UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-K/A
(Mark One)
[X] ANNUAL REPORT PURSUANT TO SECTION 13 or 15(d) OF THE SECURITIES
EXCHANGE ACT OF 1934
For the fiscal year ended January 2, 1999.
Or
[ ] TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES
EXCHANGE ACT OF 1934
For the transition period from _____________ to ____________.
Commission File Number 0-22561
eFax.com, Inc.
(Exact name of Registrant as specified in its charter)
Delaware 77-0182451
(State or other jurisdiction of (I.R.S. Employer Identification No.)
incorporation or Organization)
1378 Willow Road, Menlo Park, California 94025
(Address of principal executive offices) (Zip Code)
Registrant's telephone number, including area code: (650) 324-0600
Securities registered pursuant to Section 12(b) of the Act: None
Securities registered pursuant to Section 12(g) of the Act: Common Stock,
$.01 par value
Indicate by check mark whether the registrant (1) has filed all reports
required to be filed by Section 13 or 15(d) of the Securities Exchange Act
of 1934 during the preceding 12 months (or for such shorter period that the
registrant was required to file such reports), and (2) has been subject to
such filing requirements for the past 90 days. Yes [X] No [ ]
Indicate by check mark if disclosure of delinquent filers pursuant to
Item 405 of Regulation S-K is not contained herein, and will not be
contained, to the best of registrant's knowledge, in definitive proxy or
information statements incorporated by reference in Part III of this Form
10-K or any amendment to this Form 10-K. [ ]
As of March 31, 1999, the aggregate market value of the voting stock
held by non-affiliates of the Registrant was approximately $207,530,859
based upon the closing sales price of the Common Stock as reported on the
Nasdaq National Market on such date. Shares of Common Stock held by
officers, directors and holders of more than ten percent of the outstanding
Common Stock have been excluded from this calculation because such persons
may be deemed to be affiliates. The determination of affiliate status is
not necessarily a conclusive determination for other purposes.
As of March 31, 1999, the Registrant had outstanding 12,346,796 shares of
Common Stock.
Amendment to filing of Annual Report on Form 10-K to modify redacted language
contained in "Revision D to Master Development, Purchase and Distribution
License Agreement" dated as of December 22, 1998, which agreement is the
subject of a confidential request (Form 10-K Exhibit 10.51). No other portions
of the filing of Annual Report on Form 10-K are amended hereby.
----------------------------
DOCUMENTS INCORPORATED BY REFERENCE:
Portions of the following documents are incorporated by reference in
this report: Registrant's Proxy Statement for its 1999 Annual Meeting of
Stockholders which will be filed with the Securities and Exchange Commission
no later than 120 days after January 2, 1999. (Part III).
This Report on Form 10-K/A includes 39 pages with the Index to Exhibits
located on page 5.
<PAGE> 2
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EFAX.COM, INC.
INDEX TO
ANNUAL REPORT ON FORM 10-K/A
FOR YEAR ENDED JANUARY 2, 1999
Page
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PART IV
Item 14 Exhibits, Financial Statement Schedules, and Reports
on Form 8-K 3
Signatures 4
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2
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PART IV
ITEM 14. EXHIBITS, FINANCIAL STATEMENT SCHEDULES, AND REPORTS ON FORM 8-K
(a) The following documents are filed as part of this Report:
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1. Financial Statements.
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Page
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Independent Auditors' Report................................... 32
Consolidated Balance Sheets as of December 31, 1998 and 1997... 33
Consolidated Statements of Operations for the Year Ended
December 31, 1998, the Year Ended December 31, 1997, and the
Nine Months Ended December 31, 1996.......................... 34
Consolidated Statements of Stockholders' Equity (Deficit) the
Year Ended December 31, 1998, the Year Ended December 31, 1997,
and the Nine Months Ended December 31, 1996.................. 35
Consolidated Statements of Cash flows for the Year Ended
December 31, 1998, the Year Ended December 31, 1997,
and the Nine Months Ended December 31, 1996.................. 36
Notes to Consolidated Financial Statements..................... 37
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2. Financial Statement Schedules.
------------------------------
Schedule II - Valuation and Qualifying Accounts (see page 51)
Schedules not listed above have been omitted because the information
required to be set forth therein is not applicable or is shown in the
financial statements or notes thereto.
3. Exhibits.
---------
Set forth below is a list of management contracts and compensatory
plans and arrangements required to be filed as Exhibits by Item 14(a)(3).
10.2** 1989 Stock Option Plan, as amended and restated, and forms of
Stock Option Agreements thereunder.
10.3** 1995 Stock Plan, as amended and restated, and form of Stock Option
Agreement thereunder.
10.4** 1997 Director Stock Option Plan and form of Stock Option Agreement
thereunder.
10.5** 1997 Employee Stock Purchase Plan and forms of agreements
thereunder.
10.28** Common Stock Purchase Option dated as of March 29, 1996 by and
between Registrant and Steven J. Carnevale.
10.29** Common Stock Purchase Option dated as of March 29, 1996 by and
between Registrant and Thomas B. Akin.
- -------------
** Incorporated by reference to the identically numbered exhibits filed
in response to Item 16(a), "Exhibits", of the Company's Registration
Statement on Form S-1, as amended, (File No. 333-23763), which was declared
effective on June 10, 1997.
(b) Reports on Form 8-K. No Reports on Form 8-K were filed by the
Registrant during the fourth quarter of 1998.
(c) Exhibits Pursuant to Item 601 of Regulation S-K. The exhibits
required by this Item are listed in the Exhibit Index attached hereto, which
is incorporated by reference.
(d) Financial Statement Schedules. The financial statement
schedule required by this Item is listed under Item 14(a)(2) above.
3
<PAGE> 4
SIGNATURES
Pursuant to the requirements of Section 13 or 15(d) of the Securities
and Exchange Act of 1934, the registrant has duly caused this Report to be
signed on its behalf by the undersigned, thereunto duly authorized, in the
city of Menlo Park, State of California on the 15th day of June, 1999.
EFAX.COM, INC.
By: /s/ EDWARD R. PRINCE, III
-----------------------------
Edward R. Prince, III,
Chief Executive Officer and
Chairman of the Board
Pursuant to the requirements of the Securities Exchange Act of 1934,
this Report has been signed below by the following persons on behalf of the
registrant and in the capacities and on the date indicated.
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Signatures Title Date
- -------------------------- ----------------------------- ----------------
<S> <C> <C>
/s/ EDWARD R. PRINCE, III Chief Executive Officer and June 15, 1999
- -------------------------- Chairman of the Board
(Edward R. Prince, III) (Principal Executive Officer)
/s/ TODD J. KENCK Vice President of Finance, June 15, 1999
- -------------------------- Chief Financial Officer,
(Todd J. Kenck) and Secretary (Principal
Financial and Accounting Officer)
/s/ THOMAS B. AKIN* Director April 9, 1999
- --------------------------
(Thomas B. Akin)
/s/ DOUGLAS Y. BECH* Director April 9, 1999
- --------------------------
(Douglas Y. Bech)
/s/ STEVEN J. CARNEVALE* Director April 9, 1999
- ---------------------------
(Steven J. Carnevale)
/s/ LON B. RADIN* Director April 9, 1999
- ---------------------------
(Lon B. Radin)
/s/ ALBERT E. SISTO* Director April 9, 1999
- ---------------------------
(Albert E. Sisto)
* By: /s/ TODD J. KENCK June 15, 1999
- ---------------------------
(Todd J. Kenck, as Attorney-
in-Fact)
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4
<PAGE> 5
Exhibit Index
-------------
eFax.com, Inc.
Exhibits Pursuant to Item 601 of Regulation S-K
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(a) Exhibits
<S> <C>
10.51# Revision D to Master Development, Purchase and Distribution
License Agreement dated as of December 22, 1998 by and between
Registrant and Hewlett-Packard Company which incorporates by
reference Master Development, Purchase and Distribution License
Agreement dated effective as of January 31, 1997 by and between
Registrant and Hewlett-Packard Company (Exhibit 10.36^**).
</TABLE>
5
<PAGE> 6
***Text Omitted and Filed Separately
Confidential Treatment Request
Under 17 C.F.R. Subsection 200.80(b)(4),
200.83 and 240.24b-2
REV D
MASTER DEVELOPMENT, PURCHASE AND DISTRIBUTION LICENSE AGREEMENT
THIS AGREEMENT is between JETFAX INC., a Delaware corporation having
its principal place of business at 1378 Willow Road, Menlo Park, California
94025 ("JetFax"), and HEWLETT-PACKARD COMPANY, a Delaware corporation with
offices at 3000 Hanover Street, Palo Alto, California 94304 ("HP"). This
Agreement is effective as of December 22, 1998 (the "Effective Date").
WHEREAS; THE PARTIES HAVE PREVIOUSLY ENTERED INTO A CONTRACT FOR THE
LASERJET 3100 PRODUCT ("THE LASERJET 3100 CONTRACT"), DATED JANUARY 31,
1997 TITLED "MASTER DEVELOPMENT, PURCHASE AND DISTRIBUTION LICENSE
AGREEMENT, REV G (3/18/97)" WHICH IS INCORPORATED HEREIN BY REFERENCE
HERETO; AND
WHEREAS; THE PARTIES DESIRE TO DEVELOP AND INTRODUCE A NEW PRODUCT, DEFINED
BELOW, [...***...];
THE PARTIES AGREE AS FOLLOWS:
AGREEMENT
1. DEFINITIONS.
1.1 Acceptance Criteria means mutually acceptable final performance
criteria that the parties agree will be used to determine whether the JetFax
Software performs at a level acceptable for inclusion in the mass marketed
HP Product.
1.2 Date of First Commercial Shipment means the date HP first ships
a Royalty Generating Unit.
1.3 Date of First Mass Production means the date of the first
production run of the HP Product whereby the result of such run is intended
to be Royalty Generating Units.
1.4 Development Project means JetFax's efforts to modify its
existing JetFax Software along with JetFax's development of the HP Exclusive
Features all of which is more fully described in Exhibit A ("HP Product
Technical System Specification") and Exhibit D ("HP Exclusive Features"),
and scheduled per Exhibit B ("Development Schedule") such that they can be
integrated for use in the HP Product.
* CONFIDENTIAL TREATMENT REQUESTED
8
<PAGE> 7
1.5 Development Schedule means the list of JetFax milestones and
targeted delivery dates set forth in Exhibit B ("Development Schedule").
1.6 Error(s) means a defect in the JetFax Firmware or the
[...***...] which causes such JetFax Firmware or [...***...] not to operate
substantially in accordance with the applicable Acceptance Criteria.
1.7 HP Exclusive Feature(s) shall mean those feature(s) identified
as exclusive to HP and listed in Exhibit D ("HP Exclusive Features") that
are developed by JetFax at the request of HP and that the parties have
agreed will be exclusively licensed to HP while such feature(s) continue to
qualify as "HP Exclusive Feature(s)."
1.8 HP Product means the HP developed hardware product, [...***...]
for which JetFax undertakes the Development Project and that uses the JetFax
Firmware [...***...] along with HP Exclusive Features as described in
Exhibit D ("HP Exclusive Features").
1.9 HP Trademarks means (a) the HP supplied trademarks, stylistic
marks and distinctive logotypes set forth in Exhibit E ("Trademarks") and
(b) other mutually agreed upon marks and logotypes as HP may from time to
time designate in writing during the term of this Agreement.
1.10 JetFax Deliverables means those items described in the Software
description section listed in Exhibit A ("HP Product Technical System
Specifications") that JetFax shall deliver to HP pursuant to this Agreement,
including but not limited to, the HP Exclusive Features listed in Exhibit D
("HP Exclusive Features"), and the JetFax Software and Updates.
1.11 JetFax Documentation means the JetFax supplied online user
manual for the JetFax Software.
1.12 JetFax Software means (a) the JetFax Firmware, (b) the
[...***...] and (c) any changes to the above listed software which JetFax
may supply to HP.
1.12.1 JetFax Firmware means (a) all or any portion of the
JetFax controller computer programs, compilations thereof, and all
associated documentation which functionality is described in Exhibit A ("HP
Product Technical System Specification"), ported by JetFax to the HP
Product, and provided by JetFax to HP pursuant to this Agreement and (b) any
changes to such firmware which JetFax may supply to HP.
1.12.2 [...***...] means (a) all or any portion of JetFax's
computer programs and all associated end user documentation for the
[...***...] for the HP Product for the supported platforms Windows 3.1,
Windows for Workgroups 3.11, Windows 95 (collectively the "Initial Windows
Platforms"), Windows 98 and Windows NT 4.0 and 5.0/Win 2000 listed and
described in the Software section of Exhibit A ("HP Product Technical System
Specification") provided by JetFax to HP and (b) any changes to such
software which JetFax may supply to HP.
* CONFIDENTIAL TREATMENT REQUESTED
9
<PAGE> 8
1.13 JetFax Trademarks means (a) the JetFax-supplied
trademarks, stylistic marks and distinctive logotypes set forth in Exhibit E
("Trademarks") and (b) other mutually agreed upon marks and logotypes as
JetFax may from time to time designate in writing during the term of this
Agreement.
1.14 Royalty Generating Unit means an [...***...].
1.15 Testing Criteria means mutually acceptable working test
plans and procedures that the parties agree will be used to determine the
acceptability of the JetFax Deliverables upon delivery pursuant to the
Development Schedule.
1.16 Updates means updated versions of JetFax Software which
include all changes, alterations, corrections and enhancements to such
JetFax Software which JetFax makes generally available to its licensees
[...***...] and that are not provided to any particular JetFax OEM customer
as a feature exclusive to such OEM.
2. LICENSE GRANTS.
2.1 Manufacture and Distribution of JetFax Formatter. The
[...***...]. Subject to HP's compliance with the terms of this Agreement
and effective upon HP's final acceptance of the JetFax Deliverables, JetFax
hereby grants to HP a worldwide, non-exclusive, non-transferable license to
(i) manufacture (and have manufactured), and (ii) market, use, sell and
otherwise distribute the JetFax Formatter, directly and indirectly through
HP's usual distribution channels. The licenses granted above are only for
use in connection with the HP Product specified herein, for the purpose of
interfacing the JetFax Firmware to the HP Product, and to use the Hardware
Design Package in connection with such activities. HP agrees that it shall
keep the Hardware Design Package confidential and shall ensure that the same
degree of care is used to prevent the unauthorized use, dissemination or
publication of the Hardware Design Package as HP would use to protect
similar information owned by HP.
2.2 Purchase and Distribution of JetFax ASIC. The [...***...].
2.2.1 Third-Party Manufacturer. JetFax shall enter into
agreements with certain HP-qualified ASIC manufacturers authorizing such
manufacturers to manufacture and sell JetFax ASICs directly to HP, and upon
HP's request provide documentation of such authorization. In addition, in
connection with such agreements, JetFax shall provide engineering support
and documentation to such HP-qualified ASIC manufacturers as reasonably
required to enable such manufacturers to meet their delivery requirements
with HP. HP may purchase JetFax ASICs only from such authorized HP-
qualified ASIC manufacturers, and any such purchases made by HP shall be
subject to the terms and conditions agreed upon by HP and such authorized
HP-qualified ASIC manufacturer.
2.2.2 Distribution. Subject to HP's compliance with the terms
of this Agreement, JetFax hereby grants HP the right to distribute the
JetFax ASICs as part of the HP Product described
* CONFIDENTIAL TREATMENT REQUESTED
10
<PAGE> 9
herein and to distribute the JetFax ASICs as spare or replacement parts for
the HP Product described herein and other support as may be required. HP
shall not distribute JetFax ASICs in any other manner without JetFax's prior
written approval for such distribution.
2.2.3 Engineering Changes. JetFax will not make changes to the
ASICs without the prior written consent of HP. In the event that
circumstances beyond reasonable control of the parties require changes, the
parties will promptly meet and determine, in good faith, the appropriate
changes and timing of such changes.
2.3 Reproduction and Distribution of JetFax Firmware. Subject to
HP's compliance with the terms of this Agreement, JetFax hereby grants to HP
a worldwide, non-exclusive, non-transferable license to use, reproduce and
distribute directly and indirectly, through HP's usual distribution
channels, the object code version of the JetFax Firmware and JetFax Firmware
Updates as a part of the HP Product or for repair and maintenance of such
product.
2.4 Reproduction and Distribution of JetFax Documentation. Subject
to HP's compliance with the terms of this Agreement, JetFax hereby grants to
HP a worldwide, non-exclusive, non-transferable license to use, modify,
reproduce and distribute directly and indirectly, through HP's usual
distribution channels, the JetFax Documentation as a part of the HP Product
or in conjunction with such product.
2.5 Distribution of HP Exclusive Features. Subject to HP's
compliance with the terms of this Agreement, JetFax hereby grants to HP,
[...***...] following the [...***...] a [...***...] license to use, reproduce
and distribute directly and indirectly, through HP's usual distribution
channels, the [...***...] the HP Exclusive Features. Notwithstanding the
[...***...] license granted above, JetFax shall, at all times, have the right
to include or license the HP Exclusive Features in products that have
[...***...] in the [...***...] or the [...***...]. Notwithstanding the
aforesaid distribution rights, JetFax will not obtain any rights to [...***...]
by virtue of this Agreement. Furthermore, nothing contained in this Agreement
shall be construed to grant JetFax any right, title or interest in or to any
[...***...].
2.6 Reproduction and Distribution of [...***...]. Subject to HP's
compliance with the terms of this Agreement, JetFax hereby grants to HP a
worldwide, non-exclusive, non-transferable license to, (a) use, reproduce
and distribute, directly and indirectly, through HP's usual distribution
channels, [...***...] only as part of, or bundled with the HP Product; and
(b) sublicense the [...***...] to end users for installation with an already
installed HP Product.
2.7 End User Licenses. JetFax is responsible for embedding the HP
Standard Software License Terms as an essential step in the installation of
the Software to ensure end user receipt of the HP Standard Software License,
such license to include terms and conditions substantially equivalent to
those set forth in Exhibit F ("HP Software License Terms") to this
Agreement. The terms of such license will be drafted so as to apply to the
JetFax Software.
3. DEVELOPMENT. Subject to the terms of this Agreement and the timely
receipt of all associated HP deliverables, JetFax will, in a timely and
professional manner, initiate the Development Project, staff the Development
Project as required, and use reasonable efforts to achieve the milestones
listed in the Development Schedule on or before the dates associated with
each such milestone. HP agrees to designate a technically qualified person
to respond to information requests by JetFax who, when so requested by
JetFax, shall use his or her best efforts to respond.
* CONFIDENTIAL TREATMENT REQUESTED
11
<PAGE> 10
3.1 Localization. HP will be responsible for the localization of
the software delivered by JetFax. The software delivered by JetFax must be
capable of being localized into the languages specified in Exhibit A ("HP
Product Technical System Specification"). HP may choose to use third party
suppliers to accomplish this localization work. JetFax will be expected to
reasonably cooperate and support the localization effort be it through a
third party or through HP. This may include, but is not limited to,
sufficient technical support and access to subject matter experts, and
participation in the creation of localization work instructions (LWIs).
3.2 Help Files. JetFax will be responsible for providing
technical text describing user options of each help system access point. HP
will be responsible for the help screen content for the software delivered
by JetFax. HP may choose to use third party suppliers to accomplish this
content development work. JetFax will be expected to reasonably cooperate
and support the help screen content development effort be it through a third
party or through HP. This may include, but is not limited to, sufficient
technical support and access to subject matter experts. Jet Fax will be
responsible for supporting the integration of the help system to be able to
successfully run with the software.
4. DELIVERY, TESTING AND ACCEPTANCE.
4.1 HP Deliverables. START HP shall promptly provide JetFax with an
appropriate number of [...***...]. HP shall also provide any additional
software, equipment and documentation, if any, as necessary for JetFax to
complete the Development Project and for testing and support of the JetFax
Deliverables in accordance with Section 4.3 ("Testing") below. All equipment
loaned by HP to JetFax shall remain the property of HP and shall be fully
insured by JetFax. HP recognizes that an equipment failure could result in
a delay in the Development Schedule and, while such equipment is in the
possession of JetFax, HP shall assist in maintaining the same in good
working order. At JetFax's request during the term of JetFax's warranty and
continuing support activities hereunder, HP will continue to ensure that at
least one unit on loan to JetFax is the then current production unit of the
HP Product which HP is actually shipping.
4.2 JetFax Deliverables. JetFax will use commercially reasonable
efforts to provide HP with the JetFax Deliverables as described in Exhibit A
("HP Product Technical System Specification") in accordance with the
Development Schedule as detailed in Exhibit B ("Development Schedule"). At
JetFax's option, the JetFax Deliverables will be delivered telephonically
from JetFax's place of business to a HP server in California, provided that
JetFax bears the costs of such telephonic transmission to such server. For
purposes of tax documentation, coincident with the telephonic transmission
of such deliverable items, JetFax may send to HP a certificate containing
the date of transmission, the time of such transmission, the name(s) of
JetFax personnel who made the transmission, the signature(s) of such
personnel and a general description of the nature of the item(s) transmitted
sufficient to distinguish the transmission from other transmissions. Within
fifteen (15) days of receipt of the certificate, HP shall return such
certificate to JetFax, identifying the HP personnel who received such
transmission and, if the information on such certificate is true and
accurate, supply the signature of such receiving personnel verifying the
occurrence of the transmission.
* CONFIDENTIAL TREATMENT REQUESTED
12
<PAGE> 11
4.3 Testing.
4.3.1 Development of Test Plan. The parties will work in good
faith to develop the Testing Criteria. HP or its manufacturing partner will
be responsible for most of the hardware tests and design issues related to
very high-volume production, and for testing the mechanical performance of
the HP Product. In addition, HP or its manufacturing partner will also test
environmental and reliability standards of the HP Product.
4.3.2 Interim Performance Testing. Upon JetFax's delivery of
each interim JetFax Deliverable listed in the Development Schedule, HP
[...***...], in accordance with the applicable Testing Criteria, for
conformity with the applicable Acceptance Criteria and the Testing Criteria.
HP shall inform JetFax of the results of such testing and, if HP is unable
to accept the interim JetFax Deliverables, the basis for a finding of
nonconformity or failure of such interim JetFax Deliverables to conform to
the Testing Criteria. JetFax shall use commercially reasonable efforts to
promptly correct nonconformities and resubmit the same for retesting by HP.
This process shall continue until HP accepts such interim JetFax
Deliverable, or terminates under Section 12.2.2.
4.4 Final Acceptance. The JetFax Deliverables shall conform to
specifications in Exhibit A ("HP Product Technical System Specifications")
and meet the Acceptance Criteria. HP shall have [...***...] after [...***...]
(the "Acceptance Period") to examine and test such JetFax Deliverables to
determine that such items substantially conform to the applicable Acceptance
Criteria [...***...]. Within such period, HP shall provide JetFax with written
acceptance of the final JetFax Deliverables or a statement of Errors to be
corrected. The final JetFax Deliverables will be deemed to have been accepted
by HP if JetFax does not receive such written acceptance or statement of Errors
within such [...***...] period. JetFax shall use its commercially reasonable
efforts to correct Errors and redeliver a master copy of the final JetFax
Deliverables to HP, and HP shall [...***...] of such redelivery provide JetFax
with written acceptance or a statement of Errors. Should the final JetFax
Deliverables not conform to the applicable Testing Criteria and Acceptance
Criteria, or in the event JetFax is not able to deliver the final JetFax
Deliverables in accordance with the Development Schedule, HP's sole and
exclusive remedy shall be [...**...] by giving JetFax notice thereof (including
a statement of Errors where applicable) within said [...***...] the correction
[...***...] for a mutually agreeable [...***...] to [...***...] the applicable
[...***...] in a mutually agreeable manner, or [...***...] and obtain a
[...***...] for such [...***...] provided that HP has complied with section
[...***...].
4.5 Compliance and Certification. HP shall be responsible for all
compliance testing and certification, in the U.S. and internationally, for
safety, emissions, ESD and other required standards, including but not
limited to "Public Telephone and Telegraph" (PTT) testing and approvals.
Notwithstanding the above, JetFax shall be responsible for [...***...].
JetFax and HP will work together to take corrective actions required for
problems found in such testing and JetFax shall make reasonable changes to
its designs and software as required. All costs for compliance testing and
certifications, including travel and other reasonable expenses of JetFax
personnel requested by HP to participate in such testing or certification,
shall be paid by HP.
5. PAYMENTS.
5.1 Non-Recurring Engineering Fees. As and upon HP's acceptance of
each deliverable in accordance with the milestones listed in Exhibit B
("Development Schedule"), HP shall pay JetFax a non-recurring engineering
fee equal to the amount associated with each such milestone.
Notwithstanding the failure of JetFax to meet such individual milestones, HP
shall nonetheless be obligated to pay to JetFax the associated non-recurring
engineering milestone payments on the targeted date of completion if
JetFax's failure to complete the milestone by the listed date is due to a
failure by HP or its designated suppliers, to provide material support, data
and deliverables in a timely manner and HP has received prompt written
notice from JetFax upon JetFax's discovery that such failure by HP would, in
fact, result in JetFax's inability to complete the milestone by the listed
date.
* CONFIDENTIAL TREATMENT REQUESTED
13
<PAGE> 12
5.2 Royalties.
5.2.1 Prepaid Royalties. HP shall pay to JetFax the following
refundable prepaid royalties in advance of actual sales of the HP Product
according to the following schedule:
Prepaid
Payment Royalty
Number Milestone Amount
------ --------- ------
[...***...] [...***...] $[...***...]
[...***...] [...***...] $[...***...]
Total Prepaid Royalties $[...***...]
[...***...]
[...***...]
The prepaid royalties shall be recovered by HP at the rate of
[...***...].
5.2.2 Royalty Rate. HP shall pay JetFax a royalty of
[...***...].
5.2.3 When Royalties Earned. Each royalty due hereunder shall
be earned on the date the Royalty Generating Unit is shipped.
5.3 Taxes. License fees and prices to HP do not include taxes of
any nature. HP will pay ordinary sales and property taxes where applicable
when invoiced by JetFax or will supply appropriate tax exemption
certificates in a form satisfactory to JetFax. Under no circumstances will
either party be responsible for the other parties' income tax, franchise tax
or other similar tax liability.
5.4 Payment Terms. All payments hereunder shall be in U.S. dollars
and shall be paid by HP's U.S. corporate entity. HP shall make payments
required hereunder, without deduction of any tax, duty, fee or commissions.
All NRE payments and prepaid royalties due in accordance with the terms of
the Agreement shall be paid [...***...] after the completion of the
applicable milestone. All royalties due in accordance with the terms of the
Agreement shall be paid within [...***...] after the end of each HP fiscal
quarter in which they occur. With each royalty payment HP shall include a
written summary of the records described in Section 6.1 ("Records") below,
broken out by month of sale. [...***...]. Such oral communication shall be
subject to final adjustment by HP at the end of each accounting period.
* CONFIDENTIAL TREATMENT REQUESTED
14
<PAGE> 13
6. RECORDS AND AUDIT.
6.1 Records. HP shall maintain a complete, clear and accurate record of
the number of Royalty Bearing Units shipped during the fiscal quarter, and
any other information which may be required to determine whether HP is
paying the correct royalty amount hereunder.
6.2 Right of Audit. To ensure compliance with the terms of this
Agreement, JetFax shall have the right to have an inspection and audit of
all the relevant accounting and sales books and records of HP conducted by
an independent audit firm reasonably acceptable to both parties whose fee is
paid by JetFax, and shall be conducted during regular business hours at HP's
offices and in such a manner as not to interfere with HP's normal business
activities. In no event shall audits be made hereunder more frequently than
every twelve (12) months. If such inspections should disclose any
underreporting, HP shall promptly pay JetFax such underpayment amount, and
if such inspections should disclose any overreporting, JetFax shall promptly
pay HP such overpayment amount. In the event such auditor's inspection
shows a five percent (5%) or greater underreporting, HP shall pay such
auditor's fees and expenses for such audit.
7. TRAINING AND SUPPORT.
7.1 Training and Support. JetFax agrees to provide, [...***...],
the training, technical assistance and manufacturing support described in
EXHIBIT C ("Training and Support"). HP agrees that all contact regarding
continuing support services shall be handled through up to three designated
HP contacts to be specified by HP.
7.2 [...***...] Updates. HP shall be free, without additional
payments to JetFax, to distribute to existing customers using the HP Product
only, Updates to the [...***...], through its distribution channels, via its
web sites or its other normal distribution methods [...***...].
7.3 End User Support. HP will have the sole responsibility for
supporting its end users and will provide end users with reasonable end user
documentation, warranty service, and telephone support for the use of HP
Product consistent with HP's practice for supporting its other products.
8. MARKETING OBLIGATIONS.
8.1 Publicity. Within [...***...] following the date HP first
announces the HP Product, the parties shall issue a press release, the terms
of which are mutually acceptable to both HP and JetFax.
8.2 JetFax After Market Products. HP agrees to allow JetFax to
market certain JetFax after market products through [...***...] which may be
implemented through [...***...] to end users of the HP Product. JetFax may
[...***...] for any of [...***...] and such [...***...]. HP further agrees to
allow JetFax to market [...***...] to the base of [...***...] after
introduction of the Product. HP agrees to provide to JetFax [...***...]. HP
will allow JetFax to [...***...] at [...***...] expense, to the [...***...]
but JetFax shall not [...***...] more than [...***...]. JetFax may [...***...]
for any of [...***...] and such [...***...]. All JetFax communications to the
[...***...] must be [...***...] to implementation, such [...***...] and such
[...***...] to be [...***...].
8.3 JetFax Information. JetFax shall have the right, within the
[...***...] to include the following JetFax information: [...***...] from the
[...***...] which provides [...***...] information including [...***...] and
[...***...]. All [...***...] information must be [...***...] to
implementation, such [...***...] to be [...***...].
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<PAGE> 14
9. PROPRIETARY RIGHTS.
9.1 Ownership. The parties acknowledge that the other party and its
suppliers have and retain exclusive ownership of all their respective
trademarks, logos and product names, and all rights, title and interest,
including all trademarks, copyrights, patents, mask work rights, trade
names, trade secrets and other intellectual property rights to all of the
documentation and computer-recorded data comprising or included in the
JetFax Deliverables with respect to JetFax ownership and the HP Product
other than the JetFax Deliverables with respect to HP ownership. All
related ideas, developments, concepts, techniques, know-how, trade secrets
and inventions which are conceived or reduced to practice during the course
of this Agreement shall belong exclusively to the developing party. Except
for the rights expressly enumerated herein, HP is not granted any rights to
patents, mask work rights, copyrights, trade secrets, trade names,
trademarks, or any other rights, franchises or licenses with respect to the
JetFax Deliverables. In the event that HP obtains the source code versions
of the JetFax Deliverables and related materials pursuant to Section 10
("Escrow"), HP agrees that such source code and related materials will be
protected as JetFax Deliverables hereunder and that it will not publish,
disclose or otherwise divulge such source code and related materials to any
person, except officers, employees and independent contractors of HP who
have entered into non-disclosure agreements at least as protective of
JetFax's proprietary rights as set forth herein and need access to such
source code or related materials to perform their duties, at any time,
either during the term or after the termination of this Agreement.
9.2 No Source Code. HP specifically acknowledges that no rights,
other than those contained in Section 10 ("Escrow"), to the human readable,
source code versions of the JetFax Software are granted to it (except
resource source files and message string source files for both host based
software and device firmware for translation purposes only). HP agrees that
it will not attempt to reverse engineer, reverse compile, disassemble or
otherwise attempt to create source code which is derived from the JetFax
Software provided to HP solely in object code form during the term of this
Agreement so long as this Agreement remains in force and for one (1) year
following termination. In addition, HP shall not reverse engineer the
JetFax ASIC or any portion thereof so long as this Agreement remains in
force and for one (1) year following termination. Notwithstanding the
above, the parties agree that HP will use, and it shall not be considered a
breach of this Section 9.2 to employ, in conjunction with JetFax, ordinary
techniques available to debug and resolve problems with the JetFax Software.
9.3 Proprietary Notices. HP agrees as a condition of its rights
hereunder, not to remove or deface appropriate proprietary JetFax notices
appearing on the JetFax Deliverables for all HP internal distribution
activities. HP further agrees, to reproduce, in accordance with EXHIBIT E
("Trademarks"), appropriate JetFax copyright notices on the JetFax Software,
the software media, and in any electronic distribution of software, such as
drivers or Updates.
9.4 Restricted Rights. The JetFax 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
* CONFIDENTIAL TREATMENT REQUESTED
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<PAGE> 15
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), HP will identify and license the JetFax
Software to U.S. Government end users (i) only as a commercial end item and
(ii) with only those rights as are granted to all other end users pursuant
to the terms and conditions herein. In the event that HP receives a request
from any agency of the U.S. Government to provide the JetFax Software with
rights beyond those set forth above, HP will notify JetFax of the scope of
rights requested and the agency making such request and JetFax will have
five (5) business days to, in its sole discretion, accept or reject such
request.
9.5 Foreign Government Agreements. HP will take commercially
reasonable steps in making proposals and agreements with foreign governments
other than the United States which involve the JetFax Software and related
documentation to strive for the objective that JetFax's proprietary rights
in such JetFax Software and related documentation receive the maximum
protection available from such foreign government for commercial computer
software and related documentation developed at private expense.
9.6 Confidential Information. Notwithstanding Section 16.14 below
(which applies specifically to this Agreement itself), either party may
receive or have access to technical and business information of the other,
which may include product specifications, plans and strategies, software
source code, promotions, customer listing and other information which the
disclosing party considers to be confidential ("Confidential Information").
In the event such information is disclosed, the parties shall first agree to
disclose and receive such information in confidence. If then disclosed, the
information shall be labeled as the disclosing party's Confidential
Information, or if disclosed orally, confirmed and identified in writing by
the disclosing party as its Confidential Information within thirty (30) days
after such oral disclosure. Confidential Information of the disclosing
party shall be used by only those employees of the receiving party who have
a need to know such information for purposes related to this Agreement. The
receiving party shall protect any such Confidential Information of the
disclosing party from unauthorized disclosure to third parties with the same
degree of care as the receiving party uses for its own similar information.
The foregoing obligation shall not apply to any information which is (i)
already known by the receiving party prior to disclosure, (ii) independently
developed by the receiving party prior to or independent of the disclosure,
(iii) publicly available through no fault of the receiving party, (iv)
rightfully received from a third party without a duty of confidentiality, or
(v) disclosed by the receiving party with the disclosing party's prior
written approval.
10. ESCROW. The parties have entered into an Escrow Account, Client
Account # 1005022-00001-0816001 at DSI Technology Escrow Services at 425
California Street, Suite 1450, San Francisco, California 94104. The same
terms and conditions of the Escrow Account and the requirements for the same
(Section 10 of the LaserJet 3100 Contract) shall apply to source code
versions of the JetFax Software.
11. LICENSE TO USE TRADEMARKS.
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17
<PAGE> 16
11.1 HP's Use of Trademarks. HP agrees that it will permanently
include JetFax Trademarks, in a form similar to those included in Exhibit E
("Trademarks"), on all copies of the JetFax Software and JetFax ASIC. HP
also agrees that it will include the JetFax and JetSuite brand names, in a
form similar to those included in Exhibit E ("Trademarks"), along with HP
logos in splash screens, installation screens, about boxes, demo pages, help
tutorials, manuals, media labels and marketing collaterals.
11.2 Ownership of Trademarks. HP acknowledges the ownership of the
JetFax Trademarks by JetFax. HP agrees that it will do nothing inconsistent
with such ownership and that all use of JetFax Trademarks by HP shall inure
to the benefit of and be on behalf of JetFax. HP acknowledges that JetFax
Trademarks are valid under applicable law and that HP's utilization of such
JetFax Trademarks will not create any right, title or interest in or to such
trademarks. HP acknowledges JetFax's exclusive right to use of JetFax
Trademarks and agrees not to do anything contesting or impairing the
trademark rights of JetFax. Any use of JetFax trademarks must identify
JetFax as the owner of such trademarks. HP agrees that JetFax will use and
reproduce the HP Trademarks for inclusion in the JetFax Deliverables.
JetFax acknowledges the validity of the HP Trademarks and agrees the
JetFax's utilization of such HP Trademarks will not create any right, title
or interest in or to such trademarks. JetFax and HP agree that no usage of
Trademarks or commitments in this section shall extend beyond the scope of
activity envisioned by this Agreement.
11.3 Quality Standards. JetFax is familiar with and approves of
the quality of HP hardware products that are similar to the HP Product. The
quality of the HP Product sold in connection with the JetFax Trademarks
shall be substantially the same as the quality of such other HP hardware
products.
12. TERM AND TERMINATION.
12.1 Term. The initial term of this Agreement shall be five (5) years
from the Effective Date, unless this Agreement is earlier terminated pursuant
to Section 12.2.
12.2 Termination.
12.2.1 Termination for Cause. A party may terminate this
Agreement in the event of any material breach by the other party which
continues uncured after [...***...] written notice by the non-breaching
party of said breach (which notice shall, in reasonable detail, specify the
nature of the breach) to the breaching party.
12.2.2 Termination for Convenience. Subject to the provisions
of Section 12.3.6, HP may terminate this Agreement without cause upon
[...***...] written notice to JetFax.
12.3 Obligations on Termination or Expiration. Upon termination or
expiration of this Agreement:
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<PAGE> 17
12.3.1 Licenses Terminated. The licenses granted pursuant to
Section 2 ("License Grants") shall terminate immediately.
12.3.2 Continued Support; Return or Destruction of JetFax
Deliverables. Except in the case where this Agreement is terminated prior
to the Date of First Commercial Shipment, HP shall have the right to retain
a reasonable number of copies of the JetFax Software and use such JetFax
Software only to the extent required for support and maintenance purposes.
HP will immediately discontinue use (except as set forth in the preceding
sentence) and distribution of, and return or destroy all copies of the
JetFax Deliverables in its possession (including copies placed in any
storage device under HP's control). Upon JetFax's request, HP shall warrant
in writing to JetFax its return or destruction of all of JetFax's
proprietary information within thirty (30) days of termination or
expiration.
12.3.3 Continued Use by End Users. End users shall be permitted
the continued and uninterrupted use of the JetFax Software for the balance
of the term of their end user agreements, as specified in such agreements,
provided that and so long as the end users are not in default of their end
user agreements.
12.3.4 Default by End Users. HP's rights upon default of the end
users relating to the JetFax Software, as specified in the end user
agreement, shall automatically be assigned to JetFax to the extent relevant
to the enforcement by JetFax of the proprietary rights of JetFax and/or its
suppliers in the JetFax Software.
12.3.5 Survival of Terms. The parties' rights and obligations set
forth in Section 9 ("Proprietary Rights"), Section 12.3 ("Obligations on
Termination or Expiration"), Section 13.2 ("Limitation on Warranties"),
Section 14 ("Indemnification"), Section 15 ("Limitation of Liability") and
Section 16 ("General") shall continue after the termination or expiration of
this Agreement.
12.3.6 Liquidated Damages. HP and JetFax hereby acknowledge and
agree that it would be impractical and/or extremely difficult to fix or
establish the actual harm sustained by JetFax as a result of the termination
of this Agreement during the development period or thereafter, and that the
damages listed below are a reasonable approximation thereof. In the event
that this Agreement is terminated by HP for convenience pursuant to Section
12.2.2 above, HP shall pay JetFax the following:
1) [...***...]
2) [...***...].
Milestone Targeted Date
Number Milestone of Completion Amount
- ---------- --------- ------------- ------
[...***...] [...***...] [...***...] $[...***...]
[...***...] [...***...] [...***...] $[...***...]
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19
<PAGE> 18
In the event that JetFax terminates this Agreement for HP's material breach
pursuant to Section 12.2.1, JetFax shall, [...***...]. Such payments shall
not serve to waive JetFax's rights to seek injunctive relief pursuant to
Section 16.5 ("Injunctive Relief").
13. WARRANTIES.
13.1 Performance Warranty. JetFax warrants that the JetFax Software
and the HP Exclusive Features, for a period of [...***...] after the Date of
First Commercial Shipment (the "Warranty Period"), will perform
substantially in accordance with the applicable Acceptance Criteria when
used in conjunction with the HP Product. JetFax shall, at its expense,
provide a correction or workaround for any reproducible Errors which may be
discovered in the JetFax Software if they are reported to JetFax by HP
during the Warranty Period and deliver an updated version of the JetFax
Software to HP. This warranty shall not apply to such JetFax Software if it
(i) has been modified by HP or any third party, or (ii) is any version other
than the most current version of such JetFax Software shipped by HP
hereunder or the version shipped by HP immediately preceding such current
version.
13.2 Limitations on Warranties. HP acknowledges that JetFax does not
warrant that the JetFax Software will meet HP's requirements, that operation
of the JetFax Software will be uninterrupted or error free, or that all
software errors will be corrected. JetFax is not responsible for problems
caused by computer hardware or other computer operating systems (including
those making up other HP products) which are not compatible with the system
specifications required to run the JetFax Software as set forth in the
applicable Acceptance Criteria, or for problems in the interaction of the
JetFax Software with non JetFax software. HP acknowledges that the JetFax
Software is of such complexity that it may have inherent defects, and agrees
that JetFax makes no other warranty, either express or implied, as to any
matter whatsoever. The foregoing states JetFax's sole and exclusive
warranty to HP concerning the JetFax software and HP's sole and exclusive
remedy for breach of warranty. Except as expressly set forth above, the
JetFax Deliverables are provided strictly "AS IS". Except for the express
warranties stated in this Agreement, JetFax makes no additional warranties,
express, implied, arising from course of dealing or usage of trade, or
statutory, as to the JetFax Deliverables or any matter whatsoever. In
particular, any and all warranties of merchantability, fitness for a
particular purpose and noninfringement are expressly excluded. Neither
party shall have the right to make or pass on, and shall take all measures
necessary to ensure that neither it nor any of its agents or employees shall
make or pass on, any express or implied warranty or representation on behalf
of the other party to any of its customers, end users, or third parties.
14. INDEMNIFICATION.
14.1 By JetFax. Subject to Section 15, JetFax agrees to indemnify
and defend HP from any costs, damages, and reasonable attorneys' fees
resulting from any claims by third parties that the uses permitted hereunder
of the JetFax Deliverables infringe any (i) U.S. copyrights, or U.S.
trademarks; or (ii) patents issued in the Designated Countries provided
that, HP gives JetFax prompt written notice of
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<PAGE> 19
any such claim, tenders to JetFax the defense or settlement of such a claim
at JetFax's expense, and cooperates with JetFax, at JetFax's expense, in
defending or settling such claim. If JetFax receives notice of an alleged
infringement or if HP's use of the JetFax Deliverables shall be prevented by
permanent injunction, JetFax may, at its sole option and expense, procure
for HP the right to continued use of the JetFax Deliverables as provided
hereunder, modify the JetFax Deliverables so that it is no longer
infringing, or replace the JetFax Deliverables with a deliverable of equal
or superior functional capability. The rights granted to HP under this
section shall be HP's sole and exclusive remedy and JetFax's sole obligation
for any alleged infringement of any patent, copyright, trademark, or other
proprietary right. JetFax will have no liability to HP if any alleged
infringement or claim of infringement is based upon (a) the modification of the
JetFax Deliverables by HP or any third party, (b) use of the JetFax Deliverables
in connection or in combination with equipment, devices, or software not
delivered by JetFax (if such infringement or claim could have been avoided by
the use of the unmodified JetFax Deliverables with other equipment, devices or
software), or (c) the use of the JetFax Deliverables other than as permitted
under this Agreement or in a manner for which it was not intended or use of
other than the most current release of the JetFax Deliverables (if such claim
would have been prevented by the use of such release).
14.2 By HP. HP agrees to indemnify and defend JetFax from any
costs, damages, and reasonable attorneys' fees resulting from all claims by
third parties arising from the use, manufacture, and distribution of HP
Products by HP and its direct and indirect customers in any country, worldwide,
provided that JetFax gives HP prompt written notice of any such claim,
tenders to HP the defense or settlement of any such claim at HP's expense,
and cooperates with HP, at HP's expense, in defending or settling such
claim. HP will have no liability to JetFax with respect to any claim as to
which JetFax is liable to HP pursuant to Section 14.1 ("By JetFax") above.
15. LIMITATION OF LIABILITY. Neither party will be liable to the other
party or any other party for any loss of use, interruption of business or
any indirect, special, incidental or consequential damages of any kind
(including lost profits) regardless of the form of action whether in
contract, tort (including negligence), strict product liability or
otherwise, even if either party has been advised of the possibility of such
damages. The foregoing limitation of liability is independent of any
exclusive remedies for breach of warranty set forth in this Agreement. The
limitation above shall not apply and shall be of no force and effect with
regard to damages attributable to a breach of the scope of the licenses
granted in Section 2 ("License Grants") or a breach of the protective
provisions set forth in Section 9 ("Proprietary Rights"). [...***...].
16. GENERAL.
16.1 Dispute Resolution. In the event of disputes between the
parties arising from or concerning the subject matter of this Agreement,
other than disputes arising from or the protection of either party's
proprietary information, the parties will first attempt to resolve the
dispute through good faith negotiation: first among and between the program
managers assigned to the Development Project, and if the dispute is not
resolved within three (3) days, negotiation between senior officers (having
the necessary authority to resolve the dispute on behalf of such party) of
each party . In the event that the dispute cannot be resolved through the
good faith negotiation of such senior officers, the parties, within five (5)
days after written notice, will refer the dispute to a mutually acceptable
mediator, skilled in the technology and industry relating to the subject
matter of this Agreement, for hearing in a place to be agreed to by the
parties. If a mutually acceptable mediator cannot be selected by the
parties, the parties agree to use a mediator, skilled in the technology and
industry relating to the subject matter of this Agreement, selected by the
American Arbitration Association.
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<PAGE> 20
16.2 Governing Law. This Agreement shall be governed in all respects
by the laws of the United States of America and the State of California as
such laws are applied to agreements entered into and to be performed
entirely within California between California residents.
16.3 Choice of Forum and Venue. All disputes arising under this
Agreement not resolved in accordance with Section 16.1 ("Dispute
Resolution") above, shall be brought in Superior Court of the State of
California in Santa Clara County or the Federal District Court of San Jose,
California, as permitted by law. The Superior Court of Santa Clara County
and the Federal District Court of San Jose shall each have nonexclusive
jurisdiction over disputes under this Agreement. The parties consent to the
personal jurisdiction of the above courts.
16.4 Notices. All notices or reports permitted or required under
this Agreement shall be in writing and shall be delivered by personal
delivery, telegram, telex, telecopier, facsimile transmission, or by
certified or registered mail, return receipt requested, and shall be deemed
given upon personal delivery, five (5) days after deposit in the mail, or
upon acknowledgment of receipt of electronic transmission. Notices shall be
sent to the signatory of this Agreement at the address set forth at the end
of this Agreement or such other address as either party may specify in
writing.
16.5 Injunctive Relief. It is understood and agreed that,
notwithstanding any other provisions of this Agreement, breach of the
provisions regarding the Scope of the Licenses granted in Section 2
("License Grants") or protection of Proprietary Information set forth in
Section 9 ("Proprietary Rights") of this Agreement by either party will
cause the other irreparable damage for which recovery of money damages would
be inadequate, and that the damaged party shall therefore be entitled to
seek injunctive relief to protect its rights under this Agreement in
addition to any and all remedies available at law.
16.6 No Agency. Nothing contained herein shall be construed as
creating any agency, partnership, or other form of joint enterprise between
the parties.
16.7 Force Majeure. Neither party shall be liable hereunder by
reason of any failure or delay in the performance of its obligations
hereunder (except for the payment of money) on account of strikes,
shortages, riots, insurrection, fires, flood, storm, explosions, acts of
God, war, governmental action, labor conditions, earthquakes, material
shortages or any other cause which is beyond the reasonable control of such
party.
16.8 Waiver. The failure of either party to require performance by
the other party of any provision hereof shall not affect the full right to
require such performance at any time thereafter; nor shall the waiver by
either party of a breach of any provision hereof be taken or held to be a
waiver of the provision itself.
16.9 Severability. In the event that any provision of this Agreement
shall be unenforceable or invalid under any applicable law or be so held by
applicable court decision, such unenforceability or invalidity shall not
render this Agreement unenforceable or invalid as a whole, and, in such
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<PAGE> 21
event, such provision shall be changed and interpreted so as to best
accomplish the objectives of such unenforceable or invalid provision within
the limits of applicable law or applicable court decisions.
16.10 Headings. The section headings appearing in this Agreement are
inserted only as a matter of convenience and in no way define, limit,
construe, or describe the scope or extent of such section or in any way
affect this Agreement.
16.11 Assignment. Either party shall have the right to assign its
rights and obligations pursuant to this Agreement to a successor entity in
the event of a merger or reorganization in which such party is not the
surviving entity or to a purchase of all or substantially all of its assets.
Except as set forth above, neither this Agreement nor any rights or
obligations of either party hereunder may be assigned in whole or in part
without the prior written approval of the non-assigning party.
16.12 Export. HP acknowledges that the laws and regulations of the
United States restrict the export and re-export of commodities and technical
data of United States origin, including the JetFax Deliverables. HP agrees
that it will not export or re-export the JetFax Deliverables in any form,
without the appropriate United States and foreign governmental licenses. HP
agrees that its obligations pursuant to this Section shall survive and
continue after any termination or expiration of rights under this Agreement.
16.13 Full Power. Each party represents and warrants that it has
full power to enter into and perform this Agreement, and the person signing
this Agreement on each party's behalf has been duly authorized and empowered
to enter into this Agreement. Both parties further acknowledge that each has
read this Agreement, understands it and agrees to be bound by it.
16.14 Confidential Agreement. Neither party will disclose any terms
or the existence of this Agreement except pursuant to a mutually agreeable
press release, with written consent of the other party, or as otherwise
required by law. However, in no event will a party be responsible for
confirming the veracity of statements made by the other party. If required
to disclose any aspect of this Agreement by legal requirement such as
subpoena or other legal mandate, each party agrees to use best efforts in
each such circumstance to provide to the other, prior to such party's
initial disclosure pursuant to such legal requirement, a copy of the
proposed disclosure (such proposed disclosure may be a redacted version of
this Agreement) showing such party's attempt to limit, redact, excise and
otherwise restrict the disclosure of sensitive portions of this Agreement.
The nondisclosing party shall then have seven (7) calendar days to provide
its suggested limitations, redactions and restrictions to the disclosing
party's draft disclosure. The disclosing party shall then in good faith
attempt to include those suggested limitations, redactions and restrictions,
wherever possible in its submission of the disclosure as required by law,
and thereafter in subsequent negotiations with the agency or entity to which
disclosure is made. If such disclosing party does not receive comments from
the non-disclosing party within the seven (7) day period, such submission
shall be deemed approved by the non-disclosing party.* CONFIDENTIAL
TREATMENT REQUESTED
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<PAGE> 22
16.15 Counterparts. This Agreement may be executed simultaneously in
two or more counterparts, each of which will be considered an original, but
all of which together will constitute one and the same instrument.
16.16 Entire Agreement. This Agreement together with the exhibits
completely and exclusively states the agreement of the parties regarding its
subject matter. Other than the LaserJet 3100 Contract, this Agreement
supersedes, and its terms govern, all prior proposals, agreements, or other
communications between the parties, oral or written, regarding such subject
matter. This Agreement shall not be changed or modified except through
written mutual agreement signed by officers or program managers of the
parties, and any provision or a purchase order purporting to supplement or
vary the provisions hereof shall be void. Notwithstanding the above, the
parties agree that the specifications described in EXHIBIT A ("HP Product
Technical System Specification") largely reflect the requirements as
understood by the parties on the Effective Date. However, as the
development project progresses, the parties shall, from time to time and by
written mutual agreement signed by officers or program managers, update such
specifications to reflect any changes and shall consider the impact on cost,
schedule and performance.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the Effective Date by their duly authorized representatives.
JETFAX: HP:
JETFAX, INC. HEWLETT-PACKARD COMPANY
By: /s/ EDWARD (RUDY) PRINCE III By:
----------------------------- --------------------------
Name: Edward (Rudy) Prince III Name: [...***...]
-------------------------- -------------------------
Title: President / CEO Title: [...***...]
-------------------------- -------------------------
Address for Notice: Address for Notice:
1378 Willow Road 3000 Hanover Street
Menlo Park, CA 94025 Palo Alto, CA 94304
24
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<PAGE> 23
<TABLE>
<CAPTION>
TABLE OF CONTENTS
EXHIBITS
<S> <C>
Exhibit A.............................HP Product Technical System
Specifications
Exhibit B.............................Development Schedule
Exhibit C.............................Training and Support
Exhibit D.............................HP Exclusive Features
Exhibit E.............................Trademarks
Exhibit F.............................HP Software License Terms
</TABLE>
25
* CONFIDENTIAL TREATMENT REQUESTED
<PAGE> 24
Exhibit A
HP Product Technical System Specifications
** 233 pages omitted pursuant to an application for confidential treatment.
[...***...]
26
* CONFIDENTIAL TREATMENT REQUESTED
<PAGE> 25
Exhibit B
Development Schedule, Schedule of Non-Recurring Engineering Fees and
Schedule of Pre-Paid Royalties
<TABLE>
<CAPTION>
TARGET DATE
- ----------------
Development Schedule Milestones of Completion
- ------------------------------- -------------
<S> <C>
[...***...] [...***...]
- -------------------------------------------------------------------------
Non-Recurring Engineering Fees
Milestone Targeted Date NRE
ID Milestone of Completion Payment
- ---------- --------- ------------- -------
<S> <C> <C> <C>
* CONFIDENTIAL TREATMENT REQUESTED
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<PAGE> 26
1. [...***...] [...***...] $[...***...]
2. [...***...] [...***...] $[...***...]
3. [...***...] [...***...] $[...***...]
4. [...***...] [...***...] $[...***...]
5. [...***...] [...***...] $[...***...]
Total NRE Payments $[...***...]
[...***...]
</TABLE>
<TABLE>
<CAPTION>
Milestone Targeted Date Pre-Paid
ID Milestone of Completion Payment
- --------- --------- ------------- --------
<S> <C> <C> <C>
6. [...***...] [...***...] $[...***...]
7. [...***...] [...***...] $[...***...]
[...***...] $[...***...]
</TABLE>
* - All feature specifications are not 100% complete to date, but JetFax and
HP will work to mutually agreeable decision on feature/schedule trade-offs
in meetings to complete in the next few weeks (target completion 1/15/99)
for final specification on each feature.
* CONFIDENTIAL TREATMENT REQUESTED
1
<PAGE> 27
Exhibit C
Training and Support
--------------------
* CONFIDENTIAL TREATMENT REQUESTED
2
<PAGE> 28
EXHIBIT C
Training and Support
I. Software/Firmware
Training:
1. In-depth technical training covering software and firmware to be provided
by JetFax to HP Support Personnel. Classes to take place at a mutually
agreed upon location. JetFax will provide technical personnel to assist HP
in generating a Technical Support Guide, Service Manual, and related
training materials. HP shall have the right to use all training
documentation when training other HP support organizations.
[...***...]
Technical Support:
1. Technical assistance in support of the product launch and ongoing sales
shall include:
JetFax support line(s) for HP Technical Marketing. Contact may be via
telephone, fax, electronic mail or regular mail during regular business
hours.
2. Problem Severity will be established by consensus between JetFax and HP
Program Manager with input from the HP technical support groups using the
following guidelines:
Severity 1: Product is unusable by the end user due to
software/firmware failure.
Severity 2: A major product feature is inoperative, output is grossly
deviant from expected output or there is a sensitive customer situation.
Severity 3: There is a software/firmware problem that is not inhibiting
the usage of the product, a request for information on product usage or
other non-product area.
Severity 4: Requests for enhancements.
3. JetFax will make every reasonable attempt to maintain the following
response and resolution criteria. This will include, but is not limited to,
minimally ensuring that a JetFax Service Representative will be available by
phone at all business hours 8:00 am - 5:00 pm Pacific Time, Monday-Friday,
excepting standard US holidays. In the event a JetFax Service
Representative is not available by phone, a voicemail system will be active
which will, in every best effort,
* CONFIDENTIAL TREATMENT REQUESTED
3
<PAGE> 29
allow for the following:
<TABLE>
<CAPTION>
Problem Severity Response Time Resolution Time
---------------- ------------- ---------------
<S> <C> <C>
1 [...***...] [...***...]
2 [...***...] [...***...]
3 [...***...] [...***...]
4 [...***...] [...***...]
</TABLE>
Response time is defined as the time necessary to acknowledge the receipt of
- -------------
a problem and request additional information that may be necessary to
analyze the problem. In the case of a problem submitted by telephone it is
assumed that the response is immediate in that the call is answered as soon
as a JetFax technical support representative is available to answer.
Resolution time is defined as the time necessary to provide a software fix
- ---------------
bypass explanation of functionality or other such item as to: 1) resolve the
customer's problem where it is proven to be the fault of JetFax software or
hardware; 2) provide reasonable explanation or evidence that the problem is
not the result of JetFax hardware or software or; 3) request any additional
information as is necessary for the JetFax technical support group to
resolve the customer's problem, or escalate the problem to the JetFax QA or
engineering groups for investigation and resolution. In the event of #3
above the JetFax technical support group will be responsible for monitoring
the timeliness of the QA/Engineering response, as well as keeping the HP
technical support group updated as to the status of the problem.
HP Responsibilities
- --------------------
HP Technical Support will be responsible for the following customer issues:
1) Serve as the sole customer contact point at all times during the sales
and product life cycles.
2) Resolve all JetFax related issues that HP has the technical capacity to
resolve.
3) Reproduce and verify JetFax product problems that are reported by
customers in a controlled environment whenever possible.
4) Report verified product failures to JetFax technical support providing
JetFax technical support with a detailed description of the steps
necessary to reproduce a problem.
5) Provide JetFax technical support with any materials necessary to
reproduce the problem such as input or output materials, specialized
software or other computer files deemed necessary for problem
resolution.
6) Provide JetFax technical support, when possible, with the following for
each problem when initially contacting JetFax about that problem:
* CONFIDENTIAL TREATMENT REQUESTED
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<PAGE> 30
- A chronology of the incident, data on problem volume, frequency, and on-
site meetings with JetFax if they would provide helpful
- Take action with customers at JetFax's request to aid in problem
investigation and resolution
- Attempt to download / fax information on device's status.
- Information regarding software applications in use at the time of the
failure with associated software version numbers
- The name, description, and release number of other software that was
resident in the computer's memory at the time that the suspected product
failure occurred.
- Hardware configuration of the machine on which the error is occurring
including all steps to recreate name of brand of PC, video cards, video
drivers, relevant localization settings (US vs. International), and
other connected and installed peripherals and subsequent drivers
- A description of recent changes that have occurred to the hardware and
software of the machine where the failure is occurring.
- Complete text and identifying number of all error messages
- Any customer files necessary to reproduce the problem
JetFax Responsibilities
- -----------------------
JetFax Technical Support will be responsible when addressing the following
customer issues for HP:
1) Provide acknowledgment of the receipt of a problem report from HP in
the time frame outlined above.
2) Provide the HP representative that initiated the communication with a
JetFax problem number for tracking purposes at the time of the problem
report.
3) Perform analysis of reported product failures and unresolved problems
and undertake any efforts to develop solutions or bypasses within the
time frame outlined above.
4) Provide to HP technical support any software fixes and documentation
that are developed by JetFax as a resolution to this problem.
5) Provide information, where such information is not clearly described in
the associated documentation, and consulting assistance regarding the
operation of the products in order to enable HP technical support
personnel to perform their related duties.
6) Maintain current updated master sets of all software for the product
including all programs and documentation.
7) Inform HP of any changes or updates to software or documentation.
8) Provide reports on a quarterly basis to HP on product problems
communicated to JetFax from HP as outlined below.
Reports and Technical Notes
- ---------------------------
JetFax technical support will make every reasonable effort to provide a
series of monthly reports to HP technical support consisting of:
* CONFIDENTIAL TREATMENT REQUESTED
5
<PAGE> 31
- - JetFax cases logged for HP requests for the month
- - JetFax software bugs reported by JetFax technical support for HP
- - Monthly volumes of call received by JetFax technical support for HP
requests
- - Technical notes related to HP product issues
- - Release notes for products to be distributed by HP
- - Any incidents of HP customers who have called JetFax technical support
directly
II. Hardware Training and Support
1. [...***...]
2. For HP's convenience, the design of the [...***...] will be done on HP's
design systems and source documentation will reside on those systems
throughout product life. Much of HP's manufacturing tooling and programming
is based on automated outputs from HP's design systems. JetFax agrees to
cooperate with HP in developing methods to make the transition of the design
from JetFax's design systems to HP's systems fast and reliable.
3. [...***...].
4. Suppliers for all components will be subject to HP's standard supplier
review and evaluation process. JetFax agrees to cooperate with HP in the
supplier evaluation process.
5. At the end of HP's [...***...] production process, HP will perform
extensive electrical tests (production tests) on each [...***...]
manufactured. HP will create the test architecture and test code capable of
diagnosing failures to the level of design detail available to HP. JetFax
will supply test code sufficient for HP to diagnose failures of any parts of
the [...***...] which are proprietary to JetFax including all of the
proprietary ASICs. JetFax test code will, where possible, conform to
specifications on the test interface provided by HP so that it can be easily
integrated into the production test. In the event that HP requests action
from JetFax to diagnose failures of [...***...], HP will supply JetFax with
any diagnostic information generated by the production tests on those
[...***...].
6. At a separate location from [...***...] manufacture, HP will install the
[...***...] in a printer and may test operation of the printer (integration
test). Software for the integration test will be provided by HP but may
incorporate any portions of the production test software, or other JetFax
test utilities.
7. [...***...].
* CONFIDENTIAL TREATMENT REQUESTED
6
<PAGE> 32
8. [...***...].
9. HP and JetFax agree to establish an escalation process throughout the
production life of the [...***...] to resolve technical problems at three
levels as follows:
Level 1:
-------
HP will designate a product engineer who will be responsible for
initial troubleshooting of all technical problems both in the factory and in
the field. This engineer will have access to all technical information and
documentation on the [...***...] which is not proprietary to JetFax. JetFax
will designate a design engineer, knowledgeable on this product, who will be
available to the HP product engineer for non-emergency consultation about
the formatter design during business hours. JetFax and HP's contacts will
have phones with message capability which will be checked at least daily,
Level 2:
--------
In the event of an actionable problem under 8. above, escalation will be via
the contact established for Level 1.
Level 3:
--------
Events actionable under 7. above will be treated as production hold
emergencies. JetFax will provide a method for HP to contact a knowledgeable
engineer for consultation by phone within one hour at any time. In the event
that the problem cannot be resolved by electronic communication within 24
hours, JetFax will provide an engineer physically present in Boise within an
additional 24 hours to join with the HP product engineer in troubleshooting
the problem to root cause and restoring production.
10. JetFax agrees that all information and software including design
specifications and source code required to perform the testing and
troubleshooting described above is included in the documentation held in
escrow.
11. Technical training on the JetFax design will be provided by JetFax, at
times jointly agreed upon by HP and JetFax.
7
* CONFIDENTIAL TREATMENT REQUESTED
<PAGE> 33
Exhibit D - Exclusive Features
This Exhibit D describes the HP Exclusive Features as defined in Section 1.7
of the Agreement, and that are the subject of the licenses granted in
Section 2.5 of the Agreement. Such licenses shall apply, in accordance with
the terms and conditions of such Section 2.5, to all products characterized
by, and including all of the following:
[...***...]
* CONFIDENTIAL TREATMENT REQUESTED
8
<PAGE> 34
Exhibit E
Trademarks, Brand Naming, Splash Screens / Logos, Icons, UI Guidelines
1. JetFax Trademarks
JetFax tm
JetSuite(r)
[...***...]
[...***...]
2. HP Trademarks
Hewlett-Packard tm
[...***...]
[...***...]
[...***...]
H
3. Brand Name and Version Naming
The product name for JetFax developed PC software for the HP Product
will remain consistent and use those conventions implemented for the HP
[...***...]. As such, the host JetSuite software from JetFax shall include
the key word "for" such that any branding which is apparent in the product
will read [...***...] for Hewlett-Packard [...***...].
The following naming shall be used for the different planned releases of
the JetSuite Pro for Hewlett-Packard.
<TABLE>
<CAPTION>
Win 3.x,
Win '95 Win '98 NT 4.0 NT 5.0
- ---------------------------------------------------------------------
<S> <C> <C> <C> <C>
[...***...] [...***...] [...***...] [...***...] [...***...]
- ---------------------------------------------------------------------
[...***...]
Splash Screen [...***...] [...***...] [...***...] [...***...]
- ---------------------------------------------------------------------
[...***...]
"About" JetSuite
Splash Screen [...***...] [...***...] [...***...] [...***...]
- ---------------------------------------------------------------------
</TABLE>
* CONFIDENTIAL TREATMENT REQUESTED
9
<PAGE> 35
- ---------------------------------------------------------------------
Win 3.x,
Win '95 Win '98 NT 4.0 NT 5.0
- ---------------------------------------------------------------------
HP documentation,
CD ROM jackets,
disk labels [...***...] [...***...] [...***...] [...***...]
- ---------------------------------------------------------------------
These naming conventions for HP versions will be referenced where applicable
within the application (including but not limited to the "About JetSuite"
dialog box). Additionally, HP will use this naming structure, where
appropriate, in product manuals, on diskette and/or CD ROM packaging and
labels, and on promotional pieces
4. Splash Screens / Logos
JetFax and HP agree that the same product splash screen design shall be
displayed for the all instances in which the splash screen is to be
displayed. Those instances are limited to: 1) launch of the main [...***...]
for Hewlett-Packard desktop application, 2) launch of the [...***...] mini-
viewer, 3) installation of the [...***...] software for the HP Product, 4)
on-line Getting Started Guide (if developed for the HP Product), 5) launch
into the on-line Help system. All other instances in which the splash screen
is to be displayed, must be clearly specified and mutually agreed to by both
JetFax and HP prior to any such implementation.
All other guidelines for the size, placement, and look and feel of
[...***...] for Hewlett-Packard splash screens shall be taken from those
methods determined and implemented for the HP LaserJet 3100 product.
5. Icons
All guidelines for the size, placement, and look and feel of the [...***...]
for Hewlett-Packard icons shall be taken from those methods determined and
implemented for the HP LaserJet 3100 product.
6. User Interface Guidelines
All guidelines for the size, placement, and look and feel of other User
Interface items related to the [...***...] for Hewlett-Packard shall be
taken from those methods determined and implemented for the HP LaserJet 3100
product.
10
* CONFIDENTIAL TREATMENT REQUESTED
<PAGE> 36
Exhibit F
HP Software License Terms
* CONFIDENTIAL TREATMENT REQUESTED
11
<PAGE> 37
ATTENTION: USE OF THE SOFTWARE IS SUBJECT TO THE HP SOFTWARE LICENSE TERMS
SET FORTH BELOW. USING THE SOFTWARE INDICATES YOUR ACCEPTANCE OF THESE
LICENSE TERMS. IF YOU DO NOT ACCEPT THESE LICENSE TERMS, YOU MAY RETURN THE
SOFTWARE FOR A FULL REFUND. IF THE SOFTWARE IS BUNDLED WITH ANOTHER PRODUCT,
YOU MAY RETURN THE ENTIRE UNUSED PRODUCT FOR A FULL REFUND.
HP SOFTWARE LICENSE TERMS
The following License Terms govern your use of the accompanying Software
unless you have a separate signed agreement with HP.
License Grant. HP grants you a license to Use one copy of the Software.
"Use" means storing, loading, installing, executing or displaying the
Software. You may not modify the Software or disable any licensing or
control features of the Software. If the Software is licensed for
"concurrent use", you may not allow more than the maximum number of
authorized users to Use the Software concurrently.
Ownership. The Software is owned and copyrighted by HP or its third party
suppliers. Your license confers no title to, or ownership in, the Software
and is not a sale of any rights in the Software. HP's third party suppliers
may protect their rights in the event of any violation of these License
Terms.
Copies and Adaptations. You may only make copies or adaptations of the
Software for archival purposes or when copying or adaptation is an essential
step in the authorized Use of the Software. You must reproduce all copyright
notices in the original Software on all copies or adaptations. You may not
copy the Software onto any public network.
No Disassembly or Decryption. You may not disassemble or decompile the
Software unless HP's prior written consent is obtained. In some
jurisdictions, HP's consent may not be required for limited disassembly or
decompilation. Upon request, you will provide HP with reasonably detailed
information regarding any disassembly or decompilation. You may not decrypt
the Software unless decryption is a necessary part of the operation of the
Software.
Transfer. Your license will automatically terminate upon any transfer of the
Software. Upon transfer, you must deliver the Software, including any copies
and related documentation, to the transferee. The transferee must accept
these License Terms as a condition to the transfer.
Termination. HP may terminate your license upon notice for failure to comply
with any of these License Terms. Upon termination, you must immediately
destroy the Software, together with all copies, adaptations and merged
portions in any form.
Export Requirements. You may not export or re-export the Software or any
copy or adaptation
* CONFIDENTIAL TREATMENT REQUESTED
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<PAGE> 38
in violation of any applicable laws or regulations.
U.S. Government Restricted Rights. The Software and any accompanying
documentation have been developed entirely at private expense. They are
delivered and licensed as "commercial computer software" as defined in DFARS
252.227-7013 (Oct 1988), DFARS 252.211-7015 (May 1991) or DFARS 252.227-7014
(Jun 1995), as a "commercial item" as defined in FAR 2.101(a), or as
"Restricted computer software" as defined in FAR 52.227-19 (Jun 1987)(or any
equivalent agency regulation or contract clause), whichever is applicable.
You have only those rights provided for such Software and any accompanying
documentation by the applicable FAR or DFARS clause or the HP standard
software agreement for the product involved.
No Third Party Warranty. NEITHER HP NOR ANY OF ITS REPRESENTATIVES MAKES OR
PASSES ON TO YOU OR OTHER THIRD PARTY, ANY WARRANTY OR REPRESENTATION ON
BEHALF OF HP'S THIRD PARTY SUPPLIERS.
Third Party Beneficiary. You are hereby notified that JetFax, Inc., a
California corporation located at 1376 Willow Road, Menlo Park, California
94025 ("JetFax") is a third party beneficiary to this agreement to the
extent that this agreement contains provisions which relate to your use of
JetFax supplied software. Such provisions are made expressly for the
benefit of JetFax and are enforceable by JetFax in addition to HP.
* CONFIDENTIAL TREATMENT REQUESTED
13
<PAGE> 39
