XDI.ORG Intellectual Propery Rights Agreement
- This Version: http://www.xdi.org/docref/legal/xdi-org-ipr-agreement-v2-2004-10-20.html
- Latest Version: http://www.xdi.org/docref/legal/xdi-org-ipr-agreement.html
- Previous Versions: http://www.xdi.org/docref/legal/xdi-org-ipr-agreement-v1-2004-06-08.html
THIS AGREEMENT, dated September 13, 2004 (the “Effective Date”) is made by and between OneName Corporation, a Washington corporation dba Cordance (“CORDANCE”), with its principal place of business in Seattle, Washington, and XDI.ORG, a nonprofit corporation (“XDI.ORG”).
2.1 CORDANCE has the exclusive right to certain technology (the “Patent Rights”), which are the subject of earlier agreements between the Parties. This Agreement supersedes all prior agreements, including the XNS INTELLECTUAL PROPERTY RIGHTS AGREEMENT dated July 9, 2002 between OneName Corporation and XNS Public Trust Organization and the XDI.ORG INTELLECTUAL PROPERTY RIGHTS AGREEMENT dated June 8, 2004 between OneName Corporation and XDI.ORG.
2.2 As a result of earlier agreements between the parties, the Patent Rights have been embodied in a set of evolving Technical Specifications for practicing the Patent Rights using open, interoperable technical standards. These Technical Specifications include but are not limited to the XNS specifications published by XDI.ORG, the XRI specifications published by the OASIS XRI Technical Committee, and the XDI specifications published by the OASIS XDI Technical Committee.
2.3 CORDANCE desires to make the Patent Rights necessary to implement the Technical Specifications available and accessible to the Internet community.
2.4 The underlying purpose of this agreement is to facilitate and promote the widespread adoption of XDI infrastructure by making it available as an Open Standard, and also to ensure that said Open Standard is protected from “embrace and enhance” strategies.
2.5 The parties believe that XDI infrastructure should be governed by the users and providers of such an infrastructure (the "XDI Community").
2.6 The parties believe that XDI.ORG, as an independent non-profit international organization acting in the XDI Community interest, can best serve in this capacity.
2.7 XDI.ORG is committed to perform the activities necessary to serve the XDI Community in this capacity.
2.8 XDI.ORG requires certain rights and permissions from CORDANCE in order to carry out these activities.
NOW THEREFORE, in consideration of the above premises, which are hereby incorporated by this reference, and the mutual covenants and agreements set forth herein, CORDANCE and XDI.ORG also AGREE AS FOLLOWS:
All terms presented that are capitalized in this Agreement and not otherwise defined are defined in Exhibit A attached hereto and incorporated herein. The Definitions contained in this Agreement supersede any previous definitions in any previous Agreements between the parties.
4. Intellectual Property Rights Grants.
4.1 Patent License: Effective as of the Effective Date of this Agreement, CORDANCE hereby grants to XDI.ORG a fully paid-up, royalty-free, worldwide, exclusive license to and under the Patent Rights within the Field of Use to make, have made, use, import, sell, offer to sell, and otherwise distribute or dispose of products and services, and to sublicense others to do so as further specified in section 7 below; provided that CORDANCE retains the right to take legal action against any infringer. CORDANCE does not grant XDI.ORG a license to any Patent Rights outside the Field of Use. XDI.ORG grants to CORDANCE a fully paid-up, royalty-free, worldwide, non-exclusive license to and under the Patent Rights within the Field of Use to make, have made, use, import, sell, offer to sell, and otherwise distribute or dispose of CORDANCE products and services, subject to the same sublicensing terms and conditions set forth for third parties in section 7, below.
4.2 Copyright Assignment: CORDANCE hereby assigns to XDI.ORG any and all interest in the copyrights for the Technical Specifications created by CORDANCE.
4.3 Trademark Assignment: CORDANCE hereby assigns to XDI.ORG any and all rights to the marks: XNS, I-NAME, I-NUMBER, and I-BROKER including any registration rights and all associated goodwill. During the Term, XDI.ORG shall use commercially reasonable efforts to register, maintain, police, and enforce its rights in such marks.
5. Performance Obligations.
In consideration of the grants above, the continuing exploitation by XDI.ORG or its delegate of the rights and licenses under this License Agreement is expressly conditioned upon the performance of the following material obligations:
5.1 XDI.ORG or its authorized delegate (“Delegate”) shall publish and maintain the Technical Specifications and ensure interoperability between the Technical Specifications and the Global Service Specifications. Said Technical Specifications shall include a mechanism for sublicensees to make Conformance Attestations that ensure that consumers of XDI products and services may use XDI infrastructure itself to easily, quickly, and transparently discover said Conformance Attestations and evaluate the reputations of said products and services for interoperability.
5.2 XDI.ORG shall establish and manage XDI Global Services to facilitate interoperability between the members of the XDI Community, including:
5.2.1 Publishing and maintaining the Global Services Specifications;
5.2.2 Publishing and maintaining the General Dictionary;
5.2.3 Drafting, executing, implementing and enforcing third party agreements with GSPs (Global Service Providers) and Registrars in order to provide Global Services to the XDI Community;
5.2.4 Performing its material obligations under the Global Services Provider Agreement between XDI.ORG and CORDANCE (attached as Exhibit B hereto).
5.3 Subject to any lawful restrictions on sublicensing, XDI.ORG and any of its Delegates shall have the obligation to sublicense any and all of XDI.ORG's Intellectual Property Rights (including Intellectual Property Rights obtained from CORDANCE hereunder, Intellectual Property Rights obtained from third parties, and Intellectual Property Rights within the Field of Use developed independently by XDI.ORG or its Delegates) to implementers, GSPs, Registrars, Registrants, and others as required to implement the Technical Specifications, provide Global Services, and otherwise facilitate and maintain an open, interoperable XDI infrastructure.
5.4 XDI.ORG shall reimburse CORDANCE for its reasonable costs associated with maintenance fees for the Patent Rights within thirty (30) days of verification by CORDANCE of said costs. If such costs have not been reimbursed and CORDANCE owes amounts to XDI.ORG, CORDANCE may deduct such costs from such amounts due. If XDI.ORG or third-party licensees fail to reimburse said costs within ninety (90) days, CORDANCE may in its sole discretion allow the relevant patent to lapse. If CORDANCE elects not to maintain any patent under the Patent Rights, XDI.ORG shall have right to maintain such patent, and CORDANCE will take commercially reasonable steps (at the expense of XDI.ORG) to assist XDI.ORG in exercising this right.
5.5 XDI.ORG shall at all times act in the best interests of the XDI Community, and shall specifically act to ensure interoperability of the Technical Specifications and Global Services among members of this community, including:
5.5.1 Adopting a governance model and methods of operation that reasonably represent the interests of all major constituents of the XDI Community, including implementers of the Technical Specifications, GSPs, Registrars, and Registrants;
5.5.2 Wherever possible, employing XDI technology and infrastructure itself to enable distributed self-governance, including delegating decisionmaking to the most relevant and affected parties;
5.5.3 Wherever possible, employing XDI-based feedback mechanisms to establish and maintain reputations and facilitate trust decisions;
5.5.4 Not discriminating against any members of the XDI Community who are in compliance with the terms and intent of this Agreement and any applicable sublicense;
5.5.5 Conducting its governance and operations transparently so as to maximize accountability and responsiveness to the XDI Community.
5.6 XDI.ORG and any of its Delegates shall remain non-profit organizations and shall not engage in the commercial exploitation of software or services related to the Patent Rights.
XDI.ORG shall not delegate its obligations except as follows:
6.1 XDI.ORG may delegate its obligations under section 5.1 in whole or in part to one or more other qualified non-profit standards organizations provided such delegation can be reasonably shown to be in the best interests of the XDI Community.
6.2 XDI.ORG may delegate its obligations in 5.2.2 in whole or in part to one or more qualified non-profit organizations (including academic institutions) provided such delegation can be reasonably shown to be in the best interests of the XDI Community.
6.3 XDI.ORG may delegate its obligations under section 5.3 but only to the same entities to which it delegates its obligations under section 5.1 or 5.2.2.
In no event shall the delegation of obligations under this Agreement relieve XDI.ORG of the duty to perform such obligations.
The licenses granted to XDI.ORG by CORDANCE shall include the right to grant sublicenses to third parties under the Patent Rights within the Field of Use to make, have made, use, import, sell, offer to sell, and otherwise distribute or dispose of products and services, only under the following conditions:
7.1 All sublicenses shall be granted on a fully paid-up, royalty free, worldwide, non-exclusive basis.
7.2 All sublicenses shall be valid only for implementations of the Patent Rights conformant with the Technical Specifications in effect at the time of said implementation.
7.3 All sublicenses for products not distributed under an Open Source or Free Software License shall require that the licensee make a Conformance Attestation in a manner specified by XDI.ORG in the Technical Specifications.
7.4 All sublicenses granted by XDI.ORG or its Delegate shall require said sublicensee to grant a reciprocal irrevocable, fully paid-up, royalty-free, worldwide, non-exclusive license (including the right to grant sublicenses within the Field of Use) to XDI.ORG or its Delegate to any of said sublicensees’ existing and future Intellectual Property Rights covering subject matter essential to implement the Technical Specifications in effect at the time of such sublicense.
7.5 Any termination of the license granted by CORDANCE to XDI.ORG hereunder shall not affect any sublicenses granted in accordance with the terms hereof that are in effect as of the date of any such termination, which sublicenses shall remain in effect and be automatically assigned to CORDANCE or, as delegated by CORDANCE, to another similarly situated non-profit organization operating solely for the benefit of the XDI Community as provided in section 13.3. below.
7.6 Upon entry of a final judgment of infringement of the Patent Rights, any sublicense granted to the entity determined to have infringed shall be immediately void. Reversal on appeal of the judgment of infringement shall result in reinstatement of the sublicense. The sublicense may otherwise be reinstated on conditions mutually acceptable as between XDI.ORG, the licensor and the infringer with the express purpose of preventing future infringement, preventing “embrace and enhance” tactics, and promoting the widespread deployment of XDI infrastructure.
7.7 All sublicenses shall contain a provision that the sublicense is not a defense to a claim of infringement of the Patent Rights if some but not all of the material elements of an asserted patent claim are covered by the sublicense.
7.8 All sublicenses granted hereunder shall be consistent with the terms of this Agreement, and no sublicense shall purport to grant to any sublicensee rights that are broader than those permitted to be granted to all sublicensees hereunder.
7.9 XDI.ORG shall take all steps reasonably necessary to procure prompt performance by any sublicensee of its obligations as set forth in any applicable sublicense, including, without limitation, promptly taking all commercially reasonable steps to enforce the terms of such sublicense and/or, if so requested by CORDANCE, assigning to CORDANCE its rights to enforce the terms of any such sublicense and providing all commercially reasonable assistance requested by CORDANCE in connection with such enforcement.
In the event of any actual or potential infringement of the Patent Rights and other intellectual property rights licensed to XDI.ORG hereunder by any third party, CORDANCE or its assignee shall have the first right, but not the obligation, to institute suit against such actual or potential infringer and XDI.ORG shall reasonably cooperate with CORDANCE or its assignee in any such action. Any recovery as a result of such action or proceeding shall be paid over to CORDANCE or its assignee. In the event that XDI.ORG believes the Patent Rights are infringed by a third party, it shall provide written notice to CORDANCE, identifying the alleged infringer and articulating with reasonable specificity the nature of the infringement. If, after ninety days after receipt of such notice, CORDANCE (either directly or through its assignee) fails to notify XDI.ORG that CORDANCE intends to institute suit against an actual or potential infringer, XDI.ORG may do so at its own election and expense, and any recovery as a result of such action or proceeding shall be divided and paid over in equal shares to CORDANCE and XDI.ORG, after the deduction of any expenses actually incurred by XDI.ORG in connection therewith.
CORDANCE acknowledges that XDI.ORG is in the process of reincorporating in another jurisdiction. XDI.ORG may assign and transfer the rights and obligations of this Agreement, in whole, to the newly reincorporated organization upon substantially the same conditions as stated below for the transfer of rights and obligations to a non-profit standards body. XDI.ORG may also assign or transfer the licenses and assignments granted to it herein to another similarly situated non-profit standards body operating solely for the benefit of the general public, and only on the following conditions:
9.1 Such standards body assumes all of the obligations of XDI.ORG hereunder, including, without limitation, all existing sublicenses, contracts, and agreements, and other obligations of XDI.ORG.
9.2 Such transfer does not alter or affect any of the rights of CORDANCE, or any of XDI.ORG’s obligations (financial or otherwise) to CORDANCE under any agreements with XDI.ORG.
9.3 Such transfer does not materially alter or affect the rights of any sublicensees of XDI.ORG.
9.4 XDI.ORG is not in breach of any material obligation to CORDANCE under any agreement, unless CORDANCE waives this condition in writing.
9.5 Such standards body is financially solvent and has the resources and wherewithal to perform the obligations of XDI.ORG.
XDI.ORG warrants that:
10.1 It shall perform its obligations under this Agreement with due care and diligence.
10.2 It has the right and authority to enter into this Agreement and grant the rights conveyed hereunder and that doing so does not conflict with any obligation it has or shall undertake.
10.3 Except as expressly stated herein, the parties make no other warranties, express or implied, including but not limited to any implied warranty of merchantability or fitness for a particular purpose, or implied warranty arising from course of performance, course of dealing, or usage of trade. Specifically CORDANCE makes these licenses and assignments "AS IS" and makes no warranty on merchantability or furthermore for a particular purpose.
XDI.ORG shall defend, indemnify and hold CORDANCE harmless from and against any and all actions, suits, or proceedings ("Claims"), resulting in any losses, damages, judgments, awards, settlements, or expenses (including reasonable attorney's fees) (collectively, "Liabilities") arising from:
11.1 Any breach of XDI.ORG's obligations under this Agreement
11.2 Any Claim, which if true, would constitute a breach of such obligations
11.3 Sublicenses made by XDI.ORG resulting from this Agreement.
The license granted herein shall commence on the Effective Date and thereafter continue in each jurisdiction throughout the world for the statutory duration of the Patent Rights in any such jurisdiction, unless earlier terminated in accordance with the terms hereof.
13.1 CORDANCE may terminate the license granted herein, effective upon written notice to XDI.ORG: (1) if XDI.ORG becomes insolvent, is generally not paying its debts as such debts become due, makes an assignment for the benefit of creditors, is the subject of any voluntary or involuntary case commenced under the federal bankruptcy laws, as now constituted or hereinafter amended, or of any other proceeding under other applicable laws of any jurisdiction regarding bankruptcy, reorganization, adjustment of debt or other forms of relief for debtors, has a receiver, trustee, liquidator, assignee, custodian or similar official appointed for it or for any substantial part of its property, or is the subject of any dissolution or liquidation proceeding; or (2) if XDI.ORG ceases to conduct business as a going concern.
13.2 Either party may terminate the license granted herein, if (1) the other party is in breach or default of any of the material terms and conditions of this Agreement, provided that the party in breach shall not have cured (if capable of being cured) such breach or default within thirty (30) cumulative days after receipt of such notice; or (2) as otherwise expressly set forth in this Agreement.
13.3 If the license is terminated by either party as provided in this Section, in addition to any remedies available to the parties: (1) all rights and the license granted herein to XDI.ORG shall immediately terminate and all such rights and license shall immediately revert back to CORDANCE or CORDANCE's delegate as provided for in clause (2), and (2) CORDANCE shall exercise commercially reasonable efforts thereafter to transfer all rights necessary to the performance of XDI.ORG's obligations to another similarly situated non-profit public trust or standards organization.
13.4 XDI.ORG agrees that in the event of termination of this Agreement by CORDANCE, (1) XDI.ORG shall assign to CORDANCE or CORDANCE's delegate as provided for in clause (2) any trademarks, copyrights or other intellectual property owned by it including those assigned herein, and (2) CORDANCE shall exercise commercially reasonable efforts thereafter to assign all rights necessary to the performance of XDI.ORG's obligations to another similarly situated non-profit public trust or standards organization.
14. General Terms.
14.1 Governing Law: This License shall be construed and controlled by the laws of the State of Washington without reference to conflict of laws principles.
14.2 Jurisdiction: The parties agree that all disputes arising in any way out of this License shall be heard exclusively in, and all parties irrevocably consent to jurisdiction and venue in the United States District Court for the Western District of Washington or, if that court lacks jurisdiction, in King County Superior Court. In the interest of assuring federal jurisdiction, XDI.ORG will exercise its best efforts to assign its rights and obligations under this Agreement to a corporate body established under the laws of a jurisdiction other than Washington within 90 days after the Effective Date of this Agreement.
14.3 Notices: All notices and other communications required hereunder shall be in writing and shall be sent by personal delivery, telecopy, registered or certified mail (postage prepaid and return receipt requested) or by reputable overnight courier to the principal or primary address, unless notification of a change of address is given in writing. Notice shall be deemed effective when so personally delivered or telecopied, or, if mailed, three (3) business days following the date the notice is mailed (one (1) business day in the case of express mail or overnight courier service).
14.4 Not Partners: The parties hereto are independent entities and are not partners or joint venturers with each other.
14.5 Exhibits: The following Exhibits are attached hereto and incorporated by reference: Exhibit A Definitions, and Exhibit B - XDI.ORG GSP Agreement.
By - Name: Bill H. Washburn
By - Name: Vince Caluori
Its: President and CEO
EXHIBIT A - DEFINITIONS
1. Conformance Attestation As specified in the Technical Specifications, a collection of assertions in machine-readable XDI format (and including or linked to an equivalent human-readable format) by a licensee of conformance to the Technical Specifications, including identification of the version(s) of the Technical Specifications implemented, the features implemented, the interoperability testing performed, or other such assertions as may be determined from time to time by XDI.ORG to be in the best interests of the XDI Community to ensure the interoperability and integrity of XDI infrastructure.
2. Designated Global Services I-Name Services, I-Number Services, Directory Services, Reputation Services, and Public Resolver Services as defined herein.
3. Directory Services The Global Service of cross-referencing XRIs and XDI Resources in order to facilitate discovery, identification, and location of an XDI Resource by its associated XDI Resources. There are three Global Directory Services: Personal Directory Service, Organizational Directory Service, and General Directory Service.
4. Field of Use - The development and exploitation of computer programs to the extent that they conform to the Technical Specifications as first delivered and/or subsequently modified.
5. General Dictionary - The collection of XDI Resources representing General Resources and their definitions and relationships in taxonomies and ontologies as established and maintained by XDI.ORG to facilitate global data sharing by all members of the XDI Community.
6. General Resource An XDI Resource that represents a generic concept, subject, or topic whose identity is defined by linguistic, cultural, or scientific convention.
7. General Service A Global Service for General Resources identified using the Global Context Symbol “+”.
8. Global Context Symbols (GCS) As defined in the XRI Specifications, the XRI syntax characters specified to represent abstract global context of an identifier, specifically “=” for personal identifiers, “@” for organizational identifiers, “+” for general identifiers, “$” for specification identifiers, and “!” for independent identifiers.
9. Global Service Provider (GSP) - An entity authorized by XDI.ORG to provide and to contract for the provision of Global Services.
10. Global Service Specifications - The specifications published by XDI.ORG governing the operation of each Global Service, including the specifications for Conformance Attestations and other mechanisms for ensuring interoperability, to be initially provided to XDI.ORG, in each case, by the primary GSP for the applicable Global Service prior to the commencement of such Global Service, and to be maintained by XDI.ORG as a service to the XDI Community.
11. Global Services - The set of XDI interactions that shall be offered by XDI.ORG to all members of the XDI Community to facilitate interoperability of XDI infrastructure, including but not limited to the Designated Global Services.
12. I-Broker A provider of XDI services.
13. I-Name Services The Global Service of registering, reserving, reassigning, and resolving reassignable XRIs via Registries represented by the Global Context Symbols as defined by the XRI specifications. There are three Global I-Name Services: Personal I-Name Service, Organizational I-Name Service, and General I-Name Service.
14. Independent I-Number A persistent XRI assigned to identify an XDI Resource independent of another GCS context.
15. Independent I-Number Service An I-Number Service for Independent I-Numbers assigned using the Global Context Symbol “!”.
16. Intellectual Property Rights - All rights in patent, trademark, copyright, trade secret and know-how.
17. I-Number Services The Global Service of registering, resolving, and retiring persistent XRIs via Registries represented by the Global Context Symbols as defined by the XRI specifications. There are four Global I-Number Services: Personal I-Number Service, Organizational I-Number Service, General I-Number Service, and Independent I-Number Service.
18. OASIS The Organization for the Advancement of Structured Information Standards, a non-profit standards body for XML e-business standards. See http://www.oasis-open.org.
19. Open Source or Free Software License - A license certified by the Open Source Initiative or the Free Software Foundation or any equivalent license that does not restrict the open public review, modification, distribution, and evolution of the source code of a product or service.
20. Open Standard - As defined on September 13, 2004 at http://www.perens.com/OpenStandards/Definition.html, a specification whose licensing ensures that it is publicly available to implement, that it maximizes end-user choice of vendors and implementations, that it does not require a royalty or fee to implement with the potential exception of compliance certification, that it does not discriminate against vendors or implementations, and that it permits extensions or subsets that are consistent with the standard yet may preclude predatory "embrace and enhance" practices.
21. Organizational Resource - An XDI Resource representing any legal entity or mark that does not represent a Personal Resource or a General Resource.
22. Organizational Service A Global Service for Organizational Resources identified using the Global Context Symbol “@”.
23. Patent Rights - (1) United States letter of patent issued under numbers 5,862,325; 6,044,205; 6,088,717, 6,345,288, and 6,757,710; (2) any and all United States or foreign letter of patent, utility models and/or application therefore, claiming priority, in whole or in part, from any of the letters of patent identified herein in (1) of this definition; (3) any and all divisionals, continuations, continuations in part, continued prosecution applications, reexamination, reissues, additional or extension of any of the letters of patent or utility models identified herein in (1) and (2) of this definition.
24. Personal Resource An XDI Resource representing a natural-born person.
25. Personal Service A Global Service for Personal Resources identified using the Global Context Symbol “=”.
26. Public Resolver Services The Global Service of providing XRI resolution of globally-registered XRIs via one or more publicly available network endpoints. There are two Global Public Resolver Services: Standard Public Resolver Service, which provides resolution service conformant to the XRI Generic Syntax and Resolution Specification, and Trusted Public Resolver Service, which provides resolution service conformant to the XRI Trusted Resolution Specification.
27. Registrant - A member (individual or organization) of the XDI Community that enrolls with a Registrar to obtain Global Services.
28. Registrar - An I-Broker registered with a Global Service Provider to provide the service of enrolling Registrants to obtain Global Services for which registration is required.
29. Registry The XDI Resource maintained by a Global Service Provider to provide Global Services requiring registration and resolution of XRIs.
30. Reputation Services The Global Service of aggregating feedback on XDI Resources by other XDI Resources to enable discovery, identification, location, and evaluation of a Resource by its reputation. There are three Global Reputation Services: Personal Reputation Service, Organizational Reputation Service, and General Reputation Service.
31. Resource As defined in the OASIS XRI Generic Syntax and Resolution Specification 1.0, “anything that can be named or described.”
32. Technical Specifications - The specifications defining and governing the interoperability and integrity of XDI infrastructure, including the XDI Specifications, the specifications for Conformance Attestations, and any other specifications designated from time to time by XDI.ORG and subsequently modified, amended, revised or enhanced in accordance with the terms set forth in this Agreement.
33. XDI XRI Data Interchange as defined by the XDI Specifications.
34. XDI Community The users and providers of XDI infrastructure.
35. XDI Resource A Resource identified with at least one XRI that supports interactions via XDI.
36. XDI Specifications The Open Standard specifications for a generalized, extensible service for identifying, addressing, sharing, linking, and synchronizing XDI Resources as designated from time to time by XDI.ORG; currently the specifications published by the OASIS XDI Technical Committee.
37. XNS Extensible Name Service, the name used for the first set of Technical Specifications submitted by OneName (predecessor to CORDANCE) to XNSORG (predecessor to XDI.ORG).
38. XNS Public Trust Organization (XNSORG) The original legal name for XDI.ORG and its successors in interest.
39. XRI An Extensible Resource Identifier as defined by the XRI Specifications.
40. XRI Specifications The Open Standard specifications for abstract identifiers used by XDI technology as designated from time to time by XDI.ORG; currently the specifications published by the OASIS XRI Technical Committee.