NON-EXCLUSIVE END-USER ACADEMIC LICENSE AGREEMENT
PLEASE CAREFULLY READ THE FOLLOWING AGREEMENT. BY CLICKING ON THE “I ACCEPT” BUTTON, YOU INDICATE YOUR ACCEPTANCE OF ITS TERMS AND CONDITIONS AND AGREE TO BE BOUND AS SET FORTH HEREIN. YOU REPRESENT AND WARRANT THAT YOU HAVE THE REQUISITE AUTHORITY AND LEGAL CAPACITY TO BIND YOUR INSTITUTION TO THIS AGREEMENT. IF YOU DO NOT AGREE WITH THE TERMS AND CONDITIONS OF THIS AGREEMENT, DO NOT CLICK THE BUTTON.
This non-exclusive end-user academic agreement (“Agreement”) is entered into between UNIVERSITY OF TENNESSEE RESEARCH FOUNDATION, a not-for-profit corporation, organized and existing under the laws of the state of Tennessee and having a place of business at 600 Henley Street, UT Conference Center Suite 211, Knoxville, Tennessee 37996 (“UTRF”), and you and your organization (“LICENSEE”). Prior to such registration in accordance with this Agreement, the LICENSEE has no rights or license in connection with the Coordinates (defined below) or this Agreement. UTRF and LICENSEE are referred to individually as “Party” and collectively as “Parties”.
RECITALS
WHEREAS, AIRFOILS, INC is the developer, owner and current rights holder in certain airfoil technology referred to as slotted, natural-laminar-flow airfoil technology (the “SNLF Airfoil Technology”);
WHEREAS, under a Limited License Agreement Noncommercial and Government Application Use Agreement, effective March 18, 2020, AIRFOILS, INC granted UT and UTRF a limited, nonexclusive, nonassignable, royalty-free license to use the SNLF Airfoil Technology to develop one (1) airfoil, designated the X207LS, which incorporates or is otherwise derived from the SNLF Airfoil Technology and associated technical data;
WHEREAS, X207LS is an airfoil defined by a set of coordinates (the “Coordinates”, as further defined hereinafter) that was developed at UT (defined below) by Dr. James Coder (the “Contributor”) as an employee of UT and derived from the SNLF Airfoil Technology and associate technical data;
WHEREAS, the Contributor has assigned his entire right, title and interest in and to the Rights (defined below) to UTRF, resulting in UTRF having an undivided interest in and to the same; and
WHEREAS, LICENSEE is an active member of an academic institution and wishes to obtain a nonexclusive license under the Rights to use the Coordinates for its internal research and development efforts for academic research purposes only; and
WHEREAS, UTRF is willing to grant such a license to LICENSEE, in consideration of LICENSEE’s satisfaction of its obligations hereunder, and for other good and valuable consideration as set forth below.
NOW, THEREFORE, the Parties agree as follows:
- Definitions.
1.1 “Coordinates” means the set of coordinates and/or associated technical data that define the X207LS airfoil, a slotted natural-laminar flow airfoil.
1.2 “Effective Date” means the date when the LICENSEE agrees to the terms of this Agreement.
1.3 “Rights” means the rights in and to the Coordinates.
1.4 “Territory” means The United States of America.
1.5 “UT” means The University of Tennessee, a public higher education institution and instrumentality of the State of Tennessee.
- Grant of License; Restrictions.
2.1 Grant. Subject to the terms and conditions of this Agreement, UTRF hereby grants to LICENSEE, and LICENSEE hereby accepts, a limited, non-transferable, non-assignable, non-sublicensable, non-exclusive right and license to the Rights to use the Coordinates in the Territory for theoretical studies or fabrication of wind-tunnel models only, and solely for noncommercial academic research purposes. Manufacture of any other components incorporating or otherwise developed in association with LICENSEE access to the Coordinates under the terms of this license is expressly prohibited. The Rights do not include the right to use the Coordinates to produce a commercial product or service or to incorporate the Coordinates in a commercial product or service. Other than the license granted to LICENSEE hereunder, UTRF does not grant any licenses to LICENSEE under any of UTRF’s patents, patent applications, copyrights, and know-how, if any, embodied therein. LICENSEE acknowledges and agrees that the Coordinates contains valuable proprietary information developed or acquired by the Contributor. LICENSEE shall use reasonable efforts to secure and protect the Coordinates in a manner consistent with the maintenance of UTRF’s and UT’s rights therein and to take reasonable action by instruction or agreement with its employees or independent contractors who are permitted access to the Coordinates to satisfy its obligations hereunder. UTRF reserves the right to grant non-commercial licenses to third parties.
2.2 Restrictions on Use.
(i) LICENSEE shall use the Coordinates for its internal academic research and development purposes only and only in the Territory.
(ii) No right is granted to LICENSEE to modify or reverse engineer or to sublicense the Coordinates.
(iii) The use, transmission, reproduction, disclosure or distribution of the Coordinates or associated technical data as part of any commercial applications, development programs or deliverables is expressly prohibited.
(iv) LICENSEE agrees that the Coordinates and associated technical data constitute proprietary and confidential information of UTRF, and as such, LICENSEE may not reproduce, distribute or publish the Coordinates, or any associated technical data, without the prior express written consent of UTRF. LICENSEE further agrees that the SNLF Airfoil Technology and associated technical data constitute proprietary and confidential information of AIRFOILS, INC and, as such, LICENSEE may not reproduce, distribute or publish the SNLF Airfoil Technology, or any associated technical data, without the prior express written consent of AIRFOILS, INC.
(v) LICENSEE shall not do or attempt to do any of the following: (i) utilize the Coordinates to provide medical care; (ii) make copies of the Coordinates or share or disclose any applicable passwords or access codes to the Coordinates, except as otherwise permitted herein; (iii) rent, lease, lend, export or otherwise transfer the Coordinates to any third party or to use in any country where prohibited by applicable law; (iv) provide remote processing or service bureau services utilizing the Coordinates; (v) allow any unauthorized third party to implement, access, modify or operate the Coordinates; (vi) remove or permit to be removed any labeling required by applicable U.S. law or other proprietary, confidential, or copyright notices, markings, or legends; or (vii) incorporate the Coordinates in any commercial product or service.
(vi) LICENSEE shall only use the Coordinates in accordance with applicable federal, state, and local laws and regulations.
- Ownership.
3.1 LICENSEE agrees that all rights, title and interests in and to the Coordinates, any associated technical data, copyright, and all other intellectual property rights embodied therein, remain exclusively with UTRF. LICENSEE further agrees that all rights, title and interests in the SNLF Airfoil Technology, and any associated technical data, remain exclusively with AIRFOILS, INC. LICENSEE shall not, at any time, or in any manner, represent that LICENSEE has any ownership rights or interests in the licensed content.
3.2 Title to and ownership of any portion of a derivative work created by LICENSEE shall be owned by LICENSEE, subject to UTRF’s rights to the underlying Coordinates. Title to and ownership of any derivative works created by the Contributor shall be owned by UTRF. LICENSEE further agrees that all right, title and interest in and to the Coordinates (and all intellectual property rights embodied therein) or any modification or improvement thereof made by UTRF or UT is proprietary to UTRF.
3.3 Nothing contained in this Agreement shall be construed to limit UTRF’s rights to modify the Coordinates or to develop other products that are similar to or offer the same or similar improvements as any derivative works developed by LICENSEE.
- Technical Assistance.
4.1 LICENSEE acknowledges and agrees that UTRF is not obligated to provide any technical assistance or support to the LICENSEE in the exercise of the Agreement. In the event LICENSEE requires technical assistance with respect to the activities conducted by LICENSEE pursuant to this Agreement, obtaining such technical assistance (whether from the Contributor or otherwise) shall be LICENSEE’s responsibility and at LICENSEE’s expense.
4.2 Nothing herein shall be construed to require UTRF or UT to develop any new versions of the Coordinates.
- Limited Warranty; Disclaimers; Limitations of Liability; Indemnification.
5.1 No Warranty. EXCEPT AS STATED IN THIS SECTION 5.1, THE COORDINATES ARE PROVIDED “AS IS” AND WITHOUT WARRANTY, and UTRF severally warrants that is has the authority to grant the licenses contained in this Agreement. These warranties shall remain in effect provided: (i) LICENSEE has not improperly installed, maintained, configured, altered or used the Coordinates; (ii) LICENSEE has complied with all configuration requirements; and (iii) LICENSEE is not in breach of any provision of this Agreement. Additionally, AIRFOILS, INC does not warrant or otherwise guarantee the use or performance of the SNLF Airfoil Technology, or associated technical data.
5.2 Disclaimer. TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW, THE WARRANTY SET FORTH IN SECTION 5.1 IS IN LIEU OF ALL OTHER WARRANTIES, REPRESENTATIONS OR CONDITIONS. UTRF, UT, OR ITS DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES SEVERALLY DO NOT MAKE AND EXPRESSLY DISCLAIMS ALL OTHER WARRANTIES WITH RESPECT TO THE COORDINATES AND SUPPORT, INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, REGARDLESS OF WHETHER UTRF KNOWS OR HAD REASON TO KNOW OF LICENSEE’S PARTICULAR NEEDS. LICENSEE ACKNOWLEDGES THAT UTRF OR UT WILL NOT PROVICE LICENSEE WITH ANY MAINTAINANCE OR SUPPORT FOR COORDINATES. NO EMPLOYEE, AGENT, DIRECTORS, OFFICERS, OR AGENT OF UTRF AND UT IS AUTHORIZED TO MODIFY THE LIMITED WARRANTY, OR TO MAKE ANY ADDITIONAL WARRANTIES. SOME COUNTRIES AND STATES DO NOT ALLOW THE EXCLUSION OF IMPLIED WARRANTIES, SO THE ABOVE EXCLUSION MAY NOT APPLY. THIS WARRANTY GIVES LICENSEE SPECIFIC LEGAL RIGHTS, AND LICENSEE MAY ALSO HAVE OTHER RIGHTS THAT VARY FROM COUNTRY TO COUNTRY OR STATE TO STATE.
5.3 Limitation of Liability. Unless otherwise precluded by relevant law, under no circumstances shall UTRF and/or AIRFOILS, INC be liable to LICENSEE for consequential, exemplary, indirect, special, or incidental losses or damages whether based on contract, tort or any other legal theory, arising out of or related to this Agreement or the inability to use the Coordinates, or any associated technical data, nor shall UTRF and/or AIRFOILS, INC be liable for any loss of data or lost profits of LICENSEE, even if UTRF and/or AIRFOILS, INC is apprised of the likelihood of such damages occurring or such damages could have been reasonably foreseen by either party. UTRF and/or AIRFOILS, INC shall not be liable to LICENSEE as a result of its activities hereunder for any damages, costs or penalties, including any resultant attorney’s fees, incurred or paid by LICENSEE to any third party for any such claims, judgments or settlements. LICENSEE acknowledges and agrees that licensing the Coordinates under this Agreement reflects the allocation of risks expressed by (but not limited to) the above limitations of liability. SOME COUNTRIES OR STATES DO NOT ALLOW THE LIMITATION OR EXCLUSION OF LIABILITY FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO THE ABOVE LIMITATIONS MAY NOT APPLY.
5.4 Indemnification. LICENSEE shall defend, indemnify and hold UTRF and UT, and its officers, trustees, faculty, staff, employees, students, agents and their respective successors or assignees harmless from and against any and all claims, liabilities and expenses (including reasonable attorneys’ fees) of any kind arising out of or related to the exercise of any rights granted to LICENSEE under this Agreement or the breach of this Agreement by LICENSEE. These indemnification obligations shall survive the termination or expiration of this Agreement.
- Assignment.
6.1 LICENSEE shall not assign or transfer this Agreement or any of its rights or obligations hereunder, whether by operation of law or otherwise, without the prior written consent of UTRF. UTRF may assign its rights or obligations hereunder without the consent of or notice to LICENSEE. This Agreement shall inure to the benefit of and bind successors and permitted assignees of UTRF and LICENSEE.
- Term; Termination; Survival.
7.1 Term; Termination. This Agreement shall become effective on the Effective Date, and the terms of this Agreement shall remain in effect for the life of the Coordinates. Coordinates will not be delivered until the LICENSEE has agreed to the terms of this Agreement. This Agreement will automatically terminate if LICENSEE fails to comply with any term or condition of this Agreement. LICENSEE may also terminate this Agreement at any time during the term by providing written notice of UTRF and destroying all copies of the Coordinates in its possession.
7.2 Obligations upon Termination. Upon termination of this Agreement, the license granted to LICENSEE shall immediately terminate and LICENSEE shall (i) promptly return to UTRF all copies of the Coordinates and all documentation associated therewith; (ii) immediately discontinue any and all use of the Coordinates; (iii) immediately erase, remove or destroy from any and all equipment all electronic or machine-readable copies of the Coordinates; (iv) certify in writing to UTRF that LICENSEE has completed the foregoing and that no copies of the Coordinates exist in LICENSEE’s possession or control and LICENSEE has complied with LICENSEE’s obligations set forth in this Agreement; and (v) comply with its obligations set forth in this Agreement. Termination of this Agreement shall not limit either party from pursuing other remedies available to it (to the extent such other remedies are not expressly limited hereunder), including injunctive relief.
7.3 Breach. LICENSEE’s exclusive remedy for a breach of this Agreement shall be termination of this Agreement by returning or destroying the Coordinates.
7.4 Survival. Sections 4.2, 5, 7.4 and 8 and any provision of this Agreement which by its terms provides for survival shall survive the expiration or termination of this Agreement.
- General Provisions.
8.1 Notices. All notices required or permitted relating to a claim or breach of this Agreement shall be in writing and sent to: (i) if to the LICENSEE: the address provided by LICENSEE when ordering the Coordinates; and (ii) if to UTRF: Attn: Vice President, 600 Henley Street, Conference Center, Suite 211, Knoxville, Tennessee 37996. Either Party may substitute their address from time to time by written notice to the other and shall be deemed validly given upon receipt of such notice given by certified mail, postage prepaid, or personal or courier delivery. All other notices relating to the usage of the Coordinates will be provided by UTRF either via telephone or via e-mail.
8.2 Governing Law; Severability. This Agreement is made in Knoxville, Tennessee, U.S.A., and performance hereunder shall be governed and construed in accordance with the laws of the U.S. and of the State of Tennessee, without giving effect to provisions thereof regarding conflict of laws. Each Party hereto hereby submits to the exclusive jurisdiction of the United States District Court for the Eastern District of Tennessee and of any Tennessee state court sitting in Knoxville, Tennessee for the purposes of all legal proceedings arising out of or relating to this Agreement or the transactions contemplated hereby. Each Party hereto irrevocably waives, to the fullest extent permitted by applicable law, any objection which it may now or hereafter have to the laying of the venue of any such proceeding brought in such a court and any claim that any such proceeding brought in such a court has been brought in an inconvenient forum. All agreements, clauses and covenants contained herein are severable, and in the event any of them shall be held to be unconstitutional, invalid, illegal, or unenforceable, the remainder of this Agreement shall be interpreted as if such unconstitutional, invalid, illegal or unenforceable agreements, clauses or covenants were not contained herein.
8.3 Integration; Waiver; Modification. The Parties hereto acknowledge and agree that they have read this Agreement in its entirety and understand and agree to be bound by all of its terms and conditions, and further agree that this Agreement and any exhibits or schedules hereto constitute a complete and exclusive statement of the understanding between the Parties with respect to the subject matter hereof, which supersede any and all other communications between the parties, whether written or oral. Any prior agreements, promises, negotiations or representations related to the subject matter hereof not expressly set forth in this Agreement, or any exhibits or schedules hereto, are of no force and effect. The failure by either Party to exercise any right provided hereunder shall not be deemed a waiver of such right. This Agreement may be amended, modified or supplemented only by a writing signed by the Parties to this Agreement. Such amendments, modifications or supplements shall be deemed as much a part of this Agreement as if so incorporated herein.
8.4 Independent Contractor. Nothing contained in this Agreement shall be construed to create a joint venture or partnership between the Parties.
8.5 Force Majeure. Neither Party hereto shall be liable for any failure or delay in performance of its obligations hereunder by reason of any event or circumstance beyond its reasonable control, including without limitation, acts of God, war, terrorism, riot, strike, labor disturbance, fire, explosion, flood, or shortage or failure of suppliers.
8.6 Import/Export Restrictions. LICENSEE shall comply with all export laws, restrictions and regulations of the United States or foreign agencies or authorities and shall not export or re-export the Coordinates in violation of any such restrictions, laws or regulations, or without all necessary approvals. Diversion contrary to U.S. law is prohibited. Neither the Coordinates nor the underlying information or technology may be downloaded or otherwise exported or re-exported (i) into Cuba, Iran, North Korea, Sudan, Syria or any other country subject to U.S. trade sanctions covering the Coordinates, to individuals or entities controlled by such countries, or to nationals or residents of such countries other than nationals who are lawfully admitted permanent residents of countries not subject to such sanctions; or (ii) to anyone on the U.S. Treasury Department’s list of Specially Designated Nationals and Blocked Persons, the U.S. Commerce Department’s Denied Persons List, or the U.S. Commerce Department’s Entity List. LICENSEE agrees to the foregoing and represents and warrants that it complies with these conditions.
8.7 U.S. Government End-Users. The Coordinates is a “commercial item,” as that term is defined in 48 C.F.R. 2.101 (Oct. 1995), consisting of “commercial computer software” and “commercial computer software documentation,” as such terms are used in 48 C.F.R. 12.212 (Sept. 1995). Consistent with 48 C.F.R. 12.212 and 48 C.F.R. 227.7202-1 through 227.7202-4 (June 1995), all U.S. Government End-Users acquire the Coordinates with only those rights set forth herein.
8.9 LICENSEE is hereby notified that both UTRF and UT severally reserve the right to utilize the Coordinates for their respective research, teaching and educational purposes.
8.10 LICENSEE shall not use the names, logos, or trademarks of UTRF or UT or any of their respective employees, staff members, directors, trustees, or any Contributor, or any adaptation thereof, in any advertising, promotional or sales literature without prior written consent obtained from UTRF or UT, in each case, except that LICENSEE may state that it is licensed by UTRF to use the Coordinates.
- Publications.
9.1 LICENSEE may publish and present the results of LICENSEE’s use of the Coordinates in peer-reviewed journals. All manuscripts, abstracts and presentations must acknowledge the receipt of the Coordinates from Dr. James Coder of the Department of Mechanical, Aerospace and Biomedical Engineering, University of Tennessee, Knoxville, in the acknowledgments section.