Be Specific If You Are Going to Attack the Form of Production

Oh, Rule 34. You are the code section that keeps giving.

Under Federal Rule of Civil Procedure Rule 34(b)(2)(E)(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.”

A Plaintiff brought a motion to compel the opposing party to organize and label their production to correspond to the categories in the Plaintiff’s Requests for Production. Things did not go well for the Plaintiff’s motion. Hall v. Habul, 2015 U.S. Dist. LEXIS 87545, *15-16 (M.D. La. July 6, 2015).


The Defendant’s production was Bates labeled, but the Plaintiff still took the position that the production did not comply with Rule 34(b)(2)(E)(i). Id. Unfortunately for the Plaintiff, there was no further explanation as to why the production did not comply with the Rules. The Court did not know if the production was of electronically stored information, scanned paper documents, or a blended production. Id. Moreover, the Plaintiff did not explain why they did not believe the production was in the usual course of business, which is one of the production options under Rule 34(b)(2)(E)(i). Hall, at *16. As such, the Court could not determine if Rule 34(b)(2)(E)(i) was violated. Hall, at *15.

The only assertion the Court had to work with was the Defense attorney stating the “documents” were produced in the usual course of business. Hall, at *16. There was nothing in the record to refute this statement, thus the Court concluded the Defendant complied with Rule 34(b)(2)(E)(i). Id.

Bow Tie Thoughts

If you are going to challenge a production, be sure to specifically state what is wrong with the production. This could be the request for production called for native file format and static PDF’s were produced instead. There are many ways a production could not comply with the Rules.

I know many attorneys who produce ESI in the “usual course of business,” thus do not believe in labeling their productions. I know a few who revel in this strategy, wanting to let the other side figure out what records correspond to each discovery request. These attorneys often view the opposing party as a zombie hoard to be destroyed without mercy.

Being a good anal-retentive Virgo, I have a different view of document review. I believe in setting up issue coding to correspond to the Requests for Production. If you really want to get organize, have the RFP’s correspond to your Causes of Action or Defense, so you know exactly what supports your arguments and responds to the opposing party. This is excellent for being able to quickly retrieve records for review in preparing discovery responses or motion practice.

Most review applications allow coding fields to be exported out as an Excel file or CSV. A producing party can comply with Rule 34(b)(2)(E)(i) by exporting fields in order of discovery requests for issue tagging (such as an RFP00001), followed by the Document Identifier, such as Bates, Docid, or Production Number, and relevant metadata, perhaps even the system file pathway to show how the origin of the record.

Parties are within their rights to simply produce discovery as it is maintained in the ordinary course of business. I prefer having them labeled, but that is both my preference and one option to specify under the Rules.


Proportionality in Asymmetrical Discovery

The Plaintiffs and Defendants in a SEC case highlight the importance of proportionality between asymmetrical parties. In such cases, one side has all of the electronically stored information for discovery requests; the other side does all the requesting. However, the smaller party can have an extremely high burden reviewing any produced ESI, especially if searchable features have been removed.

Magistrate Judge Leda Dunn Wettre in City of Sterling Heights Gen. Emples. Ret. Sys. v. Prudential Fin., (an opinion not for publication) did a great job balancing the proportionality interests between a motion to add additional search terms and custodians to the dispute.

Balancing Custodians

The Plaintiffs sough to add between 22 to 45 additional custodians for the Defendants to add to their discovery search. The Requesting Party made a strong argument for the additional custodians, including a chart of the custodians with the factual basis for expanding the scope of discovery. The parties had already agreed to 66 custodians. City of Sterling Heights Gen. Emples. Ret. Sys. v. Prudential Fin., 2015 U.S. Dist. LEXIS 110712, *4-5; 8.

The Court denied adding the majority of the additional custodians, explaining, Neither plaintiffs nor the Court can know with certainty, of course, whether searches of the additional custodians’ ESI will yield unique, noncumulative documents.” Sterling Heights, at *9. The Court further explained that it was satisfied that the vast majority of the custodians likely had duplicate information. Id.

Judge Wettre drove home her proportionality analysis with the following: the Court is cognizant of the sizeable costs to Prudential involved in the searching, review and production of information from each additional custodian. Although Prudential is a large corporation with substantial resources, the Court should not be – and is not-insensitive to these costs.” Id.

The Court found that the Plaintiffs had provided enough information that there was a “fair inference” that there could be more custodians with additional information. Id. Judge Wettre explained in terms of proportionality that:

Although the number of agreed custodians is already substantial, the resources and personnel at Prudential devoted to the Verus audit and related issues also seem to have been immense. Therefore, it is not surprising that more than 66 Prudential employees may have been heavily involved in the issues relating to this case and may thus have relevant, noncumulative information. Moreover, allowing plaintiffs a moderate number of additional custodians does not seem disproportionate to the size and scale of this action. The Court understands that there are electronic de-duping tools that may be utilized to limit defendants’ review and production of duplicative documents, reducing some of the burden on Prudential of producing information from additional custodians.

Sterling Heights, at *10.

The Court explained that permitting the plaintiffs to select an additional 10 custodians “would balance fairly plaintiffs’ rights to relevant discovery against the costs and burden to defendants of providing that discovery.” Sterling Heights, at *10-11.

Search Terms

The question of adding four new search terms was decided swiftly. The Defendants challenged adding more search terms, claiming they had already produced 1.5 million pages of discovery. Sterling Heights, at *11. The Plaintiffs responded that over half of the 1.5 million pages were “completely unusable redacted pdfs of Excel spreadsheets.” Id.

The Court held that the four search terms appeared designed to target relevant information. Moreover, the Plaintiff noted that if the Defendant had produced a hit count that showed the terms had an “egregiously large” number of “hits,” the Plaintiffs would have considered narrowing the terms. Id.

Judge Wettre allowed the additional terms and explained:

The Court does not have before it information on which it is persuaded that it should deny these four additional terms because they would produce an unduly large number of results likely to be irrelevant to this case. While the Court does recognize that defendant has agreed to a large number of search terms, that is not sufficient basis in and of itself to deny plaintiffs the four additional search terms they seek.

Sterling Heights, at *12.

Bow Tie Thoughts

If proportionality cases were rock concerts, this case has a few “gavel drop” moments. It is great to see a Judge who incorporated proportionality throughout the entire opinion.

Proportionality arguments should not be made out of thin air. The Plaintiffs made a noble effort providing a chart with each additional custodian explaining the factual basis for expanding the scope of discovery for each individual. While they only got 10 additional custodians, this was an excellent way to explain to a Court the value of adding custodians to decide the merits of a case.

The search term arguments for both parties could have been stronger if the proposed search terms were supported by affidavits from expert witnesses. To be fair, the arguments might have been, but the tone of the opinion sounds like the arguments did not include expert affidavits. There are many lawyers who think that because they can conduct case law research that “search terms” in discovery are the same thing. That is a dangerous assumption.

I strongly encourage lawyers to work with eDiscovery consultants to help identify the concepts to identify electronically stored information. Advanced analytics from clustering of similar files to email threading, to visual analytics, to predictive coding all can help identify responsive files. Lawyers should think beyond “search terms” to concepts in order to search discovery.

Finally, I feel greatly for the Plaintiffs who had to review non-searchable PDF’s of Excel files. There are ways to redact Excel files that would require agreements between the parties, but it can be done. This would keep Excel files in native format and avoid spreadsheets exploding into multiple page nightmares.

In closing, a hat tip to the Judge and both parties on their well argued positions and the opinion.


Please Vote for Bow Tie Law for Best Legal Blog

Vote-CountsI am honored Bow Tie Law has been nominated for The Expert Institute’s Best Legal Blog Contest.

I am very humbled by those who nominated Bow Tie Law. My blog received enough nominations to be one of the 250 legal blogs in this contest out of 2,000 potential nominees.

There are many excellent blogs in the Technology category, including ones by very dear friends. If these blogs are not on your reading list already, I encourage you to check them out.

Voting is going on until October 9, 2015 to select the very best of the best in the different categories. The competition has an open voting format that allows one vote per blog. Each blog will compete for rank within its category, while the three blogs that receive the most votes in any category will be crowned overall winners.

Please check out all of the excellent blogs that have been nominated. If you enjoy Bow Tie Law, you can vote for my blog in the Technology category at

Dropbox Non-Party Subpoenas and the Business Records Rule

Alternative Title: Thank God Dropbox Does Not Need to Provide a PMK Witness Every Time Somebody is Sued

Dropbox was subpoenaed as a non-party to provide a deposition witness to testify about its business, practices, and technology, in a Texas lawsuit. All of this information is publicly available on Dropbox’s website. The Court [rightly] quashed the subpoena. Intermarine, LLC v. Spliethoff Bevrachtingskantoor, B.V., 2015 U.S. Dist. LEXIS 112689, *5-6 (N.D. Cal. Aug. 20, 2015).


There are over 400 million Dropbox users who save over 1.2 billion files to Dropbox every 24 hours. Intermarine, at *6. It would be highly chaotic and costly if Dropbox had to have witnesses be deposed every time a Dropbox user was in litigation.

Dropbox argued that the deposition subpoena required them to testify about information that is available on their website, thus a witness was not required. Id. Moreover, a declaration could explain the nature and format of the data in Dropbox’s third-party production that would comply with the Federal Rules of Evidence for admissibility. Id.

The demanding party did not agree, arguing that four activity logs were created by Dropbox when the adverse party uploaded files, thus Dropbox needed to produce a witness to explain those logs. Id. 

The Court did not agree with the demanding party and granted Dropbox’s motion. Intermarine, at *7. The Court explained the records were admissible as business records under Federal Rule of Evidence Rule 902(11). Id. The purpose of the business records rule “was intended to obviate the need for live witnesses to parade to the stand to support the admission into evidence of business records.” Intermarine, at *7, citing United Asset Coverage, Inc. v. Avaya Inc., 409 F. Supp. 2d 1008, 1052 (N.D. Ill. 2006).

The Court explained:

Dropbox attests the records were kept in the course of regularly conducted activity by Dropbox and were made in the course of regularly conducted activity as a regular practice by Dropbox. See Tyler Decl., Ex. I; see also Fed. R. Evid. 803(6). The Federal Rules of Evidence were designed to promote accuracy in factfinding and exclude documents that might be false or otherwise unreliable. As Dropbox provided the required authentication, Intermarine’s request for further testimony is duplicative and unnecessarily burdensome. Although Intermarine argues Defendants may dispute the authenticity of the records at trial, they are admissible with or without Defendants’ cooperation.

Intermarine, at *7-8, internal citations omitted.

As for the issue of the public information on Dropbox’s website on how files are stored and maintained, the Court stated, “Intermarine is not entitled to elicit expert testimony from Dropbox, particularly where it can retain its own expert witness to explain these issues.” Intermarine, at *9.

The Court concluded the opinion with the public policy that Courts are to protect non-parties with discovery in litigation. Id. The Court explained that Dropbox had complied with the Federal Rules of Evidence and no further testimony was needed. Intermarine, at *9-10.

Bow Tie Thoughts

It would be insane if Dropbox,, or any other file sharing service had to produce PMK witnesses every time one of their users was producing discovery. If that were the rule, those companies would need to embed lawyers and witnesses at every courthouse in the country. It would be easier figure out how to “file share experts” to in every lawsuit. It would be like requiring expert witnesses to explain how paper is made in every lawsuit [best read in a Neil deGrasse Tyson voice]: “First, a lumberjack cuts down a tree, and mighty oxen drag the trunk down to the river, which is then floated down river to the mil, and then…”

Forensic companies have developed collection tools to capture files and data uploaded to Dropbox and Having a party’s expert perform the collection and declaration explaining the process would likely be far more efficient then seeking third party discovery for the cloud service providers. Moreover, this expert could testify if needed without the added challenges of subpoenaing a non-party to the lawsuit.

Judge James Browning on eDiscovery “Technical Specialists”

In a case over bad faith litigation and whether costs were recoverable, a Court recognized the importance of those who perform eDiscovery work. The crux of the issue is that clerical work is not a recoverable cost, while the work a paralegal does to support an attorney is recoverable. Would the work performed an eDiscovery professional be recoverable like a paralegal’s work?


United States District Court Judge James O Browning stated:

…while technology specialists’ duties are not strictly legal in the traditional sense, the Court believes that these technicians provide meaningful value to law firms and, ultimately, clients during litigation; those contributions should not go overlooked. In time past, young attorneys would select documents that paralegals would incorporate into specially created databases — e.g., “hot docs,” “Top 100 documents,” or documents specific to a particular witness or witnesses — and maintain them for the senior lawyers’ review. As technology developed, however, paralegals began uploading documents into databases which could then be searched and sorted using queries. Now so much is on ESI; the technology specialist helps produce documents and keep documents produced by other parties. These technology specialists now do some of the specialized work that paralegals used to do.

General Protecht Group v. Leviton Mfg. Co., 2015 U.S. Dist. LEXIS 109981, *95-96.

Judge Browning was just getting warmed up. The Court went on to say:

There is no sound reason to pay paralegals for document work in the 1980s and 1990s, but not technology specialists doing similar work in 2015 just because their job titles are different. The specialist is improving the quality of work product, and as a sensible approach, the case law should not penalize the practice in the legal community that is becoming more technology-based and efficient. Specialists may actually save money. Having a technology specialist for a single case is not unusual, and it can be more efficient sometimes to hire a specialist for a case than use a paralegal. To do otherwise would be to allow the case law to lag behind the introduction of document management products and databases in the twenty-first century. The proof that technology specialists are now doing legal work is that law firms hire technology specialist employees. Many years ago, few firms had paralegals; now it is the rare firm that does not have one or two. Forty years ago, few firms had specialists to manage documents; now, firms with twenty or more lawyers can justify hiring technology specialists for the job, and smaller firms may hire them on a contract basis. Today, when a client hires a law firm, it is hiring its paralegals as well as its technology specialists. When marketing their work, firms often quote their paralegal rates with their attorney rates. Document management is in great part what law firms do today, and clients expect to pay for that work. It is only fair for courts to follow the legal profession’s development of new means of providing high-quality representation and recognize technology specialists’ contributions as being legal in nature. The Court would therefore include technology specialist fees in its calculation of attorneys’ fees, subject to the same restrictions placed on other attorneys’ fees, i.e., that the technology specialists work pertained to the lawsuit at hand, and the hours were reasonable.

General Protecht Group, at *96-98, emphasis added.

Wow. Judge Browning gave one of the most practical descriptions on the value of having “technical specialists” help on the eDiscovery in a case. In the Northern District of California, this title could be “eDiscovery Liaison.” Some firms might even give this person titles such as “Director of Litigation Support” or “eDiscovery Counsel.”

Handling electronically stored information takes skill. Lawyers cannot upload self-collected PSTs from a client and review the data into Outlook. The data is likely corrupted from an indefensible collection. Moreover, using Outlook for document review is like crowbar for dentistry; it is not the intended use of the tool.

Attorneys need to understand how to identify relevant electronically stored information for preservation, develop defensible collection methodologies, and competently conduct review in a reasonable manner for everything from a reasonable inquiry to initial disclosures to production. Being able to execute a litigation workflow is not just required for defensibility, but the competent practice of law. Most lawyers require having someone assigned to manage these tasks under the attorney’s direction. Regardless of title, seeing a Judge state that “technical specialists” improve the quality of work product for efficiency is outstanding for the practice of law.

A Case Study on Privilege Logs

Privilege logs require more than merely saying a prospectively privileged document is an “attorney-client communication.” This requires litigants to conduct privilege review with far more analysis than simply tagging discovery “Attorney Client Privilege” or “Work Product Conduct.” The case of United States v. State & La. Dep’t of Health & Hospitals highlights the importance of effective discovery review in creating privilege logs.

The Defendant produced a 2,941 PAGE privilege log that claimed the discovery was protected by the attorney-client privilege and/or the work product doctrine. United States v. Louisiana, 2015 U.S. Dist. LEXIS 100238, *3 (M.D. La. July 31, 2015).

Following in the wake of a nearly 3,000 page privilege log came a motion by the Plaintiff to compel a “Proper Privilege Log,” which was answered with a new privilege log of only 2,302 pages, plus a new 259 page privilege log. US v. Louisiana, *3-4.

Before discussing any privilege review, it is important to define the privileges in a case. As the Court explained, “[t]he attorney client privilege generally protects confidential communications made by a client to his lawyer for the purpose of obtaining legal advice. The work product doctrine protects materials prepared in anticipation of litigation that reveal the “mental impressions, conclusions, opinions, or legal theories of an attorney.” Id, at *14, citing Hodges, Grant & Kaufmann v. United States Gov’t, 768 F.2d 719, 720-21 (5th Cir. 1985) and Conoco Inc. v. Boh Bros. Construction Co., 191 F.R.D. 107, 118 (W.D. La. 1998).

The Plaintiff challenged the privilege log as being “insufficiently specific,” citing examples that privileged claims were simply “NVRA” or “NVRA Spreadsheet,” “Voter Registration Form,” “Final NVRA-2013,” “NVRA Documents.” The NVRA is an acronym that the Defendant had to follow. Needless to say, the Court agreed these claimed privileges were insufficient. Id., at *9-10.

Rule 26(b)(5) of the Federal Rules of Civil Procedure requires a privilege log to: “(i) expressly make the claim” of privilege; and “(ii) describe the nature” of the withheld information in a way that “will enable other parties to assess the claim.” The test for determining whether a privilege log is adequate is whether each entry states sufficient facts that establish each element of the privilege. This requires a specific description of why something is privileged, not a “conclusory invocations of the privilege or work-product rule.” Id., *6-7. Simply put, lawyers cannot say, “work product doctrine” like they are magic words to ward off opposing counsel.

The privilege log also lacked detail with the identities and roles of each sender and recipient. Id., *11. As such, there was no way for the Plaintiff to determine whether the claimed privileged information was actually covered by the privilege. Simply put, you need to state that a attorney-client communication is actually with an attorney either seeking or receiving legal advice.

The Court’s in-camera review of 40 claimed privileged documents showed serious problems with the privilege log, because there were communications not with any attorneys, emails regarding scheduling of training, reports with factual information, messages on compliance procedures, and apparently unrelated email. Id., at *13-14.

The Court held that many of the sampled documents did not fall under the attorney-client privilege or work-product doctrine, because the communications were internal communications. Many of the communications did not involve any lawyers, did not suggest an attorney-client relationship, and were not seeking legal advice. Moreover, the messages did not contain mental impressions of any lawyers. Id., at *15-18.

Bow Tie Thoughts

Privilege review cannot be haphazard. The litigation team should define the possible privileges in the case, whether there are spouses texting each other or someone emailing their pastor for spiritual advice. This further requires setting up the document review issue coding, so information is properly identified, tagged, and defined in a way to “enable other parties to assess the claim” under Federal Rule of Civil Procedure Rule 26(b)(5).

There are several ways to set up issue coding where a party can “(i) expressly make the claim” of privilege; and “(ii) describe the nature” that “will enable other parties to assess the claim” under Federal Rule of Civil Procedure Rule 26(b)(5). For example, let’s code for the attorney-client privilege. While state laws vary, the attorney client privilege requires at least an email between a client and lawyer, with the client seeking legal advice, or the lawyer providing legal advice. Coding could be set up as follows: Attorney Client Communications, with sub-issues, “Communication from Client to Lawyer Seeking Legal Advice, or “Communication from Lawyer to Client Providing Legal Advice.”

These tags would give detail to the privilege log, but still more is required. An additional free text note field would need to be added that could contain “sufficient facts that establish each element of the privilege.” A review team would need to decide at what stage of review they want reviewers adding such detail to the database. Some might find it is advantageous to have lawyers go into such detail while conducting their initial review, others might elect to have a privilege review team review everything tagged as privilege to provide sufficient facts in the notes to explain the claimed privilege.

The privilege log can be exported from most litigation support databases in Excel. The privilege log should include fields such as the Production Number (or Bates), Email From, Email To, Subject, Date Sent, Date Received, and any other relevant field, minus the body of the message. This information should provide both the requesting party and the Court enough information to evaluate whether the claimed privilege applies to the withheld discovery.

There are multiple ways to build a privilege log in a discovery review application. However, whichever method you select, think it through with the requirements for privilege logs and the privileges in mind.

Put the Brakes on Self-Collection

There is no question that automotive product liability litigation is complex. However, self-collection is never a good idea. The Ford Unintended Acceleration Litigation is a case study on why it is a good idea to use archiving solutions and have expert witnesses conduct data collection.


The Plaintiffs argued that Ford did not have a reasonable search and collection methodology, because the data from custodians was all “self-collected.” Moreover, the self-collection appeared to be conducted by custodians using search terms in the internal email system, which were then stored on the company server. Burd v. Ford Motor Co., 2015 U.S. Dist. LEXIS 88518, *9-11 (S.D. W. Va. July 8, 2015).

The case continued down a bumpy road with bi-weekly conference calls with the Court. As the Court was faced with contradictory statements from both sides, the Plaintiffs were directed to take depositions of the custodians to investigate whether the search methodology was reasonable. Burd, at *13. Deposition testimony showed that key employees performed limited searches or no searches at all. Burd, at *35-36.

The parties also attempted to meet and confer over how to search for the responsive ESI. The Defendant took the position they would not share their search terms because 1) the search terms were work product; and 2) there actually was no list of search terms used, because each custodian developed their own search terms after discussing the case with counsel. Burd, at *14-15.

Ford argued against producing their own document retention policies as being irrelevant “non-merits” discovery. Burd, at *30. Moreover, Ford argued that information regarding their collection and production methodology was irrelevant “discovery on discovery” that invaded attorney work product. Burd, at *30-31.

The Court stated that the generic objections to “discovery on discovery” and “non-merits” discovery are outmoded and unpersuasive. Burd, at *34 (emphasis added). The Court went on to state:

Here, there have been repeated concerns voiced by Plaintiffs regarding the thoroughness of Ford’s document search, retrieval, and production. Although Ford deflects these concerns with frequent complaints of overly broad and burdensome requests, it has failed to supply any detailed information to support its position. Indeed, Ford has resisted sharing any specific facts regarding its collection of relevant and responsive materials. At the same time that Ford acknowledges the existence of variations in the search terms and processes used by its custodians, along with limitations in some of the searches, it refuses to expressly state the nature of the variations and limitations, instead asserting work product protection. Ford has cloaked the circumstances surrounding its document search and retrieval in secrecy, leading to skepticism about the thoroughness and accuracy of that process. This practice violates “the principles of an open, transparent discovery process.”

Burd, at *34.

The Court explained that document retention policies can be discovered through a Rule 30(b)(6) witness and were not contingent on a claim of spoliation. Burd, at *34-35. Moreover, the Court rejected the claim that the search terms used to identify responsive discovery was protected by the work product doctrine. Burd, at *36. Simply because an attorney discussed how to search with a custodian does not make the search terms and the results protected by the work product doctrine. Burd, at *36-37. The search terms could be produced without disclosing any substances of discussion with an attorney. Id.

The Court granted the Plaintiff’s motion for a deposition of a Rule 30(b)(6) witness on the Defendant’s search and collection methodology for a more transparent process and their collection methods. Burd, at *40-41. However, the Court did not rule on the issue of whether the Defendant had a reasonable collection process or adequate production, because the issue was premature. Id. Witnesses still had to be deposed. That being said, the Plaintiffs could file a new motion if the facts justified it. Id.

Bow Tie Thoughts

Self-collection is like driving a car without brakes. Defensibility requires that litigants document how electronically stored information is identified for collection. This traditionally is done by expert witnesses who use a chain of custody form, documenting search terms, processes, and results as they conduct their investigation. Custodians who are simply looking for ESI in Outlook, not documenting their process with any form of notes, run the huge risk of having an indefensible collection methodology. Moreover, one can argue that a lawyer could not certify the production under Rule 26(g) because the collection process was unreasonable.

Archiving solutions are a huge help to large organization in enacting litigation holds. Many have the ability to sequester custodians by date range and keywords. Alternatively, an expert witness can develop the proper collection methodology for the computer system in use. Once the data is defensibly collected, it can be reviewed for relevance by attorneys.

There is always a justified desire to control litigation costs. However, the discovery workflow of preservation, collection, review, and analysis cannot be shifted to custodians performing self-collection. Litigation requires forensic software used by experts and eDiscovery software used by attorneys to competently practice law.

My advice: put the brakes on self-collection.

Remembering Jack Halprin

JackHalprinJack Halprin was a great legal mind in eDiscovery. Jack was smart, had a sharp sense of humor, and a profoundly decent person. His passing leaves a void for those who called him friend.

I met Jack shortly after I began my career in eDiscovery in 2006. One of his colleagues said his nickname was “Happy Jack,” because of his cheerful personality. I found his nickname to be extremely accurate. Every project with him was a grand adventure.

We first presented together at CEIC, focusing on how to preserve electronically stored information and computer forensics. We had a seminar series together where we went from computer forensics to the Federal Rules of Civil Procedure and trial presentation. I had a lot of fun on that series with Jack.

Jack unknowingly called me with a job prospect within an hour of my mother’s death. He knew I had been laid off and was looking for a new job. He called out of thoughtfulness and offered kind words for my mother’s passing.

Those who knew Jack will miss him. I offer his family my sincere condolences. Jack was an outstanding human being who left this Earth far too early.

Pinning Down Admissibility


Admissibility of electronically stored information cases are almost always in criminal cases.

The Pinterest v Pintrips infringement litigation has excellent analysis by US District Court Judge Haywood Gilliam, Jr., on the admissibility of email messages and news articles in civil litigation.

Email Admissibility

Pinterest offered two email messages as evidence of confusion. Pinterest argued the emails put Pintrips on notice of confusion by third parties. Pinterest, Inc. v. Pintrips, Inc., 2015 U.S. Dist. LEXIS 76545, *2 (N.D. Cal. June 12, 2015). As such, Pinterest argued the evidence would be relevant to Pintrips state of mind for the allegation of willfulness and intent. Id.

The Court agreed the emails could be admitted for the non-hearsay purpose of showing Pintrips’ knowledge and intent. Pinterest, at *3. Moreover, Pintrips objections to the relevancy of the email went to the weight of the evidence, not its admissibility. Id.

The first email exhibit was a consumer email to Pintrips’ customer support regarding her password and log in credentials for her Pinterest account. Id. The Court held this email was relevant and admissible to show confusion. Id.

The Court rejected the hearsay exception arguments for the second email. The email was a message from a third party to Pintrip’s CEO with the statement, “[w]hen you say it out loud it sounds like [P]intrips . . .” Pinterest, at *4.

The Court explained the declarant was not expressing confusion herself at the names of the companies, but her opinion that the names sounded similar. Id. The declarant’s statement did not qualify under the “present sense impression” or “state of mind” exceptions to the hearsay rule and thus were inadmissible hearsay. Id.

The Court admitted both messages for the non-hearsay purpose of Pintrip’s knowledge and intent, however, only the first email exhibt was admitted as evidence of consumer confusion. Id.

Admissibility of News Articles

News articles, books, and releases were offered by Pintrips to demonstrate the generic uses of “pin” and “pinning” online. Pinterest, at *4-5. Pinterest opposed, arguing the prospective exhibits were hearsay. Pinterest, at *5.

The Court stated that there “can be no dispute that evidence of the use of the terms “pin” and “pinning”—both by media publications and other companies—is relevant to the Court’s inquiry.” Id.

The Court found that Pinterest had not cited any authority excluding news articles to show generic uses of terms in trademark cases. Pinterest, at *6. The Court noted that other courts had considered the materials for “the non-hearsay purpose of determining whether a word or phrase is used to refer to the specific goods or services of the plaintiff, as opposed to an entire class of goods or services in general.” Id.

The Court ultimately admitted the exhibits as “evidence that ‘pin’ and ‘pinning’ are words that companies and the media use to describe a particular action in the computing and internet context,” but not for the truth of the matter asserted in the articles. Pinterest, at *7.

Bow Tie Thoughts

Judge Haywood Gilliam, Jr., issued a solid opinion on the admissibility issues in this case.

We do not see many opinions on admissibility in civil litigation, because most civil cases do not get to trial. I have seen admissibility issues arise in summary judgment motions, but most of our admissibility cases are criminal.

The Pinterest v Pintrips litigation gives a good look at the admissibility of ESI in civil litigation. Admissibility is often not conducted in document review during the first pass because it increases time and review costs. I recommend issue coding for admissibility in large cases after the dataset has been narrowed down to what will be used in deposition and motion practice. If email, text messages, or social media posts need to be authenticated, depositions are an ideal time to seek those answers. Determining what exhibits need to be explored at deposition are ideal during admissibility review.