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HomeMy WebLinkAbout2017-074 Agrmt - Veracities - YHOP INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT T is Intellectual Property Assignment Agreement (this "Agreement"), dated as of 2017, is made by and between the City of Ashland ("Assignor")and Veracities Incorporated, a Delaware public benefit corporation ("Assignee"). RECITALS WHEREAS, Carrie Hull ("Shareholder"), the sole shareholder of Assignee, has served as an employee of Assignor. WHEREAS, in heremployment, Shareholderdesigned and developed the You Have Options Program for sexual assault reporting, as more fully described in Schedule 1 hereto (the "Program"). WHEREAS, Shareholder has formed Assignee with the goal of developing, improving and expanding the Program; WHEREAS, in furtherance of Shareholder and Assignee's goals, and in exchange for certain Program access benefits, Assignor desires to assign all of its right, title and interest in the Program to Assignee. AGREEMENT NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties agree as follows: INTELLECTUAL PROPERTY ASSIGNMENT Assigned Property. For purposes of this Agreement, the term "Assigned Property" means the following: • all curriculum, documents, database information and other written works that pertain to the Program, whether or not such items are the subject of a registered copyright; • all registered trademarks, common law trademark rights, and registrations for business names and trade names that pertain to the Program, including [You Have Options Program trademark]; • the website available at www.reportingoptions.com, including all content, media, databases and proprietary software comprising the website as well as the design, layout and "look and feel" of the website; • the registered domain name www.reportingoptions.com and www.reportingoptions.org; • customer lists and other proprietary information pertaining to the Program and trainings conducted under the Program; and • for each of the foregoing: o all works of authorship, inventions, discoveries, methods, processes, names, designs, products, and confidential information forming a part of, embodied in, or necessary for use of the foregoing; and o all copyrights, patent rights, trade secret rights, trademark rights, and other intellectual property and proprietary rights in, arising out of, or associated with the foregoing. Assignment. Assignor hereby assigns to Assignee the Assignor's entire interest in: • the Assigned Property, including but not limited to all copyrights, patent rights, trade secret rights, trademark rights, and other intellectual property and proprietary rights comprising the Assigned Property; • Assignor's goodwill associated with all trademark rights in the Assigned Property; and • any income, royalties, claims, actions, proceedings, damages, liabilities, and expenses of every kind that Assignor may have against or be able to recover from any person, whether known or unknown, resulting from or arising out of the person's infringement of any copyright, patent, or trademark, misappropriation of any trade secret, or violation of any other intellectual or proprietary right of Assignor with respect to the Assigned Property. Assets Derived From and Through the Program and Held by Jackson County SART • Any funds held by Jackson County Sexual Assault Response Team (JCSART) on behalf of the Program shall continue to be held and administered by JCSART undertheterms of the memorandum of understanding between the City of Ashland and JCSART to defray the costs of the program. Assignor will not interfere with the use of these funds provided they are accessed and used pursuant to this agreement. Moral Rights. Assignor assigns to Assignee any moral rights thatAssignor may have in the Assigned Property, and waives any right to assert any moral rights in any portion of the Assigned Property. Perfection. At the request and expense of Assignee, Assignor will sign such documents and take such actions that Assignee deems reasonably necessary to perfect, protect, and evidence Assignee's rights in the Assigned Property. With respect to the domain name registration described in Section 1.1(b), Assignor shall use reasonable efforts to comply with applicable domain name registrar transfer requirements. With respect to the trademark registration described in Section 1.1(d), Assignor shall use reasonable efforts to comply with applicable U.S. Patent and Trademark Office trademark assignment requirements. ASSIGNEE REPRESENATIONS, WARRANTIES AND COVENANTS Representations and Warranties. Assignee represents and warrants to Assignor that: it is a public benefit corporation duly organized, validly existing and in good standing under the laws of the state of Delaware, it has all requisite corporate authority and power, authorizations, consents and approvals to enter into this Agreement, and it is duly qualified to do business and in good standing in each jurisdiction where it conducts business. Assignor Program Access. For a period of five (5) years commencing on the date of this Agreement, Assignee shall offer the Program and any Assignee-facilitated trainings to Assignor's sworn law-enforcement staff and shall waive all related registration and program fees unless waiver of fee for individual training, event or program tool would cause a financial hardship on Assignee. ASSIGNOR REPRESENTATIONS, WARRANTIES AND COVENANTS Representations and Warranties. Assignor represents and warrants to Assignee that: Assignor owns rights, title, and interest in and to the Assigned Property; Assignor has not granted and will not grant any licenses orother rights to the Assigned Property to any third party; the Assigned Property is free of any liens, encumbrances, security interests, and restrictions on transfer; to Assignor's knowledge, the Assigned Property does not infringe intellectual property rights of any third party; and there are no legal actions, investigations, claims, or proceedings pending or threatened relating to the Assigned Property. GENERAL Further Assurances. The parties will sign other documents and take other actions reasonably necessary to further effect and evidence this Agreement. Attachments. Any exhibits, schedules, and other attachments referenced in this Agreement are part of this Agreement. Governing Law. This Agreement is governed by the laws of the State of Oregon, without giving effect to any conflict-of-law principle that would result in the laws of any other jurisdiction governing this Agreement. Venue. Any action, suit, or proceeding arising out of the subject matter of this Agreement will be litigated in courts located in Jackson. County, Oregon Entire Agreement. This Agreement, inclusive of its recitals, contains the entire understanding of the parties regarding the subject matter of this Agreement and supersedes all prior and contemporaneous negotiations and agreements, whether written or oral, between the parties with respect to the subject matter of this Agreement. Assignor: CITY OF ASHLAND By: APP ED AS T~ ~ RM Its: n ~ ~ y [ASSIGNEE] By: Its: