King v. PA Consulting Group, Inc.

F I L E D
United States Court of Appeals
Tenth Circuit
PU BL ISH
May 8, 2007
UNITED STATES COURT O F APPEALS Elisabeth A. Shumaker
Clerk of Court
TENTH CIRCUIT

M ICHA EL J. K IN G ,

Plaintiff - Counter-Defendant -
Appellant/Cross-Appellee,

v. Nos. 05-1351, 05-1369, 05-1460

PA CONSULTIN G GROUP, IN C., a
New Jersey corporation,

Defendant - Counter-Claimant -
Appellee/Cross-Appellant.

Appeals from the United States District Court
for the District of Colorado
(D.C. No. 02-CV-1874 LTB/BNB)

David Charles M astbaum, Law Office of David M astbaum, Boulder, Colorado for
the Plaintiff - Counter-Defendant - Appellant/Cross-Appellee.

Robert J. Stickles, Klett, Rooney, Lieber, & Schorling, P.C., Newark, New Jersey
(Christopher P. Dalton, Klett, Rooney, Lieber, & Schorling, P.C., Newark, New
Jersey; Natalie M arie Hanlon-Leh, Christopher P. Beall, and Owen Borum, Faegre
& Benson, LLP, Denver, Colorado with him on the briefs) for the Defendant -
Counter-Claimant - Appellee/Cross-Appellant.

Before KELLY, A LA RC ÓN, * and LUCERO, Circuit Judges.

*
The Honorable Arthur L. Alarcón, Senior Circuit Judge, United States
Court of Appeals for the Ninth Circuit, sitting by designation.
L UC ER O, Circuit Judge.

Three cases are consolidated for purposes of this appeal, all arising from

the acrimonious departure of M ichael King from his former employer, PA

Consulting Group, Inc. (“PA”). This dispute centers on a series of noncompete

provisions contained in King’s employment contract. A jury found against King

on all but his invasion of privacy claim and for PA on its breach of loyalty

counterclaim. King now appeals the district court’s: (1) determination that the

noncompete provisions were enforceable, (2) submission of his breach of contract

claim to the jury, (3) eve of trial discovery ruling, and (4) denial of his motion for

a new trial. PA cross-appeals the district court’s denial of its motion for

judgment as a matter of law, and its motion for attorneys’ fees. For the reasons

set forth below, we A FFIR M .

I

PA is a professional consulting firm with offices in 20 countries and over

3400 employees. Although it is a New Jersey corporation with a human resources

office in that state, PA is headquartered in W ashington, D.C. In 2000, PA

successfully acquired Hagler Bailly, Inc. (“HB”), an energy consulting firm, in a

cash transaction. At the time of the acquisition, King was a Senior Vice President

(“SVP”) in HB’s Boulder, Colorado office. King was also an HB shareholder.

As part of the merger, King sold his 10,000 HB shares for approximately $52,900.

-2-
The merger was conditioned upon at least 75% of HB’s SVPs signing PA

employment agreements.

On June 5, 2000, in anticipation of the merger, King signed an employment

contract (the “Agreement”) governing his employment with PA . King lived and

worked in Colorado, and the Agreement w as signed in Colorado. PA drafted the

Agreement, which it described as a “global agreement” used for approximately

200 partners around the world. Section 17.2 states: “This agreement and all

matters arising in connection with it shall be governed by the law of the State of

New Jersey and shall be subject to the jurisdiction of the New Jersey Courts.”

Simultaneous with the Agreement, the parties signed a “side letter” amending the

terms of the Agreement, which notes that the “Agreement has been executed in

anticipation of the execution of the Agreement and Plan of M erger among the

Company, Hagler Bailly, Inc. and PA Consulting Group Inc. (the ‘M erger

Agreement’) and is conditional upon the consummation of the transactions

authorized by such M erger A greement.”

King agreed to several post-employment restrictions. The Agreement

establishes a one-year restricted period following termination, during which the

following provisions would attach:

12.2 In respect of any client of [PA] for whom you have rendered
any services on behalf of [PA ] during the two years preceding
the termination of your employment, you will not during the
restricted period, directly or indirectly, unless authorized by
[PA]:

-3-
 (a) solicit business from a Client, whether on behalf of
yourself or another person or entity, which business is of the
same or similar nature to the services you provided on behalf
of [PA].

(b) encourage any client not to do business w ith [PA].

(c) provide for such client (or offer to do so) services of the
same or similar nature or assist or facilitate the provision of
such services as an independent contractor or otherw ise . . .
although notwithstanding the foregoing, you may accept
full-time employment with any such client.

12.3 During the restricted period you will not . . . solicit or entice
away from [PA] (or attempt to do so) or accept for
employment any employee of [PA] who entered
employment with [PA] prior to the termination of your
employment.

The side letter includes a limited exception to the post-employment

restrictions: “Notwithstanding the provisions of Section 12 of the Agreement,

should you terminate your employment during the 180-day period comm encing 18

months following the completion of the transactions authorized by the M erger

Agreement, [PA] shall waive the non-compete provision contained in Section

12.2(c) of the Agreement.” Section 9.6 of the A greement provides that “[w]here

you do not provide the appropriate notice [of resignation], salary equivalent to the

amount payable for the shortfall in notice will be forfeited in lieu of notice, as

appropriate.” The side letter sets a notice period of three months for “all Partner

ranks.”

-4-
 King’s precise job title upon joining PA is unclear. The Agreement merely

states that he was appointed as a “Consultant” with PA’s energy group. A

document incorporated into the Agreement, entitled “Your Career as a Consultant

in PA,” lists “five consulting ranks: analyst, consultant analyst, consultant,

principal consultant and managing consultant.” It describes “consultant” as a

relatively low-level position.

However, PA’s head of Human Resources, James Cullens, stated in

deposition testimony that King (along with the other HB SV Ps) entered the

company as an “associate partner.” In explaining the inconsistency, Cullens noted

that, as a consulting firm, PA had two types of agreements: a consultant

agreement and an administrative staff agreement. The “consultant” designation,

he stated, simply distinguished King from PA ’s administrative staff. Cullens

further testified that PA’s employment agreements do not use the term “partner”

because PA is not a partnership. The Agreement also incorporated a document

titled “The Partner at PA ,” which describes the associate partner designation as

follows: “All external entry candidates into the Partner Group will be designated

‘as’ Associate Partners. They will serve an initial period during which their track

record within PA is built up, so that the Partner Election Committee has the

information base it needs to confirm their Partnership.” King also listed his initial

position with PA as “Associate Partner” on his resume.

-5-
 Upon joining PA in October 2000, King provided energy consulting

services, with a focus on business development. He had several layers of

management above him, but also had a group of employees working under him.

King could not hire or fire workers, but was empow ered to enter contracts on

behalf of PA on a limited basis. PA’s January 1, 2001 organizational chart

indicates that King was an Associate Partner in the Energy Group – one of

approximately 190 Partners at PA . It also lists King as Chairman of the

Committee for Regional Development in the Americas and Canada. His total

compensation in 2000 (including both HB and PA pay) was slightly over $1

million. King rose quickly through the ranks at PA ; by July 2002, he was one of

twelve M anaging Partners worldwide and head of PA’s Global W holesale Energy

M arkets Practice. His anticipated compensation in 2001 was $1.3 million. 1

On July 28, 2002, King sent an email to Bruce Tindale, PA ’s COO, and Jon

M oynihan, PA’s C EO, informing them of his plans to “pursue the options” with

National Economic R esearch Associates (“NERA”) – a PA competitor. Shortly

thereafter King sent a fax entitled “Confirmation of my resignation of July 29,

2002,” indicating he believed his last day of employment would be October 26,

2002. PA acknowledged his resignation that same day, but noted “[t]here may be

a couple of things to sort out, such as your leaving date (which we believe is

1
King’s actual compensation was somewhat less because he forfeited a
deferred compensation package upon his resignation.

-6-
N ovem ber 2nd 2002 under the terms of your contract), but that is something we

can get mutual clarity on over the coming weeks as we work together to sort out

the handover arrangements etc.”

On September 12, 2002, King emailed Tindale and Cullens, in an effort to

“close the loop on [his] departure.” K ing stated that he provided notice on July

29, 2002, and, calculating a 90-day notice period, his final day would be October

26, 2002. By providing notice within the 180-day window period, per the terms of

the side letter, he believed he was relieved of the noncompete restrictions listed in

§ 12.2(c) of the Agreement. PA disagreed with King’s characterization. Cullens

asserted that King’s July 29 email was not an effective notice of resignation under

the Agreement because it was unclear and was not delivered in the proper form as

specified in the Agreement (via hard copy, mail, or fax). Adding three months to

the date of King’s August 2, 2002 fax, Cullens tabulated a final day of November

2, 2002. He also indicated that the 180-day window period ran from April 28 to

October 24, which would require an employee to provide notice of termination by

July 24, 2002 in order to take advantage of the § 12.2(c) w aiver. King claims this

was the first time PA informed him of its calculation of the window period.

King responded through counsel on September 26, 2002. He argued that PA

was required to waive the § 12.2(c) restrictions as long as he terminated his

employment within the window period, and amended his date of termination to

October 24, 2002. Although King acknowledged he was bound by the three-month

-7-
notice period, he claimed that § 9.6 of the Agreement – which states “[w]here you

do not provide the appropriate notice [of resignation], salary equivalent to the

amount payable for the shortfall in notice will be forfeited in lieu of notice, as

appropriate” – amounted to a liquidated damages clause. By this reasoning, King

provided insufficient notice, but PA could recover only the “salary equivalent to

the amount payable for the shortfall in notice,” and was still obligated to waive

§ 12.2(c). On October 4, 2002, PA responded through counsel, reasserting its

position that King’s last day would be November 2, 2002 and that he would be

bound by § 12.2(c).

King completed his last day of w ork at PA on October 24, 2002. Because

his employment offer from NERA was contingent upon resolution of the

noncompete provisions in the Agreement, however, he was unable to begin w ork

with NERA until February 3, 2003. Following King’s resignation, PA continued

to distribute promotional materials listing King as the contact person for PA’s

W holesale Energy M arkets Practice. King’s replacement, Todd Filsinger, directed

PA employees to change King’s PA voicemail message to indicate King was

unavailable, but that the caller should leave a message. Filsinger also had all

messages sent to King’s PA email account forw arded to him.

Prior to his last day, and unbeknownst to PA, King had filed a complaint in

the U.S. District Court for the District of Colorado seeking injunctive and

declaratory relief regarding the enforceability of the noncompete restrictions on

-8-
September 30, 2002. PA filed a complaint on October 4, 2002 in New Jersey

Superior Court on the same issue. King removed the latter case to the U.S.

District Court for the District of New Jersey on October 8, 2002. Finding that the

contract contained a mandatory forum-selection clause, the U.S. District Court for

the D istrict of C olorado dismissed King’s action on November 21, 2002. The case

proceeded in New Jersey, where the court entered a preliminary injunction

prohibiting PA from enforcing § 12.2(c) of the Agreement. On September 10,

2003, however, this court vacated the dismissal of the Colorado case and remanded

to the federal district court in Colorado. King successfully moved to transfer the

New Jersey case to Colorado and an Order of Consolidation was issued on October

17, 2003.

Before the Colorado district court, King filed a motion for partial summary

judgment arguing that the noncompete provisions were void under Colorado law.

PA filed a cross-motion, countering that New Jersey law applied, and that the

noncompete provisions were valid under either state’s law . The district court

found that New Jersey law governed the Agreement, and that the noncompete

restrictions were enforceable under either N ew Jersey or Colorado law.

Accordingly, it dismissed King’s claim that the noncompete restrictions were void.

In his trial brief, King requested the district court rule as a matter of law that PA

breached the Agreement by failing to waive § 12.2(c). The court declined to do

so.

-9-
 A jury trial was then held on the following claims: (1) King’s claim that PA

breached the Agreement by failing to waive § 12.2(c); (2) King’s claim that PA

breached its implied covenant of good faith and fair dealing by trading on his

name after he left PA , and intercepting calls and emails intended for him; (3)

King’s claim that PA violated the Lanham Act by deceptively using his name; (4)

King’s claim that PA’s use of his name constituted unfair competition; (5) King’s

claim that PA’s use of his name constituted invasion of privacy; (6) PA’s

counterclaim that King breached his contract by disclosing confidential

information to NERA; and (7) PA ’s counterclaim that King breached his duty of

loyalty by disclosing information to NERA.

Because the evidence included a number of confidential, proprietary

documents, discovery was conducted under a Consent Protective O rder. The most

sensitive documents were designated “Attorneys’ Eyes Only,” prohibiting the

parties from viewing them. On December 30, 2004, the district court granted

King’s m otion to redesignate certain documents from “Attorneys’ Eyes O nly” to

“Highly Confidential.” The documents detailed clients for whom King worked

while employed at PA, who continued to use PA following King’s departure.

After reviewing these documents, King requested additional documentary

discovery as well as third party depositions on January 4, 2005. Noting that they

were “on the eve of trial,” the court denied King’s request.

- 10 -
 During trial, King testified that he spoke to Catherine M cEnearney in the

summer of 2002, who was at that time a Senior Counsel with PA . Although

M cEnearney herself did not appear in court, King testified she told him that he

could avail himself of the § 12.2(c) waiver if he served notice of his termination

before October 27, 2002. During closing arguments, PA’s counsel addressed this

testimony as follows: “Now Kathy M cEnearney. W e’ve heard some testimony

about her. All we have is M r. King’s say-so . . . . Now what would you do if – if

you were in this spot where he is, what would you do? Y ou would claim to have

had a conversation with a Kathy M cEnearney.” He posited two explanations for

King’s silence on the M cEnearney conversation during his departure from PA , the

“less charitable” of which “is that the conversation never happened.” King did not

object to this statement during closing, but did raise the issue the next day, before

the case was submitted to the jury.

The jury found against King on all but his invasion of privacy claim and

aw arded him damages in the amount of $57,672. On PA’s counterclaims, the jury

found that King did not breach his contract, but that he did breach his duty of

loyalty. It aw arded PA $90,520 in compensatory damages, plus $50,000 in

punitive damages. The court determined that neither party was entitled to

attorneys’ fees. King subsequently moved for a new trial, arguing that PA’s

closing argument was improper. PA moved for attorneys’ fees on King’s Lanham

- 11 -
Act claim, and filed a renew ed motion for judgment as a matter of law on King’s

invasion of privacy claim. The district court denied all three motions.

King now appeals the district court’s: (1) summary judgment ruling that the

noncompete provisions of the Agreement were enforceable; (2) submission of his

breach of contract claim to the jury; (3) denial of his request for additional

discovery; and (4) denial of his motion for a new trial. PA cross-appeals the

district court’s: (1) denial of its motion for judgment as a matter of law on King’s

invasion of privacy claim; and (2) denial of its motion for attorneys’ fees for

defending King’s Lanham Act claim.

II

W e review the grant of summary judgment de novo, applying the same legal

standard employed by the district court. Sequoyah County Rural W ater D ist. N o. 7

v. Town of M uldrow, 191 F.3d 1192, 1196 (10th Cir. 1999). Summary judgment

is appropriate only where there is no genuine issue of material fact and the moving

party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). W e review

a district court’s choice of law determination de novo. Doering ex rel. Barrett v.

Copper M ountain, Inc., 259 F.3d 1202, 1209 (10th Cir. 2001). Its underlying

factual determinations, however, are reviewed for clear error. Id.

Section 17.2 of the A greement provides “[t]his agreement and all matters

arising in connection with it shall be governed by the law of the State of New

- 12 -
Jersey.” The parties agree that § 187(2) of the Restatement (Second) of Conflict

of Laws governs our review of this clause. It reads:

The law of the state chosen by the parties to govern their contractual
rights and duties will be applied . . . unless . . . (b) application of the
law of the chosen state would be contrary to a fundamental policy of
a state w hich has a materially greater interest than the chosen state in
the determination of the particular issue and which, under the rule of
§ 188, would be the state of the applicable law in the absence of an
effective choice of law by the parties.

A

Our initial inquiry is w hether Colorado has a materially greater interest in

determining whether the A greement’s noncompete restrictions are enforceable. In

answering this question we are guided by Elec. Distribs., Inc. v. SFR , Inc., 166

F.3d 1074 (10th Cir. 1999). In that case we held that Utah had a materially greater

interest in determining the enforceability of certain noncompete provisions,

notwithstanding the parties’ choice of Colorado law, “because important policy

considerations of Utah are involved in assessing the validity of the covenant not to

compete prohibiting [plaintiff], a U tah resident, from having employment in [his

field] for a period of seven years within the entire state of Utah.” Id. at 1084.

PA correctly notes that the restrictions at issue in Elec. Distribs. were more

severe in both duration and scope than those in the Agreement. Nevertheless, w e

conclude that Colorado has a materially greater interest in this issue. King is a

resident of Colorado, he signed the contract in Colorado, and his sole place of

work was Colorado. The district court made much of PA’s need for uniformly

- 13 -
interpreted contracts, but the relevant interest is not PA ’s, but rather that of the

chosen state. N ew Jersey’s interest in the issue is at most tangential. PA is

incorporated in New Jersey and maintains a human resources office there, but is

headquartered in W ashington, D.C. It strains credulity to suggest that New

Jersey’s interest in deciding whether King is bound by the A greement’s

noncompete provisions approaches that of Colorado, the state in which King lives

and works, and in which the contract was signed.

B

W e next consider whether the application of New Jersey law to the

noncompete provisions would be “contrary to a fundamental policy” of Colorado.

Restatement (Second) of Conflict of Laws § 187(2). New Jersey courts w ill

enforce a noncompete agreement that “protects the legitimate interests of the

employer, imposes no undue hardship on the employee, and is not injurious to the

public.” Solari Indus. v. M alady, 264 A.2d 53, 56 (N.J. 1970). Colorado’s

noncompete agreement policy, as codified, provides:

Any covenant not to compete which restricts the right of any person
to receive compensation for performance of skilled or unskilled labor
for any employer shall be void, but this subsection (2) shall not apply
to:

(a) Any contract for the purchase and sale of a business or the assets
of a business;

(b) Any contract for the protection of trade secrets;

- 14 -
 (c) Any contractual provision providing for recovery of the expense
of educating and training an employee who has served an employer
for a period of less than two years;

(d) Executive and management personnel and officers and employees
who constitute professional staff to executive and management
personnel.

Colo. Rev. Stat. § 8-2-113(2).

Although PA argues that these provisions are essentially equivalent, they are

plainly not. New Jersey will enforce noncompete agreements except under

specific conditions in which they are deemed unreasonable. Colorado’s default is

just the opposite: It will not enforce noncompete agreements unless they fall

within a few narrowly-defined circumstances. M oreover, both state and federal

courts have recognized Colorado’s significant interest in limiting noncompete

agreements. See Dresser Indus. v. Sandvick, 732 F.2d 783, 786 (10th Cir. 1984)

(“The states where the parties entered into the employment relationships –

Colorado, W yoming, and North Dakota – have a substantial interest in invalidating

covenants not to compete signed within their borders.”); Nutting v. RAM Sw.,

Inc., 106 F. Supp. 2d 1121, 1124 (D. Colo. 2000) (“Colorado law embodies a

strong public policy which disfavors covenants not to compete, protecting

employees from non-competition clauses except in carefully defined

circumstances.”) (quotation omitted); DBA Enters. v. Findlay, 923 P.2d 298, 302

(Colo. Ct. App. 1996) (“Covenants not to compete, with some narrow exceptions,

are contrary to the public policy of Colorado and are void.”).

- 15 -
 Colorado thus has a fundamental policy of voiding noncompete provisions

that do not fall within one of the statutory exceptions. Unlike the Restatement’s

“materially greater interest” prong, under which we need only examine whether

the determination of an issue would be problematic, the “fundamental policy”

prong requires us to look to whether the application of another state’s law would

violate Colorado’s policy. To answer that question, we must compare the dueling

state-law regimes to determine whether they would reach opposing results. If they

would not, Colorado’s fundamental policy limiting noncompete agreements is not

offended. See Elec. Distribs., 166 F.3d at 1085-86.

King concedes that the Agreement’s noncompete provisions would be

enforceable under New Jersey law. King argues that they are per se invalid under

Colorado law because they are “naked.” For this proposition, he cites Dresser

Indus., which states: “A naked covenant not to compete is void under the

[Colorado] statute.” 732 F.2d at 788 (citing Colo. Accounting M achs., Inc. v.

M ergenthaler, 609 P.2d 1125, 1126 (Colo. Ct. App. 1980)). It is unclear, however,

what the Dresser Indus. court meant by “naked covenant.” K ing contends that a

naked covenant is one that does not indicate which of the statutory exceptions

provides the basis for its enforceability. PA counters that “naked” refers to a

prohibition that is primarily aimed at restricting competition, rather than

protecting legitimate business interests.

- 16 -
 W e are persuaded by PA ’s argument. Dresser Indus. considered whether the

noncompete agreements at issue fell within several exceptions. 732 F.2d at 787-

88. If Colorado law required a magic words reference to a statutory exception, the

only inquiry would be w hether the contested provision cited an exception. King’s

reading is also unsupported by the few cases using the phrase “naked covenant” to

describe a noncompete agreement. See Barran v. Comm’r, 334 F.2d 58, 63 (5th

Cir. 1964) (describing a naked covenant as “not associated with a transfer of

assets”); Davee v. United States, 444 F.2d 557, 562 (Ct. Cl. 1971) (defining a

naked covenant as “one unaccompanied by the sale of the assets of the related

business”); Sound Ship Bldg. Corp. v. Bethlehem Steel Corp., 387 F. Supp. 252,

255 (D .N.J. 1975) (distinguishing naked covenant from those “merely ancillary to

a main lawful contract”). Finally, PA correctly notes that Colorado courts have

enforced several noncompete agreements that meet King’s definition of “naked.”

See Gold M essenger, Inc. v. M cGuay, 937 P.2d 907, 910-11 (Colo. Ct. App.

1997); M gmt. Recruiters of Boulder, Inc. v. M iller, 762 P.2d 763, 764-66 (Colo.

Ct. App. 1988); Boulder M ed. Ctr. v. M oore, 651 P.2d 464, 465 (Colo. Ct. App.

1982) (holding that a noncompete agreement was valid under two statutory

exceptions, but not quoting the provision).

Accordingly, the enforceability of the noncompete provisions must stand or

fall on the applicability of one or more of the statutory exceptions. The first

exception is for “[a]ny contract for the purchase and sale of a business or the

- 17 -
assets of a business.” Colo. Rev. Stat. § 8-2-113(2)(a). In holding that King fell

within the business purchase exception, the district court stated:

Because PA was purchasing Hagler Bailly’s business relationships,
institutional knowledge, intellectual capital, and the consultancy practice as
a whole, and that purchase was contingent in part on King’s and the other
vice presidents’ moving from Hagler Bailly to PA, I conclude that King’s
decision to work for PA and his Agreement memorializing that decision
was [sic] integral to the acquisition.

W e agree. King was not merely an employee at HB – he was also a

shareholder. Pursuant to the acquisition he sold his 10,000 shares for

approximately $52,900. Although the employment contract and the merger

agreement were not integrated, the side letter addendum states that the Agreement

was “executed in anticipation of the execution of the [merger agreement] . . . and

is conditional upon the consummation of the transactions authorized by such

M erger Agreement.” M oreover, the merger was conditional upon at least 75% of

HB’s SVPs (including King) signing PA employment agreements. In other words,

as the district court correctly found, the noncompete provisions gave PA critical

security in connection with its acquisition of HB. Absent those provisions, PA

would have purchased the intellectual capital of HB, which included King and

other senior employees, with no guarantee that the capital would not walk out the

door after the merger. Although King’s refusal to sign the Agreement would not,

alone, have torpedoed the merger, this fact does not alter our conclusion that PA

paid $100 million largely to secure the services of King and his HB colleagues.

- 18 -
 The instant scenario is similar to that in Boulder M ed. Ctr. There, defendant

Richard M oore, M .D., was a partner in a Boulder, Colorado medical practice. 651

P.2d at 465. The partnership was dissolved and its assets transferred to a

professional corporation. Id. M oore sold his stock in the newly formed

professional corporation to the Boulder M edical Center and signed an employment

contract with the Center, which included a noncompete provision. Id. After

M oore resigned, the Center brought suit to enforce the noncompete agreement.

The trial court ruled that the business purchase exception was applicable and the

Colorado Court of Appeals affirmed. Id. Explicitly rejecting M oore’s argument

that the exception requires a perfect fit between a personal sale and the

noncompete provision, the court of appeals concluded that M oore’s interest in (1)

the medical partnership, (2) a partnership that owned the practice’s medical

equipment, and (3) a corporation that owned real property upon which the Center

was located, was sufficient to invoke the exception. Id. In the same vein, King’s

sale of H B stock, coupled with the merger agreement’s explicit condition that most

HB SV Ps, including King, sign noncompete agreements, places the Agreement

squarely within Colo. Rev. Stat. § 8-2-113(2)(a).

Nothing in Reed M ill & Lumber Co. v. Jensen, No. 05CA0431, 2006 W L

2691713 (Colo. Ct. App. Sept. 21, 2006), compels a different result. In that case,

the parties did not dispute whether the noncompete provision fell under the

business purchase exception; instead, at issue was whether the noncompete

- 19 -
provision was reasonable. In dicta, the court noted that “[w]hen ancillary to the

sale of a business, [noncompete provisions] protect the buyer’s right to enjoy the

business good will for which it paid.” Id. at *2. According to King’s reading of

the case, the Reed M ill court limits § 8-2-113(2)(a) to instances in which a seller

takes back customers or other good will it had sold to the acquirer, not to

prospective competition from acquired employees who later leave the firm. A

fairer reading is that protection of good will requires the acquirer to protect

against both predation by the seller as well as the possibility of a brain drain; i.e.,

the intellectual capital acquired in the purchase walking off. This squares with the

language of Gibson v. Eberle, 762 P.2d 777 (Colo. Ct. App. 1988), the case upon

which Reed M ill relies. In Gibson, the Colorado Court of Appeals took a broad

view of the good will protected by ancillary noncompete provisions, holding that

such covenants must simply protect the business as “a saleable asset.” 762 P.2d at

779.

Because we conclude that the Agreement’s noncompete provisions fall

within the business purchase exception, we need not review the district court’s

analysis of the trade secrets and management exceptions. There is, however, the

final matter of whether, notwithstanding the applicability of one or more of the

exceptions of § 8-2-113(2), the noncompete provisions were “reasonable.” See

Nat’l Graphics Co. v. Dilley, 681 P.2d 546, 547 (Colo. Ct. App. 1984) (“[T]o be

valid and enforceable, a covenant not to compete must be reasonable both in terms

- 20 -
of duration and geographic scope.”). King has not argued on appeal that the

noncompete provision is unreasonable, however, and has thus waived the issue.

See State Farm Fire & Cas. Co. v. M hoon, 31 F.3d 979, 984 n.7 (10th Cir. 1994).

Because we conclude that the Agreement’s noncompete provisions would be

enforceable under both New Jersey and Colorado law, enforcement of the

provisions would not violate a fundamental policy of Colorado. See Elec.

Distribs., 166 F.3d at 1085-86. Accordingly, the district court’s grant of summary

judgment finding the noncompete provisions enforceable is affirmed.

III

King contends that the district court erred in submitting his breach of

contract claim to the jury, rather than ruling as a matter of law that PA was

required to waive § 12.2(c) of the Agreement. Although King raised this issue in

his trial brief, he did not move for judgment as a matter of law . “Failure to

sufficiently raise an issue in a motion for [judgment as a matter of law ] bars

appellate review of that issue.” M iller v. Eby Realty Group, LLC, 396 F.3d 1105,

1114 (10th Cir. 2005). Under these circumstances, we will generally review “only

for plain error constituting a miscarriage of justice.” Dilley v. SuperV alu, Inc.,

296 F.3d 958, 962 (10th Cir. 2002) (quotation omitted).

However, King argues that raising the issue in his trial brief was sufficient,

because interpretation of the contract was a matter of law . See Ruyle v. Cont’l Oil

Co., 44 F.3d 837, 841 (10th Cir. 1994) (“A party who properly raises an issue of

- 21 -
law before the case goes to the jury need not include the issue in a motion for a

directed verdict in order to preserve the question on appeal.”) (quotation omitted).

W hether a contract is ambiguous is a question of law that we review de novo.

Hofer v. UNUM Life Ins. Co. of Am., 441 F.3d 872, 880 (10th Cir. 2006). A

contract is ambiguous if it is susceptible to more than one reasonable

interpretation. Nester v. O’Donnell, 693 A.2d 1214, 1220 (N.J. Super. Ct. App.

Div. 1997). If a contract is ambiguous, the resolution of its proper meaning is a

question of fact “subject to review on a clearly erroneous standard.” Nunn v.

Chem. W aste M gmt., Inc., 856 F.2d 1464, 1467 (10th Cir. 1988). In this case, the

district court squarely held that the § 12.2(c) waiver provision of the Agreement

was ambiguous, putting King on notice that a motion for judgment as matter of

law would be necessary to preserve any challenge to the jury’s determination of

the Agreement’s meaning.

King adequately preserved the purely legal question of whether the

Agreement is ambiguous by raising the matter in his trial brief. This

determination we must review de novo. See Hofer, 441 F.3d at 880. If we find

that the Agreement is subject to more than one reasonable interpretation and thus

is ambiguous, then we must determine whether the district court’s failure to

overturn the jury’s interpretation was in error. Because King did not adequately

preserve his challenge to the jury’s construction of the Agreement, we review this

- 22 -
issue only for “plain error constituting a miscarriage of justice.” Dilley, 296 F.3d

at 962.

Three clauses are at issue in this dispute. First, the side letter provided

“should you terminate your employment during the 180-day period comm encing

18 months following the completion of the transactions authorized by the M erger

Agreement, the Company shall waive the non-compete provision contained in

Section 12.2(c) of the Agreement.” Second, the side letter established a notice of

termination period of three months. Third, § 9.6 of the A greement states: “W here

you do not provide the appropriate notice [of resignation], salary equivalent to the

amount payable for the shortfall in notice will be forfeited in lieu of notice, as

appropriate.”

King argues that he could terminate his employment by simply walking off

the job, and that regardless, § 9.6 constitutes a liquidated damages clause. PA

counters that the phrase “terminate your employment” contemplates termination

with notice. It further argues that § 9.6 is not a liquidated damages clause because

it lacks limiting language which would suggest salary-forfeiture is the sole penalty

for insufficient notice. Both interpretations are reasonable, and, as a consequence,

the district court correctly found the Agreement to be ambiguous and properly

submitted the issue to the jury. Furthermore, because the interpretation ultimately

adopted by the jury is a reasonable one, the district court’s failure to overturn it

would not constitute an error under the default “clearly erroneous” standard – in

- 23 -
other words, we are not “left with the definite and firm conviction that a mistake

has been committed.” See Anderson v City of Bessemer City, 470 U.S. 564, 573

(1985). As a result, the plain error standard is not satisfied because there is no

error, much less one that constitutes a miscarriage of justice.

IV

King next takes issue with the district court’s denial of his request for

additional discovery on January 10, 2005. He claims that he was precluded from

calculating and proving damages as a result of the denial. W e review pretrial

discovery rulings for abuse of discretion. Shaklee Corp. v. Gunnell, 748 F.2d 548,

550 (10th Cir. 1984). A trial court abuses its discretion when it issues a ruling

that is “arbitrary, capricious, whimsical, or manifestly unreasonable.” Coletti v.

Cudd Pressure Control, 165 F.3d 767, 777 (10th Cir. 1999). As w e held in

Cleveland v. Piper A ircraft Corp., 985 F.2d 1438 (10th Cir. 1993):

Trial judges exercise broad discretion in limiting issues to be tried,
evidence to be used (such as by avoiding cumulative and collateral
proof), the time for oral argument, and the number of witnesses and
experts w ho can be produced. Pretrial procedures are designed to
manage trials, schedule and make expeditious discovery procedures,
formulate issues, and provide fair notice of witnesses and proof to be
adduced by all parties to litigation.

Id. at 1449.

On September 30, 2004, King moved to redesignate certain documents from

“Attorneys’ Eyes Only” to “Highly Confidential.” At issue were documents

identifying former King clients with whom PA secured engagements following

- 24 -
King’s departure. The district court granted that motion on December 30, 2004,

allowing King to view these documents for the first time. Shortly thereafter, he

requested additional discovery, claiming the lists w ere incomplete and seeking to

depose some of the clients identified. Noting that they were “on the eve of trial,”

the court denied King’s request.

As an initial matter, it appears that the additional evidence would not have

been even mildly probative, given that § 12.2(c) (which is enforceable) prohibited

K ing from consulting for clients with whom he worked at PA. In any event, w e

conclude that the district court’s order w as not an abuse of discretion. Although it

is unclear precisely how long K ing’s counsel was in possession of the documents,

she concedes that they were in her possession for more than a year before she filed

the September 30, 2004 motion. The court’s prior order, which granted the

redesignation request, indicated that the new documents might allow King to

identify additional information, but in no way implied additional discovery orders

would be freely granted. District courts are properly granted broad discretion over

discovery and scheduling matters; otherwise, they would be unable to effectively

manage their caseloads. W e will not impinge on that discretion here.

V

King’s final challenge on appeal is to the district court’s order denying his

motion for a new trial based on PA’s allegedly improper closing argument.

He focuses on two statements made by PA ’s counsel: (1) “Now what would you

- 25 -
do if – if you were in this spot where he is, what would you do? You would claim

to have had a conversation with a Kathy M cEnearney”; and (2) counsel’s positing

of a “less charitable” explanation for King’s silence about the M cEnearney

conversation during his departure from PA , which “is that the conversation never

happened.” He further argues that, based on a telephone conversation with

M cEnearney, PA’s counsel knew King testified truthfully.

W e review such rulings for abuse of discretion. United States v. Latimer,

780 F.2d 868, 870 (10th Cir. 1985). It was improper for counsel to suggest the

M cEnearney conversation never happened when King’s testimony on that point

went unchallenged at trial. Nevertheless, we “will not reverse on an improper

argument . . . unless it obviously prejudice[s] one of the parties.” Smith v. Atl.

Richfield Co., 814 F.2d 1481, 1488 (10th Cir. 1987). Counsel did not linger on

this point – rather, he suggested it in passing. W e held in Smith that only where

counsel truly overemphasizes an improper argument will we find the requisite

prejudice and order a new trial. Id. There was no such overemphasis here, thus

denying King’s motion for a new trial did not rise to the level of an abuse of

discretion.

VI

W e turn now to PA ’s arguments on cross-appeal. PA first contends that the

district court erred in denying its motion for judgment as a matter of law on King’s

invasion of privacy claim. W e review the denial of judgment as a matter of law de

- 26 -
novo. W ilson v. Tulsa Junior Coll., 164 F.3d 534, 536 (10th Cir. 1998).

“[J]udgment as a matter of law is warranted only if the evidence points but one

way and is susceptible to no reasonable inferences supporting the party opposing

the motion.” M ason v. Okla. Tpk. Auth., 115 F.3d 1442, 1450 (10th Cir. 1997).

To prove his invasion of privacy claim, King was required to show: “(1) the

defendant used the plaintiff’s name or likeness; (2) the use of the plaintiff’s name

or likeness was for the defendant’s own purposes or benefit, commercially or

otherwise; (3) the plaintiff suffered damages; and (4) the defendant caused the

damages incurred.” Joe Dickerson & Assocs., LLC v. Dittmar, 34 P.3d 995, 1002

(Colo. 2001). A plaintiff claiming commercial damages, such as K ing, must

further establish the commercial value of his name. Donchez v. Coors Brewing

Co., 392 F.3d 1211, 1220-21 (10th Cir. 2004).

PA argues that King failed to present evidence showing his name had

comm ercial value or that he suffered any particularized damages. Neither

argument has merit. As to the first issue, PA ’s marketing manager, Rhea Cook,

testified that King’s name w as included in PA ’s promotional materials because he

was a “famous consultant[]” with a “high profile” who was “well known” in the

industry. King introduced several advertisements issued by NERA after he joined

the firm, including one printed in the W all Street Journal, highlighting King as a

“noted” management consultant and economist. Although this evidence might not

place King’s name in the same league as a Hollywood celebrity or a professional

- 27 -
athlete, that was not King’s burden. Our sole inquiry on appeal is whether this

evidence would allow a jury to reasonably conclude that King’s name held

commercial value in the economic consulting realm. W e are satisfied that it

would.

On the second issue, PA is correct to note that King could not prove by a

preponderance of the evidence that he lost any specific client as a result of PA’s

use of his name. King did testify, however, that PA’s misuse of his name

prevented him from receiving invitations to several industry conferences. He

further testified that such conferences are “important marketing opportunities. It

was one of the primary ways that I market my services in the industry.” A

reasonable jury could have concluded that, but for PA’s continued use of K ing’s

name, those conference invitations would have reached King. There is no

requirement, as PA suggests, that King point to a specific client that he would

have procured; the marketing opportunities have value in and of themselves, value

that King could have captured but for PA’s w rongful conduct. M oreover, it would

be manifestly unjust to require that King name a specific lost assignment to prevail

on this claim, when it was PA that effectively cut off his communication to those

clients. The district court did not err in denying PA’s motion for judgment as a

m atter of law .

- 28 -
 VII

Finally, PA appeals the district court’s denial of its motion for attorneys’

fees incurred defending King’s Lanham A ct claim. W e review such orders for

abuse of discretion, but review the underlying legal principles de novo. Nat’l

Ass’n of Prof’l Baseball Leagues, Inc. v. Very M inor Leagues, Inc., 223 F.3d

1143, 1146 (10th Cir. 2000). A district court may award attorneys’ fees to the

prevailing party on a Lanham Act claim in “exceptional cases.” 15 U.S.C.

§ 1117(a). Although no one factor is dispositive, a case may be deemed

exceptional because of “(1) its lack of any foundation, (2) the plaintiff’s bad faith

in bringing the suit, (3) the unusually vexatious and oppressive manner in which it

is prosecuted, or (4) perhaps for other reasons as w ell.” Id. at 1147. In more

general terms, we look to both the objective strength of a plaintiffs Lanham A ct

claim and the plaintiff’s subjective motivations.

As to the objective weakness of King’s claim, PA argues that King only

settled on the subsection of 15 U.S.C. § 1125 under which he was proceeding after

trial began. Nevertheless, the factual basis for this claim was clearly articulated

on numerous occasions, including in King’s complaint. PA also argues that King

advanced no evidence that PA ’s conduct damaged King. However, the damages

King allegedly suffered under the Lanham Act are precisely the same damages that

he alleged under his invasion of privacy claim. W e have already determined that

King’s evidence was sufficient to send his invasion of privacy claim to the jury.

- 29 -
W e likewise conclude that the evidence was not so exceptionally weak, from an

objective point of view, that PA was entitled to attorneys’ fees.

PA also argues that attorneys’ fees are warranted based on King’s subjective

intent, as well as his course of conduct throughout the litigation. In support of this

claim they rely almost entirely on the damages calculations K ing adduced at trial. 2

Although King did attempt to cast a wide net in calculating his damages, PA

successfully elicited several limiting concessions from him through cross-

examination. There is no indication that King committed perjury, calculated his

damages in a “meritless and improper manner,” or attempted to harass PA . See id.

at 1149. In short, nothing in this case appears exceptional, and the district court

was well within its discretion to deny PA attorneys’ fees.

VIII

The district court’s judgment is AFFIRM ED in all respects. Both K ing’s

appeal and PA’s cross-appeal are DENIED.

2
PA also conclusorily states in a footnote that King’s litigation tactics
increased its costs. In support of this statement, PA merely notes that it requested
King drop his second claim – that the noncompete provisions lacked consideration
– but that he did not do so until the trial w as set to begin. W e fail to see how this
supports PA’s claim for attorneys’ fees on King’s Lanham Act claim.

- 30 -