   IN THE COURT OF CHANCERY OF THE STATE OF DELAWARE

HIPCRICKET, INC.,                        )
                                         )
           Plaintiff,                    )
                                         )
     v.                                  )      C.A. No. 11135-CB
                                         )
mGAGE, LLC and GLENN                     )
STANSBURY,                               )
                                         )
           Defendants.                   )


                         MEMORANDUM OPINION

                         Date Submitted: April 4, 2016
                          Date Decided: July 15, 2016


Brian E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, Delaware;
Kenneth J. Rubinstein, Joseph M. Vann and Jackson S. Davis, COHEN TAUBER
SPIEVACK & WAGNER P.C., New York, New York; Counsel for Plaintiff
Hipcricket, Inc.

Stephen B. Brauerman, Vanessa R. Tiradentes and Sara E. Bussiere, BAYARD,
P.A., Wilmington, Delaware; Peter F. Schoenthaler and Bryan L. Baysinger, THE
SCHOENTHALER LAW GROUP, Atlanta, Georgia; Counsel for Defendants
mGage, LLC and Glenn Stansbury.




BOUCHARD, C.
      This post-trial decision resolves various claims that Hipcricket, Inc., a

mobile marketing company, asserted against a former employee, Glenn Stansbury,

and one of its competitors, mGage LLC, which hired Stansbury shortly after

Hipcricket filed for bankruptcy protection in early 2015.

      During his tenure at Hipcricket, Stansbury served as an executive in sales,

and received commissions and bonuses under an agreement that prohibited him

from soliciting Hipcricket’s customers and employees and from using its

confidential information after his employment ended. Almost immediately after

joining mGage, Stansbury began contacting clients of Hipcricket, including some

of his former accounts, to solicit business for mGage. This prompted Hipcricket to

sue Stansbury and mGage in June 2015 for breach of Stansbury’s commission

agreement and other claims.

      Because of Hipcricket’s bankruptcy, Stansbury was not paid certain

commissions and other amounts material to him that he earned pre-petition.

Stansbury filed a proof of claim for these amounts in the bankruptcy proceeding.

Critical to this action, in May 2015, fully aware of Stansbury’s claim, and when

Hipcricket knew Stansbury was working for mGage and believed he was violating

the non-solicitation and confidentiality provisions in his commission agreement,

Hipcricket decided not to assume (and thereby rejected) Stansbury’s commission
agreement.    As a result, instead of being put on a track to be paid in full,

Stansbury’s claim was relegated to general unsecured status.

      Under the Bankruptcy Code, the rejection of an executory contract means

that the contract is deemed to have been breached as of the petition date, and courts

then look to state law to determine the legal effect of that breach. Applying the

governing law of the state of Washington, I conclude that Hipcricket’s material

breach of the commission agreement rendered the non-solicitiation and

confidentiality provisions in it unenforceable. For this reason, judgment is entered

in defendants’ favor for the claims Hipcricket has asserted that are based on the

commission agreement.

      Hipcricket also sued defendants for violating the Washington Uniform Trade

Secrets Act. I conclude for the reasons explained below that Hipcricket has proven

this claim and is entitled to a permanent injunction to prevent defendants from

further misappropriating its trade secrets.

I.    BACKGROUND

      The following are the facts as I find them based on the documentary

evidence and witness testimony. 1 I accord the evidence the weight and credibility I

find it deserves.


1
  Joint trial exhibits are cited as “JX ___”. The trial transcript is cited as “Tr. ___”.
Stipulated facts in the Pretrial Order are cited as “PTO.”

                                              2
         A.     The Parties

         Plaintiff Hipcricket, Inc. is a Delaware corporation with its principal place of

business in Bellevue, Washington.2 Hipcricket is a mobile marketing company

that provides end-to-end, data-driven mobile advertising and marketing solutions

(largely through text and multimedia messages) through its proprietary AD LIFE®

platform. 3

         Defendant mGage, LLC is a Delaware limited liability company. 4 mGage is

a direct competitor of Hipcricket.5                 A substantially larger company than

Hipcricket, mGage is a “Tier 1 aggregator,” which means that it has direct

connections to all five major cellular carries in the U.S. 6

         Defendant Glenn Stansbury was employed at Hipcricket from October 2008

until March 13, 2015, eventually becoming its Vice President of Sales. 7 Stansbury




2
    PTO ¶ 1.
3
    Tr. 378, 401 (Stovall); PTO ¶ 2.
4
    PTO ¶ 3.
5
    Id. ¶ 3; Tr. 11-13 (Stansbury); Tr. 337-38 (Scholl).
6
    Tr. 12-13, 118 (Stansbury); Tr. 335-38 (Scholl).
7
    Tr. 7-16, 9-24 (Stansbury); Tr. 380 (Stovall); PTO ¶¶ 4-6.

                                                3
began working with mGage on March 16, 2015.8 He is currently mGage’s head of

sales and oversees mGage’s sales force and account managers across the country. 9

           B.     Hipcricket Explores Strategic Alternatives

           In 2014, Hipcricket retained Canaccord Genuity to explore and evaluate

potential strategic alternatives. 10 An online data room was created. 11 To gain

access to the data room, interested parties were required to sign a non-disclosure

and confidentiality agreement. 12

           In April 2014, in connection with evaluating a potential acquisition of

Hipcricket, mGage executed a non-disclosure and confidentiality agreement.13

Between September and December 2014, numerous individuals employed by or

affiliated with mGage accessed the data room, which contained information about

Hipcricket’s customer, vendor, and employee relationships.14 mGage also received

detailed information regarding Hipcricket’s customer relationships through e-




8
    PTO ¶ 6.
9
    Tr. 59 (Stansbury); PTO ¶ 6.
10
     PTO ¶ 11.
11
     Id.
12
     Id.
13
     Id.; JX 3.
14
     JX 4; PTO ¶¶ 11-12.
                                            4
mails,15 and met with certain Hipcricket employees, including Stansbury. 16 In late

2014, mGage decided not to pursue a transaction with Hipcricket. 17

          C.       Stansbury’s Commission Agreement with Hipcricket

          As condition of his employment with Hipcricket, Stansbury entered into

annual agreements with the company. Relevant here, the last agreement he signed

before leaving the company was effective for the period from March 1, 2014 to

February 28, 2015 (the “Commission Agreement”).18

          The Commission Agreement set forth the rates of, and other the terms and

conditions governing, commission and bonus award payments Stansbury could

receive for generating sales for the company.          It provided that commission

payments would be “paid on the month-end pay date following the month in which

the client is billed,”19 and that certain other bonus payments and awards would be

paid after the close of the previous quarter or at the end of Hipcricket’s fiscal year,

which was at the end of February. 20



15
     E.g. JX 6; see also Tr. 360-63 (Scholl).
16
     Tr. 18-19, 142 (Stansbury).
17
     PTO ¶ 13; Tr. 350-51 (Scholl).
18
     JX 1 § 3(b).
19
     Id. § 5(b).
20
     Id. §§ 5(f), 7.

                                                5
          The Commission Agreement contained several provisions prohibiting

Stansbury from taking certain actions after his employment with the company

ended. Section 10 prohibited Stansbury from soliciting Hipcricket customers for a

period of two years after his employment ended:

          For a period of two (2) years after the date of termination of Sales
          Professional’s employment with Employer, Sales Professional shall
          not, directly, or indirectly, solicit Employer’s Clients for the purpose
          of selling such client services then offered or available through
          Employer. 21

Section 9 of the Commission Agreement prohibited Stansbury from soliciting

certain employees for a period of one year after his employment ended:

          During the term of Sales Professional’s engagement or employment
          and for one year thereafter, The Sales Professional will not cause or
          attempt to cause any Sales Professional of the Company to cease
          working for the Company to retain an engagement or employment
          with another employer that is a competitor of the Company’s. . . . 22

Finally, Section 8(iii) of the Commission Agreement required Stansbury to

maintain the confidence of Hipcricket’s trade secrets during and after his

employment with the company:


21
   Id. § 10. The Commission Agreement defines “Employer’s Customers” [sic] as “all
persons, firms, corporations, partnerships, limited liability companies and other legal
entities and all governmental bodies or agencies (including municipalities) for which
Employer is providing services as of the date of termination of Sales Professional’s
employment with Employer,” and defines “Employer’s Prospective Customers” [sic] as
“all persons with whom the Sales Professional had material contact and/or whom they
serviced in their role as a Sales Professional of the Company.” Id.
22
     Id. § 9.

                                             6
         The Sales Professional agrees that during their engagement or
         employment with the Company and after their termination, the Sales
         Professional will keep in confidence and trust and will not use or
         disclose any Trade Secret or anything relating to any Trade Secret, or
         deliver any Trade Secret to any person or entity outside the Company
         without the prior written consent of an officer of the Company. 23

The foregoing provisions in Sections 8-10 of the Commission Agreement are

referred to hereafter as the “Post-Employment Restrictions.”

         D.      Hipcricket Files for Bankruptcy

         On January 20, 2015 (the “Petition Date”), Hipcricket commenced a

voluntary case under chapter 11 of the Bankruptcy Code in the United States

Bankruptcy Court for the District of Delaware. 24 After filing for bankruptcy,

Hipcricket continued to operate its business as a debtor-in-possession under the

jurisdiction of the bankruptcy court.25




23
   Id. § 8(iii). The Commission Agreement defines a “Trade Secret” as “any method,
technique, drawing, process, financial data, financial plan, product plan or list of actual or
potential customers or vendors and suppliers of the Company or any portion or part
thereof, whether or not copyrightable or patentable, that is of value to the Company and
is not generally known to competitors of the Company or to the public, and whose
confidentiality is maintained . . . in each case to the extent that the Company, as the
context requires, derives economic value, actual or potential, from such information not
being generally known to, and not being readily ascertainable by proper means by, other
persons or entities who can obtain economic value from its disclosure or use.” Id.
24
     PTO ¶ 14.
25
     See, e.g., JX 337.

                                              7
         The bankruptcy court approved an auction and sales process. Hipcricket

ultimately selected a bid from, and eventually became a wholly owned subsidiary

of, ESW Capital, LLC when it emerged from bankruptcy on May 15, 2015.26

         E.     Stansbury Leaves Hipcricket for mGage
         On January 22, 2015, Stansbury learned about Hiprcricket’s bankruptcy

filing.27 That same day, he pulled reports from Salesforce, a program which

Hipcricket used to track accounts, opportunities and activities, 28 and sent the

reports to himself through Hightail, a cloud-based program for sending and storing

large files. 29 Stansbury testified that he never looked at, opened, or downloaded

any of the Salesforce reports he sent to his Hightail account, 30 and that the

Salesforce reports he sent there were set to expire automatically a week after he

sent them, meaning that he no longer could access them after that time. 31

         Soon after learning about Hipcricket’s bankruptcy filing, Stansbury

contacted Jay Sheth, mGage’s Chief Executive Officer at the time, whom


26
     PTO ¶¶ 10, 14; Tr. 379 (Stovall).
27
     Tr. 19-20 (Stansbury).
28
     Tr. 149-150 (Stansbury); JX 1 § 4(b).
29
     Tr. 20-25 (Stansbury); JX 7.
30
     Tr. 22-24 (Stansbury).
31
   Id.; JX 7. According to Stansbury, the files expired because he was using a trial
version of the Hightail software. Tr. 24.

                                             8
Stansbury had met during mGage’s due diligence of Hipcricket. 32 On March 5,

2015, Stansbury accepted a job offer from mGage with a March 16 start date. 33 On

March 10, Stansbury signed an “Employment Covenants Agreement” with mGage

containing non-solicitation and confidentiality provisions similar to the Post-

Employment Restrictions in the Commission Agreement. 34

         On March 6, 2015, Stansbury sent an e-mail to Doug Stovall, who was then

President of Hipcricket, stating that he was resigning from Hipcricket.35 Stansbury

stayed another week and officially stopped working for Hipcricket on March 13.36

Before leaving, Stansbury asked Stovall how Hipcricket wanted him to notify his

clients that he was leaving the company. 37       Stovall never responded to this

request.38




32
     Tr. 141-143 (Stansbury).
33
     JX 16.
34
     Id. at mGage - 010314-22.
35
     JX 17.
36
     See JX 17; JX 18.
37
     Tr. 34-35 (Stansbury); JX 18.
38
     Tr. 35 (Stansbury); Tr. 479 (Stovall).

                                              9
         F.     Hipcricket Explains to Stansbury How Amounts He Had Earned
                Would Be Treated in the Bankruptcy Proceeding
         After Hipcricket filed for bankruptcy, payments to Hipcricket employees

became governed by the Bankruptcy Code. On March 18, 2015, Tiffany Bradford,

Hipcricket’s Director of Finance, sent Stansbury a letter and an e-mail advising

him how his compensation and other items would be treated in the bankruptcy

proceeding. 39 Bradford explained that, for all employees, Hipcricket was only

permitted to give priority treatment to pay wages earned pre-petition up to a cap of

$12,475, and that any pre-petition wages above this cap would become an

unsecured claim for which Stansbury could file a proof of claim.40

         The materials Bradford sent Stansbury on March 18 included a schedule

containing a detailed explanation of the pre-petition and post-petition amounts

concerning Stansbury. The schedule showed that, after Hipcricket paid Stansbury

$12,475 under the wage cap, Stansbury would have a general unsecured claim in

the amount of $30,831, consisting of $9,427 of personal time off (PTO) that was

“accrued pre-petition” and $21,404 in commissions that were “earned pre-

petition.” 41


39
     JX 24; JX 25.
40
     JX 24; JX 25; see also Tr. 459-460, 463-64 (Bradford).
41
   JX 25 at HC000154. For simplicity, I have dropped the cents from the figures in
Stansbury’s proof of claim throughout this opinion.

                                             10
         Under the bankruptcy process, Hipcricket was permitted to pay Stansbury

salary and commissions he earned post-petition. Stansbury confirmed he received

these amounts. 42

         G.     Hipcricket Rejects the Commission Agreement to Clear the Way
                For Confirmation of its Reorganization Plan
         On March 20, 2015, Hipcricket proposed a plan of reorganization, which it

amended on March 31 (the “Reorganization Plan”). 43 On April 3, 2015, Hipcricket

filed a schedule of assumed contracts and unexpired leases.44 Hipcricket included

the Commission Agreement on the schedule as a contract it intended to assume,

and designated the cure cost for the Commission Agreement as “$0.00.” 45

         On April 15, 2015, after learning that Stansbury allegedly had solicited one

of its customers, Hipcricket sent Stansbury a letter demanding that he “cease and

desist” from further customer solicitations.46     On April 28, 2015, Stansbury’s

counsel responded to the cease-and-desist letter, asserting that the Commission

Agreement was unenforceable due to Hipcricket’s rejection of the agreement. 47

42
     Tr. 269, 273-274 (Stansbury); JX 145.
43
     JX 335; JX 337.
44
     JX 339; JX 340.
45
     JX 340 at 75; Tr. 483-484 (Stovall).
46
     JX 58.
47
   JX 83. Counsel apparently was anticipating that the Commission Agreement would be
rejected, because that did not actually occur until May.

                                             11
           On April 30, 2015, Stansbury filed a proof of claim with the bankruptcy

court using the calculations he received from Bradford on March 18, which were

attached to the proof of claim. 48 Consistent with those calculations, Stansbury’s

proof of claim listed as “due and outstanding” a $30,831 “unsecured non-

priority” claim. 49

           On May 11, 2015, Stansbury objected in the bankruptcy court to

Hipcricket’s “attempt to assume or accept specific clauses in the Commission

Agreement [i.e., the Post-Employment Restrictions], without honoring the

Agreement in full” by paying him the amounts listed in his proof of claim. 50 That

same day, Hipcricket submitted a brief in support of confirmation of the

Reorganization Plan in which it acknowledged that Stansbury and four other

employees had objected to the assumption of their Post-Employment

Restrictions, 51 and stated that “[t]he Debtor has removed the agreements in

question from the Schedule,” thereby mooting their objections. 52



48
     JX 86; Tr. 52-54 (Stansbury)
49
     JX 86.
50
     JX 342, ¶ 6; Tr. 57 (Stansbury).
51
  JX 421 p. 2, ¶ 3. The brief referred to assuming the employees’ “Confidentiality and
Non-Solicitation Agreements,” which I understand to mean, in Stansbury’s case, the
Post-Employment Provisions in his Commission Agreement.
52
     Id.

                                          12
         Hipcricket’s decision not to assume the Commission Agreement and the

agreements of the other four objecting employees cleared the path for the

bankruptcy court to approve the Reorganization Plan. 53 On May 15, 2015, the

bankruptcy court entered an order confirming the Reorganization Plan, which

provided for the rejection of “all other executory contracts and unexpired leases”

other than those assumed. 54

         H.     Stansbury’s Communications with Hipcricket Clients

         When Stansbury left Hipcricket to join mGage, he asked Kimya Coker, an

mGage marketer, to draft a form e-mail to go to his contacts regarding his

employment with mGage. 55              The e-mail, entitled “Good news…,” stated as

follows:

         Hi ____ - I hope you’re doing great. I want to let you know that I’m
         no longer working at Hipcricket. I haven’t updated my LinkedIn yet
         and that’s the last way you should find out.

         The good news: I’ve joined mGage, a 15-year leader in the mobile
         marketing space and a trusted provider for over 1,000 brands across
         the globe. They’re also the foremost expert in short code migration for
         companies looking to transition their short codes and messaging with
         no downtime, service interruption, or hassle.

         I would love the opportunity to work together again soon, and I’m
         hoping we can catch up when you have minute so I can explain why I

53
     JX 343 ¶ NN; Tr. 57-58 (Stansbury); Tr. 485-86 (Stovall).
54
     JX 343 ¶ MM; Tr. 486 (Stovall).
55
     Tr. 60-62 (Stansbury).

                                              13
         joined mGage. Let me know when you’re free -- does next week
         work? 56

Coker sent the “Good news” e-mail to all of Stansbury’s contacts for him. 57

         At trial, Hipcricket adduced evidence of contacts between Stansbury and a

number of its customers, which is summarized below. This evidence demonstrates

that Stansbury solicited a number of Hipcricket customers almost immediately

after joining mGage and during the ensuing months.58

                1.     iHeart

         On March 23, 2015, one week after joining mGage, Stansbury, asked

Michelle Savoy, a former iHeart employee, for contact information for the person

in charge of iHeart’s mobile messaging business. 59 iHeart, which is sometimes

referred to as Clear Channel Broadcasting, 60 is an owner and operator of radio




56
     JX 34 (emphasis in original); see also JX 39; JX 41.
57
     Tr. 61-62 (Stansbury).
58
   In a footnote to its post-trial brief, Hipcricket asserts without any meaningful
elaboration that Stansbury also solicited several other Hipcricket customers:
MillerCoors, PKSW, and Reach Media. Pl.’s Post-Trial Op. Br. 26 n.31.
59
     Tr. 123, 168-69 (Stansbury); JX 30.
60
     Tr. 398-99 (Stovall).

                                              14
stations and was Hipcricket’s largest customer. 61     Savoy suggested contacting

Michael Biondo, a member of the “core digital team.” 62

         On April 14, 2015, Stansbury sent Biondo an e-mail to which he attached a

Powerpoint presentation detailing mGage’s mobile marketing capabilities. The e-

mail described Stansbury’s familiarity with Biondo from his time at Hipcricket and

asked Biondo to considering switching iHeart’s business from Hipcricket to

mGage:

         I wanted to take this opportunity to introduce myself and my company
         mGage. I believe I had met you when I worked at Hipcricket.
         Obviously by email you can see I recently left Hipcricket and have
         joined mGage and I would welcome the opportunity to meet with you
         in NYC next week and talk about how we can help with all your
         mobile marketing needs. I know that iHeart is a very large and
         extensive client and I have worked with Kristi Miller when we were
         both at Hip and have a good understanding of iHeart and your mobile
         needs. I assure you that if any mobile company out there could
         manage your services and make the switch from your current provider
         to a new mobile firm it would be us. Not only can I assure a smooth
         transition but I am very confident we can provide you with great
         service and a much more cost effective way to manage all of this
         versus what you are currently paying.63

Stansbury acknowledged at trial that his e-mail was “an attempt to obtain iHeart’s

mobile messaging business.” 64        After sending the e-mail, Stansbury shared

61
     JX 55; Tr. 162-63 (Stansbury).
62
     JX 30.
63
     JX 55.
64
     Tr. 172-73 (Stansbury).

                                          15
information with mGage about iHeart’s relationship with Hipcricket, including

revenue estimates and details of the scope of services under the contract.65

         On April 23, 2015, mGage and iHeart executed a non-disclosure

agreement.66 Stansbury asked Biondo for “as much detail as possible” about the

services and features Hipcricket currently provided to iHeart, including the number

of short codes, whether such short codes were provisioned for MMS,67

Hipcricket’s features and campaigns, and any custom functionality. 68 In an effort

to further entice iHeart, Stansbury mentioned the possibility of mGage hiring Kristi

Miller, the former iHeart account manager at Hipcricket.69

         mGage made several presentations and proposals to iHeart, which

culminated in a draft master services agreement that was presented on May 18.70

As part of its proposal, mGage offered iHeart significant pricing concessions,




65
     Tr. 173-74 (Stansbury); JX 70.
66
     JX 75; Tr. 126-27, 175-77 (Stansbury).
67
   MMS messages are multimedia, and can include pictures or video, as distinguished
from SMS messages, which are text-only. Tr. 9 (Stansbury). A “short code” is
“basically . . . a phone number for short message systems, for SMS and MMS.” Tr. 174
(Stansbury).
68
     JX 75; Tr. 175-76 (Stansbury).
69
     JX 75; Tr. 176-77 (Stansbury); see also JX 97; Tr. 309-310 (Miller).
70
     JX 114.

                                              16
including unlimited messaging, converting short codes to MMS at no charge, and

waiving certain fees. 71

           Throughout the process of soliciting iHeart, Stansbury worked with his

superiors at mGage, including James Citron, mGage’s Chief Revenue Officer.72

Stansbury provided Citron a list of iHeart’s short codes that “were associated to the

Hip[cricket] platform.” 73 As of July 2, Stansbury believed that mGage was “the

front runner” to obtain iHeart’s mobile messaging business.74

           After mGage’s initial presentation to iHeart, Biondo called Stovall at

Hipcricket to tell him about mGage’s proposal.75 Using the favorable terms of

mGage’s proposal as leverage, Biondo asked Stovall, “[w]hat are you guys going

to do to keep our business?” 76 Biondo was seeking to obtain better terms from

Hipcricket even though iHeart’s contract with Hipcricket at the time was not due to

expire until November 30, 2016. 77



71
     JX 98; JX 106; JX 108; JX 109; Tr. 184-87 (Stansbury).
72
     Tr. 169-171 (Stansbury).
73
     JX 79.
74
     JX 317; Tr. 194 (Stansbury).
75
     Tr. 391-94 (Stovall).
76
     Id.
77
     JX 146 § 7; Tr. 399-400 (Stovall).

                                            17
           Biondo sent Stovall a version of mGage’s proposal. 78 After reviewing it,

Stovall became concerned that mGage’s proposed fees and the number of short

codes in the proposal were strikingly similar to those that Hipcricket was providing

iHeart.79       According to Stovall, he had no choice but to make numerous

concessions on pricing and services to retain iHeart’s business because it was

Hipcricket’s largest customer. 80 These negotiations began in June 2015 but did not

result in a signed agreement until after trial, on December 7, 2015.81

                 2. FordDirect/Team Detroit

           While he was at Hipcricket, Stansbury did work for FordDirect, which was

his largest client, and Team Detroit.82 FordDirect is a company formed by Ford

Motor Company to manage technology for its dealer groups.83 Team Detroit is an

advertising agency that handles Ford commercials.84 Before he left Hipcricket,

Stansbury advised FordDirect that he was leaving, which prompted FordDirect to




78
     JX 116; JX 117.
79
     Tr. 393-96 (Stovall); see also Tr. 189-90 (Stansbury).
80
     Tr. 395-96, 400, 524-25 (Stovall).
81
     Pl.’s Post-Trial Op. Br. 19.
82
     JX 18.
83
     Tr. 64-65 (Stansbury).
84
     Id.
                                              18
ask where he was going,85 and mGage asked Stansbury to plan to attend a meeting

with Team Detroit that was in the process of being scheduled. 86

         mGage and its predecessor entities had past client relationships with

FordDirect and Team Detroit.87 After he joined mGage, Stansbury was tasked

with managing the Ford relationships because he “used to run the Ford relationship

at his former employer and knows these folks well.”88

         On March 23, 2015, FordDirect issued a request for proposal (RFP) for

mobile services, seeking bids by April 6. On March 28, Citron asked Stansbury to

“share any & all documents (i.e. flows, etc.) that you think will be helpful” to

prepare a bid in response to the RFP.89 To assist with mGage’s preparation of a

bid, Stansbury circulated internal Hipcricket documents to other mGage

employees.90 One document consisted of an “upsell” that Stansbury “was working

on with Ford Direct” to solicit business for Hipcricket. It was stamped “©2013

Hipcricket – Confidential and Proprietary.” 91            Another document came from

85
     Tr. 147 (Stansbury): JX 13 at mGage – 002389.
86
     JX 255; Tr. 72 (Stansbury).
87
     Tr. 67-68 (Stansbury); 357-59 (Scholl).
88
     JX 22; see also Tr. 75 (Stansbury), 357 (Scholl).
89
     JX 209.
90
     JX 32; JX 33.
91
     JX 33; see also Tr. 83, 234-35 (Stansbury); Tr. 432 (Stovall).

                                               19
Hipcricket’s internal “JIRA” system, which tracked information on the FordDirect

account, including contacts and technical information about “message flow

components.”92 Stansbury testified he did not know where he obtained these

documents.93 That testimony is not credible.

         Stansbury also helped mGage recruit a former Hipcricket employee (Greg

Hoy) to help mGage solicit FordDirect. Hoy engineered Hipcricket’s pricing and

products for FordDirect, including the “rate cards” Hipcricket used to price

contracts with all of its clients.94

                3. Cumulus Media

         In early April, 2015, Stansbury began assisting Darren Metzger, director of

enterprise sales at mGage, in his pursuit of business from Cumulus Media, an

owner and operator of radio stations. 95           Although Stansbury did not have a

relationship with Cumulus while he was at Hipcricket, he knew it was a Hipcricket

customer. 96




92
     JX 32; Tr. 82-84 (Stansbury); Tr. 428-31 (Stovall).
93
     Tr. 82-86 (Stansbury).
94
     See, e.g., JX 44; JX 56; JX 60; Tr. 237-38, 204-41 (Stansbury).
95
 JX 49; 211-14 (Stansbury). Metzger is the lead salesperson for mGage on the Cumulus
Media account. He now reports to Stansbury. Tr. 556, 560-61 (Metzger).
96
     Tr. 114, 217 (Stansbury).

                                              20
         With Stansbury’s help, Metzger reached out to various stations owned by

Cumulus Media. 97 Stansbury actively gathered information about the services and

pricing Hipcricket offered to Cumulus Media to assist Metzger in his efforts,98

including information about Cumulus Media station contracts with Hipcricket and

messaging volume that he “pulled together.” 99 Metzger testified that mGage was

able to successfully obtain business with KRBE, a Cumulus Media station located

in Houston, 100 which he hoped would result in future business for mGage with

Cumulus Media.101

                4. Long John Silvers

         Long John Silvers was a Hipcricket mobile messaging client that Stansbury

serviced during his employment with Hipcricket. 102              On March 17, 2015, in

response to a request from Aimee U’Sellis at Long John Silvers, Stansbury e-

mailed her an executable version of a master services agreement with mGage.103

Stansbury followed up with multiple e-mails to Long John Silvers in an effort to

97
     Tr. 214, 217-18, 221 (Stansbury); Tr. 570-72, 582-83 (Metzger).
98
     JX 65; JX 66; Tr. 215 (Stansbury); Tr. 584-591 (Metzger).
99
     JX 65; Tr. 215-16.
100
      Tr. 552-53 (Metzger).
101
      Tr. 598-99 (Metzger).
102
      JX 18.
103
      JX 23; Tr. 194-96 (Stansbury).

                                             21
obtain their business. 104      mGage was aware of these solicitations and pushed

Stansbury to close on a contract with Long John Silvers before the end of the first

quarter of 2015. 105

                5. Digitas

         Stansbury worked on the Digitas account while at Hipcricket. 106 Digitas

completed the automated lead system on mGage’s website and requested a

proposal from mGage. 107 In an e-mail dated April 14, 2015, Stansbury sought to

be in control of, and assumed responsibility for, this account because he “worked

with Johnathan [Digitas’ contact person] on several projects at Hip.”108 Stansbury

was assigned the lead and responded to Digitas’ request. 109

                6. MGM/Mandalay Bay

          Stansbury was not responsible for the MGM account while he was

employed at Hipcricket.110 On April 1, 2015, a number of MGM employees

received and responded to Stansbury’s form e-mail announcing his arrival at

104
      JX 28; JX 112; JX 122; Tr. 196-97, 199-202 (Stansbury).
105
      JX 31; Tr. 197-98 (Stansbury).
106
      JX 18; Tr. 202-203 (Stansbury).
107
      Tr. 107 (Stansbury).
108
      JX 53; see also JX 54; JX 68; Tr. 204-07 (Stansbury).
109
      JX 53; Tr. 107-09 (Stansbury).
110
      Tr. 100 (Stansbury).

                                             22
mGage. 111 Despite being informed that MGM/Mandalay Bay was “very happy

with the services and partnership provided by Hipcricket, 112 Stansbury continued to

send e-mails later in April and early in May to Lou Ragg, a former MGM

employee, to attempt to set up a meeting. 113

                7. Virginia Lottery

         Virginia Lottery was one of the largest accounts Stansbury serviced while he

was with Hipcricket.114 mGage put a team together to respond to an RFP that

Virginia Lottery issued in July 2015. 115 Stansbury was part of this team along with

a salesman, account managers, and many other persons. 116

                                          *****

         As of trial, Hipcricket had not lost any of the accounts discussed above to

mGage, although Hipcricket claimed that it was forced to renegotiate its contract

with and make significant price concessions to iHeart because of mGage’s

solicitations with Stansbury’s assistance. Hipcricket also claims that it learned at



111
      JX 34 JX 37; JX 41; Tr. 208 (Stansbury).
112
      JX 34.
113
      JX 71; JX 94; Tr. 209-10 (Stansbury).
114
      Tr. 164 (Stansbury).
115
      Tr. 120 (Stansbury).
116
      Tr. 120, 251 (Stansbury).

                                              23
trial that defendants’ actions impacted its relationships with other customers, such

as Viriginia Lottery and Cumulus Media. 117

         I.      mGage Interviews and/or Hires Former Hipcricket Employees

         Hipcricket accuses Stansbury of violating the Commission Agreement by

soliciting several of its current and former employees. The record shows that

Stansbury had contact with several such employees, but that in each case the

Hipcricket employee initiated contact with Stansbury, whose only involvement

was to refer the individuals in question to mGage’s human resources department:

              • Lindsey Houser, a former Hipcricket Account Director,
                contacted Stansbury in March 2015 to see “if there were any
                opportunities at mGage.” Stansbury referred her to human
                resources at mGage. Houser left Hipcricket on August 14,
                2015. She received an offer from mGage on September 1,
                2015, which she accepted.118

              • Tracey Dreby was a former Hipcricket Account Director who
                worked on several accounts with Stansbury, including
                FordDirect, Team Detroit, and Virginia Lottery. While still a
                Hipcricket employee, she reached out to Stansbury about
                potential employment at mGage. Stansbury “referred her
                immediately” to mGage’s human resources department.
                mGage made an employment offer to Dreby on May 7, which
                she accepted, and her last day with Hipcricket was on or
                around May 22, 2015. 119



117
      Pl.’s Post-Trial Reply Br. 26.
118
      Tr. 320-26 (Houser); Tr. 136-37 (Stansbury).
119
      PTO ¶ 7; JX 18; JX 128; Tr. 33-34, 38, 138 (Stansbury); Tr. 436 (Stovall).

                                              24
              • Kim Donaldson, a former Hipcricket salesperson, asked
                Stansbury about employment at mGage. Stansbury referred
                her to mGage’s Vice President of Sales, Scott Lancaster.
                Although Donaldson met with Lancaster to discuss a position,
                mGage did not hire her.120

II.       PROCEDURAL POSTURE

          On June 11, 2015, Hipcricket filed its original Verified Complaint together

with a motion for a temporary restraining order (TRO) and preliminary injunction.

In its TRO motion, Hipcricket sought, among other things, (i) to enjoin mGage

from soliciting customers using any evaluation material it had received from

Hipcricket under a non-disclosure agreement in connection with mGage’s due

diligence of a potential acquisition of Hipcricket, and (ii) to enjoin Stansbury from

violating the Commission Agreement by soliciting Hipcricket customers or using

any of its confidential information.121

          On June 17, 2015, I granted the TRO motion as to mGage, in part, but

deferred ruling on the relief sought against Stansbury so that the parties could

submit briefs addressing whether the Commission Agreement was enforceable

given Hipcricket’s bankruptcy filing.122


120
      JX 101; Tr. 261 (Stansbury).
121
      Dkt. 3 at 2.
122
   Dkt. 22; Tr. of Temporary Restraining Order H’rg at 76-77 (June 17, 2015). On
November 30, 2015, the TRO against mGage was vacated after mGage returned all
evaluation material to Hipcricket. Dkt. 104.

                                           25
          On July 16, 2015, after receiving additional briefing and hearing argument, I

denied Hipcricket’s motion for a preliminary injunction against Stansbury because

Hipcricket failed to demonstrate a reasonable probability of success of proving on

the merits that the Commission Agreement was enforceable. 123 In particular, I

found based on the preliminary record that the Commission Agreement was an

executory contract, and that Hipcricket had materially breached the Commission

Agreement as of the petition date by not assuming its obligations, thereby excusing

Stansbury from having to further perform under the Commission Agreement. 124

          On July 31, 2015, the Court entered a stipulated scheduling order setting this

matter for trial beginning on November 2, 2015. On October 19, 2015, Hipcricket

asked to bifurcate the trial to proceed as to liability and injunctive relief in

November, and to address its request for damages at a later date. Hipcricket

explained that the bulk of its damages claim involved its largest customer (iHeart)

with which it was in the midst of renegotiating a contract, and that it expected that

those “negotiations will be completed over the next couple of weeks.” 125 On




123
    Tr. of Oral Arg. (“July 16 Tr.”) at 79-80, 86 (July 16, 2015). Given the lapse of time
since the June 17 hearing, I treated the motion as one for a preliminary injunction. Id. at
80.
124
      Id. at 85-86.
125
      Dkt. 73 at 2.

                                            26
October 22, I denied Hipcricket’s request to bifurcate the trial, but I postponed the

trial by one month to allow Hipcricket to develop its damages theory. 126

         On October 20, 2015, after the close of fact discovery, Hipcricket filed a

Verified Amended Complaint (the “Complaint”). It contains the following seven

claims for relief:

             (1) Breach of the Commission Agreement against Stansbury.

             (2) Aiding and abetting a breach of the Commission Agreement
                 against mGage.
             (3) Civil conspiracy against mGage and Stansbury.

             (4) Unfair competition against mGage and Stansbury.
             (5) Violation of the Washington Uniform Trade Secrets Act
                 against mGage and Stansbury.

             (6) Tortious interference with business relations against mGage
                 and Stansbury.
             (7) Imposition of a constructive trust against mGage and
                 Stansbury. 127

         On November 22, 2015, defendants filed a motion in limine to preclude

Hipcricket from presenting proof of damages at trial using documents it did not

produce to defendants until November 19.128 I reserved judgment on defendants’

motion in limine, allowing plaintiffs to present their damages theory at trial subject

126
      Dkt. 82; Dkt. 85.
127
      Compl. ¶¶ 29-64.
128
      Dkt. 95.

                                          27
to having it stricken at a later time. 129 On November 30, Hipcricket’s corporate

representative was deposed about Hipcricket’s damages contentions.

         Trial was held on December 1-2, 2015. Hipcricket did not have a damages

expert at trial and presented no formal evidence to support a case for monetary

damages. 130 Post-trial argument was heard on April 4, 2016.

III.     LEGAL ANALYSIS

         A threshold issue governing most of Hipcricket’s claims is whether the Post-

Employment Restrictions are enforceable given how the Commission Agreement

was treated in Hipcricket’s bankruptcy. I address that issue first and then turn to

the remaining claims.

         A.     The Post-Employment Restrictions Are Not Enforceable Because
                Hipcricket Rejected the Commission Agreement in Bankruptcy
         Under the Bankruptcy Code, with certain exceptions not relevant here, a

debtor in possession in a chapter 11 case “may assume or reject any executory

contract” subject to the court’s approval. 131 The Third Circuit has defined an

executory contract as “a contract under which the obligation[s] of both the

bankrupt and the other party to the contract are so far unperformed that the failure

129
      Pre-Trial Conf. Tr. at 15 (Nov. 30, 2015).
130
    Stovall testified at trial about price concessions he claims Hipcricket was forced to
make as a result of mGage’s solicitations with Stansbury’s assistance. Tr. 404-15. But
this testimony was a far cry from a reliable form of damages analysis.
131
      11 U.S.C. § 365(a).

                                              28
of either to complete performance would constitute a material breach excusing the

performance of the other.”132

            In denying Hipcricket’s motion for a preliminary injunction against

Stansbury early in this case, I held on a preliminary basis that the Commission

Agreement was an executory contract.               Hipcricket has not argued otherwise

since.133       To the contrary, the premise of its post-trial position is that the

Commission Agreement was an executory contract that Hipcricket had the ability

to assume or reject in the bankruptcy proceeding. 134 Thus, it is undisputed that the

Commission Agreement was an executory contract.

            Hipcricket also admits in its post-trial brief that it rejected the Commission

Agreement in the Bankruptcy proceeding. 135 This conclusion logically follows

from the fact that, although Hipcricket initially included the Commission

132
   Cincola v. Scharffenberger, 248 F.3d 110, 123 (3d Cir. 2001) (internal quotations
omitted).
133
   By failing to argue in its post-trial brief that the Commission Agreement was not an
executory contract, Hipcricket has waived that argument. See, e.g., Emerald P’rs v.
Berlin, 2003 WL 21003437, at *43 (Del. Ch. Apr. 28, 2003) (“It is settled Delaware law
that a party waives an argument by not including it in its brief.”), aff’d, 840 A.2d 641
(Del. 2003).
134
    See Pl.’s Post-Trial Op. Br. 44-45 (“the ultimate non-assumption of the Commission
Agreement as part of Hipcricket’s Amended Plan of Reorganization is of no moment”),
45 (accusing Stansbury of violating the Commission Agreement “months before
Hipcricket rejected the Commission Agreement”) & n.51 (“The fact that Stansbury
resigned shortly after the Petition Date further renders the ultimate rejection of the
Commission Agreement months later meaningless”).
135
      Id.

                                              29
Agreement in a schedule of contracts to be assumed as part of its Reorganization

Plan, it amended the schedule to omit the Commission Agreement in response to

Stansbury’s objection. 136      The final Reorganization Plan approved by the

bankruptcy court on May 14, 2015, specifically rejected all executory contracts

that the company did not assume, including the Commission Agreement. 137

         The next question is: What is the legal effect of Hipcricket’s decision to

reject the Commission Agreement in the bankruptcy proceeding?

         The Bankruptcy Code provides that “. . . the rejection of an executory

contract . . . of the debtor constitutes a breach of such contract . . . immediately

before the date of the filing of the petition. . . .” 138 The parties agree on this point

of bankruptcy law. 139      Although federal bankruptcy law controls whether an

executory contract has been breached by a debtor’s rejection of the contract,

“rejection does not affect the parties’ substantive rights under the contract.” 140 To


136
   JX 343 ¶ NN & n.4 (noting removal of “Objecting Employee Agreements” from the
previous schedule of assumed contracts and unexpired leases).
137
   Id. ¶ MM (“Section 8.2 of the Plan provides for the rejection of all other executory
contracts”).
138
      11 U.S.C. § 365(g).
139
   Pl.’s Post-Trial Op. Br. 42. (“rejection of a contract by the debtor is deemed a breach
as of the petition date”); Defs.’ Post-Trial Ans. Br. 28 (“When a debtor rejects an
executory contract, the rejection constitutes a breach of such contract occurring
immediately before the date the debtor filed its bankruptcy claim.”)
140
   Cincola, 248 F.3d at 119 n.8 (3d Cir. 2001) (citing 3 Collier on Bankruptcy ¶¶ 365.09,
365.09[1] (Lawrence P. King ed., 15th ed. 1999); see also In re Beck, 272 B.R. 112, 120-
                                           30
determine the legal the effect of a breach of a rejected contract, one must look to

the applicable state law. The Second Circuit has explained this intersection of

federal bankruptcy and state law as follows:             “The Bankruptcy Code treats

rejection as a breach so that the non-debtor party will have a viable claim against

the debtor. However, the Code does not determine parties’ rights regarding the

contract and subsequent breach. To determine these rights, we must turn to state

law.” 141

         The Commission Agreement is governed by Washington law. 142 Under

Washington law, a party in material breach of a contract may not demand

performance from the non-breaching party. 143 Washington law further provides

that a “material breach is one serious enough to justify the other party’s




21 (Bankr. E.D. Pa. 2002) (“Rejection does not . . . affect the parties’ substantive rights
under the contract or lease, such as the amount owing or a measure of damages for
breach.”) (citing same section of Collier treatise ); In re Fleming Cos., Inc., No. 03-
10945, 2007 WL 788921, at *3 (D. Del. Mar. 16, 2007) (“[T]he Third Circuit has
explained that rejection of an executory contract does not alter the substantive rights of
the parties.”) (internal quotation omitted).
141
      In re Lavigne, 114 F.3d 379, 387 (2d Cir. 1997).
142
      JX 1 § 3(g).
143
    E.g., DC Farms, LLC v. Conagra Foods Lamb Weston, Inc., 317 P.3d 543, 550
(Wash. App. 2014) (“[I]f it is determined that a breach is material, or goes to the root or
essence of the contract, it follows that substantial performance has not been rendered, and
further performance by the other party is excused.”).

                                              31
abandoning the contract because the contract’s purpose is defeated.”144 In the

employment context, Washington courts have expressed a “strong public policy in

favor of ensuring that earned wages are paid,”145 and found that an employer’s

breach of an employment contract excuses performance of a non-compete by an

employee. 146

      In previously denying Hipcricket’s motion for a preliminary injunction, I

found that the amount of Stansbury’s claim against the Company ($31,000) was

material to him and that the company’s failure to pay him this amount would

constitute a material breach of the Commission Agreement. 147 Hipcricket, which

144
   Moore v. Blue Frog Mobile, Inc., 221 P.3d 913, 917 n.2 (Wash. App. 2009) (citing
Park Ave. Condo. Owners Ass’n v. Buchan Devs., L.L.C., 71 P.3d 692, 698 (Wash. App.
2003)).
145
    Morgan v. Kingen, 169 P.3d 487, 495 (Wash. App. 2007); see also Schilling v. Radio
Hldgs., Inc., 961 P.2d 371, 374-75 (Wash. 1998) (“The Legislature also established a
remedy of exemplary damages if an employer willfully refuses to pay wages. . . . By
providing for costs and attorney fees, the Legislature has provided an effective
mechanism for recovery even where wage amounts wrongfully withheld may be small.
This comprehensive legislative system with respect to wages indicates a strong legislative
intent to assure payment to employees of wages they have earned.”) (internal citations
omitted).
146
    See, e.g., Parsons Supply, Inc. v. Smith, 591 P.2d 821, 823 (Wash. App. 1979).
Delaware law follows the same rule. See, e.g., Dickinson Med. Gp., P.A. v. Foote, 1989
WL 40965, at *7 (Del. Super. Mar. 23, 1989) (excusing performance of non-compete
obligations, finding material breach of employment agreement where “[t]he amounts
involved . . . are not de minimis, and the payment of [employee’s] compensation goes to
the essence of this employment agreement.”).
147
    July 16 Tr. at 82. This preliminary finding was based on representations Stansbury’s
counsel made that his annual compensation from Hipcricket ranged from about $100,000
to about $200,000. Id. at 32.

                                           32
had the opportunity to explore this issue in discovery and at trial, does not contend

otherwise.       I independently find that the amount in question was material to

Stansbury based on the trial record, which indicates that $31,000 constituted over

ten percent of his 2015 compensation.148

         Given the materiality to Stansbury of the amount in dispute, I conclude,

based on a straightforward application of Washington law, that Hipcricket’s breach

of the Commission Agreement excused Stansbury from any further obligations he

owed under that agreement, including the Post-Employment Restrictions, as of the

date of the breach. As discussed above, the Bankruptcy Code deems the date of

breach to be immediately before the Petition Date: January 20, 2015.

         Hipcricket makes essentially three arguments for why the Post-Employment

Restrictions should remain enforceable notwithstanding its rejection of the

Commission Agreement in the bankruptcy proceeding. None of them has merit in

my opinion.

         First, Hipcricket argues that, as of the Petition Date, it did not “owe” any of

the amounts sought in Stansbury’s proof of claim and thus there was no breach of

the Commission Agreement because they were not due to be paid to him until

January 31, February 28, and March 31 of 2015. 149            As an initial matter, as

148
      Tr. 266-67 (Stansbury); see also Tr. 31-32.
149
      Pl.’s Post-Trial Op. Br. 41.

                                              33
discussed further below, I see no equity in this argument given Hipcricket’s

assertion during the Bankruptcy proceeding that all of the amounts in Stansbury’s

proof of claim were “pre-petition” claims that were either “accrued” or “earned”

before the Petition Date,150 which caused those amounts to be classified as general

unsecured claims rather than to be given administrative priority. Hipcricket also

cites no legal authority to support the distinction it asks the Court to draw between

an amount being “earned” and “owed.” Ultimately, I need not resolve this issue

because, as discussed previously, the conceded legal effect under the Bankruptcy

Code of Hipcricket’s decision to reject the Commission Agreement is that it is

deemed to have been breached as of the Petition Date.

         Second, relying on the proposition that executory contracts “remain in full

force and effect up to, and until, the time the debtor assumes or rejects such

contract,” Hipcricket complains that Stansbury violated the Post-Employment

Restrictions by soliciting its customers “before Hipcricket rejected the Commission

Agreement.” 151 The problem with this argument is that Hipcricket took no action

to enforce its rights during this period. Had it done so, it may have been entitled to

relief. But it did not. Hipcricket instead waited until June 11 to file this action,

150
   JX 25 at HC000154 (noting that the $9,427 in paid time off was “accrued pre-petition”
and that $21,404 in commissions were “earned pre-petition”). See also JX 24; Tr. 460,
465 (Bradford).
151
      Pl.’s Post-Trial Op. Br. 44-45 & n.50 (citing authorities).

                                                34
after it already had elected to reject the Commission Agreement, which, to repeat,

caused a breach of the agreement as of the Petition Date as a matter of bankruptcy

law and rendered it unenforceable under Washington law as of that time, before

any of Stansbury’s alleged breaches.

      Third, citing several cases involving debtor franchisees, Hipcricket argues

that “post-termination obligations within executory contracts remain enforceable

even after rejection by a debtor in bankruptcy.” 152 This line of cases, for which

there is a split of authority, 153 is inapposite. All of the franchise cases Hipcricket

relies on dealt with the question of whether a debtor’s obligation not to compete

survived its own rejection of the contract containing that obligation. In each of

those cases, under black-letter bankruptcy principles, the debtors breached the

contracts by rejecting them. It is sensible and equitable that a breaching party

should not be excused from its own non-compete obligations just because it

breached the contract. Here, by contrast, it is the breaching debtor who is seeking

to enforce contract rights that it refused to pay for by assuming the contract. Just


152
    Id. at 47-48 (citing Jackson Hewitt Inc. v. Childress, 2008 WL 834386, at *9 (D.N.J.
Mar. 27, 2008); Sir Speedy, Inc. v. Morse, 256 B.R. 657, 659-60 (Bankr. D. Mass. 2000);
In re Steaks to Go, Inc., 226 B.R. 35, 37-38 (Bankr. E.D. Mo. 1998); In re Klein, 218
B.R. 787, 790-91 (Bankr. W.D. Pa. 1998)); see also Pl.’s Post-Trial Reply Br. 13 (citing
In re Don & Lin Trucking Co., Inc., 110 B.R. 562, 568 (Bankr. N.D. Ala. 1990)).
153
   See, e.g., In re Rovine Corp., 5 B.R. 402, 404 (Bankr. W.D. Tex. 1980); see also In re
Annabel, 263 B.R. 19, 23-24 (Bankr. N.D.N.Y. 2001) (examining different lines of cases
dealing with debtor rejection of non-compete agreements arriving at opposite results).

                                           35
as it was inequitable in the franchise cases for the debtors to benefit from using

bankruptcy to avoid their obligations, it would be inequitable here to allow

Hipcricket to enforce a contract that it materially breached.

       In a broader sense, Hipcricket’s position would lead, in my view, to a result

inconsistent with the policy of the Bankruptcy Code concerning executory

contracts.   The purpose of affording a debtor the option to assume or reject

executory contracts is to allow the estate to assume beneficial contracts and to

reject contracts that are less favorable.154 This choice essentially equates to a

decision to perform or to breach.155

       The debtor’s decision to perform or breach has significant consequences for

both the debtor and the creditor. If the debtor chooses to breach, the creditor’s

claim typically becomes an unsecured claim against the estate that is treated pro

154
    In re Orion Pictures Corp., 4 F.3d 1095, 1098 (2d Cir. 1993) (“The purpose behind
allowing the assumption or rejection of executory contracts is to permit the trustee or
debtor-in-possession to use valuable property of the estate and to ‘renounce title to and
abandon burdensome property.’”) (quoting 2 Collier on Bankruptcy ¶ 365.01[1] (15th ed.
1993); see also Michael T. Andrew, Executory Contracts in Bankruptcy: Understanding
‘Rejection’, 59 U. Colo. L. Rev. 845, 847-49 (1988) (“Assumption permits the estate to
obtain the benefits of continued performance by the nondebtor party to the contract, as
would assumption by an ordinary contract assignee. . . . [R]ejection is not the revocation
or repudiation or cancellation of a contract or lease, nor does it affect contract or lease
liabilities. It is simply a bankruptcy estate’s decision not to assume, because the contract
or lease does not represent a favorable or appropriate investment of the estate’s
resources.”).
155
    Jay L. Westbrook, A Functional Analysis of Executory Contracts, 74 Minn. L. Rev.
227, 231 (1989) (“The trustee has the choice of ‘assuming’ a pre-bankruptcy contract or
‘rejecting’ it. These are merely bankruptcy terms for performance or breach.”)

                                            36
rata with other unsecured creditors, and usually yields little or no value. 156 By

contrast, if a debtor elects to assume the contract, it can only gain the benefits of

that contract by agreeing to give administrative priority to the countervailing

burdens, which usually means paying the creditor in full. 157 As the United States

Supreme Court has stated, “[s]hould the debtor-in-possession elect to assume the

executory contract, . . . it assumes the contract cum onere”—meaning with the

burdens that come with it—“and the expenses and liabilities incurred may be

treated as administrative expenses, which are afforded the highest priority on the

debtor’s estate.”158

         Here, Hipcricket rejected the Commission Agreement in May 2015 by

removing it from its list of assumed contracts, and the bankruptcy court confirmed

its Reorganization Plan on that basis. Significantly, Hipcricket knew when it
156
   Id. at 252-53 (“The principle that modifies the trustee’s position, making it much more
favorable than that of the pre-petition debtor, is equality of distribution. That principle
requires that all creditors be treated equally, subject to a number of important exceptions.
It apparently is the most universal of all insolvency principles throughout the world.
From the equality principle comes the rule of pro rata distribution to pre-petition
unsecured creditors. The pro rata rule requires that unsecured creditors share
proportionately in distributions, with the result that almost never are they paid in full.
Their claims are calculated in full under state law, . . . but their actual relief, the payment
of the claims, can be thought of as being in little tiny Bankruptcy Dollars, which may be
worth only ten cents in U.S. dollars.”) (citations omitted).
157
   Id. at 253 (“In sharp contrast, if the trustee assumes a contract, then it is converted into
an estate obligation, a post-petition obligation, and the Other Party becomes entitled to
full performance or payment as an administration claim. Because administration claims
are paid first in any distribution, they are usually paid in full, 100 cent U.S. dollars.”).
158
      N.L.R.B. v. Bildisco and Bildisco, 465 U.S. 513, 531 (1984).

                                              37
rejected the Commission Agreement (1) that Stansbury had resigned from

Hipcricket and joined a competitor (mGage); (2) that the Commission Agreement

contained the Post-Employment Restrictions, which Hipcricket had invoked

against Stansbury in a cease-and-desist letter it sent him on April 15; 159 (3) that

Stansbury had filed a proof of claim on April 30 for amounts Hipcricket deemed to

have been earned or accrued pre-petition, and which were indisputably “owed” by

that date; and (4) that Stansbury objected to Hipcricket assuming the Commission

Agreement as part of the Reorganization Plan without paying his claim in full.

With this information in hand, Hipcricket made a conscious decision to reject the

Commission Agreement, relegating Stansbury’s claim to general unsecured status.

In my opinion, Hipcricket’s plea to “have its cake and eat it too” by demanding the

ability to enforce the Post-Employment Restrictions without accepting the burdens

associated with the Commission Agreement (i.e., giving Stansbury’s claim

administrative priority so it would be paid in full) is not only contrary to the letter

of the law, but would contravene in an inequitable manner the policy behind the

optionality the Bankruptcy Code affords debtors with respect to executory

contracts.




159
      JX 58.

                                          38
          B.      Defendants Are Entitled to Judgment on All Claims Premised on
                  the Unenforceable Commission Agreement
          For the reasons explained above, I have concluded that the Post-

Employment Restrictions in the Commission Agreement are unenforceable.160

Consequently, defendants are entitled to judgment in their favor on each of

Hipcricket’s claims that are premised on establishing a breach of those provisions.

In my opinion, five of the seven claims in the Complaint fall into this category.

          Claims 1 and 2 assert, respectively, that Stansbury breached the Post-

Employment Restrictions in the Commission Agreement and that mGage aided and

abetted the breach of those provisions.161       Thus, both of these claims are plainly

premised on establishing a breach of the Post-Employment Restrictions.

          Claim 3 asserts that defendants conspired to solicit “Hipcricket customers

and employees in violation of the [Commission] Agreement.” 162 Claim 4 asserts

that defendants unfairly competed with Hipcricket by “continuing to violate the

[Commission] Agreement.”163           Claim 6 (tortious interference with business


160
   Because I have found the Post-Employment Restrictions to be unenforceable by virtue
of the bankruptcy proceeding, I do not address defendants’ arguments challenging the
reasonableness of those restrictions under Washington law.
161
      Compl. ¶¶ 30-31, 34-35.
162
      Id. ¶ 38.
163
    Id. at ¶ 45. Hipcricket argues that, separate and apart from any breach of the
Commission Agreement, defendants unfairly competed with Hipcricket by making use of
trade secrets to solicit its customers. See Pl.’s Post-Trial Op. Br. 54-56; Pl.’s Post-Trial
                                            39
relations) asserts that defendants “communicated with various customers of

Hipcricket in violation of the [Commission] Agreement and without the consent or

permission of Hipcricket in an effort to damage Hipcricket’s relationships with

such customers.” 164     Thus, each of these three claims also is premised on

establishing a breach of one or more of the Post-Employment Restrictions.

         Because the contractual provisions upon which claims 1-4 and 6 are each

premised are unenforceable for the reasons explained above, judgment will be

entered in defendants’ favor with respect to each of these claims. I next address

Hipcricket’s remaining two claims.

         C.    Defendants Violated the Washington Uniform Trade Secrets Act

         Claim 5 of Hipcricket’s Complaint asserts that defendants violated the

Washington Uniform Trade Secrets Act through Stansbury’s misappropriation of

Hipcricket’s confidential information and use of such information during his

employment with mGage. This claim provides an independent basis for relief that

is not dependent on the Commission Agreement. As the Washington Supreme

Court has explained:

Reply Br. 30. This aspect of Claim 4 is duplicative of Hipcricket’s claim under the
Washington Uniform Trade Secrets Act (Claim 5). As the Washington Supreme Court
explained in Ed Nowogrowski Ins., Inc. v. Rucker, “[o]nce a common law concept, trade
secret protection is now governed by statutes in most states, including Washington.” 971
P.2d 936, 945 (Wash. 1999) (en banc). Accordingly, I address this aspect of Claim 4 in
the context of adjudicating Claim 5.
164
      Compl. ¶ 57.

                                          40
         As a general rule, an employee who has not signed an agreement not
         to compete is free, upon leaving employment, to engage in
         competitive employment. In so doing, the former employee may
         freely use general knowledge, skills, and experience acquired under
         his or her former employer. However, the former employee, even in
         the absence of an enforceable covenant not to compete, remains under
         a duty not to use or disclose, to the detriment of the former employer,
         trade secrets acquired in the course of previous employment. Where
         the former employee seeks to use the trade secrets of the former
         employer in order to obtain a competitive advantage, then competitive
         activity can be enjoined or result in an award of damages.165

         Under the Washington Uniform Trade Secrets Act, any “actual or threatened

misappropriation” of a “trade secret” may be enjoined. 166                  The term

“misappropriation” is defined in the statute as follows:

         (a) Acquisition of a trade secret of another by a person who knows or
         has reason to know that the trade secret was acquired by improper
         means; or
         (b) Disclosure or use of a trade secret of another without express or
         implied consent by a person who:
               (i) Used improper means to acquire knowledge of the trade
               secret; or

               (ii) At the time of disclosure or use, knew or had reason to
               know that his or her knowledge of the trade secret was (A)
               derived from or through a person who had utilized improper
               means to acquire it, (B) acquired under circumstances giving
               rise to a duty to maintain its secrecy or limit its use, or (C)
               derived from or through a person who owed a duty to the
               person seeking relief to maintain its secrecy or limit its use; or



165
      Nowogrowski, 971 P.2d at 941-42.
166
      Wash. Rev. Code § 19.108.020.

                                           41
                  (iii) Before a material change of his or her position, knew or
                  had reason to know that it was a trade secret and that
                  knowledge of it had been acquired by accident or mistake.167

The term “trade secret” is defined in the statute as follows:

            . . . 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, and not being readily ascertainable by proper means by, 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. 168

Applying this definition, one court has explained that to succeed on a trade secret

claim under Washington law, “a party must establish (1) that the information

derives independent economic value from not being generally known or readily

ascertainable to others who can obtain economic value from knowledge of its use

and (2) that reasonable efforts have been taken to maintain the secrecy of the

information.”169

            I conclude from the evidence at trial that Stansbury, with mGage’s

encouragement and participation, misappropriated trade secrets in violation of the

Washington Uniform Trade Secret Act on at least three occasions.




167
      Id. § 19.108.010.
168
      Id.
169
   Pac. Aerospace & Elecs., Inc. v. Taylor, 295 F. Supp. 2d 1188, 1200 (E.D. Wash.
2003).

                                             42
          First, in late March-early April 2015, Stansbury provided members of the

mGage team who were preparing a proposal for Ford with two internal Hipcricket

documents: (1) a document from Hipcricket’s “JIRA” system containing technical

information about past projects Hipcricket did for Ford,170 and (2) an “upsell”

Stansbury was “working on with Ford Direct” while he was at Hipcricket, which

he believed would provide some insight into “where they are headed.” 171 The latter

document bore a copyright stamp in Hipcricket’s name and was labeled

“Confidential and Proprietary.” 172 The documents were provided in response to a

March 28 e-mail from Citron, mGage’s Chief Revenue Officer, who asked

Stansbury to “please share any & all documents (i.e., flows, etc.) that you think

will be helpful” for preparing mGage’s proposal to respond to a Ford RFP, which

Citron characterized as “our biggest new Q2 revenue opportunity in the US.”173 I

find it inexplicable that Stansbury did not know where these documents came

from, and I do not credit his testimony in that regard.

          Second, I find that Stansbury passed along to mGage information he

obtained from Hipcricket’s Salesforce database. This is borne out by an April 20,


170
      JX 32.
171
      JX 33.
172
      Id.; Tr. 432 (Stovall).
173
      JX 209; Tr. 81-86 (Stansbury).

                                          43
2015 e-mail Stansbury sent to Metzger, who was in charge of soliciting business

from Cumulus Media for mGage, with a copy to Citron. In the e-mail, Stansbury

states he is providing “some intel” that was “all pulled together from SF,” an

obvious reference to Salesforce.174 The information appears to reflect Hipcricket’s

annual billings and messaging volumes for “four contract groups” concerning

Cumulus accounts. 175 Using that information, Stansbury and Metzger discussed

how to best price a proposal for mGage to pitch to Cumulus.176

         It is not entirely clear how Stansbury accessed the Salesforce database. It is

undisputed that he transferred a significant number of files to his Hightail account

from Hipcricket’s Salesforce program the same day he learned about its

bankruptcy filing, and that he reached out to mGage’s CEO shortly thereafter to

explore employment with mGage. 177 Given this timing and the circumstances, I

am skeptical about Stansbury’s claim that he never looked at, opened or

downloaded any of these materials.                 When pressed on cross-examination,

moreover, Stansbury admitted he was able to access his Hightail account after

174
    JX 65. Stansbury’s testimony that he did not know what “SF” stood for in this context
is simply not credible. See Tr. 216 (“Q. . . . is SF sales force? A. I don’t -- I don’t know.
I -- Q. In your experience, what does SF stand for? A. San Francisco. Q. So you had
spoken with somebody in San Francisco? A. I don’t know. It could be sales force.”).
175
      JX 65; see also Tr. 216 (Stansbury); Tr. 589 (Metzger).
176
      JX 66; Tr. 218 (Stansbury); Tr. 591 (Metzger).
177
      See supra. Part I.E.

                                              44
joining mGage. 178      Ultimately, however, how Stansbury obtained access to

information from the Salesforce database to assist mGage is not important because

the documentary evidence clearly shows, in my view, that he did.

         Third, in an April 23, 2015 e-mail, Stansbury provided Citron with a list of

“short codes” from the Hipcricket platform that were used by iHeart.179 The e-mail

reflects that the information came from a woman named “Tracey.”                  Stovall

testified that Hipcricket treats the information on its platform as confidential, and

explained credibly that the e-mail was referring to Tracey Dreby (first name

spelled the same way as in the e-mail), who was a Hipcricket employee at the time

but who joined mGage in May. 180          Stansbury and mGage made use of this

protected information in their solicitation of iHeart.181


178
      Tr. 159-60.
179
      JX 79.
180
    Tr. 433-36 (Stovall). Stansbury claimed that a woman named Tracy Kunzi, an
account manager at mGage, did the research to pull the short codes. Tr. 177-78
(Stansbury). But Kunzi’s first name is not spelled “Tracey” and Stansbury professed not
to know where she obtained the information from. Stovall’s explanation of the source of
the information is more credible.
181
   Defendants argue that the short codes are not protected trade secrets because they are
iHeart’s information, not Hipcricket’s, and were “derived from iHeart’s analytics report
which iHeart shared with mGage in order for iHeart to solicit a competing proposal to
[Hipcricket’s] proposal.” Defs.’ Post-Trial Ans. Br. 54. I disagree. The analytics report
that iHeart gave to Stansbury is labeled “© 2014 Hipcricket – Confidential and
Proprietary.” JX 245. The information in it was Hipcricket’s, not iHeart’s, irrespective
of the fact that iHeart passed it along to Stansbury and mGage. Under the Washington
Uniform Trade Secrets Act, Stansbury at the very least had reason to know that that
report was “derived from or through a person who owed a duty to the person seeking
                                           45
      Each of the three categories of information was valuable to Hipcricket, was

not generally known or available to persons outside of Hipcricket, and was treated

as confidential information within Hipcricket.             Hipcricket took reasonable

measures to protect the confidentiality of this type of information by having

employees regularly sign agreements to protect trade secrets.182 Stansbury himself

signed several such agreements with Hipcricket over the years, and was

undoubtedly well aware (and certainly should have known) when he passed along

to mGage employees the documents and information described above that they had

been obtained improperly without Hipcricket’s consent. As such, Stansbury, with

mGage’s encouragement and participation, violated the Washington Uniform

Trade Secrets Act.

      For the reasons explained above, judgment will be entered in Hipcricket’s

favor on Claim 5. The proper remedy for defendants’ violations in my view is to

impose a permanent injunction to bar Stansbury and mGage from making any

further use of Hipcricket’s trade secrets as defined in the Washington Uniform




relief to maintain its secrecy or limit its use.”                  Wash. Rev. Code.
§ 19.108.010(2)(b)(ii)(C). In any event, even if the short codes are not Hipcricket trade
secrets, the misappropriation of either the Salesforce data or the Ford documents alone
would support the relief granted herein.
182
   Tr. 381-82 (Stovall), see also Tr. 304-05 (Miller) (testifying that she signed a similar
agreement when she started working at Hipcricket).

                                            46
Trade Secrets Act.183 In accordance with their rights under the statute, defendants

may apply to the Court for termination of the injunction at such time as the

relevant trade secrets cease to exist. 184 The parties are directed to confer on an

appropriate form of implementing order that addresses all protected Hipcricket

trade secrets without infringing on mGage’s ability to compete in the ordinary

course of business. 185

      D.     Imposition of a Constructive Trust Is Not Warranted
      Count 7 of Hipcricket’s Complaint seeks the imposition of a constructive

trust over “[a]ny profits obtained by defendants as a result of their improper




183
    Wash. Rev. Code. § 19.108.020(1) (“Actual or threatened misappropriation may be
enjoined.”); see also Boeing v. Sierracin Corp., 738 P.2d 665, 681 (Wash. 1987) (en
banc) (awarding permanent injunction of further use of trade secrets where “potential
harm to Boeing as trade secrets holder extends beyond a mere calculation of monetary
damages” and “[f]ailure to enjoin present and future copying would be inequitable,
allowing Sierracin to profit from use of its ill-gotten gains.”); Pac. Aerospace, 295 F.
Supp. 2d at 1219 (“A permanent injunction is warranted because of the apparent
difficulty in calculating monetary damages arising from defendants’ use of PAE’s
confidential customer information.”).
184
    Wash. Rev. Code. § 19.108.020(1); see also Boeing, 738 P.2d at 682 (finding that
statutory ability to seek termination of injunction mitigated appellant’s argument that
injunction was “perpetual and punitive.”)
185
   See, e.g., Pac. Aerospace, 295 F. Supp. 2d at 1220 (“What is problematic, however, is
fashioning a permanent injunction which is detailed enough so defendants know exactly
what is unlawful behavior, but which does not unduly and unfairly prevents [sic]
defendants from conducting business. . . . The court will ask [plaintiff] to propose
language to be included in a permanent injunction which addresses the court’s concerns
and defendants will be given an opportunity to comment upon the proposed language.”).

                                          47
actions.” 186 Hipcricket did not present any evidence at trial concerning ill-gotten

profits mGage earned as a result of the violations of the Washington Uniform

Trade Secrets Act, or otherwise. Accordingly, there is no basis for imposing a

constructive trust. Judgment will entered in defendants’ favor on this claim.

IV.      CONCLUSION
         For the foregoing reasons, judgment will be entered (1) in defendants’ favor

on Claims 1-4 and 6-7 of the Complaint dismissing those claims with prejudice,

and (2) in Hipcricket’s favor on Claim 5 of the Complaint, entitling it to a

permanent injunction. The parties are directed to confer and submit a form of final

judgment within five business days of the date of this opinion.




186
      Pl.’s Post-Trial Op. Br. 63.

                                          48
