Software Distribution Agreement - BAM Entertainment Ltd. and Ubi Soft Entertainment S.A.
SOFTWARE DISTRIBUTION AGREEMENT
This Agreement is made and entered into as of February 21st, 2001 by and
between BAM Entertainment Limited whose Registered Office is located at 17
Burlington Street, Bath, BA1 2SB ("BAM") and Ubi Soft Entertainment S.A., whose
Registered Office is located at 61 rue Saint Helier, Rennes 35000, France and
with offices at 28 rue Armand Carrel, 93108 Montreuil sous bois, France ("Ubi
Soft"); Ubi Soft and BAM being hereinafter individually referred to as "Party"
or jointly referred to as the "Parties."
BAM is engaged in the business of development and production of video games for
various platforms as well as distributing under license different video games.
BAM has developed and is publishing several multimedia products (the "Products"
Ubi Soft is engaged inter alia in the distribution and sale of multimedia
educational and entertainment titles in the "Territory" (as hereinafter
BAM wishes to retain Ubi Soft and Ubi Soft wishes to serve as a distributor
within the Territory of BAM's Products on the terms and conditions set forth in
Therefore, in consideration of the mutual covenants hereinafter set forth and
other good and valuable consideration, the Parties hereto agree as follows:
In this Agreement, the following terms shall have the following meanings:
1.1 "Products" shall mean the three multimedia Products listed in Exhibit A
hereof in English, French, German, Italian and Spanish languages for the
NINTENDO Gameboy Color format developed and published by BAM and/or under
licence to BAM, approved by NINTENDO and delivered to Ubi Soft as finished
goods together with their packaging and manuals.
1.2 "Promotional Materials" shall mean any documents and materials including
manuals and packaging of the Products, advertising, promotional, display
and/or other such marketing materials of or concerning the Products
furnished by BAM to Ubi Soft and which Ubi Soft may use in conjunction
with the distribution of the Products and for promotional purposes only.
1.3 "Territory" shall mean the jurisdictions to which this Agreement applies
and set forth in clause 4.
1.4 "Distribution Channels" shall mean retail distribution channels in the
Territory, including without limitation distribution to retailers,
wholesalers, directly to end-users, to electronic retailers, through BtoB
opportunities, Bundle and sublicence to third party distributors. Products
may be sold or marketed via the Internet but not transmitted, distributed
or made available to download via the Internet.
1.5 "Bundle" shall mean distribution of the Products by way of marketing a
copy of the Products with a personal computer, a PC peripheral (for
example: video card, 3D card, sound card, etc.), a console or any other
product whichever its nature, subjected to a common offer and/or offered
in a common packaging.
1.6 "Working Day" shall mean 9-am to 5-pm Monday to Friday excluding bank and
1.7 "Term" shall mean the period from the Signature Date to the date of
termination (howsoever caused, including expiry of the Term) ("Termination
Date") of this Agreement.
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1.9 "Signature Date" shall mean the date of signature of this Agreement or (if
signed by the parties on different dates) the later of such dates.
All references to Clauses, Sub-clauses and Exhibits are to Clauses, Sub-clauses
and Exhibits of this Agreement. Words importing the singular only shall include
the plural and vice versa; words importing the masculine gender shall include
the feminine; and words importing persons shall include corporations.
2. Grant of Rights
2.1 BAM hereby grants Ubi Soft an exclusive license on the terms and conditions
set forth in this Agreement during the Term to distribute, market and sell the
Products and to manufacture and distribute the Promotional Materials throughout
the Distribution Channels in the Territory;
2.2 BAM hereby grants Ubi Soft a non-exclusive license on the terms and
conditions set forth in this Agreement during the Term to use BAM's trade marks
or symbols as indicated herein, in connection only with the promotion and
distribution of the Products.
3.1 This Agreement shall take effect on the Signature Date and subject to the
provisions of clause 12, last for a period of 2 (two) years thereafter.
If the Parties decide to renew the Term, the parties shall do so upon prior
written approval only by both of the Parties.
3.2 It is hereby expressly agreed that unless the Agreement is terminated by
BAM pursuant to clause 12.1, Ubi Soft shall be permitted a Sell-Off Period of 6
(six) months starting from the Termination Date, during which Ubi Soft shall be
permitted to sell the Products and Promotional Materials already ordered by Ubi
Soft and remained unsold at the date of such expiry.
Upon expiration of the Sell-Off Period, all remaining stock of Products and
Promotional Materials included in this Agreement shall be destroyed, and a
complete stock inventory of the Products together with a certificate
establishing the entire stock destruction shall be delivered to BAM.
3.3 It is hereby expressly agreed that each party hereby agrees to negotiate
in good faith the conditions of a consignment deal with respect to the
distribution by Ubi Soft in the Territory of BAM's upcoming titles.
The Territory covered by this Agreement is :
Albania Czech Republic Greece Macedonia Russian Federation Turkey
Andorra Denmark Hungary Malta San Marino Ukraine
Austria Estonia Iceland Monaco Spain United Kingdom
Australia Finland Ireland New Zealand Slovakia Uzbekistan
Benelux France Israel Norway Slovenia Yugoslavia
Bosnia/Herzegovina Georgia Italy Poland South Africa
Bulgaria Germany Latvia Portugal Sweden
Croatia Gibraltar Lithuania Romania Switzerland
5. Copyright and Trade Mark Notices
The copyright and trade mark notices set forth in Exhibit B hereof, must appear
on all Products and any promotional material promoting the sale of the Products.
6. Prices, Minimum Order Quantities and Delivery
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Ubi Soft shall pay to BAM a per-unit purchase price of [*] for each unit of the
Products ordered by Ubi Soft.
The Products will be delivered freight and duty paid, Free On Board to UBI SOFT
warehouse (Route de la Gacilly, 56200 Carentoir, France).
6.2 Minimum Order Quantities
Ubi Soft shall order a minimum amount of [*] units of the Products during the
Payments shall be made upon delivery of the Products to Ubi Soft' warehouse to
BAM by a letter of credit the terms of which are set forth in Exhibit C hereof.
6.4 BAM shall deliver to Ubi Soft localized versions of the Products as follows:
- Fully localized English language version of the Products: Packaging, manual
and in-game text in English.
- Fully localized French language version of the Products: Packaging, manual and
in-game text in French.
- Partly localized German language version of the Products: Packaging and manual
in German, and in-game text English.
- Fully localized Italian language version of the Products: Packaging, manual
and in-game text in Italian
- Fully localized Spanish language version of the Products: Packaging, manual
and in-game text in Spanish.
6.5 BAM shall carry out any localization and translation at its own costs and
submit to Ubi Soft's prior written approval, such approval not to be
unreasonably withheld, the localized packaging, manual and in-game text of the
Products before any manufacture. Ubi Soft shall notify BAM of its approval or
disapproval within 5 (five) working days from the date of BAM's submission. If
Ubi Soft does not notify to BAM its approval or disapproval within 5 (five)
working days, Ubi Soft shall be deemed to have given its approval.
BAM shall promptly order the Products from NINTENDO after Ubi Soft's order to
enable Ubi Soft to meet the release dates set forth in Exhibit A hereof.
7. Intellectual Property Rights
7.1. Ubi Soft acknowledges that all rights, title and interest in the
intellectual property in the Products including all copyrights, patents and
trade secrets therein including, but not limited to, all documentation and
manuals relating thereto are and shall remain the sole and exclusive
property of BAM or under exclusive license to BAM. The said intellectual
property in the Products shall (a) be licensed and not sold by BAM to Ubi
Soft and (b) sub-licensed by Ubi Soft to its customers on terms to be
approved in advance by BAM. Ubi Soft shall take all actions and execute all
documents, at BAM's expense and as BAM may reasonably request, to effect
the acknowledgement of ownership contained herein and to secure, maintain
and defend for BAM's own benefit all rights therein.
7.2. All rights, title and interest in and to BAM's registered and unregistered
trade marks pertaining to the Products ("BAM's Marks") shall be the
exclusive property of BAM or its licensors. Ubi Soft: (i) shall not create
a unitary composite mark involving any BAM's Marks without the prior
written approval of BAM and (ii) shall display symbols and notices clearly
and sufficiently indicating the trade mark status and ownership of BAM's
Marks by BAM in accordance with applicable trade mark law and practice. Ubi
Soft acknowledges and agrees that its utilization of BAM's Marks will not
create in it, nor will it represent it has, any right, title or interest in
or to such of BAM's Marks other than the licence expressly granted herein.
Ubi Soft agrees not to do anything contesting or impairing the trade mark
rights of BAM. Each party agrees that all use of BAM's Marks in connection
with this Agreement shall inure to the benefit, and be on behalf, of BAM.
Ubi Soft shall apply BAM's Marks to the Products, and which shall appear no
less prominently than Ubi Soft's trade marks and/or logos. To the extent
that (not withstanding the foregoing) any rights or goodwill in any of
BAM's Marks accrue to Ubi Soft, Ubi Soft shall hold the same as bare
trustee of BAM and shall promptly and unconditionally assign the same to
BAM upon demand.
* Confidential portion omitted and filed separately with the Commission.
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8. Marketing Obligations
Ubi Soft shall at all times use reasonable commercial endeavours to market and
stimulate and increase interest in the Products within the Territory. In
particular and without limiting the generality of the foregoing, Ubi Soft shall
at its own cost and expense:
a) maintain adequate promotional and office facilities and a trained staff
within the Territory, and in particular dedicate an international marketing
manager to coordinate the activities of the local marketing managers in
charge of the promotion of the Products.
b) submit for BAM's prior written approval any marketing materials produced by
Ubi Soft, such approval not to be unreasonably withheld. BAM shall notify
Ubi Soft of its approval or disapproval within 5 (five) working days from
the date of Ubi Soft's submission. If BAM does not render its approval or
disapproval within 5 (five) working days, BAM shall be deemed to have given
c) maintain complete records of sales and distribution of the Products and
report to BAM in writing, at Ubi Soft's sole discretion, the results of
preorder collection, stock quantities and general market situation, upon
a) BAM warrants and represents that, subject to the provisions of
clause 14, BAM has full power and authority to enter into and
fully perform this Agreement;
b) BAM warrants that BAM is the author of or has been granted the
licence to distribute the Products and that the sale of the
Products shall not be in any way a violation of any copyright or
trade mark of any third party; and
c) BAM warrants that during the Term, it shall not enter into any
agreement that is in conflict with this Agreement.
a) Ubi Soft warrants and represents that subject to the provisions
of clause 14, Ubi Soft has full power and authority to enter into
and fully perform this Agreement.
b) Ubi Soft warrants that the execution of this Agreement by Ubi
Soft does not violate any copyright or trade mark rights of a
third party or any agreements, rights or obligation existing
between Ubi Soft and any third party.
10. Mutual Indemnification in Relation to Intellectual Property Rights
Each Party agrees to indemnify and hold the other harmless from and against any
and all claims, damages and liabilities whatsoever, asserted by any person or
entity, arising from any action of infringement in relation to any trade mark,
patent, copyright or action for passing off resulting directly or indirectly
from any breach by the first Party or any of its respective employees or
agents, of this Agreement or of any warranty, representation or covenant
contained in this Agreement. Such indemnification shall include the payment of
all reasonable attorney's fees and other costs incurred by the indemnified
party in defending any such claim. The Indemnified Party shall promptly inform
the indemnifying Party in writing of any such claim, demand or suit and shall
fully cooperate in the defence thereof. The Indemnified Party will not agree to
the settlement of any such claim, demand or suit prior to the final judgement
thereon without the consent of the indemnifying Party, whose consent will not
be unreasonably withheld. The indemnified party shall not by any act or
omission admit liability or otherwise prejudice or jeopardise the indemnifying
party's actual or potential defence to any claim. The said indemnity is subject
to the indemnified party's duty to mitigate all of its said costs, expenses,
damages or liabilities.
11. Confidentiality and Non-Disclosure
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Each Party undertakes to keep and treat as confidential and not disclose to any
third party any information relating to the business or trade secrets of the
other, including but not limited to information relating to the Product, nor
make use of such information for any purpose whatsoever other than for the
purposes of this Agreement. This undertaking shall survive the Termination Date
for a period of two (2) years.
12.1. This Agreement may be terminated immediately by either Party ("the first
Party") by written notice to the other Party (in which case all rights granted
to Ubi Soft shall cease and revert back to BAM) if:
a) The other Party commits a breach of any of its obligations or
undertakings hereunder and falls within 30 (thirty) business
days of having received written notice to that affect from the
first Party to remedy the same;
b) The other Party shall convene a meeting if its creditors or if a
proposal shall be made for a voluntary arrangement within
applicable laws or a proposal for any other composition scheme
or arrangement with (or assignment for the benefit of) its
creditors or if the other Party shall be unable to pay its
debts, or if a trustee, receiver, administrative receiver, or
similar officer is appointed in respect of all of any part of
the business or assets of the other or if a petition is
presented or a meeting is convened for the purpose of
considering a resolution or other steps are taken for the
winding up of the other or for the making of an administration
order (otherwise than for the purpose of an amalgamation or
reconstruction) or if the other Party takes or suffers any
similar step or procedure under the laws of any part of the
12.2 The termination of this Agreement shall be without prejudice to the rights
of the parties accrued up to the date of such termination.
12.3 There shall survive the Termination Date:
(a) clauses 1, 3.2, 7, 10, 11, 12.2, 12.3, 13, and 22; and
(b) any other provision of the Agreement whose terms or context requires
13.1 All notices required or permitted by the Agreement shall be in writing and
sent by first class letter, by facsimile or email or delivered by hand on a
Working Day (with confirmation copy sent simultaneously by first class mail)
to the receiving party at their principal office address as written above.
Either party may alter its address by giving notice as aforesaid.
13.2 Any such notice shall be deemed to be duly served:
a) if delivered personally, on the date of delivery or, if not a Working
Day, on the next Working Day;
b) If sent by first class mail, 2 (two) Working Days following the date
of posting; and
c) if sent by facsimile or email, at the time of transmission, provided
it is made on a Working Day and that a copy is sent by first class
post before 5:30 pm on the same day.
14. Force Majeure
14.1 Neither party shall be under any liability to the other or any other party
in any way whatsoever for destruction, damage or delay arising out
circumstances beyond its reasonable control, including but not limited to
war, rebellion, civil commotion, strikes, lock-outs and industrial
disputes, fire, theft, explosion, earthquake, act of God, flood, drought
or bad weather, the unavailability of deliveries, supplies, products,
disks or other media or the requisitioning or other act or order by any
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department, council or other constituted body. Notwithstanding the
foregoing, each party shall use all reasonable endeavours to continue to
perform, or resume performance of, such obligations hereunder for the
duration of such force majeure.
14.2 If either party is affected by force majeure, it shall promptly notify
the other in writing of the nature and extent of the circumstances in
question, and the length of time for which it is estimated such
circumstances shall subsist.
14.3 In the event that either party is affected by force majeure for a period
of more than ninety (90) days the other party may terminate this Agreement
upon written notice to the first party.
15. Partial Ineffectiveness (Severability)
If any term or provision of this Agreement, shall be held by any judicial,
arbitral, regulatory or other public authority of competent jurisdiction to be
illegal, invalid, void, voidable or unenforceable it will to that extent
omitted and the validity or enforceability of the remainder of this Agreement
shall not be affected.
16.1 Ubi Soft may not assign all or part of this Agreement without the prior
written consent of BAM which BAM may not unreasonably withhold.
16.2 BAM may not assign this Agreement or any part hereof without the prior
written consent of Ubi Soft which Ubi Soft may not unreasonably withhold.
16.3 Neither party may sub-contract or delegate any of its obligations under
this Agreement without the prior written consent of the other party. No
delegation or sub-contracting by either party of any of its obligations
hereunder shall relieve it of its primary obligations hereunder to the
17. Entire Agreement
This Agreement supercedes any arrangements, undertakings, understandings,
promises or agreements made or existing between the parties hereto regarding the
same purpose prior to or simultaneously with this Agreement (other than the Non
Disclosure Agreement entered into by the Parties on February 21st 2001) and
constitutes the entire understanding between the parties hereto.
The clause headings in this Agreement are inserted for ease of reference only
and shall not affect the construction or interpretation of this Agreement.
19. Relationship Between BAM and Ubi Soft
It is agreed and understood that neither Party is the agent or representative
of the other Party and has no authority or power to bind or contract in the
name of or to create any liability against the other Party in any way or for
any purpose. Nothing herein contained shall be construed to create a
partnership or joint venture between the parties.
The failure by either party to enforce at any time or for any period any one or
more of the terms or conditions of this Agreement shall not be a waiver of them
or of the right at any time subsequently to enforce all terms and conditions of
21. Alteration of Agreement
No alteration, modification or addition to this Agreement nor any waiver of any
of the terms hereof shall be valid unless made in writing and signed by the
duly authorized representatives of both parties.
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22. GOVERNING LAW
This Agreement shall be governed by the laws of England and Wales shall be
submitted in case of any dispute to the exclusive jurisdiction of the Courts of
England and Wales.
duly authorised for and on behalf of duly authorised for and on behalf of
Ubi Soft Entertainment SA BAM Entertainment Limited
/s/ YVES GUILLEMOT /s/ ANTHONY WILLIAMS
Yves Guillemot, President Anthony Williams, Director
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EXHIBIT A -- PRODUCTS
TITLE FORMAT RELEASE DATE
PowerPuff Girls: Bad Mojo Jojo Game Boy Color April 30, 2001
PowerPuff Girls: Paint the Townsville Green Game Boy Color April 30, 2001
PowerPuff Girls: Battle Him Game Boy Color July 1st, 2001
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EXHIBIT B - COPYRIGHT AND TRADEMARK NOTICES
1. (C) BAM ENTERTAINMENT LIMITED 200[ ]. ALL RIGHTS RESERVED. WARNING:
THE DOING OF AN UNAUTHORIZED ACT IN RELATION TO A COPYRIGHT WORK MAY RESULT
IN BOTH A CIVIL CLAIM FOR DAMAGES AND CRIMINAL PROSECUTION.
2.1 (R) REGISTERED TRADE MARK OF BAM ENTERTAINMENT LIMITED NUMBER [ ]
2.2 TM: TRADE MARK OF BAM ENTERTAINMENT LIMITED
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EXHIBIT C - TERMS OF LETTER OF CREDIT
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