Dmarcian, Inc. v. Dmarcian Europe BV

Filing 336

ORDER granting 274 Motion for Issuance of Letter Request re: Herwert Kalkman (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
HERWERT KALKMAN

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”).

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

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]
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 Herwert Kalkman
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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

(b) Defendant

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
David Dorey
Blank Rome, LLP
1201 Market Street, Suite 800
Wilmington, DE 19801
UNITED STATES OF AMERICA
DMARC Advisor, BV f/k/a dmarcian
Europe BV

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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,
that Defendant’s conduct was a breach
of the parties’ agreements.
8. (a) Evidence to be Obtained The evidence sought to be obtained is
the oral testimony of Herwert Kalkman.

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(b) Purpose of the Evidence The testimony of Herwert Kalkman 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
Herwert Kalkman
person to be examined
Tijpport 31
3312 WB Dordrecht
The Netherlands
10. Statement of subject
See attached Exhibit A
matter about which Mr.
Kalkman is to be
examined
11. Special methods or
In the interests of justice to enable this
procedure to be followed.
Court to determine the issues pending
before it, it is requested that you please
cause and compel the deposition of
Herwert Kalkman 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.
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. Kalkman, 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.

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.
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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

No judicial personnel of the requesting
authority will attend or participate.

Neither this Request, nor the deposition
to take place pursuant to this Request
shall constitute or operate as a waiver
of any argument, position, objection,
allegation, claim, or defense, of any
party in the above-captioned action, or
the attorney-client privilege, the work
product doctrine, or any other
privileges, rights, protections, or
prohibitions that may apply to that
evidence under the laws of the
Netherlands, the United States, or any
State within the United States.
15.The fees and costs
Subject to any later order of the Court
incurred which are
which may be entered in connection
reimbursable under the
with shifting costs, all costs of the
second paragraph of Article Hague Convention proceeding for
14 or under Article 26 of the procedural costs associated with the
Convention will be borne
depositions requested will be borne by
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.

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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. Kalkman questions regarding
the following topics and requests an opportunity to ask follow-up questions
as may be required by Mr. Kalkman’s responses:
A. Mr. Kalkman’s qualifications and training in software code
development and knowledge of specific coding languages.
B. The circumstances and events that led to Mr. Kalkman working with
the parties on code development.
C. Mr. Kalkman’s work on code development during the period of
cooperation between Plaintiff and Defendant, including but not limited
to work on “DMARC Delegation” features and direction Mr. Kalkman
provided to the Bulgarian development team.
D. Payments Mr. Kalkman received from Measuremail while contributing
to Plaintiff’s source code during the period of cooperation between
Plaintiff and Defendant.
E. The events and circumstances surrounding Mr. Kalkman being
removed from the parties’ software development process and then
subsequently rejoining in January 2020.

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F. Mr. Kalkman’s work on code development for Defendant, including
but not limited to code development for the “DMARC Manager”
platform.
G. Any and all contributions to code Mr. Kalkman has provided
Defendant through Sportadventurie.nl B.V.
H. Any and all IP assignments from Mr. Kalkman, whether individually or
through Sportadventurie.nl, to Defendant.
I. Mr. Kalkman’s knowledge of the dispute between Plaintiff and
Defendant, including but not limited to information Mr. Kalkman
obtained in his role as a part owner of The Digital Xpedition (TDX)
Holding BV and/or as an indirect director of Defendant.
J. All communications with Hub Harmeling related to Mr. Harmeling’s
role as independent director of Defendant.
K. Mr. Kalkman’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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