{"id":42909,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/technology-transfer-and-royalty-agreement-macrovision-corp-and.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"technology-transfer-and-royalty-agreement-macrovision-corp-and","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/technology-transfer-and-royalty-agreement-macrovision-corp-and.html","title":{"rendered":"Technology Transfer and Royalty Agreement &#8211; Macrovision Corp. and Command Audio Corp."},"content":{"rendered":"<pre>\n                      TECHNOLOGY TRANSFER AND ROYALTY AGREEMENT\n\n\n    This Technology Transfer and Royalty Agreement (this 'Agreement') is\nentered into by and between Macrovision Corporation, a California corporation\n('Macrovision') and Command Audio Corporation, a California corporation ('CAC')\neffective as of July 31, 1996.  \n\n    A.   Macrovision desires to waive and release certain rights of reversion\nit has pursuant to a certain Assignment of Inventions dated as of November 17,\n1995, and to transfer to CAC all rights in certain technology.\n\n    B.   In consideration for  the foregoing, CAC is willing to pay Macrovision\ncertain royalties, all as set forth more fully herein.\n\n    NOW THEREFORE, the parties agree as follows:\n\n1.  CERTAIN DEFINITIONS.\n\n    (a)  'Assignment' means that certain Assignment of Inventions dated as of\nNovember 17, 1995.\n\n    (b)  'Gross Revenues' means one hundred percent (100%) of all amounts\naccrued by CAC, its subsidiaries and its affiliates, as revenues, under\ngenerally accepted accounting principles consistently applied, from all sources\nwhatsoever worldwide, including without limitation revenues from sales of\nproperty, whether real, personal, tangible or intangible, from sales of\nservices, and from leases and licenses of property rights of every kind, but\nshall not include any amounts received for sales, use or other transaction\ntaxes, duties or shipping costs.\n\n    (c)  'Reversion Rights' means those rights of reversion provided to\nMacrovision in the Assignment.\n\n    (d)  'Royalty Term' means the forty-eight (48) consecutive calendar\nquarters, commencing with the first calendar quarter after the date of this\nAgreement in which CAC has operating revenues from commercial subscriptions,\nadvertising sales and\/or consumer product royalties or, at the election of\nMacrovision, any calendar quarter prior thereto.\n\n    (e)  'Technology' means all technology developed by Macrovision during the\nperiod beginning on the date of the Assignment and ending on the date hereof,\nwhich relates directly to the inventions assigned by Macrovision pursuant to the\nAssignment.\n\n2.  RELEASE, WAIVER AND TRANSFER.   In consideration of the payment of\nroyalties by CAC as set forth in Section 3 below, Macrovision hereby releases\nand waives the Reversion Rights, and transfers to CAC all of its rights in and\nto the Technology.\n\n\n\n3.  PAYMENT OF ROYALTIES.  In consideration of the release, waiver and transfer\nmade by Macrovision pursuant to the provision of Section 2 above, CAC hereby\nagrees to pay to Macrovision royalties equal to two percent (2%) of CAC's Gross\nRevenues for each calendar quarter in the Royalty Term.  CAC shall make the\npayments due to Macrovision hereunder with respect to Gross Revenues for each of\nthe first four (4) calendar quarters in the Royalty Term not later than seven\nhundred fifty (750) days after the end of such calendar quarter.  CAC shall make\nthe payments due to Macrovision hereunder with respect to Gross Revenues for\neach of the second four (4) calendar quarters in the Royalty Term (i.e., the\nfifth through eighth calendar quarters in the Royalty Term) not later than three\nhundred eighty-five (385) days after the end of such calendar quarter.  CAC\nshall make the payment due to Macrovision hereunder with respect to Gross\nRevenue for each calendar quarter in the Royalty Term thereafter not later than\ntwenty (20) days after the end of such calendar quarter.  Each quarterly payment\nshall be accompanied by a report stating the amount of Gross Revenue received by\nCAC during the quarter. \n\n4.  AUDITED FINANCIALS, RECORDKEEPING AND INSPECTION.  CAC hereby agrees to\nprovide to Macrovision unaudited financial statements for each calendar quarter\nin the Royalty Term within thirty (30) days following the end of such calendar\nquarter.  CAC hereby agrees to provide to Macrovision financial statements\naudited by a 'Big Six' accounting firm for each calendar year including any\ncalendar quarter in the Royalty Term within ninety (90) days following the end\nof such calendar year.  If the Gross Revenues reported on such audited financial\nstatements differs from the cumulative amounts shown on the quarterly reports\nfor such calendar year, CAC shall make an adjustment payment to Macrovision if\nthe amounts shown on the quarterly reports were too low, or Macrovision shall\nmake an adjustment payment to CAC if the amounts shown on the quarterly reports\nwere too high, within twenty (20) days following delivery of the applicable\naudited financial statement.  CAC shall keep at its usual place or places of\nbusiness complete records of its Gross Revenues for each calendar quarter, for a\nperiod of not less than three (3) years following the end of such calendar\nquarter, and to regularly make entries in such records at its earliest business\nconvenience for the purpose of showing the amounts payable to Macrovision\nhereunder.  On not less than ten (10) days written notice, Macrovision shall\nhave the right, not more than once during any twelve (12) month period at\nmutually agreed upon times during normal business hours at Macrovision's\nexpense, to examine any and all of CAC's records reflecting Gross Revenues for\nthe sole purpose of verifying the accuracy of CAC's reports of Gross Revenues\nand the performance of CAC's obligations to make payments hereunder.  In the\nevent that any such examination by Macrovision discloses an error in the\ndetermination of any amounts due hereunder that is confirmed by CAC's\nindependent auditors, CAC shall make an adjustment payment to Macrovision if the\namount previously paid was too low, or Macrovision shall make an adjustment\npayment to CAC if the amount previously paid was too high, within twenty (20)\ndays following such independent auditor's confirmation of the error.  In the\nevent that any such examination by Macrovision discloses an error in the\ndetermination of any amounts due hereunder, that is confirmed by CAC's\nindependent auditors, such that amount previously paid to Macrovision was too\nlow, Macrovision thereafter shall be entitled to examine CAC's books and records\non a quarterly basis.\n\n5.  NOVATION.  If a first underwritten registration of the offering of the\ncommon stock of Macrovision does not become effective on or before November 30,\n1996, then effective\n\n\n                                          2\n\n\n\n\nDecember 1, 1996 this Agreement shall be extinguished, and all rights and\nobligations created hereby shall terminate.\n\n6.  ATTORNEYS' FEES.  In the event either party shall commence any action or\nproceeding against the other party by reason of any breach or claimed breach in\nthe performance of any of the terms or conditions of this Agreement or to seek a\njudicial declaration of rights under this Agreement, the prevailing party in\nsuch action shall be entitled to recover reasonable attorneys' fees and costs\nfrom the non-prevailing party.\n\n7.  CONTROLLING LAW.  This Agreement is entered into and to be performed in\nCalifornia, and it shall be interpreted and enforced under, and all questions\nrelating thereto shall be determined in accordance with the laws of the State of\nCalifornia.\n\n8.  WAIVER.  No waiver of any provision of this Agreement shall be deemed or\nshall constitute a waiver of any other provision, whether or not similar, nor\nshall any waiver constitute a continuing waiver.  No waiver shall be binding\nunless executed in writing by the party making the waiver.\n\n9.  PARTIAL INVALIDITY.  The illegality, invalidity or unenforceability of any\nprovision of this Agreement under the law of any jurisdiction shall not affect\nits legality, validity or enforceability under the law of any other jurisdiction\nnor the legality, validity or enforceability of any other provision.\n\n10. ENTIRE AGREEMENT.  This Agreement is intended by the parties as a final\nexpression of their agreement and as a complete and exclusive statement of the\nterms of their agreement with respect to its subject matter.  This Agreement may\nnot be contradicted by evidence of any prior or contemporaneous agreement, oral\nor written, and this Agreement may not be explained or supplemented by evidence\nof consistent additional terms.  This Agreement supersedes, merges, and voids\nall prior representations, statements, negotiations, understandings, proposed\nagreements, and other agreements, written or oral, relating to its subject\nmatter.\n\n11. AMENDMENTS.  This Agreement may not be amended, modified or supplemented\nexcept by a writing executed by both parties.\n\n12. COUNTERPARTS.  This Agreement may be signed in counterparts, each an\noriginal but all one and the same instrument.\n\n13. SUCCESSORS AND ASSIGNS.  This Agreement shall inure to the benefit of the\nsuccessors and assigns of Company and any successors and permitted assigns of\nCAC, and shall be binding upon the successors and assigns of Company and of CAC.\n\n14. FURTHER ASSURANCES.  The parties hereto shall do and perform or cause to be\ndone and performed all such further acts and things and shall execute and\ndeliver all such other documents as any other party may reasonably request from\ntime to time in order to carry out the intent and purpose of this Agreement\ncontemplated hereby.  Neither Macrovision nor CAC shall voluntarily\n\n\n                                          3\n\n\n\n\nundertake any course of action inconsistent with satisfaction of the\nrequirements applicable to them set forth in this Agreement and each shall\npromptly do all such acts and take all such measures as may be appropriate to\nenable them to perform as early as practicable the obligations herein required\nto be performed by them.\n\n15. NOTICES.  Any notice or other communication required or permitted under\nthis Agreement shall be in writing and either personally delivered or deposited\nin the first class United States mail, prepaid, certified or registered, return\nreceipt requested, addressed as follows:\n\n         (a)  If to Macrovision:\n\n                             Macrovision Corporation\n                             1341 Orleans Drive\n                             Sunnyvale, California 94089\n                             Attn:  President\n\n              with a copy to:\n\n                             Wise &amp; Shepard LLP\n                             3030 Hansen Way, Suite 100\n                             Palo Alto, California 94304\n                             Attn: David W. Herbst, Esq.\n\n         (b)  If to CAC:\n\n                             Command Audio Corporation\n                             1341 Orleans Drive\n                             Sunnyvale, California 94089\n                             Attn:  President\n\n    Notice shall be deemed to have been given upon receipt.  Either party may\nchange its address by giving written notice of such change to the other party in\nthe manner provided in this Section.\n\n    IN WITNESS WHEREOF, the parties have executed this Agreement effective as\nof the date first above written.\n\n    COMMAND AUDIO CORPORATION               MACROVISION CORPORATION\n\n    By: \/s\/ Donald F. Bogue                 By: \/s\/ W.A. Krepick \n        ----------------------                  --------------------------------\n\n    Title: President                        Title: President\n           -------------------                     -----------------------------\n\n\n                                       4\n\n\n\n                               FIRST AMENDMENT\n                                      TO\n                  TECHNOLOGY TRANSFER AND ROYALTY  AGREEMENT\n                                       \n     This First Amendment to Technology Transfer and Royalty Agreement (this \n'Amendment') is made as of November 29, 1996 by and between Macrovision \nCorporation, a California corporation, and Command Audio Corporation, a \nCalifornia corporation.\n                                       \n                                   RECITALS\n                                       \n     A.   The parties entered into a Technology Transfer and Royalty \nAgreement dated as of  July 31, 1996 (the 'Agreement').\n                                       \n     B.   The parties now wish to amend the Agreement as set forth herein.\n\n                                       \nThe parties agree as follows:\n                                       \n     1.   DELETION OF SECTION 5 FROM THE AGREEMENT.  Section 5 of the \nAgreement is deleted in its entirety from the Agreement.\n                                       \n     2.   AGREEMENT CONTINUES IN EFFECT. The Agreement has not terminated, \nand, except as expressly set forth herein, the provisions, terms and \nconditions of the Agreement shall remain in full force and effect.\n                                      \n                                      \n     IN WITNESS WHEREOF, the parties have executed this Amendment effective \nas of the date first above written.\n                                      \n       COMMAND AUDIO CORPORATION         MACROVISION CORPORATION\n                                         \n                                         \n       By: \/s\/Donald F. Bogue            By: \/s\/John O. Ryan\n          -------------------------         --------------------------\n       Title: Chairman &amp; CEO             Title: Chairman\/CEO\n              ---------------------             ----------------------\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8106],"corporate_contracts_industries":[9466],"corporate_contracts_types":[9613,9616],"class_list":["post-42909","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-macrovision-corp","corporate_contracts_industries-media__movies","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42909","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42909"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42909"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42909"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42909"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}