Confidential treatment has been requested with respect to certain
information contained in this document. Confidential portions have been
omitted from the public filing and have been filed separately with the
Securities and Exchange Commission.
RSA DATA SECURITY, INC.
100 MARINE PARKWAY, SUITE 500
REDWOOD CITY, CA 94065
OEM OBJECT CODE LICENSE AGREEMENT
This OEM OBJECT CODE LICENSE AGREEMENT ("Agreement"), effective as of
the later date of execution ("Effective Date"), is entered into by and
between RSA Data Security, Inc., a Delaware corporation ("RSA"), having a
principal address at 100 Marine Parkway, Suite 500, Redwood City, California
94065, and the entity named below ("OEM"), having a principal address as set
forth below.
OEM:
Tumbleweed Software, a California corporation
-----------------------------------------------------------------------
(Name and jurisdiction of incorporation)
2010 Broadway, Redwood City, CA 94063
-----------------------------------------------------------------------
(Address)
Notices to Contact: Bill Bradford,
---------------------------------------------------
Vice President Strategic Relationships
---------------------------------------------------
(650) 569-3687
---------------------------------------------------
(Name, Title and Telephone)
RSA SOFTWARE:
BSAFE-Registered Trademark- 3.0, consisting of the following algorithms: RSA,
DES, DESX., 3DES, RC2, RC4, RC5, MD, MD2, MD5, SHA, DSA, Diffie-Hellman;
TIPEM-Registered Trademark- 2.0, consisting of the following algorithms: RSA,
DES, 3DES, RC2, RC5, MD5, SHA, JSAFE-Registered Trademark- 1.0, consisting of
the following algorithms: RSA, DES, 3DES, RC2, RC4, RC5, MD5, SHA,
Diffie-Hellman. (The RSA Software provided by RSA on the Windows 95/NT
platform.)
OEM may obtain copies of the RSA Software on other platforms as may be
generally available at RSA's then current published price list, each
additional platform version of which will be covered RSA Software under this
Agreement.
Confidential treatment has been requested with respect to certain
information contained in this document. Confidential portions have been
omitted from the public filing and have been filed separately with the
Securities and Exchange Commission.
DELIVERY OF RSA SOFTWARE TO OEM:
One (1) copy of each of the Object Code and the User Manual for the RSA
Software identified above:
[X] has been received by OEM, or
[ ] will be delivered by RSA as soon as practicable, but not later
than ten (10) business days after the date of execution of this
Agreement.
BUNDLED PRODUCT:
OEM's software products currently known as 1) "Posta Server" ("Server Bundled
Product") which holds and forwards Posta-generated documents to Posta
Recipient Client, 2) "Posta Desktop Client," which encrypts and signs
documents being sent to Server Bundled Product, 3) "Posta Recipient Client,"
which decrypts documents and validates signatures. The Posta Desktop Client
and the Posta Recipient Client are referred to collectively as the "Client
Bundled Products."
FIELD OF USE:
Solely for privacy and authentication of communications between the Server
Bundled Product and the Client Bundled Products within a closed system,
JSAFE-Registered Trademark- v.1.0 shall perform decryption and authentication
functions only.
INITIAL MAINTENANCE AND SUPPORT:
[X] Yes [ ] No
1. DEFINITIONS
-----------
The following terms when used in this Agreement shall have the
following meanings:
1.1 "Bundled Product(s)" means one or more of the products or
product groups described above which has been or will be developed by OEM and
which incorporates in the OEM Product in any manner any portio of the RSA
Software. A Bundled Product must represent a significant functional and
value enhancement to the RSA Software such that the primary reason for an End
User Customer to license such Bundled Product is other than the right to
receive a license to the functionality of the RSA Software included in the
Bundled Product.
1.2 "Distributor" means a dealer or distributor in the business of
reselling Bundled Products to End User Customers, directly or through one or
more Distributors, by virtue of
2
authority of OEM. Bundled Products resold by a Distributor shall bear OEM's
trademarks and service marks and shall not be privately labeled by such
Distributor or other parties. A Distributor shall have no right to modify
any part of the Bundled Products. Notwithstanding the foregoing, OEM may
authorize a Distributor to co-brand or private label the Bundled Products for
redistribution to End User Customers by such Distributor; provided that OEM
indicates in it licensing reports delivered pursuant to Section 3.7 the
identity of any Distributor so authorized and the name of the co-branded or
private-labeled Bundled Products. It is understood and agreed that a
Distributor authorized to co-brand or private label a Bundled Product may not
otherwise modify the Bundled Product or incorporate it into another product
for redistribution.
1.3 "End User Customer" mans a person or entity licensing RSA
Software as part of a Bundled Product from OEM, OEM Sublicensee, Corporate
Sublicensee or a Distributor solely for personal or internet use and whose
primary purpose in licensing the Bundled Product is other than to license,
assign or otherwise transfer such Bundled Product to any other person or
entity.
1.4 "Field of Use" means a use, method of incorporation or product
purpose limitation with respect to the RSA Software for a Bundled Product
specified above for such Bundled Product.
1.5 "RSA Software" means RSA's proprietary software identified
above (and including only those algorithms listed therewith), as further
described in the User Manual(s) associated therewith.
1.6 "OEM Product" means any product developed by OEM into which the
RSA Software is to be incorporated to create a Bundled Product.
1.7 "Object Code" means the RSA Software in machine-readable,
compiled object code or in the case RSA Software includes JSAFE, in Java byte
code form.
1.8 "Source Code" means the mnemonic, high level statement versions
of the RSA Software written in the source language used by programmers.
1.9 "Territory" means worldwide, subject to Section 10.7.
1.10 "User Manual" means the most current version of the user manual
and/or reference manual customarily supplied by RSA to OEMs who license the
Object Code.
2. LICENSES.
--------
2.1 LICENSE GRANT. During the term of this Agreement and within
the Field of Use limitation (if any), RSA hereby grants OEM a non-exclusive,
non-transferable license to:
3
2.1.1 (i) incorporate the Object Code into an OEM Product to
create a Bundled Product; and (ii) reproduce, have reproduced, and license or
otherwise distribute the Object Code as incorporated in a Bundled Product in
the Territory.
2.1.2 sublicense its rights granted in Section 2.1.1 with
respect to the RSA Object Code as part of the Bundled Products to OEM's
licensees in the Territory (each, an "OEM Sublicensee") for the use only in
their own products in which substantial functionality or value is added to
the Bundled Products so that such products are not a substitute for the RSA
Software (collectively, "Sublicensee Products").
2.1.3 sublicense its rights granted in Section 1.1 to
distribute the RSA Object Code as part of the Client Bundled Products to
OEM's End User Customers of the Bundled Products in the Territory who are
either (i) Posta Service Providers (as defined below), or (ii) corporate End
User Customers operating a service for internal business purposes using the
Bundled Products (collectively, "Corporate Sublicensees") and who in each
case may make minor changes to the user interfaces in the Bundled Products
but no substantial changes in functionality (collectively, "Corporate
Sublicensee Products"), provided that only the client components of such
Corporate Sublicensee Products are licensed or otherwise distributed and only
for use in obtaining the Posta Service or supporting the Corporate
Sublicensee's's service for internal business purposes, and not as commercial
products.
2.1.4 (i) use the User Manual to support End User Customers;
(ii) modify and incorporate portions of the User Manual in Bundled Product
documentation; and (iii) reproduce, have reproduced and distribute in the
Territory such portions of the User Manual as incorporated in Bundled Product
documentation.
2.2 LIMITATIONS ON LICENSES. The licenses granted in Section 2.1
are further limited as follows:
2.2.1 LIMITATION ON DISTRIBUTEES. The RSA Software shall bel
licensed or otherwise distributed only to (i) Distributors, (ii) End User
Customers, (iii) OEM Sublicensees, and (iv) Corporate Sublicensees.
2.2.2 NO EXPOSURE OF RSA SOFTWARE. The RSA Software may only
be accessed by the functionality of the Bundled Product in which it is
included and a Bundled Product shall not make the RSA Object Code directly
accessible to End User Customers or to products other than the Bundled
Product or otherwise expose a cryptographic API.
2.2.3 NO STANDALONE PRODUCT. OEM may not in any way sell,
lease, rent, license, sublicense or otherwise distribute the RSA Software or
any part thereof or the right to use the RSA Software or any part thereof to
any person or entity except as part of a Bundled Product.
4
2.2.4 PROHIBITED ACTIVITIES; NO SOURCE CODE. OEM shall not
modify, translate, reverse engineer, decompile, or disassemble the RSA
Software or any part thereof or otherwise attempt to derive Source Code
therefrom, and shall not authorize any third party to do any of the
foregoing. Nothing in this Agreement grants OEM any rights, license or
interest with respect to Source Code.
2.2.5 RSA ROOT KEYS. OEM may include the RSA/VeriSign, Inc.
root keys (the "RSA Root Keys") in any Bundled Product in which a hierarchy
root key is utilized or incorporated, provided that any such incorporation
must make the RSA Root Keys functional within the Bundled Products and as
accessible as any other hierarchy root key within the Bundled Product.
2.2.6 CONDITION OF SUBLICENSE GRANT. All sublicenses
permitted under Sections 2.1.2 and 2.1.3 shall be subject to all of the
following conditions: (i) all such sublicenses will be granted in a signed
writing containing at a minimum substantially all of the restrictions set
forth in Exhibit "A" attached hereto, and RSA shall be an express third party
beneficiary of the such sublicense agreements; (ii) OEM shall use its best
efforts to enforce the provisions of such sublicense as they relate to RSA
and the RSA Software; (iii) the Sublicensee Products shall include
substantial added function and value on top of the Bundled Products; (iv) the
OEM Sublicensees and Corporate Sublicensees to whom such rights are
sublicensed pursuant to Sections 2.1.2 and 2.1.3 shall have no further right
to sublicense such rights; (v) any rights of any OEM Sublicenses or Corporate
Sublicensee sublicensed by OEM shall survive only so long as both this
Agreement and the sublicense between OEM and such OEM Sublicensee or
Corporate Sublicensee remain in effect; and (vi) OEM shall identify all OEM
Sublicensees and Corporate Sublicensees in its licensing reports delivered
pursuant to Section 3.7.
2.3 TITLE. Except for the limited licenses expressly granted in
Section 2.1 and as further limited by Section 2.2, RSA does not by this
Agreement grant to OEM any right, title or ownership interest in and to the
RSA Software or in any related patents, trademarks, copyrights or proprietary
or trade secret rights. RSA receives no right, title or ownership interest
in the OEM product by way of this Agreement.
3. LICENSE FEES; DELIVERY.
----------------------
3.1 LICENSE FEES. In consideration of RSA's grant to OEM of the
limited license rights hereunder, OEM shall pay to RSA license fees in the
amounts set forth below (the "License Fees"):
5
3.1.1 ANNUAL LICENSE FEE. OEM shall pay RSA an annual License
Fee during the term of this Agreement in the amount of
[ * ], for unlimited distribution of Client
Bundled Products and Server Bundled Product. Such amount shall be due and
payable for the first year upon execution of this Agreement, and for each
subsequent year on the anniversary of the Effective Date of this Agreement.
3.1.2 PERCENTAGE OF PRODUCT REVENUE LICENSE FEE. In addition
to the License Fees set forth above, OEM shall pay to RSA as License Fees an
amount equal to [ * ] of all Product Revenue.
3.1.3 PERCENTAGE OF SERVICE REVENUE LICENSE FEE. The parties
acknowledge and agree that OEM's licensees of the Bundled Products may use
the Bundled Products, Sublicensee Products or Corporation Sublicensee
Products to provide an electronic document distribution service to third
parties (the "Posta Service"). Under OEM's current business model, such
licensees ("Posta Service Providers') will pay OEM a percentage of the
transaction and/or subscription revenue from the Posta Service and may pay
OEM an initial license fee for the right to offer the Posta Service. Based
upon the foregoing, and in addition to the License Fees set forth above, OEM
shall pay to RSA as License Fees an amount equal to [ * ]
of all Service Revenue. "Service Revenue" means the gross amount of all
cash, in-kind or other consideration receivable by OEM from Posta Service
Providers at any time in connection with their providing the Posta Service,
whether as a percentage of transaction and/or subscription revenue, as an
initial license fee, or otherwise.
3.1.4 CHANGE IN BUSINESS MODEL. The License Fees set forth in
Section 3.1.3 are based upon OEM's business model described above. In the
event OEM changes its business model, OEM agrees to negotiate in good faith
for alternative License Fees that result in substantially the same payments
to RSA for substantially the same value to OEM as those provided for in
Section 3.1.3.
3.1.5 [ * ]
3.2 TAXES. All taxes, duties, fees and other governmental charges
of any kind (including sales and use taxes, but excluding taxes based on the
gross revenues or net income of RSA) which are imposed by or under the
authority of any government or any political subdivision thereof on the
License Fees or any aspect of this Agreement shall be borne by OEM and shall
not be considered a part of, a deduction from, or an offset against License
Fees.
---------------------
* Confidential treatment has been requested with respect to
certain information contained in this document. Confidential portions have
been ommited from the public filing and have been filed separately with the
Securities and Exchange Commission.
6
3.3 PREPAYMENT OF LICENSE FEES. OEM shall prepay License Fees in
the amount [ * ] upon execution of this
Agreement. In no event shall such prepayment be refundable. All of such
prepaid amounts may be offset against License Fees accrued under Section
3.1.2 at a rate of [ * ] of License Fees
accrued under Sections 3.1.2 and 3.1.3 until the prepayments are exhausted.
OEM shall show the application of prepaid License Fees in the licensing
reports provided to RSA pursuant to Section 3.7.
3.4 USE OF PRODUCT REVENUE. "Product Revenue" means the gross
amount of all cash, in-kind or other consideration receivable by OEM at any
time in consideration of the licensing or other distribution of the Bundled
Products, whether as a sale, license, use, transaction, or service fee based
on or involving the Bundled Product, but excluding any amounts receivable by
OEM for standard maintenance and support fees which are not intended to avoid
any payment of royalties under this Agreement, sales and use taxes, shipping,
insurance and duties, and reduced by all discounts or refunds granted in the
ordinary course of business, and excluding Service Revenue. For the purposes
of determining Product Revenue, the amount of in-kind or other non-cash
consideration receivable by OEM shall be deemed to have a dollar value equal
to the standard price (as listed in OEM's published price schedule on the
date of the grant of the license or the sale in question) for such Bundled
Product, less all cash paid. For purposes of this Section 3.4 and Section
3.1.3, in-kind or non-cash consideration does not include the standard
marketing consideration that OEM requires in its standard license agreement
for the Bundled Products under OEM's standard pricing.
3.5 TERMS OF PAYMENT. License Fees payable under Section 3.1.2
shall accrue with respect to Bundled Products licensed or otherwise
distributed by OEM, OEM Sublicensees, Corporate Sublicensees or Distributors,
as applicable, upon the date of invoice of the Bundled Product, Sublicensee
Product or Corporate Sublicensee Product, as applicable, to an End User
Customer or Distributor. License Fees payable under Section 3.1.3 shall
accrue upon the date the applicable Service Revenue is due and payable from
Posta Service Providers to OEM. Such License Fees shall be paid by OEM to
the attention of the Software Licensing Department at RSA's address set forth
above on or before the thirtieth (30th) day after the close of the calendar
quarter during which the License Fees accrued. A late payment penalty on any
License Fees not paid when due shall be assessed at the rate of one percent
(1%) per thirty (30) days, beginning on the day after the delayed License
Fees were due.
3.6 U.S. CURRENCY. All payments hereunder shall be made in lawful
United States currency and shall in no case be refundable. If OEM receives
payment in foreign currencies, the amount of its License Fees to RSA shall be
calculated using the closing exchange rate published
---------------------
* Confidential treatment has been requested with respect to
certain information contained in this document. Confidential portions have
been ommited from the public filing and have been filed separately with the
Securities and Exchange Commission.
7
in THE WALL STREET JOURNAL, Western Edition, on the last business day such
journal is published in the calendar quarter immediately preceding the date
of payment.
3.7 LICENSING REPORT. A report in reasonably detailed form setting
forth the calculation of License Fees due from OEM and signed by a reasonable
officer of OEM shall be delivered to RSA on or before the thirtieth (30th)
day after the close of each calendar quarter during the term of this
Agreement, regardless of whether License Fee payments are required to be made
pursuant to Section 3.5. The report shall include, at a minimum, the
following information with respect to the relevant quarter: (I) the total
Product Revenue invoiced to OEM Sublicensees, Corporate Sublicensees,
Distributors and End User Customers; (iii) the total Service Revenue due and
payable from Posta Service Providers' and (iii) total License Fees accrued.
3.8 AUDIT RIGHTS. RSA shall have the right, at its sole cost and
expense, to have an independent certified public accountant conduct during
normal business hours and not more frequently than annually, an audit of the
appropriate records of OEM to verify the amount of Product Revenue and
Service Revenue and OEM's calculation of License Fees. If the License Fees
accrued are different than those reported, OEM will be invoiced or credited
for the difference, as applicable. Any additional License Fees, along with
the late payment penalty assessed in accordance with Section 3.5, shall be
payable within thirty (30) days of such invoice. If the deficiency in
License Fees paid by OEM is greater than ten percent (10%) of the License
Fees reported by OEM for any quarter, OEM will pay the reasonable expenses
associated with such audit, in addition to the deficiency.
3.9 EVALUATION COPIES. [INTENTIONALLY OMITTED.]
-----------------
4. LIMITED WARRANTY.
----------------
4.1 LIMITED WARRANTY. During the initial ninety (90)-day term of
this Agreement, RSA warrants that the RSA Software will operate in material
conformance to RSA's published specifications for the RSA Software. RSA does
not warrant that the RSA Software or any portion thereof is error-free.
OEM's exclusive remedy, and RSA's entire liability in tort, contract or
otherwise, shall be correction of any warranted nonconformity as provided in
Section 4.2. This limited warranty and any obligations of RSA hereunder shall
not apply to any nonconformities caused by, and shall terminate immediately
if OEM makes, any unauthorized modification to the RSA Software.
4.2 ERROR CORRECTION. In the event OEM discovers an error in the
RSA Software which causes the RSA Software not to operate in material
conformance to RSA's published specifications therefor, OEM shall submit to
RSA a written report describing such error in sufficient detail to permit RSA
to reproduce such error. Upon receipt of any such written report, RSA will
use its reasonable business judgment to classify a reported error as either:
(i) a "Level 1 Severity" error, meanding an error that causes the RSA
Software to fail to operate in a material
8
manner or to produce materially incorrect results and for which there is no
workaround or only a difficult woraround; or (ii) a "Level 2 Severity" error,
meaning an error that produces a situation in which the RSA Software is
usable but does not function in the most convenient or expeditious manner,
and the use or value of the RSA Software suffers no material impact. RSA will
acknowledge receipt of a conforming error report within two (2) business days
and (A) will use its continuing best efforts to provide a correction for any
Level 1 Severity error to OEM as early as practicable; and (B) will use its
reasonable efforts to include a correction for any Level 2 Severity error in
the next release of the RSA Software.
4.3 DISCLAIMER. EXCEPT FOR THE EXPRESS LIMITED WARRANTY PROVIDED
IN THIS SECTION 4, THE RSA SOFTWARE IS PROVIDED "AS IS" WITHOUT ANY WARRANTY
WHATSOEVER. RSA DISCLAIMS ALL WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS
TO ANY MATTER WHATSOEVER, INCLUDING ALL IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT OF
THIRD PARTY RIGHTS. RSA DISCLAIMS ANY WARRANTY OR REPRESENTATION TO ANY
PERSON OTHER THAN OEM WITH RESPECT TO THE RSA SOFTWARE. OEM SHALL NOT, AND
SHALL TAKE ALL MEASURES NECESSARY TO INSURE THAT ITS AGENTS AND EMPLOYEES DO
NOT, MAKE OR PASS THROUGH ANY SUCH WARRANTY ON BEHALF OF RSA TO ANY
DISTRIBUTOR, END USER CUSTOMER OR OTHER THIRD PARTY.
5. ADDITIONAL OBLIGATIONS OF OEM.
-----------------------------
5.1 USE OF RSA "LICENSE SEAL". OEM agrees to insert and maintain
within Bundled Products and marketing materials therefor the RSA "Licensee
Seal" from the "Logo Usage Guide," which shall be delivered to OEM within ten
(10) days of execution of this Agreement and is Incorporated herein by
reference, as follows:
5.1.1 IN BUNDLED PRODUCTS. OEM shall ensure display of the
Licensee Seal within any Bundled Product such that users thereof are exposed
to the Licensee Seal during normal operation of such Bundled Product. In a
software Bundled Product, the Licensee Seal shall be featured in such Bundled
Product's startup splash screen (if any) and within security-related dialog
windows visible in the normal operation of the product (i.e., password dialog
window). In a hardware Bundled Product, the Licensee Seal shall be visible
on the panel of such Bundled Product most normally viewed by the user.
5.1.2 IN MARKETING MATERIALS. OEM agrees to provide the
Licensee Seal within related marketing materials that reference any security
features of the Bundled Products, including but not limited to printed and
electronic data sheets, direct mail, user documentation, product packaging
and advertisements for the Bundled Product.
9
5.2 BUNDLED PRODUCT MARKETING. OEM is authorized to represent to
Distributors and End User Customers only such facts about the RSA Software as
RSA states in its published product descriptions, advertising and promotional
materials or as may be stated in other non-confidential written material
furnished by RSA.
5.3 CUSTOMER SUPPORT. OEM shall, at its expense, provide all
support for the Bundled Products to Distributors and End User Customers.
5.4 LICENSE AGREEMENTS. OEM shall cause to be delivered to each
Distributor and End User Customer a license agreement which shall contain, at
a minimum, substantially all of the limitations of rights and the protections
for RSA which are contained in Sections 2.2, 5.5, 7, 10.7 and 10.8 of this
Agreement. OEM shall use commercially reasonable efforts to enforce the
terms of such agreements.
5.5 PROPRIETARY RIGHTS.
------------------
5.5.1 RSA COPYRIGHT NOTICES. OEM agrees not to remove or
destroy and proprietary, trademark or copyright markings or notices placed
upon or contained within the RSA Software, User Manuals or any related
materials or documentation. OEM further agrees to insert and maintain within
every Bundled Product and any related materials or documentation a copyright
notice in the name of OEM.
5.5.2 TRADEMARKS. By reason of this Agreement or the
performance hereof, OEM shall acquire no rights of any kind in any RSA
trademark, trade name, logo or product designation under which the RSA
Software was or is marketed and OEM shall not make any use of the same for
any reason except as expressly authorized by this Agreement or otherwise
authorized in writing by RSA. OEM shall cease to use the markings, or any
similar markings, in any manner on the expiration or other termination of
this Agreement.
6. CONFIDENTIALITY. Each party acknowledges that in its performance of
its duties hereunder, the other party may communicate to it (or its
designees) certain confidential and proprietary information of such party,
provided that such Confidential Information is clearly identified in writing
at the time of disclosure (the "Confidential Information"), all of which is
confidential and proprietary to, and a trade secret of the disclosing party.
The receiving party agrees to hold the Confidential Information disclosed to
it within its own organization and shall not, without the specific written
consent of the disclosing party or as expressly authorized herein, utilize in
any manner, publish, communicate, or disclose any part of the disclosing
party's Confidential Information or the RSA Software (in the case of OEM) to
third parties. This Section 6 shall impose no obligations on either party
with respect to any Confidential Information which: (i) is in the public
domain at the time disclosed by the disclosing party; (ii) enters the public
domain after disclosure other than by a breach of the receiving party's
obligations hereunder or by a breach of another party's confidentiality
obligation; (iii) is shown by documentary evidence to have been known by the
receiving party prior to its receipt from the
10
disclosing party or developed independently without reference to Confidential
Information; or (iv) is required to be disclosed by law. Each party will
take such steps as are consistent with its protection of its own confidential
and proprietary information (but will in no event exercise less then
reasonable care) to insure that provisions of this Section 6 are not violated
by its employees, agents or any other person. The terms of this Agreement
are deemed Confidential Information and may not be disclosed without the
prior written consent of the other party, except (i) either party may
disclose such terms to the extent required by law; (ii) either party may
disclose the existence of this Agreement; (iii) either party may disclose
such terms to the extent necessary in connection with the due diligence
review of such party by potential business partners, investors or acquirors,
to such persons and to their employees, agents, attorneys and auditors, if
such persons are bound by written confidentiality agreements covering
third-party information; and (iv) both parties shall have the right to
disclose that OEM is an OEM of the RSA Software and that any
publicity-announced Bundled Product incorporates the RSA Software.
7. LIMITATION OF LIABILITY. IN NO EVENT WILL EITHER PARTY BE LIABLE TO
THE OTHER PARTY FOR INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL OR EXEMPLARY
DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT, INCLUDING BUT NOT
LIMITED TO LOST PROFITS, BUSINESS INTERRUPTION, OR LOSS OF BUSINESS
INFORMATION, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES, REGARDLESS OF THE CAUSE OF ACTION OR THE FORM OF ACTION, RSA'S
AGGREGATE LIABILITY TO OEM FOR ACTUAL DAMAGES ARISING OUT OF OR RELATED TO
THIS AGREEMENT SHALL BE LIMITED TO THE TOTAL AMOUNT PAID BY OEM HEREUNDER,
EXCEPT FOR RSA'S LIABILITY ARISING UNDER SECTIONS 6 AND 8. DURING THE TERM
OF THIS AGREEMENT OEM'S AGGREGATE LIABILITY TO RSA FOR ACTUAL DAMAGES ARISING
OUT OF OR RELATED TO THIS AGREEMENT SHALL BE LIMITED TO THE TOTAL AMOUNT
PAYABLE BY OEM TO RSA HEREUNDER, EXCEPT FOR OEM'S LIABILITY RESULTING FROM
BREACH OF SECTIONS 2 AND 6.
8. INTELLECTUAL PROPERTY INDEMNITY.
-------------------------------
8.1 DUTY TO DEFEND. RSA agrees that it shall, at its own expense,
defend, or at its option settle, any action instituted against OEM, and pay
any award or damages assessed against OEM or agreed to be paid by OEM in
settlement resulting from such action, insofar as the same is based upon a
claim that any RSA Software used in accordance with the terms of this
Agreement infringes any United States patent, copyright or trade secret or a
claim that RSA has no right to license the RSA Software hereunder, provided
that OEM gives RSA; (i) prompt notice in writing of such action, (ii) the
right to control and direct the investigation, preparation, defense and
settlement of the action; and (iii) reasonable assistance and information.
8.2 RSA OPTIONS. If, as a result of any binding settlement among
the parties or a final determination by a court of competent jurisdiction,
any of the RSA Software is held to infringe and its use is enjoined, or if
RSA reasonable determines in its sole discretion that the
11
RSA Software may become subject to an inunction, RSA shall have the option to
obtain the right to continue use of the RSA Software or replace or modify the
RSA Software so that it is no longer infringing. In the event that neither
of the foregoing options is reasonably available, then RSA may refund the
License Fees paid by OEM hereunder less depreciation for use assuming
straight line depreciation over a five (5)-year useful life and terminate the
Agreement.
8.3 EXCLUSIONS. Notwithstanding the foregoing, RSA shall have no
liability under this Section 8 if the alleged infringement arises from (i)
the use of other than current unaltered release of the RSA Software provided
by RSA or other than in the manner specified in the relevant User Manual, or
(ii) combination of the RSA Software with other equipment or software not
provided by RSA, if such action would have been avoided but for such use or
combination.
8.4 EXCLUSIVE REMEDY. NOTWITHSTANDING ANYTHING TO THE CONTRARY IN
THIS AGREEMENT, THE FOREGOING STATES RSA'S ENTIRE LIABILITY AND OEM'S
EXCLUSIVE REMEDY FOR PROPRIETARY RIGHTS INFRINGEMENT.
9. TERM AND TERMINATION.
--------------------
9.1 TERM. This Agreement shall be effective as of the date hereof
and shall continue in full force and effect unless and until sooner
terminated pursuant to the terms of this Agreement.
9.2 TERMINATION FOR DEFAULT. Either party shall be entitled to
terminate this Agreement at any time on written notice to the other in the
event of a material default (i.e., breach of a provision designated as
"material" herein) by the other party and a failure to cure such default
within a period of thirty (30) days following receipt of written notice
specifying that a default has occurred. For purposes of this section,
"material" provisions include Sections 1, 2, 3, 5.2, 5.4, 5.5, 6, 8, 10.2,
10.7 and 10.8.
9.3 INSOLVENCY. Upon (i) the institution of any proceedings by or
against either party seeking relief, reorganization or arrangement under any
laws relating to insolvency, which proceedings are not dismissed within sixty
(60) days; (ii) the assignment for the benefit of creditors, or the
appointment of a receiver, liquidator or trustee, of any of either party's
property or assets; or (iii) the liquidation, dissolution or winding up of
either party's business; then and in any such events this Agreement may
immediately be terminated by the other party upon written notice.
9.4 TERMINATION FOR CONVENIENCE. The parties acknowledge and agree
that OEM may at any time delay, interrupt or cease use of the RSA Software,
but this Agreement shall continue in full force, including any obligations to
make quarterly reports. OEM may elect to terminate this Agreement upon ninety
(90) days written notice and it is expressly understood that such termination
shall not discharge payment obligations accrued as of the date of such
12
termination, even if such obligation is payable after the termination date,
or entitle OEM to a refund of any amounts previously paid to RSA.
9.5 EFFECT OF TERMINATION. Upon the termination of this Agreement,
OEM shall cease making copies of, using or licensing the RSA Software, User
Manual and Bundled Products, excepting only such copies of Bundled Products
necessary to fill orders placed with OEM prior to such expiration or
termination. OEM shall destroy all copies of the RSA Software, User Manual
and Bundled Products not subject to any then-effective license agreement with
an End User Customer and all information and documentation provided by RSA to
OEM, other than such copies of the RSA Object Code, the User Manual and the
Bundled Products as are necessary to enable OEM to perform its continuing
support obligations in accordance with Section 5.3, if any.
9.6 SURVIVAL OF CERTAIN TERMS. The following provision shall
survive any expiration or termination: Sections 2.2, 2.3, 3.8, 4.3, 6, 7, 9
and 10.
10. MISCELLANEOUS PROVISIONS.
------------------------
10.1 GOVERNING LAW AND JURISDICTION. This Agreement will be
governed by and construed in accordance with the laws of the State of
California, irrespective of its choice of law principles. All disputes
arising out of this Agreement shall exclusively be brought in the California
state courts or the United States District Court for the Northern District of
California. The parties agree that the United Nations Convention on
Contracts for the international Sale of Goods shall not apply to this
Agreement.
10.2 BINDING UPON SUCCESSORS AND ASSIGNS. Except as otherwise
provided herein, this Agreement shall be binding upon, and inure to the
benefit of, the successors, representatives, administrators and assigns of
the parties hereto. Notwithstanding the generality of the foregoing, this
Agreement shall not be assignable by OEM, by operation of law or otherwise,
without the prior written consent of RSA, which shall not be unreasonably
withheld. If RSA fails to respond to a written request for consent to assign
OEM's rights with identifies the proposed assignee and which is given in
accordance with Section 10.6 and directed to RSA's Legal Department within
fourteen (14) days after is receipt, RSA shall be deemed to have consented to
such request. Any such purported assignment or delegation without RSA's
written consent shall be void and of no effect. RSA may withhold its consent
to the assignment of this Agreement, at its sole discretion, if the Agreement
provides for paid-up License Fees. RSA acknowledges that this unamended
Agreement as of the Effective Date does not provide for paid-up License Fees.
10.3 SEVERABILITY. If any provision of this Agreement is found to
be invalid or unenforceable, such provision shall be severed from the
Agreement and the remainder of this Agreement shall be interpreted so as best
to reasonably effect the intent of the parties hereto.
13
10.4 ENTIRE AGREEMENT. This Agreement any exhibits or attachments
hereto constitute the entire understanding and agreement of the parties
hereto with respect to the subject matter hereof and supersede all prior and
contemporaneous agreements, representations and understandings between the
parties regarding the subject matter hereof.
10.5 AMENDMENT AND WAIVERS. Any term or provision of this Agreement
may be amended, and the observance of any term of this Agreement may be
waived, only by a writing signed by the party to the bound.
10.6 NOTICES. Any notice, demand, or request with respect to this
Agreement shall be in writing and shall be effective only if it is delivered
by hand or mailed, certified or registered mail, postage prepaid, return
receipt requested, addressed to the appropriate party at its address set
forth on page 1. Notice to RSA shall be addressed to "RSA Legal Department."
Such communication shall be effective when they are received by the
addressee; but if sent by certified or registered mail in the manner set
forth above, they shall be effective not later than ten (10) days after being
deposited in the mail. Any party may change its address for such
communications by giving notice to the other party in conformity with this
Section.
10.7 EXPORT COMPLIANCE AND FOREIGN RESHIPMENT LIABILITY. THIS
AGREEMENT IS EXPRESSLY MADE SUBJECT TO ANY LAWS, REGULATIONS, ORDERS OR OTHER
RESTRICTIONS ON THE EXPORT FROM THE UNITED STATES OF AMERICA OF THE RSA
SOFTWARE OR BUNDLED PRODUCTS OR OF INFORMATION ABOUT THE RSA SOFTWARE OR
BUNDLED PRODUCTS WHICH MAY BE IMPOSED FROM TIME TO TIME BY THE GOVERNMENT OF
THE UNITED STATES OF AMERICA. NOTWITHSTANDING ANYTHING CONTAINED IN THIS
AGREEMENT TO THE CONTRARY, OEM SHALL NOT EXPORT OR REEXPORT, DIRECTLY OR
INDIRECTLY, ANY RSA SOFTWARE OR BUNDLED PRODUCTS OR INFORMATION PERTAINING
THERETO ANY COUNTRY TO WHICH SUCH EXPORT OR REEXPORT IS RESTRICTED OR
PROHIBITED, OR AS TO WHICH SUCH GOVERNMENT OR ANY AGENCY THEREOF REQUIRES AN
EXPORT LICENSE OR OTHER GOVERNMENTAL APPROVAL AT THE TIME OF EXPORT OR
REEXPORT WITHOUT FIRST OBTAINING SUCH LICENSE OR APPROVAL.
10.8 FEDERAL GOVERNMENT LICENSE. OEM and each of OEM's Distributors
shall in all proposals and agreements with the United States government or
any contractor of the United States government identify and license the
Bundled Product, including the RSA Software incorporated therein, as follows:
(i) for acquisition by or on behalf of civilian agencies, as necessary to
obtain protection as "commercial computer software" and related documentation
in accordance with the terms of OEM's or such Distributor's customary
license, as specified in 48 C.F.R. 12.212 of the Federal Acquisition
Regulations and its successor regulations; or (ii) for acquisition by or on
behalf of units of the Department of Defense, as necessary to obtain
protection as "commercial computer software" as defined in 48 C.F.R.
252.227-7014(a)(1) of the Department of Defense Federal Acquisition
Regulation Supplement (DFARS) and related
14
documentation in accordance with the terms of OEM's or such Distributor's
customary license, as specified in 48 C.F.R. 227.7202-1 of DFARS and its
successor regulations.
10.9 REMEDIES NON-EXCLUSIVE. Except as otherwise expressly
provided, any remedy provided for in this Agreement is deemed cumulative
with, and not exclusive of, any other remedy provided for in this Agreement
or otherwise available at law or in equity. The exercise by a party of any
remedy shall not preclude the exercise by such party of any other remedy.
10.10 ATTORNEYS' FEES. Should suit be brought to enforce or
interpret any part of this Agreement, the prevailing party shall be entitled
to recover, as an element of the costs of suit and not as damages, reasonable
attorneys' fees to be fixed by the court (including without limitation,
costs, expenses and fees on any appeal).
IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date of the last signature below.
OEM:
TUMBLEWEED SOFTWARE, INC.
By: /s/ Joseph C. Consul
-----------------------------------
Printed Name: Joseph C. Consul
-------------------------
Title: VP Finance, CFO
--------------------------------
Date: 3/29/98
---------------------------------
RSA DATA SECURITY, INC.
By: /s/ Albert Sisto
-----------------------------------
Printed Name: Albert Sisto
-------------------------
Title: Chief Operating Officer
--------------------------------
Date: March 30, 1998
---------------------------------
15
EXHIBIT "A"
MANDATORY SUBLICENSE TERMS
All sublicense agreements for the license of the RSA Object Code in
the Bundled Products by OEM to OEM Sublicensees and Corporate Sublicensees
will substantially include all of the following restrictions:
I. The OEM Sublicensee or Corporate Sublicensee will receive no
greater rights with respect to the Bundled Products than those permitted in
Sections 2.1.1 of the Agreement as limited by Section 2.2 of the Agreement.
II. The OEM Sublicensee or Corporate Sublicensee will agree not to
remove or destroy any proprietary, trademark or copyright markings or
confidentiality legends placed upon or contained within the Bundled Products
or any related materials or documentation.
III. If applicable, the OEM Sublicensee or Corporate Sublicensee
will agree that any sublicensee of the Bundled Products to the United States
Government or any agency thereof will state that such software and related
documentation are "commercial computer software" as that term is defined for
purposes of the Federal Acquisition Regulations (FARs) or the Department of
Defense Federal Acquisition Regulations Supplement (DFARS), as applicable,
then in effect.
IV. The OEM Sublicensee or Corporate Sublicensee will agree not to
export or reexport any Bundled Products or any part thereof or information
pertaining thereto to any country for which a U.S. government agency requires
an export license or other governmental approval without first obtaining such
license or approval.
V. The OEM Sublicensee or Corporate Sublicensee will agree that,
except for the limited licenses granted under the license agreement, OEM and
its licensors will retain full and exclusive right, title and ownership
interest in and to the Bundled Products and in any and all related patents,
trademarks, copyrights or proprietary or trade secret rights.
VI. OEM will have the right to terminate the license for the OEM
Sublicensee's or Corporate Sublicensee's breach of a material term. The OEM
Sublicensee or Corporate Sublicensee will agree that, upon termination of the
license, the OEM Sublicensee or Corporate Sublicensee will return to OEM all
copies of the object code and documentation for the Bundled Products or
certify to OEM that the OEM Sublicensee or Corporate Sublicensee has
destroyed all such copies, except that the OEM Sublicensee or Corporate
Sublicensee may retain one (1) copy of the object code for the Bundled
Products solely for the purpose of supporting the OEM Sublicensee's or
Corporale Sublicensee's existing licensees.
16
VII. The OEM Sublicensee or Corporate Sublicensee will agree, to the
extent permitted by applicable law, not to reverse compile, disassemble or
modify the Bundled Products.
VIII. The OEM Sublicensee or Corporate Sublicensee will agree not to
distribute the Bundled Products or any part thereof except pursuant to a
license agreement meeting the requirements in Section 5.4 of the Agreement.
IX. The sublicense agreement will state that in no event will OEM
or its licensors be liable for indirect, incidental, special, consequential
or exemplary damages arising out of or related to the Bundled Products,
including but not limited to lost profits, business interruption or loss of
business information, even if such party has been advised of the possibility
of such damages.
17
RSA DATA SECURITY, INC.
100 Marine Parkway, Suite 500
Redwood City, CA 94065
MAINTENANCE AND SUPPORT AGREEMENT
THIS MAINTENANCE AND SUPPORT AGREEMENT ("Support Agreement"),
effective as of the later date of execution ("Effective Date"), is entered
into by and between RSA Data Security, Inc., a Delaware corporation ("RSA"),
having a principal address at 100 Marine Parkway, Suite 500, Redwood City,
California 94065, and the entity named below ("OEM"), having a principal
address as set forth below:
OEM:
Tumbleweed Software, a California corporation
-----------------------------------------------------------------------
(Name and jurisdiction of incorporation)
2010 Broadway, Redwood City, CA 94063
-----------------------------------------------------------------------
(Address)
Notices to Contact: Bill Bradford,
---------------------------------------------------
Vice President Strategic Relationships
---------------------------------------------------
(650) 569-3687
---------------------------------------------------
(Name, Title and Telephone)
Initial Annual Maintenance Fee: [ * ]
10. DEFINITIONS. All capitalized terms used and not defined herein shall
have the meanings set forth in the OEM Agreement or the following meanings:
10.1 "News Release" means a version of the RSA Software which shall
generally be designated by a new version number which has changed from the
prior number only to the right of the decimal point (E.G., Version 2.2 to
Version 2.3).
---------------------
* Confidential treatment has been requested with respect to
certain information contained in this document. Confidential portions have
been ommited from the public filing and have been filed separately with the
Securities and Exchange Commission.
18
10.2 "New Version" means a version of the RSA Software which shall
generally be designated by a new version number which has changed from the
prior number to the left of the decimal point (E.G., Version 2.3 to Version
3.0).
10.3 "OEM Agreement" means that certain OEM Object Code License
Agreement between RSA and OEM dated March 30).
10.4 "RSA Software" means proprietary software identified as RSA
Software on page 1 of the OEM Agreement.
11. MAINTENANCE AND SUPPORT SERVICES.
--------------------------------
11.1 GENERAL. This Support Agreement sets forth the terms under
which RSA will provide maintenance and support to OEM for the RSA Software
licensed to OEM for the Bundled Product, as set forth under the unamended OEM
Agreement. The use of and license to any software provided to OEM hereunder
shall be governed by the terms of the OEM Agreement.
11.2 SUPPORT AND MAINTENANCE. RSA agrees to provide the maintenance
and support specified in this Support Agreement and OEM agrees to pay RSA's
then-current annual support and maintenance fee ("Maintenance Fee").
11.3 MAINTENANCE PROVIDED BY RSA. For the annual period commencing
on the Effective Date hereof, and for future annual periods for which OEM has
paid the Maintenance Fee, RSA will provide OEM with the following services:
11.3.1 TELEPHONE SUPPORT. RSA will provide telephone support
to OEM during RSA's normal business hours. RSA may provide on-site support
reasonably determined to be necessary by RSA at OEM's location specified on
page 1 hereof. RSA shall provide the support specified in this Section 2.3.1
to OEM's employees responsible for developing and maintaining the Bundled
Products licensed under the OEM Agreement and providing support to End User
Customers. No more than two (2) OEM employees may obtain such support from
RSA at any one time. On RSA's request, OEM will provide a list with the
names of the employees designated to receive support from RSA. OEM may
change the names on the list at any time by providing written notice to RSA.
11.3.2 ERROR CORRECTION. In the event OEM discovers an error
in the RSA Software which causes the RSA Software not to operate in material
conformance to RSA's published specifications therefor, OEM shall submit to
RSA a written report describing such error in sufficient detail to permit RSA
to reproduce such error. Upon receipt of any such written report, RSA will
use its reasonable business judgment to classify a reported error as either:
(i) a "Level 1 Severity" error, meaning an error that causes the RSA Software
to fail to operate in a material manner or to produce materially incorrect
results and or which there is no workaround
19
or only a difficult workaround; or (ii) a "Level 2 Severity" error, meaning
an error that produces a situation in which the RSA Software is usable but
does not function in the most convenient or expeditious manner, and the use
or value of the RSA Software suffers no material impact. RSA will acknowledge
receipt of a confirming error report within two (2) business days and (A)
will use its continuing best efforts to provide a correction of any Level 1
Severity error to OEM as early as practicable; and (B) will use its
reasonable efforts to include a correction for any Level 2 Severity error in
the next release of the RSA Software.
11.3.3 NEW RELEASES AND NEW VERSIONS. RSA will provide OEM
information relating to New Releases and New Versions of the RSA Software
during the term of this Support Agreement. New Releases and New Versions
will be provided by RSA at no additional charge. Nevertheless, license rights
to any New Versions provided hereunder shall not extend to any new algorithms
contained in such New Versions which algorithms are not listed as licensed
under the terms of the OEM Agreement. License rights to such new algorithms
shall be available at RSA's standard upgrade charges in effect at the time.
Any New Releases or New Versions acquired by OEM shall be governed by all of
the terms and provisions of the OEM Agreement.
11.4 LEGEND MAINTENANCE. If this Support Agreement has lapsed, OEM
may obtain a license of New Releases or New Versions of the applicable RSA
Software (consistent with Section 2.3.3 above) or any service which is
provided as a part of maintenance and support by becoming current on
Maintenance Fees as provided in Section 3.1 to te date such New Release or
New Version is licensed or such service is provided.
12. MAINTENANCE AND SUPPORT FEES.
----------------------------
12.1 MAINTENANCE AND SUPPORT FEES. In consideration of RSA's
providing the maintenance and support services described herein, OEM agrees
to pay RSA the initial Maintenance Fee set forth on the first page hereof.
Such amount shall be payable for the first year upon the execution of this
Support Agreement, and for each subsequent year in advance of the
commencement of such year. The Maintenance Fee may be modified by RSA for
each renewal term by written notice to OEM at least ninety (90) days prior to
the end of the then-current term. If OEM elects not to renew this Support
Agreement for successive terms (as provided in Section 6.1 below) OEM may
re-enroll only upon payment of the annual Maintenance Fee for the coming year
and for all Maintenance Fees that would have been paid had OEM not ceased
maintenance and support.
12.2 ADDITIONAL CHARGES. In the event RSA is required to take
actions to correct a difficulty or defect which is traced to OEM errors,
modifications, enhancements, software or hardware, then OEM shall pay to RSA
its time and materials charges at RSA's rates then in effect, in the event
RSA's personnel must travel to perform maintenance or on-site support, OEM
shall reimburse RSA for any reasonable out-of-pocket expenses incurred,
including travel to and from OEM's sites, lodging, meals and shipping, as may
be necessary in connection with duties performed under this Section 3.2 by
RSA.
20
12.3 TAXES. All taxes, duties, fees and other governmental charges
of any kind (including sales and use taxes, but excluding taxes based on the
gross revenues or net income of RSA) which are imposed by or under the
authority of any government or any political subdivision thereof on the
Maintenance Fees or any aspect of this Support Agreement shall be borne by
OEM and shall not be considered a part of, a deduction from or an offset
against Maintenance Fees.
12.4 TERMS OF PAYMENT. Maintenance Fees due RSA hereunder shall be
paid by OEM to the attention of the Software Licensing Department at RSA's
address set forth above upon execution and, in the case of renewal terms,
prior to each anniversary thereof. A late payment penalty on any Maintenance
Fees not paid when due shall be assessed at the rate of one percent (1%) per
thirty (30) days. In no event shall Maintenance Fees paid be refundable.
12.5 U.S. CURRENCY. All payments hereunder shall be made in lawful
United States currency.
13. CONFIDENTIALITY. The parties agree that all obligations and
conditions respecting confidentiality, use of the Source Code (if licensed to
OEM) and publicity in Section 6 of the OEM Agreement shall apply to the
parties' performance of this Support Agreement.
14. USE LIMITATIONS; TITLE; INTELLECTUAL PROPERTY INDEMNITY; LIMITATION OF
LIABILITY. Any and all RSA Software provided to OEM pursuant to this Support
Agreement shall constitute RSA Software under the OEM Agreement. As such,
the parties' respective interests and obligations relating to the RSA
Software, including but not limited to license and ownership rights thereto,
use limitations (if any), intellectual property indemnity and limitation of
liability, shall be governed by the terms of the OEM Agreement.
15. TERM AND TERMINATION
--------------------
15.1 TERM. This Support Agreement shall commence on the Effective
Date hereof and shall remain in full force and effect for an initial period
of one (1) year, unless sooner terminated in accordance with this Support
Agreement. Upon expiration of the initial period and each successive period,
this Support Agreement shall automatically renew for an additional (1) year
period, unless either party has notified the other of its intent to terminate
as set forth in Section 6.2.3 herein.
15.2 TERMINATION.
-----------
15.2.1 Either party shall be entitled to terminate this Support
Agreement at any time on written notice to the other in the event of a
material default by the other party of this Support Agreement and a failure
to cure such default within a period of thirty (30) days following receipt of
written notice specifying that a default has occurred.
21
15.2.2 This Support Agreement shall automatically terminate in
the event that the OEM Agreement is terminated in accordance with its terms.
15.2.3 This Support Agreement may also be terminated by OEM for
any or no reason by providing written notice of such intent at least (90)
days prior to the end of the then-current term. RSA may cease to offer
support and maintenance for future maintenance terms by notice delivered to
OEM ninety (90) days or more before the end of the then-current maintenance
term.
15.2.4 Upon (i) the institution of any proceeding by or against
either party seeking relief, reorganization or arrangement under any laws
relating to insolvency, which proceedings are not dismissed within sixty (60)
days; (ii) the assignment for the benefit of creditors, or upon the
appointment of a receiver, liquidator or trustee, of any of either party's
property or assets; or (iii) the liquidation, dissolution or winding up of
either party's business, then and in any such events this Support Agreement
may immediately be terminated by the other party upon written notice.
15.3 SURVIVAL OF CERTAIN TERMS. The following provisions shall
survive any expiration or termination: Sections 2.4, 5, 6 and 7.
16. MISCELLANEOUS PROVISIONS. This Support Agreement is not an amendment
to the OEM Agreement, but instead is a separate binding agreement which
incorporates certain terms of the OEM Agreement for the purposes of brevity
and assured consistency. This Agreement incorporates by this reference
Section 10 of the OEM Agreement in its entirety.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date of the later signature below.
OEM:
TUMBLEWOOD SOFTWARE, INC.
BY:
-----------------------------------
PRINTED NAME:
-------------------------
TITLE:
--------------------------------
DATE:
---------------------------------
22
RSA DATA SECURITY, INC.
BY: /s/ Albert Sisto
-----------------------------------
PRINTED NAME: Albert Sisto
-------------------------
TITLE: Chief Operating Officer
--------------------------------
DATE: March 30, 1998
---------------------------------
23
EXHIBIT "A"
TO
MAINTENANCE AND SUPPORT AGREEMENT
Licensee: Tumbleweed Software, Inc.
----------------------------------------------------------------------
Maintenance and Support Agreement Date: March 30, 1998
---------------------------------------
THE MAINTENANCE AND SUPPORT AGREEMENT between RSA Data Security, Inc.
and the Licensee set forth above dated as of the date set forth above
("Agreement") is amended as set forth below.
1. DEFINITIONS. Capitalized terms used and not otherwise defined
in this Exhibit "A" shall have the meanings designated for such terms in the
Agreement.
2. AMENDMENTS TO AGREEMENT. The following provisions of the
Agreement, referenced by the applicable Section numbers in the Agreement, are
hereby amended as follows:
2.1 SECTION 3.1 The third sentence of Section 3.1 is
amended by adding the following at the end thereof: ". . . ; PROVIDED,
HOWEVER THAT THE MAINTENANCE FEE SHALL NOT BE INCREASED BY ANA MOUNT GREATER
THAN TEN PERCENT (10%) PER ANNUM."
2.2 SECTION 6.2.3 The second sentence of Section 6.2.3 of
the Agreement is amended by adding the following at the end thereof: ". . .
; PROVIDED, HOWEVER, THAT RSA MAY CEASE TO OFFER MAINTENANCE TO OEM WITH
RESPECT TO THE MOST RECENT RELEASE OF A PARTICULAR RSA SOFTWARE PRODUCT ONLY
IF IT IS GENERALLY CEASING TO OFFER MAINTENANCE FOR THE SAME PRODUCT TO IT
OTHER SIMILARLY-SITUATED LICENSEES."
3. EFFECT OF AMENDMENT. This Exhibit "A" is an amendment to the
Agreement. Except as expressly amended above, the Agreement shall remain in
full force and effect.
IN WITNESS WHEREOF, the parties have executed this Exhibit "A" as of
the date set forth above.
LICENSEE:
TUMBLEWEED SOFTWARE, INC. RSA DATA SECURITY, INC.
BY: /s/ Joseph C. Consul BY: /s/ Albert Sisto
----------------------------------- ---------------------------------
PRINTED NAME: Joseph C. Consul PRINTED NAME: Albert Sisto
------------------------- -----------------------
TITLE: VP FInance, CFO TITLE: Chief Operating Officer
-------------------------------- ------------------------------
24
EXHIBIT I
SERVER SOFTWARE SUBLICENSE TERMS
Any agreement between UPS and any Server Sublicensee shall contain rights
consistent with those enumerated in the Agreement, except that the agreement
must also include terms at least as protective of Tumbleweed's interests in
the Server Software and Custom Server Software (collectively, the "Server
Software") and in the Client Software and Custom Client Software
(collectively, the "Client Software" which, with the Server Software, is
collectively referred to herein as the "Software") as the following:
1. RESTRICTIONS. The license grant to use the Server Software and
reproduce and distribute the Client Software is not transferable, assignable
or sublicenseable. Server Sublicensee shall not, nor shall it authorize a
third party to, decompile, reverse engineer or disassemble the Software
except where such conduct is explicitly permitted under local law. Server
Sublicensee agrees to pay all required licensing fees and not to exceed the
scope of the licenses granted under the Agreement. Server Sublicensee
acknowledges and agrees that Tumbleweed may, at any time without notice,
incorporate license management software into the Server Software to prevent
Server Sublicensee from exceeding the scope of its license. Neither UPS nor
Tumbleweed has provided any license of its trademarks to Server Sublicensee.
2. OTHER RESTRICTIONS. Server Sublicensee shall retain any End
User license agreements included with the Client Software. Server
Sublicensee shall not remove, modify or obscure any proprietary rights
notices in the Software or logos or trademarks displayed in the Software or
any documents automatically generated by it. Server Sublicensee shall not
distribute, in connection with the Software or in the performance of
reselling messaging services, any viruses, trojan horses, worms, time bombs,
cancelbots or other programs containing computer programming defects which
are intended to damage or detrimentally interfere with a user's system or
data.
3. OWNERSHIP. Except as otherwise provided in this Agreement, UPS
and its suppliers (including, without limitation, Tumbleweed) shall retain
all rights, title and interest in and to all copyrights, trademarks, trade
secrets, patents and all other industrial and intellectual property embodied
in or appurtenant to the Software. There are no implied licenses under this
Agreement, and any rights not expressly granted to Server Sublicensee
hereunder are reserved by UPS or its suppliers.
4. AUDIT RIGHTS. Server Sublicensee will keep for 3 years proper
records and books of account relating to Server Sublicensee's activities
regarding the Software. Once every 12 months, UPS or its designee may
inspect such records to verify Server Sublicensee's statements. Any such
inspection will be conducted on Server Sublicensee's office in a manner that
does not unreasonably interfere with Server Sublicensee's business
activities. Server Sublicensee shall immediately make any overdue payments
disclosed by the audit. Such inspection shall be at UPS's expense; PROVIDED,
HOWEVER, if the audit reveals overdue payments in excess of 5% of the
payments owed to date, Server Sublicensee shall immediately pay the cost of
such audit, and UPS may conduct another audit during the same 12 month
period. Server Sublicensee will make available to UPS all relevant records,
including but not limited to all records relating to activities outside of
the United States.
5. DISCLAIMER OF WARRANTY; NO PASS THROUGH. UPS shall be
responsible for any warranties extended to Server Sublicensee regarding the
Software, except that UPS shall have the right to pass through to Server
Sublicensee the proprietary rights indemnification of Tumbleweed, as set
forth in Section 14(a) of the Agreement. TUMBLEWEED AND ITS SUPPLIERS
DISCLAIM ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION,
THE IMPLIED WARRANTIES OF TITLE, MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE AND NONINFRINGEMENT. Server Sublicensee shall make no warranties to
End Users on behalf of UPS or its suppliers.
25
6. SERVER SUBLICENSEE'S INDEMNITY. Server Sublicensee shall
indemnify UPS and its suppliers against any and all claims, losses, costs and
expenses, including reasonable attorneys' fees, which any of them may incur
as a result of claims in any form by third parties, including End Users,
based upon (i) any representations made by Server Sublicensee to such third
parties which are not supported by the Documentation and/or any other
information or materials supplied by UPS and/or its suppliers, or (ii) any
acts committed by Server Sublicensee's End Users during the course of their
use of the Software.
7. LIMITATIONS ON LIABILITY. EXCEPT FOR ANY BREACHES OF SECTIONS
RELATING TO LICENSE GRANTS OR CONFIDENTIALITY, IN NO EVENT SHALL EITHER PARTY
BE LIABLE FOR LOST PROFITS OR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES
ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT (WHETHER FROM BREACH OF
CONTRACT OR WARRANTY OR FROM NEGLIGENCE OR STRICT LIABILITY), EVEN IF SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THIS LIMITATION
OF LIABILITY SHALL APPLY NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF
ANY LIMITED REMEDY HEREIN. EXCEPT FOR TUMBLEWEED'S INDEMNIFICATION
OBLIGATIONS, IN NO EVENT SHALL TUMBLEWEED'S LIABILITY TO SERVER SUBLICENSEE
EXCEED THE AMOUNTS ACTUALLY RECEIVED BY TUMBLEWEED ATTRIBUTABLE TO SERVER
SUBLICENSEE.
8. GENERALLY. At its own expense, Server Sublicensee shall comply
with all applicable laws, regulations, rules, ordinances and orders regarding
its activities related to this Agreement. Without limiting the foregoing:
(a) Server Sublicensee shall fully comply with the relevant
export administration and control laws and regulations, as same may be
amended from time to time, to ensure that the Software is not exported
(directly or indirectly) in violation of United States law.
(b) Server Sublicensee shall comply with the U.S. Foreign
Corrupt Practices Act and shall not make any payments to third parties which
would cause UPS (or any of its suppliers) or Server Sublicensee to violate
such laws.
9. GOVERNMENT END USERS. The Software is a "commercial item,"
consisting of "commercial computer software" and "commercial computer
software documentation," and is provided to the U.S. Government only as a
commercial end item.
26