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United States
Securities and Exchange Commission
Washington, D.C. 20549
FORM 10-Q/A
[x] Amendment to quarterly report pursuant to Section 13 or 15(d) of the
Securities Exchange Act of 1934 for the quarterly period ended
SEPTEMBER 30, 1996
[ ] Transition report pursuant to Section 13 or 15(d) of the Securities
Exchange Act of 1934 for the transition period from __________ to
__________.
Commission file number 0-23926
GEOWORKS
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(Exact name of registrant as specified in its charter)
CALIFORNIA 94-2920371
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(State or other jurisdiction of (I.R.S. Employer
incorporation or organization) Identification No.)
960 ATLANTIC AVENUE, ALAMEDA, CALIFORNIA 94501
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(Address of principal executive offices) (Zip code)
510-814-1660
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(Registrant's telephone number, including area code)
NOT APPLICABLE
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(Former name, former address and former fiscal year,
if changed since last report)
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GEOWORKS
INDEX
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Page
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<S> <C>
Part II. Other Information
Item 6. Exhibits and Reports on form 8-K 2
Signature 3
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ITEM 6 - EXHIBITS AND REPORTS ON FORM 8-K
a) Exhibits
10.35 Supplemental Stock Option Plan*
10.36 Technology License Agreement between NEC Corporation
and Geoworks, dated September 9, 1996 ###
b) Reports on Form 8-K
No reports on Form 8-K were filed in the quarter ended
September 30, 1996.
* Incorporated by reference to the exhibit filed with the
Registrant's Registration Statement on Form S-8
(File No. 333-09569), effective August 5, 1996
### Confidential treatment requested as to portions thereof
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SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the
Registrant has duly caused this report to be signed on its behalf by the
undersigned, thereunto duly authorized.
Date: April 2, 1997
GEOWORKS
by: /s/ Daniel L. Sicotte
----------------------------------
Daniel L. Sicotte
Treasurer
(Duly Authorized Officer and
Principal Financial Officer)
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GEOWORKS
EXHIBITS
TABLE OF CONTENTS
Exhibit No. Description
- ----------- -----------
10.35 Supplemental Stock Option Plan*
10.36 Technology License Agreement between NEC Corporation and
Geoworks, dated September 9, 1996 ###
* Incorporated by reference to the exhibit filed with the
Registrant's Registration Statement on Form S-8
(File No. 333-09569), effective August 5, 1996
### Confidential treatment requested as to portions thereof
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EXHIBIT 10.36
CONFIDENTIAL TREATMENT REQUESTED
-------------------------------------------
### Confidential portions have been omitted
and filed separately with the Commission.
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GEOWORKS - NEC
TECHNOLOGY LICENSE AGREEMENT
This Agreement is effective as of April 26, 1996 (the "Effective Date"), by and
between GEOWORKS, a California corporation ("GEOWORKS"), and NEC Corporation, a
Japanese corporation ("NEC").
RECITALS
A. NEC is a developer, manufacturer, and distributor of computer,
communication and consumer electronics equipment.
B. GEOWORKS is a developer, manufacturer, distributor, and publisher of
computer software technologies.
C. GEOWORKS and NEC desire that GEOWORKS grant to NEC the right to embed
certain GEOWORKS technologies in a new portable computing and
communication device to be developed by NEC, code-named ###.
AGREEMENT
1. DEFINITIONS
1.1 "PARTY" and "PARTIES" refer to GEOWORKS and/or NEC.
1.2 "LICENSEE" means, collectively, (i) NEC and (ii) any corporation,
company or other entity at least fifty percent (50%) of whose
outstanding shares or securities or ownership interests
(representing the right to vote for the election of directors or
other managing authorities) are owned or controlled by NEC, but such
corporation, company or other entity shall be deemed to be
"Licensee" only so long as such ownership or control exists.
1.3 "LICENSED TECHNOLOGY" means the GEOS(R) operating system software
and GEOS-based application software, described in Exhibit A,
including but not limited to, the Licensed Technology modified to
the Product Specification for the ### Product .
1.4 "PRODUCT MATERIALS" means the documentation described in Exhibit A.
1.5 "TOOLS" means the software development tools described in Exhibit A.
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION.
1.6 "UPDATE" means a modification to the Licensed Technology which
incorporates corrections of Errors and/or provides functional or
performance improvements. Updates include any update, supplement,
version up and upgrade of the Licensed Technology.
1.7 ### is the code name for ### by GEOWORKS. ### is GEOWORKS' ### for
### including ### and ###. ### is ### between ### and ### with a
###. ### is a ### and is ### to the ###. See Section 6.3.
1.8 "GEOWORKS PROMOTIONAL MATERIALS" means the GEOWORKS promotional
materials described in Section 8.6 (GEOWORKS Promotional Materials
Packed with the Licensee Product).
1.9 "EMBEDDED LICENSED TECHNOLOGY" means the Licensed Technology, in
Object Code form only, reproduced in solid state media (e.g., Read
Only Memory (ROM), Programmable Read Only Memory (PROM) or Flash
Memory) and physically integrated into the Product and distributed
with the Product as a single physical and commercial unit. "Embedded
Licensed Technology" may also include the Licensed Technology, in
Object Code form only, reproduced on removable media (e.g., HDD
units that fit in type III PCMCIA slots), provided that such media
are sold with the Product as a single commercial unit and are never
sold separately.
1.10 "ERROR" means (i) a failure of the Licensed Technology, as delivered
to NEC by GEOWORKS, to operate in the Product in the manner
described in the Product Specification, or (ii) any of the errors or
problems described in Section 13.3 (Classification); provided that
such failure, error or problem is reported by NEC to GEOWORKS and
that the existence of such failure, error or problem can be verified
by both Parties. The term "Error" does not include any ###, ### or
### in connection with ### of the ###. In the case of compatibility
problems, the term "Error," and GEOWORKS' liability hereunder with
respect to such Errors, is limited to a ### with ### and ### which
are ### or otherwise confirmed in writing by the Parties and as to
which GEOWORKS has had a reasonable testing opportunity prior to
Acceptance (as defined in Section 5.7).
1.11 "PRODUCT" or "Products" means any and all ### devices capable of ###
developed by or for Licensee, including, but not limited to, the
"### Product" as defined in Exhibit B ("### Product"). Product will
include units bearing Licensee's label ("LICENSEE LABELED PRODUCTS")
and units bearing the label of Licensee's Private Label customers
("PRIVATE LABELED PRODUCTS").
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AND FILED SEPARATELY WITH THE COMMISSION
1.12 "PRODUCT SPECIFICATION" means a description of the characteristics,
functionality and the specification of the ### Product ("### PRODUCT
SPECIFICATION"), and that of the Licensed Technology ("LICENSED
TECHNOLOGY SPECIFICATION"), as set forth in Exhibit B. Product
Specification may also include ### and ### for the ### and ### of
the Licensed Technology, a description of the intended market for
the ### Product, and a description of ### to the Licensed Technology
by GEOWORKS hereunder for operation with the ### Product.
1.13 "PRODUCT SHIPMENT" means a shipment of a unit of Product embedding
the Licensed Technology from a factory or warehouse of a Licensee
which manufactured or have manufactured the Product to another
party. If a unit is shipped from a ### to a customer of Licensee,
the Product Shipment occurs upon such shipment.
1.14 "OBJECT CODE." The computer programming code for the Licensed
Technology in machine readable form.
1.15 "SOURCE CODE." The computer programming code for Licensed Technology
in human readable form, including internal programmer documentation
and commentary regarding the structure and operation of the code.
2. FORM OF AGREEMENT
2.1 EXHIBITS
This Agreement has the following Exhibits which form an integral
part hereof:
Exhibit A Identification of the Licensed Technology. This Exhibit
is a description of all Licensed Technology licensed to
Licensee under this Agreement.
Exhibit B The NEC ### Project. This Exhibit includes a description
of the ### Product, the Product Specification, a
timetable for development, and other terms.
Exhibit C Addresses for Notices
Exhibit D GEOWORKS Trademarks, Logos and Proprietary Markings
Exhibit E Payments. This Exhibit specifies the royalties and NRE
payable under this Agreement, and certain other
financial terms.
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Exhibit F NEC End User License Agreement. This Exhibit states
the minimum terms to be included in the End User License
Agreement to be distributed with the Embedded Licensed
Technology.
2.2 MODIFICATION AND INTERPRETATION OF EXHIBITS
The Exhibits shall be kept up-to-date and modifications and
additions thereto shall be executed as a result of agreed
modifications and additions. All Exhibits shall be subject to the
terms and conditions of this Agreement, unless otherwise provided in
any such Exhibit. In the event of a conflict between the terms of a
Exhibit and the terms of this Agreement, the terms of the Exhibit
shall be given effect for the subject matter covered by that
Exhibit.
2.3 ENTIRE AGREEMENT
This Agreement and the Exhibits hereto state the entire agreement
between the Parties and supersede all prior communications, written
or oral, between the Parties.
2.4 SEVERABILITY
If any provision contained in this Agreement is determined to be
invalid or unenforceable, in whole or in part, the remaining
provisions and any partially enforceable provision will,
nevertheless, be binding and enforceable, and the Parties agree to
substitute for the invalid provision a valid provision which most
closely approximates the intent and economic effect of the invalid
provision.
2.5 WRITING.
No amendment or modification of this Agreement may be made except by
an instrument in writing signed by both Parties.
3. GRANT OF LICENSES.
Subject to all the terms and conditions herein, GEOWORKS hereby grants to
Licensee the following:
3.1 OBJECT CODE DISTRIBUTION
a worldwide, non-exclusive, non-transferable license, for the Term
(Section 14.1) and subject to the terms of this Agreement, (i) to
distribute the Embedded Licensed Technology in Object Code form only
and (ii) to distribute the Licensed Technology in Object Code form
(whether embedded or not) for use by end users who have previously
purchased a royalty-bearing Product, for back up, warranty,
maintenance, upgrade and version up purposes only. Licensee shall
### on its ### the obligation to ### the Embedded Licensed
Technology to end users with an End User License Agreement
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which contains, at a minimum, the terms set forth in Exhibit F.
3.2 OBJECT CODE REPRODUCTION
a worldwide, non-exclusive, non-transferable license, for the term
of this Agreement, to make, and to have made by subcontractors in
connection with their production for Licensee of the Product or
Product components (provided that NEC gives written notice to
GEOWORKS of the ### and ### of ###), exact copies of the Licensed
Technology, in Object Code form only.
3.3 SOURCE CODE
3.3(a) a worldwide, non-exclusive, non-transferable license to copy
and use the Source Code (to the extent that the Licensed
Technology is made available to Licensee in Source Code form,
as set forth in Exhibit A) internally, and to ### the Source
Code as necessary for ### and/or ### of the Licensed
Technology with ### or ### Products, for ###, and for ### and
### of the Licensed Technology, provided that Licensee may
use only ### approved in writing by GEOWORKS (which approval
shall not be unreasonably withheld) for such ### of the
Source Code subject to the terms and conditions to be ### by
the Parties at that time; and
3.3(b) the license to exercise the rights set forth in subsections
3.1 (Object Code Distribution) and 3.2 (Object Code
Reproduction) with respect to the Object Code versions of
such modifications, provided that Licensee shall ### of the
Licensed Technology ### of the Licensed Technology as
delivered by GEOWORKS, except as contemplated by the Product
Specification ### to ###.
3.4 TOOLS AND PRODUCT MATERIALS
a worldwide, non-exclusive, non-transferable, royalty-free internal
license to use, copy and modify (including the right to extend such
rights to Licensee's sub-contractors, subject to Section 15 hereof
if applicable) the Tools and Product Materials identified in Exhibit
A, for the purposes set forth in Section 3.3.; and a worldwide,
non-exclusive, non-transferable right to ### to the ###. For the
purpose of this Section 3.4 right to use the Tools shall include the
right to ### using the Tools and to ### and ###. Such ### shall be
### up to ### and ### shall be ###. The ### for ###, support and
training obligations and ### marketing plans shall be ###.
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3.5 TRADEMARKS
a worldwide, non-exclusive, non-transferable, royalty-free license,
for the term of this Agreement, to use GEOWORKS' trademarks and
logos identified in Exhibit D solely for the purpose of marketing
and distributing the Licensed Technology.
3.6 NO IMPLIED LICENSES
There are no implied licenses under this Agreement, and any rights
not expressly granted to Licensee hereunder are reserved by
GEOWORKS. Except as expressly provided above, Licensee may not
authorize any other party to make copies of the Licensed Technology.
Licensee agrees that it will not use, copy, distribute, modify or
transfer the Licensed Technology except as expressly permitted in
writing by GEOWORKS or otherwise in accordance with the terms of
this Agreement.
4. PROPRIETARY RIGHTS
4.1 LICENSED TECHNOLOGY OWNERSHIP
GEOWORKS warrants, and Licensee acknowledges and agrees, that
GEOWORKS and GEOWORKS' licensers are and shall remain the owners of
all intellectual property rights in and to the Licensed Technology.
The terms "purchase", "sell," "sold" and "distributed," when used
with respect to the Licensed Technology in this Agreement, refer
only to the purchase, sale or distribution of a license to use the
Licensed Technology.
4.2 LICENSEE MODIFICATIONS TO LICENSED TECHNOLOGY
Except as the Parties may agree otherwise in writing, ### to all ###
to the Licensed Technology made ### shall vest ###. Licensee
acknowledges and agrees that GEOWORKS may ### to the Licensed
Technology, provided that it does so without use of the Source Code
of any ###. (For the purpose of this Section 4.2, GEOWORKS
engineers' use of its ### obtained through its authorized access to
the Source Code of any ### shall not be deemed as ###, provided that
GEOWORKS and its engineers shall not make any ### on ###.) Licensee
covenants and agrees that it will not ### GEOWORKS, and will not ###
GEOWORKS, ### that any such GEOWORKS' ### to the Licensed Technology
### obtained as a result of ### to the Licensed Technology made by
Licensee and/or its subcontractors. Such Licensee's ### shall be
extended to GEOWORKS' licensees with respect to such GEOWORKS' ###,
provided that GEOWORKS' licensees shall provide the equivalent ###
as to Licensee with respect to such GEOWORKS' licensees ###.
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5. DELIVERY OF THE LICENSED TECHNOLOGY AND ACCEPTANCE
5.1 MARKETING REQUIREMENTS DOCUMENT
NEC shall prepare and deliver to GEOWORKS a market requirements
documents, which, ### by GEOWORKS, shall constitute a part of the
###.
5.2 SPECIFICATION
The Product Specification, ###, shall be signed by both Parties and
attached to Exhibit B of this Agreement. All modifications thereto
shall be made by mutual agreement only and shall be confirmed in
writing.
5.3 DEVELOPMENT
GEOWORKS agrees to perform the software development services which
are necessary to cause the GEOWORKS Licensed Technology to conform
to the Product Specification according to the schedule set forth in
Exhibit B attached hereto.
5.4 TESTING BY GEOWORKS
GEOWORKS Licensed Technology will be tested by GEOWORKS in
accordance with the mutually agreeable test plan to be included with
the Product Specification. GEOWORKS will provide NEC with the test
results together with the deliverables.
5.5 DELIVERY
Delivery will occur when GEOWORKS delivers the ### to an NEC Project
Manager or any other designated person, accompanied by (i) a written
statement listing the items delivered and stating that they ### for
NEC's ### and (ii) ### in the form agreed by the Parties. Delivery
of the software will be ### or other medium as agreed by the
Parties.
5.6 TESTING BY NEC
NEC will examine and test each deliverable ### in accordance with
the ### to be included with the ###. Within ### days after a
deliverable is delivered, NEC will provide GEOWORKS with ### of such
deliverable or a ### before the deliverable can be ### by NEC. If
NEC provides GEOWORKS with a ###, GEOWORKS will forthwith ### in the
deliverable. Within ### days of redelivery, NEC will provide
GEOWORKS with a written ### or another ###. This procedure will be
repeated until ### the Deliverables.
5.7 ACCEPTANCE
The Licensed Technology will be deemed accepted ("Acceptance") on
the earliest to occur of the following:
5.7(a) NEC's written notice of ### of the Licensed Technology; or
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5.7(b) NEC's ### to give GEOWORKS a ### of ### within the testing
time periods set forth in Section 5.6 (Testing by NEC), after
delivery of the final version of the Licensed Technology; or
5.7(c) ### of a Licensee of the ### of the Product with ### and ###.
6. ### PRODUCTS, UPDATES AND ###
6.1 ### PRODUCTS
The Parties understand and agree that ### and/or ### of the ###
Product ("### Products"). GEOWORKS will, upon NEC's written request
and mutual agreement of the Parties perform the modification work of
the Licensed Technology in accordance with a product specification,
a delivery schedule, acceptance criteria, non-recurring engineering
("NRE") payment terms, and other pertinent provisions, to be agreed
upon by the Parties through mutual consultation in good faith.
6.2 UPDATES
GEOWORKS shall provide NEC written reports of the latest information
concerning Updates from time to time, and upon NEC's request,
deliver the Updates to NEC ### except as provided in ### and in ###.
Upon the delivery of the Updates, the licenses granted in Section 3
(GRANT OF LICENSES) ###, and the term "Licensed Technology" shall be
###, Updates developed and released by GEOWORKS during the term of
this Agreement. Licensee may ### into any Product.
6.3 ###
If the ### is ### and ### by GEOWORKS ### this Agreement, the
licenses granted in Section 3 (GRANT OF LICENSES) shall, upon NEC's
request, ### to ###, and the term Licensed Technology shall
thereafter ### the ###, subject to the following special rights and
limitations:
6.3(a) Licensee may ### into any Product.
6.3(b) ### except as provided in ### and in ### shall be required
for NEC's ### Section 3 (Grant of Licenses) to ###.
6.3(c) The following sections and provisions of this Agreement shall
not apply to the ###: 3.3 (Source Code license rights), 4.2
(Licensee Modifications to the Licensed Technology), Exhibit
B (The NEC "###" Project), and the ### provisions of Exhibit
E.
6.3(d) Nothing in this provision shall require GEOWORKS to ### or
the ### for the ###.
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6.3(e) GEOWORKS shall not be required to ### to NEC's ###, except
upon mutual written agreement as to ###, and ###. Any such
### shall be performed in accordance with the procedures set
forth in Section 5 (Delivery of the Licensed Technology and
Acceptance).
6.4 COMPENSATION
Except as provided in this Agreement with regard to the ### or
otherwise agreed upon by the Parties in writing, GEOWORKS will not
be required to ### the ### following its Acceptance by NEC in order
to ### ### Products, Updates or ###. GEOWORKS may condition the ###
of ### of the Licensed Technology to NEC's specifications upon NEC's
agreement to ### to GEOWORKS.
6.5 SUPPORT OF UPDATED TECHNOLOGY
Should NEC elect not to ### an Update, then GEOWORKS may, at its
election, ### of the earlier version of the Licensed Technology ###.
6.6 ### TOOLS AND PRODUCT MATERIALS
When software development tools and product materials for Updates
and/or the ### are ### by GEOWORKS, the licenses granted in Section
3.4 (Tools and Product Materials) shall, upon NEC's request, ###.
7. PAYMENTS
7.1 ROYALTY PAYMENTS
NEC agrees to pay to GEOWORKS royalty payments as set forth in
Exhibit E. Such payments are due and payable within sixty (60) days
after the close of the quarter in which Product Shipments occur.
7.2 NOT FOR RESALE UNITS
NEC will not incur any royalty payments for "not for resale" units
of Product which are provided free of charge to third party end
users or to a distributor or dealer of the Licensee, or used by
Licensee solely for (i) demonstration and/or sales promotion
purposes, (ii) testing purpose, and/or (iii) warranty or other
customer support of the Product; or for the Product units returned
by a distributor or dealer; provided, however, that a royalty
payment will become due if and when Licensee receives a payment or
other compensation for the delivery of any such Product units or
Licensee uses such Product units for internal purposes other than
those set forth in this Section.
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7.3 CONSIDERATION FOR SOFTWARE ADAPTATION
In consideration for GEOWORKS' services in adapting its Licensed
Technology to conform to the initial Product Specification, NEC
shall pay to GEOWORKS the ### set forth in Exhibit E. Such ### shall
not constitute a ### or an ###. If any change to the Product
Specification requested by NEC causes an increase or decrease in the
cost of development in the GEOWORKS, either Party may request the
other Party to equitably adjust the NRE expenses, provided that no
adjustment shall be made unless agreed in writing by the Parties on
or before the date of written confirmation of the change of the
Product Specifications by both Parties.
7.4 TRAVEL REIMBURSEMENT
The Parties will include in the Product Specification an estimate of
the amount of travel by GEOWORKS personnel that will be required in
connection with its development and support services contemplated
hereunder. To the extent that the Parties agree that additional
travel by GEOWORKS is necessary, ### travel and living expenses
reasonably incurred in connection with such additional travel within
the ### by ###.
7.5 CURRENCY
All payments under this Agreement are to be made in U.S. dollars.
Any royalties that accrued in any currency other than U.S. dollars
shall be converted to U.S. dollars at TTS exchange rate quoted by an
authorized foreign exchange bank located in Tokyo, Japan on the last
business day of the calendar quarter during which such royalties
accrued.
7.6 TAX, ETC.
In the event that taxes are required to be withheld on the payment
of royalties set forth herein, ### such withholding taxes from the
amount of the ### and ### to the appropriate tax authority. NEC
shall promptly furnish GEOWORKS with appropriate ### that ###.
Unless otherwise agreed upon by the Parties in writing, Licensee
shall not be required to ### against GEOWORKS except as expressly
set forth herein.
7.7 RECORDS
NEC shall maintain complete and correct records establishing the
amount of royalties due hereunder at least for a period of ### after
the occurrence of each event.
7.8 REPORTS
No later than sixty (60) days after the end of each quarter, NEC
shall send to GEOWORKS a report stating the number of
royalty-bearing units of Product Shipment during the quarter and
amount of royalty due on each Product. No report shall be required
if Licensee notify GEOWORKS that it discontinues the shipment of the
Product and the amount of royalty due is zero. From time to time,
GEOWORKS may request that Licensee provide such information as
GEOWORKS may reasonably require in order to register and
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protect its trademarks and other intellectual property rights. Such
information may include, for example, ### in which the Products ###,
### on which such ###, and such written evidence of such ### as may
be required by ### in connection with such registration and
protection. Licensee agrees to cooperate with GEOWORKS and to
respond to such requests with such information as is available to
Licensee without delay.
7.9 AUDITS
During the term of this Agreement and for ### after the later of (i)
expiration or any termination of this Agreement, or (ii) the date on
which Licensee last ships units of any Product in accordance with
Section 14.4 (Limited Rights After Termination), an independent
third-party representative of GEOWORKS, reasonably acceptable to
NEC, upon reasonable notice and during NEC's normal business hours,
shall have the right to conduct an audit of the relevant portions of
NEC's books of account to verify the accuracy of the royalty report
of NEC. Prompt adjustment shall be made for any over or under
payments revealed by such audit(s), ### at the rate of ### per year
(or the maximum permitted by applicable law, if less) from the due
date until paid. Such audit(s) may be conducted no more than once in
any twelve-month period. ### shall ### of the audit; provided,
however, if the audit reveals overdue payments in excess of ### of
the total royalty payable for the period subject to the audit, ###
shall ### of such audit. All information obtained by GEOWORKS'
independent third-party representative during any such audit shall
be treated as Confidential Information as defined in Section 15
(Nondisclosure and Restricted Use). The auditor shall report to
GEOWORKS only the result of the audit and shall not disclose any
Confidential Information of Licensee.
8. ADVERTISING, TRADEMARK USAGE/PROTECTION AND PUBLICITY
8.1 CO-PROMOTION OF GEOWORKS
GEOWORKS desires that NEC ### in the ### of the Licensed Technology,
and GEOWORKS believes that both Parties will benefit from the ### of
the Licensed Technology. GEOWORKS understands that NEC may ### the
### and ### of ###. Therefore, Licensee agrees to ### products in
accordance with and subject to the following terms and conditions,
and to use its commercially reasonable efforts to ### to so label
and promote ###.
8.2 LICENSEE-LABELED PRODUCTS
GEOWORKS' name, logo and proprietary notices, in the forms provided
in Exhibit D, will appear prominently, in a style, size and location
reasonably determined by Licensee, on or in connection with all
Licensee-labeled Products, as follows:
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---------------------------------------------------------------------------
Location Acknowledgment
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1. ### documentation a) ###
b) ###
c) ###
For this purpose, the Parties intend that
GEOWORKS' ### be readily visible to the
consumer
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2. Mutually acceptable ### a) ###
b) ###
c) ###
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3. ### the Products a) ###
b) ###
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8.3 PRIVATE LABELED PRODUCTS
NEC shall use its commercially reasonable efforts to ### to comply
with the provisions of Section 8.2 .
8.4 ACKNOWLEDGMENT OF NEC
GEOWORKS shall be ### and the ### in GEOWORKS' promotional
literature and marketing materials upon GEOWORKS' receipt of ###
from NEC, such ###. Such ### may be given by the officer identified
in Exhibit C. NEC shall review all such requests made by GEOWORKS
under this Subsection without undue delay.
8.5 PUBLIC RELATIONS PROGRAMS
The Parties are ### and shall ### in public relations programs, in
order to promote the ###, the ###, and the ###. Neither Party shall
issue any press releases with regard to this Agreement or the
relationship of the Parties without the other Party's prior review
and written approval, or as required by law. Such approval is
intended to ensure proper references, accurate information and
correct proprietary notices, and is not to be unreasonably withheld.
Such review and comments will be provided within ###. Such approval
may be given by the officer identified in Exhibit C.
8.6 GEOWORKS PROMOTIONAL MATERIALS PACKED WITH THE LICENSEE-LABELED
PRODUCT
GEOWORKS ### that ### with Licensee ### products can increase ###
for a device by ### to the user. ###, at the ###, to such ### of
GEOWORKS ### for any version of any Product, and ### by GEOWORKS in
writing reasonably in advance, then (i) each unit of such ###
Product ### the GEOWORKS ### and (ii) NEC agrees to ### to ### to
### the GEOWORKS ### in the packaging for ### versions of such
Products; provided that (a) GEOWORKS shall timely make available to
Licensee the ### in the ###, ### and ### designated by NEC and (b)
any and all additional costs and expenses incurred by Licensee ###
for ### of the GEOWORKS ### shall be borne and paid by ###. NEC will
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AND FILED SEPARATELY WITH THE COMMISSION
have the right to ### the contents of the GEOWORKS ###, such ###.
Such ### may be given by the officer identified in Exhibit C. ###
GEOWORKS in writing, Licensee shall give GEOWORKS ### of the ###
without undue delay.
8.7 MARKETING PLANS
The Parties agree to ### for the ### of the Licensed Technology and
the Products, and ### are expected to be included, at a minimum, in
such ###, provided that actual contents of such ### will be agreed
by the Parties through further consultation and shall be confirmed
in writing:
8.7(a) ### participation in ### in ###;
8.7(b) ### access to ### and ###;
8.7(c) ### between each ###; and
8.7(d) ### and ### activities
Expenses for the above ### shall be ### in a manner to be agreed
case by case on or before each such activity.
9. CUSTOMER SUPPORT
9.1 FIRST LEVEL CUSTOMER SUPPORT
Licensee shall provide and/or shall require its Private Label
customers to provide customer support for end users who acquire
Product units, in accordance with Licensee's commercially reasonable
and customary customer support practices. In the event that
Licensee's customers first call GEOWORKS directly for technical
support, GEOWORKS may refer such customers to Licensee. For a
period of ### ### of this Agreement, Licensee will ### customer
support as set forth above to end users.
9.2 SECOND LEVEL CUSTOMER SUPPORT
In the event that trained Licensee technical personnel are unable to
answer the end users' questions regarding the Licensed Technology
after using reasonable efforts, such technical personnel may contact
GEOWORKS at its customer support center with respect to such
technical support questions. GEOWORKS intends to ###, and agrees to
use ### to ### of such ### within ### following ###.
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AND FILED SEPARATELY WITH THE COMMISSION
9.3 TESTING EQUIPMENT
During the development process, Licensee shall deliver to GEOWORKS
### of the ### Product, together with such special equipment and
supplies as GEOWORKS may reasonably require and be accepted by
Licensee, for the exclusive use in testing the operation of the
Licensed Technology in the ### Products.
Upon the first commercial shipment of each Product, Licensee will
deliver ### of the release version of the Product, including all
packaging and documentation included in the Product. GEOWORKS shall
have and retain use of such Product units to meet its second-level
support and Error-correction obligations under this Agreement, and
in order to protect its trademarks and copyrights.
9.4 ### SALES
GEOWORKS may purchase up to ### units of each Product at ### of
NEC's ###, for use by employees, officers and directors of GEOWORKS.
10. MANUFACTURING RESPONSIBILITIES.
Licensee will manufacture accurate copies of the Licensed Technology in
the Product, at its expense and responsibility. Any Product bearing a
GEOWORKS trademark shall be manufactured in accordance with Licensee's
customary quality control standards. Unless GEOWORKS otherwise agrees in
writing, all of the Licensed Technology computer programs (including data
files) identified in Exhibit A under the heading "Minimum Configuration"
shall be loaded in the Product so that the Product meets the minimum
requirements of the GEOWORKS operating system platform.
11. GEOWORKS' INDEMNITIES
11.1 INDEMNITY
GEOWORKS shall defend and hold harmless Licensee, its Private Label
customers, and their distributors and customers against, and pay any
resulting awards and settlements arising from, any claim, demand,
suit or action to the extent it alleges that the Licensed
Technology, Product Materials, Tools or GEOWORKS trademarks
("Licensed Items") as supplied by GEOWORKS infringes upon any patent
or trademark or copyright or trade secret or other intellectual
property right of any third party, provided that (1) NEC promptly
informs GEOWORKS in writing of any such claim, demand, action or
suit, (2) GEOWORKS is given control over the defense thereof and NEC
cooperates in the defense, at GEOWORKS' expense, and (3) Licensee
will not agree to the settlement of any such claim, demand, action
or suit prior to a final judgment thereon without the prior written
consent of GEOWORKS, which consent will not be unreasonably
withheld. Licensee shall have the right to select its own counsel to
participate in any such defense, at Licensee's expense. GEOWORKS'
indemnity obligations do not apply to (1)
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
modifications to the Licensed Technology specified by NEC, if the
modification causes an infringement without regard to the manner in
which the modification is implemented by GEOWORKS (and provided,
however, that GEOWORKS' indemnity obligations shall apply to
infringements caused by the manner in which GEOWORKS implements such
a modification), (2) modifications made to the Licensed Technology
not by or for GEOWORKS, (3) distribution of a superseded infringing
version of the Licensed Technology by Licensee after release by
GEOWORKS (and acceptance by NEC, which acceptance shall not be
unreasonably withheld or delayed) of a non-infringing version by
GEOWORKS in accordance with Section 11.2 hereof (GEOWORKS' Rights),
and (4) any use or combination of the Licensed Technology with any
technology, software or hardware not supplied by GEOWORKS, if such
alleged infringement would be avoided by use of the Licensed
Technology alone or with other technology, software or hardware.
11.2 GEOWORKS' RIGHTS
If a claim, demand, suit or action alleging infringement is brought
or GEOWORKS reasonably believes one may be brought, GEOWORKS shall
be fully responsible and have the right at its entire expense to (1)
modify the Licensed Technology to avoid the allegation of
infringement, while at the same time maintaining compliance of the
Licensed Technology with the Product Specification, or (2) obtain
for Licensee a license to continue to exercise the rights granted
herein.
11.3 LIMITATIONS
GEOWORKS' liability under this Section 11 shall be limited to ### as
### and as ### as of the date such liability is incurred (e.g. date
of final award or settlement), provided that NEC may ### from
GEOWORKS under Section 11.1 above by way of ### of the ### under
this Agreement. This Section 11 sets forth GEOWORKS' entire
liability to NEC for any actual or alleged infringement or
misappropriation of any third party's intellectual property rights
resulting from the GEOWORKS Licensed Items.
12. NEC'S INDEMNITIES
12.1 INDEMNITY.
NEC shall defend and hold harmless GEOWORKS against, and pay any
resulting awards and settlements arising from any claim, demand,
suit or action to the extent it alleges that any Product embedding
the Licensed Technology (excluding the Licensed Technology)
infringes upon any patent or any trademark or copyright or trade
secret or other intellectual property rights of any third party,
provided that (1) GEOWORKS promptly informs NEC in writing of any
such claim, demand, action or suit, (2) NEC is given control over
the defense thereof and GEOWORKS cooperates in the defense at NEC's
expense, and (3) GEOWORKS will not agree to the settlement of any
such claim, demand, action or suit prior to a final judgment thereon
without the written consent of
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AND FILED SEPARATELY WITH THE COMMISSION
NEC, which consent will not be unreasonably withheld. GEOWORKS shall
have the right to select its own counsel to participate in any such
defense at GEOWORKS' expense. NEC's indemnity obligations do not
apply to (1) modifications made to the Product not by or for
Licensee, and (2) any use or combination of the Product with any
technology, software or hardware not supplied by Licensee, if such
alleged infringement would be avoided by use of the Product alone or
with other technology, software or hardware.
12.2 LIMITATIONS
NEC's liability under this Section (NEC'S INDEMNITIES) shall be
limited to the ###. This Section sets forth NEC's entire liability
to GEOWORKS for any actual or alleged infringement or
misappropriation of any third party's intellectual property rights
resulting from any NEC Product.
13. ERROR CORRECTION
13.1 TERM AND COST OF ERROR CORRECTION
GEOWORKS shall provide Error correction, as set forth herein, at no
charge for a period of ### after Acceptance of the Licensed
Technology. Thereafter during the term of this Agreement and ###
after the last delivery of any Update, upon the request of NEC, such
Error correction will be provided in accordance with conditions to
be agreed upon by the Parties.
13.2 REQUEST FOR CORRECTION
If NEC identifies an Error, NEC shall give written notice to
GEOWORKS specifying in detail the nature of such Error and the
circumstances under which the Error occurs. Upon GEOWORKS'
reasonable request, NEC shall deliver to GEOWORKS any NEC hardware,
software and technical data needed to reproduce and verify the Error
to the extent reasonably available and possible and accepted by NEC.
In the ### GEOWORKS shall ### for Error corrections.
13.3 CLASSIFICATION
Errors shall be classified as ### or ### as follows:
13.3(a) ### is ### and there is ### or ### of ###; or ### or ###;
or any Error identified as ### as specified in
Section 13.5 below;
13.3(b) ### or ###; does not meet ### or ###; or ###, but ### from
the ### is possible;
13.3(c) ###: Something that is ### or ###, but is ###.
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
13.3(d) ###: A ### in the software, ###, could be ### but for such
error, such as ###.
13.3(e) ###: An error which NEC and GEOWORKS jointly determine ###
to be ### for the ### of the Product.
13.3(f) ###: A problem ### in connection with ### of the Licensed
Technology, or a problem caused by the ### or ###.
GEOWORKS will have primary responsibility to classify the Errors and
will inform NEC of the result of it classification without delay,
provided that if NEC has a different opinion both Parties will
consult each other in good faith to determine the classification of
the Errors.
13.4 TIMEFRAME
GEOWORKS will respond to reports of suspected Errors as follows:
13.4(a) ###: GEOWORKS will give the ### and ### and ### to respond
to ### Errors, and shall provide NEC with Error correction
### but not later than ###.
13.4(b) ###: GEOWORKS will give the ### and ### to the response to
### and ### Errors, and shall provide NEC with Error
correction ###.
13.4(c) ###: GEOWORKS will respond to ### Errors in the ###.
13.4(d) ###: GEOWORKS and NEC will determine the ###.
13.4(e) ###: GEOWORKS will refer ### for resolution ###.
13.5 DEFINITION OF ### ERROR
For purposes of this Section, an ### Error is one specific Error
(excluding Errors which are identified in writing as ### by GEOWORKS
at least ### days before Licensee ### which forms the ### for a ###
by Licensee, and/or the ### for ### or ###, of more than ### of the
total number of units of any version of the Product shipped in a
calendar year. For this purpose, GEOWORKS may request that Licensee
provide the information of its intended date of first commercial
shipment, and Licensee agrees to respond to such requests with the
information as is available without delay.
13.6 LIABILITY FOR COST OF CORRECTION
GEOWORKS shall be responsible for all internal engineering expenses
incurred by GEOWORKS in connection with its correction of any Error.
Licensee shall be
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
responsible for all costs and expenses associated with Licensee's
refund, recall, or replacement of any unit of any Product affected
by any Error. Notwithstanding the foregoing, in the case of an ###
Error, GEOWORKS shall ### Licensee for Licensee's reasonable ###
(not including ### in excess of the ### paid or payable by Licensee)
associated with such ### of units of Product affected by the ###
Error, but GEOWORKS' liability shall be limited to an amount equal
to ### the ### by NEC to GEOWORKS as ### for the affected units as
of the date such liability is incurred (e.g. expenses paid by
Licensee), provided that NEC may ### from GEOWORKS under this
Section 13.6 by way of ### of the ### which will accrue under this
Agreement.
13.7 DISCLAIMER OF IMPLIED WARRANTIES
EXCEPT AS SET FORTH IN THIS AGREEMENT, AND TO THE EXTENT PERMITTED
BY APPLICABLE LAW, ALL IMPLIED WARRANTIES WITH RESPECT TO THE
LICENSED TECHNOLOGY, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES
OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, ARE HEREBY
EXCLUDED.
14. TERM OF AGREEMENT AND TERMINATION
14.1 TERM
Unless terminated earlier in accordance with this Agreement, this
Agreement shall begin on the Effective Date and shall continue to be
effective for seven (7) years from the Effective Date and shall
thereafter automatically be extended for succeeding every three (3)
year periods unless either party gives to the other a written notice
of termination at least one (1) year prior to the expiration of the
original or extended term of this Agreement.
14.2 TERMINATION FOR BREACH
Each Party shall have the right to terminate this Agreement upon
thirty (30) days prior written notice if the other Party is in
breach of any material term of this Agreement and the breaching
Party fails to remedy such breach within the thirty-day notice
period.
14.3 BANKRUPTCY
Each Party shall have the right to terminate this Agreement
immediately upon written notice in the event that the other Party
becomes insolvent, files for any form of bankruptcy, makes any
assignment for the benefit of creditors, or ceases to conduct
business (other than in connection with an assignment permitted
under Section 18.1 (Assignment)). Each Party acknowledges that if it
is a debtor-in-possession, or if a trustee in bankruptcy in a case
under the United States Bankruptcy Code rejects this Agreement or
any agreement supplementary hereto, the other Party may elect to
retain its rights under this Agreement and/or any supplementary
agreement as provided in Section 365(n) of the United States
Bankruptcy Code. Upon written request of the other Party to
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
the bankrupt Party or the Bankruptcy Trustee, the bankrupt Party or
such Bankruptcy Trustee shall not interfere with the rights of the
other Party as provided in this Agreement and any supplementary
agreement.
14.4 LIMITED RIGHTS AFTER TERMINATION
Upon any termination this Agreement due to the material breach by
Licensee, all rights granted hereunder, including without limitation
the licenses granted under Section 3 (GRANT OF LICENSES), shall
terminate, as follows:
14.4(a) INVENTORY: When this Agreement is terminated, Licensee may
continue to distribute its on-hand inventory of Product
units embedding the Licensed Technology in accordance with
the terms and conditions of this Agreement for a period of
### following such termination.
14.4(b) USE AND PRODUCTION: Licensee will immediately cease all
modification, copying, embedding and production of any
additional copies of the Licensed Technology and any
additional units of the Product as of the termination date
and will cause any third parties who obtained from it the
right to manufacture copies of the Licensed Technology or
units of Product to do likewise.
14.4(c) CUSTOMERS' RIGHTS: Any termination or expiration shall not
affect any end user's rights to use Product units and shall
further not affect the right of any non-affiliated third
party who purchased units of Product from NEC to sell such
units to its customers.
14.4(d) RETURN OF MATERIALS: Within ### of such termination or
expiration (or immediately upon termination in the case of a
termination for breach by Licensee), Licensee shall return
all copies of the Licensed Technology then in its
possession, including without limitation master diskettes
and tapes, and user manuals. Each of the Licensee may retain
the ### to the Licensed Technology, as provided in Section
4.2, and only such Object Code copies of the ### as it may
reasonably require for its internal use in providing
continued First Level Customer Support to its end user
customers. Each Party shall destroy or return to the other
all Confidential Information provided by the other Party,
except that each Party may retain one copy for archival
purposes only, as a record of the confidential disclosures
made to it under this Agreement. Within ### of such
termination or expiration, each Party shall confirm in
writing to the other Party that all of the foregoing has
been completed.
14.5 PAYMENT
Within ### days of such termination or expiration NEC shall pay to
GEOWORKS any and all sums due under this Agreement.
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
15. NONDISCLOSURE AND RESTRICTED USE
15.1 CONFIDENTIAL INFORMATION
In the course of performing this Agreement, each Party (the
"Disclosing Party") may disclose to the other Party ("the Receiving
Party") trade secrets and confidential and proprietary information
of the Disclosing Party, (i) disclosed in written or other tangible
form and clearly marked with a legend identifying it as confidential
or, (ii) disclosed in verbal or visual communications with the
identification of confidential at the time of such disclosure and
within ### days after such verbal or visual disclosure is provided
in written or other tangible form to the Receiving Party marked with
such legend ("Confidential Information"). Such Confidential
Information includes without limitation the terms and conditions of
this Agreement, technical and/or internal specifications of the
Disclosing Party's products, non-public marketing plans, future
products and other non-public business information, the trade
secrets and technology embodied in the Licensed Technology, the
trade secrets and technology embodied in the Product, each Party's
sales data and other non-public information. All Confidential
Information shall remain the sole property of the Disclosing Party
and the Receiving Party shall have no interest in or right to such
Confidential Information except as expressly set forth in this
Agreement. Both Parties agree that all Confidential Information of
the other Party shall be held in strict confidence, will not be
disseminated or disclosed to any third party and will not be used by
the Receiving Party for any purpose other than performing its rights
under this Agreement without the express written consent of the
Disclosing Party for ### from the date of disclosure, except that
time limit for the confidential treatment of ### shall be ### from
the date of disclosure. Both Parties agree to use at least the
degree of diligence to protect the other Party's Confidential
Information as a reasonably prudent technology company would
normally use to protect any of its own trade secrets and other
confidential information. Notwithstanding the foregoing, NEC may
disclose the Confidential Information of ### to ### which have a
need to know, provided that NEC shall impose the obligation no less
restrictive than those set forth in this Section 15, (except that
NEC may not disclose ### to ### unless otherwise agreed upon by the
Parties in writing). Also, GEOWORKS may disclose the Confidential
Information of ### product to ### which have a need to know,
provided that GEOWORKS shall impose the obligation no less
restrictive than those set forth in this section 15. The
confidential information disclosed under the Non-Disclosure
Agreement between the Parties effective as of ### shall be deemed as
the Confidential Information disclosed under this Agreement. The
provisions of this Section shall not apply to any information or
materials:
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
(i) which are in the public domain at the time of disclosure
to the Receiving Party or which thereafter enter the
public domain through no action or inaction by the
Receiving Party or its employees; or
(ii) which were in the possession of, or known by, the
Receiving Party prior to its receipt from the Disclosing
Party; or
(iii) which are rightfully disclosed to the Receiving Party by
another party without restriction; or
(iv) which have been independently developed by the Receiving
Party, provided that the persons developing the same
have not had access to the Confidential Information
furnished to the Receiving Party by the Disclosing Party
hereunder; or
(v) which are required to be disclosed pursuant to law,
provided, however, that a minimum of ### written notice
shall be provided by the Party intending to disclose in
order to permit the other Party to take such action as
it deems appropriate to prevent or limit such
disclosure.
15.2 RESTRICTED USE
Without prejudice to the generality of the foregoing, each Party
agrees not to use any of the Confidential Information or Licensed
Technology of the other Party for any use or purposes except those
expressly specified herein.
16. LIMITATION OF LIABILITY
REGARDLESS OF WHETHER ANY REMEDY SET FORTH HEREIN FAILS OF ITS ESSENTIAL
PURPOSE, NEITHER PARTY TO THIS AGREEMENT SHALL BE LIABLE TO THE OTHER PARTY FOR
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES OR THE LOSS OF ANTICIPATED PROFITS
ARISING FROM ANY PERFORMANCE OR BREACH OF THIS AGREEMENT BY SUCH PARTY EVEN IF
NOTICE IS GIVEN OF THE POSSIBILITY OF SUCH DAMAGES.
17. SOURCE CODE ESCROW
17.1 APPOINTMENT
Upon NEC's written request, the Parties will appoint a mutually
agreeable escrow agent, and will execute an Escrow Agreement
acceptable to both Parties and to the escrow agent.
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
17.2 DEPOSIT
If the Escrow Agreement is established, then, within thirty (30)
days after Acceptance, and thereafter upon NEC's Acceptance of any
Update, GEOWORKS will deliver to the escrow agent the most current
copy of those portions of the Source Code of the Licensed Technology
that have not already been made available to NEC under this
Agreement, in a form which can be used by a technically competent
computer programmer to edit, debug, modify and compile the programs.
If third party hardware and/or software is needed to so edit, debug,
modify or compile the programs, an identification of such hardware
and/or software shall also be deposited.
17.3 RELEASE FROM ESCROW
The escrow agent will deliver the deposit to NEC upon: (a) the
bankruptcy, liquidation or other permanent cessation of business by
GEOWORKS (except in connection with an assignment permitted under
Section 18.1 (Assignment)); (b) a finding of a court or arbitrator
that GEOWORKS failed to cure a material breach of its obligations to
correct Errors under Section 13 (Error Correction) within thirty
(30) days after written notice of such breach from NEC, and a
finding that delivery of the source code to NEC is thereby made
necessary; or (c) other instructions signed by both parties.
17.4 COST
The expenses to be paid to the escrow agent shall be borne and paid
by ###.
17.5 CONDITIONAL LICENSE UPON RELEASE OF SOURCE CODE FROM ESCROW
Upon release of the Source Code to NEC hereunder, Licensee shall
have a nonexclusive, worldwide, perpetual license to use and modify
the Source Code in order to correct Errors. Licensee shall treat the
source code as confidential, and shall protect the Source Code from
disclosure in the same manner and with the same level of care with
which Licensee protects the Source Code to Licensee's proprietary
products from disclosure.
18. GENERAL
18.1 ASSIGNMENT
This Agreement may not be assigned in whole or in part by either
Party without the prior written consent of the other Party;
provided, however, that a successor in interest by merger, by
operation of law, assignment or purchase of the entire business of
either Party, shall acquire all interest and all obligations of such
Party hereunder, without the necessity of obtaining prior written
consent. Any prohibited assignment shall be null and void. The terms
and conditions of this Agreement shall be binding upon and
enforceable by the successor and permanent assigns of either Party.
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18.2 GOVERNING LAW; ARBITRATION
This Agreement will be governed and interpreted in accordance with
the laws of the State of California, U.S.A., except for that body of
law pertaining to conflicts of law, but excluding the Convention on
Contracts for the International Sale of Goods. All disputes arising
in connection with this Agreement shall, unless amicably settled by
the parties, be finally settled by arbitration under the Rules of
Conciliation and Arbitration of the International Chamber of
Commerce by three (3) arbitrators appointed in accordance with the
Rules. The place of arbitration shall be, unless otherwise agreed
between the parties, the country and the city in which the
respondent has its principal place of business. Judgment upon the
award rendered may be entered in any Court having jurisdiction or
application may be made to such Court for a judicial acceptance of
the award and an order of enforcement, as the case may be. All the
arbitrators shall be conversant in the English language, and all
proceedings shall be conducted and all documentary evidence shall be
presented in English. Notwithstanding the foregoing, either party
may request injunctions, seizure orders, writs of attachment, and
other extraordinary remedies from any court having jurisdiction in
the case of an actual or threatened infringement of such party's
patents, copyrights, trademarks, trade secrets or other intellectual
property rights by the other party. The filing of a proceeding for
such extraordinary remedies shall not constitute a waiver by the
filing party of the right to compel arbitration of all demands for
other remedies.
18.3 CHOICE OF LANGUAGE
The original of this Agreement has been written in English and
English is the governing language of this Agreement.
18.4 INDEPENDENT CONTRACTORS
Each Party will be deemed to have the status of an independent
contractor towards the other Party, and nothing in this Agreement
will be deemed to place the Parties in the relationship of
employer-employee, principal-agent, partners or joint ventures.
18.5 ATTORNEYS' FEES
In the event that any legal action, including arbitration, is
required in order to enforce or interpret any of the provisions of
this Agreement, the prevailing Party in such action shall recover
all reasonable costs and expenses, including reasonable attorneys'
fees, incurred in connection therewith.
18.6 WAIVER
The failure of either Party to enforce any provision of this
Agreement shall not be deemed a waiver of that or any other
provision of this Agreement.
18.7 FORCE MAJEURE
Neither Party will be deemed in default of this Agreement to the
extent that performance of its obligations is delayed or prevented
by reason of any act of God, fire, natural
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disaster, accident, act of government, or any other cause beyond the
control of such Party ("Force Majeure"), provided that such Party
gives the other Party written notice thereof promptly and uses its
good faith efforts to cure the breach. In the event of such a Force
Majeure, the time for performance or cure will be extended for a
period equal to the duration of the Force Majeure but not in excess
of six (6) months.
18.8 NOTICES
Notices to either Party shall be in writing, in the English
language, and shall be deemed delivered when served in person or two
business days after being dispatched by an internationally
recognized express courier service, and delivered to the addresses
set forth in Exhibit C. A Party may change its address for purposes
of receiving notices by giving notice of the change to the other
Party.
18.9 SURVIVAL
The rights and obligations under Sections 3 (GRANT OF LICENSES)
(except in the case of termination by GEOWORKS due to material
breach by NEC), 4 (PROPRIETARY RIGHTS), 7 (PAYMENTS), 9.1 (First
Level Customer Support), 10 (MANUFACTURING RESPONSIBILITIES), 11
(GEOWORKS' INDEMNITIES), 12 (NEC'S INDEMNITIES), 13. (ERROR
CORRECTION), 14.4 (Limited Rights After Termination), 15
(NONDISCLOSURE AND RESTRICTED USE), 16 (LIMITATION OF LIABILITY),
and 18 (GENERAL) shall survive the expiration and any termination of
this Agreement.
18.10 COMPLIANCE WITH LAWS
Both Parties agree to comply with all applicable laws and
regulations in performing their duties hereunder. Both Parties
understand that the Licensed Technology may be restricted by the
governments of the United States and/or Japan from export to certain
countries and each Party agrees that it will not distribute or
reexport directly or indirectly, the Licensed Technology, or its
direct product, in any way which will violate any of the export
control laws or regulations of the United States or Japan, or to any
prohibited country under such laws and regulations.
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IN WITNESS WHEREOF, the Parties have executed this Agreement as of the Effective
Date.
GEOWORKS NEC CORPORATION
/s/ Leland J. Llevano /s/ Takashi Hiyama
- -------------------------------- --------------------------------
Signature Signature
Leland J. Llevano Takashi Hiyama
- -------------------------------- --------------------------------
Print Name Print Name
General Manager,
Title Vice President Title Mobile Communications Division
--------------------------- ---------------------------
Date Sep 9 1996 Date Sep 5 , 1996
--------------------------- ---------------------------
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### CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION
EXHIBIT A
IDENTIFICATION OF THE LICENSED TECHNOLOGY
A. OPERATING SYSTEM
1. ###
2. ###
3. ###
4. ###
5. ###
6. ###
7. ###
8. ###
Note: ###
B. APPLICATIONS (###)
1. ###
2. ###
3. ###
4. ###
5. ###
6. ###
7. ###
8. ###
9. ###
C. PRODUCT MATERIALS
1. ###
2. ###
3. ###
4. ###
5. ###
6. ###
7. ###
D. TOOLS (###)
1. ###
2. ###
3. ###
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4. ###
5. ###
6. ###
7. ###
8. ###
E. THIRD PARTY TECHNOLOGIES SUB-LICENSED TO NEC BY GEOWORKS (###)
1. ###
2. ###
3. ###
4. ###
5. ###
6. ###
F. MINIMUM CONFIGURATION
The following is a preliminary identification of the GEOS files that must be
present in a GEOS-based Product in order to meet the minimum configuration
requirements of the platform:
The following libraries must be present in any GEOS-based Product:
###
###
Currently each GEOS Product must also contain the following:
###
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EXHIBIT B
THE NEC "###" PROJECT
1. Product Definition
### Product is a ### and communication device initially designed for
###.
2. Product Specification
2-1 ### Product Specification To be attached
2-2 Licensed Technology Specification To be attached
3. GEOWORKS' Testing Plan
To be determined in Product Specification
4. NEC's Testing Plan
To be determined in Product Specification
5. NEC's Coding Responsibilities
###
End User Documentation
6. Timetable
### ###
### ###
### ###
### ###
### ###
### ###
### ###
### ###
### ###
### ###
### ###
###
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7. NEC Proprietary Elements:
a) Program Modules
The following specific program modules, if developed by NEC, shall be NEC
Proprietary Elements:
###
b) ### Look and Feel and Specific UI Library
The ### "Look and Feel" and the ### Specific UI Library will contain a set of
### and may contain certain ### to the GEOWORKS proprietary ### User Interface.
GEOWORKS shall not distribute the ### to any third party. The elements of the
### "Look and Feel" define a ### for the ### device. The "Look and Feel"
includes the ### and other ###) and the ### of the ### (including ###). Elements
of the ### Look and Feel incorporated into the ### Product will be described in
the ### Product Specification.
c) GEOWORKS' Retained Rights
GEOWORKS retains ownership of all intellectual property rights in ### User
Interface.
Subject to item a) and b) above. GEOWORKS retains ownership of all intellectual
property rights in ideas, methods, programming routines and subroutines,
algorithms, screen handling techniques, I/O techniques and similar reusable
elements, which are included in the ### Specific UI Software Library furnished
by GEOWORKS hereunder (the "Incorporated Procedures").
The licenses granted to NEC in Section 3 (GRANT OF LICENSES.) shall include a
perpetual, world-wide, non-transferable license to include the ### User
Interface and the Incorporated Procedures in any Product.
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AND FILED SEPARATELY WITH THE COMMISSION
EXHIBIT C
ADDRESSES FOR NOTICES
GEOWORKS' ADDRESS NEC'S ADDRESS
960 Atlantic Avenue ###
Alameda, CA 94501 U.S.A. ###
GEOWORKS' TELEPHONE NUMBER NEC'S TELEPHONE NUMBER
+1 510 814 1660 ###
GEOWORKS' FACSIMILE NUMBER NEC'S FACSIMILE NUMBER
+1 510 814 4250 ###
GEOWORKS' NOTICE RECIPIENT NEC'S NOTICE RECIPIENT
Leland J. Llevano ###
Vice President, Strategic Partnerships ###
###
copy to
Jordan J. Breslow
GEOWORKS General Counsel
GEOWORKS OFFICER FOR APPROVALS NEC OFFICER FOR APPROVALS
Leland J. Llevano ###
Vice President, Strategic Partnerships ###
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EXHIBIT D
GEOWORKS TRADEMARKS, LOGOS AND PROPRIETARY MARKINGS
[Not all marks are available in all countries]
1. Trademarks
GEOWORKS(R)
GEOS(R)
###
2. Company Name
GEOWORKS
3. Logos
[GEOS LOGO]
[GEOWORKS LOGO]
4. Proprietary Markings [preliminary list]
A. For Documentation
GEOWORKS(R) application software and GEOS(R) operating system
software copyright (C) 1990-1996 GEOWORKS. All rights reserved.
United States Patent 5,327,529.
###
###
###
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AND FILED SEPARATELY WITH THE COMMISSION
###
### of California. All rights reserved.
[Final list of trademark references to be determined when Product
Specifications are complete]
GEOWORKS(R), GEOS(R) the GEOS logo are Trademarks of GEOWORKS in the
United States of America and other countries.
###
###
All other brand and product names are trademarks or registered
trademarks of their respective holders.
###
###
B. For Screen Display:
[subject to technical feasibility given small screen size]:
Copyright (C)1990-1996 GEOWORKS. United States Patent
5,327,529.
5. GEOWORKS encourages Licensee to incorporate the following copyright
notice on Screen Display, provided that such incorporation shall be
Licensee's discretion. [GEOWORKS to request appropriate modification of
notice requirements from third parties, as necessary]
###
###
###
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EXHIBIT E
NEC PAYMENTS
1. ROYALTIES:
NEC will pay GEOWORKS a royalty for each Product Shipment, net of returns
(excluding "Not For Resale Units" under Section 7.2).
1.1 Rate of Royalties
The rate of royalty will be the following ### of each Product, or following
###:
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
### ### ### ### ###
If a Product does not ### or ### from the ###, ###. With respect to the Product
which does not ### substantially all of the ###, the ### on ### will be ### of
the Parties. ### of the amount of ### after ### shipments of the Products shall
be ### by the Parties through ###.
### shall mean the ### received by a Licensee for the Product manufactured by or
for it and sold to any other party, ###, ### and ###, provided that ### for any
Product used internally by any Licensee shall be the ### of the same model of
Product sold to any other party in the same quarter.
1.2 Updates
For purposes of this per-unit royalty provision, a Major Update is one which
introduces significant new functionality. A Minor Update is one which
incrementally improves the operating system, but does not add significant new
functionality. For purposes of illustration, ###, and was a ###. ### and
other requirements for ###, and was a ###. ### and was a ###. ### will be a
###. ### will be a ###. Change or addition of ### will not constitute a
###.
### and industry custom is to designate ### by changing the digit to the
right of the decimal (e.g., from Version 2.0 to Version 2.1), and to
designate ### by changing the digit to the left of
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the decimal (e.g., from Version 2.1 to Version 3.0), provided however that
construction whether any ### will be ### notwithstanding ### of the name of
version of each update.
Notwithstanding the provisions of item 1.1 above, the Parties agree that the ###
to Licensed Technology (i.e., ### and/or ###) shall be ### at the time of
GEOWORKS' ### such ###, provided that (i) Licensee shall in all cases be
entitled to ### with the ### by GEOWORKS to ###, (ii) in no event shall the ###
for ###, (iii) ### shall be ### of the Product ### and (iv) ### and ### will be
### GEOWORKS for ### in such ### shall be ###. For the purpose of confirmation,
GEOWORKS' release of ### shall ###. Nothing contained herein shall prevents NEC
from ### to GEOWORKS ###.
2. ###
2.1 If at any time GEOWORKS ### with respect to the Licensed Technology (not
including ###) or ### (not including ###) to a ### at ### the ###
contained in Section 1.1 of this Exhibit, for a ### capable of ### to be
###, then GEOWORKS will ### the ### to Licensee effective as from the date
of ### and continue to be in force for the duration of this Agreement. NEC
shall have the right to have an independent auditor from time to time
audit GEOWORKS' compliance with this provision, and GEOWORKS shall grant
such auditor confidential access to other license agreements and
corresponding files. The auditor shall report to NEC only the compliance
or non-compliance of GEOWORKS. ### conditions in this Section 2.1 shall be
effective only for ### of this Agreement and ### of the Agreement.
2.2 If, within ### (as defined in Section 5.7), any third party OEM customer
of GEOWORKS commences commercial shipment in Japan of a ### and is based
upon the Licensed Technology or Minor Update (not including Major Update
and not including ###), the ### will be ### up to ###.
3. ###
If the total amount of per-unit royalties during the period from the date of ###
until ### from the ### in which the date of ### occurs does not equal ###, the
balance will be paid by NEC within sixty (60) days after the end of such period.
Such balance shall ###.
4. ###FEES
NEC will pay to GEOWORKS a ### fee of ### for GEOWORKS' development under this
Agreement. Said fee shall be payable as follows:
###
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EXHIBIT F
MINIMUM TERMS OF END USER LICENSE AGREEMENT
1. Statement of end user's acceptance of software license and of end
user's right to return for refund if terms not acceptable
2. Copying and installation:
a) For the software to be used on the Product, limited to one
Product and one archive copy
b) For the software to be used on the connected PCs, limited to two
(2) PCs and one archive (if feasible)
3. Decompilation, reverse engineering prohibited
4. U.S. Government restricted rights notices to be included (in U.S.
jurisdiction only)
5. Export law notices to be included
6. Warranty limited to replacing defective media. All other express and
implied warranties are disclaimed
7. Licensee's (or Private Labeled customer's) standard Limitation of
Liability
35
