This is an agreement between a company and an independent contractor that contains confidentiality provisions and an IP assignment clause. The agreement is governed by California law.
INDEPENDENT CONTRACTOR SERVICE AGREEMENT, CONFIDENTIALITY AGREEMENT AND INTELLECTUAL PROPERTY ASSIGNMENT
THIS INDEPENDENT CONTRACTOR SERVICE AGREEMENT, CONFIDENTIALITY AGREEMENT AND INTELLECTUAL PROPERTY ASSIGNMENT (the “Agreement”) dated as of _______________(the “EFFECTIVE DATE”), by and between [NAME OF COMPANY] (the “COMPANY”), and [NAME OF INDEPENDENT CONTRACTOR] (the “CONTRACTOR”).
WHEREAS, CONTRACTOR will provide certain professional services to COMPANY, including, without limitation, [DESCRIBE CONTRACTOR SERVICES];
WHEREAS, the parties wish to confirm the confidentiality of materials possessed by COMPANY and that COMPANY is the owner of any and all work product (and attendant intellectual property) generated or developed by CONTRACTOR for COMPANY;
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual covenants and agreements of the parties contained in this Agreement, the parties agree as follows:
1.1 CONTRACTOR agrees to perform mutually agreed services (the “Services”) and be compensated according to the schedule listed in Schedule A, (“Services and Duties, Compensation”) attached to this Agreement. COMPANY and CONTRACTOR may mutually agree on other services and compensation from time to time. CONTRACTOR expressly reserves the right to modify the services it offers as CONTRACTOR’s skills, capabilities and professional direction may change from time to time. COMPANY reserves the right to modify Schedule A, “Services and Duties, Compensation,” at any time prior to assigning services to CONTRACTOR, provided, however, that CONTRACTOR is given notice of such modification and agrees to it, in writing, prior to accepting the modified assignments. CONTRACTOR will determine the method, details, and means of performing the Services, subject to the specifications, parameters, timeline and objectives set forth by COMPANY.
1.2 CONTRACTOR may not use subcontractors to perform the Services under this Agreement without first receiving COMPANY’s written approval, which shall not be unreasonably withheld.
2.1 See Schedule A, “Services and Duties, Compensation,” attached to this agreement. CONTRACTOR shall submit all invoices for any sums due within fifteen (15) days from the date of completion. CONTRACTOR understands, acknowledges and agrees that if CONTRACTOR invoices COMPANY after the fifteen-day window prescribed herein, COMPANY, at its sole discretion, may decline to pay CONTRACTOR for such service.
3. TERM AND TERMINATION
3.1 This Agreement will become effective on the EFFECTIVE DATE. This Agreement will terminate on the completion of the Services or until terminated as set forth below.
3.2 Either party may terminate this Agreement at any time by giving thirty (30) days written notice to the other party.
3.3 Should either party default in the performance of this Agreement or materially breach any of its provisions, the non-breaching party may terminate this Agreement by giving written notification to the breaching party. Termination shall be effective immediately on receipt of the notice, or five (5) days from mailing of the notice, whichever occurs first. For the purposes of this section, material breach of this Agreement shall include but not be limited to the following:
(a) Nonpayment of compensation by COMPANY after twenty (20) days written demand for payment; or;
(b) Failure of CONTRACTOR to perform the Services in a commercially reasonable manner and/or within a commercially reasonable time;
3.4 This Agreement terminates automatically on the occurrence of any of the following events: (a) bankruptcy or insolvency of either party; (b) sale of the business of either party; or (c) death of either party.
4.1 As used herein, the term “Confidential Information” shall mean any and all information, regardless of whether kept in a document, in an electronic storage medium, or in CONTRACTOR’s memory, and includes but is not limited to all data, compilations, programs, devices, strategies, concepts, ideas, and methods concerning or related to:
(a) COMPANY’s financial condition, results of operations, and amounts of compensation paid to officers and employees;
(b) Marketing and sales programs of COMPANY, the terms and conditions of sales and offers of sales of products or services by COMPANY, and strategic plans;
(c) The terms, conditions, and current status of COMPANY’s agreements and relationships with any customers, suppliers, or other entities;
(d) The identities and business preferences of COMPANY’s actual and prospective customers and suppliers or any employee or agent thereof with whom COMPANY communicates, along with COMPANY’s practices and procedures for identifying prospective customers;
(e) The names and identities of any and all of COMPANY’s customers, including any and all customer lists or similar compilations;
(f) The know-how, manufacturing processes and techniques, regulatory approval strategies, computer programs, data, schematics, design work, formulas, compositions, service techniques and protocols, new and existing product designs and specifications, any modifications to such product designs and specifications, and any other skills or ideas developed, accumulated, or acquired by COMPANY;
(g) Personnel information, including the productivity and profitability (or lack thereof) of COMPANY’s employees, agents, or independent contractors;
(h) Any communications between COMPANY or its officers, directors, shareholders, or employees and any attorney retained by COMPANY for any purpose or any person retained or employed by such attorney for the purpose of assisting such attorney in his or her representation of COMPANY; and
(i) The cost or overhead associated with the goods and services provided by COMPANY, along with COMPANY’s pricing structure for its goods or services, including its margins, discounts, volume purchases, markups, or incentives.
4.2 As used herein, “Trade Secrets” includes certain Confidential Information and means, as provided in the Uniform Trade Secrets Act (Civil Code §3426.1(d)), without limitation, information, including a formula, pattern, compilation, program, device, method, technique, or process that (a) derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use, and (b) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
4.3 CONTRACTOR acknowledges and agrees that COMPANY is engaged in the highly competitive business of [DESCRIBE COMPANY BUSINESS], and has expended, or will expend, significant sums of money and has invested, or will invest, a substantial amount of time to develop and use, and maintain the secrecy of, the Confidential Information and Trade Secrets. COMPANY has thus obtained, or will obtain, a valuable economic asset that has enabled, or will enable, it to develop an extensive reputation and to establish long-term business relationships with its suppliers, customers, and vendors. If such Confidential Information or Trade Secrets were disclosed to another person or entity or used for the benefit of anyone other than COMPANY, COMPANY would suffer irreparable harm, loss, and damage. Accordingly, CONTRACTOR acknowledges and agrees that:
(a) The Confidential Information and Trade Secrets are, and at all times hereafter shall remain, the sole property of COMPANY;
(b) CONTRACTOR shall use CONTRACTOR’s best efforts and utmost diligence to guard and protect Confidential Information and Trade Secrets from any unauthorized disclosure to any competitor, supplier, vendor, or customer of COMPANY or any other person, firm, corporation, or other entity;
(c) Unless COMPANY gives CONTRACTOR prior express written permission, during CONTRACTOR’s consultancy and thereafter, CONTRACTOR shall not use for CONTRACTOR’s own benefit or use for or disclose to any competitor, supplier, or customer, or any other person, firm, corporation, or other entity, the Confidential Information or Trade Secrets as set forth herein;
(d) Except in the ordinary course of COMPANY’s business for COMPANY, CONTRACTOR shall not seek or accept any Confidential Information or Trade Secrets from any former, present, or future employee of COMPANY;
(e) On demand, CONTRACTOR shall immediately return to COMPANY all documentary or tangible Confidential Information and Trade Secrets in CONTRACTOR’s possession, custody, or control and shall sign an affidavit under penalty of perjury that CONTRACTOR has not made or kept any copies, notes, abstracts, summaries, tapes, or other record of any type of Confidential Information or Trade Secrets;
(f) On demand, CONTRACTOR shall further immediately return to COMPANY any and all other COMPANY property in CONTRACTOR’s possession, custody, or control, including, without limitation, keys, security cards, passes, phones, laptop computers, PDAs, credit cards, and marketing literature.
(g) During CONTRACTOR’s consultancy, CONTRACTOR shall not disclose or use for COMPANY’s behalf any Trade Secrets or confidential information of any former employer or agent, and shall make no effort to reverse engineer or derive independently any information that is or could be a Trade Secret or confidential information of any former employer or agent. CONTRACTOR further represents and warrants that CONTRACTOR has provided to COMPANY copies of all nondisclosure, confidentiality and intellectual property assignment agreements that may bind CONTRACTOR.
(h) Following CONTRACTOR’s termination for any reason, CONTRACTOR shall not directly or indirectly attempt to reconstruct any Trade Secret or Confidential Information of COMPANY through the use of COMPANY’s records or CONTRACTOR’s memory.
(i) After the termination of CONTRACTOR’s consultancy for any reason, CONTRACTOR shall not directly or indirectly solicit the actual or potential customers of COMPANY, because the identities of such actual or potential customers has been compiled over time by COMPANY and COMPANY takes reasonable measures to protect such information and considers information regarding its actual or potential customers to be a “trade secret” as that term is defined in the Uniform Trade Secrets Act (Cal. Civil Code §§ 3426-3426.11).
5. NONSOLICITATION OF EMPLOYEES
5.1 CONTRACTOR acknowledges and agrees that the business of COMPANY is highly competitive, that COMPANY invests substantial resources in locating, hiring, and training employees, and that the loss of employees to a competitor would cause immediate, immeasurable, and irreparable harm, loss, and damage to COMPANY not adequately compensable by a monetary award. Accordingly, during the term of CONTRACTOR’s engagement with COMPANY and for a period of 1 year from the date when CONTRACTOR’s engagement with COMPANY ceases, CONTRACTOR agrees not to directly or indirectly solicit any employee or agent of COMPANY to disengage employment or retention with COMPANY.
6. INTELLECTUAL PROPERTY RIGHTS AND ASSIGNMENT
6.1 As used in this Agreement, the term “Inventions” shall mean and include all procedures, systems, machines, methods, processes, uses, apparatuses, compositions of matter, designs, configurations, computer programs, copyrightable material, notes, records, drawings, trade and service marks, trade dress and trade secrets of any kind, discovered, conceived, reduced to practice, developed, created, made, or produced, and any improvements to them, and shall not be limited to the meaning of the term “invention” under the United States patent laws.
6.2 CONTRACTOR agrees to disclose in writing promptly to COMPANY any and all Inventions, whether or not patentable and whether or not reduced to practice, conceived, or developed by CONTRACTOR during his or her engagement with COMPANY, either alone or jointly with others, that relate to or result from the actual or anticipated business, work, research, investigations, products, or services of COMPANY, or that result to any extent from use of COMPANY’s premises or property. CONTRACTOR specifically acknowledges that CONTRACTOR was hired to invent any Inventions described in this Section 6.
6.3 CONTRACTOR acknowledges and agrees that COMPANY is the sole owner of any and all property rights in all Inventions referred to in Section 6.2 above, including, but not limited to, the right to use, sell, license, or otherwise transfer or exploit the Inventions and the right to make such changes in them and the uses thereof as COMPANY may from time to time determine.
6.4 CONTRACTOR shall grant and hereby grants and assigns to COMPANY, without further consideration, CONTRACTOR’s entire right, title, and interest (throughout the United States and in all foreign countries), free and clear of all liens and encumbrances, in and to all Inventions referred to in Section 6.2 above, which shall be and hereby are the sole property of COMPANY, whether or not patentable, to the fullest extent possible by law and to the fullest extent under California Labor Code §§ 2870-2872, whether or not applicable to independent contractors. A copy of California Labor Code §§ 2870-2872 is attached to this Agreement as Exhibit A.
6.5 Without limiting the generality of the foregoing, CONTRACTOR shall, at any time during or after engagement with COMPANY, at COMPANY’s request, execute specific assignments in favor of COMPANY or its nominee of CONTRACTOR’s interest in any of the Inventions, writings, or other works covered by this Agreement and execute all papers, render all assistance, and perform all lawful acts that COMPANY considers necessary or advisable for (a) the preparation, filing, prosecution, issuance, procurement, maintenance, or enforcement of patents, trademarks, copyrights, and other protections, and any applications for any of the foregoing, in the United States or in any foreign country for any such Inventions, writings, or other works and (b) the transfer of any interest CONTRACTOR may have therein. CONTRACTOR hereby appoints each of the current and future officers of COMPANY as CONTRACTOR’s attorney?in?fact during such time as each is an officer to COMPANY to execute documents on behalf of CONTRACTOR for this purpose.
7. NON-EMPLOYEE STATUS
7.1 CONTRACTOR acknowledges and agrees that this Agreement is not a contract for or guarantee of continued consultancy and that the terms and conditions of CONTRACTOR’s consultancy are governed by the parties’ consultancy agreement. Nothing in this Agreement is intended to afford CONTRACTOR any of the rights, duties, or obligations of an employee of COMPANY. Under no circumstances shall CONTRACTOR look to COMPANY, or any of COMPANY’s principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents or assigns as CONTRACTOR’s employer, or as a partner, agent, or principal.
7.2 CONTRACTOR shall not be entitled to any benefits that may be accorded to COMPANY’s employees including, but not limited to, worker's compensation, disability insurance, vacation or sick pay.
7.3 It is understood by both parties that although CONTRACTOR may reside, as a tenant, on premises that are managed by COMPANY, CONTRACTOR is not doing so for the convenience of COMPANY, or for the convenience of any of COMPANY’S principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents or assigns, and that CONTRACTOR has no obligation to continue their tenancy at such premises in order to provide the services described in Schedule A. CONTRACTOR further understands that CONTRACTOR may terminate his or her tenancy at any time without terminating this Agreement.
7.4 It is further understood by both parties that CONTRACTOR is not expected to perform services or to be available on an “on-call” basis for any time in excess of the time required to perform the duties described in Schedule A.
7.5 CONTRACTOR shall be responsible for providing, at CONTRACTOR's expense, and in CONTRACTOR's name, disability, worker’s compensation, liability insurance, and any other insurance as well as licenses and permits usual or necessary for performing the Services.
7.6 CONTRACTOR shall pay, when and as due, any and all taxes incurred as a result of CONTRACTOR's compensation, including estimated taxes CONTRACTOR agrees to indemnify, defend and hold harmless COMPANY and COMPANY’s principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents or assigns from and against any claims, losses, costs, fees, liabilities, damages or injuries suffered by CONTRACTOR, or any of CONTRACTOR’s principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents or assigns arising from CONTRACTOR’s breach of this section, willful and/or intentional misconduct, or gross negligence.
7.7 CONTRACTOR may represent, perform services for, or be employed by any additional persons or companies as CONTRACTOR sees fit.
8. REPRESENTATIONS AND WARRANTIES
8.1 CONTRACTOR represents and warrants that any and all information, practices, or techniques to be described, demonstrated, divulged, or made known to COMPANY during the performance of the Services, including Background Technology, may be divulged without any obligation to, or violation of any right of, others. CONTRACTOR further represents and warrants that any and all practices or techniques that CONTRACTOR shall disclose, including Background Technology and any related materials, may be freely used by COMPANY without violation of any law or payment of any royalty, except as CONTRACTOR shall specifically identify in writing, subject to COMPANY’s right to approve, in its discretion, the use of any such materials. CONTRACTOR further represents and warrants that CONTRACTOR has all rights necessary to grant the licenses to the Background Technology set forth in this Agreement.
8.2 CONTRACTOR represents that CONTRACTOR has the qualifications and ability to perform the Services in a professional manner, without the advice, control, or supervision of COMPANY. Performance of the Services in a professional manner includes meeting the requirements of the prime contract under which COMPANY is obligated to perform services for the Customer, and failure to do so shall constitute a material breach of this Agreement. CONTRACTOR shall be solely responsible for the professional performance of the Services, and shall receive no assistance, direction, or control from COMPANY. CONTRACTOR shall have sole discretion and control of CONTRACTOR’s services and the manner in which performed, subject the specifications, parameters, timelines, and overall objectives set forth by COMPANY.
9.1 CONTRACTOR shall indemnify, defend, and hold harmless COMPANY, its officers, directors, agents and employees, from and against any and all losses, claims, demands, suits, actions, proceedings and expenses (including reasonable attorney fees), including without limitation all acts of negligence, infringement and malfeasance, directly or indirectly arising out of or resulting from (a) any act or omission of CONTRACTOR related to services performed for COMPANY under this Agreement; (b) any unauthorized use by CONTRACTOR of Confidential Information; (c) any breach of any representation, warranty, or covenant of CONTRACTOR contained in this Agreement, or otherwise made to COMPANY; or (d) any failure of CONTRACTOR to perform any of the representations, warranties and agreements contained in this Agreement.
10. COMPLETE AGREEMENT
10.1 This Agreement contains the entire agreement between the parties hereto with respect to the subject matter hereof, and supersedes and cancels all previous written or oral understandings, agreements, negotiations, commitments, or any other writings or communications in respect of such subject matter.
10.2 Although this Agreement may be updated from time to time by COMPANY, no modification, amendment or waiver of any of the provisions of this Agreement shall be effective unless in writing, specifically referring hereto, and signed by both parties.
11.1 The provisions of this Agreement shall be severable, and if any portion of this Agreement shall be held or declared to be illegal, invalid or unenforceable, such illegality, invalidity, or unenforceability shall not affect any other provision hereof, and the remainder of this Agreement, disregarding such portion, shall continue in full force and effect as though such portion had not been contained herein.
12. GOVERNING LAW
12.1 This Agreement shall be deemed to be made in the State of California, and shall be governed by and construed and interpreted in accordance with the laws of the State of California.
13. DISPUTE RESOLUTION
13.1 COMPANY and CONTRACTOR agree that each will mutually benefit from a procedure for resolving legal disputes that may arise between them and that might otherwise become the subject of litigation, in an expeditious, cost efficient, fair, and impartial manner.
13.2 COMPANY and CONTRACTOR agree, on their own behalves and on behalf of their respective agents and assigns, that all potentially litigable claims or controversies arising from this Agreement (1) for any monetary relief, or (2) to compel specific performance, whether or not arising out of this Agreement, shall be submitted to binding arbitration before a mutually acceptable arbitrator. If COMPANY and CONTRACTOR cannot agree upon an arbitrator, the claim or controversy shall be arbitrated by a single arbitrator appointed by the American Arbitration Association.
13.3 COMPANY and CONTRACTOR shall each pay one-half of the arbitration costs. In no event shall COMPANY be obligated to pay fees or costs that CONTRACTOR incurs on its own behalf in pursuing the arbitration, other than as may be awarded as costs to the prevailing party. Likewise, in no event shall CONTRACTOR be obligated to pay fees or costs that COMPANY incurs on its own behalf in pursuing the arbitration, other than as may be awarded as costs to the prevailing party.
13.4 Each party to the arbitration shall be entitled to serve up to 5 (Five) written requests for discovery. These written requests may include any combination of interrogatories, requests for admissions, and requests for production of documents and things. In addition, each party to the arbitration shall be entitled to take up to 3 (Three) depositions. The parties may modify these provisions by mutual agreement. The arbitrator may also order additional discovery, if necessary to provide either party with information about the facts, witnesses, or records essential to the parties' respective claims and defenses.
13.5 This agreement to arbitrate includes, but is not limited to, claims against CONTRACTOR and claims against COMPANY and/or COMPANY’s principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents or assigns. This agreement to arbitrate shall not include any action for eviction or to recover possession of any apartment occupied in connection with the contractual relationship described herein. Any such actions are specifically excluded from this Agreement, and may be brought in any court of competent jurisdiction. This agreement to arbitrate shall not include claims for use of trade secrets or other confidential or proprietary information. Such claims may be brought in any court of competent jurisdiction. CONTRACTOR acknowledges and agrees that the business of COMPANY is highly competitive and that violation of any of the covenants in this Agreement would cause immediate, immeasurable, and irreparable harm, loss, and damage to COMPANY not adequately compensable by a monetary award. Accordingly, CONTRACTOR agrees, without limiting any of the other remedies or damages available to COMPANY, that any violation of any such covenants may be redressed through an injunction, restraining order or other equitable remedy issued by a court of competent jurisdiction.
13.6 By signing this agreement, both COMPANY and CONTRACTOR acknowledge that each has read and understands Section 13 above, and that each party understands that both COMPANY and CONTRACTOR are agreeing to have the specified disputes arising out of this agreement decided by a neutral, binding arbitrator and that both are giving up their respective rights to a jury trial or a court trial, as well as their respective rights to an appeal.
14. GENERAL RELEASE
14.1 COMPANY and its principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents, and assigns and CONTRACTOR and its principals, partners, clients, associates, supervisors, employees, directors, shareholders, agents, and assigns hereby absolutely, forever and fully, generally and specifically, release and discharge each other and all those claiming by, through, under, or in concert with them or any of them from any and all claims, contentions, rights, debts, liabilities, demands, obligations, duties, promises, costs (including, but not limited to, attorneys’ fees), expenses, liens, indemnification rights, losses, actions, and causes of action of any kind whatsoever, including, but not limited to, breach of contract, and retaliation (the “Claims”), whether due or owing at any time prior to entering into this Agreement, whether based upon contract, tort, statute or any other legal or equitable theory of recovery, and whether known or unknown, fixed or contingent, with respect to, pertaining to, or arising from any matters, acts, omissions, events, conduct or occurrences at any time prior to and upon the date of this Independent Contractor Agreement including, but not limited to, the generality of the foregoing provisions.
15.1 The waiver by either of the parties to this Agreement of any breach of any provision hereof by the other party shall not be construed to be either a waiver of any succeeding breach of any such provision or a waiver of the provision itself.
16.1 The Section headings in this Agreement are inserted only as a matter of convenience, and in no way define, limit, or extend or interpret the scope of this Agreement or of any particular Section.
17.1 This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, but all of which collectively shall constitute one and the same instrument.
IN WITNESS WHEREOF: the parties hereby affix their signatures:
[NAME] [TITLE] DATE
[NAME OF CONTRACTOR] DATE
California Labor Code §§2870-2872
§ 2870(a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of the
invention to the employer's business, or actual or demonstrably
anticipated research or development of the employer; or
(2) Result from any work performed by the employee for the employer.
(b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable.
§2871 No employer shall require a provision made void and unenforceable by Section 2870 as a condition of employment or continued employment. Nothing in this article shall be construed to forbid or restrict the right of an employer to provide in contracts of employment for disclosure, provided that any such disclosures be received in confidence, of all of the employee's inventions made solely or jointly with others during the term of his or her employment, a review process by the employer to determine such issues as may arise, and for full title to certain patents and inventions to be in the United States, as required by contracts between the employer and the United States or any of its agencies.
§2872 If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870. In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.
SERVICES AND DUTIES, COMPENSATION