Preview of our top selling International License Agreement
Sony / TiVo - Tivo International Technology License Agreement
Exhbit 10.8
Confidential treatment has been requested for portions of this
exhibit. The copy filed herewith omits the information subject to the
confidentiality request. Omissions are designated as [*]. A complete
version of this exhibit has been filed separately with the Securities
and Exchange Commission.
TIVO INTERNATIONAL, INC. TECHNOLOGY LICENSE AGREEMENT
This Tivo International, Inc. Technology License Agreement (the "Agreement") is entered into as of October 12, 2001 (the "Effective Date") by and between Sony Corporation, a Japanese corporation having its principal place of business at 6-7-35 Kitashinagawa, Shinagawa-ku, Tokyo 141-0001 ("Sony"), and TiVo International, INC., a Delaware corporation having its principal place of business at 2160 Gold Street, Alviso, California 95002 ("TiVo International").
Recitals
Whereas, TiVo International owns certain technology that enables, among other functionality, one touch recording, pausing, rewinding and slow-motion viewing of television programming;
Whereas, Sony desires to license such technology for use in (i) devices manufactured by or on behalf of Sony and its authorized sublicensees for use with services offered by or on behalf of Sony or TiVo and (ii) services offered by or on behalf of Sony; and
Whereas, TiVo International is willing to license such technology to Sony on the terms and conditions set forth in this Agreement.
Now, Therefore, in consideration of the foregoing and the mutual covenants, promises and undertakings set forth in this Agreement, Sony and TiVo International agree as follows:
Agreement
1. Definitions. The capitalized terms in this Agreement shall have the following meaning:
1.1 "Affiliate" shall mean any solvent entity in which Sony, either directly or indirectly, at any time during the term of the licenses in Section 2 (License Grants) (a) holds one hundred percent (100%) of the issued shares of voting stock (or similar indicia of ownership); or (b) has the power to exercise one hundred percent (100%) of the voting rights. An Affiliate shall cease to be an Affiliate on the date that it no longer meets the criteria set forth above. Sony acknowledges and agrees that any breach of this Agreement by an Affiliate of Sony shall be deemed a breach by Sony. Notwithstanding the foregoing criteria, Sony and TiVo International may mutually agree that certain of Sony's [*] Affiliates will be treated as and receive the benefits and rights of "Affiliates" under this Agreement. TiVo International agrees that it will discuss such matter with Sony in good faith.
1.2 "Authorized Personnel" shall mean any (a) employees of Third Parties, which employees have agreed in writing to the nondisclosure obligations and restrictions on use
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
contained in Exhibit B (Secure Procedures for Handling TiVo Source Code); (b) Sony employees, who have agreed to be bound by nondisclosure obligations and restrictions no less restrictive than those contained in Exhibit B (Secure Procedures for Handling TiVo Source Code); or (c) employees of any Sony Source Code Affiliate, who have agreed to be bound by nondisclosure obligations and restrictions no less restrictive than those contained in Exhibit B (Secure Procedures for Handling TiVo Source Code), all of the foregoing in (a), (b) and (c) that are permitted to receive information related to any Source Code that TiVo provides to Sony under the terms of the Sony/TiVo Technology License Agreement ("TiVo Source Code"). Sony agrees that for purposes of this Section 1.2 (Authorized Personnel), Third Parties located in Japan shall be companies or divisions of companies whose primary business is providing contract engineering and software development services for others (e.g., Dr. Design) and shall not include any companies or divisions of companies who offer or provide products or services that compete with the TiVo Service or products incorporating the Personal Digital Recording Technology of TiVo International or any TiVo Affiliate. For purposes of this Section 1.2 (Authorized Personnel), Third Parties located outside Japan shall be companies whose primary business is providing contract engineering and software development services for others (e.g., Dr. Design) and shall not include any companies who offer or provide products or services that compete with the TiVo Service or products incorporating the Personal Digital Recording Technology of TiVo International or any TiVo Affiliate. Sony shall provide TiVo with written notice of any Third Party to whom Sony or a Sony Source Code Affiliate provides access to TiVo Source Code and shall, upon request of TiVo, provide copies of the nondisclosure agreements signed by the individuals of such Third Party. If Sony wishes to confirm that a Third Party is in this category, TiVo International agrees that Sony may provide written notice of such proposed disclosure to TiVo, and if TiVo fails to object to such disclosure in writing within [*] business days of such notice from Sony, Sony may disclose the TiVo Source Code to such Third Party, as applicable. Any breach of the confidentiality and use restrictions in Exhibit B (Secure Procedures for Handling TiVo Source Code) by employees of any Sony Source Code Affiliates or Third Party provided with access to the TiVo Source Code hereunder, shall be deemed to be a breach by Sony. The Authorized Personnel shall use the TiVo Source Code solely on premises owned or leased by or otherwise under the direct control of Sony or a Sony Source Code Affiliate.
1.3 "CE Sublicensee" shall mean a Third Party (a) whose headquarters are located in Japan; (b) whose primary business is that of either (i) manufacturing, offering and providing consumer electronics products, or (ii) offering and providing consumer services; (c) who have executed a CE Sublicense Agreement; and (d) who is identified in the list of potential CE Sublicensees is set forth on Exhibit C (CE Sublicensees), which may be amended by the agreement of both parties (with consent to such amendments not being unreasonably withheld or delayed by either party).
1.4 "CE Sublicense Agreement" shall mean the agreement between Sony and the CE Sublicensee executed as required by the Sony/TiVo Technology License Agreement, which governs such CE Sublicensee's use of the TiVo Technology.
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
2
1.5 "CE Sublicensee Products" shall mean products developed by a CE Sublicensee incorporating all or any part of the TiVo Technology and marketed under either the CE Sublicensee's brand, a MSO's brand or co-branded between the CE Sublicensee and a MSO. For the avoidance of doubt, CE Sublicensee Products shall not include products manufactured by or for a CE Sublicensee for distribution or sale under an original equipment manufacturer (OEM) relationship but may include products that are manufactured by a CE Sublicensee under the brand of a MSO.
1.6 "Client Technology Documentation shall mean the documentation that TiVo provides to Sony related to the TiVo Client Technology.
1.7 "Confidential Information" shall mean any proprietary and/or non-public information that one party (the "Disclosing Party") discloses or makes available to the other party (the "Receiving Party"), which the Receiving Party knows or has reason to know is considered confidential by the Disclosing Party. Confidential Information includes, without limitation, Source Code, hardware, trade secrets, know-how, formulas, flow charts, diagnostic routines, business information, forecasts, financial plans and data, customer information, marketing plans, the TiVo Technology and unannounced product information. For purposes of this Agreement, Confidential Information also includes all such information disclosed between the parties (and between any TiVo Affiliate and Sony) in the course of negotiating this Agreement, the Sony/TiVo Technology License Agreement and the letter of intent that preceded this Agreement and the Interim Services Agreement. Confidential Information shall exclude information the Receiving Party can demonstrate by reasonably detailed written documentation: (a) was independently developed by the Receiving Party without any use of the Disclosing Party's Confidential Information or by the Receiving Party's employees or other agents (or independent contractors hired by the Receiving Party) who have not been exposed to the Disclosing Party's Confidential Information at the time that such development occurred; (b) became known to the Receiving Party, without restriction, from a source (having a right to disclose such information) other than the Disclosing Party without breach of this Agreement; (c) was in the public domain at the time it was disclosed or enters the public domain through no act or omission of the Receiving Party; (d) was rightfully known by the Receiving Party, without restriction, at the time of disclosure; (e) was approved for disclosure by the Disclosing Party beforehand and in writing; or (f) was disclosed by Disclosing Party to a competitor of Receiving Party without obligations of confidentiality.
1.8 "End User" shall mean an individual consumer who purchases a product for such consumer's own personal use and not for resale or further distribution.
1.9 "End User License Agreement" shall mean the agreement between Sony, its Affiliate or a CE Sublicensee (or any of such party's MSOs) and the End User executed as required by the Sony/TiVo Technology License Agreement, which governs such End User's use of the TiVo Technology as incorporated in a Sony Product or a CE Sublicensee Product.
1.10 "GAAP" shall mean the then current applicable Generally Accepted Accounting Principles in the United States consistently applied as recognized or accepted by the United States Securities and Exchange Commission and the Financial Accounting Standards Board. As
3
used herein, "GAAP" shall also include cost accounting principles that are generally accepted in the United States.
1.11 "Improvements" shall mean any and all adaptations, customizations, modifications, revisions, improvements, enhancements, and any other developments derived from or based on all or any portion of the TiVo Technology including, without limitation, any derivative works of any copyrightable material therein, as defined by the Copyright Law of the United States of America, Title 17 U.S.C. Section 101 et seq.
(a) "Sony Improvements" shall mean any Improvements that are developed solely by or for Sony or its Affiliate, without any assistance from TiVo International or any TiVo Affiliate.
(b) "TiVo Improvements" shall mean any Improvements that are developed solely by or for TiVo International or any TiVo Affiliate, without any assistance from Sony, and which do not otherwise meet the definition of Joint Innovations.
1.12 "Innovations" shall mean any processes, machines, compositions of matter, improvements, inventions (whether or not protectable under patent laws), works of authorship, information fixed in any tangible medium of expression (whether or not protectable under copyright laws), moral rights, mask works, trademarks, trade names, trade dress, trade secrets, know-how, ideas (whether or not protectable under trade secret laws), and all other subject matter protectable under patent, copyright, moral right, mask work, trademark, trade secret or other laws, and includes without limitation all new or useful art, combinations, discoveries, formulae, manufacturing techniques, technical developments, discoveries, artwork, software, and designs.
1.13 "Interim Services Agreement" shall mean the agreement entered into by Sony and TiVo on August 10, 2001 relating to certain engineering services to be provided by TiVo for Sony.
1.14 "Joint Innovations" shall mean [*] Innovations [*] of the engineering services to be provided under Section 7 (TiVo Engineering Services) of the Sony/TiVo Technology License Agreement or the Interim Services Agreement, either [*] or [*], or [*], on the one hand, and [*] or [*], on the other hand.
1.15 "License Fee" shall mean the one-time license fee in the amount of [*] that Sony is to pay to TiVo International under the terms of Section 4.1 (License Fee).
1.16 "Majority-Owned Affiliate" shall mean any entity in which a party, either directly or indirectly, at any time during the Term, controls, is under common control or is controlled by such party. For the purposes of this definition, control means ownership or the ability to control, directly or indirectly, fifty percent (50%) or more of the securities that have the right to elect the Board of Directors or similar management group of the entity. A Majority-Owned Affiliate shall cease to be a Majority-Owned Affiliate on the date that it no longer meets
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
4
the criteria set forth above. Each Party acknowledges and agrees that any breach of this Agreement by a Majority-Owned Affiliate shall be deemed a breach by such Party.
1.17 "Manufacturing Release" shall mean the version of TiVo Technology that (a) has passed TiVo's quality assurance tests [*] to be conducted by TiVo with respect to such TiVo Technology); (b) performs in all respects in accordance with the Post Build Test Criteria; (c) has been determined by TiVo to be suitable for use in and distribution to TiVo's consumer network using Personal Digital Recording Technology; and (d) would otherwise be available for distribution by TiVo through a general release as part of the TiVo Service.
1.18 "Material CE Sublicensee Breach" shall mean the following breaches by a CE Sublicensee of the CE Sublicense Agreement: (a) [*] material breach of the confidentiality obligations; or (b) a Repeated Breach of [*] (iv) any combination of the foregoing.
1.19 "Material Sony Breach" shall mean the following breaches of this Agreement by Sony or its Affiliate: (a) a material breach of the Source Code license grants or restrictions in Section 2 (License Grants); (b) [*] material breach of the [*].
1.20 "MSO" shall mean an entity owning or operating one or more wireline, wireless, or satellite distribution systems providing video programming to subscribers.
1.21 "Object Code" shall mean computer programming code substantially in binary form that is directly executable by a computer after processing, but without compilation or assembly.
1.22 "Personal Digital Recording Technology" shall mean client-based and server-based technology that enables (a) one touch recording, pausing, rewinding and slow motion viewing of television programming; (b) the delivery of program schedule, content and other information to consumer devices; and (c) the updating and revision management of software installed on consumer devices.
1.23 "Post Build Test Criteria" shall mean the criteria used by TiVo to verify that the TiVo Client Technology and the TiVo Server Technology function properly and meet TiVo's quality assurance metrics for Manufacturing Release. All Post Build Test Criteria shall be (a) of reasonable detail, and (b) consistent with the sample attached hereto as Exhibit H (Post Build Test Criteria).
1.24 "Qualifying Revenue" shall mean the revenue of a given entity from the sale, license or provision of services relating to video, as consolidated at the top most parent level, plus a pro rata share of the revenue of subject entities that are not so consolidated in which the given entity has an "economic interest" (whether directly or indirectly, including, without limitation, ownership of the right to receive a share of the revenue, profits, dividends or capital appreciation of an entity) based on the percentage of "economic interest" of the given entity in the subject entity.
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
5
1.25 "Repeated Breach" shall mean [*] or more material breaches of this Agreement by Sony or its Affiliate, or of a CE Sublicense Agreement by a CE Sublicensee, within any twelve (12) month period (without giving effect to cure periods); provided, however, that an allegation of a material breach that is determined not to be true or substantiated by a court of competent jurisdiction or arbitral panel (if arbitration is mutually agreed to by the parties) shall not constitute a material breach for purposes of determining whether a Repeated Breach has occurred. In order for any breach of this Agreement by Sony or its Affiliate, or any breach of a CE Sublicense Agreement by a CE Sublicensee, to constitute a Repeated Breach, TiVo-International must provide Sony with a written notice identifying the alleged breach and reasonable evidence of such breach. [*]
1.26 "Royalty [*]" shall mean [*] or the [*] amount as set forth below. In the event that Sony does not [*] of the TiVo Client Technology and [*] of the TiVo Server Technology (collectively, [*] on or before [*] pursuant to the Sony/TiVo Technology License Agreement, then the Royalty [*] shall [*] for a Royalty [*] of [*]. In the event that Sony does [*] pursuant to the Sony/TiVo Technology License Agreement, but does not [*] TiVo Client [*] and TiVo Server [*] on or before [*] pursuant to the Sony/TiVo Technology License Agreement, then the Royalty [*] shall [*] for a Royalty [*]. For purposes of this Section 1.26 Royalty [*] an [*] is a [*] of the applicable [*] that Sony [*] pursuant to the [*] of the Sony/TiVo Technology License Agreement. For clarity, except as provided below, (a) if Sony [*] on or before the dates set forth above pursuant to the Sony/TiVo Technology License Agreement, then the Royalty [*] or (b) if Sony [*] on or before [*] pursuant to the Sony/TiVo Technology License Agreement, but does [*] in the [*] on or before [*] pursuant to the Sony/TiVo Technology License Agreement, then the Royalty [*]. The [*] in the Royalty [*] provided herein are Sony's [*] in the event [*], as the case may be, pursuant to the Sony/TiVo Technology License Agreement.
1.27 "Royalty Report" shall mean a report containing (a) a list of all CE Sublicensees of the TiVo Client Technology and the license fees and/or royalties Sony receives under each CE Sublicense Agreement; (b) the number of all CE Sublicensee Products at the time a royalty accrues to Sony but no later than the time of shipment or transfer to either a Third Party or a retail store owned by such CE Sublicensee (whichever occurs first) identified by CE Sublicensee and the CE Sublicensee's product identifier (such as model number); (c) a list of all CE Sublicensees of the TiVo Server Technology and the license fees and/or royalties Sony receives for each CE Sublicense Agreement; (d) the number of all Sony Video Recording Devices shipped or otherwise transferred to either a Third Party or a retail store owned by Sony or its Affiliates (whichever occurs first) for sale and use within a TiVo Service Area and the Sony product identifier (such as model number); and (e) the number of all Sony Video Recording Devices shipped or otherwise transferred to either a Third Party or a retail store owned by Sony or its Affiliates (whichever occurs first) intended for sale and use outside a TiVo Service Area and, if reasonably possible at no additional charge to Sony, whether such product was shipped for sale in Europe, the Americas or Asia, and Sony's product identifier (such as model number).
1.28 "Server Technology Documentation" shall mean the documentation and other specifications TiVo provides to Sony related to the TiVo Server Technology.
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
6
1.29 "Sony Primary Affiliates" shall mean the following Affiliates of Sony: Sony Electronics Inc. and Sony Europe GmbH.
1.30 "Sony Products" shall mean products including, without limitation, Sony Video Recording Devices, developed by or for Sony or its Affiliates (a) incorporating all or any portion of the TiVo Client Technology; and (b) either marketed under the brand of Sony or its Affiliates, under a MSO brand, or co-branded with any combination of the foregoing. Except with respect to the sale of Sony Products under a MSO's brand or a co-branded product (as described above), for the avoidance of doubt, Sony Products shall not include products manufactured by or for Sony or its Affiliates for distribution or sale under an original equipment manufacturer (OEM) relationship.
1.31 "Sony Source Code Affiliates" shall mean the following Affiliates of Sony: [*].
1.32 "Sony/TiVo Technology License Agreement" shall mean that certain TiVo, Inc. Technology License Agreement as of the date hereof entered into between TiVo and Sony.
1.33 "Sony Video Recording Device" shall mean a Video Recording Device developed by or for Sony or its Affiliates (a) incorporating all or any portion of the TiVo Client Technology; and (b) either marketed under the brand of Sony or its Affiliates, under a MSO brand, or co-branded with any combination of the foregoing. Except with respect to sale of Sony Video Recording Devices under MSO's brand or a co-branded product (as described above), for avoidance of doubt, Sony Video Recording Devices shall not include products manufactured by or for Sony or its Affiliates for distribution or sale under an original equipment manufacturer (OEM) relationship.
1.34 "Source Code" shall mean computer programming code and all associated header files that may be displayed in a form readable and understandable by a programmer of ordinary skill including any related source code level system documentation, comments and procedural code, such as job control language and which requires further compilation or other processing to be executed by a computer.
1.35 "Taxes" shall mean any sales, use, excise, import or export, value-added or similar tax or duty, and any other tax, including any penalties and interest, and all government permit or license fees and all customs and similar fees and any costs associated with the collection or withholding of any of the foregoing items.
1.36 "Term" shall mean seven (7) years after the Effective Date unless earlier terminated in accordance with Section 9 (Term and Termination).
1.37 "Third Party" shall mean any entity or individual (including Majority-Owned Affiliates of each party, unless a Majority-Owned Affiliate of Sony is deemed an Affiliate pursuant to Section 1.1 (Affiliate)) other than Sony or its respective Affiliates and TiVo International and any TiVo Affiliate.
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
7
1.38 "TiVo" shall mean TiVo, Inc., the parent company of TiVo International.
1.39 "TiVo Affiliate" shall mean TiVo and any entity (other than TiVo International) in which TiVo, either directly or indirectly, at any time during the term of the licenses in Section 2 (License Grants) (a) holds one hundred percent (100%) of the issued shares of voting stock (or similar indicia of ownership); or (b) has the power to exercise one hundred percent (100%) of the voting rights. An Affiliate shall cease to be an Affiliate on the date that it no longer meets the criteria set forth above.
1.40 "TiVo Client Technology" shall mean the TiVo Client Initial Release, TiVo Client Interim Releases, TiVo Client [*] and, if licensed by Sony, TiVo Client Upgrades, along with any pre-release versions that may be provided by TiVo from time to time.
(a) "TiVo Client Initial Release" shall mean the software, hardware reference design, and other TiVo Client Technology components of the Personal Digital Video Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology) as it exists on the Effective Date. As such, the TiVo Client Initial [*] Release.
(b) "TiVo Client Interim Releases" shall mean (a) the [*] of the software, hardware reference design, and other TiVo Client Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement; and (b) [*] of the [*], hardware reference design and other TiVo Client Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement. [*] of the software shall not be a [*], but shall [*] to the Sony/TiVo Technology License Agreement). In the event that TiVo makes available for general release a version of the TiVo Client Technology between [*] other than those described above, and TiVo [*] pursuant to the Sony/TiVo Technology License Agreement, [*] in [*] for all purposes of this Agreement.
(c) "TiVo Client [*]" shall mean the [*] of [*] of the software, hardware reference design, and other TiVo Client Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates (which shall include a [*]), as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement.
(d) "TiVo Client Upgrades" shall mean any TiVo Improvements to TiVo Client [*] owned by TiVo International or TiVo Affiliates that are made available by TiVo for general release to its Third Party licensees or distributed by TiVo International or a TiVo Affiliate through a general release to its network of existing personal digital video recorders.
1.41 "TiVo [*]" shall mean a Sony Video recording Device [*].
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
8
1.42 "TiVo International Patent Rights" shall mean all of the following to the extent claiming, covering or encompassing any invention or other subject matter applicable to the TiVo Technology, which are owned by TiVo International: (a) all international and foreign patents (i.e., patents not protected under Title 35 of the United States Code), utility models, certificates of invention and other governmental grants for the protection of inventions and all reissues, renewals, re-examinations and extensions thereof (based on the patent applications described in Section 1.42(b)); (b) all international and foreign patent applications filed within five (5) years of the Effective Date; (c) all applications for any of the foregoing including without limitation any international, provisional, divisional, continuation, continuation-in-part, and continuing prosecution applications; and (d) all rights in, arising out of, or associated with any of the foregoing.
1.43 "TiVo International Proprietary Rights" shall mean all (a) TiVo International Patent Rights and (b) international and foreign rights associated with works of authorship, including copyrights, moral rights and mask work rights (i.e., rights not protected under Title 17 of the United States Code).
1.44 "TiVo Service" shall mean the personal video recording services offered and provided by TiVo at any given time under the mark "TiVo," which includes the use of Personal Digital Recording Technology in Video Recording Devices installed in End Users' homes.
1.45 "TiVo Service Area" shall mean the geographic regions at any given time where the TiVo Service is offered by TiVo. A list of the geographic regions currently in the TiVo Service Area is set forth in Exhibit D (TiVo Service Area), which TiVo International may update from time to time.
1.46 "TiVo Server Technology" shall mean the TiVo Server Initial Release, TiVo Server Interim Releases, TiVo Server [*] and, if licensed by Sony, TiVo Server Upgrades, along with any pre-release versions that may be provided by TiVo from time to time.
(a) "TiVo Server Initial Release" shall mean the software, hardware reference design and other components of the TiVo Server Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology) as it exists on the Effective Date. [*]
(b) "TiVo Server Interim Releases" shall mean (a) the [*] of [*] of the software, hardware reference design and other TiVo Server Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement; and (b) [*] of the software, hardware reference design and other TiVo Server Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates, as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement. [*] of the software shall not be a [*], but shall [*] to the Sony/TiVo Technology License Agreement). In the event that TiVo makes available for
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
9
general release a version of the TiVo Server Technology between [*] other than those described above, and TiVo [*] pursuant to the Sony/TiVo Technology License Agreement, [*] in [*] for all purposes of this Agreement.
(c) "TiVo Server [*]" shall mean the [*] of [*] of the software, hardware reference design, and other TiVo Server Technology components of the Personal Digital Recording Technology owned by TiVo International or TiVo Affiliates that supports TiVo Client [*], as described in more detail in Exhibit A (TiVo Technology), and to be delivered to Sony by TiVo pursuant to the Sony/TiVo Technology License Agreement.
(d) "TiVo Server Upgrades" shall mean any TiVo Improvements to TiVo Server [*] owned by TiVo International or TiVo Affiliates that are made available by TiVo for general release to its Third Party licensees or used by TiVo to support TiVo Client Upgrades.
1.47 "TiVo Technology" shall mean the TiVo Client Technology and TiVo Server Technology, collectively, including any "Updates" that Sony may receive pursuant to the Sony/TiVo Technology License Agreement.
1.48 "TiVo Trade Dress" shall mean the unique and inherently distinctive features of the TiVo Service described in Exhibit E (TiVo Trade Dress).
1.49 "Trigger Event" shall mean the first to occur of any of the following:
(a) if the licenses in this Agreement and the Sony/TiVo Technology License Agreement are [*] by a [*] of [*]; or
(b) after either the [*] by another entity or [*] if (i) the [*] calculated for the combined entities, including the [*] to the date of such [*], being or becoming [*] for each [*] over any [*]; and (ii) such [*] at the time it meets the [*] criteria above after the [*] has [*] of [*] and [*] of [*]; or
(c) when TiVo itself (i) [*] for [*] over any [*]; and (ii) at the time [*] meets the [*] criteria above, has [*] of [*] and [*].
1.50 "Video Recording Device" shall mean a component or device, the principal purpose of which is the recording and playback of a sequence of images, whether or not accompanied by sounds ("Video"), on any digital media, whether such media is now in existence or which comes into existence in the future. The Video signal may be analog or digital and may be delivered to the Video Recording Device by terrestrial broadcast, satellite, cable [*]. A Video Recording Device may be a standalone product or part of a larger product.
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
10
2. License Grants.
2.1 TiVo Technology License (Japan).
(a) TiVo Client Technology. TiVo International grants to Sony and its Affiliates a royalty-free, perpetual, irrevocable (except as set forth in Section 9.3(a) (Termination for a Material Sony Breach)), non-transferable, non-exclusive license, under the TiVo International Proprietary Rights, to:
(i) Internally use, perform, display, reproduce, modify and create Improvements to the TiVo Client Technology;
(ii) Make and have made Sony Products, provided that any software embodying the TiVo Client Technology incorporated in such Sony Products shall be solely in Object Code form;
(iii) Provide services for End Users located in Japan using Sony Products, CE Sublicensee Products or products of Third Parties based on TiVo Technology using the TiVo Client Technology;
(iv) Use, display, distribute, perform, offer to sell, sell and import Sony Products solely in Japan and [*] the TiVo Client Technology to create such Sony Products solely for use in Japan; and
(v) Sublicense to End Users of Sony Products (either directly or through MSOs), solely for use in Japan, the right to use, display and perform any TiVo Client Technology incorporated in such Sony Products; provided that all such sublicenses shall be subject to the restrictions set forth in Section 2.3(d) (End User Agreements).
(b) TiVo Server Technology License. TiVo International grants to Sony and its Affiliates a royalty-free, perpetual, irrevocable (except as set forth in Section 9.3(a) (Termination for a Material Sony Breach)), non-transferable, non-exclusive license, under the TiVo International Proprietary Rights, to:
(i) Internally use, perform, display, and reproduce the TiVo Server Technology solely in Japan;
(ii) Internally [*] of the TiVo Server Technology [*] of the TiVo Server Technology [*] TiVo Server Technology") solely in Japan; and
(iii) Use, display, distribute, perform, offer to sell, and sell services, directly or through a Third-Party hosting service provider, solely to End Users located in Japan using Sony Products, CE Sublicensee Products or products of Third Parties based on TiVo Technology and [*] the TiVo Server Technology and [*] TiVo Server Technology to create and
---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
11
provide such services solely to End Users located in Japan using Sony Products, CE Sublicensee Products or products of Third Parties based on TiVo Technology.
(c) TiVo Client Technology Sublicense. TiVo International grants to Sony an irrevocable (except as set forth in Section 9.3(a) (Termination for a Material Sony Breach)), non-exclusive license to sublicense to CE Sublicensees a non-exclusive and non-transferable right, under the TiVo International Proprietary Rights (without the right to grant further sublicenses except as expressly set forth herein), to:
(i) Internally use the TiVo Client Technology, provided that any software embodying the TiVo Client Technology shall be provided to and used by such CE Sublicensee solely in Object Code form;
(ii) Make and have made CE Sublicensee Products, provided that any software embodying the TiVo Client Technology incorporated in such CE Sublicensee Products shall be solely in Object Code form;
(iii) Use, display, distribute, perform, offer to sell, sell, and import CE Sublicensee Products solely in Japan and [*] the TiVo Client Technology to create such CE Sublicensee Products solely for use in Japan; and
(iv) Sublicense to End Users of such CE Sublicensee Products (either directly or through MSOs), solely for use in Japan, the right to use, display and perform any TiVo Client Technology incorporated in such CE Sublicensee Products; provided that all such sublicenses shall be subject to the restrictions set forth in Section 2.3(d) (End User Agreements).
(d) TiVo Server Technology Sublicense. TiVo International grants to Sony an irrevocable (except as set forth in Section 9.3(a) (Termination for a Material Sony Breach)), non-exclusive license to sublicense to CE Sublicensees a non-exclusive and non-transferable right, under the TiVo Intern...
View agreement details