Total Access Software Distribution Agreement

EXHIBIT 10-42


TOTAL ACCESS SOFTWARE
DISTRIBUTION AGREEMENT


THIS DISTRIBUTION AGREEMENT is made as of the Effective Date set forth below among EarthLink Network, Inc., a Delaware corporation ("EarthLink") and the Distributor named below.


Agreement Data:


1. Distributor: United Internet Technologies


2. Effective Date:__________________________


3a. Notice information per Section 12:


(1) If intended for Distributor: (2) If intended for EarthLink:


United Internet Technologies EarthLink Network, Inc.
1990 Westwood Blvd. 3100 New York Drive
Penthouse Floor Pasadena, California 91107
Attn: Mr. Larry DeLeon Attn: Legal Department
Facsimile No.: (310) 474-7465 Facsimile No. (626) 398-5477


3b. [This section intentionally left blank.]


4. Applicable Exhibits (The referenced exhibits are a part of this
Agreement):


Initials
--------

/i/WSH | A. Definitions /i/WSH | B. EarthLink Brand and Marks
------ ---------------- ------ ---------------
EarthLink Distributor EarthLink Distributor


/i/WSH | C. Trademark Usage /i/WSH | D. Special Terms
------ ----------------- ------ ---------------
EarthLink Distributor Guidelines EarthLink Distributor


5. Total pages in this Agreement: _______________________________ (including
this cover page).


Signatures:


Distributor and EarthLink acknowledge that they have read and fully understand this Agreement and hereby agree to its terms. In witness whereof, the parties have executed this Agreement under seal.


EARTHLINK: DISTRIBUTOR:


/s/ William S. Heys - ------------------------------------------- ----------------------------------------- (Signature of Authorized Representative) (Signature of Authorized Representative)


- ------------------------------------------- ----------------------------------------- (Printed Name of Authorized Representative) (Print Name of Authorized Representative)


- ------------------------------------------- ----------------------------------------- (Title) (Title)


Date:______________________________________ Date:____________________________________


1


1. Definitions. Certain terms used in this Agreement have the meanings
----------- defined on the Definitions Exhibit hereto.


2. License Grant.
-------------


2.1 Non-Exclusive License. EarthLink hereby grants to Distributor a royalty
--------------------- free, non-exclusive and non-transferable license during the Term to market, sell and distribute the Licensed Material in the Territory (the "License"). If EarthLink delivers the Licensed Material to Distributor in the form of a Master CD-ROM or a Master Diskette (as indicated in the Special Terms Exhibit), the License shall include the right to reproduce the Licensed Material. If so indicated on the Special Terms Exhibit, the Licensed Material may be distributed only if bundled with the Distributor Product; otherwise, the Licensed Material may be distributed without being bundled with any Distributor Product.


2.2 Customization. EarthLink shall customize the Software to default to
------------- the URL set forth on the Special Terms Exhibit. If applicable, Distributor shall pay the Customization Fee in advance of receipt of the Licensed Material.


2.3 Prohibition On Other Sales Or License. Distributor shall distribute
------------------------------------- the Licensed Material only in accordance with the terms of this Agreement and only in the form of EarthLink Network TotalAccess and shall not independently distribute the various components of EarthLink Network TotalAccess or any component of the Licensed Material separately from all other components.


2.4 No Other Right. Distributor shall not, nor shall it permit others to:
-------------- reproduce or otherwise make copies of any portion of the Licensed Material (except as provided in Section 4.2) or modify, reverse engineer, disassemble, decompile, or otherwise determine or attempt to determine or have or attempt to obtain access to, the source code or internal design of the Software or to create any derivative works based upon the Software. Nothing in this Agreement shall be construed as granting Distributor any rights of any kind with respect to any portion of the Licensed Material except as expressly and unambiguously set forth in this Agreement. All rights, title and interest in and to, and ownership of, the Licensed Material shall remain at all times exclusively with EarthLink and EarthLink's third-party licensors.


3. Representations and Warranties.
------------------------------


3.1 EarthLink Authority. EarthLink represents and warrants to Distributor
------------------- that (i) EarthLink owns or has a valid license to all portions of the Licensed Material and to EarthLink Trademarks, (ii) EarthLink has the full power and authority to enter into this Agreement and grant the License, and (iii) EarthLink is a functional Internet access provider (the "Authority Warranty").


3.2 Access Warranty. Subject to the limitations set forth in this
--------------- Agreement and any other warranties contained herein, EarthLink warrants to Distributor that the Software when properly installed and used in conjunction with the EarthLink Sprint dial-up Internet access service will provide access to the Internet a substantial amount of time and will perform substantially in accordance with the Documentation (the "Access Warranty"). EARTHLINK MAKES NO WARRANTY THAT ALL ERRORS OR FAILURES IN THE SOFTWARE WILL BE CORRECTED, AND MAKES NO OTHER REPRESENTATION OR WARRANTY OF ANY KIND WITH RESPECT TO THE SOFTWARE (EXCEPT WITH RESPECT TO THE PROPRIETARY SOFTWARE AS SET FORTH IN SECTION 3.3 BELOW), WHETHER EXPRESS OR IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW. EARTHLINK EXPRESSLY DISCLAIMS ALL WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. EARTHLINK DOES NOT WARRANT THAT THE SOFTWARE IS ERROR-FREE OR THAT OPERATION OF THE SOFTWARE OR INTERNET ACCESS WILL BE SECURE, UNINTERRUPTED OR ERROR-FREE.


3.3 Non-infringement Warranty and Third Party Software Representation.
----------------------------------------------------------------- EarthLink warrants to Distributor that the Proprietary Software and related Documentation and EarthLink Trademarks do not infringe upon the patents, copyrights, trademarks or other intellectual property rights of any third party (the "Non-infringement Warranty"). EarthLink represents to Distributor that as of the Effective Date with respect to the Third Party Software and related Documentation, EarthLink has not received notice, either oral or written, that the Third Party Software and related Documentation infringes upon the patents, copyrights, trademarks or other intellectual property rights of any third party.


2


3.4 Defects Not Covered by Warranties. EARTHLINK SHALL HAVE NO OBLIGATION
--------------------------------- UNDER THE WARRANTY PROVISIONS SET FORTH IN THE ABOVE SECTIONS IN THE EVENT OF ANY OF THE FOLLOWING ACTIONS/INACTION BY DISTRIBUTOR OR END USERS: (A) DISTRIBUTOR INCORPORATES, ATTACHES OR OTHERWISE ENGAGES ANY ATTACHMENT, FEATURE, PROGRAM, OR DEVICE TO THE SOFTWARE OR ANY PART THEREOF OR MODIFIES THE SOFTWARE IN ANY WAY WHICH CAUSES THE SOFTWARE NOT TO CONFORM TO THE WARRANTY; OR (B) IF ANY NONCONFORMANCE IS CAUSED BY ACCIDENT; TRANSPORTATION; NEGLECT OR MISUSE; ALTERATION, MODIFICATION, OR ENHANCEMENT OF THE SOFTWARE BY DISTRIBUTOR; FAILURE TO PROVIDE A SUITABLE INSTALLATION ENVIRONMENT; USE OF SUPPLIES OR MATERIALS NOT MEETING SPECIFICATIONS; USE OF THE SOFTWARE FOR OTHER THAN THE SPECIFIED PURPOSE FOR WHICH THE SOFTWARE IS DESIGNED; USE OF THE SOFTWARE ON ANY SYSTEMS OTHER THAN THE SPECIFIED SOFTWARE PLATFORM FOR THE SOFTWARE; OR DISTRIBUTOR'S USE OF DEFECTIVE MEDIA OR DEFECTIVE REPLICATION OF THE SOFTWARE.


3.5 Prohibition on Extension of Warranties. Distributor shall not make or
-------------------------------------- pass on, or attempt to make or pass on, any representation or warranty on behalf of EarthLink to any third party other than as set forth in EarthLink's standard end user license agreement, in a form to be specified by EarthLink in its sole and absolute discretion, and which shall be included by Distributor together with the Software distributed by Distributor under this Agreement.


3.6 Remedy for Breach of Authorization Warranty. In the event of a breach
------------------------------------------- by EarthLink of the Authority Warranty, EarthLink shall take whatever action is reasonably necessary to acquire such authorization or licenses necessary to grant the License and perform its obligations hereunder. If such authority or licenses is or are not reasonably obtainable, this Agreement shall terminate.


3.7 Remedies for Breach of Non-infringement Warranty.
------------------------------------------------


3.7.1 Remedy for Breach of Non-Infringement Warranty for Proprietary Software.
----------------------------------------------------------------------- In the event the Proprietary Software fails to conform to the Non-infringement Warranty, EarthLink shall either: (i) obtain a valid license or other right, as applicable, for Distributor to distribute the Proprietary Software; or (ii) replace or modify the Proprietary Software, without affecting the material portions of its functionality, to make it non-infringing in which case that replacement software shall then be governed by the terms of this Agreement. Distributor shall have the right to terminate this Agreement pursuant to Section 10.2 in the event that: (a) EarthLink provides Distributor with written notice that neither Subsection (i) nor Subsection (ii) of the preceding sentence of this Sub-section is commercially reasonable in the discretion of EarthLink; or (b) Distributor provides EarthLink with written notice that Distributor believes that the replacement or modified Software is not of equal material functionality.


3.7.2 Remedy for Breach of Non-Infringement Warranty for EarthLink Trademarks.
----------------------------------------------------------------------- In the event any EarthLink Trademark fails to conform to the Non-infringement Warranty Distributor shall immediately upon notice from EarthLink cease use of such alleged infringing EarthLink Trademark. In such event, EarthLink, at its sole option, shall either obtain a valid license for Distributor to use such EarthLink Trademark or select an alternative non-infringing mark which is as similar as possible to the unavailable EarthLink Trademark, and that new mark shall then be governed by the terms of this Agreement as an EarthLink Trademark.


3.7.3 Indemnification for Third Party Infringement Claims. EarthLink
--------------------------------------------------- agrees to indemnify, and hold harmless, Distributor from and against all reasonable costs and expenses related to claims made by third parties against Distributor that the Proprietary Software or EarthLink Trademarks infringe the patents, copyrights, trademarks or service marks or other intellectual property rights of such third parties.


3.7.4 Limitation of Liability. NOTWITHSTANDING ANYTHING TO THE CONTRARY
----------------------- CONTAINED IN THIS AGREEMENT, AND EXCEPT FOR THE OBLIGATIONS SET FORTH IN SECTION 11, NEITHER PARTY SHALL, UNDER ANY CIRCUMSTANCES, BE LIABLE TO THE OTHER PARTY FOR CONSEQUENTIAL, INCIDENTAL OR SPECIAL DAMAGES, INCLUDING LOST PROFITS, EVEN IF SUCH PARTY HAS BEEN APPRISED OF THE LIKELIHOOD OF SUCH DAMAGES OCCURRING.


3


4. Delivery; Replication; Reorders.
-------------------------------


4.1 Delivery of Licensed Material. EarthLink shall deliver the Licensed
----------------------------- Material to Distributor in the format indicated on the Special Terms Exhibit. Shipment of the media containing the Licensed Material shall be made to Distributor to an address specified in writing by Distributor. Risk of loss shall pass to Distributor when EarthLink has placed the Licensed Material in the possession of the carrier. Shipping and freight costs and expenses shall be payable in accordance with the Special Terms Exhibit.


4.2 Replication; Order Quantities; Software Fees.
--------------------------------------------


4.2.1 Format - Master Disk. In the event that the Licensed Material is
-------------------- delivered from EarthLink to Distributor in the form of a master disk (whether a gold master CD-ROM, a master 3.5" diskette or otherwise) Distributor shall have the right to replicate the Licensed Material in such quantities as Distributor shall, in good faith, believe it can reasonably distribute. If Distributor outsources the replication process, then (i) within seven (7) days prior to each replication run of the Licensed Material, Distributor shall provide EarthLink with a copy of the purchase order submitted to the replicator, and (ii) within seven (7) days following each replication run, Distributor shall notify EarthLink in a writing signed by an authorized officer verifying the quantity of Licensed Material replicated and providing a copy of the invoice from the replicator for such run showing the quantity of Licensed Material replicated. If Distributor performs the replication process inhouse, Distributor will provide EarthLink with written notice signed by an authorized officer, verifying the quantity of Licensed material replicated. If the Licensed Material is to be distributed over an Internet site, Distributor shall notify EarthLink of the Internet address from where the Licensed Material may be downloaded.


4.2.2 Format - Individual Disks. In the event that the Licensed Material
------------------------- is delivered in the form of individual disks (whether on CD-ROM, 3.5" diskettes or otherwise) Distributor shall be delivered the Initial Quantity set forth on the Special Terms Exhibit and shall, thereafter, order such quantities of additional disks as Distributor and EarthLink may, in good faith, determine that Distributor can distribute with a reasonable probability of obtaining new Qualified Subscribers; provided, however, that EarthLink shall be under no obligation to distribute additional disks in quantities less than the Minimum Reorder Quantity set forth on the Special Terms Exhibit.


4.2.3 Software Fees. Distributor shall pay to EarthLink the Software Fees
------------- specified on the Special Terms Exhibit. Such Software Fees shall be due and payable to EarthLink within 30 days of receipt by Distributor of an invoice therefor. All past due amounts shall bear an interest rate of 1.5 % per month.


5. Quality Control.
---------------


5.1 Gold Master Samples. Distributor shall provide EarthLink with a gold
------------------- master containing the Software (and Distributor Product, if applicable), no less than ten (10) days prior to initial replication run.


5.2 Samples. Distributor shall provide EarthLink with the disks
------- containing the Software and five copies of all reproduced Documentation from: (i) each initial replication run of the Software and Documentation, and of any update, upgrade and/or new version of the Software provided to Distributor by EarthLink; and (ii) each initial replication run subsequent to any change in the replication facility and/or process utilized by Distributor.


5.3 Quality Problems. In the event EarthLink notifies Distributor of
---------------- quality problems with the replicated Licensed Materials which cause the Software not to operate properly or not consistent with the Documentation, Distributor shall immediately correct such problems in current and future replication runs. EarthLink may, in its sole discretion, require Distributor to remove from inventory and/or Distributor's distribution channel all faulty copies of the Licensed Material. Failure by Distributor to so correct any such identified problems shall constitute a material breach of this Agreement.


6. Marketing
---------


6.1 Promotion. Distributor shall use its best efforts to promote,
--------- advertise and market the Software and to promote the goodwill of EarthLink and the market reputation of EarthLink's products and services.


6.2 Publicity. Each party shall have the right to refer to the other
--------- party and its services and products in advertisements, press releases, news releases and general releases to professional and trade publications; provided,


4


however, that any such item shall be presented to such other party not less than ten (10) days prior to the intended publication date for approval by such other party, which approval shall not be unreasonably withheld or delayed, and which shall be deemed to be given if no written response is provided within said ten (10) day period.


6.3 Bookmarks. EarthLink may include bookmarks in the Software provided to
--------- Distributor in accordance with mutually agreed upon specifications; provided, however, that Distributor agrees that EarthLink may include a bookmark to EarthLink's home page which bookmark shall be the first bookmark if additional bookmarks are agreed upon. Distributor shall not alter any bookmarks included in the Software.


7. Trademarks, Trade Names and Other Designations. Distributor undertakes
----------------------------------------------- to faithfully reproduce all Marks as they may appear on or in respect of the Licensed Material. Distributor shall not use the Marks except as provided herein. All such use of the Marks shall be in accordance with the "EarthLink General Guidelines for Use of Marks." Distributor undertakes to reproduce faithfully all EarthLink Marks and proprietary notices, slogans, designs and distinct advertising as may appear on or in respect of the Licensed Material. Notwithstanding the foregoing, any such use or proposed use shall be presented to EarthLink for approval, in EarthLink's sole discretion, not less than ten (10) business days prior to the intended date of use, which approval shall be deemed given if no written response is provided to Distributor within said ten (10) business day period. Notwithstanding the authorization granted in this section, EarthLink and its third party licensors shall own all right, title and interest in and to the Marks. Other than as expressly and unambiguously provided in this Agreement, Distributor shall not have, under any circumstances whatsoever, any right to use the Marks. Solely for the purpose of enforcing their rights in and to their trademarks, service marks, slogans and logos, Sprint Corporation and Sprint Communications Company, beneficiaries to this Agreement.


8. Payment and Reporting.
----------------------


8.1 Bounty Payments. If applicable, EarthLink will pay Distributor, at the
--------------- address indicated on the cover page, a bounty in the amount specified on the Special Terms Exhibit for each Qualified Subscriber (the "Bounty"). Within sixty (60) days after the end of each calendar month, EarthLink shall pay the Bounty for each Qualified Subscriber obtained in the previous month. EarthLink shall accompany each monthly payment with a report containing all information reasonably necessary to verify the accuracy of the payment for that month.


8.2 Registration Number. EarthLink will assign unique registration numbers
------------------- to the versions of the Software provided to Distributor. The Bounty will be calculated through the use of these unique registration numbers by tracking each Qualified Subscriber.


8.3 Maintenance of Recor ...