Non-Exclusive License Agreement - Progressive Games Inc. and Shuffle Master Inc.
NON-EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the 28th day of December, 1999
(the "Effective Date"), by and between PROGRESSIVE GAMES, INC., a Delaware
corporation ("LICENSOR") and SHUFFLE MASTER, INC., a Minnesota corporation
("LICENSEE").
W I T N E S S E T H:
WHEREAS, LICENSEE desires a license under certain patents owned or held
by LICENSOR to develop, market, lease, license and/or operate certain live
casino table card games; and
WHEREAS, LICENSOR desires to grant such license on the terms and
conditions set forth herein.
NOW, THEREFORE, IN CONSIDERATION of the mutual covenants and conditions
set forth below and other good and valuable consideration, the receipt and
sufficiency of which all parties acknowledge, it is agreed as follows:
1 DEFINITIONS.
For the purposes of this Agreement, the terms set forth below shall be
defined as follows:
1.1 "Affiliate" shall mean a parent, subsidiary or other entity owned
or controlled by LICENSOR or LICENSEE as the case may be.
1.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.4
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.5
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.6
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.7 "Charges" shall have the meaning ascribed in Section 4.3 below.
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 1
<PAGE>
1.8 "Effective Date" shall have the meaning ascribed in the first
paragraph of this Agreement.
1.9 "Game" shall mean a live casino table card game.
1.10
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.11
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.12
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.13
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.14 "Manufacturing Costs" shall mean direct labor and direct material
costs.
1.15 "Non-Electronic Game" shall have the meaning ascribed in Section
4.5 below.
1.16 "Notice of Dispute" shall have the meaning ascribed in Section
13.2.1.
1.17 "Notice to Arbitrate" shall have the meaning ascribed in Section
13.2.2.
1.18 "Offer" shall mean promote, market, lease, sell or otherwise make
available for use.
1.19 "Other Intellectual Property" shall mean all intellectual property
of LICENSOR of every nature and kind except the Patents.
1.20
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 2
<PAGE>
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.21 "Person" shall mean an individual, corporation, partnership or
other entity.
1.22 "Product Line" shall have the meaning ascribed in Section 10
below.
1.23
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.24 "Quarterly Period" shall mean the 3-month periods ending March 31,
June 30, September 30 and December 31.
1.25 "Royalty" shall have the meaning ascribed in Section 4 below.
1.26 "Royalty Report" shall have the meaning ascribed in Section 5.2
below.
1.27
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.28
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
1.29
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 3
<PAGE>
1.30 "United States" shall include all states, territories and
possessions thereof and the District of Columbia.
1.31
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
2 LICENSE GRANT.
Subject to the terms, conditions and limitations herein, LICENSOR
hereby grants LICENSEE a non-exclusive license under the Patents to make, have
made, install, service, license, offer to lease and lease Licensed Products in
the Territory.
3 LIMITATIONS.
3.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
3.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
3.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
3.4
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
3.5
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
3.6
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 4
<PAGE>
3.7 The license granted in this Agreement creates no license, express
or implied, to any Other Intellectual Property.
4
4.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.2.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.2.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.4
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.4.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.4.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.5
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.6
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.7
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.1.8
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 5
<PAGE>
4.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.4
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.5
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.6
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
4.7
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 6
<PAGE>
5 PAYMENT AND ACCOUNTING RECORDS.
5.1 All Royalties shall be paid in full within 30 days of each
Quarterly Period. Royalties may be calculated using weighted averages adjusted
annually.
5.2 Within 30 days after each Quarterly Period in respect of which
Royalties are due under Section 4, LICENSEE shall prepare and send to LICENSOR a
report setting forth a computation of the Royalty due hereunder and the Gross
Revenue earned through the Licensed Products by LICENSEE and its Affiliates
during such Quarterly Period in each gaming jurisdiction within the Territory
(the "Royalty Report").
5.3 LICENSEE shall keep accurate records in respect to all revenues
generated from Licensed Products by LICENSEE and its Affiliates and shall
maintain such records for at least 4 years from the date of the Royalty Report.
LICENSOR shall have the right, at its sole cost and expense, not more than once
each year, to have LICENSEE's records reviewed, in respect to revenues earned
from the Licensed Products in the Territory at times which are reasonably
convenient to LICENSEE, using a retained independent certified public accounting
firm. Any Royalty Reports rendered by LICENSEE to LICENSOR prior to the date of
such review as to which LICENSOR raises no reasonable written objection within
ninety (90) days after the commencement of such review shall be deemed
conclusive and binding, provided LICENSEE has not unreasonably impeded such
review. If LICENSOR shall dispute the accuracy of any Royalty Report, the
dispute shall be resolved by a panel of three independent certified public
accountants, one selected by LICENSEE at its sole cost and expense, one selected
by LICENSOR at its sole cost and expense, and the third selected by the
previously selected accountants, the cost and expense of the third panel member
shall be borne equally by LICENSEE and LICENSOR; provided, however that if the
panel of accountants shall determine that the Royalties due hereunder in respect
of Gross Revenue during any Quarterly Period were in excess of 5% of the amount
of Royalties reported by LICENSEE for such Quarterly Period, LICENSEE shall bear
the cost and expense of such panel. The determination of said panel by majority
vote shall be conclusive and binding on the parties hereto.
5.4 At the termination of this Agreement, LICENSEE shall render a final
Royalty Report to LICENSOR within thirty (30) days after the end of the
Quarterly Period in which such termination occurs.
6 WARRANTY; ENFORCEMENT; INDEMNIFICATION.
6.1 LICENSOR warrants as follows:
6.1.1 LICENSOR is a corporation duly organized and existing
under the laws of Delaware and is the lawful owner of the Patents, which are
valid and enforceable.
6.1.2 LICENSOR has the corporate power and authority to
execute, deliver and perform this Agreement. Such execution, delivery and
performance have been duly authorized
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 7
<PAGE>
by all necessary action on the part of LICENSOR, do not and will not require the
approval of the shareholders of LICENSOR and do not and will not contravene the
Certificate of Incorporation or By-Laws of LICENSOR.
6.1.3 The execution, delivery and performance of this
Agreement by LICENSOR will not result in any violation by LICENSOR of any law,
rule or regulation applicable to LICENSOR. LICENSOR is not a party to, or
subject to or bound by, any agreement, judgment, injunction or decree of any
court or governmental authority which may restrict or interfere with the
performance of this Agreement. This Agreement is a valid and binding obligation
of LICENSOR enforceable in accordance with its terms.
6.1.4 LICENSOR has no knowledge of any present condition or
contingency which LICENSOR can reasonably expect may adversely affect its
ability to perform its obligations under this Agreement.
6.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
6.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7 TERM AND TERMINATION.
7.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.2.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 8
<PAGE>
7.2.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.2.3
.
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.3
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.4
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
7.5 All remedies provided in this Agreement are cumulative and not
exclusive and may be exercised in conjunction with any other remedies a party
may have in law or equity.
8
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
9 INDEMNITY BY LICENSEE.
9.1 Subject to the provisions of Sections 6.2 and 6.3, LICENSEE shall
indemnify, defend, and hold harmless LICENSOR, its officers, directors,
employees and agents, from and against any and all claims, suits, losses
damages, costs, fees, and expenses (including attorneys' fees) resulting from or
arising out of the use of the Patents by LICENSEE, its customers, agents, or
employees, or the negligence or misconduct of LICENSEE in performance of its
obligations under this Agreement.
9.2 LICENSEE's obligations, set forth in this Section, shall survive
the termination of this Agreement.
10
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
10.1
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 9
<PAGE>
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
10.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
11 RELATIONSHIP OF PARTIES.
The relationship between LICENSOR and LICENSEE is that of independent
contractors. Neither party, nor its agents and employees, shall under any
circumstances be deemed an agent or representative of the other and neither
shall have authority to act for and/or bind the other in any way, or represent
that it is in any way responsible for acts of the other. This Agreement does not
establish a joint venture, agency or partnership between the parties.
12 CONFIDENTIALITY.
12.1 The terms of this Agreement and all negotiations concerning this
Agreement are confidential and shall not be disclosed to any other person or
entity not a party to this Agreement unless required by law or regulatory
authority.
12.2
[XXXX] TEXT DELETED CONFIDENTIAL TREATMENT REQUESTED
13 GENERAL PROVISIONS.
13.1 Notice. Any notice, request, demand, or other communication that
is required or permitted under this Agreement shall be deemed properly given if
it is deposited in the U.S. mail, certified, return receipt requested, postage
prepaid, properly addressed as follows:
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 10
<PAGE>
13.1.1 If to LICENSOR:
Progressive Games, Inc.
1045 Palms Airport Drive
Las Vegas, Nevada 89119
Attention: President
With a copy to:
Progressive Games, Inc.
1045 Palms Airport Drive
Las Vegas, Nevada 89119
Attention: General Counsel
13.1.2 If to LICENSEE:
Shuffle Master, Inc.
1106 Palms Airport Drive
Las Vegas, Nevada 89119
Attention: President
With a copy to:
Shuffle Master, Inc.
1106 Palms Airport Drive
Las Vegas, Nevada 89119
Attention: General Counsel
13.2 Dispute Resolution. Except for disputes involving Royalty payments
resolved under Section 5.3 of this Agreement, any disputes that may arise under
or concerning this Agreement, including but not limited to any dispute
concerning the enforceability or interpretation of any provision herein, shall
be resolved as follows:
13.2.1 If a dispute arises under this Agreement, any party may
give written notice to the other that it desires to meet in person to attempt to
resolve the dispute ("Notice of Dispute"). Within thirty (30) days after service
of a Notice of Dispute, appropriate representatives of the parties shall meet in
person and attempt in good faith to resolve the dispute.
13.2.2 If the parties fail to reach a resolution of a dispute
within thirty (30) days after service of the Notice of Dispute, either party may
request arbitration. Such request shall be in writing, served on the other party
in accordance with the provisions of Section 13.1 and shall
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 11
<PAGE>
designate an arbitrator ("Notice to Arbitrate").
13.2.3 The Notice to Arbitrate must set forth verbatim all of
the provisions of this Section 13.2 or it shall not be deemed effective.
13.2.4 Within ten (10) days after receipt of the Notice to
Arbitrate, the receiving party shall designate a second arbitrator. If a second
arbitrator is not timely designated, the dispute shall be submitted to the first
arbitrator for resolution. Within 10 days after the appointment of the second
arbitrator, the two arbitrators shall select a third arbitrator. If the two
arbitrators cannot agree on a third arbitrator, either party may commence
proceedings before the American Arbitration Association to appoint the third
arbitrator. Upon the appointment of the third arbitrator, the arbitration panel
shall be deemed duly constituted.
13.2.5 Once a panel of arbitrators is constituted, the panel
shall be required to render a final decision resolving the dispute within 60
days.
13.2.6 The arbitration panel shall be required to award the
prevailing party its costs and attorneys fees.
13.3 Governing Law. This Agreement shall be governed by the and
construed in accordance with the substantive law of the state of Nevada, without
giving effect to any conflicts or choice of laws principles that otherwise might
be applicable.
13.4 Forum Designation. Any action brought by either party against the
other party for claims arising out of this Agreement shall be brought in a court
of competent jurisdiction in the State of Nevada.
13.5 Divisibility. If any provision of this Agreement is found to be
prohibited by law and invalid, or for any other reason if any provision is held
to be unenforceable, in whole or in part, such provision shall be ineffective to
the extent of the prohibition or unenforceability without invalidating or having
any other adverse effect upon any other provision of this Agreement.
13.6 Entire Agreement. This Agreement, including the documents and the
instruments referred to herein and attached hereto, constitutes the entire
agreement between the parties relating to its subject matter and supersedes all
prior or contemporaneous negotiations or agreements, whether oral or written,
relating to the subject matter hereof. No extension, modification or amendment
of this Agreement shall be binding upon a party unless such extension,
modification or amendment is set forth in a written instrument, which is
executed and delivered on behalf of such party.
////
////
////
////
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 12
<PAGE>
////
////
////
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement, including the Exhibits attached hereto and incorporated herein by
reference, as of the date first written above.
SHUFFLE MASTER, INC. PROGRESSIVE GAMES, INC.
By: /s/ Mark L. Yoseloff By: /s/ Charles H. McCrea, Jr.
-------------------- --------------------------
Its: Exec. V. Pres. Its: Ex. V.P. & Secretary
-------------------- --------------------------
[NON-EXCLUSIVE LICENSE AGREEMENT (EX. 4)] 13