Dmarcian, Inc. v. Dmarcian Europe BV

Filing 335

ORDER granting 273 Motion for Issuance of Letter Request re: Hub Harmeling (LETTER ROGATORY). Signed by Chief Judge Martin Reidinger on 2/7/2024. (cly)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
ASHEVILLE DIVISION
CIVIL CASE NO. 1:21-cv-00067-MR

DMARCIAN, INC.,
Plaintiff,
vs.
DMARC ADVISOR BV,
f/k/a dmarcian Europe BV,

LETTER OF REQUEST
FOR ORAL
EXAMINATION OF HUB
HARMELING

Defendant.

REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT
TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING
OF EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS
A Request is hereby made by the United States District Court for the
Western District of North Carolina, 100 Otis Street, Asheville, NC 28801,
UNITED STATES OF AMERICA, to the Ministry of Justice, for assistance
in obtaining testimony needed for an upcoming trial in the above-captioned
action. This request is made pursuant to Chapters I and III of the Hague
Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or
Commercial Matters (the “Hague Convention”).

This Court respectfully

requests this Letter of Request from this Court and accompanying
Commission be recognized, and that Dutch Ministry of Justice authorizes

the taking of evidence in the territory of the Netherlands by the
commissioners appointed for this purpose as developed below, in
adherence to Article 17 of the Hague Convention and in the interest of
comity.
1. Requesting Judicial
Authority

Honorable Martin Reidinger
Chief United States District Judge
United States District Court for the
Western District of North Carolina
100 Otis Street
Asheville, NC 28801
UNITED STATES OF AMERICA

2. Central Authority of the
Requested State

De Officier van Justice
Arrondissenmentsparket Den Haag
Afdeling executie, t.a.v. Ms. J. Booister
Postbus 20302
2500 EH Den Haag
The Netherlands

3. Person to whom the
executed request is to be
returned

Plaintiff’s US Counsel:
Pamela Duffy
Ellis & Winters LLP
300 N. Greene Street
Suite 800
Greensboro, NC 27401
UNITED STATES OF AMERICA
David Dorey, DE #5283
Blank Rome, LLP
[e-mail]
1201 Market Street, Suite 800
Wilmington, DE 19801
Telephone: [phone]

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Plaintiff’s Dutch Counsel:
Timo Jansen and Mukesh Hoeba
Lexence
Postbus 75999
1070 AZ Amsterdam
4. Specification of date by
which requesting authority
requires receipt of response
to the Letter of Request
Reason for urgency

The requesting authority would greatly
appreciate a response to the Request
by February 29, 2024.
Oral examination of Hub Harmeling
needed to obtain necessary evidence in
preparation for trial set for May 13,
2024.

In conformity with Article 3 of the Hague Convention, the undersigned
applicant has the honor to submit the following Request:
5. (a) Requesting authority
United States District Court for the
Western District of North Carolina
100 Otis Street
Asheville, NC 28801
UNITED STATES OF AMERICA
(b) To the Competent
Authority of
(c) Name of the case and
identifying number
6. (a) Plaintiff
Name and address of
Plaintiff’s representatives

The Netherlands
dmarcian, Inc. v. DMARC Advisor, BV,
f/k/a dmarcian Europe BV, Case No.: 121-CV-00067
dmarcian, Inc.
Pamela Duffy
Tyler Jameson
Ellis & Winters LLP
300 N. Greene Street
Suite 800
Greensboro, NC 27401
UNITED STATES OF AMERICA

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David Dorey
Blank Rome, LLP
1201 Market Street, Suite 800
Wilmington, DE 19801
UNITED STATES OF AMERICA
(b) Defendant
DMARC Advisor, BV f/k/a dmarcian
Europe BV
Name and address of
Pressly M. Millen
Defendant’s representatives Samuel B. Hartzell
Womble Bond Dickinson (US) LLP
PO Box 831
Raleigh, NC 27602
UNITED STATES OF AMERICA
7. (a) Nature of the
Copyright and trademark infringement,
proceedings
theft of trade secrets, breach of
contract
(b) Summary of Complaint
This civil action was brought to recover
for damages that Plaintiff contends it
suffered through Defendant’s alleged
theft of several types of intellectual
property protected by United States
law, including among others copyright
law, trademark law, and trade secrets
(collectively “IP”). Plaintiff is a software
company that helps users authenticate
incoming emails through the Domainbased Message Authentication
Reporting and Conformance (DMARC)
protocol. Defendant contracted with
Plaintiff to engage in a cooperative joint
business which included authorization
to use Plaintiff’s IP.
In or about early 2021, Defendant
began to use Plaintiff’s IP outside of the
cooperative relationship without
authority of Plaintiff and Defendant
further asserted its own alleged
intellectual property rights in the IP.
Plaintiff asserts, among other things,
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that Defendant’s conduct was a breach
of the parties’ agreements.
In 2020, Defendant filed suit in the
Enterprise Court of the Appellate Court
of Amsterdam in the Netherlands. In
September 2020, the Enterprise
Chamber seized control of Defendant
and appointed Mr. Harmeling as
Defendant’s independent director. Mr.
Harmeling did not previously have a
relationship with Defendant. Mr.
Harmeling’s actions on behalf of
Defendant after his appointment are at
issue in the dispute.
8. (a) Evidence to be Obtained The evidence sought to be obtained is
the oral testimony of Hub Harmeling.
(b) Purpose of the Evidence The testimony of Hub Harmeling is
relevant to the issues in dispute and
needed for the impending trial
scheduled to begin in May of 2024.
9. Identity and address of the
H.J.M. (“Hub”) Harmeling
person to be examined
Paulus Potterlaan 12
2102 CD Heemstede
The Netherlands
10. Statement of subject
matter about which Mr.
Harmeling is to be
examined
11. Special methods or
procedure to be followed

See attached Exhibit A

In the interests of justice to enable this
Court to determine the issues pending
before it, it is requested that you please
cause and compel the deposition of
Hub Harmeling under oath to testify
truthfully, that counsel for both sides be
given the opportunity to question the
witness, and that a verbatim transcript
be prepared.
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It is further requested that the
deposition take place by video at a time
to be agreed upon by the attorneys of
record in the above-identified matter
and Mr. Harmeling, provided that the
deposition take place no later than
March 15, 2024.

12.Request for notification of
the time and place for the
execution of the Request
and identity and address of
any person to be notified

13.Request for attendance or
participation of judicial
personnel of the requesting
authority at the execution of
the Letter of Request
14.Specification of privilege or
duty to refuse to give
evidence under the law of
the Requesting State

It is further requested that any certified
record of the deposition be sent to:
Pamela S. Duffy and David Dorey
This Court respectfully requests that
you notify this court; the
representatives of the parties identified
above; and the witness from whom
evidence is requested as indicated
above; and such other persons as you
deem proper.
No judicial personnel of the requesting
authority will attend or participate.

Plaintiffs do not believe that the witness
benefits from any privilege or duty to
refuse to give the requested evidence,
and does not endorse the assertion of
any such privilege or duty, except to the
extent that the Defendant in this action
may assert attorney-client privilege as
to specific questions as appropriate.

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15.The fees and costs
incurred which are
reimbursable under the
second paragraph of Article
14 or under Article 26 of the
Convention will be borne
by:

Subject to any later order of the Court
which may be entered in connection
with shifting costs, all costs of the
Hague Convention proceeding for
procedural costs associated with the
depositions requested will be borne by
Plaintiff dmarcian, Inc., provided that
each party will be responsible for the
fees and expenses, if any, of its own
attorneys relating to any Hague
Convention proceedings with respect to
the deposition sought in this Letter of
Request.

This Court expresses its appreciation of the Ministry of Justice for its
courtesy and assistance in this matter and states that it shall be ready and
willing to assist the Ministry of Justice in a similar manner when required.
Asheville, North Carolina, United States of America.
Signed: February 7, 2024

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Exhibit A: Topics of Oral Examination

Plaintiff respectfully requests to ask Mr. Harmeling questions regarding
the following topics and requests an opportunity to ask follow-up
questions as may be required by Mr. Harmeling’s responses:

A. Mr. Harmeling’s qualifications and role as independent director of
Defendant, his appointment, and the process related to such
appointment.
B. All actions taken by Mr. Harmeling in his role as independent director
of Defendant and the scope of his authority.
C. Mr. Harmeling’s knowledge of the dispute between Plaintiff and
Defendant and his efforts to resolve such dispute.
D. Mr. Harmeling’s interactions with Plaintiff, with Defendant and its
advisors or employees, and with Defendant’s shareholders and
directors (Tim Draegen and TDX, through its representatives Martijn
Groeneweg and Herwert Kalkman), including but not limited to those
interactions that led to the actions initiated or taken by Mr. Harmeling
on behalf of Defendant.

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E. Mr. Harmeling’s involvement in actions taken by Defendant which are
the subject of the complaint, including without limitation: obtaining
access to and exercising control over and using Plaintiff’s IP;
establishing a separate website using to operate independently from
Plaintiff; and Defendant’s communications with customers and
prospective customers seeking that they cease using the Plaintiff’s
platform and commence using Defendant’s separate platform.
F. The substance, purpose, and effect of all communications Mr.
Harmeling had with Plaintiff’s and Defendant’s representatives
regarding the dispute.
G. All instructions given by Mr. Harmeling to employees of Defendant to
procure copies of Plaintiff’s source code, trade secrets, customer
information, or other intellectual property in relation to Defendant’s
efforts to conduct business independently from Plaintiff, including the
nature of the instruction, the persons to whom he gave such
instructions, and the date(s) of such instructions.
H. All communications with customers and other third parties asserting
that Plaintiff suffered a data breach requiring notifications to
customers under the GDRP.

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I. All statements and contentions set forth in Mr. Harmeling’s
declarations submitted in the above-identified United States action.
J. Mr. Harmeling’s knowledge of and/or participation in Defendant’s
actions in violation of the Preliminary Injunction which led to issuance
of contempt orders.

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