employees or approved Contractors of Universal and/or Authorized
Ventures (as such twelve individuals may be designated by Universal) at any one
time, each of whom has a direct need to know such information or be exposed to
such Top Secret Information (as agreed in each case by InterTrust in its
reasonable discretion) and then only to the extent necessary for Universal to
use Top Secret Information solely to exercise its rights and perform its
obligations under this Agreement. Universal shall not substitute any employee
designated to receive Top Secret Information with another employee, unless such
designated employee's employment with Universal has been terminated or such
person is no longer able to serve the intended role or is no longer
participating in the business projects conducted using InterTrust Technology,
provided that Universal shall use reasonable efforts to maintain continuity and
- -------- ----
minimize changes of such designated employees and no more than an aggregate of
eighteen (18) designated individual employees shall have been authorized within
any forty-eight (48) month period (in the absence of approval by an InterTrust
Designated Officer). None of such employees shall receive a disclosure of any
such Top Secret Information until: (i) such employee executes an InterTrust Top
Secrecy Agreement (in the form set forth in Exhibit I hereto or as subsequently
provided by InterTrust) covering such information and exposure; and (ii) an
executed copy of such agreement is received by InterTrust, with return receipt
provided to Universal, which such receipt may be provided by fax communication
if so requested in writing. Notwithstanding the foregoing, Universal and
Universal employees described above shall make no physical embodiments
whatsoever of Top Secret Information (for example, any reproduction or copy of
Top Secret Information, including descriptive notes containing any Top Secret
Information) without the prior express written authorization of an InterTrust
Designated Officer, nor shall Universal or such Universal employees disclose any
Top Secret Information to any Person (including to any Contractor), except as
described in this Section 9.2(b). Upon Universal's prior written request,
InterTrust will, where reasonable and appropriate in InterTrust's discretion
given the nature of the Top Secret Information, provide Universal with
additional copies of the Top Secret Information up to a limit of twelve (12)
copies. If any Universal
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Executive becomes aware that any Top Secret Information has been disclosed or
treated other than as set forth in this Section 9.2(b), and/or as specified in a
Top Secrecy Agreement, Universal shall immediately inform InterTrust of such
occurrence and take immediate steps to correct such compromise. Universal shall
maintain a log of the employees accessing and location of all originals and
other provided copies of all Top Secret Information. Universal shall be fully
responsible for any breach by any Universal employee of this Agreement related
to the unauthorized use or disclosure of Top Secret Information.
9.3 Universal Information. To the extent that InterTrust receives
---------------------
Confidential Information of Universal that is either marked "Confidential" when
disclosed in written form or indicated as "confidential" when disclosed orally
or visually ("Universal Confidential Information") under this Agreement,
----------------------------------
InterTrust shall hold such Universal Confidential Information in strict
confidence and in a manner that is: (i) sufficiently secure for the character
and content of the Universal Confidential Information as reasonably determined
by InterTrust to protect the interests of Universal (and in accordance with the
provisions hereof); and (ii) not less secure than procedures used by InterTrust
to protect its comparably important information and technology. Except as to
the disclosure by Universal of the Modified Technology or such disclosure
inherent in the Certification Testing of Universal Products and/or any
associated services pursuant hereto, and only to the extent expressly specified
by InterTrust Specifications, Universal shall not disclose or otherwise provide
or make available to InterTrust any Universal Confidential Information or other
third Person confidential or proprietary information comprising, containing or
directly concerning any Other Technology), without first acquiring written
approval from an InterTrust Designated Officer. InterTrust shall not in any
manner whatsoever, without Universal's prior written consent, use, disclose,
provide or otherwise make available any Universal Confidential Information to
any person, except an Agent of InterTrust each of whom shall operate under the
same restrictions as InterTrust (in addition to complying with any other
provision hereof relating to such Agreement). Furthermore, in each case of
disclosure to an Agent of InterTrust, access to such Universal Confidential
Information shall be allowed only to Agents who have a reasonable need to know
such Universal Confidential Information and only to the extent necessary to
enable InterTrust to use Universal Confidential Information to exercise its
rights and perform its obligations hereunder and/or as expressly allowed
hereunder. InterTrust shall: (a) require its Agents having access to any
portion of Universal Confidential Information to strictly maintain its
confidentiality; and (b) ensure that each such Agent shall have executed with
InterTrust a written non-disclosure/non-use agreement provided by Universal, or
InterTrust's applicable form agreement which shall effectively and comparably
bind such Agent to an agreement of the same scope as Universal's form agreement,
and which such form agreement shall be subject to Universal's reasonable prior
written approval. Upon such approval, the form agreement will replace the
relevant portion of Exhibit I. InterTrust shall notify Universal promptly in
writing of any unauthorized disclosure or other misuse or misappropriation of
any portions of the Universal Confidential Information. InterTrust shall use
reasonable efforts to maintain a log of the Agents accessing and the location of
all originals and copies of material excerpts of technical Universal
Confidential Information. InterTrust shall be fully responsible for any breach
of InterTrust's obligations under this Agreement by an Agent to whom such
Universal Confidential Information has been disclosed. Any obligation of
InterTrust to keep Universal information in confidence shall expire thirty-six
(36) months after disclosure of such information by Universal to InterTrust
provided that InterTrust confidentiality obligations hereunder with respect to
any Source Code provided to InterTrust in connection with any Certification
Program shall continue in perpetuity.
9.4 Exceptions. Notwithstanding the provisions of Sections 9.1, 9.2
----------
and 9.3 above, the confidentiality restrictions herein shall not apply to
information that the recipient thereof can demonstrate: (i) is or becomes
generally known to the public through no breach of any of these obligations, as
of the date such information becomes so known; (ii) is or shall have been
independently developed by such recipient by employees who had no access to such
information; or (iii) is or shall have been rightfully received, with no
obligation of confidentiality or non-use, by such recipient from any Person
(other than as a result of another Person's breach of an obligation of
confidentiality to the discloser of such information), as of the date such
information is so received. In the case of Top Secret Information, however, the
availability to Universal of information that is substantially equivalent to Top
Secret Information based upon subsection (i), (ii) and/or (iii) above shall not,
in any manner, diminish Universal's obligations with respect to the Top Secret
Information provided by InterTrust to Universal (and all copies or derivatives
thereof), and Universal shall be prohibited from further disclosing to
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third parties any such InterTrust Top Secret Information in Universal's
possession in accordance with the terms hereof; except that nothing contained
herein shall be construed to limit Universal's rights outside of this Agreement
with respect to information obtained through the foregoing subsection (i), (ii)
and/or (iii) and such separate information shall not be deemed Top Secret
Information for purposes of this Agreement. In the event any Party is required
by law, regulation or order of a court or other authority of competent
jurisdiction to disclose the other Party's Confidential Information or Top
Secret Information (as applicable), such Party shall notify such other Party as
promptly as possible, and shall, upon such other Party's request and expense,
reasonably assist in challenging or restricting the scope of such required
disclosure. Top Secret Information may be disclosed only upon InterTrust's prior
written approval; provided that if Universal notifies InterTrust that it has
-------- ----
received an order from a court of competent jurisdiction requiring disclosure of
Top Secret Information: (i) Universal shall use reasonable efforts to resist
disclosure (including filing motions to limit disclosure to in camera
inspection); and (ii) if despite resisting such disclosure Universal is required
to produce such Top Secret Information and faces material consequences should it
refuse to so comply, Universal shall not be construed to have breached this
Agreement by disclosing such required information. In all events, a Party
subject to such required disclosure shall disclose only such information that is
strictly required pursuant thereto and no further information and shall have
provided InterTrust notices of such events on a frequent basis as here relevant
(the "Top Secret Disclosure Procedures").
--------------------------------
9.5 Confidentiality of Agreement and Publicity. Except as otherwise
------------------------------------------
provided in Sections 8.1, 9.4 and this Section 9.5 hereof, neither Party hereto
shall at any time, without the prior written consent of the other Party,
disclose the specific details of the terms and conditions of this Agreement to
any Person, other than: (i) Agents having a substantial need to know; (ii) as
required by law, for example, in connection with any initial public offering of
securities pursuant to a registration under the Securities Act of 1933, as
amended (an "IPO"); (iii) investors holding approximately one percent (1%) or
---
more of the outstanding equity shares of such Party prior to an IPO and having
no reasonably anticipated conflict of interest with the disclosing party; (iv)
potential investors who may purchase approximately one percent (1%) or more of
the outstanding equity shares of such Party prior to an IPO and having no
reasonably anticipated conflict of interest with the other Party; and (v)
financial institutions, professional advisors and/or other consultants having a
reasonable need to know and having no reasonably anticipated conflict of
interest with the other Party. In each and every case set forth above, the
receiving Person shall be bound by a confidentiality agreement sufficient in
scope to protect the Parties' rights and interests hereunder. Notwithstanding
the above, Universal may provide to potential partners (including [*] and [*])
and substantial equity investors of the Development Venture or Clearinghouse
Venture an opportunity to review, or to obtain, one copy (1) each of this
Agreement which copy has been previously redacted by mutual agreement of the
Parties to exclude terms that are not directly relevant for evaluation of
whether to participate in such venture (including, for example, with respect to
potential participants in the Development Venture, licenses for Clearinghouse
Functions in Section 4.3, provisions regarding most favored treatment regarding
access to technology in Section 3.1, InterTrust Specifications in Section 5.2(b)
and/or grant-back of licenses in Section 7.3, payment terms in Section 6.1(a),
and partnering commitments provisions of Section 8.4 (except that Universal may
replicate (or, at Universal's option, expand) such partnering commitment
provisions in the sublicense or delegation agreement to the Authorized Venture
pursuant to the terms hereof); provided that such Person: (1) has a need to know
-------- ----
and has no reasonable anticipated conflict of interest with InterTrust (except
that [*] and [*] shall not be deemed to have a material conflict with
InterTrust with respect to their Pre-Authorized Other Technology), (2) is bound
by a confidentiality agreement sufficient in scope to protect InterTrust's
rights and interests hereunder including restricting the disclosure of the
contents of such copy and further from copying or reproducing such redacted copy
and from using this Agreement or the information contained herein for any
purpose other than for the purpose of evaluating whether to participate in the
Development Venture or Clearinghouse Venture, as applicable (including in
connection with any discussions or negotiations with InterTrust concerning a
direct license relationship with InterTrust); and (3) shall be required in
writing to promptly return such copy to Universal, and Universal shall seek and
use all reasonable efforts to effect such return, if such potential partner or
equity investor ceases to be a potential partner or equity investor, or does not
consummate a transaction in the Development Venture or Clearinghouse Venture
within a reasonable period of time, or if such potential partner or equity
investor develops a material conflict of interest with InterTrust. Without the
prior written authorization of an InterTrust Designated Officer, no more than
twelve (12) copies of such redacted versions of this Agreement shall be
distributed in the aggregate; provided that a summary document concerning the
-------- ----
Agreement may be proposed by the Parties in the exercise of their discretion for
use in accordance with the foregoing. InterTrust shall be provided with the
name, affiliation, and address of each such
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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recipient so as to know what Persons are in possession of its Confidential
Information. Notwithstanding the foregoing provisions of this Section 9.5: (a)
either Party may publicly discuss or otherwise disclose in general terms that an
agreement exists between the Parties to develop products and services using
InterTrust Technology, but may provide no further material details as to the
specific activities and commitments of the other Party, without the prior
written consent of such other Party; and (b) either Party may make such
disclosures to the extent permitted under this Section 9.5 or Section 8.4in
order to perform its obligations or exercise its rights under this Agreement.
9.6 Confidentiality of Payments, Audit and Certification Testing. All
---------------------------
information received during an audit or pursuant to a Certification Program as
provided herein, all information concerning Certification Testing results
(including information received pursuant to any Certification Testing), and all
payment information received pursuant to this Agreement, shall be treated as
confidential information pursuant to Sections 9.2(a) and 9.3 hereof.
Notwithstanding the foregoing, information concerning whether a Universal
Product or any associated services being disseminated or used in commerce is
Compliant with InterTrust Specifications ("Compliance Information") shall not be
----------------------
treated as Universal Confidential Information if such Universal Product and/or
associated service is being disseminated or used in contravention of the terms
and conditions of this Agreement. InterTrust agrees to provide Universal with
written notice in the event InterTrust ceases to treat such Compliance
Information as Universal Confidential Information pursuant to the foregoing.
9.7 NDA. Subject to the provisions of this Section 9, upon the
---
Effective Date of this Agreement, information relating to the subject matter of
this Agreement, when disclosed after the Effective Date by one Party to the
other Party shall be covered by the confidentiality provisions of this Section
9. Any information disclosed by one Party to the other Party relating to the
subject matter of this Agreement when disclosed prior to the Effective Date or
relating to subject matter outside of this Agreement shall be covered under the
Non-Disclosure/Non-Use Agreements between InterTrust and Universal Music Group
dated January 16, 1997, and between InterTrust and Universal Studios, Inc. dated
October 30, 1997.
10. REPRESENTATIONS AND WARRANTIES.
10.1 Representations and Warranties of Both Parties. Each Party
----------------------------------------------
represents and warrants to the other Party that as of the Effective Date:
(a) such Party is a corporation or a limited liability company
duly incorporated, validly existing and in good standing under the laws of the
jurisdiction in which it is organized, with full corporate power and authority
to carry on its business as it is now being conducted;
(b) the execution, delivery and performance of this Agreement
and the consummation of the transactions contemplated hereby have been duly
authorized by such Party. No other corporate or shareholder action or other
proceeding on the part of such Party or its shareholders is necessary to
authorize this Agreement and the consummation of the transactions contemplated
hereby ;
(c) this Agreement constitutes a valid and binding obligation of
such Party, enforceable against such Party in accordance with its terms, except
that such enforcement may be subject to bankruptcy, insolvency, reorganization,
moratorium, or similar laws now or hereafter in effect relating to creditors'
rights; and
(d) neither the execution, delivery and performance of this
Agreement nor the consummation of the transactions contemplated hereby will
violate any provision of the charter or organizational documents of such Party
or any order or judgment of any court or government agency or authority.
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10.2 Representations and Warranties of InterTrust. In addition to the
--------------------------------------------
other representations and warranties contained herein, InterTrust represents and
warrants to Universal that as of the Effective Date:
(a) InterTrust owns or has all necessary rights, title and
interest to grant the licenses hereunder;
(b) to InterTrust's knowledge, neither the InterTrust
Technology, the InterTrust Trademarks nor the Licensed Rights infringe any
Person's patent, copyright or trade secret right, and there are no active claims
or allegations of any such infringement pending; PROVIDED THAT INTERTRUST
-------- ----
MAKES NO WARRANTY WITH RESPECT TO THE INFRINGEMENT OF ANY INTELLECTUAL PROPERTY
RIGHTS OTHER THAN THE FOREGOING REPRESENTIATON THAT IT IS UNAWARE OF ANY SUCH
INFRINGEMENT; and
(c) InterTrust has in good faith employed commercially
reasonable steps in accordance with the U.S. software industry practices to: (i)
[*] and/or [*] the inclusion in any InterTrust Technology of any [*] (or [*])
that are intended to [*], [*], [*] or otherwise [*] with the operation of the
InterTrust Technology or Universal Products or cause such technologies to [*]
in a [*] manner [*] with reasonable business practices; and (ii) design and
develop the InterTrust Technology as delivered to Universal pursuant to this
Agreement to operate without [*] caused directly by the [*] in the [*] to the
[*], and to accurately [*] (without material error) [*] and [*] associated with
the [*] and [*]. A summary of [*] that have been taken is included in Exhibit J
hereto.
10.3 Limitation. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT TO THE
----------
CONTRARY, THE INTERTRUST TECHNOLOGY IS PROVIDED "AS IS" WITHOUT WARRANTY OF ANY
KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OR MERCHANTABILITY, FITNESS FOR A PARTICULAR REQUIREMENTS AND
NONINFRINGEMENT AND INTERTRUST DOES NOT WARRANT AS TO ANY MATTER THAT INTERTRUST
TECHNOLOGY WILL MEET UNIVERSAL'S REQUIREMENTS OR THOSE OF ANY THIRD PARTY AND,
IN PARTICULAR, INTERTRUST DOES NOT WARRANT THAT THE INTERTRUST TECHNOLOGY WILL
BE ERROR FREE OR WILL OPERATE WITHOUT INTERRUPTION.
10.4 Reporting Covenants. InterTrust shall promptly inform Universal
-------------------
Executive, in writing, of any breach by InterTrust of any provision hereunder
that comes to the attention of an InterTrust Designate Officer. Universal shall
promptly inform an InterTrust Designated Officer, in writing, of any breach by
Universal, an Authorized Venture (including any participant therein), and/or
Customer hereunder, of any provision hereof, or of the applicable sublicense or
Customer Agreement, that comes to the attention of a Universal Executive.
11. INDEMNIFICATION AND REMEDIES.
11.1 Indemnification.
---------------
(a) InterTrust Indemnification. InterTrust shall indemnify,
--------------------------
defend and hold Universal and its employees, agents, officers and directors (the
"Universal Parties") harmless from any and all liability, judgments, costs,
-----------------
damages, claims, suits, actions, proceedings, expenses and/or other losses,
including reasonable attorneys' fees (collectively, "Claims") or portions
------
thereof, to the extent awarded by a court of competent jurisdiction or pursuant
to a settlement as provided hereunder, resulting from controversies or
litigation asserted by any third Person against the Universal Parties arising
directly or indirectly from: (i) InterTrust's breach of any of its obligations
under this Agreement, or its representations and warranties set forth herein;
and (ii) Universal's proper use of InterTrust Trademarks as set forth herein;
provided, however, that, with respect to InterTrust's representations under
- -------- ------- ----
Section 10.2(b) hereof, this indemnity does not extend to any Claim relating to:
(1) any Modified Technology or other modifications thereto made by Universal or
any third Person or combinations of the InterTrust Technology with any product,
technology or service of Universal or of any
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
39
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Person where such Claim (to the extent directly related to such modifications or
combination) would have been avoided in the absence of such modification or
combination; or (2) the use of any InterTrust Technology in any manner
inconsistent with InterTrust Specifications or Documentation where such Claim
(to the extent directly related to such inconsistency) would have been avoided
in the absence of such inconsistent use.
(b) Universal Indemnification. Universal shall indemnify, defend
-------------------------
and hold InterTrust, its employees, agents, officers and directors (the
"InterTrust Parties") harmless from any and all Claims or portions thereof to
------------------
the extent awarded by a court of competent jurisdiction or pursuant to a
settlement as provided hereunder, resulting from controversies or litigation
asserted by any third Person against the InterTrust Parties arising directly or
indirectly from: (i) Universal's breach of any of its obligations under this
Agreement, or its representations and warranties set forth in Section 10 hereof;
(ii) InterTrust's proper use of Universal Trademarks as set forth herein; and
(iii) the design, manufacture, use, distribution and/or disposition by or for
Universal of Modified Technology, Universal Products, performance of any service
associated with the foregoing, and/or other exercise by Universal of the
licenses hereunder, except where such Claims (1) would have arisen solely out of
InterTrust Technology as directly provided to Universal by InterTrust in the
absence of Universal activities hereunder other than the development and
distribution of solely InterTrust Technology, or (2) arose out of modifications
to Universal Products which were expressly required by InterTrust Specifications
and the implementations of such modifications have been expressly approved in
writing by an InterTrust Designated Officer or an InterTrust delegate acting
under the direction of InterTrust pursuant to a Certification Program as set
forth in Section 5.2; and further, except to the extent Universal is indemnified
by InterTrust under Section 11.1(a) hereof.
(c) Third Party Claims. In case any Claim is brought by a third
-------------------
Person for which Claim indemnification is or may be provided hereunder the
indemnified Party shall provide prompt written notice thereof to the other
Party. Where obligated to indemnify such Claim, the indemnifying Party shall
assume the defense thereof (at the expense of the indemnifying Party) within
thirty (30) days or at least ten (10) days prior to the time a response is due
in such case, whichever occurs first. The Parties shall cooperate reasonably
with each other in the defense of any Claim, including making available (under
seal if desired, and if allowed) all records reasonably necessary to the defense
of such Claim, and the indemnified Party shall have the right to join and
participate actively in the indemnifying Party's defense of the Claim, at
indemnifying Party's expense for co-representation of counsel or at its own
expense for independent counsel, except that the indemnifying Party shall pay
for reasonable expense of independent counsel for the indemnified Party where
the indemnified Party is advised by outside legal counsel that a material
conflict of interest exists in such defense being provided by the indemnifying
Party. Notwithstanding the foregoing (and any other section of this Agreement),
it is understood and acknowledged that InterTrust need not under any
circumstance provide Top Secret Information related to the security capabilities
of InterTrust Technology to any Person except nothing in the immediately
foregoing shall apply to the Top Secret Disclosure Procedures in Section 9.4
hereof. Each Party shall be entitled to prior notice of any settlement of any
Claim to be entered into by the other Party and to reasonable approval of a
settlement to the extent such Party's rights would be directly and materially
impaired thereby. Without limiting the foregoing, in the event of any Claim or
threatened Claim that the InterTrust Technology infringes any third Person's
Intellectual Property Rights: (1) upon Universal's request, InterTrust will use
[*] to [*] the [*] or [*] for Universal to [*] and otherwise [*] in
accordance with the terms and conditions hereof such portion of [*] on [*]
reasonably acceptable to both Parties, each in the exercise of its own
discretion (except that Universal shall be solely responsible for paying all
[*] or [*] of any kind in connection with such [*] and, therefore, may
exercise its sole discretion with respect to reasonable approval of any terms
relating to [*] of any such [*]); or (2) at InterTrust's sole discretion,
InterTrust may use [*] to [*], [*] or [*] any such [*] of the [*], as the case
may be, so as to [*] of the [*] while maintaining [*] of such [*] or [*] of
the InterTrust Technology that are material to Universal's then-current use of
such technology. If options (1) and (2) are not [*] in each Party's reasonable
discretion: (A) Universal shall have the right, as its sole and exclusive
remedy in connection with such Claim, threatened Claim or action of InterTrust
in accordance with this Section 11.1(c), to terminate, without any liability,
the licenses granted hereunder, so long as such Claim or threatened Claim or
action of InterTrust relates materially to the performance of InterTrust
Technology as used by Universal; and (B)
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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InterTrust shall have the right to, if it has a material risk of liability from
Universal's or its sublicensees' continued use of such portion of InterTrust
Technology (and further has not succeeded in obtaining or modifying the
technology in accordance with the foregoing subparagraphs (1) and (2)),
terminate, without any liability, the licenses granted hereunder, and any such
termination shall be upon thirty (30) days prior written notice. If at any time
during the Term InterTrust grants to any third Person in the Entertainment Field
in connection with a license to InterTrust Technology [*] set forth in the
immediately two preceding sentences, Universal [*], so long as Universal has
continuously treated and continues to treat, Intertrust Technology as its
Preferred Technology at all times in a consistently uninterrupted manner in all
material respects, and any evaluation of [*].
11.2 Cumulative Remedies. Except as expressly provided herein to the
-------------------
contrary, no remedy made available to a Party by any of the provisions of this
Agreement is intended to be exclusive of any other remedy, and each and every
remedy shall be cumulative and shall be in addition to every other remedy given
hereunder or now or hereafter existing at law or in equity or by statute or
otherwise.
11.3 Equitable Remedies. Each Party agrees that it may be impossible
------------------
or inadequate to measure and calculate a Party's damages from any breach of the
covenants set forth in Sections 4.5, 5, 6.7, 7, 8.4, 9, 11.1(c) solely with
respect to the obligation to defend, 13.3(a), 14.5 and 14.8 hereof. Accordingly,
each Party agrees that if it or any of such Party's Agents thereof breach or
threaten a breach or anticipatory repudiation of any of such provisions, in
addition to any other right or remedy available, the other Party shall be
entitled: (i) to obtain an injunction against the breaching Party and such
Party's Agents thereof, from a court of competent jurisdiction restraining such
breach or threatened breach; and (ii) to specific performance of any such
provision of this Agreement; provided that the foregoing shall not relieve such
other Party from any legal requirement to show irreparable harm and likelihood
of success on the merits.
12. EXCLUSION OF DAMAGES.
EXCEPT AS SET FORTH IN THE IMMEDIATELY FOLLOWING SENTENCE, NEITHER PARTY SHALL
BE LIABLE TO THE OTHER PARTY, ITS AGENTS, AFFILIATES, CUSTOMERS, OR ANY OTHER
PERSONS, FOR ANY LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES,
ARISING OUT OF THE BREACH OF THIS AGREEMENT OTHER THAN UNDER SECTIONS 7, AND 9
AS PROVIDED IN THE IMMEDIATELY FOLLOWING SENTENCE. NOTWITHSTANDING THE
IMMEDIATELY PRECEDING SENTENCE, A PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR
ALL DAMAGES, INCLUDING LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL
DAMAGES SUFFERED OR INCURRED BY THE OTHER PARTY IN THE FOLLOWING CIRCUMSTANCES:
(i) THE MISAPPROPRIATION OF TRADE SECRETS OF THE DAMAGED PARTY BY THE LIABLE
PARTY, OR ITS AGENTS; (ii) THE BREACH OF SECTIONS 7, OR 9 HEREOF WITH RESPECT TO
ANY CONFIDENTIAL INFORMATION OR TOP SECRET INFORMATION DISCLOSED IN WRITING AND
MARKED AS CONFIDENTIAL OR TOP SECRET IN ACCORDANCE WITH SECTION 9 OR CONFIRMED
IN WRITING AS CONFIDENTIAL OR TOP SECRET (SUCH AS AFTER ORAL DISCLOSURE), BUT
SOLELY WHERE SUCH BREACH OCCURRED AFTER SUCH CONFIRMATION OR MARKING IN WRITING;
OR (iii) WILLFUL AND BAD FAITH BREACH OF THIS AGREEMENT OF ALL MATERIAL
OBLIGATIONS UNDER THIS AGREEMENT.
13. TERM AND TERMINATION.
13.1 Agreement. This Agreement shall commence on the Effective Date
---------
and, unless and until terminated earlier in accordance herewith, shall continue
for a period of ten (10) years (the "Initial Term"). At the end of such Initial
------------
Term, if and only if Universal shall have at all times during the Initial Term
(except for the initial eighteen (18) month period thereof) treated InterTrust
Technology as its Preferred Technology on a consistently uninterrupted manner in
all material respects, this Agreement shall continue for so long and solely for
so long, as Universal continues to treat InterTrust
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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Technology as its Preferred Technology (the "Term"). If at any time Universal,
----
by decision of any of its executive management with authority to make such
decision, intentionally ceases, or decides to cease and takes material steps
towards ceasing, treating InterTrust Technology as its Preferred Technology,
Universal shall provide InterTrust with reasonably prompt written notice of such
actions or decision and, if the Initial Term has expired InterTrust may
terminate this Agreement upon thirty (30) days prior written notice. It is
acknowledged and agreed that Universal will have the opportunity to cure any
interruption in treatment of InterTrust Technology as its Preferred Technology
-- so long as such interruption was not the result of an intentional decision
of any of its executive management directed at ceasing the treatment of
InterTrust Technology as Universal's Preferred Technology -- in the same manner,
and in accordance with the timing and procedures set forth in Section 13.2(a)
after its receipt of any written notice from InterTrust describing in reasonable
detail the nature of any interruption known to InterTrust officers (the
"InterTrust Preferred Cure Notice"). In the event Universal fails to cure such
--------------------------------
interruption as specified previously above and reinstate the treatment of
InterTrust Technology as the [*] in accordance with the foregoing and the cure
provisions of Section 13.2(a), Universal shall be deemed to have failed to treat
InterTrust Technology as its [*] for purposes of this Section 13.1 and the
Initial Term shall not be extended or if the Initial Term is then already
extended InterTrust may immediately terminate this Agreement upon thirty (30)
days prior written notice.
13.2 Events of Termination. This Agreement and the licenses granted
---------------------
hereunder shall be subject to termination upon the occurrence of any of the
following events and such other provisions hereof expressly so stating (each, an
"Event of Termination"):
--------------------
(a) If either Party materially defaults on any of its material
obligations under this Agreement (or a Customer Agreement, as applicable) the
non-defaulting Party (or InterTrust in the case of a breach by a Universal
Customer) shall have the right, exercisable in its sole discretion, to initiate
a termination procedure under this Agreement by written notice (sent in
accordance with the provisions of Section 14.6 hereof) describing with
reasonable specificity the nature of the default and requiring that such default
be cured (the "Default Notice"), wherein such Default Notice shall automatically
--------------
result in termination unless: (i) within sixty (60) calendar days of receiving
such Default Notice (the "Cure Period"), the defaulting Party remedies the
-----------
default; or (ii) in the case of a default that cannot with earnest due diligence
be cured within the Cure Period, the defaulting Party institutes, by the date
upon which one half of the Cure Period shall have expired, steps necessary to
remedy the default and thereafter employs best efforts to diligently prosecute
the same to completion no later than six (6) months from the date of such
Default Notice. Notwithstanding the foregoing, the Cure Period associated with a
breach of payment obligations in accordance with Section 6 shall be thirty (30)
days. Notwithstanding any of the foregoing, a Party shall have the right both to
immediately terminate this Agreement and to injunctive relief as set forth in
Section 11.3 in the event the other Party or any of its Agents engages in any:
(1) intentional, material unauthorized use of technology outside of the rights
granted hereunder (or, in the case of Universal, any unauthorized disclosure of
information marked or confirmed by InterTrust in accordance herewith as
InterTrust Top Secret Information) and/or (2) willful, material unauthorized
disclosure of Confidential Information or Top Secret Information, provided that
such was conducted in intentional violation of this Agreement and where, in the
case of InterTrust any InterTrust Designated Officer or other executive manager,
and in the case of Universal any Universal Executive, had knowledge of such
intended unauthorized use or disclosure prior to the occurrence of any such
acts. The non-defaulting Party agrees to use reasonable efforts to advise the
defaulting Party after the occurrence of a default by the defaulting Party of
any material obligation under this Agreement promptly upon such non-defaulting
Party's officers or other executive management becoming aware of such default.
In the event a non-defaulting Party fails to provide a Default Notice within
ninety (90) days after officers or other executive management of such non-
defaulting Party (and in the case of InterTrust, executive management including
the Chairman and/or President, and General Counsel and/or VP, Legal), and in the
case of Universal, executive management including one or more Universal
Executives) have reviewed facts regarding a default (including any
correspondence between the Parties) that justifies termination of this Agreement
and has determined to commence termination of this Agreement under this
subparagraph (a) as such determination is represented in a written statement or
memorandum, such non-defaulting Party shall be deemed to have waived its right
of termination of this Agreement under this subparagraph (a); provided that such
waiver shall not limit any right to recover damages or other rights or remedies
of such non-defaulting Party under this Agreement or at law or in equity.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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(b) By a Party at its option, effective immediately upon
written notice to the other Party, in the event of: (i) the filing by the other
Party of a petition in bankruptcy or insolvency; (ii) the appointment of a
receiver for the other Party for all or substantially all of its property
relevant to the business activities under this Agreement; (iii) the making by
the other Party of any assignment or attempted assignment for the benefit of
creditors for all or substantially all of its properties relevant to its
business activities under this Agreement; or (iv) this institution of any
proceedings for the liquidation or winding up of the other Party's business or
for the termination of its corporate charter, if any such proceeding is not
dismissed within one hundred and twenty (120) days of institution ;
(c) Upon written notice to Universal, InterTrust may
immediately terminate this Agreement in its discretion in the event: (i)
Universal fails (1) to generally distribute any Universal Products within
eighteen (18) months from the date InterTrust first delivers the Commerce 1.1 to
Universal, and/or makes no release of any Universal Product materially
commercially available for any consecutive eighteen (18) month period during
this Agreement, provided that such time period shall be extended by any period
-------- ----
in which (A) there exists a Material Defect in the InterTrust Technology that
materially impedes Universal's development and distribution efforts, but only
for the period from the date that Universal documents such defect as provided in
Section 3.2(b) hereof to the date InterTrust has reasonably corrected or
mitigated such defect as provided in Section 3.2(b), or (B) there exists a delay
in InterTrust's response with respect to certification of Universal Product as
stipulated in Section 5.2(c)(iii), (2) after the Initial Support Period to
timely make payments due under this Agreement on three or more occasions over an
[*] month period where InterTrust has provided to Universal a written warning
notice after the second occasion that any further failure to timely make
payments will be subject to InterTrust's termination hereunder, or (3) engages
in conduct directly contrary to a partnering relationship by providing, or
positioning itself as a provider, to multiple third Persons (other than its
distributed labels who distribute music under the Universal Trademarks) of any
Special Advanced Technology (other than InterTrust Technology) wherein such
Special Advanced Technology has been developed specifically by and/or for
Universal (and provided that the foregoing provisions of this subparagraph (3)
shall not be construed to include licensed activities as set forth herein); or
(ii) any litigation is initiated against any Person entitled to the benefits of
the licenses under Section 7.3 arising out of or alleging infringement of any
intellectual property right of Universal or its Controlled affiliates, or
Persons acting under Universal's or such Controlled affiliate's direction and/or
control, where such intellectual property right would have been licensed under
Section 7.3 hereof had such intellectual property right been held by Universal;
and
(d) By Universal by providing written notice to InterTrust
within the thirty (30) days of the date which is eighteen (18) month after the
Effective Date where: (i) the Commerce 1.1 of InterTrust Technology contains [*]
that render such technology [*] and from being [*] in a software-only
implementation as would be reasonable for a distributed peer-to-peer software
instantiation ("[*]"); and (ii) Universal has provided InterTrust written notice
---
of such [*] in the same manner as set forth in Section 3.2(b) as early as
possible after discovery of such [*] and InterTrust has been given the
opportunity to review and undertake the cure procedures under Section 13.2(a).
The foregoing right of termination shall terminate and no longer be exercisable
if at any time Universal has transferred any Universal Product to third Persons
(other than Contractors and Persons participating in a non-commercial beta test
for no monetary remuneration). Upon the exercise of the foregoing termination
right under this subparagraph (d), notwithstanding any contrary provisions
contained herein, any and all rights and licenses of Universal under this
Agreement (including the rights and licenses under Section 13.3(b)) shall
immediately terminate.
13.3 Effect of Termination.
---------------------
(a) General. Upon the expiration or termination of this
-------
Agreement and except (and solely except) as set forth in Section 13.3(b) hereof:
(i) all licenses granted hereunder, and all sublicenses and delegations granted
or made hereunder, shall automatically terminate; (ii) InterTrust shall have the
right to retain all sums already paid by Universal hereunder, and Universal
shall pay to InterTrust within thirty (30) days thereafter all sums owed
InterTrust according to the terms and conditions hereof subject to adjustments
in accordance with Section 6.7; and (iii) Universal shall immediately
discontinue use of InterTrust Technology and/or the use of any portion of such
InterTrust Technology in
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
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any Modified Technology, and discontinue making, using, selling or otherwise
transferring or exploiting any product or service that in the absence of a
license hereunder would infringe any InterTrust Intellectual Property Rights
(including termination of distribution of Universal Products and any associated
services); provided, however, that all licenses properly granted to end-users
-------- ------- ----
pursuant to the then-existing Customer Agreements solely for Universal Products
shall continue in full force and effect in accordance with the terms thereof
(provided that such licenses do not provide any rights to such end-users with
respect to Clearinghouse Functions, other than as expressly provided hereunder).
Each Party shall deliver to the other Party within thirty (30) days from the
date of termination of this Agreement all copies of all materials protected as
Confidential Information or Top Secret Information under this Agreement,
including all copies under its control or under the control of its Agents.
Return of Confidential Information shall be by commercially secure means as
reasonably specified by the receiving Party. Return of Top Secret Information
shall be made, at InterTrust's option as specified by a InterTrust Designated
Officer by written instruction to Universal: (a) by physical and secure pickup
at Universal's offices by an InterTrust officer designated in writing by such
InterTrust Designated Officer; or (b) as otherwise may be determined by
InterTrust in its discretion, as commercially reasonable. Such delivery shall be
during normal business hours and in each instance to the hands of an InterTrust
officer who receives a listing of the contents of such delivery certified by an
officer of Universal and audited and countersigned by such InterTrust officer.
Within one (1) month after the termination of this Agreement, each Party will
certify in writing to the other Party that, to the best of its knowledge, all
such materials and tangible embodiments have been delivered to the other Party.
(b) Limited License for Maintenance of Legacy Content. Upon the
----------------------------------------------
expiration of the Term (and if Universal shall have complied with its
obligations under Sections 5.1, 7, 8.4 and 9 and other provisions of this
Agreement), Universal shall continue to have the [*] (the "Legacy License"),
--------------
for the term of the useful life of the Legacy Product (as defined below), solely
to: (i) [*] InterTrust Technology to [*] and [*] for Universal Products that
have then been [*] as of the date of such expiration or termination ("Legacy
Products"); (ii) [*] Compliance Updates to users of such Legacy Products in
accordance with the terms and conditions hereof; and (iii) have an Authorized
Clearinghouse Provider perform Clearinghouse Functions for InterRights Point [*]
such Legacy Products. The Legacy License (and Universal's exercise thereof)
shall at all times be contingent upon Universal compliance with: (1) Sections 1,
5.2, 5.3, 5.5, 5.7, 6.1, 6.3, 6.4, 6.5, 6.6, and 7.3; and (2) those Sections
that survive in accordance with Section 13.4. Nothing contained herein shall be
construed to grant Universal any right to, and Universal agrees not to, perform
any Clearinghouse Functions after the expiration of the Term or termination of
this Agreement pursuant to Section 13.1.
13.4 Survival. The respective rights and obligations of
--------
InterTrust and Universal under the provisions of Sections 4.4, 4.5, 5.2, 5.4,
5.5, 6.6, 6.7 (but only for a period of five (5) years), 7.1, 7.2, 8.4 (but only
in the event that Universal has breached this Agreement), 9, 10.3, 10.4, 11 (but
only 11.1(b), 11.1(c), 11.2 and 11.3 as applicable to Section 13.3(b)), 12, 14,
and this Section 13 shall survive expiration or termination of this Agreement.
14. MISCELLANEOUS.
14.1 Governing Law. This Agreement, any and all actions arising
-------------
out of or in any manner affecting the interpretation of this Agreement, and any
actions between the Parties involving the InterTrust Technology, any InterTrust
Property and/or any Confidential or Top Secret Information ("Party Disputes")
--------------
shall be governed solely by, and construed solely in accordance with, the laws
of the United States of America and: (i) the substantive and procedural law
(excluding that body of law involving conflicts of law) of the Commonwealth of
Virginia, where any claim, counterclaim or defense in such Party Dispute
involves a material issue based in whole or in part on, or concerning (including
where a decision as to such issue could directly affect the validity,
enforceability, ownership, scope or interpretation of any of the Party's
Intellectual Property Rights) any (a) InterTrust Confidential Information or Top
Secret Information, (b) InterTrust Property (as defined in Section 7.1), and/or
(c) Intellectual Property Rights (an "IP Dispute(s)"); and (ii) the substantive
-------------
and procedural law (excluding that body of law relating to conflict of laws) of
the State of California for Party Disputes that do not involve an IP Dispute,
unless trial and/or pre-trial preceding in such Party Dispute that does not
involve an IP Dispute
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
44
<PAGE>
CONFIDENTIAL
are joined and/or consolidated with an IP Dispute proceeding in accordance with
Section 14.2(iii), in which case the provisions of the immediately proceeding
subparagraph (i) shall apply to such Party Dispute. The Parties hereby
acknowledge and agree that the United Nations Convention on Contracts for the
International Sale of Goods shall not apply to this Agreement. To the extent
permitted by law, the provisions of this Agreement shall supersede any
provisions of the Uniform Commercial Code as adopted or made applicable to this
Agreement in any competent jurisdiction.
14.2 Venue and Jurisdiction. The Parties recognize the
----------------------
importance to: (i) InterTrust of having any litigation between the Parties
involving an IP Dispute adjudicated in the Federal District Court for the
Eastern District of Virginia (Alexandria Division) (or any direct successor
thereto), or, if required by law, the Commonwealth courts located in Alexandria,
Virginia (the "Virginia Venue"); and (ii) Universal of having any litigation
--------------
between the Parties not involving an IP Dispute adjudicated in the Federal
District Courts in California (or any direct successor thereto), or, if required
by law, such state courts there located (the "California Venue"). Therefore, in
----------------
connection with any litigation between the Parties involving an IP Dispute, each
Party hereby unconditionally and irrevocably consents to the exclusive
jurisdiction and venue in the Virginia Venue, and in any litigation between the
Parties not involving an IP Dispute, each Party hereby unconditionally and
irrevocably consents to the exclusive jurisdiction of the California Venue as
chosen by the plaintiff with respect to such claim. Consistent with the
immediately foregoing, each Party irrevocably: (i) waives any objection and
covenants that it shall refrain from making any motion concerning personal
jurisdiction, venue, transfer, or convenience of the Parties with respect to a
Party Dispute filed in said courts; (ii) consents to the service of process of
said courts in any matter relating to this Agreement by the mailing of process
by registered or certified mail, postage prepaid, at the addresses specified in
the Agreement (or if necessary, the appointment of a registered agent for
acceptance of service of process and/or other notices provided for under this
Agreement); and (iii) agrees that if any pending actions between the Parties are
required to be joined and/or consolidated in any manner (and one or more of such
actions involve an IP Dispute), the Virginia Venue shall be the venue that
exclusively presides over such joined and/or consolidated actions.
14.3 Compliance with Law and Export Controls. The Parties shall
---------------------------------------
at all times comply with all applicable U.S. and foreign federal, state, and
local laws, rules and regulations relating to the execution, delivery and
performance of this Agreement and to the InterTrust Technology Products and
Modified Technology. Additionally, Universal acknowledges that because one or
more aspects of the InterTrust Technology Products is likely to be subject to
the export control laws, regulations and requirements of the United States and
other jurisdictions, Universal Products likely will require export and other
approvals as well. InterTrust has obtained export approval concerning
implementations of Commerce 1.1, and with respect to additional InterTrust
Technology products, shall use commercially reasonable efforts at InterTrust's
expense and discretion to obtain additional license or other approvals, if any,
that may be required for InterTrust to make the InterTrust Technology and/or
Documentation or information relating thereto generally available
internationally. Universal shall use commercially reasonable efforts, at
Universal's expense, to comply with all applicable laws (including applicable
U.S. export control laws and regulations) and use commercially reasonable
efforts to obtain all necessary governmental consents and approvals in
connection with the distribution of or export or re-export of the Universal
Products (as well as other technology as expressly permitted hereunder) that
contain any part of the InterTrust Technology or Modified Technology in
accordance herewith. The Parties expressly agree that any failure to obtain or
any delay in obtaining such approval as to InterTrust Technology or in
connection with any Universal Product shall not relieve either Party from its
obligations under this Agreement.
14.4 Amendment or Modification. This Agreement may not be
-------------------------
amended, modified or supplemented by the Parties in any manner, except by an
instrument in writing signed by the President or Chairman of InterTrust and a
duly authorized officer of Universal.
14.5 No Assignment. Universal acknowledges that the licenses and
-------------
rights granted by InterTrust to Universal under this Agreement are personal to
Universal, and Universal shall not assign or transfer its rights or obligations
hereunder without the prior written consent of an InterTrust Designated Officer.
InterTrust shall not assign or transfer its rights or obligations hereunder
without Universal's prior written consent, which consent shall not be
unreasonably withheld. Notwithstanding the foregoing, InterTrust and/or
Universal shall be entitled to assign or transfer such rights or
45
<PAGE>
CONFIDENTIAL
obligations hereunder in connection with any merger or sale of substantially all
of assets, equity, or business of InterTrust and/or Universal (as applicable)
related to this Agreement provided that: (i) Universal may not assign or
transfer any such rights or obligations hereunder to a Person that is a
Competitive Entity; and (ii) any successor in interest to InterTrust shall, for
a period no less than six (6) months from the consummation of such merger or
sale, continue to actively and in good faith support InterTrust Technology in a
manner consistent with the practices of InterTrust immediately prior to a merger
or sale under this Agreement. Universal may assign this Agreement to Universal
Studios, Inc. or a Controlled affiliate thereof which, directly and/or
indirectly through its Controlled affiliates, own, control or have the exclusive
rights to license music Content branded under Universal Trademarks. Further,
Universal may not assign or transfer any such rights or obligations hereunder to
any Person that is materially coordinating material commercial efforts related
to content distribution or distributed Digital Rights Management with a Person
that is a Competitive Entity. Subject to the foregoing, this Agreement will
benefit and bind the successors and permitted assigns of the Parties. Any
attempted transfer or assignment without such approval shall be null and void ab
initio and of no force or effect; and the sole result of any failure to approve
such assignment or transfer of rights shall be termination of this Agreement in
accordance with the provision of Section 13.
14.6 Notices. Any notice or other communication to be given
-------
hereunder shall be in writing and shall be (as elected by the Party giving such
notice): (i) personally delivered; and (ii) transmitted by postage prepaid
registered or certified airmail, return receipt requested. Unless otherwise
provided herein, all notices shall be deemed to have been duly given on: (a) the
date of receipt (or if delivery is refused, the date of such refusal) if
delivered personally or by express courier; or (b) ten (10) days after the date
of posting if transmitted by mail. Notwithstanding the foregoing, communication
of Confidential Information or Top Secret Information shall be governed by
practices adequate to appropriately protect such information regarding Top
Secret Information or as may be specified herein or in the future by InterTrust.
Either Party may change its address for purposes hereof on not less than three
(3) days prior notice to the other Party. Notice hereunder shall be directed:
If to Universal: If to InterTrust:
70 Universal City Plaza, 3rd Floor 460 Oakmead Parkway
Universal City, California 91608 Sunnyvale, California94086
Attn: SVP Business & Legal Affairs Attn: General
Counsel
cc: Head of Electronic Commerce & Advance Technology
14.7 Waiver. Any provision of this Agreement may be waived by
------
the Party entitled to the benefit thereof. Neither Party shall be deemed, by any
act or omission, to have waived any of its rights or remedies hereunder unless
such waiver is in writing and signed by, in the case of InterTrust, InterTrust's
President or Chairman, and in the case of Universal, a Universal authorized
officer, and then only to the extent specifically set forth in such writing. A
waiver with reference to one event shall not be construed as continuing or as a
bar to or waiver of any right or remedy as to a subsequent event.
14.8 No Third Party Beneficiaries. Except as expressly provided
----------------------------
herein to the contrary, nothing in this Agreement is intended to confer, nor
shall anything herein confer, upon any Customer or any Person other than the
Parties and any respective successors or permitted assigns of the Parties, any
rights, obligations, or remedies hereunder.
14.9 No Agency. Nothing herein contained shall be construed to
---------
constitute the Parties hereto as partners or joint venturers or the agent of
the other Party in any sense of those terms whatsoever. Neither Party assumes
any liability of the other Party nor shall have any authority to enter into any
binding obligation on behalf of the other Party.
14.10 Severability. If the application of any provision or
------------
provisions of this Agreement to any particular facts or circumstances shall be
held to be invalid or unenforceable by any court of competent jurisdiction,
then: (i) the validity
46
<PAGE>
CONFIDENTIAL
and enforceability of such provision or provisions as applied to any other
particular facts or circumstances and the validity of other provisions of this
Agreement shall not in any way be affected or impaired thereby; and (ii) such
provision or provisions shall be reformed without further action by the Parties
hereto and only to the extent necessary to make such provision or provisions
valid and enforceable when applied to such particular facts and circumstances.
14.11 Counterparts; Facsimiles. This Agreement may be executed
------------------------
in any number of counterparts, each of which when so executed and delivered
shall be deemed an original, and such counterparts together shall constitute one
and the same instrument. Each Party shall receive a duplicate original of the
counterpart copy of copies executed by it. For purposes hereof, a facsimile copy
of this Agreement, including the signature pages hereto, shall be deemed to be
an original. Notwithstanding the foregoing, the Parties shall deliver original
execution copies of this Agreement to one another as soon as practicable
following execution thereof.
14.12 Force Majeure. Except as provided herein to the contrary,
-------------
if, by reason of labor dispute, strike, inability to obtain labor or materials,
fire or other action of the elements, accident, administrative or governmental
restriction or appropriation or other causes, whether like or unlike the
foregoing, beyond the reasonable control of a Party hereto, such Party is unable
to perform in whole or in part its obligations set forth in the Agreement, then
such Party shall be relieved of those obligations to the extent it is so unable
to perform, and such inability to perform, so caused, shall not make such Party
liable to the other Party. Notwithstanding the foregoing, in the event any such
cause delays either Party's performance of any of its material obligations under
this Agreement, the other Party may suspend its performance under this Agreement
of the period such delay continues. This Agreement may be terminated by notice
by the Party not seeking excuse from performance, if such event shall prevent
performance for longer than two hundred and seventy (270) days. The Party
subject to an event of force majeure shall use good faith efforts to comply as
closely as possible with the provisions of this Agreement and to avoid the
effects of such event to the extent possible.
14.13 Entire Agreement. This Agreement (together with Exhibits
----------------
hereto) represents the entire agreement of the Parties with respect to the
subject matter hereof and supersedes all prior and/or contemporaneous agreement
sand understandings, written or oral between the Parties with respect to the
subject matter hereof (except as set forth in Section 9.7 hereof).
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of
the date first written above by the undersigned duly authorized.
INTERTRUST TECHNOLOGIES UNIVERSAL MUSIC GROUP, INC.
CORPORATION
By:______________________________ By:___________________________
Name: Victor Shear Name:_________________________
Title: Chairman and Chief Executive Officer Title:________________________
47
<PAGE>
EXHIBIT A
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERTRUST TECHNOLOGY ESTIMATED PRODUCT DELIVERABLES
----------------------------------------------------
I. INTERTRUST TECHNOLOGY: PRODUCTS AND DOCUMENTATION
II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE
III. INTERTRUST AUTHORIZED CLEARINGHOUSE SOFTWARE
IV. INTERTRUST CORE TECHNOLOGY
<PAGE>
I. INTERTRUST TECHNOLOGY ESTIMATED PRODUCT DELIVERABLE
A. InterTrust Commerce Release 1.1
-------------------------------
The InterTrust Commerce Release 1.1 provides a broad range of software,
components and sample applications that allow developers to incorporate highly
flexible and distributed Digital Rights Management and the persistent protection
of digital information into computer software, and to support e-commerce
businesses, infrastructures and clearinghouses. In general, this software:
. facilitates the rapid integration of InterTrust(TM) secure electronic commerce
and digital rights management technologies into customer-specific
applications;
. enables development of rights management tools for viewing, packaging and
editing;
. allows the creation of Secure Containers for music-, video-, text-, image-
based, and other forms of digital content. DigiBox containers, in combination
with other InterTrust Technology capabilities, provide persistent protection
of digital information across information networks and through digital
distribution channels in a software-only manner;
. permits specification of conditions and consequences governing the use of
digital data and windows design compliant executables. These conditions may
include distributed usage management, auditing, and payment control related to
client interaction with (and usage of) digital information;
. has client and server support for Windows 95, Windows 98, and NT 4.0 and
server support for Windows NT 4.0 and Solaris 2.5.1;
. enables integration with customer-specific services, such as: payment,
financial and usage clearinghouses, multiple network protocols, database
systems, updates, etc; and
. supports deployment services for installation and registration.
InterTrust Technology may have, and Material Defects shall not include,
differing security characteristics regarding differing levels of tamper
resistance resulting from, for example, employing differing combinations of
tamper resistance design and techniques. For example, it is recognized that
software tamper resistance techniques will not be as resistant to attack as
hardware tamper resistance techniques, and certain tamper resistance techniques
will be more resistant to attack than other tamper resistance techniques and
that the degree of tamper resistance normally results from a combination of
techniques and design decisions, wherein various combinations have differing
degrees and characteristics of tamper resistance.
1. Commerce 1.1 Deliverables:
--------------------------
Commerce 1.1 delivers software, development tools, and documentation for
creating InterTrust-aware applications and run-time environments, and provides
the framework for clearinghouse activities and deployment activities, including
deployment administration. Production-level core InterTrust software,
application programming interfaces and tools, and sample software applications
are provided.
The deliverables represent product sets, each targeted to support a different
are of InterTrust rights functionality. They are:
. Application Developer's Kit ("ADK");
---
. Transaction Authority Software, including the Clearinghouse Developer's Kit;
<PAGE>
. Deployment Manager Developer's Kit; and
. InterRights(TM) Point (Golden Master).
In Commerce 1.1, these product sets are released together. For future releases,
and at InterTrust's discretion, these product sets may be independently
delivered and may be available as independent deliverables.
a. Applications Developer's Kit 1.1:
---------------------------------
The Application Developer's Kit provides programming libraries, sample
applications that demonstrate packaging and viewing, certain deployable
application and components, source code for the sample applications, pre-
activated (non-deployable) InterRights Points for test purposes, and
documentation.
. Core Technology Software - Object Code
- InterTrust Programming Libraries (including ITAPI, the Layout Interpreter
Library, Rights Management Library, and utility libraries).
- Pre-activated InterRights Points (software to support the development
environment).
- ITAPI: The programming interface to the InterRights Point software
includes functions that are used to package and read DigiBox containers,
specify business rules, and perform administrative functions associated
with use of DigiBox containers.
- InterTrust Interoperability Library [*]: This interface uses ITAPI to
construct various governed elements, such as budget objects, [*] objects,
and [*] objects. It manages the construction of the controls required for
these objects and is intended to provide consistent use of those controls
to help enable interoperability of objects.
- InterTrust Layout Interpreter Library [*]: The internal organization of a
DigiBox container usually is specified in a layout template produced by the
Layout Editor and interpreted by both packaging and viewing applications
using the Layout Interpreter programming interface.
- Rights Management Library [*]: Applications can use this class library to
create and manipulate controls (business rules) rather than writing
directly to the ITAPI to do so.
. Applications and Components - Source Code and Object Code (include)
- InterTrust Rights Wallet(TM) and core Rights Wallet(TM) applets: supports
administration of the InterRights Point in the packaging and viewing
environment. These provide an administrative interface to the InterRights
Point software to enable users of the system to set budgets, set passwords,
commence payment activities, and perform other administrative functions
associated with use of DigiBox containers and the InterRights Point
software.
- InterTrust Layout Tool (executable and source code): a graphical editing
tool for creating DigiBox container layout templates that are later used in
packaging operations. This tool creates a content layout template that
specifies how the elements representing digital content in a DigiBox
container will be organized. XXX can use the basic template supplied with
the InterTrust Packager, or can use this tool to create different templates
for its own content. Templates facilitate interoperability among packaging
and viewing applications that use the InterTrust software.
- InterTrust Rights Selector (executable and source code): an [*] component,
intended to be embedded in viewer applications, for displaying rights
controls in readily human-readable and manipulable format. The Rights
Selector component reads a set of business rules (controls) from a DigiBox
container and displays them in human-readable form; and
[*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
- InterTrust Survey/License Control (executable and source code): an [*]
component, intended to be embedded in viewer applications, for presenting
HTML based survey and license agreements to consumers.
- InterTrust Packager: sample software that creates a DigiBox container,
places specified content into a DigiBox container, associates business
rules and specified controls with the content, and places such rules inside
the container as well;
- InterTrust Viewer: sample software that reads the contents of a DigiBox
container created with an InterTrustworthy Packager; displays the rules
that govern use of the content; and, after the user agrees to those rules,
displays, prints, or saves the content as specified by the business rules.
This application implements InterTrust defined [*] component interfaces to
invoke survey and license agreement mechanisms and supports a plug-in
interface for handling specific media types;
- InterTrust Media [*] Control: a sample [*] component that demonstrates how
to build plug-in media handlers; and
- InterTrust Installer.
b. Transaction Authority Software:
------------------------------
The Transaction Authority software provides the framework for Clearinghouse
activities and Deployment activities, including deployment administration.
. Core Technology: Object Code Format (except as noted):
- Transaction Authority Framework Software - secure communication
infrastructure and protocols, general processing of incoming data, and
database storage. The Transaction Authority Framework (TAF) software is a
software framework made up of several components that handle the secure
reception and processing of DigiBox containers. It is designed to enable
validation and processing of requests that require interaction between an
InterRights Point and some financial or management authority, called a
transaction authority.
- Deployment Manager Software - a set of programs for secure node deployment
and initialization, provision of naming services to nodes, and provision of
secure date and time services to nodes. It initializes each InterRights
Point and authorizes addition of new users. It authorizes backup and
restores activities of provider and consumer systems. It is also
responsible for key distribution and name services within a deployment.
(Source Code provided for those portions of the software that may be
altered).
- Installer Software: Software for tamper-resistant installation of the
InterRights Point (Source Code provided for those portions of the software
that may be altered).
. Clearinghouse Sample Applications and Components - Source Code and Object
Code:
- Usage Clearinghouse Application--sample software for gathering and
aggregating usage information, such as usage audits and user profiles;
- Financial Clearinghouse Application--sample software for performing
prototypical clearinghouse functions in the area of financial clearing;
- Deployment Service Prototype Component--sample software for customizing an
initialized InterRights Point (e.g., associating that InterRights Point
with a particular InterTrust deployment and obtaining installation
demographics)
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
c. InterRights Point (Golden Master):
---------------------------------
The Golden Master provides a deployable version of the InterRights Point
software that may be replicated for distribution. The InterRights Point is the
component that provides secure processing of DigiBox containers and enforces
business rules. In Commerce 1.1, the InterRights Point software is a
cooperating or server process that can run on Microsoft Windows95, Windows 98,
and Windows NT 4.0. The InterRights Point software presents the InterTrust
Application Programming Interface (ITAPI) to applications. This interface has a
proxy or "client" portion that communicates via RPC with a "server" portion.
This server side of the ITAPI then makes requests of the Protected Processing
Environment(TM) (PPE) software in the InterRights Point. The PPE software does
the actual secure manipulation of containers.
The client-server implementation used for ITAPI allows an application and the
InterRights Point to be located on the same machine or on different ones. The
interface supports multiple local and remote clients and also multiple
simultaneous users.
d. Additional Application: Commerce Modeler(TM) Software. (Provided for
----------------------
Internal use, but not redistribution, without change):
The Commerce Modeler is a rights/business rules programming environment. It
provides a graphical programming environment where simple to complex rights
based business models can be laid out on a visual canvas. Employing building
block components called "Intents", a user can layout a variety of business rule
sets that can be manually or automatically associated with content structural
elements defined through use of the Layout Tool. Layout sets can be composed of
logical, user determined combinations of rule Intents, as well as associated
parameter data.
2. Commerce 1.1 Documentation:
---------------------------
- Commerce 1.1 Overview
- Commerce 1.1 Installation and Configuration Guide
- Commerce 1.1 Glossary
- Applications User's Guide
- Application Developer's Guide
- Application Developer's Kit: Supplemental Libraries
- Application Developer's Kit: ITAPI Vol 1 Concepts
- Application Developer's Kit: ITAPI Vol 2 Reference
- Application Developer's Kit: Interoperability Library
- Application Developer's Kit: Rights Metafile Format
- Clearinghouse Developer's Guide
- Deployment Manager Developer's Guide
Note: Source (where applicable and made available). Object Code for Windows
95, Windows 98, and Windows NT 4.0 for client software and Windows NT 4.0 and
Solaris 2.5.1 for server software. Additional platforms under development,
and to be supplied by InterTrust as available and determined by InterTrust in
its discretion.
II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE AND CORE TECHNOLOGY
Your Agreement contains provisions that: (1) prohibit modification of InterTrust
Technology (that is designated Core Technology) (files noted as "Core
Technology" may not be modified; files expressly noted herein to be
"Customizable" Technology may be modified), and (2) restrict redistribution of
any software except "Authorized Application Software" (files noted as
"Authorized Application Software" may be distributed, as applicable solely in
accordance with the terms and conditions hereof and in the Agreement; files not
expressly noted as "Authorized Application Software" may not be distributed).
(Any information concerning Customizable Technology or "Core Technology" found
in source files themselves may not be relied upon and shall be superseded by the
designations noted herein). Any and all further restrictions noted
<PAGE>
in the file (or Agreement) concerning distribution (such as with the IRP Golden
Master process) must be adhered to or such file shall not be Authorized
Application Software. As of the Effective Date there is no Authorized
Clearinghouse Software.
LISTING OF CUSTOMIZABLE TECHNOLOGY AND AUTHORIZED APPLICATION SOFTWARE
REDISTRIBUTION OF NON-SOURCE FILES
All references to file and directory locations refer to the default installation
directories, which are set by the user at installation.
The binary and online help files listed below are "Authorized Application
Software" and may be redistributed, solely subject to terms and conditions of
the Agreement. All other files may not be redistributed (except as specifically
noted separately in the Source File section below):
[*]
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
SOURCE FILE CUSTOMIZATION AND REDISTRIBUTION
Source files contained in the directories listed in this section are
"Customizable" and may be modified solely as expressly provided therein. In
some cases, redistribution of the customized output is authorized and such files
are Authorized Application Software for redistribution solely subject to terms
and conditions of the Agreement. The paragraph preceding each section describes
the customization and redistribution restrictions. Source files in any
directory not listed in this section may not be modified or changed in any
manner.
* CUSTOMIZABLE, BUT REDISTRIBUTABLE ONLY VIA THE IRP GOLDEN MASTER PROCESS
The source files contained in the directories listed immediately below are
customizable but are redistributable only via the IRP Golden Master
redistribution process and solely subject to terms and conditions of your
Agreement:
[*]
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
* CUSTOMIZABLE BUT NOT REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY)
The source files contained in the directories listed immediately below are
customizable but not redistributable in any manner:
[*]
* REDISTRIBUTABLE ONLY
The source files contained in the directory listed immediately below are
redistributable (subject to terms and conditions of your Agreement) but may not
be modified or changed in any manner
[*]
* CUSTOMIZABLE AND REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY)
The source files contained in the directories listed immediately below are
customizable and redistributable (solely subject to terms and conditions of your
Agreement):
[*]
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]
The source files contained in this directory are third-party files which are
customizable
if the instructions contained in those files are correctly followed:
[*]
III. SPECIAL ACKNOWLEDGMENTS AND THIRD PARTY LICENSE REQUIREMENTS
It is acknowledged and understood that the certain software modules of the
Commerce 1.1 InterTrust Technology may employ or may operate with third Person
technology that is included with the technology made available by InterTrust to
Licensee under the Agreement. This information is also found in the source
files of the Commerce 1.1 software. The following describes the third Person
technology, the InterTrust software where such third Person technology is used,
and InterTrust's and Licensee's rights and licenses therein. Licensee's use of
the third Person technology is limited by the terms of any licenses or rights
that InterTrust may have therein and may sublicense to Licensee.
A. Third Person Technology Used in Certain Provided Sample Applications.
* Certain portions of the Software contain software provided under license to
InterTrust from Inso Corporation. The Inso software is contained in files in the
following directory, [*] (where [*] is the default
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
installation directory which is set by the user at the time of installation) and
is required by the InterTrust viewer application of the Software. InterTrust's
agreement with Inso provides that InterTrust has the perpetual right to use the
Inso Software to develop, use and support its viewer application (including
distributing the Inso software to its licensees and allowing further
distribution by InterTrust's licensees) solely in InterTrust's viewer
application as executable code as relates solely to distributable formats (HTML,
ASCII, ANSI, Unicode, MS Word, BMP, GIF, JPEG, WMF); provided that you abide by
-------- ----
the terms of InterTrust's license with Inso (which is attached as Attachment A-1
hereto). As relates to all other non-distributable formats, use of these files
by InterTrust and all licensees is for internal development and use, and
demonstration purposes only (except where the terms and conditions of a separate
----
agreement are satisfied). If you decide to use the InterTrust viewer application
in connection with non-distributable formats for redistribution to end-users,
you will need to obtain a license for such use from Inso.
* Certain portions of the Software contains software provided under license to
InterTrust from Basis Technology Corporation ("Basis"). The Basis Software is
contained in the [*] file in binary form. (c) Basis Technology All Rights
Reserved. InterTrust's agreement with Basis has a perpetual term that may be
terminated: (i) at will by InterTrust; and (ii) by Basis upon written notice to
InterTrust upon breach by InterTrust and 30 days opportunity to cure. Under the
agreement, InterTrust has a license to: (a) use the Basis Software for internal
software development and testing; (b) incorporate the Basis Software into
products and redistribute such software provided that it is an integral
component such products; (c) modify the Basis Software or combine the Basis
Software with other products, provided that the such derivative products remain
subject to the terms of the Basis agreement; (d) make archival or backup copies
of the Basis Software; and (v) to redistribute the Basis Software in object or
source code to customers authorized to use InterTrust technology and to allow
such customers to exercise the rights described in subsections (a)-(d) above,
provided that such customer agrees to abide by the terms of the Basis Software
License and Services Agreement attached hereto as Attachment A-2.
B. Third Person Technology Used In Core Technology.
* Certain portions of the Core Technology software (as indicated in such
portions' source files) have used [*] and [*], to which this notice applies and
which may be used by you provided that this notice is included: [*] Copyright
(C) 1990-2, [*] Copyright (C) 1991-2, [*] Inc. All rights reserved. License to
copy and use this software is granted provided that it is identified as the
"[*], Inc., [*] and/or [*], Inc. [*]" in all material mentioning or referencing
this software or this function. License is also granted to make and use
derivative works provided that such works are identified as "derived from the
[*], Inc. [*]", and/or "derived from the [*], Inc. [*]" in all material
mentioning or referencing the derived work. [*], Inc. makes no representations
concerning either the merchantability of this software or the suitability of
this software for any particular purpose. It is provided "as is" without express
or implied warranty of any kind. These notices must be retained in any copies of
any part of this documentation and/or software."
* Certain portions of the Core Technology software (as indicated in such
portions' source files) have used DES software, to which this notice applies and
which may be used by you provided that this notice is included: des-fast &
portable DES encryption & decryption Copyright (C) 1992 Dana L. How. THIS
PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. A copy of the license is
included as attachment A-3 hereto.
* The Software contains software, [*], incorporated as a binary black-box
executable that is required by for use in the Software provided under license to
InterTrust from FairCom Corporation. A [*] package is provided to you with the
Software, provided that, pursuant to the terms of InterTrust's agreement with
FairCom, you agree that you will: (i) not reverse engineer or modify in any way
the FairCom Software; (ii) not use the FairCom Software other than as
incorporated into the Software in any manner for the development or distribution
of: an operating system, a computer language compiler or interpreter, a general
purpose communication utility, a general purpose database of file handler,
including a general purpose database of file handler, including a general
purpose Open DataBase Connectivity ("ODBC") driver or a general purpose JAVA
driver, or an application development system;
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
and (iii) abide by the terms of the [*] License Agreement provided with the
Software and attached hereto as Exhibit A-1.
* Certain portions of the Core Technology (as indicated in such portions' source
files) have used [*] software, to which this notice applies and which may be
used by you provided that this notice is included: "Copyright (c) 1995 by [*].
Permission to use, copy, and modify this software without fee is hereby granted,
provided that this entire notice is included in all copies of any software which
is or includes a copy or modification of this software and in all copies of the
supporting documentation for such software. This software may be subject to
export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER UNITED STATES EXPORT
REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE SOFTWARE). THIS
SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR IMPLIED WARRANTY. IN
PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST TECHNOLOGIES
CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND CONCERNING THE
MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY PARTICULAR PURPOSE."
Such [*] Software may be obtained as of the date of the Agreement by email at
[*].
C. Miscellaneous.
* Certain software objects in the library [*] (as named upon default install)
were written by [*] ([*]). Such software is utilized by you solely upon
---
installation by you of the Software. Permission is given by [*] to use such
software provided neither the program nor code based upon the software is sold.
InterTrust is not selling such software to you and you should not sell it.
---
Rather, such software is included with other software, for install purposes,
such other software being subject to your license agreement.
* Certain portions of the software (as indicated in such portions' source files)
have used Independent JPEG Group software and certain portions of the Software
(relating solely to InterTrust images that appear in the "About Box" of the
Software) supplied in executable format (as indicated in Software's "About Box")
are based in part upon the work of the Independent JPEG Group. (C) 1991, 1992,
1993, 1994, 1995, Thomas G. Lane. The Graphics Interchange Format (C) is the
copyright property of CompuServe Incorporated. GIF (sm) is a Service Mark
property of CompuServe Incorporated. Certain portions of the Independent JPEG
Software were loosely based on giftoppm from the PBMPLUS distribution as of
February 1991 to which this notice applies: Copyright (C) 1990, David Koblas.
Permission to use, copy, modify, and distribute this software and its
documentation for any purpose and without fee is hereby granted, provided that
the above copyright notice appears in all copies and that both that copyright
notice and this permission notice appear in supporting documentation. This
software is provided "as is" without express or implied warranty.
* Certain portions of the Software (both Customizable and Non-Customizable) (as
indicated in such portions' source files) have used stl libraries derived from
[*] software, to which the following two notices apply and may be used by you
provided that these notices are included: Copyright (C) 1996 [*], Inc.
"Permission to use, copy, modify, distribute and sell this software and its
documentation for any purpose is hereby granted without fee, provided that both
that copyright permission notice and this permission notice appear in supporting
documentation. [*] makes no representations about the suitability of this
software for any purpose. It is provided "as is" without express or implied
warranty." "Copyright (C) 1994 [*] Company. Permission to use, copy, modify,
distribute and sell this software and its documentation for any purpose is
hereby granted without fee, provided that both that copyright permission notice
and this permission notice appear in supporting documentation. [*] Company make
no representations about the suitability of this software for any purpose. It is
provided "as is" without express or implied warranty."
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
* Microsoft Foundation Classes. The Commerce 1.1 software contains the
following licensed Microsoft DLLs which are generally available for use on all
Windows systems: msvcrt.dll, msvcirt.dll, mfc42.dll, amovie.exe, atl.dll.
These files will be required by all Microsoft Foundation Class-based
applications of the software and: (i) may be used by InterTrust and Licensee
only in conjunction with licensed Microsoft products; and (ii) may not be
redistributed by Licensee to anyone and/or modified, without license. Such a
license is generally provided with the purchase of Microsoft Visual Studio.
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
INSO CORPORATION
LICENSE AGREEMENT
GENERAL TERMS AND CONDITIONS
This Agreement, effective as of the 31st day of December, 1997, is by
and between
INSO CHICAGO CORPORATION and INTERTRUST
d/b/a Inso Corporation TECHNOLOGIES CORPORATION
a corporation organized under the a corporation organized under the
laws of the State of Illinois laws of the State of Delaware
("Inso") and a wholly-owned subsidiary of (the "Licensee")
Inso Corporation
This Agreement includes all Exhibits now or hereafter appended hereto
by mutual written agreement of the parties.
WHEREAS, Inso is a developer of certain file-viewing technologies, and
WHEREAS, the Licensee desires rights to integrate and distribute
materials proprietary to Inso in connection with the Licensee's electronic
products,
NOW, THEREFORE, the parties agree as follows:
1. Definitions
-----------
1.1 The "Component(s)" refer(s) individually and collectively to
the software, documentation, and any other materials described on Exhibit A
hereto.
1.2 "Delivery" means that the Licensee has received the
Components and that the Components conform to applicable Documentation provided
by Inso, such as the specifications of Section 1 of Exhibit A.
1.3 "Documentation" shall mean the users manual generally
provided with the Components and the Licensed Product, as the case may be.
1.4 "Inso Confidential Information" refers to the following
elements of the Components which are deemed by Inso to be trade secrets:
(a) software documentation;
(b) Inso's proprietary techniques with regard to product
function, even if supplied to the Licensee solely as embodied in the
Components; and
attachment A-1
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
(c) Any other information, oral or written, identified in
writing as confidential information of Inso; provided that such information
shall not include any information directly relating to secure digital rights
and/or event management, unless disclosure of such information to Licensee has
been approved in writing by Licensee's CEO or General Counsel.
All of the foregoing (a)-(c) shall be subject to the exclusions in
Section 5.3 below.
1.5 "Licensed Product" refers to the specific Licensee product or
products identified in Exhibit B; others may only be added by amendment to this
Agreement agreed to in writing by both parties.
1.6 An "Upgrade" is defined as a correction, improvement or other
modification of the Inso Components and/or the file filters included in the
Components which Inso makes generally available to its licensees but does not
include any custom development work performed specifically by Inso for a
licensee. Upgrades shall include for example the latest versions of the file
filters described in Exhibit A.
1.7 "Product Description" refers to the description contained in
Section 1 of Exhibit A attached to this Agreement.
1.8 "Operating System" refers to a computer software program,
routine or algorithm, or any combination thereof, that controls, manages or
allocates the internal computational resources of a computer and the
functionality and programs included therewith.
1.9 "InterTrust Licensee" refers to a person who receives a
license grant for the Licensed Product from Licensee or another InterTrust
Licensee for further distribution of Licensed Products and/or incorporation of
Licensed Products into their own products as set forth herein for use with
InterTrust Commerce Architecture and not for any of the uses set forth in
Section 2.7.
2. License Use, Term, Payment
--------------------------
2.1 Inso hereby grants, and the Licensee accepts, a non-
exclusive, worldwide license to use the Components and Documentation solely to
develop, use, and support Licensed Products in accordance with the terms and
conditions of this Agreement, including the limitations, if any, set forth in
Exhibit A provided that use of formats other than the Distributable Formats and
Upgrades thereto shall be for demonstration purposes only unless and until, with
respect to specific formats, Licensee and/or an applicable InterTrust Licensee
acquires from Inso commercial distribution rights with respect to such non-
distributable formats in accordance with the provisions hereof The right to use
the Components and Documentation for that purpose includes the right to use and
reproduce the Components and Documentation and to distribute Licensed Products
worldwide, directly or indirectly. Such License is subject to possible expansion
as provided in Exhibit C, paragraph 2.2 hereof.
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<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
2.2 The Licensee's rights to use the Components as provided
herein shall continue only so long as the Licensee:
(a) distributes Licensed Products in which the Components
are included solely as executable code;
(b) pays Inso pursuant to this Agreement; and
(c) is in compliance with all other material terms of this
Agreement.
2.3 Except as provided in Section 2.8 below, the Licensee may
sublicense Licensed Products to InterTrust Licensees, including third party
distributors and dealers, and solely on terms as protective as the Licensee
requires for its own proprietary information of similar nature and which enable
the Licensee to meet its obligations under this Agreement. Sublicenses to end-
users shall provide that end-users shall be permitted to use the Components only
as part of the Licensed Products. Except as provided in Section 2.8 below, any
other sublicense shall be subject to the prior written approval of Inso. The
Licensee shall provide applicable parts of copies of its standard software
licenses to Inso upon prior written request.
2.4 The Licensee may subcontract the distribution of the Licensed
Products provided that the Licensed Products are distributed and marketed solely
under the name of the Licensee and not of said distributor or any other third
party. The Licensee will, as Inso may reasonably request, give Inso the names of
such subcontractors and other information on its procedures for protecting the
Licensed Products in the reproduction process.
2.5 The term of this Agreement is specified in Exhibit B attached
hereto, and the licenses granted herein shall terminate automatically on
expiration without any action by the parties, unless extended by the parties.
This Agreement and the licenses granted herein shall be terminated or suspended
prior to such expiration only as provided in Sections 2.2 and 11.
2.6 In consideration for the licenses granted herein, the
Licensee shall pay Inso royalties as set forth in Exhibit C attached hereto.
2.7 Notwithstanding anything to the contrary in this Agreement,
the Licensee, and the InterTrust Licensees, shall not:
(a) use the Components to integrate directly with any file
viewing APIs of the following:
(i) the Windows 95 Operating System, or any successor
Operating System shell, including, but not limited to, IFileViewer,
(ii) any existing or future Operating Systems;
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CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
(iii) mail and messaging client (by way of example, but
not limitation, this shall include products such as Da Vinci Mail, MS Mail,
cc:Mail, Beyond Mail, and Lotus Notes) software APIs for viewing file
attachments; or
(iv) common dialog file viewing APIs outside of the
Licensed Product, under the Windows 95 operating environment;
(b) distribute, market, or sublicense the Components as a
stand-alone product;
(c) allow the Components to be accessed without the presence
and execution of applicable other applications of the Licensee and/or an
InterTrust Licensee;
(d) allow end-users to view documents using the Components
other than from within the Licensed Product;
(e) expose or publish any Component API to any third-party
including, without limitation, any customer, OEM, or business partner;
(f) use the Components to develop file viewer "plug-ins" for
Internet browser clients (by way of example, but not limitation, this shall
include Netscape's Internet browser clients). The Licensee and the InterTrust
Licensee may, however, use the Components to develop or create file viewer "plug
ins" for Internet browser clients that are used to access digital information
governed by the InterTrust Commerce Architecture.
(g) use the Components to develop or create ActiveX viewer
objects. The Licensee and the InterTrust Licensee may, however, use the
Components to develop or create Active X viewer objects that are used to access
digital information governed by the InterTrust Commerce Architecture.
(h) reverse engineer, reverse compile or otherwise
disassemble the Components except where such restriction is prohibited by law;
or
(i) write any file viewing, filtering, data, graphic or text
export or conversion function on top of Inso's Component Specifications.
2.8 The Licensee shall have the right at no additional cost to
sublicense the Licensed Products to InterTrust Licensees, in object code only,
under the Licensee's standard license terms and conditions, which terms shall i)
comply with the Licensee's obligations under this Agreement and ii) include a
provision which allows the InterTrust Licensee to further sublicense solely in
accordance herewith at no additional cost. InterTrust Licensees may receive the
Licensed Products but may only redistribute Licensed Products based on
Distributable Formats and any Upgrades thereto and/or develop and/or distribute
production applications using the Licensed Products based on the Distributable
Formats and any Upgrades thereto. InterTrust Licensees, before using any Inso
trademark or tradename, shall be required to submit to Inso for approval initial
text on packaging and
4
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
representative copies of promotional materials and user documentation using the
name "Inso", the title of any Inso Product or publication and any other Inso
trademark or trade name appearing in connection with an InterTrust Licensees end
product
3. Delivery Acceptance
-------------------
3.1 Inso has delivered the Components and services, if any,
specified in the Product Description.
3.2 The Components will be deemed accepted upon Agreement
execution. Upon Agreement execution Inso shall be entitled to the license fee as
set out in Exhibit C, whether or not the Licensee subsequently develops and
markets the Licensed Products, subject to compliance herewith.
3.3 Any subsequent Components delivered will be deemed accepted
upon Delivery. Upgrades and support shall be provided InterTrust as set forth in
Exhibit A hereto.
4. Proprietary Rights and Notices
------------------------------
4.1 This Agreement does not transfer to the Licensee any title in
or ownership of the Components or any Inso or third party trademarks, nor
(except as provided herein) any right to use Inso or third party copyrighted
material, or Inso Confidential Information embodied therein except the rights to
use the Components in Licensed Products as expressly permitted by this
Agreement. The Components and Inso Confidential Information embodied therein are
and shall at all times remain the sole and exclusive property of Inso.
4.2 The Licensee may not use trademarks, logos, trade dress, or
titles of Inso Products in any way, except as provided herein or with Inso's
express prior written permission.
4.3 The Licensee shall notify Inso as promptly as reasonably
possible of any suspected unauthorized use or possession of the Components or
Licensed Product. In the event of unauthorized use arising from the Licensee's
or its permitted sublicensees' or distributors' custody of the Components, the
Licensee shall reasonably cooperate with Inso in any commercially appropriate
action Inso may take or request to protect its rights in the Components.
4.4 The Licensee and/or an InterTrust Licensee may at its option,
either convert Inso's Documentation to the Licensee's or as applicable
InterTrust Licensees' format or reproduce and distribute Inso's Documentation
with the Licensee's and/or InterTrust Licensees covers. If the Documentation is
converted to the Licensee's format, Licensee and/or InterTrust Licensees shall
not change any content (except for format and grammatical changes by the
Licensee's and/or InterTrust Licensees personnel, any such correction of
grammatical errors to be provided free of charge to Inso). The Licensee and/or
InterTrust Licensees shall be
5
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
solely responsible for the results of such conversion, and Inso's review, or
lack thereof, shall not relieve the Licensee and/or InterTrust Licensee of its
responsibility.
4.5 Appropriate copyright and proprietary rights acknowledgment
(Outside In(R) Viewer Technology(C) 1992-1997 Inso Corporation. All rights
reserved.) will be stated on the Licensee's and its InterTrust Licensee user
manuals, as applicable, on the same or similar page(s) that the Licensee and/or
its InterTrust Licensee display third party credits and similar third party
notices; and, with other said third party acknowledgments, where such other
third party credits appear on, or in connection with the Licensed Products,
including but not limited to startup or "splash" screens and "Help" and "About"
boxes. In addition to acknowledgments in the Licensee's and/or InterTrust
Licensees documentation, the Licensee and its InterTrust Licensee shall, at a
minimum, and where applicable, provide Inso acknowledgment within the "Help"
and/or "About" boxes for the Licensed Products that are related to a viewer
window. Inso reserves the right to require the Licensee to make reasonable
changes to such notices to protect Inso copyrights and proprietary rights to be
implemented by the Licensee at the next reasonable opportunity.
5. Non-Disclosure of Confidential Information
------------------------------------------
5.1 In performing its obligations under this Agreement, the
Licensee may receive Inso Confidential Information. The Licensee shall take
reasonable steps to protect such Inso Confidential Information. Such steps shall
include, but not be limited to:
(a) designating the Licensee group responsible for
controlling access to such confidential information,
(b) following the procedures the Licensee takes to protect
its own confidential information of similar character;
(c) limiting disclosure to Licensee personnel solely on a
need to know basis, informing such personnel, by use of non-disclosure
agreements and display of confidentiality notices and other instructions, of the
restrictions on use, reproduction, and disclosure; and
(d) preventing disclosure to any third party without Inso's
prior written permission in such case, except that the Licensee may disclose
Inso Confidential Information to a consultant or subcontractor with a need to
know, providing services to the Licensee which directly relate to the rights or
obligations of the parties pursuant to this Agreement, provided that each such
consultant or subcontractor has signed an appropriate written agreement not to
disclose such confidential information or use such confidential information for
any purpose other than the performance of such services.
5.2 The Licensee shall not disclose the terms of this Agreement
or any Inso Confidential Information without Inso's prior consent or as may be
required by law or by order of court or request of government agency, and in the
case of such order or request, after
6
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
notice to Inso that such disclosure has been requested Inso has been given a
reasonable opportunity to seek a protective order.
5.3 Notwithstanding any other provision hereof, the Licensee
shall be entitled to disclose information received from Inso in confidence if:
(a) such information was, prior to its receipt from Inso,
properly in the Licensee's possession or known to the Licensee;
(b) such information is developed by or for the Licensee
independently of Inso confidential information received hereunder;
(c) such information is or becomes public knowledge without
the fault of the Licensee; or
(d) such disclosure is required by court or government
action.
In the event that disclosure of Inso Confidential Information under
the circumstances described in Section 5.3(d) is required, the Licensee will
comply with the provisions of Section 5.2 hereof and otherwise use reasonable
efforts to ensure that such information does not become generally available to
the public.
5.4 The provisions of this Section 5 shall survive the
termination or expiration of this Agreement.
6. Warranties
----------
6.1 Inso warrants that it knows of no third party copyright,
trademark, trade secret, or patent that is infringed by the Components.
6.2 Inso warrants that the Components will perform substantially
as specified in the Outside In Viewer Technology Specification Version
(designated in Section 1 of the applicable Product Description.)
6.3 Inso shall not be responsible in any way for any portion of
software prepared by or added to the Components by the Licensee or any third
party.
6.4 THE FOREGOING WARRANTIES GIVEN BY INSO ARE IN LIEU OF ALL
OTHER REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, STATUTORY OR
OTHERWISE, UNDER OR RELATED TO THIS AGREEMENT OR THE COMPONENTS, INCLUDING BUT
NOT LIMITED TO IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
7
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
7. Defense of Legal Claims; Notification
-------------------------------------
7.1 Inso will defend or settle any allegation or claim by a third
party ("Claim") against the Licensee that the Components infringe upon any
copyright, trade secret, United States, European Union and/or Japanese patent,
or other proprietary right of a third party, and shall indemnify the Licensee
and hold it harmless from any and all such Claims and all resulting costs,
expenses, compromises, damages, and attorneys' fees, provided that (i) Inso is
given prompt written notice of the Claim, (ii) Inso is given the sole authority
to defend or settle the Claim, and (iii) the Licensee does not compromise or
settle the Claim without Inso's prior written consent. The Licensee shall
cooperate fully with all reasonable requests of Inso in connection with any such
Claim. In lieu of defending a Claim, Inso may, at its sole option, procure for
the Licensee the right to continue using the disputed material, or modify the
Components so that they become non-infringing. Any such modification shall not
materially affect the functionality of the Components. Inso shall have no
obligation to defend or indemnify the Licensee for any Claim based upon the
combination, operation, or use of the Components with elements not supplied by
Inso, or upon modifications to the Components after Delivery, where such Claim
would not exist without such elements or modifications to the Components by the
Licensee.
7.2 The Licensee will defend or settle any Claim against Inso
involving elements of the Licensed Products other than the Components but solely
where such Claim arises solely out of elements of Licensed Products other than
Components and/or modifications made to Components by Licensee (and not where
such Claim is based upon any combination, operation, or use of Components
supplied by Inso with such elements of Licensed Products or modified Components,
or where such claim would exist in the absence of such modification) would not
exist without the Licensee's modification to the Components, and the Licensee
shall indemnify Inso and hold it harmless from any and all such Claims and all
resulting costs, expenses, compromises, damages, and attorney's fees, provided
that (i) the Licensee is given prompt written notice of the Claim, (ii) the
Licensee is given the sole authority to defend or settle the Claim, and (iii)
Inso does not compromise or settle the Claim without the Licensee's prior
written consent. Inso shall cooperate fully with all reasonable requests of the
Licensee in connection with any Claim described in this Section 7.2.
7.3 Each party shall provide prompt written notice to the other
party of any threatened or actual Claims that come to such party's attention
that the Components infringe upon any copyright, trade secret, patent, or other
proprietary right of a third party, or that would be subject to the provisions
of section 7.1 or 7.2. Such notice shall be signed by an officer of the sending
party and shall be sent to and signed by an of ricer of the receiving party.
8. Limitation of Liability
-----------------------
8.1 EXCEPT FOR A BAD FAITH BREACH BY EITHER PARTY OF THE
PROVISIONS OF SECTION 5 AS IT RELATES TO SOURCE CODE, NEITHER PARTY SHALL BE
LIABLE TO THE OTHER OR ANY THIRD PARTY FOR ANY LOSS OF PROFITS, OR SPECIAL,
CONSEQUENTIAL, OR INCIDENTAL DAMAGES ARISING OUT OF OR RELATING TO THIS
AGREEMENT, WHETHER SUCH CLAIM ARISES IN
8
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
TORT OR CONTRACT AND EVEN IF ADVISED OF THE POSSIBILITY OF THE SAME, EXCEPT FOR
A BREACH BY EITHER PARTY OF THE PROVISIONS OF SECTION 5 AS IT RELATES TO SOURCE
CODE AND/OR SECTION 7.3 IN NO EVENT SHALL EITHER PARTY'S LIABILITY TO THE OTHER
FOR DAMAGES OR COSTS HEREUNDER, IF ANY, EXCEED THE AMOUNTS PAID OR PAYABLE TO
INSO BY THE LICENSEE FOR LICENSING THE COMPONENTS UNDER THIS AGREEMENT.
8.2 No action arising out of the licenses granted under this
Agreement, regardless of form, may be brought by any party more than one (1)
year after the cause of action has become known to the party bringing such
action, except that an action for nonpayment may be brought by Inso within one
(1) year of the later of due date of the last payment or license fee statement.
9. Export and other Regulations
----------------------------
9.1 The Licensee shall be responsible for meeting any other
requirement of any government and procuring government approvals, such as export
licenses, restrictions on export of technical data, or other procedures required
to make this Agreement effective and enforceable.
10. Assignment
----------
The Licensee shall not assign or transfer to any third party this
Agreement, nor any of its rights or obligations under this Agreement, without
Inso's prior written permission. A change in ownership or control of the
Licensee shall be deemed to be an assignment of this Agreement. For purposes of
this Section 10, "change" in ownership or control is defined as a sale or
transfer of shares which entitles a new holder to voting rights in excess of
fifty percent (50%) of the Licensee's outstanding voting securities or interests
(where such outstanding voting securities or interests are converted to a single
class of common stock). Inso may assign this Agreement, or any of its rights,
obligations or benefits hereunder, without the consent of the Licensee.
11. Default and Termination
-----------------------
11.1 Except as provided in Section 11.2 and 11.3 below, if
either party should breach any material provision of this Agreement, the non-
defaulting party may declare a default, and may terminate this Agreement in its
entirety if the other party should fail to remedy such default within thirty
(30) days after receipt of written notice thereof.
11.2 If the Licensee should materially breach the restrictions on
disclosure or use of Inso's confidential information as provided herein, Inso
may immediately terminate this Agreement or seek equitable relief to protect its
proprietary interests, or both, without waiting for any cure period to elapse.
11.3 If the Licensee should fail to make any of the payments
required by this Agreement, Inso may declare a default, and may terminate the
Agreement in its entirety
9
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
should the Licensee fail to remedy such default within ten (10) days of receipt
of written notice thereof. At such time, all outstanding minimum license fee
payments and any other charges due Inso pursuant to this Agreement shall be
deemed to have accrued and shall immediately be payable in full to Inso
notwithstanding any other provision hereof. The Licensee's obligation to pay all
accrued charges shall survive the expiration or termination of this Agreement.
11.4 In the event that either party becomes insolvent, or a party
to bankruptcy, receivership, or similar proceedings affecting its financial
condition, or seeks to make a compromise, assignment, or other arrangement for
the benefit of its creditors, or ceases doing business in the ordinary course,
the other may terminate this Agreement, effective upon receipt of written notice
thereof, and take any steps to protect its proprietary information as may be
reasonable and appropriate.
11.5 Upon termination, the Licensee will immediately cease
development, distribution, and production of Licensed Products utilizing the
Components. The Licensee may permit sublicenses previously granted to end-users
to remain in effect, but shall return or certify destruction of all copies of
the Components and all Inso Confidential Information not needed to support end-
users. Any other permitted sublicenses shall terminate upon termination of the
Agreement between Inso and the Licensee.
11.6 Termination shall not relieve the Licensee from liability
for any breach occurring prior to such termination. All remedies hereunder and
under applicable law shall be cumulative.. In addition to these provisions
specifically mentioned elsewhere herein, the provisions of Sections 7,8, 12 and
this Section 11 shall survive expiration or termination hereof.
12. General Provisions
------------------
12.1 Entire Agreement. This Agreement, together with its
-----------------
Exhibits, constitutes the entire agreement between the parties with respect to
the Components, and may be modified only in writing, signed by an authorized
representative of each party. This Agreement supersedes all other
representations, proposals, and other communications between the parties
relating hereto with respect to the Components.
12.2 Waiver. Any waiver by either party of any requirement of
------
this Agreement shall not constitute a waiver of any other requirement of this
Agreement, nor of the same requirement on a separate occasion.
12.3 Notice. Any notice required under this Agreement shall be
------
in writing certified mail, express courier service or facsimile transmission
with a confirming copy sent via certified mail or express courier service, to
the address given in Exhibit B or to such other address as either party may
designate in writing to the other. Any notice thus given shall be deemed
effective upon sending.
12.4 No Agency. This Agreement shall not be construed as
---------
creating an agency, partnership, joint venture, or other relationship between
the parties other than one of independent contractors.
10
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
12.5 Force Majeure. Neither party shall incur liability to the
-------------
other for any failure or delay in fulfilling its obligations under this
Agreement other than the making of required payments for causes beyond its
reasonable control, including, but without limiting the generality of the
foregoing, labor or industrial disturbances, acts of God, floods, lightning,
utility or communication failures, earthquakes, acts of the public enemy, riots,
insurrection, embargoes, blockages, actions, restrictions, regulations or orders
of any government, agency or subdivision thereof.
12.6 Interpretation. Whenever possible, each provision of this
--------------
Agreement shall be interpreted so as to be effective and valid under applicable
law, but if any portion of any provision should be invalid or prohibited by
applicable law, such portion shall not invalidate the remaining provisions of
this Agreement. All headings are for reference purposes only and shall not
affect the interpretation of this Agreement.
12.7 Governing Law. This Agreement shall be deemed a contract
-------------
made and performed in Massachusetts, shall be construed under and governed by
the laws of the Commonwealth of Massachusetts, and shall bind the parties, their
successors, and permitted assigns. The parties stipulate that the proper forum,
venue and court for any legal action arising from or in connection with this
Agreement shall be either (i) the state courts of the Commonwealth of
Massachusetts for Suffolk County or the United States District Court for the
District of Massachusetts or (ii) the state courts of California in San Jose,
California or the United States District Court for the Northern District of
California (San Jose Division). Neither party shall commence any action against
the other except in such courts.
11
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
IN WITNESS WHEREOF, the parties execute this effective as of the date
first above written.
INTERTRUST TECHNOLOGIES INSO CHICAGO CORPORATION
CORPORATION d/b/a INSO CORPORATION
By: By:
---------------------- ----------------------
Signature Signature
Name: Bruce G. Hill
-------------------
Title: Corporate Secretary
------------------
12
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
INTERTRUST/INSOCHIAGO
INSO CORPORATION
LICENSE AGREEMENT
EXHIBIT A
PRODUCT DESCRIPTION
Outside In(R) Viewer Technology, Version 5.1
1. Inso will provide the following object code deliverables:
1.1 Inso Components
(i) "Outside Ink Viewer Technology Software and
Specification Version 5. 1", and Upgrades thereto solely as set forth in
paragraph 6 below (if and when such upgrades are made available to Inso's other
Licensees), with support for viewing functionality only and;
(ii) All formats supported by the Outside Ink Viewer
Technology Specification and Upgrades.
1.2 Platforms Supported:
(i) Microsoft Windows (95 and subsequent versions during the
term) for Intel processors
(ii) Microsoft Windows NT(R) (including subsequent versions
during the term) for Intel processors
2. Inso will provide Upgrades for the file formats listed below if
and when Inso makes such Upgrades available generally for any of its customers.
3. Inso will assist the Licensee with its initial implementation of
the Components and provide information about the Licensee callable functions, as
reasonably requested, without charge to the Licensee for a period of ninety (90)
days from Effective date. Except as provided in Section 6.0, if, at the time of
the Licensee's initial implementation, Inso has developed a more recent version
of the Components, Inso will provide this latest version to the Licensee free of
charge. Support services as set forth above will be applicable to such new
version and Upgrades. Inso shall have no obligation to provide assistance
pursuant to this section in the event that Licensee is unable or unwilling to
provide information regarding the Licensed Product to Inso.
4. Inso will correct any defects identified by the Licensee during
the first ninety (90) days after the Components are shipped to the Licensee. A
"defect" is defined as a material error concerning of the Components that causes
the Components not to function in accordance with Section 1 of the applicable
Product Description and/or file formats supported. Inso shall have no
13
<PAGE>
obligation to provide assistance pursuant to this section in the event that
Licensee is unable or unwilling to provide information regarding the Licensed
Product to Inso needed by Inso to support its obligations hereunder.
5. If the Licensee requests that Inso provide consulting services in
addition to those support services specified above, including, for example,
modifications necessary to port the product to any Inso unwarranted platform,
and Inso agrees to provide such services, such services shall be provided at
terms mutually agreed in writing.
6. Notwithstanding the definition of Upgrades, any future additions
of functionality to the Outside In Viewer Technology, Version 5.1 that are
substantial enough to constitute a "new version" according to standard industry
practices are specifically excluded from this Agreement (for example, such
additional functionality that, according to industry practices would constitute
a change in version number to the left of the decimal point, e.g. 5.1 to 6.0,
would be excluded, whereas, for example, changes that would according to
industry practices occur to the right of the decimal point, e.g., 5.1 to 5.2
would be included). Inso reserves sole discretion to determine changes in the
Outside In Viewer Technology Specification.
If in its reasonable judgment Licensee needs, but does not obtain,
a license from Unisys Corporation concerning the use of the GIF Distributable
Format then, at Licensee's option and upon Licensee's prior written notification
to Inso, InterTrust and Inso shall agree in the exercise of good faith upon an
additional image file format to be included in the Distributable Formats.
Inso represents that it currently intends to reasonably revise its
HTML filter to Maintain compliance with W3C specifications including support for
data input using forms, support for IO redirection for href and src attributes
and interception of hyperlink activation.
Format support includes a limited number of Outside In Viewer Technology formats
as follows (the "Distributable Formats") such versions noted below current as of
the execution date:
<TABLE>
<CAPTION>
Generic Formats:
- ----------------
<S> <C>
HTML Version of execution date............ Microsoft Rich Text Format All versions
ASCII Text (7 & 8 bit versions available) .............................All versions
ANSI Text (7 & 8 bit) .................................................All versions
Unicode Text ..........................................................All versions
Word Processing (subject to the provisions of Exhibit C, Section 2.2):
- ---------------
Microsoft Word .............................. Version 7.0 only (Word for Office 95)
Standard Graphic Formats:
- ------------------------
BMP (including RLE,IC 0, CUR & OS/2 DIB) ...................................Windows
GIF - Graphics Interchange Format .......................................Compuserve
JPEG ..................................................................All versions
WMF................................................................... All versions
</TABLE>
14
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
INTERTRUST/INS OCHIAGO
INSO CORPORATION
LICENSE AGREEMENT
EXHIBIT B
ADDITIONAL PROVISIONS
1. Term
----
1.1 The Effective Date shall be the date set forth at the
beginning of this Agreement.
1.2 The Expiration Date of this Agreement shall be December 31,
2000, which may be extended by the mutual agreement of the parties.
2. Licensed Products
-----------------
The Licensed Products as of execution of this Agreement consist of the
following:
(i) Those portions of the Licensee's secure rights management
and/or event management technology entitled "InterTrust Commerce Architecture"
technology incorporating Outside Ink Viewer Technology, as set forth in Exhibit
A including any Distributable Formats and/or upgrades thereto for purposes of
accessing digital information generated by InterTrust Commerce Architecture
document repository and not for general viewing purposes.
(ii) Platform: Windows 95 and Windows NT(and successive releases
when available), other InterTrust Commerce Architecture supported platforms,
(iii) Media: any
3. Access to Inso Confidential Information
---------------------------------------
As provided in Section 5 of the Agreement, the Licensee shall restrict
access to Inso Confidential Information to those specific personnel of Licensee
reasonably having a need to know such information in connection with the design,
development, deployment and/or support of Licensed Products incorporating
Components including Licensee's group expressly charged with development of
Licensed Products.
4. Addresses for Purposes of Notices
---------------------------------
To Inso: Inso Corporation
15
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
330 N. Wabash Avenue, 15th Floor
Chicago, IL 60611
Attention: Rose Ann Brittain
with a copy to: Inso Corporation
31 St. James Ave., 11th Floor
Boston, MA 02116
Attention: Bruce G. Hill
To the Licensee: INTERTRUST TECHNOLOGIES CORPORATION
460 Oakmead Parkway
Sunnyvale, CA 94086
Attention: Mr. Edmund Fish
SVP, Corporate Development and
General Counsel
16
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
INTERTRUST/INS OCHIAGO
INSO CORPORATION
LICENSE AGREEMENT
EXHIBIT C
PAYMENT OF LICENSE FEES
1. General Provisions
------------------
1.1 Payments shall be made by wire transfer of immediately
available funds to Inso's account at the following bank:
Fleet Bank N.A.,
Corporate Funds Transfer, RI OF 350
125 Dupont Drive
Providence, RI 02907
ABA No. 011500010
Account Number 050126899800101
Attention Inso Corporation
1.2 All payments shall be made in the United States dollars.
1.3 Inso shall have the right to reasonably inspect the Licensed
Product at the Licensee's premises upon reasonable prior written notice to
insure Licensee's compliance with this Agreement. Such inspection shall be
subject to InterTrust cofidentiality restrictions to protect InterTrust
information and shall not occur maore than once per annum.
2. Payment Schedule
----------------
2.1 A non-refundable license fee applies for the Licensed
Product(s). Inso is entitled to the license fee whether or not the Licensee
subsequently develops and markets the Licensed Products. The license fee is
$100,000, due upon Agreement execution and payable upon the following schedule:
<TABLE>
<CAPTION>
Date License Fee Cumulative License Fee
- ------------------------------ ------------------------------- -------------------------------
<S> <C> <C>
Agreement Execution $20,000.00 $ 20,000.00
March 15, 1998 $20,000.00 $ 40,000.00
June 15, 1998 $20,000.00 $ 60,000.00
September 15, 1998 $20,000.00 $ 80,000.00
December 15, 1998 $20,000.00 $100,000.00
</TABLE>
17
<PAGE>
CONFIDENTIAL INTERTRUST/INSOCHIAGO
1/9/98
2.2 If an InterTrust Licensee to whom InterTrust delivers a
subsequent version of the Microsoft Word filter as described in Exhibit A hereto
desires such Word filter to become a Distributable Format, then such Licensee
can have such Word filter become such a Distributable Format upon the payment to
Inso of fifteen thousand dollars ($15,000) (for example, a $15,000 fee will be
due for distribution of Word for Office `97, and a $15,000 fee would be due for
distribution of Office `98). In addition, as concerns such Word format and any
other supported format that is not a Distributable Format, if requested by
InterTrust or an InterTrust Licensee Inso shall cooperate in good faith with
InterTrust and/or such InterTrust Licensee and license such requested formats
upon reasonably favorable terms and conditions. The parties agree that if
InterTrust informs Inso in writing that it desires to expand the license, such
expansion may require additional license fees which the parties contemplate to
be solely incremental in nature.
3. Invoices for amounts due in Section 2.1 above shall be sent to:
InterTrust Technologies Corporation
Attn: Accounts Payable
460 Oakmead Parkway
Sunnyvale CA 94086
Phone: 408.222.6100
Fax: 408.222.6144
Inso's failure to provide invoices for non-refundable license fees or
additional license fees or Licensee's failure to receive such invoices shall not
relieve the Licensee of its obligation to make timely payments pursuant to
Section 2.1, above.
18
<PAGE>
AGREEMENT ID: CLU-INT-02
BASIS TECHNOLOGY CORP.
SOFTWARE LICENSE AND SERVICES AGREEMENT
This Agreement is between Basis Technology Corp., a Massachusetts
Corporation with its principal place of business at One Kendall Square,
Cambridge, MA 02139 ("Basis") and the customer whose name and address is set
forth below (the "Customer").
InterTrust Technologies Corporation
460 Oakmead Parkway
Sunnyvale, CA 94086
Attn: Richard Grace
TERMS AND CONDITIONS
Basis Technology Corp. ("Basis") and the Customer hereby agree that the
following terms and conditions will apply to each license granted and to all
services provided under this Agreement. Additional license may be granted and
services provided, subject to the terms and conditions of this Agreement, by
completing and submitting a signed copy of the Basic's Order Supplement
referencing this Agreement and its terms and conditions.
1. DEFINITIONS
1.1 "Commencement Date" shall mean the date on which the Software is
delivered to the Customer, or if no delivery is necessary, the
Effective Date set forth on the relevant Order Supplement.
1.2 "Software" shall mean the computer software owned or distributed by
Basis for which customer is granted a license pursuant to this
Agreement, and the related documentation, instruction, user's guides,
and subsequent updates, whether in hardcopy or softcopy form.
1.3 "Supported License" shall mean a license for which Customer has ordered
Technical Support for the relevant time period.
1.4 "Order Supplement" shall mean Basis's standard form for ordering
Software licenses and services. When completed and signed by both
parties, the Order Supplement (including the Signature Page of this
Agreement) shall document the Software licenses which have been granted
and the services which are to be provided under this Agreement.
2. SOFTWARE LICENSE
2.1 Rights Granted
A. Basis hereby grants in Customer a nonexclusive, nontransferable,
perpetual, worldwide, and royalty-free license to use and
redistribute the Software Customer obtains pursuant to this
Agreement, as follows:
(i) to use the Software on any number of processors and by any
number of people for the Customer's Internal software
development and testing activities.
(ii) to incorporate the Software into software products, and to
redistribute the Software to third parties in binary form
provided that the Software is incorporated as an integral
component of licensed software products;
(iii) to modify the Software, or combine them with other software
products, provided that the Software or such
attachment A-2
<PAGE>
portions thereof included in such derivative software
products remain subject to the provisions of this Agreement.
(iv) to copy the Software for archival or backup purposes. All
archival and backup copies of the Software are subject to the
provisions of this Agreement, and all titles, trademarks, and
copyright and restricted rights notices shall be reproduced in
such copies; and
(v) to redistribute the Software in binary and/or authorized to
use InterTrust customers authorized to use InterTrust
technology and incorporate InterTrust technology into their
products, and permit such customers to exercise those rights
set forth in the preceding Sections 2.1(A)(i), 2.1(a)(ii), and
2.1(A)(iv); provided, that InterTrust shall obligate such
customers to: (1) refrain from modifying, or permitting their
customers to modify, the Software, (2) agree that any
redistribution of the Software shall occur solely as permitted
in such Section 2.1(A)(i), 2.1(A)(ii), and 2.1(iv), and where
such Software is incorporated directly and as an integral
component of InterTrust technology and/or such customers'
software directly associated therewith; and (3) agree to the
other applicable terms and conditions hereof.
B. By virtue of this Agreement, Customer acquire only the right to the use of
the Software and does not acquire any rights of ownership. All rights,
title, and interest in the Software including the copies of the Software
delivered to Customer by Basis shall at all times remain the property of
Basis or Basis's licensor.
2.2 Documentation:
Basis will provide Customer with relevant user documentation. Copying
of the documentation, user guides, and other reference materials is
permitted for internal use only.
In connection with exercise of the rights of Section 2.1(v), Customer
may distribute relevant portions of user documentation, provided that
Basis shall be entitled to review and approve such documentation
portions and any such documentation shall be used solely for such
customer's internal use.
2.3 Transfer and Assignment
The rights granted herein are restricted for use solely by Customer and
may not be assigned or transferred to a third party without the prior
written permission of Basis.
3. ACCEPTANCE OF THE PROGRAM; TERM; TERMINATION
3.1 Acceptance of Software.
For each Software component delivered under this Agreement, Customer
shall have a 30-day Acceptance Period in which to evaluate this
component. During the Acceptance Period. Customer may cancel the
license by giving written notice to Basis and returning the Software in
accordance with Paragraph 3.6 below. Unless such cancellation notice is
given, the license will be deemed to have been accepted by Customer at
the end of the Acceptance Period.
3.2 Term.
This Agreement and each license granted hereunder shall remain in
effect perpetually (if not otherwise specified on the Order
Supplement), unless terminated as provided in Paragraph 3.3 or 3.4
below.
3.3 Termination by Customer.
Customer may terminate this Agreement or any license at any time.
<PAGE>
3.4 Termination by Basis.
Basis may terminate this Agreement or any license upon written notice
if Customer breaches this Agreement and fails to correct the breach
within 30 days following written notice specifying the breach.
3.5 Effect of Termination.
Termination of this Agreement or any license shall not limit either
party from pursuing any other remedies available to it, including
injunctive relief, nor shall such termination relieve Customer's
obligation to pay all fees that accrued prior to such termination.
3.6 Return of Software Upon Termination.
If a license granted in this Agreement expires or otherwise terminates,
Customer shall (a) stop using the applicable software, and (b) certify
to Basis within one month after termination that Customer has destroyed
or has returned to Basis the Software and all copies. This requirement
applies in copies in all forms, partial and complete, in all types of
media and computer memory, and whether or not modified or merged into
other materials; but shall not apply to (i) back-up copies of the
Software made by Customer during the ordinary course of Customer's
network archiving procedures, provided that all such back-up copies are
securely stored by Customer at a location remote from Customer's
premises such made and inaccessible to Customer's development personnel
and (ii) copies of the software that, as of the date of such
termination, have been redistributed to third parties in accordance
herewith. Any InterTrust customers receiving Software pursuant to the
provisions of Section 2.1(A)(5) hereof shall have agreed to be bound by
the provisions of this Section 3.6.
4. PAYMENT PROVISIONS
4.1 Invoicing and Payment.
Invoices for payment of license fees shall be payable on the
Commencement Date. Consulting, training, and technical support fees and
all other applicable fees shall be payable when invoiced. All fees
shall be deemed overdue if they remain unpaid 31 days after they become
payable.
4.2 Taxes.
The fees listed in this Agreement do not include taxes; if Basis is
required to pay sales, use property, value-added, or other federal,
state or local taxes based on the licenses granted in this Agreement or
on Customer's use of Software, then such taxes shall be billed to and
paid by Customer. This shall not apply to taxes based solely on Basis's
income.
Customer shall make such reasonable steps as may be necessary to make
payment of amounts due Basis hereunder from any deduction or
withholding tax. Basis shall take reasonable steps to assist Customer
in this regard, including compliance with the procedures for claiming
relief under applicable provisions of applicable tax treaties, if any,
provided that such steps are not prejudicial to Basis tax liability in
any jurisdiction. If Customer nevertheless is required by law or any
country to make any deduction, or withhold from any sum payable to
Basis by Customer hereunder, then the sum payable shall be increased to
the extent necessary to ensure that, after such deduction or
withholding, Basis receives and retains, free from liability for such
deduction or withholding, a net amount equal to the amount Basis would
have received and retained in the absence of such required deduction or
withholding.
5. PROTECTION OF PROGRAMS; CONFIDENTIAL INFORMATION
5.1 Protection of the Software.
Customer shall limit access to the Software to its employees and agents
whose responsibilities require such access, and Customer shall adopt
reasonable measures to assure that its employees and agents will make
no disclosure of the Software in other persons or legal entities.
Customer agrees to treat the Software as a reasonable asset of Basis.
Except (and solely except) as set forth in Section 2.1(A)(v) hereof,
Customer will not
<PAGE>
sell or otherwise redistribute the header files, source code, object
modules, or state libraries of object modules in any form to
unaffiliated person or legal entities.
5.2 Nondisclosure.
By virtue of this Agreement, the parties may have access to information
that is confidential to one another ("Confidential Information").
Confidential Information shall be limited to the Software and all other
information.
A party's Confidential information shall not include information which:
(a) is or becomes a part of the public domain through no act or
omission of the other party; or (b) was in the other party's lawful
possession prior to the disclosure and had not been obtained by the
other party either directly or indirectly from the disclosing party; or
(c) is lawfully disclosed to the other party by a third party without
restriction on disclosure; or (d) is independently developed by the
other party.
The parties agree, both during the term of this Agreement and for a
period of three years after termination of this Agreement and of all
licenses granted hereunder, to hold each other's Confidential
Information in confidence. The parties agree to make each other's
Confidential Information available in any form to any third party or to
use each other's Confidential Information for any purpose other than
the implementation of this Agreement. Each party agrees to make all
reasonable steps to ensure that Confidential Information is not
disclosed or distributed by its employees or agents in violation of the
provisions of this Agreement.
6. WARRANTIES, REMEDIES, LIMITATION OF LIABILITY
6.1 Warranties and Disclaimers.
A. Warranties
(i) Software License Warranties. For each Supported License, Basis
warrants for a period of one year from the Commencement Date
that the Software, unless modified by Customer, will perform
the functions described in the documentation provided by Basis
when operated on the designated hardware and operating system.
Basis will undertake to correct any reported error condition
in accordance with its Software Support Policies.
Basis does not warrant that the Software will meet Customer's
requirements; that the Software will operate in conjunction
with other system software which Customer may select for use;
that the operation of the Software will be uninterrupted or
error free; or that all Software errors will be corrected.
If Customer does not obtain Technical Support Services, the
Software is distributed "as is".
(ii) Y2K Compliance. Basis warrants that its Software is "Year 2000
Compliant" or "Century Compliant" and that all duties are
represented internally without ambiguity as to century.
(iii) Media Warranty. Basis warrants the tapes, diskettes or other
media to be free of defects in material and workmanship
under normal use for 90 days' from the Commencement Date.
During the 90-day period, Customer may return defective
media to Basis and it will be replaced without charge.
Replacement of media is Customer's sole remedy in the event
of a media defect.
(iv) Services Warranty. Basis warrants that its technical and
consulting services will be performed in a workmanlike
<PAGE>
manner. This warranty shall be valid for 90 days from
completion of service.
B. Limitations on Warranties.
(i) The warranties above are exclusive and in lieu of all other
warranties, whether express or implied, including without
limitation the implied warranties of merchantability and
fitness for a particular purpose. Basis and Customer hereby
agree that any statutory warranty provisions shall not be
applicable to this Agreement, but that the above warranties
shall be applicable.
(ii) As an accommodation to Customer, Basis may supply Customer
with preproduction releases of Software, labeled "Alpha" or
"Beta." These releases are not suitable for production use.
Basis does not warrant preproduction releases; these releases
are distributed "as is."
6.2 Exclusive Remedies.
For any breach of the warranties contained in Paragraph 6.1 above,
Customer's exclusive remedy, and Basis's entire liability, shall be:
A. For Software
The correction of Software errors or replacement of Software media. If
Basis is unable to make the Software operate is warranted. Customer
shall be entitled to recover the applicable license fees paid to
Basis.
B. For Services
The performance of the services. If Basis is unable to perform the
services as warranted, Customer shall be entitled to recover the fees
paid to Basis for the deficient services.
6.3 Limitation of Liability.
In no event shall either party be liable for any indirect, incidental,
exemplary, punitive, special or consequential damages, including loss of
profits, revenue, data, or use, incurred by the other party or any third
party, whether in an action in contract or tort, even if advised of the
possibility of such damages. Basis's liability for damages hereunder shall
in no event exceed the amount of fees paid by Customer under this
Agreement, and if such damages result from Customer's use of the Software,
such liability shall be limited to license fees paid, prorated over a five-
year term from the Commencement Date of the relevant license.
7. GENERAL TERMS
7.1 U.S. Government Restricted Rights.
If Customer is a U.S. government agency then it is provided with
Restricted Rights. Use, duplication, or disclosure by the U.S.
Government is subject to restriction as set forth in subparagraph
(c)(1)(II) of The Rights In Technical Data and Computer Software
clause at DFARS 252,227-7013, on subparagraphs (c)(1) and (2) of the
Commercial Computer Software--Restricted Rights at 48 CFR 52-227-19 on
clause 18-52.227-86(d) of the NASA Supplement to the FAR, as
applicable. Contractor/manufacturer is Basis Technology Corporation
located at One Kendall Square, Building 200, Cambridge, MA 02139,
U.S.A.
7.2 Entire Agreement.
This Agreement constitutes the complete agreement between the parties
and supersedes all previous agreements or representation, written or
oral, with respect to the Software and services specified herein. This
Agreement may not be modified or amended except in a writing signed by
a duly authorized representative of each party.
It is expressly agreed that any terms and conditions of a purchase
order issued by Customer for Software and Supported Licenses shall be
superseded by the terms
<PAGE>
and conditions of this Agreement. This Agreement shall also supersede
the terms of any unsigned license agreement included in a package for
Basis-furnished microcomputer software.
7.3 Severability.
Wherever possible, each provision of this Agreement shall be
interpreted in such manner as to be effective and valid under
applicable law, but if any provision of this Agreement shall be
prohibited by or invalid under applicable law, such provision shall be
ineffective only to the extent of such prohibition or invalidity
without invalidating the remainder of such provision or the remaining
provisions of this Agreement.
7.4 Waiver.
The waiver by either party of any default or breach of this Agreement
shall not constitute a waiver of any other or subsequent default or
breach.
7.5 Governing Law.
This Agreement shall be governed by the laws of the Commonwealth of
Massachusetts, without reference to its choice of law provisions, and
shall be deemed to be executed under seal in Cambridge, Massachusetts.
7.6 Arbitration.
Any controversy or claim arising out of or relating to this contract,
or the breach thereof, shall be settled by arbitration in accordance
with the Commercial Arbitration Rules of the American Arbitration
Association, and judgment upon the award rendered by the arbitrator(s)
may be entered in any court having jurisdiction thereof.
7.7 Notice.
All notices, including notices of address change, required to be sent
hereunder shall be in writing and shall be deemed to have been given
when mailed to the first address listed in the relevant Order
Supplement (if to Customer) or to the Basis address listed in this
Agreement (if to Basis).
7.8 Introductions; Additional Relationships.
The parties will discuss, periodically and as appropriate during the
term of this Agreement, opportunities for promoting the relationship
between the parties and potential projects involving Basis and
InterTrust partners. InterTrust shall, as appropriate, inform
InterTrust partners about Basis and provide introductions to such
partners, and may with the approval of Basis deliver appropriate
materials supplied by Basis in connection with potential opportunities
concerning utilization of Basis services. InterTrust will cite Basis
in future press releases pertaining to any international offerings
incorporating technology licensed from Basis.
CUSTOMER:
Company: InterTrust Technologies Corporation
___________________________________
By: ___________________________________
(Authorized Signature)
Name: ___________________________________
(Type or Print)
Title: ___________________________________
Date: ___________________________________
BASIS TECHNOLOGY CORP:
By: ___________________________________
(Authorized Signature)
Name: ___________________________________
(Type or Print)
Title: ___________________________________
Date: ___________________________________
<PAGE>
DES CORE LICENSE AGREEMENT
--------------------------
THIS DES CORE LICENSE AGREEMENT (the "Agreement") is made and entered
into as of the 29th day of January, 1997 (the "Effective Date") by and between
Dana L. How, an individual of P.O.B. 4066, Stanford, California 94309 (the
"Licensor") and InterTrust Technologies Corporation, a Delaware corporation with
offices at 460 Oakmead Parkway, Sunnyvale, California 94086, and any successor
in interest thereto (the "Licensee"), with reference to the following:
RECITALS
WHEREAS, Licensor has developed a cryptographic program called the DES
CORE Program (the "Program"); and
WHEREAS, Licensee has developed and is continuing to develop a unique,
general purpose architecture for among other things, rights protection and event
management related to electronic commerce (the "InterTrust Technology"); and
WHEREAS, Licensor desires to license the Program to Licensee,
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree to the following
terms and conditions:
1. Licensor hereby grants to Licensee a perpetual, irrevocable,
worldwide license under Licensor's intellectual property rights (a) to use, copy
and distribute copies of the Program's source code, in any medium, (b) to permit
redistribution thereof provided that Licensee publishes on documentation
accompanying each copy the copyright notice and disclaimer of warranty set forth
on Exhibit A hereto, (c) and to modify such Program as described in Section 2
hereof.
A "work based on the Program" means either the Program or any
derivative work under copyright law: that is to say, a work containing the
Program or a portion of it, either verbatim or with modifications and/or
translated into another language. (Hereinafter, translation is included without
limitation in the term "modification".)
2. Licensee may modify its copy or copies of the Program or any
portion of it, thus forming a work based on the Program, and use, copy,
distribute and permit redistribution of such modifications or work under the
terms and conditions of Section 1 above.
If identifiable sections of a work are not derived from the Program,
and can be reasonably considered independent and separate works in themselves,
then this License, and its terms, do not apply to those sections when
distributed as separate works.
In addition, mere aggregation of another work not based on the Program
with the Program (or with a work based on the Program) on a volume of a storage
or distribution medium does not bring the other work under the scope of this
License.
attachment A-3
<PAGE>
3. In full and complete consideration of the license granted to
Licensee herein, Licensee shall pay to Licensor the sum of Five Hundred Dollars
($500) within thirty (30) days of the Effective Date of the Agreement.
4. Licensor specifically agrees that upon distribution and/or
redistribution of the Program or any work based on the Program, Licensee is not
required to provide the Program's corresponding machine-readable source code to
any third parties. The source code for a work means the preferred form of the
work for making modifications to it.
5. Licensee is not responsible for enforcing compliance by third
parties to this Agreement.
6. Licensor hereby represents and warrants that he has full power and
authority to enter into this Agreement, and that no other action or proceeding
is necessary to authorize this Agreement.
NO WARRANTY
-----------
7. THERE IS NO WARRANTY FOR THE PROGRAM, TO THE EXTENT PERMITTED BY
APPLICABLE LAW. EXCEPT WHEN OTHERWISE STATED IN WRITING THE LICENSOR PROVIDES
THE PROGRAM "AS IS" WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED,
INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE. THE ENTIRE RISK AS TO THE QUALITY AND
PERFORMANCE OF THE PROGRAM IS WITH LICENSEE. SHOULD THE PROGRAM PROVE DEFECTIVE,
LICENSEE ASSUMES THE COST OF ALL NECESSARY SERVICING, REPAIR OR CORRECTION.
8. IN NO EVENT UNLESS REQUIRED BY APPLICABLE LAW OR AGREED TO IN
WRITING WILL THE LICENSOR, BE LIABLE TO LICENSEE FOR DAMAGES, INCLUDING ANY
GENERAL, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THE USE OR
INABILITY TO USE THE PROGRAM (INCLUDING BUT NOT LIMITED TO LOSS OF DATA OR DATA
BEING RENDERED INACCURATE OR LOSSES SUSTAINED BY LICENSEE OR THIRD PARTIES OR A
FAILURE OF THE PROGRAM TO OPERATE WITH ANY OTHER PROGRAMS), EVEN IF LICENSOR HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
9. This Agreement constitutes the entire understanding and contract
between Licensor and Licensee with respect to the subject matter hereof and
supersedes any and all prior or contemporaneous oral or written representations
or communications with respect to the subject matter hereof as of the date
hereof.
2
<PAGE>
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed as of the date first written above by the undersigned duly authorized.
DANA L. HOW INTERTRUST TECHNOLOGIES
CORPORATION
- ------------------------------- -----------------------------
By: Edmund J. Fish, Vice President and
General Counsel
3
<PAGE>
EXHIBIT A TO THE DES CORE LICENSE AGREEMENT
Form of Copyright Notice and Disclaimer:
- ---------------------------------------
des - fast & portable DES encryption & decryption
Copyright (C) 1992 Dana L. How
THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
4
<PAGE>
Exhibit A-1
[*] License Amendment
This [*] License Amendment is entered into this 30th day of November, 1998, by
----
and between FairCom Corporation, a Missouri corporation, having its principal
place of business at 2100 Forum Blvd., Suite C, Columbia, Missouri, 65203
("FairCom") and InterTrust Technologies Corporation, a Delaware corporation,
having its principal place of business at 460 Oakmead Parkway, Sunnyvale,
California 94086-4708, ("Licensee").
WHEREAS, FairCom and Licensee have previously entered into a [*] License
Agreement, identified by Serial Number 472125 ("Agreement"), attached hereto
as Exhibit A and made a part hereof by reference; and
WHEREAS, FairCom and Licensee desire to amend the Agreement, but only in the
manner and for the purposes set forth herein; and
WHEREAS, the parties agree that the purpose of this Amendment is to amend the
Agreement to allow Licensee's use of FairCom's technology ("Software") in
connection with the development and distribution to its customers (and to its
customers' customers) of software products relating to the protection and
management of digital information, events and/or trusted transactions (the
"Rights/Event Management Field") into which the Software has been incorporated
as a black box binary executable ("InterTrust Products"); and
WHEREAS, the InterTrust Products are included as applications within a systems
developers kit currently identified as and marketed under the names Commerce 1.0
and Enterprise 1.0, are used and sold only in connection with the Rights/Event
Management Field, and the InterTrust Products' APIs do not expose any Software
interfaces.
NOW, Therefore, the parties hereto do hereby covenant and agree to amend the
Agreement as follows:
1. License. FairCom hereby agrees to allow Licensee to use the Software to
-------
develop, and to incorporate the Software in, the InterTrust Products and to
allow Licensee to distribute the InterTrust Products to its customers
("Customers"), and allow Customers to distribute the InterTrust Products to
their customers, including directly or indirectly to end-users (such Customers'
customers including directly or indirectly to end-users, collectively, "Customer
End-Users"), subject, however, to all of the following terms, limitations and
conditions:
A. Within five (5) days of the execution of this Amendment, Licensee shall
pay to FairCom a fee of One Thousand and No/100 US Dollars ($1,000.00); AND
B. FairCom shall have the right, upon execution of an appropriate non-
disclosure agreement provided by Licensee, to review the InterTrust Products
from time to time only to the extent necessary to review the manner in which the
Software is incorporated into the InterTrust Products, and provided that any
such review shall occur not more than twice annually and under no circumstances
shall FairCom have any access whatsoever to security, tamper resistance, or
encryption aspects of the InterTrust Products, and/or any InterTrust information
labeled Top Secret Information; AND
C. FairCom grants Licensee the right to distribute, and to permit
Customers to distribute to Customer End-Users, the Software in binary executable
format solely as incorporated into the InterTrust Products in binary executable
form and provided for herein provided that (1) the Software API is not able to
be exported to Customers or to Customer End-Users, and (2) the InterTrust
Products do not permit Customers or Customer End-Users to create Software data
files or index files in any manner; AND
- --------------------------------------------------------------------------------
Page 1
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
Exhibit A-1
D. Licensee may distribute the Software in object or source code form as
incorporated into the InterTrust Products if, and only if, each object or source
code version of the InterTrust Products are distributed with a complete [*]
package, including FairCom's [*] License Agreement; AND
E. Licensee shall purchase all of the [*] packages to be distributed with
object or source code versions of the Products from FairCom. FairCom agrees to
sell Licensee said [*] packages at the then current retail price of [*]; AND
F. Licensee shall include in the InterTrust Products' license agreements
provisions which prohibit (1) reverse engineering of the Software, (2)
modification of the Software in any manner whatsoever (except pursuant to prior
written agreement with FairCom), and (3) the use of the Software other than as
the Software is incorporated into the InterTrust Products in any manner for the
development or distribution of: an operating system; a computer language
compiler or interpreter; a general purpose communication utility; a general
purpose database or file handler, including a general purpose Open DataBase
Connectivity ("ODBC") driver or a general purpose JAVA driver; or an application
development system; AND
G. Licensee agrees to include in the InterTrust Products' license
agreements a provision under which the InterTrust Products' direct or indirect
licensees agree, with respect to the Software, to all applicable the terms,
limitations and conditions of the [*] License Agreement consistent with the
provisions hereof; AND
H. Licensee confirms that the Software in object or source code form as
incorporated into the InterTrust Products has not been distributed by InterTrust
to anyone without permission under the Agreement prior to the effective date of
this Amendment; AND
I. Licensee agrees that the minimum annual compensation to be paid by
Licensee to FairCom in order to maintain the rights granted in this Amendment
shall be One Thousand and No/100 US Dollars ($1,000.00).
2. Copyright Notices. Licensee shall include in the InterTrust Products, and
-----------------
require inclusion by its Customers of, copyright notices (and, as appropriate,
patent notices) as required by law to protect FairCom's intellectual property
rights (including copyrights, trademarks, service marks, trade secrets, patents,
moral rights, contract rights, mask work rights, and other proprietary rights)
in the Software.
3. Archive Copies. Licensee may make an unlimited number of copies of the
--------------
Software for archival purposes only. Licensee shall not use any such copies of
the Software for any other purpose whatsoever.
4. Price Terms; Confidentiality. The price terms of this Amendment are
-----------------------------
confidential, and no press release or other written or oral disclosure of any
nature regarding the price terms of this Amendment shall be made by either party
without the other party's prior written approval; however, approval for such
disclosure shall be duly given to the extent required to comply with
governmental regulations, judicial procedure or court order.
5. Termination. Licensee may terminate this Amendment for any reason, or for no
------------
reason, upon giving ninety (90) days prior written notice to FairCom. In the
event Licensee breaches any term, condition or limitation of this Amendment and
fails to correct the violation within ninety (90) days of notification the other
party may, at its sole option, immediately terminate this Amendment by giving
written notice of such termination and exercise any or all of its legal and
equitable remedies. Any amounts due and owing to FairCom shall become due upon
termination of this Amendment for whatever reason. The licenses granted herein
to Customers and Customer End-Users shall survive for Customers and Customer
End-Users who receive InterTrust Products subject to and in accordance with the
terms hereof prior to termination of this Amendment.
6. Assignment. This Amendment may be assigned by FairCom. Licensee shall not
-----------
assign this Amendment without the prior written consent of FairCom.
- --------------------------------------------------------------------------------
Page 2
*CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
Exhibit A-1
7. Benefit of Successors and Assigns. This Amendment shall be binding upon and
----------------------------------
inure to the benefit of each of the parties hereto and, subject to the
provisions of Section 4 above, their respective legal successors and assigns.
8. Notices. Except as otherwise expressly specified herein, all notices,
--------
requests or other communications required hereunder shall be in writing and
shall be deemed to have been given or made if delivered personally, or mailed by
certified or registered mail, postage prepaid, return receipt requested, to the
parties at their respective addresses first set forth above, or at such other
addresses as shall be specified in writing by either of the parties to the other
in accordance with the terms and conditions of this section. All notices,
requests or communications shall be deemed effective upon personal delivery or
five (5) days following deposit in the mail in accordance with this section.
9. Governing Law; Choice of Forum. This Amendment is deemed to have been
-------------------------------
executed and entered into in Boone County, Missouri, and shall be construed
according to the laws of the State of Missouri. Any dispute concerning or
arising out of this Amendment shall be commenced and prosecuted in the
appropriate forum or court located in Boone County, Missouri, and Licensee
hereby consents to personal jurisdiction in such forum or court.
10. Affirmation. All other terms of the Agreement between the parties shall
------------
remain in full force and effect as if more fully set forth herein. In case of
conflict, this Amendment shall govern the Agreement.
11. Entire Agreement. This Amendment and the Agreement are the complete and
------------------
exclusive contract between the parties with respect to the subject matter
hereof, which supersedes and merges all prior proposals, understandings and all
other agreements, oral and written, between the parties relating to the subject
matter hereof.
12. Waiver. No failure to exercise, and no delay in exercising, on the part of
-------
either party, any privilege, any power or any rights hereunder, will operate as
a waiver thereof, nor will any single or partial exercise of any right or power
hereunder preclude further exercise of any other right hereunder.
13. Attorney Fees. FairCom shall be entitled to recover its reasonable
--------------
attorney fees and costs (including fees and costs of appeal) awarded by a court
of competent jurisdiction and as permitted by law, incurred in connection with
any action or proceeding between FairCom and Licensee arising out of or
related to this Amendment and finally resolved in FairCom's favor substantially
according to FairCom's prayer for relief.
14. Survival of Obligations. All of Licensee's obligations under the Agreement
------------------------
and this Amendment shall survive the termination of the Agreement and this
Amendment for any reason whatsoever.
IN WITNESS WHEREOF, the duly authorized representatives of the parties have
executed this Amendment the day and year first written above.
For FairCom Corporation: For InterTrust Technologies Corporation:
2100 Forum Blvd., Suite C 460 Oakmead Parkway
Columbia, MO 65203 Sunnyvale, CA 94086-4708
/s/ RAYMOND A. BROWN /s/ EDMUND J. FISH
- -------------------------------- --------------------------------------
Signature Signature
Raymond A. Brown, President Edmund J. Fish, EVP & General Counsel
- --------------------------------------------------------------------------------
Page 3
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITTH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
Exhibit A
The two (2) following pages are Licensee's [*] License Agreement.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*] License Agreement
CAREFULLY READ THE TERMS AND CONDITIONS OF THIS AGREEMENT BEFORE OPENING THE
ACCOMPANYING FAIRCOM MEDIA PACKAGE(S). OPENING THE FAIRCOM MEDIA PACKAGE(S)
INDICATES YOUR ACCEPTANCE OF THESE TERMS AND CONDITIONS. IF YOU DO NOT AGREE
WITH ANY TERM, CONDITION OR LIMITATION OF THIS AGREEMENT, PROMPTLY RETURN THE
UNOPENED MEDIA PACKAGE(S) AND ALL ITEMS ACCOMPANYING THE PACKAGE(S) TO YOUR
SUPPLIER.
This is a legally binding and enforceable Agreement between you (which is you
personally if you are acting on your own behalf, or which is the organization,
corporation or other entity on whose behalf you are acting) and FairCom
Corporation, hereinafter called "FairCom".
1. Grant of License. Subject to all of the terms, conditions and limitations
set forth herein, FairCom grants you the non-exclusive right for one (1)
person ("Registered Programmer") to use the FairCom [*] (comprised of the
accompany [*] source code, documentation, sample and utility programs,
hereinafter collectively called the "Software"), to develop computer
applications. This License Agreement is effective upon your opening the
accompanying FairCom Media Package(s) and shall continue in effect until
terminated. You may terminate this License Agreement at any time. In the
event you violate any term, condition or limitation of this License
Agreement, and fail to correct the violation within fourteen (14) days of
notification, FairCom may, at its sole option, terminate this License
Agreement. Upon termination of this License Agreement by you or by FairCom
you agree to immediately return the Software to FairCom, to continue to
maintain the Software confidential, and to immediately destroy all copies of
the Software, whether in whole or in part, whether or not modified, whether
in source, object or binary executable form.
2. Proprietary Information. You understand and agree that the Software is and
remains the confidential property of FairCom, and is protected by United
States copyright laws and international treaty provisions, You are hereby
informed that the Software contains certain "Proprietary Information" which
belongs only to FairCom.
As used in this Agreement, "Proprietary Information" means the [*] source
and object code and the inventions, algorithms, mathematical constraints,
know-how and ideas embodied in the [*] source and object code, the
documentation, sample and utility programs received by you from FairCom or
from any third party under obligation with FairCom to maintain such
information as confidential. You agree not to remove, disclose to any
third party, copy or make summaries of the Proprietary Information or
utilize said Proprietary Information for any purpose, except as
specifically granted herein.
3. Title. The Software is licensed, not sold, to you. This license does not
convey to you any ownership interest in the Software or any FairCom
trademark or registered trademark, but only a limited right to use the
Software in accordance with all of the terms, conditions and limitations of
this License Agreement. The Software is distributed subject to limited
distribution and limited disclosure only. This license does not permit you,
or any other person to:
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
a) disclose or transfer the Software to any person or entity not bound by
this License Agreement; or
b) Translate the Software to another computer language; or
c) modify the copyright and/or statements of confidentiality embedded in the
Software; or
d) use the Software to develop a database server; an operating system; a
computer language compiler or interpreter; a general purpose communication
utility; a general purpose database or file handler, including a general
purpose Open DataBase Connectivity ("ODBC") driver or general purpose
JAVA/TM/ driver; or an application development system; or
e) distribute the Software or any application using the Software to any one
for the purpose of building a database server; an operating system; a
computer language compiler or interpreter; a general purpose communication
utility; a general purpose database or file handler, including a general
purpose ODBC driver or general purpose JAVA driver; or an application
development system.
4. Backup Copies. You are permitted to make a maximum of two (2) copies of the
Software for backup purposes only. Media which contains the Software in
source code for or in linkable object form, whether in whole or in part, and
whether or not modified, must display the following notice:
This computer software is the confidential and proprietary property
of FairCom Corporation. Any unauthorized use, reproduction or transfer
of this computer software is strictly prohibited. Copyright 1984-
1998, FairCom Corporation. This is an unpublished work, and is subject
to limited distribution and restricted disclosure only. All right
Reserved.
5. Application Distribution. You have a royalty-free right to reproduce and
distribute binary executable files which contain some or all of the
Software, also only in binary executable form, provided that:
a) the binary executable files constitute an application which is not a
database server; an operating system; a computer language compiler or
interpreter, a general purpose communication utility; a general purpose
database or file handler, including a general purpose ODBC driver or
general purpose JAVA driver, or an application development system; and
b) the media containing the binary executable files displays your copyright
notice; and
c) you display on the title page or page of any documentation which
contains other product copyright notices the following FairCom legend
(art work or Postscript files provided by FairCom) along with FairCom's
copyright and trademark registration notice shown below;
Portions copyright 1984-1998 FairCom Corporation. "FairCom" and "[*]"
are trademarks of FairCom Corporation and are registered in the United
States and other countries. All Rights Reserved.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
d) you display the FairCom copyright and trademark notice:
i) on the Product start-up screen, or
ii) in the About Box, or
iii) on the media containing the application using the Software
e) and within forty-five (45) days of the initial transfer, delivery or
shipment of said binary executable files to anyone, you provide FairCom
proof of your compliance with subparagraphs 5(c) and 5(d).
In the event you cannot comply with all of the provisions of this Section 5
contact FairCom immediately regarding possible amendment of this License
Agreement.
6. Assignment of License. You may not rent, lease or share the Software, but
you may assign this Agreement, provided:
a) You retain absolutely no copies of the Software or the accompanying
documentation; and
b) the assignee agrees to and signs the FairCom Software License Transfer
Agreement and delivers same to FairCom prior to such assignment.
7. Trademarks. "[*]", "FairCom" and FairCom's circular disc logo are registered
trademarks of FairCom in the United States and other countries. No right or
ownership interest to such trademarks is granted to you herein. You hereby
agree that you will not use these trademarks, except as specifically
required by this License Agreement, without the express written consent of
FairCom. Java and Java-based marks are trademarks or registered trademarks
of Sun Microsystems, Inc. in the United States and other countries. FairCom
is independent of Sun Microsystems, Inc.
8. Disclaimer of Warranties. The entire risk as to the quality and performance
of the Software is with you. Should the Software prove defective, you assume
the entire cost of all necessary servicing, repair and correction. FairCom
does not warrant that the functions contained in the Software will meet your
requirements or that the operation of the Software will be uninterrupted or
error free. THE SOFTWARE IS LICENSED "AS IS", AND FAIRCOM DISCLAIMS ANY AND
ALL OTHER WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OR MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
9. Limited Liability. FairCom's cumulative and total liability to you or any
other party for any claim, demand or action arising from or related to this
License Agreement or your use of the Software (whether in contract,
warranty, tort (including negligence), product liability, patent or
copyright infringement or any other theory whatsoever), including any
damages from computer viruses, shall not exceed the license fee paid to
FairCom for the use of the Software. IN NO EVENT SHALL FAIRCOM BE LIABLE FOR
ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EXEMPLARY
DAMAGES, LOST PROFITS, OR DATA LOSS EVEN IF FAIRCOM IS ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES IN ADVANCE.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
10. U.S. Government Restricted Rights. If you are acting on behalf of any unit
or agency of the government of the United States of America, hereinafter
called the "Government", the following provisions apply:
a) the Government acknowledges FairCom's representation that the Software
was developed exclusively at private expense and no part of it is in the
public domain;
b) the Government acknowledges FairCom's representation that the Software
is "restricted computer software" as that term is defined in Section
27.401 of the Federal Acquisition Regulations and is "commercial
computer software" as that term is defined in Section 227.401(1) of the
Department of Defense Federal Acquisition Regulation Supplement,
hereinafter called "DFARS";
c) the Government agrees that:
1. if the Software is supplied to the Department of Defense, the
Government is acquiring no more than the minimum restricted rights
in the Software, as the term "restricted rights" is defined in
Subparagraph (a)(17) of the Rights in Technical Data and Computer
Software clause at DFARS 252.227-7013, and the Government agrees
that the Software is marked as follows:
RESTRICTED RIGHTS LEGEND Use, duplication or disclosure by the
Government is subjected to restrictions as set forth in
Subparagraph(c)(1)(ii) of the Rights in Technical Data and Computer
Software clause at DFARS 252.227-7013. FairCom/R/ Corporation 2100
Forum Blvd., Suite C, Columbia, MO 65203-5456.
2. if the Software is supplied to any unit or agency of the Government
other than the Department of Defense, the Government's rights in the
Software shall be no more than those rights set forth in
Subparagraphs (c)(1) and (c)(2) of the Commercial Computer
Software-Restricted Rights, at 48CFR52.227-19, and the Government
agrees that the Software is marked as follows:
This is an unpublished work, and is subject to limited distribution
and restricted disclosure only. All Rights Reserved.
11. Export Restrictions. You may not export or reexport the Software or any
files created under the license granted to you herein except as authorized
by United States law and the laws of the jurisdiction in which the Software
was obtained. In particular, but without limitation, the Software or any
files created under the license granted to you herein may not be exported
or reexported into (or to a national or resident of) Cuba, Iran, Iraq,
Libya, North Korea, Sudan, Syria or any other U.S. embargoed country or to
anyone on the U.S. Treasury Department's list of Specially Designated
Nationals or the U.S. Department of Commerce's Table of Denial Orders. You
shall not knowingly provide the Software or any files created under the
license granted to you herein to any organization which is (a) located in
any such country, or (b) under the control of a national or resident of any
such country or on any such list.
12. Governing Law. This License Agreement is deemed to have been executed and
entered into in Boone County, Missouri, and shall be construed in
accordance with the laws of the State of Missouri. Any dispute concerning
or arising out of this License Agreement shall be commenced and prosecuted
in the appropriate forum or court located in Boone County, Missouri, and
you hereby consent to personal jurisdiction in such forum or court.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
13. Access. You agree and authorize FairCom, or its authorized representative,
access to any location where the Software is being used in order to
verify that your use of the Software complies with all of the terms,
conditions and limitations set forth in this License Agreement.
14. Severability. Should any provision of this License Agreement be adjudged
invalid, void or unenforceable by a court of competent jurisdiction, such
judgment shall not affect the validity of any other section, term,
condition or limitation set forth herein.
15. Waiver. No failure to exercise, and no delay in exercising, on the part of
either party, any privilege, any power or right herein will operate as a
waiver thereof, nor will any single or partial exercise of any right or
power herein preclude further exercise of any right herein.
16. Entire Agreement. This License Agreement constitutes the entire
understanding between the parties hereto with respect to the subject matter
hereof and supersedes any and all prior or contemporaneous oral or written
agreements, understandings, representations or communications between the
parties.
17. Survival of Obligations. All of your obligations and responsibilities
under this License Agreement shall survive its termination for any reason.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH
THE SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
CONFIDENTIAL
EXHIBIT B
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
Exhibit B deleted by subsequent amendment.
B-1
*THIS EXHIBIT WAS DELETED BY AN AMENDMENT ATTACHED AS EXHIBIT 10.18 TO THE
REGISTRATION STATEMENT
<PAGE>
CONFIDENTIAL
EXHIBIT C
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
TRADEMARKS
----------
InterTrust Trademarks
---------------------
AssertTrust PromoteTrust
AudioTrust Publish America
AvTrust PublishTrust
Chain of Handling and Control Protected Processing Environment
Commerce 1.X RightsBar
Commerce America Rights Editor
Commerce Appliance Rights Expression Language
Commerce Modeler Rights Expression Tools
CommerceStation Rights Metafile
ComplyTrust RightsCard
Computer Aided Business RightsCore
Deployment Manager RightsStation
DigiBox RightsWallet
Electronic Express SiliconAssist
Electronic Value Chain Management SoundRights
Enterprise Modeler The InterTrust Logo
InterRights Point Transaction Authority Framework
InterTrust Commerce Architecture Trust Virtual Machine (TVM)
InterTrust Commerce Node TrustCore
InterTrustable TrustMail
InterTrustworthy TrustNet
JBar TrustPublish
JPoint TrustServer
JTrust TrustStation
MailTrust Video Trust
MetaTrust Virtual Process Control
MMTrust
MPTrust
MP3Plus
MP3Trust
MPEGTrust
MultimediaTrust
NetTrust
OpenRights
PageForward
C-1
<PAGE>
CONFIDENTIAL
Trademark Guidelines for Use of Trademarks of InterTrust Technologies
---------------------------------------------------------------------
Corporation
-----------
1. These Trademark Guidelines ("Guidelines") are provided pursuant to the
Technology Development, Marketing and License Agreement (the "Agreement")
between Universal Music Group ("Licensee") and InterTrust Technologies
Corporation ("InterTrust"). The trademarks of InterTrust Technologies
Corporation as listed on Exhibit C (as may be amended or supplemented from
time to time by InterTrust) ("InterTrust Trademarks") are valuable
intellectual property of InterTrust that identify genuine technology and/or
products licensed by InterTrust. Since the InterTrust Trademarks signify a
high standard of quality and reliability, InterTrust must maintain control
over how each of the InterTrust Trademarks is used. Therefore, these
Guidelines and the provisions of applicable sections of the Agreement must
be followed in their entirety in order to preserve and protect the
InterTrust Trademarks.
2. The InterTrust Trademarks must be used on products and/or services that
include InterTrust licensed technology or other material ("Licensed
Material") and/or that have been certified as InterTrustworthy by
InterTrust Certification Program; as provided for in the Agreement. The
InterTrust Trademarks must also be used on associated initial computer
screens, packaging, collateral documentation, manuals advertising, and
promotional materials. The InterTrust Trademarks may never be used on or in
connection with any other products or services, except as expressly
provided for under the Agreement.
3. At any place where a InterTrust Trademark is used, it must be symbolically
indicated that the InterTrust Trademark used therein is a legal trademark
belonging to InterTrust. This can be done by (1) indicating the "TM" symbol
at the upper right corner of the trademark for an unregistered InterTrust
Trademark and indicating the circled "R" (R) symbol at the upper right
corner of the trademark for a registered trademark, and (2) appending an
"*" after the InterTrust Trademark and placing the appropriate statement
selected from the following on a suitably noticeable area (which shall
generally occur near the copyright notice in text or on screen) of each
such copy:
(For an unregistered InterTrust Trademark)
*___________________ (insert InterTrust Trademark) is a trademark in
the USA and other countries of InterTrust Technologies Corporation and
is used by ________________________ (insert licensee name) under
license.
(For a registered InterTrust Trademark)
*____________________ (insert InterTrust Trademark) is a trademark in
the USA and other countries of InterTrust Technologies Corporation
(Reg. U.S. Pat. and Tm. Off.) and is used by _________________ (insert
licensee name) under license.
Some countries may require that a translated version of these above
statements be used. Licensee must comply with any such local laws.
4. InterTrust Trademarks may not be used in any manner that may cause
confusion as to the source of origin of products and/or services. As a
general matter, the only InterTrust trademark that need directly and
evidently appear on the product or service is a mark indicating compliance
with InterTrust's Specifications, as designated by InterTrust - such as the
mark "InterTrustworthy".
C-2
<PAGE>
CONFIDENTIAL
Under no circumstances may InterTrust Trademarks be used or identified on a
product or in a business name or identifier of a business, InterTrust, product,
or service not connected with licensee's products incorporating the Licensed
Material. No variations, compounds, or imitations of the InterTrust Trademarks
may be used at any time, except as expressly authorized in writing by the
InterTrust Designated Officers.
5. All of the InterTrust Trademarks that are word marks must always be used
either as a symbol standing alone or as an adjective describing a noun,
with the noun being the generic name of the product to which the trademark
is applied. (For example, "an InterTrust rights protection system" not "an
InterTrust," or "a DigiBox secure container" not "a DigiBox.") Possessive
or plural forms of the InterTrust Trademark word marks are prohibited.
Additional guidelines regarding specific uses of InterTrust Trademarks and
logos may be provided by InterTrust from time to time.
6. The InterTrust Trademarks may not be used as part of or in any emblem or
insignia or on novelty items except as expressly authorized in writing by
the InterTrust Designated Officers. Except as specifically provided in the
Agreement, the InterTrust Trademarks may not be used in combination with
any other trademark, service mark or trade name except as expressly
authorized in writing by an InterTrust Designated Officer.
7. InterTrust will provide its licensees with camera-ready artwork of the
InterTrust Trademarks. This is the form of the InterTrust Trademarks that
must be used, and this artwork shall not be altered in any way with the
exception of resizing, which may be done using conventional and
commercially available processes. The InterTrust Trademarks may be used in
black and white, the exact color scheme specified by InterTrust in the
artwork, or in such other color treatments as may have been previously
authorized in writing by InterTrust. Such authorization may be rescinded at
any time as specified in the Agreement. In addition, the area surrounding
any use of a logotype form of a InterTrust Trademark must be free of any
other pattern or graphic element for at least the width of a band that is
itself at least 20% of the logotype form of the InterTrust Trademark,
unless the licensee has received the prior written authorization of
InterTrust, which may be rescinded in writing at any time.
8. Exhibit C of the Agreement includes a listing of all current registered and
unregistered InterTrust Trademarks, and InterTrust will provide prompt
amendment of Exhibit C as registrations are obtained.
9. Schedule 1 hereto lists those countries in which licensees' use of
InterTrust Trademarks is prohibited or otherwise restricted. InterTrust
will provide prompt amendment of Schedule 1 as changes occur.
10. In addition to these Guidelines, consistent with the Agreement, InterTrust
may amend these Guidelines at any time and/or provide additional
instructions from time to time which must be followed in use of InterTrust
Trademarks. Such amendment and/or instructions shall not be inconsistent
with the terms of the Agreement.
C-3
<PAGE>
CONFIDENTIAL
SCHEDULE 1
Countries in Which Use of InterTrust Trademarks is Prohibited or Otherwise
Restricted
None
C-4
<PAGE>
EXHIBIT D-1
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
AUTHORIZED DEVELOPMENT VENTURE SIGNATURE PAGE
---------------------------------------------
By executing this SIGNATURE PAGE, effective as of __________, 199___ ("Effective
---------
Date"), the undersigned, on behalf of _______________, a _______ [corporation]
- ----
("Development Venture") certifies that it qualifies as the Development Venture
-------
in accordance with, and as such term is defined in, the TECHNOLOGY DEVELOPMENT
AND LICENSE AGREEMENT of April ___, 1999 between Universal Music Group, Inc.
("Universal") and InterTrust Technologies Corporation ("InterTrust") (the
- ----------- ----------
"Agreement") to which this SIGNATURE PAGE is attached, and agrees to be bound by
- ----------
all the terms and conditions thereof and hereof applicable to the Development
Venture and Universal as set forth in Sections 2.1(a), 2.1(c) and 2.2 of the
Agreement (except as set forth in the Agreement to the contrary) as if the
Development Venture executed the Agreement in place of Universal, to and for the
benefit of itself and the Parties hereto. All capitalized terms other than
those specifically defined herein shall have the meaning ascribed to such
term(s) in the Agreement. By executing the acknowledgment below, InterTrust
confirms that this entity is the Development Venture for the purposes of this
Agreement as of the Effective Date hereof; provided that the following terms and
-------- ----
conditions (and those terms and conditions set forth in the Agreement) are fully
met.
Development Venture hereby: (i) covenants that no Competitive Entity who owns
any capital stock, other equity interest, or security convertible into equity
interest of the Development Venture will at any time (and except as expressly
permitted with respect to [*] and [*] as concerns the ADK Technology pursuant
to Section 2.1(d)(iii): (1) Govern or participate in the Governance of the
Development Venture or (2) gain access or exposure to InterTrust Confidential
Information and/or Top Secret Information by virtue of such Person involvement
or participation in the Development Venture; (ii) acknowledges and agrees that
consistent with Section 2.1(c) of the Agreement, if any Competitive Entity is
involved in a Non-Partnering Venture Event, InterTrust shall have the right to
terminate the sublicense granted to the Development Venture, if such Competitive
Entity fails to comply with the provisions of Section 2.1(c) of the Agreement to
either (a) complete the divestiture of all its equity interest in such
Development Venture or (b) cease such Non-Partnering Venture Event; and (iii)
agrees to be bound by, to implement, and to maintain the Screening Procedures
pursuant to Section 2.2(b) hereof and Exhibit F.
Development Venture: _________________
By: __________________________________
Printed Name: ________________________
Title: _______________________________
Acknowledgment: Acknowledgment:
Universal Music Group, Inc. InterTrust Technologies Corporation
By: __________________________________ By: _______________________________
Printed Name: ________________________ Printed Name: _____________________
Title: _______________________________ Title: ____________________________
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
EXHIBIT D-2
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
AUTHORIZED CLEARINGHOUSE VENTURE SIGNATURE PAGE
-----------------------------------------------
By executing this SIGNATURE PAGE, effective as of __________, 199___ ("Effective
---------
Date"), the undersigned, on behalf of _______________, a _______ [corporation]
- ----
("Clearinghouse Venture") certifies that it qualifies as the Clearinghouse
-------
Venture in accordance with, and as such term is defined in, the TECHNOLOGY
DEVELOPMENT AND LICENSE AGREEMENT of April ___, 1999 between Universal Music
Group, Inc. ("Universal") and InterTrust Technologies Corporation ("InterTrust")
--------- ----------
(the "Agreement") to which this SIGNATURE PAGE is attached, and agrees to be
---------
bound by all the terms and conditions thereof and hereof applicable to the
Clearinghouse Venture and Universal as set forth in Sections 2.1(b), 2.1(c) and
2.2 of the Agreement (except as set forth in the Agreement to the contrary) as
if the Clearinghouse Venture executed the Agreement in place of Universal, to
and for the benefit of itself and the Parties hereto. All capitalized terms
other than those specifically defined herein shall have the meaning ascribed to
such term(s) in the Agreement. By executing the acknowledgment below,
InterTrust confirms that this entity is the Clearinghouse Venture for the
purposes of this Agreement as of the Effective Date hereof; provided that the
-------- ----
following terms and conditions (and those terms and conditions set forth in the
Agreement) are fully met.
Clearinghouse Venture hereby: (i) covenants that no Competitive Entity who owns
any capital stock, other equity interest, or security convertible into equity
interest of the Clearinghouse Venture will at any time: (1) Govern or
participate in the Governance of the Clearinghouse Venture or (2) gain access or
exposure to InterTrust Confidential Information and/or Top Secret Information by
virtue of such Person involvement or participation in the Clearinghouse Venture;
(ii) acknowledges and agrees that consistent with Section 2.2(b) of the
Agreement, if any Competitive Entity is involved in a Non-Partnering Venture
Event, InterTrust shall have the right to terminate the delegation granted to
the Clearinghouse Venture, if such Competitive Entity fails to comply with the
provisions of Section 2.1(b) of the Agreement to either (a) complete the
divestiture of all its equity interest in such Clearinghouse Venture or (b)
cease such Non-Partnering Venture Event; and (iii) agrees to be bound by, to
implement, and to maintain the Screening Procedures pursuant to Section 2.1(b)
hereof and Exhibit E.
Clearinghouse Venture: _______________
By: __________________________________
Printed Name: ________________________
Title: _______________________________
Acknowledgment: Acknowledgment:
Universal Music Group, Inc. InterTrust Technologies Corporation
By: __________________________________ By: _______________________________
Printed Name: ________________________ Printed Name: _____________________
Title: _______________________________ Title: ____________________________
<PAGE>
CONFIDENTIAL
EXHIBIT E
TO THE TECHNOLOGY DEVELOPMENT, AND LICENSE AGREEMENT
SCREENING PROCEDURES
--------------------
Universal and each Authorized Venture (each a "Screening Party") agree to
implement and abide by the following Screening Procedures:
The "Screening Procedures" are to be implemented by the Screening Party to
separate (i) its Agents that have access to Confidentially Handled Information
from (ii) Agents that have access to confidential information of Other
Technology, and are intended to ensure that such Screening Party operates
without the occurrence of a Compromising Event, including ensuring that no
Confidentially Handled Information is advertently or inadvertently shared with,
disclosed to and/or learned by unauthorized Agents. The Screening Procedures
shall, at a minimum, be in place: (i) with respect to Universal, during the Term
and for twelve (12) months thereafter; and (ii) with respect to an Authorized
Venture, during the duration of a sublicense or delegation (as the case may be)
and for twelve (12) months thereafter, and have the following procedural
attributes, serving the purposes indicated:
(1) Group Composition and Lists. The purpose of group composition lists is to
---------------------------
keep the Parties and the Persons within specific groups informed as to who
should have access to information and who should not have such access. Each
Screening Party shall use commercially reasonable efforts to keep accurate lists
of:
(a) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to, information concerning such Screening Party, or
are otherwise personnel of the Authorized Venture;
(b) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to Confidentially Handled Information (the "InterTrust
----------
Technology Group");
----------------
(c) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to contractually protected confidential information
concerning Other Technology, or concerning designs or plans concerning use
(or incorporation) of Other Technology into products and/or related services
of the Screening Party ("Other Technology Group"); and
----------------------
(d) all Authorized Executives (as defined below) who oversee both the
Other Technology Group and the InterTrust Technology Group.
"Authorized Executives" shall be strictly limited to senior business executives
---------------------
that: (i) have a direct need to know business information that is confidential
information relating to both the Other Technology Group and the InterTrust
Technology Group, and (ii) have no material active role in directing the
planning, direction, design or development of technology for such Screening
Party other than high level approval of such Screening Party's general direction
and efforts. Albhy Galuten, Lawrence Kenswil and Michael Bebel and their
successors shall at all times be considered Authorized Executives. Each
Screening Party shall ensure that only Persons who qualify as Authorized
Executives, and no other Person, are permitted to oversee personnel in both the
Other Technology Group and the InterTrust Technology Group.
Each Screening Party shall maintain copies of such lists, which shall be
available for inspection and review by InterTrust upon InterTrust's prior
written request.
E-1
<PAGE>
CONFIDENTIAL
(2) Information Security and Handling. The purpose of information security is
---------------------------------
to ensure that no Confidentially Handled Information is transferred between any
Other Technology Group participants and authorized Screening Party personnel
working with Confidentially Handled Information. The information security
procedures shall comprise, at a minimum, the following:
(a) procedures reasonably sufficient to ensure that a member of the
InterTrust Technology Group shall not discuss or disclose to persons
outside of such group (especially to any member of the Other Technology
Group) any Confidentially Handled Information of InterTrust or of such
Screening Party related to InterTrust, including any Confidentially Handled
Information regarding InterTrust Technology and/or plans, including, but
not limited to, technical and business activities, as well as any
Confidentially Handled Information of such Group or InterTrust (whether or
not such information includes information about InterTrust Technology or
information disclosed by InterTrust to Universal or such Screening Party)
except that the InterTrust Technology Group may disclose, to a commercially
reasonable extent for the purposes set forth below, such information to the
Screening Party's or Contractor's accounting, budget management, legal, or
other internal administrative departments, but solely for the purpose of
obtaining necessary administrative or non-technical support or consultant
services from such departments, or to fulfill reasonable reporting
responsibilities related to administrative management of, or high level
strategic planning for, the InterTrust Technology Group regarding its past,
present, and future activities, resources, and planning, but such reporting
shall not materially include InterTrust or InterTrust Technology Group
technical information that is Confidentially Handled Information.
(b) except to the extent expressly and reasonably in support of the
provisions of Section 2(a) immediately above, no documents (or summaries or
material portions thereof) containing Confidentially Handled Information of
InterTrust or the InterTrust Technology Group shall be disseminated or
disclosed by the Screening Party or the Contractor to any person outside of
the InterTrust Technology Group or InterTrust; and
(c) any InterTrust Technology Group information no longer in active
use must be securely disposed of, including, for example, cross-shredding
in a secure and effective manner.
(3) Computer/Network Security. The purpose of Computer/Network security is to
-------------------------
impede potential information flow between the InterTrust Technology Group and
any Other Technology Group by limiting access to electronic information. The
Computer/Network Security procedures shall comprise, at a minimum, the
following:
(a) no portable storage media (such as floppy disks, CDROM, etc.)
shall be passed between members of the InterTrust and any Other Technology
Groups unless such media has been examined and confirmed not to contain
confidential information of either group;
(b) no person or entity who is not in or working directly and closely
with, the InterTrust Technology Group, and who is not further expressly (i)
prohibited by written agreement from working with competitive technology of
the InterTrust Technology Group during the course of their work with the
Screening Party (including, as relates to any Authorized Venture, with its
participants) and (ii) bound under confidentiality and non-use provisions
that protect all InterTrust Rights in InterTrust Confidential Information
(as if they were a Universal employee as provided for in the Agreement),
shall be permitted to have access to the InterTrust Technology Group's
network resources, including file storage, printing, communications, and
other host or server resources;
E-2
<PAGE>
CONFIDENTIAL
(c) any server resources of the InterTrust Technology Group must be
protected against unauthorized access, at a minimum through the use of
individual user passwords; and
(d) no InterTrust Top Secret Information shall be stored on a server
(unless such server is used solely in connection with the InterTrust
Technology Group), or other storage media shared by persons not in the
InterTrust Technology Group, and no such InterTrust Top Secret Information
shall be included in any e-mail and other electronic communications between
members of the InterTrust Technology Group passing through any host or
server to which any member of any Other Technology Group has any access
rights. With respect to information relating to Confidentially Handled
Information other than Top Secret Information, all e-mail and other
electronic communication between members of the InterTrust Technology Group
containing any such information shall not pass through any host or server
to which any member of any Other Technology Group has any access rights
which enables users to access information as an administrator.
(4) Physical Security. The purpose of physical security is to impede potential
-----------------
flow of Confidentially Handled Information between the InterTrust Technology
Group and any Other Technology Group by physical separation. The physical
security procedures shall comprise, at a minimum, the following:
(a) no individual offices or work space may be shared by members of
the InterTrust Technology Group and any Other Technology Group; and
(b) any InterTrust Technology Group area (including areas containing
files of such Group) shall have locks and such other appropriate security
barriers sufficient to ensure that only authorized persons (including
building and administrative services) may enter or obtain access to such
areas or information contained therein. No Other Technology Group member
shall be authorized to enter such InterTrust Technology Group areas;
(5) Written Procedures and Education. Written procedures and education are
--------------------------------
intended to aid compliance with information procedures by making sure that
Screening Party employees (including members of the InterTrust Technology
Group or any Other Technology Group) are aware of the procedures they are
expected to follow. The Screening Party and its participants shall ensure
that relevant employees are informed of the Screening Procedures by, at a
minimum:
(a) memorializing the definition of a Compromising Event and the
Screening Procedures in a memorandum (the "Screening Procedures Memo") and
-------------------------
distributing the Screening Procedures Memo to each of the persons listed in
Section 1 hereof (including new members of the groups, as added);
(b) conducting one or more meetings promptly following the Effective
Date (and with new employees during an orientation meeting) to explain the
Screening Procedures to all affected personnel;
(c) periodically advising relevant employees of information which, if
not handled in accordance with these Procedures, could lead to a
Compromising Event, and of the necessity of following the Screening
Procedures; and
(d) posting the requirements of the Screening Procedures in
appropriate, prominent locations within the InterTrust Technology and Other
Technology Group areas to remind Screening Party and its participants and
their employees of their Screening Procedure obligations.
E-3
<PAGE>
CONFIDENTIAL
(6) Absence of any Other Technology Group. If none of the Screening Party or,
-------------------------------------
as relates to an Authorized Venture, any participants is engaged in
developing, marketing, distributing, promoting, or otherwise pursuing
business activities supportive of any Other Technology and such absence of
support for Other Technology is certified in writing by each such Person,
then, but only for so long as no such Party is involved in such support of
Other Technology, information, including Confidentially Handled Information
of InterTrust or of the InterTrust Technology Group, may be handled
according to the terms and conditions for Confidential Information and Top
Secret Information in the Agreement (and without such Screening
Procedures), but further only so long as: (a) no such Party becomes
involved in such support of Other Technology, and (b) the Screening Party
is compliant with the terms and conditions of this Agreement.
E-4
<PAGE>
CONFIDENTIAL
EXHIBIT F
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERTRUST TERMS
----------------
At a minimum, the Customer Agreements shall contain the terms:
(1) prohibit Customer from disassembling, modifying or
reverse engineering any portion of the InterTrust Technology incorporated in the
Universal Product (as relevant and to the maximum extent allowed under
applicable law);
(2) stipulate that such Customer has no right to use
such product in any manner whatsoever not licensed to Universal hereunder
(including outside of the Entertainment Field (except as related to use of the
InterRights Point with other licensed applications)), and/or to engage in or
perform any Clearinghouse Functions whatsoever unless such customer is an
Authorized Clearinghouse Provider;
(3) grant such Customer only the limited license, and
only such limited license as is strictly necessary, to use Universal Products
and/or associated services within the specific scope set forth in the definition
of Customer in Section 1 hereof (and/or to use an InterRights Point with other
licensed applications);
(4) permit such Customer to engage Universal and/or an
Authorized Clearinghouse Provider (as determined by Universal for its Customers)
to perform Clearinghouse Functions with respect to a Universal Product and/or
associated services, but solely in accordance with the provisions hereof;
(5) provide that if such Customer is permitted by
InterTrust, and if by InterTrust then by Universal, to modify any portion of
InterTrust Source Code, such Customer shall grant to InterTrust and InterTrust
customers a license under such Customer's patent rights, but solely to the
extent necessary to permit InterTrust and InterTrust customers to, during the
life of their use of InterTrust Technology, make, have made, use, offer for
sale, sell and/or import InterTrust Technology;
(6) brand all Universal Products that are Application
Products solely in the manner set forth in Section 5.3(c), and, further, on Co-
Branded Universal Products (as defined in Section 5.3(c)) communicate in a
significant and prominent manner through the use of one or more Universal brands
for Universal InterTrustworthy clearing services (and as set forth in Section
5.3) that Clearinghouse Function services are being performed by Universal or an
Authorized Venture, as applicable, in compliance with this Agreement;
(7) prohibit such Customer from removing, altering,
covering, obfuscating and/or otherwise defacing any InterTrust Trademarks or
Notices on any InterTrust Technology or associated documentation, marketing and
advertising materials therefor;
(8) require such Customers to place Notice on products
and associated documentation, marketing and advertising materials therefor in
full accordance with the terms and conditions of this Agreement;
F-1
<PAGE>
CONFIDENTIAL
(9) provide that such agreement may be subject to
modification as may be reasonably required to protect InterTrust's rights, for
example but without limitation, InterTrust's Intellectual Property Rights;
(10) provide that the Customer Agreement is to and for
InterTrust's benefit, and (a) in the event Universal fails to promptly enforce
its rights thereunder such rights may be enforced by InterTrust at its
discretion as a third party beneficiary (provided that notice is first provided
to Universal and Universal does not enforce its rights promptly thereafter),
and/or (b) with respect to InterTrust's Intellectual Property Rights and/or
rights in InterTrust Technology, may be enforced by InterTrust at its discretion
to enforce any of its rights in such intellectual property and technology; and
contain such other provisions as stipulated herein.
SELECT PROVISIONS TO BE INCLUDED IN END-USER AGREEMENTS
-------------------------------------------------------
1. [In the first paragraph of such Agreement] Except as expressly provided to
the contrary herein, each Transaction, as defined below, shall be subject to and
wholly governed by the then-current version of this ________________ Agreement
in force as of the date and time of such Transaction. A copy of such current
version can be located at ________________________________________ (or as
otherwise indicated by the Software). Customer agrees to abide by the terms and
conditions hereof (including pursuant to the Exhibit).
2. [Following the license provision concerning Universal software
("Software"):] Such object code version of such Software incorporates certain
software and technology (and documentation) provided by Universal under license
from InterTrust Technologies Corporation ("InterTrust"), for protecting and
managing digital information (collectively "InterTrust Software"), which is
-------------------
governed by this Agreement. In the case of any conflict with respect to (or
affecting) InterTrust Software between terms and conditions hereof set forth on
the Exhibit and terms and conditions set forth elsewhere in this Agreement, the
terms and conditions set forth on the Exhibit shall control.
3. Integrate InterTrust into standard "no modification, etc." clauses language
generally as follows: Customer's rights in the Software are for use only in
connection with the ordinary course of its business, and not for commercial
distribution of the Software to third parties or unless otherwise agreed by
Universal and InterTrust. All title and ownership rights in the Software
remains with Universal and its licensors, as applicable. Customer may make one
back-up copy of the Software for archival purposes, so long as such copy
contains the copyright and proprietary notices which are furnished with the
original copy. Customer may not modify, alter, decompile, disassemble, reverse
engineer, reverse compile or otherwise reduce the Software to human readable
form without the prior written consent of Universal, or as relates to InterTrust
Software, InterTrust; provided, however, that, notwithstanding anything
-------- -------
contained herein to the contrary, Universal's and/or InterTrust's authorization,
as applicable, shall not be required where reproduction of the Software and
translation of its form are indispensable in the European Union or Norway to
obtain the information necessary to achieve the interoperability of the Software
with other programs, provided that: (a) these acts are performed by Customer or
by another person having a right to use a copy of the Software, or on their
behalf by a person authorized to do so; (b) the information necessary to achieve
interoperability has not previously been readily available to the persons
referred to in subparagraph (a); and (c) these acts are confined solely to the
parts of the Software which are necessary to achieve interoperability.
F-2
<PAGE>
CONFIDENTIAL
4. Include InterTrust and/or "any of its licensors" in any Universal
exclusions from warranties or damages. And, in "no third party beneficiary"
clauses, include InterTrust specifically, for example, as follows: Customer
understands and acknowledges that the Services are being provided solely by
Universal and that neither the provision of the Services, nor this Agreement,
nor any other relationship between Universal and Customer creates any
relationship, contractual or otherwise, between Customer and InterTrust, or
makes Customer a third-party beneficiary of any relationship, contractual or
otherwise, between Universal and InterTrust. Accordingly, InterTrust will have
no liability whatsoever to Customer as a result of the provision of, or failure
to provide, the Services or this Agreement or any other relationship between
Universal and Customer.
5. In any "no amendment" clause, include reference to InterTrust as follows:
Except as expressly set forth herein, any change to this Agreement must be in
writing, signed by Universal and Customer, except in the case of changes being
made that materially affect InterTrust Software, which changes must be in
writing signed by Universal, Customer and InterTrust.
6. Each agreement must have a provision concerning the US Government as a
customer, substantially as follows: The Software is "commercial computer
software" or "commercial computer software documentation." If Customer is a
unit or agency of the United States Government, then the United States
Government's rights with respect to the Software are limited by the terms of
this Agreement, pursuant to FAR (S) 12.212(a) and/or DFARS (S) 227.7202-1(a), as
applicable.
7. Each agreement must have a provision concerning Export control
substantially as follows: Customer acknowledges that the Services, Software and
related technical data are subject to United States export controls imposed
under the Export Administration Regulations of the U.S. Department of Commerce
and other relevant regulations. Customer shall not export or "re-export"
(transfer) the Services, Software and related technical data unless Customer has
complied with all applicable U.S. export controls. U.S. law prohibits transfer
to any person or entity in Cuba, Iran, Iraq, Libya, North Korea, Sudan and
Syria, or to any person or entity who Customer knows or has reason to believe
will transfer the Services, Software or technical data to those locations. U.S.
law also prohibits transfer to a national of any of those countries, or to a
person or entity designated by U.S. export regulations as a "Specially
Designated National" or other Blocked Person, without the express authorization
of the United States Government. For a comprehensive description of all
applicable U.S. export controls, Customer should consult U.S. export
regulations.
8. The following Exhibit shall be included with each agreement:
EXHIBIT __
TO THE PROVISIONS CONCERNING SERVICE AND/OR RESELLER AGREEMENT
ADDITIONAL PROVISIONS RELATING TO INTERTRUST SOFTWARE
-----------------------------------------------------
1. License. The InterTrust Software that accompanies the _____________________
-------
is licensed to you solely in accordance with the terms as set forth hereof in
this Exhibit and elsewhere in the ______________________ (the "InterTrust
Software License"). Subject to the terms and conditions hereof, this InterTrust
Software License grants you a limited, personal, nonexclusive, nonsublicensable
right to use the InterTrust Software as such Software has been delivered to you
on a single computer solely: (a) as an end user or for end users; and (b) to
access and/or otherwise use content or other digital information under the
management and/or other governance of such
F-3
<PAGE>
CONFIDENTIAL
InterTrust Software, including but not limited to performing those limited
clearinghouse functions strictly and solely as set forth herein.
2. Restrictions; Prohibited Clearinghouse Use. The InterTrust Software
------------------------------------------
contains and/or embodies copyrighted material, trade secrets, patented
inventions and other proprietary material of InterTrust. In addition to those
prohibitions contained elsewhere herein, you may not (and agree that you shall
not) under this license: (a) rent, lease, loan or distribute the InterTrust
Software in whole or in part; and/or (b) use the software or any portion thereof
to create any tool or software product that can be used to create software
applications of any nature whatsoever. Except as expressly provided by the
InterTrust Software License, no other licenses or rights are granted, expressly,
or by implication or estoppel, now or in the future and all other licenses are
reserved by InterTrust. Without limiting the generality of the foregoing, this
InterTrust Software License specifically does not allow you to use, and you
agree to not control and direct the InterTrust Software or any portion thereof,
or any information derived at least in part from use of such software, to
perform any of the following functions (the "Clearinghouse Functions") except
those specific, express activities, on your own behalf (and/or on behalf of an
entity), directly authorized by, set-up by, and controlled by a provider of
clearinghouse function products and/or services acting pursuant to its license
with InterTrust:
(1) enable payment fulfillment or provision of other consideration
(including service fees, product fees or any other fees and/or charges) based at
le in part on access and/or other processing of electronic information under any
form of management, control, regulation or governance of InterTrust Software,
including information conveyed to, associated with, from, or generated by such
Software;
(2) perform any audit, billing, payment fulfillment (or provision of other
consideration) and/or other clearing activities involving more than one person;
or
(3) compile, aggregate, use and/or provide information relating to more
than one person's use of InterTrust Software and/or any digital information
and/or file structures managed, governed and/or regulated thereby, or provide
information relating to a person's use of InterTrust Software and/or any digital
information and/or file structures managed, governed and/or regulated thereby to
a third person for any commercial purpose.
Clearinghouse Functions shall include, for example, any of the following
activities or services: (A) financial clearing; (B) electronically certifying
information such as authenticating identity, class membership or other
attributes of identity context; and/or (C) providing and/or deriving information
based upon usage auditing, user profiling, and/or market surveying related to
more than one person's use of InterTrust Software and/or any digital information
managed, governed and/or regulated thereby, including compiling and/or employing
information to support advertising payment or other consideration.
You are permitted to pay bills or provide information related to your use of the
Software and observe and interact with your rights, permission and/or records
concerning use of content governed by the Software, to the extent and in the
manner provided by your Software and authorized, set-up and controlled by
________________________ pursuant to its license from InterTrust.
3. Additional Covenants. You acknowledge and agree that: (a) those aspects of
--------------------
this Agreement concerning InterTrust Software are entered into to and for the
benefit of InterTrust, and confer a third-party beneficiary right upon
InterTrust such that InterTrust shall be entitled (in its discretion) to pursue
any claim or action to enforce Customer's obligations hereunder as relate, or
otherwise
F-4
<PAGE>
CONFIDENTIAL
pursue remedies for any breach hereof concerning, InterTrust Software; and (b)
any unauthorized use of InterTrust technology contained in the InterTrust
Software would result in irreparable injury to InterTrust for which money
damages would be inadequate and in such event InterTrust shall have the right,
in addition to other remedies available at law and in equity, to immediate
injunctive relief to prevent any such unauthorized use. Nothing contained in
this Section 3 or elsewhere in this Agreement shall be construed to limit
remedies or relief available pursuant to statutory or other claims that
InterTrust may have under separate legal authority, including but not limited
to, any claim for intellectual property infringement. In addition to other
obligations hereunder, you further acknowledge and agree that you are not
licensed to (and shall not): (1) tamper with the InterTrust Software; or (2)
undertake any activity intended to bypass, modify, defeat or otherwise
circumvent (or having the intended effect of facilitating, modifying or
assisting the bypassing, defeating or circumventing of) proper and/or secure
operation of the InterTrust Software, and/or any mechanisms operatively linked
to such Software to detect and/or make more difficult attempts to bypass,
modify, defeat or otherwise circumvent the proper and/or secure operation of the
InterTrust Software.
4. Warranties. Any and all warranties that may be made with respect to the
----------
Software (including but not limited to the InterTrust Software) are made solely
by Universal and as set forth in the Service Agreement. You expressly
acknowledge and agree that as concerns InterTrust, the use of the Software is at
your own sole risk. THE INTERTRUST SOFTWARE HAS BEEN PROVIDED BY INTERTRUST
SOLELY IN THE FORM OF MIDDLEWARE, "AS IS" AND WITHOUT WARRANTY BY INTERTRUST OF
ANY KIND, AND, TO THE MAXIMUM EXTENT ALLOWED BY APPLICABLE LAW, INTERTRUST
EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, BUT NOT
LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, OR ANY WARRANTY OF NONINFRINGEMENT. THERE IS NO WARRANTY
THAT THE FUNCTIONS CONTAINED IN THE INTERTRUST SOFTWARE WILL MEET YOUR
REQUIREMENTS, OR THAT THE OPERATION THEREOF WILL BE UNINTERRUPTED OR ERROR-FREE.
INTERTRUST DOES NOT WARRANT, GUARANTEE OR MAKE ANY REPRESENTATIONS REGARDING THE
USE OR THE RESULTS OF THE USE OF THIS PRODUCT WITH RESPECT TO ITS PERFORMANCE,
ACCURACY, RELIABILITY, SECURITY CAPABILITY, CURRENTNESS OR OTHERWISE . NO ORAL
OR WRITTEN INFORMATION OR ADVICE GIVEN BY ANY PERSON SHALL CREATE A WARRANTY IN
ANY WAY WHATSOEVER RELATING TO INTERTRUST. THE ENTIRE RISK AS TO THE USE,
PERFORMANCE AND RESULTS OF THIS PRODUCT ISASSUED BY YOU. THE EXCLUSION OF
IMPLIED WARRANTIES IS NOT PERMITTED BY SOME JURISDICTION THUS, THE ABOVE
EXCLUSION MAY NOT APPLY TO YOU.
5. Further Limitation of Liability. In addition to the other provisions
-------------------------------
hereof, YOU ACKNOWLEDGE TO AND FOR INTERTRUST'S BENEFIT AND THE BENEFIT OF ITS
DIRECTORS, EMPLOYEES, OR AGENTS ("AGENTS") THAT THE INTERTRUST SOFTWARE, AS WITH
MOST SOFTWARE, MAY CONTAIN BUGS AND IS NOT DESIGNED OR INTENDED FOR USE IN
HAZARDOUS ENVIRONMENTS REQUIRING FAIL-SAFE PERFORMANCE IN WHICH THE FAILURE OF
THE APPLICATION SOFTWARE COULD LEAD TO DEATH, PERSONAL INJURY OR PHYSICAL OR
ENVIRONMENTAL DAMAGE. INTERTRUST AND ITS AGENTS SHALL HAVE NO LIABILITY
WHATSOEVER FOR ANY LOSS SUFFERED AS THE RESULT OF A BREACH OF SECURITY INVOLVING
INTERTRUST SOFTWARE, WHETHER OR NOT SUCH BREACH RESULTS FROM THE DELIBERATE,
RECKLESS OR NEGLIGENT ACTS OF ANY PERSON.
F-5
<PAGE>
CONFIDENTIAL
UNDER NO CIRCUMSTANCES SHALL INTERTRUST OR ITS AGENTS BE LIABLE FOR ANY
UNAUTHORIZED USE OF ANY CONTENT OF ANY PERSON, OR ANY USE OF THE SOFTWARE TO
DEVELOP, DISTRIBUTE OR USE OF ANY MATERIAL THAT IS DEFAMATORY, SLANDEROUS,
LIBELOUS OR OBSCENE, THAT PORTRAYS ANY PERSON IN A FALSE LIGHT, THAT CONSTITUTES
AN INVASION OF ANY RIGHT TO PRIVACY OR AN INFRINGEMENT OF ANY RIGHT TO
PUBLICITY, THAT GIVES RISE TO ANY BREACH OF CONTRACT INVOLVING ANY THIRD PARTY
OR TO ANY BUSINESS TORT OR SIMILAR CLAIM OF A THIRD PARTY OR ANY VIOLATION OF
ANY FOREIGN, FEDERAL, STATE OR LOCAL STATUTE OR REGULATION, OR THAT OTHERWISE
CAN BE REASONABLY LIKELY TO EXPOSE DEVELOPER OR INTERTRUST TO CRIMINAL OR CIVIL
ACTIONS.
IN NO EVENT WILL INTERTRUST AND/OR ITS AGENTS BE LIABLE TO YOU FOR ANY
CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES (INCLUDING DAMAGES FOR LOSS OF
BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE
LIKE) ARISING OUT OF THE USE OR INABILITY TO USE THE SOFTWARE, EVEN IF
INTERTRUST AND/OR ITS AGENTS HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. BECAUSE SOME JURISDICITONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF
LIABILITY FOR CONSEQUETNIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATION MAY NOT
APPLY TO YOU. TO THE EXTENT AS APPLIED IN A PARTICULAR CIRCUMSTANCE ANY
DISCLAIMER OR LIMITATION ON DAMAGES OR LIABILITY SET FORTH HEREIN IS WHOLLY
PROHIBITED BY APPLICABLE LAW, THEN, INSTEAD OF THE PROVISIONS HEREOF IN SUCH
PARTICULAR CIRCUMSTANCE, INTERTRUST SHALL BE ENTITLED TO THE MAXIMUM DISCLAIMERS
AND/OR LIMITATIONS ON DAMAGES AND LIABILITY AVAILABLE AT LAW OR IN EQUITY BY
SUCH APPLICABLE LAW IN SUCH PARTICULAR CIRCUMSTANCE, IN NO EVENT TO EXCEED
US$10.
6. Term. In addition to the other provisions hereof, the InterTrust Software
----
License is subject to immediate termination without notice from Universal or
InterTrust, if you breach any provision of this Exhibit or other provision of
the _________________ with respect to InterTrust Software; provided that if such
-------- ----
termination without notice is expressly prohibited by applicable law, then such
termination shall occur based upon notice from Universal or InterTrust in the
event of any breach. Upon notice from Universal or InterTrust that this
Agreement has been terminated you must return to Universal all copies of the
Software, including any copies or partial copies.
7. Miscellaneous Provisions. Any and all actions arising out of or in any
------------------------
manner affecting the interpretation of the provisions of this Exhibit, the
InterTrust Software License, or other provisions hereof directly relating to
InterTrust Software, and any action involving the InterTrust Software, whether
under this Agreement or otherwise (collectively, an "InterTrust Software
Dispute") shall be governed solely by, and construed solely in accordance with,
the laws of the United States of America and Commonwealth of Virginia, excluding
(a) conflict of laws principles; (b) the United Nations Convention on Contracts
for the International Sale of Goods; (c) the 1974 Convention on the Limitation
Period in the International Sale of Goods; and (d) the Protocol amending the
1974 Convention, done at Vienna April 11, 1980. To the extent permitted by law,
the provisions of this Exhibit shall supersede any provisions of the Uniform
Commercial Code as adopted or made applicable to the InterTrust Software in any
competent jurisdiction. As concerns any InterTrust Software Dispute, you hereby
unconditionally and irrevocably consent to the exclusive jurisdiction and venue,
as relevant, in the Courts of the Commonwealth of Virginia and in the U.S.
Federal
F-6
<PAGE>
CONFIDENTIAL
District Court, located in the City of Alexandria, Virginia (or any direct
successor thereto) and irrevocably: (a) waive any objection whatsoever
(including any objection with respect to venue) that you may now or hereafter
have to the jurisdiction or venue of said courts; and (b) consent to the service
of process of said courts in any matter relating to this License by the mailing
of process by registered or certified mail, postage prepaid, at the addresses
specified therein. If for any reason a court of competent jurisdiction finds any
provision or portion of this License to be unenforceable, such provision or
portion shall be enforced to the maximum extent permissible consistent with the
terms hereof, and the remainder of this License shall continue in full force and
effect.
*********
F-7
<PAGE>
EXHIBIT G
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
PRODUCT LEGENDS AND NOTICES
---------------------------
B) Content Of Required Notices For Distributed Products That Are Application
-------------------------------------------------------------------------
Products.
- ---------
1. Copyright Notices. A copyright notice shall be placed on Distributed
-----------------
Products (and associated materials) as set forth in Section Error! Reference
source not found. of the Agreement that shall reflect the copyright ownership
of InterTrust, as applicable, and the proper year as follows:
Copyright (C) 1997-XXXX InterTrust Technologies Corporation
All rights reserved.
2. Patent Notices. Patent notices shall be placed on Distributed Products (and
---------------
associated materials) as set forth in Section Error! Reference source not
found. of the Agreement that shall reflect InterTrust patent rights as
follows:
This product and its use may be covered by one or more of the following patents:
US 4,827,508, US 4,977,594, US 5,050,213, US 5,410,598, EP 329681, AT133305 and
DE3751678. Additional US and foreign patents are pending.
Such patent notice shall be modified to reflect any additional patents under the
Licensed Rights issued to InterTrust where Universal is provided licenses under
such additional patent rights under this Agreement and/or such patents relate to
InterTrust Technology.
3. Trademark Notices. Trademark notices shall be placed on Distributed Products
------------------
(and associated materials) as set forth in Section Error! Reference source
not found. of the Agreement and Trademark Guidelines as attached below and
from time to time to be provided to Universal as specified in the Agreement,
and shall have such content as set forth in the Trademark Guidelines.
4. Third Party Notices. The Documentation contains some references to
-------------------
trademarks owned by entities other than InterTrust. Other trademarks that are
referenced herein or in the Documentation are the property of their
respective owners. For example, Microsoft and Windows are registered
trademarks of Microsoft Corporation.
Certain portions of the InterTrust Technology may incorporate one or more of the
following software modules, and if such modules are used in Universal Products,
Universal shall include the following notices, as applicable:
* (C) 1997 Basis Technology. All rights reserved.
* Certain portions of the Software have used [*] and [*], to which this notice
applies: [*] Copyright (C) 1990-2, [*] Copyright (C) 1991-2, [*], Inc. All
rights reserved. License to copy and use this software is granted provided that
it is identified as the "[*], Inc. [*]", and/or "[*], Inc. [*]" in all material
mentioning or referencing this software or this function. License is also
granted to make and use derivative works provided that such works are identified
as "derived from the [*], Inc.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
[*]", and/or "derived from the [*], Inc. [*]" in all material mentioning or
referencing the derived work. [*], Inc. makes no representations concerning
either the merchantability of this software or the suitability of this software
for any particular purpose. It is provided "as is" without express or implied
warranty of any kind. These notices must be retained in any copies of any part
of this documentation and/or software.
* Certain portions of the Software have used DES software, to which this notice
applies: des-fast & portable DES encryption & decryption Copyright (C) 1992 Dana
L. How. THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (c) 1995 by [*].
Permission to use, copy, and modify this software without fee is hereby granted,
provided that this entire notice is included in all copies of any software which
is or includes a copy or modification of this software and in all copies of the
supporting documentation for such software. This software may be subject to
export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER UNITED STATES EXPORT
REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE SOFTWARE). THIS
SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR IMPLIED WARRANTY. IN
PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST TECHNOLOGIES
CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND CONCERNING THE
MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY PARTICULAR PURPOSE.
* Certain portions of the Software (as indicated in such portions' source files)
have used [*] software, to which this notice applies: Copyright (C) 1994 [*]
Company. Permission to use, copy, modify, distribute and sell this software and
its documentation for any purpose is hereby granted without fee, provided that
both that copyright permission notice and this permission notice appear in
supporting documentation. [*] Company (and InterTrust Technologies Corporation)
make no representations about the suitability of this software for any purpose.
It is provided "as is" without express or implied warranty.
* Certain portions of the Customizable Technology (as indicated in such
portions' source files) have used Independent JPEG Group software and certain
portions of the Software supplied in executable format (as indicated in
Software's "About Box") are based in part upon the work of the Independent JPEG
Group. (C) 1991, 1992, 1993, 1994, 1995, Thomas G. Lane. The Graphics
Interchange Format (C) is the copyright property of CompuServe Incorporated. GIF
(sm) is a Service Mark property of CompuServe Incorporated. Certain portions of
the Independent JPEG Software were loosely based on giftoppm from the PBMPLUS
distribution as of February 1991 to which this notice applies: Copyright (C)
1990, David Koblas. Permission to use, copy, modify, and distribute this
software and its documentation for any purpose and without fee is hereby
granted, provided that the above copyright notice appears in all copies and that
both that copyright notice and this permission notice appear in supporting
documentation. This software is provided "as is" without express or implied
warranty.
* CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
<PAGE>
5. Field of Use Notices. Field of Use notices shall be placed on Distributed
--------------------
Products (and associated materials) as set forth in Section Error! Reference
source not found. of the Agreement as follows:
"This product is licensed and adapted only for certain limited, expressly
approved uses, and solely as provided in the Customer Agreement (or, as
applicable, the sublicense agreement) executed in connection with your receipt
of this Product. No other licenses are granted. Specifically and without
limitation no licenses: (i) to modify and/or reverse engineer this product;
and/or (ii) any performance of clearinghouse functions have been granted. As
more fully set forth in the Customer Agreement, clearinghouse functions are
those activities using this product or derived from use of this Product that:
(a) enable payment fulfillment or provision of consideration
(including service fees, product fees or any other fees and/or
charges) based at least in part on gathering and/or processing of
electronic information conveyed by or associated with contents of
DigiBox containers;
(b) perform any audit, billing, payment fulfillment (or provision of
other consideration) and/or other clearing activities involving
more than one person; or
(c) compile, aggregate, use and/or provide information relating to
more than one person's use of one or more DigiBox containers
and/or contents thereof for any consideration.
Clearinghouse Functions shall include, for example, any of the
following activities or services: (a) financial clearing; (b)
providing object registry services and rights, permission, prices,
and/or rules information for registered objects; (c) electronically
certifying information such as authenticating identity, class
membership or other attributes of identity context; (d) providing
information based upon usage auditing, user profiling, and/or market
surveying related to more than one person's use of one or more DigiBox
container and/or contents thereof; and (e) employing information
derived from user exposure to content such as advertising."
6. Warranty Notices and Disclaimers.
--------------------------------
The following warranty notices shall be placed on all Distributed Products (and
associated materials), as set forth in Section Error! Reference source not
found. of the Agreement in the form here specified, and in bold letters, the
following warranty disclaimer:
"THE INTERTRUST SOFTWARE HAS BEEN PROVIDED BY INTERTRUST TECHNOLOGIES
CORPORATION ("INTERTRUST") SOLELY IN THE FORM OF MIDDLEWARE, "AS IS" AND WITHOUT
----------
WARRANTY BY INTERTRUST OF ANY KIND, AND, TO THE MAXIMUM EXTENT ALLOWED BY
APPLICABLE LAW, INTERTRUST EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE, OR ANY WARRANTY OF NONINFRINGEMENT. THERE
IS NO WARRANTY THAT THE FUNCTIONS CONTAINED IN THE INTERTRUST SOFTWARE WILL MEET
YOUR
<PAGE>
REQUIREMENTS OR THAT THE OPERATION THEREOF WILL BE UNINTERRUPED OR ERROR-FREE.
INTERTRUST DOES NOT WARRANT, GUARANTEE OR MAKE ANY REPRESENTATIONS REGARDING THE
USE OR THE RESULTS OF THE USE OF THIS PRODUCT WITH RESPECT TO ITS ACCURACY,
RELIABILITY, SECURITY CAPABILITY, CURRENTNESS OR OTHERWISE. NO ORAL OR WRITTEN
INFORMATION OR ADVICE GIVEN BY ANY PERSON SHALL CREATE A WARRANTY IN ANY WAY
WHATSOEVER RELATING TO INTERTRUST. THE ENTIRE RISK AS TO THE USE, PERFORMANCE
AND RESULTS OF THIS PRODUCT IS ASSUMED BY YOU. THE EXCLUSION OF IMPLIED
WARRANTIES IS NOT PERMITTED BY SOME JURISDICTION THUS, THE ABOVE EXCLUSION MAY
NOT APPLY TO YOU."
Universal shall also include, in the same place, disclaimer of liability
language as follows:
"YOU ACKNOWLEDGE TO AND FOR INTERTRUST'S BENEFIT AND THE BENEFIT OF THEIR
DIRECTORS, EMPLOYEES OR AGENTS ("AGENTS") THAT THE INTERTRUST SOFTWARE, AS WITH
MOST SOFTWARE, MAY CONTAIN BUGS AND IS NOT DESIGNED OR INTENDED FOR USE IN
HAZARDOUS ENVIRONMENTS REQUIRING FAIL-SAFE PERFORMANCE IN WHICH THE FAILURE OF
THE APPLICATION SOFTWARE COULD LEAD TO DEATH, PERSONAL INJURY OR PHYSICAL OR
ENVIRONMENTAL DAMAGE. INTERTRUST AND ITS AGENTS SHALL HAVE NO LIABILITY
WHATSOEVER FOR ANY LOSS SUFFERED AS THE RESULT OF A BREACH OF SECURITY INVOLVING
INTERTRUST SOFTWARE, WHETHER OR NOT SUCH BREACH RESULTS FROM THE DELIBERATE,
RECKLESS OR NEGLIGENT ACTS OF ANY PERSON.
UNDER NO CIRCUMSTANCES SHALL INTERTRUST OR ITS AGENTS BE LIABLE FOR ANY
UNAUTHORIZED USE OF ANY CONTENT OF ANY PERSON, OR ANY USE OF THE SOFTWARE TO
DEVELOP, DISTRIBUTE OR USE OF ANY MATERIAL THAT IS DEFAMATORY, SLANDEROUS,
LIBELOUS OR OBSCENE, THAT PORTRAYS ANY PERSON IN A FALSE LIGHT, THAT CONSTITUTES
AN INVASION OF ANY RIGHT TO PRIVACY OR AN INFRINGEMENT OF ANY RIGHT TO
PUBLICITY, THAT GIVES RISE TO ANY BREACH OF CONTRACT INVOLVING ANY THIRD PARTY
OR TO ANY BUSINESS TORT OR SIMILAR CLAIM OF A THIRD PARTY OR ANY VIOLATION OF
ANY FOREIGN, FEDERAL, STATE OR LOCAL STATUTE OR REGULATION, OR THAT OTHERWISE
CAN BE REASONABLY LIKELY TO EXPOSE DEVELOPER OR INTERTRUST TO CRIMINAL OR CIVIL
ACTIONS.
IN NO EVENT WILL INTERTRUST AND/OR ITS AGENTS BE LIABLE TO YOU FOR ANY
CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES (INCLUDING DAMAGES FOR LOSS OF
BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE
LIKE) ARISING OUT OF THE USE OR INABILITY TO USE THE SOFTWARE, EVEN IF
INTERTRUST AND/OR ITS AGENTS HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. BECAUSE SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF
LIABILITY FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATIONS MAY NOT
APPLY TO YOU. TO THE EXTENT AS APPLIED IN A PARTICULAR CIRCUMSTANCE ANY
DISCLAIMER OR LIMITATION ON DAMAGES OR LIABILITY SET FORTH HEREIN IS WHOLLY
PROHIBITED BY APPLICABLE LAW, THEN,
<PAGE>
INSTEAD OF THE PROVISIONS HEREOF IN SUCH PARTICULAR CIRCUMSTANCE, INTERTRUST AND
ITS AGENTS SHALL BE ENTITLED TO THE MAXIMUM DISCLAIMERS AND/OR LIMITATIONS ON
DAMAGES AND LIABILITY AVAILABLE AT LAW OR IN EQUITY BY SUCH APPLICABLE LAW IN
SUCH PARTICULAR CIRCUMSTANCE, IN NO EVENT TO EXCEED US$10."
7. Confidentiality and Trade Secret Notices. Except as described below for
----------------------------------------
InterTrust Top Secret Information and unless the following already contains such
notices included by InterTrust, Universal shall place trade secret notices in
such places as specified in Section Error! Reference source not found. of the
Agreement (as applicable) and as applicable, conspicuously and prominently: (a)
on the cover, first page, and in noticeable form in the header or footer of all
subsequent pages, of all printed copies of any InterTrust Confidential
Information authorized under this Agreement, (b) on packaging of media
containing such information, such as floppy disks, and (c) on the initial screen
of all electronic copies of any InterTrust Confidential Information. For
Confidential Information, the content of such trade secret notice provided to
Licensee pursuant to the agreement between the parties.
CONFIDENTIAL INFORMATION OF INTERTRUST TECHNOLOGIES CORPORATION
Where InterTrust Technologies Corporation has provided Universal with Top
Secret Information, Universal shall provide notices as set forth immediately
above, having the following content:
TOP SECRET INTERTRUST INFORMATION, SUBJECT TO SPECIAL HANDLING PROCEDURES AS SET
FORTH IN THE AGREEMENT BETWEEN THE PARTIES. DO NOT COPY, DISCLOSE, OR
DISTRIBUTE.
<PAGE>
CONFIDENTIAL
EXHIBIT H
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERTRUST MARK DENOTING COMPLIANCE
-----------------------------------
[LOGO OF METATRUST CERTIFIED]
H-1
<PAGE>
CONFIDENTIAL
EXHIBIT I
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
FORM OF INTERTRUST CONFIDENTIALITY AGREEMENTS
---------------------------------------------
InterTrust Top Secrecy Agreement
--------------------------------
InterTrust Non-Disclosure/Non-Use Agreement
-------------------------------------------
Universal Non-Disclosure/Non-Use Agreement
------------------------------------------
I-1
<PAGE>
CONFIDENTIAL
NON-DISCLOSURE AGREEMENT
------------------------
FOR INTERTRUST CONFIDENTIAL INFORMATION
---------------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of ____ 199_ between
---------
INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware corporation,
----------
___________ having a place of business at 460 Oakmead Parkway, Sunnyvale,
California 90486, and ("Recipient"), an individual citizen of ________________,
---------
residing at __________________________, and an employee of Universal Music
Group, Inc. ("Universal"), a ______________________ corporation, with offices at
---------
70 Universal City Plaza, Universal City, California.
The parties agree as follows:
1. Pursuant to a Technology Development and License Agreement dated April ___,
1999 between InterTrust and Universal (the "License Agreement"), InterTrust may
-----------------
disclose to Universal certain confidential information including technical
information embodied in and/or associated with InterTrust's InterTrust
Technology including, without limitation, software products and/or other
developments related to distributed, secure rights and/or event management,
associated designs, inventions, plans, and other information, all of which such
information shall conspicuously be marked by InterTrust with a notice or legend
with the phrase "Confidential" or indicated as "Confidential" when disclosed
orally or visually as provided in the License Agreement (the "Confidential
------------
Information"). In consideration for such Confidential Information being
- -----------
provided to Recipient, Recipient agrees to be bound by the terms of this
Agreement. Disclosure of InterTrust Confidential Information to Recipient, and
use and disclosure of Confidential Information received by Recipient, shall
occur only in accordance with the terms and conditions of this Agreement.
2. For a period of three (3) years following the disclosure of any
Confidential Information (such period to extend in perpetuity with respect to
InterTrust technology), Recipient will retain such Confidential Information in
confidence, and will discuss such Confidential Information only with other
Universal employees and other individuals permitted to receive Confidential
Information under the License Agreement (an "Individual Consultant") -- all of
---------------------
whom shall have a need to know said Confidential Information and who have
executed a copy of this Agreement. Recipient shall not, without the prior
written permission of InterTrust's Chairman or such other InterTrust officer as
who has been designated in writing by InterTrust's Chairman (a "Designated
----------
InterTrust Officer"), disclose Confidential Information to any person other than
- ------------------
as set forth immediately above. Furthermore, without express authorization of
Universal as permitted by the License Agreement, the Recipient will not make
copies, in whole or in part, of the Confidential Information, including
translating, in whole or in part, the Confidential Information into another
language and/or shipping the Confidential Information, in whole or in part, or
any direct product thereof, to any other country. The undersigned will not use
the Confidential Information in any manner that is not authorized by Universal
and in full accordance with the License Agreement and the undersigned will use
the Confidential Information solely in the exercise of Universal's rights as
provided by the License Agreement. Under no circumstances will any Confidential
Information subject to the export or import laws of any jurisdiction be
transferred by Recipient without proper prior certification and notification of
appropriate regulatory offices in applicable jurisdictions and InterTrust.
3. The undersigned will not use Confidential Information except in fulfillment
of the undersigned's employee's and/or other individual's obligations with
Universal, and for no other purposes whatsoever. The undersigned understands
and acknowledges that the unauthorized use of Confidential Information may cause
InterTrust very substantial damage, for which damages may be impossible to
measure or inadequate to compensate. Accordingly, Recipient agrees that if he
or she breaches or threatens breach of any of such sections, InterTrust will
have available, in addition to any other right or remedy available, the right to
obtain an injunction
I-2
<PAGE>
CONFIDENTIAL
against him or her, from a court of competent jurisdiction restraining such
breach or demonstrable threatened breach and to specific performance of any such
provision of this Agreement, and Recipient hereby consents to the issuance of
such injunction and to the ordering of specific performance under such
circumstances.
4. In the event of a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with Universal, the undersigned will
return by secure delivery means reasonably specified by InterTrust all physical
embodiments of Confidential Information in the undersigned's possession to
InterTrust promptly upon request by InterTrust, and in no event later than
fifteen (15) days thereafter.
5. Notwithstanding any thing else in this Agreement, the confidentiality
restrictions of this Agreement shall not apply to information that: (i) is or
becomes known to the public through no breach of any of the undersigned's
obligations under this Agreement, or Universal's or any other Universal
employee's obligations of confidentiality to Universal and/or to InterTrust;
(ii) was known to Recipient prior to its disclosure by InterTrust, as evidenced
through written documentation; (iii) shall have been independently developed by
the Recipient without any reliance on or use of any InterTrust Confidential
Information, as demonstrated through written documentation; or (iv) shall have
been rightfully supplied to Recipient, with no obligation of confidentiality or
non-use from a third party without any breach of any obligation of
confidentiality to InterTrust or Universal (as applicable) as of the date such
information is so supplied. In addition, the Recipient shall be entitled to
disclose Confidential Information pursuant to a court order issued by a court of
competent jurisdiction or as otherwise required by law; provided that the
-------- ----
undersigned shall provide prompt advance notice thereof to InterTrust to enable
InterTrust to seek a protective order or otherwise prevent such disclosure and
shall disclose no more than the minimum information required by such court order
or by law.
6. If any provision or portion thereof in this Agreement shall be found or be
held by a court of competent jurisdiction to be illegal, invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
then this Agreement shall nevertheless be given full force and effect without
said provision or portion. This Agreement may not be modified except by written
agreement dated subsequent to the date of this Agreement and signed by both
parties. This agreement shall be governed by and construed under the laws of
the United States and the Commonwealth of Virginia, USA, without reference to
conflicts of laws principles. All disputes arising out of or relating to the
subject matter of this Agreement shall be subject to the exclusive jurisdiction
and venue of the United States District Court for the Eastern District of
Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie
in such court, the Commonwealth courts in Alexandria, Virginia. The parties
consent to the personal and exclusive jurisdiction and venue of such court and
waive any argument that jurisdiction or venue in such court is improper or
inconvenient.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
InterTrust Technologies Corporation Recipient
By:_________________________________ By:________________________________
Name:_______________________________ Name:______________________________
Title:______________________________ Title:_____________________________
I-3
<PAGE>
CONFIDENTIAL
TOP SECRECY AGREEMENT
---------------------
FOR CERTAIN INTERTRUST INFORMATION
----------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of _________ 199_
---------
between INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware
----------
corporation, having a place of business at 460 Oakmead Parkway, Sunnyvale,
California 90486, and ___________________________________("Recipient"), an
---------
individual citizen of _______, residing at ______________________________, and
an employee of Universal Music Group, Inc. ("Universal"), a ____________________
---------
corporation with offices at 70 Universal City Plaza, Universal City, California.
The parties agree as follows:
1. Purpose.
-------
(a) Pursuant to a Technology Development and License Agreement dated April
__, 1999 between InterTrust and Universal (the "License Agreement"), InterTrust
-----------------
may disclose to Universal certain information including load module related,
encryption related, security related document manager related and/or other
information considered Top Secret and proprietary by InterTrust and which shall
conspicuously be marked with a notice or legend with the phrase "Top Secret" or
confirmed as such after any oral or visual disclosure thereof as provided in the
License Agreement (hereinafter referred to as the "InterTrust Top Secret
---------------------
Information"). In consideration for said information being provided to
- -----------
Recipient, Recipient agrees to be bound by the terms of this Agreement.
(b) InterTrust wishes to protect the InterTrust Top Secret Information
from unauthorized use and disclosure. Disclosure of InterTrust Top Secret
Information to Recipient, and use and disclosure of Top Secret Information
received by Recipient shall occur only in accordance with the terms and
conditions of this Agreement.
2. Non-Disclosure and Restrictions on Use of InterTrust Extremely
--------------------------------------------------------------
Confidential.
------------
(a) Except as otherwise provided in an express written agreement signed by
InterTrust's Chairman or other such person designated in writing by the Chairman
or President (a "Designated InterTrust Officer"), Recipient agrees that he or
-----------------------------
she shall: (i) hold in strictest confidence and not disclose any InterTrust Top
Secret Information to any person or entity either within or outside Universal,
except to another Universal employee who has also signed a Top Secrecy Agreement
and is authorized to receive Top Secret Information pursuant to the Licensed
Agreement, or as expressly permitted in writing by a Designated InterTrust
Officer; (ii) use InterTrust Top Secret Information solely for purposes
authorized by the License Agreement: (iii) use said Top Secret Information in no
other way whatsoever; (iv) apply the strictest feasible measures to protect the
secrecy of, and prevent unauthorized disclosure or use of, InterTrust Top Secret
information (which such measures shall not be less stringent than Universal uses
to protect its own most highly sensitive and secret information); and (v)
produce no physical embodiments of any portion of the Top Secret Information
without the express written authorization of a Designated InterTrust Officer.
Recipient agrees to notify InterTrust promptly in writing of any unauthorized
disclosure or other misuse or misappropriation of the InterTrust Top Secret
Information which may come to Recipient's attention.
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<PAGE>
CONFIDENTIAL
(b) In the event Recipient is required by law, regulation or order of a
court or other authority of competent jurisdiction to disclose InterTrust Top
Secret Information, Recipient shall notify InterTrust as promptly as possible,
and shall, upon InterTrust's request, reasonably assist in challenging or
restricting the scope of such required disclosure. InterTrust Top Secret
Information may be disclosed only upon InterTrust's prior written approval;
provided that if Recipient notifies InterTrust that it has received an order
- -------- ----
from a court of competent jurisdiction requiring disclosure of InterTrust Top
Secret Information: (i) Recipient shall use reasonable efforts to resist
disclosure (including filing motions to limit disclosure to in camera
inspection); and (ii) if despite resisting such disclosure Recipient is required
to produce such InterTrust Top Secret Information and faces material
consequences should Recipient refuse to so comply, Recipient shall not be
construed to have breached this Agreement or the License Agreement by disclosing
such required information. In all events, Recipient subject to such required
disclosure shall disclose only such information that is strictly required
pursuant thereto and no further information and shall have provided InterTrust
notices of such events on a frequent basis as here relevant.
3. Return of Materials. Upon request of a Designated InterTrust Officer at
-------------------
any time after a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with Universal, Recipient shall
immediately return to InterTrust all tangible embodiments of InterTrust Top
Secret Information in Recipient's possession or otherwise under Recipient's
control by such secure delivery means as reasonably specified by InterTrust.
4. Equitable Remedies. Recipient agrees that unauthorized disclosure or use of
------------------
InterTrust Top Secret Information will cause InterTrust substantial and
irreparable damage. Recipient further agrees that it may be impossible or
inadequate to measure and calculate InterTrust's damages from any breach of the
covenants set forth in Sections 2 and/or 3 hereof. Accordingly, Recipient agrees
that if he or she breaches or threatens breach of any of such sections,
InterTrust will have available, in addition to any other right or remedy
available, the right to obtain an injunction against him or her, from a court of
competent jurisdiction restraining such breach or threatened breach and to
specific performance of any such provision of this Agreement, and Recipient
hereby consents to the issuance of such injunction and to the ordering of
specific performance under such circumstances.
5. Governing Law: Jurisdiction and Venue. This Agreement shall be governed by
-------------------------------------
and construed under the laws of the United States of America and the
Commonwealth of Virginia, without reference to conflict of law principles. All
disputes arising out of or relating to the subject matter of this Agreement
shall be subject to the exclusive jurisdiction and venue of the United States
District Court for the Eastern District of Virginia, Alexandria Division
Virginia, or if jurisdiction does not properly lie in such court, the
Commonwealth courts in Alexandria, Virginia. The parties consent to the
personal and exclusive jurisdiction and venue of such court and waive any
argument that jurisdiction or venue in such court is improper or inconvenient.
6. Severability; Export Compliance. If any provision or portion thereof in
-------------------------------
this Agreement shall be found or be held to be illegal, invalid or unenforceable
in any jurisdiction in which this Agreement is being performed, then this
Agreement shall nevertheless be given full force and effect without said
provision or portion. Recipient certifies that no Top Secret Information, or
any portion thereof, will be exported by Recipient to any country in violation
of U.S. export regulations or other regulations applicable to Recipient and such
information.
7. Entire Agreement. This Agreement constitutes the entire agreement between
----------------
Recipient and InterTrust regarding the InterTrust Top Secret Information
disclosed hereunder and supersedes all
I-5
<PAGE>
CONFIDENTIAL
oral or written agreements, either entered prior to or contemporaneously with
this Agreement, concerning the InterTrust Top Secret Information, except the
provisions of the License Agreement, the provisions of which shall be deemed to
be supplemented hereby as of the date first written above. This Agreement may
not be modified except by written agreement dated subsequent to the date of this
Agreement and signed by both parties.
8 Successors. Subject to the limitations set forth in this Agreement, this
----------
Agreement will inure to the benefit of and be binding upon the parties, their
successors and assigns.
9 Notices. For all purposes hereof, any notice pursuant hereto shall be
-------
deemed given upon receipt by the Party at the address indicated above.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
INTERTRUST TECHNOLOGIES RECIPIENT
CORPORATION
By:____________________________ By:____________________________
Name:__________________________ Name:__________________________
Title:_________________________ Title:_________________________
I-6
<PAGE>
CONFIDENTIAL
NON-DISCLOSURE AGREEMENT
-------------------------
FOR UNIVERSAL CONFIDENTIAL INFORMATION
--------------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of ____ 199_ between
---------
Universal Music Group, Inc. ("Universal"), a Delaware corporation, with offices
at 100 Universal City Plaza, Universal City, California, and ___________________
("Recipient"), an individual citizen of ______, residing at ___________________,
----------
and an employee of InterTrust Technologies Corporation ("InterTrust"), a
----------
Delaware corporation, ___________________, having a place of business at 460
Oakmead Parkway, Sunnyvale, California 90486.
The parties agree as follows:
1. Pursuant to a Technology Development and License Agreement dated _____
between InterTrust and Universal (the "License Agreement"), Universal may
-----------------
disclose to InterTrust certain confidential information in accordance with the
terms of the License Agreement including technical information embodied in
and/or associated with Universal technology including, without limitation,
software products and/or other developments, associated designs, inventions,
plans, and other information all of which such information shall conspicuously
be marked with a notice or legend with the phrase "Confidential" or indicated as
"Confidential" when disclosed orally or visually as provided in the License
Agreement ("Confidential Information"). In consideration for such Confidential
Information being provided to Recipient, Recipient agrees to be bound by the
terms of this Agreement. Disclosure of Universal Confidential Information to
Recipient shall occur only in accordance with the terms and conditions of the
License Agreement, and use and disclosure of Confidential Information received
by Recipient shall occur only in accordance with the terms and conditions of
this Agreement.
2. For a period of three (3) years following the disclosure of any
Confidential Information, Recipient will retain such Confidential Information in
confidence, and will discuss such Confidential Information only with other
InterTrust employees or other individuals permitted to receive Confidential
Information under the License Agreement (an "Individual Consultant") all of
---------------------
whom shall have a need to know said Confidential Information and who have
executed a copy of this Agreement or other confidentiality agreement of
InterTrust. Recipient shall not, without the prior written permission of a
Universal officer (a "Designated Universal Officer"), disclose Confidential
-----------------------------
Information to any person other than as set forth immediately above.
Furthermore, without express authorization of InterTrust as permitted by the
License Agreement, the Recipient will not make copies, in whole or in part, of
the Confidential Information, including translating, in whole or in part, the
Confidential Information into another language and/or shipping the Confidential
Information, in whole or in part, or any direct product thereof, to any other
country. The undersigned will not use the Confidential Information in any manner
that is not authorized by InterTrust and in full accordance with the License
Agreement and the undersigned will use the Confidential Information solely in
the exercise of InterTrust's rights and obligations as provided by the License
Agreement. Under no circumstances will any Confidential Information subject to
the export or import laws of any jurisdiction be transferred by Recipient
without proper prior certification and notification of appropriate regulatory
offices in applicable jurisdictions and Universal.
3. The undersigned will not use Confidential Information except in fulfillment
of the undersigned's employee's and/or other individual's obligations with
InterTrust, and for no other purposes whatsoever. The undersigned understands
and acknowledges that the unauthorized use of Confidential Information may cause
Universal very substantial damage, for which damages may be impossible to
measure or inadequate to compensate. Accordingly, Recipient agrees that if he
or she breaches or threatens breach of any of such sections, Universal will have
available, in addition to any other right or remedy available, the right to
obtain an injunction
I-7
<PAGE>
CONFIDENTIAL
against him or her, from a court of competent jurisdiction restraining such
breach or demonstrable threatened breach and to specific performance of any such
provision of this Agreement, and Recipient hereby consents to the issuance of
such injunction and to the ordering of specific performance under such
circumstances.
4. In the event of a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with InterTrust, the undersigned will
return by secure delivery means reasonably specified by Universal all physical
embodiments of Confidential Information in the undersigned's possession to
InterTrust promptly upon request by InterTrust, and in no event later than
fifteen (15) days thereafter.
5. Notwithstanding anything else in this Agreement, the confidentiality
restrictions of this Agreement shall not apply to information that: (i) is or
becomes known to the public through no breach of any of the undersigned's
obligations under this Agreement, or InterTrust's or any other InterTrust
employee's obligations of confidentiality to InterTrust and/or Universal; (ii)
was known to Recipient prior to its disclosure by Universal, as evidenced
through written documentation; (iii) shall have been independently developed by
the Recipient without any reliance on or use of any Universal Confidential
Information, as demonstrated through written documentation; or (iv) shall have
been rightfully supplied to Recipient, with no obligation of confidentiality or
non-use from a third party without any breach of any obligation of
confidentiality to Universal or InterTrust (as applicable) as of the date such
information is so supplied. In addition, the Recipient shall be entitled to
disclose Confidential Information pursuant to a court order issued by a court of
competent jurisdiction or as otherwise required by law; provided that the
-------- ----
undersigned shall provide prompt advance notice thereof to Universal to enable
Universal to seek a protective order or otherwise prevent such disclosure and
shall disclose no more than the minimum information required by such court order
or by law.
6. If any provision or portion thereof in this Agreement shall be found or be
held by a court of competent jurisdiction to be illegal, invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
then this Agreement shall nevertheless be given full force and effect without
said provision or portion. This Agreement may not be modified except by written
agreement dated subsequent to the date of this Agreement and signed by both
parties. This agreement shall be governed by and construed under the laws of
the United States and the Commonwealth of Virginia, USA, without reference to
conflicts of laws principles. All disputes arising out of or relating to the
subject matter of this Agreement shall be subject to the exclusive jurisdiction
and venue of the United States District Court for the Eastern District of
Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie
in such court, the Commonwealth courts in Alexandria, Virginia. The parties
consent to the personal and exclusive jurisdiction and venue of such court and
waive any argument that jurisdiction or venue in such court is improper or
inconvenient.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
Universal Limited Recipient
By:_______________________________ By:______________________________
Name:_____________________________ Name:____________________________
Title:____________________________ Title:___________________________
I-8
<PAGE>
EXHIBIT J
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERNAL PROCEDURES FOR TESTING VIRUSES AND Y2K COMPLIANCE
----------------------------------------------------------
The following are procedures and policies that InterTrust employees are
instructed to routinely follow to avoid or minimize potential infection of any
software virus. In addition, such checking is incorporated in QA testing before
any software release.
. Software code is routinely checked with commercially available third party
virus software for existence of any viruses.
. InterTrust currently has a site license to virus checking software by Network
Associates.
. InterTrust regularly receives from Network Associates updates designed to
detect the latest known software viruses.
. InterTrust's policy and practice is to keep source code under strict source
control, using Clear Case software.
. Employees are prohibited, under InterTrust's policies, from downloading or
incorporating any software from any third party (including through the
Internet) without first obtaining prior approval from an authorized technical
manager whose responsibility is to test such software for viruses before any
use by InterTrust employees.
. InterTrust regularly educates new and existing employees regarding these
procedures and policies.
As concerns Y2K, InterTrust Commerce 1.1 uses an internal representation for
time that is not likely to be affected by Y2K or 638K time problems. All
arithmetic and relational operations on time are performed using an internal
representation for time. Conversion between the internal representation and the
Gregorian calendar is based on well known tested algorithms that account for
leap years.
The master source of InterTrust Time for all InterRights Points is the
Transaction Authority. Each InterRights Point maintains what can be thought of
as a virtual InterTrust Time clock that is used as a source of time for all
operations within the InterRights Point. As necessary the virtual clock is re-
synchronized with the master source of time at the Transaction Authority system.
Persistent storage of a time value as part of a control or business rule, in a
DigiBox container or in the Protected Database utilizes a serialized byte stream
of the internal representation of time that should make the persistent value
platform independent.
<PAGE>
CONFIDENTIAL
EXHIBIT K
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
JOINT PRESS RELEASE
-------------------
[LOGO OF INTERTRUST]
News Release
For further information contact:
Joseph Jennings, InterTrust Technologies Corp.: 408-222-6270,
[email protected]
XXXXXXXXXX, Universal: XXX-XXX-XXXX, [email protected]
Leigh Ann Varney, Varney Business Communications: 415-387-7250, [email protected]
UNIVERSAL MUSIC GROUP SELECTS INTERTRUST FOR DIGITAL RIGHTS MANAGEMENT
Universal Music Group Plans To Employ InterTrust Technology
Los Angeles and Sunnyvale, CA -- April XX, 1999 -- Universal Music Group
(Universal) and InterTrust Technologies Corporation (InterTrust), the MetaTrust
Utility(TM), today announced a long-term agreement regarding deploying and
disseminating MetaTrust Certified(TM) applications and services. A pilot project
exploring enhanced rights management and digital music merchandising will be
launched later this year.
Universal conducted a broad study of the existing and proposed digital
rights management technology solutions and selected InterTrust technology as its
preferred rights management platform for electronic commerce and management for
music. Universal selected InterTrust(R) technology because it provides
persistent protection of content, flexible business models, and can extend
stakeholder rights management to new entertainment and information appliances
such as secure MP3Player devices, set-top boxes, and DVD.
"We selected InterTrust as our preferred digital rights management platform
to enable Universal to facilitate music industry digital distribution," said
Lawrence Kenswil, Executive Vice President Universal Music Group. "InterTrust
products provide an unusually rich array of capabilities and many unique
features, and InterTrust has led the way in defining what is possible in the
realm of digital content distribution."
"We believe InterTrust products provide, in combination with other
technologies, provides
K-1
<PAGE>
CONFIDENTIAL
the tools our industry needs to meet the challenges, and realize the exciting
opportunities, of the rapidly developing digital world."
"We are pleased that Universal has chosen to partner with InterTrust in
meeting the challenges of the marketplace," said Victor Shear, founder, chairman
and chief executive officer of InterTrust. "Universal is a world leader in
entertainment products and services, and entertainment is a first mover in the
new digital economy. Universal can use InterTrust technology to change the
economics of the music industry, increase customer satisfaction, and combine
with other labels and technology companies to realize the huge growth potential
in music related digital products."
Universal Music Group
Need copy.
InterTrust
InterTrust Technologies Corporation, the MetaTrust Utility, provides a
groundbreaking, interoperable, trusted and secure foundation for efficient
electronic commerce. InterTrust software products and services enable the sale,
fulfillment and protection of digital content over any digital media, including
the Internet, DVD and future commerce appliances. InterTrust technology also
serves as a foundation for many other forms of trusted commercial interaction.
Since early 1990, InterTrust has been researching and inventing technologies
that enable fundamental elements of the future, interoperable digital commerce
world. In the entertainment and device markets, InterTrust technologies have
been a principal factor in the shaping of digital rights management industry
standards. For example, InterTrust played a formative role in the creation of
the MPEG-4 Intellectual Property Management and Protection (IPMP) interface and
the Open Platform Initiative for Multimedia Access (OPIMA). InterTrust is the
only company in the world to ship technology supporting MPEG-4 IPMP, and is the
only company providing a broad range rights management "plug-in" infrastructure
for secure MP3.
MetaTrust Utility core partners include Mitsubishi Corporation, National
Westminster Bank Plc. and Rights Exchange, Inc. (formerly SoftBank Net
Solutions). Builder partners include Computacenter (UK) Ltd., Science
Applications International Corporation (SAIC), and Fraunhofer IIS.
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<PAGE>
CONFIDENTIAL
InterTrust's Strategic Technologies and Architectural Research Laboratory (STAR
Lab) is the world's first computer laboratory whose primary focus is electronic
commerce and digital rights management. Founded in 1990, InterTrust is a
privately held company with a staff of over 130, and has offices in Sunnyvale,
California, New York City, Washington, D.C., and the United Kingdom.
##
Copyright (C) 1999 InterTrust Technologies Corporation. All rights
reserved. InterTrust is the registered trademark of InterTrust Technologies
Corporation, and the InterTrust logo, MetaTrust, MetaTrust Utility and MP3Plus
are trademarks of InterTrust Technologies Corporation, all of which may or may
not be used in certain jurisdictions.
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