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EXHIBIT 10.17
FEBRUARY 15, 2000
MASTER ASSEMBLY AND DISTRIBUTION AGREEMENT
This AGREEMENT is entered into as of the 19th day of February, 2000,
by and between Toshiba America Business Solutions, Inc., a California, U.S.A.
corporation having its principal place of business at 2 Musick, Irvine,
California 92618-1631 (hereinafter "TOSHIBA"), and T/R SYSTEMS, INC., a
Georgia, U.S.A. corporation having its principal place of business at 1300
Oakbrook Drive, Norcross, Georgia, U. S. A. 30093 (hereinafter "T/R").
RECITALS:
a. T/R has designed and developed, and currently assembles,
distributes and sells, a proprietary commercial printing
system known as the MicroPress(R) Cluster Printing System,
which as of the date of this Agreement includes MicroPress(R)
Release 5.0.
b. T/R has proprietary skills, know-how, technology, inclusive
of trade secrets and other know-how, and patent rights
applicable to the product architecture, development, design,
assembly, manufacturing, connectivity, production and
distribution of the MicroPress(R) commercial printing system.
c. TOSHIBA desires to license certain rights and properties from
T/R so as to permit TOSHIBA to complete the assembly of
MicroPress(R) commercial printing systems, and to purchase
certain equipment from T/R to incorporate into such products,
.with such products to be distributed and sold by TOSHIBA and
either marked or identified with trademarks owned, possessed
or controlled by TOSHIBA marked or identified with trademarks
of a party other than TOSHIBA or for "private label"
distribution. This method of distribution shall involve the
assembly of Systems by TOSHIBA.
d. To accommodate the foregoing agreements, and to effect
certain other agreements and undertakings between T/R and
TOSHIBA, such parties have entered into this Agreement.
NOW, THEREFORE, the parties hereby agree as follows:
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1. DEFINITIONS.
1.1 "Confidential Information" means information of
either party including, but not limited to, technical or non-technical data,
Know-how, trade secrets, skills and processes, from which either party derives
economic value by such information not being generally known to, and not being
readily ascertainable by proper means, by third parties, but excluding any such
information which (i) is publicly available through no fault of the receiving
party; (ii) is in the receiving party's possession free of any obligation of
confidence to T/R at the time it was communicated to the receiving party; (iii)
is received independently from a third party who is free to disclose such
information; or (iv) is demonstrated to have been subsequently and
independently developed by the receiving party without the use of confidential
information of the disclosing party. The parties hereby agree and acknowledge
that the Non-Disclosure Agreement dated August 20, 1999 shall be merged and
integrated into this Agreement. Furthermore, either party may disclose
Confidential Information of the other party to its Affiliates with prior
written consent of the other party, which consent shall not be unreasonably
withheld.
1.2 "Completion" means the stage where the connectivity
work of Systems under each project shall be fully performed by T/R in a
mutually agreed schedule and manner. For Completion, T/R will be subject to
inspection at each stage as agreed by the parties. Such inspection will include
appropriate testing. T/R will perform the testing and provide a report which
will be subject to TOSHIBA's approval, which approval may not be unreasonably
withheld.
1.3 "Customer" means any Person that acquires Systems
from TOSHIBA for its own use or for sale, lease or other disposition.
1.4 "Deliverables has the meaning set forth in Section 4
hereof.
1.5 "End User" means a Person that acquires a System
directly from TOSHIBA or indirectly from a Customer of TOSHIBA, and uses the
System for any purpose.
1.6 "Improvement" means any and all derivatives,
improvements or betterments of the Licensed Intellectual Property Rights made
by T/R or any other Person, including all intellectual property rights
pertaining thereto, including patent rights, copyright rights, trade secrets,
know-how or similar rights recognized under applicable law, and all technical
information, including, but not limited to computer programming code, including
object code and source code as well as associated procedural code, microcode,
firmware, programmable array logic, algorithms, programs, routines,
subroutines, designs, plans, methods, processes, systems, concepts, ideas,
formulae, flow charts, descriptions, schematics, lay-out drawings, assembly
drawings, printed circuit patterns, specifications, parts lists and inspection
and test procedures, experiments and inventions associated therewith.
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1.7 "Know-how" means knowledge, information, inventions
(other than those embodied in the Patent Rights), trade secrets and systems
used in the design, development, manufacture, assembly, servicing or testing of
the MicroPress(R) commercial printing system.
1.8 "License" means the license granted by T/R to
TOSHIBA pursuant to this Agreement.
1.9 "Licensed Intellectual Property Rights" means the
following rights, knowledge, know-how and similar intellectual property owned
by T/R and used in the design, development, manufacture, assembly, servicing or
testing of the Deliverables, System or any portion thereof:
(a) Patent Rights;
(b) Copyright rights and applications therefor
(including the right to make derivative
works);
(c) Trade secrets;
(d) Know-how and any other proprietary
information; and
(e) All Improvements.
1.10 "TOSHIBA Orders" has the meaning set forth in
Section 4 hereof.
1.11 "Patent Rights" means all T/R patents (including
applications therefor) pertaining to the Territory, whether now or hereafter
issued, containing a claim or claims in whole or in part covering the design,
development, use or manufacture of the Deliverables, the System or any portion
thereof, and all Improvements thereto that become the subject of a patent
application.
1.12 "Person" means any individual, partnership, joint
venture, corporation, trust, unincorporated organization, government,
governmental agency or any other entity.
1.13 "Affiliates" means group companies, or corporate
affiliates of either party.
1.14 "System" means commercial printing systems to be
assembled by or for TOSHIBA pursuant to the License and to incorporate the
Deliverables, all as more particularly described on Schedule A-1 hereto, or as
used herein as context may require, any portion thereof.
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1.15 "Technical Assistance" means the technical
assistance to be provided by T/R to TOSHIBA as provided in Section 3 hereof.
1.16 "Territory" shall mean the territory defined by
connectivity project as defined in Schedule A.
2. LICENSE.
2.1 Grant. Subject to the terms and conditions hereof,
T/R hereby grants to TOSHIBA and TOSHIBA hereby accepts from T/R a license
entitling TOSHIBA during the term of said license to use, on a non-exclusive
basis, the Licensed Intellectual Property Rights in and to the Deliverables to
complete and effect the assembly of the Systems and to distribute, sell or
lease the Systems to Customers for use by End Users located in the Territory.
2.2 No Sublicenses. This Agreement does not grant,
license or permit (either expressly or by implication) TOSHIBA to transfer,
assign, sell, give, license, sub-license, or in any way permit the use of the
Licensed Intellectual Property Rights in and to the Deliverables, by or to any
Person, other than (i) any of its Affiliates for the sole purpose of assembling
the Systems, or any components or subassemblies thereof; or (ii) any other
third party under TOSHIBA's supervision for the sole purpose of assembling the
Systems or any components or subassemblies thereof, for supply only to TOSHIBA.
If TOSHIBA becomes aware, or gains reasonable suspicion, of the unauthorized
use or exercise of the Licensed Intellectual Property Rights in and to the
Deliverables by any Person, then TOSHIBA shall forthwith notify T/R in writing
and cooperate with T/R, and at T/R's discretion, to abate or terminate such
unauthorized use or actions. With regard to Section 2.1 and 2.2, Toshiba TEC at
Shuwa-Shiba Park Building A, 2-4-1, Shibakoen, Minato-ku, Tokyo, 105-8524,
Japan, is considered a joint party to this agreement with TOSHIBA.
2.3 No Other Licenses. No license or right is granted
under this Agreement by T/R to TOSHIBA by implication, estoppel or otherwise,
except as expressly set forth in this Agreement and TOSHIBA may not use the
corporate names, trademarks, trade names, service marks, or logos of T/R
without the prior written consent of T/R.
2.4 Labeling. TOSHIBA shall apply to the Systems
assembled for sale by or for TOSHIBA to Customers a statement reasonably
located and sized, identifying the fact that the Systems are assembled under
license from T/R and, as applicable, are subject to patents or patents pending,
and which shall identify by number any issued patents which are part of the
Patent Rights. Such statement, and its proposed location and size, shall be
submitted to T/R by TOSHIBA in advance of its use for pre-approval by T/R,
which approval may not be unreasonably withheld.
2.5 Limitation on Use. TOSHIBA shall not use the Patent
Rights, the Know-how, the Licensed Intellectual Property Rights in and to the
Deliverables or
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any other T/R technology, for any purpose or purposes other than those
expressly permitted under the License.
3. TECHNICAL ASSISTANCE. To effectuate the purposes of this
Agreement, upon the reasonable request by TOSHIBA and subject to the terms and
conditions of the License, T/R, employing the Licensed Intellectual Property
Rights in and to the Deliverables into Systems, shall consult with TOSHIBA with
respect to (i) the design and operation of the Systems, inclusive of the
selection and design of print engine therefor; (ii) TOSHIBA's assembling of the
Systems for mass distribution; (iii) TOSHIBA's initiation of assembling for
commercial production of the Systems; (iv) TOSHIBA's outsourcing plans and
operations; (v) TOSHIBA's current and future device connectivity to the System;
and (vi) similar matters related thereto. In addition to consulting, T/R shall
provide standard training for TOSHIBA personnel, upon the reasonable request of
TOSHIBA. Each of T/R and TOSHIBA will appoint and assign a lead technical
liaison to interact and support the technical interface between T/R and
TOSHIBA. The initial connectivity project is specified on Schedule A-1, along
with other particulars concerning same. Additional device connectivity projects
requested by TOSHIBA and agreed to by T/R shall be reflected on further
schedules numbered A-2, A-3 and so forth ( each a connectivity project ).
4. DELIVERABLES.
4.1 For each System, T/R shall deliver, in accordance
with license/purchase orders made by TOSHIBA ("TOSHIBA Orders"), from time to
time and subject to availability, the following items constituting software and
related technology and communications hardware (and which items are defined
herein as the "Deliverables"):
(a) Technology and Software Packages, which
shall include the software in executable
code and other technology, employing the
Licensed Intellectual Property Rights, and
providing the software and related
technology principally required for
operation of the Systems to be distributed
by TOSHIBA pursuant to this Agreement;
(b) Printlinks communication hardware used in
and constituting a part of the Systems
consisting of boards including print
adaptors and host adaptors; and
(c) MicroPress(R) ClusterServers with
pre-configured software packages and host
adaptors.
The Deliverables shall include, as appropriate, certain English language
documentation related thereto prepared by or for T/R. The Deliverables shall be
delivered F.O.B. T/R's warehouse in Norcross, GA if the Deliverables are to be
shipped to a destination in North America or F.O.B. U.S.A. Port ( i.e.,
Savannah, Georgia or comparable ) for other
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international shipments. All risk of loss shall be conveyed and passed to
TOSHIBA upon delivery of the Deliverables to TOSHIBA or its carrier or other
agent. To the extent any of the Deliverables includes Licensed Intellectual
Property Rights, including without limitation, software, codes, Know-how,
Patent Rights, Licensed Intellectual Property Rights and other such rights, no
title will pass to TOSHIBA but rather such property will be deemed licensed
pursuant to the License. Title will pass to TOSHIBA as to hardware, media and
other items included within the Deliverables which do not constitute nor
comprise Licensed Intellectual Property Rights.
4.2 TOSHIBA deliverables means any information or
materials provided by TOSHIBA to T/R under this Agreement or each connectivity
project as defined in Schedule A, which will be delivered to T/R in a manner
otherwise agreed upon by the parties hereto. T/R may use TOSHIBA deliverables
for the sole purpose described in this Agreement. TOSHIBA deliverables are and
shall remain TOSHIBA's property.
5. COMPENSATION.
5.1 Technology Access Fee. In exchange for T/R's
agreement to grant the License in respect of the Licensed Intellectual Property
Rights in and to the Deliverables, and in part for T/R's agreement to provide
the Technical Assistance pursuant to Section 3 hereof, TOSHIBA shall pay T/R
non-refundable technology access fee as specified on Schedule A-1, in respect
of the initial Connectivity Project, [ * ]. Additional technology access fees
shall be payable in respect of additional Connectivity Projects if any, as
specified in Schedule A applicable thereto.
5.2 License Fees and Equipment Purchase Price. For each
Deliverable, the license fees or equipment purchase price amounts, as the case
may be, shall [ * ] provided on T/R's United States End User Price List with
the exception of hardware deliverables such as PC Servers and consoles, which
if required will be at a [ * ], as in effect from time to time, which price
list is subject to change from time to time by T/R. Any change in T/R's
standard United States End User Price List will be effective as to TOSHIBA
Orders received after [ * ] days of the issuance of such revised price list.
5.3 Consulting, Training Compensation. As compensation
for the consulting and training required to be provided as Technical Assistance
pursuant to Section 3 hereof, TOSHIBA shall compensate T/R at T/R's standard
rates as in effect from time to time for consulting, and at T/R's standard
rates as in effect from time to time for training. In addition, TOSHIBA shall
reimburse T/R's travel and living expenses
* Confidential information has been omitted and filed separately with the
Commission.
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incurred in connection with such consulting and training. T/R's standard per
diem rates are subject to change from time to time by T/R. One training session
of up to one week will be provided at no charge to TOSHIBA ( other than travel
and living expenses ) at a mutually agreed time and location upon initial
completion of each Connectivity Project. TOSHIBA may subcontract to T/R the
technical training from both its dealers and end-user customers. Classes will
be provided to TOSHIBA dealers and customers at T/R Systems standard daily rate
per student. TOSHIBA may also provide direct access to the T/R Technical
Support Hotline to its dealers and customers, under mutually agreed pricing
terms and conditions.
6. PAYMENTS. Payments for technology access fees pursuant to
Section 5.1, for license fees and equipment purchase price amounts in respect
of the Deliverables pursuant to Section 5.2, for consulting and training
pursuant to Section 5.3 and for maintenance pursuant to Section 9 shall be due
and payable by TOSHIBA [ * ] days from the bill of lading date for shipments
and [ * ] days from invoice date for technology access fees or consulting
services. Unless otherwise agreed by T/R in writing, all payments by TOSHIBA
shall be remitted in immediately available U.S. Dollars by wire transfer per
T/R's instructions, and confirmation of each payment shall be made by TOSHIBA
to T/R by facsimile or telegraphic means to T/R's principal place of business.
A late payment charge of one and one-half percent (1.5%) per month shall be
charged upon unpaid balances due for more than [ * ]. All pricing and fees
under this Agreement are exclusive of taxes. Except for taxes based on T/R's
net income, TOSHIBA shall pay any national, federal, state, county, local or
other governmental taxes, fees or duties now or hereafter imposed on the
licensing, export, use or possession of the Licensed Intellectual Property
Rights and the Deliverables or any other transaction contemplated by this
Agreement, as well as any penalties or interest thereon.
7. TOSHIBA ORDERS.
7.1 The terms and conditions of this Agreement shall
apply to all TOSHIBA Orders submitted to T/R and supersede any different or
additional terms contained on TOSHIBA's Orders. TOSHIBA Orders are solely for
the purpose of requesting delivery dates and quantities. All orders are subject
to acceptance by T/R. T/R shall use reasonable efforts to provide for delivery
of accepted TOSHIBA orders.
7.2 Order Policy. TOSHIBA shall submit written orders to
T/R. All orders shall specify: (a) the quantities and descriptions of the
Deliverables; and b) requested delivery dates and shipping instructions. Orders
will be placed by the 10th day of the month, sixty (60) days in advance of
required delivery. PrintLink order quantities will include a firm order for the
first month plus a binding forecast for the next two months and a nonbinding
forecast for the fourth month. Other order quantities, to include Servers,
Software and Host Adapters, will include a firm order for the first month and a
binding forecast for the next two months.
7.3 The order procedures for "Spare Parts" are subject
to the Spare Parts ordering policies contained in Schedule B.
* Confidential information has been omitted and filed separately with the
Commission.
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8. MINIMUM PURCHASES. During the term of this Agreement, TOSHIBA
agrees to license and/or purchase as the case may be Deliverables for Systems
in the per annum quantities specified in Schedule A. Minimum purchase
requirements commence on Completion. In case TOSHIBA fails to realize the
minimum purchase requirements specified in Schedule A, then [ * ] TOSHIBA also
agrees to the activities detailed in Schedule A regarding the launch of the
Product in the TOSHIBA sales channels. Purchase overages for a year can be
carried over to the subsequent year.
9. MAINTENANCE. T/R shall provide TOSHIBA (not TOSHIBA Customers
or End Users) with software updates, major software releases and telephone
support for a annual maintenance charge per System. A maintenance charge at an
annual rate of [ * ] percent ([ * ]%) is due and payable quarterly as attested
below in respect of Deliverables purchases (including equipment purchases and
license fees). The maintenance charge is payable on the 15th day of January,
April, July and October in respect of the calendar quarter ending December 31,
March 31, June 30 and September 30, respectively, and such quarterly payment
shall equal [ * ] percent ([ * ]%) of the license fees and equipment purchase
price amounts paid or payable in respect of Deliverables ordered during such
calendar quarter and the same calendar quarter of each of the previous two
years of this Agreement. Such fee is only for maintenance provided in the
quarter the fee is payable. [ * ]
10. OWNERSHIP AND PROPRIETARY RIGHTS.
10.1 Ownership. T/R represents that it has all rights in
and to copyrights, trade secrets, patent rights and other intellectual property
rights associated with the Licensed Intellectual Property Rights and the
Deliverables as are necessary to license the Licensed Intellectual Property
Rights and license and/or sell the Deliverables, as the case may be, under and
pursuant to this Agreement.
10.2 Proprietary Rights. Either party acknowledges that
the Confidential Information constitute valuable trade secrets and confidential
information of the disclosing party. Ownership of all applicable copyrights,
trade secrets, patents and other intellectual property rights in the Licensed
Intellectual Property Rights and the Deliverables shall remain vested in T/R.
Title to all Licensed Intellectual Property Rights shall remain with T/R.
Either party shall not use or disclose the Confidential Information, except as
expressly permitted by this Agreement. TOSHIBA shall not remove T/R's copyright
notices, restricted rights legends or any other notices from the Deliverables
and such notices shall appear on all tapes, diskettes and other tangible media
distributed by TOSHIBA containing the Licensed Intellectual Property Rights or
constituting the
* Confidential information has been omitted and filed separately with the
Commission.
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Deliverables.
10.3 Unauthorized Use or Copying. Except as expressly
permitted hereunder, TOSHIBA shall not copy, modify or reproduce the
Deliverables in any way, nor shall it permit third parties to do so. TOSHIBA
shall fully cooperate with T/R in any action relating to enforcement of T/R's
proprietary rights.
10.4 End User License. TOSHIBA shall only distribute the
Deliverables to Customers for delivery to End Users in the Territory. TOSHIBA
shall inform the End User of the terms and conditions of the purchase of the
Deliverables and the Licensed Software. The terms and conditions of the
End-User Software License are in Schedule C. TOSHIBA shall make no
representations or warranties on behalf of T/R. TOSHIBA shall make no
representations to Customers or End Users or other third parties regarding the
Deliverables except as set forth in the applicable documentation therefor
provided by T/R. TOSHIBA will be responsible for all conversions, translations
and localizations necessary for use of the Deliverables by End Users in the
various countries included within the Territory, and shall assume and fulfill
any responsibility therefor of T/R imposed by local law or regulation. T/R will
schedule and provide software translation/localization services on a fee basis
for each translation/localization project.
10.5 Third Party Software. To the extent the software
included within the Deliverables constitutes software or other technology
rights owned by a third party and licensed to T/R, such software, and its
sublicense to TOSHIBA by T/R hereunder, is subject to all terms and conditions,
including where required, approval rights, of such third party license
agreements.
10.6 Security. The software included within the
Deliverables will be protected by a security mechanism known as a "dongle."
TOSHIBA may copy the software for distribution with T/R supplying the "dongle"
for the software for each System. TOSHIBA will ensure that such security
mechanisms remain intact and that such software remains secure from
unauthorized copying, reverse engineering and reverse compiling and
unauthorized distribution. TOSHIBA will use its best efforts to ensure that its
Customers adhere to such security mechanisms.
10.7 Indemnification. TOSHIBA agrees to indemnify and
hold harmless T/R from and against any claim, injury, loss or expense,
including attorneys' fees, arising out of (a) the failure of TOSHIBA to comply
with the provisions of Section 10, (b) any misrepresentations of TOSHIBA in
connection with T/R or the Deliverables or (c) any other wrongful conduct of
TOSHIBA or its agents.
11. WARRANTY.
11.1 T/R warrants to TOSHIBA that the hardware and
equipment included within the Deliverables, with the exception of PrintStations
and MicroScanners sold to TOSHIBA, pursuant to this Agreement will be free of
material defects for a period of [ * ], unless specifically stated differently,
from
* Confidential information has been omitted and filed separately with the
Commission.
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initial delivery. Should any defect in workmanship or material appear within
[ * ], unless specifically stated differently, after initial date of delivery,
T/R will (upon written notification thereof, delivered during the warranty
period, and substantiation by TOSHIBA that the hardware and equipment included
within the Deliverables have been stored, installed, maintained and operated in
accordance with T/R'S requirements and standard industry practice, and that the
defect(s) have not arisen from unauthorized repair, modification, or improper
connection by mechanical or electrical means to any other piece of equipment or
device) correct such defect(s) by suitable repair or replacement at T/R's
facilities, or at the place of business of T/R's designated local
representative, or at T/R's place of business, at T/R's option. T/R warrants to
TOSHIBA only that the PrintStations and MicroScanners sold to TOSHIBA pursuant
to this Agreement will be free of material defects for a period of [ * ];
unless specifically stated differently, from initial delivery.
All returns to T/R or its representative must be
pre-authorized in writing and shipped prepaid. T/R assumes no risk of loss or
damage prior to acceptance of delivery. Return shipment will not be prepaid by
T/R if inspection fails to disclose a warranted defect. It is agreed between
the parties that the foregoing shall be TOSHIBA's exclusive remedy for
warranted defects.
The sole purpose of this exclusive remedy shall be to provide
TOSHIBA with free repair and replacement of the defective parts in the manner
provided herein, and the hardware and equipment included within the
Deliverables shall not be deemed to have failed of its essential purpose so
long as T/R is willing and able to repair or replace defective parts in the
described manner.
THIS WARRANTY IS EXCLUSIVE AND IN LIEU OF (AND T/R DISCLAIMS)
ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR PARTICULAR PURPOSE OR OTHER
WARRANTY WHETHER EXPRESSED OR IMPLIED.
Correction of non-conformities, in the manner and for the
time period provided above, shall constitute fulfillment of all liabilities of
T/R to TOSHIBA with respect to, or arising out of, the goods or their use,
whether based on contract, negligence, strict liability or otherwise. TOSHIBA
shall be fully responsible for any warranty claims brought by its End-Users,
and shall hold T/R harmless with regard to same.
11.2 Licensed Software Warranty T/R makes no warranties
with regard to the software included within Deliverables, other than the
warranties offered in the End User Software License, including all warranties
of merchantability and fitness for a particular purpose. Except as therein
expressly provided, such software is provided to TOSHIBA on an "as-is" basis.
11.3 Product Liability
(a) If any product liability accident occurs
out of or in relation to
* Confidential information has been omitted and filed separately with the
Commission.
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Deliverables or Systems, and there is a reasonable suspicion that such accident
is caused by defect in Deliverables or Systems due to T/R's responsibility;
then T/R shall cooperate with TOSHIBA in the investigation of causes and
defending on such accident.
(b) Should any claim or suit be made or filed
for damages of product liability accident
in relation to Deliverables or Systems as a
result of any defect in Deliverables or
Systems attributable to T/R's
responsibility, T/R shall undertake the
sole and complete defense of any such claim
or suit at its own expense and
responsibility, and indemnify TOSHIBA
against all such damages and costs suffered
or incurred by TOSHIBA. T/R shall
investigate and study the possibility of
recurrence of the product liability
accident due to the same cause and report
the result of such investigation to
TOSHIBA; and T/R shall take proper and
reasonable measures, at its own expenses
and responsibility, to prevent the
recurrence if the recurrence is foreseen as
a result of the investigation. In the
course of defense of claim or suit or
measures of prevention of recurrence, T/R
shall pay attention not to discredit
TOSHIBA's name or trust, and shall consult
with TOSHIBA in determining method of
defense or preventive measures, although
such defense or preventive methods shall be
finally determined by T/R.
(c) Notwithstanding the foregoing, T/R shall
not be liable for any claim suit of product
liability which is based on defect or
failure caused by; 1) any modifications to
the Deliverables or 2) documentation
prepared or made by other party which is
not authorized or designated by TR or 3)
specifications designated by TOSHIBA or 4)
use or combination of Deliverables or
Systems with any hardware or software which
is not intended or designated by T/R.
12. LIMITATION OF REMEDIES.
12.1 THE SOLE REMEDIES FOR BREACH OF ANY AND ALL
WARRANTIES AND THE SOLE REMEDIES FOR TR'S LIABILITY OF ANY KIND FOR SERVICES
PROVIDED PURSUANT TO THIS AGREEMENT AND ANY OTHER PERFORMANCE BY TR UNDER OR
PURSUANT TO THIS AGREEMENT SHALL BE LIMITED TO THIS AGREEMENT AND THE
ATTACHMENTS HERETO. IN NO EVENT SHALL TR'S LIABILITY TO TOSHIBA FOR DAMAGES OF
ANY NATURE EXCEED THE TOTAL CHARGES PAID FOR THE PRODUCT OR SERVICE UPON WHICH
SUCH LIABILITY IS BASED.
12.2 IT IS AGREED THAT EACH PARTY SHALL NOT BE LIABLE FOR
THE OTHER PARTY FOR ANY SPECIAL, INCIDENTAL, INDIRECT OR CONSEQUENTIAL DAMAGES
OR FOR THE LOSS OF PROFIT, REVENUE, PRODUCTS OR SERVICES EVEN IF HE SHALL HAVE
BEEN ADVISED OF THE POSSIBILITY OF SUCH POTENTIAL LOSS OR DAMAGE
12.3 TOSHIBA agrees that T/R shall not have any
responsibility for any equipment, service, hardware, software or other items
provided with or incorporated into the Systems by any persons other than T/R.
12.4 No action, whether in contract or tort, including
negligence,
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arising out of the sale of the Deliverables or the performance of services
under this Agreement may be brought by the T/R or TOSHIBA more than [ * ] after
the cause of action arises, except for an action by the T/R for non-payment by
TOSHIBA
13. EPIDEMIC FAILURE. If TOSHIBA should discover epidemic
failures (same defects occurring from same cause) in at least [ * ] percent
([ * ]%) of deliverables delivered within a [ * ] month period or [ * ]
percent ([ * ]%) of deliverables delivered within a [ * ] month period,
TOSHIBA shall notify T/R of occurrence of such failure. After receiving such
notification by T/R, T/R shall inspect such failure of Deliverables. As a
result the inspection, in case that both parties recognize that such failure
is epidemic failure, then in addition to remedies in the preceding Section 11,
hereof, T/R shall reimburse all the costs incurred by TOSHIBA in rectifying
such epidemic failures in respect of Deliverables delivered to TOSHIBA within
the prior [ * ] months, including, but not limited to, the cost for callback
of such defective equipment or media from the market, subject to the
limitations of Section 12.
14. TOSHIBA'S AFFILIATES. Subsequent to the execution of this
Agreement, if TOSHIBA's Affiliates wish to be granted the License under this
Agreement, T/R agrees to enter into an agreement with such parties in
accordance with the terms and conditions under this Agreement with the
exception of purchase quantities, technical access fees, deliverable prices,
territories and product launch commitments. For the purpose of this Article,
TOSHIBA may disclose T/R's Confidential Information, the summary and sample of
Deliverables and Systems, and the contents and existence of this Agreement to
such parties upon execution of such agreements with T/R provided, however,
TOSHIBA will be jointly and severally liable for T/R with such parties under
this Agreement or any other Agreement executed by such parties.
15. TERM AND TERMINATION.
15.1 Expiration. This Agreement shall commence on the
date set forth above and shall continue for an initial term of three (3) years.
Thereafter, this Agreement shall be automatically renewed for additional terms
of one (1) year unless either party serves written notice, at least ninety (90)
days prior to the expiration of the initial term or any renewal term, of its
intention not to renew.
15.2 T/R Termination. This Agreement may be terminated by
T/R under any of the following conditions:
(a) if one of the parties shall be declared
insolvent or bankrupt;
(b) if a petition is filed in any court and not
dismissed in ninety (90) days to declare
one of the parties bankrupt or for a
reorganization under the Bankruptcy Law or
any similar statute;
(c) if a trustee in Bankruptcy or a receiver or
similar entity is
* Confidential information has been omitted and filed separately with the
Commission.
- 12 -
13
appointed for one of the parties;
(d) if TOSHIBA does not pay T/R within sixty
(60) days from receipt of a T/R invoice; or
(e) if TOSHIBA commits a material breach of
this Agreement which is not cured by
TOSHIBA within sixty (60) days after notice
of such breach is given by T/R.
15.3 TOSHIBA Termination. This Agreement may be
terminated by TOSHIBA upon a material breach by T/R which is not cured by T/R
within sixty (60) days after notice of such breach is given by TOSHIBA.
(a) if one of the parties shall be declared
insolvent or bankrupt;
(b) if a petition is filed in any court and not
dismissed in ninety (90) days to declare
one of the parties bankrupt or for a
reorganization under the Bankruptcy Law or
any similar statute;
(c) if a trustee in Bankruptcy or a receiver or
similar entity is appointed for one of the
parties;
(d) if T/R does not pay TOSHIBA within sixty
(60) days from receipt of a TOSHIBA
invoice; or
(e) if T/R commits a material breach of this
Agreement which is not cured by T/R within
sixty (60) days after notice of such breach
is given by TOSHIBA.
15.4 EFFECT OF TERMINATION. Upon expiration or
termination of this Agreement:
(a) T/R may stop accepting any orders from
TOSHIBA, provided that T/R shall return all
Confidential Information, Toshiba
deliverables, promotional materials,
marketing literature, written information
and reports pertaining to the Systems that
have been supplied by TOSHIBA.;
(b) TOSHIBA shall immediately (i) pay to T/R
all amounts remaining due under any
contract or purchase order, (ii) remove
from TOSHIBA's premises all signs
advertising the Systems or the Trademarks,
(iii) cease to engage in advertising or
promotional activities concerning the
Products and the use of Trademarks, (iv)
cease to represent in any manner that
TOSHIBA has been designated by T/R as a
licensee for the Licensed Intellectual
Property Rights, (v) order and promptly pay
for the remaining balance (order
requirements specified in Schedule A less
systems ordered to date during the current
term of the agreement) and (vi) return all
confidential information, promotional
materials, marketing literature, written
information and reports pertaining to the
Deliverables that have been supplied by
T/R. Service manuals and materials required
for on-going support of TOSHIBA customers
may be retained upon written request from
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14
TOSHIBA specifying the specific manuals and
materials to be retained and written
approval by T/R which shall not be
unreasonably withheld. The following
provisions of this Agreement shall survive
its termination: Sections 1.1, 5, 6, 7.3,
10, 11, 12, 15, 16 and 17. In the event
that TOSHIBA has any paid-up inventory of
the Deliverables as of the date of
termination under Section 15.2 or 15.3,
termination of this Agreement shall be
adjourned for a period not to exceed six
(6) months, during which period TOSHIBA may
continue to market and distribute its
inventories of the Deliverables.
(c) Neither party shall, in connection with the
expiration and/or termination of this
Agreement, have the right to claim any
indemnity, reimbursement or compensation
for alleged loss of clientele, goodwill,
loss of profits on anticipated sales or the
like or have any other liability for losses
or damages resulting from the expiration or
termination. Each party acknowledges that
it has decided and will decide on all
investments, expenditures and commitments
in full awareness of the possibility of its
potential losses or damages resulting from
such expiration or termination and being
willing to bear the risk therefor; and
(d) If after the expiration or termination of
this Agreement, TOSHIBA places orders and
T/R accepts such orders by TOSHIBA for
Deliverables thereof at the prices and
terms prevailing under this Agreement or
any other prices and terms, such acts on
the part of T/R shall be fully gratuitous
and shall not obligate T/R to continue any
practice or course of trade not secured by
written obligation. Any such T/R sales
shall not renew this Agreement or waive its
expiration or termination.
(e) T/R shall make available to TOSHIBA the
spare parts or equivalent replacements
during the term of this Agreement and for a
minimum of [ * ] from the earlier of the
date of termination of this Agreement, the
date of discontinuance of the item or the
Deliverables or from delivery of the last
unit of equipment included within
Deliverables hereunder.
16. INDEMNIFICATION.
16.1 Intellectual Property. T/R shall, at its
expense, defend any claim against TOSHIBA that use of the Deliverables
infringes a copyright, trade secret or patent right of any third party. T/R
shall pay any direct costs and damages attributable to such claim finally
awarded by a court against TOSHIBA on such claim. T/R shall have no liability
for any such claim if TOSHIBA is in material breach of this Agreement, or if
the claim is based on use of or anything other than an unaltered current
release of the Deliverables available from T/R, alone and not in combination
with any other software, data or hardware, if such infringement would have been
avoided by the use of a current unaltered release of the Deliverables available
from T/R.
16.2 Cooperation by TOSHIBA. T/R shall have no
obligations under Section 16.1 of this Agreement unless:
(a) T/R shall have been promptly
notified of the suit or
* Confidential information has been omitted and filed separately with the
Commission.
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15
claim by TOSHIBA and furnished by
TOSHIBA with a copy of each
communication, notice or other
action relating to said claim;
(b) T/R shall have the right to assume
sole authority to conduct the
trial or settlement of such claim
or any negotiations related
thereto at T/R's expense; and
(c) TOSHIBA shall provide reasonable
information and assistance
requested by T/R in connection
with such claim or suit.
17. GENERAL.
17.1 Force Majeure. T/R shall not be liable for any delay
or failure in performance under this Agreement resulting directly or indirectly
from acts of God, or any causes beyond its reasonable control.
17.2 Jurisdiction and Venue. This Agreement shall be
governed by and construed in accordance with the laws of the State of Georgia,
U.S.A., without reference to its conflicts of laws provisions.
17.3 Arbitration. Any and all disputes arising under this
Agreement shall be amicably and promptly settled upon consultation between the
parties hereto, but in case of failure to reach such settlement, all disputes
that may arise under or in relation to this Agreement shall be submitted to
arbitration under the Commercial Arbitration Rules of the International Chamber
of Commerce. The cost of arbitration shall be borne equally by the parties. Any
award of the arbitration shall be final and binding upon the parties.
17.4 Entire Agreement. This Agreement, including the
Schedules and Exhibits attached hereto, constitutes the entire agreement
between the parties with respect to this subject matter and supersedes all
previous proposals, both oral and written, negotiations, representations,
writings and all other communications between the parties. This Agreement may
not be released, discharged, or modified except by an instrument in writing
signed by the parties. Provided however, the Non Disclosure Agreement concluded
between the parties hereto shall be merged and integrated into the related
Articles under this Agreement.
17.5 Independent Contractors. It is expressly agreed that
TOSHIBA and T/R are acting hereunder as independent contractors. Under no
circumstances shall any of the employees of one party be deemed the employees
of the other for any purpose.
17.6 Notice. Any notice required to be given by either
party to the other shall be deemed given if in writing and actually delivered
or if deposited in the United States mail in registered or certified form with
return receipt requested, postage
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16
paid, addressed to the notified party at the address set forth herein.
17.7 Assignment. This Agreement is not assignable by
Either Party.
17.8 Severability. If any provision of this Agreement is
determined by a court of competent jurisdiction to be invalid or unenforceable,
such determination shall not affect the validity or enforceability of any part
or provision of this Agreement.
17.9 Waiver. No waiver by any party hereto of any breach
of any provisions hereof shall constitute a waiver of any other term of this
Agreement unless made in writing signed by such party.
17.10 Other Distribution. Nothing in this Agreement shall
be deemed to preclude T/R from distributing or licensing Deliverables and the
Licensed Intellectual Property Rights, as it deems appropriate, or from
appointing others to do so, in or outside of the Territory.
18. INTERNATIONAL MATTERS.
18.1 Export License. TOSHIBA shall be exclusively
responsible for the procurement and renewing of all export or import licenses
required under United States or any foreign law for the export or import of the
Deliverables or the value added products and shall pay all costs and other
expenses in connection with such procurement and renewal.
18.2 Export Assurance. Regardless of any disclosure made
by TOSHIBA to T/R of any ultimate destination of a Deliverable or any System
assembled using same, TOSHIBA shall not export or re-export directly or
indirectly the Deliverable or any System assembled using same, without first
obtaining the required written approval or export license, if any, to do so
from the United States Department of Commerce or any other agency of the U.S.
Government having jurisdiction over such transaction. TOSHIBA hereby assures
T/R that it does not intend to nor will it knowingly, without the prior written
consent, if required, of the Office of Export Administration of the U.S.
Department of Commerce, transmit or ship the Deliverable or any System
assembled using same, directly or indirectly, to any country as to which such
export is made unlawful as provided in laws or by regulations issued by the
U.S. Department of Commerce, or other such regulations as may be adopted from
time to time.
18.3 Compliance with Local Laws. TOSHIBA shall be
exclusively responsible at its own expense for compliance with all local laws
relating to a Deliverable or any System assembled using same, in the countries
in which TOSHIBA licenses or markets same.
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17
IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
a duly authorized representative as of the date set forth above.
T/R SYSTEMS, INC. TOSHIBA AMERICA BUSINESS SOLUTIONS, INC.
By: /s/ Mike Kohlsdorf By: /s/
------------------------- ------------------------------------------
Title: President / CEO Title: VP/GM, Electronic Imaging Division
------------------- ------------------------------------
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18
SCHEDULE A- 1
DEVICE CONNECTIVITY DEVELOPMENT
Name of Device for Connectivity: [ * ]
Authorized Territory for Distribution: United States
Technology Access Fee NRE: $[ * ]
Language Translation Fee: Not Applicable (English Version Only)
Minimum Purchase Amount: Year 1 $[ * ]
Year 2 $[ * ]
Year 3 $[ * ]
(MicroPress Cluster Servers, Software and PrintLinks for [ * ])
PRODUCT MARKETING REQUIREMENTS
1. TOSHIBA agrees to the following with regard to the launch of
the product in the TOSHIBA Sales Channels during the initial term of
this agreement.
- Product Launch investments and activities will be
equivalent to a typical TOSHIBA launch for other
TOSHIBA digital products.
- Marketing collateral will be developed and available
at launch for the deliverables equivalent to other
similar classes of TOSHIBA digital products.
- Advertising and promotions programs equivalent to
other similar classes of TOSHIBA digital products.
- Compensation programs for TOSHIBA Sales and Sales
Management equivalent to or better then other
similar classes of TOSHIBA digital products.
- Sales, Service and Training programs equivalent to
other similar classes of TOSHIBA digital products.
2. Purchase quantities for additional terms of this agreement
will be mutually agreed in accordance with Section 8.
Estimated Start Date: [ * ]
Estimated Completion Date: [ * ]
* Confidential information has been omitted and filed separately with the
Commission.
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19
SCHEDULE A-1 (CON'T)
TOSHIBA PROJECT DELIVERABLES:
- Supply of Video Interface
- Technical Resource Availability for Video Interface
Clarification
- Joint Development of Acceptance Criteria with T/R
Systems
- [ * ] and Set-up to Support Project Plan ( [ * ] )
T/R PROJECT DELIVERABLES:
- Project Scope and Definition
- Project Plan
- [ * ] PrintLink Design and Development
- [ * ] Specific Software Design and Development
- Regulatory Testing ( US Only )
- Quality Assurance Testing
- Packaging for Delivery of [ * ] PrintLink
- Installation Instructions
- Documentation Specific to [ * ] PrintLink and [ * ]
Specific Software [ * ]
* Confidential information has been omitted and filed separately with the
Commission.
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20
SCHEDULE A-2
DEVICE CONNECTIVITY DEVELOPMENT
Name of Device for Connectivity: [ * ]
Authorized Territory for Distribution: United States
Technology Access Fee NRE: $[ * ]
Language Translation Fee: Not Applicable (English Version Only)
PRODUCT MARKETING REQUIREMENTS
1. TOSHIBA agrees to the following with regard to the launch of
the product in the TOSHIBA Sales Channels during the initial term of
this agreement.
- Product Launch investments and activities will be
equivalent to a typical TOSHIBA launch for other
TOSHIBA digital products.
- Marketing collateral will be developed and available
at launch for the deliverables equivalent to other
similar classes of TOSHIBA digital products.
- Advertising and promotions programs equivalent to
other similar classes of TOSHIBA digital products.
- Compensation programs for TOSHIBA Sales and Sales
Management equivalent to or better then other
similar classes of TOSHIBA digital products.
- Sales, Service and Training programs equivalent to
other similar classes of TOSHIBA digital products.
2. Purchase quantities for additional terms of this agreement
will be mutually agreed in accordance with Section 8.
Estimated Start Date: [ * ]
Estimated Completion Date: [ * ]
* Confidential information has been omitted and filed separately with the
Commission.
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21
SCHEDULE A-2 (CON'T)
TOSHIBA PROJECT DELIVERABLES:
- Supply of Video Interface
- Technical Resource Availability for Video Interface
Clarification
- Joint Development of Acceptance Criteria with T/R
Systems
- [ * ] and Set-up to Support Project Plan
- ([ * ])
T/R PROJECT DELIVERABLES:
- Project Scope and Definition
- Project Plan
- [ * ] PrintLink Design and Development
- [ * ] Specific Software Design and Development
- Regulatory Testing ( US Only )
- Quality Assurance Testing
- Packaging for Delivery of [ * ] PrintLink
- Installation Instructions
- Documentation Specific to [ * ] PrintLink and [ * ]
Specific Software [ * ]
* Confidential information has been omitted and filed separately with the
Commission.
- 21 -
22
ATTACHMENT B
SPARE PARTS ORDERING POLICIES (SERVERS, MICROSCANNERS AND PRINTLINKS)
The policies and procedures which follow are subject to change upon [ * ] in
writing.
1. Service Support. T/R shall offer to TOSHIBA spare parts required to
service/repair the Deliverables and provide TOSHIBA with a recommended spare
parts stocking guide which identifies the proper type of parts to be stocked on
an ongoing basis by TOSHIBA. TOSHIBA shall assume full responsibility for
stocking spare parts.
2. Regular Spare Parts Ordering Procedures. T/R shall, from time to time
during the term of the Agreement, make available to TOSHIBA its most current
list of spare parts for the Deliverables, and the prices then applicable
thereto. In the event of manufacturer production or shipping delays, T/R shall
allocate distribution of such items in a fair, and equitable manner among all
customers, even though this may effectively limit delivery of ordered
quantities.
(A) Placement of Orders. TOSHIBA will place regular stocking
spare parts orders by formal purchase orders via TOSHIBA's written purchase
order form to T/R. A separate order must be submitted for each delivery date
and T/R part number must be referenced. Additionally, spare parts order's with
like delivery dates should be combined into a single order. A hard copy of all
TOSHIBA telephone orders must be received by T/R within three (3) days of
placement. T/R will confirm acceptance of such orders within three (3) weeks of
receipt of TOSHIBA's purchase order.
(B) Lead - Time. For all parts orders other than emergency parts
orders delivery will generally be made about [ * ] weeks after receipt of
order.
(C) Spare Parts Availability. In the event of discontinuance of a
spare part, its subsequent unavailability and need. T/R and TOSHIBA shall
discuss mutually satisfactory solutions which may include provision of
commercially available alternative sources.
(D) Spare Parts Pricing. During the term of this Agreement the
prices charged for spare parts will be the same as those offered to T/R's other
customers purchasing similar materials in the same or lesser quantities on
similar terms and conditions.
(E) Monthly Regular Stocking Order (Standard/Special Parts)
Limitations. T/R reserves the right to limit the maximum number of units of a
given part to be shipped to TOSHIBA in any one (1) month.
3. Emergency Spare Parts Support
* Confidential information has been omitted and filed separately with the
Commission.
- 22 -
23
(A) Placement of Orders. TOSHIBA shall place emergency parts
orders via Purchase Orders, Telephone or Facsimile. All "Emergency Orders" must
be so noted at the time of placement and such a legend must appear on all
purchase orders. A separate order referencing T/R's part number must be
submitted for each delivery date. Packing slips will bear both T/R's and
TOSHIBA's part numbers if same appears on TOSHIBA's hard copy purchase order.
Until further notice, the telephone number for submitting
facsimile orders is 770-448-3202. Hard copies of or facsimiles of TOSHIBA's
telephone Emergency Orders must be received within twenty four (24) hours. T/R
shall confirm Emergency Orders immediately over telephone if in stock, or it
part number is out of stock, T/R will advise of estimated time of part number
arrival (availability) by facsimile within five (5) working days.
It is understood and agreed that emergency parts support will
be provided only when Systems is inoperative at End-User's location and TOSHIBA
has maintained a regular stock of spare parts which is exhausted and TOSHIBA
has no inventory at hand to effect the repair or has an open order for the
spare parts sought on an emergency basis.
T/R may decline to honor an emergency spare parts order where
(i) TOSHIBA has failed to maintain the inventory levels recommended in the
Recommended Stocking List or (ii) T/R does not have such spare part in its
inventory; provided however, that in such event, T/R shall advise TOSHIBA
within five (5) Days of the estimated date of delivery of such spare part.
Separate purchase orders must be issued by TOSHIBA for each shipment
destination.
(B) Lead-Time. Except when a spare part is not in stock, T/R will
generally ship within [ * ] working days of the receipt of an Emergency Order
or to meet TOSHIBA's due date whichever is later.
(C) Handling and Freight Charges. A handling charge equal to
[ * ] percent ([ * ]%) of the regular TOSHIBA price for the part shall be added
to any part shipped from stock, except when the part had been previously ordered
by TOSHIBA and has not been delivered within the time frames set forth in 2.B
above. TOSHIBA shall designate the method of delivery and shall bear the costs
hereof.
(D) Emergency Order Limitations. A daily maximum of [ * ] part
numbers, each with no more than [ * ] units may be ordered.
4. Duration of Spare Parts Support
T/R shall make available to TOSHIBA the spare parts and consumables
during the term of this Agreement and for a minimum of [ * ] years from the
earlier of the date of termination to the Agreement, the date of discontinuance
of the item or the Deliverables or from delivery of the last unit of equipment
included within Deliverables hereunder. Thereafter, T/R shall give TOSHIBA
ninety (90) days prior written notice of
* Confidential information has been omitted and filed separately with the
Commission.
- 23 -
24
discontinuance and the opportunity to purchase a reasonable number of such
parts within the said ninety (90) day period.
T/R shall, from time to time, during the term of the Agreement, make
available to TOSHIBA its most current list of supplies for the Deliverables and
the prices then applicable thereto In the event of manufacturer production or
shipping delays, T/R shall allocate distribution of such items in a fair and
equitable manner among all other customers, even though this may effectively
limit delivery of ordered quantities.
5. Terms of Payment for Spare Parts and Repairs
Payment is due [ * ] days after bill of lading date.
ALL SPARE PARTS PRICES FOR T/R ARE QUOTED ON A F.O.B. NEAREST U.S.
SHIPPING POINT WHERE PARTS ARE THEN AVAILABLE. THEY SHALL BE INVOICED AND
PAYABLE IN U.S. DOLLARS.
6. Service Documentation
T/R will supply TOSHIBA, one set of documentation with the initial
delivery of Deliverables. TOSHIBA may purchase reasonable additional quantities
of documentation for TOSHIBA's internal use only at T/R's then prevailing
prices. With reasonable lead-time, T/R shall deliver to TOSHIBA artwork for
reproduce and publish portions of said documentation for incorporation in
TOSHIBA's own User Manual and Field Maintenance Manual(s). Such manual(s) of
TOSHIBA shall bear a copyright notice of TOSHIBA provided, however, that any
copyright interest of TOSHIBA therein shall be subordinate to any existing
copyright interest of T/R or such other author as T/R may designate.
* Confidential information has been omitted and filed separately with the
Commission.
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25
ATTACHMENT C
MICROPRESS(TM) SOFTWARE LICENSE AGREEMENT
This Software License Agreement enumerates the terms and conditions upon which
T/R Systems, Inc., grants use of the MicroPress software programs ("Software")
and MicroPress documentation ("Documentation") to the end-user of the
MicroPress digital printing system. T/R Systems, Inc., the owner and licensor
of the Software and Documentation, is referred to as "Licensor", and the
end-user and purchaser of the MicroPress(C) system is referred to as the
"User".
1. LICENSE. Licensor is the exclusive owner of the Software and
Documentation. Licensor grants to User, and User accepts, a non-exclusive
license to use the Software and Documentation.
User's right to use the MicroPress Software and Documentation under this
Agreement is called the "License." Software means the computer programs
included within the MicroPress digital printing system being sold to User
contemporaneously with delivery of this Agreement (the "Purchased MicroPress").
Documentation means any user manual and other materials provided User relating
to the Software.
2. AUTHORIZED USER. User alone has the right to use the Software and
Documentation. User may not allow another person or entity to use the Software
or Documentation, except to the extent permitted by Section 4 of this
Agreement.
3. AUTHORIZED USE. User may use the Software and Documentation only with
the MicroPress digital printing system at User's principle place of business.
User may not use the Software in respect of any other printers or any other
equipment whatsoever.
Without T/R Systems' prior express written consent, User may NOT (a) copy the
Software, (b) copy the Documentation, other than for its internal use; (c)
decompile, disassemble, reverse engineer, or cross-compile the Software or seek
to do any of the foregoing; (d) merge or embed the Software into another
program; or (e) modify or alter the Software or Documentation, or (f) install
the Software on any equipment outside its principal place of business.
4. ASSIGNMENT. User may assign the License to another person, but ONLY if
(a) prior written approval is obtained from the Company, (b) the assignment is
for the remainder of the License term, (c) User delivers all of the Software
and Documentation to the assignee, (d) the assignee delivers the Software
License Agreement in this form in favor of Licensor, (e) the entire Purchased
MicroPress system is transferred and delivered to the assignee and (f) the
assignee agrees in writing with T/R Systems to be bound by the terms hereof.
When User assigns this License, User's right to use the Software and
Documentation ends. User may not assign the License or direct product of the
Software or
- 25 -
26
Documentation to persons located in certain countries specified by the United
States Export Administration Act.
5. TERM. The License is effective for a term coincident with use of the
Purchased MicroPress. Licensor may terminate the License if User violates this
Agreement. User must then return the Software and the Documentation and all
copies thereof to Licensor.
6. LICENSOR'S RIGHTS. Licensor's Software and Documentation contain
confidential unpublished information protected by copyright, trade secret,
trademark and patent laws. User may not disclose the Software or Documentation
to others, or remove or alter Licensor's ownership and copyright notices on the
Software, Purchased MicroPress or the Documentation. User must prevent any
unauthorized use, copying, or disclosure of the Software and Documentation.
These obligations survive any termination or the License.
7. INFRINGEMENT. User shall promptly notify Licensor if any party makes a
claim against User that the Software or Documentation infringes its rights. If
User gives Licensor sufficient notice and such claim of infringement is deemed
by Licensor to represent a bona fide claim, Licensor will at its option defend,
settle or compromise such claim. Licensor may at its option make the Software
and Documentation non-infringing, obtain for User the right to use the Software
and Documentation, or give User an appropriate refund based on the depreciated
value of the Software and the Documentation. This is User's sole remedy in the
event of a claim of infringement.
8. LIMITED WARRANTY AND DISCLAIMER OF OTHER WARRANTIES AND LIABILITIES.
Licensor warrants that the Software will be free of material defects for a
period of [ * ] days immediately following the date of delivery. Without
limiting the generality of the foregoing, Licensor shall not have any
responsibility for any third party products, service, hardware, software or
other items provided with or incorporated into the MicroPress digital printing
system.
EXCEPT FOR THE LIMITED WARRANTY DESCRIBED ABOVE, THERE ARE NO WARRANTIES,
EITHER EXPRESSED OR IMPLIED, FOR THE SOFTWARE OR DOCUMENTATION, WHICH ARE
LICENSED TO USER "AS IS." LICENSOR EXPRESSLY DISCLAIMS ANY WARRANTY AS TO
PERFORMANCE OF THE SOFTWARE OR AS TO RESULTS USER MAY OBTAIN FROM IT. LICENSOR
ALSO EXPRESSLY DISCLAIMS ALL OTHER WARRANTIES, INCLUDING (WITHOUT LIMITATION)
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
IN NO EVENT SHALL LICENSOR, OR ANYONE ELSE WHO HAS BEEN INVOLVED IN THE
CREATION, PRODUCTION, OR DELIVERY OF THE SOFTWARE OR DOCUMENTATION, BE LIABLE
FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR INCIDENTAL DAMAGES WHETHER ARISING
IN CONTRACT OR IN TORT RESULTING FROM THE USE OF THE SOFTWARE OR DOCUMENTATION
OR ARISING OUT OF ANY BREACH OF ANY WARRANTY.
* Confidential information has been omitted and filed separately with the
Commission.
- 26 -
27
IN NO EVENT SHALL THE LICENSOR'S LIABILITY TO USER FOR DAMAGES OF ANY NATURE
EXCEED THE TOTAL CHARGES PAID FOR THE SOFTWARE OR DOCUMENTATION BY THE USER.
9. GENERAL. This Agreement shall be governed by the laws of the State of
Georgia and the United States. If, notwithstanding the foregoing choice of law,
the law of another jurisdiction is applied to this Agreement, then any term of
this Agreement found to be inconsistent with such law shall automatically be
deemed to be revised to the limited extent necessary to comport with such law
without affecting any of the remaining terms. Any waiver by Licensor of a
breach of this Agreement shall not constitute a waiver of any later breach. No
legal action arising out of this Agreement may be commenced by User more than
one year after the cause of action has accrued. In any legal action to enforce
this Agreement, the prevailing party shall be entitled to recover reasonable
expenses and attorneys' fees.
This Agreement represents the entire and complete agreement between the parties
hereto, and supersedes any prior agreement, oral or written, and any other
communications between the parties on the Software and Documentation. This
Agreement will be effective upon delivery of the MicroPress digital printing
system together with the License Software and Documentation.
T/R Systems, Inc.
1300 Oakbrook Drive
Norcross, GA 30093
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