EX 10.26
AMENDED AND RESTATED TECHNOLOGY AND
TRADEMARK SUBLICENSE AGREEMENT
This Amended and Restated Technology and Trademark Sublicense Agreement
("Agreement") is entered into as of the 31st day of December, 1995 by and
between IWN, Inc., a Delaware corporation ("IWN") and IWN, L.P. a limited
partnership formed under the laws of the State of Delaware ("LP").
BACKGROUND
NTN Communications, Inc. ("NTN") has developed and is the sole owner of
certain technology, together with certain inventions and improvements for a two-
way interactive computerized broadcast system and certain other Technology (as
defined herein) which may be utilized for Gaming Applications (as that term is
defined herein). NTN and IWN have previously entered into a certain Technology
License Agreement dated as of November 3, 1993, as amended and restated pursuant
to a certain Amended and Restated Technology and Trademark License Agreement
dated as of December 31, 1995 (the "License Agreement").
IWN and LP have previously entered into a certain Technology Sublicense
Agreement dated as of September 30, 1994 ("Original Sublicense "), in order to
secure the exclusive right and license to use, develop, manufacture and exploit
the Technology and the Trademarks for Gaming Applications (as that term is
defined herein). Prior to the date hereof, LP has exploited the Technology in
order to develop, research, sell, distribute and market the products and
services to businesses engaged in Gaming Applications (as that term is defined
herein).
IWN and LP now desire to amend and restate the Original Sublicense in
order, inter alia, to clarify and amend certain terms and conditions as more
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fully described. It is intended that LP be the sole and exclusive sublicensee
of the Technology for Gaming Applications.
IWN is also granting to LP an exclusive sublicense of its right to use the
Trademarks (as defined herein) for Gaming Applications (as that term is defined
herein), as more fully described herein.
The sublicenses granted herein and in the Original Sublicense were granted
in partial consideration for IWN's agreement to use its best efforts to
research, develop, sell, distribute, and market the Technology.
NOW, THEREFORE, in consideration of the premises and of the promises and
covenants contained herein, and intending to be legally bound hereby, the
parties agree as follow:
1. SUBLICENSE OF TECHNOLOGY/TERM. Commencing on the date hereof, up
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through and including December 31, 2024 (the "Term"), IWN hereby grants to LP,
subject to the terms herein, and as permitted by law, an exclusive, paid-up,
royalty-free, right and sublicense to the Technology for Gaming Applications
("Sublicense") and for no other purpose whatsoever in the United States and
Canada (the "Territory"). For purposes herein, "Gaming Applications" shall be
defined as any interaction where any sum of money is risked on an uncertain
outcome, such as casino gaming, pari-mutuel wagering, lottery, sports betting,
bingo, or other forms of gaming or wagering. For purposes herein, "Technology"
shall mean the source code, object code, software and written documentation
therefor as contained in a manual entitled "The Book of All Knowledge", which
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relates to interactive computerized broadcast systems
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("Systems"), use or sale of the Systems, specifications and data which NTN has
heretofore developed or owns, or may hereafter develop or own, at any time
during the Term of this Agreement, to which Technology IWN is the exclusive
licensee for Gaming Applications, as are more specifically set forth in Exhibit
A hereto, except in the event that NTN does not wholly own such Technology, or
in the event that such Technology is based upon or derived from a third party,
such rights and sublicense granted herein shall be subject to any and all
restrictions imposed by such third party. Absent an event which causes the
release of the Technology from escrow to any entity other than NTN as depositor,
pursuant to the Escrow Agreement to be entered into by and among NTN, IWN and
Data Securities International, Inc. ("Technology Escrow") as more fully
described in Section 8 hereof, the Technology and Trademarks, and all rights and
sublicenses granted herein, shall automatically revert back to IWN at the
expiration of the Term.
2. IMPROVEMENTS. IWN and LP agree that for purposes of carrying out the
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terms and conditions of this Agreement, all additions, improvements and
modifications to the Technology, together with the documentation therefor which
is contained in a manual entitled "The Book of All Knowledge" (collectively,
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"Improvements"), IWN shall furnish directly to LP and LP shall have the right
and license to employ such information in its business without cost or
restriction to LP, except that in the event that such Technology and/or
improvements are based upon or derived from a third party other than NTN, such
right and sublicense granted herein shall be subject to any and all restrictions
imposed upon NTN by such third party.
3. SUBLICENSE OF TRADEMARKS. Subject to the terms herein, and as
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permitted by law, IWN hereby grants to LP an exclusive, paid-up, royalty-free
right and license ("Trademark License") to use all trademarks, service marks,
trade names, copyrights and identifying slogans, whether registered or not
(collectively, "Trademarks"), which include, without limitation, those
Trademarks listed on Exhibit B attached hereto, for Gaming Applications in
connection therewith in the United States and Canada (the "Territory") during
the Term, and LP hereby accepts the Trademark License, except that in the event
that NTN does not wholly own such Trademark or in the event that NTN's rights in
and to such Trademarks are based upon or derived from a third party, such right
and sublicense granted herein shall be subject to any and all restrictions
imposed upon NTN by such third party.
4. REPRESENTATIONS AND WARRANTIES OF IWN. IWN represents and warrants
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that it is the sole and exclusive licensee of the Technology for which the
Sublicense is granted, that it has the legal right and authority to grant the
sublicenses hereunder under the terms and conditions set forth in this
Agreement, and that to the best of its knowledge, there are no suits or other
actions pending or threatened against IWN for patent infringement or other
claims that may affect LP's right to make, use or otherwise exploit the
Technology in the manner contemplated by this Agreement, with the exception of
those actions disclosed pursuant to the Investment Agreement between NTN, IWN
and Symphony Management Associates, Inc. (the "Investment Agreement"). IWN
further represents that to the best of its knowledge, there is nothing that
would affect the validity of its rights in and to the Technology nor would
require the payment of any royalty, license fee or other charge or fee of any
kind to any person or entity and IWN has not received any notice of any adverse
claim by any third party with respect thereto, with the exception of those
actions disclosed in the Investment Agreement. IWN covenants and agrees that
throughout the Term of this Agreement, it will take all steps necessary to
maintain and preserve LP's rights to the Technology and the Sublicense
hereunder.
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5. REPRESENTATIONS AND WARRANTIES OF LP. LP hereby represents and
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warrants that it shall take all reasonable steps to establish, maintain and
protect NTN's rights in the Technology and Trademarks, including, without
limitation, taking any actions reasonably requested by NTN to confirm or vest
ownership in NTN, at NTN's sole cost and expense. LP shall not, directly or
indirectly, nor shall it permit any of its permissible sublicensees, assigns,
affiliates (as defined herein), officers, directors or employees to misuse,
misappropriate, hypothecate or take any other actions which may reasonably be
considered to be inconsistent with the ownership rights of NTN in and to such
Technology and Trademarks and goodwill associated therewith.
6. CONFIDENTIALITY AND NON-COMPETITION.
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(a) IWN hereby acknowledges and agrees that all documents, records,
techniques, processes and other business secrets and confidential information
which has come into its possession relating to Gaming Applications for the
Technology ("Confidential Information") which includes, without limitation, the
identity of customers and confidential information of those customers, contracts
with vendors and suppliers of LP, LP documentation, LP finances and operations,
and applications of Technology to Gaming Applications, is confidential and
proprietary to LP. IWN shall keep confidential and not divulge to any other
person (except for those designated by LP in writing) all of the Confidential
Information.
(b) For so long as this Agreement remains in effect, IWN shall not,
directly or indirectly, as agent, joint venturer or otherwise, have any direct
or indirect financial interest (with the exception of its investment in LP), nor
shall it permit any of its subsidiaries, affiliates (with respect to any
individual or entity regardless of form ("Person"), any other Person directly,
or indirectly through one or more intermediaries, controlling, controlled by or
under common control), directors or officers to engage in any form of business
competing directly or indirectly with any of the businesses of LP anywhere in
the world, which the parties agree for purposes of this provision shall be all
Gaming Applications. Ownership by any of the foregoing of stock listed on a
national securities exchange of any corporation conducting such competing
business shall not be deemed to be a violation of this Section 6(b), provided
that such person does not own more than an aggregate of 5% of the stock of such
corporation.
(c) In the event of a breach or any threatened breach by IWN of the
provisions of this Agreement, LP shall be entitled to an injunction restraining
IWN from disclosing, in whole or in part, the Confidential Information or from
participation in violation of this Agreement in any business which competes
directly or indirectly with any of the businesses described herein. Nothing in
this Agreement shall be construed as prohibiting LP from pursuing any other
remedies available to it for any such breach or threatened breach, including
without limitation, the recovery of damages from IWN. The covenants contained
in this Agreement shall run in favor of LP and its permissible successors and
assigns.
(d) LP hereby acknowledges and agrees that all documents, records,
techniques, processes and other business secrets and confidential information
which has come into its possession relating to NTN's Systems and the information
contained in "The Book of All Knowledge" ("Proprietary Information"), excepting
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only as such applies to Gaming Applications for the Technology, and which
further includes, without limitation, the identity of customers and confidential
information of those customers, contracts with vendors and suppliers of NTN, NTN
documentation, NTN finances and operations, and applications of Technology to
other than Gaming Applications, is confidential and
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proprietary to NTN, as the case may be. IWN shall keep confidential and not
divulge to any other person (except for those designated by NTN in writing) all
of the Proprietary Information.
(e) For so long as this Agreement remains in effect, LP shall not,
directly or indirectly, as agent, joint venturer or otherwise, have any direct
or indirect financial interest (with the exception of its investment in NTN),
nor shall it permit any of its subsidiaries, affiliates (with respect to any
Person, any other Person directly, or indirectly through one or more
intermediaries, controlling, controlled by or under common control), directors
or officers to engage in any form of business competing directly or indirectly
with any of the businesses of NTN anywhere in the world, which the parties agree
for purposes of this provision shall be relating to NTN's Systems and the
information contained in "The Book of All Knowledge", other than as such is used
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in connection with Gaming Applications. Ownership by any of the foregoing of
stock listed on a national securities exchange of any corporation conducting
such competing business shall not be deemed to be a violation of this Section
6(e), provided that such person does not own more than an aggregate of 5% of the
stock of such corporation.
(f) In the event of a breach or any threatened breach by LP of the
provisions of this Agreement, NTN and/or IWN shall be entitled to an injunction
restraining LP from disclosing, in whole or in part, the Proprietary Information
or from participation in violation of this Agreement in any business which
competes directly or indirectly with any of the businesses described herein.
Nothing in this Agreement shall be construed as prohibiting NTN and/or IWN from
pursuing any other remedies available to it for any such breach or threatened
breach, including without limitation, the recovery of damages from LP. The
covenants contained in this Agreement shall run in favor of NTN and IWN and
its/their permissible successors and assigns, and shall bind LP and its
permissible successors, assigns and sublicensees.
7. INDEMNIFICATION.
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(a) IWN agrees to indemnify, defend and hold harmless LP and its
permissible assignees from any and all claims brought by any party and any
expenses (including reasonable attorneys' fees) which arise from the Technology
and the Trademarks relating to (i) a breach of any of the representations and
warranties hereunder and (ii) any claim of infringement of a patent or other
proprietary right held by a third party.
(b) In the event of a claim by a third party, LP or its permissible
assignees shall so notify NTN in writing of any claim within twenty (20) days
following receipt of a claim made by a third party with respect to an alleged
infringement of the Technology and the Trademarks. LP or its permissible
assignees, as the case may be, shall be entitled to control the defense and
settlement thereof provided, however, that any such settlement shall not impose
any obligations or restrictions upon IWN without its prior consent.
8. TECHNOLOGY ESCROW. Not later than ninety (90) days after December 31,
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1995, NTN shall deposit into escrow all of the source code relating to the
software, and the documentation therefor which is contained in a manual entitled
"The Book of All Knowledge" relating to the software and hardware used in, or in
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conjunction with, the System and the Technology, NTN, IWN and LP shall enter
into a mutually agreeable Technology Escrow Agreement governing such deposit
into escrow.
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9. ASSIGNMENT. This Agreement may not be assigned by IWN or LP without
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the prior written consent of the non-assigning party and NTN, except that LP
shall be permitted to assign its rights herein to a successor to LP, pursuant to
a reorganization of LP for the sole purpose of changing to a corporate form or
other form of business entity, which entity continues the business of LP and is
further subject to the terms and conditions of this Agreement.
10. GOVERNING LAW. This Agreement shall be governed by, construed and
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enforced in accordance with the laws of the State of California without regard
to conflicts of law principles.
11. CONSENT OF NTN TO SUBLICENSE. NTN hereby acknowledges and consents to
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this Sublicense. Provided that there has not been a material breach by LP of
this Agreement or the Worldwide Technology and Trademark Sublicense Agreement,
which breach is reasonably capable of being cured and of which LP has been given
written notice and has cured such breach within ten (10) days of receipt of such
notice, this Agreement shall remain in effect for the Term. In the event of a
material breach of this Agreement by LP, NTN shall have the right, in its sole
discretion, to cancel the License Agreement and all sublicenses thereof, which
right shall further entitle NTN to cancel the Technology Escrow and remove all
items deposited therein. Notwithstanding the foregoing, NTN hereby agrees to
take no action to either cancel this Agreement or to remove any deposits made by
NTN into the Technology Escrow in the event of a breach by IWN, provided that
such breach is not directly or indirectly the result of any actions taken by LP
or any of it permissible successors, assigns or sublicensees.
12. NOTICES. Notices, statements, reports or other communications under
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this Agreement shall be in writing and shall be deemed as having been received
as of the date dispatched if sent by telecopier, express mail and addressed as
follows:
If to NTN or IWN:
5966 La Place Court
Carlsbad, California 92008
Attn: Laura Kass, Esquire
Telecopier No. 619-929-5293
With copies to:
Troy & Gould, Professional Corporation
1801 Century Park East, 16th Floor
Los Angeles, California 90067-2367
Attn: William D. Gould, Esquire
Telecopier No. 310-201-4746
If to LP: IWN, L.P.
5966 La Place Court
Carlsbad, California 92008
Attention: Colleen Anderson, President
Telecopier No. (619) 930-1174
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and Symphony IWN Investment LLC
Symphony Management Associates, Inc.
900 Bestgate Road, Suite 400
Annapolis, Maryland 21801
Attn: Richard J. Donnelly
Telecopier No. 410-573-5205
and Stradley, Ronon, Stevens & Young, LLP
2600 One Commerce Square
Philadelphia, PA 19103
Attn: William R. Sasso, Esquire
Telecopier No. 215-564-8120
or to such other addresses and telecopier numbers as the party to whom notice is
to be given may have previously furnished to the other party in writing.
13. MISCELLANEOUS. This Agreement may be executed in several
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counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument. This Agreement, including
the exhibits hereto, constitutes the entire agreement between the parties
concerning the subject matter hereof, and will supersede all previous
communications, representations, understandings, and agreements, either oral or
written between the parties. Whenever possible, each provision of this Agreement
shall be interpreted in such manner as to be effective and valid under
applicable law, but if any provision of this Agreement is held to be prohibited
by or invalid under applicable law, such provision shall be ineffective only to
the extent of such prohibition or invalidity, without invalidating the remainder
of this Agreement. This Agreement shall be deemed to obligate, extend to, and
inure to the benefit of the permitted successors, transferees, grantees,
affiliates, indemnities, agents and representatives.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first written above.
IWN, INC. IWN, LP
[SIGNATURE ILLEGIBLE] /s/ Colleen Anderson
By:------------------------------ By:---------------------------------
Chairman President & CEO - G.P.
Its:----------------------------- ---------------------------------
The undersigned acknowledges the terms and conditions contained in Section 11
hereof and agrees to be legally bound thereby.
NTN COMMUNICATIONS, INC.
[SIGNATURE ILLEGIBLE]
By:-------------------------------
Chairman
Its:------------------------------
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EXHIBIT A
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BROADCAST CENTER ( SERVER ) - CONTROL SOFTWARE
Sender
Queue Manager
Satmon
Operator
Director
Ed Scores
Site Activity
BROADCAST CENTER ( SERVER ) - APPLICATION SOFTWARE
Ref
Emcee
Umpire
Lineman
Commissioner
Judge
Players Plus
HOSPITALITY SITE ( CLIENT ) - CONTROL SOFTWARE
Supervisor
Idsio
HOSPITALITY SITE ( CLIENT ) - APPLICATION SOFTWARE
Trivia ( Countdown/Showdown )
Trivia2 ( Trivial Pursuit )*
Tivia3 ( Sports IQ/Passport/Spotlight)
Qb1*
Diamondball*
Triples
PowerPlay*
Uppercut
Fantasy
ONLINE HOST ( SERVER ) - CONTROL SOFTWARE
Router ( TCP/IP)
Host
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ONLINE HOST ( SERVER ) - APPLICATION SOFTWARE
Trivia
Qb1*
Fantasy*
ONLINE USER ( CLIENT ) - APPLICATION SOFTWARE
Trivia
Qb1*
Fantasy*
INTERNATIONAL SITE ( CLIENT ) UNIQUE APPLICATION SOFTWARE
Ruggers ( Rugby )*
ARF ( Australian Rules Football )*
CABLE TV HEADEND ( SERVER ) SOFTWARE
Qb1*
Poker
BlackJack
Reversi
Checkers
Trivia
Uppercut
Triples
REMOTE DATA TERMINAL HARDWARE ( PLAYMAKER )
HOME DATA TERMINAL HARDWARE ( BASE STATION )
*Rights derived from third party; restricted
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EXHIBIT B
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NTN COMMUNICATIONS, INC. TRADEMARKS
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Brain Buster(R)
Countdown(R)
Dreamteam Baseball and Design(R)
Hoops and Design(R)
Link-up Live and Play The World(R)
Nightside(R)
NTN(R)
NTN DiamondBall(R)*
NTN Entertainment Network(R)
NTN Power Play(R)*
Playmaker(R)
Playersplus(R)
QB1(R)*
Showdown(R)
Sports Trivia(R)
Sports Trivia Challenge(R)
The Face of Entertainment(R)
Triviaoke(R)
Undercover(R)
Uppercut(R)
Viewer's Review(R)
*Rights derived from third party; restricted
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