Exhibit 10.9
[***] DENOTES CONFIDENTIAL
MATERIALS OMITTED AND FILED
SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT
CONFIDENTIAL LICENSE
AGREEMENT
FOR THE Wii
CONSOLE
(Western
Hemisphere)
THIS LICENSE
AGREEMENT (“Agreement”) is entered into between
NINTENDO OF AMERICA INC. (“NOA”) at 4820 150th Avenue
N.E., Redmond, WA 98052 Attn: General Counsel (Fax:
425-882-3585) and ACTIVISION PUBLISHING, INC.
(“LICENSEE”) at 3100 Ocean Park Blvd., Santa Monica, CA
90405 Attn: Suzan Rude (Fax: 310-255-2100). NOA and
LICENSEE agree as follows:
1.
RECITALS
1.1
NOA markets and sells advanced design, high-quality video game
systems, including the Wii video game console
(“Wii”).
1.2
LICENSEE desires use of the highly proprietary programming
specifications, unique and valuable security technology,
trademarks, copyrights and other valuable intellectual property
rights of NOA and its parent company, Nintendo Co., Ltd., which
rights are only available for use under the terms of a license
agreement, to develop, have manufactured, advertise, market and
sell video game software for play on Wii.
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 text and design specifications for
the Game Disc label and the Printed Materials in the format
specified by NOA in the Guidelines.
2.2
“Bulk Goods” means Game Discs that have been printed
with the Game Disc label Artwork for delivery to LICENSEE without
Printed Materials or other packaging.
2.3
“Check Disc(s)” means the pre-production Game Discs to
be produced by Nintendo.
2.4
“Confidential Information” means the information
described in Section 8.1.
2.5
“Development Tools” means the development kits,
programming tools, emulators and other materials of Nintendo, or
third parties authorized by Nintendo, that may be used in the
development of Games under this Agreement.
2.6
“Effective Date” means October 12, 2006.
2.7
“Game Discs(s)” means custom optical discs for play on
Wii on which a Game has been stored.
2.8
“Game(s)” means any interactive programs (including
source and object/binary code) developed to be compatible with
Wii.
2.9
“Guidelines” means the then current version of
“Wii Programming Guidelines,” “Licensee Packaging
Guidelines,” and “Nintendo Trademark Guidelines,”
together with other guidelines provided by NOA to LICENSEE from
time to time.
2.10
“Independent Contractor” means any individual or entity
that is not an employee of LICENSEE, including any independent
programmer, consultant, contractor, board member or
advisor.
2.11
“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 Wii including Nintendo®, Wii™, Official
Nintendo Seal of Quality®, and Mii™ , (b) select trade
dress associated with Wii and licensed video games for play
thereon, (c) Proprietary Rights in the Security Technology employed
in the Games or Game Discs by Nintendo, (d) rights in the
Development Tools for use in developing the Games, excluding,
however, rights to use, incorporate or duplicate select libraries,
protocols and/or sound or graphic files associated with the
Development Tools which belong to any third party and for which no
additional licenses or consents are required, (e) patents, design
registrations or copyrights which may be associated with the Game
Discs or Printed Materials, (f) copyrights in the Guidelines, and
(g) other Proprietary Rights of Nintendo in the Confidential
Information.
2.12
“Licensed Products” means Bulk Goods after being
assembled by or for LICENSEE with the Printed Materials in
accordance with the Guidelines.
2.13
“Marketing Materials” means marketing, advertising or
promotional materials developed by or for LICENSEE (or subject to
LICENSEE’s approval) that 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, print media and all audio or
video content other than the Game that is to be included on the
Game Disc.
2.14
“NDA” means the non-disclosure agreement related to Wii
previously entered into between NOA and LICENSEE.
2.15
“Nintendo” means NOA’s parent company, Nintendo
Co., Ltd., of Kyoto, Japan, individually or collectively with
NOA.
2.16
“Notice” means any notice permitted or required under
this Agreement. All notices shall be sufficiently given when
(a) personally served or delivered, or (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, provided, however, any Notice received after the
recipient’s normal business hours will be deemed received on
the next business day.
2.17
“Price Schedule” means the then current version of
NOA’s schedule of purchase prices and minimum order
quantities for the Bulk Goods.
2.18
“Printed Materials” means a plastic disc storage case,
title page, instruction booklet, warranty card and poster
incorporating the Artwork.
2.19
“Promotional Disc(s)” means custom optical discs
compatible with Wii that incorporate select game promotional or
supplemental materials, as may be specified or permitted in the
Guidelines.
2.20
“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 mark, copyright mask work, trade
secrets, trade dress, moral rights or publicity rights may exist or
may be sought and obtained in the future.
2.21
“Rebate Program” means any then current version of
NOA’s optional rebate program, establishing select terms for
price rebates under this Agreement.
2
2.22
“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.
2.23
“Security
Technology” means the highly proprietary security features of
the Wii and the Licensed Products to minimize the risk of unlawful
copying and other unauthorized or unsafe usage, including, without
limitation, any security signature, bios, data scrambling,
password, hardware security apparatus, watermark, hologram,
encryption, digital rights management system, copyright management
information system, proprietary manufacturing process or any
feature which obstructs piracy, limits unlawful, unsafe or
unauthorized use, or facilitates or limits compatibility with other
hardware, software, accessories or peripherals, or with respect to
a video game system other than the Wii, or limits distribution
outside of the Territory.
2.24
“Term” means
three (3) years from the Effective Date.
2.25
“Territory”
means all countries within the Western Hemisphere and their
respective territories and possessions.
2.26
Wii Network
Services” means and includes the Wii Shop Channel Services,
WiiConnect24, and any related services and material delivered to a
consumer’s Wii console over the Internet.
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 (or have developed on
LICENSEE’s behalf) Games for manufacture, advertising,
marketing and sale by LICENSEE 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 Wii.
LICENSEE recognizes that the Development Tools, Games, Game Discs
and Licensed Products will embody valuable rights of Nintendo and
Nintendo’s licensors. LICENSEE represents and warrants
that it will not undertake any act or thing which 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. Licensee is authorized and permitted to develop
Games, and have manufactured, advertise, market, and sell Licensed
Products, only for play on Wii and only in accordance with this
Agreement.
3.3
LICENSEE Restrictions
and Prohibitions . LICENSEE is not licensed to and
covenants that, without the express, written consent of NOA, 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
Wii systems, or between Wii and 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;
3
(b)
authorize or permit any online activities involving a Game,
including, without limitation, multiplayer, peer-to-peer or online
play, except as expressly permitted by Nintendo in
writing;
(c)
modify, install or operate a Game on any server or computing device
for the purpose of or resulting in the rental, lease, loan or other
grant of remote access to the Game;
(d)
emulate, interoperate, interface or link a Game for operation or
use with any hardware or software platform, accessory, computer
language, computer environment, chip instruction set, consumer
electronics device or device other than Wii, the Nintendo DS
system, the Development Tools or such other Nintendo system as NOA
may authorize in the Guidelines;
(e)
embed, incorporate, or store a Game in any media or format except
the optical disc format utilized by Wii, 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 disable, obstruct, circumvent or otherwise diminish
the effectiveness or operation of 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
(i)
Reverse Engineer or assist in Reverse Engineering all or any part
of Wii, including the hardware, software (embedded or not) 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 Game Disc or Game Disc label
Artwork, 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 Disc 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 Disc case
and Game Disc label as it appears in the preamble of this
Agreement.
3.5
Development
Tools .
NOA and Nintendo Co., Ltd. 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 shall
be subject to the terms of this Agreement and any separate license
or purchase agreement required by Nintendo or any third party
licensing the Development Tools. LICENSEE acknowledges the
respective interests of Nintendo, and in the case of third-party
Development Toots, such third parties, 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. Anything developed or derived by
LICENSEE as a result of a study of the performance, design or
operation of any Nintendo Development Tools shall be
4
considered a derivative
work 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.
Anything developed or derived by LICENSEE as a result of a study of
the performance, design or operation of any third-party Development
Tools shall be governed by the terms of the license agreement
applicable to such Development Tools. Notwithstanding any
referral or information provided or posted regarding third-party
Development Tools, NOA and Nintendo Co., Ltd. make no
representations or warranties with regard to any such third-party
Development Tools. LICENSEE acquires and utilizes third-party
Development Tools at its own risk.
3.6
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 signed a
confidentiality agreement with LICENSEE that is no less restrictive
than the terms of Section 8 below, and that expressly includes the
following language [***]:
“Independent
Contractor may have access to highly-confidential and proprietary
information, intellectual property, and trade secrets of Nintendo
Co., Ltd. and/or Nintendo of America Inc. (collectively,
“Nintendo”). Independent Contractor expressly
acknowledges (i) the valuable nature of such materials; and (ii)
Nintendo’s right, title and interest in such materials.
All such materials constitute confidential information under this
agreement and shall be treated by Independent Contractor as
such. Independent Contractor shall not undertake any act or
thing which in any way impairs or is intended to impair any part of
the right, title, interest or goodwill of Nintendo in such
materials. Independent Contractor’s use of such
materials shall not create any right, title or interest of
Independent Contractor therein. Nintendo Co., Ltd. and
Nintendo of America Inc. are intended third-party beneficiaries of
this agreement.”
[***]
DENOTES CONFIDENTIAL MATERIALS OMITTED AND FILED
SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT
TO A REQUEST FOR CONFIDENTIAL TREATMENT
3.7
Games Developed for Linked Play on Two Systems . In
the event the Guidelines permit LICENSEE to develop a Game for
simultaneous or linked play on Wii and on another Nintendo video
game system, LICENSEE shall be required to acquire and maintain
with NOA such additional licenses as are necessary for the use of
the Proprietary Rights associated with such other Nintendo video
game system.
3.8
In Game Advertising . LICENSEE shall not include
advertising or product placements for products or services of third
parties, whether in the Game, as separate content on a Game Disc
(e.g., a trailer), or in the Printed Materials without
Nintendo’s prior written consent.
3.9
Use of Wii Characters . LICENSEE shall not develop any
Game that permits Nintendo’s Mii characters to appear in the
Game without NOA’s prior written consent.
5
3.10
Sending Data to Consumers . LICENSEE shall not,
without the prior, written consent of NOA, send any data, content,
messages, advertising, or other communications of any kind to any
consumer’s Wii console through the Wii Network Services or
otherwise.
3.11
Downloadable Content . If LICENSEE desires to develop
Games, or updates/additions of any kind for any Licensed Product,
to be downloaded to consumers through the Wii Network Services, the
terms and conditions of such development shall be separately agreed
in writing between the parties. LICENSEE acknowledges that
the rights granted herein do not include the right to use the
Intellectual Property Rights to develop downloadable
content.
4.
SUBMISSION
AND APPROVAL OF GAME AND ARTWORK
4.1
Submission of a Completed Game to NOA . Upon
completion of a Game, LICENSEE shall deliver a prototype of the
Game to NOA in a format specified in the Guidelines. Delivery
shall be made in accordance with the methods set forth in the
Guidelines. Each Submission shall include such other
information or documentation deemed necessary by NOA, including,
without limitation, a complete set of 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.
LICENSEE must establish that the Game and any other content
included on the Game Disc complies with the Advertising Code of
Conduct of the Entertainment Software Ratings Board
(“ESRB”) and that the Game has been rated EC, E, El0+,
T or M (or another non-Adult Only category added by the ESRB) by
the ESRB. LICENSEE shall provide NOA with a certificate of
rating for the Game issued by the ESRB.
4.2
Testing of a Completed Game . Upon submission of a
completed Game, NOA and Nintendo Co., Ltd. shall promptly test the
Game with regard to its technical compatibility with and error-free
operation on Wii, utilizing the lot check process. Within a
reasonable period of time after receipt, NOA shall approve or
disapprove such Game. If a Game is disapproved, NOA shall
specify in writing the reasons for such disapproval and state what
corrections are necessary. After making the necessary
corrections, LICENSEE shall submit a revised Game to NOA for
testing. NOA shall not unreasonably withhold or delay its
approval of any Game. Neither the testing nor approval of a Game by
NOA or Nintendo Co., Ltd. shall relieve LICENSEE of its sole
responsibility for the development, quality and operation of the
Game or in any way create any warranty by NOA or Nintendo Co., Ltd.
relating to any Licensed Product.
4.3
Production of Check Discs . By submission of a
completed Game to NOA in accordance with section 4.1, LICENSEE
authorizes Nintendo to proceed with production of Check Discs for
such Game. If NOA approves a Game, it shall promptly, and
without further notification to or instruction from LICENSEE,
submit such Game for the production of Check Discs. Unless
otherwise advised by LICENSEE, following production of the Check
Discs, NOA shall deliver to LICENSEE approximately ten (10) Check
Discs for content verification, testing and final approval by
LICENSEE.
4.4
Approval or Disapproval of Check Discs by LICENSEE .
If, after review and testing, LICENSEE approves the Check Discs, it
shall promptly transmit to NOA a signed authorization for
production in the form specified in the Guidelines. If
LICENSEE does not approve the sample Check Discs for any reason,
LICENSEE shall advise NOA in writing and may, after undertaking any
necessary changes or corrections, resubmit the Game to NOA for
approval in accordance with the procedures set forth in this
Section 4. The absence of a signed authorization form from
LICENSEE within five (5) days after delivery of the Check Discs to
LICENSEE shall be deemed disapproval of such Check Discs.
Production of any order for Bulk Goods shall not proceed without
LICENSEE’s signed authorization.
4.5
Cost of Check Discs and Disc Stamper . If LICENSEE:
(a) disapproves the Check Discs for any reason; (b) fails to order
the minimum order quantity of any Game approved by NOA within six
(6) months after the date the Game was first approved by NOA; or
(c) submits a revised version of the Game to NOA after production
of such Game has commenced, LICENSEE shall reimburse NOA (or its
designee) for the reasonable estimated cost of the production of
the Check Discs, including the cost of
6
the disc stamper.
The payment will be due (i) thirty (30) days after NOA’s
written notification to LICENSEE of the Check Disc fee due NOA
because of LICENSEE’s failure to approve such Check Disc;
(ii) six (6) months after the date the Game was first approved by
NOA; or (iii) upon the subsequent submission by LICENSEE of a
revised version of the Game to NOA, as the case may be.
4.6
Submission and Approval of Artwork . Prior to
submitting a completed Game to NOA under Section 4.1, LICENSEE
shall submit to NOA all Artwork for the proposed Licensed
Product. Within ten (10) business days of receipt, 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 the
Licensed Product by NOA. All Artwork must be approved prior
to submitting an order for the Bulk Goods, and LICENSEE shall not
produce any Printed Materials for commercial distribution until
such Artwork has been approved by NOA.
4.7
Promotional Discs . In the event NOA issues Guidelines
in the future that permit LICENSEE to develop and distribute
Promotional Discs, either separately or as a part of the Licensed
Product, the content and specifications of such Promotional Disc
shall be subject to all of the terms and conditions of this
Agreement, including, without limitation, the Guidelines, the
Pri
|
