[HP draft 12.12.13]

Intellectual Property Assignment and License Agreement

This is an Intellectual Property Assignment and License Agreement (the "Agreement") executed and entered into as of ______, 20__ (the "Effective Date") by and between The New America School, a Colorado nonprofit corporation exempt from taxation under Internal Revenue Code (“Code”) § 501(c)(3) ("NAS"), and The New America Schools Network, a Colorado nonprofit corporation exempt from taxation under § 501(c)(3) of the Code ("Network"). NAS and Network are collectively referred to herein as the "Parties".

RECITALS

A. NAS is a Colorado public charter school which was incorporated as the American School in 2002, and which subsequently changed its name to “The New America School” in 2004;

B. NAS’s mission is to empower new immigrants, English language learners, and academically underserved students with the educational tools and support they need to maximize their potential, succeed and live the American dream (“Mission”);

C. Since it opened its doors as a public charter school to Colorado students in 2004, NAS has opened additional schools in Colorado, and has worked to create affiliated New America public charter schools in New Mexico, Nevada and Arizona;

D. In order to facilitate the growth of the New America School model of school and its unique educational program and Mission (“Model”), NAS formed the Network;

E. The educational and charitable mission of the Network is to strategically grow and replicate the Model into an influential and excellent network of public charter schools in the Southwestern United States that empower immigrants, English language learners and academically underserved students with the educational tools they need to succeed;

F. NAS owns all of the right, title and interest to certain proprietary information, including the Copyrights, Marks, and Processes (as defined herein) (collectively, the “NAS Intellectual Property”); and

G. NAS wishes to assign all of the NAS Intellectual Property to the Network, and Network wishes to accept such assignment of the NAS Intellectual Property, all on the terms and conditions set forth herein.

For good and valuable consideration, the Parties therefore agree as follows:

  1. Assignment of NAS Intellectual Property from NAS to Network.
  1. Marks. NAS hereby irrevocably conveys, assigns and transfers to Network all of its right, title and interest with respect to the use of the name “New America School” and any variations thereof, including all common law rights, and including internet sites, domain names, trade names, trademarks, service marks and logos with respect to the name “New America School,” including but not limited to that which is set forth on Exhibit A (collectively, the “Marks”). Network hereby accepts the assignment of the Marks.
  1. Copyrights. NAS hereby irrevocably conveys, assigns and transfers to Network all right, title and interest in and to all copyrights it owns which were developed for use in connection with the Model, including but not limited to all written, auditory, visual and other materials which are subject to copyright and such other materials as set forth on Exhibit B, and all other intellectual property rights held by NAS under the U.S. Copyright Act and all international laws and conventions related to its operation of public charter schools in the state of Colorado (collectively, “Copyrights”). Network hereby accepts the assignment of the Copyrights.
  1. Processes. NAS hereby irrevocably conveys, assigns and transfers to Network all right, title and interest in and to all of its proprietary know-how, practices, plans, specifications, methodologies, marketing and recruitment strategies, business practices, design elements of each school, trade dress, and all other proprietary information developed for use in connection with the Model (“Processes”). Network hereby accepts the assignment of the Processes.
  1. Limits. Network shall solely utilize the NAS Intellectual Property in the pursuit of the Mission and the Model. Network may license the NAS Intellectual Property to other public charter schools which execute a service and license agreement with Network whereby such schools agree to abide by the Mission and the Model and to become a Network school.
  1. License. In consideration of NAS’ transfer of the NAS Intellectual Property under this Agreement, Network shall provide NAS with a perpetual (except as described in this Section 2), non-exclusive, non-transferable, royalty-free license (“License”) to use the NAS Intellectual Property solely in connection with NAS’ operation of all of its public charter schools in the state of Colorado (“Colorado Schools”). Such License shall immediately terminate if NAS stops operating a public charter school in the state of Colorado, stops participating in the Model, of if NAS files for dissolution or loses its tax-exempt status under § 501(c)(3) of the Code.
  1. Obligations under License. NAS hereby agrees that so long as the License is in existence, it shall abide by the following standards and that any material violation thereof may result in termination of the License:
  1. High Ethical Standards. NAS and the Colorado Schools shall not knowingly engage in any activities which damage the reputation of Network, other Network schools, or the Model. NAS and the Colorado Schools shall endeavor to observe high ethical standards of operation that are reasonably calculated to maintain the image, quality, public goodwill and reputation of the Network, other Network schools, and the Model, and not knowingly engage in any activity that may harm the reputation or impair the value of the same.
  1. Policies and Procedures. NAS and the Colorado Schools shall at all times use reasonable efforts to adhere to the policies and procedures that are part of the Model and licensed to the NAS pursuant to this Agreement.
  1. Compliance with Laws. NAS and the Colorado Schools shall comply with all applicable laws, rules and regulations, including those which relate to the receipt of federal, state and local funds.
  1. Quality standards. NAS and the Colorado School shall maintain a high level of quality standards, including but not limited to the following:
  2. Maintain a healthy and safe environment as governed by federal, state and local laws and rules;
  3. Disclose to Network the existence and results of any regulatory or governmental agency investigations or disciplinary action initiated against the School;
  4. Respond in a timely fashion to reasonable requests by The Network for information about the School’s financial, business management and operations;
  5. Follow the School’s charter contract and maintain acceptable levels of compliance with the School’s authorizer’s standards and performance goals; and

a.  Comply with all other terms of this Agreement.

  1. Further Assurances. Each Party shall execute, verify, acknowledge, deliver and file all formal assignments, recordations and any other documents that the other Party may prepare or reasonably request to give effect to the provisions of this Agreement.
  1. Termination/Effect of Termination.
  1. Termination. This Agreement may be terminated upon the occurrence of any of the following:
  1. Immediately by NAS if Network files for dissolution, bankruptcy, or if NAS loses its tax-exempt status under § 501(c)(3) of the Code; or
  1. By either party upon the other party’s material breach of this Agreement, provided that the non-breaching party provide the breaching party with written notice of such breach and thirty (30) days to cure such breach.
  1. Effect of Termination.
  1. Upon termination of this Agreement pursuant to Section 4(a)(i) above, Network shall immediately assign all right, title and interest in and to the NAS Intellectual Property back to NAS for no consideration.
  1. Upon termination of this Agreement under Section 4(a)(ii): (i) if Network is the breaching party, Network shall immediately assign all right, title and interest in and to the NAS Intellectual Property back to NAS for no consideration; or (ii) if NAS is the breaching party, Network may terminate the License.
  1. General.
  1. Representations.
  1. NAS and Network represent that each has the full power and authority to execute, deliver, and perform this Agreement in accordance with its terms and this Agreement does not violate any agreement or arrangement to which either is a Party or by which either is bound.
  1. NAS agrees to promptly notify Network of any infringement or dispute concerning the NAS Intellectual Property which may, from time to time, come to NAS’ attention, and shall assist Network in any claim or dispute involving the NAS Intellectual Property.
  1. Neither Party shall knowingly engage in any activities which damage the reputation of the other Party or the Model. Both Parties shall endeavor to observe high ethical standards of operation that are reasonably calculated to maintain the image, quality, public goodwill and reputation of the other Party and the Model, and not knowingly engage in any activity that may harm the reputation or impair the value of the same.
  1. Governing Law. This Agreement shall be interpreted under and governed by the laws and decisions of the State of Colorado.
  1. Entire Agreement. This Agreement contains the entire agreement and understanding of the parties with respect to the subject matter hereof and supersedes all prior agreements and understandings between them with respect to such subject matter. All rights and remedies contained in this Agreement shall be cumulative and shall not limit any other right or remedy to which a Party may be entitled. If any provision of this Agreement is held to be invalid or unenforceable by any court of competent jurisdiction, such holding shall not invalidate or render unenforceable any other provision hereof.
  1. Assignment. The license granted to NAS in Section 2 is not assignable and cannot be expanded or modified except upon the express permission of Network.
  1. Counterparts. This Agreement may be executed in original or faxed counterparts, all of which taken together shall constitute one and the same original instrument.

[signature page to follow]

The Parties have executed this Intellectual Property Assignment and License Agreement through their authorized signatories on the dates set forth below, to be effective as of the Effective Date.

The New America School, a Colorado nonprofit corporation

Date: , 20__

By ______

Title

The New America Schools Network, a Colorado nonprofit corporation

Date: , 20______

By ______

Title ______


Exhibit A

Tradename: New America School (unregistered)

Logos:

[get NM logo]
Exhibit B

(Copyrights)

All written, visual or auditory copyrightable materials developed as part of the Model, including but not limited to the following:

·  Mission and belief statements

·  Curriculum aligned with core standards but customized for our target population

·  Common assessments

·  Assessment frameworks

·  Teacher evaluation frameworks including walk-through

·  Support staff templates for evaluation

·  Dashboards

·  School and student performance matrix of measures/indicators/metrics/targets

·  360° Principal evaluation model

·  Policies and procedures to support the Model

·  Financial policies

·  Employee handbook

·  Website

·  Videos and all visual materials

·  Implementation guides

·  Technical data materials

·  Professional development programs

·  Facility design models

·  All other academic and business forms, documents and educational specifications

·  All other documents, written policies and processes related to the operation and business