CONFIDENTIAL
CONFIDENTIAL FIRST RENEWAL
LICENSE AGREEMENT
FOR NINTENDO
DS
(EEA, AUSTRALIA, AND NEW
ZEALAND)
THIS FIRST
RENEWAL LICENSE AGREEMENT ("Agreement") is entered into between
NINTENDO CO., LTD. ("NINTENDO") at 11-1 Kamitoba Hokotate-cho,
Minami-ku, Kyoto, Japan 601-8501, Attn: General Manager,
International Division, International Business Department
(Fax: 81.75.662.9620), and ZOO DIGITAL PUBLISHING LIMITED
("LICENSEE") at Ground Floor, Arundel Court, 177 Arundel Street,
Sheffield S1 2NU, U.K.; Attn: Barry Hatch, Managing Director (
b.hatch@zoodigitalpublishing.com ). (Contact: Claire Curle
- C.Curle@zoodigitalpublishing.com ) (Fax: (44)
114.263.6031). NINTENDO and LICENSEE agree as follows:
1.1 NINTENDO designs,
develops, manufactures, markets and sells advanced design,
high-quality video game systems, including the Nintendo DS
system.
1.2 LICENSEE desires use
of the highly proprietary programming specifications, development
tools, unique and valuable security technology, trademarks,
copyrights and other valuable intellectual property rights of
NINTENDO, 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 the Nintendo DS
system.
1.3 NINTENDO is willing
to grant a license to LICENSEE on the terms and conditions set
forth in this Agreement.
1.4 By a prior agreement
between the parties effective May 25, 2005 (hereinafter the
"Initial Agreement"), NINTENDO granted to LICENSEE the right to
develop video game software compatible with the DS System,
embodying and using the Licensed Intellectual Properties. The
Initial Agreement is due to expire on May 25, 2008. The parties
desire to enter into a renewal agreement (hereinafter the
"Agreement") effective as of the expiration date of the Initial
Agreement, to continue the relationship between the parties without
interruption, with the Agreement consisting of the terms and
conditions set forth herein.
2.1 "Artwork" means the
text and design specifications for the Game Card Label and Printed
Materials in the format specified by NINTENDO in the
Guidelines.
2.2 "Bulk Goods" means
the Game Cards with Game Card Labels affixed.
2.3 "Confidential
Information" means the information described in Section
8.1.
2.4 "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.
2.5 "Effective Date"
means the expiration date of the Initial Agreement.
2.6 "Finished
Product(s)" means the fully assembled Game Card with a Game Card
label, Printed Materials, and packed in a plastic storage case or
other form of protective packaging .
2.7 "Game Card(s)" means
custom card media specifically manufactured under the terms of this
Agreement for play on the Nintendo DS system, incorporating
semiconductor components in which a Game has been
stored.
2.8 "Game(s)" means any
interactive programs (including source and object/binary code)
developed to be compatible with the Nintendo DS system.
2.9 "Guidelines" means
the then-current version of the "Nintendo DS Guidelines"; "Licensee
Packaging Guidelines", pertaining to the layout, trademark usage
and requirements of the Game Card label, instruction manual and
Game Card packaging; "Marketing Materials"; "Nintendo DS
Development Manual"; "Trademark Guidelines"; "Guidelines on Ethical
Content"; "Nintendo DS Software Submission Requirements", together
with other guidelines that NINTENDO may provide to LICENSEE from
time to time. The Guidelines on Ethical Content are attached as
Annex A, and the remainder of the Guidelines have been provided to
LICENSEE independent of this Agreement. The Guidelines may be
changed or updated from time to time without notice, and the
versions current from time to time will be available on request
from NINTENDO.
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 Games for the
Nintendo DS system including "Nintendo™", "Nintendo
DS™", and the "Official Nintendo Seal of Quality™",
(b) select trade dress associated with the Nintendo DS system
and licensed Games for play thereon, (c) Proprietary Rights in
the Security Technology incorporated into the Game Cards,
(d) rights in the Development Tools for use in developing the
Games, 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, patent applications, utility models,
design registrations, or copyrights which may be associated with
the Game Cards, (f) copyrights in the Guidelines, and
(g) other Proprietary Rights of NINTENDO in the Confidential
Information.
2.12 "Licensed Products" means
(a) Bulk Goods, and/or (b) Finished Products after being
assembled and packaged 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 Card.
2.14 "NDA" means the non-disclosure
agreement providing for the protection of Confidential Information
related to the Nintendo DS system previously entered into between
NINTENDO and/or NOA and LICENSEE.
2.15 "NOA" means NINTENDO's
subsidiary, Nintendo of America Inc., of Redmond, Washington,
USA.
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 mail, or (c) deposited, carriage 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, or (d) transmitted by e-mail with
an express written acknowledgement of receipt sent personally by or
on behalf of the recipient (which shall include any automated
reply). 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 NINTENDO's schedule of purchase prices and
minimum order quantities for the Finished Products and the Bulk
Goods. The Price Schedule has been provided to LICENSEE independent
of this Agreement and may be changed or updated from time to time
without notice, and the version current from time to time will be
available on request from NINTENDO.
2.18 "Printed Materials" means the
Game Card label and title page, user instruction booklet, poster,
warranty card and LICENSEE inserts incorporating the Artwork,
together with a precautions booklet and optional printed
materials.
2.19 "Proprietary Rights" means any
rights or applications for rights to the extent recognized anywhere
in the Territory relating to the Nintendo DS System, and owned,
licensed or otherwise held in patents, patent applications,
trademarks, service marks, copyrights and neighboring rights,
semiconductor chip layouts or masks, trade secrets, utility models,
registered design rights, unregistered design rights, database
rights, get up, trade dress, moral rights and publicity rights,
together with all inventions, discoveries, ideas, know-how, data,
information, processes, methods, procedures, formulas, drawings and
designs, computer programs, software source code and object code,
and all amendments, modifications, and improvements thereto for
which such patents, patent applications, trademarks, service marks,
copyrights and neighboring rights, semiconductor chip layouts or
masks, trade secrets, utility models, registered design rights,
unregistered design rights, database rights, get up, trade dress,
moral rights or publicity rights may exist or may be sought and
obtained in the future.
2.20 "Reverse Engineer(in)" 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.
2.21 "Security Technology" means the
highly proprietary security features of the Nintendo DS system 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 with respect to a video game system
other than the Nintendo DS system, or limits distribution outside
of the Territory.
2.22 "Sole License" means a license
under which only the licensor and a single licensee can utilize the
subject matter of the license.
2.23 "Term" means three (3) years
from the Effective Date.
2.24 "Territory" means any and all
countries within the European Economic Area; namely Albania,
Austria, Belgium, Bosnia, Bulgaria, Croatia, Cyprus, Czech
Republic, Denmark, Estonia, Finland, France, Germany, Greece,
Herzegovina, Hungary, Iceland, Ireland, Italy, Latvia,
Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Montenegro,
the Netherlands, Norway, Poland, Portugal, Romania, Serbia,
Slovakia, Slovenia, Spain, Sweden, and the United Kingdom. The
Territory also includes Australia, New Zealand, Russia, Switzerland
and Turkey. NINTENDO may add additional countries to the Territory
upon written notice to LICENSEE.
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3.
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GRANT OF LICENSE; LICENSEE
RESTRICTIONS
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3.1 Limited License
Grant . For the Term and for the Territory, NINTENDO grants to
LICENSEE a nonexclusive, nontransferable, limited license to use
the Intellectual Property Rights for the purpose of and to the
extent necessary, 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. This license is royalty-free.
3.2 LICENSEE
Acknowledgement . 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 the Nintendo DS system and only in accordance with
this Agreement. In the event that LICENSEE challenges NINTENDO's
ownership or the validity of the Intellectual Property Rights,
NINTENDO may terminate this Agreement without any notice or
procedure.
3.3 Restrictions on
License Grant . NINTENDO does not guarantee that the hardware
for the Nintendo DS system is distributed throughout the Territory.
Moreover, the present limited license to LICENSEE does not extend
to the use of the Intellectual Property Rights for the following
purposes:
(a) grant access to, distribute, transmit or
broadcast a Game by electronic means or by any other means known or
hereafter devised, including, without limitation, by wireless,
cable, fiber optic, telephone lines, microwave, radiowave, computer
or other device network, except (a) as a part of wireless Game
play on and among Nintendo DS systems, (b) for the purpose of
facilitating Game development under the terms of this Agreement, or
(c) as otherwise approved in writing by NINTENDO. LICENSEE
shall use reasonable security measures, customary within the high
technology industry, to reduce the risk of unauthorized
interception or retransmission of any Game transmission. No right
of retransmission shall attach to any authorized transmission of a
Game;
(b) authorize or permit any online activities
involving a Game, including, without limitation, multi-player,
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, telephone, cellphone,
PDA, or other device, including for purposes of data interchange,
password usage or interactive video game play, other than a
Nintendo DS system, an application approved by NINTENDO, or the
Development Tools;
(e) emulate any past, current or future NINTENDO
brand video game system, or any portion thereof, in software or
hardware or any combination thereof;
(f) embed, incorporate, or store a Game in any
media or format except the Game Card format utilized by the
Nintendo DS system, except as may be necessary as a part of the
Game development process under this Agreement;
(g) 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;
(h) utilize the Intellectual Property Rights to
design or develop any interactive video game program, except as
authorized under this Agreement;
(i) manufacture or reproduce a Game developed under
this Agreement, except through NINTENDO; or
(j) Reverse Engineer or assist in Reverse
Engineering all or any part of the Nintendo DS system, including
the hardware, software (embedded or not), the Development Tools or
the Security Technology, except as specifically permitted under the
laws and regulations applicable in the Territory.
CONFIDENTIAL
3.4 Development
Tools . NINTENDO and NOA may lease, loan or sell Development
Tools, including any improvements made by NINTENDO or NOA from time
to time, to LICENSEE to assist in the development of Games under
this Agreement on such terms as may be agreed between the parties.
Ownership and use of any Development Tools, whether provided by
NINTENDO or NOA, prior to or during the Term hereof, 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 Tools, 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. Any license to LICENSEE to use the Development
Tools does not extend to: (a) use of the Development Tools for
any purpose except the design and development of Games under this
Agreement, (b) reproduction or creation of derivatives of the
Development Tools, except in association with the development of
Games under this Agreement, (c) Reverse Engineering of the
Development Tools (except as specifically permitted under the laws
and/or regulations applicable in the Territory), or
(d) selling, leasing, assigning, lending, licensing,
encumbering or otherwise transferring the Development Tools. Any
tools developed or derived by LICENSEE as a result of a study of
the performance, design or operation of any NINTENDO Development
Tools shall be considered a derivative work of the Intellectual
Property Rights, but may be retained and utilized by LICENSEE in
connection with this Agreement. Unless LICENSEE can demonstrate
that such derivative work has one or more applications that are
independent of and separate from the Intellectual Property Rights
("Independent Applications"), it shall be deemed to have granted
NOA and NINTENDO an indefinite, worldwide, royalty-free,
transferable and Sole License (including the right to sub-license)
to such derivative work. To the extent that LICENSEE can
demonstrate one or more Independent Applications, LICENSEE shall be
deemed to have granted to NOA and NINTENDO a royalty-free and
transferable non-exclusive License (including the right to
sub-license) in relation to such Independent Applications for the
Term. Any tools 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, NINTENDO and NOA 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.
3.5 In-Game
Advertising . LICENSEE shall not include advertising or produce
placements for products or services of LICENSEE or third parties,
whether in the Game, as separate content (e.g., a trailer), or in
the Printed Materials, without NINTENDO's prior written
consent.
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4.
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SUBMISSION OF GAME AND ARTWORK FOR
APPROVAL
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4.1 Development and Sale of the Games
. LICENSEE may develop Games and
have manufactured, advertise, market and sell Licensed Products for
play on the Nintendo DS system only in accordance with this
Agreement.
4.2 Delivery of Completed Game
. Upon completion of a Game,
LICENSEE shall deliver a prototype of the Game to NINTENDO 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 NINTENDO, 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. NINTENDO shall promptly evaluate the Game with
regard to its technical compatibility with and error-free operation
on the Nintendo DS system. LICENSEE must establish that the Game
and any other content included on the Game Card complies with the
guidelines of the Pan European Game Information System (PEGI), the
Unterhaltungssoftware Selbstkontrolle (USK), the Office of Film and
Literature Classification (OFLC), or any other national or regional
game rating system that NINTENDO may accept, as applicable.
LICENSEE shall be responsible for the submission of the Game to the
appropriate national or regional game rating organization and shall
provide NINTENDO with a statement or certificate in writing from
the relevant organization, confirming the rating for the Game.
Where any such game has been rated as being suitable only for
players aged 18 and over (or an equivalent rating), LICENSEE must
submit a certificate in writing that confirms the game is rated as
no higher than "M" (Mature) by the Entertainment Software Rating
Board (ESRB) of the U.S. In addition, NINTENDO reserves the right
to require LICENSEE to provide NINTENDO with ***
***
Confidential treatment requested.
4.3 Approval of
Completed Game . NINTENDO shall, within a reasonable period of
time after receipt, approve or disapprove each submitted Game. If a
Game is disapproved, NINTENDO shall specify in writing the reasons
for such disapproval and state what corrections or improvements are
necessary. After making the necessary corrections or improvements,
LICENSEE shall submit a revised Game to NINTENDO for approval.
NINTENDO shall not unreasonably withhold or delay its approval of
any Game. The approval of a Game by NINTENDO shall not relieve
LICENSEE of its sole responsibility for the development, quality
and operation of the Game or in any way create any warranty for a
Game or a Licensed Product by NINTENDO.
4.4 Submission and
Approval of Artwork . Prior to submitting a completed Game to
NINTENDO under Section 4.2, LICENSEE shall prepare and submit to
NINTENDO all Artwork for the proposed Licensed Product. Within ten
(10) business days of receipt, NINTENDO shall approve or disapprove
the Artwork. If any Artwork is disapproved, NINTENDO 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 NINTENDO for approval. NINTENDO shall not
unreasonably withhold or delay its approval of any Artwork. The
approval of the Artwork by NINTENDO shall not relieve LICENSEE of
its sole responsibility for the development and quality of the
Artwork or in any way create any warranty for the Artwork or any
Licensed Product by NINTENDO. All Artwork must be approved prior to
submitting an order for the Bulk Goods or Finished Products, and
LICENSEE shall not produce any Printed Materials for commercial
distribution until such Artwork or Finished Products has been
approved by NINTENDO.
4.5 Artwork for Bulk
Goods . If LICENSEE intends to submit an order for Bulk Goods,
all Artwork and other materials to be included with the Licensed
Product shall be submitted to NINTENDO in accordance with Section
4.4 herein. No Printed Materials shall be produced by LICENSEE
until such Artwork has been approved by NINTENDO under Section 4.4
herein.
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5.
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ORDER PROCESS, PURCHASE PRICE, PAYMENT AND
DELIVERY
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5.1 Submission of
Orders by LICENSEE . After receipt of NINTENDO's approval for a
Game, LICENSEE may at any time submit written purchase orders to
NINTENDO for any approved Licensed Product title. The purchase
order shall specify whether it is for Finished Products or Bulk
Goods. The terms and conditions of this Agreement shall take
precedence over any contrary or additional terms of such purchase
order or any other written documentation or verbal instructions
from LICENSEE. All orders shall be subject to acceptance by
NINTENDO or its designee.
5.2 Purchase Price
and Minimum Order Quantities . The purchase price and minimum
order quantities for Finished Products and Bulk Goods shall be set
forth in NINTENDO's then current Price Schedule. Unless otherwise
specifically provided for, the purchase price includes the cost of
manufacturing the Licensed Products. No taxes, duties, import fees
or other tariffs related to the development, manufacture, import,
marketing or sale of the Licensed Products except for taxes imposed
on NINTENDO's income are included in the purchase price and all
such taxes are the responsibility of LICENSEE. The Price Schedule
is subject to change by NINTENDO at any time without Notice,
provided, however, that any price increase shall be applicable only
to purchase orders submitted, paid for, and accepted by NINTENDO
after the date of the price increase.
5.3 Payment .
Upon placement of an order with NINTENDO, LICENSEE shall pay the
full purchase price to NINTENDO either (a) by tender of an
irrevocable letter of credit in favor of NINTENDO (or its designee)
and payable at sight, issued by a bank acceptable to NINTENDO and
confirmed, if requested by NINTENDO, at LICENSEE's expense, or
(b) in cash, by wire transfer to an account designated by
NINTENDO. All letters of credit shall comply with NINTENDO's
written instructions and all associated banking charges shall be
for LICENSEE's account.
5.4 Delivery of
Licensed Products . NINTENDO shall deliver the Finished
Products and Bulk Goods ordered by LICENSEE to LICENSEE FOB Japan,
CIP European Destination or ex-warehouse Grossostheim, per the
terms in the Price Schedule. Also per the Price Schedule, the
minimum shipping quantity is ***. Upon mutual consent of NINTENDO
and LICENSEE, orders may be delivered in partial shipments with a
minimum shipment quantity as specified in the Price Schedule. Such
orders shall be delivered only to countries within the Territory.
Title to the Licensed Products shall vest in accordance with the
terms of the applicable letter of credit or, in the absence
thereof, per Incoterms 2000.
***Confidential
treatment requested
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6.
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MANUFACTURE OF THE LICENSED
PRODUCT
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6.1 Manufacturing
. Given NINTENDO's ownership of the valuable Intellectual Property
Rights, NINTENDO shall be the exclusive source for the manufacture
of the Game Cards, and shall control all aspects of the
manufacturing process, including the selection of the locations and
specifications for any manufacturing facilities, determination of
materials and processes, appointment of suppliers and
subcontractors, and management of all work-in-progress.
6.2 Manufacture of
the Licensed Products . Upon acceptance by NINTENDO of a
purchase order from LICENSEE for an approved Licensed Product title
and receipt of payment as provided for under Section 5.3 herein,
NINTENDO (through its suppliers and subcontractors) shall arrange
for the manufacture of Finished Product or Bulk Goods, as specified
in LICENSEE's purchase order. In this regard, LICENSEE shall submit
to NINTENDO certain technical information as set forth in a
questionnaire entitled "Software Submission Requirements" which has
been provided to LICENSEE by NINTENDO.
6.3 Security
Features . The final release version of the Game, Game Cards
and P
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