HomeMy WebLinkAboutWestern Kentucky University Research Foundation Inc.-Bingocize Non-Exclusive License Agreement_A-22-333.pdf NON-EXCLUSIVE LICENSE AGREEMENT BETWEEN B-LA-22-06-8BE5
WESTERN KENTUCKY UNIVERSITY RESEARCH FOUNDATION, INC. D-2 2-3 3 3
AND FRESNO COUNTY DEPARTMENT OF PUBLIC HEALTH
B-LA-22-06-8BE5
This license agreement(the "Agreement") is entered into as of the date of the last signature, (the "Effective
Date")by and between Western Kentucky University Research Foundation, Inc. ("LICENSOR") a not for profit
corporation, duly formed and operating under the laws of Kentucky, and FRESNO COUNTY DEPARTMENT OF
PUBLIC HEALTH, operating and located at 1221 Fulton Street 3rd Floor Room#360, Fresno, CA 93721
("LICENSEE").
RECITALS
1. WHEREAS, LICENSOR is the sole and exclusive owner of proprietary and copyrighted material,
including a bingo-styled game utilizing activities involving physical fitness, health knowledge, memory building,
nutrition, falls prevention, and social engagement; and an online computer application software for handheld
computers, mobile phones or other computers for use with the bingo-styled game; and, an audio-video training
course/system, which includes copyrighted images,pictures, clips and audio clips (the "Licensed Technology"); and,
2. WHEREAS, LICENSOR is the sole and exclusive owner of U.S. Trademark Registration Nos.
4,627,431 and 5,449,778 for the Bingocize ®trademark, and any and all common law rights associated therewith
(collectively referred to as the "Trademarks")which are used with and affixed to LICENSOR's Licensed
Technology; and,
3. WHEREAS, LICENSEE desires to obtain from LICENSOR, and LICENSOR desires to grant to
LICENSEE, a license to use the Licensed Technology and Trademarks (collectively the "Trademarked Products")
under the terms and conditions set forth in this Agreement.
Now, in consideration of the foregoing, the mutual promises contained herein and other good and valuable
consideration, the receipt and sufficiency thereof is hereby acknowledged, the Parties agree as follows:
ARTICLE 1
LICENSE GRANT AND RESERVATION OF RIGHTS
1.1 License Grant. Subject to the reservations of Section 1.3, LICENSOR hereby grants and LICENSEE
accepts a non-exclusive license to use the Trademarked Products, solely within facilities located in the
county/counties of Fresno,where LICENSEE offers services.
1.2 No Interest in Technology.Nothing provided in this Agreement shall be construed as granting title or
any interest in the Trademarked Products except as expressly provided herein.
1.3 Reservation of Rights. LICENSOR reserves the right to use,practice and license the Trademarked
Products to other third parties.
ARTICLE 2
USE OF TRADEMARKS
2.1 LICENSEE acknowledges LICENSOR's ownership of the Trademarks and the value and goodwill
associated therewith. LICENSEE's use of the Trademarks shall inure to the benefit of LICENSOR for all purposes
including registration of Trademarks.
2.2 LICENSEE shall not do any act that would invalidate or challenge the validity of any of LICENSOR's
rights to the Trademarks or attempt to register any confusingly similar Trademarks in its own name, or act in any
manner that would jeopardize LICENSOR's rights therein.
2.3 LICENSEE shall affix the proper trademark notice to any packaging, advertising and promotional
materials associated with the Trademarked Products. Such notices shall include the registration symbol ® on
promotional materials for the Trademarked Products. At the request of the LICENSOR, the associated promotional
material shall include a statement to the effect, that`Bingocize ® is a registered trademark of WKU Research
Foundation and is used with permission."
2.4 LICENSEE shall not make any significant changes to the Trademarks in its promotional materials.
2.5 LICENSOR has a substantial and legitimate interest in protection of the exceptional goodwill and
value associated with the Trademarks and in encouraging the LICENSEE's full and complete performance under this
Agreement. Except for actions permitted by this Agreement, LICENSEE shall use commercially reasonable efforts to
not do or cause to be done, anything to materially impair the goodwill associated with the Trademarks.
2.6 LICENSOR shall be responsible for all trademark registrations and maintenance fees associated with
the Trademarks. LICENSEE shall cooperate with LICENSOR, at the expense of LICENSOR, and shall sign any
documents reasonably required by LICENSOR, and agrees to provide LICENSOR with any specimens that are
needed to obtain and/or maintain any registrations for the Trademarks for use in connection with the Trademarked
Products.
2.7 LICENSOR shall have the right to exercise quality control over LICENSEE's use of the Trademarks
to the extent needed to maintain the validity of any registrations of the Trademarks and to protect the associated
goodwill.
ARTICLE 3
TERM
3.1 Term of Agreement. The Term for this Agreement shall be effective as of the effective date set forth
above, and shall continue for a term of two years from said effective date (the "Initial Term"), as long as the license
and training fees are paid pursuant to Article 5.
ARTICLE 4
SUBLICENSING BY LICENSEE
4.1 Sublicenses. LICENSEE may not grant any sublicenses to use the Licensed Technology or the
Trademarks, either separately or as the Trademarked Product, without the written approval of LICENSOR.
ARTICLE 5
LICENSE AND TRAINING FEES
5.1 Initial License Fee.Upon execution of this agreement, LICENSEE agrees to pay to LICENSOR a
non-creditable, non-refundable, initial license fee for use of the Trademarked Products, in the amount of Four
Hundred Dollars ($400.00) for the first licensed county and Three Hundred Dollars ($300.00)per additional licensed
county for the Initial Term. The initial license fee due by LICENSOR is Four Hundred Dollars ($400.00).
5.2 Training Fees. LICENSOR agrees to provide Two (2) on-line training class for a fee of Three
Hundred Dollars ($300.00)payable to LICENSOR. LICENSOR agrees to provide Zero (0) on-site training class for a
fee of Zero Dollars ($0.00)payable to LICENSOR. Once an instructor has completed the on-line training class, they
will be certified to conduct sessions using the Trademarked Products for an initial period of two (2) years. After the
Initial Term has passed, the instructor must be recertified.
5.3 Bingocize ®In A Box. LICENSEE agrees to purchase Two (2) Bingocize ® In a Box at a price of
Seven Hundred Dollars ($700.00)plus One Hundred Dollars ($100.00) shipping and handling.
5.4 Payment Procedures. All payments due from LICENSEE to LICENSOR hereunder shall be in U. S.
currency by check or money order and shall be payable to the "Western Kentucky University Research Foundation,
Inc."upon execution of this Agreement at the address indicated on the invoice (or through other agreed upon method
of payment by the parties.) The financial contact for this Agreement is:
ATTN: Paula Mattison
WKU Grants & Contracts Accounting
1906 College Heights Blvd, #11002
Bowling Green, KY 42101-1002
(270) 745-5338
ARTICLE 6
WARRANTIES, REPRESENTATIONS,DISCLAIMER OF WARRANTY AND
LIMITATION OF LIABILITY
6.1 Warranties and Representations of LICENSOR. LICENSOR hereby warrants and represents that:
6.1.1 It has the authority to issue the license granted herein;
6.1.2 It has by proper action duly authorized the execution, delivery and performance of this
Agreement, and this Agreement shall constitute the legal, valid and binding agreement of LICENSOR enforceable
according to its terms, and;
6.1.3 The execution, delivery and performance of this Agreement does not and will not conflict in
any material respect or constitute a material default under its organizational documents or under the terms and
conditions of any documents, agreements or other writings to which it is a party.
6.2 Authority to Execute Agreement. Both Parties warrant that it has full power and authority to execute
and deliver this Agreement and to perform its obligations hereunder;
6.3 Disclaimer of Warranties. Except as expressly set forth in this Agreement, LICENSOR disclaims all
warranties under this Agreement, including,but not limited to, all warranties expressed or implied, including without
limitation, as to title or non-infringement, and as to merchantability and fitness for any particular purpose with
respect to the Trademarked Products.
6.4 Limitation of Liability. LICENSEE ASSUMES THE ENTIRE RISK AS TO THE PERFORMANCE
AND USE OF THE TRADEMARKED PRODUCTS. IN NO EVENT SHALL LICENSOR, INCLUDING ITS
TRUSTEES, DIRECTORS, FELLOWS, OFFICERS, EMPLOYEES, STUDENTS AND AGENTS, BE
RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL,
PUNITIVE, OR OTHER DAMAGES WHATSOEVER, INCLUDING BUT NOT LIMITED TO DAMAGES
ARISING FROM OR RELATED TO LICENSEE'S USE OR A THIRD-PARTY'S USE OF THE
TRADEMARKED PRODUCTS, OR LOST PROFITS OR OTHER ECONOMIC LOSS OR DAMAGE WITH
RESPECT TO THE TRADEMARKED PRODUCTS, WHETHER GROUNDED IN TORT, (INCLUDING
NEGLIGENCE AND PRODUCT LIABILITY) AND STRICT LIABILITY, CONTRACT OR OTHERWISE. THE
ABOVE LIMITATIONS ON LIABILITY APPLY EVEN THOUGH LICENSOR, ITS TRUSTEES, DIRECTORS,
FELLOWS, OFFICERS, EMPLOYEES, STUDENTS OR AGENTS MAY HAVE BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGE. THE TRADEMARKED PRODUCTS AND ALL ASSOCIATED
MATERIALS THAT ARE THE SUBJECT OF THIS AGREEMENT ARE DELIVERED "AS IS" IN EVERY
RESPECT.
ARTICLE 7
INDEMNITY
7.1 Indemnity. LICENSEE shall indemnify and hold harmless LICENSOR and its affiliated entities
and their officers, directors, employees, and agents from any and all claims, suits damages, attorney's fees, costs and
other expenses arising from LICENSEE's performance and operations under this Agreement, whenever asserted and
established.
ARTICLE 8
INFRINGEMENT
8.1 Infringement. LICENSEE shall promptly notify LICENSOR of any suspected infringement of the
Trademarked Products by a third party and furnish LICENSOR with any available evidence thereof. LICENSOR
shall consider what action to take, if any, including the right, but not the obligation, to institute, prosecute or control
any action of its own choice. LICENSOR shall be entitled to all damages and monetary awards recovered in such
action.
ARTICLE 9
TERMINATION
9.1 Termination for Cause. Either parry may suspend performance and/or terminate this Agreement
upon written notice at any time if the other party is in material breach of any warranty, term, condition or covenant of
this Agreement and fails to cure that breach within thirty (30) days after written notice thereof.
9.2 Effect of Termination. Upon termination of this Agreement for any reason, LICENSEE's right to
utilize the Trademark Products of LICENSOR shall immediately terminate and LICENSEE shall return to
LICENSOR any and all copies of the Trademarked Products.
ARTICLE 10
MISCELLANEOUS PROVISIONS
10.1 Notices.All notices required or permitted to be given under this Agreement shall be effective when
given in writing, with references to this Agreement and when(a) delivered personally, (b) sent by confirmed e-mail
or facsimile, (c) five (5) days after having been sent by United States mail, registered or certified, return receipt
requested, postage prepaid, or(d) two (2) days after deposit with a commercial overnight carrier, with written
verification of receipt. All communications shall be sent to the applicable party's address set forth below or to such
other address as may be designated by written notice.
To LICENSOR: WKURF, Inc
ATTN: Mr. Henry B. Steen
1906 College Heights Blvd., #11016
Bowling Green KY 42101-1016
Buddy.Steen@wku.edu
To LICENSEE: FRESNO COUNTY DEPARTMENT OF PUBLIC HEALTH 1221
Fulton Street 3rd Floor Room#360,
Fresno, CA 93721
10.2 Assignment. It is expressly understood and agreed that LICENSEE shall not assign any of its rights
or delegate any of its duties under this Agreement without LICENSOR's prior written consent, which shall not be
unreasonably withheld; provided, however, if LICENSEE transfers substantially all of its assets whether by operation
of law or otherwise, such transfer will be considered assignment of the rights to this Agreement approved by
LICENSOR upon notification of such transfer of assets. Any attempted assignment in violation of this article shall be
void. This Agreement shall be binding on the Parties and their respective successors and permitted assigns.
10.3 Governing Law. This Agreement is to be governed by and construed in accordance with laws of the
State of Kentucky. Exclusive venue for any dispute not barred by sovereign immunity arising under, out of, or in
connection with this Agreement will be the state and federal courts in or in close proximity to Warren County,
Kentucky, unless the action cannot be brought in such court due to statutory proclamation in which case only the
venue will be as so proscribed. LICENSEE consents to the personal jurisdiction of all such courts and hereby waives
any claims of lack of personal jurisdiction or inconvenience of such court. Nothing herein will be interpreted as a
waiver of sovereign immunity.
10.4 Entire Agreement; Amendments. This Agreement contains the entire understanding of the Parties
with respect to the matter contained herein. The Parties may, from time to time during the continuance of this
Agreement, modify, vary, or alter any of the provisions of this Agreement, but only by an instrument duly executed
by authorized officials of both Parties hereto and only if such instrument specifically states that it is an amendment to
this Agreement.
10.5 Severability. If any provision of this Agreement is found invalid or unenforceable, the remaining
provisions will be given effect as if the invalid or unenforceable provision were not a part of this Agreement.
10.6 Waiver.No waiver by either party of any breach of this Agreement, no matter how long continuing
or how often repeated, shall be deemed a waiver of any subsequent breach thereof, nor shall any delay or omission on
the part of either party to exercise any right, power or privilege hereunder be deemed a waiver of such right, power or
privilege.
10.7 No Agency. The relationship between the Parties is that of independent contractors. Neither party
shall be deemed to be an agent of the other in connection with the exercise of any rights hereunder, and neither shall
have any right or authority to assume or create any obligation or responsibility on behalf of the other.
THEREFORE, the Parties have executed this Agreement by their duly authorized officers or representatives.
WESTERN KENTUCKY UNIVERSITY FRESNO COUNTY DEPARTMENT
RESEARCH FOUNDATION, INC. OF PUBLIC HEALTH
,.J�.J
Digitally signed by Buddy Steen Digitally signed by Gary Cornuelle
Buddy S}to e l Y1 l Date:2022.07.05 12:19:28 Gary C o rn u e l l e Date:2022.08.01 12:10:01-07'00'
-05'00'
Signature Date Signature Date
MR. HENRY B. STEEN GARY CORNUELLE
WKURF, INC. PRESIDENT PURCHASING MANAGER