Exhibit 10.52
ADDENDUM TO THE LICENSE AGREEMENT AND MUTUAL RELEASE
Reference is made to the LICENSE AGREEMENT AND MUTUAL RELEASE (the "Agreement")
made and entered into as of June 11, 2003, by and between ESS Technology
International Inc. ("ETI"), ESS Technology, Inc. ("ESS") and MediaTek
Incorporation ("MediaTek").
The following amendments to the Agreement are made pursuant to paragraph 11.2 of
the Agreement in order to clarify the issues with respect to responsibility for
the application for a tax exemption and the payment of the escrow funds for the
tax exemption, respectively described in paragraphs 4.2 and 13.3 of the
Agreement:
1. The parties agree to continue working together in good faith to file an
application, in the name of ETI/ESS, for the exemption of Taiwan's
withholding tax on the initial license fee and quarterly royalty
payments under the Agreement, and to provide each other all necessary
documents and assistance in connection with this application. ETI/ESS
agrees to first submit to MediaTek for review and comments the
documents it prepares and proposes to provide to the taxing authority
of the government of Taiwan for the purpose of the tax exemption
filing, and, if necessary, to incorporate reasonable changes suggested
by MediaTek. The references in the Agreement to "MediaTek's
application" shall be interpreted to refer to this ETI/ESS application.
2. Providing that ETI/ESS' application for a tax exemption is denied, in
whole or in part, by the taxing authority of the government of Taiwan,
MediaTek shall make withholding tax payments to the government of
Taiwan, plus any additional withholding tax payments for applicable
quarterly royalty payments, pursuant to paragraphs 4.2.1, 4.2.2 and
relevant provisions of the Agreement, irrespective of ETI/ESS' decision
as to whether to file an appeal against a denial of such tax exemption
application, unless otherwise stipulated by both parties under the
Agreement.
3. In no event shall MediaTek be obligated or liable to file an appeal
against a denial of ETI/ESS' application for tax exemption. However,
MediaTek agrees to provide assistance, including but not limited to
providing any documents required for or in connection with appeal
proceedings, upon the request of ETI and/or ESS.
4. If ETI/ESS' application is granted (either in response to the
application, an appeal against a denial of the application, or
administrative court proceedings whatsoever), MediaTek agrees to
provide assistance to ESS/ETI to seek refund or return of the
withholding taxes paid by MediaTek, if any, from relevant authorities
of the government of Taiwan, including but not limited to providing any
documents required for refund or return of the withholding taxes.
MediaTek shall repay ETI/ESS, by wire transfer to an account specified
by ETI, the refund or return of withholding taxes received from the
government of Taiwan, if any, in accordance with paragraph 4 of the
Agreement within ten (10) business days of MediaTek's receipt of the
same.
5. If ETI/ESS' application for a withholding tax exemption described in
paragraph 4.2 of the Agreement is granted (either in response to the
application, an appeal against a denial of the application, or
administrative court proceedings whatsoever), and the withholding tax
payments called for in paragraph 4.2.1 and 4.2.2 of the Agreement, if
any, have been paid to ETI, then the *** upon MediaTek's delivery to
the *** under paragraph 2(b) of the ***.
6. ESS and ETI agree that they shall not deliver any Application Approval
Notice to the escrow agent until all possible appeals from a denial of
the application have been exhausted.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE EXECUTED THIS ADDENDUM AS OF THE DAY
AND YEAR WRITTEN BELOW:
Dated 8 July 2003 ESS TECHNOLOGY INTERNATIONAL, INC.
By /s/ Xxxx Xxxxx Xxxx
-----------------------------
Name Xxxx Xxxxx Chan
Title Chairman
Dated 8 July 2003 ESS TECHNOLOGY, INC.
By /s/ Xxxxxx X. Xxxxx
-----------------------------
Name Xxxxxx X. Xxxxx
Title Chief Executive Officer
Dated 8 July 2003 MEDIATEK INCORPORATION
By /s/ Ming-Xxx Xxxx
-----------------------------
Name Ming-Xxx Xxxx
Title Chairman
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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