[HP draft 12.12.13]
Intellectual Property Assignment and License Agreement
This is an Intellectual Property Assignment and License Agreement (the "Agreement")
executed and entered into as of ___________, 20__ (the "Effective Date") by and between The
New America School, a Colorado nonprofit corporation exempt from taxation under Internal
Revenue Code (“Code”) § 501(c)(3) ("NAS"), and The New America Schools Network, a
Colorado nonprofit corporation exempt from taxation under § 501(c)(3) of the Code
("Network"). NAS and Network are collectively referred to herein as the "Parties".
RECITALS
A.
NAS is a Colorado public charter school which was incorporated as the
American School in 2002, and which subsequently changed its name to “The New America
School” in 2004;
B.
NAS’s mission is to empower new immigrants, English language learners,
and academically underserved students with the educational tools and support they need to
maximize their potential, succeed and live the American dream (“Mission”);
C.
Since it opened its doors as a public charter school to Colorado students in
2004, NAS has opened additional schools in Colorado, and has worked to create affiliated New
America public charter schools in New Mexico, Nevada and Arizona;
D.
In order to facilitate the growth of the New America School model of school
and its unique educational program and Mission (“Model”), NAS formed the Network;
E.
The educational and charitable mission of the Network is to strategically grow
and replicate the Model into an influential and excellent network of public charter schools in the
Southwestern United States that empower immigrants, English language learners and
academically underserved students with the educational tools they need to succeed;
F.
NAS owns all of the right, title and interest to certain proprietary information,
including the Copyrights, Marks, and Processes (as defined herein) (collectively, the “NAS
Intellectual Property”); and
G.
NAS wishes to assign all of the NAS Intellectual Property to the Network,
and Network wishes to accept such assignment of the NAS Intellectual Property, all on the terms
and conditions set forth herein.
For good and valuable consideration, the Parties therefore agree as follows:
1. Assignment of NAS Intellectual Property from NAS to Network.
a. Marks. NAS hereby irrevocably conveys, assigns and transfers to Network all of
its right, title and interest with respect to the use of the name “New America
School” and any variations thereof, including all common law rights, and
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including internet sites, domain names, trade names, trademarks, service marks
and logos with respect to the name “New America School,” including but not
limited to that which is set forth on Exhibit A (collectively, the “Marks”).
Network hereby accepts the assignment of the Marks.
b. Copyrights. NAS hereby irrevocably conveys, assigns and transfers to Network
all right, title and interest in and to all copyrights it owns which were developed
for use in connection with the Model, including but not limited to all written,
auditory, visual and other materials which are subject to copyright and such other
materials as set forth on Exhibit B, and all other intellectual property rights held
by NAS under the U.S. Copyright Act and all international laws and conventions
related to its operation of public charter schools in the state of Colorado
(collectively, “Copyrights”). Network hereby accepts the assignment of the
Copyrights.
c. Processes. NAS hereby irrevocably conveys, assigns and transfers to Network all
right, title and interest in and to all of its proprietary know-how, practices, plans,
specifications, methodologies, marketing and recruitment strategies, business
practices, design elements of each school, trade dress, and all other proprietary
information developed for use in connection with the Model (“Processes”).
Network hereby accepts the assignment of the Processes.
d. Limits. Network shall solely utilize the NAS Intellectual Property in the pursuit
of the Mission and the Model. Network may license the NAS Intellectual
Property to other public charter schools which execute a service and license
agreement with Network whereby such schools agree to abide by the Mission and
the Model and to become a Network school.
2. License. In consideration of NAS’ transfer of the NAS Intellectual Property under this
Agreement, Network shall provide NAS with a perpetual (except as described in this Section
2), non-exclusive, non-transferable, royalty-free license (“License”) to use the NAS
Intellectual Property solely in connection with NAS’ operation of all of its public charter
schools in the state of Colorado (“Colorado Schools”). Such License shall immediately
terminate if NAS stops operating a public charter school in the state of Colorado, stops
participating in the Model, of if NAS files for dissolution or loses its tax-exempt status under
§ 501(c)(3) of the Code.
3. Obligations under License. NAS hereby agrees that so long as the License is in
existence, it shall abide by the following standards and that any material violation thereof
may result in termination of the License:
a. High Ethical Standards. NAS and the Colorado Schools shall not knowingly
engage in any activities which damage the reputation of Network, other Network
schools, or the Model. NAS and the Colorado Schools shall endeavor to observe
high ethical standards of operation that are reasonably calculated to maintain the
image, quality, public goodwill and reputation of the Network, other Network
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schools, and the Model, and not knowingly engage in any activity that may harm
the reputation or impair the value of the same.
b. Policies and Procedures. NAS and the Colorado Schools shall at all times use
reasonable efforts to adhere to the policies and procedures that are part of the
Model and licensed to the NAS pursuant to this Agreement.
c. Compliance with Laws. NAS and the Colorado Schools shall comply with all
applicable laws, rules and regulations, including those which relate to the receipt
of federal, state and local funds.
d. Quality standards. NAS and the Colorado School shall maintain a high level of
quality standards, including but not limited to the following:
i. Maintain a healthy and safe environment as governed by federal, state and
local laws and rules;
ii. Disclose to Network the existence and results of any regulatory or
governmental agency investigations or disciplinary action initiated against
the School;
iii. Respond in a timely fashion to reasonable requests by The Network for
information about the School’s financial, business management and
operations;
iv. Follow the School’s charter contract and maintain acceptable levels of
compliance with the School’s authorizer’s standards and performance
goals; and
a. Comply with all other terms of this Agreement.
4. Further Assurances. Each Party shall execute, verify, acknowledge, deliver and file all
formal assignments, recordations and any other documents that the other Party may prepare
or reasonably request to give effect to the provisions of this Agreement.
5. Termination/Effect of Termination.
a. Termination. This Agreement may be terminated upon the occurrence of any of
the following:
i. Immediately by NAS if Network files for dissolution, bankruptcy, or if
NAS loses its tax-exempt status under § 501(c)(3) of the Code; or
ii. By either party upon the other party’s material breach of this Agreement,
provided that the non-breaching party provide the breaching party with
written notice of such breach and thirty (30) days to cure such breach.
b. Effect of Termination.
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i. Upon termination of this Agreement pursuant to Section 4(a)(i) above,
Network shall immediately assign all right, title and interest in and to the
NAS Intellectual Property back to NAS for no consideration.
ii. Upon termination of this Agreement under Section 4(a)(ii): (i) if Network
is the breaching party, Network shall immediately assign all right, title and
interest in and to the NAS Intellectual Property back to NAS for no
consideration; or (ii) if NAS is the breaching party, Network may
terminate the License.
6. General.
a. Representations.
iii. NAS and Network represent that each has the full power and authority to
execute, deliver, and perform this Agreement in accordance with its terms
and this Agreement does not violate any agreement or arrangement to
which either is a Party or by which either is bound.
iv. NAS agrees to promptly notify Network of any infringement or dispute
concerning the NAS Intellectual Property which may, from time to time,
come to NAS’ attention, and shall assist Network in any claim or dispute
involving the NAS Intellectual Property.
v. Neither Party shall knowingly engage in any activities which damage the
reputation of the other Party or the Model. Both Parties shall endeavor to
observe high ethical standards of operation that are reasonably calculated
to maintain the image, quality, public goodwill and reputation of the other
Party and the Model, and not knowingly engage in any activity that may
harm the reputation or impair the value of the same.
b. Governing Law. This Agreement shall be interpreted under and governed by the
laws and decisions of the State of Colorado.
c. Entire Agreement. This Agreement contains the entire agreement and
understanding of the parties with respect to the subject matter hereof and
supersedes all prior agreements and understandings between them with respect to
such subject matter. All rights and remedies contained in this Agreement shall be
cumulative and shall not limit any other right or remedy to which a Party may be
entitled. If any provision of this Agreement is held to be invalid or unenforceable
by any court of competent jurisdiction, such holding shall not invalidate or render
unenforceable any other provision hereof.
d. Assignment. The license granted to NAS in Section 2 is not assignable and
cannot be expanded or modified except upon the express permission of Network.
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e. Counterparts. This Agreement may be executed in original or faxed
counterparts, all of which taken together shall constitute one and the same original
instrument.
[signature page to follow]
[HP draft 12.12.13]
The Parties have executed this Intellectual Property Assignment and License Agreement
through their authorized signatories on the dates set forth below, to be effective as of the
Effective Date.
The New America School, a Colorado nonprofit
corporation
Date:
, 20__
By
Title
The New America Schools Network, a Colorado
nonprofit corporation
Date:
, 20__
_____
By ______________________________________
Title _____________________________________
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Exhibit A
Tradename: New America School (unregistered)
Logos:
[get NM logo]
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Exhibit B
(Copyrights)
All written, visual or auditory copyrightable materials developed as part of the Model, including
but not limited to the following:
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Mission and belief statements
Curriculum aligned with core standards but customized for our target population
Common assessments
Assessment frameworks
Teacher evaluation frameworks including walk-through
Support staff templates for evaluation
Dashboards
School and student performance matrix of measures/indicators/metrics/targets
360° Principal evaluation model
Policies and procedures to support the Model
Financial policies
Employee handbook
Website
Videos and all visual materials
Implementation guides
Technical data materials
Professional development programs
Facility design models
All other academic and business forms, documents and educational specifications
All other documents, written policies and processes related to the operation and business