IP Assignment Agreement - Hawaii

INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (HAWAII)

TABLE OF CONTENTS

1. Document Header
2. Definitions
3. Assignment and Transfer of Rights
4. Consideration and Payment Terms
5. Representations and Warranties
6. Covenants and Restrictions
7. Default and Remedies
8. Risk Allocation
9. Dispute Resolution
10. Employee Invention Assignment (If Applicable)
11. General Provisions
12. Execution Block

1. DOCUMENT HEADER

This Intellectual Property Assignment Agreement (this "Agreement") is entered into as of [__/__/____] (the "Effective Date") by and between:

1. [____________________________________], a [____________] [____________] with its principal place of business at [____________________________________] ("Assignor"); and
2. [____________________________________], a [____________] [____________] with its principal place of business at [____________________________________] ("Assignee").

Recitals
A. Assignor is the sole and exclusive owner of the intellectual property more particularly described in Schedule A (the "Assigned IP").
B. Assignee desires to acquire, and Assignor desires to assign, all right, title, and interest in and to the Assigned IP on the terms set forth below.

NOW, THEREFORE, in consideration of the mutual covenants and other good and valuable consideration, the receipt and sufficiency of which are acknowledged, the Parties agree as follows:

2. DEFINITIONS

"Affiliate" means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with that Party.

"Assigned IP" means the Patents, Trademarks, Copyrights, Domain Names, Trade Secrets, and all other intellectual property rights owned by Assignor and listed on Schedule A, together with all associated goodwill and causes of action.

"Assignment Documents" means the short-form assignments, trademark assignments, patent assignments, copyright assignments, domain name transfer forms, and any other documents reasonably required to perfect Assignee's ownership of the Assigned IP.

"Copyrights" means all worldwide rights in copyrightable works, registrations, renewals, and applications, including those governed in the United States by 17 U.S.C. Sections 201 and 204, and including works made for hire as defined in 17 U.S.C. Section 101.

"Domain Names" means the internet domain names identified on Schedule A.

"Future Inventions" means all Inventions conceived, created, developed, or reduced to practice by Assignor during the term of any applicable engagement and within the scope described in Section 3.7.

"Inventions" means all inventions, discoveries, improvements, designs, works of authorship, software, mask works, know-how, and other developments, whether or not patentable or registrable.

"Moral Rights" means any rights of attribution, integrity, disclosure, and withdrawal, and any similar rights existing under the law of any jurisdiction.

"Patents" means all patents and patent applications, including continuations, continuations-in-part, divisionals, reissues, substitutions, and extensions, governed in the United States by 35 U.S.C. Section 261.

"Trade Secrets" means all trade secrets as defined under the Hawaii Uniform Trade Secrets Act, Haw. Rev. Stat. Section 482B-1 et seq., and the federal Defend Trade Secrets Act, 18 U.S.C. Section 1836.

"Trademarks" means all trademarks, service marks, trade names, logos, and related goodwill, including registrations and applications, the assignment of which (together with goodwill) is governed in the United States by 15 U.S.C. Section 1060.

3. ASSIGNMENT AND TRANSFER OF RIGHTS

3.1 Present Assignment. Assignor hereby irrevocably sells, assigns, transfers, conveys, and delivers to Assignee, and Assignee hereby accepts, all right, title, and interest worldwide in and to the Assigned IP, effective as of the Effective Date.

3.2 Goodwill. Assignor assigns to Assignee all goodwill associated with the Trademarks, in conformity with 15 U.S.C. Section 1060, it being acknowledged that an assignment of a trademark without its associated goodwill is invalid.

3.3 Causes of Action. Assignor assigns to Assignee all causes of action and rights to sue for past, present, and future infringement, misappropriation, or other violations relating to the Assigned IP, and all proceeds thereof.

3.4 Recordation and Further Assurances. Assignor shall execute, notarize, and deliver all Assignment Documents and take all actions reasonably requested by Assignee to record and perfect Assignee's interests with applicable governmental authorities and registrars, including recordation of patent and trademark assignments with the United States Patent and Trademark Office under 35 U.S.C. Section 261 and 15 U.S.C. Section 1060, and recordation of copyright transfers with the United States Copyright Office under 17 U.S.C. Section 204. This obligation survives the Effective Date.

3.5 Moral Rights Waiver. To the fullest extent permitted by law, Assignor irrevocably waives and agrees not to assert any Moral Rights in the Assigned IP, and shall procure any required waivers from its personnel.

3.6 Reserved Rights. No rights are reserved by Assignor unless expressly set forth in Schedule B (Reserved Rights), which shall be interpreted narrowly.

3.7 Future Inventions. To the extent any Future Inventions are included in the Assigned IP, Assignor hereby presently assigns to Assignee all right, title, and interest in and to such Future Inventions as and when they are conceived, created, developed, or reduced to practice. With respect to any right that cannot be assigned in advance as a matter of law, Assignor agrees to assign such right to Assignee promptly upon its creation. This Section is subject to Section 10 where Assignor is an individual employee.

3.8 Work Made for Hire. The Parties intend that all copyrightable works within the Assigned IP that qualify as "works made for hire" under 17 U.S.C. Sections 101 and 201(b) shall be deemed works made for hire owned by Assignee. To the extent any such work does not so qualify, Assignor hereby assigns all right, title, and interest in and to such work to Assignee pursuant to 17 U.S.C. Section 204.

4. CONSIDERATION AND PAYMENT TERMS

4.1 Consideration. In exchange for the Assigned IP, Assignee shall pay Assignor [____________________________________] (the "Consideration"), subject to any holdbacks, offsets, or escrow arrangements specified in Schedule C.

4.2 Payment Mechanics. The Consideration shall be paid via [____________________________________] on or before [__/__/____], to the account designated in writing by Assignor.

4.3 Taxes. Each Party is responsible for its own taxes arising from this Agreement, except that Assignee shall withhold and remit any withholding taxes required by law and provide Assignor with appropriate tax certificates.

4.4 Late Payment. Any undisputed amount not paid when due shall accrue interest at the lesser of (i) 1.0% per month or (ii) the maximum rate permitted by applicable law.

5. REPRESENTATIONS AND WARRANTIES

5.1 Mutual Representations. Each Party represents and warrants that:
a. It is duly organized, validly existing, and in good standing under the laws of its jurisdiction of formation.
b. It has full power and authority to execute and deliver this Agreement and to perform its obligations hereunder.
c. This Agreement constitutes a legal, valid, and binding obligation enforceable in accordance with its terms.

5.2 Assignor Representations. Assignor further represents and warrants that:
a. Ownership. Assignor is the sole and exclusive owner of the Assigned IP, free and clear of any lien, security interest, license, or other encumbrance.
b. No Conflicts. Assignor has not granted any rights in the Assigned IP that conflict with this Agreement.
c. No Litigation. There is no pending or threatened claim contesting the validity, ownership, or enforceability of the Assigned IP.
d. Maintenance Fees. All annuities, maintenance fees, and renewal fees due before the Effective Date have been paid in full or are disclosed in Schedule D.
e. Authority. No consent, approval, or authorization of any governmental authority is required for Assignor to consummate the transactions contemplated herein, other than recordation of the Assignment Documents.

5.3 Survival. The representations and warranties in this Section 5 shall survive for [____] years following the Effective Date.

6. COVENANTS AND RESTRICTIONS

6.1 Delivery of Materials. Assignor shall promptly deliver to Assignee all tangible and electronic materials comprising the Assigned IP, including source files, drawings, specifications, and documentation in Assignor's possession or control.

6.2 Confidentiality. Each Party shall keep confidential all non-public information received from the other Party in connection with this Agreement for a period of [____] years, except as required by law or court order.

6.3 Cooperation. Assignor shall reasonably cooperate with Assignee in connection with recordation, prosecution, maintenance, and enforcement of the Assigned IP, at Assignee's expense.

6.4 No License Back. Assignor retains no license or rights to the Assigned IP except as expressly set forth in Schedule B.

7. DEFAULT AND REMEDIES

7.1 Events of Default. The following constitute an "Event of Default":
a. Failure of Assignee to pay any portion of the Consideration when due and such failure continues for ten (10) days after Assignor's written notice.
b. Any material breach by Assignor of its representations, warranties, or covenants that is not cured within thirty (30) days after Assignee's written notice.
c. Either Party becomes insolvent, makes a general assignment for the benefit of creditors, or is the subject of a bankruptcy proceeding.

7.2 Remedies. Upon an Event of Default, the non-breaching Party may pursue any remedies available at law or in equity, including specific performance and injunctive relief, subject to Section 8.

7.3 Attorneys' Fees. The prevailing Party in any action to enforce this Agreement is entitled to recover reasonable attorneys' fees and costs.

8. RISK ALLOCATION

8.1 Indemnification by Assignor. Assignor shall indemnify, defend, and hold harmless Assignee and its Affiliates from and against any losses arising out of or relating to (i) any breach of Assignor's representations, warranties, or covenants, or (ii) any claim that the Assigned IP is not solely owned by Assignor as of the Effective Date.

8.2 Indemnification Procedure. The indemnified Party shall promptly notify the indemnifying Party of any claim, permit control of the defense, and reasonably cooperate at the indemnifying Party's expense.

8.3 Limitation of Liability. Except for fraud, willful misconduct, or amounts payable under Section 8.1, the maximum liability of either Party under this Agreement shall not exceed the aggregate Consideration actually paid by Assignee to Assignor.

8.4 Exclusion of Certain Damages. Neither Party shall be liable for indirect, incidental, consequential, special, punitive, or exemplary damages, even if advised of the possibility thereof.

8.5 Insurance. [OPTIONAL] Each Party shall maintain commercially reasonable insurance in amounts sufficient to cover its obligations hereunder.

9. DISPUTE RESOLUTION

9.1 Governing Law. This Agreement and any dispute arising hereunder shall be governed by and construed in accordance with the laws of Hawaii, without regard to its conflict-of-law principles.

9.2 Forum Selection. The state and federal courts located in [____________________], Hawaii shall have exclusive jurisdiction over any suit or proceeding arising out of or relating to this Agreement.

9.3 Arbitration (Optional). If the Parties elect arbitration in Schedule E, any dispute not resolved by negotiation within thirty (30) days shall be finally resolved by binding arbitration administered by [____________________] under its [____________________]. The seat shall be [____________________], Hawaii. Judgment on the award may be entered in any court of competent jurisdiction.

9.4 Jury Trial Waiver. TO THE FULLEST EXTENT PERMITTED BY LAW, EACH PARTY WAIVES ANY RIGHT TO TRIAL BY JURY IN ANY ACTION ARISING OUT OF OR RELATING TO THIS AGREEMENT.

10. EMPLOYEE INVENTION ASSIGNMENT (IF APPLICABLE)

10.1 No Statutory Carve-Out. As of the last_updated date of this template, Hawaii has not adopted a statute restricting the assignment of inventions developed by an employee on the employee's own time. Where Assignor is an individual employee, the scope of assignable inventions is governed by this Agreement and applicable common law.

10.2 Present Assignment of Inventions. Where Assignor is an individual, Assignor hereby presently assigns to Assignee all right, title, and interest in and to all Inventions conceived, developed, or reduced to practice within the scope of Section 3.7 (Future Inventions), to the fullest extent permitted by law.

11. GENERAL PROVISIONS

11.1 Amendment and Waiver. No amendment or waiver of any provision of this Agreement shall be effective unless it is in writing and signed by both Parties.

11.2 Assignment. Neither Party may assign or delegate this Agreement without the prior written consent of the other Party, except that Assignee may assign to an Affiliate or successor in interest to substantially all of its business or assets.

11.3 Severability. If any provision is held invalid or unenforceable, the remaining provisions remain in full force and the invalid provision shall be reformed to the minimum extent necessary to make it enforceable.

11.4 Entire Agreement. This Agreement, together with its Schedules and Assignment Documents, constitutes the entire agreement between the Parties and supersedes all prior or contemporaneous understandings.

11.5 Counterparts; Electronic Signatures. This Agreement may be executed in counterparts, each of which is deemed an original. Electronic signatures are binding and effective.

11.6 Notices. All notices shall be in writing and delivered by personal delivery, nationally recognized overnight courier, or certified mail to the addresses set forth above, or to any updated address provided in writing.

12. EXECUTION BLOCK

IN WITNESS WHEREOF, the Parties have executed this Agreement as of the Effective Date.

ACKNOWLEDGMENT (NOTARY)

State of Hawaii )
County of [____________________] )

On this [____] day of [____________], [____], before me, the undersigned notary public, personally appeared [____________________], proved to me through satisfactory evidence of identification to be the person whose name is signed on the preceding document, and acknowledged that he or she signed it voluntarily for its stated purpose.

Notary Public: [____________________________]
My commission expires: [__/__/____]

SCHEDULE A

Assigned IP (Patents, Trademarks, Copyrights, Domain Names, Trade Secrets)

SCHEDULE B

Reserved Rights (if any)

SCHEDULE C

Holdbacks, Offsets, and Escrow Arrangements (if any)

SCHEDULE D

Maintenance Fees and Annuities (if any)

SCHEDULE E

Arbitration Election and Terms (if selected)

SOURCES AND REFERENCES

• 35 U.S.C. Section 261 (assignment of patents): https://www.law.cornell.edu/uscode/text/35/261
• 17 U.S.C. Section 101 (definitions, including work made for hire): https://www.law.cornell.edu/uscode/text/17/101
• 17 U.S.C. Section 201 (ownership of copyright): https://www.law.cornell.edu/uscode/text/17/201
• 17 U.S.C. Section 204 (execution of transfers of copyright ownership): https://www.law.cornell.edu/uscode/text/17/204
• 15 U.S.C. Section 1060 (assignment of trademarks with goodwill): https://www.law.cornell.edu/uscode/text/15/1060
• 18 U.S.C. Section 1836 (Defend Trade Secrets Act): https://www.law.cornell.edu/uscode/text/18/1836
• the Hawaii Uniform Trade Secrets Act, Haw. Rev. Stat. Section 482B-1 et seq.
• Note: Hawaii has not enacted a statute limiting employer assignment of employee inventions (compare Minn. Stat. Section 181.78 and K.S.A. Section 44-130).