TECHNOLOGY LICENSE AGREEMENT
The University of Washington, a public institution of higher education having
administrative offices in Xxxxxxx, Xxxxxxxxxx 00000 ("UW"), and Digital
Recorders, Inc., a for-profit company having a place of business at 0000
Xxxxxxx Xxxxx, Xxx Xxxx Xxxxxx, Xxxxx 000, Xxxxxxxx Xxxxxxxx Xxxx, XX 00000
("Company") agree as follows:
BACKGROUND 1.1 UW has developed through the efforts of Xxxxxxxxx
Xxxxxx X. Xxxxxx ("Xx. Xxxxxx"), an employee of UW, and
others in the Department of Electrical Engineering certain
software, algorithms, and technical information pertaining
to transportation information management systems
("Technology").
1.2 UW desires to license, and Company desires to obtain,
rights in the Technology to promote commercial investment
in developing the Technology and in creating products
incorporating the Technology.
DEFINITIONS 2.1 "Agreement" means this Technology License Agreement
and any attachments referenced by this Agreement and its
attachments.
2.2 "Effective Date" means the date upon which this
Agreement is fully executed by both UW and Company.
2.3 "Technology" means the subject matter set forth on
Attachment A.
2.4 "Modification" means any work based on or derived from
the Technology. Modifications may include, but are not
limited to, corrections of software program errors,
translations and stylistic restructuring of the Technology,
addition or deletion of functions or enhancement of existing
functions of the Technology, changes required to integrate
the Technology into other applications, preparation of
derivative works based on one or more works comprising the
Technology, and other adaptations of the Technology.
2.5 "UW Modification" means a Modification prepared by or
under the direction of Xx. Xxxxxx or any successor and
which makes changes involving access to Technology source
code statements.
2.6 "Company Modification" means a Modification prepared
by or for Company by other than UW and its personnel,
including Xx. Xxxxxx.
2.7 "Licensed Subject Matter" means the Technology, UW
Modifications delivered to Company pursuant to this
Agreement, and Company Modifications.
2.8 "End User" means a customer of Company that receives
and uses Licensed Subject Matter for customer's internal
and/or public operations and not for redistribution,
relicensing, disclosure, or conveyance of Licensed Subject
Matter beyond the operationsand control of said customer.
2.9 "Sublicense" means (a) a license granted by Company
to an End User that permits the use of Licensed Subject
Matter by the End User for its own internal and/or public
operations; (b) a license granted by Company to a
distributor or reseller to act on behalf of Company or
under contract to Company to convey or sell
Company-branded Licensed Subject Matter to End Users under
an appropriate End User license consistent with
Article 3.1(c).
GRANT 3.1 UW hereby grants to Company, and Company accepts,
worldwide non-exclusive licenses, with the right to
sublicense to End Users, under the UW's valuable intangible
property rights, and providing for a limited time Company
with an exclusive commercial position, as follows:
TECHNOLOGY LICENSE AGREEMENT PAGE 1 OF 7
(a) to install and operate the Technology and UW
Modifications for internal research and evaluation
purposes on Company owned or controlled servers and
workstations;
(b) to create Company Modifications, and to operate
Licensed Subject Matter for internal Company purposes,
and to install, deploy, and support Licensed Subject
Matter for evaluation and operation by two (2) End
Users;
(c) to incorporate the Technology and UW Modifications and
Company Modifications into commercial products
distributed directly or through third party
distributors (but carrying Company and not
third-party distributor brands and under a Sublicense
for distribution or resale) to customers under a
Sublicense for End Use;
(d) to use the Identifiers as set forth on Attachment A,
provided that Company uses best efforts to avoid any
use that would result in the infringement of any
valid trademark held by any third party, and further
provided that any trademark rights that may arise from
Company use of Identifiers shall be owned by UW.
3.2 UW retains title to the Technology and to all UW
Modifications delivered to Company under this Agreement.
Company shall own Company Modifications, including but not
limited to any patent, copyright, and trademark rights
thereto, prepared pursuant to this Agreement and developed
without the involvement of UW and UW personnel, including
Xx. Xxxxxx, provided any such Company Modifications are
managed under the terms and conditions of this Agreement as
Licensed Subject Matter.
3.3 Company acknowledges that UW is active in the
development of the Technology, and Company agrees that UW
may prepare UW Modifications substantially similar to
Company Modifications, and that UW shall not be
constrained other than by this Agreement in UW's management
of such UW Modifications.
3.4 Provided Company is in full compliance with this
Agreement, UW shall not grant, for a period of thirty
(30) months from the Effective Date, additional licenses to
the Technology to for-profit commercial entities other than
to former and existing for-profit sponsors of research at
UW to which UW has obligations to grant non-exclusive
licenses to any or all of the Technology. UW shall promptly
inform Company of any obligations that come to the attention
of UW's Office of the Vice Xxxxxxx for Intellectual Property
and Technology Transfer regarding such commercial licensing
of the Technology.
3.5 UW and Company will, at Company's request, negotiate
in good faith an extension of the period set forth in
Article 3.4, provided that Company (i) has granted
Sublicenses to at least five (5) End Users under
Section 3.1(c); (ii) there are no unresolved disputes
between UW and Company regarding this Agreement or other
agreements between UW and Company; and (iii) Company
presents a commercialization plan to UW showing Company
investment in developing and supporting the Technology and
a continued commitment to serve the transportation
information services marketplace.
3.6 UW may grant non-exclusive End User licenses to the
Technology and UW Modifications to non-profit organizations
and to governments providing regional transportation and
transportation information services.
DELIVERY 4.1 UW shall provide to Company the Technology within
ten (10) days of the Effective Date to
Xxxx XxXxxxxxx
Digital Recorders, Inc.
Technology License Agreement Page 2 of 7
0000 Xxxxxxx Xxxxx, Xxx Xxxx Xxxxxx, Xxxxx 000
P.O. Box 14068
Research Xxxxxxxx Xxxx, XX 00000
who shall serve as Company's technical liaison with UW.
4.2 UW shall provide to Company UW Modifications for a
period determined as the longer of (a) one (1) year from
the Effective Date of this Agreement and (b) ninety
(90) days following the completion of any research
sponsored by Company at UW pertaining to the Technology
and Modifications commenced within one (1) year of this
Agreement. Company and UW may upon mutually agreeable terms
and conditions extend the term for provision of UW
Modifications.
CONSIDERATION 5.1 Company shall provide to UW consideration for the
licenses granted herein as set forth on Attachment B.
DILIGENCE 6.1 Company shall utilize commercially reasonable efforts
in proceeding with the development, manufacture, sale, and
other commercial exploitation of Licensed Rights, and in
creating a supply and demand for Licensed Subject Matter.
6.2 Company shall xxxx, and shall require any
Sublicensee(s) to xxxx, any and all material forms of
Licensed Subject Matter or packaging pertaining thereto
distributed, transmitted, or displayed by Company (and/or
by its Sublicensees) in the United States with appropriate
copyright notices and other notices or disclaimers as
reasonably required to preserve UW rights in the Technology
and UW-prepared Modifications.
6.3 Company shall have Licensed Subject Matter in
commercial use with more than one (1) End User by August 31,
2002.
6.4 Company shall keep complete and accurate records and
books of account containing all information necessary for
the computation and verification of the amounts to be paid
hereunder. Company shall keep these records and books for a
period of five (5) years following the end of the accounting
period to which the information pertains.
6.5 If a dispute arises between UW and Company with regard
to the accuracy of reports or the amounts owed by Company
pursuant to this Agreement, Company shall, at the request
of UW, permit one or more accountants selected by UW
("Accountant") to have access to Company's records and books
of account during ordinary working hours to audit with
respect to any payment period ending prior to such
request, the correctness of any report or payment made under
this Agreement, or to obtain information as to the payments
due for any such period in the case of failure of the
Company to report or make payment pursuant to the terms of
this Agreement.
6.6 The Accountant shall not disclose to UW any
information relating to the business of Company except that
which is necessary to inform UW of: (a) the accuracy or
inaccuracy of Company's reports and payments; (b) compliance
or noncompliance by Company with the terms and conditions
of this Agreement; and (c) the extent of any inaccuracy or
noncompliance.
6.7 Should the Accountant establish with reasonable
clarity that there is an inaccuracy in any of the Company's
payments or noncompliance by the Company with any of such
terms and conditions, the Accountant shall have the right
to make and retain copies (including photocopies) of any
pertinent portions of the records and books of account.
6.8 In the event that Company's financial obligations
calculated for any semi-annual period are under reported by
more than Ten Percent (10%), the costs of any audit and
Technology License Agreement Page 3 of 7
review initiated by UW will be borne by Company; otherwise,
UW shall bear the costs of any audit initiated by UW.
NOTICES 7.1 Any notice or other communication required or
permitted to be given by either party hereto shall be
deemed to have been properly given and be effective upon
the date of delivery if delivered in writing to the
respective addresses set forth below, or to such other
address as either party shall designate by written notice
given to the other party. If notice or other communication
is given by facsimile transmission, said notice shall be
confirmed by prompt delivery of the hardcopy original.
7.2 In the case of Company:
All correspondence regarding this Agreement should be
addressed to Xxxxx Xxxxxxx.
Postal Address: Digital Recorders, Inc.
Address: 0000 Xxxxxxx Xxxxx, Xxx Xxxx Xxxxxx,
Xxxxx 000
PO Box 14068
Research Xxxxxxxx Xxxx, XX 00000
Facsimile Address: (000) 000-0000
7.3 In the case of UW:
All correspondence regarding this Agreement should be
addressed to Xx. Xxxxxx X. Xxxxxx, Xx.
Postal Address: University of Washington
Office of IP & Technology Transfer
Xxx 000000
Xxxxxxx XX 00000
Street Address: University of Washington
Office of IP & Technology Transfer
0000 X.X. 00xx Xxxxxx, Xxxxx 000
Xxxxxxx XX 00000
Facsimile Address: (000) 000-0000
TERM 8.1 This Agreement shall be effective until the last
to expire of UW's copyrights or patent rights in the
Technology and UW-prepared and Company-prepared
Modifications, unless sooner terminated as provided by
this Agreement.
8.2 Company may terminate this Agreement at any time
upon ninety (90) days' written notice to UW and provided
that Company has paid to UW fees as specified in
Attachment B.
8.3 UW may terminate this Agreement upon notice if Company
is in material breach of this Agreement and fails within
thirty (30) days of a written demand for performance to
cure such breach.
8.4 UW may terminate this Agreement and the license
granted to Company herein, effective immediately upon
written notice of termination to Company if (i) Company
seeks liquidation, reorganization, dissolution or winding-up
of itself, is insolvent or evidence exists as to its
insolvency, or Company makes any general assignment for the
benefit of its creditors; or (ii) a petition is filed by or
against Company, or any proceeding is initiated by or
against Company, or any proceeding is initiated against
Company as a debtor, under any bankruptcy or insolvency law,
unless the laws then in effect void the
TECHNOLOGY LICENSE AGREEMENT PAGE 4 OF 7
effectiveness of this provision; or (iii) a receiver,
trustee, or any similar officer is appointed to take
possession, custody, or control of all or any part of
Company's assets or property.
8.5 The provisions under which this Agreement may be
terminated shall be in addition to any and all other legal
remedies which either party may have for the enforcement of
any and all terms hereof, and do not in any way limit any
other legal remedy such party may have.
8.6 Termination of this Agreement shall terminate all
rights and licenses granted to Company relating to the
Technology and to UW Modifications, and Company shall
cease use, distribution, licensing, and other exploitation
of Licensed Subject Matter. Upon termination, any and all
then in force Sublicenses shall be handled as described
on Attachment C.
RISK 9.1 UW represents that UW has the right to enter into
this Agreement and that to the best of UW's knowledge, UW
is not aware of any claim or notice that the Technology
infringes any patents, copyrights, other intellectual
property rights of any third parties.
9.2 UW EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES, WHETHER
EXPRESS OR IMPLIED, PERTAINING TO THE MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OF THE TECHNOLOGY,
MODIFICATIONS, AND LICENSED SUBJECT MATTER.
9.3 Except with regard to the representations set forth
in Article 9.1 above, Company shall indemnify and hold
harmless UW, and its officers, Software developers,
employees, students, and agents, against any and all
claims, suits, losses, damages, costs, fees, and expenses
resulting from Company's possession and/or use of the
Technology, Licensed Rights, or Licensed Subject Matter,
including but not limited to any damages, losses, or
liabilities whatsoever with respect to death or injury to
any person and damage to any property. This indemnification
clause shall survive the termination of this Agreement.
GENERAL 10.1 This Agreement shall be construed in accordance with,
and its performance shall be governed by, the laws of the
State of Washington without giving effect to any conflict of
laws provisions. Headings are provided for convenience only.
10.2 If any dispute should arise between Company and UW
regarding this Agreement, Company and UW shall attempt to
resolve such dispute through good faith negotiations, to
commence promptly upon notice of one party to the other that
there is a breach or other significant area of disagreement
with regard to the interpretation of, or performance
pursuant, to this Agreement. If either Company or UW
requests, subsequent to such notice and at least thirty
(30) days' effort to resolve such dispute, either party may
request arbitration or alternative dispute resolution, and
such request shall not be unreasonably refused by the other
party.
10.3 Any suit, action, or proceeding arising out of or
relating to this Agreement shall be decided in King County,
Washington. Company and UW accept the venue and jurisdiction
of the Federal District Court of Western Washington,
Seattle, or the King County Superior Courts.
10.4 No omission or delay of either party hereto in
requiring due and punctual fulfillment of the obligations
of any other party hereto shall be deemed to constitute a
waiver by such party of its rights to require such due
and punctual fulfillment, or of any other of its remedies
hereunder. Amendments to this Agreement must be in
writing, reference this Agreement, and be signed by duly
authorized representatives of UW and Company.
TECHNOLOGY LICENSE AGREEMENT PAGE 5 OF 7
10.5 In the event either party hereto is prevented from
or delayed in the performance of any of its obligations
hereunder by reason of acts of God, war, strikes, riots,
storms, fires, or any other cause whatsoever beyond the
reasonable control of the non-performing party, the
non-performing party shall be excused from the
performance of any such obligation to the extent and during
the period of such prevention or delay.
10.6 This Agreement and the rights and benefits conferred
upon Company hereunder may not be assigned or otherwise
transferred by Company without the prior written consent of
UW which shall not be unreasonably withheld.
10.7 UW and Company are independent contractors and
neither has the authority to obligate the other or shall
act as an agent or representative of the other.
10.8 Nothing contained in this Agreement shall be
construed as conferring any right to use in advertising,
publicity, or other promotional activities any name,
trade name, trademark or other designation of the other
party or of any identifying technology of the other party,
including any contraction, abbreviation, or simulation of
the foregoing. The foregoing notwithstanding, Company and
UW each may include in written and other communications
that the Technology has been obtained by the Company
under a license from the University of Washington. UW and
Company will use best efforts to inform the other party
prior to any public releases or announcements conveying
such information. Any xxxx used and owned by Company as
of the date of this Agreement shall remain with Company
whether or not used in conjunction with any other
trademarks.
10.9 This Agreement embodies the entire understanding
of the parties and supersedes all previous communications,
representations, or understandings, either oral or
written, between the parties relating to the subject
matter hereof.
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BLANK.]
TECHNOLOGY LICENSE AGREEMENT PAGE 6 OF 7
The University of Washington and Digital Recorders, Inc. have executed this
Agreement by their respective duly authorized representatives on the dates
given below.
DIGITAL RECORDERS, INC. UNIVERSITY OF WASHINGTON
By: By:
------------------------------ ------------------------------
Name: Name:
---------------------------- ----------------------------
Title: Title:
--------------------------- ---------------------------
Date: Date:
---------------------------- ----------------------------
CONCURRENCE:
---------------------------------
Xxxxxx X. Xxxxxx
TECHNOLOGY LICENSE AGREEMENT PAGE 7 OF 7
Technology License Agreement
Attachment A
Technology
BUSVIEW
Software inventory: on CDR
Identifier: BUSVIEW
Technical documentation: on CDR
MYBUS
Software inventory: on CDR
Identifier: MYBUS
Technical documentation: on CDR
TECHNOLOGY LICENSE AGREEMENT PAGE A1 OF 1
TECHNOLOGY LICENSE AGREEMENT
ATTACHMENT B
CONSIDERATION
LICENSE FEE B.1 Company shall pay to UW an Initial License Fee of
Fifteen Thousand Dollars ($15,000), payable upon execution
of this Agreement.
ROYALTY B.2 Commencing on January 1, 2001, Company shall pay to
UW within thirty (30) days of January 1 and July 1, of each
year, a royalty of Seven Thousand Five Hundred Dollars
($7,500) per customer End User Sublicense. The two End User
licenses identified in Section 3.1(b) are exempted from the
royalty if entered into prior to December 31, 2001.
B.3 If Company has (a) commenced Sublicensing under 3.1(c)
of the Agreement or (b) files (whether directly or through
UW) for patent protection on the Technology, a Modification,
or any aspect thereof, including any new use, Company shall
pay the greater of the royalty specified above or a
semi-annual minimum royalty of Fifteen Thousand Dollars
($15,000).
B.4 If Company grants a total of more than five (5) such
Sublicenses to End Users under 3.1(c), the semi-annual
minimum license fee shall be Thousand Dollars ($30,000).
EQUITY B.5 The Initial License Fee shall be paid by Company in
the form of a grant of warrants for Five Thousand (5,000)
shares of Company stock at a strike price of three dollars
($3.00) per share and a term of five (5) years, and a cash
payment of Seven Thousand Five Hundred Dollars ($7,500).
The first Fifteen Thousand Dollars ($15,000) of the annual
minimum fee for 2001, if applicable, shall be paid by
Company by two grants of warrants for Two Thousand Five
Hundred (2,500) shares each of Company stock with a term of
five (5) years and a strike price to be negotiated, and a
cash payment of Two Thousand Five Hundred Dollars ($2,500)
within thirty (30) days of January 1 and July 1.
PAYMENT B.6 All non-equity payments under this agreement shall be
made in United States dollars by check or money order
payable to the University of Washington, and delivered to
the University of Washington, Office of Technology
Transfer, 1107 NE 00 xx Xxxxxx, Xxxxx 000, Xxxxxxx, XX
00000. Equity consideration in the form of warrants shall be
delivered to the University of Washington, Office of
Financial Management, Attn: Xxxxxxx Xxxxxxx, 000 Xxxxxxxxxx
Xxxx, Xxx 000000, Xxxxxxx, XX 00000.
REFERENCE B.7 Company shall identify payments and equity
consideration to UW as 10798CA.
TECHNOLOGY AND LICENSE AGREEMENT PAGE B1 OF 1
TECHNOLOGY LICENSE AGREEMENT
ATTACHMENT C
SUBLICENSES
END USERS C.1 Sublicenses as defined at Article 2.9(a) to End
Users shall remain in effect. Sublicenses as defined at
Article 2.9(b) to distributors and resellers shall
terminate upon termination of this Agreement.
COMPANY SUPPORT C.2 Company shall not provide to End Users further updates,
modifications, or other work product that would come within
the scope of Licensed Subject Matter. Company may provide
other forms of support to End Users, however, such as
instruction, installation, and bug fixes for Company
Modifications.
REVERSION OF RIGHTS C.3 Sublicenses to End Users shall revert to UW, and UW
shall have the right to manage such Sublicenses according
to UW policies and regulations, provided that:
(a) Company obligations in the form of assistance,
hosting, contract services, or any other such
obligations to End Users, provided the conditions of
Article C.2 are met, shall not revert to UW;
(b) End Users accept the risk language and obligations as
set forth in Article 9;
(c) Any obligation to provide updates, modifications, or
contract services involving Licensed Subject Matter
which reverts to UW management will be undertaken
by UW to End Users only at UW's sole discretion,
consistent with UW's public mission and policies.
TECHNOLOGY AND LICENSE AGREEMENT PAGE C1 OF 1
