Florida IP License Agreement (Intellectual Property Practice)

FLORIDA IP LICENSE AGREEMENT

For Intellectual Property Practitioners

Governed by FUTSA (§ 688.001 et seq.), Chapter 495, and Florida Common Law

FLORIDA IP PRACTITIONER NOTES

Distinct from Contracts & Agreements Version. This template is organized for IP practitioners and emphasizes patent, copyright, and trade secret licensing provisions with deeper treatment of Florida-specific IP enforcement mechanisms. The companion template in the Contracts & Agreements category provides a broader commercial-contract structure.

FUTSA as Central Framework. Where licensed IP includes trade secrets (source code, formulations, processes, customer data), FUTSA governs misappropriation claims and preempts overlapping common-law theories (§ 688.008). Practitioners should classify each component of Licensed IP to determine whether FUTSA or other IP statutes apply.

Patent Licensing in Florida. Florida does not have a state patent statute; patent licensing is governed exclusively by federal law (35 U.S.C.). However, contract claims arising from patent license agreements are governed by Florida contract law when Florida law is chosen as the governing law. The five-year written-contract SOL (§ 95.11(2)(b)) applies to breach-of-license claims.

Copyright Licensing. Copyright ownership and infringement are federal (17 U.S.C.), but contract claims for unpaid royalties or scope-of-license disputes are state-law claims governed by this Agreement.

Florida Trademark Licensing. State trademark rights under Chapter 495 coexist with federal Lanham Act rights. Naked licensing (failure to enforce quality standards) risks abandonment of the mark under both Florida and federal law.

Florida CHOICE Act (2025). The Contracts Honoring Opportunity, Investment, Confidentiality, and Economic Growth Act (§§ 541.41–541.45, eff. July 1, 2025) strengthens employer-side non-compete enforcement. However, § 542.335 remains the primary restrictive covenant statute and is undisturbed by the CHOICE Act.

TABLE OF CONTENTS

1. Parties and Effective Date
2. Recitals
3. Definitions
4. Classification of Licensed IP Components
5. License Grant
6. IP-Specific Obligations by Category
7. Trade Secret Protocol (FUTSA Compliance)
8. Royalties and Payment (Florida Usury)
9. Quality Control (Trademark Components)
10. Florida Digital Bill of Rights (Data-Related IP)
11. Representations, Warranties, and IP Ownership
12. Restrictive Covenants (§ 542.335)
13. IP Enforcement and Litigation Cooperation
14. Indemnification
15. Remedies and Damages (Florida-Specific)
16. Limitation of Liability
17. Term and Termination
18. Florida Force Majeure
19. Dispute Resolution (Florida Courts)
20. General Provisions
21. Execution
22. Exhibit A — Licensed IP Schedule
23. Exhibit B — Royalty and Payment Schedule
24. Exhibit C — Trade Secret Identification Protocol

1. PARTIES AND EFFECTIVE DATE

This Florida IP License Agreement ("Agreement") is effective as of [__/__/____] ("Effective Date") between:

Licensor: [________________________________], a [________________________________] organized under the laws of [________________________________], with offices at [________________________________] ("Licensor"); and

Licensee: [________________________________], a [________________________________] organized under the laws of [________________________________], with offices at [________________________________] ("Licensee").

2. RECITALS

A. Licensor owns or controls a portfolio of intellectual property — including patents, copyrights, trademarks, trade secrets, and know-how — described in Exhibit A.

B. Licensee seeks a license to exploit specified components of such IP within the Field of Use and Territory.

C. The Parties intend Florida law to govern this Agreement, with FUTSA (§ 688.001 et seq.) controlling trade secret matters, Chapter 495 controlling Florida trademark matters, and federal law controlling patent and copyright matters where applicable.

3. DEFINITIONS

"Confidential Information" means non-public information disclosed by either Party, including Trade Secrets, that is marked confidential or reasonably understood to be confidential.

"Effective Date" means [__/__/____].

"FDUTPA" means § 501.201 et seq., Florida Statutes.

"Field of Use" means [________________________________].

"FUTSA" means the Florida Uniform Trade Secrets Act, § 688.001 et seq.

"Improvement" means any enhancement, modification, derivative work, or invention based on the Licensed IP.

"Licensed IP" means the IP described in Exhibit A, classified by category (patent, copyright, trademark, trade secret, know-how).

"Misappropriation" has the meaning in § 688.002(2), including acquisition by improper means and unauthorized use or disclosure.

"Net Sales" means gross revenue from Products, less [________________________________] (specify deductions; exclude Florida sales tax collected under Ch. 212).

"Products" means goods or services incorporating the Licensed IP.

"Territory" means [________________________________].

"Trade Secret" means information meeting the definition in § 688.002(4): (a) derives independent economic value from not being generally known or readily ascertainable by proper means, and (b) is the subject of reasonable efforts to maintain secrecy.

4. CLASSIFICATION OF LICENSED IP COMPONENTS

The Licensed IP on Exhibit A is classified into the following categories, each governed by different legal frameworks:

Practitioner Note: Each IP component should be separately identified in Exhibit A with its governing legal framework. This classification determines available remedies, applicable statutes of limitations, and registration/maintenance obligations.

5. LICENSE GRANT

5.1 Scope. Subject to this Agreement, Licensor grants Licensee a [____] (exclusive / non-exclusive / sole), non-transferable license to exploit the Licensed IP within the Field of Use and Territory during the Term, including the right to [________________________________] (specify: make, use, sell, offer for sale, import, reproduce, display, perform, distribute).

5.2 Reservation. Licensor retains all rights not expressly granted. For exclusive licenses, Licensor retains the right to exploit Licensed IP outside the Field of Use and Territory.

5.3 Sublicensing. Licensee [____] (may / may not) sublicense with Licensor's prior written consent. Each sublicense must contain protections at least as protective as this Agreement and must comply with FUTSA requirements for maintaining trade secret status.

5.4 Government Rights. This license does not diminish any rights reserved by the U.S. government under Bayh-Dole (35 U.S.C. §§ 200–212) or march-in rights, if applicable.

6. IP-SPECIFIC OBLIGATIONS BY CATEGORY

6.1 Patent Components.

(a) Licensee shall mark Products with applicable patent numbers in accordance with 35 U.S.C. § 287.
(b) Licensor is responsible for patent prosecution and maintenance at Licensor's expense.
(c) Licensee shall promptly notify Licensor of any known or suspected infringement.

6.2 Copyright Components.

(a) Licensee shall affix copyright notices per 17 U.S.C. § 401.
(b) Licensee shall not remove, alter, or obscure copyright management information (17 U.S.C. § 1202).
(c) Digital copies are subject to the limitations of the Digital Millennium Copyright Act (17 U.S.C. § 1201).

6.3 Trademark Components (Florida and Federal).

(a) Licensee shall comply with Licensor's brand guidelines and quality standards (see Section 9).
(b) For marks registered under Chapter 495, Licensee shall provide specimens of use upon request for renewal (§ 495.061).
(c) Licensee shall use TM/SM for state-only registrations and ® only for federally registered marks.
(d) Licensee shall not engage in conduct constituting dilution under § 495.151.
(e) Licensee shall not file any trademark application for the Licensed Mark(s) or confusingly similar marks in any jurisdiction.

6.4 Trade Secret Components. (See Section 7 for full FUTSA protocol.)

6.5 Know-How Components.

(a) Licensee shall use know-how only within the licensed scope.
(b) Licensee acknowledges that know-how may qualify as a Trade Secret under FUTSA and shall treat it accordingly unless the Parties agree otherwise.

7. TRADE SECRET PROTOCOL (FUTSA COMPLIANCE)

7.1 Identification. Exhibit C contains the Trade Secret Identification Protocol, which describes each trade secret component with sufficient detail to establish the "subject of reasonable efforts" element under § 688.002(4)(b), without disclosing the secret itself.

7.2 Access Controls. Licensee shall:

(a) limit access to Trade Secrets to authorized personnel with a documented need to know;
(b) require all such personnel to execute written confidentiality agreements;
(c) maintain electronic access logs for Trade Secret materials;
(d) implement physical security (locked storage, restricted areas) for tangible embodiments; and
(e) use encryption for Trade Secret data in transit and at rest.

7.3 Return/Destruction. Upon termination, Licensee shall return or destroy all Trade Secret materials within [____] days and certify destruction in writing, specifying the method of destruction.

7.4 FUTSA Remedies Available to Licensor.

(a) Injunctive Relief (§ 688.003): Temporary, preliminary, or permanent injunction to prevent actual or threatened misappropriation. The court may condition an injunction on payment of a reasonable royalty for no longer than the period the secret could have been maintained.

(b) Compensatory Damages (§ 688.004(1)): Actual loss plus any unjust enrichment not captured by the actual-loss calculation. Alternatively, the court may impose a reasonable royalty.

(c) Exemplary Damages (§ 688.004(2)): Up to twice the compensatory damages if misappropriation was willful and malicious.

(d) Attorney Fees (§ 688.005): Available to the prevailing Party if: (i) willful and malicious misappropriation is proven; or (ii) a misappropriation claim is made in bad faith.

(e) Protective Orders (§ 688.006): Court may order preservation of secrecy during litigation.

7.5 Statute of Limitations. Three (3) years from discovery or when misappropriation should have been discovered (§ 688.007). Continuing misappropriation constitutes a single claim; the SOL begins when the misappropriation is or should have been discovered.

7.6 Preemption. FUTSA preempts conflicting common-law and statutory trade secret claims (§ 688.008). Contract claims, FDUTPA claims, and criminal trade secret claims (18 U.S.C. § 1836, Defend Trade Secrets Act) are not preempted.

8. ROYALTIES AND PAYMENT (FLORIDA USURY)

8.1 Upfront Fee. $[________________________________], non-refundable, due within [____] days of the Effective Date.

8.2 Running Royalty. [____]% of Net Sales, payable quarterly within [____] days after each calendar quarter, accompanied by a certified Net Sales report.

8.3 Milestone Payments. Per the schedule on Exhibit B.

8.4 Florida Sales Tax. Licensee is responsible for applicable Florida sales and use taxes under Chapter 212. Canned software on tangible media is taxable per DOR Rule 12A-1.032; customized software is a non-taxable service.

8.5 Late Payment Interest — Usury Compliance (§ 687.02).

Overdue amounts bear interest at [____]% per month, but the annualized rate shall not exceed:

• 18% for obligations under $500,000; or
• 25% for obligations of $500,000 or more.

Rates above 25% per annum are criminal usury under § 687.071 (misdemeanor up to 45%; felony above 45%).

8.6 Audit Rights. Licensor may audit Licensee's relevant records up to [____] times per year on [____] business days' notice. Underpayment exceeding 5% triggers reimbursement of audit costs.

9. QUALITY CONTROL (TRADEMARK COMPONENTS)

9.1 Quality Standards. Licensee shall maintain quality at or above Licensor's published standards for all Products bearing Licensed Mark(s). Failure to maintain quality constitutes naked licensing and may forfeit trademark rights.

9.2 Pre-Approval. Licensee shall submit samples of Products, packaging, advertising, and promotional materials to Licensor for written approval before first commercial use.

9.3 Inspection. Licensor may inspect Licensee's facilities and Products on [____] business days' notice.

9.4 FDUTPA Compliance. Use of Licensed Mark(s) shall not constitute a deceptive or unfair trade practice under § 501.204, including false origin claims or misleading quality representations.

10. FLORIDA DIGITAL BILL OF RIGHTS (DATA-RELATED IP)

10.1 Applicability. If the Licensed IP involves processing of personal data of Florida consumers, and either Party meets the FDBR applicability thresholds (§ 501.703):

☐ FDBR applies
☐ FDBR does not apply (this section is precautionary only)

10.2 Controller/Processor Allocation. [________________________________] (Licensor/Licensee) acts as Controller; [________________________________] acts as Processor. The Processor shall process personal data only per Controller's instructions and enter into a data processing agreement per § 501.712.

10.3 Consumer Rights. The Controller shall honor consumer requests for access, deletion, correction, and portability within 45 days (§ 501.711(3)).

10.4 Data Protection Assessments. The Controller shall conduct assessments for high-risk processing activities per § 501.714.

11. REPRESENTATIONS, WARRANTIES, AND IP OWNERSHIP

11.1 Licensor Ownership. Licensor represents it is the sole owner of (or has sufficient rights to license) each component of the Licensed IP listed in Exhibit A, including:

(a) all patents are valid, subsisting, and not subject to terminal disclaimer benefiting third parties;
(b) all Florida trademark registrations (Ch. 495) are current and in good standing;
(c) all copyrights are validly owned or exclusively licensed; and
(d) all trade secrets meet the FUTSA definition (§ 688.002(4)).

11.2 Non-Infringement. To Licensor's knowledge, the Licensed IP does not infringe third-party rights within the Territory.

11.3 Licensee Capacity. Licensee has the expertise, resources, and Florida business registrations necessary to exercise the license.

11.4 Disclaimer. EXCEPT AS EXPRESSLY STATED, LICENSOR DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING MERCHANTABILITY, FITNESS FOR PARTICULAR PURPOSE, AND NON-INFRINGEMENT, TO THE EXTENT PERMITTED BY FLORIDA LAW.

12. RESTRICTIVE COVENANTS (§ 542.335)

12.1 Non-Compete. During the Term and for [____] years after termination ("Restricted Period"), Licensee shall not [________________________________] within [________________________________] (geographic scope).

12.2 Legitimate Business Interests (§ 542.335(1)(b)). The restriction is supported by:

(a) Trade Secrets (§ 688.002(4));
(b) valuable confidential business information;
(c) substantial relationships with prospective or existing customers;
(d) customer goodwill associated with the Licensed IP; and
(e) extraordinary or specialized training.

12.3 Presumptive Periods (§ 542.335(1)(d)).

☐ Sale-of-business context: ≤ 3 years presumptively reasonable; > 7 years presumptively unreasonable
☐ Employment/contractor: ≤ 6 months presumptively reasonable; > 2 years presumptively unreasonable
☐ Trade secret protection: ≤ 5 years presumptively reasonable; > 10 years presumptively unreasonable

12.4 Judicial Modification. Under § 542.335(1)(c), a Florida court shall modify (not void) an overbroad covenant.

12.5 Non-Solicitation. During the Restricted Period, Licensee shall not solicit Licensor's employees, contractors, customers, or other licensees for competitive purposes.

13. IP ENFORCEMENT AND LITIGATION COOPERATION

13.1 Infringement Notice. Each Party shall promptly notify the other of known or suspected infringement in the Territory.

13.2 Enforcement Rights. [____] (Licensor/Licensee) has first right to enforce. The non-enforcing Party shall cooperate, including joining as a necessary party for standing purposes, at the enforcing Party's expense.

13.3 Recoveries. Litigation costs reimbursed first; remainder split [________________________________].

13.4 Dilution Actions. Licensor exclusively controls Florida dilution claims under § 495.151 and federal dilution claims under 15 U.S.C. § 1125(c).

13.5 FUTSA Litigation. For trade secret misappropriation claims, the enforcing Party shall seek protective orders under § 688.006 to preserve secrecy of Licensed IP during proceedings.

14. INDEMNIFICATION

14.1 Licensor IP Indemnity. Licensor indemnifies Licensee against third-party claims that the Licensed IP (as provided, used per this Agreement) infringes third-party IP rights, except claims arising from: (a) unauthorized modifications; (b) unauthorized combinations; or (c) use outside the licensed scope.

14.2 Licensee Indemnity. Licensee indemnifies Licensor against claims arising from: (a) Licensee's breach; (b) Products liability; (c) Licensee's FDUTPA violations; and (d) unauthorized use of the Licensed IP.

14.3 Procedure. Prompt notice; control of defense by indemnifying Party; reasonable cooperation at indemnifying Party's expense. Late notice relieves the indemnifying Party only to the extent prejudiced.

15. REMEDIES AND DAMAGES (FLORIDA-SPECIFIC)

15.1 Contractual Remedies. Suspension of performance, acceleration of amounts due, termination, and all remedies at law or in equity.

15.2 FUTSA Remedies. As detailed in Section 7.4: injunction, compensatory damages, exemplary damages (2x for willful misconduct), attorney fees.

15.3 FDUTPA Remedies. Actual damages and prevailing-party attorney fees under §§ 501.211 and 501.2105. No punitive or consequential damages under FDUTPA.

15.4 Trademark Remedies. Injunctive relief for infringement or dilution (§ 495.151); damages including defendant's profits, costs, and attorney fees.

15.5 Attorney Fees. Prevailing Party recovers reasonable fees under § 57.105. Under § 57.105(7), one-sided provisions are reciprocal. FUTSA § 688.005 provides independent fee-shifting for willful misappropriation.

15.6 Prejudgment Interest. Recoverable from the date the cause of action accrued under Florida common law.

15.7 No Cap for IP Breach. No aggregate liability cap for IP infringement, trade secret misappropriation, or breach of restrictive covenants.

16. LIMITATION OF LIABILITY

16.1 Excluded Damages. EXCEPT FOR IP INFRINGEMENT, TRADE SECRET MISAPPROPRIATION, BREACH OF CONFIDENTIALITY, WILLFUL MISCONDUCT, AND INDEMNIFICATION OBLIGATIONS, NEITHER PARTY IS LIABLE FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES.

16.2 General Cap. For all claims not excluded from this cap, each Party's total liability shall not exceed the amounts paid or payable by Licensee in the twelve (12) months preceding the claim.

17. TERM AND TERMINATION

17.1 Term. Commences on the Effective Date and continues for [________________________________] unless earlier terminated.

17.2 Termination for Cause. Material breach not cured within [____] days of written notice.

17.3 Immediate Termination. Upon insolvency, bankruptcy, or assignment for benefit of creditors.

17.4 Post-Termination.

(a) All licenses terminate; Licensee ceases use of Licensed IP;
(b) Return/destroy all materials within [____] days with written certification;
(c) Final royalty report and payment within [____] days;
(d) Restrictive covenants (Section 12) remain in effect;
(e) Trade secret obligations (Section 7) survive indefinitely;
(f) Sections 3, 7, 8.4–8.6, 10, 11.4, 12, 13, 14, 15, 16, 19, and 20 survive.

18. FLORIDA FORCE MAJEURE

18.1 Covered Events. Performance excused (except payments) during events beyond reasonable control: hurricanes and tropical storms, government emergencies under Ch. 252, flooding, sinkholes, tornadoes, terrorism, pandemics, utility failures, and mandatory evacuation orders.

18.2 Notice and Mitigation. Notice within [____] business days; commercially reasonable mitigation efforts.

18.3 Extended Force Majeure. If performance prevented for [____]+ consecutive days, either Party may terminate without liability beyond accrued payments.

19. DISPUTE RESOLUTION (FLORIDA COURTS)

19.1 Governing Law. Florida law governs. FUTSA controls trade secret claims. Federal law controls patent and copyright infringement claims, but contractual claims are governed by Florida law.

19.2 Venue. Exclusive jurisdiction: Florida Circuit Court in [________________________________] County and the U.S. District Court for the [________________________________] District of Florida (§ 47.011 et seq.).

19.3 Jury Waiver. TO THE FULLEST EXTENT PERMITTED BY FLORIDA LAW, EACH PARTY WAIVES TRIAL BY JURY.

19.4 Statutes of Limitations. Written contract: 5 years (§ 95.11(2)(b)). Trade secret: 3 years (§ 688.007). Patent: 6 years (35 U.S.C. § 286). Copyright: 3 years (17 U.S.C. § 507(b)).

19.5 Attorney Fees. Prevailing Party under § 57.105; FUTSA § 688.005 for willful misappropriation.

19.6 Optional Arbitration.

☐ Binding arbitration in [________________________________], FL, administered by [________________________________]
☐ No arbitration — courts in Section 19.2

20. GENERAL PROVISIONS

20.1 Entire Agreement. This Agreement and Exhibits constitute the complete agreement.

20.2 Amendment. Written, signed by both Parties.

20.3 Assignment. No assignment without consent, except to an Affiliate or successor in merger/acquisition with assumption of all obligations.

20.4 Severability. Invalid provisions reformed; § 542.335(1)(c) requires modification of overbroad covenants.

20.5 Notices. Written: personal delivery, overnight courier, or certified mail.

20.6 Electronic Signatures. Binding under § 668.50 (Florida UETA).

20.7 Independent Contractors. No partnership or agency.

20.8 Construction. "Including" = "including without limitation." No presumption against drafter.

21. EXECUTION

IN WITNESS WHEREOF:

LICENSOR:

Signature: [________________________________]
Printed Name: [________________________________]
Title: [________________________________]
Date: [__/__/____]

LICENSEE:

Signature: [________________________________]
Printed Name: [________________________________]
Title: [________________________________]
Date: [__/__/____]

EXHIBIT A — LICENSED IP SCHEDULE

EXHIBIT B — ROYALTY AND PAYMENT SCHEDULE

EXHIBIT C — TRADE SECRET IDENTIFICATION PROTOCOL

Purpose: This protocol identifies trade secret components of the Licensed IP with sufficient detail to demonstrate "reasonable efforts to maintain secrecy" under § 688.002(4)(b) without disclosing the secrets themselves.

Security Measures Required:

☐ Electronic access controls (password, multi-factor authentication)
☐ Physical access controls (locked facility, badge access)
☐ Written confidentiality agreements for all accessing personnel
☐ Encryption for data in transit and at rest
☐ Periodic access audits (at least annually)
☐ Secure destruction protocol upon termination

Sources and References

• Florida Uniform Trade Secrets Act — § 688.001 et seq.
• Understanding FUTSA — Allen Dyer Overview
• Florida Trademark Registration — Ch. 495
• Florida Dilution — § 495.151
• FDUTPA — § 501.201 et seq.
• Florida Digital Bill of Rights — § 501.701 et seq.
• Florida Restrictive Covenants — § 542.335
• Florida CHOICE Act (2025) — §§ 541.41–541.45
• Florida Usury — § 687.02
• Florida Statute of Limitations — § 95.11
• Florida Attorney Fees — § 57.105