browning@cory.Berkeley.EDU (Craig Browning) (09/07/88)
Docs on secret agreement with PKWARE, SEA. My typing ends with this paragraph.
I noticed PK gave up the right to write programs that "process" ARC files.
I wonder if that means his new program can't convert ARC > newPK. Crazy.
Craig
System Enhancement Associates vs. PKware, Inc
CONFIDENTIAL CROSS-LICENSE AGREEMENT
Document dated July 31, 1988. Agreement between SEA and
PKware to allow PKware to distribute its file compression
programs.
The following pages have been re-keyed by me for purposes of full
disclosure to the public. They have been run through spelling
checker, but have not been proofread by anyone.
See the file --> SEA-PK-S.arc <-- for re-keyed version of the
latest contempt proceeding being brought against PKware by SEA in
which SEA says PKware violated the Confidential Cross-License
Agreement. Initial arguments to be heard September 9th in Judge
Gordon's Federal Court -- Milwaukee County.
Both documents were photocopied at the Clerk of Court's Office in the
Milwaukee County Federal Courthouse by myself at 1:00 PM on August
31, 1988.
Before reading this, the public should know that PKware did not and
HAS not violated any copyright law or any other law involving SEA's
file compression programs.
The confidential cross-license agreement was settled for $62,500
BECAUSE it would have cost Phil Katz of PKware a minimum of
$100,000 to defend himself against any allegation brought by SEA.
The actual case on Phil's behalf was estimated to actually run
between 1/2 and ONE MILLION DOLLARS.
By the way, as *I* am the person who wrote PKware's documentation
for their file compression programs, the information contained herein
came as a COMPLETE surprise to me. I first became aware of the
Confidential Information in a Milwaukee The Business Journal article.
Neither Phil Katz or his attorney, Nick Kees, discussed any aspect of
the case or upcoming legal proceedings with me prior to the
revaluations which I received at the courthouse.
Karen Little, President
Office Technology Academy, Inc.
230 W Wells, Suite 310
Milwaukee, WI 53203
414 / 273-7310
September 1, 1988
+ + + +
CONFIDENTIAL CROSS-LICENSE AGREEMENT
This Agreement is made effective this 1st day of August, 1988, by and
between PKware, Inc., a Wisconsin Corporation having offices in
Glendale, Wisconsin, and Phillip W. Katz, a citizen of the State of
Wisconsin, hereinafter collectively referred to as "PK", and System
Enhancement Associates, Inc., a New Jersey Corporation having offices
in Wayne, New Jersey, hereinafter referred to as "SEA."
2
WHEREAS, SEA filed a lawsuit against PK on or about April 25, 1988,
in the Federal District Court for the Eastern District of Wisconsin,
Case No. 88-C-447, claiming copyright infringement, violations of the
Lenham Act, trademark infringement and unfair competition; and
WHEREAS, both parties desire to resolve the above identified lawsuit,
without admitting any fault, wrongdoing or liability;
IT IS THEREFORE AGREED THAT:
1. Judgment on Consent: A Judgment for Plaintiff on Consent, in
the form to which this Agreement is attached, shall be entered in
the above identified lawsuit referencing the following terms of
this Agreement.
2. Magazine Advertising: PK shall forthwith withdraw all magazine
advertising of ARC compatible programs in any publication where
they may currently appear to the extent possible.
3. Cross License: SEA hereby grants to PK, nunc pro tunc, a
license to use its source code for a period beginning with the
first release of an ARC compatible program by PK, and ending on
January 31, 1989. PK hereby grants to SEA a personal, non-
transferable (except with the assets of SEA's business in ARC
compatible programs), perpetual, world-wide, non-exclusive
(including the right to grant sub-licenses of no greater scope)
royalty-free license to use PK's source code for ARC compatible
programs, provided that, in using any code provided by PK to
SEA, SEA agrees not to alter materially the existing "look and
feel" of SEA's ARC program, that is, SEA agrees not to use any
code provided to SEA by PK for the purpose of splitting its ARC
program into separate compression and extraction modules. PK
agrees to provide, as expeditiously as possible after the date of
this Agreement, fully commented source code of its ARC
compatible programs to SEA. SEA agrees never to sell or
license, without substantial changes, the entire source code
provided to it by PK.
4. Termination of PK's License: After January 31, 1989, PK agrees
not to distribute or offer for license any program that: 1.
creates ARC compatible archive files; 2. by default adds a
filename extension of ".ARC"; or 3. processes ARC format files.
5. No Trademark License: After the effective date of this
Agreement, PK agrees not to distribute or offer for license any
program that carries a trademark, tradename or filename
including the letter combination "ARC" or any other trademark,
tradename or filename the use of which may be confusingly
similar to any of SEA's trademarks, or the use of which may be
likely to cause confusion or mistake or to deceive with respect
to SEA's programs. PK agrees to forthwith abandon any
applications it has pending to register in the United States
Patent & Trademark Office any of its trademarks containing the
letter combination "ARC".
3
6. New Versions: PK agrees not to release any new versions of
ARC compatible programs. SEA does, however, hereby grant to
PK a license to distribute, prior to January 31, 1989, bug fixes,
and minor modifications not affecting the substantive
functionality of the programs, for only those versions of ARC
compatible programs released by PK prior to the date of this
Agreement.
7. Royalties: PK agrees to account monthly and pay to SEA a
royalty fee of 6.5% (six and one half percent) of all revenue
received for ARC compatible programs on all orders received
after the effective date of this Agreement, such revenue
including any license fees or shareware registrations received
after January 31, 1989, for ARC compatible programs. During the
period from the effective date of this Agreement to January 31,
1989, the parties hereto agree to discuss and, on an ad hoc basis,
mutually determine which party is to respond to any inquiries PK
receives for commercial licenses to use ARC compatible programs.
After January 31, 1989, PK agrees to refer all inquiries for ARC
compatible programs to SEA. SEa agrees to pay to PK a
commission in the amount of 6.5% of any license fees received by
SEA from any licensee referred to SEA by PK, whether before or
after January 31, 1989.
8. Customer List: PK agrees to promptly provide to SEA's
designated attorney a listing (in hard copy and machine readable
forms) of the names and addresses of PK's existing licensees as
of the effective date of this Agreement. SEA agrees that it will
not access the listing directly, and that the sole purpose for such
listing is to allow SEA's designated attorney to determine
whether any legal entity is licensed by PK.
9. Non-Infringing Programs: SEA acknowledges that PK continues
to have the right to distribute non-infringing compression
programs. This Paragraph 9 is not intended to grant any license
to PK to use any of SEA's intellectual property.
10. Payments: PK agrees to pay to SEA the sum of $22,500 for past
royalty payments, and the sum of $40,000 as litigation expense
reimbursements, for a total payment of $62,500. [payment
schedule follows]
11. Press Release: The parties agree to issue a mutually acceptable
publicity release describing disposition of the above identified
lawsuit and this Agreement, a copy of which is attached hereto
and incorporated herein by reference as Exhibit A. [Press
release is not being rekeyed at this time as my hands are
breaking off -- Karen]
12. Merger and Governing Law: This Agreement and the attachments
hereto embody the entire agreement between the parties hereto.
13. Jurisdiction. The parties agree that any dispute arising under
this Agreement shall be resolved under the Judgment to which it
4
is attached, in the US District Court for the EAstern District of
Wisconsin.
14. Waver: The waiver of either party hereto of any right hereunder
or failure to perform or breach by the other party shall not be
deemed as a waver of any other right hereunder or of any other
breach or failure by said other party whether of a similar nature
or otherwise.
15. Notice: Any notice required to be given pursuant to the
provisions of this Agreement shall be in writing and by certified
mail, and mailed to the parties at the following addresses . . .
[PKware, Glendale, WI and SEA, Wayne, NJ)
The agreement was signed by
Phillip W. Katz, PKware, Inc.
and
Thom L. Henderson, System Enhancement Associates, Inc.msmith@topaz.rutgers.edu (Mark Robert Smith) (09/07/88)
Sheesh! it's a good thing I spell my first name with a K, and not a
C, or I might end up sued!
Mark
--
Mark Smith (alias Smitty) "Be careful when looking into the distance,
RPO 1604; CN 5063 that you do not miss what is right under your nose."
New Brunswick, NJ 08903 {backbone}!rutgers!topaz.rutgers.edu!msmith
msmith@topaz.rutgers.edu Who cares in '88?