Client License Agreement - Unwired Planet Inc. and Matsushita Communication Industrial Co. Ltd.
CLIENT LICENSE AGREEMENT
Agreement No.: 000164
This CLIENT LICENSE AGREEMENT (the "Agreement") is entered into as of
January 1, 1999 (the "Effective Date"), by and between UNWIRED PLANET, INC., a
Delaware corporation, having a principal place of business at 800 Chesapeake
Drive, Redwood City, CA 94063 ("UPI"), and MATSUSHITA COMMUNICATION INDUSTRIAL
CO., LTD., a Japanese corporation having a principal place of business at 4-3-1
Tsunasima-higashi, Kouhoku-ku, Yokohama 223-8639 Japan.
RECITALS
WHEREAS, UPI has developed certain proprietary software that enables data
capable wireless telecommunications devices to access certain interactive
applications that provide information and perform certain other functions for
the wireless device end-user. The UPI proprietary software resides in part in
the wireless device as "client" software and in part on a central server
computer in the form of "server" software that is accessed by wireless devices
enabled by UPI proprietary software.
WHEREAS, Licensee desires to obtain license rights to the UPI "client"
software to reside on certain of its wireless mobile telephones and other data
capable wireless devices as herein provided.
NOW, THEREFORE, in consideration of their mutual promises and other
valuable consideration, UPI and Licensee agree as follows:
AGREEMENT
ARTICLE 1: DEFINITIONS
Unless the context otherwise requires, the following terms, for all
purposes of this Agreement, shall have the meanings specified in this Article 1:
"Affiliate" shall mean an entity or entities directly or indirectly
controlling, controlled by, or under common control with, a party to this
Agreement. The term "control" as used in the immediately preceding sentence
means the right to exercise, directly or indirectly, in the case of corporate
entities, fifty percent (50%) or more, or in jurisdictions other than the United
States and Japan, the maximum percentage that a foreign investor may own if less
than fifty percent (50%), pursuant to local laws and regulations, of the stock
or participating shares entitled to vote for the election of directors; and in
the case of non-corporate entities, fifty percent (50%) or more or, in
jurisdictions other than the United States and Japan, the maximum percentage
that a foreign investor may own if less than fifty percent (50%), pursuant to
local laws or regulations, of the equity interest with the power to direct
management policies of such non-corporate entity.
"Airlink Protocol(s)" shall mean the airlink protocol(s) identified in
Exhibit A.
"Client Porting Agreements" shall mean the Client Porting Agreement
entered
[*] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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into by the parties dated September 30, 1997 and the Client Porting
Agreement dated December 30, 1997.
"Confidential Information" shall mean any information, including, without
limitation, the terms of this Agreement, technical information, specifications,
trade secrets, Source Code, confidential information and supporting
documentation, owned by or licensed to a party and its Affiliates hereto that
(i) if in tangible form, is conspicuously labeled as proprietary and/or
confidential at the time of disclosure, and (ii) if in intangible form, is
designated by the Disclosing Party as confidential at the time of disclosure.
Without limiting the generality of the foregoing, "Confidential Information" of
UPI shall include the UPI Client Software and related documentation without any
need for further labeling as confidential, except any UPI Client Software
embedded in Object Code form in Enabled Devices (except to the extent that such
software is covered by an exception set forth in Article 6.2) produced or
distributed by Licensee or its distributors. UPI Client Software embedded in
Object Code form in Enabled Devices shall not be Confidential Information.
Without limiting the generality of the foregoing, the following Licensee
information shall be deemed to be Licensee's Confidential Information (except to
the extent that such information is covered by an exception set forth in Article
6.2) without any need for labeling as confidential or reduction to writing: (1)
Licensee's proprietary software and other technology comprised within an Enabled
Device (other than UPI Client Software embedded in Object Code form in an
Enabled Device), and (2) the existence and nature of Licensee's relationship and
nature of Licensee's relationship with third party suppliers, distributors and
customers.
"Core Modules" shall mean the portion of the UPI Client Software that is
client independent and does not vary materially for different Enabled Devices.
The Core Modules are separate and apart from the Interface Modules.
"Deliverables" shall mean: (i) Object Code version of UPI Client Software
Core Modules (Exportable and Non-Exportable versions); (ii) Source Code version
of UPI Client Software Interface Modules; (iii) documentation for UPI Client
Software; and (iv) UP.Browser Porting Guide.
"Enabled Device(s)" shall mean any wireless device manufactured by, or on
behalf of, Licensee and which has the ability to execute the UPI Client Software
through inclusion of such software in Object Code form or through a hardware or
firmware implementation thereof.
"End User" shall mean any third party user of any Enabled Device
manufactured, sold, or distributed by or for Licensee.
"Exportable" shall mean the Deliverables which may be exported pursuant to
U.S. Government export control licensing restrictions, including U.S. Commerce
Department controls on encrypted technology.
"Improvements" shall mean any modifications, enhancements, patch releases,
updates or improvements after commercial release to any UPI Client Software that
UPI incorporates into any generally available new release or new version of the
UPI Client Software during the Term of the Agreement, except optional
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enhancements or new
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or add-on products that are priced and sold separately by UPI.
"Interface Modules" shall mean the portion of the UPI Client Software that
directly interfaces between the Core Modules and the operating environment of
the Enabled Devices as set forth in the UPI Client Porting Guide.
"Licensee" shall mean Matsushita Communication Industrial Co., Ltd. and its
Affiliates.
"Maintenance Agreement" shall mean the Software Maintenance and Support
Agreement attached hereto as Exhibit B.
"Non-Exportable" shall mean the Deliverables which may not be exported
outside the United States or Canada pursuant to U.S. Government export control
licensing restrictions, including U.S. Commerce Department controls on encrypted
technology.
"Object Code" shall mean any form of computer program which is suitable for
direct execution by a computer and unsuitable to be read and understood by a
person.
"Port" shall mean the incorporation of the UPI Client Software into an
Enabled Device.
"Proprietary Rights" shall mean: (i) any U.S. or foreign patents or any
division, continuation or extension thereof; (ii) all rights, title and interest
in and to all trade secrets and trade secret rights arising under the common
law, state law, federal law and laws of foreign countries; (iii) all copyrights,
and all other literary property and author rights whether or not copyrightable;
and all rights, title and interest in and to all copyrights and copyrighted
interests throughout the world; and (iv) all trademarks, tradenames and service
marks, whether registered or arising under the common law, state law, federal
law and laws of foreign countries and all registration thereof and interests
therein throughout the world and all associated goodwill.
"RSA Software" shall mean software licensed by UPI from RSA Data Security,
Inc. ("RSA") and provided by UPI to Licensee hereunder.
"Source Code" shall mean a presentation 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.
"Support Availability Period" shall have the meaning set forth in Article
5.1.
"Term" of the Agreement shall mean the period of time during which this
Agreement is in effect, as set forth in Article 10.1.
"Territory" shall mean worldwide, except for those countries to which
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export or re-export of UPI Client Software is prohibited under the applicable
United States and Japanese export control laws.
"UPI Client Porting Guide" shall mean a text document describing the
interfaces and implementation between the Core Modules and the operating
environment of the Enabled Devices, as such document may be amended from time to
time at UPI's sole discretion.
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"UPI Client Software" shall mean (i) the software, commercially known as
"UP.Browser", which is the portion of software developed by UPI for execution by
a wireless device which interprets instructions received by such device from a
server, which transmits instructions to a server and which interfaces with such
device hardware to perform functions such as writing output to a screen and
receiving input from a keypad, in compliance with the UPI Client Specifications,
and (ii) Improvements to the software described in (i). UP.Browser Release 4.0
shall substantially conform to the requirements mutually defined by UPI and
AT&T Wireless Services, Inc. UPI Client Software shall also include any releases
prior to UP.Browser Release 4.0 provided to Licensee to facilitate Licensee's
Porting efforts.
"UPI Client Specification(s)" shall mean those specifications for the UPI
Client Software which will be attached as Exhibit A after they have been
defined, and which may be modified from time to time at UPI's sole discretion;
provided, that UPI agrees that it will not modify such specifications solely in
order to avoid having to resolve a substantive warranty or software maintenance
problem.
"UPI Server" shall mean a server computer or interconnected server
computers which is capable of executing the UPI Server Software.
"UPI Server Software" shall mean the software of UPI that resides on the
back-end data processing system that interacts with and supports Enabled Devices
using the UPI Client Software.
ARTICLE 2: LICENSE OF UPI CLIENT SOFTWARE
2.1 License. Subject to the terms and conditions of this Agreement and
the Maintenance Agreement, UPI grants to Licensee a non-exclusive, royalty-free
right and license, in the Territory, to: (i) manufacture, or have manufactured
on Licensee's behalf, Enabled Devices that include all (but not less than all)
of the UPI Client Software in Object Code form or as otherwise implemented in
hardware or firmware incorporated in such Enabled Devices; (ii) use, market,
sublicense and otherwise distribute the Object Code version of the UPI Client
Software solely when embedded or otherwise incorporated into Enabled Devices and
solely for the Airlink Protocol(s); (iii) modify and make derivative works of
the Interface Modules, solely for Porting the UPI Client Software to Enabled
Devices; and (iv) Port the UPI Client Software to Enabled Devices and solely for
the Airlink Protocol(s). The foregoing rights shall not include the right to
modify or create derivative works of the Core Modules. Licensee may grant the
rights set forth in Article 2.1(ii) to distributors, including the right to
license such rights to further distributors.
2.2 Trademarks License. Subject to the terms and conditions of this
Agreement, UPI grants to Licensee a non-exclusive, non-royalty bearing license
to use the trademarks and/or logos set forth in Exhibit D (the "Trademarks") in
the Territory, solely in connection with Licensee's compliance with Article 5.6
of this Agreement and with the marketing of Licensee's Enabled Devices, and
solely in accordance with the terms set forth in Exhibit D. Licensee shall not
remove or
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alter any Trademarks or other proprietary markings of UPI or its suppliers and
licensors. Except as set forth in this Article 2.2 and Exhibit D, Licensee shall
have no right, title or interest in the Trademarks or other trademarks of UPI or
its suppliers and licensors. At no time during or after the term of this
Agreement shall Licensee challenge or assist others to challenge the Trademarks
or the registration thereof or attempt to register any trademarks confusingly
similar to those licensed hereunder.
2.3 Prohibited Activities. Except as expressly permitted under this
Agreement or applicable law, Licensee shall not modify, translate, reverse
engineer, de-compile or disassemble the UPI Client Software or any part thereof
and shall (i) in the event that Licensee distributes Enabled Devices directly to
End Users, notify such End Users of Enabled Devices that they are prohibited
from doing the same, and (ii) in the event that Licensee distributes Enabled
Devices to End Users through third parties, ensure in its agreements with such
third parties that such third parties are prohibited from doing the same, and
that such third parties are required to notify such End Users that such End
Users are prohibited from doing the same.
ARTICLE 3: PORTING
Licensee shall be responsible for Porting the UPI Client Software, and all
Improvements thereto provided by UPI, to Enabled Devices. Provided that
Licensee pays the fees set forth in the Maintenance Agreement in the manner set
forth therein, UPI shall provide the Porting support set forth in Attachment A
to the Maintenance Agreement. The Client Porting Agreements shall terminate as
of the Effective Date of this Agreement.
ARTICLE 4: OWNERSHIP
Licensee acknowledges and agrees that the UPI Client Software, any
Improvements to the foregoing, and any other Confidential Information of UPI,
and any copies thereof, including, without limitation, any Proprietary Rights
relating thereto, are and shall remain the sole property of UPI, its suppliers
and licensors, as applicable; provided, however, that modifications made by
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Licensee to the UPI Client Software by Licensee pursuant to Article 2.1 (iii)
hereto, shall be owned by Licensee and Licensee shall have unlimited rights to
use such modifications separately from the UPI Client Software, subject to UPI's
ownership of the underlying UPI Client Software and other Confidential
Information of UPI. Licensee further acknowledges and agrees that title and
full ownership rights in the UPI Client Software and other Confidential
Information of UPI are reserved to and remain with UPI, its suppliers and
licensors, as applicable. Possession of any tangible materials (such as copies
of Object Code, Source Code, or related documentation) by Licensee shall not
convey upon Licensee any right or license under, or any ownership interest in,
any Proprietary Rights owned or controlled by UPI or its suppliers and licensors
except to the extent any rights are granted hereunder, and Licensee's sole right
to such Proprietary Rights shall be the license rights granted under this
Agreement. Licensee shall not, either during or after the Term of this
Agreement, challenge the validity or ownership by UPI of all Proprietary Rights
in the UPI Client Software, the Deliverables, any Improvements thereto, the UPI
Server, or any Confidential Information of UPI,
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except in the event that Licensee believes in good faith that UPI has violated
UPI's obligations under Article 6.
ARTICLE 5: OBLIGATIONS
5.1 Maintenance and Support. Commencing on the Effective Date, UPI shall
provide software maintenance and support services as described in the
Maintenance Agreement, with respect to the UPI Client Software. Provided
Licensee is current on all fees due under this Agreement and the Maintenance
Agreement, and is otherwise not in breach of the Maintenance Agreement, UPI
shall make at a minimum, Ongoing Support (as defined in the Maintenance
Agreement) available to Licensee for a licensed release of the UPI Client
Software for a period of four (4) years from the date that such release is
superseded by a new release from UPI (the "Support Availability Period" for such
release of the UPI Client Software). After the Support Availability Period for a
licensed release of the UPI Client Software, UPI will either continue to provide
maintenance and support for such release to Licensee under the terms defined in
this Agreement, or UPI will provide Licensee, at no charge, with a copy of the
Source Code of such release of the UPI Client Software, which may be used by
Licensee solely in order to provide maintenance and support to customers of the
Enabled Devices incorporating such release.
5.2 Server Compatibility. UPI undertakes to provide carriers that license
the UPI Server Software, and which are under a current maintenance contract,
with the necessary UPI Server Software and support such that those carriers can
offer compatibility between the version of the UPI Client Software licensed
under this Agreement and applications targeted at this version of the UPI Client
Software for a period of four (4) years from the time that UPI makes a new
release of the UPI Client Software generally available for commercial
deployment.
5.3 UPI Server. Licensee will be entitled to make use of a fully
functional UPI Server situated at UPI's facilities through the UPI Client
Software on Enabled Devices for the sole purpose of testing in connection with
Porting activities contemplated under Article 3.
5.4 Delivery. UPI agrees to use commercially reasonable efforts to
deliver the non-Object Code Deliverables for the UPI Client Software, [*******
***] to Licensee no later than [****************]. As part of the engineering
support services provided with Premium Support as defined in Attachment A of
Exhibit B, UPI will provide Object Code Deliverables to Licensee for integration
on a target device only after Licensee has (i) ported the Interface Modules to
that target device; and (ii) provided to UPI certain information or tools
necessary to create the Object Code Deliverables for integration with the
Interface Modules.
5.5 Compliance Verification. After each Port of the UPI Client Software
to an Enabled Device, Licensee shall send a copy of such Ported UPI Client
Software, a prototype of Licensee's Enabled Device with the Ported UPI Client
Software, and any tools, software, and equipment necessary for verification and
testing to UPI for verification and testing for compliance of such Ported UPI
Client Software with UPI internal standards. UPI will complete such
verification and testing within [**********] days after UPI's receipt of the
foregoing materials. In the event that UPI determines
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that the Ported UPI Client Software does not comply with then-current UPI
standards, then UPI shall provide to Licensee in writing a description of any
non-compliance, and Licensee shall correct such non-compliance prior to
manufacturing Enabled Devices for sale or distribution to End Users. If Licensee
does not receive a written description of an Enabled Device's non-compliance
with UPI's then-current standards within [*********] days after UPI's receipt of
such Enabled Device, then Licensee may manufacture, sell and distribute such
Enabled Device according to the terms of this Agreement. Licensee acknowledges
and agrees that Licensee's license rights under Article 2.1 are subject to
Licensee's compliance with the provisions of this Article 5.5. In no event shall
Licensee undertake the sale or distribution of Enabled Devices that do not
satisfy the compliance verification requirements of this Article 5.5.
5.6 Proprietary Rights Notice.
(a) Splash Screen and Proprietary Notice Requirement. [******************
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**********************], Licensee shall, at all times, display UPI's copyright
notice and RSA's copyright notice on either a single screen or two (2) screens
as contained in the portable Source Code layer of the UPI Client Software
(collectively, the "Copyright Notices") for up to 0.5 seconds upon the first
invocation of the UPI Client Software following each power cycle of the Enabled
Devices (such invocation, including the Copyright Notices, being referred to
herein as the "Splash Screen"). In addition, Licensee shall include UPI's
proprietary notices, and those of UPI's suppliers and licensors, as set forth in
and according to the terms of Exhibit D.
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(d) Reports. Within thirty (30) days after the end of each six (6) month
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period following initial shipment of one (1) or more Enabled Devices [***
************************], Licensee shall furnish to UPI a complete and accurate
statement, with sums denominated in U.S. currency, specifying the total units of
Enabled Devices [*****************************] distributed during such period
and showing all computations of [*********************************] UPI
hereunder. Payments due to UPI for a six (6) month calendar period shall be paid
by Licensee to UPI in U.S. dollars on or before the statement date for such
period.
(e) Audit. Licensee agrees to keep accurate books of account and records
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covering all transactions relating to this Agreement at Licensee's principal
place of business for not less than two (2) years after the expiration or
termination of this Agreement or until any dispute relating to this Agreement
shall have been finally determined, whichever shall be later. No more
frequently than twice each year, an auditor, mutually agreed to by the parties,
operating under a mutually agreeable nondisclosure agreement that protects the
confidentiality of Licensee's information, may upon UPI's written notice to
Licensee and during Licensee's usual business hours audit said books of account
and records and make copies thereof. All audits shall be at the expense of UPI,
except that if the audit reveals that UPI's royalties for all periods covered by
such audit shall have been under-reported by more than five percent (5%) of the
true amount thereof, then Licensee shall pay the cost of the audit in addition
to an amount equal to twice such under-reported amount due.
(f) Licensee understands and agrees that any payments by Licensee pursuant
to this Article 5.6 are [********************************] and will not, either
explicitly or implicitly, convey to Licensee any interest in or to the UPI
Client Software or any other proprietary property of UPI and/or its licensors
beyond the limited license expressly granted herein.
(g) [************************************************] Licensee in all
cases will display the Copyright Notices in the so-called "About Box" on all
Enabled Devices manufactured by or for Licensee hereunder.
5.7 Public Announcements.
(a) License. No later than ninety (90) days after the signing of this
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Agreement, Licensee will issue a press release, in a form which has been
approved by both parties, announcing that Licensee has licensed the UPI Client
Software from UPI.
(b) Compatibility. Prior to the first commercial shipment of any Enabled
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Device hereunder, Licensee will issue a press release, in a form which has been
approved by both parties, announcing that such Enabled Device is compatible with
UPI's UP.Link Server Suite.
ARTICLE 6: CONFIDENTIALITY
6.1 Non-disclosure and Non-use. Each party hereto agrees not to use any
Confidential Information of the other party for any purpose or disclose any
Confidential Information of the other party to any third party for any purpose,
other than to enforce or exercise its rights under this Agreement and perform
its obligations hereunder. Each party hereto shall use the same degree of care,
but no less than reasonable care, to avoid disclosure or use of the Confidential
Information of the other party as such party
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employs with respect to its own Confidential Information of like importance. The
party receiving Confidential Information ("Receiving Party") will restrict the
possession, knowledge, development and use of Confidential Information to its
employees, agents, and subcontractors and its Affiliates' employees, agents, and
subcontractors (collectively, the "Personnel") who have (i) a need to know the
Confidential Information in connection with performing under this Agreement
and/or the Maintenance Agreement, and (ii) entered into written agreements with
the Receiving Party that provide for the protection of the Confidential
Information in a manner consistent with this Agreement. The Receiving Party will
ensure that its Personnel comply with the nondisclosure obligations set forth in
this Agreement. Each party may only use the Confidential Information and other
Proprietary Rights of the disclosing party ("Disclosing Party") as expressly
permitted under this Agreement, and no other license, express or implied, is
otherwise granted to such Confidential Information and Proprietary Rights.
6.2 Exceptions. The provisions of Article 6.1 will not apply to any
information that (i) is or becomes publicly available without breach of this
Agreement; (ii) can be shown by documentation to have been known to the
Receiving Party at the time of its receipt from the Disclosing Party; (iii) is
rightly received from a third party who did not acquire or disclose such
information by wrongful or tortious act; (iv) can be shown by documentation to
have been independently developed by the Receiving Party without reference to
any Confidential Information; or (v) is approved in writing for public release
by the Disclosing Party. Unless expressly permitted hereunder, (A) prior to the
first commercial sale of an Enabled Device, UPI may not, without Licensee's
prior written approval (which shall not be unreasonably withheld), disclose the
fact that this Agreement pertains to operation in a Licensed Airlink Protocol
environment, and (B) neither party may disclose the terms of this Agreement
without the other party's prior written approval, which shall not be
unreasonably withheld. UPI may also disclose the terms of this Agreement to any
prospective investor in or acquirer of UPI; provided, however, that (a) prior to
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the first commercial sale of an Enabled Device, such disclosure shall require
Licensee's prior consent, which shall not be unreasonably withheld, and (b) the
prospective investor or acquirer shall sign a nondisclosure agreement. If the
Receiving Party becomes legally obligated to disclose Confidential Information
by any governmental entity with jurisdiction over it, the Receiving Party will
give the Disclosing Party prompt written notice sufficient to allow the
Disclosing Party to seek a protective order or other appropriate remedy. The
Receiving Party will disclose only such information as is legally required upon
advice of the Receiving Party's legal counsel and will use its reasonable
efforts to obtain confidential treatment for any Confidential Information that
is so disclosed.
6.3 [*********] Nondisclosure Agreement. UPI and Affiliate of the
Licensee have entered into a [*********] Nondisclosure Agreement with [****
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****]. The [*********] NDA shall remain in full force and effect with respect
to trade secret and confidential information disclosed [********], Licensee and
UPI. In the event of a conflict between the terms and conditions of Article 6
and the terms and
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conditions of the [*********] NDA, the [*********] NDA shall govern and control
with respect to Confidential Information disclosed to or from [**]; provided
however, that the terms and conditions of Article 6 shall govern and control
with respect to disclosure of confidential or trade secret information that is
not disclosed to or from [**].
ARTICLE 7: REPRESENTATIONS AND WARRANTIES
7.1 Product Warranty. UPI warrants that, for a period of ninety (90) days
after delivery of the commercially released version of the UPI Client Software
to Licensee, such version of the UPI Client Software (excluding any
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modifications of the Interface Modules by Licensee pursuant to Article 2.1(iii)
hereto) will comply with the applicable UPI Client Specifications published by
UPI and be compatible with the current version release of the UPI Server
Software at the time of delivery of such version of the UPI Client Software to
Licensee.
7.2 Limited Warranty. TO THE MAXIMUM EXTENT PERMITTED BY LAW, AND EXCEPT
AS EXPRESSLY STATED IN THIS AGREEMENT, UPI, ITS SUPPLIERS AND LICENSORS,
DISCLAIM ALL WARRANTIES AND REPRESENTATIONS, WHETHER EXPRESSED OR IMPLIED,
STATUTORY OR OTHERWISE, WITH RESPECT TO THE UPI CLIENT SOFTWARE, THE
DELIVERABLES, OR THE PORTED SOFTWARE, INCLUDING, WITHOUT LIMITATION, THE
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WARRANTIES
ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICE, OR WARRANTIES
CONCERNING THE NON-INFRINGEMENT OF THIRD PARTY RIGHTS. ANY SOFTWARE SECURITY
FEATURES INCLUDED IN THE UPI CLIENT SOFTWARE OR DELIVERABLES ARE PROVIDED "AS
IS" WITHOUT ANY WARRANTY WHATSOEVER. UPI, ITS SUPPLIERS AND LICENSORS EXPRESSLY
DISCLAIM ALL WARRANTIES, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, AS TO ANY
SUCH SECURITY FEATURES, INCLUDING ALL IMPLIED WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.
UPI DOES NOT WARRANT THAT USE OF THE UPI CLIENT SOFTWARE WILL BE UNINTERRUPTED
OR ERROR FREE.
7.3 Additional Warranty. UPI warrants that to its knowledge as of the
Effective Date, the UPI Client Software does not infringe any third party's
Proprietary Rights. If, after the Effective Date, UPI offers a third party
licensing UPI Client Software with [*******************************************
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ARTICLE 8: INDEMNIFICATION
8.1 Indemnification by UPI. UPI agrees to indemnify Licensee from and
against any claim, suit, or proceeding and any damages, liability, or other
expenses (including, but not limited to, reasonable attorneys' fees and court
costs) which arise out of or result from: (i) negligence or wrongful acts of
employees or contractors of UPI while performing the services of UPI hereunder;
(ii) infringement of any third party copyright, trade secret, patent or
trademark rights by the UPI Client Software as delivered to Licensee by UPI, or
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provided, however, that such indemnification shall not apply to any claims which
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arise out of or result from any infringement claim made by any person to the
extent that such claim is based upon: (x) modifications to the UPI Client
Software or RSA Software made by any person or entity other than UPI, its
employees, consultants and agents; or (y) any combination of the UPI Client
Software and/or RSA Software with products of Licensee or any third party, which
combination is the basis for such claim. To the extent that UPI is obligated to
indemnify Licensee under this Article 8.1, Licensee shall (a) notify UPI in
accordance with Article 12.9, immediately upon knowledge of any claim, suit,
action, or proceeding for which it may be entitled to indemnification under this
Agreement; (b) permit UPI to control the defense and settlement of any such
claim; (c) provide reasonable assistance to UPI at UPI's expense, in the defense
of same; and (d) not enter into any settlement agreement or otherwise settle any
such claim without UPI's express prior written consent or request. [**********
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*****] Furthermore, should UPI decide to integrate another security software
other than the RSA Software, UPI agrees to (y) indemnify Licensee to the same
extent it indemnifies Licensee hereunder; and (z) extend any additional third
party intellectual property rights indemnification offered by such new security
supplier.
8.2 Indemnification by Licensee. Except to the extent that UPI is
obligated to indemnify Licensee under Article 8.1, Licensee agrees to indemnify
UPI from and against any claim, suit, or proceeding and any damages, liability,
or other expenses (including, but not limited to, reasonable attorneys' fees and
court costs) which arise out of or result from: (i) negligence or wrongful acts
of employees, contractors, or agents of Licensee; (ii) infringement of any third
party Proprietary Rights by the use, manufacture or distribution of an Enabled
Device; and (iii) any modifications made by Licensee pursuant to Article 2.1.
To the extent that Licensee is obligated to indemnify UPI under this Article
8.2, UPI shall: (a) notify Licensee in accordance with Article 12.9, immediately
upon knowledge of any claim, suit, action, or proceeding for which it may be
entitled to indemnification under this Agreement; (b) permit Licensee to control
the defense and settlement of any such claim; (c) provide reasonable assistance
to Licensee at Licensee's expense, in the defense of same; and (d) not enter
into any
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settlement agreement or otherwise settle any such claim without Licensee's
express prior written consent or request, which consent shall not be
unreasonably withheld. This Article 8.2 represents UPI's exclusive remedy for
breach of third party Proprietary Rights.
8.3 Exclusive Remedy. In the event that UPI receives notification that
the UPI Client Software infringes any Proprietary Right of a third party, UPI
shall, at its option, either: (i) modify the UPI Client Software; or (ii)
obtain a license to such rights as may be required to make the UPI Client
Software non-infringing. If none of the foregoing alternatives are commercially
reasonably available to UPI, or if Licensee is unable, after using its
commercially reasonable efforts, to independently obtain a license as necessary
to avoid such allegedly infringing activity, then Licensee shall discontinue
further manufacture, marketing or distribution of the UPI Client Software and of
Embedded Devices incorporating the UPI Client Software. The provisions of
Article 8.1 and this Article 8.3 represent Licensee's exclusive remedy for
breach of third party Proprietary Rights.
ARTICLE 9: LIMITATION OF LIABILITY
9.1 EXCEPT FOR A BREACH OF ARTICLE 6, IN NO EVENT WILL UPI, ITS SUPPLIERS,
OR LICENSORS BE LIABLE FOR ANY INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES OF ANY
KIND OR NATURE WHATSOEVER, SUFFERED BY LICENSEE, ANY END USER, CUSTOMER, VENDOR
OR ANY DISTRIBUTOR, INCLUDING, WITHOUT LIMITATION, LOST PROFITS, BUSINESS
INTERRUPTIONS, OR OTHER ECONOMIC LOSS ARISING OUT OF THIS AGREEMENT OR THE
MAINTENANCE AGREEMENT OR ANY USE OF OR FAILURE TO BE ABLE TO USE THE
DELIVERABLES, UPI CLIENT SOFTWARE, OR UPI SERVER.
9.2 EXCEPT FOR A BREACH OF ARTICLE 6, IN NO EVENT WILL LICENSEE OR ITS
LICENSORS BE LIABLE TO UPI FOR ANY INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES OF
ANY KIND OR NATURE WHATSOEVER, SUFFERED BY UPI, INCLUDING, WITHOUT LIMITATION,
LOST PROFITS, BUSINESS INTERRUPTIONS OR OTHER ECONOMIC LOSS ARISING OUT OF THIS
AGREEMENT OR THE MAINTENANCE AGREEMENT OR ANY USE OF OR FAILURE TO BE ABLE TO
USE THE DELIVERABLES, UPI CLIENT SOFTWARE, OR UPI SERVER. NOTWITHSTANDING ANY
OTHER PROVISIONS OF THIS AGREEMENT, UPI'S AGGREGATE LIABILITY TO LICENSEE UNDER
THIS AGREEMENT AND THE MAINTENANCE AGREEMENT (OTHER THAN WITH RESPECT TO A
BREACH OF ARTICLE 6) SHALL BE LIMITED TO [************************************
***********************] AND/OR THE MAINTENANCE AGREEMENT [********************
********************************************************************]
NOTWITHSTANDING ANY OTHER PROVISIONS OF THIS AGREEMENT, LICENSEE'S AGGREGATE
LIABILITY TO UPI UNDER THIS AGREEMENT (OTHER THAN WITH RESPECT TO BREACHES OF
ARTICLES 2 AND 6 AND ARTICLE
12
<PAGE>
11.3) AND THE MAINTENANCE AGREEMENT SHALL BE LIMITED TO THE TOTAL AMOUNT TO BE
PAID BY LICENSEE UNDER THIS AGREEMENT AND/OR MAINTENANCE AGREEMENT DURING THE
TWELVE (12) MONTH PERIOD IMMEDIATELY PRECEDING THE FILING OF ANY CLAIM OR
ACTION.
ARTICLE 10: TERM AND TERMINATION
10.1 Term of the Agreement. This Agreement shall become effective as of
the Effective Date and shall remain in effect for a fixed term of four (4) years
(the "Term") thereafter unless terminated earlier pursuant to the provisions of
Article 10. At the end of the Term, this Agreement may be renewed for an
additional one (1) year period upon the mutual written consent of the parties.
Licensee may at any time provide UPI with written notice (the "Licensee Notice")
that Licensee wishes this Agreement to terminate in the manner set forth below
in this Article 10.1. After UPI's receipt of the Licensee Notice, Licensee will
receive Ongoing Support (as defined in the Maintenance Agreement) for the
remainder of the then-current Maintenance Period (as defined in the Maintenance
Agreement), and may elect to receive Ongoing Support during subsequent
Maintenance Periods, subject to the terms and conditions of the Maintenance
Agreement. After UPI's receipt of the Licensee Notice, and provided that
Licensee continues to receive Ongoing Support, (i) Licensee's rights under
Article 2.1 with respect to each release of the UPI Client Software provided by
UPI to Licensee prior to the date on which Licensee sent the Licensee Notice
shall remain in effect for the remainder of the Support Availability Period for
such release, (ii) Licensee shall have no rights under this Agreement to any
future versions or releases of the UPI Client Software (other than rights to
error corrections and other materials provided to Licensee as part of Ongoing
Support), and (iii) after the Support Availability Period for a licensed release
of the UPI Client Software, UPI will, at its option, either continue to provide
maintenance and support for such release to Licensee under the terms defined in
this Agreement for an additional three (3) years, or UPI will provide Licensee,
at no charge, with a copy of the Source Code of such release of the UPI Client
Software, which may be used by Licensee solely in order to provide maintenance
and support to customers of the Enabled Devices incorporating such release.
Notwithstanding the foregoing, (A) this Agreement can be earlier terminated in
accordance with Article 10.2 or as otherwise expressly set forth herein, and (B)
regardless of whether Licensee has sent the Licensee Notice to UPI, this
Agreement shall terminate in the event that Licensee elects to cease receiving
any support under the Maintenance Agreement, or if the Maintenance Agreement is
otherwise terminated pursuant to its terms. Licensee's license rights under
Article 2.1 shall terminate upon termination of this Agreement.
10.2 Termination with Cause. This Agreement may be terminated immediately
by either party (the "Terminating Party") in the event: (i) the other party
breaches any material provision of this Agreement and does not remedy such
breach within sixty (60) days following written notice of such breach from the
Terminating Party; or (ii) the other party enters bankruptcy proceedings,
becomes insolvent, or otherwise becomes generally
13
<PAGE>
unable to meet its obligations under this Agreement.
10.3 Return of Confidential Information. Upon the expiration of this
Agreement pursuant to Articles 10.1 or 10.2, each party shall: (i) return to
the other party or destroy, as requested by the Disclosing Party, the original
and all copies of any Confidential Information of the Disclosing Party and any
summaries or analyses thereof or studies or notes thereon; and (ii) at the
Disclosing Party's request, have one of the officers of the Receiving Party
certify in writing that it: (a) shall not make any further use of such
Confidential Information of the Disclosing Party; (b) shall comply with the
terms of Article 6.1 regarding prohibited use of Confidential Information of the
Disclosing Party; and (c) has complied with its obligations under this Article
10.3. Notwithstanding the foregoing, Licensee shall have the right to keep one
(1) copy of each version of the UPI Client Software (and associated
documentation) provided to Licensee under this Agreement prior to the date of
such expiration or termination, in Object Code form, solely in order to exercise
its rights under Article 10.4(ii) below.
10.4 Survival. The provisions of Articles 1, 4, 5.1 (provide the
applicable fees have been paid), 11 (provided the applicable fees have been
paid), 7, 8, 9, 10.3, 10.4, and 12 of this Agreement shall survive any
expiration or termination of this Agreement; provided, however, that upon such
-------- -------
expiration or termination (i) any End User sublicenses granted pursuant to
Article 2.1, shall remain in effect, and (ii) Licensee shall have a non-
exclusive, non-sublicensable, royalty-free license in the Territory to use one
(1) copy of each version of the UPI Client Software (and associated
documentation) provided to Licensee under this Agreement prior to the date of
such expiration or termination, in Object Code form, solely for the purpose of
supporting such End Users of Enabled Devices, (iii) for a period of six (6)
months after the expiration or termination of Licensee's rights under Article
2.1 to distribute a particular release of the UPI Client Software (other than as
a result of termination of this Agreement by UPI pursuant to Article 10.2),
Licensee and its distributors shall have a nonexclusive, royalty-free license in
the Territory to use, market, sublicense and otherwise distribute Enabled
Devices incorporating such release of the UPI Client Software that are in
Licensee's or its distributors' inventories at the time of such expiration or
termination of Licensee's rights under Article 2.1 to distribute such release,
and (iv) except as set forth above in this Article 10.4, all licenses granted
hereunder shall terminate immediately. Article 6 shall (a) survive the
expiration or termination of this Agreement with respect to the source code of
the UPI Client Software, and (b) survive the expiration or termination of this
Agreement for five (5) years, with respect to any other Confidential
Information.
ARTICLE 11: SOURCE CODE ESCROW
11.1 Escrow. The Technology Escrow Agreement, Account Number 2114064-00009-
1301205 which was executed by and between UPI, Matsushita Mobile Communications
Development Corporation of U.S.A. and DSI Technology Escrow Services ("Escrow
Agent") effective December 10, 1998 ("Escrow Agreement") shall hereby govern
this section upon the execution of Exhibit C, Assignment of Technology Escrow
14
<PAGE>
Agreement. UPI shall also deliver to the Escrow Agent the Source Code for
Improvements provided to Licensee within thirty (30) days after such
Improvements are provided to Licensee. [*************************************
*********************************************************************]
11.2 Release for Failure to Support. In the event Licensee obtains Source
Code for the UPI Client Software pursuant to the release conditions set forth in
Section 21 of the Escrow Agreement, Licensee may use such Source Code solely for
the purpose of providing support to Licensee's and its distributors' End Users;
provided, that such use is subject to termination as set forth in the last
sentence of Section 22 of the Escrow Agreement. Licensee agrees that all rights
in and to any Improvements or other modifications made to the Source Code by
Licensee under this Article 11.2 shall be owned by UPI.
11.3 Conditions to Use of Source Code. The parties agree that any and all
use by Licensee of any Source Code of the UPI Client Software shall be subject
to the following conditions and obligations: Licensee shall (i) use its best
efforts to protect and keep confidential the Source Code, and may disclose the
Source Code only to its employees, agents, and consultants who have a need-to-
know, and who have executed appropriate written agreements with Licensee
sufficient to enable Licensee to comply with the provisions of this Agreement;
(ii) store the Source Code off-line when it is not being used as contemplated
under this Agreement; (iii) install the Source Code on a single network server
which does not have remote telecommunications access enabled; (iv) use password
protection to limit access to all Source Code files to authorized employees,
agents, and contractors who require access to perform their duties under the
terms of this Agreement; (v) make no copies of the Source Code in machine-
readable or human-readable form except as reasonably required to perform the
------
activities permitted under this Agreement; and (vi) store any human-readable
copy of the Source Code in a locked storage area accessible only to authorized
employees who require such access to perform their duties under the terms of
this Agreement.
ARTICLE 12: MISCELLANEOUS
12.1 Force Majeure. Neither party to this Agreement will be liable for
failure to perform any of its obligations hereunder (other than obligations to
make payments) during any period in which such performance is delayed by fire,
flood, war, riot, embargo, organized labor stoppage, earthquake, acts of civil
and military authorities, or any other acts beyond its reasonable control;
provided, however, that the party suffering such delay immediately notifies the
-------- -------
other party of the delay; and provided, further, that either party shall have
-------- -------
the right to terminate this Agreement upon [********] days prior written notice
if the delay of the other party due to any of the above-mentioned causes
continues for a period of [*********] days.
12.2 Controlling Law; Language. This Agreement shall be construed and
interpreted according to the laws of the State of [******] and of the United
States of America, and shall in no event be governed by the UN Convention on
Contracts for the International Sale of Goods. All claims, disputes, or
controversies arising under this Agreement not resolved between the parties
shall be
15
<PAGE>
submitted to binding arbitration by the American Arbitration Association (AAA)
under the rules then in effect. Within thirty (30) days of receipt of the notice
of intent to arbitrate, the parties will agree on one (1) arbitrator
knowledgeable of the law applicable to such disputes. If no arbitrator is
appointed within the time herein provided, or any extension of time which is
mutually agreed upon, the AAA will make the appointment of such an arbitrator
within thirty (30) days of such failure. Such appointed arbitrator will have the
experience and knowledge appropriate to the nature of the dispute between the
parties. The foregoing shall not prevent either party from applying for
injunctive relief from a court of competent jurisdiction. This Agreement is in
the English language only, which language shall be controlling in all respects,
and all versions hereof in any other language shall be for accommodation only
and shall not be binding upon the parties hereto. All communications and notices
to be made or given pursuant to this Agreement shall be in the English language.
12.3 Severability. If any provisions of this Agreement, or application
thereof to any person, place, or circumstance, shall be held by a court of
competent jurisdiction to be invalid, unenforceable, or void, the remainder of
this Agreement and such provisions as applied to other persons, places, and
circumstances shall remain in full force and effect.
12.4 Entire Agreement. This Agreement, including its Exhibits and
Schedules hereto, all of which are incorporated herein, the [*********] NDA as
amended by Amendment No. 1 effective [**********], and the Confidentiality
Agreement dated June 17, 1997, collectively constitute the entire agreement and
understanding between the parties with respect to the subject matter and
supersedes all prior agreements and negotiations, including but not limited to
the Client License Agreement between Matsushita Mobile Communications
Development Corporation of U.S.A. and Unwired Planet, Inc. dated March 30, 1998,
and the Client Porting Agreement between Matsushita Mobile Communications
Development Corporation of U.S.A. and Unwired Planet, Inc. dated December 30,
1997, except prior nondisclosure or confidentiality agreements, which shall
remain in force to the extent consistent therewith.
12.5 Amendment. This Agreement may be amended or supplemented only by a
writing that refers specifically to this Agreement and is signed by duly
authorized representatives of both parties.
12.6 Waiver. Except as otherwise provided in this Agreement, any failure
of any of the parties to comply with any obligation, covenant, agreement or
condition herein may be waived by the party entitled to the benefit thereof only
by a written instrument signed by the party granting such waiver. Such waiver
or failure to insist upon strict compliance with such obligation,
representation, warranty, covenant, agreement or condition shall not operate as
a waiver of, or estoppel with respect to, any subsequent or other failure.
12.7 Export. Licensee acknowledges and agrees that the Deliverables are
subject to certain U.S. export control licensing restrictions, including U.S.
Commerce Department controls on encrypted technology. THIS AGREEMENT IS
EXPRESSLY MADE SUBJECT TO ANY LAWS,
16
<PAGE>
REGULATIONS, ORDERS OR OTHER RESTRICTIONS ON THE EXPORT FROM THE U.S. OF ANY
SOFTWARE THAT INCLUDES OR INCORPORATES ANY ENCRYPTION TECHNOLOGY, INCLUDING THE
UPI CLIENT SOFTWARE AND DELIVERABLES. Licensee agrees to comply at all times
with all applicable United States and foreign government laws and regulations
relating to the exportation of the Deliverables and with all applicable foreign
laws and regulations relating to the importation of the Deliverables, and shall
not export or re-export the Non-Exportable version of the Deliverables from the
U.S. except in strict compliance with U.S. export control laws, including,
------
as applicable, obtaining appropriate licensing authority from the U.S. Commerce
Department prior to any export or re-export of the Non-Exportable version of the
Deliverables, and Licensee shall (i) in the event that Licensee distributes
Enabled Devices directly to End Users, impose the same terms on such End Users,
and (ii) in the event that Licensee distributes Enabled Devices to End Users
through third parties, ensure in its agreements with such third parties that
such terms are imposed upon such third parties, and that such third parties in
turn impose such terms upon End Users. Licensee agrees that its obligations
pursuant to this Article 12.7 shall survive and continue after any termination
or expiration of rights under this Agreement. Upon request from Licensee, UPI
agrees to provide Licensee with reasonable assistance in obtaining the export
approvals required by the U.S. and Japanese government. Furthermore, in the
event Licensee is unable to obtain an export license for any Exportable version
of the Deliverables, UPI will, at no additional fee, provide Licensee with a
modified version of any such Exportable version of the Deliverables that does
not require an export license.
12.8 Federal Government License. Licensee shall in all proposals and
agreements involving Enabled Devices with the United States government or any
contractor of the United States government identify and sublicense the UPI
Client Software as follows: (i) for acquisition on behalf of civilian agencies,
as necessary to obtain protection as "commercial computer software" and related
documentation in accordance with the terms of Licensee's customary license, as
specified in 48 C.F.R. 12.212 of the Federal Acquisition Regulations and its
successor regulations; or (ii) for acquisition by or on behalf of units of the
Department of Defense, as necessary to obtain protection as "commercial computer
software" as defined in 48 C.F.R. 227.7014(a)(I) of the Department of Defense
Federal Acquisition Regulation Supplement (DFARS) and related documentation in
accordance with Licensee's customary license, as specified in 48 C.F.R.
227.7202.1 of DFARS and its successor regulations.
12.9 Notices. All notices required to be sent by either party under this
Agreement shall be deemed given: (i) when sent by confirmed facsimile or
telecopy; (ii) upon receipt, after being sent by commercial overnight courier
with written verification of receipt; or (iii) upon receipt, after being mailed
postage prepaid by certified or registered mail, return receipt requested, to
the party to be notified, at the respective addresses set forth below, or at
such other address which may hereinafter be designated in writing:
Licensee:
Matsushita Communication Industrial Co.,LTD
Personal Communications Division
17
<PAGE>
Software Design Department
4-3-1 Tsunasima-higashi,
Kouhoku-ku, Yokohama 223-8639
Japan
Attention: Mr. Yuuichi Fujii, GM
Phone: +81 45 544 3688
Fax: +81 45 544 3655
UPI:
Unwired Planet, Inc.
800 Chesapeake Drive
Redwood City, CA 94063
USA
Attention: Alan Black, CFO
Phone: (650) 562-0200
Fax: (650) 817-1499
12.10 Independent Contractors. Nothing contained herein or done in
pursuance of this Agreement shall constitute the parties entering upon a joint
venture or partnership, or shall constitute either party the agent for the other
for any purpose or in any sense whatsoever.
12.11 Successors and Assigns. Subject to the provisions of this Article
12.11, this Agreement and the rights and obligations arising hereunder shall be
binding upon and inure to the benefit of the parties and to their respective
successors and assigns. Neither party may assign any of its rights or
obligations hereunder without the prior written consent of the other party,
which consent shall not be unreasonably withheld; provided, that such consent
shall not be required in the event of any assignment to an acquirer of all or
substantially all of the business or assets pertaining to this Agreement of the
assigning party, or to an Affiliate of the assigning party. Any unauthorized
assignment shall be null and void.
12.12 Counterparts. This Agreement may be executed in one or more
counterparts, each of which when executed shall be deemed to be an original, but
all of which taken together shall constitute one and the same instrument.
12.13 Attorneys' Fees. If any action at law or in equity, including
action for injunctive relief, is brought relating to this Agreement or the
breach hereof, the prevailing party in any final judgment or award, or the non-
dismissing party in the event of a dismissal without prejudice, shall be
entitled to the full amount of all reasonable expenses, including all court
costs and actual attorney fees paid or incurred in good faith.
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<PAGE>
IN WITNESS WHEREOF, the parties have entered into this Agreement as of the
Effective Date hereof.
MATSUSHITA COMMUNICATION
UNWIRED PLANET, INC. INDUSTRIAL CO., LTD.
By: /s/ ALAIN ROSSMANN By: /s/ YASUO KATSUNA
------------------------- --------------------------
Name: Alain Rossmann Name: Yasuo Katsuna
----------------------- -------------------------
Title: CEO and Chairman Title: Director, MCI
---------------------- ------------------------
19
<PAGE>
EXHIBIT A
---------
UPI CLIENT SOFTWARE SPECIFICATIONS
[See attached document.]
Licensed Airlink Protocols: GSM, PHS, PDC, IS-136 (TDMA), IS-95 (cdmaOne) [and
successor standards]
Summary of Fees (net of any withholding tax):
Number of Airlink Protocols Premium Support Ongoing Support
(US$ per Maintenance Period) (US$ per Maintenance Period)
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
[*] [******] [******]
------------------------------------------------------------------------------------------
If Licensee requests to license one additional Airlink Protocol (making the
total number of Airlinks equal to [***], UPI will invoice Licensee for an
additional [********] per Maintenance Period which is the difference between
[******] and [******].
20
<PAGE>
EXHIBIT B
---------
SOFTWARE MAINTENANCE AND SUPPORT AGREEMENT
This SOFTWARE MAINTENANCE AND SUPPORT AGREEMENT (the "Maintenance Agreement") is
entered into by and between UNWIRED PLANET, INC., a Delaware corporation, having
a principal place of business at 800 Chesapeake Drive, Redwood City, CA 94063
("UPI"), and MATSUSHITA COMMUNICATION INDUSTRIAL CO., LTD., a Japanese
corporation, having a principal place of business at 4-3-1 Tsunasima-higashi,
Kouhoku-ku, Yokohama 223-8639 Japan ("Licensee").
RECITALS
WHEREAS, UPI and Licensee have entered into that certain Client License
Agreement dated January 1, 1999 (the "License Agreement") pursuant to which UPI
grants Licensee certain licenses and rights to the UPI Client Software; and
WHEREAS, Licensee desires to obtain, and UPI desires to provide,
development support and software maintenance services upon the following terms
and conditions.
NOW, THEREFORE, in consideration of the foregoing and of the obligations
herein made and undertaken, the parties hereto do hereby covenant and agree as
follows:
AGREEMENT
1.0 Definitions.
-----------
Unless otherwise defined herein, all terms herein shall have the same
meanings as defined in the License Agreement.
"Error(s)" shall mean any verifiable and reproducible failure of the
then-current version of the UPI Client Software, or any superseded version of
the UPI Client Software for which UPI will provide maintenance pursuant to
Article 5.1 of the License Agreement, to materially conform to the functions of
such UPI Client Software as described in the applicable UPI Client Software
Specifications. UPI agrees that it will not modify such specifications solely in
order to avoid having to resolve a substantive software maintenance problem.
Notwithstanding anything contained herein to the contrary, the term "Error"
shall not include any failure of the UPI Client Software to materially conform
to such functions as described and set forth in the applicable UPI Client
Software Specifications that: (i) results from Licensee's misuse or improper use
of the UPI Client Software; (ii) does not materially affect the operation and
use of the UPI Client Software; (iii) results from the modification by Licensee
of the UPI Client Software in a fashion not contemplated by this Maintenance
Agreement and the License Agreement; or (iv) results from Licensee's failure to
implement in a timely manner any relevant Improvement provided to Licensee by
UPI.
"Error Correction(s)" shall mean either: (i) a modification, addition, or
deletion from the UPI Client Software that, when made to such software, shall
materially conform such functions of the UPI Client Software to the UPI Client
Software Specifications, or (ii) a procedure
21
<PAGE>
or routine that, when observed in the regular operation of the UPI Client
Software, eliminates the material adverse effect on Licensee of such Error.
"Maintenance Period" shall mean any period commencing upon the Effective
Date of the License Agreement, or any anniversary of such date, and concluding
upon the earlier of (i) twelve (12) months after the commencement of such
period, or (ii) the expiration or termination of this Maintenance Agreement.
"Priority 1 Error" means a catastrophic Error in the UPI Client Software
which a Workaround has not been made available and which causes: (i) an
important component of the UPI Client Software to be unusable, system or product
malfunction due to deficiency or non-usability has frequent or major user impact
or there is a frequent failure of important service; or (ii) data loss or
corruption.
"Priority 2 Error" means a non-catastrophic Error in the UPI Client
Software that: (i) a major failure for an important product feature causes
significant inconvenience to users, system or product malfunction due to
deficiency or non-usability and which has an infrequent or minor user impact; or
(ii) produces results materially different from those described in the
documentation for a major product feature, but which such Error does not rise to
the level of a Priority 1 Error.
"Priority 3 Error" means an Error in the UPI Client Software that: (i)
has minimal current impact on the user; and (ii) causes a malfunction of a non-
essential product feature.
"Ongoing Support" shall have the meaning set forth in Attachment A to
this Exhibit B.
"Premium Support" shall have the meaning set forth in Attachment A to
this Exhibit B.
"Support Services" means the ongoing software maintenance and support for
the UPI Client Software in the form of Premium Support or Ongoing Support that
is to be performed by UPI under this Maintenance Agreement as set forth in this
Exhibit B.
"Workaround" means that UPI has diagnosed the Error and has implemented,
or enabled Licensee to implement a solution that allows the UPI Client Software
to regain functionality and provide major software functions in accordance with
the UPI Client Software Specifications.
2.0 Improvements. During such time as Licensee is receiving Premium Support,
------------
all Improvements of the UPI Client Software will be made available by UPI to
Licensee subject to the provisions of the License Agreement and this Maintenance
Agreement; provided, however, that Licensee is current in its Maintenance and
-------- -------
Support Fee payments as set forth in Article 4.0 of this Exhibit B. During such
time as Licensee is receiving Ongoing Support and is in compliance with the
provisions of the License Agreement and this Maintenance Agreement, Licensee
will be entitled to receive those Improvements specified in the definition of
Ongoing Support in Attachment A to this Exhibit B.
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<PAGE>
3.0 Support Services.
----------------
3.1 Response to Errors. The UPI response to errors described in Articles
3.1 and 3.2 of this Maintenance Agreement is included in Premium Support and
Ongoing Support, as set forth in Attachment A to this Maintenance Agreement.
Notwithstanding anything to the contrary herein, UPI's obligations under Article
3.1 extend only to Errors in commercially released versions of the UPI Client
Software.
3.1.1 Notification of Errors. Licensee agrees to notify UPI as provided
in Article 3.1.2 of this Exhibit B promptly following the discovery of any
Error. UPI agrees to make available to Licensee a listing of known Errors
promptly after execution of the License Agreement and this Maintenance
Agreement, and thereafter to notify Licensee in writing or via electronic mail
promptly following the discovery of any Priority 1 Error or Priority 2 Error.
Further, upon discovery of an Error, Licensee agrees, if requested by UPI, to
submit to UPI a listing of output and any other data that UPI may reasonably
require in order to reproduce the Error and the operating conditions under which
the Error occurred or was discovered. Such listings and data shall be deemed
Licensee's Confidential Information.
3.1.2 UPI Telephone, Electronic and Remote Access Support. During the
term of this Maintenance Agreement, UPI's Technical Assistance Center ("TAC")
shall provide Support Services to Licensee on a twenty-four (24) hour per day,
seven (7) days per week basis. Communications between Licensee and UPI will
include electronic mail, facsimile, telephone and remote access. All urgent
requests for reporting severe Errors as defined hereunder must be submitted to
UPI via the TAC support line, telephone number: [*************]. All non-urgent
requests should be submitted to UPI via electronic mail to: [*************]; or
-
if by facsimile, addressed to: TAC and sent to [*************]. All facsimiles
should be followed-up with an email to confirm receipt by UPI. The foregoing
addresses, telephone numbers and other contact information are subject to change
on reasonable advance notice.
3.1.3 UPI Response to Errors. UPI will provide Support Services to
Licensee to ensure a consistent and high level of operation of the UPI Client
Software. In the event Licensee notifies UPI of an Error in any commercially
released version of the UPI Client Software, UPI will provide Support Services
necessary to correct the Error in accordance with the terms of this Maintenance
Agreement. UPI shall endeavor to correct such Errors using the level of effort
and in accordance with the response times set forth below, and with as little
disruption to Licensee's service as commercially practicable.
a) Priority 1 Errors. UPI shall, within [******] hours of the
-----------------
receipt of notice from Licensee of any Priority 1 Error in a commercially
released version of the UPI Client Software, contact Licensee to verify such
Priority 1 Error and begin a resolution process. Upon UPI's verification of such
Priority 1 Error, UPI will use its commercially reasonable efforts to provide a
Workaround for such Priority 1 Error within [******] business days thereof, and
will use its commercially reasonable efforts to provide an Error Correction for
such Priority 1 Error until such Error Correction is provided. For purposes of
this Maintenance
23
<PAGE>
Agreement, [*****************************************************************
******************************************************************************]
b) Priority 2 Errors. UPI shall, within [*********] hours of the
-----------------
receipt of notice from Licensee of any Priority 2 Error in a commercially
released version of the UPI Client Software, contact Licensee to verify such
Priority 2 Error. Upon UPI's verification of such Priority 2 Error, UPI will
use its commercially reasonable efforts to provide a Workaround for such
Priority 2 Error within [******] business days thereof and will use its
commercially reasonable efforts to provide an Error Correction for such Priority
2 Error for such Priority 2 Error in the next commercial release of the UPI
Client Software.
c) Priority 3 Errors. Within [********************] of UPI's
-----------------
receipt of notice from Licensee of any Priority 3 Error in a commercially
released version of the UPI Client Software and upon UPI's verification of such
Priority 3 Error, UPI will, at its discretion, initiate work to provide an Error
Correction for such Priority 3 Error in the next commercial release of the UPI
Client Software.
3.2 Exclusions from Support Services. Support Services under this Exhibit
B do not cover services for any failure or defect in the UPI Client Software
caused by any of the following:
(i) the improper use, alteration, or damage of the UPI Client
Software by Licensee or persons other than UPI employees; or
(ii) modifications to the UPI Client Software not made by, or on
behalf of, or authorized in writing by UPI.
3.3 Premium Support, Ongoing Support, and Additional Services. During the
first Maintenance Period, Licensee shall receive Premium Support. During each
subsequent Maintenance Period, Licensee shall receive Premium Support, unless at
least thirty (30) days prior to the commencement of such Maintenance Period
Licensee notifies UPI in writing that Licensee wishes to instead receive Ongoing
Support during such Maintenance Period, in which case Licensee shall receive the
requested Ongoing Support during such Maintenance Period. Notwithstanding
anything to the contrary herein, Licensee shall receive Premium or Ongoing
Support hereunder only if Licensee pays all applicable fees as set forth below,
and is not otherwise in breach of the License Agreement or this Agreement. In
addition to the foregoing, UPI will provide to Licensee such additional services
relating to the UPI Client Software not otherwise provided as part of the
Support Services hereunder as may be requested by Licensee from time to time on
terms and conditions and at such rates as may be mutually agreed upon between
the parties.
4.0 Maintenance and Support Fees.
----------------------------=
4.1 Fees. The fees per Maintenance Period, net of any withholding tax,
are set forth in Exhibit A. Notwithstanding anything to the contrary herein,
the fees set forth above in this Article 4.0 of this Maintenance Agreement are
the service fees for the first Maintenance Period, and may be increased by UPI
for any subsequent Maintenance Period by up to [***************] from the
applicable
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<PAGE>
maintenance fees for the prior Maintenance Period. UPI acknowledges that
Licensee has paid all fees for the first Maintenance Period. Furthermore, UPI
shall apply the [*************************************************************
*******************************************************************************
*********].
4.2 Payment Terms. Payment of the first Maintenance Period's fees are due
within thirty (30) days after the Effective Date. Thereafter, fees for each
Maintenance Period shall be paid by Licensee to UPI no later than the
commencement of such Maintenance Period. Notwithstanding the foregoing, Licensee
shall have the right to withhold payment of fees payable by Licensee for
services during such time as UPI is materially in breach of its obligations
hereunder to provide such services. Except as set forth in Article 5.5 of this
Maintenance Agreement, all payments under this Maintenance Agreement are
nonrefundable.
4.3 Japanese Withholding Taxes. UPI agrees that, if any income taxes are
imposed by the Japanese government on the payment to be made under this
Maintenance Agreement, Licensee shall pay UPI the fees as defined in Exhibit A
(the fees listed in Exhibit A are net fees and do not include withholding taxes)
and Licensee shall withhold such amount of taxes and pay the withheld amount to
the Japanese tax authorities to the extent that Licensee is legally required to
do so. Licensee shall submit to UPI the receipt of the tax payment issued by
appropriate Japanese tax authority to avoid double taxation imposed on UPI.
4.4 Billing Information. All invoices required to be sent under this
Maintenance Agreement shall be deemed given: (i) when sent by confirmed
facsimile or telecopy; (ii) three (3) business days after being sent by
commercial overnight courier with written verification of receipt; or (iii) when
received after being mailed postage prepaid by certified or registered mail,
return receipt requested, to the address set forth below, or at such other
address which may hereinafter be designated in writing:
Licensee:
Matsushita Communication Industrial Co.,LTD
Personal communications Division
Accounting Department
4-3-1 Tsunasima-higashi,
Kouhoku-ku, Yokohama 223-8639
Japan
Attention: Mr. Hisashi Shibuya, Accounting Manager
Phone: +81 45 544 3605
Fax: +81 45 544 3652
Email: p00543@plt.mci.mei.co.jp
5.0 Term and Termination.
---------------------
-
5.1 Term of the Maintenance Agreement. This Maintenance Agreement shall
become effective as of the Effective Date of the License Agreement, and unless
earlier terminated pursuant to Article 5.2 of this Maintenance Agreement, shall
terminate upon [*********] days written notice from Licensee.
5.2 Termination with Cause. This Maintenance Agreement may be terminated
immediately by either party in the event: (i) the other party breaches any
material provision of this Maintenance Agreement or the License Agreement and
does not remedy such breach within [*************] following written notice of
such breach from the non-breaching party; or (ii)
25
<PAGE>
the other party enters bankruptcy proceedings, becomes insolvent, or otherwise
becomes generally unable to meet its obligations under this Maintenance
Agreement or the License Agreement.
5.3 Return of Confidential Information. Upon termination or expiration of
this Agreement pursuant to this Article 5.0 each party shall return the other
party's Confidential Information and other materials as provided in Article 10.3
of the License Agreement.
5.4 Survival. The provisions of Articles 1, 5.3 and 6 of this Maintenance
Agreement shall survive any expiration or termination of this Maintenance
Agreement.
5.5 Refund. [*****************************************************
********************************************************************************
*******************************************************************************
***********************************]
6.0 Miscellaneous.
-------------=
6.1 Other Provisions. The provisions of Articles 1, 4, 5.1, 6, 7, 8, 9,
11, and 12 of the License Agreement shall apply to this Agreement.
IN WITNESS WHEREOF, the parties have entered into this Agreement as of
the date first written above.
MATSUSHITA COMMUNICATION
UNWIRED PLANET, INC. INDUSTRIAL CO., LTD.
By:__________________________ By:____________________________
Name:________________________ Name:__________________________
Title:_______________________ Title:_________________________
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<PAGE>
ATTACHMENT A
PREMIUM SUPPORT AND ONGOING SUPPORT
Licensee may elect to receive any of the following Support Services:
Premium Support: Premium Support is appropriate when Licensee requires:
1. Production (commercially released) versions of the
UP.Browser which will be Ported to any devices (both
Mature Devices and otherwise)
2. Pre-production versions of the UP.Browser (prior to
commercial release) which will be Ported to any devices
(both Mature Devices and otherwise).
Licensee is responsible for completion of all Porting to
Licensee devices. UPI is responsible for providing the
following Porting support services: (i) initial consultation
and planning for the Port; (ii) consultation on user
interface module design; (iii) device layer support
(Interface Modules); (iv) support for compiling and linking
object or shrouded source code (Core Modules); (v) debugging
support; and (vi) compliance verification.
For each Airlink Protocol, UPI Device Engineering will
provide:
1. Preliminary releases of UP.Browser porting documentation
and porting kits, in addition to Improvements to
UP.Browser versions as they are made commercially
available.
2. Electronic mail, telephonic, remote and facsimile
engineering support, as required, to assist Licensee
completion of the Port(s) with response times based on
phase of Licensee development for up to a total of [****
************] hours per year. For additional support,
Licensee will pay [**************************] per hour.
3. On-site engineering support (not to exceed [***********
***] per year), as required, to assist Licensee
completion of the Port(s).
4. Single engineering point of contact for technical and
Porting issues. [******************************
********************************************]
5. [*******************************************************
*****]
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<PAGE>
6. Single point of contact in UPI product management for
consultation on product features, planning,
customization, and similar issues.
7. Additional on-site engineering support is available for
time and materials with [***************] advance notice.
In addition to the foregoing, UPI will provide the following
maintenance support through its UPI Technical Assistance
Center for Enabled Devices which have passed UPI compliance
verification in accordance with Article 5.5 of the Agreement
and are made available for sale by Licensee. Maintenance
support is provided on a 24x7 basis and consists of:
1. Access to UP.Link services operated by UPI.
2. Telephonic, electronic and remote access to UPI Technical
Assistance Center for identification and verification of
Errors in the UPI Client Software in such Enabled
Devices.
3. Correction of errors in a commercially released version
of the UPI Client Software with response times based on
specified priority classifications for resolution of
Errors in the UPI Client Software as specified in
Articles 3.1 and 3.2 of the Maintenance Agreement.
4. Notification by UPI of Priority 1 Errors and Priority 2
Errors in the UPI Client software.
Ongoing Support: Ongoing Support is provided by UPI Technical Assistance
Center and is available for Enabled Devices which have
passed UPI compliance verification in accordance with
Article 5.5 of the License Agreement, after Licensee elects
not to receive Premium Support (i.e., porting of UPI Client
Software and upgrades is terminated, but Enabled Devices may
continue to be distributed). Maintenance support is provided
on a 24x7 basis and consists of:
1. Access to UP.Link services operated by UPI.
2. Telephonic, electronic, and remote access to UPI
Technical Assistance Center for identification and
verification of Errors in the UPI Client Software in
Enabled Devices.
3. Correction of Errors in commercially released versions of
the UPI Client Software with response times based on
specified priority classifications for resolution of
Errors in the UPI Client Software in Enabled Devices, as
specified in Articles 3.1 and 3.2 of the Maintenance
Agreement.
4. Notification by UPI of known Priority 1 and Priority 2
Errors in the UPI Client Software.
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<PAGE>
EXHIBIT C
ASSIGNMENT OF TECHNOLOGY ESCROW AGREEMENT
This assignment is made January 1, 1999 by Matsushita Mobile Communications
Development Corporation of U.S.A. ("Assignor"), Matsushita Communication
Industrial Co., Ltd. ("Assignee") and DSI Technology Escrow Services ("DSI"),
and is made with reference to the following facts:
A. DSI, Unwired Planet, Inc. ("Depositor") and Matsushita Mobile Communications
Development Corporation of U.S.A. ("Preferred Registrant") entered into a
Technology Escrow Agreement ("Agreement"), Account Number: 2114064-00009-
1301205.
B. Pursuant to the Agreement, Depositor deposited with DSI certain proprietary
information and rights for retention and controlled access under conditions
specified therein.
C. Assignor is in the process of, or has transferred its rights in the Agreement
to Assignee.
D. Pursuant to such transfer, Assignor desires to assign all of its rights and
obligations in the Agreement to Assignee.
NOW THEREFORE, in consideration of the mutual promises and covenants to be kept,
maintained and performed by the parties hereto, the parties agree as follows:
1. Assignor does hereby assign to Assignee all of its rights and obligations
arising from and relating to the Agreement.
2. Assignee acknowledges that it has read and understands all of the terms and
conditions of the Agreement and hereby accepts the assignment of all of the
rights and obligations of the Agreement and adopts all of the terms and
provisions thereof.
3. DSI will have the right, but not the obligation, to notify the parties of
this Assignment. If required, Assignor and Assignee may have the obligation to
notify the parties to this Agreement to obtain their consent to this Assignment.
Matsushita Mobile Communications Development By:_____________________________
Corporation of U.S.A.
Title:__________________________
Matsushita Communication Industrial Co., Ltd. By:_____________________________
Title:__________________________
DSI Technology Escrow Services By:_____________________________
Title:__________________________
Unwired Planet, Inc. By:_____________________________
Title:__________________________
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<PAGE>
EXHIBIT D
UPI AND THIRD PARTY PROPRIETARY NOTICES
[POWERED BY UP & UNWIRED PLANET(TM) LOGOS] Powered By UP
--------------------------------------------------------------------------------
1.1 GENERAL UPI TRADEMARK REQUIREMENTS
Licensee may use the "Powered By UP" logo as a powerful marketing tool for
Licensee's Enabled Device. The "Powered by UP" logo must be used in accordance
with the following provisions: (i) the "Powered By UP" logo may only be used in
direct connection with the UPI Client Software, and should not be used to claim
general corporate affiliation with UPI, (ii) the size of the logo shall never be
reproduced in sizes less than 0.75 inch wide, (iii) the logo must appear in a
minimum of two colors (Black and UPI Green), (iv) the logo must always be
reproduced from original artwork and in accordance with official reproduction
guidelines, as provided and defined by UPI Marketing Communications, (v) the
(TM) symbol is embedded in the official artwork itself, and may not be removed.
Always use the (TM) symbol with any UPI trademark, (vi) the logo should not
appear on products or services that do not directly pertain to technology
licensed from UPI, (vii) official artwork (in a number of different file
formats--.GIF, .TIFF, .EPS, etc.--and color applications--B&W, PMS, CMYK, etc.)
and reproduction guidelines for the logo trademark may be requested from UPI
Marketing Communications, (viii) any deviation from these requirements, as
outlined herein, must be pre-approved by the UPI Marketing Communications and
Legal departments.
1.2 MANDATORY USE OF THE "POWERED BY UP" LOGO
The "Powered By UP" logo must appear on the exterior of Licensee-defined product
box or packaging (does not apply for custom product box or packaging specified
by a Licensee's customer) for Enabled Devices, and the logo must appear in
product information sheets included in the product box.
1.3 DISCRETIONARY USE OF THE "POWERED BY UP" LOGO
The "Powered By UP" logo may appear: (i) in product information sheets and
product brochures that pertain to Licensee's Enabled Devices, (ii) in product
advertising that pertains directly to
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<PAGE>
Licensee's Enabled Devices, (iii) in signage and POP displays that pertain
directly to Licensee's Enabled Devices, (iv) in any custom packaging or box
containing the Enabled Device.
[LOGO OF RSA(TM) ENCRYPTION ENGINE]
2.1 GENERAL RSA TRADEMARK REQUIREMENTS
As a licensee of the UPI Client Software, Licensee may use the "Genuine RSA
Encryption" logo, and are required to identify this logo as a trademark of RSA.
The "Genuine RSA Encryption" logo must be used in accordance with the following
provisions: (i) the size of the logo shall never be reproduced in sizes less
than 0.75 inch wide, (ii) the logo must always be reproduced from original
artwork and in accordance with official reproduction guidelines, as provided and
defined by RSA, (iii) the (TM) symbol is embedded in the official artwork
itself, and may not be removed, Licensee must always use the (TM) symbol with
any RSA trademark, (iv) artwork may be requested from Unwired Planet Marketing
Communications department.
2.2 MANDATORY USE OF THE "GENUINE RSA ENCRYPTION" LOGO
If the RSA Software is included in an Enabled Device, then the "Genuine RSA
Encryption" logo must appear on the exterior of Licensee-defined product box or
packaging (does not apply for custom product box or packaging specified by a
Licensee's customer) for such Enabled Devices, and the logo must appear in
product information sheets included in the product box.
2.3 DISCRETIONARY USE OF THE "GENUINE RSA ENCRYPTION" LOGO
The "Genuine RSA Encryption" logo may appear: (i) in product information sheets
and product brochures that pertain to Licensee's Enabled Devices, (ii) in
product advertising that pertains directly to Licensee's Enabled Devices, (iii)
in signage and POP displays that pertain directly to Licensee's Enabled Devices,
(iv) in any custom packaging or box containing the Enabled Device.
31