Publication Date: May 14, 2004
The Mortgage Industry Standards Maintenance Organization Inc. (“MISMO”)1 adopts this Intellectual Property Rights Policy (“IPR Policy”) in order to facilitate the development, use and openness of MISMO standards (“MISMO Standards”) for the benefit of participants in the real estate finance industry and consumers of mortgage and real estate investment products and services. This IPR Policy sets forth MISMO’s policy regarding the disclosure and licensing of intellectual property rights in regard to the development and implementation of the MISMO Standards2.
1. If an organization participates in a MISMO work group (“Work Group”)3 activity including, without limitation, making a Contribution or participating or attending in person or by telephone, internet or electronic mail, it will be bound by the IPR Policy as a participant ("Participant").
2. MISMO owns all documents, publications, and other works created by MISMO including, without limitation, the MISMO Standards (collectively, “MISMO Works”) and any and all copyrights therein, subject only to the MISMO Standards Licenses granted by Participants in Section 4 below. Each final published MISMO Standard will include an “End-User License” in substantially the form attached as Appendix A to this IPR Policy setting forth the terms for the use of the MISMO Standard by an “End- User”. “End-User” means an individual or organization who makes, has made, uses, distributes, sells, offers for sale, imports, modifies, reproduces, publishes, publicly performs, displays, or makes derivative works of a product or service using or that is compliant with a MISMO Standard.
3. A “Contribution” is a written submission made by a Participant to a Work Group to assist the Work Group in drafting a MISMO Standard. A Participant submits a Contribution on the following terms:
(a) with a representation to MISMO that, to the Participant’s knowledge at the time of submission (without any duty to perform a patent search), the submission to MISMO and the use of the Contribution, or any portion thereof, by MISMO or Participants under the terms and conditions of this IPR Policy will not infringe or violate any intellectual property rights of any third party;
(b) “AS IS, WHERE IS”, without warranty or other representation of any kind, express, implied or statutory; and
(c) with a waiver of any confidentiality rights.
4. For each Contribution made by a Participant, that Participant:
1 MISMO is a Delaware corporation of which the Mortgage Bankers Association, an Illinois not-for-profit corporation (“MBA”), is the sole member.
2 MISMO’s Policies and Procedures and further information concerning this IPR Policy and its implementation may be found at www.mismo.org.
3 For purposes of this IPR Policy, “Work Group” also includes the MISMO Board of Directors, Governance Committee and Commercial Steering Committee.
(a) grants to MISMO, under Participant’s intellectual property rights in its Contribution, a nonexclusive, perpetual, irrevocable, royalty-free, fully paid-up, worldwide license to make, have made, use, distribute, sell (solely for recoupment of MISMO’s costs in connection with its exercise of its rights under the MISMO Standards License (as defined below) of the MISMO Works), offer for sale, import, modify, reproduce, publish, publicly perform, display and make derivative works of any and all Contributions or any parts thereof for the sole purposes of developing, distributing (via any medium), licensing, promoting, and maintaining MISMO Standards (“MISMO Standards License”);
(b) agrees that MISMO may grant the End-User License with respect to the rights licensed under the MISMO Standards License;
(c) irrevocably assigns, conveys and otherwise transfers to MISMO, its successors and assigns, all right, title and interest under copyright law in any jointly owned or collective work copyrights in the MISMO Standards to MISMO in perpetuity, and all claims and causes of action with respect thereto, together with the right to use and modify the MISMO Standards in any manner that MISMO in its sole discretion may determine, and further irrevocably waives any and all claims that Participant may now or hereafter have to such rights, claims and causes of action and to so-called “moral rights” with respect to any MISMO Standards; and,
(d) agrees to execute any documentation reasonably requested by MISMO to assist MISMO in establishing or maintaining its rights under the MISMO Standards License or the foregoing assignment.
5. To facilitate the MISMO standards development process, each Participant grants to each other Participant a non-exclusive, royalty-free, fully paid-up, worldwide license, under its intellectual property rights in its Contributions, to use its Contributions in Work Group activities solely to develop and maintain the MISMO Standards (“Work Group License”). Work Group Licenses received by a Participant terminate upon the Participant’s withdrawal or removal from MISMO. Work Group Licenses granted by a Participant continue after such withdrawal or removal. Each Work Group License is provided “AS IS, WHERE IS” without representation or warranty of any kind, express, implied or statutory.
6. Each Participant shall disclose to MISMO prior to final publication of a MISMO Standard and at any time as requested by the MISMO Standards Manager:
(a) all patents and patent applications (for unpublished patent applications an identification of the portion(s) of the MISMO Standard applicable to the application) that such Participant owns that would be infringed by an organization that makes, has made, uses, sells, offers for sale, or imports a product or service using or compliant with that MISMO Standard by virtue of its product’s or service’s use or compliance with the MISMO Standard (“Patent Rights”); or
(b) whether the Participant will grant to End-Users, under its Patent Rights, the Royalty-Free License (as defined in the End-User License) with respect to the MISMO Standard. To the extent that a Participant does not disclose its Patent Rights within the time allotted by the Standards Manager (but in any event within ten (10) days prior to final publication of such MISMO Standard), such Participant is deemed to have agreed to grant the Royalty-Free License under its Patent Rights, if any, and the Participant will be foreclosed and estopped from challenging the validity and effectiveness of such Royalty-Free License. MISMO will give Participants at least thirty (30) days notice prior to final publication of any MISMO Standard.
7. Any Participant who either (i) discloses to MISMO that it is willing to grant the Royalty-Free License under Section 6 above, or (ii) is deemed to have agreed to grant the Royalty-Free License under Section 6 above, hereby grants the Royalty-Free License on the terms and conditions set forth in the End-User License effective upon the publication of the final version of an applicable MISMO Standard.
8. MISMO, MBA, PARTICIPANTS, AUTHORS, AND INTELLECTUAL PROPERTY RIGHTS HOLDERS AND THEIR RESPECTIVE OFFICERS, DIRECTORS, SHAREHOLDERS, AGENTS AND INDEPENDENT CONTRACTORS, MAKE NO REPRESENTATIONS OR WARRANTIES TO EACH OTHER OR TO END-USERS, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT TO THE MISMO STANDARDS, ANY LICENSE GRANTED PURSUANT TO THIS IPR POLICY, OR ANY INTELLECTUAL PROPERTY RIGHTS LICENSED PURSUANT TO THIS IPR POLICY, INCLUDING, BUT NOT LIMITED TO WARRANTIES: (i) OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE OR NON-INFRINGEMENT; (ii) THAT THE CONTENTS OF ANY MISMO STANDARD IS FREE FROM ERROR OR SUITABLE FOR ANY PURPOSE; OR (iii) THAT MAKING, USING OR SELLING A PRODUCT OR SERVICE USING OR COMPLIANT WITH A MISMO STANDARD WILL NOT INFRINGE ANY THIRD-PARTY PATENTS, COPYRIGHTS, TRADEMARKS OR OTHER RIGHTS AND ANY SUCH WARRANTIES ARE HEREBY EXPRESSLY DISCLAIMED. IN NO EVENT WILL MISMO, MBA, PARTICIPANTS, AUTHORS OR INTELLECTUAL PROPERTY HOLDERS, OR THEIR RESPECTIVE OFFICERS, DIRECTORS, SHAREHOLDERS, AGENTS OR INDEPENDENT CONTRACTORS, OR ANY OF THEM, BE LIABLE TO EACH OTHER OR TO ANY END-USER FOR ANY DIRECT, INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES FOR ANY USE OF THIS MISMO STANDARD OR THE LICENSE GRANTS IN THE END-USER LICENSE, INCLUDING, WITHOUT LIMITATION, ANY LOST PROFITS, BUSINESS INTERRUPTION, LOSS OF PROGRAMS OR OTHER DATA ON ANY INFORMATION HANDLING SYSTEM OR OTHERWISE, EVEN IF SUCH ORGANIZATIONS AND PERSONS ARE EXPRESSLY ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
9. An End-User may assert the Royalty-Free License and any estoppel rights it has defensively in an infringement action or in response to a demand letter or similar notice from an intellectual property rights holder, or may bring a declaratory judgment action as to the scope or validity of the Royalty-Free License, but an End-User is not otherwise given affirmative rights to sue based on this IPR Policy, the Royalty-Free License, or such estoppel rights. Neither MISMO, nor any Participant will have any obligation to any End-User to file suit against any Participant or third party to enforce the Royalty-Free License or any other right or obligation under this IPR Policy on such End-User’s behalf. No Participant is obligated to disclose any technology or other information to any Participant or End-User as a result of any license granted pursuant to this IPR Policy.
10. It is MISMO’s policy to make every commercially reasonable effort to develop MISMO Standards that do not require the use of patent rights belonging to third parties who have not granted a Royalty-Free License with respect to such patents. However, MISMO reserves the right to decide in its sole discretion whether to proceed with or modify a MISMO Standard, and under what terms, as to which it learns that such patent rights might exist.
11. Participant is free to fully exploit its intellectual property rights independently of MISMO activities in any manner that does not violate Participant’s express obligations under this IPR Policy.
12. The Royalty-Free License is granted on a MISMO Standard-by-MISMO Standard basis. If a Work Group begins to develop a MISMO Standard in which a Participant does not wish to participate, such Participant will notify MISMO in writing as soon as practicable. If a Participant does not thereafter participate in a Work Group activity for the new MISMO Standard, the Participant will not be obligated to grant the Royalty-Free License in connection with the new MISMO Standard. If, however, the new MISMO Standard incorporates an earlier MISMO Standard with respect to which the Participant has granted the Royalty-Free License, the Royalty-Free License will extend solely to that portion of the new MISMO Standard, as incorporated. The Participant’s Royalty-Free License grant will not cover any intellectual property or technology in the new MISMO Standard that was not in the prior MISMO Standard.
13. MISMO may maintain and make available to Participants and End-Users on written request copies of patent disclosures made pursuant to Section 6 of this IPR Policy.
14. This IPR Policy shall be governed by and construed in accordance with the laws of the District of Columbia without giving effect to its principles of conflict of laws. Any legal proceedings commenced by MISMO, MBA or Participants in respect to this IPR Policy naming MISMO or MBA as a party shall be commenced in the Federal District Court in the District of Columbia or, if the federal district court in District of Columbia does not have jurisdiction, the Superior Court of the District of Columbia.
Appendix A
END-USER LICENSE v. 1.2
This End-User License relates solely to the MISMO Standard to which it is attached and sets forth the terms and conditions under which organizations that wish to use this MISMO Standard may use this MISMO Standard to make or distribute products or services made using or compliant with this MISMO Standard. This End-User License also grants to End-Users (as defined below) certain patent license rights as set forth in Section 3 below subject to the terms and conditions of this End-User License.
1. Definitions. For purposes of this End-User License, the following capitalized terms have the meanings given the terms below. All other capitalized terms have the meanings given them elsewhere in this End-User License. “End-User” means an individual or organization who makes, has made, uses, distributes, sells, offers for sale, imports, modifies, reproduces, publishes, publicly performs, displays, or makes derivative works of a product or service using or that is compliant with a MISMO Standard. “MISMO” is the Mortgage Industry Standards Maintenance Organization, which is currently a division of the Mortgage Bankers Association (“MBA”). References in this End-User License to MISMO refer to MBA, until MBA establishes MISMO as a separate legal entity. “MISMO License Participant” means an organization who agreed to grant, or who has been deemed to have agreed to grant, the Royalty-Free License (as defined below) with respect to this MISMO Standard pursuant to MISMO’s IPR Policy, a copy of which is available for reference at www.mismo.org. “Patent Rights” are all patents and patent applications that a MISMO License Participant owns that would be infringed by an organization that makes, has made, uses, sells, offers for sale, or imports a product or service using or compliant with that MISMO Standard by virtue of its product’s or service’s use or compliance with the MISMO Standard, except for any patents and patent applications that the MISMO License Participant disclosed to MISMO as not being subject to the Royalty-Free License.
2. License from MISMO for the MISMO Standard. MISMO hereby grants to each End-User a worldwide, royalty-free, perpetual, non-exclusive license to: use this MISMO Standard to develop, manufacture, have manufactured, distribute, sell and deliver mortgage and real estate investment products and services; reproduce this MISMO Standard in copies; prepare proprietary derivative copyright works based upon this MISMO Standard solely in developing a product or service for the mortgage or real estate industries, to distribute copies of this MISMO Standard to the public, and to perform and display the MISMO Standard publicly (“MISMO License”). This MISMO License does not include the right to make a derivative work of this MISMO Standard for publication, distribution or sale as a technical standard. If this MISMO Standard is software published by MISMO as source or object code, the MISMO License includes the right of End-User to distribute copies of, and use the code, in source or object code form, but not to modify it. Neither MISMO, nor any MISMO License Participant, will have any obligation to any End-User to file suit against any MISMO License Participant or third party to enforce the MISMO License or any other right or obligation under this MISMO License or the IPR Policy on such End-User’s behalf.
3. Royalty-Free License from MISMO License Participants for the MISMO Standard. Each MISMO License Participant, under its Patent Rights, hereby grants to each End-User, a non-exclusive, perpetual, irrevocable, royalty-free, fully paid-up, worldwide license to make, have made, use, sell, offer for sale and import products and services using or compliant with a MISMO Standard, and for no other purpose (the “Royalty-Free License”). The Royalty-Free Licenses granted under this End-User License are granted on an “AS IS, WHERE IS” basis, without warranty of any kind, express, implied or statutory and End-User accepts and agrees to the grant of the Royalty-Free License on this basis. Under this Royalty-Free License, each End-User may assert the Royalty-Free License and any estoppel rights it may have defensively in an infringement action or in response to a demand letter or similar notice from a MISMO License Participant, or may bring a declaratory judgment action as to the scope or validity of the Royalty- Free License, but End-Users are not otherwise given affirmative rights to sue based on the Royalty-Free Licenses or such estoppel rights. Neither MISMO, nor any MISMO License Participant, will have any obligation to any End-User to file suit against any MISMO License Participant or third party to enforce any Royalty-Free License or any other right or obligation under the Royalty-Free License or the IPR Policy on such End-User’s behalf. No MISMO License Participant is obligated to disclose any technology or other information to any End-User or other person as a result of any license granted pursuant to the IPR Policy.
4. Acknowledgement regarding Third Party Intellectual Property Rights. End-User acknowledges and agrees that, notwithstanding the Royalty-Free Licenses, the making, having made, using, distributing, selling, offering for sale, importing, modifying, reproducing, publishing, publicly performing, displaying or making derivative works of a product or service using or complying with this MISMO Standard may require use of intellectual property rights belonging to third parties, including, without limitation, the MISMO License Participants, and that such use may require licenses from and the payment of royalties to these parties to avoid infringement liability. MISMO shall not be responsible for identifying intellectual property rights for which a license may be required or for conducting inquiries into the legal validity or scope of those intellectual property rights that are brought to its attention.
5. DISCLAIMER. THIS MISMO STANDARD, END-USER LICENSE (WHICH INCLUDES THE MISMO LICENSE AND THE ROYALTY-FREE LICENSE), AND THE INTELLECTUAL PROPERTY RIGHTS LICENSED IN THE END-USER LICENSE ARE PROVIDED “AS IS, WHERE IS.” MISMO, MBA, THE MISMO LICENSE PARTICIPANTS, AUTHORS, OR INTELLECTUAL PROPERTY RIGHTS HOLDERS AND THEIR RESPECTIVE OFFICERS, DIRECTORS, SHAREHOLDERS, AGENTS AND INDEPENDENT CONTRACTORS, MAKE NO REPRESENTATIONS OR WARRANTIES TO ENDUSERS, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT TO THIS MISMO STANDARD OR THE END-USER LICENSE , INCLUDING, BUT NOT LIMITED TO WARRANTIES: (i) OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE OR NON-INFRINGEMENT; (ii) THAT THE CONTENTS OF SUCH MISMO STANDARD ARE FREE FROM ERROR OR SUITABLE FOR ANY PURPOSE; OR (iii) THAT MAKING, HAVING MADE, USING, IMPORTING OR SELLING A PRODUCT OR SERVICE COMPLIANT WITH SUCH MISMO STANDARD WILL NOT INFRINGE ANY THIRD-PARTY PATENTS, COPYRIGHTS, TRADEMARKS OR OTHER RIGHTS AND ANY SUCH WARRANTIES ARE HEREBY EXPRESSLY DISCLAIMED. IN NO EVENT WILL MISMO, MBA, THE MISMO LICENSE PARTICIPANTS, AUTHORS OR INTELLECTUAL PROPERTY HOLDERS, OR THEIR RESPECTIVE OFFICERS, DIRECTORS, SHAREHOLDERS, AGENTS OR INDEPENDENT CONTRACTORS, OR ANY OF THEM, BE LIABLE TO ANY END-USER FOR ANY DIRECT, INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES FOR ANY USE OF THIS MISMO STANDARD OR WITH RESPECT TO THIS END-USER LICENSE, INCLUDING, WITHOUT LIMITATION, ANY LOST PROFITS, BUSINESS INTERRUPTION, LOSS OF PROGRAMS OR OTHER DATA ON ANY INFORMATION HANDLING SYSTEM OR OTHERWISE, EVEN IF MISMO, MBA, THE MISMO LICENSE PARTICIPANTS, THEIR RESPECTIVE OFFICERS, DIRECTORS, SHAREHOLDERS, AGENTS OR INDEPENDENT CONTRACTORS, OR ANY OF THEM, ARE EXPRESSLY ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
6. Modification Rights. MISMO reserves the right to modify this End-User License or this MISMO Standard at any time upon thirty (30) days prior written notice by means of publication of such notice on the MISMO website at www.mismo.org. End-User acknowledges and agrees that MISMO is not a party to and has no obligation under the Royalty-Free License, and that the MISMO License Participants are not parties to the MISMO License and have no obligations thereunder.
7. IPR Policy Patent Disclosures. MISMO may, but is not obligated to, maintain and make available to End-Users on written request copies of patent disclosures made pursuant to Section 6 of the IPR Policy.
8. Required Legal Notices. Any distribution of copies of this MISMO Standard by End-User will include verbatim the entire text of this End-User License under the following header: “This document includes works belonging to The Mortgage Industry Standards Maintenance Organization, and is subject to the MISMO End-User License, Version 1.2 published at www.mismo.org or any subsequent applicable version of the MISMO End-User License.” Any software application developed by End-User based upon a MISMO Standard shall include the following notice in its end user documentation and in its source codes: “This software product includes software or other works belonging to The Mortgage Industry Standards Maintenance Organization that are subject to the MISMO End-User License, Version 1.2 published at www.mismo.org or any subsequent applicable version of the MISMO End-User License.
9. Covenant regarding Use of MISMO Trademarks. End-User covenants that no End-User product or service will be marketed in connection with the trade name “MISMO” or any of its trademark(s) or service mark(s), nor will End-User make any statement regarding “MISMO compliance” without MISMO’s prior written approval. Any use by End-User of the terms “MISMO”, “MISMO-compliance” or any of MISMO’s other trademarks without MISMO’s prior written consent will not imply endorsement of End-User’s activities or products or constitute any acknowledgment by MISMO of a product’s or service’s compliance with a MISMO Standard. Neither MISMO nor MBA nor any organization that participated in developing this MISMO Standard will have any liability for any such products or services to End-Users or third parties.
10. Governing Law. This End-User License shall be governed and construed in accordance with the laws of the District of Columbia without giving effect to principles of conflict of laws, and the parties hereby irrevocably consent to the exclusive jurisdiction of the courts thereof and United States District Court sitting therein with respect to any dispute arising out of or in connection with this End-User License naming MISMO or MBA as a party.
© 2004 Mortgage Bankers Association of America, Inc. All rights reserved.
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