Exhibit 10.31
INFORMATION DENOTED BY [*] HEREIN HAS BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT. THIS INFORMATION HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
LICENSE AGREEMENT
This Agreement effective the 9th day of March 2000 is by and
between Xxxxx X. Xxxxxxxx, an individual having an address of Xxx 0000,
Xxxxxxxxxxx, Xxxxxxxx 00000 (hereinafter "Licensor"); and printCafe,
Inc., a Delaware corporation, having a place of business at 00 00xx
Xxxxxx, 0xx Xxxxx, Xxxxxxxxxx, Xxxxxxxxxxxx 00000 (hereinafter"
Licensee") (collectively, the "Parties").
Recitals
WHEREAS, Licensor is the owner of the Licensed Patent; and
WHEREAS, Licensee is desirous of acquiring from Licensor a
non-exclusive license under the Licensed Patent; and
NOW, THEREFORE, for and in consideration of the foregoing
premises and of the mutual covenants set forth herein, and for other
good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the Parties, intending to be legally bound,
covenant and agree as follows:
Definition
As used herein the term "Licensed Patent" shall mean U.S.
Patent No. 4,839,829 entitled Automated Printing Control System
(hereinafter "the '829 Patent") and all divisionals, continuations,
continuations-in-part, reissues, reexaminations, and/or extensions
thereof including all foreign counterparts of the foregoing, and all
other patents and/or patent applications that have been or shall be
filed and/or issued in the United States and all foreign countries on
any of the improvements included in the '829 Patent.
Article I - Grant of License
A. Licensor hereby grants to Licensee under the terms and
conditions hereinafter stated (i) a non-exclusive right and license to
make, advertise, have made, use and import into the United States
systems (which may include hardware, software and/or combinations of
hardware and software) embodying the claimed invention of the Licensed
Patent (hereinafter "Systems") for its own use; and (ii) a
non-exclusive right
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and license to allow others ("End-Users") to make use of and/or to
otherwise access (but not to copy, download, disseminate or otherwise
obtain or appropriate) such Systems through Licensee's Internet Web
Site ("Web Site Use rights"). As used herein, the term Web Site shall
mean a computer-based resource, including the hardware and/or software
thereof, which can be reached by other computers or network-capable
appliances over one or more computer networks using a Uniform Resource
Locator (URL) and a Web Browser or similar application, or by other
such means. It is expressly understood and agreed between Licensor and
Licensee that (i) Licensee may deploy Systems [*] that may be
physically separate from Licensee's address noted above, (ii) Licensor
reserves the exclusive right to grant further licenses to other users
of Systems of the Licensed Patent, and (iii) third parties acquire no
license or other rights to make or sell Systems under this Agreement.
B. Licensee shall not have the right to grant any sub-license
or other rights to third parties, other than the Web Site Use rights
specified above, under the rights granted to it by this Agreement.
C. Licensor hereby releases, acquits and forever discharges
Licensee; its subsidiaries and affiliated companies; its successors in
interest; its sales representatives, distributors and customer
including End-Users (collectively referred to as "the Released
Entities"); and each of the Released Entities' respective owners,
agents, representatives, attorneys, employees, officers, directors, and
stockholders from and against any and all claims, demands, causes of
action or liabilities of any kind, character or nature whatsoever, for
past and/or present infringements of the Licensed Patent arising out of
the offering for sale, making, having made, using, selling or importing
of Systems. The purpose and intent of this release is to ensure that
Licensee, its various representatives, distributors and customers are
immune from suit for any past and/or present infringement, including
any claims of direct infringement, contributory infringement and/or
inducement of infringement by others, of the License Patent arising out
of the offering for sale, making, having made, using, selling or
importing of Systems and/or parts thereof.
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Article II - Compensation
A. As consideration for the license granted herein and during
the Term of this Agreement, Licensee agrees to pay Licensor [*] (the
"License Fee") to be paid as follows:
1. [*] within ten (10) days after the effective date of this
Agreement;
2. [*] by January 2, 2001; and
3. [*] by January 2, 2002.
B. The payments of the Licensee Fee shall be made even in the
event that there is a finding by a court of competent jurisdiction,
that one or more claims of the Licensed Patent is/are invalid and such
a finding shall not terminate, or give rise to any rights by Licensee
to terminate, this Agreement. Licensee agrees that it will not
challenge the validity or enforceability of the '829 Patent.
Article III - Other Licensees
A. From the effective date of this Agreement until the
expiration of the '829 Patent, Licensor agrees that it will not, except
upon consent of the Licensee in writing, license the Licensed Patent to
other e-commerce printing entities [*] on more favorable terms than
those agreed to between the parties concerning the Licensed Patent.
[*].
Article IV - Warranties and Obligations
A. Licensor warrants that, at the time of the execution of
this Agreement, it has the legal right and power to grant to Licensee
the rights granted under this Agreement.
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B. Licensor warrants that it has not granted any rights or
made any commitments relative to the granting of any rights, which are
inconsistent with the rights granted to Licensee under this Agreement.
C. Licensor makes no other representations or warranties,
express or implied, and does not assume any liability with respect to
infringement of patents or other rights of third parties due to
Licensee's operation under the license granted herein.
D. Licensor shall have no obligation to enforce the Licensed
Patent against any third party or to defend any action or suit which
challenges the validity of the Licensed Patent. Licensee shall have no
right to enforce the Licensed Patent against any third party.
E. The Parties agree to take reasonable steps to ensure the
confidentiality of the terms of this Agreement and, accordingly, any
release of information relating to this Agreement must be reviewed and
approved in advance by each of the Parties, except that copies of this
Agreement may be made available to government agencies in compliance
with regulations thereof requiring the disclosure of material
agreements. Neither party shall be liable for disclosure of the terms
of this Agreement if made in response to a valid order of a court or
authorized agency of government; provided that ten (10) days' notice
first be given to the other part so a protective order, if appropriate,
may be sought by such party. Furthermore, either party may disclose, in
confidence, the terms of this Agreement to its financial consultants,
tax planners and/or advisors, attorneys, underwriters, and/or third
parties under an obligation to the disclosing party to preserve the
secrecy of the disclosing party's confidential information, without the
consent of the other party. Anything to the contrary notwithstanding,
Licensor may disclose the terms of this Agreement under suitable
confidentiality terms in connection with further licensing of the
Licensed Patent.
F. The Parties shall cooperate in reasonable efforts to
publicize the '829 Patent through the joint dissemination of a press
release in a form substantially similar to that attached hereto within
sixty (60) days of the Effective Date. Nothing herein shall preclude
further announcements by the Parties.
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Article V - Marking
Licensee shall xxxx and prominently display the legend "U.S.
Patent 4,839,829" on all literature, users manuals and documentation
produced that promotes the system under the Licensed Patent and on all
web sites that promote or feature the system of the License Patent.
Furthermore, Licensee must prominently list the Licensed Patent as
licensed from Xxxxx X. Xxxxxxxx and must prominently list the web site
and telephone number of Xxxxx X. Xxxxxxxx as the owner of the Licensed
Patent on Licensee's Internet web site.
Article V - Term and Termination
A. Unless sooner terminated as provided below, this Agreement
shall remain in effect until the expiration of the last to expire of
the Licensed Patent (the Term).
B. If Licensee, at any time, defaults in any payments due
hereunder or breaches any material term of this Agreement, Licensor
shall have the right to give notice of such default or breach to
Licensee, in writing, and, if the default is not cured within thirty
(30) days after receipt of the notice, Licensor, at its option, may
immediately terminate this Agreement and license granted herein by
giving written notice of termination to Licensee.
Article VI - Administration
A. This Agreement shall be binding upon and shall inure to the
benefit of and be enforceable by Licensor and its successors in
interest and assigns. This Agreement and the rights granted hereunder
are personal to Licensee and Licensee may not sell, pledge, assign or
transfer this Agreement and the rights granted hereunder nor delegate
any duties or obligations hereunder, without the written consent of the
Licensor, except that a change of ownership or control of Licensee
(whether by merger, operation of law, a sale of all or substantially
all of the assets of Licensee or otherwise) shall not be deemed an
impermissible assignment of this Agreement. Licensee agrees to promptly
notify Licensor of any change of ownership or control of Licensee. For
purposes of this Article VII, a change in ownership or control with
respect to Licensee means a transaction resulting in (i) the sale,
disposition or other transfer of greater than fifty percent (50%) of
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the outstanding voting securities of Licensee by the current
stockholders of Licensee other than by way of merger, acquisition or
operation of law; (ii) a sale of all or substantially all of the assets
of Licensee; or (iii) the acquisition of the beneficial ownership (as
determined with reference to Rule l3d-3 of the General Rules and
Regulations of the Securities Exchange Act of 1934, as amended, in
effect on the date of this Agreement) of greater than fifty percent
(50%) of the outstanding voting securities of Licensee.
B. This Agreement shall be construed, interpreted and applied
in accordance with the law of Virginia, without regard to that State's
body of law regarding conflicts of law.
C. The Parties agree that if in the event any either party
shall need to pursue its rights under this Agreement and license in a
court of competent jurisdiction, the court shall award to the
prevailing party its cost involved in pursuing the dispute, including
attorneys' fees, and such award shall be paid by the other party.
D. In the event that any provision of this Agreement is
determined by a court of competent jurisdiction to be unenforceable or
invalid, the Parties hereto agree that such provision found to be
unenforceable or invalid shall be enforced to the full extent permitted
and, in any event, all other provisions of this Agreement shall remain
valid and enforceable as if the unenforceable or invalid portion had
never been made a part hereof. Furthermore, no damages for any act of
infringement of the Licensed Patent by Licensee or any of the Released
Entities shall accrue from the Effective Date.
E. All notices required to be provided for by the terms of
this Agreement shall be given in writing and shall be deemed to have
been duly given if addressed and sent by registered or certified mail,
return receipt requested, with the postage prepaid, or by overnight
courier services to the address of such party as set forth above or to
such other address as either party may, by written notice, appoint for
that purpose with a copy to counsel for each party. Counsel are as
follows:
Licensor:
Xxxxxx X. Xxxxxxx, Esquire
Akin, Gump, Strauss, Xxxxx & Xxxx, L.L.P.
One Commerce Square
0000 Xxxxxx Xxxxxx, 00xx Xxxxx
0
Xxxxxxxxxxxx, XX 00000
Telephone (000) 000-0000
Licensee:
F. With respect to the subject matter of this Agreement, the
foregoing constitutes the entire and only understanding between the
Parties, and this Agreement supersedes any prior or collateral
agreements or understandings between the Parties with respect to the
subject matter thereof. No terms, conditions or statements purporting
to modify, vary or waive the terms of this Agreement shall be effective
unless made in writing and signed by the Parties hereto. This Agreement
is the product of an arms-length negotiation between the Parties, with
each of the Parties being represented by legal counsel of their choice.
Nothing in this Agreement and the negotiations leading to its
consummation shall be construed as offering any tax-related advice to
either of the Parties by the other party.
IN WITNESS WHEREOF, the Parties hereto have caused this
Agreement to be executed by its authorized representatives.
Xxxxx X. Xxxxxxxx
Date: 3-9-2000 /s/ Xxxxx X. Xxxxxxxx
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printCafe, Inc.
Date: 3/9/00 BY: /s/ Xxxx Xxxx
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NAME: Xxxx Xxxx
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TITLE: President
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[*]
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