INTELLECTUAL PROPERTY LICENSE AGREEMENT
This
Intellectual Property License Agreement (the “Agreement”) is effective as of the
Closing Date (as defined herein), between Avid Technology, Inc., a Delaware
corporation (“Parent”) and Pinnacle Systems, Inc., a California corporation and
wholly owned subsidiary of Parent, (“Pinnacle” and together with Parent,
individually and collectively, “Seller”), and PCTV Systems S.a.r.l., a
Luxembourg company (“Buyer”).
WHEREAS,
Seller and certain direct and indirect Subsidiaries of Seller are engaged in,
among other things, the Business (as defined below);
WHEREAS,
Seller and Buyer have entered into an Asset Purchase Agreement, dated as of
October 25, 2008, as amended by Amendment No. 1, dated December 23, 2008
(collectively, “Asset Purchase Agreement”), pursuant to which Buyer, through one
or more of its direct or indirect Subsidiaries, shall purchase and assume, and
Seller, through itself and one or more of its direct or indirect Subsidiaries,
shall sell, transfer and assign, certain assets and liabilities of the Business
to Buyer; and
WHEREAS,
as part of the foregoing, Seller desires to license to Buyer, or one or more of
its direct or indirect Subsidiaries, certain of the Intellectual Property Rights
that have not been assigned or transferred to Buyer or its Subsidiaries under
the Asset Purchase Agreement.
NOW,
THEREFORE, in consideration of the mutual promises of the parties, and of good
and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE
I
DEFINITIONS
For the
purpose of this Agreement, (i) all capitalized terms used herein that are
defined in the Asset Purchase Agreement shall have the meaning ascribed thereto
and (ii) the following capitalized terms are defined in this Article I and shall
have the meaning specified herein:
1.1 “Confidential
Information” has the meaning set forth in Article III.
1.2 “Exploit,” with
respect to Technology, means use, operate, design, develop, integrate, optimize,
test, modify, debug, manufacture, sell, import, offer for sale, distribute,
reproduce, service, maintain, repair and create derivative works of such
Technology and to have any of the foregoing done. Related terms such
as “Exploitation” shall have their correlative meanings.
1.3 “Improvements” to
Technology means (a) with respect to works of authorship, any modifications,
derivative works, and translations of works of authorship; (b) with respect to
databases, any database that is created by extraction or re-utilization of
another database; and (c) with respect to other items included within the
definition of Technology and not covered by Sections (a) – (b) above, any
improvements of Technology. For the purposes of clarification, an
item of Technology will be deemed to be an Improvement of another item of
Technology only if it is actually derived from such other item of Technology and
not merely because it may have the same or similar functionality or use as such
other item of Technology.
1.4 “Intellectual Property
Rights” means, except as expressly set forth below, all intellectual
property rights, including, without limitation, the rights associated with the
following: (a) trade secret rights and all other rights in or to
confidential business or technical information (“Trade Secrets”); (b)
copyrights in any original works of authorship fixed in any tangible medium of
expression as set forth in 17 U. S.C. Section 101 et. seq., any foreign
copyrights under the laws of any jurisdiction, in each case, whether registered
or unregistered, and any applications for registration thereof, and moral rights
under the laws of any jurisdiction (“Copyrights”); and (c)
rights in databases and data collections (including knowledge databases,
customer lists and customer databases), under the laws of the United States or
any other jurisdiction, whether registered or unregistered, and any applications
for registration thereof (“Database
Rights”). “Intellectual Property Rights” specifically excludes
patents, utility models, design patents, design registrations, certificates of
invention and other governmental grants for the protection of inventions or
industrial designs anywhere in the world and all reissues, renewals,
re-examinations, continuations, divisionals, substitutions and extensions of any
of the foregoing; and contractual rights (including license grants) and also
excludes the tangible embodiment of any of the foregoing.
1.5 “Licensed Business
Intellectual Property Rights” means all Intellectual Property Rights that
are owned by Seller or any Subsidiary of Seller as of the Closing Date in and to the Licensed
Business Technology. For clarity, Licensed Business Intellectual
Property Rights excludes the Seller PCTV Intellectual Property.
1.6 “Licensed Business
Technology” means the Technology that is owned by Seller or any
Subsidiary of Seller and set forth in Schedule A
hereto. For clarity, Licensed Business Technology excludes Seller
PCTV Intellectual Property and all products and Technology of Seller and its
Subsidiaries that are not expressly
set forth in Schedule
A, such as, without limitation, Seller’s “VideoSpin”
product.
1.7 “Licensed Field of
Use” means the development, manufacture and sale of personal devices
containing a television tuner for receiving over-the-air, satellite and cable
television signals that are used in conjunction with personal computers for
personal television viewing and the application software designed to operate
directly with such personal devices for device management, playback and
programming received through such personal devices.
1.8 “Subsidiary” or “Subsidiaries” of
Buyer, Seller or any other Person means any corporation, partnership or other
legal entity of which Buyer, Seller or such other Person, as the case may be
(either alone or through or together with any other Subsidiary), owns, directly
or indirectly, more than 50% of the stock or other equity interests the holder
of which is generally entitled to vote for the election of the board of
directors or other governing body of such corporation or other legal
entity.
1.9 “Technology” means
tangible embodiments, whether in electronic, written or other media, of
technology, including inventions, ideas, designs, documentation (such as xxxx of
materials, build instructions and test reports), schematics, layouts, reports,
algorithms, routines, software (including source code and object code), data,
databases, lab notebooks, equipment, processes, prototypes and
devices. Technology does not include Intellectual Property Rights in
any of the foregoing.
1.10 “Third Party” means a
Person other than Seller and its Subsidiaries or Buyer and its
Subsidiaries.
1.11 “VideoSpin” means the
VideoSpin software (a) owned by Seller and marketed by Seller under the name
VideoSpin and (b) installed on physical media in the inventory delivered by
Seller to Buyer on the Closing Date.
ARTICLE
II
LICENSE
GRANTS
2.1 LICENSE
TO BUYER.
(a) Seller
grants to Buyer and its Subsidiaries the following irrevocable (except as set forth in Article IV),
personal, non-exclusive, worldwide, fully paid, royalty-free and
non-transferable (except as specified in Section 7.5 below) licenses, in
perpetuity, under its and their applicable Licensed Business Intellectual
Property Rights, solely within the Licensed Field of Use:
(i) under its
and their Copyrights in and to the Licensed Business Technology, (A) to
reproduce and have reproduced the works of authorship included in such Licensed
Business Technology, (B) to prepare Improvements or have Improvements prepared
for it based upon the works of authorship included in such Licensed Business
Technology, (C) to distribute (by any means and using any technology, whether
now known or unknown, including without limitation electronic transmission)
copies of the works of authorship included in such Licensed Business Technology
and Improvements thereof prepared by or for Buyer to the public in accordance
with Sections 2.1(b) and 2.1(c) below, (D) to perform (by any means and using
any technology, whether now known or unknown, including without limitation
electronic transmission) and display the works of authorship included in such
Licensed Business Technology and Improvements thereof prepared by or for Buyer;
and (E) subject to Sections 2.1(b) and 2.1(c) below, to otherwise Exploit the
works of authorship included in such Licensed Business Technology.
(ii) under its
and their Database Rights in and to the Licensed Business Technology, to extract
data from the databases included in such Licensed Business Technology and to
re-utilize such data to Exploit products or services in the Licensed Field of
Use; and
(iii) under its
and their Trade Secrets in and to the Licensed Business Technology, to use such
Licensed Business Technology and Improvements thereof prepared by or for Buyer
to Exploit products or services in the Licensed Field of Use.
(b) With
respect to software included within the Licensed Business Technology, such
licenses include the right to use, modify, make Improvements and reproduce such
software and Improvements thereof made by or for Buyer or its Subsidiaries, in
source code and object code form, to create products and services in the
Licensed Field of Use, and to distribute and maintain such software and
Improvements thereof made by or for Buyer or its Subsidiaries, in object code
form only, as part products or services in the Licensed Field of
Use.
(c) Buyer
may grant sublicenses within the scope of the licenses granted under Sections
2.1(a) above solely as follows:
(i) Buyer may
grant sublicenses to its Subsidiaries for so long as they remain its
Subsidiaries, with no right to grant further sublicenses, provided that Buyer
shall be deemed responsible for the acts of such Subsidiaries as if they were a
party to this Agreement; and
(ii) Buyer may
grant sublicenses with respect to products solely in the Licensed Field of Use
in the form of software, in object code form only, to its distributors,
resellers, contractors, OEM customers, VAR customers, VAD customers, systems
integrators and other channels of distribution and to its end user customers;
provided that,
such sublicenses shall be consistent in all respects with this Agreement and
shall include standard terms and conditions consistent with end-user object code
license agreements of Seller prior to the date hereof, including, without
limitation, prohibitions on reverse engineering of object code and limitations
of liability.
(d) Buyer
shall own all Intellectual Property Rights in any Improvements to the Licensed
Business Technology made by or for Buyer or its Subsidiaries in accordance with
this Article II.
2.2 NO
IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any Intellectual Property Right, other than the rights expressly granted in this
Agreement.
2.3 LIMITATIONS. Buyer
shall not, and shall cause its Subsidiaries and require its sublicensees not to,
(a) use or allow the use of any Licensed Business Technology or Licensed
Business Intellectual Property Rights for any purpose outside of the Licensed
Field of Use, including, without limitation, in support of the design,
development or distribution of product or service for use outside of the
Licensed Field of Use, or (b) distribute or allow the distribution of any source
code version of the software included in the Licensed Business Technology,
except to Buyer’s. Any breach of this Section 2.3 by an Subsidiary or
sublicensee of Buyer shall be deemed to be a breach of this Agreement by
Buyer.
2.4 LIMITED
GRANT-BACK. In the event that Buyer fails to provide the Assumed
Warranty Obligations set forth in Section 10.7 of the Asset Purchase Agreement,
then, if Seller sends Buyer written notice thereof and such failure continues
unremedied for a period of thirty (30) days following receipt of such notice,
Buyer hereby grants to Seller and its Subsidiaries a personal, non-exclusive,
worldwide, fully paid, royalty-free and non-transferable (except as specified in
Section 7.5 below) license, under its Intellectual Property Rights in and to the
Seller PCTV Intellectual Property, to use, reproduce, have reproduced, prepare
Improvements, distribute (by any means and using any technology, whether now
known or unknown, including without limitation electronic transmission), to
perform (by any means and using any technology, whether now known or unknown,
including without limitation electronic transmission) and display, and otherwise
perform all acts necessary to provide such Assumed Warranty
Obligations. Further, Buyer shall cooperate with reasonable requests
of Seller to facilitate or enable Seller to perform such Assumed Warranty
Obligations. The provisions of this Section 2.4, shall expire two
(2) years following the Closing Date, provided that the provisions of this
Section 2.4 shall survive thereafter with respect to any failure of support
occurring prior to the expiration of such two (2) year period.
2.5 VIDEOSPIN
SOFTWARE DISTRIBUTION LICENSE TO BUYER.
(a)
Seller grants to Buyer a royalty-free, non-transferable, limited, non-exclusive
license to distribute copies of VideoSpin solely pursuant to such end-user terms
and conditions as are provided or made available by Seller to Buyer and/or such
end user. Buyer’s rights granted under this Section 2.5 are limited
to the executable object code version of VideoSpin as it is incorporated in the
inventory delivered to Buyer by Seller on the Closing Date.
(b)
Seller and its Subsidiaries and/or licensors reserve all rights not expressly
granted in this Section 2.5 to VideoSpin and, except as stated in this Section
2.5, Buyer shall make no other utilization of VideoSpin, or use VideoSpin for
the benefit of any other person or entity, or permit any Third Party to make
such utilization, and Buyer shall have no other rights or licenses with respect
to VideoSpin (including rights under any copyrights, patents or other
intellectual property of Seller).
(c)
Without limiting the generality of clause (b) above, and except as expressly
permitted by this Agreement, Buyer agrees: (i) not to copy, modify, port,
translate, localize, or create derivative works of VideoSpin; (ii) not to
disassemble, decompile, reverse engineer or otherwise reduce VideoSpin to source
code form; (iii) not to remove, or allow to be removed, any patent, trademark,
copyright, trade secret, or other proprietary rights notice placed by Seller or
its supplier on VideoSpin; (iv) not to use VideoSpin, or any portion thereof on
a service bureau, time sharing or ASP basis; and (v) not to appoint any
subdistributor, reseller, sales agent or other representative to market or
distribute VideoSpin.
(d)
Seller and Buyer shall negotiate in good faith the terms of any additional Buyer
distribution rights to VideoSpin.
ARTICLE
III
CONFIDENTIALITY
3.1 CONFIDENTIAL
INFORMATION. (a) “Confidential Information” means information, technical data
and know-how which is not otherwise in the public domain and of which the owner
actively undertakes to restrict or control the disclosure to third parties in a
manner reasonably intended to maintain its confidentiality, and which is either
(i) the subject of this Agreement and known to or in the possession of the
receiving party as of the Closing Date or (ii) disclosed to the receiving party
pursuant to this Agreement.
(b) To
be considered Confidential Information, information disclosed after the Closing
Date must (i) be marked as confidential at the time of disclosure; or (ii) if
unmarked (e.g. orally disclosed), be treated as confidential at the time of
disclosure and designated as confidential in a written memorandum sent to the
receiving party’s primary representative within thirty (30) days of disclosure,
summarizing the information sufficiently for identification.
(c) Confidential
Information of Third Parties that is known to, in the possession of or acquired
by a receiving party pursuant to this Agreement shall be deemed the disclosing
party’s Confidential Information for purposes herein.
(d) For
purposes of clarification, Confidential Information of the Seller includes, but
is not limited to, Licensed Business Technology, subject to the terms of Section
3.2 below.
3.2 EXCEPTIONS. Confidential
Information shall not include information that, as of the Closing Date or
thereafter, (i) is or becomes generally available to the public other than as a
result of disclosure made after the execution of the Asset Purchase Agreement by
the party desiring to treat such information as non-confidential or any of its
Affiliates or representatives thereof, (ii) was or becomes readily available to
the party desiring to treat such information as non-confidential or any of its
Affiliates or representatives thereof on a non-confidential basis, (iii) is or
becomes available to the party desiring to treat such information as
non-confidential or any of its Affiliates or representatives thereof on a
non-confidential basis from a source other than its own files or personnel or
the other party or its Affiliates, provided that such
source is not known by the party desiring to treat such information as
non-confidential to be bound by confidentiality agreements with the other party
or its Affiliates or by legal, fiduciary or ethical constraints on disclosure of
such information, or (iv) is required to be disclosed pursuant to a governmental
order or decree or other legal requirement (including the requirements of the
U.S. Securities and Exchange Commission and the listing rules of any applicable
securities exchange), provided that the
party required to disclose such information shall give the other party prompt
notice thereof prior to such disclosure and, at the request of the other party,
shall cooperate in all reasonable respects in maintaining the confidentiality of
such information, including obtaining a protective order or other similar
order. Nothing in this Section 3.2 shall limit in any respect either
party’s ability to disclose information in connection with the enforcement by
such party of its rights under this Agreement; provided that the proviso of
clause (iv) in the immediately preceding sentence shall apply to the party
desiring to disclose such information.
3.3 CONFIDENTIALITY
AND NON-USE OBLIGATIONS. The receiving party shall (i) protect the
Confidential Information of the disclosing party by using the same degree of
care, but no less than a reasonable degree of care, to prevent the unauthorized
use, dissemination, or publication of the Confidential Information as receiving
party uses to protect its own confidential information of a like nature, (ii)
not use such Confidential Information in violation of the restrictions set forth
in this Agreement, and (iii) not disclose such Confidential Information to any
Third Party, except as expressly permitted under this Agreement, without prior
written consent of the Disclosing Party.
3.4 DISCLOSURE
TO SUBLICENSEES. The receiving party has the right to disclose to its
sublicensees permitted under this Agreement portions of Confidential Information
as reasonably necessary in the exercise of the receiving party’s sublicense
rights under this Agreement, subject to the
sublicensee’s agreement in writing to confidentiality and non-use terms at least
as protective of the disclosing party as the provisions of this Article
III.
3.5 DURATION. The
obligations of the parties set forth in this Article III, with respect to the
protection of Confidential Information, shall remain in effect until five (5)
years after (i) the Closing Date, with respect to Confidential Information of
one party that is known to or in the possession of the other party as of the
Closing Date, or (ii) the date of disclosure, with respect to Confidential
Information that is disclosed by the one party to the other party after the
Closing Date.
ARTICLE
IV
TERMINATION
4.1 TERMINATION
FOR BREACH. In the event of a material breach of this Agreement, the
nonbreaching party shall be entitled to terminate this Agreement by written
notice to the breaching party, if such breach is not cured within ninety (90)
days after written notice is given by the nonbreaching party to the breaching
party specifying the breach. Further, upon an “Event of Default” as
defined either in the Secured Promissory Note of even date herewith between
Parent and Buyer, or the Share Pledge Agreement, to be entered into between
Parent and Buyer, Seller shall have the right, immediately upon written notice
to Buyer, to terminate this Agreement and all rights and licenses of Buyer
hereunder, subject only to Section 4.2.
4.2 SURVIVAL. The
following provisions shall survive any termination of this Agreement: Sections
2.2, 2.3, 2.4, this 4.2, and Articles III, V, VI and VII. Upon
termination of this Agreement, all rights and licenses of Buyer under Section
2.1 shall terminate, provided that any and all sublicenses properly granted
pursuant hereto shall survive to the extent necessary such that end-user
sublicenses of product granted in accordance with Section 2.1 shall survive, and
Buyer shall have the right to dispose of all then existing product
inventory.
ARTICLE
V
ADDITIONAL
OBLIGATIONS, REPRESENTATIONS AND WARRANTIES
5.1 Buyer
acknowledges that its employees and contractors who are former Seller employees
and contractors have a continuing duty to assist Seller with in connection with
any Third Party infringement claim or action against Seller, and accordingly,
Buyer agrees to make available, to Seller or its counsel, inventors and other
persons employed by Buyer for interviews and/or testimony to assist in
connection therewith, including the signing of documents related thereto. Any actual and
reasonable out-of-pocket expenses associated with such assistance shall be borne
by Seller, expressly excluding the value of the time of such Buyer personnel;
provided,
however, that in the case of assistance with litigation or any other
assistance that requires significant time commitment by Buyer’s personnel, the
parties shall agree on a case by case basis on compensation of Buyer for the
value of the time of Buyer’s employees as reasonably required in connection with
such litigation.
5.2 On the
Closing Date, Seller shall provide to Buyer the source code and
object code to the Licensed Business Technology, together with database schemas,
user interface specifications, logic flow diagrams, development
documentation comprising a part of
such Licensed Business Technology, including developer notes and memoranda for
such Licensed Business Technology, and a listing of development tools currently
used in creating, enhancing and maintaining the Licensed Business Technology,
and a listing of required third party software currently used by Seller with
respect to the Licensed Business Technology, in each case, to the extent that
such information or Technology is reasonably available to Seller on the Closing
Date and Seller may provide such information or Technology without violating any
right of any third party (collectively, the “Source Code
Materials”). Such material shall be provided in a usable electronic
format.
ARTICLE
VI
LIMITATIONS;
DISCLAIMERS
6.1 IN
NO EVENT SHALL EITHER PARTY OR ITS AFFILIATES BE LIABLE TO THE OTHER PARTY OR
ITS AFFILIATES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE
DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY
(INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR NOT
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE
FOREGOING SHALL NOT, HOWEVER, LIMIT THE DAMAGES AVAILABLE TO EITHER PARTY UNDER
APPLICABLE LAW FOR INFRINGEMENT OR MISAPPROPRIATION OF ITS OR ITS AFFILIATES’
INTELLECTUAL PROPERTY RIGHTS BY THE OTHER PARTY OR SUCH OTHER PARTY’S
AFFILIATES.
6.2 DISCLAIMER. EXCEPT
AS OTHERWISE SET FORTH HEREIN OR IN THE ASSET PURCHASE AGREEMENT, EACH PARTY
ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY AND INTELLECTUAL PROPERTY RIGHTS
LICENSED HEREUNDER, ARE LICENSED “AS IS” AND WITHOUT ANY WARRANTIES WHATSOEVER,
WHETHER EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE, NON-INFRINGEMENT OR
ENFORCEABILITY. Except as otherwise set forth herein or in the Asset
Purchase Agreement, neither party nor any of its Affiliates makes any warranty
or representation that any Exploitation of any product or service will be free
from infringement of any patent or other intellectual property right of any
third party. Except as otherwise set forth
herein or in the Asset Purchase
Agreement, neither Seller nor any of its Subsidiaries makes any warranty
or representation as to the validity and/or scope of any Intellectual Property
Right licensed by it to Buyer hereunder or any warranty or representation that
any Exploitation of any product or service will be free from infringement of any
Intellectual Property Right of any Third Party.
6.3 INFRINGEMENT
SUITS. Neither party shall have any obligation hereunder to institute
any action or suit against Third Parties for infringement or misappropriation of
any Intellectual Property Right in or to any Technology licensed to the other
party hereunder, or to defend any action or suit brought by a Third Party which
challenges or concerns the validity of any of such rights or which claims that
any Technology licensed to the other party hereunder infringes or constitutes a
misappropriation of any Intellectual Property Right of any Third
Party. Seller shall not have any right to institute any action or
suit against Third Parties for infringement of any of the Seller PCTV
Intellectual Property occurring after the date hereof. Buyer shall
not have any right to institute any action or suit against Third Parties for
infringement of any of the Licensed Business Intellectual Property
Rights.
6.4 NO
OBLIGATION TO SUPPORT OR PROVIDE TECHNOLOGY. Except as otherwise set forth
herein or in the Asset Purchase Agreement (or other documents referred to
therein), neither party, nor any of its Affiliates, shall be obligated to
provide the other party with any technical assistance, support, maintenance or
to furnish the other party with, or obtain, any documents, materials or other
information or Technology. Neither party is required hereunder to
furnish or disclose to the other any technical or other information (including
copies of the Licensed Business Technology or Seller PCTV Intellectual
Property), except as specifically provided herein or in the Asset Purchase
Agreement (or any other agreements referred to therein).
ARTICLE
VII
MISCELLANEOUS
PROVISIONS
7.1 PRESS
RELEASES AND ANNOUNCEMENTS. Immediately after the execution and
delivery of this Agreement, the Parties will issue a joint press release
announcing the execution and delivery of this Agreement, substantially in the
form previously delivered to each other. No Party shall issue (and
each Party shall cause its Affiliates not to issue) any other press release or
public disclosure relating to the subject matter of this Agreement without the
prior written approval of the other Party or Parties; provided, however, that any
Party may make any public disclosure it believes in good faith is required by
law, regulation or stock exchange rule (in which case the disclosing Party shall
advise the other Party or Parties and the other Party or Parties shall, if
practicable, have the right to review such press release or announcement prior
to its publication).
7.2 NO
THIRD PARTY BENEFICIARIES. This Agreement shall not confer any rights
or remedies upon any person other than the Parties and their respective
successors and permitted assigns and, to the extent specified herein, their
respective Affiliates.
7.3 ACTION
TO BE TAKEN BY AFFILIATES. The Parties shall cause their respective
Affiliates to comply with all of the obligations specified in this Agreement to
be performed by such Affiliates.
7.4 ENTIRE
AGREEMENT. This Agreement and the Asset Purchase Agreement (including the
documents referred to therein) constitute the entire agreement between the Buyer
and the Seller. This Agreement, together with the Asset Purchase
Agreement, supersede any prior agreements or understandings between the Buyer
and the Seller, and any representations or statements made by or on behalf of
any Seller or any of their respective Affiliates to the Buyer, whether written
or oral, with respect to the subject matter hereof, and the parties hereto
specifically disclaim reliance on any such prior representations or statements
to the extend not embodied in this Agreement or the Asset Purchase
Agreement.
7.5 ASSIGNMENT. No
Party may assign either this Agreement or any of its rights, interests, or
obligations hereunder without the prior written approval of the Parent (in the
case of an assignment by the Buyer) or the Buyer (in the case of an assignment
by any Seller), which written approval shall not be unreasonably withheld or
delayed. Notwithstanding the foregoing, this Agreement, and all
rights, interests and obligations hereunder, may be assigned, without such
consent, to an Affiliate of a Party or to any entity that acquires all or
substantially all of a Party's business or assets, or a division
thereof. This Agreement shall be binding upon and inure to the
benefit of the Parties and their respective successors and permitted
assigns.
7.6 NOTICES. All
notices, requests, demands, claims and other communications hereunder shall be
in writing. Any notice, request, demand, claim or other communication
hereunder shall be deemed duly delivered four business days after it is sent by
registered or certified mail, return receipt requested, postage prepaid, or one
business day after it is sent for next business day delivery via a reputable
nationwide overnight courier service, in each case to the intended recipient as
set forth below:
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If to the
Buyer:
Hauppauge
Digital, Inc.
00
Xxxxx Xxxxx
Xxxxxxxxx,
Xxx Xxxx 00000
Facsimile: (000)
000-0000
Attention:Xxxxxxx
Xxxxxxx
|
Copy
to:
Certilman
Balin Xxxxx & Xxxxx, LLP
00
Xxxxxxx Xxxxxx
Xxxx
Xxxxxx, Xxx Xxxx 00000
Facsimile:
(000) 000-0000
Attention:
Xxxxxx X. Xxxxxxxxxxx, Esq.
|
|
If to any
Seller:
Avid
Technology, Inc.
Avid
Technology Park
Xxx
Xxxx Xxxx
Xxxxxxxxx,
XX 00000
Facsimile: (000)
000-0000
Attention:Legal
Department
|
Copies
to:
Xxxxxx
Xxxxxx Xxxxxxxxx Xxxx and Xxxx LLP
0000
X. Xxxxxxxxxx Xxxxxx
Xxxx
Xxxx, XX 00000
Facsimile:
(000) 000-0000
Attention:
Xxx X. Xxxxxx and Xxxxxx X. Xxxxx
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Any Party
may give any notice, request, demand, claim, or other communication hereunder
using any other means (including personal delivery, expedited courier, messenger
service, telecopy, telex, ordinary mail, or electronic mail), but no such
notice, request, demand, claim or other communication shall be deemed to have
been duly given unless and until it actually is received by the party for whom
it is intended. Any Party may change the address to which notices,
requests, demands, claims and other communications hereunder are to be delivered
by giving the other Parties notice in the manner herein set forth.
7.7 AMENDMENTS
AND WAIVERS. The Parties may mutually amend or waive any provision of
this Agreement at any time. No amendment or waiver of any provision
of this Agreement shall be valid unless the same shall be in writing and signed
by all of the Parties. No waiver by any Party of any default,
misrepresentation, or breach of warranty or covenant hereunder, whether
intentional or not, shall be deemed to extend to any prior or subsequent
default, misrepresentation or breach of warranty or covenant hereunder or affect
in any way any rights arising by virtue of any prior or subsequent such
occurrence.
7.8 SEVERABILITY. Any
term or provision of this Agreement that is invalid or unenforceable in any
situation in any jurisdiction shall not affect the validity or enforceability of
the remaining terms and provisions hereof or the validity or enforceability of
the offending term or provision in any other situation or in any other
jurisdiction. If the final judgment of a court of competent
jurisdiction declares that any term or provision hereof is invalid or
unenforceable, the Parties agree that the body making the determination of
invalidity or unenforceability shall have the power to reduce the scope,
duration or area of the term or provision, to delete specific words or phrases,
or to replace any invalid or unenforceable term or provision with a term or
provision that is valid and enforceable and that comes closest to expressing the
intention of the invalid or unenforceable term or provision, and this Agreement
shall be enforceable as so modified.
7.9 EXPENSES. Except
as otherwise specifically provided to the contrary in this Agreement, each of
the Parties shall bear its own costs and expenses (including legal fees and
expenses) incurred in connection with this Agreement and the transactions
contemplated hereby.
7.10 SPECIFIC
PERFORMANCE. Each Party acknowledges and agrees that the other Party
or Parties would be damaged irreparably in the event any of the provisions of
this Agreement are not performed in accordance with their specific terms or
otherwise are breached. Accordingly, each Party agrees that the other
Party or Parties may be entitled to an injunction or injunctions to prevent
breaches of the provisions of this Agreement and to enforce specifically this
Agreement and the terms and provisions hereof in any action instituted in any
court of the United States or any state thereof having jurisdiction over the
Parties and the matter.
7.11 GOVERNING
LAW. This Agreement and any disputes hereunder shall be governed by
and construed in accordance with the internal laws of the State of New York
without giving effect to any choice or conflict of law provision or rule
(whether of the State of New York or any other jurisdiction) that would cause
the application of laws of any jurisdiction other than those of the State of New
York.
7.12 SUBMISSION
TO JURISDICTION. Each Party (a) submits to the exclusive jurisdiction
of any state or federal court sitting in New York, New York in any action or
proceeding arising out of or relating to this Agreement, (b) agrees that all
claims in respect of such action or proceeding may be heard and determined only
in any such court, (c) waives any claim of inconvenient forum or other challenge
to venue in such court, and (d) agrees not to bring any action or proceeding
arising out of or relating to this Agreement in any other court. Each
Party agrees to accept service of any summons, complaint or other initial
pleading made in the manner provided for the giving of notices in Section
7.6. Nothing in this Section 7.12 however, shall affect the right of
any Party to serve such summons, complaint or initial pleading in any other
manner permitted by law.
7.13 CONSTRUCTION.
(a) The
language used in this Agreement shall be deemed to be the language chosen by the
Parties to express their mutual intent, and no rule of strict construction shall
be applied against any Party.
(b) Any
reference to any federal, state, local, or foreign statute or law shall be
deemed also to refer to all rules and regulations promulgated thereunder, unless
the context requires otherwise.
(c) The
section headings contained in this Agreement are inserted for convenience only
and shall not affect in any way the meaning or interpretation of this
Agreement.
(d) Any
reference herein to an Article, section or clause shall be deemed to refer to an
Article, section or clause of this Agreement, unless the context clearly
indicates otherwise.
(e) All
references to “$”, “Dollars” or “US$” refer to currency of the United States of
America.
(f) As used
in this Agreement, the word “including” and its variants shall mean “including,
without limitation,” the masculine gender shall include the feminine and the
neuter, and the singular number shall include the plural, and vice
versa.
7.14 INCORPORATION
OF SCHEDULES. The Exhibits and Schedules identified in this Agreement
are incorporated herein by reference and made a part hereof.
7.15 COUNTERPARTS
AND FACSIMILE SIGNATURE. This Agreement may be executed in one or
more counterparts, each of which shall be deemed an original but all of which
together shall constitute one and the same instrument. This Agreement
may be executed by facsimile signature.
7.16 ACTION OR
CONSENT BY SELLER. For purposes of this Agreement (including any
notice or consent to be given or action to be taken hereunder or thereafter or
in connection herewith or therewith), the act or consent of any Seller shall
constitute the act or consent of each other Person that is a
Seller.
IN
WITNESS WHEREOF, the Parties have executed this Agreement as of the date first
above written.
SELLERS:
Avid
Technology, Inc.
By: /s/ Xxx Xxxxxx
Name:
Xxx Xxxxxx
Title:
Chief Financial Officer
Pinnacle
Systems, Inc.
By: /s/ Xxx Xxxxxx
Name: Xxx Xxxxxx
Title: President
[Signature
page to Intellectual Property License Agreement]
BUYER:
PCTV
Systems S.a.r.l.
By: /s/ Xxx Xxxxxxx
Name:
Xxx Xxxxxxx
Title:
Chairman
[Signature
page to Intellectual Property License Agreement]
SCHEDULE
A
LICENSED
BUSINESS TECHNOLOGY
