Amendment No. 3 to License Agreement with NVIDIA Corporation and Non-Disclosure AgreementCity of Dubuque
City Council Meeting
Consent Items # 21.
Copyrighted
February 7, 2022
ITEM TITLE: Proposed Amendment to License Agreement between City of Dubuque
and NVI DIA Corporation and Non -Disclosure Agreement
SUMMARY: City Manager recommending approval of an amendment to the existing
License Agreement between the City of Dubuque and the NVI DIA
Corporation to allow the sharing of certain traffic information for a joint
research project and approval of a Non -Disclosure Agreement between
the parties.
SUGGESTED Suggested Disposition: Receive and File; Approve
DISPOSITION:
ATTACHMENTS:
Description
Type
Proposed Amendment to License Agreement between
the City of Dubuque and NVIDIA Corporation-MVM City Manager Memo
Memo
Staff Memo Staff Memo
Amendment 3 to License Agreement Supporting Documentation
THE C
DUj!BQTE
Masterpiece on the Mississippi
TO: The Honorable Mayor and City Council Members
FROM: Michael C. Van Milligen, City Manager
Dubuque
WAWca 914
ii
2007-2012.2013
2017*2019
SUBJECT: Proposed Amendment to License Agreement between City of Dubuque
and NVIDIA Corporation and Non -Disclosure Agreement
DATE: February 3, 2022
Civil Engineer II Dave Ness and Sustainable Innovation Consultant David Lyons
recommend City Council approval of an amendment to the existing License Agreement
between the City of Dubuque and the NVIDIA Corporation to allow the sharing of certain
traffic information for a joint research project and approval of a Non -Disclosure
Agreement between the parties.
I concur with the recommendation and respectfully request Mayor and City Council
approval.
v
Mic ael C. Van Milligen
MCVM:sv
Attachment
CC' Crenna Brumwell, City Attorney
Cori Burbach, Assistant City Manager
Dave Ness, Civil Engineer II
David Lyons, Sustainable Innovation Consultant
THE CITY OF
DUB E
Masterpiece on the Mississippi
TO: Michael C. Van Milligen, City Manager
FROM: Dave Ness, Civil Engineer II
David Lyons, Sustainable Innovation Consultant
Dubuque
MI-Amedea Citf
2007,2012.2013
2017*2019
SUBJECT: Proposed Amendment to License Agreement between City of Dubuque
and NVIDIA Corporation and Non -Disclosure Agreement
DATE: February 3, 2022
INTRODUCTION
The purpose of this memo is to request approval of an amendment to the existing
License Agreement between the City of Dubuque and the NVIDIA Corporation to allow
the sharing of certain traffic information for a joint research project with the NVIDIA
Corporation.
BACKGROUND
NVIDIA corporation is a leading developer of high-performance computing systems and
artificial intelligence (AI) platforms. Their work has extended into the potential use of Al
in traffic and safety developments, and they have begun research into the potential uses
and impacts in those arenas. The City of Dubuque's development of a comprehensive
and unique system of traffic and public safety camera systems created a potential
research platform for NVIDIA and other industry leaders. On September 25, 2018, the
Parties entered into a License Agreement to share information and determine the ability
to enhance the value of systems such as the City's through high power computing and
Al. That research collaboration has gone well. In 2019 the Parties extended that
License Agreement.
DISCUSSION
NVIDIA has approached the City with a request to extend the Licensing Agreement
another six months and clarify language in the original License Agreement as it relates
to return of data. There are data handling requirements in all agreements the City
enters into, primarily to assure that no individually identifiable information is ever
released. When those agreements end, there is a "return or destroy" requirement that
continues that assurance. However, in this case NVIDIA will have already removed any
individually identifiable information prior to incorporating Dubuque and other data into
the technical platform NVIDIA uses with other researchers or partners. For clarity,
NVIDIA asks that we not require the "return or destroy" for this data since it will be
integrated into that platform that will continue to operate after the research agreement is
complete. City staff has reviewed the request and determined that since there is no
threat of release of individually identifiable data that in this case the "return or destroy"
requirement can be removed. City staff has also determined that the increased
capability of new artificial intelligence systems for traffic public safety created by the
data would be in the public interest.
BUDGETIMPACT
There is no direct budgetary impact to the approval of this proposed amendment. In
discussion concerning the amendment City staff informed NVIDIA that the research
collaboration has been consuming more computing power from the City system than
anticipated. In response NVIDIA has agreed to provide ten (10) GPU (Graphic
Processing Unit) cards to the City for use in the project, with an approximate value of
$20,000.
RECOMMENDATION AND ACTION REQUESTED
This Amendment to the License Agreement supports Dubuque's public safety and smart
city initiatives and would provide Dubuque with early information on how we might
potentially use our visual data and Al platforms to further accelerate such initiatives.
There is no negative budgetary impact to the request. We would request your approval
of the Amendment to the License Agreement.
cc: Crenna Brumwell, City Attorney
Barry Lindahl, Senior Counsel
Chris Kohlmann, IS Manager
DocuSign Envelope ID: B52F6E59-D1C6-4A6B-9018-F4D9DD8AB2DB
AMENDMENT NO.3
TO
LICENSE AGREEMENT
This AMENDMENT NO.3 TO LICENSE AGREEMENT effective as of the last signature
date below ("Amendment No. 3"), is made and entered into by and between the City of Dubuque,
Iowa ("City") and NVIDIA Corporation ("NVIDIA"). All capitalized terms shall have the
meaning given to them in the LICENSE AGREEMENT dated June 20, 2018, between the parties.
WHEREAS, the parties have amended the LICENSE AGREEMENT dated June 20, 2018
by Amendment No. 1 dated January 6, 2020, and Amendment No. 2 dated October 5, 2020
(LICENSE AGREEMENT dated June 20, 2018 and the foregoing amendments are collectively
referred to herein as the "License Agreement"); and
WHEREAS, the parties now desire to further amend the License Agreement to permit
NVIDIA to incorporate the Data into NVIDIA's product or service releases after the Term and
without being subject to a requirement to destroy or return such Data after the Term.
NOW, THEREFORE, for good and valuable consideration the receipt and sufficiency of
which is hereby acknowledged, the parties agree:
1. SECTION 1 of the License Agreement is hereby amended and restated in its entirety to
read as follows:
"SECTION.1. TERM. The Term of this License Agreement shall commence on the
20th day of June 2018 and shall continue until terminated, but in no event
for less than a period of four (4) years from the commencement date. After such four-year
period, either party may terminate this License Agreement upon ten (10) days written
notice delivered to the other party.
Notwithstanding the foregoing, upon termination of this License, any derived models
trained by NVIDIA using the Data shall not be affected by the termination of this License.
Upon termination, NVIDIA and its licensees are not required to destroy or return Data, and
after the Term, NVIDIA may continue at its choice to use the Data and incorporate it into
NVIDIA product and service releases. For clarity, termination of this License Agreement
does not affect the continued use of the Data by licensees.
With respect to the NVIDIA Prerelease Materials, the "NVIDIA License Term" shall
commence on the Amendment 1 Effective Date and shall continue until December 31, 2022,
unless earlier terminated.
The NVIDIA License Term maybe terminated as follows:
DocuSign Envelope ID: B52F6E59-DlC6-4A6B-9018-F4D9DD8AB2DB
i. Either party may terminate the NVIDIA License Term for convenience at any
time upon fifteen (15) days prior written notice to the other party.
ii. Additionally, and without prejudice to its other rights and remedies at law or
under this Agreement, either party may terminate the NVIDIA License Term
immediately upon written notice for a material breach by the other party. It is
understood and agreed that notwithstanding any other provisions of this License
Agreement, a breach of this License Agreement by a party may cause the other
party and/or its Affiliates irreparable damage for which recovery of money damages
would be inadequate, and that each party shall therefore be entitled to seek an
injunction to protect its rights in addition to any and all remedies available at law.
iii. Upon the termination or expiration of this License Agreement, City shall (i)
immediately cease using NVIDIA Prerelease Materials for any purpose
whatsoever; (ii) immediately destroy or return to NVIDIA all materials belonging
to NVIDIA, including without limitation all copies of NVIDIA Prerelease
Materials then in City's possession or control; and (iii) certify to NVIDIA in writing
that it has done so.
2. NVIDIA will provide City 1 OT4 GPUs or their equivalent within a reasonable time. The
foregoing GPUs are provided as -is and with no warranty.
3. This Amendment No. 3 together with the License Agreement constitutes the entire
agreement of the parties with respect to the subject matter hereto and supersede all prior
negotiations, conversations, or discussions between the parties relating to the subject matter
hereto, oral or written, and all past dealing or industry custom. If there is a conflict between
the terms in this Amendment No. 3 and the License Agreement, the terms in this
Amendment No. 3 shall control. Except as expressly set forth herein, all other terms of the
License Agreement shall remain in full force and effect. Any amendment or waiver under
this Amendment No. 3 must be in writing and signed by representatives of both parties.
This Amendment No. 3 may be executed in two or more counterparts, each of which shall
be deemed and original, but all of which together shall constitute one and the same
instrument.
4. This Amendment No. 3 shall take effect upon execution by both parties.
IN WITNESS WHEREOF, the parties have caused this Amendment No. 3 to be executed by their
duly -authorized representatives as of the Effective Date.
CITY OF DUBUQUE, IOWA
By
Name: Brad M. Cavanagh
Title:
NVIDIA CORPORATION
By: �DOCUSigned by:
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I UEME1307DWC...
Name: Deepu Talla
VP & GM - Edge Computing
Title: