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Databases Lie! Successfully Managing Structured Data, the Oft-Overlooked ESI

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Cite as: Conrad Jacoby, Jim Vint & Michael Simon, Databases Lie! Successfully Managing Structured Data, The Oft-Overlooked ESI, 19 RICH. J.L. & TECH 9 (2013), available at http://jolt.richmond.edu/v19i3/article9.pdf.

 

By Conrad Jacoby,* Jim Vint,** & Michael Simon***

 

[1]        Legal professionals regularly advise clients to ensure that the storage, retention, and accessibility of their Electronically-Stored Information (“ESI”) is in full compliance with all legal and regulatory requirements in the event this information becomes relevant in civil, criminal, or regulatory disputes.  However, what many practitioners may not realize is that the ESI that clients are required to produce for e-discovery includes both “unstructured” and “structured” data.  Searching and producing only one of these types of ESI may well not fully satisfy a client’s full discovery obligations.  Even worse, it might not present a full understanding of the factual issues in the matter and how to best prove them to the legal team.

 

I.  What Is “Structured Data?”

[2]        Most legal professionals are extremely familiar with “unstructured” or “loose” data, even if they do not necessarily know it by these terms.  Simply put, unstructured data refers to e-mail messages, word processing documents, spreadsheets, and presentations, among other things—in other words, human-readable information that is commonly sought as potentially relevant ESI in discovery.[1]  Structured data, on the other hand, refers to information residing in electronic repositories or silos, such as transactional and financial databases.[2]  Unlike unstructured data, which typically exists as static and self-contained files that are preserved, collected, processed, reviewed, authenticated, and admitted into evidence as stand alone documents, structured data exists as segments of information inside a larger system, one that is often quite complex and contains many parts.[3]  A database record, the closest analog that structured data has to a “document,” may not actually exist until a user performs some action through the database system to assemble a number of separate fields that could reside in many different parts of the system.  For this reason, information stored in a database cannot be placed into a standard e-discovery review system that has been optimized to view and categorize unstructured data.

[3]        The ESI stored in databases and other structured data repositories is every bit as relevant and discoverable as the loose files that are more commonly requested.  Federal Rule of Civil Procedure (“FRCP”) 34 is clear and unambiguous on this point:

Rule 34.  Producing Documents, Electronically Stored Information, and Tangible Things, or Entering onto Land, for Inspection and Other Purposes

(a) In General.  A party may serve on any other party a request within the scope of Rule 26(b):

(1) to produce and permit the requesting party or its representative to inspect, copy, test, or sample the following items in the responding party’s possession, custody, or control:

(A) any designated documents or electronically stored information—including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations—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[.][4]

[4]        Unlike the discovery of unstructured data, for which a number of best practices have emerged, it has been difficult for the legal industry to develop best practices for the treatment of structured data in civil discovery due to the vast diversity of size, scope, and features found in different database systems.  The Sedona Conference®, a non-partisan legal think-tank founded in 1997, formed a group in early 2009 to study the issues surrounding the discovery of structured data—culminating in the publication of The Sedona Conference® Database Principles Addressing the Preservation and Production of Databases and Database Information in Civil Litigation (hereinafter the “Sedona Database Principles”) in April 2011.[5]  The Sedona Database Principles expand upon the original publication, The Sedona Principles: Best Practices Recommendations & Principles for Addressing Electronic Document Production (hereinafter the “Sedona Principles”),[6] as they specifically apply to databases and set out six additional precepts that provide practical suggestions for simplifying the discovery of structured data and clarifying the obligations of both the requesting and producing parties.[7]  An overarching theme of the Sedona Database Principles is that better communication between parties, their legal advisors and agents, and information technology professionals will substantially improve the management of this type of specialized ESI in legal disputes.[8]  To that end, the Sedona Database Principles specifically reference many of the precepts of the Sedona Principles that address and encourage cooperation between the parties.[9]

 

II.  How Does Structured Data Become Relevant?

[5]        Databases frequently record historical transactions and information that is relevant in litigation and investigations.  One would certainly expect that enterprise-level systems like Oracle and SAP, not to mention financial and transactional systems, human resource tracking systems, data warehouses, and content management systems (“CRM”), would all contain structured data.  However, other commonly used systems, including Cloud-based “Software-As-A-Service” (“SaaS”) systems, also feature the same back-end structured data systems as more obvious “database” systems.  Thus, structured data has largely replaced loose documents for tracking information for these and other similar functions: accident/incident reporting systems, call center records and associated data analytics, world wide web servers, point of sale systems, and social media.

[6]        The cumulative volume of data in business-related structured data repositories is immense and is projected to grow at an estimated annual rate of nearly twenty percent.[10]  Perhaps even more important to e-discovery practitioners, a recent survey about the state of discovery in civil litigation has shown that e-mail, the central focus of e-discovery requests for over fifteen years, is no longer the leading requested item.[11]  Instead, database and application data are now more often requested.[12]

[7]        An increasing number of litigation disputes involving “high profile” companies have made demands upon litigants to review, disclose, and produce at least portions of their databases.  Several examples are explored below.

[8]        The plaintiffs in In re eBay Seller Antitrust Litigation, an antitrust class action, sought production of transactional data from defendant eBay.[13]  The court granted the motion in part and eBay objected, claiming that the information sought did not already exist in easily compiled form, requiring eBay “to spend hundreds of thousands of dollars to dedicate a highly specialized engineering resource for a period of more than six months to create new data
” solely for the matter.[14]  However, eBay’s own submissions in support of the objection contained three different estimates, ranging from a low of $179,000 to a high of $300,000.[15]  Moreover, eBay’s employee in charge of data warehouse development declared that the provided estimate could vary “by as much as five hundred percent.”[16]  The court first disposed of eBay’s argument that it could not be required to create anything new, finding that FRCP 34(a)(1)(A) supported the magistrate’s finding that the technical burden of creating the new material did not excuse production.[17]  In light of the hundreds of millions of dollars at stake in the action involving a defendant with billions of dollars in annual gross profits, and considering that the magistrate had already scaled back the scope of discovery, the court found no clear error in the magistrate’s determination that the potential costs and technical requirements were not unduly burdensome.[18]

[9]        In another case, a plaintiff injured by a sink that fell from a high storeroom shelf sought production of the database that the defendant, Lowe’s, used to record and track accident and injury claims.[19]  The trial court ordered Lowe’s to present a witness with knowledge and access to the system and to print out all requests for accidents occurring before the date of the plaintiff’s injury.[20]  Notably, Lowe’s objected that: (1) it had already produced a printout from the database of all falling merchandise claims for its stores within the state for the last five years; (2) the remaining portions of the database were not relevant; (3) the manner in which accident information was gathered and stored was a trade secret; (4) the purpose of the database was not for safety-related information; and (5) there was no way to restrict production of privileged or non-relevant information.[21]  The appellate court agreed with Lowe’s in part and limited the plaintiffs from accessing data without limitation as to time, place, or subject matter.[22]

[10]      In Procter & Gamble v. Haugen a plaintiff appealed from the dismissal of his Lanham Act and tortious interference claims which resulted in part from the court sanctioning it for failing to preserve relevant database information.[23]  Procter & Gamble (“P&G”) claimed that agents of a competitor spread false rumors that the company supported Satanism, using the profits from forty-three products to do so.[24]  P&G and its expert witnesses used the services of a third party vendor, Information Resources Incorporated (“IRI”), to track potential lost sales of the forty-three involved products.[25]  IRI used a database that gathered purchase information from retail stores into electronic market share databases.[26]  IRI’s databases stored data on a “rolling” basis so that data was kept only for a period of time before it was deleted from the system to make room for more data.[27]  Defendants requested production of all of the information that P&G used from the IRI databases and when P&G was unable to produce all of this information, the court found that P&G had spoliated the data and dismissed the matter as a sanction.[28]  On appeal, P&G focused on the fact that it was only a subscriber to the IRI database, did not own or control the system, and therefore could not have practicably provided the information to defendants.[29]  P&G could have provided direct access to the system to defendants, but this would not have covered all of the information they sought.[30]  P&G would have had to pay over thirty million dollars to obtain all of the information from IRI and even if it had, it would not have had sufficient storage capacity for the data.[31]  The court of appeals found that the district court had failed to address the fact that P&G did not “possess” the data and along with the defendants’ failure to prove prejudice, reversed the sanctions order.[32]

[11]      In another case involving a Lanham Act claim, a plaintiff sought discovery about the defendants’ sales of an alleged infringing product. [33]  One of those defendants, Wal-Mart, responded with 1,771 pages of Bates-stamped documents that represented a print-out of the tabular view of the raw data within its sales database.[34]  Plaintiff claimed that the printouts, with line item data arranged by columns and UPC codes, was “indecipherable” and thereby an insufficient response.[35]  The court was “convinced” that Wal-Mart’s burden in deriving the information from the database was “significantly less” than on the plaintiff since Wal-Mart controlled the system.[36]  For this reason, the court granted plaintiff’s motion to compel a more sufficient response from Wal-Mart.[37]

[12]      Finally, in an Americans with Disabilities Act claim, the Equal Employment Opportunity Commission (“EEOC”) sought to compel production of portions of the human resources database of a Supervalu and Jewel-Osco, major national food retailers.[38]  The EEOC originally sought broad production of information from the human resources database, but narrowed its requests after a meet and confer session to employee hiring, transfer, and termination records, along with job postings for the subject time period.[39]  The EEOC premised its request on the defendants’ own FRCP 30(b)(6) testimony that “this sort of analysis could be completed” and that defendants’ “types of database are designed for this sort of production at minimal expense.”[40]  Defendants first claimed that they did not have the particular database tool activated in their system to allow them to provide the information requested by the EEOC.[41]  Defendants then objected to the scope and burden of the request, claiming that the information would cover over 180 locations and 100,000 employees (when there were only 108 claimants) and that it would take their IT personnel over a week to write the code necessary to obtain the data.[42]  The court found that the EEOC had not established that the relevance or benefit of the information outweighed the burden and expense of producing it and thus denied the motion to compel.[43]

 

III.  Can a Party Wait to Deal with Structured Data until that Information Has Been Requested?

[13]      The information contained in databases can make the difference between winning and losing a case.  The Sedona Database Principles makes this statement as a matter of
plain fact: “Information contained in databases may be the best source for establishing certain facts in a legal dispute.  Information stored in this format also may be useful, if not essential, for analyses such as sorting, calculating, and linking to answer quantitative questions presented in a case.”[44]

[14]      It is a simple matter to move from the abstract language of the Sedona Database Principles to concrete situations.  Unstructured data, particularly e-mail, instant messages (“IM”), and typical “office” documents (i.e., Microsoft Word, Excel, and PowerPoint) provides evidence of the communication of activities—who knew what and when.  People will write e-mail and text messages to others concerning what they did.  Similarly, they will draft documents to memorialize actions that they have taken.  In contrast, the structured data in transactional and financial databases provides direct evidence of the action—how, how much, and how often.  The financial system will show that money was moved and the time and accounts involved.  A transactional application will record the supervisor’s approval of the money transfer.  Thus, the database systems provide a way to “follow the money” and recreate what happened, even if the communications record is incomplete or, in the case of fraud or shady dealing, deliberately obscured.  For this reason, some have called structured data “forgotten data”—“perhaps the single biggest missed opportunity for de
fense in e-discovery.”[45]

 

IV.  Planning for Discovery of Structured Data

[15]      Databases, especially major, enterprise, or department-level systems, are often highly complex and highly customized.  The discovery of structured data typically requires specific expertise with experience in deciphering data structures, relationships, and connections to other systems.  The Sedona Database Principles is filled with warnings about the need for expert assistance,[46] and it likens the act of trying to handle discovery requests involving structured data without such knowledge as “akin to seeing a thousand-piece jigsaw puzzle without an illustration that shows the final completed puzzle.”[47]

[16]      Seeking information stored in structured data repositories also requires more planning—and often more efforts at cooperation between the parties—than traditional e-discovery.  Parties that do not meet and confer before commencing structured data requests may well find that the court sends them back to square one.[48]  Many reasons exist for this heightened need for additional proactive planning and discussion, but none may be more pressing than the fact that downstream production requirements will control the early stage EDRM work conducted in Preservation, Collection, and Processing, and even potentially as far back as the critical Identification phase of e-discovery.

[17]      It should come as no surprise that the Sedona Database Principles places particular emphasis on one of the core principles from the original Sedona Principles:

Sedona Principle 3: The Early “Meet and Confer”

“Parties should confer early in discovery regarding the preservation and production of electronically stored information when these matters are at issue in the litigation and seek to agree on the scope of each party’s rights and responsibilities.”

Sedona Principle 3 is especially applicable in the context of database discovery because of the complicated technical and logistical questions raised by the storage of information in databases.  Database discovery may entail some of the most expensive and complex discovery in a litigation matter, and meaningful conversations between the parties early in the litigation can substantially reduce confusion and waste of resources.[49]

[18]      Challenges to the discovery of information stored in structured data repositories can occur from both opposing parties and litigants.  Many of the solutions for best using data from databases require the creation of a new view or analysis that differs from the way that the information is used in the ordinary course of business.  Responding to structured data requests is likely to require new reports, new extracts directly from the systems, or even entirely new systems to analyze data.  Attorneys are often not comfortable with this process, especially since information about how these new views of structured data were created may have to be disclosed to the other side if challenges arise as to the adequacy of the proffered discovery response.  Thus, it is critical to complete a full and frank discussion, between all stakeholders—each side and each role (Legal, IT, outside expert)—that clearly sets out all expectations before any work begins.

[19]      The first issue that practitioners are likely to confront during the e-discovery process involves the specific elements that will be extracted from the database.  In some situations, it may be necessary to preserve and collect elements that would not normally be considered “content,” such as reports, formulas, pick lists, reports, queries, and the like.[50]  For example, FLSA class action litigation often revolves around issues of how companies determined which employees were exempt from overtime and which were non-exempt; formulas within the HR and payroll systems applying these standards become critical.[51]  Fraud cases that center around who knew what and when could require the recreation of standard reports and views that were used at the time of the alleged suspicious activity.[52]  Such elements will almost certainly require rigorous preservation and collection methods, such as a complete database copy or a restored full back up, as outlined below.

[20]      In most cases, practitioners will need to focus solely on database content: the fields and records.  With this approach, legal teams must anticipate potential issues as they either use or produce this information.  Concerns include: (1) a need for completeness and usability of the data set; (2) availability of the data and technical feasibility of any planned search and retrieval Methods; and (3) cost.  Each concern is explored in turn below.

A.  A Need for Completeness and Usability of the Data Set

[21]      The fact that some of the data within a database may be relevant does not mean that the entire database must be produced.  Sedona Database Principle 1: Scope of Discovery clearly speaks to this point: “Absent a specific showing of need or relevance, a requesting party is entitled only to database fields that contain relevant information, not the entire database in which the information resides or the underlying database application or database engine.”[53]

[22]      Will legal teams require a complete set of data or merely an extensive subset of potentially relevant records?  For a small subset of data, a surgical approach will likely suffice.  However, if a complete dataset will be required for further analysis, the scope of database preservation, collection, and production will be much more extensive.  Date ranges for activity or database information creation may be helpful at this stage.

[23]      Does the team require a picture of the information present at a particular point in time?  If so, a snapshot of the data or the system will likely accomplish these objectives.  To create a historical record, a trend line, or to illustrate changes over time, more comprehensive preservation and collection will be required.

B.  Availability of the Data and Technical Feasibility of any Planned Search and Retrieval Methods

[24]      Structured data systems have a variety of capabilities and technical capacity.  Many of the older legacy systems can be very limited in how one can manipulate and export data.  Thus, before making any plans—or worse, commit to a regulator or the other side in litigation as to a methodology or deliverable data—it is critical to determine whether the target system includes the necessary capabilities.  The answer to this question will vary by the circumstances of each case, but some of the questions highlighted in Comment 2B of the Sedona Database Principles[54] provide a good starting point:

Can a user run searches within the system, other than those built specifically for the intended business uses of the database?[55]

Will the searches bring back complete information (i.e., all the requested data)?[56]

Is there information stored outside of  fielded tables?[57]

Does the producing party have custody and control of the database, such that it can access the “back end” of the system to export data, create custom reports, or otherwise access the system outside of normal business use?[58]

Does the system support third party tools that might be more efficient at querying the data?[59]

Does the system have reporting capabilities?[60]

Does the system support the creation of custom reports?

[25]      The answers to these and other questions will directly impact the extent to which a case team can preserve, collect, and ultimately produce the data stored w
ithin a database system.  It is crucial that qualified personnel correctly provide this essential foundational information.  It may be necessary to support such statements with documented expert evidence.  Given a lesser evidentiary showing, the courts have shown little sympathy for such claims, particularly when made by sophisticated corporations.[61]

C.  Cost

[26]      Structured data discovery has the potential to be more costly than “standard” requests.  It is imperative that parties have a strong understanding of the potential costs associated with structured data discovery.  Courts have become particularly sensitive over recent years to knee-jerk undue burden and cost claims under FRCP 26(b)(2)(B) that lack concrete documented support.[62]  This concern is yet one more reason why retaining experienced experts, who can attest to costs encountered in similar situations, may be critical to adequately educate both courts and requesting parties.

 

V.  Handling Structured Data within the EDRM

[27]      The Electronic Discovery Reference Model (“EDRM”) has come to provide an industry-accepted workflow for e-discovery across the litigation lifecycle.  Discovery of structured data can generally proceed within the EDRM framework, though a number of modifications may be required because of the unique requirements inherent in handling this type of ESI.  Virtually all structured data projects will require the application of an IT concept known as “ETL,” which is the acronym for Extract, Transform, and Load.  A good working definition for ETL is:

ETL is short for extract, transform, load, three database functions that are combined into one tool to pull data out of one database and place it into another database.  [Extract] is the process of reading data from a database.  [Transform] is the process of converting the extracted data from its previous form into the form it needs to be in so that it can be placed into another database.  Transformation occurs by using rules or lookup tables or by combining the data with other data.  [Load] is the process of writing the data into the target database.[63]

[28]      ETL is required in e-discovery for the simple reason that most business-oriented database systems (e.g., Peoplesoft, Cognos, Oracle Financials, specialized procurement software, and SQL databases) are designed to meet specific business needs and do not inherently “speak” to each other.  Hence, ETL permits different data formats to be assimilated or aggregated in a unified source for analysis.  This saves time querying multiple databases in various coding languages to try to quantify an impact, establishing relationships with the data across systems, and providing meaningful results to counsel and client.

[29]      For structured data, a typical workflow involves an ETL overlay of several EDRM phases, beginning with Identification and typically running through Preservation and Collection, and at times into the Processing phase.  This process is illustrated in the figure reproduced in the Appendix.

A.  Identification

[30]      The Identification phase for structured data is likely to require substantially more experience than it normally would for unstructured data systems.  Large-scale enterprise database systems, such as Oracle, SAP and PeopleSoft, are highly complicated and customized, requiring advisors with specialized expertise to understand them.  This complexity may even be considered a trade secret and thus protected by the software vendor.[64]  Even small-scale systems as simple as Microsoft Access databases are often customized and connected to other systems in ways that are both unexpected and poorly documented.  Older structured data repositories that fall into the categories of legacy data, obsolete hardware, and retired systems may present particular concerns since the documentation that existed at one time may no longer be available or accurate.  Further, the employees who created and maintained these systems may be long gone from the company, having taken with them any institutional knowledge about these systems.

[31]      For all of the above reasons, Sedona Principle 6: Responsibilities of Responding Parties is particularly applicable to and significant for the discovery of structured data.  Sedona Principle 6 reads: “Responding parties are best situated to evaluate the procedures, methodologies, and technologies appropriate for preserving and producing their own electronically stored information.”[65]  The Sedona Database Principles further apply this guidance to the discovery of structured data in Database Principle 2: Accessibility and Proportionality, which states: “Due to the differences in the way that information is stored or programmed into a database, not all information in a database may be equally accessible, and a party’s request for such information must be analyzed for relevance and proportionality.”[66]

[32]      However, the fact that a producing party is generally better situated to evaluate methodologies and burdens does not mean that the responding party can and should examine and evaluate such information unilaterally.  In accord with the Sedona Database Principles’ focus on cooperation between the parties, Database Principle 3: Use of Test Queries and Pilot Projects recommends that the parties work together, starting with the sharing of database and system documentation or even going so far as to create test queries and pilot projects.  It states: “Requesting and responding parties should use empirical information, such as that generated from test queries and pilot projects, to ascertain the burden to produce information stored in databases and to reach consensus on the scope of discovery.”[67]

[33]      Key goals in the identification phase should include:

Determining which systems are likely to include data that might need to be used or produced;

Establishing the current status and availability of the data, such as whether it is still within live data systems, in legacy systems, in archives, on backup media, offline, legacy or retired systems;[68]

Locating the data, as many database systems have parts spread out among many physical locations, often in remote server farms or co-location facilities;[69]

Ascertaining who controls those systems (a vendor, such as SalesForce or other third party, rather than the client/litigant, may actually have possession and day-to-day control over the database itself);

Understanding the functional purpose of those systems, both for which they were created and potentially for any later purpose or purposes for which they may be currently used;[70]

Determining the capabilities and limitations of the current system or media holding the data—an important step that will set practical boundaries for how data can be preserved, collected and processed;

Assessing the costs and burdens of obtaining—and if necessary restoring—the data from its current storage repository; and

Evaluating the potential benefit of obtaining the data.

[34]      Data flow and entity relationship diagrams can be particularly useful in tracking down database connections, assuming the company has taken the time to create such documentation.  This documentation augments the more technical documentation involved with data mapping and a data dictionary or schema.  Data mapping, which is a list of how enterprise systems interconnect (sometimes prepared as a list, but sometimes created as an actual graphical map),[71] can make the difference between the success and failure of the project.  Structured data systems connect to other systems within
the enterprise, often to many systems and in surprising ways.  Missing those connections can mean missing necessary inputs, outputs, and related or relevant data.

[35]      A data dictionary or schema shows the type of data that is in a system, how it is organized and named, and the relationships between that data as it sits in fields and tables.[72]  Since structured data systems are often complicated and expensive, these tools tend to have long lives and may have changed purpose or focus over time.  As it can be burdensome to modify an underlying data table structure, newer data may be stored in repurposed fields or tables that may not be properly named or intended for the current use.  Such informal modifications are rarely fully documented unless a conscious (and recent) effort has been made to build a schema.  However, as underscored by Comment 1B of the Sedona Database Principles, data that could initially appear to be irrelevant may in fact be relevant because of its relationship and connection to other data fields.[73]  Thus, it is no surprise that the Sedona Database Principles propose that the responding party has a duty to provide the requestor with the information needed to convey a “basic understanding” of the database system.[74]

[36]      A final challenge in the identification phase is that the most common users of these structured data systems, the end-users or “customers” who query the substantive information stored in the database, are unlikely to be experienced IT professionals.  These users rarely have the time, knowledge, or ability to wade through technically confusing scenarios that a legal case team may pose.  A case team must take this into account and plan to interview a mix of end-users and database-knowledgeable IT professionals in order to build a reasonable understanding of a complex structured data repository in active use.

B.  Preservation and Collection

[37]      One of the most troubling aspects of e-discovery is that ESI has a tendency to disappear unless properly preserved.  Backup tapes get recycled, e-mail servers are purged of ex-employee accounts, and hard drives from the laptops of ex-employees are reformatted and reused.  Depending on the specific system at issue, some structured data repositories may be even worse in this regard.  While much unstructured data is lost due to human action, certain types of common structured data systems are specifically designed to eliminate or overwrite data regularly and automatically, without anyone’s direction or oversight.

[38]      These repositories stand in contrast to databases comprised of historical information, such as customer relationship management systems, complaint or incident databases, and financial systems used to determine trends, which are typically designed to log all inputted information.  In these systems, where one of their intended uses is long-term “data mining” for analytical purposes, the danger that information will disappear is appreciably less.

[39]      High volume transactional systems tend to overwrite data or regularly purge old data as the need for historical data is often limited and the volume of data that would build up over time would become prohibitively expensive to store.[75]  This problem is well known and the drafters of the 2006 FRCP Amendments who added the rules on ESI specifically noted that “many database programs automatically create, discard, or update information” and “that suspending or interrupting these features can be prohibitively expensive and burdensome.”[76]  Thus, practitioners assisting in a matter that touches these types of data systems will need to act quickly to preserve this type of system to avoid being left with incomplete data or none at all.[77]

[40]      Another unique wrinkle to the discovery of structured data is that the lines between the Preservation and Collection phases tend to blur.  For structured data, the information that is preserved is often exactly what is collected.  Most unstructured formats include potentially responsive files that are moved from at-risk locations (laptop hard drives, USB flash drives, unsecured network file stores, e-mail inboxes, etc.) to secure, locked down media or formats, pending further analysis.  In contrast, non-purging structured data typically needs to be collected from the underlying system to be preserved.  Thus, an already deadline-intensive e-discovery process can become more fraught with difficult-to-make and far-ranging early decisions.

[41]      It is important, however, to reemphasize that the fact that a database contains relevant information does not mean that the entire system must be locked down under a legal hold.  Sedona Conference Principle 5: Duty of Preservation places a practical limit on the expectations of the parties: “The obligation to preserve electronically stored information requires reasonable and good faith efforts to retain information that may be relevant to pending or threatened litigation.  However, it is unreasonable to expect parties to take every conceivable step to preserve all potentially relevant electronically stored information.”[78]  Thus, parties can use a number of different methods to collect and preserve structured data; the choice will be driven not by the impossible expectation of perfection, but by the circumstances of the case and the project scope questions previously discussed in “Planning for Discovery of Structured Data.”[79]  Each of these collection methodologies has advantages and disadvantages.  Improperly applied, some methodologies have the potential to harm the information integrity of the underlying database and therefore, need to be used carefully or may need to be discussed more fully with the requesting party before moving forward.

1.  Forensic Collection of the Live Database

[42]      Some disputes may require preservation and production of a complete copy of the database system.  For example, this may be necessary where questions exist about the integrity or functionality of the database as a whole or if there is a need to manipulate the data in some way other than just as a historical record.

[43]      Collecting an entire database has some advantages, such as in situations where the complete dataset or evidence must be preserved.  This method presents the path of least resistance to key issues of data verification and authentication in that data can be verified through MD5 or SHA-1 hash codes to authenticate it as the basis for its admissibility as factual evidence.  Complete collection also presents the safest route against spoliation as any changes to a database in active service will not impact the version that was collected and is now out of tinkering hands.

[44]      That said, copying an entire structured data repository also has disadvantages when compared to other information collection methodologies.  The first disadvantage is cost.  Unless the system is small (e.g., desktop computer-based), the sheer size of a data repository may require large amounts of storage media, significant IT investment, and costly disruption to corporate operations.  In addition, accessing a collected data repository may require building a comparable hardware and software environment to load, search, and otherwise manipulate the data.  Enterprise-level infrastructure for this task is likely to be quite costly, even on a short-term leased basis.  For older legacy systems, it might not even be possible to copy the system and even if were possible, duplicating the computer systems on which the information resides might have long become unavailable.  Contractual rights may prevent this collection methodology.  In the case of databases accessed over “the Cloud,” copying the database as a whole is strictly forbidden both by license and deliberately-created technical constraints.[80]

[45]      It is im
portant to note that the preservation and collection of an entire database is rarely required for most legal disputes.  Most e-discovery requests involve only a subset of structured data.  Thus, collecting an entire database to preserve only a small amount of information within it incurs additional time and expense to search, cull, and select data, all of which will have to be done outside of the easy confines of an e-discovery review tool.

2.  Restoration of Backups from the Database

[46]      Similar in outcome, but potentially less burdensome, disaster recovery backups of a structured data repository may be used to preserve and collect databases.  Most organizations have regular business continuity backups of their key systems and it may be less onerous to divert one of these data snapshots than it would be to make a full copy of the live database.  However, the same disadvantages apply as making a copy of the system, along with some additional challenges that may make this potential methodology inappropriate in many situations.

[47]      Backup media may contain not just data regarding the database at issue, but also data from completely different systems as well.  Separating this information will require additional time and expense and may be complicated by data privacy requirements, such as HIPAA, that require the enactment of significant security measures for the removal of data.[81]  In addition to these costs, backup media must be restored, again requiring time, IT expertise, and suitable hardware to which the system image can be restored.[82]  Finally, backup systems are far from perfect and failure rates, while not as high as they have been even in the recent past, are still in the words of a highly-respected industry analyst, “not acceptable.”[83]

3.  Extracting Select Information from the Database

i.  All Fields/Data

[48]      A more selective and thus more efficient alternative to collecting an entire repository is extracting the substantive data from the system and exporting it into a generic data format that can be read by multiple databases.  The success of data collection using this methodology is relatively simple to test, using one of several established techniques.  In addition, if the extraction process is handled according to IT industry standard practices and properly documented, authentication should also be relatively straightforward.  Capturing a full set of the underlying data permits a case team to defer filtering and culling decisions to a later date, pushing back some expense until it is truly necessary.

[49]      Collecting database information through data extraction has some drawbacks.  As with other techniques that capture the entire data set, much of what is collected will be irrelevant and will need to be filtered out before any review or production.  This can be a lengthy, disruptive, and expensive process.  It is important to note that extracting the complete data set does not mean that all of the capabilities of the original database will be available.  Much of the value of many database systems stems from the computed values and analysis obtained by applying algorithms to source data.  Capturing raw data alone is often not adequate to collect this high-value relational information as well.[84]  The full extract, transform, and load process may be required to derive potentially critical information.

ii.  Selected Fields

[50]      Because databases typically track much more information than is relevant to a particular legal matter, it may be possible to extract select information stored within it.  Such selection can be applied along two axes: (1) limiting data extraction to a subset of database records and selecting them through an appropriate search query; and (2) limiting data extraction to only a subset of fields within a database record.  Often, both limitations are applied in the same export.  This approach has clear advantages in terms of cost, data volume, and amount of time required to complete the requested data extraction.  However, by the same token, leaving behind some of the validating information found in a database field may make the extracted information more difficult to authenticate.

[51]      Identifying and extracting the relevant data depends on three things: (1) knowledge of the system; (2) understanding of the matter; and (3) skill at creating queries.  Deficiencies in any one of these areas may complicate this effort.  In addition, because not all of the data in a database is collected using this methodology, there is some risk if the database has an information purging function built into it.  It may not be possible to fix mistakes if the initial selection criteria turn out to be incomplete.  Fortunately, when cooperation exists between all participants and parties in the process, this collection methodology can be both efficient and cost-effective for everyone.

iii.  Sample Fields (and Potentially Reiterations as Needed)

[52]      When the existence or non-existence of potentially relevant information is an open question, a final form of data extraction is to export sample database records.  The process can be repeated reiteratively, even incorporating suggestions from the requesting parties.  Properly conducted, this approach may permit a structured data repository to be dismissed as a source of potentially relevant information or it may hone the criteria required to identify and extract appropriate information.  Either way, approaching such an investigation cooperatively, rather than unilaterally, may enhance the defensibility of this approach.[85]

[53]      Selected sampling incorporates the risk factors that arise when extracting only select information from a database.  This approach adds a fourth potential failure point: the need for competence in generating appropriate sample sets and testing them for potential relevance.  Because of the highly selective nature of this approach, rigorous documentation is required to answer questions that may arise later as to the adequacy of how this methodology was applied.

4.  Reports

i.  Using Existing Reports

[54]      Existing (i.e., “canned”) database reports that are used for business purposes can be a useful first step for collecting structured data.  First, the total data volume will be much lower than other methods unless the reports are themselves massive.  However, as Comment 1F of the Sedona Database Principles highlights, even voluminous reports may still be appropriate to produce even with the inclusion of additional non-responsive information, as this could be the easiest, least expensive, and least burdensome way to obtain and produce the information so long as the producing party is not doing so for any improper purpose.[86]  Second, existing reports were created and generated for business purposes and thus have typically been “pre-validated.”  The accuracy of the information presented has been accepted as accurate and reliable as the basis for business decisions.[87]  This can greatly simplify post-production validation and authentication.  Third, these reports are typically minimally intrusive for an organization.  The report templates and underlying queries have already been created and used in the ordinary course of business so no custom workflow must be developed.  Fourth, especially with respect to Cloud-based/SaaS type proprietary systems, reports may be the only way to retrieve data from a system.

[55]      Unfortunately, the use of existing reports is not a perfect collection solution.  These reports were designed for specific business needs, not the needs specific to a legal dispute.  For this reason, existing reports rare
ly provide the information that is specifically requested.  They typically provide too much or too little.  A troubling problem, and one that is less well understood, is the fact that reports tend to not be “pure” output from the system.  Many database reports are compilations and aggregations of information that are more than raw information output from stored information.  Instead, this raw information may be added, reformatted, or otherwise “tweaked” from the pure source information in the database, sometimes to the point of showing significant deviation from source information.  For purposes of validation and authentication, this can create obvious problems.

[56]      Often, requesting parties do not automatically accept database reports in lieu of direct discovery of the source database.  In addition, it would be unwise to assume that the courts will side with the producing party over this issue without first examining the underlying facts leading to the creation of specific reports.[88]

ii.  Creating Customized Reports

[57]      Another option for data extraction from structured data repositories is to design a custom report.  Custom reports provide greater flexibility than existing reports due to their ability to be limited to relevant data, data fields, and time periods.  Custom reports also help to limit inadvertent disclosure of irrelevant data and can even be used on privileged, confidential, or protected personally identifiable information.

[58]      As a word of caution, not every system allows for the creation of custom reports, and even when this functionality is available, it may be difficult or expensive to use.  Custom reports may face a greater evidentiary hurdle than canned reports used in day-to-day business operations.  However, courts have been somewhat more sympathetic to production objections based on the undue burden of creating expensive custom database reports to comply with incoming discovery requests.[89]

5.  TIFF Image Snapshots

[59]      An older, and now less commonly accepted, way to produce structured data is to capture database output sent to the monitor or to reports and to render these “snapshots” to TIFF image.  This creates an easily preserved form that can be Bates-stamped and for which authenticity can easily be stipulated.[90]  While appropriate in some situations, this production method has fallen out of favor compared to other alternatives since it tends to reduce the fielded nature of the underlying data, thereby turning structured data into flat, inflexible unstructured documents that may or may not contain searchable text.  That being said, certain database systems have such limited data output capabilities that capture of data in this manner may be one of the only options currently available.

6.  Direct Access to the System

[60]      A final method for producing information from a database is to simply let the requesting party or its expert have direct access to that system to run its own queries or reports.  However, most litigants highly disfavor this method as it allows the opposing party potential access to privileged and confidential information within the database.  Courts that have addressed this situation have tended to be receptive to such concerns, requiring that limits be set.[91]  This direct access approach also has significant potential to disrupt in-house IT infrastructure and staff who are likely to be unhappy at opening a controlled organization’s asset to interlopers.  Indeed, the Committee Notes to the 2006 Amendments to FRCP 34 make it quite clear:

The addition of testing and sampling to Rule 34(a) with regard to documents and electronically stored information is not meant to create a routine right of direct access to a party’s electronic information system, although such access might be justified in some circumstances.  Courts should guard against undue intrusiveness resulting from inspecting or testing such systems.[92]

[61]      In addition, granting outsiders access to data repositories containing certain personally identifiable information may violate data privacy laws and create significant (albeit unrelated) liability for the producing party.  For these reasons, direct access to databases and other such systems tends to be granted over objection “only in extraordinary circumstances.” [93]

[62]      No matter what process is used to preserve and collect a database, proper documentation and testing is critical as many of these processes are complicated and mistakes can occur.  Proper documentation and a record of testing will help to demonstrate good faith efforts if these procedures are later called into question.[94]

C.  ECA and Processing

[63]      Once the data has been extracted from its repository, it typically undergoes further transformation so that it can be used in the investigation or litigation context prior to attorneys’ review for substance.  For loose documents, litigants typically apply early case assessment techniques, such as key word or concept filtering, to reduce the data volume.[95]  Unfortunately, such techniques do not apply well to structured data, as this information is largely centered around transactions rather than words and phrases.  Properly processing and limiting the volume of such systems can instead profile the transactions using specific fields, dates, and general ledger codes.  A strong understanding of the system at hand becomes even more important in such situations.

[64]      Traditional culling methods may be more helpful when the extracted data includes free-form text entry fields such as “comment” fields.  Even here, though, because the unified extracted data exists as a single mass of (fielded) information, culling this glob of information can raise evidentiary challenges unless all changes are well documented and ideally, negotiated at least in principle with the requesting party.

D.  Review and Analysis

[65]      Once the data has been processed and preliminary analytics have been applied, it may still need to be reviewed for responsiveness and privilege.  Some structured data can be managed within standard review platforms, especially flat-file reports and data tables rendered as Microsoft Excel spreadsheets.  On the other hand, data extracted from enterprise-grade relational databases cannot be loaded into a review platform with any genuine hope of validly reviewing this information.  As described in the Sedona Database Principles:

Analyzing email messages and discrete electronic files typically involves a team (sometimes a large team) of reviewers and takes place through a document review platform.  Such review and analytical tools, however, are a poor fit for the matrices of information found in tables of extracted database information.  Instead, review of this information may require technically sophisticated analysts to query the data and extract the meaning of its aggregated information.[96]

[66]      A more straightforward approach to reviewing structured data looks not to the data’s abstract relevance, but instead to the significance of its data values.  Certain field information, such as protected private information, may be redacted or stripped, but this is the closest analogy to the parallel review process that takes place in a document review platform.  Otherwise, extracted data is manipulated, queried, and explored.  In addition, once protected and privileged data fields are removed from extracted structured data, no further attorney review of individual data fields is typically required.

[67]      When the content of individual data fields, such as notes or memo fields, require attorney review, the review par
adigm must be further adjusted.  Such a review is complicated by the fact that the information that requires review tends to be stored in a structured manner, but contains unstructured data, such as free text that lacks parameter constraints on length or format.  Technical specialists are typically enlisted to develop secure web-based database review tools that present this information in a reviewable format for redaction purposes.  Certain profiling and culling methods can be employed to reduce the overall volume of information that requires attorney review, but generally, some “eyes-on” attorney review will be required.

E.  Production

[68]      Extraction and Transformation processes largely set the production of structured data.  Information that has been shed as a by-product of transformation processes may now be non-replicable since many forms of extraction do not allow conversion back “upstream.”  You cannot, for example, extract data as reports and then reconstitute the data to produce it as a complete database.  Such is the reason that Sedona Database Principle 6: Form of Production reminds us that: “The way in which a requesting party intends to use database information is an important factor in determining an appropriate format of production.[97]  Comment 6A of the Sedona Database Principles takes this even further by underscoring that “it may be impossible for a responding party to take appropriate steps to provide database information in a reasonably useful format if it has no idea how the requesting party intends to use it.”[98]

[69]      Even if the parties do not avail themselves of the warnings of the Sedona Principles and the Sedona Database Principles and decline to work together to determine a reasonably usable production format, this lack of agreement does not mean that parties are free to produce data in any format they choose.  FRCP 34(b)(2)(E) requires:

(E) Producing the Documents or Electronically Stored Information.  Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

(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.[99]

[70]      Courts have shown that they will be alert to production formats that are not usable.[100]  Courts can also order parties to produce data in particular formats even if it requires the creation of entirely new data sets.[101]  However, at the same time, the full cost of producing structured data does not always fall entirely on the producing party.  In some circumstances, a requesting party may be required to bear the burden and expense of some degree of transformation of the data from the producing party so long as the format of the production was in fact reasonable.[102]

[71]      The Sedona Principles echo the concerns of the courts in Principle 12: Form of Production and Metadata:

Absent party agreement or court order specifying the form or forms of production, production should be made in the form or forms in which the information is ordinarily maintained or in a reasonably usable form, taking into account the need to produce reasonably accessible metadata that will enable the receiving party to have the same ability to access, search, and display the information as the producing party where appropriate or necessary in light of the nature of the information and needs of the case.[103]

[72]      Difficulties can arise when an opposing party requests that structured data be produced in “native format”—that is, the original file format in which producing party keeps the ESI.  Courts have sometimes shown an un-nuanced willingness to enforce general demands for native format production if it is properly and timely requested, or even if that is lacking, if good cause can be shown[104] or absent a showing of undue burden or hardship.[105]  At times, the courts have even required such native file productions from database systems.[106]  Many parties indirectly request this by requesting production of “the entire database.”[107]

[73]      Unfortunately, a “native file” production for structured data can present a number of difficult and unique problems.  First, and most obvious, the proprietary database format in which relevant data is stored may not be readable and thus, not “reasonably usable” to the requesting party.  Handing over to the other side a complete copy of a database system, particularly a world-class enterprise system, is also not a sufficient solution.  The recipient may well need to obtain a licensed copy of the system—a potentially very expensive proposition in the case of high-end database systems—or a near impossible proposition in the case of legacy or obsolete systems that are no longer commercially available (even as they remain protected by copyright and license restrictions from free copying).  Even if a license for the system can be obtained, installation of the system could take weeks or months and success is not always a given.[108]  Finally, even once such hurdles are successfully overcome, the very first use or view of a copied database system is likely to change the information therein, as such systems typically have tracking capabilities that are difficult or even impossible to turn off, making the copy no longer an accurate copy.[109]

[74]      For all of these reasons, more transformative production formats, which change the data from the way it is stored in the ordinary course of business, have become a commonly accepted discovery practice.[110]  In addition, a strong argument can be made that the fielded nature of the raw data, not the proprietary container in which it is stored, is the essential element that provides “native format” flexibility to this information.  If this argument is accepted, further transformation of the data may provide increased accessibility without compromising essential functionality.

 

VI.  Issues Beyond the EDRM

[75]      Because structured data does not fit squarely within an EDRM that was implicitly designed for unstructured data types, it should come as no surprise that additional issues often arise in working with structured data in discovery.

A.  Custody and Control

[76]      A respondent in discovery is only required to turn over what is in their possession, custody, and control.[111]  This obligation extends to traditional materials and ESI alike as well as to unstructured and structured data alike.  Complex databases, however, can challenge the issue of where data is stored and the extent to which it is “owned” by the content creator.  For example, a database may be housed entirely within a corporation and serviced by company IT professionals, so there would be no possession, custody, or control issue.  However, when the database is provided by a service provider, questions about information ownership can and do arise.  The licensing provisions for many Cloud-based SaaS providers hold that while information entered into the outsourced database may be the exclusive property of the database service client, many of the internal database elements that create relationships between this client provided data are proprietary to the point that a client does not have permission to view these
relationships, much less export them in response to a discovery request.[112]  As a consequence, the “owner” of information in these systems—the SaaS client—may not have custody or control over a portion of the ESI that it would have to provide if it hosted the database itself.

B.  Verifying that the Data Collected is Accurate

[77]      Structured data has the unusual property of appearing accurate and precise, even if the substantive information that the database reports is riddled with errors.  This issue can occur because the precision of a database search query or report is separate and distinct from the way in which the source data was created or entered into the system.  For example, operators at a call center may be asked to enter their recollections and remarks about customer questions and complaints.  This information is likely entered quickly as the operators focus on handling as many calls as possible during their shift and it may contain errors.  Yet, when this same information appears in a database report, it is likely to have the appearance of an accurate and truthful statement.

[78]      Sedona Database Principle 5: Data Integrity, Authenticity, and Admissibility considers this issue: “Verifying information that has been correctly exported from a larger database or repository is a separate analysis from establishing the accuracy, authenticity, or admissibility of the substantive information contained within the data.”[113]  Thus, in working with structured data, many practitioners have found it useful to separate these two competing questions about “accuracy.”  It is possible to validate the accuracy of a mechanical data export.  For example, certain reference fields or reference values can be exported with the substantive data and those values verified against the source information in the database itself.  Even something as simple as comparing the number of database records exported against the number of database records returned by a search query is a step in this direction.

[79]      Conversely, practitioners can reserve the right to further challenge the accuracy of the information contained within a structured data repository.  In evidentiary terms, the authenticity of the information—that is to say, the information was accurately exported from a database—can be the subject of a stipulation, but the truthful nature of the information remains subject to standard challenges as to hearsay and general reliability.[114]

C.  Validating Structured Data so that It Can Be Admissible as Substantive Evidence

[80]      Validating structured data is an important consideration when working with this form of ESI.  As noted previously, many practitioners are able to find common ground and negotiate a stipulation that ESI has been accurately exported or copied from the source database.  Authenticity can be mechanically established even though the exported form of the data is unlikely to be identical to the way that the structured data was maintained inside a larger database.  The Sedona Database Principles recognize and address this problem, in Principle 4: Validation: “A responding party must use reasonable measures to validate ESI collected from database systems to ensure completeness and accuracy of the data acquisition.”[115]

[81]      The larger issue, though, is finding a consistent workflow for establishing the reliability of structured data so that it may be admissible for the truth of the information contained therein.  Because structured data is typically exchanged in the form of data exports or reports, at least one court has found that the business record exception to the hearsay rule is inapplicable as grounds for admitting this information for the truth of the matter asserted.[116]  In the case of Vinhee, the court required a detailed showing of how information was entered into a database, including all efforts to identify and correct errors.[117]  The court further required additional foundation about how the underlying database was managed.[118]

[82]      A majority of other courts have imposed a less onerous set of requirements to admit extracted structured data for the truth of the matter concerned.[119]  A key point of argument remains the degree to which substantive information entered into a database has been validated as accurate near or at the time of its creation as structured data.  Systems that include such validation will have their information more easily ruled admissible than more open and less regulated databases.  In such cases, courts may begin to look at some of the Vinhee factors as additional extrinsic evidence required to lay a sufficient evidentiary foundation.

D.  Privacy

[83]      There are many types of database systems that contain vast amounts of private and personally-identifiable information (“PII”) such as HR systems, financial systems, healthcare systems, and customer transaction systems to name a few.  PII resides in some unexpected databases that most would not expect to contain confidential PII.  Web-logging systems, for example, capture unique IP addresses that could be used to track down the identity and location of users.  Such protected information will need to be identified and redacted prior to release of this data to a requesting party.  On the plus side, the same analytical measures that can assist with the extraction of the data can often also be used to locate and redact the confidential data, whether by removing it or replacing it with dummy data.  However, while such systems cannot always be perfect, many privacy laws are written with such perfection in mind so as to be rather unforgiving even as towards minor violations.  Thus, the parties are advised to carefully discuss putting into place protocols, potentially including protective orders, against the possibility of the inadvertent disclosure of PII.[120]

[84]      Unfortunately, that is not the end to the potential problems.  Because database systems tend to be distributed, portions of a system or systems to which it connects may well physically be located across jurisdictions, such as the European Union, that have strict privacy regulations.[121]  Other jurisdictions may not be concerned with the physical location of the data, but instead as to whether the data subjects—those whose information has been collected and stored—live within that jurisdiction.[122]  The penalties for violations of these laws and regulations can be severe, so careful legal consideration of the issues before taking action is well advised.[123]

 

VII.  Conclusion

[85]      Dealing with structured data in e-discovery is something that should neither be ignored nor treated lightly.  A case team may be required to handle structured data because an investigator, regulator or the opposing party requests it, or a case team may need to deal with it just to try to understand and prove its case.  Situations will arise where the proper expert use of structured data is the best or the only way “to follow the money” and figure out what actually happened.  When that situation arises, case teams are likely to need expert assistance to handle the myriad of issues both technical and legal, within the EDRM, and without.

 

Appendix

ETL As Applied to the EDRM Model

 Simon Appendix

*Derived from the Electronic Discovery Reference Model v 2.0, which are used under See Creative Commons Attribution 3.0 United States License. | © 2005-2012 EDRM, LLC.


The Sedona Conference® Database Principles Addressing the Preservation and Production of Databases and Database Information in Civil Litigation[124]

Principle 1: Scope of Discovery

Absent a specific showing of need or relevance, a requesting party is entitled only to database fields that contain relevant information, not the entire database in which the information resides or the underlying database application or database engine.

Principle 2: Accessibility and Proportionality

Due to the differences in the way that information is stored or programmed into a database, not all information in a database may be equally accessible, and a party’s request for such information must be analyzed for relevance and proportionality.

Principle 3: Use of Test Queries and Pilot Projects

Requesting and responding parties should use empirical information, such as that generated from test queries and pilot projects, to ascertain the burden to produce information stored in databases and to reach consensus on the scope of discovery.

Principle 4: Validation

A responding party must use reasonable measures to validate ESI collected from database systems to ensure completeness and accuracy of the data acquisition.

Principle 5: Data Integrity, Authenticity, and Admissibility

Verifying information that has been correctly exported from a larger database or repository is a separate analysis from establishing the accuracy, authenticity, or admissibility of the substantive information contained within the data.

Principle 6: Form of Production

The way in which a requesting party intends to use database information is an important factor in determining an appropriate format of production.

 


* Conrad Jacoby is a Senior Attorney at Winston & Strawn LLP, where his practice focuses on e-discovery issues and litigation information management.  Since 2009, he has served as the founding Editor-in-Chief of The Sedona Conference® Database Principles: Addressing the Preservation & Production of Databases & Database Information in Civil Litigation.  The opinions expressed are those of the authors and do not necessarily reflect the views of their respective firms or clients. This article is for general information purposes and is not intended to be and should not be taken as legal advice

** Jim Vint is a Managing Director at Navigant Consulting, Inc. and runs the Structured Data and Development team within the Technology Solutions group.  He focuses on discovery and disclosure of non-traditional ESI data sources including structured databases.  His clients include global organizations facing regulatory investigations, cross border discovery issues, and general commercial disputes.

*** Michael Simon is Director of Strategic Development for Navigant Consulting, Inc.  Michael, a former practicing attorney, has worked with and counseled clients regarding e-discovery issues and best practices for over a decade.  He frequently lectures on e-discovery, legal technology and Internet law in venues across the United States, including Tufts University, where he has taught as a visiting lecturer.

 

[1] See The Sedona Conference®, The Sedona Conference® Glossary: E-Discovery and Information Management 52 (Sherry B. Harris ed., 3d ed. 2010) [hereinafter Sedona Glossary].

[2] See id. at 49.

[3] See id. at 13, 49, 52 (definitions of “database,” “database management system,” “structured data,” and “unstructured data”).

[4] Fed. R. Civ. P. 34(a)(1)(A) (emphasis added).

[5] See The Sedona Conference®, The Sedona Conference® Database Principles: Addressing the Preservation & Production of Databases & Database Information in Civil Litigation 21 (Conrad J. Jacoby et al. eds., 2011) [hereinafter Sedona Database Principles].

[6] See The Sedona Conference®, The Sedona Principles: Best Practices Recommendations & Principles for Addressing Electronic Document Production 30 (Jonathan M. Redgrave et. al ed., 2d eds. 2007) [hereinafter Sedona Principles].

[7] See Sedona Database Principles, supra note 5, at ii, 8.

[8] See id. at ii.

[9] See id at ii, 8-9.

[10] Nexsan Corp., Registration Statement (Form S-1), at 61 (Jan. 25, 2011), available at http://www.sec.gov/Archives/edgar/data/1133448/000104746911000283/a2200385zex-99_2.htm.

[11] See Information Retention and eDiscovery Survey Global Findings, Symantec 1, 8 (2011), https://www4.symantec.com/mktginfo/whitepaper/InfoRetention_eDiscovery_Survey_Report_cta54646.pdf.

[12] Id.

[13] In re eBay Seller Antitrust Litig., No. C 07-1882 JF (RS), 2009 WL 3613511, at *1 (N.D. Cal. Oct. 28, 2009).

[14] Id.

[15] Id. at *2.

[16] Id.

[17] See id.

[18] See In re eBay Seller Antitrust Litig., 2009 WL 3613511, at *3.

[19] In re Lowe’s Cos., 134 S.W.3d 876, 877 (Tex. App. 2004).

[20] See id. at 877.

[21] Id. at 878.

[22] See id. at 880.

[23] Procter & Gamble Co. v. Haugen, 427 F.3d 727, 730, 732-37 (10th Cir. 2005).

[24] Id. at 731.

[25] Id. at 731-32.

[26] Id. at 731.

[27] Id.

[28] See Procter & Gamble Co., 427 F.3d at 732-33, 735-37.

[29] See id. at 739.

[30] See id.

[31] See id.  In 2013, it may seem unbelievable that a major corporation, like P&G would be unable to afford sufficient storage capacity for this data.  However, when this case was decided in 1995, the court recognized $30 million as a prohibitive storage cost.  See id.

[32] Id. at 739-41.

[33] See Powerhouse Marks, L.L.C. v. Chi Hsin Impex, Inc., No. Civ.A.04CV73923DT, 2006 WL 83477, at *1-2 (E.D. Mich. Jan. 12, 2006).

[34] See id. at *1, *3.

[35] Id. at *3.

[36] Id.

[37] See id. at *4.

[38] EEOC v. Supervalu, Inc., No. 09 CV 5637, 2010 WL 5071196, at *1 (N.D. Ill. Dec. 7, 2010).

[39] Id. at *6-7.

[40] Id. at *6.

[41] Id. at *7.

[42] Id.

[43] Supervalu, Inc., 2010 WL 5071196, at *8, *12.

[44] Sedona Database Principles, supra note 5, at 4.

[45] Courtney Fletcher & Liam Ferguson, E-Discovery: Remembering Forgotten Data, Wall Street & Tech. (Oct. 21, 2009), http://www.wallstreetandtech.com/regulatory-compliance/e-discovery-remembering-forgotten-data/220900032.

[46] See Sedona Database Principles, supra note 5, at 2, 6, 12, 17; see also Douglas Herman, Digital Investigations – Where You Forgot To Look: Why Databases Often Are Overlooked When It Comes Time To Harvest Electronic Data, Metro. Corp. Couns., (Aug. 2006), http://www.metrocorpcounsel.com/pdf/2006/August/22.pdf (“To extract data from a relational structure[,] such as a CRM or ERP database, requires specific expertise and a solid understanding
of the underlying bases of how these databases work.”).

[47] Sedona Database Principles, supra note 5, at 2.

[48] See Rebman v. Follet Higher Educ. Grp., Inc., No. 6:06-CV-1476-ORL-28KRS, 2007 WL 1303031, at *3 (M.D. Fla. May 3, 2007) (Plaintiff’s broad request for data from a database with over 200 million records denied by the court as overbroad; court ordered parties to meet and confer under Rule 26(f) to narrow the request and determine the need versus the burden on the defendant).

[49] Sedona Database Principles, supra note 5, at 8 (quoting Sedona Principles, supra note 6, at 21).

[50] See id. at 24.

[51] See, e.g., Ojeda-Sanchez v. Bland Farms, LLC, No. CV608-096, 2009 WL 2365976, at *3 (S.D. Ga. July 31, 2009) (requiring production of entire database as “metadata” where the formulas within the system were relevant to the issues in a wage and hour class action); see also Sedona Database Principles, supra note 5, at 25 illus. iii.

[52] See, e.g., Goshawk Dedicated Ltd. v. Am. Viatical Servs., LLC, No. 1:05CV2343-RWS, 2007 WL 3492762, at *1 (N.D. Ga. Nov. 5, 2007) (requiring production of database in fraud and truth in lending case required despite respondent’s claim that it was confidential and “the single greatest asset” of the party because the accuracy of the data and algorithms therein was highly relevant to the claims and defenses of the case).

[53] Sedona Database Principles, supra note 5, at 21.

[54] See id. at 27-30.

[55] See id. at 28.  The problem of database systems designed for particular purposes, which are not accessible in the ways required for discovery, was specifically recognized by the Standing Committee of the Judicial Conference in its September 2005 Report Recommending the Adoption of the 2006 Amendments, as a potential form or not “readily accessible” ESI under Rule 26(b): “[D]atabases that were designed to create certain information in certain ways and that cannot readily create very different kinds or forms of information.”  Report of Judicial Conference of the United States on Rules of Practice and Procedure C-42 (Sept. 2005), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/Reports/ST09-2005.pdf [hereinafter Judicial Conference Report].

[56] To optimize database performance, some database systems will only index portions of long, free-form text fields—such as the first few hundred characters—so that search results from such systems may not be complete.  See Sedona Database Principles, supra note 5, at 17, 28.

[57] Some database systems use “look up” tables or “drop down” menus to create pre-defined data entry fields which contain information hard-coded into the system itself, not in any searchable fields.  See id. at 28.

[58] See id. at 29.  With the increasing popularity of SaaS systems, such as Salesforce.com, the business user of a system may no longer have any access to a system beyond their usual user interface.  Id.

[59] See id. at 6 (IT departments are likely to require extensive and time-consuming testing of any third-party system that would be installed inside the corporation, especially if it would connect to a mission-critical system).

[60] See id. at 29.

[61] See, e.g., Zurich Am. Ins. Co. v. Ace Am. Reinsurance Co., No. 05 Civ. 9170 RMB JCF, 2006 WL 3771090 (S.D.N.Y. Dec. 22, 2006); Static Control Components, Inc. v. Lexmark Int’l, Inc., No. 04-84-KSF, 2006 WL 897218 (E.D. Ky. Apr. 5, 2006).  However, this does not mean that the courts will necessarily unreasonable requests.  See, e.g., In re Ex Parte Application of Apotex Inc., No. M12-160, 2009 WL 618243 (S.D.N.Y. Mar. 9, 2009) (two weeks before scheduled trial, a party in patent litigation sent a broad subpoena for data to a competitor, involving data from over 30 years ago; court denied the request after the competitor demonstrated the difficulty of obtaining the data).

[62] See, e.g., Cartel Asset Mgmt. v. Ocwen Fin. Corp., No. 01-cv-01644-REB-CBS, 2010 WL 502721 (D. Colo. Feb. 8, 2010) (rejecting claim that ESI was inaccessible due to burdensomeness after respondents failed to provide specific information regarding their storage practices, the number of storage systems that they would need to search, and their capability to retrieve information from those systems).

[63] What is ETL (Extract, Transform, and Reload)?, Webopedia, http://www.webopedia.com/TERM/E/ETL.html (last visited Mar. 12, 2013).

[64] See Sedona Principles, supra note 6, at 30.

[65] Id. at 38.

[66] Sedona Database Principles, supra note 5, at 26.

[67] Id. at 31.

[68] Legacy and retired systems are commonly found in corporate acquisitions, where an acquired company’s IT systems tend to be, at best only partially migrated over to the acquiring company or simply taken offline.  There may be no current users or administrators of such systems at the current company.  See id. at 14; Herman, supra note 46 (“Some systems, especially those that are older, may have been grouped together as a result of certain corporate mergers and acquisitions and may not be operating efficiently or may not be stable . . . .”).

[69] See Sedona Database Principles, supra note 5, at 13.

[70] See id. at 12.

[71] See Sedona Glossary, supra note 1, at 13.

[72] See Data dictionary, Dictonary.com, http://www.dictionary.reference.com/browse/data+dictionary (last visited Mar. 16, 2013).

[73] Sedona Database Principles, supra note 5, at 23.

[74] Id. at 25.

[75] See, e.g., Procter & Gamble Co. v. Haugen, 427 F.3d 727, 739 (10th Cir. 2005) (finding that the responding party would have to purchase a mainframe computer to download and archive the data at its own facilities or purchase the archival data from the third-party at a great cost).

[76] Judicial Conference Report, supra note 55, at C-83.

[77] However, even if portions of the data from such overwriting systems have disappeared by the time respondent acts, the court may still require production of what remains.  See, e.g., Burkybile v. Mitsubishi Motors Corp., No. 04 C 4932, 2006 WL 3191541, at *4 (N.D. Ill. Oct. 17, 2006).

[78] Sedona Principles, supra note 6, at 28.

[79] See supra Part IV.

[80] See, e.g., Conditions of Use, Sorenson Molecular Genealogy Foundation, http://www.smgf.org/terms/jspx (last visited Mar. 11, 2013); Copyright Information, HyperGeertz, http://hypergeertz.jku.at/Geertzcopyrightinformation.htm (last visited March 11, 2013); Terms of Use, massinvestor, http://www.massinvestordatabase.com/terms.php (last visited Mar. 11, 2013).

[81] See infra Part VI.D.

[82] For these reasons, the Sedona Database Principles actively discourage the use of backup tapes as a methodology.  See Sedona Database Principles, supra note 5, at 11.

[83] Dave Russell, The Broken State of Backup, Gartner, 1, 5-6, http://www.cornerstonetelephone.com/sites/default/files/resources/Gartner_-_The_Broken_State_of_Backup_(6-09).pdf (last visited Mar. 23, 2013).

[
84] See Sedona Database Principles, supra note 5, at 20.

[85] See id. at 31.

[86] Id. at 26.

[87] Id. at 19.

[88] See, e.g., Margel v. E.G.L. Gem Lab Ltd., No. 04 Civ. 1514(PAC)(HBP), 2008 WL 2224288, at *4-6 (S.D.N.Y. May 29, 2008) (ordering respondent to produce the database as well as the reports from the database because the database was not in the same form, under FRCP 34, as the reports).  But see, e.g., EEOC v. Supervalu, Inc., No. 09 CV 5637, 2010 WL 5071196, at *8 (N.D. Ill. Dec. 7, 2010) (rejecting a request that would have required creation of custom report that would have taken two weeks work where requestor could not prove that the relevancy of the data to be obtained was greater than the burden on the respondent).

[89] See, e.g., Soto v. Genentech, Inc., No. 08-60331-CIV, 2008 WL 4621832, at *12 (S.D. Fla. Oct. 17, 2008) (allowing responding party to produce detailed log of data contents in lieu of creation of custom reports that would have required approximately 64 hours of work); see also Getty Props. Corp. v. Raceway Petroleum, Inc., No. Civ. A. 99-CV-4395DMC, 2005 WL 1412134, at *4 (D.N.J. June 14, 2005).

[90] This method was originally suggested by Thomas Allman in an early and seminal review of the then brand-new 2006 ESI FRCP Amendments.  See Thomas Y. Allman, Managing Preservation Obligations After The 2006 Federal E-Discovery Amendments, 13 Rich. J.L. & Tech.. 9, 48 (2007), available at http://law.richmond.edu/jolt/v13i3/article9.pdf.

[91] See, e.g., In re Ford Motor Co., 345 F.3d 1315, 1316-17 (11th Cir. 2003); In re Lowe’s Cos., Inc., 134 S.W.3d 876, 879-80 (Tex. App. 2004).

[92] Fed. R. Civ. P. 34(a) advisory committee’s note.

[93] Sedona Database Principles, supra note 5, at 16.

[94] Id. at 17.

[95] See id. at 3.

[96] Id. at 10.

[97] Id. at 36.

[98] Sedona Database Principles, supra note 5, at 36.

[99] Fed. R. Civ. P. 34(b)(2)(E).

[100] See, e.g., Powerhouse Marks, L.L.C. v. Chi Hsin Impex, Inc., No. Civ.A.04CV73923DT, 2006 WL 83477 (E.D. Mich. Jan. 12, 2006) (showing that the defendant produced financial database by delivering 1,771 Bates stamped pages of print outs of the raw field data).

[101] See, e.g., In re eBay Seller Antitrust Litig., No. C 07–1882 JF, 2009 WL 2524502, at *2 (N.D. Cal. Aug. 17, 2009) (ordering eBay to create a new data set to produce additional responsive documents, despite its Senior Director of Data Warehouse Development’s representation that “it would take an engineer forty-eight hours to format a query, at a cost of $7,200” in order to do so).

[102] See Sedona Database Principles, supra note 5, at 37.

[103] Sedona Principles, supra note 6, at 60.

[104] See, e.g., In re Netbank Sec. Litig., 259 F.R.D. 656, 681-82, 683 (N.D. Ga. 2009); Hagenbuch v. 3B6 Sistemi Elettronici Industriali S.R.L., No. 04 C 3109, 2006 WL 665005, at *3-4 (N.D. Ill. Mar. 8, 2006).

[105] See, e.g., Camesi v. Univ. Pittsburgh Med. Ctr., No. 09–85J, 2010 WL 2104639, at *7 (W.D. Pa. May 24, 2010); see also, e.g., Chevron Corp. v. Stratus Consulting, Inc., No. 10–cv–00047-MSK-MEH, 2010 WL 3489922, at *2-4 (D. Colo. Aug. 31, 2010).

[106] See, e.g., Ojeda-Sanchez v. Bland Farms, LLC, No. CV608-096, 2009 WL 2365976, at *3 (S.D. Ga. July 31, 2009); Perez-Farias v. Global Horizons, Inc., No. CV-05-3061-MWL, 2007 WL 991747, at *3 (E.D. Wash. Mar. 30, 2007).

[107] Michael Spencer & Diana Fasching, Less Production Can be More in Database Discovery, L. Tech. News, Oct. 26, 2012.

[108] Even highly sophisticated corporations have at times experienced disastrous failures in attempting to install and use high-end database systems.  See Ericka Chickowski, Five ERP Disasters Explained, Baseline Mag., Apr. 4, 2009, available at http://www.baselinemag.com/c/a/ERP/Five-ERP-Disasters-Explained-878312/.

[109] See Sedona Principles, supra note 6, at 5.

[110] See id. at 7.

[111] See Tomlinson v. El Paso Corp., 245 F.R.D. 474, 477 (D. Colo. 2007) (requiring a party to turn over data from third-party database of ERISA information because ERISA created clear duties for the employer that negated any claim that such third party data could not be within its possession, custody or control).

[112] See Alberto G. Araiza, Electronic Discovery in the Cloud, 2011 Duke L. & Tech. Rev. 8, 33 (2011).

[113] Sedona Database Principles, supra note 5, at 34.

[114] See Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 538 (D. Md. 2007).

[115] Sedona Database Principles, supra note 5, at 32.

[116] See, e.g., In re Vee Vinhee, 336 B.R. 437, 447-49 (B.A.P. 9th Cir. 2005).

[117] Id. at 448-49.

[118] Id. at 448.

[119] Compare R.I. Managed Eye Care, Inc. v. Blue Cross & Blue Shield of R.I., 996 A.2d 684, 691 (R.I. 2010) (reiterating a four part test for determining the admissibility of business records under the hearsay rule), with In re Vee Vinhee, 336 B.R. at 446 (defining an eleven part test for determining the admissibility of electronic records under the hearsay rule).

[120] See Sedona Database Principles, supra note 5, at 8-9.

[121] See generally Council Directive 90/46/EC, 1995 O.J. (L 281) 39-45 (defining specific privacy protections to be afforded to personal information).

[122] See, e.g., U.S. Dept. of Commerce, Safe Harbor Privacy Principles, export.gov (July 21, 2000), http://export.gov/safeharbor/eu/eg_main_018475.asp (defining protections for U.S. citizens’ data exported to the European Union); see also Commission Decision 2000/520/EC, 2000 O.J. (L 215) 7-9 (accepting U.S. Safe Harbor Privacy Principles).

[123] See, e.g., Datenschutzgesetz 2000 [DSG 2000] Bundesgesetzblatt [BGBl] No. 165/1999, §§ 51-52 (Austria) (imposing up to a year in prison and 25,000 Euro fine per violation).

[124] Sedona Database Principles, supra note 5, 21-38.

E-Discovery as Quantum Law: Clash of Cultures-What the Future Portends

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Cite as: Michael Yager, E-Discovery as Quantum Law: Clash of Cultures—What the Future Portends, 19 RICH. J.L. & TECH 10 (2013), available at http://jolt.richmond.edu/v19i3/article10.pdf.

 

By Michael Yager*

I.  Introduction

[1]        Early in the twentieth century, the phenomenon that is the “quantum”[1] stormed the fortress of classical physics, causing Albert Einstein, one of science’s greatest thinkers, to opine, “[i]t was as if the ground had been pulled out from under one, with no firm foundation to be seen anywhere, upon which one could have built.”[2]  The theoretical laws associated with looking at reality on the quantum level violently collided with those related to looking at the same reality on the macro level.  The application of quantum theory to the mathematically pure and proven classical laws of physics introduced a cultural clash in the world of theoretical physics, which caused many physicists to doubt their very sanity.  This Article argues that developments in the law related to the phenomenon of “e-discovery”[3] have been no less shattering to those practitioners in the classical practice of law than the introduction of quantum theory in physics.  The introduction of “electronically stored information” or “ESI” using the procedural rules designed to govern the classical practice of law created an identifiable shift in jurisprudence related to e-discovery.[4]  Indeed, the introduction of this category of discoverable information caused a cultural explosion within a segment of the legal profession not seen in any other profession since those great thinkers of physics nearly a century ago.

[2]        This Article provides an overview of the clash of cultures extant in the practice of e-discovery related law today along with an entertaining comparative perspective from the viewpoint of a similar clash that occurred in the physical sciences.  The author hopes that by understanding more fully some of the causes of practitioner angst in managing e-discovery obligations, along with a glimpse of what trends can be expected in the future, this phenomenon can be better confronted and managed.

 

II.  Discussion

[3]        Changes in the law are most often driven by reasoned debate over a period of some time and carefully, if not cautiously, embraced by the bench.  Drama is by and large a stranger to the doorstep of the law, except for those moments that attend some social or economic issue with political import, and for the most part is incompatible with the plodding evolution of jurisprudence.  With complete awareness of and respect for the reality comprising the beautifully crafted portrait of the law, which was accomplished over hundreds of years by the many practitioners and judges using the most considerate strokes of the brush, this Article introduces a moment of drama.

[4]        Cultural explosions come in many colors and stripes.  In Europe, the French Revolution comes to mind.  In America, the emergence of an anti-government, anti-authority culture reflected in unprecedented massive national demonstrations across the landscape during the Vietnam War comes to mind.  Few would argue that these two examples do not reflect the clash of cultures between two different worlds of values and beliefs.

[5]        In the classical practice of law, one would expect to find a more subtle representation of such a clash aside from the guillotine of the French Revolution or the Kent State tragedy that captured the culture clash of noble protectors of freedom and dirty hippies protesting without a permit.  While a single image may not express the violence that often accompanies socio-cultural explosions within a nation’s history, its representation of the clash of worldviews can be no less dramatic.  The graphic presented as part of the article “Sanctions for E-Discovery Violations: By the Numbers” published in the Duke Law Journal in 2010 is one such representation. [5]  This graphic, reproduced in the Appendix, shows the increase in the number of cases in which e-discovery related sanctions were sought.[6]  Like the recording instruments of the first experiments in the early days of quantum physics, the explosion documented by this graphic, although not representative of physical violence, paints a portrait of an earth-shattering cultural clash within the realms of classical law and quantum law.

 

III.  A Clash of Cultures

[6]        The classical culture and practice of law are best captured in the days before the FRCP and the 2006 Amendments brought ESI to life.  As with isolated early experimental results in quantum physics, there are instances where courts acted on discovery abuses relating to ESI before those now hallowed amendments found their way onto the pages of the FRCP.[7]  Just like the early theories and experiments in quantum physics, these decisions were mere drops of rain on a landscape that was soon to experience the torrent of a flash flood running beyond the banks of a reasoned river of e-discovery related jurisprudence.

[7]        In “classical law,” discovery was something most often managed down the road after litigators were convinced that a relatively swift resolution of the merits by settlement would not take place short of moving on to more serious stages of the litigation life cycle.  E-discovery was often viewed as one of the steps toward the more deliberate moments of litigation, carrying with it a classical gravity of a sort.  While the FRCP and many state rules before the advent of ESI spoke to the duty of evidence preservation, one is hard pressed to identify more than a handful of litigation hold letters or memoranda from an attorney to a client amongst the tens of thousands of cases litigated before the year 2000.[8]  As the Duke Law Journal graphic indicates, a culture clash surrounding discovery motions practice emerges with ESI and the development of jurisprudence related to discovery preservation and spoliation, the phenomenon of “quantum law.”[9]  The graphic, however, is telling in that with the introduction of ESI into the FRCP, there was a brilliant clash of cultures between classical law and quantum law.  History will determine whether quantum law finds its etiology in the bench, the bar, or a combination of the two, but something continues to drive it in ample measure in the present.

[8]        Indeed, while conducting e-discovery CLEs, references to the Duke Law Journal graphic are accompanied with a simple question: “Why?”[10]  Why, on this graphic of discovery motions practice is over a quarter of a century of relatively flat, nearly negligible bars followed by an explosion of sanctions in the last six to eight years?  If the FRCP were amended, for example, to change the number of days allowed for mailing a response to discovery, or for the filing of an answer to a complaint, would we witness similar widespread non-compliance by attorneys?

[9]        The clash of cultures related to the phenomenon of quantum law has not escaped notice.  As with the introduction of quantum theory in physics, jurisprudence related to e-discovery has slowly begun to spawn incredulous observations.  This incredulity of the present clash is well captured in some of the comments fr
om its historical counterpart in physics.  “The more I think about the physical portion of the Schrödinger theory, the more repulsive I find it,” Werner Heisenberg fulminated.[11]  Indeed, Schrödinger seemed to agree with him, exclaiming at one point that, “[i]f all this damned quantum jumping were really here to stay, I should be sorry I ever got involved with quantum theory.”[12]  Today, running on a course parallel to those esteemed scientists’ remarks, one can almost sense the same level of abject disbelief in the words of numerous court decisions resulting from the clash of cultures between classical law and quantum law.  One is particularly poignant:

Once again, this Court is required to rule on an e-discovery issue that could have been avoided had the parties had the good sense to “meet and confer,” “cooperate” and generally make every effort to “communicate” as to the form in which ESI would be produced.  The quoted words are found in opinion after opinion and yet lawyers fail to take the necessary steps to fulfill their obligations to each other and to the court.[13]

[10]      Certain words in these decisions seem to reflect judicial rumination on the quantum law phenomenon and point to a biting and unflattering analysis.  “[L]awyers—even highly respected private lawyers . . . need to make greater efforts to comply with the expectations that courts now demand of counsel with respect to expensive and time-consuming document production.  Lawyers are all too ready to point the finger at the courts and the Rules . . . .”[14]  In the title of his article, “‘Do I Really Have To Do That?’ Rule 26(a)(1) Disclosures and Electronic Information,” United States Magistrate Judge David J. Waxse succinctly captured the attitude of practitioners of classical law who continue to be buffeted by the requirements and impact of ESI.[15]  So widespread is this crash of clashing of cultures that Judge Waxse observed that such disbelief “echo[ed] around the litigation world.”[16]  Practitioners are also taking notice.

[11]      Ralph Losey, an attorney who phased out his general trial practice to fully engage in the e-discovery world, “quickly noticed something [he] had not seen before in any other field of law. . . . case law is dominated by sanctions cases involving spoliation of evidence. . . . [and] attorneys are often directly implicated in this spoliation.”[17]  Losey expressed early wonderment at the world of quantum law, “wonder[ing] if [he] had stepped into a crazy zone of the law.”[18]  Brad Harris and Craig Ball—the former an expert practitioner and the latter an attorney and one of the foremost national experts on e-discovery law—suggest that “[t]he growing urgency of this matter . . . touched off a flurry of rulings in the area of legal holds in 2010, with several major court decisions redrawing the map in what had been virtual terra incognita.”[19]

[12]      In the laboratory of quantum law, the results of the “experiments” in the form of an exploding ESI-related motions practice and resulting sanctions were often so bizarre that practitioners of classical law simply refused to accept what was before them.  Up seems to become down and far away now seems too close to bear.  The world of classical law is askew as if stretching to the forces of some unseen black hole.[20]  Simple basic tenets of law steeped in tradition are becoming seemingly meaningless in the world of quantum law.  The bedrock principles of stare decisis and the influence of nonbinding precedence hold no sway in this clash of cultures.  Practitioners now hear that an e-discovery spoliation decision made by a judge in New York’s Southern District might bear on how they should manage discovery in their district in the Fourth or Ninth Circuit.[21]  Respected counsel from respected firms, albeit of the newly emerging practitioner class of quantum law, write things about a single decision by a single judge “promis[ing] to significantly affect the way e-discovery is practiced and litigated in the federal courts.”[22]  Classical law practitioners’ reactions are deep seated and visceral.

[13]      I recall a dear friend a well-seasoned litigator summoning me to a lunch one day shortly after the release of the FRCP 2006 Amendments and the resulting written and reported smatterings of happenings from the world of quantum law began to appear.[23]  My friend inquired: “Do you believe this is something here to stay or just the latest judicial fad?”  I opined that perhaps what we were seeing belonged to the former rather than the latter category, which was answered by a look of despondency. With a panic stricken countenance in stark dissonance to
the once confident and charismatic litigator I had known for many years, my friend exclaimed: “I don’t care what a federal judge tells me to do about this so-called e-discovery.  I am simply not going to do it.  They cannot make my client incur all of these ridiculous costs!”  This was a response that well reflects the anguish that the simple term “ESI” introduced to the world of classical law.  Many classical practitioners felt, for the first time in perhaps storied careers, that the legal landscape over which they had exercised such command and control assumed a foreign and threatening shape.  Their refusal to acknowledge and accept what was fast becoming a new force in litigation to be reckoned with, I suggest, contributed to the phenomenon so well captured by the Duke Law Journal graphic.  It certainly did not escape notice of the editors of the Federal Judicial Center, who noted in the preface to Managing Discovery of Electronic Information: A Pocket Guide for Judges that:

This second edition of the pocket guide on the discovery of electronically stored information (ESI) follows the first—and the related 2006 amendments to the Federal Rules—by more than five years.  These intervening years have seen an explosion of civil case law on ESI.[24]

[14]      While there is room for debate as to the etiology behind this explosion and the reasons behind such wholesale resistance of one culture to another, there can be little doubt that regardless of what we can, tongue in cheek, term the “uncertainty principle”[25] as to a precise description of the cause of the phenomenon before us, before us it is.  Before us, it remains.

[15]      Notwithstanding some observations that suggest even a hint of reconciliation between classical law and quantum law, such reconciliation remains much sought after.  Its elusiveness caused Magistrate Judge John M. Facciola of the United States District Court of the District of Columbia to opine that, “[w]hen the dust settles 10 years from now and the scholars sit down cooperation will be seen as the most significant development from e-discovery.”[26]  Obviously, Judge Facciola believes that cooperation among counsel will resolve the effects that the clash of cultures caused and restore some sense of balance to what has been a tumultuous world of litigation since the advent of ESI.  This sentiment echoes a law firm blog entry a few years ago entitled “Sanctions Down; Cooperation Up; Preservation, Privacy and Social Media Remain Challenging.”[27]  In this blog entry, the authors draw a silver lining around a drop in the number of requests for sanctions in 2010 as compared with 2009, believing it “reflects greater adeptness by litigants and counsel in e-discovery practice and broader acceptance of cooperation and openness in the e-discovery process.”[28]  The statistics, however, carry with them that seemingly contradictory component typified by the clash of theories in classical and quantum physics.  Any hint of resolution or cooperation between the classical and quantum worlds always seems to leave a statistical “outlier”[29] that defies ultimate peace between the two different approaches of looking at th
e same world.[30]

[16]      While noting the drop, albeit slight, in requests for sanctions and the corresponding sanction decisions, a statistical anomaly that challenges what seems to be on the surface some promising data confronts the authors of the blog on the theme of cooperation increasing in e-discovery.[31]  “Although requests for sanctions decreased, motions to compel more than doubled in 2010, being filed in 43% of all e-discovery cases as opposed to 20% in 2009.”[32]  Like their counterparts in theoretical physics grappling with a bothersome experimental result to a hoped for theory, the blog authors suggest an explanation consistent with the proposed model of cooperation.[33]  To paraphrase, court intervention was sought on only a small number of e-discovery issues in which counsel could not agree with the intimation because this occurred after much cooperation.[34]

[17]      But to some observers, these “laboratory results” from the world of quantum law which indicate a doubling in motions to compel in 2010 with motions filed in “43% of all e-discovery cases” may not be as accommodating or optimistic. [35]  Indeed, it is a difficult argument to make that the spirit of cooperation between counsel, the suggested cause of the decreased number of sanctions, is more strongly attached to attorney behavior than perhaps a growing judicial discretion at the bench in meting them out. [36]  It would seem that the same spirit of cooperation which led to a fewer number of requests for sanctions might be expected to play out at the motions practice level, which is driven solely by attorneys.  It might be a stretch to attribute the doubling in the number of motions to compel in e-discovery cases to counsel who were doing their best to cooperate but got hung up on the narrow technicalities of an e-discovery agreement, otherwise known as a “gosh, we all just missed that” moment.  Filing a motion to compel was simply their last resort.  The data suggest otherwise.[37]

[18]      To attribute a significant learning curve in the ranks of counsel to a decrease in the number of sanctions requested and sanctions ordered would be an understandable rush to judgment in the hope of some promising sign that the tide of the cultural clash is beginning to recede.  One might similarly be impressed by the Equal Employment Opportunity Commission (“EEOC”) Performance and Accountability Report for the 2012 fiscal year, which indicates that the federal government is filing fewer lawsuits against companies.[38]  One could infer from this statistic alone that companies are learning how to better comply with the EEOC requirements for establishing non-discriminatory work environments.  As with the 2010 decrease in the number of e-discovery sanctions, there is an outlier to the decreasing number of lawsuits filed by the EEOC.  “[T]he number of systemic discrimination investigations has increased four-fold.”[39]  At the recent Georgetown Law Advanced E-Discovery Institute annual conference held in November 2012, one observer noted that frustration among the bench with lack of attorney cooperation continues:

Collectively, the group [of Judges] expressed frustration that lawyers were not taking the lead in EDD disputes, and thus, in essence, forcing the judges—rather than the parties themselves—to determine protocols and strategies.  The judges pushed several dominant themes: the need for lawyers to take the “meet and confer” obligations seriously; to educate themselves on technology options; and to be reasonable and realistic about e-discovery protocols . . . .[40]

[19]      This hardly sounds like growing sophistication and cooperation in the world of quantum law.  Rather, it is as if the clash of cultures is still in its infancy, reflecting the reality captured a few years ago in a Federal Judicial Center survey, that “only one in three respondents reported that their 26(f) conference to plan discovery included a discussion of ESI.  More than half of all respondents reported that the conference did not include discussion of ESI.”[41]

 

IV.  What the Future Portends

[20]      In discussing alternative explanations for the conflicting e-discovery data referenced above, it is possible in some measure to argue what the immediate future portends with regard to the practice of the e-discovery component of law and the continuing clash of cultures.  The following loom on the horizon:

A.  A Continuing Increase in E-Discovery Motions Practice 

[21]      A growing number of attorneys, particularly at larger firms or with more sophisticated practices, are becoming increasingly adept at the practice of e-discovery and learning how to better comply with court expectations.  Various federal circuits have initiated programs or local rules which, for the first time, set forth standardized expectations required of counsel.  This had led to an appearance of greater cooperation.  The Suggested Protocol for Discovery of Electronically Stored Information in the U.S. District Court, District of Maryland, and the Seventh Circuit’s Electronic Discovery Pilot Program are two such examples.[42]  More attorneys are attempting to comply with local rules and procedures with regard to e-discovery simply because some now exist where before there were none.

[22]      Litigation practitioners are putting to good use the resulting learning curve among attorneys indexed to increased participation in the e-discovery agreements required by local rules.  But far from meaningful cooperation in resolving e-discovery issues, the doubling of motions practice from 2009 to 2010 and from 2011 to 2012 speaks volumes about what is really occurring.[43]  Practitioners are becoming increasingly skilled and savvy in attempting to leverage the e-discovery advantage to tip the scales in their clients’ favor.[44]  It is much more likely that the doubling of motions to compel reflects this reality of the litigation process.[45]  As participants in an adversarial process, litigators realize that they are advocating on behalf of their client and were not retained to enter the calmer waters of mediation practice.  The future will carry this trend forward as more practitioners become aware that many federal and state courts will impose sanctions against adversaries vulnerable to the dynamic ESI legal environment.  Moreover, the trending of an increase in the imposition of sanctions will result in growing attempts by counsel to leverage this potential tactical advantage in the courtroom.[46]

B.  Double-Dip Inflation in E-Discovery Practice 

[23]      While the American economy is haunted by the threat of double dipping back into a recessionary spiral, e-discovery practice is poised to experience the opposite economic effect.  Indeed, e-discovery is poised to double-dip back into the inflationary spiral that the first clash of quantum law caused, which is a clash that saw the early and memorable monolithic sanctions dispensed in such cases as Qualcomm and Zubulake.[47]  Many of the largest law firms and major e-discovery vendors cut their teeth on these magnificently large and complex cases.  This was the playing field of much of the early e-discovery law.  The practitioners involved in these types of cases are those that experienced the greatest knowledge building within the often-intimidating world of law associated with e-discovery practice.

[24]      As quantum law has made itself known as a practice, there is a growing awareness on the part of many counsel in how to leverage what can be termed the patterns of exposure characterizing e-discovery law.  “Patterns of exposure” have to do with the breadth and depth of e-discovery law on a variety of issues.  As an example, the law relating to the issuance of written litigation finds a hom
e in many federal circuits and thus the pattern of exposure in litigation practice in any circuit is enormous.  Whereas, more specific and narrowly detailed opinions such as Phillip M. Adams & Associates, L.L.C. v. Winbond Electronics Corp., in which the court stated that one of the parties should have anticipated litigation based on other lawsuits happening in the industry, cannot be said to have created a significant exposure footprint; despite being bothersome, the exposure pattern is more slight.[48]

[25]      Newly enlightened practitioners in the art of e-discovery leveraging will see to it that the attendant motions practice and sanctions that confronted early practitioners will bleed down to the small or medium practices and cases.[49]

C.  Growth of the Pool of E-Discovery Victims 

[26]      As the bleed down phenomenon of e-discovery cases runs more quickly from the mountains of large firms and practices to the surrounding hills of the smaller litigation landscape, the borders of e-discovery motions practice will expand beyond those large firms and large cases to include many more victims.  The pool of law firms confronting the exponentially growing world of ESI and its permeation into every corner of litigation of every conceivable size is growing.[50]  Indeed, for every law firm that is developing an acute awareness of the nuances of e-discovery law and of the expertise, both legal and practical, with which to navigate these arguably treacherous waters, there are others that have not.  This is a victim pool.  During the introduction of quantum theories, the scientific method required that the same phenomenon tested in a different laboratory setting must yield the same results.  Results that were incompatible with classical physics eventually overwhelmed it.  Similarly, the early cycle of quantum law will find new life and live again with the growth of the e-discovery victim pool, foreshadowing a growing motions practice and number of associated sanctions with this expanding pool of smaller firms and cases.

D.  An Eventual Flattening of the E-Discovery Motions Practice and Sanctions 

[27]      The relatively recent pushback against rising e-discovery costs by companies of all sizes is a pushback against and a modifying force to the clash of quantum law.  As with the downstream effect of growing e-discovery motions practice, this pushback will reach the newer practitioners who attempt to leverage this power as well.  This reality will be more responsible for cooperation among counsel than the hope that litigators reach some mythic plateau of altruism as noble officers of the court.  Also, as the next cycle of e-discovery practice bleeds down to a larger “victim pool” and runs its course, it should result in a certain equilibrium among practitioners who will know how to better manage the patterns of exposure attendant to ESI and the resulting portrait in jurisprudence related to e-discovery. 

 

V.  Conclusion 

[28]      Rather than doubting intuition, practitioners should heed the lessons of the introduction of quantum physics while observing the changing landscape in e-discovery that results from the clash of cultures between classical law and quantum law.  It may be comforting to classical practitioners that although quantum physics has yet to find a permanent home within the world of its classical counterpart, both now work side by side in what is seen as a quest of mutual interest of explaining the physical universe.  Each acknowledges the other’s legitimate role in the total picture and many of the early conflicts have been resolved.  In time, quantum law will reach equilibrium with classical law and e-discovery practices will become as predictable and acceptable as the filing of a motion in limine or a motion for summary judgment.

Appendix: Figure 1

appendix Figure 1[51]


*Michael Yager is the Director of e-Discovery for Spotts Fain, PC located in Richmond, Virginia.  The author would like to acknowledge with thanks the contributions of Robert H. Chappell, III, and Robert D. Michaux, for applying their considerable editing skills to the manuscript.

[1] “Quantum” is a term introduced by physicist Max Planck in 1900 to describe individual packets of energy as he worked on an equation which represented energy loss in his famous blackbody radiation experiments.  While physics historians spend much effort on the precise etiology of the term as used by physicists, it is widely agreed among them that Planck is best tagged as the father of the quantum.  See David Thyberg, Max Plank’s Quantum Theory, eHow, http://www.ehow.com/about_5439341_max-plancks-quantum-theory.html (last visited Feb. 4, 2013).

[2] Manjit Kumar, Quantum: Einstein, Bohr and the Great Debate About the Nature of Reality 1 (Icon Books Ltd. 2009) (2008).

[3] The term “e-discovery” is shorthand for “electronic discovery.”  For a phenomenon not far out of its infancy, it is not unusual to see a variety of terms come and go.  “EDD” was an early favorite of many, standing for “electronic data discovery.”  Both terms broadly refer to all of the elements of discovery which attend electronically stored information.

[4] The Federal Rules of Civil Procedure (“FRCP”) were amended in 2006 to introduce this new category, “electronically stored information,” as material to be preserved as part of a party’s discovery obligations.  See K&L Gates, E-Discovery Amendments to the Federal Rules of Civil Procedure go into Effect Today, Elec. Discovery L. (Dec. 1, 2006, 2:27 PM), http://www.ediscoverylaw.com/2006/12/articles/news-updates/ediscovery-amendments-to-the-federal-rules-of-civil-procedure-go-into-effect-today/.

[5] Dan H. Willoughby, Jr. et al., Sanctions for E-Discovery Violations: By the Numbers, 60 Duke L. J. 789, 795 fig.1 (2010).

[6] See infra Appendix: Figure 1.

[7] Compare Ill. Tool Works, Inc. v. Metro Mark Prods., Ltd., 43 F. Supp. 2d 951, 953, 960-61 (N.D. Ill. 1999) (holding that sanctions against defendants in misappropriation of trade secrets action were warranted for violation of discovery order by tampering with computer that had been ordered to be produced), with Koken v. Black & Veatch Constr., Inc., 426 F.3d 39, 53 (1st Cir. 2005) (finding that the district court did not abuse its discretion by refusing to impose monetary sanctions for party’s alleged failure to timely provide documents, particularly electronic documents, during discovery).

[8] Litigation hold letters, also known as legal holds, are instruments, most often an email or correspondence, issued from counsel and/or company management to individuals identified as likely custodians of potentially relevant ESI (as well as paper documents) in an action, or an anticipated action.  Each custodian will have numerous potential data locations that must be preserved and the litigation hold speaks to this in general and specific terms.

[9] See Willoughby et al., supra note 5.

[10] The author is the instructor of The E-Discovery Challenge: Practice and Ethics, Virginia Mandatory Continuing Legal Education, Course No. JAA0017, in which he discusses this graphic
.

[11] Kumar, supra note 2, at 155.

[12] Id.

[13] Nat’l Day Laborer Org. Network v. U.S. Immigration & Customs Enforcement Agency, No. 10 Civ. 3488(SAS), at 25 (S.D.N.Y. Feb. 7, 2011), available at http://ccrjustice.org/files/Doc%2041%202-7-11%20Opinion%20and%20Order%20re%20Form%20of%20Production.pdf, withdrawn, 2011 WL 381625 (June 17, 2011).

[14] Id.

[15] David J. Waxse, “Do I Really Have To Do That?” Rule 26(a)(1) Disclosures and Electronic Information, 10 Rich. J.L. & Tech. 50 (2004), at http://law.richmond.edu/jolt/v10i5/article50.pdf.

[16] Id. at ¶ 8.

[17] Ralph Losey, Ethics of Electronic Discovery – Part One, e-Discovery Team (Mar. 4, 2012, 9:18 PM), http://e-discoveryteam.com/2012/03/04/ethics-of-electronic-discovery-part-one/.

[18] Id.

[19] Brad Harris & Craig Ball, What’s There to Hold On To? An Enlightened Approach to Data Preservation in the Era of the Legal Hold, Corp. Couns., Feb. 14, 2011.

[20] “Black holes” are phenomena known in physics which describe an area of space in which the gravity is so great that all matter around it literally swirls down it into nothingness.  Not even light can escape. See generally Stephen W. Hawking, A Brief History of Time: From the Big Bang to Black Holes 81-82 (1988) (discussing this marvel of science).

[21] See, e.g., Philip Yannella & Abraham Rein, Zubulake Revisited: Pension Committee Decision Offers Spoliation Guidance, Dechert LLP, http://www.dechert.com/files/Publication/aa5656f7-126b-404d-8f1d-d4905fe60d7f/Presentation/PublicationAttachment/04cbec1f-b3b5-435a-8085-dd7bee3d5ee7/2-10_PROD-LIAB_Yannella_Rein_Zubulake_Revisited.pdf (last visited Feb. 4, 2013) (discussing Pension Comm. of the Univ. of Montreal Pension Plan v. Banc of Am. Sec., L.L.C., 685 F. Supp. 2d 456, 464-69 (S.D.N.Y. 2010), abrogated by Chin v. Port Auth. of N.Y. & N.J., 685 F.3d 135 (2d Cir. 2012)).

[22] Yannella & Rein, supra note 21.

[23] See Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 253 (D. Md. 2008); In re Subpoena Duces Tecum to AOL, L.L.C., 550 F. Supp. 2d 606, 608-09 (E.D. Va. 2008); Nucor Corp. v. Bell, 251 F.R.D. 191, 192 (D.S.C. 2008); Qualcomm Inc. v. Broadcom Corp., No. 05cv1958-B (BLM), 2008 WL 66932, at *2-3 (S.D. Cal. Jan. 7, 2008); PSEG Power N.Y., Inc. v. Alberici Constructors, Inc., No. 1:05-CV-657 (DNH/RFT), 2007 WL 2687670, at *1 (N.D.N.Y. Sept. 7, 2007); Modern Eng’g, Inc. v. Peterson, No. 07-CV-1055, 2007 WL 2680563, at *2 (C.D. Ill. July 16, 2007); Strauss v. Credit Lyonnais, S.A., 242 F.R.D. 199, 205 (E.D.N.Y. May 25, 2007); Calyon v. Mizuho Sec. USA Inc., No. 07CIV02241RODF, 2007 WL 1468889, at *1 (S.D.N.Y. May 18, 2007); Hagenbuch v. 3B6 Sistemi Elettronici, No. 04 C 3109, 2005 WL 6246195, at *1 (N.D. Ill. Sept. 12, 2005); Zubulake v. UBS Warburg, L.L.C., 229 F.R.D. 422, 424 (S.D.N.Y. 2004).

[24] Barbara J. Rothstein, Ronald J. Hedges & Elizabeth C. Wiggins, Managing Discovery of Electronic Information: A Pocket Guide for Judges 1 (2012), available at http://www.fjc.gov/public/pdf.nsf/lookup/eldscpkt2d_eb.pdf/$file/eldscpkt2d_eb.pdf.

[25] See generally Kumar, supra note 2, at 232.  The “uncertainty principle” was developed by one of quantum physics’ great contributors, Werner Heisenberg, who postulated the theory that quantum mechanics “forbids, at any given moment, the precise determination of both the position and the momentum of a particle.”  Id.  It was not possible to know one, without increasing the uncertainty in knowledge about the other.  Id.

[26] Michael Roach, Judge Facciola Addresses Competency, Ethics, and E-Discovery, L. Tech. News, June 22, 2012.

[27] Bennett B. Borden et al., Sanctions down; Cooperation up; Preservation, Privacy and Social Media Remain Challenging, Williams Mullen (Dec. 17, 2010), http://www.williamsmullen.com/news/sanctions-down-cooperation-preservation-privacy-and-social-media-remain-challenging.

[28] Id.

[29] An “outlier” is a statistical anomaly outside a group of otherwise patterned observation. See Webster’s Third New International Dictionary 1602 (Philip Babcock Gove ed., Merriam-Webster Inc. 2002) (defining “outlier” as “something that . . . is situated . . . away from a main or related body: as . . . a statistical observation not homogeneous in value with others of a sample”).

[30] See Sue Reisinger, Kroll Study Sees Dramatic Drop in E-discovery Sanctions, Corp. Couns., Dec. 6, 2012, http://www.law.com/corporatecounsel/PubArticleCC.jsp?id=1202580414356&Kroll_Study_Sees_Dramatic_Drop_in_Ediscovery_Sanctions.  Reisinger seems to make a similar stretch by suggesting that an attorney “learning curve is evident because the percent of prominent cases that imposed sanctions on parties, which had been on the rise, actually declined a whopping 10 percent in 2012, according to Kroll. . . . The [Kroll] survey, which used a non-scientific sampling of 70 major cases, found that the number of procedural disputes more than doubled over last year’s figures.”  Id.  Again, the outlier.  It is interesting that the statistics for Reisinger’s 2011-2012 comparison mirror the results of the Borden article two years earlier.  See Borden et al., supra note 27.  Thus, a more than doubling of e-discovery motions practice from 2009 to 2010, and again from 2011 to 2012.

[31] See Borden et al., supra note 27.

[32] Id.

[33] See id.

[34] See id.

[35] Id.

[36] See Borden et al., supra note 27.

[37] See id.

[38] See Sue Reisinger, EEOC 2012 Report Shows Fewer Discrimination Suits, More Investigations, Corp. Couns., Nov. 30, 2012, http://www.law.com/corporatecounsel/PubArticleCC.jsp?id=1202579787314&EEOC_2012_Report_Shows_Fewer_Discrimination_Suits_More_Investigations&slreturn=20130014154033.

[39] Id.

[40] Monica Bay, Impatient Judges Push Lawyers to Dive into E-Discovery, L. Tech. News, Dec. 7, 2012, http://www.law.com/jsp/lawtechnologynews/PubArticleLTN.jsp?id=1202580623520&Impatient_Judges_Push_Lawyers_to_Dive_Into_Ediscovery.

[41] Patrick Oot, Anne Kershaw & Herbert L. Roitblat, Mandating Reasonableness in a Reasonable Inquiry, 87 Denv. U. L. Rev. 533, 539 (2010) (citing Emery G. Lee III & Thomas E. Willging, Federal Judicial Center National, Case-Based Civil Rules Survey: Preliminary Report to the Judicial Conference Advisory Committee on Civil Rules, Fed. Jud. Center 1, 15 (Oct. 2009), http://www.fjc.gov/public/pdf.nsf/lookup/dissurv1.pdf/$file/dissurv1.pdf).

[42] See, e.g., Suggested Protocol for Discovery of Electronically Stored Information (“ESI”), United States District Court for the District of Maryland, available at http://www.mdd.uscourts.gov/news/news/ESIProtocol.pdf (last visited Feb. 4, 2013); Principles Relating to the Discovery of Electronically Stored Information, 7th Circuit Electronic Discovery Committee (Aug. 1, 201
0), available at http://www.discoverypilot.com/sites/default/files/Principles8_10.pdf.

[43] See Borden et al., supra note 27; Reisinger, supra note 30.

[44] See Ralph Losey, E-Discovery Gamers: Join Me in Stopping Them, e-Discovery Team (June 3, 2012, 6:01 AM), http://e-discoveryteam.com/2012/06/03/e-discovery-gamers-join-me-in-stopping-them/.

[45] See 2011 Mid-Year E-Discovery Update, Gibson Dunn 1-2 (July 22, 2011), http://www.gibsondunn.com/publications/Documents/2011Mid-YearE-DiscoveryUpdate.pdf.

[46] The author has personally witnessed settlements ensuing quickly after a party realizes, often too late to be cured, that a potentially costly, if not fatal, e-discovery mishap yielded the adverse party a trump card.

[47] Qualcomm Inc. v. Broadcom Corp., No. 05CV1958-B (BLM), 2008 WL 66932 (S.D. Cal. Jan. 7, 2008), vacated in part, No. 05CV1958-RMB (BLM), 2008 WL 638108, 88 U.S.P.Q.2d (BNA) 1169 (S.D. Cal. Mar. 5, 2008); Zubulake v. UBS Warburg, L.L.C., 229 F.R.D. 422 (S.D.N.Y. 2004).

[48] Phillip M. Adams & Assocs., L.L.C. v. Winbond Elecs. Corp., No. 1:05-CV-64 TS, 2010 U.S. Dist. LEXIS 85120, at *12-13, *15-16 (D. Utah Aug. 17, 2010).

[49] Broadly speaking, practitioners at small and medium sized firms have escaped confronting the challenge that is quantum law in their practices while their colleagues at larger firms managing mega cases bore the brunt of this phenomenon in its early days. See generally Richard N. Lettieri, Mid-to-Small Law Firm Alert: Overcoming the Growing E-Discovery “Skill Gap”, The Advocate, Feb. 2012, at 12-14, available at http://www.lettierilaw.com/documents/the_advocate_02_2012.pdf.

[50] See id. at 13-14.

[51] Willoughby et al., supra note 5.

Social Media Evidence in Government Investigations and Criminal Proceedings: A Frontier of New Legal Issues

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Cite as: Justin P. Murphy & Adrian Fontecilla, Social Media Evidence in Government Investigations and Criminal Proceedings: A Frontier of New Legal Issues, 19 RICH. J.L. & TECH 11 (2013), available at http://jolt.richmond.edu/v19i3/article11.pdf.

 

By Justin P. Murphy and Adrian Fontecilla*

I.  Introduction

[1]        As the newest pillar of communication in today’s society, social media is revolutionizing how the world does business, discovers and shares news, and instantly engages with friends and family.  Not surprisingly, because social media factors into the majority of cases in some respect, this exploding medium significantly affects government investigations and criminal litigation.  Social media evidence includes, among other things, photographs, status updates, a person’s location at a certain time, and direct communications to or from a defendant’s social media account.  This Article will examine the importance of social media in government investigations and criminal litigation, including access to and use of social media evidence, constitutional issues that social media evidence raises, the authentication and admissibility of such evidence, in addition to the impact of social media on jurors.

 

II.  The Importance of Social Media

[2]        Social media use is widespread.  Ninety-one percent of today’s online adults use social media regularly, which has become the number one activity on the web.[1]  “People continue to spend more time on social networks than any other category of [web]sites,” accounting for “20% of their time spent on PCs and 30% of their mobile [use] time.”[2]  Social media use in the United States alone has increased by 356% since 2006.[3]  52% of Americans now have at least one social media profile,[4] more than one billion people use Facebook actively each month,[5] and 32% of all Internet users are now using Twitter.[6]  Notably, some of the largest growth in the last year has been among forty-five to fifty-four year old Americans, 55% of whom now have a profile on a social networking site.[7]

[3]        There are hundreds of social networking websites with each catering to a different demographic and providing a different type of content.[8]  Moreover, their users are constantly creating massive amounts of data.  “Twitter users send [one] billion tweets every two and a half days,”[9] Instagram users upload forty million images every day,[10] Facebook users share 684,478 pieces of content every minute, and YouTube users upload forty-eight hours of new video every minute.[11]  Social media users create more than just photos, videos, and tweets.  They share other information, such as their location as well.  “As of 2012, [seventeen] billion location-tagged posts and check-ins were logged.”[12]  The myriad and continually changing ways to share information via social media has resulted in a digital goldmine of potential evidence, such as profiles, lists of friends, group memberships, messages, chat logs, tweets, photos, videos, tags, GPS locations, likes, check-ins, and login timetables.[13]

[4]        The information that social media providers make available is staggering.  When a phone company responds to a government subpoena or search warrant, it may provide call or message logs.  In contrast, when a social media company like Facebook responds to a government subpoena, it could provide the user’s profile, wall posts, photos that the user uploaded, photos in which the user was tagged, a comprehensive list of the user’s friends with their Facebook IDs, and a long table of login and IP data.[14]  In addition, with the advent of location-based services that social media companies like Facebook, Twitter, and FourSquare offer, precise location information will be increasingly maintained in the ordinary course of business and subject to the same subpoenas and search warrants.[15]  One newsworthy example demonstrating the amount of information available to law enforcement from a simple photograph is that of John McAfee, the antivirus company founder who was recently on the run from law enforcement authorities investigating the murder of his neighbor.  McAfee was forced out of hiding when it was found that a photo of him published on a blog was embedded with GPS metadata pinpointing his exact location in Guatemala.[16]  Not surprisingly, each social media request can yield admissions or incriminating photos in addition to other evidence.[17]

 

III.  Accessing Publicly Available Social Media Evidence

[5]        It is no secret that government agencies mine social networking websites for evidence.  Even without having to seek a warrant from the court or issue a subpoena, there are troves of social media evidence publicly available.[18]  For example, the New York Police Department has a social media unit that mines Facebook, Twitter, and other social media sites for evidence of crimes and potential criminal activity.[19]  Moreover, a majority of government agencies are active participants who contribute content and solicit information through social media.[20]  Given the amount of information publicly available and the avenues that the government has to seek out such information, usually the government does not need a search warrant, subpoena, or court order to obtain social media evidence.

[6]        There are countless cases involving defendants who are arrested because of information, photos, or admissions posted to social media sites.  For example, a defendant in Kentucky was jailed after he posted a photo of himself siphoning gas from a police car onto Facebook.[21]  Another defendant broke into a Washington, D.C. home to steal a coat, a laptop, and cash, subsequently using the victim’s laptop to post a picture of himself wearing the stolen coat and holding up the stolen cash to the victim’s Facebook page.[22]  The photo was used later to secure a guilty plea from the defendant.[23]  While some sites allow users to control what content the public can access, many users do not make use of such tools.  In fact, twenty five percent of Facebook users do not use any type of privacy controls.[24]

[7]        In addition to searching for publicly available evidence, government agents are allowed to go further than defense counsel in pursuing social media evidence for a criminal proceeding.  To bypass the need for a search warrant, government agents may pierce the privacy settings of a person’s social media account by creating fake online identities or by securing cooperating witnesses to grant them access to information.[25]  For example, in United States v. Meregildo, the defendant adjusted the privacy settings on his Facebook account so that only his Facebook “friends” could view his postings.[26]  The government obtained the incriminating evidence against the defendant through a cooperating witness who happened to be Facebook “friends” with the defendant.[27]  The defendant moved to suppress the evidence seized from his Facebook account, arguing that the government had violated his Fourth Amendment rights.[28]  The court found:

Where Facebook privacy settings allow viewership of postings by “friends,” the Go
vernment may access them through a cooperating witness who is a “friend” without violating the Fourth Amendment. . . . While [the defendant] undoubtedly believed that his Facebook profile would not be shared with law enforcement, he had no justifiable expectation that his “friends” would keep his profile private.  And the wider his circle of “friends,” the more likely [the defendant’s] posts would be viewed by someone he never expected to see them.  [The Defendant’s] legitimate expectation of privacy ended when he disseminated posts to his “friends” because those “friends” were free to use the information however they wanted—including sharing it with the Government.[
29]

[8]        Recently, federal authorities relied heavily on social media to build their case against four defendants who were allegedly involved in an Al Qaeda inspired terrorist cell based in California.[30]  The criminal complaint, which included a section titled “Defendants’ Social Media,” provides a glimpse into the various ways that law enforcement uses social media in its investigations.[31]  The investigators used an “online covert employee” who posed as a terrorism sympathizer to elicit damaging statements from the defendants, recorded Skype conversations between a confidential informant and the defendants, and relied on the social media content that each defendant “liked,” “shared,” or on which the defendant commented.[32]

[9]        The Securities and Exchange Commission also recently issued a Wells Notice for the first time based on a social media communication.[33]  On December 5, 2012, Netflix disclosed that it had received a Wells Notice from the SEC Enforcement Staff for allegedly violating public disclosure rules when its CEO, Reed Hastings, posted onto his Facebook with more than 200,000 followers that, “Netflix monthly viewing exceeded one billion hours for the first time ever in June [2012].”[34]  After receiving the notice, Hastings noted in a letter to shareholders that, “[W]e think posting to over 200,000 people is very public, especially because many of my subscribers are reporters and bloggers;” nevertheless, the SEC has provided no formal guidance concerning the use of social media, Regulation FD, and communications with the investing public. [35]

 

IV.  Social Media Companies, Subpoenas, and Warrants

[10]      Given the digital goldmine of potential evidence available from social media companies, it is not surprising that they are increasingly targeted in search warrants and government subpoenas in criminal matters.  For example, Twitter “received more government requests” for user information in the “first half of 2012 . . . than in the entirety of 2011.”[36]  In addition, approximately 80% of those requests were from authorities in the United States.[37]  Google, which operates social networking sites including YouTube and Google+, continues to receive subpoenas and search warrants in criminal matters at a rapidly accelerating pace.  Statistics published by Google, which “primarily cover requests in criminal matters,”[38] show that the number of Google user data requests received from government authorities in the United States more than doubled from 2009 to 2012 and that the United States accounts for over 39% of user data requests received from government authorities around the world.[39]

[11]      Moreover, the prevalence of social media evidence in criminal proceedings will continue to proliferate as government agencies continue to formally train their personnel to search for and collect social media evidence.  A recent survey of over 1,200 federal, state, and local law enforcement professionals reveals that social media is widely used to assist in investigations, few learned how to use social media for investigations through formal training, and “74% of those not currently using it . . . intend to start using it.”[40]  Moreover, the case law is already replete with instances in which the government obtained social media evidence through a warrant or subpoena directed at a social media company.[41]  Social media evidence is the new frontier of criminal proceedings and it raises unique legal challenges, including issues of admissibility and a defendant’s constitutional rights in material that social media companies maintain.

 

V.  Accounting for the Stored Communications Act

[12]      Federal law provides that in some circumstances, the government may compel social media companies to produce social media evidence without a warrant.  The Stored Communications Act (“SCA”) governs the ability of governmental entities to compel service providers, such as Twitter and Facebook, to produce content (e.g., posts and tweets) and non-content customer records (e.g., name and address) in certain circumstances.[42]  Passed in 1986, the SCA has not been amended to reflect society’s heavy use of new technologies and electronic services, such as social media, which have evolved since the SCA’s original enactment.[43]  Consequently, courts will continue to play a critical role in defining how and whether the SCA applies to the varying features of different social media services by applying precedent from older technologies, such as text messaging pager services or electronic bulletin boards.[44]

[13]      The SCA provides that non-content records can be compelled through a warrant or court order.[45]  With regard to the compelled disclosure of communication content, the SCA provides different levels of statutory privacy protection depending on how long the content has been in electronic storage.[46]  The government may obtain content that has been in electronic storage for 180 days or less “only pursuant to a warrant.”[47]  “The government has three options for obtaining communications . . . that have been in electronic storage with an electronic service provider for more than 180 days: (1) obtain a warrant; (2) use an administrative subpoena; or (3) obtain a court order under § 2703(d).”[48]

[14]      At least one Circuit Court of Appeals has called into question the constitutionality of the SCA.[49]  In United States v. Warshak, the Sixth Circuit held that “the government agents violated the Fourth Amendment when they obtained the contents of [defendant’s] e-mails” without a warrant and added that, “to the extent that the SCA purports to permit the government to obtain such e-mails warrantlessly, the SCA is unconstitutional.”[50]  The court reasoned that “[o]ver the last decade, e-mail has become ‘so pervasive that some persons may consider [it] to be [an] essential means or necessary instrument[] for self-expression, even self-identification’” and that therefore, “e-mail requires strong protection under the Fourth Amendment.”[51]  Noting that e-mail was analogous to a phone call or letter and that the internet service provider was the intermediary who made e-mail communication possible, the functional equivalent of a post office or telephone company, the court concluded that given “the fundamental similarities between e-mail and traditional forms of communication, it would defy common sense to afford e-mails lesser Fourth Amendment protection.”[52]  However, Congress made clear that changing the law will require extended consideration when, on December 24, 2012, the Senate removed from proposed legislation an amendment to the SCA that would have prevented authorities from viewing a person’s e-mail messages without obtaining a warrant.[53]  In the meantime, courts will play a key role in clarifying how the SCA applies not only to e-mails, but also to the social media that has rapidly become as pervasive and important to people as e-mail.

 

VI.  Defining a Defendant’s Constitutional Rights Regarding Social Media Evidence

[15]      Courts have also star
ted grappling with novel issues relating to the constitutionality of the government’s use of information obtained from social media companies in criminal proceedings.[54]  For example, a New York appellate court will soon issue an opinion regarding Twitter’s appeal of two court orders in the prosecution of an Occupy Wall Street protestor in People v. Harris.[55]  The trial court held that the defendant lacked standing to move to quash the government’s third-party subpoena to Twitter for his account records and that the Fourth Amendment did not protect his tweets.[56]  The trial court similarly denied Twitter’s motion to quash the government’s subpoenas for the defendant’s Twitter records for the same reasons.[57]  Although Twitter’s appeal is pending, Twitter turned over the data after the trial judge threatened the company with civil contempt and fines, which led to the defendant’s guilty plea in December 2012.[58]

[16]      Notably, the defendant was only able to move to quash the subpoena because “Twitter’s policy is to notify users of requests for their information prior to disclosure,”[59] a policy which is becoming more common among social media companies.[60]  Not only does Twitter notify its users that the company has received a government-issued information request for the user’s data, but it also protects its business by litigating against such third-party government subpoenas.[61]

[17]      On appeal, Twitter argued that the defendant has standing to quash the government’s subpoena because he has a proprietary interest in his tweets, pointing to the express language of Twitter’s Terms of Service.[62]  Moreover, Twitter claimed that the Fourth Amendment protects the defendant’s tweets, primarily because the government concedes that the defendant did not make public the tweets that it sought.[63]  If a defendant has a reasonable expectation of privacy under the Fourth Amendment in his or her non-public e-mails,[64] refusing to afford that same protection to users’ non-public tweets would create “arbitrary line drawing.”[65]  Finally, even assuming that the tweets in question were public, Twitter argued that the government still requires a search warrant under the federal and New York constitutions.[66]  Notwithstanding Twitter’s pending appeal, Twitter complied with a court order requiring it to promptly submit the defendant’s tweets under seal.[67]

[18]      The line-drawing concerns that Twitter expressed in its People v. Harris brief, that a defendant’s reasonable expectation of privacy under the Fourth Amendment in his or her social media records depends on the privacy settings for the particular account in question, were implicated in United States v. Meregildo, a case in which the court held that “[w]here Facebook privacy settings allow viewership of postings by ‘friends,’ the Government may access them through a cooperating witness who is a ‘friend’ without violating the Fourth Amendment.”[68]

[19]      Some courts have concluded that individuals have “a reasonable expectation of privacy to [their] private Facebook information and messages.”[69]  Those courts, while recognizing the importance of properly understanding how Facebook works, distinguished between “private messaging” and posts to a user’s Facebook wall.[70]  Using privacy setting distinctions to determine social media users’ constitutional rights may result in arbitrary line drawing that might evaporate as social media evolves.  Indeed, with Facebook’s customizable and post-specific privacy settings, a person who shares a message by posting it on another user’s wall can actually make it as private as information shared via a Facebook message.[71]

[20]      In addition, it remains uncertain whether, given the sheer breadth of information available in any particular social media account, one can successfully challenge search warrants for entire social media accounts for lacking sufficient limits or boundaries that would enable the government-authorized reviewing agent to ascertain which information the agent is authorized to review.[72]  Ultimately, because an expectation of privacy under the Fourth Amendment is partly a function of whether “society [is] willing to recognize that expectation as reasonable,” social media’s rapid proliferation through today’s society may influence the privacy protections afforded to social media evidence in the future.[73]

 

VII.  Defending a Criminal Case with Social Media Evidence

[21]      Defendants face more significant obstacles than the government when seeking exculpatory evidence from social media companies.[74]  First, defendants and their counsel do not share the government’s freedom to sleuth for publicly available social media evidence, although counsel should have free access to anything his or her client produced or can access.[75]  Ethics opinions issued to lawyers in various states have established that a defendant’s lawyer may not “friend” or direct a third person to “friend” another party or witness in litigation in order to search for impeachment material or exculpatory evidence.[76]

[22]      Second, defendants face additional hurdles when seeking to issue a third party subpoena.[77]  Defendants may seek to subpoena social media companies for user information regarding the victim, the complaining witness, or another witness.[78]  In those instances, in federal criminal proceedings, defendants must pursue such non-party discovery pursuant to Federal Rule of Criminal Procedure 17 and seek a court order allowing such a subpoena.[79]  Among other hurdles in seeking such an order, the court may find that the evidence maintained by a social media website is “private,” in which case the SCA prohibits a non-governmental entity, such as Facebook and MySpace, from disclosing that information without the consent of the owner of the account or a government order.[80]  In one high profile example of a defendant clearing such hurdles, on October 19, 2012, the court presiding over the Trayvon Martin murder trial granted the defendant’s motion seeking permission to subpoena Facebook and Twitter for the records of Trayvon Martin’s social media accounts in addition to Mr. Martin’s girlfriend’s Twitter account.[81]  Notwithstanding the order, Facebook and Twitter may challenge the subpoenas as Twitter so did in People v. Harris.

[23]      Despite these challenges, criminal defendants may attempt to use novel methods of obtaining exculpatory social media evidence.  For example, under Brady v. Maryland or Giglio v. United States, one may obtain a law enforcement officer’s social media account records.[82]  Moreover, courts may order jurors, witnesses, or third parties to produce or manipulate their social media information in unique and unprecedented ways.  For example, courts have: (1) ordered a juror to “execute a consent form sufficient to satisfy the exception” in the SCA to allow Facebook to produce the juror’s wall posts to defense counsel;[83] (2) ordered a party to briefly change his Facebook profile to include a prior photograph so that his Facebook pages could be printed as they existed at a prior time;[84] (3) recommended that an individual “friend” the judge on Facebook in order to facilitate an in camera review of Facebook photos and comments;[85] and (4) ordered parties to exchange social media account user names and passwords.[86]  Such novel avenues of access to social media evidence may be considered when the defendant subpoenas a social media provider for certain records of a witness or victim and the social media company objects to the subpoena pursuant to the SCA or is unable to produce the evidence as it previously existed.

 

VIII.  Admissibility of Social Media Evidence

[24]      Social media is subject to the same rules of evid
ence as paper documents or other electronically stored information, but the unique nature of social media as well as the ease with which it can be manipulated or falsified creates hurdles to admissibility not faced with other evidence.[87]  The challenges surrounding social media evidence demand that one consider admissibility when social media is preserved, collected, and produced.  It is important for counsel to memorialize each step of the collection and production process in addition to considering how counsel will authenticate a tweet, Facebook posting, or photograph.  Methods of authentication include presenting a witness with personal knowledge of the information (they wrote it, they received it, or they copied it), searching the computer itself to see if it was used to post or create the information, or attempting to obtain the information in question from the actual social media company that maintained the information the ordinary course of their business.

[25]      Notably, these same challenges face the government who must also consider the admissibility of social media when they conduct their investigation.  In United States v. Stirling, the government seized the defendant’s computer pursuant to a search warrant and provided the defendant with a forensic copy of the hard drive.[88]  The government also performed a forensic examination of the hard drive and extracted 214 pages of Skype chats downloaded from the defendant’s computer, which were not “readily available by opening the folders appearing on the hard drive,” but did not provide this information to the defense until the morning of its expert’s testimony near the end of trial.[89]  The logs “had a devastating impact” on the defendant because they contradicted many of his statements made during his testimony and he was convicted.[90]  In a short but stinging opinion ordering a new trial, the court found:

[If a defendant] needs to hire a computer forensics expert and obtain a program to retrieve information not apparent by reading what appears in a disk or hard drive, then such a defendant should so be informed by the Government, which knows of the existence of the non-apparent information.  In such instance, and without the information or advice to search metadata or apply additional programs to the disk or hard drive, production has not been made in a reasonably usable form.  Rather, it has been made in a manner that disguises what is available, and what the Government knows it has in its arsenal of evidence that it intends to use at trial.[91]

[26]      While both government and defense attorneys continue to grapple with addressing and authenticating social media sources of evidence, courts largely seem to be erring on the side of admissibility and leaving any concerns about the evidence itself, such as who authored the evidence or whether the evidence is legitimate, to jurors to decide what weight to give that evidence.  For example, courts have ruled social media evidence as admissible where the content of the evidence contains sufficient indicia that it is the authentic creation of the purported user.[92]  In Tienda v. State, the appellant was convicted of murder based in part on evidence that the prosecutors obtained after subpoenaing MySpace. [93]  Specifically, “the State was permitted to admit into evidence the names and account information associated with [the defendant’s MySpace.com profiles], photos posted on the profiles, comments and instant messages linked to the accounts, and two music links posted to the profile pages.”[94]  The Court of Criminal Appeals affirmed the trial judge’s decision and concluded that the MySpace profile exhibits used at trial were admissible because they were a sufficient “indicia of authenticity” that “the exhibits were what they purported to be—MySpace pages for which the appellant was responsible for” the content.[95]

[27]      In another recent case, a defendant was convicted of aggravated assault following a domestic dispute with his girlfriend.[96]  At trial, the prosecution introduced Facebook messages sent from the defendant’s account in which he indicated that he regretted striking his girlfriend and asked for her forgiveness.[97]  The defendant denied sending the Facebook messages and argued that both he and his girlfriend had access to each other’s Facebook accounts.[98]  On appeal, the court, acknowledging that “electronic communications are susceptible to fabrication and manipulation,” affirmed the trial court’s ruling that allowed the state to authenticate the messages through circumstantial evidence, most notably that they were sent from the defendant’s account and that the girlfriend testified that she did not send the messages.[99]  In another instance, a federal court found that photographs of a defendant from his MySpace page, which depicted him holding cash, were relevant in his criminal trial for possession of firearms and drugs, but it withheld ruling on the admissibility of the photos and whether they presented a risk of unfair prejudice.[100]

[28]      Given the proliferation of social media, the increasing sophistication of technology, and the potential challenges relating to the reliability or authentication of social media, the authentication and admissibility of such evidence will likely continue to be the subject of vigorous disputes between parties that may mean the difference between ultimate guilt and innocence.

 

IX.  Juries and Social Media

[29]      Admissibility is just one challenge that the Internet and social media pose at trial.  Another difficult issue relates to what information may be gathered about prospective jurors.  At least one bar association has determined that attorneys may use social media websites to conduct juror research as long as no communication occurs between the lawyer and the juror as a result of the research.[101]  However, attorneys may not research jurors if that research results in the juror receiving a communication.[102]  Third parties working for the benefit of or on behalf of an attorney must comport with the same restrictions as that attorney and, similarly to other ethical restrictions on defense counsel’s ability to use social media as an investigative tool discussed supra, an attorney cannot use deception to gain access to a juror’s website or to obtain information.[103]

[30]      One of the most recent and challenging social media trends relates to jurors using wireless communication devices to look up a defendant’s criminal record, conduct their own investigation into a case, post their opinions about the case on social media websites, or attempt to “friend” parties, lawyers, witnesses, or judges.  In some instances, this conduct has resulted in mistrials and overturned convictions.[104]  In other instances, such conduct has caused courts to conduct lengthy hearings to determine the impact of the juror’s actions.  For example, in Sluss v. Commonwealth, a defendant appealed his murder, assault, and evidence tampering convictions on the grounds that two members of the jury, including one who served as the jury foreperson, failed to indicate during voir dire that they had each “friended” the victim’s mother through Facebook.[105]  The Supreme Court of Kentucky, noting that being a “friend” on Facebook was not enough by itself to prove bias for disqualification as those “friendships” may be superficial, reversed and remanded the case with instructions to hold a hearing on whether the jurors should have been struck from the jury panel on the basis of their alleged social networking activity.[106]  Finally, the inappropriate use of social media has led to stiff penalties for both jurors and attorneys.[107]

[31]      Both legislatures and courts have attempted to respond to these trends.  For example, California adopted a new statute clarifying that jurors may not use social media and the Internet, such a
s texting, Twitter, Facebook, and Internet searches, to research or disseminate information about cases, and they can be held in criminal or civil contempt for violating these restrictions.[108]  On August 21, 2012, a Judicial Conference Committee announced that it had created an updated model set of jury instructions to help judges discourage jurors from conducting research or communicating about their cases through social media.[109]  The model instructions state:

I know that many of you use cell phones, Blackberries, the Internet and other tools of technology. . . . You may not communicate with anyone about the case on your cell phone, through e-mail, Blackberry, iPhone, text messaging, or on Twitter, through any blog or website, including Facebook, Google+, My Space, LinkedIn, or YouTube.  You may not use any similar technology of social media, even if I have not specifically mentioned it here.[110]

[32]      The chair of the Conference Committee who provided the updated rules stressed that:

The judges recommended that jurors frequently be reminded about the prohibition on social media before the trial, at the close of a case, at the end of each day before jurors return home, and other times, as appropriate.  Jurors should be told why refraining from use of social media promotes a fair trial.  Finally, jurors should know the consequences of violations during trial, such as mistrial and wasted time.  Those recommendations are now part of the guidelines.[111]

 

X.  Conclusion

[33]      Social media evidence is undeniably a critical new frontier of government investigations and criminal proceedings.  Social media has rapidly become so pervasive that while users are creating warehouses of data every day and social media companies roll out new communication features, courts, government agencies, practitioners, and the social media companies themselves are struggling to understand how this information fits into existing legal paradigms of constitutional protections, the SCA, and rules of evidence.  Despite this uncertainty, one thing is clear.  The government has a deep and largely one-sided set of tools for seeking out and obtaining social media evidence that plays an ever-increasing critical role in their investigations and litigation.

 

* Justin P. Murphy is a counsel in Crowell & Moring’s Washington, D.C. office where he practices in the firm’s White Collar & Regulatory Enforcement Group and E-Discovery and Information Management Group.  Adrian Fontecilla is an associate in Crowell & Moring’s Washington, D.C. office where he practices in the firm’s Antitrust Group.  Both are contributors to Crowell & Moring’s E-Discovery Law Insights blog – http://www.ediscoverylawinsights.com/.

 

[1] Experian Marketing Services, The 2012 Digital Marketer: Benchmark and Trend Report 79 (2012), available at http://www.experian.com/simmons-research/register-2012-digital-marketer.html.

[2] Nielsen, State of the Media: Social Media Report 2012, at 4 (2012), available at http://blog.nielsen.com/nielsenwire/social/2012/ (last visited Dec. 31, 2012).

[3] Connect: Social Media Madness U.S. 2012, Netpop Research (April 2012), available at http://netpopresearch.com/social-media-madness.

[4] Tom Webster, The Social Habit 2011, Edison Research (May 29, 2011), http://www.edisonresearch.com/home/archives/2011/05/the_social_habit_2011.php.

[5] Aaron Smith, Laurie Segall & Stacy Cowley, Facebook Reaches One Billion Users, Cnn Money (Oct. 4, 2012, 9:50 AM), http://money.cnn.com/2012/10/04/technology/facebook-billion-users/index.html.

[6] Brian Honigman, 100 Fascinating Social Media Statistics and Figures From 2012, Huffington Post (Nov. 11, 2012, 7:32 PM), http://www.huffingtonpost.com/brian-honigman/100-fascinating-social-me_b_2185281.html.

[7] Erik Qualman, 10 New 2012 Social Media Stats = WOW!, Socialnomics, http://www.socialnomics.net/2012/06/06/10-new-2012-social-media-stats-wow/ (last visited Dec. 31, 2012).

[8] See Pingdom, Social Network Demographics in 2012 (2012), available at http://royal.pingdom.com/2012/08/21/report-social-network-demographics-in-2012/.

[9] Nielsen and Twitter Establish Social TV Rating, nielsen (Dec. 17, 2012), http://www.nielsen.com/us/en/insights/press-room/2012/nielsen-and-twitter-establish-social-tv-rating.html.

[10] Instagram Press Center, Instagram, http://instagram.com/press/ (last visited Feb. 1, 2013).

[11] Josh James, How Much Data Is Created Every Minute?, Domo (June 8, 2012), http://www.domo.com/blog/2012/06/how-much-data-is-created-every-minute/.

[12] Honigman, supra note 6.

[13] See Quagliarello v. Dewees, No. 09-4870, 2011 WL 3438090, at *2 (E.D. Pa. Aug. 4, 2011) (“As the use of social media such as Myspace and Facebook has proliferated, so too has the value of these websites as a source of evidence for litigants.”).

[14] See, e.g., Carly Carioli, When the Cops Subpoena Your Facebook Information, Here’s What Facebook Sends the Cops, The Phoenix (Apr. 6, 2012, 8:30 AM), http://blog.thephoenix.com/blogs/phlog/archive/2012/04/06/when-police-subpoena-your-facebook-information-heres-what-facebook-sends-cops.aspx (noting the breadth of information Facebook provided in response to a subpoena from the Boston Police Department).

[15] Cf. Marcia Hofmann et al., Elec. Frontier Found., 2012: When the Government Comes Knocking, Who Has Your Back? 7 (2012), available at https://www.eff.org/sites/default/files/who-has-your-back-2012_0_0.pdf (discussing issues arising from government access to location data and the companies that collect data).

[16] Eyder Peralta, Betrayed By Metadata: John McAfee Admits He’s Really in Guatemala, NPR (Dec. 4, 2012, 12:24 PM), http://www.npr.org/blogs/thetwo-way/2012/12/04/166487197/betrayed-by-metadata-john-mcafee-admits-hes-really-in-guatemala.

[17] See, e.g., United States v. Anderson, 664 F.3d 758, 761-62 (8th Cir. 2012) (affirming the conviction of a defendant sentenced to 12 years in prison based in part on over 800 private chats with adolescent girls and inappropriate pictures that were obtained through a search warrant for defendant’s Facebook account).

[18] See, e.g., U.S. Dep’t of Homeland Sec., Privacy Impact Assessment for the Office of Operations Coordination and Planning: Publicly Available Social Media Monitoring and Situational Awareness Initiative 3 (2010), available at http://www.dhs.gov/xlibrary/assets/privacy/privacy_pia_ops_publiclyavailablesocialmedia.pdf (noting that the National Operations Center will use publicly available search engines and content aggregators to monitor activities on social media sites); see also Role of Social Media in Law Enforcement Significant and Growing, LexisNexis (July 18, 2012), http://www.lexisnexis.com/media/press-release.aspx?id=1342623085481181 (stating that, according to the results of a comprehensive survey, over eighty percent of local and federal agencies use social media during investigations).

[19] Rocco Parascandola, NYPD Forms New Social Media Unit to Mine Facebook and Twitter for Mayhem, NY Daily News (Aug. 10, 2011, 4:00 AM), http://www.nydailynews.com/new-york/nypd-forms-new-social-media-unit-facebook-twitter-mayhem-article-1.945242.

[20] New Study Shows 66% of Government Organizations Have Adopted Social Networking, Collaboration Tools, saba (Jan. 14, 2010), http://www.saba.com/company/press-releases/2010/s
aba-and-hci-publish-study-of-social-networking-in-government/.

[21] See generally Eric Larson, 8 Dumb Criminals Caught Through Facebook, Mashable (Dec. 12, 2012), http://mashable.com/2012/12/12/crime-social-media/.

[22] Id.

[23] Id.

[24] See Shea Bennett, Facebook, Twitter, Pinterest, Instagram – Social Media Statistics and Facts 2012, All Twitter (Nov. 1, 2012, 6:00 AM), http://www.mediabistro.com/alltwitter/social-media-stats-2012_b30651.

[25] See, e.g., United States v. Robison, No. 11CR380 DWF/TNL, 2012 WL 1110086, at *1-2 (D. Minn. Mar. 16, 2012) (noting that law enforcement created fake online identity and became Facebook friends with defendant, “which permitted [the government] to view [the defendant’s] name and photo on his Facebook account”); United States v. Phillips, Criminal No. 3:06–CR–47, 2009 WL 1918931, at *7 (N.D. W. Va. July 1, 2009) (noting that the government “created an undercover user profile on www.myspace.com”).

[26] United States v. Meregildo, No. 11 Cr. 576(WHP), 2012 WL 3264501, at *2 (S.D.N.Y. Aug. 10, 2012).

[27] Id.

[28] Id. at *1.

[29] Id. at *2 (internal citations omitted).

[30] Ryan Gallagher, Feds Monitor Facebook “Likes,” Infiltrate Skype Chats To Build Terrorism Case, Slate (Nov. 29, 2012, 4:33 PM), http://mobile.slate.com/blogs/future_tense/2012/11/29/facebook_likes_skype_used_to_build_fbi_case_against_california_terrorism.html.

[31] Complaint at ¶¶ 26-28, United States v. Kabir, No. ED12-0431M (C.D. Cal. Nov. 16, 2012), 2012 WL 6576560.

[32] Gallagher, supra note 30.

[33] See Netflix Form 8-K filed Dec. 5, 2012; Christopher Garcia & Melanie Conroy, Reg FD Alert: Applying Securities Laws to Social Media Communications 1 (2012), available at http://www.weil.com/files/upload/Weil_Alert_Sec_Lit_Enforcement_Dec_21_2012.pdf.

[34] Id. at 2.

[35] See Netflix CEO’s Facebook Post Triggered SEC Wells Notice, CNBC (Dec. 7, 2012, 7:10 AM), http://www.cnbc.com/id/100289227/Netflix_CEO039s_Facebook_Post_Triggered_SEC_Wells_Notice; Garcia & Conroy, supra note 33, at 1.

[36] Twitter Transparency Report, Twitter Blog (July 2, 2012), http://blog.twitter.com/2012/07/twitter-transparency-report.html.

[37] Id.

[38] Transparency Report—FAQ, Google, http://www.google.com/transparencyreport/userdatarequests/faq/ (last visited Jan.15, 2013).

[39] Transparency Report—User Data Requests, Google, http://www.google.com/transparencyreport/userdatarequests/US/ (last visited Jan. 16, 2013) (demonstrating that requests increased from 3,580 in a period between July to December 2009 to 8,438 in a period from July to December 2012); Transparency Report—User Data Requests, Google, http://www.google.com/transparencyreport/userdatarequests/countries/?t=table (last visited Feb. 8, 2013) (demonstrating that the United States accounts for 8,438 of the 21, 389 user data requests Google received from July to December 2012).

[40] Role of Social Media in Law Enforcement Significant and Growing, supra note 18.

[41] See, e.g., United States v. Anderson, 664 F.3d 758, 762 (8th Cir. 2012) (noting hundreds of Facebook private chats obtained through a search warrant); United States v. Kearney, 672 F.3d 81, 84 (1st Cir. 2012) (noting that law enforcement used account and IP address information obtained from MySpace via an administrative subpoena to subpoena defendant’s Internet provider for his name and address); In re Grand Jury Subpoena No. 11116275, 846 F. Supp. 2d 1, 2 (D.D.C. 2012) (denying anonymous intervenor’s motion to quash a subpoena issued to Twitter by a federal grand jury for records pertaining to the intervenor’s identity); United States v. Sayer, Criminal No. 2:11 cr 113 DBH, 2012 WL 2180577, at *3 (D. Me. June 13, 2012) (using subpoenas to obtain evidence from Facebook and MySpace); United States v. Meregildo, No. 11 Cr. 576(WHP), 2012 WL 3264501, at *2 (S.D.N.Y. Aug. 10, 2012) (obtaining evidence through warrant issued to Facebook); People v. Harris, 949 N.Y.S.2d 590, 597 (N.Y. Crim. Ct. 2012) (observing that state sent Twitter a subpoena seeking to obtain defendant’s user information and Tweets).

[42] See United States v. Warshak, 631 F.3d 266, 282 (6th Cir. 2010) (citing 18 U.S.C. §§ 2701-2711); see also Crispin v. Christian Audigier, Inc., 717 F. Supp. 2d 965, 977 (C.D. Cal. 2010) (applying the SCA to subpoenas issued to Facebook and MySpace while recognizing that no courts “have addressed whether social-networking sites fall within the ambit of the statute”).

[43] See Rudolph J. Burshnic, Note, Applying the Stored Communications Act to the Civil Discovery of Social Networking Sites, 69 Wash. & Lee L. Rev. 1259, 1261-64 (2012).

[44] See, e.g., Hubbard v. MySpace, Inc., 788 F. Supp. 2d 319, 321-27 (S.D.N.Y. 2011) (holding that search warrant served by state authorities on MySpace to produce, among other things, the account IP address, the contents of the account user’s inbox, and sent email was sufficient to satisfy the requirements of the Stored Communications Act); Crispin, 717 F. Supp. 2d at 991 (acknowledging the privacy settings of the user, the court quashed subpoenas seeking private messages on Facebook and MySpace as they were protected under the Stored Communications Act).

[45] See 18 U.S.C. § 2703(c)(1)(a)-(b) (2006).

[46] See Warshak, 631 F.3d at 283.

[47] Id.

[48] Id. (citation omitted).  Since Warshak, most major providers state that they require a search warrant to compel the stored contents of any account.  See, e.g., Information for Law Enforcement Authorities, Facebook, https://www.facebook.com/safety/groups/law/guidelines/ (last visited Jan. 2, 2012) (“A search warrant issued under the procedures described in the Federal Rules of Criminal Procedure or equivalent state warrant procedures upon a showing of probable cause is required to compel the disclosure of the stored contents of any account, which may include messages, photos, videos, wall posts, and location information.”).

[49] See Warshak, 631 F.3d at 288.

[50] Id.

[51] Id. at 286 (citations omitted).

[52] Id. at 285-86.

[53] See Noel Brinkerhoff, Congress, at Last Minute, Drops Requirement to Obtain Warrant to Monitor Email, AllGov (Dec. 25, 2012), http://www.allgov.com/news/top-stories/congress-at-last-minute-drops-requirement-to-obtain-warrant-to-monitor-email-121225?news=846578.

[54] See Warshak, 631 F.3d at 288 (holding that warrantless seizure of emails from ISP pursuant to SCA violated Fourth Amendment); see also Nathan Petrashek, Comment, The Fourth Amendment and the Brave New World of Online Social Networking, 93 Marq. L. Rev. 1495, 1513-32 (2010) (arguing that individuals should have Fourth Amendments rights in their privately shared information on social networking platforms).

[55] As of the date of publication, the appeal had not been decided.

[56] People v. Harris, 945 N.Y.S.2d 505, 510 (N.Y. Crim. Ct. 2012).

[57] See People v. Harris, 949 N.Y.S.2d 590, 598 (N.Y. Crim. Ct. 2012) (granting in part and denying in part the motion to quash).  The court found in favor of the government for all non-content information and content information from September 15, 2011, to December 30, 2011.  Content information less
than 180 days old (tweeted on December 31, 2011) could only be disclosed pursuant to a search warrant.

[58] See Russ Buettner, A Brooklyn Protester Pleads Guilty After His Twitter Posts Sink His Case, N.Y. Times, Dec. 12, 2012, at A31, available at http://www.nytimes.com/2012/12/13/nyregion/malcolm-harris-pleads-guilty-over-2011-march.html.

[59] Guidelines for Law Enforcement, Twitter, http://support.twitter.com/entries/41949-guidelines-for-law-enforcement#section9 (last visited Jan, 15, 2013).

[60] See Hofmann et al, supra note 15, at 8-9 (“Dropbox, LinkedIn, Sonic.net and SpiderOak have now joined Twitter in promising to notify their users when possible about government attempts to seek information about them.”).

[61] See Somini Sengupta, Twitter’s Free Speech Defender, N.Y. Times, Sept. 3, 2012, at B1, available at http://www.nytimes.com/2012/09/03/technology/twitter-chief-lawyer-alexander-macgillivray-defender-free-speech.html?pagewanted=all&_r=0.

[62] Brief for Non-Party Movant-Appellant at *12-14, People v. Harris, No. 2011-080152, 2012 WL 3867233 (N.Y. App. Div. Aug. 27, 2012) (noting Twitter’s Terms of Service state, “You retain your rights to any Content you submit, post or display on or through the Services” (internal citation omitted)).

[63] See id. at *16, 19.

[64] See id. at *18-19 (citing United States v. Warshak, 631 F.3d 266, 288 (6th Cir. 2010)).

[65] See id. at *20-21.

[66] See id. at *21-22 (citing People v. Weaver, 12 N.Y.3d 433, 441-45 (2009); United States v. Jones, 132 S. Ct. 945, 949 (2012)).

[67] Doug Austin, Twitter Turns Over Tweets in People v. Harris, eDiscovery Daily blog (Oct. 3, 2012), http://www.ediscoverydaily.com/2012/10/twitter-turns-over-tweets-in-people-v-harris-ediscovery-case-law.html.

[68] United States v. Meregildo, No. 11 Cr. 576(WHP), 2012 WL 3264501, at *2 (S.D.N.Y. Aug. 10, 2012).

[69] See, e.g., R.S. v. Minnewaska Area Sch. Dist. No. 2149, Civ. No. 12-588 (MJD/LIB), 2012 WL 3870868, at *12 (D. Minn. Sept. 6, 2012) (finding that sixth grader had reasonable expectation of privacy in private messages exchanged via her password-protected Facebook account); see also Crispin v. Christian Audigier, Inc., 717 F. Supp. 2d 965, 991 (C.D. Cal. 2010) (holding that “webmail and private messaging [are] . . .  inherently private”).

[70] Minnewaska Area Sch. Dist. No. 2149, 2012 WL 3870868, at *11; Crispin, 717 F. Supp. 2d at 991.

[71] See Timeline Privacy, Facebook, http://www.facebook.com/help/393920637330807/#!/help/393920637330807/ (last visited Jan. 20, 2013).

[72] See In re Applications for Search Warrants for Info. Assoc. with Target Email Address, No. 2:12-mj-08119-JPO, 2012 WL 4383917, at *5 (D. Kan. Sept. 21, 2012) (holding that an individual has a Fourth Amendment right of privacy to emails and online faxes stored with, sent to, or received through third-party internet service providers).

[73] See United States v. Warshak, 631 F.3d 266, 284-85 (6th Cir. 2010) (“[T]he Fourth Amendment must keep pace with the inexorable march of technological progress, or its guarantees will wither and perish.”).

[74] See Daniel K. Gelb, Defending a Criminal Case from the Ground to the Cloud, 27 Crim. Just. 28, 29 (2012).

[75] See Zach Winnick, Social Media an Ethical Minefield for Attorneys, Law360 (Apr. 13, 2012, 9:55 PM), http://www.law360.com/articles/329795/social-media-an-ethical-minefield-for-attorneys (noting ethical concerns regarding private counsel’s use of social networking sites in connection with litigation that are generally not shared by government authorities in investigations).

[76] See, e.g., Phila. Bar Ass’n Prof’l Guidance Comm., Op. 2009-02, at 1-3 (2009), available at 2009 WL 934623 (concluding that a social media friend request to a witness in the litigation by a third party for the purpose of gathering social media evidence is “deceptive” and in violation of ethical rules); N.Y. State Bar Ass’n, Comm. on Prof’l Ethics, Op. 843, at 2 (2010), available at 2010 WL 3961381 (noting that accessing publicly available social media evidence is permissible but ‘friending” another party to do so is not); San Diego Cnty. Bar Legal Ethics Comm., Op. 2011-02 (2011), available at http://www.sdcba.org/index.cfm?pg=LEC2011-2 (stating that ethics rules bar attorneys from making ex parte friend request of a represented party or ‘deceptive’ friend requests of unrepresented witnesses).

[77] In criminal litigation, the majority of evidence, electronic or otherwise, is collected by the government prior to trial, and Federal Rule of Criminal Procedure 16 does not require the government to produce such evidence unless it is being used in the government’s case-in-chief.  See Warshak, 631 F.3d at 327 (citing Fed. R. Crim. P. 16).

[78] See Fed. R. Crim. P. 17(c)(1).

[79] See Fed. R. Crim. P. 17(a), (c)(3).

[80] See 18 U.S.C. § 2703(a), (c) (2006).

[81] Erin Fuchs, A Jury Will Likely Scrutinize Trayvon Martin’s Deleted Facebook and Twitter Accounts, Business Insider (Oct.19, 2012, 2:56 PM), http://www.businessinsider.com/zimmerman-can-subpoena-social-media-2012-10.

[82] See Brady v. Maryland, 373 U.S. 83, 87 (1963) (holding that “the suppression by the prosecution of evidence favorable to an accused upon request violates due process where the evidence is material”); Giglio v. United States, 405 U.S. 150, 153-54 (1972) (“When the ‘reliability of a given witness may well be determinative of guilt or innocence,’ nondisclosure of evidence affecting credibility falls within this general rule [under Brady].” (citation omitted)) .

[83] Juror No. One v. Cal., No. CIV. 2:11397 WBS JFM, 2011 WL 567356, at *1 (E.D. Cal. Feb. 14, 2011).

[84] Katiroll Co. v. Kati Roll & Platters, Inc., Civil Action No. 10 3620 (GEB), 2011 WL 3583408, at *4 (D.N.J. Aug. 3, 2011).

[85] Barnes v. CUS Nashville, LLC, No. 3:09cv00764, 2010 WL 2265668, at *1 (M.D. Tenn. June 3, 2010).

[86] See, e.g., Gallion v. Gallion, No. FA114116955S, 2011 WL 4953451, at *1 (Conn. Super. Ct. Sept. 30, 2011) (ordering parties to exchange passwords to Facebook and a dating website); McMillen v. Hummingbird Speedway, Inc., No. 113-2010 CD, 2010 WL 4403285 (Pa. Ct. Com. Pl. Sept. 9, 2010) (ordering plaintiff to produce Facebook and MySpace login credentials to opposing counsel for “read-only access”).

[87] See, e.g., Griffin v. State, 19 A.3d 415, 424 (Md. 2011) (recognizing “[t]he potential for abuse and manipulation of a social networking site by someone other than its purported creator”).

[88] United States v. Stirling, No. 1:11-cr-20792-CMA, at 2 (S.D. Fla. June 5, 2012), available at http://www.fuerstlaw.com/wp/wp-content/uploads/2012/06/altonaga-order-granting-new-trial1.pdf; see U.S. District Court in Miami Orders New Trial Based on Discovery Violation for Electronically Stored Information, Fuerst Ittleman David & Joseph PL (June 25, 2012, 12:24 PM), http://www.fuerstlaw.com/wp/index.php/25/u-s-district-court-in-miami-orders-new-trial-based-on-discovery-violation-for-electronically-stored-information/.

[89] Id. at 2.

[90] Id.

[91] Id. at 4-5.

[92] See, e.g., People v. Lesser, No. H034189, 2011 WL 193460, at *4, *6 (Cal. Ct. App. Jan. 21, 2011
) (finding officer’s testimony that he cut and pasted portions of Internet chat transcript was sufficient for admissibility); People v. Valdez, 135 Cal. Rptr. 3d 628, 632-33, 635 (Cal. Ct. App. 2011) (upholding conviction where the court correctly admitted a trial exhibit consisting of printouts of defendant’s MySpace page, which the prosecution’s gang expert relied on in forming his opinion that defendant was an active gang member); People v. Fielding, No. C06022, 2010 WL 2473344, at *4-5 (Cal. Ct. App. June 18, 2010) (finding incriminating MySpace messages sent by defendant authenticated by victim who testified he believed defendant had sent them; inconsistencies and conflicting inferences regarding authenticity goes to weight of evidence, not its authenticity).

[93] Tienda v. State, 358 S.W.3d 633, 634-35 (Tex. Crim. App. 2012).

[94] Id. at 635.

[95] Id. at 647.

[96] Campbell v. Texas, 382 S.W.3d 545, 546 (Tex. App. 2012).

[97] Id. at 551.

[98] Id.

[99] Id. at 549-50, 552.

[100] United States v. Drummond, No. 1:09-cr-00159, 2010 WL 1329059, at *2-3 (M.D. Pa. Mar. 29, 2010).  The defendant ultimately entered a guilty plea, and the court did not make a final ruling on the admissibility of the photographs.  Plea Agreement, Drummond, No. 1:09-cr-00159, 2010 WL7367722 (M.D. Pa. Nov. 29, 2010).

[101] See N.Y. State Bar Ass’n Comm. on Prof’l Ethics, Formal Op. 2012-2, at 5 (2012) available at 2012 WL 2304271; see also N.Y. Cnty. Lawyers’ Ass’n Comm. on Prof’l Ethics, Formal Op. 743 (2011), available at http://www.nycla.org/siteFiles/Publications/Publications1450_0.pdf (advising that it is ethical for lawyers to vet potential jurors by monitoring social network activity provided there is no contact or communication with the prospective jurors, and the lawyer does not seek to friend jurors, subscribe to Twitter accounts, send jurors tweets, or act in any way that alerts the jurors to the monitoring); Sluss v. Commonwealth, 381 S.W.3d 215, 227-28 (Ky. 2012) (adopting the model established by the New York County Lawyers Association).

[102] N.Y. State Bar Ass’n Comm. on Prof’l Ethics, Formal Op. 2012-2, supra note 101, at 5 (noting that even if an attorney unknowingly or inadvertently causes a communication with a juror, such conduct may run afoul of the Rules of Professional Conduct).

[103] Id. at 6-7.

[104] See Dimas-Martinez v. State, 385 S.W.3d 238, 246, 247, 249 (Ark. 2011) (reversing appellant’s murder conviction and calling for a new trial when a juror tweeted several times during court proceedings, writing in one tweet, “Choices to be made. Hearts to be broken. We each define the great line,” and later tweeting “Its [sic] over” before the jury announced its verdict).

[105] Sluss, 381 S.W.3d at 220-22.

[106] Id. at 223, 228-29; see also U.S. v. Ganias, Crim No. 3:08CR224(EBB), 2011 WL 4738684, (D. Conn. Oct. 5, 2011).  In Ganias, the defendant filed a motion for a new trial on the eve of sentencing based on alleged juror improprieties.  Id.  at *1.  The juror posted a variety of comments on the Facebook page, ranging from “Jury duty 2morrow. I may get to hang someone … can’t wait …” before the presentation of the evidence, to “Guinness for lunch break.  Jury duty ok today” during the three-week trial.  Id. at *2.  On the day of the verdict he posted “Guilty :),” and he also added a fellow juror as one of his Facebook friends.  Id.  Taken together, the defendant argued that the comments showed his Sixth Amendment rights were offended due to a biased juror.  Id. at *1.  When questioned, the juror assured the judge that he was merely “joking,” and that he “absolutely was an impartial and fair juror.”  U.S. v. Ganias, Crim No. 3:08-CR-00224-EBB, 2011 WL 4738684, *3 (D. Conn. Oct. 5, 2011).  The court found those statements presumptively honest, and denied the defendant’s motion.  See id. at *4.

[107] See John Barry, Hillsborough Judge Vows to Send Prospective Juror to Jail, Tampa Bay Times, Oct. 11, 2012, available at http://www.tampabay.com/news/courts/criminal/hillsborough-judge-vows-to-send-prospective-juror-to-jail/1255802 (noting that prospective juror faces jail time for researching case and discussing it with the other jurors even after Tampa Bay court provided each member of the jury pool with a written order not to research or discuss the case and admonished and warned the jurors about the order at each break); Robert Eckhart, Juror Jailed Over Facebook Friend Request, Herald-Tribune, Feb. 16, 2012, available at http://www.heraldtribune.com/article/20120216/ARTICLE/120219626 (reporting that a court sentenced a juror to three days in jail for sending a Facebook message to the defendant and then posting “Score…I got dismissed!!  apparently they frown upon sending a friend request to the defendant…haha,” on Facebook after his dismissal from the jury); David Ovalle, Lawyer’s Facebook Photo Causes Mistrial in Miami-Dade Murder Case, Miami Herald, Sept. 13, 2012, available at http://www.miamiherald.com/2012/09/12/2999630/lawyers-facebook-photo-causes.html (reporting that a Miami judge declared a mistrial in a murder case after the public defender posted a photo of her client’s leopard-print underwear on Facebook, which also led to the attorney’s firing).

[108] See 2011 Cal. Stat. 181.

[109] See Revised Jury Instructions Hope to Deter Juror Use of Social Media During Trial, United States Courts (Aug. 21, 2012), http://news.uscourts.gov/revised-jury-instructions-hope-deter-juror-use-social-media-during-trial.

[110] Judicial Conf. Comm. on Court Admin. & Case Mgmt., Proposed Model Jury Instructions:  The Use of Electronic Technology to Conduct Research on or Communicate about a Case 1 (2012), available at http://www.uscourts.gov/uscourts/News/2012/jury-instructions.pdf.

[111] United States Courts, supra note 109.

Local Rules, Standing Orders, and Model Protocols: Where the Rubber Meets the (e-Discovery) Road

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 Cite as: Thomas Y. Allman, Local Rules, Standing Orders, and Model Protocols: Where the Rubber Meets the (E-Discovery) Road, 19 RICH. J. L. & TECH 8 (2013), available at http://jolt.richmond.edu/v19i3/article8.pdf.

By Thomas Y. Allman*

[District Courts], impatient with the failure of the national system to solve pressing, indeed urgent, procedural problems, utilize local rules in an effort to shape pragmatic solutions . . . . [as] one route to procedural change.[1]

 

I.  Introduction

[1]        In late 2012, the U.S. District Courts for the Western District of Washington,[2] the Northern District of California,[3] and the District of Oregon[4] all announced, in close proximity with one another, local initiatives that deal with e-Discovery issues that the 2006 E-Discovery Federal Rules Amendments (the “2006 Amendments” or the “Amendments”) largely ignored.  These proposals are part of a second wave of local rulemaking, which is more focused on pragmatic solutions than earlier efforts.

[2]        A large number of federal districts have undertaken local initiatives to deal with e-Discovery.[5]  Some merely make passing reference to e-Discovery in local rules while others explicitly describe topics deemed worthy of attention or mandate specific measures to resolve open e-discovery issues.  However, many districts have yet to make such special accommodations.

[3]        Less visible but equally important efforts have been made to accommodate e-Discovery by amendments to standard forms.  For example, there are now many useful forms available for Rule 26(f) reports and discovery plans, as well as for joint or individualized proffers of scheduling orders or case management orders.

[4]        Section II of this Article describes the legal context for local initiatives.[6]  Section III explores the types of local responses to the 2006 Amendments.[7]  In Section IV, the efficacy of key components emerging from the variety of approaches described is evaluated.  The author concludes that concerns over a lack of procedural uniformity among the districts are largely overblown and that some initiatives serve as welcome harbingers of national rulemaking.  The author also expresses concerns about over-reaching in some of the measures studied.

 

II.  The Legal Context

[5]        This Article turns first to the general description of rulemaking at the local level, focusing first on the statutory and rule-based framework.

A.  Local Rules

[6]        The authority to enact local rules flows from 28 U.S.C. § 2071 and Rule 83 of the Federal Rules of Civil Procedure.  A local rule “must be consistent with—but not duplicate—federal statutes and rules adopted under 28 U.S.C. §§ 2072 and 2075.”[8]  Local rules typically “supplement the applicable Federal Rules”[9] and have the force of law.[10]  The mere fact that a federal rule is not fully comprehensive, such when the rule is “silent” on a topic, does not bar otherwise permissible local initiatives.[11]

[7]        Unless a majority of the district judges approve the local rules after “giving appropriate public notice and an opportunity for comment,” they are ineffective.[12]  Districts must use Local Rules Advisory Committees to assist in developing suggestions for and reviewing potential changes in the rules.[13]  The rules are available on district websites and in legal research databases.[14]  Numbering must conform to a uniform national system based on the Federal Rules.[15]  In Hollingsworth v. Perry, the Supreme Court confirmed that local rules enacted without meeting these procedural requirements risk invalidity.[16]

[8]        Not all districts rely on extensive local rules.[17]  Some also use “Administrative,” “Standing,” or “General” orders, typically to provide administrative detail.[18]  In most districts, they are also available on the district website.[19]  When used to provide procedural mandates, however, they are subject to the same consistency requirements as local rules.[20]  In 2009, the Standing Committee issued helpful guidelines on the topic.[21]

B.  Individual Judicial Practices

[9]        Rule 83(b) acknowledges that individual district judges may “regulate [their] practice in any manner consistent with” federal and local rules or statutes.[22]  These preferences are often expressed in “practice guidelines” or in case management forms reflecting the preferences of individual judges.[23]  Many districts provide easy access on websites,[24] but in some instances, they can be difficult to locate.

[10]      District judges play an active role in tailoring e-Discovery to the needs of individual cases through case management.  This is consistent with an inherent right to manage individual cases,[25] which trumps mandates of the national and local rules.  It has been observed that individual judicial practices may introduce more disuniformity into the civil litigation process than do varying local rules.[26]  Not surprisingly, commentators universally advocate paying close attention to such local practices.[27]

C.  Standardized Forms

[11]      Standardized forms are provided in many districts for reports under Rule 26(f), discovery plans, scheduling orders, and the like, to conform to national or local requirements.  In some districts, the forms may be an integral part of the local rules.  In others, their adoption, modification, and implementation constitute an ad hoc process.  The ease of access varies with some districts doing better than others.[28]

[12]      The Administrative Office of the Judicial Conference (the “AO”) makes national forms relating to discovery available but none relate to case management.[29]  The Federal Judicial Center (the “FJC”) has collected some sample forms in connection with its Civil Litigation Management Manual.[30]

D.  Consistency

[13]      The consistency of a local rule with the Federal Rules can present subtle issues.  If a local initiative is challenged, the test is “whether the two rules are textually inconsistent or whether the local rule subverts the overall purpose of the federal rule.”[31]  When a specific amendment is at issue, reliance on the intent expressed in relevant Committee Reports is one of the factors used to assess the intended effect.[32]  In Colgrove v. Battin, for example, the Court tolerated local rules that reduced the minimum jury size despite what appeared to be an inconsistent federal rule.[33]

[14]      Congress has from time to time authorized the development of local initiatives without regard to consistency.[34]  One can attribute the current diversity in case management regimes in many districts to measures adopted because of the 1990 Civil Justice Reform Act, under which districts were directed to address cost and delay in civil litigation from “the bottom up.”[35]

[15]      Local districts are expected to act consistently with the Federal Rules.[36]  Copies of local
rules must be furnished to the Administrative Office and to the relevant Circuit Judicial Council.[37]  The Judicial Councils have the primary responsibility to ensure “consistency [of Local Rules] with [existing Federal Rules],” and the power to “modify or abrogate any such rule.”[38]  Historically, Circuit Councils have not taken an active role,[39] although there are current signs to the contrary.[40]  As recently as 2004, an ad hoc committee of the Standing Committee studied a subset of the local rules for consistency and made recommendations to the district courts involved.[41]

E.  “Pilot Programs”

[16]      The Judicial Conference and Congress utilize formal pilot projects to test procedural innovations.  For example, “[f]ourteen federal district courts have been selected to participate in a 10-year pilot project . . . to enhance expertise in patent cases among U.S. district judges,” which will involve the generation of sample local rules and forms.[42]  In addition, a pilot project designed to standardize early disclosures in employment litigation has been undertaken[43] for use by individual judicial officers or as a model for a local rule.[44]

[17]      The Federal Rules do not, however, explicitly authorize experimental or “pilot projects” to test innovative local rules or procedures.  Indeed, the Rules Committee refused to proceed with such proposals in 1983[45] and 1991.[46]  Nonetheless, the District of Colorado recently amended its local rules to authorize pilot programs or special projects by general order.[47]

[18]      There is a history of reliance on local experimentation before adopting a measure as a uniform federal procedural rule.[48]  It is far less risky to experiment with potential solutions at the local level, which are “inspired by a belief that the [national] rulemakers got it wrong.”[49]  District courts “are willing to try [solutions] because others have confidence in them.”[50]  Consistency with the Federal Rules is rarely perceived as a barrier under those circumstances.[51]

 

III.  Local E-Discovery Initiatives

[19]      At their core, the 2006 Amendments responded to the need to enhance the discovery of electronically stored information.[52] They became effective in December 2006 when, after several years of study, it was apparent that the differences between electronic data and traditional documents justified rule amendments.[53]

[20]      In their final version,[54] changes to Rules 16(b), 26(a), and 26(f) were coupled with broadly worded amendments authorizing the discovery of electronically stored information (“ESI”), dealing with its form or forms of production, and providing in Rule 26(b)(2), a vague presumption against the production of ESI from inaccessible sources.[55]  No meaningful standards for preservation were included and cost shifting was ignored.  The Amendments were largely silent as to the role, if any, of local rules and standardized forms.

[21]      As noted, federal district courts have reacted in a wide variety of ways, ranging from total avoidance of the subject to an assortment of actions involving local rules, informal guidelines, and standardized forms.

A.  Early Enactments

[22]      Before the 2006 Amendments took effect, few districts addressed the unique issues that e-Discovery presents.  The Eastern and Western Districts of Arkansas were the first to act when they adopted an “Outline For [FRCP] 26(f) Report” for use in their districts.[56]  At the 2004 conference held at Fordham Law School, an involved judicial officer reported that the experience under the rule to date had been that “most attorneys work out these issues at the onset of litigation and make a report.”[57]

[23]      District courts in Wyoming,[58] New Jersey,[59] and the Middle District of Pennsylvania[60] also adopted local rules that utilize a similar approach, with an added focus on counsel undertaking preparatory investigation of client systems.[61]  In addition, the District of Delaware issued a “Default Standard,” which required, inter alia, that parties appoint “retention coordinators” and consult with an eye towards reaching binding preservation agreements.[62]

[24]      The Northern District of Ohio[63] and the Middle[64] and Western[65] Districts of Tennessee quickly adopted Delaware’s Default Standard.  Those provisions remain in effect, although the Delaware standard has been significantly updated since then.

B.  Post Amendment Activity

[25]      After the Amendments came into effect in late 2006, additional districts acted to highlight e-Discovery issues.[66]  The primary emphasis was on preservation, form of production, and presumptive limits on production from inaccessible sources of ESI.  Some districts merely referenced ESI as a topic for discussion.[67]  Others provided extensive checklists of the items identified in the Federal Rules.[68]  Yet, other districts, such as those in Mississippi,[69] Pennsylvania,[70] and New York,[71] provided substantive guidance in mandatory terms.

[26]      The bulk of the changes were reflected in the standard forms in use for case management.  Many districts simply incorporated references to the topics referenced in Rules 26(f) and 16(b).[72]  Other districts went further[73] and used “speaking forms,” which include substantive instructions on how to handle the issues.[74]

[27]      A few districts, such as the District Court of Kansas, provided informal “guidelines.”[75]  The Central District of Illinois posted the Sedona Conference® Principles along with its local rules and orders.[76]  Perhaps the most ambitious effort was the twenty-eight-page “Suggested Protocol for Discovery of [ESI]”[77] adopted for use before courts in the District of Maryland that blends suggestions with mandatory elements.[78]

[28]      There has also been a revival of case differentiation under which e-Discovery guidance is tied to the type of litigation.[79]  The Southern District of New York is currently testing the impact of an enhanced model order applied on a case-by-case basis in cases deemed to be complex.[80]

[29]      A similar differentiation process is occurring with respect to patent litigation.  In the Districts of Maryland[81] and Massachusetts,[82] for example, the only mention of ESI in the district rules relates to patent litigation.  Similarly, a subcommittee of the Federal Circuit advocates the use of targeted rules for e-mail production in patent cases.[83]  As noted, the District of Oregon has recently proposed to adopt the model order as a local rule.[84]

C.  The Second Wave

[30]      Since roughly 2009, local initiatives have increasingly focused on pragmatic solutions for issues emphasizing the role of proportionality and cooperation.  A leading example is the Seventh Circuit E-Discovery Pilot Program, a comprehensive approach implemented by Standing Orders adopted in individual cases.[85]  The pilot program is based on “principles” designed to encourage cooperative resolution of disputes while emphasizing guidance on the underlying issues.[86]

[31]      Principle 2.04 (Scope of Preservation), for example, mandates the taking of “reasonable and proportionate steps to preserve relevant and discoverable ESI” within a party’s possession, custody, or control.[87]  This articulation, a first among rules, echoes the Sedona Conference® Proportionality Principles[88] and helps to fill the gap in the 2006 Amendments.  Another innovative feature is the inclusion of a list of categories of ESI which are “generally not discoverable in most cases” and whose possible preservation must be raised “at the meet and confer or as soon ther
eafter as practicable.”[89]  These proportionally based distinctions also correspond to the recommendations found in the Sedona Conference® Best Practice Principles.[90]

[32]      The Northern District of Illinois has recently proposed a local patent rule oriented towards guidance along similar lines.[91]  Presumptive limitations were also incorporated into the revised Delaware Default Standard,[92] whose categories of ESI in its appendix echo those of Principle 2.04.[93]  Similarly, the model protocol proposed for use in the Western District of Washington also lists categories of ESI that do not need to be preserved.[94]

[33]      The Federal Circuit has also introduced a “Model Order” for patent cases that addresses the number of custodians from whom production of e-mail may be sought in patent litigation as well as the number of search terms that can be introduced without agreement or court order.[95]  The model protocol was adapted for use in the Eastern District of Texas[96] and proposed for  the Oregon District as a local rule.[97]

 

IV.  Evaluation

[34]      In this Section, the local initiatives enacted to guide e-Discovery are assessed.  The Section first deals with the pros and cons of the emphasis on early agreement before discussing specific elements of interest—and possible shortcomings—that have emerged.

[35]      Promotion of early agreement by parties and active judicial involvement of the judiciary in the management of discovery has been encouraged since at least 1983, but the emphasis on the “meet and confer” process is of more recent vintage.[98]  To some, the 2006 Amendments bring the process to its ultimate intended use.[99]

[36]      The emphasis is on the preparation of a detailed “discovery plan” to be furnished to the court before the initial pretrial conference, coupled with encouragement to courts to include reference to ESI agreements in the scheduling order.  Parties are expected to discuss any preservation issues and disclosure and discovery issues.  Rule 16(b) makes it clear that any scheduling orders can “provide for the disclosure or discovery of [ESI].”

A.  The Scorecard

[37]      Many of the ninety-four federal district courts studied,  including a number located in major urban districts, have ignored e-Discovery, at least on district-wide basis.[100]  This even includes some districts that have only recently adopted other amendments to their local rules governing the Rule 26(f) process.[101]

[38]      At least thirty-two districts, however, have acknowledged the discovery of electronically stored information in civil litigation.[102]  Of these districts, seven merely make passing reference to e-Discovery in their local rules.[103]  Another twelve districts[104] emphasize e-Discovery topics deemed most worthy of attention at Rule 26(f) conferences.  Nine districts,[105] as well as others using model orders,[106] have adopted pragmatic solutions that address gaps in the Amendments more aggressively.  At least five additional districts have released non-binding guidance for parties on the topic of e-Discovery.[107]

[39]      Many of these efforts center on use of standardized forms for Rule 26(f) reports and discovery plans, as well as for scheduling orders or case management orders.  This has implications for the future.  With the possible consignment of Official Form 52 to oblivion, it will be important for the Administrative Office of the Judicial Conference to make more of an effort to collect the best extant forms and make them readily available to all districts on its national website.[108]

B.  Early Attention

[40]      It is not terribly surprising that many districts have not yet formally addressed e-Discovery.  Busy courts and practitioners may feel that individualized accommodations can be made in cases where e-discovery plays an important role.  In addition, some may have concluded that the 2006 Amendments and emerging case law suffice to place parties and their counsel on notice of the need to address e-Discovery.

[41]      However, there is another possibility.  It may be that the assumed efficacy of early attention to ESI discovery is overstated.  Most Rule 26(f) conferences last for short periods and rarely involve ESI issues.[109]  The conferences may be poorly timed.[110]  Preservation decisions, for example, must often be made before Rule 26(f) conferences.[111]  Moreover, the idea that busy judges can resolve meaningful disputes about the scope of discovery before requests have even been served may be wishful thinking.  There are also avoidable costs that may be wasted if expended too early on e-discovery.[112]  After all, most cases settle.[113]

[42]      Accordingly, it is not clear that front-loading the process by intense and expensive preparations is the most effective means of reducing costs and encouraging cooperation.   Other solutions may be required, such as presumptive “hard limits” or cost shifting, which provide assurance of fairness.  The advantage of experimentation with such measures at the local level is that adjustments can be made as experience mounts, with the best of them slated for national rulemaking.

C Assessment:  The Core Initiatives

[43]      Local initiatives have been prompted by the gaps in the 2006 Amendments, especially as to the onset and scope of preservation obligations, variances in culpability for sanctions, the lack of cost-shifting, and the vagueness of the application of the “accessibility” doctrine to preservation.

i.  Preservation

[44]      The 2006 Amendments ducked preservation issues.[114]  Instead, drafters added Rule 26(b)(2)(B), a presumptive limitation on production of ESI based on “accessibility” subject to overriding for “good cause.”[115]  No attempt was made to deal with its implications for preservation, despite an understanding of the issue.[116]

[45]      The Seventh Circuit Pilot Principles and other local initiatives address this shortcoming directly.  Principle 2.04 provides that “[e]very party to litigation and its counsel are responsible for taking reasonable and proportionate steps to preserve relevant and discoverable ESI within its possession, custody or control.”[117]  In addition, the Seventh Circuit Principle limits the need to preserve specific forms of ESI[118] absent agreement, thus removing incentives to “sand-bag” an opponent by not mentioning the preservation issue earlier.

[46]      The revised Delaware Default Standard[119] also notes that parties need not modify “on a going-forward basis” the backup or archive procedures in place provided that they preserve non-duplicable discoverable material.  Proposals from the Western District of Washington[120] and the Northern District of Illinois[121] also incorporate adopted elements of this approach, as do examples from best practice agreements of parties.[122]

[47]      Professor Stephen Subrin has noted that firm limits are often the best way of “providing constraint, focus, and predictability to the unruly aspects of the federal rule[s].”[123]  They provide a useful “starting point to allow parties and district courts to tailor discovery plans as appropriate”[124] and help deal with “over-preservation,” an abiding problem identified at the 2010 Duke Litigation Conference and the Dallas Conference of 2011.[125]

[48]      Given that specific limitations already exist on the use of interrogatories[126] and depositions,[127] it seems unlikely that limits on preservation efforts exceed permissible consistency boundaries.  The limits are subject to the discretion of the court, applied on a case-by
-case basis, and are not textually inconsistent with any existing rule or statute.

[49]      It would be preferable, however, to adopt these presumptive limitations as a national rule.  The Civil Rules Advisory Committee (the “Rules Committee”) is considering recommending the amendment of Rule 26(b)(1) to limit discovery to information “relevant to any party’s claim or defense and proportional to the needs of the case considering [the factors transferred from (b)(2)(C)(iii)].”[128]  That approach could be combined with other pending proposals to provide “default limitations on discovery of [ESI],” which are “useful referents for preservation decisions,” given that preservation is limited to “‘discoverable’ information.”[129]

ii.  Cooperation

[50]      The Federal Rules do not currently mandate a “duty to cooperate,” having explicitly rejected proposals to do so in former times.[130]  Instead, the Rules require participation by counsel and parties in “good faith” in preparing discovery plans and attending case management conferences.[131]

[51]      Many local rules, however, invoke cooperation as an aspirational standard.[132]  Thus, the Delaware Standard[133] provides that the court expects parties to cooperate with each other in arranging and conducting discovery.[134]  Similar expectations are found in certain ESI Guidelines[135] as well as individualized judicial instructions.[136]  The model order recommended for use in the Northern District of California recites that “[t]he parties are aware of the importance the Court places on cooperation and commit to cooperate in good in good faith throughout the [litigation covered by the Order].”[137]

[52]      Some districts emphasize that this involves “voluntary” action of counsel through “informal, cooperative discovery practices.”[138]  Local Rule 26.4 for the Southern and Eastern Districts of New York also provides that cooperation of counsel must be “consistent with the interests of their clients.”[139]  An open-ended mandate for cooperation, however,  is a slippery slope.[140]  A court has no authority to force a party to compromise a position that it does not wish to take.[141]  Placing that burden on counsel can put counsel in an impossible position with her client.[142]  There is also the problem of interference with the primary source of counsel responsibility, the state licensing activities.[143]

[53]      It is clear, however, that the judicial enthusiasm for cooperation is widespread and growing.  One can safely assume that this will continue given the enthusiasm for the call to change the “culture of discovery from adversarial conduct to [one of] cooperation.”[144]  There seems to be no fundamental inconsistency between the Federal Rules and a call for “cooperation” under local initiatives.[145]

[54]      The Rules Committee has been asked to consider adding cooperation to Rule 1.  At the November 2012 meeting, the Duke Subcommittee appeared to step back from earlier support for requiring that “parties [should] cooperate to achieve” the ends of Rule 1 because of the open-ended nature of the commitment.[146]  However, no vote was taken on the proposal, which remains open.[147]

iii.  Cost Shifting

[55]      The 2006 Amendments avoided dealing with allocation of excessive costs attributable to preservation or production of ESI.  A number of local initiatives identify cost shifting as an option.  New Jersey local rules, for example, require parties to discuss “[w]ho will bear the costs of preservation, production, and restoration (if necessary) of any digital discovery.”[148]  Wyoming does the same.[149]  The Northern District of Ohio Default Standard provides that while “costs of discovery shall be [generally] borne by each party,” the court “will apportion the costs of electronic discovery upon a showing of good cause.”[150]

[56]      While some argue that rules “should require courts to consider cost shifting whenever a party seeks electronic discovery,”[151] a better approach would require cost-shifting for additional costs of preservation and production beyond a core of basic information.[152]  The Model Order for the Federal Circuit, for example, requires that “[c]osts will be shifted for disproportionate ESI production requests pursuant to [FRCP] 26.”[153]  Thus, e-mail production requests are limited “to a total of five custodians per producing party” with costs shifted for additional requests.[154]

[57]      The Duke Subcommittee of the Rules Committee, while stating that it “is not enthusiastic about cost-shifting,” has endorsed an amendment to Rule 26(c) that makes the availability of cost shifting a more “prominent feature of Rule 26(c).”[155]  Those provisions could be “fine-tuned” to differentiate between costs related to core information and those which exceed presumptive limitations.

[58]      Congress is currently taking a “watch and see” attitude, but is clearly interested in the issue.[156]

iv.  Production Formats

[59]      Rules 34 and 45 provide that ESI is to be produced, absent agreement or court order, in the form in which it was maintained or in a “reasonably usable form.”[157]  The clear preference is for parties to reach agreements without involving the courts.[158]  The Rules Committee apparently anticipated that local rules would “pick up the slack.”[159]  That appears to be exactly what has happened.

[60]      By an overwhelming consensus, local rules and guidelines favor the use of text searchable “imaged” formats, such as PDF, TIFF, or JPEG files for production of e-mail and other document like images.[160]  Parties are free, of course, to vary requirements and to specify the fields of metadata to be included in load files to accomplish these goals.[161]  Native production is used only for files “not easily converted to image format, such as Excel, Access files, and drawing files.”[162]

[61]      As explained by a leading case, “even if native files are requested, it is sufficient to produce memoranda, emails, and electronic records in PDF or TIFF format accompanied by a load file containing searchable text and selected metadata.”[163]  Given the consistency of this approach with the intent of the 2006 Amendments, there is no need to further address this by amendments to the national rules.

v.  Search Methodology

[62]      A number of local rules require parties to discuss search methodology, including an exchange of information about any keywords employed,[164] and favor “dialogue to discuss the search terms, as required by Rules 26 and 34.”[165]  The Delaware Default Standard suggests that “a requesting party may request no more than 10 additional search terms to be used in connection with an electronic search.”[166]

[63]      More recently, “predictive coding” and other types of “latent semantic indexing”[167] began to raise similar issues.  One challenge is that parties who seek to utilize these techniques may be required to make a copy of the set of responsive and non-responsive materials used to “train” the mathematical models employed available.[168]

[64]      However, while measures supporting discussions are consistent with the Federal Rules, one cannot reasonably read Rule 16 or Rule 26(f) to support mandating the choice.[169]  As emphasized in Sedona Conference® Principle Six, “[r]esponding parties are best situated to evaluate” and choose the “procedures, methodologies, and technologies” most appropriate to preserve and produce their own ESI.[170]  Compelling a particular choice without regard to individualized proof that a party would not otherwise meet its discovery obl
igations[171] would improperly intrude on “private primary activity”[172] because it affects “behavior at the planning as distinguished from the disputative stage of activity.”[173]

[65]      It is one thing to require, for example, designation of a contact person or “liaison” to coordinate with the court and parties on technical e-Discovery issues.[174]  It is quite another to reach out beyond the litigation context and compel a party to use a particular methodology in carrying out its obligations.[175]  Any such basic change requires national authorization.[176]

vi.  Disclosures Without Discovery

[66]      Some local rules impose affirmative obligations on counsel to become knowledgeable about client information management systems[177] and requires counsel to share that information during the Rule 26(f) process.  According to one local drafting committee, these types of rules are intended to “express the obligations of counsel as articulated in case law beginning with the Zubulake cases.”[178]

[67]      In a broad sense, this is consistent with the observation in the Committee Note to Rule 26(f) that “[i]t may be important for the parties to discuss [information systems] and accordingly important for counsel to become familiar with those systems before the conference.”[179]  However, these comments in the Committee Note are not sufficient to supersede the limitations on disclosures without discovery so carefully expressed in Rule 26(a).[180]

[68]      Rule 26(a) limits early disclosures to information that a party “may use to support its claims or defenses.”[181]  The 2006 Amendments did not expand its scope.  Parties are not required to undertake an open-ended, costly, and ultimately premature effort to locate and review information.[182]

[69]      The issue arose at the 2004 Fordham Conference prior to the adoption of the amendments to Rule 26(a).  While noting that the local rules in New Jersey and Wyoming mandated that counsel acquire information about client systems, one speaker noted that “it may be that, for national rules, such a directive would be viewed as too intrusive.”[183]

[70]      The former chair of the Standing Committee has also noted that a “local rule that require[s] parties to provide an information system ‘map’ at the Rule 26(f) conference” would go “beyond [the] national rules.”[184]  Absent further amendments to the Federal Rules, therefore, local rules and guidelines should seek to accomplish these goals by voluntary, not mandatory, compliance.  Under the case law, the act of requiring a party through its counsel to “furnish more information than is required” is barred.[185]

vii.  Rule 502 Orders

[71]      The 2006 Amendments included a “clawback” mechanism in Rules 26 and 45 to deal with post-production claims of privilege or work-product production, but made no attempt to establish the conditions under which “waiver” by such production could occur.[186]  In 2008, Congress enacted Federal Evidence Rule 502 (“FRE 502”),[187] limiting privilege waiver for “inadvertent” disclosures when the holder “took reasonable steps to prevent disclosure” as well as prompt and reasonable steps to rectify the error.  The Rule also authorized court-adopted agreements that bind parties and non-parties in federal and state cases, even over objection, to waiver-free production without proof of reasonable precautions.[188]

[72]      Surprisingly few districts have emphasized Rule 502 in local rules, guidelines, or amended forms.  Many forms simply ask whether a court order “will be requested, either on stipulation or otherwise” to address the manner in which ESI subject to claims or work product protection will be handled.[189]  However, more recently adopted local rules and model protocols routinely deal with the issue.[190]  It should also be addressed in any new standardized forms that the Administrative Office develops to supplement or replace Official Form 52.

 

IV.  Conclusion

[73]      There has been a healthy proliferation of local e-Discovery initiatives for use in district courts in the federal judicial system.  There is no obvious pattern emerging as the dominant approach.

[74]      Unfortunately, there is very limited empirical evidence on which one can base a conclusion as to the most effective type of local initiative.  The topic has received very little attention[191] and only the Seventh Circuit pilot program has attempted to survey its users.[192]  Hopefully, other districts will put more effort into such surveys.  As demonstrated by the evolution of the Delaware Default Standard, trial and error is useful.

[75]      There is substantial anecdotal evidence, however, that early attention to ESI can play an important role in reducing unnecessary disputes.[193]  Certainly, that effort is preferable to ignoring potential disputes that can be avoided.  The trick seems to be to find the right balance, blending a “light touch” with avoidance of unnecessary costs that produce no gain.  Ultimately, however, the choice between doing nothing and jumping in with both feet is a matter of style that reflects the culture of the district and the degree to which it can be seen as appropriate.[194]

[76]      In the main, the ninety-four districts present the reassuring conclusion that the local rules and forms in current use are largely consistent with the 2006 Amendments.  Moreover, the local initiatives do not appear to be the problem that the Standing Committee originally feared.[195]  There is no drumbeat of complaints, aside from one comment in an ABA journal,[196] that the diversity of local e-discovery procedure has had an adverse impact.  There is no need for drastic action reining in local rulemaking, even if that were somehow possible.

[77]      However, as noted, procedural uniformity could be enhanced by converting some of the local initiatives into national rules.  After six years, the tentative approach of the 2006 Amendments, can safely give way to a more confident and aggressive attempt to improve predictability and address the exploding costs of e-Discovery.

 


* Thomas Allman practiced law as a Partner at Taft, Stettinius & Hollister LLP in Cincinnati until joining BASF Corporation as Vice President, Litigation, in 1993.  He retired in 2004 as Senior Vice President, General Counsel, and Chief Compliance Officer at BASF and thereafter spent three years as Special Counsel to Mayer Brown LLP in Chicago.  Mr. Allman is co-editor of the PLI Electronic Discovery Deskbook and an Adjunct Professor at the University of Cincinnati College of Law.  He is also Chair Emeritus and an active member of the Steering Committee of The Sedona Conference® Working Group 1 on Electronic Document Retention and Production.

 

[1] A. Leo Levin, Local Rules as Experiments: A Study in the Division of Power, 139 U. Pa. L. Rev. 1567, 1579 (1991).

[2] W.D. Wash. LCR 26 (2012).

[3] The initiatives adopted in the Northern District of California blend general guidelines with Model orders designed to educate practitioners on court preferences.  See Court Adopts New E-Discovery Guidelines Effective November 27, 2012, U.S. District Ct. N.D. Cal., http://cand.uscourts.gov/news/101 (last visited Jan. 13, 2013).

[4] See Notice of Proposed Local Rule Changes and Opportunity for Public Comment – November 2012, U.S. District Ct. D. Or., http://ord.uscourts.gov/en/proposed-local-rules/notice-of-proposed-local-rule-changes-and-opportunity-for-public-comment-november-2012 (last updated Nov. 6, 2012).

[5] See generall
y
K&L Gates, Local Rules, Forms and Guidelines of United States District Courts Addressing E-Discovery Issues, Electronic Discovery Law, http://www.ediscoverylaw.com/promo/current-listing-of-states-that/ (last visited Jan. 13, 2013) (noting that “many individual judges and magistrate judges have created their own forms or have crafted their own preferred protocols for e-discovery”).

[6] The focus here is on civil litigation, as distinct from criminal, bankruptcy and admiralty cases.

[7] See generally Letter from Chief Justice John Roberts to J. Dennis Hastert, Speaker of the House of Representatives (Apr. 12, 2006), available at http://www.supremecourt.gov/orders/courtorders/frcv06p.pdf (setting forth the amendments to the Federal Rules of Civil Procedure).

[8] Fed. R. Civ. P. 83(a)(1); see also 28 U.S.C. § 2071(a) (2006) (“[A]ll courts established by Act of Congress may from time to time prescribe rules for the conduct of their business.  Such rules shall be consistent with Acts of Congress and rules and practice prescribed under section 2072 . . . .”).

[9] N.D. Cal. Civil L.R. 1-2(b).

[10] Many Local Rules authorize sanctions for their violation.  See, e.g., C.D. Cal. L.R. 83-7 (relating to “violation of or failure to conform to any of these Local Rules”).

[11] See Whitehouse v. U.S. Dist. Court, 53 F.3d 1349, 1363 (1st Cir. 1995) (“[S]ilence in the federal rules should not be interpreted as a prohibition on local rule-making authority.”).

[12] 28 U.S.C. § 2071(b) (2006); see also Fed. R. Civ. P. 83 (a)(1) (stating that rules shall be prescribed  “after giving appropriate public notice and an opportunity for comment”).

[13] The 1988 Judicial Improvements Act (“JIA”) added a requirement that the district courts use local advisory committees in enacting their rules.  28 U.S.C. § 2077(b); see, e.g., U.S. District Ct. W.D. VA., Standing Order No. 2010-7, available at http://www.vawd.uscourts.gov/storders/Establishment_of_Local_Rules_Advisory_Committee.pdf.

[14] WESTLAW indexes Local Rules by state (e.g., insert “KS-ST-ANN” in “Search for database,” then go to “Table of Contents” and select Local Rules for Civil or Bankruptcy; to retrieve individual Rules, insert “KS-RULES” in “Find this document,” scroll to bottom and insert the desired LR number).  See also Court Websites, U.S. Courts, http://www.uscourts.gov/Court_Locator/CourtWebsites.aspx (last visited Jan. 13, 2013) (linking to the district courts’ websites).

[15] See Fed. R. Civ. P. 83; see also Memorandum from Leonidas Mecham, Director, Administrative Office of the United States Courts, to the Chief Judges and Clerks of the United States District Courts and the United Sates Bankruptcy Courts (Apr. 29, 1996), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/Local_Rules_Uniform_Numbering.pdf.

[16] 130 S. Ct. 705, 710 (2010) (concluding that “the District Court likely violated a federal statute in revising its local rules” by failing to give public notice and an opportunity for comment under 28 US.C. § 2071(b) and Rule 83(a)).

[17] The Northern District of Texas has a pithy set of Local Rules, but the Western District of Wisconsin sets the record: it has only five Local Rules and eight Administrative Orders.  Compare N.D. Tex. L.R., available at http://www.txnd.uscourts.gov/rules/localrules/lr_civil.html, with W.D. Wis.  L.R., available at http://www.wiwd.uscourts.gov/local-rules-and-administrative-orders.

[18] See D. Kan. Rule 83.1.2 (“By vote of a majority of the judges, the court may from time to time issue standing orders dealing with administrative concerns or with matters of temporary or local significance.”).

[19] See, e.g., Local Rules, U.S. District Ct. D. Kan., http://www.ksd.uscourts.gov/flex/?fc=1 (last visited Jan. 13, 2013).

[20] See In re Dorner, 343 F.3d 910, 913 (7th Cir. 2003).

[21] See Comm. on Rules of Practice and Procedure, Report and Recommended Guidelines On Standing Orders In District and Bankruptcy Courts (2009), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/jc09-2009/2009-09-Appendix-F.pdf.

[22] See Fed. R. Civ. P. 83(b).

[23] See, e.g., Practice Guidelines for Judge Robert H. Cleland, U.S. District Ct. E.D. Mich., http://www.mied.uscourts.gov/judges/guidelines/index.cfm?judgeID=12.

[24] The Eastern District of Pennsylvania does a particularly good job in making them available.  See Judges’ Procedures, U.S. District Ct. E.D. Pa., http://www.paed.uscourts.gov/us08001.asp (last visited Jan. 13, 2012).

[25] See In re Atl. Pipe Corp., 304 F.3d 135, 145 (1st Cir. 2002) (finding it within the inherent power of the district court to order non-binding mediation, despite the lack of a local rule on the topic).

[26] See Glenn S. Koppel, Toward A New Federalism in State Civil Justice: Developing a Uniform Code of State Civil Procedure Through a Collaborative Rule-Making Process, 58 Vand. L. Rev. 1167, 1180 (2005) (observing that “the proliferation of local rule-making as a result of the ‘exercise of individualized discretion’ by federal judges” significantly contributes to disuniformity among local discovery practices); see also Richard Marcus, Confessions of a Federal “Bureaucrat”: The Possibilities of Perfecting Procedural Reform, 35 W. St. U. L. Rev. 103, 119 (2007) (suggesting that procedural outcomes are unlikely to be uniform because “local (and individual) variation is quite likely among American judges”).

[27] See Anne Shea Gaza & Jason J. Rawnsley, Local Practices for Electronic Discovery, Fed. Law., Feb. 2011, at 32.

[28] In many Districts, it can be a real challenge to locate the forms; however, the Southern District of West Virginia’s website serves as a good example of a jurisdiction providing easy online access to the forms referenced in its local rules.  See Forms Referenced in the Local Rules, U.S. District Ct. S.D. W. Va., http://www.wvsd.uscourts.gov/rules/local/forms.html (last visited Jan. 13, 2012).

[29] See Forms & Fees, U.S. Courts, http://www.uscourts.gov/FormsAndFees.aspx (last visited Jan. 13, 2012) (providing a general index of AO forms).

[30] See, e.g., Rule 16(b) Scheduling Order, Sample Form 21, Fed. Jud. Center, http://www.fjc.gov/public/pdf.nsf/lookup/CivLit2D_Form21.pdf/$file/CivLit2D_Form21.pdf (last visited Jan. 13, 2013); see also Civil Litigation Management Manual, Second Edition, Fed. Jud. Center, http://www.fjc.gov/public/home.nsf/pages/1245 (last visited Jan. 21, 2013) (providing links to the Civil Litigation Management Manual and sample forms).

[31] Whitehouse v. U.S. Dist. Court, 53 F.3d 1349, 1363 (1st Cir. 1995).

[32] See, e.g., Miss. Pub. Corp. v. Murphee, 326 U.S. 438, 444 (1946) (noting that construction by the Advisory Committee is of weight in assessing “rules formulated and recommended” by them).  But see, e.g., Krupski v. Costa Crociere S.p.A., 130 S. Ct. 2485, 2598-99 (2010) (Scalia, J., concurring) (asserting the primacy of textual comparisons).

[33] 413 U.S. 149, 163-64 (1973) (denying mandamus with regard to local rule permitting juries of six in civil cases where the rule was not in conflict with the applicable federal rule).  At least one commentator criticizes this use of inherent power to “bypass” local rulemaking as “troublesome” because it “exacerbates procedural di
suniformity in the federal system.”  See Samuel P. Jordan, Situating Inherent Power Within a Rules Regime, 87 Denv. U. L. Rev. 311, 318 (2010).

[34] See Charles Alan Wright et al., 12 Federal Practice and Procedure § 3152 (2d ed. 1997) (stating that the Civil Justice Reform Act of 1990 “clouded the evaluation of local rules because this legislation arguably authorized district courts to disregard Civil Rules in their plans for reducing cost and delay”).

[35] Differentiated case management involving “tracks” remains a part of the Local Rules of many courts.  See, e.g., Robert M. Landis et al., Civil Justice Expense and Delay Reduction Plan 5-8 (1991), available at http://www.paed.uscourts.gov/documents/cjraplan/cjraplan.pdf; see also E.D. Pa. L.R.C.P. 1.1.1(f) (citing an Order adopting the Civil Justice Expense and Delay Reduction Plan).

[36] See, e.g., D. Ariz. LRCiv 83.9(a)(2)(A) (assigning duty to assure “consistency” to Rules of Practice Advisory Committee).

[37] See 28 U.S.C. § 2071(d) (2006); see also Fed. R. Civ. P. 83(a).

[38] 28 U.S.C. § 332(d)(4); see also 28 U.S.C. § 331.

[39] See Myron J. Bromberg & Jonathan M. Korn, Individual Judges’ Practices: An Inadvertent Subversion of the Federal Rules of Civil Procedure, 68 St. John’s L. Rev. 1, 9 (1994).

[40] The cover page of the Local Rules effective in March, 2012 in the Eastern and Southern Districts of New York bear the legend “[a]pproved by the Judicial Council of the Second Circuit.”  Local Rules of the United States District Courts for the Southern and Eastern Districts of New York, U.S. District Ct. E.D.N.Y. 1 (Mar. 2, 2012), available at http://www.nyed.uscourts.gov/sites/default/files/local_rules/localrules.pdf.

[41] Standing Comm. on Rules of Practice & Procedure, Report on Local Rules 1 (2004), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/Final_Local_Rules_Report_March_%202004.pdf.

[42] See District Courts Selected for Patent Pilot Program, U.S. Courts (June 7, 2011), http://www.uscourts.gov/News/NewsView/11-06-07/District_Courts_Selected_for_Patent_Pilot_Program.aspx.

[43] See J. John Koeltl  et al., Pilot Project Regarding Initial Discovery Protocols for Employment Cases Alleging Adverse Action 11 (2011), available at http://www.fjc.gov/public/pdf.nsf/lookup/DiscEmpl.pdf/$file/DiscEmpl.pdf (recommending adoption of District wide Standing Order whose requirements “supersedes” obligations to disclose under F.R.C.P. 26(a)(1)).

[44] See Proposed D. Or. LR 26-7 (proposed Nov. 2012), available at http://ord.uscourts.gov/index.php?option=com_phocadownload&view=category&download=298%3Anovember-2012-proposed-new-and-amended-rules&id=60%3A2013-proposed-local-rules&lang=en.

[45] J. Edward T. Gignoux et al., Preliminary Draft of Proposed Amendments to the Federal Rules of Civil Procedure, Federal Rules of Criminal Procedure, Rules Governing Section 2254 Cases in the United States District Courts, and Rules Governing Section 2255 Proceedings in the United States District Courts, 98 F.R.D. 337, 371 (1983) (“When authorized by the judicial council, a district court may adopt on an experimental basis for no longer than two years a local rule that may not be challenged for inconsistency with these rules, after giving appropriate public notice and an opportunity to comment.”).

[46] J. Robert E. Keeton et al., Preliminary Draft of Proposed Amendments to the Federal Rules of Civil Procedure and the Federal Rules of Evidence, 137 F.R.D. 53, 153. (1991) (recommending that an experimental rule be “limited in its period of effectiveness to five years or less”).

[47] D.C. COLO. LCivR 1.1(I), available at http://www.cod.uscourts.gov/Portals/0/Documents/LocalRules/2012-LR/2012-Approved-Local-Rules.pdf.

[48] See Charles Alan Wright et al., supra note 34, at § 3153 (collecting examples of discovery innovations adopted in Federal Rules 33 and 37(a) that surfaced first in local rules).

[49] Lauren Robel, Fractured Procedure: The Civil Justice Reform Act of 1990, 46 Stan. L. Rev. 1447, 1484 (1994) (“Local court tinkering with the Federal Rules is rarely inspired by the disutility of a Rule under local conditions.  Rather, it is inspired by a belief that the rulemakers got it wrong.”).

[50] Levin, supra note 1, at 1579 (“Local rules offer the most expeditious means of experimenting.”).

[51] See id. at 1583 (“Consistency with the national rules was not to be required of rules that were avowedly experimental.”).

[52] See Thomas Y. Allman, The Need for Federal Standards Regarding Electronic Discovery, 68 Def. Couns. J. 206, 208 (2001).

[53] See id. (stating that “amendments to the Federal Rules are necessary”).

[54] An initial version was issued in the summer of 2004 for Public Comment.  See Advisory Comm. on Fed. Rules of Civil Procedure, Revised Report Of The Civil Rules Advisory Committee (2004), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/comment2005/CVAug04.pdf.

[55] See Adoption and Amendment to Civil Rules, 234 F.R.D. 219, 279, 312-13 (2006).

[56] E.D. Ark. & W.D. Ark . L.R. 26.1 (whether anticipated requests exceeded “reasonably available [information] in the ordinary course of business;” if so, the costs of going further; the format and media of production; whether reasonable preservation measures had been taken to preserve; any other problems).

[57] See Panel Discussions, Panel Five: E-Discovery Under State Court Rules and United States District Court Rules, 73 Fordham L. Rev. 85, 93-94 (2004) (apart from issue of whether or not the Arkansas Rule produces “balkanization of the Federal Rules through Local Rules”).

[58] D. Wyo. U.S.D.C.L.R. 26.1(d)(1) & App. D (requiring discussion of listed aspects of  “computer data discovery”).

[59] D.N.J. L.Civ.R. 26.1(b)(2), (d) (listing required topics for Rule 26(f) discovery plan and imposing duty to “investigate and disclose” on counsel).

[60] M.D. Pa. L.R. 26.1 (duty to investigate by attorneys; also emphasizing email issues such as search protocols and the need to restore deleted information from backups or archives; advocating allocation of costs for disclosures “beyond what is reasonable available in the ordinary course of business”).

[61] The Middle District of Florida also issued a handbook that references electronic discovery issues.  See U.S. Dist. Court Middle Dist. Fla., Middle District Discovery 21-22 (2001), available at  http://www.flmd.uscourts.gov/Forms/Civil/Discovery_Practice_Manual.pdf.

[62] The District of Delaware adopted major revisions in 2011, reacting to concerns that the Default Standards “[was] basic, a bit scattershot, and meant to be a punishment to parties who failed to cooperate.”  Delaware District Court’s Revised Default eDiscovery Standard is Horrible-Electronic Discovery, ElectronicDiscovery (May 7, 2012), http://electronicdiscovery.info/delaware-district-courts-revised-default-ediscovery-standard-is-horrible-electronic-discovery/.

[63] N.D. Ohio LR 16.3 & App. K.

[64] See Administrative Order No. 174 Regarding Default Standard for Discovery of Electronically Stored Information (M.D. Tenn., July 9, 2007), available at http://www.tnmd.uscourts.gov/files/AO_174_E-Discovery.pdf.

[65] W.D. Tenn. LR 26.1.

[66] See Thomas
Y. Allman, Addressing State E-Discovery Issues Through Rulemaking: The Case for Adopting the 2006 Federal Amendments, 74 Def. Couns. J. 233, 239 (2007).

[67] See, e.g., D. Vt. L.R. 26(a)(4)(B) (“deadlines for discovery of [ESI]”).

[68] See, e.g., E.D. Wis. L.R. 26(a)(1)-(5) (“reasonable accessibility” and burdens and expense; format and media for production; measures taken to preserve; procedures for asserting post-production claims of privilege or work product; other issues relating to e-discovery).

[69] See D. Miss. L.U.Civ.R. 26(e)(2)(B)(i)-(xi) (providing a comprehensive list of ESI related topics for discussion by parties for the Northern and Southern Districts of Mississippi).  Alone among the studied local rules, D. Miss. L.U.Civ.R. 45(d) (Non-Party ESI) also extends the duty to meet and confer to non-parties (or their counsel, if represented) when a subpoena duces tecum is issued for ESI.

[70] See W.D. Pa. LCvR 26.2 (requiring designation of a “resource” person, and speaking of allocation of “costs of preservation [and] production” of ESI).

[71] See W.D.N.Y.  L.R. Civ. P. 26(f)(1)-(6) (requiring phased search for ESI not reasonably accessible with possible payment of costs of “search, retrieval, review, and production;” specifying that metadata need not be produced absent agreement or good cause; providing for production as imaged files (PDF or TIFF) absent particularized need for native production).

[72] See, e.g., D. Conn. Civ. Report Form 26(f), available at http://www.ctd.uscourts.gov/sites/default/files/local_rules/Revised%20Local%20Rules%20%2011-15-2012.pdf (included as Appendix to Local Rules).

[73] See, e.g., D. Neb. Rule 26(f) Report  ¶ IV(E)(3)(b)(i)-(xi), available at http://www.ned.uscourts.gov/internetDocs/forms/form35.pdf (listing 11 topics which parties have discussed  and requiring parties to either agree that no “special” provisions are required or, if they are, to list the agreements to be followed).

[74] The Model Joint Electronic Discovery Submission and Order used in the S.D.N.Y. Pilot project discussed below is a classic example of this approach.  See infra note 80.

[75] See Guidelines for Discovery of Electronically Stored Information (ESI), U.S. District Ct. D. Kan., http://www.ksd.uscourts.gov/wp-content/uploads/2010/03/electronicdiscoveryguidelines.pdf (last visited Jan. 23, 2013).

[76] The Sedona Principles Addressing Electronic Document Production, U.S. Dist. Ct. C.D. Ill., http://www.ilcd.uscourts.gov/sites/ilcd/files/local_rules/Sedona%20Principles.pdf (last visited Jan. 23, 2013); Local Rules and Orders, U.S. District Ct. C.D. Ill., http://www.ilcd.uscourts.gov/court-info/local-rules-and-orders/local-rules (last visited Jan. 12, 2013).

[77] Suggested Protocol for Discovery of Electronically Stored Information, U.S. District Ct. D. Md., http://www.mdd.uscourts.gov/news/news/esiprotocol.pdf [hereinafter D. Md. Suggested Protocol] (last visited Jan. 23, 2013).  The Protocol was applied by order in O’Bar v. Lowe’s Home Ctrs., No. 5:04-cv-00019-W, 2007 WL 1299180, at *4 n.2 (W.D.N.C. May 2, 2007).

[78] See Mezu v. Morgan State Univ., 269 F.R.D. 565, 570-71 (D. Md. 2010) (implying that violations of e-Discovery Protocol will result in sanctions that may include case-dispositive sanctions including contempt of court).

[79] See, e.g., Pretrial Order No. 1, available at http://www.paed.uscourts.gov/documents/procedures/shapole.pdf.

[80] See Judicial Improvements Comm., Report On Pilot Project Regarding Case Management Techniques For Complex Civil Cases 18-29 (Oct. 2011), available at http://www.nysd.uscourts.gov/rules/Complex_Civil_Rules_Pilot.pdf.

[81] See D. Md. LAR 802(h).

[82] See D. Mass. LR 16.6 (7)(a)-(d).

[83] Fed. Circuit Advisory Council, Model Order Regarding E-Discovery in Patent Cases (2011) [hereinafter Model Patent Order], available at http://www.cafc.uscourts.gov/images/stories/the-court/Ediscovery_Model_Order.pdf.

[84] See Proposed D. Or. LR 26-6 (proposed Nov. 2012), available at http://ord.uscourts.gov/index.php?option=com_phocadownload&view=category&download=298%3Anovember-2012-proposed-new-and-amended-rules&id=60%3A2013-proposed-local-rules&lang=en.

[85] Statement of Purpose and Preparation of Principles, Seventh Circuit Electronic Discovery Pilot Program, http://www.discoverypilot.com/ (last visited Jan. 12, 2013).

[86] Id. (providing links to Principles and to Model Standing Order).

[87] Principles Relating to the Discovery of Electronically Stored Information, Seventh Circuit Electronic Discovery Pilot Program, 3-4 (Aug. 1, 2010), http://www.discoverypilot.com/sites/default/files/Principles8_10.pdf [hereinafter Seventh Circuit Principles].

[88] See The Sedona Conference®, The Sedona Conference Commentary on Proportionality in Electronic Discovery, 11 Sedona Conf. J. 289, 292 (2010).

[89] Seventh Circuit Principles, supra note 87, at 4; see also Thomas Y. Allman, Preservation Rulemaking After the 2010 Litigation Conference, 11 Sedona Conf. J. 217, 218-19 (2010).

[90] See The Sedona Conference®, The Sedona Principles: Second Edition Best Practices Recommendations & Principles for Addressing Electronic Document Production 28 (Jonathan M. Redgrave et al. eds., 2d ed. 2007), available at http://www.sos.mt.gov/Records/committees/erim_resources/A%20-%20Sedona%20Principles%20Second%20Edition.pdf (“[I]t is unreasonable to expect parties to take every conceivable step to preserve all potentially relevant [ESI]”); id. at 45 (Noting that the primary source should be “active data” absent demonstrable “need and relevance that outweigh the costs and burdens” including the “disruption of business and [IT] activities”); id. at 49 (Stating that there is no need to preserve or produce “deleted, shadowed, fragmented, or residual” ESI).

[91] See Proposed N.D. Ill. LPR ESI 2.3(d) (proposed Sept. 27, 2012), available at http://www.ilnd.uscourts.gov/_assets/_documents/Rules/LPR12.pdf.

[92] D. Del. Default Standard For Discovery, Including Discovery of Electronically Stored Information (revised Dec. 8, 2011), available at http://www.ded.uscourts.gov/sites/default/files/Chambers/SLR/Misc/EDiscov.pdf [hereinafter D. Del. Default Standard].

[93] Id. at Schedule A.

[94] W.D. Wash. Model Protocol For Discovery Of Electronically Stored Information in Civil Litigation § II(C)(2), available at http://www.wawd.uscourts.gov/sites/wawd/files/61412ModeleDiscoveryProtocol.pdf [hereinafter W.D. Wash. Model Protocol] (listing categories of ESI which “need not be preserved” absent a showing of good cause by the requesting party).

[95] See Model Patent Order, supra note 83, at ¶¶ 10-11 (limiting email production requests “to a total of five custodians per producing party” and shifting costs for additional requests; also limiting “contested requests” for additional search terms under same conditions).

[96] See E.D. Tex. Local Civil Rules App. P. ¶¶ 8-9, available at http://www.txed.uscourts.gov/page1.shtml?location=rules (limiting discovery to eight custodians and ten search terms).

[97] See Proposed D. Or. LR 26-6 (proposed Nov. 2012), available at http://ord.uscourts.gov/en/proposed-local-rules/notice-of-proposed-local-r
ule-changes-and-opportunity-for-public-comment-november-2012  (adopting the Model Order “in all cases in which a claim of patent infringement is asserted”).

[98] See Moze Cowper & John Rosenthal, Not Your Mother’s Rule 26(f) Conference Anymore, 8 Sedona Conf. J. 261, 262 (2007).

[99] See Steven S. Gensler, Some Thoughts on the Lawyer’s E-Volving Duties in Discovery, 36 N. Ky. L. Rev. 521, 525-38 (2009) (describing the “front-loading” effect of the 2006 Amendments).

[100] See also K&L Gates, supra note 5 (listing e-discovery initiatives in effect as of late 2011).  While there is evidence of activity in most major urban districts, it is not evident in those which include Cincinnati, Dallas, Detroit, the District of Columbia, Los Angeles, Miami, New Orleans, San Diego, or St. Louis.

[101] See, e.g., C.D. Cal. L.R. 26-1 (“At the conference of parties held pursuant to F.R.Civ.P. 26(f), the parties shall discuss the following matters in addition to those noted in F.R.Civ.P. 26(f)” [without mention of ESI-related issues]).

[102] See generally K&L Gates, supra note 5.

[103] See S.D. Fla. L.R. 26.1; LR 16.2, NDGa; E.D.Mo. L.R. 26-3.01; M.D.N.C. LR 16.1; W.D.N.C. LCvR 16.1; D.P.R. L.Cv.R. 16; D. Vt. L.R. 26.

[104] See E.D. & W.D. Ark. R. 26.1(4)(a)-(e); D. Mass  LR 16.6(A)(7)(a)-(d).;  D. Miss. L.U.Civ.R. 26(e)(2)(B);  D.N.J. L.Civ.R. 26.1(d); W.D.N.Y. L.R. Civ. P. 26(f); M.D. Pa. R. 26.1(c); W.D. Pa. LCvR 26.2; Local Rules W.D. Wash. CR 26(f)(1)(I)-(J); E.D. Wis. L.R. 26(a)(1)-(5); D. Wyo. U.S.D.C.L.R. 26.1(e).

[105] N.D. Cal., [Model] Stipulated Order Re: Discovery of Electronically Stored Information for Standard Litigation, available at http://www.cand.uscourts.gov/eDiscoveryGuidelines; N.D. Ill., General Order 09-0022, available at http://www.ilnd.uscourts.gov/home/_assets/_documents/Rules/09022%20Patent%20Rules.pdf; D. Del. Default Standard, supra note 92; S.D.N.Y. Standing Order M10-468, available at http://www.nysd.uscourts.gov/rules/Complex_Civil_Rules_Pilot.pdf; N.D. Ohio LR App. K; D. Or., Model E-Discovery Order, available at http://www.ord.uscourts.gov/en/proposed-local-rules/notice-of-proposed-local-rule-changes-and-opportunity-for-public-comment-november-2012; Administrative Order No. 174 Regarding Default Standard for Discovery of Electronically Stored Information (M.D. Tenn., July 9, 2007), available at http://www.tnmd.uscourts.gov/files/AO_174_E-Discovery.pdf; W.D. Tenn. LR 26.1; E.D Tex. Local Civil Rules App. P.

[106] The Seventh Circuit Pilot Project and the Federal Circuit Model Order advocate use of this approach in individual cases, a topic beyond the scope of this analysis.  See Statement of Purpose and Preparation of Principles, supra note 85; Model Patent Order, supra note 83.

[107] N.D. Cal., Guidelines for the Discovery of Electronically Stored Information, available at http://www.cand.uscourts.gov/eDiscoveryGuidelines; S.D. Fla. L.R. App. A; D. Kan., Guidelines for Discovery of Electronically Stored Information, available at http://www.ksd.uscourts.gov/wp-content/uploads/2010/03/electronicdiscoveryguidelines.pdf (last visited Jan. 24, 2013); D. Md. Suggested Protocol, supra note 77; Local Rules, U.S. District Ct. C.D. Ill., http://www.ilcd.uscourts.gov/court-info/local-rules-and-orders/local-rules (last visited Jan. 24, 2013) (J. John A. Gorman adopting the Sedona Principles).

[108] A Rule 84 Subcommittee of the Civil Rules Committee is considering (as of November, 2012) recommending the abrogation of Rule 84 (and most Official forms) in deference to the forms issued by the Administrative Office.  See Advisory Committee on Civ. Rules, Reporter’s Memorandum Regarding Rule 84, in Meeting on November 1‑2, 2012 of the Advisory Committee on Civil Rules 407, 407-25 (2012), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/Agenda%20Books/Civil/CV2012-10.pdf.  The forms available on the AO website do not relate to the Rule 26(f) and Rule 16(b) processes.  See Courts Forms by Number, U.S. Courts, http://www.uscourts.gov/FormsAndFees/Forms/CourtForms.aspx (last visited Jan. 24, 2012).

[109] See Emery G. Lee III, Fed. Judicial Ctr., Early Stages of Litigation Attorney Survey 5 (2012), available at http://www.fjc.gov/public/pdf.nsf/lookup/leeearly.pdf/$file/leeearly.pdf (“[J]ust 25% of all respondents discussed electronic discovery issues at a Rule 26(f) meeting, and only 13% of all respondents discussed preservation obligations.”).

[110] See, e.g., Christopher Boehning & Daniel J. Toal, Are Meet, Confer Efforts Doing More Harm Than Good?, N.Y. L.J., July 31, 2012 (“Forcing lawyers to discuss in detail issues they would otherwise skip over at the outset of a litigation may not be the best way to reduce disagreement and foster cooperation.”).

[111] See generally Douglas L. Rogers, A Search for Balance in the Discovery of ESI Since December 1, 2006, 14 Rich. J.L. & Tech. 8, at ¶ 5 (2008), http://jolt.richmond.edu/v14i3/article8.pdf (pointing out the common law obligations to preserve information, which push parties to make unilateral preservation decisions when litigation is “reasonably likely”).

[112] See Gensler, supra note 99, at 536 (“[L]awyers will spend many hours engaging in the range of activities contemplated by the Advisory Committee Note to Rules 26(f) and recommended by the Sedona Conference. . . . [and] parties will also incur internal costs . . . to assist the lawyers . . . .”).

[113] See John H. Langbein, The Disappearance of Civil Trial in the United States, 122 Yale L.J. 522, 524 (2012) (“Thus, in American civil justice, we have gone from a world in which trials, typically jury trials, were routine, to a world in which trials have become ‘vanishingly rare.’”).

[114] See Thomas Y. Allman, Managing Preservation Obligations After the 2006 Federal E-Discovery Amendments, 13 Rich. J. L. & Tech. 9, at ¶¶ 12-13 (2007), http://jolt.richmond.edu/v13i3/article9.pdf (the Committee was urged to “deal directly with the ambiguities of preservation obligations in the ESI context,” but did not do so).

[115] See Fed. R. Civ. P. 26(b)(2)(B).

[116] See Adoption and Amendment to Civil Rules, 234 F.R.D. 219, 331, 336-37 (2006)(listing “[e]xamples [of inaccessible sources] from current technology” whose preservation and production would not normally be warranted).

[117] Seventh Circuit Principles, supra note 87; see also Final Report on Phase Two, Seventh Circuit Electronic Discovery Pilot Program, 9 (May 2012), http://www.discoverypilot.com/sites/default/files/Phase-Two-Final-Report-Appendix.pdf.

[118] Seventh Circuit Principles, supra note 87 (“deleted” or “unallocated” data on hard drives, RAM, temporary files, frequently updated metadata, duplicative backup data and other forms of ESI requiring “extraordinary affirmative measures”).

[119] D. Del. Default Standard, supra note 92, at ¶ 1(c).

[120] See W.D. Wash. Model Protocol, supra note 94, at ¶ C(2)(a)-(h) (listing types of ESI similar to those in the Default Standard).

[121] See Proposed N.D. Ill. LPR ESI 2.3(d) (proposed Sept. 27, 2012), available at http://www.ilnd.uscourts.gov/_assets/_documents/Rules/LPR12.pdf.

[122] See Chad Everingham, Practical E-Discovery Issues, 51 The Advoc. 37, 37 (2010) (recommending stipulation under which
parties provide a list of no more than 15 custodians, which can be modified  by the other side and custodians added by title; the same with search terms).

[123] Stephen N. Subrin, Uniformity in Procedural Rules and the Attributes of a Sound Procedural System: The Case for Presumptive Limits, 49 Ala. L. Rev. 79, 101 (1997).

[124] Steven R. Trybus & Sara Tonnies Horton, A Model Order Regarding E-Discovery in Patent (and Other?) Cases, 20 ABA Sec. of Litig., no. 2, Winter 2012, at 2, available at http://jenner.com/system/assets/publications/8846/original/AModelOrderRegardingEDiscoveryinPatent.pdf?1328818478.

[125] See Notes from the Mini-Conference on Preservation and Sanctions, Jud. Conf. Subcommittee on Discovery 24 (Sept. 9, 2011), http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/DallasMiniConf_Materials/Notes%20from%20the%20Mini-Conference%20on%20Preservation%20and%20Sanctions.pdf.

[126] Fed. R. Civ. P. 33(a) (no more than 25 written interrogatories, “including all discrete subparts”).

[127] Fed. R. Civ. P. 30(d)(2) (“a deposition is limited to 1 day of 7 hours”).

[128] Initial Rules Sketches, Duke Conference Subcommittee, 19-20 (Oct. 2012), http://law.duke.edu/sites/default/files/images/centers/judicialstudies/Panel_4-Background_Paper.pdf.

[129] Advisory Committee on Civ. Rules, Memo Regarding Sanctions/Preservation Issues, in Meeting on March 22‑23, 2012 of the Advisory Committee on Civil Rules 249, 274-76 (2012), available at http://www.uscourts.gov/uscourts/RulesAndPolicies/rules/Agenda%20Books/Civil/CV2012-03.pdf (proposing, inter alia, that discovery “need not be provided” from nine sources of ESI, nor from “key custodians” and that search terms may be used).

[130] See Gensler, supra note 99, at 547 (A 1978 proposal requiring cooperation was deleted “in light of objections that it was too broad,” and the requirement to participate in “good faith” was substituted).

[131] See, e.g., Fed. R. Civ. P. 16(f); Fed. R. Civ. P. 37(f).

[132] S.D. Cal. CivLR 16.1(d) (encouraging development of a “cooperative discovery schedule”).

[133] Del. Default Standard, supra note 95, at ¶ 1(a) (“[p]arties are expected to reach agreements cooperatively on how to conduct discovery under [Rules] 26-36”).

[134] N.D. Ohio LR 16.3, available at http://www.ohnd.uscourts.gov/assets/Rules_and_Orders/Local_Civil_Rules/CoverSheet.htm (applying Appendix K absent agreement, which provides that the court expects parties to “cooperatively reach agreement” on how to conduct discovery).

[135] See, e.g., M.D. Ala. Guidelines to Civil Discovery Practice § I(A), available at http://www.almd.uscourts.gov/docs/GUIDCVDS.pdf (“discovery in this district is normally practiced with a spirit of ordinary civil courtesy and honesty”).

[136] See, e.g., J. Robert H. Cleldan, Discovery Practices and Expectations, U.S. District Ct. E.D. Mich., 1 (Apr. 2003), http://www.mied.uscourts.gov/judges/practices/Cleland/PDF%20Files/DiscoveryPrac.pdf (“The court expects parties and counsel to conduct discovery in a cooperative way, consistent with Fed.R.Civ.P. 1.”).

[137] N.D. Cal., [Model] Stipulated Order Re: Discovery of Electronically Stored Information for Standard Litigation, available at http://www.cand.uscourts.gov/eDiscoveryGuidelines.

[138] See, e.g., D. Mass. LR 26.l(a)(1).

[139] E.D.N.Y. & S.D.N.Y. L.R. 26.4.

[140] See Steven S. Gensler, A Bull’s Eye View of Cooperation in Discovery, 10 Sedona Conf. J. 363, 374 (2009) (“[T]o the extent local rules are construed as ordering parties to disclose information that would otherwise be the subject of formal discovery, or as mandating that the parties reach discovery agreements when there is a genuine dispute, they likely go too far . . . .present[ing] serious questions of validity in terms of inconsistency with the Federal Rules.”).

[141] See Goss Graphics Sys., Inc. v. DEV Indus., Inc., 267 F.3d 624, 627 (7th Cir. 2001).

[142] See Thomas Y. Allman, Achieving an Appropriate Balance: The Use of Counsel Sanctions In Connection with the Resolution of E-Discovery Misconduct, 15 Rich. J.L. & Tech. 9,  at ¶ 2 (2009), http://jolt.richmond.edu/v15i3/article9.pdf (a client has the ethical right to direct its counsel as it desires, and overly demanding local rules may impose unnecessary burdens on counsel with unforeseen consequences).

[143] See Joan C. Rogers, Ethics 20/20 Rule Changes Approved by ABA Delegates With Little Opposition, Bloomberg BNA (Aug. 15, 2012), http://www.bna.com/ethics-2020-rule-n12884911245/.

[144] The Sedona Conference,® The Sedona Conference Cooperation Proclamation, 10 Sedona Conf. J. 331, 331 (2009) (“an exercise in economy and logic” because “[i]t is not in anyone’s interest to waste resources on unnecessary disputes, and the legal system is strained by ‘gamesmanship’ or ‘hiding the ball’ to no practical effect”).

[145] See Bd. of Regents v. BASF Corp., No. 4:04CV3356, 2007 WL 3342423, at *5 (D. Neb. Nov. 5, 2007) (“Compliance with [the 2006 Amendments] has placed—on counsel—the affirmative duties to work with clients to . . . cooperatively plan discovery with opposing counsel, Rule 26(f) . . . .”).

[146] See Initial Rules Sketches, supra note 128, at 42 (noting that opposition was based on “concern that cooperation is an open-ended concept that, if embraced in rule text, could easily lead to less cooperation and an increase in disputes in which every party accuses every other party of failing to cooperate”).

[147] The Sedona Conference® on behalf of its drafting teams and Steering Committee, suggested addition of the phrase “complied with” in Rule 1 to convey the value of cooperation, to which reference would be made in the Committee Note.  See Letter from Steering Committee of WG1 to J. David G. Campbell et al., Unites States District Court Justices (Oct. 3, 2012) (on file with author).

[148] D.N.J. L.Civ.R. 26.1(d)(3)(b).

[149] D. Wyo. U.S.D.C.L.R. 26.1(e)(2); see also D. Wyo. U.S.D.C.L.R. 26.2 (“cost sharing” should be discussed at Rule 26(f) conference).

[150] N.D. Ohio LR App. K.

[151] John H. Beisner, Discovering a Better Way: The Need for Effective Civil Litigation Reform, 60 Duke L.J. 547, 585 (2010).

[152] See, e.g., Boeynaems v. LA Fitness Int’l, LLC, 285 F.R.D. 331, 341 (E.D. Pa. 2012) (requiring additional discovery to be at the cost of the requesting party since “a very large set” of documents had already been amassed “mostly at [producing party’s expense]”).

[153] Model Patent Order, supra note 85, at ¶ 3 (“Likewise, a party’s nonresponsive or dilatory discovery tactics will be cost-shifting considerations”).

[154] Id. at 10.

[155] Initial Rules Sketches, supra note 128, at 37 (providing alternative formulations to emphasize that Rule 26(c) authorizes cost allocation).

[156] See Costs and Burdens of Civil Discovery: Hearing Before the H. Subcomm. on the Constitution of the H. Comm. on the Judiciary, 112th Cong. 9 (2011) (statement of Tony West, Assistant Att’y Gen. of the United States).

[157] Fed. R. Civ. P. 34(b)(2)(E)(ii); Fed. R. Civ. P. 45(d)(1)(B).

[158] See Kentucky Speedway, LLC v. NASCAR, No. 05-138-WOB, 2006 WL 5097354, at *8
(E.D. Ky. Dec. 18, 2006) (“The issue of whether metadata is relevant or should be produced is one which ordinarily should be addressed by the parties in a Rule 26(f) conference.”).

[159] See Dahl v. Bain Capital Partners, LLC, 655 F. Supp. 2d 146, 148 (D. Mass. 2009) (addressing format of production because “the Local Rules of this court have yet to provide any guidance on electronic discovery”).

[160] See D. Md. Suggested Protocol, supra note 79, at 17 (“ESI should be produced to the Requesting Party as Static Images,” with any subsequent production in Native File format requiring a showing of “particularized need for that production”).

[161] See D. Del. Default Standard, supra note 92, at ¶ 5(c)&(e) (listing metadata fields).

[162] W.D. Wash. Model Protocol, supra note 94, at § II(E)(3)-(4).  The Model Protocol also provides alternative instructions for more complex cases, including such details as appropriate software files for use with Concordance® or Summation® review platforms.  See id., at § III(E)(2).  Also discussed is the use of OCR technology for scanning of hard copy documents, with appropriate cross-reference files.  See id., at § III(2)-(4).

[163] Aguilar v. Immigration & Customs Enforcement Div., 255 F.R.D. 350, 353 n.2 (S.D.N.Y. 2008) (defining TIFF and PDF, load files and native formats); id. at 356 (citing to Sedona Conference Principle 12, Comment 12b Illus. i).

[164] See, e.g., W.D.N.Y. L.R. Civ. P. 26(f) (describing need to agree on search methodology).

[165] In re Seroquel Prods. Liab. Litig., 244 F.R.D. 650, 664 (M.D. Fla. 2007).

[166] D. Del. Default Standard, supra note 92, at ¶ 5.

[167] Jason R. Baron, Law in the Age of Exabytes: Some Further Thoughts on ‘Information Inflation’ and Current Issues in E-Discovery Search, 17 Rich. J.L. & Tech. 9, at ¶ 32 (2011), http://jolt.richmond.edu/v17i3/article9.pdf (describing variations of techniques based on “latent semantic indexing,” such as “‘predictive coding,’ ‘clustering’ technologies, ‘content analytics,’ and ‘auto-categorization,’ among many others”).

[168] See Ronni Solomon, Are Corporations Ready to Be Transparent And Share Irrelevant Documents With Opposing Counsel to Obtain Substantial Cost Savings Through the Use of Predictive Coding?, The Metropolitan Corp. Couns., Nov. 2012, at 26, available at http://www.metrocorpcounsel.com/pdf/2012/November/26.pdf (collecting relevant cases).

[169] See J.F. Edwards Constr. Co. v. Anderson Safeway Guard Rail Corp., 542 F.2d 1318, 1323-25 (7th Cir. 1976) (neither Rule 16 nor the “circumscribed area of power” authorize a judge to compel compliance under facts of case); see also Identiseal Corp. of Wis. v. Positive Identification Sys., Inc., 560 F.2d 298, 302 (7th Cir. 1977) (parties, rather than the court, should determine litigation strategy).

[170] The Sedona Conference®, The Sedona Conference Database Principles: Addressing & Production of Databases & Database Information in Civil Litigation 12 (Conrad J. Jacoby et al. eds., Mar. 2011 Public Comment ed.), available at https://thesedonaconference.org/system/files/sites/sedona.civicactions.net/files/private/drupal/filesys/publications/Database_Principles.pdf.

[171] See, e.g., SEC v. Collins & Aikman Corp., 256 F.R.D. 403, 414 (S.D.N.Y. 2009) (compelling negotiations for a “workable search protocol” because party and its counsel acted unreasonably).

[172] Hanna v. Plumer, 380 U.S. 460, 477 (1965) (Harlan, J., concurring).

[173] Olin Guy Wellborn III, The Federal Rules of Evidence and the Application of State Law in the Federal Courts, 55 Tex. L. Rev. 371, 403-04 (1977) (a rule which affects “primary—nonlitigation related—conduct” is prohibited by the Enabling Act).

[174] See, e.g., W.D. Pa. LCvR 26.2(B).

[175] A classic example of overreaching is the requirement in some early local initiatives that “retention coordinators” be appointed  and charged with ensuring that relevant information was not deleted by individual custodians.  See, e.g., J. Timothy J. Savage, Order Governing Electronic Discovery, at ¶ 8, http://www.paed.uscourts.gov/documents/procedures/savpold.pdf (last visited Dec. 29, 2012); see also N.D. Ohio LR App. K, at ¶ 7; Administrative Order No. 174 Regarding Default Standard for Discovery of Electronically Stored Information (M.D. Tenn., July 9, 2007), available at http://www.tnmd.uscourts.gov/files/AO_174_E-Discovery.pdf.

[176] See Miner v. Atlass, 363 U.S. 641, 650 (1960) (invalidating basic innovations which should have been addressed at the national level).

[177] D. Kan., Guidelines for Discovery of Electronically Stored Information (ESI) ¶ 1 (2007) (“counsel should [also] make a reasonable attempt to review their clients’ ESI to ascertain the contents, including backup, archival and legacy data (outdated formats or media)”), available at http://www.ksd.uscourts.gov/wp-content/uploads/2010/03/electronicdiscoveryguidelines.pdf.

[178] Susan Ardisson & Joseph Decker, Western District Adopts New Local Rule on Electronic Discovery, 11 Law. J. 4, 4 (2009).

[179] Fed. R. Civ. P. 26(f) advisory committee’s note 2006.

[180] To date, the Federal Rules have been quite precise in regard to compliance obligations of counsel, which are mainly found in Rule 11 and 26(g), apart from obligations of good faith in several specific instances.  See generally Fed. R. Civ. P 11; Fed. R. Civ. P. 26(g).

[181] Fed. R. Civ. P. 26(a)(1)(A)(ii).

[182] Adoption and Amendments to Civil Rules, 234 F.R.D. 219, 312 (2006).

[183] Richard Marcus, Only Yesterday: Reflections on Rulemaking Responses to E-Discovery, 73 Fordham L. Rev. 1, 16-17 (2004) (citing D.N.J. L.Civ.R. 26.1(d)(1) and Wyo. U.S.D.C.L.R. 26(1)(d)(3)).

[184] Lee H. Rosenthal, Electronic Discovery—Is the System Broken? Can It Be Fixed?, 51 The Advoc. 8, 13 (2010).

[185] Commercial Cleaning Servs., L.L.C. v. Colin Serv. Sys., Inc., 271 F.3d 374, 386 (2d Cir. 2001) (invalidating use of standing order to require party to furnish information not required by law).

[186] The Comments to the ABA Model Rule 4.4(b) and the related ABA Opinions  take the position that whether the return of privileged information is required is committed to the receiving lawyer’s discretion, subject to procedural and evidentiary law.  See Model Rules of Prof’l Conduct R. 4.4(b) (2012); ABA Comm. on Ethics & Prof’l Responsibility, Formal Op. 06-440 (2006); ABA Comm. on Ethics & Prof’l Responsibility, Formal Op. 05-437 (2005).

[187] See Act of Sept. 19, 2008, Pub. L. No. 110-322, 122 Stat. 3537.

[188] See, e.g., Rajala v. McGuire Woods, LLP, No. 08-2638-CM-DJW, 2010 WL 2949582, at *7 (D. Kan. July 22, 2010).

[189] N.D.N.Y., Civil Case Management Plan ¶ 12(G) (2007), available at http://www.nynd.uscourts.gov/documents/CivilCaseMgmtPlanFILLABLE_000.pdf.

[190] See, e.g., Local Rules W.D. Wash. CR 26(f)(1)(H) (requiring discussion of “procedures” for handling inadvertent production “pursuant to Rule 502(d)or (e) of the Federal Rules of Evidence”).

[191] See, e.g., Gaza & Rawnsley, supra note 27, at 34 (district courts have adopted a “wide variety of methods” to see that “discovery proceeds in a fair and orderly manner”).

[192] See
John M. Barkett, The 7th Circuit E-Discovery Pilot Project:  What We Might Learn and Why It Matters to Every Litigant in America 3-4 (2011), available at http://apps.americanbar.org/litigation/litigationnews/civil_procedure/docs/barkett.december11.pdf.

[193] See generally J. Joy Flowers Conti & Richard N. Lettieri, In re ESI: Local Rules Enhance the Value of Rule 26(f) “Meet and Confer”, 49 Judges’ J. 29 (2010).

[194] To the author, it would appear that this can best be accomplished making appropriate use of standardized forms coupled with some form of minimal rulemaking, along with a judicious (limited) amount of ad hoc guidelines.

[195] See Adoption and Amendment to Civil Rules, 234 F.R.D. 219, 273 (2006) (explaining that “inconsistencies [due to varying local rules] are particularly confusing and debilitating [to large entities], the uncertainty, expense, delays, and burdens of such discovery also affect small organizations and even individual litigants”).

[196] See Charles S. Fax, Does Federalism Work for the Federal Rules?, ABA Litig. News, (Feb. 8, 2012), http://apps.americanbar.org/litigation/litigationnews/civil_procedure/012512-federalism-federal-rules.html (noting adverse impact on efficiency, costs and the “risk of sanctions due to unfamiliarity with, or negligent failure to adhere to, local norms that differ from a lawyer’s home jurisdiction”).

Exposing Latent Patent Infringement

Keeping the “Free” in Teacher Speech Rights: Protecting Teachers and their Use of Social Media to Communicate with Students Beyond the Schoolhouse Gates

Taking Note: On Copyrighting Students’ Lecture Notes

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Cite as: Matthew M. Pagett, Taking Note: On Copyrighting Students’ Lecture Notes, 19 RICH. J. L .& TECH 6 (2013), available at http://jolt.richmond.edu/v19i2/article6.pdf

 

by Matthew M. Pagett*

 

An essential element of individual property is the legal right to exclude others from enjoying it.  If the property is private, the right of exclusion may be absolute; if the property is affected with a public interest, the right of exclusion is qualified.  But the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property.  The general rule of law is, that the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas—become, after voluntary communication to others, free as the air to common use.  Upon these incorporeal productions the attribute of property is continued after such communication only in certain classes of cases where public policy has seemed to demand it.  These exceptions are confined to productions which, in some degree, involve creations, invention, or discovery.[1]

– Justice Louis D. Brandeis  

 

I.  Introduction

[1]        According to The Orion, “an independent, student-run newspaper at California State University, Chico” (“CSU”),[2] two students at CSU were reported to their school’s Judicial Affairs office on November 16, 2011, for selling class notes from a lecture through the online note-selling service, Notehall.com.[3]  Notehall.com solicited the students, including Ms. Kelsey Goishi, a junior majoring in communications studies, through the university’s e-mail client.[4]  Through that medium, the service offered the students semester-long positions as professional note-takers, which could garner each student up to $450 per semester.[5]  In order to fulfill their duties for this position, Ms. Goishi and the student-employees were required to upload weekly lecture notes and, more importantly, “study guides,” which contained “explanations of all the information that [the students would] be tested on.”[6]

[2]        After performing these tasks, the student-employees were expected to inform their classmates about the study guides by sending out a class-wide e-mail.[7]  Ms. Goishi’s professor was “made aware” of the study guide for his class, which was then on sale for $5, after a student sent out such an e-mail.  Afterward, Ms. Goishi was required to meet with both the office for Judicial Affairs and her instructor.[8]  Though the personal consequences of this meeting for Ms. Goishi are unknown,[9] CSU sent Notehall.com a cease-and-desist letter a few months after the incident, citing both state law and university policy forbidding the sale, distribution, and publication of class notes for commercial purposes.[10]  As a result, Notehall.com no longer allows students from CSU or other University of California campuses to upload notes through their system.[11]  Interestingly, however, the company never acknowledged the validity of CSU’s legal claim, simply noting that it was refusing service to these schools “[o]ut of respect for this policy.”[12]

[3]        While it has been asserted that Ms. Goishi’s actions and the Notehall.com procedures for selling notes are a “clear violation” of California state law and broadly speaking, “illegal,”[13] the extent to which this may be true and the circumstances under which either California law or U.S. copyright law may be violated is unclear.  This article will review the relevant law on the question of whether a student owns the copyright in her or his own notes and attempt to answer that question.  Part II addresses: (1) the primary elements of a copyrightable work under the Copyright Act of 1976, (2) the Fair Use Doctrine, (3) whether classroom notes constitute protected compilations, and (4) whether classroom notes could be considered “derivative works.”  Part III discusses the federal preemption doctrine, whether states have the authority to legislate ownership of copyrighted works, and, if so, the effect of that authority, with special emphasis on California law.  In Part IV, this article will address the particular factual circumstances discussed in Part I and evaluate whether Ms. Goishi and Notehall.com were in “clear violation” of state or federal law.  Lastly, the author will postulate as to the certain circumstances that may or may not create a copyright or allow for the infringement of that right with regard to students’ lecture notes.

 

II.  Background

A.  Fixation and Originality Under the Copyright Act of 1976

[4]        Congress’s authority to protect individuals’ intellectual property comes from the United States Constitution, which states that “Congress shall have the Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[14]  The statute currently exercising this Congressional power is the Copyright Act of 1976 (“the Act”).[15]

[5]        In pertinent part, the Act states that copyright protection is granted to “original works of authorship fixed in a tangible medium of expression,” including, but not limited to: (1) literary works; (2) musical works; (3) dramatic works; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.[16]  A work of originality is considered “fixed” when it is written down or captured in such a way that it becomes “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[17]

[6]        With regard to academia, the fixation language has been interpreted to exclude material presented orally in courses.[18]  In Fritz v. Arthur D. Little, Inc., the plaintiff taught leadership training seminars and sued the defendant for stealing his trade secrets by taking “copious notes” during those seminars.[19]  The district court dismissed the plaintiff’s copyright claim, however, reasoning that that “[o]riginal words spoken aloud can be copied (and independently copyrighted) by all, if they have not previously been fixed in a tangible medium of expression.”[20]  Pulling from Justice Holmes’s opinion in Bleistein v. Donaldson Lithographing Co., the Court relied on the aphorism that “[o]thers are free to copy the original[, but t]hey are not free to copy the copy.”[21]

[7]        Under that rationale, the question of “fixation” is brought to the forefront when considering whether a professor’s lecture may be subject to copyright protection.  Pursuant to the language in Fritz, a professor or university must be able to show that the students’ notes were not copies of an original, extemporaneous expression in order to have a valid copyright claim; rather she, he, or it must show that the notes were copies of methodically planned, outlined, and notated predeterminations.  Thus, when evaluating whether a professor’s lecture is “fixed,” you must first ask whether the students’ notes are copies of an original, spontaneous statement on the part of the professor or whether the students’ notes are copie
s of the professor’s “copy,” i.e., her or his uniquely prepared presentation of original material.[22]

[8]        This question speaks to the other major requirement for a work to be considered copyrightable under the Act, whether the presumptively copyrighted work is “original.”[23]  A prospective plaintiff can generally meet the originality requirement with little effort, simply showing that the work “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.”[24]  Because a professor is likely to organize his or her lecture with some modicum of creativity and thoughtfulness,[25] such a presentation would probably satisfy the originality requirement.[26]

[9]        In order for a plaintiff to demonstrate a proper claim of copyright infringement, one must prove: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”[27]  To establish ownership of a valid copyright, the plaintiff must show both fixation and originality under the terms of the Act.[28]  In addition, the work must be of a sort that is qualified to be considered for copyright protection.[29]  While lectures are not explicitly protected under the Act, they are neither explicitly denied such protection.  Under the standard discussed in this article, it seems likely that such expressions would meet the originality requirement.[30]  There is a question, however, as to whether a lecture presented vocally and without visual aids is “fixed in a tangible medium” for the purposes of Section 102.  While there seems to be support for the idea that fixity could occur given sufficient preparation on the professor’s part, it is unclear without delving more fully into the facts of a particular case.[31]

B.  The Fair Use Doctrine

[10]      When a work is protected under the Act, use may be immune from an action of copyright infringement on the grounds that it is a “fair use” of the author’s protected expression.[32]  The fair use exception is codified in Section 107 of the Act and states that the reproduction of a copyrighted work “for purposes of criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”[33]  In determining whether the fair use doctrine applies to any one particular situation, the statute directs courts to consider the following factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.[34]

[11]      The fair use doctrine has been referred to as “the most important defense to infringement,”[35] and the Supreme Court has interpreted the doctrine to “permit[] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which the law is designed to foster.”[36]  While there is an argument to be made that the use and sale of a student’s lectures notes constitutes a “fair use,” many factors weigh against such a defense.[37]

[12]      The first factor, “purpose and character,” turns on whether the use is “of a commercial nature.”[38]  If the use is of a commercial nature, less weight is typically given to the argument that the use is acceptable under the fair use defense.[39]  Even if a court determines that a particular use is “of a commercial nature,” however, such a determination does not fully exclude the possibility of utilizing the fair use defense.[40]  For instance, in Ms. Goishi’s situation—where she and other student-employees sold their notes for a moderate profit—a court might find that the other three factors taken together weigh more heavily in favor of a finding that, despite its commercial nature, the sale of the students’ notes was a “fair use.”

[13]      It is unclear whether the second fair-use factor, “the nature of the copyrighted work,” would lend itself, along with the other factors, to a finding that a student’s notes are a “fair use” of a professor’s lecture.  The second factor is broad, but it has been interpreted in such a way that those works which are “intended” to have more copyright protection receive it.[41]  Thus, under the intention standard, works that are original (as opposed to derivative), creative (as opposed to factual), and unpublished (as opposed to published) are generally considered to “merit greater protection.”[42]  Such factors cut in favor of and against a student-employee who is working for an organization like Notehall.com.  On one hand, the “unpublished”[43] nature of the transcribed lecture notes[44] is often a factor weighing against a finding of fair use.[45]  On the other, classroom lectures typically constitute a mix of factors, including (a) originality, (b) derivation, (c) creativity, and (d) basis in fact.  While factors (a) and (c) generally weigh against a finding of fair use, factors (b) and (d) typically weigh in favor of such a finding.  Thus, such a mixture of factors would likely obfuscate the application of a clear precedential rule as to whether the “nature” of a classroom lecture protects that lecture against the affirmative defense of “fair use.”

[14]      The third factor asks for the relative “amount and substantiality of the portion used” in the class notes when compared with the lecture as a whole.[46]  Generally speaking, “[t]he more has been taken, the harder it is to justify as fair use . . . [because] fair use should as a rule take no more than is necessary to achieve the legitimate aims of the user.”[47]  In this case, the students working for Notehall.com were expected to upload class notes at least once a week and to create a study guide for their class’s exam.[48]  Thus, it was necessary for them to “take” something constituting almost the entirety of the lecture, at least with regard to substantive content.  There may be a question as to whether a student truly “takes” the professor’s lecture when she or he takes that information and processes it in a new form; if one assumes that a lecture is copyrighted in the first place, however, fair use is probably less likely to succeed as an affirmative defense to copying and selling the lecture notes.

[15]      The last factor that courts measure when determining whether the fair use defense is applicable is “the effect of the use upon the potential market for or value of the copyrighted work.”[49]  While each factor is typically given equal weight today,[50] the fourth factor was at one time considered the predominate factor in any court’s consideration.[51]  As a part of that consideration, the operative question for any court is: “Does the use reduce the money the copyright holder has received for the work or is likely to receive from the work?”[52]  If so, then the fair use defense is unlikely to succeed.[53]

[16]      At first blush, it would seem that this factor, which was once considered the most important of the four, cuts in favor of a student-employee who sells her class notes online.  While the availability of class notes might affect the overall “grading curve” of a course, that availability is narrowly tailored for the purpose of helping those students who are enrolled in a certain course.  The notes are rarely seen by individuals other than the students themselves and are not necessarily valuable beyond the life of the course.  Taken in that light, the negative economic effect on either the professor or the university would seem to be slight, bolstering the idea that a student-defendant might be able to utili
ze the fair use defense after all.

[17]      Such a reading of the Act fails to consider how a professor might use his or her lecture material outside of class, however.  It may be inferred from the language of the Act that the value of the fourth factor turns on whether the professor’s work is “unpublished.”[54]  Thus, if a professor discusses a topic about which she or he intends to publish, and her or his theories and conclusions are “leaked” to the public before they are fully prepared for publication, there may yet be some negative economic effect for the professor.  The extent to which such a leak would be damaging is unclear, however.  Because commercial note-sharing services are typically oriented toward a specific audience and used for a specific purpose (i.e., students seeking to gain a degree), it seems unlikely that a leak would cause more damage to the lecturer than that person’s practice of discussing her or his theories and conclusions during a classroom lecture already does.

[18]      Thus, while certain “fair use” factors may cut in favor of the idea that a student-employee and note-taker might be able to assert the fair use defense, the greater weight of the evidence would seem to support the idea that a professor’s lecture, if copyrightable, could withstand such an assertion.

C.  Compilations and Derivative Works

[19]      When evaluating factual scenarios like those surrounding class lectures, it is also important to determine whether the lecture itself, the resulting student notes, or a portion of those notes, could be protected as compilations or derivative works.[55]  Section 101 of the Act defines a protected “compilation” as “a work formed by the collection and assembling of preexisting materials . . . that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”[56]  The same section defines a “derivative work” as:

“a work based upon one or more preexisting works, such as . . . any . . . form in which a work may be recast, transformed, or adapted. A work consisting of . . . elaborations[] or other modifications which, as a whole, represent an original work of authorship . . . .”[57]

It is important to note that, for both definitions, the language of the Act focuses on the fact that such works must be so different from preexisting works that they constitute an “original work of authorship.”[58]  A compilation sufficient to be considered an original work of authorship is created when the preexisting works are selected and arranged in an original way.[59]  For derivative works, this happens when the preexisting work is “recast, transformed, or adapted” in such a way that the derivation becomes an original work in and of itself.[60]

1.  Compilations

[20]      Little case law exists on the narrow issue of whether a student’s class notes or a professor’s lectures constitutes a protected compilation.  Generally speaking, the Supreme Court of the United States has stated that, while “facts are not copyrightable[,] compilations of facts generally are.”[61]  In Feist Publications, Inc. v. Rural Telephone Service Company, Inc., the Court addressed whether a telephone utility’s listing of names, towns, and telephone numbers was copyrightable.[62]  Noting that the listings “could not be more obvious,” the Court determined that they were not sufficiently original to merit copyright protection.[63]  The Court reasoned that, in order for a compilation of facts to be sufficiently original to merit copyright protection, it must be “selected, coordinated, or arranged” in an original way.[64]  Thus, because the telephone utility’s listing was “entirely typical” and “devoid of even the slightest trace of creativity,” lacking “more than a de minimis quantum of creativity,” it was not copyrightable.[65]

[21]      Although the Supreme Court has not answered the question of whether a student’s lecture notes constitute a copyrightable compilation, one federal district court has held that a professor’s pre-prepared practice questions were copyrighted works.[66]  Because a compilation must be the result of an original selection, coordination, or arrangement of facts,[67] the contents of an in-class lecture could reasonably meet the criteria for this standard as long as the fixation requirements are met.[68]  If those requirements are not met, and a professor’s lecture is not considered a copyrightable work, it is still possible that a student’s own class notes, capturing that work, could constitute a protected compilation.

[22]      To address that question, it is helpful to look at the statutory language, discussed at length in Feist, which requires the selection, coordination, or arrangement of facts in an original way.[69]  That mandate strikes at the very heart of this article.  While “facts are never original,” in and of themselves, they can become so when they are selected, coordinated, or arranged in an original way.[70]  With regard to student notes, it is important to consider the fact that the Feist standard does not require a piece be original in its selection, coordination, and arrangement.[71]  Rather, originality is required in only one of these areas.[72]  Thus, it is likely difficult, though not impossible, for a student to show that the contents of her class notes are the result of originality in their selection and organization (as they are likely the result of the professor’s selections, not the student’s). However, that student may be able to argue that she has arranged the professor’s lecture in a way that is sufficiently original to warrant copyright protection.  In addition, a student who supplements her professor’s lecture notes with her own notes (taken from her independent research, for example), could probably show original selection as well.  Her success would depend, in large part, on the particular factual circumstances surrounding her notes and how those notes were created and amended during the studying process.  Such an showing is discussed in greater detail infra Part V.

2.  Derivative Works

[23]      If a professor’s lecture is able to qualify for copyright protection, it is also possible that a student’s notes, which are based on that lecture, could be considered a copyrightable derivative work of the professor’s lecture.  In such a case, a student would have to show that his or her class notes have “recast, adapted, or transformed” the professor’s lecture in an original way[73] and, further, that the professor or the institution (i.e., the copyright holder) gave the student permission to prepare such a work.[74]  While it has been argued that students’ class notes cannot be considered protected compilations or derivative works “because the student is not adding any creativity to the process,” that argument is premised on the idea that “[it is] the student’s job is to take down the professor’s words, exactly from the lecture itself.”[75]

[24]      When determining whether a student might own the copyright in his or her class notes, as a derivative work, the first question is whether the student has the permission of the copyright holder, either the professor or the institution, to make the derivative work.[76]  Section 106(2) of the Act confers on the author of an original work the right to “prepare derivative works” and Section 103(a) further notes that unlawfully procured copyrighted works are not given protection as derivative works.[77]  In interpreting the word “unlawfully” from Section 103, the Seventh Circuit has noted that “[it] means only . . . that the right to make a derivative work does not authorize the maker to incorpo
rate into it materials that infringe someone else’s copyright.”[78]  That is to say, one party cannot use another’s copyrighted material without a “right to obtain [it].”[79]  This rule does not translate well in the context of class notes, however.

[25]      In the classroom, a professor is presumably well aware of the fact that his or her students are taking notes. Indeed, the value of any classroom experience is the conveyance of information from teacher to student and the retention of that information over time.[80]  Since the classroom environment is not often visited in U.S. copyright law, however, it is unclear whether taking notes is sufficient to constitute implicit “permission” for the creation of a derivative work, despite the implicit permission that seems to flow from this activity.[81]  Such an inference would depend, in part, on both (1) the professor’s own understanding of the students’ right to the lecture material and the extent to which that understanding is communicated to the students, and (2) if one exists, the school’s policy on the matter.[82]

[26]      When determining the likelihood that a student’s class notes might constitute a derivative work, the second question that a court must ask is whether the student’s notes are sufficiently original.[83]  Although the Feist Court stated that “[t]he standard for originality is low,”[84] some courts have applied a slightly higher standard to derivative works.[85]  In Entertainment Research Group, Inc. v. Genesis Creative Group, Inc. (“ERG”), the Ninth Circuit employed a test which required derivative works to exhibit a level of originality that: (1) is more than trivial, and (2) “reflect[s] the degree to which [the work] relies on preexisting material” unrelated to the scope of “any copyright protection in that preexisting material.”[86]  The court explained that the second prong is meant to ensure copyright protection is not given to derivative works which are “virtually identical” to the original work.[87]  Applying that test, the court held that three-dimensional inflatable costumes, which are based on copyrighted, two-dimensional cartoon designs,[88] are not sufficiently different from the cartoons to survive the second prong, despite the complexities that come with creating a three-dimensional object out of a two-dimensional drawing.[89]

[27]      The Ninth Circuit’s reasoning in ERG, focusing on the way in which a derivative work is created, can be applied in this factual scenario as well.  If a student is selling her notes (or an outline based on those notes) through an organization like Notehall.com, the issue of whether that student has a copyright in her notes (or her outline) will depend on the extent to which the student has “recast, transformed, or adapted” the professor’s lecture in a way that is both (1) more than trivial, and (2) not virtually identical to the professor’s work.[90]  Much of this determination turns on the particular facts in any one case.  For instance, if the student takes the time and effort to substantially alter the way in which the information from her lecture is presented, then the new, altered form would be more likely to garner its own copyright protection.  Such a possibility is discussed in more detail infra Part V.

 

III.  State Law & Federal Preemption

[28]      Much of this article is premised on the idea that a professor’s class lecture must meet Section 101’s standard for fixation in order to be protected under the Act.  In certain instances, however, it is possible for an “unfixed” class lecture be protected from copyright infringement under the laws of the several states.

[29]      Section 301 of the Act provides that “all legal or equitable rights . . . in works of authorship that are fixed in a tangible medium of expression . . . are governed exclusively by this title.”[91]  That is to say, federal copyright law preempts all copyright laws concerning works that are fixed in a tangible medium of expression.  Thus, no state law that attempts to create copyright protection for such works will be valid.  However, the Act carves out an exception for those works of authorship that “do[] not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression.”[92]  Therefore, a state law providing copyright protection for “non-fixed” or unfixed works of authorship would not be preempted by the Act, despite the fact that the law would have to do with the subject matter of copyrights.[93]

A.  California Civil Code §§ 980-89

[30]      As of this writing, only California has taken advantage of the “fixity exception” to the Act.[94]  In California Civil Code Section 980 (“Section 980”), the California State Legislature mandates that “[t]he author of any original work of authorship that is not fixed in any tangible medium of expression has an exclusive ownership in the representation or expression thereof.”[95]  Thus, in California—unlike anywhere else—lack of fixation is not a bar to copyright protection.

[31]      The California Court of Appeals addressed Section 980 briefly in 1969—before the implementation of the U.S. Copyright Act of 1976—in Williams v. Weisser, where it considered a set of facts somewhat reflective of those described here in Part I.[96]  In that case, the defendant-company (“the Company”) published and sold notes from the plaintiff-professor’s (“the Professor”) course in Anthropology at the University of California at Los Angeles.[97]  The Company paid one of the Professor’s students to attend the Professor’s class, take notes based on his lectures, type up those notes, and deliver them to the Company for publication and sale.[98]  After the California Superior Court granted the Professor’s motion to enjoin the Company’s actions on the grounds that its actions were prohibited, inter alia, for violating the Professor’s “common law copyright in his lectures,” the case went before the California Court of Appeals.[99]

[32]      Given the Professor’s reliance on “common law copyright,”[100] the court focused its analysis primarily on whether the Professor or the university owned the copyright in his lecture.  In addition, the court asked whether the professor had a right to preclude the defendant from distributing the notes resulting from that lecture, on privacy grounds.[101]  The court first determined that the professor owned the copyright in his lecture.[102]  Second, on the privacy issue, the court found that the Professor did in fact have a privacy interest in prohibiting the Company from disseminating a product that could be associated with him, especially given the fact that the product was not a fully accurate representation of the professor’s lecture.[103]  More importantly, for the purposes of this article, the court of appeals held that Section 980(a), which provides copyright protection for “unfixed works,” was not implicated because the Professor’s lecture “consist[ed] of the extensive notes which he had compiled before the beginning of the course . . . includ[ing] charts and diagrams placed on the classroom blackboard,” all of which were prepared before the beginning of the course.[104]  Thus, the court concluded, Williams was “not a case where the concrete expression of the ‘composition’ consist[ed] solely of an intangible oral presentation.”[105]

[33]      The broad, national implication that one may draw from the court’s determination in Williams is that there is a greater likelihood that a court might consider a professor’s lecture to be “fixed” when the notes informing it were pre
pared before the beginning of the semester and when the lecture relies on charts and diagrams to communicate to the students.[106]  Further, the inference is that, in order for Section 980 to be implicated, a professor’s lecture must be entirely unfixed.[107]  In other words, the lecture must be an extemporaneous presentation without notes, diagrams, and significant pre-semester preparation in order to qualify for protection under Section 980.[108]

B.  California Civil Code §§ 66450-52

[34]      Perhaps due to the fact that one could interpret Sections 980 through 982 of the California Civil Code to protect only classroom lectures that are poorly prepared or un-prepared, or the fact that student notes could be considered uniquely original compilations or derivative works in their own right, the California State Legislature passed another amendment to the California Civil Code on August 30, 2000.[109]  The amendment, which is located in Sections 66450 through 66452 of the Code, provides, inter alia:

“(a) Except as authorized by policies developed by the University in accordance with subdivision (a) of Section 66452, no business, agency, or person, including . . . an enrolled student, shall prepare, cause to be prepared, give, sell, transfer, or otherwise distribute or publish, for any commercial purpose, any contemporaneous recording of an academic presentation in a classroom or equivalent site of instruction by an instructor of record.”[110]

The Code further stipulates that “[t]his prohibition applies to a recording made in any medium,” including “handwritten or typewritten class notes.”[111]  Thus, students in California are prohibited from selling or publishing their class notes, regardless of copyright ownership, without the express permission of the university.

[35]      In accordance with the language of Section 66450, which allows for properly constructed university policies to preempt the prohibition forbidding the sale of class notes, many universities in California have set out specific policies clarifying their respective positions.[112]  For instance, the University of California at Berkeley has adopted a policy generally in accordance with the state’s prescriptions, proclaiming that professors own the copyright in their own lectures, pursuant to Section 980(a). However, the school asserts that students are prohibited from selling their notes “[e]xcept as approved in advance by the instructor . . . .”[113]  Additionally, and importantly, the University has also established a “Campus Class Note Subscription Service” through which notes may be sold, but only with the authorization of the University, the Academic Senate, and the course instructor.[114]  That utility circumvents the privacy issue discussed in Williams by providing instructors with the right to “review and approve the notes prior to their distribution and sale.”[115]

[36]      While California is the only state to have proclaimed that instructors have a copyright in unfixed works existing within its borders,[116] universities in other states have set similar policies.[117]  For example, the University of North Carolina at Chapel Hill (“UNC-CH”) has stated in its Copyright Policy: “[s]tudent [w]orks that constitute notes of classroom and laboratory lectures and exercises shall not be used for commercial purposes by the student generating such notes.”[118]  Of course, if a student were to own the copyright in her or his own notes, regardless of the UNC-CH policy on the matter, federal copyright laws and the concomitant rights of authorship that come with them would preempt any such prohibition.[119]  On the other hand, if a student were not able to meet the requirements of fixation and originality, then a non-California-based university’s policy might control.

 

IV.  Analysis

[37]      Though Ms. Goishi’s dilemma is a recent one, it is not an uncommon occurrence for students to be rebuked or punished because of their attempts to publish, disseminate, or sell their class notes online—as the Williams case shows.[120]  In fact, the issue was recently litigated in one of the few modern-day cases addressing the narrow issue of whether a student or professor owns the copyright in their respective lecture notes.[121]  Though the case was largely litigated in connection to the Digital Millennium Copyright Act (“DMCA”), which proved to be inapplicable to the students’ notes, the case provides a helpful starting point for evaluating the viability of a copyright infringement claim relating to the dissemination and sale of a student’s lecture notes today.[122]

[38]      In Faulkner Press L.L.C. v. Class Notes L.L.C., the plaintiff, a professor[123] who owned the properly registered copyrights in both his lecture notes and the textbooks which he authored,[124] filed a copyright infringement suit against a note-selling company that had “hir[ed] student note takers as independent contractors to provide lecture summaries and study materials” at the university.[125]  The professor alleged that the company’s student-employees had taken notes that improperly included certain practice questions from his textbooks as well as other materials from the lecture, including an outline that the professor showed during class.[126]

[39]      The court acknowledged that the professor’s pre-prepared practice questions were protected by copyright, but found that the student’s lecture summaries could be excepted from enforcement of the Act on grounds of fair use.[127]  Thus, the court remanded the case back to the jury to determine the exact nature of the notes taken.[128]  The court’s decision speaks to the heart of the issue courts outside of California must resolve when determining the validity of a copyright infringement claim made by a professor or institution against a student.  Based on the court’s determination in Faulkner Press, the way in which the student takes her or his notes may affect a court’s determination as to the notes’ ability to continue to be sold.

[40]      In the Terms & Conditions section of the Notehall.com website,  the company states that all of its content must be “independently created, transformative, and non-derivative.”[129]  It goes on to say that a student’s notes:

“[S]hould not be a transcript or recording of another”s [sic] independent efforts . . . . It should go beyond simply summarizing material covered in class or in written or recorded materials, but include information raised by students in or outside of class, and independent thought, analysis and commentary.  Class notes, for example, must be substantially rewritten after class and include independent thought and analysis, research and information; notes that use a lecturer”s [sic] words or that are not carefully reviewed, rethought and rewritten after class are not useful to or appreciated by students, and not permitted on Chegg sites.”[130]

Under these terms, a student’s study guide created based on those facts discussed in the professor’s lecture and even a student’s class notes would likely meet the standard required for a work to qualify as a uniquely original piece of authorship that has been captured in the fixed medium of a student’s class notes.  Therefore, if a student is able to “transform” his or her work in such a way that they are no longer what they were during the lecture, then the student would have created his or her own original work of authorship.  In either case, there would likely be a factual issue, just as there was in Faulkner Press, as to the extent of the “transformation” of the student’s notes.[131]

[41]      It may also be helpful to consider the way in which a court might address a situation like the one
described in Part I.  If a student were sued for copyright infringement by her professor or university, a court might address that case in the following way:

[42]      First, it is important to determine whether the professor’s lecture would merit copyright protection at all.  One can make that determination by looking at whether the lecture is fixed and, further, whether it constitutes an “original work.”[132]  It is presently unclear whether an orally transmitted lecture can be considered “fixed.”  However, given the court’s ruling in Williams, fixation may exist if the professor is able to show sufficient evidence that her or his lectures were well-planned before their delivery and that they were based on extensive notes.[133]  If the lecture notes are not fixed, but the lecture was presented within the jurisdiction of California, then a copyright would exist under Section 980 of the California Civil Code, which provides protection for unfixed works.[134]  In addition, the sale of the class notes would be prohibited, regardless of fixation, under Section 66452 of the Code.[135]  It is unclear, however, as to whether a professor’s lecture would also satisfy the originality requirement.  Given that the requirement has been found to be generous, it seems likely that a student’s lecture notes would meet it, even if only as a compilation.[136]

[43]      The second question that a court might ask, when addressing this issue, is whether the professor or university owns the copyright.  Given the traditional exception to the “work made for hire” doctrine,[137] there is a strong argument that a court would determine ownership in favor of the professor.  In either case, the court would also need to address whether the student’s notes are excepted from copyright liability under the fair use defense, weighing each of the four factors against one another.  Though it is perhaps unlikely, the court might determine in the alternative that the students had the professor’s or university’s implicit permission to create a derivative work from the professor’s lecture, and, thus, that the work was protected.

[44]      Third and finally—regardless of whether a professor’s lecture is found to be copyrightable under the Act—a court would need to determine whether the student had sufficiently transformed the lecture.  A court could so find on the grounds that the student work is a compilation or simply an original creation.[138]  In such an instance, the question would remain the same: whether the student work is fixed and, further, whether it is original.[139]  While the fixation requirement would likely be met with little effort—since class notes meant for transference and sale are necessarily fixed in a medium—it is unclear whether the student’s work would be considered sufficiently original.  Again, this would likely turn on the particular factual circumstances surrounding any one case.

 

V.  Conclusion

[45]      As a student in California, Ms. Goishi likely has little legal recourse.[140]  By passing sections 980 and 66450, the California legislature has made it exceedingly difficult for students to use their class notes for anything other than studying without the permission of the professor or university.[141]  Still, Ms. Goishi’s particular situation is not the only case of a student attempting to sell her professor’s lecture notes in the several states. Thus, it is important to address the legality of doing so outside of California as well.

[46]      If Ms. Goishi were a student outside of California, it seems that the copyrightable nature of her lecture notes would largely depend on the quality of those notes and the extent to which they were revised after class.  In particular, the study guide that Ms. Goishi created may be more likely to achieve protection under U.S. copyright law as an original work of authorship. As long as the guide constituted more than a simple pasting of her notes from the lecture (i.e., she thoughtfully worked to develop it as an original source of information), it should be considered a copyrightable derivative work.

[47]      The quote at the beginning of this article is excerpted from Justice Brandeis’s dissenting opinion in the 1918 Supreme Court decision International News Service v. Associated Press.[142]  In that case, the Associated Press brought suit against an organization called the International News Service for the fraudulent obtainment of information that the plaintiff gathered and its use for its own news service.[143]  The majority held in favor of the plaintiff, relying on the commercial value of the information to that person.[144]  That holding prompted Justice Brandeis to note that, “the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas . . . [are] free as the air to common use” once they have been voluntarily communicated, with the exception of instances of “creation, invention, or discovery.”[145]

[48]      The “Brandeis Rule” should be given effect in the broader context of student classroom notes.  Largely speaking, a professor’s lectures are communicated “free as the air” without being fixed in any permanent form.  In addition, they often constitute transmissions of facts already known in particularly lucid or helpful ways by the general public, and they rarely “creat[e], invent[], or discover[]” in and of themselves.[146]  Thus, excepting those instances in which a professor’s lecture proves to be original or inventive in-and-of itself, student notes should be transmitted among students free as the air.  This would allow students to have greater access to the information that they need to succeed.  Finally, in accordance with the Brandeis Rule, student note-selling services like Notehall.com should give way to free note-selling services provided by the universities themselves, which would facilitate quality scholarship and sharing among all of the institutions’ inhabitants.[147]

 


* Law Clerk to the Honorable Judge Linda Stephens, North Carolina Court of Appeals.  J.D., Wake Forest University School of Law, 2012; B.A., University of North Carolina at Chapel Hill, 2008.  [1] Int’l News Serv. v. Assoc. Press, 248 U.S. 215, 250 (1918) (Brandeis, J., dissenting).

 

 

[2] About the Orion, the Orion, http://theorion.com/site/about/ (last visited Mar. 14, 2012).

[3] Molly Rose Livingston & Ashley Nakano, Notehall Allows Students to Commit Academic Dishonesty, the Orion (Nov. 28, 2011), http://theorion.com/features/article_4d317be4-1a47-11e1-a2e4-001a4bcf6878.html.

[4] Id.

[5] Id.  The e-mail itself reportedly proclaimed: “Being a Note-Taker means making money just being a good student!”  Id.

[6] Id.

[7] Id.

[8] Livingston & Nakano, supra note 3.

[9] Id.

[10] See Erica Perez, Colleges Crack Down on Selling, Sharing Notes, Calif. watch (Feb. 3, 2012), http://californiawatch.org/dailyreport/colleges-crack-down-selling-sharing-notes-14744.

[11] Id.  When a student attempts to upload notes from CSU or a school associated with the University of California, they are met with the following error message (or one like it):”Unfortunately, No More Notes! . . . The California State University Student Conduct Code prohibits students from selling class notes, and subjects violators to potential disciplinary actions. Out of respect for this policy, Notehall does not offer its note taking services at your school.  We apologize for the inconvenience, and share your disappointment with this CSU policy decision.” Id. (emphasis added).

[12] Id.

[13] Livingston & Nakano, supra note 3.

[14] U.S. Const. art. I, § 8, cl. 8.

[15] David Mirchin & William S. Strong, Copyright Lawin Massachusetts Continuing Legal Education, Intellectual Property Practice § 7.1.8 (Jerry Cohen ed., 2011) (“The first statute to provide copyright protection, enacted in 1790, protected only maps, charts, and books.  The Copyright Act of 1909 broadened available copyright protection.  This act was replaced by the Copyright Act of 1976, which took effect on January 1, 1978, and . . . is the current copyright law.”).

[16] Copyright Act of 1976, 17 U.S.C. § 102(a) (2006).  It should be noted that academic “lectures” are not included in the list of possibly copyrightable material.  This omission is not sufficient to defeat a professor’s claim of copyright, however, as the statutory list is only inclusive, not exclusive, merely providing examples of likely copyrightable works.  The idea that lecture notes may fall within the realm of copyrightable subject matter is bolstered by the fact that lecture notes are neither explicitly excluded by the administering agency as among those materials not covered by the Copyright Act.  Such excluded works include: “(a) words and short phrases such as names, titles, and slogans . . . (b) [i]deas plans, methods, systems, or devices . . . (c) [b]lank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like . . . (d) [w]orks consisting entirely of information that is common property containing no original authorship, such as, for example: Standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources.”Material Not Subject to Copyright, 37 C.F.R. § 202.1 (2012); see also Stephanie L. Seeley, Are Classroom Lectures Protected by Copyright Laws? The Case for Professors’ Intellectual Property Rights, 51 Syracuse L. Rev. 163, 171 (2001) (“It seems contradictory to deny professors copyright protection in their expression of ideas conveyed through a lecture since ‘the requirements for copyright protection are minimal . . . .’”).

[17] 17 U.S.C. § 101.

[18] Fritz v. Arthur D. Little, Inc., 944 F. Supp. 95, 100 (D. Mass. 1996).

[19] Id. at 96, 100-01 (determining that “there is not a strong likelihood that plaintiffs will succeed on the merits of their copyright infringement claims”).

[20] Id. at 100 (emphasis added).

[21] Id. (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249 (1903)) (internal quotation marks omitted).

[22] Fritz, 944 F. Supp. at 99.  It may be that this question can only be properly answered after an extensive factual inquiry to determine exactly which parts of a professor’s lecture are unique and spontaneous representations, which parts were pre-prepared presentations, and, concurrently, which parts of the students’ notes come from which parts of the professor’s lecture. See generally Bleistein, 188 U.S. at 249-50 (referring to the process of “copy[ing] a copy” versus “copy[ing] an original,” and noting that “the [first] copy is the personal reaction of an individual upon nature. . . . [p]ersonality always contains something unique. . . . [i]t expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone”).

[23] 17 U.S.C. § 102(a) (2006).

[24] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (noting that “[o]riginality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying”).

[25] Preparing to Teach the Large Lecture Course, Univ. of Ark. Wally Cordes Teaching and Faculty Support Ctr., http://tfsc.uark.edu/118.php (“Organize the topics in a meaningful sequence.  Lurching from one topic to another makes it difficult for students to assimilate and retain the material . . . Arrange the course topics thematically, chronologically spatially, in ascending or descending order, by cause and effect or problem and solution, or according to some other conceptual rationale.”); see Barbara Gross Davis, Tools for Teaching 137 (2d ed., 2009) (explaining the importance of lecture organization).

[26] See Feist, 499 U.S. at 345 (“[I]t is beyond dispute that compilations of facts are within the subject matter of copyright.”).  Interestingly, while the originality with which a professor organizes her or his lecture speaks to the copyrightability of a certain lecture, the ingenuity and originality with which a student takes his or her notes also speaks to the extent to which the student notes are a separate, unique creation—and not just a copy—warranting copyright protection in and of themselves.

[27] Id. at 361.

[28] See id. at 355 (“The two fundamental criteria of copyright protection are originality and fixation in tangible form.”) (quoting H.R. Rep. No. 94-1476, at 51 (1976)).

[29] See generally supra note 16; 17 U.S.C. § 102(a).

[30] It is helpful when thinking about whether a lecture should be considered a work subject to the Act to look to the “Idea/Expression” doctrine.  This principle declares that only an individual’s particular “expression” of an idea is protected by copyright law, not the idea itself.  Thus, the way in which a professor presented his material would be more relevant for purposes of the Act than the mere fact that he presented the material at all.  See Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (“[Copyright law] distinguishes between ideas and expression and makes only the latter eligible for copyright protection.”).

[31] Parts of a lecture that are specifically planned out by a professor may be more likely to be considered “fixed.”  Any part of a lecture that it could be reproduced would likely meet the fixation requirement (e.g., PowerPoint presentations, sound recordings, and outlines created by the professor and then published to the class).

[32] 17 U.S.C. § 107.  Unlike the reactionary defenses discussed in the section above (e.g., lack of originality, etc.), the fair use doctrine is an affirmative defense to a claim of copyright infringement.  Id.

[33] Id. (emphasis added).

[34] Id. (emphasis added).

[35] Mirchin & Strong, supra note 15, § 7.11.1.

[36] Stewart v. Abend, 495 U.S. 207, 236 (1990) (quoting Iowa State Univ. Research Found., Inc. v. Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980)).

[37] But see Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985) (noting that “the single most important element of fair use” is the factor concerning the “Effect on the Market”).  If a court were to rely most heavily on the market-effect factor, it might find that the commercial sale of student notes does fall within the fair use exception, largely because the professor and university would likely continue to generate the same level of revenue despite the proliferation of the professor’s lecture notes among his or her students.  This rationale is discussed in more detail in paragraphs 15-17, infra.

[38] 17 U.S.C. § 107(1).

[39] Harper & Row, 471 U.S. at 566-67 (quoting M. Nimmer, Copyright §1.10[D] 1-87 (1st ed. 1984)).

[40] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994) (“In giving virtually dispositive weight to the commercial nature of the parody, the Court of Appeals erred.  The language of the statute makes it clear that the commercial or nonprofit education purpose of a work is only one element 
of the first factor enquiry into its purpose and character.”) (emphasis added).

[41] Id. at 586.

[42] Peter Letterese & Assocs., Inc. v. World Inst. Scientology Enters., Int’l, 533 F.3d 1287, 1312, 1319 (11th Cir. 2008) (holding that a church organization’s dissemination of a book on sales techniques to train its members for positions within the church constituted a fair use of the book).

[43] 17 U.S.C. § 107.  In this scenario, another interesting factual question that may need to be asked is not whether the actual lecture is unpublished (as most lectures are), but whether the lecture’s content has previously been published.  A particular lecture’s class material might be more protected if the professor were to discuss a topic about which she or he intends (or has begun) to publish, but has not yet disseminated.

[44] It is presumed the copying of the lecture notes is sufficiently fixed to bestow copyright protection.  Whether a particular student copies down a professor’s lecture word-for-word or merely takes notes on the general topics discussed is likely to play an important role in any such copyright infringement case.

[45] See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 555 (1985) (“The obvious benefit to author and public alike of assuring authors the leisure to develop their ideas from fear of expropriation outweighs any short-term ‘news value’ to be gained from premature publication of the author’s expression.”).  Under that standard, a professor’s lecture may be more likely to survive a fair use defense when it includes information that the professor intends to publish at a later date to the larger academic community (e.g., a study or project on which the professor is currently working).

[46] 17 U.S.C. § 107(3).

[47] Mirchin & Strong, supra note 15, § 7.11.1(j).

[48] See Livingston & Nakano, supra note 3.

[49] 17 U.S.C. § 107(4).

[50] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994) (“All [four statutory factors] are to be explored, and the results weighed together, in light of the purposes of copyright.”) (citing William F. Patry & Shira Perlmutter, Fair Use Misconstrued: Profit Presumptions, and Parody, 11 Cardozo Arts & Ent. L.J. 667, 685-87 (1993)).

[51] See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 602 (1985) (Brennan, J., dissenting).

[52] Mirchin & Strong, supra note 15, § 7.11.1(k).

[53] Id.

[54] See 17 U.S.C. § 107 (“The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”).

[55] See id. at § 103(b) (noting that “derivative works” and compilations are encompassed within the penumbra of copyrighted works, but only regarding “the material contributed by the author of such work[s], as distinguished from the preexisting material employed in the work”).

[56] Id. at § 101 (emphasis added).

[57] Id. (emphasis added).

[58] See id.

[59] See id.

[60] Id.

[61] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45, 348 (1991) (distinguishing between “nothing but raw data—i.e., wholly factual information not accompanied by an original written expression,” which is not copyrightable, and works “possess[ing] some minimal degree of creativity,” which are protected by copyright law).

[62] See id. at 342-44.

[63] Id. at 362-63 (“We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural’s combined white and yellow pages directory.”).

[64] See id. at 358 (“The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-based work is an original work of authorship, they should focus on the manner in which the collected works have been ‘selected, coordinated, and arranged.’”).

[65] Id. at 362-63.

[66] See Faulkner Press, L.L.C. v. Class Notes, L.L.C., 756 F. Supp. 2d. 1352, 1360 (N.D. Fla. 2010).

[67] See Feist, 499 U.S. at 360.

[68] The practice questions had previously been written down in the professor’s textbook, helping meet the fixation requirement.  See Faulkner Press, 756 F. Supp. 2d at 1356.

[69] See Feist, 499 U.S. at 358.

[70] See id. (“Facts are never original, so the compilation author can claim originality, if at all, only in the way the facts are presented.”).

[71] See generally 17 U.S.C. § 101 (2006) (“A ‘compilation’ is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term ‘compilation’ includes collective works.”) (emphasis added).

[72] See Faulkner Press, 756 F. Supp. 2d at 1357.

[73] See 17 U.S.C. §§ 101, 103.

[74] See id. at §103(a) (“[P]rotection for a work employing pre-existing material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”); see also id. at § 106(2); Gracen v. Bradford Exch., 698 F.2d 300, 302 (7th Cir. 1983) (“[E]ven if [Defendant’s] painting and drawings had enough originality to be copyrightable as derivative works she could not copyright them unless she had authority to use copyrighted materials from the movie. ‘[P]rotection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.’”) (quoting 17 U.S.C. § 103(a)).

[75] See Seeleysupra note 16, at 187 (“Accordingly, due to the student’s lack of creativity, there is not enough originality to assert that the lecture is significantly different from the class notes . . . .”).

[76] See Gracen, 698 F.2d at 302.

[77] 17 U.S.C. §§ 103(a), 106(2).

[78] Pickett v. Prince, 207 F.3d 402, 406 (7th Cir. 2000).

[79] Id.

[80] See, e.g.The Collegiate University: Building Exceptional Faculty-Student Engagement, Wake Forest U. (Dec. 8, 2008), strategicplan.wfu.edu/whitepaper.html  (last visited Nov. 2, 2012).

[81] It should be noted that a lawsuit would be highly unlikely if the copyright holder were to provide the student with explicit permission to create a derivative work.

[82] Some schools have set explicit policies proclaiming that students do not have a copyright interest in the notes that those students take during class.  See, e.g., Course Note-Taking and Materials, Policy Statement, Univ. Cal. Berkeley (Dec. 5, 2011)available at http://campuspol.chance.berkeley.edu/policies/coursenotes.pdf (noting that instructors retain the right to prohibit students from taking notes in class and, further, stating that “[e]xcept as approved in advance by the instructor, students may not more broadly share their notes or other Class Materials. Furthermore, except as authorized . . . students may not reproduce, share, or distribute notes or other Class Materials made available by an instructor for commercial purposes or compensation”).  This is discussed in more detail in the Preemption and Analysis sections, infra Parts III & IV.

[83] See Pickett, 207 F.3d at 405 (“[O]riginality is required for a derivative work.”).

[84] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991) (“[O]riginality is not a stringent stand
ard; it does not require that facts be presented in an innovative or surprising way.”).

[85]  Compare Picket, 207 F.3d at 405 (expressing disbelief that the “requisite incremental originality . . . slight as it need be” could not be shown), and Feist, 499 U.S. at 345 (“Original . . . means only that the work was independently created by the author . . . and that it possesses at least some minimal degree of creativity. . . . [T]he requisite level of creativity is extremely low”), with Entm’t Research Grp. v. Genesis Creative Grp., 122 F.3d 1211, 1220 (9th Cir. 1997) (“[T]o support a copyright the original aspects of a derivative work must be more than trivial.  Second, the original aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.”) (citing Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980)), cert. denied, 523 U.S. 1021 (1998) [hereinafter ERG].

[86] ERG, 122 F.3d at 1220.

[87] Id.

[88] Id. at 1214 n.2 (“For example, Pillsbury purchased ‘Pillsbury Doughboy’ costumes, Toys ‘R’ Us purchased ‘Geoffrey the Giraffe’ costumes, and Quaker Oats purchased ‘Cap’n Crunch’ costumes.”).

[89] Id. at 1224 (noting that “granting [the plaintiff costume designer] a copyright in its costumes would have the practical effect of providing ERG with a de facto monopoly on all inflatable costumes depicting the copyrighted characters”).

[90] See 17 U.S.C. §101 (2006); ERG, 122 F.3d at 1220.

[91] Copyright Act of 1976, 90 Stat. 2541 (current version codified at 17 U.S.C. § 301(a)) (emphasis added).

[92] Copyright Act of 1976, 90 Stat. 2541 (current version at 17 U.S.C. § 301(b)(1)) (emphasis added).

[93] See Trenton v. Infinity Broad. Corp., 865 F. Supp. 1416, 1427 (C.D. Cal. 1994) (noting that a California state law, which provides copyright protection for unfixed works, “steers clear of any legal or equitable rights created under federal law, and thereby avoids federal preemption under [the Act]”).

[94] Stephen Fishman, The Copyright Handbook: What Every Writer Needs to Know 112 (Ilona Bray ed., 11th ed. 2011) (“California has a law that broadly recognizes rights in unfixed original works of authorship[, while o]ther states don’t have such laws . . . .”) (citation omitted).

[95] Cal. Civ. Code § 980 (West 2012).

[96] Williams v. Weisser, 78 Cal. Rptr. 542, 543 (Ct. App. 1969).

[97] Id.

[98] Id.

[99] Id.

[100] At that time, state copyright law—if any—governed protection for unpublished works unless those works had been specifically registered with the U.S. Copyright Office.  See U.S. Copyright Office, Copyright Basics 6 (2012), available at www.copyright.gov/circs/circ01.pdf (“Under the law in effect before 1978, copyright was secured either on the date a work was published with a copyright notice or on the date of registration if the work was registered in unpublished form.”).

[101] Williams, 78 Cal. Rptr. at 550-51.

[102] Id. at 545-50.  Although the court could not address the statutory causes of action available under the Copyright Act of 1976, which did not exist at that time, its holding is consistent with the still generally accepted exception to the “Works Made for Hire” section of the Act.  The Act defines a “work made for hire” as “a work prepared by an employee within the scope of his or her employment.”  17 U.S.C. § 101 (2006).  The copyright in such works is generally considered to reside with the employer, here the University.  Id. at § 201(b).  However, courts have crafted an exception for professors because, “[a]lthough college and university teachers do academic writing as a part of their employment responsibilities and use their employer’s paper, copier, secretarial staff, and (often) computer facilities in that writing, the universal assumption and practice [is] that (in the absence of an explicit agreement as to who had the right to copyright) the right to copyright such writing belong[s] to the teacher rather than to the college or university.”  Hays v. Sony Corp. of Am., 847 F.2d 412, 416 (7th Cir. 1988) (discussing the historical teacher exception and noting that “[t]he reasons for a presumption against finding academic writings to be work made for hire are as forceful today as they ever were.”) (emphasis added), abrogated on other grounds by Cooter & Gell v. Hartmarx Corp., 496 U.S. 384 (1990).  But see Rochelle Cooper Dreyfuss, The Creative Employee and the Copyright Act of 1976, 54 U. Chi. L. Rev. 590, 599 (1987) (“The dispositive issue is whether production of scholarly material is ‘within the scope of employment,’ that is, a part of the job.  Since scholarship clearly is a factor in decisions regarding tenure, promotion, salary increases, sabbatical leaves, and reduced teaching loads, scholarly works should now belong to universities rather than to faculty members.”).

[103] Williams, 78 Cal. Rptr. at 550-51.

[104] Id. at 543.

[105] Id. (citations omitted).

[106] See id.

[107] Cal. Civ. Code § 980 (West 2012).

[108] Balt. Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 675 (7th Cir. 1986).

[109] See Charles P. Nash, On the Ownership of Academic Presentations: The Evolution of California Education Code Sections 66450-66452, 35 McGeorge L. Rev. 205, 218 (2004).  Nash provides a fascinating history of the proposal and eventual passing of sections 664050-52 of the California Civil Code, which prohibit the sale of students’ lecture notes, and notes that the bill was originally put forth to “curb unauthorized note taking in California.”  Id. at 206.

[110] Cal. Ed. Code § 66450 (2012).

[111] Id. (emphasis added).

[112] Perez, supra note 10.

[113]Course Note-Taking and Materials, Policy Statement, Univ. Cal. Berkeley, supra note 82, at 1.

[114] Id. at 2.

[115] Id.

[116] Fishman, supra note 94.

[117] See, e.g., Office of University Counsel, Copyright Policy of the University of North Carolina at Chapel Hill, (Jan. 1, 2009), available at http://www.unc.edu/campus/policies/copyright%20policy%2000008319.pdf.

[118] Id. at 14.

[119] See, e.g., 17 U.S.C. § 101 et seq. (2006).

[120] See, e.g., Spencer H. Hardwick, Finalsclub.org Passes Punch, The Harv. Crimson (Feb. 18, 2009), http://www.thecrimson.com/article/2009/2/18/finalscluborg-passes-punch-span-stylefont-weight-boldcorrection/ (discussing a “growing course preparatory Web site . . . which allows students to share notes, create study groups, and blog about lectures and sections,” reporting that one Harvard professor had forced a student to remove a blog concerning his course, and noting that the Harvard University Office of the General Counsel had determined that “a lecture is automatically copyrighted as long as the professor prepared some tangible expression of the content—notes, an outline, a script, a video, or audio recording”); see also Ryan Singel, Lawsuit Claim: Students’ Lecture Notes Infringe on Professor’s Copyright, WIRED (Apr. 4, 2008), http://www.wired.com/threatlevel/ 2008/04/prof-sues-note/.

[121] See Faulkner Press L.L.C. v. Class Notes L.L.C., 756 F. Supp. 2d. 1352, 1355-58 (N.D. Fla. 2010).

[122] See id. at 1356, 1359.

[123] The professor was joined in this action by the company that published his textbooks.  See id. at 1355.

[124] These te
xtbooks were required reading for the course.  See id. at 1361 n.1.

[125] Id. at 1355.

[126] Faulkner Press, 756 F. Supp. 2d at 1356.  The professor also brought claims against the note-selling company for improperly using information in the professor’s textbooks under the Digital Millennium Copyright Act. However, the Northern District of Florida determined that the act of taking notes during a professor’s class did not violate the Act.  See id. at 1359-60.

[127] Id. at 1358-59.

[128] Id. at 1359.

[129] Chegg.com Terms of Use, Notehall (last updated Oct. 22, 2012), http://www.notehall.com/index/termsofuse.

[130] Id.

[131] Faulkner Press, 756 F. Supp. 2d at 1358-59.

[132] See discussion supra Part II.A.

[133] See Williams v. Weisser, 78 Cal. Rptr. 542, 545 n.4 (Ct. App. 1969).

[134] See discussion supra Part III.A.

[135] See discussion supra Part III.B.

[136] L. Batlin & Son, Inc. v. Snyder, 536 F.2d 487, 490 (2d Cir. 1976) (“The test of originality is concededly one with a low threshold . . . .”) (citing Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 100, 103 (2d Cir. 1951)).

[137] See 17 U.S.C. § 101 (2006).

[138] See 17 U.S.C. § 103(b); Feist Publ’n, Inc. v. Rural Tel. Co., 499 U.S. 342, 355-59 (1991) (discussing the requirements for a compilation that is copyrightable).

[139] Feist, 499 U.S. at 354 (stating that fixation and originality are the two fundamental requirements for a copyright).

[140] See Cal. Educ. Code § 66450 (West 2012).

[141] See Cal. Civ. Code § 980(a)(1) (West 2012); Cal. Educ. Code § 66450(a) (prohibiting the use of handwritten class notes for any commercial purpose).

[142] Int’l News Serv. v. Assoc. Press, 248 U.S. 215, 250 (1918) (Brandeis, J., dissenting).

[143] Id. at 231 (majority opinion).

[144] Id. at 245-46.

[145] Id. at 250 (Brandeis, J., dissenting).

[146] Id.

[147] See, e.g., Course Note-Taking and Materials, Policy Statement, Univ. Cal. Berkeley, supra note 82, at 2.

 

 

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