Non-Exclusive Intellectual Property License Agreement - Florida

NON-EXCLUSIVE INTELLECTUAL PROPERTY LICENSE AGREEMENT

STATE OF FLORIDA

This Non-Exclusive Intellectual Property License Agreement ("Agreement") is entered into as of [__/__/____] ("Effective Date") by and between:

LICENSOR:
Name: [________________________________]
Address: [________________________________]
City: [________________________________], Florida [____]
Entity Type: ☐ Corporation ☐ LLC ☐ Partnership ☐ Sole Proprietor ☐ Other: [____]
Florida Document Number: [________________________________]

LICENSEE:
Name: [________________________________]
Address: [________________________________]
City: [________________________________], State: [____] ZIP: [____]
Entity Type: ☐ Corporation ☐ LLC ☐ Partnership ☐ Sole Proprietor ☐ Other: [____]

Licensor and Licensee are each a "Party" and collectively the "Parties."

TABLE OF CONTENTS

1. Definitions
2. Grant of Non-Exclusive License
3. Field of Use and Territory
4. Restrictions on Use
5. Compensation and Royalties
6. Accounting, Reports, and Audit Rights
7. Intellectual Property Ownership
8. Improvements and Derivative Works
9. Quality Control
10. Representations and Warranties
11. Indemnification
12. Limitation of Liability
13. Confidentiality and Trade Secret Protection
14. Term and Renewal
15. Termination
16. Effects of Termination
17. Infringement by Third Parties
18. Insurance
19. Dispute Resolution and Governing Law
20. Florida-Specific Provisions
21. Miscellaneous Provisions
22. Schedules

ARTICLE 1: DEFINITIONS

1.1 "Confidential Information" means non-public information disclosed by either Party, including trade secrets as defined under the Florida Uniform Trade Secrets Act (Fla. Stat. § 688.002(4)) and federal law (18 U.S.C. § 1839(3)).

1.2 "Derivative Works" means any work based upon the Licensed IP under 17 U.S.C. § 101.

1.3 "Field of Use" means the application, industry, or market in Schedule A, Section 2.

1.4 "Licensed Copyrights" means copyrighted works in Schedule A, Section 1(b), under Title 17 of the United States Code.

1.5 "Licensed IP" means Licensed Patents, Licensed Copyrights, Licensed Marks, and Licensed Trade Secrets in Schedule A.

1.6 "Licensed Marks" means trademarks in Schedule A, Section 1(c), under 15 U.S.C. §§ 1051-1141, the Florida Trademark Registration Act (Fla. Stat. Ch. 495), and Florida common law.

1.7 "Licensed Patents" means patents and applications in Schedule A, Section 1(a), under 35 U.S.C. §§ 1-390.

1.8 "Licensed Trade Secrets" means trade secrets in Schedule A, Section 1(d), protected under Fla. Stat. §§ 688.001-688.009 and 18 U.S.C. § 1836.

1.9 "Net Revenue" means gross revenue from exploitation of Licensed IP, less: (a) returns; (b) discounts; (c) Florida sales tax and other applicable taxes; and (d) transportation charges billed separately.

1.10 "Territory" means the geographic area in Schedule A, Section 3.

ARTICLE 2: GRANT OF NON-EXCLUSIVE LICENSE

2.1 License Grant. Licensor grants Licensee a non-exclusive, non-transferable license to use, reproduce, display, perform, make, have made, sell, offer to sell, and import the Licensed IP within the Field of Use and Territory during the Term.

2.2 Non-Exclusive Nature. Licensor retains rights to: (a) use Licensed IP; (b) grant other licenses; and (c) assign or transfer Licensed IP.

2.3 Sublicensing:

☐ No sublicensing rights.

☐ Sublicensing permitted subject to: written agreements consistent with this Agreement; notice to Licensor within [____] days; Licensee responsible for sublicensees; automatic termination on Agreement termination.

2.4 Reservation. All rights not expressly granted are reserved.

ARTICLE 3: FIELD OF USE AND TERRITORY

3.1 Field of Use. Use solely within Field of Use in Schedule A.

3.2 Territory. Exploit solely within Territory in Schedule A.

3.3 No Exclusivity. Licensor may license others without limitation.

ARTICLE 4: RESTRICTIONS ON USE

4.1 Licensee shall NOT:

(a) Use Licensed IP outside Field of Use or Territory;

(b) Reverse engineer except as permitted by applicable law;

(c) Remove proprietary notices;

(d) Use Licensed IP unlawfully or to infringe third-party rights;

(e) Assign or transfer without authorization;

(f) Tarnish or dilute Licensed Marks (15 U.S.C. § 1125(c));

(g) Export in violation of EAR or OFAC sanctions;

(h) Engage in misappropriation under Fla. Stat. § 688.002(2) or 18 U.S.C. § 1836.

4.2 Florida Unfair Trade Practices. Licensee shall not use Licensed IP in a manner constituting a deceptive or unfair trade practice under the Florida Deceptive and Unfair Trade Practices Act (Fla. Stat. §§ 501.201-501.213).

4.3 Florida Patent Troll Prevention. Licensee shall not use Licensed Patents in a manner that constitutes a bad-faith assertion of patent infringement under Fla. Stat. § 501.993 (Patent Troll Prevention Act).

4.4 Compliance. Licensee shall comply with all applicable federal, Florida, and local laws.

ARTICLE 5: COMPENSATION AND ROYALTIES

5.1 Compensation (select applicable):

☐ Upfront Fee: $[________________________________] due within [____] days.

☐ Running Royalty: [____]% of Net Revenue, quarterly within [____] days.

☐ Minimum Annual Royalty: $[________________________________] per year.

☐ Per-Unit Royalty: $[____] per unit.

☐ Combination: Per Schedule B.

5.2 Payment Terms. U.S. Dollars by wire transfer. Late payments bear interest at the lesser of [____]% per month or the maximum permitted under Florida law.

5.3 Taxes. All amounts exclusive of taxes. Licensee responsible for Florida sales and use tax (Fla. Stat. Ch. 212) and applicable local discretionary surtaxes.

5.4 No Set-Off. No set-off except as required by tax law.

ARTICLE 6: ACCOUNTING, REPORTS, AND AUDIT RIGHTS

6.1 Reports. Quarterly within [____] days: quantity, gross and Net Revenue, royalty calculation, deductions.

6.2 Records. GAAP-compliant for [____] years.

6.3 Audit. Up to [____] time(s) per year on [____] days' notice by independent CPA.

6.4 Costs. Licensor bears costs unless underpayment exceeds [____]%, then Licensee bears. Underpayments paid within [____] days with interest.

ARTICLE 7: INTELLECTUAL PROPERTY OWNERSHIP

7.1 Licensor Ownership. Licensor retains sole ownership under federal law, Fla. Stat. §§ 688.001-688.009, and Fla. Stat. Ch. 495.

7.2 Patent Validity. Nothing in this Agreement prevents Licensee from challenging the validity of a Licensed Patent.

7.3 Goodwill. Goodwill from Licensed Marks inures to Licensor.

7.4 Prosecution. Licensor controls prosecution and maintenance.

ARTICLE 8: IMPROVEMENTS AND DERIVATIVE WORKS

8.1 Ownership (select one):

☐ Option A: Licensee assigns all Improvements to Licensor.

☐ Option B: Licensee owns with perpetual, royalty-free, non-exclusive license-back to Licensor.

☐ Option C: Jointly owned.

8.2 Disclosure. Prompt disclosure of Improvements during Term.

8.3 Cooperation. Execute documents to perfect rights.

ARTICLE 9: QUALITY CONTROL

9.1 Standards. Products/services using Licensed Marks meet Quality Standards in Schedule C.

9.2 Samples. Samples on request; premises inspection on reasonable notice.

9.3 Trademark Usage. Follow guidelines, proper notices, ownership attribution.

9.4 Cure. [____] days to cure after written notice.

ARTICLE 10: REPRESENTATIONS AND WARRANTIES

10.1 Licensor Warranties:

(a) Right and authority to grant the license;

(b) No knowledge of third-party infringement within Field/Territory;

(c) No pending or threatened challenges;

(d) No conflicting prior grants.

10.2 Licensee Warranties:

(a) Authority to enter and perform;

(b) Compliance with Florida and federal law;

(c) No deceptive trade practices under Fla. Stat. §§ 501.201-501.213.

10.3 DISCLAIMER. EXCEPT AS IN THIS ARTICLE, LICENSED IP IS "AS IS." NO OTHER WARRANTIES INCLUDING MERCHANTABILITY, FITNESS, OR NON-INFRINGEMENT.

ARTICLE 11: INDEMNIFICATION

11.1 Licensor Indemnification. Claims from: (a) infringement by Licensed IP; or (b) Licensor's breach.

11.2 Exclusions. No indemnity for: (a) Licensee modification; (b) combination with non-Licensor materials; (c) use outside scope; or (d) use after infringement notice.

11.3 Licensee Indemnification. Claims from: (a) use outside scope; (b) breach; or (c) products/services.

11.4 Procedures. Prompt notice; sole defense control; cooperation.

ARTICLE 12: LIMITATION OF LIABILITY

12.1 Consequential Damages. EXCEPT FOR BREACHES OF ARTICLES 4, 7, 11, OR 13, NEITHER PARTY LIABLE FOR INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL, OR PUNITIVE DAMAGES.

12.2 Cap. AGGREGATE LIABILITY NOT TO EXCEED THE GREATER OF: (A) FEES/ROYALTIES DURING THE [____]-MONTH PERIOD PRECEDING THE EVENT; OR (B) $[________________________________].

ARTICLE 13: CONFIDENTIALITY AND TRADE SECRET PROTECTION

13.1 Florida Uniform Trade Secrets Act (FUTSA). Protection under Fla. Stat. §§ 688.001-688.009:

(a) Injunctive relief for actual or threatened misappropriation (§ 688.003(1));

(b) Damages including actual loss caused by misappropriation and unjust enrichment; reasonable royalty damages available as an alternative (§ 688.004);

(c) A discretionary exemplary award not exceeding twice the § 688.004(1) award for willful and malicious misappropriation (§ 688.004;

(d) Reasonable attorneys' fees if awarded by the court to the prevailing party on a predicate in § 688.005;

(e) Three-year statute of limitations from discovery (§ 688.007);

(f) FUTSA does not affect contractual remedies, criminal remedies, or other civil remedies not based on trade secret misappropriation (§ 688.008).

13.2 Obligations. Maintain in strict confidence; disclose only to bound personnel; use solely for Agreement purposes.

13.3 Exclusions. Publicly available, previously known, independently developed, or received from third party without restriction.

13.4 Required Disclosures. Permitted if required by law, with prompt notice and protective order cooperation. A trade secret held by a Florida agency is confidential and exempt from public disclosure under Fla. Stat. § 119.0715(2).

13.5 DTSA. Federal protection under 18 U.S.C. § 1836. DTSA whistleblower immunity per 18 U.S.C. § 1833(b).

13.6 Reasonable Measures. Measures consistent with Fla. Stat. § 688.002(4)(b) ("efforts that are reasonable under the circumstances to maintain its secrecy").

13.7 Duration. Confidentiality survives [____] years; trade secret obligations continue while qualifying.

ARTICLE 14: TERM AND RENEWAL

14.1 Initial Term. Commences on Effective Date, continues for [____] years.

14.2 Renewal:

☐ Terminates without renewal.

☐ Renews for [____]-year terms unless [____] days' non-renewal notice.

☐ Renewable only by mutual agreement.

14.3 Patent Expiration. Patent license expires upon patent expiration; no post-expiration royalties. Brulotte v. Thys Co., 379 U.S. 29 (1964).

ARTICLE 15: TERMINATION

15.1 For Cause. Material breach uncured after [____] days; insolvency; cessation of business.

15.2 Non-Payment. [____] days' notice.

15.3 Convenience:

☐ [____] days' notice.

☐ Not applicable.

15.4 Quality Failure. Repeated failures after notice and cure.

ARTICLE 16: EFFECTS OF TERMINATION

16.1 Cessation. Immediately cease use of Licensed IP.

16.2 Return/Destruction. Within [____] days; certify in writing.

16.3 Sell-Off. [____]-day period with continued royalties.

16.4 Final Accounting. Within [____] days.

16.5 Survival. Articles 1, 7, 8, 10.3, 11, 12, 13, 16, 19, and 20 survive.

ARTICLE 17: INFRINGEMENT BY THIRD PARTIES

17.1 Notice. Prompt notice of infringement.

17.2 Enforcement. Licensor first right; Licensee may request permission if Licensor declines within [____] days.

17.3 Recoveries. First to reimburse costs; remainder [____]% Licensor / [____]% Licensee.

ARTICLE 18: INSURANCE

18.1 Licensee maintains:

(a) CGL: $[________________________________] per occurrence / $[________________________________] aggregate;

(b) Product liability: $[________________________________];

(c) Workers' compensation per Florida requirements (Fla. Stat. Ch. 440).

18.2 Licensor as additional insured; certificates upon request.

ARTICLE 19: DISPUTE RESOLUTION AND GOVERNING LAW

19.1 Governing Law. Florida law, without regard to conflict-of-laws principles.

19.2 Escalation. Senior executives negotiate for [____] days.

19.3 Resolution (select one):

☐ Litigation: Exclusive jurisdiction in state and federal courts in [________________________________] County, Florida.

☐ Arbitration: Binding arbitration by [________________________________] with [____] arbitrator(s) in [________________________________], Florida, under the Florida Arbitration Code (Fla. Stat. §§ 682.01-682.25).

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

19.5 Injunctive Relief. Either Party may seek injunctive relief from Florida courts, including for trade secret misappropriation under Fla. Stat. § 688.003.

19.6 Prevailing Party. Prevailing Party recovers reasonable attorneys' fees and costs.

ARTICLE 20: FLORIDA-SPECIFIC PROVISIONS

20.1 Restrictive Covenants. To the extent this Agreement contains restrictions that may be characterized as restrictive covenants under Florida law, the Parties acknowledge that Fla. Stat. § 542.335 governs the enforceability of such covenants. The Parties agree that the license restrictions are reasonable and necessary to protect Licensor's legitimate business interests in its Licensed IP.

20.2 Florida Deceptive and Unfair Trade Practices Act. Neither Party shall engage in any act constituting a deceptive or unfair trade practice under Fla. Stat. §§ 501.201-501.213. A person aggrieved by a violation may seek declaratory and injunctive relief under § 501.211(1); a person who suffers a loss may seek actual damages under § 501.211(2), with fees and costs governed by § 501.2105.

20.3 Document Retention. If either Party is subject to Florida public records requirements (Fla. Stat. Ch. 119), the Parties shall identify materials believed to qualify as trade secrets and cooperate in protecting records held by an agency under Fla. Stat. § 119.0715. A label alone does not establish the exemption.

ARTICLE 21: MISCELLANEOUS PROVISIONS

21.1 Entire Agreement. This Agreement and Schedules constitute the entire agreement.

21.2 Assignment. Licensee may not assign without consent. Licensor may assign freely.

21.3 Notices. Written; effective on delivery, one (1) business day after courier, three (3) business days after certified mail.

21.4 Force Majeure. Non-performance excused for events beyond reasonable control (not payment). Florida-specific events include hurricanes, tropical storms, and state-declared emergencies.

21.5 Waiver. Written waivers only.

21.6 Severability. Invalid provisions modified minimally; others remain.

21.7 Amendments. Written, signed by both Parties.

21.8 Counterparts. Counterparts permitted. Electronic signatures valid under the Florida Uniform Electronic Transaction Act (Fla. Stat. §§ 668.50).

21.9 Independent Contractors. No partnership, joint venture, or agency.

ARTICLE 22: SCHEDULES

Schedule A: Licensed IP, Field of Use, Territory

Schedule B: Compensation, Royalty Rates, Payment Terms

Schedule C: Quality Standards and Trademark Guidelines

Schedule D: Form of Royalty Report

SIGNATURES

LICENSOR:

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

LICENSEE:

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

SOURCES AND REFERENCES

• Florida Uniform Trade Secrets Act, Fla. Stat. §§ 688.001-688.009
• Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. §§ 501.201-501.213
• Florida restrictive covenants, Fla. Stat. § 542.335
• Florida Patent Troll Prevention Act, Fla. Stat. § 501.993
• Florida Trademark Registration Act, Fla. Stat. Ch. 495
• Florida sales and use tax, Fla. Stat. Ch. 212
• Florida Arbitration Code, Fla. Stat. §§ 682.01-682.25
• Florida public records trade secret exemption, Fla. Stat. § 119.0715
• Florida Uniform Electronic Transaction Act, Fla. Stat. § 668.50
• Florida interest rate limitations, Fla. Stat. § 687.02
• Title 17, United States Code (Copyrights)
• Patent Act, 35 U.S.C. §§ 1-390
• Lanham Act, 15 U.S.C. §§ 1051-1141
• Defend Trade Secrets Act, 18 U.S.C. §§ 1831-1839
• Brulotte v. Thys Co., 379 U.S. 29 (1964)
• Lear, Inc. v. Adkins, 395 U.S. 653 (1969)
• Mazzoni Farms, Inc. v. E.I. DuPont de Nemours, 761 So. 2d 306 (Fla. 2000)
• Houdaille Industries, Inc. v. Edwards, 374 So. 2d 490 (Fla. 1979)
• Dunham-Bush, Inc. v. Thermo-Air Serv., Inc., 351 So. 2d 351 (Fla. 4th DCA 1977)