Exhibit 10.38
LICENSE SOFTWARE ADDENDUM #3
to
MASTER TECHNOLOGY LICENSE AGREEMENT
between
KYOCERA MITA 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.
KYOCERA-MITA/PEERLESS LSA #3 CONFIDENTIAL
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LICENSED SOFTWARE ADDENDUM #3 TO MASTER
TECHNOLOGY LICENSE AGREEMENT DATED APRIL 1, 1997
This Licensed Software Addendum #3 (hereinafter this "LSA #3") is entered into
as of May 1, 2002 (hereinafter the "Effective Date") by and between Kyocera Mita
Corporation, a Japanese corporation, with offices at 2-28, 1-chome, Tamatsukuri
Chuo-ku, Osaka, 540-8585, Japan (hereinafter referred to as "KYOCERA MITA"), and
Peerless Systems Corporation, a Delaware corporation, with offices at 2381
Rosecrans Ave, Suite 400, El Segundo, CA, 90245 (hereinafter referred to as
"PEERLESS"), each sometimes referred to as a "Party" and jointly as "Parties" to
this LSA #3.
This LSA #3 is subject to and incorporates the provisions of the Master
Technology License Agreement (hereinafter referred to as "MTLA") dated April 1,
1997 entered between PEERLESS and Kyocera Corporation, and transferred to
KYOCERA MITA on April 1, 2002.
1. DEFINITIONS
1.1 All capitalized terms used herein shall have the meaning specified in this
LSA #3 or, if not defined herein, then the meaning specified in the MTLA. For
terms that are defined in this Section 1 and in the MTLA, the definition
provided herein shall govern for all purposes hereof.
1.2 With respect to any hardware, "Derivative KYOCERA MITA Product" means a
KYOCERA MITA product incorporating PEERLESS Material and any other components
that shall be bundled with and be contained in a package with the KYOCERA MITA
product at the time of KYOCERA MITA's shipment of that product to KYOCERA MITA's
customer.
1.3 "Machine Executable Copy" includes anything designated as such under the
MTLA and, without limiting the foregoing, any object code, machine executable
version of any Derivative Work of any Current Release or Update Release licensed
to KYOCERA MITA under this LSA #3.
2. LICENSE
2.1 Object License Granted: Without limiting any of KYOCERA MITA's rights under
the MTLA, and subject to the provisions of this LSA #3 as well as the payment of
all applicable License Fees as stated in Section 3.0 of this LSA #3 for the term
of such license, PEERLESS hereby grants a non-transferable, nonexclusive,
worldwide license to KYOCERA MITA:
(1) to use, copy, make, reproduce and manufacture the Authorized KYOCERA
MITA Device containing Machine Executable Copies of the Licensed Products;
(2) to sell and distribute the Authorized KYOCERA MITA Device containing
Machine Executable Copies of the Licensed Products in any country of the
world directly, through KYOCERA MITA Distributors and/or Subsidiaries; or
(3) to sublicense to Subsidiaries the rights to use, copy, make, reproduce
and manufacture the Authorized KYOCERA MITA Device containing Machine
Executable Copies of the Licensed Products on behalf of KYOCERA MITA.
2.2 Authorized KYOCERA MITA Device: KYOCERA MITA is authorized to use and
distribute the Licensed Product(s) in object code format only listed below in
the following Authorized KYOCERA MITA Devices:
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(June 3, 2002) Page 1 Initials: PEERLESS R; KYOCERA MITA K.S.
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KYOCERA-MITA/PEERLESS LSA #3 CONFIDENTIAL
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a) KYOCERA MITA produced and branded monochrome or color laser
printer products with print resolution of 2400 dots per inch
(dpi) or less.
b) KYOCERA MITA produced and branded monochrome or color copier
products; and, KYOCERA MITA produced monochrome or color copier
products for an OEM customer
2.3 Term And Termination: The term of the Object License shall be
contemporaneous with the term of the License under the MTLA. After termination
of the Object License, KYOCERA MITA may, in addition to any rights granted under
the MTLA, retain one (1) copy of the Source Materials solely for providing
maintenance support or similar services in connection with any Machine
Executable Copies distributed pursuant to the MTLA.
2.4 Deliverables - The Parties agree that PEERLESS has made and completed all
deliverables required by this LSA #3, and no further deliverables are required
under this LSA #3
2.5 Licensed Products (As Delivered under LSA #1):
---------------------------------------------
1. PEERLESSPrint(R)XL
2. PEERLESSPrint(R)5C
3. PEERLESSPage(TM) Imaging Operating System
4. PEERLESSPrint(R)5C and XL drivers for Windows 3.1, 95, 98 and 4.0NT
3. License Fees And Payments.
3.1 PER UNIT LICENSE FEES: For each Authorized KYOCERA MITA Device shipped
pursuant to this LSA #3, PEERLESS and KYOCERA MITA agree that there shall be a
non-refundable, non-transferable and non-creditable Per Unit License Fee due and
paid to PEERLESS. The amount of the Per Unit License Fees for each Authorized
KYOCERA MITA Device developed hereunder is shown below. The percentages in the
following tables are based on the Suggest Retail Price ("SRP") of the product in
the United States. In the event that a legal SRP cannot be established inside
the United States, the SRP of the Authorized KYOCERA MITA Device in Japan will
be used. In the event that a relevant SRP is Japanese, Yen shall be established
in Japan, the SRP shall be converted into U.S. dollars at TTM rate equal to the
average exchange rates for the appropriate currency issued by Mizuho Corporate
Bank, Limited at the end of the first and last days of the relevant quarterly
accounting period (or the first business day thereafter if such day is a Sunday
or other non-business day.
3.2 Per Unit License Fees: The recurring Per Unit License Fee is the fee that
PEERLESS charges KYOCERA MITA for the right to use PEERLESS' Licensed Products
in each Authorized KYOCERA MITA Device shipped by KYOCERA MITA is detailed
below.
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Product Description Per Unit License Fee
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Authorized KYOCERA MITA Device (printer) *% of the SRP
Section 2.2(a)
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Authorized KYOCERA MITA Device (copier)
Section 2.2 (b) *% of *% of the SRP
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* 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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(June 3, 2002) Page 2 Initials: PEERLESS R; KYOCERA MITA K.S.
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KYOCERA-MITA/PEERLESS LSA #3 CONFIDENTIAL
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3.3 BLOCK LICENSE.
3.3.1 Block License Grant. In lieu of paying the required Per Unit Royalty Fee
on an "as incurred" basis, PEERLESS has granted KYOCERA MITA a Block License
under which KYOCERA MITA may offset the Per Unit Royalties incurred by the
Authorized KYOCERA MITA Devices identified in Section 2.2 herein; provided that,
KYOCERA MITA may not offset the Per Unit Royalties incurred by any additional
Authorized KYOCERA MITA Devices (printer) to be granted under a license of
future Licensed System Addendum(a) to be attached to the MTLA.
3.3.2 Block License Payment. PEERLESS has granted KYOCERA MITA a Block License
for PEERLESS Licensed Products contained in the Authorized KYOCERA MITA Devices.
This Block License will be granted for non-refundable, non-transferable and
non-creditable payment of * dollars (U.S.$ *).
3.3.3 Block License Terms and Conditions. The terms and conditions of the
PEERLESS granted Block License to KYOCERA MITA are as follows.
a) The utilization of the Block License shall apply to the use of
all PEERLESS Licensed Products named in this LSA #3 (as listed
in Section 2.2 herein).
b) For the distribution of the Authorized KYOCERA MITA Devices
named in this LSA #3, KYOCERA MITA may apply the reduced Per
Unit License Fees for each object code copy of the PEERLESS
Licensed Product as set out below in Section 3.3.4 herein.
c) KYOCERA MITA will apply the above stated Per Unit Recurring
License Fee to the actual number of Authorized KYOCERA MITA
Devices shipped which contain the object code copies of the
PEERLESS Licensed Products and will thus calculate the
equivalent earned Per Unit Recurring License Fee.
d) KYOCERA MITA may immediately apply the above stated Per Unit
Recurring License Fee to Authorized KYOCERA MITA Device
(copier) when the actual result of Per Unit Recurring License
Fee exceeds the balance of Block License Payment under License
Software Addendum #2 dated July 31, 2000.
e) The Per Unit Recurring License Fees stated in Section 3.3.4
below, shall apply until the crediting of the equivalent
earned recurring license fee equals * dollars (U.S.$ *).
f) Upon exhaustion of the * dollars (U.S.$ *) Block License at
KYOCERA MITA's option, the following actions may take place:
i) KYOCERA MITA, at its sole discretion, may purchase
additional Block License(s) in the amount of * dollars
(U.S.$ *) each under the same terms and conditions as
enumerated herein.
ii) KYOCERA MITA, at its sole discretion may decide not to
purchase an additional Block License as set forth in e) i)
above, in which case the recurring Per Unit License Fee
for each Authorized KYOCERA MITA Device named in this LSA
#3 would revert to rate as defined in Section 3.2 herein.
* 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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(June 3, 2002) Page 3 Initials: PEERLESS R; KYOCERA MITA K.S.
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KYOCERA-MITA/PEERLESS LSA #3 CONFIDENTIAL
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3.3.4 License Fees for Authorized KYOCERA MITA Devices authorized in this LSA #3
under this Block License:
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Product Description Per Unit License Fee
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Authorized KYOCERA MITA Device (printer) *% of the SRP
Section 2.2(a)
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Authorized KYOCERA MITA Device (copier) *% of *% of the SRP
Section 2.2(b)
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3.4 Exclusion of Other Recurring License Fees. The Recurring License Fees
associated with fonts provided by Adobe Systems Incorporated, Agfa Corporation
or Bitstream Inc., are not included in the Per Unit Recurring License Fees or
Distribution Fee outlined above. Such Recurring Fees, if applicable, must be
negotiated by KYOCERA MITA with, and paid directly to, the appropriate entity.
For the purpose of this LSA #3, the term "SRP" shall mean the suggested retail
price of the Contract Product (defined herein below) in the United States of
America.
For the purpose of this LSA #3, the term "Contract Product" shall mean the main
assembly of the Authorized KYOCERA MITA Device and any other components which
shall be bundled with and contained in a package with the main assembly of the
Authorized KYOCERA MITA Device at the time of KYOCERA MITA's or its
Subsidiaries' shipment of that product.
3.5 Royalty Payment. KYOCERA MITA shall pay royalties due hereunder in United
States Dollars.
4. NOTICES
For the purpose of this LSA #3, the notices required are:
For:
PEERLESS PAGE(TM)is a trademark of the PEERLESS Systems Corporation; and,
PEERLESSPrint(R)XL, PEERLESSPrint(R)5E and Memory Reduction Technology(R)
are registered trademarks PEERLESS Systems Corporation; and
COPYRIGHT(C) 2002 PEERLESS Systems Corporation
5. ANNOUNCEMENTS
For the purpose of this LSA #3, KYOCERA MITA's obligations pursuant to Paragraph
15.1 and 15.2 of the MTLA are as follows:
5.1 Marketing Materials. All KYOCERA MITA marketing materials on the Authorized
KYOCERA MITA Device will refer to PEERLESS Technology by the PEERLESS trade name
when those technologies are referred to or described. For example, but not
limited to: Memory Reduction Technology(R) for efficient use of memory;
PEERLESSPrint(R)5E for PCL emulation; etc. Notwithstanding the foregoing,
PEERLESS and KYOCERA MITA may negotiate, on a specific application basis,
variations from the intellectual property notices described under this Paragraph
5.1 for this Licensed 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.
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(June 3, 2002) Page 4 Initials: PEERLESS R; KYOCERA MITA K.S.
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KYOCERA-MITA/PEERLESS LSA #3 CONFIDENTIAL
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5.2 Press Releases. Once KYOCERA MITA has issued a public statement announcing
the Authorized KYOCERA MITA Device, PEERLESS may also disclose in any PEERLESS
advertisement or other promotional material naming KYOCERA MITA and the
technology licensed to KYOCERA MITA for its controller(s), provided that
PEERLESS shall not disclose in such press release any other details about the
printer product without KYOCERA MITA's prior written approval.
6. TRAINING
No training is provided under this LSA #3.
7. TELEPHONE SUPPORT
No telephone support is provided under this LSA #3.
8. WARRANTY
No warranty is provided under this LSA #3.
9. PAYMENT SCHEDULE
Payment Schedule
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1. Block License Payment #1 within * (*) days of execution of this LSA #3 US$*
or *, whichever comes first
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2. Block License Payment #2 within * (*) days of execution of this LSA #3 US$*
or *, whichever comes first
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3. Block License Payment #3 within * (*) days of execution of this LSA #3 US$*
or *, whichever comes first
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4. Block License Payment #4 within * (*) days of execution of this LSA #3 US$*
or *, whichever comes first
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5. Block License Payment #5 within * (*) days of execution of this LSA #3 US$*
or *, whichever comes first
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TOTAL US$*
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IN WITNESS WHEREOF, the Parties hereto have executed this Licensed Software
Addendum #3 as of the Effective Date:
KYOCERA MITA CORPORATION PEERLESS SYSTEMS CORPORATION
By: /s/ Koji Seki By: /s/ Ron Davis
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(Authorized Signature) (Authorized Signature)
Name: Koji Seki Name: Ron Davis
Title: President Title: Vice President of Sales
Date: June 21, 2002 Date: June 3, 2002
* 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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(June 3, 2002) Page 5 Initials: PEERLESS R; KYOCERA MITA K.S.
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