CONFIDENTIAL LICENSE AGREEMENT FOR GAME BOY ADVANCE (Western Hemisphere)
"[*]” denotes confidential information omitted and filed separately with the Securities and
Exchange Commission pursuant to a request for confidential treatment under Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
Exhibit 10.1
THIS LICENSE AGREEMENT (“Agreement”) is entered into between NINTENDO OF AMERICA INC. (“NOA”),
at 0000 000xx Xxxxxx X.X., Xxxxxxx, XX 00000 Attn: General Counsel (Fax: 000-000-0000) and Midway
Home Entertainment, Inc., (“LICENSEE”) at 000 Xxxxx Xxxx Xxxxxx, Xxxxxxxxx, XX 00000 Attn: Xxxxx
Xxxxx (Fax: (000) 000-0000). NOA and LICENSEE agree as follows:
1.1 NOA markets and sells advanced design, high-quality video game systems, including the GAME
BOY® ADVANCE system.
1.2
LICENSEE desires a license to use highly proprietary programming specifications,
development tools, trademarks and other valuable intellectual property rights of NOA and its parent
company, Nintendo Co., Ltd. (collectively “Nintendo”), to develop, have manufactured, advertise,
market and sell video game software for play on the GAME BOY ADVANCE system.
1.3 NOA is willing to grant a license to LICENSEE on the terms and conditions set forth in
this Agreement.
2.1 “Artwork” means the design specifications for the Game Cartridge label and Printed
Materials in the format specified by NOA in the Guidelines.
2.2 “Development Tools” means the development kits, programming tools, emulators, and
other
materials that may be used in the development of Games under this Agreement.
2.3 “Effective Date” means the last date on which all parties shall have signed this
Agreement.
2.4 “Finished Product(s)” means the fully assembled and shrink-wrapped Licensed Products,
each
including a Game Cartridge, Game Cartridge label and Printed Materials.
2.5 “Game Cartridges(s)” means custom cartridges specifically manufactured under the terms
of
this Agreement for play on the GAME BOY ADVANCE system, incorporating semiconductor components in
which a Game has been stored.
2.6 “Game(s)” means interactive video game programs (including source and object/binary
code)
developed for play on the GAME BOY ADVANCE system.
2.7 “Guidelines” means the current version or any future revision of the “Game Boy
Packaging
Guidelines”, “Nintendo Trademark Guidelines”, “Game Boy Advance Development Manual” and related
guidelines.
2.8 “Independent Contractor” means any individual or entity that is not an employee of
LICENSEE, including any independent programmer, consultant, contractor, board member or advisor.
2.9 “Intellectual Property Rights” means individually, collectively or in any combination,
Proprietary Rights owned, licensed or otherwise held by Nintendo that are associated with the
development, manufacturing, advertising, marketing or sale of the Licensed Products, including,
without limitation, (a) registered and unregistered trademarks and trademark applications used in
connection with video games for play on the GAME BOY ADVANCE system including “Nintendo®”, “GAME
BOY® ADVANCE,” “AGB and the “Official Nintendo Seal of Quality®”, (b) select trade dress
associated with the
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GAME BOY ADVANCE system and licensed video games for play thereon, (c) Proprietary Rights in the
Security Technology incorporated into the Game Cartridges, (d) rights in the Development Tools for
use in developing the Games, (e) patents or design registrations associated with the Game
Cartridges, (f) copyrights in the Guidelines, and (g) other Proprietary Rights of Nintendo in
Confidential Information.
2.10 “Licensed Products” means (a) Finished Products, or (b) Stripped Products
when fully
assembled and shrink-wrapped with the Printed Materials.
2.11 “Marketing Materials” means marketing, advertising or promotional materials developed
by
or for LICENSEE (or subject to LICENSEE’S approval) to promote the sale of the Licensed Products,
including, but not limited to, television, radio and on-line advertising, point-of-sale materials
(e.g. posters, counter-cards), package advertising and print media or materials.
2.12 “NDA” means the non-disclosure agreement providing for the protection of Confidential
Information related to the GAME BOY ADVANCE system previously entered into between NOA and
LICENSEE.
2.13 “Notice” means any notice permitted or required under this Agreement. All notices
shall
be sufficiently given when (a) personally served or delivered, or (b) transmitted by facsimile,
with an original sent concurrently by first class U.S. mail, or (c) deposited, postage prepaid,
with a guaranteed air courier service, in each case addressed as stated herein, or addressed to
such other person or address either party may designate in a Notice. All Notices to LICENSEE shall
include a copy to: Vice President and General Counsel, Midway Games Inc., 0000 Xxxxx Xxxxxxxxxx
Xxxxxx, Xxxxxxx, Xxxxxxxx 00000, Facsimile (000) 000-0000. Notice shall be deemed effective upon
the earlier of actual receipt or two (2) business days after transmittal.
2.14 “Price Schedule” means the current version or any future revision of NOA’s
schedule of
purchase prices and minimum order quantities for the Licensed Products.
2.15 “Printed Materials” means the box, user instruction booklet, poster, warranty card
and
LICENSEE inserts incorporating the Artwork, together with a precautions booklet as specified by
NOA.
2.16 “Proprietary Rights” means any rights or applications for rights owned, licensed or
otherwise held in patents, trademarks, service marks, copyrights, mask works, trade secrets, trade
dress, moral rights and publicity rights, together with all inventions, discoveries, ideas,
technology, know-how, data, information, processes, formulas, drawings and designs, licenses,
computer programs, software source code and object code, and all amendments, modifications, and
improvements thereto for which such patent, trademark, service xxxx, copyright, mask work, trade
secrets, trade dress, moral rights or publicity rights may exist or may be sought and obtained in
the future.
2.17 “Reverse Engineer(ing)” means, without limitation, (a) the x-ray, electronic
scanning or
physical or chemical stripping of semiconductor components, (b) the disassembly, decompilation,
decryption or simulation of object code or executable code, or (c) any other technique designed to
extract source code or facilitate the duplication of a program or product.
2.18 “Security Technology” means, without limitation, any security signature, bios, data
scrambling, password, hardware security apparatus, watermark, hologram, copyright management
information system or any feature which facilitates or limits compatibility with other hardware or
software outside of the Territory or on a different video game system.
2.19 “Stripped Product(s)” means the Game Cartridges with Game Cartridge labels affixed.
2.20 “Term” means three (3) years from the Effective Date.
2.21 “Territory” means all countries within the Western Hemisphere and their respective
territories and possessions.
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(a) grant access to, distribute,
transmit or broadcast a Game by electronic means or by any
other means known or hereafter devised, including, without limitation, by wireless, cable, fiber
optic, telephone lines, microwave, radiowave, computer or other device network; provided, however,
that limited transmissions may be made for the sole purpose of facilitating development under the
terms of this Agreement, but no right of retransmission shall attach to any such authorized
transmission and, reasonable security measures, customary within the high technology industry,
shall be. utilized to reduce the risk of unauthorized interception or retransmission of any such
authorized transmission,
(b) authorize or permit any online
activities involving a Game, including, without limitation,
multiplayer, peer-to-peer or online play,
(c) modify, install or operate a
Game on any server or computing device for the purpose of or
resulting in the rental, lease, loan or other grant of remote access to the Game,
(d) emulate, interoperate,
interface or link a Game for operation or use with any hardware or
software platform, accessory, computer language, computer environment, chip instruction set,
consumer electronics device or device other than the GAME BOY ADVANCE system or the Development
Tools,
(e) embed, incorporate, or store a
Game in any media or format except the cartridge format
utilized by the GAME BOY ADVANCE system, except as may be necessary as a part of the Game
development process under this Agreement,
(f) design, implement or undertake
any process, procedure, program or act designed to
circumvent the Security Technology,
(g) utilize the Intellectual
Property Rights to design or develop any interactive video game
program, except as authorized under this Agreement,
(h) manufacture or reproduce a Game
developed under this Agreement, except through Nintendo,
or
(i) Reverse Engineer or assist in
the Reverse Engineering of all or any part of the GAME BOY
ADVANCE system, including the hardware or software (whether embedded or otherwise), or the Security
Technology.
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*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
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*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
PAGE 5
Contractors selected to perform the production and assembly operations. LICENSEE shall provide
NOA with the names, addresses and all business documentation reasonably requested by NOA for such
Independent Contractors. NOA may, prior to approval and at reasonable intervals thereafter, (a)
require submission of additional business or financial information regarding the Independent
Contractors, (b) inspect the facilities of the Independent Contractors, and (c) be present to
supervise any work on the Licensed Products to be done by the Independent Contractors. If at any
time NOA deems an Independent Contractor to be unable to meet quality, security or performance
standards reasonably established by NOA, NOA may refuse to grant its approval or withdraw its
approval upon Notice to LICENSEE. LICENSEE may not proceed with the production of the Printed
Materials or assembly of the Licensed Product until NOA’s concerns have been resolved to its
satisfaction or until LICENSEE has selected and received NOA’s approval of another Independent
Contractor.
*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
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8.1 Definition. “Confidential Information” means information provided to LICENSEE
by
Nintendo or any third party working with Nintendo relating to the hardware and software for the
GAME BOY ADVANCE system or the Development Tools, including, but not limited to, (a) all current or
future information, know-how, techniques, methods, information, tools, emulator hardware or
software, software development specifications, and/or trade secrets, (b) any patents or patent
applications, (c) any business, marketing or sales data or information, and (d) any other
information or data relating to development, design, operation, manufacturing, marketing or sales.
Confidential Information shall include all confidential information disclosed, whether in writing,
orally, visually, or in the form of drawings, technical specifications, software, samples,
pictures, models, recordings, or other tangible items which contain or manifest, in any form, the
above listed information. Confidential Information shall not include (i) data and information which
was in the public domain prior to LICENSEE’S receipt of the same hereunder, or which
subsequently becomes part of the public domain by publication or otherwise, except by LICENSEE’S
wrongful act or omission, (ii) data and information which LICENSEE can demonstrate, through written
records kept in the ordinary course of business, was in its possession without restriction on use
or disclosure, prior to its receipt of the same hereunder and was not acquired directly or
indirectly from Nintendo under an obligation of confidentiality which is still in force, and (
iii) data and information which
*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
PAGE 7
LICENSEE can show was received by it from a third party who did not acquire the same directly
or indirectly from Nintendo and to whom LICENSEE has no obligation of confidentiality.
(a) it is a duly organized and validly existing corporation and
has full authority to enter
into this Agreement and to carry out the provisions hereof,
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(b) the execution, delivery and performance of this Agreement by LICENSEE does not conflict
with any agreement or understanding to which LICENSEE may be bound, and
(c) excluding the Intellectual Property Rights, LICENSEE is either (i) the sole owner of
all
right, title and interest in and to the trademarks, copyrights and other intellectual property
rights used on or in association with the development, advertising, marketing and sale of the
Licensed Products and the Marketing Materials, or (ii) the holder of such rights to the trademarks,
copyrights and other intellectual property rights which have been licensed from a third party as
are necessary for the development, advertising, marketing and sale of the Licensed Products and the
Marketing Materials under this Agreement.
(a) it is a duly organized and validly existing corporation and has full authority to enter
into this Agreement and to carry out the provisions hereof, and
(b) the execution, delivery and performance of this Agreement by NOA does not conflict with
any agreement or understanding to which NOA may be bound.
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(a) a breach of any of the provisions, representations or
warranties undertaken by LICENSEE in
this Agreement,
(b) any infringement of a third party’s Proprietary Rights
as a result of the design,
development, advertising, marketing, sale or use of the Licensed Products or the Marketing
Materials,
(c) any claims alleging a defect, failure to warn, bodily injury
(including death) or other
personal or property damage arising out of, or in connection with, the design, development,
advertising, marketing, sale or use of any of the Licensed Products, and
(d) any federal, state or foreign civil or criminal actions
relating to the design,
development, advertising, marketing, sale or use of the Licensed Products or the Marketing
Materials.
NOA and LICENSEE shall give prompt Notice to the other of any indemnified claim under this Section
10.1. With respect to any third party claim subject to this indemnity clause, LICENSEE, as
indemnitor, shall have the right to select counsel and to control the defense and/or settlement
thereof. NOA may, at its own expense, participate in such action or proceeding with counsel of its
own choice. LICENSEE shall not enter into any settlement of any such claim in which (i) NOA or
Nintendo Co., Ltd. has been named as a party, or (ii) claims relating to the Intellectual Property
Rights have been asserted, without NOA’s prior written consent. NOA shall provide reasonable
assistance to LICENSEE in its defense of any such claim.
*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
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timely manner. NOA will have the right to retain all proceeds it may derive from any recovery
in connection with such actions.
13.6 Breach of NDA or Other NOA License Agreements. At NOA’s option, any breach by
LICENSEE of (a) the NDA, or (b) any other license agreement between NOA and LICENSEE relating to
*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
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the development of games for any Nintendo video game system which is not cured within the time
period for cure allowed under the applicable agreement, shall be considered a material breach of
this Agreement entitling NOA to terminate this Agreement in accordance with Section 13.5 herein.
14.3 [INTENTIONALLY OMITTED]
14.6 Governing Law and Venue. This Agreement shall be governed by the laws of the
State of Washington, without regard to its conflict of laws principles. Any legal action (including
judicial and administrative proceedings) with respect to any matter arising under or growing out of
this Agreement, shall be brought in a court of competent jurisdiction in King County, Washington.
Each party hereby consents to the jurisdiction and venue of such courts for such purposes.
*Information has been omitted and filed separately with the Securities and Exchange
Commission pursuant to a request for confidential treatment pursuant to Rule 24b-2 under the
Securities Exchange Act of 1934, as amended.
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NOA: | LICENSEE: | |||||||
NINTENDO OF AMERICA INC. | MIDWAY HOME ENTERTAINMENT, INC. | |||||||
By:
|
/s/ Xxxx X. Xxxxx | By: | /s/ Xxxxx X. Xxxxxxx | |||||
Title:
|
Executive VP, Administration | Title: | EVP | |||||
Date:
|
8/6/01 | Date: | 7-30-01 | |||||
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