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EXHIBIT 2.2
MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the "AGREEMENT")
is entered into as of July __, 2001 by and between ESS Technology, Inc., a
California corporation ("ESS") and Vialta, Inc., a Delaware corporation
("VIALTA").
RECITAL
In connection with entering into a Distribution Agreement concurrently
herewith, ESS and Vialta wish to acknowledge and memorialize their agreements
with respect to world-wide ownership of Technology and other intellectual
property existing as of the Distribution Date.
AGREEMENT
1. Definitions. The following terms, when capitalized herein, shall have
the meanings set forth below in this Section 1. Unless indicated otherwise, all
other capitalized terms which are used but are not otherwise defined herein
shall have the meanings ascribed to them in the Distribution Agreement.
1.1 "ACCESS BROWSER SOFTWARE PROGRAM" means a Browser that
includes any of the software licensed under the agreement between Access Co.,
Ltd, a Japanese corporation and Xxxxxx.xxx dated August 1, 1996.
1.2 "APPLICATION SOFTWARE" means software code, in source and
object code form, primarily designed to perform one or more specific functions
directly for the user or for another application program. "APPLICATION SOFTWARE"
shall also mean programmer notes and documentation specifically associated with
such software code.
1.3 "BROWSER" means a client program that uses the Hypertext
Transfer Protocol ("HTTP"), or a similar protocol, to make requests of Web
servers throughout the Internet on behalf of the browser user. A Browser shall
be considered Application Software.
1.4 "CHIPS" means computer components such as microprocessors,
integrated circuits and other computer chips (including microcode stored
thereon) and each method, material, process and apparatus primarily relating to
the design, test and manufacture of any of the foregoing.
1.5 "COPYRIGHTS" mean collectively (i) any copyright in any
works of authorship fixed in any tangible medium of expression as set forth in
17 U.S.C. Section 101 et seq., whether registered or unregistered, including any
applications for registration thereof, (ii) any corresponding foreign copyrights
under the laws of any jurisdiction, in each case, whether registered or
unregistered, and any applications for registration thereof, and (iii) moral,
common law or other rights in creative works however vested under the laws of
any jurisdiction.
1.6 "DISTRIBUTION AGREEMENT" means the Master Distribution
Agreement between the parties executed simultaneously herewith.
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1.7 "DISTRIBUTION DATE" shall have the meaning set forth in the
Distribution Agreement.
1.8 "DVD" means "DIGITAL VERSATILE DISK", formerly "DIGITAL
VIDEO DISK", which is a CD-sized disk with a capacity at or above 4 GB
(gigabytes), able to be recorded using optical technology, with data containing
full-length motion pictures, audio, or other data files.
1.9 "DVD PRODUCT" means a System designed to read and decode
data from a DVD.
1.10 "ENREACH BROWSER" means a Browser that includes any of the
software licensed under the agreement between Enreach Technology, Inc. and
Xxxxxx.xxx dated August 26, 2000.
1.11 "ESS TECHNOLOGY" shall have the meaning assigned to it in
Section 2.1.
1.12 "FIRMWARE" means software code, in source or object code
form that resides on computer hardware, specifically Flash Memory, RAM, ROM,
PROM and EPROM Chips, such that, although machine readable, the software code
residing on such computer hardware may not be modified or deleted without
external hardware. "FIRMWARE" also includes such software code before it is made
resident on such computer hardware, as well as the programmer notes and
documentation specifically associated with such software code.
1.13 "INTELLECTUAL PROPERTY RIGHTS" means all rights, under
United States law, foreign laws, or the law of any jurisdiction, relating to
Copyrights, Marks, mask works, trade secrets, and all other intellectual and
industrial property rights of every kind and nature however designated, whether
arising by operation of law, contract, license or otherwise, and whether or not
subject to statutory registration. "INTELLECTUAL PROPERTY RIGHTS" specifically
includes rights to keep certain information confidential as provided in the
Master Confidential Disclosure Agreement between the parties and specifically
excludes Patents.
1.14 "KOMODO INTERNET PHONE PRODUCT" means the internet-phone
system permitting point-to-point voice calls and internet calls using voice over
IP technology.
1.15 "XXXX" means any trademark, service xxxx, trade name, and
the like, or other word, name, symbol or device, or any combination thereof,
used or intended to be used by a person to identify and distinguish the products
or services of that person from the products or services of others and to
indicate the source of such goods or services, including without limitation all
registrations and applications therefor throughout the world and all common law
and other rights therein throughout the world.
1.16 "PATENTS" means patents, utility patents, utility modes,
design patents, design registrations, certificates of invention and other
governmental grants for the protection of inventions or industrial designs
anywhere in the world, issued or issuing on patent applications entitled to a
priority, first, actual or effective filing date on or before the Distribution
Date (or thereafter if containing issued claims covering an invention conceived
before the Distribution Date), and all reissues, renewals, re-examinations and
extensions of any of the foregoing.
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1.17 "SUBSIDIARY" shall have the meaning set forth in the
Distribution Agreement.
1.18 "SYSTEM" means an aggregation or combination of elements or
components primarily designed to work together for a common purpose and that is
sold or otherwise distributed interconnected or to be interconnected, excluding
Chips that may comprise a part of the System. Also, a "SYSTEM" shall not mean a
Chip even though such Chip may itself comprise an aggregation or combination of
elements primarily designed to work together for a common purpose.
1.19 "TECHNOLOGY" means software programs (including all source
code, object code and documentation), designs, algorithms, libraries of
software, technical information, technical drawings, know-how, manufacturing
processes, design processes, behavioral models, logic diagrams, schematics, test
vectors, formulae, industrial models, designs and design information, product
information, specifications, data, methodologies, routines, techniques,
engineering information, engineering work papers and notes, computer and
electronic data processing and other apparatus programs, databases, trade
secrets, technical information, records, knowledge, data and other like
property.
1.20 "VIALTA TECHNOLOGY" means all Technology that is or is
primarily designed to be:
1.20.1 Application Software for use with Vphone
Products, the EnReach Browser, DVD Products, ViDVD Products, ViAudio/ViMedia
Products, and Komodo Internet Phone Products;
1.20.2 Systems for use with Vphone Products, the EnReach
Browser, DVD Products, ViDVD Products, ViAudio/ViMedia Products, and Komodo
Internet Phone Products;
1.20.3 Firmware for use with Vphone Products, the
EnReach Browser, ViAudio/Media Products and Komodo Internet Phone Products; and
1.20.4 Firmware for use with ViDVD Products, but
specifically excluding Technology primarily designed to be basic and generic
functionality including without limitation the standard features of DVD, VCD,
SVCD, MP3, Digital Photography, Karaoke, DVD Audio, Dolby, DTS and SACD.
For purposes of clarity, "VIALTA TECHNOLOGY" does not include any
Technology that is Chips.
1.21 "VIAUDIO/MEDIA PRODUCT" means the Video Internet
Audio/Media System currently marketed by Vialta, under the names "ViMedia", for
media-rich content and hyperlinked interaction for ViDVD Products.
1.22 "VIDVD PRODUCT" means the proprietary DVD System currently
marketed by Vialta under the name, "ViDVD", with web functionality, supporting
Dolby Digital audio, MP3 audio and DTS audio, with Karaoke and Internet
telephony capabilities.
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1.23 "VPHONE PRODUCT" means the videophone System marketed by
Vialta under the name "ViPhone", permitting point-to-point or Internet-based
videophone calls.
2. Technology and Intellectual Property Ownership.
2.1 As between ESS and Vialta, Vialta is the exclusive owner of
all right, title and interest in and to the Vialta Technology and the
Intellectual Property Rights in such Vialta Technology existing as of the
Distribution Date. As between ESS and Vialta, ESS is the exclusive owner of all
right, title and interest in and to all other Technology ("ESS TECHNOLOGY"),
including without limitation Chips, and the Intellectual Property Rights in such
ESS Technology existing as of the Distribution Date.
2.2 As between ESS and Vialta, Vialta is the exclusive owner of
all right, title and interest in and to the Marks set forth in Exhibit B hereto,
together with any associated goodwill. As between ESS and Vialta, ESS is the
exclusive owner of all right, title and interest in and to all other Marks
existing as of the Distribution Date. Neither party shall (i) challenge the
other party's ownership or use of the Marks acknowledged herein as owned by such
other party; (ii) attempt to itself register any such Marks or any marks
confusingly similar thereto in any jurisdiction in the world; (iii) alter or add
to any such Marks; or (iv) incorporate any such Marks into its own trademarks,
product names, service marks, company names, domain names, or any other similar
designations.
2.3 Notwithstanding Section 2.1, ESS and Vialta shall each own
an undivided 50/50 interest in the ACCESS Browser Software Program, together
with the Intellectual Property Rights protecting the ACCESS Browser Software
Program, subject to the use restrictions specified in Exhibit A hereto. Each
party shall have the unrestricted right to grant licenses (including the right
for any licensees to grant sublicenses) to third parties under such ACCESS
Browser Software Program without accounting and with necessary consent hereby
given by the other party as may be required by the law of any country in
granting such licenses to third parties.
2.4 The parties acknowledge this Agreement sets forth the
parties intended ownership and licensing of the subject matter hereof as of the
Distribution Date. To the extent the actual ownership of the Technology and
Intellectual Property Rights addressed herein is other than as stated herein,
the parties hereby make and agree to make any and all appropriate assignments to
make the statements herein full and accurate. To the extent ownership records in
fact differ from that provided herein, the parties agree to execute at any time
(including after the Distribution Date) such conveyance instruments as necessary
to reflect the terms of this Agreement.
2.5 Prior Grants. Each party acknowledges and agrees that the
foregoing acknowledgements as to ownership are subject to any and all licenses
and other rights that may have been granted to a third party by the other party
or its Subsidiaries prior to the Distribution Date. Each party shall respond to
reasonable inquiries from the other party regarding any such prior grants.
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3. Research and Development.
3.1 Subject to Section 2, as between ESS and Vialta, each party
is the exclusive owner of all Technology and associated Intellectual Property
Rights developed during research and development conducted by such party alone
or without the other party hereto on, before or after the Distribution Date.
3.2 The Research and Development Service Agreement (ESS to
Vialta), effective August 1, 1999 (the "VIALTA RESEARCH AND DEVELOPMENT
AGREEMENT") and the Research and Development Service Agreement (Vialta to ESS),
effective August 1, 1999 (the "ESS RESEARCH AND DEVELOPMENT AGREEMENT") are
hereby terminated as of the Distribution Date, excepting only that any
outstanding payment obligations existing as of the Distribution Date shall be
met by the debtor party. Section 3 of both the Vialta Research and Development
Agreement and the ESS Research and Development Agreement are replaced by Section
2.1 of this Agreement effective nunc pro tunc to the effective date of those
Agreements.
4. Dispute Resolution. Any and all controversies, disputes or claims
arising out of, relating to, in connection with or resulting from this Agreement
(or any amendment thereto or any transaction contemplated hereby or thereby),
including as to its existence, interpretation, performance, non-performance,
validity, breach or termination, including any claim based on contract, tort,
statute or constitution and any claim raising questions of law, whether arising
before or after termination of this Agreement, shall be deemed a Dispute as
defined in Section 4.6 of the Distribution Agreement and shall be resolved
exclusively by, in accordance with, and subject to the procedures and
limitations set forth in, Section 4.6 of the Distribution Agreement.
5. Miscellaneous Provisions.
5.1 Incorporation of Distribution Agreement. The miscellaneous
provisions provided in Article V of the Distribution Agreement are incorporated
herein by reference as though set forth in full, excepting only Section 5.15 of
the Distribution Agreement.
5.2 Other Agreements. This Agreement is not intended to address,
and should not be interpreted to address, the matters expressly covered by the
Distribution Agreement and/or the other Ancillary Agreements. In the event of a
conflict between this Agreement and the Distribution Agreement and/or any other
Ancillary Agreement executed in connection herewith, the provisions of this
Agreement shall prevail.
5.3 Superceded Previous Understandings. This Agreement
supercedes all previous agreements between the ESS and Vialta dealing with
ownership or licensing of Technology or Intellectual Property Rights, including
the Vialta Research and Development Agreement, the ESS Research and Development
Agreement and the Assignment of Intellectual Property Agreement between ESS and
Vialta, dated January 1, 2000.
5.4 Confidentiality. The terms of the Master Confidential
Disclosure Agreement between the parties shall apply to any Confidential
Information which is the subject matter of this Agreement.
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5.5 Disclaimer. NEITHER PARTY MAKES ANY WARRANTY OR
REPRESENTATION, INCLUDING ANY WARRANTY OR REPRESENTATION CONCERNING TECHNOLOGY
OR INTELLECTUAL PROPERTY, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
5.6 No Implied Licenses. Nothing contained in this Agreement
shall be construed as conferring any rights by implication, estoppel or
otherwise, under any Intellectual Property Right, other than the rights
expressly granted in this Agreement.
IN WITNESS WHEREOF, each of the parties has caused this Master
Technology Ownership and License Agreement to be executed as of the date first
above written.
ESS TECHNOLOGY, INC. VIALTA, INC.
By: By:
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Name: Name:
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Its: Its:
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EXHIBIT A
USE RESTRICTIONS APPLICABLE TO ACCESS BROWSER
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EXHIBIT B
VIALTA MARKS
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