15-0910 Verde Martin IncLICENSE AGREEMENT
This License Agreement ("Agreement") is hereby made and entered into this 10th day of
September, 2015 by and between Verde Martin, Inc., a Nebraska corporation (hereinafter
referred to as "Licensor"), and the City of Elgin, Illinois, a municipal corporation (hereinafter
referred to as "Licensee").WHEREAS, Licensor is in the business of providing a certain Sales
Auditing System and associated documentation (the "System"); and
WHEREAS, Licensee desires to license the System from Licensor in accordance with the
terms and conditions of this Agreement and all Exhibits attached hereto; and
WHEREAS, Licensor is willing to license the System to Licensee.
NOW, THEREFORE, for and in consideration of the mutual promises and covenants
contained herein, the sufficiency of which is hereby mutually acknowledged, the parties hereto
hereby agree as follows:
1.
As used in this Agreement, the following terms have the following meanings:
1.1 "Confidential Information" means information or material (a) Licensee or
Licensor may gain knowledge of or access to in connection with this Agreement, which is
proprietary to Licensee or Licensor, (b) marked or designated by either Party as proprietary or
confidential, (c) otherwise disclosed in a manner consistent with its confidential or proprietary
nature, (d) which is known or should reasonably be known by the recipient to be treated by the
disclosing party as proprietary or confidential, or (e) of a Third Party that the recipient knows or
reasonably should know the disclosing party is obligated to keep confidential. Confidential
Information includes, but is not limited to, the following types of information, whether or not
reduced to writing: discoveries; ideas; concepts; research; development; processes; operating
procedures; know-how; creative works; software code; designs; business methods; marketing
techniques, logos, procedures and materials; marketing lists and other customer information;
fees; pricing; policies; and financial information. Confidential Information of Licensor
specifically includes but is not limited to the System.
1.2 "Derivative Works" means all Modifications and Updates, and all other
modifications; revisions; elaborations; improvements; additions or other changes made to the
System, which represent original works of authorship as defined in 17 U.S.C. §101 et seq.
Derivative Works are considered part of the System.
1.3 "IP Rights" means any and all of the following as may be recognized by law in
any jurisdiction throughout the world: (a) rights under any United States and foreign patents,
patent applications, and certificates of invention, and all continuations, continuations in part,
extensions, renewals, divisions, re -issues and re-examinations relating to the same; (b) moral
rights, neighboring rights, and copyrights in any work of authorship recognized by statute or at
common law or otherwise, including all copyright registrations issued by the United States
Register of Copyrights and copyright applications, together with any renewal or extension, and
all rights deriving from such registration or application; (c) rights to any trademarks (together
with all goodwill of the services symbolized by such trademarks and the portion of the business
to which such trademarks pertain), service marks, domain names, trade names, or trade dress,
and all related goodwill; (d) rights to any trade secrets, know-how, and confidential information;
and (e) other intellectual property or proprietary rights recognized under any laws or
international conventions and in each case including the right to apply for registrations,
certificates, or renewals with respect to those intellectual property or proprietary rights and the
right to prosecute, enforce, obtain damages relating to, settle or release any past, present, or
future infringement or misappropriation of those intellectual property or proprietary rights.
1.4 "License Fees" means the fees listed in Section 7 below, as adjusted from time to
time pursuant to Section 7.
1.5 "Modifications" means all changes made to the System. Modifications are
considered part of the System.
1.6 "Third Party" means any individual, firth, corporation, partnership, government or
other entity, howsoever designated, other than Licensor and Licensee.
1.7 "Updates" means all supplemental versions of the System. Updates are
considered part of the System.
2. LIMITED LICENSE; RESTRICTIONS
2.1 Subject to Licensee's timely payment of the License Fees, during the Term of the
Agreement, Licensor hereby grants to Licensee a limited, royalty -free, fully paid-up, non-
exclusive, non-transferrable, non -assignable, non-sublicensable license to use the System solely
for Licensee's internal business purposes in accordance with this Agreement. The Parties
acknowledge and agree that Licensor is the sole and exclusive owner of the System and of all IP
Rights therein; Licensee obtains no ownership of, or IP Rights to, the System.
2.2 Licensee will not (a) permit any parent, subsidiaries, affiliated entities or Third
Parties to use the System; (b) resell, rent, distribute, lease, sublicense, assign, remarket, or
otherwise transfer the System; (c) alter, enhance, translate, publicly display, adapt, arrange, or
otherwise modify the System; (d) make any Modifications, Updates or Derivative Works;
(e) obscure, alter or remove any copyright, trademark, patent notice or other proprietary notice
placed on the System; (f) copy or reproduce any System other than as explicitly allowed by this
Agreement; (g) misappropriate, or permit the misappropriation of, any System; (h) use or access
the System other than as permitted hereunder; (i) reverse engineer, decompile or disassemble the
System, or any portions thereof, 0) use any equipment, device, System, or other means to
circumvent digital rights protection used in connection with the System; (k) use the System to
develop a product which is competitive with the System; (1) separate the components of the
System; or (m) access the System in any way other than by the methods and/or interfaces
designated by Licensor.
2.3 Licensee will at all times comply with all applicable local, state, federal, and
foreign laws, treaties, regulations, and conventions in connection with Licensee's use of the
System, including without limitation those related to privacy, electronic communications and
anti -spam legislation.
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2.4 Licensee acknowledges and agrees that Licensor will have the right to monitor
Licensee's use of the System to assure Licensee compliance with this Agreement. Licensee
acknowledges and agrees that Licensor will have the right to take such actions, and to disable
and terminate Licensee's use of the System if Licensee uses the System in any manner other than
as expressly authorized under this Agreement or applicable law.
2.5 All rights not explicitly granted to Licensee in this Agreement are retained by
Licensor, and nothing in this Agreement limits or shall be construed as limiting Licensor's rights
in and to the System.
2.6 Licensor hereby certifies, represents and warrants to the Licensee that all of
Licensor's employees and/or agents who will be providing products and/or services with respect
to this Agreement shall be legally authorized to work in the United States. Licensor shall also, at
its expense, secure all permits and licenses, pay all charges and fees, and give all notices
necessary and incident to the due and lawful prosecution of the work, and/or the products and/or
services to be provided for in this Agreement. The Licensee shall have the right to audit any
records in the possession or control of Licensor to determine Licensor's compliance with the
provisions of this section. In the event the Licensee proceeds with such an audit, Licensor shall
make available to the Licensee Licensor's relevant records at no cost to the Licensee. Licensor
shall pay any and all costs associated with any such audit, not to exceed $900.
3. OWNERSHIP
3.1 The Parties acknowledge and agree that Licensor owns, and shall continue to
own, all right, title and interest in and to (a) the System and Licensor's Confidential Information
(including all IP Rights related thereto), (b) copies of the System and/or Licensor's Confidential
Information and (c) changes to the System and/or Licensor's Confidential Information. If by
operation of law or otherwise such ownership does not vest exclusively in Licensor, then
Licensee hereby irrevocably assigns, and will cause any person deemed to possess any such
ownership to assign, to Licensor, all such ownership. Licensee will promptly execute and
deliver, and cause any persons deemed to possess any such ownership to promptly execute and
deliver, all documents Licensor requests Licensee or such persons to execute and/or deliver in
connection with or furtherance of this Section 3.1.
3.2 Licensee shall neither place nor allow to be placed any lien or encumbrance on
the System or on any Licensor ownership right with respect to the System. At Licensee's own
cost and expense, Licensee shall defend and enforce Licensor's ownership rights set out in
Section 3.1 above. Licensee shall promptly notify Licensor of any threat or challenge to such
ownership rights of which Licensee becomes aware.
4. CONFIDENTLALITY
4.1 Licensor and Licensee shall maintain Confidential Information in strict
confidence. Without limiting the generality of the foregoing, each of Licensor and Licensee will:
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(a) safeguard all Confidential Information received by it using a reasonable degree of
care, but not less than that degree of care used by it in safeguarding its own
similar information or material;
(b) use all Confidential Information received by it solely as necessary to cant' out its
obligations under this Agreement and for no other purpose whatsoever;
(c) not disclose or permit any other person access to Confidential Information, except
that the disclosure or access shall be permitted to any employee, officer, director,
agent, representative, external or internal auditors or independent contractor of the
Parry requiring access to the same in the course of his or her employment or
performance of this Agreement ("Recipient Parties");
(d) not alter or remove any identification, copyright or proprietary rights notice which
indicates the ownership of any part of the Confidential Information; and
(e) upon termination or expiration of this Agreement, (i) return or destroy all
Confidential Information of the other Party, unless otherwise instructed by the
other Parry or unless such return or destruction is infeasible; and (ii) if return or
destruction is infeasible, maintain such Confidential Information in compliance
with the requirements of this Section 4 and the reasonable record retention
policies of the recipient or as may be required by law.
4.2 Nothing in this Section 4 shall restrict either Party with respect to information or
materials which: (a) the receiving Party rightfully possessed without restriction on disclosure
before it received the information from the disclosing Parry, as evidenced by written
documentation; (b) was in the public domain prior to the date of this Agreement or subsequently
becomes publicly available through no fault of the receiving Party or any entity acting on its
behalf, (c) was previously received by the receiving Party from an unaffiliated Third Party or is
subsequently furnished rightfully to the receiving Parry by an unaffiliated Third Party not known
to be under restrictions on use or disclosure; (d) is independently developed by an employee,
agent or contractor of such Party, as evidenced by written documentation; (e) is required to be
disclosed by law, regulations, court order or subpoena, provided that the disclosing Party will
exercise reasonable efforts to notify the other Party prior to disclosure, or (f) is required to be
disclosed to comply with or enforce the terms of this Agreement.
4.3 Notwithstanding the provisions of Section 4.3 above, the Parties agree that
Confidential Information may be made available to supervisory or regulatory authorities of any
Parry upon the written request of any such authority.
4.4 If Licensee breaches any of the obligations contained in this Section 4, the Parties
agree Licensor will suffer irreparable harm and the total amount of monetary damages for any
injury to Licensor from any violation of this Section 4 will be impossible to calculate and
therefore an inadequate remedy. Accordingly, Licensor shall be entitled to seek temporary and
permanent injunctive relief against Licensee and its employees, officers, directors, agents,
representatives or independent contractors. Notwithstanding anything to the contrary herein,
under no circumstances shall Licensee be liable to Licensor for any monetary damages.
4.5 Except as provided in this Agreement, (a) this Agreement does not confer any
right, license, interest or title in, to or under the Confidential Information to the receiving Party,
and (b) no license is hereby granted to the receiving Party, by estoppel or otherwise under any
patent, trademark, copyright, trade secret or other proprietary rights of the disclosing Parry.
4.6 Licensee will not use, or permit its employees, agents and subcontractors to use,
in any marketing materials, or in any other form of communication to any Third Party or to the
public generally, any trademarks, trade names, service marks or names, whether registered or
unregistered, belonging to Licensor, without the prior written consent of Licensor.
5. WARRANTIES; DISCLAIMER; AND LIMITATION OF LIABILITY
5.1 Licensor represents and warrants to Licensee that Licensor has all rights
necessary and proper for Licensor to enter into this Agreement and to undertake Licensor's
obligations hereunder.
5.2 Licensee represents and warrants to Licensor that Licensee has all rights
necessary and proper for Licensee to enter into this Agreement and to undertake Licensee's
obligations hereunder.
5.3 EXCEPT AS EXPLICITLY SET FORTH TO THE CONTRARY IN THIS
AGREEMENT: (A) THE SYSTEM IS PROVIDED "AS IS" WITH ALL FAULTS AND
WITHOUT WARRANTY; PROVIDED, HOWEVER, THAT AN IMPLIED WARRANTY OF
MERCHANTABILITY SHALL EXIST; AND (B) LICENSOR EXPRESSLY DISCLAIMS
ALL OTHER WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE.
LICENSOR DOES NOT WARRANT THAT THE SYSTEM WILL MEET LICENSEE'S
REQUIREMENTS. LICENSOR DOES NOT WARRANT OR MAKE ANY
REPRESENTATION REGARDING THE USE OR THE RESULTS OF THE USE OF THE
SYSTEM IN TERMS OF CORRECTNESS, ACCURACY, QUALITY, RELIABILITY,
APPROPRIATENESS FOR A PARTICULAR TASK OR APPLICATION OR OTHERWISE.
5.4 IN NO EVENT SHALL EITHER PARTY HERETO BE LIABLE TO THE
OTHER PARTY, ITS EMPLOYEES, SUBCONTRACTORS, AND/OR AGENTS OR TO ANY
THIRD PARTY, FOR ANY INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL, OR
PUNITIVE DAMAGES; OR FOR LOST PROFITS, FOR ANY CLAIM OR DEMAND OF
ANY NATURE OR KIND ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT.5.5 IN NO EVENT WILL THE CUMULATIVE LIABILITY OF LICENSOR
FOR ANY LOSS OR DAMAGE, DIRECT OR INDIRECT, FOR ANY CAUSE OF ACTION
ARISING OUT OF OR RELATED TO THIS AGREEMENT, EXCEED THE LICENSE FEES
PAID AND PAYABLE BY LICENSEE TO LICENSOR IN THE TWELVE (12) MONTHS
IMMEDIATELY PRIOR TO DATE THE CAUSE OF ACTION AROSE.
6. TERM, TERMINATION AND EXPIRATION
6.1 This Agreement is effective as of the Effective Date and will remain in effect for
twelve (12) months following the Effective Date ("Original Term"). Following the Original
Term, this Agreement will automatically be renewed for consecutive periods of twelve (12)
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months (each a "Renewal Term"), unless either Party gives the other Party notice at least ten (10)
days prior to the expiration date of the Original Term or the then -current Renewal Term (as the
case may be) that this Agreement will not be renewed. The Original Term together with all
Renewal Terms is the "Term."
6.2 Either Parry may, upon providing thirty (30) days' prior written notice to the other
Party, terminate this Agreement if the other Party materially breaches any provision of this
Agreement and the other Party fails to cure said material breach with thirty (30) days of receipt
of the notice of material breach.
6.3 Either Party may upon notice terminate this Agreement if the other Party (a) files
a voluntary petition in bankruptcy which is not dismissed in ninety (90) days; (b) is adjudged
bankrupt;. (c) has a court assume jurisdiction of its assets under a federal reorganization act;
(d) has a trustee or receiver appointed by a court for all or a substantial portion of its assets;
(e) suspends its business operations; or (f) makes an assignment of its assets for the benefit of its
creditors, except for an assignment as required in the ordinary course of business.
6.4 No termination or expiration of this Agreement shall. (a) modify any payment
obligation or other liability hereunder. arising prior to said termination or expiration (and all such
payment obligations shall be fulfilled promptly following said termination or expiration); or
(b) entitle Licensee to a refund of any portion of the License Fees paid on or before the date of
such termination.
6.5 For the avoidance of doubt, upon any termination or expiration of this Agreement
all licenses granted under this Agreement shall immediately terminate.
6.6 Provisions concerning the Parties' rights and obligations which by the content of
the provision operate after termination or expiration or which are necessary to enforce any right
will survive any termination or expiration of this Agreement. Without limiting the generality of
the foregoing, the provisions of Sections 1, 3, 4, 5, 6.6, 7, 8, 9, 9.1, and 9.13 of this Agreement
shall survive any termination or expiration of this Agreement.
6.7 The termination rights of the Parties as set forth in this Section 6 (a) are
cumulative, such that the existence of a right under any provision or Section is not exclusive of
the right under any other provision or Section; and (b) are in addition to and not in limitation of
any other rights or remedies the Parties may have at law or equity.
7. LICENSE FEES
7.1 Licensee shall pay $16,250 for the sales audit training audit slots for 10 programs.
Training sessions are tentatively scheduled for November 2015, December 2015, January 2016,
February 2016 and March 2016. A deposit of $1,250 is due on or before September 30, 2015.
$5,000 will be paid November 4, 2015. $5,000 will be paid December 2, 2015. $5,000 will be
paid January 6, 2016. The balance for training materials will be paid February 10, 2016.
7.2 In addition to the License Fees, Licensee shall pay all sales, use or other taxes,
federal, state or otherwise, however designated, which are levied or imposed by reason of this
Agreement or the transactions herein contemplated.
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7.3 Other fees include $55 for training materials for each participant.
8. INDEMNIFICATION
8.1 Licensee shall indemnify, and hold harmless Licensor and its directors, officers,
employees, successors and assigns ("Licensor Indemnified Parties") from and against any and all
claims, demands, lawsuits, liabilities, losses, expenses (including but not limited to reasonable
fees and disbursements of counsel and court costs), judgments, settlements and penalties
associated with the actual or alleged infringement of any IP Rights of a Third Party ("IP
Claims") to the extent that that such IP Claims arise out of or in connection with: (a) Licensee's
use of the System in combination with other products furnished either by Licensee or a Third
Party, which such combination was not approved by Licensor in writing; (b) modifications or
adaptations to the System made by anyone other than Licensor or Licensor's authorized agents;
or (d) Licensee's use of the System in a manner for which the System were not reasonably
intended.
8.2 Licensor will use commercially reasonable efforts to provide the Licensee with
prompt notice of any written claim covered by the indemnification obligations and undertakings
set forth above, and will cooperate appropriately with Licensee in connection with the Licensee's
evaluation of such claim.
9. GENERAL PROVISIONS
9.1 Governing Law. This Agreement shall be subject to and governed by the laws of
the State of Illinois. Venue for the resolution of any disputes or the enforcement of any rights
arising out of or in connection with this Agreement shall be in the Circuit Court of Kane County,
Illinois. Licensor hereby irrevocably consents to the jurisdiction of the Circuit Court of Kane
County, Illinois for the enforcement of any rights, the resolution of any disputes and/or for the
purposes of any lawsuit brought pursuant to this agreement or the subject matter hereof, and the
Licensor agrees that service by first class U.S. mail to the entity and address provided for herein
at Section 18 shall constitute effective service.9.2 Independent Contractors. The Parties are
independent contractors and no agency, partnership, joint venture, franchise or employee -
employer relationship is intended or created by this Agreement. Neither Party shall have the
power to obligate or bind the other Parry. Neither party shall be responsible for the acts or
omissions of the other party or the other party's personnel. Each party shall be responsible for
compliance with all laws, rules and regulations applicable to it.
9.3 Counterparts. This Agreement may be executed in one or more counterparts, each
of which shall be deemed an original and all of which taken together shall be deemed one
instrument.
9.4 Notice. Any notice or other communication required hereunder shall be given in
writing and sent by registered or certified mail, postage prepaid; by express or overnight delivery
service, postage prepaid; email, or by hand delivery. Until notified by the addressee of a different
address, all such communications shall be sent to the Parties at their addresses as set forth in this
Agreement's preamble, in the case of Licensor to the attention of Jill Slupe; and in the case of
Licensee to the attention of its Randy Roepelle with a copy to the City of Elgin.
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9.5 Waiver. No waiver of any provisions of this Agreement or of any rights or
obligations of either Parry hereunder shall be effective unless in writing and signed by the Party
or Parties waiving compliance, and any such waiver shall be effective only in the specific
instance and for the specific purpose stated in such writing.
9.6 Entire Agreement. This Agreement together with its Exhibits (which are hereby
incorporated herein and made fully a part hereof) sets forth the entire understanding and
agreement of the Parties with respect to the subject matter hereof and supersedes any and all oral
or written agreements or understandings between the Parties as to said subject matter. This
Agreement may be amended only by a writing signed by both Parties. Neither Party is relying
upon any warranties, representations, assurances nor inducements not expressly set forth herein.
9.7 Succession. This Agreement shall be binding upon and inure to the benefit of the
Parties, and to the extent permitted herein their respective successors and assigns.
9.8 Assi¢mnent. Licensee may not assign or otherwise transfer this Agreement in
whole or in part without the prior written consent of Licensor. Licensor may not assign or
otherwise transfer this Agreement in whole or in part without the prior written consent of
Licensee which such consent shall not be unreasonably withheld or delayed; provided however
that Licensor may without Licensee's consent assign or otherwise transfer this Agreement in
whole or in part incident to any (a) reorganization, acquisition or merger of Licensor, or (b) sale
of all or substantially all of Licensor's assets.
9.9 Audit. Upon at least five (5) business days' prior notice, during Licensee's regular
business hours, and in such manner so as not to unreasonably interfere with Licensee's normal
business operations, Licensor shall have the right to audit, either itself or through a Third Party
selected by Licensor, Licensee's systems and premises to ensure Licensee's compliance with this
Agreement.
9.10 Force Maieure and Restricted Performance. If performance by either Parry of any
obligation under this Agreement is prevented, restricted, delayed or interfered with by reason of
labor disputes, strikes, acts of God, floods, lightning, severe weather, shortages of materials,
rationing, utility or communication failures, failure or delay in receiving electronic data,
earthquakes, war, acts of terrorism, revolution, civil commotion, acts of public enemies,
blockade, embargo, or any law, order, proclamation, regulation, ordinance, demand or
requirement having legal effect of any government or any judicial authority or representative of
any such government, or any other act, omission or cause whatsoever, whether similar or
dissimilar to those referred to in this clause, which are beyond the reasonable control of the Party
whose performance is impacted (each, a "Force Majeure Event"), then the impacted Party shall
be excused from the performance to the extent of the prevention, restriction, delay or
interference. The Party whose performance is impacted shall be excused from performance of its
obligations by a Force Majeure Event only for as long as the Force Majeure Event prevails and
the impacted Party continues to use commercially reasonable efforts to recommence
performance as soon as practicable.
9.11 Severability. If any provision of this Agreement is held invalid or unenforceable
for any reason, the invalidity shall not affect the validity of the remaining provisions of this
Agreement, and the Parties shall substitute for the invalid provisions a valid provision, which
most closely approximates the intent and economic effect of the invalid provision.
9.12 Section Headings. The section headings in this Agreement are solely for
convenience and shall not be considered in its interpretation.
9.13 Illinois Interest Act. Licensor hereby waives any and all claims to interest on
money claimed to be due pursuant to this Agreement, and any and all such rights to interest to
which it may otherwise be entitled pursuant to law, including, but not limited to, pursuant to the
Local Government Prompt Payment Act, as amended (50 ILCS 505/1, et seq.), or the Illinois
Interest Act, as amended (815 ILCS 205/1, et seq.).
9.14 Execution. This agreement may be executed in counterparts, each of which shall
be an original and all of which shall constitute one and the same agreement. For the purposes of
executing this agreement, any signed copy of this agreement transmitted by fax machine or e-
mail shall be treated in all manners and respects as an original document. The signature of any
party on a copy of this agreement transmitted by fax machine or e-mail shall be considered for
these purposes as an original signature and shall have the same legal effect as an original
signature. Any such faxed or e-mailed copy of this agreement shall be considered to have the
same binding legal effect as an original document. At the request of either party any fax or e-
mail copy of this agreement shall be re -executed by the parties in an original form. No party to
this agreement shall raise the use of fax machine or e-mail as a defense to this agreement and
shall forever waive such defense.
9.15 Licensor shall provide the following goods and services to Licensee pursuant to
this Agreement:
GOODS OR SERVICES DATE TO BE PROVIDED
5 Training Sessions November 2015 to April 2016
Training Materials
Follow up phone calls and coaching sessions
November 2015
IN WITNESS WHEREOF, the Parties have executed this Agreement with the intent that
it be effective as of the Effective Date.
CITY OF ELGIN
�-�
Sean egall, City Manager
City Clerk /
VERDE MARTIN, INC.
Jill Slupe_
Print Name
Signature
CEO
Title
FALegal Dept\AgreementTicenae Agr-Verde Martin Inc -clean 9-9-15.docx
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