Exhibit 10.2
LICENSE AGREEMENT
This License Agreement ("License") is made on July 17, 1998 by and between
NDTC Technology, Inc., a Colorado corporation ("Licensor"), and General
Instrument Corporation, a Delaware corporation ("Licensee"). Licensor and
Licensee sometimes are referred to collectively in this License as "parties" and
each individually as a "party."
RECITALS
Licensor's Affiliate and Licensee are parties to that certain Asset
Purchase Agreement dated June 17, 1998 ("Asset Purchase Agreement"). The
execution and delivery of this License is a condition to the consummation of the
transactions contemplated by the Asset Purchase Agreement.
AGREEMENT
In consideration of the mutual covenants and promises stated in this
License and for good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the parties agree as follows:
1. DEFINITIONS.
1.1 GENERAL DEFINITIONS. Unless expressly stated otherwise in this
License, capitalized terms have the meaning accorded them by the Asset Purchase
Agreement.
1.2 SPECIFIC DEFINITIONS. As used in this License, the following terms
have the
following meanings:
1.2.1 "AFFILIATE" means with respect to a specified Person, another
Person that directly, or indirectly through one or more intermediaries,
controls, or is controlled by, or is under common control with the Person
specified.
1.2.2 "DERIVATIVE WORKS" means any work based on or incorporating the
Software and/or documentation relating thereto, including, but not limited to,
translations, abridgements, condensations, improvements, updates, enhancements,
or any other form in which the Software may be recast, transformed or adapted,
any new material, information or data relating to and derived from the Software,
the preparation, use and/or distribution of which in the absence of this License
or other authorization from the owner, would constitute infringement under
applicable laws.
1.2.3 "DOMESTIC TERRITORY" means the United States of America and Canada.
1.2.4 "END-USER DEVICE" means a unit of receiving, or receiving and
transmitting, equipment possessed by a consumer which is a termination node of a
network. Without limitation, examples of End-User Devices are or may be cable
television converters, satellite receivers, integrated receiver decoders,
pay-per-view modules, personal computers, television sets, telephones, personal
data assistants and other types of equipment, which may contain microprocessors
and may be programmable, and which may combine the functionality of one or more
of the foregoing.
1.2.5 "ENHANCEMENTS" means modifications, additions or substitutions,
other than Maintenance Modifications, made by Licensor to Executable Code or the
Licensed Documentation, that accomplish incidental, performance, structural, or
functional improvements.
1.2.6 "EXECUTABLE CODE" means a series of one or more instructions
executable after suitable processing by a computer or other programmable
machine, without compilation or assembly.
1.2.7 "EXECUTABLE CODE" means executable code of the Software including
executable code for the Enhancements and Maintenance Modifications.
1.2.8 "HITS" means Headend in the Sky-Registered Trademark-, a registered
trademark of Licensor.
1.2.9 "INTERNATIONAL TERRITORY" means the entire world other than the
Domestic Territory.
1.2.10 "LICENSEE DERIVATIVE WORKS" means Derivative works created by
Licensee and/or its employees, agents or contractors.
1.2.11 "LICENSED DOCUMENTATION" means any textual and graphic materials
related to the Executable Code and delivered to Licensee under this License.
1.2.12 "MAINTENANCE MODIFICATIONS" means modifications, updates, or
revisions made by Licensor to the Executable Code, the Licensed Documentation or
any of them, that correct errors, support new releases of operating systems, or
support new models of input-output devices with which any of such Executable
Code is designed to operate.
1.2.13 "MASTER SERVICE AGREEMENT" means the agreement of the same name
entered into by Licensor and Licensee and dated July 17, 1998 pursuant to which
Licensor will provide certain services to manage the Access and Control Business
of Licensee.
1.2.14 "PERSON" means any natural person, corporation, business, trust,
joint venture, association, company, partnership, limited liability company or
other entity, or any government or any agency or political subdivision thereof.
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1.2.15 "SOFTWARE" means the HITS Control Programs, the HITS Support
Programs and the HITS Other programs listed in Schedule 1 to this License.
1.2.16 "SOURCE CODE"means a series of instructions or statements in an
English-like high-level computer language or in a relatively low-level language
such as the assembly language for a particular processor.
1.2.17 "SOURCE CODE" means source code for the Software including source
code for Enhancements and Maintenance Modifications.
1.2.18 "SOURCE CODE DOCUMENTATION" means the materials which Licensor
provides for use with the Source Code.
1.2.19 "TECHNOLOGY" means the Software, the Executable Code, the Licensed
Documentation, the Source Code, the Source Code Documentation, the Enhancements
and Maintenance Modifications.
1.2.20 "TERM" means the term of this License as set forth in Section 4.1.
1.2.21 "TVN" means TVN Entertainment Corporation.
1.2.22 "TVN LICENSE" means the Service and License Agreement entered into
as of June 9, 1997 between Licensor and TVN.
1.2.23 "THIRD PARTY APPLICATIONS" means the third party applications
software programs listed in Schedule 1 to this License.
1.2.24 "THIRD PARTY LICENSES" means the licenses between Licensee and
various third parties in respect of the Third Party Applications which are
necessary to enable Licensee to use the Software.
2. GRANT OF RIGHTS.
2.1 EXECUTABLE CODE LICENSE.
2.1.1 Subject to the terms, conditions and restrictions stated in this
License, Licensor grants to Licensee, without the right to sublicense (apart
from rights granted under Sections 2.1.3 and 2.1.4 hereof): (a) an exclusive
(save as to Licensor, Licensor's Affiliates and TVN (whose rights are those set
forth in the TVN License)), royalty-free right to use the Executable Code and
the Licensed Documentation in the International Territory and in the
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Domestic Territory for the purpose of Licensee engaging in the service of
authorizing End-User Devices as part of the Access and Control Business; (b) a
non-exclusive, royalty-free right to use the Executable Code and Additional
Licensed Documentation in the International Territory and in the Domestic
Territory for the purpose of Licensee engaging in the Access and Control
Business; it being understood and agreed that the rights retained by Licensor
and Licensor's Affiliates pursuant to this Section 2.1.1 shall not include the
right to license a third party (other than Licensee and TVN to the extent set
forth in the TVN License) to use the Executable Code and the Licensed
Documentation for the purpose of authorizing consumers to utilize End-User
Devices.
2.1.2 Subject to Section 2.1.3 and 2.1.4, the licenses granted in Section
2.1.1 are solely for Licensee's use and not for use with, for or on behalf of
any third party (other than in connection with Licensee performing End-User
Device authorization services for third parties or Licensee performing the
services of the Access and Control Business).
2.1.3 Licensee may sublicense the Executable Code as incorporated into a
computing device for use as part of that device by cable system operators and/or
end-users who are receiving access and control services from Licensee, provided
that Licensee requires that each such cable system operator or end-user, as the
case may be, enter into an agreement containing language previously approved by
Licensor, which approval shall not be unreasonably withheld or delayed, which
affords reasonable protection to Licensor's rights in the Executable Code.
2.1.4 Subject to Licensor's prior written consent, which approval shall
not be unreasonably withheld or delayed, and subject to Section 2.1.6, Licensee
may sublicense the Executable Code and the Licensed Documentation on the terms
of Section 2.1.1 to a joint venture partner of Licensee in connection with the
business of the joint venture conducted in the International Territory. As a
condition of giving its consent, Licensor may require that the joint venture
partner enter into an agreement for the benefit of Licensor under which the
joint venture partner agrees to be bound by the terms of this License and which
otherwise affords Licensor reasonable protection of its rights, such agreement
to be reasonably acceptable to Licensor.
2.1.5 Licensee may sublicense the Executable Code to any or all of the
following wholly-owned subsidiaries of Licensee for use in the Access and
Control Business, provided that each such sublicensee shall enter into an
agreement for Licensor's benefit agreeing to be bound by the terms of this
License and providing that the sublicense shall terminate in the event that the
sublicensee is no longer wholly-owned by Licensee:
(i) Access Control Center, Inc.;
(ii) DBS Services, Inc.;
(iii) General Instrument Authorization Services, Inc.; and
(iv) General Instrument (Canada), Inc.
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2.1.6 Licensee may not export the Executable Code or the Licensed
Documentation, in whole or in part, or any copies thereof, out of the Domestic
Territory without Licensor's prior written consent, which consent shall not be
unreasonably withheld or delayed. As a condition of giving that consent
Licensor may impose restrictions on the geographic location of any export, may
require Licensee to comply with security arrangements and may impose other
requirements that Licensor believes are reasonably necessary for the protection
of Licensor's rights in the Executable Code and the Licensed Documentation, and
that may be necessary to ensure compliance with U.S. export laws.
2.2 COPIES. Licensee (or a permitted sublicensee under Sections 2.1.3,
2.1.4 or 2.1.5 hereof) may make copies of the Licensed Documentation that
accompanies the Executable Code in support of Licensee's authorized use of the
Executable Code. Licensee may also make such copies of the Executable Code as
are necessary for Licensee (or a permitted sublicensee under Sections 2.1.3 or
2.1.4 hereof) to use the Executable Code in accordance with this License.
Licensee may not decompile, disassemble, reverse engineer, copy, create a
derivative work, or otherwise use, reproduce, modify, or distribute the
Executable Code except as stated in this License.
2.3 OTHER REQUIRED SOFTWARE AND AUTHORIZATIONS. This License does not
include any sublicense of or other right with respect to any of the Third Party
Applications. Licensee acknowledges that (i) hardware and software other than
the Software will be required in order for the Licensee to be able to use the
Software in accordance with Section 2.1, and (ii) the authorization of certain
third parties may be necessary for Licensee's use of the Third Party
Applications. Licensee shall be responsible for obtaining licenses for its use
of the Third Party Applications on or before August 31, 1998. Licensor shall
reasonably cooperate with Licensee in Licensee's securing such licenses for
Third Party Applications. In addition, Licensor and Licensee will jointly
approach Oracle with respect to negotiating such licenses that Licensee may
require from Oracle for the Third Party Applications and negotiating a separate
agreement for support of such licenses by Oracle for the benefit of Licensee.
Licensor and Licensee will use their reasonable commercial efforts to complete
the agreements with Oracle on or before August 31, 1998.
2.4 SOURCE CODE LICENSE.
2.4.1 Subject to the terms, conditions and restrictions stated in this
License, Licensor grants to Licensee: (a) an exclusive (save as to Licensor,
Licensor's Affiliates and TVN (whose rights are set forth in the TVN License)),
royalty-free license (without the right to sublicense) to use the Source Code,
including all machine readable programs, program listings and the Source Code
Documentation in the Domestic Territory and the International Territory for the
purpose of Licensee engaging in the service of authorizing End-User Devices as
part of the Access and Control Business; and (b) a non-exclusive, royalty-free
license (without the right to
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sublicense) to use the Source Code, including all machine readable programs,
program listings and the Source Code Documentation in the Domestic Territory and
the International Territory for the purpose of Licensee engaging in the Access
and Control Business; it being understood and agreed that the rights retained by
Licensor and Licensor's Affiliates pursuant to this Section 2.4.1. shall not
include the right to license a third party (other than Licensee and TVN to the
extent set forth in the TVN License) to use the Source Code and the Source Code
Documentation for the purpose of authorizing consumers to utilize End-User
Devices.
2.4.2 Licensee shall use the Source Code only for its own use. The
licenses granted in Section 2.4.1 and 2.4.4 do not grant to Licensee any right
to use the Source Code with or for or on behalf of any third party (other than
in connection with Licensee performing End-User Device authorization services
for third parties or Licensee performing the services of the Access and Control
Business).
2.4.3 Licensee may make copies of the Source Code and the Source Code
Documentation, only to the extent necessary to enable Licensee to exercise its
rights under Sections 2.4.1 and 2.4.4 provided that:
(a) Licensee places any copies in a secure location, notifies Licensor in
writing within 5 business days of making the copy of the address of the
location, and does not move the copy from that location without notifying
Licensor in writing of the new location within 5 business days of the move;
(b) Licensee does not export the Source Code or the Source Code
Documentation, in whole or in part, or any copy thereof out of the Domestic
Territory without Licensor's prior written consent. As a condition of
giving that consent Licensor may impose restrictions on the geographic
location of any export, may require Licensee to comply with security
arrangements and may impose other requirements which Licensor believes are
reasonably necessary for the protection of Licensor's rights in the Source
Code and the Source Code Documentation and that may be necessary to ensure
compliance with U.S. export laws.
2.4.4 Subject to the terms, conditions and restrictions stated in this
License, Licensor grants to Licensee, a non-exclusive, royalty-free license,
without the right to sublicense, to modify the Source Code and the Source Code
Documentation to create Derivative Works for use by the Licensee in the Access
and Control Business.
2.4.5 Licensor retains all rights in the Source Code and the Software and
the right of modification granted in Section 2.4.4 does not modify any of such
rights. Notwithstanding the foregoing, Licensee shall be the sole owner of the
Licensee Derivative Works. Licensee hereby grants to Licensor a non-exclusive,
irrevocable, royalty free license,
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with the right to sublicense to Licensor's Affiliates, to use, reproduce and
modify the Licensee Derivative Works. Licensee agrees to execute (in recordable
form where appropriate) any instruments and/or documents as Licensor may
reasonably request to give effect to this Section 2.4.5 and Section 2.4.7.
2.4.6 Licensor will deliver to Licensee the Source Code and the Source
Code Documentation in a form agreed by the Parties.
2.4.7 Licensee shall cause all modifications to the Source Code to be
fully and completely documented and shall within six (6) weeks after creation of
the modification deposit a copy of the documentation together with a copy of the
modification with Licensor at the address listed for Licensor in Section 9
hereof.
2.5 TITLE. Apart from rights expressly granted under this License,
title and all ownership and proprietary rights to the Technology (including
without limitation copyright, patent and trade secret rights) in all its
expressions shall remain in Licensor, and Licensee shall take no action
inconsistent with such title, ownership and proprietary rights. The original
and any copies of the Technology or any part thereof which are made by Licensee
shall be the property of Licensor.
2.6 LIMITATION. Unless expressly stated otherwise in the License,
Licensee shall not permit any other person or entity to make any use of the
Technology whatsoever.
2.7 PROPRIETARY NOTICES. Licensee shall not remove any copyright
notices, trademark notices or other proprietary legends of Licensor contained in
or on the Technology.
2.8 SECURITY. Licensee shall insure that the Technology, any copies of
thereof, and any information and materials relating to the Technology in the
custody of Licensee shall be protected at all times from unauthorized access or
use by a third party, or misuse, damage or destruction by any person.
3. DELIVERY, INSTALLATION, TRAINING AND MAINTENANCE.
3.1 DELIVERY. On or before commencement of the Term, Licensor will
furnish to Licensee one copy of each of the Executable Code and the Licensed
Documentation.
3.2 TRAINING.
(a) Unless otherwise provided in the Master Service Agreement,
Licensor will provide up to sixteen (16) staff hours of training to
Licensee's nominated personnel at no charge to Licensee in respect
of (i) the Technology as originally delivered to
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Licensee and (ii) each Enhancement. At the request of Licensee,
Licensor will provide additional training at $200 per staff hour.
(b) Licensee will provide up to sixteen (16) staff hours of
training to Licensor's nominated personnel at no charge to Licensor
in respect of each of Licensee's Derivative Works. At the request
of Licensor, Licensee will provide additional training at $200 per
staff hour.
3.3 DOCUMENTATION. Licensor will furnish to Licensee one copy of the
documentation listed in Schedule 2 to this License.
3.4 MAINTENANCE AND ENHANCEMENTS. During the Term, Licensor shall
deliver to Licensee Enhancements and Maintenance Modifications if, as and when
such Enhancements and Maintenance Modifications are developed by Licensor.
Licensee shall use the Enhancements and the Maintenance Modifications in
accordance with Section 2. Except as may be provided in the Master Service
Agreement, Licensor shall have no obligation to deliver any other Enhancements
or modifications to or versions or releases of the Software.
4. TERM AND TERMINATION
4.1 TERM AND TERMINATION. This License shall become effective on the
Closing Date and shall continue for a period of twenty (20) years, unless
earlier terminated in accordance with this Section 4. Termination is permitted
for material breach of this License, upon thirty (30) days written notice to the
other party and an opportunity to cure within such thirty (30) day period. In
addition, Licensee may terminate this License for convenience by providing
thirty (30) days prior written notice to Licensor.
4.2 INSOLVENCY OF LICENSEE OR LICENSOR. This License shall terminate
automatically upon the happening of any of the following events:
(a) The filing by Licensee of a voluntary petition in bankruptcy
or an assignment for the benefit of creditors; or
(b) The filing against the Licensee of an involuntary petition
in bankruptcy unless such petition is dismissed within ninety (90)
days of filing;
This License shall not terminate upon the bankruptcy of Licensor.
4.3 EFFECT OF TERMINATION. Upon termination of this License for any
reason, Licensee's rights under this License shall cease, and Licensee shall
immediately:
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(a) Return to Licensor all copies of the Technology or any of it, and
all information relating to the Technology, however embodied, to
Licensor, except information related to Licensee's own technology
or Licensee's Derivative Works;
(b) Permanently destroy or disable all copies of the Technology in
Licensee's possession or control; and
(c) Provide Licensor with a written statement certifying that Licensee
has complied with the foregoing obligations, all rights and
licenses.
4.4 NO LIABILITY FOR EXPIRATION OR LAWFUL TERMINATION. Neither party
shall have the right to recover damages or to indemnification of any nature,
whether by way of lost profits, expenditures for promotion, payment for goodwill
or otherwise, made in connection with the business contemplated by this License,
due to the permitted or lawful termination of this License. EACH PARTY WAIVES
AND RELEASES THE OTHER FROM ANY CLAIM TO COMPENSATION OR INDEMNITY FOR
TERMINATION OF THE BUSINESS RELATIONSHIP CONTEMPLATED BY THIS LICENSE UNLESS
TERMINATION IS IN MATERIAL BREACH OF THIS LICENSE.
5. CONFIDENTIAL INFORMATION.
5.1 PROPRIETARY INFORMATION. Licensee acknowledges that the Technology
is confidential proprietary information belonging to Licensor which embodies
substantial trade secrets of Licensor and Licensee will take all reasonable
steps to maintain its confidential proprietary nature. Licensee will not
disclose the Technology or any portion thereof, to any third party without
Licensor's prior written consent. The foregoing restriction shall not apply
with respect to any information which (i) is expressly permitted by this License
to be disclosed; (ii) is or becomes generally available to the public through
any means other than by breach by the Licensee of its obligations under the
License; (iii) was in the possession of Licensee as of the date of this License
as evidenced by written records in Licensee's possession as at such date; (iv)
is disclosed in order to comply with an order of a court or governmental agency
of competent jurisdiction, provided that Licensee gives to Licensor immediate
notice of such order and cooperates with Licensor in using all reasonable
efforts to obtain an appropriate protective order or equivalent; (v) is
independently developed or formulated by Licensee without use of the Technology
as evidenced by written records in Licensee's possession.
5.2 REMEDIES. Licensor and Licensee each acknowledge that disclosure
or use of the Technology or Licensee Derivative Works in violation of Sections 2
or 5 of this License would cause irreparable harm to Licensor and Licensee for
which monetary damages may be difficult to ascertain or an inadequate remedy.
Each party therefore acknowledges that the other party will
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have the right, in addition to its other rights and remedies, to seek and obtain
injunctive relief for any violation of Sections 2 or 5 of this License.
6. REPRESENTATIONS AND WARRANTY
6.1 LICENSOR REPRESENTATIONS. Licensor warrants and represents to
Licensee that:
6.1.1 It is duly organized, validly existing and in good standing
under the laws of each jurisdiction in which its activities require such
qualification;
6.1.2 The execution, delivery and performance of this License have
been duly authorized by all necessary corporate action and this License
constitutes the legal, valid and binding obligation of Licensor, enforceable in
accordance with its terms against Licensor except as such enforceability may be
affected by bankruptcy, reorganization, insolvency, moratorium or laws affecting
creditors' rights generally or by general principles of equity;
6.1.3 It has full corporate power and authority to enter into this
License and to perform its obligations hereunder;
6.1.4 It is the sole owner of the Technology or otherwise has
authority to grant the rights licensed hereunder to Licensee;
6.1.5 The execution and delivery of this License, and the
performance by Licensor of its obligations hereunder, will not violate, breach,
conflict with or cause a default under any law, rule, regulation, order,
agreement or instrument to which Licensor is a party or by which it is bound, or
of Licensor's constituent documents;
6.1.6 No consent, approval or authorization of any person is
needed in order for Licensor to perform its obligations pursuant to this
License; and
6.1.7 Listed in Schedule 1 is a true, correct and complete list of
all Third Party Licenses which are necessary under Section 2.1 for the
effectiveness of the licenses granted thereunder.
6.1.8 Each employee, consultant or agent of Licensor who is
developing or who will develop Technology for Licensor is or will be (as the
case may be) obligated by contract to assign to Licensor all of such Technology.
6.2 LICENSEE REPRESENTATIONS. Licensee warrants and represents to
Licensor that:
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6.2.1 It is duly organized, validly existing and in good standing
under the laws of each jurisdiction in which its activities require such
qualification;
6.2.2 The execution, delivery and performance of this License have
been duly authorized by all necessary corporate action and this License
constitutes the legal, valid and binding obligation of Licensee, enforceable in
accordance with its terms against Licensee except as such enforceability may be
affected by bankruptcy, reorganization, insolvency, moratorium or laws affecting
creditors' rights generally or by general principles of equity;
6.2.3 It has full corporate power and authority to enter into this
License and to perform its obligations hereunder;
6.2.4 The execution and delivery of this License, and the
performance by Licensee of its obligations hereunder, will not violate, breach,
conflict with or cause a default under any law, rule, regulation, order,
agreement or instrument to which Licensee is a party or by which it is bound, or
of Licensee's constituent documents;
6.2.5 No consent, approval or authorization of any person is
needed in order for Licensee to perform its obligations pursuant to this
License; and
6.2.6 Each employee, consultant or agent of Licensor who is
developing or who will develop the Licensee Derivative Works for Licensee is or
will be (as the case may be) obligated by contract to assign to Licensee all of
such Licensee Derivative Works.
6.2.7 The entities listed in Section 2.1.5 are wholly-owned
subsidiaries of Licensee.
6.3 LIMITED WARRANTY. Licensor represents and warrants that the
media, if any, on which the Technology is recorded will be free from defects in
materials and workmanship for a period of ninety (90) days after delivery.
Licensor's sole liability with respect to breach of this warranty is to replace
the defective media.
6.4 GENERAL DISCLAIMER. EXCEPT AS SPECIFIED IN THIS LICENSE, THE
TECHNOLOGY AND LICENSEE DERIVATIVE WORKS ARE PROVIDED "AS IS" AND ALL OTHER
REPRESENTATIONS AND WARRANTIES, INCLUDING ANY IMPLIED WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT OF THE
TECHNOLOGY, ARE HEREBY DISCLAIMED. LICENSOR SHALL HAVE NO LIABILITY WHATSOEVER
IN RELATION TO THE LICENSEE DERIVATIVE WORKS. SUBJECT TO SECTION 7.5, LICENSEE
SHALL HAVE NO LIABILITY WHATSOEVER IN RELATION TO THE TECHNOLOGY.
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6.5 LIMITATION. The limited warranty set forth in Section 6.3 is
expressly subject to Section 6.6.
6.6 LIMITATION OF LIABILITY. EXCEPT FOR DAMAGES PAYABLE TO A THIRD
PARTY FOR WHICH A PARTY IS REQUIRED TO INDEMNIFY ANOTHER PARTY PURSUANT TO
SECTIONS 7.2 AND 7.5 HEREOF OR A BREACH OF SECTIONS 2 OR 5 HEREOF, IN NO EVENT
WILL EITHER PARTY BE LIABLE FOR ANY INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL
OR PUNITIVE DAMAGES IN CONNECTION WITH OR ARISING OUT OF THIS LICENSE
(INCLUDING LOSS OF PROFITS, USE, DATA, OR OTHER ECONOMIC ADVANTAGE), NO MATTER
WHAT THEORY OF LIABILITY, EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OR PROBABILITY OF SUCH DAMAGES, FURTHER, LIABILITY FOR SUCH DAMAGES
SHALL BE EXCLUDED, EVEN IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN THIS LICENSE
FAIL OF THEIR ESSENTIAL PURPOSE.
The provisions of this Section 6.6 allocate the risks under this License
between Licensor and Licensee and the parties have relied upon the limitations
set forth herein in determining whether to enter into this License.
7. LIMITED INDEMNITY.
7.1 PRE-RELEASE. The parties acknowledge that the Technology may be in
pre-release form and that Licensor shall not be liable for any defects or
deficiencies in the Technology, process or design created by, with or in
connection with the Technology whether or not such defects and/or document
deficiencies are caused, in whole or in part, by defects or deficiencies in the
design or implementation of the Technology or Licensed Documentation. Upon
first commercial release of the Technology by Licensor, Licensor will provide to
Licensee a limited indemnity as described in Sections 7.2 and 7.3 below.
7.2 INDEMNITY. Licensor shall indemnify and hold harmless Licensee and
its permitted sublicensees against any claim that the use by Licensee or its
permitted sublicensees of the Technology violates the U.S. patent, copyright or
trade secret rights of any third party, provided that Licensee: (i) provides
notice of the claim promptly to Licensor; (ii) gives Licensor sole control of
the defense and settlement of the claim; (iii) provides to Licensor, at
Licensor's expense, all available information, assistance and authority to
defend; and (iv) has not compromised or settled such proceeding without
Licensor's prior written consent. The indemnity set forth in this Section 7.2
shall not apply in any situation where the claim relates to (x) any technology
or intellectual property incorporated in the Technology or used in the
development of the Technology which technology or intellectual property is
licensed by Licensee to Licensor or any Affiliate of Licensor under any
agreement, (y) the modification of the Technology by Licensee or (z) the use of
the Technology together with other hardware or software not
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previously approved by Licensor, but only to the extent that the claim is based
on such combined use.
7.3 REMEDIATION. Should the Technology, or any portion thereof
become, or in Licensor's opinion be likely to become, the subject of a claim of
infringement for which indemnity is provided under Section 7.2, Licensor shall,
in addition to the obligations specified in Section 7.2, as Licensee's sole and
exclusive remedy, elect to: (i) obtain for Licensee the right to use such
Technology; (ii) replace or modify the Technology so that it becomes
non-infringing; or if alternatives (i) or (ii) are not commercially practicable;
(iii) accept the return of the Technology and reimburse to Licensee the costs
incurred in returning the Technology (provided that in such event, Licensee
agrees to use reasonable efforts to minimize such costs by deactivating such
Technology from a central facility to the extent reasonably possible).
7.4 LIMITATION. THIS SECTION 7 STATES THE ENTIRE LIABILITY OF LICENSOR
WITH RESPECT TO INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS BY THE
TECHNOLOGY, LICENSOR SHALL HAVE NO OTHER LIABILITY WITH RESPECT TO INFRINGEMENT
OF INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY AS A RESULT OF USE, LICENSE,
OR SALE OF TECHNOLOGY OR TOOLS.
7.5 INDEMNITY BY LICENSEE. Except for claims for which Licensor is
obligated to indemnify Licensee under Section 7.2, Licensee shall defend, at
Licensee's expense, any and all claims brought against Licensor by third
parties, and shall pay all damages awarded by a court of competent jurisdiction,
or such settlement amount negotiated by Licensee, arising out of or in
connection with (a) Licensee's use, reproduction, modification or distribution
of the Technology or the Licensee Derivative Works or any of them or (b)
Licensee's failure to obtain the Third Party Licenses. Licensee's obligation to
provide indemnification under this Section 7.5 shall arise provided that
Licensor: (i) provides notice of the claim promptly to Licensee; (ii) gives
Licensee sole control of the defense and settlement of the claim; (iii) provides
to Licensee, at Licensee's expense, all available information, assistance and
authority to defend; and (iv) has not compromised or settled such proceeding
without Licensee's prior written consent.
8. ATTORNEYS' FEES AND COSTS. If any suit is brought or an attorney retained
to collect any money due under this License, or to collect a judgment for breach
of this License, the prevailing party shall be entitled to recover, in addition
to any other remedy, reimbursement for attorneys' fees, court costs,
investigation costs and other related expenses incurred in connection therewith.
9. NOTICE. All notices, requests, demands and other communications called
for or contemplated hereunder will be in writing and will be deemed to have been
duly given if delivered when deposited in the United States mail, first class
postage prepaid, addressed as follows, or to any other address of which a party
gives notice to the other:
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If to Licensor to:
NDTC Technology, Inc.
0000 Xxxx Xxx Xxxxx Xxxx
Xxxxxxxxx, XX 00000
Attn: Xxxxx Xxxxxx
with a copy to:
Tele-Communications, Inc.
0000 XXX Xxxxxxx
Xxxxxxxxx, XX 00000
Attn: Legal Department
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If to Licensee to:
General Instrument Corporation
000 Xxxxxxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: Xxxxxx X. Xxxxx, Esq.
Vice President- Legal
10. AUDIT
In furtherance of Licensor's rights hereunder, Licensor may, at Licensor's
initial expense and without notice to Licensee but during Licensee's normal
business hours, enter upon any of Licensee's premises to audit Licensee's
compliance with the terms of this License. In the event that Licensor
discovers, during the course of such audit, that License has materially violated
any of the terms of this License, then in addition to all other remedies
available to Licensor, Licensee shall be responsible for payment of all costs of
such audit.
11. MISCELLANEOUS
11.1 MODIFICATION. This License may not be modified other than by a
written amendment executed by each of the parties hereto.
11.2 GOVERNING LAW. This License shall be construed in accordance with
the laws of the Xxxxx xx Xxxxxxxx xxx xx xxx Xxxxxx Xxxxxx.
11.3 SEVERABILITY. If any provision or part thereof in this License is
held invalid, illegal or unenforceable for any reason, the remainder of this
License will nonetheless remain in full force and effect.
11.4 TAXES. Licensee shall pay any and all sales, use, excise or other
taxes (other than taxes measured on the gross income of Licensor) assessed or
payable by reason of or with respect to this License.
11.5 BINDING AGREEMENT. This License will benefit and be binding upon
the parties hereto and their respective heirs, representatives, successors and
permitted assigns.
11.6 HEADINGS. The headings in this License are for purpose of
reference only and shall not be construed as part of this License.
11.7 ENTIRE AGREEMENT. This License and, to the extent terms are
incorporated from such agreements or reference is made thereto, the Asset
Purchase Agreement and the Master
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Service Agreement constitute the entire understanding and agreement of the
parties hereto with respect to the licensing of the Technology and supersede all
prior agreements and understandings, written or oral, among any of the parties
with respect to such subject matter.
11.8 TRANSFER RESTRICTIONS. Licensee may not assign any of its rights
or delegate any of its duties under this License without Licensor's prior
written consent. Any attempted assignment or delegation without consent shall
be null and void. Licensor may assign its rights and delegate its duties under
this License without Licensee's consent, provided, however, that (i) Licensee's
consent shall be required in the case of a direct assignment to a competitor of
Licensee in the Access and Control Business, and (ii) Licensee's consent shall
be required in connection with a sale of the stock of Licensor to a competitor
of Licensee in the Access and Control Business or a merger of Licensor with a
competitor of Licensee in the Access and Control Business, unless such direct
assignment, sale of stock or merger of Licensor is part of a larger transaction
that involves other Affiliates of Licensor.
11.9 U.S. GOVERNMENT RESTRICTED RIGHTS. The Technology is provided to
Licensee with Restricted Rights. Use, duplication or disclosure of the
Technology to, by or on behalf of the U.S. Government, its agencies and/or
instrumentalities (the "Government") is subject to the restrictions stated in
subparagraph (c)(1)(ii) or the Rights in Technical Data and Computer Software
clause at DFARS 252.227-7013, or subparagraphs (c)(1) and (2) of the Commercial
Computer Software --- Restricted Rights at 48 CFR 52.227-19, and/or the
particular department or agency regulations or rules which provide Licensor with
protection equivalent to or greater than such cited clauses and subparagraphs.
Licensee shall comply with all requirements of the Government to obtain such
Restricted Rights protection. The manufacturer of the Technology is National
Digital Television Center, Inc., 0000 Xxxx Xxx Xxxxx Xxxx, Xxxxxxxxx, Xxxxxxxx
00000.
11.10 COMPLIANCE WITH LAWS. The Technology is subject to U.S. export
control laws, including the U.S. Export Administration Act and its associated
regulations, and may be subject to export or import regulations in other
countries. Licensee agrees to comply strictly with all such regulations and
acknowledges that it has the responsibility to obtain such licenses to export,
re-export or import the Technology, Documentation or Product(s) as may be
required after delivery of the Technology to Licensee. Licensee shall make
reasonable efforts to notify and inform its employees having access to the
Technology of Licensee's obligation to comply with the requirements stated in
this Section 11.10.
11.11 SURVIVAL. The parties' rights and obligations under Sections
2.4.5, 2.4.7, 4, 5, 6.6,7, 8, 9, 10 and 11 shall survive expiration or
termination of this License.
11.12 NO WAIVER. The failure of either party to enforce a provision of
this License shall not be deemed a waiver of that provision.
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11.13 DISCLAIMER OF FRANCHISE. The relationship created hereby is that
of licensor and licensee and the parties acknowledge and agree that nothing
herein shall be deemed to constitute Licensee as a franchisee of Licensor.
Licensee hereby waives the benefit of any state or federal statues dealing with
the establishment and regulation of franchises.
11.14 RELATIONSHIP OF THE PARTIES. It is expressly understood that the
parties intend by this License to establish the relationship of independent
contractors, and do not intend to undertake the relationship of principal and
agent or to create a joint venture or partnership between themselves or their
respective successors in interest. Neither party shall have any authority to
create or assume, in the name of or on behalf of the other party any obligation,
expressed or implied, nor to act or purport to act as an agent or legally
empowered representative of the other party hereto for any purpose whatsoever.
11.15 FORCE MAJEURE. Neither party will be in default or otherwise
liable for any delay in or failure of its performance under this License where
such delay or failure arises by reason of any Act of God, acts of the common
enemy, the elements, electrical storms, earthquake, floods, fires or other
natural disasters, epidemics, quarantine restrictions, national emergency or
war, sabotage, acts, acts of governmental authority, willful or criminal
misconduct of third parties, strikes, failure or delay in transportation,
freight embargoes or other causes beyond its control ("Force Majeure"); provided
that financial inability does not constitute an event of Force Majeure.
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The parties have caused this License to be executed by their duly
authorized representatives or officers as of the date first above written.
LICENSOR: LICENSEE:
NDTC TECHNOLOGY, INC., GENERAL INSTRUMENT CORPORATION,
a Colorado corporation a Delaware corporation
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxx
---------------------------- ------------------------------
Title: Vice President Title: Executive Vice President
------------------------- ---------------------------
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