When “Undue Burden” Includes Back-Up Tapes from the Reagan Era

1987 was an important year: 

Baby Jessica was saved from a well;

Robert Bork was denied a seat on the Supreme Court; and

Teenagers across the world played air guitar to Whitesnake’s immortal “Here I Go Again.”  

It is also the year the Plaintiffs wanted to restore back-up tapes from in Makrakis v. Demelis.

The Plaintiff in Makrakis v. Demelis claimed he was improperly administered a drug in 2006, which caused him to develop kernicterus.  Makrakis v. Demelis, 2010 Mass. Super. LEXIS 223 (Mass. Super. Ct. July 13, 2010).

The Plaintiff brought a motion to compel back-up tapes from 13 hospital employees from 1987 to present.  Makrakis, at *1-2.  Moreover, the Plaintiff wanted the Defendants to hire a third-party vendor to search the back-up tapes with keywords.

The Defendants argued that restoring the back-up tapes would be unduly burdensome and cost prohibitive.  Makrakis, at *2.  Moreover, the Defendants had already obtained a large amount of discovery, including the following:

Hospital records of its investigation of the incident;

Plaintiff’s complete medical records from his five-month admission;

Deposition testimony of at least ten hospital employees; and

Copies of emails from the date of the incident that were preserved on the individual computers of several hospital employees. 

Makrakis, at *2-3. 

The Defendants also explained the cost of restoring the back-up tapes would be $550 per tape.  Makrakis, at *5.  The cost to restore back-up tapes for 16 months from 15 custodians would cost $575,000.  Moreover, the cost to restore back-up tapes going back to 1987 (approximately 264 months) would be “exponentially more expensive and time consuming.” Makrakis, at *5-6. 

The Court found the Plaintiff’s request to be unduly burdensome, because it was over a 22 year period of time.  Makrakis, at *6. 

The Court did strike a balance and allowed sampling of back-up tapes at the Plaintiff’s own expense.  Makrakis, at *6-7.  The Court specifically ordered the following: 

(1) The plaintiffs shall be entitled to obtain a sampling of relevant emails stored on the hospital’s backup tapes;

(2)  The plaintiffs shall determine the scope of the sampling by specifying (1) the applicable period of time, and (2) which email account or accounts must be restored;

(3) The plaintiffs shall bear the cost of restoring and searching the emails in this initial sample of backup tapes;

(4) The hospital shall restore the sampling of backup tapes as requested by the plaintiffs and shall produce all emails contained therein that are responsive to the plaintiffs’ discovery requests;

(5) Based on the information obtained from this sample, the plaintiffs may move for a further discovery order to compel further production of emails stored on backup tapes.

Makrakis, at *7-8. 

Bow Tie Thoughts

I think it is important to note that the cost of restoring the back-up tapes was only $550 a tape, which is actually a very reasonable number compared to 6 years ago in Toshiba America Electronics Components v. Superior Court, 124 Cal. App. 4th 762, 764 (Cal. App. 6th Dist. 2004). 

While restoring back-up tapes was considered “not reasonably accessible” because of cost several years ago, it is not necessarily the situation today.  Technology has improved to allow the indexing of back-up tapes at a fraction of the cost in the mid-2000’s (and sometimes lower than the amount cited in this opinion). 

However, when you factor in a request going back 22 years, the back-up tapes might as well contain data from the Apollo program.  One can imagine how many different generations of technology would be involved when the top personal computers in 1987 were running Windows 2.0 and the newest feature was the PS/2, the 6 pin port for a Mouse.

Bow Tie Law 200: ILTA 2010 Recap

My 200^th posting is a recap of ILTA 2010. 

The 2010 ILTA Conference was a great success.  The conference had excellent content, an active exhibit hall and many networking opportunities. 

The Exhibit Hall

I spent most of the show in the exhibit hall.  The vendors all provided interesting updates on their services and products.  I think the following will be the most useful to attorneys:

                Lexis Nexus product integration with Microsoft Office:  The integration of Lexis’ legal research search tools and Office should expedite workflow in creating legal memoranda. 

                Big Hand Digital Dictation:   “Big Hand” is maximizing traditional diction with mobile apps.  Differently something worth checking out if you need to dictate a memo and email it directly to your assistant on the go.

                Nextpoint:  There are several cloud preservation tools entering the market.  Nextpoint offers a tool to crawl your client’s online presence from their websites to social media for archiving. 

Head in the Clouds

I attended one session on Corporate Information in the Cloud.  The highly talented panel included Cynthia Bateman, KPMG, Vincent Catanzaro, William Kellermann, Wilson Sonsini Goodrich & Rosati, and Daryl Teshima. 

The panel focused on how organizations are losing control over information creation, such as employees creating a Google Doc for project collaboration outside of the corporate firewall.   Other challenges include the legal risk of storing information in the Cloud verse the IT benefit of outsourcing.  

D4 & AccessData Group

D4 and the AccessData Group hosted a bowling party at the Palms.  The event was extremely well attended.  I am proud to say our team took home second place. 

Podcast

I had the privilege of being interviewed by Christy Burke for a Legal IT Professionals podcast . 

Bow Tie Thoughts

I enjoyed ILTA for all the networking, content and seeing what is new in the market.  I congratulate the organizers on another very successful year. 

Mike McBride on Social Networking

I had the pleasure of discussing social networking with Mike McBride at ILTA 2010.

Click here to listen to our discussion on the benefits and e-Discovery concerns of social networking.

Double Secret e-Discovery Probation

The parties dedicate nearly all of their briefs discussing and alleging who is to blame for the break-down in the discovery process in this case. Noticeably absent, however, is any meaningful discussion about the specific discovery requests at issue and the sufficiency of any responses or objections provided. Intending no disrespect of counsel, the undersigned submits that the record presented here is the litigation equivalent of the cafeteria food fight scene in the infamous movie Animal House.

James P. O’Hara, United States Magistrate Judge

No attorney war room should have a partner walk in and scream “Food fight!” 

Judges loath scrubbing the figurative e-discovery mashed potatoes off the walls.  However, this case sounded more like the job entailed cleaning peanut butter out of shag carpet, with the judicial rage to match.

Accounting Principals, Inc. v. Solomon Edwards Group, LLC, is about the alleged misappropriation of supposedly proprietary business information. 

The heart of the discovery dispute involved a motion to compel the Defendants “to fully, completely, and without objection identify and produce all documents and things in its possession, custody, or control responsive to” four separate requests for electronically stored information.  Accounting Principals, Inc. v. Solomon Edwards Group, LLC, 2010 U.S. Dist. LEXIS 82071, at *3-4 (D. Kan. Aug. 12, 2010).

The Court noted that nearly all the briefing amounted to nothing but finger-pointing.  However, the parties did highlight several issues that needed resolution, if only they had been addressed in a specific and practical manner for the Court:

The supposedly disproportionate costs associated with retrieving ESI from defendants’ computers;

Who should bear those costs given the supposedly very limited amount in controversy; and

The potential trial-related consequences of any failure to preserve evidence as previously ordered.

Accounting Principals, Inc., at *5. 

The Court denied the motion to compel, because the Plaintiffs failed to state what was in dispute.   Accounting Principals, Inc., at *5.

However, the Court had issues to address and did not have the information to make any resolution of the issues presented.  As such, the Court ordered a Case Management Conference that would be attended by the “first chair” attorneys, their client’s chief executive officers and the persons most knowledgeable regarding their ESI.  Accounting Principals, Inc., at *5.

Bow Tie Thoughts

The quickest way to be on double secret probation is to present jumbled arguments that do not allow a court to make any resolution of a dispute.  Moreover, yelling “ramming speed” as you file finger-pointing motions is not problem solving.

e-Discovery requires attorneys to understand their client’s electronically stored information.  Since most lawyers are not computer experts, e-Discovery consultants should be retained to assist with translating IT language to English.

I also am pretty sure a Gen X judge will one day reference Old School in an opinion when this happens again.

A Discovery Jewel: Keeping Requests in Focus

 R.F.M.A.S., Inc. v. So is the story of a copyright infringement and trade dress suit over jewelry designs.  The extensive opinion covers everything from spoliation to discovery requests. A small section of the opinion addresses requesting the metadata of photos. R.F.M.A.S., Inc. v. So, 2010 U.S. Dist. LEXIS 83247 (S.D.N.Y. Aug. 10, 2010).

Like any good photographer, a lawyer must keep their subject in frame when drafting their discovery requests. 

To barrow from photography parlance, the Plaintiff’s discovery requests were blurry and out of focus. 

In one request, the Plaintiff effectively wanted the Defendants to re-organize discovery they had already produced, so that the sales data would be matched to photos of the jewelry.  The Court barred any such reorganization as outside the producing party’s Rule 34 obligations.  R.F.M.A.S., Inc., at *105.

The Plaintiffs also requested system metadata, which is “– information about the way a computer file is stored, as opposed to the substance of the file.” At *106, FN 111. 

The Court relied heavily on Aguilar v ICE, 255 F.R.D. 350 (S.D.N.Y.2008) in summarizing how to request metadata. 

Federal Rule of Civil Procedure Rule 34(b)(1)(C) allows the requesting party to control their form of production and specify metadata for production.  R.F.M.A.S., Inc., at *106, citing Aguilar, 255 F.R.D. at 355.

If no form of production is stated, a the producing party “must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms” and “need not produce the same electronically stored information in more than one form”. R.F.M.A.S., Inc., at *106-7, citing Federal Rule of Civil Procedure Rule 34 (b) (2) (E) (ii)-(iii).

However, when it comes to metadata:

“[I]f a party wants metadata, it should ‘Ask for it. Up front. Otherwise, if [the party] ask[s] too late or ha[s] already received the document in another form, [it] may be out of luck.’”

          R.F.M.A.S., Inc., at *107, citing Aguilar, 255 F.R.D. at 355 (citations omitted).  

The Court held that even if the requested photos were responsive, the Defendants were under no obligation to produce the metadata related to the photos.  R.F.M.A.S., Inc., at *107.

Bow Tie Thoughts

Attorneys need to keep the big picture in focus and consider what metadata they should include in their request for production. 

Without metadata, a litigation support review system is nothing but an empty database. 

Metadata is free coding to populate that database.

Requests for “all metadata” will end in overbroad objections.  Moreover, unless system metadata is the smoking gun in the lawsuit, attorneys will probably request substantive or embedded metadata. 

Substantive metadata, also known as application metadata, is “created as a function of the application software used to create the document or file” and reflects substantive changes made by the user.

Embedded metadata consists of “text, numbers, content, data, or other information  that is directly or indirectly inputted into a [n]ative [f]ile by a user and which is not typically visible to the user viewing the output display” of the native file.

Aguilar v. Immigration & Customs Enforcement Div., 255 F.R.D. 350, 354-355 (S.D.N.Y. 2008)

However, most discovery requests will not dive into the different kinds of metadata.  The most common requests will state the different fields of metadata to populate your litigation support database, such as “To,” “Date Sent,” “Subject” and other relevant information for review.

When HR Pros Go Bad: Spoliation & Personal Identifiable Information

A HR professional emailed to his home computer the personnel files of 68 employees when he feared layoffs were coming. 

That is only the beginning of a really ugly fact pattern.

The data included past and current employee names, social security numbers, date of births, compensation, and addresses.  The former employer (now the Plaintiff) sued the HR professional (now the Defendant) for “conversion, breach of contract, breach of the duty of loyalty, and sought injunctive relief.”   1-800-East W. Mortg. Co. v. Bournazian, 2010 Mass. Super. LEXIS 158 (Mass. Super. Ct. July 18, 2010)

A temporary restraining order was entered against the Defendant, preventing him from “deleting, altering, erasing or otherwise tampering with any information on any computer, hard drive, thumb drive, flash drive, or other electronic data storage device owned by [the Defendant or his wife] or resident on any web-based account or data storage service until further order of this Court.”  1-800-East W. Mortg. Co. at *2.

Two days after being served with the TRO, he downloaded an evidence erasing program and wiped a large amount of the data.  1-800-East W. Mortg. Co. at *2.

Eleven days after the TRO, the Court permanently enjoined the Defendant from:

Deleting, altering, erasing or otherwise tampering with any information on any computer, hard drive, thumb drive, flash drive, or other electronic data storage to which they have access until such time as a forensic expert hired by East West Mortgage may make a bit map copy of the data on these devices and/or accounts.

1-800-East W. Mortg. Co. at *2.

Ironically on the anniversary of the Watergate break-in, the Defendants were to provide to the Plaintiff’s expert, “each and every computer hard drive, thumb drive, flash drive or other electronic data storage device owned by them for the purpose of creating a bit map copy of said electronic media and for analysis of the contents thereof consistent with the protocol for the acquisition of electronically stored information.” 1-800-East W. Mortg. Co. at *2-3.

Destruction of Evidence

Following the lead of Nixon and Lewinsky, the Defendant tried deleting everything with the data destruction software Ccleaner and destroyed his external hard drive with a “mini-sledge hammer.”  1-800-East W. Mortg. Co. at *3-4.

The Defendant’s destruction of evidence took place on the day the injunction was entered against him.  1-800-East W. Mortg. Co. at *3.

The Defendant tried explaining his actions with 5 different stories, which the Court found to be highly un-credible.  1-800-East W. Mortg. Co. at *5.

The stories ranged from his work computer was crashing to he wanted to make a template to the hard drive fell in the bath tub.  1-800-East W. Mortg. Co. at *5.

Wrath of Court

The Court did not take kindly to the willful violations of the court orders.  1-800-East W. Mortg. Co. at *6-7. 

The Defendant was sanctioned with the following order: 

1. Damages including fees for a credit monitoring service of the 68 employees in the amount of $4,549.30;
2. Damages including the cost of the forensic expert in the amount of $10,549.50;
3. Attorneys fees to be proven; 

 

Permanent injunction from distributing, sharing, divulging, displaying, disseminating or otherwise distributing any confidential information from the Plaintiff.

1-800-East W. Mortg. Co. at *8-9. 

Bow Tie Thoughts

The willful violation of the court orders and destruction of evidence makes case law that sounds like Book of Revelations.  Throw in the theft of personal identifiable information and a judge will act like one of the Four Horsemen of Apocalypse. 

The protection of personal identifiable information and the transitory nature of electronically stored information will be heavily litigation in the years to come.  It is a matter of time before such information is foolishly hosted in the “Cloud” that results in an ugly data breach.

Circular Form of Production Objections

In a form of production battle, the producing party claimed they were denied the opportunity to object to the form of production, because the requesting party did not state a form of production.  The Court did not need to use Pi to solve this circular argument.

Procedural Circles

After a motion to compel battle, the Defendants were ordered to produce their general ledger in electronic format within 10 days of the Court’s order. Estate of Eva Boles v. Nat’l Heritage Realty, Inc., 2010 U.S. Dist. LEXIS 79770, at *7 (N.D. Miss. Aug. 6, 2010).

The Defendants were to also file with the Court an itemized cost breakdown on their production costs.  Id.

The Defendants argued they should be allowed to produce their ledger in PAPER format within 4 to 6 weeks of the Court order.  Estate of Eva Boles, at *7.

The Defendants first estimated their production costs to be $30,000.  They upped the ante and requested the Plaintiffs deposit $292,296.07 with the Court for their production costs.  Estate of Eva Boles, at *8.

The Court said “No” to the paper production and the $292,296.07 deposit.

After several hearings on numerous issues, the Defendants finally produced the general ledgers…sort of.

The Defendants explained in their production letter that the ESI produced was encrypted and subject to the following limitations:

1) Could only be viewed on a single computer;

2) Could not be printed;

3) Could not be e-mailed; and

4) Would only be accessible until September 3, 2010.

Estate of Eva Boles, at *12.

The Defendants also would be notified once the license to view had been activated.  Estate of Eva Boles, at *12.

The Court in turn ordered the Defendants to produce unrestricted ESI.  The Defendants filed an emergency motion for reconsideration.  Estate of Eva Boles, at *12-13.

Federal Rule of Civil Procedure Rule 34 Redo

The Defendants’ key argument was that they were “denied” the “procedural protections” of Federal Rule of Civil Procedure Rule 34.

To recap Federal Rule of Civil Procedure Rule 34:

A party can request, “any designated documents or electronically stored information . . . stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form.” Estate of Eva Boles, at *16, citing Federal Rule of Civil Procedure Rule 34(a)(1)(A).

A party “may specify the form or forms in which electronically stored information is to be produced.” Estate of Eva Boles, at *16-17, citing Federal Rule of Civil Procedure Rule 34(b)(1)(C).

The producing party may object to the form of production and state which form they intend to use. Estate of Eva Boles, at *17, citing Federal Rule of Civil Procedure Rule 34(b)(2)(D).

Federal Rule of Civil Procedure Rule 34(b)(2)(E) states:

 (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;

(ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and

(iii) A party need not produce the same electronically stored information  in more than one form.

The Defendants’ argument can be summarized as circular:  They claimed did not object to the form of production, because the Plaintiffs did not state a form of production, therefore, they were denied the opportunity to object to the form of production.  Estate of Eva Boles, at *18.

The Defendants did not raise any objections on the form of production until their third hearing on producing the general ledgers, which was 6 months after the request was first served and three months before trial.  Estate of Eva Boles, at *19-20.

The general rule on objections is if you fail to timely object to a discovery request, you waive your objection.  Estate of Eva Boles, at *20.

That is exactly what the Court held.

The Court further took the Defendants to task for their production failures under Federal Rule of Civil Procedure Rule 34(b)(2)(E)(ii), which states that when no form of production is stated, the ESI must be produced in “a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.” Estate of Eva Boles, at *22.

Even if there had not been a waiver of their objections, the Defendants still did not comply with Rule 34(b)(2)(E)(ii).

Bow Tie Thoughts

Discovery can turn into a war of attrition:  Drive up the cost to force the other side to give up.

The Defendants’ attempt to force a $292,296.07 paper production is exactly one of those tactics, whether intentionally or not.  The repeated motion practice also would drive up the cost of litigation.

e-Discovery does not mean production costs are perfunctory expensive.  However, protracted form of production battles that go on for months will drive up costs; form of production arguments sprung on a court in the waning months before trial will unnecessarily drive up costs, let alone tick off the judge.

It Takes the Cake: e-Discovery & Social Networking in Trademark Litigation

In a reverse confusion trademark infringement case, the Plaintiff made software named CakeBoss. 

The Plaintiff had a website with the same name and registered their trademark. Masters Software, Inc. v. Discovery Communs., Inc., 2010 U.S. Dist. LEXIS 79584, at *1-3 (W.D. Wash. July 16, 2010).

Tasting the Difference

The Discovery Channel cooked up a television show also named Cake Boss, which first aired long after CakeBoss had been out of the oven.   

Despite the Plaintiff’s emails and a phone call requesting a name change before the show premiered, Cake Boss aired with a very similar name to CakeBoss.

Bain Marie Trademark Confusion  

This was a case of “reverse confusion.”  This is a situation where the junior mark is stronger than the senior mark.  Masters Software, Inc. at *10. This is not much of a surprise, since the senior mark belonged to a small company verse a cable TV show with marketing merchandise.

Confusion Sachertorte 

The Court mixed and baked all the evidence of actual confusion the senior mark suffered. 

The Court’s analysis included a three layer cake with misdirected emails from the Defendant’s fans. 

The email messages showed visitors to the website assumed it was related to the TV show.  Questions were addressed to the TV show; inquires for custom cakes from the TV show star; and one email stating concern with the bakers on the show not wearing gloves, washing their hands or wearing hats.  Masters Software, Inc. at *15-16.   

Swirling the Pan with Facebook

The evidence also included the Plaintiff’s Facebook page which had “fans” who thought both the Plaintiff and Defendant were related.  Masters Software, Inc. at *7.

Injunction Parfait

The Court ordered a surgical preliminary injunction against the Defendants.   

The injunction required the Defendants, pending trial, to cease using the name “Cake Boss” on the TV show and on related merchandise.  Masters Software, Inc. at *37-38. 

The Defendants were allowed to sell any pre-existing DVD’s and other merchandise.  Masters Software, Inc. at *38. 

The show was in its third season and a name change was not required until the fourth season or on future re-runs.  Masters Software, Inc. at *38. 

Bow Tie Thoughts 

e-Discovery service providers have email collection down from computers.  Things can get complicated with webmail, but the collection technology is proven on email.

What do you do with Facebook evidence?  How did the Plaintiff in this case capture “fan” evidence to show confusion?

The simplest way to preserve such evidence would be to print the Facebook page.  The next step up would include printing the website as a PDF or screen captures.  Special web-capture software can also be deployed to preserve the ESI if the situation warrants it.

People live their lives connected to SmartPhones and data in the “cloud.”  Attorneys need to consider how to collect this electronically stored information when there is litigation.  However, the answer might be as simple as “Print to PDF” in some cases.

Authenticating Cell Phone Records

In a negligence case where a plaintiff was the victim of a car crash, the Defendant trucking company attempted to introduce out-of-time third-party custodian affidavits and witnesses on the last day of discovery.  Boling v. Mohawk Indus., 2010 U.S. Dist. LEXIS 75674 (D.S.C. July 27, 2010).

The Court denied the out-of-time affidavits because they prejudiced the Plaintiff.  Boling, at *7-8. 

However, the Court left open the possibility for the cell phone provider custodian to testify if there were admissibility issues.  Boling, at *8. 

The Defendants argued the cell phone witness was identified in response to the Plaintiff’s answer to a request for admission regarding the cell phone records.  While the Plaintiff admitted the authenticity of the text message records, he denied the timing of the text messages.  Boling, at *8-9. 

The Court found that the Plaintiff should have expected the cell phone custodian’s involvement in the case, because the text message records were the subject of discovery.  Boling, at *9-10. 

However, the Court did not give the Defendants an unlimited texting plan.  The witness would be a lay witness governed by the Federal Rules of Evidence.  Moreover, the witness could not testify as to when the Plaintiff sent or received text messages, because that would be expert testimony.  Boling, at *10. 

While the third-party witnesses would be allowed to testify, their testimony would be limited to authenticity issues.  Boling, at *10. 

Bow Tie Thoughts

You are hard pressed to find a party living off the grid without a cell phone of some sort.  Authenticating this ESI may require a third-party witness and sometimes an expert. 

SmartPhones are not the only technology that might require third-party testimony.  People are often “cloud” dependant on email and high-speed internet service providers for our App powered lives.

Parties should be prepared for third-parties to testify as to the admissibility of certain electronically stored information.  Attorneys should consider whether a records-custodian is sufficient, or if the case requires an expert to explain the timing of text messages or explain ISP addresses.

It’s All About Timing: Good Faith and the Duty to Preserve

Litigants often weld spoliation sanctions for the destruction of evidence like it is a stake to pound in the heart of a vampire. 

However, the triggering event for the duty to preserve, whether there has been spoliation and the issue of bad faith boils down to one issue: Timing.

In a civil rights case, the Plaintiff alleged the Defendants engaged in the destruction of a video.  Olson v. Sax, 2010 U.S. Dist. LEXIS 76981, 1-2 (E.D. Wis. June 25, 2010).  The Defendants in turn claimed the video was destroyed as a result of a good faith, routine computer operation before they knew of the duty to preserve.   Olson, at *3.

They were both right and both wrong.

The events recorded took place on July 22, 2008.  The Defendant’s data was on a 500GB hard drive that held 29 days of video before being overwritten.  Olson, at *2-3.  As such, the video would have been overwritten by August 20, 2008.  Id.

The Court found that the duty to preserve the video had triggered before the August 20, 2008 date, because the possibility of litigation had been discussed by letter with the Plaintiff on August 11, 2008. Olson, at *6.  

If the Defendants had initiated a litigation hold, the data would not have been lost.

However, the Court did not found any bad faith conduct justifying sanctions. 

The only evidence of the destruction of the data was the “routine good faith operation” of the video system.  Olson, at *6.  

This is not “bad faith” conduct that warrants adverse inference of other wrathful sanctions.

Bow Tie Law

Litigation hold and spoliation cases are fact intensive on who knew what when.  This is one of those cases. 

Expect courts to dig deep on timing as these matters continue to be litigated.