EX-10.28 Master Agreement
EX-10.28 4 g76820exv10w28.txt EX-10.28 MASTER AGREEMENT [IKON LOGO] Exhibit 10.28 MASTER AGREEMENT THIS MASTER AGREEMENT (this "Agreement") is entered into and shall be effective as of the ____ day of January, 2002, by and between IKON Office Solutions, Inc., an Ohio, U.S.A. corporation having its principal place of business at 70 Valley Stream Parkway, Malvern, PA 19355 (hereinafter "IKON"), 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"). BACKGROUND T/R and IKON are parties to a certain Master Assembly and Distribution Agreement dated as of August 28, 2000 (the "MADA"). This Agreement shall amend and restate the MADA in its entirety and neither T/R nor IKON shall have any further liability or obligation owing to the other arising from or relating to the MADA, which shall be of no further force or effect. RECITALS A. T/R designs, develops and markets an integrated suite of applications designed to help organizations manage, store, distribute and produce digital documents. The T/R suite of highly-functional digital document applications currently includes MicroPress(R), a digital document production management system; M@estro, a software application that provides distributed output, workflow and device management; MicroImager digital document imaging software that provides hard copy scanning, file processing and document routing capabilities; DigitalStorefront and e-Ticket, which are Internet-based digital document submission and catalog application for document procurement and management. The MicroPress, along with M@estro, MicroImager and e-Ticket, provides organizations the ability to manage the distribution and production of digital documents from creation to final output. 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 its products, including the MicroPress(R) commercial printing system and the other products described above. C. IKON desires to license and/or obtain certain rights and properties from T/R so as to permit IKON to (i) complete the assembly of MicroPress(R) commercial printing systems, (ii) purchase equipment from T/R to incorporate into other T/R products, with such products to be distributed and * Confidential information has been omitted and filed separately with the Commission. sold by IKON and either marked or identified with trademarks owned, possessed or controlled by IKON marked or identified with trademarks of a party other than IKON or for "private label" distribution; and (iii) market, sublicense and/or distribute Products to its customers. Distribution may include, without limitation, the assembly of Systems by IKON. D. To accommodate the foregoing agreements, and to effect certain other agreements and undertakings between T/R and IKON, such parties have entered into this Agreement. NOW, THEREFORE, the parties hereby agree as follows: 1. DEFINITIONS. 1.1 "Confidential Information" means information 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 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 other. 1.2 "Customer" means any Person that acquires Products from IKON for its own use or for sale, lease or other disposition. 1.3 "Deliverables has the meaning set forth in Section 4 hereof. 1.4 "End User" means a Person that acquires a Product directly from IKON or indirectly from a Customer of IKON, and uses the Product for any purpose. 1.5 "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. * Confidential information has been omitted and filed separately with the Commission. 1.6 "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 and the other products. 1.7 "License" means the license granted by T/R to IKON pursuant to this Agreement. 1.8 "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 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. 1.9 "IKON Orders" has the meaning set forth in Section 4 hereof. 1.10 "Patent Rights" means all T/R patents (including applications therefore) 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 System or any portion thereof, and all Improvements thereto that become the subject of a patent application. 1.11 "Person" means any individual, partnership, joint venture, corporation, trust, unincorporated organization, government, governmental agency or any other entity. 1.12 "Product(s)" means the specific T/R products described in Schedule C hereto, including but not limited to, the Deliverables. 1.13 "Subsidiary" means a corporation or other entity of which more than 50% of the shares of the outstanding stock (representing the right to vote for the election of directors or other managing authority) are now or hereafter owned or controlled, directly or indirectly, by a party hereto, but such corporation or other entity shall be deemed to be a Subsidiary only so long as such ownership or control exists. 1.14 "System" means commercial printing systems, including, but not limited to, MicroPress and Maestro printing systems, to be assembled by or for IKON * Confidential information has been omitted and filed separately with the Commission. pursuant to the License, which may incorporate one or more Deliverables, all as more particularly described on Schedule A-1 hereto, or as used herein as context may require, any portion thereof. 1.15 "Technical Assistance" means the technical assistance to be provided by T/R to IKON as provided in Section 3 hereof. 1.16 "Territory" shall mean the territory defined by connectivity project as defined in Schedule A-1. 2. LICENSE. 2.1 Grant. Subject to the terms and conditions hereof, T/R hereby grants to IKON and IKON hereby accepts from T/R a license entitling IKON during the term of this Agreement to use, on a non-exclusive basis (except as otherwise provided below), the Licensed Intellectual Property Rights to complete and effect the assembly of the Systems and to market, distribute, sell or lease the Products (including 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) IKON to transfer, assign, sell, give, license, sub-license, or in any way permit the use of the Licensed Intellectual Property Rights, by or to any Person, other than (i) any of its Subsidiaries for the sole purpose of assembling the Systems, or any components or subassemblies thereof; or (ii) any other third party under IKON's supervision for the sole purpose of assembling the Systems or any components or subassemblies thereof, for supply only to IKON. If IKON becomes aware, or gains reasonable suspicion, of the unauthorized use or exercise of the Licensed Intellectual Property Rights by any Person, then IKON 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. 2.3 No Other Licenses. No license or right is granted under this Agreement by T/R to IKON by implication, estoppel or otherwise, except as expressly set forth in this Agreement and IKON may not use the corporate names, trademarks, trade names, service marks, or logos of T/R without the prior written consent of . 2.4 Limitation on Use. IKON shall not use the Patent Rights, the Know-how, the Licensed Intellectual Property Rights or any other T/R technology, for any purpose or purposes other than those expressly permitted under the License. 2.5 Development; Exclusive Rights. The parties acknowledge that, in connection with the MADA, T/R developed customized, proprietary applications for IKON which is designed to adapt the T/R MicroPress to the Canon ImageRunner 110 product (the "Canon 110"). Notwithstanding anything to the contrary contained in this Agreement, T/R acknowledges and agrees that IKON is the sole and exclusive owner of all intellectual property relating to such applications (collectively, the "Development"). The Development * Confidential information has been omitted and filed separately with the Commission. shall be deemed to be a "work for hire" within the meaning of applicable law. The Development specifically includes, without limitation, an interface/driver between the T/R Micropress and the Canon 110 (the "Driver Development"), as well as [ * ] which shall be developed as Phase 3 per Schedule A-1 of this Agreement. T/R shall cooperate with IKON's efforts to protect and preserve its rights in and to the Development, and agrees that it will not, without the prior consent of IKON, develop any comparable adaptation or application for the Canon 110 (or any direct successor thereof) for any third party. Such exclusivity shall provide IKON with and include, without limitation, the right to integrate (i) all IKON Digital Express(R) products and services with MicroPress, and (ii) accounting software packages developed by or for IKON with MicroPress for purposes of, among other things, tracking and costing print projects. T/R agrees not to grant or convey any right or license of any nature which is inconsistent in any respect with the foregoing exclusivity rights (which shall continue at all times during the term of this Agreement) without the prior written consent of IKON. In addition, upon request, T/R agrees to assist IKON Research and Development personnel in their complimentary or enhancement development efforts relating to T/R Products and Deliverables, and to provide release candidate software for internal testing purposes only prior to release. 2.6 Unless engaged by IKON for such purpose, as between T/R and IKON, T/R shall be entitled to ownership of original intellectual property resulting from its future development of additional Product features or functionality, solely to the extent that such intellectual property is developed independently of the Development and any other intellectual property rights of IKON. 2.7 Driver Distribution License. IKON hereby grants to T/R and T/R hereby accepts from IKON a limited, non-transferable, non-exclusive license entitling T/R during the term of this Agreement to distribute/sublicense the Driver Development to third parties worldwide. T/R agrees not to decompile, disassemble, reverse engineer, or cross-compile the Driver Development or seek to do any of the foregoing or otherwise modify the Driver Development without the prior written consent of IKON. T/R may not sublicense the Driver Development, utilize the Driver Development or authorize any third party to sublicense or utilize the Driver Development for any other purpose not expressly permitted by this Section without the prior written consent of IKON. T/R agrees to pay IKON a fee of [ * ] in respect of each and every Driver Development distributed/sublicensed pursuant to this Section Such payments shall be made to IKON [ * ]. During the term of this Agreement, T/R agrees to provide IKON with a [ * ] statement, in such detail as the parties may reasonably determine from time to time, detailing the number of Driver Developments distributed/sublicensed. Upon request, IKON shall be entitled to review the Driver Development sale and payment records of T/R solely for the limited purpose of confirming the fee payment obligations of T/R. T/R shall instruct all third parties and end users of the terms and conditions of the licensed Driver Development, which shall at all times remain generally consistent with those terms and conditions contained in the End-User Software License attached as Schedule B. T/R shall not make any representations or warranties on behalf of IKON. IKON MAKES NO WARRANTIES WITH REGARD TO THE DRIVER DEVELOPMENT, AND SPECIFICALLY DISCLAIMS ALL WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. SUCH * Confidential information has been omitted and filed separately with the Commission. APPLICATION IS LICENSED AND DISTRIBUTED BY IKON ON AN "AS-IS" BASIS. IN NO EVENT SHALL IKON'S LIABILITY TO T/R FOR DAMAGES OF ANY NATURE ARISING WITH RESPECT TO THE DRIVER DEVELOPMENT LICENSE GRANTED TO T/R UNDER THIS SECTION EXCEED THE TOTAL LICENSE FEES PAID BY T/R. Notwithstanding the foregoing, IKON hereby agrees that upon receipt by IKON from T/R of distribution/sublicense fees in an aggregate amount of [ * ], it shall transfer all of its right, title and interest in and to the Driver Development to T/R. At such time, the parties agree to enter into a mutually acceptable Bill of Sale relating to such transfer in order to confirm its completion. Thereafter, T/R shall have no further distribution/sublicense fee payment obligations to IKON under this Section. T/R agrees that, in consideration of the rights granted to T/R under this Section, IKON shall (I) as of the effective date of this Agreement, have the unlimited and perpetual right to purchase the Driver Development, as well as all enhanced, successor and/or update versions thereof, including, without limitation, versions for a 150 page per minute version of the Canon 110 or equivalent, from T/R [ * ] and (II) be entitled to obtain from T/R [ * ] any enhancements and/or modifications to the Accounting Development required to maintain its compatibility with any enhanced application created or developed by T/R based on or comparable to the Driver Development during the term of this Agreement. 3. TECHNICAL ASSISTANCE. To effectuate the purposes of this Agreement, upon the reasonable request by IKON and subject to the terms and conditions of the License, T/R, employing the Licensed Intellectual Property Rights, shall consult with IKON with respect to (i) the design and operation of the Systems, inclusive of the selection and design of print engine therefore; (ii) IKON's assembling of the Systems for mass distribution; (iii) IKON's initiation of assembling for commercial production of the Systems; (iv) IKON's outsourcing plans and operations; (v) IKON'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 IKON personnel, upon the reasonable request of IKON. Each of T/R and IKON will appoint and assign a lead technical liaison to interact and support the technical interface between T/R and IKON. IKON has engaged T/R to complete initial connectivity project as specified on Schedule A-1, along with other particulars relating thereto (the "Initial Connectivity Project"). The Initial Connectivity Project relates specifically to the Deliverables contemplated by this Agreement. Additional device connectivity projects requested by IKON and agreed to by T/R shall be reflected on further schedules numbered A-2, A-3 and so forth (each a connectivity project), each of which shall be confirmed and approved by the parties in writing. 4. DELIVERABLES. In addition to its other rights to obtain software, equipment and services under this Agreement, IKON may, pursuant to license/purchase orders issued from time to time in its discretion ("IKON Orders"), and subject to availability, obtain any of the following specific 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 * Confidential information has been omitted and filed separately with the Commission. Licensed Intellectual Property Rights, and providing the software and related technology principally required for operation of the Systems to be distributed by IKON 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 international shipments. All risk of loss shall be conveyed and passed to IKON upon delivery of the Deliverables to IKON 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 IKON but rather such property will be deemed licensed pursuant to the License. Title will pass to IKON as to hardware, media and other items included within the Deliverables that do not constitute nor comprise Licensed Intellectual Property Rights. Notwithstanding the foregoing, IKON may, pursuant to any IKON Order, request only one or more individual components of the Deliverables. For example, IKON may from time to time request only MicroPress ClusterServers with pre-configured software packages and host adapters and, at the same time, elect not to request communications hardware or Technology and Software Packages. Nothing in this Agreement shall be deemed to require IKON to obtain all related technology and communications hardware included as part of a Deliverables package directly from T/R. 5. ACCESS, LICENSE AND CONSULTING FEES; PRICING. 5.1 Technology Access Fee. The parties acknowledge that, in connection with the MADA, IKON paid T/R in full a technology access fee in respect of the Initial Connectivity Project. As of the date hereof, Phase 3 of such project has not been completed by T/R. T/R agrees to complete the Initial Connectivity Project in accordance with this Agreement, including Schedule A-1 hereto. Additional technology access fees shall be payable in respect of additional connectivity projects, if any, entered into between the parties from time to time. T/R agrees to develop all connectivity in cooperation with IKON. Once developed, the connectivity will be subject to inspection as agreed by the parties. Such inspection will include appropriate testing. T/R will perform the initial testing and provide a report which will be subject to IKON's approval, which approval may not be unreasonably withheld. * Confidential information has been omitted and filed separately with the Commission. 5.2 License Fees and Equipment Purchase Price. For each Product, the license fees or equipment purchase price amounts, as the case may be, are per the T/R Systems published price list for the Territory as in effect from time to time, which price list is subject to change from time to time by T/R. A current copy of such price list is attached hereto as Schedule C. Any change in T/R Systems Price List will be effective as to IKON Orders received after [ * ] days of the issuance (to IKON in writing) of such revised price list. T/R agrees that the pricing for any Product available to IKON pursuant to this Agreement shall not exceed an amount equal to [ * ] of the applicable then-existing MSRP price for such Product [ * ] 5.3 License Swaps. Notwithstanding anything herein to the contrary, T/R acknowledges that IKON shall have the right to integrate Products and Deliverables into or with products manufactured by various third parties. Accordingly, IKON, for itself and on behalf of its customers, shall have the right to "swap" licenses issued hereunder in order to re-integrate previously licensed Products or Deliverables in the event of customer exchanges of any such third party products within [ * ] days following the initial installation. T/R agrees to comply with such swap requests and to promptly provide any applicable replacement Products or Deliverables. 6. PAYMENT TERMS. Payments for T/R amounts shall be due and payable by IKON [ * ] days from the bill of lading date for shipments and [ * ] days from date of receipt of invoice for technology access fees or consulting services, unless such payments are otherwise subject to a good faith dispute between the parties. [ * ] Unless otherwise agreed by T/R in writing, all payments by IKON shall be remitted in immediately available U.S. Dollars. Following reasonable prior written notice from T/R, a late payment charge of one and one-half percent (1.5%) per month may be charged upon unpaid balances due for more than [ * ] days (and not otherwise subject to a good faith dispute). All pricing and fees under this Agreement are exclusive of taxes. Except for taxes based on T/R's net income, IKON 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, as well as any penalties or interest thereon. Notwithstanding anything in this Agreement to the contrary, if, under any applicable law, IKON is required to withhold tax or any other amount from any payment to T/R, the amount due to T/R shall be increased to the amount T/R would have received if no withholding had been required. 7. IKON ORDERS. 7.1 Orders. The terms and conditions of this Agreement shall apply to all IKON Orders submitted to T/R and supersede any different or additional terms contained on IKON's Orders. IKON 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 IKON Orders but shall not be liable to IKON or any third party for any delay, error or failure in filling any such orders. T/R may allocate among its customers and for its own use or sale available Products, as deemed equitable by T/R in its reasonable discretion. * Confidential information has been omitted and filed separately with the Commission. 7.2 Order Policy. IKON shall submit written orders to T/R. All orders shall specify: (a) the quantities and descriptions of the Products; and b) requested delivery dates and shipping instructions. 8. SUPPORT. As part of its ongoing warranty support [ * ], T/R shall provide the IKON Digital Resource Center (DRC) and IKON Help Desk with unlimited software updates, enhancements, major software releases and telephone support. Software upgrades must be purchased separately [ * ]. IKON shall provide 1st (field) and 2nd (IKON DRC and IKON Help Desk) level Product support, and T/R shall provide 3rd level support, which shall be defined as ongoing warranty support to include a priority help line for use by the IKON DRC and Help Desk. Concurrent with each major release, T/R shall provide [ * ] two (2) training sessions for up to fifteen (15) IKON personnel, together with such other training as the parties may schedule, whether as "train the trainer" sessions or otherwise, from time to time in the exercise of good faith. In order for T/R to provide such warranty support, IKON must provide T/R [ * ] with reasonably sufficient hardware to enable it to provide third level Product support. 9. OWNERSHIP AND PROPRIETARY RIGHTS. 9.1 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 and that the Licensed Intellectual Property Rights and the Deliverables do not, and will not, infringe upon any intellectual property or proprietary right of any third party. T/R also represents that it has all rights in and to copyrights, trade secrets, patent rights and other intellectual property rights associated with the Development as are necessary to convey all intellectual property rights relating thereto to IKON under and pursuant to this Agreement. 9.2 Proprietary Rights. Each party acknowledges that the Confidential Information of the other constitutes valuable trade secrets and confidential information of such 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. Neither party shall use or disclose the Confidential Information of the other, except as expressly permitted by this Agreement. IKON 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 IKON containing the Licensed Intellectual Property Rights or constituting the Deliverables. 9.3 Unauthorized Use or Copying. Except as expressly permitted hereunder, IKON shall not copy, modify or reproduce the Deliverables in any way, nor shall it permit third parties to do so. IKON shall fully cooperate with T/R in any action relating to enforcement of T/R's proprietary rights. * Confidential information has been omitted and filed separately with the Commission. 9.4 End User License. IKON shall only distribute the Deliverables to Customers for delivery to End Users in the Territory. IKON 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 for the MicroPress are in Schedule B. T/R may use a similar End-User Software License for M@estro or DigitalStorefront. IKON shall make no representations or warranties on behalf of T/R. IKON shall make no representations to Customers or End Users or other third parties regarding the Deliverables except as set forth in the applicable documentation therefore provided by T/R. IKON 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 therefore 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. 9.5 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 IKON by T/R hereunder, is subject to all terms and conditions, including where required, approval rights, of such third party license agreements. 9.6 Security. The software included within the Deliverables will be protected by a security mechanism known as a "dongle." IKON may copy the software for distribution with T/R supplying the "dongle" for the software for each System. IKON 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. IKON will instruct its Customers to adhere to such security mechanisms. 9.7 Indemnification. IKON agrees to indemnify and hold harmless T/R from and against any claim, injury, loss or expense, including attorneys' fees, incurred by T/R to the extent caused by and arising out of (a) the failure of IKON to comply with the provisions of Section 9, (b) any misrepresentations of IKON relating to the Deliverables or (c) any other wrongful conduct of IKON or its agents. T/R agrees to indemnify and hold harmless IKON from and against any claim, injury, loss or expense, including attorneys' fees, incurred by IKON to the extent caused by and arising out of (a) any breach by T/R of its representations or warranties under this Agreement and/or with respect to the Licensed Intellectual Property Rights or Deliverables, (b) any infringement of the Licensed Intellectual Property Rights or Deliverables on any intellectual property or proprietary right of any third party (in the manner set forth in and subject to Section 13 below), and/or (c) any wrongful conduct of T/R or its agents. 10. WARRANTY. 10.1 T/R warrants to IKON that all Products, hardware and equipment provided by T/R to IKON, with the exception of PrintStations and MicroScanners sold to IKON, pursuant to this Agreement will be free from defects and errors, and will conform to * Confidential information has been omitted and filed separately with the Commission. and comply with any and all specifications and written documentation provided by T/R, for a period of [ * ], from initial delivery. Should any defect in workmanship or material appear within such warranty period T/R will promptly (upon written notification thereof, and provided that the hardware and equipment have been stored, installed, maintained and operated in accordance with T/R's written requirements 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 it's designated local representative, or at T/R's place of business, at T/R's option. If T/R is unable to promptly repair such defects to the reasonable satisfaction of IKON, T/R will immediately replace such hardware or equipment, or refund any and all sums paid to T/R with respect thereto, at the option of T/R. T/R warrants to IKON only that the PrintStations and MicroScanners sold to IKON pursuant to this Agreement will be free of material defects for a period of [ * ] from initial delivery. All returns to T/R or its representative must be shipped prepaid and must be sent after issuance to IKON by T/R of an RMA number specific to that return. 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 IKON's exclusive remedy for warranted defects. The sole purpose of this exclusive remedy shall be to provide IKON with free repair and replacement of the defective parts in the manner provided herein, and the hardware and equipment 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 or refund the sums paid with respect thereto. THIS WARRANTY IS EXCLUSIVE AND IN LIEU OF (AND T/R DISCLAIMS) ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR PARTICULAR PURPOSE OR OTHER WARRANTY OF QUALITY OR PERFORMANCE, WHETHER EXPRESSED OR IMPLIED. IKON shall be fully responsible for any warranty claims, expressed or implied, made by IKON and brought by its End-Users which are inconsistent with those specified by T/R or set forth in the applicable documentation provided by T/R, and shall hold T/R harmless with regard to same. 10.2 Licensed Software Warranty Except as otherwise provided herein, T/R makes no warranties with regard to the Licensed Intellectual Property Rights, 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 IKON on an "as-is" basis. * Confidential information has been omitted and filed separately with the Commission. 10.3 Product Liability (a) If any product liability accident occurs out of or in relation to Deliverables or Products, T/R shall cooperate with IKON 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, T/R shall undertake the sole and complete defense of any such claim or suit at its own expense and responsibility, and indemnify IKON against all such claims, suits, damages and costs suffered or incurred by IKON. 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 IKON; 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 IKON's name or trust, and shall consult with IKON 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 to the extent caused by; 1) any unauthorized modifications to the deliverables or systems or 2) documentation prepared made by other party than T/R or 3) specifications designated by IKON which are inconsistent with those specified by T/R or set forth in the applicable documentation provided by T/R or 4) use or combination of Deliverables or Systems with any hardware or software which is not intended or designated by T/R. 11. LIMITATION OF REMEDIES. 11.1 THE SOLE REMEDIES FOR BREACH OF ANY AND ALL WARRANTIES PROVIDED PURSUANT TO THIS AGREEMENT SHALL BE LIMITED TO THIS AGREEMENT AND THE SCHEDULES HERETO. EXCEPT WITH RESPECT TO THE INDEMNIFICATION OBLIGATIONS OF T/R HEREUNDER, IN NO EVENT SHALL T/R'S LIABILITY TO IKON FOR DAMAGES OF ANY NATURE EXCEED THE TOTAL CHARGES PAID FOR THE PRODUCTS OR SERVICE UPON WHICH SUCH LIABILITY IS BASED. 11.2 THE PARTIES AGREE THAT NEITHER SHALL BE LIABLE FOR ANY SPECIAL, INCIDENTAL, INDIRECT OR CONSEQUENTIAL DAMAGES OR FOR THE LOSS OF PROFIT, REVENUE, PRODUCTS OR SERVICES EVEN IF SHALL HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH POTENTIAL LOSS OR DAMAGE. 11.3 IKON agrees that T/R shall not have any responsibility for any equipment, service, hardware, software, or other items provided with or incorporated into the Product(s) by any persons other than T/R. * Confidential information has been omitted and filed separately with the Commission. 12. TERM AND TERMINATION. 12.1 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. 12.2 T/R Termination. This Agreement may be terminated by T/R under any of the following conditions if (i) if IKON shall be declared insolvent or bankrupt; (ii) if a petition is filed in any court and not dismissed in ninety (90) days to declare IKON bankrupt or for a reorganization under the Bankruptcy Law or any similar statute; (iii) if a trustee in Bankruptcy or a receiver or similar entity is appointed for IKON; (iv) if IKON does not pay T/R within sixty (60) days from receipt of a T/R invoice, following written notice of such failure and a reasonable opportunity to cure (to the extent that such matter does not relate to a good faith dispute between the parties); or (v) if IKON commits a material breach of this Agreement which is not cured by IKON within forty (40) days after notice of such breach is given by T/R. 12.3 IKON Termination. This Agreement may be terminated by IKON (i) if T/R is declared bankrupt or insolvent, (ii) if a petition is filed in any court and not dismissed in ninety (90) days to declare T/R bankrupt or for a reorganization under the Bankruptcy Law or any similar statute; if a trustee in Bankruptcy or a receiver or similar entity is appointed for T/R, (iii) upon a material breach by T/R which is not cured by T/R within forty (40) days after notice of such breach is given by IKON, or (iv) if T/R does not pay IKON within sixty (60) days from receipt of an IKON invoice for any amount payable by T/R to IKON hereunder, following written notice of such failure and a reasonable opportunity to cure (to the extent that such matter does not relate to a good faith dispute between the parties) . 12.4 EFFECT OF TERMINATION. Upon expiration or termination of this Agreement: (a) T/R may stop accepting any orders from IKON; (b) IKON shall promptly (i) pay to T/R all amounts remaining due under any contract or purchase order, (ii) remove from IKON'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 IKON has been designated by T/R as a licensee for the Licensed Intellectual Property Rights, and (v) 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 IKON customers may be retained upon written request from IKON 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 5, 6, 9, 10, 12.4, 13 and 14. In the event that IKON has any paid-up inventory of the Deliverables as of the date of termination under Section 12.2 or 12.3, termination of this Agreement shall be adjourned for a period not to exceed * Confidential information has been omitted and filed separately with the Commission. three (3) months, during which period IKON 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 therefore; and (d) If after the expiration or termination of this Agreement, IKON places orders and T/R accepts such orders by IKON 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 IKON the spare parts or equivalent replacements during the term of this Agreement and for a minimum of seven years from the earlier of the date of termination of this Agreement, the date of discontinuance of the item or the Product or from delivery of the last unit of equipment hereunder. 13. INTELLECTUAL PROPERTY INDEMNIFICATION. 13.1 Intellectual Property. T/R shall, at its expense, defend any claim against IKON that any Licensed Intellectual Property Right or any Deliverable infringes a copyright, trade secret, patent, intellectual property or proprietary right of any third party. T/R shall pay any and all costs, expenses and damages arising from or attributable to such claim and shall hold IKON harmless with respect thereto; provided that T/R shall have no liability for any such claim to the extent the claim is based on use of an unaltered current release of the Deliverables available from T/R if such infringement would have been avoided by the use of a current unaltered release of the Deliverables available from T/R for which IKON received written notification from of the availability of such release. 13.2 Cooperation by IKON. IKON agrees to promptly notify T/R of the suit or claim and to furnish a copy of each communication, notice or other action relating to said claim to T/R. 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 IKON shall provide reasonable information and assistance requested by T/R in connection with such claim or suit. 14. GENERAL. 14.1 Force Majeure. Neither party shall be liable for any delay or failure in performance under this Agreement resulting directly or indirectly from acts of God. * Confidential information has been omitted and filed separately with the Commission. 14.2 Governing Law. 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. 14.3 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, including, without limitation, the MADA. This Agreement may not be released, discharged, or modified except by an instrument in writing signed by the parties. 14.4 Independent Contractors. It is expressly agreed that IKON 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. 14.5 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 paid, addressed to the notified party at the address set forth herein. 14.6 Assignment. This Agreement is not assignable by either party without the express prior written consent of the other, which shall not be unreasonably withheld or delayed. 14.7 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. 14.8 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. 14.9 Other Distribution. Subject to Section 2.5 of this Agreement, 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. 15. INTERNATIONAL MATTERS. 15.1 Export License. IKON 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. * Confidential information has been omitted and filed separately with the Commission. 15.2 Export Assurance. Regardless of any disclosure made by IKON to T/R of any ultimate destination of a Deliverable or any System assembled using same, IKON 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. IKON 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. 15.3 Compliance with Local Laws. IKON 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 IKON licenses or markets same. * Confidential information has been omitted and filed separately with the Commission. 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. IKON Office Solutions, Inc. By: /s/ Michael E. Kohlsdorf By: /s/ Edward F. Borgo -------------------------------- -------------------------------- Title: President/CEO Title: V.P. Production Solutions ----------------------------- Corporate Marketing ----------------------------- * Confidential information has been omitted and filed separately with the Commission. SCHEDULE A-1 INITIAL CONNECTIVITY PROJECT NAME OF DEVICE FOR CONNECTIVITY: CANON IMAGERUNNER 110 Authorized Territory for Distribution: [ * ] Estimated completion date: Phase 3 To be negotiated T/R Project Definition:
PHASE 3: [ * ] * Confidential information has been omitted and filed separately with the Commission. SCHEDULE B 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(R) 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 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 * Confidential information has been omitted and filed separately with the Commission. 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 ninety (90) 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. 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 Software License Agreement shall not be deemed in any manner to alter, modify or amend in any manner whatsoever the terms and conditions of any agreement between User and IKON Office Solutions, Inc. and/or IOS Capital, Inc. All of the obligations of User under such agreements shall continue in full force and effect notwithstanding any termination, cancellation, waiver or claim arising under this Software License Agreement. In the event of a default by you under any such agreement, IKON Office Solutions, Inc. and/or IOS Capital, Inc. may in addition to any other remedies it may have, elect to terminate your license hereunder and/or remove the Software and Documentation. 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 * Confidential information has been omitted and filed separately with the Commission. SCHEDULE C T/R PRICE LIST [ * ] * Confidential information has been omitted and filed separately with the Commission. T/R SYSTEMS M@ESTRO PRICING FOR IKON: # OF DEVICES SUPPORTED PRICE TO IKON RETAIL PRICE [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ] [ * ]
* Confidential information has been omitted and filed separately with the Commission.
