United States District Court, D. Colorado
ORDER ON MOTION FOR PARTIAL SUMMARY JUDGMENT
Brooke Jackson, United States District Judge
matter is before the Court on plaintiff Western Star,
LLC's motion for partial summary judgment and request for
expedited declaratory relief (ECF No. 44). The motion has
been fully briefed. ECF Nos. 44, 48, 53. For the reasons
stated herein, the motion is DENIED.
a dispute over who owns the intellectual property and code
associated with a software application. In 2014 Western Star
and its CEO, Bill Bradley, began conceptualizing a desktop
and mobile application known as the Starlight Trash Platform
to improve the waste hauling industry (the “Starlight
Application”). ECF No. 44 at 3. Western Star hired a
company called Motocol in 2014 to write the software code for
Starlight. Id. Motocol in turn hired defendant
Marketsoup in August 2015 as a subcontractor on the project.
Id. After several months of this arrangement,
Western Star decided to work directly with Marketsoup, so
Western Star terminated its contractual arrangement with
Motocol and began the process of contracting with Marketsoup.
Id. at 5. Around the same time, Western Star's
CEO Mr. Bradley and Marketsoup's CEO Dan Weber, also a
defendant in this case, began forming a close personal
friendship, even going so far as to discuss the possibility
of Mr. Bradley's adopting Mr. Weber. Id.
and Western Star began negotiating the terms of their
agreement in August 2016 via a series of emails. See
ECF No. 44-1 at 17 (email from Mr. Bradley indicating that he
wanted to “get a direct contract in place with Dan
[Weber]”). The draft agreement between the parties was
comprised of an Independent Contractor Agreement
(“ICA”) and a Statement of Work
(“SOW”) (collectively, “the
agreement”). The parties exchanged six drafts of the
agreement between August 29, 2016, and October 16, 2016.
See ECF Nos. 44-5-44-7, 44-10- 44-12. The last
draft, containing edits in redline, was sent by
Marketsoup's attorney. ECF No. 44-12. In his email
accompanying that version, Marketsoup's attorney stated
that he “look[ed] forward to you[r] thoughts and
comments.” Id. at 2. Western Star never
responded to the October 2016 draft.
the parties continued working together. Marketsoup worked on
the Starlight Application and sent Western Star invoices for
its work from August 1, 2016 through November 1, 2017.
See ECF No. 44-8. Marketsoup's explanation of
billing (ECF No. 44-9 at 3-4) matched that set out in the
SOW, which was unchanged in the draft agreements sent between
August 29 and October 16, 2016. See ECF Nos. 44-9,
44-12 at 14.
relationship between the companies apparently soured in
October 2017 when Marketsoup asserted that it owned the
software code created for the Starlight Application. ECF No.
44-1 at 22. On October 31, 2017 Western Star demanded that
Marketsoup return all copies of the source code, cease
additional software development on behalf of Western Star,
and stop using Western Star's confidential information
except as authorized. Id. On December 23, 2017
Western Star notified Marketsoup that it was terminating the
parties' agreement due to Marketsoup's breach of the
agreement. Id. at 24. In November and December of
2017 Marketsoup allegedly began threatening to shut down the
Starlight platform and software application that support
Western Star's customers. ECF No. 31 at 2. Marketsoup
also began taking steps to patent and/or copyright
intellectual property that Western Star claims it owns.
several specific incidents, including when Marketsoup
temporarily locked Western Star out of the platform and began
advertising the Starlight Application as its own, Western
Star filed a Complaint for Emergency Injunctive Relief and an
Emergency Motion for a Temporary Restraining Order before
this Court. See ECF Nos. 1, 2. On December 8, 2017
the Court held a hearing on Western Star's Amended
Emergency Motion for a Temporary Restraining Order and
Preliminary Injunction. See ECF No. 23. Following
the hearing, Marketsoup agreed to transfer control over the
source code and software to Western Star. ECF No. 31 at 4.
Nonetheless, according to Western Star, Marketsoup continues
to claim that it owns this intellectual property and has
continued pursuing applications to copyright part or all of
the intellectual property. Id.
result of Marketsoup's continued attempts to assert its
ownership of the intellectual property at issue, Western Star
filed an amended complaint. See Id. In this
complaint it asserts the following nine claims for relief:
(1) a declaratory judgment asserting that Western Star owns
all intellectual property rights related to the Starlight
Application and that the contract between the parties (as
memorialized in the October 2016 draft) is valid and
enforceable; (2) a permanent injunction against
Marketsoup's disruption of the Starlight Application or
its attempt to assert ownership of the related intellectual
property; (3) misappropriation of trade secrets under federal
law; (4) misappropriation of trade secrets under state law;
(5) conversion of Western Star's software, source code,
and confidential information; (6) civil theft of Western
Star's property; (7) breach of contract; (8) unjust
enrichment; and (9) promissory estoppel. Id. at
Star now seeks partial summary judgment on its claim for
declaratory judgment with respect to the validity of the
contract, or in the alternative on its claim for promissory
estoppel; and on its claim for conversion. ECF No. 44 at 14.
Court may grant summary judgment if “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 moving party has the burden to show that there is
an absence of evidence to support the nonmoving party's
case. Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). The nonmoving party must “designate specific
facts showing that there is a genuine issue for trial.”
Id. at 324. A fact is material “if under the
substantive law it is essential to the proper disposition of
the claim.” Adler v. Wal-Mart Stores, Inc.,
144 F.3d 664, 670 (10th Cir. 1998) (citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). An issue
of material fact is genuine if “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party.” Anderson, 477 U.S. at 248.