Case 1:11-cv-11526-DPW Document 1

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ICONICS, INC., Plaintiff, v. SIMONE MASSARO, Defendant. ) ) ) ) ) ) ) ) )

Civil Action No. 11-11526

COMPLAINT 1. Plaintiff Iconics, Inc. (Iconics) brings this action for infringement of its

copyrights by Simone Massaro while he was an employee at Iconics. While he was the lead software developer and GENESIS64 Product Development Manager, Mr. Massaro assisted an Iconics competitor, Volpe Industries, Inc. (Volpe), in developing products and systems using Iconics copyrighted source code. Neither Mr. Massaro, nor Volpe, nor anyone else paid Iconics for those valuable assets. On information and belief, Mr. Massaro maintains possession of Iconics copyrighted source code. JURISDICTION AND VENUE 2. This action arises under the Federal Copyright Act, 17 U.S.C. 101 et seq., and

the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et seq. Accordingly, this Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. 1331 and 1338. 3. Venue in this district is proper under 28 U.S.C. 1391(b) and 1400. PARTIES 4. Plaintiff Iconics is a privately held corporation having a principal place of

business in Foxboro, Massachusetts.

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5.

Defendant Simone Massaro, is, upon information and belief, an individual

residing in Catania, Italy. FACTUAL ALLEGATIONS 6. This case arises out of Mr. Massaros unlawful and improper use of Iconics

copyrighted software to support Volpes development of Project Foxtrot, since at least October 2007, without Iconics knowledge or permission. 7. Founded in 1986, Iconics is a software development company that produces

modular OPC-based industrial and manufacturing systems software known as HMI (Human Machine Interface) or SCADA (Supervisory Control and Data Acquisition). The software runs on Microsoft Windows operating systems and includes a configurator, runtime engine, SCADA engine, alarm scheduling and automation, alarms and events, historical replay, security and licensing servers, OPC Servers and more. Iconics is headquartered and conducts business in Massachusetts. 8. Iconics software includes, among other products, the GENESIS32, GENESIS64,

Analytics and BizViz product families. Iconics has won numerous awards for its innovative solutions and was named a 2008 Microsoft Gold Certified Partner of the Year. 9. Iconics requires every employee to sign a Confidentiality Agreement, promising

to devote full time and best efforts to the business of Iconics (Noncompetition Covenant); not to disclose or use any know-how, source code or trade secrets of Iconics except in conjunction with the employees duties at Iconics (Nondisclosure Obligation); and to assign Iconics rights to all Know-How, ideas, programs and documents created during the term of employment (Property Rights Clause).

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10.

In addition, Iconics requires its employees to enter into a contractual agreement

relating to Inventions; Disclosures, Assignment, and Further Assurances (Inventions Clause). The Inventions Clause specifies that: If at any time or times during my employment, I shall (either alone or with others) make, conceive, discover, reduce to practice or become possessed of any invention, modification, discovery, design, development, improvement, process, formula, data, technique, know-how, secret or intellectual property right whatsoever or any interest therein (whether or not patentable or registrable under copyright or similar statutes) (herein called Inventions) whether or not such Inventions relate to the business of the Company or any of the products or services being developed, manufactured, or sold by the Company, or result from tasks assigned me by the Company or results from the use of premises or equipment owned, leased or contracted for by the Company, such Invention and the benefits thereof shall immediately become the sole and absolute property of the Company and its assigns 11. Iconics hired Mr. Massaro as a Software Development Engineer on

August 15, 2001. 12. Iconics hired Mr. Massaro immediately after he graduated from college

and cultivated his technological know-how over seven years of formal and informal training. Mr. Massaro worked on every major project at Iconics since his arrival and had intimate knowledge of and access to the copyrighted source code of all Iconics product families. 13. Iconics employment of Mr. Massaro, and his promotion, were both

contingent upon Mr. Massaro signing and entering into the Iconics Employee Confidentiality Agreement, first in 2001 and then again in 2008. 14. Mr. Massaros agreements are attached hereto as Exhibits A and B

(collectively, the Agreements).

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15.

The Agreements contain an Inventions Clause, Noncompetition Covenant,

Property Rights Clause, and Nondisclosure Obligation. 16. The Agreements defined the rights between Iconics and Mr. Massaro, and

governed the term of his employment. 17. Under the terms of the Agreements, and specifically the Property Rights

Clause and the Inventions Clause, all works of which Mr. Massaro is the author, including all intellectual property rights associated therewith, are the sole and exclusive property of Iconics. Mr. Massaro agreed, automatically and permanently by operation of the Agreements, to assign to Iconics his rights to any invention, work, know-how, improvement, or software that he developed or in which he had rights during the term of his employment. 18. Until January 6, 2009, at all times, Mr. Massaro remained a full-time

Iconics employee. 19. On information and belief, Mr. Massaro is currently the Manager of the

SCADA Division at BaxEnergy GmbH in Hannover Area, Germany. 20. Christopher Volpe, who founded Volpe, was an Iconics employee from April

1999 until February 2003. 21. Iconics. 22. 23. 24. Mr. Volpe left Iconics on or about February 23, 2003. Mr. Volpe solicited Mr. Massaro to perform work for Volpe. Beginning in October 2007, while working for Iconics, Mr. Massaro began Mr. Volpe and Mr. Massaro met in 2001, when Mr. Massaro began working at

working on Volpes Project Foxtrot using Iconics copyrighted source code.

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25.

Mr. Massaro secretly performed work on Volpes material using Iconics

copyrighted source code, while employed by Iconics, in violation of their employment agreements, without Iconics knowledge or authorization. 26. Mr. Massaro wrote the Foxtrot Requirement Specification named in

United States Copyright Registration No. TXu 1-605-761 while employed by Iconics, and is listed as an author on the copyright registration. 27. Mr. Massaro wrote the Foxtrot Source Code named in United States

Copyright Registration No. TXu 1-609-887 while employed by Iconics, and is listed as an author on the copyright registration. 28. Mr. Massaro co-wrote the Foxtrot Functional Specification named in

United States Copyright Registration No. TXu 1-605-758 while employed by Iconics. 29. Mr. Massaro co-wrote the Foxtrot Narrative named in United States

Copyright Registration No. TXu 1-614-643 while employed by Iconics, and is listed as an author on the copyright registration. 30. Under operation of their employment agreements, all work performed by

Mr. Massaro was automatically assigned to Iconics. 31. Under operation of the employment agreements, Iconics owns the Foxtrot

Source Code, Foxtrot Requirement Specification, Foxtrot Functional Specification, and/or Foxtrot Narrative. 32. Without license or authorization, Mr. Massaro has copied and/or used the

Foxtrot Source Code (including underlying preexisting Iconics software code), Foxtrot Requirement Specification, Foxtrot Functional Specification, and Foxtrot Narrative.

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33.

Mr. Massaros and use of its unauthorized copies of the Foxtrot Source

Code (including underlying preexisting Iconics software code), Foxtrot Requirement Specification, Foxtrot Functional Specification, and Foxtrot Narrative has irreparably harmed Iconics, including the loss of significant employee relationships, loss of productivity of its employees, misuse of its trade secrets, delays in Iconics projects based upon time improperly spent by their employees on Project Foxtrot, recruiting and training of replacement employees, loss of sales, loss of sales and marketing time and dollars to promote its flagship product, damage to its relationship with its sales channel partners, and other harm. 34. Unless it is enjoined from doing so, upon information and belief, Mr.

Massaro will use the Iconics copyrighted material, despite having no ownership rights in or license to the materials. CLAIM (Federal Copyright Infringement 17 U.S.C. 101 et seq.) 35. Iconics repeats and realleges the allegations in preceding paragraphs 1-39 of this

counterclaim as if fully set forth herein. 36. 37. 38. undetermined. 39. Iconics will continue to suffer irreparable harm and monetary damages unless and Mr. Massaros conduct constitutes infringement of Iconics copyrighted material. Mr. Massaros conduct has been willful, intentional, and purposeful. Iconics has suffered irreparable harm and monetary damages in an amount as yet

until Mr. Massaro is enjoined from its unlawful conduct. PRAYER FOR RELIEF

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WHEREFORE, Counterclaim Plaintiff Iconics prays for judgment as follows: 1. That an order be entered enjoining Mr. Massaro from using, copying, licensing,

transferring, or selling any Iconics copyrighted material; 2. infringement; 3. That Iconics be awarded damages in an amount to be proven at trial, including That judgment be entered on in Iconics favor on its counterclaim of copyright

damages for all work performed by Mr. Massaro on behalf of Volpe; 4. 5. 6. That Iconics be awarded its attorneys fees and costs; That punitive damages be awarded; and Such other relief as this Court orders. JURY DEMAND Iconics demands a trial by jury of all issues so triable.

Dated: August 30, 2011

Respectfully submitted, ICONICS, INC. By its attorney, /s/ R. David Hosp_______ R. David Hosp (BBO# 634091) GOODWIN PROCTER LLP Exchange Place Boston, MA 02109-2881 T: 617.570.1000 F: 617.523.1231 rdhosp@goodwinprocter.com

2JS 44 (Rev. 12/07)

Case 1:11-cv-11526-DPW Document 1-1

Filed CIVIL COVER SHEET 08/30/11 Page 1 of 1

The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)

I. (a) PLAINTIFFS ICONICS, INC. (b) County of Residence of First Listed Plaintiff

DEFENDANTS

SIMONE MASSARO Norfolk County

County of Residence of First Listed Defendant

N/A

(EXCEPT IN U.S. PLAINTIFF CASES)

(IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number)

Attorneys (If Known)

R. David Hosp and Deborah S. Birnbach, Goodwin Procter LLP, Exchange Place, Boston, MA 02109, 617-570-1000 II. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an X in One Box for Plaintiff
u 1
U.S. Government Plaintiff

u 3 Federal Question (U.S. Government Not a Party) u 4 Diversity

(Indicate Citizenship of Parties in Item III)

(For Diversity Cases Only) PTF u 1 Citizen of This State Citizen of Another State

DEF u 1

and One Box for Defendant) PTF DEF Incorporated or Principal Place u 4 u 4 of Business In This State Incorporated and Principal Place of Business In Another State Foreign Nation

u 2

U.S. Government Defendant

u 2 u 3

u u

u 5 u 6

u 5 u 6

Citizen or Subject of a Foreign Country

IV. NATURE OF SUIT

CONTRACT

(Place an X in One Box Only) TORTS PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers Liability 340 Marine 345 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury CIVIL RIGHTS 441 Voting 442 Employment 443 Housing/ Accommodations 444 Welfare 445 Amer. w/Disabilities Employment 446 Amer. w/Disabilities Other 440 Other Civil Rights PERSONAL INJURY u 362 Personal Injury Med. Malpractice u 365 Personal Injury Product Liability u 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY u 370 Other Fraud u 371 Truth in Lending u 380 Other Personal Property Damage u 385 Property Damage Product Liability PRISONER PETITIONS u 510 Motions to Vacate Sentence Habeas Corpus: u 530 General u 535 Death Penalty u 540 Mandamus & Other u 550 Civil Rights u 555 Prison Condition

FORFEITURE/PENALTY

BANKRUPTCY

OTHER STATUTES

u u u u u u u u u u u u u u u u u u

110 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument 150 Recovery of Overpayment & Enforcement of Judgment 151 Medicare Act 152 Recovery of Defaulted Student Loans (Excl. Veterans) 153 Recovery of Overpayment of Veterans Benefits 160 Stockholders Suits 190 Other Contract 195 Contract Product Liability 196 Franchise REAL PROPERTY 210 Land Condemnation 220 Foreclosure 230 Rent Lease & Ejectment 240 Torts to Land 245 Tort Product Liability 290 All Other Real Property

u u u u u u u u u u u u u u u u

u 610 Agriculture u 620 Other Food & Drug u 625 Drug Related Seizure of Property 21 USC 881 u 630 Liquor Laws u 640 R.R. & Truck u 650 Airline Regs. u 660 Occupational Safety/Health u 690 Other LABOR u 710 Fair Labor Standards Act u 720 Labor/Mgmt. Relations u 730 Labor/Mgmt.Reporting & Disclosure Act u 740 Railway Labor Act u 790 Other Labor Litigation u 791 Empl. Ret. Inc. Security Act
IMMIGRATION u 462 Naturalization Application u 463 Habeas Corpus Alien Detainee u 465 Other Immigration Actions

u 422 Appeal 28 USC 158 u 423 Withdrawal 28 USC 157

PROPERTY RIGHTS u 820 Copyrights u 830 Patent u 840 Trademark

u u u u u u u u u u u u u u u u u u u

SOCIAL SECURITY 861 HIA (1395ff) 862 Black Lung (923) 863 DIWC/DIWW (405(g)) 864 SSID Title XVI 865 RSI (405(g)) FEDERAL TAX SUITS u 870 Taxes (U.S. Plaintiff or Defendant) u 871 IRSThird Party 26 USC 7609

u u u u u

400 State Reapportionment 410 Antitrust 430 Banks and Banking 450 Commerce 460 Deportation 470 Racketeer Influenced and Corrupt Organizations 480 Consumer Credit 490 Cable/Sat TV 810 Selective Service 850 Securities/Commodities/ Exchange 875 Customer Challenge 12 USC 3410 890 Other Statutory Actions 891 Agricultural Acts 892 Economic Stabilization Act 893 Environmental Matters 894 Energy Allocation Act 895 Freedom of Information Act 900Appeal of Fee Determination Under Equal Access to Justice 950 Constitutionality of State Statutes

V. ORIGIN

u 1 Original Proceeding

u 2 Removed from
State Court

(Place an X in One Box Only)

Appeal to District Appellate Court

u 3 Remanded from

u 4 Reinstated or u 5 Transferred from u 6 Multidistrict another district Reopened Litigation (specify)

u 7 Judge from Magistrate

Judgment

Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):

VI. CAUSE OF ACTION Brief description of cause:

17 U.S.C. 101 et seq., 28 U.S.C. 2201

Unlawful and Improper use of Iconics' software by Mr. Massaro.

DEMAND $ u CHECK IF THIS IS A CLASS ACTION VII. REQUESTED IN UNDER F.R.C.P. 23 COMPLAINT: VIII. RELATED CASE(S) (See instructions): JUDGE Honorable Douglas P. Woodlock IF ANY
DATE SIGNATURE OF ATTORNEY OF RECORD

CHECK YES only if demanded in complaint: Yes u u No JURY DEMAND: DOCKET NUMBER

1:09-cv-11704

08/30/2011
FOR OFFICE USE ONLY RECEIPT # AMOUNT

/s/ R. David Hosp

APPLYING IFP

JUDGE

MAG. JUDGE

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UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

1. Title of case (name of first party on each side only)

Iconics, Inc. v. Simone Massaro

2. Category in which the case belongs based upon the numbered nature of suit code listed on the civil cover sheet. (See local rule 40.1(a)(1)). I. 410, 441, 470, 535, 830*, 891, 893, 894, 895, R.23, REGARDLESS OF NATURE OF SUIT. 110, 130, 140, 160, 190, 196, 230, 240, 290,320,362, 370, 371, 380, 430, 440, 442-446, 710, 720, 730, 740, 790, 820*, 840*, 850, 870, 871. 120, 150, 151, 152, 153, 195, 210, 220, 245, 310, 315, 330, 340, 345, 350, 355, 360, 365, 368, 385, 400, 422, 423, 450, 460, 462, 463, 465, 480, 490, 510, 530, 540, 550, 555, 610, 620, 625, 630, 640, 650, 660, 690, 791, 810, 861865, 875, 890, 892, 900, 950. *Also complete AO 120 or AO 121. for patent, trademark or copyright cases.

II.

III.

3. Title and number, if any, of related cases. (See local rule 40.1(g)). If more than one prior related case has been filed in this district please indicate the title and number of the first filed case in this court.

Volpe Industries, inc. v. Iconics, Inc. et al., Dmass. Civ. Action No. 1:09-11704-DPW
4. Has a prior action between the same parties and based on the same claim ever been filed in this court? YES

NO


(See 28 USC

5. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest? 2403) YES If so, is the U.S.A. or an officer, agent or employee of the U.S. a party? YES

 

NO

 

NO

6. Is this case required to be heard and determined by a district court of three judges pursuant to title 28 USC 2284? YES

 

NO

 

7. Do all of the parties in this action, excluding governmental agencies of the united states and the Commonwealth of Massachusetts (governmental agencies), residing in Massachusetts reside in the same division? - (See Local Rule 40.1(d)). YES A. NO

If yes, in which division do all of the non-governmental parties reside? Eastern Division




Central Division

 

Western Division

 

B.

If no, in which division do the majority of the plaintiffs or the only parties, excluding governmental agencies, residing in Massachusetts reside? Eastern Division Central Division Western Division

8. If filing a Notice of Removal - are there any motions pending in the state court requiring the attention of this Court? (If yes, submit a separate sheet identifying the motions) YES (PLEASE TYPE OR PRINT) ATTORNEY'S NAME ADDRESS

NO

R. David Hosp, Deborah S. Birnbach (Goodwin Procter LLP)

53 State Street, Exchange Place, Boston, MA 02109 TELEPHONE NO. 617-570-1000

(CategoryForm4-4-11.wpd - 4/4/11)