The Form of Production Battle of the Bulge: Scanned PDF’s Not a Reasonably Useable Form

“In the court’s experience, scanned PDFs, as opposed to electronically-produced PDFs, are not reasonably usable.”

Magistrate Judge Paul M. Warner

In Accessdata Corp. v. Alste Techs. Gmbh, 2010 U.S. Dist. LEXIS 4566 (D. Utah Jan. 21, 2010), a United States based company that produces forensic software used in e-Discovery, entered into a contract with a German company.  Litigation ensued when a contract dispute broke out and e-Discovery turned into a war. 

The Form of Production Einwand und Angriff

The German Defendants produced electronically stored information as hard copies and converted the scanned images to PDF’s.  The Plaintiffs claimed the production was not reasonably searchable.  Accessdata Corp. at *16.

The Defendants claimed the production was in a “reasonably useable form,” because they printed all the ESI as paper and had it scanned as PDF’s.  Accessdata Corp. at *17.  Adding insult to injury, the Defendant further claimed it would be unduly burdensome and expensive to somehow “fix” the ESI so it was searchable.  Id.

The Plaintiff, perhaps feeling a little like General Patton, cited Federal Rule of Civil Procedure Rule rule 34(b)(2)(E)(ii), which states that electronically stored information should be produced “in a form or forms in which [they are] ordinarily maintained or in a reasonably useable form.” Accessdata Corp. at *17.

e-Discovery Untergang

The Court channeled General Eisenhower in its ruling. 

The Court ruled the Defendant was required to produce its electronically stored information “…in a form or forms in which it is ordinarily maintained or in a reasonably usable form.” Accessdata Corp. at *18. citing Fed. R. Civ. P. 34(b)(2)(E)(ii).

The Court stated the previously produced electronically stored information was ordinarily maintained in an electronic format.  Accessdata Corp. at *18.  Converting ESI to paper and then scanning to PDF’s destroys searchable features of the inherently searchable electronically stored information. 

The Court noted that the option to produce in a “reasonably useable form” does not give a party free rein to destroy the searchable functions of the e-Discovery.  Accessdata Corp. at *18.   If ESI is ordinarily maintained in a searchable form, the information “should not be produced in a form that removes or significantly degrades this feature.” Accessdata Corp. at *18, citing Fed. R. Civ. P. 34(b) Advisory Comm. Notes to 2006 Amendment.

As the Court concluded, “In the court’s experience, scanned PDFs, as opposed to electronically-produced PDFs, are not reasonably usable.” Accessdata Corp. at *18-19.

The Defendant was thusly ordered to re-produce electronically stored information in native file format or an electronically-generated PDF format.  Accessdata Corp. at *19.

Bow Tie Thoughts

Producing electronically stored information as scanned paper in PDF format is about as defensible as the Maginot Line (especially when your opponent makes electronic evidence software).  Parties are ill-served by playing such discovery games, unless they want to be on the losing end of a motion to compel that reads like the Treaty of Versailles.

Tweeting Contempt: Trademark Infringement on Twitter

The Plaintiff, an established 15-year-old moving company, brought a lawsuit against the Defendant for trademark violations, libel, and other unfair competition causes of action.  Tdc Int’l Corp. v. Burnham, 2010 U.S. Dist. LEXIS 4646 ( E.D. Mich. Jan. 21, 2010).

A settlement agreement was entered (after a default) requiring the Defendant to cease using the Plaintiff’s mark, including one of the Defendant’s domain names and other restrictions.  Id.

The Defendant was also required to donate money to a junior sailing program.  The settlement was codified as a court order.  Id.

None of that happened according to the agreement and order.  The Plaintiff brought a motion enforce judgment and an order to show cause for contempt. 

The Court found that the “most troubling” evidence of the Defendant’s contempt was the Defendant’s EXACT usage of the Plaintiff’s trademark on Twitter.  Tdc Int’l Corp., at *7. 

The Court’s findings included evidence from the Twitter profile, with the Plaintiff’s mark, that listed the Defendant’s domain name. Tdc Int’l Corp., at *7-8. 

The Court additionally relied on evidence from the Defendant’s Yelp.com and Squidoo.com profiles in establishing the Defendant’s contemptuous conduct.  Tdc Int’l Corp., at *7.

The evidence of contempt even included online testimonials on the Defendant’s services, including one posting made the day before the Plaintiff filed their motion.  Tdc Int’l Corp., at *8.

The Court ReTweeted the Plaintiff’s view of contempt and ordered the Defendant to appear in person to explain why he should not be held in contempt for violating the Settlement Agreement and Consent Judgment.  Tdc Int’l Corp., at *9. 

Bow Tie Thoughts

This case highlights the ease with which someone can engage in Trademark infringement on Twitter.  More importantly, it illustrates how savvy Courts are becoming with social media litigation.