INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
[for Plone Group Members]
THIS INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (ÒAgreementÓ), dated as of ____________, 2004 (the ÒEffective DateÓ), is by and between _________, a citizen of _________, with a residence at ______________ individually, and on behalf of [company], a corporation formed in accordance with the laws of [jurisdiction] (collectively, the ÒAssignorÓ) and the Plone Foundation, a corporation formed in accordance with the laws of Delaware (the ÒFoundationÓ).
WHEREAS, an open source software application called Plone (the ÒPlone SoftwareÓ) has been created to service multiple needs within the Internet and open source communities.
WHEREAS Assignor is a member of a group known as the Plone Group. The Plone Group is the core project team for an open source development community that develops the Plone Software. Contributions by the development community to the Plone Group and the Plone Software are made under certain contributor agreements. These agreements assign to the Foundation certain rights to the contributed software. It is AssignorÕs intention to assign and transfer to the Foundation all of AssignorÕs right, title, and interest in and to any software, domain names, trademarks, and other intellectual properties, including all contributions received from the development community, used and distributed as part of or in connection with the Plone Software.
WHEREAS the Foundation has been formed to foster the continued growth and evolution of the Plone Software. Contemporaneous with the execution of this Agreement, the Foundation intends to enter into similar agreements with other contributors to the Plone Software for the purpose of holding, preserving, and enforcing all intellectual property rights in the Plone Software.
NOW, THEREFORE, in consideration of the premises and covenants set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereto agree as follows:
a. For purposes of this Agreement, ÒAssignor PropertyÓ means, collectively, all Plone Materials, Marks, Domain Names, and materials and rights conveyed under the Contributor Agreements.
b. For purposes of this Agreement, ÒIntellectual Property RightsÓ means intellectual property rights, including (i) any patent, patent application (whether registered or unregistered), copyright (whether registered or unregistered), copyright application (whether registered or unregistered), trade secret, trademark (whether registered or unregistered), trademark application, trade name, service mark (whether registered or unregistered), service mark application, confidential information, know-how, process, technology, development tool, ideas, concepts, design right, database right, methodology, algorithm or invention, (ii) any right to use or exploit any of the foregoing, and (iii) any other proprietary right, whether arising under the laws of the United States or any other country.
2. Copyrights. Assignor hereby agrees to sign the copyright assignment attached hereto as Schedule A.
3. Trademarks. Assignor hereby agrees to sign the trademark assignment attached hereto as Schedule B.
4. Patents. Assignor hereby agrees to sign the patent assignment attached hereto as Schedule C.
5. Other Intellectual Property Rights. For any Intellectual Property Rights in the Assignor Property that are not assigned to the Foundation by Sections 2, 3, or 4, Assignor hereby assigns and transfers to the Foundation all right, title, and interest in and to its Intellectual Property Rights in the Assignor Property.
6. Contributor Agreements. Assignor hereby assigns to sign contributor agreements identified in Schedule D(the ÒContributor AgreementsÓ) for future contributions to the Plone Software.
7. Plone Domain Names. Assignor hereby agrees to assign and transfer to the Foundation, and by execution of the domain name transfer agreement attached hereto as Schedule E does transfer and assign, all right, title and interest in and to those domain names set forth in Schedule E(the ÒDomain NamesÓ). Without limiting the foregoing, Assignor agrees to promptly perform all actions required by the applicable domain name registrar to complete the conveyance of the Domain Names to the Foundation. Assignor agrees that it will not register or attempt to register any domain names after the Effective Date that include the word ÒPloneÓ or any variation thereof.
8. Grant Back License. The Foundation hereby grants to Assignor a non-exclusive, irrevocable, worldwide, royalty-free, sub licensable right and license to use, copy, modify, and distribute any of the Plone Materials to the extent necessary for Assignor to fulfill its obligations under any license agreements of the Plone Materials existing prior to the Effective Date.
9. Representations and Warranties. Assignor represents and warrants that: (i) the Plone Materials assigned hereunder are the AssignorÕs original work and Assignor has the power and authority to assign its Intellectual Property Rights to the Assignor Property in accordance with this Agreement; (ii) Assignor has no knowledge of any third party intellectual property infringement claims, lawsuits, or demands arising under or in connection with the Assignor Property; (iii) Assignor has the right, authority and power to enter into this Agreement; (iv) no third party consents, assignments or licenses are necessary to perform under this Agreement; and (v) Assignor has no obligations to any employer (whether by law or by contract) that could in any way prohibit Assignor from assigning the Assignor Property to the Foundation. Assignor agrees to immediately notify the Foundation in writing if any facts or circumstances arise that would make any of the representations in this Agreement inaccurate in any way.
10. Governing Laws. To the full extent permitted by law, this Agreement shall be governed by and construed in accordance with the laws of the State of Texas, United States of America, excluding its conflicts of laws principles. To the full extent permitted by law and consistent with valid entry into a binding agreement, the controlling language of this Agreement is English and any translation Assignor has received has been provided solely for AssignorÕs convenience. To the full extent permitted by law, the exclusive jurisdiction for any action relating to this Agreement shall be a federal or state court in Harris County, Texas, and the parties consent to such jurisdiction and waive and agree not to plead or claim that any such action or proceeding has been brought in an inconvenient forum.
11. Severability. Any provision of this Agreement that is prohibited or unenforceable in any jurisdiction will, as to such jurisdiction, be ineffective to the extent of such prohibition or unenforceability without invalidating the remaining provisions of this Agreement, and any such prohibition or unenforceability in any jurisdiction will not invalidate or render unenforceable such provision in any other jurisdiction. To the extent permitted by law, the parties waive any provision of law that renders any such provision prohibited or unenforceable in any respect.
12. Cooperation Following the Execution. Following the execution of this Agreement, each party shall deliver to the other such further information and documents and shall execute and deliver to the other such further instruments and agreements as the other party shall reasonably request to consummate or confirm the transactions provided for in this Agreement, to accomplish the purpose of this Agreement or to assure to the other party the benefits of this Agreement.
13. Entire Agreement: This Agreement constitutes the entire Agreement between Assignor and the Foundation with respect to the subject matter hereof, and supersedes all oral or written communications or other agreements between the parties with respect to such subject matter hereof. Without limitation of the foregoing, Assignor does hereby terminate any requirement that the Foundation distribute the works that were subject of previous conveyance and contribution to the Plone Group via a license approved by the Open Source Initiative. No changes, supplements, addenda, or amendments to this Agreement shall be effective or enforceable unless agreed to by the parties in writing.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.
ASSIGNOR THE PLONE FOUNDATION
(Signature) (Date) (Signature) (Date)
(Printed Name) (Printed Name) (Title)