CONFIDENTIAL
EXHIBIT 10.13
_______________________________________________________
TECHNOLOGY DEVELOPMENT AND LICENSE
AGREEMENT
by and between
INTERTRUST TECHNOLOGIES CORPORATION
and
UNIVERSAL MUSIC GROUP, INC.
_______________________________________________________
______________________________
APRIL 13, 1999
______________________________
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL
1. Definitions and Rules of Construction......................................... 1
1.1 Definitions.............................................................. 1
1.2 Rules and Construction................................................... 11
2. ADDITION OF AUTHORIZED VENTURES............................................... 12
2.1 Addition of Authorized Ventures.......................................... 12
2.2 Interpretation of Definitions............................................ 15
3. TECHNOLOGY ACCESS AND SUPPORT................................................. 15
3.1 Technology Access........................................................ 16
3.2 Training, Assistance and Technical Support............................... 16
3.3 Additional Assistance; Further Support................................... 18
4. UNIVERSAL LICENSES and RESTRICTIONS........................................... 18
4.1 License Grant and Option................................................. 18
4.2 License to InterTrust Trademarks......................................... 19
4.3 Limited License to Clearinghouse Functions............................... 19
4.4 No Additional Licenses................................................... 20
4.5 General Restrictions..................................................... 20
5. USE OF CONTRACTORS; UNIVERSAL SUPPORT AND ADDITIONAL COVENANTS............... 20
5.1 Use of Contractors....................................................... 20
5.2 Universal Support of InterTrust Technology............................... 21
5.3 Notices and Branding..................................................... 24
5.4 InterTrust Trademarks.................................................... 26
5.5 Universal's Use of Universal Trademarks on Universal Products............ 27
5.6 Universal Trademarks..................................................... 27
5.7 Translation of Material in Foreign Languages............................. 28
6. LICENSE FEES AND PAYMENT TERMS................................................ 28
6.1 Fees and Royalties....................................................... 28
6.2 [*]...................................................................... 29
6.3 Payment Procedure........................................................ 30
6.4 Currency................................................................. 30
6.5 Taxes.................................................................... 30
6.6 Interest................................................................. 30
6.7 Audit.................................................................... 31
7. PROPRIETARY INFORMATION AND OWNERSHIP......................................... 31
7.1 InterTrust Ownership..................................................... 31
7.2 Universal Ownership...................................................... 31
7.3 Universal License to InterTrust.......................................... 32
8. JOINT ACTIVITIES AND [*]...................................................... 32
8.1 Joint Press Release...................................................... 32
8.2 Promotion and Marketing.................................................. 33
8.3 Technology Advisory Committee............................................ 33
8.4 [*]...................................................................... 33
9. CONFIDENTIALITY............................................................... 34
9.1 Classification of Technology and Documents For Confidentiality Purposes.. 34
9.2 InterTrust Information................................................... 34
9.3 Universal Information.................................................... 36
9.4 Exceptions............................................................... 37
9.5 Confidentiality of Agreement and Publicity............................... 37
9.6 Confidentiality of Payments, Audit and Certification Testing............. 38
9.7 NDA...................................................................... 38
10. REPRESENTATIONS AND WARRANTIES................................................ 38
10.1 Representations and Warranties of Both Parties........................... 38
10.2 Representations and Warranties of InterTrust............................. 39
10.3 Limitation............................................................... 39
10.4 Reporting Covenants...................................................... 39
11. INDEMNIFICATION AND REMEDIES.................................................. 39
11.1 Indemnification.......................................................... 39
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL
11.2 Cumulative Remedies...................................................... 41
11.3 Equitable Remedies....................................................... 41
12. EXCLUSION OF DAMAGES.......................................................... 41
13. TERM AND TERMINATION.......................................................... 42
13.1 Agreement................................................................ 42
13.2 Events of Termination.................................................... 42
13.3 Effect of Termination.................................................... 44
13.4 Survival................................................................. 45
14. MISCELLANEOUS................................................................. 45
14.1 Governing Law............................................................ 45
14.2 Venue and Jurisdiction................................................... 45
14.3 Compliance with Law and Export Controls.................................. 45
14.4 Amendment or Modification................................................ 46
14.5 No Assignment............................................................ 46
14.6 Notices.................................................................. 46
14.7 Waiver................................................................... 47
14.8 No Third Party Beneficiaries............................................. 47
14.9 No Agency................................................................ 47
14.10 Severability............................................................. 47
14.11 Counterparts; Facsimiles................................................. 47
14.12 Force Majeure............................................................ 47
14.13 Entire Agreement......................................................... 47
CONFIDENTIAL
EXHIBITS
A InterTrust Technology Estimated Product Deliverables
B InterTrust Specifications
C Trademarks
D Authorized Development Venture Signature Page
Authorized Clearinghouse Venture Signature Page
E Screening Procedures
F InterTrust Terms
G Product Legends and Notices
H InterTrust Mark Denoting Compliance
I Form of InterTrust Confidentiality Agreements
J [*]
K Joint Press Release
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
CONFIDENTIAL
TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
THIS TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT (this "Agreement") is made and
---------
entered into as of the ___ day of April, 1999 (the "Effective Date") by and
--------------
between: INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), with offices at 460
----------
Oakmead Parkway, Sunnyvale, California; and UNIVERSAL MUSIC GROUP, INC.
("Universal,"), with offices at 70 Universal City Plaza, Universal City,
---------
California (each of InterTrust and Universal a "Party" and collectively the
-----
"Parties"), with reference to the following:
-------
RECITALS
A. InterTrust has developed and is continuing to develop a general purpose
architecture and technologies for, among other things, rights protection
and event management related to electronic commerce, including securely
managing electronic information delivery, use, and usage consequences.
Universal is involved in, among other things, the creation, publishing and
distribution of music content (and technology related thereto).
B. Universal desires to obtain a license from InterTrust to use, among other
things, certain InterTrust Technology so that Universal can: (i) with
respect to music content, develop and deploy computer software player
applications for managing music content distribution; (ii) upon exercise of
an option to expand the music content to include certain other
entertainment content, develop and deploy Content Management applications
to support a variety of Universal entertainment businesses; and (iii)
perform Clearinghouse Function services in the manner set forth herein.
C. As set forth herein, the Parties mutually desire that Universal become an
InterTrust Business Partner and offer products and services within the
music field, and optionally, other content fields using InterTrust
Technology.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants contained herein, and
for other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the Parties agree to the following terms and conditions:
1. DEFINITIONS AND RULES OF CONSTRUCTION.
1.1 Definitions. In addition to the other capitalized terms defined
-----------
elsewhere in this Agreement, the following terms shall have the meanings set
forth below:
"Added InterTrust Marks" shall have the meaning set forth in Section
----------------------
5.4(a).
"[*]" shall have the meaning set forth in Section 6.1(a).
-----------------
"Agent(s)" shall have the meaning set forth in Section 9.2(a).
--------
"Application Product(s)" means any application software for use in the
----------------------
Entertainment Field, including but not limited to a music player, that: (i) is
developed by (or for) Universal hereunder using InterTrust Technology and/or
Modified Technology solely to directly Manage end-user interaction with, and
end-user administration of, Content; (ii) directly contains or incorporates
InterTrust Technology solely in the form of Authorized Application Software
and/or Modified Technology in Object Code and/or Source Code in accordance with
the licenses granted by InterTrust to Universal hereunder; (iii) is in
Compliance with InterTrust Specifications; and (iv) is not enabled to perform
any Clearinghouse Functions or to permit the performance of Clearinghouse
Functions by any Person other than an Authorized Clearinghouse Provider except
(and solely except) as directly relates to permitting a specific end-user and/or
an
Universal/InterTrust Agreement _______/_______
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
1
CONFIDENTIAL
Authorized Clearinghouse Provider, as appropriate, to pay bills on their behalf
and/or otherwise direct, review, and/or receive such end-user's usage history
information, or review and/or directly (at least in part) manage such end-user's
specific end-user rights and permissions, but solely as directly authorized and
set-up by, and subject to the direct control of an Authorized Clearinghouse
Provider for, and solely for both such end-user's specific use on a single
InterRights Point and for integrated cooperative operation with Clearinghouse
Functions operated at a remote data center under the direct control of an
Authorized Clearinghouse Provider for the purpose of efficiently providing: (a)
data to such data center for such Authorized Clearinghouse Provider's
Clearinghouse Function operations, and (b) certain Authorized Clearinghouse
Provider's Clearinghouse Functions to operate on such end-user's InterRights
Point on behalf of such Authorized Clearinghouse Provider and/or such specific
single end-user, all in Compliance with InterTrust Specifications.
"Assistance" shall have the meaning set forth in Section 3.2(a).
----------
"Authorized Application Software" means software representations of
-------------------------------
InterTrust Technology in Object Code and/or in Source Code (solely as such
Object Code and Source Code are identified and designated by InterTrust on
Exhibit A as defined herein), that is permitted for distribution as incorporated
in Application Products in accordance with the applicable licenses hereunder,
solely in such form as specified on Exhibit A and in Compliance with InterTrust
Specifications, as defined herein (or as otherwise designated in writing by
InterTrust to Universal or as marked by InterTrust on any tangible medium
representing InterTrust Technology provided to Universal hereunder); provided
--------
that any such designations or markings shall be made and applied by InterTrust
- ----
in a non-discriminatory and consistent manner with respect to all Business
Partners regarding similar products and/or services.
"Authorized Clearinghouse Provider(s)" means any Person(s) that is (are)
------------------------------------
expressly licensed by InterTrust to engage in specified Clearinghouse Function
activities and services in Compliance with InterTrust Specifications, but only
to the extent: (i) of the scope of such license; and (ii) that such license is
valid and in force.
"Authorized Clearinghouse Venture" shall have the meaning set forth in
--------------------------------
Section 2.1(b).
"Authorized Development Venture" shall have the meaning set forth in
------------------------------
Section 2.1(a).
"Authorized Venture" means the Development Venture and/or the
------------------
Clearinghouse Venture, as applicable in the context in which reference is made.
"Business Partner(s)" means any Person (other than a Core Partner) with
-------------------
whom InterTrust enters into an agreement or set of agreements, pursuant to which
InterTrust: (i)(a) directly provides early access to InterTrust Technology prior
to InterTrust's first commercial release of such technology to the general
public, (b) grants a general purpose license to use InterTrust Technology in
software products, applications and services within one or more specific, but
not most, fields, and (c) grants a license to perform Clearinghouse Functions
with no materially greater scope than the license fields granted in Section 4.3
hereof in one or more specific, but not most, fields; or (ii) directly provides
and grants those items of (i)(a) and (i)(b) above, or item (i)(c) above, to a
Person in the Entertainment Field (as defined as of the Effective Date without
exercise of the Option).
"California Venue" shall have the meaning set forth in Section 14.2.
----------------
"Certification Program(s)" shall have the meaning set forth in Section
------------------------
5.2(c)(i).
"Claims" shall have the meaning set forth in Section 11.1(a).
------
"Clearinghouse Function(s)" means any one or more activities including
-------------------------
providing products and/or services resulting therefrom, that use any InterTrust
Technology and/or Modified Technology, and/or use information derived at least
in part from use of such technology, in all instances in Compliance with
InterTrust Specifications to: (i) enable payment fulfillment and/or provision of
any other consideration (including service fees, product fees or any other fees
2
CONFIDENTIAL
and/or charges) based at least in part on a Control Use; (ii) perform audit,
billing, payment fulfillment (and/or provision of any other consideration)
and/or other clearing activities involving more than one Person; and/or (iii)
compile, aggregate, use and/or provide information relating to more than one
Person's use of one or more InterTrust Technology Secure Containers and/or
Content, including Contents of such Secure Containers or any other Content
Managed at least in part using any InterTrust Technology and/or Modified
Technology. Clearinghouse Functions shall include, for example, the use of
InterTrust Technology and/or Modified Technology, and/or use of information
derived at least in part from any use of such technology, for: (a) financial
clearing; (b) providing object registry services and rights, permissions,
prices, and/or other Rules and Controls information for objects managed at least
in part through the use of InterTrust Technology; (c) electronically certifying
information used with or required by Rules and Controls, such as authenticating
identity, class membership and/or other attributes of identity context; (d)
providing information based upon auditing usage, user profiling, and/or market
surveying related to more than one Person's use of one or more InterTrust
Technology Secure Containers and/or Content; and/or (e) employing information
derived from user exposure to Content, such as advertising exposure information.
"Clearinghouse Product(s)" means (and is strictly limited to) any
------------------------
software application for use in the Entertainment Field that: (i) is developed
by (or for) Universal hereunder using InterTrust Technology and/or Modified
Technology; (ii) directly contains or incorporates InterTrust Technology and/or
Modified Technology solely in Object Code and as specified in Exhibit A, all in
accordance with the licenses hereunder; (iii) is enabled to permit the
performance of any Clearinghouse Functions; and (iv) is in Compliance with
InterTrust Specifications.
"Clearinghouse Venture" means a joint venture corporation or limited
---------------------
liability company Controlled by Universal alone or jointly with [*] and/or its
Controlled affiliates, and whose: (i) principal business purpose and activity is
to perform Clearinghouse Functions in the Entertainment Field and in accordance
with the terms and conditions of Section 2.1(b) and other applicable terms of
this Agreement; and (ii) constituent members and/or equity holders who are
Competitive Entities shall neither (a) have access to any InterTrust
Confidential Information or Top Secret Information by virtue of such Person's
involvement in the Clearinghouse Venture, nor (b) Govern, nor participate in any
manner in the Governance of, such corporation or company. Notwithstanding the
foregoing, Clearinghouse Venture shall not have [*] and/or any of its Controlled
affiliates (collectively, [*]) as a constituent member, equity holder, or
otherwise as a participant in the Clearinghouse Venture.
"Co-Branded" shall have the meaning set forth in Section 5.3(c).
----------
"Compliance," "Compl[y][ied]" or "Compliant" means fully (and without
----------- ------------- ---------
exception) consistent with and fully conforming to all applicable portions of
the InterTrust Specifications (as set forth in Section 5.2(b) hereof). A
Universal Product and/or any associated service that has not been certified to
have passed any required certification tests in the manner set forth in Section
5.2(c) hereof and/or that does not satisfy the preceding sentence hereof shall
be deemed non-Compliant with InterTrust Specifications.
"Compliant Product" shall have the meaning set forth in Section
-----------------
5.2(c)(iii).
"Commerce 1.1" means the software described in Exhibit A that
------------
incorporates InterTrust Technology, as provided by InterTrust to Universal
consistent herewith.
"Competitive Entity" means any Person who deploys and/or provides, or
------------------
positions itself as deploying and/or providing, Other Technology products and/or
associated services to other Persons. For purposes of this definition, the
development, marketing and distribution of Pre-Authorized Other Technology by
[*] and its Controlled affiliates (collectively, [*]) or [*] shall not be
construed to make [*] or [*], respectively, a Competitive Entity solely by
virtue of such development, marketing and distribution of Pre-Authorized Other
Technology.
"Compliance Update" shall have the meaning set forth in Section 3.1(b).
-----------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
3
CONFIDENTIAL
"Compromising Event" shall have the meaning set forth in Section
------------------
2.1(d)(ii).
"Confidential Information" shall have the meaning set forth in Section
------------------------
9.1.
"Confidentially Handled Information" shall have the meaning set forth in
----------------------------------
Section 2.1(d)(ii).
"Content(s)" means any digital information representing, for example,
----------
text, graphics, animation, video, digital linear or non-linear motion pictures,
sound and sound recordings, still images, computer programs or executable or
interpretable components, and data. Content shall include, for example, any
electronic representation of: (i) Rules and Controls; and/or (ii) information
derived from the Management of Content.
"Content Transaction" means any event or combination of events: (i)
-------------------
Managed, in whole or in part, through the use of any InterTrust Technology
and/or Modified Technology in Compliance with InterTrust Specifications; and
(ii) in connection with which consideration of any kind (including consideration
directly related to any such event or combination of events) is due and/or
payable at any time to Universal and/or any other one or more Persons, at least
in part, for any (a) initiated, consummated and/or performed sale, rental,
lease, license, vending and/or any other comparable provision of one or more
rights related to Content, and/or (b) any other use of, including any
interaction with, Content (such as access to Content, including production of
modified Content) where one or more rights are provided related to Content
interaction; provided that, the foregoing specifically does not include secure
-------- ----
transaction services that merely provide delivery and/or access to Content and
do not Manage one or more specific rights to purchase, vend, pass along, view,
read, listen, edit (including modify, cut, and/or paste), copy, play, print,
execute, re-distribute, and/or similarly directly otherwise interact with such
Content for a fee and/or the provision of any other consideration by one or more
users, user representatives, and/or proxy payers (such as advertisers paying fee
for user interaction with embedded promotional material).
"Contractor" means any Person, including consultants, who, in
----------
accordance with the provisions of Section 5.1 and other provisions hereof,
enters into an agreement with Universal to develop or assist in the development
of Universal Products for Universal (and/or provide other services directly
relating to this Agreement) and who, in that regard, has access to InterTrust
Technology and/or InterTrust Confidential Information; provided that such
-------- ----
agreement as relates to work being performed by such Contractor for Universal,
and further to any and all InterTrust Confidential Information and/or Top Secret
Information (as may be permitted under Section 9.2(b)): (i) binds such Person to
the applicable terms and conditions of this Agreement; (ii) requires such Person
to perform such work for Universal's exclusive benefit and under Universal's
direct and actual management, control, and supervision; and (iii) stipulates
that as between Contractor and Universal, Universal shall be the exclusive owner
of any work product produced by such Person for Universal (subject to
InterTrust's rights as set forth herein).
"Contractor Agreement" shall have the meaning set forth in Section 5.1.
--------------------
"Control(s)" means having, directly or indirectly, the power or right
----------
to elect the board of directors or similar managing authority and/or generally
direct Persons to, or make, or cause the making of, policies or management
decisions, whether through the ownership of voting securities, by contract or
otherwise. A "Controlled Person" means a Person under the Control of another
-----------------
Person.
"Control Use" means any use of InterTrust Technology and/or Modified
-----------
Technology, but solely in Compliance with InterTrust Specifications, to Manage
Content including initiating and/or otherwise governing any consequence
(electronic, physical or otherwise) related to the use and/or processing of
Content and/or provision of goods or services conveyed by or associated with
such Content. Control Use shall include, for example: (i) metering, auditing,
charging, and/or billing, for access to and/or any other interaction with any
Content; and/or (ii) administering permitted and/or prohibited uses of Content.
4
CONFIDENTIAL
"Core Partner" means any Person with whom InterTrust enters into an
------------
agreement or set of agreements, pursuant to which InterTrust: (i) directly
provides materially early access to InterTrust Technology prior to InterTrust's
first commercial release or provision of such technology to the general public;
(ii) grants a general purpose license to use InterTrust Technology in software
products, applications, and services; and (iii) grants a license to perform
Clearinghouse Functions of a broader scope than granted to Business Partners.
"Core Technology" means those components of InterTrust Technology
---------------
described by InterTrust on Exhibit A as core technologies of such InterTrust
Technology.
"CPI" means the Consumer Price Index published by the U.S. Department of
---
Labor, Bureau of Labor Statistics, or a successor agency.
"Cure Period" shall have the meaning set forth in Section 13.2(a).
-----------
"Customer" means any Person that receives or acquires a Universal Product
--------
directly or indirectly from Universal (as provided hereunder) and/or
participates in an associated service for the purpose of using Content and with
a present intention: (i) to use such product and/or associated service privately
as an end-user, including end-user activity while functioning as a provider of
Content, in any case without any modification whatsoever of such Universal
Product; (ii) to further distribute such Universal Product within the
Entertainment Field without any modification whatsoever to an end-user; or (iii)
to use such Universal Product, without any modification whatsoever, solely
within the Entertainment Field to (a) incorporate Authorized Application
Software into their products to provide an InterRights Point, or (b) develop and
incorporate software components that initiate interface and operation with an
InterRights Point provided by InterTrust Technology; each of which Authorized
Application Software, software components and InterRights Points are Compliant
with InterTrust Specifications. Customer shall not include any Person who has a
present intention to perform any activities in breach of such Person's Customer
Agreement.
"Customer Agreement" shall have the meaning set forth in Section 5.2(d).
------------------
"Default Notice" shall have the meaning set forth in Section 13.2(a).
--------------
"Development Venture" means a joint venture corporation or limited
-------------------
liability company whose: (i) principal business purpose and activity is to
engage in the development and marketing of Application Products and/or other
activities permitted under such corporation's or company's sublicense in
accordance with the provisions of Section 2.1(a); and (ii) constituent members
and/or equity holders who are a Competitive Entity shall neither (a) have access
to any InterTrust Confidential Information or Top Secret Information by virtue
of such party's involvement in the Development Venture, nor (b) Govern, nor
participate in any manner in the Governance of, the Development Venture;
provided that where [*] and [*] access to InterTrust Technology occurs solely
- -------- ----
in the context of Section 2.1(d)(iii) hereof or as otherwise agreed in
writing by Universal and a Designated InterTrust Officer (in each Party's,
-----------------------------
then the provision of discretion, the foregoing subparagraph (b) shall not apply
to [*] and [*].
"Digital Rights Management" means technology that can: (i) stipulate
-------------------------
Rules and Controls for Managing any interest(s) (as related, for example, to
rights and/or obligations) in and/or associated with use of any Content, device
and/or process, including, for example, securely Managing event(s), including
any event process(es), that is/are related to and/or otherwise associated with,
use of, attempted use of, and/or disposition of, any Content and/or digital
event; and (ii) enable the observance of (including, for example, to enforce) at
least a portion of such Rules and Controls through technical means.
"Documentation" means certain English language versions of documentation
-------------
and/or instructions as specifically designated by InterTrust that may assist
Universal in the use of InterTrust Technology (including such documentation that
InterTrust has specifically and in writing identified on Exhibit A as being
suitable for general distribution by Universal to
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
5
CONFIDENTIAL
Customers ("Distributable Documentation")), that InterTrust may from time to
---------------------------
time provide with the InterTrust Technology as identified in Exhibit A (as such
Exhibit and such documentation may be modified in accordance herewith).
"Domain(s)" shall have the meaning set forth in Section 5.2(b)(i).
---------
"Domains of Usage" shall have the meaning set forth in Section 5.2(b)(i).
----------------
"Entertainment Field" means solely the business of publishing, selling,
-------------------
distributing and/or otherwise making available, directly or indirectly, Content
consisting solely of music, sound and sound recordings (including music), and
music video in all forms now known or that hereafter become available (so long
as such music video does not take a form reasonably considered to be a motion
picture, television show, game and/or other comparable such non-video
entertainment form), all of the foregoing for entertainment purposes to the mass
market for use generally by consumers and/or public performance venues. If, but
solely if, Universal effectively exercises the Option pursuant to Section 4.1(b)
hereof, then as of the effective date of the exercise of the Option,
Entertainment Field shall further include entertainment video of all forms (in
addition to music video), electronic games, and linear or non-linear motion
pictures and television shows, all of the foregoing for entertainment purposes
to the consumer mass market for use generally by consumers and/or public
performance venues. All such content may have additional Content (such as
textual materials) associated and co-packaged, co-delivered, and/or otherwise
directly coupled with it, so long as such additional content is directly and
substantially related to the associated entertainment Content, and so long as
such additional content is provided solely in a secondary and/or ancillary
manner. Examples of such additional content associated with music content in
such a secondary and ancillary manner include liner notes and lyrics that often
accompany CDs, and promotional and/or background material, including comparable
additional content located on websites reached by electronic links on the
Internet providing additional merchandising opportunities.
"Event of Termination" shall have the meaning set forth in Section 13.2.
--------------------
"Exhibit A" means that Exhibit A attached hereto as of the Effective
---------
Date and as such exhibit is modified from time to time by InterTrust in its
discretion; provided that all such modifications shall be provided to Universal
-------- ----
in writing and made and applied by InterTrust in a non-discriminatory and
consistent manner with respect to all Business Partners regarding similar
products and/or services.
"Govern[ed][ing][ance]" means: (i) having the power or right to Control a
---------------------
Person; and/or (ii) serving as an officer or similar management position of a
Person, or serving as a member of the board of directors of a Person and/or
serving as a member of a similar managing authority that makes, directs, or has
the authority to make or direct such Person to make, policies or management
decisions.
"Gross Commercial Value" means all sums of money and/or the monetary
----------------------
value of any other provided consideration, except for such sums reported as
intercompany revenues in the stand alone financial statements of wholly owned
and controlled Persons of Universal Music Group, Inc. that are eliminated in and
reflected in Universal Music Group Inc's consolidated financial statements
prepared in accordance with generally accepted accounting principles
consistently applied, relating directly to, including deriving directly from:
(i) any Content Transaction; and/or (ii) the performance of any Clearinghouse
Function, including any Clearinghouse Functions supporting a Content
Transaction. Without limiting the foregoing, such consideration shall include
consideration based upon Management of Content and/or information derived at
least in part therefrom, including, for example, any one or more of
consideration: (a) paid by a user as a consequence of, for example, user
exposure to, and/or any other interaction with, Content; (b) paid by a user as a
consequence of the acquisition of one or more rights related to Content; and/or
(c) paid by a proxy or subsidizing payer (such as an advertiser) based upon user
exposure to Content, where, for example but without limitation, after receipt of
information about user exposure to Content, such advertiser pays consideration
based at least in part on value resulting from, due to and/or based on such
exposure. Notwithstanding the foregoing Gross Commercial Value shall not include
any sales, use, value-added or other taxes (except withholding taxes) imposed by
any national, state, local or foreign
6
CONFIDENTIAL
government and paid by Universal as a consequence of clearing a Content
Transaction and/or as a consequence of performing any other activities within
the Clearinghouse Functions.
"Initial Fee" shall have the meaning set forth in Section 6.1(a).
-----------
"Initial InterTrust Marks" shall have the meaning set forth in Section
------------------------
5.4(a).
"Initial Support Period" shall have the meaning set forth in Section 3.2.
----------------------
"Initial Term" shall have the meaning set forth in Section 13.1.
------------
"Intellectual Property Rights" mean all patent rights, copyrights,
----------------------------
trademarks, trade secret rights, and other proprietary rights in any
jurisdiction, and all applications and registrations therefor.
"InterRights Point(s)" means certain InterTrust Technology as set forth
--------------------
on Exhibit A hereto that is a distributed rights and event management, peer,
server, and/or client (i.e., node) that performs, at least in part, as an
----
extension to basic electronic resource (for example, process) management and/or
is integrated within such basic electronic resource management. For the
purposes of this Agreement, the InterRights Point is at least in part integrated
within or otherwise operatively coupled to software applications, operating
systems (and/or extensions thereto), and/or electronic appliances (including
personal computers and consumer electronic devices) for supporting Management of
Content.
"InterTrust Confidential Information" shall have the meaning set forth in
-----------------------------------
Section 9.2(a).
"InterTrust Designated Officer" means: (i) InterTrust's Chairman of
-----------------------------
Board or EVP Corporate Development and General Counsel, or any other InterTrust
officer designated in a written communication to Universal signed by
InterTrust's Chairman of the Board or EVP Corporate Development and General
Counsel; and (ii) solely with respect to specified areas of responsibility,
other InterTrust management personnel designated in a written communication to
Universal signed by InterTrust's Chairman of the Board or EVP Corporate
Development and General Counsel, to act on behalf of InterTrust solely within
such specified areas.
"InterTrust Parties" shall have the meaning set forth in Section 11.1(b).
------------------
"InterTrust Preferred Cure Notice" shall have the meaning set forth in
--------------------------------
Section 13.1.
"InterTrust Property" shall have the meaning set forth in Section 7.1.
-------------------
"InterTrust Specifications" mean the InterTrust Technology
-------------------------
specifications, as established and/or modified by InterTrust in its discretion
and in accordance with Section 5.2(b) hereof, that are provided to Universal.
Such InterTrust Specifications may include: (i) required design criteria for
products and/or associated services employing InterTrust Technology and/or
Modified Technology, including, for example, product and related criteria for
ensuring the architectural and functional integrity, standardization, security
capability, and interoperability of InterTrust-based technology, components,
products and/or associated services (such as, for example, criteria for
electronic environments employing InterTrust Technology for rights and/or other
event related process management, for example the operation of general purpose
InterRights Points that interoperate with InterRights Points distributed or
normally used by other Persons); (ii) procedures and requirements for
installation, initialization, backup, restore and security updates; and (iii)
required certification tests and procedures to verify Compliance of Universal
Products and related services with such InterTrust Specifications. InterTrust
Specifications developed as of the Effective Date are included as Exhibit B
hereto.
"InterTrust Technology" means all or any portion of the technology
---------------------
developed by and/or for InterTrust that is provided, delivered or otherwise made
available by InterTrust to Universal as set forth in this Agreement and as
described in Exhibit A (as defined herein). Such technology directly relates to
distributed rights management systems and methods,
7
CONFIDENTIAL
peer-to-peer trusted event management and/or distributed electronic commerce
administration systems and methods, and includes the Commerce 1.1 product, any
Updates, and New Releases, and such other products referenced in Exhibit A
hereto.
"InterTrust Technology Products" shall have the meaning set forth in
------------------------------
Section 3.1(c).
"InterTrust Terms" shall have the meaning set forth in Section 5.2(d).
----------------
"InterTrust Trademarks" mean InterTrust's names, logos and other marks as
---------------------
listed on Exhibit C hereto, as such Exhibit may be modified by InterTrust from
time to time pursuant to Section 5.4 hereof.
"IP Dispute(s)" shall have the meaning set forth in Section 14.1.
-------------
"IPO" shall have the meaning set forth in Section 9.5.
---
"Joint Press Releases" shall have the meaning set forth in Section 8.1.
--------------------
"Legacy License" shall have the meaning set forth in Section 13.3(b).
--------------
"Legacy Products" shall have the meaning set forth in Section 13.3(b).
---------------
"Licensed Rights" mean all of InterTrust's worldwide Intellectual
---------------
Property Rights (other than trademark rights) in and to the InterTrust
Technology and/or the Modified Technology that InterTrust (during the term of
this Agreement) owns or otherwise has the right to grant licenses of the scope
granted herein (through acquisition or otherwise) without the agreement of, or
requirement for payment (or the granting of other consideration) to, any Person.
"[*] Project" means a pilot trial coordinated by [*], [*] and [*] that
-------
primarily uses [*] technology (currently known as [*]) to electronically
distribute music, with respect to which Universal may participate.
"Major Material Defect" shall have the meaning set forth in Section
---------------------
13.2(d).
"Manage(d)(ing)" or "Management" means any form of governance,
-------------- ----------
regulation, management and/or control, in any way and by any means, of, as
applicable in the context in which reference is made herein: (i) rights,
processes and/or obligations related to or associated with use of (including
access to, transport of, and/or storage of ) Content, including Content related
disposition and/or consequences thereof; and/or (ii) events or event processes
related or associated in any manner with the use of (including access to),
attempted use of, and/or disposition of, Content and/or events, including any
consequences thereof.
"Material Defect(s)" means defect(s) or bug(s) in the InterTrust
------------------
Technology as delivered by InterTrust to Universal and used by Universal,
wherein such defect(s) or bug(s) in such delivered technology cause the
InterTrust Technology to fail to perform: (i) materially in conformance with the
capabilities, characteristics, and characteristic combinations ascribed to
InterTrust Technology products in Exhibit A; and (ii) in a commercially
reasonable manner in accordance with reasonable software industry practices
relating to such capabilities. Material Defect shall not include any defects or
bugs introduced as a result of any modification of (or to) the InterTrust
Technology by Universal or any Person not a Party hereto, unless such
modification was expressly required by InterTrust Specifications and the
implementation of such modification has been expressly approved in writing by an
InterTrust Designated Officer, and then such modification shall be considered a
Material Defect solely to the extent strictly needed to satisfy such InterTrust
Specification requirement.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
8
CONFIDENTIAL
"Modified Technology" means all modifications of, and enhancements and/or
-------------------
additions to, the InterTrust technology, created by (or for, as provided
hereunder) Universal, including without limitation all derivative works of the
InterTrust Technology (or other Modified Technology) as such term is defined in
the U.S. Copyright Act (17 U.S.C. (S) 101 et seq., as amended), but only if such
modifications, enhancements, additions and/or derivative works are permitted
under Sections 4.1(a)(i), 4.1(a)(ii), and elsewhere in this Agreement.
"New Release" means any future release of InterTrust software products
-----------
that is a successor product of the Commerce 1.1 product line provided to
Universal hereunder and: (i) (a) that is generally designated by InterTrust as a
numerical change to the digit(s) to the left of the decimal point for the
version number thereof (e.g., Commerce X.0), or (b) which release is designed to
---
provide new significant and/or materially improved or enhanced functionality
over the predecessor release and that is reasonably considered a successor
product of Commerce 1.1's general purpose platform for distributed peer-to-peer
digital rights management in accordance with reasonable U.S. software industry
practices (for example, Windows 98 is a successor to Windows 95); and (ii) that
InterTrust may develop, or have developed for it, from time to time and make
generally available to its Business Partners.
"New Specification" shall have the meaning set forth in Section
-----------------
5.2(b)(ii).
"New Version" shall have the meaning set forth in Section 5.2(b)(ii).
-----------
"Non-Partnering Venture Event" shall have the meaning set forth in
----------------------------
Section 2.1(d).
"Notices" shall have the meaning set forth in Section 5.3(a).
-------
"Object Code" means the computer executable binary code derived from
-----------
compiled Source Code for execution on a computing system.
"Option" shall have the meaning set forth in Section 4.1(b).
------
"Other Technology" means any Digital Rights Management and/or Secure
----------------
Container technology other than InterTrust technology.
"Other Special Advanced Technology" means any Special Advanced Technology
---------------------------------
other than InterTrust Technology.
"Party Disputes" shall have the meaning set forth in Section 14.1.
--------------
"Person" means any individual, corporation, limited liability company,
------
partnership, firm, joint venture, association, joint-stock company, trust,
unincorporated organization, government body or agency, or other entity.
"Pre-Authorized Other Technology" means, as an exception to Other
-------------------------------
Technology, that specific copy protection technology currently: (i) designed,
developed and employed or specified and planned for deployment by [*] for use in
connection with its [*] digital music initiative; and/or (ii) designed and
developed by [*] for protecting transmission of digital information to DVD
appliances, and currently marketed and known as, the [*], [*], or for copy
protection on pre-recorded DVD audio disks; provided that under no circumstances
-------- ----
shall Pre-Authorized Other Technology be construed to include in any manner any
Other Special Advanced Technology or any technology or activities other than
that expressly set forth above including with respect to materially different
products and/or associated services.
"Preferred Technology" means taking the following actions: (i) marketing
--------------------
and representing to third Persons that InterTrust Technology is Universal's
primary, leading, principal and prominent foundation technology for Digital
Rights Management within the Entertainment Field; (ii) using InterTrust
Technology, at least in part, on the majority of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
9
CONFIDENTIAL
aggregated instances for Management of Content owned, exclusively licensed to,
or controlled by Universal; and (iii) displaying InterTrust Technology in (or
on, as applicable) any Universal Products and/or associated services as the
default and primary technology for Digital Rights Management, where such display
is substantially more prominent than any display of any Other Technology that is
expressly permitted under this Agreement.
"Rules and Controls" means any electronic information that directs,
------------------
enables,and specifies, describes, and/or provides contributing means for
performing or not-performing, permitted and/or required operations related to
Content, including, for example, restricting or otherwise governing the
performance of operations, such as, for example, Management of such Content.
"Screening Procedures" shall have the meaning set forth in Section
--------------------
2.1(d)(ii).
"Secure Container(s)" means electronic container(s) or electronic data
-------------------
arrangements that: (i) use one or more cryptographic or other obfuscation
techniques to provide protection for at least a portion of the Content thereof;
and (ii) supports the use of Rules and Controls to enable the Management of
Content.
"Source Code" means a human-readable, non-executable set of
-----------
instructions for a computer program, from which it may be possible, together
with related source materials and documentation, to discern logic, algorithms,
internal structure, and operating feature design characteristics of such
computer program.
"Special Advanced Technologies" mean: (i) designs or models involving a
-----------------------------
collection of distributed, and fully or partially interoperable, tamper
resistant electronic nodes in software, software/hardware, or hardware form,
such nodes supporting separate interoperable peers and/or those portions of
operating system nodes comprising at minimum comparable capabilities of such
peers, and where such nodes: (a) have the ability to securely communicate; (b)
employ Rules and Controls to Manage Content related events; and (c) will, in
some or all instances, support client and/or server capabilities; and/or (ii)
designs or models involving a collection of plural, distributed tamper resistant
clients and/or nodes where such clients and/or nodes employ Rules and Controls
to Manage Content related events and where (a) such Rules and Controls, in
conjunction with one or more such tamper resistant clients and/or nodes, can
help ensure persistent protection of Content subsequent to receipt of such
Content at a client and/or node, and (b) some or all attributes of such
persistent protection is set through the specification of one or more Rules and
Controls by one or more Persons providing such Content and/or having other
stakeholder (including any trust service, or societal organization or body)
interests, and (c) differing persistent protection Rules and Controls
arrangements can be employed to define, at least in part, differing Management
schemes for different Content deliverables. Notwithstanding the foregoing, in
no event shall the Pre-Authorized Other Technology be construed to be Special
Advanced Technologies.
"Standard Support" shall have the meaning set forth in Section 3.2(a).
----------------
"Status Meetings" shall have the meaning set forth in Section 3.2(c).
---------------
"Support" shall have the meaning set forth in Section 3.2.
-------
"Support Fee" shall have the meaning set forth in Section 6.1(c).
-----------
"Technology Advisory Committee" shall have the meaning set forth in
-----------------------------
Section 8.3.
"Term" shall have the meaning set forth in Section 13.1.
----
"Top Secret Disclosure Procedures" shall have the meaning set forth in
--------------------------------
Section 9.4.
"Top Secret Information" shall have the meaning set forth in Section
----------------------
9.2(b).
10
CONFIDENTIAL
"Trademark Guidelines" shall have the meaning set forth in Section
--------------------
5.4(a).
"Universal Confidential Information" shall have the meaning set forth in
----------------------------------
Section 9.3.
"Universal Executive(s)" means any Universal officer or executive and/or
----------------------
other Universal senior management personnel who have direct operational
responsibility for Universal's activities hereunder and/or for Universal's
participation in an Authorized Venture.
"Universal Product(s)" means an Application Product and/or Clearinghouse
--------------------
Product that is developed by (or, consistent with this Agreement, for) Universal
hereunder and branded and marketed, as applicable, in accordance with the
provisions of Section 5.3 and other provisions hereof. Universal Products shall
include the Universal Reader Module and Universal Content Packager.
"Universal Reader Module" means an Application Product having as its
-----------------------
principal function the end-user use of Content secured by InterTrust Technology,
including enabling an end-user to interact with such Content under the
Management of an InterRights Point and subject to associated Rules and Controls.
"Universal Content Packager" means an Application Product having as its
--------------------------
principal functions the support for: (i) specification of Rules and Controls for
Content; (ii) description of further associations between certain Rules and
Controls and certain Content; and/or (iii) interaction with an InterRights Point
to enable the placement of Content and/or Rules and Controls into Secure
Containers of the InterTrust Technology such that a Universal Reader Module can
Manage user interaction with such Content in a manner consistent with applicable
Rules and Control (all of the foregoing in a manner compliant with such product
being as an Application Product, including Compliance with InterTrust
Specifications).
"Universal/InterTrust Trial" shall have the meaning set forth in Section
--------------------------
8.4(b).
"Universal Parties" shall have the meaning set forth in Section 11.1(a).
-----------------
"Universal Property" shall have the meaning set forth in Section 7.2.
------------------
"Universal Trademarks" means the names, logos and trademarks owned or
--------------------
licensed for use exclusively by Universal, that may be used solely as stipulated
hereunder in connection with Universal Products and/or associated services
permitted hereunder. Such Universal Trademarks may be modified by Universal
from time to time consistent with Section 5.6 hereof.
"Updates" means any future release of InterTrust software products that
-------
is a supplement to Commerce 1.1 and/or a New Release provided to Universal
hereunder that: (i)(a) is designed primarily to correct and/or to mitigate known
Material Defects in, and/or to provide minor improvements to, such Commerce 1.1
or New Release software, or (b) is generally designated by InterTrust as a
numerical change to the digit(s) right of the decimal point for the version
number thereof (e.g. Commerce 1.XX); and (ii) InterTrust may develop, or has
developed for it, from time to time and make generally available to Business
Partners.
"Venture Agent(s)" shall have the meaning set forth in Section
----------------
2.1(d)(ii).
"Venture Executive(s)" means: (i) any officer or executive of the
--------------------
Authorized Venture; and/or (ii) other personnel who have direct operational
responsibility for the activities of such Authorized Venture.
"Virginia Venue" shall have the meaning set forth in Section 14.2.
--------------
1.2 Rules and Construction. As used in this Agreement, all terms used
----------------------
in the singular shall be deemed to include the plural, and vice versa, as
context requires. The words hereof, herein, herewith and hereunder refer to this
------ ------ -------- ---------
Agreement
11
CONFIDENTIAL
as a whole, including any Exhibits hereto, as the same may from time to time be
amended or supplemented, and not to any subdivision contained in this Agreement.
When used herein, including shall mean including, without limitation; consistent
--------- -----------------------------
shall mean fully consistent; discretion shall mean sole discretion; compliant
---------------- ---------- --------------- ---------
or compliance shall mean fully compliant or full compliance; in accordance
---------- ---------------------------------- -------------
shall mean in full accordance; and for example shall mean for example without
------------------ ----------- -------------------
limitation. Descriptive headings are inserted for convenience only, and shall
- ----------
not be utilized in interpreting this Agreement. This Agreement has been
negotiated by the Parties and their respective counsel and shall be fairly
interpreted in accordance with its terms and without any strict construction in
favor of or against either Party. Any and all rights exercisable, actions
permitted to be taken, or decisions to be made, by a Party under this Agreement
may be made by such Party in its sole discretion, except to the extent (and
solely to the extent) expressly provided herein to the contrary.
2. ADDITION OF AUTHORIZED Ventures.
2.1 Addition of Authorized Ventures.
-------------------------------
(a) Grant of Sublicense to Development Venture. Subject to
------------------------------------------
the terms and conditions hereof, Universal may create a Development Venture and,
in connection therewith, sublicense to the Development Venture those (and solely
those) rights, licenses and benefits -- and the Development Venture agrees to
assume the specified obligations -- expressly set forth in (i) Section 4.1(a)
(except that such rights, licenses, and benefits shall exclude all rights,
licenses, and benefits of Universal obtained pursuant to the proper exercise of
the Option under 4.1(b)), and (ii) Sections 4.2, 1, 3 (except that InterTrust
shall have no obligation whatsoever to provide any technology and/or services
beyond those set forth in such Section 3 including any duplicative deliverables
and/or perform, and/or have performed, any duplicative efforts due to such
sublicense and/or delegation in Section 2.1(b)), 4.4, 4.5, 5, 6.1(b), 6.3
(provided that amounts shall be due within thirty (30) days of the end of a
calendar quarter if Universal is not providing the primary accounting services
to and on behalf of the Development Venture), 6.4, 6.5, 6.6, 6.7, 7, 8.1, 8.2,
8.4, 9 (except Sections 9.5 and 9.7), 10.3, 10.4, 11, 12, 13 and 14 hereof (all
of the immediately foregoing listed sections collectively, the "Development Pass
----------------
Through Provisions"). Such sublicense shall exist and persist solely where all
- ------------------
of the provisions of this Section 2.1 have been, and continue during the
duration of such sublicense to be, complied with. Universal's right to grant
such sublicense shall expire if not made to the Development Venture in
accordance herewith within [*] months from the Effective Date. In the event
Universal during such [*] month period desires to grant a sublicense to the
Development Venture, Universal shall first provide to InterTrust: (1) written
notice setting forth information as required by this Agreement with respect to
such Development Venture and certifying that such Person qualifies as the
Development Venture; and (2) a signature page in the form attached hereto as
Exhibit D-1 that has been executed by the Development Venture. Upon written
acknowledgment by an InterTrust Designated Officer of receipt and acceptance of
such executed signature pages (which acknowledgment and acceptance shall not be
unreasonably withheld or delayed unless the proposed Development Venture does
not meet the requirements set forth herein) and the execution of a written
sublicense compliant with the provisions hereof, a copy of which (redacted to
omit economic terms) shall be delivered to InterTrust: (A) such Venture shall
automatically and with no further action become the "Authorized
Development Venture"; (B) such Authorized Development Venture shall be
- -------------------
entitled to certain benefits set forth in Section 3 to the extent Universal
directs InterTrust to provide such benefits to such Authorized Development
Venture, provided that InterTrust shall have no obligation whatsoever to
-------- ----
provide any technology and/or services beyond those set forth in Section 3
including any duplicative deliverables and/or perform (and/or have performed)
duplicative efforts due to such sublicense and/or delegation in Section 2.1(b);
(C) Universal and the Authorized Development Venture shall be jointly and
severally liable and responsible to InterTrust for the obligations of the
Authorized Development Venture under the provisions specified in this Section
2.1(a) and such sublicense agreement; and (D) Universal shall not thereafter
retain any right to grant any other sublicense under this Agreement (except as
set forth in Section 4.1(a)(iv) concerning transfer of Application Products).
The Authorized Development Venture shall have no right whatsoever to sublicense
its rights granted hereunder except (and solely except) as expressly set forth
in Section 4.1(a)(iv) concerning transfer of Application Products.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
12
CONFIDENTIAL
(b) Delegation to Clearinghouse Venture. Subject to the
-----------------------------------
terms and conditions hereof, Universal may create a Clearinghouse Venture and,
in connection therewith, delegate during the Term to the Clearinghouse Venture
those (and solely those) rights, licenses and benefits -- and the Clearinghouse
Venture also assumes the obligations -- expressly set forth in: (i) Section 4.3
(except that such rights, licenses, and benefits shall exclude any rights of
Universal obtained pursuant to the proper exercise of the Option under 4.1(b))
and provided that all activities involving Clearinghouse Functions shall be
under a single brand in accordance herewith, to service solely information
derived from use of InterRights Points in connection with Universal Products
that are Application Products or the Development Venture-branded equivalent
thereof regarding as provided for herein functional purpose (all of the
foregoing to be treated as a "Universal Product" for purposes of this Agreement)
developed and marketed by the Development Venture using InterTrust Digital
Rights Management technology; and (ii) Sections 1, 3 (except that InterTrust
shall have no obligation whatsoever to provide any technology and/or services
beyond those set forth in Section 3 including any duplicative deliverables
and/or perform (and/or have performed) duplicative efforts due to such
delegation and/or sublicense in Section 2.1(a)), 4.2, 4.3, 4.4, 4.5, 5, 6.1(b),
6.2, 6.3 (provided that amounts shall be due within [*] days of the end of a
calendar quarter if Universal is not providing the primary accounting services
to and on behalf of the Clearinghouse Venture), 6.4, 6.5, 6.6, 6.7, 7, 8.1, 8.2,
8.4, 9 (except Sections 9.5 and 9.7), 10.3, 10.4, 11, 12, 13, and 14 hereof (all
of the immediately foregoing listed sections collectively, the
"Clearinghouse Pass Through Provisions" which together with the Development Pass
-------------------------------------
Through Provisions shall be referred to as the "Pass Through Provisions");
-----------------------
provided that such delegation shall exist and persist solely where all of the
- -------- ----
provisions of this Section 2.1 have been, and continue during the duration of
such delegation to be, complied with. In the event Universal desires to delegate
such rights and licenses to the Clearinghouse Venture, Universal shall first
provide to InterTrust: (1) written notice setting forth information as required
by this Agreement with respect to such Clearinghouse Venture and certifying that
such Person qualifies as the Clearinghouse Venture; and (2) a signature page in
the form attached hereto as Exhibit D-2 that has been executed by the
Clearinghouse Venture. Upon written acknowledgment by an InterTrust Designated
Officer of receipt and acceptance of such executed signature pages (which
acknowledgment and acceptance shall not be unreasonably withheld or delayed
unless the proposed Clearinghouse Venture does not meet the requirements set
forth herein) and the execution of a written delegation agreement compliant with
the provisions hereof, a copy of which (redacted to omit economic terms) shall
be delivered to InterTrust: (A) such Clearinghouse Venture shall automatically
and with no further action become the "Authorized Clearinghouse Venture"; (B)
--------------------------------
such Authorized Clearinghouse Venture shall be entitled to certain benefits set
benefits set forth in Section 3.1 to the extent Universal directs InterTrust to
provide such benefits to such Authorized Clearinghouse Venture except that
InterTrust shall have no obligation whatsoever to provide any technology and/or
services beyond those set forth in Section 3 including any duplicative
deliverables and/or perform (and/or have performed) duplicative efforts due to
such delegation and/or sublicense in Section 2.1(b); (C) Universal and the
Authorized Clearinghouse Venture shall be jointly and severally liable and
responsible to InterTrust for the obligations of the Authorized Clearinghouse
Venture under the provisions specified in this Section 2.1(b) and such
delegation agreement; and (D) Universal shall not thereafter retain any right to
exercise the rights and licenses under Section 4.3 nor to further grant or
delegate any rights thereunder (except as set forth in Section 4.1(a)(iv)
concerning transfer of Application Products). The Authorized Clearinghouse
Venture shall have no right whatsoever to sublicense or delegate its rights
hereunder.
(c) Further Procedures and Covenants. All clearing activities
--------------------------------
(i.e., any and all activities that would constitute Clearinghouse Functions if
----
performed using InterTrust Technology, Modified Technology and/or information
derived at least in part from use of such technology) that are performed by the
Authorized Clearinghouse Venture, for example at any data center or other
Authorized Clearinghouse Venture data handling location, or at any Customer
installation, shall be in Compliance with InterTrust Specifications and shall
use exclusively information received in or contained in Secure Containers of the
InterTrust Technology and/or Modified Technology, unless otherwise agreed in
writing by the Parties (in each Party's discretion). Such information received
in or contained in Secure Containers of InterTrust Technology and/or Modified
Technology shall be based on or derived at least materially in part from Content
Managed by InterTrust Technology and/or Modified Technology. InterTrust
Technology shall serve as each Authorized Venture's primary foundation Digital
Rights Management technology for such Content Management; provided that Other
-------- ----
Technology may be supported at Universal's discretion in a manner solely
consistent with the provisions hereof, but such support of Other Technology
shall not be construed in any way
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
13
CONFIDENTIAL
whatsoever to be licensed under this Agreement for any use - in any manner
whatsoever and notwithstanding any interpretation of any other provisions
hereof -- with any InterTrust Technology or Licensed Rights received by
Universal under this Agreement. Each of the sublicense agreement set forth in
Section 2.1(a) and the delegation agreement set forth in Section 2.1(b) shall
provide that it is to and for InterTrust's benefit, and (i) in the event
Universal fails to promptly enforce the rights sublicensed hereunder, then such
rights may be enforced by InterTrust at its discretion as a third party
beneficiary (provided that notice is first provided to Universal and Universal
does not fully enforce such rights expeditiously thereafter), and/or (ii) with
respect to InterTrust's Intellectual Property Rights and/or rights in InterTrust
Technology or to payment of royalties or other fees for performance of
Clearinghouse Functions and/or royalties or other fees for distribution of
venture products and/or associated services using InterTrust Technology as would
be due InterTrust hereunder if performed or distributed (as applicable) by
Universal, such rights as specified in subparagraph "ii" above may be enforced
by InterTrust at its discretion, directly and/or as a third party beneficiary,
irrespective of any Universal enforcement actions. Universal shall promptly, in
a commercially reasonable time frame, from time to time and/or upon InterTrust's
written request provide an updated list of all officers, directors and equity
holders of each Authorized Venture and any changes thereto.
(d) Competitive Entity Restrictions.
-------------------------------
(i) General. If at any time any Competitive Entity participates
-------
in the Governance of an Authorized Venture or gains access to any InterTrust
Confidential Information and/or Top Secret Information directly or indirectly
from the Authorized Venture (a "Non-Partnering Venture Event"), then (1) such
----------------------------
Authorized Venture and/or Universal, upon any Venture Executive or Universal
Executive (as the case may be) becoming aware of such Non-Partnering Venture
Event, shall promptly provide written notice thereof to InterTrust and (B) such
Competitive Entity shall within thirty (30) days cease participation in the
Governance of any Authorized Venture and immediately cease to have access to
InterTrust Confidential Information. Under no circumstances shall a Competitive
Entity have any access to any Top Secret Information, and if any such access
occurs, the provisions of the immediately preceding sentence shall apply with
respect thereto. Within thirty (30) days after initiating such Non-Partnering
Venture Event, either: (x) such Competitive Entity and such Authorized Venture,
as of and when such Authorized Venture becomes aware of such Non-Partnering
Venture Event, shall have taken such action as necessary to fully divest such
Competitive Entity of all its equity interest and other securities in such
Authorized Venture, or (y) such Competitive Entity shall have ceased such Non-
Partnering Venture Event. If such Competitive Entity has neither completed the
divestiture of its equity interest in such Authorized Venture nor ceased such
Non-Partnering Venture Event within the thirty (30) day period, then InterTrust
shall have the right to immediately terminate the sublicense or the delegation
(as the case may be) and/or this Agreement. If such Non-Partnering Venture Event
is a material, intentional act participated in by a Competitive Entity with the
knowledge of an officer or executive of such Competitive Entity, then the
Authorized Venture shall take such actions as necessary to divest such
Competitive Entity of all its equity interest and other securities convertible
into equity interest in the Authorized Venture. To the extent a Competitive
Entity has ceased to participate in the Governance of the Authorized Venture and
to have access to InterTrust Confidential Information, shall have otherwise
returned in an appropriate, secure manner any such Confidential Information and
makes no use of such Confidential Information, and such intentional Non-
Partnering Venture Event by such Competitive Entity has not materially harmed
InterTrust, such Competitive Entity may otherwise participate in the Authorized
Venture in a manner consistent with this Agreement so long as such Non-
Partnering Venture Event did not occur with the knowledge of any Universal
Executive or Authorized Venture Executive and did not involve a Competitive
Entity gaining access to Top Secret Information. In no instance shall any such
divestiture or cessation of a Non-Partnering Event be deemed to limit in any
manner any other right InterTrust has under this Agreement, or at law or in
equity.
(ii) Management of Technology. In order to avoid potential
------------------------
conflicts or controversy with respect to development by personnel,
subcontractors, consultants, or other agents of Universal and/or any Authorized
Venture (each of the foregoing, "Venture Agent(s)") of any Other Technology,
----------------
Universal and each Authorized Venture shall establish and maintain at all times
during which any rights hereunder are in effect, the "Screening Procedures" set
--------------------
14
CONFIDENTIAL
forth on Exhibit E hereto to prevent: (i) exposure of any member or personnel of
Universal or any Authorized Venture, as applicable, who has access and/or
exposure to InterTrust Confidential Information and/or Top Secret Information
from performing any work directly related to any Other Technology; and/or (ii)
exposure of any member or personnel of Universal or any Authorized Venture who
is performing, has performed on behalf of any Authorized Venture, or will,
solely as set forth herein, subsequently perform any technical work or analysis
directly relating to Other Technology from having access or exposure to, or
performing any work with respect to, InterTrust Confidential Information and/or
Top Secret Information (collectively, and along with information of the
Authorized Venture as provided in Exhibit E, "Confidentially Handled
----------------------
Information"). Such Screening Procedures shall be in place while licenses and
- -----------
the sublicense and/or delegation are in effect and for a period of twelve (12)
months thereafter. In no event shall more than an aggregate of twelve (12)
employees of Universal and the Authorized Ventures at any given point in time be
authorized to, and/or receive or otherwise gain access to, InterTrust Top Secret
Information, and then subject to the provision of Section 9.2(b) hereof. No
Venture Agent shall remove, or permit its personnel to remove, any InterTrust
Confidential Information and/or Top Secret Information from premises controlled
by the Authorized Venture, except as may be expressly provided for herein and/or
in InterTrust Specifications. If any Universal Executives or any Venture
Executives become aware of any breach of this Section 2.1(d) (a "Compromising
------------
Event"), such Person shall, as soon as reasonably possible under the
- -----
circumstances taking into account the nature and severity of the Compromising
Event, take such steps as appropriate considering the circumstances to cease
such Compromising Event and to prevent the reoccurrence of Compromising Events.
Such appropriate steps under the circumstances shall, at a minimum, include: (i)
promptly informing InterTrust in writing of the occurrence of and circumstances
surrounding a Compromising Event; (ii) investigating the nature and extent of
the contamination caused by the Compromising Event (and report such findings
promptly to InterTrust in writing); and (iii) taking effective measures to
remedy all material effects of such Compromising Event. In the event Universal
and any Authorized Venture fail to take the actions set forth in this Section
2.1(d), InterTrust shall be entitled to immediately terminate such sublicense or
delegation (as the case may be) and/or this Agreement, and Section 11.3 shall
apply, in addition to any other remedies available to InterTrust under this
Agreement, at law or in equity; provided that any such termination shall not
-------- ----
occur for Universal's or the Authorized Venture's failure, as applicable, to
comply with the provisions of the immediately preceding subparagraph (iii) where
Universal and such Authorized Venture, as applicable, used good faith efforts to
comply with the provisions of such subparagraph (iii) including following
InterTrust's reasonable instructions concerning remedying the effects of such
Compromising Event.
(iii) Exception for ADK Sublicense. To the extent that Universal
----------------------------
grants a sublicense to the Development Venture under the Development Pass
Through Provisions solely with respect to InterTrust Technology consisting of
those portions of the Commerce 1.1 Application Developer's Kit (as described in
Exhibit A) as provided by InterTrust (the "ADK Technology") and provides such
--------------
Development Venture no access to any InterTrust Technology other than the ADK
Technology, then: (1) the provisions of Sections 2.1(d)(i) and 2.1(d)(ii) shall
not restrict [*] or [*] from having access to InterTrust Confidential
Information contained in such ADK Technology; (2) such access and participation
shall not be construed to be a Non-Partnering Venture Event; (3) the Screening
Procedures set forth in Section 2.1(d)(ii) shall not apply to members and
personnel of the Development Venture who have access solely to the ADK
Technology and no other InterTrust Technology; and (4) the provisions of Section
9 shall not restrict the use by employees of [*] or [*] who are Agents of the
Development Venture of information that is learned by such Agents from exposure
to the ADK Technology pursuant hereto and retained in the memory of such Agents,
provided that all other confidentiality obligations (including non-disclosure
obligations) under Section 9 shall continue to apply in accordance herewith. The
provisions of this Section 2.1(d)(iii) shall be effective for eighteen (18)
months from the Effective Date, and thereafter for so long as [*] and [*] are
not Competitive Entities.
2.2 Interpretation of Definitions. In the event any of the Pass Through
-----------------------------
Provisions reference Universal or reference defined terms which refer to
Universal, such Pass Through Provisions and defined terms shall apply to the
appropriate Authorized Venture mutatis mutandis.
3. TECHNOLOGY ACCESS AND SUPPORT.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
15
CONFIDENTIAL
3.1 Technology Access.
-----------------
(a) Initial Availability. Subject to the terms and conditions of
--------------------
this Agreement, InterTrust shall make available, deliver, or otherwise provide
to Universal the Commerce 1.1 software and related Documentation (as the
foregoing are set forth on Exhibit A hereto) promptly following the execution of
this Agreement and receipt of the amount specified in Section 6.1(a) hereof.
(b) Additional Technology. In addition to the foregoing, and
---------------------
subject to the terms and conditions of this Agreement, InterTrust shall [*] to
Universal for the first [*] years of the Term, all Updates and New Releases.
Further, subject to the terms and conditions hereof, from the [*] year of the
Term through the remainder of the Term or pursuant to Section 13.3(b),
InterTrust shall [*] to Universal: (i) such portions of Updates and/or New
Releases, as applicable, made available by InterTrust after the end of the [*]
year, if any, as are necessary for Universal Products and associated services to
remain in Compliance with then existing InterTrust Specifications and/or
subsequent New Specifications that replace existing InterTrust Specifications,
but only to the extent necessary for Universal Products and/or associated
services then in Compliance with such InterTrust Specifications to avoid
becoming non-Compliant with such subsequent New Specifications (the "Compliance
----------
Update(s)"); and (ii) those Updates and/or New Releases, as applicable, made
- ---------
available by InterTrust after the end of the [*] year of the Term to the end of
the Term, if any, in addition to Compliance Updates, that are [*] to digital
distribution of music Content (as may be expanded pursuant to Universal's
exercise of the Option under Section 4.1(b) hereof), provided that the Updates
-------------
and New Releases of this subparagraph (ii) shall be made available to Universal
if, and only if, Universal has at all times during the period between [*] months
from the Effective Date and the end of such [*] year treated InterTrust
Technology as its [*] in a consistently uninterrupted manner in all material
respects, and for so long, and only for so long, as Universal continues after
such [*] year to treat InterTrust Technology as its [*] in a consistently
uninterrupted manner in all material respects. Notwithstanding the foregoing, a
material breach of subparagraph 3.1(b)(ii) above committed both without the
intent of a Universal Executive to willfully breach this Agreement and without
reckless disregard in such connection shall be subject to the Cure Period and
procedures of Section 13.2(a) (so long as such Cure Period shall not exceed [*]
days); provided that any such breaches of such subparagraphs are infrequent and
-------------
cured in accordance with the provisions of Section 13.2(a) and this Section
3.1(b). [*] The Parties acknowledge and agree that nothing in this Section 3.1
shall be construed to require InterTrust to make any InterTrust Technology or
InterTrust Technology Products available to Universal that has been developed by
InterTrust as a custom or specialized effort for, or jointly with, one or more
current or prospective Business Partners and/or other licensees of InterTrust.
(c) Acknowledgments. In accordance with the above, it is
---------------
acknowledged and agreed that the InterTrust Technology may employ or may operate
with one or more technologies that may not be proprietary to InterTrust but are
included within the Licensed Rights as specified on Exhibit A (the "InterTrust
----------
Technology Products") and as may be modified from time to time by InterTrust in
- -------------------
its discretion, provided that such modifications shall be made and applied by
-------------
InterTrust in a nondiscriminatory and consistent manner with respect to all
Business Partners regarding similar products and/or services and provided to
Universal in writing. It is further acknowledged that the Sample Applications
and Components (as each are defined in Exhibit A) that may be provided to
Universal as part of InterTrust Technology would be provided, and are intended,
solely to aid Universal in its development efforts should Universal decide in
the exercise of its discretion to use them. Provision of such applications and
components is not intended to, and in no manner whatsoever should be construed
to, constitute a warranty or representation of fitness for a particular purpose
or of any other kind.
3.2 Training, Assistance and Technical Support. Subject to the terms and
------------------------------------------
conditions of this Agreement, InterTrust agrees to provide to Universal the
training, assistance and technical support set forth in this Section 3.2
("Support") for a period of [*] months from the Effective Date (the "Initial
------- -------
Support Period").
- --------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
16
CONFIDENTIAL
(a) Training and Assistance. In order to assist Universal in its
-----------------------
use of InterTrust Technology, InterTrust shall provide to Universal, subject to
applicable terms and conditions of this Agreement, reasonable training, support
and consulting assistance as follows ("Assistance").
----------
(i) During the first [*] months of the Initial Support
Period, InterTrust shall make InterTrust employee-equivalent time available to
Universal to provide up to a limit of [*] hours of Assistance (to be measured
based upon actual hours expended and reasonably documented), subject to
reasonable agreement between the Parties on scheduling, availability of
resources and related matters. Universal shall have secure access to
InterTrust's applicable relevant automated technical support website. Consistent
with the provisions hereof, Assistance shall be rendered by appropriately
reasonably skilled and qualified InterTrust personnel and include (1) lecture
and hands-on training (at InterTrust's site unless agreed otherwise by the
Parties) for up to [*] Universal personnel, and (2) access via e-mail and
telephone during normal business hours to InterTrust support personnel,
consistent with InterTrust standard policies and consistent with applicable U.S.
software industry practices and the foregoing. Universal shall be responsible
for all expenses incurred by Universal's personnel in traveling to and attending
any training and support meetings (such meetings are normally held at an
InterTrust facility). In the event InterTrust's personnel travel from
InterTrust's facilities to provide Assistance (upon InterTrust's and Universal's
mutual agreement made in writing (including by email)), Universal shall
reimburse InterTrust for all actual, documented and reasonable travel, lodging,
and out-of-pocket expenses incurred by InterTrust's personnel. To the extent
InterTrust provides Assistance as set forth in this Section 3.2 for another
Person in the Entertainment Field, InterTrust shall also make such Assistance
available to Universal, at Universal's option, [*].
(ii) If, after the first [*] months of the Initial Support
Period, InterTrust offers standard support package(s) to Business Partners, at
least one of which support packages is substantially commensurate with the
support provided by InterTrust to Universal during the first [*] months of the
Initial Support Period and has economic terms [*] ("Standard Support"),
-------- -------
Universal shall choose among such Standard Support packages as may be available,
and, thereafter, all Support and other obligations as set forth in Section 3.2
hereof shall be exclusively governed by the terms and conditions of the support
package so chosen by Universal. If Standard Support is not available as of the
end of such first [*] months of the Initial Support Period, during the remainder
of the Initial Support Period Universal shall receive the same support it
received during the first [*] months of the Initial Support Period on terms [*],
which terms shall be commercially reasonable consistent with U.S. software
industry practices.
(b) Correction of Material Defects. In addition to InterTrust's
------------------------------
own ongoing quality assurance efforts, if Universal brings a Material Defect to
InterTrust's attention in a writing describing the alleged defect in reasonable
detail, InterTrust shall use commercially reasonably prompt efforts in
accordance with applicable U.S. software industry practices, at InterTrust's
expense, to reasonably correct such Material Defect. If a Material Defect cannot
be reasonably so corrected InterTrust will use commercially reasonable prompt
efforts in accordance with applicable U.S. software industry practices to [*] or
[*] InterTrust Technology to mitigate such Material Defect while maintaining [*]
of InterTrust Technology as incorporated in Commerce 1.1, or as may be in
material, commercial (e.g. non-pilot and non-beta) distribution in Universal
----
Products. Universal agrees that it has the responsibility to reasonably test its
implementations employing InterTrust Technology and/or Modified Technology in
accordance with reasonable practices for consumer electronic commerce payment
and security products and services, and further in Compliance with InterTrust
Specifications. Notwithstanding the foregoing, InterTrust shall have no
obligation to: (i) correct or mitigate any Material Defect if such correction or
mitigation is commercially unreasonable for InterTrust, for example, it causes
InterTrust undue commercial burden; (ii) communicate on the subject of Material
Defect with any Person other than Universal and/or an Authorized Venture, as
applicable; (iii) correct any Material Defect
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
17
CONFIDENTIAL
that has been properly identified by Universal but that cannot be reproduced by
InterTrust using commercially reasonable diligence including reasonable
assistance by Universal in identifying and replicating such defect; or (iv)
perform any services relating to correction of Material Defect at any site other
than an InterTrust facility, except as may be agreed by InterTrust in the
exercise of its discretion.
(c) Status Meeting. To assist the Parties in coordinating and
--------------
evaluating their efforts relating to InterTrust Technology and their mutual
technical and business objectives, during the Term the Parties shall meet from
time to time to discuss, among other things: (i) InterTrust's progress in
development of the InterTrust Technology; (ii) implementation of such technology
by Universal; (iii) feedback concerning Assistance provided to Universal and
product development and marketing progress by Universal; and (iv) other issues
that reasonably concern the Parties' mutual technical and business objectives
(the "Status Meetings"). Such Status Meetings shall take place at InterTrust's
---------------
offices not less frequently than once a calendar quarter during the first twelve
(12) months of the Term.
(d) Dedicated Personnel. InterTrust and Universal will each
-------------------
appoint a relationship manager, to coordinate its activities pursuant to this
Section 3.2, and a technical project manager to coordinate and provide the
Assistance set forth in Sections 3.2(a) and 3.2(b).
3.3 Additional Assistance; Further Support. During the Initial Support
--------------------------------------
Period, additional Assistance may be made available by InterTrust to Universal
beyond the Assistance allocated under Section 3.2(a). To the extent Universal
requests, and InterTrust decides (in the exercise of its discretion) to provide
such additional Assistance, Universal shall pay to InterTrust such fees as
InterTrust customarily charges its preferred customers for such assistance under
like circumstances. Following the Initial Support Period all support or
assistance thereafter provided shall be according to InterTrust's standard
support policies and packages; provided that support at least commensurate with
-------------
the provisions of Section 3.2(b) shall be available to Universal so long as
Universal has materially, commercially employed InterTrust Technology. To the
extent InterTrust reasonably requires Business Partners who have license rights
and obligations comparable to Universal to maintain at least a certain minimum
level of support with respect to its licensed activities, Universal shall
maintain at least such minimum level of support. Such support shall be available
to Universal on reasonable terms consistent with industry practices, and [*].
4. UNIVERSAL LICENSES and RESTRICTIONS.
4.1 License Grant and Option.
------------------------
(a) License Grant. Subject to the terms and conditions of this
-------------
Agreement, InterTrust grants to Universal, during the Term of this Agreement a
limited, nonexclusive, nontransferable, nonsublicensable (except as set forth in
Section 2.1 or Section 4.1(a)(iv)), worldwide right and license under the
Licensed Rights, for use solely within the Entertainment Field, to:
(i) use and reproduce the InterTrust Technology solely for
the purpose of: (1) designing and developing Universal Products that are in
Compliance with the InterTrust Specifications; and (2) exercising the rights
granted under Sections 4.1(a)(ii), 4.1(a)(iii) and 4.1(a)(iv) hereof;
(ii) modify the InterTrust Technology, except the Core
Technology, to: (1) create Modified Technology solely for the purpose of
enabling incorporation of InterTrust Technology into Universal Products that are
in Compliance with InterTrust Specifications; and (2) incorporate such Modified
Technology into Universal Products in Compliance with InterTrust Specifications;
18
CONFIDENTIAL
(iii) use Universal Products, and/or provide services
associated therewith solely within the Entertainment Field, and solely for so
long as such Universal Product and/or associated services are Compliant with
InterTrust Specifications and are otherwise used in accordance with this
Agreement; and
(iv) distribute, offer for sale, sell, license for use,
import and/or otherwise transfer: (1) Universal Products solely if they are
Application Products, and (2) Distributable Documentation; both solely (A)
within the Entertainment Field to Universal's Customers pursuant to a Customer
Agreement in accordance with Section 5.2(d) and otherwise (B) in accordance with
this Agreement.
(b) Option. InterTrust grants to Universal the option, as set forth
------
in this Section 4.1(b), to expand the scope of the Entertainment Field to
include Content consisting of all forms of video, electronic games, television
shows, and linear and non-linear motion pictures (the "Option"). The right to
------
exercise the Option shall expire as of [*] months after the Effective Date,
unless prior to the expiration of such [*] month period InterTrust has received
from Universal written notice of Universal's decision to exercise the Option
(pursuant to the notice procedures of Section 14.6 hereof). To the extent that
Universal is then in compliance with this Agreement, and when Universal has
satisfied the foregoing option exercise procedures, InterTrust shall then
promptly notify Universal that such notice has been received and that the
Entertainment Field shall thereafter be so expanded under the applicable
licenses set forth in this Agreement.
4.2 License to InterTrust Trademarks. Subject to the terms and conditions
--------------------------------
of this Agreement, InterTrust grants to Universal during the Term of this
Agreement a limited, nonexclusive, nontransferable, nonsublicensable (except as
set forth in Sections 2.1 and 4.1(a)(iv)) worldwide license to use and display
the InterTrust Trademarks solely: (i) on applicable Universal Products and
associated services, for example in Compliance with InterTrust Specifications to
indicate that such products and services are in Compliance with InterTrust
Specifications; (ii) on related Distributable Documentation, marketing and sales
materials to identify that InterTrust Technology is being utilized by Universal;
and (iii) as set forth herein or otherwise reasonably stipulated in writing by
an InterTrust Designated Officer. InterTrust shall have the right to approve
uses and/or ranges of use in connection with InterTrust Trademarks, including
any use thereof on Universal Products, in connection with associated services
provided by Universal relating to products and applications employing InterTrust
Technology and/or Modified Technology, and in related documentation, marketing
and sales materials. Once approved, Universal may use such InterTrust Trademarks
in accordance herewith until InterTrust notifies Universal in writing to the
contrary and in accordance with the provisions hereof. In the event of any such
disapproval or modification of a provision previously approved in accordance
herewith, Universal shall conform its use of such InterTrust Trademarks
according to the terms and conditions of Section 5.4(d) hereof.
4.3 Limited License to Clearinghouse Functions. Subject to the terms and
------------------------------------------
conditions of this Agreement, InterTrust grants to Universal during the Term of
this Agreement a limited, nonexclusive, nontransferable, nonsublicensable
(except and solely except as expressly set forth in Section 2.1), worldwide
right and license under the Licensed Rights, solely within the Entertainment
Field, to: (i) perform Clearinghouse Functions solely under Universal Trademarks
as specified herein and in Compliance with InterTrust Specifications; and (ii)
have Authorized Clearinghouse Providers perform any and all tasks and functions
permitted by this Agreement solely to service InterRights Points provided to a
Customer by Universal in accordance with Section 4.1(a)(iv), to the extent such
Authorized Clearinghouse Provider has been granted by InterTrust rights of the
scope necessary to perform the immediately foregoing activities and solely for
use with Content Managed by InterTrust Technology licensed hereunder. Such
Clearinghouse Functions as set forth in subparagraph (i) of this Section 4.3 may
be performed to service InterRights Points that have been provided by (a) a
Universal Product, and solely in connection with such Universal Product, or (b)
a Person having a valid written license from InterTrust allowing such Person to
permit Authorized Clearinghouse Providers to service InterRights Points provided
by such Person. Subject to the terms and conditions hereof, Universal shall be
an Authorized Clearinghouse Provider within the scope of rights set forth within
this Section 4.3, and shall also be entitled to engage one or more Authorized
Clearinghouse Providers to perform Clearinghouse Functions with respect to
Universal Products solely in accordance with this Agreement and as permitted
under each such Authorized Clearinghouse Provider's license with
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
19
CONFIDENTIAL
InterTrust. InterTrust shall be compensated for any Clearinghouse Functions
performed by any such Authorized Clearinghouse Provider relating to Universal
Products in accordance with the terms of the license agreement between
InterTrust and such Authorized Clearinghouse Provider. Mitsubishi Corporation,
National Westminster Bank Plc. and Reciprocal, Inc. (formerly Rights Exchange,
Inc.) are currently designated as Authorized Clearinghouse Providers (subject to
continuing satisfaction by such providers of the terms and conditions of their
respective license agreements with InterTrust).
4.4 No Additional Licenses. Universal understands and acknowledges that
----------------------
InterTrust is licensing to Universal only certain limited rights to use
InterTrust Technology as described herein. Thus, notwithstanding the generality
of any other provision herein, Universal acknowledges and agrees that the
licenses granted under Sections 4.1, 4.2 and 4.3, and the license set forth in
Section 13.3(b), are the only licenses granted to Universal, and that no other
licenses whatsoever have been or shall be granted, expressly, or by implication
or estoppel, now or in the future unless, and solely unless, a written agreement
between the Parties (in the exercise of each Party's discretion) is executed in
a manner compliant with Section 14.4 hereof. Any and all rights possessed by
InterTrust and not expressly granted to Universal under this Agreement are
reserved and retained by InterTrust.
4.5 General Restrictions. Universal covenants that it shall not: (i)
--------------------
during the Term of this Agreement and during the period in which any rights
under Section 13.3(b) hereof are in effect (a) use or exploit any InterTrust
Technology or perform any Clearinghouse Functions outside of the Entertainment
Field or in any manner not Compliant with InterTrust Specifications, and/or (b)
reverse engineer any InterTrust Technology that has been supplied to Universal
in Object Code form only, or modify any portion of the Core Technology and/or
participate in "clean rooming" the Core Technology; (ii) after the Term, and/or
the grant of the sublicense of Section 2.1, as applicable as to the rights of
Section 2.1, use InterTrust Technology or exploit the Licensed Rights in any
unlicensed manner whatsoever; or (iii) after the rights of Section13.3(b) of
this Agreement have ceased in accordance with the provisions hereof, use or
exploit InterTrust Technology (in whole or in part) for any purpose whatsoever.
Any use by Universal of any portion of the InterTrust Technology and/or Modified
Technology outside the scope of the licenses granted by InterTrust hereunder
shall constitute a material breach of this Agreement.
5. USE OF CONTRACTORS; UNIVERSAL SUPPORT AND
ADDITIONAL COVENANTS.
5.1 Use of Contractors. Subject to the terms and conditions of this
------------------
Agreement, Universal may use Contractors in connection with the rights granted
herein; provided that: (i) InterTrust approves use of such Contractor in writing
-------------
(such approval not to be unreasonably withheld or delayed; reasonable grounds
for withholding such approval including such Contractor having a reasonably
known or anticipated material conflict of interest with InterTrust's business,
such as, for example, commercially or publicly using, deploying, or
participating in the commercial or public use or deployment of any Other
Technology; (ii) Universal shall be jointly and severally liable for actions of
its Contractors; and (iii) each such Contractor has executed and InterTrust has
received a copy of a form of contractor agreement protective of (a) InterTrust's
Technology and InterTrust's associated Intellectual Property Rights and (b) Top
Secret Information in accordance with the provisions hereof and/or InterTrust
Confidential Information, (all of the foregoing (as may be made available by
InterTrust under this Agreement)); and wherein the Parties, each in the exercise
of its reasonable discretion, agree to the form of such contractor agreement and
wherein such contractor agreement shall specify any physical location, security
provisions, as well as adherence to InterTrust Specifications and other
parameters necessary for secure handling of such information (such form to be
attached as an Exhibit hereto upon such approval by the Parties) (the
"Contractor Agreement"). All such use of Contractors by Universal shall be
--------------------
limited to that use of Contractors reasonably needed by Universal to effectively
and directly exercise its rights hereunder, and Universal acknowledges and
agrees that InterTrust may refuse to approve the use of Contractors (or
contractor sites) where InterTrust in good faith believes that the number of
Contractors and/or sites having access to InterTrust Technology and/or
InterTrust Confidential Information poses a material risk (1) to the security or
trustedness of InterTrust Technology-based deployments, or (2) concerning
disclosure or misuse of InterTrust Confidential Information; provided that use
-------------
of up to five (5) such Contractors shall not, in and of itself, be considered to
20
CONFIDENTIAL
exceed an acceptable number of Contractors hereunder. It is understood that
approval of Contractors with respect to access to Top Secret Information will be
more stringent given the nature of such information.
5.2 Universal Support of InterTrust Technology.
------------------------------------------
(a) Universal Use of InterTrust Technology. In accordance with the
--------------------------------------
licenses granted to Universal and the other terms and conditions hereof,
Universal agrees to use its commercially reasonable best efforts to develop,
produce, and generally distribute in a commercially meaningful manner one or
more Universal Products within [*] months following the Effective Date. Such
time period shall be extended by any period in which there exists a Material
Defect in the InterTrust Technology that reasonably impedes Universal's
development efforts in a material manner, but only for the period from the date
that Universal documents such defect as provided in Section 3.2(b) hereof to the
date InterTrust has reasonably corrected or mitigated such defect as provided in
Section 3.2(b) and only to the extent that such Material Defect has reasonably
impeded such development efforts in a material manner.
(b) Compliance with InterTrust Specifications.
-----------------------------------------
(i) Products and Services. Universal shall not for any
---------------------
reason commence the distribution, sale or other transfer of any specific
Universal Product, or perform any associated service relating to InterTrust
Technology or otherwise exercise any license right hereunder that is subject to
any InterTrust Specifications, unless such products and/or services, and/or
other exercise of any such license right, as applicable, (1) are in Compliance
with InterTrust Specifications existing on the date of Universal's commencement
of such distribution, sale, or other transfer of such specific Universal
Product, performance of any associated services, and/or other exercises of such
license rights hereunder, and (2) are otherwise performed in full compliance
with this Agreement, with no exceptions whatsoever. After such commencement of
such distribution, sale, or other transfer of a specific Universal Product,
performance of an associated service or other exercise of any such licensed
right hereunder, Universal shall continue to comply with InterTrust
Specifications, as such InterTrust Specifications may be changed or modified
from time to time in the manner and within the time frames set forth in Section
5.2(b)(ii). Such InterTrust Specifications shall be established and applied in a
nondiscriminatory and consistent manner with respect to all Persons regarding
similar products and/or services. Further, in making decisions regarding
InterTrust Specifications, InterTrust shall not [*].
(ii) Compliance with New Specifications. InterTrust may,
----------------------------------
from time to time in its discretion, change or enhance InterTrust
Specifications, or modify InterTrust Specifications, for example, to accommodate
changes in InterTrust Technology, and/or any related InterTrust product
development, for, without limitation, such purposes as, improving architectural
integrity, functional capability, standardization, security capability,
efficiency, and/or interoperability of technology, components, products and/or
services that use InterTrust Technology (a "New Specification"). InterTrust
-----------------
shall use commercially reasonable efforts to maintain compatibility between a
New Specification and the then-preceding Specification, unless considerations of
security, interoperability, performance, business development and/or
functionality enhancement indicate that such compatibility is not commercially
appropriate.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
21
CONFIDENTIAL
To the extent InterTrust releases a New Specification that applies to any
portion of a Universal Product and/or service associated with InterTrust
Technology then being performed or distributed by Universal (as applicable),
Universal shall bring any further such products delivered to Customers, and/or
any such services (as applicable), into Compliance with such New Specification
as of the earliest to occur of: (1) the next version, release, or production
cycle of such Universal Product and/or such associated service (the "Next
----
Version"), as earlier applicable, but only to the extent that Universal receives
- -------
notice of such New Specification within a reasonably sufficient time prior to
the release of such Next Version to accommodate new aspects of such New
Specification; and (2) [*] months. InterTrust and Universal further agree that
Universal shall, within [*] months after receiving a released copy of such New
Specification, implement such new aspects of such New Specification for all
applicable services supporting and/or employing Universal Products and/or
associated services provided to Customers not meeting such New Specification
that were shipped to Customers prior to Universal fulfilling the requirement of
the immediately preceding sentence. Within the context of Technology Advisory
Committee meetings and/or communications with members of such Technology
Advisory Committee in accordance with the provisions of Section 8.3, InterTrust
will, as appropriate from time to time, inform Universal that a change in
InterTrust Specifications is pending in advance of InterTrust's release of a New
Specification; provided that: (i) InterTrust has made a final determination that
-------- ----
it will issue such a New Specification materially prior to providing such New
Specification to Universal, and, in InterTrust's exercise of good faith, the
modifications contained within such New Specification reasonably, commercially
merit an early disclosure; and (ii) in InterTrust's exercise of good faith the
content of such New Specification and the date upon which such New Specification
will be released are sufficiently certain such that, on balance, the benefit of
Core Partners and Business Partners knowing about such New Specification
materially outweighs the potential detriment to Core Partners and Business
Partners of the announcement of a pending New Specification prior to its
completion and release. The sole and exclusive remedy for any such lack of
notification by InterTrust shall be an extension of the [*] month period
specified in subsection (2) immediately above by one (1) month. Notwithstanding
the foregoing, should serious technical interoperability and/or security
requirements commercially necessitate more prompt actions, Universal and
InterTrust will confer and agree upon the most prompt, practical schedule
feasible (considering the circumstances of such serious technical
interoperability and/or security requirement) to ensure Compliance with the New
Specification for all Universal Products and any associated services relating to
InterTrust Technology. Under such conditions, Universal shall take whatever
commercially appropriate steps are reasonable and required under the
circumstances to eliminate (as may be necessary and feasible) a continuation of
such interoperability and/or security problems. As may be reasonable,
appropriate, and applicable in light of Universal Products and consistent with
the purposes of the New Specification, in response to a reasonable request by
Universal, the Parties will [*] in good faith (and may mutually agree in each
Party's discretion) as to [*], and if [*], under what [*], [*], and, to what
[*], any [*] set forth in the preceding portions of this Section 5.2(b)(ii)
should be [*] to [*] reasonable commercial factors that may result from the
deployment of silicon embedded hardware versions of InterTrust Technology as
may be built directly into consumer devices and/or computers.
(c) Compliance Testing.
------------------
(i) Purpose; Basic Parameters. Universal acknowledges that:
-------------------------
(1) in support of InterTrust Technology, InterTrust will implement one or more
certification programs designed to ensure that licensed products and/or
associated services (including Universal Products) use InterTrust Technology
and/or Modified Technology in Compliance with InterTrust Specifications and that
Universal Products and associated services are in compliance with this Agreement
(the "Certification Program(s)"); and (2) such Certification Program(s) is (are)
-----------------------
critical to maintaining the reliability, interoperability, and tamper resistance
of products and associated services employing InterTrust Technology and/or
Modified Technology, and in maintaining public confidence in the integrity of
InterTrust Technology and/or brands as the resource for interoperable electronic
commerce. In establishing its Certification Programs, as may be modified from
time to time, InterTrust shall use reasonable efforts to establish policies
supporting efficient certification of products and services based upon
InterTrust Technology, subject, in InterTrust's discretion, to achieving the
aforementioned goals of certification. As appropriate under the circumstances as
determined by InterTrust in its discretion, such alternatives may, under certain
circumstances, include: (A) the pre-certification of certain components of
InterTrust Technology for use in Universal Products; (B) providing test programs
or suites amenable for self certification or preliminary assessment of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
22
CONFIDENTIAL
certifiability; and/or (C) otherwise supporting certification policies and/or
technology that reasonably enhance certification efficiency and Compliance with
InterTrust Specifications. Any Certification Program(s) established by or for
InterTrust for Business Partners, and all requirements with respect thereto,
shall be applied in a nondiscriminatory and consistent manner with respect to
Universal and all other Persons providing similar products and/or services.
(ii) Certification Requirements. Consistent with the
--------------------------
foregoing, in connection with any Certification Program InterTrust may, in
InterTrust's discretion, require the use of a suite of test software provided by
InterTrust (or an InterTrust delegate) for use by Universal to test and verify
that Universal Products (and/or associated services) are in Compliance with
InterTrust Specifications prior to the first distribution, sale, or other
transfer to, or use by, a Customer of such Universal Products (or associated
services, as applicable) or prior to further testing, as may be appropriate, by
InterTrust or a certifying authority authorized by InterTrust. If use of a test
suite is unsuitable, unavailable, impractical and/or inappropriate under the
circumstances as determined by InterTrust, InterTrust may require submission of
samples to InterTrust, or in InterTrust's discretion an InterTrust delegate, of
such Universal Products (and/or associated services) and associated programs,
parameter data, and other information (in Object Code form unless Source Code is
reasonably necessary) that may be technically material to Compliance with
InterTrust Specifications, so as to allow InterTrust (or an InterTrust delegate)
to perform confidential testing. To the extent that the foregoing procedures do
not, or can not reasonably be anticipated to, provide sufficient information to
verify Compliance, such Certification Program(s) may also require the provision
to InterTrust (or an InterTrust delegate) of full and detailed specifications
and documentation related to Universal's use of InterTrust Technology and
Modified Technology for Universal Products (and/or associated services) being
tested, and any additional Universal Products and materials reasonably required
for certification assessment purposes only, and are reasonably considered
material to Certification Testing. Universal shall comply with any Certification
Program established by InterTrust in accordance with the provisions of this
Section 5.2(c)(ii) and specifically acknowledges that such programs are
important in establishing a secure, trusted environment. All specifications and
documentation provided by Universal in connection with any such Certification
Program(s) shall be authenticated in writing by a Universal Executive, and no
Universal Product and/or associated service shall be made commercially available
hereunder unless it has become a Compliant Product (defined below).
(iii) InterTrust Certification Response. In connection with
---------------------------------
any submissions made to InterTrust or an InterTrust delegate in connection with
a Certification Program, InterTrust (or an InterTrust delegate) will respond in
a reasonably prompt manner following receipt of submitted products and access
to, or receipt of technology supporting, such service, unless commercially
reasonable factors necessitate prolonging such response, and in which case
written notification of such factors shall be provided to Universal. It is
acknowledged that InterTrust's (or an InterTrust delegate's) response time will
depend on factors such as ease of responsibly testing the product and quality of
implementation, including usability, reliability and clearness of code and
relevant documentation. Such response shall be in the form of: (1) a written
approval that the product or service is certified (a "Compliant Product"), such
-----------------
Universal Product and/or associated service relating to InterTrust Technology
not being Compliant until such certification has been granted; or (2) if not
approved, a detailed summary description of all identified factors causing it
not to be Compliant and, where known by InterTrust (or such delegate, as
applicable) and feasible, suggested solutions.
(iv) Costs. To defray costs associated with the performance
-----
and administration of the Certification Program, in connection with the
certification of any product or service Universal shall be charged a reasonable
fee not to exceed U.S. software industry norms for similar testing activities as
may be available (and, if conducted or managed by: (1) InterTrust, Universal
will be entitled such fee [*] or (2) an InterTrust delegate, Universal will pay
such fee that is charged by such InterTrust delegate to Universal and/or
InterTrust). A good faith estimate of such fee shall be provided to Universal by
InterTrust or an InterTrust delegate, as applicable, as soon as reasonably
practical upon Universal's submission of required samples or documentation for
testing, and such fee shall be paid by Universal at such time as is reasonably
required by InterTrust or such InterTrust delegate.
(d) Customer Agreements.
-------------------
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
23
CONFIDENTIAL
(i) Basic Requirements. Universal shall distribute
------------------
Universal Products and/or perform associated services only to, and/or for,
Customers for use solely within the Entertainment Field, and only after
Universal shall have first notified and required such Person to become bound by
a form of customer agreement for such Universal Product (and/or associated
service) and appropriate for such Customer (such as whether such Customer is an
end-user or intends to further distribute the Universal Product and/or
associated services, without modification whatsoever) (the "Customer
--------
Agreement(s)"), each such form of Customer Agreement having been provided by
- ------------
Universal, and such Customer having been bound under the terms and conditions of
such Customer Agreement. Such Customer Agreement forms shall have: (1) terms
relating to InterTrust Technology and InterTrust's rights and interests
consistent with and reflective of the terms of this Agreement; and (2) terms
consistent with, reflective of, and based upon the items set forth in Exhibit F
hereto (collectively, the "InterTrust Terms"), such InterTrust Terms shall be
-----------------
signed by an InterTrust Designated Officer and appended to Exhibit F, and
InterTrust may from time to time supplement or amend Exhibit F as provided in
this Section. The approved InterTrust Terms shall be used by Universal in all
Customer Agreements unless and until: (A) Universal requests a modification of
the InterTrust Terms and InterTrust consents in its discretion in writing to
such modification; or (B) InterTrust reasonably requires that Universal alter
the InterTrust Terms where such alteration is needed to protect InterTrust's
rights under this Agreement or to protect, or to prevent or mitigate any
impairment of any part of, its Intellectual Property Rights, for example in view
of court decisions and/or applicable regulations and/or newly available
information. Such alteration to the InterTrust Terms shall be signed by an
InterTrust Designated Officer and attached to Exhibit F in accordance herewith.
Universal agrees and acknowledges that Universal's compliance with this Section
5.2(d) shall constitute a condition precedent to the licenses granted under
Sections 4.1, 4.2, and 4.3 hereof with respect to any such Customer's use of
Universal Products and/or associated services. Universal agrees that to the
extent any of the InterTrust Terms are, or are likely to be, deemed
unenforceable or otherwise ineffective in any relevant jurisdiction, Universal
shall, upon any Universal Executive or General Counsel becoming aware of such
likelihood of being unenforceable or otherwise ineffective, including, for
example notification thereof by InterTrust, substitute new terms provided by
InterTrust concerning such unenforceable or ineffective provision in such
Customer Agreement forms and existing Customer Agreements, and take other
commercially reasonable actions as specified by InterTrust related to such
unenforceability concerns, including reforming, modifying and/or canceling any
such Customer Agreement if reasonably necessary to provide InterTrust with the
legally enforceable protection contemplated hereunder. Universal agrees and
acknowledges that Universal's performance of its obligations hereunder is
necessary for InterTrust to adequately protect its Intellectual Property Rights.
(ii) InterTrust Review of Customer Agreements. Unless an
----------------------------------------
InterTrust Designated Officer, in InterTrust's discretion, expressly and in
writing agrees otherwise, under no circumstances: (1) shall any such review by
InterTrust of InterTrust Terms and/or any term of any proposed Customer
Agreement subsequently be interpreted and/or used as comments of InterTrust to
be relied upon by Universal in any manner whatsoever regarding compliance of
such InterTrust Terms and/or such Customer Agreement with the provisions of this
Agreement; and/or (2) shall any such review or lack of review by InterTrust be
deemed (A) binding on InterTrust or constitute any waiver of any rights
whatsoever hereunder by InterTrust and/or (B) an admission or waiver of any kind
whatsoever under any circumstances whatsoever, except that Universal may rely on
InterTrust Terms attached to Exhibit F hereto as amended from time to time in
accordance herewith.
5.3 Notices and Branding.
--------------------
(a) Product Notices. Universal shall, in accordance with the
---------------
instructions and/or exemplars and samples attached hereto and/or provided from
time to time by InterTrust to Business Partners, place Notices (as hereinafter
defined) in a readable form and in a conspicuous place on all Universal
Products, associated services and Distributable Documentation: (i) in the "about
box;" (ii) on manuals and other documentation (including the Distributable
Documentation) for, and packaging for physical media containing, Universal
Products and/or associated services, and (iii) at such other equivalent
location(s) as may be reasonably specified by InterTrust and agreed to by
Universal, such agreement not to be unreasonably withheld, such as on certain
screens generated by or including the Universal Products
24
CONFIDENTIAL
and/or any associated services, and at such other locations as appropriate to
protect InterTrust's Intellectual Property Rights. For purposes of this
Agreement, the term "Notices" shall consist of: (i) Intellectual Property
-------
Rights, warranty, and disclaimer notices; and (ii) field of use notices
consistent with the terms of this Agreement. A representative version of such
Notices as of the Effective Date is attached hereto as Exhibit G; and such
Notices may be modified from time to time by InterTrust provided that (1)
written notice thereof is provided to Universal, (2) such modifications are
established and applied in a non-discriminatory and consistent manner with
respect to all Business Partners regarding similar products and/or services, and
(3) the provisions of Section 5.3(e) hereof shall apply thereto. Universal shall
not remove, alter, cover, obfuscate and/or otherwise deface any InterTrust
Trademarks or Notices on any InterTrust Technology or associated documentation,
marketing and advertising materials therefor, and shall not knowingly permit
(including by having a provision in Customer Agreements prohibiting) the
removal, alteration, covering, obfuscation or otherwise defacing of any
InterTrust Trademarks or Notices on any InterTrust Technology or associated
documentation, marketing and advertising materials therefor. Compliance with
subsections (i) and (ii) immediately above (following notice and opportunity to
cure in accordance with the provisions of Section 13.2(a) hereof) shall
constitute a condition precedent to the licenses granted under Sections 2.2,
4.1, 4.2 and/or 4.3 hereof.
(b) InterTrust Branding. Universal shall, in accordance with the
-------------------
provisions of this Section 5.3(b) and InterTrust's reasonable instructions
provided from time to time by InterTrust to Universal, place the InterTrust
brands as specified below on all Universal Products and associated services,
Distributable Documentation, marketing, sales, and advertising materials
therefor, packaging for any physical media containing any such products or
services, on initialization and/or start-up screens of any Universal Products
and/or associated services, or such screens generated by or including the
Universal Products and/or any associated services, except that Universal is not
required to place such InterTrust brands on any physical media surface (e.g.,
CD-ROM surface) which predominantly contains music Content that is not Managed
by InterTrust Technology and where Universal is not providing brand space on
such physical media surface for one or more other technologies that are employed
in support of one or more portions of Content stored on such physical media,
where, for example, such portions do not constitute the principal Content stored
on such physical media. Further, Universal shall also place InterTrust brands on
the primary player interface for any Universal Reader Module, but may place such
InterTrust brands in a secondary, though reasonably prominent, manner and
Universal shall not be required to place such brands on secondary interface
screens, except as may be common industry practice. The InterTrust brands shall
be the symbol or mark denoting Compliance of such Universal Products and/or
associated services with InterTrust Specifications as set forth on Exhibit H
hereto, including the statement that such Universal Products or associated
services are "MetaTrust Certified," "InterTrustworthy," or "InterTrustable" (as
such symbol or mark is selected and may be amended by InterTrust from time to
time consistent with the provisions of Section 5.4(d) hereof). Such branding
shall be located and appear in the manner reasonably specified by InterTrust,
which shall be prominent, although secondary to the brands of Universal, and/or
a Universal Customer on Universal Products and/or services. Such InterTrust
branding shall be prominent, but not unreasonably detract from, or interfere
with, such other brands. Universal shall not remove, alter, cover, obfuscate
and/or otherwise deface any InterTrust brands and shall not knowingly permit
(including by having a provision in Customer Agreements prohibiting) the
removal, alteration, covering, obfuscation or otherwise defacing of any such
InterTrust brands.
(c) Universal Product Branding. Universal Products that are
--------------------------
Application Products (and/or services associated therewith) shall be branded and
marketed solely under Universal Trademarks or "Co-Branded" (as defined below)
under a Universal Trademark and the trademark of a Customer in accordance with
the provisions hereof (except where use of InterTrust Trademarks is also
required herein, or other trademarks of Persons are also included in a limited
manner to identify other technology or services associated with such Universal
Product and/or associated service), and in all events in accordance with the
provisions of Section 4.5 and other provisions hereof. As used herein, "Co-
---
Branded" means that the Universal Trademark brand is not materially less
- -------
prominent than the brand of such Universal Customer that also appears on the
Universal Product, and in all events not less than essentially [*] percent
([*]%) of the aggregate presentation and visible area devoted to identification
of brands on a product or service offering (or in related materials) containing
references to any such brand. Any references to Clearinghouse Function services
with, in, or otherwise related to Universal Products that are Application
Products, and/or products or services through which Universal provides
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
25
CONFIDENTIAL
Clearinghouse Function services shall be branded and marketed solely under
Universal Trademarks (except where use of InterTrust Trademarks is also required
herein, or other trademarks of Persons are also included in a limited manner to
identify other technology or services associated therewith) and stipulated in
accordance with the provisions of Section 4.5. Such Clearinghouse Function
services shall be promoted in a prominent manner, including most prominent
mention on interfaces directly relating to initiating and/or reporting on
transactions, and materially prominent, mention on other splash screens and/or
other relevant interfaces. Co-branding may not be used in association with
Universal Clearinghouse Function services and products.
(d) Network Notices. At InterTrust's request and upon
---------------
Universal's approval, which shall not be unreasonably withheld, Universal World
Wide web pages that materially promote or otherwise support Universal Products,
and/or associated services and InterTrust Technology (and/or at least one
Universal Web page that materially promotes Universal Products and/or associated
services if no World Wide web pages materially promote or otherwise support
InterTrust Technology) shall contain a graphical icon provided by InterTrust
which is a link to a web page provided by InterTrust on the Internet or the
equivalent thereof on any other public electronic network that is controlled by
and materially promotes InterTrust Technology. At Universal's request and upon
InterTrust's approval, which shall not be unreasonably withheld, InterTrust Web
pages that materially promote or otherwise support InterTrust Technology and/or
Universal Products and/or associated services (and/or at least one InterTrust
Web page that materially promotes InterTrust Technology if no Web pages
materially promote or otherwise support Universal Products and/or associated
services) shall contain a graphical icon provided by Universal which is a link
to a Web page provided by Universal on the Internet or the equivalent thereof on
any other public electronic network that is controlled by and materially
promotes Universal Products and/or associated services so long as Universal
promotes InterTrust Technology as its Preferred Technology.
(e) Prospective Notice. The Notices shall be effective beginning
------------------
on the date InterTrust gives Universal written notice thereof (in accordance
with Section 14.6) and Universal shall implement and/or comply with applicable
portions thereof as soon as reasonably commercially practicable thereafter.
5.4 InterTrust Trademarks.
---------------------
(a) Standards. Universal recognizes the importance of
---------
InterTrust's reputation and goodwill, and of maintaining high, uniformly applied
standards of quality in connection with Universal's use and distribution of
products, applications, and services pursuant hereto bearing InterTrust
Trademarks. Consequently, to maintain InterTrust's interest in and rights to the
InterTrust Trademarks, products, and associated services, and to maintain in the
mind of the public and customers that InterTrust Technology and its components
represent high levels of quality, trust and reliability, Universal shall utilize
the InterTrust Trademarks in accordance with trademark guidelines ("Trademark
---------
Guidelines") (which may include approved samples and exemplars) as may be
- ----------
provided to Universal (and/or reasonably modified) by InterTrust from time to
time in its discretion (and the implementation thereof shall be consistent with
Section 5.4(d)). A copy of the current Trademark Guidelines is included in
Exhibit C hereto. Such Trademark Guidelines shall: (i) include a list of
InterTrust Trademarks and shall specify restrictions on use, if any, including
permitted and prohibited countries and jurisdictions; and (ii) may be revised
from time to time by InterTrust. InterTrust Trademarks, as listed on Exhibit C
hereto (the "Initial InterTrust Marks"), may be modified by InterTrust from time
------------------------
to time to include new Trademarks upon InterTrust's provision to Universal of
reasonable prior written notice ("Added InterTrust Marks") (and the
----------------------
implementation thereof shall be consistent with Section 5.4(d)). Any such Added
InterTrust Marks shall not include any names, logos or marks that are identical
with, substantially similar to, or substantially conflict or create a likelihood
of confusion with and/or significantly undermine the value of, any then-existing
trademark rights of Universal, or trademark rights with respect to any names,
logos or marks then used on any Universal Products, where Universal promptly
notifies InterTrust in writing that such new trademark is believed in good faith
by Universal to so conflict with, or significantly undermine the value of, then-
existing trademarks of Universal.
(b) Trademark Ownership; Contestability. Universal acknowledges
-----------------------------------
and agrees that all uses of InterTrust Trademarks as permitted hereunder, and
the goodwill associated therewith, shall inure solely to the benefit of
InterTrust.
26
CONFIDENTIAL
Universal agrees that except in the case of a breach of Section 5.6(b) hereof it
shall not contest the validity of any InterTrust Trademarks or registrations
thereof or applications with respect thereto, or InterTrust's exclusive
ownership of the InterTrust Trademarks or their associated goodwill. Universal
agrees to make available to InterTrust, upon request with reasonable notice,
samples of records and other documentary evidence as is/are retained in the
ordinary course of Universal's business regarding its use of the InterTrust
Trademarks, and Universal shall observe, at minimum, reasonable industry
standards for recording and maintaining such information, including, for
example, information regarding first use of the InterTrust Trademarks by
Universal in each country.
(c) Confusing Similarity. Subject to InterTrust's obligations
--------------------
under Section 5.4(a), Universal shall not use any marks identical with or
confusingly similar to any of the InterTrust Trademarks, or Added InterTrust
Trademarks used in commerce by InterTrust at any time, and shall not register or
attempt to register any marks identical with or confusingly similar to any of
the Initial InterTrust Marks, or Added InterTrust Marks. Universal also shall
not knowingly permit to be used or offered (and shall prohibit in its Customer
Agreements a Customer from using or affixing) any trademark on any Universal
Product (and/or associated service) supplied to such Customer to the extent such
trademark could reasonably be thought to substantially conflict or create a
likelihood of confusion with, and/or be significantly undermined in value by,
any trademarks used by such Customer in connection with any products or services
using any Other Technology.
(d) Prospective Notice. Changes in the InterTrust Trademarks and
------------------
associated standards of quality shall be effective beginning on the date
InterTrust gives Universal written notice thereof and Universal shall, as soon
as reasonably commercially practicable thereafter, implement and/or comply with
such respective portions thereof. In the event a change in the Trademark
Guidelines due to any judgment, agreement pursuant to settlement of a claim, or
other modification of Trademark Guidelines in connection with a potential
InterTrust liability, and upon written notice from InterTrust, Universal will
implement such changes and cease activities non-compliant with such changes in a
more expeditious manner taking into account the gravity of the circumstances.
5.5 Universal's Use of Universal Trademarks on Universal Products. To
-------------------------------------------------------------
promote the branded and distinct identity of Universal Products, and/or
associated services, Universal acknowledges and agrees that it shall not, at any
time, use (and it shall prohibit in its Customer Agreement any Person whose
trademark appears with Universal Product from using) any trademark or logo used
in commerce to specifically identify, label or market any such products or
associated services, to identify any product or service other than such
Universal Products, and associated services (other than trademarks or logos that
serve to generally identify Universal or to generally identify a Universal
Customer who has co-branding rights hereunder in regards to such Universal
Products and/or associated services).
5.6 Universal Trademarks. Subject to the terms and conditions of this
--------------------
Agreement, InterTrust shall have a royalty free right to use the Universal
Trademarks and other Universal trademarks as selected by Universal in its sole
discretion, solely in connection with any publicity in accordance with Section
8.1 and 8.2, and solely with the advance written approval of Universal, in each
instance, at the sole discretion of Universal. Universal hereby agrees that at
any time after the Joint Press release during the Term, InterTrust may display
Universal's corporate logo on InterTrust's website and/or promotional materials
solely to disclose that Universal is a licensee of InterTrust; provided however
that each such use of the Universal logo, including without limitation the form,
size and placement of such logo on any web page and promotional materials, shall
be subject to the advance written approval of Universal, in its sole discretion.
Further, in this connection:_
(a) Standards. InterTrust recognizes the importance of
---------
Universal's reputation and goodwill, and of maintaining high, uniformly applied
standards of quality in connection with InterTrust's use of Universal Trademarks
as permitted hereunder. Consequently, to maintain Universal's interest in and
rights to the Universal Trademarks, products, and associated services, and to
maintain in the mind of the public and customers that Universal products and
services represent high levels of quality, trust and reliability, InterTrust
shall utilize the Universal Trademarks in accordance with trademark guidelines
(which may include approved samples and exemplars) as may be provided to
InterTrust (and/or reasonably modified) by Universal from time to time in its
discretion. Such trademark guidelines may be revised from time
27
CONFIDENTIAL
to time. As to Universal Trademarks not in commercial use as of the Effective
Date, such trademarks shall not include any names, logos or marks that are
identical with, substantially similar to, or substantially conflict or create a
likelihood of confusion with and/or significantly undermine the value of any
then-existing trademark rights of InterTrust or Added InterTrust Trademarks,
where InterTrust promptly notifies Universal in writing that such new trademark
is believed in good faith by InterTrust to so conflict or significantly
undermine the value of such then-existing trademarks of InterTrust.
(b) Trademark Ownership; Contestability. InterTrust acknowledges
-----------------------------------
and agrees that all uses of Universal Trademarks as permitted hereunder, and the
goodwill associated therewith, shall inure solely to the benefit of Universal.
InterTrust agrees that except in the case of a breach of Section 5.4(a) hereof
it shall not contest the validity of any Universal Trademarks or registrations
thereof or applications with respect thereto, or Universal's exclusive ownership
of the Universal Trademarks or their associated goodwill. InterTrust agrees to
make available to Universal, upon request with reasonable notice, samples of
records and other documentary evidence as is/are retained in the ordinary course
of InterTrust's business regarding its use of the Universal Trademarks, and
InterTrust shall observe, at minimum, reasonable industry standards for
recording and maintaining such information, including, for example, information
regarding first use of the Universal Trademarks by InterTrust in each country.
(c) Confusing Similarity. InterTrust shall not use any marks
--------------------
identical with or confusingly similar to any of the Universal Trademarks and
shall not register or attempt to register any marks identical with or
confusingly similar to any of the Universal Trademarks.
(d) Prospective Notice. Changes in the Universal Trademarks and
------------------
associated standards of quality shall be effective beginning on the date
Universal gives InterTrust written notice thereof and InterTrust shall, as soon
as reasonably commercially practicable thereafter, implement and/or comply with
such respective portions thereof. In the event a change in the Universal
trademark guidelines due to any judgment, agreement pursuant to settlement of a
claim, or other modification of trademark guidelines in connection with a
potential Universal liability, and upon written notice from Universal,
InterTrust will implement such changes and cease activities non-compliant with
such changes in a more expeditious manner taking into account the gravity of the
circumstances.
5.7 Translation of Material in Foreign Languages. InterTrust shall
--------------------------------------------
have the right to receive and approve, such approval not to be unreasonably
withheld or delayed, any non-English translations made by or for Universal of
documentation, marketing and sales materials provided by Universal concerning
Universal Products and any related services (to the extent such documentation,
marketing, and/or sales materials reference InterTrust Technology and/or
capabilities and/or functions enabled by InterTrust Technology), legends and
notices required pursuant to Section 5.3 hereof and other required notices, and
all versions of InterTrust Technology. If InterTrust informs Universal of any
errors in such translations, Universal shall promptly correct such errors.
6. LICENSE FEES AND PAYMENT TERMS.
6.1 Fees and Royalties.
------------------
(a) InterTrust Technology and Option Fees. In consideration of
-------------------------------------
the licenses granted to Universal herein and the other terms and conditions
hereof, Universal shall pay to InterTrust the following amounts, net of any
withholding tax and concurrently with the execution hereof, a nonrefundable
payment of [*] dollars (US$[*]) (the "Initial Fee"), which will be [*] due
-----------
InterTrust in the manner set forth in Section 6.3 below ([*]) if (and only if)
Universal does not exercise the Option as set forth in Section 4.1(b) hereof.
Concurrently with Universal's exercise of the Option, Universal shall pay to
InterTrust a nonrefundable payment of [*] dollars (US$[*]). If Universal
directly receives any license fee from any Authorized Venture or the
participants of an Authorized Venture in connection with the grant of the
sublicense of Section 2.2 (or such Authorized Venture participants'
participation in an Authorized Venture), Universal shall pay to InterTrust [*]
percent ([*]%) of
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
28
CONFIDENTIAL
such fee, if any; provided that such license fee shall not include capital
-------- ----
contributions made by such Venture participants to an Authorized Venture.
(b) InterTrust Technology Royalties. In consideration of the
-------------------------------
licenses granted to Universal herein and the other terms and conditions hereof,
Universal (and/or an Authorized Clearinghouse Provider as may be permitted under
this Agreement) shall pay to InterTrust the following royalties, net of any
withholding tax:
(i) [*] of [*] percent ([*]%) of the Gross Commercial
Value of each Content Transaction where any Clearinghouse Function is performed
at least in part;
(ii) [*] percent ([*]%) of the Gross Commercial Value
received for the complete or partial performance of any Clearinghouse Functions
at least in part, but in no event including the payment of royalties for
Clearinghouse Functions under Section 6.1(b)(i) above; and
(iii) for all revenue and the monetary value of other
consideration, if any, actually received by Universal directly in connection
with the sale, lease, license, distribution, transfer, or other use of Universal
Products and/or services that utilize Universal Products and/or InterTrust
Technology (such as service fees for packaging third party Content and/or fees
for hosting Content in connection with a Universal service), and not based on
performance of Clearinghouse Functions, a royalty of [*] percent ([*]%) of all
such revenue and any such monetary value for other consideration received by
Universal, minus any sales, use, value added or other taxes (except withholding
taxes) imposed by any national, state, local or foreign government and paid by
and/or for Universal on such received revenue and/or any other consideration (as
calculated according to generally accepted accounting principles consistently
applied with past practices).
(c) Support Fee. Subject to the provisions hereof, in partial
-----------
consideration for InterTrust's provisions of Support set forth in Section 3.2
hereof and other maintenance activities as set forth herein, during the Initial
Support Period, Universal shall pay to InterTrust the amount of [*] dollars
(US$[*]) per quarter (the "Support Fee"). The Support Fee shall be paid within
-----------
thirty (30) days after the first day of each calendar quarter in accordance with
Section 6.4 hereof.
6.2 [*]
6.3 Payment Procedure. In the instance, but solely in the instance,
-----------------
where Universal has not exercised its Option pursuant to Section 4.1(b) hereof,
Universal shall be entitled thereafter to [*] percent ([*]%) of all [*] by
Universal and [*] under Sections [*] and [*] in a calendar quarter [*] the
[*]; provided that the total amount of all such [*] under this Agreement shall
-------- ----
under no circumstances [*] dollars ($US[*]) in the aggregate. Except as
otherwise expressly provided in this Agreement, within [*] days after the end of
each calendar quarter, Universal shall pay InterTrust all amounts due and/or
payable pursuant to the licenses and support provided hereunder, and invoiced,
billed, transferred
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
29
CONFIDENTIAL
or received, whichever occurs first, during such calendar quarter. In the event
any rise in inflation during the later [*] days of such [*] day period
results in a decline in more than [*] ([*]%) of the value of any payment, the
Parties shall promptly and mutually agree on a method for making appropriate
adjustments to such payment to avoid such decline, which agreement shall not be
unreasonably withheld or delayed. Universal shall make payments hereunder by
wire transfer, or in the instance of quarterly payments, by check or wire
transfer, to such account as designated by InterTrust in writing. Concurrently
with each royalty payment, Universal shall provide to InterTrust a written
royalty report, certified to be accurate by an officer of Universal specifying:
(i) the revenues derived by Universal that are subject to royalties during each
calendar month of such quarter; (ii) the basis for calculation of the amounts
due and payable; and (iii) summaries of business records employed by Universal
to arrive at the information set forth in (i) and (ii) immediately above. The
manner of calculation of the amounts due and payable to InterTrust hereunder
shall be determined in accordance with recognized and generally accepted U.S.
accounting procedures and principles that shall be consistently applied to all
such payments.
6.4 Currency. Gross Commercial Value received by Universal subject to
--------
the royalties of Section 6.1(a) in a currency other than U.S. dollars shall be
converted by Universal to U.S. dollars on a monthly basis for purposes of
payment to InterTrust on a quarterly basis according to the rate of exchange for
such currency, as published by the Wall Street Journal (Western Edition or main
edition in absence of a Western edition) on the last business day during each
calendar month of a calendar quarter for which such royalties are due, or if The
Wall Street Journal ceases or fails to publish such rate of exchange at any time
during this Agreement, the rate of exchange during any such period of cessation
shall be such rate published by Bank of America (San Francisco, California) or a
comparable source as may be reasonably chosen by InterTrust for its Business
Partner and agreed by Universal, such agreement shall not be unreasonably
withheld.
6.5 Taxes. Universal shall pay taxes, including but not limited to
-----
withholding taxes, imposed by any foreign government or any other jurisdictions
outside of the United States, as applicable, on all fees and royalties payable
to InterTrust under this Agreement. To the extent [*] permit InterTrust to
obtain, with minimal burden and expense to InterTrust, a valid [*] (or
functional equivalent) from [*] jurisdictions permitting Universal to make such
fee and royalty payments free of any such [*] jurisdiction [*] taxes, InterTrust
and Universal shall work together in good faith to obtain such [*]. In no event
shall InterTrust receive, in the aggregate, less than the fees and royalties set
forth in Section 6.1, including, for example, where Universal is required by a
[*] jurisdiction to [*] any fee or royalty payment owed to InterTrust by the
amount of [*] taxes. In addition, if InterTrust receives a [*] from any such
[*] jurisdiction for any amount of [*] taxes paid by Universal, InterTrust shall
[*] such amount to Universal. Universal shall be responsible for payment of all
sales, use, value-added and other taxes, duties, and other charges that may fall
due with respect to: (i) the transfer to or licensing, reproduction,
distribution, and/or use by Universal of, the Universal Products; and (ii)
Universal's activities in regards to the Clearinghouse Functions. InterTrust
shall be responsible for payment of all sales, use, value-added and other taxes
that may be imposed on InterTrust with respect to: (a) the transfer to, or
licensing to, Universal of the InterTrust Technology hereunder; or (b) the
payments received hereunder. Except as provided in this Section 6.5, each Party
shall be responsible for its own income tax liability imposed by any government.
6.6 Interest. Universal agrees that: (i) all sums owed or payable to
--------
InterTrust hereunder shall bear interest (compounded daily) at the [*] Rate on
an annualized basis as published at the end of a calendar quarter for which such
royalties are due, or such lower rate as may be the maximum rate permitted under
applicable law, from the date upon which payment of the same shall first become
due up to and including the date of payment thereof whether before or after
judgment; and (ii) shall be additionally liable for all costs and expenses of
collection, including, without limitation, reasonable fees for attorneys and
court costs in that connection. Notwithstanding the foregoing, such specified
rate of interest shall not excuse or in any way whatsoever be construed as a
waiver of Universal's express obligation to timely provide any and all payments
due to InterTrust hereunder.
6.7 Audit. Universal shall maintain at a reasonable North American
-----
location during the Term of this Agreement for the Audit Period (as defined
below) all books, records, accounts, and other information regarding Universal's
activities
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
30
CONFIDENTIAL
in connection herewith sufficient according to reasonable accounting practices
to determine and confirm Universal's royalty obligations hereunder. Upon
InterTrust's prior written request, Universal will permit an internationally-
recognized top-five accounting firm of InterTrust's choice (subject to
Universal's consent, which shall not be unreasonably withheld or delayed) to
examine and audit, during normal business hours at the location where records
are normally kept (but no more than [*] every [*] months), such books,
records, accounts, and other information, and take extracts therefrom or make
copies thereof for the purpose of verifying the correctness of Universal's
reported royalty statements and payments provided by Universal. Universal
shall pay any unpaid delinquent amounts within [*] days of InterTrust's
request. To the extent such examination discloses an annualized underpayment
of more than [*] percent ([*]%) of sums actually due InterTrust and/or an
underpayment of more than [*] dollars (US$[*]), Universal shall fully
reimburse InterTrust, promptly upon demand, for the fees and disbursements due
the auditor for such audit; provided that such prompt payment shall not be in
lieu of any other remedies or rights available to InterTrust hereunder. If an
audit reveals an overpayment, InterTrust shall promptly notify Universal of
such overpayment and Universal and InterTrust will reasonably discuss and
agree upon the methods for applying the amount of such overpayment against
future royalties in the next payment period or successive periods in a manner
reasonably balancing InterTrust's and Universal's commercial circumstances and
interests but such repayment shall be in a manner that does not cause undue
hardship for InterTrust and, in the absence of significant circumstances, any
such applied amount to effect repayment shall not exceed [*] percent ([*]%) of
royalties due in any payment period hereunder. As defined herein, with respect
to a royalty payment made hereunder for an applicable period, "Audit Period"
------------
shall mean [*] years following such royalty payment. Any Claim for delinquent
or inaccurate payment of royalty for any particular quarterly royalty period
shall not be initiated by InterTrust for underpayment (or Universal for
overpayment) shall be commenced within [*] year of the commencement of the
applicable audit; provided that the foregoing limitation shall not apply with
-------- ----
respect to any payment due InterTrust: (a) where an audit has been conducted
and an underpayment determined, InterTrust has informed Universal of such
determined underpayment, and such determined underpayment has not been made in
full to InterTrust; or (b) if Universal and/or its Agents have engaged in any
fraud, gross negligence, material misrepresentation or material omission with
respect to royalty payments and/or reports hereunder. All of the foregoing
shall be subject to statutes of limitation under applicable law.
7. PROPRIETARY INFORMATION AND OWNERSHIP.
7.1 InterTrust Ownership. Universal acknowledges and agrees that, as
--------------------
between InterTrust and Universal, InterTrust is the sole and exclusive owner of,
and shall retain and hereby reserves (and nothing herein shall alter
InterTrust's reservation of) all right, title and interest in: (i) the
InterTrust Technology, enhancements and modifications thereto, and derivative
works thereof created by or for, or acquired by, InterTrust, and all
Intellectual Property Rights embodied therein; (ii) all Intellectual Property
Rights created, or embodied in any works (whether tangible or intangible)
created or independently developed, by InterTrust in connection with its
performance of this Agreement; and (iii) Modified Technology not owned by
Universal pursuant to Section 7.2 hereof, and all Intellectual Property Rights
embodied therein (collectively, the "InterTrust Property"). No provision
-------------------
contained in this Agreement shall be construed to transfer to Universal or any
other Person any title or ownership interest in any InterTrust Property.
7.2 Universal Ownership. InterTrust acknowledges and agrees that, as
-------------------
between Universal and InterTrust, Universal shall be the sole and exclusive
owner of, and shall retain and hereby reserves (and nothing herein shall alter
Universal's reservation of) all right, title and interest in, the portions of
the following created solely by (or for) Universal hereunder: (i) any Universal
Products, except for any InterTrust Property therein; (ii) Modified Technology
created in accordance with the terms hereof (except (a) for any InterTrust
Property therein and/or (b) to the extent (and solely to the extent) such
Modified Technology merely reimplements the existing functionality of InterTrust
Technology provided to Universal (including, for example, porting or translation
thereof) and not to the extent that such Modified Technology adds new
functionality or enhanced functionality); and (iii) all Intellectual Property
Rights embodied in such Universal Products or such Modified Technology
("Universal Property") independently developed by or for Universal in accordance
-------------------
herewith. No provision contained in this Agreement shall be construed to
transfer to InterTrust or any other Person any title or ownership interest in
any Universal Property.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
31
CONFIDENTIAL
7.3 Universal License to InterTrust. In consideration of the licenses
-------------------------------
granted and of other consideration provided by InterTrust to Universal under
this Agreement, during the Term of this Agreement and during the period in which
any rights under Section 13.3(b) are in effect, Universal hereby grants to:
(a) InterTrust, its affiliates, and their successors, assigns,
and direct and indirect customers (including users of InterTrust Technology) a
limited, nontransferable, nonsublicensable, nonexclusive, royalty-free and
worldwide license under the patent rights of Universal to make, use, sell, offer
for sale, import, distribute and/or otherwise exploit InterTrust Technology, any
products or services directly relating to the InterTrust Technology and/or
directly relating to electronic rights management, distributed electronic event
management, or distributed operating system technology, but solely to the extent
that such activities would, but for such license, infringe any such patent
rights of Universal (including any patents disclosing and/or claiming any
Modified Technology); and
(b) InterTrust, its affiliates, and their successors and
assigns a nonexclusive, royalty-free and worldwide license under the
Intellectual Property Rights (other than trademark, tradenames, and services
marks) of Universal to use Universal Products solely in connection with
InterTrust's internal testing, evaluation and enhancement of performance,
security and/or interoperability characteristics of InterTrust Technology with
such Universal Products, and not for redistribution, licensing, sale or other
transfer to any Person.
[*]
8. JOINT ACTIVITIES AND [*].
8.1 Joint Press Release. Except as otherwise provided in this
-------------------
Agreement, promptly after the Effective Date, the Parties shall issue the press
release in the form attached hereto as Exhibit K (the "Joint Press Release"). In
-------------------
addition, Universal and InterTrust shall throughout the Term work together to
publicly issue additional mutually agreeable press releases disclosing the
future plans of the Parties relating to the use of InterTrust Technology and
support for the MetaTrust Utility (the "Followup Press Releases"). Upon
-----------------------
InterTrust's request from time to time, and so long as Universal is using
InterTrust Technology in development of or distribution of a pilot trial or in
development of or distribution of a commercial release of a Universal Product,
Universal will use reasonable efforts to meet with investors, potential
investors or licensees and/or financial and marketing analysts to promote and
clearly endorse, to InterTrust's benefit, InterTrust Technology, including
explaining for a minimum of twelve (12) months from the Effective Date that
InterTrust is Universal's preferred rights and distributed trust management
technology partner and Universal's direct and material support for the MetaTrust
Utility. Unless otherwise agreed in writing, all further public disclosures by
either Party concerning the subject matter of the Joint Press Release, the
Followup Press Releases and/or Section 8.2 hereof shall be consistent with, and
not exceed the scope of, the content of the Joint Press Release, the Followup
Press Releases, InterTrust Specifications and the other provisions hereof. All
other public disclosures with respect to the terms hereof shall be made in
accordance with Section 9.5.
8.2 Promotion and Marketing. The parties shall jointly participate
-----------------------
in, and from time to time (as they may agree) engage in, promotional, marketing,
and sales activities designed to: (i) increase industry awareness of Universal
Products (and associated services) and InterTrust Technology; and (ii) promote
the dissemination and use of InterTrust's technology as the general purpose
Digital Rights Management and Secure Container standard solution for electronic
commerce. Each Party will assist the other with marketing activities relating to
the Universal's use of InterTrust Technology by, for example, displaying certain
InterTrust Trademarks on products and services (and materials relating thereto)
and jointly participating in, as mutually agreed in each Party's discretion,
trade shows and customer events.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
32
CONFIDENTIAL
8.3 Technology Advisory Committee. To further strategic opportunities
-----------------------------
among the Parties and to encourage feedback concerning InterTrust Technology,
InterTrust currently intends to establish a committee limited to representatives
of: (i) leading companies chosen from certain technology, financial and/or
content industry companies that have close technology strategic relationships
with InterTrust; and (ii) certain leading experts in technology or business
applicable to information and electronic commerce (the "Technology Advisory
-------------------
Committee"). The Technology Advisory Committee shall meet regularly at a forum
- ---------
to be selected by InterTrust for the purpose of discussing and exchanging ideas
for improving the functionality, interoperability, and market acceptability of
InterTrust Technology and related issues pertaining to the electronic commerce
industry. Upon the establishment of the Technology Advisory Committee: (a)
InterTrust shall grant Universal the right to have one seat as a member of the
Technology Advisory Committee; and (b) Universal, at its option, may elect and
notify InterTrust of its designation of an executive (who may be an employee of
Universal) to serve on such committee. Universal may propose that in place of
itself a representative of the Authorized Venture serve on behalf of, and as a
designee of, Universal on the Technology Advisory Committee, such designation
shall be subject to InterTrust's prior written approval. To the extent it
participates, Universal shall: (1) be responsible for all acts and omissions of
the representative in connection with the Technology Advisory Committee; and (2)
pay for all expenses incurred by Universal in connection with participation on
such Committee unless InterTrust pays for expenses of any other Business Partner
member, wherein such other Business Partner member's agreement has overall terms
substantially similar to the terms hereof. Universal's right to a seat on the
Technology Advisory Committee shall be contingent upon (and subject to): (A)
material compliance with generally applicable committee rules, and the terms and
conditions hereof; (B) avoidance of activities by Universal and/or Authorized
Venture (as applicable) that materially conflict with InterTrust's interests, as
determined by InterTrust in its discretion; and (C) continuation of the
Technology Advisory Committee. It is acknowledged that Universal's
representative on the Technology Advisory Committee will be exposed to
InterTrust Confidential Information, and may be exposed to confidential
information of other InterTrust partners.
8.4 [*]
(a) Basic Provisions. In recognition of and partial
----------------
consideration for providing [*] with material, early access to [*] and highly
confidential [*] and Intellectual Property, and the rights hereunder, [*]
agrees to the following [*]. Without obtaining the express prior written
consent of an [*], in the exercise of [*] discretion, during the first [*]
years of the Term [*] shall not, in connection with the Management of Content
in the [*] (as such [*] may be further expanded upon the exercise of the [*]):
(i) commercially or publicly [*], [*], or [*] in the commercial or public [*]
or [*] of, any technology, products and/or associated services that use
or incorporate any [*], except that a [*] may [*] and [*] (1) Pre-Authorized
Other Technology for use in conjunction with InterTrust Technology (where
InterTrust Technology is the Preferred Technology) and where the use of such
InterTrust Technology is Compliant with InterTrust Specifications; and (2) any
Other Technology, provided that such use of such Other Technology has been [*]
in writing by Universal and an InterTrust Designated Officer in each Party's
good faith exercise of its discretion, following discussion by the Parties of
their respective commercial interests; nor (ii) perform in whole or in part
any [*] functions (that would be deemed [*] if performed using InterTrust
Technology) using any Other Technology and/or for information that has been
derived at least in part from the use of any Other Technology (except and
solely except as incorporated in a [*] in accordance with the provisions of
the immediate preceding subparagraph (i)). During such [*] year period, upon
[*] prior written request, [*] agrees to [*] as its [*] to investors,
potential investors and/or licensees of [*] provided such verbal endorsement
need not be [*] made and will be subject to a non-disclosure agreement unless
otherwise agreed in writing (including by email) by an InterTrust Designated
Officer and a Universal Executive.
(b) Caveats. Notwithstanding the foregoing, subparagraphs (i)
-------
and (ii) of Section 8.4(a) immediately above shall not be construed in any way
to prohibit [*] from participating in the [*]; provided that
-------- ----
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
33
CONFIDENTIAL
[*] does not [*] any Digital Rights Management technology for the project. [*]
shall not [*] and/or [*] the [*] to a greater degree than the other
participants in the [*], and, shall within [*] ([*]) months after the
Effective Date, launch, conduct and use reasonable efforts to have [*] join
in, a [*] project in the U.S. on a scale at least reasonably comparable to the
[*] using [*] as its principal Digital Rights Management technology (the [*]).
Further, nothing in Section 8.4(a) shall be construed to require [*] to
refrain from [*] Content intended for use with any [*] or [*] where the [*] of
such Content individually instructs [*] to do so, provided that [*] uses
-------- ----
commercially reasonable efforts to [*] and [*] the use of [*] with such Content
instead of any [*] or [*]; and further provided that for the [*] year period
------- -------- ----
stated in Section 8.4(a), [*] does not [*] any [*] directly with such [*]. [*]
shall not [*] the brand of the provider, or provider products and/or
services, of such [*] or [*] on any part of its [*] or [*] except to the
minimum extent necessary as required by any [*] of such [*] or [*], and then
only directly regarding the specific use of such [*] or [*] for such [*]
specific entertainment products.
9. CONFIDENTIALITY.
9.1 Classification of Technology and Documents For Confidentiality
--------------------------------------------------------------
Purposes. For ease in complying with the terms of this Section 9, information
and documents to be exchanged by the Parties shall be marked, as appropriate, to
identify the confidential or non-confidential nature of the information, and
information exchanged orally or visually shall be described, as appropriate, to
alert the recipient of the confidential or non-confidential nature of the
information. As regards InterTrust Technology (including Documentation) and
other documents or information provided by InterTrust to Universal in tangible
form, or provided orally or visually hereunder, such information shall be marked
or indicated, as appropriate, as: (i) "Unclassified"; (ii) "Confidential"; or
(iii) "Top Secret," and, as regards Universal information, such information
shall be marked as: (a) "Unclassified" or (b) "Confidential." All InterTrust
Confidential Information and Universal Confidential Information may be referred
to as "Confidential Information." A Party and its authorized personnel shall
------------------------
exercise careful judgment when they are in possession of information of the
other Party that has not been marked or indicated with one of the above-
described classifications. If any information provided by one Party has not
been marked or indicated as above and is not known with certainty by the
receiving Party to have been either publicly released or otherwise classified as
"Unclassified," then such other Party, its employees and any other Person
authorized to possess such information shall treat such information as
"Confidential," except that information provided by InterTrust to Universal
orally or visually regarding security (including tamper resistance and/or
cryptographic key management) aspects of InterTrust Technology which is
thereafter confirmed in writing by InterTrust that such information constitutes
Top Secret Information shall be treated as of the date of receipt of such
writing by Universal as Top Secret Information in accordance with Section 9.2(b)
hereof.
9.2 InterTrust Information.
-----------------------
(a) Confidential Information. To the extent that Universal
------------------------
receives from InterTrust under this Agreement any InterTrust Technology or any
other information or technology that is marked "Confidential" when disclosed in
written form, or indicated as "Confidential" when disclosed orally or visually
("InterTrust Confidential Information"), Universal shall hold such InterTrust
-----------------------------------
Confidential Information in strict confidence and in a manner that is: (i)
sufficiently secure for the character and content of the InterTrust Confidential
Information as reasonably determined by Universal to protect the interests of
InterTrust and the InterTrust Technology environment (and in accordance with the
provisions hereof); and (ii) not less secure than procedures used by Universal
to protect its comparably important information and technology. Universal shall
not in any manner whatsoever, without InterTrust's prior written consent, use,
disclose, provide or otherwise make available any InterTrust Confidential
Information to any person, except to any employee, director or Contractor
("Agent(s)") of Universal, each of whom shall operate under the same
--------
restrictions as Universal (in addition to
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
34
CONFIDENTIAL
complying with any other provision hereof relating to such agreement).
Furthermore, in each case of disclosure to an Agent of Universal, access to such
InterTrust Confidential Information shall be allowed only to such Agents who
have a reasonable need to know such InterTrust Confidential Information, and
then only to the extent necessary to enable Universal to use InterTrust
Confidential Information solely to exercise its rights or perform its obligation
hereunder and/or as expressly allowed hereunder. Universal shall: (1) require
its Agents having access to any portion of InterTrust Confidential Information
to strictly maintain its confidentiality; and (2) ensure that each such Agent
shall have executed with Universal a written non-disclosure/non-use agreement in
the form set forth on Exhibit I hereto or as subsequently provided by
InterTrust, or Universal's applicable form agreement which shall effectively and
comparably bind such Agent to an agreement of the same scope as InterTrust's
form agreement, and which such form agreement shall be subject to InterTrust's
reasonable prior written approval which approval will not be unreasonably
withheld or delayed. Upon such approval, the form agreement shall replace the
relevant portion of Exhibit I. In the case of a Contractor, such provisions
shall be in the Contractor Agreement. Universal shall notify InterTrust promptly
in writing of any unauthorized disclosure or other misuse or misappropriation of
any portions of the InterTrust Confidential Information upon any Universal
Executive becoming aware of such unauthorized disclosure or other such misuse or
misappropriation. Universal shall use reasonable efforts to maintain a log of
the Agents accessing and the location of all originals and copies of material
excerpts of technical InterTrust Confidential Information. Universal shall be
fully responsible for any breach of Universal's obligations under this Agreement
by an Agent to whom such InterTrust Confidential Information has been disclosed.
Subject to the provisions of Section 9.4, any obligation of Universal to keep
InterTrust Confidential Information in confidence shall expire thirty-six (36)
months after disclosure of such information by InterTrust to Universal, except
with respect to InterTrust Technology, in which case such obligation shall
continue in perpetuity.
(b) Top Secret Information. In order to protect InterTrust's
----------------------
rights, the rights of InterTrust licensees, and the secure operation and/or
interoperability and reputation of InterTrust implementations, Universal shall
treat any InterTrust Technology or other confidential information that it may
receive that is either marked "Top Secret - Do Not Copy" or similar legend
containing at least the words "Top Secret" (and at least on the cover page or in
comparable other places) when disclosed in written form, or indicated as "Top
Secret" when disclosed orally or visually and identified in writing to a
Universal Executive as Top Secret within thirty (30) days of such oral or visual
disclosure ("Top Secret Information") in a manner not less secure than
----------------------
Universal's most secret information and, in all events in a manner sufficient to
ensure the security of such Top Secret Information, given such great sensitivity
of such Top Secret Information. Universal shall allow disclosure of such Top
Secret Information to no more than an aggregate of [*] designated
individual employees or approved Contractors of Universal and/or Authorized
Ventures (as such twelve individuals may be designated by Universal) at any one
time, each of whom has a direct need to know such information or be exposed to
such Top Secret Information (as agreed in each case by InterTrust in its
reasonable discretion) and then only to the extent necessary for Universal to
use Top Secret Information solely to exercise its rights and perform its
obligations under this Agreement. Universal shall not substitute any employee
designated to receive Top Secret Information with another employee, unless such
designated employee's employment with Universal has been terminated or such
person is no longer able to serve the intended role or is no longer
participating in the business projects conducted using InterTrust Technology,
provided that Universal shall use reasonable efforts to maintain continuity and
- -------- ----
minimize changes of such designated employees and no more than an aggregate of
[*] designated individual employees shall have been authorized within
any forty-eight (48) month period (in the absence of approval by an InterTrust
Designated Officer). None of such employees shall receive a disclosure of any
such Top Secret Information until: (i) such employee executes an InterTrust Top
Secrecy Agreement (in the form set forth in Exhibit I hereto or as subsequently
provided by InterTrust) covering such information and exposure; and (ii) an
executed copy of such agreement is received by InterTrust, with return receipt
provided to Universal, which such receipt may be provided by fax communication
if so requested in writing. Notwithstanding the foregoing, Universal and
Universal employees described above shall make no physical embodiments
whatsoever of Top Secret Information (for example, any reproduction or copy of
Top Secret Information, including descriptive notes containing any Top Secret
Information) without the prior express written authorization of an InterTrust
Designated Officer, nor shall Universal or such Universal employees disclose any
Top Secret Information to any Person (including to any Contractor), except as
described in this Section 9.2(b). Upon Universal's prior written request,
InterTrust will, where reasonable and appropriate in InterTrust's discretion
given the nature of the Top Secret Information, provide Universal with
additional copies of the Top Secret Information up to a limit of [*] copies.
If any Universal
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
35
CONFIDENTIAL
Executive becomes aware that any Top Secret Information has been disclosed or
treated other than as set forth in this Section 9.2(b), and/or as specified in a
Top Secrecy Agreement, Universal shall immediately inform InterTrust of such
occurrence and take immediate steps to correct such compromise. Universal shall
maintain a log of the employees accessing and location of all originals and
other provided copies of all Top Secret Information. Universal shall be fully
responsible for any breach by any Universal employee of this Agreement related
to the unauthorized use or disclosure of Top Secret Information.
9.3 Universal Information. To the extent that InterTrust receives
---------------------
Confidential Information of Universal that is either marked "Confidential" when
disclosed in written form or indicated as "confidential" when disclosed orally
or visually ("Universal Confidential Information") under this Agreement,
----------------------------------
InterTrust shall hold such Universal Confidential Information in strict
confidence and in a manner that is: (i) sufficiently secure for the character
and content of the Universal Confidential Information as reasonably determined
by InterTrust to protect the interests of Universal (and in accordance with the
provisions hereof); and (ii) not less secure than procedures used by InterTrust
to protect its comparably important information and technology. Except as to
the disclosure by Universal of the Modified Technology or such disclosure
inherent in the Certification Testing of Universal Products and/or any
associated services pursuant hereto, and only to the extent expressly specified
by InterTrust Specifications, Universal shall not disclose or otherwise provide
or make available to InterTrust any Universal Confidential Information or other
third Person confidential or proprietary information comprising, containing or
directly concerning any Other Technology), without first acquiring written
approval from an InterTrust Designated Officer. InterTrust shall not in any
manner whatsoever, without Universal's prior written consent, use, disclose,
provide or otherwise make available any Universal Confidential Information to
any person, except an Agent of InterTrust each of whom shall operate under the
same restrictions as InterTrust (in addition to complying with any other
provision hereof relating to such Agreement). Furthermore, in each case of
disclosure to an Agent of InterTrust, access to such Universal Confidential
Information shall be allowed only to Agents who have a reasonable need to know
such Universal Confidential Information and only to the extent necessary to
enable InterTrust to use Universal Confidential Information to exercise its
rights and perform its obligations hereunder and/or as expressly allowed
hereunder. InterTrust shall: (a) require its Agents having access to any
portion of Universal Confidential Information to strictly maintain its
confidentiality; and (b) ensure that each such Agent shall have executed with
InterTrust a written non-disclosure/non-use agreement provided by Universal, or
InterTrust's applicable form agreement which shall effectively and comparably
bind such Agent to an agreement of the same scope as Universal's form agreement,
and which such form agreement shall be subject to Universal's reasonable prior
written approval. Upon such approval, the form agreement will replace the
relevant portion of Exhibit I. InterTrust shall notify Universal promptly in
writing of any unauthorized disclosure or other misuse or misappropriation of
any portions of the Universal Confidential Information. InterTrust shall use
reasonable efforts to maintain a log of the Agents accessing and the location of
all originals and copies of material excerpts of technical Universal
Confidential Information. InterTrust shall be fully responsible for any breach
of InterTrust's obligations under this Agreement by an Agent to whom such
Universal Confidential Information has been disclosed. Any obligation of
InterTrust to keep Universal information in confidence shall expire thirty-six
(36) months after disclosure of such information by Universal to InterTrust
provided that InterTrust confidentiality obligations hereunder with respect to
any Source Code provided to InterTrust in connection with any Certification
Program shall continue in perpetuity.
9.4 Exceptions. Notwithstanding the provisions of Sections 9.1, 9.2
----------
and 9.3 above, the confidentiality restrictions herein shall not apply to
information that the recipient thereof can demonstrate: (i) is or becomes
generally known to the public through no breach of any of these obligations, as
of the date such information becomes so known; (ii) is or shall have been
independently developed by such recipient by employees who had no access to such
information; or (iii) is or shall have been rightfully received, with no
obligation of confidentiality or non-use, by such recipient from any Person
(other than as a result of another Person's breach of an obligation of
confidentiality to the discloser of such information), as of the date such
information is so received. In the case of Top Secret Information, however, the
availability to Universal of information that is substantially equivalent to Top
Secret Information based upon subsection (i), (ii) and/or (iii) above shall not,
in any manner, diminish Universal's obligations with respect to the Top Secret
Information provided by InterTrust to Universal (and all copies or derivatives
thereof), and Universal shall be prohibited from further disclosing to
36
CONFIDENTIAL
third parties any such InterTrust Top Secret Information in Universal's
possession in accordance with the terms hereof; except that nothing contained
herein shall be construed to limit Universal's rights outside of this Agreement
with respect to information obtained through the foregoing subsection (i), (ii)
and/or (iii) and such separate information shall not be deemed Top Secret
Information for purposes of this Agreement. In the event any Party is required
by law, regulation or order of a court or other authority of competent
jurisdiction to disclose the other Party's Confidential Information or Top
Secret Information (as applicable), such Party shall notify such other Party as
promptly as possible, and shall, upon such other Party's request and expense,
reasonably assist in challenging or restricting the scope of such required
disclosure. Top Secret Information may be disclosed only upon InterTrust's prior
written approval; provided that if Universal notifies InterTrust that it has
-------- ----
received an order from a court of competent jurisdiction requiring disclosure of
Top Secret Information: (i) Universal shall use reasonable efforts to resist
disclosure (including filing motions to limit disclosure to in camera
inspection); and (ii) if despite resisting such disclosure Universal is required
to produce such Top Secret Information and faces material consequences should it
refuse to so comply, Universal shall not be construed to have breached this
Agreement by disclosing such required information. In all events, a Party
subject to such required disclosure shall disclose only such information that is
strictly required pursuant thereto and no further information and shall have
provided InterTrust notices of such events on a frequent basis as here relevant
(the "Top Secret Disclosure Procedures").
--------------------------------
9.5 Confidentiality of Agreement and Publicity. Except as otherwise
------------------------------------------
provided in Sections 8.1, 9.4 and this Section 9.5 hereof, neither Party hereto
shall at any time, without the prior written consent of the other Party,
disclose the specific details of the terms and conditions of this Agreement to
any Person, other than: (i) Agents having a substantial need to know; (ii) as
required by law, for example, in connection with any initial public offering of
securities pursuant to a registration under the Securities Act of 1933, as
amended (an "IPO"); (iii) investors holding approximately one percent (1%) or
---
more of the outstanding equity shares of such Party prior to an IPO and having
no reasonably anticipated conflict of interest with the disclosing party; (iv)
potential investors who may purchase approximately one percent (1%) or more of
the outstanding equity shares of such Party prior to an IPO and having no
reasonably anticipated conflict of interest with the other Party; and (v)
financial institutions, professional advisors and/or other consultants having a
reasonable need to know and having no reasonably anticipated conflict of
interest with the other Party. In each and every case set forth above, the
receiving Person shall be bound by a confidentiality agreement sufficient in
scope to protect the Parties' rights and interests hereunder. Notwithstanding
the above, Universal may provide to potential partners (including AT&T and MEI)
and substantial equity investors of the Development Venture or Clearinghouse
Venture an opportunity to review, or to obtain, one copy (1) each of this
Agreement which copy has been previously redacted by mutual agreement of the
Parties to exclude terms that are not directly relevant for evaluation of
whether to participate in such venture (including, for example, with respect to
potential participants in the Development Venture, licenses for Clearinghouse
Functions in Section 4.3, provisions regarding most favored treatment regarding
access to technology in Section 3.1, InterTrust Specifications in Section 5.2(b)
and/or grant-back of licenses in Section 7.3, payment terms in Section 6.1(a),
and partnering commitments provisions of Section 8.4 (except that Universal may
replicate (or, at Universal's option, expand) such partnering commitment
provisions in the sublicense or delegation agreement to the Authorized Venture
pursuant to the terms hereof); provided that such Person: (1) has a need to know
-------- ----
and has no reasonable anticipated conflict of interest with InterTrust (except
that [*] and [*] shall not be deemed to have a material conflict with
InterTrust with respect to their Pre-Authorized Other Technology), (2) is bound
by a confidentiality agreement sufficient in scope to protect InterTrust's
rights and interests hereunder including restricting the disclosure of the
contents of such copy and further from copying or reproducing such redacted copy
and from using this Agreement or the information contained herein for any
purpose other than for the purpose of evaluating whether to participate in the
Development Venture or Clearinghouse Venture, as applicable (including in
connection with any discussions or negotiations with InterTrust concerning a
direct license relationship with InterTrust); and (3) shall be required in
writing to promptly return such copy to Universal, and Universal shall seek and
use all reasonable efforts to effect such return, if such potential partner or
equity investor ceases to be a potential partner or equity investor, or does not
consummate a transaction in the Development Venture or Clearinghouse Venture
within a reasonable period of time, or if such potential partner or equity
investor develops a material conflict of interest with InterTrust. Without the
prior written authorization of an InterTrust Designated Officer, no more than
twelve (12) copies of such redacted versions of this Agreement shall be
distributed in the aggregate; provided that a summary document concerning the
-------- ----
Agreement may be proposed by the Parties in the exercise of their discretion for
use in accordance with the foregoing. InterTrust shall be provided with the
name, affiliation, and address of each such
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
37
CONFIDENTIAL
recipient so as to know what Persons are in possession of its Confidential
Information. Notwithstanding the foregoing provisions of this Section 9.5: (a)
either Party may publicly discuss or otherwise disclose in general terms that an
agreement exists between the Parties to develop products and services using
InterTrust Technology, but may provide no further material details as to the
specific activities and commitments of the other Party, without the prior
written consent of such other Party; and (b) either Party may make such
disclosures to the extent permitted under this Section 9.5 or Section 8.4in
order to perform its obligations or exercise its rights under this Agreement.
9.6 Confidentiality of Payments, Audit and Certification Testing. All
---------------------------
information received during an audit or pursuant to a Certification Program as
provided herein, all information concerning Certification Testing results
(including information received pursuant to any Certification Testing), and all
payment information received pursuant to this Agreement, shall be treated as
confidential information pursuant to Sections 9.2(a) and 9.3 hereof.
Notwithstanding the foregoing, information concerning whether a Universal
Product or any associated services being disseminated or used in commerce is
Compliant with InterTrust Specifications ("Compliance Information") shall not be
----------------------
treated as Universal Confidential Information if such Universal Product and/or
associated service is being disseminated or used in contravention of the terms
and conditions of this Agreement. InterTrust agrees to provide Universal with
written notice in the event InterTrust ceases to treat such Compliance
Information as Universal Confidential Information pursuant to the foregoing.
9.7 NDA. Subject to the provisions of this Section 9, upon the
---
Effective Date of this Agreement, information relating to the subject matter of
this Agreement, when disclosed after the Effective Date by one Party to the
other Party shall be covered by the confidentiality provisions of this Section
9. Any information disclosed by one Party to the other Party relating to the
subject matter of this Agreement when disclosed prior to the Effective Date or
relating to subject matter outside of this Agreement shall be covered under the
Non-Disclosure/Non-Use Agreements between InterTrust and Universal Music Group
dated January 16, 1997, and between InterTrust and Universal Studios, Inc. dated
October 30, 1997.
10. REPRESENTATIONS AND WARRANTIES.
10.1 Representations and Warranties of Both Parties. Each Party
----------------------------------------------
represents and warrants to the other Party that as of the Effective Date:
(a) such Party is a corporation or a limited liability company
duly incorporated, validly existing and in good standing under the laws of the
jurisdiction in which it is organized, with full corporate power and authority
to carry on its business as it is now being conducted;
(b) the execution, delivery and performance of this Agreement
and the consummation of the transactions contemplated hereby have been duly
authorized by such Party. No other corporate or shareholder action or other
proceeding on the part of such Party or its shareholders is necessary to
authorize this Agreement and the consummation of the transactions contemplated
hereby ;
(c) this Agreement constitutes a valid and binding obligation of
such Party, enforceable against such Party in accordance with its terms, except
that such enforcement may be subject to bankruptcy, insolvency, reorganization,
moratorium, or similar laws now or hereafter in effect relating to creditors'
rights; and
(d) neither the execution, delivery and performance of this
Agreement nor the consummation of the transactions contemplated hereby will
violate any provision of the charter or organizational documents of such Party
or any order or judgment of any court or government agency or authority.
38
CONFIDENTIAL
10.2 Representations and Warranties of InterTrust. In addition to the
--------------------------------------------
other representations and warranties contained herein, InterTrust represents and
warrants to Universal that as of the Effective Date:
(a) InterTrust owns or has all necessary rights, title and
interest to grant the licenses hereunder;
(b) to InterTrust's knowledge, neither the InterTrust
Technology, the InterTrust Trademarks nor the Licensed Rights infringe any
Person's patent, copyright or trade secret right, and there are no active claims
or allegations of any such infringement pending; PROVIDED THAT INTERTRUST
-------- ----
MAKES NO WARRANTY WITH RESPECT TO THE INFRINGEMENT OF ANY INTELLECTUAL PROPERTY
RIGHTS OTHER THAN THE FOREGOING REPRESENTIATON THAT IT IS UNAWARE OF ANY SUCH
INFRINGEMENT; and
(c) InterTrust has in good faith employed commercially
reasonable steps in accordance with the U.S. software industry practices to: (i)
[*] and/or [*] the inclusion in any InterTrust Technology of any [*] (or [*])
that are intended to [*], [*], [*] or otherwise [*] with the operation of the
InterTrust Technology or Universal Products or [*] such [*] to [*] in a [*]
manner [*] with reasonable business practices; and (ii) design and develop the
InterTrust Technology as delivered to Universal pursuant to this Agreement to
operate without [*] caused directly by the [*] in the [*] to the [*], and to
accurately [*] (without material error) [*] and [*] associated with the [*]
and [*]. A summary of [*] that have been taken is included in Exhibit J hereto.
10.3 Limitation. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT TO THE
----------
CONTRARY, THE INTERTRUST TECHNOLOGY IS PROVIDED "AS IS" WITHOUT WARRANTY OF ANY
KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OR MERCHANTABILITY, FITNESS FOR A PARTICULAR REQUIREMENTS AND
NONINFRINGEMENT AND INTERTRUST DOES NOT WARRANT AS TO ANY MATTER THAT INTERTRUST
TECHNOLOGY WILL MEET UNIVERSAL'S REQUIREMENTS OR THOSE OF ANY THIRD PARTY AND,
IN PARTICULAR, INTERTRUST DOES NOT WARRANT THAT THE INTERTRUST TECHNOLOGY WILL
BE ERROR FREE OR WILL OPERATE WITHOUT INTERRUPTION.
10.4 Reporting Covenants. InterTrust shall promptly inform Universal
-------------------
Executive, in writing, of any breach by InterTrust of any provision hereunder
that comes to the attention of an InterTrust Designate Officer. Universal shall
promptly inform an InterTrust Designated Officer, in writing, of any breach by
Universal, an Authorized Venture (including any participant therein), and/or
Customer hereunder, of any provision hereof, or of the applicable sublicense or
Customer Agreement, that comes to the attention of a Universal Executive.
11. INDEMNIFICATION AND REMEDIES.
11.1 Indemnification.
---------------
(a) InterTrust Indemnification. InterTrust shall indemnify,
--------------------------
defend and hold Universal and its employees, agents, officers and directors (the
"Universal Parties") harmless from any and all liability, judgments, costs,
-----------------
damages, claims, suits, actions, proceedings, expenses and/or other losses,
including reasonable attorneys' fees (collectively, "Claims") or portions
------
thereof, to the extent awarded by a court of competent jurisdiction or pursuant
to a settlement as provided hereunder, resulting from controversies or
litigation asserted by any third Person against the Universal Parties arising
directly or indirectly from: (i) InterTrust's breach of any of its obligations
under this Agreement, or its representations and warranties set forth herein;
and (ii) Universal's proper use of InterTrust Trademarks as set forth herein;
provided, however, that, with respect to InterTrust's representations under
- -------- ------- ----
Section 10.2(b) hereof, this indemnity does not extend to any Claim relating to:
(1) any Modified Technology or other modifications thereto made by Universal or
any third Person or combinations of the InterTrust Technology with any product,
technology or service of Universal or of any
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
39
CONFIDENTIAL
Person where such Claim (to the extent directly related to such modifications or
combination) would have been avoided in the absence of such modification or
combination; or (2) the use of any InterTrust Technology in any manner
inconsistent with InterTrust Specifications or Documentation where such Claim
(to the extent directly related to such inconsistency) would have been avoided
in the absence of such inconsistent use.
(b) Universal Indemnification. Universal shall indemnify, defend
-------------------------
and hold InterTrust, its employees, agents, officers and directors (the
"InterTrust Parties") harmless from any and all Claims or portions thereof to
------------------
the extent awarded by a court of competent jurisdiction or pursuant to a
settlement as provided hereunder, resulting from controversies or litigation
asserted by any third Person against the InterTrust Parties arising directly or
indirectly from: (i) Universal's breach of any of its obligations under this
Agreement, or its representations and warranties set forth in Section 10 hereof;
(ii) InterTrust's proper use of Universal Trademarks as set forth herein; and
(iii) the design, manufacture, use, distribution and/or disposition by or for
Universal of Modified Technology, Universal Products, performance of any service
associated with the foregoing, and/or other exercise by Universal of the
licenses hereunder, except where such Claims (1) would have arisen solely out of
InterTrust Technology as directly provided to Universal by InterTrust in the
absence of Universal activities hereunder other than the development and
distribution of solely InterTrust Technology, or (2) arose out of modifications
to Universal Products which were expressly required by InterTrust Specifications
and the implementations of such modifications have been expressly approved in
writing by an InterTrust Designated Officer or an InterTrust delegate acting
under the direction of InterTrust pursuant to a Certification Program as set
forth in Section 5.2; and further, except to the extent Universal is indemnified
by InterTrust under Section 11.1(a) hereof.
(c) Third Party Claims. In case any Claim is brought by a third
-------------------
Person for which Claim indemnification is or may be provided hereunder the
indemnified Party shall provide prompt written notice thereof to the other
Party. Where obligated to indemnify such Claim, the indemnifying Party shall
assume the defense thereof (at the expense of the indemnifying Party) within
thirty (30) days or at least ten (10) days prior to the time a response is due
in such case, whichever occurs first. The Parties shall cooperate reasonably
with each other in the defense of any Claim, including making available (under
seal if desired, and if allowed) all records reasonably necessary to the defense
of such Claim, and the indemnified Party shall have the right to join and
participate actively in the indemnifying Party's defense of the Claim, at
indemnifying Party's expense for co-representation of counsel or at its own
expense for independent counsel, except that the indemnifying Party shall pay
for reasonable expense of independent counsel for the indemnified Party where
the indemnified Party is advised by outside legal counsel that a material
conflict of interest exists in such defense being provided by the indemnifying
Party. Notwithstanding the foregoing (and any other section of this Agreement),
it is understood and acknowledged that InterTrust need not under any
circumstance provide Top Secret Information related to the security capabilities
of InterTrust Technology to any Person except nothing in the immediately
foregoing shall apply to the Top Secret Disclosure Procedures in Section 9.4
hereof. Each Party shall be entitled to prior notice of any settlement of any
Claim to be entered into by the other Party and to reasonable approval of a
settlement to the extent such Party's rights would be directly and materially
impaired thereby. Without limiting the foregoing, in the event of any Claim or
threatened Claim that the InterTrust Technology infringes any third Person's
Intellectual Property Rights: (1) upon Universal's request, InterTrust will use
[*] to [*] the [*] or [*] for Universal to [*] and otherwise [*] in
accordance with the terms and conditions hereof such portion of [*] on [*]
reasonably acceptable to both Parties, each in the exercise of its own
discretion (except that Universal shall be solely responsible for paying all
[*] or [*] of any kind in connection with such [*] and, therefore, may
exercise its sole discretion with respect to reasonable approval of any terms
relating to [*] of any such [*]); or (2) at InterTrust's sole discretion,
InterTrust may use [*] to [*], [*] or [*] any such [*] of the [*], as the case
may be, so as to [*] of the [*] while maintaining [*] of such [*] or [*] of
the InterTrust Technology that are material to Universal's then-current use of
such technology. If options (1) and (2) are not [*] in each Party's reasonable
discretion: (A) Universal shall have the right, as its sole and exclusive
remedy in connection with such Claim, threatened Claim or action of InterTrust
in accordance with this Section 11.1(c), to terminate, without any liability,
the licenses granted hereunder, so long as such Claim or threatened Claim or
action of InterTrust relates materially to the performance of InterTrust
Technology as used by Universal; and (B)
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
40
CONFIDENTIAL
InterTrust shall have the right to, if it has a material risk of liability from
Universal's or its sublicensees' continued use of such portion of InterTrust
Technology (and further has not succeeded in obtaining or modifying the
technology in accordance with the foregoing subparagraphs (1) and (2)),
terminate, without any liability, the licenses granted hereunder, and any such
termination shall be upon thirty (30) days prior written notice. If at any time
during the Term InterTrust grants to any third Person in the Entertainment Field
in connection with a license to InterTrust Technology [*].
11.2 Cumulative Remedies. Except as expressly provided herein to the
-------------------
contrary, no remedy made available to a Party by any of the provisions of this
Agreement is intended to be exclusive of any other remedy, and each and every
remedy shall be cumulative and shall be in addition to every other remedy given
hereunder or now or hereafter existing at law or in equity or by statute or
otherwise.
11.3 Equitable Remedies. Each Party agrees that it may be impossible
------------------
or inadequate to measure and calculate a Party's damages from any breach of the
covenants set forth in Sections 4.5, 5, 6.7, 7, 8.4, 9, 11.1(c) solely with
respect to the obligation to defend, 13.3(a), 14.5 and 14.8 hereof. Accordingly,
each Party agrees that if it or any of such Party's Agents thereof breach or
threaten a breach or anticipatory repudiation of any of such provisions, in
addition to any other right or remedy available, the other Party shall be
entitled: (i) to obtain an injunction against the breaching Party and such
Party's Agents thereof, from a court of competent jurisdiction restraining such
breach or threatened breach; and (ii) to specific performance of any such
provision of this Agreement; provided that the foregoing shall not relieve such
other Party from any legal requirement to show irreparable harm and likelihood
of success on the merits.
12. EXCLUSION OF DAMAGES.
EXCEPT AS SET FORTH IN THE IMMEDIATELY FOLLOWING SENTENCE, NEITHER PARTY SHALL
BE LIABLE TO THE OTHER PARTY, ITS AGENTS, AFFILIATES, CUSTOMERS, OR ANY OTHER
PERSONS, FOR ANY LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES,
ARISING OUT OF THE BREACH OF THIS AGREEMENT OTHER THAN UNDER SECTIONS 7, AND 9
AS PROVIDED IN THE IMMEDIATELY FOLLOWING SENTENCE. NOTWITHSTANDING THE
IMMEDIATELY PRECEDING SENTENCE, A PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR
ALL DAMAGES, INCLUDING LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL
DAMAGES SUFFERED OR INCURRED BY THE OTHER PARTY IN THE FOLLOWING CIRCUMSTANCES:
(i) THE MISAPPROPRIATION OF TRADE SECRETS OF THE DAMAGED PARTY BY THE LIABLE
PARTY, OR ITS AGENTS; (ii) THE BREACH OF SECTIONS 7, OR 9 HEREOF WITH RESPECT TO
ANY CONFIDENTIAL INFORMATION OR TOP SECRET INFORMATION DISCLOSED IN WRITING AND
MARKED AS CONFIDENTIAL OR TOP SECRET IN ACCORDANCE WITH SECTION 9 OR CONFIRMED
IN WRITING AS CONFIDENTIAL OR TOP SECRET (SUCH AS AFTER ORAL DISCLOSURE), BUT
SOLELY WHERE SUCH BREACH OCCURRED AFTER SUCH CONFIRMATION OR MARKING IN WRITING;
OR (iii) WILLFUL AND BAD FAITH BREACH OF THIS AGREEMENT OF ALL MATERIAL
OBLIGATIONS UNDER THIS AGREEMENT.
13. TERM AND TERMINATION.
13.1 Agreement. This Agreement shall commence on the Effective Date
---------
and, unless and until terminated earlier in accordance herewith, shall continue
for a period of [*] years (the "Initial Term"). At the end of such Initial
------------
Term, if and only if Universal shall have at all times during the Initial Term
(except for the initial [*] month period thereof) treated InterTrust Technology
as its [*] on a consistently uninterrupted manner in all material respects, this
Agreement shall continue for [*] and solely for [*] Universal continues to treat
InterTrust
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
41
CONFIDENTIAL
Technology as its [*] (the "Term"). If at any time Universal, by decision of any
----
of its executive management with authority to make such decision, intentionally
ceases, or decides to cease and takes material steps towards ceasing, treating
InterTrust Technology as its [*], Universal shall provide InterTrust with
reasonably prompt written notice of such actions or decision and, if the Initial
Term has expired InterTrust may terminate this Agreement upon thirty (30) days
prior written notice. It is acknowledged and agreed that Universal will have the
opportunity to cure any interruption in treatment of InterTrust Technology as
its [*]--so long as such interruption was not the result of an intentional
decision of any of its executive management directed at ceasing the treatment of
InterTrust Technology as Universal's [*] -- in the same manner, and in
accordance with the timing and procedures set forth in Section 13.2(a) after its
receipt of any written notice from InterTrust describing in reasonable detail
the nature of any interruption known to InterTrust officers (the "InterTrust
----------
Preferred Cure Notice"). In the event Universal fails to cure such interruption
- ---------------------
as specified previously above and reinstate the treatment of InterTrust
Technology as the [*] in accordance with the foregoing and the cure provisions
of Section 13.2(a), Universal shall be deemed to have failed to treat InterTrust
Technology as its [*] for purposes of this Section 13.1 and the Initial Term
shall not be extended or if the Initial Term is then already extended InterTrust
may immediately terminate this Agreement upon thirty (30) days prior written
notice.
13.2 Events of Termination. This Agreement and the licenses granted
---------------------
hereunder shall be subject to termination upon the occurrence of any of the
following events and such other provisions hereof expressly so stating (each, an
"Event of Termination"):
--------------------
(a) If either Party materially defaults on any of its material
obligations under this Agreement (or a Customer Agreement, as applicable) the
non-defaulting Party (or InterTrust in the case of a breach by a Universal
Customer) shall have the right, exercisable in its sole discretion, to initiate
a termination procedure under this Agreement by written notice (sent in
accordance with the provisions of Section 14.6 hereof) describing with
reasonable specificity the nature of the default and requiring that such default
be cured (the "Default Notice"), wherein such Default Notice shall automatically
--------------
result in termination unless: (i) within [*] calendar days of receiving such
Default Notice (the "Cure Period"), the defaulting Party remedies the default;
-----------
or (ii) in the case of a default that cannot with earnest due diligence be cured
within the Cure Period, the defaulting Party institutes, by the date upon which
one half of the Cure Period shall have expired, steps necessary to remedy the
default and thereafter employs best efforts to diligently prosecute the same to
completion no later than [*] months from the date of such Default Notice.
Notwithstanding the foregoing, the Cure Period associated with a breach of
payment obligations in accordance with Section 6 shall be [*] days.
Notwithstanding any of the foregoing, a Party shall have the right both to
immediately terminate this Agreement and to injunctive relief as set forth in
Section 11.3 in the event the other Party or any of its Agents engages in any:
(1) intentional, material unauthorized use of technology outside of the rights
granted hereunder (or, in the case of Universal, any unauthorized disclosure of
information marked or confirmed by InterTrust in accordance herewith as
InterTrust Top Secret Information) and/or (2) willful, material unauthorized
disclosure of Confidential Information or Top Secret Information, provided that
such was conducted in intentional violation of this Agreement and where, in the
case of InterTrust any InterTrust Designated Officer or other executive manager,
and in the case of Universal any Universal Executive, had knowledge of such
intended unauthorized use or disclosure prior to the occurrence of any such
acts. The non-defaulting Party agrees to use reasonable efforts to advise the
defaulting Party after the occurrence of a default by the defaulting Party of
any material obligation under this Agreement promptly upon such non-defaulting
Party's officers or other executive management becoming aware of such default.
In the event a non-defaulting Party fails to provide a Default Notice within [*]
days after officers or other executive management of such non-defaulting Party
(and in the case of InterTrust, executive management including the Chairman
and/or President, and General Counsel and/or VP, Legal), and in the case of
Universal, executive management including one or more Universal Executives) have
reviewed facts regarding a default (including any correspondence between the
Parties) that justifies termination of this Agreement and has determined to
commence termination of this Agreement under this subparagraph (a) as such
determination is represented in a written statement or memorandum, such non-
defaulting Party shall be deemed to have waived its right of termination of this
Agreement under this subparagraph (a); provided that such waiver shall not
-------- ----
limit any right to recover damages or other rights or remedies of such non-
defaulting Party under this Agreement or at law or in equity.
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
42
CONFIDENTIAL
(b) By a Party at its option, effective immediately upon
written notice to the other Party, in the event of: (i) the filing by the other
Party of a petition in bankruptcy or insolvency; (ii) the appointment of a
receiver for the other Party for all or substantially all of its property
relevant to the business activities under this Agreement; (iii) the making by
the other Party of any assignment or attempted assignment for the benefit of
creditors for all or substantially all of its properties relevant to its
business activities under this Agreement; or (iv) this institution of any
proceedings for the liquidation or winding up of the other Party's business or
for the termination of its corporate charter, if any such proceeding is not
dismissed within one hundred and twenty (120) days of institution ;
(c) Upon written notice to Universal, InterTrust may
immediately terminate this Agreement in its discretion in the event: (i)
Universal fails (1) to generally distribute any Universal Products within [*]
months from the date InterTrust first delivers the Commerce 1.1 to Universal,
and/or makes no release of any Universal Product materially commercially
available for any consecutive [*] month period during this Agreement, provided
--------
that such time period shall be extended by any period
- ----
in which (A) there exists a Material Defect in the InterTrust Technology that
materially impedes Universal's development and distribution efforts, but only
for the period from the date that Universal documents such defect as provided in
Section 3.2(b) hereof to the date InterTrust has reasonably corrected or
mitigated such defect as provided in Section 3.2(b), or (B) there exists a delay
in InterTrust's response with respect to certification of Universal Product as
stipulated in Section 5.2(c)(iii), (2) after the Initial Support Period to
timely make payments due under this Agreement on three or more occasions over an
[*] month period where InterTrust has provided to Universal a written warning
notice after the second occasion that any further failure to timely make
payments will be subject to InterTrust's termination hereunder, or (3) engages
in conduct directly contrary to a partnering relationship by providing, or
positioning itself as a provider, to multiple third Persons (other than its
distributed labels who distribute music under the Universal Trademarks) of any
Special Advanced Technology (other than InterTrust Technology) wherein such
Special Advanced Technology has been developed specifically by and/or for
Universal (and provided that the foregoing provisions of this subparagraph (3)
shall not be construed to include licensed activities as set forth herein); or
(ii) any litigation is initiated against any Person entitled to the benefits of
the licenses under Section 7.3 arising out of or alleging infringement of any
intellectual property right of Universal or its Controlled affiliates, or
Persons acting under Universal's or such Controlled affiliate's direction and/or
control, where such intellectual property right would have been licensed under
Section 7.3 hereof had such intellectual property right been held by Universal;
and
(d) By Universal by providing written notice to InterTrust
within the [*] days of the date which is [*] month after the Effective Date
where: (i) the Commerce 1.1 of InterTrust Technology contains [*] that render
such technology [*] and from being [*] in a software-only implementation as
would be reasonable for a distributed peer-to-peer software instantiation
("[*]"); and (ii) Universal has provided InterTrust written notice of such [*]
---
in the same manner as set forth in Section 3.2(b) as early as possible after
discovery of such [*] and InterTrust has been given the opportunity to review
and undertake the cure procedures under Section 13.2(a). The foregoing right of
termination shall terminate and no longer be exercisable if at any time
Universal has transferred any Universal Product to third Persons (other than
Contractors and Persons participating in a non-commercial beta test for no
monetary remuneration). Upon the exercise of the foregoing termination right
under this subparagraph (d), notwithstanding any contrary provisions contained
herein, any and all rights and licenses of Universal under this Agreement
(including the rights and licenses under Section 13.3(b)) shall immediately
terminate.
13.3 Effect of Termination.
---------------------
(a) General. Upon the expiration or termination of this
-------
Agreement and except (and solely except) as set forth in Section 13.3(b) hereof:
(i) all licenses granted hereunder, and all sublicenses and delegations granted
or made hereunder, shall automatically terminate; (ii) InterTrust shall have the
right to retain all sums already paid by Universal hereunder, and Universal
shall pay to InterTrust within thirty (30) days thereafter all sums owed
InterTrust according to the terms and conditions hereof subject to adjustments
in accordance with Section 6.7; and (iii) Universal shall immediately
discontinue use of InterTrust Technology and/or the use of any portion of such
InterTrust Technology in
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
43
CONFIDENTIAL
any Modified Technology, and discontinue making, using, selling or otherwise
transferring or exploiting any product or service that in the absence of a
license hereunder would infringe any InterTrust Intellectual Property Rights
(including termination of distribution of Universal Products and any associated
services); provided, however, that all licenses properly granted to end-users
-------- ------- ----
pursuant to the then-existing Customer Agreements solely for Universal Products
shall continue in full force and effect in accordance with the terms thereof
(provided that such licenses do not provide any rights to such end-users with
respect to Clearinghouse Functions, other than as expressly provided hereunder).
Each Party shall deliver to the other Party within thirty (30) days from the
date of termination of this Agreement all copies of all materials protected as
Confidential Information or Top Secret Information under this Agreement,
including all copies under its control or under the control of its Agents.
Return of Confidential Information shall be by commercially secure means as
reasonably specified by the receiving Party. Return of Top Secret Information
shall be made, at InterTrust's option as specified by a InterTrust Designated
Officer by written instruction to Universal: (a) by physical and secure pickup
at Universal's offices by an InterTrust officer designated in writing by such
InterTrust Designated Officer; or (b) as otherwise may be determined by
InterTrust in its discretion, as commercially reasonable. Such delivery shall be
during normal business hours and in each instance to the hands of an InterTrust
officer who receives a listing of the contents of such delivery certified by an
officer of Universal and audited and countersigned by such InterTrust officer.
Within one (1) month after the termination of this Agreement, each Party will
certify in writing to the other Party that, to the best of its knowledge, all
such materials and tangible embodiments have been delivered to the other Party.
(b) Limited License for Maintenance of [*] Content. Upon the
----------------------------------------------
expiration of the Term (and if Universal shall have complied with its
obligations under Sections 5.1, 7, 8.4 and 9 and other provisions of this
Agreement), Universal shall continue to have the [*] (the "[*]"), for the term
---
of the useful life of the [*] (as defined below), solely to: (i) [*]
InterTrust Technology to [*] and [*] for Universal Products that have then been
[*] as of the date of such expiration or termination ("[*]"); (ii) [*]
Compliance Updates to [*] in accordance with the terms and conditions hereof;
and (iii) have an Authorized Clearinghouse Provider [*] Clearinghouse Functions
for InterRights Point [*]. The Legacy License (and Universal's exercise thereof)
shall at all times be contingent upon Universal compliance with: (1) Sections 1,
5.2, 5.3, 5.5, 5.7, 6.1, 6.3, 6.4, 6.5, 6.6, and 7.3; and (2) those Sections
that survive in accordance with Section 13.4. Nothing contained herein shall be
construed to grant Universal any right to, and Universal agrees not to, perform
any Clearinghouse Functions after the expiration of the Term or termination of
this Agreement pursuant to Section 13.1.
13.4 Survival. The respective rights and obligations of
--------
InterTrust and Universal under the provisions of Sections 4.4, 4.5, 5.2, 5.4,
5.5, 6.6, 6.7 (but only for a period of five (5) years), 7.1, 7.2, 8.4 (but only
in the event that Universal has breached this Agreement), 9, 10.3, 10.4, 11 (but
only 11.1(b), 11.1(c), 11.2 and 11.3 as applicable to Section 13.3(b)), 12, 14,
and this Section 13 shall survive expiration or termination of this Agreement.
14. MISCELLANEOUS.
14.1 Governing Law. This Agreement, any and all actions arising
-------------
out of or in any manner affecting the interpretation of this Agreement, and any
actions between the Parties involving the InterTrust Technology, any InterTrust
Property and/or any Confidential or Top Secret Information ("Party Disputes")
--------------
shall be governed solely by, and construed solely in accordance with, the laws
of the United States of America and: (i) the substantive and procedural law
(excluding that body of law involving conflicts of law) of the Commonwealth of
Virginia, where any claim, counterclaim or defense in such Party Dispute
involves a material issue based in whole or in part on, or concerning (including
where a decision as to such issue could directly affect the validity,
enforceability, ownership, scope or interpretation of any of the Party's
Intellectual Property Rights) any (a) InterTrust Confidential Information or Top
Secret Information, (b) InterTrust Property (as defined in Section 7.1), and/or
(c) Intellectual Property Rights (an "IP Dispute(s)"); and (ii) the substantive
-------------
and procedural law (excluding that body of law relating to conflict of laws) of
the State of California for Party Disputes that do not involve an IP Dispute,
unless trial and/or pre-trial preceding in such Party Dispute that does not
involve an IP Dispute
- ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN
FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
44
CONFIDENTIAL
are joined and/or consolidated with an IP Dispute proceeding in accordance with
Section 14.2(iii), in which case the provisions of the immediately proceeding
subparagraph (i) shall apply to such Party Dispute. The Parties hereby
acknowledge and agree that the United Nations Convention on Contracts for the
International Sale of Goods shall not apply to this Agreement. To the extent
permitted by law, the provisions of this Agreement shall supersede any
provisions of the Uniform Commercial Code as adopted or made applicable to this
Agreement in any competent jurisdiction.
14.2 Venue and Jurisdiction. The Parties recognize the
----------------------
importance to: (i) InterTrust of having any litigation between the Parties
involving an IP Dispute adjudicated in the Federal District Court for the
Eastern District of Virginia (Alexandria Division) (or any direct successor
thereto), or, if required by law, the Commonwealth courts located in Alexandria,
Virginia (the "Virginia Venue"); and (ii) Universal of having any litigation
--------------
between the Parties not involving an IP Dispute adjudicated in the Federal
District Courts in California (or any direct successor thereto), or, if required
by law, such state courts there located (the "California Venue"). Therefore, in
----------------
connection with any litigation between the Parties involving an IP Dispute, each
Party hereby unconditionally and irrevocably consents to the exclusive
jurisdiction and venue in the Virginia Venue, and in any litigation between the
Parties not involving an IP Dispute, each Party hereby unconditionally and
irrevocably consents to the exclusive jurisdiction of the California Venue as
chosen by the plaintiff with respect to such claim. Consistent with the
immediately foregoing, each Party irrevocably: (i) waives any objection and
covenants that it shall refrain from making any motion concerning personal
jurisdiction, venue, transfer, or convenience of the Parties with respect to a
Party Dispute filed in said courts; (ii) consents to the service of process of
said courts in any matter relating to this Agreement by the mailing of process
by registered or certified mail, postage prepaid, at the addresses specified in
the Agreement (or if necessary, the appointment of a registered agent for
acceptance of service of process and/or other notices provided for under this
Agreement); and (iii) agrees that if any pending actions between the Parties are
required to be joined and/or consolidated in any manner (and one or more of such
actions involve an IP Dispute), the Virginia Venue shall be the venue that
exclusively presides over such joined and/or consolidated actions.
14.3 Compliance with Law and Export Controls. The Parties shall
---------------------------------------
at all times comply with all applicable U.S. and foreign federal, state, and
local laws, rules and regulations relating to the execution, delivery and
performance of this Agreement and to the InterTrust Technology Products and
Modified Technology. Additionally, Universal acknowledges that because one or
more aspects of the InterTrust Technology Products is likely to be subject to
the export control laws, regulations and requirements of the United States and
other jurisdictions, Universal Products likely will require export and other
approvals as well. InterTrust has obtained export approval concerning
implementations of Commerce 1.1, and with respect to additional InterTrust
Technology products, shall use commercially reasonable efforts at InterTrust's
expense and discretion to obtain additional license or other approvals, if any,
that may be required for InterTrust to make the InterTrust Technology and/or
Documentation or information relating thereto generally available
internationally. Universal shall use commercially reasonable efforts, at
Universal's expense, to comply with all applicable laws (including applicable
U.S. export control laws and regulations) and use commercially reasonable
efforts to obtain all necessary governmental consents and approvals in
connection with the distribution of or export or re-export of the Universal
Products (as well as other technology as expressly permitted hereunder) that
contain any part of the InterTrust Technology or Modified Technology in
accordance herewith. The Parties expressly agree that any failure to obtain or
any delay in obtaining such approval as to InterTrust Technology or in
connection with any Universal Product shall not relieve either Party from its
obligations under this Agreement.
14.4 Amendment or Modification. This Agreement may not be
-------------------------
amended, modified or supplemented by the Parties in any manner, except by an
instrument in writing signed by the President or Chairman of InterTrust and a
duly authorized officer of Universal.
14.5 No Assignment. Universal acknowledges that the licenses and
-------------
rights granted by InterTrust to Universal under this Agreement are personal to
Universal, and Universal shall not assign or transfer its rights or obligations
hereunder without the prior written consent of an InterTrust Designated Officer.
InterTrust shall not assign or transfer its rights or obligations hereunder
without Universal's prior written consent, which consent shall not be
unreasonably withheld. Notwithstanding the foregoing, InterTrust and/or
Universal shall be entitled to assign or transfer such rights or
45
CONFIDENTIAL
obligations hereunder in connection with any merger or sale of substantially all
of assets, equity, or business of InterTrust and/or Universal (as applicable)
related to this Agreement provided that: (i) Universal may not assign or
transfer any such rights or obligations hereunder to a Person that is a
Competitive Entity; and (ii) any successor in interest to InterTrust shall, for
a period no less than six (6) months from the consummation of such merger or
sale, continue to actively and in good faith support InterTrust Technology in a
manner consistent with the practices of InterTrust immediately prior to a merger
or sale under this Agreement. Universal may assign this Agreement to Universal
Studios, Inc. or a Controlled affiliate thereof which, directly and/or
indirectly through its Controlled affiliates, own, control or have the exclusive
rights to license music Content branded under Universal Trademarks. Further,
Universal may not assign or transfer any such rights or obligations hereunder to
any Person that is materially coordinating material commercial efforts related
to content distribution or distributed Digital Rights Management with a Person
that is a Competitive Entity. Subject to the foregoing, this Agreement will
benefit and bind the successors and permitted assigns of the Parties. Any
attempted transfer or assignment without such approval shall be null and void ab
initio and of no force or effect; and the sole result of any failure to approve
such assignment or transfer of rights shall be termination of this Agreement in
accordance with the provision of Section 13.
14.6 Notices. Any notice or other communication to be given
-------
hereunder shall be in writing and shall be (as elected by the Party giving such
notice): (i) personally delivered; and (ii) transmitted by postage prepaid
registered or certified airmail, return receipt requested. Unless otherwise
provided herein, all notices shall be deemed to have been duly given on: (a) the
date of receipt (or if delivery is refused, the date of such refusal) if
delivered personally or by express courier; or (b) ten (10) days after the date
of posting if transmitted by mail. Notwithstanding the foregoing, communication
of Confidential Information or Top Secret Information shall be governed by
practices adequate to appropriately protect such information regarding Top
Secret Information or as may be specified herein or in the future by InterTrust.
Either Party may change its address for purposes hereof on not less than three
(3) days prior notice to the other Party. Notice hereunder shall be directed:
If to Universal: If to InterTrust:
70 Universal City Plaza, 3rd Floor 460 Oakmead Parkway
Universal City, California 91608 Sunnyvale, California94086
Attn: SVP Business & Legal Affairs Attn: General
Counsel
cc: Head of Electronic Commerce & Advance Technology
14.7 Waiver. Any provision of this Agreement may be waived by
------
the Party entitled to the benefit thereof. Neither Party shall be deemed, by any
act or omission, to have waived any of its rights or remedies hereunder unless
such waiver is in writing and signed by, in the case of InterTrust, InterTrust's
President or Chairman, and in the case of Universal, a Universal authorized
officer, and then only to the extent specifically set forth in such writing. A
waiver with reference to one event shall not be construed as continuing or as a
bar to or waiver of any right or remedy as to a subsequent event.
14.8 No Third Party Beneficiaries. Except as expressly provided
----------------------------
herein to the contrary, nothing in this Agreement is intended to confer, nor
shall anything herein confer, upon any Customer or any Person other than the
Parties and any respective successors or permitted assigns of the Parties, any
rights, obligations, or remedies hereunder.
14.9 No Agency. Nothing herein contained shall be construed to
---------
constitute the Parties hereto as partners or joint venturers or the agent of
the other Party in any sense of those terms whatsoever. Neither Party assumes
any liability of the other Party nor shall have any authority to enter into any
binding obligation on behalf of the other Party.
14.10 Severability. If the application of any provision or
------------
provisions of this Agreement to any particular facts or circumstances shall be
held to be invalid or unenforceable by any court of competent jurisdiction,
then: (i) the validity
46
CONFIDENTIAL
and enforceability of such provision or provisions as applied to any other
particular facts or circumstances and the validity of other provisions of this
Agreement shall not in any way be affected or impaired thereby; and (ii) such
provision or provisions shall be reformed without further action by the Parties
hereto and only to the extent necessary to make such provision or provisions
valid and enforceable when applied to such particular facts and circumstances.
14.11 Counterparts; Facsimiles. This Agreement may be executed
------------------------
in any number of counterparts, each of which when so executed and delivered
shall be deemed an original, and such counterparts together shall constitute one
and the same instrument. Each Party shall receive a duplicate original of the
counterpart copy of copies executed by it. For purposes hereof, a facsimile copy
of this Agreement, including the signature pages hereto, shall be deemed to be
an original. Notwithstanding the foregoing, the Parties shall deliver original
execution copies of this Agreement to one another as soon as practicable
following execution thereof.
14.12 Force Majeure. Except as provided herein to the contrary,
-------------
if, by reason of labor dispute, strike, inability to obtain labor or materials,
fire or other action of the elements, accident, administrative or governmental
restriction or appropriation or other causes, whether like or unlike the
foregoing, beyond the reasonable control of a Party hereto, such Party is unable
to perform in whole or in part its obligations set forth in the Agreement, then
such Party shall be relieved of those obligations to the extent it is so unable
to perform, and such inability to perform, so caused, shall not make such Party
liable to the other Party. Notwithstanding the foregoing, in the event any such
cause delays either Party's performance of any of its material obligations under
this Agreement, the other Party may suspend its performance under this Agreement
of the period such delay continues. This Agreement may be terminated by notice
by the Party not seeking excuse from performance, if such event shall prevent
performance for longer than two hundred and seventy (270) days. The Party
subject to an event of force majeure shall use good faith efforts to comply as
closely as possible with the provisions of this Agreement and to avoid the
effects of such event to the extent possible.
14.13 Entire Agreement. This Agreement (together with Exhibits
----------------
hereto) represents the entire agreement of the Parties with respect to the
subject matter hereof and supersedes all prior and/or contemporaneous agreement
sand understandings, written or oral between the Parties with respect to the
subject matter hereof (except as set forth in Section 9.7 hereof).
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of
the date first written above by the undersigned duly authorized.
INTERTRUST TECHNOLOGIES UNIVERSAL MUSIC GROUP, INC.
CORPORATION
By:______________________________ By:___________________________
Name: Victor Shear Name:_________________________
Title: Chairman and Chief Executive Officer Title:________________________
47
CONFIDENTIAL
EXHIBIT C
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
TRADEMARKS
----------
InterTrust Trademarks
---------------------
AssertTrust PromoteTrust
AudioTrust Publish America
AvTrust PublishTrust
Chain of Handling and Control Protected Processing Environment
Commerce 1.X RightsBar
Commerce America Rights Editor
Commerce Appliance Rights Expression Language
Commerce Modeler Rights Expression Tools
CommerceStation Rights Metafile
ComplyTrust RightsCard
Computer Aided Business RightsCore
Deployment Manager RightsStation
DigiBox RightsWallet
Electronic Express SiliconAssist
Electronic Value Chain Management SoundRights
Enterprise Modeler The InterTrust Logo
InterRights Point Transaction Authority Framework
InterTrust Commerce Architecture Trust Virtual Machine (TVM)
InterTrust Commerce Node TrustCore
InterTrustable TrustMail
InterTrustworthy TrustNet
JBar TrustPublish
JPoint TrustServer
JTrust TrustStation
MailTrust Video Trust
MetaTrust Virtual Process Control
MMTrust
MPTrust
MP3Plus
MP3Trust
MPEGTrust
MultimediaTrust
NetTrust
OpenRights
PageForward
C-1
CONFIDENTIAL
Trademark Guidelines for Use of Trademarks of InterTrust Technologies
---------------------------------------------------------------------
Corporation
-----------
1. These Trademark Guidelines ("Guidelines") are provided pursuant to the
Technology Development, Marketing and License Agreement (the "Agreement")
between Universal Music Group ("Licensee") and InterTrust Technologies
Corporation ("InterTrust"). The trademarks of InterTrust Technologies
Corporation as listed on Exhibit C (as may be amended or supplemented from
time to time by InterTrust) ("InterTrust Trademarks") are valuable
intellectual property of InterTrust that identify genuine technology and/or
products licensed by InterTrust. Since the InterTrust Trademarks signify a
high standard of quality and reliability, InterTrust must maintain control
over how each of the InterTrust Trademarks is used. Therefore, these
Guidelines and the provisions of applicable sections of the Agreement must
be followed in their entirety in order to preserve and protect the
InterTrust Trademarks.
2. The InterTrust Trademarks must be used on products and/or services that
include InterTrust licensed technology or other material ("Licensed
Material") and/or that have been certified as InterTrustworthy by
InterTrust Certification Program; as provided for in the Agreement. The
InterTrust Trademarks must also be used on associated initial computer
screens, packaging, collateral documentation, manuals advertising, and
promotional materials. The InterTrust Trademarks may never be used on or in
connection with any other products or services, except as expressly
provided for under the Agreement.
3. At any place where a InterTrust Trademark is used, it must be symbolically
indicated that the InterTrust Trademark used therein is a legal trademark
belonging to InterTrust. This can be done by (1) indicating the "TM" symbol
at the upper right corner of the trademark for an unregistered InterTrust
Trademark and indicating the circled "R" (R) symbol at the upper right
corner of the trademark for a registered trademark, and (2) appending an
"*" after the InterTrust Trademark and placing the appropriate statement
selected from the following on a suitably noticeable area (which shall
generally occur near the copyright notice in text or on screen) of each
such copy:
(For an unregistered InterTrust Trademark)
*___________________ (insert InterTrust Trademark) is a trademark in
the USA and other countries of InterTrust Technologies Corporation and
is used by ________________________ (insert licensee name) under
license.
(For a registered InterTrust Trademark)
*____________________ (insert InterTrust Trademark) is a trademark in
the USA and other countries of InterTrust Technologies Corporation
(Reg. U.S. Pat. and Tm. Off.) and is used by _________________ (insert
licensee name) under license.
Some countries may require that a translated version of these above
statements be used. Licensee must comply with any such local laws.
4. InterTrust Trademarks may not be used in any manner that may cause
confusion as to the source of origin of products and/or services. As a
general matter, the only InterTrust trademark that need directly and
evidently appear on the product or service is a mark indicating compliance
with InterTrust's Specifications, as designated by InterTrust - such as the
mark "InterTrustworthy".
C-2
CONFIDENTIAL
Under no circumstances may InterTrust Trademarks be used or identified on a
product or in a business name or identifier of a business, InterTrust, product,
or service not connected with licensee's products incorporating the Licensed
Material. No variations, compounds, or imitations of the InterTrust Trademarks
may be used at any time, except as expressly authorized in writing by the
InterTrust Designated Officers.
5. All of the InterTrust Trademarks that are word marks must always be used
either as a symbol standing alone or as an adjective describing a noun,
with the noun being the generic name of the product to which the trademark
is applied. (For example, "an InterTrust rights protection system" not "an
InterTrust," or "a DigiBox secure container" not "a DigiBox.") Possessive
or plural forms of the InterTrust Trademark word marks are prohibited.
Additional guidelines regarding specific uses of InterTrust Trademarks and
logos may be provided by InterTrust from time to time.
6. The InterTrust Trademarks may not be used as part of or in any emblem or
insignia or on novelty items except as expressly authorized in writing by
the InterTrust Designated Officers. Except as specifically provided in the
Agreement, the InterTrust Trademarks may not be used in combination with
any other trademark, service mark or trade name except as expressly
authorized in writing by an InterTrust Designated Officer.
7. InterTrust will provide its licensees with camera-ready artwork of the
InterTrust Trademarks. This is the form of the InterTrust Trademarks that
must be used, and this artwork shall not be altered in any way with the
exception of resizing, which may be done using conventional and
commercially available processes. The InterTrust Trademarks may be used in
black and white, the exact color scheme specified by InterTrust in the
artwork, or in such other color treatments as may have been previously
authorized in writing by InterTrust. Such authorization may be rescinded at
any time as specified in the Agreement. In addition, the area surrounding
any use of a logotype form of a InterTrust Trademark must be free of any
other pattern or graphic element for at least the width of a band that is
itself at least 20% of the logotype form of the InterTrust Trademark,
unless the licensee has received the prior written authorization of
InterTrust, which may be rescinded in writing at any time.
8. Exhibit C of the Agreement includes a listing of all current registered and
unregistered InterTrust Trademarks, and InterTrust will provide prompt
amendment of Exhibit C as registrations are obtained.
9. Schedule 1 hereto lists those countries in which licensees' use of
InterTrust Trademarks is prohibited or otherwise restricted. InterTrust
will provide prompt amendment of Schedule 1 as changes occur.
10. In addition to these Guidelines, consistent with the Agreement, InterTrust
may amend these Guidelines at any time and/or provide additional
instructions from time to time which must be followed in use of InterTrust
Trademarks. Such amendment and/or instructions shall not be inconsistent
with the terms of the Agreement.
C-2
CONFIDENTIAL
SCHEDULE 1
Countries in Which Use of InterTrust Trademarks is Prohibited or Otherwise
Restricted
None
C-2
CONFIDENTIAL
EXHIBIT E
TO THE TECHNOLOGY DEVELOPMENT, AND LICENSE AGREEMENT
SCREENING PROCEDURES
--------------------
Universal and each Authorized Venture (each a "Screening Party") agree to
implement and abide by the following Screening Procedures:
The "Screening Procedures" are to be implemented by the Screening Party to
separate (i) its Agents that have access to Confidentially Handled Information
from (ii) Agents that have access to confidential information of Other
Technology, and are intended to ensure that such Screening Party operates
without the occurrence of a Compromising Event, including ensuring that no
Confidentially Handled Information is advertently or inadvertently shared with,
disclosed to and/or learned by unauthorized Agents. The Screening Procedures
shall, at a minimum, be in place: (i) with respect to Universal, during the Term
and for twelve (12) months thereafter; and (ii) with respect to an Authorized
Venture, during the duration of a sublicense or delegation (as the case may be)
and for twelve (12) months thereafter, and have the following procedural
attributes, serving the purposes indicated:
(1) Group Composition and Lists. The purpose of group composition lists is to
---------------------------
keep the Parties and the Persons within specific groups informed as to who
should have access to information and who should not have such access. Each
Screening Party shall use commercially reasonable efforts to keep accurate lists
of:
(a) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to, information concerning such Screening Party, or
are otherwise personnel of the Authorized Venture;
(b) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to Confidentially Handled Information (the "InterTrust
----------
Technology Group");
----------------
(c) all Agents who have access to, work on, have responsibility for,
or are otherwise privy to contractually protected confidential information
concerning Other Technology, or concerning designs or plans concerning use
(or incorporation) of Other Technology into products and/or related services
of the Screening Party ("Other Technology Group"); and
----------------------
(d) all Authorized Executives (as defined below) who oversee both the
Other Technology Group and the InterTrust Technology Group.
"Authorized Executives" shall be strictly limited to senior business executives
---------------------
that: (i) have a direct need to know business information that is confidential
information relating to both the Other Technology Group and the InterTrust
Technology Group, and (ii) have no material active role in directing the
planning, direction, design or development of technology for such Screening
Party other than high level approval of such Screening Party's general direction
and efforts. Albhy Galuten, Lawrence Kenswil and Michael Bebel and their
successors shall at all times be considered Authorized Executives. Each
Screening Party shall ensure that only Persons who qualify as Authorized
Executives, and no other Person, are permitted to oversee personnel in both the
Other Technology Group and the InterTrust Technology Group.
Each Screening Party shall maintain copies of such lists, which shall be
available for inspection and review by InterTrust upon InterTrust's prior
written request.
E-1
CONFIDENTIAL
(2) Information Security and Handling. The purpose of information security is
---------------------------------
to ensure that no Confidentially Handled Information is transferred between any
Other Technology Group participants and authorized Screening Party personnel
working with Confidentially Handled Information. The information security
procedures shall comprise, at a minimum, the following:
(a) procedures reasonably sufficient to ensure that a member of the
InterTrust Technology Group shall not discuss or disclose to persons
outside of such group (especially to any member of the Other Technology
Group) any Confidentially Handled Information of InterTrust or of such
Screening Party related to InterTrust, including any Confidentially Handled
Information regarding InterTrust Technology and/or plans, including, but
not limited to, technical and business activities, as well as any
Confidentially Handled Information of such Group or InterTrust (whether or
not such information includes information about InterTrust Technology or
information disclosed by InterTrust to Universal or such Screening Party)
except that the InterTrust Technology Group may disclose, to a commercially
reasonable extent for the purposes set forth below, such information to the
Screening Party's or Contractor's accounting, budget management, legal, or
other internal administrative departments, but solely for the purpose of
obtaining necessary administrative or non-technical support or consultant
services from such departments, or to fulfill reasonable reporting
responsibilities related to administrative management of, or high level
strategic planning for, the InterTrust Technology Group regarding its past,
present, and future activities, resources, and planning, but such reporting
shall not materially include InterTrust or InterTrust Technology Group
technical information that is Confidentially Handled Information.
(b) except to the extent expressly and reasonably in support of the
provisions of Section 2(a) immediately above, no documents (or summaries or
material portions thereof) containing Confidentially Handled Information of
InterTrust or the InterTrust Technology Group shall be disseminated or
disclosed by the Screening Party or the Contractor to any person outside of
the InterTrust Technology Group or InterTrust; and
(c) any InterTrust Technology Group information no longer in active
use must be securely disposed of, including, for example, cross-shredding
in a secure and effective manner.
(3) Computer/Network Security. The purpose of Computer/Network security is to
-------------------------
impede potential information flow between the InterTrust Technology Group and
any Other Technology Group by limiting access to electronic information. The
Computer/Network Security procedures shall comprise, at a minimum, the
following:
(a) no portable storage media (such as floppy disks, CDROM, etc.)
shall be passed between members of the InterTrust and any Other Technology
Groups unless such media has been examined and confirmed not to contain
confidential information of either group;
(b) no person or entity who is not in or working directly and closely
with, the InterTrust Technology Group, and who is not further expressly (i)
prohibited by written agreement from working with competitive technology of
the InterTrust Technology Group during the course of their work with the
Screening Party (including, as relates to any Authorized Venture, with its
participants) and (ii) bound under confidentiality and non-use provisions
that protect all InterTrust Rights in InterTrust Confidential Information
(as if they were a Universal employee as provided for in the Agreement),
shall be permitted to have access to the InterTrust Technology Group's
network resources, including file storage, printing, communications, and
other host or server resources;
E-2
CONFIDENTIAL
(c) any server resources of the InterTrust Technology Group must be
protected against unauthorized access, at a minimum through the use of
individual user passwords; and
(d) no InterTrust Top Secret Information shall be stored on a server
(unless such server is used solely in connection with the InterTrust
Technology Group), or other storage media shared by persons not in the
InterTrust Technology Group, and no such InterTrust Top Secret Information
shall be included in any e-mail and other electronic communications between
members of the InterTrust Technology Group passing through any host or
server to which any member of any Other Technology Group has any access
rights. With respect to information relating to Confidentially Handled
Information other than Top Secret Information, all e-mail and other
electronic communication between members of the InterTrust Technology Group
containing any such information shall not pass through any host or server
to which any member of any Other Technology Group has any access rights
which enables users to access information as an administrator.
(4) Physical Security. The purpose of physical security is to impede potential
-----------------
flow of Confidentially Handled Information between the InterTrust Technology
Group and any Other Technology Group by physical separation. The physical
security procedures shall comprise, at a minimum, the following:
(a) no individual offices or work space may be shared by members of
the InterTrust Technology Group and any Other Technology Group; and
(b) any InterTrust Technology Group area (including areas containing
files of such Group) shall have locks and such other appropriate security
barriers sufficient to ensure that only authorized persons (including
building and administrative services) may enter or obtain access to such
areas or information contained therein. No Other Technology Group member
shall be authorized to enter such InterTrust Technology Group areas;
(5) Written Procedures and Education. Written procedures and education are
--------------------------------
intended to aid compliance with information procedures by making sure that
Screening Party employees (including members of the InterTrust Technology
Group or any Other Technology Group) are aware of the procedures they are
expected to follow. The Screening Party and its participants shall ensure
that relevant employees are informed of the Screening Procedures by, at a
minimum:
(a) memorializing the definition of a Compromising Event and the
Screening Procedures in a memorandum (the "Screening Procedures Memo") and
-------------------------
distributing the Screening Procedures Memo to each of the persons listed in
Section 1 hereof (including new members of the groups, as added);
(b) conducting one or more meetings promptly following the Effective
Date (and with new employees during an orientation meeting) to explain the
Screening Procedures to all affected personnel;
(c) periodically advising relevant employees of information which, if
not handled in accordance with these Procedures, could lead to a
Compromising Event, and of the necessity of following the Screening
Procedures; and
(d) posting the requirements of the Screening Procedures in
appropriate, prominent locations within the InterTrust Technology and Other
Technology Group areas to remind Screening Party and its participants and
their employees of their Screening Procedure obligations.
E-3
CONFIDENTIAL
(6) Absence of any Other Technology Group. If none of the Screening Party or,
-------------------------------------
as relates to an Authorized Venture, any participants is engaged in
developing, marketing, distributing, promoting, or otherwise pursuing
business activities supportive of any Other Technology and such absence of
support for Other Technology is certified in writing by each such Person,
then, but only for so long as no such Party is involved in such support of
Other Technology, information, including Confidentially Handled Information
of InterTrust or of the InterTrust Technology Group, may be handled
according to the terms and conditions for Confidential Information and Top
Secret Information in the Agreement (and without such Screening
Procedures), but further only so long as: (a) no such Party becomes
involved in such support of Other Technology, and (b) the Screening Party
is compliant with the terms and conditions of this Agreement.
E-4
CONFIDENTIAL
EXHIBIT F
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERTRUST TERMS
----------------
At a minimum, the Customer Agreements shall contain the terms:
(1) prohibit Customer from disassembling, modifying or
reverse engineering any portion of the InterTrust Technology incorporated in the
Universal Product (as relevant and to the maximum extent allowed under
applicable law);
(2) stipulate that such Customer has no right to use
such product in any manner whatsoever not licensed to Universal hereunder
(including outside of the Entertainment Field (except as related to use of the
InterRights Point with other licensed applications)), and/or to engage in or
perform any Clearinghouse Functions whatsoever unless such customer is an
Authorized Clearinghouse Provider;
(3) grant such Customer only the limited license, and
only such limited license as is strictly necessary, to use Universal Products
and/or associated services within the specific scope set forth in the definition
of Customer in Section 1 hereof (and/or to use an InterRights Point with other
licensed applications);
(4) permit such Customer to engage Universal and/or an
Authorized Clearinghouse Provider (as determined by Universal for its Customers)
to perform Clearinghouse Functions with respect to a Universal Product and/or
associated services, but solely in accordance with the provisions hereof;
(5) provide that if such Customer is permitted by
InterTrust, and if by InterTrust then by Universal, to modify any portion of
InterTrust Source Code, such Customer shall grant to InterTrust and InterTrust
customers a license under such Customer's patent rights, but solely to the
extent necessary to permit InterTrust and InterTrust customers to, during the
life of their use of InterTrust Technology, make, have made, use, offer for
sale, sell and/or import InterTrust Technology;
(6) brand all Universal Products that are Application
Products solely in the manner set forth in Section 5.3(c), and, further, on Co-
Branded Universal Products (as defined in Section 5.3(c)) communicate in a
significant and prominent manner through the use of one or more Universal brands
for Universal InterTrustworthy clearing services (and as set forth in Section
5.3) that Clearinghouse Function services are being performed by Universal or an
Authorized Venture, as applicable, in compliance with this Agreement;
(7) prohibit such Customer from removing, altering,
covering, obfuscating and/or otherwise defacing any InterTrust Trademarks or
Notices on any InterTrust Technology or associated documentation, marketing and
advertising materials therefor;
(8) require such Customers to place Notice on products
and associated documentation, marketing and advertising materials therefor in
full accordance with the terms and conditions of this Agreement;
F-1
CONFIDENTIAL
(9) provide that such agreement may be subject to
modification as may be reasonably required to protect InterTrust's rights, for
example but without limitation, InterTrust's Intellectual Property Rights;
(10) provide that the Customer Agreement is to and for
InterTrust's benefit, and (a) in the event Universal fails to promptly enforce
its rights thereunder such rights may be enforced by InterTrust at its
discretion as a third party beneficiary (provided that notice is first provided
to Universal and Universal does not enforce its rights promptly thereafter),
and/or (b) with respect to InterTrust's Intellectual Property Rights and/or
rights in InterTrust Technology, may be enforced by InterTrust at its discretion
to enforce any of its rights in such intellectual property and technology; and
contain such other provisions as stipulated herein.
SELECT PROVISIONS TO BE INCLUDED IN END-USER AGREEMENTS
-------------------------------------------------------
1. [In the first paragraph of such Agreement] Except as expressly provided to
the contrary herein, each Transaction, as defined below, shall be subject to and
wholly governed by the then-current version of this ________________ Agreement
in force as of the date and time of such Transaction. A copy of such current
version can be located at ________________________________________ (or as
otherwise indicated by the Software). Customer agrees to abide by the terms and
conditions hereof (including pursuant to the Exhibit).
2. [Following the license provision concerning Universal software
("Software"):] Such object code version of such Software incorporates certain
software and technology (and documentation) provided by Universal under license
from InterTrust Technologies Corporation ("InterTrust"), for protecting and
managing digital information (collectively "InterTrust Software"), which is
-------------------
governed by this Agreement. In the case of any conflict with respect to (or
affecting) InterTrust Software between terms and conditions hereof set forth on
the Exhibit and terms and conditions set forth elsewhere in this Agreement, the
terms and conditions set forth on the Exhibit shall control.
3. Integrate InterTrust into standard "no modification, etc." clauses language
generally as follows: Customer's rights in the Software are for use only in
connection with the ordinary course of its business, and not for commercial
distribution of the Software to third parties or unless otherwise agreed by
Universal and InterTrust. All title and ownership rights in the Software
remains with Universal and its licensors, as applicable. Customer may make one
back-up copy of the Software for archival purposes, so long as such copy
contains the copyright and proprietary notices which are furnished with the
original copy. Customer may not modify, alter, decompile, disassemble, reverse
engineer, reverse compile or otherwise reduce the Software to human readable
form without the prior written consent of Universal, or as relates to InterTrust
Software, InterTrust; provided, however, that, notwithstanding anything
-------- -------
contained herein to the contrary, Universal's and/or InterTrust's authorization,
as applicable, shall not be required where reproduction of the Software and
translation of its form are indispensable in the European Union or Norway to
obtain the information necessary to achieve the interoperability of the Software
with other programs, provided that: (a) these acts are performed by Customer or
by another person having a right to use a copy of the Software, or on their
behalf by a person authorized to do so; (b) the information necessary to achieve
interoperability has not previously been readily available to the persons
referred to in subparagraph (a); and (c) these acts are confined solely to the
parts of the Software which are necessary to achieve interoperability.
F-2
CONFIDENTIAL
4. Include InterTrust and/or "any of its licensors" in any Universal
exclusions from warranties or damages. And, in "no third party beneficiary"
clauses, include InterTrust specifically, for example, as follows: Customer
understands and acknowledges that the Services are being provided solely by
Universal and that neither the provision of the Services, nor this Agreement,
nor any other relationship between Universal and Customer creates any
relationship, contractual or otherwise, between Customer and InterTrust, or
makes Customer a third-party beneficiary of any relationship, contractual or
otherwise, between Universal and InterTrust. Accordingly, InterTrust will have
no liability whatsoever to Customer as a result of the provision of, or failure
to provide, the Services or this Agreement or any other relationship between
Universal and Customer.
5. In any "no amendment" clause, include reference to InterTrust as follows:
Except as expressly set forth herein, any change to this Agreement must be in
writing, signed by Universal and Customer, except in the case of changes being
made that materially affect InterTrust Software, which changes must be in
writing signed by Universal, Customer and InterTrust.
6. Each agreement must have a provision concerning the US Government as a
customer, substantially as follows: The Software is "commercial computer
software" or "commercial computer software documentation." If Customer is a
unit or agency of the United States Government, then the United States
Government's rights with respect to the Software are limited by the terms of
this Agreement, pursuant to FAR (S) 12.212(a) and/or DFARS (S) 227.7202-1(a), as
applicable.
7. Each agreement must have a provision concerning Export control
substantially as follows: Customer acknowledges that the Services, Software and
related technical data are subject to United States export controls imposed
under the Export Administration Regulations of the U.S. Department of Commerce
and other relevant regulations. Customer shall not export or "re-export"
(transfer) the Services, Software and related technical data unless Customer has
complied with all applicable U.S. export controls. U.S. law prohibits transfer
to any person or entity in Cuba, Iran, Iraq, Libya, North Korea, Sudan and
Syria, or to any person or entity who Customer knows or has reason to believe
will transfer the Services, Software or technical data to those locations. U.S.
law also prohibits transfer to a national of any of those countries, or to a
person or entity designated by U.S. export regulations as a "Specially
Designated National" or other Blocked Person, without the express authorization
of the United States Government. For a comprehensive description of all
applicable U.S. export controls, Customer should consult U.S. export
regulations.
8. The following Exhibit shall be included with each agreement:
EXHIBIT __
TO THE PROVISIONS CONCERNING SERVICE AND/OR RESELLER AGREEMENT
ADDITIONAL PROVISIONS RELATING TO INTERTRUST SOFTWARE
-----------------------------------------------------
1. License. The InterTrust Software that accompanies the _____________________
-------
is licensed to you solely in accordance with the terms as set forth hereof in
this Exhibit and elsewhere in the ______________________ (the "InterTrust
Software License"). Subject to the terms and conditions hereof, this InterTrust
Software License grants you a limited, personal, nonexclusive, nonsublicensable
right to use the InterTrust Software as such Software has been delivered to you
on a single computer solely: (a) as an end user or for end users; and (b) to
access and/or otherwise use content or other digital information under the
management and/or other governance of such
F-3
CONFIDENTIAL
InterTrust Software, including but not limited to performing those limited
clearinghouse functions strictly and solely as set forth herein.
2. Restrictions; Prohibited Clearinghouse Use. The InterTrust Software
------------------------------------------
contains and/or embodies copyrighted material, trade secrets, patented
inventions and other proprietary material of InterTrust. In addition to those
prohibitions contained elsewhere herein, you may not (and agree that you shall
not) under this license: (a) rent, lease, loan or distribute the InterTrust
Software in whole or in part; and/or (b) use the software or any portion thereof
to create any tool or software product that can be used to create software
applications of any nature whatsoever. Except as expressly provided by the
InterTrust Software License, no other licenses or rights are granted, expressly,
or by implication or estoppel, now or in the future and all other licenses are
reserved by InterTrust. Without limiting the generality of the foregoing, this
InterTrust Software License specifically does not allow you to use, and you
agree to not control and direct the InterTrust Software or any portion thereof,
or any information derived at least in part from use of such software, to
perform any of the following functions (the "Clearinghouse Functions") except
those specific, express activities, on your own behalf (and/or on behalf of an
entity), directly authorized by, set-up by, and controlled by a provider of
clearinghouse function products and/or services acting pursuant to its license
with InterTrust:
(1) enable payment fulfillment or provision of other consideration
(including service fees, product fees or any other fees and/or charges) based at
le in part on access and/or other processing of electronic information under any
form of management, control, regulation or governance of InterTrust Software,
including information conveyed to, associated with, from, or generated by such
Software;
(2) perform any audit, billing, payment fulfillment (or provision of other
consideration) and/or other clearing activities involving more than one person;
or
(3) compile, aggregate, use and/or provide information relating to more
than one person's use of InterTrust Software and/or any digital information
and/or file structures managed, governed and/or regulated thereby, or provide
information relating to a person's use of InterTrust Software and/or any digital
information and/or file structures managed, governed and/or regulated thereby to
a third person for any commercial purpose.
Clearinghouse Functions shall include, for example, any of the following
activities or services: (A) financial clearing; (B) electronically certifying
information such as authenticating identity, class membership or other
attributes of identity context; and/or (C) providing and/or deriving information
based upon usage auditing, user profiling, and/or market surveying related to
more than one person's use of InterTrust Software and/or any digital information
managed, governed and/or regulated thereby, including compiling and/or employing
information to support advertising payment or other consideration.
You are permitted to pay bills or provide information related to your use of the
Software and observe and interact with your rights, permission and/or records
concerning use of content governed by the Software, to the extent and in the
manner provided by your Software and authorized, set-up and controlled by
________________________ pursuant to its license from InterTrust.
3. Additional Covenants. You acknowledge and agree that: (a) those aspects of
--------------------
this Agreement concerning InterTrust Software are entered into to and for the
benefit of InterTrust, and confer a third-party beneficiary right upon
InterTrust such that InterTrust shall be entitled (in its discretion) to pursue
any claim or action to enforce Customer's obligations hereunder as relate, or
otherwise
F-4
CONFIDENTIAL
pursue remedies for any breach hereof concerning, InterTrust Software; and (b)
any unauthorized use of InterTrust technology contained in the InterTrust
Software would result in irreparable injury to InterTrust for which money
damages would be inadequate and in such event InterTrust shall have the right,
in addition to other remedies available at law and in equity, to immediate
injunctive relief to prevent any such unauthorized use. Nothing contained in
this Section 3 or elsewhere in this Agreement shall be construed to limit
remedies or relief available pursuant to statutory or other claims that
InterTrust may have under separate legal authority, including but not limited
to, any claim for intellectual property infringement. In addition to other
obligations hereunder, you further acknowledge and agree that you are not
licensed to (and shall not): (1) tamper with the InterTrust Software; or (2)
undertake any activity intended to bypass, modify, defeat or otherwise
circumvent (or having the intended effect of facilitating, modifying or
assisting the bypassing, defeating or circumventing of) proper and/or secure
operation of the InterTrust Software, and/or any mechanisms operatively linked
to such Software to detect and/or make more difficult attempts to bypass,
modify, defeat or otherwise circumvent the proper and/or secure operation of the
InterTrust Software.
4. Warranties. Any and all warranties that may be made with respect to the
----------
Software (including but not limited to the InterTrust Software) are made solely
by Universal and as set forth in the Service Agreement. You expressly
acknowledge and agree that as concerns InterTrust, the use of the Software is at
your own sole risk. THE INTERTRUST SOFTWARE HAS BEEN PROVIDED BY INTERTRUST
SOLELY IN THE FORM OF MIDDLEWARE, "AS IS" AND WITHOUT WARRANTY BY INTERTRUST OF
ANY KIND, AND, TO THE MAXIMUM EXTENT ALLOWED BY APPLICABLE LAW, INTERTRUST
EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, BUT NOT
LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, OR ANY WARRANTY OF NONINFRINGEMENT. THERE IS NO WARRANTY
THAT THE FUNCTIONS CONTAINED IN THE INTERTRUST SOFTWARE WILL MEET YOUR
REQUIREMENTS, OR THAT THE OPERATION THEREOF WILL BE UNINTERRUPTED OR ERROR-FREE.
INTERTRUST DOES NOT WARRANT, GUARANTEE OR MAKE ANY REPRESENTATIONS REGARDING THE
USE OR THE RESULTS OF THE USE OF THIS PRODUCT WITH RESPECT TO ITS PERFORMANCE,
ACCURACY, RELIABILITY, SECURITY CAPABILITY, CURRENTNESS OR OTHERWISE . NO ORAL
OR WRITTEN INFORMATION OR ADVICE GIVEN BY ANY PERSON SHALL CREATE A WARRANTY IN
ANY WAY WHATSOEVER RELATING TO INTERTRUST. THE ENTIRE RISK AS TO THE USE,
PERFORMANCE AND RESULTS OF THIS PRODUCT ISASSUED BY YOU. THE EXCLUSION OF
IMPLIED WARRANTIES IS NOT PERMITTED BY SOME JURISDICTION THUS, THE ABOVE
EXCLUSION MAY NOT APPLY TO YOU.
5. Further Limitation of Liability. In addition to the other provisions
-------------------------------
hereof, YOU ACKNOWLEDGE TO AND FOR INTERTRUST'S BENEFIT AND THE BENEFIT OF ITS
DIRECTORS, EMPLOYEES, OR AGENTS ("AGENTS") THAT THE INTERTRUST SOFTWARE, AS WITH
MOST SOFTWARE, MAY CONTAIN BUGS AND IS NOT DESIGNED OR INTENDED FOR USE IN
HAZARDOUS ENVIRONMENTS REQUIRING FAIL-SAFE PERFORMANCE IN WHICH THE FAILURE OF
THE APPLICATION SOFTWARE COULD LEAD TO DEATH, PERSONAL INJURY OR PHYSICAL OR
ENVIRONMENTAL DAMAGE. INTERTRUST AND ITS AGENTS SHALL HAVE NO LIABILITY
WHATSOEVER FOR ANY LOSS SUFFERED AS THE RESULT OF A BREACH OF SECURITY INVOLVING
INTERTRUST SOFTWARE, WHETHER OR NOT SUCH BREACH RESULTS FROM THE DELIBERATE,
RECKLESS OR NEGLIGENT ACTS OF ANY PERSON.
F-5
CONFIDENTIAL
UNDER NO CIRCUMSTANCES SHALL INTERTRUST OR ITS AGENTS BE LIABLE FOR ANY
UNAUTHORIZED USE OF ANY CONTENT OF ANY PERSON, OR ANY USE OF THE SOFTWARE TO
DEVELOP, DISTRIBUTE OR USE OF ANY MATERIAL THAT IS DEFAMATORY, SLANDEROUS,
LIBELOUS OR OBSCENE, THAT PORTRAYS ANY PERSON IN A FALSE LIGHT, THAT CONSTITUTES
AN INVASION OF ANY RIGHT TO PRIVACY OR AN INFRINGEMENT OF ANY RIGHT TO
PUBLICITY, THAT GIVES RISE TO ANY BREACH OF CONTRACT INVOLVING ANY THIRD PARTY
OR TO ANY BUSINESS TORT OR SIMILAR CLAIM OF A THIRD PARTY OR ANY VIOLATION OF
ANY FOREIGN, FEDERAL, STATE OR LOCAL STATUTE OR REGULATION, OR THAT OTHERWISE
CAN BE REASONABLY LIKELY TO EXPOSE DEVELOPER OR INTERTRUST TO CRIMINAL OR CIVIL
ACTIONS.
IN NO EVENT WILL INTERTRUST AND/OR ITS AGENTS BE LIABLE TO YOU FOR ANY
CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES (INCLUDING DAMAGES FOR LOSS OF
BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE
LIKE) ARISING OUT OF THE USE OR INABILITY TO USE THE SOFTWARE, EVEN IF
INTERTRUST AND/OR ITS AGENTS HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. BECAUSE SOME JURISDICITONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF
LIABILITY FOR CONSEQUETNIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATION MAY NOT
APPLY TO YOU. TO THE EXTENT AS APPLIED IN A PARTICULAR CIRCUMSTANCE ANY
DISCLAIMER OR LIMITATION ON DAMAGES OR LIABILITY SET FORTH HEREIN IS WHOLLY
PROHIBITED BY APPLICABLE LAW, THEN, INSTEAD OF THE PROVISIONS HEREOF IN SUCH
PARTICULAR CIRCUMSTANCE, INTERTRUST SHALL BE ENTITLED TO THE MAXIMUM DISCLAIMERS
AND/OR LIMITATIONS ON DAMAGES AND LIABILITY AVAILABLE AT LAW OR IN EQUITY BY
SUCH APPLICABLE LAW IN SUCH PARTICULAR CIRCUMSTANCE, IN NO EVENT TO EXCEED
US$10.
6. Term. In addition to the other provisions hereof, the InterTrust Software
----
License is subject to immediate termination without notice from Universal or
InterTrust, if you breach any provision of this Exhibit or other provision of
the _________________ with respect to InterTrust Software; provided that if such
-------- ----
termination without notice is expressly prohibited by applicable law, then such
termination shall occur based upon notice from Universal or InterTrust in the
event of any breach. Upon notice from Universal or InterTrust that this
Agreement has been terminated you must return to Universal all copies of the
Software, including any copies or partial copies.
7. Miscellaneous Provisions. Any and all actions arising out of or in any
------------------------
manner affecting the interpretation of the provisions of this Exhibit, the
InterTrust Software License, or other provisions hereof directly relating to
InterTrust Software, and any action involving the InterTrust Software, whether
under this Agreement or otherwise (collectively, an "InterTrust Software
Dispute") shall be governed solely by, and construed solely in accordance with,
the laws of the United States of America and Commonwealth of Virginia, excluding
(a) conflict of laws principles; (b) the United Nations Convention on Contracts
for the International Sale of Goods; (c) the 1974 Convention on the Limitation
Period in the International Sale of Goods; and (d) the Protocol amending the
1974 Convention, done at Vienna April 11, 1980. To the extent permitted by law,
the provisions of this Exhibit shall supersede any provisions of the Uniform
Commercial Code as adopted or made applicable to the InterTrust Software in any
competent jurisdiction. As concerns any InterTrust Software Dispute, you hereby
unconditionally and irrevocably consent to the exclusive jurisdiction and venue,
as relevant, in the Courts of the Commonwealth of Virginia and in the U.S.
Federal
F-6
CONFIDENTIAL
District Court, located in the City of Alexandria, Virginia (or any direct
successor thereto) and irrevocably: (a) waive any objection whatsoever
(including any objection with respect to venue) that you may now or hereafter
have to the jurisdiction or venue of said courts; and (b) consent to the service
of process of said courts in any matter relating to this License by the mailing
of process by registered or certified mail, postage prepaid, at the addresses
specified therein. If for any reason a court of competent jurisdiction finds any
provision or portion of this License to be unenforceable, such provision or
portion shall be enforced to the maximum extent permissible consistent with the
terms hereof, and the remainder of this License shall continue in full force and
effect.
*********
F-7
CONFIDENTIAL
EXHIBIT H
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
INTERTRUST MARK DENOTING COMPLIANCE
-----------------------------------
[LOGO OF METATRUST CERTIFIED]
H-1
CONFIDENTIAL
EXHIBIT I
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
FORM OF INTERTRUST CONFIDENTIALITY AGREEMENTS
---------------------------------------------
InterTrust Top Secrecy Agreement
--------------------------------
InterTrust Non-Disclosure/Non-Use Agreement
-------------------------------------------
Universal Non-Disclosure/Non-Use Agreement
------------------------------------------
I-1
CONFIDENTIAL
NON-DISCLOSURE AGREEMENT
------------------------
FOR INTERTRUST CONFIDENTIAL INFORMATION
---------------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of ____ 199_ between
---------
INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware corporation,
----------
___________ having a place of business at 460 Oakmead Parkway, Sunnyvale,
California 90486, and ("Recipient"), an individual citizen of ________________,
---------
residing at __________________________, and an employee of Universal Music
Group, Inc. ("Universal"), a ______________________ corporation, with offices at
---------
70 Universal City Plaza, Universal City, California.
The parties agree as follows:
1. Pursuant to a Technology Development and License Agreement dated April ___,
1999 between InterTrust and Universal (the "License Agreement"), InterTrust may
-----------------
disclose to Universal certain confidential information including technical
information embodied in and/or associated with InterTrust's InterTrust
Technology including, without limitation, software products and/or other
developments related to distributed, secure rights and/or event management,
associated designs, inventions, plans, and other information, all of which such
information shall conspicuously be marked by InterTrust with a notice or legend
with the phrase "Confidential" or indicated as "Confidential" when disclosed
orally or visually as provided in the License Agreement (the "Confidential
------------
Information"). In consideration for such Confidential Information being
- -----------
provided to Recipient, Recipient agrees to be bound by the terms of this
Agreement. Disclosure of InterTrust Confidential Information to Recipient, and
use and disclosure of Confidential Information received by Recipient, shall
occur only in accordance with the terms and conditions of this Agreement.
2. For a period of three (3) years following the disclosure of any
Confidential Information (such period to extend in perpetuity with respect to
InterTrust technology), Recipient will retain such Confidential Information in
confidence, and will discuss such Confidential Information only with other
Universal employees and other individuals permitted to receive Confidential
Information under the License Agreement (an "Individual Consultant") -- all of
---------------------
whom shall have a need to know said Confidential Information and who have
executed a copy of this Agreement. Recipient shall not, without the prior
written permission of InterTrust's Chairman or such other InterTrust officer as
who has been designated in writing by InterTrust's Chairman (a "Designated
----------
InterTrust Officer"), disclose Confidential Information to any person other than
- ------------------
as set forth immediately above. Furthermore, without express authorization of
Universal as permitted by the License Agreement, the Recipient will not make
copies, in whole or in part, of the Confidential Information, including
translating, in whole or in part, the Confidential Information into another
language and/or shipping the Confidential Information, in whole or in part, or
any direct product thereof, to any other country. The undersigned will not use
the Confidential Information in any manner that is not authorized by Universal
and in full accordance with the License Agreement and the undersigned will use
the Confidential Information solely in the exercise of Universal's rights as
provided by the License Agreement. Under no circumstances will any Confidential
Information subject to the export or import laws of any jurisdiction be
transferred by Recipient without proper prior certification and notification of
appropriate regulatory offices in applicable jurisdictions and InterTrust.
3. The undersigned will not use Confidential Information except in fulfillment
of the undersigned's employee's and/or other individual's obligations with
Universal, and for no other purposes whatsoever. The undersigned understands
and acknowledges that the unauthorized use of Confidential Information may cause
InterTrust very substantial damage, for which damages may be impossible to
measure or inadequate to compensate. Accordingly, Recipient agrees that if he
or she breaches or threatens breach of any of such sections, InterTrust will
have available, in addition to any other right or remedy available, the right to
obtain an injunction
I-2
CONFIDENTIAL
against him or her, from a court of competent jurisdiction restraining such
breach or demonstrable threatened breach and to specific performance of any such
provision of this Agreement, and Recipient hereby consents to the issuance of
such injunction and to the ordering of specific performance under such
circumstances.
4. In the event of a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with Universal, the undersigned will
return by secure delivery means reasonably specified by InterTrust all physical
embodiments of Confidential Information in the undersigned's possession to
InterTrust promptly upon request by InterTrust, and in no event later than
fifteen (15) days thereafter.
5. Notwithstanding any thing else in this Agreement, the confidentiality
restrictions of this Agreement shall not apply to information that: (i) is or
becomes known to the public through no breach of any of the undersigned's
obligations under this Agreement, or Universal's or any other Universal
employee's obligations of confidentiality to Universal and/or to InterTrust;
(ii) was known to Recipient prior to its disclosure by InterTrust, as evidenced
through written documentation; (iii) shall have been independently developed by
the Recipient without any reliance on or use of any InterTrust Confidential
Information, as demonstrated through written documentation; or (iv) shall have
been rightfully supplied to Recipient, with no obligation of confidentiality or
non-use from a third party without any breach of any obligation of
confidentiality to InterTrust or Universal (as applicable) as of the date such
information is so supplied. In addition, the Recipient shall be entitled to
disclose Confidential Information pursuant to a court order issued by a court of
competent jurisdiction or as otherwise required by law; provided that the
-------- ----
undersigned shall provide prompt advance notice thereof to InterTrust to enable
InterTrust to seek a protective order or otherwise prevent such disclosure and
shall disclose no more than the minimum information required by such court order
or by law.
6. If any provision or portion thereof in this Agreement shall be found or be
held by a court of competent jurisdiction to be illegal, invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
then this Agreement shall nevertheless be given full force and effect without
said provision or portion. This Agreement may not be modified except by written
agreement dated subsequent to the date of this Agreement and signed by both
parties. This agreement shall be governed by and construed under the laws of
the United States and the Commonwealth of Virginia, USA, without reference to
conflicts of laws principles. All disputes arising out of or relating to the
subject matter of this Agreement shall be subject to the exclusive jurisdiction
and venue of the United States District Court for the Eastern District of
Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie
in such court, the Commonwealth courts in Alexandria, Virginia. The parties
consent to the personal and exclusive jurisdiction and venue of such court and
waive any argument that jurisdiction or venue in such court is improper or
inconvenient.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
InterTrust Technologies Corporation Recipient
By:_________________________________ By:________________________________
Name:_______________________________ Name:______________________________
Title:______________________________ Title:_____________________________
I-3
CONFIDENTIAL
TOP SECRECY AGREEMENT
---------------------
FOR CERTAIN INTERTRUST INFORMATION
----------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of _________ 199_
---------
between INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware
----------
corporation, having a place of business at 460 Oakmead Parkway, Sunnyvale,
California 90486, and ___________________________________("Recipient"), an
---------
individual citizen of _______, residing at ______________________________, and
an employee of Universal Music Group, Inc. ("Universal"), a ____________________
---------
corporation with offices at 70 Universal City Plaza, Universal City, California.
The parties agree as follows:
1. Purpose.
-------
(a) Pursuant to a Technology Development and License Agreement dated April
__, 1999 between InterTrust and Universal (the "License Agreement"), InterTrust
-----------------
may disclose to Universal certain information including load module related,
encryption related, security related document manager related and/or other
information considered Top Secret and proprietary by InterTrust and which shall
conspicuously be marked with a notice or legend with the phrase "Top Secret" or
confirmed as such after any oral or visual disclosure thereof as provided in the
License Agreement (hereinafter referred to as the "InterTrust Top Secret
---------------------
Information"). In consideration for said information being provided to
- -----------
Recipient, Recipient agrees to be bound by the terms of this Agreement.
(b) InterTrust wishes to protect the InterTrust Top Secret Information
from unauthorized use and disclosure. Disclosure of InterTrust Top Secret
Information to Recipient, and use and disclosure of Top Secret Information
received by Recipient shall occur only in accordance with the terms and
conditions of this Agreement.
2. Non-Disclosure and Restrictions on Use of InterTrust Extremely
--------------------------------------------------------------
Confidential.
------------
(a) Except as otherwise provided in an express written agreement signed by
InterTrust's Chairman or other such person designated in writing by the Chairman
or President (a "Designated InterTrust Officer"), Recipient agrees that he or
-----------------------------
she shall: (i) hold in strictest confidence and not disclose any InterTrust Top
Secret Information to any person or entity either within or outside Universal,
except to another Universal employee who has also signed a Top Secrecy Agreement
and is authorized to receive Top Secret Information pursuant to the Licensed
Agreement, or as expressly permitted in writing by a Designated InterTrust
Officer; (ii) use InterTrust Top Secret Information solely for purposes
authorized by the License Agreement: (iii) use said Top Secret Information in no
other way whatsoever; (iv) apply the strictest feasible measures to protect the
secrecy of, and prevent unauthorized disclosure or use of, InterTrust Top Secret
information (which such measures shall not be less stringent than Universal uses
to protect its own most highly sensitive and secret information); and (v)
produce no physical embodiments of any portion of the Top Secret Information
without the express written authorization of a Designated InterTrust Officer.
Recipient agrees to notify InterTrust promptly in writing of any unauthorized
disclosure or other misuse or misappropriation of the InterTrust Top Secret
Information which may come to Recipient's attention.
I-4
CONFIDENTIAL
(b) In the event Recipient is required by law, regulation or order of a
court or other authority of competent jurisdiction to disclose InterTrust Top
Secret Information, Recipient shall notify InterTrust as promptly as possible,
and shall, upon InterTrust's request, reasonably assist in challenging or
restricting the scope of such required disclosure. InterTrust Top Secret
Information may be disclosed only upon InterTrust's prior written approval;
provided that if Recipient notifies InterTrust that it has received an order
- -------- ----
from a court of competent jurisdiction requiring disclosure of InterTrust Top
Secret Information: (i) Recipient shall use reasonable efforts to resist
disclosure (including filing motions to limit disclosure to in camera
inspection); and (ii) if despite resisting such disclosure Recipient is required
to produce such InterTrust Top Secret Information and faces material
consequences should Recipient refuse to so comply, Recipient shall not be
construed to have breached this Agreement or the License Agreement by disclosing
such required information. In all events, Recipient subject to such required
disclosure shall disclose only such information that is strictly required
pursuant thereto and no further information and shall have provided InterTrust
notices of such events on a frequent basis as here relevant.
3. Return of Materials. Upon request of a Designated InterTrust Officer at
-------------------
any time after a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with Universal, Recipient shall
immediately return to InterTrust all tangible embodiments of InterTrust Top
Secret Information in Recipient's possession or otherwise under Recipient's
control by such secure delivery means as reasonably specified by InterTrust.
4. Equitable Remedies. Recipient agrees that unauthorized disclosure or use of
------------------
InterTrust Top Secret Information will cause InterTrust substantial and
irreparable damage. Recipient further agrees that it may be impossible or
inadequate to measure and calculate InterTrust's damages from any breach of the
covenants set forth in Sections 2 and/or 3 hereof. Accordingly, Recipient agrees
that if he or she breaches or threatens breach of any of such sections,
InterTrust will have available, in addition to any other right or remedy
available, the right to obtain an injunction against him or her, from a court of
competent jurisdiction restraining such breach or threatened breach and to
specific performance of any such provision of this Agreement, and Recipient
hereby consents to the issuance of such injunction and to the ordering of
specific performance under such circumstances.
5. Governing Law: Jurisdiction and Venue. This Agreement shall be governed by
-------------------------------------
and construed under the laws of the United States of America and the
Commonwealth of Virginia, without reference to conflict of law principles. All
disputes arising out of or relating to the subject matter of this Agreement
shall be subject to the exclusive jurisdiction and venue of the United States
District Court for the Eastern District of Virginia, Alexandria Division
Virginia, or if jurisdiction does not properly lie in such court, the
Commonwealth courts in Alexandria, Virginia. The parties consent to the
personal and exclusive jurisdiction and venue of such court and waive any
argument that jurisdiction or venue in such court is improper or inconvenient.
6. Severability; Export Compliance. If any provision or portion thereof in
-------------------------------
this Agreement shall be found or be held to be illegal, invalid or unenforceable
in any jurisdiction in which this Agreement is being performed, then this
Agreement shall nevertheless be given full force and effect without said
provision or portion. Recipient certifies that no Top Secret Information, or
any portion thereof, will be exported by Recipient to any country in violation
of U.S. export regulations or other regulations applicable to Recipient and such
information.
7. Entire Agreement. This Agreement constitutes the entire agreement between
----------------
Recipient and InterTrust regarding the InterTrust Top Secret Information
disclosed hereunder and supersedes all
I-5
CONFIDENTIAL
oral or written agreements, either entered prior to or contemporaneously with
this Agreement, concerning the InterTrust Top Secret Information, except the
provisions of the License Agreement, the provisions of which shall be deemed to
be supplemented hereby as of the date first written above. This Agreement may
not be modified except by written agreement dated subsequent to the date of this
Agreement and signed by both parties.
8 Successors. Subject to the limitations set forth in this Agreement, this
----------
Agreement will inure to the benefit of and be binding upon the parties, their
successors and assigns.
9 Notices. For all purposes hereof, any notice pursuant hereto shall be
-------
deemed given upon receipt by the Party at the address indicated above.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
INTERTRUST TECHNOLOGIES RECIPIENT
CORPORATION
By:____________________________ By:____________________________
Name:__________________________ Name:__________________________
Title:_________________________ Title:_________________________
I-6
CONFIDENTIAL
NON-DISCLOSURE AGREEMENT
-------------------------
FOR UNIVERSAL CONFIDENTIAL INFORMATION
--------------------------------------
THIS AGREEMENT (this "Agreement") is made effective as of ____ 199_ between
---------
Universal Music Group, Inc. ("Universal"), a Delaware corporation, with offices
at 100 Universal City Plaza, Universal City, California, and ___________________
("Recipient"), an individual citizen of ______, residing at ___________________,
----------
and an employee of InterTrust Technologies Corporation ("InterTrust"), a
----------
Delaware corporation, ___________________, having a place of business at 460
Oakmead Parkway, Sunnyvale, California 90486.
The parties agree as follows:
1. Pursuant to a Technology Development and License Agreement dated _____
between InterTrust and Universal (the "License Agreement"), Universal may
-----------------
disclose to InterTrust certain confidential information in accordance with the
terms of the License Agreement including technical information embodied in
and/or associated with Universal technology including, without limitation,
software products and/or other developments, associated designs, inventions,
plans, and other information all of which such information shall conspicuously
be marked with a notice or legend with the phrase "Confidential" or indicated as
"Confidential" when disclosed orally or visually as provided in the License
Agreement ("Confidential Information"). In consideration for such Confidential
Information being provided to Recipient, Recipient agrees to be bound by the
terms of this Agreement. Disclosure of Universal Confidential Information to
Recipient shall occur only in accordance with the terms and conditions of the
License Agreement, and use and disclosure of Confidential Information received
by Recipient shall occur only in accordance with the terms and conditions of
this Agreement.
2. For a period of three (3) years following the disclosure of any
Confidential Information, Recipient will retain such Confidential Information in
confidence, and will discuss such Confidential Information only with other
InterTrust employees or other individuals permitted to receive Confidential
Information under the License Agreement (an "Individual Consultant") all of
---------------------
whom shall have a need to know said Confidential Information and who have
executed a copy of this Agreement or other confidentiality agreement of
InterTrust. Recipient shall not, without the prior written permission of a
Universal officer (a "Designated Universal Officer"), disclose Confidential
-----------------------------
Information to any person other than as set forth immediately above.
Furthermore, without express authorization of InterTrust as permitted by the
License Agreement, the Recipient will not make copies, in whole or in part, of
the Confidential Information, including translating, in whole or in part, the
Confidential Information into another language and/or shipping the Confidential
Information, in whole or in part, or any direct product thereof, to any other
country. The undersigned will not use the Confidential Information in any manner
that is not authorized by InterTrust and in full accordance with the License
Agreement and the undersigned will use the Confidential Information solely in
the exercise of InterTrust's rights and obligations as provided by the License
Agreement. Under no circumstances will any Confidential Information subject to
the export or import laws of any jurisdiction be transferred by Recipient
without proper prior certification and notification of appropriate regulatory
offices in applicable jurisdictions and Universal.
3. The undersigned will not use Confidential Information except in fulfillment
of the undersigned's employee's and/or other individual's obligations with
InterTrust, and for no other purposes whatsoever. The undersigned understands
and acknowledges that the unauthorized use of Confidential Information may cause
Universal very substantial damage, for which damages may be impossible to
measure or inadequate to compensate. Accordingly, Recipient agrees that if he
or she breaches or threatens breach of any of such sections, Universal will have
available, in addition to any other right or remedy available, the right to
obtain an injunction
I-7
CONFIDENTIAL
against him or her, from a court of competent jurisdiction restraining such
breach or demonstrable threatened breach and to specific performance of any such
provision of this Agreement, and Recipient hereby consents to the issuance of
such injunction and to the ordering of specific performance under such
circumstances.
4. In the event of a breach of this Agreement or the License Agreement or the
termination of Recipient's employment with InterTrust, the undersigned will
return by secure delivery means reasonably specified by Universal all physical
embodiments of Confidential Information in the undersigned's possession to
InterTrust promptly upon request by InterTrust, and in no event later than
fifteen (15) days thereafter.
5. Notwithstanding anything else in this Agreement, the confidentiality
restrictions of this Agreement shall not apply to information that: (i) is or
becomes known to the public through no breach of any of the undersigned's
obligations under this Agreement, or InterTrust's or any other InterTrust
employee's obligations of confidentiality to InterTrust and/or Universal; (ii)
was known to Recipient prior to its disclosure by Universal, as evidenced
through written documentation; (iii) shall have been independently developed by
the Recipient without any reliance on or use of any Universal Confidential
Information, as demonstrated through written documentation; or (iv) shall have
been rightfully supplied to Recipient, with no obligation of confidentiality or
non-use from a third party without any breach of any obligation of
confidentiality to Universal or InterTrust (as applicable) as of the date such
information is so supplied. In addition, the Recipient shall be entitled to
disclose Confidential Information pursuant to a court order issued by a court of
competent jurisdiction or as otherwise required by law; provided that the
-------- ----
undersigned shall provide prompt advance notice thereof to Universal to enable
Universal to seek a protective order or otherwise prevent such disclosure and
shall disclose no more than the minimum information required by such court order
or by law.
6. If any provision or portion thereof in this Agreement shall be found or be
held by a court of competent jurisdiction to be illegal, invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
then this Agreement shall nevertheless be given full force and effect without
said provision or portion. This Agreement may not be modified except by written
agreement dated subsequent to the date of this Agreement and signed by both
parties. This agreement shall be governed by and construed under the laws of
the United States and the Commonwealth of Virginia, USA, without reference to
conflicts of laws principles. All disputes arising out of or relating to the
subject matter of this Agreement shall be subject to the exclusive jurisdiction
and venue of the United States District Court for the Eastern District of
Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie
in such court, the Commonwealth courts in Alexandria, Virginia. The parties
consent to the personal and exclusive jurisdiction and venue of such court and
waive any argument that jurisdiction or venue in such court is improper or
inconvenient.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
Universal Limited Recipient
By:_______________________________ By:______________________________
Name:_____________________________ Name:____________________________
Title:____________________________ Title:___________________________
I-8
CONFIDENTIAL
EXHIBIT K
TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
JOINT PRESS RELEASE
-------------------
[LOGO OF INTERTRUST]
News Release
For further information contact:
Joseph Jennings, InterTrust Technologies Corp.: 408-222-6270,
jjennings@intertrust.com
XXXXXXXXXX, Universal: XXX-XXX-XXXX, XXXX@universal.com
Leigh Ann Varney, Varney Business Communications: 415-387-7250, lavsfo@wenet.net
UNIVERSAL MUSIC GROUP SELECTS INTERTRUST FOR DIGITAL RIGHTS MANAGEMENT
Universal Music Group Plans To Employ InterTrust Technology
Los Angeles and Sunnyvale, CA -- April XX, 1999 -- Universal Music Group
(Universal) and InterTrust Technologies Corporation (InterTrust), the MetaTrust
Utility(TM), today announced a long-term agreement regarding deploying and
disseminating MetaTrust Certified(TM) applications and services. A pilot project
exploring enhanced rights management and digital music merchandising will be
launched later this year.
Universal conducted a broad study of the existing and proposed digital
rights management technology solutions and selected InterTrust technology as its
preferred rights management platform for electronic commerce and management for
music. Universal selected InterTrust(R) technology because it provides
persistent protection of content, flexible business models, and can extend
stakeholder rights management to new entertainment and information appliances
such as secure MP3Player devices, set-top boxes, and DVD.
"We selected InterTrust as our preferred digital rights management platform
to enable Universal to facilitate music industry digital distribution," said
Lawrence Kenswil, Executive Vice President Universal Music Group. "InterTrust
products provide an unusually rich array of capabilities and many unique
features, and InterTrust has led the way in defining what is possible in the
realm of digital content distribution."
"We believe InterTrust products provide, in combination with other
technologies, provides
K-1
CONFIDENTIAL
the tools our industry needs to meet the challenges, and realize the exciting
opportunities, of the rapidly developing digital world."
"We are pleased that Universal has chosen to partner with InterTrust in
meeting the challenges of the marketplace," said Victor Shear, founder, chairman
and chief executive officer of InterTrust. "Universal is a world leader in
entertainment products and services, and entertainment is a first mover in the
new digital economy. Universal can use InterTrust technology to change the
economics of the music industry, increase customer satisfaction, and combine
with other labels and technology companies to realize the huge growth potential
in music related digital products."
Universal Music Group
Need copy.
InterTrust
InterTrust Technologies Corporation, the MetaTrust Utility, provides a
groundbreaking, interoperable, trusted and secure foundation for efficient
electronic commerce. InterTrust software products and services enable the sale,
fulfillment and protection of digital content over any digital media, including
the Internet, DVD and future commerce appliances. InterTrust technology also
serves as a foundation for many other forms of trusted commercial interaction.
Since early 1990, InterTrust has been researching and inventing technologies
that enable fundamental elements of the future, interoperable digital commerce
world. In the entertainment and device markets, InterTrust technologies have
been a principal factor in the shaping of digital rights management industry
standards. For example, InterTrust played a formative role in the creation of
the MPEG-4 Intellectual Property Management and Protection (IPMP) interface and
the Open Platform Initiative for Multimedia Access (OPIMA). InterTrust is the
only company in the world to ship technology supporting MPEG-4 IPMP, and is the
only company providing a broad range rights management "plug-in" infrastructure
for secure MP3.
MetaTrust Utility core partners include Mitsubishi Corporation, National
Westminster Bank Plc. and Rights Exchange, Inc. (formerly SoftBank Net
Solutions). Builder partners include Computacenter (UK) Ltd., Science
Applications International Corporation (SAIC), and Fraunhofer IIS.
K-2
CONFIDENTIAL
InterTrust's Strategic Technologies and Architectural Research Laboratory (STAR
Lab) is the world's first computer laboratory whose primary focus is electronic
commerce and digital rights management. Founded in 1990, InterTrust is a
privately held company with a staff of over 130, and has offices in Sunnyvale,
California, New York City, Washington, D.C., and the United Kingdom.
##
Copyright (C) 1999 InterTrust Technologies Corporation. All rights
reserved. InterTrust is the registered trademark of InterTrust Technologies
Corporation, and the InterTrust logo, MetaTrust, MetaTrust Utility and MP3Plus
are trademarks of InterTrust Technologies Corporation, all of which may or may
not be used in certain jurisdictions.
K-3