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Exhibit 10.7
BITSTREAM INC. & TUMBLEWEED SOFTWARE CORPORATION
JOINT DEVELOPERS' AGREEMENT FOR
SALES, LICENSING, AND MARKETING OF
TUMBLEWEED'S PUBLISHING ESSENTIALS AND COMPONENTS
This Agreement is entered into and made effective as of the 10th day of June
1996 by and between BITSTREAM INC., of ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
("Bitstream") and TUMBLEWEED SOFTWARE CORPORATION ("Tumbleweed ") of ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇.
WHEREAS, Bitstream has licensing rights from Novell, Inc. to market and
distribute the shrink-wrap version of Envoy Portable Document software and/or
components to OEMs;
WHEREAS, Tumbleweed has licensing rights from Novell, Inc. to market and
distribute the shrink-wrap version of Envoy Portable Document software;
WHEREAS, Tumbleweed is the owner of certain product derivatives from/for Envoy
including but not limited to Publishing Essentials; and will market and
distribute them to End-Users and Publishers;
WHEREAS, Bitstream intends to license from Tumbleweed to market and distribute
shrink-wrap versions of Publishing Essentials to Resellers and End Users in
select areas;
WHEREAS, Bitstream intends to license from Tumbleweed to market and distribute
components of Publishing Essentials to OEMs in accordance with the terms and
conditions set forth herein;
NOW, THEREFORE, in consideration of the premises and of the mutual covenants and
promises herein contained, the parties agree as follows.
1. DEFINITIONS
1.01 As used in this Agreement:
(a) "Product Components" refers individually or collectively to
those products made available to Bitstream by Tumbleweed for
sublicensing hereunder and designated in EXHIBIT A-1,
including, but not limited to, components of Tumbleweed
Publishing Essentials, Related Materials, and all Updates and
Upgrades exclusive of any new product created by either
party. If so designated, the Product Components may include
the software products listed below, all of which have been
developed and are owned by Tumbleweed (except as otherwise
specified), and shall be provided in object code form.
i. "Tumbleweed Publishing Essentials", an integrated collection
of publishing tools;
ii. "Tumbleweed Publisher" generates collections of Envoy
documents;
iii. "Link Builder" suggests and generates hypertext link sources
and destinations;
iv. "Outline Builder" provides a mechanism to build a
cross-document hierarchical outline view;
v. "Rich Text Index Builder" builds full-text indexes that
incorporate both document content and formatting;
vi. "Envoy Distributable Viewer" provides navigational tools to
move around in a document;
vii. "Tumbleweed Viewer Extensions, Workgroup 10 Pack" are
plug-in modules for the distributable viewer.
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(b) "Proprietary Rights" means all patents, copyrights, trade secrets
and all other rights in Products and Derivative Works thereof
owned by or licensed to either party whether or not such rights
are protected under patent or copyright laws;
(c) "Derivative Works" means those revisions, improvements,
alterations, adaptations, modifications, translations,
abridgments, expansions, or other form to the Product(s);
(d) "Product(s)" means the software product or products whose sale
and marketing is contemplated by this Agreement, and which may
combine some or all of the products or components described in
EXHIBIT A-1, and in section (a) above;
(e) "End User" is any person or entity who receives a right to use
the Product-- for its own use and not for resale or further
sublicensing--through a license granted by either party or an
OEM;
(f) "OEM", or "Original Equipment Manufacturer", means any legal
entity or person that receives from Bitstream the right to use
the Product and sublicense the Product to End Users in
conjunction with its own products;
(g) "Related Materials" means information in written or other
documentary form supplied by either party to the other that
relates, in whole or in part, to the installation, design, use,
operation, testing, debugging, support, maintenance or marketing
of Product;
(h) "Updates" are new revisions of the Products that improve
functionality and bear higher "Version" decimals.
(i) "Upgrades" are new releases of the Products that generally expand
the capability of the upgraded product, and bear higher "Version"
integers.
(j) "Custom Quotation" is the process whereby the OEM requires
modification to the core technology or source code. The OEM will
define the requirements with specific details and request a
quotation for the work to be completed. No obligation is
undertaken until a purchase order and deposit are secured and
accepted by Bitstream as defined in Section 8 of this Agreement.
2. LICENSE GRANTS
2.1 Tumbleweed hereby grants to Bitstream a non-transferable,
non-exclusive license, under Proprietary Rights, subject to the
restrictions set forth in this Agreement:
(i) to use, modify and copy the Product(s) listed in EXHIBIT A for
internal purposes only in connection with the Product(s)
contemplated herein; and
(ii) to reproduce, market, sublicense and distribute the Product(s)
for use in or with OEMs' systems, computers, software,
operating systems, computer hardware including but not limited
to printers, controller boards, ASIC's and ROM based
integrated circuit cartridges; and to authorize OEMs to do the
same, subject to all of the terms and conditions of this
Agreement.
2.2 Tumbleweed hereby grants Bitstream a non-transferable, non-exclusive
license, under Proprietary Rights, subject to the restrictions set
forth in this Agreement, to use and copy the Product in EXHIBIT A-1
and in Section 1(a)(i) above, Publishing Essentials, and to
reproduce, market and distribute the Product(s) via Resellers and
direct to Corporate Accounts, and End Users.
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3. OWNERSHIP
3.1 Tumbleweed shall continue to own the Products listed in Exhibit A-1
attached hereto, and all Proprietary Rights, Related Materials,
Updates, Upgrades, Custom Works and Derivative Works thereof. No
right, title or interest in or to such Products is conveyed to
Bitstream hereunder.
4. PAYMENTS; REPORTS; RECORDS
4.1 Bitstream shall collect and retain any access fees and royalties due
on account of its sublicensing and distribution of the Product(s) as
set forth in EXHIBITS B-1 and B-2, any Maintenance Fees as set forth
in EXHIBIT B-3, and any custom work as stated at Section 8.1.
Royalties shall be due and payable as set forth in EXHIBITS B-1 and
B-2 on all such amounts as they are actually collected.
4.2 Bitstream shall furnish written reports to Tumbleweed on a quarterly
basis, indicating the number of copies of the Product(s) for which
payment has been received during that quarter and the royalty, as
applicable, due to Tumbleweed for each hereunder. Payment of the
amount of royalty shown to be due by each report, in U.S. Dollars,
shall accompany the report within ten (10) working days of the last
business day of that quarter.
4.3 Bitstream shall maintain invoices and other records necessary to
substantiate the amount of royalty payments shown to be due by each
report submitted under this Agreement for a period of three (3)
years after the date of each report. Tumbleweed may, at its own
expense, retain an independent certified public accountant to audit
the other party's records no more frequently than once a year,
provided that such audits are conducted with reasonable notice,
during normal working hours of the party being audited, and in such
a way as not to interfere unduly with the operation of its business.
Tumbleweed agrees to keep all information obtained in the course of
any such audit confidential, and to cause its independent certified
public accountant to do likewise; and that such information shall
not be used for any purpose except to verify the amount of royalty
payable hereunder.
4.4 Royalties Payable
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In consideration of the work set forth in the License Agreement
referenced above, Bitstream shall pay to Tumbleweed a royalty for
licensing the Product(s) listed on EXHIBIT A-1 in the manner
described in Section 4 above.
5. JOINT SALES, PROMOTION, AND MARKETING.
As further consideration for the license granted herein and for the
work to be performed by both parties herein, the parties agree to
perform the following sales, promotional, and marketing activities
on behalf of the Product(s):
5.1 Both parties shall coordinate a joint strategy for all customers by
either party for the Product(s). This is intended to encourage a
consistent and cooperative sales, marketing and support effort
between Bitstream and Tumbleweed to the OEM and End-User.
5.2 Tumbleweed and Bitstream shall each use reasonable efforts to
advertise and promote the Product(s) at their own expense, using
trademarks and copyright notices as described in EXHIBIT C-1.
5.3 Tumbleweed and Bitstream shall work together to release significant
company information, timely press releases and public position
statements, including but not limited to the execution of this
Agreement.
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6. TRADEMARK AND COPYRIGHT.
Each Party hereby grants to the other Party the non-transferable,
non-exclusive, worldwide right, license and privilege to use the
trade name(s) and trademarks of the other in association with
promotion and sale of the Product(s), as represented in EXHIBIT C-1.
7. CONFIDENTIALITY
7.1. For purposes of this Agreement, the term "Information" shall mean
any and all information, data, know-how and documentation including
but not limited to the Novell, Inc. and Tumbleweed Products and
information related to digital typeface technology, software
products, algorithms, business, marketing and distribution plans,
the terms and conditions of this Agreement, financial statements and
financial projections, and each party's information regarding
customer information, marketing plans and product development, which
either party learns or receives from the other, excluding any
information that the receiving party can document is generally known
in the computer industry, or becomes known to the receiving party
other than through a breach by anyone under an obligation of
confidence, or is provided to the receiving party by a third party
under no obligation to keep such information confidential, or is
independently developed or discovered by the receiving party without
reference to Information of the disclosing party.
7.2 Bitstream hereby agrees to hold the licensed Products and
Information in strict confidence with at least as great a degree of
care as that used to maintain the confidentiality of its own most
confidential information, except as transfers of such Products and
Information are expressly authorized herein.
7.3. Each party agrees that it shall maintain Information and each others
Products for use only by its employees, or individuals who are on
its premises and under its direction and control, for purposes
specifically related to its permitted use of Products or
Information. Each party shall advise the other immediately in the
event that it learns or has reason to believe that any person who
has access to Products or Information, or any portion thereof, has
violated or intends to violate the terms of this Agreement; and each
party will, at its expense, cooperate with the other party in
seeking injunctive or other equitable relief in its own name or that
of the other party against that person.
8. CUSTOM WORK, MAINTENANCE
8.1. Bitstream and Tumbleweed both agree to promote and submit business
proposals for the purpose of contracting with the OEM customer for
custom work [*]. Charges for custom work may consist of a
combination of [*] . [*] charges are payable as follows: [*].
8.2. Maintenance. Tumbleweed agrees to provide Bitstream with all Updates
and Upgrades of the Licensed Products as they become available to be
marketed as stated in EXHIBIT B-3 hereto and the Maintenance
Agreement SCHEDULE 3-B attached thereto., exclusive of any Updates
and Upgrades of the Tumbleweed Plug-ins.
8.3. Bitstream shall provide reasonable technical support, at its own
expense, to its OEMs, End Users and Resellers using the Product(s).
Specific support services, processes and definitions are outlined in
Exhibit D which shall be defined and mutually agreed upon by July 1,
1996.
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* Certain confidential information has been omitted and filed separately
with the Securities and Exchange Commission pursuant to a Request for
Confidential Treatment.
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9. TERM AND TERMINATION
9.1. This Agreement shall remain in effect from the date of execution, as
first set forth above, and run for a period of three years or until
June 10, 1999, unless first terminated in accordance with either
Section 9.2 or 9.3, or by either party upon thirty (30) days'
written notice. The term may extend an additional twelve (12) months
thereafter in the event that both parties voluntarily agree IN
WRITING to do so. The parties also may choose to enter into a new
agreement that supersedes this one.
9.2. If either party fails to comply with a material term or condition of
this Agreement, the complying party shall give the defaulting party
written notice of such failure. The defaulting party shall have
thirty (30) days after the receipt of notice to cure any indicated
failure. If the failure is not cured within that time, this
Agreement may be terminated, without further delay, by the complying
party sending written notice to the defaulting party. The parties do
not intend that the Agreement may be terminated for minimal or
technical breaches.
9.3. Either party may terminate immediately the license granted in this
Agreement by sending written notice to the other if (a) a receiver
is appointed to take possession of all or substantially all of the
assets of the other party; (b) the other party makes a general
assignment for the benefit of creditors; (c) the other party takes
or suffers any action under any insolvency or bankruptcy act; (d)
the other party sells all or substantially all of its assets,
liquidates or dissolves; or (e) the other party breaches any
provision regarding confidentiality or attempts to convey any
interest in any Product(s) or other property licensed or supplied
hereunder, other than as permitted under the terms of this
Agreement.
9.4. Upon termination of this Agreement by either party under Section 9.2
or 9.3, Bitstream shall, at its option, either return or destroy all
Products, Derivative Works and all copies thereof, in part or in
whole, and in all forms of media. Bitstream shall promptly submit an
affidavit signed by an officer of the respective company that
attests to the destruction of the materials.
9.5. Sections 1, 3, 7, 9, 10, 11 and 12 shall survive termination of this
Agreement.
9.6. Upon Termination any outstanding royalties associated with this
agreement will be paid in accordance with section 4 of this
agreement.
10. WARRANTIES AND OTHER REPRESENTATIONS
10.1. Tumbleweed warrants that its Products, as originally delivered and
unaltered, will materially perform in accordance with its published
specifications.
10.2. Tumbleweed's exclusive remedy for breach of the warranty in Section
12.1 below shall be to report such breach in writing within thirty
(30) days after delivery, and return the Products. Upon receipt of
such report, either party shall do one of the following at its sole
option: (a) use reasonable efforts to correct such errors and
provide the other with corrected Products; or (b) replace the
Products with other materials that are similar in function.
Tumbleweed does not warrant the results of its correction services.
10.3. Each party warrants that it has the right to enter into this
Agreement, and that Tumbleweed owns and has the right to license
the products developed hereunder in EXHIBIT A-1.
11. INFRINGEMENT
Tumbleweed (the "defending party") will defend Bitstream (the
"nondefending party") against any action at its own expense and pay
the costs and damages awarded against the nondefending party or its
customer as a result of any action (and all prior related claims)
alleging that such nondefending party's or its customer's use or
sublicensing of the Products licensed hereunder (the Tumbleweed
Products) infringes a patent, copyright, trademark, or other
intellectual property right, provided that the defending party is
notified promptly of such action, and that it shall enjoy sole
control of its defense, and of all negotiations for its settlement
or compromise. The nondefending party shall, at any time, enjoy the
right to participate in the defense of such action at its own
expense. If a final injunction is
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obtained in such action against the nondefending party's or its
customers' use of the Product(s) or, if in the reasonable opinion of
the nondefending party, the Product(s) is likely to become the
subject of a claim of infringement, the defending party will at its
option and expense either (i) procure for the nondefending party or
its customer the right to continue to use the product; or (ii)
replace or modify the product so that it becomes non-infringing; or
if neither (i) of (ii) above proves practical, terminate this
Agreement without liability to the defending party, except that
these indemnification obligations shall survive.
12. DISCLAIMER AND LIMITATION OF LIABILITY
12.1 Except as expressly stated in Section 10 above, EACH PARTY DISCLAIMS
ALL OTHER WARRANTIES EXPRESS AND IMPLIED, INCLUDING WITHOUT
LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE. No representation or other affirmation of
fact, including but not limited to statements regarding capacity,
quality, suitability for use or performance, whether made by a
party's employees or otherwise, shall be deemed a warranty by that
party for any purpose or give rise to any liability of that party
whatsoever unless contained in this Agreement.
12.2 IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR INCIDENTAL, INDIRECT,
SPECIAL OR CONSEQUENTIAL DAMAGES OR ANY DAMAGES WHATSOEVER RESULTING
FROM LOSS OF USE, DATA OR PROFITS, ARISING OUT OF OR IN CONNECTION
WITH THIS AGREEMENT OR THE USE OR PERFORMANCE OF THE PRODUCT(S) OR
THE BITSTREAM PRODUCTS, WHETHER IN AN ACTION OF CONTRACT OR TORT
INCLUDING BUT NOT LIMITED TO NEGLIGENCE.
13. GENERAL
13.1. Amendment. This Agreement may be modified, changed or amended only
in a writing signed by both parties. No employee of either party
other than an authorized officer of that party shall have any actual
or apparent authority to modify the terms of this Agreement.
13.2. No Waiver. No delay or failure of any party to exercise any right
provided herein shall in any way affect its right to enforce that
right or any other right under this Agreement at a later time. No
waiver shall be effective unless in writing signed by the waiving
party.
13.3. Severability. If any provision of this Agreement is declared invalid
by any lawful tribunal, then it shall be adjusted to conform to
legal requirements of that tribunal and that modification shall
automatically become a part of the Agreement. Or, if no adjustment
can be made, the provision shall be deleted as though never included
in the Agreement and its remaining provisions shall remain in full
force and effect.
13.4. No Partnership or Agency. Bitstream and Tumbleweed are independent
contractors, and neither party shall be, nor represent itself to be,
the joint venturer, franchiser, franchisee, partner, broker,
employee, or servant of the other party for any purpose. Neither
party shall be responsible for the acts or omissions of the other,
and neither party shall bear authority to make any representation or
incur any obligation on behalf of the other party unless expressly
authorized herein.
13.5. No Assignment. Neither this Agreement nor individual transactions
nor rights under it shall be assigned nor shall any obligation be
delegated by either party without the prior written consent of the
other. Any such attempted assignment or delegation without such
prior written approval shall be void. In the event of a sale of all
or substantially all of either party's assets, such approval shall
not be unreasonably withheld by the other party.
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13.6. Force Majeure. Neither party will be liable for any failure or delay
in performance due, in whole or in part, to any cause beyond its
reasonable control.
13.7. Notices. Any notice under this Agreement shall be effective upon
initial receipt by the addressee regardless of whether notice is
rejected if in writing, signed by an authorized representative of
the noticing party, and sent by registered or certified mail, return
receipt requested, postage prepaid to the recipient's address as
stated at the beginning of this Agreement or as updated by either
party from time to time. Each notice shall be effective upon initial
receipt by the addressee regardless of whether notice is rejected.
13.8. Limitation of Actions. No action, regardless of form, may be brought
by either party more than twelve (12) months after the cause of
action has arisen, except that an action for non-payment may be
brought within twelve (12) months of the last payment, and either
party may bring an action relating to its intellectual property
rights at any time.
13.9 Governing Law. This Agreement, all Exhibits and amendments hereto
and all purchase orders issued hereunder, shall be governed in all
respects by the laws of the Commonwealth of Massachusetts, United
States, excluding its conflict of laws rules.
13.10. Entire Agreement. This Agreement and its Exhibits constitute the
complete and exclusive statement of the agreement between the
parties and supersede all prior oral and written agreements,
communications, representations, statements, negotiations and
undertakings relating to the subject matter herein.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as of the date first set forth above.
BITSTREAM INC. TUMBLEWEED SOFTWARE CORPORATION
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
------------------------------ ----------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇ Print Name: ▇▇▇▇ ▇▇▇▇▇
Title: President & CEO Title: President
Date: June 10, 1996 Date: June 11, 1996
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EXHIBIT A-1
BITSTREAM INC. & TUMBLEWEED SOFTWARE CORPORATION
JOINT DEVELOPERS AGREEMENT FOR
SALES, LICENSING, AND MARKETING OF
TUMBLEWEED'S PUBLISHING ESSENTIALS AND COMPONENTS
DATED JUNE 10, 1996
This EXHIBIT A-1 is effective as of the 10th day of June 1996 and is part of and
shall be governed by the License Agreement made effective on June 10, 1996 by
and between BITSTREAM INC. ("Bitstream") and TUMBLEWEED SOFTWARE CORPORATION
("Tumbleweed"). The products listed below are owned and developed by Tumbleweed
and licensed by Tumbleweed to Bitstream under the terms and conditions of the
License Agreement referenced above. Additional products may or will be released
periodically by Tumbleweed and such products will be made available to Bitstream
at the sole discretion of Tumbleweed.
i. "Publishing Essentials" is an integrated collection of publishing tools
incorporating Novell's Envoy and items (ii) through (vii) below;
ii. "Tumbleweed Publisher" generates collections of Envoy documents with a
single click. It provides batch conversion of PostScript, Encapsulated
PostScript, Acrobat PDF, and any other file format associated with a
printing application and enables publishers to embed any Type 1 PostScript
or TrueType font with minimal impact on file size;
iii. "Link Builder" suggests and generates hypertext link sources and
destinations to help automate the process of setting up links within and
between documents;
iv. "Outline Builder" cross-documents a hierarchical outline view, employing
user defined templates to automatically construct an outline view from
multiple documents;
v. "Rich Text Index Builder" builds full text indexes that incorporate both
the text content and formatting of Envoy documents. RTR indexes are fast,
small and optimized to take advantage of the unique properties of portable
documents;
vi. "Envoy Distributable Viewer" is any enhanced Envoy viewer that supports
advanced font embedding and navigation features provided by the Tumbleweed
Publishing Essentials;
vii. "Tumbleweed Viewer Extensions, Workgroup 10-Pack" are end user viewing
components that add functionality to Novell's Envoy Viewer. Enhanced
viewer features include the Rich Text Retrieval client search engine,
cross-document hypertext capabilities, and a presentation mode for slide
shows. The package includes a ten-user license for the Tumbleweed Viewer
Extensions, so that a workgroup can navigate Envoy document collections.
viii. "Tumbleweed Plug-ins" provide direct compatibility for viewing Envoy
documents within Internet web browser products that support Netscape's
plug-in interfaces.
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ix. Tumbleweed Extensions include "Pages, Presentation, Outline Viewer, RTR
Search, Web Linking, Hyper-Command Linking, Cross Document Hypertext".
x. Tumbleweed Freely Distributable Extensions include "Document Information,
Cross Document Hypertext (Run Time Only), Hyper Command Linking (Run Time
Only), Web Linking (Run Time Only)."
BITSTREAM INC. TUMBLEWEED SOFTWARE CORPORATION
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
---------------------------------- --------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇ Print Name: ▇▇▇▇ ▇▇▇▇▇
Title: President & CEO Title: President
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EXHIBIT B-1
Bitstream Inc. & Tumbleweed Software Corporation
Joint Developers' Agreement for Sales, Licensing and Marketing of
Tumbleweed's Publishing Essentials and Components
PAYMENT--COMPONENT SOFTWARE
This EXHIBIT B-1 is effective as of the 10th of June 1996 and is part of and
shall be governed by the License Agreement made effective on June 10th, 1996 by
and between TUMBLEWEED SOFTWARE CORPORATION ("Tumbleweed") and BITSTREAM INC.
("Bitstream").
1. ACCESS FEES FOR COMPONENT SOFTWARE TO OEMS
The access fee due according to Section 4 of the Agreement by OEMs for
Component Software, which shall be due and payable to Bitstream within thirty
(30) days of delivery of the Component Software, is as follows: (See $Unit
Price in 3. Below)
PostScript Converter [*]
PDF Converter [*]
Rich Text Retrieval Indexing Engine [*]
Rich Test Retrieval Search Engine [*]
1.A. Upon consummation of this agreement Bitstream agrees to pay Tumbleweed
[*] which will be credited against future royalties due to Tumbleweed at a rate
of [*]. Should this agreement be terminated by Tumbleweed, the balance of the
unused credit will be returned to Bitstream within 60 days of said termination.
No repayment shall be due as a result of a termination by Bitstream. Payment to
Tumbleweed will be made in accordance with the following schedule: [*] upon
contract signing, [*] upon completion of liquidity event scheduled to occur
prior to July 31, 1996.
1.B. Bitstream agrees to pay to Tumbleweed a [*] royalty on revenues generated
from OEM sales of the Envoy SDK. Bitstream and Tumbleweed will attempt to gain
additional royalty relief from Novell. In addition, any royalty relief gained
from Novell by Bitstream up to and including [*] will be paid to
Tumbleweed, providing:
1) that Novell states in writing that no royalty is being provided to
Tumbleweed;
2) if Tumbleweed receives royalty relief of [*] or more from
Novell, then Bitstream's sole obligation will be a [*] royalty on
revenue generated.
Any relief in excess of [*] will be retained by Bitstream.
2. SHIPPING CHARGES
Licensee shall be responsible for the payment of the freight charges. All
purchase orders shall state F.O.B. Bitstream Inc.
3. ROYALTY RATES FOR COMPONENT SOFTWARE TO OEMS
The Tumbleweed OEM products may be licensed to Envoy API customers under the
following minimum pricing guidelines. For OEM opportunities that fall outside of
these guidelines, Tumbleweed will work with Bitstream to provide an RFQ on a
deal-by-deal basis.
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* Certain confidential information has been omitted and filed separately with
the Securities and Exchange Commission pursuant to a Request for Confidential
Treatment.
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POSTSCRIPT CONVERTER
-------------------------------------------------------------------------
Tumbleweed Revenue Minimum Payment To
Share Tumbleweed
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Access Fee [*] [*]
-------------------------------------------------------------------------
Annual Product Volume:
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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PDF CONVERTER
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Tumbleweed Royalty Minimum Payment To
Tumbleweed
-------------------------------------------------------------------------
Access Fee [*] [*]
-------------------------------------------------------------------------
Annual Product Volume:
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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RICH TEXT RETRIEVAL INDEXING ENGINE
-------------------------------------------------------------------------
Tumbleweed Royalty Minimum Payment To
Tumbleweed
-------------------------------------------------------------------------
Access Fee [*] [*]
-------------------------------------------------------------------------
Annual Product Volume:
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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RICH TEXT RETRIEVAL SEARCH ENGINE
-------------------------------------------------------------------------
Tumbleweed Royalty MINIMUM PAYMENT TO
TUMBLEWEED
-------------------------------------------------------------------------
Access Fee [*] [*]
-------------------------------------------------------------------------
Annual Product Volume:
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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[*] [*] [*]
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* Certain confidential information has been omitted and filed separately
with the Securities and Exchange Commission pursuant to a Request for
Confidential Treatment.
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TUMBLEWEED PLUG-INS VERSION 1.0
-------------------------------------------------------------------------
Tumbleweed Royalty Minimum Payment To
Tumbleweed
-------------------------------------------------------------------------
OEM [*] [*]
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RETAIL VERSION [*] [*]
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FUTURE VERSION [*] [*]
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4. PAYMENT OF ROYALTIES TO TUMBLEWEED SOFTWARE
Bitstream Inc. will pay to Tumbleweed Software a [*] royalty on the OEM
components outlined in EXHIBIT A-1 and in Section 3 of this EXHIBIT B-1.
Royalties will be reported and paid to Tumbleweed Software as specified in
Section 4 of the Agreement.
BITSTREAM INC. TUMBLEWEED SOFTWARE CORPORATION
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
------------------------------- ------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇ Print Name: ▇▇▇▇ ▇▇▇▇▇
Title: President & CEO Title: President
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* Certain confidential information has been omitted and filed separately
with the Securities and Exchange Commission pursuant to a Request for
Confidential Treatment.
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EXHIBIT B-2
Bitstream Inc. & Tumbleweed Software Corporation
Joint Developers' Agreement for Sales, Licensing and Marketing of
Tumbleweed's Publishing Essentials and Components
PAYMENT
This EXHIBIT B-2 is effective as of the 10th of June 1996 and is part of and
shall be governed by the License Agreement made effective on June 10, 1996 by
and between TUMBLEWEED SOFTWARE CORPORATION ("Tumbleweed") and BITSTREAM INC.
("Bitstream").
1. PER COPY FEE/UNIT FEE
The per copy fee due according to Section 4 of the Agreement which shall be due
and payable to Tumbleweed (less Bitstream's agreed upon percentage):
o Tumbleweed Publishing Essentials Software SRP: [*]
o Tumbleweed Publisher Software SRP: [*]
2. SHIPPING CHARGES
Licensee shall be responsible for the payment of the freight charges. All
purchase orders shall state F.O.B. Bitstream Inc.
3. VOLUME DISCOUNT RATES FOR PUBLISHING ESSENTIALS AND TUMBLEWEED PUBLISHER
The Tumbleweed Products may be licensed on a world-wide basis to End Users,
Corporate Accounts and Resellers.
a. TUMBLEWEED PUBLISHING ESSENTIALS: CORPORATE ACCOUNTS
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Minimum Payment
Quantity SRP Maximum Discount To Tumbleweed
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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b. TUMBLEWEED PUBLISHER: CORPORATE ACCOUNTS
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Minimum Payment
Quantity SRP Maximum Discount To Tumbleweed
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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[*] [*] [*] [*]
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* Certain confidential information has been omitted and filed separately
with the Securities and Exchange Commission pursuant to a Request for
Confidential Treatment.
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C. TUMBLEWEED PUBLISHING ESSENTIALS AND PUBLISHER: RESELLERS
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Minimum Transfer Minimum Payment
Product Price To Reseller SRP To Tumbleweed
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Publishing [*] [*] [*]
Essentials
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Publisher [*] [*] [*]
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D. TUMBLEWEED PUBLISHING ESSENTIALS AND PUBLISHER: END-USERS
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Payment To
Product SRP Tumbleweed
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Publishing [*] [*]
Essentials
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Publisher [*] [*]
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Tumbleweed Viewer Extensions as defined in EXHIBIT A-1 will be made available to
Bitstream for inclusion with the Envoy stand alone product at a rate of [*] of
Bitstream's revenue The freely distributable Extensions will be made available
to Bitstream for inclusion with the Envoy stand alone viewer at a fixed rate of
[*] per unit shipped. Both the Tumbleweed Viewer Extensions and the freely
distributable Extensions will be made available to OEM's via [*].
4. PAYMENT OF ROYALTIES TO TUMBLEWEED SOFTWARE
Bitstream Inc. shall pay to Tumbleweed Software the Royalties for Products
referenced in EXHIBIT A-1 in the amount specified within Section 3 of this
EXHIBIT B-2. Royalties will be reported and paid to Tumbleweed Software as
specified in Section 4 of the Agreement.
BITSTREAM INC. TUMBLEWEED SOFTWARE CORPORATION
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
------------------------------- ------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇ Print Name: ▇▇▇▇ ▇▇▇▇▇
Title: President & CEO Title: President
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* Certain confidential information has been omitted and filed separately
with the Securities and Exchange Commission pursuant to a Request for
Confidential Treatment.
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EXHIBIT B-3
Bitstream Inc. & Tumbleweed Software Corporation
Joint Developers' Agreement for Sales, Licensing and Marketing of
Tumbleweed's Publishing Essentials and Components
COMPONENT SOFTWARE MAINTENANCE
This EXHIBIT B-3 is effective as of the 10th of June 1996 and is part of and
shall be governed by the License Agreement made effective on June 10, 1996 by
and between TUMBLEWEED SOFTWARE CORPORATION ("Tumbleweed") and BITSTREAM INC.
("Bitstream").
1. LICENSED PRODUCT(S)
o PostScript Converter and/or PDF Converter
o Rich Text Retrieval Indexing and/or Search Engine
2. MAINTENANCE FEE
Bitstream shall provide Licensee with maintenance of the Licensed Product(s)
under the terms and conditions stated on the attached SCHEDULE 3-B, in return
for an annual maintenance fee of [*] per Licensed Product(s).
3. ROYALTY RATES FOR MAINTENANCE OF COMPONENTS
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Product Maintenance Fee Royalty To Tumbleweed
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PostScript Converter [*] [*]
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PDF Converter [*] [*]
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Rich Text Retrieval [*] [*]
Indexing
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Rich Text Retrieval [*] [*]
Search Engine
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4. PAYMENT OF MAINTENANCE ROYALTIES TO TUMBLEWEED SOFTWARE FOR COMPONENTS
Bitstream Inc. will pay to Tumbleweed Software the Maintenance Royalties on
the products in EXHIBIT A-1 and within Section 3 of this EXHIBIT B-3.
Royalties will be reported and paid to Tumbleweed Software as specified in
Section 4 of the Agreement.
BITSTREAM INC. TUMBLEWEED SOFTWARE CORPORATION
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇
------------------------------- ------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇ Print Name: ▇▇▇▇ ▇▇▇▇▇
Title: President & CEO Title: President
----------
* Certain confidential information has been omitted and filed separately with
the Securities and Exchange Commission pursuant to a Request for Confidential
Treatment.
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SCHEDULE 3-B
Bitstream Inc. & Tumbleweed Software Corporation
Joint Developers' Agreement for Sales, Licensing and Marketing of
Tumbleweed's Publishing Essentials and Components
COMPONENT SOFTWARE
MAINTENANCE AGREEMENT--TERMS AND CONDITIONS
1. DEFINITIONS
1.1 "Updates" are new revisions of the Licensed Source Code that improve
functionality and that Bitstream designates by decimal "Version" numbers.
1.2 "Upgrades" are new releases of the Licensed Source Code bearing higher
Bitstream Version integers and that generally expand the capability of the
upgraded product.
2. TERM
This Maintenance Agreement shall begin as of the effective date of this
Agreement and continue for a term of one year. Licensee will be charged the
appropriate amount as designated in EXHIBIT B-3, Section 2. Thereafter, the
Agreement Term shall renew automatically for successive one year periods unless
and until terminated pursuant to Section 3. hereof.
3. SERVICE FEES
3.1 Annual Service Fee. Licensee may elect to pay Bitstream to extend the term
of this Agreement past the initial period in return for payment of an annual
service fee, paid at the start of any applicable term, for each of the Licensed
Products covered by this Agreement.
3.2 Fee Amount. The initial fee amount is stated in EXHIBIT B-3, to which this
schedule is attached, and the full rate shall be payable each successive twelve
(12) month period thereafter. 3.3 Timing of Renewals. Payment of the annual
renewal fees shall be billable by Bitstream thirty (30) days prior to the
anniversary of the effective date each year.
4. MAINTENANCE SERVICES
4.1 Services Provided. Bitstream shall provide Licensee with the following
services during the term, or any renewal term, of this Agreement for each of the
Licensed Products covered under this Agreement:
4.1.1 Priority One telephone and fax diagnostics and assistance (Tel:
▇▇▇-▇▇▇-▇▇▇▇; Fax: 617/▇▇▇-▇▇▇▇ within Massachusetts) during normal, weekday
business hours, excluding all holidays observed by Bitstream, to correct
programming errors in the Licensed Products or defects that prevent the Licensed
Products from operating in accordance with the Documentation;
4.1.2 Delivery of new Updates upon their release;
4.1.3 Delivery of new Upgrades upon their release; and
4.1.4 One day on-site training at Bitstream for Licensed Source Code Product at
Licensee's expense.
4.2 Promptness of Responses. Bitstream shall use commercially reasonable efforts
to respond promptly to any reasonable service request by Licensee, but shall
determine solely the timing of its Update or Upgrade deliveries.
BITSTREAM INC.
By: /s/ C. ▇▇▇ ▇▇▇▇▇▇
-------------------------------
Print Name: C. ▇▇▇ ▇▇▇▇▇▇
Title: President & CEO
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EXHIBIT C-1
Bitstream Inc. & Tumbleweed Software Corporation
Joint Developers' Agreement for Sales, Licensing and Marketing of
Tumbleweed's Publishing Essentials and Components
TRADEMARK USE GUIDELINES
Please include the appropriate[Trademark] or [Registered Trademark]
symbol after the first use, along with the corresponding noun. Thereafter, the
noun should appear frequently with the trademark. The following nouns are only
suggestions; there may be other words that are equally appropriate. Do not use
trademarks as nouns; trademarks are adjectives. Appropriate uses of trademarks
identify products originating with Bitstream:
TRADE v. COMPANY NAME
o Bitstream Inc. [the company - no attribution]
o Bitstream's products [no attribution]
o Bitstream[Registered Trademark] product(s)
SOFTWARE
o Bitstream[Registered Trademark] FaceLift[Trademark]
o Bitstream[Registered Trademark] 4-in-1/TrueDoc[Registered Trademark]
Printing system
o Bitstream[Registered Trademark]TrueDoc[Registered Trademark]
o TrueDoc[Registered Trademark] PFR
o Bitstream[Registered Trademark] Font Select[Trademark]
o Bitstream[Registered Trademark] Speedo[Trademark]
TYPEFACES
Bitstream[Registered Trademark] ▇▇▇▇▇▇▇[Trademark]
Bitstream[Registered Trademark] Arrus[Trademark]
Bitstream[Registered Trademark] Bremen[Trademark]
Bitstream[Registered Trademark] Carmina[Trademark]
Bitstream[Registered Trademark] ▇▇▇▇▇▇▇[Trademark]
Bitstream[Registered Trademark] Chianti[Trademark]
Bitstream[Registered Trademark] ▇▇▇▇▇▇[Trademark]
Bitstream[Registered Trademark] Iowan[Trademark] Oldstyle
Bitstream[Registered Trademark] Mister ▇▇▇▇[Trademark]
Bitstream[Registered Trademark] Oranda[Trademark]
Bitstream[Registered Trademark] Oz Handicraft[Trademark]
Bitstream[Registered Trademark] Snowcap[Trademark]
Dutch[Trademark]
Hammersmith[Trademark]
Mermaid[Trademark]
Old Dreadful No. 7[Trademark]
Provence[Trademark]
Slate[Trademark]
Swiss[Trademark]
Zurich[Trademark]
Tumbleweed[Registered Trademark]
Tumbleweed Publishing Essentials[Trademark]
Tumbleweed Publisher[Trademark]
Tumbleweed Rich Text Retrieval[Trademark]
SAMPLE ATTRIBUTION PARAGRAPH FOR TRADEMARKS:
Bitstream ▇▇▇▇▇▇▇, Bitstream Carmina, Bitstream Charter and Fontware are
registered trademarks and Speedo and Bitstream FaceLift are trademarks of
Bitstream Inc. The trademark Fontware is licensed to Bitstream Inc. in West
Germany, France and the United Kingdom by Electronic Printing Systems, Ltd.
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