Exhibit 10.1
CONFIDENTIAL LICENSE
AGREEMENT
FOR NINTENDO DS (Western Hemisphere)
THIS LICENSE
AGREEMENT (“Agreement”) is entered into between
NINTENDO OF AMERICA, INC. (“NOA”), at 4820 150
th 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: General Counsel (Fax: (310) 255-2152). NOA and
LICENSEE agree as follows:
1.
RECITALS
1.1
NOA markets and sells advanced design, high-quality video game
systems, including the Nintendo DS system.
1.2
LICENSEE desires a license to use highly proprietary programming
specifications, development tools, trademarks and other valuable
intellectual property rights of NOA and its parent company,
Nintendo Co., Ltd. (collectively “Nintendo”), to
develop, have manufactured, advertise, market and sell video game
software for play on the Nintendo DS system.
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 design specifications for the Game
Card label and Printed Materials in the format specified by NOA in
the Guidelines.
2.2
“Bulk Goods” means the Game Cards with Game Card labels
affixed.
2.3
“Development Tools” means the development kits,
programming tools, emulators and other materials that may be used
in the development of Games under this Agreement.
2.4
“Effective Date” means October 11, 2004.
2.5
“Finished
Product(s)” means the fully assembled and shrink-wrapped
Licensed Products, each including a Game Card, Game Card label and
Printed Materials.
2.6
“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.
2.7
“Game(s)”
means the Nintendo DS version of an interactive video game program,
or other applications approved by Nintendo (including source and
object/binary code) developed for the Nintendo DS system.
2.8
“Guidelines” means the current version or any future
revision of the “Nintendo DS Packaging Guidelines”,
“Nintendo DS Development Manual” and related guidelines
provided by NOA.
2.9
“Independent Contractor” means any individual or entity
that is not an employee of LICENSEE, including any independent
programmer, consultant, contractor, board member or
advisor.
2.10
“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™”, “ DS™” and the
“Official Nintendo Seal®”, (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, (e) patents or design
registrations Nintendo in the Confidential Information.
2.11
“Licensed
Products” means (a) Finished Products, or (b) Bulk Goods when
fully assembled and
shrink-wrapped with the Printed Materials.
2.12
“Marketing
Materials” means marketing, advertising or promotional
materials developed by or for LICENSEE (or subject to
LICENSEE’S approval) to 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 and print media or
materials.
2.13
“NDA” means the non-disclosure agreement providing for
the protection of Confidential Information related to the Nintendo
DS system previously entered into between NOA and
LICENSEE.
2.14
“Notice” means
any notice permitted or required under this Agreement. All
notices shall be sufficiently given when served or delivered, (b)
transmitted by faL,bimile, 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.
2.15
“Price
Schedule” means the current version or any future revision of
NOA’s schedule of purchase prices and minimum order quantities
for Finished Products and Bulk Goods.
2.16
“Printed
Materials” means the Game Card label and title sheet, user
instruction booklet, poster, warranty card and LICENSEE inserts
incorporating the Artwork, together with a precautions
booklet as specified by
NOA.
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2.17
“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.
2.18
“Reverse
Engineer(ing)” means, without limitation, (a) the x-ray,
electronic scanning or 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.
2.19
“Security
Technology” means, without limitation, any security
signature, bios, data scrambling, password, hardware security
apparatus, watermark, hologram, encryption, Digital Rights
management system,
copyright management information system or any feature that
facilitates or limits compatibility with other hardware, software,
or accessories or other peripherals outside of the Territory or on
a different video game system.
2.20
“Term” mean three (3) years from the Effective
Date.
2.21
“Territory”
means all countries within the Western Hemisphere and their
respective territories and possessions.
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
Games for
manufacture, advertising, marketing and sale 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 the Nintendo DS
system. LICENSEE recognizes that the Games, Game Cards 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 that 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.
3.3
LICENSEE Restrictions
and Prohibitions . LICENSEE is not licensed to, and
covenants that, without the express written consent of Nintendo, it
will not at any time, directly or indirectly, do or
cause to be done any of
the following:
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(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)
modify, install or operate a Game on any server or other device for
the purpose of or resulting in the rental, lease, loan or sale of
rights of access to the Game,
(c)
emulate, interoperate, interface or link a Game for operation or
use with any hardware platform, software program, accessory,
computer language, computer environment, chip instruction set,
consumer electronics device, telephone, ceephone, RDA, 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,
(d)
emulate any past, current or future Nintendo brand video game
system, or any portion thereof, in software or hardware or any
combination thereof,
(e)
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,
(f)
design, implement or undertake any process, procedure, program or
act designed to circumvent 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 the Reverse Engineering of all or any
part of the Development Tools 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
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identification of any
third party co-publisher for a Game on any Licensed Product Game
Card case or Game Card label, 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
Card 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 Card case and Game Card label as it appears in the preamble of
this Agreement.
3.5
Development
Tools .
Nintendo 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 provided to LICENSEE by Nintendo shall be
subject to the terms of this Agreement and any separate license or
purchase agreement required by Nintendo. LICENSEE
acknowledges the exclusive interest of Nintendo 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. Any tools developed or derived by
LICENSEE as a result of a study of the performance, design or
operation of the Development Tools shall be considered derivative
works 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.
4.
SUBMISSION OF GAME AND ARTWORK FOR APPROVAL
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
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 been
approved by NOA and has executed a written confidentiality
agreement with NOA relating to the Nintendo DS system.
4.3
Delivery of Completed Game . Upon completion of a
Game, LICENSEE shall deliver a prototype of the Game to NOA in a
format specified in the Guidelines, together with 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. NOA shall promptly
evaluate the Game with regard to its technical compatibility with
and error-free operation on the Nintendo DS system. LICENSEE
is responsible for ensuring that the Game and any other content to
be included on the Game Card complies with the Advertising Code of
Conduct of the Entertainment Software Ratings Board
(“ESRB”) and that the Game has been rated EC, E, M or T
by the ESRB. LICENSEE shall provide NOA with a related
certificate of rating for the Game from the ESRB.
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4.4
Approval of Completed Game . NOA shall, within a
reasonable period of time after receipt, approve or disapprove each
submitted Game. If a Game 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 a
revised Game to NOA for approval. NOA shall not unreasonably
withhold or delay its approval of any Game. The approval of a
Game by NOA 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
NOA.
4.5
Submission of Artwork . Upon submission of a completed
Game to NOA, LICENSEE shall prepare and submit to NOA the Artwork
for the proposed Licensed Product. Within seven (7) 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 development and quality of the Artwork or in any way
create any warranty for the Artwork or any Licensed Product by
NOA.
4.6
Artwork for Bulk Goods . If LICENSEE submits an order
for Bulk Goods, all Artwork shall be submitted to NOA in advance of
NOA’s acceptance of the order and no production of Printed
Materials shall occur until such Artwork has been approved by NOA
under Section 4.5 herein.
5.
ORDER PROCESS, PURCHASE
PRICE, PAYMENT AND DELIVERY
5.1
Submission of Orders by LICENSEE . LICENSEE may at any
time submit written purchase orders to NOA 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 control over any contrary
terms of such purchase order or any other written documents
submitted by LICENSEE. All orders are subject to acceptance
by NOA in Redmond, WA.
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 NOA’s then current Price
Schedule. The purchase price includes the cost of
manufacturing together with a royalty for the use of the
Intellectual Property Rights. No taxes, duties, import fees
or other tariffs related to the development, manufacture, import,
marketing or sale of the Licensed Products are included in the
purchase price and all such taxes are the responsibility of
LICENSEE (except for taxes imposed on NOA’s income).
The Price Schedule is subject to change by NOA at any time,
provided, however, that any price increase shall be applicable only
to purchase orders submitted, paid for, and accepted by NOA after
the effective date of the price increase.
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5.3
Payment . Upon placement of an order with NOA,
LICENSEE shall pay the full purchase price to NOA either (a) by
placement of an irrevocable letter of credit in favor of NOA and
payable at sight, issued by a bank acceptable to NOA and confirmed,
if requested by NOA, at LICENSEE’S expense, or (b) in cash,
by wire transfer to NOA’s designated account. All
associated banking charges are the responsibility of the
LICENSEE.
5.4
Shipment and Delivery . All Licensed Products shall be
delivered to LICENSEE EXW Ex works Japan (as defined by Incoterms
2000), or such other delivery point specified by NOA, with shipment
at LICENSEE’S direction and expense. Orders may be
delivered by NOA in partial shipments, each directed to not more
than two (2) destinations designated by LICENSEE within the
Territory. Title to the Licensed Products shall
vest.
6.
MANUFACTURE OF THE LICENSED
PRODUCT
6.1
Manufacturing . 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 NOA of a purchase order for an approved Licensed Product title
and payment as provided for under Section 5.3 herein, NOA will
arrange for the manufacture of Finished Product or Bulk Goods, as
specified in LICENSEE’S purchase order.
6.3
Security Features . The final release version of the
Game, Game Cards and Printed Materials shall include such Security
Technology as Nintendo, in its sole discretion and at its sole
expense, may deem necessary or appropriate.
6.4
Production of Bulk Goods Printed Materials . For Bulk
Goods, LICENSEE shall arrange Goods, LICENSEE shall assemble the
Game Cards and Printed Materials into the Licensed Products.
Games may be sold or otherwise distributed by LICENSEE only in
fully assembled and shrink-wrapped Licensed Products.
6.5
Prior Approval of LICENSEE’S Independent Contractor
. Prior to the placement of a purchase order for Bulk
Goods, LICENSEE shall obtain NOA’s approval of any
Independent Contractors selected to perform LICENSEE’S
production and assembly operations. LICENSEE shall provide
NOA with the names, addresses and all business documentation
reasonably requested by NOA for such Independent Contractors.
NOA may, prior to approval and at reasonable intervals thereafter,
(a) require submission of additional business or financial
information regarding the Independent Contractors, (b) inspect the
facilities of the Independent Contractors, and (c) be present to
supervise any work on the Licensed Pro
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