SOFTWARE LICENSE AGREEMENT
This Agreement ("Agreement") is entered into and is effective as of August
27, 2001 ("Effective Date") by and between ATI Technologies, Inc., an Ontario
corporation with a place of business at 00 Xxxxxxxx Xxxxxx Xxxxx Xxxx,
Xxxxxxx, Xxxxxxx Xxxxxx X0X 0X0 ("ATI"), on behalf of itself and its
subsidiaries, and Xxxxx & Xxxxxxxxxx Computer Corporation, a Utah corporation
with a place of business at 000 Xxxxx Xxxxx, Xxxx Xxxx Xxxx, Xxxx 00000 XXX
("Licensee").
ARTICLE I
DEFINITIONS
1.1 "Confidential Information" shall mean:
(a) The Source Code of the Licensed Software, and any associated
information in any form, including manuals, and specifications.
(b) All trade secrets and other proprietary ideas, concepts, know-how,
methodologies and all information incorporated in and relating to
the Licensed Software, Products or any ATI ASIC or software used, or
planned to be used, in conjunction therewith.
(c) All enhancements, upgrades, modifications, revisions and new
versions of the Source Code of the Licensed Software.
(d) Any other information described or designated as proprietary or
confidential whether or not owned or developed by ATI, and
information disclosed to ATI by a third party which ATI is obligated
to treat as confidential. Confidential Information shall not include
information which belongs to Licensee or is (i) already known by
Licensee without an obligation of confidentiality, (ii) publicly
known or becomes publicly known (other than as result of any breach
of this Agreement or any other agreement between the parties hereto)
through no unauthorized act of Licensee, (iii) rightfully received
by Licensee from a third party that is not a party to this Agreement
without an obligation of confidentiality, (iv) independently
developed by Licensee without the use of the Confidential
Information and Licensee can prove such independent development, or
(v) prior to any disclosure, is specifically approved in writing for
disclosure by ATI.
1.2 "Derivative Work(s)" shall mean a work or authorship which is based upon the
Licensed Software, or any portion thereof, such as a revision, modification,
port, translation, abridgment, condensation, expansion, collection, compilation,
or any other form in which the Licensed Software or portion thereof may be
recast, transformed or adapted, and which, in the absence of this Agreement or
other authorization by AT[, would constitute an infringement of ATI's copyright
therein.
1.3 "Licensed Purpose" shall mean the development of software applications,
including driver software, to operate solely on or with Licensee's high end
personal computer image generator products which incorporate ATI's Products and
related software technology, and the support of such products.
1.4 "Licensed Software" shall mean the ATI software provided to Licensee as
identified in Attachment A, together with any associated information in any
form, including manuals, and specifications, all trade secrets and other
proprietary ideas, concepts, know-how, methodologies and all information
incorporated in and relating to the Licensed Software, the Products or any ATI
ASIC or software used, or planned to be used, in conjunction therewith, and all
enhancements, upgrades, modifications, revisions and new versions of the Source
Code of the Licensed Software.
1.5 "Object Code" shall mean the machine readable form computer programming code
as opposed to the human readable form of computer programming code.
1.6 "Products" means the ATI chip products currently code named 8200, 8300,
8350, Theater and Xxxxxxx.
1.7 "Site" shall mean the Licensee premises at the address set out above,
together with Licensee premises located at 000 Xxxxx Xxxxx, Xxxx Xxxx Xxxx, Xxxx
00000, XXX.
1.8 "Source Code" shall mean the human readable form computer programming code
and related system level documentation, including all comments and any
procedural code such as job control language.
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ARTICLE II
LICENSE
2.1 License. ATI grants Licensee a non-exclusive, perpetual, , non-transferable,
non-assignable, limited license (i) to use, copy, modify and create Derivative
Works of the Source Code of the Licensed Software internally at the Site solely
for the Licensed Purpose, (ii) to copy, distribute, perform, and sublicense to
end users, in Object Code form only, through all its channels of distribution
worldwide, the Source Code of the Licensed Software and Derivative Works so
developed from the Source Code of the Licensed Software, and (iii) to copy,
modify, create Derivative Works of and redistribute written materials provided
with the Licensed Software which is clearly intended for such purposes. Licensee
may not distribute, market, or sublicense the Source Code of the Licensed
Software. Provided the Licensee remains in compliance with its obligations in
subsection 2.2 and section 3.1, Licensee's license rights with respect to
Derivative Works will survive notwithstanding any expiration or termination of
this Agreement.
2.2 Restrictions. Restrictions regarding Licensee's use of the Confidential
Information regardless of whether the Licensee received the Confidential
Information before, on, or after the Effective Date of this Agreement, are as
follows:
a) Licensee shall use Confidential Information solely for the Licensed
Purpose, and shall protect the confidentiality of Confidential
Information with the same degree of care that it exercises with
respect to its own information of like import, but in no event less
than reasonable care, during the term hereof and for a period of
five (5) years thereafter.
b) Licensee shall limit access to and use of the Confidential
Information only to those of its employees identified on Attachment
B as having a "need to know" to allow Licensee to fulfill the
Licensed Purpose (the "Authorized List'); such list, may be amended
in writing from time to time by written agreement of the parties.
c) Licensee shall ensure that its employees identified on the
Authorized List are advised of the confidential nature of the
Confidential Information and that it may only be divulged to other
members of the Authorized List.
d) Licensee shall not permit any of its employees assigned to REALimage
series chip and related software development to have access to the
Confidential Information.
e) Licensee shall not make or permit others to make any paper or
electronic copies of the Confidential Information, in whole or in
part, except as reasonably required to fulfill the Licensed Purpose
or as otherwise authorized by ATI in writing; provided that on all
such copies Licensee shall reproduce all notices, including without
limitation, copyright and confidentiality notices, on the
Confidential Information.
f) In the event that Licensee uses any of the Confidential Information
to develop software, Licensee shall not distribute that software to
a third party who could reasonably be considered an AT[ competitor
in any format or level of detail which would give the third party
recipient visibility into the design and operation of the AT[
hardware intended to work in conjunction with the Licensed Software.
For greater certainty, but without limitation, Licensee shall not
distribute to any third party ATI competitor the Source Code form of
any software that directly calls on ATI hardware registers. Nothing
in this subsection will prevent Licensee from distributing the
Licensed Software and Derivative Works of the Licensed Software in
Object Code form to end users under the terms of Licensee's end user
license agreement in accordance with Section 2.1 above.
g) NOTWITHSTANDING ANYTHING ELSE EXPRESSED OR IMPLIED IN THIS
AGREEMENT, IN NO EVENT SHALL LICENSEE USE THE CONFIDENTIAL
INFORMATION, INCLUDING THE SOURCE CODE OF THE LICENSED SOFTWARE AND
ALL DERIVATIVE WORKS THEREOF, TO ENABLE, SUPPORT OR OTHERWISE AID
LICENSEE OR A THIRD PARTY TO DEVELOP TECHNOLOGY COMPETITIVE WITH THE
ATI TECHNOLOGY EMBODIED IN OR RELATING TO THE CONFIDENTIAL
INFORMATION.
ARTICLE III
PROTECTION OF PROPRIETARY RIGHTS
3.1 Confidentiality. When not specifically governed by section 2.2 above,
Licensee's obligations with respect to the proprietary rights of ATI are as
follows:
(a) Licensee shall use at least the same means it uses to protect its
own confidential information, but in any event not less than
reasonable means, to prevent the disclosure and to protect the
proprietary nature of the Confidential Information.
3.2 Inspection. Licensee grants to ATI the right, at any time during Licensee's
normal business hours, upon reasonable advance notice, to inspect any premises
where any portion or component of the Source Code of the Licensed Software is
located for the sole purpose of verifying Licensee's compliance with Licensee's
obligations, provided that ATI complies with all security and safety rules in
effect at the Site.
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ARTICLE IV
OWNERSHIP AND FUTURE DEVELOPMENT
4.1 ATI Ownership. Licensee acknowledges and agrees that the Confidential
Information, including without limitation, the Source Code of the Licensed
Software and all intermediate and partial versions thereto, including all
modifications, improvements, enhancements, updates, and bug fixes, Derivative
Works; and all intellectual property rights therein, are and will remain,
subject to the provisions of Section 4.2, the sole and exclusive property of ATI
or a third party which may license parts of the Confidential Information to ATI.
Licensee shall have no right, title or interest therein, except for the license
granted herein and in accordance with the provisions of Section 4.2. If provided
to Licensee, such versions, modifications, improvements, enhancements, updates,
and bug fixes shall be deemed to be Confidential Information and are licensed to
Licensee pursuant to the terms of this Agreement. Licensee waives all moral
rights it may have in such Derivative Works without further consideration.
4.2 Ownership of Derivative Works. As of the date hereof, Licensee acknowledges
and agrees that it has no ownership or other rights to any intellectual property
embodied in the Licensed Software or the Confidential Information. With respect
to Derivative Works of the Licensed Software, ownership will be determined in
accordance with section 4.1, except that the following provisions will apply:
(a) Subject to the terms of this Agreement, Licensee shall own and
hold title to any intellectual property independently conceived and
developed by Licensee or its personnel without reference to the Source
Code of the Licensed Software and the Confidential Information,
whether prior to or during the term of this Agreement ("Background
Licensee IP"). The Parties agree that nothing in this Agreement is to
be construed to grant or imply to AT[ any rights with respect to
Background Licensee IP, except as provided for in subsection (c)
below.
(b) In the event Licensee has developed or develops Background
Licensee IP capable of being incorporated into a Derivative Work and
does not intend for ATI to have any ownership interest in such
Background Licensee IP, Licensee will advise ATI in writing of the
same prior to disclosing such Derivative Work to ATI in accordance
with subsection 4.3, and upon receipt of such notice ATI will have no
license or other rights in such Background Licensee IP, provided that
if Licensee incorporates the Background Licensee IP into such
Derivative Work, the provisions of subsection 4.2(c) will apply. If
Licensee elects not to incorporate the Background Licensee IP into
such Derivative Work, then the provisions of subsection 4.2(d) will
apply.
(c) To the extent Licensee incorporates Background Licensee IP into a
Derivative Work of the Licensed Software, Licensee will retain
ownership of such Background Licensee IP, provided that it hereby
grants ATI a royalty free, non-exclusive, perpetual, non-transferable,
non-assignable, limited license, solely for the development of
software applications, including driver software, to operate solely on
or with ATI's products and for the support of such products to: (i)
use, copy, modify and create Derivative Works of the Background
Licensee IP; (ii) copy, distribute, perform, and sublicense to end
users, in Object Code form only, through all its channels of
distribution worldwide, the Background Licensee IP and Derivative
Works so developed from the Source Code of the Background Licensee IP,
and (iii) to copy, modify, create Derivative Works of and redistribute
written materials clearly intended for end users, and which does not
disclose E&S confidential and proprietary information provided
therewith. Licensee waives all moral rights it may have in such
Derivative Works without further consideration.
(d) In the event Licensee, after reviewing the Source Code of the
Licensed Software and electing not to incorporate any, or a portion
of any, Background Licensee IP into a Derivative Work, , Licensee
reserves the right to negotiate terms for the incorporation of this
Background Licensee IP into Licensed Software at a later time during
the term of this Agreement.
4.3 Availability of Licensee Derivatives.
(a) All such Licensee Derivative Works, and any documentation relating thereto,
shall be provided to ATI at Licensee's major release points.
(b) All Derivative Works provided to ATI under subsections a) and b) of this
subsection shall be accompanied by a written description, at the level the
Licensee normally prepares in the course of its design efforts, prepared by a
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knowledgeable technical person of Licensee detailing the changes made, the
functional result thereof, and the reason for making such changes, to the Source
Code of the Licensed Software.
ARTICLE V
WARRANTY, DISCLAIMERS, AND INDEMNIFICATION
5.1 Disclaimer. Both parties represent and warrant that they have full authority
to enter into this Agreement and all of the terms and conditions herein.
LICENSED SOFTWARE PROVIDED TO LICENSEE HEREUNDER IS PROVIDED "AS IS" WITHOUT ANY
WARRANTY WHATSOEVER. THE ENTIRE RISK ASSOCIATED WITH THE USE OF CONFIDENTIAL
INFORMATION RESIDES WITH LICENSEE. ALL OTHER WARRANTIES, EITHER EXPRESS OR
IMPLIED, ARE DISCLAIMED, INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES
OF MERCHANTABILITY, ACCURACY, CONDITION, OWNERSHIP, FITNESS FOR A PARTICULAR
PURPOSE, AND/OR OF NON-INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS.
5.2 Limitation of Liability. EXCEPT FOR LICENSEE'S BREACH OF SECTIONS 2.2 or
3.1, NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL,
PUNITIVE OR SPECIAL DAMAGES.
5.3 Indemnification. Licensee agrees to indemnify, defend, and hold ATI, its
subsidiaries, successors, officers, suppliers, directors and employees harmless
from any and all actions, causes of action, claims, demands, costs, liabilities,
expenses and damages, including reasonable attorneys' fees, arising out of or in
connection with Licensee's use of the Licensed Software and/or any breach of
Licensee's obligations under this Agreement.
ARTICLE VI
TERM AND BREACH
6.1 Term. The term of this Agreement shall commence on the Effective Date and
shall continue for an initial period of three (3) years ("Term"), and shall
automatically renew thereafter for consecutive one year periods, unless
terminated earlier in accordance with the following:
a) In the event of a material breach by one party in the performance of
its duties, obligations or undertakings under this Agreement, the
other party will have the right to give written notice to the
breaching party advising such party of the specific breach involved.
If the breaching party has not remedied such breach within thirty
(30) days after such notice, the other party will have the right, in
addition to any other rights and remedies it may have, to terminate
this Agreement immediately upon written notice to the defaulting
party. The thirty (30) day cure period is not applicable to breaches
of confidentiality or improper disclosure of proprietary technology
or other trade secrets.
b) In the event that the Master Sales Agreement dated of even date
herewith between the parties hereto to which this Agreement is
attached is terminated for Purchaser's failure to make payments
required there under, ATI shall have the right to terminate this
Agreement immediately upon written notice to Purchaser.
c) In the event that a party has been the subject of any voluntary or
involuntary proceeding relating to bankruptcy, insolvency,
liquidation, receivership, composition of or assignment for the
benefit of creditors, the other party may terminate this Agreement
by providing written notice to such party.
6.2 Effect of Termination. Notwithstanding the termination of the Master Sales
Agreement or this Agreement, Licensee may continue to exercise its rights and
licenses in the Licensed Software under Article II to provide support to its
customers for products incorporating the Product.
ARTICLE VII
GENERAL PROVISIONS
7.1 Governing Law/Jurisdiction. This Agreement will be governed by and construed
under the laws of the State of California without reference to its conflicts of
law principles. The rights and obligations under this Agreement shall not be
governed by the United Nations Convention on Contracts or the International Sale
of Goods, the application of which is expressly excluded.
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7.2 Notices. All notices, requests, demands, and other communications to be
given or delivered under or by reason of the provisions of this Agreement shall
be in writing and shall be deemed given when delivered personally upon receipt,
on the next business day when sent by overnight mail, including without
limitation, Federal Express, Express Mail or similar service to each party at
the address provided at the beginning of the Agreement.
7.3 Assignment. Licensee's rights and duties hereunder may not be sublicensed,
assigned or transferred. Any attempt by Licensee to effect such an assignment,
sublicense or transfer will constitute a material breach of this Agreement and
be null and void. ATI may assign its rights and duties hereunder to it parent,
subsidiary or affiliate or in the event of sale or merger.
7.4 Severability. Whenever possible, each provision of this Agreement will be
interpreted in such manner as to be effective and valid under applicable law,
but if any provision of this Agreement is held to be prohibited by or invalid
under applicable law, the parties will negotiate in good faith to restate such
provision to reflect the original intentions of the parties as nearly as
possible in accordance with applicable law and the remaining provisions of this
Agreement shall be enforced as if this Agreement was entered into with the
restated provision.
7.5 Modification; Waiver. This Agreement may be modified only by a written
instrument duly executed by or on behalf of each party hereto. A waiver by
either of the parties hereto of any of the covenants to be performed by the
other or any breach thereof shall not be construed to be a waiver of any
succeeding breach thereof or of any other covenant herein contained.
7.6 Remedies. Except as otherwise provided in this Agreement, all remedies
provided for in this Agreement shall be cumulative and in addition to and not in
lieu of any other remedies available to either party at law, in equity or
otherwise. Licensee acknowledges that any disclosure or distribution of the
Source Code or Confidential Information would cause irreparable injury to ATI
and ATI shall be entitled to seek extraordinary injunctive and other equitable
relief.
7.7 Entire Agreement. This Agreement constitutes the entire agreement among the
parties hereto with respect to the subject matter hereof and supersedes and
replaces in all respects all other prior agreements and understandings between
the parties hereto with respect to the subject matter hereof, whether written or
oral.
7.8 Export. The parties agree to adhere to all applicable Export Laws and
Regulations of the United States and Canada.
7.9 Surviving Obligations. The obligations of Sections 2.1, 2.2, 3.1, 4.2(c) and
Articles IV, V and VII shall survive any termination of this Agreement.
7.10 Similar Development. Licensee understands that ATI may currently or in the
future be developing technology internally, or receiving technology from third
parties that may be similar to technology developed by Licensee with the use of
or access to ATI Confidential Information. Accordingly, nothing in this
Agreement will be construed as a representation or inference that ATI will not
develop. products, or have products developed for it, or enter into joint
ventures, alliances, or licensing arrangements that operate substantially
similar to and/or compete with the technology developed by Licensee following
use of or access to the Confidential Information.
7.11 Residuals. Notwithstanding anything herein to the contrary, any party may
use Residuals for any purpose, including without limitation use in development,
manufacture, promotion, sale and maintenance of its products and services;
provided that this right to Residuals does not represent a license under any
patents, copyrights, mask works or other intellectual property rights of the
disclosing party. The term "Residuals" means any information retained in the
unaided memories of the receiving party's employees who have had access to the
disclosing party's Confidential Information pursuant to the terms of this
Agreement. An employee's memory is unaided if the employee has not intentionally
memorized the Confidential Information for the purpose of retaining and
subsequently using or disclosing it.
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ATI TECHNOLOGIES INC. "LICENSEE"
By: /S/ Xxxx Xxxxx By: /S/ Xxxxx X. Xxxxx
Name: Xxxx Xxxxx Name Xxxxx X. Xxxxx
Title: President and CEO Title: President and CEO
Date: 8/27/01 Date: 8/30/01
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ATTACHMENT A
LIST OF ATI SOFTWARE:
R200 driver Source Code, 8300 driver Source Code, and 8350 driver Source
Code, BIOS source code and driver Source Code for Linux OS. Source Code,
if any, for ATI's Xxxxxxx and Theater products.
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ATTACHMENT B
AUTHORIZED USER LIST:
Personnel of the Xxxxx & Xxxxxxxxxx PC Simulation group comprise the list
of authorized users. The current list of people include:
Xxxx Xxxxxxxxx
Xxx Xxxx
Xxxxx Xxxxx
Xxxxx Xxxxxxx
Xxxxx Xxxxxxx
Xxxxx XxXxxxxx
Xxxxx Xxxxxx
Xxxxxx Xxxxx
Xxxx Xxxxx
Xxxxx Xxxxxx
Xxxx Xxxxxxx
Xxxxxxxx Xxxxxx
Xxxxx Xxxxxxxx
Xxx Xxxxxxx
Xxxx Xxxx
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