EXHIBIT 10.9
COMMERCIAL EXPLOITATION RIGHTS AGREEMENT
This Commercial Exploitation Rights Agreement ("Agreement") by and between
PointCast Incorporated ("PCI"), a California corporation with its principal
place of business at 501 Macara Avenue, Sunnyvale, CA 94086 and TransCosmos,
Incorporated ("TCI"), a Japanese corporation with its principal place of
business at Sumitomoseimei Akasaka Bldg., 3-3-3, Akasaka, Minato-ku, Tokyo,
Japan 107, shall be effective as of May 30, 1997 (the "Effective Date").
1. Definitions.
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a. "Commercial Exploitation Rights" shall mean the rights granted under
Section 2 (a-b) below.
b. "Localized PointCast Network" shall mean a localized version of the
PointCast Network, in the Japanese language, whose operations are located in the
Territory, utilizing PCI's technology to broadcast news, information and
advertising content via the Internet or corporate intranets, targeted primarily
to viewers and corporations in the Territory utilizing PCI's client software.
c. "Territory" shall mean Japan.
2. Obligations.
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PointCast
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a. Commercial Exploitation Rights. PCI grants TCI the exclusive right
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during the term of this Agreement to commercially exploit a Localized PCI
Network in the Territory, subject to the terms and conditions of this Agreement.
b. Trademarks. PCI will provide TCI with artwork for the "PointCast" and
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"PointCast Network" trademarks, trade names and related logos (the "Marks") as
set forth in Exhibit A. Subject to the terms and conditions of this Agreement,
PCI grants TCI the nonexclusive right to utilize the Marks in the Territory in
connection with the commercial exploitation rights granted in Section 2(a);
provided, however, that: (i) no names or descriptive words or phrases shall be
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co-joined with the Marks without the prior written consent of PCI; (ii) TCI will
comply with any instruction or requirement issued by PCI with respect to the
appearance and use of the Marks; (iii) TCI shall use the Marks only in a manner
so as to preserve and protect all rights of PCI therein; (iv) TCI shall not
challenge PCI's ownership of the Marks or use or adopt any trademarks which
might be confusingly similar to the Marks; (v) TCI shall take all necessary
steps and pay all related expenses in connection with protecting the Marks as
PCI intellectual property under all applicable trademark, unfair competition or
other laws in the Territory, making all applications in PCI's name, if possible,
or otherwise assigning to PCI the
rights to the resulting marks as soon as possible; and (vi) TCI shall
additionally take all necessary steps and pay all related expenses in connection
with so protecting any new or modified marks created with the approval of PCI
under clause (i) of this Section. All rights in the Marks shall at all times
during the term of this Agreement and thereafter, be and remain the sole
property of PCI. TCI shall have no right to alter or in any way transfer the
Marks, and TCI shall provide PCI with reasonable assistance in any efforts to
prevent or terminate any infringement, unauthorized use or imitation thereof.
c. Commercial Exploitation Rights Support. During the first two (2) years
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of this Agreement, PCI shall use commercially reasonable efforts to assist and
train TCI in the development and implementation of the rights granted under this
Agreement, focusing upon the establishment of an advertising sales force,
content acquisition and development initiatives, software distribution and
circulation-building programs, demographic research and market identification
efforts, establishment of end-user technical support services and other
assistance in establishing effective operational methods within the Territory,
periodically throughout such periods as mutually agreed.
d. Restrictions on TCI. The Commercial Exploitation Rights granted in
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this Agreement may not be sublicensed or transferred to a third party. Such
Commercial Exploitation Rights may be assigned by TCI only in connection with
the assignment of this Agreement in accordance with Section 9(a).
e. Advertising Inventory. PCI shall provide TCI with US $2 million in
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advertising inventory on the U.S. PointCast Network at PCI's prevailing rate
card.
f. Intranet Tools. PCI grants TCI a non-exclusive, non-transferable
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license, for the term of this Agreement, to redistribute at no charge to end
users the PointCast Intranet Tools ("Tools"), as updated and modified from time
to time by PCI in its discretion. TCI shall redistribute the Tools with all
built-in end-user licensing terms intact, and shall not alter such terms.
g. Tools Support. Pursuant to Section 2(c), for the period commencing
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January 1, 1998 through December 31, 1998, PCI shall provide TCI with technical
support and training regarding the Tools on an exclusive basis in the Territory
to facilitate the distribution of the Tools and other PCI products.
TCI
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h. TCI shall make a non-refundable payment to PCI, upon execution of this
Agreement, of US $2 million.
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3. Taxes.
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TCI shall pay any and all sales, use, value added or other taxes, federal,
state or otherwise, however designated, which are levied or imposed by reason of
the transactions contemplated by this Agreement, excluding only taxes based on
PCI's net income. TCI shall hold PCI harmless from all claims and liability
arising from TCI's failure to report or pay any such taxes, duties and
assessments.
4. Ownership.
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Except for the express licenses set forth in Section 2(b), nothing in this
Agreement shall be construed as granting TCI any rights in the patents,
copyrights, trademarks, trade secrets or other intellectual property rights of
PCI.
5. Disclaimer of Warranties.
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ALL RIGHTS, LICENSES AND SERVICES PROVIDED BY PCI UNDER THIS AGREEMENT ARE
PROVIDED "AS IS." PCI PROVIDES NO WARRANTIES, EITHER EXPRESS, IMPLIED,
STATUTORY, OR OTHERWISE, WITH RESPECT TO ANY SUCH RIGHTS, LICENSES OR SERVICES
AND SPECIFICALLY DISCLAIMS ALL IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT.
6. Indemnity.
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TCI agrees to indemnify and hold PCI harmless against any cost, loss,
liability or expense (including attorneys' fees) arising out of third-party
claims against PCI that result from TCI's commercial exploitation of Localized
PCI Networks under this Agreement.
7. Limitation of Liability.
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EACH PARTY AGREES THAT, EXCEPT UNDER SECTION 6 OR IN CONNECTION WITH ANY
INFRINGEMENT OF PCI'S INTELLECTUAL PROPERTY RIGHTS, THE OTHER PARTY'S LIABILITY
FOR DAMAGES ARISING OUT OF THIS AGREEMENT SHALL IN NO EVENT EXCEED ONE MILLION
DOLLARS (US$1,000,000). EACH PARTY FURTHER AGREES THAT, EXCEPT UNDER SECTION 6
OR IN CONNECTION WITH ANY INFRINGEMENT OF PCI'S INTELLECTUAL PROPERTY RIGHTS,
THE OTHER WILL NOT BE LIABLE FOR CONSEQUENTIAL, INCIDENTAL, SPECIAL, INDIRECT,
OR EXEMPLARY DAMAGES ARISING OUT OF THIS AGREEMENT, HOWEVER CAUSED AND UNDER ANY
THEORY OF LIABILITY (INCLUDING NEGLIGENCE), EVEN IF SUCH PARTY HAS BEEN ADVISED
OF THE
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POSSIBILITY OF SUCH DAMAGES. EACH PARTY ACKNOWLEDGES THAT THE AMOUNTS PAYABLE
HEREUNDER ARE BASED IN PART ON THESE LIMITATIONS, AND FURTHER AGREES THAT THESE
LIMITATIONS SHALL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY.
8. Term and Termination.
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a. Effective Date and Term. This Agreement and the licenses granted
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hereunder shall be effective as of the Effective Date and shall continue in
perpetuity unless terminated as set forth in this Section 8.
b. Termination. Either party shall have the right to terminate this
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Agreement and the licenses granted herein effective upon written notice to the
other party upon the occurrence the following events: (i) in the event the
other party fails to comply with any of the terms and conditions of this
Agreement and such default has not been cured within thirty (30) days after
written notice to the other party; (ii) in the event PointCast Japan, L.L.C. is
dissolved; (iii) in the event the Technology and Trademark License Agreement
between PCI and PointCast Japan, L.L.C. is terminated; or (iv) in the event the
other party (A) terminates or suspends its business, (B) becomes subject to any
bankruptcy or insolvency proceeding under any U.S., state or other national or
governmental statute, (C) becomes insolvent or subject to direct control by a
trustee, receiver or similar authority, or (D) has wound up or liquidated,
voluntarily or otherwise.
c. Effect of Termination. The obligations of PCI and TCI in Sections
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2(b)(iv), 3(b), 4, 5, 6, 7, 8 and 9 shall survive termination of this Agreement.
Termination of this Agreement shall not relieve either party for any liability
that accrued prior to such termination.
9. Miscellaneous.
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a. Assignment. All the terms and provisions of this Agreement shall be
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binding upon and inure to the benefit of the parties to this Agreement and to
their respective heirs, successors, assigns and legal representatives, except
that TCI shall not assign its rights under this Agreement without PCI's prior
written consent. Notwithstanding the foregoing, TCI shall be entitled to assign
its rights under this Agreement to PointCast Japan, L.L.C., provided that
PointCast Japan, L.L.C. expressly assumes all of TCI's obligations under this
Agreement. PCI shall be entitled to assign this Agreement to a successor of all
or substantially all of its relevant assets without restriction.
b. Entire Agreement. This Agreement, together with the Exhibits hereto,
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constitutes the entire agreement among the parties with respect to the subject
matter hereof and shall supersede all prior understandings and agreements
between the parties with respect to such subject matter. This Agreement may be
executed in any number of counterparts, each of which
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shall be deemed an original, but all of which together shall constitute one and
the same instrument.
c. Amendment. This Agreement may be amended only by a written instrument
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signed by both parties.
d. Notices. Any and all notices, requests, demands and other
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communications required or otherwise contemplated to be made under this
Agreement shall be in writing and in English and shall be deemed to have been
duly given (a) if delivered personally, when received, (b) if transmitted by
facsimile, upon receipt of a transmittal confirmation, (c) if sent by registered
airmail, return receipt requested, postage prepaid, on the sixth business day
following the date of deposit in the mail or (d) if by international courier
service, on the second business day following the date of deposit with such
courier service, or such earlier delivery date as may be confirmed to the sender
by such courier service. All such notices, requests, demands and other
communications shall be addressed as follows:
(i) If to TCI:
TransCosmos, Incorporated
Sumitomoseimei Akasaka Bldg.
3-3-3, Akasaka, Minato-ku
Tokyo, Japan 107
Attention: Hiroshi Kaizuka
Telephone: 011 81 3 3586 2880
Facsimile: 011 81 3 3584 6079
(ii) If to PCI:
PointCast Incorporated
501 Macara Avenue
Sunnyvale, California 94086
Attention: Jim Wickett
Telephone: (408) 990-7000
Facsimile: (408) 990-7251
or in each case to such other address or facsimile number as the party may have
furnished to the other party in writing.
e. Severability. In the event of the invalidity of any part or
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provision of this Agreement, such invalidity shall not affect the enforceability
of any other part or provision of this Agreement.
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f. Waiver. No waiver by any party of any default in the performance of or
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compliance with any provision herein shall be deemed to be a waiver of the
performance and compliance as to any other provision, or as to such provision in
the future; nor shall any delay or omission of any party to exercise any right
hereunder in any manner impair the exercise of any such right accruing to it
thereafter. No remedy expressly granted herein to any party shall be deemed to
exclude any other remedy which would otherwise be available.
g. Governing Law. This Agreement shall in all respects be governed by the
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laws of the State of California without reference to its principles of conflicts
of laws. The parties hereby agree that all disputes arising out of this
Agreement shall be subject to the exclusive jurisdiction of and venue in the
federal and state courts within Santa Clara County, California. TCI hereby
consents to the personal and exclusive jurisdiction and venue of these courts.
IN WITNESS WHEREOF, the parties have executed this Agreement effective as
of the date first set forth above.
POINTCAST INCORPORATED TRANSCOSMOS, INCORPORATED
By: /s/ Jim Wickett By: /s/ Koki Akuda
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Name: Jim Wickett Name: Koki Akuda
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Title: Sr. V.P. Title: President
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EXHIBIT A TO COMMERCIAL EXPLOITATION RIGHTS AGREEMENT
The following is a listing of marks and logos licensed under Section 2(b) of the
Commercial Exploitation Rights Agreement:
PointCast(TM)
PointCast Network(TM)
The PointCast logo icon is comprised of a purple square containing a white
broadcast tower with a yellow dot in the center. The icon is a square and should
account for one quarter the length of the logo (not including the TM symbol).
For example, if the PointCast logo word is represented as 4 inches long, the
tower icon should be a one inch square.
The PointCast Corporate Signature can appear in either a centered (primary) or
horizontal configuration. The centered configuration is the primary orientation
and should be used whenever possible. The horizontal configuration can be used
when there are size or space limitations. In the centered configuration, the
logotype PointCast (black) should lie centered beneath the tower icon
(purple/yellow). In the horizontal configuration, the logotype should lie to the
right of the purple tower icon. The logo word PointCast may reside without the
icon however, the tower icon may not reside without the logo word PointCast. The
logo word "PointCast" must always be black unless approved by PointCast
Marketing. The tower icon must always appear in the Pantone colors indicated in
the corporate palette unless approved by PointCast Marketing. The clear-space
area should measure at least 1/2x on all sides of the PointCast Corporate
Signature, where x equals the height of the logo icon. Placement of the
trademark symbol (TM) should also appear after the word PointCast.
[EXAMPLE OF POINTCAST LOGO, WITH TOWER ICON ABOVE NAME]
[EXAMPLE OF POINTCAST LOGO, WITH TOWER ICON TO LEFT OF NAME]
The corporate palette is comprised of two colors: Purple is the primary color,
Yellow is the secondary color and Black. The PMS, RGB and CMYK formulas are
listed below. When necessary PointCast Signature can also appear in Black and
White, please make sure the logo icon and the logotype is in black. The dot
above the tower should be white.
PMS RGB CMYK
Purple: 527C 102,0,153 65,85,0,0
Yellow: 116C 255,204,0 0,20,90,0