Exhibit 99(c)(7)
EXECUTION COPY
JOINT DEVELOPMENT AND LICENSE AGREEMENT
This LICENSE AGREEMENT is made and effective as of March 18, 1998
("Effective Date") by and between MOTOROLA, INC., a Delaware corporation
("Motorola"), having a principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, and NETSPEAK CORPORATION, a Florida corporation
("NetSpeak"), having a principal place of business at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, MOTOROLA seeks to accelerate its efforts in developing products
for communications (including voice, fax, video, audio, and data) over Internet
Protocol (IP) networks, particularly RF communications networks.
WHEREAS, NetSpeak seeks to work with Motorola to manufacture and distribute
NetSpeak's IP communications software and hardware products.
NOW THEREFORE, in consideration of the mutual covenants, representations
and warranties, and subject to the terms and conditions contained herein, the
parties agree as follows:
This Agreement consists of the attached Basic Terms and Conditions,
including the Exhibits attached thereto (collectively, the "AGREEMENT").
All capitalized terms contained herein shall have the meaning set forth in
Exhibit A, attached hereto, unless otherwise defined in the main text of this
Agreement.
1. GRANT OF RIGHTS.
1.1 EXCLUSIVE LICENSE GRANT TO CREATE AND REPRODUCE RF PRODUCTS. Subject to the
terms and conditions of this Agreement, NetSpeak hereby grants to Motorola a
non-transferable, perpetual, Exclusive, royalty-bearing (as described in Section
7 hereto) world-wide right and license under NetSpeak's Intellectual Property
to:
(a) modify or have modified, or have made, the NetSpeak Products to create
RF Products;
(b) use, reproduce, have reproduced, market, have marketed, perform,
display, import, have imported, export, have exported, distribute and have
distributed (bundled or unbundled), license and sublicense through multiple
tiers of distribution, the RF Products; provided, however that to the extent
such RF Products constitute software, such RF Products shall be licensed or
distributed in Object Code form only.
1.2 EXCLUSIVE LICENSE GRANT TO MANUFACTURE AND SELL RF PRODUCTS. Subject to the
terms and conditions of this Agreement, NetSpeak hereby grants to Motorola a
non-transferable, perpetual, Exclusive, royalty-bearing (as described in Section
7 hereto) world-wide
right and license under NetSpeak's Intellectual Property to:
(a) manufacture or have manufactured the RF Products;
(b) use, sell, offer for sale, have sold or otherwise distribute, through
multiple tiers of distribution, license or sublicense the RF Products; provided,
however that to the extent such RF Products constitute software, the software
components of such RF Products shall be licensed or distributed in Object Code
form only.
1.3 EXCLUSIVE LICENSE GRANT FOR NETSPEAK COMMUNICATION PROTOCOL MODULE IN RF
FIELDS. Subject to the terms and conditions of this Agreement, NetSpeak hereby
grants to Motorola a non-transferable, perpetual, Exclusive, royalty free,
world-wide right and license under NetSpeak's Intellectual Property to use,
reproduce, have reproduced, and modify or have modified, the Source Code of the
NetSpeak Communication Protocol Module, including all future Updates and
Upgrades, to create RF Products and to distribute such RF Products and to copy,
have copied, perform, use, display, license, sublicense and distribute, through
multiple tiers of distribution, in Object Code form, the RF Products.
1.4 NON-EXCLUSIVE LICENSE GRANT. Subject to the terms and conditions of this
Agreement, NetSpeak hereby grants to Motorola a non-exclusive, royalty-bearing
(as described in Section 7 hereto), worldwide right and license under NetSpeak's
Intellectual Property to:
(a) make, have made, use, reproduce, have reproduced, market, have
marketed, perform, display, sell, have sold, import, have imported, export, have
exported, distribute and have distributed (bundled or unbundled), license and
sublicense, or otherwise transfer, through multiple tiers of distribution, the
NetSpeak Products; provided, however that to the extent such NetSpeak Products
constitute software, such NetSpeak Products shall be sold or distributed in
Object Code form only;
(b) modify or have modified the NetSpeak Products to create Derivative
Works (other than as set forth in Section 1.1(a));
(c) use the Source Code of the NetSpeak Software to make or have made
Derivative Works, alterations or modifications thereof;
(d) to copy, have copied, perform, use, display, license, sublicense and
distribute, through multiple tiers of distribution, in Object Code form, the
NetSpeak Software and Derivative Works of the NetSpeak Software.
1.5 NON-EXCLUSIVE LICENSE GRANT. Subject to the terms and conditions of this
Agreement, NetSpeak hereby grants to Motorola a non-transferable, perpetual,
non-exclusive, royalty-bearing (as described in Section 7 hereto), world-wide
right and license under NetSpeak's Intellectual Property to use, reproduce, have
reproduced, and modify or have modified, the Source Code of the NetSpeak
Communication Protocol Module, including all future Updates and Upgrades,
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to create Derivative Works, and to distribute such Derivative Works and to copy,
have copied, perform, use, display, license, sublicense and distribute, through
multiple tiers of distribution, in Object Code form, the Derivative Works;
provided, however, the foregoing license shall not be royalty-bearing to the
extent any such Derivative Work is incorporated into any other product as to
which Motorola pays NetSpeak a royalty in connection with the license grants set
forth in Sections 1.1, 1.2 or 1.4.
1.6 NON-EXCLUSIVE DOCUMENTATION LICENSE GRANT. Subject to the terms and
conditions of this Agreement, NetSpeak hereby grants to Motorola a royalty-free,
nontransferable, non-exclusive, sub-licensable, world-wide right and license
under NetSpeak's Intellectual Property to the Documentation; to use, reproduce,
have reproduced, perform, display, modify, have modified, market, have marketed,
translate, have translated or otherwise localize, sell, have sold, import,
export, distribute and/or have distributed the Documentation, including the
right to include any Documentation on any CD-ROM or diskette, in electronic
form, in place of hard copy of the same.
1.7 EXCLUSIVITY COVENANT. For purposes of clarifying the Exclusive grants to
Motorola under Sections 1.1, 1.2 and 1.3, NetSpeak has no rights to directly or
indirectly license, sublicense (or otherwise deal with) any third party
(including, but not limited to, through joint development, development of
Derivative Works or the integration of generally available products) in the
Exclusive Field; provided that the foregoing shall not limit the right of
NetSpeak to distribute generally available NetSpeak Products through current or
future indirect channels of distribution and provide customary end-user licenses
in connection therewith; provided, further that NetSpeak shall not be in
violation of the foregoing to the extent it directly licenses, or otherwise
directly deals with a third party for joint development, development of
Derivative Works, or the integration of generally available products so long as
the actual or intended use of the results of such joint development, development
of Derivative Works or integration of generally available products does not
include RF wireless links to end-users (including, without limitation, wireless
local loop, LMDS/MMDS, and all networks that use RF Wireless Products) or coax
links to end-users. NetSpeak will provide Motorola with reasonably requested
assurances of its compliance with the foregoing.
1.8 EXPLOITATION OF NETSPEAK PRODUCTS. While Motorola intends in good faith
to perform all obligations under this Agreement, NetSpeak acknowledges that any
duty to exploit the exclusive grants of the Sections 1.1, 1.2 and 1.3 for the
NetSpeak Products is subsumed and satisfied:
1.8.1 During the first three (3) years of the Agreement, by the Minimum
Commitments of Section 7.3, or until such Minimum Commitments are terminated;
and
1.8.2 Thereafter, by the exercise of commercially reasonable efforts on the
part of Motorola.
2. TRADEMARK LICENSE. Subject to the terms and conditions of this Agreement,
NetSpeak hereby grants to Motorola a personal, nontransferable, royalty-free,
non-exclusive, worldwide right and license, with a right to sublicense parties
who agree to adhere to this Section 2 and Exhibit D, to:
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(a) use and reproduce the NetSpeak Marks, either alone or co-branded with
any trademark or trade name owned by Motorola or to which Motorola has a license
to use, solely in connection with the NetSpeak Products and RF Products and
other Derivative Works, and which is used on any labeling, packaging,
demonstrations, promotions and advertising relating thereto; PROVIDED HOWEVER,
that in the case of use in connection with RF Products and Derivative Works,
Motorola will notify NetSpeak in writing to obtain prior approval, which
approval will not be unreasonably withheld. If NetSpeak does not respond within
30 days following notification, approval shall be deemed to have been granted;
and
(b) use, reproduce, and display the NetSpeak Marks (publicly or otherwise)
in connection with demonstrations, promotions and advertising related to the
NetSpeak Products and RF Products for which Motorola obtains NetSpeak's prior
written approval. Motorola shall not file any applications to register the
NetSpeak Marks, or any ▇▇▇▇ which are likely to cause confusion with the
NetSpeak Marks, in any country. Motorola acknowledges that its use of the
NetSpeak Marks is limited to the use as licensed in this Agreement. Motorola has
not acquired, and will not acquire, any ownership rights in the NetSpeak Marks.
All use of the NetSpeak Marks by Motorola shall inure to the benefit of
NetSpeak, and the use of the marks by Motorola shall not confer any rights to
the NetSpeak Marks to Motorola. Except as otherwise provided in this Section
2.0, Motorola further agrees that it has no power or right and shall not, if the
Agreement is terminated pursuant to Section 10.2, until the expiration of the
Term as though the Agreement were still in effect: (i) attack the title or any
rights of NetSpeak in NetSpeak Marks; (ii) claim any rights, title or interest
in or to the NetSpeak Marks adverse to NetSpeak, without NetSpeak's express
written permission; (iii) register or apply for registration of the NetSpeak
Marks or any name or ▇▇▇▇ that incorporates the NetSpeak Marks anywhere in the
world, in the name of Motorola, without NetSpeak's express written consent; (iv)
designate any name or ▇▇▇▇ that incorporates NetSpeak Marks as a common law
trademark of Motorola anywhere in the world without NetSpeak's express written
consent. Furthermore, Motorola agrees to use NetSpeak Marks only in accordance
with the guidelines for using NetSpeak Marks set forth on Exhibit D.
(c) In the extent that Motorola sublicenses a third party under their
rights in Sections 2(a) or (b), the sublicense agreement between Motorola and
such third party shall include provisions substantially equivalent to those of
Section 2.
(d) Within thirty (30) days after the date of execution of this Agreement,
NetSpeak will provide Motorola with a list of countries in which they have
applied or obtained registration for the NetSpeak Marks. It is acknowledged by
Motorola that NetSpeak has not perfected its trademark rights in the NetSpeak
Marks in all countries in which Motorola currently distributes, sells or offers
products or services.
3. OWNERSHIP AND INTELLECTUAL PROPERTY.
3.1 OWNERSHIP BY NETSPEAK. All rights, title and interest in Intellectual
Property embodied in the NetSpeak Products (including all copies thereof and all
rights therein) shall remain
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vested in NetSpeak.
3.2 OWNERSHIP BY MOTOROLA. All rights, title and interest in Intellectual
Property authored, conceived, developed or reduced to practice by Motorola
(including, but not limited to, Intellectual Property embodied in the RF
Products), in accordance with the licenses granted herein, shall be owned solely
by Motorola, subject to any NetSpeak Intellectual Property in the NetSpeak
Products.
3.3 OWNERSHIP IN DERIVATIVE WORKS; PRESERVATION OF API/NCPM.
3.3.1 The parties acknowledge that Motorola will make or have made for
Motorola Derivative Works to the NetSpeak Software to supply Motorola required
features and functionality to the overall NetSpeak Products and to modify the
NetSpeak Products. NetSpeak shall supply the Source Code of the NetSpeak
Software to Motorola to allow Motorola to make or have made such Derivative
Works. Motorola in turn shall preserve the integrity of the API of the NetSpeak
Software integrated into any RF Product or Derivative Work of the NetSpeak
Software made by or for Motorola.
3.3.2 All Derivative Works to the NetSpeak Software made by or for
Motorola shall be owned exclusively by Motorola, subject to any NetSpeak
Intellectual Property in such Derivative Works; provided that in the case of
Derivative Works which do not constitute RF Products, Motorola and NetSpeak may
otherwise agree in a separate written instrument as to the ownership of specific
Derivative Works made by NetSpeak for Motorola.
3.3.3 Motorola and NetSpeak agree to maintain common core compatibility as
defined by a mutually agreed upon test suite of the NetSpeak Communications
Protocol Module. Netspeak shall not create any modifications, enhancements or
extensions of the Netspeak Communications Protocol Module which would render
inoperable or would otherwise not be "backwardly compatible" with the Derivative
Works which incorporate: (i) the then existing version of the NetSpeak
Communications Protocol Module, or (ii) the immediate prior two Upgrades of the
Netspeak Communications Protocol; provided, however that for purposes of this
Section 3.3.3 NetSpeak agrees not to release more than two Upgrades in any two
year period.
4. DELIVERY AND ACCEPTANCE.
4.1 NETSPEAK PRODUCTS. NetSpeak shall deliver the NetSpeak Products to
Motorola as available, with Motorola receiving most-favored customer delivery on
current and future NetSpeak Products.
4.2 FUTURE PRODUCTS. NetSpeak shall deliver to Motorola, promptly upon the
availability thereof, Masters for any Future Products.
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*Confidential treatment requested for omitted portions. Omitted material is on
file with the Commission.
5. ENFORCEMENT. When requested by Motorola, NetSpeak shall take any and all
commercially reasonable measures to enforce its Intellectual Property rights.
6. QUALITY OF PRODUCTS. NetSpeak shall take commercially reasonable efforts to
manufacture, or have manufactured, the NetSpeak Products delivered to Motorola
to standards that are at least as high as those for similar products of
Motorola.
7. ROYALTY, PRODUCT, TERMS AND MINIMUM PAYMENTS.
7.1 ROYALTY. Subject to the terms and conditions of this Agreement, Motorola
agrees to pay royalties (according to a royalty schedule to be set forth in
Exhibit G) to NetSpeak on fair, reasonable, most-favored customer and
competitive rates and terms for similar quantities and under similar conditions.
7.1.1 With respect to Subscriber Devices, Motorola shall pay NetSpeak the
following royalty amounts (not to exceed * in the aggregate) which
will result in a fully-paid up license with respect to Subscriber Devices for
unlimited use of any license granted hereunder: * for each of the first
* million Subscriber Devices shipped which incorporate a NetSpeak Product,
an RF Product or a Derivative Work pursuant to the license grants of Sections
1.1, 1.2, 1.4 or 1.5; * for each of the next * million Subscriber
Devices shipped which incorporate a NetSpeak Product, an RF Product or a
Derivative Work pursuant to the license grants of Sections 1.1, 1.2, 1.4 or 1.5.
7.1.2 With respect to New NetSpeak Products incorporated into a Subscriber
Device after the fifth anniversary of the execution of this Agreement, Motorola
shall agree to pay an additional reasonable royalty rate for each Subscriber
Device incorporating such New NetSpeak Products on a most-favored customer
basis; provided, however in no event shall Motorola be obligated to pay in
excess of * million (excluding any amount paid under Section 7.1.1) for such
Subscriber Devices incorporating the New NetSpeak Products and once Motorola
pays * million in the aggregate (excluding any amount paid under Section
7.1.1) for such Subscriber Devices incorporating the New NetSpeak Products,
Motorola shall have an unlimited right to further incorporate such New NetSpeak
Products in all Subscriber Devices without any further royalty payment
obligation or accounting to NetSpeak.
7.1.3 With respect to NetSpeak Products, RF Products and Derivative
Products which are not incorporated into Subscriber Devices, Motorola and
NetSpeak will meet within thirty (30) days of the date of execution of this
Agreement to develop a business model for defining the Motorola royalty base for
each NetSpeak Product. The defined royalty base shall quantify the boundary of
the Motorola RF Products, Derivative Works and NetSpeak Products upon which a
royalty calculation will be made. The business model shall take into
consideration the existing royalty base for each NetSpeak Product outside of the
Exclusive Field to comparably define a royalty base for the Motorola RF Products
and Derivative Works. It is acknowledged and agreed by NetSpeak that the
Motorola royalty schedule shall be such that Motorola achieves a most favored
customer royalty rate applied to the defined royalty base. The parties will
negotiate declining
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royalty rates based on average selling prices and volume levels, which take into
consideration Motorola's and NetSpeak's current business models.
7.2 PRODUCT. Subject to the terms and conditions of this Agreement, NetSpeak
will offer, and Motorola agrees to pay, pricing to NetSpeak for NetSpeak
Products not paid for under Section 7.1, on fair, reasonable, most-favored
customer and competitive terms and subject to Motorola's standard product
purchase terms set forth on Exhibit H, but in all cases no more than at most
favored pricing for similar quantities and under similar conditions.
7.3 MINIMUM PAYMENTS. Subject to the terms and conditions of this Agreement,
including without limitation Section 10, Motorola agrees to pay NetSpeak the
following minimum commitments (each, a "Minimum Commitment"): $2.5M for NetSpeak
Products sold between the date of execution hereof and Product Acceptance; $2.5M
for NetSpeak Products during the first year following Product Acceptance; $10M
for NetSpeak Products during the second year following Product Acceptance; and
$15M for NetSpeak Products during the third year following Product Acceptance;
provided that to the extent Motorola's Minimum Commitment for any given year
exceeds the NetSpeak Revenue Minimum, such Minimum Commitment shall be reduced
to the amount of such NetSpeak Revenue Minimum.
The "NetSpeak Revenue Minimum" means an amount equal to 50% of NetSpeak's
revenues for any given year (as reported in a manner consistent with NetSpeak's
reported financial statements). The NetSpeak Revenue Minimum will be determined
as follows: NetSpeak shall provide to Motorola revenue results for the period
of 11 months from Product Acceptance or a Product Acceptance anniversary, as the
case may be, and an amount representing revenues for the 12 month period of such
year projected on an annualized basis (the "Annualized Amount"). The Annualized
Amount shall be used for purposes of determining the NetSpeak Revenue Minimum
and Motorola shall pay either the Minimum Commitment amount set forth above or,
if less, the NetSpeak Revenue Minimum within 30 days of the date NetSpeak
provides the foregoing information to Motorola. If, after payment of such
amount, it is determined that actual revenues for a given year varied from the
Annualized Amount, an appropriate adjustment will be made to future payments
hereunder (including any Minimum Commitment).
For purposes of illustration only, assume Product Acceptance occurred on January
1, 1999 and on December 1, 2000 NetSpeak provides Motorola with its revenue
results for the first 11 months of the year (being the second year following
Product Acceptance) showing annualized revenues of $18M. Since 50% of $18M is
$9M, Motorola's minimum obligation for 2000 will be reduced from $10M to $9M.
Such $9M will be payable by December 31, 2000. If the annualized results (based
on 11 months) were not in fact the actual results (because of a variation in
expected revenues for December, 2000), there would be an adjustment in 2001
through a credit toward such year's royalty payments (including any minimum).
7.4 INTERNAL USE. Notwithstanding anything to the contrary set forth herein,
no royalties shall be due and payable to NetSpeak by Motorola for any NetSpeak
Software, RF Products, Netspeak Communication Protocol Modules or Derivative
Works used internally within Motorola.
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solely for development, testing and marketing of such products, but specifically
excluding deployment into Motorola networks.
7.5 ROYALTY PAYMENT TERMS. Motorola shall pay royalties on NetSpeak Products,
RF Products and any Derivative Works thereof, 45 days following the end of the
calendar quarter in which Motorola distributes the same. Motorola shall keep
records relating to such royalties in accordance with generally accepted
accounting principles. Once per year, NetSpeak shall have the right, at its
expense, to have its independent public accountants audit such records upon
reasonable notice to Motorola in accordance with Section 7.7.
7.6 STATEMENT OF ROYALTIES. Beginning with the first calendar quarter in which
the NetSpeak Software is distributed, and in conjunction with the payment of the
royalties following the end of each calendar quarter, Motorola agrees to provide
to NetSpeak a statement of royalties due to NetSpeak under this Agreement for
the prior quarter in a timely fashion, but in no event later than such time that
Motorola provides such reports to its other licensors for which royalty reports
are required.
7.7 RECORDS/AUDITS. Each party agrees to keep and preserve for at least two
(2) years after any transactions relating to this Agreement, accurate records of
all such transactions relating to this Agreement. In particular, each party
shall ensure that its records adequately identify the product so that they can
be distinguished from other goods not licensed hereunder. NetSpeak's independent
public accountants shall have the right, at NetSpeak's expense, at any time
during the other party's normal business hours and upon fifteen (15) business
days prior to written notice to that party, to examine all such records,
including all ship records, invoices and other records that relate to the
shipment and sale of product. If such an audit detects a shortfall in royalties
paid, Motorola shall pay the unpaid royalties together with interest at a rate
equal to the rate announced by Chase Manhattan Bank as its "prime rate" or
"corporate base rate" per annum from the date due on any unpaid amount.
7.8 PRODUCT PRICING ON ISG-MANUFACTURED PRODUCT. Subject to the terms and
conditions of this Agreement, Motorola will offer to NetSpeak and NetSpeak will
pay prices on fair, reasonable, most-favored customer and competitive terms, for
NetSpeak Products and/or Derivative Works (other than RF Products) manufactured
by Motorola or for Motorola which are purchased by NetSpeak, but in all cases no
more than most favored pricing for similar quantities under similar conditions.
8. SUPPORT.
8.1 CUSTOMER SUPPORT.
8.1.1 As further described below, Motorola or its agents shall provide
customer support for NetSpeak Products sold through Motorola and RF Products
distributed into, sold into or otherwise used in the Exclusive Field of the
license grants of Sections 1.1 and 1.2 (the "Supported
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Products"). All Updates and support materials (including marketing materials)
shall be provided to Motorola by NetSpeak and, to the extent possible, in
downloadable form so that they may be distributed electronically.
8.1.2 During the term of the agreement, Motorola and its distributors or
maintenance co-providers will provide Level 1 (support necessary to process
initial call from the end user) and Level 2 support (support required for
problem determination and solution) for the Supported Products. In addition to
any other support provided by NetSpeak in connection with its provision of
NetSpeak products to Motorola (such support to be at least equivalent to support
provided to any other customer of NetSpeak for similar products), NetSpeak will
provide Level 3 support (includes, patches, fixes and work arounds) for the
Supported Products. Motorola will use all reasonable efforts to verify the
following technical issues before calling NetSpeak: (i) create a test case and
define the technical problem; (ii) attempt to reproduce problem; and, (iii)
document and e-mail to NetSpeak hot line support.
8.1.3 Motorola may request technical assistance by calling or faxing to
NetSpeak technical support at any time and Netspeak will provide support as
provided in Section 8.3.
8.1.4 Normal calls will be responded to within four hours during normal
business hours. Call identified as "urgent" will be responded to within one
hour. If Motorola determines that such response times are not being met,
NetSpeak will work in good faith with Motorola to reduce the response time.
"Response" shall mean a return call by a technical support engineer whose
qualifications and knowledge are commensurate with Motorola's request for
support and who is designated by NetSpeak's technical support manager. NetSpeak
will provide daily feedback on progress for unresolved problems lasting more
than twenty four hours. In the event the problem remains unsolved for more than
twenty-four hours, NetSpeak shall involve its engineering management and
Motorola's designee shall be contacted and briefed on the problem by NetSpeak
engineering management. In such case, NetSpeak will maintain direct contact with
customers to work escalated calls and provide Motorola an update at daily/weekly
intervals (as reasonably requested by Motorola) depending upon seriousness of
issue. In the event that normal technical support procedures for problem
resolution do not solve a customer problem, upon request by Motorola , NetSpeak
shall use its best efforts to provide engineering resources at a designated site
to identify and resolve problems corresponding to NetSpeak's support
obligations.
8.1.5 NetSpeak's Technical Support Guidelines are as set forth on Exhibit
B.
8.1.6 It is understood that any customer information provided to, or
customer contact made by, NetSpeak in the process of assisting Motorola and its
customers will be only used for support purposes. This information and contact
will not be used to generate direct or indirect NetSpeak sales, except as
approved by Motorola.
8.2 CUSTOMER WARRANTY SUPPORT. Motorola shall be responsible for all warranty
obligations relating to any defects in the manufacture of the NetSpeak Hardware,
provided that such defective NetSpeak Hardware were manufactured by or for
Motorola. As applicable, NetSpeak shall
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provide appropriate warranties and support with respect to NetSpeak-provided
products (under the most favored relationship between Motorola and NetSpeak).
If NetSpeak Products qualify for warranty service under the provisions of the
applicable agreement between Motorola and its customer due to a defect in
Motorola's manufacture of such product, Motorola may, at its sole discretion,
provide a replacement NetSpeak Product. Motorola shall not be liable for royalty
payments for such replacement products.
8.3 NETSPEAK SUPPORT. NetSpeak shall provide Motorola on a timely basis with:
(i) all available solutions and corrections for reported problems which are
replicated and diagnosed by Netspeak or Motorola as a defect in the NetSpeak
Products; (ii) such changes and corrections as are necessary to keep the
NetSpeak Products substantially in conformance with applicable Documentation and
specifications; and (iii) technical training and copies of training or course
materials, in accordance with a mutually agreed upon schedule for providing
same. In addition, NetSpeak shall provide to Motorola technical support of at
least telephone support for problem resolution seven (7) days per week, 365 days
per year, including published holidays. Upon such notice to NetSpeak of a
problem with the NetSpeak Products, NetSpeak shall use its best efforts to
correct or circumvent the problem. Any corrections to the NetSpeak Products will
be made to the most current generally available release; PROVIDED, HOWEVER, that
NetSpeak will support the two (2) previously released versions of such NetSpeak
Products after the introduction of a new generally available release.
8.4 SUPPORT FOR DERIVATIVE WORKS. NetSpeak agrees to provide cooperation and
support to Motorola in the development of Derivative Works.
9. PRODUCT NOTICES. Motorola shall reproduce, and shall not remove, any
copyright, trademark or other proprietary rights notices included in the
NetSpeak Products. Motorola shall not make any representations or warranties
concerning the NetSpeak Products, except as set forth in End User Documentation
and other materials provided by NetSpeak or as otherwise approved in writing by
NetSpeak.
10. TERM AND TERMINATION.
10.1 TERM. This Agreement shall commence as of the Effective Date and continue
pursuant to the Term as defined in Exhibit A attached hereto.
10.2 TERMINATION. This Agreement may be terminated by a party upon the
occurrence of one or more of the following:
(a) Upon the material failure of the other party to perform any of its
obligations under this Agreement, which failure remains uncured for a period of
sixty (60) days after receipt by such party of written notice thereof from the
non-defaulting party (for purposes hereof, to the extent any such breach has not
been an intentional breach by a party, the discontinuance of the breaching
activity and cooperation to remedy any damage suffered by the non-breaching
party shall be presumed to be a "cure" or "curing" of the breach);
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* Confidential treatment requested for omitted portions. Omitted material is on
file with the Commission.
(b) In the event the other party makes a general assignment for the benefit
of creditors, or transfers all or substantially all of its assets to a receiver
or a trustee in bankruptcy;
(c) In the event a proceeding is commenced against the other party for
relief under bankruptcy or similar laws and such proceeding is not dismissed
within thirty (30) days; or
(d) In the event the other party is adjudged insolvent or bankrupt.
10.3 EFFECT OF TERMINATION. In the event of termination of this Agreement, the
provisions of Section 1, 2, 3.2, 3.3, 5, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16,
17.2 and 17.7 shall survive, subject to the provisions of Sections 10.3.1 and
10.3.2 (which such provisions shall not be mutually exclusive).
10.3.1 NETSPEAK TERMINATION DUE TO BREACHES BY MOTOROLA.
10.3.1.1 FAILURE TO PAY ROYALTIES. In the event of termination of
this Agreement by NetSpeak pursuant to Section 10.2(a) due to a breach by
Motorola of Section 1 or 7 (failure to pay royalties) through a failure to
substantially perform material obligations thereunder: (i) the disputed amount
of such royalties shall be placed into the custody of a mutually acceptable
escrow agent pending resolution of the disputed royalty amount; (ii) the amount
of royalties Motorola must pay to NetSpeak (which royalty rates are determined
based on product volumes) shall increase to the next highest rate (if any) until
such time as Motorola's sales of RF Products, NetSpeak Products or Derivative
Works reach the next highest volume break where Motorola would otherwise be
entitled to a lower rate (if any) (for purposes of clarity, if applicable,
Section 7.3 shall continue to apply); and (iii) if such breach is intentional,
Motorola shall pay NetSpeak * million as liquidated damages for such breach
(without duplication of any amount paid pursuant to Section 10.3.1.2); provided
that if Motorola cures such breach within twelve months of the date of
termination, NetSpeak shall refund to Motorola a pro-rated amount of the *
million payment (based on the number of months as to which such breach remained
uncured) and the termination shall be deemed rescinded (and the parties shall be
returned to the status quo prior to such termination).
For purposes of illustration only, if at the time NetSpeak terminates
this Agreement pursuant to this Section 10.3.1.1 Motorola is paying a royalty
rate of 3% based on volume break of 50 Million units, and according to the
royalty schedule of Exhibit G the next higher royalty rate is 5% based on a
volume break of 30 Million units, Motorola's royalty rate would increase to 5%
for the next 30 million units shipped by Motorola. Thereafter, Motorola's
royalty rate would become 3% for the next 50 million units shipped.
10.3.1.2 BREACH OF CONFIDENTIALITY/DISTRIBUTION OF SOURCE CODE/
COMPATIBILITY COVENANT. In the event of termination of this Agreement by
NetSpeak pursuant to Section 10.2(a) due to a breach by Motorola of Section 16
relating to the confidentiality of Source Code or Section 3.3.3 (core
compatibility) through a failure to substantially perform material obligations
thereunder: (i) Motorola shall cooperate with NetSpeak and use its best
11
*Confidential treatment requested for omitted portions. Omitted material is on
file with the Commission.
efforts to retrieve such Source Code and prevent further dissemination of such
Source Code; (ii) the amount of royalties Motorola must pay to NetSpeak (which
royalty rates are determined based on product volumes) shall increase to the
next highest rate (if any) until such time as Motorola's sales of RF Products,
NetSpeak Products or Derivative Works reach the next highest volume break where
Motorola would otherwise be entitled to a lower rate (if any) (for purposes of
clarity, if applicable, Section 7.3 shall continue to apply); and (iii) if such
breach is intentional, Motorola shall pay NetSpeak * million as liquidated
damages for such breach (without duplication of any amount paid pursuant to
Section 10.3.1.2); provided that if Motorola cures such breach within twelve
months of the date of termination, NetSpeak shall refund to Motorola a pro-rated
amount of the * million payment (based on the number of months as to which
such breach remained uncured) and the termination shall be deemed rescinded (and
the parties shall be returned to the status quo prior to such termination).
10.3.2 MOTOROLA TERMINATION DUE TO BREACHES BY NETSPEAK.
10.3.2.1 BREACH OF SECTION 1.7. In the event of termination of this
Agreement by Motorola pursuant to Section 10.2(a) due to a breach by NetSpeak of
Section 1.7 (Exclusivity Covenant) through a failure to substantially perform
material obligations thereunder: (i) the provisions of Section 7.3 (Minimum
Commitments) shall terminate; (ii) to the extent such breach is not intentional,
the amount of royalties Motorola must pay to NetSpeak (which royalty rates are
determined based on volume commitments) shall decrease to the next lowest rate
set forth on Exhibit G for twelve months and, thereafter, shall be reduced to
zero; and (iii) if such breach is intentional, the amount of royalties Motorola
must pay to NetSpeak shall decrease to zero; provided that in the case of either
clause (ii) or (iii) above, if NetSpeak cures such breaches within twelve months
of termination, such termination shall be deemed rescinded (and the parties
shall be returned to the status quo prior to such termination, except, however,
Section 7.3 shall no longer be applicable).
For purposes of illustration only, if at the time Motorola terminates
this Agreement pursuant to this Section 10.3.2.1 Motorola is paying a royalty
rate of 5% based on a volume break of 30 Million units, and according to the
royalty schedule of Exhibit G the lowest royalty rate is 3%, Motorola's royalty
rate would decrease to the 3% for one year.
10.3.2.2 BREACH OF COMPATIBILITY COVENANT/QUALITY/SUPPORT. In the
event of termination of this Agreement by Motorola pursuant to Section 10.2(a)
due to a breach by NetSpeak pursuant to Sections 3.3.3 relating to the
compatibility of the NetSpeak Communications Protocol Module, Sections 6 or 8
through a failure to substantially perform material obligations thereunder: (i)
the provisions of Section 7.3 (Minimum Commitments) shall terminate; and (ii) to
the extent such breach is not intentional, the amount of royalties Motorola must
pay to NetSpeak (which royalty rates are determined based on volume commitments)
shall decrease to the lowest rate set forth on Exhibit G; and (iii) if such
breach is intentional, the amount of royalties Motorola must pay to NetSpeak
shall decrease to zero; provided that in the case of either clause (ii) or (iii)
above, if NetSpeak cures such breaches within twelve months of termination, such
termination shall be deemed rescinded (and the parties shall be returned
12
to the status quo prior to such termination, except, however, Section 7.3 shall
no longer be applicable).
11. DISPUTE RESOLUTION
11.1 DISPUTE RESOLUTION. In the event of a claim, dispute or controversy
("Dispute") with respect to this Agreement, including it's interpretation,
construction, performance or breach pursuant to Section 10.2(a), the Parties
shall use their best efforts to resolve the same amicably, in accordance with
the following:
(a) During the sixty (60) day period immediately following receipt of
written notice pursuant to Section 10.2(a), the CEO of NetSpeak and the
President of the Cellular Networks and Space Sector for Motorola will attempt to
settle any Dispute arising out of this Agreement through good faith
consultations and negotiations.
(b) If those attempts fail, either Motorola or NetSpeak may demand non-
binding mediation of such Dispute by written notice to the other, in accordance
with Section 11.2 hereof, prior to commencement of the non-defaulting party of
any formal litigation.
11.2 MEDIATION. Any Party shall have the right at any time to request that a
Dispute be resolved by voluntary non-binding mediations for at least thirty (30)
days, by an independent impartial third party mediator acceptable to the Parties
to such Dispute. Accordingly, if a Party submits written notice requesting
mediation to settle a Dispute ("Mediation Notice"), Motorola and NetSpeak may
select an impartial mediator within 15 days of receipt of such Mediation Notice.
Neither Motorola or NetSpeak may unreasonably withhold consent to the selection
of a mediator, and Motorola and NetSpeak shall share the cost of the mediation
equally. Mediation will take place in Boston, Massachusetts. Prior to
mediation, Motorola and NetSpeak and the neutral advisor shall use their best
reasonable efforts to agree on a set of ground rules for mediation. At the
conclusion of mediation, Motorola and NetSpeak or their designated spokesperson
shall meet and attempt to resolve the matter.
(a) If any Dispute cannot be resolved by Motorola and NetSpeak through
negotiation, mediation or another mutually agreed upon form of dispute
resolution within three (3) months of the Mediation Notice, the Dispute may be
submitted to a court of law.
(b) The use of any dispute resolution procedures will not be construed
under the doctrine of laches, waives or estoppel to adversely affect the rights
of either Motorola or NetSpeak. Nothing in this Section 11 will prevent either
Motorola or NetSpeak from commencing formal litigation proceedings if (i) good
faith efforts to resolve the Dispute under these procedures have been
unsuccessful, or (ii) any delay resulting from efforts to mediate such dispute
could result in serious and irreparable injury to Motorola or NetSpeak, as the
case may be.
13
12. ESCROW. Pursuant to a written agreement in which Motorola is a disclosed
third party beneficiary ("Escrow Agreement"), NetSpeak shall deposit with an
independent escrow agent the Source Code for all NetSpeak Software and the
Technical Know How for all NetSpeak Products, hereafter the "Escrow Materials".
NetSpeak shall update the Escrow Materials on a quarterly basis, or sooner if
such updates are available. The Escrow Agreement shall provide that upon the
occurrence of an event set forth in Section 10.2, such Escrow Materials shall be
released to Motorola.
13. WARRANTIES AND LIMITATIONS OF WARRANTIES.
13.1 WARRANTIES. NetSpeak warrants that:
(a) upon delivery of each version of the NetSpeak Product, such NetSpeak
Products will substantially conform to the published specifications for such
NetSpeak Product;
(b) the NetSpeak Products shall be without material errors or other defects
and shall conform to the specifications set forth in NetSpeak's documentation
for the NetSpeak Products and the physical media of the Golden Masters on which
the NetSpeak Products are delivered shall be free from material defects in
workmanship and materials;
(c) it has and throughout the term of this Agreement will have sufficient
right, title and interest in the NetSpeak Products, including any third party
software incorporated therein, to enter into this Agreement and to grant the
licenses under this Agreement;
(d) except as disclosed on Exhibit C, the NetSpeak Products have to date
not infringed, breached or constituted a misappropriation of the intellectual
property right, or other proprietary right, of any third party; and NetSpeak has
not received a claim or demand related to the infringement, breach or
misappropriation of any such rights;
(e) the NetSpeak Products and Updates furnished by NetSpeak to Motorola
hereunder will function correctly when dealing with dates/times, and date/time
related data and will accurately process date/time data, including calculating,
comparing, and sequencing from, into, and between the 20th and 21st centuries,
and the years 1999 and 2000.
13.2 ADDITIONAL WARRANTIES. Additional warranties and product support
obligations are set forth in NetSpeak's standard product license agreements set
forth in Exhibits E and F hereto.
13.3 LIMITATIONS OF WARRANTIES. EXCEPT FOR THE EXPRESS WARRANTIES STATED IN
THIS AGREEMENT, NEITHER PARTY MAKES ANY ADDITIONAL WARRANTIES, EXPRESS, IMPLIED
OR STATUTORY, AS TO ANY MATTER WHATSOEVER; IN PARTICULAR, THE PARTIES EXPRESSLY
DISCLAIM ANY AND ALL WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE OR DURABILITY.
14
14. INDEMNIFICATION.
14.1 BY NETSPEAK. Subject to the conditions set forth in Section 14.2 hereto,
NetSpeak will defend at its own expense any action brought against Motorola by a
third party, to the extent that the claim is based on an assertion that a
NetSpeak Product infringes a patent or copyright, or violates a trade secret.
NetSpeak will pay any costs and damages finally awarded against Motorola in any
such action which are attributable to any such claims, including reasonable
attorneys' fees and expenses. NetSpeak's obligations under this provision are
subject to the conditions that: (a) Motorola promptly notifies NetSpeak in
writing of any such claim, and (b) NetSpeak will have sole control of such
defense and all negotiations for any settlement or compromise, although Motorola
may participate in the same at its own expense.
14.2 NetSpeak shall have no liability to Motorola under Section 14.1 with
respect to any claim of infringement to the extent that it is based solely upon:
(a) the combination of any NetSpeak Product with any machine, device,
firmware or software not furnished by NetSpeak;
(b) any product not sold or licensed by NetSpeak; or
(c) any modification, alteration or Derivative Work of any NetSpeak Product
developed by a party other than NetSpeak, including Motorola's modification of a
NetSpeak Product unless done by Motorola at NetSpeak's direction.
14.3 If NetSpeak receives notice of an alleged infringement or violation or, in
the opinion of NetSpeak, such a claim is possible, Netspeak shall notify
Motorola and Motorola will permit NetSpeak to attempt to cure such infringement
or violation within a reasonable time by:
(a) procuring the right for Motorola to use the technology;
(b) modifying the materials so that they are no longer infringing or in
violation of such trade secret while retaining at least equivalent
functionality; or
(c) replacing the affected materials with materials of at least equivalent
functionality.
14.4 CONDITIONS OF INDEMNIFICATION. NetSpeak shall not be obligated to
indemnify, hold harmless and defend unless (and only to the extent) that
Motorola: (i) provides prompt notice of the commencement of the claim, suit or
proceeding for which indemnification is sought; (ii) provides cooperation to
NetSpeak; and (iii) allows NetSpeak to control the defense and settlement,
provided that neither party may settle a claim, suit or proceeding without
approval of the other party, which approval shall not be unreasonably withheld.
15
14.5 INFRINGEMENT OPTIONS. If there is a material, bona fide claim of
infringement of any patent, copyright, trade secret, publicity, privacy, or
other rights of any third party, or of defamation or obscenity, the indemnifying
party shall have the right, at its option, to the extent practicable, to
mitigate its liability by replacing the infringing products with noninfringing
products that offer substantially the same functionality and benefits as the
infringing products, and paying for any manufacturing and handling expenses
associated with back inventory that is infringing and cannot be sold or
distributed.
14.6 APPORTIONMENT OF LIABILITY FOR NETSPEAK PRODUCTS. In the event that a
NetSpeak Product is held to infringe a patent, copyright, trade secret of a
third party the following shall apply:
14.6.1 NetSpeak shall pay any damages finally awarded (the "Actual
Damages") to such third party under its obligations in Section 14.1 up to the
liability cap of Section 15; and
14.6.2 To the extent that the amount of the Actual Damages exceeds the
liability cap of Section 15 ("Incremental Liability"), the parties shall
perform an accounting of their respective revenues realized from the licensing,
sale or distribution of the infringing NetSpeak Product. Each party shall then
pay the proportionate share of the Incremental Liability based upon their
respective revenues.
14.7 BY MOTOROLA. Subject to the conditions set forth in Section 14.8 and 14.10
hereto, Motorola will defend at its own expense any action brought against
NetSpeak by a third party, to the extent that the claim is based solely on an
assertion that a Motorola RF Product or Derivative Work of a NetSpeak Product
infringes a patent or copyright, or violates a trade secret. Motorola will pay
any costs and damages finally awarded against NetSpeak in any such action which
are attributable to any such claims, including reasonable attorneys' fees and
expenses. Motorola's obligations under this provision are subject to the
conditions that: (a) NetSpeak promptly notifies Motorola in writing of any such
claim, and (b) Motorola will have sole control of such defense and all
negotiations for any settlement or compromise, although Netspeak may participate
in the same at its own expense.
14.8 Motorola shall have no liability to NetSpeak under Section 14.7 with
respect to any claim of infringement to the extent that it is based solely upon:
(a) the combination of any Motorola RF Product or Derivative Product with
any machine, device, firmware or software not furnished by Motorola, or
(b) any product not sold or licensed by Motorola, or
(c) any modification of any Motorola RF Product or Derivative Product
developed by a party other than Motorola, including NetSpeak's modification of a
Motorola RF Product or Derivative Product unless done by Motorola at Motorola's
direction.
16
14.9 If Motorola receives notice of an alleged infringement or violation or, in
the opinion of Motorola, such a claim is possible, Motorola shall notify
NetSpeak and NetSpeak will permit Motorola to attempt to cure such infringement
or violation within a reasonable time by:
(a) procuring the right for NetSpeak to use the technology,
(b) modifying the materials so that they are no longer infringing or in
violation of such trade secret while retaining at least equivalent
functionality, or
(c) replacing the affected materials with materials of at least equivalent
functionality.
14.10 CONDITIONS OF MOTOROLA INDEMNIFICATION. Motorola shall not be obligated
to indemnify and defend unless (and only to the extent) that NetSpeak: (i)
provides prompt notice of the commencement of the claim, suit or proceeding for
which indemnification is sought; (ii) provides cooperation to Motorola; and
(iii) allows Motorola to control the defense and settlement, provided that
neither party may settle a claim, suit or proceeding without approval of the
other party, which approval shall not be unreasonably withheld.
14.11 MOTOROLA INFRINGEMENT OPTIONS. If there is a material, bona fide claim of
infringement of any patent, copyright, trade secret, publicity, privacy, or
other rights of any third party, or of defamation or obscenity, the indemnifying
party shall have the right, at its option, to the extent practicable, to
mitigate its liability by replacing the infringing products with noninfringing
products that offer substantially the same functionality and benefits as the
infringing products, and paying for any manufacturing and handling expenses
associated with back inventory that is infringing and cannot be sold or
distributed.
14.12 THE FOREGOING STATES THE PARTIES' ENTIRE OBLIGATIONS WITH RESPECT TO
INTELLECTUAL PROPERTY INDEMNIFICATION.
15. OTHER DAMAGES. NEITHER PARTY WILL BE LIABLE TO THE OTHER PARTY UNDER ANY
PROVISION HEREOF INCLUDING SECTION 14 FOR ANY CONSEQUENTIAL, INDIRECT, PUNITIVE,
SPECIAL, EXEMPLARY OR INCIDENTAL DAMAGES, WHETHER FORESEEABLE OR UNFORESEEABLE,
BASED ON CLAIMS OF THE OTHER PARTY OR ITS END-USERS (INCLUDING, BUT NOT LIMITED
TO, CLAIMS FOR LOSS OF DATA, GOODWILL, PROFITS, INVESTMENTS, USE OF MONEY OR USE
OF PRODUCTS, INTERRUPTION IN USE OR AVAILABILITY OF DATA, STOPPAGE OF OTHER WORK
OR IMPAIRMENT OF OTHER ASSETS, OR LABOR CLAIMS) ARISING OUT OF BREACH OF EXPRESS
OR IMPLIED WARRANTY, BREACH OF CONTRACT, MISREPRESENTATION, NEGLIGENCE, STRICT
LIABILITY IN TORT OR OTHERWISE. EXCEPT WITH RESPECT TO WILFUL MISCONDUCT OR
GROSS NEGLIGENCE OF A PARTY AND SUBJECT TO THE PROVISIONS OF SECTION 14.6, THE
LIABILITY OF NETSPEAK AND MOTOROLA UNDER THIS AGREEMENT WILL BE LIMITED TO THE
CUMULATIVE AMOUNTS ACTUALLY PAID TO NETSPEAK HEREUNDER.
17
16. PROPRIETARY INFORMATION.
16.1 DEFINITION. As used in this Agreement, a party's Proprietary Information
means all information that has been created, discovered, developed or otherwise
became known to that party, or any information in which property rights have
been assigned or sold to the party, that has commercial value in the business in
which the party is engaged and is treated and marked by the disclosing Party as
confidential. Proprietary Information includes, without limitation, processes,
formulas, ideas, concepts, discoveries, developments, designs, inventions,
techniques, marketing plans, strategies, forecasts, new product projections, all
pricing information and costs, sales reports, customer and supplier lists, all
modifications, additions, improvements, and adaptations of any of the foregoing,
and all present and future applications of any of the foregoing. A party's
Proprietary Information does not include any information that:
(a) on the date of this Agreement, is generally known to the public;
(b) become generally known to the public after the date of this Agreement
other than as a result of an act or omission of either party or either party's
directors, officers, employees, or agents;
(c) was rightfully known by the other party prior to the date of this
Agreement;
(d) is or was disclosed by the party to third parties generally without
restriction on use or disclosure; or
(e) was or is independently developed by the other party without violation
of the confidentiality provisions of this Agreement or trade secret rights of
the party. Each party agrees to use best efforts to ▇▇▇▇ as confidential or
proprietary any information that it delivers to the other party (in any form)
and which it considers to be Proprietary Information and to advise the other
party of the confidential nature of any Proprietary Information that is provided
verbally. Upon request by either party, the other party shall advise whether or
not it considers any particular information or materials to be Proprietary
Information.
16.2 OBLIGATION TO MAINTAIN CONFIDENTIALITY. Each party agrees to maintain the
confidentiality of the other party's Proprietary Information using the same
degree of care and security as the party uses to maintain the confidentiality of
its own Proprietary Information. Each party shall disclose the other party's
Proprietary Information only to persons who have a reasonable need to know and
who are:
(a) employees, agents, customers for the NetSpeak Products (including, but
not limited to OEMS); or
(b) other potential customers for the NetSpeak Products (including, but
not limited to OEMS) of the disclosing party who have a reasonable need to know
such Proprietary Information to further the purposes of this Agreement; and
18
(c) legally bound by law or by a written agreement protecting the
Proprietary Information to the same extent as protected in this Agreement. Each
party acknowledges that the disclosure of the other party's Proprietary
Information may cause irreparable injury to the other party and, therefore,
either party may, in addition to any other available remedies, seek injunctive
relief against the breach or threatened breach of the terms of this Section
16.2.
16.3 CONFIDENTIALITY PERIOD. Except with respect to Source Code for NetSpeak
Products and RF Products, each party's obligations under Section 16.2 with
respect to the other party's Proprietary Information shall continue for a period
of five (5) years following the date of receipt by the receiving party of the
Proprietary Information. In the case of Source Code for NetSpeak Products and
RF Products, each party's obligations under Section 16.2 shall survive for a
period of five (5) years following the termination of this Agreement. Upon
termination of this Agreement for any reason, each party agrees that it will
upon written request of the other party, use best efforts to return to the other
party or to destroy (and certify such destruction in writing to the other party)
all Proprietary Information of the other party.
17. MISCELLANEOUS.
17.1 PRESS RELEASES. The parties will cooperate to create appropriate public
announcements of the relationship set forth in this Agreement. Neither party
hereto shall, in any manner, disclose, advertise, or publish the terms of, or
any information concerning, this Agreement without the prior written consent of
the other party.
17.2 GOVERNING LAW; EQUITABLE RELIEF. This Agreement shall be governed by and
construed in accordance with the laws of State of Illinois as they apply to
contracts entered into and wholly to be performed within the State of Illinois,
without regard to its conflict of laws provisions. Each party acknowledges that
a material breach of this Agreement by one party hereto may cause irreparable
injury to the other party and, therefore, either party may, in addition to any
other available remedies, seek injunctive relief against the breach or
threatened breach of the terms of this Agreement.
17.3 WAIVER OF JURY TRIAL. Each of NetSpeak and Motorola do hereby knowingly,
voluntarily, intentionally and irrevocably waive any right any party may have to
a jury trial in every jurisdiction in any action, proceeding or counterclaim
brought by either of the parties hereto against the other party hereto or their
respective Affiliates, successors or assigns in respect of any matter arising
out of or in connection with this Agreement or any other document executed and
delivered by any party in connection therewith (including, without limitation,
any action to rescind or cancel this Agreement and any claims or defenses
asserting that this Agreement was fraudulently induced or otherwise void or
voidable.)
17.4 RELATIONSHIP OF PARTIES. The parties to this Agreement are independent
contractors. Neither party shall have the right to bind, represent or act for
any other party. The parties shall have no agency, partnership, joint venture or
fiduciary duties to each other. Nor shall either party have
19
any obligation or duty to the other party except as expressly and specifically
set forth herein, nor shall any such obligation or duty be implied by or
inferred from this Agreement or the conduct of the parties hereunder. Without
limitation of the generality of the foregoing, nothing in this Agreement will
prevent Motorola from marketing and distributing any other work, whether similar
or dissimilar to the NetSpeak Product, and nothing herein will require Motorola
to devote the same or similar efforts to distributing the NetSpeak Products.
17.5 OTHER AGREEMENTS. Neither party shall agree to any contractual provision
or term in any agreement with any third party which contains a provision or term
that causes such party to be in breach of or violates this Agreement except with
respect to the matters set forth on Exhibit C.
17.6 MERGER. This Agreement constitutes the entire agreement between the
parties relating to the subject matter hereof and supersedes all prior or
simultaneous representations, discussions, negotiations and agreements, whether
written or oral. This Agreement may be amended only by a writing signed by both
parties.
17.7 ASSIGNMENT. This Agreement may not be assigned or delegated by either
party without the prior written approval of the other party, except that either
party may assign all its rights and delegate all its obligations as part of a
merger, reorganization or sale of all or substantially all its assets. Any
attempted assignment in contravention of the foregoing shall be deemed void ab
initio. Subject to the foregoing, this Agreement is binding on the parties and
their successors and assigns.
17.8 WAIVER. The waiver by either party of a breach of any provision contained
herein shall be in writing and shall in no way be construed as a waiver of any
succeeding breach of such provision or a waiver of the provision itself.
17.9 SEVERABILITY. If any provision of this Agreement is unenforceable or
invalid under any applicable law or is so held by applicable court decision,
such unenforceability or invalidity shall not render this Agreement
unenforceable or invalid as a whole, and, in such event, such provision shall be
changed and interpreted so as to best accomplish the objectives of such
provision within the limits of applicable law or applicable court decision.
17.10 FORCE MAJEURE. No party shall be liable for failure to perform, in whole
or in material part, its obligations under this Agreement if such failure is
caused by an event or condition not existing as of the date of this Agreement
and not reasonably within the control of the affected party, including, without
limitation, by fire, flood, typhoon, earthquake, explosion, strike, labor
trouble or other industrial disturbance, unavoidable accident, war (declared or
undeclared), act of terrorism, sabotage, embargo, blockade, act of applicable
governmental authorities, riot, insurrection, or any other cause beyond the
control of such party; provided, however, that such party promptly notifies the
other affected party of the occurrence of the event of force majeure and takes
all reasonable steps necessary to mitigate the effects of such event and to
resume performance of its obligations which were affected by such event.
20
17.11 BANKRUPTCY. The parties hereto agree that the rights granted to Motorola
hereunder, including those granted in Sections 1 and 3, are rights in
"intellectual property" within the scope of ▇▇▇▇▇▇▇ ▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
Bankruptcy Code.
17.12 NOTICES. All notices required hereunder shall be in writing and shall be
sent by U.S. mail (first class) or nationally-recognized courier service (E.G.,
DHL, Federal Express), with all postage or delivery charges prepaid, or may be
sent via facsimile, subject to confirmation via U.S. mail or nationally-
recognized courier service, and shall be addressed to the parties at their
addresses set forth on the signature page of this Agreement or to such other
address(es) as may be furnished by written notice in the manner set forth
herein. Notices shall be deemed to have been served when delivered or if
delivery is not performed as a result of the addressee's fault, when tendered.
17.13 COMPLIANCE WITH U.S. EXPORT LAWS. The parties hereto acknowledge that the
laws and regulations of the United States restrict the export and re-export of
commodities and technical data of United States origin, including the NetSpeak
Products, RF Products and related Documentation. Each of the parties hereto
agrees that it will not export or re-export the NetSpeak Products or related
Documentation in any form without the appropriate United States and foreign
government licenses.
17.14 COUNTERPARTS. 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 each deliver original
execution copies of this Agreement to one another as soon as practicable
following execution thereof.
17.15 PRIORITY. In the event of any conflict between the terms of this
Agreement and any agreements set forth in the form of exhibits hereto, the
parties the terms of this Agreement shall govern.
[SIGNATURE PAGES FOLLOW]
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IN WITNESS WHEREOF this Agreement has been executed and delivered as of the
date first above written.
MOTOROLA, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Senior Vice President
NETSPEAK CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Chairman and Chief Executive Officer
22
EXHIBIT A
DEFINITIONS
"Affiliate" shall mean an entity that controls, is controlled by or is under
common control with a relevant party hereto (with "control" meaning ownership
fifty (50%) of the voting stock of the entity or, in the case of a noncorporate
entity, an equivalent interest).
"Derivative Works" shall mean any and all "derivative works" and "compilations"
within the meaning of such terms as defined in the U.S. Copyright Act (17 U.S.C.
ss.101 et seq.) and any alteration or modification of NetSpeak Products.
"Documentation" shall mean end-user instructions, manuals, diagrams, and other
written material, in printed or electronic form, describing the functions, use
and operation of the NetSpeak Products, prepared by or for NetSpeak, and all
revisions, including localizations and translations, thereto and all
documentation related to training as required.
"Exclusive" means to the exclusion of all other parties including NetSpeak.
"Exclusive Field" means the field of RF Wireless Products or RF Wireline
Products.
"Future Hardware Products" shall mean any and all future hardware (including
Updates and Upgrades) developed by NetSpeak, and any Technical Know How
therefor.
"Future Products" shall mean Future Software Products and Future Hardware
Products as defined in this Agreement which are generally available and whose
distribution is not otherwise contractually restricted.
"Future Software Products" shall mean any and all future computer program
products and embedded software (including Updates and Upgrades) developed by
NetSpeak, and any Technical Know How therefor.
"Golden Master" or "Master" shall mean the version of a NetSpeak Product that
meets all applicable functional and performance specifications for such License
Product, that is in a form suitable for production mastering and commercial
distribution or transmission, and that includes a unique vendor identification
code.
"Intellectual Property" shall mean any trade secrets, patents, copyrights,
trademark, know-how, moral rights and similar rights of any type under the laws
of any governmental authority, domestic or foreign including all applications
and registrations relating to any of the foregoing.
"NetSpeak Communication Protocol Module" shall mean the Source Code of the
software component of the NetSpeak Products which enables NetSpeak Products to
interact with each other, including client to server communications, server to
server communications, and client to client
23
communications.
"NetSpeak Hardware" shall mean the NetSpeak Stargate Product and any other
hardware of NetSpeak and Future Hardware Products (including any Updates and
Upgrades) created by NetSpeak, and any Technical Know How therefor.
"NetSpeak Marks" shall mean NetSpeak's trademarks, whether or not registered.
"NetSpeak Products" shall mean the NetSpeak Software, NetSpeak Hardware and
Future Products as defined in this Agreement.
"NetSpeak Software" shall mean any and all NetSpeak real-time communication
software, Stargate Product software, other NetSpeak computer program products
and Future Software Products (including any Updates and Upgrades) created by
NetSpeak, including Source Code, and any Technical Know How therefor.
"New Netspeak Product" means any Future Products of NetSpeak which is not
offered to any person as an Update or Upgrade to an existing NetSpeak Product or
substantially similar thereto.
"Object Code" shall mean the computer executable binary code derived from
compiled Source Code for execution on a computer hardware system, including any
associated documentation.
"Product Acceptance" shall mean the date of acceptance by Motorola of the
Stargate product conforming to jointly agreed upon product requirements.
"RF" means the electromagnetic spectrum between and including 10 kilohertz to 1
terahertz.
"RF Product(s)" shall mean RF Wireless Products and RF Wireline Products which
constitute a Derivative Work, alteration or modification of the NetSpeak
Products.
"RF Wireless Product(s)" shall mean any software, firmware, hardware, or
combination thereof, for use in RF wireless networks (including, without
limitation, cellular/PCS, trunked two-way, conventional two-way, iden two-way,
paging, satellite and future wireless networks) and all infrastructure equipment
and subscriber/client devices associated with any of the foregoing.
"RF Wireline Product(s)" shall mean any software, firmware, or hardware, or
combination thereof, for use with a RF wireline infrastructure (including,
without limitation, cable data networks) and all subscriber devices associated
therewith (including, without limitation, cable data modems).
"Source Code" shall mean the human-readable version of a computer program,
regardless of the form in which it is stored, from which it is possible to
discern the logic, algorithms, internal structure, operating features and any
other design characteristics of such computer program, together with related
source materials, written instructions, technical documentation and Technical
Know How.
24
"Subscriber Devices" means wireless end user devices manufactured by or for
Motorola, including, but not limited to, messaging devices, cellular phones,
two-way pagers, iDEN handsets, satellite end-user devices and cordless phones
and any future similar products.
"Technical Know How" shall mean all technical information, technical data or
specifications, designs, drawings, engineering information, process or
production information, formulas, information on compositions of matter,
techniques or methods, proprietary tools for use in the development and/or
integration of NetSpeak Products; design models and techniques to prepare masks,
testing methodology, test programs (including non-commercial tools for the
development thereof) and assembly and/or packaging technology associated with
NetSpeak Products.
"Term" shall mean perpetual.
"Updates" shall mean new versions, including maintenance releases, and
localizations and translations thereof, of a NetSpeak Product that contain bug
fixes, error corrections and minor enhancements, but not containing major
enhancements or significant new functionality, as determined in NetSpeak's
reasonable discretion, and any related documentation.
"Upgrades" shall mean new versions of a NetSpeak Product that contain major
enhancements and significant new functionality, including localizations and
translations thereof, as determined in NetSpeak's reasonable discretion, and any
related documentation.
25
CONFIDENTIAL PROPRIETARY EXECUTION COPY
EXHIBITS B-H
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
Exhibit B
NETSPEAK TECHNICAL SUPPORT GUIDELINES
1. PROVISION OF SUPPORT: Motorola and its distributors or maintenance co-
providers will provide Level 1 Support. NETSPEAK will provide Level 2
Support during the Initial Support Year and supply post-sale, Level 3
Support during the term of the Agreement and assist Motorola when a problem
cannot be resolved at Level 1. Support levels are defined as follows:
▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇. ▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇ (▇▇▇▇▇▇▇ verification) handles calls
requiring a relatively low, but broad degree of product expertise.
Level 1 Support activities may include:
Operation of a Technical Solutions Center providing the following
services:
. Receipt and logging of end user problem calls;
. Provision of primary support for post installation
reconfiguration;
. Distribution of updates and major releases to end users;
. Provision of backup support for installation activities,
including configuration problems, installation related
problems, and post installation reconfiguration;
. Problem classification as hardware, software, driver or
configuration issue;
. Troubleshooting using diagnostic utilities;
. Attempted resolution of hardware problems;
. Gather and analyze trace information;
. "FAQ" response;
. Decoding of error messages and attempting to provide corrective
action based on the information provided to Motorola by
NETSPEAK;
. Verification of software release level and providing updates if
necessary.
▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇. ▇▇▇▇▇ ▇ Support has general responsibility for
problem trouble-shooting, and development of avoidances and work-
arounds. Level 2 Support activities may include the following;
. Analyzing traces and processor dump information;
. Identifying code level problems;
. Thorough knowledge of product interdependencies and
relationships;
. Liaison to NETSPEAK's level 3 support;
. Determination if the failure was caused by configuration or
macrocode.
▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇. ▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇ (▇▇▇▇▇▇▇▇▇ resolution) requires
engineering level technical expertise. The Level 3 Support
organization is responsible for providing timely and accurate product
defect descriptions and resolution plans to Motorola. Level 3 Support
activities include the following:
. Engineering Support;
. Analyzing traces & processor dumps;
. Development, testing and release of microcode
corrections.
2. NETSPEAK RESPONSIBILITIES FOR LEVEL 2 and 3 SUPPORT: NETSPEAK will provide
Level 2 Support during the Initial Support Year and supply post-sale, Level
3 Support during the term of the Agreement to Motorola via remote dial-in or
phone or on-site as required. ▇▇▇▇▇ ▇ Support to Motorola by NETSPEAK is to
include the following:
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
a. Provide access to telephone technical assistance for the
reporting and alerting of problems and consultation as necessary
24 hours a day, 365 days a year from a NETSPEAK support center.
b. Use of computerized tracking systems to log and record all
requests from Motorola for technical assistance.
c. On a case by case exception basis, if requested by Motorola,
NETSPEAK will establish direct support obligations for individual
user owned Products, subject to mutually acceptable terms,
including price.
d. Provide remedial software support by providing a patch or
bypass solution to verified problems reported by Motorola.
e. Provide prompt shipment to Motorola of appropriate and
available remedy.
3. CALL HANDLING AND ESCALATION: Call handling and escalation of technical
support issues is to be handled as follows:
a. Call Handling Procedures.
When a Motorola customer purchases NETSPEAK Products or NETSPEAK
software from Motorola or its distributors and requires
assistance during normal business hours, NETSPEAK will adhere to
the procedure below. The same process will be followed during
after hours support with the addition of the after hours section
noted at the end of this document.
Motorola's Technical Support Center will receive the call from
the Motorola customer running Product and software. The problem
description, as outlined by the required call information, will
be entered into the Motorola User data base. The call will then
be handled by Motorola per Motorola's procedures.
Motorola's Technical Support Center personnel will open the call
and perform Level 1 support. If the problem is resolved by
Motorola, the call will be closed. Motorola will update their
call handling database as appropriate.
Once Motorola performs all service activities as outlined for
Level 1 and the problem has not been resolved and it is
determined by Motorola that it requires escalation to NETSPEAK,
Motorola will contact NETSPEAK Support 561 998 8700.
NETSPEAK will perform ▇▇▇▇▇ ▇ and Level 3 service, and if
necessary, will escalate internally to its development team for
the Product or software. Upon completion of the problem, NETSPEAK
will promptly inform Motorola of the findings or solution(s).
b. Call Escalation Procedures.
1. Severity 1 Issues:
Motorola will report problems it classifies as Severity Level 1
problems to NETSPEAK by calling NETSPEAK Technical Support at 561
998 8700. This number will also be used to report Severity 1
problems after hours, 7 days a week.
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2. Severity 2 And Severity 3 Problems:
Motorola may report calls it classifies as Severity Level 2 and
Severity Level 3 problems by telephone, fax or e-mail.
To report ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇ and Severity Level 3 problems by
telephone, call the NETSPEAK Support Center at 561 998 8700.
To report problems by electronic mail, a message formatted using
the Required Call Information should be sent to (TBD)
To report problems by fax, a message formatted using the Required
Call Information should be sent to:
▇▇▇ ▇▇▇ ▇▇▇▇ Attn: Technical Support
c. Response Times:
A NETSPEAK Support Engineer whose qualifications and knowledge
are commensurate with Motorola's request for support and who is
designated by NETSPEAK's technical support manager will place a
return call to Motorola Networks within an average call back
time of 1-2 hours.
If Motorola determines that such response times are not being
met, NETSPEAK will work in good faith with Motorola on a way to
reduce the response time.
d. Unresolved Problems:
NETSPEAK will provide daily feedback on progress for unresolved
problems lasting more than twenty four hours. In the event the
problem remains unsolved for more than three business days,
NETSPEAK shall involve its engineering management and Motorola's
Product Manager and the Vice President of Customer Service (or
designee) shall be contacted and briefed on the problem by
NETSPEAK engineering management. In such case, NETSPEAK will
maintain direct contact with customers to work escalated calls
and provide Motorola an update at daily/weekly intervals (as
reasonably requested by Motorola) depending upon seriousness of
issue. Upon request by Motorola, NETSPEAK shall use its best
efforts to provide engineering resources at a designated site to
identify and resolve a Product problem.
e. Required Information for Escalation:
Prior to escalating a call to NETSPEAK, Motorola will attempt to
obtain the following information while speaking with the
customer:
1. Documented problem statement, including date and time
incident occurred.
2. Installation log files.
3. Operating System type and version/release level.
4. Patch levels.
5. Version/release levels of the products.
6. Configuration files.
7. Network diagram or verbal description.
8. Email addresses
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
9. Motorola contracts, phone numbers email addresses and fax
numbers.
4. NETSPEAK INFORMATION TO BE PROVIDED TO MOTOROLA TO ENABLE SUPPORT:
NETSPEAK will provide Motorola with the following information at least two
weeks prior to first customer ship of Motorola Products containing
NETSPEAK software to enable Motorola to properly support the Products and
software:
FAQ sheet covering common customer questions and problems;
List of the most common configuration mistakes made by users and how
to detect them;
Read only access to the NETSPEAK customer support problem database via
the Web for Motorola specific problems.
5. DEFINITION OF SEVERITY ISSUES AND ESCALATION CONTACTS:
The following table denotes the definition of the severity levels to be
used by NETSPEAK and Motorola.
-------------------------------------------------------------------------------
Level Response Resolution
Time Time Criteria
-------------------------------------------------------------------------------
Severity 1 2 Hours 48 Hours Indicates an inability to
use the NetSpeak
Products.
-------------------------------------------------------------------------------
Severity 2 5 Hours 4 Business Days Indicates the ability to
use the NetSpeak Products, but
operations are severely
restricted.
-------------------------------------------------------------------------------
Severity 3 24 Hours 10 Business Days Indicates ability to use the
NetSpeak Products, with the
exception of specific functions
which are not critical to
overall operations.
-------------------------------------------------------------------------------
Escalation Procedure to be followed by Motorola will be used in the event
of non-adherence to the foregoing performance standard by NETSPEAK,
Motorola may escalate to:
Level 1: Director of Technical Assistance Center (TAC)
In the event that Motorola has not received an acceptable response to an
Incident after the aforementioned escalation, Motorola shall escalate its
request for Support and Maintenance to the NETSPEAK Vice President of
Engineering. In the event that Motorola still has not received an
acceptable response to such Incident, the next level of escalation should
be to NETSPEAK's Vice President of OEM Sales. If after such escalation
procedure has been followed and Motorola still has not received an
acceptable response to such Incident, Motorola shall escalate its request
for Support and Maintenance to NETSPEAK's President and/or CEO.
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Exhibit C
Disclosure Schedule
Disclosure with respect to Section 13.1(d):
1. Allegations of infringement of U.S. Patent 5,526,353 owned by e-Net,
Inc.
2. Letter from MTV Networks October 6, 1997 suggesting that NetSpeak's
allowed but as yet unused, trademark "WTV" is likely to cause confusion with MTV
Networks' "MTV" registration. MTV Networks has not demanded that NetSpeak cease
and desist use of the ▇▇▇▇.
3. Letter from ▇▇▇▇ Atlantic July 29, 1997 requesting that NetSpeak cease
and desist use of NetSpeak's "THE ART OF SOUND COMMUNICATION" service ▇▇▇▇
alleging infringement of ▇▇▇▇ Atlantic's registrations for "THE HEART OF
COMMUNICATION", "SOUNDSAVINGS", "SOUNDVALUES" AND "YOU'LL LIKE THE SOUND OF IT"
marks.
Disclosure with respect to Section 17.5:
Software Development and Distribution Agreement between Netspeak
Corporation and BayNetworks, Inc.
Netspeak License Agreement between Infonet Services Corporation and
Netspeak Corporation.
Technology License and Development Agreement between Creative Technologies,
Ltd. and Netspeak Corporation dated as of June 7, 1996, as amended December 6,
1996.
Distributor Agreement between Rockwell International, SSD and Netspeak
Corporation dated as of January 30, 1997
Siemens ▇▇▇▇▇▇▇▇▇-▇▇▇▇▇▇▇ Joint Development and Marketing Agreement by and
among Siemens ▇▇▇▇▇▇▇▇▇-▇▇▇▇▇▇▇, and Netspeak Corporation dated as of March 1,
1997.
ACT Network, Inc. Technology Development and License Agreement dated May 5,
1997.
or other prior agreements containing licenses to modify Source Code after
the transfer of such Source Code pursuant to an escrow agreement.
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Exhibit D
Guidelines for Using Trademarks
1.0 General Overview
1.1 These guidelines ("Guidelines") set forth the proper treatment and use of
the Trademarks pursuant to the license grants of Section 2 of the Agreement,
hereafter for the purposes of this Schedule referred to as "Licensed Products."
Compliance with these Guidelines is the sole responsibility of Motorola. In the
event of a conflict between the provisions of this Schedule and the Agreement,
the Agreement shall control.
2.0 Use of Trademarks
2.1 The Trademarks may only be used on the Licensed Products, its packaging,
collateral documentation and in advertising for the Licensed Products. The
Trademarks may never be used on or in connection with any other products or
services, and, particularly not on novelty items or T-shirts, without express
written permission of NetSpeak.
2.2 The Trademarks may not be used as part of or in any emblem or insignia.
2.3 The Trademarks must not be used in a manner which may cause confusion as to
the source or origin of products or services being offered. As such, the
Trademarks may not be:
2.3.1 displayed in a striking and solitary manner by Motorola;
2.3.2 made more prominent than the remainder of the text in which the
Trademarks are used by Motorola;
2.3.3 as prominent or more prominent than the trademark or company name of
Motorola;
2.3.4 used as part of the name or other identifier of a business, product,
or service not connected with the Licensed Products.
2.4 At the first or a prominent occurrence of the Trademark in advertising, it
should be symbolically indicated that the Trademarks are trademarks. In the
United States, this is usually done by using the symbol /TM/ or (R) with the
same footnote. Note that in some countries, a translated version of the U.S.
trademark attribution is not only used, but may be required. You should check
with your legal department to insure that local laws and customs are adhered to
and followed.
2.5 NetSpeak will provide to Motorola camera-ready artwork of the Trademarks.
Motorola may not alter this artwork in any way whatsoever.
2.6 Motorola may only reproduce the Trademarks in accordance with the
instructions included on the camera-ready artwork which will be provided by
NetSpeak to Motorola. The Trademarks artwork may not be recreated in any way.
Motorola may re-size the Trademarks using photographic proportional processes.
2.7 Motorola agrees not to use any other trademark, service ▇▇▇▇ or tradename
in combination with the Trademark without prior written approval of NetSpeak. A
minimum border must be placed around the Trademarks equal to one half of the
Trademark's largest dimension.
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2.8 NetSpeak may conduct spot checks of the Licensed Products and advertising
and will periodically (but no more than twice a year) send out requests for
samples to monitor compliance with the Agreement and these Guidelines.
2.9 Motorola must correct any deficiencies in their use of the Trademarks on
the Licensed Products or in advertising, and cease and desist from further
publication or distribution of the offending materials upon reasonable notice
from NetSpeak.
2.10 Advertising Claims - The accuracy and appropriateness of all claims used in
Motorola's advertising or promotional materials which includes the Trademarks is
the sole responsibility of Motorola, even if NetSpeak is aware of the
advertisement or promotional materials.
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Exhibit E
STANDARD WEBPHONE LICENSE AGREEMENT
NetSpeak Corporation WebPhone(R) Version 3.0 License Agreement
BY INSTALLING AND RUNNING THIS SOFTWARE PROGRAM YOU ARE AGREEING TO BE BOUND BY
THE TERMS AND CONDITIONS OF THIS AGREEMENT. IF YOU DO NOT AGREE TO THE TERMS OF
THIS AGREEMENT, DO NOT CONTINUE THIS INSTALLATION AND DELETE ANY PORTIONS OF
THIS SOFTWARE ALREADY INSTALLED ON YOUR DISK DRIVE.
LICENSE GRANT
NetSpeak Corporation ("NetSpeak") grants to you a non-exclusive license under
Copyrights to use its WebPhone(R) version 3.0 voice communications software
product ("Software"). You may reproduce and distribute copies of the Software,
but not for compensation provided the following conditions are met:
(a) This license agreement must accompany the Software.
(b) You may not, or may not permit other individuals to: modify, translate,
reverse engineer, decompile, disassemble, create derivative works from the
Software, or remove any proprietary notices or labels on the software,
including copyright, trademark or patent pending notices.
SOFTWARE
NetSpeak reserves the right to at any time to alter prices, features,
capabilities, functions, licensing terms, release dates, general availability or
any other characteristics of the software as NetSpeak sees fit.
TITLE
Title, ownership rights, and intellectual property rights in and to the Software
shall remain with NetSpeak. The Software is protected by the copyright and
patent laws of the United States and international copyright treaties.
DISCLAIMER OF WARRANTY FOR NON-UPGRADED SOFTWARE
If you have not paid an upgrade fee, the Software is provided on an "AS IS"
basis, without warranty of any kind, including without limitation the warranties
of merchantability, fitness for a particular purpose, durability and
non-infringement. The entire risk as to the quality and performance of the
Software is borne by you. Should the Software prove defective, you and not
NetSpeak assume the entire cost of any service and repair. This disclaimer of
warranty constitutes an essential part of the agreement. Some states do not
allow exclusions of an implied warranty, so this disclaimer may not apply to you
and you may have other legal rights that vary from state to state or by
jurisdiction.
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LIMITED WARRANTY FOR UPGRADED SOFTWARE
Upon payment of the then current upgrade fee, NetSpeak warrants that the
Software will perform substantially in accordance with the accompanying
documentation for a period of ninety (90) days from payment of the upgrade fee.
Some states and jurisdictions do not allow limitation on the duration of implied
warranties, so the above limitation may not apply to you. To the extent allowed
by applicable law, any implied warranties on the Software are limited to ninety
(90) days.
LIMITED REMEDY FOR UPGRADED SOFTWARE
NetSpeak and its suppliers' entire liability and your exclusive remedy shall be,
at NetSpeak's option, to either (a) refund the upgrade fee, or (b) repair or
replace the upgraded Software that does not meet NetSpeak's limited warranty.
This limited warranty is void if failure of the Software has resulted from
accident, abuse, or misapplication. Any replacement Software under the limited
remedy will be warranted for the remainder of the original warranty period or
thirty (30) days, which ever is longer.
LIMITATION OF LIABILITY
Under no circumstances and under no legal theory, tort, contract, or otherwise,
shall NetSpeak or any other person be liable for any indirect, special,
incidental, punitive, exemplary or consequential damages of any character
including, without limitation, damages for loss of goodwill, work stoppage,
computer failure or malfunction, or any and all other commercial damages or
losses even if NetSpeak has been advised of the possibility of such damages. In
no event will NetSpeak be liable for any damages whatsoever.
MISCELLANEOUS
This Agreement represents the complete agreement and supersedes all prior
agreements and representations between the parties. It may be amended only by a
writing executed by both parties. If any provision of this Agreement is held to
be unenforceable for any reason, such provision shall be reformed only to the
extent necessary to make it enforceable. This Agreement shall be governed by and
construed under Florida law as such law applies to agreements between Florida
residents entered into and to be performed within Florida, except as governed by
Federal law. The application the United Nations Convention of Contracts for the
International Sale of Goods is expressly excluded.
US GOVERNMENT RESTRICTED RIGHTS
Use, duplication or disclosure by the Government is subject to restrictions set
forth in subparagraphs (a) through (d) of the Commercial Computer-Restricted
Rights clause at FAR 52.227-19 when applicable, or in subparagraph (c)(1)(ii) of
the Rights in Technical Data and Computer Software clause at DFARS 252.227-7013,
and in similar clauses in the NASA FAR
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
Supplement.
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Exhibit F
Terms of NetSpeak Corporation License Agreement
(Product Name) (Release/Version Number)
BY INSTALLING AND RUNNING THIS SOFTWARE PROGRAM YOU AGREE TO BE BOUND BY THE
TERMS AND CONDITIONS OF THIS AGREEMENT. IF YOU DO NOT AGREE TO THE TERMS OF THIS
AGREEMENT, DO NOT CONTINUE THIS INSTALLATION AND DELETE ANY PORTIONS OF THIS
SOFTWARE ALREADY INSTALLED ON YOUR SYSTEM.
LICENSE GRANT
NetSpeak Corporation ("NetSpeak") grants to You a non-exclusive license under
Copyrights to use its (Product Name/Release) software ("Software Product") on a
single computer at any one time. The Software Product is "in use" on a computer
when it is Resident in memory (i.e., RAM) or when executable or other files are
installed on the hard drive or other storage device of the computer.
You may not, or may not permit other individuals to, copy, modify, translate,
reverse engineer, decompile, dissemble, or create derivative works from the
Software Product, or remove any proprietary notices or labels on the Software
Product, including copyright, trademark or patent pending notices.
SOFTWARE PRODUCT
NetSpeak reserves the right to at any time alter prices, features, capabilities,
functions, licensing terms, release dates, general availability or any other
characteristics of the Software Product as NetSpeak sees fit.
TITLE
Title, ownership rights, and intellectual property rights in and to the
Software Product remain with NetSpeak. The Software Product is protected by the
copyright and patent laws of the United States and international copyright
treaties.
You acknowledge and agree that the Software Product contains proprietary and
confidential information of NetSpeak. You agree to protect the confidential and
proprietary nature of the Software Product in the same manner that You protect
Your own confidential information of like value, provided that You will in all
cases use reasonable care to protect the Software Product.
LIMITED WARRANTY
NetSpeak warrants that the Software Product will perform substantially in
accordance with the accompanying documentation for a period of ninety (90) days
from date of first use. Some states and jurisdictions do not allow limitation on
the duration of implied warranties, so the above limitation may not apply to
you. Except as expressly provided herein there are no warranties, conditions or
representations express or implied by statute, usage, custom of the trade or
otherwise with respect to the Software Product licensed by NetSpeak hereunder,
including but not limited to, warranties or representations of workmanship,
merchantability, suitability or fitness for a particular purpose, durability or
noninfringement. Without limiting the generality of the foregoing, NetSpeak does
not warrant that the Software Product will meet all of your needs or that
operation of the Software Product will be error free. This limited warranty
constitutes an essential part of this Agreement.
CUSTOMER REMEDY
NetSpeak and its suppliers' entire liability and your exclusive remedy shall be,
at NetSpeak's option to either (a) refund the license fee, or (b) repair or
replace the Software Product that does not meet NetSpeak's limited warranty.
This limited warranty is void if failure of the Software Product has resulted
from accident, abuse, or misapplication. Any replacement Software Product under
the limited remedy will be warranted for the remainder of the original warranty
period or thirty (30) days, which ever is longer.
LIMITATION OF LIABILITY
Under no circumstances and under no legal theory, whether in tort, contract, or
otherwise, shall NetSpeak or any other person be liable for any direct,
indirect, special incidental, exemplary, punitive or consequential damages of
any character including, without limitation, damages for loss of goodwill, work
stoppage, computer failure or malfunction, or any and all other commercial
damages or losses, even if NetSpeak has been advised of the possibility of such
damages. In no event will NetSpeak be liable for any damages whatsoever in
excess of the amount paid for the Software Product that is the subject matter of
the claim or that is directly related to the cause of action.
TERM
This Agreement shall become effective upon your installation of the Software
Product and shall terminate automatically upon breach of this Agreement by you,
if any. NetSpeak may terminate this Agreement at any time, for any reason,
however, NetSpeak may refund a prorated portion of the license fee upon any such
termination, at NetSpeak's discretion.
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MISCELLANEOUS
If any provision of this Agreement is held to be unenforceable for any reason,
such provision shall be reformed only to the extent necessary to make it
enforceable. This Agreement shall be governed by and construed under Florida
law, except as pre-empted by United States Federal law. The application the
United Nations Convention of Contracts for the International Sale of Goods is
expressly excluded.
You shall comply with all export regulations pertaining to the Software Product
in effect from time to time. In particular, without limiting the generality of
the foregoing. You hereby warrant that you will not directly or indirectly
export, re-export or transship the Software Product or such other information,
media or products in violation of or otherwise in contravention of the export
laws, rules and regulations.
U.S. GOVERNMENT RESTRICTED RIGHTS
Use, duplication or disclosure by the Government is subject to restrictions set
forth in subparagraphs (a) through (d) of the Commercial Computer-Restricted
Rights clause at FAR 52.227-19 when applicable, or in subparagraph (c)(1)(ii) of
the Rights in Technical Data and Computer Software clause at DFARS 252.227-7013,
and in similar clauses in the NASA FAR Supplement.
CUSTOMER SUPPORT
Unless you have entered into a separate and maintenance agreement with NetSpeak,
you shall receive technical support during the term of the warranty period set
forth above in accordance with the NetSpeak software support policy in effect
for the Software Product. For technical support related to the Software Product
call NetSpeak Corp. at (▇▇▇) ▇▇▇-▇▇▇▇.
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Exhibit G
Royalty Terms
[TO BE PREPARED IN ACCORDANCE WITH SECTION 7.1.3]
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Exhibit H
Motorola ISG Standard Purchase Terms and Conditions
PURCHASE ORDER TERMS AND CONDITIONS
1. ACCEPTANCE-AGREEMENT Seller's commencement of work or shipment of the goods,
whichever occurs first, constitutes acceptance of this purchase order and all of
its terms and conditions. Motorola Inc., Information Systems Group (hereafter
referred to as "ISG" or "Buyer") hereby objects to any terms proposed in
Seller's acceptance or acknowledgment of ISG's offer which add to, vary from, or
conflict with the terms of this order. Any such proposed terms shall not operate
as a rejection of this offer but shall be deemed a material alteration, and this
offer shall be deemed accepted by the Seller without said additional or
different terms. If this purchase order shall be deemed an acceptance of a prior
offer by Seller, such acceptance is expressly limited to the terms contained on
the front and back of this order.
2. PRICE The articles shipped or work performed against this order must not be
invoiced at a higher price than shown on the face of this order without the
written consent of ISG. The invoice must itemize transportation charges,
including foreign inland freight and insurance and taxes separately, if
applicable. If the price is omitted from the order, the price shall be the
lowest prevailing market price. No charge will be allowed for packing, labeling,
commissions, customs duties, storage, crating, or express handling unless
indicated on this order.
3. PROPRIETARY INFORMATION - CONFIDENTIALITY Any information or data in the
form of specifications, drawings, reprints, technical information or otherwise
furnished the Seller under this order shall remain ISG's property, shall be
deemed proprietary, shall be kept confidential, and shall be promptly returned
at ISG's request. Seller shall not disclose, without ISG's written permission,
any such information or data to any other person, or use such information or
data itself for any purpose other than performing this order. The obligations
under this paragraph will survive the cancellation, termination or completion of
this order. Unless otherwise agreed in writing, no commercial, financial or
technical information disclosed in any manner or at any time by Seller to ISG
shall be deemed secret or confidential.
4. WARRANTIES Seller expressly warrants that all goods or services provided
under this order shall be merchantable, free from defects in material and
workmanship, of the highest quality, and shall conform to all applicable
specifications and appropriate standards. If Seller knows or has reason to know
the particular purpose for which ISG intends to use the goods or services,
Seller warrants that such goods or services shall be fit for such particular
purpose. Seller further warrants that the goods are wholly new and contain new
components and parts throughout and that Seller has good and warrantable title
to the goods free and clear of all liens. Seller shall indemnify and hold ISG
harmless for all damages arising out of any breach of these warranties. In
addition to the warranties above, Seller shall extend all warranties it receives
from its vendors to ISG, and to ISG's customers. Breach of the warranties in
this provision, or any other term of this order, shall entitle ISG to all
available remedies, including those of the Uniform Commercial Code.
5. TERMINATION ISG may terminate all or any part of this order at any time for
its convenience upon written notice to Seller. ISG will pay a reasonable
termination charge based on a percentage of the order price reflecting the
percentage of work performed by Seller prior to termination. Any claim for
payment of such termination charges must be submitted in writing to ISG within
thirty (30) days of receipt of written notice of termination. ISG shall have the
right to audit all elements of any termination claim, and Seller shall make
available to ISG on request all books, records and papers relating thereto. Late
deliveries, deliveries of products which are defective or which do not conform
to this order, failure to perform as agreed, and failure to provide reasonable
assurances of future performance upon request, shall all be reasons allowing ISG
to terminate this order for cause. In such event, Seller shall be liable for any
damages (or at ISG's option, specific performance) due to Seller's breach or
default. Neither party will be liable to the other for any delay or failure to
perform if that delay or failure results from an
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
unforseeable cause beyond its reasonable control, except that ISG may terminate
all or any portion of this order without liability to Seller if such delay or
failure to perform by Seller or on behalf of Seller extends beyond thirty (30)
days of ISG's requested delivery date. ISG'S TOTAL LIABILITY FOR DAMAGES UNDER
THIS ORDER SHALL NOT EXCEED THE PRICE ALLOCABLE TO THE GOODS OR SERVICES GIVING
RISE TO THE CLAIM.
6. PATENT INDEMNITY By acceptance of this order, Seller agrees to indemnify ISG
against all claims, judgments, decrees, costs and expenses, and attorney's fees
incident to any proceeding which may be brought against ISG or its agents,
distributors, customers, or other vendors based on a claim of alleged copyright,
trademark, maskwork right, or patent infringement, as well as for an alleged
claim of unfair competition resulting from similarity in design, trademark or
appearance of goods or services furnished under this order, unless the goods or
services are of ISG design or formula, and Seller agrees that it will, upon
request of ISG and at Seller's own expense, defend or assist in the defense of
any action which may be brought against ISG or its agents, distributors,
customers, or other vendors for such infringement or claimed infringement or
alleged claim of unfair competition. ISG agrees to notify Seller promptly upon
receipt of notice of infringement or information of such a suit having been
filed.
7. INSIGNIA If any Products are rightfully rejected or not purchased by
Motorola which utilize Motorola's name, trademarks, trade names, insignia,
symbols, or decorative designs, Seller shall remove same prior to any sale, use
or disposition thereof.
8. MATERIALS, TOOLS AND EQUIPMENT All tools, equipment, dies, gauges, models,
drawings or other materials paid for or furnished by Motorola for the purpose of
this order shall be and remain the sole property of Motorola. Seller shall
safeguard all such property while it is in Seller's custody or control, be
liable for any loss or damage to such property, at Motorola's option procure
adequate insurance, use it only for Motorola orders, and return it to Motorola
upon request. Any such property described above whether furnished or ordered by
Motorola and which may be in an unfinished state may be removed from Seller's
premises or the premises of subcontractors upon request without further action
or bond. In the event that Motorola removes such property that is not finished,
Motorola will pay Supplier a percentage of the order price that corresponds to
the percentage of completion. Seller agrees to waive and hereby does waive any
lien it may have in regard to such property and ensure subcontractors do the
same.
9. INDEMNIFICATION Seller shall defend, indemnify and hold ISG harmless against
all damages, claims or liabilities and expenses (including attorney's fees)
arising out of or resulting in any way from any obvious or apparent defect or
latent defect in the goods or services purchased under this order, or from any
act or omission of Seller, its agents, employees or subcontractors. This
indemnification shall be in addition to obligations of Seller under this order.
10. CHANGES ISG shall have the right to make changes in this order at any time
for its convenience upon written notice to Seller. Such changes shall be subject
to an equitable adjustment in the performance schedule or purchase price, based
on reasonable and unavoidable costs incurred by the Seller prior to notice of
the change. Any claim of Seller for an adjustment must be submitted in writing
to ISG within thirty (30) days of the ISG change notice.
11. INSPECTION Seller's facilities, equipment, and goods and services purchased
under this order are subject to ISG's inspection and acceptance. Payment for
the goods and services delivered shall not constitute acceptance. Goods and
services shall only be deemed accepted when they have actually been counted,
inspected, and tested by ISG and found to be in conformance with this order.
Goods rejected and/or goods supplied in excess of those ordered or delivery in
advance of the delivery schedule may, in addition to ISG's other rights, be
returned to Seller at its expense, including all expenses of unpacking,
examining, repackaging and reshipping such goods. If ISG receives goods or
services with defects or nonconformities whether or not apparent on inspection,
ISG reserves the right to require replacement, as well as transportation costs
and payment of damages. Nothing contained in this purchase order shall relieve
Seller from the obligations of testing, inspection and quality control.
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12. PACKING, DELIVERY AND SHIPMENT All goods shall be packed and shipped in
accordance with instructions or specifications on this order. In the absence of
any such instructions, Seller shall comply with best commercial practice to
ensure safe arrival at destination at the lowest transportation cost. TIME IS OF
THE ESSENCE ON THIS ORDER. If goods are not delivered or services provided by
the date specified, ISG may terminate this order as to items not yet shipped or
services not yet rendered without liability, by notice effective upon receipt by
Seller. In such instance, ISG may purchase substitute items or services
elsewhere and charge Seller with any loss incurred. If in order to comply with
ISG's required delivery date it becomes necessary for Seller to ship by a more
expensive method than specified in this purchase order. Seller shall pay any
increased transportation costs, unless the necessity for such rerouting or
expedited handling has been caused by ISG.
13. MATERIAL SAFETY DATA SHEETS Seller shall provide a Material Safety Data
Sheet for those chemicals purchased under the terms and conditions of this order
which are regulated by OSHA's hazard communication regulations set forth in 29
C.F.R. 1910.1200. All chemical suppliers certify by acceptance of this order
that the chemicals purchased are on the Toxic Substances Control Act, 15 U.S.C.
2601, et. seq., chemical inventory or are subject to an exemption and that such
exemption is specified in the Material Safety Data Sheet.
14. OZONE DEPLETING SUBSTANCES Seller agrees to comply with the Clean Air Act
ozone depleting substances labeling regulations set forth in 40 C.F.R Part 82,
Subpart E.
15. INSURANCE If this order includes services or work to be performed on ISG's
premises, Seller agrees to indemnify ISG from all loss or damage arising out of
such work, to observe the highest safety standards, to adhere to all ISG work
rules, safety standards and security requirements, to maintain insurance
satisfactory to ISG, and to furnish evidence of such insurance at ISG's request.
16. COMPLIANCE WITH LAWS Seller warrants that all goods and services supplied
pursuant to this order will have been produced and supplied in compliance with
all applicable federal, state and local laws, orders, rules and regulations.
Seller shall indemnify ISG against any liability caused by any non-compliance.
17. IMPORT/CUSTOMS For each shipment where the Seller sources goods covered by
this order outside the United States Customs Territory, ISG shall have the
option of being the Importer of Record. In such case, the Seller shall furnish
ISG with a commercial invoice containing the following information: (1) port of
entry; (2) names of Seller and ISG entity purchasing the merchandise; (3) name
of shipper (if different from Seller); (4) country of export; (5) detailed
description of merchandise; (6) quantities and weights; (7) actual purchase
price, including all elements of the amount paid or payable by ISG; (8) the
currency in which the sale was made; (9) all charges, costs and expenses
associated with the merchandise, including freight, insurance, commission,
containerization and packing, unless the cost of packing, containerization and
inland freight are already included in the invoice price; (10) all rebates or
discounts; (11) the country of origin (manufacture) of the goods; and (11) all
goods or services furnished for the production of the merchandise (e.g.,
"assists") not included in the invoice price for the first shipment of goods
destined for the United States Customs Territory unless ISG directs otherwise in
writing. The Seller agrees to comply with all laws and regulations governing the
importation of goods into the United States Customs Territory.
18. FORCED, INDENTURED AND/OR CONVICT LABOR Seller represents that the goods
and services covered by this purchase order, or components thereof, are not
produced, manufactured, mined, or assembled in whole or in part with the use of
forced, convict, and/or indentured labor under penal sanction as prohibited by
any state law or U.S. statute including any class of labor specified in section
307, Tariff Act of 1930, as implemented in 19 C.F.R. 12.42.
19. GOVERNMENT SUBCONTRACT If a government contract number appears on the face
of this order, Seller agrees to comply with all terms and conditions of that
government contract which appear on Exhibit A attached hereto and made a part
hereof and with any other pertinent laws. Presidential directives and executive
orders to the
CONFIDENTIAL PROPRIETARY EXECUTION COPY
extent that they apply to the subject matter of this order.
20. EQUAL EMPLOYMENT OPPORTUNITY AND AFFIRMATIVE ACTION This order incorporates
by reference: (a) all provisions of 41 C.F.R. 60-1.4 and 60-2 as implemented by
Federal Acquisition Regulation (FAR) 55.222-26(b)(1)-(11) pertaining to the
Equal Opportunity clause; (b) all provisions of 41 C.F.R. 60-250 as implemented
by FAR 52.222-35 and -37 pertaining to employment reports and affirmative action
for disabled veterans and veterans of the Vietnam Era; and (c) all provisions of
41 C.F.R. 60-741 as implemented by FAR 52.222-36 pertaining to affirmative
action for handicapped/disabled workers. Seller agrees to comply with any and
all applicable State and Local Government Equal Employment Opportunity and
Affirmative Action laws, including any and all applicable statutes, rules,
regulations, ordinances and other guidelines.
21. EEO-1 REPRESENTATION Seller represents that it has submitted Standard Form
100 (EEO-1) compliance reports as required by 41 C.F.R. 60-1.7 as implemented by
FAR 52.222-22.
22. CERTIFICATION OF NONSEGREGATED FACILITIES Seller certifies that, in
compliance with 41 C.F.R. 60-1.8 as implemented by FAR 52.222-21, it does not
and will not maintain or provide for its employees any segregated facilities at
any of its establishments, and that it does not and will not permit its
employees to perform their services at any location under its control where
segregated facilities are maintained. Seller agrees that breach of this
certification is a violation of the Equal Opportunity clause incorporated
herein. Seller further agrees that it will either: (a) obtain certifications of
non segregated facilities from proposed subcontractors for specific time
periods; or (b) obtain certifications of non segregated facilities from proposed
subcontractors before the award of any subcontracts subject to the Equal
Opportunity clause, will retain such certifications in its files, and forward
the Notice set forth in FAR 52.222-21 to proposed subcontractors.
23. OTHER REPRESENTATIONS AND CERTIFICATIONS Seller's acceptance of this order
constitutes Seller's representation, certification, and warranty that: (a) any
facility used in the performance of this order is not listed on the
Environmental Protection Agency List of Violating Facilities, Seller shall
comply with all requirements of the Clean Air Act and the Clean Water Act, and
Seller shall obtain similar representations and commitments from its suppliers
of items to be used in performance of this order; (b) Seller and each of its
principals and affiliated entities are not debarred, suspended, or proposed for
debarment for purposes of receiving Federal Government contracts; (c) Seller
will not obtain any items to be used in performance of this order from any
entity known by Seller to be debarred, suspended, or proposed for debarment; (d)
Seller has not provided or accepted any "kickback" (as defined in FAR 52.203-7)
in connection with this order and has obtained similar commitments from its
suppliers; (e) Supplies furnished under this order are in compliance with the
requirements of DFARS 252.225-7014 (Preference for Domestic Specialty Metals);
DFARS 252.225-7012 (Preference for Certain Domestic Commodities); DFARS 252.225-
7022 (Restriction on acquisition of polyacrylonitrile (PAN) based carbon fiber);
DFARS 252.225-7023 (Restriction on acquisition of carbonyl iron powders);
52.225-11 (restrictions on certain foreign purchases) and FAR 52.208-1 (Required
Sources for Jewel Bearings and Related Items); (f) unless otherwise stated in
writing to ISG prior to shipment, no jewel bearings or related items (as defined
in the aforementioned clause) are incorporated into any item furnished under
this order, and (g) Seller will immediately notify ISG in writing of any event
which may potentially impair Seller's compliance with any of the foregoing
representations, certifications, and warranties, (h) Supplier Certification and
Disclosure Regarding Payments to Influence Certain Federal Transactions (FAR
52.203-11).
24. DISPUTE RESOLUTION Both parties agree that any claims or disputes, except
for claims or disputes relating to intellectual property, will be submitted to
non-binding mediation prior to initiation of any formal legal process. Costs of
mediation will be shared equally.
25. PROCESS CONTROL Seller shall make no changes in material used, construction
or fabrication techniques, test methods, changes in Manufacturing location(s),
or process changes made after submission of Manufacturing location(s), or
process changes made after submission of initial qualification samples without
prior written approval of ISG. Any such changes desired by the Seller shall be
requested in writing indicating reasons for such changes and
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CONFIDENTIAL PROPRIETARY EXECUTION COPY
including effect on cost and performance.
26. ELECTROSTATIC DISCHARGE (ESD) The Seller shall maintain an Electrostatic
Discharge (ESD) control program covering as a minimum, internal handling,
packaging for shipment and marking of ESD sensitive component containers. All
static sensitive devices will be placed in anti-static plastic containers and
special conductive packaging to avoid damage in transit. All shipping containers
must be marked with a precautionary statement "CONTAINS STATIC SENSITIVE
DEVICES." All anti-static plastic containers must be marked as anti-static.
27. YEAR 2000 WARRANTY To the extent this purchase order includes some form of
information technology, including anything that processes, provides, and/or
receives date data, Seller represents and warrants, in addition to all other
representations and warranties, that for ten years from the date of delivery to
Motorola, the products supplied will be free from any error(s) or defect(s)
relating to date/time data (including leap year calculations), will not generate
any invalid and/or incorrect date/time-related results and will not impair the
performance, output or accuracy of Motorola's systems or products.
28. GENERAL This purchase order and any documents attached to or referred to on
this order constitute the entire agreement between the parties and can only be
modified in writing signed by authorized representatives of both parties. No
part of this order may be assigned or subcontracted without the prior written
approval of ISG. All claims for money due or to become due from ISG shall be
subject to deduction or set off by ISG for any counterclaim arising out of this
or any other transaction with Seller. ISG's failure to enforce or insist on
performance of any of the terms or conditions in this order shall not operate as
a waiver of that or and other right. This order shall be governed by the laws of
the Commonwealth of Massachusetts.
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