AMENDMENT NO. 3
TO THE TECHNOLOGY LICENSE AND DISTRIBUTION AGREEMENT
BETWEEN SUN MICROSYSTEMS, INC. AND OPENTV, INC.
This Amendment
No. 3 (“Amendment”) to the Technology License and
Distribution Agreement dated March 20, 1998, as amended, (the
“Agreement”), by and between Sun Microsystems, Inc., a
Delaware corporation with a principal place of business at 4150
Network Circle, Santa Clara, California 95054 (“Sun”),
and OpenTV, Inc., a Delaware corporation with a principal place of
business now located at 275 Sacramento Street, San Francisco,
California 94111 (“Licensee”), is entered into this
30 day of June 2005 (the “Amendment Effective
Date”) by and between the same parties.
This Amendment
is in addition and is subject to the Agreement. Except as expressly
amended herein, the Agreement and all amendments and exhibits
thereto shall remain unaltered and in full force and effect. In the
event of any conflict or inconsistency between the terms of this
Amendment and the Agreement, the terms of this Amendment shall
control. Capitalized terms not defined herein shall have the same
meaning as the identical capitalized terms in the Agreement, unless
otherwise stated.
Licensee
desires to amend the Agreement to add Sun’s Java 2
Platform™ Micro Edition, Connected Device Configuration and
Foundation Profile, Personal Basis Profile, and Connected Device
Configuration HotSpot™ Implementation to the Technology
previously licensed by Licensee thereunder. Sun is willing to
license same to Licensee pursuant to the terms and conditions of
the Agreement as amended by this Amendment. The parties therefore
amend the Agreement as follows:
1.1 The parties
agree that the following is hereby added to the definition of
“Technology”: Java 2 Platform, Micro Edition, Connected
Device Configuration and Foundation Profile (“CDC/FP”),
Personal Basis Profile (“PBP”), and the Connected
Device Configuration HotSpot Implementation (“CDC-HI”),
as more fully described in Exhibits C-3, C-4, and C-5,
respectively, and Upgrades thereto to the extent Licensee is
entitled to receive them.
1.2 The parties
agree that the following is hereby added to the definition of
“Java Environment”: Java 2 Platform, Micro Edition,
Connected Device Configuration and Foundation Profile, Personal
Basis Profile, and Connected Device Configuration HotSpot
Implementation, as more fully described in Exhibits C-3, C-4, and
C-5, respectively.
1.3 The
following is hereby added as section 1.5.1 to the Agreement:
“Device Manufacturer” means the original equipment
manufacturer of a Device Manufacturer Product.
1.4 The
following is hereby added as section 1.5.2 to the Agreement:
“Device Manufacturer Product” means any digital device
capable of executing software programs and that may be connected to
or is included as a part of a television device and is loaded with
Licensee’s Product.
2.0
Additional Technology Exhibits.
Exhibit C-3,
C-4, and C-5 attached hereto, are hereby added to the
Agreement.
3.0 Schedule
of Fees and Royalties.
The following
shall apply to the Technologies added in Exhibits C-3, C-4, and
C-5:
a. Upfront
Source License Fee : Except with regard to CDC-HI, no upfront
source license fees shall apply to the Technologies added by this
Amendment. With respect to CDC-HI, an annual upfront source license
fee in the amount of fifty thousand dollars ($50,000.00) per year
shall apply upon delivery of the source code form of CDC-HI.
Notwithstanding anything to the contrary in the Agreement, Sun
shall have no obligation to deliver any implementation of CDC-HI to
Licensee except upon mutual agreement with Licensee and subject to
Licensee’s
payment of the
foregoing fee (and Licensee may not accept source code of CDC-HI
from any Sun licensee unless expressly permitted by Sun in
writing).
b. Source
Support (if applicable) : as set forth in separate support
agreement.
c. Java
Test Suite Support Fee : as set forth in the separate Java
Test Suite support agreement.
d. Binary
Distribution Royalties per unit Prepayment :
i.
Licensee agrees to pay a non-refundable, non-transferable
“Royalty Prepayment” in the amount of three million,
sixty-thousand dollars ($3.06M) no later than July 29, 2005.
Royalties due for units distributed on or before December 28,
2009 may be satisfied by deduction against the Royalty Prepayment.
Any portion of the Royalty Prepayment not used by December 28,
2009, shall be deemed forfeited. Upon timely payment of the Royalty
Prepayment, Licensee shall not be obligated to pay the Minimum
Payment due pursuant to Section 4 of Amendment no. 1, as
amended by Amendment no. 2, and no further payments shall be due by
Licensee under the Agreement except for such amounts which may
become payable under this Amendment.
ii.
Licensee must pay a royalty to Sun as provided below for each
Licensee Product unit distributed. Payment of royalties shall be
made quarterly, shall be due thirty (30) days following the
end of the calendar quarter to which they relate, and shall be
submitted with a written statement documenting the basis for the
royalty calculation. In any quarter in which no royalties are owed,
Licensee will submit a r
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