AUTHORIZED OEM AGREEMENT
This Agreement is entered as of this ____ day of July, 1996 ("Effective Date")
between InfoImaging Technologies, Inc., a Delaware corporation (Company) and
SmithMicro Software, Inc., a California corporation ("OEM").
IN CONSIDERATION of the promises contained herein and other good and valuable
consideration the receipt and sufficiency of which is hereby acknowledge the
parties agree as follows:
1. DEFINITIONS
1.1 "Bundled Product(s)." The combination of OEM Product(s) or products of
OEM's permitted sublicensees and Licensed Software for purposes of marketing
under a single unit price for the combined products.
1.2 "Retail Products" A Licensed Software in commercial package to be re-sold
as a stand alone retail product.
1.3 "Confidential Product and Price List." A description of Company products
authorized for remarketing by OEM, together with related restrictions and
purchase prices, attached as Exhibit "A", and by reference made a part hereof
which is subject to change by Company from time to time without notice.
1.4 "Distributor." A person or entity that market Bundled and Retail
Product(s) to other dealers, retailers and/or End Users.
1.5 "Documentation." The written materials furnished by Company in
conjunction with the use of the Licensed Software by End Users described on
Exhibit "A".
1.6 "End-Users." Customers who acquire Bundled and Retail Product(s) pursuant
to an End-User License Agreement for their internal use and not for
redistribution, remarketing, time-sharing, or service bureau use.
1.7 "End-User License Agreement." A written license agreement in a form used
and required by Company for distribution of its software, including stand
alone and network versions attached hereto as Exhibit "B". - See Attached.
1.8 "Expiration Date." The Expiration Date shall be One year after the
Effective Date.
1.9 "Licensed Software." Company's computer program(s) (including corrections
to same) in executable machine code form only and related user's manual(s) as
described on Exhibit "A", as modified from time to time by Company.
1.10 "Marks." Any trademarks, service marks or trade names of Company
associated with the Licensed Software or Documentation as designated by
Company.
1.11 "Master Copy." A master copy of the Licensed Software on magnetic media
and a master copy of the Documentation either on magnetic media or in hard
copy as determined in the reasonable discretion of Company.
1.12 "OEM Product(s)." Computer products and/or computer hardware products
owned or licensed by OEM to be combined by OEM with Licensed Software to
create Bundled Product(s) as specified on Exhibit "A".
1.13 "Proprietary Rights." All rights in and to copyrights, rights to
register copyrights, trade secrets, inventions, patents, patent rights,
trademarks, trademark rights, confidential and proprietary information
protected under contract or otherwise under law, and other similar rights or
interests in intellectual or industrial property.
2. APPOINTMENT OF OEM
2.1 Grant of License. Subject to the limitations and restrictions provided in
this Section 2 and to the other terms and conditions hereof, Company hereby
grants, and OEM hereby accepts, the following non-transferable, non-exclusive
right and licenses:
2.1.1 To sublicense, distribute, and demonstrate the Licensed Software only as
a component of Bundled Product(s) through Distributors and OEMs, to End-Users
for use on computers, for such End-User's internal use only pursuant to the
terms of the End-User Agreement.
2.1.2 To package and resell License Software as a retail package(s) and to
provide support services for Distributors, worldwide and End-users of Licensed
Software.
2.1.3 To use Company's Marks in accordance with the requirements of Section 6
below in association with the Licensed Software and Bundled Product(s).
2.2 Territory Clause. OEM's distribution rights are non-exclusive and shall
extend to End-Users, Dealers, OEM's and Distributors, Worldwide. OEM shall
comply with all export and import laws and regulations.
2.3 Field of Use Restrictions. OEM shall distribute the Licensed Software
with OEM Product(s) as provided herein. OEM may distribute Bundled Product(s)
to Distributors which may be authorized to bundle Bundled Product(s) with
other products.
2.4 Retained Rights. Company reserves and retains all rights not expressly
granted herein, including but not limited to the rights to market the Licensed
Software either directly or through distributors and/or third parties. In
addition, except as authorized by an Addendum to this Agreement, OEM shall
have no rights to reproduce the Licensed Software.
2.5 Sublicensing.
2.5.1 OEM shall have the right to sublicense the rights granted to the OEM
under this Agreement, provided that:
(i) each Sublicensee who, pursuant to a sublicense granted by OEM,
incorporates any portion of the Licensed Software into such Sublicensee's
product or products shall execute a written sublicense agreement with OEM (the
"Sublicense Agreement") which shall prohibit such Sublicensee from
sublicensing any of the rights granted to in the Sublicense Agreement, except
to end users, and a provision stating that such Sublicense Agreement and all
rights granted therein shall terminate automatically without notice and
without further action on OEM's part upon the expiration or termination of
this Agreement for any reason.
OEM'S FAILURE TO ENSURE THAT ALL MATERIAL FOREGOING CONDITIONS HAVE BEEN MET
WITH RESPECT TO ALL SUBLICENSEES SHALL BE DEEMED A MATERIAL BREACH OF THIS
AGREEMENT.
2.5.2 OEM will use its best efforts to ensure that all Sublicensees under such
Sublicensee Agreement abide by the terms of such Sublicense Agreements and,
upon request by Company, will keep Company apprised of its activities to
enforce such provisions with particular Sublicensees. In addition, OEM agrees
that (I) Company may join OEM as a named plaintiff in any suit brought by OEM
against any Sublicensee with respect to the Licensed Software and (ii) OEM
will take such other actions, give such information, and render such aid, as
may be reasonably necessary to allow Company to bring and prosecute such
suite.
2.5.3 OEM will remain responsible for al its obligations under this Agreement
notwithstanding any Sublicense Agreement, including without limitation, the
payment to Company of al amounts due to Company from the reproduction and
distribution of the Licensed Software, regardless of whether such reproduction
and distribution is performed by OEM or its Sublicensees.
2.5.4 Company shall have the right to approve sublicensees of OEM for
unbundled products sod through another reseller, which approval will not be
unreasonably withheld.
3. COMPANY'S MARKETING AND SUPPORT RESPONSIBILITIES
3.1 Duties of Company. From Company's principal place of business, Company
shall:
3.1.1 Provide to OEM (and not to End-Users) technical assistance by telephone
during Company's normal operating hours regarding the Licensed Software.
Company shall not be obligated to accept any calls or other communications
from End-Users sublicensed by OEM. OEM shall notify all such End-Users to
only contact OEM's support services. OEM shall never communicate to any
End-User sublicensed by OEM any directions, including but not limited to
publishing Company's telephone numbers in documentation, or information that
recommend or facilitate contacting Company for support.
3.1.2 Provide to OEM two (2) days of training at the principal office of OEM.
Company agrees to provide additional one (1) day training services to OEM upon
a mutually agreeable schedule when major releases or revisions are announced
and both companies deem such training necessary.
3.2 Product Warranty: Company warrants that for a period of 90 days following
delivery to OEM, the Software will perform substantially in accordance with
Company current specifications. COMPANY HEREBY DISCLAIMS ALL OTHER
WARRANTIES, EXPRESS AND IMPLIED, INCLUDING WITH LIMITATION, THE IMPLIED
WARRANTEES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. OEM
EXPRESSLY ACKNOWLEDGES THAT NO REPRESENTATIONS OTHER THAN THOSE CONTAINED IN
THIS AGREEMENT HAVE BEEN MADE RESPECTING THE GOODS OR SERVICES TO BE PROVIDED
HEREUNDER, AND THAT OEM HAS NOT RELIED ON ANY REPRESENTATION NOT EXPRESSLY SET
OUT IN THIS AGREEMENT.
3.3 Proprietary Rights Indemnification. Company shall indemnify and hold OEM
harmless from any final award of costs and damages against OEM for any action
based on infringement or misappropriation of any U.S. copyright, trademark, or
trade secret as a result of the use or distribution of a current, unaltered
version of the Licensed Software; provided, however, that Company is promptly
notified in writing of any such suit or claim, and further provided that OEM
permits Company to defend, compromise, or settle same, and provides all
available information and reasonable assistance to enable Company to do so.
The foregoing states the entire liability of Company and sole remedy of OEM
with respect to infringement or misappropriation of any Proprietary Rights by
the Licensed Software.
3.4 Limitation of Liability. IN NO EVENT SHALL COMPANY OR ITS DEVELOPERS,
DIRECTORS, OFFICERS, EMPLOYEES OR AFFILIATES BE LIABLE TO OEM FOR ANY
INDIRECT, INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT
LIMITED TO, DAMAGES FOR LOSS OF DATA, LOSS OF USE OF COMPUTER HARDWARE
DOWNTIME, LOSS OF GOODWILL, LOSS OF BUSINESS OR COMPUTER HARDWARE
MALFUNCTION), WHETHER FORESEEABLE OR UNFORESEEABLE, ARISING OUT OF THE USE OF
OR INABILITY TO USE THE LICENSED SOFTWARE OR ACCOMPANYING WRITTEN MATERIALS,
REGARDLESS OF THE BASIS OF THE CLAIM AND EVEN COMPANY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
3.5 Notification. Company agrees to advise OEM of updates and or revisions to
the Licensed Software, if any, when Company makes sure information generally
available; provided, however, that Company shall have no obligation to make
any such updates or revisions to OEM under this agreement. Company agrees to
offer updates and or revisions to the Licensed Software to the OEM at the best
customer price.
3.6 Standard of Performance. Company shall use its best efforts to perform
each of the duties described in Section 4.1 hereof in a commercially
reasonable manner that preserves and protects OEM's business reputation and
its Proprietary Rights.
3.7 Indemnification. Company shall indemnify and hold OEM harmless from and
against any and all claims, liabilities, costs and expenses (including legal
fees) arising out of (i) any duty, obligation, or warranty regarding the
Licensed Software created by Company, (ii) the improper installation, support
or maintenance of the Product(s) by Company or its employees, (iii) any
violation by Company of any material provision of this Agreement, or (iv) any
claims of intellectual property infringement which relate to the products and
would not cover the Licensed Software standing alone.
3.8 Compliance with Applicable Laws. Company shall:
(i) At its own expense, make obtain, and maintain in force at all times during
the term of this Agreement, all filings, registrations, reports, licenses,
permits and authorizations (collectively "Authorizations") in order for
Company to perform its obligations under this Agreement. OEM shall provide
Company with such assistance as Company may reasonably request in making or
obtaining any such Authorizations. In the event that the issuance of any
Authorization is conditioned upon an amendment or modification to this
Agreement which is unacceptable to OEM, OEM shall have the right to terminate
this Agreement without further obligation whatsoever to Company.
4. OEM'S MARKETING AND SUPPORT RESPONSIBILITIES
4.1 Duties of OEM. OEM shall:
4.1.1 Promote and market the Product(s) listed in Exhibit A, at OEM's
discretion.
4.1.2 Maintain sufficient inventory levels of Product(s) to satisfy reasonably
anticipated demand.
4.1.3 Comply with the limitations on distribution provided in Section 2
hereof.
4.1.4 Provide all technical assistance to End-Users and Distributors the
nature and extent of which shall be determined by OEM in OEM's sole
discretion.
OEM shall prominently display OEM's technical support telephone number in the
Documentation and other materials delivered with the Products.
4.1.5 Notify Company promptly of any defects in the Licensed Software and
distribute Licensed Software connections as required by Company.
4.1.6 Perform the obligations concerning reproduction and packaging set forth
on the Packaging Addendum, if any, attached hereto.
4.1.7 Produce and deliver to Company all reports and other reports required
herein.
4.1.8 Print the Company logo or marks specified by Company on the front and
other sides of the retail boxes containing the Products.
4.2 Standard of Performance. OEM shall use its best efforts to perform each
of the duties described in Section 4.1 hereof in a commercially reasonable
manner that preserves and protects Company's business reputation and its
proprietary rights.
4.3 Warranty Limitation. OEM shall not make or create any duty, obligation,
or warranty on behalf of Company regarding the Licensed Software.
4.4 Indemnification. OEM shall indemnify and hold Company harmless from and
against any and all claims, liabilities, costs and expenses (including legal
fees) arising out of (i) any duty, obligation, or warranty regarding the
Licensed Software created by OEM, (ii) the improper installation, support or
maintenance of the Product(s) by OEM or its employees, (iii) any violation by
OEM of any material provision of this Agreement, or (iv) any claims of
intellectual property infringement which relate to the products and would not
cover the Licensed Software standing alone.
4.5 Compliance with Applicable Laws. OEM shall:
(i) At its own expense, make, obtain, and maintain in force at all times
during the term of this Agreement, all filings, registrations, reports,
licenses, permits and authorizations (collectively "Authorizations") in order
for OEM to perform its obligations under this Agreement. Company shall
provide OEM with such assistance as OEM may reasonably request in making or
obtaining any such Authorizations. In the event that the issuance of any
Authorization is conditioned upon an amendment or modification to this
Agreement which is unacceptable to Company, Company shall have the right to
terminate this Agreement without further obligation whatsoever to OEM.
5. PRODUCT SUPPLY, PAYMENT, AND SHIPMENT
5.1 Price and Payment.
5.1.1 Price, Resale Prices. Subject to the Initial Inventory Requirement,
Minimum Purchase Commitment, and the other terms and conditions set forth in
the Confidential Product and Price List, OEM shall pay to Company the price
indicated per unit of the Licensed Software in the Confidential Product and
Price List. Any suggested retail prices indicated by Company from
time-to-time are not binding on OEM and OEM is free to determine its own
resale prices.
5.1.2 Payment Terms. Payment terms are payment in full to Company within
thirty (30) days after the end of the quarter in which reproduction of the
Licensed Software by OEM. Company reserves the right in its reasonable
commercial judgment to place OEM on credit hold if payment is not made withing
60 days after the end of the month above, in which event Company will promptly
inform OEM, and Company may suspend OEM rights to reproduce Licensed Software.
5.1.3 Taxes and Duties. The prices stated are exclusive of income taxes,
sales or use taxes ad valorem taxes, duties, licenses, or levies imposed on
the production, storage, sale transportation or use of the Licensed Software.
OEM shall pay all such charges either as levied by taxing authorities, or in
lieu thereof, OEM shall provide an exemption certificate acceptable to the
relevant taxing authorities.
5.2 Late Payment Charge. OEM shall pay interest to Company on delinquent
accounts and any other fees not paid within thirty (30) days after becoming
due to Company as provided hereunder at the rate of ONE AND ONE-HALF PERCENT
(1-1/2 %) per month or the maximum amount allowed by law, whichever is less,
commencing thirty (30) days after the date payment was due.
6. PROPRIETARY RIGHTS
6.1 Use Restrictions. OEM acknowledges that this transaction is a license
only, and that Company or its suppliers, retain sole ownership of all
Proprietary Rights embodied in the Licensed Software. Except as permitted
herein, OEM shall not: (i) copy reproduce, market, sell, distribute, modify,
decompile, disassemble, or otherwise reverse engineer the Licensed Software or
create derivative works based on the Licensed Software or any portions thereof
or obtain possession of any source code or other technical material relating
to the Licensed Software; (ii) distribute, transfer, loan, rent or provide a
ccess to the Licensed Software, except as provided herein; (iii) remove or add
any Proprietary Rights notice associated with the Licensed Software without
the
express written permission of Company; (iv) process OEM's own internal data
with the Licensed Software or use the Licensed Software for other internal use
except as provided herein.
6.2 Trademark Rights. The trademarks and trade names under which Company
markets its Licensed Software are the exclusive property of Company. This
Agreement gives OEM no rights therein, except the restricted license to
reproduce such trademarks and trade names as required for OEM's marketing
efforts. OEM shall not: (i) register Company's trademarks or trade names in
its name or in any other name; (ii) use Company's trademarks and trade names
as part of OEM's corporate name or trade name; (iii) market the Licensed
Software under any other or different trademarks or trade names than those
specified in writing by Company. In written communications and in
advertising, OEM's use of the Marks shall at all times be in accordance with
such styles and together with such trademark notices as Company may require.
Upon the request of Company, OEM agrees to discontinue the use of (i) any
Marks used by OEM in a manner inconsistent with the guidelines set forth
above, or (ii) any trademark, service xxxx, or trade name deemed to create a
likelihood of confusion with a Xxxx.
6.3 Notice of Infringement. OEM will promptly notify Company of any and all
infringements or violations by third parties or attempted infringements or
violations of any of the Marks copyrights or other legal rights of Company
that may come to OEM's attention. OEM will provide reasonable assistance to
Company, at Company's expense, in taking such action to enforce Company's
rights against the parties infringing or violating such rights as Company may
elect in its sole discretion.
6.4 Injunctive Relief. The parties hereby agree that any breach of Section 6
would constitute irreparable harm to Company, and that Company shall be
entitled to specific performance and/or injunctive relief in addition to other
remedies at law or in equity.
6.5 Disclosure. Each party hereunder may disclose to the other party certain
Trade Secrets and Confidential Information, including, without limitation,
Company's pricing policies set out in the Confidential Product and Price List.
For purposes of this Agreement, "Trade Secrets" means information which: (a)
derives economic value, actual or potential, from not being generally known
to, and not being readily ascertainable by proper means by, other persons who
can obtain economic value from its disclosure use; and (b) is the subject of
efforts that are reasonable under the circumstances to maintain its secrecy;
"Confidential Information" means information, other than Trade Secrets, that
is of value to its owner and is treated as confidential; "Proprietary
Information" means Trade Secrets and Confidential Information; "Owner" refers
to the party disclosing Proprietary Information hereunder, whether such party
is Company or OEM; and "recipient" refers to the party receiving any
Proprietary Information hereunder, whether such party is Company or OEM.
6.6 Requirement of Confidentiality. Recipient agrees to hold the Proprietary
Information of Owner in strictest confidence and not to, directly or
indirectly, use, copy, reproduce, distribute, manufacture, duplicate, reveal,
report, publish, disclose, cause to be disclosed, or otherwise transfer the
Proprietary Information of Owner to any third party, or utilize the
Proprietary Information of Owner for any purpose whatsoever other than as
expressly contemplated by this Agreement. With regard to the Trade Secrets,
this obligation shall continue for so long as such information constitutes a
trade secret under applicable law. With regard to the Confidential
Information, this obligation shall continue for the term of this Agreement and
for a period of one (1) year thereafter. The foregoing obligations shall not
apply if and to the extent that: (a) Recipient establishes that the
information communicated was already known to Recipient, without obligations
to keep such information confidential, at the time of Recipient's receipt from
Owner, as evidenced by documents in the possession of Recipient prepared or
received prior to disclosure of such information; (b) Recipient establishes
that the information communicated was received by Recipient in good faith
from a third party lawfully in possession thereof and having no obligation to
keep such information confidential; (c) Recipient establishes that the
information communicated was publicly known at the time of Recipient's receipt
from Owner or has become publicly known other than by a breach of this
Agreement; or (d) Recipient establishes that the Proprietary Information was
not marked as Confidential when received from the Owner.
6.7 Security Measures. Without limiting the general obligations specified
above, Recipient agrees to implement those security procedures it uses to
protect its own Proprietary and confidential Information of like nature, but
in no circumstances less than reasonable care.
6.8 Ownership. OEM acknowledges and agrees that Company expressly retains
title and ownership to all worldwide intellectual property rights, including
without limitation, design, trade secrets, know-how, patent rights, trademarks
and copyrights in and to the Licensed Software.
6.9 No Reverse Engineering. OEM agrees not to reverse assemble, reverse
engineer, decomplie or otherwise attempt to derive source code from the
Licensed Software; provided, however, that if OEM's address set forth above is
located within a Member State of the European Community, then such activities
shall be permitted solely to the extent, if any, permitted by Article 6 of the
Council Directive of 14 May 1991 on the legal protection of computer programs,
and implementing legislation thereunder.
7. TERM AND TERMINATION
7.1 Term of Agreement. The initial term of this Agreement shall commence as
of the Effective Date and shall terminate at 11:59 pm., U.S. Eastern Time, on
the Expiration Date.
7.2 Renewal. This agreement may be renewed for any number of successive one
(1) year terms. Both the initial term and any renewal term are subject to
earlier termination as otherwise provided herein. Company or OEM may choose
not to renew this Agreement without cause for any reason, so long as notice
not to renew is given at least 30 days in advance of the end of the current
term.
7.3 Automatic Termination. Unless both parties promptly after discovery of
the relevant facts notifies each party to the contrary in writing, this
Agreement will terminate immediately without notice upon the institution of
insolvency, bankruptcy, or similar proceedings by or against either party, any
assignment or attempted assignment by either party for the benefit of
creditors, or any appointment or application for such appointment, of a
receiver for either party.
7.5 Mutual Termination. Either Party shall be entitled to terminate this
Agreement at any time if either party breaches any material provision of this
Agreement if such breach is not cured within thirty (30) days after
notification by either party.
7.6 Acknowledgment and Waiver. The parties acknowledge that the provisions
of this Section 7 are essential, fair, and reasonable, and that the occurrence
of any of the events described herein shall constitute good, just and
sufficient cause for the termination or nonrenewable of this Agreement.
7.7 Distribution Grace Period. Upon the expiration or termination hereof, OEM
may continue to distribute its fully-paid, current inventory of Licensed
Software (not including any Licensed Software reproduced by OEM after such
termination), but in no event longer than four (4) months after expiration or
termination. During this period, the provisions of this Agreement shall
continue in force for purposes of permitting OEM to distribute its fully-paid,
current inventory. Notwithstanding the above, OEM shall not be entitled to
distribute any Licensed Software reproduced by OEM after termination of this
Agreement. Notwithstanding anything herein or elsewhere to the contrary, OEM
shall pay all invoices for license fees and other sums due to Company
regardless of whether this Agreement has terminated or expired. Company shall
have no obligation of any kind to repurchase or grant a credit for any
Licensed Software whether or not it has been licensed to End Users.
7.8 Continuing Obligations. Sections 3.2, 3.3, 3.4, 3.5, 4.4, 5, 6, and 8
shall survive the expiration or termination hereof (including all rights for
the grace period in Section 7)).
7.9 Obligations upon Termination. Upon cancellation or termination of this
Agreement for any reason, OEM shall pay to Company immediately all License
fees, support fees, and other sums due to Company hereunder and immediately
return to Company all Company property, including, but not limited to, the
Master Copy, all Demonstration Copies and the Proprietary Information of
Company.
OEM may keep in its possession however, the materials necessary to support its
customers for a period of 90 days. Upon return of such materials, OEM shall
provide Company with a signed written statement certifying that it has
returned all Company property to Company. Upon termination of this Agreement
for any reason, all rights and licenses granted by Company hereunder to OEM
shall immediately cease, provided such termination shall not result in
termination of End User Agreements extended to End Users. Upon termination or
cancellation of this Agreement for any reason, all invoices and any other
monies due to Company bo OEM shall remain due and payable in accordance with
the terms hereof. Upon termination or cancellation of this Agreement for any
reason, OEM shall promptly notify all Sublicensees of such termination.
7.10 Limitation of Liability upon Termination. In the event of termination by
either party in accordance with any of the provisions of this Agreement,
neither party shall be liable to the other, because of such termination, for
compensation, reimbursement or damages on account of the loss of prospective
profits or anticipated sales or on account of expenditures, inventory,
investments, leases or commitments in connection with the business or goodwill
of Company or OEM. Termination shall not, however, relieve either party of
obligations incurred prior to the termination.
8. GENERAL PROVISIONS
8.1 Notices. All notices shall be given in writing and shall be effective
when either served by personal delivery, or by airmail or communicated
electronically by cable, telegram or facsimile transmission and addressed to
the parties at their respective addresses set forth beneath their signature
below, or to such other address as either party may later specify by written
notice.
8.2 Merger; Amendment. OEM has not relied on any representation by Company
that is not provided herein. This Agreement constitutes the entire
understanding of the parties with respect to the subject matter of this
Agreement and merges all prior communications, understandings, and agreements.
This Agreement may be modified only by a written agreement signed by the
parties. All Exhibits and Addendum attached hereto and referred to herein are
by this reference made a part hereof by this reference.
8.3 Independent Contractor. OEM is an independent contractor, and nothing
herein shall be construed to create a partnership, joint venture, or agency
relationship between the parties. OEM shall have no authority to enter into
agreements of any kind on behalf of Company and shall not have the power or
authority to bind or obligate Company in any manner to any third party.
8.4 Assignment. OEM shall not be entitled to assign this Agreement, by
operation of aw or otherwise, without the prior written consent of Company.
Company shall not be entitled to assign this Agreement by operation of law or
otherwise without written consent of OEM. In neither case shall written
consent be unreasonably withheld.
8.5 Severability. If any provision of this Agreement shall be held by a court
of competent jurisdiction to be contrary to law or public policy, the
remaining provisions shall remain in full force and effect.
8.6 No Implied Waivers. The failure of either party to enforce at any time
any of the provisions hereof shall not be a waiver of such provision, or any
other provision, or of the right of such party thereafter to enforce any
provision hereof.
8.7 Governing Law and Arbitration. The rights and obligations of the parties
under this Agreement shall not be governed by the 1980 U.N. Convention on
Contracts for International Sale of Goods; rather such rights and obligations
shall be governed by and construed under the laws of the State of California,
including its Uniform Commercial Code, without reference to conflict of laws
principles.
8.8 Force Majeure. Neither Company or OEM shall be liable for damages for any
delay or failure of delivery arising out of causes beyond their reasonable
control and without their fault or negligence, including, but not limited to,
acts of God, acts of civil or military authority, fires, riots, wars, or
embargoes.
8.9 Multiple Counterparts. This Agreement may be executed simultaneously in
two or more counterparts, each one of which shall be deemed an original, but
all of which shall constitute one and the same instrument.
8.10 No Fee Paid; Trademarks. Except for payment of advance fees as otherwise
provided herein, OEM has not paid and will not pay any fee to Company in
connection with entering into this Agreement or any prior agreement with
Company or its predecessors. OEM acknowledges that its rights under this
Agreement and the operations of its business are not substantially related to
the use of any trademark, trade name, logo, service xxxx, or other commercial
symbol of Company or its products.
8.11 Language. This Agreement is in the English language only, which language
shall be controlling in all respects, and all versions hereof in any other
language shall not be binding on the parties hereto. All communications and
notices to be made or given pursuant to this Agreement shall be in the
English language.
8.12 Applicability of Provisions Limiting Company's Liability. The provisions
of this Agreement under which the liability of Company is excluded or limited
shall not apply to the extent that such exclusions or limitations are declared
illegal or void under the applicable laws, unless the illegality or
invalidity is cured under the laws of the Territory by the fact that the Law
of California governs this Agreement.
8.13 U.S. Export Control. OEM understands and acknowledges that Company is
subject to regulation by agencies of the U.S. Government, including, but not
limited to, the U.S. Department of Commerce, which prohibit export or
diversion of certain products and technology to certain countries. Any and
all obligations of Company to provide the Licensed Software, documentation, or
any media in which any of the foregoing is contained, as well as any other
technical assistance shall be subject in all respects to such United States
laws and regulations as shall from time to time govern the license and
delivery of technology and products abroad by persons subject to the
jurisdiction of the United States, including the Export Administration Act of
1979, as amended, any successor legislation, and the Export Administration
Regulations issued by the Department of Commerce, Bureau of Export
Administration. OEM agrees to cooperate with Company, including, without
Limitation, providing require documentation, in order to obtain export
licenses or exemptions therefrom. OEM warrants that it will comply with the
Export Administration Regulations and other United States laws and regulations
governing exports in effect from time to time.
8.14 Foreign Corrupt Practices Act. In conformity with the United States
Foreign Corrupt Practices Act and with Company's established corporate
policies regarding foreign business practices, OEM and its employees and
agents shall not directly or indirectly make an offer, payment, promise to
pay, or authorize payment, or offer a give, promise to give, or authorize the
giving of anything of value for the purpose of influencing an act or decision
of an official of any government within the United States Government
(including a decision not to act) or inducing a decision not to act) or
inducing such a person to use his influence to affect any such governmental
act or decision in order to assist Company in obtaining, retaining or
directing any such business.
8.15 Government Approvals and Enforceability. OEM hereby represents and
warrants that no consent, approval or authorization of or designation,
declaration or filing with any governmental authority in the Territory is
required in connection with the valid execution, delivery and performance of
this Agreement. OEM represents and warrants that the provisions of this
Agreement and the rights and obligations of the parties hereunder, are
enforceable under the laws of the countries within the Territory.
8.16 Exhibits and Addendum. The Exhibits and Addendum attached hereto are by
this reference made a part hereof, including the Packaging Addendum.
IN WITNESS WHEREOF, the parties hereto have signed this Agreement as of the
date first above written.
BY: "Xxxxxxx X. Xxxxxx" BY: "Xxxxxxx X. Xxxxx"
------------------- --------------------
Xxxxxxx X. Xxxxxx Xxxxxxx X. Xxxxx, Xx.
President President/CEO
08/06/1996 08/06/1996
0000 X. Xxxxxxxx Xxxx #X
Xxxx Xxxx XX 00000
(000) 000-0000
(000) 000-0000
EXHIBIT "A"
INFOIMAGING TECHNOLOGIES, INC.
PRODUCT DESCRIPTION
Bundled Product(s). The following Licensed Software Product(s) are authorized
to be Bundled by OEM with the corresponding OEM Product(s) or sold as Retail
Product(s) pursuant to the terms of the Agreement.
Authorized Licensed Software Product for Retail Only
3D FaxFile Standard
CONFIDENTIAL PRICE LIST
1. Royalty price of $(*) per unit for 3D FaxFile Standard
Authorized Licensed Software Produce for OEM Bundled Products Only
3D FaxFile Basic
CONFIDENTIAL PRICE LIST
1. Royalty price of $(*) per unit for 3D FaxFile Basic, 4K send capability
2. Royalty price of $(*) per unit for 3D FaxFile Basic, 8K send capability
3. Royalty price of $(*) per unit for 3D FaxFile Basic, 16K send capability
4. Royalty price of $(*) per unit for 3D FaxFile Basic, 32K send capability
5. A special royalty price of $(*) per unit for 3D FaxFile Basic, 32K sent
capability to be sold only to OEM's customer Brother International.
COMPANY PACKAGING ADDENDUM ROYALTY
Master Disks. Notwithstanding anything to the contrary in the Authorized OEM
Agreement ("Agreement") to which this Addendum is attached, Company is not
obligated to deliver any copies of the Licensed Software or Packaging except
for one copy of the Master Copy(s) and the End User Agreement for 3D FaxFile
Basic. 3D FaxFile Standard Product will be supplied on individual disks.
Additional License Rights. In addition to the licenses rights granted in
Section 2 of the Agreement, during the term of the Agreement Company grants to
OEM the non-transferable, non-exclusive right and license:
To reproduce copies of the Licensed Software from the Master Copy for the
purpose of creating Bundled and Retail Product(s) and for distribution to (i)
End-Users, OEM customers and (ii) Distributors solely for sublicense and
distribution to End Users in accordance with the Agreement.
To reproduce copies of the End User Agreement that is specified and required
by Company to accompany each copy of the Licensed Software distributed by OEM.
*** Confidential portion omitted pursuant to a request for confidential
treatment and filed separately with the Commission.
Packaging. OEM hereby agrees that all Licensed Software distributed hereunder
pursuant to Orders described herein including the Licensed Software reproduced
by OEM pursuant to the provisions of this Addendum shall be distributed in the
packaging approved by Company ("Packaging") and shall be accompanied by an
End-User Agreement. OEM shall not alter, obliterate, modify, change or
replace the Packaging or the End-User Agreement without Company's consent.
OEM agrees to use the Marks in association with the Packaging and the Licensed
Software in compliance with the requirements of this Agreement.
Reports. On or before thirty (30) days after the end of each sales quarter
(May-July; August-October; November-January; and February-April) during the
term of this Agreement and at such other times as Company may request, OEM
shall deliver to Company written fee reports certified as accurate by an
authorized representative of OEM disclosing the number of copies of the
Licensed Software distributed, including any reproduced copies OEM is
authorized to distribute, and the names and addresses of the End Users and
Distributors who licensed the Licensed Software during the previous month.
OEM shall keep complete and accurate records to allow Company to examine and
audit OEM's accounts with respect to the licensing of the Licensed Software
and payment of fees.
Audit. Upon reasonable notice from Company, OEM agrees to permit Company, no
more than once for each annual period, access, during OEM's normal business
hours, to OEM's records which are relevant to this Agreement, in order for
Company to verify and audit OEM's compliance with this Agreement. Such
verification and audit shall be at Company's expense and may be performed, at
Company's option, by an independent third party selected by Company which
party shall be bound by reasonable obligations of confidentiality. OEM agrees
to permit Company or, at its option, a certified public accountant paid by
Company, to inspect such records at reasonable times during normal business
hours. In the event such audit discloses that the fees or other sums
previously paid or reported as due to Company have been underpaid or
under-reported as of the date of the audit, then OEM shall immediately pay to
Company
the difference. If the audit discloses that the fees due and payable to
Company pursuant to this Agreement have been underpaid or under-reported by an
amount that exceeds five (5%) percent of the fees paid by OEM during the
period covered by the audit, then OEM shall pay all expenses incurred by
Company in performing the audit.
BY: "Xxxxxxx X. Xxxxxx" BY: "Xxxxxxx X. Xxxxx"
------------------- --------------------
Xxxxxxx X. Xxxxxx Xxxxxxx X. Xxxxx, Xx.
President President/CEO
08/06/1996 08/06/1996
