EXHIBIT 5
EMPLOYMENT AGREEMENT
This Employment Agreement (the "Agreement") is made and entered into by and
between iPrint Technologies, inc., a Delaware corporation (the "Company") and
Xxxxx Xxxx ("Employee"). This Agreement will become effective at the Effective
Time as defined below. Employee and Company are individually referred to herein
as a "Party" and collectively as the "Parties".
RECITALS
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A. Concurrently with the execution and delivery of this Agreement, the
Company, Wood Alliance, Inc., a California corporation, (the "Target"), and
Metal Acquisition Corporation, a Delaware corporation and wholly-owned
subsidiary of the Company ("Sub"), are entering into an Agreement and Plan of
Reorganization, dated as of the date hereof (the "Reorganization Agreement"),
which provides, among other things, upon the terms and subject to the conditions
thereof, for the merger of Sub with and into Target in accordance with the laws
of the State of Delaware and State of California (the "Merger");
B. the Company desires to employ Employee after the Merger is consummated
and Employee's willingness to serve as an employee of the Company on the terms
specified herein was a material factor in inducing the Company to enter into the
Reorganization Agreement;
C. the Parties desire to set forth the terms of Employee's service as an
employee of the Company following the Effective Time (as defined in the
Reorganization Agreement and used herein with the same meaning), and Employee is
willing to perform such services, all on the terms set forth herein;
D. it is a condition to closing under the Reorganization Agreement that
this Agreement be in full force and effect as of such closing;
E. concurrently with the execution and delivery of this Agreement, the
Parties are entering into an Employee Innovations and Proprietary Rights
Assignment Agreement (the "Proprietary Rights Agreement") to become effective
upon Employee's employment under this Agreement; and
F. the Parties intend that this Agreement shall supersede and replace any
similar agreement that presently exists or may have previously existed between
Employee and Target or the Company.
AGREEMENT
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1. POSITION AND DUTIES: Employee will be employed by the Company,
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effective as of the Effective Time, as its President and Chief Executive Officer
reporting to the Company's Board of Directors (the "Board"), or such other
executive position as defined by the Board and mutually agreed upon in writing
by Employee. Employee accepts employment with the Company
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on the terms and conditions set forth in this Agreement, and Employee agrees to
devote his full business time, energy and skill to his duties at the Company.
These duties shall include such duties consistent with Employee's position, as
well as any other duties that may be assigned to Employee from time to time by
the Board.
2. Compensation. Employee will be compensated by the Company for
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Employee's services as follows:
(a) Salary: Employee will be paid a monthly salary of $20,833.33,
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less applicable withholding, in accordance with the Company's normal payroll
procedures. Employee's salary will be reviewed by the Board from time to time,
and may be subject to adjustment based upon various factors including, but not
limited to, Employee's performance and the Company's profitability. Any
adjustment to Employee's salary shall be in the sole discretion of the Board.
(b) MBO Bonus: Employee will be eligible to receive annual bonuses of
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up to 30 percent of Employee's annual salary based upon the Company's
achievement of various financial and/or other goals established by the Board. In
establishing MBO goals and award levels, the Board may consider, among other
things, the financial condition of the Company, including its cash position, and
whether MBO bonuses should be payable in cash or other consideration. The
objectives that govern Employee's bonus eligibility for each year will be
communicated to Employee in writing by the Board within a reasonable time (not
to exceed 60 days unless otherwise mutually agreed) following the commencement
of the applicable year. To the extent earned (which requires that Employee be
employed by the Company on the last day of the applicable year unless Employee
was terminated without cause or resigned for Good Reason, as defined below),
bonuses will be paid to Employee on the later of 30 days after (i) the end of
the applicable year, or (ii) the date on which the financial or other data
necessary to determine Employee's entitlement to the bonus becomes available.
All MBO bonuses will be subject to applicable withholding.
(c) Benefits: Employee will have the right, on the same basis as
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other employees of the Company, to participate in and to receive benefits under
any Company medical, disability or other group insurance plans, as well as under
the Company's business expense reimbursement and other policies. Employee will
accrue paid vacation in accordance with the Company's vacation policy at the
current rate of 15 days per year. The Company agrees that it will procure for
Employee a long-term disability insurance policy, up to a maximum cost to the
Company of $5,000 per year.
(d) Stock Options: Subject to the Board's approval, Employee will be
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granted an option to purchase 350,000 shares of the Company's common stock under
the Company's stock option plan at an exercise price equal to the fair market
value of that stock on the grant date (the "Option"). Provided Employee remains
employed by the Company, this option will vest over a four year period, with
87,500 shares vesting on the first anniversary of the commencement of Employee's
employment and 7,292 shares vesting for each full month of employment
thereafter.
(e) Reciprocity of Future Compensation and Benefits. Employee will
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have the right to receive from the Company, on the same basis as Royal Farros,
and for so long as Xx. Xxxxxx
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remains a full-time, exempt employee of the Company, any compensation and
benefits, including but not limited to, salary increases, bonuses, stock option
grants and increases in vacation accrual which the Board, in its sole
discretion, may grant from time to time to Xx. Xxxxxx.
3. Term of Employment. Employee's employment with the Company will be for
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no specified term, and may be terminated by Employee or the Company at any time,
with or without cause, subject to the provisions of Paragraphs 4 and 5 below.
4. Voluntary Termination. In the event that Employee voluntarily resigns
---------------------
without Good Reason, as defined below, from Employee's employment with the
Company, Employee will be entitled to no compensation or benefits from the
Company other than those earned under Paragraph 2 through the date of Employee's
termination. Employee agrees that if Employee voluntarily terminates Employee's
employment with the Company for any reason, Employee will provide the Company
with 60 days' written notice of Employee's resignation. The Company may, in its
sole discretion, relieve Employee of his duties at an earlier date. However, in
such case, Employee will remain an employee and will continue to receive all
compensation and other benefits of employment through the end of the 60-day
notice period.
For purposes of this Agreement, "Good Reason" shall mean: (a) any failure
by the Company to comply with the material terms of this Agreement; (b) any
request by the Company that Employee perform any act which is illegal; (c) any
material reduction in Employee's responsibilities, duties or authority (unless
consented to in writing by Employee); (d) any reduction in Employee's base
salary below the figure stated in Paragraph 2(a) except as part of any overall
cost reduction measures implemented by the Board; or (e) relocation of Employee
by the Company to a location more than 100 miles from Santa Clara, California.
5. Other Termination. Employee's employment may be terminated under the
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circumstances set forth below.
(a) Termination for Cause: If Employee's employment is terminated by
---------------------
the Company for cause as defined below, Employee shall be entitled to no
compensation or benefits from the Company other than those earned under
Paragraph 2 through the date of Employee's termination for cause.
For purposes of this Agreement, a termination "for cause" occurs if
Employee is terminated as a result of: (i) a material act of theft, dishonesty
or falsification of any employment or Company records by Employee, or a
violation of Company policy that causes material harm; (ii) improper disclosure
by Employee of material Company confidential or proprietary information that
results in material harm to the Company; (iii) any action by Employee which is
intended to and does have a material detrimental effect on the Company's
reputation or business; (iv) Employee's abandonment of his job duties or
persistent failure or inability or refusal to perform the essential duties of
his position after written notice from the Company to Employee of, and a
reasonable opportunity to cure, such failure or inability or refusal; or (v)
Employee's conviction (including any plea of guilty or no contest) for any
misdemeanor involving theft or dishonesty or any felony if, in either case, it
impairs Employee's ability to perform Employee's duties under this Agreement.
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(b) Termination as a Result of Death or Disability: In the event that
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Employee's employment terminates as a result of Employee's death or disability
(meaning that, with reasonable accommodation, Employee is unable to perform
Employee's duties for any 90 days in any one-year period as a result of a
physical and/or mental impairment), Employee will be entitled to no compensation
or benefits from the Company other than those earned under Paragraph 2 through
the date of Employee's termination. Company and Employee agree that, in light of
the responsibilities associated with the position of CEO and the importance of
the leadership of the CEO to the success of the Company, it would be an undue
hardship on the Company to grant Employee leave of more than 90 days in any one-
year period as a result of a physical and/or mental impairment.
(c) Termination Without Cause or Resignation for Good Reason: If
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Employee's employment is terminated by the Company without cause (and not as a
result of Employee's death or disability) or if Employee resigns for Good
Reason, and if Employee signs a general release of known and unknown claims in
the form attached hereto as Exhibit A, Employee will receive a severance package
consisting of the following:
(i) Continued payment of Employee's base salary (the "Severance
Payment"), at the final rate, less applicable withholding, for one year from the
termination of Employee's employment with the Company. These payments will be
made in accordance with the Company's normal payroll procedures. Any amounts
Employee owes the Company at the time of Employee's termination may be deducted
in equal installments from the Severance Payment. Employee understands and
agrees that if he violates Paragraph 6, 7 or 8, below, the Company will have no
obligation to continue the Severance Payment.
(ii) Pro rata payment of the MOB bonus described in Paragraph
2(b) based on the number of days of the applicable year completed on the date
Employee's employment ends. This payment will be based on the extent of
achievement of the objectives for the full year and will be made in accordance
with the time periods established in Paragraph 2(b).
(iii) If Employee elects continuation of coverage under COBRA,
contribution by the Company to the COBRA premium payments for one year from the
termination of Employee's employment with the Company. The Company will pay an
amount equal to the portion of the premium the Company would have paid if the
Employee had remained employed.
(iv) Accelerated vesting of the options granted under Paragraph
2(d) so that the total number of vested shares is calculated as if the
Employee's employment terminated one year from the termination of Employee's
employment with the Company.
6. Other Activities. In order to protect the Company's valuable
----------------
proprietary information, Employee agrees that during Employee's employment and
for a period of one year following the termination of Employee's employment with
the Company for any reason, Employee will not, as a compensated or uncompensated
officer, director, consultant, advisor, partner, joint venturer, investor,
independent contractor, employee or otherwise, provide any labor, services,
advice or assistance to any of the following entities, which are direct
competitors of the Company:
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Halo Branded Solutions, Cyrk, Xxxx Xxxxx, Inc., Xxxxxx Corporation, Made to
Order, and 4 imprint, or start or form a competing entity. Employee acknowledges
and agrees that the restrictions contained in the preceding sentence are
reasonable and necessary, as there is a significant risk that Employee's
provision of labor, services, advice or assistance to any of those competitors
could result in the inevitable disclosure of the Company's proprietary
information. Employee further acknowledges and agrees that the restrictions
contained in this paragraph will not preclude Employee from engaging in any
trade, business or profession that Employee is qualified to engage in. The
restrictions in this paragraph, as well as Paragraphs 7 and 8, are to be
interpreted without regard to the fact of the merger, but instead are to be
enforced only to the extent that they are enforceable in California against any
management level employee. The restrictions imposed on Employee under these
Paragraphs are not at any time to be interpreted to be greater than the
restriction imposed on Xx. Xxxxxx under similar agreements between the Company
and Xx. Xxxxxx.
7. Covenant Not to Solicit Employees, Sales Representatives or
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Consultants. Employee further agrees that during his employment with the Company
-----------
and for a period ending one year following the termination of Employee's
employment with the Company for any reason, he will not directly or indirectly
recruit, induce or attempt to persuade any person who on the date hereof is, or
subsequent thereto becomes, an employee, sales representative or consultant of
the Company to terminate his or her relationship with the Company.
8. Covenant Not to Solicit Customers or Clients. Employee further agrees
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that during his employment with the Company and for a period ending one year
following the termination of Employee's employment with the Company for any
reason, he will not directly or indirectly, either on his own behalf or on
behalf of any other person, firm or corporation, divert or take away, or attempt
to divert or take away, or call on or solicit, or attempt to call on or solicit,
any of the Company's customers or clients.
9. Dispute Resolution. In the event of any dispute or claim relating to
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or arising out of Employee's employment relationship with the Company, this
agreement, or the termination of Employee's employment with the Company for any
reason (including, but not limited to, any claims of breach of contract,
wrongful termination or age, sex, race, sexual orientation, disability or other
discrimination or harassment), Employee and the Company agree that all such
disputes shall be fully, finally and exclusively resolved by binding arbitration
conducted by the American Arbitration Association in Santa Xxxxx County,
California. Employee and the Company hereby knowingly and willingly waive
Employee's respective rights to have any such disputes or claims tried to a
judge or jury. Provided, however, that this arbitration provision shall not
apply to any claims for injunctive relief.
10. Severability. If any aspect of this Agreement is deemed invalid,
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illegal or unenforceable, such aspect shall be modified so as to make it valid,
legal and enforceable, and the validity, legality and enforceability of the
remaining provisions of this Agreement shall not in any way be affected.
11. Assignment. In view of the personal nature of the services to be
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performed under this Agreement by Employee, Employee cannot assign or transfer
any of Employee's obligations under this Agreement.
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12. Interpretation. This Agreement shall be interpreted in accordance
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with and governed by the laws of the State of California.
13. Construction. This Agreement shall be deemed drafted by both Parties
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and shall not be construed against either Party as the drafter of the document.
14. Entire Agreement. This Agreement and the agreements referred to above
----------------
constitute the entire agreement between Employee and the Company regarding the
terms and conditions of Employee's employment, and they supersede all prior
negotiations, representations or agreements between Employee and the Company
regarding Employee's employment, whether written or oral.
15. Modification. This Agreement may only be modified or amended by a
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supplemental written agreement signed by Employee and an authorized
representative of the Board.
16. Attorneys' Fees. In the event of any such arbitration or other legal
---------------
proceeding to enforce or interpret this Agreement, except relating to Paragraphs
6, 7 and 8, the prevailing party shall recover his or its reasonable attorneys'
fees, except expenses, and costs, including arbitration fees.
17. Attorney Consultation. Employee represents that he has read this
---------------------
Agreement and all related attachments and documents and that he has had the
opportunity, whether or not such opportunity was taken, to consult with legal
counsel of his own choosing.
18. Effectiveness of the Agreement. The Agreement shall automatically,
------------------------------
without any further act on the part of the Parties, become effective at the
Effective Time. Automatically upon the termination of the Reorganization
Agreement for any reason prior to the Effective Time, this Agreement shall
terminate without any further obligation of either Party.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
and year written below.
iPRINT TECHNOLOGIES, iNC.
Date: June 23, 2001 By: /s/ XXXXX XXXXXXX
-------------------------------- ------------------------------
Its: CFO
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EMPLOYEE
Date: June 23, 2001 /s/ XXXXX XXXX
-------------------------------- ------------------------------
Xxxxx Xxxx
Attachment: Exhibit A - General Release
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Exhibit A
General Release
Employee and his successors release the Company and its shareholders,
investors, directors, officers, employees, agents, attorneys, insurers, legal
successors and assigns of and from any and all claims, actions and causes of
action, whether now known or unknown, which Employee now has, or at any other
time had, or shall or may have against those released parties based upon or
arising from or related to his employment with the Company and/or the
termination of his employment with the Company, including, but not limited to,
any claims of breach of contract, wrongful termination, retaliation, fraud,
defamation, infliction of emotional distress or national origin, race, age, sex,
sexual orientation, disability or other discrimination or harassment under the
Civil Rights Act of 1964, the Age Discrimination In Employment Act of 1967, the
Americans with Disabilities Act, the Fair Employment and Housing Act or any
other applicable law or statute.
Employee acknowledges that he has read section 1542 of the Civil Code of
the State of California, which states in full:
A general release does not extend to claims which the creditor does
not know or suspect to exist in his favor at the time of executing the
release, which if known by him must have materially affected his
settlement with the debtor.
Employee waives any rights that he has or may have under section 1542, or any
similar provision of the laws of any other applicable jurisdiction, to the full
extent that he may lawfully waive such rights pertaining to this general release
of claims, and affirms that he is releasing all known and unknown claims that he
has or may have against the parties listed above.
This release does not extend to: 1) any right or claim that Employee may
have arising from acts or omissions to act after the date of this Release; 2)
any claim by the Employee to vested benefits which would otherwise be available
under any Company sponsored employee benefit plan including, without limitation,
any 401k plan, any employee stock ownership plan, any incentive or other stock
option plan or any insurance plan; 3) any right the Employee would otherwise
have to defense or indemnification in the event of a claim against the Employee
by a third party arising out of acts or omissions within the course and scope of
his employment; or 4) any claims arising out of or related to transactions or
agreements between Employee and the parties released other than the employment
relationship or the termination of that relationship.
EMPLOYEE UNDERSTANDS THAT HE SHOULD CONSULT WITH AN ATTORNEY PRIOR TO
SIGNING THIS RELEASE AND THAT HE IS GIVING UP ANY LEGAL CLAIMS HE HAS AGAINST
THE PARTIES RELEASED ABOVE WHICH ARE BASED UPON OR ARISE FROM OR ARE RELATED TO
HIS EMPLOYMENT WITH THE COMPANY AND/OR THE TERMINATION OF HIS EMPLOYMENT WITH
THE COMPANY BY SIGNING THIS RELEASE. EMPLOYEE FURTHER UNDERSTANDS THAT HE MAY
HAVE UP TO 21 DAYS TO CONSIDER THIS RELEASE, THAT HE MAY
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REVOKE IT AT ANY TIME DURING THE 7 DAYS AFTER HE SIGNS IT, AND THAT IT SHALL NOT
BECOME EFFECTIVE UNTIL THAT 7-DAY PERIOD HAS PASSED. EMPLOYEE ACKNOWLEDGES THAT
HE IS SIGNING THIS RELEASE KNOWINGLY, WILLINGLY AND VOLUNTARILY IN EXCHANGE FOR
THE COMPENSATION AND BENEFITS DESCRIBED IN PARAGRAPH 5(c) OF THE EMPLOYMENT
AGREEMENT.
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EMPLOYEE INNOVATIONS AND PROPRIETARY RIGHTS
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ASSIGNMENT AGREEMENT
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This Agreement shall automatically, without any further act on the part of
the parties hereto, become effective at the Effective Time (as defined in the
Reorganization Agreement and used herein with the same meaning) and is intended
to formalize in writing certain understandings and procedures which have been in
effect since the time I was initially employed by iPrint Technologies, inc., a
Delaware corporation, and applies to all employment by its subsidiaries and any
and all entities merged into or with those subsidiaries ("Company"). In return
for my new or continued employment by Company and other good and valuable
consideration, the receipt and sufficiency of which I hereby acknowledge, I
acknowledge and agree that:
1. Duties; At-Will Employment; No Conflict. I will perform for Company
---------------------------------------
such duties as may be designated by Company from time to time. I agree that my
employment with Company is for no specified term, and may be terminated by
Company or by me at any time, with or without cause, in accordance with the
terms of my Employment Agreement signed concurrently with this agreement. During
my period of employment by Company, I will devote my best efforts to the
interests of Company and will not engage in other employment or in any
activities determined by Company to be detrimental to the best interests of
Company without the prior written consent of Company.
2. Prior Work. All previous Proprietary Information and/or Innovations
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(as defined in Sections 3 and 6 below) which I may have solely or jointly
developed or created in the course of or during the period of my work for
Company relating in any way to the conception, reduction to practice, creation,
derivation, design, development, manufacture, sale or support of products or
services for Company is the property of Company, and I hereby assign to Company
all of my right, title and interest in and to such previous work.
3. Proprietary Information. My employment creates a relationship of
-----------------------
confidence and trust between Company and me with respect to any information:
(a) Applicable to the business of Company; or
(b) Applicable to the business of any client or customer of Company,
which may be made known to me by Company or by any client or customer of
Company, or learned by me in such context during the period of my employment.
All such information which has commercial value in the business in which Company
is engaged is hereinafter called "Proprietary Information." By way of
illustration, but not limitation, Proprietary Information includes any and all
technical and non-technical information including patent, copyright, trade
secret, and proprietary information, techniques, sketches, drawings, models,
inventions, know-how, processes, apparatus, equipment, algorithms, software
programs, software source documents, and formulae related to the current, future
and proposed products and services of Company, and includes, without limitation,
respective information concerning research, experimental work, development,
design details and specifications, engineering, financial information,
procurement requirements, purchasing manufacturing, customer lists, business
forecasts, sales and merchandising and marketing plans and information.
"Proprietary Information" also includes proprietary or confidential information
of any third party who may disclose such information to Company or to me in the
course of Company's business.
4. Ownership and Nondisclosure of Proprietary Information. All
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Proprietary Information is the sole property of Company, Company's assigns, and
Company's customers, and Company, Company's
1
assigns and Company's customers shall be the sole and exclusive owner of all
patents, copyrights, mask works, trade secrets and other rights in the
Proprietary Information. I hereby do and will assign to Company all rights,
title and interest I may have or acquire in the Proprietary Information. At all
times, both during my employment by Company and after termination of such
employment, I will keep in confidence and trust all Proprietary Information, and
I will not use or disclose any Proprietary Information or anything directly
relating to Proprietary Information without the written consent of Company,
except as may be necessary in the ordinary course of performing my duties as an
employee of Company. These obligations regarding Proprietary Information do not
apply to information, that would otherwise be deemed to be Proprietary
Information under the terms of this Agreement, that I created before my
employment with Company and have not assigned to Company ("Prior Information"),
that I received without restriction from a third party who was authorized to
disclose it, or that is generally known to the public.
5. Ownership and Return of Materials. All materials (including, without
---------------------------------
limitation, documents, drawings, models, apparatus, sketches, designs, lists,
and all other tangible media of expression) furnished to me by Company shall
remain the property of Company. Upon termination of my employment, or at any
time on the request of Company before termination, I will promptly (but no later
than five (5) days after the earlier of my employment's termination or Company's
request) destroy or deliver to Company, at Company's option, (a) all materials
furnished to me by Company, (b) all tangible media of expression which are in my
possession and which incorporate any Proprietary Information or otherwise relate
to Company's business, and (c) written certification of my compliance with my
obligations under this sentence.
6. Innovations. As used in this Agreement, the term "Innovations" means
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all processes, machines, manufactures, compositions of matter, improvements,
inventions (whether or not protectable under patent laws), works of authorship,
information fixed in any tangible medium of expression (whether or not
protectable under copyright laws), moral rights, mask works, trademarks, trade
names, trade dress, trade secrets, know-how, ideas (whether or not protectable
under trade secret laws), and all other subject matter protectable under patent,
copyright, moral right, mask work, trademark, trade secret or other laws, and
includes without limitation all new or useful art, combinations, discoveries,
formulae, manufacturing techniques, technical developments, discoveries,
artwork, software, and designs. "Innovations" includes "Inventions," which is
defined to mean any inventions protected under patent laws.
7. Disclosure of Prior Innovations. I have identified on Exhibit A
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("Prior Innovations") attached hereto all Innovations and/or Prior Information,
applicable to the business of Company or relating in any way to Company's
business or demonstrably anticipated research and development or business, which
were conceived, reduced to practice, created, derived, developed, or made by me
prior to my initial employment with Company (collectively, the "Prior
Innovations"), and I represent that such list is complete. I represent that I
have no rights in any such Innovations other than those Prior Innovations
specified in Exhibit A ("Prior Innovations"). If there is no such list on
Exhibit A ("Prior Innovations"), I represent that I have neither conceived,
reduced to practice, created, derived, developed nor made any such Prior
Innovations at the time of signing this Agreement.
8. Assignment of Innovations; License of Prior Innovations. I hereby
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agree promptly to disclose and describe to Company, and I hereby do and will
assign to Company or Company's designee my entire right, title, and interest in
and to, (a) each of the Innovations (including Inventions), and any associated
intellectual property rights, which I may solely or jointly conceive, reduce to
practice, create, derive, develop or make during the period of my employment
with Company, which either (i) relate, at the time of conception, reduction to
practice, creation, derivation, development, or making of such Innovation, to
Company's business or actual or demonstrably anticipated research or
development, or (ii) were developed on any amount of Company's time or with the
use of any of Company's equipment,
2
supplies, facilities or trade secret information, or (iii) resulted from any
work I performed for Company, and (b) each of the Innovations which is not an
Invention (as demonstrated by me by evidence meeting the clear and convincing
standard of proof), and any associated intellectual property rights, which I may
solely or jointly conceive, develop, reduce to practice, create, derive,
develop, or make during the period of my employment with Company, which are
applicable to the business of Company (collectively, the Innovations identified
in clauses (a) and (b) are hereinafter the "Company Innovations"). To the extent
any of the rights, title and interest in and to Company Innovations cannot be
assigned by me to Company, I hereby grant to Company an exclusive, royalty-free,
transferable, irrevocable, worldwide license (with rights to sublicense through
multiple tiers of sublicensees) to practice such non-assignable rights, title
and interest. To the extent any of the rights, title and interest in and to
Company Innovations can be neither assigned nor licensed by me to Company, I
hereby irrevocably waive and agree never to assert such non-assignable and non-
licensable rights, title and interest against Company or any of Company's
successors in interest to such non-assignable and non-licensable rights. I
hereby grant to Company or Company's designees a royalty free, irrevocable,
worldwide license (with rights to sublicense through multiple tiers of
sublicensees) to practice all applicable patent, copyright, moral right, mask
work, trade secret and other intellectual property rights relating to any Prior
Innovations which I incorporate, or permit to be incorporated, in any Company
Innovations. Notwithstanding the foregoing, I agree that I will not incorporate,
or permit to be incorporated, any Prior Innovations in any Company Innovations
without Company's prior written consent.
9. Future Innovations. I recognize that Innovations or Proprietary
------------------
Information relating to my activities while working for Company and conceived,
reduced to practice, created, derived, developed, or made by me, alone or with
others, within three (3) months after termination of my employment may have been
conceived, reduced to practice, created, derived, developed, or made, as
applicable, in significant part while employed by Company. Accordingly, I agree
that such Innovations and Proprietary Information shall be presumed to have been
conceived, reduced to practice, created, derived, developed, or made, as
applicable, during my employment with Company and are to be promptly assigned to
Company unless and until I have established the contrary by written evidence
satisfying the clear and convincing standard of proof.
10. Cooperation in Perfecting Rights to Proprietary Information and
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Innovations.
-----------
(a) I agree to perform, during and after my employment, all acts
deemed necessary or desirable by Company to permit and assist Company, at
Company's expense, in obtaining and enforcing the full benefits, enjoyment,
rights and title throughout the world in the Proprietary Information and
Innovations assigned or licensed to, or whose rights are irrevocably waived and
shall not be asserted against, Company under this Agreement. Such acts may
include, but are not limited to, execution of documents and assistance or
cooperation (i) in the filing, prosecution, registration, and memorialization of
assignment of any applicable patents, copyrights, mask work, or other
applications, (ii) in the enforcement of any applicable patents, copyrights,
mask work, moral rights, trade secrets, or other proprietary rights, and (iii)
in other legal proceedings related to the Proprietary Information or
Innovations.
(b) In the event that Company is unable for any reason to secure my
signature to any document required to file, prosecute, register, or memorialize
the assignment of any patent, copyright, mask work or other applications or to
enforce any patent, copyright, mask work, moral right, trade secret or other
proprietary right under any Proprietary Information (including improvements
thereof) or any Innovations (including derivative works, improvements, renewals,
extensions, continuations, divisionals, continuations in part, continuing patent
applications, reissues, and reexaminations thereof), I hereby irrevocably
designate and appoint Company and Company's duly authorized officers and agents
as my agents and attorneys-in-fact to act for and on my behalf and instead of
me, (i) to execute, file, prosecute, register and memorialize the assignment of
any such application, (ii) to execute and file any
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documentation required for such enforcement, and (iii) to do all other lawfully
permitted acts to further the filing, prosecution, registration, memorialization
of assignment, issuance, and enforcement of patents, copyrights, mask works,
moral rights, trade secrets or other rights under the Proprietary Information,
or Innovations, all with the same legal force and effect as if executed by me.
11. No Violation of Rights of Third Parties. My performance of all the
---------------------------------------
terms of this Agreement and as an employee of Company does not and will not
breach any agreement to keep in confidence proprietary information, knowledge or
data acquired by me prior to my employment with Company, and I will not disclose
to Company, or induce Company to use, any confidential or proprietary
information or material belonging to any previous employer or others. I am not a
party to any other agreement which will interfere with my full compliance with
this Agreement. I agree not to enter into any agreement, whether written or
oral, in conflict with the provisions of this Agreement.
12. Survival. This Agreement (a) shall survive my employment by Company;
--------
(b) does not in any way restrict my right or the right of Company to terminate
my employment at any time, for any reason or for no reason; (c) inures to the
benefit of successors and assigns of Company; and (d) is binding upon my heirs
and legal representatives.
13. Nonassignable Inventions. This Agreement does not apply to an
------------------------
Invention which qualifies fully as a nonassignable invention under the
provisions of Section 2870 of the California Labor Code. I acknowledge that a
condition for an Invention to qualify fully as a non-assignable invention under
the provisions of Section 2870 of the California Labor Code is that the
invention must be protected under patent laws. I have reviewed the notification
in Exhibit B ("Limited Exclusion Notification") and agree that my signature
acknowledges receipt of the notification. However, I agree to disclose promptly
in writing to Company all Innovations (including Inventions) conceived, reduced
to practice, created, derived, developed, or made by me during the term of my
employment and for three (3) months thereafter, whether or not I believe such
Innovations are subject to this Agreement, to permit a determination by Company
as to whether or not the Innovations should be the property of Company. Any such
information will be received in confidence by Company.
14. Injunctive Relief. A breach of any of the promises or agreements
-----------------
contained herein may result in irreparable and continuing damage to Company for
which there may be no adequate remedy at law, and Company may be entitled to
injunctive relief and/or a decree for specific performance, and such other
relief as may be proper (including monetary damages if appropriate).
15. Notices. Any notice required or permitted by this Agreement shall be
-------
in writing and shall be delivered as follows, with notice deemed given as
indicated: (a) by personal delivery, when delivered personally; (b) by overnight
courier, upon written verification of receipt; (c) by telecopy or facsimile
transmission, upon acknowledgment of receipt of electronic transmission; or (d)
by certified or registered mail, return receipt requested, upon verification of
receipt. Notices to me shall be sent to any address in Company's records or such
other address as I may specify in writing. Notices to Company shall be sent to
Company's Human Resources Department or to such other address as Company may
specify in writing.
16. Governing Law. This Agreement shall be governed in all respects by the
-------------
laws of the United States of America and by the laws of the State of California,
as such laws are applied to agreements entered into and to be performed entirely
within California between California residents. Each of the parties irrevocably
consents to the exclusive personal jurisdiction of the federal and state courts
located in California, as applicable, for any matter arising out of or relating
to this Agreement, except that in actions seeking to enforce any order or any
judgment of such federal or state courts located in California, such personal
jurisdiction shall be nonexclusive.
4
17. Severability. If any provision of this Agreement is held by a court of
------------
law to be illegal, invalid or unenforceable, (i) that provision shall be deemed
amended to achieve as nearly as possible the same economic effect as the
original provision, and (ii) the legality, validity and enforceability of the
remaining provisions of this Agreement shall not be affected or impaired
thereby.
18. Waiver; Amendment; Modification. The waiver by Company of a term or
-------------------------------
provision of this Agreement, or of a breach of any provision of this Agreement
by me, shall not be effective unless such waiver is in writing signed by
Company. No waiver by Company of, or consent by Company to, a breach by me,
will constitute a waiver of, consent to or excuse of any other or subsequent
breach by me. This Agreement may be amended or modified only with the written
consent of both me and Company. No oral waiver, amendment or modification shall
be effective under any circumstances whatsoever.
19. Entire Agreement. This Agreement represents my entire understanding
----------------
with Company with respect to the subject matter of this Agreement and supersedes
all previous understandings, written or oral.
20. Effectiveness of the Agreement. This Agreement shall automatically,
------------------------------
without any further act on my part or the part of the Company, become effective
at the Effective Time. Automatically upon the termination of the Reorganization
Agreement for any reason prior to the Effective Time, this Agreement shall
terminate without any further obligation of either the Company or me.
I certify and acknowledge that I have carefully read all of the provisions
of this Agreement and that I understand and will fully and faithfully comply
with such provisions.
"COMPANY" EMPLOYEE:
iPRINT TECHNOLOGIES, iNC. Xxxxx Xxxx
By: /s/ XXXXX XXXXXXX By: /s/ XXXXX XXXX
------------------------------------ -------------------------------
Title CFO Title
---------------------------------- -----------------------------
Dated: June 23, 2001 Dated: June 23, 2001
--------------------------------- ----------------------------
5
Exhibit A
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PRIOR INNOVATIONS
Exhibit B
---------
LIMITED EXCLUSION NOTIFICATION
THIS IS TO NOTIFY you in accordance with Section 2872 of the California
Labor Code that the foregoing Agreement between you and Company does not require
you to assign or offer to assign to Company any invention that you developed
entirely on your own time without using Company's equipment, supplies,
facilities or trade secret information except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of the
invention to Company's business, or actual or demonstrably anticipated research
or development of Company; or
(2) Result from any work performed by you for Company.
To the extent a provision in the foregoing Agreement purports to require
you to assign an invention otherwise excluded from the preceding paragraph, the
provision is against the public policy of this state and is unenforceable.
This limited exclusion does not apply to any patent or invention covered by
a contract between Company and the United States or any of its agencies
requiring full title to such patent or invention to be in the United States.
I ACKNOWLEDGE RECEIPT of a copy of this notification.
By: /s/ XXXXX XXXX
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-----------------------------------
Xxxxx Xxxx
Date: June 23, 2001
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