Third-Party License Agreement.

Attachment 5 Third‐Party License Agreement Template

LICENSE TO USE LOGOS OR OTHER INTELLECTUAL PROPERTY ON A TEXAS SPECIALTY LICENSE

PLATE

This Agreement (“Agreement”) is by and between ______________ [insert name of Digital License Plate Provider] and ____________________ [insert name of brand client or their representative] (Brand Client). The Digital License Plate Provider and Brand Client are collectively referred to in this Agreement as the parties and individually as a party.

The Digital License Plate Provider is an approved digital license plate vendor in Texas under a contract awarded by the Texas Department of Motor Vehicles (TxDMV).

Now, therefore, in consideration of the foregoing and the following rights and obligations, the Digital License Plate Provider and Brand Client agree as follows:

1.Definitions

1.1 “Products” means all Digital License Plate Vendor’s digital license plates without regard to the method of delivery.

1.2 “Company Storefront” means a physical store, website, application, or other technological avenue that is made available by the Digital License Plate Vendor or Brand Client regarding any digital license plates.

1.3 “Marks” means each party’s logos, slogans, or other intellectual property. Images of any of Brand Client’s Marks that are covered by this license must be attached to this Agreement and incorporated into this Agreement.

1.4 “Content” means all Marks and information contributed by Brand Client and included or embodied in Digital License Plate Vendor’s products, as well as in advertising and marketing regarding the Digital License Plate Vendor’s products. Content is not limited to text, images, graphics, audio, objects, video and animation, and all files in any form, and all other media.

1.5 “Effective Date” is the date specified at the end of this Agreement as being the Effective Date.

1.6 Unauthorized Use: The Digital License Plate Vendor is not authorized to use any intellectual property of Brand Client except as authorized by this Agreement.

2. Licenses, Intellectual Property Ownership

2.1 Brand Client owns, or has the right to sign this Agreement on behalf of the owner who owns, the applicable rights, title and interest in and to any Content provided by Brand Client to the

Digital License Plate Vendor for display on a digital license plate registered to a Texas vehicle.

2.2 Each party shall retain ownership of its Marks and other intellectual property rights.

2.3 Subject to the terms and conditions of this Agreement, each party grants to the other a limited, non‐exclusive and non‐transferable right and license to use, reproduce and display each other’s Marks in connection with the performance of this Agreement. A party’s use of the other’s Marks shall be in accordance with the specifications provided for such use by the party whose Marks are being used. In the event such specifications are not provided, neither party will use any of the other party’s Marks for any purpose without first obtaining written permission.

2.4 Brand Client hereby grants to TxDMV, as a third‐party beneficiary, the authority to feature Brand Client’s Marks on TxDMV’s website to direct the customer to the Digital License Plate Vendor’s plate order system for digital license plates.

3. Promotion and Sales Performance Requirements

3.1 The Digital License Plate Vendor shall promote Brand Client as a part of the specialty license plate program to the extent the specialty plate remains an active plate in the Texas specialty license plate program.

3.2 Furthermore, both parties agree to use their best efforts to mutually market and promote Brand Client’s plate.

3.3 All sales and payments must be reconciled by Digital License Plates Vendor, and any royalties paid to Brand Client on a timeframe and in an amount to which both parties agree.

The parties may attach their royalty payment schedule in an attachment that is incorporated into this Agreement.

4. Representations and Warranties; Indemnification

4.1 Each party represents and warrants to the other that it has the right to enter into this Agreement and perform its obligations under this Agreement; that this Agreement does not conflict with any other agreement entered into by the party; and that it owns, or has the right to sign this Agreement on behalf of the owner who owns, all of the rights in and to any of its Content used in the Digital License Plate Vendor’s digital plate program. The foregoing representations and warranties are deemed covenants of a party that such representations and warranties will remain true and correct throughout the term of this Agreement.

4.2 To the extent it is not prohibited by Texas or federal (United States) law, each party (the “Indemnifying Party”) must indemnify and hold harmless the other party, including the other party’s officers, directors, employees, and agents (the “Indemnified Party”) from and against all liabilities, costs and expenses (including reasonable attorneys’ fees) incurred by the Indemnified Party arising out of any claim, demand, suit, action, or proceeding (claim) brought by a third party that involves, relates to, or concerns a violation or other breach by the Indemnifying Party of any of the provisions of this Agreement (including, without limitation, any of the representations or warranties of the Indemnifying Party set forth in this Agreement) or the negligence or willful misconduct of the Indemnifying Party. Provided, however, that the Indemnified Party, upon receipt of a notice of a claim that could result in the Indemnifying Party indemnifying the Indemnified Party, gives prompt notice to the Indemnifying Party of the existence and specifics of such claim, and permits the Indemnified Party, if it so requests, either to conduct the defense or to participate with the Indemnifying Party in the defense thereof and any settlement negotiations relating thereto.

4.3 EXCEPT AS SPECIFIED IN THIS AGREEMENT, NEITHER PARTY MAKES ANY WARRANTY IN

CONNECTION WITH THE SUBJECT MATTER OF THIS AGREEMENT AND EACH PARTY HEREBY

DISCLAIMS ANY AND ALL IMPLIED WARRANTIES, INCLUDING WITHOUT LIMITATION ALL IMPLIED

WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON‐

INFRINGEMENT.

5. Term and Termination

5.1 Unless otherwise terminated as provided in this section, the term of this Agreement shall begin on the Effective Date listed in the signature section and shall remain in effect through the later of the following, unless the Specialty License Plate Marketing Contract between the TxDMV and License Plates of Texas, LLC (Specialty Plates Vendor) is terminated sooner:

a. December 31, 2025, and up to an additional 47 days thereafter if TxDMV exercises its option to extend TxDMV’s contract with Specialty Plates Vendor.

b. If TxDMV and Specialty Plates Vendor renew the Specialty License Plate Marketing Contract, this Agreement is automatically renewed through December 31, 2031, and up to an additional 47 days thereafter if TxDMV exercises its option to extend TxDMV’s contract with Specialty Plates Vendor. TxDMV only has one option to extend the Specialty License Plate Marketing Contract by 47 days.

This Agreement terminates on the fourteenth calendar day after the termination of the Specialty License Plate Marketing Contract.

5.2 Either party may terminate this Agreement by providing 30‐days’ written notice of termination to the other party. The party sending the notice must copy TxDMV on the notice.

5.3 Either party has the right to terminate this Agreement immediately if (a) the other party becomes the subject of a voluntary petition in bankruptcy or any voluntary proceeding relating to insolvency, receivership, liquidation, or composition for the benefit of creditors; or (b) the other party becomes the subject of an involuntary petition in bankruptcy or any involuntary proceeding relating to insolvency, receivership, liquidation, or composition for the benefit of creditors, if such petition or proceeding is not dismissed within sixty days of filing.

The party that terminates this Agreement must copy TxDMV on the notice to terminate.

5.4 Either party has the right, but not the obligation, to terminate this Agreement upon the closing of a Change of Control of the other party by giving written notice to the other party of the intent to terminate. A “Change of Control” means (a) any sale or transfer of all or substantially all of the party’s assets or (b) any acquisition of a controlling interest in the party’s voting stock;

or (c) any acquisition by another party of any of the intellectual property that is made part of this Agreement.

The party that terminates this Agreement must copy TxDMV on the notice to terminate.

5.5 Except as otherwise provided herein, upon the expiration or termination of this Agreement for any reason, each party must discontinue all uses of the other’s Content in connection with this Agreement. TxDMV’s rights as a third‐party beneficiary terminate on the fourteenth calendar day after the termination of this Agreement.

5.6 All relevant provisions of this Agreement involving actions that may be necessary to complete obligations by either party after termination shall survive such termination.

6. Confidential Information, User Data, Privacy, Confidentiality

6.1 The parties agree and acknowledge that in the performance of this Agreement, each party may have access to private or confidential information of the other party, including but not limited to trade secrets, marketing and business plans, technical information, and financial data, which is designated by the disclosing party in writing, whether by the use of a proprietary stamp or legend or other means (“Confidential Information”). Such information disclosed orally will also constitute Confidential Information if the individual disclosing it declares it to be confidential.

6.2 Each party agrees that: (a) all Confidential Information must remain the exclusive property of the owner; (b) it must maintain and use prudent methods to cause its employees and agents to maintain the confidentiality and secrecy of the Confidential Information; and (c) it must not copy, publish, disclose to others or use (other than as provided pursuant to the performance of this Agreement) the Confidential Information.

6.3 Notwithstanding the foregoing, Confidential Information must not include any information to the extent it (a) is or becomes a part of the public domain through no act or omission on the part of the receiving party; (b) is disclosed to third parties by the disclosing party without restriction on such third parties; (c) is in the receiving party’s possession at or prior to the time of disclosure under this Agreement; (d) is disclosed to the receiving party by a third party having no obligation of confidentiality with respect thereto; (e) is independently developed by the receiving party without reference to the disclosing party’s Confidential Information; or (f) is released from confidential treatment by the written consent of the disclosing party.

6.4 The parties agree that they must not collect any data, whether personal or otherwise, from users linking to Brand Client from Digital License Plate Vendor’s digital license plate order system, unless a user has expressly given Brand Client permission to gather the data.

6.5 Brand Client must implement and display on all Brand Client Web Sites that are directly linked from Digital License Plate Vendor’s digital license plate order system an online privacy policy that explains the party’s use of data collected from users visiting the Brand Client Web Sites.

6.6 Digital License Plate Vendor will not share the name and address of customers who order specialty plates as this information is protected by the Driver Privacy Protection Act (DPPA).

6.7 This agreement and all TxDMV contracts are subject to open records requests through the Public Information Act.

7. Liability IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES, WHETHER BASED ON BREACH OF CONTRACT, TORT

(INCLUDING NEGLIGENCE) OR OTHERWISE, WHETHER OR NOT THAT PARTY HAS BEEN ADVISED

OF THE POSSIBILITY OF SUCH DAMAGES. HOWEVER, EACH PARTY MAY CLAIM AND BE LIABLE FOR

ACTUAL OUT OF POCKET LOSSES.

8. Miscellaneous Provisions

8.1 All notices, requests and other communications hereunder must be made in writing and delivered by personal delivery, express courier, confirmed facsimile, confirmed email, or certified or registered mail, return receipt requested. The notice will be deemed given upon personal delivery, one day after deposit with express courier, upon confirmation of receipt of facsimile or email, or five days after deposit in the mail. Notices will be sent to a party at its address set forth below or such other address as that party may specify in writing pursuant to this section.

Notices to TxDMV must be sent to the following address:

Texas Department of Motor Vehicles Vehicle Titles and Registration Division Attn: Digital License Plate Contract Monitor, Contract Unit 4000 Jackson Avenue Austin, Texas 78731 DigitalLicensePlates@txdmv.gov

8.2 This Agreement may not be amended except in writing executed by authorized representatives of the parties.

8.3 Except in connection with a Change in Control as defined in Section 5.4, neither party may assign this Agreement, in whole or in part, without the other party’s written consent, which will not be unreasonably withheld. Any attempt to assign this Agreement other than as permitted above will be null and void. This Agreement is binding upon and inures to the benefit of the parties and their respective successors and permitted assigns.

8.4 This Agreement contains the entire and final agreement of the parties on the subject matter herein and supersedes all previous and contemporaneous verbal or written negotiations on the subject matter herein. To the extent Digital License Plate Vendor has an existing agreement with Brand Client on the subject matter of this Agreement, the execution of this Agreement terminates the existing agreement [dated ________________, ___] on the effective date of this Agreement.

8.5 The failure of either party at any time to require performance by the other party of any provision hereof will not affect the full right to require such performance at any time thereafter.

The waiver by either party of a breach of any provision hereof will not be taken or held to be a waiver of any succeeding breach of such provision or as a waiver of the provision itself.

8.6 If any provision of this Agreement or its application under a particular circumstance is held to be invalid or unenforceable to any extent, the remainder of the Agreement will not be affected thereby, and each such provision will be enforced to the fullest extent permitted by the law.

8.7 This Agreement is governed by, and shall be construed in accordance with, the laws of the State of Texas, applicable to contracts wholly made and performed in Texas, and without regard to its conflicts of laws provisions. The parties agree that, in the event a dispute arises between them, they will attempt, in good faith, to resolve such dispute in an amicable and equitable manner. The parties further agree that the matter will be decided by arbitration in accordance with the commercial arbitration rules of the American Arbitration Association. Either party may apply to the American Arbitration Association to institute the arbitration proceedings, which are to be held exclusively in Austin, Texas. However, arbitration does not apply to any claim or action regarding TxDMV’s third‐party beneficiary rights under this Agreement.

8.8 The parties are independent contractors and do not have the power or authority to assume or create any obligation or responsibility on behalf of each other except as expressly set forth in this Agreement. This Agreement will not be construed to create or imply any partnership, agency or joint venture.

8.9 This Agreement may be executed in counterparts and each will constitute an original, and all of which will constitute one agreement.

8.10 The headings in this Agreement are for convenience of reference only and have no legal effect.

8.11 The effective date of this Agreement is ________________________.

I have read, understood and agree to the Terms of this Agreement. I have the authority to sign on behalf of the Brand Client.

Signature for Brand Client Date

Name (Print)

Title

Address for notices:

Signature for Digital License Plate Vendor Date

Name (Print)

Title

Address for notices:

Attachment: Images of Brand Client’s Marks

Attachment: Royalty Payment Schedule