4. Intellectual Property
a. Work Made for Hire
Excluding Supplier Intellectual Property (defined below) and subject to Customer’s payment of all fees and expenses owed to aiXplain under this Agreement, all Deliverables developed by Supplier for Customer pursuant to a project will be deemed work made for hire, as that term is defined in the U.S. Copyright Act, and Supplier hereby assigns to Customer all right, title, and interest it may have in the Deliverables.
b. Supplier Intellectual Property
The Parties acknowledge that Supplier may use preexisting proprietary computer software, methodology, techniques, software libraries, tools, algorithms, materials, products, ideas, skills, designs, know-how, or other intellectual property, including patents and trade secrets (“Intellectual Property”) owned by Supplier. For avoidance of doubt, Supplier may also modify or further develop such Intellectual Property in the performance of the Project. All proprietary rights to such Intellectual Property, as it existed on the Effective Date and as it may be modified or further developed solely by Supplier in the course of the Project, including patent, copyright, trademark, and trade secret rights (all of the foregoing, the “Supplier Intellectual Property”), are the sole and exclusive property of Supplier, free from any claim or retention of rights by Customer, and Customer hereby assigns to Supplier any rights Customer may have in any of the foregoing.
c. Customer License Rights
Supplier hereby grants to Customer under Intellectual Property owned or licensable by Supplier a limited, worldwide, royalty-free, nonexclusive, nontransferable, and perpetual right and license to use, distribute, sublicense, execute, display and perform any Supplier Intellectual Property that has been included by Supplier in the Deliverables, and only as part of the Deliverables.
d. Restrictions
Customer shall not copy, use, modify, or distribute any Supplier Intellectual Property except as expressly licensed in subsection (c) above. Customer shall not use the Supplier Intellectual Property separate from the Deliverables or cause or permit the modification, distribution, reverse-engineering, decompilation, disassembly, or other translation of the Supplier Intellectual Property. Customer shall not, where applicable, alter, change, or remove from the Supplier Intellectual Property any identification, including copyright and trademark notices, and shall include these markings on any copies.
e. Rights Upon Project Completion
Customer may create or develop Customer’s own source code to utilize the Deliverables; provided Customer may not cause any portion of Supplier Intellectual Property, or any derivative thereof, to become subject to all or part of the license obligations or other intellectual property rights or restrictions of any third party, including any open source software requirements, and will not cause any portion of the Supplier Intellectual Property, or any derivative thereof to be: (i) disclosed or distributed in source code form, or (ii) be licensed to third parties for the purpose of making derivatives of such software, or (iii) be redistributed free of charge.
f. aiXplain License Rights and License Fees to You
To further develop, improve and market the Services, You hereby grant aiXplain, for the duration of this Agreement, a limited, non-revocable, world-wide, fully paid up, sub-licensable license to host, make copies of, distribute, use, and run analytics on Your Data and, to the extent licensable by You, the Deliverables as part of the Services. Further, if Your Data or the licensable Deliverables is sublicensed by aiXplain to another user via the Services, You shall collect eighty percent (80%) of fees collected via the Services for such sublicensed material, or as otherwise agreed to in writing. Such sublicense to another user shall be perpetual, and survive termination of this Agreement, and aiXplain shall be able to host, make copies of, distribute, use, and run analytics on such sublicensed Your Data after expiration of termination of this Agreement.
g. Use of Trademarks
Neither party is authorized or granted the right to use any trademarks, logos, services marks or trade names (“Marks”). Notwithstanding the foregoing, You hereby grants aiXplain a world-wide, fully paid-up license to use, display, have displayed, and distribute Your Marks on marketing collateral, on any medium, to identify You as a customer for as long as this Agreement is in force. After termination or expiration of this Agreement, aiXplain may continue using Your Marks for historical references only. For the avoidance of doubt, no new marketing collateral may be created using Your Marks after such termination or expiration of this Agreement.
h. Open Source Software
To the extent Deliverables contain free or open source software (collectively, “OSS”), such OSS may be subject to separate third party OSS licensing terms and conditions (“OSS-Terms and Conditions”). Under such OSS-Terms and Conditions, Supplier may be required to provide the OSS-Terms and Conditions to Customer and Customer must comply with all of the applicable OSS-Terms and Conditions and fulfill all corresponding obligations of the applicable OSS-Terms and Conditions, especially if Customer further distributes, publish or provide the Deliverables through sales or other transfer to third parties. Such obligations may include, for example, documentation obligations or obligations to provide the source code of any software in which the OSS has also been integrated. An overview of all OSS-components contained in the Deliverables, as well as corresponding license text of the applicable OSS Terms and Conditions, are part of or are included with the Deliverables. Customer shall use commercially reasonable efforts to not combine Deliverables with any OSS which would result in the Deliverables becoming subject to the terms of an OSS license. For any software provided to Supplier by or on behalf of Customer, Customer shall disclose in writing a list of all applicable OSS-Terms and Conditions, and third party software included in such software, at the time of delivery of such software to Supplier. Customer shall indemnify Supplier for all costs, expenses and damages caused by Customer’s failure to disclose OSS-Terms and Conditions and/or third party license terms in software provided by Customer, directed by Customer or on behalf of Customer. Except in the event Customer has an indemnification obligation as provided in the preceding sentence and subject to the limitations set forth in Section 8(a), Supplier shall indemnify Customer for all costs, expenses and damages directly caused by Supplier’s failure to disclose OSS-Terms and Conditions and/or license terms for third party software that Supplier incorporates in the Deliverables.
i. No Other License or Use Right
Unless specifically provided herein, neither party hereby grants any license or use right, express or implied.