Exhibit 10.1
Confidential treatment has been requested for portions
of this exhibit. The copy filed herewith omits the
information subject to the confidentiality request.
Omissions are designated as [*]. A complete version of
this exhibit has been filed separately with the
Securities and Exchange Commission.
TIVO-SONY ELECTRONICS US FALCON AGREEMENT
This TIVO-SONY ELECTRONICS US FALCON AGREEMENT (this "Agreement") is
entered into as of August 8, 2002 (the "Effective Date") by and between SONY
ELECTRONICS INC., acting through its Digital Platform Division of America, a
Delaware corporation having a principal place of business at 00000 Xxxx Xxxxxxxx
Xxxxx, Xxx Xxxxx, XX 00000 ("Sony Electronics"), and TIVO INC., a Delaware
corporation having its principal place of business at 0000 Xxxx Xxxxxx, Xxxxxx,
Xxxxxxxxxx 00000 ("TiVo").
RECITALS
WHEREAS, TiVo and SONY CORPORATION, a Japanese corporation having its
principal place of business at 0-0-00 Xxxxxxxxxxxxx, Xxxxxxxxx-xx, Xxxxx
000-0000 Xxxxx ("Sony Corporation") have entered into that certain TiVo Inc.
Technology License Agreement dated October 12, 2001 (the "TLA") pursuant to
which Sony has developed a digital video recorder product for the Japanese
market, known as the Falcon Product as defined below;
WHEREAS, Sony Electronics desires to create a version of the Falcon Product
for the United States market which enables the TiVo Service;
WHEREAS, Sony Electronics wishes to license certain software and obtain
engineering services from TiVo to support Sony's creation of such version of the
Falcon Product; and
WHEREAS, [*] is willing to provide certain incentives to [*]to launch such
version of the Falcon Product in the United States in order to have such version
of the Falcon Products available in retail as soon as possible.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants,
promises and undertakings set forth in this Agreement, Sony Electronics and TiVo
agree as follows:
AGREEMENT
1. DEFINITIONS
1.1 "Advance Payments" is defined in Section 2.3(a) (TLA Prepayment).
1.2 "AWOL/DOA Box" is defined in Section 5.6(b) ([*]Credits).
1.3 "Confidential Information" shall mean any information that one party
(the "Disclosing Party") discloses or makes available to the other party (the
"Receiving Party"), which the Receiving Party knows or should reasonably
understand to be
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
confidential or proprietary to the Disclosing Party. Confidential Information
includes, without limitation, source code, release notes, hardware, trade
secrets, know-how, formulas, flow charts, diagnostic or quality assurance plans
or routines, business information, forecasts, financial plans and data, customer
information, marketing plans, the TiVo Client Software, the TiVo Diagnostic
Software, the TiVo Hardware Reference Design and unannounced product
information. For purposes of this Agreement, each party shall treat all
information disclosed between the parties in the course of negotiating this
Agreement, and the term sheet that preceded this Agreement as the Confidential
Information of the other party. Notwithstanding the foregoing, Confidential
Information shall exclude information the Receiving Party can demonstrate by
reasonably detailed written documentation: (a) was independently developed by
the Receiving Party without any use of the Disclosing Party's Confidential
Information or by the Receiving Party's employees or other agents (or
independent contractors hired by the Receiving Party) who have not been exposed
to the Disclosing Party's Confidential Information prior to or at the time that
such development occurred; (b) became known to the Receiving Party, without
restriction, from a source having a right to disclose such information (other
than the Disclosing Party) without breach of this Agreement; (c) was in the
public domain at the time it was disclosed or enters the public domain through
no act or omission of the Receiving Party; (d) was rightfully known by the
Receiving Party, without restriction, at the time of disclosure; or (e) was
approved for disclosure without restriction by the Disclosing Party beforehand
and in writing.
1.4 "End User" shall mean an individual consumer who purchases or
otherwise acquires a US Falcon Product for personal use and not for resale or
further distribution.
1.5 "Engineering Services" is defined in Section 2.1 (Schedule and
Scope).
1.6 "Falcon Product" means that certain digital video recorder product
bearing the internal codename "Falcon," developed by or for Sony pursuant to the
TLA as of the Effective Date for deployment in Japan.
1.7 "LOI" is defined in Section 15.14 (Entire Agreement).
1.8 "Service Revenue" means [*].
1.9 "Sony Electronics Affiliate" means any entity which Sony Electronics,
either directly or indirectly, at any time during the term of this Agreement,
controls, is under common control with or is controlled by. For the purposes of
this definition, control means ownership or the ability to control, directly or
indirectly, one hundred percent (100%) of the securities that have the right to
elect the Board of Directors or similar management group of the entity. A Sony
Electronics Affiliate shall cease to be a Sony Electronics Affiliate on the date
that it no longer meets the criteria set forth above.
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.10 "Sony Electronics Indemnitee" is defined in Section 10.1(a)
(Indemnity).
1.11 "Sony Electronics Manufacturing Subcontractor" means a Third Party
whose primary business is that of manufacturing consumer electronics devices.
1.12 "Statement of Work" means the statement of work for Engineering
Services attached hereto as Exhibit A (Statement of Work).
1.13 "Third Party" means any entity or individual other than Sony
Electronics or TiVo.
1.14 "TiVo Client Software" means [*] which, as of the Effective Date,
enables (a) one touch recording, pausing, rewinding and slow motion viewing of
television programming; (b) the delivery of program schedule, content and other
information to consumer devices; and (c) the updating and revision management of
software installed on consumer devices, and which TiVo may modify or enhance
over time.
1.15 "TiVo Diagnostic Software" means [*].
1.16 "TiVo-Enabled" means, with respect to a digital video recorder
product, the state of having been formally certified by TiVo pursuant to Section
2.2 (Testing and Verification) as meeting the functional and technical
requirements necessary for the digital video recorder product to enable and
operate with the TiVo Service.
1.17 "TiVo Hardware Reference Design" means the hardware reference design
associated with [*] (as that term is defined in Section 1.41(c) of the TLA and
as further described in Exhibit A to the TLA), solely as provided by TiVo in
unmodified form (unless such modification is made at TiVo's direction) to Sony
Corporation pursuant to the TLA.
1.18 "TiVo Marks" means those trademarks or service marks set forth in
Exhibit B (TiVo Marks), as may be amended from time to time.
1.19 "TiVo Property" means the TiVo Client Software, the TiVo Viewer's
Guide and the TiVo Marks.
1.20 "TiVo Service" means the digital video recording services offered
and provided by TiVo in the United States at any given time under the xxxx
"TiVo".
1.21 "TiVo Viewer's Guide" means that documentation provided by TiVo to
Sony Electronics for inclusion with the packing materials of all US Falcon
Products, which describes registration for and usage of the TiVo Service and
contains TiVo's service agreement, privacy policy and end user license
agreement.
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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1.22 "TLA" is defined in the first recital of this Agreement.
1.23 "US Falcon Product" means a Falcon Product modified and manufactured
by or for Sony Electronics so that it functions in the United States and is
TiVo-Enabled.
2. ENGINEERING SERVICES
2.1 Schedule and Scope. The parties will perform those certain
engineering services and provide those certain deliverables described in the
Statement of Work (the "Engineering Services"), and TiVo is not responsible for
any aspects of the development of the US Falcon Product not expressly set forth
in the SOW. Both parties acknowledge that their goal is to have US Falcon
Products available in mass production for the United States retail markets in
[*].
2.2 Testing and Verification. As part of the Engineering Services, TiVo
shall test the US Falcon Product to verify that it properly runs the TiVo Client
Software and is TiVo-Enabled. Sony Electronics shall not ship, and shall not
authorize shipment of, any US Falcon Products prior to receipt of such written
verification from TiVo.
2.3 Engineering Fees, Costs, and Expenses. In consideration of TiVo's
provision of the Engineering Services, Sony Electronics will be responsible for
paying to TiVo the engineering fees, costs, and expenses set forth in the
Statement of Work (the "Engineering Costs"). Without limiting the foregoing,
Sony Electronics will reimburse TiVo for any reasonable travel expenses incurred
by TiVo for any travel made at Sony Electronics' request.
(a) TLA Prepayment. The parties intend for the Engineering Costs to
be credited against certain advance payments previously made to TiVo by Sony
Corporation pursuant to Section 7.1 (TiVo Engineering Services) of the TLA (the
"Advance Payments"), which advance payments were to be applied against future
engineering services provided with Sony Corporation's prior authorization. Sony
Electronics will take all reasonable steps necessary for the Engineering
Services to be credited against such Advance Payments, including without
limitation obtaining the proper authorization and approvals from Sony
Corporation.
(b) Non-Credited Engineering Costs. To the extent that any
Engineering Costs are not fully credited against the Advance Payments for any
reason, then Sony Electronics will pay TiVo directly for the uncredited
Engineering Costs according to the payment schedule set forth in the Statement
of Work. To the extent that there is no payment schedule associated with the
Engineering Costs, TiVo will invoice Sony Electronics on a monthly basis for all
Engineering Costs incurred during the immediately preceding month, and Sony
Electronics will pay all such invoices within [*]days after the receipt of
invoice.
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3. LICENSE GRANTS
3.1 TiVo Client Software and TiVo Diagnostic Software. Subject to the
terms and conditions of this Agreement, TiVo hereby grants solely to Sony
Electronics a nonexclusive, nontransferable, royalty-free license (without the
right to sublicense) solely to:
(a) distribute the TiVo Client Software (in object code form only)
and the [*](as defined in Section 1.15 and in object code form only) solely to
Sony Electronics Manufacturing Subcontractors, solely for purposes of
incorporating the TiVo Client Software in US Falcon Products manufactured by or
for, or marketed, distributed, or sold by Sony Electronics solely within the
United States;
(b) distribute the [*] (as defined in Section 1.15 and in object
code form only) solely to (i) Sony Electronics Manufacturing Subcontractors,
solely for purposes of [*], and (ii) to Sony Electronics' customer service
centers, solely for the purpose of [*];
(c) copy the TiVo Client Software (in object code form only) solely
for purposes of incorporating the TiVo Client Software in US Falcon Products
manufactured by or for, or marketed, distributed, or sold by Sony Electronics
solely within the United States;
(d) distribute (through multiple tiers of distribution) the TiVo
Client Software in object code form only, solely as embedded in US Falcon
Products manufactured by or for, or marketed, distributed, or sold by Sony
Electronics to End Users solely within the United States; and
(e) use the TiVo Client Software in object code form only, as
embedded in a US Falcon Product, solely as necessary to exhibit, demonstrate,
and operate a US Falcon Product in accordance with the TiVo Viewer's Guide, and
to use, copy, publicly perform, and publicly display output generated by the
ordinary operation of the TiVo Client Software (including screen displays and
screenshots), in each case for the purposes of marketing, promoting, and selling
the US Falcon Products within the United States.
3.2 TiVo Viewer's Guide License. Subject to the terms and conditions of
this Agreement, TiVo hereby grants to Sony Electronics a nonexclusive,
nontransferable, royalty-free license (without the right to sublicense) solely
to (a) reproduce and distribute (through multiple tiers of distribution) the
TiVo Viewer's Guide in conjunction with the US Falcon Product to End Users
within the United States, and (b) publicly display the TiVo Viewer's Guide
solely for the purposes of marketing, promoting, and selling the US Falcon
Products within the United States.
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the Securities and Exchange Commission. Confidential treatment has been
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3.3 TiVo Viewer's Guide Obligation. Sony Electronics shall ensure that
all copies of the TiVo Client Software distributed by or for Sony Electronics,
or any of its subdistributors pursuant to Section 3.1(d) above, will be
accompanied by a copy of the TiVo Viewer's Guide.
3.4 Restrictions. Except as expressly set forth above, Sony Electronics
will not, and will not authorize any Third Party to, copy, distribute, publicly
perform, or publicly display the TiVo Client Software, the TiVo Diagnostic
Software or the TiVo Viewer's Guide for any purpose. Sony Electronics shall not,
and shall not allow any Third Party to, attempt to reverse engineer,
disassemble, decompile or similarly manipulate all or any portion of the TiVo
Client Software or the TiVo Diagnostic Software for any purpose.
3.5 Manufacturing Subcontractors. Sony Electronics shall protect TiVo's
rights in the TiVo Client Software and the TiVo Diagnostic Software distributed
to Sony Electronics Manufacturing Subcontractors. Sony Electronics shall use
reasonable diligence to ensure that all Sony Electronics Manufacturing
Subcontractors act in a manner such that Sony Electronics is in compliance with
the terms and conditions of this Agreement, including the use limitations set
forth in Section 3.1(a), 3.1(b) and Section 3.4 (Restrictions). Sony Electronics
will use reasonable diligence to monitor each Sony Electronics Manufacturing
Subcontractor's use of the TiVo Client Software and the TiVo Diagnostic
Software, and will promptly notify TiVo in writing of any action or omission by
a Sony Electronics Manufacturing Subcontractor that would cause Sony Electronics
to be in breach of the terms and conditions of this Agreement, including the use
limitations set forth in Section 3.1(a), 3.1(b) and Section 3.4 (Restrictions).
3.6 Manufacturing Rights. For the avoidance of doubt, except as expressly
set forth herein, all other rights and licenses related to the manufacture,
resale, and distribution of the US Falcon Product are provided to Sony
Electronics pursuant to the TLA and subject to the terms and conditions thereof.
4. IP OWNERSHIP
4.1 TiVo Property, TiVo Diagnostic Software, TiVo Hardware Reference
Design and TiVo Service. As between TiVo and Sony Electronics, TiVo has and
shall retain exclusive ownership of all right, title, and interest in and to the
TiVo Property, the TiVo Diagnostic Software, the TiVo Hardware Reference Design
and the TiVo Service. Except as expressly set forth in Section 3 (License
Grants) or in Section 6.2 (License to TiVo Marks), Sony Electronics has no
rights to the TiVo Property, the TiVo Diagnostic Software, the TiVo Hardware
Reference Design or the TiVo Service.
4.2 All Other Intellectual Property. The parties acknowledge and agree
that Section 9 (Ownership) of the TLA governs ownership of any other
intellectual property that may be used or created in the course of the
development, manufacture, distribution, or sale of the US Falcon Product. The
parties agree that the ownership and treatment of any such intellectual property
will be determined in accordance with Section 9
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(Ownership) of the TLA, and that nothing in this Agreement will operate to
amend, alter, limit, expand, restrict, or otherwise affect Section 9 (Ownership)
of the XXX.
0. INCENTIVES; PAYMENT TERMS
5.1 [*]. Sony Electronics and TiVo hereby agree that [*]shall pay to [*]
of [*] per US Falcon Product manufactured by or for Sony Electronics on or prior
to [*] (a [*]); provided, however, that [*] will only pay such [*]on a [*]of
[*]US Falcon Products.
(a) Clarification. For the sake of clarity, if Sony Electronics
manufactures more than [*]US Falcon Products on or prior to [*],[*]shall only
pay [*]set forth herein on the first [*]US Falcon Products; and if Sony
Electronics manufactures fewer than [*]US Falcon Products on or prior to [*],[*]
shall only pay [*]set forth herein for those US Falcon Products manufactured on
or prior to [*]and shall not pay any [*] on US Falcon Products manufactured
after [*]. In addition, notwithstanding anything to the contrary in this
Agreement, [*] shall not be obligated to pay any [*]on any [*]that is [*] as
[*]providing [*]or functionality of [*] (other than the [*]itself), unless
otherwise agreed in writing by [*].
(b) Adjustments to [*] End Date. To the extent there is a delay in
the mass production of US Falcon Products for sale in United States retail
markets beyond [*]that is proximately caused by [*], the parties shall negotiate
in good faith an appropriate, mutually agreeable modification to the [*]date (or
any other date agreed to as a result of prior negotiation and agreement pursuant
to this Section) to equitably account for any such delays to the extent
proximately caused by [*]; provided, however, that if both Sony Electronics and
TiVo are responsible (proximately or otherwise) for such delay, such
negotiations must take into account the relative responsibilities for such
delay. The parties agree that there will not be any modification to the [*]date
(or any other date agreed to as a result of prior negotiation and agreement
pursuant to this Section) to the extent any such delays are not proximately
caused by [*].
5.2 TiVo Audit Rights. Sony Electronics will keep and maintain accurate
records relating to the manufacture and shipment of US Falcon Products by or for
Sony Electronics. An independent certified public accountant, which shall be
mutually agreed upon by TiVo and Sony Electronics, shall have the right, upon
[*]notice and during regular business hours at Sony Electronics' regular
location for maintenance of such records, to conduct an audit of the relevant
portions of Sony Electronics' books of account solely to verify compliance with
this Agreement. Such auditor shall return all information, other than the audit
results, to Sony Electronics and will only disclose the results of the audit to
TiVo and Sony Electronics. If any such audit should disclose any overstatement
of US Falcon Products manufactured net of AWOL/DOA Boxes, Sony Electronics shall
promptly pay TiVo for any refund that might be due. The audit will be conducted
at TiVo's expense, unless the audit reveals that Sony Electronics has
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requested with respect to the omitted portions.
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overstated the number of US Falcon Products manufactured by [*]or more in any
[*], in which case Sony Electronics will reimburse TiVo for all reasonable costs
and expenses incurred by TiVo in connection with such audit. Such audits will be
conducted no more than once in any period of [*].
5.3 Revenue Share. Sony Electronics and TiVo hereby agree that TiVo shall
pay to Sony Electronics:
(a) until [*],[*]of all Service Revenue generated from Subsidized US
Falcon Products;
(b) until [*],[*]of all Service Revenue generated from any US Falcon
Products other than [*]; and
(c) after [*],[*]of all Service Revenue generated from all US Falcon
Products (whether [*]or not) for so long as such US Falcon Products are in
service.
For the avoidance of doubt, the Service Revenues are intended to be
calculated on a [*]and not on a [*].
5.4 Sony Electronics Audit Rights. TiVo will keep and maintain accurate
records related to the Service Revenue generated by US Falcon Products in the
United States. An independent certified public accountant, which shall be
mutually agreed upon by TiVo and Sony Electronics, shall have the right, upon
[*]notice and during regular business hours at TiVo's regular location for
maintenance of such records, to conduct an audit of the relevant portions of
TiVo's books of account solely to verify compliance with this Agreement. Such
auditor shall return all information, other than the audit results, to TiVo and
will only disclose the results of the audit to Sony Electronics and TiVo. If any
such audit should disclose any understatement of Service Revenues, TiVo shall
promptly pay Sony Electronics for any corresponding shortfall in the amounts due
to Sony Electronics pursuant to Section 5.3 (Revenue Share) above. The audit
will be conducted at Sony Electronics' expense, unless the audit reveals that
TiVo has understated Service Revenue by [*]or more in any [*], in which case
TiVo will reimburse Sony Electronics for all reasonable costs and expenses
incurred by Sony Electronics in connection with such audit. Such audits will be
conducted no more than once in any period of [*].
5.5 No Agreement on Additional Incentives. Sony Electronics and TiVo
acknowledge and agree that there is no agreement, explicit or implicit, that the
[*]set forth in this Section 5 (Incentives; Payment Terms) shall apply to US
Falcon Products manufactured by or for Sony Electronics after [*]or beyond the
first [*] US Falcon Products. The parties may negotiate in good faith any
additional incentives but the failure to reach any agreement on such incentives
shall not be a breach of this Agreement.
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5.6 Payment. All payments made pursuant to this Agreement shall be in
United States Dollars.
(a) [*]. Within [*]of the end of each [*],[*]shall provide
documentation to [*]as to [*]during the immediately prior [*]. Within [*]of [*]
receipt of such documentation, [*] shall pay [*]the [*]due pursuant to Section
5.1 ([*]).
(b) [*]Credits. If [*]pays to [*]a [*]on a US Falcon Product that,
within a reasonable period of time, [*]or [*] (an "AWOL/DOA Box"), [*]will issue
a credit in the amount of the [*] paid on such AWOL/DOA Box, such credit to be
applied against any future amounts due to [*]under this Agreement, and such
AWOL/DOA Box shall not be counted against the [*]unit [*]cap set forth in
Section 5.1 ([*]).
(c) Revenue Share. Within [*]after the end of each [*], TiVo shall
pay to Sony Electronics the revenue share required pursuant to Section 5.3
(Revenue Share).
6. BRANDING
6.1 Branding Requirements. Sony Electronics shall provide appropriate
attribution to TiVo, as mutually agreed to by TiVo and Sony Electronics, on the
US Falcon Products, the packaging therefor, and in the marketing and
distribution thereof. Any such TiVo branding of US Falcon Products will be done
in conformance with the TiVo branding requirements set forth in Exhibit C
(Branding Requirements).
6.2 License to TiVo Marks; Approval. TiVo grants to Sony Electronics a
royalty-free, non-exclusive license to use the TiVo Marks in connection with the
US Falcon Product, the TiVo Viewer's Guide, and any related marketing collateral
solely as set forth in Section 6.1 (Branding Requirements). In addition, Sony
Electronics shall comply with TiVo's trademark usage guidelines and policies
that are set forth in Exhibit D (TiVo Style Guide), as may be modified from time
to time upon thirty (30) days' prior written notice; [*]. Before making use of
any TiVo Xxxx, Sony Electronics will provide TiVo with a sample of the proposed
use of the TiVo Xxxx for approval by TiVo. If TiVo does not accept, in a writing
signed by an officer of TiVo, the proposed use of the TiVo Xxxx within [*]after
receipt of the sample from Sony Electronics, TiVo will be deemed to have [*] the
proposed use. If TiVo rejects the proposed use of the TiVo Xxxx, Sony
Electronics will modify or cancel the proposed use, as requested by TiVo. Once
TiVo has approved, in a writing signed by an officer of TiVo, any usage of a
TiVo Xxxx on the US Falcon Product in accordance with the foregoing, Sony
Electronics will not need to obtain any further approvals from TiVo with respect
to such use of the TiVo Marks on the US Falcon Product so long as the use,
quality and depiction of the TiVo Marks, and the context in which they are
depicted, remains identical to the approved use.
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6.3 Understandings re Front Bezel. Sony Electronics acknowledges and
agrees that TiVo's consent to the depiction of the TiVo Marks on the front bezel
of the US Falcon Product through the use of a silkscreen does not constitute
acceptance by TiVo of such a depiction for any other product, or for a
derivative of the US Falcon Product or for any modified front bezel of the US
Falcon Product. Notwithstanding anything in this Agreement to the contrary, Sony
Electronics acknowledges and agrees that should any changes to the US Falcon
Product front bezel be made that require retooling, as part of such changes Sony
Electronics shall ensure that the TiVo Marks are depicted with a badge on the
front bezel (and not with a silkscreen, thermal print or any other means) of
such changed US Falcon Products, and that such front bezel is made part of the
BOM for the original US Falcon Product as soon as the original front bezels are
depleted from inventory. Sony Electronics shall be solely responsible for the
marginal cost incurred as a result of such change.
6.4 Ownership of TiVo Marks. All use of the TiVo Marks hereunder shall
inure to the benefit of TiVo. TiVo has and shall retain exclusive ownership of
the TiVo Marks. Sony Electronics will not interfere with any ownership rights
TiVo may have in the TiVo Marks. Without limiting the generality of the
foregoing, Sony Electronics may not affix, append, or place any of its
trademarks, trade names, or logos to, or in close proximity to, the TiVo Marks
in a manner that results or could result in the creation of a unitary composite
xxxx. TiVo reserves the right to terminate Sony Electronics' rights to use the
TiVo Marks at any time and at TiVo's sole discretion (rejection of this
Agreement in a proceeding under the Bankruptcy Code shall be deemed a voluntary
termination under this Section 6.4 (Ownership of TiVo Marks)); provided, that in
the event of such termination (a) the branding requirements set forth in Section
6.1 (Branding Requirements) shall no longer apply; and (b) [*].
7. CUSTOMER SERVICE. TiVo shall be responsible for providing End Users with
direct telephone access to TiVo's customer support function. In the event that
TiVo's customer support reasonably determines that the customer problem is a
hardware problem, TiVo's support shall refer such customer to Sony Electronics
for resolution. Sony Electronics shall be responsible for providing End Users
with direct telephone access to Sony Electronics' customer support function for
hardware problems relating to the US Falcon Product. In the event that Sony
Electronics' customer support reasonably determines that the customer problem is
a TiVo Service problem, Sony Electronics' support shall refer such customer to
TiVo for resolution.
8. CONFIDENTIALITY
8.1 Protection of Confidential Information. The Receiving Party shall not
use the Confidential Information of the Disclosing Party except for the purpose
of carrying out its rights or obligations under this Agreement in accordance
with the terms thereof. The Receiving Party will not disclose the Confidential
Information of the Disclosing Party, except as expressly authorized in this
Agreement or in writing by the
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Disclosing Party. The Receiving Party may also disclose any Confidential
Information that must be disclosed pursuant to applicable federal, state, or
local law, regulation, court order, or other legal process; provided, that the
Receiving Party gives the Disclosing Party prompt written notice sufficient to
allow the Disclosing Party to seek a protective order or other appropriate
remedy. The Receiving Party will use the same degree of care to prevent such
misuse or disclosure that the Receiving Party uses with respect to its own
proprietary information, but in no event with less than with reasonable care.
Disclosure of Confidential Information by the Disclosing Party does not
constitute a license to the Receiving Party with respect to such Confidential
Information.
8.2 Disclosure Restrictions. The Receiving Party may disclose
Confidential Information only to its employees, consultants and contractors when
such disclosure is reasonably necessary for the Receiving Party to exercise its
rights in compliance with, to perform its obligations under, and only for
purposes contemplated by, this Agreement, provided such employees, consultants
and contractors are advised of the confidential nature thereof and bound by
nondisclosure obligations and restrictions no less restrictive than those set
forth in this Section 8 (Confidentiality).
9. WARRANTIES
9.1 Engineering Services. TiVo expressly warrants that the Engineering
Services will be performed in a competent, professional, and workmanlike
fashion, in a manner that conforms in all material respects to the requirements
set forth in the Statement of Work. In the event that the Engineering Services
fail to conform to the foregoing warranty, Sony Electronics shall have ten (10)
days after completion of the Engineering Services to notify TiVo of any
nonconformity, in which case TiVo will reperform the nonconforming Engineering
Services at [*]charge to Sony Electronics. As to each nonconformity, for a
period of [*]from the date that Sony Electronics first notifies TiVo of such
nonconformity, the foregoing sentence states Sony Electronics' sole and
exclusive remedy and TiVo's entire liability for breach of the warranty in this
Section 9.1 (Engineering Services). If, as to each nonconformity, after such
[*]TiVo is unable to reperform the Engineering Services in such a way as to
conform to the foregoing warranty, [*].
9.2 TiVo Client Software and TiVo Service. TiVo expressly warrants that
(a) the TiVo Client Software, in the form provided by TiVo, when operated in
accordance with the TiVo Viewer's Guide, will allow a US Falcon Product to be
TiVo-Enabled; and (b) the TiVo Service will conform in all material respects to
the service description contained in the current version of the TiVo Viewer's
Guide. In the event that either the TiVo Client Software or the TiVo Service
fails to conform to the foregoing warranty, TiVo will either correct the
nonconformity or replace the nonconforming component with a conforming
substitute. As to each nonconformity, for a period of [*]from the date that Sony
Electronics first notifies TiVo of such breach, the foregoing sentence states
Sony Electronics' sole and exclusive remedy and TiVo's entire liability for
breach of the
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warranties in this Section 9.2 (TiVo Client Software and TiVo Service). If, as
to each nonconformity, after such [*]TiVo is unable to conform to the foregoing
warranty, [*].
9.3 Right and Authority. TiVo expressly warrants that it has the
requisite right and authority to license the TiVo Client Software as
contemplated under this Agreement and to provide the TiVo Service; provided,
however, that for so long as TiVo complies with its indemnification obligations
under Section 10.1 (TiVo Indemnification Obligation) with respect to Third Party
claims of infringement, TiVo will not be deemed to be in breach of this
warranty.
9.4 Disclaimer of Other Warranties. EXCEPT FOR THE EXPRESS WARRANTIES
SPECIFICALLY IDENTIFIED AS SUCH IN THIS AGREEMENT, TIVO MAKES NO WARRANTIES AS
TO THE ENGINEERING SERVICES, THE TIVO PROPERTY, THE TIVO DIAGNOSTIC SOFTWARE,
THE TIVO SERVICE, THE TIVO HARDWARE REFERENCE DESIGN OR ANY SUPPORT THAT MAY BE
PROVIDED HEREUNDER. TIVO EXPRESSLY DISCLAIMS ANY AND ALL OTHER WARRANTIES,
EXPRESS (EXCEPT FOR THE EXPRESS WARRANTIES SPECIFICALLY IDENTIFIED AS SUCH IN
THIS AGREEMENT), IMPLIED, AND STATUTORY, WHETHER ARISING FROM COURSE OF DEALING
OR USAGE OF TRADE INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF
TITLE, MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT OF
THIRD PARTY RIGHTS.
10. INDEMNITIES
10.1 TiVo Indemnification Obligation.
(a) Indemnity. TiVo, at its own expense, shall defend, indemnify
and hold harmless (i) Sony Electronics (including, without limitation, its
directors, officers, and employees), and (ii) for claims, demands or assertions
administered by Sony Electronics (1) [*] (including, without limitation, their
directors, officers, and employees) and (2) [*] (including, without limitation,
their directors, officers, and employees) (all parties in clauses (i) and (ii)
referred to individually and collectively as the "Sony Electronics
Indemnitees"), from and against any Third Party claims, demands or assertions,
to the extent based on allegations that: (x) [*] (solely in accordance with the
terms of Section 10.1(e) (Understandings)), or the [*] (as used strictly in
accordance with the [*]and pursuant to the [*] agreement contained [*])[*]any
Third Party's patent rights, mask works, copyrights, or trademarks, or
misappropriates any Third Party's trade secrets [*]; (y) bodily injury,
including death, or damage to real property or tangible personal property has
been caused by the ordinary operation of the [*]in accordance with the [*]or the
[*]used in conjunction with the [*]; and (z) TiVo has misrepresented to any
Third Parties the US Falcon Product, the [*]; provided, however, that as to any
such claims, demands or assertions specified in clauses (x), (y) and (z), TiVo
shall not be required to interact directly with any Sony Electronics Indemnitee
other than Sony Electronics.
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
12
(b) Mitigation. If TiVo receives notice of an alleged infringement
or believes that a claim based on infringement is likely, or if a Sony
Electronics Indemnitee's use of the [*]is prevented by an injunction, TiVo may,
at its sole option and expense, (i) procure for the Sony Electronics Indemnitee
the right to continue use of the [*]at TiVo's sole expense; (ii) modify the
[*]without adversely affecting the functionality of the [*]as used in connection
with the US Falcon Product, so that it no longer infringes; or (iii) replace the
infringing portion of the [*]with non-infringing technology, without adversely
affecting the functionality of the [*]as used in connection with the US Falcon
Product.
(c) Exceptions. Notwithstanding anything in this Agreement to the
contrary, TiVo shall have no obligation to indemnify any Sony Electronics
Indemnitee for any claims, demands or assertions to the extent based on (i) any
Third Party technology that TiVo expressly identifies to Sony Corporation under
the TLA as requiring a separate license; (ii) any modification of the [*]not
made by TiVo or at TiVo's direction where, but for such modification, such claim
of infringement or misappropriation would not arise; (iii) any use of the [*]in
combination with products, services or technology except as required to enable
the operation of the [*]as it was designed; (iv) any use of the [*]outside of,
or not in connection with, a US Falcon Product; or (v) any use of an infringing
version of the [*]once a non-infringing, functionally and operationally
equivalent version has been made available by TiVo, without additional cost, to
Sony Electronics, provided that this exception (v) shall only be applicable to
US Falcon Products manufactured after the provision by TiVo of the equivalent
replacement plus a reasonable period of time to implement such replacement.
Additionally, notwithstanding anything in this Agreement to the contrary, TiVo
shall have no obligation under this Agreement to indemnify any Sony Electronics
Indemnitee with respect to claims, demands or assertions made by a Third Party
alleging that the Sony Electronics Indemnitee is, by inducement, contributorily,
vicariously or otherwise, infringing any copyrights based on any End User's, or
collection of End Users', use of the US Falcon Product, the TiVo Client Software
or the TiVo Service.
(d) Entire Obligation. The foregoing states TiVo's entire
obligation and liability, and the Sony Electronics Indemnitees' sole and
exclusive remedy, with respect to any infringement of any patents, copyrights,
trademarks, trade secrets or other proprietary rights of any Third Party whether
[*].
(e) Understandings. Sony Electronics acknowledges and agrees that:
(i) the TiVo Hardware Reference Design has been modified during the creation of
the Falcon Product and the US Falcon Product; (ii) TiVo has not been a party to
such modifications; (iii) TiVo is not responsible for providing indemnification
as to any such modifications; and (iv) TiVo provides indemnification solely to
the extent the claim of infringement relates to the unmodified TiVo Hardware
Reference Design and solely to the extent incorporated in US Falcon Products
using the TiVo Service.
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
13
10.2 Sony Electronics Indemnification Obligations. Sony Electronics, at
its own expense, shall defend, indemnify and hold harmless, TiVo (including,
without limitation, its directors, officers and employees) from and against any
claims, demands, or assertions, to the extent based on allegations that (a) any
modifications to [*] not made by, or at the direction of, TiVo [*]any Third
Party's patent rights, mask works or copyrights or misappropriates any Third
Party's trade secrets in any jurisdiction; (b) any services other than the TiVo
Service intentionally designed by or for Sony Electronics to be enabled by, or
accessible via, the US Falcon Product infringe any Third Party's patent rights,
mask works or copyrights or misappropriates any Third Party's trade secrets in
any jurisdiction; (c) bodily injury, including death, or damage to real property
or tangible personal property or otherwise resulted from or in connection with
the use, manufacture, sale or distribution of the US Falcon Product (except to
the extent that TiVo is obligated to indemnify Sony Electronics for such injury,
death or damage pursuant to clause (y) of Section 10.1(a) (Indemnity)); or (d)
any misrepresentations made by Sony Electronics, a Sony Electronics
Manufacturing Subcontractor or a Sony Electronics Affiliate to any Third Parties
with respect to the US Falcon Product, [*]or the [*]. The foregoing states Sony
Electronics' entire liability and TiVo's sole and exclusive remedy with respect
to any infringement of any patents, copyrights, trade secrets or other
proprietary rights of any Third Party [*].
10.3 Procedure. A party (the "Indemnitee") that intends to claim
indemnification under this Section 10 (Indemnities) shall promptly notify the
other party (the "Indemnitor") in writing of any claim in respect of which the
Indemnitee intend to claim such indemnification, and the Indemnitor shall have
sole control of the defense and/or settlement thereof. The indemnity obligations
in this Section 10 (Indemnities) shall not apply to amounts paid in settlement
of any claim if such settlement is effected without the prior written consent of
the Indemnitor, which consent shall not be withheld, conditioned or delayed
unreasonably. The failure to deliver written notice to the Indemnitor within a
reasonable time after the commencement of any such claim, only if materially
prejudicial to its ability to defend such claim, shall relieve such Indemnitor
of any liability to the Indemnitee, but only to the extent of such prejudice.
The Indemnitee under this Section 10.3 (Procedure) shall reasonably cooperate
with the Indemnitor and its legal representatives in the investigation of any
Claim covered by this indemnification.
11. INTENTIONALLY LEFT BLANK.
12. INTENTIONALLY LEFT BLANK.
13. TERM AND TERMINATION
13.1 Term. The term of this Agreement shall begin on the Effective Date
and will end three (3) years thereafter unless sooner terminated pursuant to
this Section 13 (Term and Termination).
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
14
13.2 Termination
(a) Termination for Sony Electronics Material Breach. TiVo may
terminate this Agreement if Sony Electronics commits a material breach of this
Agreement, TiVo gives written notice to Sony Electronics of such breach and Sony
Electronics fails to cure such breach within [*]of receipt of notice of such
breach.
(b) Termination for TiVo Material Breach. Sony Electronics may
terminate this Agreement if TiVo commits a material breach of this Agreement,
Sony Electronics gives written notice to TiVo of such breach and TiVo fails to
cure such breach within [*]of receipt of written notice of such breach.
(c) Termination for TiVo Bankruptcy or Insolvency. Sony Electronics
may terminate this Agreement immediately upon written notice if:
(i) TiVo files for, or has filed against it, a petition for
bankruptcy under the Federal Bankruptcy Code and such filing or petition is not
rescinded or dismissed within [*]after such filing; or
(ii) any of the following occurs: (1) TiVo makes a general
assignment for the benefit of creditors or (2) TiVo becomes insolvent or becomes
unable to pay its debts as they become due; or (3) a receiver, liquidating
officer or trustee is appointed for substantially all of the assets of TiVo.
13.3 Effect of Termination.
(a) Termination for a Material Breach by Sony Electronics
(i) Extraordinary Sony Electronics Breach. In the event that
TiVo terminates this Agreement in accordance with the terms of Section 13.2(a)
(Termination for Sony Electronics Material Breach) for (1) Sony Electronics'
material breach of the license grants or restrictions in Section 3 (License
Grants) and such breach, if in dispute, has been subjected by the parties to the
terms of Section 15.3 (Dispute Resolution); or (2) a material breach of the
confidentiality obligations set forth in Section 8 (Confidentiality) (in either
case, an "Extraordinary Breach"), then this Agreement shall terminate and, in
particular, all licenses granted under Section 3 (License Grants) and Section
6.2 (License to TiVo Marks), and any payment obligations under Section 5
(Incentives; Payment Terms) shall immediately terminate.
(ii) Ordinary Sony Breach. In the event that TiVo terminates
this Agreement in accordance with the terms of Section 13.2(a) (Termination for
Sony Electronics Material Breach) for any material breach by Sony Electronics
other than an Extraordinary Breach, this Agreement shall terminate; provided,
however, that for a period of [*]after the effective date of termination, Sony
Electronics may continue to exercise its license rights under Section 3 (License
Grants) and Section 6.2 (License to
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[*] Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
15
TiVo Marks) solely [*]. Thereafter, all license rights under this Agreement will
terminate, but any continuing payment obligations under Section 5 (Incentives;
Payment Terms) will survive.
(b) Termination for a TiVo Material Breach. In the event of
termination of this Agreement by Sony Electronics in accordance with the terms
of Section 13.2(b) (Termination for TiVo Material Breach), all licenses granted
to Sony Electronics in Section 3 (License Grants) and Section 6.2 (License to
TiVo Marks) shall continue in full force and effect for a period of time equal
in length to what would have been the remainder of the original term of this
Agreement had Sony Electronics not exercised its right to terminate this
Agreement; provided, however, that Sony Electronics does not materially breach
the terms of this Agreement.
(c) Termination for TiVo Bankruptcy or Insolvency. In the event of
termination of this Agreement by Sony Electronics in accordance with the terms
of Section 13.2(c) (Termination for TiVo Bankruptcy or Insolvency), all licenses
granted to Sony Electronics in Section 3 (License Grants) and Section 6.2
(License to TiVo Marks) shall continue in full force and effect for a period of
time equal in length to what would have been the remainder of the original term
of this Agreement had Sony Electronics not exercised its right to terminate this
Agreement; provided, however, that Sony Electronics does not commit a material
breach of this Agreement. Notwithstanding the foregoing, the parties acknowledge
that Sony Electronics' rights and obligations under Section 6.1 (Branding
Requirement) and Section 6.2 (License to TiVo Marks) will immediately cease if
TiVo exercises its rights under Federal Bankruptcy Code Section 365(n) to reject
this Agreement. All other licenses granted to Sony Electronics under or pursuant
to this Agreement are and shall be deemed to be, for purposes of Section 365(n)
of the U.S. Bankruptcy Code, valid and presently existing licenses of rights to
intellectual property as defined under Section 101 of the U.S. Bankruptcy Code,
as amended. The parties agree that Sony Electronics, as a licensee of such
rights under this Agreement, shall retain and may fully exercise all of its
rights and elections under the U.S. Bankruptcy Code, as amended.
(d) Survival. Except as expressly set forth above, upon the
termination or expiration of this Agreement, all license grants under this
Agreement will immediately terminate and each party will either return or
destroy all of the other party's Confidential Information in its possession
(except for incidental copies of Confidential Information that were made as part
of such party's ordinary data backup and recovery processes and which cannot be
deleted without incurring significant extra expense). Except as expressly set
forth above, the provisions of Sections 1 (Definitions), 2.3 (Engineering Fees,
Costs, and Expenses), 3.4 (Restrictions), 4 (IP Ownership), 5.3 (Revenue Share)
(solely with respect to US Falcon Products sold during the term of this
Agreement); 5.6 (Payment), 6.4 (Ownership of TiVo Marks), 7 (Customer Service),
8 (Confidentiality), 9 (Warranties), 10 (Indemnities), 13.3 (Effect of
Termination), 14
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[*] Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
16
(Limitation of Liability), and 15 (General) shall survive the termination or
expiration of this Agreement.
14. LIMITATION OF LIABILITY
EXCEPT FOR (A) BREACHES OF SECTION 3 (LICENSE GRANTS) [*], (B) BREACHES OF
SECTION 8 (CONFIDENTIALITY), AND (C) ANY PAYMENTS IN FULFILLMENT OF THE
INDEMNIFYING PARTY'S INDEMNITY OBLIGATIONS UNDER SECTION 10 (INDEMNITIES), IN NO
EVENT WILL EITHER PARTY BE LIABLE UNDER THIS AGREEMENT UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY, TORT OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES OF ANY NATURE WHATSOEVER,
(INCLUDING WITHOUT LIMITATION, LOSS OF PROFITS, OR OTHER INDIRECT COMMERCIAL
LOSS) ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF SUCH PARTY
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES AND EVEN IF ANY EXCLUSIVE
REMEDY STATED IN THIS AGREEMENT IS DEEMED TO FAIL OF ITS ESSENTIAL PURPOSE.
EXCEPT FOR (X) BREACHES OF SECTION 3 (LICENSE GRANTS) [*], (Y) BREACHES OF
SECTION 8 (CONFIDENTIALITY) OR SECTION 10 (INDEMNITIES), AND (Z) ANY PAYMENTS IN
FULFILLMENT OF THE INDEMNIFYING PARTY'S INDEMNITY OBLIGATIONS UNDER SECTION 10
(INDEMNITIES), EACH PARTY'S TOTAL CUMULATIVE LIABILITY ARISING FROM OR RELATED
TO THIS AGREEMENT, WHETHER IN CONTRACT OR TORT OR OTHERWISE, WILL NOT EXCEED AN
AMOUNT EQUAL TO [*].
THIS SECTION 14 WILL BE GIVEN FULL EFFECT EVEN IN THE EVENT THAT ANY OF THE
WARRANTIES PROVIDED IN SECTION 9 (WARRANTIES) ARE DEEMED BY AN ARBITRATOR OR
COURT OF COMPETENT JURISDICTION TO HAVE FAILED OF THEIR ESSENTIAL PURPOSE. THE
PARTIES ACKNOWLEDGE THAT THE TERMS OF THIS SECTION 14 REFLECT THE ALLOCATION OF
RISK SET FORTH IN THIS AGREEMENT AND THAT THE PARTIES WOULD NOT ENTER INTO THIS
AGREEMENT WITHOUT THESE LIMITATIONS OF LIABILITY.
15. GENERAL
15.1 No Agency. Each party will in all matters relating to this Agreement
act as an independent contractor. Nothing contained in this Agreement, nor the
execution or performance thereof, shall be construed as creating any agency,
partnership, or other form of joint enterprise between the parties. Neither
party will have authority nor represent that it has any authority to assume or
create any obligation, express or implied,
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
17
on behalf of the other party, or to represent the other party as agent, employee
or in any other capacity.
15.2 Governing Law and Jurisdiction. This Agreement and all matters or
issues related hereto or arising hereunder shall be governed by the laws of the
State of California, without regard to the application of principles of
conflicts of laws that would result in application of laws of jurisdictions
other than the State of California. The parties agree that the United Nations
Convention on Contracts for the International Sale of Goods is specifically
excluded from application to this Agreement. Each of the parties hereto
irrevocably submits to the exclusive jurisdiction of the courts of the State of
California and the courts of the United States for a judicial district within
the territorial limits of the State of California for the purposes of any suit,
action or other proceeding arising out of this Agreement or any transaction
contemplated hereby. Each of the parties further agrees that service of any
process, summons, notice or document by U.S. registered mail to such party's
respective address set forth in Section 15.4 (Notices) be effective service of
process for any action, suit or proceeding in California with respect to any
matters to which it has submitted to jurisdiction as set forth above in the
immediately preceding sentence.
15.3 Dispute Resolution. The parties agree that in the event any dispute
arising out of or related to this Agreement is not resolved in the ordinary
course of business, the parties shall in good faith attempt to resolve the
dispute through negotiation by their representatives who are at a higher level
of management than those involved in the day to day administration of this
Agreement. Accordingly, each party agrees that it may not commence legal action
against the other in connection with such dispute without first attempting to
resolve the dispute in accordance with the following procedure: (a) written
notice of the dispute ("Notice of Dispute") shall be issued to the other. Such
notice shall state the nature of the dispute, the issuing party's position, and
the reasons supporting its position. The recipient shall, within [*]of its
receipt, issue a written response; (b) within [*]of the receiving party's
receipt of Notice of Dispute, representatives of each party who have the
authority to settle the controversy, and who are at a higher level of management
than the persons with direct responsibility over the administration of this
Agreement, shall meet, at a mutually agreeable time and place, to attempt to
negotiate a settlement to the controversy. All negotiations pursuant to this
clause will be confidential and shall be treated as compromise and settlement
negotiations for purposes of the U.S. Federal Rules of Evidence and U.S. state
rules of evidence; and (c) if the parties fail to resolve the dispute within
[*]of the recipient's receipt of Notice of Dispute, or if the parties fail to
meet during the aforementioned [*]period, or if the recipient of Notice of
Dispute fails to respond in writing within the allowed [*], then in each case
either party may commence legal action as permitted by law. This Section shall
not be construed to prevent a party from instituting formal proceedings earlier
than indicated in this Section to avoid the expiration of any applicable
limitations period, preserve a superior creditor position, or seek injunctive
relief to prevent an irreparable harm.
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the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
18
15.4 Notices. All notices permitted or required under this Agreement
shall be in writing and shall be delivered to the address(es) for notice set
forth below or such other address as either party may specify in writing.
Notices shall be effective (a) on the date received or delivery is refused, if
delivered by hand or by facsimile, (b) on the next business day following
delivery thereof to an air courier for overnight delivery, or (c) on the fifth
business day after deposit into either the United States mail service, postage
prepaid, return receipt requested.
To: TiVo Inc. To: Sony Electronics Inc.
President Attn: Senior Vice Xxxxxxxxx, XXX
0000 Xxxx Xxxxxx 00000 Xxxx Xxxxxxxx Xxxxx
Xxxxxx, XX 00000 Xxx Xxxxx, XX 00000
Fax (000) 000-0000 Fax (000) 000 0000
With a copy to: With a copy to:
TiVo Inc. Sony Electronics Inc.
General Counsel Xxxxx Xxxxxxxxxx, XX0000
15.5 Waiver. The failure of either party to require performance by the
other party of any provision hereof shall not affect the full right to require
such performance at any time thereafter; nor shall the waiver by either party of
a breach of any provision hereof be taken or held to be a waiver of the
provision itself.
15.6 Severability. In the event that any provision of this Agreement
shall be unenforceable or invalid under any applicable law or be so held by
applicable court decisions, such unenforceability or invalidity shall not render
this Agreement unenforceable or invalid as a whole, and, in such event, such
provision shall be changed and interpreted so as to best accomplish the
objectives of such unenforceable or invalid provision within the limits of
applicable law or applicable court decisions.
15.7 Headings. The section headings appearing in this Agreement are
inserted only as a matter of convenience and in no way define, limit, construe
or describe the scope or extent of such section, or in any way affect this
Agreement.
15.8 Confidentiality of Agreement. Neither party will disclose any terms
of this Agreement except as required by law. Notwithstanding the foregoing,
either party may disclose the terms of this Agreement (a) to its advisors and
counselors so long as such advisors and counselors are bound by obligations of
confidentiality; (b) to any Third Parties bound by written obligations of
confidentiality in order to facilitate the exploration of a business combination
with such Third Parties; (c) as required by any court or other governmental
body; (d) as otherwise required by applicable law; or (e) pursuant to the rules
and regulations of any stock association or exchange on which the party's stock
is traded.
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15.9 Assignment. This Agreement may not be assigned by either party
without the other party's prior written consent, and any such attempted
assignment will be void and of no effect. Notwithstanding the foregoing,
however, TiVo may assign this Agreement, without restriction, in the event of a
sale or other transfer of all or substantially all the relevant assets or equity
(whether by sale of assets or stock or by merger or other reorganization)
(except that in the case of an assignment by TiVo, TiVo agrees to provide Sony
Electronics with notice of any transaction giving rise to the assignment not
later than the date that TiVo is required to give notice of such transaction to
its stockholders). Subject to the above restriction on assignment, this
Agreement shall inure to the benefit of and bind the successors and assigns of
the parties.
15.10 Export Controls. Each Party agrees that it will comply with all
U.S. export control laws and the applicable regulations thereunder, as well as
any other applicable laws of the U.S. affecting the export of technology.
15.11 Compliance with Laws. Each party will comply with all statutes,
ordinances, and regulations of all federal, state, county and municipal or local
governments, and of any and all of the departments and bureaus thereof,
applicable to the carrying on of its business and the performance of its
obligations under this Agreement, and in the sale, marketing and delivery of the
US Falcon Product, and the TiVo Client Software and the TiVo Service to End
Users.
15.12 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but all of which together shall constitute
one and the same original.
15.13 Force Majeure. Neither party shall be liable hereunder by reason of
any failure or delay in the performance of its obligations hereunder on account
of strikes, riots, insurrection, fires, flood, storm, explosions, acts of God,
war, governmental action, labor conditions, earthquakes, or any other causes
that are beyond the reasonable control of such party.
15.14 Entire Agreement. Except as expressly set forth herein, this
Agreement and Exhibits hereto constitute the entire agreement between the
parties with respect to the US Falcon Product. This Agreement supersedes any
prior or collateral agreements with respect to the subject matter hereof and the
terms and conditions of this Agreement shall govern and control the rights and
obligations of the parties with respect to the US Falcon Product. The parties
agree that nothing in this Agreement is intended to supersede the binding Letter
of Intent dated August 6, 1999, between Sony Corporation of America and TiVo, as
amended (the "LOI"), and that the LOI remains in full force and effect as
related to the "TiVo devices" thereunder. This Agreement may only be changed by
written mutual agreement of authorized representatives of the parties.
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IN WITNESS WHEREOF, the foregoing Agreement is hereby executed effective as
of the date first forth above.
TIVO INC. SONY ELECTRONICS INC.
By: /s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxxx Xxxxxx
----------------------------------- ------------------------------------
Printed Name: Xxxxxxx Xxxxxx Printed Name: Xxxxxxx Xxxxxx
------------------------- --------------------------
Title: Chief Executive Officer Title: Senior Vice President
-------------------------------- ---------------------------------
Date: August 8, 2002 Date: August 8, 2002
--------------------------------- ----------------------------------
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