Exhibit 10.36
LICENSED SOFTWARE ADDENDUM # 1
to
MASTER TECHNOLOGY LICENSE AGREEMENT
between
KYOCERA CORPORATION
and
PEERLESS SYSTEMS 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.
LICENSED SOFTWARE ADDENDUM #1
TO
MASTER TECHNOLOGY LICENSE AGREEMENT (MTLA)
DATED: April 1, 1997
1.0 Descriptions
1.1 The Authorized Products: Kyocera produced and branded monochrome or color
laser printer products with print resolution of 2400 dots per inch (dpi) or
less.
1.2 Licensed Software: Which shall be covered by this Addendum shall be:
a) PeerlessPrint(TM)XL (an emulation the Hewlett Packard Co.'s PCL XL) for use
with monochrome laser printers with a non-Peerless developed operating
system.
b) PeerlessPage(TM)Imaging/Operating System for use with color laser printers
c) Windows Driver Source Code for PeerlessPrint(TM)5C (this shall include
drivers for Windows 3.x, 95, and NT 4.0. Availability of NT 5.0 subject to
its release and specification and good faith negotiation between the
parties)
d) PeerlessPrint(TM)5C (an emulation of Hewlett Packard Co.'s PCL 5c)
2.0 Copyright Notice
For the purpose of this Addendum, the trademark notices required pursuant to
Section 5.2 of the MTLA shall be for each of the trademarked products noted in
Section 1.2 above:
Trademark of Peerless Systems Corporation
3.0 Training
Pursuant to Section 4.0 of the MTLA, Peerless will make available suitable
training for up to ten (10) Kyocera personnel. Such training will be held at
Peerless' El Segundo facility. Kyocera will be responsible for all costs
associated with the travel and living expenses of their respective employees.
The initial training class of up to 5 (five) days is provided gratis and maybe
video taped by Kyocera for their future use. Additional training classes may be
contracted for by Kyocera at Peerless' then standard rates.
4.0 Telephone Support
Kyocera shall be entitled to 40 hours of telephone technical support, for each
Licensed Software identified in Section 1.2 of this Addendum #1 at no additional
charge. Such support maybe provided only through a Kyocera employee who has been
previously designated, and identified to Peerless, as the technical interface.
Additional telephone support maybe provided at Peerless' then standard Time and
Material rate.
5.0 License
Pursuant to Section 2.1 of the MTLA, Kyocera is licensed to use, copy, have
copied, distribute and sell the Authorized Products (per Section 1.1 above)
containing the Licensed Software (per Section 1.2 above).
6.0 Warranties
Pursuant to Section 8 of the MTLA, Kyocera is granted a warranty for the
Licensed Software identified in this Addendum #1. Such warranty shall be for a
period of * days from delivery of Source Code to Kyocera.
* 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.
Pursuant to the Warranty limitations identified in Section 8.3 of the MTLA, the
Peerless Warranty does not extend to the preexisting Kyocera supplied PCL5 or
PJL code, or the impacts of such code to the Licensed Software.
7.0 License Fees and Payments. Kyocera shall pay Peerless the following Fees as
compensation for the Licenses identified in Section 1.2 above.
7.1 Source License Fee for PeerlessPrint(TM)XL, PeerlessPrint(TM)5C, and
PeerlessPage(TM) Imaging/Operating System. The total Source Code License
Fee for PeerlessPrint(TM)XL, PeerlessPrint(TM)5C, and PeerlessPage(TM)
Imaging/Operating System is U.S.$ * (* dollars). This amount became due and
payable 30 (thirty) days after delivery of the Source Code to Kyocera by
Peerless on January 24, 1997.
7.2 Limited Distribution Fee for PeerlessPrint(TM)XL, PeerlessPrint(TM)5C, and
PeerlessPage(TM) Imaging/Operating System. Kyocera shall pay Peerless U.S.
$* (* dollars) for Monochrome Kyocera Authorized Products and U.S. $* (*
dollars) for Color Kyocera Authorized Products for a Limited Distribution
License for PeerlessPrint(TM)XL, PeerlessPrint(TM)5C, and PeerlessPage(TM)
Imaging/Operating System. This license is effective as of April 1, 1997 and
will remain in effect either:
a) through March 31, 2001, or twelve calendar quarters following
First Customer Shipment (FCS) of the initial Authorized Product
containing the Licensed Software (whichever occurs sooner): or,
b) as long as the cumulative Equivalent Recurring License Fees (as
calculated per Section 7.3 of this Amendment) remains less then
the Limited Distribution License for each product segment as
identified herein this Section 7.2 (for purposes of this contract
Product Class shall mean either Monochrome or Color Kyocera
Authorized Products.) In the event, that the cumulative
Equivalent Recurring License Fees equals, or exceeds the Limited
Distribution Fees for either Product Class at the end of any of
the twelve calendar quarters then:
i) Kyocera will promptly pay Peerless any difference between
the cumulative Equivalent Recurring License Fee and the
Limited Distribution Fee; and,
ii) All further licensed use of the Licensed Software will be
made on the basis of payment of a Recurring Per Unit License
Fee which is the equivalent of the Equivalent Recurring
License Fee as established in Section 7.3 of this Addendum.
If at the end of the twelve (12) calendar quarters, as defined in this
Section 7.2, the Limited Distribution License Fee exceeds the Equivalent
Recurring License Fee, Kyocera shall relinquish any claim to recovery of
any portion of the Limited Distribution Fee.
7.3 Equivalent Recurring License Fee. The Equivalent Recurring License Fees for
each of the Product Classes shall be calculated as follows:
7.3.1 For Monochrome Products *% ( * ) of the Suggested Retail Price
(SRP) of the Authorized Kyocera Product.
* 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.
Page 14
PEERLESS PROPRIETARY
7.3.2 For Color Products *% ( * ) of the
Suggested Retail Price (SRP) of the Authorized Kyocera
Product.
7.4 Unlimited Distribution and Source Code License Fee for Windows Driver.
Kyocera shall pay Peerless a fee of U.S. $* (* dollars) for an Unlimited
Distribution rights and a Source Code License for a Peerless developed
Windows Driver. This right and license is effective as of April 1, 1997 and
will remain in effect either: through March 31, 2001, or twelve calendar
quarters following First Customer Shipment (FCS) of the initial Authorized
Product containing the Peerless developed Windows Driver (whichever occurs
sooner). This Unlimited Distribution and Source Code License Fee is in lieu
of any Per Unit Recurring License Fees during the defined period.
7.4.1 Following the defined period, Kyocera will retain the
Source Code License, but will pay a Per Unit Recurring
License Fee for each Kyocera Authorized Product shipped
contained the Peerless developed Windows Driver as
follows:
a) For each Color Kyocera Authorized Product a Per Unit
Recurring License Fee of $* (*dollars).
b) For each Monochrome Kyocera Authorized Product a Per
Unit Recurring License Fee of $* (*dollar).
7.5 Payment of the Limited and Unlimited Distribution Fees shall be as follows:
a) On *, payment of U.S. $* (*dollars) of the Limited
Distribution Fee and U.S. $* (* dollars) of the Unlimited
Distribution and Source Code License Fee; and,
b) On *, payment of U.S. $* (*dollars) of the Limited
Distribution Fee; and, U.S. $* (* dollars) of the
Unlimited Distribution and Source Code License Fee; and,
c) On *, payment of U.S. $* (*dollars) of the Limited
Distribution Fee; and, U.S. $* (*) of the Unlimited
Distribution and Source Code License Fee
d) On *, payment of U.S. $* (*dollars) of the Limited
Distribution License Fee.
e) On *, payment of U.S. $* (*dollars) of the Limited
Distribution License Fee.
7.6 Reporting. Kyocera will be responsible to provide Peerless a report
containing the Equivalent Recurring License Fees and the Cumulative Equivalent
Recurring License Fee within thirty (30) days following the end of each calendar
quarter. In the event that the Equivalent Recurring License Fee becomes the
Recurring Per Unit License Fee (per Section 7.2 herein) or at the expiration of
the Unlimited Distribution License, or at the expiration of the defined period
for the Unlimited Distribution of the Peerless developed Windows driver, Kyocera
will continue to be responsible to provide reports detailing continued use of
the Licensed Software.
8.0 Peerless QuickPrint(TM)1800 Co-Processor. Kyocera shall have a license to
use the Peerless QuickPrint(TM)1800 Co-Processor with the Kyocera Authorized
Products. Kyocera may procure the Peerless QuickPrint(TM)1800 Co-Processor
directly from its Licensed manufacturer, Motorola Semiconductor Inc. or their
Authorized Distributor(s), at terms and conditions which are mutually acceptable
between Kyocera and Motorola.
* 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.
Page 15
PEERLESS PROPRIETARY
9.0 Maintenance Agreement. At Kyocera's option, it may enter into a Master
Technology Maintenance Agreement (MTMA) with Peerless to provide support to
customer generated problems which may occur on uses and applications which are
within mutually agreed specifications and parameters. This MTMA must be executed
prior to the completion of the Warranty period. The specific terms and
conditions, other then price and length of coverage, associated with such a MTMA
maybe mutually agreed to between the parties. The MTMA for the Licensed Software
contained in this Addendum #1 the initial 15 (fifteen) months following the
Warranty period; and, shall be U.S. $* (* dollars) for each 12 (twelve) month
period thereafter.
10.0 The Authorized Kyocera Facility. Kyocera shall use the Licensed
Software in its Yohga office, the Kyocera Tamaki plant, and at the Kyocera
Electronics Incorporated facility.
IN WITNESS WHEREOF, the Parties hereto have executed this Licensed Software
Addendum No. 1 as of the date first above written.
KYOCERA INC. PEERLESS SYSTEMS CORPORATION
By: /s/ Koji Seki By: /s/ Hoshi Printer
------------------------- -------------------------
(Authorized Signature)
Name: Koji Seki Name: Hoshi Printer
Title: Managing Director Title: Vice President: Chief Financial Officer
Date: June 18, 1997 Date: June 4, 1997
* 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.
Page 16
PEERLESS PROPRIETARY
Kupcera/Peerless MTLA Addendum #1, Amendment #1 CONFIDENTIAL
AMENDMENT #1 TO LICENSED SOFTWARE ADDENDUM #1 TO
MASTER TECHNOLOGY LICENSE AGREEMENT (MTLA)
DATED APRIL 1, 1997
This Amendment #1 is entered into on October 7, 1998 by and between Peerless(R)
Systems Corporation ("Peerless") and Kyocera Corporation ("Kyocera"), jointly
referred to as the "parties".
WHEREAS, Kyocera and Peerless entered into Master Technology License Agreement,
inclusive of Licensed Software Addendum #1, dated April 1, 1997 (both documents
referred to hereinafter as the "MTLA") under which Peerless granted Kyocera
certain rights in its Licensed Software Products; and,
WHEREAS, the parties agree that the Licensed Software Addendum #1 should be
revised to reflect dealings, modifications and changes previously agreed to
between the parties, as detailed in this Amendment #1.
NOW THEREFORE, the parties agree to the following modifications, revisions and
additions to the Licensed Software Addendum #1:
1.0 Section 1.2 shall be henceforth be denominated as Peerless Licensed
Software:
2.0 The following new element shall be added to Section 1.2 (Peerless Licensed
Software): "e) Windows 95/98 Driver Source Code for PeerlessPrint(R)XL."
3.0 The following new Section 1.3 shall be added subsequent to Section 1.2:
"1.3 Kyocera Licensed Code: Kyocera shall license back to Peerless those
modifications to the Windows Driver Source Code for PeerlessPrint(TM)5C
that support and enable Double Byte applications. Peerless is granted a
non-exclusive right and license to use, copy, have copied, modify, have
modified, distribute and sell the Kyocera Licensed Code."
4.0 The following three Subsections shall be added subsequent to Section 7.2
(Limited Distribution Fee for PeerlessPrint(R)XL, PeerlessPrint(R)5C and
PeerlessPage(TM)Imaging/Operating System):
"7.2.1 For object code licenses for the Windows 95/98 and NT 4.0
PeerlessPrint(R)XL driver for utilization on Authorized Kyocera Products,
Kyocera will pay Peerless U.S.$ * (* dollars) for unlimited use by Kyocera
during the term through and including *.
7.2.2 Peerless shall pay Kyocera $* (* dollars) for object code licenses
for the modifications made by Kyocera to the Windows Driver for
PeerlessPrint(R)5C which enable Double Byte applications for unlimited use
for the term through and including *.
7.2.3 Both parties agree to negotiate in good faith the per unit Recurring
License Fee for the Peerless Licensed Software and the Kyocera Licensed
Code defined in Subsections 7.2.1 and 7.2.2 respectively above, following
the end of the defined Distribution License Term."
5.0 The following new Section 11.0 shall be added immediately subsequent to
Section 10.0:
"11.0 Peerless agrees to provide PeerlessPrint(R)XL Driver for Windows 98,
NT 4.0 implementation and XL 2.x upgrade product completion on a 'best efforts'
basis to deliver said products as soon as completed for PeerlessPrint(R)XL
Driver for Windows 98, no later than calendar 2Q99 for the NT 4.0, and no later
than calendar 3Q99 for the XL 2.x upgrade."
6.0 Except as specifically modified herein, all other terms and conditions of
the MTLA shall remain in full force and effect. The MTLA, together with this
Amendment #1 constitutes the entire agreement between the parties with respect
to the matters covered herein.
IN WITNESS WHEREOF, the parties have caused this Amendment #1 to be executed by
their respective authorized representatives.
KYOCERA CORPORATION PEERLESS SYSTEMS CORPORATION
By: /s/ Katsumi Komaguchi By: /s/ Cary A. Kimmel
--------------------------- -----------------------------
Name: Katsumi Komaguchi Name: Cary A. Kimmel
Title: General Manager Printer Division Title: Director of Business
Date: May 6, 1999 Development
/// Date: October 23, 1998
* 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.
FINAL Page 1 of 2 Initials: Peerless R ;Kyocera__
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Kyocera/Peerless MTLA Addendum #1, Amendment #2 CONFIDENTIAL
AMENDMENT #2 TO LICENSED SOFTWARE ADDENDUM # 1 TO
MASTER TECHNOLOGY LICENSE AGREEMENT (MTLA)
DATED APRIL 1, 1997
This Amendment #2 is entered into on October 22, 1999 (the "Effective Date") by
and between Peerless Systems(R) Corporation ("Peereless") and Kyocera
Corporation ("Kyocera"), jointly referred to as the "parties".
WHEREAS, Kyocera and Peerless entered into both a Master Technology License
Agreement dated April 1, 1997 (referred to as the "MTLA"), and a Licensed
Software Addendum #1, dated April 1, 1997 as amended (collectively referred to
as the "LSA") under which Peerless granted Kyocera certain rights in its
Licensed Software Products; and,
WHEREAS, the parties agree that the Licensed Software Addendum #1 as amended
should be further amended to reflect dealings, modifications and changes
previously agreed to between the parties, as detailed in this Amendment #2.
NOW THEREFORE, the parties agree to the following modifications, revisions and
additions to the Licensed Software Addendum #1:
1. Kyocera shall pay to Peerless U.S.$ * (* dollars) within * of the date of
invoice, and Peerless and Kyocera herein amend the LSA to:
a) Allow the unrestricted cross-charging of the Monochrome and Color
pre-paid Limited Distribution Licenses; and
b) Extend the Monochrome and Color pre-paid Limited Distribution Licenses
until *; and
c) Extend the Unlimited License on the Drivers for the PeerlessPrint(R)5C
Win3.1/95/98/NT4.0, the PeerlessPrint(R) XL Win3.1/95/98/NT4.0 and the
PeerlessPrint(R)XL v2.0 Win3.1/95/98/NT4.0 through *.
2. This amendment does not increase any obligations of Peerless pursuant
delivers defined in the MTLA.
3. Both the Limited Distribution Fee set out in paragraph 7.2 of the LSA which
has been paid by Kyocera and the Fee set out in paragraph 1 hereinabove are
non-refundable and non-transferable.
4. Except as specifically modified herein, all other terms and conditions of
the MTLA and the LSA shall remain in full force and effect. The MTLA and LSA,
together with this Amendment #2 constitute the entire agreement between the
parties with respect to the matters covered herein.
IN WITNESS WHEREOF, the parties have caused this Amendment #2 to be executed by
their respective authorized representatives.
KYOCERA CORPORATION PEERLESS SYSTEMS CORPORATION
By: /s/ Katsumi Komaguchi By: /s/ Denis W. Retoske
----------------------------------- ------------------------------
Name: Katsumi Komaguchi Name: Denis W. Retoske
Title: General Manager Printer Division for Cary A. Kimmel
Date: December 28, 1999 Title: Director of Business
///End Development
Date: November 30, 1999
* 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.
FINAL Page 2 of 2 Initials: Peerless R ; Kyocera__
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