When a Party Requests Native Files….

A Defendant/Producing Party resisted production of email in native file after making general objections to the production format.  Linnebur v. United Tel. Ass’n, 2011 U.S. Dist. LEXIS 124473, 20-21 (D. Kan. Oct. 27, 2011).

The Producing Party claimed that producing the email messages printed as paper was “sufficient” for the requesting party to determine the date, time, author and recipient of the native files converted to paper.  Linnebur, at *20.  Moreover, the Defendant argued the production of email as native files was not “facially relevant and that plaintiff has not met its burden to establish relevance.” Id.

The Court recounted its ruling in a prior decision, highlighting that a requesting party can specify the form of production pursuant to Federal Rule of Civil Procedure Rule 34(b)(1)(C).  Linnebur, at *20, fn 39.

A party resisting a production in native format in an opposition to a motion to compel has the burden to show the “information is not reasonably accessible because of undue burden or cost.” Linnebur, at *21, fn 40, citing Federal Rule of Civil Procedure Rule 26(b)(2)(B).

The Court stated the Defendant had failed to show, or argue, that the email messages were not reasonably accessible because of undue burden or cost.  Linnebur, at *21. As such, the Defendant’s objections were overruled and the motion to compel the ESI in native file format was granted.  Id.

Bow Tie Thoughts

The form of production and undue burden are two topics many lawyers continue to struggle with in responding to discovery requests.

At a recent seminar I attended, one lawyer explained that if a producing party claimed ESI was not reasonably accessible, the burden then shifted to the requesting party to show good cause for the production of ESI.

The giant problem with that viewpoint is a producing party must demonstrate under Federal Rule of Civil Procedure Rule 26(b)(2)(B) why the ESI is not reasonably accessible because of undue burden or cost.  A lawyer simply proclaiming the collection or production of native files is “unduly burdensome” does not comply with Federal Rule of Civil Procedure Rule 26(b)(2)(B).

What does “undue burden” look like?  In the collection context, a party could show by affidavit or testimony from an IT or collection expert the different sources of ESI (desktop computers, SmartPhones, etc); the location of ESI; the methodology to collect the ESI; the processing of the data; and the costs associated with all of the above work to demonstrate undue burden.

Judge’s Facciola’s opinion United States ex rel. McBride v. Halliburton Co., 2011 U.S. Dist. LEXIS 6412, 1-2 (D.D.C. Jan. 24, 2011) illustrates the above very effectively, especially his description of the testimony outlining the collecting methodology: “In excruciating, but highly educational and useful, detail.”  That statement should set the framework for showing undue burden.

As for the form of production, a party may need to redact confidential information, such as Social Security Numbers or HIPPA information.  A producing party should explain these issues in an objection pursuant to Federal Rule of Civil Procedure Rule 34(b)(2)(D), which necessitates the reason to convert native files to a static image for redaction purposes.

Producing Excel Spreadsheets as Tiffs

A Plaintiff produced Excel spreadsheets in TIFF format.  As one could expect, the Defendant brought a motion to compel in native file format faster than you can sort a column in ascending order.  Mitsui O.S.K. Lines, Ltd. v. Seamaster Logistics, Inc., 2011 U.S. Dist. LEXIS 117922 (N.D. Cal. Oct. 12, 2011).

The Court quickly held the Excel spreadsheets be produced in native file format.

Federal Rule of Civil Procedure Rule 34(b)(2)(E)(ii) requires that ESI created in an electronic format must be produced in “the form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.” Mitsui O.S.K. Lines, Ltd., at *1.

The Court sited the Advisory Committee’s Notes to the 2006 Federal Rules of Civil Procedure Amendments, which states:

The rule does not require a party to produce electronically stored information in the form it which it is ordinarily maintained, as long as it is produced in a reasonably usable form. But the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is ordinarily maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation. If the responding party ordinarily maintains the information it is producing in a way that makes it searchable by electronic means, the information should not be produced in a form that removes or significantly degrades this feature.

Mitsui O.S.K. Lines, Ltd., at *1-2, citing Fed R. Civ. P. 34, Advisory Committee’s Note to the 2006 Amendment.

The Court further stated that form of production cases have held it is “improper to take an electronically searchable document and either destroy or degrade the document’s ability to be searched.”  Mitsui O.S.K. Lines, Ltd., at *2.

Based on the above, the Court required the production of the Excel files in native format, maintaining search capabilities, formulae, and other features, intact.  Mitsui O.S.K. Lines, Ltd., at *3.

Bow Tie Thoughts

Judge Facciola in Covad Communs. Co. v. Revonet, Inc., stated the following on producing Excel files as non-searchable tiffs:

Understandably, taking an electronic document such as a spreadsheet, printing it, cutting it up, and telling one’s opponent to paste it back together again, when the electronic document can be produced with a keystroke is madness in the world in which we live.

Covad Communs. Co. v. Revonet, Inc., 260 F.R.D. 5, 9 (D.D.C. 2009).

Parties can save time and money by producing Excel files as they are ordinarily maintained.  Taking a native file and converting it to a non-searchable file inherently drives up the production costs charged by a service provider.  Moreover, it drives up the cost to review the file, because the information is no longer searchable, requiring more time spent reading multiple TIFFs, instead of coded information in a review database.

Excel files, by their very nature of having formulas and other data, have information populated in multiple fields and on different tabs.  Converting these files to TIFFs causes an explosion of pagination, where a single file can turn into a several hundred-page TIFF.  This creates challenges in document review exactly as Judge Facciola described, where document review regresses to basket weavers putting shredded documents back together again.

Clicking “Deny” on Transferring Venue Based on an Online Forum Selection Clause

The Defendant in Dunstan v. Comscore, Inc., was a company that offered “free” screen savers and games that monitor a user’s Internet usage, which is then sold for marketing research or analysis of online behavior.

After being sued for purportedly improperly obtaining personal information in violation of the Stored Communication Act, along with other allegations, moved to dismiss a lawsuit or transfer to from the Northern District of Illinois to the Eastern District of Virginia.  Dunstan v. Comscore, Inc., 2011 U.S. Dist. LEXIS 115988 (N.D. Ill. Oct. 7, 2011).

As with virtually all software downloads, before anyone can install the Defendant’s products, a user must click they have read the “terms and conditions of the Privacy Statement and User License Agreement” and agree to the Defendant’s forum-selection clause.  Dunstan, at *2-3.

Case law requires a plaintiff to show the venue it selected is proper.  Dunstan, at *3.

A party challenging a forum-selection clause must demonstrate the enforcement of the clause is unreasonable under the circumstances.  Dunstan, at *3-4.

“Reasonableness” includes whether the forum-selection clause was “’was reasonably communicated to the plaintiff.” Dunstan, at *4.

 

The Plaintiff successfully argued the Defendant’s forum-selection clause, specifically the terms of service hyperlink, was obscured so that the average user could not find it.  Dunstan, at *4.

As the Court explained, “it is not reasonable to expect a user casually downloading free software to search for such an agreement if it is not immediately available and obvious where to obtain it.”  Dunstan, at *7.

As the Court stated in its holding:

As the Second Circuit noted, “[w]hen products are ‘free’ and users are invited to download them in the absence of reasonably conspicuous notice that they are about to bind themselves to contract terms, the transactional circumstances cannot be fully analogized to those in the paper world of arm’s-length bargaining.” Specht v. Netscape Commc’ns Corp., 306 F.3d 17 at 32 (2d Cir. 2002). Consequently, under the circumstances alleged here, including that the location of the license agreement was not readily apparent, the court concludes that the forum-selection clause was not reasonably communicated to the plaintiffs Harris and Dunstan.

Dunstan, at *7. 

The Court both denied the motion to dismiss and the alternate motion to transfer.

Bow Tie Thoughts

I have thought about the reasonableness of online forum-selection clauses since first reading Carnival Cruise in law school.  The effectiveness of online forum selection clauses is imperative for businesses conducting online sales to have the predictability of where they can be subject to litigation. The prospect of an online company being subject global general jurisdiction is simply acidic e-commerce.  However, as with so many other standards in the law, reasonableness is key on whether a forum-selection clause is valid.

Denying Expedited Discovery

A Plaintiff in a BitTorrent filing sharing copyright case sought early discovery to identify 96 Doe Defendants. The Plaintiff moved to subpoena the Doe Defendants’ internet service providers (“ISPs”) to identify each person associated with the IP address.   AF Holdings LLC v. Doe, 2011 U.S. Dist. LEXIS 109816, 2-3 (N.D. Cal. Sept. 27, 2011).

The Plaintiff specifically requested leave to subpoena the ISP’s to disclose the “name, address, telephone number, and email address for each Defendant’s IP address.”  AF Holdings LLC, at *3.

Good cause is required for a court to allow early discovery prior to a Rule 26(f) meet and confer.  AF Holdings LLC, at *3, citing Semitool, Inc. v. Tokyo Electron American, Inc., 208 F.R.D. 273, 275 (N.D. Cal. 2002). Moreover, good cause may be found “where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party.” Id.

A key test is whether the early discovery is “very likely” to identify doe defendants.  AF Holdings LLC, at *4-5.

The Court denied motion for early discovery, holding that the early discovery was not likely to identify the Doe Defendants.  AF Holdings LLC, at *4-5.

Citing an earlier case with the same Plaintiff and attorney, the Court noted a prior court allowed early discovery on ISP addresses, only to have the Plaintiff return to Court stating additional discovery was needed, including “an inspection of the subscriber’s electronically stored information and tangible things, including each of the subscriber’s computer and the computers of those sharing his internet network.” AF Holdings LLC, at *6.

As was conceded in the prior case:

[The ISP discovery] does not tell Plaintiff who illegally downloaded Plaintiff’s works, or, therefore, who Plaintiff will name as the Defendant in this case. It could be the Subscriber, or another member of his household, of any number of other individuals who had direct access to Subscribers network.

AF Holdings LLC, at *6.

The Plaintiff stated they would need the following discovery in the prior case:

Inspection of the identified subscriber’s computer;

[Inspection] all of those computers that subscriber has reasonable control over/access to, for the limited purpose of discovering who accessed the BitTorrent protocol.

AF Holdings LLC, at *6-7.

This protocol might take two, perhaps three, subpoenas in all to identify a Doe Defendant.  AF Holdings LLC, at *7.

The Court denied without prejudice the early discovery in the current case, since the facts were nearly identical to the prior case, and that the ISP discovery would not identify the Doe Defendants.  AF Holdings LLC, at *7-8.

Bow Tie Thoughts

The idea of early discovery to identify a defendant by an IP addresses, only to result in searches of any computer on a wireless network, should give everyone pause.  While copyright plaintiffs have a right to identify those who download files unlawfully, there obviously must be checks on early discovery that engulfs innocent non-parties who could have been on the same network.