Printing ESI & Scanning It Is Not OK

In Indep. Mktg. Group v. Keen, the Defendant-Requesting Party requested the corporate Plaintiff conduct targeted searches with specific key words on specific custodians on the Plaintiff’s server.  Indep. Mktg. Group v. Keen, 2012 U.S. Dist. LEXIS 7702 (M.D. Fla. Jan. 24, 2012).

The Plaintiff produced one multiple page PDF without any searchable text or metadata.  Indep. Mktg. Group., at *2.

The Defendant requested the Plaintiff do a reasonable search on their server for responsive ESI.  The Plaintiff responded by producing four “poor quality” PDF files without any search text.  The PDF’s were hundreds of pages long.  Indep. Mktg. Group., at *2.

In the course of the discovery dispute, the Plaintiff later refused to re-produce the ESI, claiming a $10,000 production cost was “a prohibitive cost that [Plaintiff] [was] not willing to incur for the production of the documents [Defendants] requested.” Indep. Mktg. Group., at *3.

The Plaintiff later produced disks with files that could not be opened, including system and temporary files. Indep. Mktg. Group., at *3-4, fn 1.

The Court was not thrilled with the Plaintiff’s discovery arguments.  The Plaintiff was a corporation seeking damages in the hundreds of thousands of dollars, plus punitive damages and attorneys fees. Indep. Mktg. Group., at *8.

The Court observed the Plaintiffs production methodology included identifying the responsive ESI on their computer, printing it as paper and then scanning the paper as a non-searchable PDF.  Indep. Mktg. Group., at *4-5.

The Court explained that the Plaintiff did not produce the ESI as it was ordinarily maintained by printing the ESI as paper and then scanning the documents as non-searchable PDF’s.  Indep. Mktg. Group., at *5.  Additionally, the ESI was not produced in a reasonably useable form, because it was non-searchable.  Id.

The Court rejected Plaintiff’s undue burden and cost arguments, noting that there is a presumption that the producing party incurs its own production costs.  Moreover, the Plaintiff never argued the data was not reasonably accessible, which would have been undercut by the fact they could search their computer for responsive ESI that was printed. Indep. Mktg. Group., at *6-7.

The Court ultimately granted to motion to compel, requiring the production to be re-produced in a reasonably useable form and denying an award of attorneys’ fees.

Bow Tie Thoughts

The Federal Rules of Civil Procedure and corresponding case law are abundantly clear that you cannot degrade searchable files.  Printing ESI and then scanning the paper as non-searchable PDF’s is simply not permitted by the discovery rules.

The other issue parties can end up in trouble over is arguing the cost of eDiscovery being unduly burdensome.  In a case worth hundreds of thousands of dollars, where the ESI is reasonably accessible, it is difficult to argue a production cost of $10,000 to be unduly burdensome.  It is more likely a party would spend a significant amount of money in motion practice, with the end result being the same discovery bill if the party simply produced the information correctly the first time.

Smile for the Discovery Production

In a dispute between a photographer and an educational textbook publisher, the Plaintiff sough the production of a definition list to the Defendants’ database abbreviations.  Bean v. John Wiley & Sons, 2012 U.S. Dist. LEXIS 4900, 1-3 (D. Ariz. Jan. 17, 2012).

The Defendants’ sales, printing and distribution database was originally produced as screenshots and then as an Excel file.  Bean, at *1-2.

The Excel file column headings contained many alphanumeric abbreviations, such as “LME4” and “VG Enc PAG.”  Bean, at *2.

After reviewing abbreviations reminiscent of a lens focal length formula, the Plaintiff brought a motion to compel the Defendants to produce a “key” to the abbreviations.  Bean, at *2.

The Defendants refused, arguing that the deposition testimony covered the abbreviations and that they did not have to create a document for the Plaintiffs.   Bean, at *2.

Federal Rule of Civil Procedure Rule 34(a)(1)(A) permits a party to request electronically stored information that is “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.” Bean, at *2, citing Fed. R. Civ. P. 34(a)(1)(A).

The Court explained a producing party has the burden of translating the ESI into a reasonably useable form.  Bean, at *2.

While the Excel spreadsheets were “generally” in a reasonably useable form, the “defendant’s use of cryptic abbreviations without definition renders these portions of the spreadsheets meaningless, just as if the data had been produced in code or in a non-readable format.”  Bean, at *3.

The Court disagreed with the proposition that the Defendant had already defined the abbreviations in deposition testimony, because it was the Defendants’ “burden to translate ESI into a useful format.”  Bean, at *3.

The Court reasoned the Plaintiff had requested the definitions of specific abbreviations.  As such, the Court found that requiring the Defendants “to supply definitions already in its possession is not overly burdensome compared to requiring plaintiff to sift through pages of documents.”  Bean, at *3.

Bow Tie Thoughts

It is novel argument, but logical a one, that “translation into a reasonable useable form,” could include producing a definition list of abbreviations.  Given how “text speak” could include a litany of shorthand abbreviations such as LOL (Laugh out Loud), the production of such a list might be necessary so “cryptic abbreviations” would not render a production meaningless.

There are valid arguments that such abbreviations could be defined in deposition or by special interrogatory.  However, requiring a party to conduct additional discovery to define abbreviations within the producing party’s control arguably goes against Federal Rule of Civil Procedure Rule 1, requiring the Federal Rules of Civil Procedure to be “construed and administered to secure the just, speedy, and inexpensive determination of every action and proceeding.”

“Fear” is Not An Objection to Search Terms

In a trade secret case involving the search of electronically stored information, the parties disagreed over the use of keywords to search the data sets. Custom Hardware Eng’g & Consulting v. Dowell, 2012 U.S. Dist. LEXIS 146, 7-8 (E.D. Mo. Jan. 3, 2012).

The gravamen of the dispute was the Defendant’s argument to use a set of search terms that required precise matches between search terms and ESI. Custom Hardware, at *6.  The Plaintiff countered this narrow search would prevent discoverable information from being produced.  Id.

The Court reviewed several major cases involving search terms.  Citing Victor Stanley, Inc., the Court recognized that search terms are “appropriate and helpful” for searching ESI, along with having “well-known limitations and risks.”  Custom Hardware, at *7, citing Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 260 (D.Md. 2008).

Quoting the Sedona Conference, the Court stated limitations and risks exist because “[k]eyword searches identify all documents containing a specified term regardless of context[.]“Custom Hardware, at *7, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 201 (2007).

The Court explained search terms could simultaneously be over and under inclusive, finding ESI that is both irrelevant to the case and missing relevant ESI, due to word misspellings.  Custom Hardware, at *7-8. The Court summarized:

As a result, the usefulness of keyword searches as a means of discovery is limited “by their dependence on matching a specific, sometimes arbitrary choice of language to describe the targeted topic of interest.”

Custom Hardware, at *8, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 201 (2007).

The Defendants’ first objection can be summarized as the fear of producing privileged information.  Custom Hardware, at *11-13.  The Court curtly stated, “Defendants’ fears provide no basis to stymie the discovery process.”  Custom Hardware, at *11.

The Court cited case precedent regarding searching hard drives, the producing party may create a privilege log expressly explaining any privileged information.   Custom Hardware, at *11, [citations omitted] and Federal Rule of Civil Procedure Rule 26(b)(5)(A)). The Court stated:

As a result, fear of disclosure of privileged information provides no basis for Defendants to object to the discovery process. Instead, if Defendants find that responsive information is also privileged, they must so state in a privilege log…

Custom Hardware, at *11.

The Court took direct aim at the Defendants’ objection that the search terms would encompass “only irrelevant information.”  Custom Hardware, at *11.

The Court found the argument to be without merit and the Defendants’ objection merely a “conclusory statement, stated without any argumentation or other support.”  Custom Hardware, at *11-12.

Finally, the Court found the Defendants’ proposed search terms to be “problematic and inappropriate” because it would limit the responsive ESI to exact search term matches, including “phrasing, capitalization, or both.”   Custom Hardware, at *12.  The Court stated:

As a result, Defendants’ proposal would fail to produce discoverable ESI simply because of an inexact match in capitalization or phrasing between a search term and the ESI. This outcome is problematic, because whether information is discoverable under Rule 26(b) does not turn on the existence of an exact match in capitalization and phrasing.

The Court found the proposed exact matching search terms “would prevent Plaintiff form obtaining discoverable information and is inconsistent with the broad scope of discovery established by Rule 26(b)(1).”  Custom Hardware, at *13.

Bow Tie Thoughts

Objections to discovery requests cannot be solely out of fear.  An objection must have legal justification.  More importantly, any challenge to search terms must be substantiated with affidavits explaining the technology at issue and supporting evidence, such as a search term efficiency report or other documentation explaining the results of a keyword search.

Trying to control eDiscovery costs by requiring search terms to be exact matches will only result in missing responsive electronically stored information. Moreover, conducting a search of a litigation support database is not the same as conducting legal research.

In Rec Solar Grade Silicon LLC v. Shaw Group, Inc., 2011 U.S. Dist. LEXIS 51459, 40-41 (E.D. Wash. May 13, 2011), the Court ordered 31 keywords to searched over a dataset. These included the following;

7. “applied technical” or ats

25. weld! /2 test! or “weld-test”

My friend Charlie Kaupp at Digital Strata noted several issues with such search terms in a presentation we did together at PFIC.  For the search string “applied technical” or “ats”, it is advisable to avoid acronyms shorter than four letters and to determine a methodology to constrain the search.  Charlie recommended changing the search to “applied technical” OR (ats /20 (applied OR technical)), so the search was constrained with elements of the phrase term.

As for the 25^th search string, Charlie explained the “weld-test” term was redundant to the broader term with the proximity operator.  Additionally, by reducing the redundancy of the search terms, a user can conserve system resources when conducting a search.  As such, the revised search would simply be “weld! /2 test!.”

The lesson from the above: Involve a consultant to help draft a search methodology.

Technology is also expanding beyond keyword searches with concept search, predictive coding, advanced analytics and other clustering methodologies.  While the knee jerk reaction by some attorneys is “technology = expensive,” these new tools can be as much as an improvement to finding responsive discovery as flying in an airplane across the country is to driving a car.

(Disclosure: I have friends at and a professional relationship with the team at Digital Strata)