1
EXHIBIT 10.11
MARKETING ALLIANCE AGREEMENT
This MARKETING ALLIANCE AGREEMENT ("Agreement") is entered into this 7th day of
March, 2000 ("Effective Date") by and between printCafe Systems, Inc., a
corporation organized under the laws of Delaware, with its principal xxxxxx xx
Xxxxx 00xx Xxxxxx, Xxxxxxxxxx, XX 00000 (hereinafter referred to as
"printCafe"), and Xxxxxxxx Consulting LLP, an Illinois general partnership
registered as a limited liability partnership, with offices at 00 X. Xxxxxx,
Xxxxxxx, XX 00000 (hereinafter referred to as "Xxxxxxxx Consulting"), for the
benefit of any entities that are a part of the Xxxxxxxx Consulting business unit
of the Xxxxxxxx Worldwide organization, as hereinafter more fully described.
WHEREAS, Xxxxxxxx Consulting is a business integration services provider with an
objective of being a leader in the global services market for dynamic commerce
solutions;
WHEREAS, printCafe has developed and end-to-end electronic solution capable of
integrating and automating all stages of the printing process, including design
and specification, procurement, manufacturing, distribution and supply chain
management;
WHEREAS, Xxxxxxxx Consulting desires to obtain certain rights, on a worldwide
basis, to market such software and promote such eCommerce product offerings as
provided herein; and,
WHEREAS, printCafe desires to grant certain rights to Xxxxxxxx Consulting to
cooperatively market such software and product offerings and team together in
offering strategic sourcing capabilities initially for the print category and
for additional custom configurable products as mutually agreed upon.
NOW THEREFORE, in consideration of the promises and covenants contained herein,
and other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties do mutually agree as follows:
SECTION 1 - DEFINITIONS
The following defined terms used in this Agreement shall have the meanings
specified in this Section 1.
1.1 The rights and benefits of "Xxxxxxxx Consulting" in this Agreement shall
extend to Xxxxxxxx Consulting LLP, Proquire and all affiliated entities
of Xxxxxxxx Consulting located in various countries throughout the world
including each
2
national practice entity within the Xxxxxxxx Consulting business unit.
Any such affiliated entity will have the ability to be bound by and
receive the benefits under the terms of this Agreement by executing an
acknowledgment confirming such affiliated entity's acceptance of the
terms of this Agreement.
1.2 "Client" means any Sales Prospect or other third party that has licensed
the Software from printCafe and otherwise contractually agreed to a
subscription of printCafe's Product Offering, and who has contracted
with Xxxxxxxx Consulting for Services.
1.3 "Documentation" means all functional documentation, user and software
operating materials, descriptions, related training materials,
specifications, instructions and explanatory materials regarding and
related to the Software and printCafe's Product Offering.
1.4 "Proquire" means Proquire LLC, an Xxxxxxxx Consulting affiliate.
1.5 "Product Offering" means printCafe's eCommerce/eCommunity offering which
enables strategic sourcing through private and public procurement
networks, combined with a process driven strategic sourcing approach and
supply chain integration and collaboration.
1.6 "Sales Prospects" means either party's opportunistic targets and clients
in the printing/publishing industry, or other industry as mutually
agreed upon.
1.7 "Services" means Xxxxxxxx Consulting's provision to a Client of all
Software and Product Offering integration services, consultation and
coaching, business process management services, change management
services, and strategic services, including but not limited to,
eCommerce systems design and implementation of workforce development
solutions (including Software) and interfaces to printCafe's technology,
modifications to the Client's current business, systems and processes,
identification of operational strategies, implementation and conversion
assistance, organization design and conversion training and other
business changes required to take advantage of printCafe's Software and
Product Offering. Services shall include Xxxxxxxx Consulting's
development of enhancements, modifications, and or derivatives of the
Software, if any, for a Client. Services may also include training,
systems management and outsourcing.
1.8 "Software" means the object code, modules, programs, configuration
files, reference data files, help files, spreadsheet used to maintain
reference data, supporting design, API information and Documentation,
including all future versions, enhancements, modifications and/or
derivatives and related Documentation made by or on behalf of printCafe
(including without limitation any such enhancements, modifications
and/or derivatives made by Xxxxxxxx Consulting pursuant to a separate
agreement with printCafe), associated with all versions of printCafe's
internet services. The Software includes any computer object code,
modules, programs, data files, or Documentation that is proprietary
2
3
to or licensed by another third party, and that is embedded into or that
is inseparable from the Software. This Agreement does not provide for
Xxxxxxxx Consulting's development for printCafe of any enhancements,
modifications and/or derivatives of printCafe's internet software, and
the Software shall not include any such enhancements, modifications
and/or derivatives prepared by Xxxxxxxx Consulting for a Client. Any
such enhancements or modifications shall be contracted for and governed
by a separate agreement negotiated in good faith by the parties.
SECTION 2 - MARKETING INTENT & STRATEGY; GRANT OF LICENSE
2.1 The marketing alliance provided for in this Agreement provides printCafe
and Xxxxxxxx Consulting with an opportunity to jointly provide services
and products to corporations with large expenditures on print or to
printers joining the printCafe procurement networks which would create
new direct and indirect sources of revenue for both parties. Xxxxxxxx
Consulting's objective with respect to the marketing alliance is to (i)
further support Xxxxxxxx Consulting's goal of being a strategic part of
the printing/publishing industry, and (ii) obtain exposure to mutually
agreed upon printCafe clients and (iii) be the premier provider of
strategic sourcing services and a pre-eminent participant in the
eCommerce marketplace. printCafe's objective with respect to the
marketing alliance is to (i) further develop and leverage its Software
and Product Offering to become an industry leader for the printing and
publishing industries, (ii) obtain exposure to mutually agreed upon
Xxxxxxxx Consulting clients, (iii) obtain leverage in the
printing/publishing market as a result of its association with Xxxxxxxx
Consulting, and (iv) obtain access to experienced consulting
professionals in the delivery of printCafe Software and related Product
Offering.
2.2 The parties agree that the marketing alliance provided for in this
Agreement is intended to initially support buyers of commercial
printing. As the marketing alliance relationship progresses, both
parties will consider expanding the scope of the commodities sourced
through printCafe beyond print and target other markets to support both
organization's objectives. Additional markets shall be as mutually
agreed upon and confirmed in writing.
2.3 To support the marketing alliance provided for herein, Xxxxxxxx
Consulting agrees to contribute the following: - Internal promotion and
marketing of printCafe and the Software to selected Xxxxxxxx Consulting
client teams.
- Assignment of business development and marketing resources from
existing client account and portfolio teams.
- Provide an alliance management point of contact for day-to-day
relationship matters and issue escalation and resolution.
- Participate in mutually agreed to marketing and business
development activities with printCafe.
- Use the Software and Product Offerings internally to introduce
printCafe within Xxxxxxxx Consulting.
3
4
2.4 To support the marketing alliance provided for herein, printCafe agrees
to contribute the following:
- Assume a lead role in developing and implementing marketing
campaigns for the Software and Product Offering.
- Assign a business development and marketing resource to assist in
promoting the alliance.
- Provide an alliance management point of contact for day-to-day
relationship matters and issue escalation and resolution.
- Update Xxxxxxxx Consulting with respect to new Software and Product
Offerings.
- Access to technical support and training resources and/or courses
during the term of this Agreement.
2.5 Subject to the terms and conditions of this Agreement, printCafe hereby
grants to Xxxxxxxx Consulting a worldwide, non-exclusive,
non-transferable, paid-up license to market, promote, use, install,
copy, reproduce, and display the Software and Product Offering, during
the term of this Agreement for the following limited purposes: (i)
marketing, promoting and demonstrating the Software and Product Offering
in exhibits, in all present and future Xxxxxxxx Consulting facilities,
and to potential Sales Prospects; (ii) developing and demonstrating
implementation methodology and application programs utilizing the
Software and Product Offering; and (iii) training Xxxxxxxx Consulting
personnel; provided that in all events any such use and installation
shall be limited to printCafe's ERP systems installed or used at
Xxxxxxxx Consulting and not by Clients and provided, further, that it
shall not include the installation of printCafe's web site or related
Software. Subject to the terms and conditions of this Agreement,
printCafe hereby further grants to Xxxxxxxx Consulting a limited right
to use, under the terms of the license in the preceding sentence, the
company name and trademarks, including logo, of printCafe and any name
used by printCafe to describe the Software and Product Offering, solely
in Xxxxxxxx Consulting's marketing and promotion activities, with prior
written consent from printCafe. Subject to the terms and conditions of
this Agreement, Xxxxxxxx Consulting hereby grants to printCafe a limited
right to use the Xxxxxxxx Consulting company name and trademarks,
including logo, of Xxxxxxxx Consulting to describe the Services, solely
in printCafe's marketing and promotion activities, with prior written
consent from Xxxxxxxx Consulting. Notwithstanding anything to the
contrary in this Agreement, Xxxxxxxx Consulting shall not, for itself,
any affiliate of Xxxxxxxx Consulting or any third party: sell, license,
sublicense, modify, assign, or transfer the Software, Product Offering
or the license granted by this Section 2.5; decompile, disassemble, or
reverse engineer the Software or any component thereof; or remove from
the Software or Product Offering any language or designation indicating
the confidential nature thereof or the proprietary rights of printCafe
or its suppliers in such items. Xxxxxxxx Consulting acknowledges that
the Software and Product Offering constitute proprietary information and
trade secrets which are the sole and exclusive property of printCafe or
its licensors and that the Software and Product Offering are protected
by U.S. copyright, trade secret and similar laws and certain
international treaty provisions. This Agreement does not
4
5
transfer or convey to Xxxxxxxx Consulting any rights in the Software and
Product Offering except for the limited license set forth herein. In the
event that Xxxxxxxx Consulting uses the license granted by this Section
2.5 outside the United States, Xxxxxxxx Consulting shall be responsible
for complying with all applicable United States export rules and
regulations and all destination country import laws.
2.6 printCafe acknowledges and agrees that the Software and Product Offering
may be marketed by Xxxxxxxx Consulting subject to the terms and
conditions of this Agreement as a stand alone product or as part of a
larger, bundled offering which includes other software, products, and/or
Services, subject to printCafe's written approval in the event that such
bundled offering includes a direct competitor of printCafe. Xxxxxxxx
Consulting shall not misrepresent or mischaracterize the Software or
Product Offering.
2.7 printCafe will be responsible for offering the Product Offering and, if
applicable, licensing the Software to a Sales Prospect, and printCafe
shall be solely responsible for (i) all terms and conditions contained
in such license and/or other subscription based agreement, and (ii) all
packaging, delivery, warranty and on-going Software and Product Offering
support and application maintenance.
2.8 During the term of this Agreement, printCafe shall make available to
Xxxxxxxx Consulting, at no charge, (i) copies of the Software object
code, available documentation and all necessary executable application
program interface ("API") modules, API information and related technical
information and support sufficient for Xxxxxxxx Consulting's use for the
purposes set forth in this Agreement, and (ii) updates to all such
materials, including updates to printCafe's Product Offering, as they
are made or become available to printCafe. Xxxxxxxx Consulting may make
a reasonable number of copies of the Software as necessary for backup
(provided Xxxxxxxx Consulting reproduces on such copy all proprietary
notices of printCafe or its suppliers), delivery to Xxxxxxxx Consulting
facilities, and archival purposes. Xxxxxxxx Consulting shall have the
right to inform its Sales Prospects of its relationship with printCafe
as the preferred integrator of the Software and Product Offering as set
forth in this Agreement.
2.9 printCafe will be solely responsible for obtaining any and all rights
necessary to allow Xxxxxxxx Consulting to market, in accordance with
this Agreement, any third party components contained in the Software
and/or Product Offering, including responsibility for any administrative
or financial arrangements in relation to such third party components.
2.10 Neither party shall be required to make payments of any kind to each
other under this Agreement.
5
6
SECTION 3 - MARKETING AND SERVICES ARRANGEMENTS
3.1 As soon as practicable following the execution of this Agreement,
Xxxxxxxx Consulting's and printCafe's designated alliance liaison will
meet, jointly develop, and mutually approve a joint marketing plan to
guide the parties' marketing activities during the term of this
Agreement. The goal of the joint marketing plan is to create a mutual
understanding of opportunities which are of priority interest and to
assist each party in focusing their marketing efforts to support the
achievement of the objectives set forth in Section 2. The joint
marketing plan will be periodically updated on a quarterly basis per the
mutual consent of the parties' liaisons as appropriate. Additionally,
each party's liaison will be responsible for (i) the exchange of
information on Sales Prospect leads with the other party, including the
creation and updating of a monthly sales pipeline report, (ii) the
selection of Sales Prospect leads with the other party, and (iii) report
the efforts/results of the alliance activities provided for herein to
their respective management. When the liaisons agree to jointly pursue a
lead, each party will appoint a project manager who will be responsible
for applicable marketing and job-related activity. Additionally, each
party will provide reasonable marketing support to the other that may
include the development and preparation of marketing materials and
strategies, customer presentations, bids and proposals, possible
incentive arrangements to award printCafe sales teams for promoting
Xxxxxxxx Consulting's Services, all of which shall have been mutually
agreed upon in accordance with the joint marketing plan.
3.2 Xxxxxxxx Consulting and printCafe agree that the marketing alliance
provided for in this Agreement is not exclusive. However, printCafe
grants Xxxxxxxx Consulting recommended status with respect to the
Services offered to Sales Prospects. Under such recommended status,
printCafe shall designate Xxxxxxxx Consulting as printCafe's
"recommended Services provider" to such Sales Prospects during the term
of this Agreement. Xxxxxxxx Consulting shall also have the worldwide
right to market itself as printCafe's recommended Services provider
during the term of this Agreement.
3.3 printCafe shall have the worldwide right to inform its Sales Prospects
of its relationship with Xxxxxxxx Consulting as a recommended solution
provider for electronic print procurement solutions during the term of
this Agreement.
3.4 When learning of a Sales Prospect as provided for in this Agreement, a
party ("Identifying Party") will contact the liaison of the other party
("Referred Party") to determine if the Referred Party has an interest in
the opportunity. The Referred Party will independently review each new
Sales Prospect opportunity and decide if it wants to pursue the
opportunity.
Should the Referred Party have an interest in the Sales Prospect
opportunity, the parties will then discuss how best to pursue the
opportunity. On a case-by-case basis and in accordance with Section 4,
the parties will determine how they will respond to a Sales Prospect
opportunity. The parties may decide the opportunity should be pursued:
i) by only one of the parties; ii) in a joint
6
7
manner; or iii) with the non-leading party providing only an agreed set
of support services.
If, for whatever reason, one party does not wish to pursue a Sales
Prospect opportunity that falls within the scope of the marketing
alliance provided for in this Agreement, the other party may pursue the
opportunity independent of the declining party or team with a third
party.
Should a Sales Prospect refuse to work with either Xxxxxxxx Consulting
or printCafe, the other party may pursue the opportunity on its own or
in conjunction with a third party. However, in such situations, the
party pursuing the opportunity cannot disclose the non-pursuing party's
intellectual property provided for herein in its proposal or in the
actual execution of any engagement without the express written consent
of the non-pursuing party.
3.5 Each of the parties shall have primary responsibility for marketing the
joint alliance to its own Sales Prospects, and each party agrees that it
will put forth a reasonable effort to market the other party's Software
or Services, as the case may be, through its normal marketing and
distribution channels. Xxxxxxxx Consulting shall have initial
responsibility for introducing the Software and printCafe's product
offering to selected Xxxxxxxx Consulting clients in order to gauge
market reaction. Xxxxxxxx Consulting shall convey applicable market
reaction to printCafe's liaison. Based upon the interest expressed by
Xxxxxxxx Consulting's clients, and if in accordance with Xxxxxxxx
Consulting's overall strategy for such client, Xxxxxxxx Consulting will
introduce interested clients to printCafe's sales representatives. In
order for printCafe to promote the services as provided for in this
Agreement, Xxxxxxxx Consulting shall supply printCafe with marketing
documentation in electronic and paper format that can be used by
printCafe without limitation on disclosure. printCafe agrees not to
modify, alter, amend, or misrepresent such Xxxxxxxx Consulting
materials. Additionally, Xxxxxxxx Consulting agrees to (i) appoint a
business development director to create internal Xxxxxxxx Consulting
awareness of printCafe's Software and Product Offering capabilities,
(ii) market the Software and printCafe's Product Offering to those
partners aligned with Xxxxxxxx Consulting's Media and Entertainment
operating unit, as well as other selected industry groups and lines of
businesses within Xxxxxxxx Consulting, and (iii) put forth a reasonable
effort to market the Software through Xxxxxxxx Consulting's normal
marketing and distribution channels. However, Xxxxxxxx Consulting will
have no obligation to establish or maintain a formal sales organization
or marketing program related to this Agreement.
3.6 Any Xxxxxxxx Consulting internal or external marketing may require
printCafe participation and support which printCafe shall supply in its
reasonable discretion. In order for Xxxxxxxx to promote the Software as
provided for in this Agreement printCafe shall supply Xxxxxxxx
Consulting with marketing documentation in electronic and paper format
that can be used by Xxxxxxxx Consulting without limitation on
disclosure. Xxxxxxxx Consulting agrees not to
7
8
modify, alter, amend, or misrepresent such printCafe materials.
printCafe may require a Client or Sales Prospect to enter into a
nondisclosure agreement with printCafe to protect its confidential
information after a sales opportunity is qualified and reaches a
detailed discussion stage. printCafe shall control the release of its
confidential information to prospective Clients and or Sales Prospects
and will be responsible for putting in place such nondisclosure
agreements with prospective Clients or Sales Prospects.
3.7 Nothing in this Agreement shall be deemed a commitment or obligation on
Xxxxxxxx Consulting to effect any level of Software licenses or amount
of revenue in relation to any internal or external marketing activities
supplied by Xxxxxxxx Consulting with respect to the Software or
printCafe's product offerings. Likewise, printCafe has no obligation or
commitment to effect any level of revenue for Xxxxxxxx Consulting's
Services.
3.8 Except as otherwise set forth in this Agreement, neither party shall use
any of the other party's marks or company names in advertising or other
promotional material or activity (including Internet web sites) without
first obtaining the owner's prior express written permission, which
shall not be unreasonably withheld or delayed. Any press release related
to this Agreement must be approved in writing by both Xxxxxxxx
Consulting's Managing Partner - Marketing Communications and by
printCafe in advance.
3.9 Neither party shall have the right to make commitments of any kind for
or on behalf of the other party without first obtaining the other
party's prior written consent. Such commitments may include, but are not
limited to, recommendations for specific Xxxxxxxx Consulting or
printCafe resources.
3.10 Unless otherwise explicitly agreed upon in writing, each party will be
responsible for its own costs associated with the activities performed
under this Agreement, including but not limited to, work performed and
costs incurred in connection with any proposals, or other marketing
preparation in connection with a Sales Prospect opportunity.
Xxxxxxxx Consulting will retain 100% of fees related to Services
provided by Xxxxxxxx Consulting to third parties. These Services will be
provided through separate written agreements. printCafe will retain 100%
of the Software license fees, Product Offering subscriptions, activation
charges, annual subscriptions, maintenance fees, set up and training
fees pursuant to its licenses with Sales Prospects.
3.11 Xxxxxxxx Consulting will not be restricted from recommending and
marketing services or products which may be competitive with the
Software or Product Offering if Xxxxxxxx Consulting determines that such
services or products will better meet the needs of an entity.
3.12 Xxxxxxxx Consulting and printCafe shall each be solely responsible for
its respective products and services and any claims from Sales Prospects
or Clients
8
9
with respect to such products or services. Xxxxxxxx Consulting and
printCafe shall each not be responsible for the performance of the other
party's products or services or any warranty claims relating to the
other party's products or services.
3.13 During the term of this Agreement, printCafe will provide, at no charge
to Xxxxxxxx Consulting, free training to a reasonable number of Xxxxxxxx
Consulting personnel for the purpose of becoming knowledgeable in the
features, capabilities and technical architecture of printCafe's
Software and Product Offering.
3.14 The provisions of this Agreement do not constitute an exclusive
endorsement of the other party's products or services.
SECTION 4 - APPROACH WITH RESPECT TO A SALES PROSPECT
4.1 In the event that Xxxxxxxx Consulting and printCafe elect to move
forward and pursue a Sales Prospect opportunity, the parties may agree
to jointly proceed in one of two ways:
(i) Jointly propose according to a teaming or prime/sub relationship;
or
(ii) Jointly propose as two concurrent but separate contractors.
4.2 The parties will jointly determine the appropriate marketing approach on
a case-by-case basis based upon joint discussion and input from the
Sales Prospect. In most cases, the initial position will be for Xxxxxxxx
Consulting to be the lead party with respect to the Services.
4.3 The lead party will manage and coordinate the Sales Prospect
relationship and communication. The lead party will typically be the
primary communication channel with the Sales prospect and Sales Prospect
stakeholders. The non-leading party will channel all communication with
the Sales Prospect through the leading party.
4.4 If a particular opportunity requires a prime/sub relationship, the lead
party will be the prime contractor and the non-leading party will
subcontract its products/services to the lead party under financial
terms to be specified on an engagement by engagement basis. The parties
will enter into an engagement-specific teaming agreement that will
address the following issues:
- responsibilities of the prime contractor;
- responsibilities of the sub-contractor;
- each party will determine the pricing of its products/services;
- each party will be solely responsible for staffing of the
project/engagement and the performance of its obligations;
- prime contractor will be responsible for sign-off on the
sub-contractor's performance of its obligations, including
products/services delivered;
- billing, collection, flow of invoices/payments from/to
subcontractor, and currency issues;
9
10
- each party will bear its own costs related to the products/services
it delivers;
- termination of the engagement-specific teaming agreement.
4.5 Xxxxxxxx Consulting and printCafe will develop a separate subcontract or
teaming agreement for all subcontracted work based on terms and
conditions as are mutually satisfactory to the parties.
4.6 If Xxxxxxxx Consulting and printCafe agree to jointly deliver services
as two independent contractors, the parties will coordinate the
following matters prior to entering into separate arrangements directly
with the Sales Prospect:
- allocation of services to be provided by each of the parties
consistent with the core competencies of Xxxxxxxx Consulting and
printCafe;
- coordination of deliverables;
- as separate/independent contractors each party will determine the
pricing of its services/products and will be solely responsible for
staffing of the project/engagement and the performance of its
obligations;
- Xxxxxxxx Consulting and printCafe will each determine the use of
its own third party vendors and bear the full costs of using them.
SECTION 5 - CONFIDENTIALITY
5.1 During the course of this Agreement, Xxxxxxxx and printCafe may be given
access to information that (i) relates to the other's past, present, and
future research, development, business activities, products, services,
and technical knowledge, and (ii) has been identified as confidential
("Confidential Information"). The parties agree that any Software
provided by printCafe shall be deemed printCafe's Confidential
Information. In connection therewith, the following shall apply:
5.1.1 The Confidential Information of the other party may be used by the
recipient only in connection with the performance of its
obligations under this Agreement;
5.1.2 Each party agrees to protect the confidentiality of the
Confidential Information of the other in the same manner that it
protects the confidentiality of its own proprietary and
confidential information of like kind.
5.1.3 The Confidential Information may not be copied or reproduced
without the discloser's prior written consent.
5.2 All Confidential Information made available hereunder, including copies
thereof, shall be returned or destroyed upon the first to occur of (a)
termination of this Agreement or (b) written request by the discloser.
10
11
5.3 Nothing in this Agreement shall prohibit or limit either party's use of
information (including, but not limited to, ideas, concepts, know-how,
techniques, and methodologies) (i) previously known to it without
obligation of confidence, (ii) independently developed by it, (iii)
acquired by it from a third party which is not, to its knowledge, under
an obligation of confidence with respect to such information, or (iv)
which is or becomes publicly available through no breach of this
Agreement.
5.4 In the event either party receives a subpoena or other validly issued
administrative or judicial process requesting Confidential Information
of the other party, it shall provide prompt notice to the other of such
receipt. The party receiving the subpoena shall thereafter be entitled
to comply with such subpoena or other process to that extent.
5.5 In the event a party receives Requests for Proposals ("RFPs") or other
information from a Sales Prospects and such information is disclosed to
the other party to this Agreement, then such RFPs and information will
be considered Confidential Information. The parties agree not to
disclose such RFPs and information to anyone other than their employees
who have a need to know such information for the purposes of this
Agreement without the prior written permission of the disclosing party.
5.6 Except as necessary to fulfill its obligations in relation to the
activities contemplated by this Agreement or as required to be disclosed
by applicable law or government regulation, both parties agree to keep
the terms of this Agreement confidential and except as provided
otherwise in the Agreement, may not use the other party's name without
prior written approval.
SECTION 6 - WARRANTIES TO SALES PROSPECTS
6.1 Xxxxxxxx Consulting shall not warrant the performance of the Software or
other printCafe product offering, but shall extend to each Sales
Prospect the warranties and indemnification for its Services that
Xxxxxxxx Consulting generally extends to purchasers of the same or
similar Services. printCafe shall extend to each Sales Prospect the
warranties and indemnification for its Software and Product Offering
that it generally extends to its customers and licensees of the
applicable Software or Product Offering. Additionally, printCafe
retains, and shall be fully responsible for, all obligations,
indemnities, and liabilities associated with ownership and licensing of
the Software and subscription arrangement for the Product Offering.
Xxxxxxxx Consulting retains, and shall be fully responsible for, all
obligations, indemnities, and liabilities associated with the Services.
6.2 As between the parties, Xxxxxxxx Consulting shall remain solely
responsible to Sales Prospects for the performance its Services. As
between the parties, printCafe shall remain solely responsible to Sales
Prospects for the performance of and good working order of its Software
and Product Offering.
11
12
SECTION 7 - OWNERSHIP & PROPRIETARY RIGHTS
7.1 Each party will retain ownership of any assets or materials they bring
to this Agreement, such as software, designs, methodology, knowledge
capital, and etc. Unless otherwise agreed to, the parties will each
directly license their own materials to the Sales Prospect.
7.2 During joint marketing and/or the Sales Prospect engagement process,
certain items, including, but not limited to, high level Software
interface designs, customized eCommerce templates, presentations,
customized Product Offering documentation, marketing collateral,
workplans and training materials may be developed (collectively,
"Materials"). Materials shall not include any items or deliverables
developed for or licensed to a party by the other under a separate
contractual arrangement. As between the parties, the ownership and
intellectual property rights to the Materials will fall into the
following three categories:
(a) PRINTCAFE DEVELOPED AND OWNED: printCafe shall own all
proprietary rights in all Materials, including modules and
templates, developed solely by printCafe. If such Materials
contain Confidential Information of Xxxxxxxx Consulting, the
applicable portions of such Materials will be designated as
such and will be distributed subject to the terms of a
proprietary information agreement.
(b) XXXXXXXX CONSULTING DEVELOPED AND OWNED: Xxxxxxxx
Consulting shall own all proprietary rights in any Materials,
including modules and templates, developed solely by Xxxxxxxx
Consulting. If such Materials contain Confidential Information
of printCafe, the applicable portions of such Materials will
be designated as such and will be distributed subject to the
terms of a proprietary information agreement.
(c) JOINTLY DEVELOPED: The parties' rights in jointly
developed Materials shall be as provided in specific written
"Joint Development Agreements."
7.3 Trademarks and/or servicemarks will remain the sole property of the
original owner. Except as otherwise set forth in this Agreement, each
party agrees that it will not use the trademarks of the other without
prior written approval.
7.4 Xxxxxxxx Consulting shall be free to use its general knowledge, skills
and experience, and any ideas, concepts, know-how, and techniques within
the scope of its consulting practice that are used or developed in the
course of sharing information with printCafe, subject to the
nondisclosure and confidentiality obligations agreed to between the
parties.
12
13
7.5 The parties will cooperate with each other and execute such other
documents as may be appropriate to achieve the objectives of this
Section 7. Notwithstanding the above provisions of this Section 7
regarding ownership, each party shall have a license to use Materials
owned by the other party (as provided for in this Section) as necessary
to fulfill the purposes of this Agreement.
SECTION 8 - REPRESENTATIONS
8.1 Xxxxxxxx Consulting warrants and represents that it has the right to
grant to printCafe the rights purported to be granted by or pursuant to
this Agreement, and has all other rights necessary for the performance
of its obligations under this Agreement, without violating any rights of
any other party. printCafe warrants and represents that it has the right
to grant to Xxxxxxxx the rights purported to be granted by or pursuant
to this Agreement, and has all other rights necessary for the
performance of its obligations under this Agreement, without violating
any rights of any other party.
8.2 printCafe warrants and represents that except as previously disclosed to
Xxxxxxxx Consulting, there are no material claims against the Software
and Product Offering (including the Documentation), trade secrets,
copyrights or trademarks related thereto and no demand of any person or
entity pertaining to it, and no material proceedings have been
instituted or are pending or, to the knowledge of printCafe, threatened
that challenge the rights of printCafe in respect thereof. Except as
previously disclosed to Xxxxxxxx Consulting, printCafe has not been
charged or threatened with infringement or violation of any intellectual
property right of any person or entity and, to the knowledge of
printCafe, is not infringing any intellectual property rights through
any license or use of any Software or Product Offering. There are no
product liability claims pending or, to the knowledge of printCafe,
threatened that are based on any alleged problem or defect in any of the
Software or Product Offering (including the Documentation), trade
secrets, copyrights or trademarks related thereto, or any alleged
misrepresentation or failure to meet any claim or promise made in any
sales literature or otherwise by printCafe to any person, or on any
implied covenant or legal requirement relating to any of the Software.
printCafe will use its reasonable efforts to notify Xxxxxxxx Consulting
of its knowledge of any future material claims against the Software and
Product Offering, trade secrets, copyrights or trademarks; any future
material charges of infringement or violation of any intellectual
property right; or any future material Software liability claims made or
threatened.
SECTION 9 - INDEMNIFICATION
9.1 Each party shall indemnify, defend and hold harmless the other, its
employees, principals, partners, shareholders, directors, officers,
other holders of an ownership interest, representatives and agents, from
and against any third party claims, demands, loss, damage or expense
relating to bodily injury or death of
13
14
any person or damage to real and/or tangible personal property directly
caused by the negligence or willful misconduct of the indemnifying
party, its personnel or agents in connection with the performance of the
services, product offerings or the provision of the printCafe Products
hereunder.
9.2 Upon notice by one party (the "Indemnified Party") in writing of a third
party claim against the Indemnified Party that any of the printCafe
Products or other service or product offerings infringe any valid U.S.
patent in existence as of the date of this Agreement, a copyright, a
trade secret, or other intellectual property right of any third party,
the party who has provided the service, product or any of the printCafe
Products ("Indemnifying Party") will defend such claim at its expense
and will pay any costs or damages (including counsel fees and court
costs) that may be finally awarded against the Indemnified Party. The
Indemnifying Party will not indemnify the Indemnified Party, however, to
the extent that the claim of infringement is caused by: (1) the
Indemnified Party's misuse or modification of the service, product or
any of the printCafe Products; (2) the Indemnified Party's use of the
service, product or any of the printCafe Products in combination with
any product or information not owned or developed by the Indemnifying
Party; (3) the combination, operation or use of the services, products
or any of the printCafe Products with other products not furnished by
the Indemnifying Party, where services, products or any of the printCafe
Products otherwise would not itself be infringing; or (4) use by the
Indemnified Party of other than a current unaltered version or release
of services, products or any of the printCafe Products, provided that
such version or release had been available to the Indemnified Party on
commercially reasonable terms.
SECTION 10 - LIMITATION OF LIABILITY
10.1 In no event shall either party be liable to the other for any indirect,
special, incidental, consequential, exemplary or punitive loss, damages
or expenses (including lost profits or savings).
10.2 Any action by either party must be brought within two (2) years after
the cause of action arose.
SECTION 11 - TERM AND TERMINATION
11.1 This Agreement shall remain in effect for an initial period of two (2)
years from the Effective Date, and shall automatically renew for
consecutive one (1) year periods thereafter unless terminated by a party
as provided for herein.
11.2 Either party shall have the right to terminate this Agreement:
14
15
- In the event the other party defaults in the performance of any
material obligation hereunder and such default is not cured by the
breaching party to the non-defaulting party's reasonable
satisfaction within thirty (30) days of receiving written notice of
the breach;
- For any reason after the eighteen months following the Effective
Date of this Agreement with a ninety (90) day prior written notice;
or
- In the event of the liquidation, insolvency or bankruptcy of the
other party;
- If there is a change of a majority controlling interest or majority
ownership of the other party with the exception of Creo SRL gaining
majority controlling interest and majority ownership of printCafe.
11.3 Xxxxxxxx Consulting shall have the right to immediately terminate this
Agreement by providing written notice to printCafe in the event (i) all
or a majority and controlling portion of the ownership rights in the
Software and/or Product Offering are transferred or assigned by
printCafe to a non-affiliated third party, or (ii) printCafe transfers
or assigns a material right or obligation under this Agreement.
printCafe shall have the right to immediately terminate this Agreement
by providing written notice to Xxxxxxxx Consulting in the event Xxxxxxxx
Consulting transfers or assigns a material right or obligation under
this Agreement.
11.4 Upon termination or expiration of this Agreement, each party shall
immediately:
11.4.1 Cease holding itself out, in any manner, as affiliated with the
other party, except as may be provided in any surviving separate
agreement;
11.4.2 Discontinue any and all use of trade names and/or trademarks as
provided for under this Agreement, except as necessary for either
party to fulfill its obligations to a Sales Prospect; and
11.4.3 Return to the other party or destroy the other party's
Confidential Information in its possession unless this Agreement
provides otherwise.
11.5 Termination of this Agreement (i) shall not release either party from
obligations to license the Software and/or Product Offering made prior
to the receipt of any notice of termination, and (ii) shall not affect
existing licenses or subscriptions arrangements for the Software and
Product Offering. Notwithstanding the provisions of this Section 11,
each party may continue to exercise the rights and licenses granted
hereunder to the extent necessary to allow such party to fulfill its
obligations under agreements with Clients or included in any proposal to
a Sales Prospect that was outstanding at the time of termination.
Xxxxxxxx Consulting specifically shall retain the right to use the
Software and/or Product Offering for as long as necessary to meet any
obligations or Services that Xxxxxxxx Consulting has undertaken.
Xxxxxxxx Consulting specifically shall retain the limited right to use
the Software and/or Product Offering for as long as necessary to
complete any marketing plans with Sales Prospects which commenced prior
to the termination of this Agreement.
15
16
11.6 Termination of this Agreement shall not affect any other agreement
separately entered into by Xxxxxxxx Consulting and printCafe.
11.7 In the event of a breach of this Agreement, the breaching party shall
provide reasonable assistance to the non-breaching party in fulfilling
the non-breaching party's obligations.
SECTION 12 - MISCELLANEOUS
12.1 Following execution of this Agreement, Xxxxxxxx Consulting and printCafe
agree to establish a steering committee comprised of mutually agreed
upon executive level representatives from both organizations to oversee
and provide guidance on relationship matters as set forth in this
Agreement. In the event of a dispute, the parties agree that in the
event of any dispute or alleged breach under this Agreement, they will
work together in good faith first, to resolve the matter internally by
escalating it first to the steering committee, next to other higher
levels of management, and then, if necessary, to use a mutually agreed
alternative dispute resolution technique prior to resorting to
litigation.
12.2 Neither party may assign any of its rights or obligations under this
Agreement without the prior written consent of the other, provided,
however, that Xxxxxxxx Consulting may cause this Agreement, in part or
whole, to be performed by any affiliate of Xxxxxxxx Consulting in
various countries around the world and may assign its rights and
obligations hereunder to such an affiliate.
12.3 Neither party shall be liable for any delays or failures in performance
due to circumstances beyond its reasonable control, including failures
of computers, computer-related equipment, hardware or software.
12.4 If any provision of this Agreement is found to be prohibited by or
invalid under applicable law, such provision shall be ineffective to the
extent of such prohibition or invalidity, without invalidating the
remainder of such provision or the remaining provisions of the
Agreement.
12.5 Sections 1, 5, 6, 7, 8, 9, 10, 11 and 12 extend beyond the expiration or
termination of this Agreement and shall survive and remain in effect
beyond any expiration or termination. The license rights granted to
Xxxxxxxx Consulting in Section 2 shall be immediately revoked upon any
termination of this Agreement, except as expressly set forth in Section
11.5.
12.6 This Agreement is governed by and shall be construed in accordance with
the laws of Illinois.
16
17
12.7 This Agreement may be executed in one or more counterparts, each of
which shall be considered an original counterpart, and shall become a
binding agreement when each party shall have executed one counterpart.
12.8 Captions appearing in this Agreement are for convenience only and shall
not be deemed to explain, limit or amplify the provisions hereof.
12.9 Any formal notice or other significant communication given pursuant to
this Agreement shall be in writing and shall be deemed to have been
received either when delivered personally to the party for whom
intended, or five (5) days following the deposit of the same into the
United States mail (certified mail, return receipt requested, or first
class postage prepaid), addressed to such party at the address set forth
below:
For printCafe:
printCafe Services, Inc.
00 Xxxxxx Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attn: Xxxx Xxxx
For Xxxxxxxx Consulting:
Attn: Xxxxxxx Xxxxxxx
00 X. Xxxxxx
Xxxxxxx, XX 00000
Either party may designate a different address by notice to the other
given in accordance herewith.
12.10 Nothing contained in this Agreement shall be deemed or construed as
creating a joint venture or partnership between printCafe and Xxxxxxxx
Consulting. Except as specifically set forth herein, neither party shall
have the power to control the activities and operations of, or
contractually bind or commit, the other party, and their status with
respect to one another is that of independent contractors.
12.11 During the term of this Agreement and for one (1) year after its
expiration or termination, neither party shall knowingly solicit for
employment any person employed by the other who was directly involved in
the activities provided for in this Agreement. In addition, neither
party shall procure any third party to solicit the other's employees.
The foregoing shall not prohibit the hiring of personnel of the other
who respond to general recruiting efforts not targeting the other party,
or the hiring of the other party's personnel who make unsolicited
inquiries about employment.
17
18
12.12 This Agreement contains the entire understanding of the parties with
regard to the subject matter contained herein. printCafe and Xxxxxxxx
Consulting may, by mutual agreement in writing, amend, modify and
supplement this Agreement. The failure of any party hereto to enforce at
any time any provision of this Agreement shall not be construed to be a
waiver of such provision, nor in any way to affect the validity of this
Agreement or any part hereof or the right of such party thereafter to
enforce each and every such provision. No waiver of any breach of this
Agreement shall be held to constitute a waiver of any other or
subsequent breach.
18
19
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
date first written above.
PRINTCAFE SYSTEMS, INC. XXXXXXXX CONSULTING LLP
By:_____________________________ By:________________________________
Name:___________________________ Name: Xxxxxxx X. Xxxxxxx
Title:__________________________ Title: Partner
Date: _________________________ Date:______________________________
19
