Apprio, Inc. v. Zaccari
| Decision Date | 01 June 2021 |
| Docket Number | Civil Action No. 18-2180 (JDB) |
| Parties | APPRIO, INC., Plaintiff, v. NEIL ZACCARI, Defendant. |
| Court | U.S. District Court — District of Columbia |
Apprio, Inc., a government contractor, brings this suit against a former employee, Neil Zaccari, for breach of contract, seeking a declaratory judgment. The dispute involves intellectual property rights in a software program that Zaccari developed while working at Apprio. Apprio has moved for partial summary judgment concerning the contractual assignment of rights in this software program. Apprio claims that Zaccari contractually assigned his intellectual property rights in the software to Apprio. Zaccari responds that he is not bound by the contract Apprio has identified and that, even if he is, its terms do not apply to the specific software program at issue. Because Zaccari did in fact objectively manifest his assent to the contract and because its unambiguous terms do cover the software at issue, the Court will grant Apprio's motion.
From 2014 to 2017 Apprio performed work for the Defense Contract Management Agency ("DCMA"), a federal agency organized under the Department of Defense to facilitate and monitor the work of its government contractors. Def.'s Resp. to Pl.'s Stmt. of Undisputed Material Facts ( ) [ECF No. 34-2] ¶¶ 1-3. DCMA hired Apprio to work on the implementation of software and automated processes and to help DCMA develop an Integrated Workload Management System ("IWMS"), all of which would facilitate more efficient receipt and review of government contracts by DCMA. See generally id. ¶¶ 4-16.
Defendant Neil Zaccari worked for Apprio from November 2, 2015 until approximately May 11, 2017. Id. ¶¶ 19, 30. During this time he worked on Apprio's DCMA projects. Id. ¶ 20. While employed with Apprio, on or before June 15, 2016,1 Zaccari was presented with a document titled "Proprietary Information and Assignment of Inventions Agreement" (the "Agreement"). Resp. SUMF ¶¶ 21-22; Pl.'s SUMF Ex. J, Agreement [ECF No. 31-14]. Zaccari agrees that he "acknowledge[d]" receiving it but disputes having "assented to be bound by" its terms. Resp. SUMF ¶ 22. Specifically, Zaccari says he was notified that "there was a policy for [him] to review" in Apprio's Human Resources software and that, after logging into that software, the text of the Agreement was displayed on his computer screen. Zaccari Decl. [ECF No. 34-4] ¶¶ 14-16. He "press[ed] a button" on the screen that read "Acknowledge," but says he "was . . . never told that 'agreeing' to the document was a condition of [his] employment" and "didn't understand [him]self to be signing a contract that would bind [him]." Id. ¶ 16.
While the legal status of the Agreement is the subject of significant dispute—thoroughly discussed below—the text of the Agreement's key terms is not. In addition to the assignment of inventions provisions at issue in this case, the Agreement also contains provisions addressing non-disclosure of company information, duties of loyalty and non-competition, an at-will employment provision, details on remedies, and other terms. Section 2 of the Agreement concerns theassignment of "Inventions" and "Proprietary Rights," the latter of which is defined as "all trade secret, patent, copyright, mask work and other intellectual property rights throughout the world." Agreement ¶ 2.1. The Agreement states that an Apprio employee consenting to its terms will "[t]hereby assign and agree to assign in the future . . . to [Apprio] all [of the employee's] right, title and interest in and to any and all Inventions (and all Proprietary Right with respect thereto) . . . ." Id. ¶ 2.3. This applies, with some significant exceptions discussed in detail below, to all inventions "whether or not patentable or registrable under copyright or similar statutes" so long as they are "made or conceived or reduced to practice . . . during the period of" employment with Apprio. Id.
The assignment of rights has become a point of contention between the parties because while he was employed by Apprio, Zaccari developed a piece of software using Microsoft Excel Macros—the "CRR Software." Compl. [ECF No. 1] ¶¶ 37, 40; Am. Answer [ECF No. 20] ¶¶ 37, 40 (). The CRR Software "automated the DCMA's manual contract receipt and review process." Am. Answer ¶ 42. Zaccari says he created the CRR Software "independently" and "on his own time." Id. ¶ 40. He has been less clear about when exactly he created it. In his Amended Answer Zaccari states that he created the CRR Software "during the time period [when] he was also an employee of Apprio," id., but his subsequent Declaration indicates that the CRR Software is better described as having developed out of a base code that he developed in 2008 and then updated while working for Apprio, Zaccari Decl. ¶¶ 4-5, 9-10. Either way, there is no dispute that while working on Apprio's DCMA projects, Zaccari "informed Apprio that he could use the existing capabilities of an Excel macro to automate the DCMA's manual contract receipt and review process." Am. Answer ¶ 37.
The parties disagree regarding the timing of the events that followed. Zaccari says he told Apprio what he could do with an Excel macro "after [he had] independently creat[ed] his CRR software," id., while Apprio suggests that Zaccari told Apprio that it would be possible to create the software before he actually did so, Compl. ¶ 37. The parties agree that Zaccari brought his creation into work and demonstrated it to his colleagues, and possibly to at least one DCMA official, though Zaccari's statements about this have been inconsistent. Zaccari Decl. ¶¶ 12-13 (); Compl. ¶ 39 (); but see Am. Answer ¶ 39 (). Apprio says that Zaccari "provided [the CRR Software] . . . to DCMA," Compl. ¶ 39, while Zaccari says Apprio "took [his] software" after threatening his job, Zaccari Decl. ¶ 13. Either way, no one disputes that DCMA ended up using the software. Compl. ¶ 39 (); Zaccari Decl. ¶ 13 ().
The parties' dispute over proprietary rights in the CRR Software began from there. Zaccari's employment was terminated in May 2017, and he has since refused Apprio's demands that he turn over all copies of the CRR Software in his possession. Compl. ¶ 45; Am. Answer ¶ 45. He has also refused to execute a formal assignment of property rights in the CRR Software to Apprio. Resp. SUMF ¶ 49. In April 2018, he applied for a copyright registration for the CRR Software. Compl. ¶ 46; Am. Answer ¶ 46; Pl.'s SUMF Ex. N, Copyright Registration [ECF No. 31-18]. Zaccari then filed a lawsuit against Apprio in June 2018, alleging that Apprio had breached the Agreement, infringed on his copyright in the CRR Software, unlawfully conspired with DCMAagainst him, and misappropriated trade secrets. Compl. ("1560 Compl.") at 10-14, Zaccari v. Apprio, Inc., No. 18-cv-1560 (D.D.C. Jun. 29, 2018) [ECF No. 1]. The parties refer to that prior lawsuit as "the 1560 litigation" in reference to its case number. Apprio filed the instant lawsuit against Zaccari a few months later.
The 1560 litigation and this case were both before this Court, and in 2019 the Court consolidated them pursuant to Federal Rule of Civil Procedure 42(a). Order (Jan. 11, 2019), Zaccari, No. 18-cv-1560 [ECF No. 15]. Apprio successfully moved to dismiss Zaccari's complaint against it for lack of subject matter jurisdiction and failure to state a claim. Zaccari v. Apprio, Inc., 390 F. Supp. 3d 103, 106 (D.D.C. 2019). The Court held that it lacked jurisdiction over Zaccari's copyright infringement and conspiracy claims and that he had failed to state a claim for breach of contract or misappropriation of trade secrets. Id. at 108-14. The Complaint in the 1560 litigation was dismissed, id. at 114, and the Court deconsolidated the two cases, see Order (Aug. 27, 2019), [ECF No. 15]. No appeal of that decision was taken.
Following discovery in this case, Apprio filed the instant motion for partial summary judgment. Apprio Inc.'s Mot. for Summ. J. on Contractual Assignment of Rights ("Mot.") [ECF No. 31]. Apprio seeks summary judgment "regarding the contractual assignment of any rights Zaccari has in the CRR Software, including assignment of all rights Zaccari may have in" his copyright registration. Id. at 1; see also Mem. in Supp. of Apprio Inc.'s Mot. for Summ. J. on Contractual Assignment of Rights ("MSJ Br.") [ECF No. 31-1]. Zaccari opposes the motion. Zaccari's Mem. of P. & A. in Opp'n to Apprio, Inc.'s Mot. ("Opp'n") [ECF No. 34]. The motion is now fully briefed and ripe for resolution. See Reply Mem. in Supp. of Apprio Inc.'s Mot. ("Reply") [ECF No. 39].
Summary judgment is appropriate where "the movant shows there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "The mere existence of some factual dispute is insufficient on its own to bar summary judgment; the dispute must pertain to a 'material' fact." Etokie v. Duncan, 202 F. Supp. 3d 139, 145 (D.D.C. 2016) (citation omitted). Hence, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Summary judgment may not "be avoided based on just any disagreement as to the relevant facts; the dispute must be 'genuine,' meaning that there must be sufficient admissible...
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