United States District Court, D. Nebraska
MICHAEL D. NELSON UNITED STATES MAGISTRATE JUDGE.
ACI Worldwide Corp. (“ACI”) filed this action for
a declaratory judgment to determine the rights and legal
responsibilities of ACI and Defendant, Churchill Lane
Associates, LLC (“Churchill”), under a Licensing
Agreement. (Filing No. 1). Previously, Chief Judge Smith Camp
granted ACI's Motion for Summary Judgment, denied
Churchill's Motion for Partial Summary Judgment, and
dismissed all of Churchill's counter-claims. (Filing No.
110). Churchill appealed the judgment to the Eighth Circuit
Court of Appeals, which affirmed the judgment in part, and in
part reversed and remanded the case for further proceedings.
(Filing No. 115).
that the case has been remanded, ACI requests that the Court
grant its “Motion to Amend Complaint and Answer to
Defendant's Counterclaim” (Filing No. 81), which
ACI filed after the parties filed their summary judgment
motions, but before Chief Judge Smith Camp entered judgment
in ACI's favor. The Court never explicitly ruled on the
motion to amend. For the reasons explained below, the Court
will deny the motion.
February 2001, ACI and Nestor, Inc. (“Nestor”)
entered into a Licensing Agreement, under which ACI was
permitted to use and sub-license portions of a suite of
software products developed by Nestor. ACI used the licensed
software technology to develop new software programs, which
ACI then licensed to its customers. Per the Licensing
Agreement, Nestor owned any new technology developed by ACI.
In exchange, ACI agreed to pay Nestor periodic royalties.
(Filing No. 109 at p. 2; Filing No. 115 at p. 2).
2002, due to Nestor's financial difficulties, Nestor and
ACI executed Amendment 2 to the License Agreement, assigning
Nestor's right to the royalties to Churchill, an entity
formed by Nestor investors. Nestor and Churchill entered into
agreements wherein Nestor (1) irrevocably assigned to
Churchill the future royalties due to Nestor under the
Licensing Agreement, and (2) promised not to modify or
terminate the Licensing Agreement without Churchill's
consent. ACI received notice of the assignment and began
remitting the royalties directly to Churchill. Further
amendments were made to the Licensing Agreement in 2007 and
2008. (Filing No. 109 at pp. 3-4; Filing No. 115 at pp. 2-3).
2009, Nestor became insolvent and went into receivership. A
court appointed receiver sold all of Nestor's rights in
the Licensing Agreement and the licensed software technology
to American Traffic Solutions (“ATS”), and on
July 20, 2014, ACI purchased from ATS all of Nestor's
remaining rights, title, and interest in the licensed
software technology and the Licensing Agreement. On July 21,
2014, ACI unilaterally terminated the License Agreement. ACI
subsequently sent Churchill a notice that the royalty
obligations assigned to Churchill were no longer in effect,
and enclosed a check representing the full and final payment
for the balance of royalties due. Churchill did not consent
to the termination and informed ACI that Churchill was still
entitled to further royalties. (Filing No. 109 at p. 6;
Filing No. 115 at p. 4).
August 20, 2014, ACI filed this action for a declaratory
judgment, asking the Court to declare that: (1) ATS's
assignment to ACI was valid and enforceable; (2) ACI owns the
Licensed Software Technology free and clear of any claim or
right of Churchill; (3) ACI is the proper assignee of and
successor Licensor under the Licensing Agreement, free and
clear of any claim or right of Churchill; (4) ACI validly
terminated the Licensing Agreement effective July 21, 2014;
(5) ACI tendered timely, final, and full payments of all
amounts due to Churchill under the Licensing Agreement and no
new amounts can become due; (6) Churchill is a non-party to
the Licensing Agreement and does not have standing to
challenge the assignment of the Software or the assignment
and termination of the Licensing Agreement; and (7) any other
relief the Court deems just and equitable. (Filing No. 1).
asserted several affirmative defenses and counter-claims.
(Filing No. 11). Churchill's counter-claims for
declaratory relief asked the Court to rule that: (1) the
Licensing Agreement was not terminated and that ACI remains
obligated to pay royalties to Churchill; (2) Churchill is due
an accounting of the royalties outstanding per the terms of
the Licensing Agreement; (3) ACI must pay all royalties due
under the Licensing Agreement; (4) Churchill is entitled to
Royalties on any fees paid to ACI or its affiliates for
license or maintenance of the Licensed Software Technology or
any part of the new technology; and (5) even if the Licensing
Agreement was terminated, Churchill is still owed royalties
on any sublicenses which may have been effected with respect
to ACI and any third parties prior to the termination of the
Licensing Agreement. (Filing No. 11 at pp. 6-9).
April 8, 2015, Churchill moved for partial summary judgment,
asking the Court to find that Churchill is a party to the
Licensing Agreement and that ACI could not terminate the
Licensing Agreement without the consent of Churchill. (Filing
No. 30). On August 14, 2015, ACI filed a Motion for Summary
Judgment, asking the Court to enter judgment in ACI's
favor on those matters for which ACI sought declaratory
judgment in its Complaint. (Filing No. 58).
both summary judgment motions were pending, on November 13,
2015, ACI filed the present motion to amend its Complaint and
Answer to Churchill's Counterclaim. (Filing No. 81).
ACI's proposed amended pleadings seek to, among other
changes: add a claim of unjust enrichment due to
Churchill's alleged self-dealing and improper conduct, in
the amount of $25, 204, 596, for royalty payments tendered by
ACI to Churchill between September 2002 and July 2014; add
new justifications for ACI's termination of the License
Agreement; add an affirmative defense for unclean hands
arising out of Nestor's rejection of ACI's offers to
purchase the royalties in 2002; add an assertion that
ACI's obligations under the License Agreement ended as
early as June 24, 2009; and add the Rule against Perpetuities
as an affirmative defense. (Filing No. 81-2; Filing No.
ACI filed its motion to amend, on December 23, 2015, counsel
for ACI filed a Letter with the Court, stating:
We respectfully submit that the Court need only decide the
parties' competing summary judgment motions, a decision
that likely will obviate the need to decide the discovery
motions. Put simply, there is a straightforward basis for the
Court to grant [ACI] judgment, now, on the existing summary
judgment record. Undisputed facts applied to a clear written
agreement demonstrate that ACI Worldwide is entitled to
summary judgment. But if ACI Worldwide is right that the
entry of summary judgment now is appropriate, then the Court
need not decide all of those other motions, discovery will be
concluded, and trial preparation ended.
(Filing No. 102 at pp. 1-2). Based on ACI's
representations in its Letter, the Court entered an order on
December 30, 2015, stating, “the Court will not address
[ACI's] Motion to Amend Complaint ...