Exhibit 10.33
LICENSE SOFTWARE ADDENDUM #8
to
MASTER TECHNOLOGY LICENSE AGREEMENT
between
KONICA CORPORATION
and
PEERLESS SYSTEMS(R) CORPORATION
Confidential treatment has been requested for portions of this exhibit. The
copy filed herewith omits the information subject to the confidentiality
request. Omissions are designated as *. A complete version of this exhibit has
been filed separately with the Securities and Exchange Commission.
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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LICENSED SOFTWARE ADDENDUM #8 TO
MASTER TECHNOLOGY LICENSE AGREEMENT
DATED JANUARY 16, 2000
This Licensed Software Addendum #8 (hereinafter referred to as
"Addendum #8") is entered into as of, January 1, 2002, (the "Effective Date") by
and between by and between Konica Corporation, a Japanese corporation ("KONICA")
and PEERLESS Systems(R) Corporation, a Delaware corporation ("PEERLESS"),
pursuant to the provisions of the Master Technology License Agreement between
those Parties dated January 16, 2000 (the "MTLA"). That MTLA provides that
KONICA may license certain Licensed Products from PEERLESS pursuant to one or
more Addenda to the MTLA executed by KONICA and PEERLESS. This Addendum #8 is
hereby made part thereof, and the terms and conditions of the MTLA are
incorporated by reference herein. This Addendum #8 contains the terms and
conditions regarding the licensing of a certain PEERLESS Proprietary Software
Product in Source and Object Code formats designated the PEERLESS SPS Software
Development Kit compatible with WindRiver Systems VxWorks(R). PEERLESS hereby
represents and Warrants to KONICA to agree to be bound by the terms and
conditions of the MTLA as such may relate to this Addendum #8.
1. DEFINITIONS.
All capitalized terms used herein shall have the meaning specified in this
Addendum #8 or, if not defined herein, then the meaning specified in the MTLA.
For terms that are defined both in this Section 1 and in the MTLA, the
definitions provided herein shall govern for all purposes hereof.
1.1 Derivative Work. "Derivative Work" means (i) for copyrightable or
copyrighted material that is based on one or more pre-existing works, such as a
revision, modification, translation, abridgment, condensation, expansion, or any
other form in which pre-existing works may be recast, transformed, or adapted;
and (ii) for patentable or patented material, any improvement thereon; and (iii)
for material which is protected by trade secret, any new material derived from
such existing trade secret material; including new material which may be
protected or protectable by copyright, patent and/or trade secret, and that, if
prepared without authorization of the owner of the copyright, patent and trade
secret in such preexisting work, would constitute an infringement. "Derivative
Work" expressly does not include, without limitation, the following: (a)
pre-existing KONICA Technology or Confidential Information; (b) KONICA
Technology or Confidential Information developed independently and without
reference to any PEERLESS Confidential Information; (c) any third party
Technology or Confidential Information; and (d) any modification, enhancement,
addition, implementation, or any derivative whatsoever of the foregoing (a)
through (c) as long as no PEERLESS Technology or Derivative Works thereof are
included therein
1.2 KONICA Facilities. "KONICA Facilities" means the facilities set forth in
Section 10 herein, which are deemed to be the authorized KONICA Facilities as of
the Effective Date.
1.3 KONICA Technology. "KONICA Technology" means any and all proprietary Code,
technology, inventions, works of authorship, know-how, algorithms, methods,
processes, procedures, techniques, solutions, and any other type of technical
information developed by and/or used by KONICA, and which may be provided to
PEERLESS.
1.4 PEERLESS Technology. "PEERLESS Technology" means any and all proprietary
Code, technology, inventions, works of authorship, know-how, algorithms,
methods, processes, procedures, techniques, solutions, and any other type of
non-public technical information provided by PEERLESS and used to design,
develop, test, manufacture or distribute the PEERLESS Proprietary Software
Product, including without limitation, any and all Technology embodied in the
PEERLESS Material and Source Materials, excluding any KONICA Technology.
1.5 Source Code. "Source Code" means Code in programming languages such as "C"
and Fortran, including all comments and procedural code (e.g. job control
language (JCL) statements), plus all related development
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Final (January 25, 2002) Page 1 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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documents (e.g. flow charts, schematics, statements of principles of operations,
end-user manuals, architectural standards, and any other specifications that are
used to create or comprise the Source Code) and build procedures (e.g. batch
files, member files, etc.)
1.6 Source License. "Source License" means the rights granted pursuant to
Section 2.1.1 of this Addendum #8.
1.7 Technology. "Technology" means any and all proprietary Code, technology,
inventions, works of authorship, know-how, algorithms, methods, processes,
procedures, techniques, solutions, and any other type of non-public technical
information.
2 SOURCE AND OBJECT LICENSE AND OWNERSHIP
2.1 Description of License
2.1.1- Source Code License Granted: Without limiting any of KONICA's
rights under the MTLA and subject to the provisions of this Addendum #8 as well
as payment of the applicable license fees specified in Section 3.1 hereof,
PEERLESS grants KONICA a non-exclusive, non-assignable and non-transferable
license to use, modify and make no more than five (5) copies of the Source Code
for the PEERLESS Proprietary Software Product and Derivative Works thereof,
KONICA may store and use the Source Code at the KONICA Facilities specified in
Section 10 below. This Source Code License is only valid in conjunction with the
NEST OFFICE SDK License Agreement between the Parties.
2.1.2 - Object Code License Granted: Without limiting any of KONICA's
rights under the MTLA and subject to the provisions of this Addendum #8 as well
as payment of the applicable license fees specified in Section 3.2 hereof,
PEERLESS grants KONICA a non-exclusive, non-assignable and non-transferable
license to create, demonstrate, disclose, use, make and distribute the PEERLESS
Proprietary Software Product and Derivative Works thereof in Object Code format
in conjunction with the Authorized KONICA Device(s) specified in Section 2.3
below. This Object Code License is only valid when the Licensed Product is
shipped with a copy of the Licensed Product identified in the NEST OFFICE SDK
License Agreement between the Parties in accordance with the terms and
conditions of that Agreement.
2.2 Product Distribution: Subject to the provisions of Section 2.6.3, each
Derivative Work made to the PEERLESS Proprietary Software Product, if it is to
be distributed by KONICA in any products other than the Authorized KONICA
Devices, requires the development and execution of a separate Licensed Software
Addendum. The PEERLESS Proprietary Software Product and Derivative Works thereof
covered in this Addendum #8 currently are limited for use in conjunction with
the Authorized KONICA Device(s) designated in Section 2.3 below.
2.3 Authorized KONICA Device(s): KONICA is authorized to use and distribute the
PEERLESS Proprietary Software Product listed below and Derivative Works thereof
in object code format only in the following Authorized KONICA Device(s), each of
which requires the execution of an separate Licensed Software Addendum:
. Each existing or future KONICA imaging device products,
including without limitation those bearing the dual brand
name and those distributed on an OEM-basis
2.4 Term And Termination/Additional Rights After Termination: The term of the
Source License shall be contemporaneous with the term of the License as
determined in accordance with Section 6.1 of the MTLA. After termination of the
Source License, KONICA may, in addition to any rights granted under the MTLA,
retain one (1) copy of the PEERLESS Proprietary Software Product Source Code and
Source Code Derivative Works thereof solely for providing maintenance support or
similar services in connection with any Machine Executable Copies distributed
pursuant to an Addendum to the MTLA.
2.5 Deliverables: PEERLESS shall transmit to one of the KONICA Facilities one
(1) copy of the Source Code and related standard documentation for the PEERLESS
Proprietary Software Product.
2.6 Ownership:
2.6.1 All processes, the pre-existing PEERLESS Proprietary Software
Product (including documentation and Source Code), technology, trade secrets,
know-how, and other non-public technical
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Final (January 25, 2002) Page 2 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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information relating to the pre-existing PEERLESS Proprietary Software Product
and any copyrights, patents, trademarks, or other intellectual property,
technology, trade secrets, know-how, and other non-public technical information
relating to the pre-existing PEERLESS Proprietary Software Product and any
copyrights, patents, trademarks, or other intellectual property pertaining to
any of the foregoing or other works provided by PEERLESS are and shall remain
solely the property of PEERLESS.
2.6.2 In the case of all Derivative Works contemplated or prepared
under this Addendum #8 by either Party, PEERLESS shall continue to own the
underlying Source and Object Code of the PEERLESS Proprietary Software Product
and all proprietary rights thereto. Any Derivative Works made to the PEERLESS
Proprietary Software Product solely by PEERLESS shall be owned by PEERLESS. Any
Derivative Works made to the PEERLESS Proprietary Software Product jointly by
KONICA and PEERLESS shall be owned solely by PEERLESS. KONICA is granted the
non-exclusive, non assignable and non-transferable right and royalty-bearing
license to use such Derivative Works as a whole to the same extent it is
licensed to use the PEERLESS Proprietary Software Product as set forth in this
Addendum #8 or as it may be licensed in a further Licensed Software Addendum to
the MTLA. KONICA agrees that PEERLESS shall have an irrevocable, worldwide and
royalty-free right of ownership to use such Derivative Works jointly made to the
PEERLESS Proprietary Software Product by PEERLESS and KONICA and to use, sell,
or otherwise dispose of same.
2.6.3 Any and all Derivative Works wherein the modifications are made
solely and exclusively by KONICA to the PEERLESS Proprietary Software Products
shall be owned solely by PEERLESS. PEERLESS herein grants to KONICA an
exclusive, paid-up license to use such Derivative Works as a whole to the same
extent it is licensed to use the PEERLESS Proprietary Software Product as set
forth in this Addendum #8 or as it may be licensed. in a further Licensed
Software Addendum to the MTLA.
2.6.4 Except as set out in Paragraphs 2.6.2 and 2.6.3 above or
specifically agreed to between the Parties in a separate written agreement
signed by both Parties, PEERLESS obtains no other rights or license whatsoever
with respect to any KONICA intellectual property, confidential information or
KONICA Technology, or any modification, enhancement, Derivative Work thereof, or
addition thereto.
2.6.5 As to each other only, the rights of either Party to use, copy,
modify, demonstrate, and/or distribute the PEERLESS Proprietary Software Product
or Derivative Works thereof are restricted by the scope of license granted under
Section 2 of the MTLA or as set out in this Addendum #8.
2.7 PEERLESS Proprietary Software Products:
. PEERLESS SPS Software Developer Kit Compatible with VxWorks(R)
inclusive of PEERLESS' Novell NEST Office SDK.
2.8 Software Delivery: Promptly upon execution by both Parties of this Addendum
#8.
3. SOURCE CODE LICENSE FEES, MAINTENANCE FEES AND ROYALTIES
3.1 Source Code License Fees. The one-time Source Code License Fee ("SCLF") is
for the licenses granted in the manner hereinabove to the Source Code to the
PEERLESS Proprietary Software Product for the development of KONICA's products.
There is no right to distribute such Source Code to others without PEERLESS'
prior written authorization.
The SCLF for the above named PEERLESS Proprietary Software Product for the
KONICA Facilities listed in Section 10 shall be US$* (* dollars), payable within
thirty (30) days after the date of last signature of this Addendum #8. KONICA
recognizes and accepts that the SCLF is non-refundable, non-transferable and
non-creditable.
3.2 Royalties. The per unit royalty for each Object Code copy of the PEERLESS
Proprietary Software Product that is distributed in an Authorized KONICA Device
shall be US$* (* dollars).
3.3 Maintenance Fees (*) Post-Warranty Technical Support and Maintenance is
required to maintain the PEERLESS SPS SDK License. PEERLESS offers a separate
annual Technical Support and
* Confidential treatment has been requested for portions of this exhibit. The
copy filed herewith omits the information subject to the confidentiality
request. Omissions are designated as *. A complete version of this exhibit has
been filed separately with the Securities and Exchange Commission.
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Final (January 25, 2002) Page 3 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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Maintenance Agreement after the 90-day warranty period. It is agreed that
following the initial 90 (ninety) day warranty period, for each 12 month period
thereafter the effective date of this Addendum #8, KONICA shall pay to PEERLESS
an Annual Technical Support and Maintenance Fee as detailed herein.
Two support levels are available to KONICA:
. Bronze Support: 15 hours of phone or email support and bug fixes for
one year U.S.$ */year per site, and
. Platinum Support: 30 hours of phone or email support, bug fixes &
minor enhancements for one year U.S.$ */year per site.
KONICA must select the level of support in writing 30 (thirty) days prior to the
expiration of the warranty period. If KONICA has not made a selection in writing
within the above deadline for the first year, KONICA shall commit to Platinum
Support for the first year. For all subsequent years, if KONICA has not made a
selection in writing within the above deadline for the upcoming year, KONICA
shall commit to continuing the current level of support.
Such Software Maintenance Agreement shall provide KONICA, without limitation,
Update Releases. The term "Update Releases" means a version of the PEERLESS
Proprietary Software Product that is commercially released at PEERLESS' sole
discretion by PEERLESS for general distribution, for the purposes of (1)
correcting program defects in the PEERLESS Proprietary Software Product and (2)
improving functionality of the PEERLESS Proprietary Software Product. Each
Update Release will be designated by PEERLESS at its sole discretion by a
version number (X.X) that differs from the version number of the Current Release
only in the digits to the right of the decimal point (X.X).
4. COPYRIGHT NOTICES For the purpose of this Addendum #8, the copyright notices
required are:
Copyright (C) 2001 PEERLESS, Inc.
Notwithstanding the foregoing, PEERLESS and KONICA may negotiate, on a specific
application basis, variations from the copyright notice described under this
Section 4 for the Licensed Products. However, it is agreed between the Parties,
that KONICA may make no such variation without the prior written approval of
PEERLESS.
5. ANNOUNCEMENTS. For the purpose of this Addendum #8, KONICA's obligations
pursuant to Sections 15.1 and 15.2 of the MTLA remain unchanged.
6. TRAINING. KONICA shall pay for any training at PEERLESS' then current rates
for such training.
7. TELEPHONE SUPPORT. Under this Addendum #8, PEERLESS shall provide only the
telephone support required by the Maintenance Fees in Section 3.3 above to
KONICA during PEERLESS' normal working hours (8:00 AM to 5:00 PM PST/PDT).
KONICA shall provide PEERLESS the name of KONICA employee(s) that shall be the
sole and exclusive employee(s) that may contact PEERLESS with questions
regarding the PEERLESS Materials and PEERLESS Technology.
8. WARRANTY. The duration of warranties for the PEERLESS Proprietary Software
Product under the Section 8 of the MTLA shall be for * (*) days after
acceptance by KONICA, as described hereinafter. PEERLESS warrants that the
PEERLESS Proprietary Software Products provided or modified under this Addendum
#8 will perform substantially in accordance with the user's manual and
instructions furnished by PEERLESS. After a thirty day period following delivery
of the modified PEERLESS Proprietary Software Product during which KONICA will
complete its compile, link, QA and acceptance activities, and notify PEERLESS in
writing of its acceptance that such PEERLESS Proprietary Software Product is
fully functional according to the user's manual and instructions furnished by
PEERLESS and has an acceptable build procedure, PEERLESS will provide a 90
(ninety) day warranty period. If KONICA does not so notify PEERLESS within the
30 day period, the Parties agree that in such an event, KONICA accepts said
PEERLESS Proprietary Software Product as received.
9. INDEMNIFICATION. PEERLESS shall defend and hold harmless KONICA from any
liabilities to any third parties, as finally awarded by a court of competent
jurisdiction, arising out of, and any costs and
* Confidential treatment has been requested for portions of this exhibit. The
copy filed herewith omits the information subject to the confidentiality
request. Omissions are designated as *. A complete version of this exhibit has
been filed separately with the Securities and Exchange Commission.
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Final (January 25, 2002) Page 4 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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expenses of defending or settling, any claim that the PEERLESS Proprietary
Software Product or any part thereof infringes any copyright, patent or trade
secret existing at the time of this Addendum #8 under the same terms, conditions
and limitations that PEERLESS indemnifies KONICA under the MTLA.
10. AUTHORIZED KONICA AFFILIATES AND SUBSIDIARIES FACILITIES. KONICA, composed
of the Affiliates and Subsidiaries listed herein shall use the PEERLESS
Proprietary Software Product only at the KONICA Facility located at No. 2970,
Ishikawa-cho, Hachioji-shi, Tokyo, Japan 192-8505 ("KONICA Facility"). KONICA
shall designate any additional laboratory sites in writing to PEERLESS. KONICA
may make a written request, and PEERLESS shall not unreasonably withhold a
change of venue for any of the site licenses granted in this Addendum #8. The
Authorized KONICA Device(s) shall be manufactured at and by a semiconductor
manufacturer to be designated by KONICA.
IN WITNESS WHEREOF, the Parties hereto have executed this Licensed Software
Addendum #8 as of the Effective Date.
KONICA CO., LTD. PEERLESS SYSTEMS CORPORATION
By: By:
/s/ Yoshiaki Ando /s/ Ron Davis
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(Authorized Signature) (Authorized Signature)
Name: Yoshiaki Ando Name: Ron Davis
Title: General Manager of Planning Department: Title: Vice President of Sales
Business Machines Sales and Marketing Division
Date: January 29, 2002 Date: January 29, 2002
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Final (January 25, 2002) Page 5 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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EXHIBIT A - PAYMENTS AND PAYMENT TERMS
1.0 PER UNIT LICENSE FEES: For each Authorized KONICA Device shipped pursuant to
this Addendum #8, PEERLESS and KONICA agree that there shall be a
non-refundable, non-transferable and non-creditable Per Unit License Fee due and
to be paid to PEERLESS.
2.0 OTHER PROVISIONS: KONICA shall pay royalties due on the Authorized KONICA
Devices shipped to KONICA OEMs hereunder in United States dollars. The Per Unit
License Fee obligation shall accrue at the time each Authorized KONICA Device
containing the Licensed Product(s) is shipped to a KONICA OEM, but shall be
reported and paid on a calendar quarter basis.
KONICA agrees to make such report within * (*) days following the end of
each calendar quarter, and make payment within * (*) days following the
end of each calendar quarter, commencing with the date of first shipment and
continuing until KONICA discontinues shipping the Authorized KONICA Device
containing Licensed Product(s). KONICA will notify in writing PEERLESS at the
time of the discontinuance of the Authorized KONICA Device. KONICA will also
provide PEERLESS each quarter a rolling monthly forecast for the subsequent six
months of the Authorized KONICA Devices containing the Licensed Product(s).
License fees for the PCL fonts and font scaling technology are not included in
the KONICA Per Unit License Fees outlined above. These fees must be negotiated
with, and paid directly to, Bitstream, Inc. and/or the Agfa Corporation.
2.1 BUY DOWN: Without limiting any of KONICA's rights under the MTLA, and
subject to the provisions of this Addendum #8 and the NEST Office SDK License
Agreement as well as the payment of all applicable fees as stated in this
Exhibit A for the term of such license, PEERLESS grants to KONICA reduced Per
Unit License Fee for the PEERLESS Proprietary Software Products identified in
Section 2.7 of this Addendum #8:
2.1.1 Buy Down Payment. PEERLESS has granted KONICA a buy down rate for
PEERLESS Licensed Products contained in the Authorized KONICA Devices. This
buy down rate shall be granted upon the non-refundable, non-transferable
and non-creditable payment of U.S.$ * (* dollars), due and payable as of
the *. This buy down payment shall be paid on the following dates:
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
Payment of U.S.$ * (* dollars) no later than *
2.1.2 Buy Down Terms and Conditions. The terms and conditions of the buy
down rate granted to KONICA are as follows:
a) The application of the buy down rate shall apply to the use of the
following named PEERLESS Licensed Products: PEERLESS' Novell NEST
Office SDK, PEERLESS SPS Software Development Kit compatible with
WindRiver Systems VxWorks(R).
b) The following named KONICA Authorized Devices, including those which
have been renamed by KONICA Authorized OEM Remarketers, may be
distributed with the following reduced recurring Per Unit License
Fee for each Object Code copy of the named PEERLESS Licensed
Products distributed as set out in Table 1 below:
* Confidential treatment has been requested for portions of this exhibit. The
copy filed herewith omits the information subject to the confidentiality
request. Omissions are designated as *. A complete version of this exhibit has
been filed separately with the Securities and Exchange Commission.
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Final (January 25, 2002) Page 6 Initials: PEERLESS __; KONICA __
KONICA/PEERLESS Licensed Software Addendum #8 (SPS) CONFIDENTIAL
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Authorized KONICA Devices shall be named in a separate Agreement.
TABLE 1 - PER UNIT FEES
--------------------------------- --------------------------------
PEERLESS Licensed Products Per Unit License Fee under Block
License
--------------------------------- --------------------------------
PEERLESS' SPS Software US$*
Development Kit compatible with
WindRiver Systems VxWorks(R)
inclusive of PEERLESS' Novell
NEST Office SDK
--------------------------------- --------------------------------
c) KONICA will apply the above stated recurring Per Unit License Fee
to the actual number of Authorized KONICA Devices shipped which
contain the Object Code copies of the PEERLESS Licensed Products
set out in 2.5.2 (a) above, and will thus calculate the equivalent
earned recurring license fee.
d) The Source Code License Fee of US$* (* dollars) is waived in
recognition of the buy down payment.
e) The fee for the first year of Platinum Support as identified in
Section 3.3 of this LSA #8 is waived in recognition of the buy
down payment.
f) The buy down rate shall be valid as long as KONICA is committed to
a minimum support level of Bronze Support as identified in Section
3.3 of this Addendum #8. If the buy down rate is no longer in
effect, KONICA will be required to pay the Per Unit Royalty
identified in Section 3.2 of this Addendum #8.
g) The Access Fee, Royalties, and Minimum Annual Royalty identified
in Sections 11.a, b, & c of the NEST Office SDK License Agreement
Supplement shall be waived for every full calendar quarter that
the buy down rate is valid. If the buy down rate is no longer in
effect, KONICA will be required to pay the Access Fee, Royalties,
and Minimum Annual Royalty identified in Sections 11.a, b & c of
the NEST Office SDK License Agreement.
///End
* Confidential treatment has been requested for portions of this exhibit. The
copy filed herewith omits the information subject to the confidentiality
request. Omissions are designated as *. A complete version of this exhibit has
been filed separately with the Securities and Exchange Commission.
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Final (January 25, 2002) Page 7 Initials: PEERLESS __; KONICA __