EXHIBIT 10.14
CONFIDENTIAL
MARKETING AND LICENSE AGREEMENT
THIS MARKETING AND LICENSE AGREEMENT is entered into as of June 1, 2003
(the "Effective Date") by and between GENERAL PLASTIC INDUSTRIAL CO., LTD., a
Taiwan corporation having its principal place of business at 50 Tzu-Chiang Rd.,
Wu-Chi Town, Taichung County, Taiwan (hereinafter referred to as "GPI") and
Color Imaging, Inc., a Delaware corporation having its principal place of
business at 4350 Peachtree Ind. Blvd., Suite 100, Norcross, GA 30071
(hereinafter referred to as "CI"). Capitalized terms are defined in Article VII
hereof.
WHEREAS, CI wishes to acquire certain licenses and rights from GPI for
certain toner, drums, and all-in-one cartridges that GPI develops, manufactures,
and/or sells (hereinafter referred to as "Licensed Products") as further set
forth herein; and
WHEREAS, GPI wishes to grant such licenses and rights to CI, in accordance
with subject to the terms contained herein.
NOW, THEREFORE, for and in consideration of the premises and promise
contained herein and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties do hereby agree as
follows:
ARTICLE I.
LICENSE
1.1 Grant of License.
GPI hereby grants to CI an exclusive license to sell Licensed Products,
offer to sell Licensed Products, and import and export Licensed Products for use
or sale in the Field, free from suit by GPI for patent infringement in all
states of the United States and Canada.
1.2 Exclusivity. The licenses granted under Section 1.1 is exclusive to CI
in that, after the Effective Date, GPI agrees not to grant to a third party
another concurrently effective license, or option to a license, to use Licensed
Products, sell Licensed Products, offer to sell Licensed Products, or import and
export Licensed Products for use or sale in the Field in the United States and
Canada. However, GPI and CI both agree that GPI at its will can grant to a third
party another concurrently effective license, or option to a license, to use
Licensed Products, sell Licensed Products, offer to sell Licensed Products, or
import and export Licensed Products for use or sale in the Field in all
countries of the world except the United States and Canada. During the term of
this Agreement, CI agrees that it will not directly nor indirectly research,
develop, or commercialize other products for use in the Field, except in
collaboration with GPI, pursuant to this Agreement. Notwithstanding anything in
this agreement or otherwise, CI agrees that GPI retains any and all GPI's
intellectual property rights in the Licensed Products.
1.3 Delivery of Samples. During the term of this Agreement, GPI shall have
the obligation to provide sample(s) of the Licensed Products to CI upon CI's
reasonable request. To the extent CI provides sample(s) of the Licensed
Products, at no charge or cost, to customers or prospective customers so as to
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promote the sale of the Licensed Products, GPI agrees to, upon documentation
being provided to GPI by CI, credit CI for one-half of the delivered duty
related cost to CI. CI is responsible for the costs associated with delivering
the sample(s) to the customer or prospective customer.
1.4 No Further Rights. Except as expressly provided in this Article I, no
further or different license or right is granted or implied.
1.5 No Franchise. The parties agree that this Agreement shall not
constitute a franchise agreement under Florida, Georgia, New York, Delaware, or
any other state law. If the parties' relationship is deemed to be a franchise by
a court of law or other judicial body, the parties hereto expressly agree to
waive all rights and remedies which either of them may have due to any status as
a franchiser or franchisee or pursuant to the application of any franchise laws,
rules, or regulations.
ARTICLE II.
FINANCIAL TERMS
2.1 Marketing Expenses. GPI agrees to render a monthly payment in the
amount of $3,500 to CI as a consideration from GPI toward CI's marketing and
promotional expenses related to the Licensed Products. This payment shall run
from June 1, 2003 and continue thereafter for a maximum of thirty-six (36)
monthly payment. This payment shall automatically stop if this Agreement is
terminated.
2.2 Other Expenses. GPI agrees to indemnify and hold harmless CI for any
costs and expense arising from any defective Licensed Product, and/or any
recalled Licensed Product including litigation arising therefrom. GPI agrees to
credit CI for product cost, shipping and related expenses arising from any
defective Licensed Product, and/or any recalled Licensed Product.
ARTICLE III.
INTELLECTUAL PROPERTY RIGHTS
3.1 Intent. Except as expressly set forth herein, no licenses, transfers,
or other rights are granted under this Agreement.
3.2 No Assignment. The parties agree that this Agreement is a license and
is not an assignment or transfer of title to CI of GPI's ownership rights in the
Licensed Products and Technology. If any mediator, arbitrator, or tribunal
construes this document to create an assignment of any of GPI's rights in any of
the Licensed Products or Technology, CI agrees that it shall cooperate fully and
promptly in executing any documents reasonably necessary to establish title in
the Licensed Products and Technology solely in GPI, including signing formal
assignment documents. Further, in such instance, this Agreement shall be amended
in whatever respects are reasonably necessary to ensure that it is interpreted
to be a license, based on the findings of such mediator, arbitrator, or
tribunal. In the event of any proceedings instituted to settle a dispute
concerning this Agreement, CI agrees that it shall not take a position contrary
to this Section. This Section shall survive expiration or termination of this
Agreement for any reason.
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3.3 New Inventions and Materials.
(a) Ownership. All new Intellectual Property and Proprietary
Information that relates to the Licensed Products, and that is not in existence
as of Effective Date but is conceived, made, or suggested during the term hereof
by either party hereto or its employees, consultants, agents, members, managers,
officers, directors, shareholders, or contractors (collectively, "New Related
Technology"), shall be assigned to and owned by GPI and shall become immediately
subject to the license to CI in the Field as set forth herein. Each party agrees
to promptly disclose to the other party the creation, development, or discovery
of New Related Technology promptly upon the occurrence of such creation,
development, or discovery. Notwithstanding the above, the New Related Technology
does not include any toner developed by CI and any new improvements made by CI
related to making, testing, measuring, processing, and storing toner.
(b) Assignment. CI shall, and shall cause its employees, consultants,
agents, members, managers, officers, directors, shareholders, or contractors to,
execute any and all documents and take any other actions reasonably required by
GPI to ensure that all such New Related Technology described in Section 3.3(a)
is properly and validly assigned to GPI.
(c) License. GPI shall execute any and all documents and take any
other actions reasonably required by CI to ensure that all such New Related
Technology described in Section 3.3(a) becomes subject to the license to CI in
the Field granted herein.
3.4 Trademarks. Upon the request of GPI, the Managers of CI shall
collaborate in the selection of any names, trademarks, service marks, trade
dress, domain names, icons, logos, and other source-identifying elements to be
used in connection with the marketing and commercialization of the Licensed
Products in the Field (together, the "Trademarks"). GPI shall own all Trademarks
and shall have the right to apply in its own name for state, federal, and
international registration of same. At all times while the Trademarks are owned
by GPI, CI shall have a royalty-free right and license to use the Trademarks in
the marketing, promotion, registration, sale, and distribution of the Licensed
Products.
ARTICLE IV.
INFRINGEMENT
4.1 Indemnification. GPI shall defend, indemnify and hold CI, its officers,
directors, representatives, employees, and agents of the Licensed Products
harmless from and against any and all liability, losses, claims, costs, damages,
demand, penalties, or other expenses (including court costs, attorneys' fees,
costs of investigation and costs of defense and other legal expenses)
(hereinafter "Liabilities") occasioned by any real or potential claim, demand or
action (whether or not meritorious) which arises out of sale, offer for sale, or
use by its officers, directors, representatives, employees, agents of the
Licensed Products in the areas, regions and/or countries where such use, offer
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for sale or sale may infringe any patents that may cover these areas, regions
and/or countries.
4.2 Cooperation and Communication. CI shall keep GPI advised of any such
claim in writing within thirty (30) days after CI receives such claim from a
third party or knows such a claim may be made by a third party. Within ninety
(90) days after notification from CI to GPI, GPI at its sole discretion shall
decide how to respond to the third party. GPI shall keep CI advised of GPI's
decision or plans. CI shall work with and provide reasonable assistance to GPI
if GPI decides to take necessary actions. If GPI decides to take legal actions
to defend it from any such claim, GPI shall choose law firms and attorneys with
respect to such legal actions. CI shall continue to sell and/or offer for sale
of the Licensed Products during the term of this Agreement regardless whether
there is such a claim made by a third party unless GPI notifies CI in writing
otherwise.
4.3 CI's Choice. Notwithstanding the foregoing, if GPI does not provide CI
its decisions or plans within one hundred twenty (120) days after notification
from CI to GPI, CI shall have the option to take necessary actions including
legal action to defend CI from such a claim; however, CI shall consult GPI
concerning any legal actions brought by CI under this provision. CI shall
apprise GPI of its plans with respect to such legal actions, including, but not
limited to, any settlement or compromise thereof. No such settlement or
compromise shall be made or entered into by CI without GPI's prior written
approval, which shall not be unreasonably withheld. CI shall consult GPI
concerning choice of law firms and attorneys with respect to such legal actions.
CI shall defer to GPI's choice of law firms and attorneys with respect to such
legal actions. GPI shall work with and provide reasonable assistance to CI if CI
decides to take such legal actions. For such legal actions taken by CI, CI
itself shall pay all costs first and then get reimbursement from GPI.
ARTICLE V.
TERM AND TERMINATION
5.1 Original Term. The original term of this Agreement shall commence on
the Effective Date and shall remain in effect for three (3) years unless and
until terminated in accordance with the terms of this Article V.
5.2 At Each Party's Election. Each party may terminate this Agreement at
any time by giving the other party written notice of its election to terminate,
with such termination effective thirty (30) days after receipt by the other
party of such written notice.
5.3 Breach of Agreement. Upon any material breach of this Agreement by one
of the parties (the breaching party), the other party, in addition to any other
remedy available at law or equity, may elect to terminate this Agreement by
giving the breaching party thirty (30) days' written notice of such election.
This Agreement shall terminate upon the expiration of the thirty-day period
unless the breaching party has cured such breach on or before the expiration of
such period. If the breach is of a type that requires more than thirty (30) days
but less than ninety (90) days to cure, the cure period shall be extended to
ninety (90) days so long as the breaching party has, throughout the ninety-day
period, diligently undertaken substantive and progressive efforts to cure such
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breach on or before the date that such ninety-day period expires and such breach
is in fact cured on or before the expiration of such period.
5.4 Insolvency. Any party's Bankruptcy shall constitute an immediate and
material breach of this Agreement and, upon the occurrence of same, this
Agreement shall immediately terminate.
5.5 Change of Management Control. Any party's change of Management Control
change shall constitute an immediate and material breach of this Agreement and,
upon the occurrence of same, this Agreement shall immediately terminate. Change
of Management Control occurs when any party is purchased by a third party, is
merged with a third party, or a controlling block of shares of any party is
acquired by a third party.
5.6 Effects of Expiration or Termination. Upon termination of this
Agreement for any reason, all exclusive licenses and rights granted hereunder
shall terminate and revert to GPI for the benefit of GPI. Further, all
Trademarks, along with all good will embodied therein, will be assigned by CI to
GPI for GPI's future use and commercial exploitation.
5.7 Surviving Obligations and Provisions. In addition to any provision of
this Agreement that expressly survives the termination of this Agreement, the
provisions of Sections 1.5, 3.2, 4.1, 6.1, and 6.8 shall so survive.
5.8. Renewal. This Agreement is automatically renewed annually at the end
of the original term of this Agreement unless and until terminated in accordance
with the terms of this Article V.
ARTICLE VI.
GENERAL
6.1 Proprietary Information.
(a) All Proprietary Information, whether so marked or not, which is
disclosed by one party to the other during the term of this Agreement shall be
maintained in confidence by the receiving party and shall not be disclosed by
the receiving party to any other person or entity, or used (or caused to be
used) for the benefit of any other person or entity, without the prior written
consent of the disclosing party, except to the extent that such Proprietary
Information: (i) is necessary to be disclosed to agents, consultants, or other
third parties for the test, or commercialization of the Licensed Products, which
persons or entities first agree in writing to be bound by equivalent
confidentiality obligations; or (ii) is required to be disclosed by law or
pursuant to the request of a court or governmental agency; provided, however
that the required party shall provide the owner of the requested Proprietary
Information with at least ten (10) days' advance written notice of such legal
requirement prior to disclosure and assist such party as requested in obtaining
a protective order or other similar relief for such Proprietary Information. The
obligations of the parties hereunder shall continue in full force and effect
during the term hereof and for a minimum period of five (5) years following the
termination of this Agreement; provided, however, that if any such Proprietary
Information constitutes a trade secret, as defined under applicable law, such
obligations shall remain in effect with respect to such Proprietary Information
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for so long beyond such five-year period as such Proprietary Information
continues to constitute a trade secret as so defined.
(b) Each party hereto acknowledges that any breach of the obligations
set forth in this Section 6.1 would result in irreparable harm to other party
for which monetary damages alone would be an insufficient remedy. Thus, although
nothing in this Section will prohibit pursuit of any remedies available against
any party under applicable law (which shall be cumulative with those remedies
set forth herein), each party specifically agrees that, in the event of any
threatened or actual breach of such provisions by it, the other party shall be
entitled to an injunction and other equitable relief including, without
limitation, an equitable accounting of earnings, profits, and other benefits,
from a court of competent jurisdiction, as well as reimbursement of any
attorneys' fees and other costs incurred in obtaining such relief.
6.2 Integration. This Agreement constitutes the entire agreement between
the parties as to the subject matter of such documents. All prior and
contemporaneous negotiations, representations, warranties, agreements,
statements, promises, and understandings are superseded and merged into,
extinguished by, and completely expressed by such documents. No party shall be
bound by or charged with any written or oral agreements, representations,
warranties, statements, promises, or understandings not specifically set forth
in such documents.
6.3 Addresses and Notices. All notices, demands, requests, reports, and
other communications provided in this Agreement or under applicable law shall be
in writing and shall be deemed to have been made or given: (a) when delivered,
if delivered by hand or sent by facsimile; (b) on the day following deposit with
an overnight courier; or (c) on the date five days following deposit with the
United States Mail, certified or registered:
If to GPI: If to CI:
General Plastics Industrial Co., Ltd. Color Imaging, Inc.
Attn: Mr. Robin Hsu Attn: Mr. Morris E. Van Asperen
Vice President Executive Vice President and
50 Tzu-Chiang Road Chief Financial Officer
Wu-Chi Town Color Imaging Inc.
Taichung County 4350 Peachtree Ind. Blvd., Suite 100
Taiwan Norcross, GA 30071
Tel: 886-4-26393103 Tel: 770.840.1090
Fax: 886-4-26396204 Fax: 770.242-3494
With a copy to:
Tim Tingkang Xia, Esq.
Merchant & Gould, LLC
133 Peachtree Street, N.E.
Suite 4900
Atlanta, Georgia 30303
Tel: (404) 954-5100
Fax: (404) 954-5099
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6.4 Applicable Law. This Agreement and its effect are subject to and shall
be construed and enforced in accordance with the law of the State of Georgia,
without regard to conflict of laws principles.
6.5 Compliance with Law; Severability. Nothing in this Agreement shall be
construed to require the commission of any act contrary to law. If this
Agreement conflicts with any statute, law, ordinance, or treaty concerning the
legal right of the parties to contract, the latter shall prevail. In such event,
the affected provisions of this Agreement shall be curtailed and limited only to
the extent necessary to bring it within the applicable legal requirements and
the validity, legality, and enforceability of the remaining provisions of this
Agreement shall not in any way be affected or impaired thereby.
6.6 Arbitration. Subject to pursuit of equitable remedies in a court of
competent jurisdiction, any dispute, controversy, or claim arising out of or in
connection with, or relating to, this Agreement or any breach or alleged breach
hereof shall, upon the request, be submitted to, and settled by, arbitration in
the City of Atlanta, state of Georgia, pursuant to the commercial arbitration
rules then in effect of the American Arbitration Association (or at any time or
at any other place or under any other form of arbitration mutually acceptable to
the parties). Any award rendered shall be final and conclusive upon the parties
and a judgment thereon may be entered in the highest court of the forum, state
or federal, having jurisdiction. The expenses of the arbitration shall be borne
equally by the parties to the arbitration, provided that each party shall pay
for and bear the cost of its own experts, evidence and attorneys' fees, except
that in the discretion of the arbitrator, any award may include the cost of a
party's attorneys' fees if the arbitrator expressly determines that the party
against whom such award is entered has caused the dispute, controversy, or claim
to be submitted to arbitration as a dilatory tactic.
6.7 Headings. The headings of the various Articles, Sections and
Subsections of this Agreement are used solely for the convenience of the
parties, do not form a part of this Agreement, do not affect the interpretation
or meaning of this Agreement, and do not define, limit, extend, or describe its
scope or intent.
6.8 No Third-Party Beneficiaries. None of the provisions of this Agreement
shall be for the benefit of, or enforceable by, any third party. The agreements
herein contained are made for the sole benefit of the parties hereto and no
other person or entity is intended to or shall have any rights or benefits
hereunder, whether as a third party beneficiary or otherwise.
6.9 Waiver. A party's express or implied consent or waiver of the other
party's breach of its obligations hereunder shall not be deemed to be, or
construed as, a consent to, or waiver of, any other breach of the other party. A
party's failure, no matter how long, to: (a) complain of any act, or failure to
act, by the other party; (b) declare the other party in default; (c) insist upon
the strict performance of any obligation or condition of this Agreement; or (d)
exercise any right or remedy consequent upon a breach thereof; shall not
constitute a waiver by such party of its rights, such breach, or any other
obligation or condition. A party's consent in any one instance shall not limit
or waive the necessity to obtain such party's consent in any future instance. No
single or partial exercise of any right, power or privilege by a party hereunder
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shall preclude any other or further exercise thereof or the exercise of any
other right, power or privilege by such party. In any event, no consent or
waiver shall be effective for any purpose hereunder unless such consent or
waiver is in writing and signed by the party granting such consent or waiver.
6.10 Construction. The parties agree that each party has reviewed this
Agreement and that any rule of construction to the effect that ambiguities are
to be resolved against the drafting party shall not apply to the interpretation
of this Agreement.
6.11 Assignment. This Agreement, and the exclusive license, rights, and
duties contained in this Agreement, shall not be assigned by a party without the
prior written consent of the other party.
ARTICLE VII.
DEFINITIONS
When capitalized in this Agreement, the following terms shall have the
meanings set forth below:
7.1 "Agreement" means this Marketing and License Agreement between GPI and
CI.
7.2 "Effective Date" means the date of this Agreement, June 1, 2003.
7.3 "Intellectual Property" means and includes any and all inventions,
discoveries, improvements, devices, enhancements, ideas, concepts, confidential
information, trade secrets, knowledge, information, know-how, technology, data,
techniques, applications, methods, processes, protocols, formulas, formulations,
engineering, software, designs, drawings, flowcharts, models, databases,
research, studies, creations, samples, works of authorship, trademarks, service
marks, trade dress, and any other intangible or intellectual rights or
properties, whether or not patentable, registrable, or enforceable.
7.4 "Field" means the use of an all-in-one, drum, or toner cartridge in an
electrophotographic image forming apparatus such as copier, printer, fax machine
and the like.
7.5 "Licensed Product" means GPI's compatible cartridge products listed in
Exhibit A. Exhibit A is incorporated herein by reference. The list of products
in Exhibit A can be expanded or reduced from time to time by a written Amendment
in writing agreed upon by both GPI and CI, or by an updated Exhibit A given by
GPI, which automatically overrides any and all preceding Exhibit A(s) that were
dated prior to the updated Exhibit A. Any ambiguities to the products listed in
Exhibit A shall be resolved according to the interpretation of GPI.
7.6 "Proprietary Information" means all confidential, whether it is marked
so or not, Technology, Intellectual Property, technical information, data,
techniques, knowledge, skill, know-how, experience, trade secrets, confidential
information, developments, formulae, processes, materials, and other
commercially sensitive information of a party which is disclosed or transferred
from one party to the other or developed in the course of performance under, or
during the term of, this Agreement, including by way of illustration and not
limitation, designs, drawings, documents, models, performance evaluations,
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testing results and reports and other similar information. "Proprietary
Information" shall not include any of the foregoing that is: (a) in the
possession of the receiving party at the time of disclosure as shown by the
receiving party's files and records immediately prior to the time of
disclosures; (b) prior to or after the time of disclosure becomes part of the
public knowledge or literature, not as a result of any improper inaction or
action of a party under an obligation of confidentiality; or (c) lawfully
obtained by the receiving party from sources independent of the disclosing
party, which sources have a lawful right to disclose such information.
7.7 "Technology" means any and all Intellectual Property and Proprietary
Information that relates to the Licensed Products, or the Field.
7.8 "Trademarks" shall have the meaning set forth in Section 3.4.
[SIGNATURES ON FOLLOWING PAGE]
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IN WITNESS WHEREOF, the parties hereto have each caused a duly authorized
officer to sign this Agreement to be effective as of the Effective Date.
CI:
Color Imaging, Inc. [CI SEAL]
By: /S/ SUELING WANG
--------------------------------------
Name: Sueling Wang, PhD
Title: President
Date: 10/09/03
--------------------------------------
GPI:
General Plastics Industrial Co., Ltd. [CORPORATE SEAL]
By: /S/ JUI-CHI WANG
---------------------------------------
Name: Jui-Chi Wang
Title: President
Date: OCT. 9, 2003
---------------------------------------
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EXHIBIT A
LIST OF LICENSED PRODUCTS
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1. Canon PC1060 L50 series cartridges.
- --------------------------------------------------------------------------------
2. Hewlett Packard HP2100 series regular and corresponding refill toner
cartridges.
- --------------------------------------------------------------------------------
3. Hewlett Packard HP2100 series high yield and corresponding refill toner
cartridges.
- --------------------------------------------------------------------------------
4. Ricoh Aficio AP3800c series toner cartridges.
- --------------------------------------------------------------------------------
5. Xerox XD100 series toner and drum cartridges once available.
- --------------------------------------------------------------------------------
6. Xerox XL2120 series toner and drum cartridges once available.
- --------------------------------------------------------------------------------
7. Sharp AL1000 series tone and drum cartridges once available.
- --------------------------------------------------------------------------------
8. Canon E20 / E40 series cartridge once available.
- --------------------------------------------------------------------------------
9. Brother TN 430 / TN460 series cartridge once available.
- --------------------------------------------------------------------------------
GPI: CI:
General Plastics Industrial Co., Ltd. Color Imaging, Inc.
By: /S/ JUI-CHI WANG By: /S/ SUELING WANG
-------------------------------- --------------------------------
Name: Jui-Chi Wang Name: Sueling Wang
Title: President Title: President
Date: OCT. 9, 2003 Date: 10/09/03
-------------------------------- --------------------------------
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