This Agreement is entered into as of the effective date set forth below between CompuServe Incorporated, an Ohio corporation ("CompuServe"), and the other undersigned party to this Agreement ("Developer").
1.1. Effective upon Developer's payment of the initial license fee described in Section 2, CompuServe hereby grants to Developer a non-exclusive, worldwide: (a) license to use and exploit GIF(SM) to make, have made, use and sell Products solely within the Field of Use; and (b) sublicense to use and exploit the Licensed Patent to make, have made, use and sell Products solely within the Field of Use.
1.2. CompuServe will provide Developer with a single copy of the most recent specification for GIF(SM) and any updates to such specification that are released by CompuServe during the term of this Agreement. Once an updated version of the GIF(SM) specification has been released by CompuServe, Developer should incorporate the updates contained in the new specification into its Products as part of Developer's ordinary release cycle.
1.3. Developer understands that CompuServe and Unysis Corporation are the owners of all patents, copyrights, service marks and other intellectual property embodied in the Licensed Technology. In connection with its use of the Licensed Technology, Developer shall take all steps reasonably required by CompuServe and/or Unysis Corporation to acknowledge and protect their respective ownership interests in the patents, copyrights, service marks and other intellectual property interests embodied in the Licensed Technology. Developer further agrees not to take any action that would impair the respective interests of CompuServe and/or Unysis Corporation in the Licensed Technology.
1.4. Developer may not use, copy, modify or distribute the GIF(SM) specification, except as expressly permitted by CompuServe. Developer may make three copies of the GIF(SM) specification for back-up purposes only, provided CompuServe's service mark, copyright and other notices and legends are included in such copy. Developer shall not alter or delete any of the notices or legends contained in the GIFSM specification and any updates thereto. Developer agrees to provide the following notice on Products or in any Product documentation: "LZW compression and decompression methods are licensed under Unysis Corporation's U.S. Patent 4,558,302 and equivalent foreign patents. Additional technology embodied in GIF(SM) is licensed from CompuServe Incorporated. Graphics Interchange Format and GIF are service marks of CompuServe Incorporated."
1.5. Developer shall not grant any customer the right to use a Product until such customer has been registered by Developer as a user of the Product and customer's rights to use such Product are governed by an agreement with Developer providing that (a) the customer's use of such Product will be primarily for accessing the CompuServe Information Service and for manipulating and viewing data received through the CompuServe Information Service, and (b) the customer will not alter, enhance or redistribute any Product.
1.6. This Agreement does not provide Developer with title to or ownership of the Licensed Technology or any service mark of CompuServe, but only the license granted herein. Developer may only grant its customers a limited right to use Products.
2.1. In payment for the licenses granted herein, Developer shall pay CompuServe a one-time initial license fee of $ 1.00 which is due in full upon the execution of this Agreement and a fee per Disposition equal to the greater of (a) 1.5 percent of the selling price per Disposition or (b) $.15 per Disposition. Unless otherwise provided herein, all license fees and other amounts payable hereunder by Developer shall be paid to CompuServe in U.S. Dollars within ten (10) days after the end of each quarter. Quarterly periods may be defined at CompuServe's discretion.
2.2. Developer is solely responsible for payment of any taxes resulting from Developer's use of the Licensed Technology, except for taxes based on the income of CompuServe or Unysis Corporation. Developer agrees to hold CompuServe harmless from all claims and liability arising from Developer's failure to report or pay such taxes. This paragraph shall survive any termination of this Agreement.
Developer shall have the right to add additional Products solely within the Field of Use by providing notice to CompuServe of the existence of each new Product at the time such new Product is first offered to Developer's customers.
Developer shall keep adequate records to accurately determine the payments due under this Agreement. Each payment hereunder shall be made and accompanied by a report in such manner and form as requested by CompuServe setting forth the number of Dispositions of each Product occurring hereunder and any other information reasonably necessary to calculate payments due hereunder. Developer shall not enter into any arrangement under which copies of Products will be prepared or the Licensed Technology used, unless Developer has taken steps to ensure that it can account for and pay the royalties required hereunder.
CompuServe shall have the right, no more than once during any calendar year, to have an independent certified public accountant inspect the relevant records of Developer on seven business days notice and during regular business hours to verify the reports and payments required to be made hereunder. Should an underpayment in excess of 10 percent be discovered, Developer shall pay the cost of the audit. In any event, Developer shall promptly pay any underpayment together with interest at the annual rate of 12 percent.
This Agreement and the licenses granted herein may not be assigned by Developer without the prior written consent of CompuServe.
The initial term of this Agreement shall commence on the effective date of this Agreement and shall expire at midnight (EST) on the first anniversary of such date. This Agreement shall automatically renew for additional consecutive one year periods, unless either party delivers a written notice of termination to the other party not later than 30 days before the expiration of the then current term.
This Agreement may be terminated by CompuServe: (a) upon 30 days prior written notice, if Developer is in breach of any of its material obligations hereunder and the breach is not remedied within such 30 day period; or (b) upon reasonable written notice, if the Licensed Patent expires or is found invalid or unenforceable in any proceeding before the U.S. Patent and Trademark Office or in a U.S. court of law, after all appropriate appeals have been finally decided. Promptly following any termination of this Agreement, Developer shall (i) return all copies of the GIF(SM) specification and any confidential information of CompuServe then in its possession or control to CompuServe, (ii) stop using the Licensed Technology, and (iii) stop distributing Products.
All notices or other communications required or permitted under this Agreement shall be in writing and shall be delivered by personal delivery, registered mail return receipt requested, a "Next Day Air" delivery service or by customary electronic means, addressed as indicated on the signature page of this Agreement.
10.1. CompuServe represents that it has executed an agreement with Unysis Corporation dated June 21, 1994, pursuant to which Unisys Corporation (a) granted to CompuServe a license to sublicense the technology covered by the Licensed Patent to make, have made, use and sell Products in the Field of Use, provided such Products are identified to Unysis Corporation as required by such agreement, and (b) agreed as follows: "Unysis hereby releases any and all claims of any nature based upon any use of the technology of the Licensed Patent by Licensee in the Products, internal use in offering the CompuServe Information Service, or use by its licensees in derivatives of the Products, which have occurred to date and during the period of implementation of this Agreement, provided that Licensee shall exercise commercially diligent efforts to implement this Agreement as soon as reasonably practicable and in no case later than six (6) months after the date this Agreement is executed by Licensee."
10.2. EXCEPT AS SET FORTH IN THIS AGREEMENT, COMPUSERVE DISCLAIMS ANY AND ALL EXPRESS AND IMPLIED PROMISES, REPRESENTATIONS AND WARRANTIES WITH RESPECT TO THE LICENSED TECHNOLOGY, INCLUDING ITS CONFORMITY TO ANY REPRESENTATION OR DESCRIPTION, THE EXISTENCE OF ANY LATENT OR PATENT DEFECTS, OR ITS MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. This paragraph shall survive any termination of this Agreement.
10.3. The cumulative liability of CompuServe for all claims arising out of or relating to this Agreement shall not exceed the total amount of all license fees paid to CompuServe hereunder. In no event shall CompuServe be liable for any lost profits or incidental, special, exemplary or consequential damages for any claims arising out of or relating to this Agreement. This paragraph shall survive any termination of this Agreement.
10.4. Nothing in this Agreement shall be construed as: (a) requiring the maintenance of the Licensed Technology; (b) a warranty as to the validity or scope of the Licensed Technology; (c) a warranty or representation that any Product will be free from infringement of patents, copyrights, trademarks or other similar intellectual property interests of third parties; (d) an agreement to bring or prosecute actions against third party infringers of the Licensed Technology; (e) conferring any license or right under any patent other than the Licensed Patent; or (f) conferring any right to use the Licensed Technology outside the Field of Use.
10.5. This Agreement contains the complete and final agreement between the parties, and supersedes all previous understandings related to the subject matter hereof whether oral or written. This Agreement may only be modified by a written agreement signed by duly authorized representatives of the parties.
10.6. The validity and interpretation of this Agreement shall be governed by Ohio law, without regard to conflict of laws principles. The parties further consent to the exclusive jurisdiction of the state and federal courts located in the City of Columbus, Ohio. Process may be served on either party by U.S. Mail, postage prepaid, certified or registered, return receipt requested, and addressed as indicated on the signature page of this Agreement. This paragraph shall survive any termination of this Agreement.
10.7. Developer shall not disclose to anyone for any reason the terms of this Agreement or any information provided to Developer by CompuServe that is marked as being confidential information of CompuServe, except with CompuServe's prior written consent. Developer shall protect the confidentiality of such information with at least the same degree of care it employs to protect its own similar confidential information. Developer may use such confidential information of CompuServe solely for purposes of exercising its rights under this Agreement, and shall make no other use of such information. This paragraph shall survive any termination of this Agreement.
10.8. Developer acknowledges and agrees that Unisys Corporation is an intended third party beneficiary of each and every provision of this Agreement, other than Section 2 hereof, and may enforce any rights it may have under such provisions to the fullest extent permitted by law as if it were a party to this Agreement. This paragraph shall survive any termination of this Agreement.
10.9. Developer shall indemnify and hold CompuServe, and its officers, directors, agents, employees and affiliates, harmless against any damage, loss, claim, action, liability, cost or expense suffered by or brought against any of the foregoing indemnified parties arising out of or relating to any breach or violation of this Agreement by Developer or its customers or any conduct of Developer or its customers relating to their use of the Licensed Technology. This paragraph shall survive any termination of this Agreement.
11.1. "Disposition" means the sale, lease or license or any other grant of rights to a Product or any new Product as may be added pursuant to Section 3 of this Agreement.
11.2. "Field of Use" means software provided by CompuServe or Developer and used by subscribers to the CompuServe Information Service to access the CompuServe Information Service or use information obtained over the CompuServe Information Service which utilizes the technology of the Licensed Patent.
11.3. "GIF(SM)" means CompuServe's copyright and other intellectual property embodied in the Graphics Interchange Format(SM) as described in the most recent release of the specification for the Graphics Interchange Format(SM), as the same may be updated from time to time during the term of this Agreement, but (for purposes of this Agreement) does not include the technology covered by the Licensed Patent or CompuServe's service marks for the Graphics Interchange Format or GIF.
11.4. "Licensed Patent" means U.S. Patent 4,558,302 registered in the name of Unisys Corporation relating to digital data compression and decompression, and all foreign counterparts.
11.5. "Licensed Technology" means, collectively, GIF(SM) and the Licensed Patent.
11.6. "Products" means software that is developed or distributed under this Agreement which is designed for and used primarily for accessing the CompuServe Information Service and for manipulating and viewing data received through the CompuServe Information Service, and any new Products as may be added pursuant to Section 3 of this Agreement.
Signatures:
CompuServe Incorporated Developer
By____________________ By_______________________________________
Name: Kent D. Stuckey Name:____________________________________
Title: Secretary Title:___________________________________
Address: 5000 Arlington Centre Blvd. Address:_________________
____________________________________
Columbus, Ohio 43220 ____________________________________
Phone: (614) 457-8600 Phone:___________________________________
Fax: (614) 457-9665 Fax:_____________________________________
Effective Date: __________________________________