Your Arduino Packaging Could Sway a Court Case

Our friends over at Adafruit just made an interesting suggestion regarding the Arduino vs. Arduino saga. They noticed that the packaging for the Arduino UNO includes a pamphlet that states:

Manufactured under license
from Arduino by
SMART PROJECTS S.r.l.

Wow. That’s pretty interesting. Smart Projects is the former name of Arduino SRL. If you missed it, go back and read some of our previous coverage. Specifically, Arduino SRL is claiming to be the real trademark holder and has gone as far as forking the Arduino IDE and upping the version number in what appears to be an attempt to direct users toward their newly founded Arduino.org website/ecosystem/quagmire. If they feel they own the trademark why would they include this statement in their packaging?

Finding this in the a unit from a September 2014 is interesting. But Adafruit’s post is a call to action. We share their curiosity of discovering how far back official Arduino hardware has included such license notices. So, head on down to your work bench… start peeling back years worth of discarded hacks, clipped leads, fried servos, and other detritus. Find the packaging and take a picture. Bonus points if you have an invoice that associates a date with it. Either way, post the pictures on your social media hub of choice with #TeamArduinoCC. You can also embed it in the comments using HTML IMG tags if you wish.

Standard “I am not a lawyer” disclaimer applies here. We know you aren’t either so let’s all share what we think this means to pending lawsuits in the comments. Does this matter and why?

Arduino Vs. Arduino: The Reseller’s Conundrum

Over the last few months, the internal struggles between the various founders of Arduino have come to a head. This began last November when Arduino SRL (the Italian version of an LLC) sued Arduino LLC for trademark infringement in Massachusetts District court. To assuage the hearts and minds of the maker community, Arduino SRL said they were the real Arduino by virtue of being the first ones to manufacture Arduino boards. A fork of the Arduino IDE by Arduino SRL – simply an update to the version number – was a ploy to further cement their position as the true developers of Arduino.

This is a mess, but not just for two organizations fighting over a trademark. If you’re selling Arduinos in your web store, which Arduino do you side with?

[Nate] from Sparkfun is answering that question with a non-answer.

Currently, Arduino SRL is the only source of Arduino Unos. Sparkfun will continue to buy Unos from SRL, but they’re not necessarily siding with Arduino SRL; people demand blue Arduinos with Italy silkscreened on the board, and Sparkfun is more than happy to supply these.

There are, however, questions about the future of Arduino hardware. The Arduino software stack will surely be around in a year, but anyone that will be purchasing thousands of little blue boards over the next year is understandably nervous.

redboardThis isn’t the first time Sparkfun has faced a challenge in Arduino supply. In 2012, when the Arduino Uno R3 was released, all the documentation for their very popular Inventor’s Kit was obsoleted overnight. In response to these supply chain problems, Sparkfun created the RedBoard.

Sparkfun has always offered to pay royalties on the RedBoard to Arduino LLC, just as they do with the Arduino Pro and Pro Mini. Effectively, Sparkfun is on the fence, with offers to manufacture the Arduino Zero, Uno, Mega, and Due coming from the LLC.

The reason for this is consumers. If someone wants an Arduino SRL-manufactured board, they’ll buy it. If, however, a customer wants to support Arduino LLC, that option is on the table as well.

It’s not a pretty position to be in, but it does show how someone can support one Arduino over another. In a year or two, there will only be one Arduino, but until then, if you have a preference, at least Sparkfun is giving you a choice.

Credit to Sparkfun for the great Spy vs. Spy image. Why don’t you sell googly eyes?

Arduino SRL to Distributors: “We’re the REAL Arduino”

Arduino SRL (formerly known as Smart Projects SRL) sent out a letter to its distribution partners yesterday. If you’ve been following along with the Arduino vs Arduino story (we’ve previously published two installments), the content isn’t entirely surprising; it’s essentially a tactical move to reassure their distribution channels that Arduino SRL is the “One True Arduino”. That said, there’s still some new tidbits buried inside. You can skip down to read the full text below, but here’s our take.

The Business History of Arduino

arduino_vs_arduino_tnA quick summary of the legal situation. Arduino LLC was formed in April 2008 by the original five founders to provide a corporate entity behind the Arduino project. Smart Projects SRL, controlled by one of the founders, was tasked with the actual production of the boards. It turns out that Smart Projects had trademarked the Arduino brand in Italy in December 2008, before Arduino LLC got around to filing in April 2009 in the USA. But everyone was friends, right? As long as the licensing fees keep flowing.

Fast-forward to September 2014, when Arduino LLC filed a lawsuit in Italy against Smart Projects claiming that they had infringed LLC’s trademark and that they had recently stopped paying licensing fees on their use of the Arduino name. In October, Smart Projects filed with the USPTO to revoke Arduino LLC’s trademark. In late 2014, Smart Projects changed its company name to Arduino SRL (a “Società a responsabilità limitata” is one form of Italian limited-liability company) and hired a new CEO, [Federico Musto].  Around the same time, Arduino SRL opened up the website arduino.org (different from long-existing arduino.cc) but with nearly identical style. In January 2015, Arduino LLC filed a lawsuit in the US, claiming their right on the Arduino name.

The Gist of it

In short, Arduino LLC has been working on developing the Arduino platform, software, and community while Smart Projects / Arduino SRL was the major official producer of the hardware for most boards. Both are claiming to “be” Arduino, and going after each other in court. So it’s not strange that Arduino SRL would like to try to keep its hold on the distribution channels. Which brings us to their letter to distributors.

March 27 Letter

Arduino-Distributor-Update-0A good portion of the letter reads to be a very carefully worded defense of why Arduino SRL is the true Arduino:

“Arduino Srl (aka Smart Projects Srl), as you know has been from the  beginning of the Arduino® project, the place where the ideas were turned into reality and into a business.”

This is of course strictly true — Smart Projects was certainly the largest manufacturer of Arduino boards. But it sidesteps the issue at hand in the trademark suits: whether they were simply a licensed producer of the boards or whether they’re “Arduino”.

Similarly, in the questions section of the letter, they ask if there are actually two “Arduino” product manufacturers, and answer “not really”. Of course, that’s true. Arduino LLC doesn’t manufacture boards, but exists to license their trademark out to fund development.

The only real news in the letter is that Arduino SRL is replacing its old distribution and logistics company, Magyc Now, with a new one named CC Logistics. Both Magyc and CC Logistics are named as defendants in the US lawsuit filed by Arduino LLC, so it’s unlikely that this change is due to legal fallout.

What this Means

In conclusion, Arduino SRL’s letter to its distributors seems to essentially follow the line of reasoning in their trademark lawsuit in the US against Arduino LLC: since Arduino SRL is doing the manufacturing and using the Arduino name, they’re the true Arduino. Whether or not this will stand up in court, or whether Arduino LLC can make its case that SRL was simply a licensed manufacturer, remains to be seen.

We’ve embedded the contents of the letter after the break. You can also download the original PDF.

Continue reading “Arduino SRL to Distributors: “We’re the REAL Arduino””

Arduino v Arduino: Part II

Since our last article covering the Arduino v. Arduino case, we’ve received a couple of tips, done some more digging, and learned a lot more about what’s going on. We thought it was time to share the story with you as it develops.

The Players

In short, there are two companies calling themselves “Arduino” at the moment. One, Arduino LLC was founded by [Massimo Banzi], [David Cuartielles], [David Mellis], [Tom Igoe] and [Gianluca Martino] in 2009, runs the website arduino.cc, and has been directing and releasing the code that makes it all work. Most of these folks had been working together on what would become the Arduino project since as early as 2005.

The other “Arduino” used to be called Smart Projects and was the manufacturing arm of the project founded and run by [Gianluca Martino]. Smart Projects changed their name to Arduino SRL in November 2014. (A “Società a responsabilità limitata” is one form of Italian limited-liability company.) They have been a major producer of Arduino boards from the very beginning and recently registered the domain arduino.org.

Around the time of the name change [Martino] sold his shares to a Swiss firm Gheo SA and [Federico Musto] was appointed CEO. Gheo SA is owned and directed by [Musto], who also runs a design consultancy based in the US and Taiwan called dog hunter, LLC.

dog hunter and [Musto] helped develop the Arduino Yun, a mashup of an Arduino with an OpenWRT-compatible WiFi router. dog hunter also runs the Linino.org website to support the Linux distribution that’s running on the router part of the Yun.

In short, on one side is Arduino LLC, run by the original Arduino Five and hosting arduino.cc. On the other is now called Arduino SRL, run by a former co-developer [Federico Musto] who bought out the largest producer of Arduino boards and opened up arduino.org.

Continue reading “Arduino v Arduino: Part II”

Arduino v. Arduino

Arduino LLC is suing Arduino Srl (the Italian version of an LLC). Sounds confusing? It gets juicier. What follows is a summary of the situation as we learned it from this article at MakeMagazin.de (google translatrix)

Arduino LLC is the company founded by [Massimo Banzi], [David Cuartielles], [David Mellis], [Tom Igoe] and [Gianluca Martino] in 2009 and is the owner of the Arduino trademark and gave us the designs, software, and community support that’s gotten the Arduino where it is. The boards were manufactured by a spinoff company, Smart Projects Srl, founded by the same [Gianluca Martino]. So far, so good.

Things got ugly in November when [Martino] and new CEO [Federico Musto] renamed Smart Projects to Arduino Srl and registered arduino.org (which is arguably a better domain name than the old arduino.cc). Whether or not this is a trademark infringement is waiting to be heard in the Massachussetts District Court.

According to this Italian Wired article, the cause of the split is that [Banzi] and the other three wanted to internationalize the brand and license production to other firms freely, while [Martino] and [Musto] at the company formerly known as Smart Projects want to list on the stock market and keep all production strictly in the Italian factory.

Naturally, a lot of the original Arduino’s Open Source Hardware credentials and ethos are hanging in the balance, not to mention its supply chain and dealer relationships. However the trademark suit comes out, we’re guessing it’s only going to be the first in a series of struggles. Get ready for the Arduino wars.

We’re not sure if this schism is at all related to the not-quite-open-source hardware design of the Yun, but it’s surely the case that the company is / the companies are going through some growing pains right now.

Thanks [Philip Steffan] for the pointer to the MakeMagazin.DE article. (And for writing it.)

Fluke Issues Statement Regarding Sparkfun’s Impounded Multimeters

fluke-reponds-to-sparkfun-dmm-impounding

Fluke just issued a response to the impounding of multimeters headed for market in the United States. Yesterday SparkFun posted their story about US Customs officials seizing a shipment of 2000 multimeters because of trademark issues. The gist of the response is that this situation sucks and they want to do what they can to lessen the pain for those involved. Fluke is providing SparkFun with a shipment of genuine Fluke DMMs which they can sell to recoup their losses, or to donate. Of course SparkFun is planning to donate the meters to the maker community.

Anyone with a clue will have already noticed the problem with this solution. The impounded shipment of 2k meters will still be destroyed… eh. The waste is visceral. But good for Fluke for trying to do something positive.

Before we sign off let’s touch on the trademark issue for just a moment. We can’t really blame Fluke too much for this. The legal crux of the matter is you either defend your trademark in every case, or you don’t defend it at all. In this case it was the border agents defending the filing, but for ease of understanding we’ll not go into that. On the other hand, speaking in general business terms, the way things are set up it is advantageous to acquire a trademark specification that is as broad as possible because it helps to discourage competitors from coming to market. So trademark is good when it keep hucksters from trying to rip off consumers. But it is bad if applied too broadly as a way of defending a company’s market share.

Where does Fluke come down in all of this? Who knows. There is literally no right answer and that’s why the discussion around yesterday’s post was full of emphatic arguments. A Fluke meter is a cream-of-the-crop device and they have the right (and obligation) to ensure that reputation is not sullied. SparkFun serves a market that probably can’t afford a Fluke at this time but may some day in the future. And this is the reason we can feel okay about this outcome.

[via Twitter]

Multimeters Without A Country: Fluke’s Broad Trademark Bans Yellow Multimeter Imports

Check out this SparkFun Digital Multimeter. Does it make your blood boil to see them ripping off Fluke by using the color yellow? From SparkFun’s side of the story that’s exactly what’s happened here. They have a shipment of 2000 of these things stuck in customs. The trademark being infringed upon can be found in their article. Fluke owns the trademark on multimeters with a dark face and yellow border. Great. This seems like a wonderful idea, right up there with Apple owning tablets that are shaped like a piece of paper.

Okay, so if you’re not crying big fat tears for Fluke being taken advantage of in this way let’s talk about more immediate issues than fixing trademark, patent, copyright, and all of the other screw-the-little-guy type of laws (not that SparkFun is necessarily the little guy but you know what we mean). The DMMs sitting in a warehouse are costing SparkFun $150 per day. We believe they have no option of choosing a warehouse with a lower cost as we must be talking a pallet or two, right? The only two options they do have are shipping them back to China where they were manufactured, or having them destroyed. The former will cost more in re-import tariffs than the cost of the product, and the latter comes with a $150/hour disposal fee and no metric on which to judge how long it would actually take. We hate seeing this kind of waste, but sure enough 2000 DMMs are headed for the shredder in a couple of days.

We know you already have your flaming sword in hand, but simmer down for just a second. Fluke makes great products, ask anyone. And companies the world over defend their trademarks. Hopefully there will soon be a positive response from Fluke on this one. If you would like to politely encourage them to do the right thing we found Fluke’s Facebook page URL in the SparkFun comments thread. Both are worth browsing.

[Thanks Chris via Reddit]