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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.

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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.

 

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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 Law, in 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 Seeley, supra 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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by Stephanie Chau*

I.  Introduction

[1]        Bulletin boards and pushpins are archaic.  Yet, each day represents a new paradigm for the technologically savvy.  Innovators pair old concepts with new functionalities and technology, often achieving groundbreaking results.  Digital counterparts for Post-It notes emerged for computers and other wireless devices.[1]  Other examples abound.[2]  Thus, it is no surprise that pins and boards also have new meaning in the digital age.  Credit is due to the founders of Pinterest, a nascent social networking site with a devoted following, for modernizing the pin.[3]  As a newer social networking site, Pinterest has experienced unparalleled growth after its inception only a few years ago.[4]  Like all social networking sites, Pinterest thrives in the presence of societal materialism, narcissism, and consumerism.  Its subsequent exponential growth is the byproduct of a high-functioning network effect.[5]  However, Pinterest has yet to monetize[6] and currently operates in a contentious area of the law.  As a result, Pinterest appears to be on the cusp of requiring internal analysis of intellectual property law and its own business model.[7]  The case study of Pinterest illustrates the growing pains of a budding start-up company operating, and perhaps profiting, where Internet copyright law lags.  It is particularly apposite that Pinterest recently hired Michael Yang, Google’s former deputy general counsel, as head of its legal department.[8]  This Article argues that Pinterest’s continued ascent and perhaps even its continued existence hinges on Michael Yang, who must judiciously contour Pinterest’s intellectual property strategy.[9]  Pinterest should not only address impending trademark and copyright infringement issues, but also secure additional intellectual property protections and diversify its business.

[2]        This Article explores the possible legal issues Yang will face in his new capacity.  Part II introduces the concept behind Pinterest, Part III comments on the legal hazards currently looming given Pinterest’s business strategy, and Part IV offers insight on how Pinterest can leverage its intellectual property rights.

 

II.  What is Pinterest and Why Do We Have It?

[3]        Successful Internet companies bring greater public access to previously limited resources, including libraries, archives, government records, goods, and knowledge.[10]  Google-branded services permeate the web, yet freshman companies also compete for a share in the market.[11]  Pinterest is one such company in the social networking arena.  Pinterest is valued at an estimated $7.7 billion,[12] joining the ranks of competitors such as Facebook at $104 billion,[13] Twitter at $8 billion,[14] LinkedIn at $10 billion,[15] and Instagram at $1 billion.[16]  Led by Facebook, social networking accounted for 16.6 percent of all time spent online in the United States in 2011 and will likely become the top online activity in 2012.[17]  Pinterest’s traffic is steadily increasing—positioning the site as the third most popular media platform in the United States.[18]  Its appeal to college-educated females between the ages of twenty-five and forty-four offers advertisers a demographic, which not only logs an average of eighty-nine minutes a month—far exceeding that of Twitter’s demographic—but is also ready and willing to spend. [19]  In fact, ComScore’s “State of the U.S. Internet” report found that Pinterest users spend more money, buy more items, and conduct more transactions than any other demographic in the social network market.[20]

[4]        Launched in March 2010, “Pinterest is a virtual pin board;” it is a pin board-style photo-sharing social website that allows users to create and manage theme-based image collections of events, interests, and hobbies.[21]  Users cannot only browse their friends’ pin boards for inspiration, but also those of complete strangers.[22]  Users can upload images known as ‘pins,’ save favorites, make comments, and ‘share’ or ‘like’ photos.[23]  Pinterest encourages users to “plan their weddings, decorate their homes, and share their favorite recipes.”[24]  For that reason, it comes as no surprise that Pinterest is a female-centric site.[25]  As of 2012, eighty-three percent of its United States users were women.[26]  Nevertheless, just as Facebook moved beyond its college student niche, Pinterest may soon find a new, more balanced group of users once it fine-tunes its strategic approach.

[5]        Social networking sites flourish in the face of a narcissistic society.  The self-admiration movement gained traction in the 1970s, followed by an explosion in the 1980s and 1990s[27] when unbridled self-indulgence and self-expression grew into “a more extraverted, shallow, and materialistic form of narcissism.”[28]  Trends toward self-presentation evolved with cultural norms and new technology, propagated by narcissistic behavior amidst the masses, the presence of Internet social networking sites, and celebrity culture.[29]  Scholars attribute the epidemic to indulgent parenting, excessive praise, obsession with rampant celebrity narcissism, and the pursuit of fame.[30]  Although narcissists and social networking groups are not coextensive, the two are not mutually exclusive.  Social networking sites revel in these narcissistic tendencies and parlay the user’s desire for validation and admiration into an entire platform.  A vicious cycle ensues whereby these sites reinforce narcissistic behavior by rewarding the user with more connections or comments, and as those narcissists connect with other narcissists, the behavior mushrooms quid pro quo.[31]

[6]        The United States is also founded on the principles of materialism and consumerism, the natural descendants of free market capitalism, which encourage individuals to endeavor to increase one’s wealth.[32]  As a result, Americans have an appetite for purchasing goods that they desire but do not need.[33]  Retailers, particularly in the luxury goods market, and social media companies are eager to exploit this consumer extravagance, a lavishness that might otherwise be characterized as an Achilles’ heel.  Much like on any other social networking service, brands already have a presence on Pinterest because consumers post and share photos of the product, the logo, or other marketing manifestations.  However, controlling consumer sentiment can be a challenge as cease-and-desist letters are virtually ineffective and can cast negative light on the company.[34]  On the other hand, given that retailers are a welcome presence on Pinterest, Pinterest has a distinct competitive advantage over Facebook and Twitter.[35]

 

III.  Musings on the Pinterest Business Model

[7]        Pinterest’s success depends largely on what scholars call “the network effect.”  The network effect is the phenomenon by which the utility of a good or service increases as the number of consumers multiplies, and as a result, the monetary value of participation on a network grows exponentially as well.[36]  At one end of the network continuum are actual networks, which are communication systems, such as telephones and fax machines, “whose entire value lies in facilitating interactions” between the customer and the product owners.[37]  Pinterest is an actual network and if it can overcome diseconomies of scale and manage tipping,[38] its network will become a tremendous asset.  Given the immense growth of Pinterest’s network, Pinterest is now at a crossroads.  There are two areas where its business model is deficient and in need of attention by Pinterest’s top executives and general counsel: monetization strategy and copyright issues.  Two additional contentious areas, trademark[39] and privacy[40] issues, are beyond the scope of this article.

A.  Pinterest Has No Monetization Strategy

[8]        Initially, Pinterest must solidify a monetization strategy before it can grow.  Although Pinterest’s monetization potential is promising, the company has no formalized strategy as of yet.[41]  On its website, Pinterest flatly asserts “making money isn’t our top priority right now.”[42]  Pinterest is currently “focused on growing Pinterest and making it more valuable.”[43]  While these objectives are laudable, Pinterest already has an extensive following.[44]  Dependence on outside investment from entrepreneurs and venture capitalists is not sustainable in the long term and Pinterest must cultivate ways to bring in revenue.

[9]        Pinterest’s swift ascent as a major social networking site suggests that Pinterest is unique and has greater potential than even beyond the likes of Facebook and Twitter.  A plethora of theories might explain Pinterest’s success.  Conceivably, Pinterest’s business model is more adaptable to growth, Pinterest is on a quicker path to monetization than its predecessors, and Pinterest’s entry into the market perfectly coincided with consumer interests.  Such rapid growth allows or possibly even demands Pinterest to monetize sooner.  Regardless, Pinterest will require resources to stay in vogue and remain competitive with social networking sites that have already monetized their businesses.[45]

[10]      As consumer attention shifts away from television, radio, magazines, and newspapers, $200 billion in advertising revenues will shift online.[46]  Pinterest figures to fight for these advertising revenues with the allure of its primary demographic and its pool of user data.  To illustrate, women spend more time social networking than men worldwide.[47]  Pinterest users spend more time on the site per visit (16 minutes) than on Facebook (12 minutes),[48] and Pinterest users spend more money than others.[49]  Accordingly, Pinterest must carefully construct a strategy to leverage its time with this captive audience.  In recognition of Pinterest’s reach, retailer Bergdorf Goodman, online crafts marketplace known as Etsy, and others have already incorporated Pinterest into their marketing strategies.[50]

[11]      Google monetizes its services using behavioral advertising, thereby analyzing user profiles to present users with advertisements tailored to the words they search.[51]  On Facebook, users volunteer vast amounts of personal data and generate data through their own behavior that in turn, is used to track and tailor advertisements.[52]  Harvesting data on users’ interests and online activities is tantamount to “an Internet genome project,” which is invaluable to advertisers.[53]  However, Google and Facebook serve different purposes and as a result, there exists a demarcation in their approaches to online advertising: Google operates under the theory that human behavior can be reduced to an algorithmic equation whereas Facebook relies on social play and the power of sharing.[54]  Pinterest treats the approaches as symbiotic rather than mutually exclusive.

[12]      Like Google and Facebook, Pinterest has access to vast amounts of consumer information.[55]  However, Pinterest focuses less on offering a breadth of services because the entire premise of Pinterest is to share images that reflect a user’s specific interests.  Thus, activity on the site arguably reflects user and purchaser preferences far better than either Google or Facebook, which are used to accomplish diverse objectives.  This detail, coupled with the fact that retailers can advertise on Pinterest with minimal consumer disgruntlement, positions Pinterest well into the retailer strategies.

[13]      In addition to advertisements, affiliate links can drive monetization.  Affiliate links are a form of affiliate marketing, which rewards affiliates for the quantity of web traffic attributed to its marketing efforts.[56]  Although many observe that Pinterest is the perfect forum for an affiliate marketer given Pinterest’s high conversion rates,[57] the stigma of affiliate links makes this option less than ideal.  Recently, Pinterest quietly monetized its pinners with affiliate links through a partnership with Skimlinks[58] whereby Pinterest received a percentage of the revenue every time a pinner clicked to make a purchase from an e-commerce site.[59]  The response from the public was not favorable and Pinterest came under heavy fire for engaging in a covert scheme, which led to the decision to quickly end the relationship.[60]

[14]      Alternatively, Pinterest executives could decide to forgo innovation[61] in a monetization strategy completely and instead sell the business to the highest buyer.  To achieve the best valuation, Pinterest should focus on network growth and improved functionality.  The fruits of Pinterest’s focused efforts would then translate to a competitive advantage for the purchasing company.  In doing so, Pinterest could avoid the copyright issue, although that course of action might appear cowardly.  Pursuant to this hypothetical, corporate executives and lawyers in the industry ought to take notice and engage in their own monetization and copyright analyses of Pinterest.

[15]      Pinterest is currently not making money and thus the first priority is to implement a sound strategy that will enable the company to grow.  Not only will operating at a profit enable Pinterest to further develop the site and new functionalities, but Pinterest may be able to fend off competitors as well.  Although advertisements may displease users, albeit with perhaps less severity than on other sites, affiliate marketing, if not disclosed, intimates secrecy.  Pinterest may also elect to charge users for each click or sell memberships to exclusive material.  Indeed, Pinterest executives have the opportunity to formulate an innovative monetization strategy.  Although abstract business strategies are generally not patentable,[62] Pinterest can develop processes, systems, and methodologies to analyze and synthesize the data it collects, which can be protected as patentable subject matter or as a trade secret.  Part IV will discuss a few additional monetization strategies.

 B.  Pinterest Leaves Users (and Itself) Exposed to Copyright Liability

  1.  User Liability

[16]      Images are most likely copyrightable subject matter under 17 U.S.C. § 102(a)(5) as pictorial, graphic, or sculptural works.[63]  In order for a plaintiff to establish ownership of a valid copyright, he or she must show an original work of authorship fixed in a tangible medium of expression.[64]

[17]      First, the standard of originality is quite low, and courts interpret the statute to require only a minimal degree of creativity original to the author.[65]  Copyright also protects photographs, which enjoy thin protection.[66]  Pursuant to this low threshold, a court will likely consider many of the images sufficiently original to the author, who may or may not be the pinner.  The second prong demands fixation, which requires that the matter be “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated.”[67]  Given that the image must already exist in digital form for the Pinterest user to upload, pin, or repin the image, it seems unlikely that the fixation hurdle will be significant.  Moreover, Pinterest pins remain on boards indefinitely unless removed by the user or if the link is broken.

[18]      When Pinterest users upload an image or pin an existing image, there is a definite probability that they do not own the copyright to that image.  Suffice it to say that, under the current business model, even absent mens rea, Pinterest users are arguably engaging in a form of copyright infringement for which they might be liable for violating the copyright holder’s reproduction, derivative work, and distribution rights, or perhaps even public display rights.[68]  Whereas most of the content on Facebook and Twitter is user-generated, a substantial portion of Pinterest content comes from external links.

[19]      Many copyright holders may not realize that they own a copyright and may have no intention of enforcing their rights.  Nevertheless, Pinterest must address the concerns of users who do not want to face liability for using the site.  Moreover, business leaders should be proactive, not reactive and it would behoove Pinterest to think accordingly.  Pinterest ought to preemptively plan for a potential copyright infringement claim.

[20]      Recently, Pinterest took active steps to alleviate scrutiny on the copyright front.  For example, Pinterest began marshalling attribution and direct links to sources, such as Flickr in May 2012.[69]  Although these enhancements may allay copyright holders from pursuing litigation, this does not weaken the infringement argument.  Although attribution is not currently part of copyright law, perhaps courts should consider attribution in its fair use analysis.  With attribution, copyright holders get free publicity and they arguably have no incentive to bring copyright infringement suits.  However, attribution may not suffice as fair use given that it does not protect the earning potential of the image.

[21]      Pinterest also provides advice for website owners who do not want their website content pinned.  Websites can insert a small piece of code to the head of any page on their site so when a user tries to pin from the site, a customizable error message will appear.[70]  Nevertheless, Pinterest users can maneuver around this code in a multitude of ways.  Even absent technical savvy, users can save the images to their own library, by screen capturing the image for instance, or use a non-Pinterest website as an unsuspecting intermediary between the original site and Pinterest.  Website owners who use this code represent a population who does in fact care about copyright liability.  Pinterest should therefore be attuned to their concerns as they can wreak havoc on Pinterest users by bringing infringement claims or by raising negative publicity for Pinterest.

[22]      The fair use defense might be applicable, but courts often apply the defense on a case-by-case basis, evaluating “(1) the purpose and character of the use . . . (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) effect of the use upon the potential market for or value of the copyrighted work.”[71]  Pinterest boards may qualify under fair use because they are likely transformative: the collections of images combined with captions serve a different purpose than the original, even where they contain entire images.[72]  Factors weighing against Pinterest’s fair use include: the high quality of the images, varying levels of commercial use (e.g., corporate pages compared with bloggers), and potential cannibalization of the market for the copyrighted images.[73]

[23]      However, courts’ current fair use analyses are blind to the copyright holder’s involvement as well as attribution by the infringer, as mentioned earlier.  Notably, numerous sites, including profit-driven news sites and retailers, encourage visitors to pin their copyrighted images via a “Pin It” button, which invites readers to pin the site’s work onto Pinterest.[74]  Where the website recommends that a visitor share the image on Pinterest, and assuming the website is in fact the copyright holder, the visitor is persuasively reasonable in believing the copyright owner will not sue for copyright infringement over use of that image.  Applying public policy considerations, a new fair use element might be appropriate where if a copyright owner provides the “Pin It” button, either himself or through his agents, he should be barred from subsequently bringing an infringement suit for use of that image.

[24]      Analysis of the foregoing (the “Pin It” button or any comparable form of encouragement by the copyright holder) also bears on the other four elements.  Like attribution, the “Pin It” button does not protect the earning potential of the image, but it may boost the earning potential of the underlying product itself.  Instead of cannibalizing the market, the infringement may effectively improve sales of the product.  For instance, a pinned photograph of an article of clothing might help a retailer-copyright holder garner sales of that article, whereas an image of décor or food might have no impact on marketability to the copyright holder.  Use of the image on Pinterest can therefore affect two separate markets: the market for the image and the market for the product.  Current fair use analysis only considers the market for the image.  Although potentially too speculative, perhaps courts could also consider the effect on the market for the product.  However, any consideration of the market for the product may undermine Pinterest’s “no self-promotion” policy as well as detract attention from the predominant purpose of copyright law, which is to encourage the creation of original works.  In the alternative, if an image pinned through the “Pin It” button is not fair use, arguably the courts should find that a copyright holder who puts a “Pin It” button on his website grants the pinner either a limited form of consent or a nonexclusive license, which need not be in writing.[75]  By finding consent or a license, a court could circumvent an upset of the law on copyright infringement and fair use, at least with respect to the “Pin It” Button.

[25]      Countervailing public policy might also support a Pinterest user’s First Amendment argument.[76]  Although Pinterest users may elect to draw upon their freedom of speech guarantees as a policy matter, the First Amendment will not likely be a persuasive argument under case law.  After Eldred v. Ashcroft[77] and Harper & Row, Publishers, Inc. v. Nation Enterprises,[78] the traditional contours are constitutional because proper limits, such as the fair use doctrine and idea-expression dichotomy, are already in place.

[26]      Finally, as always, the relevant statute of limitations is an important consideration.  Copyright holders will have a claim until the statute of limitations lapses.  That period will depend on the facts of an individual case.  Perhaps there is an argument for shortening the statute of limitations with respect to claiming copyright infringement on social networking sites.  Public policies of judicial efficiency and certainty favor such a change, and given the pervasiveness of Pinterest-type file sharing, the court dockets could bottleneck pursuant to a Pinterest user losing.  It is within the province of the legislature to consider such changes, but in the meantime, Pinterest users are not immune to allegations of copyright infringement.  Whether a court will rule in their favor remains to be seen.

[27]      Many commentators posit that Pinterest’s hiring of Michael Yang as head of its legal department signals just how critical resolving the copyright question is to the company’s longevity.[79]  In the wake of Yang’s hire, Pinterest will likely discuss the ramifications of its current business model to the user and the company itself, perhaps resulting in the modification of its cornerstone image-sharing business.

 2.  Pinterest Liability

[28]      In addition to claims against its users for direct infringement, copyright holders may also assert a secondary liability claim against Pinterest.  Contributory liability applies to “one who, with knowledge of the infringing activity, induces or causes or materially contributes” to another’s infringement.[80]  In Sony Corporation of America v. Universal City Studios, Inc., the Court held a product “need merely be capable of substantial noninfringing uses” to avoid contributory liability.[81]  Given that Pinterest is capable of substantial noninfringing uses, showing that Pinterest had knowledge is not a foregone conclusion.  For example, Pinterest users may legally own the content they are uploading, or may have permission from the owner to use the content.

[29]      A new inducement doctrine may be more helpful.  In MGM Studios Inc. v. Grokster, Ltd., the Court held that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”[82]  Given that Pinterest does not ask users to consider permissions before each pin, its business model is distinguishable from that of Facebook.  Moreover, Facebook encourages sharing personal experiences and photos whereas Pinterest encourages sharing content created by others.  Just as Grokster distributed free software that allowed users to share electronic files through peer-to-peer networks, Pinterest provides an interface for users to freely share images.[83]  Although there are provisions protecting the online service provider (“OSP”),[84] Pinterest must tread carefully to avoid crossing the inducement threshold.

[30]      The Digital Millennium Copyright Act (“DMCA”) broadened copyright owners’ rights beyond the Sony holding.[85]  Title II of the DMCA contains the Online Service Provider Safe Harbor provisions.[86]  These provisions insulate OSPs from liability for transmitting, routing, storing, caching, or linking to unauthorized content if the OSP meets specific conditions.[87]  It must also meet the following threshold conditions: (1) adopting, implementing, and informing subscribers of policy for providing for termination of users who are repeat copyright infringers; (2) adopting standard technical measures used by copyright owners to identify and protect copyrighted works; and (3) designating an agent to receive notification of claimed infringement from copyright owners and register that agent with the Copyright Office.[88]

[31]      Pinterest explicitly addresses the DMCA on its website and describes how Pinterest complies with these provisions.[89]  With a prominent Copyright and Trademark Section, Pinterest seeks not only to educate users, but also attempts to protect itself in recognition of the potential for copyright infringement.  So long as Pinterest meets the DMCA requirements, Pinterest is only vulnerable to consumer and industry backlash.  Conversely, Pinterest’s policy leaves users largely unprotected.

 

IV.  Shaping Pinterest’s Future

 A.  If Copyright Holders Win a Case Against a Pinterest User or Pinterest

[32]      If Pinterest or its users prevail against a copyright holder in a lawsuit, Pinterest will likely continue business as usual, but copyright law as we know it may forever change.  This is especially true if a court decides to hold no infringement or otherwise if pins fall within fair use.  Such a decision may significantly weaken copyright law, but given the pervasiveness of pinning and file sharing on the Internet, the law may in fact head in that direction.  For this Article, however, only the alternative is considered.

[33]      If a Pinterest user loses a case against a copyright holder, the floodgates will open for other copyright holders to pursue similar claims.  Disgruntled copyright holders will feel betrayed by the company.  Users may eschew the system.  It will take a complete restructuring of the core business for Pinterest to recover.  Timing compounds the pressure on Yang.  If a court rules before Pinterest can monetize, Pinterest may lose the opportunity to capitalize on the network it so famously achieved in the last two years.

[34]      One incremental change that Pinterest could implement is to start asking the user to consider permissions before each pin.  Facebook employs such a method and users can still pin at their own peril.[90]  A warning would put users on notice and hopefully deter copyright infringement, but alone it will not be enough to save Pinterest or its users if a court does indeed rule that pinning constitutes infringement.  A more drastic measure includes asking the source for permissions to pin or repin.  However, this solution would likely be overly burdensome and curb use on the site.  Another resolution would be to contract with certain sites to enable Pinterest users to pin from their sites wholly, not just for one pin.  However, website owners might ask for remuneration in exchange for allowing their content on the sites.  This solution also comes with certain caveats.  For example, limiting the available sites undermines the purpose of Pinterest.  The ability to share essentially everything is paramount to Pinterest’s appeal.  Moreover, Pinterest executives would need to modify its policy against self-promotion.

[35]      There are also endless ways in which Pinterest could completely revamp or reinvent the business.  For instance, Pinterest could become a consumer research company.  Pinterest could collect, synthesize and sell data on the newest trends to companies without cluttering its websites with the types of advertisements and affiliate links that consumers disdain.  Given that Pinterest already has vast amounts of data at its disposal, all Pinterest would need to do is modify the user agreement.  Educating users would be crucial to this strategy and users will only be less hesitant if they know Pinterest is not farming out individual information.  This approach exploits the “Internet genome project” as referenced earlier in the Article.  Still, entering the arena of consumer research presents challenges for Pinterest.  Pinterest would be subject to privacy concerns and public backlash if Pinterest sells data exceeding the threshold granularity that consumers are reasonably willing to provide.

[36]      If Pinterest loses against a copyright holder for secondary liability it should take the same recourse as it would in the case where a user loses.  The impact of such a ruling to Pinterest again intensifies if Pinterest does not monetize quickly enough.  If Pinterest remains indebted to venture capitalists and a court rules for Pinterest to pay a judgment, Pinterest will be in danger of losing those backers and the company will have an even bleaker balance sheet.  Additionally, if Pinterest has an interest in going public, regardless of its future business strategy, it is true that underwriters, the financial community, and the public will expect Pinterest to possess substantial tangible assets as well as intangible assets, such as intellectual property and goodwill.  However, these individuals will find a highly leveraged company in or anticipating litigation even less attractive.

[37]      If Pinterest loses a case for violating the DMCA, Pinterest can cure the situation more easily.  Put simply, Pinterest would need to adhere to its policies set forth in its Trademark & Copyright Section.[91]  If a court finds Pinterest in violation of the DMCA and nothing else, although a strategic change might bolster success in the future, Pinterest should maintain current operations and begin to pursue other markets and consumer bases as suggested in remainder of this Article.

 B.  Brand Management

[38]      Pinterest has a registered service mark.[92]  Therefore, Pinterest should manage its brand.  Pinterest’s brand strategy should include comprehensive analysis of its graphics, marketing efforts, and consumer satisfaction index.  Using its official badge and Bello Script font logo developed in 2011, Pinterest could market and sell logo products, thereby gaining additional protection under trademark, trade dress, and design patent law.[93]  As evidenced by Pinterest’s office, Pinterest already produces a fair amount of swag.[94]  Branding the office space can help corral support and interest in the product, but there is also a market for branded products.  Pursuant to this strategy, Pinterest should consider additional trademarks for related words such as “Pinterested” and “Pinteresting.”  Although branded products should probably be a secondary source of income, Pinterest should at least consider the production costs and benefits.

[39]      With proper brand management, Pinterest could seamlessly enter new markets, including e-commerce.  For instance, Pinterest can develop a Pinterest store and sell special edition items for its top pinners.  Although Pinterest discourages self-promotion, Pinterest itself can promote by building partnerships and its brand.  In exchange for Pinterest’s endorsement, companies or users can compensate Pinterest.  In contrast to affiliate links and advertising, Pinterest’s endorsement would be direct and effectively a seal of approval.  However, as a technology company, Pinterest would need to develop the requisite credibility and competency.  There would also be an inherent risk of pinners manipulating the pins to become a top pinner.

[40]      Once Pinterest enters into e-commerce, the natural progression is to invade mobile commerce.  During the three-month period ending in April 2012, almost nineteen million Americans, or 17.4% of American[95] smartphone owners, used their smartphone to purchase consumer goods.  Of these, almost one in three purchasers used their device to buy clothing or accessories, 23.5% purchased tickets, 22.3% bought electronics or household appliances, 21.2% purchased meals, and 20.2% bought daily deals or discount coupons.[96]  On August 14, 2012, Pinterest rolled out new applications for Android smartphones and the iPad in addition to updating its year-old iPhone application with improved functionality.[97]  Indeed, Pinterest should continue to stay abreast of mobile commerce trends as it provides yet another medium to reach users.  Correspondingly, Pinterest should promptly file patents and claim patent protection or other applicable intellectual property protection for any new inventions or improvements.

C.  International Growth

[41]      Finally, although the United States still represents enormous potential for Pinterest,[98] Pinterest will reach a saturation point domestically at some point.  Therefore, Pinterest should continue its growth across the globe.  Between May 2011 and January 2012, Germany drew 67,000 individual visitors, an increase of over 2956 percent.[99]  Spain came in a close second with 62,000 individuals, for an increase of 1,348 percent.[100]  The United Kingdom had the largest market with 245,000 unique visitors in January 2012.[101]  In addition to English, Pinterest has Spanish and Portuguese language sites.[102]  On August 24, 2012, Pinterest rolled out its German and Dutch sites.[103]  Aptly, Pinterest seems attuned to consumer needs.  The integration of these two new languages is consistent with the consumer trends in European usage reported earlier in the year.[104]  With some tweaks for cultural differences, Internet companies often find additional success in international markets[105] and many of the same growth strategies domestically can translate to gains in an international arena.

 

V.  Conclusion

[42]      Pinterest capitalizes on societal narcissism, materialism, and consumerism, but its strategy has not paid dividends yet.  Pinterest must act quickly to monetize its growing network, not only to become self-reliant and fund R&D for future growth, but also to preempt future lawsuits that could spell the end for Pinterest.  Although Pinterest faces potential trademark and privacy concerns, its greatest challenge is in the area of copyright.  Executives and lawyers across the industry ought to consider Pinterest a “game changer” in this respect.  The courts have not yet ruled on whether the type of file sharing Pinterest users engage in will incur liability.  If the courts find no liability, a new paradigm in copyright liability will emerge and Pinterest will be there to lead the charge.  However, if copyright holders are successful in showing either direct infringement by Pinterest users or secondary liability by Pinterest, recovery will be extremely costly, not to mention difficult from a public relations perspective.  Not only will Pinterest need to revamp its business model, but its debt will only rise.  Regardless, Pinterest should profit from the assets it does have, namely its brand and its network.  Pinterest should obtain intellectual property protection for these assets to help penetrate other markets, such as commerce and research, both domestically and internationally.

[43]      With bated breath, the world waits.  Will the copyright landscape change?  Will Pinterest reinvent the pin again?  Will Pinterest become a stalwart by resolving the copyright question or will it fade into obscurity like so many other Internet start-ups?  We already know Pinterest is no ordinary start-up.  Indeed, Pinterest experienced unprecedented growth yet its impact on society remains to be seen.  While Ben Silbermann is Pinterest’s Chief Executive Officer and will determine the company’s strategic direction,[106] it will be Yang who advises Pinterest as the company struggles to overcome its legal woes.  Batter’s up, Yang, and the clock is ticking.

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 by Jacob Tingen

I. Introduction

[1] The Federal Rules of Civil Procedure were created to promote the “just, speedy, and inexpensive determination of every action and proceeding.”[1] Unfortunately, in the world of e-discovery, case determinations are often anything but speedy and inexpensive.[2] The manual review process is notoriously one of the most expensive parts of litigation.[3] Beyond expense, the time and effort required to carry out large-scale manual review places an immense burden on parties, nearly destroying the possibility of assessing the merits of early settlement before expensive review has already been carried out.[4] Due to the difficulty inherent in the manual review process and the potential for human error, courts have become tired of seeing what they view as incompetence among attorneys.[5] All acknowledge that technology is the main culprit—e-mail alone produces 100 billion new messages daily.[6] At the same time, technology may in fact provide the solution to the e-discovery problem.[7]

[2] In response to the e-discovery challenge, courts and commentators have begun to refer to “new” and “emerging” search technologies.[8] Some tout them as the holy grail of e-discovery, while others dismiss the new technologies as unfit for the task or unable to compete with the raw capability of hundreds of attorneys reviewing documents for hours on end.[9] Even now, doubts exist as to whether new technologies really can help resolve the difficulties experienced by attorneys tasked with increasingly demanding discovery requests.[10]

[3] Even for those who are aware of the existence of advanced search and review tactics beyond keyword search, many questions remain for attorneys and judges alike. First, what are the new and emerging technologies? While courts and commentators mention the existence of the technologies, there is not much guidance with regard to what the new technologies are and what they accomplish.[11] Second, are the new technologies superior to the manual review process? Understandably, attorneys are hesitant to use an unfamiliar e-discovery product that may not work better than the e-discovery process to which they are already accustomed.[12] Third, if attorneys do use a new search and review process, what standards of accuracy or defensibility is a court likely to impose? When managing the discovery process, attorneys want to be sure that the method of production satisfy the expectations of the court.[13]

[4] This article answers those questions. It demonstrates that attorneys have a legal duty to understand and use advanced conceptual search and review technologies as part of an e-discovery review process when dealing with large amounts of information. It then briefly explains how those technologies actually work, why they are superior in both accuracy and efficiency to traditional manual review, and how one can defend use of these new technologies in court.

[5] Part II of this article discusses the need for lawyers to reconsider which search methodologies to use in the e-discovery review process. It reveals that lawyers currently have a duty to understand technology to competently represent their clients and argues that this duty should extend to a cursory understanding of e-discovery search tactics. It discusses the reluctance of the legal community to adopt new search technologies for a variety of reasons, including economic concerns and lack of experience with technology. It briefly explains recent judicial decisions advocating the use of advanced search and review technologies.

[6] Part III provides a background of advanced search technologies, some explanation of what they are, and information on their use in the e-discovery context. It analyzes recent research finding that advanced search and review methodologies are more effective than a keyword process followed by extensive manual review. Furthermore, it discusses steps to ensure that counsel’s implementation of advanced search technologies will be defensible in court.

[7] Finally, Part IV addresses some concluding issues. It identifies when advanced search technologies should be used as opposed to other search and review methods. It discusses the issue of attorney-client privilege and argues that courts should be lenient when evaluating whether privilege has been waived by inadvertently produced documents after an advanced search of millions of documents. It argues that when practitioners properly implement advanced search technologies, they meet their legal duty and help further the goals of the Federal Rules of Civil Procedure by making e-discovery more efficient, more accurate, and less expensive.

II. Adoption of New Search Technologies

[8] “Lawyers need to rethink how they perform ‘searches.’”[14] Familiar with keyword and Boolean search operations from widespread experience with popular legal research services, attorneys tend to apply the same skill set when they approach e-discovery.[15] Unfortunately, simple keyword searches followed by extensive manual review have proven inadequate when it comes to finding the responsive documents necessary to litigate a case on its merits.[16] Overcoming the shortcomings of keyword search and the high expense of complete manual review has become an important goal in e-discovery practice.[17] Courts and commentators have pointed to emerging search and review technologies as the answer to the manual review problem.[18] In effect, attorneys must have a basic understanding of e-discovery and the available search technologies to competently represent their clients.[19]

A. A Legal Duty To Use Advanced Search Technologies?

[9] Requiring attorneys to have a foundational understanding of technology is not without precedent.[20] In the seminal Zubulake cases, Judge Scheindlin went so far as to delineate a new legal duty, requiring attorneys to understand their client’s technology infrastructure.[21] Zubulake, while instructive mainly from the context of determining when the duty to preserve is triggered, also provides helpful background in examining whether attorneys have a duty to cultivate an understanding of technology.[22]

[10] The plaintiff in Zubulake leveled charges of gender discrimination against her former employer in August of 2001.[23] While the factual and procedural background makes for an interesting read for anyone interested in e-discovery, the primary thrust of the e-discovery problems in the case arose from the plaintiff’s request for certain e-mails which the defendant repeatedly failed to produce.[24] The 2006 Amendments to the Federal Rules of Civil Procedure were unavailable to the parties involved, and as a result, Judge Scheindlin’s commentary throughout the entire series of Zubulake cases in some way set the stage for the new rules and continues to prove influential in modern e-discovery practice and discussion.[25] In particular, Judge Scheindlin held that “counsel must become fully familiar with her client’s document retention policies, as well as the client’s data retention architecture.”[26] That’s legalese for saying lawyers must learn to speak tech.[27]

[11] In the future, lawyers must become competent when dealing with and talking about technology.[28] Judge Scheindlin clarified this expectation in 2004 when she said that during the discovery process, attorneys must speak with their client’s information technology personnel to learn about their client’s system-wide information storage procedures and policies.[29] In short, attorneys have a legal duty to understand technology.[30] This article argues that this duty should also extend to understanding and implementing “emerging” search technologies.

[12] In the years since Zubulake, the field of e-discovery has experienced further advances in research and sophistication, including the 2006 Amendments to the Federal Rules of Civil Procedure,[31] guidelines and standards developed by the Sedona Conference,[32] a rising level of education among the bench,[33] and the development of new technologies to assist in searches.[34]

[13] The Sedona Conference Cooperation Proclamation (“Proclamation”) suggests a more collaborative approach to e-discovery in litigation.[35] Endorsed by judges across many jurisdictions, the Proclamation promotes education in e-discovery technology to ensure the “just, speedy, and inexpensive determination of every action.”[36] In particular, the Proclamation identifies the need for cooperation and understanding between not only plaintiff and defense counsel, but also among technology professionals.[37] Furthermore, it advocates educating attorneys about the tools available through law school programs and classes to help new lawyers understand the technical, legal, and cooperative aspects of e-discovery, as well as programs to help businesses understand how to manage their electronic records.[38] The need for training with regard to e-discovery strategies and technologies is widely expressed, and endorsed, by the judiciary in many states.[39]

[14] Indeed, some believe that the “legal profession is at a crossroads: the choice is between continuing to conduct discovery as it has ‘always been practiced’ . . . or, alternatively, embracing new ways of thinking in today’s digital world.”[40] Clients can no longer bear the mounting costs of e-discovery, and overburdened judges are beginning to recommend newer search and review methodologies to attorneys.[41] Extensive manual review of every document in litigation is already impossible in many cases and manual review guided by keyword search alone has proven ineffective in others.[42] The attorney of the future must embrace new technologies or face being drowned in an overwhelming sea of data.[43]

B. Resistance To New Search Technologies

[15] Despite the need for adoption of better technologies, some attorneys assert that keyword and Boolean searches are the industry standard and that newer technologies are cost-prohibitive and less accurate.[44] This assertion is incorrect.[45] In the face of a growing amount of evidence showing that new search technologies can make the e-discovery process easier and more efficient,[46] the legal community tends to push back against newer search technologis for a variety of reasons.

[16] First, the manual review process is notorious for being the most expensive piece of an e-discovery request.[47] With upwards of fifty-percent of e-discovery costs attributed to the manual review process, an attorney’s potential earnings can be tough to ignore.[48] The conflict between the legal industry’s self interest and the just, speedy, and “inexpensive determination” of a case creates serious ethical concerns.[49] Typical manual review costs can range anywhere from two hundred and fifty dollars to five hundred dollars per hour to scan through mountains of documents, a process which can take months.[50] In many situations, law firms charge a premium to boost profits. For example, one contract attorney recently learned that her firm billed its client two hundred and fifty dollars per hour during a manual review while only paying her thirty-five dollars per hour.[51] Firms clearly have an economic incentive to continue using a manual review process that has a potential for huge profits. Acknowledging that new search technologies are more effective than manual review may mean giving up revenues the legal industry is accustomed to receiving.[52]

[17] Other attorneys may not like the idea of learning a new set of technologies. In general, lawyers are not known for being tech savvy.[53] Some commentators have mentioned their dismay with the legal profession’s inability to keep up with the technology industry.[54] Perhaps in e-discovery, this failure to keep up with newer technologies results from over-familiarity with keyword search.[55] Many attorneys are of the opinion that keyword search is the industry standard and that it effectively finds the majority of relevant documents in a given data set.[56] Recognizing that a better method exists may amount to a significant investment of time, classes, and hardware in order to understand and implement new technologies.[57]

[18] Even though more e-discovery resources are available today than ever before, some attorney behavior demonstrates a lack of understanding in how to meet a client’s e-discovery needs.[58] In many cases, counsel’s “apparent lack of savvy” is to blame for overbroad, expensive, or poorly implemented discovery.[59] For example, in a 2010 case, it seemed that both the court and counsel involved were unaware of the possibility of using alternate search methodologies to assist in a more accurate or expedited review.[60]

[19] In fact, with merely two exceptions, there were no judicial opinions prior to 2012 that even mentioned the use of alternative search methods to expedite document review, much less explain what those search methods might be or provide guidance on how to implement them.[61] Only very recently has counsel received explicit judicial approval of the use of advanced search methodologies in e-discovery, as evidenced by Judge Peck’s groundbreaking opinion in Moore v. Publicis Groupe.[62]

C. Judicial Approval of Advanced Search Technologies

[20] The first two opinions to broach the subject of the potential of advanced search technologies address the issue only anecdotally.[63] In Disability Rights Council of Greater Washington v. Washington Metropolitan Transit Authority, an advocacy group brought disability discrimination claims against the transit authority.[64] During discovery, the plaintiff requested information that could only be found on backup tapes because the original e-mails in question had been destroyed.[65] The court ordered restoration and search of the backup tapes.[66] In its order, the court requested that the parties consider how the information on the backup tapes would be searched and directed the parties to recent scholarship arguing that conceptual search technologies could provide more efficient, comprehensive, and accurate results than a keyword search process.[67]

[21] The only other case to recommend alternative or advanced search methodologies was Judge Grimm’s decision in Victor Stanley, Inc. v. Creative Pipe, Inc.[68] Included in Judge Grimm’s criticism of the plaintiff’s discovery efforts, he repeatedly discussed the lack of qualification of the members in the plaintiff’s party to build a targeted search.[69] This language highlights the expectation that attorneys be competent or seek competent help in conducting e-discovery. Furthermore, Judge Grimm cites the potential shortcomings of keyword search and mentions other options that counsel could use in the e-discovery process.[70] In a footnote, the opinion explains some of the potential search alternatives currently available.[71]

[22] In contrast, Judge Peck’s decision in Moore is the first judicial opinion to approve a document review process that leverages advanced search and review technologies.[72] The basic facts of the case along with a summary of Judge Peck’s discussion of the application of advanced search and review technologies are outlined below. Because his opinion provides guidance as to how counsel should proceed when using a technology-assisted review process, it is addressed further throughout this article.[73]

[23] In Moore, plaintiffs claimed that the defendant violated numerous gender discrimination laws.[74] As part of their discovery effort, plaintiffs sought numerous e-mails and other electronically stored information to prove the gender bias.[75] During the parties’ discussion as to how the requested information should be reviewed, plaintiffs raised objections to the defendant’s proposed use of technology-assisted document review in the form of predictive coding.[76] The court took an active role in the discovery dispute, pointing out that advanced search and review technologies often lead to better results than traditional keyword search and document review, and encouraged the parties to continue to work out an acceptable discovery plan.[77] During various discovery conferences, the parties and the court discussed how to proceed with discovery issues, such as the number of custodians and other sources of electronically stored information (“ESI”), the number of phases in which to review documents, the predictive coding or technology-assisted review process, and the level of transparency in the review process.[78] At various points in the opinion, the court emphasized that advanced search and review technologies typically produce more accurate results than keyword search and manual review.[79] Finally, the court ordered the parties to go forward with their agreed upon technology-assisted review process, becoming the first court to judicially approve the use of advanced search and review technologies.[80]

[24] Judge Peck’s order has recently come under intense scrutiny by both the plaintiff’s attorneys in Moore and the legal community at large.[81] Even though U.S. District Judge Andrew Carter initially confirmed the order, Judge Peck granted a motion to stay discovery after the plaintiff’s continued calls for his recusal and for revision of the e-discovery protocol.[82] Despite the predictable pushback by the plaintiffs in this case, attorneys should recognize that widespread use of advanced search technologies in e-discovery will one day be the standard;[83] it simply makes more sense to use a specialized machine to find a needle in a haystack as opposed to manually searching through each individual piece of hay.[84]

[25] Much of the commentary already examined, as well as the opinions coming from the bench, provides the clear message that, “[l]awyers [still] need to rethink how they perform ‘searches.’”[85] Even with this clear instruction to use new technology, practitioners have important questions about how to use them. It is essential to find answers about what the new search technologies are, how they work, and how to defend their use in court. Part III of this article provides those answers.

 

III. Examination of Search Technologies in E-Discovery

[26] Part II considered the current climate of search technologies in e-discovery and an attorney’s duty to understand those technologies. A legal duty to understand technology is not without precedent. Court opinions and commentary lead to the conclusion that some e-discovery technologies, like keyword search, may be insufficient and therefore attorneys should educate themselves about alternate search technologies.

[27] Given the scarcity of information regarding advanced search technology and how it operates, Part III begins by providing a lay-lawyer description of conceptual search technologies and how they are employed in e-discovery. It analyzes recent research proving that advanced search technologies lead to a more complete, accurate, and cost-efficient e-discovery process. Furthermore, it provides practical guidance to ensure that an attorney’s use of conceptual search technologies is defensible in court.

A. An E-Discovery Search Vocabulary

[28] The purpose of this article is not to provide an in-depth technical examination of search methodologies or to advocate the use of a particular e-discovery vendor or product. Its purpose is merely to present in ordinary language current search methodologies that are now available and that may help counsel and clients throughout the American justice system to better coordinate e-discovery efforts. This paper accomplishes this task by discussing advanced search technologies in lay-lawyer terms that any member of the bar practicing in the twenty-first century should be capable of understanding. The rationale behind a lay-lawyer explanation of advanced search technologies is to use the vocabulary framework that has been developed through commentary in the Sedona Conference and other articles[86] that technical consultants will also understand[87] and upon which further commentators can build and provide new insight as technology advances.[88] To this aim, the following technologies are defined and some of their uses are outlined to a limited extent to help readers understand and apply, or at least defend themselves when discussing, modern e-discovery search methodologies.

[29] To begin, it is also important to recognize that this is more than a theoretical discussion. Courts and commentators have at times referred to the following technologies using vague terms such as “emerging” search methods.[89] However, since it is clear that the technologies exist, they have officially “emerged.”[90] By clearly identifying these search methods, it should help practitioners overcome any fear of dealing with Technologies-That-Must-Not-Be-Named.[91] As a group, the technologies should perhaps be acknowledged as “advanced” search technologies or often as “concept” or “conceptual” searches, though never referred to as “new” or “emerging.”[92] No one should suggest that the technology is unavailable, untried, or not yet suited to the e-discovery task.

[30] Furthermore, given the rapidly evolving state of technology, this should not be considered a comprehensive list requiring no further learning on the part of the practitioner or judge.[93] Rather, the explanations that follow should be considered a starting point, allowing lawyers to quickly gain a basic understanding of some of the overarching search technologies and concepts currently in use in e-discovery practice.

1. Keyword Search

[31] Most practicing attorneys are already familiar with keyword searches due to their experience with popular legal research services like Westlaw and Lexis, as well as society’s general experience with web search engines like Google and Yahoo!.[94] Given the legal industry’s general familiarity with keyword and Boolean search technology, more time will be given to explaining the more advanced conceptual search technologies. Of course, keyword searches will continue to play a part in e-discovery. The simplicity in its use makes it possible to immediately sift through a data set and gain some general ideas about the use of certain keywords.[95]

[32] However, the main problem with keyword search is the very simplicity that has given it widespread use.[96] In its most basic form, keyword search can only find documents with the exact keyword searched for.[97] This means that potentially relevant documents that do not contain any of the keywords searched for will not be found, notwithstanding the expertise in choosing the keywords.[98] At the same time, the use of a keyword in a document does not guarantee relevance.[99]

[33] Two variants on keyword search attempt to overcome this problem: Boolean operators and fuzzy search technologies.

a. Boolean Operators

[34] Boolean operators may help resolve the shortcomings of keyword search to some degree, thereby allowing a user to request documents with multiple keywords, find specific phrases, or even find keywords within a specified proximity to each other.[100] One advanced Boolean tactic allows the use of wildcard operators, a practice known as truncation or stemming, to find keywords that use the same word root.[101] For example, a search for “read*” would find documents containing the words “reads,” “reader,” and “reading.”[102] In this way, Boolean operators extend a keyword search, making it more likely to find relevant documents by combining keywords.[103] However, as an extension of keyword, it suffers from the same weakness: it is still guesswork.[104]

b. Fuzzy Search

[35] As another attempt at overcoming keyword’s simplicity, fuzzy search assists parties in finding misspelled keywords.[105] As mentioned, keyword search is strict in the sense that it can only find documents with the exact keywords used, misspellings notwithstanding.[106] Fuzzy search overcomes the occasional typo by giving more weight to words whose middle letters match since English usage tends to have more word variants or misspellings at the beginning and end of words.[107] This would, for example, recall alternate spellings like “theatre” and “theater,” as well as find words that are simply mistyped.[108] Despite fuzzy search’s utility, it only presents part of the picture in overcoming limitations associated with keyword search.[109]

[36] Even with the help of Boolean and fuzzy technology, keyword search is still guesswork.[110] Parties may make educated guesses about which keywords may have been used in a universe of documents, but the problem remains that keyword can only find documents with the keyword searched.[111] Unfamiliarity with a case and industry specific language or slang used by the key parties may lead to the inability to form an adequate search, which in turn leads to disappointing search results.[112] In effect, keyword search is an attempt at divination; it is a gamble that hopes to find a majority of relevant documents based on informed guesswork about an industry in a particular set of documents.[113] This is why a study has shown that keyword searching reveals only one in five relevant documents.[114] The Moore decision previously discussed lamented this limitation of keyword search technology and cited this weakness in justifying the use of advanced search and review technology.[115] Given the lack of crystal balls in e-discovery, attorneys must instead turn to advanced conceptual searches.

2. Conceptual Search Technologies

[37] Conceptual search technologies overcome the weakness of keyword search by recalling more than just documents containing the exact words in the search query. Instead, conceptual searches find documents based on their relevance or similarity to the ideas expressed in the search query.[116] These advanced technologies can take words, phrases, or even a “training set” of documents as an input query, as the parties did in the Moore decision,[117] and then recall material that is conceptually related to the search query. A very basic overview of how these technologies find conceptually related material is provided below. Again, the following is not an exhaustive discussion of available concept search and review technologies, but is provided to give practicing attorneys a general idea of the kinds of technologies that are available and a quick view of how they work.

a. Ontology and Taxonomy

[38] Perhaps the simplest way to think of taxonomy and ontology search technologies is to consider them from the perspective of a thesaurus.[118] Again, the problem with keyword search is that if the exact word searched for is not present in the document, the document is not included in the realm of potentially relevant documents.[119] Taxonomy and ontology tools overcome this problem by automatically searching for synonyms of keywords.[120] However, taxonomy is more than just finding synonyms; it is finding relationships, which is the science of classification.[121] For example, a search for “shoes” using taxonomy technology might find, boots, slippers, loafers, heels, and many other variations. Ontologies tend to be more generic, leading away from mere shoe types to other topics that are related to shoes.[122] For example, a search for “shoes” using ontology technology might find podiatrists or shoe manufacturers.

[39] A taxonomy is generally represented in graphic form as a tree with a root word and branches to other related words.[123] As provided by example in this article’s appendix, another conceptual way to consider taxonomy and word relationships is to imagine a web of interrelating words.[124][40] Viewing and analyzing words in the context of the relationships between them can also be helpful in the e-discovery context.[125] Not only is it important to find relevant material that uses words synonymous to the main keywords selected, but determining the documents’ relationship to each other helps attorneys to determine where it will be most useful to concentrate one’s e-discovery efforts.[126]

b. Document Clustering

[41] Clustering tools use statistical methods to automatically group documents with similar content.[127] Similarity of content can be defined a number of ways, but a typical way is to automatically group documents by the number of words that overlap from one document to another.[128] The more words that a document has in common with another document, the greater the likelihood that the documents are related.[129]

[42] There are a number of parameters that users can control when using a document-clustering tool.[130] For example, a fixed number of possible clusters can be set and topics for the clusters can even be identified.[131] One effective way of guiding the clustering process is to choose certain documents, analyze them manually, and arrange them as “seed” documents.[132] Subsequently, when the clustering engine is run, it will base its document clusters off those seed documents and parameters placed by the user.[133]

[43] In e-discovery, document clustering can provide a quick snapshot of the data and how all of the documents are related.[134] Many e-discovery vendors boast early case assessment technologies (“ECA”).[135] It is likely that some of these ECA tools include some form of document clustering capability to group similar documents.[136] Document clustering could provide insight into a case by identifying additional key players, creating estimates of the potential number of documents that may eventually need to be produced, and laying the groundwork for deciding which keywords might be important in further identifying relevant documents.[137] Combined with powerful visualization tools that showcase data on graphs and charts that are more easily read than a host of documents, counsel can establish the merits of a given claim and make educated decisions about a case from the very beginning instead of waiting until the end of a long and expensive manual review process.[138]

c. Bayesian Classifiers

[44] In contrast to statistics-based clustering tools that look at the number of common words between documents, Bayesian technologies are based on probability algorithms that determine the likelihood that a document is relevant by placing a value on words, their relationships to each other, and their proximity and frequency in comparison with other documents.[139] In clustering tools, all overlapping words between documents may hold the same value.[140] While that method may be useful to provide a quick comparison, Bayesian systems go the extra mile by setting up a formula that weighs and ranks words and their relationships.[141] One can customize how a Bayesian system ranks words and documents per implementation. However, Bayesian systems typically weigh factors, such as the frequency of certain words in the document, the location of keywords in the document, and the proximity of certain words to other important words.[142] Bayesian systems are also informed by feedback on the relevance of documents and therefore learn during the review process.[143] Before a Bayesian system is even implemented, a set of documents are typically reviewed in order to “train” the system to identify which kinds of documents are relevant or irrelevant.[144]

[45] A complete explanation of Bayesian technology is well outside the scope of this paper. However, Bayesian technology’s application to e-discovery can be informed from other disciplines. To provide two examples, Bayesian technology has been employed in e-mail spam filtering[145] and facial recognition software.[146]

[46] Bayesian technology has been used to filter spam e-mails since the late 1990s.[147] A Bayesian spam filter has one job, which is to determine whether a message is junk.[148] The filter works by comparing new e-mail messages with current messages that have already been organized into junk and non-junk folders.[149] For example, when a new message is received, the spam filter will automatically compare the words in the recent message against the messages in the junk folder.[150] It will compare the frequency of certain words like “Nigerian Prince” and “wire transfer.”[151] The filter might compare the proximity of those keywords to each other.[152] It might also consider where the junk-implicating words are located, whether in the subject line, or the body of the e-mail.[153] Further parameters can also be programmed, such as whether the user has previously received a message from the sender of the e-mail.[154] Ultimately, any e-mail containing the words “Nigerian Prince,” “wire transfer,” and “bank routing number” should end up in the junk folder.[155]

[47] The utility of Apple iPhoto’s “Faces” capability also demonstrates how a Bayesian search and review process might work.[156] In iPhoto, a user can categorize photos by face.[157] To streamline the process, iPhoto allows a user to identify the faces in a photo.[158] After a face has been identified, iPhoto searches through all the photos in the application for a face with matching characteristics.[159] When it begins, iPhoto may draw a large number of false positives. However, after a number of iterations, iPhoto “learns” which photos match or do not match the first “training set” of faces identified.[160] Eventually, the program does so with a high level of accuracy.[161]

[48] In a similar fashion, Bayesian technology in the e-discovery context allows a user to begin by identifying certain documents as relevant, irrelevant, privileged, or not privileged.[162] Instead of having these decisions made by an army of low-level legal associates or contract attorneys, sensitive relevance determinations can be made by senior attorneys familiar with the case in order to produce a high-quality “training set” of documents.[163] This “training set” of documents is then used to search through the universe of documents and ask the user if the next set of documents is relevant to the litigation and whether or not it is privileged.[164] Over time, the computer can learn which documents are relevant with a high level of accuracy.[165] This technology allows attorneys to review wide swaths of documents in short periods of time for both relevance and privilege.[166]

3. Maintaining Quality and the Role of Sampling

[49] Regardless of the search process used, courts may expect attorneys to use safeguards to help ensure the quality of the document review.[167] Sampling is a quality control method urged by courts that consists of manually sampling files identified as relevant or privileged to test whether or not the review process was accurate.[168] However, that explanation might be overly simplistic since courts have also stated that expert assistance may be required to develop an effective sampling protocol.[169] Sampling can serve as a check on advanced search methodologies, thereby helping technology-skeptic attorneys to rest easy by ensuring that machine-assisted search and review results are as accurate and complete as possible.[170] Wise practitioners can leverage sampling techniques to improve overall search and review, informing their process through sampling relevant documents that were not identified, and modifying search processes to increase accuracy.[171] This sampling process, used at various phases of the search and review, can then be used to explain the efficacy of the search tools used.[172]

B. Do Conceptual Search and Review Technologies Work Better than Keyword Search and Manual Review?

[50] In Part III Section A, we discussed the importance of a common language to discuss e-discovery technologies and reviewed current conceptual search technologies using lay-lawyer terms. The examples provided were intended to give practitioners insight into the complexity of conceptual search and a framework for understanding its use. Part III Section B goes one step further by answering a question every astute reader should be asking: do the technologies work better than the status quo?

[51] Understanding the technologies and putting them into practice is not enough.[173] The true measure of potentially helpful conceptual search technologies is whether they actually do a better job than the traditional keyword search followed by a manual review of every single responsive document.[174] Until recently, a comparative test and analysis of the two methods had been lacking.[175] However, this was changed in 2009 when the Text Retrieval Conference (“TREC”) conducted a study comparing traditional search and review methods to advanced search technologies.[176]

1. Factors for TREC Analysis

[52] The analysis focused on three key indicators to determine whether the groups using conceptual search technologies actually performed better during the e-discovery process.[177] The first important factor was recall, which is the percentage of relevant documents a group finds out of the total number of relevant documents in a data set.[178] Thus, if there are 1,000 relevant documents in a universe of 10,000, and an e-discovery process finds 200 of the relevant documents, then its recall is 20% because it only found 200 of the possible 1,000 documents.[179] As will be discussed later, 20% recall is about par for the course with keyword search alone.[180]

[53] The second factor, precision, measures how well the process retrieved only the relevant documents.[181] Using the same example of 10,000 documents with 1,000 relevant documents, assume an e-discovery process identified 400 documents, but only 200 of those documents were relevant while the remaining 200 documents were irrelevant to the litigation. The resulting precision calculation would be 50%.[182]

[54] The third factor utilized in the study to determine the quality of an e-discovery process is entitled F₁, which is derivative of the first and second factors of recall and precision.[183] Using the same example with a 20% recall rate and a 50% precision rate, the resulting F₁, or harmonic mean,[184] would fall somewhere in between the two numbers at about 28.57%.[185] This third factor is the most important as it measures a balance between the two important factors involved in determining the quality of the document search and review process.[186] The higher the F₁, the more complete and more accurate the review process is.[187]

2. Advanced Technology Used

[55] With regards to the actual search and review technologies employed in the TREC study, half of the groups used a manual review process and the other half used custom search technologies developed by the parties themselves.[188] Of the advanced technology groups, one group described their technology as “deterministic,” beginning the review by tailoring a highly detailed definition of relevance.[189] Then, documents could easily be compared against the relevance parameters to determine if it was responsive.[190] The intent was to bring a high level of precision to the review process, rejecting the practice of using broad keyword searches and later narrowing down the data set.[191]

[56] Another advanced technology group used a computer assisted learning approach that estimated the probability that a document was relevant.[192] The system used had previously been developed to assist in spam filtering.[193] As the technology “learned” from new documents, so did the reviewers, adjusting the search and judging system to improve the review throughout the process.[194]

[57] In the real world, e-discovery vendors may not describe their systems as “conceptual search.” However, the vocabulary framework of Part III Section A should help attorneys identify and understand how a given technology might work. Even though a “training set” of documents may not have been used, detailed relevance parameters and computer learning systems helped parties in the TREC study identify and group responsive documents.[195] These strategies seem similar to a Bayesian classification system.[196]

3. Study Findings

[58] Each group involved in the 2009 TREC study was assigned a topic and requested to sift through the data provided to build a “case” as if for litigation.[197] The results of the varying review processes, manual review versus technology assisted review, were compared and analyzed.[198] Across the wide majority of the topics tested, the groups using advanced search technologies performed at a statistically significant rate higher than the groups who used traditional review methods.[199] The average recall and precision for the traditional review groups was 59.3% and 31.7% respectively, while the recall and precision for the concept search and review was 76.7% and 84.7% respectively.[200] On average, the F₁ for the traditional review groups was 36%.[201] Among those who used advanced search technologies, the F₁ was 80%.[202]

[59] Clearly, the advantages of conceptual search technologies can be understood on a superficial level. After discussing the available search technologies and their possible uses in the e-discovery context, a number of strategies can be imagined to automatically organize documents in a data set, see relationships among the information, search more accurately and widely to find the relevant documents, and then use automated learning tools to speed up the review process, all more accurately than with manual review.[203] This is not the future of search technology; this is now.[204]

C. Defending E-Discovery Process Through Conceptual Search Technologies

[60] Even though a practitioner may now be aware of conceptual search technologies after reading Part III Section A, and understand that conceptual search and review produces better results after reviewing Part III Section B, opposing counsel and courts may still need some convincing. Part III Section C discusses how to defend conceptual search in court. Regardless of the e-discovery search methodology employed, whether keyword or conceptual, the parties must be able to defend the methodology used before a judge.[205] While using a defensible process throughout the entirety of a discovery request is beyond the scope of this paper, this discussion would be incomplete without reviewing aspects of defensibility applicable to advanced search methods.

1. Accuracy

[61] First, a defensible search methodology is not a perfect search methodology.[206] In the Sedona Conference Best Practices Commentary on the Use of Search, the authors discuss a 1985 study by David Blair and M.E. Maron.[207] The case dealt with an unfortunate train accident in the San Francisco area that resulted in an e-discovery workload of 40,000 documents and some 350,000 pages.[208] After a thorough review of the documents, presumably based on some form of keyword search to identify potentially relevant documents, attorneys in the case estimated they had found seventy-five percent of all relevant documents.[209] However, a detailed analysis of the documents involved revealed that attorneys on the case had only identified about twenty percent of the relevant documents.[210] The article attributes this lack of accuracy to the ambiguity inherent in word usage, giving more weight to the idea that the assistance of search experts may become necessary, as Judge Grimm implied in Victor Stanley.[211]

[62] Regardless, the key point is that even though keyword and Boolean search has been the “state-of-the-art” in terms of e-discovery search for many years, keyword search has never led to perfection in the e-discovery process.[212] It follows, then, that any search performed using conceptual searches must merely meet the low threshold of a keyword search process.[213] As previously discussed in Part III Section B, technology assisted search and review has proven to be more accurate.

2. Efficiency

[63] With regards to efficiency, the more quickly the universe of documents can be culled and reviewed, the better.[214] However, efficiency and accuracy do not exist on a sliding scale where accuracy can be sacrificed. Quickly reviewing a universe of 350,000 documents without finding a single responsive file would not be defensible.[215] Certain standards of accuracy must be met while using efficient and cost-effective means at the same time.[216] Some practitioners are experiencing success with conceptual search, thereby providing a much quicker review period with appropriate levels of accuracy.[217] One report stated that a body of 20,933 documents reviewed first using traditional review methods took 180 hours to review.[218] Afterward, the same documents were loaded into a system that learned as a separate review progressed and grouped documents according to topic.[219] This second review took 18.5 hours, nearly one-tenth of the manual review time,[220] a speedy determination indeed.[221]

3. Transparency

[64] This aspect of defending the use of advanced search technology, transparency, goes not to the efficacy of the technology itself, but the cooperation of the parties with regard to its use.[222] The Moore Court went so far as to state that the defendant’s willingness to be transparent in their implementation of advanced technologies made it possible for the court to approve the use of the technology-assisted review process.[223] In Moore, the defendant agreed to provide plaintiffs with a complete copy of all “seed” documents they had reviewed, except for privileged documents, which they then used to “train” the computer in the review process.[224] By providing the 2,399 documents in the “seed set,” plaintiffs and the court would be able to plainly evaluate and provide guidance in setting the parameters of the advanced review.[225] Arguably, this level of transparency also gives unprecedented power to plaintiffs who can effectively provide input to the decisions in the defendant’s review process.[226] While this level of transparency may not be required in every situation using advanced technologies, it may help opposing counsel and the court to feel more at ease with technologies that are admittedly difficult to understand.[227]

4. Other Factors of Defensibility

[65] The Sedona Commentary also mentions defensibility guidelines, such as cost effectiveness and a showing of fairness and good faith.[228] While no one factor seems to predominate, “the just, speedy, and inexpensive determination of every action and proceeding” appears to be the underlying factor of defensible e-discovery.[229] Counsel should be prepared to articulate how the search methods employed helped meet the ends of the Federal Rules of Civil Procedure.[230] Additionally, evidence regarding the efficacy of a search methodology must be introduced through experts.[231] Attorneys and experts should be prepared to explain that a well-implemented conceptual search speeds up the review process and leads to more accurate results.[232] Saved costs are the logical byproduct and should be included as part of any defense concerning the efficacy of advanced search technologies.[233] In the end, attorneys defend their use of advanced conceptual search by demonstrating that it is more just, speedier, and less expensive than keyword search followed by manual review.

 

IV. Required Use of Advanced Search Technologies

[66] In Part III, we defined some of the advanced search technologies currently employed in e-discovery, determined that they are indeed more accurate than keyword search alone followed by manual review, and also considered how to defend and explain their use for courts and opposing counsel. Part IV provides guidance on when the use of advanced search technologies should be required. It also discusses how courts should deal with inadvertent production of privileged documents after using an advanced e-discovery process. In addition, Part IV provides guidance to practitioners regarding what technology-related legal duties have formed around the e-discovery process and how those duties help fulfill the purposes of the Federal Rules of Civil Procedure.

A. Requiring Conceptual Search

[67] Cases that should require the use of advanced search technologies involve millions of documents.[234] These cases involve situations where a keyword search followed by manual review would be truly unfeasible and overly expensive.[235] Knowing that one of the underlying purposes behind the duty to use conceptual search technologies is to save money, and recognizing that the biggest expense in e-discovery is manual review, an understanding of advanced search technologies should help courts and counsel draw the conclusion that an advanced process saves both time and money.[236] Although some pushback from counsel is to be expected, court enforcement of a duty to use advanced search technologies, accompanied with further research and learning about conceptual search technology, should help allay any concerns about the efficacy of conceptual search.[237]

[68] Should the use of concept search technologies be required in all cases? No. Given the discussion of the technologies above, there is clearly some level of preparation and analysis required before conceptual search and review is initiated.[238] In some cases, it may be more effective to formulate a basic keyword strategy, especially when dealing with smaller data sets where manual review is feasible and less expensive than employing the services of an e-discovery vendor.[239] Using advanced technology in those situations would be akin to cutting the Thanksgiving turkey with a chainsaw—simply overkill.

B. Dealing with Privileged Documents

[69] When courts evaluate discovery productions that result from a conceptual search and review process, they should keep in mind the impossibility of manually reviewing millions of documents.[240] Given that review of documents does not necessarily equal viewing documents, courts should respect clawback agreements between parties and be hesitant to find waiver of privilege from documents that were inadvertently produced. Despite an attorney’s best efforts, it is possible and even likely that after a review of millions of documents, some privileged material will be produced to opposing counsel.[241] Courts and counsel, in the interest of the speedy and just determination of a case, should expect a certain level of inaccuracy involved with sifting through large quantities of documents, regardless of the search and review methodologies employed.[242]

[70] In fact, the 2006 Amendments to the Federal Rules of Civil Procedure anticipated a margin of error when dealing with a large universe of documents, by purposefully crafting the ability to institute clawback agreements between parties.[243] Clawback agreements should be discussed as part of any electronic discovery plan and when disputes over privileged documents occur, judges should use an “appropriate mathematical yardstick” when determining whether to waive privilege.[244]

[71] Compare, for example, the application of certain factors in the Mt. Hawley case with the Victor Stanley case.[245] In Victor Stanley, the court found that privilege had been waived on 165 documents out of a universe of 9,000 documents that had been inadvertently produced.[246] In contrast, the Mt. Hawley Court found that privilege had been waived on 377 documents out of a universe of five million documents.[247] The court’s conclusion that privilege had been waived is not necessarily the problem. However, the reasoning behind the Mt. Hawley holding with regard to those 377 documents is.[248] In stating that privilege had been waived on the inadvertently produced documents, the court relied in part on the Victor Stanley holding, concluding that 377 documents was more than double the number of documents at issue in the Victor Stanley case.[249] However, the number of documents that were inadvertently produced provides a poor comparison.[250] Using instead the number of documents in terms of a proportion or a percentage of the possible privileged documents that could have been inadvertently produced, the parties in the Mt. Hawley case did much better.[251] For this reason, courts should approach inadvertent disclosure problems with a relative mindset instead of thinking in terms of bright-line non-proportional rules.[252]

[72] Ironically, the Mt. Hawley decision highlights much of the information that supports a conclusion that data should be evaluated on a relative basis. In its analysis, the court examines a five-factor test for determining whether privilege has been waived, the parties’ own clawback agreement, the Federal Rules of Evidence and Procedure that authorize clawback agreements, and finally, the Advisory Committee Notes discussing how to evaluate clawback agreements.[253] Specifically, the Advisory Committee states that:

[o]ther considerations bearing on the reasonableness of a producing party’s efforts include the number of documents to be reviewed and the time constraints for production. Depending on the circumstances, a party that uses advanced analytical software applications and linguistic tools in screening for privilege and work product may be found to have taken “reasonable steps” to prevent inadvertent disclosure.[254]

Essentially, the Advisory Committee was aware of the potential need to review huge amounts of data and that perfection in the review process would be impossible.[255] Courts and practitioners alike should be prepared for a margin of error in the discovery process and should be flexible enough to work out and enforce clawback agreements that preserve privilege while speeding along the review process.[256] Some practitioners have begun to claim that if the advanced review is carried out properly, privilege should not be a worry because the same systems that help quickly and efficiently identify relevance can also make privilege determinations with a high level of accuracy.[257] It may be that in the future, privilege stops being a concern for parties who use advanced search technology. Until then, courts should always consider a review augmented by advanced conceptual searches to be found to have taken “reasonable steps” to preserve privilege under the meaning of the Federal Rules.[258]

C. Legal Duties

[73] The purpose of the Federal Rules of Civil Procedure is to secure “the just, speedy, and inexpensive determination of every action and proceeding.”[259] In the past, speed and expense were sacrificed in the name of justice, giving time to long-term manual review projects to ensure that the most accurate and complete set of information was discovered and produced.[260] Today, a more accurate, complete, and just process exists through conceptual search tools.[261] The fact that the same tools also give way to speedier and less expensive determination is a bonus.[262]

[74] Judges who have recommended advanced search technologies in the past may require parties to use them in the near future, especially in litigation with large data sets.[263] It would not be the first time a judge has required counsel to learn about and become familiar with technology.[264] Legal duties in terms of the e-discovery process will continue to emerge and become more defined.[265] Just as Federal Rule of Civil Procedure 26(f) requires parties to discuss an in-depth discovery plan—including discovery subjects, production format, and privilege issues—future evolutions of the rule may require discussion of, and plans to use, advanced search technologies in order to secure the just, speedy, and inexpensive determination of the case.[266]

[75] Requiring the attorneys in a case to use advanced search technologies may raise competency concerns.[267] Furthermore, any mandate to use conceptual search should have at its root the purpose of helping to resolve cases on their merits rather than e-discovery issues.[268]

1. Competency

[76] The legal community should embrace new conceptual search technologies.[269] Where expertise is lacking, attorneys should not hesitate before seeking help with managing a large database of electronic information.[270] A defensible e-discovery strategy for large data sets should employ the review of documents through a variety of search tactics, including document clustering and keyword search assisted by Bayesian and ontology search mechanisms.[271] Since attorneys do not typically have access to those tools on their desktop computers, in some cases, attorneys should be required to seek help either by a firm or a vendor who specializes in e-discovery.[272] In the past, courts have sanctioned parties for botching e-discovery requests and requirements and as a result, the legal community should consider themselves “on notice” with regard to their competency qualifications, or lack thereof, in the e-discovery context.[273]

2. Resolve Cases on their Merits

[77] One of the best-named tools in opposing counsel’s arsenal is the Weapon of Mass Discovery.[274] Counsel can sometimes try to make overbroad discovery requests, hoping for settlement from larger defendants because it would be more cost-effective for the defendant to settle than to try the case on its merits.[275] This is due in part to the impossibility of manually reviewing millions of documents.[276] The capacity of advanced search technologies to conceptually organize a universe of documents should help larger defendants avoid this threat by analyzing the merits of a claim from day one.[277] Some work and preparation for litigation will be required on the part of the defendant to effectively use this strategy, but in the long term, a strategy that includes preparation and use of conceptual search will help cases resolve on their merits instead of the difficulty of the e-discovery process.[278] This purpose should be at the core of any mandate to implement advanced search technology.

 

V. Conclusion

[78] Courts have been developing a legal duty to understand and implement advanced search technologies in the e-discovery process.[279] This duty is informed by scholarship demonstrating the efficacy of advanced search technologies and their advantage over the status quo of a keyword search method followed by an extensive manual review. To meet the needs of clients, practitioners must strive to gain some technical knowledge regarding available search and review methods. Given that manual review is the most expensive piece of the e-discovery process and that using conceptual search inevitably erases much of the manual review process along with its accompanying high cost, attorneys should implement conceptual search technologies as often as possible. The understanding that conceptual searches are more effective and efficient should help attorneys defend an advanced search process in court. Finally, as the review process is shortened considerably and the burden of review is lifted from the shoulders of counsel and courts, cases can again be resolved on their merits instead of diving down the rabbit hole of e-discovery disputes.

 

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