Moonshadow Mobile, Inc. v. Labels & Lists, Inc.

CourtDistrict Court, D. Oregon
DecidedDecember 9, 2024
Docket6:23-cv-01716
StatusUnknown

This text of Moonshadow Mobile, Inc. v. Labels & Lists, Inc. (Moonshadow Mobile, Inc. v. Labels & Lists, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Oregon primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Moonshadow Mobile, Inc. v. Labels & Lists, Inc., (D. Or. 2024).

Opinion

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

MOONSHADOW MOBILE, INC., an Case No. 6:23-cv-01716-MTK Oregon corporation, OPINION AND ORDER Petitioner/Cross-Respondent,

vs.

LABELS & LISTS, INC., a Washington corporation

Respondent/Cross-Petitioner. _________________________________________

KASUBHAI, United States District Judge: From June 3, 2022 to August 25, 2023 Petitioner, Moonshadow Mobile, Inc. (“Moonshadow”), and Respondent, Labels & Lists, Inc. (“L2”), engaged in arbitration to resolve a business dispute before the Arbitration Services of Portland (“ASP”). After extensive briefing and a nine-day arbitration hearing, the arbitration panel issued an award for Moonshadow on October 25, 2023. Moonshadow now petitions the Court to confirm the award, and L2 moves to vacate it. For the reasons that follow, Moonshadow’s Petition For Order Confirming Arbitration Awards (Notice of Removal Ex. A, ECF No. 1) is DENIED, and Respondent’s Motion to Vacate (ECF Nos. 14 and 18) is GRANTED. BACKGROUND The parties briefed this matter extensively, and the Court considered their motions at length over four days of oral argument. Because the procedural background and merits of the underlying arbitration are key to several of the Court’s findings, the Court provides a thorough

recap of the facts. I. The Parties’ Relationship L2 is a nonpartisan political data company headquartered in Bothell, Washington. L2 sells voter and consumer data to political campaigns, government offices, news organizations, and universities. The biggest part of L2’s business is providing highly processed voter data. In doing so, L2 sends its customers large text files that the customers then load into their own databases to filter, sort, query, and use as they wish. Moonshadow is a small technology company that specializes in visualizing large databases in online mapping environments. Prior to 2010, Moonshadow created eCommerce database technology for large databases with over 10 million products. Excerpts of the Arbitration Record (“EAR”) 1131:9, ECF Nos. 32, 33, and 34.1

L2’s main product—files of data—had been saleable only to large, sophisticated customers that have their own databases. In 2009, L2 saw that its competitors were offering smaller customers a new kind of web-based functionality that was available at any time to paying customers. With this functionality, customers who did not have their own databases would be able to access a commercial website, buy data from an online store, and sort, filter, and create lists from the data using the web-based platform.

1 EAR 2–721, EAR 722–4297, and EAR 4301–5452 can be found in ECF Nos. 34, 33, and 32, respectively. Just as L2 was considering development of an online store, it was contacted by a tech startup called Moonshadow. At the time, Moonshadow was looking for a source of political data to use in a new mobile application it was developing: a political campaign canvassing app called Ground Game. L2 realized that Moonshadow might have the ability to build the online store that

L2 had envisioned. L2 also saw in Moonshadow’s Ground Game application the potential to display voter data on a dynamic visual map. Excited by this potential, L2 hired Moonshadow to build a “Geo-Visual Sales System” (or “Sales System”). The two businesses entered into a work- for-hire technology development agreement in 2010. II. The Contract: “Development & Hosting Agreement” In late 2010, the parties entered into an initial “Development & Hosting Agreement” (the “DHA”). In 2015, once the Sales System was up and running, L2 and Moonshadow renegotiated elements of their contract. The 2015 DHA was the parties’ operative contract until it expired at the end of 2022 after L2 timely notified Moonshadow in March 2022 of its election to not renew its contract.

Under the DHA, L2 hired Moonshadow to build, host, and maintain an online portal for its customers. There were three primary ways that L2 would pay Moonshadow for the development and hosting services Moonshadow would provide: (1) hourly—Moonshadow would bill L2 for the hourly work its employees spent creating and servicing the platform; (2) licensing fee—Moonshadow would bill L2 a monthly licensing fee for use of the back-end Moonshadow-owned database technology that was separate from the user interface; and (3) commissions—L2 would pay Moonshadow commissions for data purchased and delivered to customers who used the platform Moonshadow had created. L2 also intended to offer its data-file customers with access to the platform as an incidental service. These customers (like The New York Times) bought data directly from L2 to load into their own databases. L2 gave them access to the mapping tool to explore the visual application.

The DHA defined the scope of commissions Moonshadow was to receive. 4. Political Data Revenue Share. Moonshadow shall receive a commission on Client revenue derived from the sale of political data purchased, delivered and subscribed for through the Moonshadow Geo-visual Sales System in the following way:

- In Odd Years (2015, 2017, etc.). 15% of any revenue over $1.2 Million in annual sales. - In Even Years (2016, 2018, etc.). 15% of any revenue over $2.0 Million in annual sales

“Notwithstanding anything herein to the contrary, all subscription revenue and revenue from data sold through VoterMapping, ConstituentMapping or Client API’s using Moonshadow Technology shall be included in the calculation to meet the above minimums . . . .”

DHA (EAR 20).

III. The Parties’ Ownership of Intellectual Property. The DHA also reflected the parties’ effort to assign the intellectual property associated with the development of the VoterMapping platform. EAR 13–14. The parties negotiated and agreed to a division of intellectual property in late 2010. To “give[] [L2] the protection you are looking for,” Mr. Boesjes proposed a solution in which L2, in the event of a split with Moonshadow, would have “the right to use the complete solution for its continuing business.” Id. At the arbitration hearing, the parties disputed whether L2 violated the terms of the DHA and committed trade secrets violations by stealing proprietary information from Moonshadow. The DHA described the parties’ respective intellectual property rights, and identified L2 as either owning or having a perpetual royalty-free right to seven of the components of the product Moonshadow had created for L2. The DHA also outlined Moonshadow’s exclusive intellectual property. The Agreement described the “Visualization Server” and the “Data Import Server” as belonging to Moonshadow. Id. (EAR 22). This framework of intellectual property ownership was reaffirmed in the 2015 DHA, which incorporated the 2010 “Description.” See Id. (EAR 22–

26). IV. L2’s Decides to Separate from Moonshadow By 2015, based on difficulties that had arisen with VoterMapping and in the parties’ relationship, L2 decided it would part ways with Moonshadow. L2 first offered to purchase Moonshadow so that it could fully control its Geo-Visual Sales System. But Moonshadow rejected L2’s offer. Under the DHA, L2 had secured the right to use all components of the Geo- Visual Sales System post-separation, except two specified components. It had also secured Moonshadow’s promise to assist L2’s transition should L2 attempt to replace Moonshadow with a different vendor. Under these circumstances, L2 hired an in-house software engineer to build a new version of its Geo-Visual Sales System for itself. Originally called VoterMapping 2.0 in

L2’s internal communications, L2’s new website application was eventually named “DataMapping.” V. L2 Develops the DataMapping Platform At the end of 2015, L2 hired a software developer, Jim Greene, to create an in-house platform that could replace the platform it contracted Moonshadow to build.

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Moonshadow Mobile, Inc. v. Labels & Lists, Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/moonshadow-mobile-inc-v-labels-lists-inc-ord-2024.