Exhibit 99.6
CONFIDENTIAL LICENSE AGREEMENT
FOR NINTENDO DS (WESTERN HEMISPHERE)
THIS LICENSE AGREEMENT ("Agreement") is entered into between NINTENDO OF
AMERICA INC. ("NOA"), at 0000 000xx Xxxxxx X.X., Xxxxxxx, XX 00000 Attn: General
Counsel (Fax: 000-000-0000) and Atari, Inc. ("LICENSEE") at 000 Xxxxx Xxxxxx,
Xxx Xxxx, Xxx Xxxx 00000 Attn: Legal Department (Fax: 000 000 0000). NOA and
LICENSEE agree as follows:
1. RECITALS
1.1 NOA markets and sells advanced design, high-quality video game systems,
including the Nintendo DS system.
1.2 LICENSEE desires a license to use highly proprietary programming
specifications, development tools, trademarks and other valuable intellectual
property rights of NOA and its parent company, Nintendo Co., Ltd. (collectively
"Nintendo"), to develop, have manufactured, advertise, market and sell video
game software for play on the Nintendo DS system.
1.3 NOA is willing to grant a license to LICENSEE on the terms and
conditions set forth in this Agreement.
2. DEFINITIONS
2.1 "Artwork" means the design specifications for the Game Card label and
Printed Materials in the format specified by NOA in the Guidelines.
2.2 "Bulk Goods" means the Game Cards with Game Card labels affixed.
2.3 "Development Tools" means the development kits, programming tools,
emulators and other materials that may be used in the development of Games under
this Agreement.
2.4 "Effective Date" means (****)
2.5 "Finished Product(s)" means the fully assembled and shrink-wrapped
Licensed Products, each including a Game Card, Game Card label and Printed
Materials.
2.6 "Game Card(s)" means custom card media specifically manufactured under
the terms of this Agreement for play on the Nintendo DS system, incorporating
semiconductor components in which a Game has been stored.
2.7 "Game(s)" means the Nintendo DS version of an interactive video game
program, or other applications approved by Nintendo (including source and
object/binary code) developed for the Nintendo DS system.
2.8 "Guidelines" means the current version or any future revision of the
"Nintendo DS Packaging Guidelines", "Nintendo DS Development Manual" and related
guidelines provided by NOA.
2.9 "Independent Contractor" means any individual or entity that is not an
employee of LICENSEE, including any independent programmer, consultant,
contractor, board member or advisor.
2.10 "Intellectual Property Rights" means individually, collectively or in
any combination, Proprietary Rights owned, licensed or otherwise held by
Nintendo that are associated with the development, manufacturing, advertising,
marketing or sale of the Licensed Products, including, without limitation, (a)
registered and unregistered trademarks and trademark applications used in
connection with Games for the Nintendo DS system including "Nintendo(R)",
"Nintendo DS(TM)", "DS(TM)", and the "Official Nintendo Seal(R)", (b) select
trade dress associated with the Nintendo DS system and licensed Games for
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play thereon, (c) Proprietary Rights in the Security Technology incorporated
into the Game Cards, (d) rights in the Development Tools for use in developing
the Games, (e) patents or design registrations associated with the Game Cards,
(f) copyrights in the Guidelines, and (g) other Proprietary Rights of Nintendo
in the Confidential Information.
2.11 "Licensed Products" means (a) Finished Products, or (b) Bulk Goods
when fully assembled and shrink-wrapped with the Printed Materials.
2.12 "Marketing Materials" means marketing, advertising or promotional
materials developed by or for LICENSEE (or subject to LICENSEE's approval) to
promote the sale of the Licensed Products, including, but not limited to,
television, radio and on-line advertising, point-of-sale materials (e.g.
posters, counter-cards), package advertising and print media or materials.
2.13 "NDA" means the non-disclosure agreement providing for the protection
of Confidential Information related to the Nintendo DS system previously entered
into between NOA and LICENSEE.
2.14 "Notice" means any notice permitted or required under this Agreement.
All notices shall be sufficiently given when (a) personalty served or delivered,
(b) transmitted by facsimile, with an original sent concurrently by first class
U.S. mail, or (c) deposited, postage prepaid, with a guaranteed air courier
service, in each case addressed as stated herein, or addressed to such other
person or address either party may designate in a Notice. Notice shall be deemed
effective upon the earlier of actual receipt or two (2) business days after
transmittal.
2.15 "Price Schedule" means the current version or any future revision of
NOA's schedule of purchase prices and minimum order quantities for Finished
Products and Bulk Goods.
2.16 "Printed Materials" means the Game Card label and title sheet, user
instruction booklet, poster, warranty card and LICENSEE inserts incorporating
the Artwork, together with a precautions booklet as specified by NOA.
2.17 "Proprietary Rights" means any rights or applications for rights
owned, licensed or otherwise held in patents, trademarks, service marks,
copyrights, mask works, trade secrets, trade dress, moral rights and publicity
rights, together with all inventions, discoveries, ideas, technology, know-how,
data, information, processes, formulas, drawings and designs, licenses, computer
programs, software source code and object code, and all amendments,
modifications, and improvements thereto for which such patent, trademark,
service xxxx, copyright, mask work, trade secrets, trade dress, moral rights or
publicity rights may exist or may be sought and obtained in the future.
2.18 "Reverse Engineer(ing)" means, without limitation, (a) the x-ray,
electronic scanning or physical or chemical stripping of semiconductor
components, (b) the disassembly, decompilation, decryption or simulation of
object code or executable code, or (c) any other technique designed to extract
source code or facilitate the duplication of a program or product.
2.19 "Security Technology" means, without limitation, any security
signature, bios, data scrambling, password, hardware security apparatus,
watermark, hologram, encryption, Digital Rights management system, copyright
management information system or any feature that facilitates or limits
compatibility with other hardware, software, or accessories or other peripherals
outside of the Territory or on a different video game system.
2.20 "Term" means three years from the Effective Date.
2.21 "Territory" means all countries within the Western Hemisphere and
their respective territories and possessions.
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3. GRANT OF LICENSE; LICENSEE RESTRICTIONS
3.1 Limited License Grant. For the Term and for the Territory, NOA grants
to LICENSEE a nonexclusive, nontransferable, limited license to use the
Intellectual Property Rights to develop Games for manufacture, advertising,
marketing and sale as Licensed Products, subject to the terms and conditions of
this Agreement. Except as permitted under a separate written authorization from
Nintendo, LICENSEE shall not use the Intellectual Property Rights for any other
purpose.
3.2 LICENSEE Acknowledgement. LICENSEE acknowledges (a) the valuable nature
of the Intellectual Property Rights, (b) the right, title, and interest of
Nintendo in and to the Intellectual Property Rights, and (c) the right, title
and interest of Nintendo in and to the Proprietary Rights associated with all
aspects of the Nintendo DS system. LICENSEE recognizes that the Games, Game
Cards and Licensed Products will embody valuable rights of Nintendo and
Nintendo's licensors. LICENSEE represents and warrants that it will not
knowingly undertake any act or thing that in any way impairs or is intended to
impair any part of the right, title, interest or goodwill of Nintendo in the
Intellectual Property Rights. LICENSEE's use of the Intellectual Property Rights
shall not create any right, title or interest of LICENSEE therein.
3.3 LICENSEE Restrictions and Prohibitions. LICENSEE is not licensed to,
and covenants that, without the express written consent of Nintendo, it will not
at any time, directly or indirectly, do or cause to be done any of the
following:
(a) grant access to, distribute, transmit or broadcast a Game by
electronic means or by any other means known or hereafter devised, including,
without limitation, by wireless, cable, fiber optic, telephone lines, microwave,
radiowave, computer or other device network, except (a) as a part of wireless
Game play on and among Nintendo DS systems, (b) for the purpose of facilitating
Game development under the terms of this Agreement, or (c) as otherwise approved
in writing by Nintendo. LICENSEE shall use reasonable security measures,
customary within the high technology industry, to reduce the risk of
unauthorized interception or retransmission of any Game transmission. No right
of retransmission shall attach to any authorized transmission of a Game.
(b) modify, install or operate a Game on any server or other device
for the purpose of or resulting in the rental, lease, loan or sale of rights of
access to the Game,
(c) emulate, interoperate, interface or link a Game for operation or
use with any hardware platform, software program, accessory, computer language,
computer environment, chip instruction set, consumer electronics device,
telephone, cellphone, PDA, or other device, including for purposes of data
interchange, password usage or interactive video game play, other than a
Nintendo DS system, an application approved by Nintendo, or the Development
Tools,
(d) emulate any past, current or future Nintendo brand video game
system, or any portion thereof, in software or hardware or any combination
thereof,
(e) embed, incorporate, or store a Game in any media or format except
the Game Card format utilized by the Nintendo DS system, except as may be
necessary as a part of the Game development process under this Agreement,
(f) design, implement or undertake any process, procedure, program or
act designed to circumvent the Security Technology,
(g) utilize the Intellectual Property Rights to design or develop any
interactive video game program, except as authorized under this Agreement,
(h) manufacture or reproduce a Game developed under this Agreement,
except through Nintendo, or
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(i) Reverse Engineer or assist in the Reverse Engineering of all or
any part of the Nintendo DS system, including the hardware or software (whether
embedded or otherwise), the Development Tools or the Security Technology.
3.4 No Free-Riding; No Co-Publishing Arrangements. To protect Nintendo's
valuable Intellectual Property Rights, to prevent the dilution of Nintendo's
trademarks and to preclude free-riding by third parties on the goodwill
associated with Nintendo's trademarks, the license granted under this Agreement
is limited to LICENSEE and may not be delegated or contracted out for the
benefit of a third party, or to a division, affiliate, or subsidiary of
LICENSEE. This Agreement, together with all submissions, representations,
undertakings and approvals contemplated of LICENSEE by this Agreement, is and
shall remain the right and obligation only of LICENSEE. All Printed Materials
and Marketing Materials for a Game shall prominently and accurately identify
LICENSEE as NOA's licensee. NOA does not permit the designation or
identification of any third party co-publisher for a Game on any Licensed
Product Game Card case or Game Card label, however, LICENSEE may identify a
third party as a co-publisher, licensor, developer or other partner of LICENSEE
in those Printed Materials (other than the Game Card label), Marketing Materials
or Game credits, as authorized under the Guidelines. For purposes of
clarification, LICENSEE's name, or logo, will appear on the Licensed Product
Game Card case and Game Card label as it appears in the preamble of this
Agreement.
3.5 Development Tools. Nintendo may lease, loan or sell Development Tools
to LICENSEE to assist in the development of Games under this Agreement.
Ownership and use of any Development Tools provided to LICENSEE by Nintendo
shall be subject to the terms of this Agreement and any separate license or
purchase agreement required by Nintendo. LICENSEE acknowledges the exclusive
interest of Nintendo in and to the Proprietary Rights associated with the
Development Tools. LICENSEE's use of the Development Tools shall not create any
right, title or interest of LICENSEE therein. LICENSEE shall not, directly or
indirectly, (a) use the Development Tools for any purpose except the design and
development of Games under this Agreement, (b) reproduce or create derivatives
of the Development Tools, except in association with the development of Games
under this Agreement, (c) Reverse Engineer the Development Tools, or (d) sell,
lease, assign, lend, license, encumber or otherwise transfer the Development
Tools. Any tools developed or derived by LICENSEE as a result of a study of the
performance, design or operation of the Development Tools shall be considered
derivative works of the Intellectual Property Rights and shall belong to
Nintendo, but may be retained and utilized by LICENSEE in connection with this
Agreement. In no event shall LICENSEE (i) seek, claim or file for any patent,
copyright or other Proprietary Right with regard to any such derivative work,
(ii) make available any such derivative work to any third party, or (iii) use
any such derivative work except in connection with the design and development of
Games under this Agreement.
4. SUBMISSION OF GAME AND ARTWORK FOR APPROVAL
4.1 Development and Sale of the Games. LICENSEE may develop Games and have
manufactured, advertise, market and sell Licensed Products for play on the
Nintendo DS system only in accordance with this Agreement.
4.2 Third Party Developers. LICENSEE shall not disclose the Confidential
Information, the Guidelines or the Intellectual Property Rights to any
Independent Contractor, nor permit any Independent Contractor to perform or
assist in development work for a Game, unless and until such Independent
Contractor has been approved by NOA and has executed a written confidentiality
agreement with NOA relating to the Nintendo DS system.
4.3 Delivery of Completed Game. Upon completion of a Game, LICENSEE shall
deliver a prototype of the Game to NOA in a format specified in the Guidelines,
together with written user instructions, a complete description of any security
holes, backdoors, time bombs, cheats, "easter eggs" or other hidden features or
characters in the Game and a complete screen text script. NOA shall promptly
evaluate the Game with regard to its technical compatibility with and error-free
operation on the Nintendo DS system. LICENSEE is responsible for ensuring that
the Game and any other content to be included on the Game Card complies with the
Advertising Code of Conduct of the Entertainment Software
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Ratings Board ("ESRB") and that the Game has been rated EC, E, M or T by the
ESRB. LICENSEE shall provide NOA with a related certificate of rating for the
Game from the ESRB.
4.4 Approval of Completed Game. NOA shall, within a reasonable period of
time after receipt, approve or disapprove each submitted Game. If a Game is
disapproved, NOA shall specify in writing the reasons for such disapproval and
state what corrections or improvements are necessary. After making the necessary
corrections or improvements, LICENSEE shall submit a revised Game to NOA for
approval. NOA shall not unreasonably withhold or delay its approval of any Game.
The approval of a Game by NOA shall not relieve LICENSEE of its sole
responsibility for the development, quality and operation of the Game or in any
way create any warranty for a Game or a Licensed Product by NOA.
4.5 Submission of Artwork. Upon submission of a completed Game to NOA,
LICENSEE shall prepare and submit to NOA the Artwork for the proposed Licensed
Product. (****) NOA shall approve or disapprove the Artwork. If any Artwork is
disapproved, NOA shall specify in writing the reasons for such disapproval and
state what corrections or improvements are necessary. After making the necessary
corrections or improvements, LICENSEE shall submit revised Artwork to NOA for
approval. NOA shall not unreasonably withhold or delay its approval of any
Artwork. The approval of the Artwork by NOA shall not relieve LICENSEE of its
sole responsibility for the development and quality of the Artwork or in any way
create any warranty for the Artwork or any Licensed Product by NOA.
4.6 Artwork for Bulk Goods. If LICENSEE submits an order for Bulk Goods,
all Artwork shall be submitted to NOA in advance of NOA's acceptance of the
order and no production of Printed Materials shall occur until such Artwork has
been approved by NOA under Section 4.5 herein.
5. ORDER PROCESS, PURCHASE PRICE, PAYMENT AND DELIVERY
5.1 Submission of Orders by LICENSEE. LICENSEE may at any time submit
written purchase orders to NOA for any approved Licensed Product title. The
purchase order shall specify whether it is for Finished Products or Bulk Goods.
The terms and conditions of this Agreement shall control over any contrary terms
of such purchase order or any other written documents submitted by LICENSEE. All
orders are subject to acceptance by NOA in Redmond, WA.
5.2 Purchase Price and Minimum Order Quantities. The purchase price and
minimum order quantities for Finished Products and Bulk Goods shall be set forth
in NOA's then current Price Schedule. The purchase price includes the cost of
manufacturing together with a royalty for the use of the Intellectual Property
Rights. No taxes, duties, import fees or other tariffs related to the
development, manufacture, import, marketing or sale of the Licensed Products are
included in the purchase price and all such taxes are the responsibility of
LICENSEE (except for taxes imposed on NOA's income). The Price Schedule is
subject to change by NOA at any time, provided, however, that any price increase
shall be applicable only to purchase orders submitted, paid for, and accepted by
NOA after the effective date of the price increase.
5.3 Payment. Upon placement of an order with NOA, LICENSEE shall pay the
full purchase price to NOA either (a) by placement of an irrevocable letter of
credit in favor of NOA and payable at sight, issued by a bank acceptable to NOA
and confirmed, if requested by NOA, at LICENSEE's expense, or (b) in cash, by
wire transfer to NOA's designated account. All associated banking charges are
the responsibility of the LICENSEE.
5.4 Shipment and Delivery. All Licensed Products shall be delivered to
LICENSEE EXW Ex works Japan (as defined by Incoterms 2000), or such other
delivery point specified by NOA, with shipment at LICENSEE's direction and
expense. Orders may be delivered by NOA in partial shipments, each directed to
(****) destinations designated by LICENSEE within the Territory. Title to the
Licensed Products shall vest in accordance with the terms of the applicable
letter of credit or, in the absence thereof, at the point of delivery.
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6. MANUFACTURE OF THE LICENSED PRODUCT
6.1 Manufacturing. Nintendo shall be the exclusive source for the
manufacture of the Game Cards, and shall control all aspects of the
manufacturing process, including the selection of the locations and
specifications for any manufacturing facilities, determination of materials and
processes, appointment of suppliers and subcontractors and management of all
work-in-progress.
6.2 Manufacture of the Licensed Products. Upon acceptance by NOA of a
purchase order for an approved Licensed Product title and payment as provided
for under Section 5.3 herein, NOA will arrange for the manufacture of Finished
Product or Bulk Goods, as specified in LICENSEE's purchase order.
6.3 Security Features. The final release version of the Game, Game Cards
and Printed Materials shall include such Security Technology as Nintendo, in its
sole discretion and at its sole expense, may deem necessary or appropriate.
6.4 Production of Bulk Goods Printed Materials. For Bulk Goods, LICENSEE
shall arrange and pay for the production of the Printed Materials using the
Artwork. Upon receipt of an order of Bulk Goods, LICENSEE shall assemble the
Game Cards and Printed Materials into the Licensed Products. Games may be sold
or otherwise distributed by LICENSEE only in fully assembled and shrink-wrapped
Licensed Products.
6.5 Prior Approval of LICENSEE's Independent Contractor. Prior to the
placement of a purchase order for Bulk Goods, LICENSEE shall obtain NOA's
approval of any Independent Contractors selected to perform LICENSEE's
production and assembly operations, such approval not to be unreasonably
withheld. LICENSEE shall provide NOA with the names, addresses and all business
documentation reasonably requested by NOA for such Independent Contractors. NOA
may, prior to approval and at reasonable intervals thereafter, (a) require
submission of additional business or financial information regarding the
Independent Contractors, (b) inspect the facilities of the Independent
Contractors, and (c) be present to supervise any work on the Licensed Products
to be done by any Independent Contractors. If at any time NOA deems an
Independent Contractor to be unable to meet quality, security or performance
standards reasonably established by NOA, NOA may refuse to grant its approval or
withdraw its approval upon Notice to LICENSEE. LICENSEE may not proceed with the
production of the Printed Materials or assembly of the Licensed Product by such
Independent Contractor until NOA's concerns have been resolved to its
satisfaction or until LICENSEE has selected and received NOA's approval of
another Independent Contractor. NOA may establish preferred or required supply
sources for the Game Card case, or select components of the Printed Materials,
which sources shall be deemed pre-approved in accordance with this Section 6.5.
LICENSEE shall comply with all sourcing requirements established by NOA.
6.6 NOA Inserts for Bulk Goods. NOA, at its option and at its sole expense,
may provide LICENSEE with NOA produced promotional materials (as provided for at
Section 7.7(a) herein), that LICENSEE agrees to include in the assembly of the
Licensed Products.
6.7 Sample Printed Materials and Bulk Goods. Within a reasonable period of
time after LICENSEE's assembly of the initial order for a Bulk Goods title,
LICENSEE shall provide NOA with (a) (****) sample of the fully assembled,
shrink-wrapped Licensed Product, and (b) (****) samples of LICENSEE produced
Printed Materials for such Licensed Product.
6.8 Retention of Sample Licensed Products by Nintendo. Nintendo may, at its
own expense, manufacture reasonable quantities of the Game Cards or the Licensed
Products to be used for archival purposes, legal proceedings against infringers
of the Intellectual Property Rights or for other lawful purposes (but not for
resale).
6.9 Retention of User Instruction Booklet by NOA. For use in training
consumer support personnel, product orientation and other consumer support
activities, as well as for archival purposes,
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NOA may (a) retain (or request that LICENSEE provide to NOA) a reasonable number
of copies of the user instruction booklet for each Licensed Product, and (b)
make a reasonable number of copies of the user instruction booklet for each
Licensed Product.
7. MARKETING AND ADVERTISING
7.1 Approval of Marketing Materials. LICENSEE represents and warrants that
the Marketing Materials shall (a) be of high quality and comply with the
Guidelines, (b) comply with all ESRB advertising, marketing and merchandising
guidelines, and (c) comply with all applicable laws and regulations in those
jurisdictions in the Territory where they will be used or distributed. All
LICENSEE controlled websites featuring the Games shall adopt a privacy policy
that is consistent with the principles and guidelines issued by the ESRB and
that complies with the Children's Online Privacy Protection Act. Prior to actual
use or distribution, LICENSEE shall submit to NOA for review samples of all
proposed Marketing Materials. NOA shall, (****) approve or disapprove the
quality of such samples. If any of the samples are disapproved, NOA shall
specify the reasons for such disapproval and state what corrections and/or
improvements are necessary. After making the necessary corrections and/or
improvements, LICENSEE shall submit revised samples for approval by NOA. No
Marketing Materials shall be used or distributed by LICENSEE without NOA's prior
written approval. NOA shall not unreasonably withhold or delay its approval of
any proposed Marketing Materials.
7.2 No Bundling. To protect Nintendo's valuable Intellectual Property
Rights, to prevent the dilution of Nintendo's trademarks and to preclude
free-riding by non-licensed products on the goodwill associated with Nintendo's
trademarks, LICENSEE shall not market or distribute any Licensed Products that
are bundled with (a) any peripheral designed for use with the Nintendo DS system
that has not been licensed or approved in writing by NOA, or (b) any other
product or service where Nintendo's sponsorship, association, approval or
endorsement might be suggested by the bundling of the products or services.
7.3 Warranty and Repair. LICENSEE shall provide the original consumer with
(****) day limited warranty on all Licensed Products. LICENSEE shall also
provide reasonable product service, including out-of-warranty service, for all
Licensed Products.
7.4 Business Facilities. LICENSEE agrees to develop and maintain (a)
suitable office facilities within the United States, adequately staffed to
enable LICENSEE to fulfill all responsibilities under this Agreement, (b)
necessary warehouse, distribution, marketing, sales, collection and credit
operations to facilitate proper handling of the Licensed Products, and (c)
customer service and Game counseling, including telephone service, to adequately
support the Licensed Products.
7.5 No Sales Outside the Territory. LICENSEE represents and warrants that
it shall not market, sell, offer to sell, import or distribute the Licensed
Products outside the Territory, or within the Territory when LICENSEE has actual
knowledge or information that would lead a reasonable person to believe that a
subsequent destination of the Licensed Product is outside the Territory.
7.6 Defects and Recall. In the event of a material programming defect in a
Licensed Product that would, in NOA's reasonable judgment, significantly impair
the ability of a consumer to play the Game, NOA may, after consultation with
LICENSEE, require the LICENSEE to recall the Licensed Product and undertake
suitable repairs or replacements.
7.7 NOA Promotional Materials, Publications and Events. At its option, NOA
may (a) insert in the Printed Materials for the Licensed Products promotional
materials concerning Nintendo Power magazine or other NOA products, services or
programs, (b) utilize screen shots, Artwork and Information regarding the
Licensed Products in Nintendo Power, Nintendo Power Source, official
Nintendo-sponsored web sites, or other advertising, promotional or marketing
media that promotes Nintendo products, services or programs, and (c) exercise
public performance rights in the Games and use related trademarks and Artwork in
connection with NOA sponsored contests, tours, conventions, trade shows,
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press briefings and similar events that promote the Nintendo DS system. NOA
shall make a reasonable, good faith effort to advise Licensee in advance of any
such use of Licensee's games.
7.8 Nintendo Gateway System. To promote and increase demand for games on
Nintendo video game systems, NOA licenses a system (the "Nintendo Gateway
System") in various non-coin activated commercial settings such as commercial
airlines, cruise ships, rail systems and hotels, where customers play games on
specially adapted Nintendo video game systems. If NOA identifies a Game for
possible license on the Nintendo Gateway System, the parties agree to conduct
good faith negotiations toward including the Game in the Nintendo Gateway
System.
8. CONFIDENTIAL INFORMATION
8.1 Definition. "Confidential Information" means information provided to
LICENSEE by Nintendo or any third party working with Nintendo relating to the
hardware and software for the Nintendo DS system or the Development Tools,
including, but not limited to, (a) all current or future information, know-how,
techniques, methods, information, tools, emulator hardware or software, software
development specifications and/or trade secrets, (b) any patents or patent
applications, (c) any business, marketing or sales data or information, and (d)
any other information or data relating to development, design, operation,
manufacturing, marketing or sales. Confidential Information shall include all
confidential information disclosed, whether in writing, orally, visually, or in
the form of drawings, technical specifications, software, samples, pictures,
models, recordings, or other tangible items which contain or manifest, in any
form, the above listed information. Confidential Information shall not include
(i) data and information that was in the public domain prior to LICENSEE's
receipt of the same hereunder, or that subsequently becomes part of the public
domain by publication or otherwise, except by LICENSEE's wrongful act or
omission, (ii) data and information that LICENSEE can demonstrate, through
written records kept in the ordinary course of business, was in its possession
without restriction on use or disclosure, prior to its receipt of the same
hereunder and was not acquired directly or indirectly from Nintendo under an
obligation of confidentiality that is still in force, and (iii) data and
information that LICENSEE can show was received by it from a third party who did
not acquire the same directly or indirectly from Nintendo and to whom LICENSEE
has no obligation of confidentiality.
8.2 Disclosures Required by Law. LICENSEE shall be permitted to disclose
Confidential Information if such disclosure is required by an authorized
governmental or judicial entity, provided that NOA is given Notice thereof
(****) prior to such disclosure, or such lesser period if required. LICENSEE
shall use its best efforts to limit the disclosure to the greatest extent
possible, consistent with LICENSEE's legal obligations, and if required by NOA,
shall cooperate in the preparation and entry of appropriate protective orders.
8.3 Disclosure and Use. NOA may provide LICENSEE with highly confidential
development information, Guidelines, Development Tools, systems, specifications
and related resources and information constituting and incorporating the
Confidential Information to assist LICENSEE in the development of Games.
LICENSEE agrees to maintain all Confidential Information as strictly
confidential and to use such Confidential Information only in accordance with
this Agreement. LICENSEE shall limit access to the Confidential Information to
LICENSEE's employees having a strict need to know and shall advise such
employees of their obligation of confidentiality as provided herein. LICENSEE
shall require each such employee to retain in confidence the Confidential
Information pursuant to a written non-disclosure agreement between LICENSEE and
such employee. LICENSEE shall use its best efforts to ensure that its employees
working with or otherwise having access to Confidential Information shall not
disclose or make any unauthorized use of the Confidential Information.
8.4 No Disclosure to Independent Contractors. LICENSEE shall not disclose
the Confidential Information to any Independent Contractor without the prior
written consent of NOA. Any Independent Contractor seeking access to
Confidential Information shall be required to enter into a written
non-disclosure agreement with NOA prior to receiving any access to or disclosure
of the Confidential Information from either LICENSEE or NOA.
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8.5 Agreement Confidentiality. LICENSEE agrees that the terms, conditions
and contents of this Agreement shall be treated as Confidential Information. Any
public announcement or press release regarding this Agreement or the release
dates for Games developed by LICENSEE under this Agreement shall be subject to
NOA's prior written approval. The parties may disclose this Agreement (a) to
accountants, banks, financing sources, lawyers, parent companies and related
parties under substantially equivalent confidentiality obligations, (b) in
connection with any formal legal proceeding for the enforcement of this
Agreement, (c) as required by the regulations of the Securities and Exchange
Commission ("SEC"), provided that all Confidential Information regarding NOA
shall be redacted from such disclosures to the maximum extent allowed by the
SEC, (d) in response to lawful process, subject to a written protective order
approved in advance by NOA, and (e) to a third party proposing to enter into a
business transaction with LICENSEE or with NOA, but only to the extent
reasonably necessary for carrying out the proposed transaction and only under
terms of mutual confidentiality.
8.6 Notification Obligations. LICENSEE shall promptly notify NOA of the
unauthorized use or disclosure of any Confidential Information by LICENSEE or
any of its employees, or any Independent Contractor or its employees, and shall
promptly act to recover any such information and prevent further breach of the
obligations herein. The obligations of LICENSEE set forth herein are in addition
to and not in lieu of any other legal remedy that may be available to NOA under
this Agreement or applicable law.
8.7 Continuing Effect of the NDA. The terms of this Section 8 supplement
the terms of the NDA, which shall remain in effect. In the event of a conflict
between the terms of the NDA and this Agreement, the terms of this Agreement
shall control.
9. REPRESENTATIONS AND WARRANTIES
9.1 LICENSEE's Representations and Warranties. LICENSEE represents and
warrants that:
(a) it is a duly organized and validly existing corporation and has
full authority to enter into this Agreement and to carry out the provisions
hereof,
(b) the execution, delivery and performance of this Agreement by
LICENSEE does not conflict with any agreement or understanding to which LICENSEE
may be bound, and
(c) excluding the Intellectual Property Rights, LICENSEE is either (i)
the sole owner of all right, title and interest in and to the trademarks,
copyrights and other intellectual property rights used on or in association with
the development, advertising, marketing and sale of the Licensed Products and
the Marketing Materials, or (ii) the holder of such rights to the trademarks,
copyrights and other intellectual property rights that have been licensed from a
third party as are necessary for the development, advertising, marketing and
sale of the Licensed Products and the Marketing Materials under this Agreement.
9.2 NOA's Representations and Warranties. NOA represents and warrants that:
(a) it is a duly organized and validly existing corporation and has
full authority to enter into this Agreement and to carry out the provisions
hereof, and
(b) the execution, delivery and performance of this Agreement by NOA
does not conflict with any agreement or understanding to which NOA may be bound.
9.3 INTELLECTUAL PROPERTY RIGHTS DISCLAIMER BY NOA. NOA MAKES NO
REPRESENTATION OR WARRANTY CONCERNING THE SCOPE OR VALIDITY OF THE INTELLECTUAL
PROPERTY RIGHTS. NOA DOES NOT WARRANT THAT THE DESIGN, DEVELOPMENT, ADVERTISING,
MARKETING OR SALE OF THE LICENSED PRODUCTS OR THE USE OF THE INTELLECTUAL
PROPERTY RIGHTS BY LICENSEE WILL NOT INFRINGE UPON PATENT, COPYRIGHT, TRADEMARK
OR OTHER PROPRIETARY RIGHTS OF A THIRD PARTY. ANY WARRANTY THAT MAY BE PROVIDED
IN ANY APPLICABLE PROVISION OF THE UNIFORM
PAGE 9 OF 14
COMMERCIAL CODE OR ANY OTHER COMPARABLE LAW OR STATUTE IS EXPRESSLY DISCLAIMED.
LICENSEE HEREBY ASSUMES THE RISK OF INFRINGEMENT.
9.4 GENERAL DISCLAIMER BY NOA. NOA DISCLAIMS ANY AND ALL WARRANTIES WITH
RESPECT TO THE LICENSED PRODUCTS, INCLUDING, WITHOUT LIMITATION, THE SECURITY
TECHNOLOGY. LICENSEE PURCHASES AND ACCEPTS ALL LICENSED PRODUCTS ON AN "AS IS"
AND "WHERE IS" BASIS. NOA DISCLAIMS ALL WARRANTIES UNDER THE APPLICABLE LAWS OF
ANY COUNTRY, EXPRESS OR IMPLIED, INCLUDING IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A GENERAL OR PARTICULAR PURPOSE.
9.5 LIMITATION OF LIABILITY. TO THE MAXIMUM EXTENT PERMITTED BY LAW,
NEITHER NOA NOR NINTENDO CO., LTD., NOR LICENSEE, (NOR THEIR RESPECTIVE
AFFILIATES, LICENSORS OR SUPPLIERS) SHALL BE LIABLE FOR LOSS OF PROFITS, OR FOR
ANY SPECIAL, PUNITIVE, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF LICENSEE OR ITS
CUSTOMERS ARISING OUT OF OR RELATED TO THIS AGREEMENT, INCLUDING, WITHOUT
LIMITATION, THE BREACH OF THIS AGREEMENT BY NOA OR LICENSEE, THE MANUFACTURE OF
THE LICENSED PRODUCTS OR THE USE OF THE LICENSED PRODUCTS ON ANY NINTENDO VIDEO
GAME SYSTEM BY LICENSEE OR ANY END USER.
10. INDEMNIFICATION
10.1 LICENSEE's Indemnification. LICENSEE shall Indemnify and hold harmless
NOA and Nintendo Co., Ltd. (and any of their respective affiliates,
subsidiaries, licensors, suppliers, officers, directors, employees or agents)
from any claims, losses, liabilities, damages, expenses and costs, including,
without limitation, reasonable attorneys' fees and costs and any expenses
incurred in the settlement or avoidance of any such claim, that result from or
are in connection with:
(a) a breach of any of the provisions, representations or warranties
undertaken by LICENSEE in this Agreement,
(b) any infringement of a third party's Proprietary Rights as a result
of the design, development, advertising, marketing, sale or use of the Licensed
Products or the Marketing Materials,
(c) any claims alleging a defect, failure to warn, bodily injury
(including death) or other personal or property damage arising out of, or in
connection with, the design, development, advertising, marketing, sale or use of
any of the Licensed Products, and
(d) any federal, state or foreign civil or criminal actions relating
to the design, development, advertising, marketing, sale or use of the Licensed
Products or the Marketing Materials.
NOA and LICENSEE shall give prompt Notice to the other of any indemnified claim
under this Section 10.1. With respect to any third party claim subject to this
indemnity clause, LICENSEE, as indemnitor, shall have the right to select
counsel and to control the defense and/or settlement thereof. NOA may, at its
own expense, participate in such action or proceeding with counsel of its own
choice. LICENSEE shall not enter into any settlement of any such claim in which
(i) NOA or Nintendo Co., Ltd. has been named as a party, or (ii) claims relating
to the Intellectual Property Rights have been asserted, without NOA's prior
written consent. NOA shall provide reasonable assistance to LICENSEE in its
defense of any such claim.
10.2 LICENSEE's Insurance. LICENSEE shall, at its own expense, obtain a
commercial general liability insurance policy (including coverage for
advertising injury and product liability claims) from an insurance company rated
at least B+ by A.M. Best. Such policy of insurance shall be in an amount of
(****) on a per occurrence basis (not claims made) and shall provide for
adequate protection against any suits, claims, loss or damage arising out of or
relating to the Licensed Products. Such policy shall name NOA and Nintendo Co.,
Ltd. as additional insureds and shall specify that it may not be canceled
(****) prior written Notice to NOA. A Certificate of Insurance shall be provided
to NOA's Licensing Department (****)
PAGE 10 OF 14
(****) under this Agreement. If LICENSEE fails to provide NOA's Licensing
Department with such Certificate of Insurance or fails to maintain such
insurance at any time during the Term (****) and fails to cure (****), NOA, in
its sole discretion may 1) terminate this Agreement in accordance with Section
13.2 herein; or 2) secure comparable insurance for the benefit of NOA and
Nintendo Co., Ltd. only, and not for Licensee, at LICENSEE's expense.
10.3 Suspension of Production. In the event NOA reasonably deems itself at
risk with respect to any claim, action or proceeding under this Section 10, NOA
may, at its sole option, suspend production, delivery or order acceptance for
any Licensed Products, in whole or in part, pending resolution of such claim,
action or proceeding.
11. PROTECTION OF PROPRIETARY RIGHTS
11.1 Joint Actions Against Infringers. LICENSEE and NOA may agree to
jointly pursue cases of infringement involving the Licensed Products, as such
Licensed Products will contain Proprietary Rights owned by each of them. Unless
the parties otherwise agree, or unless the recovery is expressly allocated
between them by the court, in the event of such an action, any recovery shall be
used first to reimburse LICENSEE and NOA for their respective reasonable
attorneys' fees and costs incurred in bringing such action, pro rata, and any
remaining recovery shall be distributed to LICENSEE and NOA, pro rata, based
upon the fees and costs incurred in bringing such action.
11.2 Actions by LICENSEE. LICENSEE, without the consent of NOA, may bring
any action or proceeding relating to an infringement or potential infringement
of LICENSEE's Proprietary Rights in the Licensed Products. LICENSEE will have
the right to retain all proceeds it may derive from any recovery in connection
with such actions.
11.3 Actions by NOA. NOA, without the consent of LICENSEE, may bring any
action or proceeding relating to an infringement or potential infringement of
the Intellectual Property Rights. NOA will have the right to retain all proceeds
it may derive from any recovery in connection with such actions.
12. ASSIGNMENT
12.1 Definition. "Assignment" means every type and form of assignment,
transfer, sale, sublicense, delegation, encumbrance, pledge and/or hypothecation
of LICENSEE'S rights or obligations under this Agreement, including, but not
limited to, (a) a voluntary assignment, transfer, sale, sublicense, delegation,
encumbrance, pledge and/or hypothecation by LICENSEE of all or any portion of
its rights or obligations under this Agreement, (b) the assignment, transfer,
sale, sublicense, delegation, encumbrance, pledge and/or hypothecation of all or
any portion of LICENSEE's rights or obligations under this Agreement to or by
LICENSEE's trustee in bankruptcy, receiver, or other Individual or entity
appointed to control or direct the business and affairs of LICENSEE, (c) an
involuntary assignment, transfer, sale, sublicense, delegation, encumbrance,
pledge or hypothecation of all or a portion of LICENSEE's rights or obligations
under this Agreement, including but not limited to a foreclosure by a third
party upon assets of LICENSEE, (d) the merger or consolidation of LICENSEE if
LICENSEE is a corporation, and (e) any other means or method whereby rights or
obligations of LICENSEE under this Agreement are sold, assigned or transferred
to another individual or entity for any reason. Assignment also includes the
sale, assignment, transfer or other event affecting a transfer to a third party
of the controlling interest of LICENSEE, whether by sale, transfer or assignment
of shares in LICENSEE, or by sale, transfer or assignment of partnership
interests in LICENSEE, or otherwise.
12.2 No Assignment by LICENSEE. This Agreement and the subject matter
hereof are personal to LICENSEE. No Assignment of LICENSEE's rights or
obligations hereunder shall be valid or effective without NOA's prior written
consent, which consent may be withheld by NOA (****). In the event of an
attempted Assignment in violation of this provision, NOA shall have the right at
any time, (****), to immediately terminate this Agreement. Upon
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such termination, NOA shall have no further obligation under this Agreement to
LICENSEE or to LICENSEE's intended or purported assignee.
12.3 Proposed Assignment. Prior to any proposed Assignment of this
Agreement, LICENSEE shall give NOA (****) prior written Notice thereof, which
Notice shall disclose the name of the proposed assignee, the proposed effective
date of the Assignment and the nature and extent of the rights and obligations
that LICENSEE proposes to assign. NOA may, (****) approve or disapprove such
proposed Assignment. Unless written consent is given by NOA to a proposed
Assignment, any attempted or purported Assignment shall be deemed disapproved
and NOA shall have the unqualified right, (****) to terminate this Agreement at
any time. Upon termination, NOA shall have no further obligation under this
Agreement to LICENSEE or to LICENSEE's intended or purported assignee.
12.4 LICENSEE's Obligation of Non-Disclosure. LICENSEE shall not (a)
disclose Nintendo's Confidential Information to any proposed assignee of
LICENSEE, or (b) permit access to Nintendo's Confidential Information by any
proposed assignee or other third party, without the prior written consent of NOA
to such disclosure.
13. TERM AND TERMINATION
13.1 Term. This Agreement shall commence on the Effective Date and shall
continue for the Term, unless earlier terminated as provided for herein, or
extended by a written amendment to this Agreement.
13.2 Termination.
(a) In the event that either party commits a material breach of this
Agreement (****) then this Agreement shall, except as otherwise provided,
automatically terminate on the date specified in such Notice.
(b) In the event NOA reasonably believes that LICENSEE has developed,
marketed, or sold a product that infringes any intellectual property rights of
NOA or its parent company, Nintendo Co., Ltd., anywhere in the world, then NOA
may terminate this Agreement upon (****) days Notice to Licensee, provided that
if the parties are able to resolve such alleged infringement (****), such
termination shall not take effect.
(c) At NOA's option, any material breach by LICENSEE of (i) the NDA,
shall be considered a material breach of this Agreement entitling NOA to
immediately terminate this Agreement.
(d) At NOA's option, this Agreement may be terminated immediately and
without Notice in the event that LICENSEE (a) makes an assignment for the
benefit of creditors, (b) becomes insolvent, (c) files a voluntary petition for
bankruptcy, (d) acquiesces to any involuntary bankruptcy petition, (e) is
adjudicated as a bankrupt, or (f) ceases to do business.
13.3 Sell-Off or Destruction of Licensed Product.
(a) Upon (i) the expiration of this Agreement, (ii) its termination
other than by LICENSEE's breach, or (iii) its termination pursuant to Section
13.2(b), LICENSEE shall have a period of (****) to sell any unsold Licensed
Products. All Licensed Products in LICENSEE's control following the expiration
of such sell-off period shall be destroyed by LICENSEE (****) and proof of such
destruction (certified by an officer of LICENSEE) shall be provided to NOA.
(b) If this Agreement is terminated by NOA as a result of a breach of
its terms and conditions by LICENSEE, LICENSEE shall immediately cease all
distribution, advertising, marketing or sale of any Licensed Products. All
Licensed Products in LICENSEE's control as of the date of such
PAGE 12 OF 14
termination shall be destroyed by LICENSEE (****) and proof of such destruction
(certified by an officer of LICENSEE) shall be provided to NOA.
13.4 No Further Use of the Intellectual Property Rights. Upon expiration
and/or termination of this Agreement, LICENSEE shall cease all use of the
Intellectual Property Rights for any purpose, except as may be required in
connection with the sale of Licensed Products authorized under Section 13.3
herein. LICENSEE shall, (****) return or destroy all Guidelines, writings,
drawings, models, data, tools and other materials and things in LICENSEE's
possession or in the possession of any past or present employee, agent or
contractor receiving the information through LICENSEE, that constitute or relate
to or disclose any Confidential Information, without making copies or otherwise
retaining any such Information. Proof of any destruction shall be certified by
an officer of LICENSEE and promptly provided to NOA.
13.5 Permitted Sales After Termination for NOA's Breach. If this Agreement
is terminated by LICENSEE as a result of a breach of its terms or conditions by
NOA, LICENSEE may continue to sell the Licensed Products in the Territory until
the expiration of the Term, at which time the provisions of Section 13.3 shall
apply.
14. GENERAL PROVISIONS
14.1 Export Control. LICENSEE agrees to comply with the export laws and
regulations of the United States and any other country with jurisdiction over
the Licensed Products, Confidential Information, Intellectual Property Rights,
or Development Tools of either party.
14.2 Force Majeure. Neither party shall be liable for any breach of this
Agreement occasioned by any cause beyond the reasonable control of such party,
including governmental action, war, riot or civil commotion, fire, natural
disaster, labor disputes, restraints affecting shipping or credit, delay of
carriers, inadequate supply of suitable materials or any other cause that could
not with reasonable diligence be controlled or prevented by the parties. In the
event of material shortages, including shortages of materials or production
facilities necessary for production of the Licensed Products, NOA reserves the
right to allocate such resources among itself and its licensees.
14.3 Records and Audit. During the Term (****) LICENSEE agrees to keep
accurate, complete and detailed records related to the development and sale of
the Licensed Products and the Marketing Materials. Upon reasonable Notice to
LICENSEE, NOA may, at its expense, through the use of an independent auditor no
more frequently that once per year, audit LICENSEE's records, reports and other
information related to LICENSEE's compliance with this Agreement.
14.4 Waiver, Severability, Integration, and Amendment. The failure of a
party to enforce any provision of this Agreement shall not be construed to be a
waiver of such provision or of the right of such party to thereafter enforce
such provision. In the event that any term, clause or provision of this
Agreement shall be construed to be or adjudged invalid, void or unenforceable,
such term, clause or provision shall be construed as severed from this
Agreement, and the remaining terms, clauses and provisions shall remain in
effect. Together with the NDA, this Agreement constitutes the entire agreement
between the parties relating to the subject matter hereof. All prior
negotiations, representations, agreements and understandings are merged into,
extinguished by and completely expressed by this Agreement and the NDA. Any
amendment to this Agreement shall be in writing, signed by both parties.
14.5 Survival. In addition to those rights specified elsewhere in this
Agreement that may reasonably be interpreted or construed as surviving, the
rights and obligations set forth in Sections 3, 8, 9, 10, 13 and 14 shall
survive any expiration or termination of this Agreement to the degree necessary
to permit their complete fulfilment or discharge.
14.6 Governing Law and Venue. This Agreement shall be governed by the laws
of the State of New York, without regard to its conflict of laws principles. Any
legal action (including judicial and administrative proceedings) with respect to
any matter arising under or growing out of this Agreement,
PAGE 13 OF 14
may be brought in a court of competent jurisdiction in King County, Washington.
Each party hereby consents to the jurisdiction and venue of such courts for such
purposes.
14.7 Equitable Relief. LICENSEE acknowledges that in the event of its
breach of this Agreement, no adequate remedy at law may be available to NOA and
that NOA shall be entitled to seek injunctive or other equitable relief in
addition to any relief available at law.
14.8 Attorneys' Fees. In the event it is necessary for either party to this
Agreement to undertake legal action to enforce or defend any action arising out
of or relating to this Agreement, the prevailing party in such action shall be
entitled to recover from the other party all reasonable attorneys' fees, costs
and expenses relating to such legal action or any appeal therefrom.
14.9 Counterparts and Signature by Facsimile. This Agreement may be signed
in counterparts, that shall together constitute a complete Agreement. A
signature transmitted by facsimile shall be considered an original for purposes
of this Agreement.
IN WITNESS WHEREOF, the parties have entered into this Agreement on the dates
set forth below.
NOA: LICENSEE:
NINTENDO OF AMERICA INC. ATARI, INC.
By: /s/ Xxxxx X. Xxxxxxxxx By: /s/ Xxxxxxx X. Kemnier
--------------------------------- ------------------------------------
Name: Xxxxx X. Xxxxxxxxx Name: Xxxxxxx X. Kemnier
Title: Executive VP, Administration Title: Senior Vice President,
Date: l0/14/05 Business and Legal Affairs
Atari, Inc.
Date: l0/7/05
PAGE 14 OF 14
