You're viewing Docket Item 33 from the case Arduino, LLC v. Arduino S.R.L. et al. View the full docket and case details.

Download this document:




Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 1 of 7

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS




ARDUINO, LLC,


Plaintiff,


-v-


ARDUINO S.R.L. f/k/a SMART PROJECTS
S.R.L.; GHEO SA; CC LOGISTICS, LLC;
MAGYC NOW LTD; DOG HUNTER INC.; DOG
HUNTER LLC; DOG HUNTER AG; TULYP
HOLDING SA; GIANLUCA MARTINO;
FEDERICO MUSTO; and DOES 1-10,






Civil Action No.: 1:15-cv-10181-DJC






Defendants.





JOINT LOCAL RULE 16.1 STATEMENT

Arduino, LLC (“Arduino” or “Plaintiff”) and Defendants Gheo SA (“Gheo”), CC

Logistics LLC (“CC Logistics”), Dog Hunter LLC (“Dog Hunter”), and Federico Musto

(“Musto”) (collectively, the “Defendants”), submit this Joint Statement pursuant to Local Rule

16.1 and the Court’s Notice of Scheduling Conference (Dkt. 27).

I.

Concise Statement Of The Parties’ Positions On Liability And Relief Sought

a. Plaintiff’s Position

Plaintiff’s position on liability is a simple one. In sum, a group of

software/hardware designers/developers created a product in 2005, named it ARDUINO,

and teamed up with defendant manufacturer to commercialize the product. After years of

a stable licensing relationship, the manufacturer, under the influence of and with the

assistance of the other defendants, is now claiming ownership of the entire ARDUINO

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 2 of 7

brand. Plaintiffs’ seek to end this usurpation of its brand and to be declared the rightful

owner of the ARDUINO mark.

The Complaint in the matter contains ten counts, including, counts for federal

and common law trademark infringement, unfair competition, copyright infringement,

breach of contract, and breach of fiduciary duty.

Plaintiff in this case requests relief including in the following forms:

? Declaration of trademark ownership;

? Order enjoining Defendant’s use of Plaintiff’s ARDUINO Marks and

copyrights;

? Order assigning all foreign applications and registrations for the

ARDUINO Marks to Plaintiff;

? Transfer of the www.arduino.org domain to Plaintiff;

? Return of all infringing materials to Plaintiff;

? An accounting of profits based on the infringing materials; and

? Award of Plaintiff’s reasonable attorneys’ fees and costs.

b. Defendants’ Position



Defendants state that CC Logistics, Gheo SA and Dog Hunter are lawful

distributors of products bearing valid ARDUINO and ARDUINO-formative marks

imported under valid European registrations. Defendants further state that plaintiff

Arduino LLC has no enforceable rights because at least up until the filing of the

complaint in this matter, Arduino LLC never sold any products in the United States

bearing ARDUINO marks, never exercised any quality control on products bearing

ARDUINO marks, and never directed any entity in the manufacture of such products or



2

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 3 of 7

the affixation of ARDUINO marks. Defendants also state that Arduino LLC never

entered into a trademark license with Arduino S.R.L. f/k/a Smart Projects S.R.L., and

Defendants deny that they ever paid a trademark royalty to Arduino LLC.



Defendants also note that some of the issues raised by plaintiff in this action are

already being litigated in two prior filed actions, one of which is pending before an Italian

court, and the other is pending before the United States Trademark Trial and Appeal

Board.

II.

Agenda Of Matters To Be Discussed At The Scheduling Conference

1. Regarding the unserved defendants:

a. Discuss possibility of alternate service of Arduino SRL in the

interest of efficiency. The Hague process has been started, and it is only a

matter of time.

b. Plaintiff is willing to dismiss the remaining unserved defendants

(excluding Arduino SRL) without prejudice as long as it retains the option to

rejoin same to this case (without having to file separate action and request for

consolidation) if it finds in discovery that the unserved entities have specific

involvement in this case—Magyc Now Ltd, Dog Hunter AG, Tulyp SA, and

Dog Hunter Inc.

2. Jurisdictional challenges by Gianluca Martino and Arduino SRL:

a. Timing of response to Complaint, Defendants seek to extend

Gianluca Martino’s time to respond until 21 days after Arduino SRL has been

served.





3

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 4 of 7

III.

Joint Proposed Schedule

a.

The parties stipulate to the following pre-trial schedule and submit it for

the Court’s consideration:

i. Initial disclosures pursuant to Fed. R. Civ. P. 26(a)(1): July 16, 2015

ii. Joinder of additional parties: August 21, 2015

iii. Other amendments to the pleadings: August 21, 2015.

iv. Close of fact discovery: March 15, 2016

v. The party with the burden of proof on an issue shall identify any expert(s)

on that issue (including the disclosure of previous testimony and publications

required by Fed. R. Civ. P. 26(a)(2)(B)(iv)-(v)): March 15, 2016.

vi. The party with the burden of proof shall serve expert reports, if required,

pursuant to Fed. R. Civ. P. 26(a)(2)(B): April 15, 2016

vii. Rebuttal expert reports: May 15, 2016

viii. Close of expert discovery: June, 15, 2016

ix. Deadline for filing dispositive motions: August 15, 2016

b.

Defendants note that the joint proposal schedule of the parties may need to

be revisited depending on whether additional named defendants are served with process

and/or become subject to discovery, and reserve the right to seek an extension on this

basis.

IV. Other Discovery Matters

a. The parties do not seek to phase discovery at this time.

b. The parties do not consent to trial by magistrate judge.





4

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 5 of 7

c. Electronic Discovery

i. The parties will comply with the Federal Rules of Civil Procedure and

agree to negotiate in good faith, early in discovery, to reach a complete ESI

discovery plan to include the form of electronic documents and the sources to be

searched.

d. Confidentiality/Protective Order

i. The parties further agree to negotiate a confidentiality agreement and

proposed protective order for entry by this Court.

e. Inadvertent Production of Privileged Material

i. The parties request the Court enter an order concerning the inadvertent

production of privileged or otherwise protected material as follows:

Inadvertent production of documents subject to work-product immunity, the

attorney-client privilege, or other privilege protecting information from discovery

shall not constitute a waiver of the immunity or privilege, provided that the

producing party shall promptly notify the receiving party in writing of such

inadvertent production. If reasonably prompt notification is made, such

inadvertently produced documents and all copies thereof, as well as all notes or

other work product reflecting the contents of such materials, shall be returned to

the producing party or destroyed, upon request of the producing party, and such

returned or destroyed material shall be deleted from any litigation support or other

database. No use shall be made of such documents during depositions or at trial

and they shall not be disclosed to anyone who was not given access to them

before the request to return or destroy. The party returning such documents may



5

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 6 of 7

move the Court for an order compelling production of the material but such

motion shall not assert the fact or circumstances of the inadvertent production as a

ground for entering such an order.

Settlement

The parties have exchanged written settlement proposals prior to this action, and remain

in ongoing negotiations, but have not yet been able to resolve the controversy.





Respectfully submitted,









___/s/ John L. Welch_______
John L. Welch BBO#522040
Wolf, Greenfield & Sacks, P.C.
600 Atlantic Avenue
Boston, Massachusetts 02210-2206
Telephone: (617) 646-8000
Email: [email protected]

Martin B. Schwimmer (pro hac vice)
Victoria Polidoro (pro hac vice)
Lori L. Cooper (pro hac vice)
LEASON ELLIS LLP
One Barker Avenue, Fifth Floor
White Plains, New York 10601
Telephone: (914) 288-0022
Email: [email protected]
Email: [email protected]
Email: [email protected]


Attorneys for Plaintiff













Dated: July 17, 2015





_/s/ Michael P. Boudett___________
Michael P. Boudett BBO#558757
Shrutih V. Ramlochan-Tewarie BBO#685467
Foley Hoag LLP
155 Seaport Boulevard
Boston, MA 02210
Telephone: (617) 832-1000
Email: [email protected]
Email: [email protected]

Attorneys for Defendants












6

Case 1:15-cv-10181-DJC Document 33 Filed 07/17/15 Page 7 of 7

CERTIFICATE OF SERVICE

I certify that this document is being filed through the Court’s electronic filing system,


which serves counsel for other parties who are registered participants as identified on the Notice
of Electronic Filing (NEF). Any counsel for other parties who are not registered participants are
being served by first class mail on the date of electronic filing.






/s/ John L. Welch
John L. Welch









7