Novell Covenant to Microsoft Downstream Recipients Regarding Silverlight
Novell, Inc., on behalf of itself and its Subsidiaries ("Novell"), hereby covenants not to sue Downstream Recipients of Microsoft Corporation and its Subsidiaries ("Microsoft") for infringement under Necessary Claims of Novell on account of the Downstream Recipients' use of Silverlight Implementations to the extent originally provided by Microsoft Corporation during the Term and, if applicable, the Extension or Post-Extension Period, but only to the extent the Silverlight Implementations are used to provide Plug-In Functionality.
The foregoing covenants will survive termination of the Agreement, but only as to specific copies of the Silverlight Implementations distributed during the Term, and if applicable, the Extension [see Note 1] or Post-Extension Period [see Note 2].
Novell reserves the right to update (including discontinue) the foregoing covenant pursuant to the Agreement; however, the foregoing covenant will continue as to specific copies of Silverlight Implementations distributed by Microsoft Corporation before any such update.
All rights not expressly granted by the foregoing covenant are reserved by Novell, Inc. No additional rights (including any implied licenses, covenants, releases, or other rights) are granted by implication, estoppel, or otherwise, including no rights under any additional patents of Novell, Inc. and no rights to any technology not included in the Silverlight Implementations, even if additional related or enabling technologies (e.g., operating systems, web browsers, or other platform technologies) are required to use the Silverlight Implementations.
NOTES
1. As to specific copies of the Silverlight Implementations distributed during the Extension, the foregoing covenants will survive termination of the Agreement, but only if the specific copies comprise, or are distributed with or in support of, (i) a version of a Microsoft Corporation product made generally available on or before the Termination Date, or (ii) a successor version of such product that is not a New Version of such product first made generally available after the Termination Date.
2. As to specific copies of the Silverlight Implementations distributed for Revenue during the Post-Extension Period, the foregoing covenants will survive termination of the Agreement, but only if the specific copies comprise, or are distributed with or in support of, a Microsoft Corporation product that becomes an End of Life Product, and only as to Microsoft Corporation customers that received other copies of such product for Revenue before the Post-Extension Period.
DEFINITIONS
"Subsidiary" means any entity (a) more than fifty percent (50%) of whose outstanding shares or securities representing the right to vote for the election of directors or other managing authority are, now or hereafter, owned or controlled, directly or indirectly, by Novell, Inc. or Microsoft Corporation, as the case may be, but the entity will be considered a Subsidiary only so long as such ownership or control exists; or (b) which does not have outstanding shares or securities, as may be the case in a partnership, joint venture, or unincorporated association, but more than fifty percent (50%) of whose ownership interest representing the right to make the decisions for the entity is, now or hereafter, owned or controlled, directly or indirectly, by Novell, Inc. or Microsoft Corporation, as the case may be, but the entity will be considered a Subsidiary only so long as such ownership or control exists.
"Downstream Recipient" means an entity or individual that uses for its intended purpose a Silverlight Implementation obtained directly from Microsoft Corporation or through an Intermediate Recipient. An entity or individual is not a Downstream Recipient when the entity or individual resells, licenses, supplies, distributes, or otherwise makes available to third parties the Silverlight Implementation. For avoidance of doubt, an entity or individual cannot qualify both as a Downstream Recipient and an Intermediate Recipient for use of the same copy of a Silverlight Implementation. "Intermediate Recipient" means a reseller, recipient, or distributor to the extent authorized (directly or indirectly) by Microsoft to resell, license, supply, distribute or otherwise make available Silverlight Implementations (whether the resale, licensing, supplying, making available, or distribution is on a stand-alone basis, or on an OEM basis as bundled with hardware or other software of the reseller or distributor, or otherwise, so long as it is not bundled with a Linux operating system other than Novell-branded operating system software), except for a reseller, recipient, or distributor in the business of offering its own branded operating system software.
"Silverlight Implementation" means Microsoft Corporation's implementation of the Silverlight Specification.
"Silverlight Specification" means a specification relevant to developing Moonlight 1.0 or Moonlight 1.1 (as the case may be) to be compatible with Silverlight 1.0 or Silverlight 1.1, respectively, and any updates thereto identified as such and delivered to Novell, Inc. pursuant to the Agreement.
"Moonlight 1.0" means only those portions of any web browser software plug-in developed by or on behalf of Novell, Inc. for receiving and rendering, in the web browser, media and interactive web-based applications (including only the infrastructure and source code libraries that are necessary to enable the foregoing portions of the web browser software plug-in) which (a) when used with Media Pack 1.0, comply with and implement the Silverlight Specification for Silverlight 1.0 and pass 90% (or such lesser amount as Novell, Inc. and Microsoft Corporation mutually agree) of the Moonlight 1.0 Test Suite; and (b) are solely for use on a Personal Computer running a Covered Operating System. Notwithstanding the above, Moonlight 1.0 does not include any codec or DRM functionality or the functionality of Media Pack 1.0 or Media Pack 1.1, or any application platform interfaces (APIs) other than those implemented and exposed by Silverlight 1.0 for use with other applications. "Moonlight 1.0 Test Suite" means a suite of tests and corresponding test code to be provided by Microsoft Corporation to Novell, Inc. under the Agreement for testing the functionality of Novell, Inc.'s Moonlight 1.0 candidates, including all updates thereto provided by Microsoft Corporation during the Term pursuant to the Agreement.
"Media Pack 1.0" means two modified Object Code versions of the Silverlight 1.0 audio and video decoders that support x86 and x64 microprocessor architectures, respectively, on a Personal Computer, where each version (a) interoperates with Moonlight 1.0, (b) supports the A/V Compression Formats, and (c) bears a Microsoft brand.
"Object Code" means machine-readable computer software code generated from Source Code by a compiler, interpreter, assembler, or similar technology. "Source Code" means computer software program instructions that must be translated by a compiler, interpreter, or assembler into Object Code before execution, and any accompanying documentation.
"Silverlight 1.0" means the commercial release version of Microsoft Silverlight 1.0.
"Personal Computer" means a general purpose computer (including a laptop, tablet PC, desktop or ultra mobile personal computer) that is (i) designed and marketed for operating a wide variety of productivity, entertainment and/or other software applications from unrelated third parties; and (ii) runs a general purpose consumer operating system (such as Microsoft Windows XP or Microsoft Windows Vista, Apple Macintosh OS X, SUSE Linux, etc.). Personal Computers do not include personal digital assistants (PDAs), Pocket PCs, or mobile telephones.
"A/V Compression Formats" means: (i) Windows Media Video 7-compatible (WMV1); (ii) Windows Media Video 8-compatible (WMV2); (iii) Windows Media Video 9 (WMV3); (iv) Windows Media Video Advanced Profile, non-VC-1 (WMVA); (v) Windows Media Video Advanced Profile, VC-1 (WMVC1); (vi) Windows Media Audio 7-compatible (WMA7); (vii) Windows Media Audio 8-compatible (WMA8); (viii) Windows Media Audio 9 (WMA9); and (ix) MP3, capable of rendering MP3 content with mono and stereo channel configurations, sampling frequencies of 8, 11.025, 12, 16, 22.05, 24, 32, 44.1, and 48 kHz, and a variable bit rate of 8-320 kbps.
"Term" means the period commencing on September 4, 2007 and continuing through Sept 1, 2011, unless terminated earlier under the Agreement.
"Agreement" means the Moonlight for Linux Collaboration Agreement between Novell, Inc. and Microsoft Corporation that was publicly announced on September 5, 2007.
"Covered Operating System" means any operating system software for Personal Computers other than current or future versions of Microsoft Windows and Apple Macintosh operating systems.
"Media Pack 1.1" means two modified Object Code versions of the Silverlight 1.1 audio and video decoders that support x86 and x64 microprocessor architectures, respectively, on a Personal Computer, where each version (a) interoperates with Moonlight 1.1, (b) supports the A/V Compression Formats, (c) supports such additional audio and video compression formats that Microsoft Corporation supports in Silverlight 1.1 if the additional formats may be ported and implemented by Microsoft Corporation in Media Pack 1.1 without (in Microsoft Corporation's good faith judgment) the incurrence of royalties or other more than de minimus additional liability or obligation by Microsoft Corporation in favor of any third party, and (d) bears a Microsoft brand.
"Silverlight 1.1" means the commercial release version of Microsoft Silverlight 1.1.
"Moonlight 1.1" means only those portions of any web browser software plug-in developed by or on behalf of Novell, Inc. for receiving and rendering, in the web browser, media and interactive web-based applications (including only the infrastructure and source code libraries that are necessary to enable the foregoing portions of the web browser software plug-in) which (a) when used with Media Pack 1.1, comply with and implement the Silverlight Specification for Silverlight 1.1 and pass 90% (or such lesser amount as Novell, Inc. and Microsoft Corporation mutually agree) of the Moonlight 1.1 Test Suite; and (b) are solely for use on a Personal Computer running a Covered Operating System. Notwithstanding the above, Moonlight 1.1 does not include any codec or DRM functionality or the functionality of Media Pack 1.0 or Media Pack 1.1, or any application platform interfaces (APIs) other than those implemented and exposed by Silverlight 1.1 for use with other applications. "Moonlight 1.1 Test Suite" means a suite of tests and corresponding test code to be provided by Microsoft Corporation to Novell, Inc. under the Agreement for testing the functionality of Novell, Inc.'s Moonlight 1.1 candidates, including all updates thereto provided by Microsoft Corporation during the Term pursuant to the Agreement.
"Necessary Claims" means claims of a patent or patent application that (i) Novell now or hereafter owns, controls, or otherwise has the right to license or covenant without the payment of any royalty or other amounts to any unaffiliated third party, and (ii) are necessarily infringed by an implementation of the Silverlight Specification. For purposes of the foregoing, a claim is "necessarily infringed" only when there is no commercially reasonable non-infringing alternative to the implementation that also implements the Silverlight Specification. "Necessary Claims" do not include any claims: (1) other than those set forth above, even if contained in the same patent or patent application as those set forth above; (2) covering any enabling technologies (e.g., operating systems, web browsers or other platform technologies) that may be necessary to make or use any implementation; or (3) covering the implementation of other published specifications that may be referenced in the Silverlight Specification.
"Extension" means the period commencing on the day after the Termination Date and ending on the second anniversary of the Termination Date.
"Termination Date" means the effective date of expiration or termination of the Agreement.
"Post-Extension Period" means the period commencing on the day after the end of the Extension and continuing thereafter.
"Plug-In Functionality" means the web browser plug-in functionality for receiving and rendering, in such web browser running on a Personal Computer, media and interactive web-based applications compatible with Silverlight 1.0 or Silverlight 1.1.
"New Version" means a new version or release of a product that is designated as a change to the left of the decimal point and/or in the tenths digit [(x).(x)x] of the version number. For example, version 5.2 or 6.0 of a product would be considered a New Version of the 5.1 version of the product, but version 5.1.1 of the product would not be considered a New Version of the 5.1 version of the product.
"Revenue" means any consideration to Microsoft Corporation that is reasonably attributable to the products it offers. "Revenue" includes without limitation consideration for any (i) sale or license of a product, or the sale or license of the services of a product, (ii) warranties, indemnification or updates for products, (iii) maintenance, upgrades, upgrade protection, service, premium service packages, subscription, consulting, installation, and support contracts for products, (iv) user or device access rights to products, and (v) hosting by Microsoft Corporation of products for the benefit of third parties.
"End of Life Product" means a product that (1) is made available by Microsoft Corporation for Revenue prior to the Termination Date, and (2) is designated publicly for End of Life Status prior to the end of the Extension. "End of Life Status" means that Microsoft Corporation has announced a date beyond which Microsoft Corporation will no longer market, generally sell, or promote the product so designated.