                                                                            F IL E D
                                                                    United States Court of Appeals
                                                                            Tenth Circuit
                    U N IT E D ST A T E S C O U R T O F A PP E A L S
                                                                            August 31, 2007
                                 T E N T H C IR C U IT
                                                                          Elisabeth A. Shumaker
                                                                              Clerk of Court

 U.S. FOODSERVICE, IN C.,

               Plaintiff - Appellee,                        No. 05-1417

          v.                                                   D. Colo.

 SH A MR O CK FO O D S C OM PANY,                  (D.C. No. 04-CV-2426 RPM )
 IN C.,

               Defendant - Appellant.



                            O R D E R A N D JU D G M E N T *


Before L U C E R O , SE Y M O U R , and O ’B R IE N , Circuit Judges.




      Shamrock Foods Company (Shamrock) appeals from the district court’s

denial of its application for costs and attorneys’ fees. W e exercise jurisdiction

under 28 U.S.C. § 1291 and affirm.




      *
        This order and judgment is not binding precedent except under the
doctrines of law of the case, res judicata, and collateral estoppel. It may be cited,
however, for its persuasive value consistent with Fed. R. App. P. 32.1 and 10th
Cir. R. 32.1.
                                   I. Background

      A. Protocol to Prevent Future Disputes

      U.S. Foodservice (USF) distributes food and food-related products to

restaurants, schools and other facilities. Shamrock is also a foodservice

distributor and one of USF’s competitors. As a condition of their employment

and/or to partake in employee incentive programs, many USF and Shamrock sales

employees sign contracts in which they agree, inter alia, (1) not to solicit their

former employer’s customers for one year after their termination/resignation and

(2) not to use or disclose their former employer’s confidential information after

their termination/resignation.

      In 2002, several lawsuits arose between USF and Shamrock concerning the

hiring of employees who had signed non-solicitation and non-disclosure

agreements with the other entity (their former employer). 1 In late September

2002, the parties settled the lawsuits. The settlement agreement contained a

“Protocol to Prevent Future Disputes” (Protocol) in which the parties agreed to

honor each other’s non-solicitation and non-disclosure agreements and established

procedures to prevent future disputes between them. (R. App. at 81.) One of the

procedures required:




      1
        Two of the cases arose in Arizona and one in California. Two of the
cases involved Alliant Foodservice, Inc., which USF later acquired.

                                         -2-
       On any occasion where the former employer informs the hiring party
       that the former employer has information that causes it to believe that
       a former employee employed by the hiring party is violating his/her
       agreement with the former employer, the hiring party shall (I)
       instruct the employee to comply with the contract, (ii) in good faith
       conduct a prompt and thorough investigation of the allegation, and
       (iii) advise the former employer of the results of its investigation and
       the specific remedial steps if any, it has taken.

(Id. at 83.) The Protocol also contained a fee-shifting provision:

       In the event that the hiring party’s investigation and remedial
       measures do not cure the violation and the former employer
       commences and prevails in a lawsuit to enforce its rights, the hiring
       employer shall be liable to the former employer for the former
       employer’s costs and expenses, including reasonable attorneys’ and
       investigators’ fees, incurred in investigating and pursuing such
       violation, together with damages and such other and further legal and
       equitable relief as the Court may grant. Otherwise, the prevailing
       part(ies) shall recover its costs and expenses, including reasonable
       attorneys’ and investigator’s fees incurred in defending against the
       claim(s) of violation, together with damages and such other and
       further legal and equitable relief as the Court may grant.

(Id. at 85.)

       B. Current Lawsuit

       Prior to August 2004, Norman Joseph, Benjamin Ayotte and Greg M eiris

worked as territory managers for USF in its Colorado offices. As territory

managers, they were USF’s primary contact with its customers and had access to

USF’s confidential and proprietary information. In December 2003, Joseph,

Ayotte and M eiris entered into USF’s Points of Focus Program for fiscal year




                                          -3-
2004. 2 As a condition of their participation in the program, they were required to

sign a “Non-Solicitation and Non-Disclosure A greement.” (R. App. at 46.) In

relevant part, this agreement prohibited Joseph, Ayotte and M eiris from (1)

soliciting any USF customer with which they had contact in the eighteen months

preceding their termination/resignation and (2) disclosing or using USF’s

confidential information. The non-solicitation of customers provision was

effective during their employment with USF and for one year after their

termination/resignation. The non-disclosure of confidential information

restriction did not have an expiration date. However, the agreement recognized

that certain states required such restrictions to be of finite duration and to the

extent these states’ laws applied, the restriction expired three years after

termination/resignation.

      On August 6, 2004, Joseph resigned from USF and immediately began

working for Shamrock. On August 10, 2004, USF sent Joseph a letter reminding

him of his obligations under the non-solicitation and non-disclosure agreement.

Nevertheless, USF soon learned Joseph was soliciting USF customers, disclosing

USF’s confidential information and disparaging USF (which was also prohibited




      2
        USF’s Points of Focus Program is a rewards and incentive program for its
sales employees. Upon making certain sales, employees earn points which may
then be redeemed for valuable items including automobiles, boats, college tuition
and travel packages.

                                          -4-
under the agreement). 3 On August 26, 2004, USF w rote Shamrock a letter

informing it of these violations. Shamrock’s counsel responded denying Joseph

was violating his agreement with USF and requesting USF provide evidence of

such violations. USF’s counsel replied, accusing Shamrock of violating the

Protocol due to its failure to conduct a good-faith investigation of its allegations.

      On September 22, 2004, Ayotte and M eiris left USF and began working for

Shamrock. USF sent two consecutive letters reminding them of their obligations

under the non-solicitation and non-disclosure agreements. Thereafter, USF

learned A yotte and M eiris were soliciting USF customers. 4


      3
        In his November 18, 2004 affidavit, Tim Burns, USF’s District Sales
M anager, stated: “Joseph had been USF’s primary contact to at least thirty-tw o
customers during his last eighteen months of employment. Since Joseph’s
employment with Shamrock began, USF lost and continues to lose business and
goodwill on a w eekly basis from twenty of those customers.” (R. App. at 43.)
One of the customers Joseph serviced while employed by USF was a child
development center. The assistant director of the center issued an affidavit
stating Joseph attempted to solicit the center’s business for Shamrock one week
before he left USF and again after commencing employment with Shamrock. In
doing so, Joseph told the assistant director that Shamrock’s food quality was
better and its prices w ere lower than USF’s. H e also said USF was in “horrific
financial shape, near bankruptcy, and going under, but [] Shamrock was in solid
financial shape.” (R. App. at 96.)
      4
         W ith regard to M eiris and Ayotte, Burns’s affidavit states: “M eiris and
Ayotte had been USF’s primary contact to at least fifty-seven customers during
their last eighteen months of employment. Since their employment with
Shamrock began, USF lost and continues to lose business and goodwill on a
weekly basis from eleven of those customers.” (R. App. at 44.) USF also
submitted an e-mail sent from M eiris’ USF account to one of his USF customers
inviting it to a food show to “see what [Shamrock] has to offer.” (Id. at 66.) USF
also interprets this e-mail as an apparent attempt by M eiris to skirt his obligation

                                         -5-
      On N ovember 22, 2004, USF filed suit against Joseph, Ayotte and M eiris,

alleging they had breached their non-solicitation and non-disclosure agreements

(individual agreements) w ith USF. USF also named Shamrock as a defendant,

claiming it breached the Protocol. USF further alleged (1) tortious interference

with contractual relations and misappropriation of business value against all

defendants, (2) breach of fiduciary duty and loyalty against Joseph, Ayotte and

M eiris and (3) defamation against Joseph and Shamrock. The next day, USF filed

a motion for preliminary injunction to enjoin Joseph, Ayotte and M eiris from

violating the individual agreements and Shamrock from permitting and

encouraging these violations.

      Thereafter, Shamrock, Joseph, Ayotte and M eiris (collectively Defendants)

filed a motion to dismiss USF’s breach of contract, tortious interference and

defamation claims, arguing the individual agreements were void under Colorado

law and Shamrock had not violated the Protocol. Four days later, USF filed a

motion to set a preliminary injunction hearing, informing the court the non-

solicitation provision of the individual agreements would expire in August and

September 2005. The next day, the court denied USF’s motion, determining

Defendants’ motion to dismiss raised legal issues which needed to be addressed




not to solicit his USF customers by trading this customer with Ayotte for one year
afer they both joined Shamrock.

                                        -6-
before an evidentiary hearing on USF’s motion for preliminary injunction could

be set. On A pril 1, 2005, the court denied D efendants’ motion to dismiss,

concluding the issues raised could not be resolved at the dismissal stage.

      The court held a scheduling conference on June 10, 2005. At the

conference, the parties and court discussed a choice-of-law dispute pertaining to

the individual agreements. 5 Because this issue had the potential to affect the

entire case, the court ordered further briefing. USF requested a preliminary

injunction hearing be scheduled for the end of July, early August 2005. The court

informed USF the earliest possible date would be the end of October 2005.

      Thereafter, on June 24, 2005, Defendants filed an amended answer which

included a counterclaim by Shamrock against USF. Shamrock alleged USF w as

violating the Protocol by continuing to service customer accounts which had been

improperly solicited by USF A rizona employee David Barrie, a former Shamrock

employee, in violation of his non-solicitation and non-disclosure agreement with

Shamrock. Five days later, Defendants filed their brief concerning the choice of



      5
        The individual agreements contained a choice-of-law provision stating
M aryland law would govern their validity, interpretation and performance because
USF’s headquarters and principal place of business were in M aryland, a
substantial portion of USF’s business was based and directed from M aryland and
most purchasing of U SF’s products was coordinated in M aryland. Nevertheless,
Defendants argued the court should ignore the choice-of-law provision and apply
Colorado law because (1) M aryland had no substantial relationship to the parties
or transaction and (2) application of M aryland law would violate Colorado’s
public policy disfavoring non-competition agreements.

                                         -7-
law issue. On July 14, 2005, USF filed a motion to dismiss Shamrock’s

counterclaim. USF responded to Defendants’ choice of law brief on July 19,

2004.

        On July 22, 2005, before the court ruled on the choice of law issue and

USF’s motion to dismiss Shamrock’s counterclaim, USF filed an “Unopposed

M otion for Voluntary Dismissal W ithout Prejudice Pursuant to Fed. R. Civ. P.

41(a)(2).” 6 USF explained it was moving for voluntary dismissal without

prejudice of its complaint because (1) Defendants’ violations of the individual

agreements and Protocol had curtailed since the filing of the lawsuit and (2) the

Protocol and individual agreements would expire in August and September 2005,

before a preliminary injunction hearing could take place. Six days later, on July


        6
            Rule 41(a) provides in relevant part:

        (a) Voluntary Dismissal: Effect Thereof.

                 (1) By Plaintiff; by Stipulation. [A]n action may be dismissed by the
                 plaintiff without order of court (i) by filing a notice of dismissal at
                 any time before service by the adverse party of an answer or of a
                 motion for summary judgment, whichever first occurs, or (ii) by
                 filing a stipulation of dismissal signed by all parties who have
                 appeared in the action. Unless otherwise stated in the notice of
                 dismissal or stipulation, the dismissal is without prejudice . . . .

                 (2) By Order of Court. Except as provided in paragraph (1) . . . , an
                 action shall not be dismissed at the plaintiff’s instance save upon
                 order of the court and upon such terms and conditions as the court
                 deems proper . . . . U nless otherw ise specified in the order, a
                 dismissal under this paragraph is without prejudice.

                                             -8-
28, 2005, Shamrock filed a notification of its intent to file a voluntary dismissal

without prejudice of its counterclaim, which the court construed as a voluntary

dismissal of the counterclaim. The same day, the court dismissed USF’s

complaint and Shamrock’s counterclaim without prejudice.

      Subsequently, Shamrock filed an application for costs and attorneys’ fees

under the Protocol’s fee-shifting provision. In essence, Shamrock asserted that

because it had been “totally vindicated” by USF’s voluntary dismissal, it was the

“prevailing part(ies)” under the Protocol. (App. at 287-88.) Shamrock sought

attorneys’ fees and costs totaling $40,034.00, for the representation of Shamrock,

Joseph, Ayotte and Meiris. The court denied Shamrock’s application, concluding

“[USF’s] voluntary dismissal without prejudice does not provide grounds for

determining that [Shamrock] is the prevailing party within the terms of the

[Protocol] . . . .” (R. App. at 314.)

                                   II. Choice of Law

      Unlike the individual agreements, the Protocol does not contain a choice-

of-law provision. Because we are sitting in diversity, we apply the substantive

law of the forum state including its choice of law rules. Elliot v. Turner Constr.

Co., 381 F.3d 995, 1001 (10th Cir. 2004). The forum state is Colorado. Colorado

has adopted the “most significant relationship” approach of the Restatement

(Second) of Conflict of Laws for resolving conflict of law questions in contract



                                          -9-
cases. Wood Bros. Homes, Inc. v. Walker Adjustment Bureau, 601 P.2d 1369,

1372 (Colo. 1979). “This approach requires courts to apply the law of the state

which, with respect to the particular issue in dispute, has the most significant

relationship to the transaction and the parties.” Hoiles v. Alioto, 461 F.3d 1224,

1230 (10th Cir. 2006). To determine which state has the most significant

relationship, courts consider, inter alia, the needs of the interstate and

international systems, the relevant policies of the forum and other interested

states, the protection of justified expectations, and the basic policies underlying

the particular field of law. Restatement (Second) of Conflict of Law § 6. They

also consider the following contacts: (1) the place of contracting, (2) the place of

negotiation, (3) the place of performance, (4) the location of the contract’s subject

matter and (5) the parties’ domicil, residence, nationality, place of incorporation

and place of business. Id. § 188.

      Applying this analysis, it is unclear where the Protocol was entered into or

negotiated. However, it was part of a settlement agreement resolving litigation in

Arizona and California and was to be performed in Arizona, California, Colorado

and New M exico. 7 The parties to the Protocol w ere USF, Shamrock and Alliant.




      7
         The Protocol states the parties “shall honor each other’s contracts [i.e.,
their non-solicitation and non-disclosure agreements] . . . in their New M exico,
Arizona, Colorado and California offices . . . .” (R . App. at 81-82 (emphasis
added)).

                                          -10-
Although the record does not reveal Alliant’s principal place of business or state

of incorporation, USF is incorporated in Delaware with its principal place of

business in M aryland and Shamrock is incorporated in Colorado with its principal

place of business in Arizona. The Protocol’s subject matter involves methods to

prevent future disputes between the parties concerning the hiring of employees

who had signed non-solicitation and non-disclosure agreements with the other

entity. The current lawsuit arose out of alleged violations of those agreements by

persons living and working in Arizona (Barrie) and Colorado (Joseph, Ayotte and

M eiris) and alleged violations of the Protocol by USF and Shamrock in Arizona

and Colorado.

      Shamrock cited mainly to Colorado law in its application for costs and fees

and both parties primarily rely on Colorado law on appeal. Therefore, we apply

Colorado law and decline to address whether application of Arizona law (or any

of the other relevant states’ laws) w ould result in a different outcome. Neustrom

v. Union Pac. R.R. Co., 156 F.3d 1057, 1062 (10th Cir. 1998) (“Because the

parties proceed on the assumption that Kansas substantive contract law applies,

we apply that law without further analysis.”).

                              III. Standard of Review

      Because the interpretation of a contract is a question of law in Colorado,

Agritrack, Inc. v. DeJohn Housemoving, Inc., 25 P.3d 1187, 1192 (Colo. 2001),



                                        -11-
our review is de novo. Kaw Nation v. Springer, 341 F.3d 1186, 1189 (10th Cir.

2003). Determination of which party succeeded or prevailed under a contractual

fee-shifting provision is within the trial court’s discretion and is reviewed for an

abuse of that discretion. Dennis I. Spencer Contractor, Inc. v. City of Aurora,

884 P.2d 326, 328 n.6 (Colo. 1994) (Spencer); Brock v. Weidner, 93 P.3d 576,

579 (C olo. Ct. App. 2004).

                                   IV. Discussion

       Shamrock argues the district court erred in denying its application for costs

and attorneys’ fees under the Protocol’s fee-shifting provision. Again, this

provision states:

       In the event that the hiring party’s investigation and remedial
       measures do not cure the violation and the former employer
       commences and prevails in a lawsuit to enforce its rights, the hiring
       employer shall be liable to the former employer for the former
       employer’s costs and expenses, including reasonable attorneys’ and
       investigators’ fees, incurred in investigating and pursuing such
       violation, together with damages and such other and further legal and
       equitable relief as the Court may grant. Otherwise, the prevailing
       part(ies) shall recover its costs and expenses, including reasonable
       attorneys’ and investigator’s fees incurred in defending against the
       claim(s) of violation, together with damages and such other and
       further legal and equitable relief as the Court may grant.

(R . App. at 85.)

       Under the Protocol’s fee-shifting provision, Shamrock asserts if the former

employer does not prevail in its lawsuit, the defending parties are automatically

entitled to their costs and attorneys’ fees. Because U SF (the former employer)

                                         -12-
failed to secure any relief before voluntarily dismissing its claims, Shamrock

asserts USF clearly did not prevail and it is automatically entitled to its costs and

fees. USF agrees the fee-shifting provision requires the hiring employer to pay

the former employer’s costs and attorneys’ fees if the former employer prevails in

a lawsuit to enforce its rights under the Protocol. However, it disagrees that if the

former employer does not prevail, the hiring employer is automatically entitled to

its fees. If that was so, USF claims the second sentence of the fee-shifting

provision would simply read: “Otherwise, the hiring employer shall recover its

costs and expenses.” (A ppellee’s Br. at 9 (quotations omitted).)

      “The primary goal of contract interpretation is to determine and give effect

to the intent of the parties.” Ad Two, Inc. v. City & County of Denver ex rel.

M anager of Aviation, 9 P.3d 373, 376 (Colo. 2000). The parties’ intent is to be

determined primarily from the language of the contract itself, giving its terms

their plain and ordinary meaning. Id.; Allstate Ins. Co. v. Huizar, 52 P.3d 816,

819 (Colo. 2002). The meaning of a contract must be determined from the entire

instrument, not by viewing clauses or phrases in isolation. Allstate Ins. Co., 52

P.3d at 819. “A contract should be interpreted to harmonize and to give effect to

all its provisions, if possible.” Bedard v. M artin, 100 P.3d 584, 588 (Colo. Ct.

App. 2004).

      As evidenced by the Protocol itself, the parties’ intent in entering into it



                                          -13-
was to prevent future disputes between them concerning the hiring of employees

who had signed non-solicitation and non-disclosure agreements with the other

entity. 8 To this end, the Protocol establishes procedures to avoid such disputes.

One of those procedures requires the hiring employer to investigate and take

appropriate remedial measures if the former employer informs the hiring employer

it believes a former employee hired by the hiring employer is violating his non-

solicitation and non-disclosure agreement. The Protocol’s fee-shifting provision

anticipates that the hiring party’s investigation and remedial measures may not

cure the violation and the former employer may need to resort to litigation to

enforce its rights. In such circumstances, if the former employer prevails, the

hiring employer shall be liable for the former employer’s costs and expenses,

including its attorneys’ fees. The parties agree with this interpretation.

      Turning to the second part of the fee-shifting provision, at first blush it

seems to require the former employer to pay the hiring employer its attorneys’

fees if the former employer does not prevail. This is because of the use of the

term “otherwise,” which in this context means “if not; else.” See

http://dictionary.oed.com. How ever, this interpretation, which Shamrock urges,

ignores the adjective “prevailing” preceding “part(ies).” Thus, the fee-shifting



      8
       In general, the purpose of contractual fee-shifting provisions is to
“encourage compliance with contracts and discourage unfounded lawsuits.”
Spencer, 884 P.2d at 337 (Rovira, J., dissenting).

                                         -14-
provision does not automatically require an award of fees to the hiring employer

if the former employer does not prevail but rather requires the hiring employer to

be a prevailing party. Consequently, despite its prolixity, the Protocol’s fee-

shifting provision requires an award of fees to the prevailing party. 9

      The question presented is whether Shamrock was the “prevailing part(ies).”

The Protocol does not define the term. Shamrock asserts it was the prevailing

party because it w as “completely vindicated” and “achieved complete success,”

i.e., it avoided imposition of injunctive relief, paid no damages, and made no

concessions or commitments. It also points to a number of cases holding a



      9
         Shamrock relies on American Insurance Co. v. El Paso Pipe & Supply
Co., 978 F.2d 1185 (10th Cir. 1992). There, the plaintiff/purchaser sought its
attorneys’ fees under the following fee-shifting provision: “In the event there
should be legal action in connection with this Purchase Order, then if the Seller is
not the prevailing party in such action, Seller agrees to pay the reasonable legal
fees and other costs incurred in such legal action by the Purchaser.” Id. at 1187
(emphasis added). W e rejected the defendants/sellers’ argument that the
plaintiff/purchaser could not recover its fees under this provision because it was
not the prevailing party. Id. at 1192. W e concluded it was not the
plaintiff/purchaser’s status as a prevailing party which determined whether it was
entitled to fees but rather the defendants/sellers’. Id. This case is clearly
distinguishable. The Protocol’s fee-shifting provision, unlike the provision in
American Insurance, expressly requires the party seeking fees to have prevailed in
the lawsuit.
       Shamrock also contends the reason for the shift in terms from “former
employer” and “hiring employer” in the first sentence of the Protocol’s fee-
shifting provision to “prevailing part(ies)” in the second sentence is obvious--
when the former employer sues under the Protocol, it will sue not only the hiring
employer but also its former employees hired by the hiring employer. This
argument merely explains the use of “part(ies)” rather than “party;” it does not
eliminate the use of the word “prevailing” before “part(ies).”

                                         -15-
plaintiff’s voluntary dismissal without prejudice results in the defending party

being the “prevailing party” for purposes of awarding costs and attorneys’ fees

because the defending party faces the risk the plaintiff will refile, thereby

imposing duplicative expenses upon it. USF claims there was no prevailing party

because both sides voluntarily dismissed their claims.

      In Spencer, the Colorado Supreme Court faced a similar dilemma (i.e.,

having to determine the definition of “prevailing party” in a contract not defining

it). There, the plaintiff sued the defendant for breach of their settlement

agreement. The jury found the defendant had breached the agreement but

awarded no damages. Thereafter, the plaintiff moved for attorneys’ fees under

the agreement, which awarded fees to the “prevailing party” but did not define the

term. The trial court denied the motion because the jury did not award damages

and the appellate court affirmed. The Colorado Supreme Court reversed. In

doing so, it defined “prevailing party” in a breach of contract case as “the party in

whose favor the decision or verdict on liability is rendered” regardless of whether

damages are awarded. 1 0 Spencer, 884 P.2d at 332. Because the jury had found in

favor of the plaintiff on liability, the court concluded the plaintiff was entitled to



      10
         The Colorado Supreme Court specifically rejected the standard used for
awarding fees in civil rights actions under 42 U.S.C. § 1988, which allows fees to
the party applying for such fees if that party was the “prevailing party,” i.e., it
succeeded upon a significant issue and achieved some of the benefits sought in
the lawsuit. Spencer, 884 P.2d at 329-30.

                                         -16-
fees as the “prevailing party.” 1 1 Id.

       Applying Spencer, neither U SF nor Shamrock was the prevailing party

because both voluntarily dismissed their claims against each other, i.e., no

decision or verdict on liability was rendered in either’s favor. 1 2 W hile we

recognize fee-shifting provisions “generally contemplate . . . that there will be

one winner and one loser regarding payment of fees,” “in a proper case, the trial

court may rule that neither party prevailed and award no fees.” Wheeler v. T.L.

Roofing, Inc., 74 P.3d 499, 503 (Colo. Ct. App. 2003). The Protocol’s fee-

shifting provision does not prohibit such result. Thus, applying the Spencer

definition, neither party prevailed and the district court properly denied

Shamrock’s application for costs and attorneys’ fees. 1 3


       11
        The Spencer definition is similar to that in Black’s Law Dictionary,
which defines “prevailing party” as “[a] party in whose favor a judgment is
rendered, regardless of the amount of damages awarded.” Black’s Law
Dictionary 1144 (7th ed. 1999).
       12
        Even though USF did not move for its attorneys’ fees, we address
whether it prevailed because if it did Shamrock would not be entitled to its fees
under the Protocol’s fee-shifting provision. Indeed, Shamrock’s arguments are
based on its belief that USF did not prevail.
       13
         In Wheeler, the trial court awarded fees to the defendant even though
both the plaintiff and the defendant were found to have breached the parties’
contract. The Colorado Court of Appeals affirmed, concluding “where both
parties have prevailed in part on the question of liability, the trial court is free to
determine which is prevailing for purposes of applying a fee-shifting agreement.”
74 P.3d at 504. Wheeler is inapplicable to this case. The fact both parties
voluntarily dismissed their claims against each other does not mean both parties
prevailed in part on the question of liability. No liability determination was made

                                          -17-
         Of course, Spencer’s definition of “prevailing party” could be interpreted

as applying only to cases (like Spencer) in which a determination of liability was

actually made. Indeed, the Protocol’s fee-shifting provision does not require such

a determination to be made in order to decide prevailing party status. Assuming

this is so, we are left to define the term where no liability determination has been

made, specifically, where the parties voluntarily dismiss their claims against each

other.

         The closest case on point in Colorado is Brock. There, the Brocks filed suit

against the Weidners and the D iscovery Homeowners Association (DHA)

pertaining to the W eidners’ plans to build an addition to their home. The Brocks

alleged the proposed construction violated the subdivision’s restrictive covenants

and challenged DHA’s failure to prohibit the proposed construction. After the

district court denied (1) the Brocks’ motion for preliminary injunction (based on

its finding the W eidners had proceeded properly in seeking approval for the

project and DHA acted in good faith in allow ing them to proceed), (2) their jury

trial demand (because the action was equitable) and (3) their motion for partial

summary judgment (because factual disputes remained), the Brocks moved to

voluntarily dismiss their claims with prejudice. The trial court granted the motion

but denied the W eidners’ request for attorneys’ fees under a fee-shifting provision



in this case.

                                          -18-
contained in the restrictive covenants which required fees to be awarded to the

“successful party.” 93 P.3d at 578. The court concluded the issues were “close

and difficult.” Id. (quotations omitted).

      The Colorado Court of Appeals reversed, finding the trial court abused its

discretion in denying fees. Id. In doing so, it did not rely on Spencer’s definition

of “prevailing party” even though it cited to the case for the standard of review.

Id. at 579. Rather, it looked to determine whether the W eidners had achieved

“substantial success.” Id. It concluded:

      Here, [the W eidners] achieved substantial success in the litigation.
      Indeed, it is difficult to see how [they] could have been any more
      successful than they were. [They] succeeded in precluding [the
      Brocks] from obtaining a preliminary injunction to block
      construction of the addition. [They] then succeeded in defending
      against both [the Brocks’] motion for partial summary judgment and
      [the] demand for a jury trial. [The Brocks’] motion to dismiss
      acknowledged [the W eidners] success by indicating that further
      litigation would be counterproductive and that “[t]he injunctive relief
      sought . . . in this action is moot as the construction sought to be
      enjoined . . . is now nearly complete. The action culminated in the
      dismissal with prejudice of all claims against [the W eidners]. Such a
      dismissal is considered an adjudication on the merits . . . .

      [The W eidners] succeeded on every contested issue in the case and
      the action ultimately was dismissed with prejudice. Therefore, [they]
      were the successful parties in the proceeding.

Id.

      Applying Brock, neither U SF nor Shamrock was the prevailing party

because neither achieved “substantial success” (or, using the terms of the



                                            -19-
Protocol, neither party “substantially prevailed”). Although (1) USF successfully

defended against D efendants’ motion to dismiss, (2) Shamrock’s counterclaim

against USF w as voluntarily dismissed, and (3) Defendants’ violations of the

Protocol and individual agreements were curtailed, USF failed to obtain a

preliminary injunction or any other finding on liability. 1 4 W e recognize the

reason USF did not obtain injunctive relief concerning Defendants’ violations of

the Protocol and the non-solicitation of customers provision in the individual

agreements was potentially due to the fact the district court could not conduct an

evidentiary hearing prior to these agreements expiring. Nevertheless, USF still

could have sought injunctive relief concerning Defendants’ violations of the non-

disclosure of confidential information restriction in the individual agreements

because that restriction did not expire until August/September 2007 (at the

earliest). 1 5 Additionally, the expiration of the Protocol and non-solicitation


      14
         Shamrock contends there is no evidence it curtailed any of its activities.
However, Shamrock never contested USF’s allegation in its motion for voluntary
dismissal that one of the reasons it was seeking dismissal was because it had
information that “Defendants [had] drastically modified their conduct and
curtailed their violative acts upon [USF] filing this litigation.” (R . App. at 278.)
      15
         USF claimed in its motion for voluntary dismissal of its complaint that
the Protocol and individual agreements would expire before a hearing could be
held on its motion for preliminary injunction. W e agree the Protocol would have
expired as it was signed in September 2002 and was effective for three years
(until September 2005). However, we disagree that the individual agreements
would have expired in toto. W hile the non-solicitation of customers provision
expired one year after an employee’s termination/resignation, the non-disclosure
of confidential information restriction expired, at the earliest, three years after an

                                         -20-
provision, while foreclosing injunctive relief, would not have precluded USF from

pursuing and obtaining damages for breach of those provisions. Furthermore,

unlike in Brock, Shamrock’s voluntary dismissal of its counterclaim was without

prejudice, which is not an adjudication on the merits. M errill Lynch Bus. Fin.

Servs., Inc. v. Nudell, 363 F.3d 1072, 1074 (10th Cir. 2004) (citing Wistrand v.

Leach Realty Co., 364 P.2d 396, 397 (Colo. 1961)); Jenkins v. Estate of Thom as,

800 P.2d 1358, 1359-60 (Colo. Ct. App. 1990).

      As to Shamrock, (1) its motion to dismiss was denied, (2) it only avoided

defending against USF’s request for a preliminary injunction because an

evidentiary hearing could not be held prior to the Protocol and the non-

solicitation provision in the individual agreements expiring, (3) it did not succeed

on its choice of law argument because the district court never ruled on the issue,

(4) it and the individual defendants curtailed their violations of the Protocol and

individual agreements and (5) although USF voluntarily dismissed its claims

against it, it did so without prejudice. W hile Shamrock asserts U SF dismissed its

claims to avoid an adverse ruling on the choice of law issue pertaining to the




employee’s termination/resignation. Because Joseph, Ayotte and M eiris resigned
in August/September 2004, only the non-solicitation of customers provision, not
the non-disclosure of confidential information restriction, would have expired
prior to a preliminary injunction hearing being held. Although USF did not make
this distinction in its motion for voluntary dismissal, it did so in its December 20,
2004 motion to set a preliminary injunction hearing.

                                         -21-
individual agreements, which would allegedly have resulted in the invalidation of

USF’s non-solicitation and non-disclosure agreements in Colorado, there is

absolutely nothing in the record indicating the court was about to rule on the issue

or that such ruling would have been in Shamrock’s favor. M oreover, Shamrock

did not dispute USF’s assertion in its motion for voluntary dismissal that the

reasons for its voluntary dismissal were due to the fact Defendants’ violations of

the individual agreements and Protocol had curtailed and the Protocol and non-

solicitation of customers provision would expire before a preliminary injunction

hearing could be held. Thus, under Brock, neither party was the prevailing party

and the court did not err in denying Shamrock’s request for costs and fees.

      Shamrock’s reliance on a number of federal and state court cases for the

proposition that a defendant is a prevailing party when a plaintiff voluntarily

dismisses its case is unavailing. The cases relied upon fall into two general

categories: (1) cases involving an award of attorneys’ fees as a condition of a

plaintiff’s voluntary dismissal of its claims under Rule 41 of the Federal Rules of

Civil Procedure and (2) cases involving an aw ard of attorneys’ fees under a

statute, rule or contract awarding costs and/or attorneys’ fees to the “prevailing

party.” U nder the first category, most courts will award fees if the voluntary

dismissal is without prejudice. AeroTech, Inc. v. Estes, 110 F.3d 1523, 1527-28

(10th Cir. 1997) (holding district court may aw ard fees as a condition of a party’s



                                         -22-
voluntary dismissal without prejudice under Rule 41(a)(2) but not if the dismissal

is w ith prejudice unless exceptional circumstances are present); Berthold Types,

Ltd. v. Adobe Sys., Inc., 155 F. Supp. 2d 887, 891 (N.D. Ill. 2001) (denying aw ard

of attorneys’ fees to defendant after plaintiff’s voluntary dismissal with prejudice

under Rule 41(a)(2)). They reason:

      The purpose of awarding fees for a voluntary dismissal under Rule
      41(a)(2) is to compensate the defendant for the unnecessary and
      potentially duplicative expenses of the litigation. Fees are usually
      awarded for a dismissal without prejudice because the defendant may
      be forced to defend the claim again. However, [f]ees are not
      awarded when a plaintiff obtains a dismissal with prejudice because
      the defendant cannot be made to defend again.

Berthold Types, Ltd., 155 F. Supp. 2d at 891 (citations and quotations omitted).

Because Shamrock did not seek its fees as a condition of U SF’s voluntary

dismissal under Rule 41(a)(2), but rather under a contractual fee-shifting

provision, the first category of cases is not controlling.

      The second category of cases is more on point because they involve

statutes, rules or contracts utilizing the term “prevailing party,” the same

language used in the Protocol’s fee-shifting provision. In these cases, the courts

hold a party is a “prevailing party” when the claims against it are voluntarily

dismissed. See, e.g., Cantrell v. Int’l Bhd. of Elec. Workers, AFL-CIO, Local

2021, 69 F.3d 456, 458 (10th Cir. 1995) (en banc) (holding a defendant is a

“prevailing party” under Rule 54(d) of the Federal Rules of Civil Procedure when



                                          -23-
a plaintiff voluntarily dismisses its complaint, whether that dismissal is with or

without prejudice); Franklin Fin. v. Resolution Trust Corp., 53 F.3d 268, 273 (9th

Cir. 1995) (applying Oregon law and holding a defendant is a “prevailing party”

under a contractual fee-shifting provision and an Oregon statute when a plaintiff

voluntarily dismisses its action under Rule 41(a)(1) of the Federal Rules of Civil

Procedure); Rushing v. Carribean Food Prods., 870 So.2d 953, 954-55 (Fla. D ist.

Ct. App. 2004) (finding defendant is the “prevailing party” under a contractual

fee-shifting provision when a plaintiff voluntarily dismisses its complaint

pursuant to state court rule). However, none of these cases apply Colorado law

and there is no indication Colorado would rule similarly. Indeed, in Spencer, the

Colorado Supreme Court expressly declined to apply the definition of “prevailing

party” for purposes of awarding fees under 42 U.S.C. § 1988 to a contractual fee-

shifting provision employing the same language. 884 P.2d at 329-30. M ore

importantly, none of the cases relied upon by Shamrock address the situation in

this case – where both parties voluntarily dismiss their claims against each

other. 1 6

        Even assuming the above cases applied here, we conclude the court did not




        16
          Shamrock contends it never desired to be in litigation with USF and only
filed its counterclaim against USF as a defensive tactic. W hatever Shamrock’s
intentions may have been, the fact remains it filed a counterclaim against USF
and later voluntarily dismissed it.

                                         -24-
err in denying Shamrock its costs and attorneys’ fees. Applying the general

proposition that a defendant is a prevailing party when a plaintiff voluntarily

dismisses its complaint, both USF and Shamrock would be considered the

prevailing party because both parties voluntarily dismissed their claims against

the other. However, the Protocol’s fee-shifting provision does not allow for such

result. Under its plain language, either the former employer, hiring employer or

neither is the prevailing party, not both parties. This is consistent with

contractual fee-shifting provisions in general. See Wheeler, 74 P.3d at 503

(“[Contractual fee-shifting provisions are] not intended to result in each side

paying the other’s fees. Instead, these provisions generally contemplate that the

prevailing party will be entitled to recover its attorney fees and that there will be

one winner and one loser regarding payment of those fees.).

      The district court did not err in denying Shamrock’s application for costs

and attorneys’ fees under the Protocol’s fee-shifting provision.

      A F FIR M E D .

                                                 E N T ER E D FO R T H E C O U R T


                                                 T errence L. O ’B rien
                                                 Circuit Judge




                                          -25-
