Apprio, Inc. v. Zaccari

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
APPRIO, INC.,
Plaintiff,
v. Civil Action No. 18-2180 (JDB)
NEIL ZACCARI,
Defendant.
MEMORANDUM OPINION
Apprio, Inc., a government contractor, brings this suit against a former employee, Neil
Zaccari, for breach of contract, seeking a declaratory judgment. The dispute involves intellectual
property rights in a software program that Zaccari developed while working at Apprio. Apprio
has moved for partial summary judgment concerning the contractual assignment of rights in this
software program. Apprio claims that Zaccari contractually assigned his intellectual property
rights in the software to Apprio. Zaccari responds that he is not bound by the contract Apprio has
identified and that, even if he is, its terms do not apply to the specific software program at issue.
Because Zaccari did in fact objectively manifest his assent to the contract and because its
unambiguous terms do cover the software at issue, the Court will grant Apprio’s motion.
Background
From 2014 to 2017 Apprio performed work for the Defense Contract Management Agency
(“DCMA”), a federal agency organized under the Department of Defense to facilitate and monitor
the work of its government contractors. Def.’s Resp. to Pl.’s Stmt. of Undisputed Material Facts
(“Resp. SUMF”) [ECF No. 34-2] ¶¶ 1–3. DCMA hired Apprio to work on the implementation of
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software and automated processes and to help DCMA develop an Integrated Workload
Management System (“IWMS”), all of which would facilitate more efficient receipt and review of
government contracts by DCMA. See generally id. ¶¶ 4–16.
Defendant Neil Zaccari worked for Apprio from November 2, 2015 until approximately
May 11, 2017. Id. ¶¶ 19, 30. During this time he worked on Apprio’s DCMA projects. Id. ¶ 20.
While employed with Apprio, on or before June 15, 2016, 1 Zaccari was presented with a document
titled “Proprietary Information and Assignment of Inventions Agreement” (the “Agreement”).
Resp. SUMF ¶¶ 21–22; Pl.’s SUMF Ex. J, Agreement [ECF No. 31-14]. Zaccari agrees that he
“acknowledge[d]” receiving it but disputes having “assented to be bound by” its terms. Resp.
SUMF ¶ 22. Specifically, Zaccari says he was notified that “there was a policy for [him] to review”
in Apprio’s Human Resources software and that, after logging into that software, the text of the
Agreement was displayed on his computer screen. Zaccari Decl. [ECF No. 34-4] ¶¶ 14–16. He
“press[ed] a button” on the screen that read “Acknowledge,” but says he “was . . . never told that
‘agreeing’ to the document was a condition of [his] employment” and “didn’t understand [him]self
to be signing a contract that would bind [him].” Id. ¶ 16.
While the legal status of the Agreement is the subject of significant dispute—thoroughly
discussed below—the text of the Agreement’s key terms is not. In addition to the assignment of
inventions provisions at issue in this case, the Agreement also contains provisions addressing non-
disclosure of company information, duties of loyalty and non-competition, an at-will employment
provision, details on remedies, and other terms. Section 2 of the Agreement concerns the
1
In a prior lawsuit involving the same parties and the same subject matter (discussed in more detail below),
the parties disagreed on when the Agreement was presented to Zaccari, but they are now in agreement that he was
presented with it and acknowledged it “no later than June 15, 2016.” MSJ Br. at 5; Stmt. of Undisputed Material Facts
in Supp. of Apprio Inc.’s Mot. (“Pl.’s SUMF”), [ECF No. 31-2] ¶ 21; Resp. SUMF. ¶ 21 (not disputing plaintiff’s
timeline).
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assignment of “Inventions” and “Proprietary Rights,” the latter of which is defined as “all trade
secret, patent, copyright, mask work and other intellectual property rights throughout the world.”
Agreement ¶ 2.1. The Agreement states that an Apprio employee consenting to its terms will
“[t]hereby assign and agree to assign in the future . . . to [Apprio] all [of the employee’s] right,
title and interest in and to any and all Inventions (and all Proprietary Right with respect
thereto) . . . .” Id. ¶ 2.3. This applies, with some significant exceptions discussed in detail below,
to all inventions “whether or not patentable or registrable under copyright or similar statutes” so
long as they are “made or conceived or reduced to practice . . . during the period of” employment
with Apprio. Id.
The assignment of rights has become a point of contention between the parties because
while he was employed by Apprio, Zaccari developed a piece of software using Microsoft Excel
Macros—the “CRR Software.” Compl. [ECF No. 1] ¶¶ 37, 40; Am. Answer [ECF No. 20] ¶¶ 37,
40 (not disputing these facts). The CRR Software “automated the DCMA’s manual contract
receipt and review process.” Am. Answer ¶ 42. Zaccari says he created the CRR Software
“independently” and “on his own time.” Id. ¶ 40. He has been less clear about when exactly he
created it. In his Amended Answer Zaccari states that he created the CRR Software “during the
time period [when] he was also an employee of Apprio,” id., but his subsequent Declaration
indicates that the CRR Software is better described as having developed out of a base code that he
developed in 2008 and then updated while working for Apprio, Zaccari Decl. ¶¶ 4–5, 9–10. Either
way, there is no dispute that while working on Apprio’s DCMA projects, Zaccari “informed
Apprio that he could use the existing capabilities of an Excel macro to automate the DCMA’s
manual contract receipt and review process.” Am. Answer ¶ 37.
3
The parties disagree regarding the timing of the events that followed. Zaccari says he told
Apprio what he could do with an Excel macro “after [he had] independently creat[ed] his CRR
software,” id., while Apprio suggests that Zaccari told Apprio that it would be possible to create
the software before he actually did so, Compl. ¶ 37. The parties agree that Zaccari brought his
creation into work and demonstrated it to his colleagues, and possibly to at least one DCMA
official, though Zaccari’s statements about this have been inconsistent. Zaccari Decl. ¶¶ 12–13
(describing Zaccari’s intent “to show [the CRR Software] to [his] colleagues and a senior level
government employee” and indicating that he did “a few demonstrations for different colleagues”);
Compl. ¶ 39 (alleging that Zaccari “demonstrate[ed] the CRR software to Apprio” and then
“demonstrated and then provided it . . . to DCMA”); but see Am. Answer ¶ 39 (disputing Compl.
¶ 39 in its entirety). Apprio says that Zaccari “provided [the CRR Software] . . . to DCMA,”
Compl. ¶ 39, while Zaccari says Apprio “took [his] software” after threatening his job, Zaccari
Decl. ¶ 13. Either way, no one disputes that DCMA ended up using the software. Compl. ¶ 39
(“Zaccari . . . provided [the software] . . . to DCMA as part of Apprio’s responsibilities”); Zaccari
Decl. ¶ 13 (“DCMA . . . deployed it to thousands of their employees”).
The parties’ dispute over proprietary rights in the CRR Software began from there.
Zaccari’s employment was terminated in May 2017, and he has since refused Apprio’s demands
that he turn over all copies of the CRR Software in his possession. Compl. ¶ 45; Am. Answer
¶ 45. He has also refused to execute a formal assignment of property rights in the CRR Software
to Apprio. Resp. SUMF ¶ 49. In April 2018, he applied for a copyright registration for the CRR
Software. Compl. ¶ 46; Am. Answer ¶ 46; Pl.’s SUMF Ex. N, Copyright Registration [ECF No.
31-18]. Zaccari then filed a lawsuit against Apprio in June 2018, alleging that Apprio had breached
the Agreement, infringed on his copyright in the CRR Software, unlawfully conspired with DCMA
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against him, and misappropriated trade secrets. Compl. (“1560 Compl.”) at 10–14, Zaccari v.
Apprio, Inc., No. 18-cv-1560 (D.D.C. Jun. 29, 2018) [ECF No. 1]. The parties refer to that prior
lawsuit as “the 1560 litigation” in reference to its case number. Apprio filed the instant lawsuit
against Zaccari a few months later.
The 1560 litigation and this case were both before this Court, and in 2019 the Court
consolidated them pursuant to Federal Rule of Civil Procedure 42(a). Order (Jan. 11, 2019),
Zaccari, No. 18-cv-1560 [ECF No. 15]. Apprio successfully moved to dismiss Zaccari’s complaint
against it for lack of subject matter jurisdiction and failure to state a claim. Zaccari v. Apprio, Inc.,
390 F. Supp. 3d 103, 106 (D.D.C. 2019). The Court held that it lacked jurisdiction over Zaccari’s
copyright infringement and conspiracy claims and that he had failed to state a claim for breach of
contract or misappropriation of trade secrets. Id. at 108–14. The Complaint in the 1560 litigation
was dismissed, id. at 114, and the Court deconsolidated the two cases, see Order (Aug. 27, 2019),
[ECF No. 15]. No appeal of that decision was taken.
Following discovery in this case, Apprio filed the instant motion for partial summary
judgment. Apprio Inc.’s Mot. for Summ. J. on Contractual Assignment of Rights (“Mot.”) [ECF
No. 31]. Apprio seeks summary judgment “regarding the contractual assignment of any rights
Zaccari has in the CRR Software, including assignment of all rights Zaccari may have in” his
copyright registration. Id. at 1; see also Mem. in Supp. of Apprio Inc.’s Mot. for Summ. J. on
Contractual Assignment of Rights (“MSJ Br.”) [ECF No. 31-1]. Zaccari opposes the motion.
Zaccari’s Mem. of P. & A. in Opp’n to Apprio, Inc.’s Mot. (“Opp’n”) [ECF No. 34]. The motion
is now fully briefed and ripe for resolution. See Reply Mem. in Supp. of Apprio Inc.’s Mot.
(“Reply”) [ECF No. 39].
5
Legal Standard
Summary judgment is appropriate where “the movant shows there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). “The mere existence of some factual dispute is insufficient on its own to bar summary
judgment; the dispute must pertain to a ‘material’ fact.” Etokie v. Duncan, 202 F. Supp. 3d 139,
145 (D.D.C. 2016) (citation omitted). Hence, “[o]nly disputes over facts that might affect the
outcome of the suit under the governing law will properly preclude the entry of summary
judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Summary judgment may
not “be avoided based on just any disagreement as to the relevant facts; the dispute must be
‘genuine,’ meaning that there must be sufficient admissible evidence for a reasonable trier of fact
to find for the non-movant.” Etokie, 202 F. Supp. 3d at 146 (quoting Anderson, 477 U.S. at 248).
The Court must determine “whether the evidence presents a sufficient disagreement to
require submission to a jury or whether it is so one-sided that one party must prevail as a matter of
law.” Anderson, 477 U.S. at 251–52. Thus, a nonmoving party must “do more than simply show
that there is some metaphysical doubt as to the material facts,” Matsushita Elec. Indus. Co., Ltd.
v. Zenith Radio Corp., 475 U.S. 574, 586 (1986), and “[i]f the evidence is merely colorable, or is
not significantly probative, summary judgment may be granted,” Anderson, 477 U.S. at 249–50
(citations omitted). “A party asserting that a fact cannot be or is genuinely disputed must support
that assertion by” either “citing to particular parts of materials in the record, including depositions,
documents, electronically stored information, affidavits, . . . or other materials” or “showing that
the materials cited do not establish the absence or presence of a genuine dispute . . . .” Fed. R.
Civ. P. 56(c)(1). Conclusory assertions offered without any factual basis in the record cannot
create a genuine dispute. See Ass’n of Flight Attendants–CWA v. U.S. Dep’t of Transp., 564 F.3d
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462, 465–66 (D.C. Cir. 2009).
The Court must regard the non-movant’s statements as true and accept all evidence and
make all inferences in the non-movant’s favor. See Anderson, 477 U.S. at 255. Moreover, a court
may not “make credibility determinations or weigh the evidence.” Lopez v. Council on American–
Islamic Relations Action Network, Inc., 826 F.3d 492, 496 (D.C. Cir. 2016) (citation omitted).
Rather, the court’s role at summary judgment is to resolve legal questions, while viewing the
evidence in the light most favorable to the nonmoving party. See Robinson v. Pezzat, 818 F.3d 1,
8 (D.C. Cir. 2016) (citing Anderson, 477 U.S. at 255).
Finally, a party’s response to Rule 36 Requests for Admission may provide a basis for
summary judgment. Federal Rule of Civil Procedure 36 states that “[a] party may serve on any
other party a written request to admit, for purposes of the pending action only, the truth of any
matters within the scope of [discovery] relating to . . . facts, the application of law to fact, or
opinions about either.” Fed. R. Civ. P. 36(a)(1). The purpose of such requests is “to narrow the
scope of issues to be litigated and thereby expedite the litigation process.” Harris v. Koenig, 271
F.R.D. 356, 372 (D.D.C. 2010) (quoting Kendrick v. Sullivan, No. 83-CV-3175, 1992 WL 119125,
at *3 (D.D.C. May 15, 1992)). “A matter admitted under [Rule 36] is conclusively established
unless the court, on motion, permits the admission to be withdrawn or amended.” Fed. R. Civ. P.
36(b). “[W]here the ‘facts that are admitted under Rule 36 are “dispositive” of the case’”—or
dispositive of the issues on which a party has moved for summary judgment—“‘then it is proper
for the district court to grant summary judgment.’” Essroc Cement Corp. v. CTI/D.C., Inc., 740
F. Supp. 2d 131, 140–41 (D.D.C. 2010) (quoting Quasius v. Schwan Food Co., 596 F.3d 947, 950–
51 (9th Cir. 2010)); see also § 2264 Use and Effect of Admissions, 8B Fed. Prac. & Proc. Civ. §
2264 (3d ed.) (“Admissions obtained under Rule 36 may show that there is no genuine issue as to
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any material fact and justify the entry of summary judgment under Rule 56” provided that “the
admissions are [not] uncertain” and have not been withdrawn).
Analysis
To prevail on a claim for breach of contract under District of Columbia law, 2 a plaintiff
must establish: (1) a valid contract between the parties, (2) an obligation or duty arising out of the
contract, (3) breach of that obligation or duty, and (4) damages caused by that breach. See Brown
v. Sessoms, 774 F.3d 1016, 1024 (D.C. Cir. 2014) (quoting Tsintolas Realty Co. v. Mendez, 984
A.2d 181, 187 (D.C. 2009)); Francis v. Rehman, 110 A.3d 615, 620 (D.C. 2015). The instant
motion concerns the first two of these elements and presents two questions. First, is the Agreement
a binding contract between Apprio and Zaccari? Second, if the Agreement is a binding contract,
does it dictate that Zaccari assigned his rights to the CRR Software?
I. Contract Formation
The first point of disagreement between the parties concerns whether the Agreement is an
enforceable contract and specifically whether Zaccari consented to be bound by its terms, or
whether he merely acknowledged that he had received it from Apprio. Under D.C. law, “[f]or an
enforceable contract to exist, there must be both (1) agreement as to all material terms; and (2)
intention of the parties to be bound.” United House of Prayer for All People v. Therrien Waddell,
Inc., 112 A.3d 330, 337–38 (D.C. 2015) (quoting Georgetown Ent. Corp. v. Dist. of Columbia,
496 A.2d 587, 590 (D.C. 1985)). “While agreement as to material terms ‘is most clearly evidenced
by the terms of a signed written agreement . . . such a signed writing is not essential to the
formation of a contract.’” Id. at 338 (quoting Kramer Assocs., Inc. v. Ikam, Ltd., 888 A.2d 247,
2
District of Columbia law governs the Agreement, by its terms. Agreement ¶ 11.1. While Zaccari argues
that he is not bound by the Agreement, he does not dispute that the Court should apply D.C. law when deciding
whether a contract exists in the first instance. See Opp’n at 6–10 (citing D.C. law).
8
252 (D.C. 2005)). The intention to be bound by the terms of an agreement “can be found from
written materials, oral expressions and the actions of the parties.” Duffy v. Duffy, 881 A.2d 630,
637 (D.C. 2005). “[R]egardless of the parties’ actual, subjective intentions, the ultimate issue is
whether . . . they objectively manifested a mutual intent to be bound contractually.” E.M. v. Shady
Grove Reprod. Sci. Ctr. P.C., 496 F. Supp. 3d 338, 394–95 (D.D.C. 2020) (quoting Dyer v. Bilaal,
983 A.2d 349, 357 (D.C. 2009)); see also Northland Cap. Corp. v. Silver, 735 F.2d 1421, 1426–
27 n.7 (D.C. Cir. 1984) (“The principle that objective manifestation of intent is controlling in
contract formation is very well established.”).
Apprio, as the party asserting the existence of a contract, bears “the burden of proving that
one existed.” Kramer Assocs., 888 A.2d at 251; Phillips v. Spencer, 390 F. Supp. 3d 136, 167
(D.D.C. 2019). “The determination whether an enforceable contract exists,” whether in the form
of a written or oral contract, “is a question of law” to be resolved by the Court in most cases.
Rosenthal v. Nat’l Produce Co., 573 A.2d 365, 369 n.9 (D.C. 1990) (citing Georgetown Ent. Corp.,
496 A.2d at 590); Phillips, 390 F. Supp. 3d at 167.
Apprio argues that “Zaccari agreed to be bound by the Agreement” and that he did so “[i]n
consideration of his employment with, and salary from, Apprio.” MSJ Br. at 6. Apprio’s
Statement of Undisputed Material Facts does not directly assert that a contract was formed but
states instead that “[t]he Agreement was provided to and acknowledged by Mr. Zaccari during his
employment with Apprio” and that “Zaccari had a number of obligations under the Agreement.”
Pl.’s SUMF ¶¶ 22–23. Zaccari responds that Apprio “has provided no evidence that [he] assented
to be bound by the terms of the Agreement, was offered or received any consideration for agreeing
to be bound by the terms of the Agreement, or did anything more concerning the Agreement than
acknowledge its receipt.” Resp. SUMF ¶ 22–23.
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In fact, Apprio has provided evidence in support of its position. To start, Apprio has
produced an electronic record indicating that Zaccari acknowledged the Agreement on June 15,
2016. Pl.’s SUMF ¶ 22 (citing, inter alia, Pl.’s SUMF Ex. K [ECF No. 31-15]). Zaccari, of course,
does not dispute that he “acknowledge[d]” receiving the Agreement. Resp. SUMF ¶ 22. Apprio
also points to certain of Zaccari’s responses to Requests for Admission which confirm that Zaccari
sought to enforce the Agreement against Apprio in the 1560 litigation. See Pl.’s SUMF ¶ 22 (citing
Pl.’s SUMF Ex. H, Def.’s Objs. & Resps. to Pl.’s First Reqs. for Admiss. (“Def.’s RFA Resps.”)
[ ECF No. 31-12]); see also Def.’s RFA Resps. at 2. Elsewhere, Apprio argues that Zaccari is
bound by assertions he made in the 1560 litigation and his Amended Answer can be read as
containing an admission that he was bound by the Agreement. MSJ Br. at 7; Reply at 5–6. To
argue that no contract was formed, Zaccari points to the text of the Agreement, to the electronic
record stating that he “acknowledged”—rather than “agreed to”—it, and to his and a former co-
worker’s declarations concerning their understanding of the Agreement. Resp. SUMF ¶¶ 22–23
(citing Agreement & Pl.’s SUMF Ex. K); Opp’n at 7–9 (citing Zaccari Decl. & Jenkins Sink Decl.
[ECF No. 34-5]).
Apprio has the better of this dispute because, even looking only at the evidence Zaccari
relies on, it is sufficiently clear that in acknowledging the Agreement Zaccari objectively
manifested his assent to its terms. While he is correct that he never signed the Agreement as one
would sign a prototypical contract, “[t]he manifestation of assent may be made wholly or partly
by written or spoken words or by other acts or by failure to act.” Restatement (Second) of
Contracts § 91(1) (1981). The text of the Agreement and the context in which it was presented
made it objectively clear that Apprio intended that its employees would manifest their assent to
the Agreement by the act of clicking “acknowledge,” and this is what Zaccari did.
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Zaccari’s argument that he never entered into the Agreement with Apprio relies on the
notion that the Court should find some meaningful difference between “acknowledging” the
Agreement and “signing” or “agreeing to” it. In some contexts, such a difference might exist, but
the Court does not believe that any difference can be found here. Zaccari does not deny having
had the opportunity to read the Agreement. By his own account, he opened the Agreement in June
2016 and “saw that the document . . . was called ‘Proprietary Information and Assignment of
Inventions Agreement.’” Zaccari Decl. ¶ 15. He therefore knew, even if he read nothing more
than the title of the document, that he was being presented with an agreement. 3 The Agreement
begins by identifying a crucial element of contract formation—the consideration Zaccari will
receive in exchange for agreeing to the terms presented. It reads: “In consideration of my being
retained as a consultant with or employee of Apprio, Inc . . . and the consideration now and
hereafter paid to me, I hereby agree as set forth herein.” Agreement at 1.
Zaccari clicked a button that said “acknowledge,” not “agree,” but the terms and context
of the contract make clear that no distinction should be drawn on this basis. While the opening
paragraph of the Agreement uses the word “agree,” the final paragraph treats the two verbs as
equivalent and connects them each to the notion of signing a more traditional hard-copy written
contract: “I acknowledge and agree that the language herein shall be deemed to be approved by all
parties hereto . . . and that I have had an opportunity to consult with an attorney regarding the terms
3
It is unlikely that this was the first time Zaccari encountered a contract presented on a computer screen with
the option for the user to manifest agreement by clicking a button, and he does not argue otherwise. The tech-savvy
Zaccari is undoubtedly familiar with the “clickwrap” agreements frequently encountered by consumers using software
or engaging in online transactions. See, e.g., Forrest v. Verizon Commc’ns, Inc., 805 A.2d 1007, 1010 (D.C. 2002)
(describing an internet service contract which a consumer “entered into by the subscriber clicking an ‘Accept’ button
below the scroll box”); Selden v. Airbnb, Inc., No. 16-CV-00933 (CRC), 2016 WL 6476934, at *4 (D.D.C. Nov. 1,
2016) (“Courts and commentators have identified a number of variations of these electronic agreements, including
‘browsewraps,’ ‘clickwraps,’ ‘scrollwraps,’ and ‘sign-in-wraps.’”). Today it is not uncommon for a computer user to
be presented with an extensive set of contractual terms with only the option of agreeing to these terms or abandoning
the use of a particular website, service, or piece of software.
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herein prior to signing this Agreement.” Id. ¶ 11.9. (emphasis added). The reference to “signing”
the Agreement does not detract from the equivalence drawn between acknowledgment and
agreement. No signature line is present, so it is clear from context that Apprio did not expect a
signature. Zaccari has said that the Apprio Human Resources system did not display any
instructions about, for example, printing and signing the Agreement. Zaccari Decl. ¶ 16 (“There
was no text other than the document itself.”). He therefore had no reason to think that Apprio
expected a more formal acceptance of the Agreement. Further, under D.C. law, even an unsigned
written contract can be enforced if there is sufficient evidence from the parties’ conduct to show
that they manifested their assent to be bound. Davis v. Winfield, 664 A.2d 836, 838 (D.C. 1995);
see also M.R.S. Enters., Inc. v. Sheet Metal Workers’ Int’l Ass’n, Loc. 40, 429 F. Supp. 2d 72, 78
(D.D.C. 2006). The lack of a signature is therefore not a per se bar to contract formation.
Given the context of an electronically-presented Agreement, with no signature line and no
opportunity for a digital signature, the terms of the Agreement make it clear that “acknowledge”
is the key verb, and the Agreement’s final paragraph clarifies that acknowledgment will be treated
as equivalent to a signature. If Zaccari had read the Agreement—he does not say whether he did
but does not deny having had the opportunity to do so—he should have understood that he was
agreeing to be bound by its terms and that he was receiving continued employment with Apprio
as consideration. 4 Zaccari does not dispute that he clicked the “Acknowledge” box that was
presented to him and thus “acknowledged” the Agreement on June 15, 2016. Resp. SUMF. ¶¶ 21–
22; Zaccari Decl. ¶ 16. He saw the text of the document but says he did not “understand [himself]
4
The Declaration of Zaccari’s former co-worker, Mary Jenkins Sink, adds nothing to help his arguments.
She says that she also received the Agreement from Apprio and that “[t]here was no text or warning that stated that
clicking the ‘Acknowledge’ button constituted [her] signature or agreement to be bound by the document.” Jenkins
Sink Decl. ¶ 6. As the Court has explained, this is not an accurate description of the Agreement, especially considering
the context in which it was presented.
12
to be signing a contract that would bind [him], or that signing was a requirement to keep [his] job.”
Zaccari Decl. ¶ 16. But Zaccari has offered no reason why “acknowledging” a contract with terms
that treat acknowledgment as agreement should be any less binding than signing it would be.
District of Columbia courts have “consistently adhered to a general rule that one who signs a
contract has a duty to read it and is obligated according to its terms. . . . [A]bsent fraud or mistake,
one who signs a contract is bound by a contract which he has an opportunity to read whether he
does so or not.” Pyles v. HSBC Bank USA, N.A., 172 A.3d 903, 907 (D.C. 2017); Proulx v. 1400
Pennsylvania Ave., SE, LLC, 199 A.3d 667, 672 (D.C. 2019). Because acknowledging the
Agreement amounts to signing it in this context, Zaccari is bound by its terms.
In a footnote, Zaccari argues that the Copyright Act’s statute of frauds ought to preclude
the formation of a contract here. Opp’n at 6 n.1. The Copyright Act requires that “[a] transfer of
copyright ownership . . . is not valid unless an instrument of conveyance, or a note or memorandum
of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly
authorized agent.” 17 U.S.C. § 204(a). Zaccari suggests that there is no “signed Agreement” here
and that therefore “any doubt . . . is construed in favor of the original copyright holder.” Opp’n at
6 n.1. This argument overlooks the E-SIGN Act, which says that “[n]otwithstanding any
statute . . . (1) a signature, contract, or other record . . . may not be denied legal effect, validity, or
enforceability solely because it is in electronic form; and (2) a contract . . . may not be denied legal
effect, validity, or enforceability solely because an electronic signature or electronic record was
used in its formation.” 15 U.S.C. § 7001(a). For purposes of the E-SIGN Act, “[t]he term
‘electronic signature’ means an electronic sound, symbol, or process, attached to or logically
associated with a contract or other record and executed or adopted by a person with the intent to
sign the record,” and an “electronic record” is “a contract or other record created, generated, sent,
13
communicated, received, or stored by electronic means..” Id. § 7006(4–5). By acknowledging the
Agreement with a click of his mouse, Zaccari carried out a “process . . . logically associated with”
the Agreement, and did so intentionally. Apprio has produced an electronic record of this process,
Pl.’s SUMF Ex. K, the validity of which Zaccari does not dispute, Resp. SUMF ¶¶ 22–23 (citing
Pl.’s SUMF Ex. K). Because of the E-SIGN Act, this evidence is as good as a written signature.
Hence, even if Zaccari were correct that “any doubt . . . is construed” in his favor, his
acknowledgment left no doubt about his consent. The Copyright Act’s statute of frauds therefore
does not bar the assignment of his copyright interest. 5
Zaccari’s conduct surrounding the Agreement also reflects an objective manifestation of
an intent to be bound contractually. In the District of Columbia, following the rule of the Second
Restatement of Contracts, an offeree may be entirely silent in response to an offered contract and
still be bound by its terms if “it is reasonable that the offeree should notify the offeror if he does
not inten[d] to accept” and if “the offeree has taken the offered benefits.” Steuart Inv. Co. v. The
Meyer Grp., Ltd., 61 A.3d 1227, 1236 n.10 (D.C. 2013) (quoting William F. Klingensmith, Inc. v.
Dist. of Columbia, 370 A.2d 1341, 1343 (D.C. 1977) (adopting the Restatement rule));
Restatement (Second) of Contracts § 69 cmt. b (1981). Here, Zaccari accepted the benefits
described in the Agreement (“being retained as a[n] . . . employee of Apprio, Inc.”) and continued
receiving pay. Zaccari never followed up with Apprio’s Human Resources office to ask any
questions about the Agreement or to object to any of its terms. Moreover, Zaccari was hardly
“silent” when presented with the Agreement: he provided the only acknowledgement that Apprio
5
Even if the statute of frauds did apply, it would apply to the transfer of a “copyright ownership.” 17 U.S.C.
§ 204(a). The Agreement purports to transfer “all . . . right, title and interest in and to any and all Inventions (and all
Proprietary Rights with respect thereto).” Agreement ¶ 2.3. This is arguably a broader set of intellectual property
rights than just “copyright ownership.” As a result, even if the statute of frauds did bar the assignment of Zaccari’s
copyright ownership here, he might still have assigned other intellectual property interests to Apprio, and Apprio’s
motion might therefore still be granted in part.
14
expected. See Pl.’s SUMF Ex. K (electronic record of assent). It is unreasonable for an employee
to say nothing to his employer if he intends not to be bound by the kinds of provisions included in
the Agreement—not just the assignment of rights, but duties of loyalty, confidentiality, and non-
disclosure and non-solicitation provisions. Employers rarely treat these kinds of provisions as
optional. Despite his assertion that he did not intend to be bound, there was no way that Apprio,
or anyone else, could have known this was his subjective mental state.
Zaccari continued to objectively manifest an understanding that he was bound by the
Agreement up through the initiation of the 1560 litigation, by which he attempted to enforce the
Agreement against Apprio. 6 1560 Compl. at 10; see Weickert v. Nat. Prods. Ass’n, No. 16-cv-
142, 2017 WL 6334074, at *1 (D.D.C. Mar. 31, 2017) (holding based on a review of the undisputed
facts that an employee “manifested his assent to [the] terms” contained in an employee handbook
“by working at [the employer]” and, among other ways, by “avail[ing] himself of” grievance
procedures contained in the handbook). This is not to say that Zaccari’s current protestations are
not credible, since the Court cannot make a credibility determination at this stage of the litigation.
Lopez, 826 F.3d at 496. The Court simply views the fact that Zaccari tried to enforce the
Agreement as one further undisputed piece of evidence suggesting that he did manifest an intent
to be bound by it.
Zaccari says he “never understood himself to be bound by the Agreement nor did he intend
to be bound by the Agreement,” Opp’n at 8, but the law of the District is quite clear that a party’s
subjective understanding is not what matters when a Court is determining whether two parties have
6
This is not to say that Apprio is correct in its argument that Zaccari’s pleadings in the 1560 litigation
constitute an admission to which Zaccari is still bound. See Reply at 3–5; see also MSJ Br. at 7. The Court need not
decide that issue because it finds as a matter of law that Zaccari objectively manifested an intent to enter into the
Agreement. The same goes for Apprio’s related arguments concerning Zaccari’s Responses to Requests for
Admission and his Amended Answer that focus on the 1560 litigation. Reply at 3–6.
15
formed a contract. “[R]egardless of the parties’ actual, subjective intentions, the ultimate issue is
whether, by their choice of language . . . , they objectively manifested a mutual intent to be bound
contractually.” Dyer, 983 A.2d at 357 (quoting 1836 S St. Tenants Ass’n, Inc. v. Estate of Battle,
965 A.2d 832, 837 (D.C. 2009)); Hernandez v. Banks, 65 A.3d 59, 70 (D.C. 2013); Hart v. Vt. Inv.
Ltd. P’ship, 667 A.2d 578, 583 (D.C. 1995) (“A party’s ‘claimed intent is immaterial, where it has
agreed in writing to a clearly expressed and unambiguous intent to the contrary.’” (quoting Ray v.
William G. Eurice & Bros., Inc., 93 A.2d 272, 278 (Md. 1952))). Because Zaccari objectively
manifested his intent to be bound by the terms of the Agreement, through both his
“acknowledgement” of the Agreement and his subsequent conduct, his argument fails.
II. Assignment of Rights
The remaining points of contention concern the interpretation of the Agreement, which the
Court has now determined is a binding contract between Apprio and Zaccari. District of Columbia
courts “adhere[] to an ‘objective’ law of contracts,” and will give effect to the clear terms of an
agreement “‘[regardless] of the intent of the parties at the time they entered into the contract.’”
Dyer, 983 A.2d at 354–55 (quoting DSP Venture Grp., Inc. v. Allen, 830 A.2d 850, 852 (D.C.
2003)). “In construing a contract, the court must determine what a reasonable person in the
position of the parties would have thought the disputed language meant.” Fort Lincoln Civic
Ass’n, Inc. v. Fort Lincoln New Town Corp., 944 A.2d 1055, 1064 (D.C. 2008) (quotation
omitted). “Where the language in question is unambiguous, its interpretation is a question of law
for the court.” Id. (quotation omitted).
In broad terms, Apprio argues that Zaccari has given up his intellectual property rights in
the CRR Software, and Zaccari argues that he has not done so even if he is bound by the
Agreement. The Court’s analysis will begin with a detailed review of the key terms of the
16
Agreement. Next, the Court will address several of Zaccari’s arguments and explain how they
misconstrue the Agreement. Last, mindful that Apprio, as the party seeking summary judgment,
bears the burden of demonstrating the absence of a genuine dispute of material fact, see Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986), the Court will review Apprio’s arguments on their own
terms.
Paragraph 2.3 of the Agreement states, in relevant part:
2.3 Assignment of Inventions. Subject to Sections 2.4, and 2.6, I hereby assign
and agree to assign in the future . . . to the Company all my right, title and interest
in and to any and all Inventions (and all Proprietary Rights with respect thereto)
whether or not patentable or registrable under copyright or similar statutes, made
or conceived or reduced to practice or learned by me, either alone or jointly with
others, during the period of My Service.
Agreement ¶ 2.3. Inventions assigned under this section are termed “Company Inventions.” Id.The Agreement establishes a few types of inventions that do not become “Company Inventions”
under paragraph 2.3. Id. ¶¶ 2.2, 2.4. First, under paragraph 2.4, “Unassigned Inventions” remain
an employee’s own. Id. ¶ 2.4. These are inventions “developed entirely on [the employee’s] own
time without using [Apprio’s] equipment, supplies, facilities, or trade secrets and neither related
to [Apprio’s] actual or anticipated business, research or development, nor resulted from work
performed by [the employee] for [Apprio].” Id.
The second category of exempted inventions, “Prior Inventions,” has a somewhat more
complicated definition, as set forth in paragraph 2.2. Id. ¶ 2.2. “Prior Inventions” are those that
“[an employee] made prior to the commencement of” employment with Apprio. Id. An employee
assenting to the Agreement agrees that he or she has “set forth on a Previous Inventions Disclosure
Form . . . a complete list of all Inventions . . . conceived, developed or reduced to practice . . . prior
to the commencement of” employment with Apprio. Id. The point of this Form is to “preclude
any possible uncertainty” over who owns the Invention. Id. By the terms of the Agreement “[i]f
17
no such disclosure is made, [the employee] represent[s] that there are no Prior Inventions.” Id.
Even if a disclosure is made, though, “[i]f, in the course of . . . Service, [the employee]
incorporate[s] a Prior Invention into a Company product, process or machine,” then Apprio does
receive “a nonexclusive royalty-free, irrevocable, perpetual, worldwide license . . . to make, have
made, modify, use and sell such Prior Invention.” Id. Finally, establishing a third category of
exempt inventions, the Agreement explains that Prior Invention disclosures do not have to include
those “developed . . . prior to the commencement of” employment with Apprio, if the employee
does not use them “in connection with” work for Apprio. Id.
Zaccari argues that even if he is bound by the Agreement, he did not assign to Apprio any
rights in the CRR software. He insists that the “CRR Software includes two components: a base
code and an update to the base code.” Opp’n at 12. According to Zaccari’s Opposition brief, he
developed the base code in 2008 and it should fall in the third category—established in Agreement
paragraph 2.2—of inventions developed prior to the commencement of employment with Apprio,
which do not need to have been disclosed as Prior Inventions. Id. at 12–14. He then argues that
the updates are exempt “Unassigned Inventions” that he developed in 2016 on his own time and
without using company resources. Id. at 14–15. But both these arguments fail because they
overlook the clear and unambiguous language in the Agreement.
Zaccari’s argument concerning the creation of a “base code” in 2008 demonstrates the
flaws with his arguments in opposition more generally. He says that “[t]he base code was
developed in 2008, long before [his] employment at [Apprio],” and he cites to an expert report that
he says supports this notion. Id. at 12–13 (citing Decl. of Kirk T. Schroder, Ex. A, Expert Report
of Gregory G. Crouse (“Crouse Rept.”) [ECF No. 34-3]). He then points to the language in
paragraph 2.2. stating that an employee does not have to disclose, as a “Prior Invention,” any
18
invention “created ‘prior to the commencement of [employment] if [the employee does] not use
such inventions in connection with [his employment].’” Id. at 13 (quoting Agreement ¶ 2.2).
There are a few problems with this line of argument.
To start, even assuming that the expert report creates a genuine dispute of fact concerning
the existence of a 2008 base code, 7 it does nothing to further Zaccari’s argument that he did not
agree to turn over intellectual property rights in the CRR Software. He first says that he “was not
obligated to disclose the base code . . . because he was not required to use the code in his
employment.” Id. However, nothing in paragraph 2.3, or anywhere in the Agreement, says that
an employee must be required to use an Invention in order for Apprio to receive rights to that
Invention. Instead, the Agreement states—and Zaccari agreed—that “[i]f, in the course of [his
employment], [he] incorporate[s] a Prior Invention into a Company product, process or machine,”
then Apprio receives intellectual property rights in that Prior Invention. Agreement ¶ 2.2. Nor
does the third exception—for non-disclosed inventions that do not qualify as Prior Inventions—
help Zaccari. This exception establishes that “Prior Inventions shall not include Inventions that I
have developed . . . prior to the commencement of [employment with Apprio],” but with a
significant qualification—“if I do not use such inventions in connection with my [employment
with Apprio].” Id. It therefore does not matter whether some part of the CRR Software was
developed before Zaccari worked for Apprio. Apprio would have rights to the base code if Zaccari
“use[d] [it] in connection with [his employment]” and failed to disclose it, or if he “incorporate[d]”
it “into a Company product, process or machine.” Id. Under Paragraph 2.2, then, Apprio has
7
Apprio does not challenge the expert report but argues that Zaccari made admissions in the 1560 litigation,
in his responses to requests for admission, and in his copyright filing that are inconsistent with the idea that he created
the CRR Software in two stages. See Reply at 11–12. The Court need not decide whether this amounts to a genuine
dispute of fact because even if Zaccari can prove that the software was developed in two stages, his arguments
nonetheless fail for the reasons explained above.
19
rights in all aspects of the CRR Software if the CRR Software was a “Company product” or if
Zaccari developed it by using the base code “in connection with” his employment. These issues
are addressed below, but here it is enough to note that having created the base code in 2008 makes
no difference for the purpose of Apprio’s rights under Paragraph 2.2.
Zaccari’s next argument is that his “updates to the base code . . . fall under the exception
provided under Section 2.4 of the Agreement for Unassigned Inventions.” Opp’n at 14. Citing
his own declaration and his expert report, Zaccari argues that the work he did in 2016 amounted
only to “non-substantive updates to the base code.” Id. at 14–15 (citing Zaccari Decl. ¶¶ 9–11,
Crouse Rept. § V.C–D). This may be true, but Zaccari points to nothing in the Agreement that
exempts “non-substantive updates” to earlier Inventions from the assignment-of-rights provisions.
Again, Paragraph 2.2 anticipates the incorporation of Prior Inventions into new Inventions related
to Apprio’s business and requires that employees sign over their rights in both the new and old
aspects of such Inventions. Agreement ¶ 2.2. The unambiguous text of the Agreement treats minor
or non-substantive updates no differently than major or substantive ones, and Zaccari gives no
reason why the Court should construe the Agreement otherwise.
Relatedly, Zaccari contends in a footnote that “the Court must still determine the extent of
[Apprio]’s ownership of the copyright for the CRR Software” and that summary judgment is thus
precluded on this ground. Opp’n at 15 n.8. It is not entirely clear what Zaccari is arguing here,
but the argument appears to overlook the partial nature of the summary judgment motion at hand.
Apprio moved only “for summary judgment regarding the contractual assignment of any rights
Zaccari has in the CRR software, including assignment of all rights Zaccari may have in [his
Copyright Registration].” Mot. at 1. Apprio has not moved for summary judgment regarding the
extent of any proprietary rights, but only regarding its ownership of whatever rights are available.
20
The Court is only deciding whether Apprio has received from Zaccari “all trade secret, patent,
copyright, mask work and other intellectual property rights throughout the world” in the CRR
Software. Agreement ¶ 2.1 (defining “Proprietary Rights”). To the extent that Zaccari is arguing,
for example, that the work he did in 2016 is somehow not copyrightable, that argument would fall
outside the scope of this motion, which concerns only the contractual agreement between the
parties. 8 The Court observes, however, that this would be a difficult argument for Zaccari to
succeed on because the Agreement is drafted quite broadly in this regard and transfers “all [his]
right, title and interest in and to any and all Inventions (and all Proprietary Rights with respect
thereto) whether or not patentable or registrable under copyright or similar statutes.” Id. ¶ 2.3.
Apprio, of course, bears the burden of demonstrating that there is no genuine dispute of
material fact. See Celotex, 477 U.S. at 323. Here, it has carried that burden and is entitled to
summary judgment on the assignment of rights issue because, for the reasons discussed above,
there is no genuine dispute that Zaccari assigned his proprietary rights in the CRR Software to
Apprio. In the Agreement, the language of Paragraph 2.3 unambiguously assigns to Apprio all
proprietary rights in all Inventions “made or conceived . . . during the period of [the employee’s]
Service” with Apprio, and Paragraphs 2.2 and 2.4 provide the only relevant exceptions to this
assignment, none of which apply to the CRR Software.
There is no genuine dispute that the CRR Software does not qualify as an “Unassigned
Invention” under Paragraph 2.4. Unassigned Inventions must be (1) “developed entirely on [an
employee’s] own time without using the Company’s equipment, supplies, facilities, or trade
8
To the extent Zaccari intended to make a different argument, he has waived it by failing to develop it in
sufficient detail. “[P]erfunctory and undeveloped arguments” are “deemed waived,” and “[t]his is especially true
where the only reference to the argument is raised in a footnote.” Gold Rsrv. Inc. v. Bolivarian Republic of Venezuela,
146 F. Supp. 3d 112, 126 (D.D.C. 2015) (quoting Johnson v. Panetta, 953 F. Supp. 2d 244, 250 (D.D.C. 2013)); Davis
Broad. Inc. v. F.C.C., 63 Fed. App’x 526, 527 (D.C. Cir. 2003) (“[Appellant’s] opening brief offers only a perfunctory
argument on this issue in a footnote, and we should therefore consider the argument waived.”) (per curiam).
21
secrets”; (2) not “related to the Company’s actual or anticipated business, research or
development”; and (3) not “result[] from work performed by [the employee] for the Company.”
Agreement ¶ 2.4. Zaccari does not dispute that “DCMA contracted with Apprio . . . to help it
develop better business practices, in particular with respect to its oversight of government contracts
and its development of the [Integrated Workload Management System] to efficiently receive and
review government contracts,” nor does he dispute that “Apprio was tasked with . . . developing,
testing, and implementing software . . . to allow for more efficient receipt and review of DCMA’s
contracts.” Resp. SUMF ¶¶ 8, 12. Zaccari also admitted that “one of the functions of the CRR
Software is to efficiently implement contract review” and that another is “to automate contract
receipt and review processes.” Def.’s RFA Resps. Nos. 35, 38; see also Resp. SUMF ¶¶ 34–35
(quoting Def.’s RFA Resps. Nos. 35, 38). 9 He further admitted that he “would not have provided
the CRR software to DCMA had he not been employed by Apprio.” Def.’s RFA Resps. No. 25.
These facts amount to an admission that the CRR Software was, in fact, “related to [Apprio’s]
actual or anticipated business,” and thus that it was not an Unassigned Invention that Zaccari
developed separately from his work for Apprio. See Agreement ¶ 2.4.
There is likewise no genuine dispute that the CRR Software is neither a disclosed Prior
Invention nor an invention that did not need to be disclosed under Paragraph 2.2. Zaccari has
admitted that he did not submit a Previous Inventions Disclosure Form, Def.’s RFA Resps. No.
58, so neither the CRR Software nor the base code can be protected as a Prior Invention. Even if
he had disclosed the base code as a Prior Invention, he would have lost his proprietary rights when
he incorporated it into the CRR Software. Agreement ¶ 2.2. (“If, in the course of [my Apprio
employment], I incorporate a Prior Invention into a Company product . . . , the Company is hereby
9
Zaccari is bound by his responses to Apprio’s Rule 36 requests because Zaccari has not filed a motion to
withdraw or amend those responses. See Fed. R. Civ. P. 36(b).
22
granted and shall have a nonexclusive, royalty-free, irrevocable, perpetual worldwide
license . . . .”). As the Court has explained, Zaccari cannot establish that his rights in the CRR
Software are protected by this paragraph through the third exception of undisclosed earlier
inventions. This exception states that Prior Inventions “shall not include Inventions that
[employees] have developed . . . prior to the commencement of [Apprio employment]” but only
“if [they] do not use such inventions in connection with [their Apprio employment].” Id. For the
reasons explained above, there is no dispute that Zaccari did use the CRR Software, including any
prior base code, in connection with his work for Apprio. He therefore cannot avail himself of this
exception.
In an effort to avoid this conclusion, Zaccari quibbles over the scope of two particular
contracts between Apprio and DCMA and argues that he was not involved with one contract and
that the other did not include software development. Opp’n at 15–16. The terms of the Agreement,
however, are written broadly. It does not matter what work Zaccari was tasked with because the
relevant questions are whether the CRR Software “related to the Company’s actual or anticipated
business,” Agreement ¶ 2.4, or whether Zaccari “used [it] in connection with” his Apprio
employment, id. ¶ 2.2. Because Zaccari admitted he would not have presented the CRR Software
to DCMA had he not worked for Apprio, and because Apprio had a business interest in the contract
review process that the CRR Software facilitated, the CRR Software is sufficiently connected to
Apprio’s business regardless of which contract encompassed Zaccari’s work. Finally, Zaccari
argues that one Task Order under one contract between DCMA and Apprio was improperly
awarded to Apprio, see Opp’n at 16–17, but, even assuming this is true, he does not explain why
this would alter the scope of Apprio’s “actual or anticipated business” under the terms of the
Agreement. Even if Zaccari is correct that this Task Order was improperly awarded, it would not
23
make the CRR Software unrelated to the other Task Orders and contracts relating to DCMA’s
contract review process that Apprio properly undertook.
Even accepting all evidence and drawing all inferences in Zaccari’s favor—treating the
software as a separate base code and subsequent update and assuming that Apprio’s contracts with
DCMA were awarded in the manner Zaccari suggests—the unambiguous language of the
Agreement still dictates that Zaccari assigned his proprietary rights in the CRR Software to Apprio.
Zaccari has failed to identify any material facts in dispute that would undermine this conclusion.
Hence, Apprio is entitled to summary judgment on the issue of contractual assignment of rights.
Conclusion
For the foregoing reasons, the Court finds that there is no genuine dispute of material fact
that the parties entered into a binding contract and that Zaccari assigned his proprietary rights in
the CRR Software to Apprio pursuant to the contract. The Court will grant Apprio’s motion for
partial summary judgment. A separate order will be issued on this date.
/s/
JOHN D. BATES
United States District Judge
Dated: June 1, 2021
24