Paul Mostert v. the Mostert Group LLC ( 2020 )

RENDERED: MARCH 26, 2020
TO BE PUBLISHED
Supreme Court of Kentucky
2017-SC-000600-DG
PAUL MOSTERT APPELLANT
ON REVIEW FROM COURT OF APPEALS
V. CASE NO. 2016-CA-001081-MR
FAYETTE CIRCUIT COURT NOS. 06-CI-02927 AND 08-CI-06239
THE MOSTERT GROUP, LLC APPELLEE
OPINION OF THE COURT BY JUSTICE HUGHES
AFFIRMING
Appellant Paul Mostert developed computer technology aimed at
predicting a thoroughbred’s success by analyzing its biomechanics. In 2003,
Mostert agreed to transfer the technology to a newly-formed business, The
Mostert Group, LLC (TMG), in exchange for TMG stock, cash and a promissory
note payable in installments. Mostert subsequently refused to deliver to TMG
the source code, a component essential to maintaining and updating the
software technology, so TMG declined to make the final promissory note
payment to Mostert due on January 1, 2009. In the interim, TMG filed two
lawsuits against Mostert in Fayette Circuit Court and, after years of litigation,
appealed from an order granting partial summary judgment in favor of Mostert.
Based on its construction of the documents executed by the parties in 2003,
the Court of Appeals reversed and remanded to the trial court. The appellate
court concluded that the while the security agreement executed to secure
payment of the promissory note gave Mostert the right to maintain possession
of certain collateral, that right did not extend to the source code and Mostert’s
refusal to turn it over was a breach of his contract with TMG. Having granted
Mostert’s ensuing motion for discretionary review, we affirm the Court of
Appeals.
FACTS AND PROCEDURAL HISTORY
Dr. Paul Mostert created computer software and technology, known as
EquiTrax, designed to predict a thoroughbred’s success by analyzing its
biomechanics. In 2003, he and two others established TMG, a business aimed
at helping thoroughbred owners make investment, racing, and breeding
decisions using the technology. On October 31, 2003, Mostert entered into a
Contribution Agreement with TMG wherein he agreed to transfer the EquiTrax
technology1 and other assets in exchange for 200 shares in TMG, $64,000 for
outstanding expenses and a $500,000 promissory note (Note) to be paid in
installments. To secure the Note, TMG executed a Security Agreement giving
Mostert a security interest in certain collateral, which consisted of software,
patents, trademarks and the like.
1 The parties’ agreements pertain to various computer programs and
technology, but the parties agree that the EquiTrax technology is the primary program
at issue.
2
Despite these documents, Mostert and TMG disagreed as to which
property constituted the collateral under the Security Agreement and the
relationship between the parties deteriorated. More specifically, TMG claimed
entitlement to immediate possession of the source code under the Contribution
Agreement while Mostert claimed that he had a security interest in the source
code which the Security Agreement allowed him to perfect by possession.
In 2006, TMG sued Mostert in Fayette Circuit Court for breach of
contract, conversion, and misappropriating trade secrets, accusing Mostert of
helping other individuals set up a competing horse biometrics venture. In
response, Mostert filed an answer asserting that TMG defaulted on the Security
Agreement and demanded that TMG turn over all collateral to Mostert.
Because Mostert had retained possession of the source code, which was critical
to maintaining and updating the EquiTrax technology, TMG asked the circuit
court to compel Mostert to immediately provide the source code to TMG. The
court denied both requests but instructed Mostert to preserve the source code
pending further court orders.
From the date of the execution of the Contribution Agreement through
early 2016, TMG requested to no avail, both directly and through the
underlying litigation, that Mostert deliver the source code. In 2008, TMG filed
a separate declaratory judgment action against Mostert seeking an order
declaring that Mostert breached the Contribution Agreement by failing to
deliver the source code and that TMG was entitled to withhold payments under
the Note. The two cases were consolidated in October 2009 and that
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consolidated action proceeded for several years with little activity, the issue of
TMG’s right to the source code unresolved.
In April 2014, TMG filed a motion for partial summary judgment on its
claim that Mostert was in breach of the Contribution Agreement. Mostert
responded that the perfection-by-possession clause in the Security Agreement
justified his retention of the source code until TMG made all the installment
payments on the Note. After briefing and oral arguments by the parties, the
trial court denied TMG’s motion for partial summary judgment, finding that
there were unresolved issues of fact.
Not having the source code necessary to maintain and update the
software inhibited TMG’s ability to conduct business, so in late 2015 and 2016
it attempted to resolve its dispute with Mostert through negotiations. At the
time these discussions took place, TMG had experienced a hard drive failure,
threatening TMG’s electronic infrastructure and resulting in limited
operations.2 Additionally, TMG alleged that the EquiTrax technology was in
desperate need of updating, which could not be accomplished without the
source code.
Given the claimed threat to TMG’s business, TMG proposed an interim
solution, whereby TMG would post a bond in the amount purportedly due to
2 According to the Kentucky Secretary of State business records, EQUIX
Biomechanics is an assumed name for The Mostert Group. The biometric analysis is
performed by EQUIX. The record includes an email from EQUIX’s president stating
“we are out of business until we can get this up and running. And we are in this
position due to the lack of source code.” The hard drive failure made it impossible to
access and generate computations, reports, and previously entered data ― all of which
TMG states are crucial to its business.
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Mostert under the Note in exchange for Mostert immediately turning over the
source code. The proposed course of action did not waive either party’s claims
against the other but would protect the parties’ interests pending a final
judgment. Although the parties disagreed on the amount of the bond, the trial
court directed TMG, in a February 2016 order, to post a $250,000 bond and
required Mostert to deliver the source code.3 The trial court also scheduled a
status conference three months later to allow TMG to address any issues as to
the completeness of the source code and for both parties to advise the court
about the progress toward resolution of their claims. TMG posted the bond
and Mostert provided the source code.
Prior to the status conference, Mostert filed a motion for partial summary
judgment seeking judgment on the Note and compensation for expenditures as
specified in the Security Agreement.4 Mostert argued that TMG’s breach of
contract claims did not constitute defenses to Mostert’s claim that TMG
breached the Note and Security Agreement by failing to pay the final
installment. TMG countered that Mostert first breached the Contribution
3 Mostert argued that he was entitled to $154,350, the final installment
payment under the Note, plus $130,770 in interest on the final installment payment
(accruing at a rate of 12% per annum) and $18,652 in expenses. In an affidavit,
Mostert stated that he was entitled to reimbursement for expenses pursuant to the
Security Agreement, in which the parties agreed that Mostert would be reimbursed for
“the care, maintenance or preservation of the Collateral, and any other expenditures”
that Mostert made under the Security Agreement for TMG’s benefit.
4 Mostert’s motion for partial summary judgment is not in the record, but a
court order entered May 24, 2016, recognizes the motion and schedules it for a
hearing. In its brief, TMG quoted a portion of the motion which summarizes what
Mostert sought.
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Agreement by failing to deliver the source code, thereby excusing TMG from
any further payment obligations under the Note.
The circuit court granted Mostert’s motion for partial summary judgment
based on Bale v. Mammoth Cave Prod. Credit Ass’n, 652 S.W.2d 851 (Ky. 1983),
and Fifth Third Bank v. Waxman, 726 F. Supp. 2d 742 (E.D. Ky. 2010), both of
which held that a claim of breach of fiduciary duty cannot serve as an
affirmative defense in an action to enforce a promissory note. The court held
that because TMG’s allegations against Mostert arose after the Note was
executed, and because the trial court previously established that Mostert had a
security interest in and therefore a right to possess the collateral, summary
judgment was appropriate.
TMG appealed, arguing that Mostert failed to show that he was entitled
to judgment as a matter of law. TMG maintained that Mostert was not entitled
to the final installment payment under the Note because he breached the
Contribution Agreement before the payment was due. The Court of Appeals
unanimously agreed, holding that under the documents executed by the
parties Mostert possessed a security interest in the software, but not the
source code. The Court of Appeals reasoned that the parties would have
expressly identified the “source code” as collateral in the Security Agreement if
their intent was to give Mostert such an interest, noting that the distinction
between software and source code had been made by the parties themselves in
the Contribution Agreement. Given that Mostert had no security interest in the
source code and thus no right to retain possession, the appellate court found
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that he breached the Contribution Agreement first by failing to turn the source
code over to TMG and therefore was not entitled to the final installment
payment. As noted, the Court of Appeals reversed and remanded the case to
the circuit court for additional proceedings.
ANALYSIS
The primary issue in this case turns on construction of the Contribution
Agreement and the Security Agreement, both executed by the parties on
October 31, 2003. Mostert argues that the “software,” identified as collateral in
the Security Agreement includes the source code, and therefore the Security
Agreement allowed him to retain possession of the source code until the Note
was paid in full. TMG counters that the source code was not included as
collateral under the Security Agreement, and that Mostert breached the
Contribution Agreement by failing to deliver the source code immediately upon
execution of that agreement and receipt of his TMG stock. Before turning to
the language of the relevant agreements, we acknowledge the general principles
of contract construction which guide disposition of this matter.
Judicial review of a contract begins with examination of the plain
language of the instrument. “Generally, . . . in construing contracts courts
endeavor to give effect to the parties’ intent as expressed by the ordinary
meaning of the language they employed.” North Fork Collieries, LLC v. Hall, 322
S.W.3d 98, 105 (Ky. 2010). “In the absence of ambiguity . . . a court will
interpret the contract’s terms by assigning language its ordinary meaning and
without resort to extrinsic evidence. A contract is ambiguous if a reasonable
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person would find it susceptible to different or inconsistent interpretations.”
Ky. Shakespeare Festival, Inc. v. Dunaway, 490 S.W.3d 691, 694-95 (Ky. 2016).
Thus, for there to be contract ambiguities, the terms must be open to multiple
interpretations, or the language itself unclear. Although parties may
subsequently disagree on the meaning of terms they employed in an executed
contract that does not render the contract ambiguous. As this Court has
stated, “[t]he fact that one party may have intended different results . . . is
insufficient to construe a contract at variance with its plain and unambiguous
terms.” Abney v. Nationwide Mut. Ins. Co., 215 S.W.3d 699, 703 (Ky. 2006)
(citation omitted). Finally, “interpretation of a contract, including determining
whether a contract is ambiguous, is a question of law to be determined de novo
on appellate review.” Ky. Shakespeare Festival, 490 S.W.3d at 695. With these
principles in mind, we turn to the documents executed by Mostert and TMG.
Two contracts, the Contribution Agreement and the Security Agreement, reflect
the parties’ agreement with respect to entitlement to and possession of the
source code at the center of their dispute.
The Contribution Agreement provides for the transfer of assets from
Mostert to TMG in exchange for the agreed-upon compensation. That
agreement begins with the following “Recitals”:
Whereas, [Mostert] has created certain computer software
and other technology and intellectual property for the analysis of
horses for racing and breeding purposes, including but not limited
to the EquiTrax Technology, a technology for capture and analysis
of digital streaming images of racehorses in full gallop, and
[Mostert] has been using all of such property in the operation of a
business under the assumed names of “The Mostert Group” and
“Equimost” (the “Business”);
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Whereas, [Mostert] now desires to operate the Business
through a Kentucky limited liability company and has formed
[TMG] for that purpose; and
Whereas, [Mostert], who collectively owns 100% of the
Business, desires to contribute to [TMG] any and all right, title and
interest that it may have in any Assets (as defined herein),
including without limitation all assets of [Mostert] used or intended
to be used in the Business, in exchange for 200 Units in [TMG] and
a Promissory Note from [TMG] in the form attached hereto as
Exhibit A (the “Note”), all on the terms and subject to the
conditions contained herein.
In the “Agreement” section, paragraph 2, the Contribution Agreement states:
Effective as of the date hereof, [Mostert] hereby contributes,
transfers, assigns, conveys and delivers to [TMG] all of such
[Mostert’s] right, title and interest in and to all of the assets,
properties and rights primarily used or employed, or intended by
[Mostert] to be primarily used or employed, in connection with the
Business (the “Assets”), consisting of those assets listed on
Schedule 2A attached hereto.
The referenced Schedule 2A, entitled “Partial List of Contributed Assets,”
identifies in paragraph 2.1 the following assets to be transferred and delivered
by Mostert to TMG : “all of [Mostert’s] ownership or leasehold rights, as the
case may be, in computer and telecommunication equipment, software
programs, source codes, object codes, information systems . . . ,” etc. (emphasis
added). In paragraph 3 of Schedule 2A, additional assets to be transferred and
delivered are identified including “[a]ny and all rights of [Mostert] to the
following software and other property, and any corresponding patents,
trademarks and copyrights: a) Equitrax System . . . .” Thus, pursuant to the
aforequoted paragraph 2 of the Contribution Agreement, Mostert agreed to
“contribute[], transfer[], assign[], convey[] and deliver[]” the identified assets to
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TMG, effective as of October 31, 2003, the execution date of the Contribution
Agreement.
The $500,000 Note issued by TMG to Mostert that same date was
secured “as described in that certain Security Agreement of even date herewith
by and between the Payee [Mostert] and the Maker [TMG].” The Security
Agreement grants Mostert a security interest in specified collateral. It states in
relevant part:
[T]his Security Agreement is made as collateral security for the
payment and performance of all the following obligations:
a) $500,000.00 Term Promissory Note. [TMG’s] payment of that
certain Term Promissory Note payable to [Mostert] dated effective
as of the date hereof in the original principal amount of
$500,000.00 (the “Note”) . . . .
The Security Agreement identifies the covered collateral on Schedules A and B.
As relevant to the parties’ dispute, Schedule B, lists “[a]ny and all rights of
[Mostert] to the following ‘Software,’ and any corresponding patents,
trademarks and copyrights . . . . ” (emphasis added). Schedule B, a one and
one-half page single-spaced document, then continues with a list of the specific
“Software,” which includes the EquiTrax System, Palm Profit, Compute 2000
and other named software. Finally, pertinent to our review, Paragraph 4(b)(i) of
the Security Agreement provides:
[TMG] shall have possession of the Collateral, except where
expressly otherwise provided in this Security Agreement or where
[Mostert] chooses to perfect its security interest by possession.
Faced with two contracts executed by the parties simultaneously, we
look to the language employed in those contracts. The Contribution
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Agreement, lists “software programs” and “source codes” (followed in the next
paragraph by a reference to “software” and a listing of specific programs) as
distinct properties that Mostert was obligated to contribute to TMG. By
contrast, the Security Agreement only identifies certain named “software” as
collateral securing TMG’s performance pursuant to the Note; no mention is
made of “source code.” Much of Mostert’s argument centers on his assertion
that it is generally understood that “source code” is encompassed within the
broader term “software,” and therefore, any reference to “software” in the
Security Agreement would necessarily include the source code. In short, he
maintains that the term “software” always includes the source code, so it
follows that he retained a right to possess the source code to perfect his
security interest. In support of this argument, Mostert references dictionary
definitions of “software,” the Code of Federal Regulations and federal caselaw.
Resort to secondary sources, however, is not appropriate if we can interpret the
parties’ intent from the language they employed. North Fork Collieries, 322
S.W.3d at 105; Ky. Shakespeare Festival, 490 S.W.3d at 694. Resolution of
this case hinges on interpretation of the language used in the Contribution
Agreement and the accompanying Security Agreement, making external
definitions offered by Mostert immaterial.
Here, the parties specifically listed source code, object code and software
as distinct items in the Contribution Agreement. Schedule 2A paragraph 2.1,
as discussed above, specifically states that assets contributed by Mostert to
TMG include “all of [Mostert’s] ownership or leasehold rights, as the case may
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be, in computer and telecommunications equipment, software programs,
source codes, object codes, information systems,” etc. (emphasis added). In the
subsequent full paragraph, paragraph 3, additional assets to be contributed
are listed and they include “any and all rights of [Mostert] to the following
software and other property, and any corresponding patents, trademarks and
copyrights: a) EquiTrax System . . .” (emphasis added). A plain reading of the
documents thus reveals that the parties recognized and intended a difference
between the broader term “software” and the more specific “source code.”
Applying this reasoning to the Security Agreement leads to the conclusion that
Mostert did not have a security interest in the source code and thus was not
entitled to possess it, i.e., he had no right to perfect a security interest in
property not covered by the Security Agreement. This conclusion is premised
on the simple fact that the source code carefully delineated in the Contribution
Agreement is not mentioned in the Security Agreement. To read the broader
term “software” to encompass the source code would require us to ignore how
the parties themselves used terms in the documents they executed.
Moreover, it is clear that the parties never intended the Security
Agreement to mirror the Contribution Agreement such that Mostert retained a
security interest in every single item he was obligated to contribute, transfer,
assign, convey and deliver. The Security Agreement identifies the following
software as collateral: EquiTrax, PalmProphet, Compute2000, Old Landscape,
New Landscape, MareMatch, NetMatch, StalMatch, the Mostert Business
System, and various databases. By contrast, Schedule 2A of the Contribution
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Agreement lists the contributed assets as including “software programs, source
codes, object codes . . .” and in a separate paragraph further down lists “the
following software,” which includes all the software listed above, as well as
other property. Thus, several additional assets beyond the source code at the
center of this litigation are listed in the Contribution Agreement but omitted
from the list of collateral in the Security Agreement. This demonstrates that
the parties did not intend for the Security Agreement to mirror the
Contribution Agreement or, stated differently, TMG did not grant Mostert a
security interest in all of the items he was obligated to transfer under the
Contribution Agreement, the source code being but one example.
As the Court of Appeals stated, if the parties intended that the source
code be collateral covered by the Security Agreement and that Mostert could
retain possession of it the parties could have ― and should have ― so specified.
They did not. “It is of course a fundamental tenet of this jurisdiction that the
unambiguous language of a contract will be enforced as written and that the
courts will not re-write the contract in contradiction of its plain meaning.”
Wehr Constructors, Inc. v. Assurance Co. of America, 384 S.W.3d 680, 685 (Ky.
2012).
Based on the plain language of both agreements, Mostert agreed to
transfer the source code, and by refusing to relinquish possession he breached
the Contribution Agreement. Another “fundamental principle in the law of
contracts” is that “before one may obtain the benefits the contract confers upon
him, he himself must perform the obligation which is imposed upon him.”
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West Ky. Coal Co. v. Nourse, 320 S.W.2d 311, 314 (Ky. 1959). Before TMG was
obligated to pay the final installment payment on the Note in January 2009,
Mostert was obligated to transfer the source code but despite repeated
demands he failed to do so. “[T]he party first guilty of a breach of contract
cannot complain if the other party thereafter refuses to perform. . . . [H]e who
first breaches a contract must bear the liability for its nonperformance.”
Dalton v. Mullins, 293 S.W.2d 470, 476 (Ky. 1956).5 The record reflects that as
early as January 2006 TMG began demanding that Mostert deliver the source
code. Because the final installment payment under the Note was not due until
January 2009, Mostert was the first party to breach the Contribution
Agreement, and thus must bear liability.
In Dalton, 293 S.W.2d at 476, the court noted that when one party
refused to perform under a written contract, the other party “had the right to
treat this action as a breach, to abandon the contract, and to depart from
further performance on his own part and finally demand damages.” That is
exactly the procedure TMG employed. Each party to a contract is entitled to
the benefit of his bargain. Mostert’s breach excused TMG’s obligation to
further perform under the Contribution Agreement, and therefore, Mostert was
5 See also O’Bryan v. Mengel Co., 6 S.W.2d 249, 251 (Ky. 1928) (“[n]o principle
in the law of contracts is better settled than that the breach of an entire and
indivisible contract in a material particular excuses further performance by the other
party and precludes an action for damages on the unexecuted part of the contract.”).
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not entitled to summary judgment granting him judgment for the last
scheduled installment payment on the Note.6
CONCLUSION
For the reasons stated, partial summary judgment in favor of Mostert
was improper.7 Accordingly, we affirm the Court of Appeals’ opinion reversing
that partial summary judgment and remanding this case to the trial court for
further proceedings consistent with this opinion.
Minton, C.J.; Keller, VanMeter, Wright, JJ., and Dunaway and Rhoads,
SJ., sitting. All concur. Lambert and Nickell, JJ., not sitting.
COUNSEL FOR APPELLANT:
Frank T. Becker
COUNSEL FOR APPELLEE:
Richard A. Getty
Danielle Harlan
The Getty Law Group, PLLC
6 As noted, the circuit court granted partial summary judgment in Mostert’s
favor based, in part, on Bale, 652 S.W.2d 851, which held that a claim for breach of
fiduciary duty cannot serve as an affirmative defense to a claim to enforce a
promissory note. Mostert cites Bale and Waxman, 726 F. Supp.2d 752, to support the
proposition that an alleged breach of contract does not constitute a defense to actions
on notes or security interests. However, both Bale and Waxman involved bank loans
and explicitly held that a breach of fiduciary duty cannot serve as a defense to
enforcement of a note. Neither case involved a breach of contract claim. No fiduciary
duty is owed by either party to the other in this case but the parties did have
contractual obligations as discussed. Bale and Waxman are inapplicable.
7 We note that both parties raise issues regarding the classification of “software”
under Article 9 of Kentucky’s Uniform Commercial Code and whether possession is a
valid method of perfection. Given our resolution of this case, we do not reach that
issue.
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