OEM DISTRIBUTION AND LICENSE AGREEMENT

EXHIBIT 10.22

FOIA Confidential Treatment Requested

OEM DISTRIBUTION AND

LICENSE AGREEMENT

BY AND BETWEEN

ADOBE SYSTEMS INCORPORATED and

ADOBE SYSTEMS SOFTWARE IRELAND LIMITED

AND

ELECTRONICS FOR IMAGING, INC.

DATED: SEPTEMBER 19, 2005

OEM DISTRIBUTION AND LICENSE AGREEMENT

TABLE OF CONTENTS

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

EXHIBITS

 

 

OEM DISTRIBUTION AND LICENSE AGREEMENT

This OEM Distribution and License Agreement (this “Agreement”) is by and among Adobe Systems Incorporated, a Delaware corporation having its principal place of business at 345 Park Avenue, San Jose, CA 95110-2704 (“Adobe”), Adobe Systems Software Ireland Limited, a company incorporated in the Republic of Ireland with its principal offices located at Unit 3100 Lake Drive, CityWest Business Campus, Saggart D24, Ireland (“Adobe Ireland”) (both individually in their respective countries and collectively referred to as “Adobe”), and Electronics for Imaging, Inc., a Delaware corporation having its principal place of business at 303 Velocity Way, Foster City, California 94404 (“EFI”). This Agreement is effective as of September 19, 2005 (the “Effective Date”).

 

The purpose of this Agreement is to provide the terms and conditions pursuant to which Adobe will license software and technologies that Adobe owns or has the right to license, including Adobe PostScript interpreter software, to EFI for EFI’s use in EFI Products.

The parties hereby agree as follows:

AGREEMENT

1. DEFINITIONS.

1.1 Adobe Certification Test Suite means the testing materials and procedures developed by Adobe to be used by EFI to test Revised Object (for use as part of an EFI Product) for conformity with the PostScript Language Specification and Adobe quality standards.

1.2 Adobe Deliverables means any software (whether in source or object code form), development tools, utilities, SDKs, fonts, drivers, documentation or related materials provided by Adobe to EFI hereunder, either on tangible media or delivered electronically.

1.3 Adobe Deliverables Appendix means an appendix to this Agreement signed by both parties prior to the delivery of certain Adobe Deliverables by Adobe to EFI that, among other things, identifies the deliverables being supplied by Adobe to EFI and the applicable licensing category and licensing fees for such deliverables. A form of the Adobe Deliverables Appendix is attached hereto as EXHIBIT Q (“ Form of Adobe Deliverables Appendix ”).

1.4 Adobe Support Information means Adobe Deliverables that are provided to EFI for EFI’s internal use only at a Development Site. Examples of Adobe Support Information and applicable licensing terms are set forth in EXHIBIT A (“ Licensing Categories and Terms ”).

1.5 Authorized Third Parties means a collective term for third parties that provide maintenance to End Users on EFI’s or its Remarketer Customers’ behalf under written agreements between such third parties and either EFI or EFI’s Remarketer Customers containing terms substantially similar to terms contained in EXHIBIT M (“ Authorized Third Party Agreement Minimum Terms and Conditions ”).

1.6 Certification Letter means a letter provided by Adobe to EFI indicating that the Revised Object included in a particular EFI Product conforms to the PostScript Language Specification and Adobe quality standards. A Certification Letter shall be in a form reasonably similar to the attached EXHIBIT D-1 (“ Form of Certification Request and Approval ”), as may be modified by Adobe from time to time, and shall include a Product Certification Checklist, which shall be submitted in a form reasonably similar to the attached EXHIBIT D-2 (“ Form of Product Certification Checklist ”), as may be modified by Adobe from time to time.

1.7 Clone Product means a product having page description capabilities that are substantially compatible with the PostScript language.

 

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1.8 Core Source means the source code for the specified modules of the PostScript Software licensed to EFI under this Agreement. Applicable licensing terms for Core Source, as well as the Core Source modules that EFI is permitted to use, are set forth in EXHIBIT A (“ Licensing Categories and Terms ”). Handling and use restrictions applicable to Core Source are set forth in EXHIBIT K-2 (“ Additional Secure Procedures for Handling Core Source ”).

1.9 Designated Output Device means an output device (i.e., print engine or other raster imaging device) designated in a Certification Letter and used to display the raster output created by the Revised Object.

1.10 Development Site means a physical location under EFI’s control and supervision identified in EXHIBIT B (“ Development and Reproduction Sites ”), at which EFI may use the Adobe Support Information. New Development Sites may be added without approval by Adobe provided such sites are in a Permitted Country, as set forth in EXHIBIT P (“ Permitted Countries List ”) and advance notice of such new sites is provided by EFI to Adobe. A Primary Development Site shall be a Development Site at which Core Source may be used. Primary Development Sites are also identified in EXHIBIT B (“ Development and Reproduction Sites ”) and new Primary Development Sites, regardless of location, require written approval of Adobe.

1.11 Distributable Software means those portions of the Adobe Deliverables that EFI is permitted to include in EFI Products. Distributable Software includes (a) Revised Object, (b) Host Software and (c) Font Programs. Only software in object code form may be distributed by EFI.

1.12 Download Site means an Adobe-maintained, password-protected web site from which EFI may download copies of the Adobe Deliverables.

1.13 EFI Product means one of the following categories of products:

1.13.1 a hardware product designed by EFI that integrates the Revised Object, applicable Font Programs, and EFI printer controller board technology to produce a fully functioning printer controller board, distributed by EFI through its distribution channels, or through the channels of its Remarketer Customers, for use with a Designated Output Device as part of an End User Product.

1.13.2 an EFI designed chip, chip set or software solution that is combined with Revised Object and applicable Font Programs for distribution to its Remarketer Customer who then incorporates the chip, chip set, or software solution and Revised Object and Font Programs as part of a printer controller board which it then distributes with a Designated Output Device as part of an End User Product.

1.13.3 A software only product combining Font Programs, PostScript Software and EFI technology that provides a Raster Image Processing capability.

1.13.4 Any other product that the parties agree in writing to be an EFI Product.

 

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1.14 End User means a third party using an End User Product for its ordinary business or personal purposes, but not for redistribution or resale.

1.15 End User Documentation means the documentation provided by Adobe that is intended for use by an End User.

1.16 End User Product means an EFI Product along with a Designated Output Device specified in a Certification Letter, containing all of the essential hardware and software components required to supply the End User with a fully functioning printing system. Unless otherwise designated in a Certification Letter, each respective version of an End User Product listed below must contain the following minimum configuration:

1.16.1 Roman Versions . Revised Object, the Font Programs listed in EXHIBIT C-1 (“ Extended Roman Font Program Set ”), an EFI Product, and a Designated Output Device, all as specified in a Certification Letter.

1.16.2 Japanese Versions . Revised Object, the Font Programs listed in EXHIBIT C-1 (“ Extended Roman Font Program Set ”), Font Programs for Japanese Typefaces identified in EXHIBIT C-2 (“ Font Programs for Japanese Typefaces ”), an EFI Product, and a Designated Output Device, all as specified in a Certification Letter.

1.16.3 Chinese Versions . Revised Object, the Font Programs listed in EXHIBIT C-1 (“ Extended Roman Font Program Set ”), Font Programs for Chinese Typefaces identified in EXHIBIT C-3 (“ Font Programs for Chinese Typefaces ”), an EFI Product, and a Designated Output Device, all as specified in a Certification Letter.

1.16.4 Korean Versions. Revised Object, the Font Programs listed in EXHIBIT C-1 (“ Extended Roman Font Program Set ”), Font Programs for Korean Typefaces as identified in EXHIBIT C-4 (“ Font Programs for Korean Typefaces ”), an EFI Product, and a Designated Output Device, all as specified in a Certification Letter.

1.17 Error means a defect in a Reference Port that causes the Reference Port, when compiled and running in the development environment specified by Adobe, not to operate substantially in accordance with the PostScript Language Specification.

1.18 Commercial Shipment means the distribution by EFI or an EFI Subsidiary of Revised Object in an EFI Product for resale, except with respect to such distribution between EFI and its Subsidiary or between Subsidiaries.

1.19 Font Programs means the digitally encoded, machine readable outline programs for the Typefaces identified in EXHIBIT C-1 (“ Extended Roman Font Program Set ”), EXHIBIT C-2 (“ Font Programs for Japanese Typefaces ”), EXHIBIT C-3 (“ Font Programs for Chinese Typefaces ”), and EXHIBIT C-4 (“ Font Programs for Korean Typefaces ”), for which Adobe has sublicensing rights to allow EFI to further sublicense such Typefaces to its Remarketer Customers as part of an EFI Product. Adobe may deliver font programs in one or more of the following formats: Adobe Type 1, Open Type, CFF (Compact Font Format), TrueType, or CID-keyed fonts.

 

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1.20 Golden Master means a master tape or a compact disk copy of Adobe Deliverables from which multiple copies of such deliverables may be made, if permitted hereunder.

1.21 Hardware Upgrade means the installation of any enhanced or additional hardware, which may include software, on a previously installed EFI Product which enhances the performance of the Revised Object. Hardware Upgrades specifically do not include spares, disk drives, monitors, keyboards, or computer furniture, but do include, without limitation, CPUs and blades.

1.22 Host Software means any Adobe-supplied software in object code form that typically runs on a host computer system independently of the PostScript Software, but used in conjunction with an End User Product; including any enhancements, modifications or Localizations thereto. Examples of Host Software and applicable licensing terms are set forth in EXHIBIT A (“ Licensing Categories and Terms ”). Host Software is a category of Distributable Software.

1.23 Localization means a version of the Adobe Driver Software (as defined in Section 5.a.ii of EXHIBIT A (“ Licensing Categories and Terms ”) for which the dialog text strings and help files have been translated into a language other than English.

1.24 Maintenance means the services provided to EFI by Adobe as further described in EXHIBIT G (“ Maintenance ”).

1.25 Other Adobe Software means software that is not integral to the PostScript Software but may be incorporated into the Revised Object or other EFI Products, as permitted herein. Examples of Other Adobe Software and applicable licensing terms are set forth in EXHIBIT A (“ Licensing Categories and Terms ”).

1.26 PostScript Language Specification means the “PostScript Language Reference Book” (1999) as printed in English by Addison Wesley (also known as the “Red Book”) which supersedes all the material about Language Level 3 in the 3010 Supplement, “ Supplement: PostScript Language Reference Manual (Language Level 3 Specification and Adobe PostScript 3 Version 3010 Product Supplement ”), or any other official subsequent editions or supplements to the PostScript Language Reference Manual.

1.27 PostScript Software means the unmodified computer programs, in source and/or object code form, known collectively as Adobe’s Level 3 PostScript interpreter software and any enhancements or modifications to the foregoing as provided by Adobe to EFI.

1.28 Reference Port means a version of the PostScript Software, the components of which are supplied in source and/or object code form, as determined by Adobe, that runs in an Adobe-specified development environment, such as Windows NT or MacOS X. The initial delivery of a Reference Port is accompanied by an Adobe Deliverables Appendix (in a form similar to EXHIBIT F (“ Adobe Deliverables Appendix No. 1 ”) and any subsequent deliveries shall be made under an Adobe materials release form that references the earlier

 

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Adobe Deliverables Appendix. A “Reference Port” also refers to any Updates to the Reference Port that Adobe supplies to EFI under EXHIBIT G (“ Maintenance ”) for that particular Reference Port.

1.29 Remarketer Customer means any third party with whom EFI has entered into a written agreement authorizing such third party to distribute under such third party’s own trademark an End User Product pursuant to such third party’s own End User Agreement that includes terms substantially equivalent to and no less restrictive than those set forth in EXHIBIT H (“ EFI End User Agreement ”).

1.30 Replacement Software means a copy of Distributable Software programs that are not licensed for internal use only and are intended for use in accordance with Section 2.4 (“ Replacement of Defective Product ”) as a maintenance spare for a specific EFI Product.

1.31 Reproduction Site means the locations at which EFI or Remarketer Customers may reproduce (or have reproduced) Distributable Software. Reproduction Sites may be located anywhere in the United States. Any location outside of the United States that is located in a country on the Permitted Countries List contained in EXHIBIT P (“ Permitted Countries List ”) may be designated as a Reproduction Site by providing Adobe advance written notice. Any entity reproducing the Distributable Software shall be subject to the provisions set forth in EXHIBIT R (“ Copy Vendor Provisions ”).

1.32 Revised Object means the compiled, object code version of the PostScript Software and Other Adobe Software, if any, as revised by EFI for use in an EFI Product pursuant to EFI’s licenses hereunder. Revised Object is a category of Distributable Software.

1.33 Software Development Tools and Utilities means the tools and utilities provided by Adobe for use by EFI with the PostScript Software (i.e., CRD Maker, PPD Tools, Driver Software Localization Kits). Software Development Tools and Utilities are a category of Adobe Support Information.

1.34 Software Upgrade means either the (A) installation of Revised Object and, if required, Host Software or Font Programs in an EFI Product which contains an earlier version of such Revised Object and/or Host Software or Font Programs for the purpose of enhancing or extending (beyond bug fixes and patches) such EFI Product or (B) an upgrade of the EFI software in an EFI Product or (C) the addition of EFI software to an EFI Product.

1.35 Subsidiary means any corporation, partnership or other entity as to which EFI: (a) owns or controls, directly or indirectly, at least fifty percent (50%) by nominal value or number of units of the outstanding stock or of the outstanding stock conferring the right to vote at a general meeting, or (b) has the right to elect a majority of the Board of Directors or its equivalent, or (c) has the right, directly or indirectly, to appoint or remove the management. Subsidiaries of EFI may become parties to this Agreement by agreeing in writing to be bound by the terms and conditions hereof (such writing to be made available to Adobe upon request) and provided that EFI agrees to be responsible for and a guarantor of the obligations, acts and omissions of such Subsidiaries pursuant to this Agreement.

 

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1.36 Trademarks mean collectively the Adobe Trademarks and Typeface Trademarks. “ Adobe Trademarks” means (a) the trademarks “Adobe ^® ,” “PostScript ^® ” and “PostScript ^® 3™,” (b) the respective stylistic marks and distinctive logotypes for such trademarks, and (c) other marks and logotypes as Adobe may make available to EFI pursuant to an amendment to this Agreement. “Typeface Trademarks” means the trademarks, if any, used by Adobe to identify the Typefaces.

1.37 Typeface means a human readable set of glyphs as may be specified by Adobe. Each weight or version of a single typeface design (such as Roman or Italic or in an expanded or condensed form) marketed by Adobe as a separate typeface will be considered a separate Typeface.

1.38 Update means updated versions of a Reference Port, in source code and/or object code form, as determined by Adobe, which includes all changes, alterations, corrections and enhancements to such Reference Port which Adobe makes generally available to Adobe OEM licensees receiving maintenance (as described in EXHIBIT G (“ Maintenance ”)) for that particular Reference Port.

2. SCOPE OF EFI’S LICENSES.

2.1 Licenses to Adobe Deliverables. Licensing terms for all Adobe Deliverables provided hereunder by Adobe to EFI are as set forth in EXHIBIT A (“ Licensing Categories and Terms ”). The determination of which licensing category a particular Adobe Deliverable is placed into shall be determined by Adobe. Licensing categories shall be indicated on the Adobe Deliverable Appendix or otherwise made known to EFI by Adobe prior to delivery to EFI of Adobe Deliverables.

2.2 End User Agreement. EFI will take all commercially reasonable steps to protect Adobe’s proprietary rights in the Adobe Deliverables. EFI will ensure that each copy of the Distributable Software distributed by EFI to an End User, directly or through EFI’s Remarketer Customers, will be accompanied by a copy of EFI’s or Remarketer Customer’s software license agreement applicable to such software (the “ End User Agreement ”). EFI’s End User Agreements will include, and EFI will require its Remarketer Customers to include in their End User Agreements, terms and conditions that will protect Adobe’s rights in the Distributable Software. Adobe acknowledges that the EFI End User License Agreement attached hereto as EXHIBIT H (“ EFI End User Agreement ”) adequately protects Adobe’s rights. EFI agrees that it will implement use of such approved EFI End User Agreement in each of its products containing Distributable Software as soon as it is commercially reasonable to do so, but not later than such time as EFI releases a new version (which for these purposes shall include dot releases) of an EFI Product containing Distributable Software (unless it is not commercially feasible to do so). EFI will not change the approved EFI End User Agreement that accompanies the Distributable Software in a manner that would lessen the protections afforded the Distributable Software to more than a marginal degree or use a different End User Agreement without the written consent of Adobe. In the event EFI would like to make changes to the EFI End User Agreement that would lessen the protections afforded the Distributable Software to more than a marginal degree, EFI shall provide Adobe with written notice of such proposed changes. If Adobe does not reject the proposed changes in the EFI End User Agreement and propose alternative language within 30 days of receipt, such proposed changes

 

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will be deemed accepted by Adobe. EFI will use reasonable commercial efforts to ensure that its Remarketer Customers include substantially similar protections for the Distributable Software in their End Users Agreements and otherwise comply with the foregoing obligations. The End User Agreement must be presented to the End User such that upon acceptance of the End User Agreement in the contemplated manner, it is legally enforceable against the End User in the jurisdiction in which the End User is located under the prevailing law of such jurisdiction. Potential methods of presentment to the End User could be (a) a written agreement signed by the End User, or (b) a written agreement in the package containing the Distributable Software, that is visible to the End User that the End User accepts by some action by the End User such as opening the package, or (c) an agreement in electronic form that the End User is presented prior to use of the software and accepts by using the software or clicking a button, provided that EFI determines in each instance that such methods are deemed in the relevant jurisdiction to create a legally enforceable obligation. EFI acknowledges that Host Software is normally supplied by Adobe with an accompanying End User license from Adobe or Adobe’s suppliers. EFI agrees to retain and to require its Remarketer Customers to retain the End User license with the applicable Host Software distributed hereunder. If any such Host Software does not already include an End User license, EFI shall include or require its Remarketer Customer to include, its own End User Agreement that complies with the requirements set forth in this Section for the licensing of Distributable Software. Remarketer Customers shall include in such End User Agreement a provision stating that in case of conflict the terms of any individual End User license for Host Software shall prevail over the terms of the End User Agreement.

2.3 Protection Mechanisms. EFI shall employ copy protection, serialization, encryption or any other protection mechanism as reasonably specified in writing by Adobe to restrict or monitor unauthorized use of Distributable Software. Adobe will only specify protection mechanisms that are commonly used in the software industry. The protection mechanism for Font Programs for Japanese, Korean and Chinese Typefaces will be provided to EFI by Adobe or other third parties and may include encryption as well as Copy Protection. “Copy Protection” shall mean a mechanism that ensures that the applicable EFI Product will implement a unique read-only PostScript Language LicenseID parameter keyed to each font configuration. When Adobe or its supplier supplies the protection mechanism, EFI will use all reasonable means to ensure that such protection mechanism is not removed, subverted or disabled. If Adobe reasonably believes that there is unlicensed use of the Distributable Software caused by a violation of the protection mechanism, EFI will resolve the protection problem within 60 days of detailed notification. If the End User Product is located in a network environment with Distributable Software located on a server, EFI will employ a protection mechanism that permits the End User access to Distributable Software only if such use is permitted by a license from EFI or its Remarketer Customers.

2.4 Replacement of Defective Product. EFI shall have the right to distribute royalty-free copies of Replacement Software either directly or through its Remarketer Customers or Authorized Third Parties, solely for the purpose of replacing defective EFI Product. EFI will use commercially reasonable efforts to ensure that such Replacement Software is used solely for the purpose of servicing defective EFI Product and that all such replaced copies of the Distributable Software are not reused. Replacement Software supplied for the purpose of servicing a defective EFI Product shall be on a “like-for-like” basis. Other than for replacement of defective EFI product, EFI acknowledges that it has no right to grant to its Remarketer Customers or to Authorized Third Parties the right to reproduce the Distributable Software contained in the Replacement Software. All distribution of Replacement Software by EFI shall be royalty-free and EFI shall account for each shipment of Replacement Software in the reports submitted under Section 8.7 (“ Reporting ”).

 

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2.5 Clone Products. EFI agrees that it will not in any way use Adobe Deliverables, including any test files, in the development or testing of Clone Products nor will it distribute Adobe Deliverables in conjunction with Clone Products. Any prohibition contained in this Agreement applicable to Clone Product development and distribution shall apply equally to raster-output devices, display or screen output devices, or any other peripheral devices.

2.6 Adobe Licensors. Worldwide license rights granted herein by Adobe to the Adobe Deliverables except for the Other Technologies (as defined below) shall be deemed granted by Adobe Systems. License rights granted herein to the Other Technologies by Adobe (a) in the United States, Canada and Mexico shall be deemed granted by Adobe Systems, and (b) outside of the United States, Canada and Mexico shall be deemed granted by Adobe Ireland. Other Technologies shall be deemed to consist of PDF Libraries, PDF Trapping Library, Normalizer and JDF SDK.

2.7 Evaluation Units. An “ Evaluation Unit ” means a Roman Version of an EFI Product, that includes (i) a time-bomb or other similar routine or mechanism designed to disable use of such Evaluation Unit after a trial period of reasonable length (not to exceed one year), or (ii) a prominent watermark placed on every page of output generated by the Evaluation Unit. EFI agrees that it will not, and will use commercially reasonable efforts to ensure that recipients of the Evaluation Units will not, circumvent, override, or otherwise extend or bypass the applicable restrictions included in such Evaluation Units.

2.7.1 So long as the Adobe is the licensor of the Roman fonts to EFI, EFI shall pay Adobe the sum of [*] per year for the right to distribute, either directly or through Remarketer Customers up to [*]

2.7.2 EFI agrees that it will pay Adobe the applicable fees in accordance with Section 8 (“ Payments ”) of the Agreement for all Evaluation Units that have been converted from trial to commercial use. An “Evaluation Unit” becomes a commercial use unit for which EFI shall pay Adobe the royalties specified in the Agreement when the conditions set forth in Section 8.9 have been satisfied. Upon incurring an obligation to pay Adobe such royalties, the applicable Evaluation Unit shall be converted to a fully functioning End User Product on which the restriction permitting use for evaluation purposes only shall no longer apply. EFI shall maintain adequate records on the number of Evaluation Units shipped and number converted to commercial use and will provide such information to Adobe as part of the quarterly reporting required by Section 8.7 (“ Reporting ”). Such records may also be inspected as part of any audit conducted by Adobe pursuant to this Agreement.

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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2.7.3 With respect to each Evaluation Unit, except as otherwise permitted herein, EFI shall comply with, and shall require its Remarketer Customers to comply with, all applicable terms and conditions of the Agreement. Unless Evaluation Units are converted to a commercial unit, Evaluation Units are provided AS IS, without any warranty, express or implied. Adobe will have no liability to EFI for any alleged or actual patent, copyright, trade secrets, and any other intellectual property or proprietary rights infringement or misappropriation claim, suit, or action arising from or related to the Evaluation Units. Adobe will have no obligation to provide any support, maintenance, or any other services for the Evaluation Units, but shall provide, upon payment of applicable fees, support, maintenance, or any other services as provided for in this Agreement, if and when, such units are converted to commercial use.

2.7.4 EFI shall ensure that any Evaluation Unit that is not converted into a commercial version of an End User Product is returned to EFI or Remarketer Customer promptly after the trial period has expired or is made inoperable.

2.8 Quality Assurance Copies. EFI shall be permitted to internally use [*] copies of each of the Adobe application products for each [*] and for each [*] in which such products have been developed strictly for the purpose of quality control testing with EFI products, such Adobe application products to be determined by Adobe in its reasonable discretion. For Adobe Acrobat, Adobe will provide [*] copies. Additional copies may be requested from the Adobe account manager.

2.9 Remarketer Customers. This Agreement allows EFI to sublicense certain rights that EFI possesses hereunder to EFI’s Remarketer Customers. Such sublicenses shall be consistent with the terms and conditions of this Agreement.

3. MODIFICATIONS TO ADOBE DELIVERABLES.

3.1 Modifications by Adobe. EFI may request modifications to Adobe Deliverables in writing describing the modifications EFI wishes Adobe to make and the reasons why the modifications are needed. Adobe and EFI will discuss proposed business terms of this custom development, including, without limitation, the scope of work, technical specifications, ownership and licensing rights, milestone schedule and pricing, but Adobe in its sole discretion may accept or deny such a request. Any custom development work performed by Adobe for EFI shall be pursuant to a separate written agreement between the parties.

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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3.2 Modifications by EFI. EFI may make modifications to any of the Adobe Deliverables that are provided to EFI in source code form, except for Core Source, to which no modifications may be made. Ownership of such modifications shall vest in EFI, subject to Adobe’s ownership rights in the Adobe Deliverables. Both parties agree to execute the assignments or other documents and take reasonable actions requested by the other party to evidence the foregoing ownership rights. If EFI requests that Adobe assist in any troubleshooting that involves modifications to Adobe Deliverables made by EFI, EFI grants such rights (including the right to copy and internally distribute) to Adobe as are reasonably necessary for Adobe to provide such assistance and solely for the purpose of troubleshooting the EFI modifications and for no other use.

4. ADOBE DELIVERABLES AND ACCEPTANCE.

4.1 Adobe Deliverables. Adobe Deliverables Appendix No. 1, attached as EXHIBIT F ( Adobe Deliverables Appendix No. 1”), covers the prior Adobe Deliverables provided to EFI, including the PostScript Software supplied to EFI on a Reference Port basis. For any future Adobe Deliverables provided to EFI, Adobe will provide such deliverables by the following method:

4.1.1 Upon the request of EFI for a particular Adobe Deliverable that EFI is entitled to hereunder, Adobe will prepare an Adobe Deliverables Appendix and present it to EFI for signature. Upon receipt of a copy of the Adobe Deliverables Appendix signed by EFI, Adobe will provide the Adobe Deliverable to EFI either by (a) providing the Adobe Deliverable on a tangible medium, such as a CD, or (b) making the Adobe Deliverable available to EFI electronically through the Download Site. Notwithstanding the foregoing, an Adobe Deliverables Appendix will not be required if the Adobe Deliverable being requested is a patch, Update or release provided pursuant to Adobe’s Maintenance obligations.

4.1.2 For Adobe Deliverables that are supplied to EFI in electronic form, specified individuals at EFI who are Authorized Employees or Authorized Contractors (as defined in EXHIBIT K-1 (“ Secure Procedures for Handling Adobe Support Information ”)) may access the Download Site where the deliverables are available for download. Such individuals will be provided a password that may not be used by any person other than the one to which it was issued.

4.1.3 By its downloading or acceptance of delivery of the Adobe Deliverables, EFI agrees that its use of such Adobe Deliverables shall be governed by the terms of this Agreement and the additional terms, if any, set forth on the Adobe Deliverables Appendix.

4.2 Acceptance. EFI shall be deemed to have accepted the Adobe Deliverables upon receipt thereof. EFI’s recourse, if any, for any errors in the Adobe Deliverables shall be as set forth in Section 9 (“ Performance Warranty ”).

4.3 Maintenance. For each Reference Port and associated Adobe Deliverables supplied to EFI hereunder or other Adobe Deliverables for which Adobe provides Maintenance (as indicated on the Adobe Deliverables Appendix, which may not include all Adobe Deliverables), Adobe shall provide the Maintenance described in EXHIBIT G (“ Maintenance ”), for which EFI shall pay an annual Maintenance fee, if required in accordance

 

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with Section 8.1 (“ License and Maintenance Fees ”). Notwithstanding anything to the contrary on a Deliverables Appendix, Maintenance will always be provided for the standard versions of a Reference Port if applicable fees are paid. No Maintenance fees will be due if Adobe chooses to discontinue providing Maintenance for any such Reference Port or if EFI is no longer using the Reference Port, provided that pre-paid Maintenance fees will not be refunded. Unless otherwise agreed to in writing, Adobe shall have no obligation to provide Maintenance for any “Customized Versions” of the PostScript Software. A “Customized Version” of the PostScript Software is one that includes any changes made by EFI or by Adobe on behalf of EFI to the standard Reference Port (i.e., the version of the Reference Port that Adobe generally makes available to its OEM customers). The foregoing shall not be deemed to relieve Adobe of its obligation to provide Maintenance for the Reference Port from which a Customized Version was developed. Q

5. DEVELOPMENT, TESTING, CERTIFICATION AND UPDATING OF EFI PRODUCTS.

5.1 EFI Development Responsibilities . EFI shall be responsible for (a) creating modifications to the Adobe Support Information to the extent permitted herein to create Revised Object fully adapted for use as part of an EFI Product and suitable for distribution to End Users as part of an End User Product, and (b) promptly updating the Revised Object with any Updates or Error corrections it receives pursuant to EXHIBIT G (“ Maintenance ”). With the written consent of Adobe, EFI may elect not to update any Revised Object for an EFI Product that is undergoing development at the time of delivery of an Update. Adobe’s sole responsibility in connection with the above shall be to provide the Maintenance described in EXHIBIT G (“ Maintenance ”) and as paid for by EFI if such payment is required.

5.2 Testing and Certification of Revised Object and Proposed Designated Output Devices. EFI will test each End User Product using the Adobe Certification Test Suite and provide the test results to Adobe. EFI must obtain certification from Adobe for each End User Product (including any previously certified End User Product where the Revised Object is subsequently modified by EFI) in accordance with the procedures in EXHIBIT J (“ EFI Product Test Procedures ”). EFI shall not begin Commercial Shipment of any EFI Product prior to certification by Adobe of such EFI Product. Adobe will provide EFI ten copies (per platform and per applicable language) of each of the Adobe software applications needed for testing purposes free of charge. EFI shall not use such software for anything other than testing.

5.3 Loaned Equipment. In the event of a reasonable need for independent certification testing by Adobe, EFI shall loan Adobe all reasonably necessary equipment as requested by Adobe for this sole purpose. All equipment loaned by EFI to Adobe shall remain the property of EFI, shall be fully insured by Adobe, and shall be returned to EFI at its request after termination of Adobe’s testing activities hereunder. EFI shall pay all reasonable shipping and other costs (including, without limitation, custom fees and duties, if any) resulting from delivery of such loaned equipment to Adobe at its facilities in the San Francisco Bay Area (including San Jose). Any loaned equipment shall be returned to EFI by Adobe, shipping, insurance and any other applicable costs prepaid by EFI. EFI shall select the delivery method and carrier. While in the possession of Adobe, the loaned equipment shall be maintained by EFI in good working order. Adobe is responsible for and liable to EFI for damage to the equipment other than normal wear and tear.

 

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5.4 Updating of EFI Products. EFI shall use commercially reasonable efforts to have the initial release of each EFI Product contain the then current version made available to EFI of the Distributable Software that is included with such EFI Product. For subsequent versions of EFI Products and in accordance with EFI’s normal release schedules, EFI, on the initial release date of such subsequent version, will include the most current version made available to EFI of the Distributable Software provided that such Distributable Software can be integrated with the EFI Product with minimal engineering effort on the part of EFI. Upon the request of EFI’s customers or in accordance with its normal release schedules, EFI will also send out patch updates to its customers with newly released Distributable Software provided that such Distributable Software can be integrated with the EFI Product with minimal engineering effort on the part of EFI.

6. PROPRIETARY RIGHTS AND LEGENDS. EFI acknowledges Adobe’s representation that Adobe and its suppliers are the sole and exclusive owners of all rights, title and interest, including all trademarks, copyrights, patents, trade names, trade secrets, and other intellectual property rights to the Adobe Deliverables. Except for the rights expressly enumerated herein, EFI is not granted any rights to patents, copyrights, trade secrets, trade names, trademarks (whether or not registered), or any other rights, franchises or licenses with respect to the Adobe Deliverables. EFI agrees that it will not exceed the scope of the licenses granted herein, including the limitation imposed on EFI with respect to its right to modify the Adobe Support Information. EFI agrees to protect the Adobe Support Information in accordance with EXHIBIT K-1 (“ Secure Procedures for Handling Adobe Support Information ”). In addition, EFI agrees that it shall permit the handling, use and storage of Core Source only by its Authorized Employees (as defined in EXHIBIT K-2 (“ Additional Secure Procedures for Handling Adobe Core Source ”)) and only at a Primary Development Site and it shall protect such Adobe Core Source in accordance with EXHIBIT K-2 (“ Additional Secure Procedures for Handling Adobe Core Source ”) of this Agreement.

6.1 Proprietary Notices. EFI agrees that each copy of an EFI Product that contains Adobe Deliverables shall contain the same proprietary notices of Adobe and its suppliers that appear on or in such Adobe Deliverables as provided by Adobe to EFI and as otherwise reasonably required by Adobe. More specifically, EFI agrees that a valid Adobe copyright notice (and/or a supplier copyright notice as specified by Adobe) for the Revised Object, Font Programs and Host Software will be replicated on the applicable media in the following format or such other format as Adobe specifies by written notice to EFI:

 

(a)

the name of the program,

 

(b)

the word “Copyright” and the circled-c symbol © ,

 

(c)

the date of first publication of the Adobe-supplied software, and

 

(d)

the name of the copyright owner and the words “All Rights Reserved”.

6.2 U.S. Government End Users. When distributing an EFI Product to a U.S. Government End User, EFI shall identify or require its Remarketer Customer to identify the

 

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Revised Object, Font Programs, Host Software and related documentation in the EFI Product as a “commercial item,” as that term is defined at 48 C.F.R. 2.101, and more specifically shall be identified as “commercial computer software” and “commercial computer software documentation,” as such terms are used in 48 C.F.R. 12.212. Consistent with 48 C.F.R. 12.212 and 48 C.F.R. 227.7202-1 through 227.7202-4, EFI or Remarketer Customer (as applicable) will provide the Revised Object, Font Programs, Host Software and related documentation to U.S. Government End Users (a) only as a commercial end user item and (b) with only those rights as are granted to all other End Users pursuant to the terms and conditions herein and the terms and conditions set forth in Adobe’s standard end-user license agreement.

6.3 Foreign Government Agreements. EFI will take or require its Remarketer Customers to take all commercially reasonable steps in making proposals and agreements with foreign governments other than the United States which involve the Distributable Software and related documentation to ensure that Adobe’s proprietary rights in such Distributable Software and related documentation receive the maximum protection available from such foreign government for commercial computer software and related documentation developed at private expense.

6.4 Residuals Clause. In the course of this Agreement either party may be exposed to intellectual property belonging to the other party (“IP”). Ideas, concepts and know-how contained in a party’s IP that are retained in the unaided memories of employees of the other party may be used by such other party for its own business purposes, provided that such employees do not deliberately seek to remember the information. The foregoing is not intended to (a) grant a copyright or patent license to a party for the other party’s IP, (b) grant a license to a party to recreate any of the other party’s IP or significant portions, features or elements thereof, (c) supersede any obligations of confidentiality contained herein, or (d) relieve EFI of any obligations with respect to the handling of Adobe Support Information or Adobe Core Source, as set forth in Exhibits K-1 and K-2, respectively.

7. MARKETING OF EFI PRODUCTS; [*].

7.1 [*] Adobe and EFI agree to work together to [*] Adobe will make reasonable efforts to [*] where the Adobe print business [*]. Likewise, EFI will make reasonable efforts to [*] where EFI is [*] Notwithstanding the foregoing, neither party shall be in breach of this Section 7.1 if it decides in good faith and for valid business reasons that it cannot [*].

7.2 EFI’s Use of Adobe Trademarks in Press Releases and other Publications . EFI agrees to comply with the requirements set forth in EXHIBIT I (“ Use of Adobe Trademarks ”) when referencing Adobe Deliverables as part of an EFI Product in any press release or any other publication.

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

7.3 Review of Press Releases. Each party will provide the other a reasonable opportunity to review any press releases or announcements that reference the other party or its products before such releases or announcements are made and will make such reasonable changes as the referenced party may request.

 

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7.4 Marketing of Clone Products. EFI agrees that it will not market any Clone Products in a fashion likely to cause consumer confusion as to the source or Adobe’s sponsorship or approval of such products.

7.5 Adobe Trademarks and Attribution in EFI Products. EFI shall include on the packaging of EFI Products a phrase substantially similar to “This product contains Adobe Technology” and may include an Adobe logo or an Adobe Trademark. The choice and location, so long as consistent with Adobe’s Trademark Usage Guidelines, of the attribution is in the sole discretion of EFI. This obligation does not in any way relieve EFI of any other trademark attribution requirements or the proper and prescribed use of Adobe trademarks or service marks. If EFI notifies Adobe that it is impractical to comply with this Section 7.5 in a particular circumstance and requests that Adobe waive such compliance, Adobe will consider the request in good faith.

7.6 [*]

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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8. PAYMENTS.

8.1 [*]

8.2 [*]

8.3 [*]

8.4 [*]

8.5 Taxes. In addition to any other payments due under this Agreement, EFI agrees to pay, and to indemnify and hold Adobe harmless from, any sales, use, excise, import or export, value added or similar tax or duty not based on Adobe’s net income, including any penalties and interest, as well as any costs associated with the collection or withholding thereof, and all governmental permit fees, license fees and customs and similar fees levied upon the delivery by Adobe of the Adobe Deliverables, which Adobe may incur in respect of this Agreement. If a resale certificate or other certificate or document of exemption is required in order to exempt all or any of the Adobe Deliverables from any such tax liability, EFI will promptly furnish it to Adobe. All withholding tax certificates, documents, application forms, etc., should be forwarded to the following address, or such other address as provided by Adobe: Adobe Systems Incorporated, Attention: Tax Department, 345 Park Avenue, San Jose, California, 95110-2704.

8.6 Payment of Royalties. All royalties due Adobe from EFI hereunder shall be paid in U.S. Dollars within forty-five (45) days after the end of each calendar quarter. Payment shall be by wire transfer directly to:

[*]

EFI shall notify Adobe within twenty-four (24) hours of instructing a bank to make a wire transfer to Adobe for payments due hereunder and provide Adobe with receipts issued by the bank to verify that payment by wire transfer has occurred.

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

Any undisputed amounts not paid when due hereunder shall bear interest at a rate which is the lesser of the “Applicable Rate” divided by 12 or the maximum rate allowable under applicable law, until the overdue amount, plus applicable interest is paid in full. The Applicable Rate is the prime interest rate published by the Bank of America, N.A. plus two percentage points.

 

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8.7 Reporting. Within [*]days after [*], EFI will provide a detailed report to Adobe in substantially the form set forth in [*] (“ Royalty Report Format ”) and which contains sufficient [*] to allow Adobe to independently calculate the royalties due Adobe. The report shall include a legible summary broken out by [*] EFI shall ensure that its confidentiality or non-disclosure agreements with its customers do not contain any clauses that would prohibit EFI from disclosing to Adobe any [*] received by EFI from such customers. The Royalty Reports shall be sent to the following address, or such other address as provided by Adobe: Adobe Systems Incorporated, Attention: Kelly Denevan, M/S W13, 345 Park Avenue, San Jose, California, 95110-2704, or may be sent by email to kdenevan@adobe.com .

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

8.8 Right of Audit. EFI shall maintain a complete, clear, accurate record of: (a) the number, Product Segment and type and/or model name of EFI Products and End User Products, Gross Receipts earned and royalties due Adobe for each Product Segment during a calendar quarter, (b) the number of copies of Host Software distributed by EFI during the quarter, (c) the number of Font Programs by Typeface distributed by EFI during the quarter and (d) any other information required to determine whether EFI is paying the correct royalty amount hereunder,

 

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including detailed information regarding the basis for any credits taken by EFI. Such records shall be maintained in a manner sufficient to enable Adobe to audit a period three (3) years back from the date of notice by Adobe of its intent to audit. Solely to ensure compliance with the terms of this Agreement, Adobe shall have the right to conduct an inspection and audit of all the relevant accounting and sales books and records of EFI during regular business hours at EFI’s offices and in such a manner as not to interfere with EFI’s normal business activities. An independent auditor, preferably from among KPMG, Deloitte & Touche, PriceWaterhouse Coopers or Ernst & Young, acceptable to both parties and paid by Adobe, will conduct the audit. The audit firm shall execute EFI’s nondisclosure agreement and other reasonably requested forms with respect to use of EFI’s confidential information. The auditor shall be required to agree to keep confidential from Adobe or any third party all Confidential Information of EFI learned during the course of the audit. Opinions and findings of the auditors concerning the royalties due Adobe shall not be kept confidential from Adobe. Prior to the disclosure of any documents (for example, product information and bills of materials) to Adobe, the auditor shall first seek EFI’s prior approval to release specified document(s) and/or relevant information within a document(s); such approval shall not be unreasonably withheld. In no event shall audits be made more frequently than once per year or of previously audited quarters. If such inspections should disclose any underreporting, EFI shall promptly pay Adobe such amounts, together with interest on past due amount at the Applicable Rate annually from the date on which such amount became due to Adobe from EFI. Furthermore, if the inspection discloses underreporting exceeding seven percent (7%), EFI shall pay the reasonable cost of the audit. In the event of a dispute relating to the audit inspection, the parties shall follow the process described in Section 15 (Resolution Procedures). Adobe’s rights and EFI’s obligations under this Section 8.8 (“Right of Audit”) shall survive termination of this Agreement for a period of two (2) years from the last day of the final period for which royalties are reported.

8.9 When Royalties Earned. The royalties due hereunder for EFI Products or any royalty-bearing component of an End User Product shall be earned by Adobe when EFI recognizes for GAAP accounting reporting purposes income derived from the sale or distribution of such EFI Product, whether prior to or following termination or expiration of this Agreement.

8.10 Resolution of Disputes Concerning Royalty [*] . In good faith EFI will assign each EFI Product to the applicable Product Segment each quarter. [*]. EFI shall respond to Adobe’s written request within 10 business days, absent a mutually agreed extension, and provide Adobe with any requested additional sales information. Adobe will then have 10 business days, absent a mutually agreed extension, to make an independent determination as to [*] such sales. If Adobe disagrees with such determination by EFI, Adobe will inform EFI in writing within the 10 business days, absent a mutually agreed extension, that it continues to disagree with [*]. EFI and Adobe will attempt in good faith to agree on [*] of such sales and the parties’ representatives will meet in person to discuss the [*] within 10 business days of Adobe’s notice of disagreement, absent a mutually agreed extension. If the initial meeting does not produce an agreement, then the procedure shall escalate as follows. Within 5 business days, EFI and Adobe’s representatives shall prepare letters setting forth their respective positions, of no longer than 3 pages, and such letters shall be exchanged between the CFOs of both companies. Within 5 business days of the exchange, the CFOs shall then meet in person to resolve the [*]. The parties will be guided by how the EFI Products at issue are perceived by the applicable industry and End User community. If either party fails to comply with the procedures as outlined above, the dispute shall be decided in favor of the other party, if in compliance.

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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8.11 EFI’s Continuing Obligation to Pay Royalties. EFI acknowledges that the grant of the right to use Remarketer Customers to distribute Adobe Deliverables as part of an End User Product or Software Upgrades or as Replacement Software does not in any way affect EFI’s obligation to account for and pay all royalties, if any, for such Adobe Deliverables distributed by such Remarketer Customers.

9. PERFORMANCE WARRANTY.

9.1 Software Warranties. Adobe warrants that for a period of ninety (90) days from EFI’s acceptance of PostScript Software pursuant to Section 4.2 (“ Acceptance ”), the PostScript Software will execute substantially in accordance with the PostScript Language Specification using the development environment specified by Adobe. Unless specified in writing by Adobe, all other Adobe Deliverables are provided without warranty of any kind and strictly “AS IS.” For those Adobe Deliverables that Adobe expressly indicates in writing as having a warranty (the “Warrantable Adobe Deliverables”), Adobe warrants that such deliverables will execute substantially in accordance with the functional specifications for such deliverables, as specified in the applicable Adobe Deliverables Appendix or other written document provided to EFI, for a period of ninety (90) days from EFI’s acceptance of such component pursuant to Section 4.2 (“ Acceptance ”). Each such ninety (90) day period is referred to as a “Warranty Period.” If, during the applicable Warranty Period, EFI reports to Adobe a failure of such PostScript Software or Warrantable Adobe Deliverables to conform to the foregoing warranty and provides such detail as Adobe may require to permit Adobe to reproduce such failure, Adobe, at its expense, shall use reasonable commercial efforts to modify or replace the PostScript Software or Warrantable Adobe Deliverables in a timely manner to correct such failure. EFI acknowledges that the Warranty Period for any PostScript Software or other Adobe technology, software or documentation delivered to EFI under the Adobe Deliverables Appendix No. 1 has expired.

9.2 Limitations on Warranties. EFI acknowledges that the Adobe Support Information provided by Adobe to EFI hereunder will require adaptation by EFI for use in EFI Products based on hardware and operating systems which differ from the development environment specified by Adobe. THE WARRANTIES SET FORTH IN SECTION 9.1 (“ SOFTWARE WARRANTIES ”) STATE ADOBE’S SOLE AND EXCLUSIVE WARRANTY TO EFI CONCERNING THE ADOBE DELIVERABLES AND EFI’S SOLE AND EXCLUSIVE REMEDY FOR BREACH OF WARRANTY. EXCEPT AS EXPRESSLY SET FORTH IN SECTION 9.1 (“ SOFTWARE WARRANTIES ”), ADOBE MAKES NO ADDITIONAL WARRANTIES, EXPRESS, IMPLIED, ARISING FROM COURSE OF DEALING OR USAGE OF TRADE, OR STATUTORY, AS TO THE ADOBE DELIVERABLES OR ANY MATTER WHATSOEVER. IN PARTICULAR, ANY AND ALL WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT ARE EXPRESSLY EXCLUDED. EFI SHALL NOT HAVE THE RIGHT TO MAKE OR PASS ON, AND SHALL TAKE ALL MEASURES NECESSARY TO ENSURE THAT NEITHER IT NOR ANY OF ITS AGENTS, REMARKETER CUSTOMERS OR EMPLOYEES SHALL MAKE OR PASS ON, ANY EXPRESS OR IMPLIED WARRANTY OR REPRESENTATION ON BEHALF OF ADOBE OR ITS THIRD PARTY SUPPLIERS TO ANY REMARKETER CUSTOMER, END USER, OR THIRD PARTY.

 

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10. EFI SUPPORT OF END USERS. EFI or its Remarketer Customers will have the sole responsibility for supporting End Users and for providing End Users with reasonable End User Documentation, warranty service, and telephone support for the use of EFI Products and End User Products consistent with good industry practice.

11. PROPRIETARY RIGHTS INDEMNITY.

11.1 By Adobe.

11.1.1 Adobe Deliverables. Subject to the limitations set forth below and compliance with Section 11.3 (“ Conditions and Limitations on Indemnity ”), Adobe will indemnify and defend EFI from any lawsuit filed by a third party (an “Infringement Claim,” which shall also be deemed to include for the purposes of Section 11.2 claims made against Adobe by third parties) in which it is claimed that the uses permitted hereunder of the Adobe Deliverables infringe any patent, copyright, or trademark in the countries listed in EXHIBIT P (the “ Permitted Countries List ”), [*]. Adobe shall pay all claims, demands, damages, liabilities, fines and penalties assessed or awarded against EFI by a court in connection with such Infringement Claim after a final nonappealable judgment has been granted by the court to third parties against EFI strictly attributable to the alleged infringement by the Adobe Deliverables. Adobe shall pay the amount agreed to in settlement, but Adobe shall not be responsible for any compromise or settlement made without Adobe’s written consent. Adobe’s maximum liability to EFI under this Section 11.1.1 (cumulating amounts paid in defending and settling all claims) shall be [*]

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

11.1.2 Other Remedies . Without limiting Adobe’s obligations under Section 11.1.1 (“Adobe Deliverables”), in the event any Infringement Claim is made by a third party or, in Adobe’s sole judgment, is likely to be made, Adobe may, at its discretion, either (a) procure for EFI the right to continue to use the Adobe Deliverables, as such use is specifically provided for in this Agreement, (b) replace, in whole or in part, such portions of the Adobe Deliverables that are or are likely to be the subject of such Infringement Claim with substantially comparable non-infringing code, (c) modify the Adobe Deliverables to avoid infringement. The parties shall consult with each other in good faith to consider the relative burdens to each party in selecting one of the options set forth in subsection (a) through (c) above.

 

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11.1.3 Exclusive Remedy . THE RIGHTS GRANTED TO EFI UNDER SECTION 11.1 SHALL BE EFI’S SOLE AND EXCLUSIVE REMEDY AND ADOBE’S SOLE OBLIGATION FOR ANY ALLEGED INFRINGEMENT OF ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER PROPRIETARY OR INTELLECTUAL PROPERTY RIGHT BY ANY OF THE ADOBE DELIVERABLES. ADOBE WILL HAVE NO LIABILITY TO EFI FOR ANY INFRINGEMENT OR CLAIM OF INFRINGEMENT TO THE EXTENT THE INFRINGEMENT OR CLAIM OF INFRINGEMENT RESULTS FROM (A) MODIFICATION OF THE ADOBE DELIVERABLES BY EFI OR ANY THIRD PARTY, (B) USE OF THE ADOBE DELIVERABLES IN CONNECTION OR IN COMBINATION WITH EQUIPMENT, DEVICES, OR SOFTWARE NOT CERTIFIED BY ADOBE, (C) USE OF ANY ADOBE DELIVERABLES OTHER THAN AS PERMITTED OR IN A MANNER NOT INTENDED UNDER THIS AGREEMENT OR (D) USE OF OTHER THAN THE MOST CURRENT RELEASE OF THE ADOBE DELIVERABLES AT THE TIME OF INFRINGMENT (IF SUCH CLAIM WOULD HAVE BEEN PREVENTED BY THE USE OF SUCH RELEASE). The foregoing subsection (D) shall not affect claims made against EFI alleging infringing use of the Adobe Deliverables in EFI Products and End User Products distributed prior to the date Adobe made available such current release to EFI.

11.2 By EFI

11.2.1 EFI Product. Except for claims alleging infringement by the Adobe Deliverables and subject to the limitations set forth below and compliance with Section 11.3 (“ Conditions and Limitations on Indemnity ”), EFI agrees to indemnify and defend Adobe from any lawsuit filed by a third party in which it is claimed that the use, manufacture, and distribution of EFI Products and End User Products by EFI or its Remarketer Customers infringes or violates any (a) patent, copyright or trademark in the countries listed in EXHIBIT P (the “ Permitted Countries List ”), or (b) license between Adobe and its licensors for intellectual property sublicensed to EFI hereunder. EFI shall pay all claims, demands, damages, liabilities, fines and penalties assessed or awarded against Adobe by a court in connection with such Infringement Claim after a final nonappealable judgment has been granted by the court to third parties against Adobe that is strictly attributable to the alleged infringement by the EFI Products or End User Products or breach of the license between Adobe and its licensors for intellectual property sublicensed to EFI hereunder. EFI shall pay the amount agreed to in settlement, but EFI shall not be responsible for any compromise or settlement made without EFI’s consent. EFI’s maximum liability to Adobe under Section 11.2.1 (cumulating amounts paid in defending and settling all claims) shall be [ *]

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

11.2.2 Exclusive Remedy . THE RIGHTS GRANTED TO ADOBE UNDER THIS SECTION 11.2 SHALL BE ADOBE’S SOLE AND EXCLUSIVE REMEDY AND EFI’S SOLE OBLIGATION FOR ANY ALLEGED INFRINGEMENT OF ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER PROPRIETARY OR INTELLECTUAL PROPERTY.

11.3 Conditions and Limitations on Indemnity . To qualify for the indemnification, defense and payment set forth in this Section 11, the indemnified party must (a) give the indemnifying party prompt written notice of any such claim within the earlier of (i) fifteen (15) days after a director-level representative of the indemnified party or attorney in the indemnified party’s legal department first learns of any such Infringement Claim or (ii) ten (10) days after the serving on the indemnified party of a complaint for an Infringement Claim, (b)

 

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tender to the indemnifying party the defense or settlement of the Infringement Claim, and (c) cooperate with indemnifying party, at the indemnifying party’s expense, in defending or settling such Infringement Claim. Without the written consent of the other party, neither party shall admit to any fault or liability on the part of such other party in connection with an Infringement Claim.

12. TERM AND TERMINATION

12.1 Term. The initial term of this Agreement (“Initial Term”) is for five (5) years from the Effective Date. The Agreement may be terminated at any time for cause (as provided for in Section 12.2 below) or by the mutual written consent of the Parties. This Agreement will renew automatically at the conclusion of the Initial Term and each one year anniversary thereafter for additional one year periods, unless either party gives written notice of its intent to terminate at least 180 days prior to an upcoming anniversary date. After the Initial Term, either party may terminate the Agreement for any or no cause upon 120 days written notice. Notwithstanding the provisions of this Section 12 (“ Term and Termination ”), the parties agree that this Agreement may not be terminated pursuant to this Section 12 (“ Term and Termination ”) or under any other provision of this Agreement, under any circumstances, without first attempting to resolve the dispute, situation or circumstance giving rise to the possibility of such termination pursuant to Section 15 (“ Dispute Resolution” ).

12.2 Termination for Cause. In the event of a material breach by either party, the non-breaching party shall give written notice in accordance with the notice provisions hereof of the circumstances it alleges constitutes the breach and the actions it requests of the purportedly breaching party in order to cure. Upon receipt of the written notice, the purportedly breaching party shall have thirty (30) days to cure the breach. A party may terminate the Agreement at the end of such thirty (30) day period if the breach remains uncured. EFI shall be deemed in breach of this Agreement in the event of a material breach by one of EFI’s Remarketer Customers or sublicensees of any of the “Remarketer Obligations” imposed hereunder. A Remarketer Obligation is an obligation contained herein to which a Remarketer Customer is subject and which EFI has the responsibility to enforce. A breach of a Remarket Obligation shall be considered cured if the Remarketer Customer cures the alleged breach, or EFI terminates the sublicense with its Remarketer Customer.

12.3 Bankruptcy. This Agreement shall immediately and automatically terminate, without judicial intervention, if either party is declared bankrupt or files for bankruptcy, files for moratorium on payments of its debts or seeks any other similar relief, or if a party shall go into liquidation (other than for a voluntary liquidation for the purposes of merger, reconstruction or amalgamation) or enters into a scheme or voluntary arrangement with its creditors or becomes subject to an administration order or examinership or has a Trustee in Bankruptcy, Receiver or Examiner appointed over any of its property and assets or undergoes any proceeding analogous to any of the foregoing events. A party so affected shall notify the other party immediately if one of the foregoing events occurs.

12.4 Force Majeure. This Agreement may be terminated by either party immediately upon notice if any force majeure event substantially affecting the other party’s performance continues for ninety (90) days or more.

 

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12.5 Obligations on Termination or Expiration. Upon termination or expiration of this Agreement:

12.5.1 Licenses Terminated . The licenses granted pursuant to Section 2 (“ Scope of EFI’s Licenses ”), including those licenses whose terms are set forth in Exhibit A (“ Licensing Categories and Terms ”) shall terminate immediately.

12.5.2 Safeguarding of Proprietary Rights . After any termination or expiration hereof, EFI shall continue to be responsible for safeguarding the proprietary rights of Adobe and Adobe’s suppliers in accordance with this Agreement, including Section 6 (“ Proprietary Rights and Legends ”), EXHIBIT K-1 (“ Secure Procedures for Handling Adobe Support Information ”), and, if applicable, EXHIBIT K-2 (“ Additional Secure Procedures for Handling Adobe Core Source ”).

12.5.3 Return or Destruction of Adobe Deliverables . Except as otherwise provided in Section 12.5.4 (“ Continued Use by End Users ”), EFI will immediately discontinue use and distribution of, and return or destroy all copies of, Adobe Deliverables and other Adobe information or materials in its possession (including copies placed in any storage device under EFI’s control), except as set forth in Subsection 12.5.7 (“ Right To Sell Off Inventory ”). EFI shall warrant in writing to Adobe its return or destruction of all of Adobe’s proprietary information within thirty (30) days of termination or expiration.

12.5.4 Continued Use by End Users . End Users shall be permitted the continued and uninterrupted use of the Revised Object, Font Programs and Host 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.

12.5.5 Support and Maintenance; No Right to Sublicense . Notwithstanding the foregoing, EFI shall have the right to retain four copies of the Revised Object for five years after termination and use such Revised Object to the extent required for support and maintenance purposes but EFI shall have no right to sublicense or otherwise distribute the Revised Object or Font Programs or exercise any other rights with respect to such software except as specifically set forth in this Section. EFI shall immediately notify its Remarketer Customers that their sublicense to distribute any products or services that contain Adobe Deliverables has been terminated.

12.5.6 Termination of Remarketer Customer Agreement. Upon termination of the Agreement, (i) EFI’s agreements with the Remarketer Customers shall terminate; (ii) Remarketer Customers’ rights to distribute the Distributable Software will terminate, but the Remarketer Customers’ sublicensees shall be permitted the uninterrupted use of the Adobe Deliverables for the balance of the term of their respective End User Agreement, provided that, and for so long as, they are not in default of such agreement; and (iii) Remarketer Customers’ rights upon default of the applicable End User Agreements shall be automatically assigned to Adobe.

12.5.7 Right to Sell-Off Inventory . In the event of termination or expiration of this Agreement other than pursuant to Section 12.2, EFI shall have six (6) months from the effective date of termination to distribute any inventory of EFI Products and Software

 

25

Upgrades in existence at the time of such termination provided that EFI continues to make all payments and provide all reports to Adobe in accordance with Section 8 (“ Payments ”) and to observe all other terms and conditions imposed on EFI hereunder with respect to distribution of the Revised Object, Font Programs and Host Software. In the event of termination of the Agreement pursuant to Section 12.2, it shall be at Adobe’s sole discretion whether EFI may continue to distribute existing inventory and the terms, if any, pursuant to which such distribution may occur.

12.5.8 Other Surviving Provisions. Section 1 (“ Definitions ”), Section 6 (“ Proprietary Rights and Legends ”), Section 8 (“ Payments ”), Section 9 (“ Performance Warranty ”), Section 10 (“ EFI Support of End Users ”), Section 11 (“ Proprietary Rights Indemnity ”), Section 12 (“ Term and Termination ”), Section 13 (“ Limitation of Liability ”), Section 14 (“ General ”), Section 15 (“ Dispute Resolution ”), Section 16 (“ Subsidiaries and Contractors ”), Section 19 (“ Confidentiality ”), EXHIBIT K-1 (“ Secure Procedures for Handling Adobe Support Information ”) and EXHIBIT K-2 (“ Additional Secure Procedures for Handling Adobe Core Source ”) shall survive any expiration or termination of this Agreement.

13. LIMITATION OF LIABILITY

13.1 Adobe. OTHER THAN AS PROVIDED FOR IN SECTION 11 (“ PROPRIETARY RIGHTS INDEMNITY ”) WITH RESPECT TO THIRD PARTY CLAIMS, NEITHER ADOBE NOR ITS SUPPLIERS WILL BE LIABLE TO EFI OR ANY OTHER PARTY FOR ANY LOSS OF USE, INTERRUPTION OF BUSINESS OR ANY INDIRECT, SPECIAL, PUNITIVE, 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 ADOBE OR SUCH SUPPLIER 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.

13.2 EFI. OTHER THAN AS PROVIDED FOR IN SECTION 11 (“ PROPRIETARY RIGHTS INDEMNITY ”) WITH RESPECT TO THIRD PARTY CLAIMS OR IN THE EVENT OF A BREACH OF SECTION 2 (SCOPE OF EFI’S LICENSES) OR OTHER PROVISIONS INTENDED TO PROTECT ADOBE’S RIGHTS IN ITS INTELLECTUAL PROPERTY (INCLUDING, BUT NOT LIMITED TO THE PROVISIONS IN EXHIBIT K-1 (“ SECURE PROCEDURES FOR HANDLING ADOBE SUPPORT INFORMATION ”) AND EXHIBIT K-2 (“ ADDITIONAL SECURE PROCEDURES FOR HANDLING ADOBE CORE SOURCE ”), EFI WILL NOT BE LIABLE TO ADOBE OR ANY OTHER PARTY FOR ANY INCIDENTAL, PUNITIVE, SPECIAL, OR CONSEQUENTIAL DAMAGES ARISING OUT OF ANY BREACH OF THIS AGREEMENT WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT PRODUCT LIABILITY OR OTHERWISE, EVEN IF ADOBE OR SUCH SUPPLIER HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

13.3 [*]

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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14. GENERAL

14.1 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 performed within California between California residents. The parties agree that the (a) United Nations Convention on Contracts for the International Sale of Goods, (b) Uniform Commercial Code and/or its implementing and/or successor legislation and/or regulations; and/or (c) the Uniform Computer Information Transactions Act and/or its implementing and/or successor legislation and/or regulations, as applicable respectively, are specifically excluded from application to this Agreement.

14.2 Forum, Attorneys Fees. All disputes arising under this Agreement may only be brought in Superior Court of the State of California in San Francisco, Santa Clara or San Mateo County or the Federal District Court for the Northern District of California, as permitted by law. Adobe and EFI consent to the personal jurisdiction of the above courts. In addition to any other relief, the prevailing party in any action arising out of this Agreement shall be entitled to reasonable attorney’s fees, expert witness fees, consultant fees, related litigation costs and expenses, costs and fees on appeal after a final nonappealable judgment has been entered by the court, as permitted by law and granted by the court.

14.3 Notices. All legal notices required under this Agreement shall be in writing and shall be delivered by personal delivery, facsimile transmission followed by a mailed copy, 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 by electronic transmission. Notices shall be sent to the signatories of this Agreement at the addresses set forth at the end of this Agreement or such other address as either party may specify in writing. If the legal notice is to Adobe, copies shall also be sent to the attention of Adobe’s General Counsel and to the Adobe Account Manager (currently Kelly Denevan). If the notice is to EFI, a copy shall also be sent to the attention of EFI’s General Counsel.

14.4 Injunctive Relief. The parties shall be entitled where appropriate under existing laws of contract as applied in matters concerning intellectual property or confidential information to seek timely injunctive relief to protect the parties’ rights under this Agreement in addition to any and all remedies available at law.

14.5 No Agency. In performing this Agreement, each of the parties will operate as, and have the status of, an independent contractor. This Agreement does not create any agency, employment, partnership, joint venture, franchise or other similar, special or exclusive relationship between the parties. Neither party will have the right or authority to assume or create any obligations or to make any representations, warranties or commitments on behalf of the other party or its Subsidiaries, whether express or implied, or to bind the other party or its Subsidiaries in any respect whatsoever.

 

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14.6 Force Majeure. Neither party shall be liable hereunder by reason of any failure or delay in the performance of its obligations hereunder on account of strikes, shortages, riots, insurrection, fires, flood, storm, explosions, acts of God, war, acts of terrorism, whether actual or threatened, acts of a public enemy, epidemics, quarantines, or other causes similar to those enumerated, governmental action, labor conditions, earthquakes, material shortages or any other cause which is beyond the reasonable control of such party, provided , however, that the party so affected shall promptly notify the other party of the force majeure event and use reasonable commercial efforts to avoid or remove such causes of nonperformance, and shall continue performance hereunder with reasonable dispatch whenever such causes are removed.

14.7 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.

14.8 Severability. In the event that any provision of this Agreement shall be unenforceable or invalid under any applicable law or decision, such unenforceability or invalidity shall not render the entire Agreement unenforceable or invalid. Instead such provision shall be changed and interpreted so as to best accomplish the objectives of such provision within the limits of applicable law or court decision.

14.9 Headings. The Section headings 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.

14.10 No Patent License. This Section, including subsection 14.10.1, shall survive termination or expiration of this Agreement. Notwithstanding any provisions to the contrary in the Immunity from Suit and Covenant Not to Sue (“ Immunity ”) between the parties dated July 30, 1996, the Immunity shall not affect this Section.

14.10.1 Adobe Patents. As used herein, “Adobe Patent Right” means any right arising under any United States or foreign patent issued to, assigned to, owned by, or exclusively licensed by Adobe, now or in the future, applicable to the Adobe Deliverables. [*]

14.10.2 [*]

 

*	Indicates that certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

14.11 Assignment. EFI may not assign this Agreement, nor may EFI assign, delegate or transfer any of its rights or obligations hereunder, including without limitation any assignment, delegation or transfer to EFI’s affiliate or in connection with a change of control of EFI, without the prior written consent of Adobe, which shall not be unreasonably withheld. EFI acknowledges and agrees that any refusal by Adobe to consent to a whole or partial assignment, delegation or transfer of EFI’s rights or obligations hereunder to a party that Adobe reasonably believes to be a competitor of Adobe’s PostScript or PDF business shall be deemed reasonable. Any attempted assignment without Adobe’s consent shall be void and of no effect and constitute a material breach of the Agreement. Adobe may freely assign this Agreement

 

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and any of its rights or obligations hereunder without the consent of EFI. Subject to the foregoing, this Agreement shall inure to the benefit of and be binding on the successors and permitted assigns of the parties hereto. Each party agrees that if it assigns or transfers this Agreement, it shall cause such successor, assignee, or transferee to assume all of its obligations hereunder. The foregoing shall not be deemed to prevent either party from using contractors in performing its obligations hereunder, provided that such party assumes full responsibility for all acts and omissions of such contractors.

14.13 Export. EFI 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 Adobe Deliverables and products produced therefrom. EFI agrees that it will not export or re-export the Adobe Deliverables or products produced therefrom in any form, without the appropriate United States and foreign governmental licenses. EFI agrees that its obligations pursuant to this section shall survive and continue after any termination or expiration of rights under this Agreement.

14.14 Full Power. Each party 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. Each party further acknowledges that it has read this Agreement, understands it, sought proper legal counsel and agrees to be bound by it.

14.15 Confidential Agreement. Neither party will disclose the royalty provisions this Agreement without prior written consent of the other party. However, either party may disclose the Agreement to the extent required by the terms of the Agreement, by law, by a government agency, or by judicial order from a court of competent jurisdiction. Such party shall promptly notifies the other party of such request for disclosure , where possible, and upon the other party’s request, cooperates to minimize the disclosure of such information and/or works with the other party to obtain a protective order prior to such disclosure.

14.17 Entire Agreement. This Agreement together with the exhibits, Certification Letters and appendices, completely and exclusively states the agreement of the parties regarding its subject matter. It 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 modified except by a subsequently dated written amendment or appendix signed on behalf of Adobe and EFI by their duly authorized representative and any provision of a purchase order purporting to supplement or vary the provisions hereof shall be void. In the event of any conflict between the terms of this Agreement and any appendix hereto, the terms of the appendix shall control for the EFI Product and the End User Product described therein.

14.18 Termination of All Prior PostScript Software Agreements. Except for the Collaboration Agreement entered into as of March 31, 2003 by Adobe, EFI and certain of their subsidiaries or affiliates, the parties agree that the agreements between Adobe and EFI that relate to Adobe PostScript Software (including those agreements listed below) (all together the “Prior Agreements”) to the extent not already terminated shall terminate effective immediately. In addition, the parties agree that all Adobe proprietary information supplied to EFI under the Prior Agreements and which is currently in EFI’s possession or control shall be

 

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treated as Adobe Deliverables under the terms of this Agreement and further, that any such Adobe proprietary information supplied to EFI in source code form or any derivative thereof shall be treated as Adobe Support Information under this Agreement.

List of Prior Agreements :

Custom PostScript Interpreter OEM License Agreement dated as of March 1, 1991, as amended to date, Appendix No. 1 dated March 3, 1991 and Appendix No. 2 dated June 11, 1993

PostScript Support Source and Object Code Distribution License Agreement dated as of September 12, 1995 and Reference Port Appendices No. 1 and No. 2 dated September 12, 1995 and December 6, 1996, respectively, and Licensed System Appendices No. 1 dated May 30, 1996, No. 2 dated February 28, 1997, No. 3 dated August 29, 1997, No. 4 dated December 17, 1997 and No. 5 dated May 13, 1998

Adobe Printer Driver Reproduction and License Agreement dated August 25, 1994, including Appendices No. 1-3 all dated August 25, 1994, Appendix No. 4 dated December 1, 1995, another Appendix No. 4 dated April 17, 1996 and Appendix No. 5 dated June 10, 1996 and the Adobe Driver Software for Macintosh and Windows Continuing Support Agreement dated August 25, 1994

Adobe Printer Driver Reproduction and License Agreement (OEM Version) dated as of November 1, 1996, as amended, and Driver Appendices No. 1-3 all dated August 15, 1996 (for AdobePS 3.0.1 for Microsoft Windows, AdobePS 4.1 for Microsoft Windows and PSPrinter 8.3.1 for Apple Macintosh, respectively), Appendix No. 4 dated November 1, 1996 (for PSPrinter 8.2.2J for Macintosh and ATMJ Software), and Appendix No. 5 dated December 2, 1996 (for AdobePS 4.1.1 for Microsoft Windows)

Adobe Brilliant Screens Technology License Agreement (ABS Toolkit) dated as May 30, 1996

Letter Agreement dated July 9, 1999 between Adobe and EFI

Letter Agreement Re: Adobe PostScript Royalties dated December 6, 2000 between Adobe and EFI

Temporary Assignment Agreement Between Electronics for Imaging, Inc. and Adobe Systems Incorporated

14.19 Prior Certification of EFI Products. The parties agree that the products listed in EXHIBIT N (“ Certified EFI Products ”) have been certified by Adobe and have been or are being distributed by EFI under the terms of the Agreement.

15. Dispute Resolution. For any disputes that may arise between the parties with respect to any technology issues, any support and service issues or any other matters reasonably related to this Agreement, the parties shall follow the procedures set forth herein. In the event of a dispute, either party may give the other party’s ombudsman written notice of

 

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its desire to invoke these procedures (“Dispute Notice”). The parties’ respective contacts specified in EXHIBIT S (“ Contacts ”) shall meet and discuss in good faith (A) all reasonable solutions and exercise all reasonable efforts to resolve disputes that are generally related to the business relationship contemplated by this Agreement within ten (10) business days after a party receives a Dispute Notice from the other party and (B) all disputes related to technical and support, issues that the parties’ respective technical and support contacts, as applicable, are unable to resolve, within the ten (10) business days after a party receives a Dispute Notice from the other party. If the ten (10) business days has elapsed and these business and ombudsman contacts are unable to resolve any general business relationship issue, or any technical or support issue escalated to them, those contacts shall bring such dispute to the attention of their respective executive level managers who may pursue any dispute resolution procedures they deem desirable in their own independent discretion. Notwithstanding the foregoing, if the dispute is not resolved within thirty (30) days of receipt by either party of a Dispute Notice, either party may exercise its termination rights under Section 12.2 (Termination) Pending resolution of any dispute related to this Agreement, each party shall continue their performance under this Agreement, including but not limited to providing support and software bug fixes and updates and the payment of all amounts due under this Agreement.

16. Subsidiaries and Contractors. This Agreement applies to EFI and to its Subsidiaries. EFI agrees to make all payments due Adobe under this Agreement for itself and its Subsidiaries. EFI guaranties the performance of its Subsidiaries and contractors of EFI or its Subsidiaries, of all of EFI’s obligations hereunder. For the purposes of this Agreement, any breach by a subsidiary or contractor of EFI of the provisions of this Agreement shall be deemed to constitute a breach by EFI.

17. Name Change. In the event that EFI changes its corporate name or corporate structure, EFI shall notify Adobe in writing at least ten (10) days prior to such name or structure change taking effect.

18. Financial Statements. If EFI should cease to be a publicly traded company, upon request from Adobe, EFI shall provide to Adobe as confidential information quarterly and/or annual audited financial statements including a balance sheet, income statement, statement of cash flow, relevant notes and/or credit references reasonably necessary for Adobe to ascertain the credit-worthiness of EFI.

 

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19. Confidentiality.

19.1 Definition of Confidential Information. “ Confidential Information ” means (A) any and all technical and non-technical information including patent, copyright, trade secret, and proprietary information, techniques, sketches, drawings, models, inventions, know-how, processes, apparatus, equipment, algorithms, software programs (including pre-release versions of software), ppd and driver files, software source documents, and formulae related to the current, future and proposed products and services of each of the parties, and includes, without limitation, each party’s respective information concerning research, experimental work, development, design details and specifications, engineering, financial information, procurement requirements, purchasing, manufacturing, customer lists, business forecasts, sales and merchandising, and marketing plans and information and (B) proprietary or confidential information of any third party who may disclose such information to either party in the course of the other party’s business; provided , however, that any information disclosed by the Discloser will be considered Discloser’s Confidential Information by the Recipient only if such information, (A) is provided as information fixed in a tangible medium of expression, is conspicuously designated as “Confidential” or “Proprietary”, or (B) would be reasonably understood, either from the nature of the information or the circumstances of disclosure, to be confidential or proprietary. “ Discloser ” means the party who discloses its own Confidential Information. “ Recipient ” means the party who receives the other party’s Confidential Information

19.2 Confidential Information Exclusions . Discloser’s Confidential Information shall not include any information which: (A) is or falls into the public domain without fault of the Recipient, (B) the Recipient can show was in its possession prior to receipt thereof from the Discloser, (C) the Recipient receives from a third party with no obligation of confidence to the Discloser, or (D) the Recipient independently develops without benefit, use or reference to any of Discloser’s Confidential Information.

19.3 Use of Confidential Information . Except (A) as expressly permitted or required in carrying out this Agreement, or (B) for such limited disclosures in confidence as may be reasonably necessary to either party’s attorneys and accountants, the Recipient shall not use Discloser’s Confidential Information or disclose Discloser’s Confidential Information to any third party, either during the term of this Agreement or thereafter, without the prior written consent of Discloser. Thus, Recipient may use Discloser’s Confidential Information only to perform its obligations under this Agreement.

19.4 Disclosure of Confidential Information to Employees and Contractors . Except as otherwise provided in or permitted by this Agreement, Recipient shall not use, reproduce, duplicate, copy, or otherwise disclose, distribute, or disseminate any part of Discloser’s Confidential Information except for internal use by employees (both regular employees and temporary employees), consultants or contractors of Recipient, on a need-to-know basis solely for the purposes permitted by this Agreement. Prior to disclosing Discloser’s Confidential Information to Recipient’s employees, consultants or contractors, Recipient shall have executed with such party an agreement that restricts use and disclosure of Discloser’s Confidential Information (or categories of Confidential Information which encompass Confidential Information) in a manner consistent with this Agreement. Recipient shall protect Discloser’s Confidential Information with the same degree of care used to protect Recipient’s own proprietary information of like importance, but in any case using no less than a reasonable degree of care.

 

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19.5 Required Disclosure . Nothing in this Agreement shall prohibit Recipient from disclosing Discloser’s Confidential Information if legally required to do so by judicial or governmental order or by deposition, interrogatory, request for documents, subpoena, civil investigative demand or similar process in a judicial or governmental proceeding (a “Required Disclosure” ); provided that Recipient shall (A) give Discloser prompt written notice of such Required Disclosure at least ten days prior to such disclosure, (B) cooperate with Discloser in the event that Discloser elects to contest such disclosure or seek a protective order with respect thereto, and (C) in any event only disclose the exact Confidential Information, or portion thereof, specifically requested by the Required Disclosure.

19.6 Ownership of Confidential Information . All Confidential Information shall remain the property of the respective Discloser and shall be returned to Discloser upon written request or termination of this Agreement for any reason, except as provided otherwise in this Agreement.

19.7 No Licenses or Warranties for Confidential Information . Except as otherwise provided in this Agreement, no license under any intellectual property right is granted or implied by the conveying of Discloser’s Confidential Information to Recipient. None of the Confidential Information which may be disclosed by Discloser shall constitute any representation, warranty, assurance, guarantee, or inducement by Discloser of any kind, and, in particular, with respect to the non-infringement of any intellectual property rights, or other rights of third persons or of Discloser.

 

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IN WITNESS WHEREOF, the parties hereto have caused this OEM Distribution and License Agreement to be executed by their duly authorized representatives.

 

Address for Notice:

Unit 3100 Lake Drive

CityWest Business Campus

Dublin D24, Ireland

 

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EXHIBIT A

LICENSING CATEGORIES AND TERMS

1. Adobe Support Information

a. Examples of Adobe Support Information. Adobe Support Information includes any of the following software components or documentation provided by Adobe to EFI hereunder: (a) Other Adobe Software, Host Software and PostScript Software in source code form, (b) unreleased versions of Other Adobe Software, Host Software or PostScript Software in object code form, (c) documentation provided by Adobe intended for internal use by EFI for development purposes only, (d) the Adobe Certification Test Suite, (e) Software Development Tools and Utilities, or (f) any Adobe Deliverables identified as Adobe Support Information in an Adobe Deliverables Appendix or otherwise as communicated to EFI, and (g) any enhancements or modifications related to any of the foregoing as provided by Adobe. Adobe Support Information shall not be deemed to include Core Source.

b. License Terms. EFI shall have a non-exclusive, non-transferable (except as provided in Section 14.11 (“ Assignment ”)) license to use (but not the right to sublicense the right to use) the Adobe Support Information supplied to EFI hereunder solely at a Development Site, for the sole purpose of designing, developing, adapting, localizing, modifying, testing and maintaining Revised Object implemented as part of present or future EFI Products, in conformance with the PostScript Language Specification. EFI’s right to modify the Adobe Support Information under the license set forth in this Paragraph is limited to Adobe Support Information supplied to EFI in source code form. EFI agrees that all development activities associated with the Adobe Support Information will be done only by EFI employees and Authorized Consultants (as defined in EXHIBIT K-1 (“ Secure Procedures for Handling Adobe Support Information ”)) and solely at the Development Sites. EFI’s right to use the Adobe Support Information solely at the Development Sites does not preclude EFI from distributing the Distributable Software to its Remarketer Customers for the uses permitted herein.

2. Core Source.

a. Examples of Core Source. The Core Source modules currently licensed to EFI are known as “Devpattern” and “Framemarker.” Future Core Source modules licensed to EFI will be so identified on the applicable Deliverables Appendix. Also see Section 1.8 of the Agreement for a definition of Core Source.

b. License Terms. EFI shall have a non-exclusive, non-transferable (except as provided in Section 14.11 (“ Assignment ”)) license to use (but not the right to sublicense the right to use) the Core Source supplied to EFI hereunder solely at a Primary Development Site, for the sole purpose of designing, developing, adapting, localizing, modifying, testing and maintaining Revised Object implemented as part of present or future EFI Products, in conformance with the PostScript Language Specification. EFI agrees that all development activities associated with the Core Source will be done only by Authorized Employees of EFI pursuant to the procedures set forth in EXHIBIT K-2 (“ Additional Secure Procedures for Handling Core Source ”).

 

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3. Distributable Software.

a. Examples of Distributable Software. Distributable Software includes (a) Revised Object, (b) Host Software and (c) Font Programs. See Section 1.11 of the Agreement for a definition of Distributable Software.

b. License Terms. Aside from sublicensing rights, each of the types of Distributable