EXHIBIT 10.20
FORM OF DISTRIBUTION AND LICENSE AGREEMENT
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DISTRIBUTION AND LICENSE AGREEMENT
This Software Distribution License Agreement ("License Agreement") is made
effective as of April 9, 2001 ("Effective Date"), and is made by and between:
Kana Communications, Inc., a Delaware corporation ("Kana") and Broadbase
Software, Inc., a Delaware corporation ("Broadbase").
WHEREAS the parties wish to enter into a License Agreement to permit each of
the parties to distribute and otherwise exploit the Licensed Products of the
other (as hereinafter defined), the parties agree as follows:
1. Definitions. As used in this License Agreement, the following terms shall
have the following meanings:
"Broadbase Products" means all software owned by Broadbase, and such
software, products and services offered to third parties by Broadbase as of the
Effective Date, and any Updates or Upgrades to such software, products and
services, and new software, products and services offered for sale by
Broadbase, and all documentation associated therewith.
"Broadbase Trademarks" means all trademarks and service marks registered to
Broadbase and all trademarks and service marks for which Broadbase has applied
for registration.
"Derivative Work" means any modification, translation, port, adaptation,
extension, improvement, compilation, abridgment or other form in which the
Licensor's Licensed Products may be recast, transformed or adapted for use,
including but not limited to any form which would infringe any copyright to the
Licensor's Licensed Products but for the license granted herein.
"Intellectual Property" shall mean any or all of the following and all
rights in, arising out of, or associated therewith: (i) all patents and
applications therefor and all reissues, divisions, renewals, extensions,
provisionals, continuations and continuations-in-part thereof; (ii) all
inventions (whether patentable or not), invention disclosures, improvements,
trade secrets, proprietary information, know how, ideas and information,
designs, formulas, algorithms, processes, schematics, technology, technical
data, and all documentation relating to any of the foregoing; (iii) all
copyrights, copyrights registrations and applications therefor, and all other
rights corresponding thereto throughout the world; (iv) all industrial designs
and any registrations and applications therefor throughout the world; (v) all
trade names, URLs, logos, common law trademarks and service marks, trademark
and service ▇▇▇▇ registrations and applications therefor throughout the world;
(vi) all databases and data collections and all rights therein throughout the
world; (vii) all moral and economic rights of authors and inventors, however
denominated, throughout the world, and (viii) any similar or equivalent rights
to any of the foregoing anywhere in the world.
"Kana Products" means all software owned by Kana, and such software,
products and services offered to third parties by Kana as of the Effective
Date, and any Updates or Upgrades to such software, products and services, and
new software, products and services offered for sale by Kana during the term of
this License Agreement, and all documentation associated therewith.
"Kana Trademarks" means all trademarks and service marks registered to Kana
and all trademarks and service marks for which Kana has applied for
registration.
"Licensed Products" means the Broadbase Products and the Kana Products, as
the context requires.
"Licensed Trademarks" means the Broadbase Trademarks and the Kana
Trademarks, as the context requires.
"Merger Agreement" means the Agreement and Plan of Merger entered into as of
April 9, 2001, among Kana, Arrow Acquisition Corporation, and Broadbase.
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"Net Revenue" means each of Broadbase and Kana's invoiced license fees for
the other's Licensed Products less actual returns and applicable taxes or
similar charges imposed by governmental authorities.
"Updates" means bug fixes, modifications, variations, or enhancements made
to the Licensor's Licensed Products without a significant change in the
functionality of the Licensor's Licensed Products, the packaging (other than to
indicate a change in the version number to the right of the decimal point).
"Upgrades" means new releases and versions of the Licensor's Licensed
Products that include significant changes to functionality, new functionality,
new packaging or a change in the version number to the left of the decimal
point.
2. Object Code License. Subject to the terms of this License Agreement, each
party (the "Licensor") hereby grants to the other (the "Licensee"), a world-
wide, nontransferable, nonexclusive, royalty-bearing license under all the
Licensor's Intellectual Property to use, copy, distribute, display and perform
the Licensor's Licensed Products, including but not limited to the right to
sublicense the Licensor's Licensed Products to the Licensee's affiliates, or
sublicense or distribute the Licensor's Licensed Products through multiple
layers of distribution on a stand-alone basis or as integrated or bundled with
their own products or technology or the products or technology of others. Each
Licensee may sublicense the Licensor's Licensed Products by permitting bona
fide distributors and resellers to sell user licenses for the Licensor's
Licensed Products, by permitting duplication and distribution of the Licensor's
Licensed Products by OEMs, and by permitting users to duplicate the Licensor's
Licensed Products in connection with site licenses and similar transactions,
provided that each sublicense is made only pursuant to a valid sublicense
agreement that provides substantially similar protections to Licensor as
Licensor's standard license agreement. Each Licensee shall consult in advance
with its respective Licensor in the event that it wishes to enter into site
licenses, OEM License Agreements or other arrangements or license agreements
that provide for unlimited numbers of seats of the Licensor's Licensed Products
to be distributed or sold for a single price or otherwise allow any third party
to create copies of the Licensor's Licensed Products, and shall not enter into
any such arrangements without the Licensor's concurrence, which concurrence
will not be unreasonably withheld or delayed. Failure to object to any request
for concurrence for such arrangement within ten (10) business days of such
request shall be deemed concurrence. Licensee may modify and may authorize its
licensees to modify the documentation for the Licensor's Licensed Products and
distribute such modified documentation with the Licensor's Licensed Products,
provided that each party or its licensees must retain all the other party's
copyright, trademark and similar notices in such documentation, provided that
notwithstanding the terms of this Agreement, Licensor shall have no liability
to Licensee or any third party with respect to any such modified documentation.
3. Delivery. Within five (5) days of the Effective Date, the Licensor shall
deliver to the Licensee, in a form or medium agreed by the parties, a
reproducible form of the master versions of the then current version of the
Licensor's Licensed Products.
4. Source Code License. Each Licensor shall place the source code for the
Licensor's Licensed Products in escrow with such escrow agent as agreed by the
parties, pursuant to the terms of an escrow agreement, a form of which is
attached as Exhibit A. A party's source code shall be released from escrow (the
"Releasing Party") to the other party (the "Beneficiary") upon the occurrence
of one of the following release conditions with respect to the Releasing Party:
(i) if the Releasing Party:
(a) becomes the debtor in a voluntary petition under the United States
Bankruptcy Code;
(b) commences any proceeding for relief from or adjustment of its debts
(including without limitation by consenting to or otherwise
permitting the entry of an order for relief in an involuntary case
under the United States Bankruptcy Code);
(c) requests, consents to or permits the appointment of a receiver for
all or substantially all of its assets; or
(d) files any court proceeding seeking its liquidation and the winding
up of its affairs;
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(ii) if the Releasing Party:
(a) becomes the alleged debtor in an involuntary petition under the
United States Bankruptcy Code if such petition or proceeding is not
dismissed within ninety (90) days of filing;
(b) has filed against it any involuntary proceeding for relief from or
adjustment of its debts, or requesting the appointment of a receiver
for all or substantially all of its assets; or
(c) becomes the subject of any involuntary proceeding for the
liquidation of the party and the winding up of its affairs if such
petition or proceeding, in each case, is not dismissed within ninety
(90) days of filing;
(iii) if the Releasing Party makes a general assignment for the benefit of
its creditors, or enters into a composition of creditors; or
(iv) if the Releasing Party adopts necessary board and, if required,
stockholder resolutions for dissolution, liquidation and winding up of its
affairs.
(v) if the Releasing Party ceases to operate or do business, without there
being a successor; or
(vi) if the Releasing Party fails to provide maintenance or support of its
Licensed Products in accordance with the standard terms and conditions for such
support, where such failure renders the Licensed Products materially unusable
causing a substantial adverse impact to the business of the Beneficiary and
which failure is not cured within forty-five (45) days of written notice from
the Beneficiary of such failure.
Subject to the terms of this License Agreement, the Licensor hereby grants
to the Licensee, a world-wide, nontransferable, nonexclusive, royalty-free
license under all Intellectual Property to use, modify, or copy the source code
for Licensor's Licensed Products, create Derivative Works and improvements from
the source code for the Licensor's Licensed Products, and/or distribute such
Derivative Works in object code form.
5. Restrictions. Each Licensee agrees that under no circumstance shall it,
or shall it cause or permit any third party to, (a) distribute or allow others
to distribute the Licensor's Licensed Products except as contemplated by this
License Agreement, (b) reproduce, modify or copy the Licensor's Licensed
Products and associated documentation except as contemplated by this License
Agreement, or as permitted by the Licensor in writing, or (c) reverse assemble,
reverse compile or reverse engineer the Licensor's Licensed Products, or
otherwise attempt to discover any of the Licensor's Licensed Products source
code or underlying Confidential Information, except as contemplated in Section
4 of this License Agreement. The parties reserve all rights not expressly
granted in this License Agreement.
6. Ownership of Licensed Products and Derivative Works. As between the
parties, title to and ownership of the Licensor's Licensed Products, and all
Intellectual Property therein, any accompanying printed materials and all
copies and portions thereof shall be and at all times remain in the Licensor.
As between the parties, title to and ownership of the Derivative Works of the
Licensor's Licensed Products created by or on behalf of the Licensee, and all
Intellectual Property therein, any accompanying printed materials and all
copies and portions thereof shall be and at all times remain in the Licensee
creating such Derivative Works, subject to the Licensor's rights to the
Licensor's Licensed Products. Notwithstanding the foregoing, nothing herein
shall restrict Licensor's rights with respect to such Derivative Works to the
extent that they are retained in the memory of Licensor's employees or agents.
7. Trademark License. Subject to the terms of this Agreement, each Licensor
hereby grants to the Licensee a world-wide, nontransferable, nonexclusive,
royalty-free license to use, copy, distribute and display the Licensor's
Licensed Trademarks, including the right to sublicense the use of such
trademarks through the multiple layers of distribution, solely in connection
with the licensing or other distribution of the Licensor's Licensed Products,
and in accordance with the Licensor's trademark usage guidelines provided to
the Licensee from time to time.
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8. Updates and Upgrades. At no cost to either party, other than as provided
in Section 9, each Licensor shall provide the Licensee with all Updates and
Upgrades as soon as such Updates and Upgrades are made generally available.
9. Maintenance and Support. Each Licensor shall provide to the Licensee all
maintenance and support related to the Licensor's Licensed Products that is
offered to others on terms consistent with those generally offered to any other
person with respect to such maintenance and support.
10. Royalties. Each Licensee shall pay to the Licensor royalties equal to
ten percent (10%) of Net Revenue from the distribution or other commercial
exploitation of the Licensor's Licensed Products on a stand-alone basis, and to
the extent that the Licensor's Licensed Products are bundled with the
Licensee's own products, Licensee shall pay to Licensor royalties equal to ten
percent (10%) of that portion of the Net Revenue for such bundled product that
is reasonably attributable to the Licensor's Licensed Products. No royalties
shall be payable with respect to Licensed Products that are used internally by
the Licensee or Beneficiary or its affiliates for non-revenue generating
activities, or made available to third parties for evaluation or promotional
purposes, provided that any such evaluation or promotional use shall not be for
a period more than thirty (30) days without Licensor's prior written consent.
Royalties payable pursuant to this Section 10 shall be calculated and paid, on
a quarterly basis, not more than thirty (30) days after the last day of the
fiscal quarter in which the Net Revenue giving rise to such royalties are
recognized.
11. Audit. Each party shall deliver to the other along with its payment of
royalties due for each quarter, a written report showing, in detail, its
calculation of royalties payable with respect to such quarter. Each party shall
keep, maintain and preserve for at least two (2) years following the quarter in
which the Net Revenue giving rise to royalties is recognized by such party,
accurate records relating to such royalties. Such records shall be Confidential
Information, but shall be available for inspection and audit as provided
herein. Each party shall have the right no more than once per calendar year to
have an independent public accountant, reasonably acceptable to the other,
examine the other party's relevant books, records and accounts for the purpose
of verifying the accuracy of payments made as required under this License
Agreement. Each party acknowledges and agrees that such accountant shall not
have access to the books, records, and accounts relating to other products or
services except as such books, records and accounts also directly relate to the
payments due hereunder. Each audit will be conducted at the audited party's
place of business, or other place agreed to by the parties, during the audited
party's normal business hours and with at least five (5) business days prior
written notice. Each party shall pay the fees and expenses of its auditor for
the examination; provided that should any examination disclose a greater than
five percent (5%) shortfall in the payments due for the period being audited,
the audited party shall pay the reasonable fees and expenses of the auditor for
that examination.
12. Confidentiality.
a. Each party ("Receiving Party") agrees to keep confidential and not
disclose or use except as contemplated by this License Agreement, confidential
information related to the other party's ("Disclosing Party") technology or
business that is provided to the Receiving Party in connection with this
License Agreement, the source code of any Kana Products and any other
information received from the Disclosing Party that is stamped or marked as
Confidential by the Disclosing Party, including without limitation, any
information disclosed orally that the Disclosing Party identifies as
confidential by written notice to the Receiving Party within thirty (30) days
of such disclosure, or information that would reasonably be expected to be
confidential from its context ("Confidential Information").
b. "Confidential Information" shall not include information the Receiving
Party can document (a) is in or (through no improper action or inaction by the
Receiving Party or any affiliate, agent or employee) enters the public domain,
or (b) was rightfully in the Receiving Party's possession or known by it prior
to receipt from the Disclosing Party, or (c) was rightfully disclosed to the
Receiving Party by another person without restriction, or (d) was independently
developed by the Receiving Party by persons without access to such information
and without use of any Confidential Information of the Disclosing Party.
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c. Each party, with prior written notice to the Disclosing Party, may
disclose such Confidential Information required to be disclosed to a
governmental entity or agency, or pursuant to the lawful requirement or order
of a governmental entity or agency, provided that reasonable measures are taken
to guard against further disclosure, including without limitation, seeking
appropriate confidential treatment or a protective order, or assisting the
other party to do so.
d. The Receiving Party acknowledges and agrees that due to the unique nature
of the Disclosing Party's Confidential Information, there can be no adequate
remedy at law for any breach of its obligations hereunder, that any such breach
may allow the Receiving Party or third parties to unfairly compete with the
Disclosing Party resulting in irreparable harm to the Disclosing Party, and
therefore, that upon any such breach or any threat thereof, the Disclosing
Party shall be entitled to seek appropriate equitable relief in addition to
whatever remedies it might have at law. The Receiving Party will notify the
Disclosing Party in writing immediately upon the occurrence of any such
unauthorized release or other breach. Any breach of this Section 12 will
constitute a material breach of this License Agreement.
13. Limited Warranty and Disclaimer. Each Licensor warrants that, for a
period of ninety (90) days from the date of delivery of the Licensor Licensed
Products, (a) the Licensor's Licensed Products shall perform substantially in
accordance with the documentation therefor, and (b) the media upon which the
Licensor's Licensed Products are provided to the Licensee shall be free from
defects in material and workmanship under normal use. This warranty covers only
problems reported to the Licensor during the warranty period. WARRANTY
DISCLAIMER: EXCEPT AS EXPRESSLY STATED HEREIN, EACH LICENSOR'S LICENSED
PRODUCTS ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND, EXPRESS OR IMPLIED,
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF PERFORMANCE OR MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT. EACH LICENSEE BEARS ALL
RISK RELATING TO QUALITY AND PERFORMANCE OF THE LICENSOR'S LICENSED PRODUCTS.
The performance of each Licensor's Licensed Products varies with various
manufacturers' equipment with which it is used. Each Licensor does not warrant
that the Licensor's Licensed Products or the functions contained in the
Licensor's Licensed Products will meet the Licensee's requirements, operate
without interruption or be error free. The exclusive remedy for breach by each
Licensor of its limited warranty set forth above shall be replacement of any
defective Licensor's Licensed Product or medium upon its return to the Licensor
within the warranty period.
14. Limitation of Remedies and Damages. EXCEPT FOR BREACHES OF SECTION 12
PERTAINING TO CONFIDENTIALITY AND THE INDEMNITY OBLIGATIONS IN SECTION 15,
NEITHER PARTY SHALL BE RESPONSIBLE OR LIABLE WITH RESPECT TO ANY SUBJECT MATTER
OF THIS LICENSE AGREEMENT OR TERMS AND CONDITIONS RELATED THERETO UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY (A) FOR LOSS OR
INACCURACY OF DATA OR COST OF PROCUREMENT OF SUBSTITUTE GOODS, SERVICES OR
TECHNOLOGY, OR (B) FOR ANY INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES
INCLUDING, BUT NOT LIMITED TO LOSS OF REVENUES, LOSS OF PROFITS, BUSINESS
INTERRUPTION, LOSS OR INACCURACY OF DATA OR COST OF PROCUREMENT OF SUBSTITUTE
GOODS, ARISING OUT OF THE USE OF OR INABILITY TO USE THE LICENSED PRODUCTS,
EVEN IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. EXCEPT
FOR BREACHES OF SECTION 12 PERTAINING TO CONFIDENTIALITY AND INDEMNITY
OBLIGATIONS IN SECTION 15, IN NO EVENT WILL A PARTY'S LIABILITY EXCEED THE
TOTAL ROYALTIES PAID BY THE PARTIES PURSUANT TO THIS AGREEMENT. NEITHER PARTY
SHALL BE RESPONSIBLE FOR ANY MATTER BEYOND ITS REASONABLE CONTROL. Because some
jurisdictions do not allow the exclusion or limitation of liability of
consequential or incidental damages, the above limitation may not apply.
15. Indemnity.
a. Each party (the "Indemnifying Party") shall defend, indemnify and save
harmless the other, their respective affiliates, directors, officers,
employees, agents and independent contractors (the Indemnified Parties") from
any and all claims, costs, damages, and expenses (including but not limited to
reasonable
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attorney's fees) incurred by the Indemnified Parties that are attributable to
any claim, demand or cause of action asserting that any Indemnifying Party's
Licensed Product infringes any U.S. patent, copyright, trademark or trade
secret, provided that the Indemnified Parties tender sole control of the
defense and settlement of such claim to the Indemnifying Party and reasonably
cooperates in the defense thereof, provided that the Licensor shall have no
obligation hereunder to the extent that any such claim, cost, damage or expense
is based upon Licensee's use of a modified or superseded Licensed Product.
b. In the event of an occurrence of a Release Condition, and Beneficiary's
creation of any Derivative Works pursuant to the license granted in Section 4,
the Beneficiary shall defend, indemnify and save harmless the Releasing Party,
its affiliates, and their respective directors, officers, employees, agents and
independent contractors from any and all claims, costs, damages, and expenses
(including but not limited to reasonable attorney's fees) incurred by the
Releasing Party that are attributable to any claim, demand or cause of action
asserting that any Derivative Work created by the Beneficiary pursuant to the
license granted in Section 4 infringes any U.S. patent, copyright, trademark or
trade secret, provided that the Releasing Party tenders sole control of the
defense and settlement of such claim to the Beneficiary and reasonably
cooperates in the defense thereof.
16. Termination. This License Agreement shall continue in effect for five
(5) years from the Effective Date ("Initial Term"), and shall renew
automatically for additional one year terms ("Renewal Term") unless either
party provides the other party with notice of termination of the Agreement at
least sixty (60) days prior to the end of the applicable Initial Term or
Renewal Term. A party not in default under this Agreement may terminate this
Agreement upon a material breach of this Agreement by the other party that is
not cured within thirty (30) days of the breaching party's receipt of notice of
such breach.
17. Nonassignability. Unless otherwise provided in this License Agreement,
neither the rights nor the obligations arising under this License Agreement are
assignable or transferable by either party without the other party's prior
written consent, and any such attempted assignment or transfer shall be deemed
an uncurable breach, permitting the non-breaching party to immediately
terminate the licenses and rights granted to the breaching party hereunder. For
the purposes of this Section 17, any change of control of a party shall be
deemed an assignment by such party.
18. Execution of License Agreement, Controlling Law, Attorneys' Fee. This
License Agreement shall become effective as of the Effective Date and only upon
its execution by both Kana and Broadbase. This License Agreement shall be
governed by and construed in accordance with the laws of the State of
California without regard to the conflicts of law provisions thereof and
without regard to the United Nations Convention on the International Sales of
Goods. In any action to enforce this License Agreement the prevailing party
will be entitled to costs and attorneys' fees.
19. Equitable Relief. The parties acknowledges and agrees that due to the
unique nature of Confidential Information, there can be no adequate remedy at
law for any breach of its obligations hereunder, that any such breach may allow
Receiving Party or third parties to unfairly compete with the Disclosing Party
resulting in irreparable harm to the Disclosing Party and, therefore, that upon
any such breach or threat thereof, the Disclosing Party shall be entitled to
seek injunctions and other appropriate equitable relief, in addition to
whatever remedies it may have at law.
20. Notice. Any notice, report, approval or consent required or permitted
hereunder shall be in writing and will be deemed to have been effectively
given: (i) immediately upon personal delivery or facsimile transmission to the
parties to be notified, (ii) one (1) day after deposit with a commercial
overnight courier with tracking capabilities, or (iii) three (3) days after
deposit with the United States Postal Service, by registered or certified mail,
postage prepaid to the respective addresses of the parties as set forth above.
21. Waiver. The waiver by either party of a breach of this License Agreement
or any right hereunder shall not constitute a waiver of any subsequent breach
of this License Agreement; nor shall any delay by either
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party to exercise any right under this License Agreement operate as a waiver of
any such right. If any provision of this License Agreement shall be adjudged by
any court of competent jurisdiction to be unenforceable or invalid, that
provision shall be limited or eliminated to the minimum extent necessary so
that this License Agreement shall otherwise remain in full force and effect and
enforceable.
22. Basis of Bargain. EACH PARTY RECOGNIZES AND AGREES THAT THE WARRANTY
DISCLAIMERS AND LIABILITY AND REMEDY LIMITATIONS IN THIS LICENSE AGREEMENT ARE
MATERIAL BARGAINED FOR BASES OF THIS LICENSE AGREEMENT AND THAT THEY HAVE BEEN
TAKEN INTO ACCOUNT AND REFLECTED IN DETERMINING THE CONSIDERATION TO BE GIVEN
BY EACH PARTY UNDER THIS LICENSE AGREEMENT AND IN THE DECISION BY EACH PARTY TO
ENTER INTO THIS LICENSE AGREEMENT.
23. Entire License Agreement. This License Agreement constitutes the entire
License Agreement between the parties hereto related to the subject matter
hereof. Any modifications of this License Agreement must be in writing and
signed by both parties hereto.
24. Independent Contractors. The parties to this Agreement are independent
contractors. There is no relationship of partnership, joint venture,
employment, franchise, or agency between the parties. Neither party will have
the power to bind the other or incur obligations on the other's behalf without
the other's prior written consent.
25. Survival. Sections 5, 6, 10, 11, 12, 14, 13, 15, 18, 19, 20, 21, 22, 23,
24, and 25 shall survive any termination or expiration of this License
Agreement.
26. Counterparts. This Agreement may be executed in one or more
counterparts, all of which shall be considered one and the same agreement and
shall become effective when one or more counterparts have been signed by each
of the parties and delivered to the other party, it being understood that all
parties need not sign the same counterpart.
IN WITNESS WHEREOF, the parties hereto have executed this License Agreement
as of the Effective Date.
KANA COMMUNICATIONS, INC. BROADBASE SOFTWARE, INC.
_____________________________________ _____________________________________
By By
▇▇▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇ Bay
_____________________________________ _____________________________________
Name (Print) Name (Print)
Chief Executive Officer Chief Executive Officer
_____________________________________ _____________________________________
Title Title
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EXHIBIT A
FORM OF ESCROW AGREEMENT
COMPREHENSIVE PREFERRED ESCROW AGREEMENT
Account Number
This Agreement is effective , 2001 among
("Escrow Agent"), ("Depositor") and ("Preferred
Beneficiary"), who collectively may be referred to in this Agreement as "the
parties."
A. Depositor and Preferred Beneficiary have entered or will enter into a
distribution and license agreement regarding certain proprietary technology of
Depositor (referred to in this Agreement as "the License Agreement").
B. Depositor desires to avoid disclosure of its proprietary technology
except under certain limited circumstances.
C. The availability of the proprietary technology of Depositor is critical
to Preferred Beneficiary in the conduct of its business and, therefore,
Preferred Beneficiary needs access to the proprietary technology under certain
limited circumstances.
D. Depositor and Preferred Beneficiary desire to establish an escrow with
Escrow Agent to provide for the retention, administration and controlled access
of the proprietary technology materials of Depositor.
E. The parties desire this Agreement to be supplementary to the License
Agreement pursuant to ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ [Bankruptcy] Code, Section 365(n).
ARTICLE 1--DEPOSITS
1.1 Obligation to Make Deposit. Upon the signing of this Agreement by the
parties, Depositor shall deliver to Escrow Agent the proprietary technology and
other materials ("Deposit Materials") required to be deposited by the License
Agreement or, if the License Agreement does not identify the materials to be
deposited with Escrow Agent, then such materials will be identified on an
Exhibit B1. If Exhibit B1 is applicable, it is to be prepared and signed by
Depositor and Preferred Beneficiary. Escrow Agent shall have no obligation with
respect to the preparation, signing or delivery of Exhibit B1.
1.2 Identification of Tangible Media. Prior to the delivery of the Deposit
Materials to Escrow Agent, Depositor shall conspicuously label for
identification each document, magnetic tape, disk, or other tangible media upon
which the Deposit Materials are written or stored. Additionally, Depositor
shall complete Exhibit B2 to this Agreement by listing each such tangible media
by the item label description, the type of media and the quantity. The Exhibit
B2 must be signed by Depositor and delivered to Escrow Agent with the Deposit
Materials. Unless and until Depositor makes the initial deposit with Escrow
Agent, Escrow Agent shall have no obligation with respect to this Agreement,
except the obligation to notify the parties regarding the status of the deposit
account as required in Section 2.2 below.
1.3 Deposit Inspection. When Escrow Agent receives the Deposit Materials and
the Exhibit B2, Escrow Agent will conduct a deposit inspection by visually
matching the labeling of the tangible media containing the Deposit Materials to
the item descriptions and quantity listed on the Exhibit B2. In addition to the
deposit inspection, Preferred Beneficiary may elect to cause a verification of
the Deposit Materials in accordance with Section 1.6 below.
1.4 Acceptance of Deposit. At completion of the deposit inspection, if
Escrow Agent determines that the labeling of the tangible media matches the
item descriptions and quantity on Exhibit B2, Escrow Agent will date and sign
the Exhibit B2 and mail a copy thereof to Depositor and Preferred Beneficiary.
If Escrow Agent
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determines that the labeling does not match the item descriptions or quantity
on the Exhibit B2, Escrow Agent will (a) note the discrepancies in writing on
the Exhibit B2; (b) date and sign the Exhibit B2 with the exceptions noted; and
(c) mail a copy of the Exhibit B2 to Depositor and Preferred Beneficiary.
Escrow Agent's acceptance of the deposit occurs upon the signing of the Exhibit
B2 by Escrow Agent. Delivery of the signed Exhibit B2 to Preferred Beneficiary
is Preferred Beneficiary's notice that the Deposit Materials have been received
and accepted by Escrow Agent.
1.5 Depositor's Representations. Depositor represents as follows:
a. Depositor lawfully possesses all of the Deposit Materials deposited with
Escrow Agent;
b. With respect to all of the Deposit Materials, Depositor has the right
and authority to grant to Escrow Agent and Preferred Beneficiary the
rights as provided in this Agreement;
c. The Deposit Materials are not subject to any lien or other encumbrance;
d. The Deposit Materials consist of the proprietary technology and other
materials identified either in the License Agreement or Exhibit B1, as
the case may be; and
e. The Deposit Materials are readable and useable in their current form or,
if any portion of the Deposit Materials is encrypted, the decryption
tools and decryption keys have also been deposited.
1.6 Verification. Escrow Agent shall perform a Level I verification of the
Deposit Materials upon the initial deposit and for each update. A verification
determines, in different levels of detail, the accuracy, completeness,
sufficiency and quality of the Deposit Materials. A Level I verification is
defined as follows: Escrow Agent will cause a technically qualified Escrow
Agent employee to evaluate the Deposit Materials in order to identify (a) the
hardware and software configurations reasonably necessary to maintain the
Deposit Materials; (b) the hardware and software configurations reasonably
necessary to compile the Deposit Materials; and (c) the compilation
instructions. Escrow Agent will then prepare and deliver to Depositor and
Preferred Beneficiary a report describing the information so identified. It
shall be the responsibility of the Depositor, and not Escrow Agent, to ensure
that the Deposit Materials contain the information so identified in Escrow
Agent's report, as well as any other information that may be required in the
License Agreement.
Preferred Beneficiary shall have the right, at Preferred Beneficiary's
expense, to cause higher levels of verification of any Deposit Materials.
Preferred Beneficiary shall notify Depositor and Escrow Agent of Preferred
Beneficiary's request for verification. Depositor shall have the right to be
present at the verification. If a verification is elected after the Deposit
Materials have been delivered to Escrow Agent, then only Escrow Agent, or at
Escrow Agent's election an independent person or company selected and
supervised by Escrow Agent, may perform the verification.
1.7 Deposit Updates. Unless otherwise provided by the License Agreement,
Depositor shall update the Deposit Materials within 10 days of each release of
a new version of the product which is subject to the License Agreement. Such
updates will be added to the existing deposit. All deposit updates shall be
listed on a new Exhibit B2 and the new Exhibit B2 shall be signed by Depositor.
Each Exhibit B2 will be held and maintained separately within the escrow
account. An independent record will be created which will document the activity
for each Exhibit B2. The processing of all deposit updates shall be in
accordance with Sections 1.2 through 1.6 above. All references in this
Agreement to the Deposit Materials shall include the initial Deposit Materials
and any updates.
Escrow Agent shall notify Depositor in writing semi-annually of Depositor's
obligation to make updated deposits. Within 30 days of receipt of each such
notice, Depositor shall certify in writing to Escrow Agent that (a) it has made
the updated deposits as required in the immediately preceding paragraph; or (b)
there has not been a release of a new version of the product since the last
deposit. After the 30 days, Escrow Agent shall
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notify Preferred Beneficiary that Escrow Agent has received (a) an updated
deposit from Depositor; (b) a statement from Depositor advising there has not
been a release of a new version of the product since the last deposit; or (c)
no response from Depositor. Unlimited deposit updates and two storage units are
included in the fees for this Agreement.
1.8 Removal of Deposit Materials. The Deposit Materials may be removed
and/or exchanged only on written instructions signed by Depositor and Preferred
Beneficiary, or as otherwise provided in this Agreement.
ARTICLE 2--CONFIDENTIALITY AND RECORD KEEPING
2.1 Confidentiality. Escrow Agent shall maintain the Deposit Materials in a
secure, environmentally safe, locked facility which is accessible only to
authorized representatives of Escrow Agent. Escrow Agent shall have the
obligation to reasonably protect the confidentiality of the Deposit Materials.
Except as provided in this Agreement, Escrow Agent shall not disclose,
transfer, make available, or use the Deposit Materials. Escrow Agent shall not
disclose the content of this Agreement to any third party. If Escrow Agent
receives a subpoena or other order of a court or other judicial tribunal
pertaining to the disclosure or release of the Deposit Materials, Escrow Agent
will immediately notify the parties to this Agreement unless prohibited by law.
It shall be the responsibility of Depositor and/or Preferred Beneficiary to
challenge any such order; provided, however, that Escrow Agent does not waive
its rights to present its position with respect to any such order. Escrow Agent
will not be required to disobey any court or other judicial tribunal order.
(See Section 7.5 below for notices of requested orders.)
2.2 Status Reports. Escrow Agent will issue to Depositor and Preferred
Beneficiary a report profiling the account history at least semi-annually.
Escrow Agent may provide copies of the account history pertaining to this
Agreement upon the request of any party to this Agreement.
2.3 Audit Rights. During the term of this Agreement, Depositor and Preferred
Beneficiary shall each have the right to inspect the written records of Escrow
Agent pertaining to this Agreement. Any inspection shall be held during normal
business hours and following reasonable prior notice.
ARTICLE 3--GRANT OF RIGHTS TO ESCROW AGENT
3.1 Title to Media. Depositor hereby transfers to Escrow Agent the title to
the media upon which the proprietary technology and materials are written or
stored. However, this transfer does not include the ownership of the
proprietary technology and materials contained on the media such as any
copyright, trade secret, patent or other intellectual property rights.
3.2 Right to Make Copies. Escrow Agent shall have the right to make copies
of the Deposit Materials as reasonably necessary to perform this Agreement.
Escrow Agent shall copy all copyright, nondisclosure, and other proprietary
notices and titles contained on the Deposit Materials onto any copies made by
Escrow Agent. With all Deposit Materials submitted to Escrow Agent, Depositor
shall provide any and all instructions as may be necessary to duplicate the
Deposit Materials including but not limited to the hardware and/or software
needed.
3.3 Right to Transfer Upon Release. Depositor hereby grants to Escrow Agent
the right to transfer the Deposit Materials to Preferred Beneficiary upon any
release of the Deposit Materials for use by Preferred Beneficiary in accordance
with Section 4.5. Except upon such a release or as otherwise provided in this
Agreement, Escrow Agent shall not transfer the Deposit Materials.
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ARTICLE 4--RELEASE OF DEPOSIT
Escrow Agent shall release the Deposit Materials in accordance with the
procedures set forth in this agreement on the occurrence on any one of the
following:
(i) if the Releasing Party:
(a) becomes the debtor in a voluntary petition under the United States
Bankruptcy Code;
(b) commences any proceeding for relief from or adjustment of its debts
(including without limitation by consenting to or otherwise
permitting the entry of an order for relief in an involuntary case
under the United States Bankruptcy Code);
(c) requests, consents to or permits the appointment of a receiver for
all or substantially all of its assets; or
(d) files any court proceeding seeking its liquidation and the winding
up of its affairs;
(ii) if the Releasing Party:
(a) becomes the alleged debtor in an involuntary petition under the
United States Bankruptcy Code if such petition or proceeding is not
dismissed within ninety (90) days of filing;
(b) has filed against it any involuntary proceeding for relief from or
adjustment of its debts, or requesting the appointment of a receiver
for all or substantially all of its assets; or
(c) becomes the subject of any involuntary proceeding for the
liquidation of the party and the winding up of its affairs if such
petition or proceeding, in each case, is not dismissed within ninety
(90) days of filing;
(iii) if the Releasing Party makes a general assignment for the benefit of
its creditors, or enters into a composition of creditors; or
(iv) if the Releasing Party adopts necessary board and, if required,
stockholder resolutions for dissolution, liquidation and winding up of its
affairs.
(v) if the Releasing Party ceases to operate or do business, without there
being a successor; or
(vi) if the Releasing Party fails to provide maintenance or support of its
Licensed Products in accordance with the standard terms and conditions for such
support, where such failure renders the Licensed Products materially unusable
causing a substantial adverse impact to the business of the Beneficiary and
which failure is not cured within forty-five (45) days of written notice from
the Beneficiary of such failure (collectively, "Release Conditions").
4.2 Filing For Release. If Preferred Beneficiary believes in good faith that
a Release Condition has occurred, Preferred Beneficiary may provide to Escrow
Agent written notice of the occurrence of the Release Condition and a request
for the release of the Deposit Materials. Upon receipt of such notice, Escrow
Agent shall provide a copy of the notice to Depositor by commercial express
mail.
4.3 Contrary Instructions. From the date Escrow Agent mails the notice
requesting release of the Deposit Materials, Depositor shall have five business
days to deliver to Escrow Agent contrary instructions. "Contrary Instructions"
shall mean the written representation by Depositor that a Release Condition has
not occurred or has been cured. Upon receipt of Contrary Instructions, Escrow
Agent shall send a copy to Preferred Beneficiary by commercial express mail.
Additionally, Escrow Agent shall notify both Depositor and Preferred
Beneficiary that there is a dispute to be resolved pursuant to the Dispute
Resolution section (Section 7.3) of this Agreement. Subject to Section 5.2,
Escrow Agent will continue to store the Deposit Materials without release
pending (a) joint instructions from Depositor and Preferred Beneficiary; (b)
resolution pursuant to the Dispute Resolution provisions; or (c) order of a
court.
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4.4 Release of Deposit. If Escrow Agent does not receive Contrary
Instructions from the Depositor, Escrow Agent is authorized to release the
Deposit Materials to the Preferred Beneficiary or, if more than one beneficiary
is registered to the deposit, to release a copy of the Deposit Materials to the
Preferred Beneficiary. However, Escrow Agent is entitled to receive any fees
due Escrow Agent before making the release. Any copying expense in excess of
$300 will be chargeable to Preferred Beneficiary. This Agreement will terminate
upon the release of the Deposit Materials held by Escrow Agent.
4.5 Right to Use Following Release. Unless otherwise provided in the License
Agreement, upon release of the Deposit Materials in accordance with this
Article 4, Preferred Beneficiary shall have the right to use the Deposit
Materials for the sole purpose of exercising its rights pursuant to the License
Agreement. Preferred Beneficiary shall be obligated to maintain the
confidentiality of the released Deposit Materials.
ARTICLE 5--TERM AND TERMINATION
5.1 Term of Agreement. The initial term of this Agreement is for a period of
years from the effective date of the License Agreement. Thereafter, this
Agreement shall automatically renew from year-to-year unless (a) Depositor and
Preferred Beneficiary jointly instruct Escrow Agent in writing that the
Agreement is terminated; or (b) the Agreement is terminated by Escrow Agent for
nonpayment in accordance with Section 5.2.
5.2 Termination for Nonpayment. In the event of the nonpayment of fees owed
to Escrow Agent, Escrow Agent shall provide written notice of delinquency to
all parties to this Agreement. Any party to this Agreement shall have the right
to make the payment to Escrow Agent to cure the default. If the past due
payment is not received in full by Escrow Agent within one month of the date of
such notice, then Escrow Agent shall have the right to terminate this Agreement
at any time thereafter by sending written notice of termination to all parties.
Escrow Agent shall have no obligation to take any action under this Agreement
so long as any payment due to Escrow Agent remains unpaid.
5.3 Disposition of Deposit Materials Upon Termination. Upon termination of
this Agreement, Escrow Agent shall destroy, return, or otherwise deliver the
Deposit Materials in accordance with Depositor's instructions. If there are no
instructions, Escrow Agent may, at its sole discretion, destroy the Deposit
Materials or return them to Depositor. Escrow Agent shall have no obligation to
return or destroy the Deposit Materials if the Deposit Materials are subject to
another escrow agreement with Escrow Agent.
5.4 Survival of Terms Following Termination. Upon termination of this
Agreement, the following provisions of this Agreement shall survive:
a. Depositor's Representations (Section 1.5);
b. The obligations of confidentiality with respect to the Deposit
Materials;
c. The rights granted in the sections entitled Right to Transfer Upon
Release (Section 3.3) and Right to Use Following Release (Section 4.5),
if a release of the Deposit Materials has occurred prior to termination;
d. The obligation to pay Escrow Agent any fees and expenses due;
e. The provisions of Article 7; and
f. Any provisions in this Agreement which specifically state they survive
the termination or expiration of this Agreement.
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ARTICLE 6--ESCROW AGENT'S FEES
6.1 Fee Schedule. Escrow Agent is entitled to be paid its standard fees and
expenses applicable to the services provided. Escrow Agent shall notify the
party responsible for payment of Escrow Agent's fees at least 60 days prior to
any increase in fees. For any service not listed on Escrow Agent's standard fee
schedule, Escrow Agent will provide a quote prior to rendering the service, if
requested.
6.2 Payment Terms. Escrow Agent shall not be required to perform any service
unless the payment for such service and any outstanding balances owed to Escrow
Agent are paid in full. Fees are due upon receipt of a signed contract or
receipt of the Deposit Materials whichever is earliest. If invoiced fees are
not paid, Escrow Agent may terminate this Agreement in accordance with Section
5.2. Late fees on past due amounts shall accrue interest at the rate of one and
one-half percent per month (18% per annum) from the date of the invoice.
ARTICLE 7--LIABILITY AND DISPUTES
7.1 Right to Rely on Instructions. Escrow Agent may act in reliance upon any
instruction, instrument, or signature reasonably believed by Escrow Agent to be
genuine. Escrow Agent may assume that any employee of a party to this Agreement
who gives any written notice, request, or instruction has the authority to do
so. Escrow Agent will not be required to inquire into the truth or evaluate the
merit of any statement or representation contained in any notice or document.
Escrow Agent shall not be responsible for failure to act as a result of causes
beyond the reasonable control of Escrow Agent.
7.2 Indemnification. Depositor and Preferred Beneficiary each agree to
indemnify, defend and hold harmless Escrow Agent from any and all claims,
actions, damages, arbitration fees and expenses, costs, attorney's fees and
other liabilities ("Liabilities") incurred by Escrow Agent relating in any way
to this escrow arrangement unless such Liabilities were caused solely by the
negligence or willful misconduct of Escrow Agent.
7.3 Dispute Resolution. Any dispute relating to or arising from this
Agreement shall be resolved by arbitration under the Commercial Rules of the
American Arbitration Association. Three arbitrators shall be selected. The
Depositor and Preferred Beneficiary shall each select one arbitrator and the
two chosen arbitrators shall select the third arbitrator, or failing agreement
on the selection of the third arbitrator, the American Arbitration Association
shall select the third arbitrator. However, if Escrow Agent is a party to the
arbitration, Escrow Agent shall select the third arbitrator. Unless otherwise
agreed by Depositor and Preferred Beneficiary, arbitration will take place in
Santa ▇▇▇▇▇ County, California, U.S.A. Any court having jurisdiction over the
matter may enter judgment on the award of the arbitrator(s). Service of a
petition to confirm the arbitration award may be made by First Class mail or by
commercial express mail, to the attorney for the party or, if unrepresented, to
the party at the last known business address.
7.4 Controlling Law. This Agreement is to be governed and construed in
accordance with the laws of the State of California, without regard to its
conflict of law provisions.
7.5 Notice of Requested Order. If any party intends to obtain an order from
the arbitrator or any court of competent jurisdiction which may direct Escrow
Agent to take, or refrain from taking any action, that party shall:
a. Give Escrow Agent at least two business days' prior notice of the
hearing;
b. Include in any such order that, as a precondition to Escrow Agent's
obligation, Escrow Agent be paid in full for any past due fees and be
paid for the reasonable value of the services to be rendered pursuant to
such order; and
c. Ensure that Escrow Agent not be required to deliver the original (as
opposed to a copy) of the Deposit Materials if Escrow Agent may need to
retain the original in its possession to fulfill any of its other duties.
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ARTICLE 8--GENERAL PROVISIONS
8.1 Entire Agreement. This Agreement, which includes the Exhibits described
herein, embodies the entire understanding among the parties with respect to its
subject matter and supersedes all previous communications, representations or
understandings, either oral or written. Escrow Agent is not a party to the
License Agreement between Depositor and Preferred Beneficiary and has no
knowledge of any of the terms or provisions of any such Webpay Agreements.
Escrow Agent's only obligations to Depositor or Preferred Beneficiary are as
set forth in this Agreement. No amendment or modification of this Agreement
shall be valid or binding unless signed by all the parties hereto, except that
Exhibit B1 need not be signed by Escrow Agent, Exhibit B2 need not be signed by
Preferred Beneficiary and Exhibit B3 need not be signed.
8.2 Notices. All notices, invoices, payments, deposits and other documents
and communications shall be given to the parties at the addresses specified in
the attached Exhibit B3. It shall be the responsibility of the parties to
notify each other as provided in this Section in the event of a change of
address. The parties shall have the right to rely on the last known address of
the other parties. Unless otherwise provided in this Agreement, all documents
and communications may be delivered by First Class mail.
8.3 Severability. In the event any provision of this Agreement is found to
be invalid, voidable or unenforceable, the parties agree that unless it
materially affects the entire intent and purpose of this Agreement, such
invalidity, voidability or unenforceability shall affect neither the validity
of this Agreement nor the remaining provisions herein, and the provision in
question shall be deemed to be replaced with a valid and enforceable provision
most closely reflecting the intent and purpose of the original provision.
8.4 Successors. This Agreement shall be binding upon and shall inure to the
benefit of the successors and assigns of the parties. However, Escrow Agent
shall have no obligation in performing this Agreement to recognize any
successor or assign of Depositor or Preferred Beneficiary unless Escrow Agent
receives clear, authoritative and conclusive written evidence of the change of
parties.
8.5 Regulations. Depositor and Preferred Beneficiary are responsible for and
warrant compliance with all applicable laws, rules and regulations, including
but not limited to customs laws, import, export, and re-export laws and
government regulations of any country from or to which the Deposit Materials
may be delivered in accordance with the provisions of this Agreement.
_____________________________________ _____________________________________
Depositor Preferred Beneficiary
By: _________________________________ By: _________________________________
Name: _______________________________ Name: _______________________________
Title: ______________________________ Title: ______________________________
Date: _______________________________ Date: _______________________________
Escrow Agent
By: _________________________________
Name: _______________________________
Title: ______________________________
Date: _______________________________
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EXHIBIT B1
MATERIALS TO BE DEPOSITED
Account Number
Depositor represents to Preferred Beneficiary that Deposit Materials
delivered to Escrow Agent shall consist of the following:
------------------------------------- ----------------------------------------
Depositor Preferred Beneficiary
By: _________________________________ By: _________________________________
Name: _______________________________ Name: _______________________________
Title: ______________________________ Title: ______________________________
Date: _______________________________ Date: _______________________________
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EXHIBIT B2
DESCRIPTION OF DEPOSIT MATERIALS
Depositor Company Name _________________________________________________________
Account Number _________________________________________________________________
Product Name __________________________________________________________ Version
(Product Name will appear as the Exhibit B2 Name on Account History report)
DEPOSIT MATERIAL DESCRIPTION:
Label
Description
of Each
Separate
Quantity Media Type & Size Item
-------- ----------------- -----------
Disk 3.50 or
---
DAT tape mm
---
CD-ROM
---
Data cartridge tape
---
TK 70 or tape
---
Magnetic tape
---
Documentation
---
Other
---
PRODUCT DESCRIPTION:
Environment ____________________________________________________________________
DEPOSIT MATERIAL INFORMATION:
Is the media or are any of the files encrypted? Yes / No
If yes, please include any passwords and the decryption tools.
Encryption tool name __________________________________________________ Version
Hardware required ______________________________________________________________
Software required ______________________________________________________________
Other required information _____________________________________________________
I certify for Depositor that the above described Escrow Agent has inspected and
accepted the above Deposit Materials have been transmitted to Escrow Agent:
materials (any exceptions are noted above):
Signature ___________________________ Signature ___________________________
Print Name __________________________ Print Name __________________________
Date ________________________________ Date Accepted _______________________
Exhibit B2# _________________________
Send materials to: Escrow Agent
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EXHIBIT B3
DESIGNATED CONTACT
Account Number
Notices, deposit material returns and
communications to Depositor Invoices to Depositor should be
should be addressed to: addressed to:
Company Name: __________________ ___________________________________________
Address: _______________________ ___________________________________________
__________________________ ___________________________________________
__________________________ ___________________________________________
Contact: _______________________ Contact: __________________________________
Telephone: _____________________ Telephone: ________________________________
Facsimile: _____________________ P.O.#, if required: _______________________
Pursuant to Section 1.6
Verification Contact: __________ Telephone: ________________________________
Notices and communications to Invoices to Preferred Beneficiary
Preferred Beneficiary should be
addressed to: should be addressed to:
Company Name: __________________ ___________________________________________
Address: _______________________ ___________________________________________
__________________________ ___________________________________________
__________________________ ___________________________________________
Contact: _______________________ Contact: __________________________________
Telephone: _____________________ Telephone: ________________________________
Facsimile: _____________________ P.O.#, if required: _______________________
Requests from Depositor or Preferred Beneficiary to change the designated
contact should be given in writing by the designated contact or an authorized
employee of Depositor or Preferred Beneficiary.
Contracts, Deposit Materials and
notices to Invoice inquiries and fee remittances
Escrow Agent should be addressed
to: to Escrow Agent should be addressed to:
Escrow Agent Escrow Agent
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