End-user License Agreement for Commercial ARMS-D Products

ADHERENCE TO REFILLS AND MEDICATIONS SCALE FOR DIABETES (ARMS-D)

NON-EXCLUSIVE LICENSE AGREEMENT

This license agreement ("Agreement") is entered into between Vanderbilt University, a private, non-profit institution of higher education in Nashville, Tennessee with offices at 1207 17th Avenue South, Suite 105, Nashville, Tennessee 37212 ("Vanderbilt"), and the person representing the institution that registers to use the ARMS-D ("Licensee") (each a “Party” and, collectively, the “Parties”), on the Registration Page. Prior to such registration in accordance with this Agreement, the Licensee shall have no rights or license in connection with the ARMS-D or this Agreement.

RECITALS

WHEREAS, Emory University (“Emory”) owns and controls copyrights to the creative work titled Adherence to Refills and Medications Scale (the “ARMS”); and Vanderbilt and Yeshiva University (“Yeshiva”) have co-authored and co-own a Derivative Work (as defined below) of the ARMS titled Adherence to Refills and Medications Scale for Diabetes, described in Vanderbilt technology VU19020 (the “ARMS-D”);

WHEREAS, Vanderbilt has obtained exclusive rights under the ARMS to license the ARMS-D on behalf of Vanderbilt, Emory, and Yeshiva (collectively, the “Institutions”);

WHEREAS, COMPANY wishes to obtain a license to use the ARMS-D to conduct commercial research in subjects with type 2 diabetes; and

WHEREAS, Vanderbilt is willing to grant such a license to COMPANY, in consideration of COMPANY’s satisfaction of its obligations hereunder and for other good and valuable consideration as set forth below.

NOW, THEREFORE, the Parties agree as follows:

1.     DEFINITION OF TERMS

1.1.  “Authors” shall mean the authors of the Copyrighted Works.

1.2.  “Copyrighted Works” shall mean the the ARMS and ARMS-D.

1.3.  “Derivative Works” shall mean any derivative works (as defined by US Copyright Laws in 17 USC §101), regardless of author.

1.4.  "Effective Date" means the date on which the Licensee downloads the ARMS-D.

1.5.  “Field” shall mean studies conducted by COMPANY  as described by the Licensee on the Registration Page. “Representatives” shall mean trustees, directors, officers, employees, faculty, Authors, personnel, affiliated investigators, agents and representatives, medical and professional staff, students, affiliates, and their respective successors, heirs, and assigns.

1.6.   "Registration Page" means the portion of the website (Currently VUeInnovations.com) used by Licensees to enter information permitting the licensing of ARMS-D.

2.     LICENSE GRANT

2.1.  License Grant. Subject to the terms of this Agreement and any third party rights, Vanderbilt hereby grants to COMPANY a non-exclusive, worldwide, non-sublicensable, license to use the ARMS-D solely in the Field during the Term under its interest in and to the ARMS-D, for the purpose of distributing the ARMS-D for use as questionnaires to be administered by COMPANY or, if applicable, COMPANY’s contract service agencies and completed by patients in the Field. For the avoidance of doubt: (i) no training by Vanderbilt or the Authors on the use or administration of the ARMS-D is granted hereunder, and (ii) no rights to the ARMS are granted under this Agreement to COMPANY for any purpose.

2.2.  Government Rights & Requirements. Notwithstanding anything herein to the contrary, any and all licenses and other rights granted hereunder are limited by and subject to the rights and requirements of the US Government, which may attach as a result of US Government sponsorship of research at the Institutions in which the Copyrighted Works were authored, as set forth in the relevant Government research contracts with the Institutions and in applicable US statutes, and as such rights and requirements may be amended or modified by law.

2.3.  Reservation of Rights. Vanderbilt reserves the right for the Institutions and Authors to practice under the Copyrighted Works for not-for-profit educational, scholarship, and research purposes. Nothing herein shall be construed to require the Institutions or the Authors to maintain the Copyrighted Works or to make any Derivative Works therefrom.

2.4.  No Modification. COMPANY shall not create Derivative Works of the ARMS-D without the prior written agreement of Vanderbilt. In the event that COMPANY creates any Derivative Works of the ARMS-D in violation of this Agreement, such Derivative Works shall be the exclusive property and copyright of Vanderbilt and Yeshiva, and Vanderbilt and Yeshiva shall have the right to use such Derivative Works for any and all purposes without accounting to COMPANY.

2.5.  No Reproduction. COMPANY shall not reproduce the ARMS-D, except for the limited purpose of generating sufficient copies for use under the license granted herein and for backup purposes. Unless expressly permitted by the license granted herein, COMPANY shall not distribute the ARMS-D or copies thereof to third parties by sale, rental, lease, lending, or other transfer, without the prior written permission of Vanderbilt.

2.6.  No Additional Rights. The Institutions shall retain ownership of the Copyrighted Works. Nothing in this Agreement shall be construed to confer any rights upon COMPANY by implication, estoppel, or otherwise as to the Copyrighted Works or any technology, trademarks, copyrights, or other intellectual property rights of the Institutions or any other entity, except for the rights expressly granted herein.

3.     PAYMENTS

In consideration for the license granted under this Agreement, COMPANY shall pay Vanderbilt a one-time fee of ten thousand dollars ($10,000), payable within thirty (30) days of execution of this Agreement. Such payment shall be made without any deduction or withholding for or on account of any tax, except as expressly permitted in this Agreement.

4.     TERM AND TERMINATION

4.1.  Term. The term of this Agreement shall commence on the Effective Date and shall continue for one (1) year from the Effective Date unless terminated in accordance with the provisions herein (the “Term”).

4.2.  Bankruptcy. If COMPANY becomes bankrupt or insolvent, files a petition in bankruptcy, or is placed in the hands of a receiver, assignee, or trustee for the benefit of creditors, whether by the voluntary act of COMPANY or otherwise, this Agreement shall automatically terminate, inasmuch as permitted under applicable and prevailing law.

4.3.  Termination by Vanderbilt.

4.3.1.   If COMPANY: (i) fails to make payment to Vanderbilt in accordance with the terms of this Agreement, or (ii) breaches or defaults on any other term of this Agreement, Vanderbilt shall have the right to serve notice upon COMPANY of Vanderbilt's intention to terminate the entirety of the rights, privileges, and licenses granted herein within fifteen (15) days from the mailing of such notice. If COMPANY does not timely pay all such overdue amounts to Vanderbilt or fails to cure such breach or default, as applicable, and to provide Vanderbilt with acceptable written evidence of such cure, then this Agreement may be immediately terminated by Vanderbilt at any time after said fifteen (15) day period by notice to COMPANY. Such termination shall be effective as of the date of mailing of said termination notice. If COMPANY disputes the grounds for such termination, COMPANY must provide written notice of the dispute to Vanderbilt prior to the effective date of said termination. If COMPANY fails to provide such notice, COMPANY agrees it forfeits its right to dispute such termination. Notwithstanding the foregoing, any breach of Section 6 (Indemnification) shall automatically terminate this Agreement.

4.3.2.   If Vanderbilt: (i) reasonably concludes that COMPANY does not have the appropriate staff in the Field involved or otherwise determines that the continuation of this Agreement would not be in the best interests of Vanderbilt or those who are served by the Copyrighted Works, or (ii) negotiates with COMPANY an agreement succeeding this Agreement, thereby making the continuation of this Agreement unnecessary, Vanderbilt will have the right to terminate this Agreement by providing COMPANY with thirty (30) days advanced written notice.

4.4.  Continued Obligations. Upon termination of this Agreement for any reason, all rights and licenses granted to COMPANY under this Agreement shall terminate and nothing herein shall be construed to release either Party from any obligation that matured prior to the effective date of such termination. Upon such termination, all royalties and other payments accrued or due to Vanderbilt as of the termination date shall become immediately payable.

4.5.  Survival. The following Sections of this Agreement and the defined terms and provisions used or referenced therein, shall survive termination of this Agreement: 2.6 (No Additional Rights), 3 (Payments), 4.4 (Continued Obligations), 4.5 (Survival), 5 (Disclaimers), 6 (Indemnification), 8.1 (Non-Use of Names), and 8.2 (Publication Citation).

5.     DISCLAIMERS

Neither the Instiutions nor any of its Representatives shall be held liable for direct or consequential damages resulting from COMPANY’s use of the ARMS-D. The ARMS-D is delivered to COMPANY AS IS and Vanderbilt makes no warranty as to its use or performance. VANDERBILT DOES NOT AND CANNOT WARRANT THE PERFORMANCE OR RESULTS COMPANY MAY OBTAIN BY USING THE ARMS-D. VANDERBILT MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY REPRESENTATIONS OR WARRANTIES AS TO NON-INFRINGEMENT OF THIRD PARTY RIGHTS, MERCHANTABILITY, OR FITNESS FOR ANY PARTICULAR PURPOSE. IN NO EVENT SHALL VANDERBILT BE LIABLE TO COMPANY FOR ANY CONSEQUENTIAL, INCIDENTAL, OR SPECIAL DAMAGES, INCLUDING ANY LOST PROFITS OR LOST SAVINGS, EVEN IF A VANDERBILT REPRESENTATIVE HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR FOR ANY CLAIM BY ANY THIRD PARTY.

6.     INDEMNIFICATION

6.1.  Indemnification. The Parties acknowledge that COMPANY shall be fully responsible for the quality, clinical safety, and operability of all works arising from the Copyrighted Works. COMPANY shall indemnify, defend, and hold harmless Vanderbilt, the Institutions, and their Representatives (collectively, the “Indemnitees“) against any liability, obligation, damage, loss, adverse impact, or expense (including reasonable attorney’s fees and expense of litigation) (collectively, “Losses”) incurred by or imposed upon the Indemnitees or any one of them in connection with any claims, suits, actions, allegations, assertions, investigations, demands, or judgments (collectively, “Claims”) arising out of or related to: the exercise of any rights granted under this Agreement; any breach of this Agreement; any product, process, or service made, used, or sold pursuant to any right or license granted under this Agreement, under any theory of law (including, but not limited to, actions in the form of tort, warranty, or strict liability); infringement of a third party’s rights by such product, process, or service except to the extent that any infringement is solely related to the Copyrighted Works; or any declaratory judgment action or other Claim related to the Copyrighted Works in the Field, including their validity, enforceability, non-infringement, or scope.

6.2.  Proceedings. Vanderbilt shall give prompt notice to COMPANY of the commencement of any action, suit, or proceeding for which indemnification may be sought, provided that failure to do so shall not affect the rights of the Indemnitees unless, and then only to the extent that, such delay or failure is prejudicial to or otherwise adversely affects COMPANY. COMPANY agrees, at its own expense, to provide attorneys reasonably acceptable to Vanderbilt to defend against any Claims brought or filed against any party indemnified hereunder with respect to the subject of indemnity contained herein, whether or not such Claims are rightfully brought; provided, however, that Vanderbilt shall be entitled to participate in any such action, suit, or proceeding with counsel of its own choice, but at its own expense. If COMPANY fails to assume the defense within a reasonable time, Vanderbilt may assume such defense and the reasonable fees and expenses of its attorneys and any Losses will be covered by the indemnity provided for in this Section 6. Any Indemnitee shall have the right to retain its own counsel, at the expense of COMPANY, if representation of such Indemnitee by the counsel retained by COMPANY would be inappropriate because of actual or potential differences in the interests of such Indemnitee and any other party represented by such counsel. The Indemnitees shall cooperate in such defense as reasonably requested by COMPANY, at COMPANY’s sole expense. COMPANY agrees to keep Vanderbilt informed of the progress in the defense and disposition of such claim and to consult with Vanderbilt with regard to any proposed settlement. COMPANY agrees that it will not settle, compromise, voluntarily dispose of, or fail to defend any such action (including any cross claim, counterclaim, or declaratory judgment action) without the prior written consent of Vanderbilt.

7.     COMPLIANCE

7.1.  Compliance with Law. COMPANY shall have the sole obligation for compliance with all applicable laws that relate to the use of the Copyrighted Works and represents that they understand and will abide by applicable law.

7.2.  Copyright Notice. The Copyrighted Works are protected by US copyright law, international treaty provisions, and other applicable law. COMPANY agrees that it will maintain any and all of the Institutions’ copyright marks on all copies of the Copyrighted Works, in accordance with the requirements of US copyright statutes, and will not at any time remove such copyright marks or place any other ownership representation on any copy of the Copyrighted Works. COMPANY agrees that failure to maintain such copyright marks on all copies of Copyrighted Works may result in irreparable harm to the Institutions and the Institutions will be entitled to seek all remedies under copyright law, including, but not limited to, actual and statutory damages and injunctive relief.

7.3.  Infringement. If at any time during the Term of this Agreement COMPANY learns of any infringement by a third party of the Copyrighted Works, COMPANY shall promptly notify Vanderbilt. Vanderbilt will decide whether or not to institute proceedings against such infringing party.

8.     NON-USE OF NAMES AND CITATION

8.1.  Non-Use of Names. Unless in accordance with Section 7.2 (Copyright Notice), neither Party shall use the name, trademark, service mark, trade name, symbol, or any adaptation thereof of the other Party or Institution or of any of its Representatives for advertising, marketing, endorsement, promotional or sales literature, publicity, public announcement, or disclosure or in any document employed to obtain funds or financing without the specific prior written consent of an authorized representative of the other Party or individual whose name is to be used as to each such use.

8.2.  Publication Citation. Any publication by COMPANY utilizing the ARMS-D shall include the following citation: “Mayberry LS, Gonzalez JS, Wallston KA, Kripalani S, Osborn CY. The ARMS-D outperforms the SDSCA, but both are reliable, valid, and predict glycemic control. Diabetes Research and Clinical Practice, 2013; 102(2); 96-401.”

9.     GENERAL PROVISIONS

9.1.  Governing Law & Jurisdiction. This Agreement shall be governed by the laws of the state of Tennessee, USA, excluding the application of its conflicts of law rules. This Agreement shall not be governed by the United Nations Convention on Contracts for the International Sale of Goods, the application of which is expressly excluded. The Parties agree to the exclusive jurisdiction of the courts of competent jurisdiction in Davidson County, Tennessee or the US District Court for the Middle District of Tennessee to resolve any disputes between the Parties.

9.2.  Enforceability. In the event that any provision of this Agreement shall be held invalid or unenforceable for any reason, such invalidity or unenforceability shall not affect any other provision of this Agreement, and the Parties shall negotiate in good faith to modify the Agreement to preserve (to the extent possible) their original intent. The failure of either Party at any time or times to require performance of any provision hereof shall in no manner affect its rights at a later time to enforce the same. No waiver by either Party of any condition or term in this Agreement shall be deemed as a further or continuing waiver of such condition or term or of any other condition or term.

9.3.  Export Control. The Copyrighted Works and any Derivative Works thereof shall not be shipped, transferred, or exported by COMPANY to any country or used in any manner prohibited by the US Export Administration Act or any other export laws, restrictions, or regulations.

9.4.  Amendments. This Agreement may only be amended in writing signed by an authorized officer of Vanderbilt. Vanderbilt reserves the right to amend this Agreement at any time.

9.5.  Assignment. This Agreement shall be binding upon and shall inure to the benefit of the Parties and their respective permitted assigns and successors in interest. Except as expressly permitted in this Agreement, COMPANY shall not assign, delegate, or subcontract any of its rights or obligations under this Agreement without the prior written consent of Vanderbilt.

9.6.  Entire Agreement. The Parties hereto agree that this Agreement (including any attachments, appendices, exhibits, or the like) sets forth the entire agreement and understanding between the Parties hereto as to the subject matter hereof, and supersedes any and all prior written and oral agreements, understandings, promises, or offers, but does not supersede any confidentiality or non-disclosure agreement between the Parties, if applicable.