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EXHIBIT 10.14
APRIL 1, 1999
AGREEMENT
This AGREEMENT is entered into as of the 1st day of April, 1999, by and
between HITACHI KOKI IMAGING SOLUTIONS, INC., a corporation having its
principal place of business at 0000 Xxxx Xxxxxx Xxxxx 000, Xxxx Xxxxxx, XX 00000
(hereinafter "HKIS"), and T/R SYSTEMS, INC., a Georgia, U.S.A. corporation
having its principal place of business at 0000 Xxxxxxxx Xxxxx, Xxxxxxxx, XX
00000 (hereinafter "T/R").
RECITALS:
a. T/R has designed and developed, and currently assembles, distributes
and sells, a proprietary commercial printing system know as the
MICROPRESS(R) PressDirector(TM) ClusterServer(TM), which currently
includes MICROPRESS(R) Release 4.52, the details of which are set
forth in Schedule 1, which is incorporated by this reference
("System").
b. T/R has proprietary skills, know-how, technology, inclusive of trade
secrets and other know-how, and patent rights applicable to the
product architecture, development, design, assembly, manufacturing,
connectivity, production and distribution of the MICROPRESS(R)
commercial printing system.
c. HKIS desires to: (i) distribute Systems incorporating HKIS network
printer/copier devices identified in Schedule 1 ("Printers"), (ii)
purchase certain equipment assembled by T/R for incorporation into
such Systems, and (iii) have the worldwide right on behalf of HKIS
and its parent company, Hitachi Koki Company, Limited, to sell or
otherwise distribute such connected Printers and Systems (whether
connected to a Printer or distributed separately) under the
trademarks and logos of HKIS or its parent company, either directly
or through their respective OEMs and distributors.
d. HKIS desires for T/R to develop (where such development has not
already been completed) connectivity software and hardware as
required for the Printers to be connected to and be controlled by the
respective System.
e. To accommodate the foregoing matters, and to effect certain matters
and undertakings between T/R and HKIS, such parties have entered into
this Agreement.
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NOW, THEREFORE, the parties hereby agree as follows:
1. Definitions.
1.1 "Confidential Information" means information
disclosed by either party to the other during the term of this Agreement
including, but not limited to, technical or nontechnical data, Know-how, trade
secrets, skills and processes, designs, drawings, documentation, software
(regardless of form or media), machinery, prototypes, methods, concepts,
facilities, research, development and business activities, whether obtained or
disclosed orally or in writing or through observation, but excluding any such
information which (i) is publicly available through no fault of the receiving
party; (ii) is in the receiving party's possession free of any obligation of
confidence to the disclosing party at the time it was communicated to the
receiving party; (iii) is received independently from a third party who is free
to disclose such information; or (iv) is demonstrated to have been subsequently
and independently developed by the receiving party without the use of
Confidential Information of the disclosing party. Notwithstanding the
foregoing, in order to be considered Confidential Information, tangible
information must be marked with the words "confidential" or "secret" or with
words of similar import. Non-tangible information must be reduced to a writing
by the disclosing party, which writing must describe the information as
confidential or secret and must be delivered to the recipient party within
thirty (30) days of the date of disclosure. Notwithstanding the foregoing,
information supplied by T/R relating to the Systems and not so marked or
reduced to writing shall be presumed to be Confidential.
1.2 "Customer" means any Person that acquires Systems
from HKIS or its parent company for its own use or for sale, lease or other
disposition (e.g., an OEM or distributor).
1.3 "Deliverables" has the meaning set forth in Section
4 hereof.
1.4 "End User" means a Person that acquires a System
directly from HKIS or its parent company or indirectly from a Customer of HKIS
or its parent company, and uses the System for any purpose other than resale or
further distribution.
1.5 "Improvement" means any and all derivatives,
improvements or betterments of the T/R Intellectual Property Rights made by T/R
or any other Person, including all intellectual property rights pertaining
thereto, including patent rights, copyright rights, trade secrets, Know-how or
similar rights recognized under applicable law.
1.6 "Know-how" means knowledge, information, inventions
(other than those embodied in the Patent Rights), trade secrets and systems
used in the design, development, manufacture, assembly, servicing or testing of
the MICROPRESS(R) commercial printing system.
1.7 "T/R Intellectual Property Rights" means the
following rights, knowledge,
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know-how and similar intellectual property owned by T/R and used in the design,
development, manufacture, assembly, servicing or testing of the System or any
portion thereof:
(a) Patent Rights;
(b) Copyrights and applications therefor
(including the right to make derivative
works);
(c) Trade secrets;
(d) Know-how and any other proprietary
information; and
(e) All Improvements.
1.8 "HKIS Orders" has the meaning set forth in Section
7 hereof.
1.9 "Patent Rights" means all T/R domestic and foreign
patents (including applications therefor) and all divisions, continuations,
continuations-in-part, re-examinations and reissues or extensions thereof,
whether now or hereafter issued, containing a claim or claims in whole or in
part relating directly or indirectly to the design, development, use or
manufacture of the System or any portion thereof and the processes and methods
associated therewith, and all Improvements thereto that become the subject of a
patent application.
1.10 "Person" means any individual, partnership, joint
venture, corporation, trust, unincorporated organization, government,
governmental agency or any other entity.
1.11 "Subsidiary" means a corporation or other entity of
which more than 50% of the shares of the outstanding stock (representing the
right to vote for the election of directors or other managing authority) are
now or hereafter owned or controlled, directly or indirectly, by a party
hereto, but such corporation or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists.
1.12 "System" means commercial printing systems to be
assembled for HKIS pursuant to the License and incorporating the Deliverables,
all as more particularly described on Schedule 2 hereto, or as used herein as
context may require, any portion thereof.
1.13 "Technical Assistance" means the technical
assistance to be provided by T/R to HKIS as provided in Section 3 hereof.
1.14 "Territory" shall mean the entire world.
2. System Distribution Rights.
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2.1 Rights and Appointment. Subject to the terms and
conditions hereof, T/R hereby grants to HKIS the right to market, sell, lease,
promote, advertise and otherwise distribute documentation (which may be
modified, reproduced and distributed) and Systems which Systems include
deliverables purchased from T/R hereunder, under HKIS', its parent company's or
their OEM's names. Such products may be sold to Customers who are not End Users
for resale to End Users. This right and appointment is non-exclusive, except to
the extent the Systems include Printers identified in Schedule 2.1, in which
case HKIS' appointment as distributor hereunder of such Systems is exclusive. It
is understood by both parties that Schedule 2.1 will be updated periodically by
mutual agreement.
2.2 Labeling; Use of MicroPress(R) Trademark. HKIS shall
apply to the Systems manufactured for sale by or for HKIS to Customers a
statement reasonably located and sized, identifying the fact that the Systems
were developed using and include T/R Intellectual Property Rights, proprietary
to T/R and, as applicable, are subject to patents or patents pending, and which
shall identify by number any issued patents which are part of the Patent Rights.
Such statement, and its proposed location and size, shall be submitted to T/R by
HKIS in advance of its use for pre-approval by T/R, which approval shall not be
unreasonably withheld. Furthermore, during the term hereof, HKIS may use the
trademark MicroPress(R), and T/R hereby grants a non-exclusive license to HKIS
for such purpose; however, HKIS may not continue to affix the trademark
MicroPress(R) to HKIS products after the effective date of termination or
cancellation of this Agreement. All usage of such trademark, including any
display thereof and the artwork comprising the same, and location and size,
thereof must be approved in advance by T/R, which approval shall not be
unreasonably withheld. This trademark may only be used on products assembled
with or incorporating the Deliverables purchased and licensed hereunder and for
promotion and advertising therefor in the Territory.
3. System Development and Technical Assistance. To effectuate
the purposes of this Agreement, upon the reasonable request by HKIS and subject
to the terms and conditions of the License, T/R, employing the T/R Intellectual
Property Rights, shall consult with HKIS during T/R's development and product
launch of Systems with respect to: (i) the design and operation of the Systems,
inclusive of the selection and design of print engine therefor; (ii) HKIS'
connectivity for the Systems; (iii) HKIS' initiation of distribution processes
for the Systems; (iv) HKIS' marketing plans and operations; (v) HKIS' current
and future device connectivity to the System; and (vi) similar matters related
thereto. System specifications are attached to Schedule 2 of this Agreement and
are incorporated by this reference. Each of T/R and HKIS will appoint and assign
a lead technical liaison to interact and support the technical interface between
T/R and HKIS. T/R and HKIS will meet quarterly to review the business activity
as to sales and marketing plans, service plans and future product plans. T/R
agrees to conduct one free "train-the-trainers" course for HKIS prior to the
product launch with respect to each System (i.e., one training course for each
type of Printer for which T/R designs a System), and additional training courses
as requested by HKIS for a price to be mutually agreed-upon by the parties. T/R
shall provide HKIS with post-launch technical support and maintenance in
accordance with section 9 of this Agreement and the post-release technical
support procedures attached hereto as Schedule 3, which are incorporated by
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this reference. T/R shall have no obligation to provide support directly to
HKIS' Customers. Development shall be conducted according to the milestone
project schedule attached hereto as Schedule 5.
4. Deliverables.
4.1 Defined. For each System purchased hereunder, T/R
shall deliver, in accordance with purchase orders issued by HKIS ("HKIS
Orders"), the servers, software, documentation in electronic form and related
technology and communications hardware more fully described in Schedule 2 (the
"Deliverables").
4.2 Delivery. The Deliverables shall include, as
appropriate, certain documentation related thereto prepared by or for T/R. The
Deliverables shall be delivered F.O.B. T/R's Norcross, Georgia, U.S.A.
facility. All risk of loss shall be conveyed and passed to HKIS upon delivery
of the Deliverables at T/R's facility to HKIS or its carrier or other agent. To
the extent any of the Deliverables includes T/R Intellectual Property Rights,
including without limitation, software, codes, Know-how, Patent Rights,
Licensed Intellectual Property Rights and other such rights, no title will pass
to HKIS (although End Users will be afforded a software license as provided in
Section 10.4 hereof). Title will pass to HKIS upon delivery as to server, other
hardware, media and other items included within the Deliverables which do not
constitute nor comprise T/R Intellectual Property Rights.
4.3 Third-Party Sourcing of PC Servers. Nothing herein
shall be construed to require HKIS to purchase PC Servers from T/R alone; HKIS
shall have the right to purchase from any third parties of its choosing PC
Servers for incorporation into Systems and Printers. T/R agrees to provide HKIS
with technical support in the selection of alternate PC Servers for use with
Systems pursuant to Section 3 of this Agreement at mutually agreed to
certification fees per server platform.
5. Fees and Prices
5.1 Technology Access Fee. In exchange for T/R's
appointment of HKIS pursuant to Section 2.1 hereof, and in part for T/R's
agreement to provide the Technical Assistance pursuant to Section 3 hereof, HKIS
shall pay T/R the one-time non-refundable technology access fee set forth in
Schedule 1 for each print device listed therein or later added hereto by
agreement of the parties. Such technology access fees shall be payable with
respect to each System in two equal installments, one-half due and payable
thirty (30) days from execution and delivery of this Agreement, with the
remaining one-half due and payable net payable thirty (30) days from HKIS'
acceptance of the production version of the System. Payment of technology
access fees for Systems designed for Printers added to Schedule 1 after the
effective date of the Agreement shall be payable in two equal installments,
one-half due and payable net thirty (30) days from the addition of the Printer
to Schedule 1, with the remaining one-half due and payable net thirty (30) days
from HKIS' acceptance of the production version of the System. Technology
access fees are
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for United States English version of the software user interface and
documentation. HKIS and its parent company shall have the right to acquire
access to additional language versions for the translation fees identified in
Schedule 1. HKIS and its parent company shall also have the right to make such
translations itself, or to have such translations made by a third party of
HKIS' selection. Acceptance criteria for the production version of the System
will be defined and mutually agreed to by the parties within thirty (30) days
of execution of this Agreement.
5.2 Equipment Purchase Price. Equipment purchase prices
for Deliverables shall be as provided on Schedule 2 (the "Price List") for the
term of this Agreement. T/R shall be entitled to add new options, servers,
software and equipment to the Price List after reviewing pricing with HKIS, and
HKIS shall be entitled to purchase such new Deliverables under the terms and
conditions of this Agreement. T/R may from time to time revise the Price List.
Any change in the Price List will be effective as to HKIS Orders received after
* (*) days of the issuance of such revision. T/R will give due consideration to
the input of HKIS when updating Price List changes to the extent that changes
will be mutually agreed to in advance.
5.3 Consulting, Training Compensation. As compensation
for post-launch consulting and training required to be provided in addition to
Technical Assistance pursuant to Section 3 hereof, HKIS shall pay T/R
consulting and/or training fees, set forth in Schedule 3. In addition, HKIS
shall reimburse T/R's travel and living expenses incurred in connection with
such consulting and training as reasonably incurred. The fees shall be subject
to adjustment only by the mutual written agreement of the parties.
6. Payments. Payments for technology access fees pursuant to
Section 5.1, for license fees and equipment purchase price amounts in respect
of the Deliverables pursuant to Section 5.2, for consulting and training
pursuant to Section 5.3 and for maintenance pursuant to Section 9 shall be due
and payable by HKIS net * (*) days from the date of invoice so long as the
date of invoice is no earlier than the date of delivery of the Deliverables or
service. A late payment charge of one and one half percent (1.5%) per month
shall be charged upon unpaid balances due for more than thirty (30) days,
provided that T/R has notified HKIS in writing of such delinquency. In the
event such a delinquency in payment by HKIS extends for more than thirty (30)
days from T/R's written notice thereof, T/R reserves the right to request
advance payment of HKIS Orders until the delinquency is remedied by HKIS. All
pricing and fees under this Agreement are exclusive of taxes. Except for taxes
based on T/R's net income, HKIS shall pay any national, federal, state, county,
local or other governmental taxes, fees or duties now or hereafter imposed on
the licensing, export, use or possession of the Deliverables or any other
transaction contemplated by this Agreement, as well as any penalties or
interest thereon. Notwithstanding anything in this Agreement to the contrary,
if, under any applicable law, HKIS is required to withhold tax or any other
amount from any payment to T/R, the amount due to T/R shall be increased to the
amount T/R would have received if no withholding had been required.
7. HKIS Orders.
* Confidential information has been omitted and filed separately with the
Commission.
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7.1 Monthly Forecasts and Periodic Purchase Orders.
Each month, HKIS shall submit to T/R a six-month, non-binding, rolling forecast
of its expected requirements. The first forecast will be submitted sixty (60)
days in advance of the first month's requirements. HKIS shall also issue
periodic written purchase orders ("HKIS Orders") to T/R for Deliverables. All
HKIS Orders shall specify: (a) the quantities and descriptions of the
Deliverables ordered; and (b) requested delivery dates and shipping
instructions.
7.2 Cancellation and Rescheduling. Monthly forecasts
shall specify forecasted order quantities by month with the first (most
current) month's purchase quantity being firm and noncancellable. Months "two"
and "three" of the monthly forecast may adjusted plus or minus *%;
additionally, HKIS shall have the right to reschedule for delivery up to *% of
the forecast for months two and three. Quantities so rescheduled may not be
further rescheduled, adjusted or cancelled by HKIS.
7.3 Order Acknowledgment and Acceptance/Rejection. The
terms and conditions of this Agreement shall apply to all HKIS Orders submitted
to T/R and supersede any different or additional terms contained on HKIS'
Orders or T/R's order acknowledgments or other similar documents. All orders
are subject to acceptance, which acceptance shall not be unreasonably withheld
by T/R, by issuance of an order acknowledgement or similar document.
Notwithstanding the foregoing, HKIS Orders conforming to the requirements of
this Agreement, which are not rejected by T/R within five (5) days of receipt,
shall be automatically be deemed accepted by T/R. Lead times for Deliverables
are specified in Schedule 2, and T/R shall not be required to deliver
Deliverables earlier than the specified lead time from the date of receiving
HKIS' Order. T/R shall use reasonable efforts to provide for timely delivery of
accepted HKIS Orders. Notwithstanding the foregoing, T/R shall not be
responsible for any expenses arising from a failure to deliver a quantity
specified in a HKIS Order which exceeds the previously-forecasted quantity by
more than * percent (*%), and in no event shall T/R be liable to
HKIS or any third party for consequential damages such as loss of sales. HKIS
shall be entitled to cancel or reschedule in whole or in part any Order which
T/R is late in delivering by providing written notice thereof to T/R prior to
actual delivery HKIS shall have the right to inspect Deliverables after
delivery by T/R and to reject nonconforming or defective Deliverables within
thirty (30) days of the date of delivery by requesting a Return Material
Authorization number from T/R and returning the defective or nonconforming
Deliverables to T/R, freight prepaid, F.O.B. HKIS' shipping dock. T/R shall, at
its sole option and expense, either repair or replace the defective
nonconforming Deliverables and return them to HKIS, freight prepaid, F.O.B.
T/R's shipping dock, Norcross, Georgia.
8. Purchase Commitments. HKIS has provided T/R with its volume
commitment for purchases of Systems for the first * (*) years of this
Agreement following first-customer-shipment availability of a HKIS-exclusive
System (set forth in Schedule 2), which committed requirements are set forth in
Schedule 4. HKIS provides this commitment in reliance upon the representations
of T/R that: (i) T/R is committed to maintaining a competitive position in
cluster printing solutions market, (ii) T/R is committed to providing
competitive functionality in its
* Confidential information has been omitted and filed separately with the
Commission.
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Systems, and (iii) T/R is committed to providing the marketing support that
HKIS reasonably requires to achieve its volume commitment (reasonably
consistent with the level of support T/R provides to its other OEM partners).
9. Maintenance and Post-Release Technical Support. T/R will
provide HKIS and its parent company (not HKIS Customers or End Users) with
software updates, bug fixes, software releases and post-release technical
support in accordance with the procedures set forth in Schedule 3 for an annual
maintenance charge to be determined by good faith negotiation and mutual
agreement of the parties within thirty (30) days of the execution and delivery
of this agreement, it being the intention of the parties that such fees and
charges shall be similar to those offered by T/R to other OEM's but tailored to
coordinate with maintenance to be offered by HKIS to its Customers.
10. Ownership and Proprietary Rights.
10.1 Ownership. T/R represents and warrants that it owns
all rights, title and interest in and to the T/R Intellectual Property Rights
and the Deliverables as are necessary to sell the Deliverables and to grant the
right and licenses granted by it under and pursuant to this Agreement. T/R
further represents and warrants that as of the Effective Date of this
Agreement, it does not know or have reason to believe that the Deliverables or
Systems, or components thereof including software and related documentation to
be provided by T/R hereunder infringe any U.S. or foreign patent, copyright,
intellectual property or other proprietary right of any party. T/R further
represents and warrants that it is not a party to any legal proceeding (and
knows of no claim against it) in which such infringement is alleged.
10.2 Proprietary Rights and Protection of Confidential
Information. The parties acknowledge that the Confidential Information provided
by the parties pursuant to this Agreement constitutes valuable trade secrets
and/or confidential information of the disclosing party, ownership of which is
not transferred by this Agreement. Ownership of all applicable copyrights,
trade secrets, patents and other intellectual property rights in the T/R
Intellectual Property Rights and the Deliverables shall remain vested in T/R.
Title to all T/R Intellectual Property Rights and any derivative works thereof
shall remain with T/R. No Confidential Information shall be disclosed to any
third party whatsoever without the prior express written approval of the
disclosing party, and all such Confidential Information shall be protected by
the recipient party with at least the same diligence, care and precaution that
the recipient party uses to protect its own confidential and trade secret
information, but in no event less than reasonable care. Except as otherwise
provided in a further written agreement between the parties, all tangible
Confidential Information (including without limitation all equipment and other
materials containing any Confidential Information) shall, immediately upon the
disclosing party's request, be returned to the disclosing party, including any
and all copies, translations, interpretations and adaptions thereof. Neither
party shall use or disclose the Confidential Information except as required to
fulfill the purposes of this Agreement. HKIS shall not remove T/R's copyright
notices, restricted rights legends or any other notices from the Deliverables
and such notices shall appear
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on all tapes, diskettes and other tangible media distributed by HKIS containing
the T/R Intellectual Property Rights or constituting the Deliverables.
10.3 Unauthorized Use or Copying. Except as expressly
permitted hereunder, HKIS shall not copy, modify or reproduce the Deliverables
in any way, nor shall it permit third parties to do so. HKIS agrees to provide
reasonably-requested cooperation to T/R, at T/R's expense as to out-of-pocket
expenses reasonably incurred by HKIS, in any action relating to enforcement of
T/R's proprietary rights.
10.4 End User License. Any software included in or with
the Systems is subject to license and not sale. HKIS shall distribute the
software pursuant to HKIS' standard software license agreement, the minimum
terms of which are attached hereto as Schedule 6. In jurisdictions in which an
enforceable copyright covering the software exists, such license agreement may
be enclosed in the packaging or start-up screen of the System or software (i.e.
a "shrink wrap" or "click-wrap" license). In all other jurisdictions, unless
otherwise agreed, HKIS will ensure that each End User signs a copy of such
Agreement prior to receipt of the Deliverables. T/R, or such other party from
which T/R has acquired the right to grant such license, shall retain full title
to the Software and all copies thereof. Neither HKIS nor its Customers shall
have access to or rights in the software source code. Except as otherwise
provided herein, neither HKIS nor its Customers or End Users shall have the
right to copy, modify, reverse engineer, or disassemble any software or part
thereof. HKIS shall make no representations or warranties on behalf of T/R.
HKIS shall bind T/R to no representations HKIS makes to its Customers or End
Users or other third parties regarding the Deliverables except as set forth in
the applicable documentation therefor provided by T/R. HKIS will be responsible
for all conversions, translations and localizations necessary for use of the
Deliverables by End Users in the various countries included within the
Territory. T/R will provide translation services on a per language basis at
fees specified in Schedule 1. Translated versions will be delivered after the
American English version in accordance with a jointly agreed schedule.
10.5 Third Party Software. To the extent the software
included within the Deliverables constitutes software or other technology
rights owned by a third party and licensed to T/R, such software is referenced
by the list contained in Schedule 7.
10.6 Security. The software included within the
Deliverables will be protected by a security mechanism known as a "dongle."
HKIS may copy the software for distribution with T/R supplying the "dongle" for
the software for each System. HKIS shall not disable or provide to have
disabled, the security mechanisms protecting the software.
10.7 Indemnification. Each party hereto (an
"Indemnitor") shall, at its expense, indemnify, defend and hold the other party
and its parent company, subsidiary company, and operating divisions
(collectively, the "Indemnitees") harmless in connection with any claim, or in
any suit or proceeding brought against or threatened against the Indemnitees or
for injuries, losses, damages and expenses directly incurred by them based or
arising from the failure of the
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Indemnitor to comply with any provisions of this Agreement or breach any
representation of warranties provided for herein. Indemnitor shall be given
sole control of the defense and settlement of such suit or proceeding.
Indemnitees shall have the right, at their sole expense, to participate in the
defense and settlement of any infringement suit or settlement thereof, and will
provide reasonable assistance to Indemnitor at Indemnitor's expense as to
out-of-pocket expenses reasonably incurred by Indemnitees as requested by
Indemnitor, in connection with such claim, suit or proceeding. Indemnitor shall
pay all costs (including reasonable attorney's fees) incurred by, all
settlements agreed to, and all damages awarded against Indemnitees in respect
of any such third party claim. If the sale or use of a Deliverable is enjoined
T/R shall, at its sole expense, promptly (1) procure for HKIS the right to
continue using the Deliverable (2) modify the Deliverable to avoid the claim of
infringement so long as it performs in accordance with the specifications or
(3) replace the Deliverable with a non-infringing compatible and functionally
equivalent product.
11. Warranty.
11.1 Limited Warranty. T/R represents and warrants: (i)
that all Deliverables provided to HKIS pursuant to this Agreement are in all
respects "Year 2000 Compliant" in accordance with the Year 2000 Certification
and Warranty contained in Schedule 8 of this Agreement; (ii) that for the lesser
of (a) * (*) months after delivery of the Deliverables to HKIS' End User, or (b)
* (*) months after delivery of the Deliverables by T/R to HKIS, the hardware
components of each Deliverable shall conform to the descriptions in Schedule 2,
perform substantially in accordance with the specifications, and be free of
defects in material and workmanship; and (iii) that with respect to software
provided under this Agreement, for * (*) days after delivery, the software and
media shall conform to the descriptions in Schedule 2, perform substantially in
accordance with the specifications, and be free of defects in material and
workmanship. T/R does not guarantee that operation of the software will be
uninterrupted or error free. T/R shall, without charge to HKIS, within fifteen
(15) days after receipt of returned Deliverables from HKIS, repair or replace
and return, freight prepaid by T/R, any Product which is determined to be
defective within this warranty period, provided:
(a) HKIS notifies T/R of the alleged defect prior to the
expiration of the respective warranty period;
(b) HKIS obtains a Return Material Authorization (RMA)
number from T/R before returning the defective
Deliverables to T/R, freight prepaid by HKIS; and
(c) The Product has not been damaged, subjected to
misuse, abnormal operation, improperly altered or
repaired or maintained in a manner which is
reasonably determined to have adversely affected
performance or reliability.
11.2 Safety Hazard. "Safety Hazard" shall mean any
mechanical, electrical, chemical or other feature of any Deliverables which is
demonstrated in a clear and convincing
* Confidential information has been omitted and filed separately with the
Commission.
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manner to create an immediate and substantial risk of injury to persons and/or
material damage to property, including to the Deliverables or to the
environment. In the event the parties determine that a Safety Hazard exists in
the Product, T/R shall: (a) expeditiously develop and implement changes
reasonably required to correct the Safety Hazard; (b) ensure that the
Deliverables as modified conforms to the Specifications; (c) as soon as possible
but not more than * (*) days after such determination, provide conforming
replacement parts or replacement Deliverables as necessary to correct the
failure in all affected Deliverables previously delivered to HKIS under this
Agreement and reimburse HKIS for the reasonable costs of repairing or replacing
the defective Deliverables in the installed base; and (d) implement corrective
measures eliminating the Safety Hazard in all new Deliverables delivered to
HKIS. T/R agrees to defend, indemnify and hold HKIS, its parent company,
subsidiary company, and operating divisions, harmless from and against all
liability, loss, damages, costs and expenses (including reasonable attorney's
fees) in connection with any claim that the Product contains a Safety Hazard.
11.3 Disclaimer of Warranties. EXCEPT FOR THE EXPRESS
WARRANTIES PROVIDED IN THIS AGREEMENT, THE DELIVERABLES ARE PROVIDED, AND THE
GRANT OF LICENSE AS TO THE LICENSED INTELLECTUAL PROPERTY RIGHTS IS MADE, "AS
IS." T/R SPECIFICALLY DISCLAIMS ALL OTHER WARRANTIES EXPRESSED OR IMPLIED,
INCLUDING BUT NOT LIMITED TO, IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS
FOR A PARTICULAR PURPOSE AS TO ANY TERMS OR SERVICES PROVIDED UNDER THIS
AGREEMENT.
11.4 Damage Limitations. IN NO EVENT SHALL EITHER PARTY
BE LIABLE FOR ANY LOST PROFITS OR ANY COLLATERAL, CONSEQUENTIAL, INDIRECT, OR
INCIDENTAL DAMAGES ARISING OUT OF OR CONNECTED IN ANY WAY WITH THIS AGREEMENT.
IN NO EVENT SHALL T/R'S LIABILITY FOR ANY CLAIM ARISING OUT OF THIS AGREEMENT
EXCEED THE AMOUNT PAID TO T/R BY HKIS DURING THE THIRTY SIX (36) MONTHS
PRECEDING THE DATE OF THE CLAIM MADE BY HKIS. NO CLAIM MAY BE BROUGHT BY HKIS
UNDER THIS AGREEMENT MORE THAN ONE (1) YEAR AFTER ACCRUAL OF SUCH CLAIM.
12. Supply Agreement. Subsequent to the execution and delivery
of this Agreement, HKIS agrees to supply to T/R two of the print devices for
use in development of the connectivity within 14 days of the date of execution
of this agreement and an additional eight of the print devices within fourteen
days of request by T/R for testing and training requirements for the
connectivity. These print devices will be provided at no charge to T/R. A
similar quantity will be provided at no charge to T/R for each different print
device HKIS request T/R to develop connectivity. HKIS will also provide the
Video Interface, technical documentation and reasonable technical support to
T/R for development of the connectivity to the devices specified in Schedule 1.
The HKIS printers, video interfaces and related equipment and technical
documentation shall be returned to HKIS at the conclusion of the development of
the connectivity for the associated System, except for equipment reasonably and
necessarily required by T/R to provide ongoing support to HKIS, which shall be
returned upon the termination or cancellation of the Agreement.
* Confidential information has been omitted and filed separately with the
Commission.
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13. Term and Termination.
13.1 Expiration. This Agreement shall commence on the
date set forth above and shall continue for an
initial term of * (*) years. Thereafter, this
Agreement shall be automatically renewed for
additional terms of one (1) year unless either party
serves written notice, at least ninety (90) days
prior to the expiration of the initial term or any
renewal term, of its intention not to renew.
13.2 Termination by Either Party. This Agreement may be
terminated by either party under any of the following conditions:
(a) if the other party is declared insolvent or
bankrupt;
(b) if a petition is filed in any court and not
dismissed in ninety (90) days to declare
the other party bankrupt or for a
reorganization under the Bankruptcy Law or
any similar statute;
(c) if a trustee in Bankruptcy or a receiver or
similar entity is appointed for the other
party; or
(d) if the other party commits a material
breach (inclusive without limitation, any
payment default) of this Agreement which is
remains uncured for more than thirty (30)
days after written notice of such breach is
given by the party not in breach.
13.3 Duties Upon Termination. Upon termination, upon
written request by the other party to do so, the parties shall return all
Confidential Information, including all copies, together with any equipment
documentation or other assets provided by the other party for development.
Obligations remaining executory as of the date of the termination or
cancellation expiration of this Agreement or otherwise intended by the parties
to survive the Term of this Agreement, including but not limited to warranty
obligations, obligations to protect Confidential Information, obligations to
indemnify and the obligation to pay pay amounts due and owing hereunder shall
survive its termination or cancellation for any reason. End User sublicenses
granted by HKIS during the Term of this Agreement shall remain unaffected by
the termination or cancellation of this Agreement for any reason. The
distribution rights and related licenses shall be extended with respect to any
HKIS inventory and Deliverables ordered by HKIS and accepted by T/R as of the
date of termination, in order to allow HKIS to sell its remaining inventory;
however, HKIS shall have no right to order any additional copies of the
Deliverables after the termination or cancellation of the Agreement.
14. General.
* Confidential information has been omitted and filed separately with the
Commission.
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14.1 Force Majeure. Neither party shall be liable for
any delay or failure in performance (other than an obligation to pay money)
under this Agreement resulting directly or indirectly from acts of God, or any
causes beyond its reasonable control. In the event of any delay or anticipated
delay by a party in the performance of its obligations hereunder due to any
causes beyond its reasonable control, that party shall immediately notify the
other in writing of such delay, setting forth the causes therefor and the
estimated duration thereof. Should a delay in performance by any party continue
or reasonably be expected to continue for a period of longer than one hundred
eighty (180) days, then the other party may terminate this Agreement and/or any
Orders, in whole or in part, by written notice to the other party, without any
further cost or obligation of the other party.
14.2 Jurisdiction and Venue. This Agreement shall be
governed by and construed in accordance with the laws of the State of Georgia,
U.S.A., without reference to its conflicts of laws provisions. Jurisdiction for
litigation of any dispute, controversy or claim arising out of or in connection
with this Agreement, shall be only in a Federal or a State Court having subject
matter jurisdiction located in Atlanta, Georgia U.S.A.
14.3 Entire Agreement. This Agreement, including the
Schedules and Exhibits attached hereto, constitutes the entire agreement
between the parties with respect to this subject matter and supersedes all
previous proposals, both oral and written, negotiations, representations,
writings and all other communications between the parties. This Agreement may
not be released, discharged, or modified except by an instrument in writing
signed by the parties.
14.4 Independent Contractors. It is expressly agreed
that HKIS and T/R are acting hereunder as independent contractors. Under no
circumstances shall any of the employees or agents of one party be deemed the
employees or agents of the other for any purpose.
14.5 Notice. Any notice required to be given by either
party to the other shall be deemed given if in writing and actually received or
if deposited in the United States mail in registered or certified form with
return receipt requested, postage paid, addressed to the notified party at the
address set forth herein.
14.6 Assignment. The purported delegation or assignment
by either party of any or all of its duties, obligations or rights under this
Agreement, except for right to receive a payment in money, without the prior
written consent of the other, which consent shall not be unreasonably withheld,
shall be void.
14.7 Severability. If any provision of this Agreement is
determined by a court of competent jurisdiction to be invalid or
unenforceable, such determination shall not affect the validity or
enforceability of any remaining part or provision of this Agreement.
14.8 Waiver. No waiver by any party hereto of any breach
of any provisions hereof shall constitute a waiver of any other term of this
Agreement unless made in writing signed by such party.
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14.9 Other Distribution. Except as explicitly provided
herein with regard to the exclusive distribution of certain Systems as
indicated in Section 2.1 hereof, nothing in this Agreement shall be deemed to
preclude T/R from distributing or licensing Deliverables and the Licensed
Intellectual Property Rights, as it deems appropriate, or from appointing
others to do so, in or outside of the Territory.
15. International Matters.
15.1 Export License. HKIS shall be exclusively
responsible for the procurement and renewing of all export or import licenses
required under United States or any foreign law for the export or import of the
Deliverables or the value added products and shall pay all costs and other
expenses in connection with such procurement and renewal. T/R shall provide
HKIS with assistance and relevant documentation reasonably requested by HKIS in
conjunction with the procurement and renewing of export or import licenses.
15.2 Export Assurance. Regardless of any disclosure made
by HKIS to T/R of any ultimate destination of a Deliverable or any System
assembled using same, HKIS shall not export or re-export directly or indirectly
the Deliverable or any System assembled using same, without first obtaining the
required written approval or export license, if any, to do so from the United
States Department of Commerce or any other agency of the U.S. Government having
jurisdiction over such transaction. HKIS hereby assures T/R that it does not
intend to nor will it knowingly, without the prior written consent, if
required, of the Office of Export Administration of the U.S. Department of
Commerce, transmit or ship the Deliverable or any System assembled using same,
directly or indirectly, to any country as to which such export is made unlawful
as provided in laws or by regulations issued by the U.S. Department of
Commerce, or other such regulations as may be adopted from time to time.
15.3 Compliance with Local Laws. HKIS shall be
exclusively responsible at its own expense for compliance with all local laws
relating to a Deliverable or any System assembled using same, in the countries
in which HKIS licenses or markets same. T/R agrees to provide, upon request by
HKIS or applicable government agency, such supporting documentation as shall
demonstrate compliance with applicable laws and regulations by the Deliverable
or System.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
a duly authorized representative as of the date set forth above.
T/R SYSTEMS, INC. HITACHI KOKI IMAGING SOLUTIONS, INC.
By: /s/ Xxxx Xxxxxxxxx By: /s/
------------------------ ---------------------------------
Title: President/CEO Title: Senior Vice President
--------------------- -----------------------------
Date: 4/1/99 Date: 4/6/99
--------------------- -----------------------------
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Schedule 1
Fees
Print Device Connectivity
Device Technology Access Fee
------ ---------------------
DDS 70 *
DDS 24 *
*Note: *
Fees
Language Translation and Conversion
Each Language Translation and Conversion: $ * per language for screen
files, online help files and hardcopy documentation. Alternatively, T/R will
translate screen files and implement online help files from HKIS provided
translated hardcopy documentation in Microsoft Word Format for $ * per
language.
* Confidential information has been omitted and filed separately with the
Commission.
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Schedule 2
Product Specifications and Price List
T/R Systems (TM) HKIS OEM Price List
(all amounts in U.S. dollars)
Product Model Code HKIS Price
ClusterServer MicroPress ClusterServer 400 MPCS400 $*
Solutions SatellitePress ClusterServer 400 SATCS400 $*
ClusterServer Console CSCONSL $*
Incremental RIPing MultiRip Server 400 MULTIRIPCS400 $*
Solutions MultiRIP (Software Only) MULTIRIP $*
ClusterServer Console CSCONSL $*
Document Control Document Processing Package (includes DOCPROC $*
And Workflow MERGE, IMAGEMAP, IMPOS, PAGENUM
Packages and FORMS)
Web Enable Package (includes PSM-PDF, WEBEN $*
MICROTICKET and PAGEANNO)
Document DocumentMerge MERGE $*
Production Image Manipulation IMAGEMAP $*
Add-Ins Imposition IMPOS $*
Job Scripting SCRIPT $*
Numbering PAGENUM $*
Page Annotation PAGEANNO $*
Variable Forms* FORMS $*
Utilities MicroTIFF MICROTIFF $*
MicroPress RIP for PCL MICROPCL $*
PSM to PDF PSM-PDF $*
PSM to TIFF PSM-TIFF $*
MicroTicket MICROTICKET $*
Connectivity Type 2-Output Device Support ODS2 $*
Support Support for Two network Connect Devices NDS2 $*
Upgrades Upgrade to Dual 400 UP2NDPROC $*
0 XX Xxxx Xxxxx Xxxxxxx XX0XXX $*
Upgrade to 512MB 512UP266/400 $*
DDS 24 024 Enable Software OPEN024 $*
PrintLink 024 PL024 $*
DDS 70 070 Enable Software OPEN070 $*
Note: Standard Lead Time from order placement date is * (*) days.
Pricing subject to change based on further project scope and definition.
* Confidential information has been omitted and filed separately with the
Commission.
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Schedule 2.1
List of HKIS Exclusive Systems
Specifications - Name and Date of Revision
DDS 70 - HKIS 70 PPM Printer
(070 Enable Software)
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Schedule 3
Post-Release Technical Support Program and Related Fees
Effective February 1, 1999
Daily Rates
-----------
Trainer (On-site) $*
Engineer $*
Senior Engineer $*
Managing Engineer $*
Executive Engineer $*
Notes: Does not include travel and living expenses.
* Confidential information has been omitted and filed separately with the
Commission.
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Schedule 4
Long Term Forecast(1)
(Purchase Commitment)
Server placements
by * period(2)
Period Case 1 Case 2
1st * * *
period(2)
2nd * * *
period
3rd * * *
period
4th * * *
period
* Year Total * *
--------------
(1) *
(2) The first * period is the first * following the first-customer-shipment
("FCS") availability of the first System designed for connectivity to the HKIS
DDS 70 printer engine.
* Confidential information has been omitted and filed separately with the
Commission.
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SCHEDULE 5
Project Schedule, Statement of Work, QA and Testing
ESTIMATED START ESTIMATED COMPLETION
--------------- --------------------
Project Scope & Definition:
PrintLink Design:
PrintLink Firmware Development:
PrintLink Prototype:
PrintLink De-bug:
Enable Software Design:
Enable Software Development:
PPD and Driver Development:
Connectivity Testing:
Regulatory Testing:
Software Alpha Functional QA:
Software Integration Testing:
Software Beta Test:
Software Golden Master:
Acceptance by HKIS:
Note: HKIS and T/R Systems will mutually agree on requirements and scope of the
connectivity development and acceptance criteria within thirty (30) days of
contract execution.
T/R QA Program and Testing Procedures
Document No. 011-000002 Revision AA
HKIS Acceptance Test Plan
March 31, 1999
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Schedule 6
End User Software License
IMPORTANT!
DO NOT OPEN THIS PACKAGE UNTIL YOU HAVE READ THIS AGREEMENT
By opening this package, you agree to the terms and conditions of this Licensing
Agreement. If you do NOT accept the terms of this Licensing Agreement, you must
return the package UNOPENED to the seller from whom you purchased it.
(1) All software included with your purchase ("Software") is licensed for
use by a single end-user. You may not rent or lease the Software. You may
permanently transfer all of your rights under this Licensing Agreement by
transferring this document, all copies of the Software and all associated
documentation (retaining nothing yourself) to another person who agrees to the
terms and conditions of this Licensing Agreement. You may not otherwise resell
or distribute the Software to any other person. You may not export the Software.
(2) The Software is protected by copyright, and all rights are reserved by
the Licensor or its suppliers. You may not attempt to reverse-compile,
disassemble, alter or modify the Software. You may not copy the software except
as required to install it on a single computer (for each license purchased) for
your own person use and except as required in order to make (for each license
purchased) single backup copy for your own personal use. You may not copy the
written materials accompanying the Software, and you may not resell or
distribute the written materials except as provided in paragraph (1) above.
(3) UNLESS YOU HAVE A WRITTEN AGREEMENT WITH THE SELLER FROM WHOM YOU
PURCHASED IT, ALL SOFTWARE IS SUPPLIED "AS IS" AND WITHOUT WARRANTY OF ANY KIND,
EXPRESS OR IMPLIED, IN PARTICULAR, ANY AND ALL WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT OF THIRD PARTY RIGHTS ARE
EXPRESSLY EXCLUDED. IF YOU HAVE A WRITTEN WARRANTY AGREEMENT WITH THE SELLER
FROM WHOM YOU PURCHASED THE SOFTWARE, IT OBLIGATES ONLY THE SELLER AND DOES NOT
APPLY TO LICENSOR OR ITS SUPPLIERS.
(4) IN NO EVENT SHALL LICENSOR OR ITS SUPPLIER-LICENSORS BE LIABLE FOR ANY
ACTUAL OR ALLEGED DAMAGES ARISING OUT OF OR CONNECTED IN ANY WAY WITH THE USE OR
LOSS OF USE OF THE SOFTWARE.
(5) This Licensing Agreement shall remain in effect until terminated. You
may terminate this Licensing Agreement at any time by destroying the Software
and any existing copies you have made.
This Licensing Agreement shall be governed by and construed under the laws of
the State of California without reference to its conflict of laws provisions.
Some states, under certain circumstances and with respect to some parties, do
not allow the exclusion of implied warranties or the limitation or exclusion of
consequential damages, so the above limitations and exclusions may not apply to
you.
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Schedule 7
List of Third-Party Licenses
COMPANY PRODUCT
------- -------
Harlequin Scriptworks
Microsoft Windows NT Server
Lincoln PCL RIP
Lead Technologies Lead Tools
Adobe Acrobat Reader (free)
SUN Java Virtual Machine
Murisawa Kanji Fonts
VISE MAC Installer
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Schedule 8
Year 2000 Certification and Warranty
This Certification is a "Year 2000 Readiness Disclosure" as defined in the Year
2000 Information and Readiness Disclosure Act of 1998 (Public Law 105-271, 112
Stat. 2386) enacted on October 19, 1998.
T/R represents and warrants to HKIS that any and all Deliverables provided
pursuant to this Agreement shall in all material respects be "Year 2000
Complaint" including "fault-free performance in processing" of date and
date-dependent or date-related data by the hardware, software, and firmware of
the Products as those terms are defined in the Year 2000 Information and
Readiness Disclosure Act of 1998 (Public Law 105-271, 112 Stat. 2386) enacted on
October 19, 1998. The term "fault-free performance in processing" means to
accurately exchange electronically and correctly recognize, interpret, process
(including but not limited to, sorting, indexing, comparing, sequencing and
calculating), manipulate, display, store, import, and export calendar related
data and data values (including, but not limited to, dates, duration, and days
of week) for all dates before, including and after January 1, 2000 to produce
accurate results across centuries for all valid data values within the
application domain and to accept and respond to, generate, and store all date
information in a way that resolves correctly any ambiguity as to century. The
term "Year 2000 Complaint" with respect to a Product means: (i) the Product
accurately processes date and time data (including, but not limited to,
calculating, sorting, indexing, comparing and sequencing) from, into, and
between the nineteenth, twentieth, and twenty-first centuries, and the years
1999 and 2000 and leap year calculations, without error or interruption of any
kind; and (ii) when the Product is used in combination with other products, the
Product accurately processes date and time data if the other products properly
exchange date and time data with it; and (iii) the Product accommodates date
data recognition in a format which includes the correct presentation of the
century as described above, all calculations performed by the Product correctly
accommodate same and multi-century formulas and dates, date data and the date
values and input/output of data values from and to the Product accurately
reflect the correct century.
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