Digital Envoy Inc., v. Google Inc.,

Filing 91

Attachment 2
Declaration of Timothy H. Kratz in Support of 89 Memorandum in Opposition, To Google's Motion for Partial Summary Judgment on Counts II, III, IV and V of the Amended Complaint filed byDigital Envoy,Inc.,, Digital Envoy,Inc.,. (Attachments: # 1 Exhibit A - E Subject to Protective Order# 2 Exhibit F# 3 Exhibit G-H subject to protective order# 4 Exhibit I# 5 Exhibit J-P subject to protective order# 6 Exhibit Q# 7 Exhibit R subject to protective order)(Related document(s)89) (Blackman, Brian) (Filed on 2/23/2005)

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Case 5:04-cv-01497-RS Document 91-3 Filed 02/23/2005 Page 1 of 16 EXHIBI T F F A Case 5:04-cv-01497-RS NOV-30-2000 THU 04 :52 111 Document 91-3 Filed 02/23/2005 AX NO Page 2 of 16 P . 02 C,O/ P Avde A .",. .,lAamf- %,,), 4J .F'c c . , A«.y . s.. · E tv s y'fckJ tW e4l 5-V THIS PRODUCT AND ELECTRONIC DATABASE EVALUATION AND LICENSE AGREEMENT (this "Agreement"] is made and entered into as of the-2:.?' day of November, 2000, by and between Google, Inc. ("L icensee') and Digital Envoy inc . ("Licensor"): WITNESSETH: WHEREAS, Licensee is in the business of producing and maintaining information search technology (the "Business") ; and WHEREAS, Licensee desires to secure from Licensor the right to use Licensoe's Personum product (the "Product') and certain geographic/IP address databases (the "Database Libradesl for purposes of utilizing the Product and the Database Libraries in the Business (the "Ser 4ce") ; NOW, THEREFORE, the parties hereto, intending to be legally bound, hereby agree as follows: . Section t DATABASE LIBRARIES Licensor agrees to establish and maintain the Database Libraries in a form suitable for Licensee's use pursuant to this Agreement . It is agreed that the form suitable for Licensee's use shall be electronic with data stored in a server database licensed in conjunction W(tth the Product_ Section 2 LICENSOR SUPPORT AND LICENSEE RESPONSIBILITIE S 1)4el 173M VIOL g F Case 5:04-cv-01497-RS NOV-30-2000 THU 04 :52 Pri Document 91-3 Filed 02/23/2005 AX N4. Page 3 of 16 P . 03 Licensor agrees to provide electronic updates of the Database Libraries to Licensee, no less frequent than monthly. The updates shall have the most recent eograpIfrAP address data compiled by Licensor. It is understood that Licensor shall have no responsibility to maintain or support Licensee's content serving network The Database Libraries shall be treated as confidential and proprietary information of Licensor, and except as otherwise noted herein the receiving party shall not disclose such information . directly or indirectly, to any third party, without the consent of the disclosing party. Licensor shall provide Licensee with on-going 24/1 technical support . Licensee shall be responsible for supplying a server that meets the following specifications: a. Pentium III Xeon 550 MHz Linux server, dual processors preferred with a minimum of 512 Mb of RAM: b. Nigh speed Ethernet card or other network interface card that interfaces with Licensee's network ; c. Minimum of 10 gigabyte hard drive on a SCSI bus, RAI Ding optional ; d. Providing an Intemet mutable IP address for the server. Licensor shall be responsible for providing Licensee with information to configure its server to interface with Licensee's central servers and shalt provide Licensee With a C, Java or Pert API that encompasses functions that allow Licensee to interface to Licensee's database . The parties agree to establish commercially reasonabl e security measures with respect to such inter16c6 . Licensor shall not be responsibla for supporting Licensee's servers} or other hardware . Section 3 GRANT OF RIGHT S Licensor hereby grants Licensee the limit ed, worldwide right to use in its Business (and not distribute to any third party in whole or in part) the Product and the Database Libraries. Surer right shall be nonexclusive. Such rlghts Shall be strictly limited -to .-the right to : 66CA 17 1 2 76 Y001 F Case 5:04-cv-01497-RS IOV-30-2000 THU 04 :52 Pit Document 91-3 Filed 02/23/2005 AX NO. Page 4 of 16 P . 04 9 . Input, download, and store some or all of the Database Libraries in files and memory; and compile some or all of the Database Libraries at the Site . Licensee may also use the Database Libraries to develop indlces, services, or applications that are provided to third parties :{e .g., developing a Wuntr y-specific index of web pages). In no event, however, are the Database Libraries to be sold, licensed, distributed, shared or otherwise given (in any form) to any other party or used outside of the site set for th herein . 2 . Access and use the Database Libraries in the Business only at the Site. The "Site" shall be defined as GoogWs offices and data centers . Section 4 RESERVED RIGHT S Licensor reserves the right to use the Database Libraries for its own business purposes and reserves the right to distribute the Database Libraries to others in the course of its business as it sees fit . Nothing in this license shall in any way restrict Licensoes or its customers' use of its Database Libraries. S PAYMENT AND EVALUATION PERIOD 5.1 Licensee shall fray Licensor a monthly fee of three thousand dollars ($3,000) per month during the term of this Agreement for access to tacensoes geographic tailoring Product and the Database Libraries . Notwithstanding the foregoing, Licensor and Licensee acknowledge that it may take a brief period of time for Licensee to evaluate whether the Pro.dpct and the Database Libraries will be useful In Licensee's business . Hence, subject to the terms and conditions of this License, Licensee shall be permitted to use the Database Libraries and the Product for a period of fourteen (14) days, withou t Due# 27)220 V#OL F Case 5:04-cv-01497-RS NOV-30-2000 THU 04 .:53 Pr, Document 91-3 Filed 02/23/2005 AX NO. Page 5 of 16 P. 05 charge and may terminate this agreement during such fourteen (14) day period in the event that Licensee, in its reasonable discretion, determines that- the Database Libraries and Product are not useful for Licensee's business needs. 5 .2 Licensee shall pay to Licensor all amounts accruing with respect to charges biled in each calendar month within 30 days after the said payment Is due . There shall be applied to any amounts not paid by Licensee when due a delinquency charge of Eighteen Percent (18%) per annum prorated for partial periods of the unpaid principal balance thereof, commencing to accrue the calendar day after such due date . Section 6 NO OTHER PAYMENT, ETC . Except as expressly provided in this Agreement, neither party shall be entitled to any payment, cost reimbursement, or other compensation from the other party In respect of its performance, and each party shall bear all its own expenses insured in rendering performance . Section 7 PROPRIETARY PROTECTIO N 7 .1 As between the parties hereto, Licensor shall be the sole owner of the base Libraries, including any patents, copyrights or trade secrets associated with th e Database Libraries or the underlying applications. 7 .1a As between the parties hereto, Licensee shall be the sole owner of an y or products developed using the Database Libraries (but excluding the Database Libraries), Including any patents, copyrights or trade secrets associat such products . 7 .2 Licensee shall have no right to copy or reverse engineer the databas e 00ce 171274 Viol L Case 5:04-cv-01497-RS HOV-30-2000 THU 04 :53 PH F Document 91-3 Filed 02/23/2005 Page 6 of 16 P. 06 ibraries and/or the Product . Except as set forth in this Agreement, in no event shall Licensee distribute, disclose or otherwise make available the Database Libraries, or any information contained therein to any other party whatsoever or at any other site other than the Site, without the express written consent of Licensor, Licensee shalt hold all of Licensoes product information, including the results of any evaluation or testing thereof by Licensee in strict confidence and shall In no event share such infomnat'an with any third parties : 7 .3 Licensee shall cooperate with Licensor (at Licensoes expense) with regard-to any copyright registration of the Database Libraries, including updated versions thereof, that Licensor may choose to obtain. Both parties agree to cooperate with each other with aspect to any other action that may be necessary or appropriate for the protection of the Database Libraries under applicable intellectual property laws . 7.4 in the event that either party discovers an -instance of possible infringement of Licens&s rights In the Database Libraries, such party shalt promptly notify the other . The parties shall consult with one another with respect to the anion that may be appropriate to stop or remedy such infringement. 7 .8 If a third party claims that the exercise by Licensee of the rights granted herein, including the provision and use of the Product based on the Database Libraries in accordance with this Agreement . infringes any patent, copyright, trade secret, or other proprietary right of any third party, Licensor will defend Licensee against that dalm at Licensor's expense and Licensor will indemnify and hold harmless Licenses from and against any associated loss, liability, damage, or expense (including costs of Investigation, court costs, and reasonable attorneys fees) . Licensee agrees to cooperate with Licensor to determine the most cost-effective and practical means for responding to and disposing of any such matter . Section 8 WARRANTIES ; LIMITAT1flNS, DISCLAIME R Dolt 271220 viol M F Case 5:04-cv-01497-RS NOV-30-2000 THU 04 :53 Ph Document 91-3 Filed 02/23/2005 Page 7 of 16 P. 07 AX NO. Licensor warrants that the P roduct will materially conform with its written specifications during the term of this Agreement . It Is mutually acknowledged that data entry, communication and storage are subject to a possibility of human and ma"e errors, omissions, delays, and losses, indudIN Inadvertent loss of data or damage to media, which may ghre rise to loss or damage . Neither party hereto undertakes any liability to the, other for any such emvrs, omissions, delays, or losses. EXCEPT AS STATED ABOVE, LICENSOR MAKES AND LICENSEE RECEIVES NO WARRANTIES, EXPRESS, IMPLIED, STATUTORY, OR IN ANY OTHER PROVISION OF THIS AGREEMENT OR ANY OTHER COMMUNICATION, REGARDING THE PRODUCT, THE DATABASE LIBRARIES AND THE SERVICES, AND LICENSOR SPECIFICALLY DISCLAIMS ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. NEITHER PARTY UNDERTAKES OR ACCEPTS ANY LIABILITY WHATSOEVER TO THE OTHER FOR ERRORS, OMISSIONS, DELAYS, INTERRUPTIONS, OR LOSSES UNLESS CAUSED BY THEIR WILLFUL ISCONDUCT . EXCEPT FOR INDEMNIFICATION UNDER SECTION 7.5, IN NO EVENT SHALL EITHER PARTY'S DAMAGES IN ANY LAWSUIT OR OTHER ACTION BROUGHT UNDER THIS AGREEMENT EXCEED THE AMOUNTS PAID BY LICENSEE HEREUNDER . Section 9 TERM This Agreement shalt commence to be effective on the date first shown above and shalt remain in effect for an Initial term of six (6) months from the initial payment hereunder. The Agreement shall be renewable for a n a renewable for six (6) month term at th e discretion of Licensee. In addition, either party may terminate the Agreement in the event that the other party commits a material breach of this Agreement, provided #at the aggrieved party shall first notify the other party of the breach and give such other party at least ten (10) days to cure the breach. Section 10 FORCE MAJEURE 0MI 2,0121 W{ol S F Case 5:04-cv-01497-RS gilt-30-2000 THU 04 :54 Ph Document 91-3 Filed 02/23/2005 Page 8 of 16 AX NO. P. 08 Neither party shag be liable or be deemed to be In default for any delay or f ailure In performance or interruption resulting directly or indirectly from any cause or circumstance beyond its reasonable control, equipment or telecommunications failure . labor dispute,, or failure of any third party to perform any agreement that adversely affects such parly"s ability to perform Its obligations hereunder. . Section NOTICES All notices or other communications required to be given hereunder shall be In writing and delivered either personally or by ma il, courier. or similar reliable means of dispatch and addressed as provided In this Agreement or as o th erwise requested by the receiving party . Notices delivered personally shall be effective upon delive ry and notices delivered by any other means shag be effec live upon their receipt by the party to whom they are addressed . ection 12 GOVERNING LAW This Agreement shall be gove rn ed by and construed and enforced In accordan ce with the laws of the State of Califo rnia as it applies to a contract made and performed in such state, excluding -conflicts of laws principles . Any lawsuit regarding this Agreement shag be filed in the state or federal courts in Santa Clara County, California . Section 13 MODIFICATION AND WAIVER S This Agreement represents the entire. understanding of t#ae parties concerning its subject matter and may not be modified except by a writing signed by autivifted representatives of both parties . A waiver by either party of its rights hereunder shall not b e 000 271 :)2 . vuol. m F Case 5:04-cv-01497-RS NOV-30-2400 THU 04 :54 Ph Document 91-3 Filed 02/23/2005 AX NO. Page 9 of 16 P. 09 binding unless contained in a writing signed by an authorized representative of the party waiving . its rights . The nonenforcement or waiver of any provision of this Agreement on one occasion shall not constitute a waiver of such provision on any other occasion unless expressly so agreed in writing. It Is agreed that no use of trade or other regular practice or ethod of dealfng between the parties hereto shall be used to modify, interpret, supplement, or alter in any manner the terms of this Agreemen t Section 14 ASSIGNMENT Neither party shall be entitled to assign its rights and . obligations under this Agreement to any successor to the ownership, management, or operation of the facilities and services of such party relating to the subject of this Agreement . without the written approval of the other party. Section 1 5 NO IMPLIED RIGHTS OR OBLIGATION S Nothing in this Agreement is intended to create any implied 'r~ht to require, or any implied duty to provide, a level of effo rt or results {in general or In particulars not expressly stated herein, or to refrain from engaging in any other activity, in cluding any activity involving the same or similar products or services with the same or si m ilar customers or providers . During the - term of this Agreement, Licensor may in clude Licensee's name in a listing of Licensoe's customers. Before making any such listing available to the public, however, Licensor will submit the listing to Licensee to obtain written ap proval of Its content and intended use, which approval shall not be unreasonably withheld or delayed . Except for the foregoing, Licensor must first obtain Licensee's written consent before making any public use of Licensee's trade name, trademarks, service marks, logos, or other distinctive brand features, such public use Including but not being limited to press releases and other marketing efforts . Doc# 273128 V00t F V Page 10 of 16 Case 5:04-cv-01497-RS Document 91-3 Filed 02/23/2005 NOV-30-2000 THU 04 :54 Ph AX NO P. 10 IN WITNESS WHEREOF, the pa rties have executed this Ag reement on the day and year first above written. GOGGLE Autho rized Signature Name : -rite: z" Name: -r(de: h es IP Efo LZI,15- Doel 272728 Y161 p F Case 5:04-cv-01497-RS DEC-21-2000 THU 11 :01 All Document 91-3 Filed 02/23/2005 AX K Page 11 of 16 P. . 02 vaIgi a 1' " envo y .THIS FIRST AMENDMENT TO THE PRODUCT AND ELECTRONIC DATABASE EVALUATION AND LICENSE AGREEMENT (this "Agreement"} Is made and entered into as of the ZL day of Decern1w, 2000, by and between Google, inc. r1kenseel and Digital Envoy Inc . ("Licensor"} : 1. The second paragraph under "WITNESSETW shall be amended to read as follows : "VYHEREAS . Licensee desires to secure from Licensor the right to use t_Icensoes Personum product (the "Product`] and certain geographicilP address databases that provide information at a m etropolitan area level (the "Database L bmries") for u,wspS of ,,timing the Product and the Database Libraries in the Business (the 11service«) ; . 2. The first sentence of Section 5.1 of the Agreement shaft be amended to read as follows : "Licensee shall pay Ucensor a monthly fee of Four thousand Five Hundred dollars ($41 5w) per month du&V the te" of tipla Agreement for access to Licensoes, geographic tailoring P roduct and Database Libraries" The remainder of the Agreement shall continue in full farce and effect . r 'NF G Case 5:04-cv-01497-RS M-21-2000 THU 11 :01 An Document 91-3 Filed 02/23/2005 AX tii). Page 12 of 16 P. 03 IN WITNESS WHEREOF, the parties have executed this Agreement the day and year first above written . DIGITAL ENVOYJNC . OGGLE, INC. Authorized Signature Authorized Signature arne:-S&A S'r !,»!s~ Ildle: Name: Tito: f 2 a T r Case 5:04-cv-01497-RS JuL-1 t-e-uvi lut u3 :ts rn Document 91-3 Filed 02/23/2005 iix NU. Page 13 of 16 r. uG W uvtivva 07/1711001 TUB 11 :21 FAI GOGGLE INC . WS SECOND AMENDMENT TO THE PRODUCT AND ELECTRONIC DATAaASE EVALUATION AND UCENSE AGREEMENT (this Wreemenr) Is e made and entered into as of the jam, day of July . 2081 . by and between GwW . Ina, ("Licensee"} and LDigital Envoy Inc . (11censor" ). Se ction 9 of the Agreement shall be amended to read as f ollows; This Agre ernont shall commence to be effective on the date first shown bove and shall remain In effect for an initial term of eid Been (18) months from the Initial payment hereunder. The: Agraerrmer °be ra(i Tat3te!fot a-n additional si x { } ttmcmtft :fat~m atxttme ef{sere#iotmYtmf L set ee . In addition, either party may terminate the Agreement in the event that the other party commits a material bread of this Agreement, PmAde d tl'iat M- ag yi;e ra' rarl : . shall &-st no* " o tw party, of the breach and give such other part y/ at least ten (10) days to cure the breach . . The remainder of the Agreement shall continue in full for ce and effect as amended by the First Amendment to the Agreement previously exedAod by the parties and this second Amendment P Case 5:04-cv-01497-RS JUL-11-2001 lUE 03 .24 I'll 07/11/ 2001 'ru£ 11 :22 Fa Document 91-3 Filed 02/23/2005 FAX NO. Page 14 of 16 . 03 GOWGLE INC . IN WITNESS WHEREOF, the patties have executed this Agreement the day and year rust above written . !GOOGLF, INC. Authorized Signature I Name: ~ t~Gt~tG Title: t~ a `3 l b W A ( D A F k w P Case 5:04-cv-01497-RS JAN-14-2003 TUE 04 :53 PM 0~/it / 2803 TUR 13 :34 PAX Document 91-3 1 G [ TAL ENVOY Filed 02/23/2005 AX No. 67b _ .,8 6363 Page 15 of 16 . M3 uoztvua TtgS HATMATION AGREE ANT (d&'Agraor WI k made and erttemd W to Of ft LQ- day of ,brhtrary. 2003 (to -fteetfve DWI by " ttetwttrt Goo& Tecfirr)doyy W . (1x t s"j auto MaM Envoy inc. eLie wsoeg gactog+round ! . tJcatlsor artd t.fcensae etttared. trip 'n Pratod and EfecUwk tlatatb"Q Evahrafttart Ari d tloettsra 4 am W (ttt0 * fi">W7 Wed No"mbet O% "W, pwsuatrt b whkh UCarteee SM46d front Ltcertwihs 606 fn tea ceAatn Products and Datattase MmeAe each tot deCmod In #W NOW Apn:emu t} Liowmw and Lirsnw unwWW ft t}c qkW AparmA Wkh a FW Atnettd nw t to tia Ptnduct end E7rxttortia Odabase E m6dim and Lbwft Awtemcnt dated Deounber 21,2M wA a SacwW Amendment to the Product and Elowartic De bwm-Evalm4on and t~C M AVwnertt dm%d zloty 17,2M (coaao Waty vAh the Odebset Agrrsmerht, ttht; `AOroomartt'~. 2. The AUractcttord axpked as of November 30, 2002. 'fhe peones r4W desire to mkretab fits grecma rd and the AW* n w t .sttaft now .t>Orttve to fond as If fho .ame had rtd atgt *4 prr Med. however. th at Ow pubes desire io amend the AprWtt A *ft reaped to certain txrtrts. as set Earth below. - The 3tartias as:l·!hMKO ttat Ut?s O" has COM OM!d 14 UW 0* 10MOM aitd OVS 04WXM i.brariet afOtrt the offo W! Oprolim of the Awownent and " that Licww" PWd to ris r as flit oormsidetaft to( wch oott *%M mat a Suit iit to tsms t d (Si4,W la fJecemtter 2O(?2. 1'tae pis turttr~r aclatawt«igy arhd a~ 11101 Mich is Y iJcodsea 4f tt» PmdtK1 and thin t7 ~rtsisaee t 1 movies afar die a fed w atcpfratiort d "tfia. Agreomort drat e govemed by and vA4W to the Wt" and aw4jtorts of the AgmerrAm and ticenew hsreby +walvae a?I chkns that arty new or hemaftar be bmuglt .agafrhst t3w*" in vortttasxion w ith such cor6med uno of 1tiG Product and thv Da tmb#" L brari" after the CffedMe C*mtian d Ihs Agroonwrtt. Ttrt" 1. Thg W serw,4& d Sect vn 3.1 of tha Agre+errierit shJ hm5by be arrtencfed to r4to Qt'k4owr. 'Fran JwAwy 200(3 ftwo ttts nwnWndor d th4 tam of ft Agrvww t (kdtpd sV arty atdanebnc ' fwwt~ t.icertsw sttal pay Lkftvw a tztt ddy foe of digit thoO WW dttthtra (MOM) per r>' O(A daring the " of 0* Agmertterd &x ttcceee to lJr,e mes gaagmphie b mjefirt4 p rodder (with hdam bon provided down to tfw metr"tsn) grid cmwdloratyfte . iSP and domain data bases .' 2. The f+rat W aerd&w" of Smfim 0 of the Agmer wtt rhall be mplacW With tltt 11ua Agroertwt sW coma *Am io be effectw on the data AM ttttotrrn ebme art! shd rer ugn in ffect for an kt8faf term of tsvWour (24) morrMts VwrcWtar (Le . from November 30 2000 throcrgh November 29.2002} (ttw'Irtifiai Tomf). TtwmdW. if k Agreement shalt eaicxnalfecdy renew tar an term Ornorit*V on N&iombet 30.20M and snKag on Jwpjwy 31, 2005 (ttte 'f WGt7OGLE CONMENTtAL T h D - WP Case 5:04-cv-01497-RS Document 91-3 Filed 02/23/2005 Page 16 of 16 N-I4 -2003 RE 04 :54 PH 4il4J200 3 IGITAL ENVOY FAX HO. 878-268 8363' TUB 13 0 6 FAXx 003/00 3 . 03103 Fierw+ W Tam" MW cotes "ly vdh the lnJd8l TOM the 'Term. Lb6Mft h M_ dacre" Shat ave the apUM to Martd the Agreaned for an addSuW t ma (2) year Wm themafw (to 612xbrxied erml by pv"V wren notW to Llcenw no btor tm thitiy (30) days prior m the w0aksrt of the Term. Aljdtior *. Prior to dw agsiretbn of t w 1566 dad Temp Lkww*9, in is d xxatfon the ave the option to w W On Aam wnt kr an *mow Grlti t1) yew' tatm by pnVkll V wrllt o notice to Wonsan rid k4w thwt itMy (36) dap prior to die eorongon of the Exuded Tsrm.· 3. The rertwkWer of the AOrracratnt abet owlimm in full forve and rdfeet. Thb Agneemed maybe axecOod M wuderpwb . lndudlrtg fwsi~ twe"rparts . IN WITNESS WHMEOR the partiee have uwtAed this Agraenwe v %6 day and year fiat wroon.

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