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EXHIBIT 10(c)
PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT. THE OMITTED PORTIONS, MARKED BY [****], HAVE BEEN
SEPARATELY FILED WITH THE COMMISSION.
IBM BRAND PAPER
TRADEMARK LICENSING AGREEMENT
This is a Trademark License Agreement ("Agreement") effective as of April 30,
1997 (the "Effective Date") by and between International Business Machines
Corporation ("IBM"), a New York corporation with a place of business at ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and TST/Impreso, Inc . ("Licensee"),
a Delaware corporation with a place of business at ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, IBM was previously in the business of marketing paper that carried the
IBM brand name;
WHEREAS, Licensee is in the business of, and has developed considerable
knowledge, experience, capacity and expertise in buying, manufacturing,
packaging, marketing, selling and distributing paper products;
WHEREAS, IBM desires to revitalize its paper business by having various high
quality paper products carrying the IBM brand name broadly available to
customers at competitive prices through various channels in the marketplace;
WHEREAS, IBM is the owner of the "Licensed Marks" (as defined below);
WHEREAS, Licensee is desirous of marketing the Licensed Products (as defined
below) branded with the Licensed Marks and otherwise making use of the Licensed
Marks in accordance with the terms and conditions of this Agreement;
WHEREAS, IBM is willing to license the use of the Licensed Marks to Licensee
under the following written terms and conditions;
WHEREAS, the parties agree that the Licensed Marks have achieved an
extraordinarily high level of recognition in the marketplace for high quality
products and customer service;
WHEREAS, IBM desires to protect its reputation in the marketplace and the
recognition that the Licensed Marks enjoy;
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WHEREAS, Licensee is willing to comply with the requirements set forth in this
Agreement in order to help IBM protect the value of the Licensed Marks;
WHEREAS, in exchange for this license of the Licensed Marks, Licensee is
willing to pay IBM a license fee based on Licensee's total net sales of
Licensed Products (the "License Fee"); and
WHEREAS, the activities of IBM, Licensee and certain other parties involved in
the buying, manufacturing, packaging, marketing, selling and distribution of
IBM branded paper products is hereby called the "IBM Brand Paper Program."
NOW, THEREFORE, the parties hereto have agreed as follows:
SECTION 1. DEFINITIONS:
1.1 "Customer" is any person or other entity to whom you sell Licensed
Products.
1.2 "Licensed Marks" shall mean the "IBM" and "IBM striped logo" marks
identified in Exhibit I and Licensed Trade Dress.
1.3 "Licensed Product(s)" shall mean only those product(s) and enhancements
thereof identified in Exhibit 2 of this Agreement.
1.4 "Licensed Trade Dress" shall mean the total image or impression of the
Licensed Products.
1.5 "Packaging Specifications" shall mean those packaging requirements
specified in Exhibit 8 for the packaging of Licensed Products.
1.6 "Product Specifications" shall mean those property and grade requirements
specified on Exhibit 9 for each Licensed Product.
1.7 "Promotional Program Guidelines" shall mean those specifications and
parameters under which IBM and Licensee will conduct promotional activities in
furtherance of the IBM Brand Paper Program as specified on Exhibit 4.
1.8 "Quality Standards" shall mean collectively the Packaging Specifications,
the Product Specifications, the Promotional Program Guidelines and the
Trademark Usage Guidelines.
1.9 "Reseller" shall mean an authorized remarketer, in accordance with Section
2.2, that acquires Licensed Products for remarketing.
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
1.10 "Subsidiary" or "Subsidiaries" shall mean a corporation, company or other
entity
a) more than fifty percent (50%) of whose outstanding shares or
securities (representing the right to vote for the election of
directors or other managing authority) are now or hereafter owned or
controlled, directly or indirectly, by a party hereto, but such
corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control exists; or
b) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture, or unincorporated association,
but more than fifty percent (50%) of whose ownership interest
representing the right to make the decisions for such corporation,
company or other entity is now or hereafter owned or controlled,
directly or indirectly, by a party hereto, but such corporation,
company or other entity shall be deemed to be a Subsidiary only so
long as such ownership or control exists.
1.11 "Trademark Usage Guidelines" shall mean such guidelines as may be
established by and modified from time to time, upon reasonable notice from IBM,
providing for the use and display of the Licensed Marks by Licensee as set
forth in Exhibit 5.
1.12 "Volume Objectives" shall mean those sales objectives, mutually agreed to
between the parties in accordance with Section 14.3, that state Licensee's
objective to sell a minimum volume of Licensed Products over a [****] period.
Such Volume Objectives shall be stated in [****] increments for Licensed
Products to be sold by Licensee during any [****].
SECTION 2. LICENSE GRANT:
2.1 IBM grants Licensee a non-exclusive, non-transferable, right and license to
use the Licensed Marks on or in connection with Licensed Products only within
the geographic area ("Licensed Territory") set forth in Exhibit 3 and in
accordance with the terms of this Agreement, subject to the following:
a) IBM reserves the right, in its sole discretion, to modify the list of
Licensed Products and/or the Licensed Territory at any time;
b) IBM reserves the right, in its sole discretion, to market products
which are the same or similar to the Licensed Products covered by
this Agreement, either directly or through other parties;
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c) Upon prior written notice, Licensee will immediately cease
manufacturing, selling or distributing to any Reseller Licensed
Products if, in IBM's sole judgement, Licensee has been found to have
disparaged or misrepresented the Licensed Products or the IBM brand
or improperly used any of IBM's logos, service marks, trademarks or
trade names, including the Licensed Marks and/or the Licensed Trade
Dress;
d) Upon prior written notice, Licensee will immediately cease
distributing Licensed Products to any Reseller who, in IBM's sole
judgement, has been found to have disparaged or misrepresented the
Licensed Products or the IBM brand or improperly used any of IBM'-s
logos, service marks, trademarks or trade names, including the
Licensed Marks and/or the Licensed Trade Dress; and
e) Licensee is not authorized to market, sell or distribute Licensed
Products outside the Licensed Territory and agrees not to do so,
directly or indirectly; and
f) Licensee may not pledge or otherwise encumber the Licensed Marks.
2.2 Licensee may not sublicense any of the Licensed Marks, except to Resellers
who, with IBM's prior written consent, are designated by Licensee to use the
Licensed Marks on or in connection with the promotion, advertisement or sale of
the Licensed Products.
2.3 Neither Licensee, nor any Subsidiary of Licensee, shall use the Licensed
Marks in any country within the Licensed Territory but outside of the United
States, Mexico and Canada unless and until written notice of at least
forty-five (45) days has or had been given to IBM to enable 1BM, where
required, to record Licensee, or the relevant Subsidiary of Licensee as the
case may be, as a registered user of any such ▇▇▇▇ in such country and/or
record this Agreement or other license agreements which meet appropriate local
standards with appropriate authorities, except as already in place. IBM shall
determine in its sole discretion which recordals, if any, it will undertake and
shall notify Licensee of those countries and types of persons or entities
required to be registered as users therein. Upon request of IBM, Licensee shall
notify IBM on a quarterly basis of the identity of users of the Licensed Marks
in such countries and Licensee classification of such persons or entities into
such types. Any failure by Licensee to comply in all material respects with the
requirements of this Section 2.3, if not cured within thirty (30) days, shall
be considered a material breach of this Agreement.
SECTION 3. USE OF THE LICENSED MARKS:
3.1 Licensee agrees to display or use the Licensed Marks only in the form,
manner or style permitted by the Trademark Usage Guidelines and to use the
Licensed Marks only on or in connection with Licensed Products; provided,
however, nothing herein authorizes Licensee and such Resellers and Subsidiaries
to manufacture, have manufactured or distribute novelty items containing the
Licensed Marks. Licensee shall be responsible for policing use of the Licensed
Marks by its designees; provided, however, IBM reserves the right to monitor
such usage from
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time to time and to enforce its rights to remedies hereunder, including without
limitation those specified in Section 2. l(c).
3.2 Licensee, in the exercise of its license hereunder, shall be exclusively
responsible at its own expense for compliance with all local laws relating to
use of the Licensed Marks. .
SECTION 4. OWNERSHIP OF THE LICENSED MARKS:
4.1 As between IBM and Licensee, all ownership rights in the Licensed Marks
belong exclusively to IBM. Licensee has no ownership rights in the Licensed
Marks as of the Effective Date and shall acquire no ownership rights in the
Licensed Marks, as a result of its performance under or breach of this
Agreement. All use of the Licensed Marks or variations thereof, including any
goodwill, shall inure solely to the benefit of IBM. Upon termination of this
Agreement, all rights of Licensee and its Subsidiaries and Resellers to use the
Licensed Marks shall terminate immediately except as otherwise provided in
Section 9.4 herein.
4.2 Licensee agrees, except as prohibited by local law:
a) not to take any action which will interfere with any of IBM's rights
in and to the Licensed Marks;
b) not to challenge IBM's right, title or interest in and to the
Licensed Marks or the benefits therefrom;
c) not to make any claim or take any action adverse to IBM's ownership
of the Licensed Marks;
d) not to register or apply for registrations, anywhere, for the
Licensed Marks or any other ▇▇▇▇ which is similar to a Licensed ▇▇▇▇
or which incorporates a Licensed ▇▇▇▇;
e) not to use any ▇▇▇▇, anywhere, which is confusingly similar to the
Licensed Marks; and
f) not to apply for or claim any trademark protection for anything which
incorporates the Licensed Marks, variations thereon or any ▇▇▇▇ which
is confusingly similar thereto.
SECTION 5. QUALITY CONTROL:
5.1 Licensee agrees it is of fundamental importance that the Licensed
Product(s) bearing the Licensed Marks be of the highest quality and integrity
and that the Licensed Marks be properly used and displayed so as to preserve
the extraordinarily high level of recognition in the marketplace for high
quality products that the Licensed Marks currently enjoy. Licensee agrees
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
to maintain this same level of quality and integrity for the Licensed Products
and all other' products added to Exhibit 2 in the future as set forth in the
Quality Standards.
5.2 Licensee agrees to conduct its business in such a way as to ensure against
adversely affecting IBM's reputation or goodwill or that of the Licensed
Products or the IBM Brand Paper Program.
5.3 Licensee represents and warrants that Licensed Product(s) will meet the
Quality Standards and the applicable performance criteria established by itself
and/or IBM whenever one or more of the Licensed Marks are used on or in
connection with a Licensed Product.
5.4 Licensee agrees to make every effort to achieve and maintain high customer
satisfaction concerning the Licensed Products by:
[****]
5.5 Failure to meet the Quality Standards shall be deemed to be a material
breach of this Agreement which must be corrected by Licensee to IBM's sole
satisfaction immediately. Until such breach is corrected, Licensee may not sell
or distribute any Licensed Product(s) with the Licensed Marks. Failure to meet
other performance requirements set forth in this Agreement shall also be deemed
to be a material breach which must be corrected to IBM's satisfaction within
[****] of Licensee's being put on written notice.
5.6 The parties agree that IBM may inspect the Licensed Products distributed by
Licensee, the manufacturing facilities of Licensee (upon reasonable notice), or
otherwise purchase or review the Licensed Products without notice to insure
that Quality Standards are maintained and that the Licensed Marks are properly
used. The parties also agree that IBM shall determine in good faith at its sole
discretion whether the Quality Standards have been maintained and whether the
Licensed Marks have been properly used.
SECTION 6. PROTECTION OF THE LICENSED MARKS:
6.1 Licensee agrees to notify IBM within [****] by facsimile and by express
mail (or other expedited delivery service) if Licensee becomes aware of:
a) any uses of, or any application or registration for, a trademark,
service ▇▇▇▇, trade name or trade dress that conflicts with or is
confusingly similar to the Licensed Marks;
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b) any acts of infringement or unfair competition involving the Licensed
Marks; or
c) any allegations or claims whether or not made in a lawsuit, that the
use of the Licensed Marks by IBM or Licensee infringes the trademark,
service ▇▇▇▇, trade dress or other rights of any other entity.
6.2 IBM may, but shall not be required to, take whatever action it, in its sole
discretion, deems necessary or desirable to protect the validity and strength
of the Licensed Marks at IBM's sole expense, including without limitation the
institution or settlement of any claims or litigation. Licensee agrees to
comply with all reasonable requests from IBM for assistance in connection with
any action with respect to the Licensed Marks that IBM may choose to take. In
addition, Licensee shall have the right to participate in any action or
proceeding taken by IBM to enforce the validity and strength of the Licensed
Marks, and where Licensee elects to participate, Licensee shall bear its own
costs and expenses.
6.3 Licensee shall not institute or settle any claims or litigation affecting
any rights in and to the Licensed Marks without IBM's prior written approval.
SECTION 7. INDEMNITY:
7.1 IBM shall not have any obligation to settle or defend any claims made by
third parties against Licensee or to indemnify and hold Licensee, its officers,
agents and employees, harmless from claims made against Licensee for
infringement or unfair competition arising from Licensee's use of the Licensed
Marks in accordance with the terms of this Agreement. Further, following notice
of an infringement claim or at any time IBM deems appropriate, IBM may provide
Licensee with a substitute Licensed ▇▇▇▇ for use under the terms and conditions
of this Agreement.
7.2 In no event shall IBM be liable to Licensee or any other party for any
consequential damages or lost or prospective profits or lost business
opportunities resulting from use of the Licensed Marks under this Agreement.
7.3 Licensee shall indemnify and hold IBM and/or its related entities,
officers, directors, agents and employees harmless from and against any and all
claims, damages, liabilities (including settlements entered into in good
faith), suits, actions, judgements, penalties and taxes, civil and criminal,
and all costs and expenses (including without limitation reasonable attorneys'
fees) arising out of:
a) any act, omission, neglect or default of Licensee or its designees
with respect to use or misuse of the Licensed Marks;
b) any defect (whether obvious or hidden) in any product manufactured or
sold by Licensee under the Licensed Marks;
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
c) personal injury or any infringement of any rights or any person by
the manufacture, sale, distribution, possession or use of any
Licensed Product; or
d) Licensee's failure to comply with applicable laws with respect to the
manufacture, sale, distribution, possession or use of any Licensed
Product.
7.4 [****]
SECTION 8. WARRANTY:
8.1 IBM represents and warrants that it is the exclusive owner of the Licensed
Marks in the Licensed Territory. IBM makes no other warranties of any kind,
either expressed or implied, with respect to the Licensed Marks.
8.2 Licensee warrants that the Licensed Products will conform to the Quality
Standards and will be free from defects in materials, workmanship, packaging
and labeling.
8.3 Licensee warrants that it will respond to all customer complaints in
accordance with its Field Technical Service Policy.
SECTION 9. DURATION AND TERMINATION:
9.1 The term of this License shall start on the Effective Date hereof and shall
continue in full force and effect until four (4) years after Effective Date
with two (2) automatic one (1) year renewal options from the stated expiration
date, unless either party provides the other with written notice of termination
[****] or more before the end of any term. In the event of termination, the
license term may be extended for an additional period by the mutual, written
consent of the parties.
9.2 In the event Licensee fails to meet its Volume Objectives for the [****]
cure period set forth in Section 14.3, IBM may terminate this Agreement for
cause on not less than [***] written notice to Licensee.
9.3 If either party materially breaches this Agreement in any manner, the other
party shall have the right to terminate this Agreement in its entirety. If IBM
or Licensee elects to terminate this Agreement because of a material breach of
this Agreement by the other party, IBM or Licensee shall provide written notice
to the breaching party of the material breach and its decision to terminate. If
the recipient of such notice has not cured such material breach within [****]
of the date of such notice, this Agreement shall be deemed terminated.
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9.4 In the event that the license granted under this Agreement expires without
renewal or is otherwise terminated, Licensee shall immediately stop
manufacturing Licensed Products, and Licensee and its Subsidiaries and
Resellers shall have[****] after the date on which termination is effective to
dispose of all items in its inventory utilizing the Licensed Marks. Those
Licensed Products meeting the Quality Standards may be disposed of to third
parties. Licensed Products not meeting the Quality Standards must have the
Licensed Marks obliterated or removed. Upon termination of this period in the
absence of renewal or upon termination or breach, Licensee shall return to IBM
or otherwise provide IBM with proof of the destruction, of all existing
packages, cartons, containers, point of sale displays, advertising, labels,
stencils, cut-outs, forms and the like which bear the Licensed Marks or are or
can be used in the application or reproduction of the Licensed Marks.
9.5 In addition to the termination provisions contained in Sections 9.3 and
9.4, IBM may terminate this Agreement if:
a) Licensee becomes insolvent,
b) an involuntary petition or proceeding for relief under bankruptcy,
insolvency, reorganization, dissolution, winding-up, receivership,
liquidation or similar law is filed or commenced against Licensee, or
c) a trustee, custodian, receiver or similar officer is appointed to
take charge of all or part of Licensee's business.
SECTION 10. NOTICES:
10.1 Any notice which may be or is required to be given under this Agreement
shall be in writing, and shall be deemed to have been received:
a) when delivered personally,
b) when sent by confirmed facsimile,
c) five (5) days after having been sent by registered or certified mail,
return receipt requested, postage prepaid, or
d) one (1) day after deposit with a commercial overnight carrier with
written verification of receipt.
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
10.2 All notices and other communications under this Agreement shall be in
writing and shall be sent to, depending on the subject of such notice, the
person at their respective address set forth below. Notification of a change of
address must be given in writing.
Notices regarding program administration and daily operations:
IBM: Licensee:
[****] ▇▇▇▇▇▇▇ ▇▇▇▇▇
TST/Impreso, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Notices regarding contract administration and updates and
modifications to the contract exhibits:
IBM: Licensee:
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
[****] TST/Impreso, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Notices regarding contract modifications (excluding modifications to the
exhibits) and interpretation:
IBM: Licensee:
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
[****] TST/Impreso, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
with a copy to: with a copy to:
▇▇▇▇▇ ▇▇▇▇▇▇
TST/Impreso, Inc.
[****] ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
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SECTION 11. NON-ASSIGNMENT AND NON-DELEGATION:
11.1 This Agreement or any rights hereunder may not be assigned or otherwise
transferred by Licensee (except Licensee may sublicense to Resellers use of the
Licensed Marks in accordance with Section 2.2) and shall not inure to the
benefit of any trustee in bankruptcy, receiver or other successor of any part,
whether by operation of law or otherwise, without the prior written consent of
IBM, and any attempted or actual assignment or transfer without such consent
shall be null and void. In addition, Licensee may not delegate any of its
duties hereunder without the written consent of IBM.
SECTION 12. RELATIONSHIP OF THE PARTIES:
12.1 Independent Contractor. Licensee is an independent contractor. Licensee
and IBM agree that neither one is the legal representative, agent, partner or
franchisee of the other. Licensee agrees that IBM is not a party to Licensee's
purchase or sale of Licensed Products and that IBM has no responsibility or
liability to Licensee regarding such purchase or sale.
12.2 Freedom of Action. Either of us may independently develop, acquire and
market competitive items and services. IBM has complete flexibility in the
marketing, licensing and pricing of IBM's other products and services. IBM does
not guarantee the success of the IBM Brand Paper Program, and Licensee has not,
nor will Licensee, rely on such success or any estimates, forecasts or
representations thereof made by IBM. Each of us is free to enter into similar
agreements with others, set its own prices, and conduct its business in
whatever way it chooses, provided there is no interference with performing or
complying with the obligations under this Agreement.
12.3 Confidentiality. All information exchanged is non-confidential. Where
confidential information must be exchanged, it will be done under the IBM
Agreement for Exchange of Confidential Information ("AECI") number TST-AECL
between the parties. No communication or report exchanged between the parties
will contain any confidential or proprietary information belonging to Licensee
or others unless such information is described in a supplement to such AECI.
Upon IBM's request, or upon the termination or expiration of this Agreement,
materials considered Confidential by IBM will be returned to IBM.
12.4 Gifts. Neither of us will offer gifts or gratuities to personnel of the
other or to members of their families.
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
SECTION 13. SALES AND MARKETING ACTIVITIES:
13.1 Licensee agrees to use its best efforts to:
[ ****]
13.2 [****]
SECTION 14. BUSINESS REPORTS, RECORDS AND AUDITS:
14.1 Licensee will provide IBM, [****], written reports covering [****]:
a) Total Licensed Product sales;
b) [****]; and
c) Licensee's performance against the objectives specified in Section
5.4(b).
14.2 [****]
14.3 Volume Objectives. [****].
14.4 License Fee Reports. Concurrent with each payment of License Fees as
specified in Section 15.2 below, Licensee will provide to IBM a License Fee
report describing how the payment amount was calculated and including the
following information:
a) For each Licensed Product covered herein, the quantity sold or
otherwise transferred during the accounting period for each country
in the Licensed Territory, and the sum of the selling prices for such
quantity;
b) The amount of License Fees due for each Licensed Product; and
c) The aggregate amount of all Licensed Fees due.
14.5 Records Retention. Licensee shall retain for a period of [****] records in
accordance with generally accepted accounting principles and in sufficient
detail to permit the determination of which products are subject to License
Fees under this Agreement, the License Fee due IBM, and the accuracy of the
information on Licensee's License Fee reports.
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
14.6 Audits. Upon IBM's written request for an audit, Licensee shall permit
auditors designated by IBM, together with such legal and technical support as
IBM deems necessary, to examine, during normal business hours, records,
materials, and manufacturing processes of Licensee's for the purpose of
determining License Fees due IBM. Such audit shall be restricted to an audit of
those records, materials, and manufacturing processes related to Licensed
Products, including general financial information to provide a cross-check for
the amount of License Fees reported. Licensee shall provide its full
cooperation for such audit, including without limitation the provision of
sufficient time for such examination and convenient access to relevant
personnel and records.
14.7 Audit Expenses. Each party shall pay the charges that it incurs in the
course of the audit. In the event, however, that the audit establishes
underpayment greater than or equal to[**** ], then Licensee shall reimburse IBM
for the costs IBM incurred in conducting such audit. Such costs, however, shall
not include salaries paid to IBM employees associated with such audit and such
reimbursement shall not exceed the amount of underpayment.
14.8 Over/Under Payment. If an audit reveals an overpayment of License Fees,
Licensee shall deduct an amount equal to such excess, plus interest thereon
from the respective due date(s) to the date of payment at a rate of [***], from
the next License Fee payment due IBM. If an audit reveals an underpayment of
License Fees, Licensee shall pay IBM an amount equal to such underpayment, plus
interest thereon from the respective due date(s) to the date of payment at a
rate of [****], and any reimbursement to IBM for the costs IBM incurred in
conducting such audit, as specified in Section 14.7 above, within [***] of
IBM's written request.
SECTION 15. PRICES, PAYMENTS AND TAXES:
15.1 Prices. Licensee will allow IBM to provide input into Licensee's decisions
on pricing and terms and conditions of Licensee's sale of Licensed Products,
however, Licensee will be responsible for establishing actual prices, terms and
conditions and communicating such prices, terms and conditions to Licensee's
Customers.
15.2 Payments. As consideration for the licenses granted by IBM in this
Agreement, Licensee agrees to pay IBM the License Fee(s) specified in Exhibit 7
[****.] Licensee will pay all License Fee(s) by wire transfer in United States
dollars to:
[****]
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THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
15.3 Special Bids. [****]
15.4 Most Favored Customer. If Licensee offers another party higher License
Fees for equivalent rights during the term, or extended term of this Agreement,
Licensee will immediately offer the same to IBM.
15.5 Taxes. [****]
SECTION 16. COMPLIANCE WITH LAWS:
16.1 Each party shall, at its own expense, comply with all applicable
governmental laws and regulations relating to duties, obligations and
performance under this Agreement.
16.2 Licensee agrees to promptly notify IBM, in writing, of any charge of
noncompliance filed against Licensee, or against a third party, of which
Licensee becomes aware. Licensee also agrees to provide IBM with any
information that IBM may need to comply with laws.
SECTION 17. GENERAL PROVISIONS:
17.1 This Agreement and its attached Exhibits set forth the entire Agreement
between the parties, and fully supersedes any and all prior agreements or
understandings between the parties pertaining to the licensing of certain
trademarks and trade dress by IBM to Licensee.
17.2 Neither party will be in default of any of its respective obligations
under this Agreement where the default results from acts beyond the reasonable
control of the party affected including, without limitation, governmental acts
(official or unofficial), strikes (legal or illegal), acts of God, war
(declared or undeclared), insurrection, embargoes, riot or civil commotion, or
flooding.
17.3 The failure of either party to insist upon strict adherence to any
provision of this Agreement, in whole or in part, on one or more occasions,
shall not constitute a waiver of its right to insist upon the strict
performance of that or any other provision or part thereof in the future.
17.4 This Agreement will be governed by the laws of the State of New York
without reference to choice of law principles.
-14-
15
17.5 Any action or proceeding brought to enforce or resolve disputes relating
to this Agreement shall be brought before a court of competent jurisdiction in
the State of New York, including a Federal District Court sitting within such
State. Neither party shall challenge such personal or subject matter
jurisdiction.
17.6 The parties expressly waive any right they may have to a jury trial.
17.7 Neither party may bring any action, regardless of form, arising out of
this Agreement, more than two (2) years after the later of the date the cause
of action arose or the date of discovery of the cause of action, whichever is
later.
17.8 If any provision of this Agreement or the application thereof is held by
any court of competent jurisdiction to be invalid, illegal or unenforceable,
such invalidity shall not affect the other provisions of this Agreement, the
enforceability of this Agreement as a whole or the enforceability of such
provision in other jurisdictions to the extent permitted by law.
17.9 IBM reserves the right to approve all releases of information concerning
this Agreement and the subject matter thereof, as well as to time their release
and to specify their form and content.
17.10 When electronic communication is used, such as facsimile, e-mail or EDI,
it shall be the equivalent of written and signed documents.
17.11 All provisions which by their nature extend beyond the termination or
expiration of this Agreement shall remain in effect beyond any termination or
expiration.
17.12 The headings and titles of the provisions of this Agreement are for
convenience only and shall not affect the construction or interpretation of any
provision herein.
17.13 This Agreement can only be modified by a written amendment signed by the
authorized representatives of the parties.
17.14 The persons executing this Agreement represent that they each have the
requisite corporate authority to do so which is not subject to further
ratification or approval whatsoever.
-15-
16
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed
by their authorized representatives as of the date first set forth above.
INTERNATIONAL BUSINESS INTERNATIONAL BUSINESS
MACHINES CORPORATION MACHINES CORPORATION
By [****] By [****]
TST/IMPRESO, INC.
By /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
---------------------------
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Chairman of the Board
President
-16-
17
EXHIBIT 1
Licensed Marks
IBM
[IBM LOGO]
18
EXHIBIT 2
Licensed Products
-----------------
Specialty Retail Packaged Cut Sheet Items:
Ink Jet Paper - Matte Coated
Ink Jet Film - Opaque
Ink Jet Gloss Coated
Ink Jet Transparencies
Ink Jet Digital Photo Paper
Laser Transparencies
Boxed:
------
Fanfold Computer Paper
Specialty Retail Packaged:
--------------------------
Fax Paper
19
EXHIBIT 3
Licensed Territory
Canada
Mexico
United States
20
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
EXHIBIT 4
Promotional Program Guidelines
[****]
21
EXHIBIT 5
Trademark Usage Guidelines
All materials prepared for advertising, promotion, direct mail or other
purposes, referring to IBM or any other IBM trademark are to conform with the
following guidelines and the attached publication "The Spirit and Letter of IBM
Brand Identity".
The IBM striped logo is a registered trademark of the International Business
Machines Corporation. A footnote/attribution, such as the following, must
appear on all materials to identify the trademark:
The IBM Logo is a registered trademark of International Business Machines
Corporation and is used under license.
The letters "IBM" are also a registered trademark and are often used to
identify the corporation and its offerings. IBM(R) or IBM* constitute approved
use of the IBM trademark.
If other IBM trademarks are referenced in text, an asterisk (*) can be placed
adjacent to them, with the following approved language:
The marked (*) terms are trademarks or registered trademarks of IBM Corporation
in the United States and other countries.
First use of each IBM trademark mentioned in communications must be identified
in the footnote/attribution.
First reference in text to all IBM product and service names should be preceded
by IBM and followed by the proper trademark symbol. You may use (R) and (TM) as
appropriate or an * with a footnote as above.
IBM requires you to footnote a trademark reference on all collateral materials.
This may be included with other legal text within the document, or on the back
cover.
IBM requires you to footnote a trademark reference on all Internet screens that
have the IBM logo or IBM letters on them.
Do not use any IBM trademark, service or product name in a domain name, URL,
e-mail address or in a telephone number that will be promoted using alphabetic
rather than numeric characters.
Do not use the IBM logo in a more dominant size or position than your company's
identity in your communications.
Your company's logo should be the primary identity in your communications.
22
EXHIBIT 5 - CONTINUED
The IBM logo should always be distinct and free-standing from all other copy
and graphics.
Do not use the IBM logo more than once on each ad or on each page.
Do not embed the IBM logo in text.
Do not alter, stretch or otherwise distort the IBM logo.
Do not alter the colors of the logo.
Do not use IBM taglines or add taglines to the IBM logo.
Do not create a joint identity using your company logo and the IBM logo.
Do not create confusion as to the source of the product/service solution.
You must insure that your materials are clearly perceived as communications
from your company and not IBM.
Do not reference IBM products or services for which you are not authorized.
Do not connect your company name with IBM products or services, such as: "XYZ's
IBM Multipurpose Paper will satisfy all of your business imaging needs".
If you reference IBM products and non-IBM products together, the IBM content
must be at least equal in size to other brands.
Do not disparage IBM or competitive products or services.
Attachment: The Spirit and Letter of IBM Brand Identity
23
EXHIBIT 6
Field Technical Service Policy
Licensee agrees to promptly resolve all customer complaints in accordance with
the attached Quality Guarantees covering:
o Ink Jet Products
o Laser Cut Sheets
o Computer Paper
o Facsimile Paper
24
QUALITY GUARANTEED!
IMPRESO INK-JET PRODUCTS
The experience of TST/IMPRESO, Inc. (Seller), has resulted in stringent
controls to insure consistent physical, chemical and electrical properties of
all our supply products. These quality controls allow TST/IMPRESO, Inc. to
extend the following warranty:
The Seller warrants to the Original Purchaser, IMPRESO InkJet products to
be free from defect in material and workmanship under normal use and service.
The Seller's obligation under this warranty shall be limited to refund or
exchange, at Seller's option, of any IMPRESO Ink-Jet product which may prove
defective under normal use and service (within one year from date of purchase)
by the Original Purchaser, and which Seller's examination discloses to Seller's
satisfaction to be defective. This warranty shall not apply to IMPRESO Ink-Jet
products which have been subject to accident, alteration, abuse or misuse. The
term "Original Purchaser", as used in this warranty, shall be deemed to mean
that entity to whom the IMPRESO Ink-Jet products were originally sold and
invoiced by Seller.
TST IMPRESO
▇.▇. ▇▇▇ ▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ FAX (▇▇▇) ▇▇▇-▇▇▇▇
NASDAQ Symbol - TSTI
▇▇▇▇://▇▇▇.▇▇▇▇▇▇▇▇▇▇.▇▇▇/
25
QUALITY GUARANTEED!
LAZER CUT SHEETS FROM IMPRESO
The experience of TST/IMPRESO, Inc. (Seller), has resulted in stringent
controls to insure consistent physical, chemical and electrical properties of
all our supply products. These quality controls allow TST/IMPRESO, Inc. to
extend the following warranty:
The Seller warrants to the Original Purchaser, IMPRESO Lazer Cut Sheets to
be free from defect in material and workmanship under normal use and service.
The Seller's obligation under this warranty shall be limited to refund or
exchange, at Seller's option, of any IMPRESO Lazer Cut Sheets which may prove
defective under normal use and service (within one year from date of purchase)
by the Original Purchaser, and which Seller's examination discloses to Seller's
satisfaction to be defective. This warranty shall not apply to IMPRESO Lazer
Cut Sheets which have been subject to accident, alteration, abuse or misuse.
The term "Original Purchaser", as used in this warranty, shall be deemed to
mean that entity to whom the IMPRESO Lazer Cut Sheets were originally sold and
invoiced by Seller
TST IMPRESO
▇.▇. ▇▇▇ ▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ FAX (▇▇▇) ▇▇▇-▇▇▇▇
NASDAQ Symbol - TSTI
▇▇▇▇://▇▇▇.▇▇▇▇▇▇▇▇▇▇.▇▇▇/
26
QUALITY GUARANTEED!
IMPRESO COMPUTER PAPER
The experience of TST/IMPRESO, Inc. (Seller), has resulted in stringent
controls to insure consistent physical, chemical and electrical properties of
all our supply products. These quality controls allow TST/IMPRESO, Inc. to
extend the following warranty:
The Seller warrants to the Original Purchaser, IMPRESO computer paper
products to be free from defect in material and workmanship under normal use
and service. The Seller's obligation under this warranty shall be limited to
refund or exchange, at Seller's option, of any IMPRESO computer paper product
which may prove defective under normal use and service (within 120 days from
date of purchase) by the Original Purchaser, and which Seller's examination
discloses to Seller's satisfaction to be defective. This warranty shall not
apply to IMPRESO computer paper products which have been subject to accident,
alteration, abuse or misuse. The term "Original Purchaser", as used in this
warranty, shall be deemed to mean that entity to whom the IMPRESO computer
paper products were originally sold and invoiced by Seller.
TST IMPRESO
▇.▇. ▇▇▇ ▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ FAX (▇▇▇) ▇▇▇-▇▇▇▇
NASDAQ Symbol - TSTI
▇▇▇▇://▇▇▇.▇▇▇▇▇▇▇▇▇▇.▇▇▇/
27
QUALITY GUARANTEED!
IMPRESO FACSIMILE PAPER
The experience of TST/IMPRESO, Inc. (Seller), has resulted in stringent
controls to insure consistent physical, chemical and electrical properties of
all our supply products. These quality controls allow TST/IMPRESO, Inc. to
extend the following warranty:
The Seller warrants to the Original Purchaser, IMPRESO facsimile products
to be free from defect in material and workmanship under normal use and
service. The Seller's obligation under this warranty shall be limited to refund
or exchange, at Seller's option, of any IMPRESO facsimile product which may
prove defective under normal use and service (within one year from date of
purchase) by the Original Purchaser, and which Seller's examination discloses
to Seller's satisfaction to be defective. This warranty shall not apply to
IMPRESO facsimile products which have been subject to accident, alteration,
abuse or misuse. The term "Original Purchaser", as used in this warranty, shall
be deemed to mean that entity to whom the IMPRESO facsimile products were
originally sold and invoiced by Seller.
The Seller further warrants that under normal use and service conditions
and when used only in conjunction with IMPRESO approved and vended supply
products, if specified IMPRESO facsimile products result in abnormal wear or
deterioration to the facsimile equipment on which the products are properly
used, Seller shall, upon proof of claim:
a. Replace the IMPRESO product(s) causing such damage, and
b. Reimburse the original Purchaser for any and all parts and labor
charges necessary to repair said equipment if IMPRESO facsimile
products were used exclusively. If IMPRESO products were used in
conjunction with IMPRESO approved and vended products, then an
appropriate prorated basis payment will be offered. If IMPRESO
facsimile products have been used in conjunction with products not
approved and vended by IMPRESO this warranty will be null and void.
TST IMPRESO
▇.▇. ▇▇▇ ▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ FAX (▇▇▇) ▇▇▇-▇▇▇▇
NASDAQ Symbol - TSTI
▇▇▇▇://▇▇▇.▇▇▇▇▇▇▇▇▇▇.▇▇▇/
28
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
EXHIBIT 7
License Fee
[****]
29
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
EXHIBIT 8
Packaging Specifications
[****]
30
EXHIBIT 9
Product Specifications
All Licensed Products will be manufactured to specifications either provided by
IBM to Licensee, or to specifications submitted by Licensee to IBM and approved
in writing by IBM.
IBM reserves the right to have the Licensee withhold from sale and to withdraw
from the market any Licensed Product that does not meet Product Specifications.
Licensee agrees to work with IBM to establish ongoing product quality audit
procedures.
31
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
AMENDMENT NUMBER 1
This Amendment Number 1 ("Amendment") between International Business Machines
Corporation ("IBM") and TST/Impreso, Inc. ("Licensee") amends the Agreement
("Agreement") between the parties with an Effective Date of April 30, 1997. All
capitalized terms in this Amendment shall have the same meaning as provided in
the Agreement.
WHEREAS, IBM and Licensee desire to make certain modifications to the
Agreement.
NOW THEREFORE, in consideration of the foregoing and the mutual promises
hereinafter set forth, the parties hereto agree as follows:
Exhibit 9, Product Specifications, shall be replaced by the attached
revised Exhibit 9, Product Specifications.
IN WITNESS WHEREOF, both International Business Machines Corporation and
TST/Impreso, Inc. have executed this Amendment by their respective authorized
representatives.
TST/IMPRESO, INC. INTERNATIONAL BUSINESS
MACHINES CORPORATION
By: /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ By: [****]
----------------------------- -----------------------------
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Chairman of the Board
President
Date: May 29, 1997 Date: May 27, 1997
--------------------------- ---------------------------
32
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
EXHIBIT 9
Product Specifications
[****]
TST
33
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9A
TST IMPRESO
[****]
April 29, 1997
34
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9B
TST IMPRESO
[****]
April 29, 1997
35
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9C
TST IMPRESO
[****]
April 29, 1997
36
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9D
[****]
37
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9E
[****]
38
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9F
[****]
39
THE INFORMATION BELOW MARKED BY [****] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH
THE COMMISSION.
9G
[****]