-----BEGIN PRIVACY-ENHANCED MESSAGE----- Proc-Type: 2001,MIC-CLEAR Originator-Name: webmaster@www.sec.gov Originator-Key-Asymmetric: MFgwCgYEVQgBAQICAf8DSgAwRwJAW2sNKK9AVtBzYZmr6aGjlWyK3XmZv3dTINen TWSM7vrzLADbmYQaionwg5sDW3P6oaM5D3tdezXMm7z1T+B+twIDAQAB MIC-Info: RSA-MD5,RSA, J3BfpjlzsdJQpOXLT7n67ITFsQEjqJhdFc3kYoCZmgVI0CNAU1xr53R4+S0GrN6o mBtD2qHt02Oz5z+yk5cbLg== 0000898430-99-004004.txt : 19991029 0000898430-99-004004.hdr.sgml : 19991029 ACCESSION NUMBER: 0000898430-99-004004 CONFORMED SUBMISSION TYPE: POS AM PUBLIC DOCUMENT COUNT: 2 FILED AS OF DATE: 19991028 FILER: COMPANY DATA: COMPANY CONFORMED NAME: INTERTRUST TECHNOLOGIES CORP CENTRAL INDEX KEY: 0001089717 STANDARD INDUSTRIAL CLASSIFICATION: SERVICES-COMPUTER PROGRAMMING SERVICES [7371] IRS NUMBER: 521672106 STATE OF INCORPORATION: DE FISCAL YEAR END: 1231 FILING VALUES: FORM TYPE: POS AM SEC ACT: SEC FILE NUMBER: 333-84033 FILM NUMBER: 99735580 BUSINESS ADDRESS: STREET 1: 4750 PATRICK HENRY BLVD. CITY: SANTA CLARA STATE: CA ZIP: 94086 BUSINESS PHONE: 408-855-0100 POS AM 1 POST EFFECTIVE AMENDMENT NO. 2 As filed with the Securities and Exchange Commission on October 28, 1999. Registration No. 333-84033 - -------------------------------------------------------------------------------- - -------------------------------------------------------------------------------- SECURITIES AND EXCHANGE COMMISSION Washington, D.C. 20549 ---------------- POST-EFFECTIVE AMENDMENT NO. 2 TO FORM S-1 REGISTRATION STATEMENT Under THE SECURITIES ACT OF 1933 ---------------- INTERTRUST TECHNOLOGIES CORPORATION (Exact Name of Registrant as Specified in its Charter) ---------------- Delaware 7371 52-1672106 (State or Other (Primary Standard Industrial (I.R.S. Employer Jurisdiction of Classification Code Number) Identification Number) Incorporation or Organization) 4750 Patrick Henry Blvd., Santa Clara, CA 95054 (408) 855-0100 (Address, including zip code, and telephone number, including area code, of registrant's principal executive offices) ---------------- Victor Shear Chief Executive Officer and Chairman of the Board InterTrust Technologies Corporation 4750 Patrick Henry Blvd., Santa Clara, CA 95054 (408) 855-0100 (Name, address, including zip code, and telephone number, including area code, of agent for service) Copies to: Robert V. Gunderson, Jr., Esq. Laird H. Simons III, Esq. Bennett L. Yee, Esq. Katherine Tallman Schuda, Esq. William E. Growney, Jr., Esq. Tyler R. Cozzens, Esq. Amy S. Cohen, Esq. Pamela A. Sergeeff, Esq. Margaret E. Paige, Esq. Fenwick & West LLP Gunderson Dettmer Stough Two Palo Alto Square Villeneuve Franklin & Hachigian, LLP Palo Alto, California 94306 155 Constitution Drive (650) 494-0600 Menlo Park, California 94025 (650) 321-2400 ---------------- Approximate date of commencement of proposed sale to the public: As soon as practicable after the effective date of this Registration Statement. If any of the securities being registered on this Form are to be offered on a delayed or continuous basis pursuant to Rule 415 under the Securities Act of 1933, as amended, check the following box. [_] If this Form is filed to register additional securities for an offering pursuant to Rule 462(b) under the Securities Act, please check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [_] If this Form is a post-effective amendment filed pursuant to Rule 462(c) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [_] If this Form is a post-effective amendment filed pursuant to Rule 462(d) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [X] If delivery of the prospectus is expected to be made pursuant to Rule 434, please check the following box. [_] - -------------------------------------------------------------------------------- - -------------------------------------------------------------------------------- EXPLANATORY NOTE This post-effective Amendment No. 2 to the Form S-1 Registration Statement is being filed for the sole purpose of amending an exhibit. PART II Information Not Required in Prospectus Item 13. Other Expenses of Issuance and Distribution The following table presents the costs and expenses, other than underwriting discounts and commissions, payable by us in connection with the sale of common stock being registered. All amounts are estimates except the SEC registration fee, the NASD filing fees, and The Nasdaq National Market listing fee. SEC registration fee............................................. $ 37,405 NASD filing fee.................................................. 10,965 Nasdaq National Market listing fee............................... 90,000 Printing and engraving expenses.................................. 150,000 Legal fees and expenses.......................................... 450,000 Accounting fees and expenses..................................... 250,000 Road show expenses............................................... 50,000 Blue sky fees and expenses....................................... 5,000 Custodian and transfer agent fees................................ 15,000 Miscellaneous fees and expenses.................................. 91,630 ---------- Total.......................................................... $1,150,000 ==========
Item 14. Indemnification of Directors and Officers Section 145 of the Delaware General Corporation Law authorizes a court to award or a corporation's board of directors to grant indemnification to directors and officers in terms sufficiently broad to permit indemnification under limited circumstances for liabilities, including reimbursement for expenses incurred, arising under the Securities Act of 1933, as amended (the "Securities Act"). Article VI, Section 6.1 of our bylaws provides for mandatory indemnification of our directors, officers, and employees to the maximum extent permitted by the Delaware General Corporation Law. Our sixth amended and restated certificate of incorporation provides that our officers and directors shall not be liable for monetary damages for breach of the officers' or directors' fiduciary duty as officers or directors to our stockholders and us. This provision in the sixth amended and restated certificate of incorporation does not eliminate the officers' or directors' fiduciary duty, and, in appropriate circumstances, equitable remedies like injunctive or other forms of non-monetary relief will remain available under Delaware law. In addition, each officer or director will continue to be subject to liability for breach of the officer's or director's duty of loyalty to us or our stockholders for acts or omissions not in good faith or involving intentional misconduct, for knowing violations of law, for actions leading to improper personal benefit to the officer or director, and for payment of dividends or approval of stock repurchases or redemptions that are unlawful under Delaware law. The provision also does not affect an officer's or director's responsibilities under any other law, like the federal securities laws or state or federal environmental laws. We have entered into indemnification agreements with our officers and directors, a form of which is attached as Exhibit 10.1 and incorporated by reference. The indemnification agreements provide our officers and directors with further indemnification to the maximum extent permitted by the Delaware General Corporation Law. Reference is made to Section 7 of the underwriting agreement contained in Exhibit 1.1 to this registration statement, indemnifying our officers and directors against limited liabilities. II-1 Item 15. Recent Sales of Unregistered Securities Since January 1, 1996, we have issued and sold the following securities: 1. We granted direct issuances or stock options to purchase 8,099,900 shares of our common stock at exercise prices ranging from $0.625 to $14.00 per share to employees, consultants, directors, and other service providers under our 1995 stock plan. At the closing of this offering, we will grant additional stock options to purchase 1,301,000 shares of our common stock at 85% of the initial public offering price and at the initial public offering price to employees, consultants and directors under and our 1999 equity incentive plan. We granted direct issuances or stock options to purchase 1,234,360 shares of our common stock at exercise prices ranging from $0.01 to $7.65 per share to service providers outside of the 1995 stock plan and 1999 equity incentive plan. 2. We issued and sold an aggregate of 2,182,050 shares of our common stock to employees, consultants, and other service providers for aggregate consideration of approximately $3,028,423 under direct issuances or exercises of options granted under our 1995 stock plan. We issued and sold an aggregate of 1,902,200 shares of our common stock to employees, consultants, and other service providers for aggregate consideration of approximately $1,215,131 under direct issuances or exercises of options granted under our 1992 stock plan. We issued and sold an aggregate of 320,360 shares of our common stock to employees, consultants, and other service providers for aggregate consideration of approximately $449,701 under direct issuances or exercises of options granted outside of the stock plans. 3. On February 29, 1996, we issued a warrant to purchase 16,000 shares of our class A voting common stock with an exercise price of $1.25 per share to Alexander Communications in connection with the payment of a convertible promissory note. The warrant was subsequently exercised and we issued 16,000 shares thereunder. 4. On April 24, 1996, we issued a warrant to purchase 8,000 shares of our class A voting common stock with an exercise price of $1.25 per share to John Holmgreen in connection with the payment of a convertible promissory note. The warrant was subsequently exercised and we issued 8,000 shares thereunder. 5. On April 24, 1996, we issued two warrants to purchase a total of 200,000 shares of our class A voting common stock with an exercise price of $1.25 per share to Otto Candies, LLC in connection with the payment of two convertible promissory notes. The warrants were subsequently exercised and we issued 200,000 shares thereunder. 6. On April 27, 1996, we issued a warrant to purchase 32,000 shares of our class A voting common stock with an exercise price of $1.25 per share to the Hubbs Family Trust in connection with the payment of a convertible promissory note. The warrant was subsequently exercised and we issued 32,000 shares thereunder. 7. In March, April, and June 1996, we issued and sold 3,966,666 shares of our series A preferred stock for an aggregate purchase price of approximately $10,135,000 to a group of investors under a stock purchase agreement. 8. In August and October 1996, June and December 1997, and January, March, April, July, August, September, November, and December 1998, we issued and sold 6,533,721 shares of our series B preferred stock for an aggregate purchase price of approximately $27,997,000 to a group of investors under a stock purchase agreement. II-2 9. On August 19, 1996, we issued a warrant to purchase 311,016 shares of our class B non-voting common stock to Upgrade Corporation of America. The warrant will be terminated upon the initial public offering of our common stock. 10. On November 1, 1996, we issued a warrant to purchase 10,000 shares of our class A voting common stock with an exercise price of $2.56 per share to the Rutherford Bolen Group. The warrant was subsequently exercised and we issued 10,000 shares thereunder. 11. On April 28, 1998, we issued a warrant to purchase 2,000 shares of our class B non-voting common stock with an exercise price of $1.50 per share to Peter Williams. The warrant was subsequently exercised and we issued 2,000 shares thereunder. 12. On June 4, 1998, we issued a warrant to purchase 3,000 shares of our class B non-voting common stock with an exercise price of $1.50 per share to Peter Williams. The warrant was subsequently exercised and we issued 3,000 shares thereunder. 13. On December 21, 1998, we issued a warrant to purchase 4,000 shares of our class B non-voting common stock with an exercise price of $1.75 per share to Bill Horne. 14. In March 1999, we issued and sold 850,000 shares of our series C preferred stock for an aggregate purchase price of approximately $5,007,000 to a group of investors under a stock purchase agreement. 15. In April and May 1999, we issued and sold 1,142,023 shares of our series D preferred stock for an aggregate purchase price of approximately $9,707,000 to a group of investors under a stock purchase agreement. 16. In July 1999, we issued and sold 1,309,700 shares of our series E preferred stock for an aggregate purchase price of approximately $15,716,000 to a group of investors under a stock purchase agreement and issued 83,333 shares of our series E preferred stock upon the conversion of a $1.0 million promissory note. 17. On September 7, 1999, we issued a warrant to purchase 325,000 shares of our class A voting common stock with an exercise price of $14.00 per share to Allen & Company Inc. in connection with a financial consulting agreement. 18. On October 12, 1999, we issued 85,000 shares of our class A voting common stock to a Mpeg TV LLC in exchange for the purchase of audio decoding and rendering technology and related assets and a license to video technology valued at $1,190,000. The sale of the above securities was determined to be exempt from registration under the Securities Act in reliance upon Section 4(2) of the Securities Act or Regulation D promulgated thereunder, or Rule 701 promulgated under Section 3(b) of the Securities Act as transactions by an issuer not involving any public offering or transactions under compensation benefit plans and contracts relating to compensation as provided under Rule 701. The recipients of securities in each transaction represented their intentions to acquire the securities for investment only and not with a view to or for sale in connection with any distribution and appropriate legends were affixed to the share certificates issued in these transactions. All recipients had adequate access, through their relationships with us, to information about us. II-3 Item 16. Exhibits and Financial Statement Schedules (a) Exhibits
Exhibit No. Description ------- ----------- 1.1** Form of Underwriting Agreement. 3.1** Fifth Amended and Restated Certificate of Incorporation of the Registrant. 3.2** Form of Sixth Amended and Restated Certificate of Incorporation to be filed upon the closing of the offering made under this Registration Statement. 3.3** Bylaws of the Registrant. 3.4** Amended and Restated Bylaws of the Registrant to be effective upon the closing of the offering made under this Registration Statement. 4.1** Reference is made to Exhibits 3.1, 3.2, 3.3 and 3.4. 4.2** Form of Registrant's Common Stock certificate. 4.3** Form of Registration Rights under select Convertible Promissory Notes. 4.4** Form of Registration Rights under select Class A Common Stock Purchase Agreements. 4.5** Form of Series A Preferred Stock Registration Rights. 4.6** Form of Series B, C, D and E Preferred Stock Registration Rights. 4.7** Form of Registration Rights found in a Class B Non-Voting Common Stock Warrant. 5.1** Opinion of Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP. 10.1** Form of Indemnification Agreement entered into by the Registrant with each of its directors and executive officers. 10.2** 1999 Equity Incentive Plan and forms of agreements thereunder. 10.3** 1999 Employee Stock Purchase Plan. 10.4** 1999 Non-Employee Directors Option Plan. 10.5*** [This exhibit has been omitted] 10.6**** [This exhibit has been omitted] 10.7**** [This exhibit has been omitted] 10.8**** [This exhibit has been omitted] 10.9**** [This exhibit has been omitted] 10.10**** [This exhibit has been omitted] 10.11** Lease between Mission West Properties, L.P. and the Registrant dated July 21, 1999. 10.12+ Technology Development, Marketing, and License Agreement by and between the Registrant and National Westminster Bank PLC dated August 18, 1998. 10.13**+ Technology Development and License Agreement by and between the Registrant and Universal Music Group, Inc. dated April 13, 1999. 10.14**+ Technology Development and License Agreement by and between the Registrant and Upgrade Corporation of America dated August 7, 1996 10.15**+ Technology Development and License Agreement by and between the Registrant and Mitsubishi Corporation dated October 7, 1996. 10.16** Warrant for the purchase of Class A Voting Common Stock made by the Registrant and held by Allen & Company Incorporated, dated September 7, 1999 10.17** Amendment to Technology, Development, Marketing and License Agreement by and between the Registrant and National Westminster Bank dated August 18, 1998. 10.18** Amendment to Technology Development and License Agreement by and between the Registrant and Universal Music Group, Inc. dated April 13, 1999 21.1** Subsidiaries of the Registrant. 23.1** Consent of Ernst & Young LLP, independent auditors. 23.2** Consent of Counsel. Reference is made to Exhibit 5.1. 24.1** Power of Attorney. 27.1** Financial Data Schedule.
- -------- ** Previously filed. *** This warrant was terminated upon the initial public offering. **** These leases are no longer in existence. +Confidential treatment has been requested for certain portions which have been blacked out in the copy of the exhibit filed with the Securities and Exchange Commission. The omitted information has been filed separately with the Securities and Exchange Commission pursuant to the application for confidential treatment. II-4 (b) Financial Statement Schedules All schedules have been omitted because the information required to be presented in them is not applicable or is shown in the consolidated financial statements or related notes. Item 17. Undertakings We undertake to provide to the underwriters at the closing specified in the underwriting agreement certificates in the denominations and registered in the names as required by the underwriters to permit prompt delivery to each purchaser. Insofar as indemnification for liabilities arising under the Securities Act may be permitted to directors, officers, and controlling persons of the Registrant under the Delaware General Corporation Law, our sixth amended and restated certificate of incorporation or our amended and restated bylaws, the underwriting agreement, or otherwise, we have been advised that in the opinion of the Securities and Exchange Commission this indemnification is against public policy as expressed in the Securities Act, and is, therefore, unenforceable. In the event that a claim for indemnification against these liabilities, other than the payment by us of expenses incurred or paid by a director, officer, or controlling person of ours in the successful defense of any action, suit, or proceeding, is asserted by a director, officer, or controlling person in connection with the securities being registered in this offering, we will, unless in the opinion of our counsel the matter has been settled by controlling precedent, submit to a court of appropriate jurisdiction the question of whether this indemnification by us is against public policy as expressed in the Securities Act and will be governed by the final adjudication of this issue. We undertake that: (1) For purposes of determining any liability under the Securities Act, the information omitted from the form of prospectus filed as part of this registration statement in reliance upon Rule 430A and contained in a form of prospectus filed by us under Rule 424(b)(1) or (4) or 497(h) under the Securities Act shall be deemed to be part of this registration statement as of the time it was declared effective. (2) For the purpose of determining any liability under the Securities Act, each post-effective amendment that contains a form of prospectus shall be deemed to be a new registration statement relating to the securities offered, and the offering of these securities at that time shall be deemed to be the initial bona fide offering. II-5 SIGNATURES Pursuant to the requirements of the Securities Act of 1933, the Registrant has duly caused this post effective Amendment No. 2 to the Registration Statement to be signed on its behalf by the undersigned, thereunto duly authorized, in the City of Santa Clara, State of California, on this 28th day of October, 1999. Intertrust Technologies Corporation By /s/ Victor Shear ----------------------------------- Victor Shear Chairman of the Board and Chief Executive Officer Pursuant to the requirements of the Securities Act of 1933, as amended, this post effective Amendment No. 2 to the Registration Statement has been signed by the following persons on behalf of the Registrant and in the capacities and on the date indicated: Signature Title Date /s/ Victor Shear Chairman of the Board and - ------------------------------ Chief Executive Officer October 28, 1999 Victor Shear (Principal Executive Officer) David C. Chance* Executive Vice Chairman - ------------------------------ October 28, 1999 David C. Chance Peter van Cuylenburg* Director, President and - ------------------------------ Chief Operating Officer October 28, 1999 Peter van Cuylenburg Erwin N. Lenowitz* Vice Chairman of the - ------------------------------ Board, Chief Financial October 28, 1999 Erwin N. Lenowitz Officer (Principal Financial and Accounting Officer) and Secretary II-6 Signature Title Date /s/ Edmund J. Fish Director, Senior Operating - ------------------------------- Officer and Executive October 28, 1999 Edmund J. Fish Vice President, Corporate Development David Van Wie* Director and Senior Vice - ------------------------------- President of Research October 28, 1999 David Van Wie Bruce Fredrickson* Director - ------------------------------- October 28, 1999 Bruce Fredrickson Satish K. Gupta* Director - ------------------------------- October 28, 1999 Satish K. Gupta *By: /s/ Victor Shear --------------------------- Victor Shear Attorney-in-fact *By: /s/ Edmund J. Fish --------------------------- Edmund J. Fish Attorney-in-fact II-7 INDEX TO EXHIBITS
Exhibit No. Description ------- ----------- 1.1** Form of Underwriting Agreement. 3.1** Fifth Amended and Restated Certificate of Incorporation of the Registrant. 3.2** Form of Sixth Amended and Restated Certificate of Incorporation to be filed upon the closing of the offering made under this Registration Statement. 3.3** Bylaws of the Registrant. 3.4** Amended and Restated Bylaws of the Registrant to be effective upon the closing of the offering made under this Registration Statement. 4.1** Reference is made to Exhibits 3.1, 3.2, 3.3 and 3.4. 4.2** Form of Registrant's Common Stock certificate. 4.3** Form of Registration Rights under select Convertible Promissory Notes. 4.4** Form of Registration Rights under select Class A Common Stock Purchase Agreements. 4.5** Form of Series A Preferred Stock Registration Rights. 4.6** Form of Series B, C, D and E Preferred Stock Registration Rights. 4.7** Form of Registration Rights found in a Class B Non-Voting Common Stock Warrant. 5.1** Opinion of Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP. 10.1** Form of Indemnification Agreement entered into by the Registrant with each of its directors and executive officers. 10.2** 1999 Equity Incentive Plan and forms of agreements thereunder. 10.3** 1999 Employee Stock Purchase Plan. 10.4** 1999 Non-Employee Directors Option Plan. 10.5*** [This exhibit has been omitted] 10.6**** [This exhibit has been omitted] 10.7**** [This exhibit has been omitted] 10.8**** [This exhibit has been omitted] 10.9**** [This exhibit has been omitted] 10.10**** [This exhibit has been omitted] 10.11** Lease between Mission West Properties, L.P. and the Registrant dated July 21, 1999. 10.12+ Technology Development, Marketing, and License Agreement by and between the Registrant and National Westminster Bank PLC dated August 18, 1998. 10.13**+ Technology Development and License Agreement by and between the Registrant and Universal Music Group, Inc. dated April 13, 1999. 10.14**+ Technology Development and License Agreement by and between the Registrant and Upgrade Corporation of America dated August 7, 1996 10.15**+ Technology Development and License Agreement by and between the Registrant and Mitsubishi Corporation dated October 7, 1996. 10.16** Warrant for the purchase of Class A Voting Common Stock made by the Registrant and held by Allen & Company Incorporated, dated September 7, 1999 10.17** Amendment to Technology, Development, Marketing and License Agreement by and between the Registrant and National Westminster Bank dated August 18, 1998. 10.18** Amendment to Technology Development and License Agreement by and between the Registrant and Universal Music Group, Inc. dated April 13, 1999 21.1** Subsidiaries of the Registrant. 23.1** Consent of Ernst & Young LLP, independent auditors. 23.2** Consent of Counsel. Reference is made to Exhibit 5.1. 24.1** Power of Attorney. 27.1** Financial Data Schedule.
- -------- ** Previously filed. *** This warrant was terminated upon the initial public offering. **** These leases are no longer in existence. + Confidential treatment has been requested for certain portions which have been blacked out in the copy of the exhibit filed with the Securities and Exchange Commission. The omitted information has been filed separately with the Securities and Exchange Commission pursuant to the application for confidential treatment. EX-10.12 2 MARKETING AND LICENSE AGREEMENT CONFIDENTIAL EXHIBIT 10.12 _______________________________________________________ TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE AGREEMENT by and between INTERTRUST TECHNOLOGIES CORPORATION and NATIONAL WESTMINSTER BANK PLC _______________________________________________________ ______________________________ August 18, 1998 ______________________________ - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL TABLE OF CONTENTS -----------------
Page ---- 1. DEFINITIONS AND RULES OF CONSTRUCTION................................... 1 1.1 Definitions......................................................... 1 1.2 Rules of Construction............................................... 6 2. TECHNOLOGY ACCESS AND SUPPORT........................................... 6 2.1 Technology Access................................................... 6 2.2 Training, Assistance and Technical Support.......................... 7 2.3 Additional Assistance; Further Standard Support Packages............ 10 3. LIMITED LICENSE GRANT AND RESTRICTIONS.................................. 10 3.1 Limited License to InterTrust Technology and Modified Technology.... 10 3.2 Limited License to Perform Clearinghouse Functions.................. 11 3.3 License to InterTrust Trademarks.................................... 11 3.4 No Additional Licenses.............................................. 11 3.5 General Restrictions................................................ 11 4. NATWEST SUPPORT AND ADDITIONAL COVENANTS................................ 12 4.1 NatWest Support of InterTrust Technology............................ 12 4.2 Customer and Clearing Agreements.................................... 14 4.3 Notices and Branding................................................ 15 4.4 InterTrust Trademarks............................................... 17 4.5 NatWest's Use of NatWest Trademarks on NatWest Products............. 18 4.6 NatWest Trademarks.................................................. 18 5. LICENSE FEES AND PAYMENT TERMS.......................................... 19 5.1 Fees and Royalties.................................................. 19 5.2 Payment Procedure................................................... 21 5.3 Currency............................................................ 21 5.4 Taxes............................................................... 21 5.5 Interest............................................................ 21 5.6 Audit............................................................... 22 6. PROPRIETARY INFORMATION AND OWNERSHIP................................... 22 6.1 InterTrust Ownership................................................ 22 6.2 NatWest Ownership................................................... 22 6.3 NatWest Limited License to InterTrust............................... 23 6.4 Independent Technology.............................................. 23 7. JOINT ACTIVITIES AND FURTHER COVENANTS.................................. 23 7.1 Joint Press Releases................................................ 23 7.2 Promotion and Marketing............................................. 24 7.3 Technology Advisory Committee....................................... 24 7.4 Security Validation................................................. 25 8. PARTNERING COMMITMENTS 8.1 Intertrust Partnering Commitment.................................... 26
(i) CONFIDENTIAL 8.2 NatWest Partnering Commitment........................................ 26 9. CONFIDENTIALITY......................................................... 29 9.1 Classification of Technology and Documents.......................... 29 9.2 Confidentiality Obligations......................................... 29 9.3 Confidentiality of Agreement and Publicity.......................... 29 9.4 Confidentiality of Payments, Audit and Certification Testing........ 30 10. REPRESENTATIONS AND WARRANTIES......................................... 30 10.1 Representations and Warranties of Both Parties..................... 30 10.2 Representations and Warranties of InterTrust....................... 30 10.3 Limitation......................................................... 31 10.4 Reporting and Other Covenants...................................... 31 11. INDEMNIFICATION AND REMEDIES........................................... 31 11.1 Indemnification.................................................... 31 11.2 Cumulative Remedies................................................ 32 11.3 Equitable Remedies................................................. 32 12. EXCLUSION OF DAMAGES................................................... 32 13. TERM AND TERMINATION................................................... 33 13.1 Agreement.......................................................... 33 13.2 Events of Termination.............................................. 33 13.3 Effect of Termination.............................................. 33 13.4 NatWest Continuing Rights.......................................... 34 13.5 Survival........................................................... 34 14. MISCELLANEOUS.......................................................... 34 14.1 Governing Law...................................................... 34 14.2 Venue and Jurisdiction............................................. 34 14.3 Compliance with Law and Export Controls............................ 35 14.4 Amendment or Modification; Assignment.............................. 35 14.5 Notices............................................................ 35 14.6 Waiver............................................................. 35 14.7 No Third Party Beneficiaries....................................... 36 14.8 No Agency.......................................................... 36 14.9 Recovery of Costs and Expenses..................................... 36 14.10 Severability...................................................... 36 14.11 No Solicitation of Employees...................................... 36 14.12 Counterparts; Facsimiles.......................................... 36 14.13 Entire Agreement.................................................. 37
Exhibits A through H (ii) CONFIDENTIAL TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE AGREEMENT THIS TECHNOLOGY DEVELOPMENT, MARKETING, AND LICENSE AGREEMENT (this "Agreement") --------- is made and entered into as of the 18/th/ day of August, 1998 (the "Effective --------- Date") by and between INTERTRUST TECHNOLOGIES CORPORATION, a Delaware - ---- corporation ("InterTrust"), with offices at 460 Oakmead Parkway, Sunnyvale, ---------- California 94086-4708 and NATIONAL WESTMINSTER BANK PLC, an English corporation ("NatWest") with offices at 41 Lothbury, London, England EC2P 2BP (each a ------- "Party" and collectively, the "Parties"), with reference to the following: ----- ------- RECITALS The following provisions form the basis for, and are hereby made a part of, this Agreement. A. InterTrust has developed and is continuing to develop a general purpose architecture and technologies for, among other things, rights protection and event management related to electronic commerce, including securely managing electronic information delivery, use, and use consequences. B. NatWest is a diversified, global financial services corporation. It desires to provide financial and information clearing services, and related services, based upon InterTrust technology. C. The Parties mutually desire that NatWest become an InterTrust Core Partner and establish product and service offerings using InterTrust Technology. AGREEMENT NOW, THEREFORE, in consideration of the mutual covenants contained herein, and for other good and valuable consideration, the Parties agree to the following: 1. DEFINITIONS AND RULES OF CONSTRUCTION. 1.1 Definitions. In addition to capitalized terms defined elsewhere in this ----------- Agreement, the following terms shall have the meanings set forth below. "Application Product(s)" means any software application that: (i) is ---------------------- developed using InterTrust Technology and/or Modified Technology; (ii) directly contains or incorporates InterTrust Technology solely in the form of Authorized Application Software, and/or Modified Technology in Object Code and/or Source Code in accordance with the licenses hereunder; (iii) is not enabled to permit the performance of any Clearinghouse Functions; and (iv) is in Compliance with InterTrust Specifications. "Authorized Application Software" means software incorporating InterTrust ------------------------------- Technology in Object Code and/or in Source Code (solely as such Object Code and Source Code are identified and designated by InterTrust on Exhibit A hereto), that is permitted for distribution in accordance with the applicable licenses hereunder in such form solely as specified on Exhibit A, which Exhibit may be amended from time to time by InterTrust to add Object Code and/or Source Code, or to delete Object Code and/or Source Code to address issues with respect to security, interoperability, standardization, market growth and/or architectural and functional integrity (such as to correct Material Defects), and in a manner consistent for all Core Partners. "Authorized Clearinghouse Provider" means any Person that is expressly --------------------------------- licensed by InterTrust to engage in specified Clearinghouse Function activities and services, but only to the extent: (i) of the scope of such license; and (ii) that such license is valid and in force. NatWest/InterTrust Agreement August 18, 1998 ________/________ CONFIDENTIAL "Authorized Clearinghouse Software" means software incorporating InterTrust --------------------------------- Technology, solely in Object Code form and solely as such Object Code is identified and designated by InterTrust on Exhibit A, that is permitted for distribution as incorporated in Clearinghouse Products in accordance with the applicable licenses hereunder in such form solely as specified in such Exhibit A, which Exhibit may be amended from time to time by InterTrust to add Object Code, or to delete Object Code to address issues with respect to security, interoperability, standardization, market growth and/or architectural and functional integrity (such as to correct Material Defects), and in a manner consistent for all Core Partners. "Clearinghouse Function(s)" means any one or more activities, as well as ------------------------- services resulting therefrom, that use any InterTrust Technology and/or Modified Technology, or use information derived at least in part from use of such technology, to: (i) enable payment fulfillment or provision of other consideration (including service fees, product fees or any other fees and/or charges) based at least in part on a Control Use; (ii) perform audit, billing, payment fulfillment (or provision of other consideration) and/or other clearing activities involving more than one Person; and/or (iii) compile, aggregate, use and/or provide information relating to more than one Person's use of one or more Secure Containers and/or Content, including Contents of Secure Containers or any other Content Managed at least in part using any InterTrust Technology and/or Modified Technology. Clearinghouse Functions shall include activities, as well as services resulting therefrom, that use any InterTrust Technology and/or Modified Technology, or use information derived at least in part from use of such technology, to, for example: (a) provide financial clearing; (b) provide object registry services and rights, permissions, prices, and/or other Rules and Controls information; (c) electronically certify information used with or required by Rules and Controls, such as authenticating identity, class membership or other attributes of identity context; (d) provide information based upon usage auditing, user profiling, and/or market surveying related to more than one Person's use of one or more Secure Containers and/or Content; and/or (e) employ information derived from user exposure to Content, such as advertising. "Clearinghouse Product(s)" means any software application that: (i) is ------------------------ developed using InterTrust Technology and/or Modified Technology; (ii) directly contains or incorporates InterTrust Technology solely in the form of Authorized Clearinghouse Software, and/or Modified Technology only in Object Code, in accordance with the licenses hereunder; (iii) is enabled to permit the performance of any Clearinghouse Functions; and (iv) is in Compliance with InterTrust Specifications. "Commerce 1.0 (FCS Version)" means certain software having the -------------------------- functionality described in Exhibit A hereto that incorporates InterTrust Technology, as provided by InterTrust to NatWest consistent herewith. "Commerce 1.0 (GA Version)" means certain software having the functionality ------------------------- described in Exhibit A hereto (as such Exhibit may be modified from time to time by InterTrust consistent with this Agreement) that incorporates InterTrust Technology, as provided by InterTrust to NatWest consistent herewith, and is intended for general commercial availability, dissemination in accordance herewith, and use in accordance herewith in a widely distributed manner. Commerce 1.0 (GA Version) shall have at least substantially the same functionality as Commerce 1.0 (FCS Version). "Commerce 2.0" means certain software constituting a New Release of ------------ InterTrust's Commerce 1.0 (FCS Version) software and Commerce 1.0 (GA Version) software incorporating enhanced digital rights management functionality, including at a minimum such functionality described in Exhibit A hereto that incorporates InterTrust Technology, as provided by InterTrust to NatWest consistent herewith. "Compliance," "Complied" or "Compliant" means fully consistent with and ---------- -------- --------- fully conforming to all applicable portions of: (i) the most current version of the InterTrust Specifications (as defined in Section 4.1((b)) hereof) existing on the date of NatWest's first commercial use, distribution, sale or other transfer of any applicable NatWest Product or first use of any such product in connection with any service associated therewith, as the case may be; and thereafter (ii) the most current version of InterTrust Specifications in accordance with Section 4.1((b)) hereof, as applied to any such NatWest Product, and/or associated service. A NatWest Product 2 CONFIDENTIAL and/or any associated service that has not passed any required certification tests as set forth in Section 4.1 hereof shall be deemed non-Compliant with InterTrust Specifications. "Content(s)" means any analog or digital information representing text, ---------- graphics, video, digital linear motion pictures, sound and sound recordings, still images, computer programs or executable or interpretable components thereof, other data, or other such analog or digital information. Content shall include any electronic representation of: (i) Rules and Controls; and (ii) information derived from the Management of Content. "Content Transaction" means any discrete electronic compensation event ------------------- related to a specific overall Content compensation arrangement amongst Persons (which may be comprised of component events and arrangements): (i) Managed, in whole or in part, through the use of any InterTrust Technology and/or Modified Technology; and (ii) in connection with which consideration of any kind (including consideration directly related to such event) is due or payable at any time to NatWest and/or any other one or more Persons, at least in part, for any (a) initiated, consummated and/or performed sale, rental, lease, license, vending and/or any other comparable provision of one or more rights related to Content, or (b) use of, including any interaction with, Content (such as access to Content, including production of modified Content). "Control Use" means any use of InterTrust Technology and/or Modified ----------- Technology in compliance with InterTrust Specifications to Manage Content including initiating and/or otherwise governing any consequence (electronic, physical or otherwise) related to the use and/or processing of Content and/or provision of goods or services conveyed by or associated with such Content. Control Use shall include, for example: (i) metering, auditing, charging, and/or billing, for access to or any other interaction with any Content; and/or (ii) administering permitted and/or prohibited uses of Content. "Core Partner" means any Person with whom InterTrust enters into an ------------ agreement or set of agreements, pursuant to which InterTrust: (i) directly provides early access to InterTrust Technology prior to InterTrust's first commercial release or provision of such technology to the general public; (ii) grants a general purpose license to use InterTrust Technology in software products, applications, and services (excepting limitations with respect to performing Clearinghouse Functions); and (iii) grants a license to perform Clearinghouse Functions of a substantially comparable or broader scope than the licenses granted in Section 3.2 hereof (a "Core Partner Agreement") "Core Technology" means those components of InterTrust Technology described --------------- by InterTrust on Exhibit A hereto as core technologies of such InterTrust Technology, as such Exhibit may be amended from time to time by InterTrust. "Customer" means any Person that receives or acquires a NatWest Product -------- (directly or indirectly) from NatWest, and/or participates in an associated service, pursuant to a Customer Agreement (as set forth in Section 4.2) to: (i) use such product and/or associated service as an end-user, or further distribute such product, without modification, to an end-user or to one or more other Persons for distribution, without modification, to an end-user; or (ii) use such product solely to (a) incorporate Authorized Application Software into their products to provide an InterRights Point, or (b) develop and incorporate software components that initiate interface and operation with an InterRights Point provided by InterTrust Technology, each of which software components and InterRights Point is Compliant with InterTrust Specifications; provided that -------- ---- Customer shall not include any Person who NatWest knows, or has reason to know, has a present intention to use a NatWest Product and/or associated service for any use not permitted in a Customer Agreement including, without limitation, the performance of any Clearinghouse Function, unless such Person is an Authorized Clearinghouse Provider. "Documentation" means certain English language versions of documentation ------------- and/or instructions relating to use of InterTrust Technology that InterTrust may from time to time provide with the InterTrust Technology, including such documentation that InterTrust has specifically and in writing identified as being suitable for general distribution by NatWest to Customers ("Distributable ------------- Documentation"). - ------------- 3 CONFIDENTIAL "Enterprise 1.0" means that software described in Exhibit A hereto (as such -------------- Exhibit may be amended from time to time by InterTrust) that incorporates InterTrust Technology, as provided by InterTrust to NatWest consistent herewith, intended solely for use within enterprises and/or for use by enterprises solely in connection with such enterprise's Content and within the context solely of products and/or associated services for direct customers of an enterprise or other Persons having a value chain relationship with such enterprise (such as suppliers, distributors, consultants, etc.). The initial delivery of such software shall be in a GA version. "Gross Commercial Value" means all sums of money as consideration, and/or ---------------------- the fair market value of any other provided consideration, relating directly to or deriving directly from: (i) any Content Transaction; and/or (ii) performing any other activity within the Clearinghouse Functions. Without limiting the foregoing, such consideration shall include consideration based upon Management of Content and/or information derived at least in part therefrom, including, for example, consideration: (a) paid by a user as a consequence of, for example, user exposure to, or other interaction with, Content; (b) paid by a user as a consequence of the acquisition of one or more rights related to Content; and/or (c) paid by a proxy or subsidizing payer (such as an advertiser) based upon user exposure to Content, where, for example but without limitation, after (due to or based on) receipt of information about user exposure to Content, such advertiser pays consideration based at least in part on value resulting from such exposure. Notwithstanding the foregoing Gross Commercial Value shall be reduced by any included sales, use, value-added or other taxes (except withholding taxes) imposed by any national, state, local or foreign government and paid by NatWest as a consequence of clearing a Content Transaction and/or as a consequence of performing any other directly related activities within the Clearinghouse Functions. "Intellectual Property Rights" mean all patent rights, copyrights, ---------------------------- trademarks, trade secret rights, and other similar proprietary rights in any jurisdiction, and all applications and registrations therefor. "InterRights Point(s)" means certain InterTrust Technology (as set forth on -------------------- Exhibit A hereto, as such Exhibit may be amended by InterTrust consistent with this Agreement) that is a distributed rights and event management, and distributed administration, virtual machine (i.e. node) that performs, at least ---- in part, as an extension to basic electronic resource management, or is integrated within such basic resource management. "InterTrust Specifications" mean the InterTrust technology specifications ------------------------- provided to NatWest, as established and/or modified by InterTrust in accordance with Section 4.1((b)) hereof. Such InterTrust Specifications may include: (i) required design criteria for licensed products and/or associated services, including, for example, criteria for ensuring the architectural and functional integrity, standardization, security capability, and/or interoperability of InterTrust-based technology, components, products and/or associated services (such as, criteria for electronic environments employing InterTrust Technology for rights and/or other event-related process management, for example the operation of general purpose InterRights Points that interoperate with InterRights Points distributed or normally used by other Persons); (ii) procedures and requirements for installation, initialization, backup, restore and/or security updates; and (iii) required certification tests and procedures to verify Compliance. "InterTrust Technology" means any and all technology developed by --------------------- InterTrust and/or by a third Person for InterTrust and provided by InterTrust to NatWest as set forth in this Agreement directly relating to distributed rights management systems and methods, electronic content administration, peer-to-peer trusted event management, and/or distributed electronic commerce automation and process control systems and methods. For example, such technology includes the Commerce 1.0 product, the Enterprise 1.0 product, pre-releases thereof, Update Releases, New Releases and such other products as referenced in Exhibit A hereto (as such Exhibit may be modified by InterTrust from time to time to provide, for example, any product modification and/or reconfigurations made available hereunder). "InterTrust Trademarks" mean those InterTrust names, logos and other marks --------------------- listed on Exhibit B hereto, as such Exhibit may be modified by InterTrust in accordance with Section 4.4 hereof. 4 CONFIDENTIAL "Licensed Rights" mean all of InterTrust's worldwide Intellectual Property --------------- Rights (other than trademark rights) in and to the InterTrust Technology and/or the Modified Technology, that InterTrust (at any time during the term of this Agreement) owns or otherwise has the right to grant licenses of the scope granted herein without the agreement of, or requirement for payment (or the granting of other consideration) to, any Person. "Manage(d)" or "Management" means any form of governance, regulation, --------- ---------- management and/or control, at least in part, through any use of any software, firmware, hardware (being able to carry out functions) or comparable electronic means, or combinations thereof, of: (i) rights, processes and/or obligations related to, or associated with, use of (including access to, transport of, and/or storage of) Content, including Content related disposition and/or consequences thereof; and/or (ii) events or event processes related to, or associated in any manner with, the use of (including access to), attempted use of, and/or disposition of, Content and/or events, including any consequences thereof. "Material Defect(s)" means defect(s) or bug(s) in the InterTrust products ------------------ incorporating InterTrust Technology as delivered by InterTrust to NatWest, wherein such defect(s) or bug(s) in such delivered products causes one or more of such delivered InterTrust products to fail to perform: (i) materially in conformance with (a) the capabilities ascribed to such products in the applicable portions of InterTrust Specifications, or (b) features and functions ascribed to such products as specified in Exhibit A; and (ii) in a commercially reasonable manner in accordance with reasonable U.S. software industry practices. Material Defects shall not include or mean any defects or bugs in Modified Technology absent from InterTrust Technology. "Modified Technology" means all modifications of, and enhancements and/or ------------------- additions to, the InterTrust Technology created by (or for) NatWest as provided hereunder, including without limitation all derivative works of the InterTrust Technology (or other Modified Technology) as such term is defined in the U.S. Copyright Act (17 U.S.C. (S) 101 et seq., as amended), but only if such -- --- modifications, enhancements, additions and/or derivative works are permitted under Section 3.1((b)) and elsewhere in this Agreement. "NatWest Product(s)" means any Application Product and/or Clearinghouse ------------------ Product that is developed by (or, consistent with this Agreement, for) NatWest and is branded and marketed in accordance with the provisions of Sections 4.3((c)), 4.5 and other provisions hereof. "NatWest Trademarks" mean the names, logos and other marks listed in ------------------ Exhibit B (as such Exhibit may be modified by NatWest from time to time consistent with Section 4.6 hereof): (i) that are owned or licensed for use exclusively by NatWest, that may be used as stipulated hereunder in connection with, and are limited in use to representing exclusively, NatWest, NatWest Products, and/or associated services permitted hereunder; and (ii) over which NatWest exercises exclusive control with respect to the commercial use thereof. "New Release" means any future release by InterTrust of a successor product ----------- of the Commerce 1.0 product line, the Enterprise 1.0 (GA version) and/or additional Enterprise 1.0 product line products provided to NatWest hereunder and (i) that (a) is designated by InterTrust as a numerical change to the digit(s) to the left of the decimal point for the version number thereof (e.g., --- Commerce X.0; Enterprise X.0); or (b) is designed to provide significantly improved or enhanced functionality for Commerce 1.0's and/or Enterprise 1.0's general purpose software platform for Distributed Peer-to-Peer Digital Rights Management (as defined in Exhibit F attached hereto) for the desktop, portable, minicomputer, mainframe, and/or server computing market(s), as compared to the immediately preceding version; and (ii) that InterTrust may develop, or have developed for it, from time to time and make generally available to its Core Partners. New Releases will reflect additional functionality as determined by InterTrust after reviewing and analyzing input of Core Partners through activities of the Technology Advisory Committee (described in Section 7.3 hereof) with respect to current and anticipated market requirements and reasonable commercial priorities). "Object Code" shall mean the computer executable binary code derived from ----------- compiled Source Code for execution by a computing device or system. 5 CONFIDENTIAL "Person" means any individual, corporation, limited liability company, ------ partnership, firm, joint venture, association, joint-stock company, trust, unincorporated organization, government body or agency, or other entity. "Rules and Controls" mean any information that directs, enables, specifies, ------------------ describes, and/or provides means for performing or not performing operations related to Content, controlling, for example, usage consequences, and including, for example, restricting the performance of operations, such as, for example, in the performance of Management of such Content. "Secure Container(s)" means electronic container(s) or other electronic ------------------- data arrangement(s) that: (i) uses one or more cryptographic or other obfuscation techniques to provide protection for Content; and (ii) supports the use of Rules and Controls to Manage Content. Secure Container(s) shall not mean Certificate Authority and/or Session Encryption as such terms are defined in Exhibit F attached hereto. "Source Code" means a human-readable, non-executable set of instructions ----------- for a computer program, from which it may be possible, together with related source materials and documentation, to discern the logic, algorithms, internal structure, and operating feature design characteristics of such computer program. "Standard Support Package(s)" means one or more technical support packages --------------------------- that InterTrust may establish and make available to certain or all customer categories to provide, for example, training, consultation and other technical assistance, as well as technical support in the form of correction of defects (including Material Defects) and priority response times in connection therewith. "Update Release" means any future release of InterTrust software products -------------- that is a supplement to the Commerce 1.0 software, or a New Release (including the Enterprise 1.0 software) provided to NatWest hereunder that: (i)(a) is designed primarily to correct and/or mitigate known Material Defects in, and/or to provide minor improvements to, such Commerce 1.0, Enterprise 1.0 or New Release software, or (b) is designated by InterTrust as a numerical change to the digit(s) right of the decimal point for the version number thereof (e.g. ---- Commerce 1.XX; Enterprise 1.XX); and (ii) InterTrust may develop, or have developed for it, from time to time and make generally available to its Core Partners in accordance herewith. 1.2 Rules of Construction. As used in this Agreement, all terms used in the --------------------- singular shall be deemed to include the plural, and vice versa, as context requires. Hereof, herein and hereunder refer to this Agreement as a whole, ------ ------ --------- including any exhibits hereto, as the same may from time to time be amended or supplemented and not to any subdivision contained in this Agreement. Including --------- shall mean including, without limitation; compliance, complied, or comply shall ----------------------------- ---------- -------- ------ mean full compliance, fully complied or fully comply; for example shall mean for ------------------------------- ------------- ----------- --- example without limitation; and InterTrust shall mean InterTrust and any lawful - -------------------------- ---------- ------------------------- successor. Descriptive headings are inserted for convenience only, and shall not - --------- be utilized in interpreting this Agreement. This Agreement has been negotiated by the Parties and their respective counsel and shall be fairly interpreted in accordance with its terms and without any strict construction in favor of or against either Party. Any and all rights exercisable, actions permitted to be taken, or decisions to be made, by a Party under this Agreement may be made by such Party in its sole discretion, except to the extent (and solely to the extent) expressly provided herein to the contrary, meaning, for example, any use of the word discretion related to a Party's decision means the sole discretion of that Party. 2. TECHNOLOGY ACCESS AND SUPPORT. 2.1 Technology Access. ----------------- (a) Initial Availability. Subject to the terms of this Agreement, -------------------- InterTrust shall make available to NatWest: (i) the Commerce 1.0 (FCS version); and (ii) the Documentation set forth in Exhibit A hereto. Such software and Documentation shall be made available to NatWest promptly following the execution of this Agreement, receipt of the amount specified in Section 5.1 ((a))((i)) hereof, and NatWest's Compliance with the 6 CONFIDENTIAL applicable InterTrust Specification concerning Site Certification in effect as of the Effective Date. Further, InterTrust's Commerce 1.0 (GA Version) and Enterprise 1.0 (GA Version), respectively, shall be supplied to NatWest at reasonably the same time as (but in no event later than five (5) business days after) such software is first made available to any Core Partner, and before such software is made generally available publicly. (b) Additional Technology. In addition to the foregoing, and subject to --------------------- the terms and conditions of this Agreement, InterTrust shall make available to NatWest: (i) Update Releases at no additional charge (beyond the Support Fee set forth in Section 5.1((c)) hereof) for a period of [*] years following the Effective Date; and (ii) New Releases (1) at no additional charge (beyond the Support Fee) for a period of [*] years after the Effective Date and, (2) for the subsequent [*] years on terms (including price) [*] and at a cost no greater than reasonably consistent with applicable U.S. Software Industry practices. Notwithstanding the foregoing, NatWest shall be entitled to obtain in accordance with the provisions of this Section 2.1((b)): (A) at no additional charge (beyond the Support Fee and/or such fees as set forth in Sections 5.1((a))((iv)) and 5.1((a))((v)) InterTrust's Commerce 2.0 software release and, whether in the form of one or more New Releases and/or Update Releases, software that provides those functions specified in Section I.B. of Exhibit A hereto (the "Requested --------- Functionality"), as available from InterTrust at any time during the term of - ------------- this Agreement; and (B) such portions of New Releases and/or Update Releases, as applicable, made available by InterTrust after the end of the [*] year following the Effective Date, if any, that are strictly necessary for NatWest Products and associated services to remain in Compliance with then existing InterTrust Specifications and/or subsequent New Specification pursuant to Section 4.1((b)) hereof, provided that such New Release and/or Update Release portions shall be -------- made available to NatWest on terms (including price) [*] and at a cost no greater than reasonably consistent with applicable U.S. Software Industry practices. Further notwithstanding the foregoing, the revenue sharing royalties set forth in Section 5.1((b)) shall be payable to InterTrust as set forth therein. Any Update Releases and/or New Releases that NatWest is entitled to receive pursuant to this Section 2.1((b)) shall be supplied to NatWest at reasonably the same time (but in no event later than five (5) business days after) when such software is first made available to any Core Partner and before such product is made generally available publicly, except that the foregoing shall not restrict InterTrust from providing Update Releases and/or New Releases to customers and/or making such Update Releases generally available publicly where such Update Releases and/or New Releases provide, in material part, updated software responsive to security, interoperability and/or integrity concerns. The Parties acknowledge and agree that nothing in this Section 2.1 shall be construed to require InterTrust to make any InterTrust technology available to NatWest that has been developed by InterTrust as a custom or specialized effort for, or jointly with, one or more current or prospective development partners and/or other licensees of InterTrust. To the extent that InterTrust and NatWest mutually agree in a separate written agreement to have InterTrust develop any custom or specialized software for, or jointly with, NatWest (other than the Requested Functionality), the terms and conditions of such separate agreement shall specifiy whether such custom or specialized software may be made available to any third Person. (c) Acknowledgments. In accordance with the above, and subject to --------------- InterTrust representations set forth in Section 10.2 hereof, it is acknowledged and agreed that the InterTrust Technology may employ or may operate with one or more technologies that may not be proprietary to InterTrust but are included within the Licensed Rights as specified on Exhibit A (the "Third Party ----------- Technology") and as may be modified from time to time by InterTrust. NatWest's - ---------- use of the Third Party Technology is limited by the terms of any licenses or rights that InterTrust may have therein and may sublicense to NatWest. 2.2 Training, Assistance and Technical Support. Subject to the terms and ------------------------------------------ conditions of this Agreement, InterTrust agrees to provide NatWest with the training, support and assistance set forth in this Section 2.2 for a period of twenty-four (24) months from the Effective Date (the "Support Period") at no -------------- additional cost beyond the Support Fee specified in Section5.1((c)). Section 2.2((a)) hereof relates to the provision of Assistance (defined below) and Section 2.2((b)) relates to technical support of software provided by InterTrust hereunder. After the Support Period, Assistance and such technical support shall be provided to NatWest through Standard Support Packages that NatWest may select and pay for, all as set forth in Section 2.3; provided that at least one -------- ---- - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 7 CONFIDENTIAL such Standard Support Package shall provide Assistance and technical support for provided software (including the correction of Material Defects) reasonably commensurate with provisions of Section 2.2((a)) and 2.2((b)) hereof. (a) Training and Assistance. In order to assist NatWest in use of ----------------------- InterTrust Technology, InterTrust shall provide to NatWest, subject to applicable terms and conditions of this Agreement, reasonable training, support, and consulting assistance rendered by appropriately qualified, trained and experienced personnel ("Assistance"). Up to a limit of two hundred (200) hours ---------- per annum of such Assistance shall be made available to NatWest during the Support Period. Such Assistance shall be measured based upon InterTrust's person-hours expended, shall exclude de minimus ad hoc communications and time ----------------- spent on administrative tasks, and shall be subject to reasonable agreement between the Parties on scheduling and availability of resources. Assistance shall include: (i) lecture and hands-on training at InterTrust's facility (unless otherwise agreed by the Parties) for up to six (6) NatWest personnel; and (ii) access via e-mail, telephone, and/or video teleconferencing to InterTrust's support personnel, consistent with applicable U.S. software industry practices and the foregoing. NatWest shall have access to InterTrust's automated technical support website in a manner no less favorable than InterTrust provides to any other Core Partner. In addition, and as set forth in Section 2.2((d)), InterTrust shall designate a support engineer as NatWest's primary contact for technical support related matters. NatWest shall be responsible for all expenses incurred by NatWest's personnel in traveling to and attending any training and support meetings. In the event InterTrust's personnel travel from InterTrust's facilities in connection with the provisions of such Assistance (upon InterTrust's and NatWest's mutual agreement approving such travel), NatWest shall promptly reimburse InterTrust for all reasonable out-of- pocket travel expenses incurred by InterTrust's personnel. During the Support Period, InterTrust shall make Assistance available to NatWest in support of at least the then-current version of Commerce 1.X and Enterprise 1.X as provided to NatWest by InterTrust, and those versions distributable in accordance with InterTrust Specifications, all in accordance with Sections 2.2((a)) and 2.2((b)) hereof, and consistent with Section 4.1((b)) hereof. (b) Correction of Material Defects. ------------------------------ (i) General. In addition to InterTrust's own on-going quality ------- assurance efforts, if NatWest brings any Material Defect to InterTrust's attention in accordance with commercially reasonable and appropriate InterTrust standard support policy notification procedures (and made available in writing to NatWest), InterTrust shall use reasonable efforts in accordance with applicable U.S. software industry practices, at InterTrust's expense, to correct such Material Defect. If a Material Defect can not through the exercise of such reasonable efforts be so corrected, or is not otherwise in good faith reasonably foreseen to be so correctable with commercially reasonable application of InterTrust resources, InterTrust will use such reasonably prompt efforts to adjust InterTrust Technology to mitigate such Material Defect in a manner reasonably commercially designed and/or intended to minimize material adverse disruption to functionality of InterTrust Technology in current use. Consistent with the foregoing, InterTrust's efforts to correct or mitigate Material Defects shall be provided reasonably in a manner set forth in this Section 2.2((b)), including, as applicable, for the level of NatWest commercial use of InterTrust Technology. If NatWest requests and InterTrust agrees to commit resources beyond the level required hereunder, such efforts will be subject to reasonable reimbursement by NatWest to InterTrust as agreed by the Parties and as consistent with reasonable industry practice. InterTrust's sole obligation with respect to any Material Defect shall be InterTrust's correction or mitigation of such Material Defect pursuant to the terms of this Section 2.2((b)),NatWest's sole and exclusive remedies with respect to any Material Defect shall be: (i) InterTrust's correction or mitigation of such Material Defect pursuant to the terms of this Section 2.2((b)); (ii) NatWest's suspension of certain payments during the pendency of Critical Material Defects pursuant to Section 5.1((f)); and/or (iii) NatWest's termination of this Agreement as provided in Section 2.2((b))((iii)) or as provided in Section 13.2((a)) in the event of a breach of this Section 2.2((b)). (ii) Classification of Priority. When InterTrust is made aware by -------------------------- NatWest of a Material Defect in accordance with the notification procedures of Section 2.2((b))((i)) and in the manner set forth below, InterTrust and NatWest will work together to reasonably classify such Material Defect into the - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 8 CONFIDENTIAL appropriate priority level consistent with the following: (1) a Material Defect that renders the NatWest Products commercially unusable, resulting in total business disruption of NatWest's Clearinghouse Function services ("Critical -------- Material Defects"); (2) a Material Defect that substantially impairs the - ---------------- commercial use of NatWest Products ("Priority Material Defects"); and (3) a ------------------------- Material Defect that has lesser impact on the commercial use of NatWest Products, and/or a Material Defect not described in the immediately preceding subparagraphs (1) and/or (2) ("Other Material Defects"). In order for InterTrust ---------------------- and NatWest to make such classification and/or correct or mitigate a Material Defect, NatWest shall describe the alleged defect in reasonable detail, in writing to the extent possible (and orally to the extent this may expedite the correction of any Critical Material Defect); provided that all descriptions must -------- ---- be in sufficient detail to allow InterTrust to reliably reproduce such defect. (iii) Critical Material Defects. In the event NatWest brings a ------------------------- Critical Material Defect to InterTrust's attention in accordance with Section 2.2((b))((i)) and ((ii)) hereof, and subsequent to written notification by NatWest to InterTrust that NatWest is performing live commercial transactions involving the performance of Clearinghouse Functions on a meaningful commercial scale, InterTrust will make good faith efforts to communicate an initial response concerning such Critical Material Defect within six (6) hours. InterTrust shall devote its support resources in a priority manner to work on providing an urgent bug fix or workaround patch, process and/or procedure to temporarily correct or mitigate such defect as soon as practicable, and in a commercially reasonable manner, and, thereafter, use good faith efforts to work toward a longer term solution within a commercially reasonable and practical time frame as may be reasonably projected at such time by InterTrust after consultation with NatWest, all of the foregoing taking into account the nature, severity and complexity of such defect, the type and availability of engineering resources required, and the magnitude of NatWest's commercial, revenue generating use of InterTrust Technology. In the event a Critical Material Defect causes a total disruption in one or more of NatWest's substantial live services involving the performance of Clearinghouse Functions on a material scale as compared to NatWest's overall services supported by InterTrust Technology, and InterTrust has failed within sixty (60) days of receipt of notice from NatWest in accordance with the provisions of Sections 2.2((b))((i)) and 2.2((b))((ii)) to provide an urgent bug fix or workaround patch, process and/or procedure to temporarily correct or mitigate such defect to restore operation of such services, NatWest may terminate this Agreement upon providing InterTrust with ten (10) days prior written notice thereof. (iv) Priority Material Defects. In the event NatWest brings a ------------------------- Priority Material Defect to InterTrust's attention in accordance with Sections 2.2((b)))((i)) and 2.2((b))((ii)), and subsequent to written notification by NatWest to InterTrust that NatWest is performing live commercial transactions involving the performance of Clearinghouse Functions on meaningful commercial scale, InterTrust will make good faith efforts to communicate an initial response concerning such Priority Material Defect within forty-eight (48) hours. InterTrust shall reasonably devote its support resources to work on providing a bug fix or workaround patch, process and/or procedure to correct or mitigate such defect within a practical and commercially reasonable time frame as may be reasonably projected at such time by InterTrust after consultation with NatWest, taking into account the nature, severity and complexity of such defect, the type and availability of engineering resources required, and the magnitude of NatWest's commercial, revenue generating use of InterTrust Technology. (v) Other Material Defects. In the event NatWest brings an Other ---------------------- Material Defect to InterTrust's attention in accordance with Sections 2.2((b)) ((i)) and 2.2((b))((ii)), InterTrust will make good faith efforts to: (1) communicate a response promptly; and (2) thereafter correct or mitigate such defect in manner consistent with Section ((b))((i)) hereof. (c) Status Meetings. To assist the Parties in sharing information, and --------------- coordinating and evaluating their efforts relating to InterTrust Technology and their mutual technical and business objectives, following the Effective Date the Parties shall meet from time to time to discuss, among other things: (i) InterTrust's development progress; (ii) implementation of such technology by NatWest; and (iii) feedback concerning Assistance provided to NatWest and product development and marketing progress by NatWest (the "Status ------ 9 CONFIDENTIAL Meetings"). Such Status Meetings shall take place not less frequently than once - -------- a quarter during the first twelve months following the Effective Date. (d) Dedicated Personnel. InterTrust and NatWest will each appoint a ------------------- relationship manager, to coordinate its activities pursuant to this Section 0, and a technical project manager, to coordinate and facilitate the Assistance set forth in Sections 2.2((a)) and 2.2((b)). InterTrust will reasonably and consistently maintain such dedicated personnel. InterTrust will also promptly respond to any NatWest concerns regarding such personnel. InterTrust may utilize InterTrust resources located in the United Kingdom and/or Europe in part in providing the Assistance and other services set forth in this Section 2.2. 2.3 Additional Assistance; Further Standard Support Packages. During the -------------------------------------------------------- Support Period, additional Assistance may be made available by InterTrust to NatWest beyond the two hundred (200) hours per annum allocated under Section 2.2((a)) ("Additional Assistance"). To the extent NatWest requests, and InterTrust decides to provide such Additional Assistance, NatWest shall pay to --------------------- InterTrust fees that are no higher than the lowest fees charged by InterTrust to any other customers for such Additional Assistance under like circumstances and at a cost no greater than reasonably consistent with applicable U.S. software industry practices. Following the Support Period (or earlier if agreed by NatWest and InterTrust), NatWest may select one or more Standard Support Packages that InterTrust may offer, except that to the extent NatWest is using InterTrust Technology and InterTrust requires its customers (who have license rights and obligations comparable to NatWest) to maintain at least a certain minimum level of support with respect to its licensed activities, NatWest shall select and maintain at least such minimum level of support provided by a Standard Support Package, which minimum level will have associated support fees not materially in excess of the Support Fee (as adjusted upward for inflation or to maintain support fees reasonably commensurate with industry standard support fees in comparable circumstances) and shall provide support commensurate with the level of support provided in Section 2.2((a)) and 2.2((b)) hereof. Such support (including correction of Material Defects) shall be provided to NatWest at a cost no higher than the lowest fees charged by InterTrust to any other Core Partner for substantially the same level of support under like circumstances and no greater than reasonably consistent with U.S. software industry practices. 3. LIMITED LICENSE GRANT AND RESTRICTIONS. 3.1 Limited License to InterTrust Technology and Modified Technology. Subject ---------------------------------------------------------------- to the terms and conditions of this Agreement, InterTrust grants to NatWest during the term of this Agreement a limited, nonexclusive, nontransferable (except as provided in Section 14.4), nonsublicensable (except as expressly provided in subparagraph (d) and (e) below), worldwide right and license under the Licensed Rights to: (a) use and reproduce the InterTrust Technology and Modified Technology solely for the purpose of: (1) designing, making, developing, and producing NatWest Products; and (2) exercising the rights granted under Sections 3.1((b)), 3.1((c)), 3.1((d)), 3.1((e)) and 3.2 hereof; (b) modify the InterTrust Technology, except any Core Technology, to: (1) create Modified Technology solely for the purpose of enabling incorporation of InterTrust Technology into NatWest Products; and (2) incorporate such Modified Technology into NatWest Products; (c) use NatWest Products and/or provide associated services in connection therewith in Compliance with InterTrust Specifications, and otherwise solely in accordance with this Agreement; (d) market, distribute, offer for sale, sell, license for use, import, export and/or otherwise transfer NatWest Products that are Application Products, and Distributable Documentation, to NatWest Customers pursuant to a Customer Agreement in accordance with, and as defined in, Section 4.2 hereof, and otherwise solely in accordance with this Agreement; and 10 CONFIDENTIAL (e) market, distribute, offer for sale, sell, license for use, import, export and/or otherwise transfer NatWest Products that are Clearinghouse Products, solely to Authorized Clearinghouse Providers pursuant to a Customer Agreement specific to such Authorized Clearinghouse Providers supplied in accordance with, and as defined in, Section 4.2 hereof, and otherwise solely in accordance with this Agreement. 3.2 Limited License to Perform Clearinghouse Functions. Subject to the terms - --- -------------------------------------------------- and conditions of this Agreement, InterTrust grants to NatWest during the term of this Agreement a limited, nonexclusive, nontransferable (except as set forth in Section 14.4), nonsublicensable (except as expressly provided in subparagraph (ii) below), worldwide right and license under the Licensed Rights to: (i) perform Clearinghouse Functions solely under NatWest Trademarks as specified herein and in Compliance with InterTrust Specifications; and (ii) have Authorized Clearinghouse Providers perform any and all tasks and functions permitted by this Agreement to service InterRights Points provided to a Customer by NatWest in accordance with Section 3.1((d)), to the extent such Authorized Clearinghouse Provider has been granted by InterTrust rights of the scope necessary to perform the immediately foregoing activities. Such Clearinghouse Functions as set forth in subparagraph (i) of this Section 3.2 may be performed to service solely InterRights Points that have been provided by (a) a NatWest Product, and solely in connection with such NatWest Product, or (b) a Person having a valid written license from InterTrust allowing such Person to permit Authorized Clearinghouses Providers to service InterRights Points provided by such Person. 3.3 License to InterTrust Trademarks. Subject to the terms and conditions of -------------------------------- this Agreement, InterTrust grants to NatWest during the term of this Agreement a limited, royalty-free, nonexclusive, nontransferable (except as set forth in Section 14.4), nonsublicensable (except as expressly provided in Section 3.1((d)) and ((e)) and Section 3.2(ii)), worldwide license to use and display the InterTrust Trademarks solely: (i) on NatWest Products and in connection with associated services to indicate that such products and services are in Compliance with InterTrust Specifications; (ii) on related Distributable Documentation and marketing and sales materials to identify that InterTrust Technology is being utilized by NatWest; and (iii) as otherwise set forth herein or reasonably stipulated in writing by InterTrust's Chairman of the Board, or any other InterTrust officer designated in a written communication to NatWest signed by InterTrust's Chairman of the Board (an "InterTrust Designated --------------------- Officer"). - ------- 3.4 No Additional Licenses. NatWest understands and acknowledges that ---------------------- InterTrust is licensing to NatWest only certain limited rights to use InterTrust Technology as described herein; and InterTrust understands that NatWest is licensing to InterTrust only certain limited rights as expressly set forth herein. Thus, notwithstanding the generality of any other provision herein: (i) NatWest acknowledges and agrees that the licenses granted under Sections 3.1, 3.2, and 3.3 are the only licenses granted to NatWest; (ii) InterTrust acknowledges that the licenses granted under Sections 4.6 and 6.3 are the only licenses granted to InterTrust; and (iii) both Parties acknowledge that no other licenses have been expressly, or by implication or estoppel, now or in the future, granted except pursuant to a separate written agreement executed by an authorized officer of NatWest and an InterTrust Designated Officer. Any and all rights of InterTrust not expressly granted to NatWest under this Agreement are reserved and retained by InterTrust. Any and all rights of NatWest not expressly granted to InterTrust under this Agreement (including pursuant to Sections 4.6 and 6.3 hereof) are reserved and retained by NatWest. 3.5 General Restrictions. NatWest covenants that it shall not: (i) during the -------------------- term of this Agreement (a) reverse engineer any portion of the Core Technology or any technology that has been supplied to NatWest in Object Code form only, (b) modify any portion of the Core Technology, and/or (c) engage in any "clean room" activities designed to replicate the functionality of the Core Technology for any use inconsistent with this Agreement; or (ii) after the term of this Agreement, use or exploit the InterTrust Technology for any purpose whatsoever (except as expressly provided in Section 13.3). Any material use by NatWest of any portion of the InterTrust Technology and/or Modified Technology outside the scope of the licenses granted by InterTrust hereunder shall constitute a material breach of this Agreement. If the provisions of subsections (i)(a), (i)(b) and/or (i)(c) of this Section 3.5 are prohibited by any jurisdiction having competent jurisdiction over this Agreement and such prohibition cannot be waived by a Party by nature of the foregoing language, or otherwise be reasonably avoided by a Party (such as, for example, by developing, accessing and/or using any relevant 11 CONFIDENTIAL portions of the InterTrust Technology outside of such jurisdiction), then (1) before engaging in any of the activities set forth in such subsections (i)(a), (i)(b) and/or (i)(c), NatWest shall provide InterTrust with ninety (90) days prior written notice; and (2) all information and/or technology derived from such activities (the "Derived Information") shall be treated as InterTrust ------------------- Confidential Information (defined below) or Top Secret Information (defined below) as the case may be, and shall be used solely within the scope of NatWest's licenses granted under this Agreement and the other terms and conditions hereof. Furthermore, any disassembly, decompilation or reverse engineering undertaken in reliance upon such applicable jurisdiction' s prohibiting law shall take place only where such disassembly, decompilation or reverse engineering of any InterTrust software (or any part thereof) and reproduction of the software and translation of its form are indispensable to obtain the information necessary to achieve the interoperability of the software with other programs, provided that: (A) these acts are performed by such Person -------- ---- or by another Person having a right to use a copy of the software, or on their behalf by a Person authorized under this Agreement to do so and where such acts are not in violation of any applicable governing law; (B) the information necessary to achieve reasonable interoperability has not previously been readily available to the Persons referred to in subparagraph (A); and (C) these acts are confined to the parts of the software which are necessary to achieve interoperability (as interoperability may legally be most narrowly interpreted under applicable law and precedent, for example to exclude from "interoperability" any acts that compromise system security and/or undermine basic viability or functionality of InterTrust Technology and/or NatWest Products) and occur solely as is consistent with the licenses under this Agreement, and where any rights to use any information derived from such acts terminate immediately and fully upon any cessation or termination of applicable licensed rights hereunder. 4. NATWEST SUPPORT AND ADDITIONAL COVENANTS 4.1 NatWest Support of InterTrust Technology. ---------------------------------------- (a) NatWest Use of InterTrust Technology. In accordance with the ------------------------------------ licenses granted to NatWest and the other terms hereunder, in addition to those provisions of Section 8.1, NatWest agrees to make commercially reasonable, good faith efforts to develop, produce, and distribute or use for commercial purposes, in a commercially meaningful manner, a NatWest Product (as applicable) as soon as commercially reasonable and practicable, and in any case within twelve (12) months following the Effective Date. Such time period shall be extended by any period in which there is a delay in InterTrust's delivery of the Commerce 1.0 (GA Version) software beyond that set forth as of the Effective Date in Exhibit A hereto, or there exists a Material Defect in the Commerce 1.0 software that materially impedes NatWest's development efforts as relevant, but only for the period from the date that NatWest shows such efforts to have been first materially impeded to the date such defect has been reasonably corrected or mitigated as provided in Section 2.2((b)). (b) Compliance with InterTrust Specifications. ----------------------------------------- (i) Products and Services. NatWest shall not commence the --------------------- distribution, sale or other transfer of any specific NatWest Product, or perform any service directly relating to InterTrust Technology, unless such products and/or services are in Compliance with InterTrust Specifications. Such InterTrust Specifications shall be established and applied in a nondiscriminatory and consistent manner with respect to all Persons regarding similar products, services, and/or circumstances directly related to use. InterTrust Specifications promulgated as of the Effective Date are set forth in Exhibit C hereto. (ii) Compliance with New Specifications. InterTrust may, from time to ---- ---------------------------------- time, modify InterTrust Specifications to accommodate changes in InterTrust Technology, and/or any related InterTrust product development, for such purposes as, for example, improving architectural integrity, functional capability, standardization, security capability, efficiency, and/or interoperability of technology, components, products and/or services that use InterTrust Technology (a "New Specification"). InterTrust shall use commercially reasonable efforts to ----------------- maintain compatibility between a New Specification and the then-preceding Specification taking into account benefits of performance, functionality, security enhancements, growth of installed base and 12 CONFIDENTIAL range of supported platforms, and potential burden resulting from version incompatibility. Priority shall be given to considerations of security, interoperability and platform support in evaluating when such compatibility is not commercially appropriate. To the extent InterTrust releases a New Specification that applies to any portion of a NatWest Product and/or service associated with InterTrust Technology then being performed or distributed by NatWest (as applicable), NatWest shall bring any further such products delivered to Customers, and/or any such services (as applicable), into Compliance with such New Specification as of the earliest to occur of: (A) the next version, release, or production cycle of such NatWest Product and/or such associated service (the "Next Version"), as earlier applicable, but only to the extent that ------------ NatWest receives notice of such New Specification within a reasonably sufficient time of such Next Version to accommodate new aspects of such New Specification; and (B) [*] months after NatWest receives a released copy of such New Specification. InterTrust and NatWest further agree that NatWest shall, within [*] months after receiving a released copy of such New Specification, implement such new aspects of such New Specification for all applicable services supporting and/or employing NatWest Products and/or any other products employing InterTrust Technology provided to Customers and not meeting such New Specification. Notwithstanding the foregoing, should serious technical interoperability and/or security requirements commercially necessitate more prompt action, NatWest and InterTrust will confer and agree upon more aggressive, practical schedules (taking into account the severity of security and interoperability concerns) feasible to ensure Compliance with the New Specification for all NatWest Products and any services relating to InterTrust Technology. Under such conditions, NatWest shall take whatever commercially appropriate steps are reasonable and required under the circumstances to minimize or eliminate (as may be necessary) a continuation of such interoperability and/or security problems. InterTrust represents to NatWest that all Core Partner Agreements existing as of the Effective Date contain substantially similar commitments regarding compliance by such Core Partner with InterTrust Specifications and New Specifications as provided for in this Section 4.1(b)(c). If during the term of this Agreement InterTrust enters into a technology development and/or license agreement with any Core Partner having terms [*] to such Core Partner than those contained in this Section 4.1((b)), and pursuant to such agreement the requirements of Compliance with Specifications [*] to such Core Partner than the set forth in this Section 4.1((b)), NatWest shall thereafter going forward be accorded [*] regarding the requirements of Compliance with Specifications under this Section 4.1((b)), but solely to the specific extent and nature of such [*]. (c) Compliance Testing. ------------------ (i) Purpose. NatWest acknowledges that:(1) in support of InterTrust ------- Technology, InterTrust will implement one or more certification programs designed to ensure that licensed products and/or associated services (including NatWest Products) use InterTrust Technology and/or Modified Technology in Compliance with InterTrust Specifications in accordance with this Agreement (the "Certification Program(s)"); and (2) such Certification Program(s) is (are) ------------------------ critical to maintaining the reliability, interoperability, and tamper resistance of products and services employing InterTrust Technology and/or Modified Technology, and in maintaining public confidence in the integrity of InterTrust Technology and/or brands as the resource for interoperable electronic commerce. In establishing its Certification Programs, as may be modified from time to time, InterTrust shall use reasonable efforts to establish policies supporting efficient certification of products and services based upon InterTrust Technology, subject, in InterTrust's discretion, to achieving the aforementioned goals of certification. As appropriate under the circumstances as determined by InterTrust, such alternatives may, under certain circumstances, include: (A) the pre-certification of certain components of InterTrust Technology for use in NatWest Products; (B) providing test programs or suites amenable for self certification or preliminary assessment of certifiability; and/or (C) otherwise supporting certification policies and/or technology that enables reasonable certification efficiency and Compliance with InterTrust Specifications. Any Certification Program(s) established by or for InterTrust for Development Partners shall be applied in a nondiscriminatory and consistent manner with respect to NatWest and all other Persons providing similar products and/or services. (ii) Certification Requirements. Consistent with the foregoing, -------------------------- prior to NatWest's first commercial use, or distribution, sale, or other transfer, of a NatWest Product or associated service (as applicable) InterTrust may require NatWest's: (1) use of a suite of test software provided by InterTrust (or an InterTrust - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 13 CONFIDENTIAL delegate ("Delegate") in accordance herewith) to test and verify that -------- NatWest Products (and/or associated services) are, at least in part, in Compliance with InterTrust Specifications; and/or (2) submission of samples to InterTrust (and/or an InterTrust Delegate) of such NatWest Products (in Object Code form unless Source Code is necessary or reasonably appropriate) and associated programs, parameter data, and other information that may be technically material to ascertain Compliance with InterTrust Specifications and/or to allow InterTrust (or a Delegate) to perform confidential testing ("Certification Testing"). To the extent that options (1) or (2) immediately --------------------- above do not, or can not reasonably be anticipated to, provide sufficient information to verify Compliance, such Certification Program(s) may also require the provision to InterTrust and/or an InterTrust Delegate of detailed specifications and documentation related to NatWest's use of InterTrust Technology and Modified Technology for NatWest Products, and/or any associated services, but only to the extent that any such specifications and documentation are reasonably requested for certification assessment purposes and may be material to Certification Testing. All specifications and documentation provided by NatWest in connection with any such Certification Program(s) shall be authenticated in writing by an authorized representative of NatWest, and no NatWest Product and/or associated service shall be made commercially available hereunder unless it has become a Compliant Product (defined below). Any such Delegate performing certification in connection with NatWest Products and associated services hereunder shall: (A) not have commercial interests materially adverse to NatWest; and (B) have agreed to enter into a confidentiality agreement to maintain the confidentiality of NatWest Confidential Information. (iii) InterTrust Certification Response. In connection with any --------------------------------- submissions made to InterTrust or an InterTrust Delegate in connection with a Certification Program, InterTrust (or such Delegate) will respond in a reasonably prompt manner recognizing product delivery time frames as appropriate following receipt of submitted products and access to, or receipt of technology supporting, such service, unless commercially reasonable factors result in prolonging such response. Such response shall be in the form of: (1) a written approval that the product or service is certified (a "Compliant Product") ----------------- (NatWest Products and services relating to InterTrust Technology not being Compliant until such certification has been granted); or (2) if not approved, a summary, with reasonable details as feasible, of problems and, where feasible, suggested solutions. (iv) Costs. To defray costs associated with the performance and ----- administration of the Certification Program, in connection with the certification of any product or service NatWest shall be charged a reasonable fee not to exceed U.S. software industry norms for similar testing activities as may be available (and, if in part or in full conducted or managed by InterTrust, not more than the full cost incurred by InterTrust in performing, administering, and/or managing such tests, and, to the extent conducted by a Delegate, not more than fees charged by such Delegate to NatWest and InterTrust). An estimate of such fee shall be provided to NatWest, as applicable, as soon as reasonably practical upon NatWest's submission of samples or documentation for and access to services, for testing, and such fee shall be paid by NatWest in accordance with standard U.S. software industry practices. (d) Documentation Format. NatWest may modify the format of Distributable -------------------- Documentation and supplement the content thereof, but only in a manner consistent with such Distributable Documentation, to the extent reasonably necessary to enable NatWest's Customers to utilize NatWest Products and/or associated services. Subject to the provisions of this Agreement, NatWest may, at its expense, translate, or have translated for it, the Distributable Documentation into any appropriate language for purposes of delivery to its Customers or its own internal use. InterTrust shall have the right to receive and approve (to the extent referencing InterTrust Technology and/or capabilities and/or functions enabled by InterTrust Technology) any non-English translations made by or for NatWest of documentation provided by NatWest concerning NatWest Products and any related services (including Distributable Documentation), legends and notices required pursuant to Section 0 hereof and other required notices, and all versions of InterTrust Technology. 4.2 Customer and Clearing Agreements. -------------------------------- (a) Basic Requirements. NatWest shall distribute NatWest Products only to ------------------ Customers (and perform associated services only for Customers), and only after NatWest shall have first notified and required 14 CONFIDENTIAL such Person to become bound by a form of customer agreement ("Customer -------- Agreement") for such NatWest Product (and/or associated service) appropriate for - --------- such Customer (such as whether such Customer is an end-user or intends to further distribute NatWest Product) as provided by NatWest. Such Customer Agreement forms shall have terms relating to InterTrust Technology and InterTrust's rights and interests consistent with and reflective of the terms of this Agreement. Such Customer Agreement shall also have terms consistent with, reflective of, and based upon the items set forth in Exhibit D hereto (collectively, the "InterTrust Terms"). Such InterTrust Terms shall be signed by ---------------- an InterTrust Designated Officer and appended to Exhibit D, and NatWest and InterTrust may from time to time supplement or amend Exhibit D as provided in Section 0(0). (b) Additional Provisions. The approved InterTrust Terms shall be used --------------------- by NatWest in all Customer Agreements unless and until: (i) NatWest requests a modification of the InterTrust Terms and InterTrust consents in its discretion in writing to such modification; or (ii) InterTrust reasonably requires that NatWest alter the InterTrust Terms where such alteration is needed to prevent or mitigate any impairment of any part of its Intellectual Property Rights, or any impairment of the security and/or interoperability of InterTrust Technology and applications and/or services based thereon, for example in view of court decisions and/or applicable regulations and/or newly available information. Such alteration to the InterTrust Terms shall be signed by an InterTrust Designated Officer and attached to Exhibit D in accordance herewith. NatWest agrees and acknowledges that NatWest's compliance with this Section 4.2((b)) with respect to any specific Customer shall constitute a condition precedent to the licenses granted under Section 3 hereof with respect to any such Customer's use of NatWest Products and/or associated services. To the extent any InterTrust Terms are deemed, or are reasonably believed by InterTrust to have a substantial likelihood of being deemed, unenforceable or otherwise ineffective in any relevant jurisdiction, NatWest shall, upon becoming aware of such InterTrust Terms being deemed unenforceable or otherwise ineffective, or upon receiving written notice from InterTrust as to such reasonable belief, substitute new terms provided by InterTrust concerning such unenforceable or ineffective provision in such Customer Agreement forms or existing Customer Agreements, and take other actions as reasonably specified by InterTrust related to such unenforceability concerns, including reforming, modifying and/or canceling any such Customer Agreement if necessary to provide InterTrust with the legally enforceable protection contemplated hereunder. (c) InterTrust Terms Review. Under no circumstances: (i) shall any such ----------------------- review by InterTrust of InterTrust Terms and/or any terms of any Customer Agreement subsequently be interpreted and/or used as comments of InterTrust to be relied upon by NatWest in any manner whatsoever regarding compliance of such InterTrust Terms and/or such Customer Agreement terms with the provisions of this Agreement; and/or (ii) shall any such review or lack of review by InterTrust be deemed (1) binding on InterTrust or constitute any waiver of any rights whatsoever hereunder by InterTrust and/or (2) an admission or waiver of any kind whatsoever under any circumstances whatsoever, except that NatWest may rely on InterTrust Terms attached to Exhibit D hereto as amended from time to time in accordance herewith. (d) Clearing Agreement. Where NatWest is performing any Clearinghouse ------------------ Function services for a Person selling, acting as lessor or licensor of, vending, or in any comparable manner providing rights related to Content, or performing any other activities constituting a Content Transaction for consideration for such Content (a "Vendor"), NatWest shall have a written ------ agreement with such Vendor concerning such performance of Clearinghouse Functions, and such agreement shall contain (in addition to the InterTrust Terms, as applicable), at minimum, provisions: (i) requiring such Vendor to report and certify Customer's Portion Information (as defined in Section 5.1((b)) hereof) to NatWest in writing, and regularly update such reported information (consistent with the timing of NatWest's obligation to remit royalties pursuant to Section 5.2 hereof) in the event of any change thereof; (ii) terminating such agreement in the instance that such reported information is found to have been materially or intentionally misrepresented or repeatedly negligently reported; and (iii) permitting InterTrust to act as a third party beneficiary (with the right to enforce) those provisions set forth in the preceding subparagraphs (i) and (ii) under the law of such jurisdiction and venue as set forth in the InterTrust Terms, unless any such terms are prohibited by applicable law, and then as reasonably agreed by the Parties. 4.3 Notices and Branding. -------------------- 15 CONFIDENTIAL (a) Product Notices. NatWest shall place Notices (as hereinafter defined) --------------- on all NatWest Products, and Distributable Documentation: (i) in the "about box," or (ii) at such other equivalent location(s) as may be required to provide legally sufficient notice and/or as reasonably agreed in writing by InterTrust and NatWest, such as on certain screens generated by or including the NatWest Products and/or any associated services, and at such other locations as appropriate to protect InterTrust's Intellectual Property or as may be reasonable practice in the U.S. software industry. For purposes of this Agreement, the term "Notices" shall consist of: (i) Intellectual Property Rights, warranty, and disclaimer notices; and (ii) field of use notices consistent with the terms of this Agreement (including protection of InterTrust rights recognized hereby) as all such notices may be reasonably amended by InterTrust from time to time consistent with the provisions of Section 4.2((b)), and this Agreement. A representative version of such Notices as of the Effective Date are attached hereto as Exhibit E. NatWest shall not remove, alter, cover, obfuscate and/or otherwise deface any InterTrust Trademarks or Notices on any InterTrust Technology or associated documentation, marketing and advertising materials therefor, and shall contractually prohibit any and all Customers from -- and take commercially reasonable efforts to enforce such prohibitions against any Person known by NatWest to be in breach of such provisions concerning -- removing, altering, covering, obfuscating or otherwise defacing of any InterTrust Trademarks or Notices on any InterTrust Technology or associated documentation, marketing and advertising materials therefor. Compliance with subsections (i) and (ii) immediately above (following notice and opportunity to cure in accordance with the provisions of Section 13.2 hereof) shall constitute a condition precedent to the licenses granted under Section 3 hereof with respect to those specific NatWest Products and/or associated services not in compliance herewith. (b) InterTrust Branding. NatWest shall, in accordance with the provisions ------------------- of this Section 4.3((b)) and InterTrust's reasonable instructions provided from time to time by InterTrust to NatWest, place the InterTrust brands as specified below on all NatWest Products and associated services, Distributable Documentation, marketing, sales, and advertising materials therefor, packaging for any physical media containing any such products or services, on initialization and/or start-up screens of any NatWest Products and/or associated services, or such screens generated by or including the NatWest Products and/or any associated services. The InterTrust brands shall be the symbol or mark denoting Compliance of such NatWest Products and/or associated services with InterTrust Specifications, including the statement that such NatWest Products or associated services are "InterTrustworthy" or "InterTrustable" (as such symbol or mark may be amended by InterTrust from time to time consistent with the provisions of Section 4.4((e)) hereof). Such branding shall be located and appear in the manner specified by InterTrust, which shall be prominent, although secondary to the brands of NatWest and/or a NatWest Customer on a NatWest Product and/or service. Such InterTrust branding shall be prominent, but not unreasonably detract from, or interfere with, such other brands. NatWest shall not remove, alter, cover, obfuscate and/or otherwise deface any InterTrust brands and shall contractually prohibit its Customers from, and take commercially reasonable efforts to enforce such prohibitions against any Customer known to NatWest to be in breach of such provision concerning, the removal, alteration, covering, obfuscation or otherwise defacing of such InterTrust brands. (c) NatWest Product Branding. NatWest Products that are: (i) ------------------------ Clearinghouse Products (and/or services associated therewith) shall be branded and marketed solely under NatWest Trademarks; and (ii) Application Products (and/or services associated therewith) shall be branded and marketed solely under NatWest Trademarks or "Co-Branded" (as defined below) under a NatWest ---------- Trademark and the trademark of a Customer in accordance with the provisions hereof (except where use of InterTrust Trademarks is also required herein, or other trademarks of Persons are also included in a limited manner to identify other technology or services associated with such NatWest Product and/or associated service), and in all events in accordance with the provisions of Section 4.5 and other provisions hereof. As used herein, "Co-Branded" means that ---------- both a NatWest Trademark brand and the brand of a NatWest Customer appear on a NatWest Product and/or associated service; provided that the NatWest brand shall -------- ---- at least be clearly evident and prominent in all instances of branding usage without unreasonably detracting from or interfering with such NatWest Customer brand. References to Clearinghouse Function services with, in, or otherwise related to NatWest Products that are Application Products, and/or services through which NatWest provides Clearinghouse Function services shall be prominently branded solely under NatWest Trademarks (except as provided under Section 4.3((b)) including prominent branding on screens and/or user interfaces directly relating to initiating and/or reporting on transactions, and 16 CONFIDENTIAL materially prominent, though potentially secondary, mention on other splash screens and/or other relevant screens visible to end users. If NatWest is not performing the Clearinghouse Function services for any NatWest Product and/or associated service then, in addition to the foregoing with respect to a Co- Branded Product, the NatWest Trademark Brand shall occupy not less than [*] percent ([*]%) of the aggregate presentation area in any NatWest Product and/or associated service dedicated to the presentation of any brands. In no event shall branding be employed that may be in any manner unclear that the branding and provision of Clearinghouse Products (and/or services associated therewith) is provided solely by NatWest. (d) Network Notices. At InterTrust's option and upon NatWest's approval, --------------- which shall not be unreasonably withheld given the balance of commercial reasons, NatWest Web pages that materially promote or otherwise support NatWest Products, and/or associated services and InterTrust Technology (and/or at least one NatWest Web page that materially promotes NatWest Products and/or associated services if no Web pages materially promote or otherwise support InterTrust Technology) shall contain a graphical banner provided by InterTrust and a link to a Web page provided by InterTrust on the Internet or the equivalent thereof on any other public electronic network that materially promotes InterTrust Technology. At NatWest's option and upon InterTrust's approval, which shall not be unreasonably withheld given the balance of commercial reasons, InterTrust Web pages that materially promote or otherwise support InterTrust Technology and NatWest Products and/or associated services (and/or at least one InterTrust Web page that materially promotes InterTrust Technology if no Web pages materially promote or otherwise support NatWest Products and/or associated services) shall contain a graphical banner provided by NatWest and a link to a Web page provided by NatWest on the Internet or the equivalent thereof on any other public electronic network that materially promotes NatWest Products and/or associated services so long as NatWest treats InterTrust as its preferred partner for Secure Container and/or Digital Rights Management technologies. (e) Prospective Notice. The Notices shall be effective beginning on the ------------------ date InterTrust gives NatWest written notice thereof and NatWest shall implement and/or comply with applicable portions thereof as soon as reasonably commercially practicable thereafter. 4.4 InterTrust Trademarks. --------------------- (a) Standards. NatWest recognizes the importance of InterTrust's --------- reputation and goodwill as the provider of a commercial trust environment and in connection with NatWest's use and distribution of licensed products and services bearing InterTrust Trademarks. Consequently, to maintain InterTrust's interest in and rights to the InterTrust Trademarks NatWest shall utilize the InterTrust Trademarks in accordance with reasonable trademark guidelines (which may include approved samples and exemplars) as may be provided to NatWest by InterTrust. Such trademark guidelines shall include a list of InterTrust Trademarks and shall specify restrictions on use, if any, including permitted and prohibited countries and jurisdictions. InterTrust Trademarks and trademark guidelines as of the Effective Date are initially listed on Exhibit B attached hereto, and may be modified by InterTrust from time to time upon InterTrust's provision to NatWest of reasonable prior written notice. Any such modification shall not include any names, logos or marks that substantially conflict, create a likelihood of confusion with, or cause substantial or material dilution of any then-existing trademark rights of NatWest. (b) Trademark Ownership; Contestability. NatWest acknowledges and agrees ----------------------------------- that all uses of InterTrust Trademarks as permitted hereunder, and goodwill associated therewith, shall inure solely to the benefit of InterTrust. NatWest shall not contest the validity of any InterTrust Trademarks (or registrations thereof or applications with respect thereto), or InterTrust's exclusive ownership of the InterTrust Trademarks or their associated goodwill: (i) with respect to any InterTrust Trademarks included on Exhibit B as of the Effective Date ("Initial Trademarks"); and/or (ii) with respect to any InterTrust ------------------ Trademarks later added to such Exhibit B in accordance with Section 4.4((a)) ("Added Trademarks") (provided that NatWest uses such Added Trademarks in ---------------- commerce during the term hereof). NatWest agrees to make available to InterTrust, upon request with reasonable notice, samples of records and other documentary evidence as is (are) retained in the ordinary course of - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 17 CONFIDENTIAL NatWest's business regarding its use of the InterTrust Trademarks, and information regarding first use of the InterTrust Trademarks by NatWest in each country. (c) Confusing Similarity. NatWest shall not use any marks identical with -------------------- or confusingly similar to any of the Initial Trademarks, or Added Trademarks used in commerce by NatWest at any time, and shall not register or attempt to register any marks identical with or confusingly similar to any Initial Trademarks or any Added Trademarks used in commerce by NatWest at any time during the term hereof. NatWest also shall not knowingly permit to be used or affixed (and shall take commercially reasonable steps to prohibit Customer from using or affixing) any trademark on any NatWest Product supplied to such Customer to the extent such trademark could reasonably be thought to be confusingly similar to or create any market confusion with any trademarks used by such Customer in connection with any products or services using Secure Container technology (other than InterTrust Technology Secure Containers). (d) Approvals. InterTrust shall have the right to review (reasonably --------- prior to first commercial use) and to approve (which approval shall not be unreasonably withheld or delayed) all uses of InterTrust Trademarks, including any use thereof on NatWest Products, and in connection with associated services (including performance of Clearinghouse Functions) provided by NatWest relating to products and applications employing InterTrust Technology and/or Modified Technology, and in related documentation and marketing materials. Uses or ranges of uses of InterTrust Trademarks approved in writing by InterTrust may be used by NatWest in connection with NatWest Products and/or associated services, and all applicable related documentation and marketing materials until InterTrust informs NatWest in writing that such use or range of uses is no longer approved, and such notification shall take effect in the manner set forth in Section 4.3((e)) hereof. (e) Prospective Notice. Changes in the InterTrust Trademarks and ------------------ associated standards of quality shall be effective beginning on the date InterTrust gives NatWest written notice thereof and NatWest shall, as soon as reasonably commercially practicable thereafter, implement and/or comply with such respective portions thereof. 4.5 NatWest's Use of NatWest Trademarks on NatWest Products. To promote the ------------------------------------------------------- branded and distinct identity of any NatWest Products, or associated services, NatWest acknowledges and agrees that any trademark or logo used by NatWest and/or a NatWest Customer (with respect to Co-Branded NatWest Products) in commerce to specifically identify, label or market any such products or services (other than trademarks or logos that serve to generally identify NatWest or such NatWest Customer) shall not, concurrently or thereafter, be used to identify any product or service other than such NatWest Products, and associated services, whether by NatWest, such NatWest Customer, or pursuant to license from NatWest. 4.6 NatWest Trademarks. InterTrust shall obtain permission from NatWest for any ------------------ use of NatWest's Trademarks in connection with marketing activities (which permission shall not be unreasonably withheld or delayed) and shall comply with NatWest's instructions provided in writing by NatWest concerning such further use of any NatWest Trademarks, except that InterTrust shall have the royalty free, nontransferable (except as provided in Section 14.4) worldwide right to use the NatWest Trademarks and other NatWest trademarks as selected by NatWest, solely in connection with any publicity in accordance with Sections 4.3((d)), 7.1, 7.2 and 9.3 hereof. InterTrust shall comply with all reasonable trademark guidelines provided in writing by NatWest concerning such use of any NatWest Trademarks which guidelines shall specify restrictions on use, including permitted countries and jurisdictions. The provisions of Section 4.4 shall apply reciprocally to InterTrust with respect to NatWest Trademarks as it applies to NatWest with respect to InterTrust Trademarks, and InterTrust shall comply with such provisions. NatWest Trademarks and trademark guidelines as of the Effective Date are listed on Exhibit B attached hereto, and may be reasonably modified by NatWest from time to time upon NatWest's provision to InterTrust of reasonable prior written notice thereof. Any such modification will not include any names, logos or marks that substantially conflict with, create a likelihood of confusion with, or cause a substantial or material dilution of then-existing trademark rights of InterTrust. 18 CONFIDENTIAL 5. LICENSE FEES AND PAYMENT TERMS. 5.1 Fees and Royalties. ------------------ (a) InterTrust Technology Fees. In consideration of the licenses granted -------------------------- to NatWest herein and the other terms and conditions hereof, NatWest shall pay to InterTrust the following nonrefundable license fees, net of any withholding tax: (i) concurrently with the execution hereof, [*] dollars ($US[*]); (ii) within thirty (30) days after the delivery to NatWest of the Commerce 1.0 (GA Version), [*] dollars ($US[*]); (iii) upon the earlier of (1) NatWest's first commercial transfer and/or use of a NatWest Product and/or associated services pursuant to Section 3.1((c)) and/or ((d)) hereof, or (2) one (1) year from the Effective Date, [*] dollars ($US[*]), which payment shall be [*] due InterTrust in the manner set forth in Section 5.2 below ("[*]"); (iv) within thirty (30) days after the delivery to NatWest of any Update Release and/or New Release, which alone or in combination with previous releases, contains all of Requested Functionality, [*] dollars ($US[*]), which payment shall also be [*] due InterTrust in the manner set forth in Section 3.2 below as [*]; and (v) within thirty (30) days after the delivery of Commerce 2.0 or June 1, 2000 whichever is earlier, [*] dollars ($US[*]), and on the first day of each calendar quarter for three calendar quarters, commencing with the first calendar quarter after the payment set forth in Section 5.1((a))((iv)), [*] dollars ($US[*]), all four of such payments shall also be [*] due InterTrust in the manner set forth in Section 5.2 below as [*]. (b) InterTrust Technology Royalties. In consideration of the licenses ------------------------------- granted to NatWest herein and the other terms and conditions hereof, for NatWest's exercise of the license pursuant to Section 3.2 hereof NatWest shall pay to InterTrust the following royalties, net of any withholding tax: (i) six-tenths of one percent (0.6%) of the Gross Commercial Value of each Content Transaction where such Content Transaction involves the performance of a Clearinghouse Function; (ii) two percent (2%) of the Gross Commercial Value received as consideration for the complete or partial performance by or on behalf of NatWest of any Clearinghouse Function, but not including those Clearinghouse Functions that are set forth in Section 5.1((b))((i)) above; provided that (x) in calculating the Gross Commercial Value of a Content - -------- ---- Transaction in accordance herewith in the instance where a royalty due under subparagraph (i) above is based on any consideration provided to one or more Vendors other than through NatWest (such consideration the "Customer's ---------- Portion"), NatWest may, in exercise of its good faith, rely upon information - ------- reported to it by such Vendors in accordance with the provisions of Section 0(0) hereof quantifying sums of money as consideration, and/or the fair market value of any other consideration, provided to such Person ("Customer's Portion ------------------ Information"); so long as NatWest has used reasonable efforts in accordance with - ----------- applicable industry practices of the Payment Card Services industry to assess and validate the accuracy of such Customer's Portion Information, where reasonable grounds for suspicion exist. NatWest shall promptly discuss with an InterTrust Designated Officer any such suspicions (including any apparent inconsistencies or anomalies with Customer's Portion Information); (y) where royalties both under subparagraphs (i) and (ii) immediately above would result from such performance of Clearinghouse Functions for the same, identical, discrete Content Transaction or other electronic event, then in such instance only the greater of the two royalties described in (i) and (ii) above (measured by the amount to be received by InterTrust - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 19 CONFIDENTIAL hereunder) shall be due and payable to InterTrust for such identical discrete, Content Transaction or other electronic event; and/or (z) the Gross Commercial Value received as consideration for the complete or partial performance by or on behalf of NatWest of any Clearinghouse Function for purposes of subparagraph (i) and (ii) above shall not include consideration received by NatWest or any Person controlled by NatWest ("NatWest Affiliate") for the offering by NatWest or a NatWest Affiliate of a NatWest or NatWest Affiliate product and/or service to an end user wherein such NatWest or NatWest Affiliate product and/or service: (1) has been positioned or offered based in whole or in part upon NatWest's and/or NatWest Affiliate's use of information derived by NatWest at least in part from the use of any InterTrust Technology and/or Modified Technology; (2) is reasonably considered to be a financial industry product and/or service; and (3) is not, for compensation, being provided in whole or in part to provide the end user with any such derived information; and (iii) for all revenue and the monetary value of any other consideration, if any, received by NatWest directly in connection with the sale, lease, license, distribution, transfer, or other use of NatWest Products and/or services that utilize NatWest Products and/or InterTrust Technology (such as service fees for packaging third party Content and/or fees for hosting Content in connection with a NatWest service), and not based on performance of Clearinghouse Functions, a royalty of two percent (2%) of all such revenue and any such monetary value for other consideration received by NatWest, minus any sales, use, value added or other taxes (except withholding taxes) imposed by any national, state, local or foreign government and paid by and/or for NatWest on such received revenue and/or any other consideration (as calculated according to generally accepted accounting principles consistently applied with past practices). (c) Support and Maintenance Fee. Subject to the provisions hereof, in --------------------------- partial consideration of InterTrust's provision of Support and Assistance set forth in Section 2.2 hereof, and Upgrades and New Releases, during the Support Period, NatWest shall pay to InterTrust the amount of [*] dollars (US$[*]) on an annual basis (the "Support Fee"). NatWest shall pay the Support Fee in four ----------- quarterly installments within thirty (30) days after each calendar quarter in accordance with Section 0 hereof. (d) [*]. If InterTrust [*] to such licensee than those granted to NatWest hereunder (the Parties' acknowledging that license scope and partnering commitments are important terms in the overall consideration), and pursuant to such agreement: (i) [*] the type in [*], and/or [*] set forth in such sections hereof; and/or (ii) the [*] or any [*] is [*] to the licensee thereof than that set forth in Section [*] hereof, the [*] set forth in Section [*], and/or [*] hereof shall [*], as applicable, to such [*] charged to such other licensee or NatWest shall thereafter going forward be [*], as applicable. Upon NatWest's written request which shall not be made more than [*] in any calendar year, InterTrust will deliver a written confirmation certified by the General Counsel of InterTrust as to whether the [*] under Section [*] remain applicable or whether Natwest is entitled to [*] by virtue of this Section 5.1(d). (e) Review of Royalty Rates; No Minimum Royalty. Upon the seventh (7th) ------------------------------------------- anniversary of the Effective Date, or earlier if requested by NatWest in writing as a result of significant market exigency, the Parties agree to discuss and review the royalty rates set forth in Section 5.1((b))((i)), 5.1((b))((ii)), and/or 5.1((b))((iii)) hereof. Any change in such rates shall be subject to agreement in writing by NatWest and InterTrust in the exercise of each party's discretion. Neither Party shall have any obligation whatsoever to agree to any modification of such royalties. NatWest is under no obligation to meet any royalty minimum usage requirements, and, provided that it complies with its obligation of Section 5.1((a)) and 5.1((b)), NatWest shall have freedom to price its Content Transactions and Clearinghouse Functions, including the option not to charge its Customers. (f) Suspension of Certain License Payments. In the event a Critical -------------------------------------- Material Defect causes a total disruption in one or more of NatWest's services involving the commercial performance of Clearinghouse Functions - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 20 CONFIDENTIAL and such service(s) with which the Critical Material Defect is associated is a substantial service in the context of the overall such services being delivered by NatWest and supported by and employing InterTrust Technology, NatWest shall be entitled to suspend making any payments that become due and payable under Section 5.1(a) during the pendency of such Critical Material Defect -- i.e., from the time that such Critical Material Defect is reported to InterTrust as set forth in Section 2.2 (b) (ii) until such time InterTrust has provided an urgent bug fix or workaround patch, process and/or procedure to temporarily correct or mitigate such defect in the manner set forth in Section 2.2(b)(ii) hereof. 5.2 Payment Procedure. Commencing upon the first payment by NatWest to ----------------- InterTrust of royalties specified in Section 5.1((a))((iii) or 5.1((a))((v)) hereof NatWest shall be [*] percent ([*] %) of all [*] under Sections 5.1((b))((i)) and 5.1((b))((ii)) in a calendar quarter [*]; provided that the -------- ---- total amount of all such [*] during the term shall not exceed [*] dollars ($US[*]) in the aggregate. Except as otherwise expressly provided in this Agreement, within [*] days after the end of each calendar quarter, NatWest shall pay InterTrust all amounts due and/or payable pursuant to the licenses and support provided hereunder, and received during such calendar quarter. NatWest shall make all payments hereunder by wire transfer to such account as designated by InterTrust in writing. Concurrently with each royalty payment, NatWest shall provide to InterTrust a written royalty report, certified to be accurate by an officer of NatWest specifying: (i) the revenues derived by NatWest that are subject to royalties during each calendar month of such quarter; (ii) the basis for calculation of the amounts due and payable; and (iii) summaries of business records employed by NatWest to arrive at the information set forth in (i) and (ii) immediately above. The manner of calculation of the amounts due and payable to InterTrust hereunder shall be determined in accordance with recognized and generally accepted U.S. accounting procedures and principles that shall be consistently applied to all such payments. 5.3 Currency. Gross Commercial Value and all consideration received by NatWest -------- pursuant to Section 5.1((b)) in a currency other than U.S. dollars shall be converted by NatWest to U.S. dollars on a monthly basis for purposes of payment to InterTrust on a quarterly basis according to the rate of exchange for such currency, as published by The Wall Street Journal (Western Edition) on the last business day during each calendar month of a calendar quarter for which such royalties are due. If The Wall Street Journal (Western Edition, or main edition in absence of a Western Edition) ceases or fails to publish such rate of exchange at any time during the term of this Agreement, the rate of exchange during any such period of cessation shall be such rate as published by the Bank of America (San Francisco, California) or its legal successor on the last working day of such calendar quarter for which such royalties are due. In the event all of the above cease to operate, the Parties shall reasonably agree upon another internationally reputable source for such rate of exchange. 5.4 Taxes. NatWest shall pay taxes, including but not limited to withholding ----- taxes, imposed by any foreign government or any other jurisdictions outside of the United States, as applicable, on all fees and royalties payable to InterTrust under this Agreement. NatWest shall be responsible for payment of all sales, use, value-added and other taxes, duties and other charges that may fall due with respect to the transfer to or licensing, reproduction, distribution, and/or use by NatWest of the NatWest Products, and with respect to NatWest's activities with respect to the Clearinghouse Functions. InterTrust shall be responsible for payment of all sales, use, value-added and other taxes that may be imposed by the United States government on InterTrust with respect to the transfer or licensing to NatWest of the InterTrust Technology hereunder or with respect to the payments received hereunder. 5.5 Interest. NatWest agrees that all sums owed or payable to InterTrust -------- hereunder shall bear interest (compounded daily) at the rate of [*] percent ([*]%) per month or [*] percentage ([*]%) points above the U.S. Prime Rate on an annualized basis as published at the end of a calendar quarter for which such royalties are due, whichever is higher, or such lower rate as may be the maximum rate permitted under applicable law, from the date upon which payment of the same shall first become due up to and including the date of payment thereof whether before or after judgment, and that NatWest shall be additionally liable for all costs and expenses of collection, including, without limitation, reasonable fees for attorneys and court costs. Notwithstanding the foregoing, such specified rate of interest shall not excuse or in any way whatsoever be construed as a waiver of NatWest's express obligation to timely provide any and all payments due to InterTrust hereunder. - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 21 CONFIDENTIAL 5.6 Audit. NatWest shall maintain during the term of this Agreement and for a ----- period of five (5) years thereafter all books, records, accounts, and technical materials regarding NatWest's activities in connection herewith sufficient to determine and confirm NatWest's royalty obligations hereunder. Upon InterTrust's request, NatWest will permit an independent auditor from one of the five largest international accounting firms of InterTrust's choice (subject to NatWest's consent, which shall not be unreasonably withheld or delayed) to examine and audit, at InterTrust's expense, during a reasonable time (but no more than once during a six (6) month period), such books, records, accounts, documentation and materials, and take extracts therefrom or make copies thereof for the purpose of verifying the correctness of reported royalty statements and payments provided by NatWest. Prior to such audit, InterTrust shall cause such independent auditor to execute a written confidentiality agreement supplied by NatWest, which shall contain terms that are commercially reasonable under the circumstances and are designed to reasonably protect the confidentiality of NatWest's information. NatWest shall pay any unpaid delinquent amounts disclosed by such audit within ten (10) days of InterTrust's request; provided that any such payment shall not constitute an admission or waiver of any kind. To the extent such examination: (i) discloses an underpayment of more than [*] dollars ($US[*]) and such underpayment represents a sum greater than [*] of the sums paid to InterTrust by NatWest during the applicable period subject to such audit; or (ii) discloses an underpayment of more than [*] dollars ($US[*]), NatWest shall fully reimburse InterTrust, promptly upon demand, for the reasonable fees and disbursements due the auditor for such audit; provided that such prompt payment shall not be in -------- ---- lieu of any other remedies or rights available to InterTrust hereunder. If an audit reveals an overpayment, InterTrust shall notify NatWest of such overpayment and NatWest will apply the amount of such overpayment against future royalties due and payable to InterTrust (and such application against future royalties shall not be subject to the provisions of Section 5.2 hereof concerning the [*]). 6. PROPRIETARY INFORMATION AND OWNERSHIP. 6.1 InterTrust Ownership. NatWest acknowledges and agrees that, as between -------------------- InterTrust and NatWest, InterTrust is the sole and exclusive owner of, and shall retain and hereby reserves (and nothing herein shall alter InterTrust's reservation of) all right, title and interest in: (i) the InterTrust Technology, created by (or for) or owned by InterTrust, and all Intellectual Property Rights embodied therein; (ii) all Intellectual Property Rights created or embodied in any works (whether tangible or intangible) created independently and solely by (and/or by any third party for) InterTrust in connection with its performance of this Agreement; and (iii) Modified Technology not owned by NatWest pursuant to Section 0 hereof, and all Intellectual Property Rights embodied therein (collectively, the "InterTrust Property"). No provision contained in this ------------------- Agreement shall be construed to transfer to NatWest or any other Person any title or ownership interest in any InterTrust Property. 6.2 NatWest Ownership. As between NatWest and InterTrust, NatWest shall be the ----------------- sole and exclusive owner of the portions of the following created independently and solely by (and/or by any third party for) NatWest hereunder, and shall retain and hereby reserves (and nothing herein shall alter NatWest's reservation of) all right, title and interest in: (i) any NatWest Products, except with respect to any InterTrust Property incorporated therein; (ii) Modified Technology created in accordance with the terms hereof (except such Modified Technology that merely re-implements the existing functionality of InterTrust Technology provided to NatWest, including, for example, porting or translation thereof, which shall be deemed InterTrust Property); and (iii) all Intellectual Property Rights embodied in such part of NatWest Products or such Modified Technology (collectively "NatWest Property") independently developed by NatWest ---------------- consistent with subparagraph ("i") and ("ii") above. No provision contained in this Agreement shall be construed to transfer to InterTrust or any other Person any title or ownership interest in any NatWest Property. As between NatWest and InterTrust, NatWest shall be the sole and exclusive owner of any customer data and usage information that is derived directly or indirectly by NatWest from a NatWest Customer through any use of InterTrust Technology without any breach of this Agreement or any obligations owed by any third Person to InterTrust; provided that such data or information: (a) is not also communicated by such - -------- ---- Customer or any third Person to InterTrust; and/or (b) does not relate to InterTrust or include any InterTrust Technology. Nothing in the foregoing portion of this paragraph - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 22 CONFIDENTIAL shall be construed in any manner whatsoever to transfer, license or grant any license or right to any Intellectual Property Rights of InterTrust. 6.3 NatWest Limited License to InterTrust. In consideration of the licenses ------------------------------------- granted, and other consideration provided, by InterTrust to NatWest under this Agreement during the term of this Agreement, NatWest hereby grants: (a) to InterTrust, its affiliates, and their successors, assigns, and direct and indirect customers a nonexclusive, royalty-free and worldwide license under all patent rights of NatWest to manufacture, have manufactured, use, sale, offer for sale, license for use, import, distribution and/or otherwise exploitation of: (i) InterTrust Technology; (ii) any technology that directly interfaces with, or is necessary for applications built on top of InterTrust Technology to be interoperable with, the API (Application Programming Interface) of InterTrust Technology; and/or (iii) technology permitting the Management of Content by the application and technical enforcement, at least in part of, Rules and Controls, and/or distributed, peer-to-peer operating system technology; but solely to the extent that such activities would, but for such license, infringe any such patent rights of NatWest (including any patents disclosing and/or claiming any Modified Technology); and (b) to InterTrust, its affiliates and their successors a nonexclusive, royalty-free and worldwide license under the Intellectual Property Rights (other than trademarks, trade names, and service marks) of NatWest to use NatWest Products solely in connection with InterTrust's internal development of any product, or internal performance of any services, and/or evaluation of such NatWest Products, provided that the foregoing provisions of this Section 6.3((b)) are for internal use only of NatWest Products and shall not be construed to include external distribution of any NatWest Product or portion thereof. InterTrust represents to NatWest that all Core Partner Agreements existing as of the Effective Date contain substantially similar commitments regarding the grant by a Core Partner of certain patent licenses as provided for in this Section 6.3. If during the term of this Agreement InterTrust enters into any Core Partner Agreement having terms [*]. 6.4 Independent Technology. Except as provided in the provisions of Section ---------------------- 8.2 hereof, nothing in this Agreement shall be construed to prohibit NatWest from using, selling, licensing, transferring or otherwise exploiting any technology that NatWest: (i) can demonstrate was developed by NatWest employees or consultants without the use of, reliance on, or reference or access to, any portion of InterTrust Technology and/or Modified Technology, and without any breach of this Agreement or any other obligation owed to InterTrust, and in which InterTrust does not have any patent rights; or (ii)(a) rightfully obtains directly or indirectly from a third Person who has not (1) breached any legal obligation owed to InterTrust and/or (2) obtained such InterTrust technology in violation of any law, and (b) which does not infringe or misuse any InterTrust Intellectual Property Rights or other legally cognizable rights of InterTrust of any kind whatsoever; (collectively, "Independent Technology"). Nothing in this ---------------------- Section 6.4 shall be construed to grant any licenses or rights of any kind whatsoever to NatWest with respect to such Independent Technology. 7. JOINT ACTIVITIES AND FURTHER COVENANTS. 7.1 Joint Press Releases. Promptly following the Effective Date, the Parties -------------------- shall work together to publicly issue one or more mutually agreeable press releases disclosing the existence of this Agreement, describing the Parties' intentions to develop important electronic commerce products, services, and technology, and generally promoting NatWest Products, the InterTrust Technology, and the planned InterTrust-related services of NatWest (the "Joint Press ----------- Releases"). Unless otherwise agreed in writing, all further public disclosures - -------- by either Party - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 23 CONFIDENTIAL concerning the subject matter of the Joint Press Releases shall be consistent with the content of the Joint Press Releases. All other disclosures with respect to the terms hereof shall be made in accordance with Section 0. 7.2 Promotion and Marketing. Following the Effective Date, relevant personnel ----------------------- of NatWest and InterTrust shall meet from time to time to discuss, frame and prepare a joint activity marketing plan to promote their commercial relationship hereunder. In connection with such marketing plan, the Parties shall jointly and reasonably cooperate with each other, and participate in, from time to time, promotional, marketing, and sales activities designed to: (i) increase industry awareness of both InterTrust and InterTrust Technology, and NatWest Products; (ii) promote the dissemination and use of InterTrust's technology as the general purpose electronic rights standard solution for electronic commerce; and (iii) promote NatWest as a primary electronic commerce service provider. InterTrust shall reasonably: (a) assist and support NatWest in the establishment of relevant NatWest brands on NatWest Products and associated services; and (b) appropriately support NatWest's Clearinghouse Functions and related services by communicating the availability of such services, as reasonable and appropriate to potentially interested persons; provided that NatWest promotes and uses -------- ---- InterTrust Technology in the Preferred Positioning manner set forth in Section 4.2. NatWest shall reasonably assist InterTrust with marketing activities relating to the InterTrust Technology by, for example, displaying and endorsing the display of certain InterTrust Trademarks on products and services (and materials relating thereto) and jointly participating, as mutually agreed, in trade shows and customer events. At no time shall NatWest or InterTrust make any representation or warranty to any Person materially inconsistent with: (1) InterTrust Specifications or Documentation; or (2) the efforts of the Parties with respect to promotion, marketing or other matters under this Agreement. As relevant and appropriate from time to time, and to encourage efficient partnering efforts concerning approaching customers and staging their own promotional and marketing activities, each Party agrees, in its reasonable discretion, to share with the other, as appropriate (and subject, for example, to the absence of a specific, material conflict in interest regarding the disclosure of any specific marketing information), its marketing plans relevant to the commercialization of InterTrust Technology, NatWest Products and associated services, and/or other material InterTrust and/or NatWest electronic commerce services and/or products, and related public relations activities. 7.3 Technology Advisory Committee. To further strategic opportunities among ----------------------------- the Parties and to encourage feedback concerning InterTrust Technology, InterTrust currently intends to establish a committee limited to representatives of: (i) leading companies chosen from certain technology, financial and/or content industry companies that have close technology strategic relationships with InterTrust; and (ii) certain leading experts in technology or business applicable to information and electronic commerce (the "Technology Advisory ------------------- Committee"). The Technology Advisory Committee shall meet regularly at a forum - --------- to be selected by InterTrust for the purpose of: (a) discussing and exchanging ideas for improving the functionality, interoperability, and market acceptability of InterTrust Technology and related issues pertaining to the electronic commerce industry; (b) providing input to InterTrust regarding InterTrust product marketing, and development of Upgrade Releases and New Releases; and (c) keeping Core Partners confidentially appraised as to planned upcoming changes in InterTrust Technology or Specifications, as commercially reasonable for InterTrust in its discretion. Upon the establishment of the Technology Advisory Committee: (1) InterTrust shall grant NatWest the right to have one seat as a member of the Technology Advisory Committee; and (2) NatWest, at its option, may elect and notify InterTrust of its designation of an executive (who may be an employee of NatWest and who shall not be involved in Supporting Other Technology, and shall be an Agent of NatWest for confidentiality purposes in accordance with Section 1 of Exhibit G attached hereto) to serve on such committee. To the extent it participates, NatWest shall: (A) be responsible for all acts and omissions of the representative in connection with the Technology Advisory Committee; and (B) pay for all expenses incurred by NatWest in connection with participation on such Committee. NatWest's membership on the Technology Advisory Committee shall be contingent upon (and subject to): (X) material adherence to generally applicable committee rules, and the terms and conditions hereof; (Y) NatWest avoiding activities that materially conflict with InterTrust's interests as determined by InterTrust; and (Z) continuation of the Technology Advisory Committee. 7.4 Security Validation. Throughout the term hereof, InterTrust and NatWest ------------------- will reasonably cooperate and work together to maintain, enhance and promote the robustness of the security aspects of InterTrust Technology 24 CONFIDENTIAL and NatWest Products and associated services, as reasonably determined by InterTrust and/or NatWest with respect to its technology, products or services, as applicable, and taking into account and balancing relevant interests such as commercial feasibility and desirability, the varying nature of applications and implementations of NatWest Products, regulatory and governmental restrictions, and overall commercial use of InterTrust Technology by NatWest. InterTrust agrees to use commercially reasonable, practical and affordable efforts with respect to InterTrust Technology, and NatWest agrees to use commercially reasonable, practical and affordable efforts with respect to NatWest Products, to establish and perform or have performed, security testing procedures and practices, including use of appropriate, circumscribed, third party "tiger testing." The Parties will further discuss and work together to consider, where (and as) practical, affordable and appropriate, obtaining validation and/or certification for appropriate portions of the respective Party's security related technologies and/or services from one or more relevant and appropriate third parties or organizations. Each Party agrees to share with the other relevant aspects of test results for, and/or identified security breaches of, InterTrust Technology and NatWest Products where practical, subject to confidentiality obligations, requirements of law, and appropriate security practices. 8. PARTNERING COMMITMENTS. 8.1 InterTrust Partnering Commitment. -------------------------------- (a) Initial Commitment Period. Subject to the terms hereof (including ------------------------- NatWest's performance of its partnering commitment set forth in Section 8.2), and in the absence of NatWest's prior written consent, InterTrust shall not [*] with (or [*]) any Banking Institution (as defined in Exhibit F attached hereto) other than NatWest ("InterTrust Partnering Commitment") for a period of [*] year from the Effective Date (the "Initial Commitment Period"); provided ------------------------- -------- that if InterTrust provides NatWest with the Commerce 1.0 (GA Version) release - ---- after December 31, 1998, then the Initial Commitment Period shall be extended beyond such period of [*] year by that number of days between December 31, 1998 and the date upon which such Commerce 1.0 (GA Version) is so provided. Notwithstanding the foregoing, InterTrust shall be entitled to [*] (or [*]) with: (A) a Person that is not a US Bank or a Foreign Bank (each as defined in Exhibit F) as of the effective date of the Core Partner agreement, provided that if such Person is a Foreign Bank Affiliate as of the effective date thereof InterTrust shall prohibit such Person in such Core Partner license agreement from assigning any rights to perform any Payment Card Services that are (or are broadly equivalent to) Clearinghouse Functions under such license agreement to any Foreign Bank or other Foreign Bank Affiliate during the Commitment Period; and/or (B) any non-sovereign state or government, and/or any foreign bank controlled by a sovereign state or government outside of the European Union. Further notwithstanding anything herein, InterTrust may from time to time inform NatWest in writing of prospective Core Partners, but not more frequently than [*] Core Partner requests per calendar quarter. Within ten (10) business days thereafter NatWest shall notify InterTrust in writing whether such prospective Core Partner is a Banking Institution (as defined in Exhibit F) or has a Foreign Bank Affiliate. Where NatWest has notified InterTrust that such prospective Core Partner is not deemed to be a Banking Institution, or has failed to so provide notice within such time period, InterTrust shall have the right to [*] without any obligation or liability hereunder. Such InterTrust Partnering Commitment shall continue during the Initial Commitment Period only if NatWest devotes (and NatWest hereby agrees that it shall devote) serious and substantial efforts and resources to: (i) offer, provide, publicly promote, support and make available in a commercially meaningful, expeditious, and general purpose manner one or more competitive, global financial clearing services supporting licensed InterTrust Technology users (assuming, where applicable, reasonable prior agreement between NatWest and such users) (a "Global Clearing Service"); and ----------------------- (ii) establishing definitive commercial relationships with two or more premier financial or clearinghouse institutions or other relevant important parties to provide infrastructure services using InterTrust technology to support Content Transactions (for example, top-ranked, world-class Banking Institutions, or other financial institutions or non-bank clearinghouses with major strategic presence) as decided and agreed upon by each of the Parties ("Important --------- Parties"), where such Important Parties agrees to support InterTrust - ------- Technology in a manner comparable to NatWest as described herein and at least through preferentially performing financial Clearinghouse Function services for the Commitment Period (defined below) and a commercially meaningful period thereafter (collectively, the "Performance Criteria"). At least one of such -------------------- Important Parties shall be based in the United States and be a top-ranked Banking Institution or financial/clearinghouse Important Party (including, for example, [*]). The Parties anticipate NatWest having the primary direct commercial relationship with such Important Parties; provided that such -------- ---- Important Parties will need to obtain a license from InterTrust with respect to InterTrust Technology. The InterTrust Partnering Commitment shall not limit in any way whatsoever the rights of: (1) InterTrust to work with or license any technology or Intellectual Property Rights to any Person so long as InterTrust complies with this Section 8.1; and/or (2) any InterTrust Core Partner to exercise its rights with respect to InterTrust technology (so long as any such Core Partner is not a Banking Institution which first became a Core Partner during the Commitment Period). (b) InterTrust Partnering Commitment Extension. If, as of the close of ------------------------------------------ the Initial Commitment Period NatWest has complied with the provisions of Section 8.2((a)), is publicly offering and providing a Global Clearing Services, and has executed heads of agreement (containing substantially detailed fundamental terms) ("Heads of Agreement(s)") with at least two (2) Important --------------------- Parties as provided in Section 8.1((a)) and redacted copies of which are provided to InterTrust (provided that the non-redacted provisions in such ------------- Heads of Agreement must be sufficient to allow InterTrust to determine whether NatWest's obligations in Section 8.1((a)) have been satisfied), then (except where the Scaleback Option (defined below) has been exercised because NatWest has decided to engage in those activities set forth in Section 8.2((c)) the InterTrust Partnering Commitment shall be extended for an additional [*] year period, except that such period shall earlier terminate three (3) months after the expiration of the Initial Commitment Period if NatWest has failed to execute binding definitive agreement to effectuate the Heads of Agreements with such Important Parties prior to the end of such three (3) month period (the "Second ------ Commitment Period"; the Initial Commitment Period and any such extension or - ----------------- further extension collectively, the "Commitment Period"). During the Second ----------------- Commitment Period, if any, NatWest shall use serious and substantial efforts to establish a global consortium of Important Parties committed to supporting InterTrust Technology as the technology standard for Digital Rights Management in the area of financial clearing services, and the Parties contemplate that NatWest will have formed such consortium of Important Parties committed to establishing InterTrust Technology as the de facto standard for Digital Rights -- ----- Management (as defined in Exhibit F) and related financial clearing. If InterTrust Technology has become the global de facto standard for Digital Rights -- ----- Management, the InterTrust Partnering Commitment may be subject to a further extension at InterTrust's discretion, and for such period as InterTrust may notify NatWest in writing. 25 [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL 8.2 NatWest Partnering Commitment. Subject to InterTrust's performance of its ----------------------------- partnering commitment set forth in Section 8.1 and in partial consideration for providing NatWest with early, substantial access to Confidential and Top Secret Information, initial development rights and privileges concerning InterTrust Technology, Intellectual Property Rights, and the rights granted to NatWest hereunder (including certain "most favored" provisions and the InterTrust Partnering Commitment), NatWest agrees to the following partnering commitment (the "NatWest Partnering Commitment"): ----------------------------- (a) Preferred Solution. During the Commitment Period, NatWest and its ------------------ respective units and controlled affiliates shall: (i) refrain from acting as a clearinghouse for any Secure Container technology other than Secure Containers of the InterTrust Technology, and/or performing any activities and/or services that would constitute Clearinghouse Function activities and/or services if InterTrust Technology, Modified Technology, or information derived at least in part from use of such technology were used, where the foregoing activities and/ or services result from the use of any Secure Container technology other than Secure Containers of the InterTrust Technology; and (ii) treat InterTrust Technology as NatWest's preferred and primary Digital Rights Management technology and/or Secure Container technology solution ("Preferred --------- Positioning"). In providing such Preferred Positioning, NatWest shall: (1) - ----------- recommend, endorse, and actively and publicly promote InterTrust Technology as its preferred and primary Digital Rights Management and Secure Container technology and business solution, and InterTrust as its preferred and primary Digital Rights Management partner, provided that the foregoing in regard to any -------- ---- press release shall also be consistent with the provisions of Section 7.1; and (2) refrain from deploying, using, licensing, developing, marketing, negotiating agreements related to, and/or otherwise supporting (including recommending, promoting, or otherwise endorsing in a substantive manner (e.g., in any ---- promotional materials), and/or assisting another Person in the deployment, use, license, development and/or marketing of) (hereafter, "Support[s][ing]") Digital --------------- Rights Management and/or Secure Container technology other than Digital Rights Management and Secure Container Technology of the InterTrust Technology ("Other ----- Technology"). Notwithstanding the foregoing, "Support[s][ing]" for purposes of - ---------- this Section 8.2 ((a)) shall not include the mere provision of and/or arrangement of loans or other financings for Persons by affiliates or operating units of NatWest other than Card Services, where such provision or arranging of loans or financing is made in the ordinary course of its business. Further notwithstanding the foregoing, if at any time any affiliate or operating unit of NatWest other than Card Services decides to make, or otherwise approves, any investment by NatWest in equity or similar securities in any Persons whose business involves, or has announced either publicly or to NatWest that it plan to engage in, the development, distribution, licensing or marketing of Distributed Peer to Peer Rights Management technology (as defined in Exhibit F) (but not including any investment made by NatWest pursuant to its employees retirement investment fund or of another Person's funds acting on such other Person's behalf (and where no equity participation is taken by NatWest for its own account)) ("Non-Partnering Investment Decision"), NatWest shall immediately ---------------------------------- notify InterTrust in writing. Upon any such Non-Partnering Investment Decision, InterTrust, as its sole and exclusive remedy, shall be entitled to terminate all or any portion of its obligations under Section 8.1, which termination shall be effective (notwithstanding any cure procedures set forth in Section 13.2) six (6) months after the date of such Non-Partnering Decision. Exhibit F hereto sets forth, as of the Effective Date, a sample list of products that, to InterTrust's knowledge, claim to use Secure Containers and/or provide Digital Rights Management solutions. Such list may be supplemented or amended from time to time by InterTrust during the Commitment Period. (b) Use of Other Technology Providers. If at any time during the --------------------------------- Commitment Period NatWest decides to initiate activities Supporting any Other Technology, NatWest shall promptly (and in all events as soon as reasonably practical and before initiating such activity) notify InterTrust in writing of such intent (a "Non-Partnering Event"). Such notice shall provide InterTrust -------------------- with reasonable summary information regarding such Other Technology, including generally the scope and nature of contemplated Supporting activity, and such other information as may be reasonably useful in order to assist InterTrust in deciding whether to exercise the Scaleback Option, except that such notice need not disclose any detailed proprietary information (other than the fact that NatWest is initiating Support of Other Technology) that may be subject to confidentiality obligations 26 CONFIDENTIAL owed by NatWest to any third Person (the "NatWest Notice"). Similarly, if -------------- InterTrust becomes aware of any information that causes InterTrust to believe that a Non-Partnering Event may have occurred, InterTrust shall so notify NatWest in writing and provide NatWest with reasonable information concerning the nature of InterTrust's information ("InterTrust Notice"). In the event of ----------------- such an InterTrust notice to NatWest, NatWest shall promptly thereafter provide a written communication to InterTrust responding to InterTrust's notice and providing information regarding such InterTrust-provided information as is reasonably calculated to enable InterTrust to decide whether to exercise the Scaleback Option, except that such communication need not disclose any detailed proprietary information (other than the fact that NatWest is initiating Support of Other Technology) that may be subject to confidentiality obligations owed by NatWest to any third Person. After a NatWest Notice or InterTrust Notice has been sent in accordance with this Section 8.2((b)), the Parties shall promptly and reasonably cooperate with each other to gather and report such relevant facts and circumstances as may be reasonably required by InterTrust to: (1) help InterTrust determine whether a Non-Partnering Event has occurred; and (2) help InterTrust decide whether to exercise its Scaleback Option. (c) Scaleback Option; Remedies. If NatWest has delivered the NatWest -------------------------- Notice, or if information available to InterTrust after the completion of the process initiated pursuant to Section 8.2((b)) following the delivery by InterTrust of the InterTrust Notice indicates to InterTrust that NatWest has engaged (or is engaging) in a Non-Partnering Event that was the subject of such notice, then InterTrust shall have the right, notwithstanding the provisions of Section 8.l and/or other provisions of Section 8.2 hereof: (i) to scaleback the InterTrust Partnering Commitment of Section 8.1((a)) such that InterTrust may negotiate and enter into a Core Partner relationship with any Banking Institution that grants such Banking Institution a license to use InterTrust technology and perform Clearinghouse Functions in any field and in any manner other than the provision of Payment Card Services (as defined below) under such Banking Institution's brand; and (ii) if the Second Commitment Period or any subsequent extension of such period is then in effect, InterTrust's Partnering Commitment shall immediately terminate, or if such period has not yet commenced, InterTrust Partnering Commitment shall not extend to the Second Commitment Period nor any further extension period. Any failure by InterTrust to fully exercise all of its rights under the Scaleback Option with respect to a specific Non-Partnering Event shall not be deemed or construed to limit or otherwise adversely affect in any manner whatsoever: (1) InterTrust's ability to exercise the Scaleback Option with respect to other Non-Partnering Events, or the specific Non-Partnering Events if circumstances about the nature of the Non-Partnering Event, including available relevant information, change in the future; and/or (2) seek or receive remedies at law or in equity with respect to such specific or any other Non-Partnering Event except (and solely except) in the circumstance expressly set forth in the following sentence. In the event a material division, material business unit or controlled affiliate ("Unit") of ---- NatWest -- other, but solely other, than any such Unit having principal responsibility for payment card services (including issuing credit, charge, prepayment, or other payment cards (alone or in combination with other services), and/or issuance of credit and/or performance of services for and/or on behalf of merchants and/or cardholders concerning transactions involving such cards) (collectively, the "Payment Card Services") -- Supports Other Technology --------------------- in a manner in breach of Section 8.2((a)), InterTrust's sole remedy shall be exercise of the Scaleback Option pursuant to this Section 8.2((c)) hereof. That unit of NatWest having principal responsibility for Payment Card Services as of the Effective Date is known as "Card Services" and shall not include any senior business unit or function to which, or through which, Card Services reports (so long as several Units report to or through such senior business unit or function) and may, hereafter, if not held in a single unit, include other units in combination to provide such Payment Card Services. Notwithstanding the foregoing, if: (x) any Non-Partnering Event in accordance herewith involves Other Technology that is a Distributed, Peer-to-Peer Digital Rights Management Technology (defined in Exhibit F); (y) any Unit of NatWest participates in a consortium not in existence as of the Effective Date Supporting Payment Card Services for Other Technology (but not if that Unit of NatWest having principal responsibility for Payment Card Services is directly Supporting Payment Card Services for such Other Technology); and/or (z) any other terms and conditions hereof (including Section 8.2((a)) are not complied with, then, in addition to exercise of 27 the Scaleback Option pursuant to this Section 8.2, InterTrust shall be entitled to obtain such remedies as available at law or in equity. (d) Limitations. Nothing in Section 8.2 of this Agreement shall be ----------- construed to require NatWest to use InterTrust Technology in connection with any particular NatWest payment services activity and/or product, if NatWest first responds to any specific customer interest in any other product by using commercially reasonable efforts to satisfy such customer request by recommending the use of InterTrust Technology instead of an alternative requested technology but such customer persists in requiring the use of such an alternative technology. In addition, NatWest may: (i) act as an acquirer bank to provide payment services to customers provided that no NatWest Trademark is apparent to any end-user and NatWest is not acting directly under a license or sublicense to provide clearing services supporting any Secure Container technology not provided by InterTrust; and (ii) as an minor part of NatWest services, collate and deliver Content of third Persons on a limited basis using Other Technology solely for delivery of such Content, provided that (a) the owner or licensor of -------- ---- such third party Content requires NatWest to use such Other Technology for the delivery of such third Person's Content (and after NatWest has used commercially reasonable efforts to persuade such third Person to allow the use of InterTrust Technology in connection with such content delivery), (b) NatWest receives no license to (and does not) modify, or otherwise customize such other Technology in any manner, (c) NatWest refrains from associating any NatWest brand with such third party Content (other than as generally indicated on such NatWest product or service), and (d) NatWest does not promote the brand of the provider of such Other Technology on any part of its general clearing services, marketing materials or products, other than strictly to indicate that such Content is being delivered using such Other Technology where necessary in the performance of its service of delivering such Content. (e) Clarification; Cooperation. During the Commitment Period, the Parties -------------------------- shall reasonably cooperate with each other to appropriately and reasonably address any questions and requests for clarification that are reasonably provided and are consistent with this Agreement and that concern the nature and applicability of the definitions of Digital Rights Management, Secure Containers and other provisions of this Section 8 to specific situations; provided that in -------- ---- all events the provisions of this Agreement, including, for example, Section 4.2((c)), shall apply to (and exclusive govern) all such discussions, and nothing in responses to such questions and requests shall be deemed to modify this Agreement or its terms and conditions in any manner whatsoever, unless satisfying the requirements of Section 14.4 hereof. 28 CONFIDENTIAL 9. CONFIDENTIALITY. 9.1 Classification of Technology and Documents. Technology, documents and ------------------------------------------ other information to be exchanged by the Parties shall be marked, as appropriate, to identify the confidential or nonconfidential nature of the information, and information exchanged orally or visually shall be described as appropriate, to alert the recipient of the confidential or nonconfidential nature of the information. As regards InterTrust Technology (including Documentation) and other documents or information provided by InterTrust to NatWest in tangible form, or provided orally or visually hereunder, such information shall be marked, or indicated as: (i) "Unclassified"; (ii) "Confidential"; or (iii) "Top Secret." NatWest information shall be marked or indicated, as appropriate, as: (a) "Unclassified" or (b) "Confidential." A Party and its authorized personnel shall exercise careful judgment when they are in possession of information of the other Party that has not been marked or at the time of such disclosure indicated to be within one of the above-described classifications. If any information provided by one Party has not been marked or indicated as above and is not known with certainty by the receiving Party to have been either publicly released or otherwise classified as "Unclassified," then such other Party, its employees and any other Person authorized to possess such information shall treat such information as "Confidential," except information provided by InterTrust relating to security capabilities, trustedness, and architecture (or design) integrity of the InterTrust Technology, which shall be considered to be "Top Secret" and shall be handled as provided by Section 0 of Exhibit G hereto. 9.2 Confidentiality Obligations. Subject to the provisions hereof, the Parties --------------------------- (and their relevant personnel and agents) shall hold, maintain and treat Confidential Information of NatWest or InterTrust, and/or Top Secret Information of InterTrust, as applicable, in the manner set forth in Exhibit G hereto. Subject to the provisions of this Section 9, upon the Effective Date of this Agreement, information relating to the subject matter of this Agreement, when disclosed after the Effective Date shall be covered by the confidentiality provisions of this Section 9 and Exhibit G. Any information disclosed by one Party to the other Party relating to the subject matter of this Agreement when disclosed by one Party to the other Party prior to the Effective Date or relating to subject matter outside of this Agreement shall be covered under the Non-Disclosure/Non-Use Agreements between InterTrust and NatWest, as applicable, dated 10 September 1997, 9 September 1997 and 14 April 1998. 9.3 Confidentiality of Agreement and Publicity. Except as otherwise provided ------------------------------------------ in Sections 7.1 and/or in Section 3 of Exhibit G, neither Party hereto shall at any time, without the prior written consent of the other, disclose the specific details of the terms and conditions of this Agreement to any Person, other than: (i) as required by law, regulation or rules of a securities exchange or other regulatory authority, for example, in connection with any initial public offering of securities pursuant to a registration under the Securities Act of 1933, as amended (an "IPO"); (ii) to investors holding (or potential investors --- who may purchase) approximately one percent (1%) or more of the outstanding equity shares of such Party prior to an IPO and having no reasonably anticipated conflict of interest with the other Party; and/or (iii) to Agents of a Party (as defined in Exhibit G) having a substantial need to know, or financial institutions or professional advisors having a reasonable need to know such information and having no reasonably anticipated conflict of interest with the other Party. In each and every case set forth above, the receiving Person shall be bound by a confidentiality agreement sufficient in scope to protect the Parties' rights and interests hereunder. Notwithstanding the foregoing provisions of this Section 9.3: (a) either Party may publicly discuss or otherwise disclose in general terms that an agreement exists between the Parties to develop products and services using InterTrust Technology, but may provide no further material details as to the specific activities and commitments of the other Party, without the prior written consent of such other Party; and (b) either Party may make such disclosures to the extent permitted under this Section 9.3 in order to perform its obligations or exercise its rights under this Agreement. - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 29 CONFIDENTIAL 9.4 Confidentiality of Payments, Audit and Certification Testing. All ------------------------------------------------------------ information received during an audit or pursuant to a Certification Program as provided herein, all information concerning Certification Testing (including any results thereof and any information received pursuant to any Certification Testing), and all payment information received pursuant to this Agreement, shall be treated as "Confidential Information." Notwithstanding the foregoing, information concerning whether a NatWest Product or any associated services being disseminated or used in commerce is Compliant with InterTrust Specifications shall not be treated as confidential information under any provision of this Agreement. 10. REPRESENTATIONS AND WARRANTIES. 10.1 Representations and Warranties of Both Parties. Each Party represents and ---------------------------------------------- warrants to the other Party that as of the Effective Date: (a) it is a corporation duly incorporated, validly existing and in good standing under the laws of the jurisdiction in which it is organized, with full corporate power and authority to carry on its business as it is now being conducted; (b) the execution, delivery and performance of this Agreement and the consummation of the transactions contemplated hereby have been duly authorized by such Party, and neither the performance of this Agreement nor the consummation of the transactions contemplated hereby will violate any provision of the charter or organizational documents of such Party; and (c) this Agreement constitutes a valid and binding obligation of such Party, enforceable against such Party in accordance with its terms. 10.2 Representations and Warranties of InterTrust. In addition to Section 10.1 -------------------------------------------- above, InterTrust represents and warrants to NatWest that as of the Effective Date: (a) InterTrust has not, to the knowledge of the officers of InterTrust, entered into a Core Partner arrangement with any organization that is a Banking Institute. (b) InterTrust owns or has the right to grant the licenses hereunder with respect to the InterTrust Technology, including under applicable law; (c) to the knowledge of the executive officers of InterTrust, the InterTrust Technology does not infringe any Person's U.S. patent, trademark, copyright, or trade secret right, and no active claims or allegations of any such infringement are pending; PROVIDED THAT INTERTRUST MAKES NO WARRANTY WITH -------- ---- RESPECT TO THE INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS OTHER THAN THE FOREGOING REPRESENTATION; (d) InterTrust is unaware of, and has in good faith employed commercially reasonable steps in accordance with the U.S. software industry practices to prevent and/or minimize [*], [*], [*], or other similar devices or mechanisms that are intended to [*], [*] or [*] the operation of the InterTrust Technology or NatWest Products or cause such technologies to [*], inconsistent with reasonable business practices. A summary of such reasonable steps that have been taken is included in Exhibit H hereto. (e) the InterTrust Technology as delivered to NatWest pursuant to this Agreement will, when delivered, operate without [*] caused directly by the [*] in the [*] to the [*], and will be able to accurately process (including [*] and [*]) [*] and [*] associated with the [*], and recognize the [*] as a [*]; provided that NatWest agrees that InterTrust's sole obligation and NatWest's - -------- ---- sole and exclusive remedy for any breach of this representation will - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 30 CONFIDENTIAL be to [*] set forth in Section 2.2(b) treating any such [*] to [*] or [*]. 10.3 Limitation. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT TO THE ---------- CONTRARY: (i) THE INTERTRUST TECHNOLOGY AND PRODUCTS ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR PARTICULAR REQUIREMENTS AND NONINFRINGEMENT; (ii) INTERTRUST SHALL ASSUME NO RISK AS TO THE QUALITY, ACCURACY, INFRINGEMENT AND PERFORMANCE OF THE INTERTRUST TECHNOLOGY PRODUCTS; AND (iii) INTERTRUST DOES NOT WARRANT THAT INTERTRUST TECHNOLOGY OR THE INTERTRUST TECHNOLOGY PRODUCTS WILL MEET NATWEST'S REQUIREMENTS OR THOSE OF ANY THIRD PARTY, OR THAT INTERTRUST TECHNOLOGY PRODUCTS WILL BE ERROR FREE OR WILL OPERATE WITHOUT INTERRUPTION. NatWest specifically, and without limitation, acknowledges that the Sample Applications, deployable applications and deployable components (as each are described in Exhibit A) that may be provided to NatWest as part of InterTrust Technology are intended, solely to aid NatWest in its development efforts, should NatWest decide to use them. 10.4 Reporting and Other Covenants. InterTrust shall promptly inform NatWest, -------------- in writing, of any breach by InterTrust of any provision hereunder that comes to the attention of an InterTrust executive officer. NatWest shall promptly inform InterTrust, in writing, of any breach by NatWest, of any provision hereof and/or by a Customer of a Customer Agreement, that comes to the attention of a NatWest officer or manager. InterTrust agrees that the representations set forth in Sections 10.2(b)-(e) shall apply to each new delivery of InterTrust Technology as if such representations were made as of the date of such delivery of InterTrust Technology; provided that any InterTrust [*] of any and all ------------- breach(es) of the foregoing shall be [*] to an [*] not to [*] in any and all circumstances. 11. INDEMNIFICATION AND REMEDIES. 11.1 Indemnification. --------------- (a) InterTrust Indemnification. InterTrust shall indemnify and hold -------------------------- NatWest and its employees, officers and directors (the "NatWest Parties") --------------- harmless from any and all liability, judgments, costs, damages, claims, suits, actions, proceedings, expenses and/or other losses, including reasonable attorneys' fees (collectively, "Claims") or portions thereof, to the extent ------ awarded by a court of competent jurisdiction or pursuant to a settlement as provided hereunder, resulting from controversies or litigation asserted by any third Person against the NatWest Parties arising directly or indirectly from: (i) InterTrust's breach of any of its obligations under this Agreement, or its representations and warranties set forth in Sections 10.1, 10.2, or 10.4 (subject to the provisions thereof); and (ii) NatWest's proper use of InterTrust Trademarks as set forth herein; provided, however, that, this indemnity does not -------- ------- ---- extend to any Claim (collectively, the "Indemnification Exclusions") relating -------------------------- to: (1) any Modified Technology or other modifications thereto made by NatWest or any third Person or combinations of the InterTrust Technology with any product, technology or service of NatWest or of any Person, where such Claim resulted from such modification or combination and not from the InterTrust Technology by itself as contained in such modification or combination; or (2) the use of any InterTrust Technology in any manner inconsistent with InterTrust Specifications or Documentation to the extent that such Claim would have been avoided in the absence of such inconsistent use. (b) NatWest Indemnification. NatWest shall indemnify and hold ----------------------- InterTrust, its employees, officers and directors (the "InterTrust Parties") ------------------ harmless from any and all Claims or portions thereof to the extent awarded by a court of competent jurisdiction or pursuant to a settlement as provided hereunder, resulting from controversies or litigation asserted by any Person against the InterTrust Parties arising directly or indirectly from: (i) NatWest's breach of any of its obligations, representations or warranties hereunder; (ii) InterTrust's proper use of NatWest Trademarks as set forth herein; (iii) the design, manufacture, use, distribution and/or disposition by - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 31 CONFIDENTIAL or for NatWest of Modified Technology, NatWest Products, performance of any service associated with the foregoing, and/or other exercise by NatWest of the licenses hereunder, except where such Claims would have arisen solely out of InterTrust Technology as directly provided to NatWest by InterTrust in the absence of NatWest activities hereunder, and further, except to the extent NatWest is indemnified by InterTrust under Section 11.1 ((a)) hereof; and (iv) any Claim relating to the Indemnification Exclusions. (c) Third Party Claims. In case any Claim is brought by a third Person ------------------ for which Claim indemnification is or may be provided hereunder, the indemnified Party shall provide prompt written notice thereof to the other Party. Where obligated to indemnify such Claim, the indemnifying Party shall, upon the demand and at the option of the indemnified Party, assume the defense thereof (at the expense of the indemnifying Party) within thirty (30) days or at least ten (10) days prior to the time a response is due in such case, whichever occurs first, or, alternatively upon the demand and at the option of the indemnified Party, pay to such Party all reasonable costs and expenses, including reasonable attorneys' fees, incurred by such Party in defending itself. The Parties shall cooperate reasonably with each other in the defense of any Claim, including making available (except as expressly set forth herein to the contrary, and in all events under the strongest protective order reasonably available) all records necessary to the defense of such Claim, and the indemnified Party shall have the right to join and participate actively in the indemnifying Party's defense of the Claim. Notwithstanding the foregoing (and any other Section of this Agreement), it is understood and acknowledged that InterTrust need not under any circumstance provide Top Secret Information except as expressly provided to the contrary in Section 3 of Exhibit G. Each Party shall be entitled to prior notice of any settlement of any Claim to be entered into by the other Party and to reasonable approval of a settlement to the extent such Party's rights would be directly and materially impaired. Without limiting the foregoing, in the event of any Claim or threatened Claim that [*] any [*]: (a) upon NatWest's written request, InterTrust will use all reasonable efforts (taking into account the gravity of the situation) to [*] or [*] NatWest (at NatWest's expense) to [*] and otherwise [*] in accordance with the terms and conditions hereof such portion of InterTrust Technology on [*] to [*], each in the exercise of its own discretion; or (b) at InterTrust's sole discretion, InterTrust may use [*] or [*] of the [*], as the case may be, so as to make such portion of the [*] while [*] substantially [*] and [*] of such [*] or [*] of the [*] that are material to NatWest's then-current use of such technology. If options (a) and (b) are not [*]: (1) NatWest shall have the right, as its sole and exclusive remedy in connection with such Claim, threatened Claim or action of InterTrust in accordance with this Section 0(0), to terminate the licenses granted hereunder upon thirty (30) days prior written notice; and (2) InterTrust may, and without any liability whatsoever, terminate the licenses granted hereunder as to such portion upon thirty (30) days prior written notice if in the good faith opinion of InterTrust or its professional advisors, InterTrust has a material risk of liability from NatWest's continued use of such portion of InterTrust Technology. 11.2 Cumulative Remedies. Except as expressly provided herein to the contrary, ------------------- no remedy made available to a Party by any of the provisions of this Agreement is intended to be exclusive of any other remedy, and each and every remedy shall be cumulative and shall be in addition to every other remedy given hereunder or now or hereafter existing at law or in equity or by statute or otherwise. 11.3 Equitable Remedies. Each Party agrees that it may be impossible or ------------------ inadequate to measure and calculate a Party's damages from any material breach of the covenants set forth in Sections 3.5, 5.6, 8,9, 13.2, 13.3, or 14.4 hereof. Accordingly, each Party agrees that if it or any of such Party's Agents thereof materially breach or threaten a material breach or anticipatory repudiation of any of such provisions, in addition to any other right or remedy available, the other Party shall be entitled: (i) to obtain an injunction against the breaching Party and such Party's Agents thereof, from a court of competent jurisdiction restraining such breach or threatened breach; and (ii) to specific performance of any such provision of this Agreement. 12. EXCLUSION OF DAMAGES. - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 32 CONFIDENTIAL EXCEPT AS SET FORTH IN THE IMMEDIATELY FOLLOWING SENTENCE, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY, ITS AGENTS, AFFILIATES, CUSTOMERS, OR ANY OTHER PERSONS, FOR ANY LOST PROFITS, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES, ARISING OUT OF THE BREACH OF THIS AGREEMENT. NOTWITHSTANDING THE IMMEDIATELY PRECEDING SENTENCE, A PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ALL DAMAGES, INCLUDING INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES TO THE EXTENT SUFFERED OR INCURRED BY THE OTHER PARTY IN THE FOLLOWING CIRCUMSTANCES: (i) THE MISAPPROPRIATION OF TRADE SECRETS OF THE DAMAGED PARTY BY THE LIABLE PARTY, OR ITS AGENTS; (ii) THE WILLFUL MISCONDUCT OR MATERIAL BREACH OF THIS AGREEMENT IN BAD FAITH BY THE LIABLE PARTY, OR ITS AGENTS; OR (iii) THE BREACH OF SECTIONS 6 AND/OR 9 HEREOF. 13. TERM AND TERMINATION. 13.1 Agreement. This Agreement shall commence on the Effective Date and, --------- unless and until terminated earlier pursuant to Section 13.2, shall continue for a period of twenty (20) years. 13.2 Events of Termination. This Agreement and the licenses granted hereunder --------------------- shall be subject to termination upon the occurrence of any of the following events and such other provisions hereof expressly so stating (each, an "Event of -------- Termination"): - ----------- (a) Except as expressly provided elsewhere in this Agreement, if either Party materially defaults on any of its material obligations under this Agreement, the non-defaulting Party shall have the right to initiate a termination procedure under this Agreement by written notice describing with reasonable specificity the nature of the default and requiring that such default be cured in accordance herewith. Unless: (i) within sixty (60) calendar days of receiving such written notice of such default, the defaulting Party remedies the default; or (ii) in the case of a default that cannot with earnest due diligence be cured within such sixty day period, the defaulting Party institutes, within thirty (30) days of the commencement of the Cure Period, steps necessary to remedy the default and thereafter employs best efforts to diligently prosecute the same to completion (collectively, as applicable, the Cure Period"), at the --------------- end of such Cure Period the non-defaulting Party may terminate this Agreement. Notwithstanding the foregoing, the Cure Period associated with a NatWest breach of its payment obligations under Section 5 shall be ten (10) days. Notwithstanding any of the foregoing, a Party shall have the right both to immediately terminate this Agreement and to obtain injunctive relief in the event the other Party engages in any: (1) intentional, material unauthorized use of technology known by such Party to be outside of the rights granted hereunder (or, in the case of NatWest, any unauthorized disclosure of InterTrust Top Secret Information) and/or (2) intentional, material unauthorized disclosure of Confidential Information known by such Party to be a violation of this Agreement; (b) By a Party at its option, effective immediately upon written notice to the other Party, in the event of: (i) the filing by the other Party of a petition in bankruptcy or insolvency; (ii) the appointment of a receiver for the other Party for all or substantially all of its property relevant to the business activities under this Agreement; (iii) the making by the other Party of any assignment or attempted assignment for the benefit of creditors for all or substantially all of its properties relevant to its business activities under this Agreement; or (iv) the institution of any proceedings for the liquidation or winding up of the other Party's business or for the termination of its corporate charter, if any such proceeding is not dismissed within one hundred and twenty (120) days of institution; (c) Upon thirty (30) days prior written notice to InterTrust, NatWest may terminate this Agreement this Agreement in the event InterTrust is in breach of the representations set forth in Section 10.2((b)); or (d) Upon thirty (30) days prior written notice to NatWest, InterTrust may terminate this Agreement in the event NatWest: (i) fails to release any NatWest Products and/or associated service in a material, commercial fashion within [*] months from the date InterTrust first delivers Commerce 1.0 (GA - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 33 CONFIDENTIAL Version) to NatWest in accordance with the provisions of Section 2.1 hereof, and/or makes no release of any NatWest Product commercially available for any consecutive [*] month period during the term of this Agreement, provided that such time period shall be extended by any period in which there exists a Material Defect in the Commerce 1.0 software that materially impedes NatWest's development efforts as relevant, but only for the period from the date that NatWest shows such effort to have been first materially impeded to the date such defect has been reasonably corrected or mitigated as provided in Section 2.2(b); (ii) fails to timely make payments due under this Agreement on two or more occasions over a twelve (12) month period; or (iii) engages in conduct directly contrary to a partnering relationship by engaging in the licensing or transferring to multiple third Persons of any technology (other than InterTrust Technology) that contains or includes Secure Containers to Manage Content for incorporation or use by such third Persons in products and/or applications for other customers, including end users (and provided that the foregoing provisions of this subparagraph (iii) shall not be construed to include licensed activities as set forth herein). 13.3 Effect of Termination. Upon the expiration or termination of this --------------------- Agreement: (i) all licenses granted hereunder shall automatically terminate; (ii) InterTrust shall have the right to retain all sums already paid by NatWest hereunder, and NatWest's only payment obligation under Sections 5.1((a)), ((b)) and ((c)) will be to pay to InterTrust all sums accrued but unpaid within thirty (30) days thereafter; and (iii) NatWest shall discontinue use of InterTrust Technology and the use of any portion of such InterTrust Technology in any Modified Technology, as expeditiously as commercially practicable (and in all events within thirty (30) days of such expiration or termination), and discontinue making, using, selling or otherwise transferring or exploiting any product or service that in the absence of a license hereunder would infringe any InterTrust Intellectual Property Rights (including termination of distribution of NatWest Products and any associated services); provided, however, that all -------- ------- ---- licenses properly granted to end-users pursuant to the then-existing Customer Agreements solely for Applications Products shall continue in full force and effect in accordance with the terms thereof (but only where such licenses do not provide any rights to such end-users with respect to Clearinghouse Functions, other than as may be expressly provided hereunder and where one or more Authorized Clearinghouse Providers (other than NatWest and/or its successors) provide Clearinghouse Functions). Confidential and Top Secret Information shall be returned to the Party and/or securely destroyed in the manner set forth in Exhibit G hereto. 13.4 NatWest Continuing Rights. The Parties acknowledge that Section 365(n) of ------------------------- Title 11 of the United States Code (collectively, the "Bankruptcy Code") --------------- provides, in part that, in the event InterTrust undertakes a bankruptcy proceeding under the Bankruptcy Code, NatWest as a licensee of InterTrust Technology is entitled to retain and continue to exercise its licenses hereunder in accordance with the terms of the Bankruptcy Code. All rights and licenses granted under this Agreement shall be deemed to be for the purpose of such Section 365(n), licenses of right to "intellectual property" as defined under Section 101 of the Bankruptcy Code. 13.5 Survival. The respective rights and obligations of InterTrust and NatWest -------- under the provisions of Sections 3,5, 4.5, 5.6 (but only for a period of five years), 6.1, 6.2, 9, 11, 12, 14 and this Section 13.5 shall survive expiration or termination of this Agreement. 14. MISCELLANEOUS. 14.1 Governing Law. This Agreement, any and all actions arising out of or in ------------- any manner affecting the interpretation of this Agreement, and any actions between the Parties involving the InterTrust Technology, any InterTrust Property, Licensed Rights, InterTrust Intellectual Property and/or any Confidential or Top Secret Information ("Party Disputes") shall be governed -------------- solely by, and construed solely in accordance with, the laws of the United States of America and the Commonwealth of Virginia, excluding that body of law relating to conflict of laws. The Parties hereby acknowledge and agree that the United Nations Convention on Contracts for the International Sale of Goods shall not apply to this Agreement. To the extent permitted by law, the provisions of this Agreement shall supersede any provisions of the Uniform Commercial Code as adopted or made applicable to this Agreement in any competent jurisdiction. - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 34 CONFIDENTIAL 14.2 Venue and Jurisdiction. In connection with any litigation between the ---------------------- Parties involving a Party Dispute, each Party hereby unconditionally and irrevocably consents to the exclusive jurisdiction and venue, in the Courts of the Commonwealth of Virginia and in the U.S. Federal District Court, located in the City of Alexandria, Virginia (or any direct successor thereto) and irrevocably: (i) waives any objection and covenants that it shall refrain from making any motion concerning personal jurisdiction, venue, transfer, or convenience of the Parties with respect to a Party Dispute filed in said courts; and (ii) consents to the service of process of said courts in any matter relating to this Agreement by the mailing of process by registered or certified mail, postage prepaid, at the addresses specified in this Agreement. If necessary, NatWest shall appoint a registered agent in the Commonwealth of Virginia for acceptance of service of process and/or other notices provided for under this Agreement and shall notify InterTrust of the identity of such registered agent within thirty (30) days after the Effective Date. 14.3 Compliance with Law and Export Controls. The Parties shall at all times --------------------------------------- comply with all applicable U.S. and foreign federal, state, and local laws, rules and regulations relating to the execution, delivery and performance of this Agreement and to the InterTrust Technology Products and Modified Technology. NatWest acknowledges that because one or more aspects of the InterTrust Technology is likely to be subject to the export control laws, regulations and requirements of the United States and other jurisdictions, NatWest Products likely will require export and other approvals as well. InterTrust shall use all commercially reasonable efforts at InterTrust's expense to obtain any license or other approval, if any, that may be required by the United States government for InterTrust to make the InterTrust Technology Products and/or Documentation or information relating thereto generally available internationally. 14.4 Amendment or Modification; Assignment. This Agreement may not be amended, ------------------------------------- modified or supplemented by the Parties in any manner, except by an instrument in writing signed by the InterTrust Designated Officer and a duly authorized officer of NatWest. NatWest shall not assign or transfer (whether expressly, by operation of law or otherwise) its rights or obligations hereunderto any Person (including any affiliate): (i) who has commercial interests materially in conflict with InterTrust's interests; or (ii) without InterTrust's prior written consent, which consent shall not be unreasonably withheld; provided that NatWest -------- ---- may, without the prior written consent of InterTrust, assign its rights and obligations hereunder to (x) any wholly-owned NatWest affiliate or (y) any Person in connection with any merger or sale of substantially all of NatWest's assets and business; provided further that such affiliate or such Person, as -------- ------- ---- applicable, does not have commercial interests materially in conflict with InterTrust's interests and such successor in interest or transferee assumes in writing NatWest's rights and obligations under this Agreement. InterTrust shall not assign or transfer (whether expressly, by operation of law or otherwise) this Agreement or its rights or obligations hereunder to any Person without NatWest's prior written consent, which consent shall not be unreasonably withheld. Notwithstanding the foregoing, InterTrust shall be entitled to assign or transfer such rights or obligations hereunder in connection with any merger or sale of substantially all of the assets or business related to this Agreement without such NatWest consent; provided that the successor-in-interest or -------- ---- transferee assumes in writing InterTrust's rights and obligations under this Agreement and consents to the licenses hereunder. Subject to the foregoing, this Agreement will benefit and bind the successors and permitted assigns of the Parties. Any attempted transfer or assignment without such consent shall be null and void ab initio and of no force or effect. -- ------ 14.5 Notices. Any notice hereunder shall be in writing and shall be either: ------- (i) personally delivered; (ii) transmitted by postage prepaid registered or certified airmail, return receipt requested; or (iii) by facsimile with a confirmation copy deposited prepaid with an internationally recognized express courier service. Unless otherwise provided herein, all notices shall be deemed to have been duly given on: (a) the date of receipt (or if delivery is refused, the date of such refusal) if delivered personally, by facsimile, or by express courier; or (b) ten (10) days after the date of posting if transmitted by mail. Notwithstanding the foregoing, communication of Confidential Information or Top Secret Information shall be governed by practices adequate to appropriately protect such information as may be specified herein or in the future by InterTrust. Either Party may change its address for purposes hereof on not less than three (3) days prior notice to the other Party. Notice hereunder shall be directed: 35 CONFIDENTIAL If to InterTrust, to: If to NatWest, to: 460 Oakmead Parkway National Westminster Bank Plc Sunnyvale, California 94086 41 Lothbury Attn: General Counsel London, England EC2P 2BP3933 Fax: (408) 222-6144 Attn.: Company Secretary Fax: (44) 171-726-1035 14.6 Waiver. Any provision of this Agreement may be waived by the Party ------ entitled to the benefit thereof. Neither Party shall be deemed, by any act or omission, to have waived any of its rights or remedies hereunder unless such waiver is in writing and signed by, in the case of InterTrust, InterTrust Designated Officer, and in the case of NatWest, a NatWest authorized officer, and then only to the extent specifically set forth in such writing. A waiver with reference to one event shall not be construed as continuing or as a bar to or waiver of any right or remedy as to a subsequent event. 14.7 No Third Party Beneficiaries. Nothing express or implied in this ---------------------------- Agreement is intended to confer, nor shall anything herein confer, upon any Customer or any Person other than the Parties and any respective successors or permitted assigns of the Parties, any rights, remedies, obligations or liabilities whatsoever. 14.8 No Agency. Nothing herein contained shall be construed to constitute the --------- Parties hereto as partners or joint venturers or the agent of the other Party in any sense of those terms whatsoever. Neither Party assumes any liability of the other Party nor shall have any authority to enter into any binding obligation on behalf of the other Party. 14.9 Recovery of Costs and Expenses. If any Party to this Agreement brings an ------------------------------ action against the other Party to enforce its rights under this Agreement, the prevailing Party shall be entitled to recover its costs and expenses, including without limitation, reasonable attorneys' fees and costs incurred in connection with such action, including any appeal of such action. 14.10 Severability. If the application of any provision or provisions of this ------------ Agreement to any particular facts or circumstances shall be held to be invalid or unenforceable by any court of competent jurisdiction, then: (i) the validity and enforceability of such provision or provisions as applied to any other particular facts or circumstances and the validity of other provisions of this Agreement shall not in any way be affected or impaired thereby; and (ii) such provision or provisions shall be reformed without further action by the Parties hereto and only to the extent necessary to make such provision or provisions valid and enforceable when applied to such particular facts and circumstances. 14.11 No Solicitation of Employees. Each Party agrees that neither it nor any ---------------------------- of its affiliates will, without the prior written consent of the other Party, directly or indirectly solicit or encourage any person employed by the other Party to leave the employ of such other Party and become an employee such former Party until two (2) years after such employee shall have ceased being employed by such other Party. 14.12 Counterparts; Facsimiles. This Agreement may be executed in any number ------------------------ of counterparts, each of which when so executed and delivered shall be deemed an original, and such counterparts together shall constitute one and the same instrument. Each Party shall receive a duplicate original of the counterpart copy or copies executed by it. For purposes hereof, a facsimile copy of this Agreement, including the signature pages hereto, shall be deemed to be an original. Notwithstanding the foregoing, the Parties shall deliver original execution copies of this Agreement to one another as soon as practicable following execution thereof. 36 CONFIDENTIAL 14.13 Entire Agreement. This Agreement represents the entire agreement of the ---------------- Parties with respect to the subject matter hereof and supersedes all prior and/or contemporaneous agreements and understandings, written or oral between the Parties with respect to the subject matter hereof (except as set forth in Section 0 hereof). IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the date first written above by the undersigned duly authorized. INTERTRUST TECHNOLOGIES NATIONAL WESTMINSTER BANK PLC CORPORATION By:___________________________________ By:_____________________________________ Name: Victor Shear Name: Patrick J. Boylan Title: Chairman and Chief Executive Officer Title: Managing Director, Card Services
37 EXHIBIT A TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT INTERTRUST TECHNOLOGY PRODUCT DELIVERABLES AND RELATED ITEMS ------------------------------------------------------------ I. INTERTRUST TECHNOLOGY: PRODUCTS AND DOCUMENTATION II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE III. INTERTRUST AUTHORIZED CLEARINGHOUSE SOFTWARE IV. INTERTRUST CORE TECHNOLOGY I. INTERTRUST TECHNOLOGY ESTIMATED PRODUCT DELIVERABLE A. InterTrust Systems Developer's Kit Release 1.0 ----------------------------------------------- The InterTrust Systems Developer's Kit Release 1.0 provides a broad range of software, components and sample applications that allow developers to incorporate highly flexible and distributed digital rights management and the persistent protection of digital information into computer software, and to support e-commerce businesses, infrastructures and clearinghouses. In general, this software: . facilitates the rapid integration of InterTrust(TM) secure electronic commerce and digital rights management technologies into customer-specific applications; . enables development of rights management tools for viewing, packaging and editing; . allows the creation of Secure Containers for music-, video-, text-, image- based, and other forms of digital content. DigiBox containers provide persistent protection of digital information across information networks and through digital distribution channels; . permits specification of conditions and consequences governing the use of digital data and executables. These conditions may include distributed usage management, auditing, and payment control related to client interaction with (and usage of) digital information; . has client and server support for Windows 95 and NT 4.0 and server support for Windows NT 4.0 and Solaris 2.5.1; . enables and integrates with customer-specific services, such as: payment, financial and usage clearinghouses, multiple network protocols, database systems, updates, etc; and . supports deployment services for installation and registration. The Systems Developer's Kit Release 1.0 comprises two announced product sets: Commerce 1.0 and Enterprise 1.0. These products are, initially, comprised of the same software, but are intended for different uses. The Commerce 1.0 product is intended as an interoperable secure foundation for global commerce where InterRights Points serve as a general purpose resource for a variety of application products, together Managing Content from, potentially, a wide variety of unrelated Persons. Enterprise 1.0 is intended solely for use within enterprises and/or for use by enterprises solely in connection with such enterprise's Content and within the context solely of products and/or services for direct customers of such enterprise or other persons having a value chain relationship with such enterprise (such as suppliers, distributors, consultants, etc.). Enterprise 1.0 comprises that software described above for Commerce 1.0, used for such purposes described immediately above. 1. Systems Developer's Kit 1.0 Deliverables: ----------------------------------------- Systems Developer's Kit 1.0 delivers software, development tools, and documentation for creating InterTrust-aware applications and run-time environments, and provides the framework for clearinghouse activities and deployment activities, including deployment administration. Production- level core InterTrust software, application programming interfaces and tools, and sample software applications are provided. The deliverables represent product sets, each targeted to support a different InterTrust rights functional area. They are: . Application Developer's Kit ("ADK"); --- . Transaction Authority Framework(TM); and . InterRights(TM) Point (Golden Master). In Systems Developer's Kit 1.0, these product sets will be released together. For future releases, and at InterTrust's discretion, these product sets may be independently delivered and may be available as independent deliverables. a. Applications Developer's Kit 1.0: --------------------------------- The Application Developer's Kit provides programming libraries, sample applications that demonstrate packaging and viewing, certain deployable application and components, source code for the sample applications, pre- activated (non-deployable) InterRights Points for test purposes, and documentation. . Core Technology Software - Object Code - InterTrust Programming Libraries (including ITAPI, the Layout Interpreter Library, Rights Management Library, and utility libraries); . ITAPI: The programming interface to the InterRights Point software includes functions that are used to package and read DigiBox containers, specify business rules, and perform administrative functions associated with use of DigiBox containers. . InterTrust Interoperability Library ([*]): This interface uses ITAPI to construct various governed elements, such as budget objects, CHInfo objects, and CHAccount objects. It manages the construction of the controls required for these objects and provides consistent use of those controls to help enable interoperability of objects. . InterTrust Layout Interpreter Library ([*]): The internal organization of a DigiBox container usually is specified in a layout template produced by the Layout Editor and interpreted by both packaging and viewing applications using the Layout Interpreter programming interface. . Rights Management Library ([*]): Applications can use this class library to create and manipulate controls (business rules) rather than writing directly to the ITAPI to do so. - Pre-activated InterRights Points (software to support the development environment); and - InterTrust Rights Wallet(TM) and core Rights Wallet(TM) applets: supports administration of the [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. InterRights Point in the packaging and viewing environment. These provide an administrative interface to the InterRights Point software to enable users of the system to set budgets, set passwords, commence payment activities, and perform other administrative functions associated with use of DigiBox containers and the InterRights Point software. . Applications and Components - Source Code and Object Code (include) - InterTrust Layout Tool (executable and source code): a graphical editing tool for creating DigiBox container layout templates that are later used in packaging operations. This tool creates a content layout template that specifies how the elements representing digital content in a DigiBox container will be organized. NatWest can use the basic template supplied with the InterTrust Packager, or can use this tool to create different templates for its own content. Templates facilitate interoperability among packaging and viewing applications that use the InterTrust software. - InterTrust Rights Selector (executable and source code): an [*] component, intended to be embedded in viewer applications, for displaying rights controls in readily human-readable and manipulable format. The Rights Selector component reads a set of business rules (controls) from a DigiBox container and displays them in human-readable from. - InterTrust Survey/License Control (executable and source code): an [*] component, intended to be embedded in viewer applications, for presenting HTML based survey and license agreements to consumers; . Consumer Sample Applications and Components - Object Code and Source Code for portions that may be altered - InterTrust Packager: sample software that creates a DigiBox container, places specified content into a DigiBox container, associates business rules and specified controls with the content, and places such rules inside the container as well; - InterTrust Viewer: sample software that reads the contents of a DigiBox container created with an InterTrustworthy Packager; displays the rules that govern use of the content; and, after the user agrees to those rules, displays, prints, or saves the content as specified by the business rules. This application implements InterTrust defined [*] component interfaces to invoke survey and license agreement mechanisms and supports a plug-in interface for handling specific media types; - InterTrust Media [*] Control: a sample [*] component that demonstrates how to build plug-in media handlers; and - InterTrust Installer. b. Transaction Authority Software: ------------------------------ The Transaction Authority software provides the framework for Clearinghouse activities and Deployment activities, including deployment administration. . Core Technology: Object Code Format (except as noted): [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. - Transaction Authority Framework Software - secure communication infrastructure and protocols, general processing of incoming data, and database storage. The Transaction Authority Framework (TAF) software is a software framework made up of several components that handle the secure reception and processing of DigiBox containers. It is designed to enable validation and processing of requests that require interaction between an InterRights Point and some financial or management authority, called a transaction authority. The TAF is the basis of any transaction authority system, whether it is specialized as a financial clearinghouse, a usage clearinghouse, or a Deployment Manager (DM): The TAF accepts communications from the dispersed InterRights Points, opens DigiBox containers within its own InterRights Point, manages work flow, and hands off audit records and other messages to the clearinghouse provided by InterTrust business partners. The TAF also packages acknowledgment responses in DigiBox containers and sends them back to the originating InterRights Points. Well-defined software interfaces are provided so that partner software can interact with the TAF; - Deployment Manager Software - a set of programs for secure node deployment and initialization, provision of naming services to nodes, and provision of secure date and time services to nodes. It initializes each InterRights Point and authorizes addition of new users. It authorizes backup and restores activities of provider and consumer systems. It is also responsible for key distribution and name services within a deployment. (Source Code provided for those portions of the software that may be altered); and - Installer Software: Software for tamper-resistant installation of the InterRights Point (Source Code provided for those portions of the software that may be altered). . Clearinghouse Sample Applications and Components - Source Code and Object Code: - Usage Clearinghouse Application--sample software for gathering and aggregating usage information, such as usage audits and user profiles; - Financial Clearinghouse Application--sample software for performing prototypical clearinghouse functions in the area of financial clearing; - Deployment Service Prototype Component--sample software for customizing an initialized InterRights Point (e.g., associating that InterRights Point with a particular InterTrust deployment and obtaining installation demographics) c. InterRights Point (Golden Master): --------------------------------- The Golden Master provides a deployable version of the InterRights Point software that may be replicated for distribution. The InterRights Point is the component that provides secure processing of DigiBox containers and enforces business rules. In Commerce 1.0, the InterRights Point software is a cooperating or server process that can run on Microsoft Windows95 and Windows NT 4.0. The InterRights Point software presents the InterTrust Application Programming Interface (ITAPI) to applications. This interface has a proxy or "client" portion that communicates via RPC with a "server" portion. This server side of the ITAPI then makes requests of the Protected Processing Environment(TM) (PPE) software in the InterRights Point. The PPE software does the actual secure manipulation of containers. The client-server implementation used for ITAPI allows an application and the InterRights Point to be located on the same machine or on different ones. The interface supports multiple local and remote clients and also multiple simultaneous users. 2. Commerce 1.0 Documentation: --------------------------- - Commerce 1.0 Overview - Commerce 1.0 Installation and Configuration Guide - Commerce 1.0 Glossary - Applications User's Guide - Application Developer's Guide - Application Developer's Kit: Supplemental Libraries - Application Developer's Kit: ITAPI Vol 1 Concepts - Application Developer's Kit: ITAPI Vol 2 Reference - Application Developer's Kit: Interoperability Library - Application Developer's Kit: Rights Metafile Format - Clearinghouse Developer's Guide - Deployment Manager Developer's Guide 3. Commerce 1.0 Schedule: ---------------------- . Beta Release: Shipped March 1998 . First Commercial Shipment (FCS): Shipped July 1998 . General Availability (target): October 1998 Note: Source (where applicable and made available). Object Code for Windows 95 and Windows NT 4.0 for client software and Windows NT 4.0 and Solaris 2.5.1 for server software. Additional platforms under development, and to be supplied by InterTrust as available and determined by InterTrust in its discretion. InterTrust Rights Editor/Commerce Modeler product application to be made available for internal use through provision of licensed developer copies (n/c). 4. Enterprise 1.0 (GA Version): ---------------------------- Functionality supportive of use of InterTrust technology within the Enterprise context (described above). B. Requested Functionality ----------------------- The following functionalities, which will be incorporated into one or more New Release(s) or Upgrade Release(s), constitutes the "Requested Functionalities"): . Prepayment: control mechanism which supports prepayment, including the budget [top-up] procedure and local transaction maintenance applet. . Aggregate Limits for Corporate Accounts: permits groups of users (for example, all users within one company) to share an enforced limit on their individual spending. Support for User Multi-Currencies: permits users to convert monies in one budget to equivalent monies in a budget of a different currency. Note: Based at least in part upon further clarifications from NatWest with respect to its product plan and timing, anticipated commercial use of InterTrust Technology and desired attributes of the Requested Functionality, and subject to commercial and technical feasibility and other commercially reasonable factors, InterTrust will use reasonable efforts to develop and incorporate the Requested Functionality in future Upgrade Releases and New Releases. C. InterTrust Systems Developer's Kit Release 2.0 - Initial Description of ----------------------------------------------------------------------- Features and Functionality --------------------------- Systems Developer's Kit 2.0 will add greater value chain management capability and independent delivery of control functionality to InterTrust Systems Developer's Kit 1.0, and it is anticipated that the release will support the following functionality: . InterRights Point-based value-chain management, enabling support of chain of control models directly within InterRights Point; . Deliver controls independently of controlled digital information, enabling complex updatable, control models for usage/advertising and trading systems; and . Additional major functionality under evaluation but not yet specified - priority of additional functionality dependent, in part, on experience with earlier releases, market priorities and timing of completion. II. INTERTRUST AUTHORIZED APPLICATION SOFTWARE AND CORE TECHNOLOGY Your Agreement contains provisions that: (1) prohibit modification of InterTrust Technology (that is designated Core Technology) (files noted as "Core Technology" may not be modified; files expressly noted herein to be "Customizable" Technology may be modified), and (2) restrict redistribution of any software except "Authorized Application Software" (files noted as "Authorized Application Software" may be distributed, as applicable solely in accordance with the terms and conditions hereof and in the Agreement; files not expressly noted as "Authorized Application Software" may not be distributed). (Any information concerning Customizable Technology or "Core Technology" found in source files themselves may not be relied upon and shall be superseded by the designations noted herein). Any and all further restrictions noted in the file (or Agreement) concerning distribution (such as with the IRP Golden Master process) must be adhered to or such file shall not be Authorized Application Software. As of the Effective Date there is no Authorized Clearinghouse Software. LISTING OF CUSTOMIZABLE TECHNOLOGY AND AUTHORIZED APPLICATION SOFTWARE REDISTRIBUTION OF NON-SOURCE FILES All references to file and directory locations refer to the default installation directories, which are set by the user at installation. The binary and online help files listed below are "Authorized Application Software" and may be redistributed, solely subject to terms and conditions of the Agreement. All other files may not be redistributed (except as specifically noted separately in the Source File section below): [*] [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. [*] [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. [*] SOURCE FILE CUSTOMIZATION AND REDISTRIBUTION Source files contained in the directories listed in this section are "Customizable" and may be modified solely as expressly provided therein. In some cases, redistribution of the customized output is authorized and such files are Authorized Application Software for redistribution solely subject to terms and conditions of the Agreement. The paragraph preceding each section describes the customization and redistribution restrictions. Source files in any directory not listed in this section may not be modified or changed in any manner. * CUSTOMIZABLE, BUT REDISTRIBUTABLE ONLY VIA THE IRP GOLDEN MASTER PROCESS The source files contained in the directories listed immediately below are customizable but are redistributable only via the IRP Golden Master redistribution process and solely subject to terms and conditions of your Agreement: [*] * CUSTOMIZABLE BUT NOT REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY) The source files contained in the directories listed immediately below are customizable but not redistributable in any manner: [*] [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. [*] * REDISTRIBUTABLE ONLY The source files contained in the directory listed immediately below are redistributable (subject to terms and conditions of your Agreement) but may not be modified or changed in any manner [*] * CUSTOMIZABLE AND REDISTRIBUTABLE (I.E., "CUSTOMIZABLE SOFTWARE" ONLY) The source files contained in the directories listed immediately below are customizable and redistributable (solely subject to terms and conditions of your Agreement): [*] [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. [*] [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. [*] The source files contained in this directory are third-party files which are customizable if the instructions contained in those files are correctly followed: [*] III. SPECIAL ACKNOWLEDGMENTS AND THIRD PARTY LICENSE REQUIREMENTS * It is acknowledged and agreed that the InterTrust Technology may employ or may operate with one or more technologies that may not be proprietary to InterTrust but are included within the licenses granted in Section 3.1 (the "Third Party Technology") and as may be modified from time to time by InterTrust. Licensee's use of the Third Party Technology is limited by the terms of any licenses or rights that InterTrust may have therein and may sublicense to Licensee. * This Software contains the following licensed Microsoft DLLs: msvcrt.dll, msvcirt.dll, mfc42.dll, amovie.exe, atl.dll. These files: (i) may be used only in conjunction with licensed Microsoft products; and (ii) may not be redistributed to anyone and/or modified. * Certain portions of the Software contain software provided under license to InterTrust from Inso Corporation. The Inso software is contained in files in the following directory, [*] (where [*] is the default installation directory which is set by the user at the time of installation). As stipulated in InterTrust's agreement with Inso, use of these files is for internal development and use, and demonstration purposes only (except where the ---- terms and conditions of a separate agreement are satisfied). * Certain portions of the Software contains software provided under license to InterTrust from Basis Technology Corporation ("Basis"). The Basis Software is contained in the [*] file in binary form. (c) Basis Technology. All Rights Reserved. As stipulated in InterTrust's agreement with Basis, these files may not be modified. You agree that use of the Basis Software shall occur solely (1) in connection with internal development purposes, and archival copies; (2) as a integral component of InterTrust technology or licensee's software directly associated therewith; and (3) where such Basis Software is related as InterTrust Confidential Information under the terms and conditions of this Agreement. * Certain portions of the Software have used [*] and [*] to which this notice applies: [*] Copyright (C) 1990-2, [*] Copyright (C) 1991-2, [*] Inc. All rights reserved. License to copy and use this software is granted provided that it is identified as the [*], Inc. [*], and/or [*], Inc.[*] in all material mentioning or referencing this software or this function. License is also granted to make and use derivative works provided that such works are identified as "derived from the [*], Inc. [*], and/or derived from the [*], Inc.[*] in all material mentioning or referencing the derived work. [*] Inc. makes no representations concerning either the merchantability of this software or the suitability of this software for any particular purpose. It is provided "as is" without express or implied warranty of any kind. These notices must be retained in any copies of any part of this documentation and/or software. * Certain portions of the Software have used DES software, to which this notice applies: des - fast & portable DES encryption & decryption Copyright (C) 1992 Dana L. How. THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. * Certain portions of the Software (as indicated in such portions' source files) have used [*] software, to which this notice applies: Copyright (c) 1995 by [*]. Permission to use, copy, and modify this software without fee is hereby granted, provided that this entire notice is included in all copies of any software which is or includes a copy or modification of this software and in all copies of the supporting documentation for such software. This software may be subject to export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER UNITED STATES EXPORT REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE SOFTWARE). THIS SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR IMPLIED WARRANTY. IN PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST TECHNOLOGIES CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND CONCERNING THE MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY PARTICULAR PURPOSE. * Certain portions of the Software (as indicated in such portions' source files) have used [*] software, to which this notice applies: Copyright (C) 1994 [*] Company. Permission to use, copy, modify, distribute and sell this software and its documentation for any purpose is hereby granted without fee, provided that both that copyright permission notice and this permission notice appear in supporting documentation. [*] Company (and InterTrust Technologies Corporation) make no representations about the suitability of this software for any purpose. It is provided "as is" without express or implied warranty. * Certain portions of the Customizable Technology (as indicated in such portions' source files) have used Independent JPEG Group software and certain portions of the Software supplied in executable format (as indicated in Software's "About Box") are based in part upon the work of the Independent JPEG Group. (C) 1991, 1992, 1993, 1994, 1995, Thomas G. Lane. The Graphics Interchange Format (C) is the copyright property of CompuServe Incorporated. GIF (sm) is a Service Mark property of CompuServe Incorporated. Certain portions of the Independent JPEG Software were loosely based on giftoppm from the PBMPLUS distribution as of February 1991 to which this notice applies: Copyright (C) 1990, David Koblas. Permission to use, copy, modify, and distribute this software and its documentation for any purpose and without fee is hereby granted, provided that the above copyright notice appears in all copies and that both that copyright notice and this permission notice appear in supporting documentation. This software is provided "as is" without express or implied warranty. [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL EXHIBIT B TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT TRADEMARKS ---------- InterTrust Trademarks --------------------- InterTrust The InterTrust Logo InterTrust Commerce Architecture InterRights Point InterTrustworthy DigiBox Virtual Process Control Electronic Value Chain Management Commerce 1.0 Commerce Modeler Rights Editor Enterprise Modeler Commerce Appliance InterTrustable Rights Expression Tools Trust Virtual Machine Transaction Authority Framework TrustMail MailTrust TrustPublish ComplyTrust PromoteTrust PageForward AssertTrust NetTrust TrustNet Publish America Commerce America TrustStation CommerceStation RightsStation RightsWallet Electronic Express CONFIDENTIAL NatWest Trademarks (registered) ------------------------------- 321 Zero ActionLine AD 1692 Airlease AT THE THREE CROWNS IN THE STRAND NEXT DOOR TO THE CLOBE TAVERN AD 1692 BankLine BIS Caller CAMPBELL'S OFFICE CF Compass Computer Aided Share Service Compsure Counter Intelligence Coutts Coutts Card COUTTS & CO. COUTTS & CO. ACCOUNTACARD COUTTS & CO. CAMPBELL'S OFFICE COUTTS & CO. SELECT PORTFOLIO COUTTS & CO. SHARE SELECTION SERVICE Coutts CrownLine Coutts CrownPay COUTTS FINANCE CO. COUTTS MORTGAGE RESERVE ACCOUNT COUTTS RESERVE ACCOUNT Coutts Portfolio Service Credit Zone D.A.L.A.S. Decipher Elevator Finance HBS Heythrop Business School Heythrop HLN Heythrop Learning Network IMMAS INCS Institutional Nominee Custodial System IntWest Junior World Savers Magex National Westminster Bank National Westminster bank SERVICETILL National Westminster Relay National Westminster the Action Bank NatWest NatWest - the Action Bank NatWest 321Zero NatWest Actionline NatWest Advantage CONFIDENTIAL NatWest Autopay NatWest BankLine NatWest BankLine Services NatWest BrokerLine NatWest Business Insurance Services NatWest Business Line NatWest C.A.R.E.S. NatWest Cardline NatWest Cash Bond NatWest Corporate Quarterly NatWest CQ NatWest Crown Reserve NatWest Currency Business Account NatWest Currency Reserve Plus NatWest Current Plus NatWest Current Plus Account NatWest Customer Service Line NatWest Customerbridge NatWest Datalink Service NatWest Diamond Reserve NatWest Dimensions NatWest EuroCash NatWest Export Ease NatWest face 2 face with Finance NatWest First Reserve NatWest Global Financial Markets NatWest Gold Plus Current Account NatWest Gold Plus Service NatWest HealthSense NatWest Markets NatWest Microcall Service NatWest more than just a bank NatWest NetWork NatWest Network NatWest On Line NatWest One Two Three NatWest Portfolio Reserve Scheme NatWest Premium Investment Management Service NatWest Premium Reserve NatWest Primary NatWest Privilege Banking NatWest Relay NatWest Reward Reserve NatWest RoomrateR NatWest Security Plus NatWest Special Reserve NatWest Streamline NatWest Student Plus NatWest StudentLine NatWest the Piggy Bank NatWest Touchscreen CONFIDENTIAL NatWest TradeBridge NatWest Treasury Reserve NatWest Unit Trust Selection Service NatWest Vehicle Concepts NatWest Vehicle Services NatWest VehicleFocus NatWest VehicleSelect NatWest World Money Centre NWM NWVS Pace PHAROS Single Market Advisor Pioneer Fund Primeline PRIVATE PERSPECTIVE PROTECTOR Raid Cash Till Rapid Deposit SatWest Streamline Streamline EFT The Action Bank The Golden Key Package The International Financial Centre London The NatWest Exporter Forums and Awards Three Crowns World Savers NatWest Trademarks (pending) ---------------------------- AIRLEASE Bondline CROWN ACCOUNTING SERVICE FACEFLOW FACTORNET FIRST FOR FINANCE Gartmore Greenwich NatWest GUIDE Home Life I.M.S Nova KEYCASH Lombard L L/L/L L Lombard FIRST FOR FINANCE L Lombard Direct Lombard Lombard L CONFIDENTIAL LOMBARD DIRECT Lombard FIRST FOR FINANCE Lombard L Asset Finance Lombard L Asset Management Lombard L Bank Lombard L Banking Services Lombard L Business Lombard L Corporate Finance Lombard L Factoring Services Lombard L Home Finance Lombard L Invoice Discounting Lombard L Motor Lombard L Network systems Lombard L Personal Lombard L Sales Aid Finance Lombard L Vendor programmers Lombard Motorloan LOMBARD NORTH CENTRAL LOMBARD WHOLESALE FINANCE L TRIPLE CHOICE MAX CAT KID CLUB MOTORVIEW MV MOTORVIEW NatWest Business Deposits Direct NatWest Direct Business Banking NatWest Directlink NatWest ShareBuild NatWest Vehicle Solutions Protector SIMCO The Golden Arrow Package The Golden Star Package THE PERSONAL LOAN SERVICE FROM LOMBARD DIRECT TRADING WINDOWS ULSTER BANK Ulster Bank Anytime UPFRONT Wheelease Zenda CONFIDENTIAL EXHIBIT C TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT Deleted pursuant to subsequent amendment by the parties. C-1 * THIS EXHIBIT WAS DELETED BY AN AMENDMENT ATTACHED AS EXHIBIT 10.17 TO THE REGISTRATION STATEMENT. CONFIDENTIAL EXHIBIT D TO THE TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT SPECIFIC INTERTRUST TERMS ------------------------- At a minimum, the InterTrust Terms will contain terms that: (i) prohibit Customers from disassembling, modifying or reverse engineering any portion of the InterTrust Technology incorporated in the NatWest Product (as relevant), and except as strictly prohibited by law (in which case the provisions of Section 3.5 shall apply); (ii) stipulate that such Customer has no right to use such product in any manner whatsoever not licensed to NatWest hereunder, or notwithstanding any other provision hereof, to engage in or perform any Clearinghouse Functions whatsoever unless such customer is an Authorized Clearinghouse Provider; (iii) grant such Customer only a limited license solely to use the NatWest Product (as relevant), and, as applicable, to (A) incorporate Authorized Application Software into such customer's software product to provide a InterRights Point that is Compliant with InterTrust Specifications or (B) develop and incorporate software components that provide the interface for, and support operations in conjunction with, an InterRights Point provided by NatWest under this Agreement; (iv) permit such Customer to engage NatWest and/or another Authorized Clearinghouse Provider (as determined by NatWest for its Customers) to perform Clearinghouse Functions with respect to such customer's software product, but solely in accordance with the provisions hereof; (v) provide that if such Customer is permitted to modify any portion of InterTrust Technology Source Code (as set forth above), such Customer shall grant to InterTrust and InterTrust customers a license under such Customer's patent rights, but solely to the extent necessary to permit InterTrust and InterTrust customers to make, have made, use, offer for sale, sell and/or import the InterTrust Technology; (vi) brand NatWest Products that are Application Products solely in the manner set forth in Section 4.3(c), and on Co-Branded Products communicate in a prominent manner through the use of one or more NatWest brands for NatWest InterTrustworthy clearing services (and as set forth in Section 4.3) that Clearinghouse Function services are being performed by NatWest; (vii) prohibit such Customer from removing, altering, covering, obfuscating and/or otherwise defacing any InterTrust Trademarks or Notices on any InterTrust Technology or associated documentation, marketing and advertising materials therefor; (viii) require such Customers to place Notices on products and associated documentation, marketing and advertising materials therefor in the same manner as in this Agreement; (ix) provide that such agreement may be subject to modification as may be reasonably required to protect InterTrust's rights, for example in InterTrust's Intellectual Property Rights, to the fullest extent permitted by applicable law; CONFIDENTIAL (x) provide that InterTrust shall be a third party beneficiary with the right to enforce (according to the law and venue as provided in the Agreement) those InterTrust Terms or provisions in the Customer Agreement that directly concern (a) InterTrust's Intellectual Property Rights, and/or (b) disclosure or use of InterTrust Technology or Confidential Information where such disclosure or use (1) could adversely affect the security and/or interoperability of InterTrust Technology and/or (2) supports or enables the performance of Clearinghouse Functions by a Person other than an Authorized Clearinghouse Provider; and (xi) contain such other provisions as stipulated in Exhibit E of this Agreement. CONFIDENTIAL EXHIBIT E TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT DRAFT PRODUCT LEGENDS AND NOTICES --------------------------------- A) Placement. In addition to placement as specified in the Agreement, the --------- Notices stipulated herein shall be placed in a human readable form and in a conspicuous place: . In a prominent position on all manuals for (or other documentation provided with) NatWest Products and/or associated services (collectively, the "Distributed Products"); and -------------------- . On the outside of all packaging, floppy discs and other media containing Distributed Products. B) Content Of Required Notices For Distributed Products That Are Application ------------------------------------------------------------------------- Products. --------- 1. Copyright Notices. A copyright notice shall be placed on Distributed Products (and associated materials) as set forth in Section A hereof that shall reflect the copyright ownership of InterTrust, as applicable, and the proper year as follows: Copyright (C) 1997-XXXX InterTrust Technologies Corporation All rights reserved. 2. Patent Notices. Patent notices shall be placed on Distributed Products (and --------------- associated materials) as set forth in Section A hereof that shall reflect InterTrust patent rights as follows: This product and its use may be covered by one or more of the following patents: US 4,827,508, US 4,977,594, US 5,050,213, US 5,410,598, EP 329681, AT133305 and DE3751678. Additional US and foreign patents are pending. Such patent notice shall be modified to reflect any additional patents under the Licensed Rights issued to InterTrust where NatWest is provided licenses under such additional patent rights under this Agreement and/or such patents relate to InterTrust Technology. 3. Trademark Notices. Trademark notices shall be placed on Distributed Products ------------------ (and associated materials) as set forth in Section A hereof and Trademark Guidelines as attached below and from time to time to be provided to NatWest, and shall have such content as set forth in the Trademark Guidelines. 4. Third Party Notices. The Documentation contains some references to trademarks ------------------- owned by entities other than InterTrust. Other trademarks that are referenced herein or in the Documentation are the property of their respective owners. For example, Microsoft and Windows are registered trademarks of Microsoft Corporation. Certain portions of the InterTrust Technology may incorporate one or more of the following software modules, and if such modules are used in NatWest Products, NatWest shall include the following notices, as applicable: * (C) 1997 Basis Technology. All rights reserved. * Certain portions of the Software have used [*] and [*], to which this notice applies: [*] Copyright (C) 1990-2, [*] Copyright (C) 1991-2, [*], Inc. All rights reserved. License to copy and use this software is granted provided that it is identified as the "[*], Inc. [*] [*]", and/or "[*], Inc. [*]" in all material mentioning or referencing this software or this function. License is also granted to make and use derivative works provided that such works are identified as "derived from the [*], Inc. [*]", and/or "derived from the [*], Inc. [*]" in all material mentioning or referencing the derived work. [*], Inc. makes no representations concerning either the merchantability of this software or the suitability of this software for any particular purpose. It is provided "as is" without express or implied warranty of any kind. These notices must be retained in any copies of any part of this documentation and/or software. * Certain portions of the Software have used DES software, to which this notice applies: des-fast & portable DES encryption & decryption Copyright (C) 1992 Dana L.How. THIS PROGRAM IS DISTRIBUTED WITHOUT ANY WARRANTY, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. * Certain portions of the Software (as indicated in such portions' source files) have used [*] software, to which this notice applies: Copyright (c) 1995 by [*]. Permission to use, copy, and modify this software without fee is hereby granted, provided that this entire notice is included in all copies of any software which is or includes a copy or modification of this software and in all copies of the supporting documentation for such software. This software may be subject to export controls. SOME PARTS OF [*] MAY BE RESTRICTED UNDER UNITED STATES EXPORT REGULATIONS (HOWEVER, SUCH PARTS ARE NOT INCLUDED IN THE SOFTWARE). THIS SOFTWARE IS BEING PROVIDED "AS IS", WITHOUT ANY EXPRESS OR IMPLIED WARRANTY. IN PARTICULAR, NEITHER THE AUTHORS NOR [*] (NOR INTERTRUST TECHNOLOGIES CORPORATION) MAKE ANY REPRESENTATION OR WARRANTY OF ANY KIND CONCERNING THE MERCHANTABILITY OF THIS SOFTWARE OR ITS FITNESS FOR ANY PARTICULAR PURPOSE. * Certain portions of the Software (as indicated in such portions' source files) have used [*] software, to which this notice applies: Copyright (C) 1994 [*] Company. Permission to use, copy, modify, distribute and sell this software and its documentation for any purpose is hereby granted without fee, provided that both that copyright permission notice and this permission notice appear in supporting documentation. [*] Company (and InterTrust Technologies Corporation) make no representations about the suitability of this software for any purpose. It is provided "as is" without express or implied warranty. * Certain portions of the Customizable Technology (as indicated in such portions' source files) have used Independent JPEG Group software and certain portions of the Software supplied in executable format (as indicated in Software's "About Box") are based in part upon the work of the Independent JPEG Group. (C) 1991, 1992, 1993, 1994, 1995, Thomas G. Lane. The Graphics Interchange Format (C) is the copyright property of CompuServe Incorporated. GIF (sm) is a Service Mark property of CompuServe Incorporated. Certain portions of the Independent JPEG Software were loosely based on giftoppm from the PBMPLUS distribution as of February 1991 to which this notice applies: Copyright (C) 1990, David Koblas. Permission to use, copy, modify, and distribute this software and its documentation for any purpose and without fee is hereby granted, provided that the above copyright notice appears in all copies and that both that copyright notice and this permission notice appear in supporting documentation. This software is provided "as is" without express or implied [*] CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL [*] - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL warranty. 5. Field of Use Notices. Field of Use notices shall be placed on Distributed -------------------- Products (and associated materials) as set forth in Section A hereof as follows: "This product is licensed and adapted only for certain limited, expressly approved uses, and solely as provided in the Customer Agreement (or, as applicable, the sublicense agreement) executed in connection with your receipt of this Product. No other licenses are granted. Specifically and without limitation no licenses: (i) to modify and/or reverse engineer this product; and/or (ii) any performance of clearinghouse functions have been granted. As more fully set forth in the Customer Agreement, clearinghouse functions are those activities using this product or derived from use of this Product that: (a) enable payment fulfillment or provision of consideration (including service fees, product fees or any other fees and/or charges) based at least in part on gathering and/or processing of electronic information conveyed by or associated with contents of DigiBox containers; (b) perform any audit, billing, payment fulfillment (or provision of other consideration) and/or other clearing activities involving more than one person; or (c) compile, aggregate, use and/or provide information relating to more than one person's use of one or more DigiBox containers and/or contents thereof for any consideration. Clearinghouse Functions shall include, for example, any of the following activities or services: (a) financial clearing; (b) providing object registry services and rights, permission, prices, and/or rules information for registered objects; (c) electronically certifying information such as authenticating identity, class membership or other attributes of identity context; (d) providing information based upon usage auditing, user profiling, and/or market surveying related to more than one person's use of one or more DigiBox container and/or contents thereof; and (e) employing information derived from user exposure to content such as advertising." 6. Warranty Notices and Disclaimers. -------------------------------- The following warranty notices shall be placed on all Distributed Products (and associated materials), as set forth in Section A hereof in the form here specified, and in bold letters, the following warranty disclaimer: "THE INTERTRUST SOFTWARE HAS BEEN PROVIDED BY INTERTRUST TECHNOLOGIES CORPORATION ("INTERTRUST") SOLELY IN THE FORM OF MIDDLEWARE, "AS IS" AND WITHOUT ---------- WARRANTY BY INTERTRUST OF ANY KIND, AND, TO THE MAXIMUM EXTENT ALLOWED BY APPLICABLE LAW, INTERTRUST DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY, NONINFRINGEMENT AND FITNESS FOR A PARTICULAR PURPOSE, REGARDING THIS PRODUCT. THERE IS NO WARRANTY THAT THE FUNCTIONS CONTAINED IN THE INTERTRUST SOFTWARE WILL MEET YOUR REQUIREMENTS OR THAT THE OPERATION THEREOF WILL BE UNINTERRUPED OR ERROR-FREE. INTERTRUST DOES NOT WARRANT, GUARANTEE OR MAKE ANY - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL REPRESENTATIONS REGARDING THE USE OR THE RESULTS OF THE USE OF THIS PRODUCT WITH RESPECT TO ITS ACCURACY, RELIABILITY, SECURITY CAPABILITY, CURRENTNESS OR OTHERWISE. NO ORAL OR WRITTEN INFORMATION OR ADVICE GIVEN BY ANY PERSON SHALL CREATE A WARRANTY IN ANY WAY WHATSOEVER RELATING TO INTERTRUST. THE ENTIRE RISK AS TO THE USE, PERFORMANCE AND RESULTS OF THIS PRODUCT IS ASSUMED BY YOU. THE EXCLUSION OF IMPLIED WARRANTIES IS NOT PERMITTED BY SOME JURISDICTION THUS, THE ABOVE EXCLUSION MAY NOT APPLY TO YOU." NatWest shall also include, in the same place, disclaimer of liability language as follows: "YOU ACKNOWLEDGE TO AND FOR INTERTRUST'S BENEFIT AND THE BENEFIT OF THEIR DIRECTORS, EMPLOYEES OR AGENTS ("AGENTS") THAT THE INTERTRUST SOFTWARE, AS WITH MOST SOFTWARE, MAY CONTAIN BUGS AND IS NOT DESIGNED OR INTENDED FOR USE IN HAZARDOUS ENVIRONMENTS REQUIRING FAIL-SAFE PERFORMANCE IN WHICH THE FAILURE OF THE APPLICATION SOFTWARE COULD LEAD TO DEATH, PERSONAL INJURY OR PHYSICAL OR ENVIRONMENTAL DAMAGE. INTERTRUST AND ITS AGENTS SHALL HAVE NO LIABILITY WHATSOEVER FOR ANY LOSS SUFFERED AS THE RESULT OF A BREACH OF SECURITY INVOLVING INTERTRUST SOFTWARE, WHETHER OR NOT SUCH BREACH RESULTS FROM THE DELIBERATE, RECKLESS OR NEGLIGENT ACTS OF ANY PERSON. UNDER NO CIRCUMSTANCES SHALL INTERTRUST OR ITS AGENTS BE LIABLE FOR ANY UNAUTHORIZED USE OF ANY CONTENT OF ANY PERSON, OR ANY USE OF THE SOFTWARE TO DEVELOP, DISTRIBUTE OR USE OF ANY MATERIAL THAT IS DEFAMATORY, SLANDEROUS, LIBELOUS OR OBSCENE, THAT PORTRAYS ANY PERSON IN A FALSE LIGHT, THAT CONSTITUTES AN INVASION OF ANY RIGHT TO PRIVACY OR AN INFRINGEMENT OF ANY RIGHT TO PUBLICITY, THAT GIVES RISE TO ANY BREACH OF CONTRACT INVOLVING ANY THIRD PARTY OR TO ANY BUSINESS TORT OR SIMILAR CLAIM OF A THIRD PARTY OR ANY VIOLATION OF ANY FOREIGN, FEDERAL, STATE OR LOCAL STATUTE OR REGULATION, OR THAT OTHERWISE CAN BE REASONABLY LIKELY TO EXPOSE DEVELOPER OR INTERTRUST TO CRIMINAL OR CIVIL ACTIONS. IN NO EVENT WILL INTERTRUST AND/OR ITS AGENTS BE LIABLE TO YOU FOR ANY CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES (INCLUDING DAMAGES FOR LOSS OF BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE LIKE) ARISING OUT OF THE USE OR INABILITY TO USE THE SOFTWARE, EVEN IF INTERTRUST AND/OR ITS AGENTS HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. BECAUSE SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF LIABILITY FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATIONS MAY NOT APPLY TO YOU. TO THE EXTENT AS APPLIED IN A PARTICULAR CIRCUMSTANCE ANY DISCLAIMER OR LIMITATION ON DAMAGES OR LIABILITY SET FORTH HEREIN IS WHOLLY PROHIBITED BY APPLICABLE LAW, THEN, INSTEAD OF THE PROVISIONS HEREOF IN SUCH PARTICULAR CIRCUMSTANCE, INTERTRUST AND ITS AGENTS SHALL BE ENTITLED TO THE MAXIMUM DISCLAIMERS AND/OR LIMITATIONS ON DAMAGES AND LIABILITY AVAILABLE AT LAW OR IN EQUITY BY SUCH APPLICABLE LAW IN SUCH PARTICULAR CIRCUMSTANCE, IN NO EVENT TO EXCEED US$10." 7. Confidentiality and Trade Secret Notices. Except as described below for ---------------------------------------- InterTrust Top Secret Information, NatWest shall place trade secret notices in such places as specified in Section A hereof CONFIDENTIAL (as applicable) and as applicable, conspicuously and prominently: (a) on the cover, first page, and in noticeable form in the header or footer of all subsequent pages, of all printed copies of any InterTrust Confidential Information authorized under this Agreement, (b) on packaging of media containing such information, such as floppy disks, and (c) on the initial screen of all electronic copies of any InterTrust Confidential Information. For Confidential Information, the content of such trade secret notice provided to Licensee pursuant to the agreement between the parties. CONFIDENTIAL INFORMATION OF INTERTRUST TECHNOLOGIES CORPORATION Where InterTrust Technologies Corporation has provided NatWest with Top Secret Information, NatWest shall provide notices as set forth immediately above, having the following content: TOP SECRET INTERTRUST INFORMATION, SUBJECT TO SPECIAL HANDLING PROCEDURES AS SET FORTH IN THE AGREEMENT BETWEEN THE PARTIES. DO NOT COPY, DISCLOSE, OR DISTRIBUTE. CONFIDENTIAL Trademark Guidelines for Use of Trademarks of InterTrust Technologies --------------------------------------------------------------------- Corporation ----------- 1. These Trademark Guidelines ("Guidelines") are provided pursuant to the Technology Development, Marketing and License Agreement (the "Agreement") between National Westminster Bank Plc ("Licensee") and InterTrust Technologies Corporation ("InterTrust"). The trademarks of InterTrust Technologies Corporation as listed on Exhibit B (as may be amended or supplemented from time to time by InterTrust) ("InterTrust Trademarks") are valuable intellectual property of InterTrust that identify genuine technology and/or products licensed by InterTrust. Since the InterTrust Trademarks signify a high standard of quality and reliability, InterTrust must maintain control over how each of the InterTrust Trademarks is used. Therefore, these Guidelines and the provisions of applicable sections of the Agreement must be followed in their entirety in order to preserve and protect the InterTrust Trademarks. 2. The InterTrust Trademarks must be used on products and/or services that include InterTrust licensed technology or other material ("Licensed Material") and/or that have been certified as InterTrustworthy by InterTrust Certification Program; as provided for in the Agreement. The InterTrust Trademarks must also be used on associated initial computer screens, packaging, collateral documentation, manuals advertising, and promotional materials. The InterTrust Trademarks may never be used on or in connection with any other products or services, except as expressly provided for under the Agreement. 3. At the first or a prominent occurrence of a InterTrust Trademark on a computer screen and/or splash screen or in advertising, copy, promotional materials, documentation, manuals, or packaging, it must be symbolically indicated that the InterTrust Trademark used therein is a legal trademark belonging to InterTrust. This can be done by (1) indicating the "TM" symbol at the upper right corner of the trademark for an unregistered InterTrust Trademark and indicating the circled "R" (R) symbol at the upper right corner of the trademark for a registered trademark, and (2) appending an "*" after the InterTrust Trademark and placing the appropriate statement selected from the following on a suitably noticeable area (which shall generally occur near the copyright notice in text or on screen) of each such copy: (For an unregistered InterTrust Trademark) *____________________ (insert InterTrust Trademark) is a trademark in the USA and other countries of InterTrust Technologies Corporation and is used by _____________________ (insert licensee name) under license. (For a registered InterTrust Trademark) *____________________ (insert InterTrust Trademark) is a trademark in the USA and other countries of InterTrust Technologies Corporation (Reg. U.S. Pat. and Tm. Off.) and is used by __________________(insert licensee name) under license. Some countries may require that a translated version of these above statements be used. Licensee must comply with any such local laws. 4. InterTrust Trademarks may not be used in any manner that may cause confusion as to the source of origin of products and/or services. InterTrust trademarks are to be used in an evident, but potentially secondary manner to the main brand on products and services. As a general matter, the only InterTrust trademark that need directly and evidently appear on the product or service is a mark indicating compliance with InterTrust's Specifications, as designated by InterTrust - such as the mark "InterTrustWorthy". Under no circumstances may InterTrust Trademarks be used or identified on a product or in a business name or identifier of a business, InterTrust, product, or service not connected with licensee's products incorporating the Licensed Material. No variations, compounds, or imitations of the InterTrust Trademarks may be used at any time, except as expressly authorized in writing by the InterTrust Designated Officers. 5. All of the InterTrust Trademarks that are word marks must always be used either as a symbol standing alone or as an adjective describing a noun, with the noun being the generic name of the product to which the trademark CONFIDENTIAL is applied. (For example, "an InterTrust rights protection system" not "an InterTrust," or "a DigiBox secure container" not "a DigiBox.") Possessive or plural forms of the InterTrust Trademark word marks are prohibited. Additional guidelines regarding specific uses of InterTrust Trademarks and logos may be provided by InterTrust from time to time. 6. The InterTrust Trademarks may not be used as part of or in any emblem or insignia or on novelty items except as expressly authorized in writing by the InterTrust Designated Officers. The InterTrust Trademarks may not be used in combination with any other trademark, service mark or trade name except as expressly authorized in writing by an InterTrust Designated Officer. 7. InterTrust will provide its licensees with camera-ready artwork of the InterTrust Trademarks. This is the form of the InterTrust Trademarks that must be used, and this artwork shall not be altered in any way with the exception of resizing, which may be done using conventional photographic proportional processes. The InterTrust Trademarks may be used in black and white, the exact color scheme specified by InterTrust in the artwork, or in such other color treatments as may have been previously authorized in writing by InterTrust. Such authorization may be rescinded at any time. In addition, the area surrounding any use of a logotype form of a InterTrust Trademark must be free of any other pattern or graphic element for at least the width of a band that is itself at least 20% of the logotype form of the InterTrust Trademark, unless the licensee has received the prior written authorization of InterTrust, which may be rescinded in writing at any time. 8. Exhibit B of the Agreement includes a listing of all current registered InterTrust Trademarks, and InterTrust will provide prompt amendment of Exhibit B as registrations are obtained. 9. Schedule 1 hereto lists those countries in which licensees' use of InterTrust Trademarks is prohibited or otherwise restricted. InterTrust will provide prompt amendment of Schedule 1 as changes occur. 10. Licensee will use InterTrust Trademarks solely in a manner consistent with proper trademark usage and with the high standards of quality and reliability that InterTrust Trademarks represent. 11. In addition to these Guidelines, InterTrust may amend these Guidelines at any time and/or provide additional instructions from time to time which must be followed in use of InterTrust Trademarks. Such amendment and/or additional instructions shall not be inconsistent with the terms of the Agreement. CONFIDENTIAL SCHEDULE 1 Countries in Which Use of InterTrust Trademarks is Prohibited or Otherwise Restricted None CONFIDENTIAL EXHIBIT F TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT PARTNERING COMMITMENT ITEMS --------------------------- I. DEFINITIONS ----------- "Banking Institution" means a Person that: (i)() is either a Savings Association or a Bank Holding Company as defined and registered under the Bank Holding Company Act 12 U.S. 1841 et. seq. which is in effect as of the Effective Date (or a direct or indirect subsidiary of either) that (a) itself or through an affiliate (as defined in 12 U.S. 1841) either issues credit cards to customers or processes credit card transactions on behalf of merchants who accept such credit cards, and (b) is recognized, on its own or through an affiliate, as a Visa or Master Card independent service organization (any such Person, a [*]); or (ii) as to other Persons not provided in (i) immediately above, to InterTrust's reasonable belief after reasonable examination, is, or is a direct or indirect affiliate of, a "foreign bank" (as defined in 12 CFR Section 211.2(j) effective as of the Effective Date and whether or not actually subject to the International Banking Act of 1978), that (a) has (together with its direct or indirect affiliates on a consolidated basis) at least (1) thirty percent (30%) of its assets devoted to the business of banking, or (2) at least (A) $US 50 Billion of its assets devoted to the business of banking in the case of a foreign bank organized under the laws of and headquartered in a country that is a member of the European Union, or (B) $US 100 Billion of its assets devoted to the business of banking in the case of a foreign bank organized under the laws of or headquartered in a country other than a country that is a member of the European Union; (b) by itself or through an affiliate either issues credit cards to customers or processes credit card transactions on behalf of merchants who accept such credit cards; and (c) is recognized, on its own or through an affiliate, as a Visa or Proxy Card independent service organization (collectively, with respect to such a "foreign bank," hereinafter a Foreign Bank, and with respect to such an affiliate thereof, hereinafter a Foreign Bank Affiliate). For purposes of subparagraph (ii)(a) immediately above, assets devoted to activities listed in Section 211.5(d)(1)(7) (which regulation is in effect as of the Effective Date) shall be considered banking assets; except that with respect to a Person who is a "foreign bank," assets devoted to activities listed in Section 211.5(d)(1)(14) (which regulation is in effect as of the Effective Date) shall be considered banking assets. "Digital Rights Management" means technology that can: (i) stipulate Rules and ------------------------- Controls governing, Managing, regulating and/or controlling (a) interests (such as rights, processes and/or obligations) in, related to, and/or associated with use of any Content, and/or (b) securely manage events and/or event processes related to or associated with use of, attempted use of, and/or disposition of, Content or digital events; and (ii) enforce such Rules and Controls through technical means. Neither Digital Rights Management nor Secure Container shall mean (1) use of a certificate authority and/or digital certificate solely to authenticate the identity of a Person provided that no Rules and Controls are associated with either the certificate authority services and/or with said digital certificates ("Certificate Authority"), or (2) use of session and/or --------------------- link encryption to protect Content solely during transport provided that no Rules and Controls are associated with such Content, and that such encryption is used during transport only and does not permit persistent protection ("Session ------- Encryption"). - ---------- "Distributed Peer to Peer Digital Rights Management" means an architecture in -------------------------------------------------- which, generally speaking, plural distributed computers or other devices (i.e., ---- nodes) have the potential to act as - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL directly interacting peers in providing Digital Rights Management so that trusted processes are not required to be performed at one or more centrally located servers. II. LIST OF OTHER TECHNOLOGY PROVIDERS--To aid in defining Digital Rights ---------------------------------- Management, Secure Container technologies and Distributed Peer to Peer Digital Rights Management, the Parties agree that the following lists are exemplary and not intended as exhaustive. Companies listed in Section A may be considered as having, or representing they have, some form of Digital Rights Management technology including simpler lock/unlock solutions: A. Companies Providing Some Form of Secure Container (including simple Lock/Unlock Control Technology) and/or other Digital Rights Management Software or Hardware Component Capabilities. (We have not included water marketing technology companies on this list, though they border and in some instance cross over into rights management) [*] B. Companies Providing Distributed Peer-to-Peer Digital Rights Management systems or Hardware Component Capabilities None presently known as of the Effective Date. - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL EXHIBIT G TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT CONFIDENTIALITY PROVISIONS AND FORMS OF INTERTRUST CONFIDENTIALITY AGREEMENTS ----------------------------------------------------------------------------- CONFIDENTIALITY PROVISIONS -------------------------- 1. InterTrust Information. ---------------------- (a) Confidential Information. To the extent that NatWest receives from ------------------------ InterTrust under this Agreement any InterTrust Technology or any other information or technology that is marked "Confidential" when disclosed in written form, or indicated as "Confidential" when disclosed orally ("InterTrust ---------- Confidential Information"), NatWest shall hold such InterTrust Confidential - ------------------------ Information in strict confidence and in a manner that is: (i) sufficiently secure for the character and content of the InterTrust Confidential Information; and (ii) not less secure than procedures used by NatWest to protect its comparably important information and technology. NatWest shall not, without the prior written consent of an InterTrust Designated Officer, use, disclose, provide or otherwise make available any InterTrust Confidential Information to any Person, except to any employee, director, agent or professional consultant (collectively "Agents") of NatWest who does not have a potential conflict of ------ interest with InterTrust Technology. Furthermore, in each case of disclosure to an Agent of NatWest access to such InterTrust Confidential Information shall be allowed only to Agents who have a reasonable need to know such InterTrust Confidential Information, and then only to the extent necessary to enable NatWest to use InterTrust Confidential Information solely to exercise its license hereunder and/or as expressly allowed hereunder. NatWest shall, as the case may be: (a) require their Agents having access to any portion of InterTrust Confidential Information to strictly maintain its confidentiality; and (b) ensure that each such Agent shall have executed with NatWest a written non- disclosure/non-use agreement in the form set forth in this Exhibit G or as subsequently provided by InterTrust, or NatWest's applicable form agreement which shall effectively and comparably bind such Agent to an agreement of the same scope as InterTrust's form agreement, and which such form agreement shall be subject to InterTrust's reasonable prior written approval. Upon such approval, the form agreement shall replace the pre-existing such form agreement. NatWest shall notify InterTrust promptly in writing of any unauthorized disclosure or other misuse or misappropriation of any portions of the InterTrust Confidential Information which may come to the attention of a NatWest officer. NatWest shall maintain a log of the Agents accessing and the location of all originals and copies of material excerpts of technical Confidential Information. NatWest shall be fully responsible for any breach of its obligations under this Agreement by any Agent to whom such Confidential Information is disclosed. Any obligation of NatWest to keep InterTrust Confidential Information in confidence shall expire thirty-six (36) months after disclosure of such information by InterTrust to NatWest; provided that InterTrust Technology shall be kept -------- ---- confidential in perpetuity. (b) Top Secret Information. In order to protect InterTrust's rights, the ---------------------- rights of InterTrust licensees, and the secure interoperability and reputation of InterTrust implementations, NatWest shall treat any InterTrust Technology or other confidential information that is either marked "Top Secret" when disclosed in written form, or indicated as "Top Secret" when disclosed orally ("Top Secret ---------- Information") in a manner not less secure than NatWest's most secret information - ----------- and, in all events in a manner sufficient to ensure the security of such Top Secret Information, given such great sensitivity of such Top Secret Information. NatWest shall allow disclosure of such Top Secret Information to no more than [*] designated individual employees of NatWest at any time (and to no Agents who are not employees), each of whom has a direct need to know such information or be exposed to such Top Secret Information (as agreed in each case by InterTrust) and then only to the extent necessary for NatWest to - ---------- * CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL use Top Secret Information solely to exercise its rights and perform its obligations under this Agreement. NatWest shall not substitute any employee designated to receive Top Secret Information with another employee, unless such designated employee's employment with NatWest has been terminated and such person is no longer able to serve the intended role. None of such employees shall receive a disclosure of any such Top Secret Information until: (i) such employee executes an InterTrust Top Secrecy Agreement (in the form set forth in this Exhibit G or as subsequently provided by InterTrust in writing) covering such information and exposure; and (ii) an original executed copy of such agreement is received by InterTrust, with return receipt provided to NatWest, which such receipt may be provided by fax communication if so requested in writing. Notwithstanding the foregoing, NatWest and NatWest employees described above shall make no physical embodiments (for example, any reproduction or copy, including descriptive notes) whatsoever of Top Secret Information, without the prior express written authorization of an InterTrust Designated Officer, nor shall NatWest or such NatWest employees disclose any Top Secret Information to any Person, except as described in this Section 1 of this Exhibit G. If NatWest becomes aware that any Top Secret Information has been disclosed or treated other than as set forth in this Section 1 of this Exhibit G, and/or as specified in a Top Secrecy Agreement, NatWest shall immediately inform InterTrust of such occurrence and take immediate steps to correct such compromise. NatWest shall maintain a log of the employees accessing and location of all originals and other tangible embodiments of all Top Secret Information. NatWest shall be fully responsible for any breach by any NatWest employee of this Agreement related to the unauthorized use or disclosure of Top Secret Information. 2. NatWest Information. To the extent that InterTrust receives NatWest ------------------- confidential information that is either marked "Confidential" when disclosed in written form or indicated as "Confidential" when disclosed orally ("NatWest ------- Confidential Information"), under this Agreement, InterTrust shall hold such - ------------------------ NatWest Confidential Information in confidence in a manner that is sufficiently secure for the character and content of the information and under no circumstances shall such NatWest Confidential Information be held in a manner that is less secure than procedures used by InterTrust in connection with its comparably important information. Except as to the disclosure by NatWest of the Modified Technology or such disclosures inherent in the Certification Testing of NatWest Products and/or any associated services pursuant hereto, and only to the extent expressly specified by InterTrust Specifications, NatWest shall not disclose or otherwise provide or make available any NatWest Confidential Information which is directly related to InterTrust Technology and InterTrust's business activities, without first acquiring written approval from an InterTrust Designated Officer. InterTrust shall not use, disclose, provide or otherwise make available any NatWest Confidential Information it has received in any form to any person except an Agent of InterTrust. In a disclosure to Agents of InterTrust, access to NatWest Confidential Information shall be allowed only to Agents who have a reasonable need to know such confidential information and only to the extent necessary to enable InterTrust to use confidential information to exercise its rights and perform its obligations hereunder. InterTrust shall: (a) require its Agents having access to any portion of confidential information to strictly maintain its confidentiality; and (b) ensure that each such Agent shall have executed with InterTrust a written non-disclosure/non-use agreement to be provided by NatWest, and attached as part of this Exhibit G, or InterTrust's applicable form agreement which shall effectively and comparably bind such Agent to an agreement of the same scope as NatWest's form agreement, and which InterTrust form agreement shall be subject to NatWest's reasonable prior written approval. Upon such approval, the InterTrust form agreement shall replace the relevant portion of this Exhibit G. InterTrust agrees to notify NatWest promptly in writing of any unauthorized disclosure or other misuse or misappropriation of NatWest Confidential Information provided to InterTrust which may come to the attention of an InterTrust officer. InterTrust shall be fully responsible for any breach of InterTrust's obligations under this Agreement by any Agent to whom such NatWest Confidential Information has been disclosed. Any obligation of InterTrust to keep NatWest information in confidence shall expire thirty-six (36) months after CONFIDENTIAL disclosure of such information by NatWest to InterTrust. 3. Exceptions. Notwithstanding the provisions of Sections 1 and 2 above, the ---------- confidentiality restrictions herein shall not apply to information that the recipient thereof can demonstrate: (i) is or becomes generally known to the public through no breach of any of these obligations, as of the date such information becomes so known; (ii) is or shall have been independently developed by such recipient (as demonstrated by recipient's written records) by employees who had no access to such information; or (iii) is or shall have been rightfully received, with no obligation of confidentiality or non-use, by such recipient from any Person (other than as a result of another Person's breach of an obligation of confidentiality to the discloser of such information), as of the date such information is so received. In the case of Top Secret Information, however, the availability to NatWest of information that is, or is substantially equivalent to Top Secret Information based upon Section (i), (ii) and/or (iii) above shall not, in any manner, diminish NatWest's obligations with respect to the Top Secret Information provided by InterTrust to NatWest (and all copies or derivatives thereof), and NatWest shall be prohibited from further disclosing to third parties any such information in NatWest's possession based upon the foregoing subsection (i), (ii) and/or (iii). In the event any Party is required by law, regulation or order of a court or other authority of competent jurisdiction to disclose the other Party's Confidential Information, such Party shall notify such other Party as promptly as possible, and shall, upon such other Party's request, reasonably assist in challenging or restricting the scope of such required disclosure. Top Secret information may be disclosed only for in camera inspection, or otherwise upon the prior written approval of an - -- ------ InterTrust Designated Officer. In all events, a Party subject to such required disclosure shall disclose only such information that is strictly required pursuant thereto and no further information. 4. Return/Destruction. Each Party shall deliver to the other Party within ten ------------------ (10) days from the date of termination of this Agreement or as soon as is reasonably practicable thereafter (except as relates to Top Secret Information) (and provided that in no event shall such period exceed thirty (30) days) all copies of all materials protected as Confidential Information or Top Secret Information under this Agreement (the "Return Period"). Such returned ------------- information shall include all copies in the possession or under the control of such Party or their Agents; provided that with respect to non-tangible copies of -------- ---- such information, rather than returning such non-tangible copies the receiving Party may elect to fully and securely destroy such copies (e.g., in the case of ---- a computer file, permanently deleting such files) and provide the disclosing Party during the Return Period with an affidavit or declaration signed by an officer with knowledge of the facts certifying that all such non-tangible copies have been so destroyed. Return of Confidential Information shall be by commercially secure means as reasonably specified by the disclosing Party. Return of Top Secret Information shall be made, at InterTrust's option as specified by an InterTrust Designated Officer by written instruction to NatWest: (a) by physical and secure pickup at NatWest's offices by an InterTrust officer designated in writing by such InterTrust Designated Officer; or (b) as otherwise may be determined by InterTrust as commercially reasonable. Such delivery shall be during normal business hours and in each instance to the hands of an InterTrust officer who receives a listing of the contents of such delivery certified by an officer of NatWest and audited and countersigned by such InterTrust officer. Within one (1) month after the termination of this Agreement in the case of Top Secret Information and two (2) months after the termination of this Agreement in the case of Confidential Information, each Party will certify in writing to the other Party (as applicable hereunder) that, to the best of its knowledge, all such materials and tangible embodiments have been delivered to the other Party. CONFIDENTIAL TOP SECRECY AGREEMENT --------------------- FOR CERTAIN INTERTRUST INFORMATION ---------------------------------- THIS AGREEMENT (this "Agreement") is made effective as of --------- ____________________ between INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware corporation, having a place of business at 460 ---------- Oakmead Parkway, Sunnyvale, California 90486, and ___________________________________("Recipient"), an individual citizen of --------- _______________, residing at __________, and an employee of National Westminster Bank Plc ("NatWest"), a United Kingdom corporation with offices at 41 Lothbury, ------- London, England. The parties agree as follows: 1 Purpose. ------- (a) Pursuant to a Technology Development, Marketing and License Agreement dated August 18, 1998 between InterTrust and NatWest (the "License Agreement"), ----------------- InterTrust may disclose to NatWest certain information including load module related, encryption related, document manager related and/or other information considered Top Secret and proprietary by InterTrust (hereinafter referred to as the "InterTrust Top Secret Information") and which shall conspicuously be marked --------------------------------- with a notice or legend with the phrase "Top Secret", as provided in the License Agreement. In consideration for said information being provided to Recipient, Recipient agrees to be bound by the terms of this Agreement. (b) InterTrust wishes to protect the InterTrust Top Secret Information from unauthorized use and disclosure. Disclosure of InterTrust Top Secret Information to Recipient, and use and disclosure of Top Secret Information received by Recipient shall occur only in accordance with the terms and conditions of this Agreement. 2 Non-Disclosure and Restrictions on Use of InterTrust Extremely -------------------------------------------------------------- Confidential. - ------------ (a) Except as otherwise provided in an express written agreement signed by InterTrust's Chairman, or other such person designated in writing by the Chairman (a "Designated InterTrust Officer"), Recipient agrees that he or she ----------------------------- shall: (i) hold in strictest confidence and not disclose any InterTrust Top Secret Information to any person or entity either within or outside NatWest, except to another NatWest employee who has also signed a Top Secrecy Agreement and is authorized to receive Top Secret Information pursuant to the Licensed Agreement, or as expressly permitted in writing by a Designated InterTrust Officer; (ii) use InterTrust Top Secret Information solely for purposes authorized by the License Agreement: (iii) use said Top Secret Information in no other way whatsoever; (iv) apply the strictest feasible measures to protect the secrecy of, and prevent unauthorized disclosure or use of, InterTrust Top Secret information (which such measures shall not be less stringent than NatWest uses to protect its own most highly sensitive and secret information); and (v) produce no physical embodiments of any portion of the Top Secret Information without the express written authorization of a Designated InterTrust Officer. Recipient agrees to notify InterTrust promptly in writing of any unauthorized disclosure or other misuse or misappropriation of the InterTrust Top Secret Information which may come to Recipient's attention. (b) Notwithstanding the foregoing, Recipient shall be entitled to disclose Top Secret Information pursuant to a court order issued by a court of competent jurisdiction or as otherwise required by law; provided that Recipient -------- ---- shall provide prompt advance notice thereof to InterTrust to CONFIDENTIAL enable InterTrust to seek a protective order or otherwise prevent such disclosure, shall disclose no more than the minimum information required by such court order or by law, and in all events any such disclosure shall be in camera -- ------ only. 3 Return of Materials. Upon request of a Designated InterTrust Officer, ------------------- Recipient shall immediately return to InterTrust by secure delivery means all tangible embodiments of InterTrust Top Secret Information in Recipient's possession or otherwise under Recipient's control. 4 Equitable Remedies. Recipient agrees that unauthorized disclosure or use of ------------------ InterTrust Top Secret Information will cause InterTrust substantial and irreparable damage. Recipient further agrees that it may be impossible or inadequate to measure and calculate InterTrust's damages from any breach of the covenants set forth in Sections 2 and/or 3 hereof. Accordingly, Recipient agrees that if he or she breaches or threatens breach of any of such sections, InterTrust will have available, in addition to any other right or remedy available, the right to obtain an injunction against him or her, from a court of competent jurisdiction restraining such breach or threatened breach and to specific performance of any such provision of this Agreement, and Recipient hereby consents to the issuance of such injunction and to the ordering of specific performance under such circumstances. 5 Governing Law: Jurisdiction and Venue. This Agreement shall be governed by ------------------------------------- and construed under the laws of the United States of America and the Commonwealth of Virginia, without reference to conflict of law principles. All disputes arising out of or relating to the subject matter of this Agreement shall be subject to the exclusive jurisdiction and venue of the United States District Court for the Eastern District of Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie in such court, the Commonwealth courts in Alexandria, Virginia. The parties consent to the personal and exclusive jurisdiction and venue of such court and waive any argument that jurisdiction or venue in such court is improper or inconvenient. 6 Severability; Export Compliance. If any provision or portion thereof in ------------------------------- this Agreement shall be found or be held to be illegal, invalid or unenforceable in any jurisdiction in which this Agreement is being performed, then this Agreement shall nevertheless be given full force and effect without said provision or portion. Recipient certifies that no Top Secret Information, or any portion thereof, will be exported to any country in violation of U.S. export regulations or other regulations applicable to Recipient and such information. 7 Entire Agreement. This Agreement constitutes the entire agreement between ---------------- Recipient and InterTrust regarding the InterTrust Top Secret Information disclosed hereunder and supersedes all oral or written agreements, either entered prior to or contemporaneously with this Agreement, concerning the InterTrust Top Secret Information, except the provisions of the License Agreement, the provisions of which shall be deemed to be supplemented hereby as of the date first written above. This Agreement may not be modified except by written agreement dated subsequent to the date of this Agreement and signed by both parties. 8 Successors. Subject to the limitations set forth in this Agreement, this ---------- Agreement will inure to the benefit of and be binding upon the parties, their successors and assigns. 9 Notices. For all purposes hereof, any notice pursuant hereto shall be ------- deemed given upon receipt by the Party at the address indicated above. IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first above CONFIDENTIAL written. INTERTRUST TECHNOLOGIES CORPORATION EMPLOYEE -------- By:________________________ By:______________________ Name: ____________________ Name: National Westminster Bank Plc Title: ___________________ Title:_______________________ CONFIDENTIAL NON-DISCLOSURE AGREEMENT ------------------------ FOR INTERTRUST CONFIDENTIAL INFORMATION --------------------------------------- THIS AGREEMENT (this "Agreement") is made effective as of ______________ --------- between INTERTRUST TECHNOLOGIES CORPORATION ("InterTrust"), a Delaware ---------- corporation, having a place of business at 460 Oakmead Parkway, Sunnyvale, California 90486, and ___________("Recipient"), an individual citizen of --------- __________________________, residing at ___________________________________________________________, and an employee of National Westminster Bank Plc ("NatWest"), a United Kingdom corporation with ------- offices at 41 Lothbury, London, England. The parties agree as follows: 1. Pursuant to a Technology Development, Marketing and License Agreement dated August 18, 1998 between InterTrust and NatWest (the "License Agreement"), ----------------- InterTrust may disclose to NatWest certain confidential information including technical information embodied in and/or associated with InterTrust's InterTrust Technology including, without limitation, software products and/or other developments related to distributed, secure rights and/or event management, associated designs, inventions, plans, and other information (the "Confidential ------------ Information"), all of which such information shall conspicuously be marked with - ----------- a notice or legend with the phrase "Confidential", as provided in the License Agreement. In consideration for such Confidential Information being provided to Recipient, Recipient agrees to be bound by the terms of this Agreement. Disclosure of InterTrust Confidential Information to Recipient, and use and disclosure of Confidential Information received by Recipient, shall occur only in accordance with the terms and conditions of this Agreement. 2. For a period of three (3) years following the disclosure of any Confidential Information (such period to extend in perpetuity with respect to InterTrust Technology), Recipient will retain such Confidential Information in confidence, and will discuss such Confidential Information only with other NatWest employees, other individuals who are under the direct control of NatWest and work full time on NatWest premises (an "Individual Consultant"), -- all of whom --------------------- shall have a need to know said Confidential Information and who have executed a copy of this Agreement. Recipient shall not, without the prior written permission of InterTrust's Chairman or such other InterTrust Officer as who has been designated in writing by InterTrust's Chairman (a "Designated InterTrust --------------------- Officer"), disclose Confidential Information to any person other than as set - ------- forth immediately above. Furthermore, without express written authorization of a NatWest officer who is empowered by NatWest to provide such an authorization, the Recipient will not make copies, in whole or in part, of the Confidential Information, including translating, in whole or in part, the Confidential Information into another language and/or shipping the Confidential Information, in whole or in part, or any direct product thereof, to any other country. The undersigned will not use the Confidential Information in any manner that is not authorized by NatWest and in accordance with the License Agreement and the undersigned will use the Confidential Information solely in the exercise of NatWest's rights as provided by the License Agreement. Under no circumstances will any information subject to the export or import laws of any jurisdiction be transferred pursuant to their agreement without proper prior certification and notification of appropriate regulatory offices in applicable jurisdictions and InterTrust. 3. The undersigned will not use Confidential Information except in fulfillment of the undersigned employee's and/or other individual's obligations with NatWest, and for no other purposes whatsoever. The undersigned understands and acknowledges that the unauthorized use of Confidential Information may cause InterTrust very substantial damage, for which damages may be impossible to measure or inadequate to compensate. Accordingly, Recipient agrees that if he or she breaches or threatens breach of any of such sections, InterTrust will have available, in addition to any other right or remedy available, the right to obtain an injunction against him or her, from a court of competent jurisdiction restraining such breach or threatened CONFIDENTIAL breach and to specific performance of any such provision of this Agreement, and Recipient hereby consents to the issuance of such injunction and to the ordering of specific performance under such circumstances. 4. The undersigned will return all physical embodiments of Confidential Information in the undersigned's possession to InterTrust promptly upon request by InterTrust, and in no event later than fifteen (15) days thereafter. 5. Notwithstanding any thing else in this Agreement, the confidentiality restrictions of this Agreement shall not apply to information that: (i) is or becomes known to the public through no breach of any of the undersigned's obligations under this Agreement, or NatWest's or any other NatWest employee's, obligations of confidentiality to NatWest and/or to InterTrust; (ii) was known to Recipient prior to its disclosure by InterTrust, as evidenced through written documentation; (iii) shall have been independently developed by the Recipient without any reliance on or use of any InterTrust Confidential Information, as demonstrated through written documentation; or (iv) shall have been rightfully supplied to Recipient, with no obligation of confidentiality or non-use from a third party without any breach of any obligation of confidentiality to InterTrust or NatWest (as applicable) as of the date such information is so supplied. In addition, the Recipient shall be entitled to disclose Confidential Information pursuant to a court order issued by a court of competent jurisdiction or as otherwise required by law; provided that the undersigned -------- ---- shall provide prompt advance notice thereof to InterTrust to enable InterTrust to seek a protective order or otherwise prevent such disclosure and shall disclose no more than the minimum information required by such court order or by law. 6. If any provision or portion thereof in this Agreement shall be found or be held by a court of competent jurisdiction to be illegal, invalid or unenforceable in any jurisdiction in which this Agreement is being performed, then this Agreement shall nevertheless be given full force and effect without said provision or portion. This Agreement may not be modified except by written agreement dated subsequent to the date of this Agreement and signed by both parties. This agreement shall be governed by and construed under the laws of the United States of America and the Commonwealth of Virginia, USA, without reference to conflicts of laws principles. All disputes arising out of or relating to the subject matter of this Agreement shall be subject to the exclusive jurisdiction and venue of the United States District Court for the Eastern District of Virginia, Alexandria Division Virginia, or if jurisdiction does not properly lie in such court, the Commonwealth courts in Alexandria, Virginia. The parties consent to the personal and exclusive jurisdiction and venue of such court and waive any argument that jurisdiction or venue in such court is improper or inconvenient. IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first above written. InterTrust Technologies Corporation Employee By: _____________________ By:_________________________ Title:___________________ Title:______________________ CONFIDENTIAL EXHIBIT H TO THE TECHNOLOGY DEVELOPMENT, MARKETING AND LICENSE AGREEMENT The following are procedures and policies that InterTrust employees are instructed to routinely follow to avoid or minimize potential infection of any software virus: In addition, such checking is incorporated in QA testing before any software release. . Software code is routinely checked with commercially available third party virus software for existence of any viruses. . InterTrust currently has a site license to virus checking software by Network Associates. . InterTrust regularly receives from Network Associates updates designed to detect the latest known software viruses. . InterTrust's policy and practice is to keep source code under strict source control, using Clear Case software. . Employees are prohibited, under InterTrust's policies, from downloading or incorporating any software from any third party (including through the Internet) without first obtaining prior approval from an authorized technical manager whose responsibility is to test such software for viruses before any use by InterTrust employees. . InterTrust regularly educates new and existing employees regarding these procedures and policies. -----END PRIVACY-ENHANCED MESSAGE-----