Technology License and Distribution Agreement

This Technology License and Distribution Agreement (the "Agreement") is entered into effective as of this 11th day of March, 1996 (the "Effective Date") between Sun Microsystems, Inc., acting by and through its JavaSoft Division with its principal place of business at 2550 Garcia Avenue, Mountain View, California 94043 ("SUN") and Microsoft Corporation, a Washington corporation with its principal place of business at One Microsoft Way, Redmond, Washington 98052-6399 ("Microsoft").

RECITALS

WHEREAS SUN wishes to license its JAVA technology, while maintaining compatibility among JAVA language based products; and

WHEREAS SUN wishes to protect and promote a compatibility logo used in connection with its JAVA technology; and

WHEREAS Licensee (as defined below) wishes to develop and distribute products related to SUN's JAVA technology;

NOW THEREFORE, SUN and Licensee enter into this Agreement on the following terms:

AGREEMENT

1.0  DEFINITIONS

  1.1  "Applet Application Programming Interface" or "AAPI" means (a) the public application programming interface to the Java Applet Environment (JAE) reflected in the Technology as identified in Exhibit A, (b) the bytecode specification in the Documentation entitled "OEM Java Virtual Machine Specification," (c) the Java language specification in the Documentation entitled "OEM Java Language Specification" and (d) the OEM Java API Specification, as modified by SUN during the term of this Agreement.

  1.2  "Applet" means a program written in the Java Language which (i) runs on the AAPI and (ii) consists of Java byte codes executable by the Java Runtime Interpreter (but does not include or incorporate the Java Runtime Interpreter or Java Classes).

  1.3  "Java Classes" means the Java classes listed in Exhibit A(I)(A).

  1.4  "Documentation" means the OEM Java Language Specification, OEM Java API Specification, and OEM Java Virtual Machine Specification, all of which are listed in Exhibit A(III).

  1.5  "Derivative Work(s)" means any revision, modification, translation, abridgment, condensation, expansion, collection, compilation or other form in which an existing work may be recast, transformed, ported or adapted and which is a "derivative work" under U.S. copyright law.

  1.6  "Independent Work(s)" means any work, or portion thereof, that is independently developed and performs the same or similar functions as certain technology, but is not a Derivative Work of such technology.

  1.7  "Intellectual Property Rights" means all intellectual property rights worldwide arising under statutory or common law, and whether or not perfected, including, without limitation, all (i) patents and patent applications owned or licensable by a party hereto ("Patent Rights"); (ii) rights associated with works of authorship including copyrights, copyright applications, copyright registrations, mask work rights, mask work applications, mask work registrations; (iii) rights relating to the protection of trade secrets and confidential information; (iv) any right analogous to those set forth in this Section 1.7 and any other proprietary rights relating to intangible property (other than trademark, trade dress, or service mark rights); and (v) divisions, continuations, renewals, reissues and extensions of the foregoing (as and to the extent applicable) now existing, hereafter filed, issued or acquired.

  1.8  "Internet Explorer" means the Product known as Microsoft Internet Explorer, including all upgrades and versions thereof and successors thereto.

  1.9  "Java Compiler" means the Java programs more particularly identified as "Technology: Java Compiler" in Exhibit A.

  1.10  "Java Reference Implementation" means the (a) Licensee-authored Derivative Works or Independent Works of the Java Classes and Supplemental Java Classes (the "Reference Implementation Java Classes") for Win32 Platforms and the (b) Licensee-authored Derivative Works or Independent Works of the Java Runtime Interpreter for Win32 Platforms (the "Reference Implementation VM").

  1.11  "Java Runtime Interpreter" means a program which implements the Java Virtual Machine, as specified in the Java Virtual Machine Specification.

  1.12  "Java Language Specification" means the specification identified in Exhibit A (III) hereto, which is part of the Documentation.

  1.13  "Java Language Test Suites" means SUN's publicly available test suites for validating that products which compile the Java Language comply with the then-current Java Language Specification as of the date of the test suites.

  1.14  "JavaScript" means an implementation in the Java Language of the technology that was developed by Netscape Communications Corporation and which was made the subject of the joint press release issued by SUN and Licensee on December 7, 1995.

  1.15  "Java Test Suite" means SUN's publicly available test suites for validating that products which interpret Java bytecodes comply with the SUN specification of the AAPI as of the date of the test suites.

  1.16  "Java Virtual Machine Specification" means the specification identified in Exhibit A (III) hereto, which is part of the Documentation.

  1.17  "Licensee" means Microsoft and all of its Subsidiaries.

  1.18  "Non-PC Platforms" means any hardware platforms other than the PC Platforms.

  1.19  "PC Platforms" means any and all hardware platforms that support Microsoft Windows 3.x, Microsoft Windows 95, Microsoft Windows NT, Apple Macintosh, IBM OS/2, and all variations of the UNIX operating system, including all new upgrades and versions thereof and successors thereto.

  1.20  "Product(s)" means any of Licensee's products or services and Licensee's future products and/or services, which may incorporate, implement, integrate, use, emulate and/or embody, in whole or in part, the Technology, Derivative Works of the Technology and/or Independent Works of the Technology for PC Platforms and Non-PC Platforms. A "Product" that includes the Technology or a Derivative Work or Independent Work thereof must include a significant functional and value enhancement in addition to the Technology such that the primary reason for a customer to license such Product is other than the right to receive a license to the Technology. Products shall not include the Technology distributed on a stand-alone basis, unless distributed as an upgrade to a Product.

  1.21  "Source Code" means the human readable form of computer software, including any corresponding comments and annotations.

  1.22  "Subsidiary" means a corporation, partnership, limited liability company, unincorporated association, or other entity (a) greater than 50% of whose combined voting power of the total issued and outstanding voting stock (representing the right to vote for the election of directors or other management authority) is, now or hereafter, owned or controlled, directly or indirectly, by a party hereto (a "Parent"), and is actually controlled or managed by such Parent, or (b) which does not have outstanding shares or securities, as may be the case in a partnership or limited liability company, but greater than 50% of whose ownership as equity interest is, now or hereafter, owned or controlled, directly or indirectly, by a Parent and is actually managed or controlled by such Parent.

  1.23  "Supplemental Java Classes" means the Java classes that SUN delivers to Licensee after the Effective Date (i.e., in addition to the "Java Classes") pursuant to Section 3.1 of this Agreement.

  1.24  "SUN" means Sun Microsystems, Inc. and all of its Subsidiaries.

  1.25  "Technology" means the Java Runtime Interpreter, Java Classes, Supplemental Java Classes, Java Compiler, and all Upgrades.

  1.26  "Term" shall have the meaning given such term in Section 11.1 of this Agreement.

  1.27  "Upgrades" means any new releases and versions of the Technology by SUN which include, but are not limited to bug fixes, modifications, variations, or enhancements of the Technology and which are delivered to Licensee pursuant to the terms of this Agreement.

  1.28  "Value Added Open Packages" or "VAOPs" means Java classes developed Licensee, which represent extensions to the AAPI.

  1.29  "Win32 Platforms" means Microsoft Windows 95, Microsoft Windows NT, and all upgrades, versions and successors to the foregoing Products.

2.0  LICENSE GRANTS

  2.1  Source Code and Development License to Technology.

    a.  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable license, under the Intellectual Property Rights of SUN to make, access, use, copy, view, display, modify, adapt, and create Derivative Works of the Technology in Source Code form for the purposes of developing, compiling to binary form and supporting Products;

    b.  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable patent license to develop Independent Works of the Technology for the purposes of developing, compiling to binary form and supporting Products, such patent license to include only those claims within the Patent Rights of SUN (as defined in Section 1.7) that would be infringed, directly or contributorily, by the Technology itself, notwithstanding SUN's ownership of the Technology, and extending only to Independent Works of the Technology that are also Java interpreters, class libraries or compilers or portions thereof;

    c.  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable license, under the Intellectual Property Rights of SUN, to sublicense and distribute the Source Code of the Technology and Derivative and Independent Works thereof, to third party licensees of the Source Code of the Products for use in the geographic locations where Licensee licenses the Source Code for its Win32 Platform Products for purposes of porting, maintenance, support and creating Derivative Works or Independent Works of the Technology, which are owned by Licensee or for which Licensee obtains license rights substantially equivalent to ownership on terms and conditions that are consistent with the terms of this Agreement and no less restrictive than the terms upon which Licensee licenses the Source Code for its Win32 Platform Products to such third party licensees. Such third parties may include Licensee's original equipment manufacturers.

  2.2  Distribution License to Technology.

    a.  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable license, under the Intellectual Property Rights of SUN, to:

      (i)  Make, use and reproduce an unlimited number of copies of the Technology and Derivative Works thereof in binary form for Licensee's internal use;

      (ii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute, and have made, reproduced, licensed, rented, leased, sold or otherwise distributed to and by third party distributors, resellers, original equipment manufacturers, VARs, dealers and sales representatives (collectively, "Distributors"), the Products in binary form.

      (iii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute to end users as part of a Product or an upgrade to a Product, the Technology and Derivative Works thereof in binary form.

      (iv)  Grant to third party licensees of Licensee's development tools which include the Java Language compilation function ("Tools Customers"), the right to make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute to end user customers, with the right to grant further licenses to redistribute, the Reference Implementation VM (or Independent Work thereof) in binary code form in conjunction with products developed by the Tools Customers; provided, that Licensee includes terms in its end user licensing agreements requiring such Tools Customers to license the Reference Implementation VM (or Independent Work thereof) only in binary code form as part of products which add significant and primary functionality above and beyond the Reference Implementation VM (or Independent Work thereof).

      (v)  Grant to third party licensees of Licensee's development tools which include the Java Language compilation function ("Tools Customers"), the right to make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute to end user customers, with the right to grant further licenses to redistribute, (A) in Source Code form those portions of the Reference Implementation Java Classes (or Independent Work thereof) that SUN authorizes its tool customers to grant in Source Code form, and (B) in binary code form those portions of the Reference Implementation Java Classes (or Independent Work thereof) that SUN authorizes its tools customers to grant in binary code form; provided, that Licensee includes terms in its end user licensing agreement requiring such Tools Customers only to license the Reference Implementation Java Classes (or Independent Work thereof) as part of products which add significant and primary functionality above and beyond the Reference Implementation Java Classes (or Independent Work thereof). To enable Licensee to satisfy the requirements of this Section, SUN shall promptly provide Licensee with a list of the Java Class files which it licenses in Source Code form as "Sample" and/or "Redistributable" components after the Effective Date hereof and shall promptly update such list upon delivery of Upgrades.

    b.  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable, patent license to:

      (i)  Make, use and reproduce an unlimited number of copies of the Independent Works of the Technology for Licensee's internal use;

      (ii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute, and have made, reproduced, licensed, rented, leased, sold or otherwise distributed to and by Distributors, the Independent Works of the Technology in binary form as part of the Products; and

      (iii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute to end users as part of a Product or an upgrade to a Product, Licensee's Independent Works of the Technology in binary form.

  Notwithstanding the foregoing, the patent license described in this Section 2.2 shall include only those claims within the Patent Rights of SUN that would be infringed, directly or contributorily, by the Technology, notwithstanding SUN's ownership of the Technology, and extending only to Independent Works of the Technology that are Java interpreters, class libraries, compilers, or portions thereof.

  2.3  Documentation. SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable, under the Intellectual Property Rights of SUN, to:

    a.  Make, use, modify, adapt, translate and create technically accurate Derivative Works of the Documentation; and

    b.  Reproduce, license, rent, lease, or otherwise distribute, and have reproduced, licensed, rented, leased or otherwise distributed to and by any third party Distributors, the Documentation and any Licensee-created Derivative Works thereof (which shall include all relevant SUN copyrights, notices, and marks) in connection with distribution of the Product(s). Licensee may also use a pointer on its Worldwide Web site and/or Microsoft Network to the SUN Documentation on the Internet in connection with distribution of the Products.

  2.4  License to JavaScript. SUN agrees that if, at any time during the Term, it obtains a right or license to any Intellectual Property Rights to JavaScript and the right to license any of such rights to a third party, Sun shall promptly (and, in any event, no later than the date that it grants a license to any third party) deliver written notice to Licensee stating that SUN has obtained such rights and stating its compatibility requirements for a license to JavaScript (which shall be consistent with the compatibility requirements for other SUN licensees of JavaScript). Within 90 days after receiving such notice, Licensee shall notify SUN either (a) that it wishes to obtain a license to JavaScript from SUN, subject to the compatibility terms stated in the notice, or (b) that it does not wish to obtain a license from SUN. If Licensee informs SUN that it wishes to obtain a license to JavaScript from SUN upon such terms, then SUN shall promptly grant a license to Licensee that is coextensive with the license to the Technology described in this Agreement, including the right to receive further updates of such technology, to the extent that SUN has the right to grant such license rights. The parties agree that the covenant described in this Section is a material part of this Agreement and that Licensee shall not be obligated to pay any additional royalties or fees for a license to JavaScript.

  Provided that Licensee's Independent Works of JavaScript are consistent with Netscape Communications Corporation's public specifications for JavaScript, SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except to the extent provided in Section 11.2(b)), worldwide, non-exclusive, non-transferable, fully paid up license, under the Patent Rights of SUN, to:

    (i)  Make, use and reproduce an unlimited number of copies of Licensee's Independent Works of JavaScript for Licensee's internal use;

    (ii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute, and have made, reproduced, imported, licensed, rented, leased, sold or otherwise distributed to and by Distributors, Licensee's Independent Works of JavaScript.

  2.5  License to Java Reference Implementation.

    a.  Licensee hereby grants to SUN, and SUN hereby accepts from Licensee, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(c)), worldwide, exclusive (except with respect to Section 2.1(c)), non-transferable, fully paid up license, under the Intellectual Property Rights of Licensee, to:

      (i)  to make, access, use, copy, view, display, modify, adapt, and create Derivative Works of the Java Reference Implementation in Source Code form;

      (ii)  to sublicense and distribute the Source Code of the Java Reference Implementation and Derivative Works of the Java Reference Implementation to third party licensees in geographic locations and on terms and conditions no less restrictive than the terms upon which SUN licenses the Source Code for its Technology to such third party licensees.

    b.  Licensee hereby grants to SUN, and SUN hereby accepts from Licensee, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(c)), worldwide, non-exclusive, non-transferable, fully paid up license, under the Intellectual Property Rights of Licensee, to

      (i)  Make, use and reproduce an unlimited number of copies of the Java Reference Implementation and Derivative Works thereof in binary form for SUN's internal use;

      (ii)  Make, use, reproduce, import, license, rent, lease, offer to sell, sell or otherwise distribute, and have made, reproduced, imported, licensed, rented, leased, sold or otherwise distributed to and by any third parties, the Java Reference Implementation and Derivative Works thereof in binary form.

    c.  Licensee hereby grants to SUN, and SUN hereby accepts from Licensee, a perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(c)), worldwide, non-exclusive, non-transferable, fully paid up patent license to:

      (i)  Make, use and reproduce an unlimited number of copies of SUN's Independent Works of the Java Reference Implementation for Licensee's internal use; and

      (ii)  Make, use, import, reproduce, license, rent, lease, offer to sell, sell or otherwise distribute, and have made, reproduced, imported, licensed, rented, leased, sold or otherwise distributed to and by third parties, SUN's Independent Works of the Java Reference Implementation.

  Notwithstanding the foregoing, the patent license described in this Section 2.5(c) shall include only those patent claims within the Patent Rights of Licensee that would be infringed, directly or contributorily, by the Java Reference Implementation, notwithstanding Licensee's ownership of the Java Reference Implementation, and extending only to Independent Works of the Java Reference Implementation that are Java class libraries, interpreters or portions thereof.

  2.6  Compatibility.

    a.  Java Compatibility.

      (i)  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a non-transferable, perpetual and irrevocable (without regard to any termination or expiration of this Agreement, except as provided in Section 11.2(b)), fully paid up license, under the Intellectual Property Rights of SUN, to make, use, and reproduce an unlimited number of copies of the Java Test Suites for Licensee's internal use.

      (ii)  During the Term, SUN shall deliver to Licensee at no cost, and Licensee shall accept from SUN, Java Test Suites.

      (iii)  Each Upgrade delivered by SUN to Licensee shall pass the Java Test Suite that accompanied such Upgrade and the test suite that accompanied the prior two (2) Upgrades, provided, that the Upgrades delivered by SUN do not need to pass the Java Test Suites that accompanied the prior two (2) Upgrades to the extent that the Upgrade includes a SUN modification to the Technology that is intended to fix a program error in such Technology and Licensee agrees to accept such modification as an exception to the requirement stated in this Section 2.6(a)(iii), which acceptance shall not be unreasonably withheld.

      (iv)  Subject to the satisfaction of Section 2.6(a)(iii), Licensee agrees that upon the earlier of (a) six (6) months after the date that SUN delivers to Licensee an Upgrade that SUN designates a significant Upgrade (each, a "Significant Upgrade"), or (b) the date that Licensee includes the Significant Upgrade of the Java Reference Implementation in the commercial release of any Product, Licensee shall deliver to SUN, in accordance with the terms of Section 3.3, an upgrade to the Java Reference Implementation (each, a "Compatible Implementation") that passes the test suite that accompanied the Significant Upgrade (a "Relevant Test Suite"); provided, that if Licensee is unable, despite all reasonable efforts, to develop such a Compatible Implementation within such six (6) month period that passes the Relevant Test Suite, the parties shall negotiate in good faith an extension to such period to enable Licensee to develop a Compatible Implementation that does pass the Relevant Test Suite. SUN shall provide reasonable technical assistance to Licensee during such periods. The date that Licensee delivers to SUN a Compatible Implementation shall be defined, for purposes of this Section 2.6, as the "Compatibility Date."

      (v)  SUN shall not designate more than two (2) Significant Upgrades per year.

      (vi)  Licensee agrees that any new version of a Product that Licensee makes commercially available to the public after the most recent Compatibility Date shall only include the corresponding Compatible Implementation (subject to Licensee's right to exclude the Supplemental Java Classes pursuant to Section 2.7); provided, that any version of a Product which, as of such Compatibility Date, is being beta tested by third parties, shall be exempt from such requirement.

      (vii)  Notwithstanding the foregoing, SUN agrees that the Compatible Implementation and all Products shall be deemed to pass the Relevant Test Suites if they pass the Relevant Test Suites when combined with any Supplemental Java Classes that are not included in Products but are made available to the public through alternative distribution channels pursuant to Section 2.7.

      (viii)  If Licensee provides SUN with written notice of the existence of a program error in a Java Test Suite, then Licensee shall be released from compatibility under Section 2.6(a)(iv) with the minimum portion of such Java Test Suite reasonably necessary to avoid the impact of such program error, until such time as SUN provides to Licensee a corrected or new Java Test Suite.

      (ix)  Branding and Trademarks. SUN grants Licensee a worldwide license to the logo that indicates compatibility with the Java Test Suites (the "Java Compatibility Logo") pursuant to the further terms described in the Trademark License entered into herewith, attached as Exhibit E hereto, and incorporated by reference herein. SUN agrees to provide Licensee with a copy of such Java Compatibility Logo within ten (10) days after the Effective Date.

    b.  Compiler compatibility.

      (i)  SUN hereby grants to Licensee, and Licensee hereby accepts from SUN, a non-transferable, fully paid up license, under the Intellectual Property Rights of SUN, to make, use, and reproduce an unlimited number of copies of the Java Language Test Suites for Licensee's internal use.

      (ii)  During the Term, SUN shall deliver to Licensee at no cost, and Licensee shall accept from SUN, Java Language Test Suites.

      (iii)  Each Upgrade delivered by SUN to Licensee shall pass the Java Language Test Suite that accompanied such Upgrade and the test suites that accompanied the two (2) prior Upgrades, provided, that the Upgrades delivered by SUN do not need to pass the Java Test Suites that accompanied the prior two (2) Upgrades to the extent that the Upgrade includes a SUN modification to the Technology that is intended to fix a program error in such Technology and Licensee agrees to accept such modification as an exception to the requirement stated in this Section 2.6(b)(iii), which acceptance shall not be unreasonably withheld.

      (iv)  Subject to the satisfaction of Section 2.6(b)(iii), Licensee agrees that any new version of a Product that includes the Java Language compilation function that Licensee makes commercially available to the public after the most recent Compatibility Date shall include a mode which a Tool Customer may use to permit such Product to pass the Java Language Test Suite that accompanied the Significant Upgrade; provided, that any version of a Product which, as of the most recent Compatibility Date, is being beta tested by third parties, shall be exempt from such requirement.

      (v)  Notwithstanding the foregoing, SUN agrees that all Products shall be deemed to pass the Relevant Language Test Suites if they pass the Relevant Language Test Suites when combined with any Supplemental Java Classes that are not included in Products but are made available to the public through alternative distribution channels pursuant to Section 2.7.

      (vi)  If Licensee provides SUN with written notice of the existence of a program error in a Java Language Test Suite, then Licensee shall be released from the compatibility requirements of Section 2(b)(iv) with the minimum portion of such Java Language Test Suite reasonably necessary to avoid the impact of such program error, until such time as SUN provides to Licensee a corrected or new Java Language Test Suite.

    c.  JavaScript Test Suites. Upon delivery to Licensee of JavaScript, SUN grants to Licensee, and Licensee hereby accepts from SUN, a non-transferable, fully paid up license, under the Intellectual Property Rights of SUN, to make, use, and reproduce an unlimited number of copies of the test suites for JavaScript for Licensee's internal use. SUN shall provide Licensee with all JavaScript test suites no later than the date it provides such test suites to any third party.

  2.7  Java Classes.

    a.  Licensee may determine, in its sole discretion, to include one or more Supplemental Java Classes in its Products; however, Licensee shall not be obligated to distribute any Supplemental Java Classes with its Products. Licensee shall use reasonable efforts to promptly inform SUN of its decision to exclude any such Supplemental Java Classes from Products. Licensee also shall use reasonable efforts to promptly make available to developers and customers free of charge any Supplemental Java Classes that Licensee decides, in its sole discretion, to exclude from Products. For purposes of this Section 2.7, Licensee shall be deemed to have made such "reasonable efforts" if it (i) issues a press release and posts a message on its Worldwide Web site on such pages as Licensee's support for Java is described, stating the place where any excluded Supplemental Java Classes are available, and (ii) publishes any excluded Supplemental Java Classes on CD-ROMs that are distributed through Licensee's Microsoft Developer Network within 90 days after the date that SUN delivers such Supplemental Java Classes to Licensee and makes such Supplemental Java Classes available on its Worldwide Web site within 30 days after the date that SUN delivers such Supplemental Java Classes to Licensee. The Supplemental Classes delivered by SUN to Licensee shall run on the most current Java Reference Implementation.

    b.  SUN agrees that the Upgrades to the Java Classes shall be limited to reasonable enhancements which remain consistent with the original intended purpose of the corresponding Java Classes delivered on or about the Effective Date.

  2.8  Value Added Open Packages.

    a.  The parties understand and agree that during the Term, Licensee may develop Value Added Open Packages which do not need to call native code interfaces during execution ("Portable VAOPs") and Value Added Open Packages that need to call a native code interface during execution ("Non-Portable VAOPs").

    b.  No later than thirty (30) days after the date that Licensee makes any Portable VAOP commercially available, Licensee either (i) shall make the source code to such Portable VAOP publicly available, subject to reasonable end user licensing restrictions, or (ii) make publicly available a complete and accurate specification for such Portable VAOP, together with an appropriate test suite.

    c.  Licensee shall have no obligations with respect to Non-Portable VAOPs, except to publish complete and accurate specifications therefor.

    d.  Licensee shall confine the names of all VAOPs to names beginning with "COM.ms" and shall not modify or extend the names of public class or interface declarations whose names begin with "java", "COM.sun" or their equivalents.

  2.9  Java Reference Implementation.

    a.  SUN agrees that during the Term it shall license the Java Reference Implementation to all third parties on a non-discriminatory basis under terms that are no less favorable than the terms upon which SUN licenses other implementations of the Technology to third parties; provided, that Licensee agrees that this Section 2.9(a) shall not prohibit SUN from modifying, altering, adapting, or creating Derivative Works or Independent Works of the interfaces to the Java Reference Implementation prior to licensing such Java Reference Implementation to third party licensees.

    b.  Licensee agrees that the Reference Implementation VM, and any upgrades thereto, shall include the necessary Source Code to implement the functionality of the Java Runtime Interpreter. Notwithstanding the foregoing, Licensee may implement a subset of the functionality of the Reference Implementation VM as a part of a Win32 Platform, callable by a system-level interface (a "System Implementation"). In such cases, Licensee shall provide SUN a complete and accurate specification for all such system-level interfaces. Licensee will also provide SUN an alternative implementation in Source Code form of the System Implementation which is similar in function and behavior to the System Implementation as a part of an upgrade to the Java Reference Implementation. The Reference Implementation VM provided to SUN in Source Code form will be fully buildable and will contain a build option which supports the creation of a Reference Implementation VM either by calling the System Implementation or through the alternative implementation.

    c.  Licensee agrees that the Reference Implementation Java Classes shall be maintained as an application level library.

    d.  At such time as Licensee discloses to any third party a new or modified version of an interface specification to the Reference Implementation VM, Licensee shall provide SUN with a copy of such specification. In addition, Licensee shall include SUN in any external process which Licensee uses to define such interfaces.

    e.  Licensee and SUN may openly publish a complete and accurate specification for interfaces to the Reference Implementation VM, including the invocation interface, the native code interfaces required for the execution of Non-Portable VAOPs, and interfaces required for the compilation of Java-compatible byte-codes into native code (e.g., Just-in-Time Compilation) by Licensee or third parties.

    f.  Licensee agrees that from time-to-time during the Term, SUN may wish to suggest that Licensee modify the implementation and/or interfaces to the Reference Implementation VM in a substantive way which cannot be adequately expressed through the Test Suites. Licensee agrees to work with SUN in good faith to create such modifications; provided, however, that if the parties cannot reach a mutually satisfactory agreement on such modifications, then Licensee may decline to implement SUN's requested modification(s). To the extent that Licensee does implement such modifications, it shall return them to SUN as part of an upgrade to the Java Reference Implementation. SUN will have the rights described in Section 2.9(a) with respect to modifying and licensing the Java Reference Implementation with its desired implementations and specifications.

  2.10  Ownership.

    a.  Ownership by SUN. SUN retains all right, title and interest in and to the Technology, Documentation, Upgrades, SUN-authored Derivative Works of the Java Reference Implementation, SUN-authored Independent Works of the Java Reference Implementation and SUN bug fixes, subject to Licensee's underlying rights in the Java Reference Implementation and associated Intellectual Property Rights.

    b.  Ownership by Licensee. Licensee retains all right, title and interest in and to the Product(s), Licensee-authored Derivative Works of the Technology, VAOPs and Licensee-authored Independent Works of the Technology, subject to SUN's underlying rights in the Technology and associated Intellectual Property Rights.

  2.11  No Other Grant. Each party agrees that this Agreement does not grant any right or license, under any Intellectual Property Rights of the other party, or otherwise, except as expressly provided in this Agreement, and no other right or license is to be implied by or inferred from any provision of this Agreement or by the conduct of the parties.

  2.12  Contractors. Licensee may retain third parties to furnish services to it in connection with its development and manufacture of Products; provided, that such third parties undertake obligations of confidentiality respecting such work and shall use such work only on behalf of Licensee.

3.0  SUPPORT AND UPGRADES

  3.1  During the Term, SUN shall provide to Licensee (a) all Upgrades no later than the date when such Upgrades are made available by SUN to any other licensee of the Source Code to such Upgrade, and (b) all versions of the Technology in beta test form when such beta test versions are made generally available by SUN on terms no more restrictive than SUN requires of other beta test licensees. SUN shall promptly notify Licensee of the nature of any Upgrades or other planned modifications to the Technology no later than the date that it provides such notice to any other commercial (i.e., non-academic) licensee of the Source Code to the Technology.

  3.2  During the Term, SUN shall provide to Licensee all upgrades, versions and translations of the Documentation no later than the date when such upgrades, versions and translations of the Documentation are made available to any other commercial licensee of the Source Code to the Documentation.

  3.3  Licensee shall deliver to SUN the Java Reference Implementation in Source Code form subject to Section 2.6. Licensee shall make available to SUN beta test versions of Internet Explorer that include the Java Reference Implementation at such times as such beta test versions are widely available, upon terms no more restrictive than the terms offered to other third parties who wish to beta test such Product.

  3.4  SUN shall assign the equivalent of one (1) half-time engineer to be available via phone, electronic mail and/or scheduled appointment during regular business hours to support Licensee during the Term. The selection of the support engineer shall be at SUN's sole discretion; provided, SUN agrees that it shall select a senior computer engineer who is conversant in the Technology; and provided further that Licensee shall have the right to make reasonable requests that SUN replace the engineer no more than three (3) times during the Term. Licensee may designate a maximum of ten (10) contacts to interface with the SUN support engineer.

4.0  PAYMENT

  4.1  License Fees. In consideration of the rights granted Licensee in this Agreement, Licensee shall pay SUN a flat fee equal to Three Million Five Hundred Thousand Dollars ($3,500,000) within thirty (30) days from the date that Licensee accepts the Technology pursuant to the terms of Section 12.6 of this Agreement (the "Acceptance Date") and, provided Licensee accepts the Technology, shall pay the same amount on or before forty five (45) days after the first, second, third and fourth anniversaries of the Acceptance Date. Licensee shall not be required to pay any additional royalties or fees after the Term.

  4.2  Support Fees. During the term of this Agreement, Licensee shall pay to SUN a support fee equal to Two Hundred and Fifty Thousand Dollars ($250,000) per year. The first support fee shall be due and payable within forty-five (45) days from the Acceptance Date. Licensee shall pay additional support fees within forty five (45) days after the first, second, third and fourth anniversaries of the Acceptance Date. Licensee shall not be required to pay any fees for Upgrades. Licensee shall not be required to pay any additional royalties or fees after the Term.

  4.3  Taxes. All payments required by this Agreement shall be made in United States dollars. Each party shall bear its own federal income tax and state income taxes in connection with the transactions described in this Agreement.

5.0  ADDITIONAL AGREEMENT OF PARTIES

  5.1  Notices. Licensee shall not remove any copyright notices, trademark notices or other proprietary legends of SUN or its suppliers contained on or in the Technology or Documentation. Licensee or its Distributors shall require an end user license agreement for each unit of Product(s) shipped and Licensee shall provide SUN with a copy of such form agreement for review upon request by SUN. During the Term, Licensee shall provide SUN with an annual update to Exhibit B attached hereto to disclose to SUN the Products that include the Technology.

  5.2  Applet Tags. Any Product that reads or writes HTML or SGML shall use the DTD as specified by Exhibit D when referencing the Applet tag unless an additional DTD is specified by W3C or similar standards bodies, which provides similar functionality, in which case, both shall be supported unless the parties agree otherwise in writing after the Effective Date. The expected syntax, subject to change from time to time, is currently embodied in the W3C "Object Specification."

  5.3  End User Support. If Licensee determines that a problem identified by an end-user customer is the result of the Technology or an Upgrade, Licensee may contact SUN for advice and assistance. SUN shall use reasonable efforts to obtain an oral or written solution to the problem that includes such detail as will permit one of Licensee's customer-service representatives to offer a complete solution to the end user customer.

  Licensee is not authorized to make any representation or warranty on behalf of SUN to its end users or third parties. Licensee shall provide technical and maintenance support service for its distributors and end user customers in accordance with Licensee's standard support practices. SUN shall not be responsible for providing any support to Licensee's distributors or customers for the Technology or the Product(s).

  5.4  Marketing. The parties will cooperate on mutually agreeable marketing and promotional activities relating to the Technology. All press announcements concerning this Agreement and the planned first use of the Technology in a Product shall be mutually agreed upon by both parties.

  5.5  Use of Licensee's Name. Licensee hereby authorizes SUN to use Licensee's name in advertising, marketing, collateral, customer lists and customer success stories prepared by or on behalf of SUN for the Technology, provided that Licensee will have the right to approve or disapprove the use of its name in all cases.

  5.6  Patent Non-Assertion.

  a.  Non-Assertion by Licensee.

    (i) Licensee agrees that it shall not commence any action against SUN or its licensees for infringement of the patent claims included in Licensee's Patent Rights which would be infringed by the making, use, sale, offer for sale, or importation, during the Term, of the Technology, not including any Upgrades thereto, unless a SUN licensee makes a claim or commences any action against Licensee or its licensee for infringement of the Intellectual Property Rights of the SUN licensee, where the infringement claim is based upon Licensee's or its licensee's use of the Technology or a Derivative Work or Independent Work thereof.

    (ii) Licensee further agrees that with respect to each Upgrade, Licensee will notify SUN, within sixty (60) days after receiving the Upgrade, whether Licensee believes the making, use, or sale of such Upgrade infringes or may infringe (in the case of a patent application) any of Licensee's Available Patent Rights (as defined below). (Any of Licensee's patent applications that are the subject of such notice shall be confidential and "for attorney's eyes only".) If Licensee does not deliver such notice, then Licensee agrees that it shall not commence any action against SUN or its licensees for infringement of claims of Licensee's Patent Rights, which patent claims would be infringed by the making, use, sale, offer for sale, or importation, during the Term, of such Upgrade, unless a SUN licensee makes a claim or commences any action against Licensee or its licensee for infringement of the Intellectual Property Rights of the SUN licensee, where the infringement claim is based upon Licensee's or its licensee's use of the Technology or a Derivative Work or Independent Work thereof. "Available Patent Rights" are Licensee's Patent Rights excluding the set of Licensee's patents and patent applications which have an effective filing date after the Effective Date, are in the area of compiler, interpreter or class libraries technologies, and name as inventors Licensee's employees or contractors who had access to the source code for the Java Compiler, Java Runtime Interpreter, or Java Classes, respectively (the "Java Team Patents"). With respect to Java Team Patents, Licensee agrees to the non-assertion provisions stated in Section 5.6(a)(i) and further agrees that such Section shall also apply to Upgrades.

    (iii) If Licensee notifies SUN in writing of a patent issue pursuant to Section 5.6(a)(ii), Licensee may, at its option, enter into good faith negotiations to determine a reasonable royalty to be paid Licensee for the use of such Patent Rights by SUN and SUN licensees. If such negotiations are unsuccessful, Licensee may, at its option, request binding arbitration to determine a reasonable royalty to be paid by Licensee for the use of such Patent Rights by SUN and SUN licensees. SUN agrees to enter into such arbitration and further agrees that any license established through such arbitration shall include a termination provision whereby the license may be terminated by Licensee if a SUN licensee makes a claim or commences any action against Licensee or its licensee for infringement of the Intellectual Property Rights of the SUN licensee. If no patent license agreement is established, Licensee agrees that is will take no action against SUN or SUN's licensees for twelve (12) months after it notifies SUN pursuant to Section 5.6(a)(ii). For a given Upgrade, if no patent license agreement is established, Licensee will not be granted rights under Section 2, except to the extent necessary to meet the obligations established by other Sections of this Agreement.

  b.  Non-Assertion by SUN. SUN agrees that it shall not commence any action against Licensee or its licensees for infringement of the patent claims included in SUN's Patent Rights which would be infringed by the making, use, sale, offer for sale, or importation, during the Term, of the Java Reference Implementation, unless Licensee's licensee makes a claim or commences any action against SUN or SUN's licensee for infringement of the Intellectual Property Rights of Licensee's licensee, where the infringement claim is based upon SUN's or SUN's licensee's use of the Java Reference Implementation or a Derivative Work or Independent Work thereof.

  5.7  Internet Explorer. Licensee agrees that it shall make best efforts to include the Java Application Environment 1.0 or a Derivative Work or Independent Work thereof, excluding the Documentation, in the first new version of Internet Explorer that is released after the Effective Date (i.e., Internet Explorer 3.0).

  5.8  Non-PC Platforms. Licensee agrees that it shall treat the information that this Agreement includes a license to the Technology for Non-PC Platforms as "Confidential Information," as such term is defined in Section 7.1 of this Agreement, and shall not disclose such information until such time as Licensee releases one (1) Product for Non-PC Platforms for beta testing and shall provide SUN with timely notice thereof.

6.0  REPRESENTATIONS AND WARRANTIES; DISCLAIMER

  6.1  Representations and Warranties of SUN. SUN hereby represents and warrants that:

  (a)  SUN has authorized the person who has signed this Agreement for SUN to execute and deliver this Agreement to Licensee on behalf of SUN;

  (b)  it has not previously granted and will not grant any rights in the Technology to any third party that are inconsistent with the rights granted to Licensee herein;

  (c)  the media on which the Technology is recorded will be free from defects in materials and workmanship for a period of ninety (90) days after delivery. SUN's sole liability with respect to breach of this warranty is to replace the defective media. Except as expressly provided in this Section 6.l(c), SUN licenses the Technology and Documentation to Licensee on an "AS IS" basis.

  6.2  Representations and Warranties of Licensee. Licensee hereby represents and warrants that:

  (a)  Licensee has authorized the person who has signed this Agreement for Licensee to execute and deliver this Agreement to Licensee on behalf of Licensee;

  (b)  it has not previously granted and will not grant any rights in the Java Reference Implementation to any third party that are inconsistent with the rights granted to SUN herein;

  (c)  the media on which the Java Reference Implementation shall be recorded shall be free from defects in materials and workmanship for a period of ninety (90) days after delivery. Licensee's sole liability with respect to breach of this warranty is to replace the defective media. Except as expressly provided in this Section 6.2(c) Licensee licenses the Java Reference Implementation to Licensee on an "AS IS" basis.

  6.3  General Disclaimer. EXCEPT AS SPECIFIED IN THIS AGREEMENT ALL EXPRESS OR IMPLIED REPRESENTATIONS AND WARRANTIES, INCLUDING ANY IMPLIED WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT, ARE HEREBY DISCLAIMED.

  6.4  Limitation. The warranties set forth in this Article 6.0 are expressly subject to Section 9.0 (Limitation of Liability).

7.0  CONFIDENTIAL INFORMATION

  7.1  Confidential Information. For the purposes of this Agreement, "Confidential Information" means the Source Code form of the Technology, the Java Reference Implementation, Licensee-authored Derivative Works of the Technology, the Licensee-authored Independent Works of the Technology, and the SUN-authored Derivative Works and Independent Works of the Java Reference Implementation and that information that relates to (i) SUN hardware or software, (ii) Licensee hardware or software, (iii) the customer lists, business plans and related information of either party, and (iv) any other technical or business information of the parties, including the terms and conditions of this Agreement. In all cases, information which a party wishes to be treated as "Confidential Information" shall be marked as "confidential" or "proprietary" (or with words of similar import) in writing by the disclosing party on any tangible manifestation of the information transmitted in connection with the disclosure, or, if disclosed orally, designated as "confidential" or "proprietary" (or with words of similar import) at the time of disclosure or within a reasonable time thereafter unless the circumstances of the disclosure indicate that such disclosure is intended by a party to be confidential.

  7.2  Preservation of Confidentiality. The parties agree that all disclosures of Confidential Information (as defined under Section 7.1 above) shall be governed by and treated in accordance with the terms of the Confidential Disclosure Agreement (the "CDA") attached hereto as Exhibit C and incorporated herein by reference, modified as follows:

  (a)  The definition of "Confidential Information" shall be as set forth in Section 7.1 above notwithstanding any definition set forth in the CDA;

  (b)  The use of Confidential Information shall be limited to the scope of the licenses provided in this Agreement;

  (c)  the obligations of confidentiality expressed in the CDA shall extend three (3) years beyond termination or expiration of this Agreement, except with respect to Source Code form of the Technology and the Java Reference Implementation, which shall be held confidential in perpetuity; and

  (d)  the term of the CDA shall extend to coincide with the Term for purposes of disclosures of Confidential Information for purposes of this Agreement.

8.0  RESIDUAL KNOWLEDGE; INDEPENDENT DEVELOPMENT

  8.1  Residual Knowledge. Nothing in this Agreement is intended to preclude either party from using Residual Knowledge. The term "Residual Knowledge" means ideas, concepts, know-how or techniques related to the disclosing party's technology that are retained by the unaided memories of the receiving party's employees who have had access to Confidential Information consistent with the terms of this Agreement. An employee's memory will be considered to be unaided if the employee has not intentionally memorized the Confidential Information for the purpose of retaining and subsequently using or disclosing it. The receiving party's use of Residual Knowledge is subject to valid patents, copyrights, trade secret and semiconductor mask work rights of the disclosing party.

  8.2  Independent Development. Except as provided in Section 5.7, notwithstanding any other provision of this Agreement, Licensee shall have no obligation to market, sell, license or otherwise distribute the Technology or Derivative Works thereof, either alone or in any Product and, except as provided in Section 7, nothing in this Agreement shall be construed as restricting Licensee's ability to acquire, license, develop, manufacture or distribute technology that is similar to the Technology and performs the same or similar functions as the Technology, or to market and distribute such similar technology in addition to, or in lieu of the Technology. Licensee agrees that the terms stated in this Section 8.2 does not constitute a license grant by SUN to Licensee to any SUN Intellectual Property Rights and that Licensee's license rights to are set forth in other Sections of this Agreement.

9.0  INDEMNIFICATION

  9.1  Indemnification by Sun. SUN shall, at its expense and Licensee's request, defend any claim or action brought against Licensee and Licensee's affiliates, directors, officers, employees, agents and independent contractors, that arises from or is related to any claim that (a) the Technology infringes any copyrights or trade secrets; (b) SUN's Independent Works and Derivative Works of the Java Reference Implementation are the subject of a product liability claim by any third party; (c) SUN's Independent Works and Derivative Works of the Java Reference Implementation are the subject of claims in tort or for breach of contract by SUN, or (d) any other claim which, if true, would constitute a breach of a warranty by SUN in Section 6.1, and SUN will indemnify and hold Licensee harmless from and against any costs, damages and fees reasonably incurred by Licensee, including but not limited to fees of attorneys and other professionals, that are attributable to such claim. The foregoing rights to defense and indemnity shall exclude all claims for infringement of Intellectual Property Rights for which SUN has a right to indemnification by Licensee pursuant to Section 9.2. In the event of a claim against Licensee by a third party related to the Java Compatibility Logo, SUN shall promptly elect and provide notice to Licensee will either indemnify and defend Licensee with respect to such claim or decline to provide such defense and indemnity, but release Licensee from the obligation to ship the Product to the country (and related countries) in which such claim arose. In addition, Licensee may immediately cease use of the Java Compatibility Logo in any country (and related countries) in the event of a claim by a third party related to the Java Compatibility Logo. Licensee shall: (i) provide SUN reasonably prompt notice in writing of any such claim or action and permit SUN, through counsel mutually acceptable to Licensee and SUN, to answer and defend such claim or action; and (ii) provide SUN information, assistance and authority, at SUN's expense, to help SUN to defend such claim or action. SUN will not be responsible for any settlement made by Licensee without SUN's written permission, which permission will not be unreasonably withheld. Notwithstanding the foregoing, SUN shall have no obligation to indemnify Licensee for claims, demands, costs, liabilities, losses, expenses and damages that exceed, in the aggregate, Seventeen Million Five Hundred Thousand Dollars ($17,500,000).

  Licensee shall have the right to employ separate counsel at Licensee's expense and participate in the defense of any claim or action. SUN shall reimburse Licensee upon demand for any payments made or loss suffered by it at any time after the date hereof, based upon the judgment of any court of competent jurisdiction or pursuant to a bona fide compromise or settlement of claims, demands, or actions, in respect to any damages related to any claim or action under this Section 9.1.

  SUN may not settle any claim or action under this Section 9.1 on Licensee's behalf without first obtaining Licensee's written permission, which permission will not be unreasonably withheld. In the event Licensee and SUN agree to settle a claim or action, SUN agrees not to publicize the settlement without first obtaining Licensee's written permission, which permission will not be unreasonably withheld.

  Notwithstanding the foregoing, should the Technology or portion thereof be held to constitute an infringement or use as contemplated by this Agreement be enjoined or be threatened to be enjoined, SUN shall promptly notify Licensee and immediately, at SUN's expense: (i) procure for Licensee the right to continue use the Technology or portion thereof, as applicable, as licensed in this Agreement; or (ii) replace or modify the Technology or portion thereof with a version that is non-infringing, provided that the replacement or modified version satisfies all applicable Java Test Suites and Java Language Test Suites. If (i) or (ii) are not available to SUN, in addition to any damages or expenses reimbursed under this Section 9.1, SUN shall refund to Licensee all amounts paid to SUN by Licensee under this Agreement.

  9.2  Indemnification by Licensee. Licensee shall at its expense and SUN's request, defend any claim or action brought against SUN and SUN's affiliates, directors, officers, employees, agents and independent contractors, that arises from or is related to a claim that (a) the Products (excluding any Supplemental Java Classes that have not been materially modified by Licensee) infringe any copyrights or trade secrets; (b) the Products (excluding any Supplemental Java Classes that have not been materially modified by Licensee) are the subject of a product liability claim by any third party; (c) the Products (excluding any Supplemental Java Classes that have not been materially modified by Licensee) are the subject of claims in tort or for breach of contract by Licensee relating to the Products, and (d) any other claim which, if true, would constitute a breach of a warranty by Licensee in Section 6.2, and Licensee will indemnify and hold SUN harmless from and against any costs, damages and fees reasonably incurred by SUN, including but not limited to fees of attorneys and other professionals, that are attributable to such claim. The foregoing rights to defense and indemnity shall exclude all claims for infringement of Intellectual Property Rights for which Licensee has a right to indemnification by SUN pursuant to Section 9.1 SUN shall: (i) provide Licensee reasonably prompt notice in writing of any such claim or action and permit Licensee, through counsel mutually acceptable to Licensee and SUN, to answer and defend such claim or action; and (ii) provide Licensee information, assistance and authority, at Licensee's expense, to help Licensee to defend such claim or action. Licensee will not be responsible for any settlement made by SUN without Licensee's written permission, which permission will not be unreasonably withheld. Notwithstanding the foregoing, Licensee shall have no obligation to indemnify SUN for claims, demands, costs, liabilities, losses, expenses and damages that exceed, in the aggregate, Seventeen Million Five Hundred Thousand Dollars ($17,500,000), except with respect to claims, demands, costs, liabilities, losses, expenses and damages that relate to claims made pursuant to paragraphs (b) and (c).

  SUN shall have the right to employ separate counsel at SUN's expense and participate in the defense of any claim or action. Licensee shall reimburse SUN upon demand for any payments made or loss suffered by it at any time after the date hereof, based upon the judgment of any court of competent jurisdiction or pursuant to a bona fide compromise or settlement of claims, demands, or actions, in respect to any damages related to any claim or action under this Section 9.2.

  Licensee may not settle any claim or action under this Section 9.2 on SUN's behalf without first obtaining SUN's written permission, which permission will not be unreasonably withheld. In the event Licensee and SUN agree to settle a claim or action, Licensee agrees not to publicize the settlement without first obtaining SUN's written permission, which permission will not be unreasonably withheld.

  Notwithstanding the foregoing, should that portion of the Java Reference Implementation that is a Derivative Work of Licensee or a portion thereof (together, the "Licensee Work") be held to constitute an infringement or use as contemplated by this Agreement be enjoined or be threatened to be enjoined, Licensee shall promptly notify SUN and immediately, at Licensee's expense: (i) procure for SUN the right to continue use of the Java Reference Implementation as licensed in this Agreement; or (ii) replace or modify the Java Reference Implementation with a version that is non-infringing, provided that the replacement or modified version satisfies all applicable Java Test Suites and Java Language Test Suites. If (i) or (ii) are not available to Licensee, in addition to any damages or expenses reimbursed under this Section 9.2, Licensee shall refund to SUN all amounts paid to Licensee by SUN under this Agreement.

  9.3  THIS ARTICLE STATES THE ENTIRE LIABILITY OF THE PARTIES WITH RESPECT TO INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS BY THE TECHNOLOGY. THE PARTIES SHALL HAVE NO LIABILITY WITH RESPECT TO INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS OF EACH OTHER AND ANY THIRD PARTY AS A RESULT OF USE, LICENSE, OR SALE OF TECHNOLOGY OTHER THAN AS STATED HEREIN.

10.0  LIMITATION OF LIABILITY

  10.1  Limitation of Liability. Except for express undertakings to indemnify under this Agreement:

  a.  Each party's liability to the other for claims relating to this Agreement, whether for breach or in tort, shall be limited to the license fees paid by Licensee for the Technology; and

  b.  IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL OR PUNITIVE DAMAGES IN CONNECTION WITH OR ARISING OUT OF THIS AGREEMENT (INCLUDING LOSS OF PROFITS, USE, DATA, OR OTHER ECONOMIC ADVANTAGE), NO MATTER WHAT THEORY OF LIABILITY, EVEN IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN THIS AGREEMENT FAIL OF THEIR ESSENTIAL PURPOSE AND EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OR PROBABILITY OF SUCH DAMAGES. FURTHER, LIABILITY FOR SUCH DAMAGE SHALL BE EXCLUDED, EVEN IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN THIS AGREEMENT FAIL OF THEIR ESSENTIAL PURPOSE. The provisions of this Section 10.0 allocate the risks under this Agreement between SUN and Licensee and the parties have relied upon the limitations set forth herein in determining whether to enter into this Agreement.

  10.2  High Risk Activities.

  a.  The Technology is not fault-tolerant and is not designed, manufactured or intended for use or resale as on-line control equipment in hazardous environments requiring fail-safe performance, such as in the operation of nuclear facilities, aircraft navigation or communication systems, air traffic control, direct life support machines, or weapons systems, in which the failure of the Technology or Product(s) could lead directly to death, personal injury, or severe physical or environmental damage ("High Risk Activities"). SUN specifically disclaims any express or implied warranty of fitness for High Risk Activities. Licensee will not knowingly use, distribute or resell the Technology or Products for High Risk Activities and will ensure that its customers and end-users of its Products are provided with a copy of the notice specified in the first sentence of this Section 10.2(a).

  b.  The Java Reference Implementation shall not be fault-tolerant and shall not be designed, manufactured or intended for use or resale as on-line control equipment in hazardous environments requiring fail-safe performance, such as in the operation of nuclear facilities, aircraft navigation or communication systems, air traffic control, direct life support machines, or weapons systems, in which the failure of the Java Reference Implementation could lead directly to death, personal injury, or severe physical or environmental damage. Licensee specifically disclaims any express or implied warranty of fitness for High Risk Activities. SUN will not knowingly use, distribute or resell the Java Reference Implementation or products incorporating all or a portion of the Java Reference Implementation for High Risk Activities and will ensure that its customers and end-users are provided with a copy of the notice specified in the first sentence of this Section 10.2(b).

  c.  In the event SUN permits its licensees, under SUN's standard terms and conditions for the Technology, to engage in High Risk Activities that are in addition to the activities described in this Section, SUN shall promptly notify Licensee and the rights hereunder shall be automatically amended accordingly.

11.0  TERM AND TERMINATION

  11.1  Term. The term of this Agreement shall begin on the Effective Date and shall continue for a period of five (5) years, unless extended in accordance with this Section 11.1 or terminated prior to expiration in accordance with Section 11.2 or Section 12.6 (the "Term"). Each year for five (5) consecutive years following expiration of the initial five (5) year term, at Licensee's sole option, Licensee may extend the term of this Agreement for one (1) additional year, provided, that Licensee shall pay SUN an additional Three Million Five Hundred Thousand Dollars ($3,500,000) in license fees for each such additional year in accordance with the terms of Section 4.1. Licensee shall indicate its intent to extend the Agreement by written notice to SUN within thirty (30) days prior to the expiration of the preceding term.

  11.2  Default and Remedies: Termination.

  a.  Licensee agrees that if, at any time during the Term and for a period of ten (10) years thereafter, an officer, director or General Manager of a product group of Licensee intentionally and willfully makes the Source Code to the Technology generally available to the public, it shall be obligated to pay SUN the amount of Thirty Five Million ($35,000,000) in liquidated damages.

  b.  Licensee agrees that if at any time during the Term an officer, director, or General Manager of a product group of Licensee willfully and intentionally breaches a material provision of Section 2.6 of this Agreement and Licensee fails to cure such breach within a period of one (1) year after the date that SUN provides Licensee with notice thereof, SUN shall have the right to terminate this Agreement and terminate the license grants set forth in Section 2, except with respect to any Products, including any upgrades, versions or successors thereto,which are, as of the date of termination, either (i) commercially available to the public, or (ii) being beta tested by third parties as of the date of termination or (iii) are made commercially available to the public within six (6) months after the date of termination (collectively, "Surviving Products"). Licensee's rights under Section 2 of this Agreement with respect to Surviving Products shall survive any expiration or termination of this Agreement.

  c.  Licensee may terminate this Agreement only if SUN fails to deliver Technology in satisfaction of Licensee's acceptance criteria, after notice to SUN and an opportunity to cure, in accordance with Section 12.6.

  d.  Except as expressly stated in this Section 11.2 and in Section 12.6, the parties agree that in the event that either party breaches any material term of this Agreement, the non-breaching party shall deliver notice thereof to the breaching party and the breaching party shall have thirty (30) days from receiving such notice to cure such breach. If the breach continues after such 30-day period, the non-breaching party's sole remedy shall be to seek monetary damages in a court of competent jurisdiction.

  11.3  Effect of Expiration or Termination. In the event of expiration of this Agreement in accordance with Section 11.1 or termination in accordance with Section 11.2(a), Licensee shall be authorized to continue exercising all of the rights granted pursuant to Section 2 of this Agreement, subject to its continued compliance with the Test Suites current at the time of expiration or termination; provided, that SUN shall have no obligation to provide any further Upgrades to Licensee after the date of such expiration or termination. All licenses or sublicenses granted by either party under the terms of this Agreement prior to expiration or termination shall remain in full force and effect and shall not be affected by termination or expiration.

  11.4  No Waiver. The failure of either party to enforce any provision of this Agreement shall not be deemed a waiver of that provision.

  11.5  Survival. The parties' rights and obligations under Sections 2.0, 5.1, 5.2, 5.3, 5.4, 6.0, 7.0, 8.0 9.0, 10.0, and 11.0 shall survive expiration or termination of this Agreement, except that Section 2 of this Agreement shall not survive termination of this Agreement pursuant to Section 11.2(b).

12.0  MISCELLANEOUS

  12.1  Notices. All notices must be in writing and delivered either in person or by certified mail or registered mail, postage prepaid, return receipt requested, to the person(s) and address specified below. Such notice will be effective upon receipt.

  12.2  Partial Invalidity. If any term or provision of this Agreement is found to be invalid under any applicable statute or rule of law then, that provision notwithstanding, this Agreement shall remain in full force and effect and such provision shall be deleted unless such a deletion would frustrate the intent of the parties with respect to any material aspect of the relationship established hereby, in which case, this Agreement and the licenses and rights granted hereunder shall terminate.

  12.3  Complete Understanding. This Agreement and the Exhibits hereto constitute and express the final, complete and exclusive agreement and understanding between the parties with respect to its subject matter and supersede all previous communications, representations or agreements, whether written or oral, with respect to the subject matter hereof. No terms of any purchase order or similar document issued by Licensee shall be deemed to add to, delete or modify the terms and conditions of this Agreement. This Agreement may not be modified, amended, rescinded, canceled or waived, in whole or in part, except by a written instrument signed by the parties.

  12.4  Compliance with Laws. The Technology, including technical data, is subject to U.S. export control laws, including the U.S. Export Administration Act and its associated regulations, and may be subject to export or import regulations in other countries. Licensee agrees to comply strictly with all such regulations and acknowledges that it has the responsibility to obtain such licenses to export, re-export or import the Technology or Product(s) as may be required after delivery to Licensee.

  The Java Reference Implementation shall be subject to U.S. export control laws, including the U.S. Export Administration Act and its associated regulations, and may be subject to export or import regulations in other countries. SUN agrees to comply strictly with all such regulations and acknowledges that it has the responsibility to obtain such licenses to export, re-export or import the Java Reference Implementation or products that incorporate such technology as may be required after delivery to SUN.

  The parties shall make reasonable efforts to notify and inform their employees having access to the technology that is the subject of this Agreement of their respective obligations to comply with the requirements stated in this Section 12.4.

  12.5  Disclaimer of Agency. The relationship created hereby is that of licensor and licensee and the parties hereby acknowledge and agree that nothing herein shall be deemed to constitute Licensee as a franchisee of SUN. Licensee hereby waives the benefit of any state or federal statutes dealing with the establishment and regulation of franchises.

  12.6  Delivery and Acceptance. On the Effective Date, SUN shall deliver to Licensee one (1) complete copy of the deliverables set forth in Exhibit A (i.e., the Technology and the Documentation) for the Win32 Platforms and the Apple Macintosh operating system platform. Within 30 days after receiving such deliverables, Licensee shall confirm that the Source Code to the Technology, when compiled to binary form, conforms to SUN's publicly available Java Application Environment 1.0 standard (the "JAE"). Such deliverables shall be deemed accepted by Licensee within 30 days after receipt unless Licensee notifies Sun in writing within such 30 day period that the Source Code to the Technology does not conform to the JAE. If Licensee notifies SUN of a non-conformance, SUN shall promptly deliver to Licensee one (1) replacement copy of the deliverables set forth in Exhibit A for the Win32 Platforms and the Apple Macintosh operating system platform, which do conform to the JAE. If the replacement copy of the Technology also does not conform to the JAE, Licensee shall have the option to terminate this Agreement.

  12.7  Assignment and Change in Control. This Agreement may not be assigned by either party, without the prior written consent of the other party, which consent shall not be unreasonably withheld or delayed, except that SUN may assign this Agreement to a majority-owned subsidiary.

  12.8  Construction. This Agreement has been negotiated by SUN and Licensee and by their respective counsel. This Agreement will be fairly interpreted in accordance with its terms and without any strict construction in favor of or against either party.

  12.9  Force Majeure. Except for the obligation to pay money, neither party shall be liable to the other party for non-performance of this Agreement, if the non-performance is caused by events or conditions beyond that party's control and the party gives prompt notice under Section 11.1 and makes all reasonable efforts to perform.

  12.10  Exhibits.

  The following are included herein by reference as integral parts of this Agreement:

• Exhibit A- Description of Technology and Documentation
• Exhibit B- [Intentionally left blank]
• Exhibit C- Confidential Disclosure Agreement
• Exhibit D- Document Type Definition

  12.11  Section References. Any reference contained herein to an article of this Agreement shall be meant to refer to all subsections of the article.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly authorized representatives.

EXHIBIT A

DESCRIPTION OF TECHNOLOGY AND DOCUMENTATION

To the extent that SUN has not already delivered any of the following listed items to Licensee as of the Effective Date of the Agreement to which this Exhibit A is attached, SUN shall deliver each of the following items to Licensee under the terms of the Agreement.

I.  Technology: Java Applet Environment

The Java Applet Environment consists of the following source code:

A.  The following Java Classes:

B.  The Java Runtime Interpreter, which implements the Java Virtual Machine*.

II.  Technology: Java Compiler

The compiler consists of the following source code:

III.  Documentation:

OEM Java Language Specification

OEM Java API Documentation

OEM Java Virtual Machine Specification

EXHIBIT B

IDENTIFICATION OF LICENSEE'S PRODUCTS

[Intentionally left blank]

EXHIBIT C

CONFIDENTIAL DISCLOSURE AGREEMENT
BI-LATERAL DISCLOSURE
Effective Date: November 30, 1995

Sun Microsystems, Inc., by and through the Java Products Group, (collectively "Sun") and "Party" indentified below agree that:

1.  Party is identified as Microsoft Corporation.

2.  a) The information disclosed under this Agreement ("Information") includes the following:

Sun Information: business information related to Java products and associated technology, Java product licensing practices and fees, research and development plans, customers, and marketing and future business plans.

 

Party Information: use of Java technology in Microsoft products.

 

3.  This Agreement covers only Information which is disclosed between the Effective Date and twelve (12) months thereafter. Each party's obligations regarding Information expire three (3) years after the date of disclosure (except for Sun source code, which shall be protected in perpetuity). Information shall be used solely as permitted above, and shall not be disclosed to a third party other than a subsidiary, agent, or subcontractor of the receiving party who has agreed to be bound by the terms of this Agreement. Each party shall protect Information of the other party using the same degree of care, but no less than a reasonable degree of care, as such party uses to protect its own confidential information. Upon termination of this Agreement or the disclosing party's written request, the receiving party shall cease use of Information and return or destroy all Information.

4.  Each party shall be obligated to protect only Information: (a) disclosed in tangible form clearly labeled as confidential or proprietary at the time of disclosure; or (b) disclosed in non-tangible form, identified as confidential or proprietary at the time of disclosure, and summarized in writing, designated as confidential or proprietary, and delivered to the other party within thirty (30) days after disclosure.

5.  This Agreement imposes no obligation upon the receiving party with respect to Information which: (a) was in the possession of, or was known by, the receiving party prior to its receipt from the disclosing party, without an obligation to maintain its confidentiality; (b) is or becomes generally known to the public without violation of this Agreement; (c) is obtained by the receiving party from a third party, without an obligation to keep such information confidential; or (d) is independently developed by the receiving party without use of Information.

6.  Disclosure of the other party's Information is not prohibited if prior notice is given to the other party and such disclosure is: (a) compelled pursuant to a legal proceeding or (b) otherwise required by law. Information is delivered "AS IS", and all representations and warranties, express or implied, including fitness for a particular purpose, merchantability, and noninfringement, are hereby diclaimed. Neither party has an obligation to sell or purchase any item from the other party. Neither party shall be liable for any special, incidental, consequential or punitive damages by reason of any alleged breach of this Agreement based on any theory of liability. Nothing in this Agreement shall be construed as a representation that the receiving party will not develop or acquire information that is the same as or similar to Information, provided that the receiving party does not do so in breach of this Agreement. The receiving party agrees that any breach of this Agreement will result in irreparable harm to the disclosing party for which damages would be an inadequate remedy and, therefore, in addition to its rights and remedies otherwise available at law, the disclosing party shall be entitled to equitable relief, including injunction, in the event of such breach. The receiving party does not acquire any rights in Information, except the limited right to use Information as described above.

7.  This Agreement constitutes the entire agreement between the parties concerning its subject matter. All additions or modifications to this Agreement must be made in writing and must be signed by an authorized representative of each party. The parties agree to comply strictly with all applicable export control laws and regulations. Any action related to this Agreement will be governed by California law, excluding choice of law rules.

EXHIBIT D

DOCUMENT TYPE DEFINITION

In order to ensure interoperability between all Java compliant browsers, SUN needs to define the exact notation of applets in HTML documents. The format of the APPLET tag is chosen to be implementation language independent and SGML compliant. SGML compliance is important if the APPLET tag is to be accepted as part of the HTML standard in the future.

Example:
 

<applet codebase=``http://java.sun.com/people/avh/classes''
code=``BounceItem.java'' width=400 height=300>
</applet>
 

The applet tag has the following attributes:
 

Note that the position of the applet in the page is determined by the width, height, align, vspace and hspace attributes just like the img tag.

Applets can access the above attributes using the getParameter() method call defined in the Applet class. All attribute/parameter names are automatically folded to lower case. Applets that require parameters in addition to the predefined ones need to use the param tag. It is unfortunately not legal in SGML for a tag to have an arbitrary list of attributes. That is why additional applet parameters explicitly using the PARAM tag have to be named. For example:
 

<applet code=``DateItem.class'' alt=``The Date'' width=200 height=40>
<param name=``speaker'' value=``avh''>
<param name=``translator'' value=``DutchTime''>
</applet>
 

In addition to the ALT tag, Licensee can include additional text and markup before the applet end tag. Java compliant browsers will ignore this text, but browsers that do not understand the applet tag will display it instead of the applet. For example:
 

<applet codebase=classes code=ImageLoop.class width=100 height=100>
<param name=imgs value=``images/duke''>
 

If Licensee were using a Java enabled browser, Licensee would see an animation instead of this static image.
 

<p>
<img src=images/duke/T1.gif''>
</applet>
 

Below is the formal SGML DTD for the APPLET and PARAM tags.
 

<!ELEMENT APPLET -- -- (PARAM*, (%text;)*)>
<!ATTLIST APPLET
 

CODEBASE CDATA #IMPLIED ---- code base ----
CODE CDATA #REQUIRED ---- code file ----
ALT CDATA #IMPLIED ---- alternative string ----
NAME CDATA #IMPLIED ---- the applet name ----
HEIGHT NUMBER #REQUIRED
ALIGN (left|right|top|testtop|middle| absmiddle|baseline|bottom|absbottom) baseline
VSPACE NUMBER #IMPLIED
HSPACE NUMBER #IMPLIED
 

NAME NAME #REQUIRED ---- The name of the parameter ----
VALUE CDATA #IMPLIED ---- The value of the parameter ----
 

*As used on this web site, the terms "Java virtual machine" or "JVM" mean a virtual machine for the Java platform.