EXHIBIT 10.10
AMENDED AND RESTATED
LICENSE AGREEMENT
This Amended and Restated License Agreement ("Agreement") is made effective
as of October 1, 1999, between X10 Ltd., a Bermuda corporation ("Licensor"), and
X10 Wireless Technology, Inc., a Delaware corporation ("Licensee").
RECITALS
A. Licensor has developed technology for use in powerline-, telephone-
and infrared-based home and small office networking products, which is described
in greater detail in Section 1 below;
B. Licensor is the owner of certain patents, copyrights, trade names,
logos, trademarks and service marks used in connection with such technology,
which are described in greater detail in Section 1 below;
C. Licensee is in the business of designing, developing, marketing,
selling and distributing broadband wireless- and powerline-based home and small
office networking products, which are described in greater detail in Section 1
below;
D. Licensee wishes to have the exclusive, worldwide right to use such
patents, copyrights, trade names, logos, trademarks and service marks, and the
non-exclusive, worldwide right to market, distribute and sell products utilizing
such technology and to use such technology in the design, development,
marketing, sale and distribution of Licensee's products worldwide;
E. Licensor is willing to grant such a license on the terms provided in
this Agreement;
F. Licensee and Licensor have previously entered into that certain
License Agreement (the "License Agreement") dated as of October 1, 1999,
pursuant to which Licensor licensed to Licensee certain technology, intellectual
property rights and products related to powerline-based home and small office
networking;
G. The License Agreement did not fully set forth the entire understanding
between the parties with respect to technology, Intellectual Property Rights (as
defined below) and products transferred under the License Agreement; and
H. The parties now wish to amend and restate the License Agreement in
order to clarify and memorialize the correct understanding of the parties with
respect to the technology, Intellectual Property Rights and products transferred
under the License Agreement and to further describe the obligations and
practices of the parties in connection therewith.
AGREEMENT
In consideration of the foregoing, the mutual covenants and conditions
contained in this Agreement and other good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. Definitions. As used in this Agreement, the terms listed below, when
they appear with their initial letters capitalized, shall have the following
meanings:
a. "Affiliate" means any corporation or other person or entity that
directly or indirectly controls, or is directly or indirectly controlled by, or
is under common control with Licensor or Licensee, as the case may be.
b. "Intellectual Property Rights" include any and all rights in any
jurisdiction under any patents (including any extension, reexamination, reissue,
continuation, or renewal patents), copyrights (including any renewal thereof),
mask work rights, trade secrets, trademarks (including any registrations and the
goodwill associated therewith), trade dress, moral rights, or foreign
equivalents of the foregoing, and any other intellectual property or proprietary
rights of any nature.
c. "Licensed Technology" means any and all ideas, concepts,
inventions, designs, hardware and software, or other proprietary information of
Licensor now or hereafter used or applied in the design, development or
manufacture of the Products, including without limitation the libraries and
databases of electronic codes and other information used to make Products
compatible with electronic equipment used in homes and offices, including,
without limitation, the libraries of infrared codes and of designs of
application-specific integrated circuits and printed circuit boards, those
patents and patent applications listed on Exhibit A attached hereto, and the
Intellectual Property Rights in the Products.
d. "Licensor Marks" means all copyrights, trade names, logos,
trademarks and service marks now or hereafter owned by Licensor, including
without limitation "X-10", "X10" and similar marks. The Licensor Marks, as they
presently exist, are described in greater detail on Exhibit A attached hereto.
e. "Products" means all products now or hereafter designed,
developed, manufactured, marketed, sold or distributed by Licensor or Licensee,
or their Affiliates (only to the extent that such products relate to or are
required for powerline-, infrared- or telephone-based networking), together with
any and all future modifications, changes, improvements and replacements to such
products. The Products currently include, without limitation, the products that
are listed on Exhibit B attached hereto.
2. Grant of License.
a. Scope of License. Licensor grants to Licensee:
(i) a perpetual, fully-paid, worldwide license to use the
Licensed Technology to use, design, develop, make, manufacture, modify and
create derivative works from the Products,
2.
(ii) a perpetual, fully-paid, worldwide license to use, make,
manufacture, market, distribute and sell the Products, and
(iii) a perpetual, exclusive (even as to Licensor, except as
provided herein), fully-paid, worldwide license to use the Licensor Marks in
connection with the exercise of the rights granted to Licensee under subsections
(i) and (ii) above and for any other purpose including, without limitation, the
right to use the Licensor Marks in any media whether now known or hereafter
developed.
Licensee shall have the right to assign its rights and obligations described in
this Agreement as provided in Section 5.a below, and the right to sublicense the
rights granted in this Section 2.a to third parties as provided in Section 5.c
below, subject to the terms and conditions set forth in this Agreement.
b. Exclusivity. Licensor agrees that, during the Term of this
Agreement, the licenses granted in subsections (i) and (ii) of Section 2.a shall
be exclusive to Licensee (even as to Licensor, except as provided in this
Section 2.b); provided, however, that:
(i) Licensor may use the Licensed Technology to develop,
manufacture and sell Products on behalf of Licensee pursuant to the terms and
conditions of other agreements entered into by Licensor and Licensee; and
(ii) Licensor may manufacture, market and sell Products that do
not bear the Licensor Marks, other than products in that certain Xxxx of Sale
and Assignment dated as of October 1, 1999 between Licensor and Licensee or any
improvements thereof developed by Licensee, to resellers of Products that are
(a) customized for such resellers, (b) bundled with or incorporated into other
products of the resellers or (c) private-labeled for the resellers. Licensor
shall not enter into direct or indirect competition with Licensee with respect
to the sale or distribution of Products either to end-users or resellers, except
as permitted in this Section 2.b.
c. Ownership. As between Licensor and Licensee, Licensor shall have
title to and interest in and to the Licensed Technology and all Products
designed and developed exclusively by Licensor. As between Licensor and
Licensee, Licensee shall have all right, title and interest in and to any
modifications and improvements created through Licensee's modifications or
improvements to Products owned by Licensor ("Licensee-Modified Products"),
excluding and subject to Licensor's ownership of the underlying Products
including, without limitation, all Intellectual Property Rights therein.
Licensee shall have the right, using in-house or outside legal counsel, to (i)
prepare, file, prosecute, maintain and extend patent applications and patents
concerning all such Licensee-Modified Products, and (ii) prepare and file for
copyright registration for any original works of authorship in countries
throughout the world; provided, however, that Licensee shall bear the costs
relating to such activities. Licensor acknowledges and agrees that all Licensee-
Modified Products shall be the sole and exclusive property of Licensee, and that
the parties do not intend to be joint owners for copyright, patent and other
intellectual property purposes with respect to the Licensee-Modified Products or
any portion thereof. During and after the Term of this Agreement, Licensor will
sign and deliver to Licensee any further documents, including patent or
copyright assignments or applications, to permit Licensee to exercise its rights
pursuant to this Agreement.
3.
3. Delivery of and Access to Licensed Technology. On a regular basis
and, in any event, no less than once per calendar quarter, Licensor shall
communicate to Licensee, for the period since the last such communication, (i)
all modifications and additions made to the Licensed Technology, (ii) any
modifications to existing Products or development of new Products, with brief
descriptions of each, and (iii) any modifications to existing Licensor Marks or
creation of new Licensor Marks. Licensee shall have reasonable access to
Licensor's engineers and facilities in order confirm such modifications.
4. Consideration. As consideration for the license and other rights
granted to Licensee under this Agreement, the cancellation of a promissory note
held by Licensor in the principal amount of $1,024,300 and the execution and
delivery by Licensor of the other agreements between Licensor and Licensee that
are effective on even date herewith, Licensee has issued to Licensor Ten Million
(10,000,000) shares of common stock of Licensee.
5. Confidentiality.
a. Confidential Information. "Confidential Information" shall
consist of all information and materials clearly identified in writing as
Confidential Information including, without limitation, formulas, methods, know
how, processes, designs and new Products.
b. Confidentiality Obligations. Each party shall at all times, both
during and after the term of this Agreement, hold both its Confidential
Information and the Confidential Information of the other party in the strictest
confidence, and shall not use such Confidential Information for any purpose
other than as may be reasonably necessary for the performance of its duties
under this Agreement. Each party shall disclose Confidential Information only
to its employees and third parties who have a need to know such information for
purposes of performance under this Agreement and who have executed
confidentiality agreements with such party sufficient to cover the Confidential
Information disclosed. In addition, during the Term of this Agreement, Licensor
agrees not to disclose any of its Confidential Information to any third party
without Licensee's prior express written consent. The confidentiality
provisions of this Section 5 shall not apply to any information that is or
becomes generally available to the public through no fault of the party seeking
to disclose the information, or any information properly obtained from a
completely independent source under no obligation of confidentiality. These
restrictions also shall not apply to prohibit disclosure of Confidential
Information (x) as required by applicable disclosure laws; or (y) in connection
with a court order requiring disclosure, in which case the party under order
must provide immediate notice of such order to the other party and cooperate in
any attempt to quash such order.
6. Assignment and Sublicensing.
a. Assignment by Licensee. With the prior written consent of
Licensor, which consent shall not be unreasonably withheld, Licensee may assign
this Agreement to any third party, provided such third party agrees to be bound
by all of the terms and obligations of this Agreement. Licensor may withhold
consent to such assignment if Licensor reasonably believes such third party will
be unable or unwilling to perform Licensee's obligations under this Agreement.
Notwithstanding the foregoing, Licensee may assign this Agreement to an
Affiliate of Licensee without the prior consent of Licensor, provided such
Affiliate agrees to be bound by all of the terms
4.
and obligations of this Agreement. Any attempted transfer in violation of this
Section 5.a shall be void and of no effect.
b. Assignment by Licensor. With the prior written consent of
Licensee, which consent shall not be unreasonably withheld, Licensor may assign
this Agreement to any third party in connection with any sale of the Products,
the Licensed Technology and the Marks to such third party, provided such third
party agrees to be bound by all of the terms and obligations of this Agreement.
Licensee may withhold consent to such assignment if Licensee reasonably believes
such third party will be unable or unwilling to perform Licensor's obligations
under this Agreement. Any attempted transfer without such consent shall be void
and of no effect.
c. Sublicense. Licensee shall have the right to grant one or more
sublicenses of any of the rights granted in Section 2.a above to any third party
or parties including, without limitation, directly to any End-User or indirectly
through multiple tiers of third parties such as agents, resellers,
manufacturers, distributors or dealers, in any territory or country, without
restriction to any language or localization. The execution of a sublicense
agreement by Licensee, however, will not relieve Licensee of any obligation to
Licensor hereunder. Licensor shall not sublicense any of the rights granted in
Section 2.a above to any third party without the express written consent of
Licensee.
7. Warranties of Licensor. Licensor represents and warrants that (a)
Licensor is the sole owner, free and clear of all liens, charges, claims and
restrictions, of the Licensed Technology and the Licensor Marks; (b) the
Licensed Technology, the Licensor Marks and the Products, and the Intellectual
Property Rights contained therein, do not infringe upon any rights of any third
parties (excluding any patents or filed patent applications), and to its
knowledge, do not infringe upon any rights of any third parties; (c) Licensor
has the right to grant the rights granted to Licensee in this Agreement; and (d)
Licensor has not previously granted, assigned or otherwise transferred any
rights to any third party that conflict with, or in any other way encumber, its
right to use or grant the licenses granted in this Agreement. Licensor
represents and warrants to Licensee that, where appropriate and customary, the
Intellectual Property Rights in the Licensed Technology, the Products and the
Licensor Marks have been registered. Licensor shall maintain such registrations
at its own expense.
8. Indemnity.
a. Indemnification. Each party (the "Indemnifying Party") shall
defend, indemnify and hold the other party and its officers, directors, agents,
customers and sublicensees harmless from and against any loss, damage, injury,
liability, claims, causes of action or other expense, including reasonable
attorneys' fees involved in the defense of any such action, that the other party
may suffer arising out of or resulting from a claim that any Product belonging
to the Indemnifying Party (or its Affiliates) infringes any patent, copyright,
trademark, trade secret or other Intellectual Property Right held by any third
party. If there is such a claim or if, in the Indemnifying Party's opinion such
a claim is likely to occur, the other party agrees to permit the Indemnifying
Party, at the Indemnifying Party's expense and at its option, either to procure
for the other party a right to continue using the infringing Product or to
replace it with a non-infringing Product or modify it so it becomes non-
infringing; provided, however, that any such replacement or modification will be
equivalent in form and function to the Product that is replaced or modified.
5.
b. Indemnification Procedure. In the event the Indemnifying Party
is obligated to indemnify the other Party (the "Indemnified Party") under this
Agreement, the Indemnified Party will, as soon as is reasonably practicable, (i)
provide the Indemnifying Party with prompt written notice of any claim for which
indemnification is required, (ii) tender the defense of any such claim to the
Indemnifying Party, (iii) provide full cooperation for such defense at the
Indemnifying Party's expense, and (iv) not settle without the Indemnifying
Party's prior written approval, not to be unreasonably withheld. Notwithstanding
the foregoing, failure to give prompt notice as required by this Section 8.b.
shall not preclude any claim for indemnification unless such failure has the
effect of the prejudicing the rights of the Indemnifying Party with respect to
such claim. The Indemnified Party may participate in any such defense or
settlement with counsel of its own choosing at its expense.
9. Term and Termination.
a. Term. The term of this Agreement (the "Term") shall commence on
the date hereof and continue in effect until December 31, 2019. Thereafter, the
Term shall automatically be renewed for subsequent five-year terms unless and
until terminated by Licensee by written notice to Licensor at least ninety (90)
days prior to the expiration of the preceding term or as otherwise provided
herein.
b. Survival. The provisions of this section and Xxxxxxx 0.x,
Xxxxxxx 0.x, Section 5, Section 6.c, Section 7, Section 8, Section 12, Section
13, Section 14 and Section 15 shall survive termination or expiration of this
Agreement for any reason.
10. Notices. All notices or other communications hereunder shall be in
writing and shall be made by hand delivery, internationally-recognized overnight
courier, electronic mail or registered or certified mail, postage prepaid,
return receipt requested, addressed as follows:
X10 Wireless Technology, Inc.: X10 Wireless Technology, Inc.
00000 00xx Xxxxxx Xxxxx
Xxxxxxx, XX 00000-0000
Attn: Chief Financial Officer
e-mail: xxxx@x00.xxx
X10 Ltd.: Xxxx 0000-0,
Hilder Center
0 Xxxx Xxxx Xxxxxx
Xxxxxxx, Xxxxxxx,
Xxxx Xxxx
e-mail: xxxxx@xxx.xxx
or at such other address as shall be furnished by either of the parties by like
notice, and such notice or communication shall be deemed to have been given or
made as of the date so delivered, if delivered personally, one (1) day after
deposit with a internationally-recognized overnight courier, and three (3)
calendar days after so mailed, if sent by registered or certified mail.
6.
11. Entire Agreement. This Agreement constitutes the entire agreement
between the parties with regard to the subject matter hereof, and supersedes all
prior arrangements and negotiations between the parties. This Agreement may be
modified or amended only by mutual written consent of the parties; provided,
however, that after the effective date of the Licensee's first firm commitment
underwritten public offering of its securities registered under the Securities
Act of 1933, as amended, any such modification or amendment shall be effective
only if it is approved by a majority of the directors serving on the Audit
Committee of the Board of Directors of Licensee.
12. Waiver. Failure by either party to enforce at any time any term or
condition under this Agreement shall not be a waiver of the right to act on the
failure of such term or condition and shall not impair or waive that party's
right thereafter to enforce each and every term and condition of this Agreement.
13. Governing Law. This Agreement will be governed and construed in
accordance with the laws of the State of Washington as applied to transactions
taking place wholly within Washington between Washington residents. The parties
hereby expressly consent to the exclusive personal jurisdiction of and venue in
the state and federal courts located in King County, Washington for any lawsuit
filed there arising from or related to this Agreement. Notwithstanding the
foregoing, however, Licensee may bring an action for injunctive or equitable
relief in any jurisdiction it deems reasonably necessary to protect its
proprietary rights. This Agreement shall not be subject to or governed by the
United Nations Convention on Contracts for the International Sale of Goods,
which is specifically disclaimed by the parties. All actions and proceedings
regarding this Agreement shall be conducted in the English language.
14. Severability. If any portion of this Agreement shall be held invalid
or inoperative, then, so far as is reasonable and possible, the remainder of
this Agreement shall be considered valid and operative, and effect shall be
given to the intent manifested by the portion held invalid or inoperative.
15. Attorneys' Fees. The substantially prevailing party in any action
between the parties which is based on this Agreement or any document related
hereto shall have its reasonable attorneys' fees and other costs incurred in
such action or proceeding including any incurred for pre-suit, trial,
arbitration, post-judgment and appeal, paid by the other party.
16. Further Assurances. From and after the date of this Agreement, upon
the request of either Party, the other Party shall execute and deliver such
instruments, documents and other writings as may be reasonably necessary or
desirable to confirm and carry out and to effectuate fully the intent and
purposes of this Agreement.
17. Waiver of Conflicts. Each party to this Agreement acknowledges that
Xxxxxx Godward LLP ("Xxxxxx Godward"), outside general counsel to Licensee,
represents only Licensee with respect to the matters contained in this Agreement
and does not represent Licensor in connection herewith. Licensor understands
that and agrees that it should not rely upon the advice of Xxxxxx Godward with
respect to the matters contained herein, and that it has had adequate
opportunity to obtain the advice of independent legal counsel with respect to
the matters contained in this Agreement.
7.
In Witness Whereof, the parties have executed this Amended and Restated
License Agreement as of the date set forth below.
LICENSOR: LICENSEE:
X10 Ltd., a Bermuda corporation X10 Wireless Technology, Inc., a
Delaware corporation
By /s/ Xxxxxx Xxxxxxxxx By /s/ Xxxx Xxxxxxxx
---------------------------------- ----------------------------------
Xxxxxx Xxxxxxxxx, President Xxxx Xxxxxxxx, Chief Financial Officer
Dated: August 9, 2000 Dated: August 9, 2000
8.
EXHIBIT A
Licensed Technology and Licensor Marks
The Licensed Technology and Licensor Marks include, without limitation, the
following:
Patent Applications:
Appliance Control System (No. 09/364714)
Registered Trademarks and Trademark Applications:
Robodog (No. 2,324,064)
X10 (No. 75/855997)
X-10 and Design
X-10 (No. 1,146,071)
Common Law Trademarks:
X-10
X10
X10 Pro
Powerhouse
X10 Powerhouse
Activehome
PowerHorn
Powermid
Sundowner
Mini Controller
Maxi Controller
The Timer
Sixteen Plus
Two Plus
Powerflash
RoboDog
OnGuard
PalmPad
HomePlate
SuperSocket
SuperREMOTE
ActiveRooms
SoftSwitch
Virtual Wiring
NITEowl
Homeplate Gold
SlimLite
PowerFlash
Protector Plus
Monitor Plus
Big Red
Super Remote
Super Socket
[Logos:]
[LOGO OF X10(R)] [LOGO OF X10(R)] [LOGO OF X10 POWERHOUSE] [LOGO OF X10 PRO(R)]
[LOGO OF X10 PRO(TM)] [LOGO OF X10(R) PRO [LOGO OF X10(R) PRO]
EXHIBIT B
Products
Home Automation Controllers
Wireless Remote Control System RC5000 (includes RT504 and RR501)
8 Button Remote Control RT504
PalmPad(TM) 8 Button Remote Control HR12A
Wireless Remote Control System RC6500 (includes KC674 and TM751)
2 Button Remote Control KC674
Stick-A-Switch(TM) Wireless Wall Switch RW684, 2 unit
Stick-A-Switch(TM) Wireless Wall Switch RW694, 4 unit
Stick-A-Switch(TM) Wireless Wall Switch RW724, 3 unit + Bright/Dim
Mini Controller MC460
Maxi Controller SC503
SUNDOWNER(TM) SD533
Dual-Floodlight Motion Detector PR511
Mini Timer MT522
Mini Timer MT10A
Telephone Responder TR551
Telephone Responder TR16A
Home Automation Interface CP290 (for IBM PC compatibles)
Two-Way Universal Computer Interface CM11A (for IBM PC compatibles)
Thermostat Set-Back TH2807
Home Automation modules
Lamp Module LM465
2-Way Lamp Module LM14A
Wall Switch Module WS467
3-Way Wall Switch WS4777 (includes WS477 Master Switch and CS277 Companion
Switch)
Appliance Module AM486 (2 pin polarized)
2-Way Appliance Module AM14A (2 pin polarized)
Appliance Module AM466 (3 pin grounded)
2-Way Appliance Module AM15A (3 pin grounded)
SuperSocket(TM) Split Receptacle Module SR227
Heavy Duty 220V Appliance Module HD243 (15 A)
Heavy Duty 220V Appliance Module HD245 (20 A)
Remote Controlled Chime Module SC546
Universal Module UM506
Screw-in Lamp Module SL575
SocketRocket(TM) Miniature Screw-in Lamp Module LM15A
Two-Way Wireless Transceiver/Appliance Module RR501
Wireless Transceiver/Appliance Module TM751
3-Way Fluorescent Wall Switch Module WS13A
Decorator Dimmer Switch Module WS14A
Home Entertainment Products
POWERMID(TM) Infrared Remote Extender PM5900
POWERMID Infrared Transmitter ST539
POWERMID Infrared Receiver RE549
POWERMID Infrared Extender RX569
Infrared Gateway Controller IR543
TV Buddy Universal TV Remote UR41A
Security Products
Protector Plus 7 Piece Security System with Voice Dialer DS7000
Protector Plus Security Console/Voice Dialer System VS5600 (PS561 and
SH624)
Monitor Plus Monitored 7 Piece Security System with Digital Communicator
DC8700
DC821 Monitored Console
Security/Home Automation Remote Control SH624
Key Chain Remote KF574
Key Chain Remote KR10A
Door/Window Sensor DW534
Door/Window Sensor DS10A
Motion Detector SP554A
Motion Detector MS10A
POWERHORN Remote Siren PH508
POWERHORN Remote Siren SH10A
POWERFLASH Burglar Alarm Interface PF284
Smart RF Repeater SR731
Personal Security Products
Personal Assistance Security Console/Voice Dialer with Heart-Shaped Panic
Pendant PA5800
Personal Assistance Security Console with Digital Communicator PC9200
PC902 Monitored Console
Water-Resistant Call Pendant HP564A
Big Red(TM) Panic Button KR15A
Wrist Watch Panic Xxxxxx XX00X
Panic Alarm System ORCA 2000
RoboDog(TM) Barking Dog Alarm PK9000
Outdoor Motion Detector for use with RoboDog DM10A
