Master Confidential Disclosure Agreement - Adaptec Inc. and Roxio Inc.
MASTER CONFIDENTIAL DISCLOSURE AGREEMENT
BETWEEN
ADAPTEC, INC.
AND
ROXIO, INC.
EFFECTIVE AS OF APRIL 1, 2001
<PAGE>
MASTER CONFIDENTIAL DISCLOSURE AGREEMENT
This Master Confidential Disclosure Agreement (the "Agreement") is
effective as of April 1, 2001 (the "Effective Date"), between Adaptec, Inc., a
Delaware corporation ("Adaptec"), and Roxio, Inc., a Delaware corporation
("Roxio"). Adaptec and Roxio are sometimes referred to herein as the "party" or
the "parties."
WHEREAS, the Board of Directors of each of Adaptec and Roxio have
determined that it is in the best interest of Adaptec and its stockholders to
separate Adaptec's existing businesses into two independent businesses;
WHEREAS, as part of the foregoing, Adaptec and Roxio have entered into a
Master Separation Agreement (as defined below), which provides, among other
things, for the separation of certain Roxio assets and Roxio liabilities, the
initial public offering of Roxio stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing; and
WHEREAS, also as part of the foregoing, the parties further desire to enter
into this Agreement to provide for the protection of their Confidential
Information (as defined below).
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article I.
1.1 ANCILLARY AGREEMENTS. "ANCILLARY AGREEMENTS" means the items and
agreements listed in Section 2.1 of the Master Separation Agreement and all
agreements and documents contemplated by such agreements.
1.2 CONFIDENTIAL INFORMATION. "CONFIDENTIAL INFORMATION" means any and all
financial, technical, commercial or other information of Adaptec or Roxio, as
appropriate (whether written or oral), including, without limitation, all
information, notes, client lists and records, reports, analyses, financial
statements, compilations, studies, forms, business or management methods,
marketing data, fee schedules, information technology systems and programs,
projections, forecasts or trade secrets of Adaptec or Roxio, as applicable,
whether or not such Confidential Information is disclosed or otherwise made
available to one party by the other party pursuant to this Agreement.
Confidential Information shall also include the terms and provisions of this
Agreement and any transactions consummated or documents executed by the parties
pursuant to this Agreement. Confidential Information does not include any
information that (i) is or becomes generally available
<PAGE>
to and known by the public (other than as a result of an unpermitted disclosure
directly or indirectly by the Receiving Party or its affiliates, advisors or
representatives); (ii) is or becomes available to the Receiving Party on a
nonconfidential basis from a source other than the Disclosing Party or its
affiliates, advisors or representatives, provided that such source is not and
was not bound by a confidentiality agreement with or other obligation of secrecy
to the Disclosing Party; or (iii) has already been developed, or is hereafter
independently acquired or developed, by the Receiving Party without violating
any confidentiality agreement with or other obligation of secrecy to the
Disclosing Party.
1.3 CONFIDENTIALITY PERIOD. "CONFIDENTIALITY PERIOD" means, (i) with
respect to Confidential Information that is not Highly Confidential Information,
five (5) years, and (ii) with respect to Highly Confidential Information, in
perpetuity, after either (A) the Separation Date with respect to Confidential
Information of the Disclosing Party that is known to or in the possession of the
Receiving Party as of the Separation Date or (B) the date of disclosure with
respect to Confidential Information that is disclosed by the Disclosing Party to
the Receiving Party after the Separation Date.
1.4 DISCLOSING PARTY. "DISCLOSING PARTY" means the party owning or
disclosing the relevant Confidential Information.
1.5 DISPUTES. "DISPUTES" has the meaning set forth in the Master Separation
Agreement.
1.6 DISTRIBUTION DATE. "DISTRIBUTION DATE" has the meaning set forth in the
Master Separation Agreement.
1.7 HIGHLY CONFIDENTIAL INFORMATION. "HIGHLY CONFIDENTIAL INFORMATION"
means Confidential Information that is source code for products that are
commercially released or for which substantial steps have been taken to
commercialization.
1.8 MASTER SEPARATION AGREEMENT. "MASTER SEPARATION AGREEMENT" means the
First Amended and Restated Master Separation and Distribution Agreement dated
February 28, 2001 between the parties.
1.9 PERSON. "PERSON" has the meaning set forth in the Master Separation
Agreement.
1.10 RECEIVING PARTY. "RECEIVING PARTY" means the non-owning party or
recipient of the relevant Confidential Information.
1.11 RESIDUALS. "RESIDUALS" means information retained in the unaided
memory of an individual who has had access to Confidential Information without
conscious attempt by such individual to memorize such information.
1.12 SEPARATION DATE. "SEPARATION DATE" has the meaning set forth in the
Master Separation Agreement.
-2-
<PAGE>
1.13 SUBSIDIARY. "SUBSIDIARY" means with respect to any specified Person,
any corporation, any limited liability company, any partnership or other legal
entity of which such Person or its Subsidiaries owns, directly or indirectly,
more than 50% of the stock or other equity interest entitled to vote on the
election of the members of the board of directors or similar governing body.
Unless context otherwise requires, reference to Adaptec and its Subsidiaries
shall not include the subsidiaries of Adaptec that will be transferred to Roxio
after giving effect to the Separation (as defined in the Master Separation
Agreement).
1.14 THIRD PARTY. "THIRD PARTY" means a Person other than Adaptec, its
Subsidiaries and their respective employees and Roxio, its Subsidiaries and
their respective employees.
1.15 TRANSACTION AGREEMENTS. "TRANSACTION AGREEMENTS" means the Master
Separation Agreement and the Ancillary Agreements.
ARTICLE II
CONFIDENTIALITY
2.1 CONFIDENTIALITY AND NON-USE OBLIGATIONS. During the Confidentiality
Period, the Receiving Party shall (i) protect the Confidential Information of
the Disclosing Party by using the same degree of care, but no less than a
reasonable degree of care, to prevent the unauthorized use, dissemination, or
publication of the Confidential Information as the Receiving Party uses to
protect its own Confidential Information of a like nature, (ii) not use such
Confidential Information in violation of any use restriction in any Transaction
Agreement, and (iii) not disclose such Confidential Information to any Third
Party, except as expressly permitted under this Agreement, in the Transaction
Agreements or in any other agreements entered into between the parties in
writing, without prior written consent of the Disclosing Party.
2.2 DISCLOSURE TO SUBLICENSEES. The Receiving Party has the right to
disclose to its permitted sublicensees portions of Confidential Information as
reasonably necessary in the exercise of the Receiving Party's right to grant
sublicenses that is expressly granted under any Transaction Agreement, subject
to the sublicensee's agreement in writing to confidentiality and non-use terms
at least as protective of the Disclosing Party's Confidential Information as the
provisions of this Agreement.
2.3 CONTRACT MANUFACTURERS AND FOUNDRIES. The Receiving Party has the right
to disclose to its permitted contract manufacturers and foundries portions of
the Confidential Information as reasonably necessary in the exercise of the
Receiving Party's "have made" rights that are expressly granted under any
Transaction Agreement, subject to the contract manufacturer's and foundry's
agreement in writing to confidentiality and non-use terms at least as protective
of the Disclosing Party's Confidential Information as the provisions of this
Agreement.
2.4 RESIDUALS. Notwithstanding any other provision of this Agreement, the
Receiving Party shall be free, and the Disclosing Party hereby grants to the
Receiving Party, except as otherwise provided in this Section 2.4 the right, to
use for any purpose the Residuals resulting from access to or work with the
Confidential Information of the Disclosing Party. The Receiving Party
-3-
<PAGE>
shall have no obligation to pay royalties for any use of Residuals. However,
this Section 2.4 does not grant the Receiving Party any rights under any patents
or copyrights of the Disclosing Party. The preceding sentence shall not operate
to relieve the Receiving Party from paying royalties to the Disclosing Party
under any future patent or copyright license between them.
2.5 COMPELLED DISCLOSURE. If the Receiving Party or any of its respective
Subsidiaries believes that it will be compelled by a court or other authority to
disclose Confidential Information of the Disclosing Party, it shall (i) give the
Disclosing Party prompt and timely written notice so that the Disclosing Party
may take steps to oppose such disclosure, but in any event the Receiving Party
shall not be prohibited from complying with such requirement and (ii) cooperate
with the Disclosing Party in its attempts to oppose such disclosure, provided
that such opposition is reasonable in light of applicable law or regulation. If
the Receiving Party complies with the above, it shall not be prohibited from
complying with such requirements to disclose, but shall cooperate with the
Disclosing Party to take all reasonable steps to make such disclosure subject to
a suitable protective order or otherwise prevent unrestricted or public
disclosure.
2.6 NO RESTRICTION ON DISCLOSING PARTY. Nothing in this Agreement shall
restrict the Disclosing Party from using, disclosing, or disseminating its own
Confidential Information in any way provided that, in so doing, it does not use,
disclose or disseminate any Confidential Information of the Receiving Party.
2.7 NO RESTRICTION ON REASSIGNMENT. This Agreement shall not restrict
reassignment of the Receiving Party's employees.
2.8 THIRD PARTY RESTRICTIONS. Nothing in the Agreement supersedes any
restriction imposed by Third Parties on their Confidential Information, and
there is no obligation on the Disclosing Party to conform Third Party agreements
to the terms of this Agreement.
ARTICLE III
WARRANTY DISCLAIMER
EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL CONFIDENTIAL INFORMATION IS
PROVIDED ON AN "AS IS, WHERE IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES HAS MADE OR WILL MAKE ANY WARRANTY WHATSOEVER WITH RESPECT TO
CONFIDENTIAL INFORMATION, EXPRESS, IMPLIED OR STATUTORY, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
ARTICLE IV
TERM AND TERMINATION
4.1 TERM. This Agreement shall remain in full force and effect unless and
until terminated by the mutual written agreement of the parties.
-4-
<PAGE>
4.2 SURVIVAL. Articles II (with respect to Confidential Information
acquired or disclosed prior to the date of termination), III, V, and VI shall
survive any termination of this Agreement.
ARTICLE V
DISPUTE RESOLUTION
Resolution of any and all Disputes arising from or in connection with this
Agreement shall be exclusively governed by and settled in accordance with the
provisions of this Article V.
5.1 NEGOTIATION. The parties shall make a good faith attempt to resolve any
Dispute arising out of or relating to this Agreement through informal
negotiation between appropriate representatives from each of Adaptec and Roxio.
If at any time either party feels that such negotiations are not leading to a
resolution of the Dispute, such party may send a notice to the other party
describing the Dispute and requesting a meeting of the senior executives from
each party. Within ten (10) business days after such notice of a Dispute is
given, each party shall select appropriate senior executives (e.g., director or
V.P. level) of each party who shall have the authority to resolve the matter and
shall meet to attempt in good faith to negotiate a resolution of the Dispute
prior to pursuing other available remedies. During the course of negotiations
under this Section 5.1, all reasonable requests made by one party to the other
for information, including requests for copies of relevant documents, will be
honored. The specific format for such negotiations will be left to the
discretion of the designated negotiating senior executives but may include the
preparation of agreed upon statements of fact or written statements of position
furnished to the other party. In the event that any Dispute arising out of or
related to this Agreement is not settled by the parties within thirty (30) days
after the first meeting of the negotiating senior executives, either party may
commence litigation with respect to the Dispute. However, except as provided
below in Section 5.2, neither party shall commence litigation against the other
party to resolve the Dispute (i) until the parties try in good faith to settle
the Dispute by negotiation for at least thirty (30) days after the first meeting
of the negotiating senior executives or (ii) until forty (40) days after notice
of a Dispute is given by either party to the other party, whichever occurs
first.
5.2 PROCEEDINGS. Any Dispute regarding the following is not required to be
negotiated prior to seeking relief from a court of competent jurisdiction:
breach of any obligation of confidentiality; infringement, misappropriation, or
misuse of any intellectual property right; or any other claim where interim
relief from the court is sought to prevent serious and irreparable injury to a
party. However, the parties shall make a good faith effort to negotiate such
Dispute, according to Section 5.1, while such court action is pending.
5.3 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the course
of dispute resolution pursuant to the provisions of this Article V with respect
to all matters not subject to such dispute, controversy or claim.
-5-
<PAGE>
ARTICLE VI
MISCELLANEOUS PROVISIONS
6.1 LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY OR ITS
SUBSIDIARIES BE LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL,
CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES, LOST DATA OR LOST
PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE)
ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
6.2 EXPORT RESTRICTIONS. Both parties shall adhere to all applicable laws,
regulations and rules relating to the export of technical data, and shall not
export or reexport any technical data, any products received from Disclosing
Party, or the direct product of such technical data, to any proscribed country
listed in such applicable laws, regulations and rules unless properly
authorized.
6.3 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to Confidential Information. Neither party is required
hereunder to furnish or disclose to the other any technical or other
information.
6.4 INFRINGEMENT SUITS. Neither party shall have any obligation hereunder
to institute any action or suit against Third Parties for misappropriation of
any of its Confidential Information or to defend any action or suit brought by a
Third Party that alleges infringement of any intellectual property rights by the
Receiving Party's authorized use of the Disclosing Party's Confidential
Information.
6.5 ENTIRE AGREEMENT. This Agreement, the Master Separation Agreement, the
other Ancillary Agreements and the Exhibits and Schedules referenced or attached
hereto and thereto constitute the entire agreement between the parties with
respect to the subject matter hereof and shall supersede all prior written and
oral and all contemporaneous oral agreements and understandings with respect to
the subject matter hereof.
6.6 GOVERNING LAW. This Agreement shall be construed in accordance with and
all Disputes hereunder shall be governed by the laws of the State of California,
excluding its conflict of law rules and the United Nations Convention on
Contracts for the International Sale of Goods. The Superior Court of Santa Clara
County and/or the United States District Court for the Northern District of
California, San Jose Division, shall have jurisdiction and venue over all
Disputes between the parties that are permitted to be brought in a court of law
pursuant to Article V above.
6.7 NOTICES. Any notice, demand, offer, request or other communication
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be in writing and shall be deemed effectively given the earlier
of (i) when received, (ii) when delivered personally,
-6-
<PAGE>
(iii) one (1) Business Day after being delivered by facsimile (with electronic
receipt of appropriate confirmation), (iv) one (1) Business Day after being
deposited with a nationally recognized overnight courier service or (v) four (4)
days after being deposited in the U.S. mail, First Class with postage prepaid,
and addressed to the attention of:
IF TO ADAPTEC, INC.:
Adaptec, Inc.
691 S. Milpitas Blvd.
Milpitas, CA 95035
Attention: Vice President and General Counsel
Facsimile No.: (408) 957-7137
with a copy to:
Wilson Sonsini Goodrich & Rosati, Professional Corporation
650 Page Mill Road
Palo Alto, CA 94304-1050
Attention: Henry P. Massey, Jr.
Facsimile No.: (650)-493-6811
IF TO ROXIO, INC.:
Roxio, Inc.
461 South Milpitas Blvd.
Milpitas, CA 95035
Attention: William Christopher Gorog
Facsimile No.: (408) 957-7963
with a copy to:
Gray Cary Ware & Freidenrich LLP
400 Capitol Mall, Suite 2400
Sacramento, CA 95814
Attention: Kevin A. Coyle
Facsimile No.: (916)-930-3201
Adaptec and Roxio may substitute a different address or facsimile number, from
time to time, if such substitute is provided to the intended notice recipient in
writing by notice given in the manner provided in this Section 6.7.
6.8 COUNTERPARTS. This Agreement, including other documents referred to
herein, may be executed in counterparts, each of which shall be deemed to be an
original but all of which shall constitute one and the same agreement.
6.9 BINDING EFFECT; ASSIGNMENT. This Agreement shall inure to the benefit
of and be binding upon the parties hereto and their respective legal
representatives and successors, and
-7-
<PAGE>
nothing in this Agreement, express or implied, is intended to confer upon any
other Person any rights or remedies of any nature whatsoever under or by reason
of this Agreement. This Agreement may be enforced separately by each member of
the Adaptec Group and each member of the Roxio Group. Except as herein
specifically provided to the contrary, neither party may assign this Agreement
or any rights or obligations hereunder, without the prior written consent of the
other party, and any such assignment shall be void; provided, however, either
party (or its permitted successive assignees or transferees hereunder) may
assign or transfer this Agreement as a whole without consent to an entity that
succeeds to all or substantially all of the business or assets of such party to
which this Agreement relates.
6.10 SEVERABILITY. The parties hereto have negotiated and prepared the
terms of this Agreement in good faith with the intent that each and every one of
the terms, covenants and conditions herein be binding upon and inure to the
benefit of the respective parties. Accordingly, if any one or more of the terms,
provisions, promises, covenants or conditions of this Agreement or the
application thereof to any person or circumstance shall be adjudged to any
extent invalid, unenforceable, void or voidable for any reason whatsoever by a
court of competent jurisdiction, such provision shall be as narrowly construed
as possible, and each and all of the remaining terms, provisions, promises,
covenants and conditions of this Agreement or their application to other persons
or circumstances shall not be affected thereby and shall be valid and
enforceable to the fullest extent permitted by law. To the extent this Agreement
is in violation of applicable law, then the parties agree to negotiate in good
faith to amend the Agreement, to the extent possible consistent with its
purposes, to conform to law.
6.11 WAIVER OF BREACH. The waiver by either party hereto of a breach or
violation of any provision of this Agreement shall not operate as, or be
construed to constitute, a waiver of any subsequent breach of the same or
another provision hereof.
6.12 AMENDMENT AND EXECUTION. This Agreement and amendments hereto shall be
in writing and executed in multiple copies via facsimile or otherwise on behalf
of Adaptec and Roxio by their respective duly authorized officers and
Representatives. Each multiple copy shall be deemed an original, but all
multiple copies together shall constitute one and the same instrument.
6.13 AUTHORITY. Each of the parties hereto represents to the other that (a)
it has the corporate or other requisite power and authority to execute, deliver
and perform this Agreement, (b) the execution, delivery and performance of this
Agreement by it have been duly authorized by all necessary corporate or other
actions, (c) it has duly and validly executed and delivered this Agreement, and
(d) this Agreement is a legal, valid and binding obligation, enforceable against
it in accordance with its terms subject to applicable bankruptcy, insolvency,
reorganization, moratorium or other similar laws affecting creditors' rights
generally and general equity principles.
6.14 DESCRIPTIVE HEADINGS. The headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. When a reference is made in this Agreement to
an Article or a Section, such reference shall be to an Article or Section of
this Agreement unless otherwise indicated.
-8-
<PAGE>
6.15 GENDER AND NUMBER. Whenever the context of this Agreement requires,
the gender of all words herein shall include the masculine, feminine and neuter,
and the number of all words herein shall include the singular and plural.
6.16 ADDITIONAL ASSURANCES. Except as may be specifically provided herein
to the contrary, the provisions of this Agreement shall be self-operative and
shall not require further agreement by the parties; provided, however, at the
request of either party, the other party shall execute such additional
instruments and take such additional acts as are reasonable, and as the
requesting party may reasonably deem necessary, to effectuate this Agreement.
6.17 FORCE MAJEURE. Neither party shall be liable or deemed to be in
default for any delay or failure in performance, other than of confidentiality
and use restrictions, under this Agreement or other interruption of service
deemed to result, directly or indirectly, from acts of God, civil or military
authority, acts of public enemy, war, accidents, explosions, earthquakes,
floods, failure of transportation, strikes or other work interruptions by either
party's employees, or any other similar cause beyond the reasonable control of
either party unless such delay or failure in performance is expressly addressed
elsewhere in this Agreement.
-9-
<PAGE>
WHEREFORE, the parties have signed this Master Confidential Disclosure
Agreement effective as of the date first set forth above.
ADAPTEC, INC. ROXIO, INC.
By:_____________________________ By: _____________________________
Name: __________________________ Name: ___________________________
Title: _________________________ Title: __________________________
[SIGNATURE PAGE TO MASTER CONFIDENTIAL DISCLOSURE AGREEMENT]