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EXHIBIT 10.37
LICENSE AGREEMENT
This Agreement effective the 9th day of March 2000 is by and between
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, an individual having an address of ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "Licensor"); and printCafe, Inc., a Delaware
corporation, having a place of business at ▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (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 and license to allow others ("End-Users") to
make use of and/or to otherwise access (but
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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 customers 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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* Material has been omitted pursuant to a request for confidential treatment.
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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.
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
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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 ▇▇▇▇ 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 ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ and must
prominently list the web site and telephone number of ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ as the
owner of the Licensed Patent on Licensee's Internet web site.
Article VI - 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 VII - 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 the outstanding voting securities of Licensee by the current
stockholders of Licensee
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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 13d-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:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esquire
Akin, Gump, Strauss, ▇▇▇▇▇ & ▇▇▇▇, L.L.P.
One Commerce Square
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Telephone (▇▇▇) ▇▇▇-▇▇▇▇
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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.
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Date:____________________ ____________________________________
printCafe, Inc.
Date:____________________ BY:_________________________________
NAME:_______________________________
TITLE:______________________________
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[*]
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