The draft commercial license that follows brings to mind a sign seen
next to a large building:
NO PARKING! If you park here without permission, your car will be towed away at your expense.
Absolutely no exceptions. (Signed) Sisters of Mercy.
In other words, the one-sideness of this draft somehow does not capture the
Franciscan spirit! Therefore we welcome your insights into how to improve this draft.
A rich text format copy of the commercial license is included with the
source code download. E-mail proposed revisions to David
Skiviat. If you have an agreed-upon
draft, send two signed paper copies to David Skiviat, Vice President Finance, Franciscan University of Steubenville,
1235 University Blvd., Steubenville, Ohio, USA 43952-1763. One copy will be signed and returned
to you.
SOFTWARE LICENSE AGREEMENT FOR COMMERCIAL USE OF PRYVIT
This Agreement, effective as of the _____ day of _____, 20___
("EFFECTIVE DATE"), is between FRANCISCAN UNIVERSITY OF STEUBENVILLE, an Ohio corporation,
having an office at 1235 University Blvd., Steubenville, Ohio 43952 ("FRANCISCAN UNIVERSITY"),
and ____, a _____ organized under the laws of the state of ____ and having its principal place
of business at ____.
Whereas, FRANCISCAN UNIVERSITY has developed an encryption software
program ("LICENSED SOFTWARE").
Whereas, FRANCISCAN UNIVERSITY has developed certain accompanying
documentation regarding the LICENSED SOFTWARE ("DOCUMENTATION").
Whereas, LICENSEE desires to be licensed under the LICENSED SOFTWARE
to develop software incorporating or based on portions of the LICENSED SOFTWARE in order to license
such software to end-user/customers ("DERIVATIVE WORKS"); and,
Whereas, FRANCISCAN UNIVERSITY is willing to grant such license, rights
and option on the terms and conditions provided hereinafter.
Now, Therefore, in consideration of the mutual covenants and promises
contained herein, and for other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the parties agree as follows:
Article I. Grant of License and Rights; Obligations; Ownership
1.1 License. FRANCISCAN UNIVERSITY hereby grants to LICENSEE a commercial,
worldwide, non-exclusive and non-transferable license to use, copy, distribute and prepare DERIVATIVE
WORKS incorporating all or a portion of the LICENSED SOFTWARE and/or DOCUMENTATION for the sole purpose
of licensing end-users/customers to use the DERIVATIVE WORKS.
1.2 Source Code. FRANCISCAN UNIVERSITY shall provide LICENSEE with one
electronic copy of the LICENSED SOFTWARE in source code format and one copy of the DOCUMENTATION in
electronic format to be selected at the discretion of FRANCISCAN UNIVERSITY.
1.3 No Right to Sublicense. LICENSEE shall have no right to sublicense
the rights granted under paragraph 1.1 to another party except in connection with the use of
DERIVATIVE WORKS. LICENSEE shall refer potential distributors of the LICENSED SOFTWARE to FRANCISCAN
UNIVERSITY.
1.4 Derivative Works. Subject to the ownership of the LICENSED SOFTWARE
to FRANCISCAN UNIVERSITY, LICENSEE shall own all works of authorship created by it based on the
LICENSED SOFTWARE and/or DOCUMENTATION ("DERIVATIVE WORKS"). LICENSEE acknowledges that its use and
right to license such DERIVATIVE WORKS is contingent on LICENSEE maintaining its license under this
Agreement and is subject to the terms and conditions of this Agreement.
1.5 Copyright Notice. All copies of the LICENSED SOFTWARE, DOCUMENTATION
or DERIVATIVE WORKS made by LICENSEE shall include thereon a copyright notice notifying the holder of
each such copy that FRANCISCAN UNIVERSITY is the owner of the copyright in the LICENSED SOFTWARE and
DOCUMENTATION and a portion of each DERIVATIVE WORK thereof. Such copyright notice for the LICENSED
SOFTWARE and DOCUMENTATION shall read as follows: "(c) 2004 Franciscan University of Steubenville."
Such copyright notice for each DERIVATIVE WORK shall read as follows: "Portions of this software are
copyrighted by Franciscan University of Steubenville, 2004." Such notices shall appear in a
conspicuous location.
1.6 Patent Marking. LICENSEE shall not remove any patent markings from
the LICENSED SOFTWARE. The LICENSED SOFTWARE and all DERIVATIVE WORKS shall be marked as follows: U.S.
Patent No. 6,757,699." FRANCISCAN UNIVERSITY shall provide LICENSEE with all patent numbers as
they become available. Such marking shall appear in a conspicuous location.
1.7 Provision of Samples. LICENSEE agrees to provide FRANCISCAN UNIVERSITY
with two (2) copies of each DERIVATIVE WORK, within four (4) weeks of initial distribution, in the full
product packaging as received by the End-User, including the distribution disk and all other delivered
components, for the purpose of monitoring Licensee's compliance with the terms of this Agreement.
LICENSEE will send the copies to: Douglas B. Lowry, Ph.D., Franciscan University of Steubenville,
1235 University Blvd., Steubenville, Ohio 43952, U.S.A. LICENSEE authorizes FRANCISCAN UNIVERSITY to use
the two sample copies provided to FRANCISCAN UNIVERSITY to publicly demonstrate and promote the
capabilities of the LICENSED SOFTWARE and DERIVATIVE WORKS. LICENSEE grants to FRANCISCAN UNIVERSITY the
right to use, copy, modify and distribute the DERIVATIVE WORKS.
1.8 New Versions of Licensed Software. FRANCISCAN UNIVERSITY may, but is
not required to, authorize LICENSEE by notice to distribute any updated or extended versions of the
LICENSED SOFTWARE with LICENSEE'S DERIVATIVE WORKS pursuant to the terms of this Agreement. FRANCISCAN
UNIVERSITY reserves the right to license any new versions of the LICENSED SOFTWARE separately and subject
to different terms and conditions. In the event that FRANCISCAN UNIVERSITY makes a new version of the
LICENSED SOFTWARE available, upon written request from FRANCISCAN UNIVERSITY, LICENSEE agrees that within
six (6) months of receipt of such request, LICENSEE will cease distribution of prior versions of the
LICENSED SOFTWARE in LICENSEE'S DERIVATIVE WORKS and will upgrade its products to include the newly
released LICENSED SOFTWARE.
Article II. Payments
2.1 Fee. For the licenses and rights granted herein, LICENSEE shall pay to
FRANCISCAN UNIVERSITY a fee in the amount of five hundred United States dollars (US $500) payable immediately at
contract execution. LICENSEE acknowledges that this fee is non-refundable. Further, LICENSEE shall pay
to FRANCISCAN UNIVERSITY a 5% royalty for every sale of a DERIVATIVE WORK. Such royalty shall be paid on
a quarterly basis and be due no later than fifteen (15 days) after the closing of each quarter.
2.2 Distribution Reports. During the term of this Agreement, LICENSEE agrees
to prepare and provide to FRANCISCAN UNIVERSITY a quarterly Distribution Report stating the number of
copies of the LICENSED SOFTWARE distributed during the previous calendar quarter for each DERVIATIVE WORK.
Licensee shall submit the Distribution Report to FRANCISCAN UNIVERSITY within thirty (30) days of the close
of each calendar quarter, and LICENSEE shall maintain such records for one (1) year after the last copy of
the LICENSED SOFTWARE has been distributed.
Article III. Title, Warranty, Limitation of Liability, Indemnification
3.1 Title. The LICENSED SOFTWARE and DOCUMENTATION is the property of
FRANCISCAN UNIVERSITY and nothing contained in this Agreement shall be construed as:
(i) requiring the securing or the maintaining of copyright registration in the
LICENSED SOFTWARE;
(ii) a warranty or representation that any design, development, manufacture, sale,
offer of sale, use, licensing, testing or importation of software embodying all or any portion of the
LICENSED SOFTWARE will be free from infringement of patents or other intellectual property rights of any
third party;
(iii) an agreement to bring or prosecute actions or suits against third parties
for copyright infringement;
(iv) conferring any rights to use, in advertising, publicity or otherwise, any name,
trade name, trademark, service mark of FRANCISCAN UNIVERSITY, or any contraction, abbreviation or
simulation thereof;
(v) an obligation to furnish any information other than the LICENSED SOFTWARE
in source code format and the DOCUMENTATION in the format of FRANCISCAN UNIVERSITY's discretion;
(vi) conferring by implication, estoppel or otherwise any license or other right
under any patent or other intellectual property of FRANCISCAN UNIVERSITY, except as expressly granted
herein in Section 1.1; or
(vii) any arrangement or understanding that FRANCISCAN UNIVERSITY will make any
purchase, lease examination or test of, or give any approval with respect to any product or service.
3.2 Warranty. THE SOFTWARE IS PROVIDED UNDER THIS LICENSE "AS IS", WITHOUT
WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING, WITHOUT LIMITATION, WARRANTIES THAT THE
SOFTWARE IS FREE OF DEFECTS, MERCHANTABLE, FIT FOR A PARTICULAR PURPOSE OR NON-INFRINGING. THE ENTIRE
RISK AS TO THE QUALITY AND PERFORMANCE OF THE SOFTWARE IS WITH YOU. SHOULD ANY SOFTWARE PROVE DEFECTIVE
IN ANY RESPECT, YOU (NOT THE LICENSOR OR ANY OTHER CONTRIBUTOR) ASSUME THE COST OF ANY NECESSARY SERVICING,
REPAIR OR CORRECTION. THIS DISCLAIMER OF WARRANTY CONSTITUTES AN ESSENTIAL PART OF THIS LICENSE. NO USE OF
ANY SOFTWARE IS AUTHORIZED HEREUNDER EXCEPT UNDER THIS DISCLAIMER.
3.3 Limitation of Liability. UNDER NO CIRCUMSTANCES AND UNDER NO LEGAL
THEORY, WHETHER TORT, CONTRACT, OR OTHERWISE, SHALL LICENSOR OR ANY OTHER CONTRIBUTOR TO THE SOFTWARE,
OR ANY SUPPLIER OF ANY OF SUCH PARTIES, BE LIABLE TO ANY PERSON FOR ANY DIRECT, INDIRECT, SPECIAL,
INCIDENTAL, CONSEQUENTIAL, EXEMPLARY, OR PUNITIVE DAMAGES OF ANY CHARACTER INCLUDING, WITHOUT LIMITATION,
LOSS OF USE, DATA, OR PROFITS, WORK STOPPAGE, COMPUTER FAILURE OR MALFUNCTION, OR ANY AND ALL OTHER
COMMERCIAL DAMAGES OR LOSSES, EVEN IF SUCH PARTY SHALL HAVE BEEN INFORMED OF THE POSSIBILITY OF SUCH
DAMAGES.
3.4 Indemnification. LICENSEE shall protect, indemnify, hold harmless
and defend FRANCISCAN UNIVERSITY and its AFFILIATES, and their successors, agents, officers and
employees, with counsel acceptable to FRANCISCAN UNIVERSITY (at LICENSEE's own expense), from and
against any and all direct losses, damages, obligations, fines, claims, suits, actions or proceedings,
and any judgment, settlement, compromise or resolution for damages or any other relief resulting
therefrom, to the extent based on any allegation by a third party of any direct losses or damages,
arising out of or in connection with the manufacture, distribution, licensing, import, export or use
of the LICENSED SOFTWARE, DOCUMENTATION and/or DERIVATIVE WORKS by LICENSEE regardless of the legal,
equitable or factual basis thereof. FRANCISCAN UNIVERSITY has no obligation to indemnify, defend or
hold LICENSEE harmless from and against any claim that the LICENSED SOFTWARE infringes any third
party patent, copyright, trademark or other intellectual property right. LICENSEE will promptly
notify FRANCISCAN UNIVERSITY of any such claim. LICENSEE will promptly notify FRANCISCAN UNIVERSITY
Article IV. Additional Obligations
4.1 Requirement of License Agreement for Derivative Work. LICENSEE
shall not distribute the LICENSED SOFTWARE, DOCUMENTATION or DERIVATIVE WORKS absent a license
agreement generally in conformance with the terms and conditions pursuant to which LICENSEE
distributes other software. LICENSEE shall place the restriction in Section 4.1 above in any
license agreement.
4.2 Trademarks. LICENSEE hereby agrees to permit FRANCISCAN UNIVERSITY
to state that LICENSEE is "a registered licensee of the LICENSED SOFTWARE." FRANCISCAN UNIVERSITY
shall not have the right to use any trademark of LICENSEE without separate written permission. In
turn, LICENSEE shall not have the right to use any trademark of FRANCISCAN UNIVERSITY without express
written permission, including without limitation, Pryvit, Franciscan University, AND Franciscan
University of Steubenville.
Article V. Term and Termination
5.1 Term. The term of this Agreement shall commence on the effective
date hereof, and shall be in effect for a period of two (2) years. If LICENSEE is not in breach of
any material term or condition of this Agreement, LICENSEE may automatically renew this Agreement
by paying FRANCISCAN UNIVERSITY for each two (2) year renewal period.
5.2 Termination. LICENSEE may terminate this Agreement upon sixty (60)
days written notice to FRANCISCAN UNIVERSITY. If LICENSEE chooses to terminate/cancel this Agreement
in accordance with this Section 5.2, then all licenses granted pursuant to this Agreement are also
terminated or cancelled.
5.3 Bankruptcy/Default.
(a) Should LICENSEE become bankrupt or insolvent, or file a petition in bankruptcy, or if the business
of LICENSEE should be placed in the hands of a receiver, assignee or trustee for the benefit of
creditors, whether by the voluntary act of LICENSEE or otherwise, all licenses and rights granted
herein to LICENSEE shall terminate.
(b) Upon any material breach of, or default under, this Agreement by LICENSEE, FRANCISCAN UNIVERSITY
shall have the right to terminate/cancel this Agreement by sixty (60) days written notice to the
LICENSEE. Such termination/cancellation shall become effective at the expiration of such sixty (60)
days, unless the LICENSEE has cured any such breach or default prior to the expiration of such sixty
(60) days. In addition, FRANCISCAN UNIVERSITY shall have the right to seek judicial relief, including
damages and injunctive relief (relating to obligations of LICENSEE), to enforce the terms and
conditions of this Agreement.
5.4 Cessation of Use. Upon any termination/cancellation of the
licenses and rights granted herein to LICENSEE, LICENSEE shall immediately cease all use of the
LICENSED SOFTWARE and shall so certify to FRANCISCAN UNIVERSITY, in writing, that LICENSEE has
ceased use of the LICENSED SOFTWARE and has removed the LICENSED SOFTWARE from any DERIVATIVE
WORKS or compilations.
5.5 Post Termination Obligations. Termination/cancellation of the
licenses and rights granted herein to LICENSEE shall not relieve LICENSEE from any obligations
that occurred on or prior to such termination/cancellation, nor obligate FRANCISCAN UNIVERSITY
to refund any monies paid by LICENSEE hereunder. The termination/cancellation rights of FRANCISCAN
UNIVERSITY provided herein are in addition to all other rights and remedies available to FRANCISCAN
UNIVERSITY.
5.6 Effect on End-Users. Termination of this Agreement shall not
affect the rights of customer/end-users to continue to use LICENSED SOFTWARE through the end of
the term of the license agreement in place upon termination provided, however, that LICENSEE has
paid FRANCISCAN UNIVERSITY any royalty due on such license and such license is in conformance
with all terms and conditions of this Agreement.
Article VI. General Provisions
6.1 No Assignment. This Agreement and the licenses, rights or
obligations hereunder are personal to LICENSEE and may not be assigned or otherwise transferred
(in insolvency proceedings, by merger, by operation of law, or otherwise) without the prior
written consent of FRANCISCAN UNIVERSITY.
6.2 Communications. Any notice or other communication hereunder
shall be sufficiently given when sent by certified mail to the respective party at the address
specified below, or other address subsequently provided by written notice:
Franciscan University of Steubenville
1235 University Blvd.
Steubenville, Ohio 43952
Attn: David Skiviat, Vice President of Finance
With copies to:
Adam E. Scurti, Esq.
King, Hargrave, Scurti & Jack
200 Sinclair Bldg.
P.O. Box 249
Steubenville, OH 43952
Heather M. Barnes, Esq.
Brouse McDowell
500 First National Tower
106 S. Main St.
Akron, Ohio 44308-1471
or to LICENSEE at the address specified below: ____
6.3 Acts of God. Neither party shall be liable for any loss, damage, delay
or failure of performance resulting directly or indirectly from any cause resulting from an act of God,
riots, civil disturbances, wars, states of belligerency or acts of the public enemy, strikes, work
stoppages, or the laws, regulations, acts or failures to act of any governmental authority.
6.4 Severability. If any provision or portion of a provision of this Agreement
shall be held invalid or unenforceable, the remainder of this Agreement shall not be affected thereby and
the remaining terms shall continue in effect and be binding on the Parties, provided such invalid or
unenforceable provision or portion does not affect a material right or obligation under this
Agreement.
6.5 Entire Agreement. This Agreement (i) is binding on the Parties only
when it is duly executed and delivered by each Party, and (ii) sets forth the entire agreement and
understanding between the Parties as to the subject matter hereof and merges all prior discussions,
communications, and agreements between them respecting its subject matter. Neither of the Parties
shall be bound by any warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein or as et forth on or subsequent to the execution
hereof in a writing signed by an authorized representative of the Party to be bound thereby.
6.6 U.S. Government End Users. The LICENSED SOFTWARE has been developed
at private expense, without the use of government funds. If the LICENSED SOFTWARE is supplied to the
United States Government, the LICENSED SOFTWARE is classified as "restricted computer software" as
defined in clause 52.227-19 of the FAR. Use, duplication, and disclosure of the LICENSED SOFTWARE
by civilian agencies of the U.S. Government shall be as provided in clause 52.227-19 of the FAR.
Use, duplication, and disclosure of the LICENSED SOFTWARE by DOD agencies is subject solely to the
terms of this Agreement, as stated in DFARS 227.7202.
6.7 Export Regulations. It is LICENSEE'S responsibility to comply
with any export regulations applicable in LICENSEE's jurisdiction. Under CURRENT (May 2004) U.S.
export regulations this LICENSED SOFTWARE has been assigned Export Control Classification Number
5D992, is eligible for export from the U.S. and can be downloaded by or otherwise exported or
re-exported worldwide EXCEPT to U.S. embargoed destinations which include Cuba, Iran, Iraq, Libya,
North Korea, Sudan and Syria (or to any national of those countries) and any other country to
which the U.S. has embargoed goods and services, AND FURTHER SUBJECT TO any existing restrictions
on exports and re-exports of encryption items to designated terrorist supporting countries and
nationals of such countries, and persons designated in Part 744 of the Export Administration
Regulations.
6.8 Jurisdiction. The construction, application, and performance
of this Agreement shall be governed by the laws of the State of Ohio, U.S.A., without regard to
its conflicts of laws principle. All disputes arising hereunder or with respect hereto shall be
brought and maintained in the state courts in Jefferson County, Ohio or federal courts of the
State of Ohio, namely, the Federal District Court for the Southern District of Ohio, and each
party agrees to be subject to the jurisdiction of such courts for such purpose.
6.9 Waiver. No waiver of any breach of, or default under, this
Agreement shall constitute a waiver of any other breach of, or default under, this Agreement,
and no waiver shall be effective unless made in writing and signed by an authorized representative
of the Party waiving the breach or default.
6.10 Headings. The headings of this Agreement are for reference
only and will not affect the meaning or interpretation of this Agreement.
6.11 No Joint Venture. Neither party may represent or bind the
other party in any way and nothing stated in this Agreement will be construed as creating the
relationships of joint venturers, partners, employer and employee, franchisor and franchisee,
master and servant, or principal and agent.
6.12 Equitable Relief. Each party acknowledges that monetary damages
may not be an adequate remedy for any breach or threatened breach of the provisions of this
Agreement by the other party, and that such first party shall be entitled to seek equitable
relief, including a temporary restraining order, a preliminary or permanent injunction or
specific performance, as a remedy for any such breach or threatened breach. Each party agrees
that in the event such equitable relief is granted by a court of competent jurisdiction that
the party seeking equitable relief shall not be required to post a bond in connection therewith.
Each party further agrees that the remedies of a temporary restraining order, preliminary or
permanent injunction or specific performance shall not be deemed to be the exclusive remedies
for a breach of this Agreement but shall be in addition to all other remedies available at
law or equity.
In Witness Whereof, each of the Parties has caused this Agreement
to be executed in duplicate originals by its duly authorized representative on the respective
date entered below.
FRANCISCAN UNIVERSITY OF STEUBENVILLE
LICENSEE
[Signatures, titles, dates, etc. per Rich Text Format copy.]
