This Intellectual Property Agreement (the "Agreement") is between Client (the "Company") and Acme LLC, a company (hereafter referred as the "Contractor"), both individually referred to as a "Party", and collectively referred herein as "Parties". This Agreement shall be effective on the date of signing this Agreement (the "Effective Date").
WHEREAS, the Company provides certain services in [SERVICE INDUSTRY];
WHEREAS, the Company engaged Contractor to provide services for the Company as an independent contractor;
WHEREAS, the Parties desire to set forth the terms and conditions that will govern the intellectual property and copyright of the work created by the Contractor for the Company during the service relationship ("Service Relationship");
WHEREAS, the Parties hereby represent and warrant to have full legal capacity to enter into this Agreement and execute all obligations provided herein; and that they have complied with all applicable laws;
NOW, THEREFORE, In consideration of the mutual covenants and promises made by the Parties to this Agreement, the Contractor and the Company covenant and agree as follows:
1.1 The Parties agree that the purpose of this Agreement is to set forth the terms and conditions that will apply to the intellectual property and copyright of the work created or developed by the Contractor for the Company under the Service Relationship.
2. COMPANY OWNERSHIP
2.1 Each and every intellectual property right and copyright held by the Company in relation to its commercial name; trademark; trade name; trade dress; designs, logos; trade secrets; business secrets; products; services; marketing campaigns; marketing strategies and techniques; technical data; formulas; customers and suppliers listings; software and hardware; source codes; websites; domain names; contact information; documents (physical and electronic); e-mails; memorandum; notes; reports; products information; production processes; service information; computer and system technology; texts, images, photos and contents of any kind; designs, blueprints, projects, and any information related to customers; policies and price listings; connections; know-how; use license; Confidential Information (as defined in Section 6 below); and any other tangible and intangible asset, among others, that currently exist and/or that have existed in the past and/or that may exist in the future with respect to the Company, including any right related to and/or derived therefrom (hereinafter referred to as "Company Intellectual Property"), are of the exclusive property of, and belong solely to the Company. Likewise, the Contractor accepts that all moral and patrimonial rights to Company Intellectual Property belong solely and exclusively to the Company.
2.2 All intellectual property rights owned or controlled by the Company at the commencement of this Agreement, including any other ownership right, shall remain under the ownership or control of the Company throughout the term of the Service Relationship and this Agreement and thereafter.
2.3 The Contractor expressly undertakes not to copy, reproduce, publish, or disclose or use, for their own benefit or for the benefit of any third parties, in any way, whether directly or indirectly, the Company Intellectual Property and/or not to claim any right or interest of any kind on thereof.
3. CONTRACTOR OWNERSHIP
3.1 Each and every one of the copyright and intellectual property rights, corresponding to any technical and professional knowledge, as well as any work or deliverable created by the Contractor for its own use or for any third party, before, during or after the termination of this Agreement, including but not limited to any idea; text; image; photo; graphic; design; blueprint; material; information; document; report; know-how; marketing campaigns; marketing strategies and techniques; process; and advice; among others, including any right related to and/or derived therefrom (hereinafter referred to as "Contractor Intellectual Property"), are of the exclusive property of, and belong solely to the Contractor. Likewise, the Company accepts that all moral and patrimonial rights to Contractor Intellectual Property belong solely and exclusively to the Contractor.
3.2 Subject to Section 4 below, all intellectual property rights owned or controlled by the Contractor at the commencement of this Agreement, including any other ownership right, shall remain under the ownership or control of the Contractor throughout the term of the Service Relationship and this Agreement and thereafter.
3.3 Notwithstanding Section 4 below, the Company expressly undertakes not to copy, reproduce, publish, or disclose or use, for their own benefit or for the benefit of any third parties, in any way, whether directly or indirectly, the Contractor Intellectual Property and/or not to claim any right or interest of any kind on thereof.
4. INTELLECTUAL PROPERTY ASSIGNMENT
4.1 The Parties agree that any work and/or deliverable created or developed by the Contractor for the Company under the Service Relationship, including but not limited to any improvement, modifications, derived, or similar related thereto and/or the Company's business was created or developed as "work for hire" ("Deliverable(s)") and are exclusively property of the Company, and all rights, title and interest therein shall vest in the Company and shall be deemed to be part and made in the course of the Service Relationship. To the extent that title to any such deliverables may not, by operation of law, vest in the Company or such Deliverables may not be considered as part of the Services, all rights, title and interest therein are hereby irrevocably assigned to the Company by the Contractor.
4.2 The Contractor agrees and acknowledges that the decision whether or not to commercialize or market any Deliverable created by the Contractor under the Service Relationship is within the Company's sole discretion and for the Company's sole benefit and that no royalty will be due to the Contractor as a results of the Company's efforts to commercialize or market any such Deliverables.
4.3 The Contractor hereby grants to the Company a non exclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have mad, exploit, market in any way, use, sell and modify any Intellectual Property owned by the Contractor o in which the Contractor has a interest, which is incorporated by Contractor into any Deliverable created or developed by Contractor under the Service Relationship.
4.4 Upon the request of the Company, or upon the expiration or termination of the Service Relationship and this Agreement, the Contractor will execute any and all documents requested by the Company to transfer to the Company all intellectual property rights of any Deliverable created or developed under this Agreement.
5. COPYRIGHTS REGISTRATIONS
5.1 The Contractor agrees to assist the Company, at the Company's expense, in every proper way to secure the Company's intellectual property rights and copyrights, in all Deliverables created or developed under the Service Relationship, including all patents and other intellectual property rights relating thereto in any and all countries, including the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors and assigns the sole and exclusive rights, title and interest in and to such Deliverables, and any copyrights, patent, and other intellectual property rights relating thereto.
5.2 The Contractor further agrees that its obligations to execute or cause to be executed, when it is the Contractor ́s power to do so, any instrument or document shall continue after the termination of the Service Relationship and this Agreement. If the Company is unable because the Contractor's mental or physical incapacity or for any other reason to secure the Contractor's signature to apply for or to pursue any application for any country patents or copyright registrations covering Deliverables or original works of authorship assigned to the Company in accordance with this Agreement, then the Contractor hereby irrevocably designate and appoint the Company and its duly authorized officers and agents as the Contractor's agents and attorneys in fact, to act and in the Contractor behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecutions and issuance of patent or copyrights registrations thereon with the same legal force and effect as if executed by the Contractor.
6.1 The Contractor acknowledges that it has received and will continue to receive confidential information and trade secrets ("Confidential Information") from the Company in the course of the Service Relationship, and otherwise carrying out the actions provided in this Agreement. Confidential Information includes any material, data and/or information to which the Contractor has access during the performance of the Service Relationship, including but not limited to, any Company Intellectual Property right and any information regarding the Company's business and customers lists, business strategies, business processes, business plans, financial data and information, reports, statements, technology and software Information, as well as all information collected by the Contractor during the Service Relationship and all documents and files that contain Confidential Information, except for anything designated as not confidential.
6.2 The Contractor agrees that the Confidential Information must be used by it only and exclusively to comply with the services provided to the Company under the Service Relationship.
6.3 The particular terms and conditions of this Agreement are confidential and shall not be disclosed to any third party by the Contractor without the prior, written consent of the Company.
7. TERM AND TERMINATION
7.1 This Agreement shall become effective as of the Effective Date indicated at the beginning of this document and shall remain in force as long as the Service Relationship is in effect.
7.2 Upon any termination or expiration of this Agreement, all Sections and Clauses to this Agreement which by their nature should survive termination or expiration of this Agreement, including but not limited to this Clause 7.2 and Clauses 7.3 and 9.2 as well as Sections 2, 3, 4, 5, 6, 8, 10, 12, 17, 19, 22 and 23 of this document, which shall survive and continue in effect following termination or expiration of this Agreement at any time for any reason or no reason.
7.3 The expiration or termination of this Agreement shall not relieve the Parties of any obligations due at the time of such expiration or termination, nor shall such expiration or termination prejudice any claim of either Party accrued on account of any default or breach by the other.
8. RETURNING COMPANY DOCUMENTS AND INFORMATION
8.1 The Contractor agrees that at the time of termination of the Service Relationship and this Agreement, the Contractor will immediately return the Company or destroy (and will not keep in its possession, re-create, or deliver to anyone else) any and all information, records, data, notes, reports, proposals, lists, document, correspondence, specifications, drawings, blueprints, and materials belonging to the Company, including any Confidential Information and Company Intellectual Property, and any other documents, files or property, or reproductions of any Deliverable created or developed by the Contractor under the Service Relationship or otherwise belonging to the Company, its successors or assigns.
9. DELIVERABLES RECORDS
9.1 The Contractor undertakes to keep and maintain adequate and updated written records of all Deliverables created or developed by the Contractor during the term of the Service Relationship ("Records").
9.2 The Records shall be available and shall remain the sole property of the Company at all times during and after the termination of the Service Relationship and this Agreement.
10. EQUITABLE REMEDIES
10.1 The Contractor agrees that it would be impossible or inadequate to measure and calculate the Company's damages from any breach of this Agreement.
10.2 Accordingly, the Contractor agrees if it breaches any provision of this Agreement, the Company will have available, in addition to any other remedy available, the right to obtain an injunction from a court of competent jurisdiction protecting Company Intellectual Property, including the Confidential Information, and restraining any breach or threatened breach and to specific performance of any such provision of this Agreement.
10.3 The Contractor agrees that no bond or other security shall be required in obtaining such equitable relief and the Contractor hereby consent to issuance of such injunction and to the ordering of specific performance.
11. WARRANTIES AND REPRESENTATIONS
11.1 The Contractor warrants and represents to the Company that:
- The Contractor has the legal right and authority to enter into this Agreement and to perform the obligations under this Agreement;
- Neither the execution of this Agreement, nor the compliance with the obligations hereunder, will conflict with, or result in the breach of, or constitute a default under, any contract, agreement, and/or instrument to which the Contractor be a party; and
- The Contractor shall not violate and shall comply with all applicable laws and regulations.
12.1 The Contractor agrees to indemnify, defend, and protect the Company including its respective owners, shareholders, founders, officers, directors, managers, employees, successor and assigns ("Related Persons") from and against all lawsuits, claims, actions, damages, losses, expenses and costs of every kind (including paying all reasonable attorney fees and costs of litigation) relating to this Agreement due to (a) the Contractor's infringement of any applicable law or regulation, including any intellectual property and/or any other right of any third party; (b) arising out of the Contractor's breach of any provision of this Agreement; (c) arising from the negligence or willful misconduct from the Contractor; and/or (d) arising from any claims or lawsuits arising out of any local and/or international legislation.
13. INDEPENDENT CONTRACTORS
13.1 The relationship of the Parties agreed under the Service Relationship and this Agreement is that of independent contractors, and nothing contained in this Agreement shall be construed to (a) give either Party the power to direct and control the day-to-day activities of the other; (b)constitute any of the Party as an employee, agent and/or representative of the other Party; and/or (c) constitute the Parties as partners, shareholders, joint venturers, co-owners or otherwise as participants in a joint or common undertaking.
13.2 The Parties agree that nothing in this Agreement is intended to allow either Party to create or assume any obligation on behalf of the other Party for any purpose whatsoever, unless as expressed in this Agreement or or is expressly agreed upon in writing between the Parties.
14. NO ASSIGNMENT
14.1 The Contractor may not assign the rights and obligations under this Agreement to any third party, without the prior written consent of the Company.
15.1 This Agreement, including any other agreement or document entered into or signed between the Parties under the Service Relationship, constitutes a single, individual and entire agreement between the Parties and shall supersede and supersede all prior written or oral agreements.
16.1 This Agreement may only be modified in writing and by mutual agreement between the Parties.
17.1 If any of the provisions of this Agreement is considered invalid, illegal or impossible to execute, the other clauses shall not be affected by such invalidity, illegality or impossibility of execution, and therefore, shall remain valid and in force.
18. BINDING EFFECT
18.1 This Agreement is binding between the Parties and shall inure to the benefit of the Parties and their respective successors and assigns.
19.1 The headings in this Agreement do not affect its interpretation. The use of any gender includes all genders. The singular includes the plural and vice-versa. This Agreement was originally prepared in the English language and such English version will be the governing version of this Agreement in case of any conflict, claim, dispute or discrepancy. In the event that an ambiguity or question of intent or interpretation arises, in any judicial proceeding or otherwise, the terms and conditions of this Agreement will be construed as having been drafted jointly by the Parties, and no presumption or burden of proof will arise favoring or disfavouring any Party by virtue of the authorship of any clause and/or provision of this Agreement.
20.1 Any communication or notification that is necessary between the Parties, due to this Agreement, must be sent to the following mailing and/or email addresses:
20.2 The Parties by mutual consent may modify the notification addresses described above.
21.1 This Agreement may be executed in any number of counterparts and delivered electronically with the same effect as if the signature to each counterpart were original and on the same document, and all such counterparts will be deemed one and the same agreement; however, this Agreement shall be of no force or effect until executed by both Parties.
22. DISPUTE RESOLUTION
22.1 Any controversy or claim arising out of or relating to this Agreement ("Disputes") which cannot be resolved amicably between the Parties within thirty (30) continuous days from the date this is being caused, shall be submitted to the exclusive jurisdiction of Courts of the United States of America.
23. GOVERNING LAW AND JURISDICTION
23.1 This Agreement shall be governed by and construed in accordance with the laws in force in the United States of America, without regard to conflict of laws provisions or principles that may result in the application of the laws of any jurisdiction other than the United States of America, and regardless of the nationality of the Parties.
23.2 Both Parties hereby submit to the exclusive jurisdiction and venue of any Courts of the United States of America.
THE PARTIES HERETO AGREE TO THE FOREGOING AS EVIDENCED BY THEIR SIGNATURES BELOW.