Licensee Agreement - Caere Corp. and Kofax Image Products Inc.
CAERE CORPORATION
LICENSEE AGREEMENT
THIS LICENSEE AGREEMENT (the "Agreement") is made and entered into this
10th day of September, 1996 ("Effective Date"), by and between CAERE
CORPORATION, a Delaware corporation having its principal office at 100 Cooper
Court, Los Gatos, California 95030 ("CAERE"), and Kofax Image Products, a
California corporation having its principal office at 3 Jenner Street, Irvine,
California 92718 ("Licensee").
WHEREAS CAERE possesses certain ownership interests in proprietary
software and desires to license such software to Licensee under the terms of
this Agreement; and
WHEREAS Licensee desires to license such software from CAERE and
incorporate such software into certain Licensee hardware and/or software
products and distribute such CAERE software as incorporated into Licensee's
products;
Now THEREFORE, in consideration of the mutual covenants and agreements
hereinafter set forth, the parties agree as follows:
1. Definitions
1.1 For purposes of this Agreement:
(a) CUSTOMER. "Customer" shall mean the resellers, value added
resellers, original equipment manufacturers, integrators and distributors to
whom Licensee distributes Final Products for further distribution to End Users.
(b) DOCUMENTATION. "Documentation" shall mean CAERE's standard user
manuals and other written and graphic materials related to the Products.
(c) END USER. "End User" shall mean a third party who acquires
Final Products from Licensee for its own internal use other than distribution
and resale and who is granted a sublicense to the Products by Licensee pursuant
to the terms of this Agreement.
(d) FINAL PRODUCTS. "Final Products" shall mean the Products and
the Licensee Products bundled together into a single package or the Products
incorporated into or installed onto the Licensee Products as a single unit or
system, which is intended to be sold and sublicensed to End Users for a single
price.
(e) LICENSEE PRODUCTS. "Licensee Products" shall mean Licensee's
hardware and/or software products as set forth in Exhibit A which add
substantial value to the Products.
(f) PRODUCTS. "Products" shall mean only those CAERE products in
object code form as described in Exhibit B.
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(f) TERRITORY. "Territory" shall mean worldwide.
2. RIGHTS AND RESTRICTIONS
2.1 COPYRIGHT LICENSE. Subject to the terms of this Agreement, CAERE
hereby grants to Licensee, and Licensee accepts, the non-exclusive,
non-transferable, royalty bearing right under CAERE's copyrights to reproduce
the Products and distribute the Products, during the term of this Agreement, to
End Users in the Territory through Licensee's normal chains of distribution,
provided that the Products are bundled and used only with LICENSEE Products as
Final Products, and provided FURTHER that LICENSEE does not bundle or use, nor
does it allow a third party to bundle or use, the Licensee Products in any way
that directly or indirectly, (i) utilize the OCR functionality of the Products
or (ii) make calls to CAERE's OCR engine, without CAERE's prior written consent.
LICENSEE acknowledges that LICENSEE has not been granted the right to sublicense
its right to reproduce the Products.
2.2 PATENT LICENSE. Subject to the terms of this Agreement, CAERE
hereby grants to LICENSEE, and LICENSEE hereby accepts, the non-exclusive,
non-transferable, royalty bearing license under CAERE's patents to make the
Products and SELL the Products, during the term of this Agreement, to End Users
in the Territory through LICENSEE's normal chains of distribution, provided that
the Products are bundled with LICENSEE Products for use only as Final Products,
and provided further that LICENSEE does not bundle or use, nor does it allow
third parties to bundle or use, the Licensee Products in any way that directly
or indirectly, (i) utilize the OCR functionality of the Products or (ii) make
calls to CAERE's OCR engine, without CAERE's prior written notice. LICENSEE
acknowledges that LICENSEE has not been granted the right to sublicense its
right to make the Products.
2.3 RESTRICTIONS. Licensee acknowledges and agrees that the Products
contain CAERE's proprietary information and in order to protect such
information, Licensee shall not, nor shall it allow a third party to, decompile,
reverse engineer, disassemble or otherwise reduce the Products to a humanly
perceivable form. Licensee agrees to execute a customer agreement with End Users
to whom Products are sublicensed, which provisions shall be no less restrictive
than the provisions contained in CAERE's standard software license set forth in
Exhibit C. There are no implied licenses under this Agreement, and any rights
not expressly granted to Licensee hereunder are reserved by CAERE.
2.4 REPRODUCTION
(a) SOFTWARE. CAERE will provide Licensee with one master copy of
each Product in machine readable object code in the languages enumerated in
Exhibit B. Licensee will, at Licensee's sole cost: (i) make copies of the
Products exactly in accordance with any specifications provided by CAERE, unless
and except as otherwise agreed to in writing by CAERE; (ii) supply media on
which such copies will be made; and (iii) as applicable, manufacture and apply
on the disks pre-approved disk labels. Licensee shall not localize, alter,
modify, or change any Product or its package. CAERE is under no obligation to
provide Licensee with any new products or version of the Products under this
Agreement. Licensee expressly agrees that all copies made under this Section
will be made only for sublicense pursuant to Section 2.1 and 2.2.
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(b) DOCUMENTATION. Subject to the terms of this Agreement, CAERE
grants to Licensee the non-exclusive, nontransferable right to use, reproduce
and distribute the Documentation solely in conjunction with the sublicense of
the Final Products. CAERE will provide Licensee with one master copy of each
item of the Documentation in the languages enumerated in Exhibit B, in both hard
copy and machine readable text. At Licensee's sole expense, Licensee will make
copies of the Documentation without any modification. Licensee will make only
the number of copies of the Documentation necessary for the purposes of this
Agreement.
3. DELIVERY, TESTING OF PRODUCTS. To assure that the Products reproduced
by Licensee meet Caere's quality standards, Licensee shall provide Caere with a
sample of the Final Product in the form in which Licensee proposes to distribute
the Final Product prior to any distribution of the Final Product by Licensee.
Caere shall have a period of 10 business days after receipt of the media to test
the Final Product to determine whether it meets Caere's quality standards as
well as to review the placement of any required copyright, patent and trademark
notices. If Caere for any reason in its sole discretion finds that the Final
Product as reproduced does not meet its quality standards or that the notices
are not properly displayed, Caere shall notify Licensee of the deficiency and
Licensee shall correct such deficiency to Caere's satisfaction before
distributing or selling the Final Product. In no event shall any failure by
Caere to notify Licensee of any such deficiency constitute a waiver of any
rights of Caere under this Agreement or the grant of any warranty in excess of
that expressly provided herein. In addition, at Caere's request during the term
of the Agreement, Licensee shall provide Caere with a sample of the Final
Product in the form in which Licensee is distributing the Final Product for
Caere's use in on-going quality control testing. If Caere for any reason in its
sole discretion finds that the Product does not meet its quality standards or
that proprietary notices are not properly displayed; Caere shall notify Licensee
of the deficiency and Licensee shall cease distribution of the Final Product
until such time as the deficiency is remedied to Caere's satisfaction.
4. ROYALTIES AND STATEMENTS.
4.1 ROYALTY PAYMENTS. Subject to Section 4.2, Licensee agrees to pay to
Caere royalties, in U.S. Dollars and as set forth in Exhibit D, based on the
number of copies of the Products distributed by or on behalf of Licensee.
Royalty payments shall be credited first against any prepaid royalties; after
the prepaid royalties have been fully credited, Licensee shall pay royalties
directly to CAERE as set forth in Section 4.4.
4.2 PREPAID ROYALTIES. Upon the execution of this Agreement, Licensee
agrees to pay the prepaid royalty amount set forth on Exhibit D.
4.3 FORECASTS. On the first day of each calendar month, Licensee will
provide to CAERE a ninety (90) day rolling forecast of the number of Final
Products Licensee intends to distribute.
4.4 REPORTING. Within twenty (20) days following the end of each
calendar quarter during the term of this Agreement, Licensee shall render to
CAERE a statement showing in
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reasonable detail the number of copies of the Products and Evaluation Copies (as
that term is defined in Exhibit D) made and the number of copies of the Products
and Evaluation Copies distributed during such month. Such statement shall be
accompanied by payment of the amounts then due.
4.5 RECORDS AND INSPECTION RIGHTS. Licensee will keep and maintain, for
a period of two (2) years, proper records and books of account relating to
Licensee's marketing and distribution of the Products. CAERE may inspect such
records to verify Licensee's statements. Any such inspection will be conducted
only by independent public accountants during regular business hours at
Licensee's offices in a manner that does not unreasonably interfere with
Licensee's business activities. Such inspection shall be at CAERE's cost and
expense; provided, however, if the audit reveals overdue payments in excess of
five percent (5%) of the payments owed to date, Licensee shall pay the cost of
such audit(s) and for each such audit CAERE may conduct another audit during the
same twelve (12) month period. Licensee shall also immediately pay any overdue
payments revealed by such audit(s) plus interest at the rate of the lesser of
one and one half percent (1 1/2%) per month or the maximum then permitted by
applicable law, from the due date until paid. Except as set forth above, such
audits may be conducted no more than once in any twelve (12) month period. In
the event that CAERE wishes to inspect such books and records, Licensee will
make all relevant records available, including but not limited to all records
relating to activities outside of the United States (whether such records were
originally generated within or outside of the United States). In no event may
CAERE commence an inspection of any statement later than two (2) years from the
date of such statement.
4.6 TAXES. Licensee's payments required under this Section 4 are
exclusive of taxes except as provided herein, and Licensee agrees to bear and be
solely responsible for the payment of all such taxes, other than taxes payable
on CAERE's net income, including but not limited to all sales, use, rental
receipt, personal property or other taxes and their equivalents which may be
levied or assessed in connection with the use, manufacture or sale of the
Products or the Final Products. Notwithstanding the foregoing, in the event
Licensee is required to withhold taxes imposed upon CAERE for any payment under
this Agreement by virtue of the statutes, laws, codes or governmental
regulations of a country in which the Final Products are sold, then such
payments will be made by Licensee and deducted from Licensee's royalty
obligations under this Agreement; provided, however, that Licensee will obtain
and furnish CAERE with official tax receipts or other evidence of payment issued
by the respective tax authorities, sufficient to enable CAERE to establish
payment of such taxes in support of a claim for a credit against CAERE's United
States tax liability.
4.7 NOT FOR RESALE UNITS. Licensee will not owe any royalty for any
copy of Products distributed free of charge for Licensee's or Resellers'
marketing or promotional purposes or for Licensee's or Resellers' own internal
and demonstration uses; provided, however, Licensee shall not distribute or use
more than four hundred (400) copies of any such Products in any one year.
4.8 ROYALTY ADJUSTMENTS. CAERE may not modify the royalty rates set
forth in Exhibit D for the Products for the initial term of this Agreement.
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5. PRICING.
Licensee's prices for the Final Products will be at Licensee's sole
discretion; however, Licensee agrees not to offer the Products as "free"
software and shall only offer the Products for the single price offered for the
Final Products.
6. MARKETING.
6.1 WEB LINKS. Licensee shall provide to CAERE, at no cost, a link from
Licensee's home page on the Internet to CAERE's home page on the Internet and
shall permit CAERE to establish, at no cost, a link from CAERE's home page to
Licensee's home page.
7. PRODUCT WARRANTY.
7.1 WARRANTY. CAERE warrants to Licensee that, for a period of ninety
(90) days from the date of delivery to Licensee of the master disks, the
Products will substantially perform the functions described in the Documentation
for such version. CAERE DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF TITLE, MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE AND, EXCEPT AS PROVIDED FOR IN SECTION 13.1,
FREEDOM FROM THIRD PARTY INFRINGEMENT CLAIMS. Licensee's sole remedy for failure
of a Product to meet this warranty shall be limited to having CAERE undertake to
correct documented nonconformances within a reasonable period of time.
7.2 NO PASS THROUGH. Licensee will not pass through to End Users the
warranty in Section 6.1 and shall make no other representations to End Users on
behalf of CAERE. Licensee shall be solely responsible for providing support and
warranty service to End Users for the Final Products. Licensee shall indicate to
End Users that they must look solely to Licensee in connection with any
problems, warranty claims, or other matters regarding the Products or Final
Products. Licensee shall make no warranties to End Users on behalf of CAERE and
agrees to indemnify and hold CAERE harmless from any third party claims based on
warranties given in violation of this Agreement.
7.3 EXCLUSIONS. This limited warranty does not cover loss or damage
which: (i) occurs in shipment to or from Licensee, (ii) is due to improper
installation or maintenance, misuse, neglect, or any cause other than ordinary
commercial or industrial application; (iii) is due to adjustment, repair or
modification by any person other than as authorized by CAERE; (iv) is due to
storage or use in an improper environment, excessive or inadequate heating or
air conditioning and electrical power failures, surges or other irregularities;
or (v) is due to any statement about the Products other than as provided in this
Agreement, unless confirmed in writing by an authorized corporate officer of
CAERE.
CAERE does not warrant that the Products will meet Licensee's
requirements, that operation of the Products will be uninterrupted or
error-free, or that all software errors will be
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corrected. CAERE is not responsible for problems caused by computer hardware or
computer operating systems (including those making up Licensee Products) which
are not compatible with the system specifications required to run the Products
as set forth in the Product's user manual, or for problems in the interaction of
the Products with non-CAERE software. CAERE does not warrant the Licensed
Components; such software is sublicensed AS IS.
7.4 BUG FIXES. For a period of one (1) year from the date of delivery,
CAERE will provide to Licensee, at no charge, all bug fixes to the Products
which CAERE makes generally available at no charge to its customers.
8. LIMITATION OF LIABILITY.
CAERE SHALL NOT BE LIABLE TO LICENSEE, END USERS OR ANY OTHER ENTITY
CLAIMING THROUGH OR UNDER LICENSEE FOR ANY LOSS OF PROFITS OR INCOME, LOSS OF
DATA, OR OTHER TANGIBLE BUSINESS LOSS OR OTHER CONSEQUENTIAL, INCIDENTAL, OR
SPECIAL DAMAGES, OR FOR ANY CLAIM BY ANY OTHER PARTY, WHETHER IN AN ACTION IN
CONTRACT OR TORT OR BASED ON A WARRANTY, EVEN IF CAERE HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES, ARISING OUT OF OR IN CONNECTION WITH THE USE OF THE
LICENSES GRANTED HEREUNDER. LICENSEE'S, END USERS' OR ANY OTHER ENTITY'S SOLE
AND EXCLUSIVE REMEDIES SHALL BE AS SET FORTH IN SECTIONS 7 AND 13.
CAERE'S AGGREGATE LIABILITY FOR DAMAGES UNDER THIS AGREEMENT SHALL NOT
EXCEED THE AMOUNT ACTUALLY PAID BY LICENSEE TO CAERE DURING THE TWELVE MONTH
PERIOD PRECEDING THE DATE UPON WHICH A CLAIM FOR SUCH DAMAGE AROSE.
9. LICENSEE'S OBLIGATIONS.
9.1 TECHNICAL SUPPORT. Licensee shall provide a customer support
telephone number accessible in each country in which Licensee distributes the
Final Products. The telephone number need not be free of toll charges to users.
During Licensee's customer support telephone hours (which shall be no less than
Licensee's normal business hours), Licensee will provide customer and technical
support to End Users. Licensee will include its customer support phone numbers
and hours in the documentation distributed with the Final Products. If
Licensee's personnel cannot answer an End User's question regarding the Products
after using "reasonable efforts," such personnel may contact CAERE with such
questions. "Reasonable efforts" include, at minimum, reviewing CAERE's written
reference materials. CAERE may refer End Users who first call CAERE directly to
Licensee for customer and technical support. CAERE shall not be obligated to
provide any technical support to end users of Licensee Products with which Final
Products have been integrated.
9.2 MARKETING. Licensee will use its best efforts to market the Final
Products. Licensee will retain and have available trained and specialized
personnel sufficient to market the Final Products effectively and to assure End
User satisfaction.
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9.3 During the term of this Agreement, Licensee agrees to bundle and/or
incorporate the Products with all Licensee Products listed on Exhibit A, which
list may be amended by mutual consent of the parties.
10. CAERE SUPPORT AND MAINTENANCE.
10.1 TECHNICAL INFORMATION. CAERE will provide Licensee with technical
information regarding the Products that CAERE provides to other similarly
situated Product licensees. Upon Licensee's written request and at CAERE's
discretion, CAERE may provide special documentation, customization and
configuration of the Products at a fee mutually determined by the parties. At
Licensee's reasonable request, CAERE will use commercially reasonable efforts to
provide on-site technical assistance visits to Licensee at CAERE's then current
applicable hourly rate (as of Effective Date,[*] per person hour), plus
out-of-pocket travel and lodging expenses. CAERE is not responsible for the
installation or field maintenance of the Products.
10.2 TRAINING. CAERE may, at its discretion, offer training classes at
CAERE's facility. The parties will mutually agree upon Licensee's personnel in
attendance and any fees for such classes.
11. TRADEMARKS; MARKINGS.
11.1 TRADEMARKS AND TRADE NAMES. Subject to Section 11.3, CAERE hereby
grants to Licensee the limited, nonexclusive right during the term of this
Agreement to use the trademarks, trade names and other marketing names used by
CAERE, a current list of which is set forth in Exhibit E hereto (the
"Trademarks"), in connection with its advertising, promotion and marketing of
the Product and in related product brochures and other materials. CAERE may from
time to time attach other or additional Trademarks or names to Products. CAERE
grants no rights other than expressly granted hereunder, and Licensee hereby
agrees to and recognizes CAERE's exclusive ownership of such marks and names and
the renown of CAERE's Trademarks and names worldwide. Licensee agrees not to
take any action inconsistent with such ownership and further agrees to take any
action, at CAERE's cost, including without limitation, the conduct of LEGAL
proceedings, which CAERE deems necessary to establish and preserve CAERE's
exclusive rights in and to its Trademarks and trade names.
11.2 MARKINGS. Any reproduction of CAERE's Trademarks, logos, symbols
and other identifying marks shall be true reproductions. Licensee will not
remove or make or permit alterations to any labels or other identifying markings
placed by CAERE on any Product or Documentation.
11.3 USE OF CAERE'S MARKS AND NAMES. Licensee may use CAERE's
Trademarks in Licensee's advertising and promotional materials subject to
CAERE's prior written approval, which approval shall not be unreasonably
withheld.
11.4 USE OF LICENSEE'S NAMES. CAERE may use Licensee's name and the
name of the Final Products in CAERE promotional literature and marketing
materials, subject to Licensee's prior written approval, which approval shall
not be unreasonably withheld.
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* Confidential portions omitted and filed separately with the Securities and
Exchange Commission.
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12. CONFIDENTIALITY.
12.1 CONFIDENTIAL INFORMATION. The term "Confidential Information"
means any technical or non-technical information relating to CAERE, Licensee,
the Products, Documentation and Licensee Products, such as product plans, costs,
prices, names, finances, marketing plans, business opportunities, personnel and
the like, which is disclosed by one party ("Disclosing Party") to the other
party ("Receiving Party") in a written or other tangible form clearly marked
"Confidential" or with a comparable legend. Oral or visual information shall not
be considered Confidential Information unless it is designated confidential by
Disclosing Party at the time of such oral or visual disclosure, and subsequently
reduced to writing clearly marked "Confidential" or with a comparable legend,
and sent to Receiving Party within thirty (30) days after such oral or visual
disclosure.
12.2 NO USE OF CONFIDENTIAL INFORMATION FOR OWN PURPOSE. During this
Agreement, and for one (1) year after the termination of this Agreement,
Receiving Party agrees to keep Confidential Information of Disclosing Party in
confidence, and shall neither disclose it to any third party nor use the same
for any purposes other than those contained in this Agreement. Notwithstanding
the foregoing, Receiving Party shall have no confidentiality obligation and no
use restriction with respect to any information that:
(a) the Disclosing Party approves, by prior written consent,
Receiving Party to release or disclose to any third parties;
(b) the Receiving Party already knows, as evidenced by its written
and dated records, when received from Disclosing Party;
(c) the Receiving Party receives in good faith from a third party
lawfully in possession thereof and having no similar obligation to keep such
information confidential;
(d) is or becomes publicly known to Receiving Party at or after
the Receiving Party receives it from Disclosing Party through no fault of
Receiving Party;
(e) the Disclosing Party furnishes to a third party without a
similar restriction;
(f) the Receiving Party independently develops without using the
Disclosing Party's Confidential Information; or
(g) is disclosed pursuant to the requirement of a governmental
agency or disclosure is required by operation of law.
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13. INFRINGEMENT INDEMNITY.
13.1 CAERE'S' INDEMNITY.
(a) CAERE shall, at its own expense, defend Licensee against any
third party claim, action, suit or proceeding, claiming that any Product
furnished and used within the scope of this Agreement or the use, sale or other
disposition thereof, infringes any U.S. copyright or U.S. patent right existing
or issued as of the Effective Date. CAERE shall indemnify Licensee for all
losses, damages and all reasonable expenses and costs incurred by Licensee as a
result of a final judgment entered against Licensee in any such claim, action,
suit or proceeding; provided that Licensee gives CAERE prompt written notice of
any such claim, grants CAERE control of the defense and any settlement thereof,
and reasonably cooperates with CAERE at CAERE's expense.
(b) If the Products, in whole or in part, are or in CAERE's
opinion may become, the subject of any claim, action, suit or proceeding for
infringement of, or if it is judicially determined that the Products, in whole
or in part, infringe any third party's U.S. copyright or U.S. patent right, or
if the Product's use is enjoined, then CAERE may, at its option and expense: (1)
procure for Licensee the right to continue the Product's sale and use; (2)
replace or modify the Product so as not to infringe such third party's copyright
or patent right while conforming, as closely as possible, to the Documentation,
or (3) terminate this Agreement as to such Products. The foregoing remedial
actions shall not affect the royalty rates and do not relieve CAERE from its
obligations under Section 13.1(a)
13.2 LIMITATION ON LIABILITY/EXCLUSIVE REMEDY.
(a) CAERE will have no liability under Section 13.1 for any
infringement claim based upon: (i) the use or combination of the Products with
software, hardware, or other materials not provided by CAERE; (ii) components or
software which were not manufactured by CAERE; (iii) the Licensed Components;
and (iv) any use of an altered version of the Products.
(b) SECTIONS 13.1 AND 13.2 STATE CAERE'S ENTIRE OBLIGATION AND
LIABILITY WITH RESPECT TO ANY CLAIMS OF PATENT, COPYRIGHT OR OTHER PROPRIETARY
RIGHT INFRINGEMENT.
14. LICENSEE'S INDEMNITY.
Licensee shall, at its own expense, defend and hold harmless CAERE
against any third party claim, action, suit or proceeding alleging that any
Licensee Product furnished and used within the scope of this Agreement or the
use, sale or other disposition thereof, infringes any U.S. copyright or patent
right existing or issued as of the Effective Date. Licensee shall indemnify
CAERE for all losses, damages and all reasonable expenses and costs incurred by
CAERE as a result of a final judgment entered against CAERE in any such claim,
action, suit or proceeding; provided that CAERE gives Licensee prompt written
notice of any such claim,
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grants Licensee control of the defense and any settlement thereof, and
reasonably cooperates with Licensee at Licensee's expense.
15. TERM.
The term of this Agreement shall expire 24 months from the Effective
Date unless terminated earlier by either party by delivering written notice (a)
to the other prior to thirty (30) calendar days preceding expiration of the term
of this Agreement or (b) in accordance with Section 16. This Agreement shall
automatically be renewed for an additional one year term unless terminated by
either party by delivering written notice to the other party at least 90 days
prior to the scheduled expiration of the current term.
16. TERMINATION.
16.1 TERMINATION FOR CAUSE BY EITHER PARTY. Subject to Section 16.2,
either party may, by written notice to the other party, terminate this Agreement
upon the occurrence of any one or more of the following events:
(a) Upon the failure of the other party to pay any monies when
payable hereunder, if such default continues for five (5) business days or more
after written notice to the other party;
(b) Upon material failure of the other party to observe, keep or
perform any of the covenants, terms or conditions herein (other than as provided
in (a) above), if such default continues for thirty (30) days after written
notice by the other party; or
(c) If the other party ceases to function as a going concern or to
conduct its operations in the normal course of business.
16.2 TERMINATION BY CAERE. CAERE may, by written notice to Licensee,
immediately terminate this Agreement upon the occurrence of any one or more of
the following events:
(a) In the event Licensee or its sublicensees, are in breach of
Sections 2, 11 or 12.2 of this Agreement;
(b) In the event Licensee or is sublicensees, fail to fully comply
with any and all governmental laws and regulations pertaining to the
exportation from the United States of the Products covered by this Agreement.
16.3 EFFECT OF TERMINATION. Upon termination of expiration of this
Agreement:
(a) All licenses and rights granted to Licensee under this
Agreement shall terminate;
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(b) Licensee shall promptly return to CAERE all marketing and
selling materials, all manuals, all technical data and all other documents and
copies thereof previously supplied by CAERE, except such documents as are
necessary for Licensee to provide support to End Users;
(c) Licensee shall cease using CAERE's name, trademarks and trade
names and refrain thereafter from representing itself as a Licensee of CAERE;
(d) Termination by either party under this Agreement shall not
affect the sublicenses previously granted by Licensee to End Users; and
(e) Any other rights of either party which may have accrued up to
the date of such termination or expiration shall not be affected.
17. GENERAL TERMS.
17.1 ASSIGNMENT. Licensee may not assign this Agreement in whole or in
part without CAERE's prior written consent which shall not be unreasonably
withheld; provided, however, that no such consent shall be required in
connection with the sale of Licensee's business by merger, reorganization, sale
of assets, sale of stock or otherwise to a party that does not compete with
Caere. Caere may assign this Agreement, its rights, obligations and duties under
this Agreement and the Agreement will inure to the benefit of and be binding on
CAERE's successors and assigns.
17.2 RIGHT TO ENTER AGREEMENT. Each party has full power and authority
to enter into and perform this Agreement, and the person signing this Agreement
on behalf of each has been properly authorized and empowered to enter into this
Agreement. Each party further acknowledges that it has read this Agreement,
understands it, and agrees to be bound by it.
17.3 NOTICES. All notices, requests, consents and other communications
required or permitted under this Agreement shall be in writing and shall be
deemed effective when mailed by registered or certified mail, postage prepaid,
and received by the party at its respective address and representative as set
forth on the signature page below. Either party may change its address by
written notice to the other.
17.4 SEVERABILITY AND HEADINGS. If any of the provisions, or portions
thereof, of this Agreement is held by a court of competent jurisdiction to be
invalid under any applicable statute or rule of law, the parties agree that such
invalidity shall not affect the validity of the remaining portions of this
Agreement and further agree to substitute for the invalid provision a valid
provision which most closely approximates the intent and economic effect of the
invalid provision. Headings used in this Agreement are for reference purposes
only and in no way define, limit, construe or describe the scope or extent of
such section, or in any way affect this Agreement.
17.5 NON-WAIVER. No term or provisions hereof shall be deemed waived
and no breach excused, unless such waiver or consent shall be in writing and
signed by the party
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claimed to have waived or consented. Any consent by any party to, or waiver of,
a breach by the other, whether express or implied, shall not constitute a
consent to, waiver of, or excuse for any other different or subsequent breach.
17.6 FORCE MAJEURE. If the performance of this Agreement, or any
obligation hereunder, except the making of payments hereunder, is prevented,
restricted or interfered with by reason of fire, flood, earthquake, acts of God,
explosion or other casualty of war, labor dispute, inability to procure or
obtain delivery of parts, supplies or power, violence, any law, order,
regulation, ordinance, demand or requirement of any governmental agency, or
any other act or condition whatsoever beyond the reasonable control of the
affected party, the party so affected, upon giving prompt notice to the other
party, will be excused from such performance to the extent of such prevention,
restriction or interference.
17.7 INDEPENDENT CONTRACTOR. The parties' relationship shall be solely
that of independent contractor and nothing contained in this Agreement shall be
construed to make either party an agent, partner, co-venturer, representative or
principal of the other for any purpose, and neither party shall have any right
whatsoever to incur any liability or obligation on behalf of or binding upon the
other party.
17.8 SURVIVAL. Sections 4.5, 7, 8, and 17 of this Agreement shall
survive the termination of this Agreement.
17.9 GOVERNING LAW. This Agreement shall be governed by and construed
under the laws of the State of California, excluding its conflicts of law
principles. Any suit hereunder shall be brought in the federal or state courts
in Santa Clara County, California and Licensee submits to the jurisdiction
thereof. The parties exclude the application of the 1980 United Nations
Convention on Contracts for the International Sale of Goods if applicable.
17.10 ENTIRE AGREEMENT; AMENDMENT. This Agreement, including Exhibits A
through E, which are hereby incorporated into and made a part of this Agreement,
constitute the final, complete and exclusive entire agreement between the
parties with respect to the subject matter hereof and supersedes any previous
proposals, negotiations, agreements, arrangements, or warranties, whether verbal
or written, made between the parties with respect to such subject matter. It is
expressly understood and agreed that sales conditions of the Products as
contained in orders or any other form or request submitted by Licensee to CAERE
shall be subject to the provisions of this Agreement, and in no event shall the
terms and conditions set forth in such order or other business form, whether it
is CAERE's standard or not, be applicable to the transactions between the
parties under this Agreement. This Agreement shall control over any additional
or conflicting term in any of Licensee's purchase orders or other business
forms. This Agreement may only be amended or modified by mutual agreement of
authorized representatives of the parties in writing.
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<PAGE> 13
17.11 ATTORNEY'S FEES. If any legal action is brought to construe or
enforce any provision of this Agreement, the prevailing party shall be entitled
to receive its attorneys' fees and court costs in addition to any other relief
it may receive.
CAERE CORPORATION KOFAX IMAGE PRODUCTS
100 Cooper Court 3 Jenner Street
Los Gatos, CA 95030 Irvine, CA 92718
By: /s/ SERGE BLANC By: /s/ KEVIN DRUM
------------------------------ ----------------------------------
Name: Serge Blanc Name: Kevin Drum
---------------------------- --------------------------------
Title: VP, ADE Title: VP Marketing
--------------------------- -------------------------------
Date: 10/1/96 Date: 9/19/96
---------------------------- --------------------------------
By: /s/ BLANCHE M. SUTTER
------------------------------
Name: Blanche M. Sutter
----------------------------
Title: Senior VP, CFO
---------------------------
Date: 9/23/96
----------------------------
13
<PAGE> 14
EXHIBIT A
LICENSEE PRODUCTS
Products
Ascent Scan Station
Ascent Scan Lite
Ascent Workstation
14
<PAGE> 15
EXHIBIT B
PRODUCTS
Product (Version and Platform)
------------------------------
WordScan Plus 3.0 for Windows 3.1x and Windows 95.
Other products may be added upon mutual consent of the parties.
Lanquages
---------
All languages supported by WordScan Plus 3.0 for Windows 3.1x and Windows 95.
15
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EXHIBIT C
SOFTWARE LICENSE AGREEMENT
PLEASE READ CAREFULLY BEFORE OPENING THIS ENVELOPE.
THIS AGREEMENT STATES THE TERMS AND CONDITIONS UPON WHICH CAERE CORPORATION
("CAERE") OFFERS TO LICENSE THE ENCLOSED SOFTWARE ("THE SOFTWARE") TO YOU. BY
OPENING THIS ENVELOPE, YOU ARE AGREEING TO BECOME BOUND BY THE TERMS OF THIS
AGREEMENT. IF YOU DO NOT AGREE TO THE TERMS OF THIS AGREEMENT, DO NOT OPEN THE
ENVELOPE. PROMPTLY RETURN THE SOFTWARE TO THE PLACE WHERE YOU OBTAINED IT.
The Software consists, in part, of an OCR Engine the provides OCR functionality.
You acknowledge that the value of the Software in large part consists of the
utility of the OCR Engine embedded therein. You further understand and
acknowledge that the OCR Engine may have utility with or be able to be called by
other software and/or hardware, which CAERE considers to be an unauthorized use
of the OCR Engine and the Software. Accordingly, you agree that you will use the
OCR Engine only as part of the Software, and not in conjunction with, as part
of, or as a component of, other software and/or hardware which make calls to
CAERE's OCR Engine.
1. License. The enclosed Software and documentation ("Documentation")
are licensed, not sold, to you for use only under the terms of this license, and
CAERE reserves all rights not expressly granted to you. This license allows you
to:
(a) for a single-user version, install and use in a limited manner
the Software for internal purposes only on a single computer (the Software is
considered in use when it is installed in the temporary memory, i.e. RAM, or the
permanent memory, i.e. hard drive); (b) for a multi-user version (e.g., a CAERE
10-User Pack), install and use in a limited manner the Software for internal
purposes only for the number of computers or simultaneous users identified in
the Documentation; (c) make one copy of the Software in machine-readable form
solely for backup purposes, provided that your backup is not installed on any
computer. You are only permitted to use the Software and the optical character
recognition ("OCR") software engine ("OCR Engine") embedded therein as described
in the Documentation provided to you.
You must reproduce on any copy all copyright notices and any other ownership,
confidentiality or proprietary legends that are on the original copy of the
Software. The enclosed disk may contain two system versions of the Software (a
Macintosh version and a Windows version) and multiple language versions of the
Software. For a single user license, you may install one system and language
version of the Software on a single computer; you may not install the other
versions on another computer. For a multi-user license, you may install the
Software (regardless of version) only on the number of computers or for the
number of simultaneous users identified in the Documentation. For example, if
you have purchased a 10-user license, you may install, on up to 10 computers or
for 10 simultaneous users, 7 Windows and 3 Macintosh versions in one language,
or any other combination of the two system and language versions you choose that
total ten copies.
2. Restrictions: (a) You may not market, distribute or transfer copies
of the Software or Documentation to others or electronically transfer the
Software from one computer to another over a network except as provided for
above; (b) you may not decompile, reverse engineer, disassemble or otherwise
reduce the code of the Software to a human perceivable form; (c) YOU MAY NOT
MODIFY, ADAPT, TRANSLATE, RENT, LEASE OR LOAN THE SOFTWARE OR DOCUMENTATION OR
CREATE DERIVATIVE WORKS BASED ON THE SOFTWARE OR DOCUMENTATION; (d) The Software
and Documentation are copyrighted. Unauthorized copying of the Software,
including portions thereof or the written materials, is expressly forbidden; (e)
You understand that CAERE may update or revise the Software and in so doing
incurs no obligation to furnish such updates to you; (f) If you upgrade the
Software to a higher-numbered version of the Software or to a comparable CAERE
software product (including versions for different operating systems), this
license is terminated and your rights shall be limited to the license associated
with that product or version.
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<PAGE> 17
3. Termination. This License is effective until terminated. Except for
Sections 6, 7, and 8, this License shall terminate automatically upon the
earlier of your breach of your obligations under the License or January 1. 2030.
Upon termination, you agree that you will destroy the Software and all copies.
This remedy shall be in addition to any other remedies available to CAERE.
4. Export Control. You agree that the Software and Documentation will
not be shipped, transferred or exported into any country or used in any manner
prohibited by the United States Export Administration Act or any other export
laws, restrictions or regulations.
5. Government End Users. The Software is a "commercial item," as that
term is defined at 48 C.F.R. 2.101 (OCT 1995), consisting of "commercial
computer software" and "commercial computer software documentation," as such
terms are used in 48 C.F.R. 12.212 (SEPT 1995). Consistent with 48 C.F.R. 12.212
and 48 C.F.R. 227.7202-1 through 227.7202-4 (JUNE 1995), all U.S. Government End
Users acquire the Software and Documentation with only those rights set forth
herein.
6. Limited-Warranty. CAERE warrants that the Software and the
accompanying media will perform substantially in accordance with the
specification set forth in the Documentation for a period of ninety (90) days
after your payment of the license fee, when properly installed on a computer for
which a license is granted hereunder. CAERE does not warrant that the operation
of the Software will meet your requirements or operate free from error. CAERE
DISCLAIMS ALL OTHER WARRANTIES AND CONDITIONS EITHER EXPRESS OR IMPLIED,
INCLUDING THE WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE
AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS. NO ORAL OR WRITTEN INFORMATION OR
ADVICE GIVEN BY CAERE, ITS DEALERS, DISTRIBUTORS, AGENTS OR EMPLOYEES SHALL
CREATE A WARRANTY OR IN ANY WAY INCREASE THE SCOPE OF THIS WARRANTY AND YOU MAY
NOT RELY ON ANY SUCH INFORMATION OR ADVICE. SOME STATES DO NOT ALLOW THE
EXCLUSION OF IMPLIED WARRANTIES, SO THE ABOVE EXCLUSION MAY NOT APPLY TO YOU.
THIS WARRANTY GIVES YOU SPECIFIC LEGAL RIGHTS AND YOU MAY ALSO HAVE OTHER LEGAL
RIGHTS WHICH VARY FROM STATE TO STATE.
7. Limited Remedies. If the Software or media fails to perform as
warranted, your sole and exclusive remedy shall be to return the media to CAERE,
postage prepaid, with a copy of the receipt. CAERE shall, at its option, (i)
replace the Software or media with Software or media which conforms to the
warranty, or (ii) correct the error. CAERE SHALL NOT BE LIABLE FOR ANY
INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING DAMAGES FOR LOST BUSINESS
PROFITS, LOSS OF INFORMATION, BUSINESS INTERRUPTION, OR THE LIKE) ARISING OUT OF
THE USE OR INABILITY TO USE THE SOFTWARE EVEN IF CAERE OR ITS REPRESENTATIVE
HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. SOME STATES DO NOT ALLOW
THE LIMITATION OR EXCLUSION OF LIABILITY FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES
SO THE ABOVE LIMITATION OR EXCLUSION MAY NOT APPLY TO YOU.
8. Limited Liability. The liability of CAERE for any claims arising out
of this License based upon the Software, regardless of the form of action, shall
not exceed the license fee for the Software.
9. General. This License shall be governed and interpreted in
accordance with the laws of the State of California, USA, without giving effect
to choice of law principles. This License shall not be governed by the United
Nations Convention for the International Sales of Goods, the application of
which is expressly excluded. This License contains the entire agreement between
the parties with respect to the subject matter hereof, and supersedes all prior
agreements or understandings (oral or written).
If you have any questions about this License, contact CAERE at: 100 Cooper
Court, Los Gatos, California 95030, USA, Attn: Contract Administrator.
17
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EXHIBIT D
LICENSEE ROYALTIES
ROYALTIES
a. Licensee shall pay to CAERE the following royalties for each copy of
a Product, including Products distributed with Final Product upgrades,
distributed by or on behalf of Licensee during the term of this Agreement:
Ascent Module Royalty
------------- -------
Scan Station [ * ]
Scan Lite [ * ]
Workstation [ * ]
b. Prepaid Royalties. Licensee agrees to pay [ * ] in non-refundable
prepaid royalties to CAERE upon the execution of this Agreement. Such prepaid
royalties are based on 25% of the total revenue forecasted to Caere based on
sales of 1,000 copies sold over 12 months. Prepaid royalties shall be credited
against sales of the Final Products. Additional royalties shall not accrue until
the prepaid royalties have been fully credited against future sales of Final
Products.
c. "Net Selling Price" is defined as the price Licensee charges its End
Users for the Final Products net of returns or allowances according to the
Generally Accepted Accounting Principles (GAAP).
d. Evaluation Copies. Licensee may distribute evaluation copies
("Evaluation Copies") to End Users without incurring a royalty provided that
such Evaluation Copies are designed such that all of the software on the
Evaluation Copies "times out" and becomes unusable no later than 30 days from
the date of receipt of such Evaluation Copies by the End User.
18
* Confidential portions omitted and filed separately with the
Securities and Exchange Commission.
<PAGE> 19
EXHIBIT E
TRADEMARKS, TRADE NAMES
Caere(R)
WordScan(R)
19