TELUS/TELUM NONEXCLUSIVE SOFTWARE LICENSE AGREEMENT
THIS AGREEMENT, effective as of the date of the last signatory hereto (hereinafter “Effective Date”), by and between NEW JERSEY INSTITUTE OF TECHNOLOGY, University Heights, Newark, New Jersey 07102 (hereinafter "NJIT") and
For and in consideration of the mutual promises, covenants and undertakings herein contained and for other good and valuable consideration by each of the other given, receipt of which is hereby mutually acknowledged, NJIT and Licensee (hereinafter the “Parties”) hereby agree as follows:
1. LICENSED PROPERTY.
(a) Licensed Property. The term “Licensed Property” means NJIT’s copyrighted and proprietary Transportation Economic And Land Use System (hereinafter “TELUS”), including its copyrighted and proprietary Transportation Economic Land Use Model (hereinafter “TELUM”), and any available documentation, code (source or object) or databases supplied by NJIT in its sole discretion.
(b) Software Markings. Licensee agrees to fully comply with the copyright marking provisions of all applicable intellectual property laws. Licensee shall not remove any copyright markings from the Licensed Property without the prior written consent of NJIT nor shall Licensee utilize any trademark, service mark, or other mark or logo of NJIT or NJIT’s name with respect to any promotional, publicity and advertising materials, without the prior written consent of NJIT.
(a) Use. NJIT grants to Licensee the non-exclusive, revocable, royalty-free, right, privilege, and license to use the Licensed Property for Licensee's sole internal use. Licensee shall not share, sublicense or distribute the Licensed Property with or to any third party, including affiliates, consultants, or any others without NJIT's prior written consent and only upon terms and conditions required by NJIT.
(b) Term. The term of the license granted herein commences on the Effective Date of this Agreement and continues until terminated by either party in accordance with the terms and conditions hereof (hereinafter “Term”).
3. INTELLECTUAL PROPERTY RIGHTS.
NJIT reserves the exclusive right in its discretion to apply for all patents, trademarks and/or trademarks and service marks.
(a) License Grant. This License Agreement is personal to the Licensee and is for Licensee's internal, non-commercial, non-profit, governmental use only. This Agreement may not be assigned by Licensee nor may Licensee enter into any sublicensing agreements of any type. Licensee may not reverse engineer, modify, decompile, copy and/or otherwise misappropriate the Licensed Property. Improvements, alterations and/or modifications to the Licensed Property by Licensee shall belong to NJIT.
(b) Disclaimer of Warranties. NJIT EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, WHETHER EXPRESS, IMPLIED, OR STATUTORY (BY ANY TERRITORY OR JURISDICTION) TO THE EXTENT PERMITTED BY LAW, AND FURTHER, NJIT EXPRESSLY EXCLUDES ANY WARRANTY OF TITLE, NON-INFRINGEMENT, FITNESS FOR A PARTICULAR PURPOSE OR MERCHANTABILITY TO THE EXTENT PERMITTED BY LAW. IN NO EVENT SHALL NJIT BE LIABLE FOR INDIRECT, SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES OF ANY KIND
(c) Retention of Rights. Nothing herein shall be interpreted to restrict NJIT from sharing or licensing the Licensed Property with any other person or entity, NJIT is under no obligation to provide to Licensee any changes, revisions or updates in the Licensed Property. The license granted under this Agreement is solely for the Licensed Property developed by NJIT and is not to be construed either as consent by NJIT to any act which may be performed by Licensee, except to the extent otherwise permitted by this License Agreement, or to include a license to infringe or induce infringement under U.S. law or a foreign equivalent thereof.
(d) Government Rights. The grant of license under this License Agreement shall be subject to any and all rights which NJIT is required contractually or by law to grant to the United States and/or any state governmental entity, including the U.S. Department of Transportation, Federal Highway Administration.
(e) Compliance with All Laws. Licensee agrees to comply with all governmental laws and regulations applicable to the use of the Licensed Property, in particular, it is understood and acknowledged that the transfer of certain commodities and technical data is subject to United States laws and regulations controlling the export of such commodities and technical data, including all Export Administration Regulations of the United States Department of Commerce.
(a) At-Will. Either Party may terminate this Agreement with or without cause upon ten (10) days prior written notice to the other party.
(b) For Breach. In the event the Licensee breaches this Agreement, NJIT may immediately terminate this Agreement upon written notice to the Licensee. Licensee shall immediately return to NJIT all of the Licensed Property by hand delivery.
(c) Legal Remedies. In the event Licensee has breached this Agreement or distributed or shared with other third parties, including consultants, the Licensed Property, the NJIT shall have the right to pursue all of its legal and equitable remedies against the Licensee and any and all third parties; if damages are sought, Licensee agrees that as part of the damages for which it shall be liable to NJIT shall be all NJIT's costs and expenses, including reasonable attorneys fees, incurred and arising out of this License Agreement regardless of whether or not the NJIT is the prevailing party. Also, in the event the Licensee has distributed or shared the Licensed Property with a third party who has marketed or used the Licensed Property to generate income to it, the Licensee and said third party shall be jointly and severely liability to the NJIT for any and all revenues generated, received by or paid to the Licensee or said third party.
(d) Survival. Any provisions of this License Agreement, which by their nature extend beyond termination, e.g., without limitation, Articles 3, 4, 7, 10 and 11, shall survive such termination.
(a) Notices. All Notices required under this License Agreement shall be in writing and sent by certified mail, return receipt requested to the address set forth in the opening paragraph hereof, or Notices may be sent by email or facsimile. As To NJIT: Dr. Donald H. Sebastian, Senior V.P. For Research & Development, Office of Research & Development, New Jersey Institute of Technology, Fenster Hall – 3rd Floor, University Heights, Newark, N.J. 07102.
(b) Change of Addresses. The Parties may change their addresses to which notices or requests shall be directed by written notice to the other Parties, but until such change of address has been received any notice or request sent to the above addresses shall be effective.
(a) Nondisclosure. Licensee agrees that during the term of this Agreement and thereafter, Licensee shall use and reproduce NJIT’s confidential information only for purposes of this License Agreement and only to the extent necessary for such purpose and shall restrict disclosure of NJIT’s confidential information to its employees with a need to know and shall not disclose NJIT’s confidential information to any third party without the prior written approval of NJIT. Licensee agrees to promptly notify NJIT in writing if Licensee becomes aware of a violation of the confidentiality provisions of this License Agreement and shall use reasonable efforts to assist NJIT in preventing recurrence of the violation or with any litigation efforts against such third party.
(b) Continuing Obligation. The terms of Article 7 (a) above shall survive expiration and/or termination of this License Agreement for a period of five (5) years or for as long as the Licensed Property is entitled to copyright and/or patent protection under applicable U.S. Law and/or statute. However, Licensee may disclose the terms and conditions of the Agreement to its accountants and auditors, or as required by state and federal agencies.
(c) Definition. As used in this License Agreement, the term “confidential information” refers to: (i) NJIT’s trade secrets, software (in object or source code form), computer programs, technologies, know-how, business methods and/or practices; and (ii) other information relating to either party that is not generally known to the public.
(d) Exceptions. Notwithstanding the foregoing, the term “confidential information” specifically excludes: (i) information that is now in the public domain or subsequently enters the public domain by publication or otherwise through no action or fault of Licensee; (ii) information independently developed by Licensee provided that Licensee can show that it had no access to the confidential information received hereunder; and (iii) information subject to disclosure pursuant to any legal or governmental request, requirement or court order, provided Licensee has made a reasonable effort to provide prior notice to NJIT.
No Waiver by either party shall be effective unless in writing and signed by both parties.
This Agreement may be executed in counterparts.
10. INDEMNIFICATION AND DEFENSIVE LITIGATION.
Licensee agrees to indemnify, defend and hold NJIT and affiliates, as well as their respective officers, directors, agents and employees harmless from and against any and all damage, loss, expense (including reasonable attorneys’ fees and disbursements) award, settlement or other obligation arising out of any claims, demands, actions, suits or prosecutions that may be made or instituted against them or any of them by reason of Licensee's use or testing of the Licensed Property, including but not limited to any product liability, warranty and/or defect claims.
11. PROPRIETARY RIGHTS.
(a) Sole Ownership. Licensee hereby acknowledges that NJIT is the sole owner of the Licensed Property and nothing contained in this License Agreement shall be construed to convey any portion of NJIT’s proprietary interest in the License Property, other than the specific license granted herein. License covenants that it shall not at any time challenge or contest the validity, ownership, title and copyright of the Licensed Property.
(b) Covenant Not To Sue. Licensee agrees and covenants not bring suit, join in any claim or assert any claim whatsoever, including, but not limited to, any complaint, third party complaint, cross-claim or counterclaim, against NJIT, its employees and/or its insurers, with respect to any suits, claims, losses, demands or damages arising out of or claimed to arise out of this License Agreement.
12. INDEPENDENT CONTRACTOR/NO AGENCY.
Licensee is and shall be an independent contractor for all purposes related to this Agreement. Neither Licensee nor any of their respective employees are authorized or empowered to act as agent for NJIT for any purpose related to this License Agreement and shall not on behalf of NJIT enter into any contract, warranty, or representation as to any matter, except as specifically defined herein and limited to the narrowest construction thereof. NJIT shall be bound by the acts or conduct of the Licensee.
13. SEPARATE AGREEMENTS.
Any license granted hereunder to the Licensed Property is acquired separately from any third party software or copyright licenses required by Licensee to use the Licensed Property. Licensee understands that it is responsible for ascertaining whether any copyright, patent or other licenses are necessary for its use of the Licensed Property.
14. CHOICE OF LAW/FORUM.
The Parties agree that this License Agreement, including its validity, interpretation and enforcement shall be governed by the laws of New Jersey, without regard to its choice of law principles. Any dispute arising out of this Agreement shall be resolved solely in the appropriate division of the Superior Court of New Jersey, venued in Essex County.
15. ASSIGNMENT/ENTIRE AGREEMENT
(a) Assignment. This License Agreement shall not be assigned by Licensee without the prior written consent of the NJIT.
(b) Entire Agreement. If any provision of this License Agreement is held to be unenforceable, the other provisions shall nevertheless remain in full force and effect. This License Agreement along with any “Shrink-Wrap” License and/or “End-User” License provided with the Software, constitutes the entire understanding between the Parties with respect to the subject matter herein and may only be amended or modified by a writing signed by a duly authorized representative of each party. This License Agreement replaces and supersedes any prior verbal or written understandings, communications, and representations between the Parties regarding the subject matter contained herein.
IN WITNESS WHEREOF the parties hereto have executed this Agreement as of the date first written above.