Technology License

INTER-COMPANY CROSS LICENSE AGREEMENT



This Agreement is entered into as of this 19th day of May, 1998 by and between Internet Commerce Services Corporation, a Delaware corporation, with its principal place of business at 550 S. Winchester Boulevard, Suite 300, San Jose, CA 95128 (hereafter "ICS") and software.net Corporation, a California corporation previously known as CyberSource Corporation , with its principal place of business at 3031 Tisch Way, Suite 900, San Jose, CA 95128 (hereafter "software.net").





A. WHEREAS, the parties entered into that certain Conveyance Agreement dated December 31, 1997 (hereafter "Conveyance Agreement"), which among other things, conveyed, transferred and assigned from CyberSource Corporation to Internet Commerce Services Corporation all intellectual property and other assets of the "back office" aspects of the internet commerce services business of Cybe rSource Corporation; and



B. WHEREAS, in furtherance of the Conveyance Agreement, CyberSource has executed and recorded with the United States Patent & Trademark Office, that certain Assignment of Applications of Letters of Patent of the United Stat es dated March 26, 1998, and that certain Assignment of Marks dated March 26, 1998; and



C. WHEREAS, on or about April 22, 1998, CyberSource Corporation changed its name to software.net Corporation; and



D. WHEREAS, on or about April 23, 19 98, the parties entered into that certain Inter-Company Cross License Agreement (the "Original Cross-License Agreement") for the purposes of clarifying the ownership of such intellectual property which has not been specifically described in the foregoing assignments and to set forth the terms for the cross licensing of technology, data and information held by each party; and



E. WHEREAS, the parties now desire to amend the Original Cross License Agreement for the purposes of clarifying the terms of the Original Cross License Agreement.







In consideration of the mutual agreements herein contained and other good and valuable consideration, receipt and sufficiency of which is hereby acknowledged, the parties agree that the Original Cross Licens e Agreement shall be amended and restated as follows:



1. DEFINITIONS. The following definitions shall apply to this Agreement and each of the Schedules attached hereto.



1.1. "Internal use" (with or without capitalization) shall mean use only by IP Licensee's employees, agents or authorized representatives on computer systems controlled by IP Licensee.



1.2. "IP Owner" shall mean a party which is the owner of the particular technology or intellectual property as identified in Section 2 hereunder.









1.3. "IP Licensee" shall mean a party which is the licensee for a particular technology or intellectual property as identified in Section 3 hereunder.



1.4. "Licensed IP" shall mean the particular technology or intellectual property which is cross licensed under Section 3, herein.



2. OWNERSHIP OF INTELLECTUAL PROPERTY



2.1 software.net ackno wledges, agrees and affirms that, as between software.net and ICS, ICS is the sole and exclusive owner of the following, and that nothing else was transferred to ICS under the Conveyance Agreement except for the following:



2.1.1. Tha t SmartCert Technology as described in Schedule 2.1.1, attached hereto (hereafter "SmartCert"), including without limitation, any and all improvements, enhancements and modifications thereto created and developed by either or both parties on or before Dec ember 31, 1998;



2.1.2. Those certain inventions as described in the patent applications identified in Schedule 2.1.2, attached hereto ("Patents Pending");



2.1.3. Those certain "back office" technologies and systems as described in Schedule 2.1.3, attached hereto (hereafter "Backoffice Systems");



2.1.4. The rights to licenses of software and other intellectual property acquired from third parties in connection with ICS's internet commerce op erations as described in Schedule 2.1.4, attached hereto (hereafter "ICS Third Party Software"), subject to any required consents to assignment which have not been obtained; and



2.1.5. The trademarks and service marks and applications thereof described in Schedule 2.1.5, attached hereto (hereafter "ICS Trademarks, Services Marks and Applications Thereof").



2.2. ICS acknowledges, agrees and affirms that as between software.net and ICS, software.net is the sole and exclusive owner of the following:



2.2.1. That software known as "Cache Manager", but excluding the underlying SmartCert Technology, as described in Schedule 2.2.1 attached hereto (hereafter "Cache Manager"), including without limitation a ny and all improvements, enhancements and modifications thereto created and developed by either or both parties on or before December 31, 1998;



2.2.2. That certain database of customer information, as described in Schedule 2.2.2, attached hereto (hereafter "Customer Database");



2.2.3. That certain software which comprises software.net's internet software and digital content superstore and related server engine as described in Schedule 2.2.3, attached hereto (hereafter "Store Engine");











2.2.4. The rights to licenses of software and other intellectual property acquired from third parties in connection with software.net's operations as described in Schedule 2.2.4, attached hereto (h ereafter "software.net Third Party Software"); and



2.2.5. The trademarks and service marks and applications thereof described in Schedule 2.2.5, attached hereto (hereafter "software.net Trademarks, Service Marks and Applications Thereof").



2.3. The parties acknowledge, agree and affirm that the utility tools set forth in Schedule 2.3, attached hereto (hereafter "Jointly Owned Utility Tools") are jointly owned by both parties and may be freely used by either party witho ut accounting to each other.



2.4. Ownership of any other inventions not cited in above sections 2.1, 2.2 and 2.3, which were made by the parties on or before June 30, 1998 ("Background Inventions") shall be as follows:



2.4.1. If made exclusively by one party, then such Background Inventions shall be the property of that party.



2.4.2. If made jointly by both parties, then such Background Inventions shall be jointly owned without accounting to eac h other. In the case of a jointly filed patent application, the patent expenses shall be divided equally between the parties. If either party elects not to file an application on a joint Background Invention and/or not pay its share of the expenses thereo f , the other party may file at its own expense and shall have sole control of the prosecution thereof. The party not participating in the prosecution thereof shall remain liable for its share of the expenses for prosecution of the application unless it ass igns its entire interest in the Background Invention to the prosecuting party.



2.5. Ownership of improvements, enhancements and modifications made by the parties after December 31, 1998 and before January 1, 2000 to any of the technologies a nd information which are licensed under sections 3.1 and 3.3, herein (hereafter "Enhancements") shall be treated as follows:



2.5.1. If made exclusively by one party, then such Enhancements shall be the property of that party.



2.5.2. If made jointly by both parties, then such Enhancements shall be jointly owned without accounting to each other. In the case of a jointly filed patent application, the patent expenses shall be divided equally between the parties. If either party elects not to file an application on a jointly owned Enhancement and/or not pay its share of the expenses thereof, the other party may file at its own expense and shall have sole control of the prosecution thereof. The party not participating in the prosecution thereof shall remain liable for its share of the expenses for prosecution of the application unless it assigns its entire interest in the Enhancement to the prosecuting party.











2.6. Each of the parties agrees to execute, acknowledge, and deliver as necessary any instruments confirming the ownership by the other in accordance with this Section 2.



3. CROSS LICENSES.



3.1. SmartCert. ICS hereby grants to software.net, and software.net accepts, a worldwide, perpetual, irrevocable, royalty-free license with respect to the SmartCert Technology in object and source code (including all related user documentation) as follows:



3.1.1. a non-exclusive license for software.net's

internal use only, which license shall also include the right to

reproduce and modify;



3.1.2. a license to modify the SmartCert software for

the purposes of merging it into Cache Manager alone or Cache

Manager in combination with other software (including all

related user documentation) developed, owned or licensed by

software.net and to reproduce and sublicense the merged product

(but not the SmartCert software alone) directly to, and for use

by, enterprises (including without limitation corporations,

partnerships, sole proprietorships and universities) and

governmental agencies, provided:



3.1.2.1. sublicenses of the merged product to

the U.S. Government or other governmental agencies shall

be as "restricted computer software" or "limited rights

data" as set forth in "Rights in Data - General" at 48

CFR 52.227-14, or as "commercial computer software" or

"commercial computer software documentation" under DFARS

252.227-7015, or under such other similar applicable

terms and conditions to prevent the transfer of rights

in and to the technology to the government other than

under normal commercial licensing terms and conditions;



3.1.2.2. sublicenses of the merged product shall

not include the right to further sublicense to another

party the merged product;



3.1.3. software.net shall keep the source code for the SmartCert

Technology confidential in accordance with Section 6, below.



3.2. Patents Pending. In the event that letters patent issue from the Patents Pending, ICS grants to software.net, and software.net accepts, a worldwide, perpetual, irrevocable, royalty-free, nonexclusive license to practice any and all m ethods, systems and other inventions described in said letters patent with the following conditions:



3.2.1. Such license shall not include the right to sublicense,

except in conjunction with, and only to the extent as necessary to give

effect to, the sublicense of any software, products or technology

licensed by ICS to software.net pursuant to any other license which may

be granted in writing by ICS to software.net, including the license set

forth in above Section 3.1.



3.2.2. Such license shall not in any way convey, grant or

transfer to software.net any right to use any software, technical data

or physical device owned by ICS, including without limitation, the

SmartCert Technology, its object code, source code and related

documentation. Any right to use such software, technical data or

physical device shall be governed by a separate license agreement, or

in the case of the SmartCert Technology, shall be governed by above

section 3.1.







3.3. Cache Manager. software.net hereby grants to ICS, and ICS accepts, a non-exclusive, worldwide, perpetual, irrevocable, royalty-free license with respect to the Cache Manager software in source and object codes (including all related user docu mentation) as follows:



3.3.1. such license shall be for ICS's internal use only, and

shall include the right to reproduce and mo ...