Exhibit 10.5
[NOTE: CERTAIN PORTIONS OF THIS DOCUMENT HAVE BEEN MARKED TO INDICATE THAT
CONFIDENTIALITY HAS BEEN REQUESTED FOR THIS CONFIDENTIAL INFORMATION. THE
CONFIDENTIAL PORTIONS HAVE BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.]
AGREEMENT, made as of the 24th day of July 1996, by and between GENERAL
ELECTRIC COMPANY (hereinafter called "GE"), a corporation organized and
existing under the laws of the State of New York and PRINCETON VIDEO IMAGE,
INC. (hereinafter called "LICENSEE"), a corporation organized and existing
under the laws of the State of New Jersey.
W I T N E S S E T H:
In consideration of the covenants and conditions herein contained, the
parties hereto agree as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement, the following terms are defined:
SECTION 1. "CONTRACT APPARATUS" means equipment for electronically
altering images in any television program for advertising purposes or for any
purpose in television programs whose principal focus is sports and
specifically includes the use of such equipment in furnishing the service of
such electronic altering.
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SECTION 2.
(a) "SUBSIDIARY" means a corporation or other business entity in
which GE or LICENSEE, as the case may be, now or hereafter controls, directly
or indirectly, (a) in the case of the corporation, the majority of the stock
entitled to vote for the election of directors or persons performing similar
functions, and (b) in the case of any other business entity, equivalent
control of the ownership thereof. However, any such corporation or other
business entity shall be deemed to be a SUBSIDIARY only so long as such
control exists.
(b) "AFFILIATION" means the relationship between LICENSEE and each
of its SUBSIDIARIES, and between any two or more of such SUBSIDIARIES, and
any other relationship, contract, arrangement, method or device wherein, with
respect to any matter or thing which affects the amounts payable hereunder,
one or more of the parties to a transaction has or exercises, or has the
power to exercise, directly or indirectly, in any manner, control, direction
or restraint of the other or others, or wherein two or more of such parties
in any manner, directly or indirectly, are subject to common control,
direction or restraint.
SECTION 3.
(a) "PATENTS" means letters patent and utility models, and includes
all reissues, division, continuations in whole or in part, renewals and
extensions thereof and licenses, rights and privileges to or under such
letters patent and utility models.
(b) "GE's PATENTS" means PATENTS (as hereinabove defined) owned or
controlled by GE and/or its SUBSIDIARIES and administered by GE and RCA
LICENSING MANAGEMENT OPERATION, INC. during the term of this Agreement, with
respect to which and to the extent to which, and subject to the conditions
under which, GE shall have the right to grant licenses to LICENSEE during the
term of this Agreement.
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ARTICLE II
LICENSES
SECTION 1. GE hereby grants to LICENSEE a non-transferable, indivisible,
non-exclusive license under all of GE's PATENTS of the United States and
foreign countries, including all such PATENTS which GE may obtain during the
term of this Agreement, to make, have made, use, sell, lease or otherwise
dispose of CONTRACT APPARATUS.
SECTION 2. In the event that LICENSEE grants licenses to a third party or
parties under its own intellectual property rights (hereinafter called
"AFFILIATED COMPANIES"), then, during the term of this Agreement, GE agrees not
to assert its PATENTS against CONTRACT APPARATUS that are made, used, sold or
leased under license by such AFFILIATED COMPANIES and with respect to which
compensation is paid under Article III hereof by LICENSEE to GE.
SECTION 3. Anything in this Agreement to the contrary notwithstanding, no
license is herein granted with respect to electron tubes, solid state devices
or plastics. Nothing in this Agreement and no act or acts hereunder shall be
construed as or result in conveying any license to LICENSEE or to any third
party, expressly or by implication, estoppel or otherwise, excepting the
licenses granted to LICENSEE pursuant to this Article II.
SECTION 4. In the event that LICENSEE desires to expand the definition of
CONTRACT APPARATUS to include other fields of use, at LICENSEE'S request, GE
will consider such expansion on terms and conditions to be agreed upon.
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ARTICLE III
COMPENSATION
SECTION 1. For the rights granted herein, LICENSEE shall pay compensation
to GE with respect to CONTRACT APPARATUS used, sold, leased or otherwise
disposed of by LICENSEE during the term of this Agreement as follows:
[CONFIDENTIAL TREATMENT REQUESTED]
SECTION 2. Within thirty (30) days after June 30 and December 31 of each
year during the term of this Agreement, LICENSEE shall furnish to GE a
statement certified by an officer or authorized representative of LICENSEE
stating the gross revenue of LICENSEE and its SUBSIDIARIES during the
preceding calendar half year and the total amounts of compensation payable to
GE hereunder for such calendar half year, and LICENSEE shall at the time of
furnishing each such statement pay such amount of compensation. The first
such statement shall include the information specified above for all such
gross revenue of LICENSEE and its SUBSIDIARIES from the effective date of
this Agreement to the last day of the calendar half year covered by such
statement. Similar statements likewise shall be rendered, and payment made,
to GE within thirty (30) days after and as of the date of any termination of
this Agreement covering the period from the end of that covered by the last
preceding statement to the date of such termination and including all gross
revenue of LICENSEE and its SUBSIDIARIES
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received or accrued during the term of this Agreement. In the event that any
payments due to GE under this Agreement are not made in full within the time
allowed in this Section 2, after receipt of the overdue amount, GE shall
invoice LICENSEE for the interest accrued and payable in accordance with
Section 4 of this Article III. LICENSEE shall pay the net amount of interest
invoiced within thirty (30) days of the date of invoice.
SECTION 3. LICENSEE shall keep and cause its SUBSIDIARIES to keep true
and accurate records, files and books of account containing all the data
reasonably required for the full computation and verification of the amounts
to be paid and the information to be given in the statements herein provided
for, and shall at all reasonable times permit GE from time to time adequately
to inspect the same for the purpose of determining the amounts payable by
LICENSEE pursuant to Section 1 of this Article III. Such examination shall be
performed at GE's expense by an authorized representative of GE at any time
during normal working hours.
SECTION 4. LICENSEE shall pay interest to GE from the date due to the
date of payment upon any and all amounts overdue and payable hereunder at a
rate or rates equal to three percent (3.0%) over the published prime rate of
the Xxxxxx Guaranty Trust Company, New York, as in effect from time to time
during the period that any such amount is overdue, compounded annually.
ARTICLE IV
TERM AND TERMINATION
SECTION 1. This Agreement shall become effective as of the date first
above written, and shall continue in effect, unless sooner terminated as
elsewhere provided in this Agreement, for a period of five (5) years from
such effective date.
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SECTION 2.
(a) If LICENSEE shall at any time default in rendering any of the
statements required hereunder, or in the payment of any monies due
hereunder, or in fulfilling any of the other obligations or conditions hereof,
and such default shall not be cured within thirty (30) days after written
notice from GE to LICENSEE specifying the nature of the default, GE shall
have the right to terminate this Agreement by giving written notice of
termination to LICENSEE at any time thereafter, and upon the giving of such
notice of termination this Agreement shall thereupon terminate. LICENSEE
shall have the right to cure any such default up to but not after the date of
the giving of such notice of termination.
(b) GE shall also have the right to terminate this Agreement, to
the full extent permitted by law, by giving written notice of termination to
LICENSEE at any time upon or after the filing by LICENSEE of a petition in
bankruptcy or insolvency, or upon or after any adjudication that LICENSEE is
bankrupt or insolvent, or upon or after the filing by LICENSEE of any
petition or answer seeking reorganization, readjustment or arrangement of the
business of LICENSEE under any law relating to bankruptcy or insolvency, or
upon or after the appointment of a receiver for all or substantially all of
the property of the LICENSEE, or upon or after the making by LICENSEE of any
assignment or attempted assignment for the benefit of creditors, or upon or
after the institution of any proceedings for the liquidation or winding up of
LICENSEE's business or for the termination of its corporate charter; and this
Agreement shall terminate upon the giving of such notice of termination.
SECTION 3. Upon termination of this Agreement, by expiration or
otherwise, the licenses and the obligations hereunder shall cease and
terminate, except that such licenses shall continue as to all specific units
of CONTRACT APPARATUS
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manufactured by LICENSEE prior to, or actually in manufacture upon, the date
of termination of this Agreement and CONTRACT APPARATUS services rendered
prior to, or agreed to be rendered upon, said date of termination, to the
extent to which compensation has been paid to GE in accordance with Article
III hereof with respect to such units and/or services. No termination of this
Agreement by expiration or otherwise shall release LICENSEE from any of its
obligations accrued hereunder or rescind or give rise to any right to rescind
anything done or any payment made hereunder prior to the time such
termination became effective.
SECTION 4. No failure or delay on the part of GE in exercising its right
of termination hereunder for any one or more causes shall be construed to
prejudice its right of termination for such or for any other or subsequent
cause.
ARTICLE V
MISCELLANEOUS
SECTION 1. This Agreement shall be binding upon and inure to the benefit
of the SUBSIDIARIES and successors in interest of the parties, and the
assigns of GE. Should all, or substantially all, of the business of LICENSEE
relating to CONTRACT APPARATUS be transferred by LICENSEE, LICENSEE's rights
and obligations under this Agreement may be assigned to the transferee of
such business upon the written consent of GE, which consent shall not be
unreasonably withheld. Such rights and obligations shall not be otherwise
assignable by LICENSEE in whole or in part. At any time, upon request of GE,
LICENSEE shall supply to GE in writing a complete list of its
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SUBSIDIARIES and AFFILIATED COMPANIES current as of the date of such request
unless otherwise stated in that request. Thereafter LICENSEE shall notify GE
in writing of any changes therein within thirty (30) days after any such
change.
SECTION 2. GE makes no warranty or representation with respect to the
issuance, validity, scope or duration of any of GE's PATENTS, and GE shall
not be held responsible should any of GE's PATENTS be prematurely terminated
for any cause whatsoever.
SECTION 3. All matters relating to this Agreement, including its
construction and performance, shall be governed by the law of the State of
New York.
SECTION 4. Any notice required or permitted to be given hereunder shall
be in writing, and in the case of LICENSEE shall be addressed to:
Princeton Video Image, Inc.
00 Xxxxxxxx Xxxx
Xxxxxxxxxxxxx, XX 00000
and in the case of GE to:
General Electric Company
GE and RCA Licensing Management Operation, Inc.
Postal Address: Courier Address:
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X.X. Xxx 0000 Two Independence Way
Princeton, N. J. 08543-2023 Princeton, N. J. 00000
X.X.X. X.X.X.
Facsimile: 000-000-0000
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SECTION 5. This Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter of this Agreement
and merges all prior discussions, negotiations and agreements, written, oral
or implied, between them relating to the subject matter, and neither of the
parties shall be bound by any conditions, definitions, warranties or
representations with respect to the subject matter of this Agreement, other
than as expressly provided in this Agreement or as duly set forth on or
subsequent to the date hereof in writing and signed by a proper and duly
authorized representative of the party to be bound thereby.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the day and year first above written.
GENERAL ELECTRIC COMPANY PRINCETON VIDEO IMAGE, INC.
By: /s/ Xxxxx X. Xxxxxxxx By: /s/ Xxxxx F Xxxxxxxx
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Xxxxx X. Xxxxxxxx Xxxxx F Xxxxxxxx, Chairman
of the Board
Date: November 17, 1997 Date: November 17, 1997
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