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INTELLECTUAL PROPERTY LICENSE AND JOINT VENTURE AGREEMENT
Made and effective as of this day of , 201 (the “Effective Date”)
BETWEEN:
Person A
(hereinafter referred to as “Person A”)
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Person B
(hereinafter referred to as “Person B”)
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Person C
(hereinafter referred to as “Person C”)
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Person D
(hereinafter referred to as “Person D”)
WHEREAS:
A. WHEREAS the Parties wish to work together to develop (the “Project”) and to determine whether they wish to enter into a formal business arrangement, such as incorporation, with respect to such Project; and
B. WHEREAS each Party wishes to license any intellectual property that they develop during the course of the Project to each other Party in order to facilitate development of the Project and the potential business arrangement, and
C. WHEREAS the Parties wish to set out their individual responsibilities with respect to the Project;
NOW THEREFORE IN CONSIDERATION of the mutual promises and covenants herein contained, the adequacy of which is hereby acknowledged by each of the Parties, the Parties agree as follows:
1 DEFINITIONS
1.1 “Agreement” means this Intellectual Property License and Joint Venture Agreement between the Parties.
1.2 “Confidential Information” means any information relating to the Project, including, but not limited to, any formula, design, prototype, compilation of information, data, research, plan, program, code, method, invention, license, technique or process, information relating to any product, device, equipment, or machine, customer information, financial information, marketing information, intellectual property, intellectual property rights, business opportunities, or research and development.
1.3 “Individual Confidential Information” means any information considered confidential or proprietary by a Party and identified as such, whether relating to the Project or not, including, but not limited to, the list of items set forth in the definition of Confidential Information.
1.4 “Intellectual Property” means any material conceived or produced in relation to or as a result of the Project, and shall include, but is not limited to the following: modifications or enhancements to software, documents, data, raw data, research, formulae, codes, methods, designs, prototypes, compilation of information, plans, programs, techniques, processes, reports, accumulated knowledge, experience, secret processes, procedures, studies, test results, drawings, diagrams, technical specifications, descriptions, and other written or printed information pertaining to the Project, regardless of form or format.
1.5 “Intellectual Property Rights” means all copyrights, patents, trademarks, industrial designs, trade secrets and any other proprietary rights associated with Intellectual Property.
1.6 “Marks” means the trademarks, trade names, service marks, logos and other identifiers, individually and collectively, related to the Project, whether or not owned by an individual Party.
1.7 “Party” means one of the parties to this Agreement and “Parties” means the parties collectively, as applicable from the context.
1.8 “Individual IP” means any Intellectual Property developed by a Party and any Intellectual Property Rights owned by a Party.
2 SCOPE
2.1 The Parties agree to work in good faith to develop the Project together, without any compensation being paid to any Party for its work, subject to the terms and conditions of this Agreement.
2.2 No third party may join the Project unless the then-current Parties to this Agreement unanimously consent to such third party joining, and such third party must agree to the terms and conditions of, and execute, this Agreement.
2.3 A Party’s involvement with the Project may terminate in accordance with the provisions of Section 11.
3 LICENSE AND ASSIGNMENT
3.1 Each Party hereby grants to each other Party, as of the Effective Date, an irrevocable, perpetual, non-exclusive, unrestricted, transferable, fully paid up, royalty-free and worldwide right to use, execute, copy, reproduce, develop, perform, make, produce, exploit, modify, maintain, sell, market, promote, distribute, export, import, transmit, broadcast, and sub-license such Party’s Individual IP to the extent reasonably needed by each other Party to further the Project.
3.2 To the extent allowed by law, the foregoing license shall be deemed to waive all rights of paternity, integrity, disclosure and withdrawal and any other rights that may be known as or referred to as “moral rights”, “artist's rights” or the like (collectively, the “Moral Rights”), and such Party hereby ratifies and consents to any action taken by the other Parties with respect to such Moral Rights in relation to the Project.
3.3 Each Party warrants that it has disclosed all existing and pending agreements and arrangements relating to the Individual IP, and also all third party interests, actual or potential, in and to the Individual IP, in Schedule A, and that they have obtained the written consent of all affected third parties to the license to the other Parties of its Individual IP in accordance with Section 3.1.
3.4 Each Party hereby undertakes to do and perform, sign, swear and execute all such further and other acts, deeds, documents, matters or things as may be required by the other Parties or considered necessary, desirable or proper (now or in the future) to give effect to the license of Individual IP set forth herein.
3.5 Nothing herein shall be deemed to grant a license to any Individual IP of the other Parties to any Party leaving the Project or terminating their involvement in this Agreement, and such Party shall only have rights of ownership in and to their own Individual IP, subject to the restrictions set forth in this Agreement. Such Party acknowledges that their license grant of their Individual IP to the other Parties set forth in Section 3.1 above survives the termination of their participation in the Project and the Agreement.
4 PROJECT OBLIGATIONS
4.1 Each Party agrees that, in working on the Project:
a) they shall take all necessary precautions to protect the integrity of the property, including the Individual IP, of the other Parties to this Agreement;
b) the performance of this Agreement shall not breach any other agreement entered into by such Party, including any prior employment or contractor agreement;
c) they will not enter into any third-party agreements or grant any rights or licenses that conflict with those contemplated by this Agreement
d) they will not use any confidential materials or documents of any former client or employer, or of any other third party, unless they have received prior written authorization to do so from the owner of the confidential materials or documents, and have informed the other Parties to this Agreement;
e) to the best of their knowledge, no intellectual property rights of any third party shall be infringed by their Individual IP or their performance of this Agreement;
f) they will immediately inform the other Parties of any actions, suits or proceedings pending or threatened against or adversely affecting, or which could adversely affect their Individual IP;
g) they will immediately inform the other Parties of lien, charge, encumbrance or any other right of another against the Individual IP, or any prospect thereof.
4.2 Each Party acknowledges and agrees that nothing herein or related to the Project shall be deemed to create a legal partnership between the Parties, and that no Party has the right to bind any or all of the other Parties to any course of action or legal obligation. Notwithstanding the foregoing, the Parties may, by unanimous consent, delegate any obligations with respect to the Project to a particular Party, by executing an authorization substantially in the form set forth in Schedule B.
5 NON-COMPETITION AND NON-SOLICITATION
5.1 Each Party agrees that it shall not, at any time during the term of this Agreement and for a period of two (2) years thereafter, directly or indirectly participate in any manner in the development of any product or intellectual property that competes in any way with the use, sale, licence, or application of the Project. Where such Party has terminated its involvement in the Project and this Agreement and/or has otherwise ceased to be a Party to this Agreement prior to the termination of this Agreement, such prohibition shall continue for two (2) years after the date that such Party has terminated its involvement in the Project and this Agreement and/or has otherwise ceased to be a Party to this Agreement. Each Party acknowledges and agrees that the benefits obtained through this Agreement shall be sufficient consideration for the granting of this covenant.
5.2 Each Party agrees that, during the term of this Agreement and for a period of two (2) years thereafter, it will not in any way solicit, recruit, induce or attempt to influence any customer or prospective customer of the Project to terminate or reduce its relationship with the other Parties in relation to the Project (including without limitation by using knowledge gained from the Project, directly or indirectly, to support any competitive proposal to such customer or prospective customer). The foregoing restriction shall not preclude a Party from soliciting or recruiting such customers or prospective customers for employment or other work after such Party is no longer involved in the Project, provided that: (i) such Party does not utilize any specific knowledge gained during their work on the Project in such solicitation or recruitment, and (ii) such solicitation or recruitment does not arise from, and is in no way connected to, Project opportunities with such customers or prospective customers of which such Party is, or should reasonably be, aware (whether past, current or future).
5.3 Each Party acknowledges that a breach of this provision would cause irreparable harm to the other Parties, and that any other Party is therefore entitled to a permanent and interlocutory injunction prohibiting such Party from engaging in such activity upon reasonable apprehension of such breach. Each Party confirms that the obligations set out in this Section 5 are fair and reasonable, and that, given such Party’s general knowledge and experience, they will not preclude such Party from operating in such Party’s industry or field of expertise.
6 INTELLECTUAL PROPERTY
6.1 Any intellectual property registrations respecting the Intellectual Property shall be the responsibility of the individual Parties creating the Intellectual Property. Where more than one Party has created the Intellectual Property being registered, the registering Party must ensure that all creators of the Intellectual Property are jointly registered as owners, creators and authors of such Intellectual Property, and each Party listed shall jointly bear the responsibility for the costs and expenses of registering and maintaining such registrations; provided however that if a Party does not wish to be included in such registration, they shall not be obligated to bear such costs and expenses, and shall waive all rights to be listed and to benefit as an owner, creator or author of such Intellectual Property being registered.
7 CONFIDENTIAL INFORMATION
7.1 Each Party agrees that at all times during the term of this Agreement and at all times following termination of this Agreement, whether voluntary or involuntary:
a) they shall maintain all Confidential Information in strict confidence, shall take all necessary precautions against unauthorized disclosure of the Confidential Information, and shall not directly or indirectly, disclose, allow access to, transmit or transfer any Confidential Information to a third party without the knowledge and express written consent of the other Parties;
b) they shall not use, disclose or reproduce the Confidential Information except as reasonably required in working on the Project and with the knowledge and express consent of the other Parties;
c) they shall advise the other Parties immediately in writing of any misappropriation, disclosure, conversion or misuse by any person of any Confidential Information of which they may become aware;
d) all Confidential Information shall be clearly marked and noted as being “Proprietary and Confidential Information” of the Party providing the information, or, if the Parties so wish, of the Project.
e) upon the earlier of a request by the other Parties or the termination of such Party’s involvement with this Agreement (whether voluntary or involuntary), such Party shall immediately return to the other Parties all Confidential Information and all documents and data relating to the Project which are in such Party’s possession or control.
7.2 Each Party specifically acknowledges and agrees that damages may not be an adequate remedy to compensate the other Parties for any breach of such Party’s obligations contained herein, and accordingly such Party agrees that in addition to any and all other remedies available, any or all of the other Parties shall be entitled to obtain relief by way of a temporary or permanent injunction to enforce these obligations.
7.3 The non-disclosure obligations under this Agreement shall not apply to Confidential Information which a Party can establish:
a) is, or becomes, readily available to the public other than through a breach of this Agreement;
b) was disclosed, lawfully and without breach of any contractual or other legal obligation, to such Party by a third party without any confidentiality obligation attached to such information;
c) was lawfully known to such Party without any confidentiality obligation attached thereto; or
d) was independently developed or discovered by such Party outside of the course of such Party’s performance of their obligations under this Agreement, without any reference to any Confidential Information obtained directly or indirectly from the Project.
8 WARRANTIES
8.1 Each Party warrants that:
a) they have the full power to enter into this Agreement and to perform its obligations hereunder;
b) they will observe and comply with all applicable laws, ordinances, codes and regulations of governmental agencies, including federal, provincial, state, municipal and local governing bodies, of any country having jurisdiction over this Agreement or any part thereof; and
c) they have the absolute right to grant the licenses and make the assignments of the right, title and interest in and to the Individual IP contemplated in this Agreement.
9 INDEMNITY AND LIABILITY
9.1 Each Party shall indemnify and hold harmless all the other Parties from and against any and all damages, injuries, claims, demands, actions, liabilities, costs and expenses (including reasonable legal fees) incurred or made against any or all of the other Parties arising from or connected with: (a) a breach of any warranty, representation or covenant herein by such Party, (b) the negligence or willful misconduct of such Party, or (c) a third party claim that such Party’s Individual IP infringes or misappropriates any patents, copyrights, trademarks, trade names, trade secrets or other proprietary rights. No Party shall be obligated to indemnify any other Party to the limited extent that a claim directly results from the negligence, misconduct or breach of this Agreement of or by such other Party.