1. Introduction
ZipBy USA LLC v. Parzych arises from a classic duty-of-loyalty fact pattern set against an acquisition opportunity.
Gregory Parzych, ZipBy’s president and a former founder of a parking technology company known as TCS, learned that TCS’s then-owner
(Q-Free International (“Q-Free”)) was considering a sale. ZipBy’s owner, Anthony Karam, asked Parzych to investigate.
Q-Free provided financial information about TCS for evaluation of a potential ZipBy acquisition.
The jury accepted ZipBy’s account that Parzych advised ZipBy to pass, and then, after ZipBy declined,
Parzych attempted to buy TCS for himself—executing a proposed NDA not for ZipBy, but for his shell entity (MJP Global Technologies).
ZipBy fired Parzych and sued on multiple theories, including breach of fiduciary duty, breach of contract, misappropriation of trade secrets,
and other business tort and IP-related claims, seeking damages and injunctive relief (including to bar Parzych from acquiring TCS).
After trial, the district court sustained the verdict on most claims but granted judgment as a matter of law on the trade-secret claims,
finding the evidence legally insufficient to support misappropriation under either Massachusetts law or the Defend Trade Secrets Act (“DTSA”),
18 U.S.C. § 1836. The First Circuit affirmed in full.
The decision is significant not because it relaxes fiduciary standards—Parzych lost across the board on loyalty and contract—
but because it tightens the conceptual boundaries of “trade secrets” in acquisition contexts:
access to a seller’s confidential deal data under an NDA does not necessarily make the prospective buyer an “owner” entitled to sue for misappropriation,
particularly where the true owner does not object to the challenged use.
3. Analysis
3.1. Precedents Cited
(i) Expert admissibility and the trial court’s gatekeeping role
The First Circuit framed the expert-evidence dispute as a conventional Rule 702/Daubert application, emphasizing discretion and the line between
admissibility and weight.
- Gen. Elec. Co. v. Joiner — cited for the abuse-of-discretion standard for evidentiary rulings.
- Daubert v. Merrell Dow Pharmaceuticals, Inc. — the foundational “relevant” and “reliable” criteria for expert testimony.
- Kumho Tire Co. v. Carmichael — Daubert applies to all expert testimony, not only scientific evidence.
- Lawes v. CSA Architects & Eng'rs LLP — reiterated the “gatekeeper” function and that Daubert does not require correctness, only reliability.
- Milward v. Acuity Specialty Prods. Grp. — quoted via Lawes for the point that courts do not decide whether the expert is “correct.”
- United States v. Mooney — Daubert does not require expert testimony to be “unassailable.”
- Crowe v. Marchland — factual underpinnings often go to weight rather than admissibility.
These authorities shaped the court’s refusal to equate (a) post-COVID underperformance of TCS as a standalone entity with (b) a “but-for” world in which
ZipBy acquired TCS and exploited “synergies.” The panel treated Parzych’s criticisms as classic cross-examination points rather than admissibility defects.
(ii) Remedies for fiduciary disloyalty and corporate opportunity
- Demoulas v. Demoulas Super Mkts., Inc. — Massachusetts permits restitution for fiduciary disloyalty; the First Circuit emphasized the opinion’s permissive framing (“may properly order restitution”), not exclusivity.
- Hanover Ins. Co. v. Sutton — affirmed restitution award; again, not read as limiting remedies to restitution only.
- Jet Spray Cooler, Inc. v. Crampton (1979) — in trade-secret misappropriation, Massachusetts allows recovery of either unjust enrichment or actual loss; used by analogy to reject a categorical bar on lost profits for corporate-opportunity claims.
The court’s move here is modest but important: it refused to transform a common remedy (restitution) into the exclusive remedy, and it relied on
Jet Spray Cooler, Inc. v. Crampton to show Massachusetts’ comfort with “actual loss” measures in adjacent doctrine.
(iii) Discovery discipline and “no trial by ambush”
- Gomez v. Rivera Rodriguez — abuse-of-discretion review for discovery sanctions.
- Harriman v. Hancock Cnty. — enumerated factors for Rule 37 preclusion (justification, harmlessness, history, docket impact, need).
- Thibeault v. Square D Co. — pretrial disclosure makes trial less “blindman’s buff.”
- United States v. Procter & Gamble Co. — quoted via Thibeault to support the disclosure ethos.
The panel applied these principles straightforwardly: Parzych waited years after fact discovery closed and until seven days before trial to pursue tax returns
that would have invited new factual and contextual disputes, undermining orderly preparation.
(iv) Trial management, continuances, and prejudice
- United States v. Saccoccia — broad discretion over continuances; abuse only with “unreasoning and arbitrary insistence upon expeditiousness.”
- Morris v. Slappy — source of the “unreasoning and arbitrary insistence” standard quoted in Saccoccia.
Applying these cases, the court focused on contemporaneous reasons for delay and concrete prejudice, noting the defendant identified none and, notably,
lead counsel chose to remain remote even when offered an in-person closing argument with a mask.
(v) JMOL standards and deference to jury verdicts
- Sharp v. Hylas Yachts, LLC — de novo review of JMOL.
- Crowley v. L.L. Bean, Inc. — verdict sustained unless no reasonable jury could return it.
- Rodowicz v. Mass. Mut. Life Ins. Co. — quoted via Crowley for the “strongly and overwhelmingly inconsistent” standard.
(vi) Trade-secret doctrine: secrecy measures, ownership, and improper use
- ZipBy USA LLC v. Parzych — district court decision quoted for similarity of standards and the “square peg in a round hole” characterization.
- Viken Detection Corp. v. Videray Tech. Inc. — quoted in district court for DTSA/state similarity.
- Allstate Ins. Co. v. Fougere — used to analyze state and federal trade-secret claims “in tandem” and for the Massachusetts misappropriation formulation (quoting Incase Inc. v. Timex Corp.).
- Incase Inc. v. Timex Corp. — quoted for Massachusetts requirement: trade secret used “improper means” in breach of confidentiality to acquire and use.
- Ruckelshaus v. Monsanto Co. — trade secret property right defined by secrecy protection; cited to emphasize the true owner’s control over disclosure.
- Jet Spray Cooler, Inc. v. Crampton (1972) — “measures taken” to guard secrecy informs whether information is truly confidential.
(vii) Fee shifting and apportionment under California law
- Small Just. LLC v. Xcentric Ventures LLC — abuse-of-discretion review for fee awards.
- Gay Officers Action League v. Puerto Rico — legal errors are abuses of discretion.
- Holsum de P.R., Inc. v. ITW Food Equip. Grp. LLC — contract interpretation reviewed de novo.
- In re Newport Plaza Assocs., L.P. — court may accept parties’ agreement on applicable substantive law.
- Reynolds Metals Co. v. Alperson — no apportionment required for fees on issues common to fee-eligible and non-fee-eligible claims.
3.2. Legal Reasoning
A. Expert lost-profits evidence: “but-for synergies” can be a sufficient basis, even post-COVID
The panel upheld admission of the lost-profits expert (Scally) despite reliance on pre-pandemic projections (Radford’s 2019 forecasts),
reasoning that the relevant counterfactual was not TCS’s actual standalone post-COVID performance but what TCS could have contributed within ZipBy.
The court accepted that synergy narratives and partial pandemic adjustments (assumed initial downturn; receivables and backlog considered) could provide
“sufficient facts or data” under Rule 702, leaving disputes to cross-examination.
The doctrinal takeaway is procedural rather than substantive: the First Circuit reinforced that Daubert is about reliability and helpfulness,
not the appellate court’s view of whose business forecast is “right,” especially where the asserted weaknesses are intelligible to lay jurors.
B. Damages for diverted opportunity: restitution is allowed, not mandatory
Parzych’s attempt to cabin Massachusetts corporate-opportunity damages to restitution failed because the cases he cited (Demoulas v. Demoulas Super Mkts., Inc.;
Hanover Ins. Co. v. Sutton) were permissive, not exclusive.
The panel’s analogy to Jet Spray Cooler, Inc. v. Crampton (1979) underscored that Massachusetts can recognize both “actual loss” and unjust enrichment in comparable settings,
making lost profits an available theory in principle.
C. Late production and Rule 37: the court’s “no surprise” stance was within discretion
The exclusion of TCS’s 2021–2022 tax returns was sustained as a classic Rule 26(a)(3)/Rule 37(c)(1) issue: disclosure came years after fact discovery
and on the eve of trial, without substantial justification. The court treated the prospective use as more than pure impeachment because it would have affected
the damages case and required meaningful opportunity for response. The First Circuit emphasized the structural fairness rationale articulated in Thibeault v. Square D Co..
D. Continuance/COVID: absence of demonstrated prejudice controlled
Applying United States v. Saccoccia and Morris v. Slappy, the panel focused on: (1) the lack of a clear contemporaneous motion/objection posture,
(2) the district court’s attention to jury logistics, and (3) the absence of concrete prejudice where co-counsel proceeded in person and lead counsel actively participated remotely,
including examining Parzych and delivering closing.
E. The core new boundary: “trade secret” claims cannot be used as a proxy for loyalty breaches when secrecy control lies elsewhere
The cross-appeal is where the opinion most clearly draws a line likely to matter in future deal disputes.
ZipBy attempted to recast Parzych’s disloyal acquisition attempt as trade-secret misappropriation on two theories:
(1) Q-Free’s confidential TCS financial information; and (2) ZipBy’s “internal strategy to forgo the TCS opportunity.”
1) Q-Free’s deal data: ZipBy lacked a viable misappropriation claim on this record
ZipBy argued it was an “owner” under 18 U.S.C § 1839(4) because it was obligated to keep Q-Free’s information confidential (i.e., a licensee).
The First Circuit did not resolve the abstract possibility that some licensees might qualify as “owners.”
Instead, it held the theory failed “on this record,” emphasizing the practical reality that Q-Free—holder of the secrecy interest—did not object once it learned
Parzych was pursuing the acquisition personally.
The court stressed that “the extent of the property right” in a trade secret is defined by the owner’s protection from disclosure
(citing Ruckelshaus v. Monsanto Co.), and that acquisition targets routinely provide such information to serious suitors.
Here, Q-Free’s reaction (“Fine for us. It doesn't matter as long as we know who we deal with.”) undercut the notion that ZipBy could enforce secrecy rights against Parzych
as though it “stand[ed] in Q-Free's shoes.”
Functionally, the court treated “ownership” and “reasonable measures” as inseparable from real control over secrecy and enforcement.
Where the true owner welcomes the deal and is indifferent to which bidder reviews the data, the buyer cannot convert a fiduciary wrong into a trade-secret tort
without evidentiary support that the secrecy interest being protected is the plaintiff’s to enforce.
2) ZipBy’s “strategy to forgo”: not a trade secret without secrecy measures
ZipBy’s alternative framing failed because the “strategy” was implemented by telling Q-Free ZipBy was not interested—without evidence
that the communication was confidential or that ZipBy took “reasonable measures” to keep the information secret as required by 18 U.S.C. § 1839(3)(A).
Secret board minutes, or general access to other “trade secret information,” did not fill the gap.
The court’s “square peg in a round hole” language captures a recurring litigation risk:
plaintiffs may attempt to label commercially sensitive facts “trade secrets” when the better doctrinal fit is loyalty, contract, or unfair competition—
but trade-secret law still requires secrecy, protectability, and a misappropriation mechanism.
F. Fee shifting: “incurred in enforcing” covered the litigation, and common-issue fees were recoverable
Under California law (applied by agreement), the court read the IP Agreement as doing two things:
(1) authorizing injunctive relief without requiring individualized proof of irreparable harm; and
(2) shifting fees and costs “incurred in enforcing any of the covenants” of the agreement.
The key contract move was tying Parzych’s acquisition pursuit to Section 1’s covenant that he “devote his energy and skills to the promotion of the best interests of the Company.”
Because the case was tried on that breach theory and the jury found for ZipBy on the IP Agreement claim (unchallenged on appeal),
the First Circuit rejected the argument that fees were not incurred in enforcing the agreement.
On apportionment, the court relied on Reynolds Metals Co. v. Alperson to uphold a substantial award for work on issues common to fee and non-fee claims,
while crediting the district court’s case-specific trimming (two-thirds of fees and expenses), particularly given ZipBy’s loss on trade secrets.
3.3. Impact
A. Trade-secret claims in M&A information flows
The most consequential implication is for acquisition-related confidentiality:
where a seller provides target financials under an NDA for deal evaluation, a prospective buyer harmed by an employee’s disloyal “self-dealing bid”
may not be able to sue for trade-secret misappropriation unless it can show a protectable secrecy interest it controls and has reasonably protected,
and that the defendant’s use was unauthorized in a way that matters to that secrecy interest.
Practically, parties seeking trade-secret leverage in deal disputes may respond by:
- Structuring NDAs and access protocols to clarify which party has enforcement rights and against whom (including employees/agents),
- Documenting confidentiality designations and limits on use, and
- Ensuring the true owner of the data (the seller) is aligned and willing to assert the secrecy interest when a misuse occurs.
B. Fiduciary duty and contract remain the primary tools
The court’s affirmance on fiduciary duty and contract—along with the injunction barring acquisition—shows that trade-secret law is not necessary
to secure substantial remedies against a disloyal executive. The opinion signals that plaintiffs should not expect trade-secret doctrine to do extra work
when the alleged “secret” is either someone else’s deal data or an openly communicated decision not to pursue a transaction.
C. Litigation management and remote participation
The continuance ruling is fact-bound, but it reinforces a growing theme: trial courts retain broad latitude to proceed with hybrid in-person/remote advocacy
absent concrete prejudice. Parties seeking relief must build a record of specific impairment, not generalized skepticism about “trial by Zoom.”
D. Fee-shifting clauses with “enforcing covenants” language
The fee analysis suggests that broad “enforcing any covenants” language can support significant fee recovery even when the lawsuit includes mixed claims,
so long as the fee-eligible contract claim is actually litigated and shares common factual issues with other claims. District courts, however, may still reduce
fee requests for inadequate documentation or partial losses.